ESTABLISHING A STANDARD FOR COPYRIGHT PROTECTION IN PATENT DRAWINGS IN INDIA: INCORPORATION OF THE ‘FUNCTIONAL UTILITY’ TEST

Section 52(1) of the Copyright Act, 1957 in India provides a list of fair use criteria that does not constitute copyright infringement. Clause (w) is an additional fair use criterion inserted to the expansive dimensions of the provision by the 2012 amendment. [i] Section 52(1)(w) permits the making of a three-dimensional object from a two-dimensional work such as a technical drawing for industrial application of any purely ‘functional part’ of a useful device. The implication of fulfilling this criterion is that there can be no copyright protection to a two-dimensional drawing which will be used in the patent application for the useful three-dimensional inventions. Subsequently, there will be no scope of artificially extending the twenty years protection granted to the patent-holder by creating an additional copyright monopoly over the patent application drawing. The drawing could have otherwise been considered an ‘artistic work’ for the purpose of the Copyright Act which would have enabled it to enjoy copyright protection for sixty years after the lifetime of the author.

 

The clear object of introducing clause (w) to Section 52(1) is to prevent the duplicity of protection of two parallel intellectual property law regimes by introducing another fair use restriction to enjoying copyright monopoly. It ensures that once patent protection is over, the invention can come to the public domain, negating any question of copyright infringement after expiry of the twenty year protection term granted to the patent holder. The patent protection of the three-dimensional object invented becomes the sole object of monopoly. This gives immense potential to the increase of accessibility of inventions once the twenty year patent monopoly is over. It encourages reverse engineering of mechanical devices which was not possible before the amendment. [ii] The addition of clause (w) provides a necessary fillip to patent innovation.

 

The standard for determining what constitutes a ‘functional part of useful device’ remains ambiguous in the lack of judicial precedents in India that interpret Section 52(1)(w) of the Copyright Act, 1957. Legal controversies pertaining to this provision have not been prominently called into question before courts in India after its introduction by virtue of the 2012 amendment. Interpretation of this fair use criterion requires further explanation with the help of a comparative analysis of the legal standard followed in the United States of America.

 

The US Supreme Court had an occasion to deal with this contentious issue in the case of Mazer v. Stein [iii] as early as 1954. The facts in this case were that certain works of sculpture in the form of human figures were registered as ‘works of art’ under copyright law. Without authorization, these statuettes were copied and embodied in lamps and sold. Thus, the appellants were charged by the respondents for infringement of copyright. The appellants came to the apex court seeking a reversal of the Court of Appeals decision upholding the copyrights. The court had no hesitation in coming to the conclusion that the statuettes in the instant case were copyrightable. The US Supreme Court also went on to hold that patentability of statuettes did not bar copyright as works of arts. This was because there was no statutory restriction in the copyright statute or any other law that a patentable thing cannot enjoy copyright protection as well. The dichotomy of protection was elucidated as “art for the copyright and the invention of original and ornamental design for design patents”.

 

In the post Mazer era, in the 1985 case of Carol Barnhart Inc. v. Economy Cover Corp, [iv] the majority opinion of the US Court of Appeals recognized that with appropriate legislative changes and regulations, the US Congress has explicitly refused copyright protection for works of applied art or industrial design which have aesthetic or artistic features that cannot be identified separately from the useful article. Thus, the legal standard became determining the possibility to separate the artistic forms from the utilitarian object for the purpose of getting due copyright protection. On that basis, the artistic display model of a human torso was said to be inextricably intertwined with the utilitarian feature of displaying clothes in a shop. The decision of the lower judicial forum was affirmed that since these display forms did not possess any aesthetic features that could exist, either physically or conceptually, separate from the forms as utilitarian articles, they were not copyrightable. The Court of Appeals reached the final conclusion that the primary ornamental aspect was separable from their subsidiary utilitarian function and as such the artistic decoration of belt buckles could be entitled to get copyright protection.

 

Justice Newman, despite reaching a different conclusion in his dissenting opinion simplified this contentious issue. The Hon’ble Judge reduced it to one simple test of ‘conceptual separability’ where the question to be asked was whether the artistic design features created in the mind of an ordinary viewer a concept that was entirely separable from the utilitarian function. According to Justice Newman, the answer to this question rested in the hyperbole that “the design of Michelangelo’s ‘David’ would not cease to be copyrightable simply because cheap copies of it were used by a retail store to display clothing.

