2014(143)DRJ298,
MIPR2014(2)164, 2014(59)PTC149(Del)
IN THE HIGH COURT OF DELHI
Decided On: 05.05.2014
Appellants: M/s.
Jagdamba Impex
Vs.
Respondent: M/s. Tristar Products Private Ltd.
[Alongwith FAO No. 129/2014]
Judges/Coram:
Counsels:
For Appellant/Petitioner/Plaintiff: Mr. C.M. Lal , Mr. Subhash
Dhutoria and Mr. Nancy Roy , Advocates
For
Respondents/Defendant: Mr. Chetan Sharma , Sr. Advocate,
Mr. S.K. Bansal and Mr. Ajay Amitabh Suman ,
Advocates
JUDGMENT
Counsel appears for the caveators and thus the caveats stand discharged.
FAO No. 128/2014 & CM Nos. 7778-79/2014
1. This first appeal is filed under
Order 43 Rule 1(r) CPC impugning the order of the trial court dated 19.2.2014
which has allowed the application of the respondent/plaintiff under Order 39
Rules 1 & 2 CPC and dismissed the application of the appellant/defendant
under Order 39 Rule 4 CPC. Appellant/defendant by the impugned order has been
restrained from using a machine which is used for manufacturing of combs on the
ground that the machine is a copy of the machine made by the
respondent/plaintiff from the drawings over which respondent/plaintiff has a
copyright under the Copyright Act, 1957.
2. The complete facts with respect to
the case/claim as put forward on behalf of the respondent/plaintiff are
succinctly stated in paras 1 to 3 of the impugned judgment and the same read as
under:
1. The plaintiff through present suit
is seeking permanent injunction, rendition of account, delivery up etc by
putting up a case that plaintiff is engaged in business of manufacturing and
marketing of cosmetic products, viz. Nail cutters, nail sharpeners, fillers,
trimmers, buffs, manicure set, pedicure set, brushes, scrubbing brushes etc and
allied and cognate goods. The plaintiff claims that it is continuously making
efforts for developing new products/machine equipment and also for improving
efficiency, efficacy and dependability of its existing products through its
dedicated research and development department. Further Plaintiff contends that
it spends heavily on its abovementioned development activities. It is the case
of the plaintiff that in year 2009, it got developed an equipment/machine
namely Teeth Cutting Machine after a lot of research and spending labour,
skill, efforts and money for the development of the said machine. The said
machine namely teeth cutting machine is new and novel in nature which is used
for manufacturing of a specific product namely comb. It is further averred that
the plaintiff through its research, labour skill, effort and money has also
developed major components such as Disk Teeth Cutter, Comb Work-Piece Mounting
Braket Pneumatic Piston, control Panel, Sliding Platform and Mounting Table
etc. The plaintiff's machine and major components are based on "industrial
drawing" which were prepared by its employee/draftsman technicians during
the course of their employment for and on behalf of plaintiff and under
instructions and directions of Director of the plaintiff namely Sh. Sandeep
Jain. The said industrial drawings are original in character and artistic in
nature. These drawings define and declare the shape and measurement of machine
which ultimately makes machine to function and perform. The plaintiff is owner
and proprietor of artistic work involved in said industrial drawings. It is
claimed that the Plaintiff hold copyright in said industrial drawing and same
are protected under the provisions of The copyright Act 1957. It is further averred
that plaintiff applied for obtaining the copyright in relation to said drawing
under the title "Assembly Drawing of Teeth Cutting Machine" under no.
4564/2012-CO-A dt. 16.04.2012". the plaintiff further alleged that the
services of one Sh. K.K. Gupta proprietor of M/s. Metalware, 3, Peepal Drive,
Chattarpur Farms, New Delhi were engaged for manufacturing and fabricating the
said machine including aforesaid major components based on the industrial
designs provided by the plaintiff. The same were prepared at the instructions
and on behalf of plaintiff for which consideration was paid by the plaintiff.
The plaintiff is making commercial use of said industrial drawings in regular
course of its business by converting these two dimensional industrial drawings
into three dimensional finished products which are being used to manufacture
product namely comb since year 2009. The plaintiff, under statutory as well as
in common law, is proprietor of industrial drawings of said products.
