Microfibres Inc vs Girdhar And Co. And Ors. on 13 January, 2006

    Microfibres Inc vs Girdhar And Co. And Ors. on 13/1/2006

JUDGMENT

   Sanjay Kishan Kaul, J.

   1. The plaintiff's grievance of violation of its copyright in the artistic
works applied to upholstery fabrics and the allegation of an attempt to pass off
the goods of the defendants as that of the plaintiff has given rise to the
present litigation.

   2. The plaintiff is a company incorporated under the laws of the USA and is
stated to be engaged worldwide in the business relating to manufacturing,
marketing, selling and exporting of upholstery fabrics directly or through its
subsidiaries and affiliates. The brand name of the plaintiff is stated to be
Microfibres. The business of the plaintiff is stated to have commenced in the
year 1926 and the plaint states that on the upholstery fabrics are printed,
unique and original artistic works which are conceptualized and drawn/printed by
either its employees or other persons who have assigned the copyright in the
works to the plaintiff. More than 1000 people are stated to be employed by the
plaintiff and a global annual turnover is stated to be more than $ 200 million.
The plaintiff's product under the brand name Microfibres is stated to be sold in
more than hundred countries including India and has wide presence in the
manufacture and sale of synthetic nylon flox fabric and velvet upholstery
fabric.

   3. The plaintiff claims to have extensive international reputation with
manufacturing bases and operations in several countries of the world and there
are more than 250 brands of microfibres which are apparently sold in India. The
plaintiff claims to have obtained registration of copyright of most of its
original artistic works in the drawings applied by it on upholstery fabric and
the details of such registration are set out in para 7 of the plaint. However
during the course of arguments, the plaintiff concentrated the claim in respect
of some of these artistic works in respect of which it was alleged that the
defendants had violated the copyright. The details of the same are as under:

S.NO. TITLE REGISTRATION NO. DATE OF REGN.

15. HALLMARK V Au-366-558 20.06.1996

21. JUNE V Au-432-374 19.05.1998

23. LEIPZIG V Au-380-615 24.01.1997

31. MEISSEN V Au 391-653 20.05.1997

33. PALMETTO V Au-356-331 21.11.1995

38. PRESTIGE V Au-406-109 17.12.1997

42. TARSUS V Au-458-207 12.11.1999

46. BLACK POOL* 56. REGIA* V Au-498-306 06.12.2000

   4. It may be noticed that in the said para 7 of the plaint itself, it has
been stated that copyrights in these works were being filed except the artistic
works which are marked with an asterisk for which the registered copyrights are
not readily available. In respect of some of the artistic works, there is stated
to be no registration of the copyright. It is, however, claimed that whether
such a copyright is registered or not, in view of the provisions of the
Copyright Act, 1957 (hereinafter referred to as the Copyright Act) the copyright
in the artistic works subsists and gives an exclusive right to the owner
thereof.

   5. The plaintiff has claimed that the artistic work constitutes original
artistic work as defined within the meaning of Section 2(c) of the Copyright
Act. The plaintiff also claims that it enjoys copyright protection in India as a
consequence of the provisions of Section 40 of the Copyright Act and the Berne
Convention, Universal Copyright Convention read with Indian International
Copyright Order, 1999.

   6. In May, 2002, the plaintiff discovered that defendant no.2 was
manufacturing and marketing upholstery fabric through defendant no.1 as the
distributor which infringed the copyright of the plaintiff. Such sale is also
alleged to amount to passing off the goods of the defendant as if they were the
goods of the plaintiff. The defendant's goods are alleged to be inferior and the
use of the artistic work of the plaintiff on upholstery fabric is unauthorized
and dishonest. No consent of the plaintiff was taken.

   7. The plaintiff claims exclusive rights in respect of the copyright work in
view of provisions of Section 14(c) of the Copyright Act and the infringement of
the defendants is stated to be covered under the provisions of Section 51 of the
Copyright Act.

   8. The upholstery fabric manufactured and sold by the defendants is stated to
bear the artistic works which are identical copies or colourable imitations of
the artistic work in which the plaintiff has a copyright and all the distinctive
features of the plaintiff's artistic work is alleged to have been copied. The
defendants' conduct is thus stated to be dishonest as the defendants are stated
to have strained every nerve to come as close to plaintiff's product as
possible. It is thus alleged to be a slavish copying of the artistic work of the
plaintiff. The object is stated to be to encash on the reputation and goodwill
earned by the plaintiff in respect of its goods.

   9. A composite action has been brought both for infringement of copyright and
for passing off. The plaintiff has also claimed damages.

   10. The suit has been contested by the defendants and the principal defense
raised is that the plaintiff is not entitled to protection under the Copyright
Act. This plea is based on the fact that the artistic works are actually designs
relating to textile products and come within the scope of the Designs Act, 2000
(hereinafter referred to as the Designs Act, 2000). The plaintiff has failed to
apply for registration of designs in India under the provisions of the said Act
or the predecessor Act being the Designs Act, 1911 (hereinafter referred to as
the Designs Act, 1911) The plaintiff having failed to complete the requisite
formalities under either of the two designs acts, is alleged to be now seeking
to claim protection under the Copyright Act, which is not permissible. It is
claimed that in textile trade, the designs in use are built around permutations
and combinations of a limited number of motifs/imitations drawn from various
sources and requiring very little by way of distinguishing variations to claim
originality. Thus the three fold submission of the defendants is:

     i) The plaintiff was itself conscious of the fact that registration was
required under the Designs Act and had applied for designs to be registered in
U.K. under the local designs act;

     ii) The certificate relied upon and issued by the United States Copyright
Office refers to the subject as fabric designs and not artistic works;

     iii) The Indian Patent and Designs Office has confirmed vide its letter
dated 19.07.2002 that the subject designs being textile designs are registrable
under the Designs Act, 2000.

