FAO(OS) No.393/2008 Page 1 of 23 * HIGH COURT OF DELHI : NEW DELHI + FAO (OS) No.393/2008 Judgment Reserved on : 4th November, 2008 % Judgment pronounced on : 28th November, 2008 Rajesh Masrani ...Appellant Through : Mr. Manoj Swarup, Adv. with Mr. Akshat Goel, Adv. Versus Tahiliani Design Pvt. Ltd. ....Respondent Through : Mr. Pravin Anand, Adv. with Ms. Divya Arora, Adv. Coram: HON'BLE MR. JUSTICE A.K. SIKRI HON'BLE MR. JUSTICE MANMOHAN SINGH 1. Whether the Reporters of local papers may be allowed to see the judgment? 2. To be referred to Reporter or not? 3. Whether the judgment should be reported in the Digest? Yes MANMOHAN SINGH, J. 1. The present appeal has been filed under Order XLIII Rule 1 CPC against the order dated 16th July, 2008 passed by the learned Single Judge of this court allowing the application of the respondent (plaintiff in the suit) under Order XXXIX Rule 1 and 2 CPC for restraining the appellant/defendant from reproducing, printing, publishing and distributing, selling or offering for sale prints in any form, whatsoever that are colourable imitation or substantial reproduction of the FAO(OS) No.393/2008 Page 2 of 23 plaintiff’s fabric prints including the underlying drawings/sketches thereof and dismissing the application of appellant (defendant in the suit ) under Order XXXIX Rule 4 CPC read with Section 151 for vacation of ex-parte injunction order passed by this court on 2nd February, 2007. 2. The Plaintiff-Respondent herein filed a suit CS (OS) No. 183/2007 on 01.02.2007 seeking a decree of permanent injunction, damages and rendition of accounts against the defendant for infringement of the Plaintiff’s alleged copyright in the designs allegedly developed by the Plaintiff. 3. The Plaintiff, Tahiliani Design Pvt. Ltd. is a Private Limited Company under the creative leadership of Mr. Tarun Tahiliani. It has a major presence in the fashion industry in India and enjoys a global reputation and has over 80 outlets in 20 countries. 4. In September 2003, he became the first Indian designer to showcase his work at the prestigious Milan Fashion Week. He has been awarded the Moet and Chandon Fashion Tribute 2004 Award for Designer of the Year for India, and was invited to represent India at Hong Kong in October 2004. He was also awarded the F Award 2004 for Best Women’s Designer for Couture. 5. It is alleged that the drawings which are made in the course of developing the garments and accessories by the plaintiff are artistic works under Section 2(c)(i) of the Copyright Act, 1957. The patterns printed or embroidered on the fabric are also artistic works in their own FAO(OS) No.393/2008 Page 3 of 23 right and are developed by the plaintiff. The garments or accessories themselves are works of artistic craftsmanship under Section 2(c)(iii) of the Act, while the patterns printed or embroidered on the fabric are also artistic works in their own right. The Plaintiff does its creative work on computers and claims to be the author under Section 2(d) (vi) of the Copyright Act. The Plaintiff claims to be the first owner of Copyright in all the products of the company under Section 17(c) of the Copyright Act. 6. The plaintiff alleges infringement of copyright by the defendant on the ground that there is a colourable imitation or substantial reproduction of the plaintiff’s fabric prints including the underlying drawings/sketches thereof, or of any other of the plaintiff’s copyrighted works including works of artistic craftsmanship or other literary or artistic works. 7. The learned single Judge by the impugned order has confirmed the ex parte ad interim injunction granted on 2nd February, 2007. Against this order, the present appeal has been filed on the following contentions by the Defendant. 8. CONTENTIONS OF THE DEFENDANT a) The plaintiff is not registered under The Designs Act, 2000 which is mandatory for seeking protection under it, thus he has no right to claim protection under the above Act. FAO(OS) No.393/2008 Page 4 of 23 b) The plaintiff is also not the registered owner of the copyright, hence, he has no right to claim protection under the Copyright Act, 1957. c) The plaintiff has no right to claim protection under the Copyright Act as the artistic work for which copyright is alleged to exist is actually ‘design’ which comes under the purview of the Designs Act, 2000 and since the same are not registered under the Designs Act, the plaintiff is not entitled to protection under the said Act. d) The textile design do not constitute ‘artistic work’ within the meaning of Section 2(c)(i) of the Copyright Act, 1957 and is, therefore, not capable of protection. The suit of the plaintiff is liable to be dismissed in view of Section 15 of the Copyright Act, 1957 as no copyright subsist under the said provision of the Act. CONTENTIONS OF THE PLAINTIFF 9. Mr. Praveen Anand, learned counsel for the plaintiff has made the following submissions:- (a) 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. (b) The drawings which are made in the course of developing the FAO(OS) No.393/2008 Page 5 of 23 garments or accessories are ‘artistic work’ within the meaning of Section 2(c) (i) of the Copyright Act. (c) 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 made of any single costume. (d) ‘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. (e) In order to get the protection under the Copyright Act, there is no condition that the copyright must be registered under the Copyright Act, 