Allowed

Gurukrupa Mech Tech Pvt. Ltd. through Its Director - Subhashchandra Shavjibhai Padasunbiya v. State of Gujarat

Gujarat HC3 Aug 2018CR.MA/15685/2017

Case brief

AI extract

What is this about?

Registered industrial drawings for a zero effluent discharge coal gasification system were allegedly reproduced as a machine installed in the respondents' factory. Police seized the machine; the Magistrate released it to the purchasers. The court held the drawings are artistic works, the machine an infringing copy, and restored possession to the copyright owner, directing seals to be affixed.

What did the court decide?

Criminal Misc. Applications Nos.15685 and 15686 of 2017 allowed; impugned orders quashed; Exhibit 9 rejected and Exhibit 20 allowed; Investigating Officer directed to affix seals on the machine; trial

Gurukrupa Mech Tech Pvt. Ltd. through Its Director… — Intellectual Property | Gujarat HC (2018)

¶1

R/CR.MA/15682/2017 CAV JUDGMENT

¶2

IN THE HIGH COURT OF GUJARAT AT AHMEDABAD

¶3

R/CRIMINAL MISC.APPLICATION NO. 15682 of 2017 With R/CRIMINAL MISC.APPLICATION NO. 15685 of 2017 With R/CRIMINAL MISC.APPLICATION NO. 15686 of 2017

¶4

FOR APPROVAL AND SIGNATURE:

¶5

HONOURABLE MR.JUSTICE J.B.PARDIWALA

¶6

==========================================================

¶7

1 Whether Reporters of Local Papers may be allowed to see the judgment ? YES

¶8

2 To be referred to the Reporter or not ? YES

¶9

3 Whether their Lordships wish to see the fair copy of the judgment ? NO

¶10

4 Whether this case involves a substantial question of law as to the interpretation of the Constitution of India or any order NO

¶11

made thereunder ? CIRCULATE THIS JUDGEMENT IN THE SUBORDINATE JUDICIARY.

¶12

========================================================== GURUKRUPA MECH TECH PVT. LTD. THROUGH ITS DIRECTOR - SUBHASHCHANDRA SHAVJIBHAI PADASUNBIYA......Petitioner

¶13

Versus

¶14

STATE OF GUJARAT & 2... Respondents

¶15

==========================================================

¶16

Appearance:

¶17

MR HARSIT TOLIA WITH MR PRATIK CHAUDHARY WITH MR YJ TRIVEDI(948), ADVOCATES for the PETITIONER(s) No. 1 MR PRATIK Y JASANI(5325) for the RESPONDENT(s) No. 2,3 MR DHARMESH DEVNANI, APP(2) for the RESPONDENT(s) No. 1

¶18

==========================================================

¶19

CORAM: HONOURABLE MR.JUSTICE J.B.PARDIWALA

¶20

Date : 03/08/2018

¶21

CAV COMMON JUDGMENT

¶22

1 As the issues raised in all the three captioned applications are the

¶23

Page 1 of 85

¶24

R/CR.MA/15682/2017 CAV JUDGMENT

¶25

same and the parties are also the same, those were heard analogously and are being disposed of by this common judgment and order.

¶26

2 The breakup of the three captioned applications is as under:

¶27

Sr. No.	Cri. M.A.	Cri. R.A. before the Sessions Court	Application Exh. No. before the Magistrate	Sub	ject
1	15682 of 2017	Criminal Revision Application NO.21 of 2016, order dated 29^th May 2017	Exh. 19 order dated 24^th August 2012	Application applicant f inquiry in whether instruments be restore applicant / prima facie industrial d complainant	by or hol relation sought d to accuse copy of esign of .	the ding to the to the d is the the
2	15685 of 2017	Cri. Revision Application No.19 of 2016, order dated 29^th May 2017	Exh. 20 Order dated 24^th August 2012	Application applicant possession machinery /	of for of parts.	the the the
3	15686 of 2017	Criminal Revision Application No.20 of 2016, Order dated 29^th May 2017	Exh. 9 Order dated 24^th August 2012	Application respondents 3 for posse machine.	of Nos.2 ssion of	the and the

¶28

Criminal Case No.3018 of 2016 is pending before the learned 7^th Chief Judicial Magistrate, Morbi.

¶29

3 “ If a creative person steals your idea, he’s killing his creative ability, if he steals your art, he’s killing his art, if he makes it available to the world, it won't create the impact you could have created, because it wasn’t from the right source.” Michael Bassey Johnson.

¶30

Page 2 of 85

¶31

R/CR.MA/15682/2017 CAV JUDGMENT

¶32

4 The facts giving rise to all the three captioned applications may be summarised as under:

¶33

“4.1 The applicant herein is the owner of copyright in the artistic work of industrial drawings registered with the Registrar of Copyright vide registration A109401/2014 dated 25^th March 2014 under the title “Zero Effluent Discharge Coal Gasification System” . The applicant has alleged that the drawings of the industrial design were stolen by the original accused No. 1 and reproduced in the threedimensional material form i.e. in the form of a machine which was setup in the factory premises of the respondents Nos. 2 and 3 (original accused Nos.2 and 3).

¶34

4.2 The petitioner lodged a First Information Report being C.R. No.I 3945 of 2016 with the ‘A’ Division Police Station, Morbi for the offences punishable under Sections 63 and 64 of the Copyright Act, 1957 and Section 114 of the Indian Penal Code. On the basis of the First Information Report the Police officials, in the course of the investigation, arrived at the satisfaction that the copyright of the applicant has been violated under Section 64 of the Copyright Act, 1957, and therefore, seized the machine by putting a seal on the plant machinery situated inside the factory premises of the respondents Nos.2 and 3 respectively.

¶35

4.3 Upon completion of the investigation by the Police officials a chargesheet came to be filed.

¶36

4.4 The respondents Nos. 2 and 3 preferred an application Exhibit: 9 under Section 64(2) of the Copyright Act for the interim release of the seized machine by opening the seal affixed on the machine.

¶37

Page 3 of 85

¶38

R/CR.MA/15682/2017 CAV JUDGMENT

¶39

4.5 The applicant, on the other hand, preferred applications under Sections 64(2) and 66 of the Copyright Act, 1957 Exhibits: 19 and 20 respectively and prayed before the Chief Judicial Magistrate to conduct on inquiry before ordering restoration and delivery of possession of the machine to the original copyright holder of the artistic work.

¶40

4.6 The Chief Judicial Magistrate vide a common order dated 24^th August 2016 rejected the applications filed by the applicant Exhibits : 19 and 20 and allowed the application Exhibit: 9 filed by the accused Nos. 2 and 3.

¶41

4.7 Being dissatisfied and grieved by the common order passed by the Chief Judicial Magistrate, Morbi rejecting the applications filed by the applicant and allowing the application Exhibit : 9, three Criminal Revision Applications Nos.19, 20 and 21 of 2016 came to be filed by the applicant herein before the Revisional Court.

¶42

4.8 The Additional Sessions Judge, Morbi, by a common order dated 24^th August 2016 rejected all the three criminal revision applications referred to above.

¶43

4.9 The applicant, being dissatisfied and grieved by the order passed by the Additional Sessions Judge. Morbi is before this Court with these three applications.

¶44

● SUBMISSIONS ON BEHALF OF THE APPLICANT:

¶45

5 Mr. Tolia, the learned counsel for the applicant submitted that his client is the owner of copyright in the artistic work of industrial drawings registered with Registrar of Copyright vide registration A 109401/2014 dated 25^th March 2014. He submitted that the brotherin

¶46

Page 4 of 85

¶47

R/CR.MA/15682/2017 CAV JUDGMENT

¶48

law of the applicant, original accused No. 1 stole the artistic work/industrial drawings of the applicant, as alleged in the FIR.

¶49

5.1 The learned counsel submitted that the original accused No.1 in connivance with the respondents Nos. 2 and 3 reproduced the work in a three dimensional material form i.e. in the form of “Zero Effluent Discharge Coal Gasification System” in the factory premises of the respondents Nos. 2 and 3. In such circumstances, the FIR had to be lodged being C.R. No. I3954 of 2016 with the ‘A’ Division Police Station, Morbi for the offences punishable under Sections 63 and 64 of the Copyright Act. On the basis of the said FIR, the Police officer seized the system/machine being the copy of the copyrighted work/industrial drawing of the applicant.

¶50

5.2 The learned counsel vehemently submitted that these industrial drawings fall within the definition of artistic work as defined under Section 2(c) of the Copyright Act, 1957. Therefore, a copyright subsists in the drawings.

¶51

5.3 The Registration certificate placed on record by the applicant should be considered as a conclusive proof of the bona fide registration of the copyright over the industrial drawings.

¶52

5.4 The reproduction of the drawings copyrighted by the applicant constitutes an offence of Copyright Infringement as defined under Section 51 of the Copyright Act and is punishable under Section 63 of the Copyright Act.

¶53

5.5 The learned counsel has placed much emphasis on the fact that the reproduction of the said drawings being clearly and undoubtedly

¶54

Page 5 of 85

¶55

R/CR.MA/15682/2017 CAV JUDGMENT

¶56

copies of the original work, the same are liable to be seized by the police under Section 64 of the Act. The law provides for the condition precedent under Section 64 of the Copyright Act and then it is presumed that the condition was satisfied and therefore the Police has seized the system/machines.

¶57

5.6 The Magistrate ought to have given an opportunity of hearing to the applicant and should have made the requisite inquiry as stipulated in Section 64(2). However, the Magistrate failed to comply with the procedure of the aforesaid provisions.

¶58

5.7 On conclusion of the trial, the Magistrate could have passed appropriate orders to restore the machine as per the provisions of the statute, but at this stage, it is impermissible in law to pass an order for restoration of the machine much contrary to the object of Section 66 of the Copyright Act. It is contended that although Section 66 comes into play once the trial is concluded, yet the same also governs the application made under Section 64(2) of the Copyright Act.

¶59

5.8 The learned counsel submitted that the machine is certainly not registered under the Designs Act, 2000 because the applicant did not opt for the same. It is also sought to be contended that Section 15 of the Copyright Act is a special provision and on the basis of the same, the author of a work may either opt for a design copyright protection under either the Designs Act, 2000 or Copyright Act, 1957.

¶60

6 Thus, according to the learned counsel appearing for the applicant, two questions of law fall for the consideration of this Court:

¶61

[1] Is it permissible for this Court to pass an interim order

¶62

Page 6 of 85

¶63

R/CR.MA/15682/2017 CAV JUDGMENT

¶64

under Section 64(2) of the Act to deliver up the “copies of the work” beyond the scope of Section 66 of the Act or should the order passed under Section 64(2) of the Act be in consonance with the philosophy of Section 66 of the Act?

¶65

[2] Whether at the stage of Section 64(2) of the Act, can a Magistrate deliver / restore the seized “copies of the work” in favour of the accused / any other person interested in copies of the work, without carrying out an inquiry including as to (i) whether the satisfaction of the police under Section 64(1) of the Act with regard to the offence of infringement of copyright is bad? (ii) chance of repetition of the offence, and (iii) prima facie offence or such other issues as necessary.

¶66

7 In such circumstances referred to above, Mr. Tolia, the learned counsel appearing for the applicant prays that there being merit in all the three applications, those be allowed and the relief prayed for in the three applications may be granted.

¶67

● SUBMISSIONS ON BEHALF OF THE RESPONDENTS NOS.2 AND 3:

¶68

8 Mr. Jasani, the learned counsel appearing for the respondents Nos.2 and 3 has vehemently opposed all the three applications. He submitted that the FIR filed by the applicant before the 'A' Division Police Station, Morbi has been investigated and chargesheet has been filed. In such circumstances, the machine is not required for any kind of investigation, and therefore, the Courts below have rightly handed over the machine to its original owners of the machine i.e. the respondents Nos.2 and 3.

¶69

Page 7 of 85

¶70

R/CR.MA/15682/2017 CAV JUDGMENT

¶71

9 It is submitted that the prayer of the applicant to hand over the machine to him under Section 66 of the Copyright Act is premature and therefore, has been rightly declined by the Courts below.

¶72

10 Mr. Jasani submitted that the reading of Section 66 read with Sections 2(m), 2(t) and 2(y) of the Act makes it clear that the machine which was seized by the police as a muddamal in the present case, is neither a literary, a dramatic, a musical or an artistic work. The machine in question cannot be called an 'infringing copy' and therefore, is not covered under Section 66 of the Copyright Act. According to him, even otherwise, the application under Section 66 would come into play only after a fullfledged adjudication of the issue i.e. whether manufacturing of a machine can be said to be an infringement of a copyright. In the absence of any adjudication, an application under Section 66 is premature in nature.

¶73

11 It is submitted that the Explanation in Section 51 of the Act stipulates that for the purpose of the said section, the reproduction of literary, dramatic, musical or artistic work in the form of a Cinematograph film shall be deemed to be an 'infringing copy'. A machine would not fall within the ambit of an 'infringing copy' and thus would not fall within the array of 'infringement of copyright'. However, the question whether the manufacturing of a machine can be said to be an infringement or not is yet to be adjudicated by a competent forum wherein the applicant herein has filed a suit, i.e. the Regular Civil Suit No.2 of 2016.

¶74

12 It is submitted that Section 63 of the Act begins with the phrase “any person who knowingly infringes or abates infringement of the

¶75

Page 8 of 85

¶76

R/CR.MA/15682/2017 CAV JUDGMENT

¶77

copyright in a work”. It is submitted that for application of this section, there has to be first an adjudication on the aspect as to whether the act of manufacturing a machine can be called infringement. In the absence of any adjudication to this effect, there is no scope of application of this section. Even otherwise, this section mainly refers to infringement of a copyright in a 'work' and the plain reading of Section 2(y) makes it clear that manufacturing of a machine does not come within the purview of Section 2(y).

¶78

13 It is submitted that Section 63 has also provided an explanation. A plain reading of the said explanation would make it amply clear that if there is any drawing of any structure of a building which is a subject matter of copyright and if any construction is put of a building, the same would not infringe the copyright and construction of such building would not be termed as an offence. In the instant case, the applicant claims to be owner of a copyright of a drawing of a machine and therefore, the explanation to Section 63 completely exonerates the respondents Nos.2 and 3, who are not the manufacturer of the machine but are bona fide purchasers.

¶79

14 It is submitted that Section 64 of the Act empowers the police to seize the infringing copies. Alike Section 66, this section also mentions 'work', 'plates' and 'infringing copies'. The manufacturing of machine is not covered in either of the definitions and therefore, the police could not have seized the machine of the respondents Nos.2 and 3.

¶80

15 It is submitted that Section 64(2) of the Copyright Act speaks about making of an inquiry for handing over the infringing copies so seized by the police. The work 'inquiry' has not been defined in the Copyright Act, but it has been defined under the Code of Criminal

¶81

Page 9 of 85

¶82

R/CR.MA/15682/2017 CAV JUDGMENT

¶83

Procedure, 1973. Section 2(g) of the Code of Criminal Procedure, 1973 defines 'inquiry':

¶84

“(g) "inquiry" means every inquiry, other than a trial, conducted under this Code by a Magistrate or Court;”

¶85

16 It is submitted that an inquiry therefore means every inquiry other than a trial. The inquiry under Section 64(2) thus would mean inquiry as to who is the owner of the machine and nothing further. The Courts below therefore have rightly come to the conclusion that the respondents Nos.2 and 3 are the lawful owners being the bona fide purchasers and are entitled to retain the possession of the machine.

¶86

17 It is submitted that Section 14 of the Copyright Act explains the meaning of 'copyright'. The reliance placed by the applicant on Section 14(c) of the Act is with respect to an artistic work. A perusal of the said section would not include a machine within the meaning of artistic work. An artistic work has been defined under Section 2(c) which mentions a painting, a sculpture, a drawing (including a diagram, map, chart or plain), an engraving or a photograph, whether or not any such work possesses artistic quality. A perusal of the said definition would make it clear that a drawing or a diagram or a chart or a map or a plan, individually can be subject matter of a copyright but not the manufacturing of the machine as claimed by the applicant.

¶87

18 It submitted that Section 2(c) of the Designs Act, 2000 defines 'copyright' and Section 2(d) defines a 'design'. The definition of the term 'design' would include 'shape', pattern applied to any article, whether in two dimensional or three dimensional or in both the forms by any industrial process. The artistic work under Section 2(c) is excluded from

¶88

Page 10 of 85

¶89

R/CR.MA/15682/2017 CAV JUDGMENT

¶90

the definition of 'design'. The machine could have been subject matter of registration under the Designs Act, 2000 by a plain reading of Section 2(d). However, under a misconception of law, the applicant made a declaration before the Registrar of Copyrights that the diagram so sought to have been copyrighted by it is not registrable under the Designs Act, 2000. The said statement has been recorded by the Registrar in column Nos.14 and 15 of the extract of the Registrar maintained by the Registrar. The resultant effect of it is that neither the manufacturing of machine can be covered under the Copyright Act nor under the Designs Act, by virtue of such voluntary disclosure being made by the applicant before the Registrar of Copyrights.

¶91

19 It is submitted that a perusal of Section 2(d) of the Designs Act, 2000 would certainly include a machine to be a subject matter of a design and as a machine is capable of being registered under the Designs Act, 2000 by virtue of Section 15(2), no sooner the said design which is the subject matter of copyright is applied to any article and reproduced for more than 50 times by an industrial process by the owner of the copyright, then the said copyright in any design shall cease. Even otherwise, the applicant ceases to become the owner of the copyright as he claims to be using the copyrighted machine since 2013.

¶92

20 It is submitted that the trial Court as well as the Revisional Court has in extenso taken into consideration the true purport and implications of Sections 2, 14, 15, 63, 64 and 66 of the Copyright Act as well as the relevant provisions of the Designs Act, 1911 and the Designs Act, 2000. The Courts below have also taken into consideration that a machine does not come under the definition of an artistic work. It has also been observed that a machine cannot be called as a 'plate' or 'infringing copy' and after considering the same, have rejected the application filed by

¶93

Page 11 of 85

¶94

R/CR.MA/15682/2017 CAV JUDGMENT

¶95

the applicant and allowed the application of the respondents Nos.2 and 3. The Courts below have also considered the conduct of the applicant, who admitted that it was the police who procured the opinion from a professional for identifying the 'infringement'. Such fact is otherwise contrary as it was the applicant who on its own procured such a report suiting him. The concerned person who gave the report is otherwise also not statutorily authorized to opine on the aspect of piracy of design or infringement of copyright.

¶96

21 Mr. Jasani placed reliance on the following decisions in support of his submissions:

¶97

[1] Sun Textile Engineers vs. State of Gujarat [(2010) GLHEL HC 223866] (paras 2, 3, 8 and 9)

¶98

[2] Nainesh Chinubhai Patel vs. State of Gujarat [(2013) GLHELHC 23095] (paras 2, 3 and 7 to 10)

¶99

[3] Binita Rahul Shah vs. State of Gujarat [(2009) 3 GLR 2688 (paras 2, 3, 14, 15, 19, 20 and 21)

¶100

[4] Umesh Bharatbhai Thakkar and others vs. State of Gujarat and others [2017 Cri. LJ 3713] (paras 2, 5, 5.1, 5.2 and 5.3)

¶101

22 Mr. Tolia, the learned counsel appearing for the applicant, in rejoinder to the submissions canvassed by Mr. Jasani, the learned counsel appearing for the respondents Nos.2 and 3, submitted as under:

¶102

[1] The Courts below have overlooked and misinterpreted the provisions of the Copyright Act.

