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Scanning the IP regime in fashion

Issue: February 2009

Keywords (click to search): IP India fashion outbound investment trademark infringement Designs Act M/s. Suneet Varma Design Pvt

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Manisha Singh Nair

Lex Orbis

manisha@lexorbis.com

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 20 times.

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 law.


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