Tahiliani Design Pvt. Ltd. vs Rajesh Masrani

Reva Khetrapal, J.—By this order, it is proposed to decide two applications, being IA No. 1154/2007 and IA No. 4200/2007. The first is an application under Order XXXIX Rule 1 and 2 read with Section 151 of the CPC filed by the a Plaintiff, inter alia, seeking an injunction order during the pendency of the present suit restraining the Defendant from reproducing, printing, publishing and distributing, selling or offering for sale prints in any form whatsoever that are a colourable imitation or substantial reproduction of the Plaintiff''s fabric prints including the underlying drawings/sketches thereof. The second is an application under Order XXXIX Rule 4 read with Section 151 of the CPC for vacation of the ex parte injunction order passed by this Court on 02.02.2007 in the above terms.

The Plaintiff is a Private Limited Company incorporated on 27th August, 2002 engaged in business under the creative leadership of Mr. Tarun Tahiliani, who is a major presence in the fashion industry in India and enjoys a global reputation since the year 1994. The Plaintiff claims to have four main product lines, viz. couture, diffusion, pret-a-porter and accessories. All the works that are the subject matter of the present suit are stated to be couture, which line, according to the Plaintiff, consists of high-end garments, which are designed and manufactured, and consequently priced, for extremely limited production. It is stated that the said high-end garments are targeted at a very small, exclusive clientele, who would not be interested in mass-produced garments. It is also stated that it is integral to the nature of this line that not more than twenty (and usually fewer) copies are made of any single costume. The uniqueness and distinctiveness of each collection, of each outfit and of each garment is thus claimed to be the sine qua non of the Plaintiff''s couture line and any reproduction of its garments, or any of its distinctive features is alleged to destroy its value, causing incalculable damage to the Plaintiff''s reputation and posing a serious threat to the viability of its whole business model.

It is averred in the plaint that the uniqueness of the Plaintiff''s work, which is the life-blood of its business, is the result of several creative inputs which cumulatively add up to a specialised know-how that is unique in the Plaintiff''s particular business, creating for the Plaintiff a distinctive and identifiable niche in the fashion world.

The Defendant is stated to be one of the relatively unknown manufacturers and vendors of fashion items serving a less exclusive market than the Plaintiff and individually operating on a much smaller scale.

One Mr. Siddharth Jain, having his establishment at B-62, Sector 2, Noida 201301, U.P. provides printing service to the fashion industry, and the Plaintiff is one of his clients for such work. On or about 10th November, 2006, he informed Mr. Nevil Subramnium of the Plaintiff-Company that the Defendant had placed an order with him for printing certain sample fabrics, and had for the said purpose, forwarded a CD/DVD that contained the prints that were to be executed on the fabric. It is claimed that Mr. Jain''s employees unsuspectingly executed the said prints on the fabric supplied by the Defendant and only when he saw the finished product himself, did he realise that each and every print of the Defendant corresponded exactly with the Plaintiff''s prints. It was subsequently found by the Plaintiff''s representatives that each and every one of the digital prints forwarded by the Defendant for execution on the samples swatches corresponded exactly with the Plaintiff''s own prints from its Spring Summer 2006 Collection and the Autumn Winter 2006-07 Collection.

The individual comparison of the Plaintiff''s and the Defendant''s patterns has been shown in a detailed chart in paragraph 13 of the plaint. The Plaintiff alleges that apart from the individual feature-by-feature copy of the Plaintiff''s patterns on most of the Defendant''s swatches, the overall impression created by the Defendant''s patterns collectively is also that of extensive reproduction of a kind that would not have been possible without access to the Plaintiff''s confidential work in digital form. According to the Plaintiff, the Defendant has attempted to conceal his copying of the Plaintiff''s work by making minor and insignificant variation in one or two prints, but these conceal neither the substantial specific parts which have been copied nor the overall similarity.

The Plaintiff claims exclusive rights in respect of the copyright work and alleges that the act of infringement is self-evident from the similarities to the Plaintiff''s copyrighted works, amounting in many cases to exact copying and in others to substantial reproduction, that are visible in the Defendant''s work and for which no explanation is possible. It is submitted that the Plaintiff has a strong prima facie case for the grant of an injunction in its favour and that the Plaintiff stands to suffer irreparable loss if the Defendant continues to make unlawful and infringing commercial use of the Plaintiff''s products, since the Plaintiff''s couture line depends entirely on its exclusivity. The balance of convenience is also stated to be tilted entirely on the Plaintiff''s side.