¶103

Page 12 of 85

¶104

R/CR.MA/15682/2017 CAV JUDGMENT

¶105

[2] The Courts below have misconstrued or rather misapplied Section 15 of the Act and that too, without reference to Section 2(d) of the Designs Act, 2000.

¶106

[3] The Courts below have ignored the registration of the “artistic work” of the applicant.

¶107

[4] The Courts below have not discussed anything as regards the inquiry as prayed for by the applicant under Section 64(2) of the Act.

¶108

[5] No proper findings have been given on the application for inquiry filed by the applicant vide Exhibit : 19 under Section 64(2) of the Act.

¶109

[6] The argument that Section 64(2) of the Act is limited or confined to the inquiry as to the ownership of the muddamal article i.e. the copies of the work and nothing beyond that, as the definition of inquiry as defined under Section 2(g) of the Cr.P.C. means every inquiry other than trial conducted under the Code by the Magistrate is not tenable in law as the same renders the provisions of Section 457 of the Cr.P.C. nugatory much less the provisions of the Copyright Act.

¶110

● ANALYSIS:

¶111

23 Having heard the learned counsel appearing for the parties and having considered the materials on record, the following questions fall for my consideration:

¶112

Page 13 of 85

¶113

R/CR.MA/15682/2017 CAV JUDGMENT

¶114

[1] Whether the reproduction of a design copyright in a material/tangible form falls within the ambit of reproduction under Section 14 of the Copyright Act, 1957?

¶115

[2] Whether a simultaneous protection under the Copyright Act, 1957 and the Designs Act, 2000 is necessary for proceeding under Sections 63 and 64 of the Copyright Act?

¶116

[3] Whether the police under Section 64 has the power to seize the infringing copy of a design which has a copyright protection?

¶117

[4] Whether the order of the Magistrate is sustainable in law?

¶118

[5] Whether the Additional Sessions Judge erred in rejecting the criminal revision applications filed by the applicant?

¶119

● CONCEPT OF COPYRIGHT:

¶120

24 The concept of copyright has been dealt by the Bombay High Court in the case of Burroughs Wellcome (India) Ltd. Vs. Unisole Pvt. Ltd. and Another; 1999 PTC Vol. 19 p 188 in the following words:

¶121

"8. Copyright it is a form of intellectual property. With advancement in technology it is very easy to copy. The basic test in actions based on the infringement of the copyright is that if a thing fetches a price, it can always be copied and therefore, it needs adequate protection. It is well settled that although under the Copyright Act 1957, there is a provision of registration, under Section 44 of the Act. It is not in doubt that the said procedure is an enabling provision and registration is not compulsory for the purpose of enforcing copyright. Section 44 of the Act provides for registration of work in which copyright exists but in order to claim copyright registration is not necessary. This is because registration is only to raise a presumption that the person shown in the certificate of registration is the author. This presumption is not conclusive, but no further proof is necessary unless there

¶122

Page 14 of 85

¶123

R/CR.MA/15682/2017 CAV JUDGMENT

¶124

is a proof rebutting the contents of the said certificate. Under Section 48 of the Registration Act therefore, the act of registration is ex facie prima facie evidence of the particulars incorporated in the certificate. There is no provision under the Act which deprives the author of his rights on account of nonregistration of the copyright. There is nothing in the Act to suggest that the registration is condition precedent to the subsistent of the copyright or acquisition of copyrights or ownership thereof or for reliefs of infringement of copyrights. The sinequanon of existence of a copyright is expenditure of skill, labour and capital on any work expanded by a person/author and unless the original work is produced in Court to prima facie show that the work has originated from author, no relief can be granted.

¶125

In other words, copyright exists even without it being registered for the purposes of its enforcement. The nature of copyright is also meant to be borne in mind. It subsists in any material form in which ideas are translated. Copyright is a incorporeal right. It does not lie in any idea, but it lies in the expression in which the idea is expressed. The work of an author therefore becomes the subject matter of the copyright. In essence the copyright is a negative right of preventing copying of physical material in the field of art, literature etc. Once an idea is written down, the writing becomes the subject matter of copy right. With globalisation and advancement of technology, even computer programmes come within the copyright. Any work conveying a particular information comes within the subject matter of a copyright and it needs protection. Even a catalogue of items manufactured by a manufacturer can come within the subject matter of copyright. Even a decoration or an artistic work on a carton or a contained of goods can become the subject matter of copyright......."

¶126

25 In the case of AngloDutch, Colour & Varnish Works Private Limited Vs. India Trading House; AIR1977 Delhi 41 it was held as under:

¶127

"I cannot see why other manufacturers should want to adopt the applicants' colour arrangements here except for the improper motive of trying to benefit from the latter's established goodwill." In this judgment, Garham, J. relied on the observations of Harman Lord Justice in the Court of Appeal in the case of F. HoffmannLa Roche & Company A. G. and Another v. D.D.S.A. Pharmaceuticals Limited : (1972) R.P.C. 1(4). It is worthwhile to quote the words of Harman Lord Justice at page 20 : "Goods of a particular getup just as much proclaim their origin as if they had a particular name attached to them, and it is well known that when goods are sold with a particular getup for long enough to be recognised by the public as goods of a particular manufacturer it does not matter

¶128

Page 15 of 85

¶129

R/CR.MA/15682/2017 CAV JUDGMENT

¶130

whether you know who the manufacturer is."

¶131

26 In the case of F. HoffmannLa Roche & Company A.G. and another v. D.D.S.A. Pharmaceuticals Limited 1972 R.P.C. 1 ; it was held that:

¶132

"The public are concerned with trade origin. Their confidence is built up in what they have already had. They want the same again. They may recognize the same again from the getup where this is distinctive. The same again includes the fact that the product is from the same origin as they have already had."

¶133

27 In another case Tavener Rutledge Ld. v. Specters Ld. RPC 1959 (84); it was observed at para 15 that:

¶134

"........It seems to me, going backwards in the order of the claims, that the Plaintiffs must succeed on the ground of FAO(OS) No.393/2008 Page 16 of 23 infringement of copyright. The Plaintiffs' design was an artistic work within the meaning of the Copyright Act and it has been copied, there is no doubt about it at all. The small differences that have been introduced on behalf of the Defendants do not make any substantial difference: substantially, in the words of Sec. 49 of the Copyright Act, 1956, the Plaintiffs' work has been reproduced on behalf of the Defendants and, therefore, it seems to be quite plain that there has been an infringement of the Plaintiffs' copyright in their picture, which is quite an artistic picture within its limitations, and the Plaintiffs are entitled to succeed on that ground.”

¶135

● QUESTION NO.1:

¶136

28 The Copyright law is essentially a statutory right falling under the domain of Intellectual property. The World Intellectual Property Organization (WIPO), the apex institution governing the Intellectual Property Rights, has described the Intellectual Property as “Intellectual property refers to creations of the mind: inventions; literary and artistic works; and symbols, names and images used in commerce.”

¶137

Page 16 of 85

¶138

R/CR.MA/15682/2017 CAV JUDGMENT

¶139

29 The Supreme Court has equated an intellectual property with tangible property and has upheld its constitutional validity under Article 300A of the Constitution. In K.T. Plantations Pvt. Ltd. v. State of Karnatake [(2011) 9 SCC 1]. The Supreme Court held that “ Article 300A proclaims that no person can be deprived of his property save by authority of law, meaning thereby that a person cannot be deprived of his property merely by an executive fiat, without any specific legal authority or without the support of law made by a competent legislature. The expression `Property' in Art. 300A is confined not to land alone, it includes intangibles like copyrights and other intellectual property and embraces every possible interest recognized by law.” [Emphasis Supplied]

¶140

30 Intellectual property is basically incorporeal property which is a product of original thought. While ideas however novel cannot hold a copyright – the manner in which they are expressed forms the basis upon which a copyright is accorded to a work – this is called the concept of Idea/Expression Dichotomy. The same has been noted by the Supreme Court in the R.G. Anand v. M/S. Deluxe Films [1978 SCC (4) 118]. The observations made by the Court are as under:

¶141

1. There can be no copyright in an idea, subject matter, themes, plots or historical or legendary facts and violation of the copyright in such cases is confined to the form, manner and arrangement and expression of the idea by tile author of the copyrighted work. [248 H, 249 A].

¶142

2. Where the same idea is being developed in a different manner, it is manifest that the source being common, similarities are bound to occur. In such a case the Courts should determine whether or not the similarities are on fundamental or substantial aspects of the mode of expression adopted in the copyrighted work. If the defendant's work is nothing but a literal imitation of the copyrighted work with some variations here and there it would amount to violation of the copyright. In other words, in order to be actionable the copy must be a substantial and material one which at once leads to the conclusion that the defendant is guilty of an act

¶143

Page 17 of 85

¶144

R/CR.MA/15682/2017 CAV JUDGMENT

¶145

of piracy. 1249 AC]

¶146

31 Similarly, in 1985, the Supreme Court of United States in Harper & Row v. Nation Enterprise 471 U.S. 539 (1985) held "no author may copyright facts or ideas. The copyright is limited to those aspects of the work termed 'expression' that display the stamp of the author's originality."

¶147

32 Another important criteria for determining copyrightability is the test of originality. It is an integral part of the copyright law as it forms the basis for attracting protection over a work. The Supreme Court in Eastern Book Company & Ors. v. D.B. Modak Appeal (civil) 6472 of 2004, while considering the standard of originality in the copyedited judgments or in the headnotes produced from the raw judgments of the Indian Courts, extensively dealt with the concept of originality in both original and derivative works. The relevant observations of the Supreme Court are extracted hereunder:

¶148

16. Ladbroke (Football) Ltd. v. Willim Hill (Football) Ltd., [1964] WLR 273 (HL), is a case where the concept of originality was considered on the basis of skill, judgment and/or labour in the context of compilation. Since 1951 the respondents, who were wellknown bookmakers, had sent their customers each week fixed odds football betting coupons arranged in a certain general form. In 1959 the appellants, who were also bookmakers, started sending out coupons closely resembling the respondents' coupons. A coupon was a sheet of paper on which were printed several lists of forthcoming matches. Beside each list were columns of squares on which the punter could indicate his forecast of the result of each match. Some of the lists included all the matches to be played; others included only a selection of them. The bets varied in character. A great variety of bets was offered and the odds offered differed widely from 52 to 20,0001. The respondents' coupon contained 16 lists, each with an appropriate name. The appellants' coupon, which contained 15 lists, closely resembled the respondents. The lists offered by the appellants were almost identical with those offered by the respondents in their corresponding lists. The respondents brought action claiming copyright in the coupons. The House of Lords was called upon to determine whether or to what extent copyright

¶149

Page 18 of 85

¶150

R/CR.MA/15682/2017 CAV JUDGMENT

¶151

attached to these coupons. The respondents said that a coupon must be regarded as a single work and that as such it was protected by copyright. The appellants sought to dissect the coupon. It was contended by the respondents that there had been a breach of copyright by the appellants, since the respondents' compilation, which must be regarded as a single work, was original and protected by copyright and the part taken by the appellants from the respondents' work was substantial. It did not follow that because the fragments of the compilation, taken separately, would not be copyright, the whole could not be copyright. It was submitted by the appellants that the derivative work of the respondents not being original, no copyright can be claimed and the inputs put, if considered separately, are of insignificant value and thus the respondents could not claim copyright.

¶152

The word `original' does not mean that the work must be the expression of original or inventive thought. Copyright Acts are not concerned with the originality of ideas, but with the expression of thought, and in the case of literary work, with the expression of thought in print or writing. The originality which is required relates to the expression of the thought. But the Act does not require that the expression must be in an original or novel form, but that the work must not be copied from another work that it should originate from the author; and as regards compilation, originality is a matter of degree depending on the amount of skill, judgment or labour that has been involved in making the compilation. The words 'literary work' cover work which is expressed in print or writing irrespective of the question whether the quality or style is high. The commonplace matter put together or arranged without the exercise of more than negligible work, labour and skill in making the selection will not be entitled to copyright. The word original does not demand original or inventive thought, but only that the work should not be copied but should originate from the author. In deciding, therefore, whether a work in the nature of a compilation is original, it is wrong to consider individual parts of it apart from the whole. For many compilations have nothing original in their parts, yet the sum total of the compilation may be original. In such cases the courts have looked to see whether the compilation of the unoriginal material called for work or skill or expense. If it did, it is entitled to be considered original and to be protected against those who wish to steal the fruits of the work or skill or expense by copying it without taking the trouble to compile it themselves. In each case, it is a question of degree whether the labour or skill or ingenuity or expense involved in the compilation is sufficient to warrant a claim to originality in a compilation.

¶153

17. While considering the question whether the copyright protection is available to the work created as a whole or the fragment of the work would be considered piecemeal and individually apart from the whole, the House of Lords said as under:

¶154

One test may be whether the part which he has taken is novel or

¶155

Page 19 of 85

¶156

R/CR.MA/15682/2017 CAV JUDGMENT

¶157

striking, or is merely a commonplace arrangement of ordinary words or wellknown data. So it may sometimes be a convenient short cut to ask whether the part taken could by itself be the subject of copyright. But, in my view, that is only a short cut, and the more correct approach is first to determine whether the plaintiffs work as a whole is `original' and protected by copyright, and then to inquire whether the part taken by the defendant is substantial.

¶158

A wrong result can easily be reached if one begins by dissecting the plaintiffs' work and asking, could section A be the subject of copyright if it stood by itself, could section B be protected if it stood by itself, and so on. To my mind, it does not follow that, because the fragments taken separately would not be copyright, therefore, the whole cannot be.

¶159

18. In the case of Walter and Another v. Lane, [1900] AC 539 (HL), the Earl of Rosebery on five occasions in 1896 and 1898 delivered to the public audience speeches on subjects of public interest. The Reporter of The Times_ took down the speeches in shorthand, wrote out their notes, corrected, revised and punctuated them and the reports were published in The Times, the speeches being given verbatim as delivered by Lord Rosebery. The reporters were employed under the terms that the copyright in all reports and articles composed by The Time magazine should belong to the proprietors. In the year 1899, the respondent published a book called “Appreciations and Addresses: Lord Rosebery”, which contained the reports of the above speeches of Lord Rosebery and it was admitted that these reports were taken from the reports in The Times'. Lord Rosebery made no claim. The appellants brought an action against the respondent claiming a declaration that a copyright of the articles and reports was vested in the proprietors of `The Times'. The issue involved in the case was whether a person who makes notes of a speech delivered in public, transcribes them and publishes in the newspaper a verbatim report of the speech, is the author of the report within the meaning of the Copyright Act, 1842, and is entitled to the copyright in the report. The House of Lords held that each reporter is entitled to report and each undoubtedly would have a copyright in his own published report. It was of course open to any other reporter to compose his own report of Lord Rosebery's speech, and to any other newspaper and book to publish that report; but it is a sound principle that a man shall not avail himself of another's skill, labour and expense by copying the written product thereof; and copyright has nothing to do with the originality or the literary merits of the author or composer. It may exist in the information given by a street dictionary. If a person chooses to compose and write a volume devoid of the faintest spark of literary or any other merit, there is no legal reason why he should not, if he desires, become the first publisher of it and register his copyright, worthless and insignificant as it would be.

¶160

Page 20 of 85

¶161

R/CR.MA/15682/2017 CAV JUDGMENT

¶162

19. In the case of Designers Guild Ltd. v. Russell Williams (Textiles) Ltd., [2000] 1 WLR 2416 (HL), the plaintiff brought proceedings claiming that the defendant had infringed the plaintiff_s copyright by copying one of its fabric designs, i.e. for the fabric design Ixia. The infringement of which the plaintiff complained was that for the purpose of creating its own design Marguerite by the defendant. The defendant had copied a substantial part of Ixia. There were mainly two main issues at the trial. First, what, if anything had the designer of Marguerite copied from Ixia. Secondly, did what had been copied amount to the whole or a substantial part of Ixia? It was said by the House of Lords that the law of copyright rests on a very clear principle that anyone who by his or her own skill and labour creates an original work of whatever character shall enjoy an exclusive right to copy that work. No one else may for a season reap what the copyright owner had sown.

¶163

20. University of London Press Limited v. University Tutorial Press Limited, [1916] 2 Ch 601 , is perhaps the most cited judgment regarding originality. Originality was held to be not required to be noval form but the work should not be copied from other work, that is, it should be original. The judgment was based on the following facts: Certain persons were appointed as examiners for matriculation examination of the University of London on a condition that any copyright in the examination papers should belong to the University. The University assigned the copyright to the plaintiff company. After the examination, the defendant company brought out a publication containing a number of the examination papers, including three which had been set by two examiners appointed by the University. The plaintiff company brought a case of copyright infringement against the defendant company. It was argued that since the setting of the papers entailed the exercise of brainwork, memory, and trained judgment, and even the selection of passages from other author's work involved careful consideration, discretion and choice they constituted original literary work. On the other and, the defendants claimed that what they had done was fair dealing for the purposes of private study which was permissible under the law. The court agreed that the material under consideration was a literary work. The words 'literary work' cover work which is expressed in print or writing, irrespective of the question whether the quality or style is high. The word `literary' seems to be used in a sense somewhat similar to the use of the word 'literature' in political or electioneering literature and refers to written or printed matter. With respect to the originality issue, the Court held that the term 'original' under the Act does not imply original or novel form of ideas or inventive thought, but the work must not be copied from another work that it should originate from the author.

¶164

21. In Kelly v. Morris, (1866) LR 1 Eq. 697, School of thought propounded is that, at least in respect of compilations, only time and expenses are necessary which is 'industrious collection.'

¶165

Page 21 of 85

¶166

R/CR.MA/15682/2017 CAV JUDGMENT

¶167

The plaintiff was the owner and publisher of the first directory. The defendant came out with another directory. The plaintiff sought an injunction against the defendant to restrain the publication of the defendant's directory on the allegations that the defendant was guilty of appropriating the information contained in the plaintiff's directory and obtained the benefit of many years of incessant labour and expense. The defendant, on the other hand, contended that there had been no unfair or improper use of the plaintiff's work. Information which was given in the plaintiff's directory was entitled to be used and adopted as long as he did not servilely copy it. The defendant had bestowed his independent time, labour and expense on the matter and thus had in no way infringed the copyright of the plaintiff. Granting injunction, the Court held that in the case of a directory when there are certain common objects of information which must, if described correctly, be described in the same words, a subsequent compiler is bound to set about doing for himself that which the first compiler has done. In case of a roadbook, he must count the milestones for himself. In the case of a map of a newly discovered island he must go through the whole process of triangulation just as if he had never seen any former map, and, generally he is not entitled to take one word of the information previously published without independently working out the matter for himself, so as to arrive at the same result from the same common sources of information, and the only use that he can legitimately make of a previous publication is to verify his own calculations and results when obtained. The compiler of a directory or guidebook, containing information derived from sources common to all, which must of necessity be identical in all cases if correctly given, is not entitled to spare himself the labour and expense of original inquiry by adopting and republishing the information contained in previous works on the same subject.

¶168

22. In the case of Parry v. Moring and Gollancz, Cop Cas (19011904) 49, the plaintiff, after obtaining permission from the representatives of the owner of certain letters, updated, chronologically arranged and translated them into modern English for their inclusion in his book. Later, the defendant published, as one of the series, an edition of the letters prepared by the plaintiff. The plaintiff, therefore, brought an action against the defendant alleging infringement of his copyright. The plaintiff maintained his copyright in his version of the text apart from the copyright in the text. It was held that there is copyright in the work of editing the text of a noncopyright work. The editor of a noncopyright work is not entitled to take the text from the edition of a rival editor and use it as a copy for the purpose of his own work.

