Digests

Milliken & Co. v. Interface Flooring Systems (Canada) Inc.

A-120-98, A-121-98

Rothstein J.A.

26/1/00

15 pp.

Appeal from Trial Division decision ([1998] 3 F.C. 103) dismissing appellants' claims for copyright infringement--Appellants alleging respondent infringed copyright in Mangrove design, artistic work created in France by Claire Iles under name "Harmonie"--Respondent winning bid to supply carpet tiles at Calgary Airport--For carpet tile product, respondent copied Harmonie design, giving rise to litigation--Appellants registering Mangrove design under Industrial Design Act on November 6, 1990--Act then restricting industrial design protection to proprietors of designs, not recognizing assignees (as appellant Milliken was) as proprietors--Legislation changed in 1993 to allow assignees to register industrial designs as proprietors, also providing assignees could not bring infringement actions based on claims arising before amendments came into force--Copyright Act, new s. 64 brought into force on June 8, 1988, only potential source of copyright protection for work in question--If design created on or after June 8, 1988, new s. 64 applies, if before, former s. 64(1) continues to apply--If Harmonie work created as design prior to June 8, 1988, copyright protection not available, appeal could not succeed--On basis of adverse inference, Trial Judge concluded Harmonie work which appellants purchased from Ms. Iles created prior to June 8, 1988--Trial Judge entitled to draw adverse inference, to conclude Harmonie work created prior to June 8, 1988--Work which appellants purchased from Ms. Iles on January 11, 1989 capable of registration under Industrial Design Act, used as pattern to be multiplied by industrial process--Therefore, Harmonie work design capable of being registered under Industrial Design Act, intended to be used as pattern to be multiplied by industrial process, not subject to copyright protection by operation of Copyright Act, s. 64(1) which applied to industrial designs created prior to June 8, 1988--Whether work design determined by application of relevant law--For work created prior to June 8, 1988, relevant law former s. 64(1), not new s. 64--On facts of case, resort to new s. 64 misplaced--Appellants ignoring words of definition of "design" in s. 64(1)--Finished article in definition of design need not be useful article--Appellants' argument on application of new s. 64 directed solely at avoiding clear intention of Parliament, expressed in s. 64(4), law prior to June 8, 1988 to continue to apply to designs created before that date--Trial Judge correct in concluding design in question not protected under Copyright Act by reason of Copyright Act, former s. 64(1)--Appeal dismissed--Industrial Design Act, R.S.C., 1985, c. I-9--Copyright Act, R.S.C., 1985, c. C-42, s. 64 (as am. by R.S.C., 1985 (4th Supp.), c. 10, s. 11).