The infringement of architectural works, in terms of their copyright and trademark, is an issue which requires a thoughtful understanding of the protection provided to works when they are distributed, reproduced, publicly displayed, performed, or further made into an imitative work, without taking the permission of the original copyright owner. Through the Berne Convention, the scope of “protected works” has been expanded to include architecture as well, and the Indian law regime provides protection to such architectural works under their uniform copyright law. Therefore, this article aims to understand the fundamentals of the field of architecture and the subsequent laws which exist today. The article further analyses the concept of providing trademark to buildings, through an analysis of the Hotel Taj Mahal Palace, and finally concludes with some recommendations on how the regime can be improved.
In today’s plethora of judgements, there is alost judgement that side-lined the sentiments of an architect over its own manifested and executed building. Raj Rewal, the Plaintiff, a renowned Indian architect, was overpowered by the ITPO as they proposed demolishing the two buildings he designed. Raj Rewal took the matter to Court and thus began the long war of litigation. The Court, however, sided with the defendants stating that under Article 300-A of the Constitution of India, “no person shall be deprived of his property save by authority of law“. This means that unless it has been expressly provided under law, no person can be deprived of his property – the property not being owned by the architect. Secondly, the Court highlighted that the requirement of urban planning overshadows the moral rights of an architect. The Court further stated that underSection 57 of the Copyright Act, there could not be any right for the Plaintiff, as an architect of the building. It also said that no cause of action is available to Plaintiff for the suit in the absence of such a right. As a parting note for the judgement, the Court did consider the architect’s plight. It stated that “the defendants Union of India and ITPO have erred in not so caring for the sentiment of and respecting the plaintiff and his work“. But to contradict and to quote the U.S. Supreme Court Judge Sonia Sotomayor, the Court observed, “We apply law to facts. We do not apply feelings to facts.“
Thus, we write this article to understand the fundamentals of architecture and thesubsequent laws that exist today.
The architectural works infringement issue requires a thoughtful understanding of the protection provided to works when they are distributed, reproduced, publicly displayed, performed, or further made into an imitative work without the original copyright owner’s permission. UnderSection 13 of the Copyright Act, the copyright only exists in the artistic design and character for architectural works. It is not further extended to the methods of construction processes involved. This means that while the architectural plans, buildings, and their drawings themselves can be copyrighted, it is impossible to copyright the construction and engineering principles involved in the process.
Different laws related to the artistic work’s copyright are included in other countries. Under the Indian law regime, the uniform copyright law protects such architectural works.
The Berne Convention
The Berne Convention came into force to protect the rights of artistic and literary work authors’ rights through an international enactment. Currently, the treaty has 177 signatories, including India. Over the years, the Convention has expanded the scope of “protected works“ to include architecture.
The Berne Convention requires the member countries to recognize the copyrights of other member countries if those copyrights have been published or performed in their country. This requirement means that the Indian copyright laws shall apply to any work published or performed in India, irrespective of where the work was initially created. The Convention contains three basic principles:
1. The Principle of National Treatment – This principle states that every member country must treat the works of the other member countries equally with the treatment of works of their national individuals. Therefore, no discrimination must occur, and equal treatment must occur at all times. This principle helps a nation get equal protection abroad for their original works.
2. Automatic Protection – No preconditioned formalities are required to protect the works, such as registration. Therefore, no publishers, authors, or makers are required to give written notice of their copyrighted work status to be protected by the law in that country.
3. Independence of Protection – This means that the enjoyment and exercise of rights granted to work are independent of the type of protection given in the origin country of the work. This is because their respective domestic laws govern protection provided in each member state, and only those laws shall apply to the work.
One of the landmark cases for Berne Convention laws in India was the caseof MRF Ltd. v. Metro Tyres Ltd. Through this case, the Court answered some crucial questions about India’s copyright regime. The judgment made it clear that copying is not limited to the actual duplication process but includes any imitation or reproduction of the original. The Court further highlighted that the copyright test laid down inR.G Anand v. M/s Deluxe Films and Ors. is not just limited to literary works but can additionally be applied to cinematograph films as well.
The Berne Convention currently has 38 articles and six special provisions specific to developing countries.Article 2 of the Convention governs the types of works that the Convention wishes to protect.Article 2(1) of the Berne Convention expects all member countries to extend their respective copyright protection laws to “works of . . . architecture . . . and three-dimensional works relative to . . . architecture“. However, despite including this requirement, there is no explicit definition related to “work of architecture” in the Berne Convention; however, it has been said that such works could be “incorporated in a building or other structure“. Further, the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) has incorporated the Convention’s mandate related to architectural copyright protection without providing any further definition or details related to what constitutes a work of architecture.
The Copyright Act, 1957
In India,Section 2(c) of the Copyright Act, 1957 (“Act”) includes “a work of architecture, or any other work of artistic craftsmanship”. Further, underSection 13 of the Act, copyright can be granted to various works, including artistic works. As perSection 22 of the Act, such copyright is valid for 60 years, which starts from the beginning of the next calendar year following the year when the author dies. Therefore, architectural designs, including “building, structure or the design of such model”, are provided copyright protection under the ambit of artistic works. However, it is essential to note that copyright protection, under artistic works, is provided only to original works. Hence, the designs must not be plagiarized in any manner.
