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Fair Use in the Third Dimension: Analyzing Section 52 of India’s Copyright Act

Source: Grill IP patents news

fair-use-section-52-3d-indiaAdding an additional dimension to a patented object comes with new legal ramifications in India. Section 52(w) of India’s Copyright Act has recently attracted attention following an order by Calcutta’s High Court in Hi Tech Chemicals Private Limited & Anr. v. Allied Metallurgical Products Private Limited (2016). Section 52(w) provides for a fair use exception where a two-dimensional (2D) work is transformed into a three-dimensional (3D) one. The provision limits the exclusive rights of patent owners over the 3D versions of their work.

    The order was passed after an interlocutory petition filed by Hi Tech. The company had held a patent for ten years, which then expired because the firm had failed to pay the fees required to renew the patent. Hi Tech thus lost its intellectual property rights on the idea, at which point the defendants applied for a patent on a similar product. Hi Tech protested against the application, arguing that the defendants’ application infringes on its copyright on the industrial drawing of the product, the very foundation of the product’s manufacture. The Court rejected Hi Tech’s argument, contending that the company failed to establish legal ownership of the drawings. According to Hi Tech, “the industrial drawing is an original artistic work of the said Berthold Stilkerieg on which he has a copyright.” However, Stilkerieg is not a party to the legal action, a standard condition for any successful infringement claim. Instead, the plaintiffs failed to show any proof of their assignment over the copyright.

    Had these conditions, the demonstration of ownership and the arraignment of Mr. Stilkerieg in the action, been fulfilled, the suit would still not pass courtroom scrutiny due to Section 52(w).

Section 52(w)

    The provision narrows the exclusive rights of copyright owners in “the making of a three dimensional object from a two-dimensional artistic work, such as a technical drawing, for the purposes of industrial application of any purely functional part of a useful device.” In other words, it has become more difficult to receive exclusive copyright protection for the 3D version of artistic works. This section was introduced via the 2012 Amendment, spurred by litigation over industrial machinery and their underlying copyrights. When machines do not meet conditions of patentability or a claimant has failed to renew a patent, those claimants would utilize copyright protection of the machines’ industrial drawings under Section 2(c) of the Copyright Act.  

    While the copyright owner retains the exclusive right to make use of an artistic work and reproduce it three-dimensionally, a third party may used the copyrighted drawing if it adheres to an exception of Section 52(w). Two requirements are needed for the satisfaction of this exception: 1) the conversion was in relation to a purely functional part of a useful device; 2) the conversion was effected to put it to industrial application.

The strategy of focusing on industrial drawings was never quite successful, and therefore Section 52(w) has not been too prominent in copyright litigation. Thus far, there’s only been one case, IPEG and Ors. v. Kay Bee Engineers (2016), where recourse to Section 52(w) has been sought. IPEG and Ors manufacture plastic auxiliary equipment and own industrial drawings of the equipment. The plaintiffs attempted to stop Kay Bee Engineers from creating similar equipment and drawings. In defense, Kay Bee relied on two claims, the exemption afforded by S52(w) and that the article is solely entitled to protection under the Designs Act.

The Court found this defense tenable according to the benchmark against which S52(w) is applied: “pure functionality.” If any part of the drawings “satisfied the rest of pure functionality then qua that part there would be no infringement. Any other interpretation shall held [sic] the entire Copyright Act nugatory and even the copyright in design shall not eb available for the first fifty articles to which the design is applied, as per section- 15(2) of the Copyright Act itself.”

In line with this decision, the fair use exception is narrow in scope and would not apply to the entirety of an object that is reproduced from an industrial drawing. Rather, the protection only covers parts of the drawing that fulfill the functionality test. This test is vague to say the least, for what is “purely functional” is merely explained via examples in an order appearing in Symphony Ltd v. Wim Plast (2015). In essence, the examples point to the phrase signifying that any inclusion in an article, not for the purpose of aesthetic appeal, constitutes something of functional value.

Looking to the Future

    The presence of Section 15 of the Copyright Act ruled out most of the copyright claims over industrial machinery that took the form of industrial drawings. This provision guarantees that the article onto which the designs are applied receives a smaller period of protection under the Designs Act, rather than the longer period provided by the Copyright Act. This stops companies from stifling the innovation of competitors through copyright protection. Section 52(w) takes the logic of Section 15 to the extreme, as the entire impact of the provision can only be understood once a “purely functional part of useful device” is clarified. For now, India’s courts must engage in a technical analysis each time a decision on whether a conversion has taken place with respect to the function of the device in question. While this consideration certainly prolongs litigation, the S52(w) supports innovation in general, and permits more creation, especially in the growing field of 3D printing. The frequency of S52(w) use in infringement cases will most likely increase as industrial drawings and 3D manifestations grow in popularity. Effectively, this order takes the security afforded objects in 2D and subjects it to the legal flux of being moved into another dimension.

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