There is a relationship between copyright, design and trademark as they apply to physical products. Copyright protects “works of artistic craftsmanship”. Design protection can be obtained for features of shape, configuration, pattern or ornament of useful articles. Trademark rights may extend to the shaping of wares (products) with such unique shapes being referred to as “distinguishing guises”. (The old-style glass bottle used by Coca Cola is a good example of a distinguishing guise trademark; the consumer knows what the product is merely from the container.) It is possible for a product to be subject to all three, copyright, design and trademark at some time during the product’s life cycle. However, copyright, design and trademark each have their limitations.
When an entrepreneur launches a new product, he or she does not know how successful the product may become. Sometimes public apathy toward a new product is deflating. At other times, the response exceeds even the entrepreneur’s expectations. For that reason, it is not unusual for an entrepreneur to introduce a product into the marketplace and to wait and see how the product sells before seeking protection.
The Court decision rendered on December 14, 2016 in the case of Corocord Raumnetz v. Dynamo Industries is a cautionary tale that helps explain aspects of the relationship between copyright, design and trademark. Corocord is a manufacturer of playground equipment. Some years ago, Corocord introduced into the market a new playground structure. Under Canadian law, the playground structure was protected by copyright as a work of artistic craftsmanship at the time of introduction into the marketplace. Copyright protection does not require any active steps to file paperwork with a government office, although there are advantages in doing so.
Fast forward ahead several years. By that time, Corocord’s playground structure had become quite successful. The law suit against Dynamo Industries was triggered when Dynamo introduced a similar product into the marketplace and they ended up bidding against each other on a contract for a playground installation. Corocord sued Dynamo.
Corocord tried to enforce their copyright against Dynamo. Unfortunately for Corocord, copyright is only intended to protect “works of artistic craftsmanship” that are sold in limited quantities. The right to sue Dynamo under copyright law was lost, due to the fact that the playground structure had been reproduced in quantities exceeding fifty (50). Corocord had been too successful to continue to rely upon copyright. Corocord could have sued Dynamo under design law. Unfortunately for Corocord, an application must be filed with the Canadian Intellectual Property Office for design protection within 12 months of the playground structure being introduced into the marketplace. The time had passed, Corocord had waited too long. Corocord tried to sue Dynamo under trademark law, which does not have a time deadline. In order to succeed Corocord had to establish that their playground structures had become so well known that the relevant market would automatically associate the distinctive shape of the playground structure with Corocord. Unfortunately for Corocord, they had not, as yet, become successful to the extent that the distinctive shape of the playground structure was associated with them.
What could have or should have Corocord done? It was okay for Corocord to rely upon copyright in the beginning. Within 12 months Corocord knew that their playground structure was achieving success in the marketplace. It was a fatal error of Corocord to not apply for design protection before the 12 months deadline for doing so expired. With design protection, Corocord could have stopped similar products from entering the market. Subsequently, when design protection was about to expire, they could have applied for trademark protection in the hope of extending their protection indefinitely on the basis that the distinctive shape of the playground structure had become well know and is associated solely with Corocord. However, now their ability to obtain trademark protection in future is doubtful. The distinctive shape of the playground structure will no longer be associated solely with Corocord. Dynamo is in the market providing playground structures with the same distinctive shape and other competitors may soon follow.