FL_Module_10

MODULE 10 – IMPORTANT CASE LAWS

Ritika Private Limited v. Biba Apparels Private Limited

The Plaintiff is a famous boutique apparel designer brand in India. The Defendant is
also a famous apparel designer and manufacturer in India. Both companies design
attractive contemporary ethic wear – creative fusion fashion.

The Plaintiff brought a suit against the Defendant seeking an injunction against the
Defendant from reproducing, printing, publishing, selling or offering etc. prints or
garments which are a reproduction of the Plaintiff’s prints and garments. The Plaintiff
claimed to be the first owner of the copyright in the artistic works related to these
garments and also claimed trade secret violation by its ex-employees. However, the
Plaintiff ’s designs were not registered under the Designs Act, 2000.

The Defendant on the other hand, argued that the Plaintiff’s case fell squarely under
Section 15(2) of the Copyright Act, 1957 i.e. the copyright in the Plaintiff’s design
ceased to exist as it had been reproduced more than 50 times by an industrial process.

The single judge of the Delhi High Court, citing in detail the Microfibers v. Girdhar and
Co. case, on this very point, came to the conclusion that the suit was barred by Section
15(2) of the Copyright Act, 1957 as the Plaintiff’s copyright in the said works had ceased
to exist.

Therefore, Ritu Kumar by reproducing the said designs on its apparels, more than 50
times, was not only disentitled to design protection but also disentitled to enforce its
copyright in the original drawing of the design. The court concluded that there was no
copyright infringement, not by comparing similarity between the Plaintiff’s prints/designs
and the Defendant’s printed reproduction, but by holding that the Defendant was
creating apparel by an industrial process and was not merely lifting and affixing a print
taken from the copyrighted work of the Plaintiff.

The inherent object of the Designs Act, 2000 is to ensure some amount of exclusivity
while still ensuring that designs are not over-protected, as evidence by the statement of
objects and reasons of this Act, as below –

“The legal system of the protection of industrial designs requires to be made more
efficient in order to ensure effective protection to registered designs. It is also required
to promote design activity in order to promote the design element in an article of
production. The proposed Designs Bill is essentially aimed to balance these interests. It

is also intended to ensure that the law does not unnecessarily extent protection beyond
what is necessary to create the required incentive for design activity while removing
impediments to the free use of available designs“

The definition of a ‘design’ under Section 2(d), excludes ” any artistic work as defined in
clause (c) of section 2 of the Copyright Act, 1957 (14 of 1957)“

Further, Section 15(2) of the Copyright Act, 1957, states that “Copyright in any design,
which is capable of being registered under the 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.“

These three pieces of law read together are far from clear. Shamnad brings out the
ambiguities and inconsistencies in his book chapter on overlapping IP. First, the
definition of a design excludes any artistic works as defined under the Copyright Act.
Therefore, from a plain reading no artistic work is registrable as a design. Not only is an
artistic work not protectable as a design but upon industrial reproduction of the artistic
work more than 50 times, the design looses even its copyright protection as per Section
15(2) of the Copyright Act. A plain reading of these sections contextualized in the
fashion industry, leads to the conclusion that a design which is applied/made into
apparel more than 50 times looses all protection. When this provision was introduced,
maybe producing 50 articles was a benchmark, but in today’s day and age and as again
observed by Shamnad in his chapter, producing 50 articles is achievable even in a
single day. Therefore, from a purported entitlement of 15 years of protection, the owner
of the artistic work in such designs may not even get a single day’s protection. Which
leads us to conclude that such designs become free at 50.