   11. The defendants have also alleged that the plaintiff is guilty of
suppressio veri and suggestio falsi. This plea is based on the allegation that
the plaintiff has failed to disclose the prior litigation including criminal
proceedings where investigation officer has submitted a report to the court
clearly stating that no case under the copyright law had been made out.

   12. The stand of the defendants is that the designs in respect of which the
plaintiff claims proprietary right and protection under the Copyright Act, are
all textile designs which are aesthetic, ornamental and visual in nature with an
appeal to the eyes only. It is thus the submission of the defendants that such
features cannot be subject matter of copyright as they do not constitute
artistic work and are not capable of protection within the meaning of Section
14(c) of the Copyright Act. In case novelty existed in the same, the statutory
protection in such features could only be under the provisions of Designs Act,
2000 by obtaining necessary registration there under. The textile fabrics are
registrable subject matter of design and artistic work is specifically excluded
from the definition of design. Such exclusion is specifically directed to
paintings, drawing, pictures, etc. which are not industrially applied to
articles. The alternative plea raised is that in view of provisions of Section
15(2) of the Copyright Act, the copyright in any design which is capable of
being registered but has not been so registered, ceases as soon as any article
to which the design has been applied has been re-produced more than 50 times by
an industrial process by the copyright owner or his licensee.

   13. A further aspect emphasized is that there can be no deception as the
plaintiff admittedly sells its products under the brand name 'Microfibres' while
the defendants sell under the brand name 'Velveleen'.

   14. Defendant No. 2, the manufacturer, has specifically pleaded that it is
only by making use of the motifs/imitations drawn from various sources and use
of the elements of the public domain and combining the same with its own
creative ingenuity, a wide variety of flox fabrics has been produced. The
plaintiff's right to claim exclusivity in the design as a proprietor is denied.

   15. The provisions of Section 15 of the Copyright Act have been strongly
relied upon for the plea that no copyright subsists in any design which is
registered under the Designs Act, 1911. Further, copyright under Section 15(2)
of Copyright Act in any design which is capable of being registered, but has not
so been registered, ceases as soon as the article to which the design has been
applied has been re-produced more than 50 times. In view of there already being
a vast number of re-productions, the copyright, if any, is stated to have
ceased. The Designs Act, 1911 has been referred to show that two separate
classes for registration of textile designs are provided in Class 13 and 14 of
the Fourth Schedule dealing with classification of goods. The defendant No. 2
has claimed that its designs were created through its own attempts, independent
of the plaintiff. However, no details of the same have been given.

   16. In the replication, the plaintiff has specifically pointed out that in
view of new Designs Act, 2000, the definition of design as contained in Section
2(d) specifically excludes any artistic work as defined in Class 2(c) of the
Copyright Act.

   17. The aspect of registration in UK under the local Designs Act is sought to
be explained by reason of the definition of design in the said Act where by once
the artistic work was applied industrially, the protection could have been
enjoyed only with respect to industrial obligation under that Act and not under
the Copyright Act. The UK Designs act does not exclude artistic works.

   18. In view of the aforesaid pleas raised, the matter in issue, in my
considered view, is more of a legal issue rather than a factual one. The legal
issue arises from the interplay and the rights and obligations under the
Copyright Act, the Designs Act of 1911 and the Designs Act, 2000. In order to
fully appreciate the controversy, it will be necessary to have a brief overview
of the provisions of the three Acts in question which are relevant to the
present matter.

   19. Section 2(c) of the Copyright Act defines artistic work as under:

     artistic work' means, -

     i) 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;

     ii) an (Work of architecture); and

     iii) any other work of artistic craftsmanship;

   20. An author in relation to an artistic work is defined in Section 2(d)(iii)
of the Copyright Act as under:

     in relation to an artistic work other than a photograph, the artist;

   21. The Section 13 of the Copyright Act stipulates the works in which
copyright subsists and an original artistic work is included in Section
13(1)(a). The Section 14 defines the meaning of a copyright and the relevant
portion is as under:

     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 -

     (a) ....

     (b)....

     (c) in case of an artistic work, -

     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;

     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 adaption of the work;

     vi) to do in relation to an adaption of the work any of the acts specified
in relation to the work in subclauses (i) to (iv);

   22. Section 15 deals with the special provisions regarding copyright in
designs registered and capable of being registered under the Designs Act, 1911
and reads as under:

     15. Special provision regarding copyright in designs registered or capable
of being registered under the Designs Act, 1911. -

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

     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 license, by any other person.

   23. A reading of the aforesaid Sections thus makes it clear that there cannot
be a subsisting copyright in any design which is registered under the Designs
Act, 1911 or which is capable of being registered, but not registered, under the
Designs Act, 1911 once the article has been reproduced more than 50 times.

   24. Section 17 provides that the first owner of a copyright in case of an
artistic work shall be the author. A copyright can be assigned under Section 18
and Section 19 provides for the mode of assignment. Such assignment in terms of
Section 19 can be valid only if it is in writing, signed by the assignor, or,
his duly authorised agent. The term for which a copyright exists is provided in
Section 22 as under:

     22. Term of copyright in published literary, dramatic, musical and artistic
works. - Except as otherwise hereinafter provided, copyright shall subsist in
any literary, dramatic,musical or artistic work (other than a photograph)
published within the lifetime of the author until (sixty years) from the
beginning of the calender year next following the year in which the author dies.