1957. In case the subject matter of the product is covered within the definition of Section 2 of the Copyright Act which is original artistic work, the case for infringement of copyright is made out within the meaning of Sections 13 and 14 of the Copyright Act. 10. We have heard learned counsel for the parties and have also gone through the relevant pleadings and documents. We feel that the main controversy that arises in the present case is as under:- a) Whether the pattern made by the plaintiff on the fabric is ‘design’ or ‘artistic work’? FAO(OS) No.393/2008 Page 6 of 23 b) Whether the product in question is the subject matter of artistic work within the meaning of Copyright Act, 1957 as alleged by the plaintiff? c) Whether the copyright subsists in the plaintiff’s agreements in view of Section 15 of the Copyright Act, 1957? d) Whether the registration of the work under the Copyright Act is compulsory or registration is not a condition precedent for maintaining the suit for infringement of copyright. 11. In order to appreciate the contention of the parties and the questions involved in the matter, it is necessary that we deal with certain provisions of the Copyright Act, 1957, Designs Act, 1911 and Designs Act, 2000. 12. Section 15 of the Copyright Act, 1957 which is relevant in the present case deals with the special provision regarding copyright in designs registered or capable of being registered under the Designs Act, 1911 which reads as under:- “15. Special provision regarding copyright in designs registered or capable of being registered under the 1[***] Designs Act, 1911.—(1) Copyright shall not subsist under this Act in any design which is registered under the 2[***] 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.” FAO(OS) No.393/2008 Page 7 of 23 13. As it is the admitted case of the parties that the plaintiff is not holding any registration under the Designs Act, it is clear that Section 15(1) as referred above is not applicable in the facts and circumstances of the present case. Section 15(2) of the Copyright Act is applicable to the copyright in any design capable of being registered under Designs Act, 1911 but has not been registered and the copyright in the said design cease to exist as soon as any article to which the design has been applied has been reproduced more than 50 times by an industrial process. 14. In the present case as per the averments made by the plaintiff, not more than 20 pieces of any single costume have been produced by the plaintiff due to the fact that the said costume are exclusive and element of this mode of business is very limited and only handful copies are made by the plaintiff. In view of the said submission made by the plaintiff in the pleadings which could not be controverted by the defendant, it appears that the subject matter of the work in dispute does not cease to subsist by Section 15(2) of the Copyright Act, 1957. 15. Now the question arises as to whether the work in question is covered within the meaning of Section 2(c) of the Copyright Act or whether it is a ‘design’, or capable of being a design, within the meaning of Designs Act, 2000. To deal with this issue, we may refer to certain definitions in Designs Act and Copyright Act. FAO(OS) No.393/2008 Page 8 of 23 16. Section 2(1) (5) of Designs Act, 1911 and Section 2(d) of the Designs Act, 2000 reads as under:- “Section 2 Definitions : (5) “design” means only the features of shape, configuration, pattern or ornament applied to any article by any 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 anything which is in substance a mere mechanical device, and does not include any 2[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)” “Section 2 Definitions: (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 anything 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 or property mark as defined in Section 479 of the Indian Penal Code or any artistic work as defined in clause (c) of Section 2 of the Copyright Act, 1957.” 17. As mentioned earlier, under Section 15(2) of the Copyright Act, in case the copyright in any design which is capable of being registered under the Designs Act, 1911 but which has not been so registered, shall cease to exist as soon as any article to which the design has been applied has been reproduced more than 50 times by an FAO(OS) No.393/2008 Page 9 of 23 industrial process. The definition of ‘Design’ in the Designs Act, 1911 is different from the definition of ‘Design’ in the Designs Act, 2000. Section 2(d) of the Designs Act, 2000 does not include any ‘artistic work’ as defined in clause (c) of Section 2 of the Copyright Act. It is clear from the meaning of the design under the Designs Act, 2000 that the artistic work as defined in Section 2(c) of the Copyright Act, 1957 is excluded if any party is able to bring his case within the framework of Section 2(c) of the Copyright Act, 1957 while claiming a copyright, then the suit for infringement of copyright is maintainable. Section 2(c) of the Copyright Act, 1957 reads as under:- Section 2. Interpretation (c) “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; 18. In the present case, the plaintiff has made a specific statement in Paras 3 to 5 of the plaint to the effect that the garments in question are original artistic work and are covered under Section 2(c)(i) and Section 2(c)(iii) of the Copyright Act. Paras 3 to 5 of the plaint are reproduced below:- “3. The Plaintiff’s business depends on