 

In the case of Brandir Intl. Inc. v. Cascase Pac. Lumber Co. [v] that the Circuit Judges tried to resolve this legal controversy and develop something concrete and definite for deciding questions of interpretation in this field of law. The Court of Appeals was called into question to decide the issue of copyright protection in case where a bicycle rack made of bent tubing was said to have originated from a wire sculpture. The majority opinion relied on something known as the Denicola standard. This standard was evolved on the basis of an article written by Professor Denicola in the article Applied Art and Industrial Design: A Suggested Approach to Copyright in Useful Articles, 67 Minn L. Rev. 707 (1983).  This legal standard laid down that copyright protection was to depend on the extent to which a particular work reflected artistic expression uninhibited by functional considerations. If a utilitarian article reflects a merger of aesthetic and functional considerations, the artistic aspects cannot be said to be conceptually separate from the functional utility. An assessment of functional utility was emphasized upon. On applying this test to a bicycle rack, the court found that the rack was influenced significantly by functional considerations. In such a scenario, it was not possible to separate the aesthetic elements of the artistic work from utilitarian elements. Thus, the bicycle rack was not entitled to receive copyright protection.

 

The legislative wisdom reflected in Section 52(1)(w) of the Copyright Act in India can be said to reflect an endorsement of this specific Denicola standard, which is a more streamlined version of Justice Newman’s dissent in the Carol Barnhart judgement. The prospect of copyright protection now depends less on a judgement of the artistic merits of an artistic work. Instead the focus is now on understanding the potential of functional efficacy of the three dimensional form of the work. The outcome is that the judgement of the aesthetic value of an artistic work is a necessary evil strictly to the extent of deciding whether the utilization of a two dimensional work such as a technical drawing constitutes ‘any purely functional part of a useful device’ for bringing the fair use exception in Section 52(1)(w) into operation. The Denicola approach stresses more on a specific identification of ‘functional utility’ rather than insisting on a greater scrutiny of aesthetic features of the artistic work. The potential of functional utility has no bearing on artistic quality. This interpretation is in consonance to the definition of artistic work provided for in Section 2(c) of the Copyright Act, 1957 which mandates that artistic work does not require a judgement of its quality.

 

Interestingly, there was an old Section 52(1)(w) in the Copyright Act till it was removed. The old Section 52(1) (w) provided for a fair use exception for “the making of an object of any description in three dimensions of an artistic work in two dimensions, if the object would, not appear, to persons who are not experts in relation to objects of that description, to be a reproduction of the artistic work.[vi] The layout of the old Section 52(1)(w) seems to be a reproduction of Justice Newman’s dissent in the Barnhart judgement, where the Hon’ble Judge had emphasized on what impression the artistic design features create in the mind of an ordinary viewer and whether they can view it as a concept of art that it entirely separable from the utilitarian function. If independent artistic features were not retained, only then copyright protection would not be allowed. But as observed, this standard was rejected by the majority opinion and subsequently a more sophisticated Denicola standard was developed in Brandir Intl. Inc. v. Cascase Pac. Lumber Co. The ‘functional utility’ consideration of the Denicola standard can now be clearly seen in the new Section 52(1)(w). Thus it would not be an overestimation to suggest that Indian law-makers have keenly followed the jurisprudence developed in the United States of America in drafting clause (w). The object of the copyright protection relaxation in Section 52(1)(w) is to prevent duplication of protection under both patent and copyright law. The ‘functional utility’ test is a step towards that goal.

 

 

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Endnotes

 

[i] The Copyright (Amendment) Act, 2012, available at http://copyright.gov.in/Documents/CRACT_AMNDMNT_2012.pdf, last seen on 20/08/2018

 

[ii] A. Pandey, Development in Indian IP Law, available http://www.ip-watch.org/2013/01/22/development-in-indian-ip-law-the-copyright-amendment-act-2012/, last seen on 21/08/2018; Z. Thomas, Overview of Changes to the Indian Copyright Law,17 Journal of Intellectual Property Rights, 324, 330 (2012), available at http://nopr.niscair.res.in/bitstream/123456789/14460/1/JIPR%2017%284%29%20324-334.pdf, last seen on 21/08/2018

 

[iii] (1954) 347 US 201

 

[iv] 773 F.2d 411 (2d Cir. 1985)

 

[v] 834 F.2d 1142 (2nd Cir.1987)

 

[vi] P. Reddy, The Delhi High Court Misses Another Opportunity to Rule on the New Section 52(1) in Context of Engineering Drawings, SpicyIP (2017), available at https://spicyip.com/2017/08/the-delhi-high-court-misses-another-opportunity-to-rule-on-the-new-section-521w-in-context-of-engineering-drawings.html, last seen on 21/08/2017

Rongeet Poddar

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