In a recent judgment of the Alberta Court of Queen’s Bench, Justice L.R.A. Ackerl held that although copyright subsisted in design drawings for a pipe bending machine, copyright did not extend to the machine itself. This decision draws important boundaries on what subject matter may be protected by copyright and emphasizes the need for multiple layers of IP protection to provide effective coverage.

Background

Proline Pipe Equipment Inc. (“Proline”) alleged, amongst other causes of action, that Provincial Rentals Ltd. (“Provincial”) infringed copyright related to its pipe bending machine. Specifically, Proline adduced evidence that:

• a former employee of Proline took Proline’s drawings for a pipe bending machine and provided them to an employee of a manufacturing company;
• the employee of the manufacturing company represented to Provincial that it could build pipe bending machines and Provincial agreed to purchase two machines;
• part way though the fabrication and assembly of the pipe bending machines, Proline informed the manufacturing company that it knew what was going on at the manufacturing company and production at the manufacturing company stopped;
• but, Provincial paid the manufacturing company for the partially completed machines and sent them to another shop to be completed.

Analysis

Proline applied for summary judgment. In response to the motion for summary judgment, Justice Ackerl held that although Proline owned copyright in the drawings of the pipe bending machine, it did not own copyright in the pipe bending machines themselves. This conclusion was based on a reading of the Copyright Act (the “Act“) which indicates that while the drawings are artistic works, industrial machines based on those drawings are neither artistic works, nor productions or reproductions thereof.

Justice Ackerl distinguished the construction of buildings from the construction of machines on the basis that the Act indicates that buildings or structures are themselves architectural works and the “construction of an architectural work” is a publication of that architectural work and therefore covered by copyright.

Implications

For innovators, this is a reminder that different IP rights protect different aspects of an invention, and it may be necessary to layer IP protection in order to obtain effective protection. Assuming the pipe bending machines were protectable by a registered intellectual property right (such as a patent or industrial design) and Proline had obtained that registration, Proline’s case against Provincial would have been much stronger. Absent registered rights, Proline needed to fall back on copyright and trade secret protection, which, while economical and effective in certain circumstances, can be more difficult to establish in court.

It is important to note that although the Court dismissed Proline’s motion for summary judgment, Provincial still needs to defend Proline’s claims of unlawful conversion, unfair competition, or unlawful interference with economic interests – this judgment only holds that the facts alleged in the motion were insufficient to prove that there was no defense to those claims. A full trial on the merits is likely to address the merits of these allegations.

If you have any questions about whether you have adequate protection for your intellectual property, please don’t hesitate to contact an IP professional at Hicks IP Law to see whether more fulsome protection may be obtained.

Article by Kevin Unrau