COPYRIGHT PIRACY & INFRINGEMENT
Prathiba M. Singh LL.M.(Cantab)
F-12, Jangpura Extension
New Delhi 110 014
Ph: 91-11-24314741/42
Fax:91-11- 24312895
e-mail: singhandsingh@vsnl.com
Statutes Governing Various IPR’s
•
•
•
•
Trade Marks Act, 1999
Copyright Act, 1957
Designs Act, 2000
The Patents Act, 1970
Various Entities Involved
• Legislature – Parliament –
Statutory Enactments
• Administrative Machinery –
involved in Registration
Procedures
• Departments in the Government
viz., Police, Customs, etc.,
• Judiciary
COPYRIGHT - A GLOBAL RIGHT
• Right exists on creation
• No
registration
is
needed
• Protectable
in
all
Convention countries.
• Almost 150 countries are
covered
• Reciprocal protection in
all countries
COPYRIGHT
– Categories of
copyrighted works
•
•
•
•
•
•
•
•
literary
artistic
musical
Dramatic
Cinematograph films
Sound Recordings
Broadcaster’s rights
Performer’s Rights
Copyright
“Computer” includes any electronic or similar
device
having
information
processing
capabilities (added by amendment in 1995)
“Duplicating equipment” means any mechanical
contrivance or device used or intended to be
used for making copies of any work.
“Reprography” means the making of copies of a
work, by photocopying or similar means
Copyright
“Publication means making a work available to
the public by means of copies or by
communicating the work to the public.”
But by a review of cases one can see that
protection against what is contemplated under
the new WIPO treaty has already been
granted by judge-made law.
Examples of some works
• Choreography:
– art of arranging designing of ballet or
stage dance in symbolic language.
– It is a form of dramatic work.
– In order to qualify for the copyright
protection it must be reduced into
writing.
Examples of some works
• Ballet:
– The elements of ballet are the music,
the story, the choreography, the
scenery, and the costumes.
– A composite work.
– Such work could be the subject
matter of copyright.
Examples of some works
• Painting :
– An artistic work whether or not it posses any
artistic quality .
– To be entitled to copyright protection a painting
must be original i.e. it should originate from the
painter and not a mere copy of another painting.
– A painting must be on a surface of some kind.
– Facial make-up as such, however idiosyncratic it
must be an idea,
– cannot possibly be a painting for the purpose of
copyright act.
Examples of some works
• Sculpture:
– Included in the definition of artistic work
– the work of sculpture includes casts and models.
– means the art, act, process of carving cutting,
hewing, molding or constructing materials into
statutes , ornaments, figures
– The act, art, process of producing figures or
groups in plastic or hard materials.
– The art of sculpture is the branch of the visual
arts that is especially concerned with the
creation of expressive form in three dimensions.
– A sculpture should in some way express in three
dimensional form an idea of the sculptor.
NEW ENCYCLOPEDIA QUOTED IN WHAM-O CASE. A
Frisbee was a sculpture.
Copyright subsists original sculpture. The creation of a
sculpture no doubt involves good amount of skill and labor
Creativity
• All Industry be it fashion design,
manufacturing
of
industrial
goods,
manufacturing of aesthetic items of
export, production of jewellery etc. has
intellectual creativity in them
• Creativity starts from the very moment
the creator draws his first sketch, makes
improvements on it and finally arrives at
the product.
Creativity
Creation goes through various steps
which can be broadly divided
– Conception
– Design & development
– Commercial manufacture.
Creativity
At each of these stages, there are works which are
created that can be protected in law
Examples
- A drawing or a sketch which can be created as
the first conception of a product is a
copyrightable subject matter
- The shape and aesthetic look given to a
product is protectable under the Designs Act
- The final product and the brand which is given
to the product are protectable under the
Trade Mark Act
- If the shape is unique and can be identified
exclusively with a specific product then the
shape is also protectable
At every stage there is creation of what is loosely
referred to as “Intellectual Property
Safeguards
• Organisations which are engaged in any of
the above stages of creation of a product
ought to protect their creation.
