This year’s Lakme India Fashion week in New Delhi ended with designer Suneet Verma alleging fellow designer Aki Narula of plagiarising one of Verma’s designs and passing it off as his own. The outfit in question was part of Verma’s fall/winter 2003 collection and featured in the designer’s advertising campaign (October to December) of that year. This year, he found actress Rani Mukherjee wearing the outfit in the film Bunty Aur Babli, and Narula credited with the design. Verma was incensed.
Narula claimed that he had purchased the outfit at a store called Options in Mumbai and had the receipt to prove it. He said the dress carried no label and he had no idea who designed it. Verma said he was going to sue Narula, the producer of the film Yashraj Films and actress Rani Mukherjee too!
The issue immediately raises two legal questions:
1.Does a dress design have IPR (intellectual property rights) protection under the Indian law?
2.Given the circumstances, what legal liability has Narula, the movie producer or the actress?
Till the turn of the millennium, lawyers were none too clear if they could successfully protect the design of a dress: most tried to cover it under the Copyright Act, but with very mixed results. The Designs Act 2000 changed all that. Section 2(d) of the Act now defines design and in its somewhat tedious style, this is what it says: “Design means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article, whether in two dimensional or three dimensional or in both forms… .” There’s more to the definition, but this much is enough to show that a dress can have a ‘design’. But what protection does this ‘design’ have?
If a design is registered under the Designs Act, Section 11(1), it gives the registered proprietor of the design a ten-year copyright on the design. Designs are registered at the patents office and the procedure is fairly simple. Naturally, not all designs can be registered. To be registered under Section 4 and 5, the design has to be new and original; it has to be significantly distinguishable from known designs and combinations of designs; it should not be obscene or scandalous; and it should not be contrary to public morality. Obviously, Verma has IPR protection on this particular design but this last qualification on public morality would change the equation if Verma replaced the black trousers with low cut shorts or worse, a thong!
A design is not fed to the wolves merely because it doesn’t meet the foregoing standards. If the design is original, its owner may still claim protection under the Copyright Act as they did before the enactment of the Designs Act in 2000. There is a difference though. The Designs Act now provides that if an article to which a design has been applied has been reproduced more than fifty times by industrial process — by either the owner or someone the owner has licensed — the copyright protection ceases. But since public morality could interfere with registration, thong designers will do well to produce no more than 49 pieces of any one design!
As for Verma, it comes down to this. If he has registered his design, he has ten years of copyright protection, and whoever copies the design will be guilty of ‘piracy’ under Section 22(1) of the Designs Act. Verma can, therefore, sue in a civil court to restrain the pirate from creating further copies or selling what he has created. He can also demand delivery of all copies already created and he can claim damages.
Because the Designs Act is so new, we don’t have much to support our reading of the law. I recall Viren Shah of Roopam discovering a lesser-known garments dealer duplicating his registered catalogues and was sued, the case resting on Shah’s favour. More recently, Ritu Kumar had reportedly sued firms in Calcutta for reproducing, printing, publishing and distributing her fabric designs. This case is still undecided though.
If Verma did not register the design, he still has copyright over the design as long as he has produced less than 50 pieces of it and his remedies range from the civil to the criminal. The civil remedies differ little from those under the Designs Act but the criminal remedy is a bit trickier. You cannot make a criminal charge stick unless you prove intention, what lawyers call mens rea, and that’s a tough nut to crack. The cynic of course could argue that we can worry about the mens rea when, and if, the case ever gets to trial: if we can get the cops on to the pirate, the system will harass him enough to cure him of his thieving predilections for life!
So whom does Verma go after? Not the actress for sure. Mukerjee was hired to act in a movie and supplied the dress, which she dutifully wore. She has a contract with the movie producer and therefore is harmless against any IPR claims but even if she doesn’t, she has no liability for wearing a dress. If you own IPR to a book that I copy and sell to my friend, who gifts the book to his wife, are you going to sue my friend’s wife for accepting the gift of a book or reading it?
What about Yashraj Films? Presumably, the producer made a deal with Narula to supply the clothes. It won’t hurt the producer who is having an indemnity clause in its dress supply contract with Narula. But since knock-offs cost less than the original, a producer who drives a hard dress supply bargain and looks carefully away at what is actually supplied is more easily accused of conspiring and profiting from the piracy.
That leaves Narula. I would carefully refrain from making a judgment of the facts but since Narula does not claim to have designed the dress, Verma would have to purse his remedy with Options, the store that supplied the dress. It would be no surprise, if in turn, Options claims that they procured the dress from their favorite tailor Mirza Ali or Dina Nath or whatever and knew nothing about the piracy. No doubt, the tailor won’t have the money to pay any damages. It’s a legal dead end, but a legal dead end is not a commercial dead end. If it comes down to that, what the designer needs to do is not seek compensation but enough publicity to let the whole world know that not only did he design the dress, but he is also so frighteningly good that many competent designers hawk knock-offs of his designs!