T-1334-86
DRG Inc. (Applicant)
v.
Datafile Limited and Registrar of Copyrights
(Respondents)
INDEXED AS: DRG INC. V. DATAFILE LTD.
Trial Division, Reed J.—Toronto, October 21;
Ottawa, November 20, 1987.
Copyright — Application to expunge registrations for
colour-coded labels for use in filing system to facilitate file
location and detection of misfiling — Whether labels "artistic
work" — Author's intention irrelevant — Cases of artistic
craftsmanship and architectural design distinguished
"Artistic work" generic description of types of work listed in
section — Labels considered "engravings" — Not mere func
tional tool — Graphic design, not filing system, copyrighted —
Labels author's original work, not copied from another —
Originality tests applied to 1) patents 2) modifications to
original works distinguished — Burden of disproving author
ship not discharged — Disclosure of idea in patent not pre
cluding copyright of work using idea.
Industrial Design — Graphic design for colour-coded labels
used in filing system copyrighted — Prima facie registrable
under Industrial Design Act — Intended for manufacture in
more than 50 copies by multiple industrial process — That
colour crucial element of design not precluding registration
Ornamentation meaning design relating to appearance of
article — Beautification not necessary — Design not solely
functional — Other designs serving purpose — Sufficient
originality to register design — Copyright Act, s. 46 preclud
ing copyright registration.
This is an application to expunge the respondent's copyright
registrations for colour-coded labels. A certain colour served as
the background for the numbers 0 to 9. The same colour
sequence was used as a background for the letters of the
alphabet, although it was used twice (with an identifying mark
added to signify the second use) to accommodate all 26 letters
of the alphabet. The colour sequence generally followed the
spectrum sequence of the rainbow with alternating values
(light, dark) of the colours used. The labels were stuck on a file
folder and folded over its edge to enable easy location of a file
and any misfiling which might occur. The letters and numbers
were of a standard type face and were reverse printed (letters
and numbers left white, number or letter outlined in black).
The issues were whether the design could be copyrighted, and
whether it was registrable under the Industrial Design Act and
therefore not protected by copyright pursuant to section 46 of
the Copyright Act.
Held, the application should be allowed and the registration
expunged.
Further to its argument that the design lacked the character
istics of an artistic work, the applicant submitted that the
primary criterion was the intention of the artist. As he did not
intend to create a work of art, the design was not an artistic
work and should not have been protected by copyright. The
cases cited in support of this argument all dealt with "artistic
craftsmanship" and British copyright legislation, which dif
ferentiated between artistic craftsmanship and other types of
artistic work. "Artistic work" in Canadian legislation includes
artistic craftsmanship. The applicant wrongly assumed that the
adjective "artistic" as it applied to "artistic work" was used in
the same sense as it was used in the phrase "artistic craftsman
ship". The courts should not have to determine what is artistic
as it is so subjective. The category of "artistic work" in general
need not meet a test of "artistic"-ness, or some assessment of
the author's intention. The phrase "artistic work" is merely a
generic description of the types of work mentioned in the
section. It is a general description of works which find expres
sion in a visual medium as opposed to works of literary, musical
or dramatic expression. If the respondent's graphic design did
not fall within the specifically enumerated category "engrav-
ings", it fell under the general category artistic works as
analogous to an engraving. In either case, it was not necessary
to ascertain "artistic"-ness. The intention test is not only
difficult to apply, it is not required with respect to works such
as drawings or photographs, where the only intention may be to
record a specific event. The labels were a graphic design
reproduced by a printing process. They were an artistic work
for purposes of copyright and no higher standard of originality
was required than in the case of literary copyright.
As to the argument that the labels were mere tools for the
implementation of a colour-coded filing system and were not
properly the subject-matter of copyright, it was the design of
the label which was copyrighted, not the filing system. The
label design was created to serve a functional purpose, but that
did not deprive it of the character of an "artistic work" nor of
copyright protection. Many items specifically listed in the
Copyright Act may be designed primarily to serve functional
purposes: maps, charts, photographs, etc.
The applicant argued that the work was not sufficiently
original because it did not constitute a substantial improvement
over the prior art. The only test for originality which applies is
whether the labels were the author's original work and were not
copied from another. The labels met this test. The work origi
nated from the author, as it was the result of substantial
experience. One must not confuse the originality test used in
the patent field. Also, the Rediffusion case, wherein it was held
that "mere selection is not enough to constitute copyright" was
limited to its facts, even though in the present case there was
more than mere selection. The requirement that additions and
improvements must be substantial was limited to a situation
where an author makes modifications to an original work.
The applicant had not discharged the burden of disproving
authorship.
The applicant argued that the design had been disclosed in
prior patents and therefore usage was in the public domain.
The disclosure of an idea in a patent does not prevent copyright
attaching to a work which uses that idea, but which is
independently a proper subject-matter for copyright. It was not
the idea but the form of expression which was copyrighted.
Subsection 46(1) of the Copyright Act provided that the Act
did not apply to designs capable of being registered under the
Industrial Design Act. The respondent's design was prima fade
registrable under the latter statute as it was intended to be
manufactured in more than 50 copies and to be reproduced by
a multiple industrial process. The fact that colour was a crucial
element of the label design did not preclude registration under
the Industrial Design Act.