¶169

23. In Gopal Das v. Jagannath Prasad and another, AIR 1938 All. 266 , the plaintiffs were the printers and publishers of the books. The book titled 'Sachitra Bara KokShastra' was printed for the first time in 1928

¶170

Page 22 of 85

¶171

R/CR.MA/15682/2017 CAV JUDGMENT

¶172

and had run into four editions since. The defendants printed and published another book titled 'AsliSachitraKokShastra' in 1930. The plaintiffs' case was that the book published by the defendants was a colorable imitation of their book and an infringement of plaintiffs' copyright. It was held by the Court that the plaintiffs compiled their book with considerable labour from various sources and digested and arranged the matter taken by them from other authors. The defendant instead of taking the pains of searching into all the common sources and obtaining his subject matter from them, obtained the subject matter from the plaintiffs' book and availed himself of the labour of the plaintiffs and adopted their arrangement and subject matter and, thus, such a use of plaintiffs' book could not be regarded as legitimate. It was held that a person whose work is protected by copyright, if he has collected the material with considerable labour, compiled from various sources of work in itself not original, but which he has digested and arranged, the defendant could not be permitted to compile his work of like description, instead of taking the pains of searching into all the common sources and obtaining the subjectmatter from them and to adopt his arrangement with a slight degree of colourable variation thereby saving pains and labour which the plaintiff has employed. The act of the defendant would be illegitimate use. The Court held that no one is entitled to avail himself of the previous labour of another for the purpose of conveying to the public the same information, although he may append additional information to that already published.

¶173

24. In V. Gvindan v. E.M. Gopalakrishna Kone AIR 1955 Madras 391, the respondents had published an EnglishEnglish Tamil Dictionary in 1932. The appellants were the publishers of similar Dictionary in 1947. An action was brought regarding the publication and sale of the dictionary by the appellants which was alleged to be constituting an infringement of the respondents copyright. The lower court went through both the books minutely and found, page after page, word after word, slavishly copied, including the errors, and found the sequence, the meanings, the arrangement and everything else practically the same, except for some 'deliberate differences' introduced here and there to cover up the piracy. The High Court referred to Copinger and James on Law of Copyright wherein the law has been neatly summarized that : In the case of compilations such as dictionaries, gazetteers, grammars, maps, arithmetics, almanacs, encyclopaedias and guide books, new publications dealing with similar subjectmatter must of necessity resemble existing publications, and the defence of common source is frequently made where the new publication is alleged to constitute an infringement of an earlier one. The Court held that in law books and in books as mentioned above there is very little amount of originality but the same is protected by law and no man is entitled to steal or appropriate for himself the result of another's brain, skill or labour even in such works. The Court further clarified that where there is a 'common source', the person relying on it must prove that he actually went to the common source from where he borrowed, employing his own skill, labour and brains and that he did not

¶174

Page 23 of 85

¶175

R/CR.MA/15682/2017 CAV JUDGMENT

¶176

merely copy.

¶177

25. In C. Cunniah & Co. v Balraj& Co., AIR 1961 Madras 111, the appellant firm was carrying on the business in pictures, picture frames, etc. One Sri T.M. Subramaniam drew a picture of Lord Balasubramanya and gave it the title of Mayurapriya and a copyright was assigned to the appellant. It came to the knowledge of the appellant firm that the respondent firm was printing and selling copies of a close and colourable imitation of the appellant_s picture under the style of BalaMurugan. The case of the defence was that their picture was an independent production and that the appellant had not acquired copyright in the picture and the subject dealt with in that picture was a common subject, in which no copyright could be acquired by anyone. The Court held that in order to obtain copyright production for literary, domestic, musical and artistic works, the subject dealt with need not to be original, nor the ideas expressed be something novel. What is required is the expenditure of original skill or labour in execution and not originality of thought.

¶178

26. In Agarwala Publishing House v. Board of High School and Intermediate Education and another, AIR 1967 All. 91, a writ petition was filed by a publisher firm challenging an amendment of the Regulations of the Board declaring that copyright of the question papers set at all examinations conducted by the Board shall vest in the Board and forbidding the publication of such question papers without the Board's permission. The question involved in the case was whether the question papers are `original literary work' and come within the purview of Section 13 of the Copyright Act, 1957. It was urged that no copyright can exist in examination papers because they are not original literary work. It was held that the original literary works referred to in Section 13 of the Copyright Act, 1957, are not confined to the works of literature as commonly understood. It would include all works expressed in writing, whether they have any literary merits or not. This is clear from the definition given in Section 2(o) of the Act which states that literary work includes tables and compilations. The Court further held that the word 'original' used in Section 13 does not imply any originality of ideas but merely means that the work in question should not be copied from some other work but should originate in the author, being the product of his labour and skill.

¶179

27. In the case of Gangavishnu Shrikisondas v. Moreshvar Bapuji Hegishte and others, ILR, 13 Bom 358, the plaintiff, a book seller, in 1984 brought out a new and annotated edition of a certain wellknown Sanskrit work on religious observances entitled 'Vrtraj, having for that purpose obtained the assistance of the pandits, who recast and re arranged the work, introduced various passages from other old Sanskrit books on the same subject and added footnotes. Later on, the defendant printed and published an edition of the same work, the text of which is identical with that of the plaintiff's work, which moreover contained the same additional pages and the same footnotes, at the same places, with

¶180

Page 24 of 85

¶181

R/CR.MA/15682/2017 CAV JUDGMENT

¶182

many slight differences. The foundation of both plaintiff's and defendant's books is an old Sanskrit work on Hindu ceremonial, which could have been published by anyone. The copyright claimed by the plaintiff was on the additions and alterations to the original text, which the parties admit to be material and valuable, and in which the copyright is claimed of its prior publication. The defendants argued that there was nothing really original in the plaintiff's book and, therefore, he was not entitled to copyright in the book. It was held by the Court that a new arrangement of old matters will give a right to the protection afforded by the law of copyright. If anyone by pains and labour collects and reduces it as a systematic compilation in the form of a book it is original in the sense that that entitles the plaintiff to the copyright. The plaintiff worked for such a new arrangement of old matters as to be an original work and was entitled to the protection; and that as the defendants had not gone to independent sources of the material but had pirated the plaintiff's work, they were restrained by injunction.

¶183

28. In Rai Toys Industries and Others v. Munir Printing Press, 1982 PTC 85, the plaintiff had published a Tambola ticket book containing 1500 different tickets in 1929. The plaintiffs alleged that the defendants had brought out another ticket book which the plaintiffs claimed to have written in 1929 and registered as copyright. The ticket book brought out by the defendants was alleged to contain 600 different tickets and the same had been copied identically from the books of the plaintiff. On this basis, a suit for injunction and rendition of account was filed by the plaintiff. The question before the court was whether the ticketbooks in the form of tables constitute literary work; and whether copyright has been violated or not? It was held by the High Court that preparation of tickets and placing them in tables required a good deal of skill and labour and would thus satisfy the test of being original literary work. It was recognized that the arrangement of numbers is individual work of a person who prepares it; it bears his individuality and long hours of labour. It is not information which could be picked up by all and sundry. The preparation of tickets is an individualized contribution and the compilation eminently satisfies the test of being an original literary work. Hence it was held to be a clear case of copyright violation when the defendant decided to pick and choose 600 tables on the sly and publish them as his individual work.

¶184

29. In Macmillan and Another v. Suresh Chandra Deb, ILR 17 Cal 952, the plaintiffs were proprietors of the copyright of a selection of songs and poems composed by various authors, which was published in 1861. In 1889, the defendants published a book containing same selection of poems and songs as was contained in plaintiffs book, the arrangement, however, being different. The plaintiffs claimed copyright in the selection made by them. The defendants, on the other hand, contended that there could be no copyright in such selection. The Court held that in the case of works not original in the proper sense of the term, but composed of, or compiled or prepared from material which are open to all, the fact that_

¶185

Page 25 of 85

¶186

R/CR.MA/15682/2017 CAV JUDGMENT

¶187

one man has produced such a work does not take away from any one else the right to produce another work of the same kind, and in doing so to use all the materials open to him. But, as the law is concisely stated by Hall, V.C., in Hogg v Scott, L.R. 18 Eq. 444, the true principle in all these cases is, that the defendant is not at liberty to use or avail himself of the labour which the plaintiff has been at for the purpose of producing his work, that is, in fact, merely to take away the result of another man's labour, or, in other words, his property. It is enough to say that this principle has been applied to maps, to road books, to guide books, to compilations on scientific and other subjects. This principle seems to be clearly applicable to the case of a selection of a poem. It was held that for such a selection as the plaintiff had made obviously required extensive reading, careful studying and comparison and the exercise of taste and judgment to make a selection for himself. But, if one spares himself this trouble and adopts some other person's selection, he offends against the principle. The Court was of the opinion that the selection of poems made by the plaintiff and embodied in the Golden Treasury was the subject of copyright and that the defendant's book had infringed that right.

¶188

30. These decisions are the authority on the proposition that the work that has been originated from an author and is more than a mere copy of the original work, would be sufficient to generate copyright. This approach is consistent with the 'sweat of the brow' standards of originality. The creation of the work which has resulted from little bit of skill, labour and capital are sufficient for a copyright in derivative work of an author. Decisions propounded a theory that an author deserves to have his or her efforts in producing a work, rewarded. The work of an author need not be in an original form or novel form, but it should not be copied from another's work, that is, it should originate from the author. The originality requirement in derivative work is that it should originate from the author by application of substantial degree of skill, industry or experience. Precondition to copyright is that work must be produced independently and not copied from another person. Where a compilation is produced from the original work, the compilation is more than simply a rearranged copyright of original, which is often referred to as skill, judgment and or labour or capital. The copyright has nothing to do with originality or literary merit. Copyrighted material is that what is created by the author by his skill, labour and investment of capital, maybe it is derivative work. The courts have only to evaluate whether derivative work is not the endproduct of skill, labour and capital which is trivial or negligible but substantial. The courts need not go into evaluation of literary merit of derivative work or creativity aspect of the same.”

¶189

33 Thus, it is apparent that the copyright subsists in those works which can be deemed as original works, predominantly originating from the author.

¶190

Page 26 of 85

¶191

R/CR.MA/15682/2017 CAV JUDGMENT

¶192

34 It is pertinent to note that Section 16 of the Copyright Act entitles copyright protection in accordance with the provisions of the Copyright statute – No person is entitled to copyright or any similar right in any work except as provided in the Copyright Act. Therefore, it is necessary to look into few relevant provisions of this Act for ascertaining whether the impugned drawings and the reproduction thereof would come within the realm of copyright protection.

¶193

35 As per the stipulation in Section 13 of the Copyright Act, 1957, the copyright subsists in the following categories of works:

¶194

“ Section 13. Works in which copyright subsists. —

¶195

(1) Subject to the provisions of this section and the other provisions of this Act, copyright shall subsist throughout India in the following classes of works, that is to say,—

¶196

(a) original literary, dramatic, musical and artistic works;

¶197

(b) cinematograph films; and

¶198

(c) [sound recording]. [sound recording]."

¶199

36 In addition to this, the copyright law confers statutory protection to the following categories of work which are defined in section 2(y) of the Copyright Act which is extracted hereunder:

¶200

Section 2(y) “work” means any of the following works, namely:

¶201

(i) a literary, dramatic, musical or artistic work;

¶202

(ii) a cinematograph film;

¶203

(iii) a [sound recording]; [sound recording];"

¶204

37 The matters before this Court pertain to the infringement of drawings, which fall under the category of ‘artistic work’ by virtue of the definition provided by the Copyright Act, 1957. Section 2(c) of the

¶205

Page 27 of 85

¶206

R/CR.MA/15682/2017 CAV JUDGMENT

¶207

¶208

“ Section 2(c) “artistic work” means, —

¶209

(i) a painting, a sculpture, a drawing (including a diagram, map chart or plan), an engraving or a photograph, whether or not any such work possesses artistic quality;

¶210

(ii) work of architecture; and work of architecture; and"

¶211

(iii) any other work of artistic craftsmanship;”

¶212

38 In the light of the aforesaid elucidations, I am of the view that the Registrar of Copyright with the certificate dated 25^th March 2014 bearing Registration No. A109401/2014 correctly registered the impugned designs under the category of ‘artistic work’ falling under section 2(c)(i) of the Act.

¶213

39 On the basis of the registration of any work, the following six rights become available to a bona fide owner of a copyright – (i) right to reproduce the work, (ii) right to issue copies of the work, (iii) right to perform the work in public (iv) right to make a cinematograph film or sound recording, (v) right to translate the work, (vi) right to adapt or derive other works from it. These rights are enumerated in the statute under Section 14 of the Copyright Act, 1957 and is set out hereunder:

¶214

“[14. Meaning of copyright.—For the purposes of this Act, “copyright” means the exclusive right subject to the provisions of this Act, to do or authorise the doing of any of the following acts in respect of a work or any substantial part thereof, namely:—

¶215

(a)in the case of a literary, dramatic or musical work, not being a computer programme,—

¶216

(i)to reproduce the work in any material form including the storing of it in any medium by electronic means;

¶217

(ii)to issue copies of the work to the public not being copies already in circulation;

¶218

Page 28 of 85

¶219

R/CR.MA/15682/2017 CAV JUDGMENT

¶220

(iii)to perform the work in public, or communicate it to the public;

¶221

(iv)to make any cinematograph film or sound recording in respect of the work;

¶222

(v)to make any translation of the work;

¶223

(vi)to make any adaptation of the work;

¶224

(vii)to do, in relation to a translation or an adaptation of the work, any of the acts specified in relation to the work in subclauses (i) to (vi);

¶225

(b)in the case of a computer programme,—

¶226

(i)to do any of the acts specified in clause (a);

¶227

(ii) to sell or give on commercial rental or offer for sale or for commercial rental any copy of the computer programme: [(ii) to sell or give on commercial rental or offer for sale or for commercial rental any copy of the computer programme:"

¶228

Provided that such commercial rental does not apply in respect of computer programmes where the programme itself is not the essential object of the rental.

¶229

(c)in the case of an artistic work,—

¶230

(i)to reproduce the work in any material form including depiction in three dimensions of a two dimensional work or in two dimensions of a three dimensional work;

¶231

(ii)to communicate the work to the public;

¶232

(iii)to issue copies of the work to the public not being copies already in circulation;

¶233

(iv)to include the work in any cinematograph film;

¶234

(v)to make any adaptation of the work;

¶235

(vi)to do in relation to an adaptation of the work any of the acts specified in relation to the work in subclauses (i) to (iv); (d)in the case of a cinematograph film,—

¶236

(i)to make a copy of the film including a photograph of any image forming part thereof;

¶237

(ii)to sell or give on hire or offer for sale or hire, any copy of the film, regardless of whether such copy has been sold or given on hire

¶238

Page 29 of 85

¶239

R/CR.MA/15682/2017 CAV JUDGMENT

¶240

on earlier occasions;

¶241

(iii)to communicate the film to the public;

¶242

(e)in the case of a sound recording,—

¶243

(i)to make any other sound recording embodying it;

¶244

(ii)to sell or give on hire, or offer for sale or hire, any copy of the sound recording, regardless of whether such copy has been sold or given on hire on earlier occasions;

¶245

(iii)to communicate the sound recording to the public.

¶246

Explanation. — For the purposes of this section, a copy which has been sold once shall be deemed to be a copy already in circulation.]

¶247

40 It is crucial to analyze the aforementioned rights conferred by the statute with the definition of ‘infringing copy’ as set out in Section 2(m) of the Copyright Act, 1957 and is extracted hereunder:

¶248

“Section 2(m) “infringing copy” means,—"

¶249

(i)in relation to a literary, dramatic, musical or artistic work, a reproduction thereof otherwise than in the form of a cinematographic film;

¶250

(ii)in relation to a cinematographic film, a copy of the film made on any medium by any means;

¶251

(iii)in relation to a sound recording, any other recording embodying the same sound recording, made by any means;

¶252

(iv)in relation to a programme or performance in which such a broadcast reproduction right or a performer’s right subsists under the provisions of this Act, the sound recording or a cinematographic film of such programme or performance, if such reproduction, copy or sound recording is made or imported in contravention of the provisions of this Act;”

¶253

41 On the conjoint reading of the aforesaid provisions, it appears that so far as an artistic work is concerned any reproduction, except in

¶254

Page 30 of 85

¶255

R/CR.MA/15682/2017 CAV JUDGMENT

¶256

the form of a cinematograph film, is deemed to be an ‘infringing copy’. Furthermore, the right of reproduction in material form – which includes the right to reproduce a twodimensional work in a three dimensional form – is an exclusive right vested with the owner of the copyright. Therefore, it substantiates the premise that any reproduction of a copyrighted design like a sketch or a drawing to a material/tangible form, like a machine, will be termed as an infringing copy as it is in violation of the exclusive statutory right of the lawful owner of the work constituting an offence under section 51 of the Act which is extracted hereunder:

¶257

“Section 51. When copyright infringed.—Copyright in a work shall be deemed to be infringed—

¶258

(a)when any person, without a licence granted by the owner of the copyright or the Registrar of Copyrights under this Act or in contravention of the conditions of a licence so granted or of any condition imposed by a competent authority under this Act —

¶259

(i)does anything, the exclusive right to do which is by this Act conferred upon the owner of the copyright, or

¶260

[(ii) permits for profit any place to be used for the communication of the work to the public where such communication constitutes an infringement of the copyright in the work, unless he was not aware and had no reasonable ground for believing that such communication to the public would be an infringement of copyright; or]

¶261

(b)when any person—

¶262

(i)makes for sale or hire, or sells or lets for hire, or by way of trade displays or offers for sale or hire, or

¶263

(ii)distributes either for the purpose of trade or to such an extent as to affect prejudicially the owner of the copyright, or (iii)by way of trade exhibits in public, or

¶264

(iv)imports 2[***] into India, any infringing copies of the work:

¶265

[Provided that nothing in subclause (iv) shall apply to the import of one copy of any work, for the private and domestic use of the

¶266

Page 31 of 85

¶267

R/CR.MA/15682/2017 CAV JUDGMENT

¶268

importer.]

¶269

Explanation. —For the purposes of this section, the reproduction of a literary, dramatic, musical or artistic work in the form of a cinematograph film shall be deemed to be an “infringing copy”.

¶270

42 In the case of Midas Hygiene Private Limited v. Sudhir Bhatia [ (2004) 3 SCC 90], the Supreme Court has made the following observations visàvis the artistic work and the reproduction into a three dimensional medium thereof:

¶271

“46. We thus summarize our findings as follows: 

¶272

a. The definition of 'artistic work' has a very wide connotation as it is not circumscribed by any limitation of the work possessing any artistic quality. Even an abstract work, such as a few lines or curves arbitrarily drawn would qualify as an artistic work. It may be two dimensional or three dimensional. The artistic work may or may not have visual appeal.

¶273

b. The rights to which a holder of an original artistic work is entitled are enumerated in Section 14(c) of the Copyright Act.

¶274

c. It is the exclusive right of the holder of a Copyright in an original artistic work to reproduce the work in any material form. For example, a drawing of an imaginary futuristic automobile, which is an original artistic work, may be reproduced in the three dimensional material form using an element, such as a metal sheet.”

