A-536-85
Dorat Boats Ltd. (Appellant)
v.
Bayliner Marine Corporation (Respondent)
INDEXED AS: BAYLINER MARINE CORP. V. DORAL BOATS LTD.
(F.C.A.)
Court of Appeal, Urie, Mahoney and Stone JJ.—
Toronto, May 13; Ottawa, June 13, 1986.
Copyright — Infringement — Appeal from trial judgment
finding copyright infringement of Bayliner's plans for run
about boat — Doral manufacturing boats by using stripped
superstructure and hull of Bayliner's boats to make plugs,
avoiding design process — Plans not subject of copyright —
Designs "capable of being registered" under Industrial Design
Act within meaning of Copyright Act, s. 46 — Copyright Act,
R.S.C. 1970, c. C-30, ss. 2, 3, 4, 5, 46, Schedule II, Schedule
III, art. 2.
Industrial design — Plans for hull and deck of boat design
registrable under Industrial Design Act, within meaning of
Copyright Act, s. 46 and not excluded from operation by
Industrial Designs Rules, s. 11 — Test for registrability of
design from Cimon Ltd. et al. v. Bench Made Furniture Corpn.
et al.: design to be "applied" to "ornamenting" of article —
Details of shape, distinguishing one pleasure boat from
another, ornamental — Industrial Design Act, R.S.C. 1970,
c. I-8, s. 14(1) — Industrial Designs Rules, C.R.C., c. 964,
R. 11(1),(2) — Copyright Act, R.S.C. 1970, c. C-30, s. 46.
Construction of statutes — Industrial Designs Rules, s.
11(1)(a) — Trial Judge following Royal Doulton Tableware
Limited v. Cassidy's Ltd., which interpreted "and" at end of s.
11(1)(a) conjunctively — "And" may be interpreted conjunc-
tively or disjunctively — "And" here intended to link joint and
several notions — Royal Doulton case overruled — Appeal
allowed — Trial Judge erred in construing s. 11 as excluding
application of Copyright Act, s. 46 — Industrial Designs
Rules, C.R.C., c. 964, R. 11.
This is an appeal and cross-appeal from a judgment of the
Trial Division finding that Dorat had infringed Bayliner's
copyright in the plans for a runabout boat. Dorai avoided the
costly design process by making plugs from one of Bayliner's
stripped down boats. Section 46 of the Copyright Act precludes
the Act from operating with respect to designs capable of
registration under the Industrial Design Act, except for designs
that are not intended to be models to be multiplied by an
industrial process. Subsection 11(1) of the Industrial Designs
Rules provides that a design shall be deemed to be used as a
model for multiplication by industrial process where (a) it is
intended to be reproduced in more than 50 single articles,
unless all the articles together form a single set; and (b) where
the design is to be applied to paper hangings, carpets, textiles
and lace. The Trial Judge followed the Royal Doulton case
which construed the "and" at the end of paragraph 11(1)(a) as
conjunctive. He found that subsection 11(1) of the Rules
excluded the operation of section 46 of the Copyright Act. The
issue here is whether Bayliner's plans are protected by copy
right under section 46.
Held, the appeal should be allowed.
In the Royal Doulton case, the Trial Judge construed the
"and" at the end of paragraph 11(1)(b) of the Rules in a
disjunctive sense. The commonality of the items in paragraph
11(1)(b) is that each is a product to which the same design is
applied repeatedly. The "and" at the end of paragraph
11(1)(a) has to be construed in the same sense, in order to
carry out the intention of the legislation. As was pointed out in
the Jeffrey Rogers Knitwear case, if a design must meet all the
criteria in paragraphs 11(1)(a) and (b), then no design can
qualify for registration under the Industrial Design Act.
The respondent intended to produce many more than 50
boats. Thus the boats are made by an industrial process. The
Trial Judge erred in finding that subsection 11(1) of the Rules
excluded the application of section 46 of the Copyright Act. A
question remains as to whether the designs are capable of being
registered under the Industrial Design Act. It was argued that
the drawings did not have the degree of novelty required of a
design, and that even if they were designs they were not
registrable because they were primarily functional. If the
subject-matter of the claimed copyright is a design within the
meaning of Industrial Design Act, it is subject of section 46 of
the Copyright Act as something "capable of being registered"
under the Industrial Design Act and therefore not subject to
copyright. According to Cimon Ltd. et al. v. Bench Made
Furniture Corpn. et al., "the sort of design that can be regis
tered is therefore a design to be `applied' to 'the ornamenting'
of an article". The general shape of the hull and superstructure
of a pleasure boat may be largely dictated by functional
requirements, but the details of that shape which distinguish
the appearance of one runabout from another are essentially
ornamental. Those details, are what make one runabout more
attractive than another. The designs disclosed by the plans in
issue are capable of being registered under the Industrial
Design Act within the meaning of section 46 of the Copyright
Act and are not excluded from the operation of that provision
by section 11 of the Industrial Designs Rules. The plans
themselves are not, therefore, subject of copyright.