The respondent argued that the design was not registrable
because it did not apply to the "ornamenting" of an article, in
the sense of making it more attractive. It was argued that the
design was a visual configuration designed to convey a message;
that it was not created for ornamentation. Ornamentation
connotes only that the design must relate to the appearance of
an article. The requirement that a design must make the
appearance of the article more attractive does not mean that
the courts must assess design merit, but if attractiveness had to
be determined in this case, the commercial success of the labels
demonstrated attractiveness.
The design of the labels was not solely functional, in that
that design was the only design which could serve the purpose.
While the use to which the labels would be put set rough limits
on their size, shape, etc., the function they served did not
dictate the design as a whole. A variety of designs could have
been used.
The respondent's design was sufficiently original to be
registrable under the Industrial Design Act. Accordingly, sec
tion 46 of the Copyright Act applied and the registration must
be expunged.
STATUTES AND REGULATIONS JUDICIALLY
CONSIDERED
Copyright Act, R.S.C. 1970, c. C-30, ss. 2, 46.
Copyright Act, 1956, 4 & 5 Eliz. II, c. 74 (U.K.).
Industrial Design Act, R.S.C. 1970, c. I-8.
Industrial Designs Rules, C.R.C., c. 964, R. 11.
CASES JUDICIALLY CONSIDERED
APPLIED:
Cimon Limited et al. v. Bench Made Furniture Corpn. et
al., [1965] 1 Ex.C.R. 811; (1964), 30 Fox Pat. C. 77;
Rotex Ltd. v. Pik Mills Ltd. and Milne and Phillips
(1966), 48 C.P.R. 277 (Ex. Ct.); Bayliner Marine Corp.
v. Dorai Boats Ltd., [1986] 3 F.C. 421; 10 C.P.R. (3d)
289 (C.A.); Re Application for Industrial Design Regis
tration by Robin R. Byran (1977), 56 C.P.R. (2d) 134
(Pat. App. Bd.); P.B. Cow & Coy. Ld. v. Cannon Rubber
Manufacturers Ld., [1959] R.P.C. 240 (Ch.D.); Carr-
Harris Products Ltd. v. Reliance Products Ltd. (1969),
58 C.P.R. 62 (Ex. Ct.).
DISTINGUISHED:
Burke & Margot Burke, Ld. v. Spicers Dress Designs,
[1936] Ch. 400; Merlet and Another v. Mothercare plc,
[1986] R.P.C. 115 (Ch.D.); Hensher (George) Ltd. v.
Restawile Upholstery (Lancs.) Ltd., [1975] R.P.C. 31
(H.L.); Hay & Hay Construction Co. v. Sloan et al.
(1957), 27 C.P.R. 132 (Ont. H.C.); Hollinrake v. Trus-
well, [1894] 3 Ch. 420 (C.A.); Cuisenaire v. South West
Imports Limited, [1969] S.C.R. 208; (1968), 57 C.P.R.
76; affg. [1968] 1 Ex.C.R. 493; (1967), 54 C.P.R. 1;
Canadian Admiral Corpn. Ltd. v. Rediffusion, Inc.,
[1954] Ex.C.R. 382; 20 C.P.R. 75; Thomas v. Turner
(1886), 33 Ch.D. 292 (C.A.).
REFERRED TO:
Chabot v. Davies, [1936] 3 All E. R. 221 (Ch.D.);
University of London Press v. University Tutorial Press,
[1916] 2 Ch. 601 (Ch.D.); Secretary of State for War v.
Cope (1919), 36 R.P.C. 273 (Ch.D.).
AUTHORS CITED
Fox, Harold G. The Canadian Law of Copyright and
Industrial Designs, 2nd ed. Toronto: The Carswell
Company Limited, 1967.
Russell-Clarke on Copyright in Industrial Designs, 5th
ed., M. Fysh, London: Sweet & Maxwell, 1974.
COUNSEL:
R. Scott Joliffe and Neil R. Belmore for
applicant.
Douglas Johnson, Q.C. and Frank Farfan for
respondent, Datafile Limited.
SOLICITORS:
Gowling and Henderson, Toronto, for appli
cant.
MacBeth and Johnson, Toronto, for respon
dent, Datafile Limited.
The following are the reasons for judgment
rendered in English by
REED J.: The issue in this case is whether
certain labels which the respondent has registered
under the Copyright Act, R.S.C. 1970, c. C-30,
are properly the subject of copyright. The appli
cant seeks to expunge those registrations.
The registrations in question are Registration
No. 333,977, "A Series of Colour Coded Numeric
Labels Comprising the Numbers 0-9" and Regis
tration No. 333,976, "A Series of Colour Coded
Labels Comprising the Letters of the Alphabet
from A—Z to be Used in Colour Coded Filing
Systems". Both were registered on May 30, 1984,
as artistic works. They carry a first publication
date of September 6, 1976.
The labels, while they appear in the copyright
registration in a serial format (each number label
contiguous to the next in numerical order and each
letter label contiguous to the next in alphabetic
order) are neither sold nor used that way. They are
sold in a roll or sheet format, each roll or sheet
containing labels with respect to one number or
letter only.