• Sufficient safeguards ought to be taken
to ensure that such works are not misused
or plagiarised
Safeguards
• Whenever designs or any other subject
matter of Intellectual Property is created
within an organisation, the contract should
clearly specify that anything created by
the employees during the course of their
employment would automatically belong to
the organisation which will have the rights
to exploit the same
Safeguards
• Documents relating to the creation should
be preserved chronologically in original.
The same should be maintained under
specific portfolio and should be kept under
the custody of any of the Top Management
Officials
Safeguards
• Once the final product is created and before it is
sent for industrial manufacture or in the case of
a designer product before it is put in the market
for sale, steps should be taken to protect it by
filing Copyright applications or Design applications
• Care must be taken to ensure that no prior
publication is made before such applications are
filed. This would ensure that in the case of a
design, prior publication is not made and in case of
copyright. , no one else claims prior rights
Safeguards
• The applications which are filed should be
followed up diligently and registration
certificates obtained should be maintained in
the records of the organisation.
• The Copyright office is located in Delhi. The
Designs office comes under the Controller
General of Patents and Designs & Trade
Marks, which is situated at Kolkata. However,
applications can be filed through posts
If any misuse of the drawing, design, mark or work is
seen, immediate steps should be taken to protect
them
Defences Available
• That the design has been previously registered in
India; or
• That it has been published in India or in any other
country prior to the date of registration; or
• That the design is not a new or original design; or
• That the design is not registrable under this Act;
or
• It is not a design as defined under clause (d) of
section 2.
TERM OF COPYRIGHT
• The term of copyright
– for literary, dramatic musical or artistic work is
lifetime of author + 60 years
– for anonymous or pseudonymous work is 60
years from the date of publishing
– for
a
photograph,
sound
recording,
cinematographic film and government work is 60
years from date of publishing of the work
INFRINGEMENT OF COPYRIGHT
•
–
What constitutes infringement?
Doing or authorizing to do any of the
following acts without the consent or license
of owner of copyright:
•
•
•
•
•
•
Reproduce the work including its storage by any
electronic means
Issue copies to the public
Perform/Communicate the work to public
Make translation of the work
Make adaptation of the work
To make any cinematograph film or sound recording
in respect of the work.
INFRINGEMENT OF COPYRIGHT
• Permit for profit any place to be used for
communication of the work when infringement
• To permit for profit any place to be used for the
communication constitutes infringement of the
copyright in the work unless he is not aware or
has reasonable grounds for believing that such
communication to the public will be an
infringement of copyright
• make infringing copies of work for sale, hire or
display or offer for sale or hire
• import infringing copies in India
Types of copyright in one work
BOOKS:
1. Rights of the author
2. Rights of the publisher
in India and abroad
3. Rights of a person
publishing the book on
CD Rom/multimedia
format
4. Rights on the Internet
Types of copyright in one work
MUSIC:
1. Right of lyricist
2. Music director
3. Singer
4. Orchestra
5. Music company
6. Version recordings
Types of copyright in one work
• Machinery
This can be sub-matter
of patent & copyright.
But
drawings
of
machinery
falls
in
copyright.
Escorts
Construction
case.
Types of copyright in one work
• PEPSI CAN
1. Copyright in the
packaging, colours etc.
2. Trade mark in Pepsi
3. Copyright in circular
device
4. Copyright in manner of
writing Pepsi
Adaptations of various works
• MUSIC -SONGS
• Original album
• New albums
• Remixes
• Version
Recordings
• Pop versions
• DJ versions
Adaptations of various works
• STORY
• PUBLISHED IN A
BOOK
• STORY ENACTED
IN A DRAMA
• TRANSLATION
• TELE-SERIAL
• CINEMATOGRAPH
FILM
Adaptations of various works
•
•
•
•
STORY
OPERA/BALLET
MUSICAL VERSION
COMPILATION
Each of the above
works, once created
have a separate, new
copyright, protectable
as original works.
Adaptations of various works
• POEMS
• SONGS
• SOUND
RECORDINGS
• PERFORMANCES
• POETRY BOOKS
• COMPILATIONS
OF POETRY,
including expert
comments
Adaptations of various works
• PAINTINGS
• Licensing as covers for
books
• Licensing on stamps
• Create new versions by
changing the sizes of
the painting
• Calendars
• Diaries etc.,
Exceptions-fair use
• Section 52 of the Copyright Act enlists
acts which do not constitute infringement,
viz.
