Continuing the discussion on the Supreme Court’s decision in Cryogas Equipment Private Limited v. Inox India Limited and Others, Aditya Bhargava writes on the question of “functional utility” and how it informs the two pronged test by the Court. Aditya is a third-year law student at the National Law School of India University, Bangalore. His previous posts can be accessed here.
[Part II] Cryogas Judgment: Supreme Court Stops Copyright from ‘Gaslighting’ Design
By Aditya Bhargava
In the first part of the post, I looked at how jurisprudence has evolved from the Microfibres case in 2006 up to the present case in Cryogas. I also dissected the two-prong test laid down by the Supreme Court. In this part, I aim to take the discussion further by addressing the question of ‘functional utility’ and examine how the same has evolved over the years and what it means for the two-prong test.
- Functionality vs. Aesthetics: The ‘Dominant Purpose’ and Global Parallels
The notion of “functional utility” as a test comes straight from design law principles. Indian courts picked this up from English law, where ever since the House of Lords’ decision in Amp v. Utilux (1972), it’s been held that a protectable design requires a blend of industrial efficiency and visual appeal. If a shape is purely dictated by function (and has no eye-candy element), it isn’t eligible for design protection. Lord Reid held in Amp v. Utilux that if a designer only cared about making something work and not about looks, but the end product incidentally has an appealing shape, it shouldn’t be denied protection just because the designer’s intent was utilitarian. In essence, intent doesn’t matter as much as the end result – the design must have at least some visual appeal not solely necessitated by function, or it falls outside design law. This became known as the functional vs. aesthetic dichotomy in design cases. The Privy Council in Interlego AG v. Tyco (1988, involving LEGO blocks) reaffirmed that features of shape solely functional (studs on LEGO bricks, for example) are not “designs” in the legal sense.
Indian courts imported this test in cases like Smithkline Beecham v. Hindustan Lever (Delhi HC 1999), where a toothbrush with an “S” shaped handle was at issue. The court examined if that S-curve was just for ergonomic grip (functional) or gave any aesthetic distinctiveness. It concluded the design was primarily functional, so the toothbrush design was not entitled to design registration. Similarly, the Madras High Court in TAFE v. Standard Combines (2012) dealing with tractor parts held that one must scrutinize each part – if serious questions exist on whether those shapes are functional or ornamental, the suit shouldn’t be thrown out without trial. (In fact, in that case the court refused to reject the plaint at the outset, echoing exactly what the Supreme Court has done in Cryogas – let the matter go to evidence if it’s not clear). The principle was later affirmed by a Division Bench in 2014, cementing that functional features in a product design get no protection. A Full Bench of the Delhi HC in Mohan Lal v. Sona Paint (2013) also supported this approach while dealing with mirror frame designs – although that case was more about whether one can simultaneously claim passing off along with design infringement (a separate tangent that we need not delve into).
By the 2010s, the “functional utility” test was orthodox doctrine in India. The Bombay High Court in Whirlpool of India v. Videocon (2014) put a fine point on it, suggesting a practical yardstick: “the conundrum of functionality may be resolved by noting if the function could be achieved with some other shape”. In other words, if you could alter the design without losing functionality, then the original shape likely has some aesthetic choice to it and isn’t purely functional. If no other shape would work, then the design is purely utilitarian and unprotectable. This is a handy way to gauge dominant purpose – e.g., a round wheel is functional (square wheels just won’t do!), but the pattern on the wheel’s hubcap could be changed without affecting the ride, so that pattern is aesthetic.
Interestingly, one Bombay High Court case, Photoquip India Ltd. v. Delhi Photo Store (2014), combined the Section 15(2) analysis with the functional test in a conjunctive way. In Photoquip, the plaintiff’s lighting equipment drawings were at issue. The court (Justice Gautam Patel) reasoned that Section 15(2) only talks about “designs,” not artistic works – and the Designs Act explicitly excludes artistic works from the definition of design. So first, one must see if the plaintiff’s drawings are “artistic works” at all; if they depict purely functional structures with no visual appeal, they might not even count as a design under the Designs Act’s definition. In that scenario, Section 15(2) wouldn’t kick in because it only strips copyright from works that qualify as designs. The Photoquip court found the drawings were “skilled diagrams” of products with no aesthetic element – essentially blueprints serving a functional purpose only, and thus “They are not, therefore, designs.” The upshot was that those drawings, not being “designs,” could retain copyright as artistic works (since 15(2) didn’t apply to them). This is a bit of a twist: a purely functional drawing isn’t protectable as a design (no aesthetic), but as a technical drawing it’s still an artistic work under copyright (Indian copyright law doesn’t require artistic merit). However, enforcing such a copyright gets tricky – you could stop someone from copying the drawing itself, but could you stop them from making the functional object shown in the drawing? Some courts (and scholars) have suggested that making the object could infringe if it’s an “indirect copy” of the drawing, but this remains a nuanced debate.
