REVERSE ENGINEERING OF FUNCTIONAL OBJECTS: PROTECTION OF SCHEMATIC
DRAWINGS
Hugues G. Richard*
LEGER ROBIC RICHARD, Lawyers,
ROBIC, Patent & Trademark Agents
Centre CDP Capital
1001 Square-Victoria- Bloc E – 8th Floor
Montreal, Quebec, Canada H2Z 2B7
Tel. (514) 987 6242 - Fax (514) 845 7874
www.robic.ca - [email protected]
It is a well-established principle of law that "competition" is the rule and
"monopoly" the exception. Through the development of case law relating to
copyright in matters of functional objects, one can seriously wonder if that
dictum would have stood for long, had Parliament not enacted Bill C-60.
When considering the validity of a patent, a court of law has to consider
whether or not the alleged invention is new, useful and not obvious. It is only
after having answered in the affirmative those three questions that a court will
recognize the right of an inventor to exercise a seventeen-year monopoly
with respect to the use of an invention. If one of the above questions is
answered in the negative, no such monopoly will be granted.
The reason for such an attitude is that it would seem to be extending the right
to a monopoly beyond reasonable limits to grant to someone such a privilege
when the alleged invention is either not new, not useful or obvious. This is at
least what MacLean J. thought when he said in Crosley Radio Corporation
and Canadian General Electric Co. Ltd., [1935], Ex.C.R. 190 at page 196:
"In deciding whether or not there is invention in West we have to
decide a question of fact, and we can get little or not assistance
in wandering into other cases to see what question of fact was
there decided. The authorities give one little assistance, for they
merely illustrate the difficulties which arise in almost every patent
action. The line which separates things invented from things
© LEGER ROBIC RICHARD / ROBIC, 1990.
*Lawyer and trademark agent, Hugues G. Richard is a senior partner in the lawfirm LEGER
ROBIC RICHARD, g.p. and in the patent and trademark agency firm ROBIC, g.p.
This document is designed to familiarize the reader with matters of general interest relating to
intellectual property law. It is distributed for informational purposes and is not intended to
constitute legal advice. Legal counsel should be consulted with regard to specific
application of the information on a case-by-case basis.
otherwise produced is not capable of being concisely defined
and frequently it is very difficult to decide whether or not there is
subject matter in a patent. Here, I am not convinced that it
called for the exercise of the inventive faculty to conceive of
West. However popular, or new and useful the West door is, it
seems to me that it does not merit monopoly, and it would seem
to be extending the right to a monopoly beyond reasonable
limits to say that no one but Mrs. West, or her assignee, could
construct a refrigerator door of the type described.
A
refrigeration chamber is space enclosed, made air-tight and
insulated, and of course, provided with some refrigerant. The
door refrigerating space in West is constructed substantially in the
same way as the space in the body proper, and the chief
difference is as to size, and particularly depth."
Surprisingly enough, if instead of having applied for a patent, Mrs. West had
done nothing else but to claim copyright protection on the drawings or the
plans of that refrigerator door, she and her successors could possibly have
enjoyed a monopoly on the manufacturing of refrigerator doors of the type
described in the drawings or plans during her whole lifetime and fifty years
thereafter.
She would not have had to establish novelty, usefulness or lack of
obviousness. She would only have had to prove the drawings or plans to be
original works of her doing. Had she obtained registration of her copyright
(which she did not have to), the certificate of registration would have
constituted prima facie evidence of her copyright in the drawings or plans.
It is safe to say, that prior to June 8, 1988 what is described above would have
been the most likely situation in which Mrs. West would have found herself if
she had claimed copyright protection.
How could such a situation develop in a country where the economy is
based on free competition? I personally think that it came almost by
accident. I do not think and never would suggest that Parliament, when it
enacted the Copyright Act, intended to give to Mrs. West the right to exercise
a monopoly on the manufacture of refrigerator doors of a special type simply
because she held the copyright on drawings or plans of such doors. The
history of the development can be summarized as follows.
For the purposes of our discussion, it is worthwhile to be reminded of certain
sections of the Copyright Act as it existed prior to June 8, 1988.
Section 2
Definition of "artistic work": "artistic work" includes works of
painting, drawings, sculptures and artistic craftsmanship
and architectural works of art and engravings and
photographs;
Definition of "book": "book" includes every volume, part or
division of a volume, pamphlet, sheet of letterpress, sheet
of music, map, chart, or plan separately published;
Definition of "infringing": "infringing", when applied to a
copy of a work in which copyright subsists, means any
copy including any colourable imitation, made or
imported in contravention of this Act;
Definition of "literary work": "literary work" includes maps,
charts, plans, tables, and compilations.
