T-1274-84
Bayliner Marine Corporation (Plaintiff)
v.
Dorai Boats Ltd. (Defendant)
INDEXED AS: BAYLINER MARINE CORP. v. DORAL BOATS LTD.
Trial Division, Walsh J.—Toronto, May 27, 28,
29, 30, 31, Ottawa, June 14, 1985.
Copyright — Infringement — Defendant manufacturing
boats without designs by stripping down plaintiff's, using parts
for plug — Design of plugs altered — Whether Copyright Act
s. 46 giving copyright in deck and hull drawings — Whether
copyright protecting only drawing reproduction or boat manu
facture — Whether only protection under Patent Act or Indus
trial Design Act — Whether boats architectural works of art
protected by copyright — Whether defendant's boats so rede
signed as not copies — Whether drawings artistic or literary
work within Copyright Act, s. 2 — Copyright infringed by
copying intermediate copy of original work — Defendant
having made sufficient design changes to one boat not to
infringe copyright — Injunction granted as to other boat —
Copyright Act, R.S.C. 1970, c. C-30, ss. 2, 3, 46 — The
Copyright Act, 1921, S.C. 1921, c. 24 — Copyright Act, 1911,
1 & 2 Geo. 5, c. 46, s. 22 — Designs Rules, 1920, St. R. & O.,
1920, No. 337, R. 89 — Patents and Designs Act, 1907, 7 Edw.
7, c. 29 — Industrial Design and Union Label Act, R.S.C.
1952, c. 150, s. 11 — Patent Act, R.S.C. 1970, c. P-4 — Trade
Marks Act, R.S.C. 1970, c. T-10.
Industrial design — Design drawings for boats — Whether
excluded from copyright protection under Copyright Act, s. 46
as registrable under Industrial Design Act — R. 11(1), Indus
trial Designs Rules limiting protection to specified materials
— Recent Federal Court decisions followed for judicial comity
— Boat designs not registrable under Industrial Design Act,
R.S.C. 1970, c. I-8 — Industrial Designs Rules, C.R.C.,
c. 964, R. 11(1) — Copyright Act, R.S.C. 1970, c. C-30, s. 46.
Construction of statutes — Word "and" in R. 11(1), Indus
trial Designs Rules — Whether to be interpreted disjunctively
or conjunctively — Word 'or" used in comparable British
Rule — Argued that restrictive interpretation of R. 11 impair
ing value of Industrial Design Act — Court must disregard
consequences of interpretation — Matter for Parliament —
Recent Federal Court decisions apparently favouring conjunc
tive interpretation — Followed for judicial comity — Indus
trial Design Act, R.S.C. 1970, c. I-8 — Industrial Designs
Rules, C.R.C., c. 964, R. 11(1).
The plaintiff is a large American manufacturer of pleasure
boats of various models sold across Canada. The defendant is
the largest Canadian manufacturer of boats 14 to 25 feet in
length. The plaintiff prepares design drawings of the hull and
deck then produces a three dimensional plug. A mould is made
from the plug and fibreglass is inserted to the desired thickness
to produce the hull of the boat. The same applies to the
superstructure mould which is then fitted to the hull when the
boat is assembled. The defendant admits that it produces its
boats without engineering designs by stripping down the plain
tiff's boats and using the parts to produce a plug for its own
boats. The basic design of the plugs are then altered to differen
tiate them from the plaintiff's boats.
The plaintiff alleges copyright infringement in the drawings
and boats made therefrom for two boats known as the 1650
Capri Bowrider and 2450 Ciera. The defendant raises several
defences: (1) section 46 of the Copyright Act does not give the
plaintiff any enforceable copyright in the drawings of the deck
and hull; (2) the plaintiffs copyright only protects the repro
duction of the drawings, not the manufacture of the boats; (3)
the boats can only be protected under the Patent Act or
Industrial Design Act; (4) the boats do not constitute architec
tural works of art subject to copyright protection; (5) the
defendant's boats are substantially redesigned and thus do not
constitute copies of the plaintiff's.
Held, an injunction will issue with respect to one of the
boats.
The issue of whether the plaintiffs drawings can enjoy
copyright protection must be considered in light of section 46 of
the Copyright Act and Rule 11(1) of the Industrial Designs
Rules. Section 46 excludes from copyright protection designs
registrable under the Industrial Design Act except designs not
intended to be used as models or to be multiplied by any
industrial process. Rule 11(1) states that a design is deemed to
be used as a model or multiplied by industrial process where the
design is reproduced more than fifty times and where it is
applied to certain materials namely printed paper hangings,
carpets, textile and lace. The defendant argues that the "and"
found in Rule 11(1) must be interpreted disjunctively.
Reference was made to British case law since the British and
Canadian Rules were at one time identical. However, in 1954
the Canadian Rules were amended by adding the conjunction
"and" where the British Rule now uses the word "or". British
case law must therefore be examined carefully. The addition of
"and" would appear to reinforce the conjunctive interpretation
of Rule 11 thus limiting industrial design protection to articles
enumerated in paragraph (b).
Two recent judgments of Mr. Justice Strayer confirm this
limitation. In Royal Doulton Tableware Limited v. Cassidy's
Ltd., which dealt with trade mark and copyright of a floral
design applied to dishes, it was held that for an article to be
deemed to be multiplied by industrial process hence excluded
from copyright protection, it must be intended to be reproduced
over fifty times and applied to certain materials. Porcelain and
china not being among the materials specified, they are not
excepted from protection under the Copyright Act. This opin
ion was reiterated in the case of Inter!ego AG et al. v. Irwin
Toy Limited et al. dealing with children's building blocks.
Although the same conclusion as in the Royal Doulton case
was reached, the significance of the word "and" was not
discussed. However, it would appear that it was interpreted
conjunctively.
Counsel for the defendant contends that such a restrictive
interpretation of Rule 11 would greatly diminish the usefulness
of the Industrial Design Act. However, in interpreting a statute
the Court must not look at the consequences of the interpreta
tion. Overcoming this interpretation is the responsibility of
Parliament. Even if the use of the word "and" may seem
unfortunate, it is difficult to conclude that the legislative
draftsman made an error. Furthermore, stare decisis and
comity of judgments require that recent decisions of the Court
be followed. The resulting conclusion is that the plaintiffs
designs could not be registered under the Industrial Design Act
but were subject to copyright protection.
To determine if the plaintiffs designs are subject to copy
right protection, it is necessary to decide if the drawings fall
within the definitions of "artistic work" or "literary work"
found in section 2 of the Copyright Act. In the present case, the
defendant's boats were admittedly copied from a stripped down
model of the plaintiffs boats and not from the drawings
themselves. This raises the question of whether copyright can
be infringed by copying an intermediate copy of the original
work. Fox in The Canadian Law of Copyright and Industrial
Designs states that infringement will occur whether the defend
ant copied the work directly or from an intermediate copy. He
further states that maps, charts and plans are subject to
copyright being included in the definitions of "book" and
"literary work". Although a boat can be attractive in appear-
ance, it is difficult to include it in the definition of "architectur-
al works of art" as a "building or structure having an artistic
character or design". Section 3 of the Copyright Act and case
law indicate that drawings are clearly subject to copyright
protection as literary works "in any material form whatever".
The defendant further argues that the drawings represent
engineering specs and not pictorial representations of the boats.
A three dimensional article constitutes infringement of a two
dimensional drawing only if what is seen in three dimensions
reproduces what is seen in two dimensions. Although the
drawings in the present case do not show what the finished
product will look like, it is evident that the boats are derived
from the drawings.
