The SC judgment, which is 56 pages long, was written by Justice Surya Kant. It laid down a structured framework to tackle this very question. This framework helps courts understand when a work is an original artistic creation and when it has turned into a design because of how it is used.
New Delhi – The Supreme Court of India has issued an important ruling that clarifies how to decide whether a creative work should be protected under the Copyright Act, 1957, or the Designs Act, 2000.
This judgment is a big step forward in clearing confusion around intellectual property (IP) rights, especially for designs used in industries.
ALSO READ: Delhi High Court Grants Relief to Saregama in Copyright Dispute with Movie World
A bench of Justices Surya Kant and N. Kotiswar Singh gave the ruling while deciding a case involving Cryogas Equipment Pvt Ltd and LNG Express India Pvt Ltd, who had filed appeals against Inox India Ltd.
The Supreme Court dismissed the appeals and agreed with the Gujarat High Court’s decision to allow Inox’s copyright infringement case to move ahead. The lower court has now been asked to deal with the matter on its merits.
At the centre of the case was a tricky issue – when does a piece of artistic work stop getting copyright protection and become something that falls under the Designs Act due to its mass use in industry?
The SC judgment, which is 56 pages long, was written by Justice Surya Kant. It laid down a structured framework to tackle this very question. This framework helps courts understand when a work is an original artistic creation and when it has turned into a design because of how it is used.
Two-Step Test Introduced by Supreme Court
The Court laid down a definitive two-pronged approach to interpret Section 15(2) of the Copyright Act:
(i) Whether the work is purely an artistic work or has become a design through industrial application.
(ii) If not protected under copyright, whether the design meets the dominant purpose of functional utility and thus should be protected under the Designs Act.
It said:
“The courts must first determine whether the subject is an original ‘artistic work’ protected under Section 14 of the Copyright Act or whether it is a ‘design’ derived from such a work and applied via industrial processes, thereby invoking Section 15.”
This means the court must first ask whether the work is a purely artistic creation, or whether it is a design made from an artwork and used in a large-scale industrial setting.
Next, the Court brought in a second test called the “functional utility test“. This is meant to check whether the main purpose of the work is artistic beauty or practical use. If a product has more of a commercial or functional use, it may no longer be protected under copyright.
The judgment said:
“If such a work does not qualify for copyright protection, then the test of ‘functional utility’ will have to be applied so as to determine its dominant purpose, and then ascertain whether it would qualify for design protection under the Design Act.”
In other words, even if something starts as an artistic work, if it is reproduced many times and used mainly for practical or commercial reasons, it could lose its copyright and come under design laws.
The court emphasised that each case must be seen individually, using existing laws and examples from past judgments:
“The courts, while applying this test, ought to undertake a case-specific inquiry guided by statutory provisions, judicial precedents, and comparative jurisprudence,” the Court said.
The bench also made it clear that both the Copyright Act and Designs Act have different goals, and both must be respected:
“It must be kept in mind that the overarching objective is to ensure that rights granted under either regime serve their intended purpose without unduly encroaching upon the domain of the other. With this approach, we have attempted to clarify the treatment of works at the intersection of ‘copyright’ and ‘design’ law, thereby ensuring coherence and consistency in the application of IP rights in India.”
Section 15 of the Copyright Act
Justice Surya Kant explained that the court wanted to remove confusion around Section 15 of the Copyright Act. This section says that if a design is used more than fifty times in an industrial setting and is not registered under the Designs Act, then it loses copyright protection.
The bench said:
“In this context, we appreciate the efforts of high courts across the country in adopting best practices that align with our socio-legal framework. Our analysis and examination have hopefully resolved this legal issue to prevent any further ambiguity in the future.”
The judgment added that this rule is meant to balance the short-term protection given to useful designs with the longer-term protection given to true artistic works:
“This provision is aimed at balancing the limited-term protection of utilitarian designs with the longer protection afforded to purely artistic creations,” the bench said.
It also clarified the intent of lawmakers when creating the Copyright and Design laws:
“The legislative intent was to provide greater protection to works of pure artistic expression such as paintings and sculptures and limited protection to commercially driven designs.”
Finally, the Supreme Court confirmed that both Acts are meant to work together without overlapping too much:
“In doing so, it reaffirmed that the Copyright Act and the Designs Act serve distinct but complementary objectives.”
The Delhi High Court in Microfibres Inc. v. Girdhar comprehensively addressed this legal question. In that case, the plaintiff—an American company—claimed copyright infringement over patterns used on upholstery fabric and asserted that the designs were registered under the Copyright Act.