The Defendant has filed a reply contesting the prayer of the Plaintiff for an injunction in its favour during the pendency of the present proceedings, and, as stated above, has also filed an application under Order XXXIX Rule 4, being IA No. 4200/2007, for the vacation of the ad interim ex parte injunction granted in favour of the Plaintiff.

The Defendant states that the Plaintiff has no right to claim protection under the Copyright Act, 1957 as the ''artistic work'' for which copyright is alleged to exist are actually designs relating to textile products, which come under the purview of the Designs Act, 2000. It is submitted that as the alleged designs claimed by the Plaintiff as its own are not registered under the Designs Act, the Plaintiff is not entitled to protection under the Act. It is further submitted that the textile designs do not constitute ''artistic work'' under the Copyright Act, 1957 and are, therefore, not capable of protection within the meaning of Section 14(c) of the Copyright Act, 1957. The suit of the Plaintiff is, therefore, liable to be dismissed in view of the provisions of Section 15 of the Copyright Act, 1957, as per which no copyright subsists in any design which is registrable under the Designs Act, 1911 or the new Designs Act, 2000.

In the course of arguments, the learned Counsel for the Defendant did not dispute the similarity in the samples swatches/prints filed in the present proceedings and marked T-1, T-2, T-3, T-4, T-5 and T-6 containing the Plaintiff''s original works to those marked M-1, M-2, M-3, M-4, M-5 and M-6 containing the Defendant''s infringing works and sought to base his challenge to the ex parte ad interim injunction granted to the Plaintiff on two grounds:

(a) The Plaintiff''s swatches/prints do not constitute ''artistic work'' under the Copyright Act, 1957, and accordingly, the Plaintiff has no right to claim protection under the said Act; and

(b) The said swatches/prints of the Plaintiff are actually designs relating to textile products which come under the purview of the Designs Act, 2000 and the same not having been registered under the said Act, the Plaintiff is estopped from claiming any copyright in the unregistered designs.

The learned Counsel for the Plaintiff countered the aforesaid contentions raised on behalf of the Defendant by urging that the protection of the Copyright Act, 1957 was available to the Plaintiff in view of the fact that the Plaintiff is the author/owner of the copyright in the creative work done by Mr. Tarun Tahiliani for and on behalf of the Plaintiff, or by designers employed by the Plaintiff-Company. The drawings which are made in the course of developing the garments or accessories are ''artistic work'' within the meaning of Section 2(c)(i) of the Copyright Act. The prints, which are the subject-matter of the present suit, belong to the couture line and not more than twenty or possibly fewer copies are ever made of any single costume. ''Artistic work'' is distinct from ''design'' and remains ''artistic work'' per se distinct from the garment to which it is applied and, therefore, is covered under the exclusion contained in Section 2(d) of the Designs Act, 2000.

As regards Section 15 of the Copyright Act, it was contended that the provisions of the said Section were wholly inapplicable to the present case for the reason that even assuming the ''artistic work'' to be a ''design'' within the meaning of the Designs Act, 2000, the provisions of Sub-section (2) of Section 15 make it abundantly clear that for the copyright to cease to exist in the said design, the said design has to be produced more than fifty times by an industrial process by the owner of the copyright, or, with his licence, by any other person. In the instant case, as already stated, not more than twenty or fewer copies of the prints forming the subject-matter of the present suit were reproduced.

In view of the aforesaid pleas and contentions raised by the parties, which are wholly legal in nature the provisions of the Designs Act, 1911, the Copyright Act, 1957 and the Designs Act, 2000 assume importance and it is deemed expedient to reproduce the relevant provisions thereof.

Section 2(c) of the Copyright Act defines ''artistic work'' as under:

"artistic work" means,-

(i) a painting, a sculpture, a drawing (including a diagram, map, chart or plan), an engraving or a photograph, whether or not any such work possesses artistic quality;

(ii) a Work of architecture; and

(iii) any other work of artistic craftsmanship;

Section 13 of the Copyright Act enumerates the works in which the copyright subsists and Sub-section (1)(a) thereof includes an ''artistic work''.

Section 14 sets out the meaning of copyright and reads as under:

Meaning of copyright.-For the purposes of this Act, "copyright" means the exclusive right subject to the provisions of this Act, to do or authorise the doing of any of the following acts in respect of a work or any substantial part thereof, namely:

(a) ....

