Manisha Singh Nair
The fashion industry in India is largely regulated by the
law of copyrights. Most designers acquiring a copyright on
their designs seek protection under the regime to prevent and
remedy infringement. In the past, litigation relating to
fashion designs has largely conformed to the regimen of
copyright, in the absence of a sui generis legislation
dedicated to designs.
Works of fashion are protected as "artistic works" as under
Section 2 (1)(c) of the Copyright Act 1957. Section
13(a) governs the protection of these artistic works,
consequently granting certain exclusive rights under Section 14
to their creator or designer. However, the use of these
copyrighted works in movies, TV serials, and so on, may bring
in contentious issues. The Fair Use provision under the 1957
Act, more specifically Section 52 (1)(u)(ii), provides an
exception to the case of infringement against the inclusion of
an artistic work in a film only if the same is (a) made by way
of background; or (b) otherwise incidental to the principal
matters represented in the film.
The case of M/s. Suneet Varma Design Pvt. Ltd. &
Anr. vs Mr. Jas Kirat Singh Narula & Anr [IA No.
9333/2005 in CS (OS) No. 1324/2005] dealt with this appending
issue. The designs of the co-plaintiff, designer Suneet Varma,
had been put to use in a film. While the plaintiff alleged
infringement, the defending parties at the interim stage
justified their action, stating that they had purchased the
outfit from a retail store. The producer of the film resorted
to the plea of S. 52(1)(u)(ii).
The Delhi High Court stated that whether the outfit in
contention was used by way of background, was merely
incidental, or played a prominent role to depict the character
of the film was a question of fact and had to be addressed at
the trial stage, largely depending on the evidence led.
Another aspect dealing with the line distinguishing the
Designs Act, 2000 and the Copyright Act, 1957, came up
for deliberation in the case of Tahiliani Design Pvt. Ltd.
vs Rajesh Masrani [2008 PTC (38) 251 (Del.)]. The case,
which debated the applicability of the regime of copyright and
designs law to decide an interim injunction in an infringement
suit, dealt with the copying of designs that had been used on
Tahiliani fabric and which had been blatantly copied,
feature-by-feature. Masrani contended that the work to which
protection under the Copyright Act, 1957 was being claimed as
"artistic work" were actually designs on textiles and came
under the purview of the Designs Act, 2000. Section 15 of the
Copyright Act, 1957, whereby a copyright would not exist in any
design registrable under the Designs Act, 1911 or the
Designs Act, 2000 was advocated in support of their contention.
Tahiliani contended that the protection of copyright was
available in view of the fact that the author/owner of the
creative work was Tahiliani or his employees. Drawings made in
the course of developing garments were artistic works within
the meaning of S. 2(c)(i). It was also contended that "artistic
work" is distinct from "design" and remains "artistic work"
per se, distinct from the garment on which it is
applied; it therefore falls under the exclusion as under S.
2(d) of the Designs Act, 2000.
With respect to Section 15(2) of the Copyright Act, it was
contended that the provisions were wholly inapplicable to the
case, since for copyright to cease to exist in the design, the
same must be produced at least 50 times by an industrial
process by the owner or licensee of the copyright. In the case,
it was stated that the design had been reproduced not more than
Examining the sections vouched, including that on
infringement of copyright as well as that dealing with piracy
of the design, along with case law rendered by both parties,
the Court concluded that the contentions raised by Masrani were
devoid of merit. The Court, quoting Roget's Thesaurus, stated
that uniqueness not only in conceptualisation but also in
creation and presentation are "sine qua non of haute
couture". The Court further opined that, for this reason,
the Legislature deemed it expedient to exclude an "artistic
work" from the definition of "design" as under the scheme of
the Designs Act, 2000 and to highlight as under Section 15(2).
The Court found Tahiliani to have made out a strong prima
facie case for the confirmation of the ex parte
injunction in its favour, finding the balance of convenience to
be tilting in his favour inasmuch as a chance of unabated
copying of the design taking place.
As the fashion industry attains its peak, the laws relating
to it are gaining clarity. In spite of a sui generis
system being absent, the disputes seem to be resolved through
verdicts rendered by the Courts. This lends clarity to the
applicability of the various applicable provisions of IP