The plaintiff is a famous boutique apparel designer brand in India. The defendant is also a famous apparel designer and manufacturer in India. Both companies design attractive contemporary ethnic wear creative fusion fashion. The plaintiff filed a suit against the defendant seeking an injunction against the defendant from reproducing, printing, publishing, selling or offering, etc. prints or garments which are a reproduction of the plaintiff’s prints and garments. The plaintiff claimed to be the first owner of the copyright in the artistic works related to these garments and also claimed trade secret violation by its ex-employees. However, the plaintiff’s designs were not registered under the Designs Act, 2000. The defendant, on the other hand, argued that the plaintiff’s case fell squarely under Section 15(2) of the Copyright Act, 1957 (the Act) i.e. the copyright in the plaintiff’s design ceased to exist as it had been reproduced more than 50 times by an industrial process.
The court concluded that there was no copyright infringement, not by comparing the similarity between the plaintiff’s prints/designs and the defendant’s printed reproduction, but by holding that the defendant was creating apparel by an industrial process and was not merely lifting and affixing a print taken from the copyrighted work of the plaintiff. Ritu Kumar by reproducing the said designs, more than 50 times, was not only disentitled to design protection but also disentitled to enforce its copyright on the original drawing of the design.
The inherent object of the Designs Act, 2000 is to ensure some amount of exclusivity while still ensuring that designs are not over-protected, as evidenced by the statement of objects and reasons of this Act. Further, Section 15(2) of the Act, states that “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.
But the definition of a design excludes any artistic works as defined under the Act. Not only is an artistic work not protectable as a design but upon industrial reproduction of the artistic work more than 50 times, the design looses even its copyright protection as per Section 15(2) of the Copyright Act. A plain reading of these sections leads a person to believe that a design that is applied or made into apparel more than 50 times looses all protection. When this provision was introduced, maybe producing 50 articles was a benchmark, but in today’s day and age producing 50 articles is achievable even in a single day. Therefore, from a purported entitlement of 15 years of protection, the owner of the artistic work in such designs may not get even a single day’s protection. This leads us to conclude that such designs become free at 50 productions mark.
It must be noted that according to the facts of the present case it is not that the copyrighted work in itself that is reprinted on the dresses which are created by the defendant. If the facts were as mentioned above, maybe in such a case without an issue of violation of the copyright of the work of the plaintiff under the Act may have arisen. However, in the instant case, the defendant is creating dresses or creating articles by an industrial means or by application of the design or drawing or sketch and the defendant is not as it is affixing a print taken from the copyrighted work of the plaintiff as a print on a dress.
Does this mean that if a particular design/print is fixed not using an industrial process, only such an act would amount to copyright infringement? But since the question is related to copyright law and not the Designs Act, why is this investigation necessary? And does this mean that if the copied prints are the same or substantial imitations and meet the threshold for copyright infringement, it will still not be considered as copyright infringement since such copying was done by an industrial process/application? If this is the rationale and now the precedent as laid down in the present case, since most designs in the fashion industry are industrially made and applied, it is difficult to imagine whether they can be protected under copyright law.
The only legal solution to ensure the protection of the designs of fashion designers is by registration of the design. It might be a fashion faux-pas to copy someone’s style, but it may come as a surprise to learn that making a direct or substantially similar copy of clothing, in many circumstances is legal, because clothing designs are rarely protected by copyright law. Although if one looks at it from a common small scale designer’s point of view, copyrighting a design is a costly and time-consuming affair. By the time the copyright is granted, the garment or article would lose the essence of why it was made, to begin with. Hence, it is important that we have industry-specific laws for the fashion industry in the same way as many other industries like IT and Pharmaceuticals have target laws.
The Design Act and the Copyright Act are, however, not primarily for the use of the fashion industry. As rapidly as the industry is growing it is important to understand that there is a need to have laws that specifically deal with the issues of the fashion industry to regulate them. Of course, there is no exception that the laws will be derived from all the acts enforced in our country. Keeping in mind the fluidity of the fashion industry and the ever-changing trends, we need laws that can keep up and appropriately regulate the dynamic nature of the industry.
As Ralph Lauren puts it – “Designers don’t only design clothes, they design dreams”. And the only way they can freely dream is if their work is not just appreciated but also protected considering all factors and circumstances.
Ms. Nitisha Gantra
Legal Intern @ Prerna Foundation