The defendant made sufficient changes in the basic design of
the 2450 Ciera so that its boat does not infringe the plaintiff's
copyright. However, the TRX constitutes an infringing copy of
the plaintiff's 1650 Capri as the differences in design are minor
and insignificant. The differences must be substantial so as to
leave no doubt that the boats are in fact different. The defen
dant failed to establish this with respect to the TRX. The
defendant's president admitted copying the plaintiff's boats but
appeared to believe that this was not a practice prohibited by
law. Although this practice must be discouraged, it would be
ruinous to the defendant to require it to deliver up all TRX
boats in its possession just at the start of the season. Damages
by conversion or awarding exemplary or punitive damages
would be unduly severe. An injunction will issue against
making any further boats of the TRX line. Damages and an
accounting of profits will be determined by reference.
CASES JUDICIALLY CONSIDERED
APPLIED:
Royal Doulton Tableware Limited v. Cassidy's Ltd.,
[1986] 1 F.C. 357; (1984) 1 C.P.R. (3d) 214 (T.D.);
Interlego AG et al. v. Irwin Toy Limited et al. (1985), 3
C.P.R. (3d) 476 (F.C.T.D.); Armstrong Cork Canada
Ltd. v. Domco Industries Ltd., [1981] 2 F.C. 510; (1980),
54 C.P.R. (2d) 155 (C.A.).
CONSIDERED:
Ware v. Anglo-Italian Commercial Agency, Ltd. (No. 1),
MacGillivray's Copyright Cases 1917 to 1923, 346
(Ch.D.); Con Planck, Ld. v. Kolynos Incorporated,
[1925] 2 K.B. 804; Pytram, Ld. v. Models (Leicester),
Ld., [1930] 1 Ch. 639; King Features Syndicate, Incor
porated v. Kleemann (O. & M.), Ld., [1941] A.C. 417
(H.L.); Eldon Industries Inc. v. Reliable Toy Co. Ltd.
and National Sales Incentives Ltd. (1964), 44 C.P.R. 239
(Ont. H.C.) affirmed sub nom. Eldon Industries Inc. v.
Reliable Toy Co. Ltd. (1965), 48 C.P.R. 109 (Ont.
C.A.); Vidal c. Artro Inc., [1976] C.S. 1155 (Qué.);
Mainetti S.P.A. v. E.R.A. Display Co. Ltd. (1984), 80
C.P.R. (2d) 206 (F.C.T.D.); Bata Industs. Ltd. v. War-
rington Inc. (1985), 5 C.I.P.R. 223 (F.C.T.D.); Kilving-
ton Bros. Ltd. v. Goldberg (1957), 28 C.P.R. 13 (Ont.
H.C.); Dorling v. Honnor and Honnor Marine Ltd.,
[1963] R.P.C. 205 (Ch.D.); affirmed [1964] R.P.C. 160
(C.A.); L.B. (Plastics) Ltd. v. Swish Products Ltd.,
[1979] R.P.C. 551 (Ch.D.); Burke & Margot Burke, Ld.
v. Spicers Dress Designs, [1936] Ch. 400; Cuisenaire v.
Reed, [1963] V.R. 719 (Aust. S.C.); Cuisenaire v. South
West Imports Ltd. (1967), 54 C.P.R. 1 (Ex.Ct.); The
Bulman Group Ltd. v. "One Write" Accounting Systems
Ltd., [1982] 2 F.C. 327; 62 C.P.R. (2d) 149 (T.D.).
COUNSEL:
Donald F. Sim, Q.C. and Kenneth D. McKay
for plaintiff.
Robert H. Barrigar, Q.C., Timothy J. Sinnott
and P.E. Kieran for defendant.
SOLICITORS:
Sim, Hughes, Toronto, for plaintiff.
Barrigar & Oyen, Ottawa, for defendant.
EDITOR'S NOTE
An appeal from this judgment has now been
allowed. The appeal case, Doral Boats Ltd. v.
Bayliner Marine Corporation, A-536-85, judgment
of the Federal Court of Appeal rendered June 13,
1986, will be reported in this Series.
The following are the reasons for judgment
rendered in English by
WALSH J.: The plaintiff claims copyright
infringement in the drawings and boats made
therefrom of plaintiff for two boats known as the
1650 Capri Bowrider and 2450 Ciera which have
been allegedly copied by the defendant for boats
sold in Canada under the name TRX which
allegedly infringes the plaintiff's copyright in the
1650 Capri Bowrider and the Citation which
allegedly infringes the plaintiffs copyright in the
2450 Ciera. The former are power cruisers pow
ered either by a stern drive motor or by an out-
board, being approximately sixteen to seventeen
feet in length and the latter are cabin cruisers
powered by inboard motors, approximately
twenty-four to twenty-five feet in length.
The defendant has several defences. First is a
defence in law that section 46 of the Copyright Act
[R.S.C. 1970, c. C-301 does not give the plaintiff
any enforceable copyright in the drawings of the
deck and hull sections of the said boats. It is also
alleged that the deck and hull structure of the
defendant's boats are not copies or reproductions
of the drawings, the deck and hull sections of the
defendant's boats being produced from substan
tially re-engineered and redesigned boats derived
from, but not a copy of, the plaintiff's boats.
In connection with the legal argument it is also
alleged that if the plaintiff has copyrights in the
drawings, such copyrights protect only the repro
duction of the drawings as such and not the manu
facture of an article of commerce, namely the
boat, made in conformity with the drawings. The
contention is that the boats themselves must be
protected under the Patent Act [R.S.C. 1970, c.
P-4] or Industrial Design Act [R.S.C. 1970, c. I-8]
which the plaintiff has not done. It is also contend
ed that the boats are not architectural works of art
subject to protection under the Copyright Act.
The plaintiff is a very large American manufac
turer of boats, building some 650 boats a week of
various models in 12 different plants. The defen
dant, which operates in Grand'Mère, Quebec,
commenced business in 1973 and gradually
increased its sales volume, keeping abreast of sty
ling trends and in the year ending July 1985 it is
anticipated that sales will have amounted to
$12,500,000. It is said to be the largest manufac
turer in Canada of boats 14 to 25 feet in length.
One dealer, John Morton, testified as an expert
that the defendant's boats do not undersell those of
the plaintiff. In 1983 the retail price for the Bayl-
iner 2450 would be about $35,000 and the Citation
anywhere from $32,000 to $33,000, but that the
Bayliner now sells for around $38,000 or less and
the Citation for $37,000 to $38,000. The Capri
sells for about $13,500 but he has been told that
the TRX can be had for as low as $11,500. The
figures are somewhat vague and are no doubt
subject to negociation and depending upon what
added equipment may be placed on the boats. The
defendant's boats do of course benefit currently
from the very favourable exchange rates, but
against this the plaintiff has the benefit of much
greater volume of production. The defendant con
tends that its boats are somewhat more luxurious
in their fittings and are designed to catch the eye
by their appearance. The plaintiff's boats are
described as very good family boats. Peter Hanna,
founder and president of the defendant, states that
price is not as important a consideration for his
customers as a streamlined modern appearance so
that his customers can be proud to drive their
boats around and be admired by the onlookers.
This is to some extent corroborated by a witness
David Purcell, sales manager of Ken Mason
Marine in Nepean, who stated that when they
order the Doral Citation they order it with all
options available but they order the Bayliner with
fewer options to keep the price down, so that the
Citation might sell for $43,000 and the Bayliner
for $37,000. He compared them to the difference
between an Oldsmobile and a Chevrolet.
Designers at Bayliner first prepare design draw
ings of the hull section and deck or superstructure
sections separately. Because of the curved tapered
configuration of boats, in the hull sections espe
cially, a number of measurements appear on tables
on the plans giving coordinates at perhaps one and
one half foot intervals from bow to stern. These
drawings are used to produce what is called a plug
which is a three dimensional rendering of the boat
to be constructed and prepared from the drawing.