The labels are designed to be affixed to file
folders to enable easy location of a file and easy
identification of any misfiling which may take
place. The labels serve these functions by reason of
their colour. The following colours serve as the
background for the indicated number: light
red — 0; dark red — 1; light orange — 2; dark
orange — 3; light green — 4; dark green — 5; light
blue — 6; dark magenta — 7; light magenta — 8;
dark brown — 9. The same sequence of colours was
chosen as backgrounds for the letters of the alpha
bet (eg.: light red — A; dark red — B; etc.) Previous
labels (also devised by Mr. Barber, who is the
author of the design now in issue) had used a
similar colour sequence but because of the larger
number of letters (26), than numbers (10), the
colour sequence had to be used three times over,
with some identifying mark (a bar or stripe) added
to signify the second and third use.
The series of labels for which copyright is now
sought differs from the earlier ones. Mr. Barber
modified the colour sequence (expanded it) so that
it was necessary to use the colour sequence only
twice to accommodate all 26 letters of the alpha
bet. This modification took the following form:
yellow (for the letters E and Q) was interposed
after dark orange (for the letters D and P); a light
brown (for the letters L and X) was added at the
end of the sequence, after dark brown (for the
letters K and W); the labels for Y and Z were
given the background colours white and grey
respectively. It should be noted that the colour
sequence chosen generally follows the spectrum
sequence of the rainbow (red, orange, green, blue,
magenta) with alternating values (light, dark) of
the colours used. The labels, both the ones to
which these registrations relate and the earlier
labels designed by Mr. Barber, were purposely
designed in this fashion. It was Mr. Barber's view
that this prismatic colour sequence would be more
easily remembered than a more arbitrary colour
arrangement.
The labels are designed to be stuck on a file
folder and folded over its edge. Thus, in an open
filing system the colours on the edge of the file
give an easy indication as to the letters or numbers
of the file and any misfiling which might occur.
The letters and numbers on the label are of a size
and shape which make them easily visible to per
sons seeking a specific file. Mr. Barber chose a
standard type face for the letters and numbers and
chose to have them reverse printed (i.e.: the letters
and numbers left white). The digit or letter, as the
case may be, was then outlined in black. This
design created a label having a greater degree of
clarity and ease of recognition than had been the
case with his earlier labels. His expert witness
(Karen Okada) rather pithily described the visual
impact of the labels:
A Datafile label ... impacts its numeric message via modes
(i.e. the colour and the digit itself), merged into one presenta
tion. The arrangement is such that the eye focuses immediately
on the digit. The colour does not interfere with the digit, and at
the same time the digit does not detract from the colour.
The applicant seeks to have the copyright regis
tration expunged on the grounds that: (1) the
design is not a proper subject-matter for copyright
because it lacks the characteristics of an artistic
work; (2) the design is not a proper subject for
copyright because it is essentially a functional tool;
(3) the work is not sufficiently original because it
does not constitute a substantial modification of
the pre-existing art; (4) the alleged author was not
the author of the work; (5) the "work" was dis
closed in prior patents and as such was dedicated
to the public; (6) the design was registrable under
the Industrial Design Act, R.S.C. 1970, c. I-8 and
therefore is not protectable by copyright as a result
of the operation of section 46 of the Copyright
Act.
I will deal first with the argument that the work
is not a proper subject-matter for copyright
because it lacks the characteristics of an "artistic
work". The following passage is cited from Burke
& Margot Burke, Ld. v. Spicers Dress Designs,
[ 1936] Ch. 400, at page 408 to support this
contention:
... the meaning of the term "artistic" as indicated in the
Oxford English Dictionary, is that which pertains to an artist.
An artist is defined in the same dictionary as: "One who
cultivates one of the fine arts in which the object is mainly to
gratify the aesthetic emotions by perfection of execution wheth
er in creation or representation".
It is suggested that criteria such as the following
must be applied: (1) is the work in question a work
of art? (2) did the artist have a conscious intention
to create a work of art; (3) would a substantial
section of the public genuinely admire and value
the thing for its appearance and get intellectual or
emotional pleasure from it? In support of these
propositions are cited: Merlet and Another v.
Mothercare plc, [1986] R.P.C. 115 (Ch.D.) and
Hensher (George) Ltd. v. Restawile Upholstery
(Lancs.) Ltd., [1975] R.P.C. 31 (H.L.). Counsel's
position is that the application of criteria such as
those above does not involve a determination of
whether or not a work has artistic merit or not. He
argues that the question of merit is irrelevant but
that the predominant criterion to be applied is the
intention of the artist. Thus, in this case, he
argues: the author of the work intended to create a
utilitarian object, not a work of art and, therefore,
the work produced is not an artistic work and
should not be protected by copyright.
I have considerable difficulty with this argu
ment. In the first place the cases cited, Burke,
Merlet and Hensher, all deal with works of "artis-
tic craftsmanship" and all deal with the United
Kingdom copyright legislation. Two of the cases,
Merlet and Hensher relate to subsection 3(1) of
the United Kingdom Copyright Act, 1956 [4 & 5
Eliz. II, c. 74 (U.K.)]. That section specifically
indicates that a different test is applicable to works
of artistic craftsmanship from that applicable to
other types of artistic works covered by the
legislation:
3.—(1) In this Act "artistic work" means a work of any of
the following descriptions, that is to say,—
(a) the following, irrespective of artistic quality, namely
paintings, sculptures, drawings, engravings and photo
graphs;
(b) works of architecture, being either buildings or models
for buildings;
(c) works of artistic craftsmanship, not falling within either
of the preceding paragraphs. [Underlining added.]
The applicable Canadian legislative provision is of
course drafted differently (it follows the pre -1957
United Kingdom text):
2....
