Facts
Plaintiff No. 2 was a wholly owned Indian subsidiary of Plaintiff No. 1, a water pump manufacturing company incorporated in USA. Defendant No. 1 was also a water pump manufacturing company registered under the Companies Act, 2013 and Defendants Nos. 2, 3 and 4 were former employees of Plaintiff No. 2.
The Plaintiffs had received engineering drawings via e-mail from the Defendant company, requesting for a reasonable quote for development of investment cast dies. The drawings in the mail were identical in every aspect to the engineering drawings of the Plaintiffs except that they bore the name of the Defendants.
The Plaintiffs then filed the present suit for copyright infringement against the Defendants, alleging that they had colluded with each other and stolen four copyrighted drawings, known only to the Defendants, relating to the Plaintiffs’ products and started manufacturing and marketing identical water pumps to that of the Plaintiffs.
The Plaintiffs sought an interim injunction restraining the Defendants from infringing the Plaintiffs’ copyright in the artistic works (engineering drawings).
Issue
The issues before the Court were the following:
- Whether the impugned engineering designs constituted an ‘artistic work’ as defined in the Copyright Act; and
- Whether the Plaintiffs had a copyright in the said works which the Defendants infringed or threatened to infringe.
Law
The Court referred to Sections 2(c), 13(1), 14 and 15 of the Copyright Act, 1957 and Section 2(d) of the Designs Act 2000.
Analysis
The Defendants contended that the Plaintiffs’ product was a direct copy of the pumps manufactured by WEDA Pumps, a UK based company, and therefore the Plaintiffs could own no intellectual property right, whether in the form of industrial design, patent, copyright or trademark in their product. Defendants further contended that Defendants 2 and 3 were carrying on the Plaintiffs’ business, and there has been an explicit agreement that inventions procured with his effort would belong to Defendant No. 2.
The Court, while deciding on this matter, made the following observations:
- ‘Artistic Work’ includes even an abstract work consisting of few lines or curves and may/may not have visual appeal.
- A copyright holder in an original artistic work has the exclusive right to reproduce it in any material form.
- Design protection under the Designs Act, 2000 cannot be extended to include copyright protection to works industrially produced.
- The original artistic works which may be used to industrially produce a designed article would continue to fall within the meaning of Sec. 2(c) of the Copyright Act, 1957 and entitled full period of protection as the definition of design under Section 2(d) of the Designs Act specifically excludes ‘artistic work’ as defined under the said section.
- If a design is registered under the Designs Act, it would lose its copyright protection under the Copyright Act. If the design is registrable under the Designs Act but has not been so registered, the design would continue to enjoy copyright protection under the Act until the threshold limit of its application on an article by an industrial process reaches 50 times. Once that limit is crossed, it would lose its copyright protection under the Copyright Act. This was the legislative intent to harmonize the Copyright and the Designs Act.
The Court held that the Defendants were riding on the goodwill of the Plaintiffs and were taking undue advantage of their past association as the Plaintiffs’ employees, which gave them access to confidential information.
Relying on the decision in Indiana Gratings Private Limited and Ors. vs. Anand Udyog Fabricators Private Limited and Ors., the Court observed that the drawings in question were only geometric lines, showing only mechanical parts and had no visual appeal. These were, therefore, not ‘designs’ as understood under the Designs Act but ‘artistic works’ as defined under Section 2 (c) of the Copyright Act. Thus, their theft, copying and unauthorised use amounted to copyright infringement under Sec 2(m) and 14 (c) (1) of the Copyright Act.
Finally, relying on the judgement delivered in R.G. Anand vs. M/s. Delux Films and Others, the Court held that even though the Defendants have argued that the Plaintiffs’ idea of manufacturing water pumps was same as that of WEDA Pumps, a U.K.-based company, the distinctiveness lay in the Plaintiff’s expression of the idea in their drawings. Since the Plaintiffs had put considerable effort in customizing the products to suit Indian conditions, the Defendants’ argument that the product was of generic nature and no copyright subsisted in it, was not sustainable.
Conclusion
The Honorable Court found the balance of convenience lay in favour of the Plaintiffs, and granted the injunctive relief sought by them. The Court ordered that until the final disposal of the suit, the Defendants were restrained from using or publishing the engineering drawings which were deceptively similar to the Plaintiffs’, including any brochures, operating instructions, user manuals, and other such publications featuring such designs, so as to not infringe the Plaintiff’s copyrights in the artistic works. n
Citation: Mody Pumps Inc. & Ors. v. Sovereign Pumping Solutions Pvt. Ltd. & Ors. decided by Bombay High Court on 27th April, 2022 available at: https://indiankanoon.org/doc/74942761/ last visited on 29th April, 2022.
This post is contributed by Ms. Anusmita Mazumder, Designs Associate.
This post is brought to you by BananaIP’s Consulting & Strategy Department
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