¶275

43 The very act of reproduction of an artistic work would constitute an infringement under Section 51 of the Copyright Act, 1957. In Chancellors Masters & Scholars of University of Oxford &Ors. v. Rajeshwari Photocopy Case & Anr. CS(OS) No.2439/2012 the Delhi High Court, while deciding whether the photocopies of coursepacks extracted from the copyrighted books published by the Oxford University Press would constitute infringement, as they would fall within the ambit of reproduction, observed the following:

¶276

Page 32 of 85

¶277

R/CR.MA/15682/2017 CAV JUDGMENT

¶278

“It is noteworthy that Section 14(a)(i) constitutes right to reproduce literary work per se as copyright and Section 51(a)(i) constitutes such reproduction per se as infringement of copyright and Section 2(m) constitutes the copy so reproduced as infringing copy. Infringement is complete on reproduction of the work. To constitute infringement, it is not necessary that the person who has so reproduced the work, should put it to any use or should distribute or sell the same to others. However Section 14(a)(ii) also vests the exclusive right to issue copies of the work to the public not being copies already in circulation, in the owner of the copyright and constitutes the same as copy right. Thus the action of issuing copies of the work to public would also constitute infringement of copyright under Section 51. Neither Section 14(a) (ii) nor Section 51(a)(i) require such issuance of copies to be for consideration or to make profit. Issuance of copies even if without any charge thus constitutes infringement of copyright.”

¶279

44 In view of the aforenoted observations, I am of the view that it is unequivocally clear that the drawings created by the applicant herein hold legitimate copyright; these drawings are reproduced in a material form – as machines – which were purchased by the respondents Nos. 2 and 3 and therefore, they ought to be considered as the infringing copies. I am of the opinion that the machines constitute copies of the work and therefore, were liable to be seized till the final disposal of the trial.

¶280

● QUESTION NO.2:

¶281

45 The second question falling for my consideration is whether a simultaneous protection under the Copyright Act, 1957 and the Designs Act, 2000 is necessary for proceeding under Sections 63 and 64 of the Copyright Act?

¶282

46 The learned Counsel for the respondents Nos. 2 and 3 contended vehemently that the reproduction of the industrial drawings into a material form – i.e. in the form of a machine – does not constitute an

¶283

Page 33 of 85

¶284

R/CR.MA/15682/2017 CAV JUDGMENT

¶285

offence under section 63 of the Copyright Act, 1957 as the copyright conferred on these drawings are invalid. The learned counsel, further elaborating on this point, submitted that the applicant should have acquired registration under the Designs Act, 2000 and not under the Copyright Act, 1957. The Chief Judicial Magistrate and the Sessions Judge erroneously accepted the aforesaid argument in toto. Thus, it is necessary to analyze the provisions of both the statutes for construing correct interpretation.

¶286

47 The relevant statutory provisions are extracted below:

¶287

2. Definitions. In this Act, unless there is anything repugnant in the subject or context.

¶288

(a) "article" means any article of manufacture and any substance, artificial, or partly artificial and partly natural; and includes any part of an article capable of being made and sold separately;

¶289

(c) "copyright" means the exclusive right to apply a design to any article in any class in which the design is registered;

¶290

d) "design" means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include any mode or principle of construction or anything which is in substance a mere mechanical device, and does not include any trademark as defined in clause (v) of sub section (1) of section 2 of the Trade and Merchandise Marks Act, 1958 (43 of 1958) or property mark as defined in section 479 of the Indian Penal Code (45 of 1860) or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957 (14 of 1957).

¶291

4. Prohibition of registration of certain designs. A design which (a) is not new or original; or

¶292

(b) has been disclosed to the public anywhere in India or in any other country by publication in tangible form or by use or in any other way prior to the filing date, or where applicable, the priority date of the application for registration; or

¶293

Page 34 of 85

¶294

R/CR.MA/15682/2017 CAV JUDGMENT

¶295

(c) is not significantly distinguishable from known designs or combination of known designs; or

¶296

(d) comprises or contains scandalous or obscene matter, shall not be registered.

¶297

Provisions of the Indian Copyright Act, 1957

¶298

15. Special provision regarding copyright in designs registered or capable of being registered under the 1 [***] Designs Act, 1911. —

¶299

(1) Copyright shall not subsist under this Act in any design which is registered under the [***] Designs Act, 1911 (2 of 1911).

¶300

(2) Copyright in any design, which is capable of being registered under the [***] Designs Act, 1911 (2 of 1911) , but which has not been so registered, shall cease as soon as any article to which the design has been applied has been reproduced more than fifty times by an industrial process by the owner of the copyright, or, with his licence, by any other person.

¶301

48 To delve deeper into this issue, a reference can be made to an article written by Dr. Shamnad Basheer, (see Basheer, Shamnad, Intellectual Property Overlaps: An Indian Perspective (May 1, 2013). Overlapping Intellectual Property Rights, 2012. Available at SSRN: https://ssrn.com/abstract=2436430 ) wherein he explores the varied combinations available for harmonizing the Design versus Copyright conflict. The relevant extract describing the dispute created by Section 15 of the Copyright Act is set out below:

¶302

“Although the copyright design interface has received the greatest amount of judicial attention, the resolution has been far from optimal. Section 15 of the Copyright Act provides that any subject matter registered as a design will lose copyright protection. Problematically, however, Section 15(2) stipulates that subject matter entitled to design protection, but not so registered, will lose copyright protection as well, the moment 50 industrial articles embodying the registrable design are produced.

¶303

This provision does not merely prevent doubledipping by creators who wish to avail of both sets of IP rights; it goes on to effectively strip them of both sets of rights, that is, the creator loses both design protection (since the creator failed to register the subject matter as a design) and copyright

¶304

Page 35 of 85

¶305

R/CR.MA/15682/2017 CAV JUDGMENT

¶306

protection (since the creator produced the work industrially more than 50 times.

¶307

The subject of unending controversy, this provision was invoked by Mattel, the owner of the famous 'Scrabble' board game. Claiming copyright over the board as an 'artistic work', Mattel sought a restraining order against an allegedly infringing electronic game titled 'Scrabulous'.

¶308

The court held that since Mattel had not registered the board as a design and it had been produced in excess of fifty times, it lost copyright protection as well under Section 15(2) of the Copyright Act.

¶309

A similar situation arose in the Microfibres case, in which the plaintiff, a US company sued an Indian trader for infringing its copyright in various patterns on upholstery fabric, which they claimed were artistic works. Here again, the Court held that since the patterns were eligible for protection as designs under the Designs Act, and had not been so registered, Section 15(2) kicked in to liquidate any potential claim of copyright protection, at least in so far as the copyright in the specific design was concerned.

¶310

Apart from various interpretative tussles, this section, which is rather punitive in that it effectively strips creators of both sets of IP rights and forces one to rethink the rationale underlying design protection. If original designs can be protected as artistic works under copyright law, why have design protection in the first place—particularly when protection is contingent upon registration (unlike the copyright regime) and entails administrative expenditure. If the concern is that designs (particularly industrially producible ones) ought not to merit more than 15 years' protection, would that concern not be redressed by amending the Copyright Act to ensure that any artistic work produced industrially more than 50 times is granted protection for only 15 years (and not for a term equaling life of the author plus 60 years, as with other copyrighted works)?

¶311

The abolition of an expensively administered design regime also helps eliminate a significant legal anomaly triggered by Section 2(d) which while defining design protectable subject matter excludes 'artistic' works as below:

¶312

only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include any mode or principle of construction or anything which is in substance a

¶313

Page 36 of 85

¶314

R/CR.MA/15682/2017 CAV JUDGMENT

¶315

mere mechanical device, and does not include any trade mark as defined in clause (v) of subsection (1) of section 2 of the Trade and Merchandise Marks Act, 1958 or property mark as defined in section 479 of the Indian Penal Code or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957.

¶316

Under this definition, Section 15(2) loses all potency, for there can be no subject matter that is both copyrightable and design registrable, that is, no artistic work would ever qualify for protection as a design.

¶317

A single judge of the Delhi High court ventured to remedy this legislative gaffe in Microfibres Inc. v Girdhar And Co by holding that works created for the purpose of industrial application and replication would not qualify as 'artistic' works and would, therefore, be eligible for design protection. To this end, he drew a distinction between a painting (an artistic work, the intent of whose creation was never industrial application), and an upholstery design (created for the sole purpose of industrial application and therefore not amounting to an 'artistic work').

¶318

The comparison with the paintings of M.F. Hussain would be otiose as the work in question, in the present case, is not a piece of art in the form of a painting What cannot be lost sight of is the very object with which such arrangements or works had been made. The object is to put them to industrial use. An industrial process has to be done to apply the work or configuration to the textile. It is not something which has to be framed and put on the wall or would have any utility by itself. The two important aspects are the object with which it is made (which is industrial) and its inability to stand by itself as a piece of art. In fact, it has no independent existence of itself.

¶319

Such a distinction is problematic in that it calls into question the "intention" or "object" of the artist in question, often difficult to gauge, when almost all works of artistic merit today have applications and markets well beyond the initial medium and mode of expression.

¶320

Further, the recent addition of Section 52(l)(w) to the Copyright Act is at odds with this 'intentionality' requirement. It exempts from infringement 'the making of a threedimensional object from a twodimensional artistic work, such as a technical drawing, for the purposes of industrial application of any purely functional part of a useful device'. This assumes that a 'technical drawing' (which is always prone to industrial application) is capable of protection as an artistic work.

¶321

The Division Bench of the Delhi High Court (to which the decision of the single judge was appealed) reversed the 'object' or 'intentionality'

¶322

Page 37 of 85

¶323

R/CR.MA/15682/2017 CAV JUDGMENT

¶324

requirement, holding that:

¶325

The artist's intent at the time of creation of the artistic work is indecipherable at the best of times. Artists are governed more often than not by their emotions and moods and whatever be the intention at the time of the creation of the artistic work cannot, in our view, determine the nature of protection available to the artistic work.

¶326

The judges, however, sought to annihilate the inherent anomaly in Section 15(2) by drawing a distinction between copyright in the underlying 'artistic work' and the copyright in the 'applied design':

¶327

We do hold that in the original work of art, copyright would exist and the author/holder would continue enjoying the longer protection granted under the Copyright Act in respect of the original artistic work. Thus, for instance a famous painting will continue to enjoy the protection available to an artistic work under the Copyright Act. A design created from such a painting for the purpose of industrial application on an article so as to produce an article which has features of shape, or configuration or pattern or ornament or composition of lines or colours and which appeals to the eye would also be entitled design protection in terms of the provisions of the Designs Act. Therefore, if the design is registered under the Designs Act, the Design would lose its copyright protection under the Copyright Act but not the original, painting. If it is a design registrable under the Designs Act but has not so been registered, the Design would continue to enjoy copyright protection under the Act so long as the threshold limit of its application on an article by an industrial process for more than 50 times is reached. But once that limit is crossed, it would lose its copyright protection under the Copyright Act. This interpretation, in our view, would harmonize the Copyright and the Designs Act in accordance with the legislative intent.

¶328

In short, the Court appears to suggest that while reproduction of 50 pieces extinguishes the copyright in the applied design, it does not necessarily extinguish the copyright in the artistic work per se. Conceptually, this is a problematic distinction, as the Copyright Act does not recognize a separate copyright covering the 'design' applied to an article. Rather the copyright protection is over the artistic work', a category specifically mentioned in the Copyright Act and defined to include:

¶329

i) a painting, a sculpture, a drawing (including a diagram, map, chart or plan), an engraving or a photograph, whether or not any such work possesses artistic quality;

¶330

Page 38 of 85

¶331

R/CR.MA/15682/2017 CAV JUDGMENT

¶332

ii) work of architecture; and

¶333

iii) any other work of artistic craftsmanship

¶334

To illustrate the ambit of the term artistic work, consider a simple drawing of a mouse (basic drawing) which is used to create a mouse shaped bottle (product). The term artistic work would ordinarily include the basic drawing of the mouse, the design drawing for the final product, the mould used to create the product and the final product (mouse shaped bottle). The copyright in the design would encompass all of these separate categories (drawing, mould etc) and a normal reading of the provision would mean that all of these copyrights extinguish upon the creation of 50 articles of the mouse shaped bottle.

¶335

The Division Bench ruling however curtails the scope of artistic works embodied in the design and appears to restrict it to only the copyright in the design drawing, the mould and the ultimate article/product itself. While such a reading helps us redress some of the issues associated with the anomalies inherent in section 15 (2), it throws up others.

¶336

Firstly, it resurrects the logical paradox inherent in the scope of the term design which has been defined to exclude "artistic works". To elaborate:

¶337

Section 2(d) of the designs act excludes all artistic works' from the ambit of design protection. Ordinary principles of copyright law suggest that in the hypothetical above, the design drawing (to create the mouse shaped bottle), the mould as well as the bottle qualify as artistic works. Consequently, they are not eligible for design protection and cannot be registered as designs, a highly problematic result.

¶338

The single judge addressed this anomaly by insisting on an 'intentionality' requirement, that is, that a work created for industrial production can never be considered as an artistic work. However, given that the division bench did away with the intentionality requirement, the anomaly has been resurrected.

¶339

Secondly, given that the copyright in the underlying drawing continues to exist despite the extinction of the copyright in the "design" under section 15, could a copyright owner claim a violation of copyright in the drawing on the ground that the defendant makes a 3D reproduction of his 2D drawing? That such a claim is permissible is evident from a case, where the judge alludes to this possibility without reflecting on the fact that although the copyright in the design is allegedly expunged under his framework, it could still be resurrected by such a claim.

¶340

Page 39 of 85

¶341

R/CR.MA/15682/2017 CAV JUDGMENT

¶342

Thirdly, it bears noting that under the courts' framework, a "design" effectively loses protection the moment it is applied on an article and reproduced more than 50 times. Given current technological advances, it is fairly commonplace to produce 50 copies of an article in less than a day.

¶343

Therefore, as opposed to 15 years that an otherwise designprotectable work gains, a work that faces the wrath of Section 15(2) may not even gain a single day of protection.

¶344

The Delhi High Courts' heroic efforts at infusing sense into a tortured legislative framework is commendable. However, one hopes that the Parliament takes serious note of this flawed framework and proceeds to amend it immediately.74 Better still would be to abolish the design regime altogether! As noted earlier, if the intention is to merely offer differential protection to those artistic works that are commercially exploited through industrial application,75 one might simply effectuate this through an amendment to the Copyright Act. The consequent abolition of the designs regime would not only redress the various anomalies, but also help save costs, for copyright protection entails no registration.”

¶345

49 In the light of the conundrum surrounding Section 15 of the Copyright Act, 1957 and to correct the misconstrued provision, and for the purpose of future references, I must make an endeavour to explain the law on this point:

¶346

50 It is manifest from the semantics of the impugned provision that Section 15 of the Copyright Act anticipates only one type of protection either in the Designs Act, 2000 or in the Copyright Act, 1957. When a design gets the option of seeking protection under two different statutes, it becomes vulnerable to misconstruction.

¶347

51 History of Design Legislation:

¶348

In order to catch the attention of buyers, an article must be visually attractive. Visual attraction thus enhances its marketability. A bad appearance of an article may have an adverse impact on its marketability. In ancient times also, the craftsmen and artisans chose a shape or pattern to make the articles attractive to the eye of the buyers

¶349

Page 40 of 85

¶350

R/CR.MA/15682/2017 CAV JUDGMENT

¶351

by employing their personal skill. After the industrial revolution, it became possible to give mass articles a unique shape by industrial process. Furthermore, The first designs legislation enacted in India was the Patterns and Designs Protection Act, 1872 which extended to the inventors of new patterns and designs in British India the exclusive privilege of making, selling and using the invention in India or authorising others to do so for a very much short duration of time. Later the Invention and Designs Act, 1888 was enacted to consolidate and amend the law relating to the protection of inventions and designs. In the United Kingdom the Patents and Designs Act was enacted in 1907. It became the basis of the Indian Patents and Designs Act, 1911. Later in 1970 the Patents Act repealing provisions relating to patents in the Indian Patents and Designs Act, 1911 was enacted by the Parliament. The provisions relating to designs in the Indian Patents and Designs Act, 1911, were allowed to continue under the new title Designs Act, 1911 with some consequential amendments. ( see: Design Protection In India: A Critique, Virendra Kumar Ahuja, (1994) 2 SCC (Jour) 11 ).

¶352

52 It is essential to elaborate on the definition of Design as construed by the observations of the Supreme Court in Bharat Glass Tube Limited vs. Gopal Glass Works Ltd. (2008) 10 SCC 657 :

¶353

“The expression,' design' has come up for interpretation in English courts. The expression, design is almost pari materia with the definition of design in the Indian context. The expression, 'design' in the English Act which is known as the Registered Designs Act, 1949 reads as under:

¶354

In this Act the expression,' design' means features of shape, configuration, pattern or ornament applied to an article by any industrial process, being features which in the finished article appeal to and are judged solely by the eye, but does not include

¶355

(a) a method or principle of construction or

¶356

Page 41 of 85

¶357

R/CR.MA/15682/2017 CAV JUDGMENT

¶358

(b) features of shape or configuration which

¶359

(i) are dictated solely by the function which the article has to perform, or

¶360

(ii) are dependent upon the appearance of another article of which the article is intended by the author of the design to form an integral part."

¶361

The history of this definition has been detailed by Russel Clarke and Howe on Industrial Designs (Seventh Edition) at para 3.11 at page 74 which reads as under :

¶362

" 311. This definition contains a cumulative series of requirements, many of which have been the subject of judicial decision and analysis. The historical process by which this definition has evolved is of importance to its present day interpretation and application. Some of the more important embellishments to the definition, such as those dealing with eye appeal and methods or principles of construction, have found their way into the pre2001 statutory definition as a result of the explicit adoption such requirements were held to be implicit in the earlier and less elaborate statutory definitions of "design". This manifests an intention by the legislature to adopt and make explicit the principles developed in those cases.

¶363

3.13. The words of the section are:"design means features of shape configuration, pattern or ornament applied to an article." (emphasis supplied).

¶364

Thus a registrable design, as defined by the RDA (A), must have reference to some specific article to which it is to be applied. The design to be registered " is a shape, configuration or pattern to be applied a particular specified article". It can be readily seen that a particular pattern of surface ornamentation could be applied to wide range of different articles. An application for registration was not in respect of the pattern as such, but in respect of its application to the specific article named. If it was desired to register the same design, e.g. a surface pattern or decoration, in respect of a series of different articles (apart from the special case of articles which together form a set), then a separate application had to be made in respect of each article, and each application to register was numbered separately and treated as a separate and distinct application.

¶365

In the case of designs consisting of features of shape or configuration, there may of course be cases where the design is intrinsically applicable only to a specific kind of article. The article itself does not, however, constitute the design. In Dover v. Nurnberger Celluloid Waren Fabrik Gebruder Wolff, Buckley L.J. said:

¶366

Page 42 of 85

¶367

R/CR.MA/15682/2017 CAV JUDGMENT

¶368

"Design means, therefore, a conception or suggestion or idea of a shape or of a picture or of a device or of some arrangement which can be applied to an article by some manual, mechanical or chemical means. It is a conception, suggestion, or idea, and not an article, which is the thing capable of being registered. It is a suggestion of form or ornament to be applied to a physical body." [ Pugh v. Riely Cycle Co Ltd. (1912) 29 R.P.C. 196].

¶369

Accordingly, it is submitted that a design is an idea or conception as to features of shape, configuration, pattern or ornament applied to an article. Although that idea, while still in the author's head, may be potentially capable of registration, in fact it must be reduced to visible form to be identifiable, and until it is so reduced there is nothing capable of registration, It may be so rendered either by its being embodied in the actual article, or by its being placed upon a piece of paper in such a way that the shape or other features of the article to be made are clear to the eye. Whenever the means of identification ( under some of the old Acts, provision was made whereby a mere verbal description could in some cases be accepted as sufficient), as soon as the idea is reduced to a form which is identifiable, there is something which is a "design", and which, if new or original, may be registrable."