"artistic work" includes works of painting, drawing, sculpture
and artistic craftsmanship, and architectural works of art
and engravings and photographs;
The Burke case, by way of dicta, indicates that the
courts may be required to determine whether a
work is "artistic" in relation to works of artistic
craftsmanship, but the ratio of that case relates to
authorship. Copyright was refused to the first
maker of the dress in question on the ground that
the maker had not in fact been the author of the
design but had copied a design originally set out in
a sketch drawn by someone else.
As I understand counsel's argument it is that the
category "artistic work", in the Canadian Copy
right Act, requires determination of "artistic"-ness
(i.e. some assessment of the intention of the author
and whether he or she intended to create a work of
art). If this is not so, as a general rule, then, he
would argue that non-enumerated artistic works,
i.e., those which cannot be classified as paintings,
drawings, sculptures, engravings, or photographs,
at least, must meet such a test. (Works of artistic
craftsmanship and architectural works of art
would also be included in the category of works
which must meet such a test by virtue of the
wording of the statute.)
Thus counsel argues either the whole category
of artistic works must meet an "artistic" test and
the respondent's labels do not qualify, or, non-
enumerated types of artistic works (as well as the
enumerated categories of architecture and crafts
manship) must meet such a test and the respon
dent's works fall within the non-enumerated cate
gory. In either event, it is argued the works do not
meet the test of "artistic"-ness. It will be noted
that this argument is based on a view of the
statutory definition of "artistic work" as one which
deems paintings, drawings, sculptures, engravings
and photographs to be artistic, but which requires
that proof be given as to the "artistic"-ness of
other types of works. It is immediately obvious
that these arguments are based on the assumption
that the adjective "artistic", as it applies to the
whole category of "artistic work", is being used in
the same sense as it is used in the phrase "artistic
craftsmanship".
Requiring courts to determine what is "artistic",
be it with respect only to works of craftsmanship,
architecture and unenumerated works, or with
respect to the broader category of all "artistic
work", is not a happy situation. For example, I
note that the attempt of the House of Lords to do
so in the Hensher case, with respect to a work of
craftsmanship, led to findings which can be sum
marized as follows. Lord Reid expressed the view
that a thing is artistic if any substantial section of
the public genuinely admires and values it for its
appearance and gets pleasure or satisfaction,
whether emotional or intellectual, from looking at
it (page 54). Lord Morris of Borth-Y-Gest
expressed the view that distinctive features of
design and skill in workmanship or distinctive
characteristics of shape, form and finish would not
make a work artistic without "something addition
al and different"; the object must be judged as a
thing in itself, regardless of the opinions of the
creator or prospective owner; the question must be
asked, "Does it have the character or virtue of
being artistic?" and the court should rely on the
testimony of expert witnesses (page 57). Viscount
Dilhorne expressed the view that the words "works
of artistic craftsmanship" should be given their
ordinary and natural meaning and that a judge
should rely on expert witnesses but that it was not
enough that one segment of the public might find
the work artistic (page 62). Lord Simon held that
artistic merit was irrelevant to a determination of
whether a work of artistic craftsmanship existed;
rather, one should ask whether the work was one
produced by an individual who was an artist-
craftsman, and to determine this the views of
experts (i.e., other artist-craftsmen) should be
called (page 69). Lord Kilbrandon expressed the
view that the intention of the creator to create a
work of art, not the reaction of others, was the
primary test (page 71). He also noted that between
the two lower court judgments, the lawyers for the
parties and the five decisions in the House of
Lords, nine different tests, as to what is meant by
"artistic" and how it should be determined, had
been rejected.
Another attempt to define "artistic", or rather
"work of art" as it relates to the architectural field
is found in the decision Hay & Hay Construction
Co. v. Sloan et al. (1957), 27 C.P.R. 132 (Ont.
H.C.). In that case, it was held that the court was
not required to decide whether a building was good
or bad in an aesthetic sense but rather it should
consider the intention of the creator. It was held
that if there had been an intention to create a
thing of beauty or delight and there existed origi
nality in the sense described in Chabot v. Davies,
[1936] 3 All E. R. 221 (Ch.D.), then the building
was a proper subject for copyright.
To turn then to the definition of "artistic work"
as set out in section 2 of the Copyright Act, I
forbear from stating whether "artistic"-ness must
be determined by the courts for works of crafts
manship and architecture. It is not necessary to
discuss this issue, although it must be noted that
the text of Canadian statute mirrors that of the
1911 Act of the United Kingdom where jurispru
dence has seemed to indicate that such is required.
Also the Hay case, noted above, has accepted this
view and struggled to find an appropriate test.
Even if works of craftsmanship and architecture
must be measured against some test of "artistic"
-ness (as set out in the Hensher, Merlet or Hay
cases) I do not accept that the category of artistic
works in general must meet such a test. I do not
accept that the word "artistic" in reference to
"artistic work" is being used in the same sense as
the word "artistic" in reference to "works of artis
tic craftsmanship", that is, if in the latter case
"artistic"-ness requires a determination along the
lines of that attempted in Hensher, Merlet or Hay.
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 descrip
tion of works which find expression in a visual
medium as opposed to works of literary, musical or
dramatic expression.
Specifically, then, with respect to the respon
dent's label designs, first of all, it is my view that
they fall within the enumerated classes of works
set out in the definition of artistic work. They
come within the category of "engravings"; that
concept is expanded by section 2, to include:
2....
