Copyright v. Design Protection: Supreme Court Formulates Two-Pronged Approach To Address The Conundrum By Section 15(2) Copyright Act
The Supreme Court dismissed Appeals against the decision of the Gujarat High Court, which rejected the application under Order VII Rule 11 of the CPC.
The Supreme Court has formulated a two-pronged approach in order to crack open the conundrum caused by Section 15(2) of the Copyright Act so as to ascertain whether a work is qualified to be protected by the Designs Act.
The Court examined the legal complexities surrounding the intersection of the Copyright Act, 1957 and the Designs Act, 2000, particularly concerning the protection of industrial designs. The Court dismissed Appeals against the decision of the Gujarat High Court, which rejected the application under Order VII Rule 11 of the CPC. The parties to the Appeal were embroiled in a dispute concerning the purported infringement of intellectual property (IP) rights in relation to the designing and manufacturing of the internal parts of Cryogenic Storage Tanks and Distribution Systems.
A Bench of Justice Surya Kant and Justice Nongmeikapam Kotiswar Singh held, “We have thus formulated a two-pronged approach in order to crack open the conundrum caused by Section 15(2) of the Copyright Act so as to ascertain whether a work is qualified to be protected by the Designs Act. This test shall consider: (i) whether the work in question is purely an ‘artistic work’ entitled to protection under the Copyright Act or whether it is a ‘design’ derived from such original artistic work and subjected to an industrial process based upon the language in Section 15(2) of the Copyright Act; (ii) if such a work does not qualify for copyright protection, then the test of ‘functional utility’ will have to be applied so as to determine its dominant purpose, and then ascertain whether it would qualify for design protection under the Design Act.”
Senior Advocate Shyam Divan represented the Appellant, while Senior Advocates Chander M Lall and J Sai Deepak appeared for the Respondents.
Brief Facts
The dispute originated from a suit filed by Inox India Limited (Inox) against Cryogas Equipment Private Limited (Cryogas) and LNG Express India Private Limited (LNG Express), alleging infringement of copyright in Proprietary Engineering Drawings and Literary Works related to LNG Semi-trailers.
Court’s Reasoning
To resolve the dispute, the Supreme Court adopted a two-pronged approach:
- Analyzing Section 15(2) of the Copyright Act: This involves determining whether an article qualifies for protection under the Copyright Act as an original artistic work or under the Designs Act.
- Examining the Functional Utility of the Article: This assesses whether the article's primary purpose is functional or aesthetic
The Court stated that “the inquiry cannot be concluded merely by assuming that what does not qualify as an ‘artistic work’, within the meaning of the Copyright Act, would automatically receive protection under the Designs Act. While protection under the Designs Act is not as enduring as that under the Copyright Act, it is not granted by default and requires specific criteria to be met. In this regard, courts in India and globally consistently apply the test of ‘functional utility’ to determine whether a work qualifies for protection under the Designs Act.”
The Bench clarified the distinction between ‘artistic work’ and ‘design,’ emphasising that while an artistic work may have copyright protection, its industrial application as a design is subject to the limitations of Section 15(2) of the Copyright Act and requires registration under the Designs Act.
“The courts, while applying this test, ought to undertake a casespecific inquiry guided by statutory provisions, judicial precedents, and comparative jurisprudence. It must be kept in mind that the overarching objective is to ensure that rights granted under either regime serve their intended purpose without unduly encroaching upon the domain of the other. With this approach, we have attempted to clarify the treatment of works at the intersection of ‘copyright’ and ‘design’ law(s), thereby ensuring coherence and consistency in the application of IP rights in India,” the Bench explained.
Consequently, the Court ordered, “We therefore concur with the High Court that this case warrants a trial given the triable issues involved. The plaintiff before the Commercial Court, i.e., Inox, was erroneously non-suited due to incorrect assumptions made by the Commercial Court which misread the plaint, misapplied legal principles and overlooked the distinction between artistic work and design.”
Accordingly, the Supreme Court dismissed the Appeal.
Cause Title: Cryogas Equipment Private Limited v. Inox India Limited & Ors. (Neutral Citation: 2025 INSC 483)
Appearance:
Appellant: Senior Advocate Shyam Divan; AOR Chander Shekhar Ashri; Advocates Rahul Chitnis, Sudipto Sircar, Hersh Desai, Shwetal Shepal, Aditya Khanna and Samrat Mehta
Respondents: Senior Advocates Chander M Lall and J Sai Deepak; Advocates Smriti Yadav, Nirupam Lodha, Dhiren Karania, Kshitij Parashar, Gautam Wadhwa, Annanya Mehan and R Abhishek