A mould is then made from the plug and in
manufacturing the boat fibreglass mat of the
colour desired is first laid down in the mould.
Fibreglass is then inserted either mechanically or
by hand to the desired thickness and this creates
the hull of the boat. The same applies to the
superstructure mould which of course has to fit on
to the hull when the boat is assembled. The plain
tiff produced four drawings, namely the hull and
deck section of each boat, and a fifth drawing
since the hull for the 2450 Ciera was a modifica
tion of an earlier design of the plaintiff for which
the drawing was also produced.
The defendant frankly admits that it produces
its boats without the use of any engineering design,
nor does it have an engineering design department
as such. It purchased a 1650 Capri and stripped it
down taking the superstructure and hull sections
apart and using these to make the plug for its
boats. The same thing was done to the plaintiff's
2450 Ciera. This practice which the defendant's
witness Hanna stated was common with the boat
builders in the area of Quebec of which he had
personal knowledge, may well be followed else
where although he was not permitted to testify as
to this, short circuits the costly design process as
no engineering drawings have to be made nor a
plug from them, as the plugs are made from the
plaintiff's own boats with the alterations made on
them. Evidence as to the differences made was
gone into in great length and will be dealt with
later when it comes time to determine whether the
defendant's boats are in fact copies of the plain
tiff's. The legal issue, whether the plaintiff's boats
can enjoy copyright protection under the provi
sions of the Canadian Copyright Act, must first be
considered. Section 46 of the Copyright Act,
R.S.C. 1970, c. C-30 reads as follows:
46. (1) This Act does not apply to designs capable of being
registered under the Industrial Design Act, except designs that,
though capable of being so registered, are not used or intended
to be used as models or patterns to be multiplied by any
industrial process.
(2) General rules, under the Industrial Design Act, may be
made for determining the conditions under which a design shall
be deemed to be used for such purposes as aforesaid.
This gives a cross-reference to the Industrial
Design Act, R.S.C. 1970, c. I-8 and Rule 11(1) of
the Industrial Designs Rules, C.R.C., c. 964 reads
as follows:
11. (1) A design shall be deemed to be used as a model or
pattern to be multiplied by any industrial process within the
meaning of section 46 of the Copyright Act,
(a) where the design is reproduced or is intended to be
reproduced in more than 50 single articles, unless all the
articles in which the design is reproduced or is intended to be
reproduced together form only a single set as defined in
subsection 2; and
(b) where the design is to be applied to
(i) printed paper hangings,
(ii) carpets, floor cloths, or oil cloths manufactured or sold
in lengths or pieces,
(iii) textile piece goods, or textile goods manufactured or
sold in lengths or pieces, and
(iv) lace, not made by hand.
The defendant contends that the plaintiff's designs
should have been registered under this statute and
that they do not enjoy protection under the Copy
right Act. Extensive jurisprudence was referred to
by both parties primarily in Britain where at one
time the statutes were identical, the Canadian
statute of 1921 [The Copyright Act, 1921, S.C.
1921, c. 24] being based on section 22 of the
United Kingdom 1911 statute [Copyright Act,
1911, 1 & 2 Geo. 5, c. 46]. Canadian Industrial
Design Rule 11 was also identical to the British
Rule made pursuant to said section 22. In 1949
however, the United Kingdom equivalent of our
Industrial Design Act and Rules was amended, the
word "or" being included in the section equivalent
to paragraph 11(1)(a) of the Industrial Designs
Rules, and in 1954 the Canadian Rules were
amended by adding the conjunction "and" where
the British Rule now uses the word "or". The
British jurisprudence therefore has to be carefully
examined.
In support of this legal contention, the defen
dant's counsel referred to considerable jurispru
dence which was subsequently answered on the
jurisprudence referred to by the plaintiffs counsel.
The defendant referred to the case of Ware v.
Anglo-Italian Commercial Agency, Ltd. (No. 1),
MacGillivray's Copyright Cases 1917 to 1923,
page 346 (Ch.D.), a case for infringement of an
automobile body design. The defendant referred to
section 22 of the British Copyright Act, 1911 and
to Rule 89 of the Designs Rules, 1920 [St. R. &
0., 1920, No. 337], which correspond to section 46
of the Canadian Copyright Act and Rule 11 of the
Rules under the Canadian Industrial Design Act.
At that time the conjunction "and" did not appear
at the conclusion of paragraph (a) under the Brit-
ish or Canadian Rules. The plaintiff said that he
had only built or caused to be built six body
designs and did not intend to build or cause to be
built more than 50 bodies. The Court, refusing to
accept this conclusion, held that the drawing for a
motor-lorry body was excluded from copyright
protection on the ground that it was capable of
registration under the Patents and Designs Act,
1907 [7 Edw. 7, c. 29]. Oddly enough, counsel
advise that there are apparently no American or
Canadian cases dealing with automobile designs
although the various competing manufacturers are
undoubtedly inspired to some extent by designs of
their competitors and follow changes and style
trends very closely as in the case of boats.
The case of Con Planck, Ld. v. Kolynos Incor
porated, [1925] 2 K.B. 804, dealt with the conver
sion of sketches into advertising placards. It was
held that the sketches were designs capable of
being registered under the Patents and Designs
Act, 1907, as they were used or intended to be
used as models or patterns to be multiplied by an
industrial process, so the Copyright Act, 1911, by
reason of section 22, did not apply to them, and as
they had not been registered as designs under the
Act of 1907 plaintiffs' action failed. While the
case did not turn on the distinction between a
design and an artistic work Justice Sankey in
rendering the judgment of the Court stated that
the distinction was one of great difficulty, and that
it was undesirable to lay down any definition. At
page 815 he states:
It may be right to say, as is said in the last edition of Copinger's
Law of Copyright, 5th ed., p. 97, that the fundamental distinc
tion between a design and a simple artistic work lies in the
applicability of the former to some other article. The plaintiffs
contended that a design is something produced as a pattern to
assist one in making some other article which shall appeal to
the eye; a thing which has no market in itself but is meant to be
applied to some other article. I am disposed to think that these
definitions are approximately correct, but I am far from saying
that they assist the plaintiffs in the present case.
It must be noted that the Canadian statute con
tains no definition of what is an industrial design
unlike the British Act which had a definition.
In the case of Pytram, Ld. v. Models (Leicester),
Ld., [ 1930] 1 Ch. 639 dealing with models of a
wolf-cub's head produced from a mould in papier-
mâché intended to be displayed as their totem on
the tops of poles by the Boy Scouts Association it
was held that this was an artistic work in which
copyright would subsist but since by the provisions
of section 22 of that Act it was capable of being
registered under the Patents and Designs Act,
1907 and as it did not come within the exception
that it was not intended to be used as a model to
be multiplied by an industrial process it should
have been registered as an industrial design.
Reference was also made in this connection to
the case of King Features Syndicate, Incorporated
v. Kleemann (O. & M.), Ld., [1941] A.C. 417
(H.L.) in which at pages 436-437 it is stated:
By the Designs Rules, 1920 (St. R. & 0. 1920, No. 337), it is
provided (inter alia) that a design (other than textile designs
which are differently dealt with) is to be deemed to come
within s. 22, if reproduced or intended to be reproduced in more
than fifty articles not together constituting a set. The designs of
the dolls, toys and brooches were admittedly used and intended
to be used in more than fifty articles which were to be made in
or imported into the United Kingdom by the respondents.
