Summary
The post analyses a Madras High Court decision addressing whether a product photograph can be copyrighted when the underlying design is already registered under the Designs Act. The petitioners, holding a design registration for a pump assembly, sought to expunge a copyright registration for a photograph of the same assembly. The Court clarified that a photograph does not constitute a design under the Designs Act, nor is its copyright barred by Section 15(1) of the Copyright Act. It distinguished between the copyright in a photograph and the industrial design registration, ruling that both rights can coexist when their subject matter does not overlap. The petition to expunge the copyright registration was therefore dismissed.
Facts / Background
Respondent No. 1, Mr. P. Moorthy, had obtained a copyright registration for an artistic work described as a “Photograph of Pump Assembly for Air Compressor” in May 2023. The petitioners were already proprietors of a registered design for a pump assembly, effective from 26 December 2019. They filed the present petition under Section 50 of the Copyright Act seeking rectification of the Register of Copyrights by expunging Moorthy’s copyright entry.
Issues
The issues before the Court were as follows:
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- Whether the photograph of the pump assembly registered as an artistic work constitutes a “design” under the Designs Act, 2000.
- Whether Section 15(1) of the Copyright Act bars the subsistence of copyright over this artistic work because the pump assembly itself is a registered design.
- Whether the copyright registration should be expunged from the Register of Copyrights.
Arguments of Both Parties
The petitioners argued that the design registered in 2019 and the photograph registered in 2023 concerned the same pump assembly. They submitted that Section 15(1) of the Copyright Act explicitly prohibits the subsistence of copyright in any design that has already been registered under the Designs Act. They further pointed out that the Copyright Office itself had initially raised an objection based on Section 15, questioning the registrability of the work. Relying on precedents such as Kiran Shoes Manufacturers v. Registrar of Copyrights and Microfibres Inc. v. Girdhar & Co., they contended that once a design is registered under the Designs Act, all copyright in the same subject-matter ceases to exist, irrespective of whether the work is exploited or not. They also cited the Supreme Court’s recent judgment in Cryogas Equipment v. Inox India, arguing that in the present case the design clearly preceded the artistic work, and therefore copyright protection ought not to extend to it.
In response, Respondent No. 1 contended that the registered copyright pertained solely to a photograph, not to the pump assembly or its structural design. A photograph is expressly included within the definition of “artistic work” under Section 2(c) of the Copyright Act and is nowhere excluded from protection simply because the article photographed is subject to another form of intellectual property registration. He explained that he sought copyright protection because a Chinese manufacturer had copied and used his photograph without authorization. He further argued that a photograph cannot fall within the definition of a design since it is not a feature of shape, configuration, pattern, ornament, or composition applied to an article through any industrial process. He also clarified that the patent relied on by the petitioners concerned a different type of pump and therefore had no bearing on the present issue. The respondent similarly relied on Kiran Shoes (supra), submitting that Section 15 applies only where the artistic work itself qualifies as a design, which was not the case here.
Court’s Analysis
The Court began by emphasizing that the work registered under copyright law was the photograph itself. It was therefore necessary to assess whether the photograph could be considered a “design” under Section 2(d) of the Designs Act. The Court noted that the definition of “design” requires one or more features such as shape, configuration, pattern, ornament, or composition to be applied to an article by an industrial process, resulting in a finished article judged solely by the eye. A photograph plainly does not fall within this description because it is not a feature applied to an article but is instead a captured image of an article. Consequently, the photograph could not be categorized as a design.
The Court examined the scope and purpose of Section 15 of the Copyright Act, observing that the section aims to prevent an intellectual property owner from extending the limited-term monopoly afforded by the Designs Act by simultaneously or subsequently asserting a much longer-term copyright in the same design. Section 15 therefore applies only when the copyright work and the design concern the same subject matter. That was not the case here: the registered design pertained to the pump assembly itself, whereas the copyright registration pertained only to the photograph of that assembly.
In applying the Supreme Court’s two-pronged test from Cryogas, the Court concluded that the photograph was purely an artistic work and was not a design derived from any original artistic work that was industrially applied. As such, the photograph never qualified as a design at all, and therefore Section 15(1) could not operate to extinguish its copyright. The Court also observed that the petitioners had challenged the copyright registration only on the basis of Section 15(1) and had not raised any other grounds for rectification under Section 50. Given that the registered design related to the pump assembly and not to the photograph, there was no overlap between the two rights that would justify expunging the registration.
Final Order and Conclusion
The Court determined that the petitioners’ reliance on Section 15(1) of the Copyright Act was misplaced because the provision applies only to “copyright in any design,” and the photograph at issue did not constitute a design within the meaning of the Designs Act. Since the artistic work registered by the first respondent was a photograph, and not the pump assembly itself, there was no statutory basis for rectifying or expunging the copyright entry. The Court dismissed the petition, without any order as to costs.
Citation: Mr. A. Ruthramoorthy & Anr. v. Mr. P. Moorthy & Anr., 2025:MHC:1338, OP(CR) No.1 of 2024, Madras High Court on10th June 2025. Available at: https://indiankanoon.org/doc/49129458/.
Authored by Ms. Ashwini Arun.