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I. COPYRIGHT: CASES AND MATERIALS
difficult – or, in the case of wrestling, seemingly painful – acrobatic feat cannot copyright it
without impairing the underlying competition in the future. A claim of being the only athlete to
perform a feat doesn’t mean much if no one else is allowed to try.
- May copyright overlap with patents, trademarks or other
intellectual property rights?
How far intellectual property rights should overlap is a difficult question. Some
might think that double or treble protection is over-protection, but the majority
view in the United States and the Commonwealth seems to accept –
sometimes reluctantly – the possibility of such overlapping protection. Thus, the
Exxon case, above, suggests that a trademark and a copyright may co-exist.
Sometimes, courts in the same jurisdiction cannot make up their mind on the
issue. Consider the following two contrasting Canadian cases, followed by an
Australian case on copyright and trademarks:
Apple Computer, Inc. v. Mackintosh Computers Ltd (1986) 10 C.P.R. (3d) 1
(Canada: Federal Court, Trial Division) (affirmed (1987) 44 D.L.R. 4th 74
(Federal Court of Appeal), affirmed (1990) 71 D.L.R. (4th) 95 (Supreme
Court)
[The defendant, who was sued for copyright infringement for importing clones
of Apple computers that included Apple operating systems embodied in a ROM
(“Read Only Memory”) chip, argued that computer programs should not be
covered by copyright because they could be patented.]
JUSTICE REED:
It is contended that some programs are used in connection with machines to control certain
manufacturing processes (special purpose programs) and that these can be covered by patent law.
Consequently, it is argued copyright should not extend to computer programs because an overlap
of copyright and patent law should be avoided.
[T]he authorities and references ... indicate that computer programs are not per sepatentable,
but that an apparatus or process that meets the standards of novelty and unobviousness required
by the Patent Act ... will not be disqualified from patent protection merely because a computer
is used to operate the apparatus or implement the process. In addition, I do not see that
overlapping areas of the law are particularly unusual (reference need only be made to the fields
of tort and contract). Nor do I see it as the role of the courts to frame decisions to avoid such
results.
Rucker Co. v. Gavel’s Vulcanizing Ltd (1985) 7 C.P.R. 3d 294 (Canada:
Federal Court, Trial Division)
[Rucker sued Gavel for infringement of a patent for parts of a device intended
to prevent blow-outs in oil and gas exploration rigs, and simultaneously sued for
infringement of its copyright in the engineering drawings of those parts. The
defendant argued that a patentee could not claim copyright on matter covered
by a patent.]
