Highlighting the missed opportunity to interpret Section 52(1)(w) of the Copyright Act in Cryogas Equipment Private Limited v. Inox India Limited and Others, SpicyIP intern Advika Singh Malik writes on whether the provision could have been roped in by the parties in the present case or not. Advika is a third-year law student at Symbiosis Law School, Noida. She is interested in pursuing IP and tech litigation. Her previous posts can be accessed here.
Assessing the Cryogas Judgment from the lens of Section 52(1)(w)
By Advika Singh Malik
The Supreme Court’s decision in Cryogas Equipment Private Limited v. Inox India Limited and Others, is the latest addition to the jurisprudence on the interplay between copyright and designs. In his two part post (Part 1 and 2 can be accessed here and here) on the judgement, Aditya has discussed the jurisprudence on the difference between copyright and industrial designs and the two-pronged test to distinguish between the two intellectual properties adopted by the Court. Continuing the discussion, in this post I’ll analyse the judgement from the lens of the missed opportunity to rope in Section 52 (1)(w) of the Copyright Act. Further, I will also explore the potential reasons why the parties stayed away from this exception. Interested readers can look at Prashant Reddy’s post on the provision here for the necessary background on the provision.
Drawing vs. Device: When Does Copying Become Legal?
Section 52(1) (w) of the Copyright Act states that making a 3D object from a 2D technical drawing is not copyright infringement where the object forms a functional working part of a machine or device. Thus, if one is using a drawing to build an industrial machine part, it is allowed. For example, it’s similar to using a technical drawing of a bolt or a bracket to manufacture that part for integration into a larger mechanical system, as the purpose is functional rather than artistic.
This particular section has been explored rarely. Though in GE Power India Ltd. vs. NHPC Limited (2020), the Delhi High Court supported this view and clarified that using technical drawings for practical, industrial purposes is allowed, and copyright shouldn’t stop people from using such drawings to build functional items. In Rochem Separation Systems (India) Pvt. Ltd. vs. Nirtech Pvt. Ltd (2023), the Bombay High Court supported the idea that this section prevents misuse of copyright law to claim monopoly over functional industrial components. In this case, the plaintiff claimed copyright infringement over engineering drawings, but the defendants argued that their use of the drawings to create functional items like connection flanges was allowed under Section 52 (1)(w). The Court agreed, stating that the flanges were functional parts, not artistic works, and using the technical drawings to make such components did not constitute copyright infringement.
Clash: Section 15 (2) and Section 52 (1)(w)
There has been no use of Section 52 (1)(w) in the present case. The respondents claim that the drawing is capable enough of being protected as an artistic work. So, by applying section 52 (1) (w), the appellants could easily make 3D functional objects but if the exception under this section would have been relied upon then it would be similar to claiming that the drawings present here are indeed artistic and are protected as copyright and thus the protection under 15(2) would be invalidated.
One of the primary contentions of the appellants was that respondents engaged in strategic drafting by selectively revealing that it has generated revenue of Rupees 122 Crores, seemingly to circumvent the legal effect of Section 15(2) of the Copyright Act by not providing the number of products manufactured but rather showing the total revenue. However, such revenue can be reasonably inferred to result from the production of more than fifty Semi-trailers, thereby triggering the bar under Section 15(2), which states that If a design eligible for registration under the Designs Act, 2000 is not registered, its copyright ends once it’s been reproduced over fifty times industrially. From the above discussion, it is clear that the primary focus of the appellants was indeed on proving the drawings as a design.
The “What If” Scenario: Squeezing in Application of Section 52 (1)(w)
The Court is silent on the fact that whether the INOX drawings have copyright or not and the case is scheduled for re trial. In arguendo if we assume that the drawings in question were considered as artistic work, can the section then be applied here to aid Cryogas?
The section deals with few terminologies namely “three dimensional object”, “two dimensional artistic work”, “technical drawing”, “industrial application” and “functional part of a useful device.”
In the present matter, the Proprietary Engineering Drawings created by Inox pertain to the technical design and construction of cryogenic storage tanks (Let us classify the same as “two-dimensional artistic works,”). They are clearly used for transporting liquefied natural gas, a critical part of industrial operations in the energy and logistics sectors (Thus having industrial applicability). The appellants producing these tanks (a 3D object), which are specifically used for the transportation of liquefied natural gas.
Under Section 52(1) (w) of the Copyright Act, inserted by the 2012 amendment Act (page 11), the reproduction of such technical drawings into a physicalobject does not amount to copyright infringement, provided that the object created was made for industrial application. Therefore, the appellants have almost all core elements of this provision except one.
The question now is whether these cryogenic storage tanks can be considered as functional part of a useful device or they would be classified as device in itself. A cryogenic storage tank is a specially designed container used to store extremely cold liquids like liquid nitrogen, oxygen, or liquefied natural gas (LNG) at very low temperatures. It keeps these substances in their liquid state using insulation and pressure control.
Now it is very crucial to determine the difference between a functional part of a device and a device. In simpler terms, a functional part could be something which is necessary for the proper functioning of the device. In my opinion, these cryogenic storage tanks should be classified as devices in themselves rather than mere functional parts. Although they may be integrated into larger systems, they independently perform a complete function i.e. storing and preserving liquids.
So far we have seen Courts interpreting the nature of the drawings under this provision, however there aren’t any decisions that have interpreted whether the exception can be interpreted broadly, for producing an entire device. Advocates Sidhant Goel and Sangeeta Goel explained that this provision does not permit a third party from creating the useful device itself. They support this understanding by reading it with Section 14(c)(1)(B) in the Copyright Act which grants the right to depict a 2 D work into 3 D to a copyright owner, and argue that it would have been oxymoronic if the 2012 amendment would grant the right for such an adaptation to the owners while also taking the same away through inserting the exception clause under Section 52.
So, one potential reason for non-application of this section could be the lack of clarity on whether the engineering drawings for cryogenic storage tanks provide an outline for creating a tank and not a part of the tank.
Though the above issues have not been discussed by the Court in its judgement, they indicate the lack of clarity vis a vis the interplay between design and copyright laws and hopefully this issue could be flagged and addressed in the retrial by the commercial court now.
Hat-tip to Prashant Reddy T. for drawing our attention to the missed opportunity to interpret Section 52(1)(w) in this case.