The defendant argues that this oblique reference
to "(other than textile designs which are different
ly dealt with)" indicates a disjunctive interpreta
tion should be given to our Rule 11, but this
argument would not appear to be valid now that
the word "and" has been added at the end of
paragraph (a). By contrast, in 1949 the adding of
the word "or" in the British Rule would appear to
reinforce the disjunctive interpretation heretofore
made by the courts whereas the addition of the
conjunction "and" in Canada may well have the
opposite effect. The defendant's counsel submits
that there is no justification for an inference that
there was any intention to change the law in
Canada in 1954 when this alteration was made.
In the Ontario case of Eldon Industries Inc. v.
Reliable Toy Co. Ltd. and National Sales Incen
tives Ltd. (1964), 44 C.P.R. 239 (Ont. H.C.),
Chief Justice McRuer whose judgment was sus
tained by the Court of Appeal [sub nom. Eldon
Industries Inc. v. Reliable Toy Co. Ltd. (1965), 48
C.P.R. 109] discussed the problem at pages 255-
256. He stated that:
If a design is intended to be used as a model or pattern to be
multiplied and is capable of being registered under the Indus
trial Design and Union Label Act, R.S.C. 1952, c. 150, it is
excluded from the Copyright Act.
That does not affect artistic works that are produced for
their artistic quality only.
He would apply this if only a small quantity
were to be produced. He discusses section 11 of the
Industrial Design and Union Label Act [R.S.C.
1952, c. 150] which reads as follows:
11. During the existence of such exclusive right, whether of
the entire or partial use of such design, no person shall, without
the licence in writing of the registered proprietor, or, if
assigned, of his assignee, apply for the purposes of sale such
design or a fraudulent imitation thereof to the ornamenting of
any article of manufacture or other article to which an industri
al design may be applied or attached, or publish, sell or expose
for sale or use, any such article as aforesaid to which such
design or fraudulent imitation thereof has been applied.
and states:
This is, to say the least, a very confusing section. There is no
definition in the Canadian Act of "industrial design". There
have been observations in cases that have indicated a judicial
view (although not a finding) that an industrial design does not
include mere configuration. Configuration is included under the
definition of "industrial design" under the English Act. There
is considerable strength lent to the argument that configuration
is not within the Canadian Act by the confused language used
in s. 11.
He points out that under the Industrial Design
and Union Label Act the exclusive right is valid
only for five years renewable for a further period
of five years concluding:
The purpose of that is to promote trade, and we are dealing
with trade, not with rare works of art.
The defendant points out that although the word
"and" was in the Canadian Industrial Designs
Rules at the time of this judgment, it would
appear that it was not interpreted as being con
junctive as the judgment did not discuss this nor
attempt to limit the application to the sort of
designs set out in paragraph (b) of subsection
11(1).
The Quebec Superior Court in the case of Vidal
c. Artro Inc., [1976] C.S. 1155 dealing with metal
sculptures from which moulds were made to serve
as prototypes for the copies also discussed section
46 of the Copyright Act and Rule 11 of the
Industrial Design Act and again concluded that
since more than 50 of the sculptures were to be
reproduced a claim under the Copyright Act must
fail. It did not discuss the significance of the word
"and", nor whether industrial design is to be lim
ited to articles enumerated in paragraph (b).
The defendant must overcome, however, two
recent judgments of Mr. Justice Strayer in this
Court which make this limitation. In the case of
Royal Doulton Tableware Limited v. Cassidy's
Ltd., [1986] 1 F.C. 357; (1984), 1 C.P.R. (3d) 214
(T.D.) which dealt with trade mark as well as
copyright of floral design applied to dishes, the
Court while maintaining the plaintiff's right to a
copyright registration refused to grant an injunc
tion since there was nothing to indicate that the
defendant reproduced or intended to reproduce the
pattern in question. In dealing with the question of
whether the design should have been registered
under the Industrial Design Act, Justice Strayer
stated at pages 379 F.C.; 231 C.P.R.:
By Rule 11 [Industrial Designs Rules, C.R.C., c. 964] of the
rules made under the Industrial Design Act, it is clear that to
be deemed to be so used for multiplication by an industrial
process, the design must be reproduced in more than 50 single
articles (admittedly the case here) and must be applied to
certain kinds of materials therein specified such as paper
hangings, carpets, textiles, or lace. There is no mention of
porcelain or china. Therefore it is clear that a design for
application to china tableware is not a design deemed to be
intended for multiplication by an industrial process and there-
fore is not excepted from the protection of the Copyright Act
by subsection 46(1) thereof.
This opinion was reiterated by Justice Strayer in
the case of Interlego AG et al. v. Irwin Toy
Limited et al. (1985), 3 C.P.R. (3d) 476
(F.C.T.D.), judgment dated February 1, 1985
dealing with children's building blocks which
action also was not limited to copyright but also
made claims of patent, trade mark infringement
and passing off. At page 486 of the judgment,
Justice Strayer states:
I might add that a further attack on the existence of copyright
was mounted by counsel for the defendants on the basis of s-s.
46(1) of the Copyright Act which provides that the Act does
not apply to designs capable of being registered under the
Industrial Design Act, R.S.C. 1970, c. I-8. Counsel for the
defendants made no mention of s-s. 46(2), but counsel for the
plaintiffs contended that that subsection limits the effect of s-s.
46(1) to such designs as are deemed by the rules made under
the Industrial Design Act to be registrable under the latter Act.
I have examined those rules and have come to the same
conclusion as I did in Royal Doulton Tableware Ltd. et al. v.
Cassidy's Ltd.-Cassidy's Ltée (Fed. Ct. T.D., June 29, 1984,
unreported at pp. 22-3 [now reported 1 C.P.R. (3d) 214 at p.
231]) namely, that the design in question here is not deemed by
the rules to be one intended to be multiplied by an industrial
process and is thus not excluded from the application of the
Copyright Act by s-s. 46(1) thereof.
Although he refers to having reached the same
conclusion as in the Royal Doulton case he does
not discuss the effect of subsection 46(2), and in
neither case is the significance of the word "and"
and whether it must be interpreted disjunctively or
conjunctively discussed by him, although by itali
cizing it in the Royal Doulton case it would appear
that he interprets it conjunctively so that in order
for the article to be deemed to be one to be
multiplied in the industrial process and hence
excluded from registration under the Copyright
Act it must not only be intended to be reproduced
in more than 50 single articles but also to be
applied to certain kinds of materials specified in
paragraph (b) such as paper hangings, carpets,
textiles or lace. The Court was informed that the
Royal Doulton judgment was appealed but the
appeal was desisted from but that the Interlego
case is pending in appeal. Since both cases
involved a number of other serious issues under
other statutes, however, the issue of the restrictive
interpretation given by Justice Strayer to the
Industrial Design Act may not be definitively
decided.
The defendant's counsel contends and one must
agree with him that to give such a restrictive
interpretation to Rule 11 will greatly diminish the
usefulness of the Industrial Design Act, but in
interpreting a statute the Court should not look at
the consequences of the interpretation, and if the
interpretation has the effect of weakening or inter
fering with the intended function of the statute, or,
as in this case, the Regulation made by virtue of
the statute, it is up to Parliament by legislation, or
the Cabinet by an appropriate amending Order in
Council as the case may be to overcome this
interpretation.
The defendant submits in argument a very inter
esting memorandum in support of the contention
that the word "and" can be used disjunctively as
well as conjunctively and also that the word
"deemed" does not purport to be exhaustive and
we must look at the context and intent to deter
mine the meaning to be given. In fact, an example
of the use of the word "and" disjunctively is found
in subparagraph (b)(iii) of subsection 11(1) where
the four examples of articles to which the design is
to be applied are clearly disjunctive. Counsel
speculates that the presence of the word "and" at
the end of paragraph (a) in 1954 is merely a
matter of legislative drafting and not done with the
intent of making paragraphs (a) and (b) conjunc
tive, as this would defeat the purpose of the Act.