     Explanation. - In this Section the reference to the author shall, in the
case of an work of joint authorship, be construed as a reference to the author
dies last.

   25. Chapter XI provides for infringement and Section 51 stipulates when a
copyright is infringed and reads as under: 51. When copyright is infringed -
Copyright in a work shall be deemed to be infringed -

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

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

     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

     b)when any person -

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

     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

     iv) imports into India,

     any infringing copies of the work :

     Provided that nothing in Sub-clause (iv) shall apply to the import of one
copy of any work, for the private and domestic use of the importer.

     Explanation - For the purpose 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'

   26. In exercise of the power conferred by Section 40 of the Copyright Act,
the International Copyright Order 1999 was published in the Gazette of India
dated 06.04.1999. Para 3 of the said order postulates that subject to the
provisions of Para 4, 5 and 6, all provisions of the Copyright Act, except those
in Chapter VIII and those other provisions which apply exclusively to the Indian
works, shall apply to any work, first made or published in a country mentioned
in Part I, II, III, IV or VI of the Schedule in like manner as if it was first
published in India. The United States of America is mentioned at serial no. 56
of Part III.

   27. The Designs Act, 1911 defines a design under Section 2(5) as under:

     2. (5) 'design' means only the features of shape, configuration, pattern or
ornament applied to any article 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, or
property mark as defined in Section 479 of the Indian Penal Code;

   28. Part II deals with the registration of designs and Section 47 stipulates
that when a design is registered, the registered proprietor of the design shall
have copyright in the design during five years from the date of registration.

   29. Section 77 empowers the Central Government to make rules, and in exercise
of said powers, the Design Rules, 1933 were notified. The Fourth Schedule give
the classification of goods and the relevant schedule is as under:

     THE FOURTH SCHEDULE

     Classification of goods

     Class 13 - Printed or woven designs on textile goods (other than checks or
stripes)

     Class 14 - Printed or woven designs on textile goods being checks or
stripes.

   30. The Designs Act, 2000 was enacted to provide a more effective protection
to the registered designs. In terms of Section 48 of this Act, the Designs Act,
1911 was repealed. However any notification, rule, etc. under the old Act was to
continue to be in force. Section 2(d) defines the design and was made more
comprehensive and it reads as under:

     2. Definitions.- ...

     (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 devise, 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).

   31. A reading of the aforesaid definition would show that as compared to the
earlier definition interalia any artistic work as defined in Clause 2(c) of
Copyright Act, 1957 was specifically excluded.

   32. A copyright in a registered design was provided in Section 11 under
Chapter III and reads as under:

     11. Copyright on registration -

     1) When a design is registered, the registered proprietor of the design
shall, subject to the provisions of this Act, have copyright in the design
during ten years from the date of registration.

     2) If, before the expiration of the said ten years, application for the
extension of the period of copyright is made to the Controller in the prescribed
manner, the Controller shall, on payment of the prescribed fee, extend the
period of copyright for a second period of five years from the expiration of the
original period of ten years.

   33. A statutory monopoly thus is provided for a period of ten years
extendable by another five years totalling to 15 years.

   34. Section 22 stipulates the rights conferred on a registered design and
reads as under:

     22. Piracy of registered design.- (1) During the existence of copyright in
any design it shall not be lawful for any person -

     a) for the purpose of sale to apply or cause to be applied to any article
in any class of articles in which the design is registered, the design or any
fraudulent or obvious imitation thereof, except with the license or written
consent of the registered proprietor, or to do anything with a view to enable
the design to be so applied; or

     b) to import for the purposes of sale, without the consent of the
registered proprietor, any article belonging to the class in which the design
has been registered, and having applied to it the design or any fraudulent or
obvious imitation thereof; or

     c) knowing that the design or any fraudulent or obvious imitation thereof
has been applied to any article in any class of articles in which the design is
registered without the consent of the registered proprietor, to publish or
expose or cause to be published or exposed for sale that article.

     2) If any person acts in contravention of this Section, he shall be liable
for every contravention -

     a) to pay to the registered proprietor of the design a sum not exceeding
twenty-five thousand rupees recoverable as a contract debt, or

     b) if the proprietor elects to bring a suit for the recovery of damages for
any such contravention, and for an injunction against the repetition thereof, to
pay such damages as may be awarded and to be restrained by injunction
accordingly;

     Provided that the total sum recoverable in respect of any one design under
clause (a) shall not exceed fifty thousand rupees:

     Provided further that no suit or any other proceeding for relief under this
subsection shall be instituted in any court below the court of District Judge.

     3) In any suit or any other proceeding for relief under Sub-section (2),
every ground on which the registration of a design may be cancelled Under
Section 19 shall be available as a ground of defense.

     4) Notwithstanding anything contained in the second proviso to Sub-section
(2), where any ground on which the registration of a design may be cancelled
Under Section 19 has been availed of as aground of defense and Sub-section (3)
in any suit or other proceeding by the court, in which the suit or such other
proceeding is pending, to be High Court for decision.

     5) When the court makes a decree in a suit under Sub-section (2), it shall
send a copy of the decree to the Controller, who shall cause an entry thereof to
be made in the register of designs.

   35. In terms of Section 47, the Central Government is authorized to make
rules and thus Design Rules, 2001 were promulgated and Class 5 Entry 05-05 of
the Rules reads as under:

     CLASS 05 ....