Section 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, to perform or in
the case of a lecture to deliver, the work or any substantial
part thereof in public if the work is unpublished, to publish
the work or any substantial part thereof; and includes the
sole right (a) to produce, reproduce, perform or publish
any translation of the work.
If someone wishes to avail himself of the protection of the Copyright Act to
prohibit the reproduction of a functional object such as a flywheel or a
sparkplug prior to June 8, 1988, that person would have had to allege that
before being a three-dimensional object, the flywheel or the sparkplug were
first conceived in the form of a drawing or plan. As drawings, they could be
considered as books or literary works.
In the case of Cuisenaire v. South West Imports Ltd. (1967), 54 C.P.R. 1 Noël J.
of the Exchequer Court expressed the opinion that an artistic work had to a
certain extent appeal to the aesthetic senses and he wrote:
"an artistic work, in my view, must to some degree at least, be a work
that is intended to have an appeal to the aesthetic senses not just an
incidental appeal, such as here, but as an important or one of the
important objects for which the work is brought into being. The
Plaintiff's rods may have a certain attraction to children, but this in my
view, is a very secondary purpose which, I am afraid, is not a sufficient
basis for a finding that the rods are artistic".
The distinction between an artistic work and an industrial design is brought
into light by the following passage from the judgment of Sankey J. in Con
Planck Ltd. v. Kolynos Inc. (1925) 2, K.B. 804:
"What then is the fundamental distinction between a design and
artistic work. This is a point which the writers of the various textsbooks have found to be one of great difficulty and upon which
they differ. There have been discussions as to whether Christmas
cards and posters fall under one or other category. It would be
impossible and I think undesirable to lay down any definition. As
each case comes up for determination an endeavour must be
made to say upon which side the particular case lies, and no
doubt in course of time a multiplication of examples may lead to
an attempted definition. It may be right to say, as is said in the
last edition of Copinger's Law of Copyright, 5 ed., p. 97, that the
fundamental distinction between a design and a simple artistic
work lies in the applicability of the former to some other article.
The Plaintiffs contented that the 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".
In that case, the designs were to be used for publicity purposes and
reproduced ten thousand times.
The said drawings were considered
registrable under the British Industrial Design Act. According to Copinger 12
ed., page 211 the fundamental distinction between a design and an artistic
work resides in the fact that a design is conceived to be applied to another
object while the artistic work finds its purposes in its own existence. While the
artistic work is purchased and sold for itself, the industrial design has no
purposes of its own except to act as an ornament to the object to which it is
applied. A painting by itself would be an artistic work while the same painting
reproduced on wallpaper would be considered an industrial design.
I do not wish to go further on the question of industrial designs; Mr. David
Morrow, one of the next speakers will be speaking to you about the
protection afforded under the Industrial Design Act. If we come back to our
earlier proposition, whereby we indicated that drawings and plans could be
protected under different headings of the Copyright Act, it would seem
evident that if one chooses to allege that one's plans or drawings are artistic
works, one may have more difficulty than if one had chosen to allege that
they were literary works or books.
If the drawings are to be considered as artistic works, the temptation will be
strong for the adverse party to convince the court that the engineering
drawings of a flywheel or of a sparkplug have no artistic value whatsoever.
While if the drawings or plans are considered literary works or as books as
these expressions are defined in the Act (see above), one will avoid the
whole discussion on what is artistic and what it is not and what degree of
artistic value is required for a drawing to be considered an artistic work.
Reed J. of the Federal Court, trial division in the case of D.R.G. Inc. v. Datafile
Ltd. (1987), 18 C.P.R. (3d) 538 did discuss at same length the question of
"artisticness". She concluded at p.p. 545-546 that:
"In my view the phrase "artistic work" is used merely as a generic
description of the type of works which follow. It is used as a
general description of works which find expression in a visual
medium as apposed to works of literary, musical or dramatic
expression."
I would tend not to be in agreement with this statement. Parliament is never
to be taken to have spoken for nothing. If the intention of Parliament had
been what Reed J. states it to have been, Parliament would have used
different words.
Mr. Justice Noël in Cuisenaire v. South West Imports Ltd. (supra) which was
confirmed on appeal to the Supreme Court (1968), 57 C.P.R. 76 refused to
consider certain rods which were used for the teaching of the science of
arithmetics as protectable under the Copyright Act not because the said rods
were functional but because he felt that there has to be some limitation to
what is protected by copyright as it could not have conceivably have been
the intention of Parliament to protect by way of copyright, material of any
kind or any type of object. He considered that the rods were tools and
nothing more.