It was further argued that it is difficult to apply
paragraph (a) and decide whether a design can be
reproduced in more than 50 single articles if the
design is limited to the sort of articles referred to
in paragraph (b) none of which are produced as
single articles but rather in rolls and subsequently
cut into desired lengths. The draftsman appears to
have applied two different tests with respect to
registration of designs pursuant to section 46 of
the Copyright Act. While these arguments are
persuasive, and the use of the word "and" rather
than the word "or" which appears in the British
Rules is perhaps unfortunate, the Canadian Rules
were amended some five years after the British
Rules, and it is difficult to conclude that the
legislative draftsman and the Order in Council
approving the Rule would have accidentally or
erroneously used the word "and" instead of the
word "or", nor is this argument sufficient to per
suade me to overlook the principle of stare decisis
and the principle of comity of judgments, which,
although occasionally ignored, it is desirable to
maintain. For a statement of this principle see
Armstrong Cork Canada Ltd. v. Domco Industries
Ltd., [1981] 2 F.C. 510; (1980), 54 C.P.R. (2d)
155, at pages 518 F.C.; 161-162 C.P.R. where the
judgment of the Federal Court of Appeal states:
Similarly, in this case I am of the opinion that, whether or
not the principle of stare decisis applies to this Court, sound
judicial administration requires that recent earlier decisions of
the Court should be followed.
The two judgments of Justice Strayer are two
recent judgments of this Court and not yet set
aside by appeal and should be followed. The
resulting conclusion is that the plaintiff's designs
could not have been registered under the Industri
al Design Act and hence were available for copy
right protection. While the plaintiff did eventually
register the Canadian copyright for the designs in
question nothing turns on this as whether copy
right was registered or not the plaintiff is entitled
to the protection of the Copyright Act. Registra
tion of a copyright presents no problems as, unlike
registrations under the Patent Act, Trade Marks
Act [R.S.C. 1970, c. T-101 or Industrial Design
Act such registrations do not have to be proved by
an examiner. The mere registration, therefore, is
not determinative of the issue as to whether they
should have been registered under the Industrial
Design Act rather than by virtue of the Copyright
Act.
I am supported in the conclusion I have reached
on this serious legal issue by the argument and
authorities submitted in rebuttal on behalf of the
plaintiff. As the plaintiff points out, even leaving
aside the Rule 11(1) (b) argument, section 46 and
Rule 11(1) (a) deny copyright only to such designs
as are used or intended for use as a model or
pattern to be reproduced or intended to be repro
duced by an industrial process in more than 50
copies. It was not intended that the drawings
themselves would be reproduced in more than 50
copies or that they themselves constituted a model
or pattern, and the same applies to the boats that
the defendant copied. It was further argued that
the hand laying of fibreglass within a mould which
is the defendant's method of construction is not an
industrial process, although I disagree with this
latter argument.
It was also further argued that designs that are
primarily functional where the more significant
design features are hidden and not intended to be
admired should not be the subject of industrial
design. In support of this reference was made to
the case of Mainetti S.P.A. v. E.R.A. Display Co.
Ltd. (1984), 80 C.P.R. (2d) 206 (F.C.T.D.) deal
ing with an industrial design registration for coat
hangers. At page 224 the judgment states:
It is only a design that can be protected by the Industrial
Design Act which gives no protection against the function
served by the object, in this case the hangers.
At page 226 the judgment states:
I find therefore that both designs are primarily functional
and that a hanger of this sort, where the more significant
design features are hidden and which is not intended to be
admired by or sold to the public at large in any event, should
not have been subject to industrial design registration and
should be expunged from the register pursuant to s. 22(1) of
the Industrial Design Act.
A further argument affecting the plaintiff on
the legal issue is that its drawings, moulds, plugs
and boats are not capable of industrial design
protection in Canada because they do not possess
the degree of novelty required of a design. In the
recent unreported case of Bata Industs. Ltd. v.
Warrington Inc. (1985), 5 C.I.P.R. 223, a judg
ment of March 27th, 1985 Madam Justice Reed of
this Court discussed this question of the degree of
originality required for industrial design registra
tion. At pages 231-232 the judgment states:
This jurisprudence demands a higher degree of originality than
is required with regard to copyright. It seems to involve at least
a spark of inspiration on the part of the designer either in
creating an entirely new design or in hitting upon a new use for
an old one. It should be noted that one of the dictionary
definitions of "original" is "novel in character or style, inven
tive, creative" (The Concise Oxford Dictionary (6th ed.,
1976)).
In this connection reference was also made to the
case of Kilvington Bros. Ltd. v. Goldberg (1957),
28 C.P.R. 13 where Judson J. of the Ontario High
Court referred to the jurisprudence under section
46. At page 17 of his judgment he states:
Exhibit 1 is a design for a tombstone including its external
shape and ornamentation. It is a design within the meaning of
the definition given in Clatworthy & Son Ltd. v. Dale Display
Fixtures Ltd., [1929], 3 D.L.R. 11 at p. 12, S.C.R. 429 at p.
431. There are three decisions of the Exchequer Court (Kauf-
man Rubber Co. v. Miner Rubber Co., [1926], 1 D.L.R. 505,
Ex.C.R. 26; Can. Wm. A. Rogers Ltd. v. Internat'l Silver Co.
of Canada Ltd., [1932] Ex.C.R. 63; and Renwal Mfg. Co. Inc.
v. Reliable Toy Co., 9 C.P.R. 67, [1949] Ex.C.R. 188) which
hold that the Trade Mark and Design Act applies not to the
article itself, but only to its ornamentation. Counsel for the
defendant submits that these cases are in conflict with the
Clatworthy case and that designs for external shapes have been
registered for years. It is unnecessary for me to deal with this
submission because before s. 46 can operate I must find that it
is a design capable of being registered under the Industrial
Design and Union Label Act, and before I can so find, this
design must be original in the sense of novel. This is clearly
stated in the Clatworthy case and the other cases in the
Exchequer Court. The test adopted by the Court in the Clat-
worthy case is stated in these terms (p. 13 D.L.R., p. 432
S.C.R.): "There must be the exercise of intellectual activity so
as to originate, that is to say suggest for the first time,
something which had not occurred to anyone before as to
applying by some manual, mechanical or chemical means some
pattern, shape, or ornament to some special subject-matter to
which it had not been applied before."
In my consideration of the question of originality under the
Copyright Act, I stated that, in my opinion there was no new
idea in the plaintiff's design nor any new application of old
ideas. Nevertheless, it was an original artistic work and as such
entitled to copyright. But the lack of novelty prevents its
registration under the Design Act.
A further argument of the plaintiff on this issue
is based on subsection 14(1) of the Industrial
Design Act which requires that in order for a
design to be protected it shall be registered within
one year from the date of publication thereof in
Canada. The plaintiff's designs for the boats have
certainly not been published in Canada or else
where and I have some doubt as to whether sales
of the boats themselves constitute publication of
the design, although possibly the photographs in
the advertising brochures may do so. In any event,
this is a further argument which may well indicate
that the designs could not have been registered at
the time the issue arose under the provisions of the
Industrial Design Act.
Having rejected the defendant's argument in
law that the plaintiff's boats cannot be protected
by the Copyright Act as the designs should have
been registered under the Industrial Design Act, it
is now necessary to consider the other issues
raised, and examine the factual evidence.
The plaintiff, in support of its contention that its
drawings are literary works as plans or artistic
works as drawings within the meaning of the
Copyright Act and that the Ciera and Capri hulls,
decks, boats and moulds therefore are architectur
al works and thus artistic works or otherwise
proper subject matter for copyright, refers to the
definitions in section 2 of the Copyright Act as
follows:
2.....