     05-05 Textile fabrics

     Note.- (a) Including textile fabrics, woven, knitted or otherwise
manufactured, tarpaulins, felt and loden.

   36. In the conspectus of the aforesaid position, the following issues were
framed:

     1. Whether there is any Copyright in the stated artistic work of the
plaintiff OPP.

     2. Whether any Copyright subsists in favor of the plaintiff in view of the
provisions of Section 15 of the Copyright Act OPP.

     3. Whether the plaintiff was required to register the artistic work under
the Designs Act, 2000 OPP.

     4. Whether the Designs Act, 1911 would have any application to the stated
artistic works of the plaintiff If so, to what effect OPD.

     5. Whether the defendant is passing off its goods as those of the plaintiff
OPP.

     6. Whether the plaintiff is entitled to rendition of accounts from the
defendant If so, for what period OPP.

     7. Whether the plaintiff is guilty of suppressing any material fact OPD.

     8. Relief.

   37. The parties on the said date of 26.09.2005, when the issues were framed,
agreed that the suit can be decided on the basis of documents filed and no oral
evidence was necessary. Learned counsel for the parties further agreed that the
documents may be read in evidence without formal proof and the matter be heard
finally on that basis.

   ISSUE NO. 1 :

   38. The plaintiff claims to be the owner of the copyright in the artistic
works which are applied on upholstery fabrics. The certificates of registration
issued by the United State Copyright Office have been filed. The registration is
stated to have been done under the 1976 Copyright Act of United States. However
for a number of artistic works, including a number of those in question, the
registered copyrights are stated not to be readily available. For some of the
artistic works, the plaintiff has not even registered the copyrights. The
protection is however sought on the basis that the copyright in the artistic
works subsists and gives an exclusive right to the plaintiff.

   39. The plaintiff has placed strong reliance upon the Berne Convention for
protection of literary and artistic works. Article 16(a) of the Convention is
relied upon to substantiate the plea that the protection exists automatically
and there is no registration required in India in view of India being a
signatory to Berne Convention, the Universal Copyright Convention, 1971 and the
International Copyright Order 1999 being promulgated.

   40. Learned counsel for the plaintiff referred to the judgment of the Supreme
Court in Gramophone Company of India Ltd v. Birendra Bahadur Pandey and Ors.;
where the international conventions were discussed and it was emphasized that:

     The next step for us to consider is whether there is any general Convention
on Copyright. An artistic, literary or musical work is the brain- child of its
author, the fruit of his labour, and, so, considered to be his property. So
highly is it prized by all civilized nations that it is thought worthy of
protection by national laws and international conventions relating to copyright.
The International Convention for the protection of literary or artistic works
first signed at Berne on September 9, 1886, was revised at Berlin in 1908, at
Rome in 1928, at Brussels, in 1948, at Stockholm in 1967 and finally at Paris in
1971. Article 1 o the Convention, as revised, constitutes the countries to which
the Convention applies into a Union for the protection of the rights of authors
in their literary and artistic works. The expression ' literary and artistic
works' is defined to include every production in the literary, scientific and
artistic domain whatever may be the mode or formation of its expression. It is
provided that the work shall enjoy protection in all countries of the Union.
Various detailed provisions are made in the Convention for the protection of the
works. Article 9 provides that authors of literary and artistic works protected
by the Convention shall enjoy the exclusive right of authorising the
reproduction of these works in any manner of form. It is also expressly
stipulated that any sound or visual recording shall be considered as a
reproduction for the purposes of the Convention. We are not really concerned
with the several details of the Convention. But we may refer to Article 16 which
provides:

     1. Infringing copies of a work shall be liable to seizure in any country of
the Union where the work enjoys legal protection'

     2. The provisions of the preceding paragraphs shall also apply to
reproductions coming from a country where the work is not protected, or has
ceased to be protected;

     3. The seizure shall take place in accordance with the legislation of each
country.

     India, we may mention is a party to the Berne Convention.

   41. The Full Bench of Madhya Pradesh High Court in K.C. Bokadia and Anr. v.
Dinesh Chandra Dubey 1999 (1) MP LJ 33 has observed that there is no legislative
intent to make registration of a copyright mandatory. Para 8 reads as under:

     8. A careful analysis of the Scheme and the provisions of the Act does not
disclose any legislative intention to make registration of copyright mandatory
or to take away civil or criminal remedies in the event of n on-registration of
copyright. On the other hand, some of the provisions point a contrary
conclusion. Copyright is the exclusive right, subject to the provisions of the
Act, to do and authorise the doing of any of the acts enumerated in Section 14
in respect of a work or substantial part thereof. The first owner of the
copyright shall be the author of the work. In other words, the ownership of the
copyright is a logical consequence of the authorship. Copyright does not arise
from registration of copyright. Provision regarding registration and maintenance
of register is basically a provision to enable entries to be made in respect of
relevant particulars including the names of owners of copyright. Unless there is
an existing copyright and a person is the owner of of a copyright, the question
of applying for or making entries in the register of copyrights does not arise.
Registration follows the copyright and not vice versa. Certified copies entries
in the register are only prima facie evidence without further proof and they are
not conclusive. A copyright when it is propounded or challenged has to be duly
established in a competent court.

     There is no specific provision as in the trade and Merchandise Marks Act or
Indian Partnership Act barring institution of legal proceedings in the absence
of registration. Having regard to all these circumstances it has to be held that
registration is not mandatory and for breach of copyright, civil or criminal
remedy can be resorted to without registration.