CASES JUDICIALLY CONSIDERED
OVERRULED:
Royal Doulton Tableware Limited v. Cassidy's Ltd.,
[1986] 1 F.C. 357; (1984), 1 C.P.R. (3d) 214 (T.D.).
APPLIED:
Jeffrey Rogers Knitwear Productions Limited v. R.D.
International Style Collections Ltd., [1985] 2 F.C. 220; 6
C.P.R. (3d) 409 (T.D.); Cimon Ltd. et al. v. Bench Made
Furniture Corpn. et al., [1965] 1 Ex.C.R. 811.
DISTINGUISHED:
British Leyland et al. v. Armstrong Patents et al., judg
ment dated February 27, 1986, House of Lords, not yet
reported.
CONSIDERED:
Eldon Industries Inc. v. Reliable Toy Co. Ltd. (1965), 48
C.P.R. 109 (Ont. C.A.); affg. (1964), 44 C.P.R. 239
(Ont. H.C.); Vidal c. Artro Inc., [1976] C.S. 1155
(Que.).
REFERRED TO:
Interlego AG et al. v. Irwin Toy Ltd. et al. (1985), 3
C.P.R. (3d) 476 (F.C.T.D.).
COUNSEL:
Robert H. Barrigar, Q.C. and Kenneth E.
Sharpe for appellant.
Roger T. Hughes, Q.C. and Kenneth D.
McKay for respondent.
SOLICITORS:
Barrigar & Oyen, Ottawa, for appellant.
Sim, Hughes, Toronto, for respondent.
The following are the reasons for judgment
rendered in English by
MAHONEY J.: This is an appeal and a cross-
appeal from a judgment of the Trial Division,
[1986] 3 F.C. 346; (1985), 5 C.P.R. (3d) 289,
which found that the appellant, hereinafter "Dor-
al", had infringed the copyright of the respondent,
hereinafter "Bayliner", in the plans for the fibre
glass hull and deck of one boat and had not
infringed the copyright in the plans for another.
The boat, the copyright in whose plans were found
to have been infringed, is a runabout approximate
ly 16 1 / 2 feet in length. That, the copyright in whose
plans were found not to have been infringed, is a
cabin cruiser about 24 1 / 2 feet long. The learned
Trial Judge made the following findings of fact [at
pages 352-353 and 373 F.C.; 292-293 and 317
C.P.R.] as to the preparation and use of Bayliner's
plans and the alleged acts of infringement of the
copyright in them.
Designers at Bayliner first prepare design drawings of the
hull section and deck or superstructure sections separately.
Because of the curved tapered configuration of boats, in the
hull sections especially, 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 manufac
turing the boat fibreglass mat of the colour desired is first laid
down in the mould. Fibreglass is then inserted either mechani
cally 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 plaintiff 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 modification 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 plaintiffs 2450 Ciera. This
practice ... 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 plaintiffs own boats with the
alterations made on them.
My conclusions of fact are based on a full consideration of all
the evidence including details of comparisons which of necessity
have been omitted from these reasons. On this basis I conclude
that the defendant made sufficient differences in the Citation
that it does not infringe the plaintiff's copyright in the 2450
Ciera. In the case of the TRX however I have reached the
opposite conclusion. The differences from the 1650 Capri are
relatively minor and insignificant. While they may be notice
able 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.
Dorai now appeals against the finding that it
had infringed the copyright in the runabout's
drawings. Bayliner cross-appeals the finding of
non-infringement of the copyright in the cruiser's
drawings and also the Trial Judge's refusal of
certain remedies. It no longer asserts a claim for
exemplary or punitive damages. It does, however,
say that the learned Trial Judge erred in refusing
to order the delivery up of the infringing runabouts
and the runabout plugs and moulds, in refusing it
damages for conversion, in limiting its entitlement
to damages or an accounting of profits to those
arising after it had notified Dorai of the existence
of its plans and its claim to copyright in them and,
finally, in not awarding it both damages and an
accounting of profits rather than putting it to its
election.