"architectural work of art" means any building or structure
having an artistic character or design, in respect of such
character or design, or any model for such building or
structure, but the protection afforded by this Act is confined
to the artistic character and design, and does not extend to
processes or methods of construction;
"artistic work" includes works of painting, drawing, sculpture
and artistic craftsmanship, and architectural works of art
and engravings and photographs;
"every original literary, dramatic, musical and artistic work"
includes every original production in the literary, scientific or
artistic domain, whatever may be the mode or form of its
expression, such as books, pamphlets, and other writings,
lectures, dramatic or dramatico-musical works, musical
works or compositions with or without words, illustrations,
sketches, and plastic works relative to geography, topogra
phy, architecture or science;
"literary work" includes maps, charts, plans, tables, and
compilations.
Subsection 4(1) of the Act reads as follows:
4. (1) Subject to this Act, copyright shall subsist in Canada
for the term hereinafter mentioned, in every original literary,
dramatic, musical and artistic work, if the author was at the
date of the making of the work a British subject, a citizen or
subject of a foreign country that has adhered to the Convention
and the Additional Protocol thereto set out in Schedule II, or
resident within Her Majesty's Realms and Territories; and if,
in the case of a published work, the work was first published
within Her Majesty's Realms and Territories or in such foreign
country; but in no other works, except so far as the protection
conferred by this Act is extended as hereinafter provided to
foreign countries to which this Act does not extend.
Doctor Fox in his book The Canadian Law of
Copyright and Industrial Designs, second edition,
states at page 196:
An architectural work being, therefore, included within the
term "artistic work" copyright is, by virtue of s. 4, declared to
subsist in such a work.
The protection of the Canadian Copyright Act has
been extended to the United States pursuant to
subsection 4(2) of the Act by notice published in
the Canada Gazette dated December 26th, 1923 at
page 2157 to take effect as of January 1st, 1924. A
copyright must have originated from the author as
a result of substantial skill, industry or experience
employed by him, but otherwise does not have to
be novel. The copyright drawings in question were
made by the expert witness Clark Scarboro and by
Daryl Watson both of whom were in the employ of
the plaintiff at the time the designs were made and
it is not disputed that the plaintiff owns the copy
rights in them if they are suitable for copyright
protection.
In the present case it is not disputed that the
boats were copied (with many changes in the
design which the defendant claims prevents them
from being considered as infringing copies) from
the plaintiff's boats, and not from the designs for
the boats which the defendant did not see or even
from the moulds for the boats made from such
designs. There is therefore a serious issue as to
whether copyright can be infringed by copying an
intermediate copy of the original work. Fox at
pages 329 and 330 has this to say in the matter:
There will, of course, be infringement whether the defendant
copied the work directly from the work protected by copyright,
or whether he reproduced it from memory, or derived it in
directly from an intermediate copy, and it makes no difference
that the intermediate copy is unprotected. While in order to
succeed a plaintiff must show that the copyright work is the
source from which the infringing work is derived, it need not be
the direct source. As Simonds J. said in King Features Syndi
cate Inc. v. Kleemann Ltd., [1940] 2 All E.R. 355 at 359: "It
must be immaterial whether the infringing article is derived
directly or indirectly from the original work. The standard is
objective. The question is whether or not the original work, or a
substantial part thereof, has been reproduced. If it has been,
then it is no answer to say that it has been copied from a work
which was itself, whether licensed or unlicensed, a copy of the
original."
At page 331 the author refers to the case of
Dorling v. Honnor and Honnor Marine Ltd.,
[1963] R.P.C. 205 (Ch.D.); [1964] R.P.C. 160
(C.A.) in which the plaintiff was the owner of
copyright in plans for boats. The defendant manu
factured infringing parts of boats and kits of parts.
The Court of Appeal held that this constituted
infringement of the copyright in the plaintiff's
plans. The defendant contends however that this is
no authority in Canada.
This British case deals with the question whether the plaintiff
might enjoy copyright protection for plans for a kit of parts to
make a boat, or whether such plans should instead have been
subject to industrial design protection. The case is of no persua
sive value in Canada because it turns on provisions of both the
U.K. copyright legislation and the U.K. industrial design legis
lation which appeared for the first time in the 1949 and 1956
amendments. These amendments have no Canadian counter
parts.
Specifically, Rule 26 of the Designs Rules 1949 (U.K.)
expressly precluded "plans" from industrial design protection.
There is not and never has been any such rule in Canada.
Furthermore and very importantly, the case involved an
interpretation of section 7 of the U.K. Act (which has no
Canadian counterpart) which denied protection to a kit of parts
which was intended for sale to amateur boat builders (as
distinct from industrial or trade use of the parts). This statu
tory basis on which Dorling rests is completely absent in
Canada; furthermore, on the facts of this case there is an
industrial and trade use of the two parts (deck and hull) of the
boats in isssue.
Finally, Dorling rests upon an interpretation of section 10 of
the Copyright Act (1956, U.K.) which dealt with the circum
stances in which concurrent protection under the U.K. copy
right and industrial design legislation is possible. There is not
and never has been any such provision in the Canadian
legislation.
At page 105 Fox states:
Maps, charts and plans are properly the subject of copyright,
being included within the definition of "book" and of "literary
work".
Support for this is found inter alia in the leading
case of L.B. (Plastics) Ltd. v. Swish Products Ltd.,
[1979] R.P.C. 551 (Ch.D.) in which it is stated at
page 566:
Since at least 1963, in a series of decisions given in the High
Court, it has been conceded or held that drawings of the
character of these drawings are artistic works within section 3
of the Copyright Act.
This conclusion refers, however to the Dorling v.
Honnor and Honnor Marine Ltd. case (supra).
Reference was also made to subsection 3(1) of
the Copyright Act which reads in part as follows:
3. (1) For the purposes of this Act, "copyright" means the
sole right to produce or reproduce the work or any substantial
part thereof in any material form whatever .... [Emphasis
mine.]
Fox at page 381 states:
Under the Copyright Act, the sole right to produce or
reproduce sketches or drawings or any substantial part thereof
in any material form whatsoever covers a reproduction of a
substantial part of the sketches or of any of them in three-
dimensional form, as by dolls or toys. Thus, in King Features
Syndicate Inc. v. Kleemann Ltd. [1941] 2 All E.R. 403 where
the defendant made plaster dolls or toys in the shape or figure
of a sailor represented in the popular cartoons or drawings of
"Popeye the Sailor", Lord Wright observed that "it was not
contested before this House that the dolls or toys were repro
ductions of a substantial part of the sample sketch selected
though in a different medium—namely, plaster—and in
coloured three-dimensional figures, as contrasted with the flat
published sketch in plain black-and-white."
The presence of the words "in any material form whatso
ever" in the present Act, such words not being found in the
Fine Arts Copyright Act, 1862, lays at rest any doubt that
might have been felt with regard to the infringement of a
two-dimensional drawing of a figure by a three-dimensional
representation of the same figure. As was said by Simonds J. in
King Features Syndicate Inc. v. Kleemann Ltd. [1940] 2 All
E.R. 355 at 358: "In my judgment, it would be contrary to the
plain meaning and spirit of the Act if a copy of an artistic work
were an infringement only if made in the same dimensions, so
that, for example, copyright in a sketch would not be infringed
if the exact design were reproduced either in a frieze made with
some measure of relief or in a sculptured pediment.