¶370

Similarly our attention was also invited to para 27.07 of the law of Copyright and Industrial Designs by P.Narayanan (Fourth Edition) which reads as under :

¶371

“27.07. Design as a conception or idea "Design means a conception or suggestion or idea of a shape or of a picture or of a device or of some arrangement which can be applied to an article by some manual, mechanical or chemical means mentioned in the definition clause. It is a suggestion of form or ornament to be applied to a physical body". It is a conception, suggestion or idea, and not an article, which is the thing capable of being registered. It may according to the definition clause, be applicable to any article whether for the pattern or for the shape or configuration or for the ornament thereof (that is to say of the article) or for any two or more of such purposes. The design, therefore, is not the article, but is the conception, suggestion, or idea of a shape, picture, device or arrangement which is to be applied to the article, by some one of the means to be applied to a physical body." A design capable of registration cannot consist of a mere conception of the features mentioned in the definition, or in the case of an article in three dimensions, of a representation of such features in two dimensions It must, in such a case, in order to comply with the definition, consist of the features as they appear in the article to which they have been applied by some

¶372

Page 43 of 85

¶373

R/CR.MA/15682/2017 CAV JUDGMENT

¶374

industrial process or means. An applicant for registration of a design has to produce a pictorial illustration of the idea or suggestion which he has to establish as new or original;"

¶375

Therefore, the concept of design is that a particular figure conceived by its designer in his mind and it is reproduced in some identifiable manner and it is sought to be applied to an article. Therefore, whenever registration is required then those configuration has to be chosen for registration to be reproduced in any article. The idea is that the design has to be registered which is sought to be reproduced on any article. Therefore, both the things are required to go together, i.e. the design and the design which is to be applied to an article.”

¶376

Section 4 of the Designs Act, 2000 lays down the originality criteria – for obtaining design protection, the work must be new or original, inter alia – Section 2(g) of the Designs Act, 2000 describes original as “originating from the author of design, and includes cases which though old in themselves yet new in their application” In Gammetervs The Controller Of Patents & Designs & Others A.I.R.1919 Cal.887. Their Lordships discussed the concept of new and original in consonance with the definition given under section 2(g) of the Designs Act, 2000. In that context, it was observed as follows:

¶377

"A design in order to be new or original within the meaning of the Act, need not be new or original in the sense of never having been seen before as applied to any article whatever, there might be a novelty in applying an old thing to a new use, provided it is not merely analogous. Where the design of a metal band called the "Novelty band," intended to attach a watch to the wrist, was similar in shape and configuration to a bracelet previously manufactured for ornamental purpose."

¶378

"Though the shape of the "Novelty" band by itself could not be said to be new and original, the application of it to a watch to be worn on the wrist was for a purpose so different from and for a use so similar to the purpose and use of the bracelet that the design in question might be said to be original. worn on the wrist was for a purpose so different from and for a use so similar to the purpose and use of the bracelet that the design in question might be said to be original."

¶379

53 Another fundamental test for the protection of design is with regard to its visual appeal. It is the most intrinsic criteria for determining

¶380

Page 44 of 85

¶381

R/CR.MA/15682/2017 CAV JUDGMENT

¶382

whether a design qualifies for protection under the statute. In Microfibres vs. Girdhar 128 (2006) DLT 238 , it was observed by a learned Single Judge of the Delhi High Court:

¶383

48. Learned counsel for the defendants referred to the definition of 'artistic work' in Section 2(c) of the Copyright Act to contend that the only category in which the work in question can fall would be 'painting'. The word 'painting', it was contended, is meant to refer to works which are created to have independent existence and not to patterns or configurations which are merely created for being applied through an industrial process on another article. In this behalf, a reference has been made to the judgment of Gujarat High Court in Deepak Printery, Ahmedabad v. The Forward Stationary Mart and Ors. (1976) XVII Guj. LR 338 to substantiate the plea that 'artistic work' is not concerned with the production of commercial articles with the help of ideas borrowed from an artist as the purpose is not to prevent rival manufacturers from using the same idea or to prevent competition between them.

¶384

In view of the aforesaid, it was contended that if the definition of 'design' is seen under Section 2(d) of the Designs Act, 2000 or under Section 2(5) of the Designs Act, 1911, in a 'design', the features are merely ornamental (i.e., nonfunctional) and are applied to another article (which would be the textile fabric in the present case) to provide it visual appeal and the features constitute an integral part of the article and has no independent existence. Thus, the subject work is stated not to be a 'painting' in the sense of a work of M.F. Hussain having independent existence, but is clearly a 'design' forming an integral part of the fabric.

¶385

54 In Microfibres (supra) , the learned Single Judge drew a distinction between a painting (an artistic work, the intent of whose creation was never industrial application), and an upholstery design (created for the sole purpose of industrial application and therefore not amounting to an artistic work). The learned Single Judge observed:

¶386

“ The comparison with the paintings of M.F. Hussain would be otiose as the work in question, in the present case, is not a piece of art in the form of a painting What cannot be lost sight of is the very object

¶387

Page 45 of 85

¶388

R/CR.MA/15682/2017 CAV JUDGMENT

¶389

with which such arrangements or works had been made. The object is to put them to industrial use. An industrial process has to be done to apply the work or configuration to the textile. It is not something which has to be framed and put on the wall or would have any utility by itself. The two important aspects are the object with which it is made (which is industrial) and its inability to stand by itself as a piece of art. In fact, it has no independent existence of itself.”

¶390

55 However, the Division Bench of the Delhi High Court (to which the decision of the Single Judge was appealed) reversed the 'object' or intentional requirement, holding that:

¶391

“The artist's intent at the time of creation of the artistic work is indecipherable at the best of times. Artists are governed more often than not by their emotions and moods and whatever be the intention at the time of the creation of the artistic work cannot, in our view, determine the nature of protection available to the artistic work.

¶392

¶393

We do hold that in the original work of art, copyright would exist and the author/holder would continue enjoying the longer protection granted under the Copyright Act in respect of the original artistic work. Thus, for instance a famous painting will continue to enjoy the protection available to an artistic work under the Copyright Act. A design created from such a painting for the purpose of industrial application on an article so as to produce an article which has features of shape, or configuration or pattern or ornament or composition of lines or colours and which appeals to the eye would also be entitled design protection in terms of the provisions of the Designs Act. Therefore, if the design is registered under the Designs Act, the Design would lose its copyright protection under the Copyright Act but not the original, painting. If itis a design registrable under the Designs Act but has not so been registered, the Design would continue to enjoy copyright protection under the Act so long as the threshold limit of its application on an article by an industrial process for more than 50 times is reached. But once that limit is crossed, it would lose its copyright protection under the Copyright Act. This interpretation, in our view, would harmonize the Copyright and the Designs Act in accordance with the legislative intent.”

¶394

Page 46 of 85

¶395

R/CR.MA/15682/2017 CAV JUDGMENT

¶396

56 In short, the Division Bench appears to suggest that while the reproduction of 50 pieces extinguishes the copyright in the applied design, it does not necessarily extinguish the copyright in the artistic work per se. Conceptually, this is a problematic distinction, as the Copyright Act does not recognize a separate copyright covering the 'design' applied to an article. Rather the copyright protection is over the 'artistic work', a category specifically mentioned in the Copyright Act and defined to include:

¶397

i) a painting, a sculpture, a drawing (including a diagram, map, chart or plan), an engraving or a photograph, whether or not any such work possesses artistic quality;

¶398

ii) work of architecture; and

¶399

iii) any other work of artistic craftsmanship

¶400

57 Thus, it is pertinent to note that the Design Act and the Copyright Act both stipulate different eligibility criteria for protection – Copyright Act is predominantly for the creative works, which are functional while the protection under the Designs Act attracts large scale production of the same design in multiple formats and necessitates visual appeal. On this point the following observations are relevant:

¶401

58 A Division Bench of the Delhi High Court in the case o f Rajesh Masrani vs. Tahiliani Design Pvt. Ltd. [FAO (OS) No.393 of 2008 decided on 28^th November 2008] had the occasion to consider its earlier Division Bench decision in the case of Microfibres (supra) referred to above. In Rajesh Masrani, the plaintiff alleged infringement of copyright by the defendant on the ground that there was a colourable imitation or substantial reproduction of the plaintiff's fabric prints including the underlying drawings/sketches thereof, or of any other of

¶402

Page 47 of 85

¶403

R/CR.MA/15682/2017 CAV JUDGMENT

¶404

the plaintiff's copyrighted works including works of artistic craftsmanship or other literary or artistic works.

¶405

The contentions of the defendant were as under:

¶406

“a) The plaintiff is not registered under the Designs Act, 2000 which is mandatory for seeking protection under it, thus he has no right to claim protection under the above Act.

¶407

b) The plaintiff is also not the registered owner of the copyright, hence, he has no right to claim protection under the Copyright Act, 1957.

¶408

c) The plaintiff has no right to claim protection under the Copyright Act as the artistic work for which copyright is alleged to exist is actually 'design' which comes under the purview of the Designs Act, 2000 and since the same are not registered under the Designs Act, the plaintiff is not entitled to protection under the said Act.

¶409

d) The textile design do not constitute 'artistic work' within the meaning of Section 2(c)(i) of the Copyright Act, 1957 and is, therefore, not capable of protection. The suit of the plaintiff is liable to be dismissed in view of Section 15 of the Copyright Act, 1957 as no copyright subsist under the said provision of the Act.”

¶410

The contentions of the plaintiff were as under:

¶411

“(a) The protection of the Copyright Act, 1957 was available to the plaintiff in view of the fact that the plaintiff is the author/owner of the copyright in the creative work done by Mr. Tarun Tahiliani for and on behalf of the plaintiff, or by designers employed by the plaintiffcompany.

¶412

(b) The drawings which are made in the course of developing the garments or accessories are 'artistic work' within the meaning of Section 2(c) (i) of the Copyright Act.

¶413

(c) The prints, which are the subject matter of the present suit, belong to the couture line and not more than twenty or possibly fewer copies are made of any single costume.

¶414

(d) 'Artistic work' is distinct from 'design' and remains 'artistic work' per se

¶415

Page 48 of 85

¶416

R/CR.MA/15682/2017 CAV JUDGMENT

¶417

distinct from the 'garment' to which it is applied and, therefore, is covered under the exclusion contained in Section 2(d) of the Designs Act, 2000.

¶418

(e) In order to get the protection under the Copyright Act, there is no condition that the copyright must be registered under the Copyright Act, 1957. In case the subject matter of the product is covered within the definition of Section 2 of the Copyright Act which is original artistic work, the case for infringement of copyright is made out within the meaning of Section 13 and 14 of the Copyright Act.”

¶419

The Division Bench discussed the provisions of the Copyright Act, 1957, Designs Act, 1911 and Designs Act, 2000. The Division Bench concentrated more on Section 15 of the Copyright Act, 1957. The Division Bench took notice of the fact that the plaintiff had made a specific statement in paras 3 to 5 of the plaint to the effect that the garments in question were original artistic work and were covered under Section 2(c)(i) and Section 2(c)(iii) of the Copyright Act. The Division Bench opined that the work of the plaintiff was entitled for protection under Section 2(c) of the Copyright Act as the same was original artistic work. The Division Bench took the view that as the work of the plaintiff was 'artistic work', which is not covered under Section 2(d) of the Designs Act, 2000, the same was not capable of being registered under the Designs Act and the provisions of Section 15(2) of the Act, 1957 were not applicable. On behalf of the defendant, reliance was placed on the Division Bench decision of the Delhi High Court in the case of Microfibres (supra).

¶420

The Division Bench took notice of two paragraphs of Microfibres (supra) i.e. paras 62 and 72. The two paragraphs have been quoted in the judgment. The same reads as under:

¶421

“62. In order for the work of the plaintiff to qualify as an 'artistic work', it must fall within the definition of Subsection(c) of Section 2 of the

¶422

Page 49 of 85

¶423

R/CR.MA/15682/2017 CAV JUDGMENT

¶424

Copyright Act. A reading of the said provision would show that attempt of the plaintiff can only be to bring it within the concept of 'painting'. The comparison with the painting of M.F. Hussain would be otiose as the work in question, in the present case, is not a piece of art by itself in the form of a painting. There is no doubt that labour has been put and there is some innovativeness applied to put a particular configuration in place. Such configuration is of the motifs and designs which by themselves would not be original. The originality is being claimed on the basis of the arrangement made. What cannot be lost sight of is the very object with which such arrangements or works had been made. The object is to put them to industrial use. An industrial process has to be done to apply the work or configuration to the textile. It is not something which has to be framed and put on the wall or would have any utility by itself. The two important aspects are the object with which it is made (which is industrial) and its inability to stand by itself as a piece of art. In fact, it has no independent existence of itself.

¶425

72. The conspectus of the aforesaid shows that what the plaintiff was actually required to do was to register the designs which the plaintiff has failed to do. The designs are older and, thus, would have been registrable under the Designs Act of 1911. The plaintiff failed to register the designs. Insofar as the Designs Act of 2000 is concerned, the plaintiff has also admittedly not registered the designs under the said Act. It has already been discussed above that these designs were capable of registration under the earlier and the current Designs Act. In fact, the Registrar of Designs had confirmed vide letter dated 19.07.2002 that the fabric designs continued to be registered under the Designs Act of 2000. The plaintiff had even initiated criminal proceedings where certain reports were filed by the investigative agency saying that the offences were really under the Designs Act and not under the Copyright Act. However, it is not necessary to dwell greater in respect of that matter. It would suffice to say that the patterns and designs of the plaintiff were capable of registration both under the old Act and the new Act and the plaintiff failed to do so with the result that the protection is not available to the plaintiff which would have arisen if they had been so registered. The said issues are answered accordingly."

¶426

The Division Bench thereafter proceeded to observe as under:

¶427

“The above said case, in our view, is on an entirely different footing from the present case for the following reasons:

¶428

a) In the present case, as per the pleadings, the work in question has not been reproduced more than 50 times by an industrial process by the plaintiff. In the case of Micro Fibre (supra), the

¶429

Page 50 of 85

¶430

R/CR.MA/15682/2017 CAV JUDGMENT

¶431

court has specifically noticed and highlighted in Para 62 of the said judgment, the fact that the intent of creating the design in question was to put them into industrial use and the production of the said work had occurred more than 50 times as mentioned in Para 73 of the said judgment.

¶432

b) The court has also noticed in Para 47 of the said judgment that the subject matter of the work in dispute are floral design which are applied upon fabric used for upholstery through the industrial process and the plaintiff has registered the subject matter of the work of design in United Kingdom and the said certificates of registration have also been placed on record.

¶433

c) In Para 72 of the judgment, it was further held that the plaintiff failed to register the designs which were capable of being registered under the Designs Act, herefore, the protection of copyright in the design was not available to the plaintiff. In the present case all the above said aspects are absent and, therefore, the said judgment is not applicable to the facts and circumstances of the present case. Moreover as we have already come to the conclusion that the subject matter comes under Section 2(c) of the Copyright Act, this judgment does not help the case of the appellant.”

¶434

59 Thus, the view taken by this Court of the issues arising in the present matter gets fortified by the Division Bench decision of the Delhi High Court in the case of Rajesh Masrani (supra).

¶435

60 In Photoquip India Limited vs Delhi Photo Store, O.S. 684 of 2014 , the Supreme Court observed as under:

¶436

“A perusal of the Copyright Act and the Designs Act and indeed the Preamble and the Statement of Objects and Reasons of the Designs Act makes it clear that the legislative intent was to grant a higher protection to pure original artistic works such as paintings, sculptures etc and lesser protection to design activity which is commercial in nature. The legislative intent is, thus, clear that the protection accorded to a work which is commercial in nature is lesser than and not to be equated with the protection granted to a work of pure Article.”

¶437

61 In Midas Hygiene Private Limited v. Sudhir Bhatia (supra), the

¶438

Page 51 of 85

¶439

R/CR.MA/15682/2017 CAV JUDGMENT

¶440

Supreme Court noted that the drawings which acquire protection under the Designs Act are commercial in nature.

¶441

“d. The design protection in case of registered works under the Designs Act cannot be extended to include the copyright protection to the works which were industrially produced.

¶442

e. A perusal of the Copyright Act and the Designs Act and indeed the Preamble and the Statement of Objects and Reasons of the Designs Act makes it clear that the legislative intent was to grant a higher protection to pure original artistic works such as paintings, sculptures etc and lesser protection to Design Activity which is commercial in nature. The legislative intent is, thus, clear that the protection accorded to a work which is commercial in nature is lesser than and not to be equated with the protection granted to a work of pure art.

¶443

f. The original paintings/artistic works which may be used to industrially produce the designed article would continue to fall within the meaning of the artistic work defined under Section 2(c) of the Copyright Act, 1957 and would be entitled to the full period of copyright protection as evident from the definition of the design under Section 2(d) of the Designs Act. However, the intention of producing the artistic work is not relevant.

¶444

g. This is precisely why the legislature not only limited the protection by mandating that the copyright shall cease under the Copyright Act in a registered design but in addition, also deprived copyright protection to designs capable of being registered under the Designs Act, but not so registered, as soon as the concerned design had been applied more than 50 times by industrial process by the owner of the copyright or his licensee.

¶445

h. In the original work of art, copyright would exist and the author/holder would continue enjoying the longer protection granted under the Copyright Act in respect of the original artistic work per se.

¶446

i. If the design is registered under the Designs Act, the Design would lose its copyright protection under the Copyright Act. If it is a design registrable under the Designs Act but has not so been registered, the Design would continue to enjoy copyright protection under the Act so long as the threshold limit of its application on an article by an industrial process for more than 50 times is reached. But once that limit is crossed, it would lose its copyright protection under the Copyright Act. This interpretation would harmonize the Copyright and the Designs Act in accordance with the legislative intent."

¶447

Page 52 of 85

¶448

R/CR.MA/15682/2017 CAV JUDGMENT

¶449

62 In Microfibres Inc v. Girdhar (Supra), the learned Single Judge has made the following observations with regard to Section 15 of the Copyright Act, 1957:

¶450

67. The second issue arises from the provisions of Section 15 of the Copyright Act. The Section provides that copyright subsists under the Copyright Act in any design, which is registered under the Designs Act, 1911 and in case a design is capable of being registered under the Designs Act, 1911, the copyright shall cease as long as any article to which the design has been applied has been reproduced more than 50 times by an industrial process by the owner of the copyright or his licensee. It is not in dispute that reproduction has occurred more than 50 times. It is not also in dispute that there is no registration which has taken place under the Designs Act, 1911 (or under the Designs Act, 2000).

¶451

68. An important aspect is that the designs and works have been registered in the years 19981999 or even prior to that and put to industrial / commercial use. At the relevant stage of time, it was the Designs Act of 1911 which was in operation since the Designs Act, 2000 came into force only in May, 2001. The works of the plaintiff were capable of registration under the Designs Act of 1911. The plaintiff, however, failed to register the same at that relevant stage of time. It may be taken note of here that the plaintiff itself has set out that it registered the patterns under the Designs Act in England.