2. The Grievance of plaintiff is that
the defendant is engaged into manufacturing and marketing of beauty accessory
implements/goods viz. "Comb" and it started manufacturing and selling
the impugned goods namely comb for equipment machine namely Teeth Cutting
Machine which is identical to the equipment/machine namely Teeth Cutting
Machine of plaintiff. The impugned Teeth Cutting Machine of the defendant is
identical in each and every aspect including the shape, measurement, artistic
features as to that of the plaintiffs. The plaintiff inquired for Sh. K.K.
Gupta, proprietor in an affidavit dated 10.10.2013 on record revealed that he
prepared similar industrial drawings an machine at the instructions and on
behalf of defendant which is based on plaintiffs aforesaid industrial drawings.
The plaintiff has also taken expert opinion which established that defendants
impugned industrial drawings and impugned equipment/machine namely Teeth
Cutting Machine is similar. In para 23 of the plaint, the plaintiff explained
similarity of machines through a comparative chart. The plaintiff further
alleged that the defendant by making impugned industrial drawings developed the
impugned equipment consequently using the impugned equipment manufactured and
sold the impugned goods. This action of the defendant amounts to infringement
of copyright of the plaintiff in the aforesaid industrial drawings and in such
equipment. The defendant is not entitled to manufacture the impugned goods
namely comb from the impugned equipment/machine.
3. Ld. counsel for plaintiff argued
that since "industrial drawings" are original art work within the
meaning of section 2(d) of Indian Copyright Act 1957 thus by virtue of
copyright in the said industrial drawings, the plaintiff has exclusive rights
to furnish and reproduce the work in any material there from including its
deception in material form in three dimensional form and two dimensional work
and vice versa by virtue of Section 14 of the Copyright Act.
3. A reference to the aforesaid paras
show that the case of the respondent/plaintiff is the claim of copyright with
respect to Teeth Cutting Machine and which is used for manufacturing of the
product "comb". A particular shape/curvature of the comb takes place
because of the use of the subject machine. Respondent/plaintiff claims that it
developed this machine and its major components from the designs prepared by it
after a lot of research, labour, skill, efforts and money, and consequently in
the drawings which defined and declared a shape and measurement by/of the
machine, copyright is claimed under the Copyright Act, 1957. The machine is
stated to have been manufactured by one Sh. K.K. Gupta on the basis of drawings
supplied by the respondent/plaintiff.
4. In the suit plaint rights are only
claimed under the Copyright Act, 1957 with respect to drawings and there is no
claim with respect to proprietorship of the drawings under the Designs Act,
2000. Also there is no claim as per the plaint that the respondent/plaintiff
has a patent for the machine (or its parts) in question.
5. The court below has allowed the
injunction application by treating the designs/drawings of the machine and its
components as having copyright under the Copyright Act, 1957 and has restrained
the appellant/defendant from using the similar machine and which similar
machine the appellant/defendant got manufactured from the same Mr. K.K. Gupta.
6. For the purpose of the present
judgment, I am presuming that respondent/plaintiff is the owner of the
drawings/designs on the ground that the drawings have been prepared by it,
although, that aspect is factually disputed on behalf of the
appellant/defendant.
7. The issue before this Court is that
assuming that the respondent/plaintiff prepared the drawings whereby it on its
preparation had a copyright in the drawings/designs of the Teeth Cutting
Machine and its components, whether respondent/plaintiff is in the facts of
this case entitled to an injunction to restrain the appellant/defendant from
using a similar machine.
8. In order to appreciate the issue at
hand, the definition of design under the Designs Act, 2000 is required to be
seen along with the definition of copyright of an artistic work and the related
provisions in the Copyright Act, 1957.
9. 'Design' is defined as per Section
2(d) of the Designs Act, 2000 and which reads as under:
(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
trade mark 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)
(underlining
added)
10. Copyright of an artistic work is
defined in Section 2(c) of the Copyright Act, 1957. Section 14(c) of the
Copyright Act, 1957 provides the rights of different types by virtue of owning
the copyright in the artistic work. Section 15, and more particularly its
sub-Section 2, provides that with respect to a drawing/design which can be a
subject matter of both the Copyright Act, 1957 and the Designs Act, 2000, if
from the drawing/design an article is produced to which the drawing/design has
been applied/reproduced more than 50 times by an industrial process, the right
in the designs/drawings under the Copyright Act, 1957 will no longer subsist.