The decision of Mr. Justice Noël should have set the pace for reasonable
decisions in the field of copyright applicable to functional objects. However,
this has not been the case.
In fact, the approach has changed. Instead of alleging copyright in the
three-dimentional object, such as a rod, astute lawyers found a loophole in
the Copyright Act. This loophole had always been there but nobody had
thought to make use up it. Therefore, instead of alleging direct infringement
in the three-dimensional object, the trick was to allege copyright infringement
in the plans or drawings which normally would have preceded the existence
of the three-dimensional functional object.
The alleged infringer in the normal course of things would not have copied
the plans or the drawings directly. He would have copied through reverse
engineering the three-dimensional object itself. This did not bother our courts
since they have considered that copying a reproduction of a work which
itself was protected under the Copyright Act amounted to infringement in the
protected work.
One of the most important cases in this line of thinking is Bayliner Marine
Corporation v. Doral Boats Ltd. (1985), 5 C.P.R. (3d) 289, wherein Mr. Justice
Walsh of the trial division of the Federal Court of Canada wrote at page 308:
"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 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
Defendant, the intermediate object made from them in this case,
the boats, was admittedly copied, save for the changes made
by Defendant which must now be considered".
While the decision of Walsh J. was reversed by the Federal Court of Appeal,
that part of his judgment remains. Mr. Justice Mahoney, delivering the
judgment for the Court of Appeal (1986), 10 C.P.R. 3d. 289 was very prudent in
not overruling Mr. Justice Walsh on that point. He did however leave the
point open without expressing any opinion. At page 297 of his judgment, he
wrote:
"Having come to that conclusion (the plans were designs
capable of being registered under the Industrial Design Act and
were not subject of copyright), 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 unreported decision in British Leyland Motor Corp.
Ltd. & al. v. Armstrong Patents Co. Ltd. & al., judgment rendered
February 27, 1986 (reported [1986] 2 W.L.R. 400). That case dealt
with the copyright in plans for automobile mufflers found to have
been copied in much the same way as they boat plans in this
case.
Pertinent British and Canadian legislations are very
different in their material particulars. However, in this 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 convinced that it
would be especially unwise to express an opinion on this
remaining issue by way of obiter dicta.
The Court of Appeal decision in the Doral Boat case is dated June 13, 1986.
On October 29, 1986 the British Columbia Supreme Court delivered a
judgment in the case of Spiro-Flex Industries Ltd. et al. v. Progressive Sealing,
et al. Inc. (1986) 13 C.P.R. 3d. 311. In this case, the parties were seeking an
opinion from the court on agreed facts. The two questions to be answered by
the court were:
a)
whether the manufacture and sale of a functional, threedimensional object, the "Circoflex" pump coupler reproduced from the
three-dimensional "Spiro-Flex" pump coupler is an infringement of the
copyright alleged to subsist in the drawings and specifications that
depict the "Spiro-Flex" pump coupler.
b)
whether the Plaintiff, McLeod or Industries, are the co-owners of
the copyright in the marketing brochure having regard to s. 12(2) of the
Copyright Act, R.S.C. 1970, c. C-30.
For the purposes of today's discussion, the second question is not relevant.
With respect to the first question, the court had this to say at page 317:
""literary work" is defined in s. 2 as including "maps, charts, plans,
tables and compilations".
Counsel for the defendants accepts, for purposes of this special
case, that McLeod's drawings, directions, and specifications are
within the above definition of literary works and that position is in
accord with the case law. Counsel for the defendants also
accepts, for the purposes of this special case, that McLeod's
drawings, directions and specifications are not "designs" capable
of being registered under the Industrial Design Act, R.S.C. 1970, c.
I-8. Accordingly, s. 46 of the Copyright Act may be disregarded".
Then the court goes on in reviewing Justice Walsh's reasoning with respect to
the "constructive" infringement of the Plaintiff's copyright in the drawings from
which the boat was constructed. The court then considered the judgment
rendered by the Federal Court of Appeal and concluded that it did not
reverse Justice Walsh's reasoning with respect to "constructive" infringement.
At page 319 the court wrote:
"In light of the disposition of the copying issue by Mahoney J., the
law on that issue, as stated by Walsh J. still stands. However,
defendant's counsel here argued vigorously and forcefully that
Walsh J. was in error. He says that the weight of jurisprudence
does not support Mr. Justice Walsh's proposition. It appears from
page 308 of the judgment that the "weight of jurisprudence"
consists of two English decisions: "King Features Syndicate, Inc. et
al. v. O. & M. Kleeman, Ltd., [1941] A.C. 417 (H.L.), and L.B.