I was not persuaded by either party that the
learned Trial Judge had erred in his findings of
fact. They were open to him on evidence he was
entirely entitled to accept. It follows that Doral's
appeal on the ground that the learned Trial Judge
erred in finding as a matter of fact that its run
about infringed the copyright in the runabout
plans fails. Likewise, the cross-appeal on the find
ing that Doral's cruiser did not infringe the copy
right in the cruiser plans also fails. What remains,
along with the cross-appeal as to remedies, is the
appeal on the grounds that: (a) Bayliner's plans
are not protected by copyright by virtue of section
46 of the Copyright Act, R.S.C. 1970, c. C-30, and
(b) as a matter of law, the copyright in a plan is
not infringed by the making of a copy of the object
made according to the plan.
The learned Trial Judge disposed of the first of
these arguments on the basis of judicial comity.
He considered it proper to follow another recent
Trial Division decision, Royal Doulton Tableware
Limited v. Cassidy's Ltd., [1986] 1 F.C. 357;
(1984), 1 C.P.R. (3d) 214. An appreciation of the
argument requires a fairly extensive reference to
the legislative scheme.
Article 2 of The Rome Copyright Convention,
1928, which is Schedule III to the Copyright Act,
by virtue of section 51, contains two pertinent
provisions.
(1) The term "literary and artistic works" shall include every
production in the literary, scientific and artistic domain, what
ever may be the mode or form of its expression, such as ...
illustrations, geographical charts, plans, sketches, and plastic
works relative to geography, topography, architecture or
science.
(4) Works of art applied to industrial purposes shall be
protected so far as the domestic legislation of each country
allows.
The foregoing provisions appear identical to those
of Schedule II to the Act, referred to in section 47,
the Revised Berne Convention, 1886. Canada has
adhered to those Conventions and given effect to
the particular provisions in the following legisla
tion.
The Copyright Act provides:
2. In this Act
"literary work" includes maps, charts, plans, tables, and
compilations;
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 ....
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 ....
5. The term for which copyright shall subsist shall, except as
otherwise expressly provided by this Act, be the life of the
author and a period of fifty years after his death.
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.
The Industrial Design Act, R.S.C. 1970, c. I - 8,
provides a maximum ten-year monopoly in a
design to its author in contrast to the lifetime-plus-
50-year monopoly provided under the Copyright
Act. With reference to section 46 of the Copyright
Act, section 11 of the Industrial Designs Rules,
C.R.C., c. 964, has been made, whereof subsec
tions (1) and (2) are pertinent.
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.
(2) For the purposes of this section, "set" means a number of
articles of the same general character ordinarily on sale to
gether, or intended to be used together, all bearing the same
design with or without modification not sufficient to alter the
character or not substantially affecting the identity thereof.
Royal Doulton v. Cassidy's dealt with a floral
pattern applied to china by an industrial process.
The learned Trial Judge held [at pages 379 F.C.;
231 C.P.R.], among other things, that:
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.
He went on to declare that one of the plaintiffs
was owner of copyright in the floral design. The
same Trial Judge reiterated his interpretation of
section 11 in Interlego AG et al. v. Irwin Toy Ltd.
et al. (1985), 3 C.P.R. (3d) 476 (F.C.T.D.), at
page 486. In neither case did he refer to earlier
decisions which had applied section 46 of the
Copyright Act nor, with respect, did he record the
analysis, if any, of regulation 11 that led him to a
result inconsistent with the earlier decisions.
I subscribe to the school that says "and" does
not mean "or" nor does "or" mean "and". I cannot
express my opinion better than to adopt the anal
ysis of E. A. Driedger in Construction of Statutes,
Second Edition (Toronto: Butterworths, 1983),
pages 15 and 16. "And" is a semantically ambig
uous conjunction. The notions which it links may
be intended to be regarded jointly or jointly and
severally.
