Fighting with Counterfeit Menace: Montblanc Simplo GmbH vs. Gaurav Bhatia & ors. CS(OS) 2563/2013: Granting Injunctive Relief
Introduction: It always has been a well known fact that the markets in India are…
Who would imagine that AK 47 might need copyright protection? Yes!! You read it right!! None other than Mikhail Kalashnikov, the inventor of the AK-47 rifle had threatened India for a copyright violation. The story goes way back in 2000 when, an Indian ordnance factory had developed a replica of the AK-47, and put it on display at a defense expo in New Delhi. The weapon caught the eye of the original designer, Kalashnikov himself. He objected and threatened to file a copyright violation case against the government, forcing plans for an Indian AK-47 to be put on hold. Recently, the news came out that India has developed a Desi version of AK-47 by tweaking the technology to ensure no question of copyright violation arises. In layman’s terms, the mechanism which performs one of the key functions during the firing action will undergo a tilting movement as against rotation in the original AK-47. While reading this news I could only think of as IP lover on what basis Mikhail Kalashnikov is claiming copyright on AK-47? And also while seeking this answer I came up with the conclusion that India should have at least thought of getting a copyright expert’s opinion rather than going for circumventing technology of original AK-47. This blog will answer at least the main issue i.e. Is Mikhail Kalashnikov really owns the copyright in AK-47?
In order for a creation to be protected by copyright it must fall within one of the following categories of work: (1) literary works, (2) dramatic works, (3) musical works, (4) artistic works, (5) films, (6) sound recording. The only thinkable option to Mr. AK-47 is to claim the copyright as an artistic work. Still the mind-boggling question remains, does making of deadliest death machine AK-47 an artistic work? The Copyright Act states that “artistic work” means 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; work of architecture; and any other work of artistic craftsmanship. Under the Act, a copyright owner has wide-ranging powers and privileges including the basic rights to reproduce their works in any material forms including reproduction in different dimensions i.e. the reproduction of two-dimensional drawings into three-dimensional products.
So it’s crystal clear that Mr. Ak-47 might have a chance of claiming copyright, in the drawings of making of AK-47 or claiming the work as artistic craftsmanship. Thus, it would be a case of Mr. Mikhail Kalashnikov that the copyright in the artistic work in the drawings of which the AK-47 is a 3-dimensional representation, vests with him and his artistic work is the subject matter of copyright protection in India by virtue of India’s membership to the Berne Convention and the Universal Copyright Convention as also the International Copyright Order, 1991. So the act of making a replica of AK-47 without his permission and placing it for exhibition infringes its copyright.
So the question again comes that whether such drawings to make AK-47 is artistic work. It is my contention that such drawings are not artistic work at all and it’s not the subject matter of copyright but design or patent. Also, Ak-47 has been invented or designed in 1949 and even though it’s registered under designs act or under patents act its term of protection under both is expired and technology falls under the public domain and becomes part of the prior art. The fact is that Mr. Ak-47 had not claimed any patent and design on Ak-47 anywhere in the world.
It is submitted that in terms of Section 15(2) of the Copyright Act the copyright in any design which is capable of being so registered but has not been registered ceases as soon as any article to which the design has been applied has been reproduced more than 50 times by an industrial process by the copyright owner or with his license. This number 50 is outclassed by mere the age of first Ak-47 as this weapon has been in the use since 1949. The industrial application of such design to such a large number of Ak-47 brings Section 15(2) of the Act into operation and causes the copyright, if any, in the designs to cease and the Mr. Ak-47 forfeit his rights, if any, as the subject matter, falls into the public domain and any other person is entitled to use or utilize such design/features without restriction.
On the other hand, the Designs Act, 2000 does not protect any trademark …or any artistic work as defined in clause (c) of Section 2 of the Copyright Act, 1957. So only hope for Mr. Ak-47 is that he has to show his work is artistic work and nothing but an artistic work under the Copyright Act.
Let’s go through case laws available on the issue since the subject matter of artistic copyright and design monopoly involves an overlapping subject matter of protection, the law in India has sought to create a mutually exclusive divide between artistic copyright and design.
In Samsonite Corporation vs. Vijay Sales and Anr. (FSR (2000) 463) a new range of suitcases introduced by the Plaintiff as an improved version of its earlier range of suitcases, it did not obtain any design protection for its new range. The Defendants introduced the same range of suitcases. The Plaintiff objected to the Defendants’ suitcase on the ground that it was a look-alike copy of its suitcases. Claiming copyright in drawings, the Plaintiff complained of copyright infringement on the premise that the Defendants’ suitcase range was an unauthorized three-dimensional reproduction of the Plaintiff’s artistic copyright in the drawings in question.