the continuous introduction, under Mr. Tarun Tahiliani’s creative leadership, of new apparel of a high quality, which is distinctive of the Studio, is exclusive to it, and also reflects and innovates the changing current trends in fashion. This is an extremely competitive business and, further, since its products enjoy only a transient marketability, success in this business requires continuous and sustained creativity, FAO(OS) No.393/2008 Page 10 of 23 producing new and innovative products to meet the changing requirements of the market. The effective protection of its intellectual property is central to the viability of such a business in the contemporary environment. Drawings, which are artistic works under Section 2(c) (i) of the Copyright Act, 1957 (hereinafter referred to as the “Act”) are made in the course of developing both the garments or accessories as such and of patterns for printing and/or embroidering on the fabric used. The garments or accessories themselves are works of artistic craftsmanship under Section 2(c)(iii) of the Act, while the patterns printed or embroidered on the fabric are artistic works in their own right. The Plaintiff also brings out catalogues, which are composite literary and artistic works and are, in addition, compilations of works protected as literary works under Section 2(o) of the Act. The Plantiff does its creative work on computers or is the author, under Section 2(d)(vi) of the Act, of any portion of its work that may be described as computer- generated. 4. All the Plaintiff’s creative work is done either by Mr. Tarun Tahiliani, for and on behalf of the Plaintiff Company, or on the basis of his concept, guidance, and detailed instructions and executed under his close supervision throughout the process. He is assisted by designers who are employed by the Plaintiff Company under contracts of service, and whose main function is to execute and complete the concepts that he creates; the contracts of service of two employees who assisted in the creation of the works which are the subject of the present suit, are filed in the present proceedings. The Plaintiff Company is thus the first owner of copyright in all the products of the company, either as the corporate author thereof or, in the case of work identifiably done by employees under contracts of service, under Section 17(c) of the Act.” 5. The process from creation to execution of an artwork on a finished garment at the Plaintiff’s studio comprises the following steps: (a) First the pattern is created on the computer by Mr. Tarun Tahiliani and/or other designers employed by the Plaintiff. FAO(OS) No.393/2008 Page 11 of 23 This stage continues till the finalisation of the pattern to make it print-worthy. (b) Secondly the “print” is sent for “swatching” i.e. preliminary printing in actual size. (c) The third stage commences with the evaluation of the swatches. If the results are not satisfactory, changes are made which are tested on further swatches. The team then “freezes” the final, satisfactory outcome, and a master file is generated. (d) Fourthly, after further processing, samples are made for the purpose of showing to buyers. It is on the basis of these samples that orders are taken. (e) The fifth stage involves the making of production files, which are sent on DVD to the Production Department which in turn send them to a specialized printer. (f) In the sixth stage, the specialized printer reproduces the final print on the fabric. 19. There is no specific denial by the defendant in the written statement filed by him except in Para 3 where it is urged that the work in question is not covered under Section 2(c)(iii) of the Copyright Act and the said fabric are designs which are registered under the Designs Act, 1911 or under the new Designs Act of 2000. 20. Before coming to the rival contentions of the parties, let us examine the factual position in the matter for infringement of copyright. The plaintiff has given comprehensive detail for infringement of copyright of their work in paras 13 to 15 of the plaint. The said paras of the plaint read as under : “13. Photographs of the sample swatches of the Plaintiff’s prints and the infringing swatches of the Defendant’s prints are filed in these proceedings, together with computer printouts of the original prints collated from the Plaintiff’s digital collection along with the infringing prints as obtained from the FAO(OS) No.393/2008 Page 12 of 23 Defendant’s DVD. The sample swatches/ prints filed in the present proceedings are marked T-1, T-2, T-3, T-4, T-5 and T-6 contain the Plaintiff’s original works, while those marked M-1, M-2, M-3, M-4, M-5 and M-6 contain the Defendant’s infringing works. Of these T-1, T-2, T-3 and T-6 which are coded within the Plaintiff’s organization as KSJ, KLJ, KMJ and KLG have been created by Kunal Dass, a designer employed by the Plaintiff and the copyright in the same is assigned to the Plaintiff by virtue of the said employment contract. The artwork numbered as T-4 and T-5 have been created by Tanvi Kedia and are coded in the Plaintiff’s organization as TZG and TLG respectively. The copyright in the same is assigned to the Plaintiff by virtue of the said employment contract. The latter swatches were handed over by the printer Mr. Siddharth Jain to the Plaintiff, who also forwarded the Defendants’ DVD containing the infringing prints to the Plaintiffs and a copy was made of the same. Individual instances of reproduction