... etchings, lithographs, woodcuts, prints and other similar
works not being photographs; [Underlining added.]
Mr. Barber, in paragraph 22 of his affidavit, states
"each of the labels ... is a coloured print, printed
on white paper in a printing press by printing
plates or engravings". That evidence has not been
challenged.
If I am wrong in this and the respondent's work,
which I would characterize as a graphic design,
does not fall within the specifically enumerated
category "engravings", then I would hold that it
falls within the general category of artistic works
as being analogous to an engraving. For the rea
sons given above, it is my view that in either case,
it is not necessary to ascertain "artistic"-ness along
the lines of the investigation undertaken by the
House of Lords in the Hensher case, or even to
ascertain such by reference to a more restrained
basis, as counsel would suggest, by determining
whether the intention of the author, at the time of
creation, was to create a work of art. In this
regard, I note that not only is this intention test a
difficult one to apply, it is certainly not required
with respect to works such as drawings or photo
graphs (where the only intention may be to record
a specific event). The respondent's work is a
graphic design reproduced by a printing process.
As such it is an artistic work for purposes of
copyright and no higher standard of originality is
required than in the case of literary copyright:
University of London Press v. University Tutorial
Press, [1916] 2 Ch. 601 (Ch.D.), at page 610.
What then of the argument that the work is not
protected by copyright because it is primarily
designed to serve a functional purpose. The deci
sions in Hollinrake v. Truswell, [1894] 3 Ch. 420
(C.A.) and Cuisenaire v. South West Imports
Limited, [1969] S.C.R. 208; (1968), 57 C.P.R. 76
are cited. In Hollinrake v. Truswell, a sleeve
pattern was held not to be a proper subject for
copyright because the letters or characters thereon
were not separately publishable:
... it is not a publication complete in itself, but is only a
direction on a tool or machine, to be understood and used with
it, such direction cannot, in my opinion, be severed from the
tool or machine of which it is really part ....
When the real character of the thing is ascertained, it proves to
be a measuring tool or instrument ....
The plaintiff is really seeking a monopoly of her mode of
measuring for sleeves of dresses under the guise of a claim to
literary copyright.
And in Cuisenaire v. South West Imports Lim
ited [at pages 211 S.C.R.; 79 C.P.R.]:
... the rods are merely devices which afford a practical means
of employing the method and presenting it in graphic form to
young children. The "original" work or production whether it
be characterized as literary, artistic or scientific, was the book.
In seeking to assert a copyright in the "rods" which are
described in his book as opposed to the book itself, the appel
lant is faced with the principle stated by Davey L.J. in the case
of Hollinrake v. Truswell ... .
Counsel argues that the labels identified in the
respondent's copyright registration are nothing
more than devices or tools for the implementation
of a colour-coded filing system and, as such, are
not properly the subject-matter of copyright.
Both the Hollinrake and Cuisenaire cases are
easily distinguishable from the case at bar. Hollin-
rake dealt with something called a "sleeve chart"
which the court characterized as a measuring
instrument (similar to a ruler). It was held that the
letters and figures in the instrument were part of
the measuring instrument and did not constitute a
literary production. Similarly, in the Cuisenaire
case the coloured rods were held to be tools for the
implementation of the appellant's teaching tech
nique but which could not be related to either an
artistic or literary work. I note that in the decision
by Mr. Justice Noël [1968] 1 Ex.C.R. 493;
(1967), 54 C.P.R. 1, at pages 516 Ex.C.R.; 23-24
C.P.R. he draws a distinction between the rods and
flash cards used as educational aids in teaching
arithmetic. The flash cards bore words, numbers
and pictures:
The cards in the above case were, however, a literary or
graphic work and, of course, there is that difference with the
instant case where plaintiffs rods could not be related to either
an artistic or literary work unless they could be said to be
reproductions of the written instructions contained in plaintiffs
book Les nombres en couleur which contains a table, and in
another case, a series of plain and coloured circles which are
numbered and set out in the form of a chart. This, however,
they cannot be as these rods are not in the nature of a table or
compilation and, therefore, do not reproduce the written
instructions in his book.
With respect to the claim for artistic copyright,
Mr. Justice Noël said, at pages 514 Ex.C.R.;
21-22 C.P.R:
These rods indeed are tools and nothing more, the same as
colours, for instance, are tools in teaching children how to
paint. They can take on meaning only when considered and
integrated with a concept itself which in itself is not entitled to
protection.
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.
In the present case it is not the labels themselves
which are claimed to be the subject of copyright (it
is the design thereon). It is not the file folder, not
the label, for which copyright is claimed. It is the
graphic design. In my view, this is similar to the
flash cards mentioned by Mr. Justice Noël.
Despite counsel's argument to the contrary, it is
not the colour-coded filing system which is being
protected by copyright. It is the design of the label.
Indeed, there is nothing to prevent the applicant
from designing labels compatible with the respon
dent's filing system, providing it does not copy the
respondent's labels. I note in this regard that the
simpler a copyrighted work is, the more exact must
be the copying in order to constitute infringement.
