We live in an economy where manufacturers constantly strive to protect and increase their market share. Strategic intellectual property protection can be a great way to ensure product exclusivity, but can, and should, a single product enjoy several different forms of IP protection?
One area where this overlap can occur is between industrial designs and patents. Industrial design protection is awarded for a ten-year-term to protect features that “appeal to the eye.” These features can be a particular shape or pattern, for example the shape of a utensil or shoe, and must be original. Section 5.1(a) of the Industrial Designs Act states, however, that no protection will be granted for features that serve “solely” a functional purpose. Patents, on the other hand, provide twenty years of protection for products that satisfy a “utility” requirement, in other words, they must have some functional purpose.
But the subject matter of an industrial design and patent can coincide. Consider, for example, Canadian Patent No. 1,176,566, (see the drawings here and the description here) which protects pharmaceutical tablets manufactured in such a way that one or more edges are always tiled upwards. The advantage is described as being that these tablets can be picked up more easily (presumably to facilitate their use by elderly patients). The patent includes drawings of several different versions of these tablets. As it turns out, several of these tablet designs were actually awarded industrial design protection as well (see, for example, Design No. 49,011).
The tablet design clearly appears to have a functional purpose – the tilt allows it to be picked up with greater ease – satisfying at least part of the requirements for appropriate subject matter for a patent. Perhaps this is appropriate subject matter for industrial design protection as well – maybe the tablet tilt is not there “solely” for functional purposes. Is it conceivable that this design was prepared as a creative feature that “appeals to the eye” and utility was only realized after?
The bigger question is whether overlapping IP is a good or bad thing – should different areas of IP be mutually exclusive or should overlap be allowed? What are the implications? In examples such as the above, an IP owner would have recourse under both the Patent Act and the Industrial Designs Act in a case of infringement. The potential defendant would have to be concerned with infringement under two different pieces of IP legislation even though the basis for infringement would flow from the same concept (the shape of the pharmaceutical tablet).
This overlap is not limited to patents and industrial design. An artistic creation (appropriate subject matter for copyright protection) can also form the basis of an industrial design. The Copyright Act protects such an artistic creation during the author’s life plus 50 years. It also states that copyrighted articles could lose their protection under the Act if they are incorporated into a design and are reproduced more than 50 times. Should both industrial design and copyright protection be allowed when a copyrighted work is incorporated into 49 identical items?
Behind each form of IP are different policies explaining why protection is granted. Patent rights are typically said to reward ingenuity and to foster creativity and research by encouraging inventors to publicly disclose and disseminate their work. As noted in a recent Supreme Court of Canada case (CCH Canadian Ltd. v. Law Society of Upper Canada, [2004] 1 S.C.R. 339), the purpose of copyright law is the need for a just reward for a creator, while balancing “the public interest in promoting the encouragement and dissemination of works of the art and intellect.” Trademarks are protected so that consumers can distinguish goods and services of one company from those of another. Perhaps an examination of the policies behind each form of IP is the best way to begin a discussion of the overlap and any merits.
4 Responses
I would certainly agree that an examination of the different policy basis for each protection granted is necessary, however this is perhaps more a scholarly necessity. In the real and economic world, what is more of concern for a pontential attorney dealing an IP infringement is more on the elements of differnet infringements and the respective remedies and process to attain those remedies. Many different IP protections offer almost identical sets of remedies: damages, injunctions and criminal convictions, etc. But claiming different IP infringments in a certain case will significantly impact the time and monetary cost for the whole suit.
Jonathan’s discussion on Overlapping IP Protection is very interesting & I would like to add the following points to it regarding overlap in general.
In other areas of law strategic protection is a reality. Multiple charges relating to different aspects of the same event occurs frequently. In addition, although an individual is different from Jonathan’s example of the ‘tablet’, the former receives different forms of legal protection in different practice areas of the law. So this begs the question of why shouldn’t the latter. Furthermore, are we differentiating on the basis of an individual vs a thing? Or something more?
In addition, it should be mentioned that overlapping protection is the positive side to this debate. A related concern is when two different areas in IP law conflict or produce results that are at odds with each other. In Professor Vaver’s Intellectual Property Law text, he mentions a case where “spoofs of trade-marks & labels that were found to be protected by copyright were held to be infringements”(p84). Personally, this concerns me more than overprotection in that one practice area of law can be seen to be giving mixed messages. I am wondering if there is any philosophical way to solve this ‘problem’.
As Li points out, multiple IP protection mechanisms are probably of most concern to the individual(s) or business(es) backing the cost of an infringement suit. In one of the rare cases where this point in law was addressed (Rucker Co. v. Gavel’s Vulcanizing Ltd., 7 C.P.R. (3d) 294) it is not clear whether this perspective factored into the court’s reasoning. The court simply stated 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” (Rucker at para. 30). It could very well have been that the court was swayed by an argument of the impact (financial and otherwise) on claimants/defendants when multiple protection mechanisms are sought.
As Gargi notes there are other areas of law where recourse may be had through different legal mechanisms, each of which may have been formed on the basis of different policy considerations. For example, there are situations where a person’s actions could be sanctioned in court through both criminal and civil liability. Would a judge ever deny civil liability on the basis that a criminal conviction has already provided a remedy? And if there is potential overlap of one avenue for legal recourse with another, is it the job of the courts to eliminate the overlap, or is that best left for the legislature?
Thank you to Li and Gargi for sharing these perspectives. I would love to hear any other views on the topic.
A similar issues has been raised with the overlap of copyright and patent protection of software. The fact that software can also be copyrighted may lead some to believe that a patent is redundant – especially in the wake of all of the patent troll litigation. I would argue, however, that this is actually a good case where “overlap” can be justified. The reason software needs copyright protection is because it, like the other copyrightable works, can easily be duplicated due to advances in technology. Copyright provides a barrier against end-users and third-parties copying and benefiting from a specific piece of software in its entirety without compensating the owner. Conversely, patents restrict a different audience who wish to copy a method of solving a problem and incorporate into their own software for re-sale. Both forms of protection solve different issues and are necessary.
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