The Single Bench of the Delhi High Court (the “Court”) on 13 March 2023 in Pandrol Limited & Anr. v. Patil Rail Infrastructure Pvt. Ltd. & Ors.., CS (COMM) 602/2022, made the interim order dated 02 September 2022 absolute, pending disposal of the suit in favor of the Plaintiffs and against the Defendants and held that the Defendants have dishonestly copied the drawings in respect of which the copyright vests solely with the Plaintiffs.
Moreover, the Court took into account the conduct of the Defendants in brazenly copying the drawings of the Plaintiffs and imposed cost of Rs.1,00,000/- to be paid to the Plaintiffs by the Defendants in the interim stage.Background· The Plaintiffs designed, developed and created detailed drawings for their ‘Pandrol Double Resilient Baseplate Assembly System’ [hereinafter ‘DBRAS’] which is a railway track fastening system used in metro rails, for the Ministry of Railways.· The DBRAS drawings are the copyrighted work of the Plaintiff no.1, being the original artistic work designed, developed and created by the course the Plaintiff no.1. Plaintiff no.2 is the exclusive license holder of the drawings of the Plaintiff no.1 and is licensed to use the said drawings in of their business in India.· The Defendants infringed the copyrighted work of the Plaintiff no.1 by copying the drawings of the Plaintiff no.1 and submitting the same to the Madhya Pradesh Metro Rail Corporation Limited [hereinafter ‘MPMRCL’] in response to a railway tender floated by them.Issues1) Whether the drawings of the Plaintiffs fall under the ambit of design under Section 2 (d) of the Designs Act, 2000* (the “Designs Act”) ?2) Whether the drawings of the Plaintiffs are original artistic work as defined under Section 2 (c) of the Copyright Act, 1957** (the “Copyright Act”)?3) Whether Section 15 of the Copyright Act*** is applicable in the present case?4) Assuming, that DBRAS is an original artistic work under Copyright Act; have the Plaintiffs assigned their rights to the Ministry of Railways and thereby have relinquished their rights?Observations· The Court observed that DBRAS is an original artistic work under the Copyright Act.· Further, it was observed that a ‘design’ in respect of a finished product is yet to emerge in the present case. Therefore, no ‘design’ capable of registration under the Designs Act has come out on the basis of the Plaintiff’s drawings.· The Plaintiff’s drawings relate to fastening systems, which are mere mechanical devices that have functional utility and therefore, by no stretch of imagination can it be said that the aforesaid drawings reflect a product, which, in its finished state, would have any visual appeal.· Hence, it was observed that the Plaintiff’s drawings are not capable of being registered as a ‘design’ under the Designs Act and thereby Section 15 (2) of the Copyright Act is not applicable.· As regards the assignment of rights under the Copyright Act; it was observed that in the Ministry of Railways’ approval letter nothing suggests that the copyright in respect of the Plaintiff’s drawings was to vest with the Ministry of Railways or that the Plaintiffs have waived their copyright in respect of the aforesaid drawings.· It was re-affirmed that registration is not a prerequisite to seeking protection from infringement under the Copyright Act.· Assuming that the Defendants actually believed that there was no copyright in the drawings of the Plaintiffs and they could freely copy the same, there was no need to put the name of their own personnel as the creators of the aforesaid drawings. It was observed that the extent of copying by the Defendants is not confined just to the drawings of the Plaintiffs but goes on to include the unique numbering given to the said drawings by the Plaintiffs including copying the Plaintiff’s trade mark ‘PANDROL’ in some of the drawings.· The report of the Local Commissioners appointed by the Court revealed that when the Local Commissioners visited the premises of the Defendants, the systems/laptops of the personnel of the Defendants contained the original drawings of the Plaintiffs bearing the Plaintiff’s trade mark ‘PANDROL’. The report also stated that when the Local Commissioners searched for the term ‘PANDROL’ on the two laptops of the Defendants, various documents showed up, which included various drawings of the Plaintiffs and other ‘PANDROL’ related data for which the Defendants had no logical explanation.AnalysisIn the present case, the Defendants in order to sway away the Court tried to emphasize on the interplay of Copyright Act and Designs Act as enshrined under Section 15 (2) of the Copyright Act.However, it is pertinent to note that although Court discussed the interplay between both the Acts, it interpreted the same based on the intent, including the facts and circumstances of the case and held that:· Plaintiff’s drawings are original artistic works; &· Since no ‘design’ capable of registration under the Designs Act has come out on the basis of the Plaintiff’s drawings, Section 15 (2) of the Copyright Act shall not be applicable.Further, the imposition of costs of Rs.1,00,000/- to be paid to the Plaintiffs by the Defendants in the interim stage, re-affirms the protection accorded to one’s intellectual property and thereby deter the infringers.* Section 2(d) in the Designs Act, 2000(d) “design” means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include any mode or principle of construction or anything which is in substance a mere mechanical device, and does not include any trade mark as defined in clause (v) of sub-section (1) of section 2 of the Trade and Merchandise Marks Act, 1958 (43 of 1958) or property mark as defined in section 479 of the Indian Penal Code (45 of 1860) or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957 (14 of 1957);**Section 2(c) in the Copyright Act, 1957(c) artistic work means,–(i) a painting, a sculpture, a drawing (including a diagram, map, chart or plan), an engraving or a photograph, whether or not any such work possesses artistic quality;(ii) an 4[work of architectural]; and(iii) any other work of artistic craftsmanship;*** 15. Special provision regarding Copyright in designs registered or Capable of being registered under the 1*** 2[Designs Act, 2000 (16 of 2000)].—(1) Copyright shall not subsist under this Act in any design which is registered under the 1*** 2[Designs Act, 2000 (16 of 2000)].(2) Copyright in any design, which is capable of being registered under the 1*** 2[Designs Act, 2000 (16 of 2000)] but which has not been so registered, shall cease as soon as any article to which the design has been applied has been reproduced more than fifty times by an industrial process by the owner of the copyright or, with his licence, by any other person.Author: Nitin Abhishek