¶452

69. Learned counsel for the defendants has also referred to judgment of the House of Lords in King Features Syndicate Incorporated and Frank Cecil Betts, The Personal Representative of ElzieChrisler Segar, Deceased v. O. and M. Kleeman Ld. LVIII RPC 207. This judgment is commonly known as Popeye's case. The copyright was claimed in respect of the fictitious character drawing known as 'Popeye the Sailor' which had originally appeared in a series of cartoons and later in cinematograph films. The allegation of infringement related to reproduction of the character in the form of toys and brooches. The author, when he produced the drawing, had no intention of industrializing the same, but some years later, the character of Popeye had become popular and the author proceeded to license certain manufacturers to make articles in the form of designs such as toys, brooches, etc. The relevant observations, however, relate to the fact that the House of Lords found that the legislature was drawing a distinction between the Copyright Act and what has been called design copyright or copyright and design under the Patent and Designs Act. It was held that the latter is a right distinct from the former, thus, the 'design' means only the feature of shape,

¶453

Page 53 of 85

¶454

R/CR.MA/15682/2017 CAV JUDGMENT

¶455

configuration, pattern or ornament applied to any other article by an industrial process which in the finished article appeal to and are judged solely by the eye. The design, thus, may be the shape of a coal scuttle, a basin, a motor car, a locomotive engine or any material object and it may be shaped and sculptured to serve as a model for commercial production. It may also be a drawing in the flat of a complex pattern intended to be used for the manufacture of things such as linoleum or wall paper. Designs copyright were, thus, held to be distinguished from artistic copyright. The rights under the Patent and Designs Act were much narrower than those given by the Copyright Act and in respect of such products, it was not intended that they should have cumulative protection both under the Copyright Act and under the Patent and Designs Act.

¶456

70. It may be noticed that learned Single Judge of this Court in Polymer Papers Ltd. v. Gurmit Singh and Ors. 2002 (25) PTC (Del) has considered the effect of Section 2(c) of the Copyright Act and Section 11 of the Designs Act to come to the conclusion that industrial drawings and designs in which copyright was claimed were for purposes of manufacturing of filter related machines or components and as such clearly fell within the meaning of 'design' as defined in the Designs Act of 2000 and since the alleged designs had not been registered under the Designs Act, the plaintiff in the suit could not claim any copyright therein. The submission of the plaintiffs that the copyright in artistic works was not required to be registered under the Designs Act was repealed since copyright was claimed of the industrial drawings and designs which were being used for manufacturing purposes. Once it was found that the designs or drawings were being used for manufacturing purposes and were not registered under the Designs Act, 2000, the plaintiff was not held entitled to the relief.

¶457

71. The linked question to this which, thus, arises is the requirement of registration by the plaintiff under the Designs Act of 2000. It is not in dispute that the plaintiff is not registered proprietor of the designs under the said Act. In terms of Section 11 of the Designs Act of 2000 when a design is registered, the registered proprietor of the design has copyright in the design for 10 years, which could be extended by another 5 years. The legal proceedings under Section 22 of the Designs Act, 2000 would arise during the existence of the copyright in any design.

¶458

¶459

Page 54 of 85

¶460

R/CR.MA/15682/2017 CAV JUDGMENT

¶461

capable of registration under the earlier and the current Designs Acts. In fact, the Registrar of Designs had confirmed vide letter dated 19.07.2002 that the fabric designs continued to be registered under the Designs Act of 2000. The plaintiff had even initiated criminal proceedings where certain reports were filed by the investigative agency saying that the offences were really under the Designs Act and not under the Copyright Act. However, it is not necessary to dwell greater in respect of that matter. It would suffice to say that the patterns and designs of the plaintiff were capable of registration both under the old Act and the new Act and the plaintiff failed to do so with the result that the protection is not available to the plaintiff which would have arisen if they had been so registered. The said issues are answered accordingly.

¶462

63 Thus, the applicant had the option to register the drawings in question under either of the two statues – the Copyright Act or the Designs Act. The applicant decided to opt for the copyright protection for the said drawings. The Magistrate while considering the application preferred by the applicant herein erroneously construed Section 15 and held that the said drawings ought to have been registered under both the Copyright Act, 1957 and the Designs Act, 2000 in order to get protection against the reproduction in a tangible medium.

¶463

64 A design which falls under the domain of an artistic work as per the definition given under Section 2(c) of the Copyright Act, 1957 will have to qualify all the requisite criteria of copyrightability such as the originality of the expression and creativity. Such a design will not attract the registration under the ambit of Section 2(d) of the Designs Act, 2000 because artistic work is categorically excluded and the statutory requirements for the protection differ in both the statues. Such a design will only be open for the registration under the Copyright Act, 1957 thereby warranting only one type of protection that is a design copyright protection.

¶464

Page 55 of 85

¶465

R/CR.MA/15682/2017 CAV JUDGMENT

¶466

65 Moreover, so far as the reproductions through the industrial processes is concerned, it is apposite to describe the ‘Industrial processes’ procedures involving the the chemical, physical, electrical or mechanical steps to aid in the manufacturing of an item or items, usually carried out on a very large scale.

¶467

66 The following observations of the Bombay High Court Pranda Jewelery Pvt. Ltd. & Ors. vs. Aarya 24 Kt & Ors. Suit No.2477 of 2014 are relevant.

¶468

“In practice, it works like this. If a painting, say Hussain's painting of a horse, is simply reproduced in any medium, i.e. on paper, canvass or even a cloth, and in any form, i.e. in two or three dimensions, whether by an industrial process or otherwise, it will continue to enjoy full copyright in such reproduction under the Copyright Act. But if the painting is used as a motif to produce, say, sarees, the industrial application, namely, use as a motif in a saree, would loose copyright protection, if not registered as a design under the Designs Act, 2000, after more than fifty applications. The difference between the former use and the latter use, is that what is reproduced is an artistic work itself in the former and what is produced in the latter case is an article, which is not by itself an artistic work.”

¶469

“15 .The emerging position from the above discussion is this. An 'artistic work' so long as it can qualify as an artistic work reproduced in any form shall continue to enjoy the copyright available to it under the Copyright Act, 1957. But when it is used as the basis for designing an article by its application by an industrial process or means, meaning thereby an article other than the artistic work itself in a two or three dimensional form, it would enjoy a lesser period of protection of copyright under Section 11 of the Designs Act, 2000, if registered as a design under that Act, and if not so registered ( despite being registrable ), would cease to enjoy any copyright after more than fifty such applications, under Section 15(2) of the Copyright Act, 1957. Once again, as an original artistic work it would continue to enjoy the full copyright under the Copyright Act, 1957 and cannot be reproduced in any two or three dimensional form by anyone except the owner of the copyright. What it would cease to enjoy is the copyright protection in its industrial application for production of an article. I have already explained above what is meant by an 'article' and that it is different from the 'artistic work'

¶470

Page 56 of 85

¶471

R/CR.MA/15682/2017 CAV JUDGMENT

¶472

itself. In practice, it works like this. If a painting, say Hussain's painting of a horse, is simply reproduced in any medium, i.e. on paper, canvass or even a cloth, and in any form, i.e. in two or three dimensions, whether by an industrial process or otherwise, it will continue to enjoy full copyright in such reproduction under the Copyright Act. But if the painting is used as a motif to produce, say, sarees, the industrial application, namely, use as a motif in a saree, would loose copyright protection, if not registered as a design under the Designs Act, 2000, after more than fifty applications. The difference between the former use and the latter use, is that what is reproduced is an artistic work itself in the former and what is produced in the latter case is an article, which is not by itself an artistic work.”

¶473

67 I am of the view that' reproduction' is an exclusive right vested with the original owner of the copyright in a work, therefore, the legislative intent could not have been to curtail the right of the owner. To cure the anomaly or mischief created by Section 15, I would suggest that any design copyright registered under the Copyright Act as an artistic work should get the protection term as stipulated by the copyright statute provided that the artistic work is not commercial in nature and created through an industrial process. The Registrar of copyright while deciding the applicability of the Designs Act should conclusively decide on this aspect, on the basis of Statement of Particulars submitted by the applicant at the time of registration of copyright in a work. In such a case, the protection of such a design copyright will become absolute and would not cease on 50 reproductions through any process, other than the industrial process. For example, handmade reproduction will not result in cessation of the design copyright if the work is registered under the Copyright Act, 1957. Therefore, if a copyright subsists in a painting which is reproduced over 50 times by hand or any other means other than an industrial process the same shall not lead to revocation of copyright in the said painting.

¶474

Page 57 of 85

¶475

R/CR.MA/15682/2017 CAV JUDGMENT

¶476

68 A reference can be made to a similar provision of the United Kingdom’s Copyright (Industrial Processes and Excluded Articles) Order No. 2 of 1989 1989 No. 1070COPYRIGHT. The Copyright (Industrial Process and Excluded Articles) (No. 2) Order 1989 did 26^th June 1989 laid before the Parliament on 4^th July 1989 which came into force from 1^st August 1989 is extracted hereunder. The order was made by the Secretary of State, in exercise of the powers conferred upon him by Section 52(4) of the Copyright Act, Designs and Patents Act, 1981.

¶477

1. This Order may be cited as the Copyright (Industrial Process and Excluded Articles) (No. 2) Order 1989 and shall come into force on 1st August 1989.

¶478

2. An article is to be regarded for the purposes of Section 52 of the Act (limitation of copyright protection for design derived from artistic work) as made by an industrial process if—

¶479

(a) it is one of more than fifty articles which—

¶480

(i) all fall to be treated for the purposes of Part I of the Act as copies of a particular artistic work, but

¶481

(ii) do not all together constitute a single set of articles as defined in Section 44(1) of the Registered Designs Act 19492; or

¶482

(b) it consists of goods manufactured in lengths or pieces, not being hand made goods.

¶483

3.—(1) These are excluded from the operation of Section 52 of the Act— (a) works of sculpture, other than casts or models used or intended to be used as models or patterns to be multiplied by any industrial process;

¶484

(b) wall plaques, medals and medallions; and

¶485

(c) printed matter primarily of a literary or artistic character, including book jackets, calendars, certificates, coupons, dressmaking patterns, greetings cards, labels, leaflets, maps, plans, playing cards, postcards,

¶486

Page 58 of 85

¶487

R/CR.MA/15682/2017 CAV JUDGMENT

¶488

stamps, trade advertisements, trade forms and cards, transfers and similar articles.

¶489

(2) Nothing in article 2 of this Order shall be taken to limit the meaning of “industrial process” in paragraph (1)(a) of this article.

¶490

4. The Copyright (Industrial Designs) Rules 19573 and the Copyright (Industrial Process and Excluded Articles) Order 19894 are hereby revoked.

¶491

69 It is evident that both the statutes – the Copyright Act and the Designs Act have overlapping but distinct criteria for conferring protection, which ought to be used in a purposive manner for harmonizing both the statutes. In this context, let me refer to a Division Bench decision of this Court in the case of IPEG Inc. v Kay Bee Engineers [2016 AIR (Guj) 104] . I may quote the relevant observations as under:

¶492

“11. In any case, the provisions of Sec. 15 (2) of Copyright Act does not apply in the present case on the face of it. To avail the defence of Sec. 15 (2) of the Copyright Act, defendants have to prove that there is design capable of being registered under the Designs Act, 2000. Therefore, it is mandatory to consider the provisions of the Designs Act, 2000. Further, material change in the definition of design in Designs Act, 1911 and Designs Act, 2000 are important which are reproduced hereunder :

¶493

*Designs Act, 1911*	*Designs Act, 2000*
Sec.2(5) design means only the	Sec. 2 (d) design means only the
features of shape, configuration,	features of shape, configuration,
pattern or ornament applied to any article by any industrial process or means, whether	pattern, ornament or composition of lines or colours applied to any article whether in two
manual, mechanical or chemical,	dimensional or three dimensional
separate or combined, which in	or in both forms, by any
the finished article appeal to and are judged solely by the eye; but	industrial process or means, whether manual, mechanical or

¶494

Page 59 of 85

¶495

R/CR.MA/15682/2017 CAV JUDGMENT

¶496

does not include any mode or	chemical, separate or combined,
principle of construction or anything which is in substance a mere mechanical device, and does not include any trade mark as defined in clause (v) of sub section (1) of section 2 of the Trade and Merchandise Marks Act, 1958, or property mark as defined in section 479 of the Indian Penal Code (45 of 1860);	which in the finished article appeal to and are judged solely by the eye; but does not include any mode or principle of construction or anything which is in substance a mere mechanical device, and does not include any trade mark as defined in clause (v) of subsec. (1) of Sec. 2 of the Trade and Merchandise Marks Act, 1958 (43 of 1958) or property mark as defined in Sec. 479 of the Indian Penal Code (45 of 1860) or any artistic work as defined in clause (c) of Sec. 2 of the copyright Act, 1957 (14 of 1957). (Emphasis supplied)

does not include any mode or

chemical, separate or combined,

principle of construction or
anything which is in substance a
mere mechanical device, and does
not include any trade mark as
defined in clause (v) of sub
section (1) of section 2 of the
Trade and Merchandise Marks
Act, 1958, or property mark as
defined in section 479 of the
Indian Penal Code (45 of 1860);

which in the finished article
appeal to and are judged solely by
the eye; but does not include any
mode or principle of construction
or anything which is in substance
a mere mechanical device, and
does not include any trade mark
as defined in clause (v) of subsec.
(1) of Sec. 2 of the Trade and
Merchandise Marks Act, 1958 (43
of 1958) or property mark as
defined in Sec. 479 of the Indian
Penal Code (45 of 1860) or any
artistic work as defined in clause
(c) of Sec. 2 of the copyright Act,
1957 (14 of 1957). (Emphasis
supplied)

¶497

12. Thus, the artistic work as defined in sec. 2 (c) of Copyright Act, 1957 is specifically excluded from the definition of design in the Act of 2000. The drawings including industrial drawings, diagram, etc. are included in the said definition of artistic work.

¶498

13. Further, the change in provisions of Sec. 15 (2) of the Copyright Act i.e. as stood before 21.6.2012 and thereafter are very important, which are as under :

¶499

Copyright Act, 1957	Copyright Act, 1957
Sec. 15 (2) before 21.6.2012	Sec. 15 (2) after 21.6.2012
(2) Copyright in any design, which is capable of being registered under the [*] Design Act, 1911 (2 of 1911), but which has not been so registered, shall cease as soon as any article to which the design has been applied has been reproduced more than fifty times by an industrial process by the owner of the	(2) Copyright in any design, which is capable of being registered under the [*] Designs Act, 2000 (16 of 2000), but which has not been so registered, shall cease as soon as any article to which the design has been applied has been reproduced more than fifty times by an industrial process by the owner of the copyright or, with his licence, by any other

¶500

Page 60 of 85

¶501

R/CR.MA/15682/2017 CAV JUDGMENT

¶502

copyright or, with his licence,	person.
by any other person.
	Taken From GLHEL (Emphasis
Taken From GLHEL	supplied)

¶503

14. Thus, after 21.6.2012, industrial diagram or drawing being artistic work within the meaning of Sec. 2 (c) of the Copyright Act would not fall within the scope and ambit of Sec. 15 (2) of the Copyright Act. Therefore, since the cause of action of the present case is the artistic work in the drawing, the same would not fall within the scope of Sec. 15 (2) of Copyright Act as the same is not capable of being registered under the Designs Act, 2000 (16 of 2000).

¶504

15. Further, mechanical device is excluded from the definition of design. Further, the drawings of the plaintiffs are themselves showing mode or principle of construction/ making of its mechanical device/ machine i.e. loader/ receiver. Further, there is no question of features of shape, configuration, pattern, etc. which in the finished article appeal to and are judged solely by the eye. Therefore, also the same are excluded from the definition of design.”

¶505

70 The next question falling for my consideration is whether the police under Section 64 of the Act has the power to seize the infringing copy of a design which has the copyright protection?

¶506

71 The Intellectual Property Law is a negative right which means it is a right to exclude others from using the property generated by the registered owner. It is thus obvious that this law anticipates preemptive measures to prevent the misuse, as the property is intangible per se. Any reproduction in tangible medium becomes susceptible to misappropriation therefore, the statutory rights ought to be protected.

¶507

72 It was observed by the Supreme Court in Midas Hygiene Industries (supra) :

¶508

"5. The law on the subject is well settled. In cases of infringement either of trade mark or of copyright, normally an injunction must

¶509

Page 61 of 85

¶510

R/CR.MA/15682/2017 CAV JUDGMENT

¶511

follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The grant of injunction also becomes necessary if it prima facie appears that the adoption of the mark was itself dishonest".

¶512

73 The Copyright statute is one of the only intellectual property statutes which provides for criminal prosecution to prevent piracy. The main aim is to provide for rapid intervention and the same should be kept in mind while dealing with Section 64 of the Copyright Act.

¶513

74 In Girish Gandhi v. Union of India [AIR 1997 Raj 78] , the following observations were made with respect to the Power of the Police to seize the infringing copy under Section 64 of the Copyright Act,1957:

¶514

“Section 64 clearly mentions that police officer is to seize the material, if he so satisfied. But what does the word "satisfaction means". It is in borne that police officer will not act until and unless he has got some type of information on which information he is satisfied and his satisfaction shall be objective. It cannot be imagined that only because, Section 64 empowers the police officer to seize the material to his satisfaction, that he would act mala fide or arbitrary. If he does so, there is ample remedies available in the appropriate Courts and the aggrieved person is always free to safeguard his interest in this respect by resorting the legal remedies. The power given to the police officer is not at all arbitrary. He is to report the matter to the Magistrate and the Magistrate, on the application being made by the aggrieved person, shall return the material, if it is proved that no infringement of the copyright was involved. The copyright Act has been enacted to check the piracy so that fruit of the labour put by the author or the copyright owner may be enjoyed by the author or the owner and not by the pirates.”

¶515

75 It has thus been established that since the machine in question constitutes infringing copies the same is liable to be seized by the Police and the order of removal of seals of the infringing machine is flawed.

¶516

Page 62 of 85

¶517

R/CR.MA/15682/2017 CAV JUDGMENT

¶518

76 The Revisional Court erred in its decision because it failed to anticipate the possibility of multiple reproductions of the drawings in a three dimensional form. Such reproductions would then lead to the present application becoming infructuous as the drawings would then lose their copyright as per section 15(2) of the Copyright Act, 1957.

¶519

77 In the case of Flower Tobacco Company v. State, 1986 (2) ARBLR 121 Delhi , the following observations are relevant:

¶520

(16) Section 457(1) of the Criminal Procedure Code reads as under : "457.Procedure by police upon seizure of. property (1) Whenever the seizure of property by any police officer it reported to a Magistrate under the provisions of this Code, and such property is not produced before a Criminal Court during an inquiry or trial, the Magistrate may make such order as he thinks fit respecting the disposal of such property or the delivery of such property to the person entitled to the possession thereof, or if such person cannot be ascertained, respecting the custody and production of such property."

¶521

(17) Those provisions empower the Magistrate to make such order as he thinks fit respecting the disposal of the seized property or the delivery of the said property to the persons entitled to the possession thereof. The expression "entitled to the possession" would normally mean a lawful or rightful title to the property. In the present case, according to the accused's own allegations, in its application, the ownership of the goods had already passed to the consignee, i.e. M/s. Abdul LateefMohd. JameelSindi Babe Sareef, Jeddah.

¶522

(18) Section 66 of the Copyright Act, 1957 provides that "the court trying any offence under this Act, may, whether the alleged offender is convicted or not. order that all copies of the work or all plates in the possession of the alleged offender, which appear to it to be infringing copies, or plates for the purpose of making infringing copies, be delivered up to the owner of the copyright." In view of these provisions, if on trial it was held that the accused had infringed the copyright of the complainant, the containers containing the tobacco were liable to be delivered to the complainant. In this situation at this stage there was no question of releasing the goods and allowing the accused to export the same.

¶523

(19) Again the matter was still under investigation. Seized property would be required to prove the offence alleged to have been committed by the accused. The release of the property at this stage,

¶524

Page 63 of 85

¶525

R/CR.MA/15682/2017 CAV JUDGMENT

¶526

in my opinion, was likely to prejudice the course of justice at the time of trial in case the accused were summoned. The goods, therefore, could not be released at this stage.

