In a previous post, we highlighted section 15(2) of the Copyright Act and its application to the Mattel vs Aggarwalla case, involving the online version of the famous word game, "Scrabble". The wordings (no pun intended) of section 15 (2) leave much to be desired; it is no wonder then that its "tortuous" language has been the subject of intense litigation for several years now.
In two very analytical posts, Sai pointed to some of the interpretational issues thrown up by section 15(2)?
Recently, an appellant bench of the Delhi High Court reviewed section 15(2) and sought to tease out some of the interpretational anxieties faced thus far. The bench clubbed two appeals which raised the section 15(2) issue: Mattel Inc vs Jayant Aggarwalla and Microfibers vs Girdhar.
In order to appreciate this ruling, consider the facts of the Mattel vs Aggarwalla case. Mattel claims a copyright in their "Scrabble" board. They also claim copyright in the underlying drawings which were used to create the board in the first place.
Section 15 (2) reads as below:
"Copyright in any design, which is capable of being registered under the Designs Act, 1911, but which has not been so registered, shall cease as soon as any article to which the design has been applied has been produced more than fifty times by an industrial process by the owner of the copyright or, with his licence, by any other person."
Mattel claims that although the copyright in the Scrabble board may have expired (since it was produced more than 50 times), copyright in the drawings still subsist. And they could sue the Aggrawala brothers on the basis of this copyright. The court responds to this argument as below:
1. Although a copyright in the drawing continues to subsist, a copyright in the design article itself (board) would cease under section 15. In this regard, it bears noting that while a stand alone drawing is copyrightable, it will not, ipso facto, merit design protection. Rather, it has to be applied in some way to an article to merit design protection. It must also be remembered that a design registration is specific to the classes of goods in respect of which it is registered.
Illustratively, consider a 2-D picture of Lord Ganesha. The picture merits copyright protection. But unless such picture is translated to a 3-D embodiment (eg. a bottle shaped as Lord Ganesha or a even a stuffed toy of Lord Ganesha), it will not merit design protection.
2. Based on the above framework, Mattel would continue owning copyrights in their 2-D drawings and can prevent a third party from reproducing these drawings. However, they cannot prevent someone from creating the Scrabble board itself. The conversion of the 2-D drawing to an article (board) that had already been produced 50 times by Mattel would be exempt from copyright infringement under section 15 (2).
Art vs Commerce
To this extent, section 15(2) waters down the rights of a copyright owner to prevent the 3-D reproduction of a 2-D work under section 14. Unfortunately, the court does not expressly articulate this watering down of section 14. This is not to suggest that such watering down is impermissible. In fact, section 14 itself states that it is subject to other provisions in the copyright act, and this presumably includes section 15 as well.
Further, as the court rightly states, interpreting section 15(2) to permit copyright enforcement against the design article itself would render the section otiose. The court attempts to gauge Parliamentary intention in this regard and notes that Parliament did not intend design registrable works to be protected by an extended copyright term protection (60 years when compared with the 15 years that a design entitles one to).
To this extent, the court suggests a distinction between a work of art and a work of commerce i.e the moment a work of art is applied industrially to an article, it ceases to enjoy copyright protection and is only entitled to a (lesser term) design protection. I'm not entirely sure if this distinction between a work of art and a work of commerce is a conceptually sustainable one. Isn't most art today commercial--waiting to be converted into industrial articles of some sort?
On a more technical note, one has to ask: is the online reproduction of the Scrabble board exempt from copyright infringement under Section 15(2)?. Or would this amount to nothing more than a mere online reproduction of the 2-d drawing of Mattel's board? Or would this online board be capable of design registration in its own right?
Let us assume that Mattel creates an electronic scrabble board that can be played online? Could they have registered this online board as a design? If so, in which class? And if such class is "X", whereas the physical board is registered under "Y" class, would section 15(2) apply? Or is section 15(2) restricted to only those articles (and the class in which they are registered) which have been produced more than 50 times by Mattel? Interesting questions to ponder over.
Scrap the Designs Act?
Section 15(2) also throws up some tricky policy issues:
Do we need a separate design regime at all? Wouldn't most designs qualify as 'works of artistic craftsmanship" under the Copyrights Act? If the aim is to provide for a lesser term of protection for such artistic works that are industrially exploited, why not just bring all designs within the scope of the copyright act and stipulate that the moment a work is industrially exploited, it will merit only a 15 year protection and not 60 years (like normal copyrights)? This will also save valuable resources of the government that is now being expended in administering a design regime. And more importantly, will save us from the unfortunately worded section 15(2).
nb: The post benefited from discussions with Sai Krishna Rajagopal, to whom I am very grateful. Any errors in this post are however entirely mine.