Rajesh Masrani vs. Tahiliani Designs Pvt. Ltd. : Summary and Analysis

The Case involves an ace designer Mr. Tarun Tahliani and it can be said India’s first full-fledged battle on creative integrity against the "first copy" or "knock-offs" of designer wear. Delhi High Court discussed both the regime of Copyright and Design law to decide an infringement suit and explored the concept of "Artistic work" under the Copyright Act and "design" under Designs Act in context of Fashion Industry.

Important Facts:

1) Tahliani Designs Pvt. Ltd. which is under the leadership of Tarun Tahliani (Plaintiff), accused Rajesh Masrani (Defendant) of copyright infringement in the original “artistic works”.

2) The entity Rajesh Masrani had created a knock off of Tarun Tahiliani's work titled KMJ from its Autumn-Winter 2006 Collection which comprised of a grey-black print on a white background, which uses floral and paisley motifs that are suggestive of Mughal inspiration. 

3) Tahiliani Designs did not obtain registration under the Copyright Act.

4) A single bench of Delhi High Court issued an ex parte ad interim injunction dated 2nd February, 2007, restraining the defendant Rajesh Masrani from reproducing and selling the designs in question. The order was made permanent by an order dated 16th July, 2008.

5) The Defendant filed this appeal against the said order by this Appeal.

Relief sought:

Rajesh Masrani sought to set aside the permanent injunction passed against him, barring him from reproducing, printing, publishing, distributing, selling or offering for sale in any form, the print which are imitations of the designs of the plaintiff.

Relevant Provisions 

Section 2(d), Designs Act, 2000

Definition of a ‘design’ excludes "any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957."

Section 2(c), Copyright Act, 1957:

“artistic work” means- (i) a painting, a sculpture, a drawing (including a diagram, map, chart or plan), an engraving or a photograph, whether or not any such work possesses artistic quality; (ii) work of architecture; and (iii) any other work of artistic craftsmanship;

Section 15, Copyright Act, 1957: Special provision regarding copyright in designs registered or capable of being registered under Designs Act

(1) Copyright shall not subsist under this Act in any design which is registered or capable of being registered under the Designs Act.

(2) 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.

Decision: The Court dismissed the appeal and refused to interfere with the Injunction Order in question. Rajesh Masrani was restrained from making or selling copies of said Designs.

Whether the pattern made by the plaintiff on the fabric qualifies for ‘design’ or ‘artistic work’?

The plaintiff claims that the designs fall under the category of artistic work. The patterns printed on the fabric as well the final garments designed were also claimed to be artistic works by the plaintiff.

Drawings are artistic works under Section 2(c)(i) are made in the course of developing both the garments or accessories as such and of patterns for printing and/or embroidering on the fabric used. The garments or accessories themselves are works of artistic craftsmanship under Section 2(c)(iii) of the Act, while the patterns printed or embroidered on the fabric are artistic works in their own right.

The Court held that the works of Tarun Tahilani constitutes as ‘artistic works’ and hence comes within the ambit of Copyright Act,1957.

Is the Section 15(2), Copyright Act applicable?

For this provision to be applicable, it is essential that the work in question is (a) capable of being registered as a design, (b) has not been so registered and (c) the article to which the design has been applied has been reproduced more than 50 times. 

In the present case, not more than 20 pieces of any single costume were produced by the plaintiff, along with the fact that the said costume possessed the element of exclusivity and was limited to only a few copies.

Is registration necessary for protection under Designs Act and Copyright Act?

Since the Designs are not registered, hence no protection is available under the Designs Act as registration is mandatory. 

By the virtue of Section 15(1) and 15(2), Copyright Act is applicable as not more than 50 pieces of design in question, has been made by the Plaintiff.

Copyright subsist even in the absence of the formal process of registration. Though Section 44 of the Copyright Act provides for registration of work, but in order to claim copyright registration is not necessary. The sine-qua-non of the existence of copyright is the expenditure of skill, labour and capital on any work expanded.

Registration is only to raise a presumption that the person shown in the certificate of registration is the author. This presumption is not conclusive, but no further proof is necessary unless there is a proof rebutting the contents of the said certificate. 

Conclusion and Analysis:

There were many interesting arguments raised by defendant, but the Court chose not to discuss.

The decision of Court was overall based on the fact that less than 50 pieces of the design was made by the Plaintiff Tahiliani Design.

The Defendant heavily relied on the case of Microfibres, Inc. v. Giridhar & Co. But the same was not taken into consideration being a case of mass-production of an industrial nature.

The defendant argued that the drawings and patterns had no independent existence separate from the final garments, and they could be applied on to the garments only through an industrial process. Therefore, copyright protection should be denied. This argument was not taken into consideration.

 The court did not sufficiently discussed how a "Design" is different from "artistic work" and if there are no other criterias except the mass production to distinguish the two in context of Fashion Industry.

Despite all, this case remains important being first of its kind. The decision of Court in this matter remains the course of direction for all such cases till now. The Rule is clear that if there are less than 50 pieces of garments, then Copyright law is applicable in absence of Design registration.