T-463-87
Dennison Manufacturing Company and Dennison
Manufacturing Canada Inc. (Applicants)
v.
Minister of National Revenue (Respondent)
INDEXED AS: DENNISON MANUFACTURING CO. v. M.N.R.
Trial Division, Dubé J.—Ottawa, April 9 and May
7, 1987.
Copyright — Infringement — Motion for mandamus pursu
ant to Copyright Act, s. 27 compelling Minister to deem copies
of attachment tags to be included in Schedule C, Customs
Tariff — No legal right to performance of duty — Goods
must be included in Schedule C to be prohibited — Only tariff
item referring to copyright works merely stating "reprints of
Canadian copyrighted works" — Uncertain whether copyright
in design extending to three-dimensional models, or whether
goods subject to copyright as "artistic works" — Registrabili-
ty under Industrial Design Act may also bar goods from
copyright.
Customs and Excise — Customs Tariff — S. 14 prohibiting
importation of goods in Schedule C — Only tariff item
referring to copyrighted works merely stating "reprints of
Canadian copyrighted works" — Copyright Act, s. 27 enabling
owner of infringed copyright work falling under specific tariff
item to give notice to Department to bar importation of
infringing copies — Questionable whether goods in question
(attachment tags) subject to copyright.
Industrial design — Attachment tags or cavity attachment
molds — Likely registrable under Industrial Design Act, based
on registration of similar goods — Barred from copyright
pursuant to Copyright Act, s. 46.
Judicial review — Prerogative writs — Mandamus —
Motion for mandamus compelling Minister to deem copies of
attachment tags to be included in Schedule C, Customs Tariff
pursuant to Copyright Act, s. 27 — No legal right to perform
ance of duty — Goods must be included in Schedule C to be
prohibited — Goods may not be subject to copyright as
required by tariff item.
STATUTES AND REGULATIONS JUDICIALLY
CONSIDERED
Copyright Act, R.S.C. 1970, c. C-30, ss. 2, 27, 46.
Customs Tariff, R.S.C. 1970, c. C-41, s. 14 (as am. by
S.C. 1986, c. 1, s. 175), Schedule C.
Industrial Design Act, R.S.C. 1970, c. I-8.
Industrial Designs Rules, C.R.C., c. 964, s. 11(1)(a).
CASES JUDICIALLY CONSIDERED
CONSIDERED:
Bayliner Marine Corp. v. Dorai Boats Ltd., [1986] 3
F.C. 421; 10 C.P.R. (3d) 289 (C.A.); Cimon Ltd. et al v.
Bench Made Furniture Corpn. et al, [1965] 1 Ex.C.R.
811; (1964), 48 C.P.R. 31; 30 Fox Pat. C. 77.
REFERRED TO:
Monsanto Canada Inc. v. Minister of Agriculture (1986),
8 C.P.R. (3d) 517 (F.C.T.D.).
COUNSEL:
John S. Macera for applicants.
Meg Kinnear for respondent.
SOLICITORS:
Macera & Jarzyna, Ottawa, for applicants.
Deputy Attorney General of Canada for
respondent.
The following are the reasons for order ren
dered in English by
Dust J.: This originating motion seeks a man-
damus compelling the Minister of National Reve
nue ("the Minister") to deem, under section 27 of
the Copyright Act,' to be included in Schedule C
of the Customs Tariff , 2 copies of the attachment
tags or cavity attachment molds in which copy
right subsists in Canada pursuant to copyright
registration number 355,058, and compelling the
Minister to authorize customs officers to prohibit
the importation into Canada of any three-dimen-
R.S.C. 1970, c. C-30.
2 R.S.C. 1970, c. C-41.
sional copies of the attachments which infringe the
copyright of the applicants ("Dennison").
On November 26, 1986 Dennison wrote to the
Minister indicating that the above copyright was
being infringed by the importation into Canada of
three-dimensional copies from South Korea,
requesting pursuant to section 27 of the Copyright
Act that such infringing copies be deemed to be
included in Schedule C of the Customs Tariff, and
seeking to prohibit the importation of the copies.
Section 27 reads as follows:
27. Copies made out of Canada of any work in which
copyright subsists that if made in Canada would infringe
copyright and as to which the owner of the copyright gives
notice in writing to the Department of National Revenue that
he is desirous that such copies should not be so imported into
Canada, shall not be so imported, and shall be deemed to be
included in Schedule C to the Customs Tariff, and that
Schedule applies accordingly.
Under section 14 of the Customs Tariff [as am.
by S.C. 1986, c. 1, s. 175] the importation into
Canada of any goods enumerated, described or
referred to in Schedule C is prohibited. The only
reference to copyright works in Schedule C is
tariff item 99202-1:
99202-1. Reprints of Canadian copyrighted works, and
reprints of British copyrighted works which have
been copyrighted in Canada.