(Plastics) Ltd. v. Swish Products Ltd., [1979] R.P.C. 551 (H.L.)."
Gibbs J. of the Supreme Court of British Columbia then proceeded to analyze
the King Features case and the British Leyland Motor Corp. Ltd. et al. v.
Armstrong Patents Co. Ltd. et al. (supra) handed down after the judgment of
Walsh J. in Bayliner. After having analyzed those decisions and many others,
the court concluded at page 323 that:
"The manufacture and sale of a functional, three-dimensional
object, the Circoflex pump coupler, reproduced from the threedimensional Spiro-Flex pump coupler, is an infringement of the
copyright in the drawings and specifications that depict the
Spiro-Flex pump coupler."
This decision and the Bayliner decision would seem to indicate the trend of
things in Canada at the time of the introduction of Bill C-60. In Great Britain,
the copyrighted drawings of a muffler were used to prevent spare-part
manufacturers from manufacturing mufflers which were the result of reverse
engineering. This trend, if it had not been out to a stop, would have seriously
hampered competition between business enterprises. As earlier stated:
inventiveness, usefulness and lack of obviousness were concepts slowly
becoming absolete. The trend was towards overbearing protection of
functional drawings or plans.
BILL C-60
Many criticisms were voiced with respect to this trend, which many
considered to be unreasonable. In fact, even the courts felt that Parliament
had to do something to restore some reasonableness in this rather messy
situation. In the British Leyland Motor Corp. case (1986) 12 F.S.R. 221 at page
227, Lord Scarman wrote:
"If it be right, as my noble and learned friend Lord Templeman
asserts and as I also think, "that Parliament did not intend the
protection afforded by copyright to a drawing should be
capable of exploitation so as to prevent the reproduction of a
functional object depicted in a drawing", the present review of
law should lead to legislation to bring the law back within the
limits intended by Parliament. This would involve a legislative
rejection of the view of the law upon which the House acted in
deciding L.B. (Plastics) Ltd. v. Swish Products Ltd. [1979] R.P.C. 551.
But further it would be helpful if the current review of the law
could lead to incorporating in the Copyright Act the principle
latent in our law but not fully discussed or expressed until the
present case that the manufacturer of an article such as a motor
vehicle or other "consumer durable" cannot by the exercise of
copyright preclude the user of the article from access to a free
market for spares necessary to maintain it in good working order."
While Lord Scarman was speaking in reference to the British Copyright Act, his
speech was as much applicable to our situation in Canada. In a way, that
part of Bill C-60 dealing with former s. 46 is an answer to Lord Scarman's
invitation.
May I point out that the French and the English texts of Bill C-60 were drafted
independently one from the other. In other words one text does not purport
to be the translation of the other. This situation will create problems. Some of
the sections will in the English text have some paragraphs identified by letters
while in the French text sub-paragraphs do not exist. Reference can be
made to the new section 46(2) as an example. I do not know how translators
are going to proceed when they will have to translate judgments written in
English wherein reference to section 46(2)(c) and (d) will be made since these
two sub-paragraphs do not exist in the French text. It would have been rather
simple to have some symmetry between the French and the English texts.
Among the interesting amendments which concern my topic of today, we
can note an amendment to the definition of "artistic work" which now reads
as follows:
"artistic work" includes paintings, drawings, maps, charts, plans,
photographs, engravings, sculptures, works of artistic craftsmanship and
architectural works of art".
You will have noticed that three new items now are included in the definition
of "artistic work": maps, charts and plans.
The definition of "literary work" was also amended as a corollary, this
expression now reads as follows:
"literary work" includes tables, compilations, translations and computer
programs."
You will recall that earlier when I was referring to the options which were
available to the party thinking to invoke copyright protection in his drawings
or plans, that he could allege infringement in his artistic work or infringement
in his literary work. Whatever the other consequences of these amendments
may be, one of them is surely that an engineering drawing or a plan cannot
be now considered a literary work but is confined to being an artistic work or
possibly a book.
The new section 461 introduces a completely different perspective. Formerly,
through section 46, Parliament intended to exclude from copyright protection
those designs which were ornamental and were intended to be reproduced
in a quantity of more than fifty i.e., designs protectable by the Industrial
Design Act.
You will notice in the new text of section 46, the introduction of new
definitions. The words: article, design, useful article and utilitarian function
have been defined. The new section 46(2) stipulates inter alia that a person
would not be considered as having infringed any copyright in a design
applied to a useful article or in an artistic work from which the said design is
derived, if that person reproduces this design or a similar design when making
this useful article or when making a graphic or material reproduction of it. Nor
will he infringe any copyright if he does with this useful article or its
reproduction any of the acts reserved exclusively to the copyright owner.