Here, the architect (or the author) of the architectural design is provided moral rights underSection 57 of the Act. Therefore, the architect can claim authorship over the work and prevent the work from experiencing any distortion. The author can claim an injunction to stop the infringer from making use of the work. However, it might be possible for such a remedy, underSection 59 of the Act, not to be available to an architect when the construction of the building or any other structure has already been completed under theSpecific Relief Act. The only relief in such cases can be to go forward with damages suit or any criminal prosecutors against the infringers.
Moreover,Section 52 of the Act states that the fair use doctrine may be applied to architectural designs. Therefore, if any photos of the protected buildings are taken directly or in the background of any cinematograph film, the architect cannot claim infringement in such cases.
Architects can register their original works under the Copyright Registration System. While it is not essential to register the architectural designs in India, it isrecommendable that the authors do so, as this helps make their case more robust in case of any infringement. Further, India is a signatory to theBerne Convention. TheUniversal Copyright Convention helps protect works under the Berne Signatory countries, in India,without any need for registration.
Protection under Designs Act, 2000
Like theCopyright Act, theDesigns Act, 2000 also provides provisions for registering any Architectural work under clauses 25-03 and 25-99. Therefore, there are situations where a conflict may arise on whether the architectural works should be protected under theCopyright Act, 1957, or under theDesigns Act, 2000.
In such situations, if the owner of the artistic work applies for the registration of the design of the work underthe Designs Act, 1911 or under theDesigns Act, 2000, then in such cases, the copyright protection shall not be made available to such a design under theCopyright Act. Similarly, if it is possible to register a design under theDesigns Act, but such registration has not been done. In such a case, the copyright of such a design under theCopyright Act shall cease to be in force as soon as the article to which such a design has been applied has further been reproduced more than fifty times by the owner of the copyright or through his licensee.
The only question that needs to be asked for analyzing whether any design can be registered under theCopyright Act, 1957, is whether the copyright claimed in the matter can also come under the definition of design underSection 2(5) of the Designs Act, 1911. Therefore, the design must be inherently registrable toqualify under the Copyright Act, along with being new or original.
The Mischief Rule
The Mischief Rule is related to the understanding of the statutes in cases where there is any conflict between two laws or two provisions of law. The courts use this rule to make interpretations and determine faster solutions to confusion in the application procedure. InMicrofibers Inc. v. Girdhar & Co. & Anr., the central issue of dispute was whether fabrics’ ‘artistic work’ must be protected under theCopyright Act or theDesigns Act. While applying the mischief rule, the Court stated that “the mischief sought to be prevented is not the mischief of copying but the larger monopoly claimed by the design proponent despite commercial production“. Therefore, the Court held that if the design has been registered under theDesigns Act, such a design shall lose its copyright protection. However, suppose the design is not registered under the designs act. In that case, the design can continue to enjoy its copyright protection, as long as its application does not go beyond 50 times. Beyond 50, the design shall lose its copyright protection.
Further, the Delhi High Court, in the case ofHolland L.P. & Anr. vs A.D. Electro Steel Co. Pvt. Ltd., faced a similar situation. In this case, it was contended that Plaintiff, under Section 2(c) and Section 13 of theCopyright Act, has the “right to convert a two-dimensional artistic work into a three dimensional constructions“. It was further argued that ‘drawings’ can be copyrighted underSection 15(2) of the Copyright Act, and therefore, the copyright shall stay with the Plaintiff. However, the Court rejected Plaintiff’s contentions. It held that while the drawings can be registered under the Design Act, the copyright is lost as soon as the design is reproduced more than 50 times by any industrial process, after which itfalls under the public domain.
Trademarking Buildings: Analysis of the Hotel Taj Mahal Palace
Trademarking buildings, as a concept, first originated in the United States (U.S.). The landlords of building trademarks had the restricted right to use such trademarks to market such goods and services. Few other examples of trademarked buildings in the United States include the Empire State Building of New York, the New York Stock Exchange, the Art Deco Spire of Chrysler Building, and many others. This trend can also be seen in other countries, like the Eiffel Tower in France and the Sydney Opera House, which also come under the ambit of trademarked buildings.
Interestingly, India has also been a part of this shift. On 19th June 2017, Indian Hotels Company Limited (IHCL) became the first Indian companyto receive the external design protection of the Taj Mahal Palace Hotel, which is a building that has been a part of Mumbai’s aesthetic appeal since 1903.
The primary reason it is preferred to secure buildings through trademarks is to protect any copy architecture of the building and shield the unique design and heritage of the building. The dual test of graphical representation is satisfied by structures, along with them being capable of operating as an indication of the source. Therefore, they are eligible for securing trademark protection. Through trademarks, the owners also try to limit and control the depictions of these landmarks in artistic works, unfair commercial use, pictorial representations, etc.
