(This note was originally posted on Spicy IP)
Justice Shivakumar of the Madras High Court recently passed an order in Urooj Ahmed v. Maya Appliances, A. No. 5533/2008 in CS No. 949/2008; and the order is path-breaking. It is path-breaking not because of an excellent interpretation of the law, but because of the discovery of novel uses of the English language.
The Court was faced with a pure question of law. Can a suit for infringement of design be filed in the Court within whose jurisdiction the plaintiff resides?
Generally (in accordance with the Code of Civil Procedure), a suit is maintainable in the Court within whose jurisdiction the defendant resides. This general scheme is changed by the Copyright Act, 1957 through Section 62. Under Section 62(2), a suit for infringement of copyright is maintainable in the Court within whose jurisdiction the plaintiff resides. There is no such provision in the Designs Act, 2000; and on a plain reading, it ought to be clear that a suit must be filed in accordance with the general principles in the Code of Civil Procedure (i.e. in the Court in whose jurisdiction the defendant resides).
A straightforward interpretation must suggest that a “copyright” is not the same as a “design”; and a suit for infringement of copyright is distinct from a suit for infringement of design. The learned Judge, however, managed to hold otherwise. He noted that Section 62 of the Copyright Act says:
62.Jurisdiction of court over matters arising under this Chapter:- (1) Every suit or other civil proceeding arising under this Chapter in respect of the infringement of copyright in any work or the infringement of any other right conferred by this Act shall be instituted in the district court having jurisdiction.
(2) For the purpose of sub-section (1), a "district court having jurisdiction" shall, notwithstanding anything contained in the Code of Civil Procedure, 1908(5 of 1908), or any other law for the time being in force include a district court within the local limits of whose jurisdiction, at the time of the institution of the suit or other proceedings, the person instituting the suit or other proceeding or, where there are more than one such persons, any of them actually and voluntarily resides or carries on business or personally works for gain.
Now, it might well have been possible to stop the enquiry here itself. As mentioned earlier, there is no corresponding provision in the Designs Act, 2000; and it is clear that the legislative intent was not to extend the same provision to infringement of design. But, the Court relied on Section 11 of the Designs Act. This is what Section 11 says:
11. Copyright in design on registration. (1). When a design is registered, the registered proprietor of the design shall subject to the provisions of this Act, have copyright in the design during ten years from the date of registration.
Again on a plain reading; this provision simply means that the registered owner of a design also has the copyright in a design. The English language is not capable of stretching this to lead to the construction that infringement of design is the same thing as infringement of copyright. Nonetheless, the Judge held that the suit for infringement of design must be held to be the same as a suit for infringement of copyright in the design. Therefore, the provisions of Section 62 of the Copyright Act would apply to a case of infringement of design as well. Accordingly, the Court concluded that a suit for infringement of a design can be filed in the Court in whose jurisdiction the plaintiff resides.
The following is a representation of the reasoning involved:
Premise 1: A suit cannot be filed in the Court in whose jurisdiction the plaintiff resides.
Premise 2: It is an exception to premise 1 that in cases of copyright infringement, a suit can be filed in the Court in whose jurisdiction the plaintiff resides.
Premise 3: The registered proprietor of a design has copyright in the design.
Conclusion: It is an exception to premise 1 that in cases of design infringement, a suit can be filed in the Court in whose jurisdiction the plaintiff resides.
The conclusion does not follow from the premises. What the reasoning also assumes is the existence of another premise – ‘the fact that the registered proprietor of a design has copyright in the design means that the design is a copyright’. This assumption is entirely unwarranted. The fact that copyright can exist in a design does not mean that the design is the copyright or that the copyright is the design. Infringement of one is not and cannot be the same thing as infringement of the other. A reference to the definitional provisions of the Designs Act, 2000 itself would have made this abundantly clear. Section 2(c) of the Act defines a copyright as “…the exclusive right to apply a design to any article in any class in which the design is registered…” Further, a design is defined in Section 2(d) to exclude artistic works as defined under the Copyright Act.
Thus, a copyright is not a design; in the context of the Act, it is a right to apply a design to an article. Section 11 of the Designs Act must mean, therefore, that the registered proprietor of a design also has the exclusive right to apply the design to an article. It might mean that once a design is registered, the owner of the design ipso facto becomes the owner of the copyright in the design. However, it certainly cannot be interpreted as extinguishing the distinction between a design and a copyright. It cannot possibly mean that the provisions in the Copyright Act, 1957 shall be relevant for the purposes of determining the jurisdiction of Courts in cases of infringement of design. Obviously, in 2000, Parliament was well aware of the position of law in relation to jurisdiction in the Civil Procedure Code as well as in the Copyright Act. If Parliament intended to allow filing of suits in the plaintiff’s place of residence, it would have said so in the Designs Act specifically. Justice Shivakumar seems to have overlooked this fact; and in doing so, has opened up the door for grave confusion between distinct forms of intellectual property protection.
It must be hoped that reason is re-introduced into the law in this sphere. A suit for infringement of designs must be tested as per the provisions of the Designs Act – Section 11 of the Designs Act cannot be taken to mean that the provisions of the Copyright Act become applicable in their totality in such cases. In particular, the correct position of law seems to be that a suit for infringement of design must be filed in the Court of the defendant’s jurisdiction and not the Court of the plaintiff’s jurisdiction. Accordingly, it appears that Justice Shivakumar’s order ought to be overruled / reversed on appeal.
(1. It is noteworthy that the position is not crystal clear under the Copyright Act either – see this post. 2. This Australian High Court judgment provides an interesting perspective on the overlap between copyrights and designs generally. 3. Another example of Indian Courts grappling with the interaction between design and copyright is discussed in this post.)