This exception will only apply in cases where the useful article has been
reproduced, with the consent of the owner of the copyright existing in
Canada or elsewhere, in a quantity of more than fifty or if the useful article is
a plate engraving or cast, it is used for producing more than fifty useful
articles.
Essentially, the new section 46(2) excludes from the protection of the
Copyright Act features of shape, configuration, pattern or ornament and any
combination of those features that, in any finished article, appeal to and are
judged solely by the eye, if these features are applied by or with the consent
of the copyright owner to an article that has utilitarian function and if this
article is reproduced in a quantity of more than fifty.
The new section 46(3) brings back into the scheme of the act some artistic
works which otherwise would have lost their protection by the application of
section 46(2).
1(*)
New text attached to this paper as an annex.
It is important to note that sections 46(2) and (3) only apply to designs
created after June 8, 1988. Up to that date, former section 46 and the
applicable provisions of the Industrial Design Act remain applicable.
Section 46.1 which applies to any alleged infringement of copyright occurring
prior to, on or after June 8, 1988, seems to be a statement of what the law has
always been. In other words, it would seem to indicate that our courts had
gone wrong in considering that by reproducing a three-dimensional object
such as a water pump, one could be deemed to have infringed the
copyright existing in the plans or drawings of such a water pump.
If we are right in thinking that this section is the statement of the law as it has
always been and as it should have been interpreted, we find some difficulty
in seeing the real difference with the provisions of new section 46(1) in the
light of new section 46(4) wherein it is stated that old section 46 continues to
apply in respect of designs created before June 8, 1988.
In our view whether plans or drawings apply to a useful article have been
created before or after June 8, 1988, it will now be permitted to anyone to
reproduce same through any means including reverse engineering, unless a
claim for unfair competition can be made.
In a recent decision of the Associate Senior Prothonotary, Peter A.K. Giles in
Iscar Limited v. Karl Hertel GmbH, court No. T-2332-85 dated November 4,
1988, it was left to be understood that the amendments to section 46 may
have left a gap concerning actions pending on June 8, 1988.
On page 12 of this decision, speaking of new section 46.1 he said:
"Reading section 46.1 of the Copyright Act and section 24 of the
amending statute together, it is apparent that any action
specified whenever done, does not constitute an infringement. I
understand that to mean that the act whenever done does not
at the moment of proclamation of the section or thereafter
constitute an infringement. One cannot construe the wording to
mean that such an act whenever done did not at the time it was
done constitute an infringement. There are cases decided
before the enactment of section 46.1 in which apparently similar
acts have been held to be infringements. It is therefore possible
that a Trial Judge when evidence is presented, would find that at
the time the acts complained of were done, they constituted
infringements. It therefore is necessary to determine the effect of
this legislation on this action so far as it seeks relief for acts done
before proclamation".
We understand that this decision of the Associate Senior Prothonotary has
been appealed and that the appeal was heard by Mr. Justice Jerome
sometime in mid-December; a decision is expected sometime mid-January
1989.
It would seem rather evident to us that new section 24 read in conjunction
with new section 46.1 and new section 46.4, gives a retroactive effect to what
the interpretation of former section 46 should always have been.
We will recall the words of Lord Scarman in the British Leyland Motor Corp.
case wherein he invited Parliament to review the act in order to make it more
reasonable. The Canadian Parliament has done its job and we trust that our
Canadian courts will do their share to avoid perpetuating what has been
described by Lord Scarman as an "anomaly". He wrote at page 227 of his
judgment the following:
"Thus there has arisen the anomaly that in effect... a
manufacturer can achieve in respect of such objects (of which a
Marina car exhaust pipe is but one example) a more enduring
monopoly than would have been available even if the object
had been, which it is not, patentable or its design had been,
which it is not, registrable".
We are confident that common sense will prevail and that once again
competition will be the rule and monopoly the exception.
ROBIC, un groupe d'avocats et d'agents de brevets et de marques de commerce voué
depuis 1892 à la protection et à la valorisation de la propriété intellectuelle dans tous les
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de certification et appellations d'origine; droits d'auteur, propriété littéraire et artistique, droits
voisins et de l'artiste interprète; informatique, logiciels et circuits intégrés; biotechnologies,
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concurrence; licences, franchises et transferts de technologies; commerce électronique,
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arbitrage; vérification diligente et audit; et ce, tant au Canada qu'ailleurs dans le monde. La
maîtrise des intangibles.
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and utility patents; trademarks, certification marks and indications of origin; copyright and
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