Courts, starting with Microfibres, have tried to reconcile the apparent disconnect with
the object of these legislations and their actual content. For instance, in Mircrofibers it
was held that the copyright in the original work of art would subsist even after the design
was applied more than 50 times but only the copyright in the applied design would
cease – “It cannot be disputed that the original paintings/artistic works which may be
used to industrially produce the designed article would continue to fall within the
meaning of the artistic work defined under Section 2(c) of the Copyright Act, 1957 and
would be entitled to the full period of copyright protection. [..] Thus, while the original
painting would indeed be entitled to the copyright protection, the commercial/industrial
manifestation of such paintings such as the design derived from and founded upon the
original painting for the purpose of industrial production of furnishings would only be

covered by the limitations placed in Section 15 of the Copyright Act and would get
protection if registered as a design under the Designs Act but would enjoy lesser period
of protection in case of a registered design“. This to a certain extent resurrects
exclusivity in the design by allowing the copyright owner to sue for copyright
infringement of the artistic work. However, as evidenced in the present case, the court
dismissed the claim for copyright infringement on the following grounds –

” 26. Lastly, I may note that in the facts of the present case it is not as if the copyright
work in itself is reprinted so to say on the dresses which are created by the defendant. If
the facts were that from the copyrighted works of the plaintiff prints were created and
such prints which have protection under the copyright work are as it is lifted and printed
upon the dresses of the defendant, may be in such a case without saying so finally on
this aspect, an issue of violation of the copyright of the work of the plaintiff under Indian
Copyright Act may have arisen. However, in the facts of the present case the defendant
is creating dresses or creating articles by an industrial means and process by
application of the design or drawing or sketch and the defendant is not as it is affixing a
print taken from the copyrighted work of the plaintiff as a print on a dress created by the
defendant. Issue in the present case therefore will not be a violation of a copyright of the
plaintiff under the Indian Copyright Act.”

The distinction being drawn by the court in the above two situations cited in the quoted
paragraph seems unclear. Does this mean that if a particular design/print is fixed not
using an industrial process, only such an act would amount to copyright infringement?
But since the question is related to copyright law and not the Designs Act, why is this
investigation necessary? And does this mean that if the copied prints are the
same/substantial imitations and meet the threshold for copyright infringement, it will still
not be considered as copyright infringement since such copying was done by an
industrial process/application? If this is the logic and now the law as laid down in the
present case, since most designs in the fashion industry are industrially made and
applied, it is difficult to imagine whether they can be protected even under copyright law.

MICROFIBRES V GIRDHAR

In the much popular case of Microfibres v Girdhar, both parties were engaged in the
business of upholstery fabrics. The single judge held that the designs of Girdhar were a
substantial reproduction of the Microfibres' artistic works. However, the Copyright
protection to the same had ceased because of the applicability of section 15(2) of the
CRA, 1957. They had been reproduced more than 50 times through an industrial
process by Microfibre. And since, Microfibres had not sought registration under the

Designs Act, the designs were unprotected by the IP regime. Two issues that get
resolved from the judgement are as follows: 1) The artistic works of section 2(c) of the
Copyright Act that defines 'artistic work' has wide connotation and even extend to
artistic works without any visual appeal. Only those artistic works that have a visual
appeal may qualify as designs eligible for registration and protection under the Designs
Act.21 2) A Design would qualify as an artistic work only if it is original. Hence artistic
works of the Copyright Act and 'designs' mentioned in section 15(2) of the same Act
(having a bearing on what can be protected under the Designs Act) are not synonymous
terms. They have their own scope and relevance. 3) If a painting is the original artistic
work in question and the same is applied to an apparel, some modification is normally
required while creating or reproducing it to be used as a printable design onto an article
wherein the final output should have visual appeal. Here, while the painting being an
original artistic work falls under Copyright protection, its derivative that is applied on an
article produced industrially remains under copyright protection as an indepenndent
artistic work only till 50 units production. The moment 51st unit is produced, it (the
derivative) loses Copyright protection and if the same has not been registered under the
Designs Act, it becomes a 'free' design, not protected--neither under Copyright Law nor
under the Designs Law. 4) Section 15 of the Copyright Act, 1957 excludes from the
ambit of Copyright protection not the original artistic work --the painting upon which the
design is based but the reproduced/mostly tweaked version of that original work which
was created for the sole purpose of making it compatible for industrial application. That
design by itself may be an artistic work provided it satisfies originality. This protection
however is short lived and ceases the moment 50 articles with that design have been
produced. [W]hen the copyright holder of an original artistic work reproduces the same
in another material form, he may, or may not do so by employing an industrial process
or means which may be manual mechanical or chemical separate or combined, on an
article. If the reproduction of the original artistic work is done by employing an industrial
process, as aforesaid, on an article, and the same results in a finished article which
appeals to the eye as adjudged solely by the eye, then the features of shape,
configuration, pattern, ornament or composition of lines or colours applied to the article
by the industrial process constitutes a 'design', within the meaning of this expression as
defined under the Designs Act.22 There is, therefore, a clear distinction between an
original artistic work, and the design derived from it for industrial application on an
article.23] The original painting which was used to industrially produce the designed
articleapparel in this case, continues to fall within the meaning of the artistic work
defined under Section 2(c) of the Copyright Act, 1957 and be entitled to the full period of
copyright protection. However, the design derived therefrom for the purposes of
industrial production faces the hindrance posed by sec 15 of the Copyright Act. It faces