The Supreme Court’s two-pronged test essentially incorporates Photoquip’s logic:
Step 1 filters out what is an artistic work vs. design, and
Step 2 (functional test) ensures a work is truly a “design” (with visual appeal) before depriving it of copyright. If it’s not, copyright may still subsist (since it was never a “design” to begin with). This prevents an overly broad use of Section 15(2) to even kill copyrights in purely functional drawings.
The Supreme Court explicitly drew a parallel with the U.S. “conceptual separability” doctrine while discussing the functional utility test. Under U.S. copyright law, useful articles (like clothing, furniture, appliances, etc.) are not protected by copyright per se, but any artistic features on them can be protected if they can be identified and exist independently of the article’s functional aspects. This is codified in the U.S. Copyright Act (17 U.S.C. §101), and the U.S. Supreme Court in Star Athletica v. Varsity Brands (2017) articulated a clear test: an artistic feature on a useful item is copyrightable if
(1) it can be perceived separately as a standalone artwork (two- or three-dimensional), and
(2) if imagined apart from the item, it would qualify as a protectable work on its own. For example, the cheerleader uniform designs in Star Athletica – stripes and chevrons – were found to be separable artistic elements (they could be viewed as graphic designs independently, and thus copyrighted) even though the uniform itself is a useful article. India’s approach is slightly different in mechanics (we have a separate Designs Act), but the philosophical kinship is evident.
The Supreme Court in Cryogas noted that the Indian functional utility analysis “closely parallels” the conceptual separability standard. Both ask, in essence, whether the artistic aspect of a work can be distinguished from the utilitarian aspect. If yes, the artistic part can get long-term protection (copyright in the U.S.; or remain an artistic work in India until 50 copies threshold). If not, the work is treated as a functional design (eligible only for design-type protection, if at all). The Court even harked back to Mazer v. Stein (U.S. Sup Court 1954) – the famous case of statuettes used as lamps – where the Court upheld copyright in the statuette (art) even though it was used as a lamp base, and said others could make lamps with similar functional shape as long as they didn’t copy the statuette itself. That was an early forerunner to separability (the statuette was separable from the lamp function) and influenced the statutory language that “works of artistic craftsmanship…shall include artistic works insofar as their form is concerned, but not their utilitarian aspects”.
In international frameworks too, India’s stance aligns with norms. The TRIPS Agreement (Article 25) requires members to protect industrial designs, but explicitly allows excluding designs “dictated essentially by technical or functional considerations” from protection – exactly what the functional utility test accomplishes. TRIPS also sets a minimum term of 10 years for designs (India provides 10 + 5 extension = 15 years under the Designs Act) and leaves it to members how to avoid overlaps with copyright. Many jurisdictions struggle with this overlap: for instance, until a few years ago, UK law limited the copyright term on industrially applied artistic works to 25 years (to prevent “backdoor” extensions via copyright), similar in spirit to our Section 15(2).
Countries like the U.S. channel most industrial aesthetic creations into the design patent system or the separability test for copyright, while the EU provides community design rights and limits copyright only to designs that also qualify as “works of art.” India’s approach of a bright-line 50 copies rule and mandatory design registration for longer protection is a relatively strict but clear policy choice. The Cryogas judgment reaffirms that this choice is deliberate and rooted in ensuring balance – short-term exclusivity for industrial innovations, long-term rights for true artistic creativity.
- Implications and Conclusion: A New Clarity in Copyright-Design Law
The Supreme Court’s decision in Cryogas v. Inox is a definitive statement that should bring much-needed clarity to a previously grey area (perhaps we had “50 shades” of grey, given the 50-copy rule!). By articulating the two-pronged test, the Court has provided a clear roadmap for judges and practitioners dealing with mixed copyright-design disputes.
For industry players, the judgment sends a message: choose your IP weapon wisely. If you have invested effort in developing a product design that has visual appeal and will be mass-produced, file for a design registration – don’t rely on just copyright of drawings or sculptural works, because once you scale up production, you risk losing the copyright entirely. Conversely, if you are working with an artistic creation that might later be used on a product, be mindful of the 50-copy limit – if you exceed it without a design registration, you’re donating your design to the public (at least from a copyright standpoint).
Ultimately, the ruling strikes a judicious balance: encouraging true artistic creativity (with the reward of lengthy copyright) while ensuring that industrially applied art enters the public domain in a reasonable time unless secured via design rights. In the grand tug-of-war between Copyright and Design, the Supreme Court has finally drawn a firm line.