¶527

78 In addition to the above, the observation made by the Revisional Court with regard to the Patent Infringement is untenable in law. There was no good reason for rejecting the application filed by the applicant for seizure of the machine on the ground that a Patent Infringement offence is not included in the First Information Report.

¶528

	*Patent*	*Industrial* *Designs*	*Copyright*
What type of work can acquire protection?	A technical enhancement which is novel, unique and useful	Novel Ornamental or aesthetical appearance of any article of use	Any literary object namely artwork, poetry, films, drawings, and photography.
Term of Protection	20 years protection from date of grant	10 years protection + 5 years post renewal	Lifetime of the author + 60 years.

¶529

79 The table referred to above enunciates the different types of protection that can be provided to a technical drawing. The point of acquiring a copyright protection is to have the longest possible protection for the industrial drawings. The object would be destroyed if the drawings which fall under the definition of an artistic work and which has acquired bona fide registration were denied the protection.

¶530

80 Besides the above, I also take note of the following factual aspects:

¶531

Page 64 of 85

¶532

R/CR.MA/15682/2017 CAV JUDGMENT

¶533

[1] The respondents Nos.2 and 3 have nowhere stated in their application filed before the Magistrate below Exhibit : 9 that the machine / system in question or its parts are not the result of industrial drawing / artistic work of the applicant and not the “copies of the work”.

¶534

[2] The police seized the machine / system under Section 64(1) of the Act. Now, as per the said provisions, the seizure presupposes the satisfaction of the police officer that the offence of infringement of copyright under Section 63 is made out. Upon completion of the investigation, the police has prima facie found commission of a cognizable offence (punishable under Section 63 of the Act). Sufficient material including the expert's opinion forms part of the chargesheet.

¶535

[3] The Magistrate failed to conduct any inquiry as regards the “copies of the work” though prayed for and as required under Section 64(2) of the Act. Thus, prima facie , the machine “Zero Effluent Discharge Coal Gasification System” is the “copies of the work” as obtained from the industrial drawings / artistic work of the applicant and prima facie offence punishable under Section 63 of the Act is made out.

¶536

[4] Indisputably, the machine is not registered under the Designs Act, 2000. Therefore, the provisions of Section 15(1) of the Act shall not apply.

¶537

[5] It is nobody's case including the accused Nos.2 and 3 that the applicant has manufactured more than 50 units. The applicant has in fact manufactured only 12 units till date. In such circumstances, the provisions of Section 15(2) does not apply and the applicant gets an absolute protection till the 50^th unit is manufactured.

¶538

Page 65 of 85

¶539

R/CR.MA/15682/2017 CAV JUDGMENT

¶540

[6] As the Magistrate declined to conduct the inquiry and without putting the applicant to notice, relied on the provisions of Section 15, the applicant could not place on record the above fact of manufacturing of 12 units only.

¶541

[7] In the present case, the industrial drawing is registered as “artistic work” in the column No.4 of the copyright registration certificate. It is not a 'design' and therefore, would remain outside the purview of entire Section 15 of the Act. Further, Section 48 of the Act prima facie provides validity to the registered 'artistic work' / copyright of the applicant. Further, the validity of the registration of the copyright can be challenged and decided only under Section 50 before the Copyright Board. Thus, the findings of both the Courts below are not tenable in law.

¶542

[8] The applicant has the exclusive right under Section 14(c)(i)(B) and other provisions of the Act to produce the three dimensional machine from the two dimensional industrial drawings. Such exclusive right when infringed prima facie amounts to an offence of infringement of the copyright under Section 63 of the Act.

¶543

81 The three decisions relied upon by the learned counsel appearing for the respondents Nos.2 and 3, in my view, are not helpful in any manner for the purpose of defending the impugned orders.

¶544

82 In Binita Rahul (supra), a learned Single Judge of this Court observed in para 15, 20 and 21 as under:

¶545

“15 Thus, on a plain reading of the two material paragraphs of the complaint, mainly paragraph Nos. 6 and 7 with paragraph No.3, as well as the subject matter of the written complaint, it becomes clear that the

¶546

Page 66 of 85

¶547

R/CR.MA/15682/2017 CAV JUDGMENT

¶548

entire case of the complainant is based on infringement under the Copyright Act. The Court therefore called upon learned Advocate for the complainant to explain as to how and in what manner can it be stated, even prima facie, that a factual foundation showing infringement of Copyright Act was established. The learned Advocate for the complainant could not point out such infringement, but submitted that a plain reading of paragraph Nos. 6 and 7 indicate that at least criminal breach of trust and cheating were prima facie shown to have occurred and therefore, in light of settled legal position, the Court should not intervene at the stage of investigation. The learned Advocate read extensively from the provisions of sections 405, 415 as well as 418, to submit that offences punishable under sections 406 and 420 had been committed. Similarly section 424 was also pressed into service.”

¶549

“20 A plain reading makes it clear that the principal work has to be either a literary, dramatic, musical, or artistic work; or should be a cinematographic film; or a sound recording, or a programme or performance in which a broadcast reproduction right or a performer's right subsists under the provisions of Copyright Act. In the facts of the present case, admittedly the provisions cannot be attracted, much less any ingredient thereof is shown to have been satisfied even primafacie. The Court is not concerned in these proceedings whether any violation has occurred under the Provisions of Designs Act, because that is not even the case of the complainant. The settled legal position cannot be understood to mean laying down a proposition of law that the Court in these proceedings is precluded from even a plain reading of the relevant provisions to prima facie see whether any offence can be said to have been committed or not.

¶550

21 As noted hereinbefore, various Civil Suits, including unauthorised use of design, cancellation of design etc., have been filed by the parties against each other. In the said proceedings the complainant has not been able to obtain an injunction in its favour. Therefore, at least, primafacie, it is not possible to state that any factual foundation has been laid which would indicate commission of any offence alleged. The emphasis on part of the learned Advocate on various provisions of Indian Penal Code cannot put life into a complaint which is otherwise not worth investigating. At the cost of repetition, it is required to be stated that the entire case is based on infringement under the Copyright Act and the provisions of IPC are not independent of such infringement but are in conjunction and in aid of such act of infringement.”

¶551

Thus, in the facts of the said case, this Court took the view that none of the ingredients to constitute the offence under the Copyright Act, 1957 as well as the offence under the I.P.C. were spelt out.

¶552

Page 67 of 85

¶553

R/CR.MA/15682/2017 CAV JUDGMENT

¶554

83 In Nainesh Chinubhai (supra), this Court relied upon Binita Rahul (supra) and quashed the F.I.R. The observations in para 8 are relevant which read as under:

¶555

“8. Considering the allegations leveled in the FIR, the same relate to the spareparts of the Hyundai Company and it is nowhere stated about the owner or author and in what capacity respondent No.2 has lodged the FIR. Apart from that, even if, the FIR is taken at its face value, it refers to items, which do not fall within the artistic work as defined under Section 2(c) of the Copyright Act, 1957. It cannot be said that the sparepart is literal work or musical work. It is not disclose that the spare part is an artistic work or any other such work that the provisions of Copyright Act, 1957 would apply. The impugned FIR also does not disclose that if respondent No.2 has acquired any other right conferred under the provisions of the Copyright Act, 1957 and therefore, provisions of Sections 63 and 65 of the Copyright Act, 1957 would not be applicable on bare reading of the allegations leveled in the First Information Report at its face value. Therefore, this Court is of the opinion that prima facie no case is made out under Sections 63 and 65 of the Copyright Act, 1957 and Sections 103 and 104 of the Trade Marks Act, 1999, even if it is taken at its face value. Even at the cost of repetition, it may be noted that respondent No.2 does not disclose his capacity to claim right of the Trade Marks Act.”

¶556

This judgment is also not helpful to the respondents Nos.2 and 3 in any manner.

¶557

84 In Umesh Bharatbhai Thakkar (supra), the question before the Court was whether the transaction in question would fall within the purview of the Copyright Act. It was a case in which the shop of the accused was raided. The raid in question revealed that the shopkeepers / proprietors were selling duplicate goods / toiletries of Procter and Gamble and Hindustan Unilever. According to the complainant, the sale of such merchandise, according to the complainant, was in violation of the provisions of the Copyright Act, 1957. The Court noticed that the provisions of the Copyright Act were

¶558

Page 68 of 85

¶559

R/CR.MA/15682/2017 CAV JUDGMENT

¶560

invoked for sale of such merchandise being shampoo, soaps, etc. In such circumstances, the FIR was quashed. This judgment is also not helpful to the respondents Nos.2 and 3 in any manner.

¶561

85 Let me now say something as regards Sections 451 and 457 of the Cr.P.C.

¶562

86 Section 451 enables the Magistrate to provide for the interim custody of such property pending the conclusion of enquiry or trial. It is only a temporary arrangement and what is contemplated is only an interim provision to provide the custody with a proper person as the Court thinks fit with the liability to produce the property back as and when directed by the Court. The maximum duration of the arrangement is only till the conclusion of the enquiry or trial. It follows that the arrangement is only temporary and the main object is to protect or preserve the property pending trial. Even if the person entrusted with interim custody is the owner, his possession or custody during the period of entrustment is only as a representative of the Court and not in his own independent right. He is bound by the terms of entrustment and the bond executed by him in favour of the Court. Any failure to comply with the terms will entail the necessary consequences also. His ownership or right to possession may not operate against his obligation to the Court. The entrustment or custody will not invest him with any preferential right to ownership or even possession. In the eye of law his possession or custody is only that of Court.

¶563

87 The arrangement once made is not even final till the conclusion of the inquiry or trial. The Court has the power or right to terminate the entrustment, get back the property from him and entrust it to somebody else whom the Court deems fit in appropriate cases even before the conclusion of the inquiry or trial. So much so, the person entrusted with

¶564

Page 69 of 85

¶565

R/CR.MA/15682/2017 CAV JUDGMENT

¶566

the property may also be entitled to seek termination of the entrustment and surrender the property even before the conclusion of trial. Cases may arise where the person to whom interim custody was ordered may not care to undertake the obligation. In such cases the Court may have to make other arrangements for the custody pending trial. After giving custody the Court may for reasons think that his custody may not be proper. In such cases the Court can terminate the arrangement and make other arrangements. Pending the inquiry or trial more than one such arrangement could be made.

¶567

88 Even in cases of rival claims for interim custody, the preference made to one person does not settle any right to the ownership or possession. Irrespective of the defeat in a contest for interim custody, the defeated party can successfully enforce his claim for custody if ultimately he comes out with flying colours. The ultimate consideration is only who is the proper person considered by the Court for the entrustment of the property. In doing so, the Court may have many considerations like safety of the property, the possibility of getting it back without damage etc. The arrangement is being made by the Court only for the preservation of property for being handed over to the person to whom the custody has to be ordered under Section 452 after the conclusion of trial or to be dealt with otherwise.

¶568

89 What is stated above does not mean that the power of the Court is arbitrary. Even though the power is discretionary it has to be exercised in a judicial manner. It is likely that there may be a contest for getting the interim custody like the case at hand. The person entitled to ownership or possession may be interested in getting the custody to himself in preference to the opponents due to various reasons. He may have the fear that at the hands of somebody else the property is liable to

¶569

Page 70 of 85

¶570

R/CR.MA/15682/2017 CAV JUDGMENT

¶571

damage or misappropriation of the proceeds. The questions of prestige also may be there. For that reason itself there may be stiff opposition also. Custody to a wrong person may result in irreparable loss to the rightful claimant. Even though the power is discretionary, it is rather of a quasicivil nature. In the choice of the person to be entrusted with interim custody in such cases the Court may have to take into consideration all the relevant aspects.

¶572

90 Normally the Courts will be inclined to prefer the person who was having possession or custody just prior to the custody of Court. But that is not a rule of invariable application. Sometimes the origin of his possession may be illegal just like the possession of a thief or receiver of stolen property. In such cases the Court may not prefer him. In considering the question the Court may be interested in giving importance to the right to possession. In the absence of better claim from any other source the Court may prefer the person who had possession. I referred to these aspects because in this case both the sides have laid claim on the basis of ownership as well as right to possession. [See: V. Parakashan vs. K.P. Pankajakshan (1985 Cr.L.J. 951)].

¶573

91 A learned Single Judge of this Court in the case of Chetanbhai Vasantbhai Mistary vs. State of Gujarat [2004 (2) G.L.H. 726] considered the provisions of Sections 451 and 457 of the Cr.P.C. and observed in para 5.4 as under:

¶574

“ It is obvious from the above legal scheme of the Code of Criminal Procedure that, in the matter of disposal of property, the Criminal Court is invested with wide discretion and the guiding principle is that the property should be delivered to the person who is entitled to the possession thereof and, if such person cannot be ascertained, the Court has to make appropriate order in respect of the custody and disposal of such property. The Code of Criminal Procedure, 1973 being the law relating to criminal procedure, it can be presumed to be primarily concerned with fair trial of the criminal case before it and other matters incidental thereto and cannot

¶575

Page 71 of 85

¶576

R/CR.MA/15682/2017 CAV JUDGMENT

¶577

be presumed to invest the Court with the power of deciding issues of title to the property regarding which an offence appeared to have been committed, or which appeared to have been used for the commission of any offence. The task of exercising the discretion by the Criminal Court in such circumstances is easier at the end of the trial. But pending trial it can be hazardous to decide the issue of entitlement. The emphasis has, therefore, to be laid on the phrase: "entitled to the possession thereof". Therefore, the related question that can be addressed at the pretrial stage should be restricted to entitlement to the possession of the property and possible consequences of handing over the possession to a party who appears to be entitled to it can be taken care of by imposing suitable conditions. If the question of title remains in controversy even at the end of trial, the course adopted by the Andhra Pradesh High Court in Rajalingam v. Vangala Venkata Rama Chary [1977 Cri.L.J. 575] relying upon Muthiah Muthirian v. Vairaperumal Muthirian [AIR 1954 Madras 214], may be the proper course, viz. to direct the parties to establish their claim over the properties before the Civil Court...”

¶578

92 Let me also take the opportunity of explaining one another important issue though not at all relevant for the purpose of this matter. But having regard to the confusion in the minds of the Judicial Officers of the subordinate Courts, I deem it fit and proper to explain. The issue is with regard to the fact whether the offence punishable under Section 63 of the Copyright Act, 1957 is bailable or nonbailable. Section 63 is extracted hereunder:

¶579

“ 63. Offence of infringement of copyright or other rights conferred by this Act

¶580

Any person who knowingly infringes or abets the infringement of

¶581

(a) the copyright in a work, or

¶582

(b) any other right conferred by this Act, a [except the right conferred by section 53A] b [shall be punishable with imprisonment for a term which shall not be less than six months but which may extend to three years and with fine which shall not be less than fifty thousand rupees but which may extend to two lakh rupees :

¶583

Provided that c [where the infringement has not been made for gain in the course of trade or business] the court may, for adequate and special

¶584

Page 72 of 85

¶585

R/CR.MA/15682/2017 CAV JUDGMENT

¶586

reasons to be mentioned in the judgement, impose a sentence of imprisonment for a term of less than six months or a fine of less than fifty thousand rupees.]

¶587

Explanation. Construction of a building or other structure which infringes or which, if completed, would infringe the copyright in some other work shall not be an offence under this section.”

¶588

93 Copyright infringement is the use of copyrighted work such as the right to reproduce, distribute, display or perform the protected work, or to make derivative works without the permission of the author. Any person who copies others work without consent of the author is liable to be punished for infringement. Under the Section 63 of the Copyright Act, 1957 (the “Act”) any person who knowingly infringes or abets the infringement of the copyright in any work commits criminal offence.

¶589

94 Thus, the maximum punishment, which can be imposed by the Court for the offence punishable under Section 63 of the Act, is three years and with fine. At the same time, the punishment shall not be less than six months. Thus, the minimum is six months and the maximum is upto three years.

¶590

95 However, in order to establish whether it is a cognizable offence or not, it is important to look into the First Schedule of the Criminal Procedure Code, 1973 in which classification of the offences have been made. The said Schedule is divided in two parts. Part I dealing with the offences under the Indian Penal Code and Part II dealing with the offences made under other laws.

¶591

96 Therefore, the offence punishable under Section 63 of the Act, 1957 would be covered by Part II. The scheme of the classification of the offences in the First Schedule of the Criminal Procedure Code, 1973 in

¶592

Page 73 of 85

¶593

R/CR.MA/15682/2017 CAV JUDGMENT

¶594

cases of offences under other laws, is as under:

¶595

Category	Description of Offence	Cognizable	Bailable	Trial By
I	If punishable with death, imprisonment for life, or imprisonment for more than 7years	Yes	No.	Court of Session
II	If punishable with imprisonment for 3 Years, and upwards but not more than 7 Year	Yes	No	Magistrate of first class
II	If punishable with imprisonment for less than 3 Years or with Fine only	NO	Yes	Any Magistrate

¶596

97 A bare perusal of the First Schedule of the Criminal Procedure Code would indicate that if the offence is punishable with imprisonment for a period of between three and seven years, it must be deemed to be cognizable. Section 63 of the Act stipulates that the offence shall be punishable by imprisonment upto three years. In the Second Schedule of the Criminal Procedure Code, the expression “for more than seven years” to identify the First category had very cautiously used the word “three years and upwards, but not more than seven years” to identify the second category. The offence punishable with imprisonment for three years upto seven years, both inclusive, will fall under the Second category.

¶597

98 Let me take support of one Delhi High Court decision in the case of State Govt. of NCT of Delhi vs. Naresh Kumar Garg [2013 (3) Crimes (HC) 679]. I may quote the relevant observations:

¶598

Page 74 of 85

¶599

R/CR.MA/15682/2017 CAV JUDGMENT

¶600

“4. The Petitioner/State is aggrieved by the observations on the ground that since the offence under Section 63 of the Act was punishable with imprisonment which could extend to three years and with fine which could extend to ` 2 lacs, the offence would not fall in item III of Part II of the Schedule I to the Code as it covers only those offences which are punishable with imprisonment upto three years or with fine only.

¶601

5. The distinction which is sought to be drawn by the learned Standing Counsel is that wherever the imprisonment and also fine is provided for any offence it would be out of item III of Part II of Schedule I of the Code and would be cognizable and nonbailable.

¶602

6. In Avinash Bhosale v. Union of India, (2007) 14 SCC 325 the Supreme Court held that an offence punishable under Section 135 (1)(ii) of the Customs Act, 1962 (Act of 1962) would be bailable. A Review Petition being R.P.(Crl) No.130/2008 in Criminal Appeal No.1138/2007 filed against this judgment was dismissed by the Supreme Court vide order dated 07.05.2008.

¶603

7. Admittedly, the offence under Section 135(1)(ii) ) of the Act of 1962 is punishable with imprisonment for a term which may extent to three years or fine or with both whereas the offence punishable under Section 63 of the Act is punishable with imprisonment which may extend to three years and with fine which may extend to 2 lacs. Thus, for an offence under Section 135 of the Act of 1962, an imprisonment for a term of three years in addition to the fine can be imposed by the Court of the Magistrate trying the offence as is the case for an offence under Section 63 of the Act. Thus, interpretation sought to be placed by the learned standing counsel that there is distinction between the two offences (one under Copyright Act and other under the Customs Act) is really missing.

¶604

8. In Amarnath Vyas v. State of A.P. 2007 Crl.L.J. 2025 this question directly fell for consideration before the Andhra Pradesh High Court which took the view that the offence under Section 63 of the Act is bailable.

