Copyright protection for technical drawings in the Commonwealth Caribbean

Author: Eddy Ventose (Faculty of Law, University of the West Indies)

Gold Rock Corp Limited v Nylund Hylton (The Bahamas) [2015] UKPC 17 20 April 2015

Journal of Intellectual Property Law & Practice (2015) doi: 10.1093/jiplp/jpv130, first published online: August 5, 2015

The Privy Council rules that technical drawings of septic tanks are copyright protected in the Bahamas.

Legal context and facts

The principal issue raised this case was whether a technical drawing containing details of a septic tank was capable of protection under the Copyright Act (Chapter 323) of the Commonwealth of the Bahamas. Gold Rock Corp Ltd and Del Zotto Products of Florida Inc (the appellants) are in the business of manufacturing concrete septic tanks. The origin of the drawing is a technical drawing created by the appellants for a 900-gallon septic tank. One of Gold Rock's employees then used that drawing to create a technical drawing for a 950-gallon septic tank (LAD5). Mr Nylund Hylton, a former employee of Gold Rock, acquired intimate knowledge of the appellant's mould for making septic tanks; and he made sketches and took photographs that he took away with him when he left. The trial judge found that (1) Hylton had direct access to Gold Rock's technical drawings, including the LAD5; (2) based on the overwhelming similarities between that drawing and LAD5 (including the reproduction of spelling errors) the defendant's drawing (HC8) was a copy of LAD5; (3) Hylton was the only link between LAD5 and HC8. As a result, the trial judge concluded that Hylton was the person who had infringed the copyright in LAD5 by preparing or giving instructions for the preparation of copies of LAD5. In other words, it was a finding of direct copying by Hylton of the technical drawing itself. The Court of Appeal of the Bahamas, reversing the decision on the trial judge, held the technical drawings did not constitute ‘artistic works’ as defined in section 2(1) but fell within the definition of ‘design of a useful article’, found in section 2(3), because ‘the plans would be a design of a useful article without any artistic features capable of existing independently of the utilitarian aspect of the article’. The appellants appealed to the Judicial Committee of the Privy Council (‘Privy Council’ or ‘Board’).

Analysis

The Opinion of the Privy Council

The Privy Council noted that the first issue was whether LAD5 was capable of being protected by copyright in the Commonwealth of the Bahamas. This, in its view, turned on the interaction of four parts of section 2 of the Copyright Act. Section 2(1) defines ‘artistic works’ as including ‘two-dimensional and three-dimensional work of fine, graphic and applied art, photographs, prints and art reproductions, maps, globes, charts, diagrams, models, architectural plans and technical drawings’. Under Section 2(1) ‘“useful article” means an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or convey information and an article that is [not] normally a part of a useful article is considered a “useful article”’. Section 2(1) states that ‘the terms “including” and “such as” are illustrative and not limiting’. Section 2(3) adds:

The term ‘artistic works’ as defined in subsection (1) shall include works of artistic craftsmanship in so far as their form but not their mechanical or utilitarian aspects are concerned; and the design of a useful article, as defined in this section, shall be considered an artistic work only if, and only to the extent that, such design incorporates artistic features that can be identified separately from and are capable of existing independently of, the utilitarian aspects of the article.

The Privy Council explained that it was clear that LAD5 is a technical drawing and therefore fell within the primary definition of ‘artistic work’ unless it was excluded, either wholly or partly, by section 2(3) which was intended to widen the scope of the definition of ‘artistic works’ in section 2(1).

That section does not in any way limit the copyright protection afforded to ‘technical drawings’ as ‘artistic works’ in section 2(1). The Board explained that, whatever the word ‘artistic’ meant, a work of artistic craftsmanship was a three-dimensional physical artefact (such as a piece of furniture or jewellery) rather than a drawing of such a work. In its view, this colours the remainder of the subsection; and that a ‘useful article’ was likewise a three-dimensional physical artefact. A technical drawing, the Privy Council explained, which gave instructions about how to make such an artefact was not itself a ‘useful article’, not least because its function was merely to convey information about how to make it. It further explained that the ‘design’ of a useful article was a reference to the physical aspects of the article itself, rather than a technical drawing conveying instructions about how to make it. Consequently, the Board concluded that other interpretation would mean that it was almost impossible for any technical drawing to be protected by copyright, even though technical drawings were specifically included in the primary definition of ‘artistic works’. It further held that to interpret section 2(3) as cutting down the scope of the primary definition of ‘artistic works’ ran contrary to the explicit instruction in the Copyright Act that the word ‘including’ was not limiting.