Another reason why trademarks were secured for this iconic structure might be becauseIHCL wanted to protect the structure from any productions capable of tarnishing or diluting the established image of the Taj Mahal Palace Hotel. For example – if an alcohol manufacturer prints the design of the Taj Mahal Palace Hotel on their bottles, then such a move could tarnish the building’s reputation, along with diluting the trademark status allotted to the building. Therefore, now that the building has obtained the trademark, IHCL has got the following powers related to the building:
(i) Nobody can use the trademarked image of the Taj Hotel for any commercial purpose without obtaining a license from the company. If anything is sold with the trademarked image without the license, then such an act shall be considered an infringement action.
(ii) Anybody wanting to use the Taj Hotel, or its pictures and designs, for any commercial use must obtain the owners’ prior permission, which may also include the licensing fee payment given to the company.
IHCL has sought the trademark registration of the building underClass 43, which includes “services providing food and drink; temporary accommodation”.
However, a point of contention is why IHCL did not go for a design or copyright registration and instead preferred a trademark registration. Copyright registration can only protect the aesthetic building value, and design registration can only help increase the commercial revenue generation of the building. However, a trademark registration helps increase the commercial revenue generation of the building through licensing. Still, it further indicates that the landmark suggests, and often acts, as a source indicator, along with protecting its individuality. Moreover, trademark protection lasts much longer than a design or copyright registration.
Therefore, now that the Taj Palace Hotel has obtained a trademark registration, it is not possible to use the image of the building, or its design, for any commercial purpose without obtaining a license through IHCL.
Another essential building that obtained its trademark registration in June 2018 was the 28-storey Phiroze Jeejeebhoy Towers, a landmark synonymous with Mumbai’s Dalal Street.
Trademarks as Violation of Citizen’s Right to Cultural Heritage
One of the problematic aspects of building trademarks is the unfair restrictions imposed on the use of the marks, even if the mark is incidental to the purpose of its use. For example, if someone wanted to design and sell a postcard with a Taj Mahal Palace image on it, they will first have to take the prior permission of the IHCL group, pay royalties for their use, and only then can they go ahead with the task.
Provided that Taj Mahal Palace is often synonymous with the city of Mumbai itself, it is argued that the right to use the building’s image must be entrusted to the public and not to a private entity like IHCL. Therefore, trademarks do severely curtail the public’s right to use the mark, even in cases where the user does not infringe the trademark owner’s rights.
It is important to note that in buildings, not every ‘commercial use’ can infringe the owners’ rights. Unlike the copyright law in India, theIndian trademark law does not contain any provision of ‘fair use, that can allow third parties to make use of any copyrighted material for educational purposes, research, etc. Hence, it is harder for third parties to defend their use of the Taj Palace Hotel building without licensing.
Such an adverse effect is mainly felt by photographers, as they can be blamed for exploiting IHCL’s trademark if they do not pay adequate royalties to IHCL. This idea contrasts with the ‘freedom of panorama’, as provided in copyright law, which allows photographers to capture videos and paintings of architectural works, which have been permanently shifted in a public place.
One of the strongest arguments on why trademarks should not be allowed for buildings is that the architectural structures often become synonymous with the cultural heritage. The India Gate in New Delhi, the Victoria Terminus building in Mumbai, and the Charminar Fort in Hyderabad, are some famous examples wherein the cities are identified through the presence of these buildings. Therefore, a private entity should not be allowed to control a city’s cultural heritage, as the building belongs to each person residing in the town for the‘public good’.
Relying on the case ofValue Group, Inc. v. Mendham Lake Estates, L.P., there existed “several intellectual property protections recognize construction and design professionals” investments, which were a result of significant time, money and energy, spent in the original architectural work creation, along with the allowance of competitors to “profit from another competitors’ hard work and injure that competitor simultaneously“. India is yet to reach such a sophisticated and articulate form of regime. The issue with the Indian arrangement of laws is the need to articulate understating of the field to make more robust laws to understand the panoramic view where all rules and sentiments subsist cordially. Today, we gain protection under the Copyright Law; however, to seek a remedy, we lean towards the Trademarks and Designs Act; do we wonder how streamlined the whole dynamics would be if the entire issue fell under the same umbrella? For example, the prime usage of spaces such as doors and windows, and other rudimentary additions to any building’s structure, are not in itself protected by copyright law. But again, to back this situation, theDelhi High Court put a judgment that a harmonious construction between the Copyright Act and the Design Act shall act as a balancing team to solve this issue. It is appropriate to say that an in-depth understanding of the field of architecture and the three corresponding laws is necessary to attain decent protection and remedies to architectural work.
About the Author
Ms. Kahinee Bhatt is an Associate at Khaitan & Co., Mumbai.
Muskaan Aggarwal is a 3rd Year Law Student at the Jindal Global University (JGU), Sonipat.
Managing Editor: Naman Anand
Editors-in-Chief: Akanksha Goel & Aakaansha Arya
Senior Editor: Jhalak Srivastav
Associate Editor: Muskaan Aggarwal
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Preferred Method of Citation
Kahinee Bhatt and Muskaan Aggarwal, “Copyright Protection to Architectural Works and Trademark Protection to Buildings under the Indian Regime” (IJPIEL, 15 December 2021).