Copyright versus design protection requires a fact-sensitive inquiry; plaint rejection cannot rest on a bare assumption of registrability.
The Court explained that the overlap between copyrightable artistic works and registrable designs under the Copyright Act and the Designs Act requires a two-step, fact-sensitive inquiry: first, whether the work is an original artistic work or a design derived from it and applied industrially; second, whether its dominant character is governed by functional utility, visual appeal and industrial application. It also held that a plaint alleging copyright infringement in engineering drawings cannot be rejected under Order VII Rule 11 merely on an assumption that the drawings are registrable designs, because the applicability of Section 15(2) and the copyright-design distinction ordinarily raise mixed questions of law and fact requiring evidence and trial.
Issues: (i) What are the parameters for determining whether a work or an article falls within the limitation set out in Section 15(2) of the Copyright Act, thereby classifying it as a design under Section 2(d) of the Designs Act? (ii) Whether the High Court erred in setting aside the order of the Commercial Court and in rejecting the application under Order VII Rule 11 of the Code of Civil Procedure, 1908?
Issue (i): What are the parameters for determining whether a work or an article falls within the limitation set out in Section 15(2) of the Copyright Act, thereby classifying it as a design under Section 2(d) of the Designs Act?
Analysis: The overlap between copyrightable artistic works and registrable designs was held to be resolved by a two-step inquiry. First, it must be determined whether the work is an original artistic work protected by the Copyright Act or a design derived from such work and applied industrially within the meaning of Section 15(2) of the Copyright Act. If the work is not merely an artistic work, the dominant purpose and functional utility of the article must be examined to see whether it answers the statutory definition of design. The Court held that visual appeal, industrial application, and exclusion of pure mechanical or functional features are relevant indicators, and that the inquiry must be case-specific.
Conclusion: The governing test is whether the work is an original artistic work or an industrially applied design, and if the latter, whether its dominant character is assessed by functional utility under the Designs Act.
Issue (ii): Whether the High Court erred in setting aside the order of the Commercial Court and in rejecting the application under Order VII Rule 11 of the Code of Civil Procedure, 1908?
Analysis: The Court held that the question whether the engineering drawings were a design within the meaning of the Designs Act, and whether Section 15(2) of the Copyright Act barred the suit, could not be conclusively decided at the stage of Order VII Rule 11. The plaint disclosed triable issues, and the dispute involved a mixed question of law and fact requiring evidence. The Commercial Court had therefore erred in rejecting the plaint on a threshold assumption, while the High Court correctly restored the suit and directed trial.
Conclusion: The High Court did not err, and the rejection of the plaint under Order VII Rule 11 was rightly set aside.
Final Conclusion: The appeals were dismissed, the suit was held to be maintainable for trial, and the Commercial Court was directed to decide the remaining issues on their merits in accordance with the test laid down for distinguishing copyright from design.
Ratio Decidendi: A plaint alleging copyright infringement in respect of industrial drawings cannot be rejected under Order VII Rule 11 merely on the assumption that the drawings are registrable designs; the applicability of Section 15(2) of the Copyright Act and the distinction between an artistic work and a design ordinarily require a fact-sensitive inquiry and trial.
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