The defendant in disputing that a boat can be
considered as an architectural work of art refers to
section 23 of the Copyright Act as not allowing
injunctions where the construction of a "building
or other structure" which would infringe the copy
right has been commenced. The remedy such as
delivery up or recovery of possession of a building
or structure is not available because it is perma
nently affixed whereas there is no reason why a
boat cannot be delivered up. This, according to the
defendant's counsel, implies that a boat is not a
building or structure within the meaning of the
definition of architectural work of art in section 2
of the Copyright Act. The cases referred to by the
authorities such as Fox and Copinger relate to
things affixed to land. It was also argued that
there is nothing in section 46 which indicates that
it is inapplicable to architectural works if they do
include boats, as the boats are capable of being
mass produced by an industrial process and section
46 could be invoked. While boats can be attractive
in appearance, and in fact that is what all manu
facturers seek, and may be designed by marine
architects, I find it difficult to consider them as a
"building or structure having an artistic character
or design" so as to make them architectural works
of art within the meaning of the definition. This
would appear to be extending the word "structure"
beyond what would be the normal meaning of it
and what would appear to be the intent of the use
of this word in addition to the word "building" in
the definition. It would also not appear to be a
work "of art" since the definition is not simply "of
architectural work" but rather "architectural work
of art". [While this disposes of one of the plain
tiff's arguments it does not determine the case,
since it would appear that the drawings are clearly
subject to copyright as literary works and section 3
of the Copyright Act gives protection to the work
or any substantial part thereof "in any material
form whatever" and the weight of jurisprudence
seems to support the proposition that copying an
object made from a drawing, even if the drawing
itself is not used, constitutes an infringement.
The defendant further argues that the drawings
depict neither the plaintiff's boats nor the defen
dant's boats as made but merely constitute a set of
directions so that the boats may be made and are
engineering specifications and not pictorial
representations of what can be seen on the boats.
It was argued that a three dimensional article
constitutes infringement of a two dimensional
drawing only if the article which is seen in three
dimensions reproduces that which is seen in two
dimensions. Reference was made to the case of
Burke & Margot Burke, Ld. v. Spicers Dress
Designs, [ 1936] Ch. 400 where Mrs. Burke was
the author and owner of a copyright in an artistic
work namely a sketch of a lady's dress. The plain
tiff company made a dress from the design and the
defendants, without consent of the plaintiffs,
copied it. The action was dismissed on the ground
that the defendants' dress was not a reproduction
of the designer's copyrighted sketch within the
meaning of the British Copyright Act, 1911 and
also that the dress made by the plaintiff company
from the sketch was not an original work of artis
tic craftsmanship within the meaning of the Copy
right Act, 1911 as the plaintiff company itself was
not the originator of the artistic element in it.
Reference was also made to the Australian case in
the Supreme Court of Victoria of Cuisenaire v.
Reed, [1963] V.R. 719 in which at page 735 it is
stated:
It has been held however in Chabot v. Davies, supra, that an
architect's elevation representing a shop-front was infringed by
the erection of an actual shop-front including the elevation on
the ground that the same was a reproduction of the elevation in
a `material form'. It is submitted that this decision is confined
to cases in which the appearance of the complete building
appeals to the eye as being a reproduction of what appears in
the architect's plan or elevation, and that it would not be an
infringement of the copyright in a plan such as a ground plan to
erect a building thereon if the resulting erection bore no
resemblance to the plan, unless the resemblance was established
by dissection and measurement. This view would seem to follow
from the decision in Burke & Margot Burke Ltd. v. Spicer's
Dress Designs, supra, which was distinguished in the case just
referred to.
and again on the same page:
Where, as here, you have a literary copyright in certain tables
or compilations, there is in my view no infringement of the
copyright in those tables or compilations unless that which is
produced is itself something in the nature of a table or compila
tion which, whether it be in two dimensions or three dimen
sions, and whatever its material form, reproduces those tables.
In a subsequent Cuisenaire case in Canada that of
Cuisenaire y. South West Imports Ltd. (1967), 54
C.E.R. 1 (Ex.Ct.), Noël J. held that the coloured
Cuisenaire rods used as tools or counting sticks for
teaching arithmetic are not artistic works, artistic
works being intended to have an appeal to the
aesthetic senses and not just incidental appeal such
as the rods in question and that the aesthetic
appeal must be one of the important objects for
which the work is brought into being. At page 24
he discusses the King Features Syndicate, Incor
porated v. Kleemann (O. & M.), Ld. case, [1941]
A.C. 417 (H.L.) (the Popeye case) (supra) which
held that the defendants' dolls and brooches were
reproductions in a material form of the plaintiff's
original artistic work although they were not
copied directly from the plaintiffs' sketches but
rather from a reproduction in material form
derived therefrom. Justice Noël distinguishes this
finding stating at pages 24-25:
Although the above dolls can be considered as reproductions
of the plaintiffs' artistic work in the above case, plaintiff's rods,
however, cannot be considered as reproductions of his written
text (even if the all embracing words in s. 2 (y) are considered)
for the very reasons set down by Pape, J., in Cuisenaire v.
Reed, [1963] V.R. at pp. 735-6, which I adopt unreservedly:
He then refers to the quotation set out supra. He
also agrees with the statement made at page 733
of that case to the effect that "there can be no
doubt now that copyright in a work in two dimen
sions may be infringed by the production and sale
of an article in three dimensions", provided they
are in the nature of the things they reproduce. He
goes on to state [at pages 25-26]:
The plaintiff's rods, however, cannot, I repeat, be considered as
a reproduction of the tables or compilations in his book and the
words of Pape, J., in the above case at p. 734 are sufficiently
convincing in this regard:
.. what the defendants have done does not amount to a
reproduction of the plaintiff's tables or compilations. Each of
the cases referred to was a case in which there was a clear
visual resemblance between the alleged infringement and the
work in which copyright was alleged to subsist, sufficient to
warrant the conclusion that one has been copied from the
other. In this case there is no such visual resemblance
between either the table referred to in paragraph 1B of the
statement of claim, or the chart or compilation referred to in
paragraph 1C of the statement of claim."
and at the bottom of the same page he added:
.. In my view, a set of written directions is not 'repro-
duced' by the construction of an article made in accordance
with those directions. A reproduction must reproduce the
original, and here the original is in one case a set of words in
the form of a table and in the other case a series of plain and
coloured circles which are numbered and which are set out in
the form of a chart. In my view, the defendants' rods
reproduce neither."
In the case of L.B. (Plastics) Ltd. v. Swish
Products Ltd., [1979] R.P.C. 551 which the plain
tiff's counsel cites in support of his contentions,
Mr. Justice Whitford in the Chancery Division
states at page 574:
In fairly recent decisions Megarry, J. and Graham, J. have
indeed held that the correct approach is to compare object with
drawing and that in doing this some attention must be paid to
any written matter on the drawing. I may say that if I had been
of a different opinion I would in any event have followed their
respective judgments in this matter but I should like to make it
absolutely clear that I am in whole-hearted agreement with the
way in which they approached the question.
In Temple Instruments Ltd. v. Hollis Heels Ltd. [1973]
R.P.C. 15 at 17, Graham, J. observed of an argument taken by
the defendants under section 9(8):
"Their second point is that in looking at the drawings, and
each of them, both the legend at the bottom `Plastic divan
leg' and 'Scale full size', and all the quotations on the left
hand drawing showing such matters as sizes, diameters and
thicknesses of the relative part shown in the drawing must be
ignored. They say that this is so because artistic copyright
cannot exist in an idea and the legend and figures convey
ideas and are not artistic in themselves.
I find this entirely unreal and take the view that where as
here two sketches or drawings are included on a sheet and
obviously relate to the same article they can both be looked
at, both for the purpose of establishing the scope of the
copyright and for considering purposes of infringement.
