The Supreme Court on Tuesday laid down two-pronged test to distinguish between artistic works protected by copyright and industrial designs governed by the Designs Act, 2000 [Cryogas Equipment Private Limited v. Inox India Limited and Others]..A bench of Justices Surya Kant and N Kotiswar Singh held:“(i) Whether the work in question is purely an ‘artistic work’ entitled to protection under the Copyright Act or whether it is a ‘design’ derived from such original artistic work and subjected to an industrial process based upon the language in Section 15(2) of the Copyright Act;(ii) If such a work does not qualify for copyright protection, then the test of ‘functional utility’ will have to be applied so as to determine its dominant purpose.”.The Court was ruling on appeals arising out of a copyright infringement suit filed by Inox India against Cryogas Equipment and LNG Express India over alleged unauthorised use of proprietary engineering drawings and literary descriptions for manufacturing cryogenic semi-trailers.At the core of the dispute was Section 15(2) of the Copyright Act, 1957, which bars copyright protection for any design capable of registration under the Designs Act if it has been reproduced more than fifty times by an industrial process without registration.While the commercial court had rejected Inox’s suit on this ground, the Gujarat High Court later restored it, observing that the drawings in question might not qualify as "designs" under the statute. Cryogas and LNG Express then appealed before the Supreme Court..Recognising the ambiguity in the existing legal framework, the Supreme Court noted that there was a “penumbra” in the law which created “an intrinsic disagreement” in how artistic works and industrial designs were to be treated.“While the expression ‘artistic work’ has a broad spectrum, ‘design’ is restricted to specific features such as shape, configuration, pattern, ornamentation, or composition of lines or colours, applied to an article through an industrial process,” the Court held..The Court clarified that even if a work has been used for commercial purposes, that does not immediately strip it of copyright protection. “The intent of producing an original artistic work is not determinative of its protection... The legislative intent is to harmonise the two Statutes so that while an ‘artistic work’ qualifies for copyright protection, its commercial or industrial application — i.e., the ‘design’ derived from the original work — is subject to the limitations set out in Section 15(2)."The Court observed that courts across jurisdictions, including India, consistently apply the “functional utility” test to distinguish a design from an artistic work.“If the primary characteristic of the work is its functional utility rather than aesthetic appeal, it would not qualify to seek protection under the Designs Act,” the bench observed, citing precedents..The judgment drew on comparative jurisprudence from the United States — particularly the US Supreme Court’s ruling in Star Athletica LLC v. Varsity Brands Inc — and also referred to international treaties like TRIPS and the Berne Convention to highlight the lack of a harmonised global approach."In summation, while international treaties such as the Paris Convention, the Berne Convention, and TRIPS have played a pivotal role in shaping IP protections, they do not pointedly address a unified framework for resolving the overlap between ‘design’ and ‘copyright’ protection. Instead, they allow individual jurisdictions to formulate their own approaches. TRIPS, in particular, acknowledges the role of ‘functional utility’ in distinguishing protectable designs, thereby reinforcing the necessity of a nuanced approach at the domestic level. Consequently, the harmonisation of design and copyright protection remains largely a matter of national legislative policy.".Summing up its analysis, the Court stated that the overlap between copyright and design protection must be resolved with care, emphasising the need to balance rights of creators with public interest.“To put it more simply, there may be some designs that could be entitled to copyright protection, and conversely, there can be certain artistic works which lose their copyright protection when industrially applied,” the Court noted.It further cautioned,“The copyright in any design, which is capable of being registered under the Designs Act, 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.”.The Supreme Court ultimately upheld the Gujarat High Court’s decision to restore the suit, finding that the commercial court had overstepped by dismissing the case at the preliminary stage under Order VII Rule 11 of the Code of Civil Procedure (CPC).The apex court thus directed the commercial court to decide Inox’s interim injunction plea within two months. Furthermore, the commercial court must complete full trial within one year, after considering the legal tests laid down by the Supreme Court..Cryogas was represented by Senior Advocate Shyam Divan and Advocates Rahul Chitnis, Hersh Desai, Shwetal Shepal, Aditya Khanna and Chander Shekhar Ashri. .Inox India was represented by Senior Advocates Chander M Lall and J Sai Deepak with Advocates Smriti Yadav, Nirupam Lodha, Dhiren Karania, Kshitij Parashar, Gautam Wadhwa, Ananya Mehan and Abhishek from Khaitan & Co..[Read Judgment]