   42. The Division Bench of Kerala High Court in R. Madhavan v. S.K.Nayar has
taken the same view that Section 44 and 45 of the Copyright Act are only
enabling provisions and do not effect the common law right to sue for
infringement of copyright. In view of the aforesaid position, the plaintiff
contended that the words in Section 2(c) of the Copyright are wide and inclusive
and the definition is not narrowed on account of any intent behind making of
such work or the intent with respect to any of such work. Thus, the plaintiff
claims that an artistic work would subsist in the works in question of the
plaintiff. It is thus the submission of the plaintiff that even if known and
existing material in public domain are re-arranged and compiled in a particular
way, so long as the re-arrangement of the compilation is original, it would be
an artistic work for purposes of Copyright Act. This originality is an essential
ingredient and the purpose of copyright law is to provide the owner of a
copyright with specific exclusive economic rights. This is the reason that
author/creator of the work not made in course of employment is usually the first
owner and has the exclusive right to reproduce, publish, publicly perform,
broadcast and adapt the work.

   43. Learned counsel for the plaintiff relied upon the judgment of the Privy
Council in Macmillan and Company Limited v. K. and J. Cooper A.I.R. 1924 Privy
Council 75. In the said judgment, the observations of Lord Halsbury in the case
of Walter v. Lane (1990) A.C. 539 were quoted with approval. Lord Halsbury
observed as under:

     I should very much regret if I were compelled to come to a conclusion that
the state of the law permitted one man to make a profit and to appropriate to
himself what has been produced by the labour, skill and capital of mother. And
it is not denied that in this case the defendant seeks to appropriate to himself
what has been produced by the skill, labour and capital of others. In the view I
take of this case the law is strong enough to restrain what to my mind would be
a grievous injustice.

   44. A reference has also been made in Macmillan and Company Limited's case
(supra) to the observations of Justice Story in Frederick Emerson v. Chas.
Davies, Story's United States Reports Vol. 3 p. 768 to the effect that three
important aspects have to be kept in mind, which are as under: First, that any
new and original plan, arrangement or compilation of material will entitle the
author to copyright therein whether the materials themselves be old and new.
Second, that whosoever by his own skill, labour and judgment writes a new work
may have a copyright therein, unless it be directly copied or evasively imitated
from another's work. Third, that to constitute piracy of a copyright it must be
shown that the original has been either substantially copied or to be so
imitated as to be a mere evasion of the copyright.

   45. In Frederick Emerson's case (supra), Justice Story further observed at
page 778 as under:

     The book of the plaintiff is, in my judgment, new and original in the sense
in which those words are to be understood in cases of copyright. The question is
not whether the materials which are used are entirely new and have never been
used before, or even that they have never been used before for the same purpose.
The true question is whether the same plan, arrangement and combination of
materials have been used before for the same purpose or for any other purpose.
If they have not, then the plaintiff is entitled to a copyright, although he may
have gathered hints for his plan and arrangement or parts of his plan and
arrangement from existing and known sources. He may have borrowed much of his
materials from others, but if they are combined in a different manner from what
was in use before ... he is entitled to a copy right. ... It is true that he
does not thereby acquire the right to appropriate to himself the materials which
were common to all persons before, so as to exclude those persons from a future
use of such materials; but then they have no right to use such materials with
his improvements super-added, whether they consist in plan, arrangement, or
illustrations, or combinations for these are strictly his own-/p>

     In truth, in literature, in science and in art there are and can be few, if
any, things which, in an abstract sense, are strictly new and original
throughout.

   46. A reference has also been made in the judgment of Macmillan and Company
Limited's case (supra) to the judgment in the case of University of London Press
Ltd. v. University Tutorial Press Ltd. (1916) 2 Ch. 601 in which Mr. Justice
Peterson dealing with the meaning of the words 'original literary work' said at
page 608:

     The word 'original' does not in this connection mean that the work must be
the expression of original or inventive thought. Copyright Acts are not
concerned with the origin 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.

   47. Learned counsel for the defendants, on the other hand, emphasized that
the crucial question to be considered would be whether the subject work in
question is an 'artistic work' protected under the provisions of the Copyright
Act or a 'design' under the Designs Act, 2000 (or the Designs Act, 1911). The
defendants contended that the subject work in dispute are floral designs which
are applied upon fabrics used for upholstery through an industrial process. This
is the reason why in United Kingdom (for short, 'U.K.'), the plaintiff has
registered the subject work as a design. A practical proof of this is stated to
be the letter dated 19.07.2002 issued by the Patent Office to the effect that
'textile design fabrics' are registrable under the Designs Act, 2000. Certain
certificates of registration of such fabric patterns have also been placed on
record.

   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.

   49. 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., non-functional) 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.

   50. The economic impact of the aforesaid has also been emphasized. If the
subject work is an 'artistic work', the term of legal protection it will enjoy
under Section 22 of the Copyright Act, would be the lifetime of its author + 60
years and it would be enforceable not only through civil proceedings, but also
incur criminal liabilities. However, if the subject work is a 'design', then the
protection, it enjoys is for a maximum period of 15 years under the provisions
of Section 11 of the Designs Act, 2000. Needless to say that in terms of the
said Section, only if the design is registered, the said period of copyright in
the design shall exist. It was emphasized that even in the case of inventions
under the Patents Act, the protection is limited to only 20 years.

