An architect uses several drawings and construction plans to finalize his architectural design which may include plans and designs of other engineers or architects too. If such person owns legal rights against usage of his plans and designs, then violation of such rights would amount to infringement of copyright.
The issue of infringement of engineering works in the tech sector is increasing day by day, which requires a complete understanding of legal protection available to them in terms of trademark and copyright. Ideally, the original owner of the designs, plans, and construction drawings should be asked for permission before their work is imitated or displayed publicly.
The Copyright Act, 1957 (hereinafter referred to as the “Copyright Act”) provides for the protection of architectural works against infringement and counterfeiting. As a result, the question of whether architects could protect their “Architectural Creations” against infringement is resolved.
The discussion of what is protected as part of a building’s copyright requires a clear knowledge of what a copyright is, what an architectural work is, and whether or not it is a work of art. This article tries to put up the fundamental provisions in law available to engineers and architects for the protection of their hard work and concludes with some suggestions based on the analysis of famous precedents.
ARCHITECTURAL DRAWINGS AND COPYRIGHT
Until the Berne Convention of 1908 (hereinafter referred to as “Berne Convention”), was amended, architectural works were not provided legal protection or any kind of copyright protection, and it was then included in the purview of “literary and artistic” works at the international level.
Despite the fact that architectural works are considered creative works, some constructions, such as bridges, dams, tents, and boats, have been maintained outside the purview of copyright protection. In a nutshell, copyright is a right granted to a creator for his invention; a right to imitate.
Copyright law, like all other types of Intellectual Property Rights (hereinafter referred to as “IPR”), applies to works of the human mind. Such work must not be only a notion, but rather an expression capable of being fixed in a physical medium. The Copyright Act and the Copyright Rules, 2013 (hereinafter referred to as “Copyright Rules”) govern copyright protection in India.
Section 14 of the Copyright Act describes copyright as an “exclusive right” to conduct or authorize activities with respect to copyrighted material such as reproduction, adaptation, modification, translation, public performance, distribution, and so on.
A work of architecture has been defined under Section 2(b) of the Copyright Act as ‘a building or structure having an artistic character or design, or any model for such building or structure.’ Furthermore, Section 2(c)(ii) explicitly includes ‘works of architecture’ such as buildings and models of buildings which means the designer or the architect of a building can even have a copyright over the same.
Several laws relating to the protection of artistic work are available in other countries, however, the Indian legal regime protects the works of architecture and engineer under the Copyright Act.
PROTECTION OF ENGINEERING /ARCHITECT WORKS UNDER LAW
The Berne Convention
Presently, the Berne Convention has 177 signatories including India. It was brought into the force to protect the rights of artists and authors of literary work and settle the universal problem of infringement and imitation of original work.
The main requirement of this convention was that it mandated the member countries to recognize the copyrights of other member countries if those copyrights have been published or performed in their country. The convention laid down three fundamental principles for the protection of original work:
- Principle of National Treatment: The primary aim of this principle was to respect the works of other member countries equally without discrimination which will help the nation to promote their individual artists and authors to innovate more in their creations.
- Principle of Automatic Protection: This principle relives the original authors and artists from registering their works and completing the formalities for protection. For instance, no publishers and authors are required to provide notice for their copyrighted work by the law in that particular member country.
- Principle of Independent Protection: The right to exercise enjoyment over the work granted is independent of the type of protection given in the origin country of the work because the domestic laws of that member country will only be applicable to the work.
Recently, the Delhi High Court in the landmark case of MRF Ltd. v. Metro Tyres Ltd. [2019 (79) PTC 368 (Del)] highlighted the Berne Convention and answered some important questions about copyright regime in India. The opinion of the Court made it clear that copying is not limited to the actual duplication process, but includes any imitation or reproduction of the original.
The Copyright Act, 1957
Generally, “every original work created by a person is protected by copyright“. The term “originality” refers to the notion that an author must have developed the work, using his or her own imagination and labor. Furthermore, the work must have been reduced to a tangible form.
Copyright exists as soon as a work is created, and no formality is necessary to acquire copyright; nonetheless, it is recommended that the author/owner of the copyright register their work to ensure that they may enforce the rights provided by the Copyright Law if their copyright is infringed.
Section 13 of the Copyright Act enlists the categories of artistic works that are eligible for copyright protection.
Subsequently, Section 57 of the Copyright Act takes into account the moral rights of the creator of the artistic work, as well as the author’s rights of integrity and acknowledgment. The Indian copyright law has also been expanded to include protection for commercial building architectural designs.
“Works of Architecture,” like other artistic works, are protected under this statute for the period of the author’s life plus 60 years.