(b) ....

(c) in the case of an artistic work,-

(i) to reproduce the work in any material form including depiction in three dimensions of a two dimensional work or in two dimensions of a three dimensional work;

(ii) to communicate the work to the public;

(iii) to issue copies of the work to the public not being copies already in circulation;

(iv) to include the work in any cinematograph film;

(v) to make any adaption of the work;

(vi) to do in relation to an adaption of the work any of the acts specified in relation to the work in Sub-clauses (i) to (iv);

Section 15, which is relevant for the present purposes, deals with special provisions regarding copyright in designs registered or capable of being registered under the Designs Act, 1911 and reads as follows:

Special provision regarding copyright in designs registered or capable of being registered under the Designs Act, 1911.-(1) Copyright shall not subsist under this Act in any design which is registered under the Designs Act, 1911 (2 of 1911).

(2) Copyright in any design, which is capable of being registered under the Designs Act, 1911 (2 of 1911), 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.

Significantly. Section 22 defines the term of copyright, inter alia, in ''artistic works'' and lays down that copyright shall subsist in any artistic work (other than photograph) published within the lifetime of the author until sixty years from the beginning of the calendar year next following the year in which the author dies.

Section 51, which is contained in Chapter XI, lays down when a copyright is deemed to be infringed and reads as under:

When copyright is infringed-Copyright in a work shall be deemed to be infringed-

(a) when any person, without a licence granted by the owner of the copyright or the Registrar of Copyrights under this Act or in contravention of the conditions of a licence so granted or of any condition imposed by a competent authority under this Act-

(i) does anything, the exclusive right to do which is by this Act conferred upon the owner of the copyright, or

(ii) permits for profit any place to be used for the communication of the work to the public where such communication constitutes an infringement of the copyright in the work, unless he was not aware and had no reasonable ground for believing that such communication to the public would be an infringement of copyright; or

(b) when any person-

(i) makes for sale or hire, or sells or elts for hire, or by way of trade displays or offers for sale or hire, or

(ii) distributes either for the purpose of trade or to such an extent as to affect prejudicially the owner of the copyright, or

(iii) by way of trade exhibits in public, or

(iv) imports into India,

any infringing copies of the work:

Provided that nothing in Sub-clause (iv) shall apply to the import of one copy of any work, for the private and domestic use of the importer.

Explanation-For the purpose of this section, the reproduction of a literary, dramatic, musical or artistic work in the form of a cinematograph film shall be deemed to be an ''infringing copy.''

A look now at the relevant provisions of the Designs Act, 2000. Section 2(d) defines design to be:

Definitions.-In this Act, unless there is anything repugnant in the subject or context,-

.... (d) "design" means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by an industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include any mode or principle of construction or ahything which is in substance a mere mechanical device, and does not include any trade mark as defined in Clause (v) of Sub-section (1) of Section 2 of the Trade and Merchandise Marks Act, 1958 (43 of 1958) or property mark as defined in Section 479 of the Indian Penal Code (45 of 1860) or any artistic work as defined in Clause (c) of Section 2 of the Copyright Act, 1957 (14 of 1957).

"Article" is defined in Section 2(a) as under:

Definitions. In this Act, unless there is anything repugnant in the subject or context,-

(a) "article" means any article of manufacture and any substance, artificial, or partly artificial and partly natural; and includes any part of an article capable of being make and sold separately.

Section 5 of the Designs Act deals with applications for registration of designs. Section 6 provides that the registration may be in respect of any or all of the articles comprised in a prescribed class of article. Section 7 deals with the publication of particulars of registered designs. Section 9 deals with the grant of certificate of registration and Section 10 deals with the register of designs wherein shall be entered the names and addresses of the proprietors of registered designs. Section 11, which deals with the copyright on registered designs, is significant and reads as follows:

Copyright on registration.-(1) When a design is registered, the registered proprietor of the design shall, subject to the provisions of this Act, have copyright in the design during ten years from the date of registration.

(2) If, before the expiration of the said ten years, application for the extension of the period of copyright is made to the Controller in the prescribed manner, the Controller shall, on payment of the prescribed fee, extend that period of copyright for a second period of five years from the expiration of the original period of ten years.

Section 22 deals with piracy of registered designs during the existence of copyright in any design and makes it unlawful for any person for the purpose of sale to apply to any article the design or any fraudulent or obvious imitation thereof, except with the licence or written consent of the registered proprietor.

