Copyright is Great… But it Has its Limits
Proline Pipe, an Alberta company, created certain design drawings for pipe bending machines. A former employee took those drawings with him when he left the company. A rival company obtained copies of the drawings and manufactured the pipe bending machines using the Proline drawings. A third company, Provincial Rentals, acquired the assembled machines and rented out the machines to its customers.
Then Proline Pipe sued Provincial Rentals for copyright infringement. Can copyright extend to the assembled machines that were manufactured using the copied drawings, and then acquired and commercialized by Provincial Rentals?
In a recent Alberta decision, Proline Pipe Equipment Inc v Provincial Rentals Ltd., 2019 ABQB 983 (CanLII), the court reviewed the claim that copyright should extend, not only to the drawings, but also to the final assembled product.
Proline essentially alleged that its copyright should extend to the machines produced using the drawings. For this proposition, Proline relied on section 3(1) of the Copyright Act, which states that “copyright, in relation to a work, means the sole right to produce or reproduce the work or any substantial part thereof in any material form whatever” (emphasis added).
The court was not convinced.
It did not accept that copyright in the Proline drawings extends to the pipe bending machines themselves. The court opined that “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.’” However, machines are not included in this definition in the Act. To engage the remedies under the Copyright Act which prohibit the production or reproduction of “the work or any substantial part thereof in any material form whatever,” the thing being reproduced must be the work itself – in this case, that means reproduction of the drawings themselves.
Curiously, the court referred to the idea/expression dichotomy when it said that copyright does not extend to protection of the idea contained in the work. The court pointed to an example of reproducing the work in a different “material form” such as an electronic copy of paper drawings, or vice versa.
Fabricating the parts or assembling the machines depicted in the drawings is not a reproduction of the drawings. That part makes sense. However, the physical parts are not really the “idea” of the drawings, but the physical manifestation of what the drawings teach or instruct. A machine made from drawings is not an idea.
The Copyright Act does expressly extend copyright protection to “architectural works” which are physical structures. However, there is not coverage for machines, which indicates that Parliament really had no intention of making physical machines the subject of copyright.
Here, since the copyright owner sued the final user or buyer of the assembled machines, the court had to assess whether copyright was infringed by that party. The drawings themselves were not copied by Provincial Rentals. There was no evidence that they ever possessed the drawings at all. So they could not be held liable for copyright infringement.
The court noted that companies can, of course, protect their intellectual property rights in mechanical devices and the physical representations of those devices through patent, assuming the other patentability criteria are satisfied. Proline Pipe did not seek patent protection for its pipe bending machines, and ultimately could not indirectly obtain patent remedies through copyright. The court’s focus on “ideas” was, in my view, misguided, since a machine is clearly not an idea based on a design drawing. It’s a physical manifestation of the instructions which are expressed by the drawing. In any event, the scope of copyright is limited: it can protect the work itself, whether that is a drawing, a literary work, software code, or another work expressed in fixed form. But this court was clear that copyright law cannot be used as a stand-in for patent rights.