The Supreme Court on Tuesday laid down two-pronged test to distinguish between artistic works protected by copyright and industrial designs governed by the Designs Act, 2000 [Cryogas Equipment Private Limited v. Inox India Limited and Others]..A bench of Justices Surya Kant and N Kotiswar Singh held:“(i) Whether the work in question is purely an ‘artistic work’ entitled to protection under the Copyright Act or whether it is a ‘design’ derived from such original artistic work and subjected to an industrial process based upon the language in Section 15(2) of the Copyright Act;(ii) If such a work does not qualify for copyright protection, then the test of ‘functional utility’ will have to be applied so as to determine its dominant purpose.”.The Court was ruling on appeals arising out of a copyright infringement suit filed by Inox India against Cryogas Equipment and LNG Express India over alleged unauthorised use of proprietary engineering drawings and literary descriptions for manufacturing cryogenic semi-trailers.At the core of the dispute was Section 15(2) of the Copyright Act, 1957, which bars copyright protection for any design capable of registration under the Designs Act if it has been reproduced more than fifty times by an industrial process without registration.While the commercial court had rejected Inox’s suit on this ground, the Gujarat High Court later restored it, observing that the drawings in question might not qualify as "designs" under the statute. Cryogas and LNG Express then appealed before the Supreme Court..Recognising the ambiguity in the existing legal framework, the Supreme Court noted that there was a “penumbra” in the law which created “an intrinsic disagreement” in how artistic works and industrial designs were to be treated.“While the expression ‘artistic work’ has a broad spectrum, ‘design’ is restricted to specific features such as shape, configuration, pattern, ornamentation, or composition of lines or colours, applied to an article through an industrial process,” the Court held..The Court clarified that even if a work has been used for commercial purposes, that does not immediately strip it of copyright protection. “The intent of producing an original artistic work is not determinative of its protection... The legislative intent is to harmonise the two Statutes so that while an ‘artistic work’ qualifies for copyright protection, its commercial or industrial application — i.e., the ‘design’ derived from the original work — is subject to the limitations set out in Section 15(2)."The Court observed that courts across jurisdictions, including India, consistently apply the “functional utility” test to distinguish a design from an artistic work.“If the primary characteristic of the work is its functional utility rather than aesthetic appeal, it would not qualify to seek protection under the Designs Act,” the bench observed, citing precedents..The judgment drew on comparative jurisprudence from the United States — particularly the US Supreme Court’s ruling in Star Athletica LLC v. Varsity Brands Inc — and also referred to international treaties like TRIPS and the Berne Convention to highlight the lack of a harmonised global approach."In summation, while international treaties such as the Paris Convention, the Berne Convention, and TRIPS have played a pivotal role in shaping IP protections, they do not pointedly address a unified framework for resolving the overlap between ‘design’ and ‘copyright’ protection. Instead, they allow individual jurisdictions to formulate their own approaches. TRIPS, in particular, acknowledges the role of ‘functional utility’ in distinguishing protectable designs, thereby reinforcing the necessity of a nuanced approach at the domestic level. Consequently, the harmonisation of design and copyright protection remains largely a matter of national legislative policy.".Summing up its analysis, the Court stated that the overlap between copyright and design protection must be resolved with care, emphasising the need to balance rights of creators with public interest.“To put it more simply, there may be some designs that could be entitled to copyright protection, and conversely, there can be certain artistic works which lose their copyright protection when industrially applied,” the Court noted.It further cautioned,“The copyright in any design, which is capable of being registered under the Designs Act, 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.”.The Supreme Court ultimately upheld the Gujarat High Court’s decision to restore the suit, finding that the commercial court had overstepped by dismissing the case at the preliminary stage under Order VII Rule 11 of the Code of Civil Procedure (CPC).The apex court thus directed the commercial court to decide Inox’s interim injunction plea within two months. Furthermore, the commercial court must complete full trial within one year, after considering the legal tests laid down by the Supreme Court..Cryogas was represented by Senior Advocate Shyam Divan and Advocates Rahul Chitnis, Hersh Desai, Shwetal Shepal, Aditya Khanna and Chander Shekhar Ashri. .Inox India was represented by Senior Advocates Chander M Lall and J Sai Deepak with Advocates Smriti Yadav, Nirupam Lodha, Dhiren Karania, Kshitij Parashar, Gautam Wadhwa, Ananya Mehan and Abhishek from Khaitan & Co..[Read Judgment]
