Transcript Copyright and Industrial Design in the Textile, Apparels and Lifestyle Sector BY SAGAR CHANDRA Anand And Anand.

Copyright and Industrial Design
in the Textile, Apparels and
Lifestyle Sector
BY
SAGAR CHANDRA
Anand And Anand
The Law Has Doubled !
From four to Nine IP
Legislations
From 412 Sections to
827 Sections
OVERVIEW
INTELLECTUAL PROPERTY (IP or IPR)
INDUSTRIAL PROPERTY
TRADEMARKS
PATENTS
INDUSTRIAL DESIGNS
TRADE SECRETS
LAYOUT DESIGNS OF IC’s
GEOGRAPHICAL INDICATIONS
UNFAIR COMPETITION
COPYRIGHTS &
RELATED ISSUES
IMPORTANCE OF IPR
PROTECTION IN THIS SECTOR
Legal recognition for the designer’s
creativity
Protection of intangible assets
Long-term profits (Valuation, license
fees, royalties etc.)
“DESIGNS”
Functional /
utilitarian
Patents
Act, 1970
Purely
artistic works
Copyright
Act, 1957
Designs with
eye-appeal & capable of
Industrial application
Designs
Act, 2000
©OPYRIGHT
“The exclusive right given by law
for a certain term of years to an author,
composer etc. to print, publish and sell
copies of his original work”
Oxford English Dictionary
OBJECT OF COPYRIGHT
To encourage authors, composers and
artists to create original works
By rewarding them with monopoly rights
over their work for a limited period of time
GENERAL PRINCIPLES
Ideas v/s Expression
Originality, hard work and labour
Independent Development not covered:
“Copying essential”
Fixation
Presumptions
– Access;
– No explanation;
– Substantial reproduction;
BUNDLE OF
VARIOUS WORKS
Dramatic
Literary
Films
Musical
Artistic
Sound
Recording
“ARTISTIC WORKS”
A painting, sculpture,
drawing, engraving,
….whether or
not
possessing
artistic
quality
Any other work of
“artistic
craftsmanship”
OWNERSHIP
Ordinarily the Artist/author;
Employer;
Written Agreement;
Commissioned Work
PROTECTION AND TERM
Life + 60 years;
Worldwide - BERNE Convention;
Registration
advisable;
not
compulsory
though
A BUNDLE OF RIGHTS
Economic Rights
–Reproduce or make
copies
–Artistic Works-3D to
2D and vice-versa
–Issue copies- sell,
distribute, etc .
–Communication to
public
–Adapt
–Assign/License
 Moral rights
–Right of
acknowledge
ment
–Right
to
object against
mutilation
/distortion of
work
What constitutes Infringement?
Any
reproduction reproduction
reproduction, use , distribution,
performance, etc. of the work
without the permission of the
copyright owner.
An identical or substantial
similar
reproduction
is
also
covered
Infringement
–
Damages
Injunction
FAIR USE
Fair dealing for private use or
criticism & review;
Reporting current events;
Judicial Proceedings;
Education;
Inclusion in Film
INDUSTRIAL DESIGN
Protected under the Designs Act, 2000
Protects external shape, configuration,
surface pattern or ornamentation of
an industrially reproduced article
New and novel
Judged solely by the eye
Non functional
NEW AND NOVEL
Novel”: Means that it must originate from
the creator
“New”: Not identical to a previous design
Pattern made up of old features but
resulting combination with strikingly
different appearance can be novel
Distinguishable from known designs or
combination of known designs
But over the years, the test has become
NEW AND NOVEL
Surface
Pattern
Shape
Clip
Design
Surface
Pattern
WHY REGISTER YOUR DESIGN?
Statutory right – accrues only on registration – territorial
Right to prevent others from producing, importing, selling or
distributing products having an identical appearance or a
fraudulent or obvious imitation
Monopoly Period of 10 years- extendable by 5
Gives you a Unique Selling Point (USP)
Is an asset & can be licensed
DESIGNS CAN BE 2D OR 3D OR A COMBINATION
•Surface pattern
(2D pattern, composition of lines,
colours)
•Cut of the garment (3D
features of shape, configuration)
DESIGN & FUNCTIONALITY
•The intent of the Designs Act is to
protect shapes & not functions
•Designs with functional features
•If design is solely dictated by
function, it will not be registrable
THE DEGREE OF NOVELTY REQUIRED
•“New or original” does not simply mean different
•A trade variant of an old design does not make it
novel
•Substantial novelty required
Le May v. Welch: “It cannot be said
that there is a new design every time
a coat or waistcoat is made with a
different slope or different number of
buttons…to hold that would be to
paralyse industry.”