of the Plaintiff’s work, in the case of the artistic works contained in these swatches, are described below: Plaintiff’s work titled KSJ from the Autumn Winter 2006-07 collection (Filed in the present proceedings under as T-1) Defendant’s work (Filed in the present proceedings under as M-1) An Indo-western print characterized by the prominent use of the colours pinkish-orange and yellow. An Indo-western print characterized by the prominent use of the colours pinkish-orange and yellow with some visible smudging/running of colour. The central motif is a glittering diamond/ stone necklace with a large fiery-red ruby pendant in an assymetrical shape in the centre and flanked by two smaller rubies on either side. The three rubies give off a unique impression of flowing into each other. The central motif is a glittering diamond necklace with a large fiery-red ruby pendant in an assymetrical shape in the centre and flanked by two smaller rubies on either side. The three rubies give off a unique impression of flowing into each other. Another string of diamond/ stones follows the one on top, encircling a Mughal miniature paining in an oval, stone-studded fame, followed by a central pear- shaped motif encircling a kundan centerpiece and culminating in a Another string of diamond/ stones follows the one on top, encircling a Mughal Miniature paining in an oval, stone-studded frame, followed by a central pear- shaped motif encircling a kundan centerpiece and culminating in a FAO(OS) No.393/2008 Page 13 of 23 ruby and stone teardrop. ruby and stone teardrop. The second string of stones forms the line of demarcation for the two colours with the top one- quarter comprising a self- embossed yellow and the bottom three-quarters comprising symmetrical vertical columns of an overall orangish-pink hue. The second string of stones forms the line of demarcation for the two colours with the top one- quarter comprising a self- embossed yellow and the bottom three-quarters comprising symmetrical vertical columns of an overall orangish-pink hue. The columns in the bottom three- quarters contain intricate patterns of interwoven Indian floral motifs that are repeated in a four-column symmetry. The columns in the bottom three- quarters contain intricate patterns of interwoven Indian floral motifs that are repeated in a four-column symmetry. The overall impression is that of a uniquely different image with a number of intricately woven elements fused together with a creative flair and resulting in an overall print that is part- assymetrical and fanciful and part-systematic and orderly; but wholly new. The overall impression is that of an identical, poorly disguised and poorly executed copy with no attempt at originality; with the sole intent of reaping the fruits of the Plaintiff’s creative labour. 14. Similarly, the swatch numbered T-2 (filed in the present proceedings), which is a print of the Plaintiff’s KLG Spring Summer 2006 Collection, contains a very distinctive polychromatic floral combination with more than two dozen different blossoms and buds of different sizes, shapes and colours, which identifiably represent different floral species. These are mostly in a cluster which extends upwards on the left and hangs downwards, tail-like, on the right. There is a large white daisy in the centre. There are three unattached flowers on the lower left side and one (to the left of the tail) on lower right rise of the work. Another very distinctive features of this work is the incorporation in it of precious stones, which are shown as if they were part of the flower. There are clusters of these, like peas in a pod or simply as an ornament on the petals of flowers, at the upper left and lower right sides of the cluster. In addition, pearls set like acorns lie on each petal of the central white daisy. The cluster of flowers described above is set in a cream- coloured lace background with a self-embossed floral pattern. It is submitted that the swatch marked M-2 (filed in the present proceedings) which is the Defendant’s work, is an FAO(OS) No.393/2008 Page 14 of 23 slavish reproduction of the Plaintiff’s artistic work on the swatch marked T-2, described above, in all its distinctive details and even its colours, against a lace-like background which, again, is brazenly reproduced. This reproduction by the Defendant is far too exact to have been created independently. Further, the difference in scale and size—the Defendant’s is larger—in such an exact reproduction shows that the Defendant had obtained access to the Plaintiff’s work in digital form. 15. The third swatch containing the Plaintiff’s work is marked T- 3. This is a print of the Plaintiff’s work titled KMJ from the its Autumn Winter 2006 Collection. This is a grey-black print on a white background, which uses floral and paisley motifs that are suggestive of Mughal inspiration. The heavy grey shading on one side fades sharply across the work, leaving about half of it pure black-and-white. The extracts from the Plaintiff’s Look Book indicate the various colour options for the same print that are available to the consumer. This same work is copied in the prints contained in the swatch marked M-3.” 21. Here again, it is pertinent to mention that the defendant has not made any specific denial of the said averment made by the plaintiff pertaining to the allegation of infringement of copyright mentioned. He has only made the following statement to the said paras : “13-15.