   51. The plea of the plaintiff is also sought to be negated on the issue of
definition of a 'design' under Section 2(d) of the Designs Act, 2000 whereby an
'artistic work' as defined in clause (c) of Section 2 of the Copyright Act has
been specifically excluded. The submission was, thus, advanced that this would
have the effect of rendering the law of designs redundant for the simple reason
that each design registered there under would be able to trace its origin to a
diagram, chart, drawing, etc. and, thus, cease to be governed by the Designs
Act. The legislative intent could not have been this because the law of designs
is based on the same principle as applicable to other monopolies and to fuel
industrial innovativeness by granting limited time-limit to the monopolies and
allow others to make use of them after they have passed into the public domain.
Thus, the plea of the plaintiff, if accepted, would be anti-competitive and
would throttle and stagnate the industry. Learned counsel referred to judgment
of the Privy Council in Interlego A.G. v. Tyco Industries Inc. (1988) R.P.C. 343
wherein it has been observed as under:

     The definition of 'design' in Section 1(3) of the Act of 1949 is hardly a
model of Parliamentary draughtsmanship and this is by no means the first case in
which its meaning and application have been called in question. In approaching
he question of construction there has to be borne in mind that the purpose of
the Act, as appears both from its terms and its legislative history, is to
protect novel designs devised to be 'applied to' (or, in other words, to govern
the shape and construction of ) particular articles to be manufactured and
marketed commercially. It is not to protect principles of operation or
inventions which, if protected at all, ought to be made the subject-matter of a
patent. Nor is it to prevent the copying of the direct product of original
artistic effort in producing a drawing. Indeed the whole purpose of a design is
that it shall not stand on its own as an artistic work but shall be copied by
embodiment in a commercially produced artefact. Thus the primary concern is what
the finished article is to look like and not with what it does and the monopoly
provided for the proprietor is effected by according not, as in the case of
ordinary copyright, a right to prevent direct reproduction of the image
registered as the design but the right, over a much more limited period, to
prevent the manufacture and sale of articles of a design not substantially
different from the registered design. The emphasis therefore is upon the visual
image conveyed by the manufactured article.

   52. A reference was also made to the judgment in Premier Hangers CC v.
Polyoak (PTY) Ltd. 1997 (1) SA 416 (Appellate Division). Both the parties were
manufacturers and suppliers of hangers to the clothing industry and were
competitors. The litigation arose from a claim by Polyoak that Premier was
passing off hangers manufactured by it as being those of Polyoak. Infringement
of certain designs registered in terms of the Designs Act were also pleaded. It
was observed as under:

     The evidence of Louw shows that trends, fashions, and the hangers of other
manufacturers, are routine sources of inspiration in the field. A number of
Polyoak's designs were based on what Louw had seen overseas or knew to be
designs being used overseas. Louw referred to the imitation of a Marks and
Spencer hanger as an example. The Uni range itself was produced with a
particular Section (described by Louw as the C Section) copied from an overseas
hanger. It was also said that hanger design is influenced by the need to adapt a
hanger so as to display dresses with, for example, broad straps, or to
necessitate further modification when narrow straps are in favor. Another
example given by him was that a particular material such as silk may become
fashionable. This would require rounded edges to the hangers as sharp edges
would be unsuitable for such use. Another feature of the industry testified to
by Louw was that changes were made to hangers incrementally and largely in
accordance with customer suggestions or demands. So, too, sizes of hangers are
determined solely by the standard measurements of dressmakers, and label plates
are added, altered or removed in accordance with the customers' wishes. I say
this not to denigrate Polyoak's endeavors but to illustrate that in the general
sense of justice of the community (quite apart from the question of design
registration) copying in this field would not be regarded as improper. In short,
copying is very much the order of the day while individual innovations are rare.

   53. The defendants contended that the legislative intent behind the repealed
Designs Act, 1911 and coming into force of the new Designs Act, 2000 remained
the same and the exclusion of 'artistic work' in the definition in the new
Designs Act, 2000 is only clarificatory and was intended to exclude only
artistic work pure and simple such as paintings, sculptures and works of art.

   54. To substantiate the aforesaid plea, a reference was made to the judgment
of learned Single Judge of this Court in I.A. Nos. 6597 and 6944 of 1991 in Suit
No. 1481 of 1991 titled 'S.S. Sarna Inc. and Anr. v. Talwar and Khullar Pvt.
Ltd. and Ors.' decided on 08.08.1991. The subject matter of dispute was the
allegation of copying by the defendants of the original artistic works owned by
the plaintiff in the form of artistic metal sculptors such as fire boards,
welcome wreaths, decorative hooks, wall hangings / small fire boards and
planters, etc. The plaintiff was a company incorporated under the laws of United
States of America (for short, 'USA'). Learned Single Judge found that it was
really not in dispute that the basic idea of such products produced by the
defendants appeared to have emanated from the plaintiff. It was observed as
under:

     Copyright Act in general protects the artistic work, but the idea behind
excluding certain designs from the protection under the Copyright Act, although
otherwise the same design might have been so entitled to protection, appears to
be to avoid any hindrance being caused to the manufacture and sale of industrial
articles which in the absence of a provision similar to Section 15 could not be
achieved. The intention of the Legislature appears to be very clear that
wherever any artistic work has to be in a commercial exploitation by the owner
of the copyright the same should be excluded from the protection under the
Copyright Act and should be provided protection under the Designs Act, 1911 only
provided the said design is registered under the Designs Act. The reference to
the definition of term 'Design' under the Designs Act is wide enough, in my
opinion, to cover the artistic work of the nature similar to the ones that we
are concerned in the present suit. Plaintiffs have further submitted that the
term 'Design' is not defined under the Copyright Act. In my opinion, when a
particular term is used in reference to an Act and that term 'design' has been
defined under that Act, it can be safely presumed that the Legislature implied
that it is the definition of the term under that particular Act (The Designs Act
1911) which can be looked into to decide the present controversy.

