MR JUSTICE WALSH:[In a 1978 British case it was said that:]by applying for a patent and accepting the statutory obligation to describe and if
necessary illustrate embodiments of his invention, a patentee necessarily makes an
election accepting that, in return for a potential monopoly, upon publication, the
material disclosed by him in the specification must be deemed to be open to be used
by the public, subject only to such monopoly rights as he may acquire on his
application for the patent and during the period for which his monopoly remains in
force, whatever be the reason for the determination of the monopoly rights. ... [T]he
plaintiffs must be deemed to have abandoned their copyright in drawings the
equivalent of the patent drawings. ...In the present case, it would appear from the evidence that the drawings registered for copyright
are not even identical with those in the patent. However, to give the wide interpretation sought
by [the plaintiff] to copyright protection for the drawings would defeat the time limitation
provided for in the Patent Act.Most mechanical patents have drawings in connection therewith and the drawings can readily be
copyrighted, but when patent infringement protection is no longer available to the owner of the
patent, it is not desirable that he should be able to extend this protection by application of the
Copyright Act to the drawings from which the physical object covered by the patent was
constructed, and thereby prevent anyone else from manufacturing the same device, even without
the use of the drawings.I strongly believe that it was not the intention of Parliament, nor from a practical view is it
desirable, that the Patent Act, the Copyright Act, and the Industrial Design Act should be
interpreted so as to give overlapping protection. Something suitable for industrial design cannot
be registered for copyright, as that statute states, and something for which a patent is granted
should not also be given double protection for an extended period of time by registering for
copyright drawings from which the patented object was made. Moreover, in the present case the
patent has not yet expired. ...I therefore conclude in the unsettled state of Canadian jurisprudence on the issue that, while
plaintiffs may have valid copyrights, they should not on the facts of the present case be allowed
to rely on copyright protection, and their claim for copyright infringement is therefore dismissed,
since while copyright can be extended to cover the physical object made from it ..., it should not
be extended to cover objects protected by patent.Roland Corp. v. Lorenzo & Sons Pty. Ltd (1991) 105 A.L.R. 623, affirmed
(1992) 23 I.P.R. 376 (Australia: Full Federal Court)[The plaintiff owned trademark registrations for two marks “R” and “B” in
stylised lettering and also claimed copyright in the marks as artistic works. It
sued the defendant for infringing its copyright by including the marks in the
defendant’s sales catalogues without authority. One defence was that the
plaintiff, by choosing to register the works as trademarks, had lost its right to
sue on its copyright.]70