These Sections 2(c), 14(c) and 15 of the Copyright Act, 1957 read as under:
(c) "artistic
work" means,--
(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;
(ii) a (work of
architecture); and
(iii) any other work of
artistic craftsmanship;
(c) in the case of an
artistic work,--
(i) to reproduce the work
in any material form including-
(A) the string of it in any
medium by electronic or other means; or
(B) depiction in
three-dimensions of a three-dimensional work;
(C) depiction in
two-dimensions of a three-dimensional work;)
(ii) to communicate the
work to the public;
(iii) to issue copies of
the work to the public not being copies already in circulation;
(iv) to include the work in
any cinematograph film;
(v) to make any adaptation
of the work;
(vi) to do in relation to
an adaptation of the work any of the acts specified in relation to the work in
sub-clauses (i) to (iv);
15. Special provision regarding
copyright in designs registered or capable of being registered under the
(Designs Act, 2000 (16 of 2000):-
(1) Copyright shall not
subsist under this Act in any design which is registered under the (Designs
Act, 2000 (16 of 2000)
(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 person.
(i) Let us first turn to
the definition of a design under the Designs Act, 2000. A reading of the
definition of design shows that design is a shape, configuration or pattern etc
which is applied to an article whether the article is two dimensional or three
dimensional. The shape, configuration of pattern is applied to the article
having three dimensions or two dimensions by an industrial process or means.
The article which is produced by an industrial process by applying the shape
etc to the article, for the purposes of judging its validity as a design is to
be judged solely by the eyes. A mere mechanical device or a mode or principle
of construction of a mechanical device is excluded from the definition of a
design. A subject matter of work which will fall under the Trademarks Act, 1999
and artistic work under Section 2(c) of the Copyright Act would also be not
included in the definition of design.
(ii) Therefore, as per the
Designs Act, a design itself is not sold but what is sold is an article which
is produced from the application of the design by using an industrial process.
Unlike a design which is used for manufacture of an article by industrial process,
a design/drawing which is the subject matter of the Copyright Act is sold not
for the purpose of making any article by applying of the design but the
design/copyright work itself is sold as a copyrighted material i.e. the
difference between the copyright created under the Designs Act and the
copyright in an artistic work under the Copyright Act is that a design under
the Designs Act is used to produce an article whereas a copyright in an
artistic work under the Copyright Act is sold in itself and not that any
article further produced by application of the copyrighted work having a
copyright under the Copyright Act. Since there is some overlapping between a
drawing/design which can be both an artistic work under the Copyright Act as
also a design under the Designs Act, Section 15 of the Copyright Act makes it
clear that a drawing/design which is registered under the Designs Act will not
be the subject matter of a copyright under the Copyright Act, and, whether a
design on account of its originality in its/because of its application to
article can be registered under the Designs Act, but however is not registered,
then, the drawing/design will no doubt have a copyright under the Copyright
Act, but that copyright under the Copyright Act, 1957 in the drawing/design
will cease as soon as an article is produced more than 50 times by an
industrial process by application of the drawing/design which has copyright as
an artistic work under the Copyright Act. Putting it differently, a
drawing/design which is an artistic work under the Copyright Act, as also under
the Designs Act, if not registered under the Designs Act, will have protection
under the Copyright Act only till the design is used not more than 50 times by
an industrial process to produce an article by means of the application of the
drawing/design. Once the 51st article is produced by application of
drawing/design there will be no copyright under the Copyright Act, 1957 in the
drawing/design thereafter in the work which was an artistic work having copyright
under the Copyright Act and rights for the said drawings under the Designs Act,
2000 can only exist if the drawing/design is got registered under the Designs
Act, 2000 before making of the 51st article from the drawing/design. In other
words, if a drawing/design which is an artistic work under the Copyright work
and which is used by an industrial process for producing an article, then in
such case once the 51st article is produced by application of the design with
an industrial process, then, unless the drawing/design is registered under the
Designs Act, the owner of the copyright work i.e. drawing/design will no longer
be entitled to claim exclusivity of an entitlement to use the drawing/design
because of rights which were created under the Copyright Act, 1957 because
originally the drawing/design was an artistic work having a copyright under the
Copyright Act.