Trademarks Act, 1999
Architecture is defined as “the art of planning and constructing buildings“. Section 2(m) of the Trademarks Act, 1999 (hereinafter referred to as the “Trademarks Act”) defines ‘mark’ as a name, signature, brand, letter, word, or device, among other things. The registration of architectural designs is not expressly granted under the Trademarks Act. However, an inference can be drawn from Section 2(1)(zb) of the Trademarks Act, which states that a mark is capable of registration if it can be represented graphically and can distinguish one person’s goods and services from those of another.
If one wants to ensure that a design is not duplicated or copied by others, then protection under the Trademarks Act can be sought, as long as the structural design meets the ‘graphical representation’ and ‘source distinction’ tests. It implies that the design must have a physical shape, and the building must essentially leave a convincing inference of identifiability with the owner of the trademark and the goods and services it provides. The protection provided under the Trademarks Act is for a period of ten years and subsequently the same can be renewed for a period of another ten years.
Designs Act, 2000
Section 2(d) of the Designs Act, 2000 (hereinafter referred to as the “Design Act”) provides the definition of the term ‘design’ which includes features of shape, configuration, pattern etc., applied to any article; whether in two dimensional or three dimensional.
In terms of lack of originality, the standards for protection under the Designs Act are quite similar to those under the Copyright Act, however, unlike the latter, one must get the work mandatorily registered under the Designs Act in order to reap the benefits of one’s labor. Furthermore, if a design is duplicated more than 50 times by any method, a person loses copyright protection and must only rely on the Designs Act.
In the case of Microfibers Inc. v. Girdhar & Co. & Anr., [2006(32) PTC 157 (Del.)], the Delhi High Court clarified that if a person has registered a design under the Designs Act, he will lose his copyright protection; however, if the design has not yet been registered under the Designs Act, it will continue to be protected under the Copyright law as long as the industrial limit of more than 50 reproductions is not exceeded.
APPLICATION OF THE ‘MISCHIEF RULE’ BY JUDICIARY
The mischief rule applies to the interpretation of statutes and is used by the Courts when there is a disagreement between two laws or provisions of law on interpreting it by the language as specified in the specific legislation or is interpreted by the Courts to resolve the difficulty in its application.
The challenge in the abovementioned case of Microfibers Inc. was whether the design of an “artistic work” in textiles should be protected under the Copyright Act or the Designs Act. Using the mischief rule, the Delhi High Court noted that “the mischief sought to be prevented is not the mischief of copying but of the larger monopoly claimed by the design proponent in spite of commercial production”.
ANALYZING THE TRADEMARK CASE OF THE HOTEL TAJ MAHAL
The concept of trademark buildings was first introduced in the United States of America. The same trend was being followed in other countries like Eiffel Tower in France and the Opera House in Sydney. The landmark case of Indian Hotel Company Limited (hereinafter referred to as “IHCL”) was the first ruling in India where IHCL was given the “external design protection” of the Hotel Taj Mahal Palace. Since 1903, the building of the hotel has been a part of Mumbai’s aesthetic appeal. The primary objective behind obtaining a trademark was to secure the building architecture from being imitated and shield out the unique design.
For securing trademark protection, the dual test of graphical representation needs to be satisfied by the structures designed by the engineers after which they will be eligible to be mentioned as a source of indication. The other reason behind the protection sought by IHCL was that they wanted to protect the structure of the Taj Mahal Palace Hotel from being produced anywhere else which would result in the dilution of its established reputation. Therefore, the trademark protection conferred to IHCL contained the following powers:
- Anybody wanting to use the Taj Hotel, or its pictures and design, for any commercial use, must obtain the owner’s prior permission, which may also include the licensing fee payment given to the company.
- If anything is sold wherein the pictures or structural design of Taj Hotel is replicated or reproduced, without the license, then such an act shall be considered as an infringement.
Therefore, IHCL by contending trademark protection secured a source of income through licensing and also got the legal protection against its use for commercial purpose. However, another remedy that was available to them was that of copyright, instead, they preferred trademark protection as the protection was not time bound and was only subject to renewal.
The protection of architectural works is a subject that has received insufficient attention and discourse. Many engineers, architects, and designers are unaware of how to preserve and enforce IPR in their building designs, which are their original artistic works. The majority of nations have now amended their legislation to fulfill the standards of the Berne Convention for the protection of architectural work under copyright.
Furthermore, the basic usage of spaces such as windows and doors, which are fundamental to the structure of any building, is not covered under copyright law. In such a case, the Delhi High Court’s decisions, as well as the harmonious construction of the Copyright Act and the Designs Act, serve as a balancing beam to address the issue.
– Team AMLEGALS assisted by Mr. Aum Purohit (Intern)
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