Equally I think it is quite unreal when a section of an article
is shown in the drawing to ignore the fact, as is clear from
the wording, including the use of the word 'diameter', that it
is a section of a circular article".
It was argued by the plaintiff that the Burke case
can be distinguished as in it the plaintiff company
did not own the copyright in the dress which
belonged to the designer, and that what the Cuise-
naire cases held was that the rods were not literary
or architectural works and hence could not be
registered for copyright. While it is true that the
drawings in the present case do not show how the
finished boat will look I believe that the weight of
jurisprudence as indicated by the King Syndicate
and Swish cases now indicates that when one looks
at the plaintiff's two boats in question it can be
seen that they are derived from the drawings, and
while the drawings themselves were not copied by
the defendant, the intermediate object made from
them, in this case the boats, was admittedly
copied, save for the changes made by the defen
dant which must now be considered.
EDITOR'S NOTE
The Editor has chosen to omit some 12 pages
of the reasons for judgment in which His Lordship
reviewed the extensive evidence given by lay and
expert witnesses as to the differences in the
designs of the plaintiff's and the defendant's
boats.
My conclusions of fact are based on a full
consideration of all the evidence including details
of comparisons which of necessity have been omit
ted from these reasons. On this basis I conclude
that the defendant made sufficient differences in
the Citation that it does not infringe the plaintiffs
copyright in the 2450 Ciera. In the case of the
TRX however I have reached the opposite conclu
sion. The differences from the 1650 Capri are
relatively minor and insignificant. While they may
be noticeable to an expert and even perhaps to an
experienced dealer, an average customer would see
no significant differences except with respect to
finishing and equipment which is not protected by
copyright.
The practice of copying a boat design made by
another at considerable expense and making a plug
from this boat and then adding sufficient changes
to make it appear that the boat made from the
boat copied has in fact been turned into an original
design, while it may be widespread, is not one
which should be encouraged. Anyone who does
this does so at his own risk. While it is possible to
make sufficient changes in a design as to create an
original boat as I have found to be the case with
the Citation, the differences must be sufficiently
substantial as to leave no doubt that it is in fact
different in the end result. The defendant has
failed to do this with its TRX.
The question of damages should therefore now
be considered. While there has been a reference as
to damages, counsel suggested that the Court
should consider what sort of damages might be
awarded for copyright infringement, in the case of
the 1650 and 1600 Capri (the outboard version of
the 1650). The plaintiff, in addition to asking for
damages or accounting of profits, asks for exem
plary or punitive damages, damages for conversion
and interest.
The facts of this case, as it has been noted, are
somewhat unusual. The defendant admits making
moulds from the plaintiffs two boats which it
purchased for this purpose but its President
appears to honestly believe that this was a common
practice and not prohibited by law. He did not
however seek legal advice on this point. The ques
tion of whether copyright protection extended to
the plaintiff's boats or was limited to the designs
from which they were made, which were not them
selves directly copied, was a very serious legal
argument, raising the question as to whether they
could have been registered under the Industrial
Design Act, and that the plaintiff, by failing to do
so, cannot claim copyright protection. The defen
dant also apparently believed, and rightly so, as I
have concluded on the facts in the case of the
Citation, that if sufficient changes were made to
the boats which were being copied, an original
boat would be created which would not infringe
copyright. Section 21 of the Act provides that all
infringing copies or plates (in the present case this
would be moulds) used or intended to be used for
the production of the infringing copy are deemed
to be the property of the owner of the copyright
who may take proceedings for the recovery of the
possession thereof or in respect of the conversion
thereof. Section 22 provides that where proceed
ings are taken in infringement and the defendant
in his defence alleges that he was not aware of the
existence of the copyright in the work, the plaintiff
is not entitled to any remedy other than an injunc
tion in respect of the infringement if the defendant
proves that at the date of the infringement he was
not aware and had no reasonable ground for sus
pecting that copyright subsisted in the work. The
plaintiff however rightly contends that this section
cannot apply to the defendant and refers in this
connection to the case of The Bulman Group Ltd.
v. "One Write" Accounting Systems Ltd., [1982] 2
F.C. 327; 62 C.P.R. (2d) 149 (T.D.), in which Mr.
Justice Collier stated at pages 335-336 F.C.; 156
C.P.R.:
Mr. Palin, the defendant's general manager, testified as to a
practice among some companies in this line of business, to
deliberately copy, if they see a market, their competitor's
forms. For that reason, he assumed copyright did not subsist in
any business forms at all. That was, as I see it, an unwarranted
assumption to make.
The defendant was wrong, in law and in fact, in its view that
the plaintiff's forms could not be the subject of copyright.
The defendant, and its officers, have not proved, to my
satisfaction, they had "no reasonable grounds to suspect copy
right subsisted" in the forms. To my mind, there were reason
able grounds to assume copyright might well exist. The defen
dant chose to take that chance. A wrong assessment of the legal
and factual position cannot be an excuse to avert the remedy of
damages and an accounting of profits, as well as the other relief
claimed by the plaintiff.
That case dealt with business forms deliberately
copied by the defendant and has considerable
resemblance to the facts in the present case, save
that in the present case the defendant made sub
stantial, although in my finding insufficient,
changes to the TRX to avoid copyright infringe
ment. It would however be ruinous to the defen
dant to require it to deliver up all the TRX boats
in its possession to the plaintiff, especially just now
at the start of the season of maximum sales, when
no doubt the defendant's inventory is at a max
imum. The defendant must however immediately
and radically alter the design of its TRX for the
1985-86 season or withdraw it from inclusion in
preparing advertising brochures for it in time for
the boat shows to commence in the autumn. In
fact a special request was made by the defendant
to have a trial date set in this action before the end
of June since the change-over date is June 30th,
after which time it will have committed itself to a
course of action with respect to the production of
boat models for sale June 30th, 1986.
Work by the defendant on the TRX commenced
towards the latter part of August 1982 and con
tinued until November 1982 and many of these
boats will have been sold during the 1983 and
1984 boating seasons and no doubt many more
have been built for sale during the current 1985
boating season. To claim damages by conversion of
the value of all such boats so sold would be
inappropriate and I believe unduly severe in the
circumstances. The same I believe applies to the
awarding of exemplary or punitive damages
although certainly the principle that infringing
copying of this sort is not acceptable nor permissi
ble must be maintained. By October of 1983 the
defendant had notice of the plaintiff's claim for
copyright infringement and in fact proceedings
were commenced on June 14th, 1984. The defen
dant cannot therefore claim to have been in good
faith after October 1983, but took its chances and
continued its sales of the TRX in the 1984 boat
season and continued to manufacture them for sale
in the current season.
An injunction will issue therefore to take effect
forthwith against making any further boats of its
TRX line from moulds made from plugs with
minor alterations from the Capri 1650 of the
plaintiff. There will be no order however to deliver
up to the plaintiff TRX boats already so made.
Damages or an accounting of profits, to be deter
mined by a reference will be applicable to all TRX
boats sold by the defendant since October 1983.
While strictly speaking accounting of profits or
claims for damages commence from the date of
the first infringement, when the moulds were made
in the first infringing boat manufactured in
November 1982 for sale during the 1983 boat
season, I believe that in the circumstances of this
case the plaintiff should not insist on the mainte
nance of any such claim until after the notice to
desist was given. The damages or accounting of
profits should therefore be deemed to commence
for boats manufactured and sold in 1984 and the
current boat season including boats manufactured
up to the date of the injunction to be issued herein
and sold thereafter and the reference shall relate
to such claim, without any additional damages by
way of punitive damages or claim for conversion or
delivery up to the plaintiff of TRX boats already
manufactured.
You are being directed to the most recent version of the statute which may not be the version considered at the time of the judgment.