the threat of going totally unprotected, unless it is registered as a Design under the
Designs Act, 2000.

Tahiliani Design Private Limited v/s Rajesh Masrani

By this order, it is proposed to decide two applications, being IA No. 1154/2007 and IA
No. 4200/2007. The first is an application under Order XXXIX Rule 1 and 2 read with
Section 151 of the Code of Civil Procedure filed by the plaintiff, inter alia, seeking an
injunction order during the pendency of the present suit restraining the defendant from
reproducing, printing, publishing and distributing, selling or offering for sale prints in any
form whatsoever that are a colourable imitation or substantial reproduction of the
plaintiff's fabric prints including the underlying drawings/sketches thereof. The second is
an application under Order XXXIX Rule 4 read with Section 151 of the Code of Civil
Procedure for vacation of the ex parte injunction order passed by this Court on
02.02.2007 in the above terms.

2. The plaintiff is a Private Limited Company incorporated on 27th August, 2002

engaged in business under the creative leadership of Mr. Tarun Tahiliani, who is a

major presence in the fashion industry in India and enjoys a global reputation since the

year 1994. The plaintiff claims to have four main product lines, viz. couture, diffusion,

pret-a-porter and accessories. All the works that are the subject matter of the present

suit are stated to be couture, which line, according to the plaintiff, consists of high-end

garments, which are designed and manufactured, and consequently priced, for

extremely limited production. It is stated that the said high-end garments are targeted at

a very small, exclusive clientele, who would not be interested in mass-produced

garments. It is also stated that it is integral to the nature of this line that not more than

twenty (and usually fewer) copies are made of any single costume. The uniqueness and

distinctiveness of each collection, of each outfit and of each garment is thus claimed to

be the sine qua non of the plaintiff's couture line and any reproduction of its garments,

or any of its distinctive features is alleged to destroy its value, causing incalculable

damage to the plaintiff's reputation and posing a serious threat to the viability of its

whole business model.

3. It is averred in the plaint that the uniqueness of the plaintiff's work, which is the life-
blood of its business, is the result of several creative inputs which cumulatively add up
to a specialized know-how that is unique in the plaintiff's particular business, creating for
the plaintiff a distinctive and identifiable niche in the fashion world.

4. The defendant is stated to be one of the relatively unknown manufacturers and
vendors of fashion items serving a less exclusive market than the plaintiff and
individually operating on a much smaller scale.