The Court denied the plaintiff copyright protection and relied on several key observations:
(i) The drawings were not standalone pieces of art like paintings, although creativity and effort were involved in arranging the motifs and configurations. The motifs themselves were not original.
(ii) These designs were intended for industrial use and had no independent existence as artistic works.
(iii) Textile designs such as these fall within Class 5 of the Design Rules, 2001, and are suitable for protection under the Designs Act.
(iv) The legislative intent was to offer limited-time protection to creators for commercial use—unlike copyright, which offers protection for the life of the author plus 60 years.
(v) Section 2(c) of the Copyright Act defines ‘artistic work’, and Section 2(d) of the Designs Act explicitly excludes such works, particularly to exclude things like paintings by M.F. Husain.
(vi) Therefore, in this case, the appropriate protection lay under the Designs Act and not under the Copyright Act.
The Delhi High Court’s findings in Microfibres were followed in later decisions, including Dart Industries Inc. v. Techno Plast and Others. In that case, the plaintiffs—makers of ‘Tupperware’ products—accused the defendants of copying their product designs. The Court held that once a design is registered under the Designs Act, copyright protection no longer applies. It also noted that when technical drawings are used for manufacturing products, copyright claims on those drawings cannot be maintained
Current IP statutory framework
IP rights are fundamentally aimed at excluding or preventing others from possessing, using, or alienating the protected IP, thereby enabling the owner to benefit from the product of their intellect.
In India, IP rights encompass a broad spectrum of intangible properties, including Patents, Trademarks, Copyrights, Designs, and Geographical Indications, each governed and protected by distinct Statutes. These legislations enable creators or inventors to earn recognition and receive financial benefits from their innovations in a manner which balances them with public interest.
However, for the purposes of the present analysis, our examination will be confined to the intersection between the Copyright Act and the Designs Act.
In India, copyright is governed by the Copyright Act, 1957, which was enacted to safeguard the rights of copyright owners, including for commercial exploitation and to encourage the creation of innovative works. Copyright is a statutory and negative right, preventing unauthorised copying of copyrighted material. Under Section 14 of the Act, copyright owners are granted a bundle of exclusive rights, including the right to reproduce, issue copies, perform in public, and create translations and adaptations.
The term ‘copyright’ has been defined under Section 14 of the Copyright Act to mean “the exclusive right subject to the provisions of the Act, to do or authorise the doing of any of the following acts in respect of a work or any substantial part thereof, namely…”
It espouses the protection of works in terms of:
(i) literary, dramatic or musical work, not being a computer programme;
(ii) a computer programme;
(iii) an artistic work;
(iv) a cinematograph film; and
(v) a sound recording
ALSO READ: Bombay High Court Clears Akshay Kumar’s Sky Force Release Amid Copyright Dispute
Key Legal Considerations on Copyright vs. Design Protection
The Court emphasises the need for principles aligned with India’s IP rights framework to address ambiguities around artistic works and industrial designs.
- Definition of Artistic Work (Section 2(c), Copyright Act):
- Includes abstract creations (e.g. random lines or curves).
- May be two-dimensional or three-dimensional.
- Need not be aesthetically appealing.
- Entitled to protection under Section 14(c), including reproduction rights.
- Overlap with Design (Section 2(d), Designs Act):
- If an artistic work is reproduced via an industrial process (manual, mechanical, or chemical) into a visually appealing article, its features (shape, configuration, pattern, etc.) are treated as a ‘design’.
- Intent vs. Use:
- Merely intending to create an artistic work doesn’t determine its legal protection.
- Commercial or industrial application of an artistic work may shift protection from copyright to design law.
- Section 15(2), Copyright Act:
- Once an artistic work is industrially applied, it may fall outside copyright protection.
- Protection under the Designs Act is only available if the design is registered.
- Clarification on Scope:
- Copyright protection is not automatically lost due to industrial use.
- ‘Artistic work’ has a broader scope; ‘design’ is limited to visual features applied industrially for visual appeal.
- No Automatic Protection Under Designs Act:
- Failing to qualify as an ‘artistic work’ doesn’t imply protection under Designs Act.
- Designs Act protection is time-limited and requires fulfilling criteria, including the functional utility test.
- Proposed Two-Fold Test:
- Determine if the work is:
- A purely artistic creation (covered by copyright), or
- A design derived from an artistic work that has been industrially applied (falls under Section 15(2)).
- If not copyrightable:
- Apply the functional utility test to assess the design’s dominant purpose and whether it qualifies under the Designs Act.
- Determine if the work is:
Case Title: Cryogas Equipment Private Limited versus Inox India Limited and Others
View Order
FOLLOW US FOR MORE LEGAL UPDATES ON YOUTUBE