It is true that, in designing the labels, function
ality was a very important consideration. Their
effectiveness (and the desire of the applicant to
copy them) no doubt arises from the fact that their
design features (balance, shape, colour, letter and
number size, etc.) combine to make a particularly
effective visual presentation. But I cannot hold
that because function and design, in this case,
coalesce (necessarily coalesce) the design, thereby
becomes unprotectable by copyright. I note that
many items specifically listed in the Copyright Act
may be designed primarily to serve functional
purposes: maps, charts, photographs, architectural
buildings, works of artistic craftsmanship. I quote
from Lord Simon in the Hensher case, at page 68:
And in one purchaser alone the motives may be so mixed that it
is impossible to say what is the primary inducement to acquisi
tion or retention.
The label design was created to serve a functional
purpose. That does not deprive it of the character
of an "artistic work" nor of copyright protection.
With respect to the argument that the work is
not sufficiently original because it does not consti
tute a substantial improvement over the prior art,
counsel's argument proceeds as follows:
There is nothing original in the Respondents' labels. Labels
existing prior to the creation of Respondents' "works" contain
all of the elements of the Respondents' labels, including same
size, shape, fold, typeface, assignment of colour to number, and
"prismatic" colour sequence. The only minor variation is with
respect to the Respondents' alphabetic labels, where the colours
yellow, light brown, white and grey are added to the previous
colour sequence.
It is true that all of the elements in the respon
dent's labels, except for the modification to the
prismatic sequence, can be found in pre-existing
labels. But one has to go to several different labels
to collect all the elements. I do not think this is a
test for originality which applies in the copyright
field. It is a test which applies with respect to
patents. In the copyright field, as noted above, the
test is whether or not the work was the author's
original production. Counsel argues that in order
to have copyright: the author must have expended
"a substantial degree of skill, industry or experi
ence" (see Fox, The Canadian Law of Copyright
and Industrial Designs, 2nd ed., Toronto: The
Carswell Company Limited, 1967 at page 4);
"mere selection is not enough to constitute copy
right" (see Canadian Admiral Corpn. Ltd. v.
Rediffusion, Inc., [1954] Ex.C.R. 382, at page
395; 20 C.P.R. 75, at page 87); "If an artistic
work is merely a reproduction with minor improve
ments or variations on a previous one, it is not an
original work, but if the additions and improve
ments are substantial, there may be copyright"
(see Fox, supra, at page 152).
With respect to the first criterion, there is no
doubt that the work in this case originated from
the author in the sense that it was the result of
substantial experience on his part. With_respect to
the statement that "mere selection is not enough",
I think that statement has to be put into the
context of the Rediffusion case. The ratio of that
case was that telecasts did not have a fixed ma
terial form and therefore were not the subject of
copyright. The statement that "mere selection is
not enough", to constitute copyright, does not
mesh well with other jurisprudence which has held
that tables, compilations and other works of a
similar nature can be the subject of copyright.
Therefore, I do not think it too helpful as a test
when it is removed from the context of the case to
which it relates. Also, in the present case, there
was more than mere selection in the sense in which
that term is used in the Rediffusion case.
The requirement that additions and improve
ments must be substantial may relate to a situation
where the author starts with a copied work and
makes modifications thereto (e.g., variations on a
musical theme; abridgements of a literary work).
The case cited by Fox for this particular require
ment is Thomas v. Turner (1886), 33 Ch.D. 292
(C.A.). It relates to an author's right to have
copyright not only in the first edition of his book
but also in his second and third editions, etc. It is a
case which relates particularly to the United King
dom Copyright Act 1842, [5 & 6 Vict., c. 45] of
the time, which Act required registration in order
to sue for breach of copyright and which provided
for a copyright life of 42 years from the date of
first publication of the book. This case has no
application to the present situation.
In my view, the respondent's work has met the
requirement of originality which pertains; it was
the original work of the author; it was not copied
from another.
The applicant argues that Mr. Barber, who is
described in the registration as the author of the
work, was not in fact such. It is argued that the
"work" was nothing more than an order to the
printers to create labels having certain background
colours, certain letter and number colours (white
outlined in black) in a certain type face and of a
certain size. Thus, it is argued there was no "fix-
ed" work created by Mr. Barber and in order to
obtain copyright there must be a fixation of the
work by the author in some material form. It is
argued, if the work is a subject-matter for copy
right, it is the printer who is the author.
I do not accept this argument. The respondent
has a registered copyright. The applicant initiated
this proceeding and, therefore, has the burden of
proof. The work was first published in 1976; the
evidence, as I understand it, (as counsel represent
ed it to be) indicates that while Mr. Barber could
not now find all documentary records, he gave
evidence that there would, at the time, have been
something in the nature of a sketch of the design.
He did produce the order which had been sent to
the printer. In the light of this evidence I do not
think the applicant can be said to have met the
burden of disproving authorship by Mr. Barber.
What then of the argument that the use of a
prismatic colour-coded sequence for file identifica
tion was disclosed in two patents filed by Mr.
Barber and, therefore, that usage is now in the
public domain. The two patents in question are:
Canadian Patent No. 843183, "Filing System
Index Indicators and Method of Producing Same"
carrying an application date of June 7, 1966 and
Canadian Patent No. 925764, "Colour Coded
Alphabetic Index Indicators", carrying an applica
tion date of May 1, 1970. Both patents relate to a
method of sorting and printing cards with colours
and digits on them for attachment to file folders,
to aid in the identification of the file. As I indicat
ed to counsel at the hearing, I do not see much
merit in this argument. I do not see how the
disclosure of an idea in a patent (the use of a
prismatic colour sequence for file identification)
can prevent copyright attaching to a work which
uses that idea but which is independently a proper
subject-matter for copyright. The idea is not copy
righted. It is the form of expression which is the
subject of the copyright. The fact that in creating
that form of expression the idea of a prismatic
colour sequence was used does not give copyright
in the idea of the prismatic colour sequence, nor
preclude copyright attaching to the design created
by reference to it.
