Overlap of copyright and design law continues to prove tricky for litigants

It has long been common in India to assert copyrights in industrial drawings or blueprints to prevent the manufacture of three-dimensional (3D) models of such drawings or blueprints. The principal reason for deploying such a strategy is that most plaintiffs such cases paid little attention to protecting their inventions under patent law. Most of these suits are usually, but not always, filed by employers against former employees or licensees that have had access to the industrial drawings or blueprints.

Although such lawsuits have been successful in the past, Indian courts are increasingly disallowing relief in such suits on the basis of Section 15(2) of the Copyright Act 1957, which disallows copyright protection for any work capable of being registered as a design under the Designs Act 2000 which has been reproduced more than 50 times.  

Two recent judgments on this issue are discussed below.

M/S Jagdamba Impex v Tristar Products Private Ltd (FAO 128/2014, Delhi High Court, May 5 2014)
Tristar had designed a machine to manufacture combs and claimed to own the copyright in the blueprints for the machine itself. Tristar had initially contracted Jagdamba to fabricate and manufacture the machine for it, but eventually discovered that Jagdamba was using the same machine to manufacture its own combs. The trial court had granted Tristar an interim injunction on the grounds that its copyright in two-dimensional drawings extended to even the 3D reproductions of the two-dimensional drawings.

On appeal by Jagdamba, a Division Bench of the High Court vacated the interim injunction on the grounds that Tristar had lost copyright protection in the industrial drawings for the machine under Section 15(2). The court reasoned that once Tristar had manufactured more than 50 machines based on the industrial drawings, it lost copyright protection in the drawings, since the final article could have been registered under the Designs Act. The court pointed out that when more than 50 reproductions of an article capable of being registered as a design are manufactured, such article must be registered under the Designs Act, since it will no longer be protected under the Copyright Act.

Standard Corporation India Ltd v Tractors and Farm Equipment (OSA 107/2013, Madras High Court, April 4 2014)
Tractors and Farm Equipment filed suit against Standard Corporation India Ltd on the grounds of copyright infringement since the tractors manufactured by the defendant were similar to its own. It claimed to own the copyright in the industrial drawings and, by implication, a monopoly right in the 3D reproduction of the drawings. It held no design registrations. 

Since more than 50 tractors had been manufactured by Tractors and Farm Equipment, Standard Corporation sought to have the lawsuit dismissed on the grounds that copyright no longer subsisted in the drawings because of Section 15(2) of the Copyright Act.  

Both the trial and appeals court declined to dismiss the lawsuit, since there were triable issues of fact to be resolved, and the case will now proceed to trial.