– Fair dealing for the purpose of private use,
including research and criticism or review of
the work.
– Fair dealing for the purpose of reporting
current events in a newspaper, etc.
– reproduction for the purpose of judicial
proceeding or report of judicial proceeding.
Exceptions-fair use
– Making of temporary or back-up copies
to provide against destruction or
damage
– Observation, study or testing of
functioning of the computer programme
– making of copies of software from a
legal copy for non-commercial personal
use
Fair Dealing
•
Fair dealing is permitted for the
purposes of
–
–
–
–
private study or research ,
criticism or
review or
the reporting of current events.
Fair Dealing
•
Fair dealing with the literary, dramatic,
musical or artistic work does not infringe
any copyright in the work if used
–
–
for the purposes of research or private
study,
in the case of a published edition, in the
typographical arrangement.
The aim of this provision is to give students and researchers
greater access to copyright works.
Fair Dealing or Permitted Acts
• SEC 52(1)(o) : Making a maximum of 3 copies for
the use of a public library.
• Sec 52(1)(c): Reproduction for judicial proceedings
or for the purpose of a report of a judicial
proceeding. ‘Judicial proceedings’ are defined as
including proceedings before any court, tribunal, or
person having authority to decide any matter
affecting a person’s legal rights or liabilities.
• SEC 52 (1)(m) : Reproduction in newspaper and
magazine of the article of the current economic,
political, social or religious topic in certain
situation.
Fair Dealing or Permitted Acts
• SEC 52(1)(p): Reproduction of unpublished work
kept in a museum or library for the purpose of
research or study.
• Sec 52(1)(d) : Reproduction in any work prepared
for the exclusive use of members of any
legislature or publication of a translation of acts of
legislature or rules
Fair Dealing or Permitted Acts
• Sec 52(1)(h) : Reproduction by a teacher or a
pupil in the course of instruction, or as part of a
question paper or in answers to such questions.
e.g. It seems that the teacher may copy onto a
blackboard a substantial part of a literary work,
and pupil may copy it down. The teacher may
however not photocopy the same material for the
use by students in absence of a licensing
agreement.
Fair Dealing or Permitted Acts
• SEC 52(1)(f): Reading and recitation in public of
extracts (literary or dramatic).
• SEC 52 (1)(g) : Publication in collection for the use of
educational institution in certain circumstances.
• Sec 52(1)(I) : Performance in course of activities of
educational institutions in certain circumstances.
WORK OF ARCHITECTURE:
• SEC 52(1)(s) :The making or publishing of a painting
,drawing, engraving or photograph of a work of
architecture does not constitute infringement.
Fair Dealing or Permitted Acts
WORK OF ARTISTIC CRAFTSMANSHIP:
• SEC 52(1)(t): The making or publishing of a
painting, drawing, engraving, or photograph of a
sculpture, or other artistic work falling under the
category of a work of artistic craftsmanship if
the work is permanently situate in a public place
or any premises to which the public has access will
not constitute infringement.
Fair Dealing or Permitted Acts
AUTHOR’S RIGHT TO USE MOULD, CAST etc.
OF WORK:
• SEC 52 (1)(v): The use by the author of an
artistic work, where the author of such work is not
the owner of the copyright therein, of any mould,
cast, sketch, plan, model or study made by him for
the purpose of the work
– Provided that he does not thereby repeat or imitate the
main design of the work
Fair Dealing or Permitted Acts
• SEC 52(2) The exceptions to infringement listed
under s. 52(1) in relation to literary, or dramatic,
musical artistic work will apply also in relation to
any translation or adaptation of such work
Whether registration is essential?
Particulars needed for registration:
1. Name of author
2. Date of publication
3. Whether assignments are obtained
4. If it is an artistic work, then no-objection
from Trade Marks Registry
Whether registration is essential?