My attention was also drawn to the Designs Rules, 2001 promulgated by the Central Government and in particular to Class 05 Entry 05-05, which reads as under:

CLASS 05

TEXTILE PIECEGOODS, ARTIFICIAL AND NATURAL SHEET MATERIAL

Note.-(a) Includes all textile or similar articles, sold by the yard and not make up.

(b) Not including ready-made articles (Clause 02 or 06).

05-05 Textile fabrics

Note.-\\(a) Including textile fabrics, woven, knitted or otherwise manufactured, tarpaulins, felt and loden.

The moot question which arises is whether the work in question can be said to be an ''artistic work'' within the meaning of Section 2(c) of the Copyright Act or whether it is a design within the meaning of Designs Act, 2000. The Plaintiff claims that it is the former. The Defendant, on the other hand, vociferously contends that the work in question is a design within the meaning of Designs Act, 2000 and not having been registered as such, the Plaintiff is estopped from claiming copyright in the same. The Plaintiff, in this context, places strong reliance upon the definition of "design" as set out in Section 2(d) of the Designs Act, 2000 to contend that the definition of "design" does not include "any artistic work" as defined in Clause (c) of Section 2 of the Copyright Act, 1957, and in fact, specifically excludes the same.

Reliance is placed by the Defendant on Section 15(1) of the Copyright Act to contend that copyright shall not subsist under the said Act in any design which is registered under the Designs Act. The Plaintiff, on the other hand, seeks support from Sub-section (2) of Section 15 to contend that even assuming that the work in question was capable of being registered under the Designs Act, the protection of the Copyright Act is still available to the Plaintiff in view of the fact that Section 15(2) mandates that the said protection shall cease only upon the design in question being reproduced more than fifty times by an industrial process and in the instant case, not more than twenty copies of the design at the most have been reproduced.

Reliance was also placed by the learned Counsel for the Plaintiff on a number of judgments to contend that registration of copyright is not compulsory either for acquiring copyright or for enforcing the copyright by an action for infringement K.C. Bokadia and Another Vs. Dinesh Chandra Dubey, ; Satsang and Another Vs. Kiron Chandra Mukhopadhyay and Others, ; Nav Sahitya Prakash and Others Vs. Anand Kumar and Others, and R. Madhavan Vs. S.K. Nayar,

The learned Counsel for the Defendant, on the other hand, sought to place reliance on a judgment of this Court in the case of Microforms Inc Vs. Girdhar and Co. and Others, to lend support to his pleas. In the said case, which was a composite action brought for infringement of copyright and for passing off, the Plaintiff''s grievance was of violation of its copyright in the "artistic works" applied to upholstery fabrics. Negating the contention of the Plaintiff that there was infringement of the copyright of the Plaintiff in the same, and holding that the Plaintiff''s work was no an "artistic work" within the meaning of the Copyright Act, a learned Single Judge of this Court in paragraph 62 held as follows:

In order for the work of the Plaintiff to qualify as an ''artistic work'', it must fall within the definition of Sub-section (c) of Section 2 of the Copyright Act. A reading of the said provision would show that attempt of the Plaintiff can only be to bring it within the concept of ''painting''. The comparison with the painting of M.F. Hussain would be otiose as the work in question, in the present case, is not a piece of art by itself in the form of a painting. There is no doubt that labour has been put and there is some innovativeness applied to put a particular configuration in place. Such configuration is of the motifs and designs which by themselves would not be original. The originality is being claimed on the basis of the arrangement made. What cannot be lost sight of is the very object with which such arrangements or works had been made. The object is to put them to industrial use. An industrial process has to be done to apply the work or configuration to the textile. It is not something which has to be framed and put on the wall or would have any utility by itself. The two important aspects are the object with which it is made (which is industrial) and its inability to stand by itself as a piece of Article In fact, it has no independent existence of itself.

In paragraph 72 of the judgment, it was further held that the Plaintiff having failed to register the designs which were capable of registration under the earlier as well as the current Designs Act, the protection of copyright in the designs was not available to the Plaintiff, which would have arisen if they had been so registered.