LIMITATIONS OF PROTECTION OFFERED
BY DESIGNS LAW
A design needs to be registered for any kind of
rights to be claimed over it – it may not be
feasible to register every design that is created by
designers
A design right cannot be claimed over a design
that has been published/disclosed to the public
A design right will only be granted on the
fulfilment of various criteria like “novelty”, eye
appeal and non-functionality
ENFORCEMENT
Identical design or any fraudulent
and obvious imitation;
Import for sale
Publishing or exposing the article
which is known to be pirated
Injunction and damages
SECTION 15(2), COPYRIGHT ACT, 1957
Copyright does not subsist in
design registered under the
Designs Act
Design capable of being
registered, but which has not
been so registered enjoys
copyright protection
Copyright shall cease as soon
as any article to which the
design has been applied
more than FIFTY TIMES by an
industrial process
THE COPYRIGHT/DESIGN OVERLAP
Fashion design lies at the cusp between “creativity” and
“industrial manufacture”
Great design has the quality of transforming “wearable
apparel” into “wearable art”
Thus, the distinction made by law between “purely
artistic works” and works that have been
commercialised can be problematic in many cases
There will be works that are both protectible under
copyright law as well as under designs law
Indian law has tried to resolve this by the provision of
Section 15(2), Copyright Act, 1957
Copyright & Designs Law
Designs that are not commercialised (i.e., not produced
more than 50 times), enjoy full copyright protection
even if not registered as a design
It may be argued that a design that has been
commericalised, may be capable of protection under
Copyright Act on the basis of the underlying artistic
works (i.e., the sketches, engravings, prototypes, etc.)
though Section 15 (2) remains a bar
Copyright & Designs Law
Important to maintain documentation and
records at every stage of product design and
development as this may help in claiming
protection for a design under the Copyright
Act
If you think of getting into mass production of
a unique design, file a design application as
that would provide you stronger protection &
complete monopoly
DESIGN Vs. COPYRIGHT
DESIGN
COPYRIGHT
Need to register
to claim
protection
Has to be “NEW”
Subsists inherently
Maximum 15
years
Only in respect of
goods registered
for
No requirement for
novelty
Life of author + 50
years
Is not goods specific
THE DESIGN DEVELOPMENT PROCESS
Hi-fashion furniture/metal ware:
2 D drawings
prototype
Prototype 3 D model
Final 2 D drawing
Silver
Apparels:
Sketch
Dressmaking pattern
Prototype/sample garments
Finished garment
Successful copyright infringement claims
Ritu Kumar’s cases
Ritika
Limited
Ashwani Kumar
v.
Ritika Limited v. Nina
Talukdar
Original
Original
Ritika Limited v. Sajid
Mobin
Copy
Copy
YSL v. Ralph Lauren
YSL was awarded
damages for Ralph
Lauren’s infringement
of the design rights in
YSL’s design of its
tuxedo dress
Example of infringement of registered
design
Birkin v. Pratt
Lace pattern was
held
to
have
been infringed
INDIAN LANDMARK DECISIONS
Microfibres Case [2006(32) PTC 157]
– Upholstery designs
– Intention
– Not Artistic work
– Design registration
– More than 50 copies
– No injunction
Tarun Tahiliani Case [Case No. 183 of
2007]
– Haute Couture;
– Diffusion;
– Pret-a-porter
– Accessories
– Not mass production
– Distinguished Microfibres
– Injunction granted
Wal-Mart v. Samara
Extension of Trade dress protection to the Fashion
What to do when licensing a design
A registered design can be licensed to exploit
markets or commercialise it on a scale beyond
the resources of the author
Essential to specify in the license- the term,
territory, amount of royalty & type of products
for which design can be used by licensee
COPYRIGHT SOCIETIES MODEL
Practically not possible for an individual to
manage licensing cost-effectively
Eg., Fashion Originator’s Guild of America
Take Home points
Be clear on the ownership of copyright
Maintain documentation at every stage
of design & product development as it
may help you to claim copyright
protection even if your commercialised
design is not registered
Take Home points
Get your work registered in the Copyright
Office- not necessary but advisable
Copyright notice & name of author to be
mentioned
wherever
possiblelabel,
packaging, invoice…
Take Home points
If you seriously contemplate getting
into mass production of a design, put
in
an
application
for
design
registration – gives you full monopoly
over the design
Take Home Points
•Be clear on the ownership of the design & spell it
out in the contract, when:
–Joint design efforts
–Use of people in the design development
process
–Designing for an entity
THANK YOU