Advantages of registration:
1. Documentation comes in place in terms of
assignments/no-objections from authors
2. Evidence of date when the work was created
3. Prima facie evidence of particulars
4. Easier to take action especially criminal action
where police are convinced with copyright
certificate. (re:software, music)
Remedies
• Civil remedy
A suit for infringement of
copyright can lie in the
District Court or in a High
Court
of
Original
Jurisdiction.
Remedies contd.,
• Civil remedy
Reliefs to be claimed:
1.
Injunction
coupled
with
Anton Piller orders, John Doe
orders & Mareva injunction
2. Rendition
of
accounts,
damages
3. Delivery Up
Remedies contd
• Criminal:
Copyright
infringement
is
a
cognisable offence. A criminal
complaint can be filed either before
the police or a Magistrate and
search & seizure orders can be
obtained.
Pros & Cons of Civil remedies
PROS
• Proper judicial
determination of rights
• Likelihood of earning
damages
• Less subject to
challenge
• Commissioner’s seizure
orders are more
respected
CONS
• Delays - Trial, Appeal,
Supreme Court
• Damages not usually
awarded
• No severe punishment
for violation of rights
Pros & Cons-Criminal remedies
PROS
• Quick remedy
• Greater possibility of
curbing
violation
quickly because of fear
of being arrested in a
criminal case
CONS
• Chances of seizure of
goods may be less as
there can be a leakage
• Difficulty
in
coordinating
with
police authorities
CRIMINAL REMEDIES
Section 63 of the Copyright Act,1957 defines
offence of infringement of copyright.
Infringement of copyright is a cognizable offence
punishable with imprisonment upto 3 years and
fine upto 2 lakh rupees
OVERLAP OF DESIGN,
COPYRIGHT &
TRADE MARK
Copyright & Design
Design is for aesthetic appearance. Anything
functional is not registrable as a design
Copyright in a design comes to an end if the
work has industrial application and is
reproduced more than 50 times
Is there diff. between copyright in a design
and copyright in a drawing. Yes.
Confusion is worse with Trade mark
definition being amended
Shape is also a trade mark – But articles
like dresses, sculpture etc., cannot come in
trade marks.
However commercial products have more
overlaps in protection.
Designs
Design
• As per Copinger and Skone James on Copyright, a design
is, in broad terms, the plan or scheme for the appearance
of an article (or a part of an article).
• It primarily concerns with what an article looks like or is
intended to look like.
• It is not concerned with how an article performs its
function. The design of an article may be recorded in any
form including the written description, sketch, drawing,
photograph or it could actually be embodied in the article
itself. “Design” has also been defined as the design of any
aspect of the shape or configuration (whether internal
or external) of the whole or part of an article.
Copinger & Skone James on Copyright, 15th Edn., Vol.
1, pg. 730
Infringement
• Infringement in the context of Indian Textiles, Apparels and
Life Style Industry:
Indian Textiles:
• If artistic patterns are drawn up on a piece of cloth to be
used for any purpose, including but not limited to for instance,
making of garments, bed sheets, sofa covers, table cloths,
etc., then the artistic patterns printed on the piece of cloth
are protected as copyrights.
• On the other hand, if a designer of clothes creates a new
pattern of garment to be used as a fashionable attire, then
the sketch/ drawing that is drawn of the pattern of the
garment is protected as a copyright.
Infringement
• However, once the idea of the creative pattern is
implemented on the piece of cloth, then the same
may be protected as a design right.
• If, the intention of the designer is to ensure that
only one piece of the garment is manufactured,
then the same could also be protected as the
artistic work imprinted on the piece of cloth
having copyrights.
Infringement
• Alternatively, if the designer’s intention is to
produce several thousands of garments in
different scheme of colours, etc., then the
intention of the designer is to use the said design
in the industry. Accordingly, the latter form of use
of the same material may be considered to be a
design.
• There is an ongoing debate on the issue and a lot
depends on the manner, in which the author of the
work intends to use the work.
Indian Cases
Cases
Tahiliani Design Private Ltd. vs. Renu Tandon & Anr.
C.S. (OS) No. 2222 of 2008 – Before Hon’ble Delhi High Court
Cases
Tahiliani Design Private Ltd. vs. Renu Tandon & Anr.