Since the Court of Appeal relied on definition of ‘design of a useful article’ in section 2(3) to hold that ‘the plans would be a design of a useful article without any artistic features capable of existing independently of the utilitarian aspect of the article’, and because the respondent's attorney relied on the definition of ‘design’ in section 30(1) of the Industrial Property Act (Chapter 324), the Privy Council had to address this aspect in its judgment. Section 30(1):

In this Act the expression ‘design’ shall mean features of shape, configuration, pattern or ornament of an article or features of pattern or ornament applicable to articles in so far as such features appeal to and are judged solely by the eye.

The Board was of the view that this definition was clearly referring to physical aspects of a three-dimensional artefact: in short ‘features of … an article’. In addition, the purpose of the Industrial Property Act was to confer design copyright on three-dimensional artefacts, not on drawings of artefacts. The Privy Council explained that the more limited scheme of protection under the Industrial Property Act was consistent with a general legislative concern to prevent copyright from becoming the means of acquiring a monopoly over a manufacturing technique or a manufactured article, which would not qualify for (in any event much shorter) patent protection. With this explanation, the Board reasoned that far from supporting the respondent's case, the definition in section 30(1) undermined it.

The Privy Council buttressed its reasoning by reference to American case law interpreting section 101 of the US Copyright Act 1976, which defines ‘pictorial, graphic and sculptural works’ as including technical drawings but also provide that:

the design of a useful article … shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.

The Board cited Imperial Homes Corp v Lamont (1972) 458 F 2d 895 where the Court of Appeals for the Fifth Circuit considered the application of section 101 to architectural drawings. There the Court of Appeals held that, although the architectural plans did not give their author the right to prevent reproduction of the building itself nothing prevented him from having the exclusive right to make copies of the drawings themselves. It also held that ‘[t]he exclusive right to copy what is copyrighted belongs to the architect, even though the plans give him no unique claim on any feature of the structure they detail’. The District Court for the Eastern District of Missouri also considered the same point in Warren Sign Company Inc v Piros Signs Inc (No 4): 09-CV-1984 (CEJ), which concerned a technical drawing for a sign to be erected at the Eagle Bank, holding that ‘[e]ven if the Eagle Bank Drawing does depict a ‘useful article’ plaintiff would still be protected against the unauthorized copying of the drawing itself’.

The Privy Council reasoned that, since both the Copyright Act of the Commonwealth of the Bahamas and the US Copyright Act sought to give effect to the Berne Convention for the Protection of Literary and Artistic Works, and did so in substantially the same way, the American cases were at least persuasive authority on the meaning of section 2(3). It noted that no authority was cited before the Court of Appeal and that none was mentioned in its brief extempore judgment. The Privy Council also noted that the Court of Appeal simply announced its conclusion that the plans did not fall within the definition of ‘artistic works’ but fell within the definition of ‘design of a useful article’ ‘in as much as the plans would be a design of a useful article without any artistic features capable of existing independently of the utilitarian aspect of the article’. The Board ruled that that conclusion failed to give effect to the distinction between the useful article itself and a technical drawing of the useful article. It continued that the Court of Appeal reached a conclusion that differed from that of the US courts in almost identical language. As a result, the Privy Council held that the trial judge was right in holding that, although the plaintiffs could not prevent copying the septic tank itself, they were entitled to prevent copying of the technical drawing, and that the decision of the Court of Appeal on this issue was wrong.

Practical significance

It was surprising that the matter reached the Privy Council because a clear reading of section 2(1) of the Copyright Act of the Bahamas would show that ‘technical drawings’ are ‘artistic works’. Section 2(3), which provides examples of ‘artistic works’, did not limit that definition in any way. The trial judge's interpretation was the correct one and the Court of Appeal's rejection of that reasoning was shown by the Board to be flawed if inexplicable. In any event, the Privy Council explained that, if the Court of Appeal's approach were to be followed, it would leave little if any protection for technical drawings, contrary to the express provision in section 2(1).

Even more interesting is the Board's foray into US copyright jurisprudence to explain a section in the Bahamas Copyright Act, which was not even at issue in this case. In any event, the decisions cited made it plain that copyright existed independent of the utilitarian aspects of the work. Although the Privy Council's discussion on that aspect of the case was obiter, it was a clear indication by the Board that the jurisprudence of the US courts on section 101 of the US Copyright Act 1976 is applicable to section 2(3) of the Bahamas Copyright Act and similar provisions in the copyright legislation in the Commonwealth Caribbean.