It is necessary then to turn to what is the most
serious hurdle for the respondent: subsection 46(1)
of the Copyright Act. That section provides:
46. (1) This Act does not apply to designs capable of being
registered under the Industrial Design Act, except designs that,
though capable of being so registered, are not used or intended
to be used as models or patterns to be multiplied by any
industrial process.
The respondent's design is one at is prima
facie registrable under the Industria Design Act
[R.S.C. 1970, c. I-81. It is intende be manufac
tured in more than 50 copies and to be reproduced
by a multiple industrial process. The respondent
argues that the label design cannot be registered
under that Act because: (1) colour is a crucial
element of the design and colour per se cannot
form the subject of an industrial design; (2) the set
of labels does not have any fixed appearance
because the set is a collection of individual labels
and the series of labels do not meet the require
ments of Rule 11(2) of the Industrial Designs
Rules [C.R.C., c. 964] because all the labels do
not bear "the same design with or without modifi
cation"; (3) industrial designs are ones which are
to be applied to the ornamenting of an article and
thus they must have as their object the making of
the appearance of the article more attractive; (4) a
higher degree of originality is needed for an indus
trial design than for copyright and that higher
degree is not present in this case.
With respect to the argument that colour cannot
be the subject-matter of an industrial design, coun
sel for the respondent cited Fysh, M., Russell-
Clarke on Copyright in Industrial Designs, 5th ed.
(1974) and Fox (supra), at page 660. Counsel for
the applicant cites Rotex Ltd. v. Pik Mills Ltd.
and Milne and Phillips (1966), 48 C.P.R. 277
(Ex. Ct.) and Secretary of State for War v. Cope
(1919), 36 R.P.C. 273 (Ch.D.) as examples of
cases in which colour has formed a part of the
design. After reading the authorities cited, I think
the law is correctly summarized in the Fysh edi
tion of Russell-Clarke, at page 32 as follows:
If colour was in the normal course of events taken into
account as forming part of the design, as was pointed out by the
Assistant Comptroller in his decision in the Associated Colour
Printers' Application, it would be practically impossible to
secure effective protection for any design for a pattern because
either it would be necessary to register the pattern in all
possible combinations of coulours, or trade rivals would be able
with impunity to apply the pattern in colours other than those
shown in the registration. It would appear, therefore, that
colour must, prima facie, be ignored. Ordinary differences of
colour may, in other words, be regarded as mere "trade vari
ants," which do not alter the identity of the design. In certain
exceptional cases, however (e.g. a shot design for a silk hand
kerchief), it is possible that the colours and their arrangement
might form part of the design, especially if the colouring was
called attention to in the claim.
It cannot be accurate to say that colour can
never be a significant element of an industrial
design. In some designs, such as that for the tartan
fabric with which Chief Justice Thurlow dealt in
the Rotex case, colour was an essential element.
There is no reason why the respondent's design
could not be effectively protected under the Indus
trial Design Act merely because colour is an
important element of that design.
I do not understand the respondent's second
argument as to why the design of the labels is not
registrable under the Industrial Design Act. Rule
11(2), as I read it, has no application to the
present situation:
11. (1) A design shall be deemed to be used as a model or
pattern to be multiplied by any industrial process within the
meaning of section 46 of the Copyright Act,
(a) where the design is reproduced or is intended to be
reproduced in more than 50 single articles, unless all the
articles in which the design is reproduced or is intended to be
reproduced together form only a single set as defined in
subsection 2; and
(b) where the design is to be applied to
(i) printed paper hangings,
(ii) carpets, floor cloths, or oil cloths manufactured or sold
in lengths or pieces,
(iii) textile piece goods, or textile goods manufactured or
sold in lengths or pieces, and
(iv) lace, not made by hand.
(2) For the purposes of this section, "set" means a number
of articles of the same general character ordinarily on sale
together, or intended to be used together, all bearing the same
design with or without modification not sufficient to alter the
character or not substantially affecting the identity thereof.
The purpose of Rule 11(2), in conjunction with
11(1) to which it relates, is to prevent articles,
which might if counted individually constitute
more than 50 articles, being so treated if they form
sets. For example, a set of checkers will not be
treated as falling under Rule 11(1) unless 50 sets
are produced.
The respondent argues that the design is not
capable of being registered because it is not one
which is applied to the "ornamenting" of an
article. This argument is based on President Jack-
ett's decision in Cimon Limited et al. v. Bench
Made Furniture Corpn. et al., [1965] 1 Ex.C.R.
811; (1964), 30 Fox Pat. C. 77, especially at pages
831 Ex.C.R.; 95 Fox Pat. C.:
The sort of design that can be registered is therefore a design to
be "applied" to "the ornamenting" of an article. It must
therefore be something that determines the appearance of an
article, or some part of an article, because ornamenting relates
to appearance. And it must have as its objective making the
appearance of the article more attractive because that is the
purpose of ornamenting. It cannot be something that deter
mines the nature of an article as such (as opposed to mere
appearance) and it cannot be something that determines how
an article is to be created. In other words, it cannot create a
monopoly in "a product" or "a process" .... [Underlining
added.]
