February 24, 2020
By Noel Courage
A recent Alberta court case analyzed the limits of copyright protection after a plaintiff tried to argue that pipe bending machines infringed copyright1. The case confirmed that copyright may exist in engineering drawings, but it does not extend to the machine produced with those drawings. Patents are the appropriate way to protect inventive machines, so innovating companies need to consider patents as a way to most effectively protect their rights.
The Court made its analysis in the context of an application for summary judgment in a copyright infringement case. The plaintiff, Proline, alleged that a former employee took confidential drawings without permission, and arranged for a manufacturing company called Willbros to make copies. Neither the former employee nor Willbros were parties to the lawsuit. The defendant, Provincial Rentals, agreed to purchase two pipe bending machines from Willbros. Wilbros partially assembled machines and stopped work once it was contacted by Proline. Provincial Rentals arranged for another shop to complete the machines, and then rented out one of the machines to at least one customer. Only Provincial Rentals was sued. Proline asked for a permanent injunction, delivery up of products and design drawings, and an accounting of profits by the defendant.
The Court decided that the plaintiff did not meet the threshold burden of proving on a balance of probabilities the facts necessary to support its copyright claim. There was no copyright infringement.
The Engineering Drawings – Copyright Applies
The first part of the copyright analysis was conventional, relating to copyright in design drawings. A brief review of this part of the case is provided, since it shows the proper subject matter of copyright protection.
Copyright exists in original artistic works, such as design drawings2. The author gets, “the sole right to produce or reproduce the work or any substantial part thereof in any material form whatsoever...” These rights exist upon creation of the copyright work – registration is not required.
Proline argued that its design drawings were original artistic works in which it had sole copyright3. Drawings were marked as “the exclusive property of Proline Pipe Equipment Inc.”
The defendant, Provincial Rentals, argued that the Proline drawings were not subject to copyright because they were mere copies of previously existing designs of pipe bending machines manufactured by an American company. A mere copy cannot be original enough for copyright. The work must be the product of an exercise of skill and judgment4. The only evidence provided was a former Proline employee’s statement that the drawings were copied from the American company, which was inadmissible hearsay.
For purposes of the decision, the Court found that there was copyright in the drawings. The defendant did not meet its burden to prove the contrary. However, there was no copyright infringement. It was not established that Provincial Rentals made unauthorized copies or directed others to do so. It was not shown that Provincial Rentals ever possessed the drawings at all, or had knowledge of unauthorized copying of the drawings by others. Those who copied were not party to the lawsuit, so there was no recourse in this case for any copyright infringement.
Pipe Bending Machines Built From the Engineering Drawings – Copyright Does Not Apply
The plaintiff argued that copyright extended to the machines produced using the drawings (ie. plaintiff argued that it had the sole right to reproduce the copyrighted work)5. The Court held that the copyright work is the drawings themselves. Copyright protects against reproducing the work, but not against making or constructing the machines depicted in the drawings. Copyright could not extend to the pipe bending machines. Industrial machines are not included in the Copyright Act definition of artistic works6. There is copyright only in the author’s particular expression of ideas. Copyright does not give him a monopoly or property in the use of the ideas to manufacture a machine, even if the ideas are original7.
The Court correctly noted that it is possible to use a patent to protect intellectual property in ideas (inventions8) pertaining to mechanical devices and the physical representations of those devices. If a company does not have a patent, it cannot use copyright to try to indirectly obtain what amounts to a patent.
As a take-away from this case, companies doing design work need to appreciate early on the potential value of patents to protect new and inventive machines. It is not clear if the pipe bending machine would have been patentable, but the issue would have been worth considering.
5 Proline referred to Lainco Inc c Commission scolaire des Bois-Francs, 2017 FC 825 [Lainco], in which the defendant was found to have infringed the plaintiff’s copyright by constructing the steel structure of an indoor sports complex using the plaintiff’s structural plans. However, this case was not applicable because it related to architectural work, not a machine. In respect of architectural works – unlike machines – the Copyright Act provides that the structure itself is subject to copyright.
6 The definition of “artistic works” in section 2 of the Copyright Act” includes “paintings, drawings, maps, charts, plans, photographs, engravings, sculptures, works of artistic craftsmanship, architectural works, and compilations of artistic works.”
7 Cuisenaire v South West Imports Ltd (1968), 1968 CanLII 122 (SCC),  SCR 208, 1968 CarswellNat 56. In that case, coloured rods used for the teaching of science and arithmetic were described in the plaintiff’s book. The rods themselves were not subject to copyright, so there was no infringement by the defendant making the rods.
8 In Canada, an idea must be conceived and reduced to a practical shape to constitute a patentable invention. A patentable machine invention would also have to be new, inventive and useful.
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