12. Since in the present case no rights
are claimed with respect to machine which manufactures a particular shape of
the comb under the Patents Act, 1970 or under the Designs Act, 2000 we have to
see the entitlement of the respondent/plaintiff to the drawing/design only
under the Copyright Act and once that is so Section 15(2) comes into play. It
is not disputed before this Court that more than 50 articles/combs have been
manufactured by the respondent/plaintiff by applying the drawing/design by the
machine/industrial process and consequently it is clear that no rights can be
claimed with respect to drawing/design under the Copyright Act.
13. Learned counsel for the respondent
strongly argued that the entitlement of the respondent/plaintiff is to produce
three dimensional or two dimensional articles by use of the designs/drawings
because of the right of the respondent/plaintiff in the machine and the drawings/designs
from which the machine is made and that respondent/plaintiff is not barred
under Section 15 of the Copyright Act, however, there is no substance
whatsoever in this argument because Section 14(c) deals with an entitlement of
a person who is the owner of the copyright because of existence/continuation of
existence of the copyright in the artistic work, but, Section 15(2) makes it
clear that the entitlement of a copyright owner in an artistic
work/drawing/design is lost once from the drawing/design an article is produced
more than 50 times by means of an industrial process. Once the copyright is
lost under Section 15 of the Copyright Act, Section 14(c) of the Act cannot be
read as to again confer a copyright in an artistic work although the same is
lost by virtue of Section 15 of the said Act.
14. Learned counsel for the respondent
placed reliance upon three judgments of three learned single judges of this
Court to argue the proposition that a right under Section 14(c) in spite of
Section 15(2) of the Copyright Act can exist, and which judgments are:
(i) John Richard Brady and
Ors. Vs. Chemical Process Equipments P. Ltd. and Anr., MANU/DE/0586/1987 : AIR
1987 Delhi 372;
(ii) Escorts Construction
Equipment Ltd. & Anr. Vs. Action Construction Equipment Pvt. Ltd. &
Anr., 1999 PTC 36 (DEL) ;
(iii) Puneet Industrial
Controls Pvt. Ltd. vs. Classic Electronics, MANU/DE/0284/1996 : 1997 PTC (17).
15. I have gone through the judgments
which have been relied upon by the respondent/plaintiff and also the cited paras,
however, none of the judgments deal with the interpretation of Section 15(2) as
is argued by the respondent/plaintiff and the judgments do not hold that a
copyright in an artistic copyright work is not lost after 51st article is
produced by application of the copyrighted artistic work/design by an
industrial process for producing of the article. The judgments cited on behalf
of the respondent/plaintiff therefore do not touch the issue at hand, and
therefore, do not help the respondent/plaintiff because these judgments do not
deal with the issue when copyright is lost because of Section 15(2) of the
Copyright Act.
16. It is quite clear that not only the
injunction application filed by the respondent/plaintiff was misconceived but
the suit itself is misconceived and the cause of action and the relief prayed
for therein will fly in the face of Section 15(2) of the Copyright Act, 1957 if
relief is granted in terms of plaint, whether final or interim. Obviously, the
suit has been filed on the basis of incorrect legal advice by deliberately
ignoring the binding provision of Section 15(2) of the Copyright Act. The trial
court has allowed the injunction application without referring to the vital
provision of Section 15(2) and consequently the impugned judgment is totally
illegal being set aside. In commercial cases costs must follow the event, more
so in the facts of the present case where the suit is misconceived and is filed
ignoring the statutory mandate of Section 15(2) of the Copyright Act and which
has resulted in stopping of the concerned business of the appellant/defendant.
I am empowered to impose costs in terms of Volume V of the Punjab High Court
Rules and Orders (as applicable to Delhi) Chapter VI Part I Rule 15 I may note
that the Supreme Court in the judgment in the case of Ramrameshwari Devi &
Ors. Vs Nirmala Devi & Ors. MANU/SC/0714/2011 : (2011) 8 SCC 249 has held
that it is high time that in frivolous litigations, exemplary and actual costs
must be imposed.
17. The appeal is therefore allowed with
costs of Rs. 1 lakh. Costs be paid within a period of eight weeks from today.
FAO No. 129/2014 & CM
Nos. 7782-83/2014
18. The issue in this appeal is similar
as has been decided in FAO 128/2014 above, and accordingly this appeal is also
allowed with costs of Rs. 1 lakh. Costs be paid within a period of eight weeks
from today.