Accepting the defense and declining interlocutory relief, the High Court of Delhi held that “The drawings simpliciter are not of any use to the plaintiffs. They are only instructions or ideas to give shape to an article to be manufactured. Therefore, they are designs capable of being registered.” “I am not able to accept this contention because whatever be the nature of the drawing the purpose and intention would be the relevant criterion to consider whether the drawings are designs in the light of the provisions of the Designs Act and the Copyright Act, 1957. No argument was advanced on behalf of the plaintiffs that the ultimate purpose of the drawing was not for the purpose of manufacture but the drawings were made for keeping the artistic quality of the drawings. The distinction between the drawing for artistic purpose and manufacturing is ignored by the plaintiffs. The main thrust of the argument of the plaintiffs was that the suit-cases manufactured by the plaintiffs would easily attract any person because it has got a powerful and attractive shape that would immediately attract the eye. Therefore, the whole purpose of the manufacture was to attract the eyes of customers. Therefore, it would follow from the argument on behalf of the plaintiffs that it is clearly a design coming within the meaning of the definition of design, under the Designs Act, 1911 and coming within the meaning of section 15 of the Copyright Act, 1957. Consequently, the plaintiffs cannot claim any copyright as the same had not been registered. The fact that it is being manufactured industrially is not in dispute…..as the plaintiffs had not registered the designs the plaintiffs cannot claim any protection under the Copyright Act, 1957 with reference to the drawings.”
The rationale and legislative intent came up for consideration before the High Court of Delhi in Microfibres Inc. vs. Girdhar & Co., & Anr., Finding merit in the defense, the High Court of Delhi dismissed the Plaintiff’s suit for injunction, holding: “in order for the work of the Plaintiff to qualify as an “artistic works”, it must fall within the definition of subsection (c) of Section 2 of the Copyright Act. A reading of the said provisions would show that the attempt of the Plaintiff can only be to bring it within the concept of “painting.” The comparison with the paintings of M.F. Hussain would be otiose as the work in question, in the present case, is not a piece of art in the form of a painting. There is no doubt that labor has been put and there is some innovativeness applied to put a particular configuration in place. Such configuration is of the motifs and designs which by themselves would not be original…What cannot be lost sight of is the very object with which such arrangements or works had been made. The object is to put them to industrial use. An industrial process has to be done to apply the work or configuration to the textile. It is not something that has to be framed and put on the wall or would have any utility by itself. The two important aspects are the object with which it is made (which is industrial) and its inability to stand by itself as a piece of art. In fact, it has no independent existence of itself.…. Furthermore, the legislative intent is also to be kept in mind which is to provide protection for a certain period of time for commercial exploitation. Thus, the nature of protection is quite different for an artistic work under the Copyright Act which is for the lifetime of the author/creator + 60 years. This is not so in the case of commercial exploitation as under the Designs Act and the Patent Act, the period is much lesser. In the present case, the configuration was made only with the object of putting it to industrial /commercial use.” In view of the above findings, the High Court of Delhi dismissed the suit.
Therefore, finally, we can say with reference to above authorities that AK-47 was not made keeping in mind that it’s an artistic work. The sole intention of Mr. Mikhail Kalashnikov in 1949 has to be to make a deadliest automatic weapon and he had succeeded in it and not for any artistic purpose. Also, weapons are made for wars and other operations for the intention of killing enemies and not for enjoyment like any other art form. Also, the rationale behind the Copyright is to encourage authors of various artistic works and to protect their work. The same rationale if applied to AK-47 it would be idiotic and illogical. It is pertinent to note that Copyright protects “expression” of an idea and not an “idea” by itself. In fact, when idea and expression become inseparable, copyright is not granted since the protection of the latter will lead to a monopoly over the former and our case is exactly the same. Mr. Mikhail Kalashnikov was claiming copyright because he has no other option as doors of patent and design protection were already closed far years ago. Anyway, if India had stuck with the replica of AK-47 and Mr. Mikhail Kalashnikov had sued India for that, we would have witnessed a great case and would have got the answer from none other than a court of law with a really furious judgment.
(NOTE: The intention of writing this blog is to find the answer of the above issue and enjoyment to an IP lover and not to offend anyone nor does this article encourages manufacturing of other replica products falling under the same circumstances or facts)
About the Author: Mr. Vinayak Aher, Trade Mark Attorney in Khurana & Khurana and can be reached: [email protected].