It will be noted that, in the Royal Doulton case,
the Trial Judge plainly construed the "and" at the
end of subparagraph 11(1) (b) (iii) as linking items
to be treated severally as well as jointly. He para
phrased paragraph 11(1)(b) [at pages 379 F.C.;
231 C.P.R.] as listing "paper hangings, carpets,
textiles or lace". [My emphasis.] In my respectful
opinion the "and" at the end of paragraph
11(1)(a) was likewise intended to link joint and
several notions, not only joint notions. The com-
monality of the items comprised in paragraph
11(1)(b) is that each is a product to which the
same design is ordinarily applied repeatedly. The
"and" at the end of paragraph 11(1) (a) has to be
construed in the same sense in joining those items
with "a single set" as with "more than 50 single
articles". Whatever one's view of the concept of
more than 50 single articles jointly with some of
the items of paragraph 11(1) (b), the concept of a
single set of most, if not all, of them is utterly
alien.
In Eldon Industries Inc. v. Reliable Toy Co.
Ltd. (1965), 48 C.P.R. 109, the Ontario Court of
Appeal accepted that the design of a toy truck was
not amenable to copyright by reason of section 46.
In Vidal c. Artro Inc., [1976] C.S. 1155, the
Quebec Superior Court came to the same conclu
sion as to the design of mass produced "works of
art" made of tin. Neither judgment, nor that of
the Trial Judge in the Eldon case, (1964), 44
C.P.R. 239 (Ont. H.C.), directed itself to section
11 of the Rules. The only other pertinent Canadi-
an decision is an even more recent judgment of the
Trial Division, Jeffrey Rogers Knitwear Produc
tions Limited v. R.D. International Style Collec
tions Ltd., [1985] 2 F.C. 220; 6 C.P.R. (3d) 409,
dealing with a sweater design, which reluctantly
followed the decision under appeal and that which
it had followed. The reluctance was expressed, at
pages 225-226 F.C.; 413 C.P.R., in the following
terms:
With the benefit of the arguments that I heard, I would be
inclined to differ, with respect, from my two esteemed col
leagues on the construction of Rule 11(1). It would appear to
me that if a design must meet all the criteria in paragraph
11(1)(a) and in paragraph 11(1)(b) so as to be deemed to be a
pattern to be multiplied by an industrial process, then no design
can possibly qualify and therefore no design would have to be
registered under the Industrial Design Act. In other words, I
cannot see how a design can be reproduced in more than 50
articles and be applied as well to paper hangings, carpets,
textile piece goods and lace not made by hand. Such an
interpretation of the Rule would effectively bar any and all
registrations under the Industrial Design Act. That cannot have
been the intention of Parliament.
Of course, normally, "and" is conjunctive, "or" is disjunc-
tive, but to carry out the intention of the legislation it is at
times necessary to read "and" as being disjunctive. (The Inter
pretation of Statutes, 12th ed. (London: Sweet & Maxwell,
1969), pp. 232-233.) Rule 11(1) is a deeming provision. As
such, it lists all the conditions under which a design is deemed
to be used as a pattern that is capable of being registered under
the Industrial Design Act: they are condition (1)(a) and (or)
condition (1)(b)(i), (ii), (iii), and (or) (iv). In my view, a design
under any of those conditions is capable of being registered.
I find myself in substantial agreement with that
reasoning and in complete agreement with the
conclusion.
The evidence is clear that the respondent intend
ed to produce many more than 50 boats according
to the plans for each. The Trial Judge found as a
fact that the respondent's boats are made by an
industrial process.
In my opinion, the learned Trial Judge erred in
law in construing subsection 11(1) of the Industri
al Designs Rules so as to exclude the application
of section 46 of the Copyright Act in the present
case. That is not, however, the end of the matter.
The question remains whether the plans in issue
are "designs capable of being registered under the
Industrial Design Act" as required by section 46.
The respondent says that the expression
"capable of being registered" in subsection 46(1)
is to be construed as "registrable". The Trial
Judge records its arguing [at pages 362 F.C.;
300-301 C.P.R.] at trial 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.
It also argued that, even if they were designs, they
were not registrable because they were primarily
functional and, in any event, were excluded from
registration by effluxion of time. Subsection 14(1)
of the Industrial Design Act requires that its
registration be effected within one year of a
design's publication in Canada.
Leaving aside the argument based on effluxion
of time, if the respondent's interpretation is right,
the exclusion of section 46 applies only to designs
which, if presented for registration, would have
been registered. This will require the reading of
the mind of the Commissioner of Patents in cir
cumstances upon which he has not pronounced. It
will present a party invoking the exclusion with the
potentially impossible burden of proving novelty
having regard to all the designs previously regis
tered. Assuming the burden were discharged, the
totally unreasonable result will be that a design
that is sufficiently novel to have been registered
will be excluded from copyright protection while
one lacking that novelty will be subject of copy
right. As to timely registration, can Parliament
have intended that a person who diligently regis-
ters a design is entitled to, at most, a ten-year
monopoly, while one who neglects or deliberately
omits to apply for registration is entitled to a
monopoly for the life of its author plus 50 years?