Having dwelt upon the contentions raised at the Bar and after going through the material on record, there is little doubt in my mind that the contentions of Defendant are devoid of merit. It is not disputed by the Defendant, as indeed it cannot be, that the Plaintiff in engaged in the business of high-end garments relating to the couture line and that the work in question was displayed in the Spring Summer 2006 Collection and the Autumn Winter 2006/07 Collection of the Plaintiff. It is also not seriously disputed by the Defendant that the prints/drawings in question have not been reproduced more than fifty times by an industrial process by the Plaintiff. No doubt, in the course of hearing, the learned Counsel for the Defendant made a somewhat feeble attempt to urge that the Plaintiff-Company has eighty outlets in twenty countries and, therefore, must be presumed to be engaged in mass-production of its so-called artistic works, in which event, under Sub-section (2) of Section 15, the protection of copyright in the same would be unavailable to the Plaintiff. It am not inclined to agree with this for the reason that it has been categorically stated by the Plaintiff in the plaint, on affidavit, that the designs are not being mass-produced, and indeed it is integral to the nature of the business of the Plaintiff that not more, than twenty (and usually fewer) copies are made of any single costume. Even otherwise, to my mind, it stands to reason that the Plaintiff s product lines, viz. couture, diffusion, pret-a-porter and accessories are known for their uniqueness and distinctiveness, and it is also well known that in each outfit and garment of any couture line creative inputs are required. This apart, uniqueness not only in conceptualisation but also in the creation and presentation are a sine quo non of haute couture. (See Roget''s Thesaurus Para 556, which defines artist to include a couturier). It is for this reason, to my mind, that the Legislature has deemed it expedient to exclude an ''artistic work'' from the definition of ''design'' in the Designs Act, 2000 and to highlight in the Copyright Act "that the copyright in any design which is capable 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 a fifty times by the owner or the licensee of the owner" (Section 15(2)).

In other words, the Legislature has expressly provided as under:

(a) Copyright shall not subsist in any design which is registered under the Designs Act (Section 15(1)), and

(b) Copyright shall also cease to exist in any design, which is capable of being registered under the Designs Act, but which has not been so registered, when the design is applied more than fifty times over, that is, copyright shall not exist when the object is for commercial production or production on an industrial scale.

As for the reliance place by the learned Counsel for the Defendant on the judgment of this Court in Microfibres, Inc. (supra), it s well settled that a decision is an authority for what it actually decides and not for what logically follows from it. A little difference in the facts or even one additional fact may make a lot of difference in the precedential value of a decision (See U.P. State Electricity Board Vs. Pooran Chandra Pandey and Others, . In the classic words of Lord Denning:

Each case depends on its own facts and a close similarity between one case and another is not enough because even a single significant detail may alter the entire aspect, in deciding such cases, one should avoid the temptation to decide cases (as said by Cardozo) by matching the colour of one case against the colour of another. To decide therefore, on which side of the line a case falls, the broad resemblance to another case is not at all decisive.

In Microfibres, Inc. (supra), this Court has specifically noticed and highlighted in paragraph 62 of its judgment the fact that the intent of creating the designs in question in the said suit was to put them to industrial use. In paragraph 67, it was further noted that the reproduction in the said case had occurred more than fifty times and in paragraph 73, it was again highlighted that the "designs were created with the industrial intent to apply them to fabric or cloth and more than fifty reproductions have admittedly been made without registering the designs under the earlier Act."

In this view of the matter, the case of Microfibres, Inc. is on an entirely different footing from the present case, the former being a case of mass-production of an industrial nature of upholstery fabric and the present being a case pertaining to the couture line, dealing with high-end products, known for their artistic and unique quality and their distinctiveness.

To sum up, there are designs and designs. Some may fail within the ambit and scope of the definition of works of art or "artistic work" as defined in the Copyright Act. Others may be mundane, even inartistic to the creative eye. Some may be unique, elegant and classy, others pedestrian, prosaic and uninspired. An artistic work, per se, denotes creativity, innovativeness, elegance, exclusivity and the like. To compare apples and oranges may perhaps be neither prudent nor palatable. The Plaintiff, in my view, has, therefore, made out a strong prima facie case for the confirmation of the ex parte injunction granted in its favour. The balance of convenience is also tilted in favour of the Plaintiff as the Defendant during the pendency of the suit is capable of causing irreparable loss to the Plaintiff by unabatedly copying the creative work of the Plaintiff.

In the result, the ad interim ex parte injunction passed by this Court on 02.02.2007 is made absolute pending the consideration of the suit. IA No. 1154/2007 is allowed and IA No. 4200/2007 stands dismissed. Parties shall bear their own costs.