C.S. (OS) No. 2222 of 2008 – Before Hon’ble Delhi High Court
• Allegation that the Defendants’ garments were copies
of the garments designed and crafted by the Plaintiff
• The said garments were supposed to be developed,
designed and crafted by the plaintiff as a part of
their collection for the year 2006
• The Hon’ble Delhi High Court vide order dated
21.10.2008 granted ex-parte ad-interim injunction
Cases
Tahiliani Design Private Ltd. vs. Renu Tandon & Anr.
C.S. (OS) No. 2222 of 2008 – Before Hon’ble Delhi High Court
• Defendant served notice.
• Application for vacation of stay moved claiming that
both designs are separate.
• The impugned prints are generic Jamawar Prints
• Matter is sub-judice – Referred to Mediation
Cases
Suneet Varma Design Pvt. Ltd. Vs Jas Kirat Singh Narula &
Anr. [2007 (34) PTC 81 (Del)]
• Allegation of infringement of
copyright as the defendant used
the dress in a movie which was
worn by an actress
• Importance of costumes worn by
actors and actresses in a film play
special role and serve purpose of
promotion of the movie
• Held that all kinds of clothes worn
by actors cannot be stated as Fair
Use permitted under sec 52 (1)
(u).
Cases
Microfibres Inc vs. Girdhar and Co. and Ors. : 2006(32)
PTC 157 (Del)
• Case relating to design of upholstery
• Plaintiff claimed to have copyright in the
artistic work applied to upholstery design
• Did not have a registered design however
they claimed a copyright in the drawings
Cases
Microfibres Inc vs. Girdhar and Co. and Ors. : 2006(32)
PTC 157 (Del)
• Question was whether without a registered design, the
plaintiff could protect the same and whether the
copyright was lost because of more than 50
reproduction of the said upholstery fabric design
• The Court although upholding that the motives etc. of
the plaintiff was artistic and also holding that the
defendants had copied it, on a legal and technical
argument that more than 50 reproduction had been
made, refused to grant injunction
Cases
1997(17) PTC 268: Baldev Singh vs. Shriram Footwear
• Plaintiff claimed an injunction on the ground that
his designs of shoe soles had distinctive shape
and configuration
• During the course of argument, it was revealed
that the plaintiff himself had copied designs
from Bata India Ltd.
• Thus Court had held that the plaintiff himself
being a pirater, no injunction can be granted in
favour of the plaintiff
Cases
Hindustan Sanitaryware & Industries Ltd. vs. Dip Crafts
Industries: 2003(26) PTC163 (Del)
• Case under the Designs Act, 2000
• Plaintiff had claimed that defendants copied the
design “Stylush”, “Corel” and “Ultra” in respect of
bath tubs
• Defendant had not established that he had been
selling bath tubs prior to the registration obtained by
plaintiff in respect of similar designs
• Plaintiff had a registered design
• Sufficient resemblance between the two designs and
the plaintiff’s design was protected
Cases
Metro Plastic Industries (Regd.) vs. M/s. Galaxy Footwear
New Delhi: 2000(20) PTC 1
• Judgment of full bench of Delhi High Court
• Holds primarily that in a case filed for infringement of a
design, the defendant would be entitled to take a
defence that the registration of the design itself was
incorrect
• Various grounds can be taken for claim that the
registration was granted wrongly, namely, that the design
is not new or original or unique
• If any of the grounds can be proved, then the fact that
the design is registered by itself, does not come to the
aid of the plaintiff
• Registration can be a proof at the first stage but it has
to be established that this was not copied design and
that it is a new and original
Cases
Dabur India Ltd. Vs. Rajesh Kumar & Ors 2008 (37) PTC
227
• Suit filed alleging infringement of design in respect of a
bottle which is being used by plaintiff for packing hair oil
• Court found plaintiff’s bottle to be common bottle used
by several other companies
• Bottles were held to be in use much prior to the
registration of the design of the plaintiff
• No peculiar feature of the bottle registered as a design
and the plaintiff had not pin pointed any novelty in the
design of the bottle
• Held that for validly of the registered design there must
be some novelty and originality in the design sought to be
protected and it must have not been pre-published
Cases
Vikas Jain Vs. Aftab Ahmad And Ors, 2008 (37) PTC 288
(Del)
• Suit filed for the infringement as well as passing off of
design in Toy Scooter
• The defendant pleaded the prior publication of the
design
• Another defense taken by the defendant was that the
defendant too was having the registration of the design
• Court held that there were various dissimilarities in the
prior published design
• The design of the defendant was identical to the design
of the plaintiff
• Hence the defendant is not protected even on account of
the registration having been obtained by it which
admittedly is the subsequent registration
Cases
Reckitt Benckiser Australia Pty Ltd. And Anr Vs. R. B.
