Summary
In a recent decision, the Supreme Court of India laid down a two-pronged test to determine protection of artistic works under the Copyright Act and designs under the Designs Act. As per the Court, if a work is purely artistic, it would be protectable as a copyright. However, if it is the subject of any industrial process, the copyright protection will not be available.
With respect to designs, the Court said that an article to which an artistic work is applied would be protectable only if the artistic features do not have functional utility.
Though these are well established and understood principles, the Supreme Court’s reiteration provides welcome clarity for lower Courts and reinforces the line separating aesthetic expression from industrial application.
In a recent decision, the Supreme Court in Cryogas Equipment Private Limited v. Inox India Limited affirmed the Gujarat High Court’s decision rejecting an application under Order VII Rule 11 of the Code of Civil Procedure, 1908 (CPC). The case centred on whether proprietary engineering drawings related to cryogenic semi-trailers are protected under the Copyright Act, 1957, or fall within the scope of the Designs Act, 2000.
The Dispute
The underlying dispute arose from a suit filed by Inox India Limited (“Inox”) against Cryogas Equipment Private Limited (“Cryogas”) and LNG Express India Private Limited (“LNG Express”), alleging copyright infringement of two categories of intellectual property:
(i) Proprietary Engineering Drawings for LNG semi-trailers; and
(ii) accompanying literary works describing these drawings.
Inox sought declaratory relief, damages of ₹2 crores, and a permanent injunction against LNG Express. In response, LNG Express countered with an application under Order VII Rule 11 CPC, arguing that Inox’s claims were barred under Section 15(2) of the Copyright Act. They asserted that the drawings qualified as “designs” under Section 2(d) of the Designs Act, and that copyright protection ceased once the designs were applied more than fifty times through industrial processes. The Commercial Court agreed and rejected the plaint.
On appeal, the Gujarat High Court restored the suit, holding that the rejection was premature and that the classification of the drawings as “designs” or “artistic works” involved mixed questions of law and fact, requiring a full trial.
Arguments before the Supreme Court
Before the Supreme Court, the appellants reiterated their contention that the drawings were clearly registrable under the Designs Act and had been reproduced more than fifty times, making the claim ineligible under Section 15(2) of the Copyright Act. They further claimed that Inox strategically concealed the number of reproductions while revealing its revenues to avoid this statutory bar.
Inox argued that the engineering drawings did not qualify for registration under the Designs Act and were excluded from its purview due to their mechanical and functional nature. They also emphasised that literary works and confidential information were independently protected under the Copyright Act and common law, respectively.
Supreme Court’s Decision
The Supreme Court undertook a comprehensive examination of the interplay between the Designs Act and the Copyright Act. The Court acknowledged the legislative intent to provide limited protection to industrial designs while preserving the long-term protection afforded to artistic works under the Copyright Act. It stated that copyright ceases under Section 15(2) only when a design, capable of registration but unregistered, is industrially reproduced more than fifty times.
To determine whether a work is protected under the Copyright Act or the Designs Act, the Court laid down a definitive two-pronged test:
- Whether the work is an “artistic work” protected under the Copyright Act or a “design” subjected to an industrial process, invoking Section 15(2);
- If not protected as an artistic work, whether the work possesses aesthetic appeal or is purely functional, applying the “functional utility” test.
The Court cited domestic and international precedents and stated that copyright and design protections serve distinct purposes and do not overlap except to a limited extent.
Conclusion
Concluding that the plaint raised triable issues and that the Commercial Court had erred in summarily rejecting it, the Supreme Court upheld the High Court’s decision. It directed the Commercial Court to expeditiously decide Inox’s interim injunction application within two months and complete the trial within one year.
Copyright and Design Interface
The relevant paragraphs from the Judgment that discuss copyright and design protection, and their interface, read as follows:
“
55. The expression ‘artistic work’ under Section 2(c) of the Copyright Act has a very wide connotation and may also include abstract work(s) comprising a few lines or curves arbitrarily drawn, which could be either two or three-dimensional. It may be clarified that such a work may or may not have any visual appeal. Further, the holder of such an artistic work is entitled to draw protection under Section 14(c) of the Copyright Act, including the exclusive right to reproduce such work in any material form. Such a reproduction may also involve depicting a three-dimension work of a two-dimensional work or vice versa.
56. However, if such reproduction is done by employing an industrial process, which may be manual, mechanical or chemical, and which results in a finished article that may appeal to the eye, then ‘the features of shape, configuration, pattern, ornament or composition of lines or colours applied to the article by such an industrial process’, constitutes ‘design’ within the meaning of Section 2(d) of the Designs Act.
57. It thus seems that the intent of producing an original artistic work is not determinative of its protection under the Copyright or Designs Regime. Rather, the legislative intent is to harmonise the two Statutes so that while an ‘artistic work’ qualifies for copyright protection, its commercial or industrial application—i.e., the ‘design’ derived from the original work for industrial production— is subject to the limitations set out in Section 15(2) of the Copyright Act. Such a design gets protected only if it is registered under the Designs Act.
58. To further simplify, the original artistic work, which initially enjoys copyright protection, does not lose the same merely because a ‘design’ derived from it has been industrially applied to create a product. While the expression ‘artistic work’ has a broad spectrum, ‘design’ is restricted to specific features such as shape, configuration, pattern, ornamentation, or composition of lines or colours, applied to an article through an industrial process, resulting in a finished product that appeals to the eye. These visually appealing features, when applied industrially, define a ‘design’ under the Designs Act.
59. Our analysis further reveals 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.
60. It would therefore be appropriate to espouse the approach already undertaken by the courts in India, as it not only emulates the best practices employed by US courts and the principles enshrined in International Conventions but it also gives due consideration to contemporaneous laws and legislations. 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.
61. The courts, while applying this test, ought to undertake a case-specific 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.
62. We hasten to add that this Court has undertaken the task of clarifying the perceived complexities arising from Section 15(2) of the Copyright Act. In this context, we appreciate the efforts of High Courts across the country in adopting best practices that align with our socio-legal framework. Our analysis and examination have hopefully resolved this legal issue to prevent any further ambiguity in the future.”
Citation: Cryogas Equipment Private Limited v. Inox India Limited, Civil Appeal No. 005174 / 2025 (Arising out of SLP (C) No. 28062 / 2024) (SC April 15, 2025). Available at: https://indiankanoon.org/doc/170672552/ , visited on 16th April, 2025.