¶605

9. In Rajeev Chaudhary v. State (NCT) of Delhi (2001) 5SCC 34, the Hon'ble Supreme Court had occasion to interpret the provision of Section 167(2) of the Code for the grant of statutory bail for an offence under Section 386 IPC which is punishable with imprisonment which could extend to ten years. The Supreme Court held that the case would fall under Section 167(2)(ii) of the Code as it was not punishable with death, imprisonment for life or imprisonment for a term not less than ten years. Thus, imprisonment which could extent to ten years was considered to be out of the purview of Section 167(2)(a)(i) of the Code. Para 6 of the

¶606

Page 75 of 85

¶607

R/CR.MA/15682/2017 CAV JUDGMENT

¶608

report is extracted hereunder:

¶609

"6. From the relevant part of the aforesaid sections, it is apparent that pending investigation relating to an offence punishable with imprisonment for a term "not less than 10 years", the Magistrate is empowered to authorise the detention of the accused in custody for not more than 90 days. For rest of the offences, the period prescribed is 60 days. Hence in cases where offence is punishable with imprisonment for 10 years or more, the accused could be detained up to a period of 90 days. In this context, the expression "not less than" would mean imprisonment should be 10 years or more and would cover only those offences for which punishment could be imprisonment for a clear period of 10 years or more.

¶610

Under Section 386 punishment provided is imprisonment of either description for a term which may extend to 10 years and also fine. That means, imprisonment can be for a clear period of 10 years or less. Hence, it could not be said that minimum sentence would be 10 years or more. Further, in context also if we consider clause (i) of proviso (a) to Section 167(2), it would be applicable in case where investigation relates to an offence punishable (1) with death; (2) imprisonment for life; and (3) imprisonment for a term of not less than ten years. It would not cover the offence for which punishment could be imprisonment for less than 10 years. Under Section 376 IPC, imprisonment can vary from minimum to maximum of 10 years and it cannot be said that imprisonment prescribed is not less than 10 years."

¶611

10. Thus, the interpretation (of the Supreme Court in Avinash Bhosale) of the term imprisonment which may extend to three years or with fine or with both which is for an offence under Section 135(1)(ii) of the Act of 1962 will fully apply in case under Section 63 of the Act.

¶612

11. Learned standing Counsel for the Petitioner relies on a judgment of the Gauhati High Court in Jitendra Prasad Singh v. State of Assam 2003 (26) PTC 486 (Gau.) where the offence under Section 63 of the Act was held to be cognizable and nonbailable; and a judgment of the Kerala High Court in C.K. Boban v. Union of India, 2005 Crl. L.J. 2801 where the offence under Section 135 (1) (ii) of the Customs Act, 1962 (the Act of 1962) was held to be nonbailable. The authorities relied upon by the learned Standing Counsel for the Petitioner are of no avail and are impliedly overruled byAvinash Bhosale v. Union of India, (2007) 14 SCC 325.

¶613

Page 76 of 85

¶614

R/CR.MA/15682/2017 CAV JUDGMENT

¶615

12. In fact in Mohan Lal Thapar v. Y.P. Dabara, Inspector, Customs, New Customs House New Delhi 2002 (1) JCC 460; and Inderjeet Nagpal v. Director of Revenue Intelligence (DRI), 2005 (1) JCC 433, two Crl.MC 3488/2012 Page 4 of 5 Coordinate Benches of this Court had taken the view that the offence under Section 135 (i)(ii) of the Act of 1962 is non bailable which no longer holds good in view of the report of the Supreme Court in Avinash Bhosale.

¶616

13. It would be fruitful to refer to the provision of Section 64 of the Act which empowers a police officer not below the rank of SubInspector to seize the infringing copies of any work. If the offence had been cognizable and nonbailable, there was no necessity to specifically authorize the police officer with the power of seizure.”

¶617

99 I am in respectful agreement with the view taken by the Delhi High Court and would like to follow the same.

¶618

100 In the aforesaid context, I may also rely upon one Supreme Court decision in the case of State of Andhra Pradesh vs. Nagoti Venkataramana [(1996) 6 SCC 409]. The facts before the Supreme Court were that the respondent had kept in his shop by name Video C.D., various cassettes, numbering 90 in Telugu, English and Hindi cinematograph films exhibiting the same either for hire or sale to the customers. The question before the Supreme Court was whether the respondent had committed infringement of a copyright or deemed infringement thereof. The Supreme Court started with the Statement of Objects and Reasons to Amendment Act 65 of 1984. The same is extracted hereunder:

¶619

“Piracy has become a global problem due to the rapid advances in technology. It has assumed alarming proportions all over the world and all the countries are trying to meet the challenge by taking stringent Legislative and enforcement measures. The problem of piracy and the necessity for taking sufficient anti piracy measures were also voiced by Members of Parliament at the time of the consideration of the Bill to amend the Copyright Act, 1957, last year.”

¶620

Page 77 of 85

¶621

R/CR.MA/15682/2017 CAV JUDGMENT

¶622

101 The Supreme Court, thereafter, proceeded to observe as under:

¶623

“2. Mainly there are three types of piracy, namely, piracy of the printed word, piracy of sound recordings and piracy of cinematograph films. The object of the pirate in all such cases is to make quick money and avoid payment of legitimate taxes and royalties. In respect of books, it is estimated that four hundred to five hundred titles are pirated every year in India and on each of the pirated titles, the loses to the Government in the form of tax evasion amounts approximately to Rs. 11,000/ Apart from books, recorded music and video cassettes of films TV programs are reproduced, distributed and sold on a massive scale in many parts of the world without any remuneration to the authors, artistes, publishers and producers concerned. The emergence of new techniques of recordings, fixation and reproduction of audio programs, combined with the advent of video technology have greatly greatly helped the pirates. It is estimated that losses to the film producers and other owners of copyright amount to several crores of rupees. The loss to Government in terms of tax evasion also amounts to crores of rupees. In addition because of the recent video boom in the country, there are reports that uncertified video films are being exhibited on a large scale. A large number of video parlors have also sprung up all over the country and they exhibit such films recorded on video tapes by charging admission fees from their clients. In view of these circumstances, it is proposed to amend the Copyright Act, 1957, suitably to combat affectively the piracy that is prevalent in the country.

¶624

3. The Bill provides, among other things, for the following amendments to the Act, namely :

¶625

(i) to increase the punishment provided for the infringement of the copyright, namely, imprisonment of three years, with a minimum punishment of imprisonment of six months, and fine upto Rs. 2 lakhs, with a minimum of Rs. 50,000/

¶626

(ii) to provide enhanced punishments in the case of second and subsequent convictions ;

¶627

(iii) to provide for the declaration of the offence of infringement of copyright as an economic offence so that the period of limitation provided for in the Code of Criminal Procedure, 1973 for offence will not applicable to this offence.;

¶628

(iv) to specifically make the provisions of the Act applicable to video films and computer programs;

¶629

Page 78 of 85

¶630

R/CR.MA/15682/2017 CAV JUDGMENT

¶631

(v) to require the producers of records and video films to display certain information in the records, video films and containers thereof."

¶632

4. Section 2 [m] (ii) defined "infringing copy" to mean, in relation to cinematographic film, a copy of the film made on any medium by any means. Section 3 defines "publication" to mean making a work available to the public by issue of copies or by communicating the work to the public. Section 4 envisages when work is not deemed to be published or performed in public. It provides that except in relation to infringement of copyright, a work shall not be deemed to be published or performed in public, without the license of the owner of the copyright. The permission of the owner for publication is mandatory when it sought to be brought home to the person violating the publication or performed in public. It excludes the application of infringement of a copyright from the purview of Section 4 Chapter x deals with registration of copyright. Section 44 envisages that there shall be kept at the Copyright Office a register in the prescribed form to be called the Register of Copyrights in which may be entered the names or title of works and the names and addresses of authors, publishers and owners of copyright and such other particulars as may be prescribed. The entries under Section 48 in the register of copyrights shall be prima facie evidence of the particulars entered therein, or extracts therefrom certified by the Registrar of Copyrights and sealed with the seal of the Copyright Office shall be admissible in evidence in all courts without further proof or production of the original Section 51 in Chapter XI deals with infringement of copyrights. It provides, among other things, that a copyright in a work shall be deemed to be infringed when any other person makes for sale or hire, or sells or lets for hire, or by way of trade displays or offers for sale or hire any infringing copies of the work. Section 52A deals with particulars to be included in sound recordings and video films. Subsection thereof [2] provides thus :

¶633

"[2] No person shall publish a video film in respect of any work unless the following particulars are displayed in the video film, when exhibited, and on the video cassette or other container thereof, namely :

¶634

(a) if such work is a cinematograph film required to be certified for exhibition under the provisions of the Cinematograph Act, 1952 [37 of 1952], a copy of the certificates granted by the Board of Film Certification under Section 5A of that Act in respect of such work ;

¶635

(b) the name and address of the person who has made the video film and a declaration by him that he has obtained the necessary license or consent from the owner of the copyright in such work for

¶636

Page 79 of 85

¶637

R/CR.MA/15682/2017 CAV JUDGMENT

¶638

making such video film; and

¶639

(c) the name and address of the owner of the copyright in such work".

¶640

5. Section 63 in Chapter XIII provides for penalty thus :

¶641

"63. Offence of infringement of copyright or other rights as conferred by this Act. Any person who knowingly infringes or abets the infringement of [a] the copyright in a work, or [b] any other right conferred by this Act except the right conferred by Section 53A, shall be punishable with imprisonment for a term which may extend to three years and with fine which shall not be less than fifty thousand rupees but which may extend to two lakh rupees :

¶642

Provided that where the infringement has not been made for gain in the course of trade or business the Court may, for adequate and special reasons to be mentioned in the judgment, impose a sentence of imprisonment for a term of less than six months or a fine of less than fifty thousand rupees. Explanation Construction of a building or other structure which infringes or which, if completed, would infringe the copyright in some other work shall not be an offence under this section."

¶643

6. Further amendment with regard to sentence of fine came to be made by Amendment Act 38 of 1994 with which we are not presently concerned.

¶644

7. Section 68A provides for penalty for contravention of Section 52A. It reads that any person who publishes a sound recording or a video film in contravention of the provisions of Section 52A, shall be punishable with imprisonment which may extend to three years and shall also be liable to fine.

¶645

8. A reading of these provisions does indicate that infringement of a copyright or deemed infringement of a copyright or publication of a work without the permission of the owner are offences under the Act. The question is whether identification of the owner of the copyright is a pre condition for violation of the provisions of Section 63 or 68A, as the case may be ? The finding of the High Court and ably sought to be supported by Shri Prakash Reddy is that unless the owner is identified and he comes and gives evidence that he had copyright of the video film which was sought to be in violation of Section 52A or Section 51 of the Act, there is no offence made out by the prosecution and that, therefore, the conviction and sentence of the respondent is not valid in law. He contends that Section 4 expressly excludes publication of the work to be published. The

¶646

Page 80 of 85

¶647

R/CR.MA/15682/2017 CAV JUDGMENT

¶648

identification of the owner being an essential element to prove the offence of infringement of copyright, the prosecution has failed to establish the same. In construction of the penal statute strict construction should be adopted and in that perspective the benefit of doubt given by the High Court is well justified and does not warrant interference.

¶649

9. It is true that in the interpretation of penal provisions, strict construction is required to be adopted and if any real doubt arises, necessarily the reasonable benefit of doubt would be extended to the accused. In this case, the question arises : whether such a doubt has arisen ? The object of amending the Copyright Act by Act amendment 65 of 1984, as note above, was to prevent piracy which became a global problem due to rapid advances in technology. The legislature intended to prevent piracy and punish the pirates protecting copyrights. The law, therefore, came to be amended introducing Section 52A. Thereafter, the piracy of cinematograph films and of sound recording etc. could be satisfactorily prevented. Moreover the object of the pirate is to make quick money and avoid payment of legitimate taxes and royalties. The uncertified films are being exhibited in a large scale. Mushrooming growth of video parlours has sprung up all over the country exhibiting such films recorded on video tapes by charging admission fee from the visitors. Therefore, apart from increasing the penalty of punishment under law it also provides the declaration on the offence of infringement and video films to display certain information on the recorded video films and containers thereof. Section 52A thus has incorporated specifications of the prints in subsection [2] thereof. The construction of Section 52A, 51, 63 and 68A should be approached from his perspective. It would be further profitable to read the relevant provisions of the Cinematograph Act, 1952 in this behalf. Section 2 [c] defines "cinematograph" to include any apparatus for the representation of moving pictures or series of pictures. Section 2 [dd] defines "films" to mean a cinematograph film. The question, therefore is : whether video film is cinematograph ? It is settled view that video tapes come within the expression "cinematograph" in view of the extended definition in Section 2 [c] which includes apparatus for the representation of moving pictures or series of pictures as copy of the video should be created in respect of a cinematograph under the Cinematograph Act which gives protection to the purchasers of the cinematograph if they are registered under Chapter X of the Act. Section 44 gives the right of registration and once the entries have been made by operation of Section 48 the entries in the register of copyrights shall be prima facie evidence of the copyright and the entries therein are conclusive without proof of the copyright and the entries therein are conclusive without proof of the original copyright which must be taken to have been created in respect of the video tape.

¶650

10. In Balwinder Singh v. Delhi Administration [AIR 1984 Delhi

¶651

Page 81 of 85

¶652

R/CR.MA/15682/2017 CAV JUDGMENT

¶653

379] a Division Bench of Delhi High Court had also held that both video and television are cinematograph. Licenses for giving their public exhibition is necessary under the Cinematograph Act in spite of their having commercial licenses for them under the Telegraphs Act.

¶654

11. It is true that there is no specific charge under Section 52A. The charge was under Section 51 read with Section 63 of the Act. In view of the above finding and in view of the findings of the courts below that the respondent was exhibiting the cinematograph films in his Video City for hire or for sale of the cassettes to the public which do not contain the particulars envisaged under Section 52A of the Act, the infringement falls under Section 51[2] (ii) or Section 52A of the Act. The former is punishable under Section 63 and the latter is punishable under Section 68A of the Act. In view of the above findings of the courts below the offence under which the case falls. It would, therefore, be unnecessary for the prosecution to track on and trace out the owner of the copyright to come and adduce evidence of infringement of copyright. The absence thereof does not constitute lack of essential element of infringement of copyright. If the particulars on video films etc. as mandated under Section 52A do not find place, it would be infringement of copyright.”

¶655

102 The important observations of the Supreme Court are that it is unnecessary for the prosecution to track on and trace out the owner of the copyright to come and adduce evidence of infringement of copyright. The absence thereof does not constitute lack of essential element of infringement of copyright.

¶656

103 The observations of the Supreme Court gives a clear indication that the infringement of copyright is a cognizable offence and that the police must show a great deal of tolerance in collection of the evidence.

¶657

104 My final conclusions may be summarised as under:

¶658

[1] A bare perusal of the provisions of the Copyright Act, 1957 along with the bona fide certificate of the Registration has substantiated the applicability of the statutory rights over the

¶659

Page 82 of 85

¶660

R/CR.MA/15682/2017 CAV JUDGMENT

¶661

impugned drawings, and therefore, copyright subsists in the impugned drawings as asserted by the Applicant.

¶662

[2] Section 15 confers an option to the author of a work for obtaining registration either under the Designs Act, 2000 or the Copyright Act, 1957. A simultaneous protection in both the statutes is not warranted and if at all obtained it would render the work devoid of any protection in either of the statutes.

¶663

[3] 'Artistic work’ (as defined under section 2(c) of the Copyright Act, 1957) has been categorically excluded from the definition of ‘Design’ as per the definition prescribed under section 2(d) of the Designs Act, 2000. Therefore, there is a statutory distinction which can be drawn on the basis of the statutory requirements for obtaining protection.

¶664

[4] If a copyright is obtained in a drawing or design then the same shall be governed under the Copyright Act, 1957 and all the rights mentioned under section 14 of the Copyright statute shall be applicable qua the Design, including the right to reproduction, provided that the reproduction is not commercial in nature and not through an industrial process.

¶665

[5] At this stage, pending the criminal trial, the Magistrate erroneously restored the copies of the work to the respondents. The machine should be handed over to the applicant herein.

¶666

105 Thus, having regard to the provisions of the Copyright Act discussed above including the Designs Act and the provisions of the Code of Criminal Procedure, the machine should be delivered to the person

¶667

Page 83 of 85

¶668

R/CR.MA/15682/2017 CAV JUDGMENT

¶669

who is entitled to the possession thereof. The applicant herein is entitled to the possession of the machine.

¶670

106 In such circumstances referred to above, the Criminal Miscellaneous Applications Nos.15685 of 2017 and 15686 of 2017 respectively are hereby allowed. The common order passed by the Magistrate below Exhibit : 9 and Exhibit : 20 and affirmed by the Revisional Court is hereby quashed and set aside. The Exhibit : 9 filed by the respondents Nos.2 and 3 stands rejected. Whereas Exhibit : 20 filed by the applicant for possession of the machine is hereby allowed. So far as the order passed below Exhibit : 19 is concerned, which is the subject matter of Criminal Miscellaneous Application No.15682 of 2017 is concerned, the same can be ignored in view of the fact that the Criminal Miscellaneous Applications Nos.15685 of 2017 and 15686 of 2017 are allowed.

¶671

107 Although I have taken the view that the applicant is entitled to the possession of the machine, yet I am of the view that instead of uprooting the whole machine from the factory premises of the respondents Nos.2 and 3, the ends of justice would be met, if the police is directed to affix seals on the said machine. In such circumstances, the Investigating Officer is directed to affix the seals on the machine in question at the earliest. I am saying so because the respondents Nos.2 and 3 are not entitled in law to use the machine.

¶672

108 I also direct the 7^th Chief Judicial Magistrate, Morbi to immediately proceed with the framing of the charge in Criminal Case No.3018 of 2016 and start recording the evidence on daytoday basis and complete the entire trial with the judgment within a period of three months from the date of receipt of this order. The 7^th Chief Judicial

¶673

Page 84 of 85

¶674

R/CR.MA/15682/2017 CAV JUDGMENT

¶675

Magistrate, Morbi shall report as regards the disposal of the Criminal Case No.3018 of 2016 to this Court.

¶676

(J.B. PARDIWALA, J.)

¶677

FURTHER ORDER

¶678

After the judgment and order is pronounced, a request is made on behalf of Mr. Pratik Y. Jasani, the learned counsel appearing for the respondents Nos.2 and 3 that the judgment and order be stayed for a period of four weeks. In light of what has been observed in the judgment, the request is declined.

¶679

(J.B. PARDIWALA, J.)

¶680

CHANDRESH

¶681

Page 85 of 85

Gurukrupa Mech Tech Pvt. Ltd. through Its Director - Subhashchandra Shavjibhai Padasunbiya v. State of Gujarat

Case brief

What is this about?

What did the court decide?

Gurukrupa Mech Tech Pvt. Ltd. through Its Director - Subhashchandra Shavjibhai Padasunbiya v. State of Gujarat

Case brief

What is this about?

What did the court decide?

What the court decided

A compact analysis

Issues for consideration

Cases cited

Statutes considered

Parties & counsel

Coram

Case details

Similar cases

Siddharth Organics Industries through Proprietor Sunil B Das Vs Atul Ltd.

Anitakumari D/O Anantprasad Paul W/O Prakash Sharadchandra Shirke Vs State of Gujarat

Prakash Sharadchandra Shirke, Vs State of Gujarat

Chimanlal C Jain Vs H.P.Waghela

Patel Bhupendra Kumar Kashiram Vs State of Gujarat

Keshavlal Bechardas Patel Vs State of Gujarat