Impex And Ors 2008 (37) PTC 262 (Del)
• Suit for infringement of a design, where the defendant had
filed a cancellation petition with the Controller of Designs
• Proceedings pending before the controller of Design who
had heard the arguments in the cancellation petition before
him and the order had been reserved
• Defendant had also sought the transfer of the cancellation
proceedings from the Controller to the Hon’ble Delhi High
Court
• Hon’ble High Court declined to stay the proceedings pending
before the Controller and to order for the transfer of
those proceedings as there was no provision for the
transfer of the cancellation proceedings under the Act
Cases
Sat Pal Singh Vs. S.P. Engineering Works - 1982(2) PTC 193
• Single Judge of this Court held that once a design was
registered, prima facie, it was only the registered
proprietor, who could take benefit of the registered design
• The Court then negatived the contention that even if a false
plea about the validity of registration was taken up by a
Defendant, no interim injunction should be granted.
• The Court went on to hold that the contention that the
design had no novelty was a valid defence to the Suit and
could be raised to challenge the validity of the registration.
• It further held that this did not have any bearing at the
initial stage and that these were matters to be decided on
evidence.
• It must be mentioned that after so holding the Court, went
into the merits and held that in that case it had not been
shown that the design was previously published
Cases
Faber Castell Vs. Pikpen - 2003 PTC 538
• Faber Castell “Textliner”.
• A dark green body
• Unique cap of same colour as
colour of ink
• Gold lettering on green body
Regd design.
Prior Publication could be
through prior documents or
some other prior user.
Injunction granted
Cases
Samsonite Vs. Vijay Sales 1998 PTC 372
• Suitcases made by plaintiff
copied by defendant
• The entire range was
copied
• Claim was based on
drawings & copyright
• No registered design
• No protection granted as it
is manufactured
industrially more than 50
times.
Cases
Preeti Gupta Vs. Rajendra Prahladkar 2002 PTC 64
• Design of photo-frames
• Registered design
• Defendant no.2 was an
employee of plaintiff
• Injunction granted
protecting the copyright
in the design of photoframes
International Cases
RADELY GOWNS Ltd. v COSTAS SPYROU and BROKE v
SPINCERS DRESS DESIGN Ltd.(1975) FSR 455
• Plaintiff & defendant
manufacture ladies
clothing.
• Copyright claimed in 3
stages of Manufacturing
Procedure viz.,
- design sketches,
- cutting patterns
- prototype garments
RADELY GOWNS Ltd. v COSTAS SPYROU and BROKE v
SPINCERS DRESS DESIGN Ltd.(1975) FSR 455
• Def argued
– Prototype is not work
of artis.crtms.
– No one author is
involved
– Cutting patterns are
functional
– One of the sketches
was copied from earlier
dress
– Dress could not
reproduce a sketch
– Stiffness was to be
given otherwise it is not
a dress
– Delay
RADELY GOWNS Ltd. v COSTAS SPYROU and BROKE v
SPINCERS DRESS DESIGN Ltd.(1975) FSR 455
• Court Held:
– It is work of A.C
– Need not unite with one
author
– Dress can be a 3
dimensional reproduction
of a sketch
– Huge diff between the
earlier dress and new
one, hence plaintiff work
is original
BRIGID FOLEY Ltd. v ELLOT (1982) RPC 433
It has been observed that if there is a
direct copying from a garment which one
person has designed and produced by
himself, doing all the cutting , stitching, and
so on, there might be a case for saying that
there would be a breach of doing that.