Christian Louboutin Sas vs Nakul Bajaj & Ors on 2 November, 2018

The present suit has been filed by the Plaintiff, who claims to be a manufacturer of
luxury shoes. The name of the Plaintiff Company - Christian Louboutin (hereinafter,
'Plaintiff') is based on the name of its founder, namely Mr. Christian Louboutin, a
famous designer of high end luxury products. The Plaintiff claims that the name,
likeness and photographs of Mr. Louboutin enjoy goodwill and protection under the
Trademarks Act, 1999 (hereinafter, 'TM Act'). The products of the Plaintiff are worn
and preferred by a large number of celebrities. The Plaintiff claims that it enjoys
enormous repute and goodwill in the fashion industry and was rated amongst top 5
prestigious women's luxury shoe brand. The name "Christian Louboutin", in word
form and logo form, as also the red sole mark, are registered trademarks in India,
and there are various other applications which are also pending registration. The
Plaintiff further claims that its products are sold only through an authorized network
of exclusive distributors. In India, there are two stores in Mumbai and one in Delhi
which are authorized by the Plaintiff.

Chanel Versus Luxury Resale

On the heels of filing a strongly-worded lawsuit against What Goes Around Comes
Around in March, taking issue with the way that the well-known vintage retailer has
been selling a sizable array of second-hand Chanel goods (at least some of which are
allegedly fake), Chanel has filed a similar suit against The RealReal. Earlier this month,
the Paris-based design house accused The RealReal of trademark infringement and
counterfeiting, asserting that the popular resale site is “selling counterfeit CHANEL
handbags,” despite its claims that it “ensure[s] that every item on[its site] is 100% the
real thing.”

Chanel also takes issue with what it says are efforts by both of the retailers to make it
seem as though they maintain some sort of relationship with Chanel, which they do not.
The Karl Lagerfeld-helmed fashion brand claims that the retailers know that “the value
of its CHANEL-branded inventory and attraction for consumers is enhanced if
consumers believe that Chanel has a business relationship or affiliation with [them].”

While many luxury brands have begun to embrace resale sites, such as The RealReal,
Chanel – which does not offer any of its garments or handbags for sale online – has
proven a marked outlier. Julie Wainwright, the founder of The RealReal, told
TechCrunch last year that her company was actively “in talks with high-end brands like
Louis Vuitton parent LVMH and Gucci owner Kering over potential partnerships.”
However, she noted that at least one brand, whose name, she said, “begins with a C,” is
particularly unhappy with the resale model and not looking to partner up any time soon.

The RealReal told TFL this month that Chanel’s new lawsuit “is nothing more than a
thinly-veiled effort to stop consumers from reselling their authentic used goods, and to
prevent customers from buying those goods at discounted prices.”

These lawsuits are interesting – and significant – not only because of their focus on the
potential bounds of permissible uses of luxury brands’ names in the context of resale,
particularly as luxury brands continue to police the usages of their names. But more
than that, they are very relevant given the vastly growing resale market and the
willingness of consumers and brands, alike, to engage with this ever-growing model.

Lawsuits Over Paparazzi Images on Instagram Raise Right of Publicity Questions

Gigi Hadid revealed on Instagram recently that she is being “legally pursued” for posting
a paparazzi photo of herself on Instagram. The reported legal action comes after the
supermodel and her agency IMG Models were sued last fall for copyright infringement
over an Instagram post, and also follows from a similar lawsuit, in which Khloe
Kardashian was sued after she posted a paparazzi photo of herself on Instagram
without licensing the image from the copyright holder.

These cases all center on violations of copyright law, but putting copyright aside, there
is a larger question at issue: at what point does a celebrity’s right to control how others’
profit from his/her likeness extend to paparazzi photos? In other words, is there a right
of publicity case to be made against photo agencies/paparazzi more generally?

One specific case – which football star Odell Beckham Jr., filed suit against

photographer Miles Diggs and California-based Splash News & Picture Agency for

allegedly attempting to "extort" him into paying $40,000 after he posted a photo of
himself on his Instagram account – should prove telling. Beckham argues that “the only
reason that the photos [at issue] have any value is because they depict [him].” It will be
interesting to see how the court balancing celebrities’ right to control the commercial

use of their images with the newsworthiness/public interest elements that automatically

come into play when public figures are involved.