To ask the question is to answer it.
The only question to be considered is whether
the subject-matter of the claimed copyright is a
design within the meaning of the Industrial Design
Act. If it is, it is subject of section 46 of the
Copyright Act as something capable of being reg
istered under the Industrial Design Act.
"Design" is not a term defined by any relevant
Canadian legislation. The locus classicus is the
decision of Jackett P., considering a sofa, in Cimon
Ltd. et al. v. Bench Made Furniture Corpn. et al.,
[1965] 1 Ex.C.R. 811, in which he held, at pages
831 and 832-833:
The sort of design that can be registered is therefore a design to
be "applied" to "the ornamenting" of an article. It must
therefore be something that determines the appearance of an
article, or some part of an article, because ornamenting relates
to appearance. And it must have as its objective making the
appearance of an article more attractive because that is the
purpose of ornamenting. It cannot be something that deter
mines the nature of an article as such (as opposed to mere
appearance) and it cannot be something that determines how
an article is to be created. In other words, it cannot create a
monopoly in "a product" or "a process" such as can be
acquired by a patent for an invention. There is, moreover,
nothing in the legislation that limits the type of design that may
be registered (as was suggested in argument) to those providing
for something that is applied to an article after the article
comes into existence.
The fact that a design relates to shape or configuration of an
article is not, in itself, an objection to its registration. As long
as it is a design to be applied "to the ornamenting" of an
article, it is eligible for registration even though it requires that
its purpose of "ornamenting" be accomplished in whole or in
part by constructing the article, or parts of it, in a certain shape
or shapes.
In my view, the functional requirements of the
hull and superstructure of a pleasure boat is that
they provide a buoyant platform within and upon
which the essentials and amenities required by its
operator may be installed. The general shape may
be largely dictated by functional considerations;
however, the details of that shape which serve to
distinguish the appearance of, for example, one
16 1 / 2 foot runabout from another are essentially
ornamental. Those details are what make one run
about more attractive, in the eyes of the beholder,
than another. The foregoing conclusions of fact
were not found by the Trial Judge. He did not
have to deal with this issue in view of his conclu
sion as to section 46. However, they are amply
supported by the uncontradicted evidence of wit
nesses for both parties. Vid. Transcript, Vol. I,
pages 127, lines 13 to 128, 13; 137, 3 to 16; Vol.
II, pages 200, 18 to 201, 10; 318, 25 to 326, 29;
Vol. IV, pages 605, 12 to 607, 17.
It is, I think, pertinent to observe that this case
is concerned with the statutory monopoly accorded
by the Copyright Act. It is not concerned with
unfair competition or issues of commercial
morality.
The designs disclosed by the plans in issue are,
in my opinion, designs capable of being registered
under the Industrial Design Act within the mean
ing of section 46 of the Copyright Act and are not
excluded from the operation of that provision by
section 11 of the Industrial Designs Rules. The
plans themselves are not, therefore, subject of
copyright.
Having come to that conclusion, I do not find it
necessary to deal with the remaining issue in the
appeal: whether as a matter of law the copyright in
a plan is infringed by the making of a copy of an
object made according to the plan. The importance
of this matter is well illustrated by the several
speeches of the Law Lords in their as yet unreport-
ed decision in British Leyland et al. v. Armstrong
Patents et al., judgment rendered February 27,
1986. That case dealt with the copyright in plans
for automobile mufflers found to have been copied
in much the same way as the boat plans in this
case. Pertinent British and Canadian legislation
are very different in their material particulars.
However, in the nature of mufflers, as they are not
ordinarily exposed to public view, ornamentation
was not a factor and the parallel exclusion from
copyright protection was not in play. I am con
vinced that it would be especially unwise to express
an opinion on this remaining issue by way of obiter
dicta. It is equally unnecessary to deal with the
cross-appeal as to remedies. In declining to deal
with these matters, I indicate neither approval nor
disapproval of the results reached by the learned
Trial Judge.
I would allow the appeal with costs here and in
the Trial Division and set aside the judgment
below. I would dismiss the cross-appeal with costs.
URIE J.: I agree.
STONE J.: I agree.
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.