   55. Learned counsel for the defendants referred to the judgment of another
learned Single Judge of this Court in Samsonite Corporation and Anr. v. Vijay
Sales and Ors. (2000) F.S.R. July (c) Sweet and Maxwell

   463. The dispute related to a range of suitcases known as System 4 range and
the plaintiff claimed that the defendants suitcases infringe the copyrights
relating to the said range and that the defendants were passing off suitcases
for those of the plaintiff. The dispute was similar whether the plaintiff's
drawings were artistic work. If they were designs and had not been registered
under the Designs Act, they were not subject to copyright protection. It was
observed as under:

     60. ... The main thrust of the argument of learned senior counsel of the
plaintiffs was that the suitcases manufactured by the plaintiffs would easily
attract any person because it has got a powerful and attractive shape which
would immediately attract the eye. Learned senior counsel submitted that people
traveling by air, rail and other modes of transport would look at the shape of
the box and then would make enquiries as to who had manufactured it and that
they would like to buy one. Therefore, the whole purpose of the manufacture was
to attract the eyes of customers. Therefore, it would follow from the argument
on behalf of the plaintiffs that it is clearly a design coming within the
meaning of the definition of design, under the Designs Act, 1911, and coming
within the meaning of Section 15 of the Copyright Act, 1957. Consequently, the
plaintiffs cannot claim any copyright as the same had not been registered. The
fact that it is being manufactured industrially is not in dispute. Prima facie,
I accept the submission on behalf of learned counsel for the defendants that
inasmuch as the plaintiffs had not registered the designs the plaintiffs cannot
claim any protection under the Copyright Act, 1957 with reference to the
drawings.

   56. Learned counsel for the defendants also pointed out the documents filed
on record to show that the textile fabrics had been registered both under the
Designs Act, 1911 and the Designs Act, 2000.

   57. In order to appreciate the object of introduction of the new Designs Act
of 2000, various proceedings were referred to by learned counsel for the
defendants. The Statement of Objects and Reasons of The Designs Bill, 1999
provided that the intent was to ensure that the law does not unnecessarily
extend protection beyond what is necessary to create the required incentive for
design activity while removing impediments to the very use of available designs.
The definition of 'design' has been amplified to incorporate therein the
composition of line and colours so as to avoid overlapping with the Copyright
Act regarding definition of 'design' in respect of 'artistic work'. The
proceedings from the Parliamentary Debate on the Bill were also referred to to
show that the concerned Minister of State had observed that the Act was being
amended to 'provide help and protecting the rights of designers'. The Handbook
issued by the Design Office for information to the public was referred to which
inter alia states as under:

     What can be registered as a Design

     To qualify for registration as a design, an article should relate to the
ornamental or new shape, surface pattern, lines or colour with aesthetic look
(Designs of industrial plans, layouts or installation are not registrable).

   It should be applicable to any product reproducible by industrial means
(Paintings / Sculptures and 'works of art' excluded).

   58. Learned counsel further referred to the judgment of learned Single Judge
of this Court in AGA Medical Corporation v. Faisal Kapadi and Anr. 2003 (26) PTC
349 (Del) where it was observed as under:

     13. ...This Court on a consideration of the matter and more particularly
the meaning of copyright and the definition of 'design' in the Designs Act is,
prima facie, of the view that the plaintiff does not have a subsisting copyright
under the Copyright Act, firstly; because it is capable of being registered
under the Designs Act though it has not been so registered and secondly; as per
the plaintiff's own showing, the devices to which the drawings have been
applied, has been reproduced more than 50 times by an industrial process by the
plaintiff.

   59. The decision on this particular issue has a material bearing on even the
subsequent issues framed in the suit and, thus, had to be examined in-depth. The
crucial issue would, in my considered view, which has been rightly put forth in
its perspective by the learned counsel for the parties, is whether the work in
question can be said to be an 'artistic work' within the definition of Section
2(c) of the Copyright Act or was it a 'design' within the meaning of the Designs
Act, 2000.

   60. The work in question is no doubt the arrangement of motifs, flowers,
leaves and shapes which have been arranged in a particular manner. There is,
thus, element of labour and skill applied to have a particular pattern as
observed in Walter v. Lane's case (supra). There is also little doubt that the
defendants have copied the same. This would be apparent from the comparison of
the designs of the fabrics of the plaintiff and the defendants. To illustrate
this aspect, some of the original and alleged offending products are being
reproduced herein- below:

     Plaintiff's Product - 'LEIPZIG'

     Defendants' Infringing Product

     Plaintiff's Product - 'PRESTIGE'

     Defendants' Infringing Product

     Plaintiff's Product - 'HALLMARK'

     Defendants' Infringing Product

     Plaintiff's Product - 'MIESSEN'

     Defendants' Infringing Product

     Plaintiff's Product - 'JUNE'

     Defendants' Infringing Product

   61. The defendants have attempted to throw doubts on the certificates of
registration issued by the Copyright Office at USA. However, once the parties
have agreed that the documents can be read in evidence, the documents filed do
give sufficient proof of such registration in USA. There have been also cases of
assignment. It has been set out in the plant that there are large number of
staff of the plaintiff doing this very work, while in respect of others,
assignment has taken place. However, in respect of some of the works, the
documents are stated not to be available. It has been pleaded that, in any case,
the defendants are copying.