BERNSTEIN v SYDNEY MURRAY(1981) RPC 303
•
•
The plaintiffs were owners of
copyright in certain sketches
for ladies’ garments in which
the garments were shown as
worn by ladies. They had
displayed
garments
made
from such sketches in fashion
shows and shop windows.
Defendants have copied the
dresses
produced
from
plaintiff’s sketches. It was
held that this constituted
infringement of copyright in
sketches.
BURKE and MARGOT BURKE Ltd. v SPINCERS
DRESS DESIGNS
(1936) CH D 400
•
The plaintiff’s alleged that
defendants had infringed the
copyright in the sketch
described as “ frock being
worn by a young lady ” It was
also alleged that there was
infringement
of
artistic
copyrights in dresses made up
by
the
plaintiff’s
in
accordance
with
those
sketches,
which
dress
themselves were said to be
works
of
artistic
craftsmanship It was held
that thee was no infringement
of a sketch by a frock.
In MERLET v MOTHERCARE Ltd
(1986) RPC 115
• The plaintiff made a prototype
baby cape for her child.
• The cape was subsequently
manufactured by the second
plaintiff.
• The defendants copied the
plaintiff’s garments and made
baby cape in accordance with
the copy.
• The plaintiff claiming the
handmade prototype garment
as a work of craftsmanship it
was not a work of artistic
craftsmanship
brought
an
action for infringement of
copyright.
In MERLET v MOTHERCARE Ltd
(1986) RPC 115
• It was held that though the
prototype was a work of
craftsmanship it was not a
work
of
artistic
craftsmanship.
• It
was
held
that
in
approaching the question the
garment
has
to
be
considered by itself and
neither as worn nor as
containing a baby.
• No aesthetic satisfaction
unless worn on the baby
• Action was dismissed. An
appeal against infringement
of certain drawings was
dismissed.
KOMESAROFF v MICKLE
(1988) RPC 204
• A product called (moving
sand
pictures)
comprising a mixture of
liquid, colored sands,
and a layer of air
bubbles encased within
two glass panels was
held not a work of
artistic craftsmanship.
• They are functional –
not regd design
Cases
• MERCANDISING
CORPORATION
v
HARPBOND(1983) FSR 32 P, 32 (Facial
make-up was not held a painting within
the meaning of sec 3 of the U.K.
copyright act.)
Ford Motor Co.1993 RPC 399
• Vehicle parts are not subject matter of design because’ they
have no value in commerce except as part of a vehicle
• Mirrors, seats, etc., were capable of registration as
substitution was possible without affecting shape of the
vehicle.
• The distinction that seems to have been drawn is that there
are several parts which are mostly hidden and never seen, such
parts cannot be registered as designs.
• However, parts and their circuits if in drawing form are
artistic works
George Hensher Ltd s. Restawile Upholstery
1975 RPC 31
• Upholstered chairs & settees.
• One prototype was evolved – chairs were copied
from it and sold
• Def. copied the chairs and hence the prototype
• Trial Court granted injunction. Appeal court
dismissed the injunction. HL refused protection
George Hensher Ltd s. Restawile Upholstery
1975 RPC 31
• Artistic craftsmanship need not necessarily mean
“work of art”.
• The product may be a commercial success but
need not be of Art craftsmanship
Merchandising Corpn Vs. Harpbond
1983 FSR 32
• Adam from the pop group Adam
& Ants
• New look for himself with RedIndian face markings
• Two red lines in grease paint,
light blue line in between, heart
over left eyebrow & a beauty
spot
• Def. made a poster of it & made
a portrait & superimposed new
look over an old poster
• In infringement action court
held that this is not a painting
and hence not protectable.
Animal Fair Inc., Vs. Amfesco Inds
227 USPQ 817 (1985)
• Novelty slippers
• Resembles a bear’s foot or
paw
• Slipper’s design features
separate from its
utilitarian features, incl.
impractical width of sole,
shape of sole, profile of
slipper, toes which are
unrelated to function and
copyrightable.
• Injunction granted.
CONCLUSION
Technological advancement made the
job of the creator easy
………it also made the job of the
copier easy.
Consciousness in IPR is the only way
to prevent the latter.
THANK YOU