By letter dated January 12, 1987 the Minister
outlined his position. In his view, although section
27 of the Copyright Act provides for the owner to
give notice to the Department, it does not follow
that all works referred to in such notice would
automatically be prohibited: the Copyright Act has
to be read in conjunction with the Customs Tariff
and accordingly the goods in question must be
included in Schedule C in order to be so
prohibited.
In my view mandamus ought not to issue in this
matter. Mandamus is a discretionary remedy and
question.' In the instant case the applicants have
not demonstrated a clear legal right to the
performance of the duty to be carried out by the
Minister under section 27 of the Copyright Act,
for these four reasons.
Firstly, although Dennison has a copyright
registration for the design itself, it has no clear
legal right to extend that copyright protection to
three-dimensional models derived therefrom. In
Bayliner Marine Corp. v. Dorai Boats Ltd. 4 the
respondent had taken an action for a copyright
infringement against the appellant in respect of
plans for the fibreglass hull and deck for two
boats. The Court found [at pages 432 F.C.; 297
C.P.R.] that the plans were "designs capable of
being registered under the Industrial Design Act"
and therefore not subject to copyright. Having
come to that conclusion, the Court did not find it
necessary to deal with the remaining issue in the
appeal, namely whether as a matter of law the
copyright in a plan is infringed by the making of a
copy of an object made according to the plan.
Mahoney J. was convinced [at pages 433 F.C.; 297
C.P.R.] "that it would be especially unwise to
express an opinion on this remaining issue by way
of obiter dicta." Mandamus, therefore, is not the
proper vehicle to resolve that highly debatable
issue.
Secondly, section 46 of the Copyright Act pro
vides that the Act does not apply to designs cap
able of being registered under the Industrial
Design Act, 5 except designs that are not intended
to be used as models to be multiplied by any
industrial process. Paragraph 11(1)(a) of the
Industrial Designs Rules [C.R.C., c. 964] provides
that a design shall be deemed to be used as a
model under section 46 of the Copyright Act
where it is reproduced in more than 50 single
articles. Clearly, the attachments in question are
3 See Monsanto Canada Inc. v. Minister of Agriculture
(1986), 8 C.P.R. (3d) 517 (F.C.T.D.).
4 [1986] 3 F.C. 421; 10 C.P.R. (3d) 289 (C.A.).
5 R.S.C. 1970, c. I-8.
ought not to be granted without proof of a specific
legal right to the performance of the duty in
intended to be and have been so multiplied.
In the Bayliner case aforementioned, the Feder
al Court of Appeal adopted the definition of the
word "design" from the decision of Jackett P. in
Cimon Ltd. et al v. Bench Made Furniture Corpn.
et ale' at pages 831 Ex.C.R.; 49-51 C.P.R. which
reads as follows:
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 an 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" such as can be
acquired by a patent for an invention. There is, moreover,
nothing in the legislation that limits the type of design that may
be registered (as was suggested in argument) to those providing
for something that is applied to an article after the article
comes into existence.
In short, a design relates to the appearance of an
article and is meant to make the article more
attractive. At first blush, it would appear that the
goods in question are amenable to registration
under the Industrial Design Act. Very similar
items have been registered as industrial designs as
revealed by a search of the records of the Copy
right and Industrial Design Branch'. The Denni-
son design would therefore be barred from copy
right pursuant to section 46 of the Copyright Act.
Thirdly, there is at least an arguable case that
these goods are not of a type subject to be copy
righted. They would not appear to be "artistic
works" as defined under section 2 of the Copyright
Act:
"artistic work" includes works of painting, drawing, sculpture
and artistic craftsmanship, and architectural works of art
and engravings and photographs;
6 [1965] 1 Ex.C.R. 811; (1964), 48 C.P.R. 31; 30 Fox Pat.
C. 77.
' See paragraph 5 of the affidavit of Thomas R. Boyd, Chief
of Examination of the Department.
Fourthly, in my view, the Copyright Act and the
Customs Tariff have to be read together. Section
14 of the Customs Tariff stipulates that importa
tion into Canada of any goods enumerated in
Schedule C is prohibited. Item 99202-1 under
Schedule C, the only item dealing with copyright,
merely lists reprints of Canadian copyrighted
works as prohibited goods. Section 27 of the
Copyright Act is a trigger section enabling the
owner of an infringed copyright work that would
fall under a specific tariff item to give notice to the
Department to bar the infringing copies from
Canada. Thereupon such infringing copies shall
not be imported and shall be deemed to be includ
ed in Schedule C. To construe section 27 of the
Copyright Act otherwise would mean in effect that
the owner of any copyrighted item would unilater
ally amend the Customs Tariff merely by giving
notice to the Department that its goods have been
infringed upon.
Consequently, the motion is denied with costs.
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.