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

   63. In India, we have special legislations governing the protection of
different nature of rights. Insofar as the industrial designs are concerned, the
protection is provided under the Designs Act, 2000, which came into force from
May, 2001 and repealed the earlier Designs Act, 1911. An important and relevant
aspect is that both under the old Act and the new Act, fabric designs on textile
goods have been classified as proper subject matter of design protection by
inclusion as a specific class in the Rules framed under the Acts. In the Designs
Act of 1911, class 13 and 14 of the Fourth Schedule of the Rules dealt with
printed or woven designs of textile goods other than checks and stripes and
checks and stripes respectively. Such protection is now provided under Class 05
of the new Design Rules of 2001.

   64. Furthermore, the legislative intent is also to be kept in mind which is
to provide protection for a certain period of time for commercial exploitation.

   Thus, nature of protection is quite different for an artistic work under the
Copyright Act which is for the lifetime of the author / creator + 60 years. This
is not so in the case of commercial exploitation as under the Designs Act and
the Patent Act the period is much lesser. In the present case, the configuration
was made only with the object of putting it to industrial / commercial use.

   65. The exclusion of an 'artistic work' as defined in Section 2(c) of the
Copyright Act from the definition of 'design' under Section 2(d) of the Designs
Act, 2000 is only meant to exclude the nature of artistic works like painting of
M.F. Hussain. It is, thus, the paintings, sculptors and such works of art which
are sought to be specifically excluded from the new Act.

   66. The observations of the learned Single Judge in M/s. S.S. Sarna Inc.'s
case (supra) succinctly set out the concept behind excluding certain designs
from protection under the Copyright Act which was to avoid any hindrance being
caused to the manufacturer of sale and industrial articles. Thus, the intention
of the legislature has been expressed as one to protect any artistic work which
has to be commercially exploited by the owner of the copyright by not providing
the protection under the Copyright Act, but under the earlier the Designs Act,
1911.

   A similar view was also expressed by another learned Single Judge of this
Court in Samsonite Corporation's case (supra). To this extent, I see no
difference between the intent under the old Act and the new Act. A perusal of
the Statement of Objects and Reasons for introduction of the new Act, the
handouts issued by the Design Office and the registrations made of textile
fabrics both under the old Act and the new Act leave little manner of doubt that
the protection for such configurations, designs or works (by whichever name it
may be called) is provided under the Designs Act. It is, thus, apparently clear
that in the context of the Indian Law, it is the Design Act of 1911 or 2000,
which would give protection to the plaintiff and not the Copyright Act. The
application of mind and skill is not being denied nor the fact that the
defendants have copied the same, but that would still not amount to the works in
question being labeled as 'artistic work' within the definition of Section 2(c)
of the Copyright Act and, thus, the protection is not available under the
Copyright Act. Issue No. 1 is answered accordingly.

   ISSUES NOS. 2 and 3 :

   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).

   68. An important aspect is that the designs and works have been registered in
the years 1998-1999 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.

   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 Elzie Chrisler 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,
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.

   70. It may be noticed that learned Single Judge of this Court in Polymer
Papers Ltd. v. Gurmit Singh and Ors. 2002 (25) PTC 327 (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.

   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.

   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 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.

   ISSUE NO. 4 :

   73. Issue No. 4 relates to application of the Designs Act of 1911. It has
already been noticed that most of the designs of the plaintiff had originated
when the Designs Act of 1911 was in operation. The designs were created with the
industrial intent to apply them to fabric or cloth and more than 50
reproductions have admittedly been made without registering the designs under
the earlier Act. Thus, the earlier Act did apply to the designs of the plaintiff
and the issue is answered accordingly.

   ISSUES NOS. 5 and 6 :

   74. The whole case of the plaintiff was actually based on infringement of the
copyright of the plaintiff and the attempt of the defendants to pass off their
goods as that of the plaintiff. In order for the plaintiff to succeed, the
plaintiff ought to have proved that it was an 'artistic work' within the meaning
of the Copyright Act. That issue has been answered against the plaintiff. The
designs of the plaintiff were liable to be registered under the Designs Act
which the plaintiff failed to do. Thus, the protection is not available to the
plaintiff under those Acts.

   75. No evidence has been led to show as to what is the nature of sales in
India and whether the defendants are passing off their goods as that of the
plaintiff. There is no doubt about the identical nature of the designs, but the
plaintiff has failed to establish any case of passing off and damages arising
there from. The goods are being sold under distinct and different trade names.
The issues are accordingly answered against the plaintiff.

   ISSUE NO. 7 :

   76. This issue arises from the allegation of the defendants of the plaintiff
suppressing material. In fact, it is really not a case of suppression of fact
and what the defendants have sought to contend is that the facts relating to the
prior litigations should have been put forth in greater detail and not in an
innocuous manner as sought to be put by the plaintiff. I find no basis to come
to the conclusion that the plaintiff is guilty of suppression of material facts.

   ISSUE NO. 8 : RELIEF.

   77. In view of the findings arrived at on the aforesaid issues, the plaintiff
has failed to make out a case of having completed the requisite formalities in
law so as to avail the benefit of the exclusive use of the patterns and designs
in question.

   78. The suit is accordingly dismissed, but in the given facts and
circumstances, the parties are left to bear their own costs.