Woodland sues Hidesign over sling bag design4 min read . Updated: 21 Aug 2014, 12:33 AM IST
Woodland's parent company Aero filed Rs10 crore defamation suit against Hidesign, which had sued Aero for copyright infringement
New Delhi: Aero Group, the parent company of footwear and apparel manufacturer, Woodland India, and Hidesign India Pvt. Ltd are locked in a legal battle over the design of a classic sling bag which the latter claims has been copied by Aero, leading to charges of copyright infringement of the product sold by both companies.
Last week, Aero filed a ₹ 10 crore defamation suit in the Delhi high court against Hidesign, the Puducherry-based leather bags and accessories maker, which had sued shoes and apparel manufacturer Aero (Woodland) for copyright infringement and made the case public through a report in The Economic Times on 5 August. In the report, Hidesign was reported as alleging that Woodland was retailing a “copied" version of its 2010 range of sling bags, called the “Vespucci". Aero also sued The Economic Times.
In its legal notice to Woodland, Hidesign claimed sole ownership of copyrights in the artistic work over the designs, sketches and drawings (of its products) giving itself exclusive right to reproduce and distribute products under Section 14 of Copyright Act, 1957.
Woodland, which operates 400 stores in the country, claimed the charges were baseless and flawed. In response to the notice saying there was “misinterpretation" of the Copyright Act on behalf of Hidesign, the retailer claimed the bag’s design is “generic" and used by different brands.
Amol Dhillon, vice-president of planning and strategy at Woodland, said the company had been selling the sling bag since 2006-07. “You cannot claim that it is copied. This design has been in use for many years by brands across the world. The (allegation) is very far from the truth and we must make it known that we invest huge resources into creating original designs," he said.
As a sales and marketing exercise, Woodland, however, modifies or upgrades its products annually. The bag’s design was only recently noticed by Hidesign.
Dilip Kapur, president at Hidesign, said over the phone that Vespucci was created by the company’s design team in 2010.
“It is a highly detailed piece, with a lot of specific elements, and we found the same exact looking bag a few months ago at a Woodland store," Kapur said. Both bags are priced at ₹ 5,495.
Kapur said the design of the bag was under copyright, although he did not share details of the copyright protection. Woodland, meanwhile, said that since the bag is an industrially produced work, it does not have any such protection.
To be sure, copyright laws are applicable to more “aesthetic" works that are original and creative such as those related to art, music, books, etc., explained experts on the subject. “Firstly, it is important to appreciate that copyright and design protection are quite distinct and protected through separate laws," said Shamnad Basheer, an expert on intellectual property rights (IPR) laws and founder at SpicyIP, a blog on IPR.
Unlike copyright protection, which arises automatically the moment a work of art is created, in order for designs to be protected, they need to be registered under the Designs Act. Design protection is valid only for 15 years, which is far shorter than copyright protection. In order to avoid overlapping protection between the two regimes, copyright law clearly provides that the moment any design is industrially produced more than 50 times, it ceases to enjoy copyright protection as a work of art.
Ameet Datta, a partner at law firm Saikrishna and Associates, said this is a complex issue. “Attempts have been made in earlier cases to draw a distinction between a design per se and its underlying drawing and claiming that the root drawing is an artistic work and consequently should be protected as a copyrighted work. However, courts have earlier said that there is a difference between a work which is made purely for artistic merit and a work which is in essence a “manufacturing instruction". I would say that while it is not an open-and-shut case, it’s a tough one."
The legislative intent is quite clear: copyright law protects works of art that are not meant to be industrially applied. Whereas design law protects only those patterns, ornamentations and designs that are meant to be applied to industrial articles, Basheer explained. In the case at hand, he said, “it would appear that if Hidesign had not registered their design under the Designs Act, then they are effectively left with no IP protection at all. Neither design protection (since they have not registered) nor copyright protection, since they have produced more than 50 pieces of their bags."
Hidesign’s legal team declined to comment on the matter further as they are not authorized to do so or share details of the case. The company, in which French luxury goods retailer Louis Vuitton Moet Henessy (LVMH) took a stake through its venture arm L-Capital in 2007, asked Woodland to stop copying designs of the bag at the earliest in its notice.