Federal Court Decision Delineates Copyright and Industrial Design Boundaries

Copyright v. Industrial Design: Which one do you need?

In a recent decision (Pyrrha Design Inc., et al. v. 623735 Saskatchewan Ltd; T-531-02), the Federal Court of Canada issued a summary judgment decision dismissing a copyright infringement action in its entirety on the basis that jewellery designs made in quantities greater than 50 are not protected by copyright. At the crux of the case was the application of s. 64(2) of the Copyright Act, which states:

s. 64 (2) Where copyright subsists in a design applied to a useful article or in an artistic work from which the design is derived and, by or under the authority of any person who owns the copyright in Canada or who owns the copyright elsewhere,

(a) the article is reproduced in a quantity of more than fifty, or

(b) where the article is a plate, engraving or cast, the article is used for producing more than fifty useful articles,

it shall not thereafter be an infringement of the copyright or the moral rights for anyone

(c) to reproduce the design of the article or a design not differing substantially from the design of the article by

(i) making the article, or

(ii) making a drawing or other reproduction in any material form of the article, or

(d) to do with an article, drawing or reproduction that is made as described in paragraph (c) anything that the owner of the copyright has the sole right to do with the design or artistic work in which the copyright subsists.

In other words, once more than fifty of an article are made, the article no longer enjoys the protection of the Copyright Act. Section 64(3) of the Act provides exceptions to this rule including such instances as where the article is:

(a) a graphic or photographic representation that is applied to the face of an article;

(b) a trade-mark or a representation thereof or a label;

(c) material that has a woven or knitted pattern or that is suitable for piece goods or surface coverings or for making wearing apparel;

(d) an architectural work that is a building or a model of a building;

(e) a representation of a real or fictitious being, event or place that is applied to an article as a feature of shape, configuration, pattern or ornament;

(f) articles that are sold as a set, unless more than fifty sets are made; or

(g) such other work or article as may be prescribed by regulation.

Here, the Plaintiffs (Pyrrah) had claimed that the Defendant (623735 Saskatchewan Ltd.) had copied jewellery designs, and that this constituted an infringement of their copyright in those designs. The Defendant had argued that since the designs had been made in quantities of 50 or more, the exception to infringement granted under s. 64(2) of the Copyright Act was applicable, and as a result there was no copyright infringement. The Defendant’s argument concluded that since there was no infringement, there was no cause of action, and so the action should be dismissed.

The Court agreed, finding that s. 64(2) of the Act was applicable, and that none of the exceptions under s. 64(3) applied to negate s. 64(2). Of interest, the Court also determined that jewellery was a useful article, following the definition provided in the earlier case of Datafile Ltd. v. DRG Inc. (1991), 35 C.P.R. (3d) 243, and persuaded by evidence provided by the Defendants that more than 1,100 industrial designs exist for items of jewellery. Following the analogy in Datafile, the Court determined that since jewellery design in three dimensional, it is properly subject matter for registration under the Industrial Design Act. Furthermore, jewellery does not qualify under one of the s. 64(3) exceptions as "it is not bought purely and simply for its artistic properties but because of the utility of the article apart from the design."

In this case, the only salvation for the Plaintiffs would have been to register the designs under the Industrial Design Act, which was enacted specifically to provide protection for creations where copyright protection left off. However, s. 6(3) of the Act provides a limitation period such that once a design has been "published" for more than one year, it is no longer possible to secure a registration. Here, the designs were older than one year at the time the action was initiated and so were no longer capable of being registered as industrial designs.

The decision illustrates the importance of fully evaluating the nature of one’s intellectual property in order that the proper forms of IP protection can be used. Here, the failure of the plaintiffs to appreciate that manufactured jewellery came under the exception to infringement contained in s. 64 of the Copyright Act, combined with the fact that the designs had been in production for several years and so no longer qualified for registration under the Industrial Designs Act, meant that they are completely without protection for the IP in their designs.

Between patents, trademarks, copyright and industrial design, almost every new creation can be the subject of some form of IP protection scheme. The lesson to be learned from this case is that whenever a person or company produces anything novel, it is worth consulting with an IP professional to determine which one of these forms of protection are available in order to fully protect those creations. Failure to make a proper evaluation could have significant financial consequences down the road.

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