It is well to note that President Jackett, in the
above quotation, placed the words "ornamenting"
and "applied" in quotation marks. Presumably this
is because those words, taken out of the context of
the case, can be interpreted as indicating that a
design, in order to be classified as such, must have
the characteristic of an unnecessary but beautify
ing embellishment or something "stuck on" to an
article. Clearly, from President Jackett's decision,
this is not so. It was the shape of a sofa which was
in issue before him. That shape was an integral
part of the article. President Jackett held the
requirements of "ornamenting" and being
"applied" meant only that the design must be
something which determines the appearance of the
article. When one considers the types of designs
which have traditionally been protected by the
Industrial Design Act, such as fabric patterns and
lace where the design is an integral part of the
article, it is clear that the words "ornamenting"
and "applied" can have no greater meaning than
that indicated by President Jackett. In addition,
this is the interpretation recently applied by the
Federal Court of Appeal in Bayliner Marine Corp.
v. Dorai Boats Ltd., [1986] 3 F.C. 421, at pages
431-432; 10 C.P.R. (3d) 289, at page 296. Mr.
Justice Mahoney wrote:
In my view, the functional requirements of the hull and
superstructure of a pleasure boat is that they provide a buoyant
platform within and upon which the essentials and amenities
required by its operator may be installed. The general shape
may be largely dictated by functional considerations; however,
the details of that shape which serve to distinguish the appear
ance of, for example, one 16 1 / 2 foot runabout from another are
essentially ornamental. Those details are what make one run
about more attractive, in the eyes of the beholder, than another.
[Underlining added.]
In my view, the requirement that a design
"ornament" an article requires no more than that
it "distinguish the appearance" of that article.
The design in this case is a visual configuration
designed to convey a message; the design is func
tional; it is simple. Therefore, it is argued the
design was not created for ornamentation; indeed
ornamentation would be distracting and detract
from its effectiveness. As noted above, "ornamen-
tation" as used by President Jackett in Cimon and
Mr. Justice Mahoney in Doral Boats connotes
only that the design must relate to the appearance
of an article. Functional simplicity in a design is
not precluded from registration. What is more, I
do not think the requirement that a design must
have, as its objective, "making the appearance of
the article more attractive" means that some
assessment of design merit must be made by the
courts. Mr. Justice Mahoney spoke of the details
of the shape being the elements which made the
runabout more attractive in the eyes of the behold
er. In the present case, if I had to determine
attractiveness, I would note that the respondent's
labels have been very successful commercially.
That, to me, demonstrates their attractiveness.
Also, I would note that the design of the labels
is not solely functional, in the sense that that
design is the only conceivable design which can
serve the purpose in question. In Re Application
for Industrial Design Registration by Robin R.
Byran (1977), 56 C.P.R. (2d) 134, the Patent
Appeal Board and the Commissioner of Patents
said, at page 138:
... a design for a functional device may be registered if it does
not embrace every conceivable configuration for performing
that function, and it also satisfies the additional object of
creating a visual appeal readily discernable to the eye of the
beholder.
In reaching this conclusion, the Commissioner
relied partly on the decision in P.B. Cow & Coy.
Ld. v. Cannon Rubber Manufacturers Ld., [1959]
R.P.C. 240 (Ch.D.). The issue there was whether a
hot water bottle's ribbed surface (which assisted in
dispersing heat, but also gave it a characteristic
appearance) was registrable as an industrial
design. The decisionmaker held, at page 245, that
the design was registrable because it was: "impos-
sible to hold ... that the design in suit is of so
comprehensive a character that it embraces every
conceivable configuration of the faces of a hot
water bottle wherein raised portions of prescribed
dimensions alternate with hollows of prescribed
dimensions" (i.e., a hot water bottle could also be
made with circular protrusions, or with ribs run
ning the other way, etc.). In Carr-Harris Products
Ltd. v. Reliance Products Ltd. (1969), 58 C.P.R.
62 (Ex. Ct.), Mr. Justice Cattanach found that the
design of a tent peg was registrable. He stated, at
page 82:
While utility sets rough limits to variation in shape or form I do
not think that the use and function of a tent peg dictated the
shape of the plaintiffs design as a whole ... .
In the present case, while the use to which the
labels will be put sets rough limits on their size,
shape, etc., the function they serve does not dictate
the design as a whole. A variety of designs could
be used.
That leaves for consideration the final point:
whether the respondent's works lack sufficient
originality to be registrable under the Industrial
Design Act. Counsel is in a bit of a dilemma as far
as this aspect of the case is concerned because he
was constrained to call evidence to support the
argument that there was substantial artistic merit
and originality in the design. This was done to
meet the argument that in the case of artistic
works something more than the literary copyright
test of originality was required. At the same time,
to escape the applicability of the Industrial Design
Act and section 46 of the Copyright Act it
becomes necessary to argue lack of originality. In
any event, I need say no more than that in my
view, the respondent's design is such that it has
sufficient originality to be registrable under the
Industrial Design Act. Accordingly, section 46 of
the Copyright Act applies and the registration
must be expunged.
You are being directed to the most recent version of the statute which may not be the version considered at the time of the judgment.