Copyright in the Bahamas: a tale of art and septic tanks

Is a technical drawing worthy of protection under the Copyright Act?  This question, posed in relation to the law of the Bahamas, was recently answered by the Privy Council (Lords Mance, Wilson, Sumption, Carnwath and Sir Kim Lewison) in Gold Rock Limited v Nylund Hylton [2015] UKPC 17.  In this post, guest blogger Kevin Winters explains the reasoning of the Privy Council. Here's what he has to say:

In a unanimous decision, the Privy Council overturned the decision of the Court of Appeal of the Commonwealth of the Bahamas, holding that a technical drawing which contained details of a septic tank was protected under that jurisdiction's Copyright Act.  The Privy Council agreed with the decision of the trial court, which had been overturned on appeal, on the basis that the plans did not constitute “artistic works”.  The issue for the Privy Council was one of legislative interpretation.

The background

Gold Rock Corporation Limited and Del Zotto Products of Florida Inc both made concrete septic tanks.  The technical drawing that was the subject of dispute in this case originated in a drawing created by Mrs Del Zotto for a 900-gallon septic tank.  An employee of Gold Rock took this drawing and used it to create another technical drawing for a 950-gallon septic tank.  This latter drawing (referred to in the trial as LAD5) became the subject of this legal dispute.  It showed a top and side view of the septic tank; details relating to its lid and rise; and matters concerning its construction.  The drawing also gave measurements of each component of the septic tank.  The respondent, Nyland Hylton, was a former employee of Gold Rock.  During his employment he obtained detailed knowledge of Gold Rock’s mould for making septic tanks, taking photographs and making sketches of them before he left Gold Rock’s employment.  The court had to decide whether the actions of Hylton infringed copyright in the technical drawings. 

The trial court took the view that, while employed, Hylton had had sight of nearly every drawing for concrete products that Gold Rock produced, and admitted that he had seen a drawing that was similar to LAD5.  The court also found that Hylton had “direct access to all of Gold Rock’s technical drawings and that, after he left Gold Rock’s employment, he had become affiliated with Hylton’s Concrete Products -- a business which, he claimed, was owned by his brother who was his current employer, for whom he was the only employee.  

The joys of Google Image: a search for
'Hylton's Contcrete Products' + 'Bahamas'
threw up this result, among others

Hylton said that Hylton’s Concrete Products instructed a draftsman, Brian Rolle, to make a technical drawing for a septic tank (HC8) for them.  At trial the court found that, based on the high degree of similarity (including remarkably similar spelling errors), HC8 was in fact a copy of LAD5.  It also found that Hylton was the only person involved with Hylton’s Concrete Products who would have had access to LAD5, and was the only link between LAD5 and HC8.  As a result the court found that Rolle had “indirect access” to the technical drawings of LAD5 through hylton. attacheding importance to the fact that in his evidence, Hylton had given answers that suggested that he either owned or was in control of Hylton’s Concrete Products. The court noted that Hylton had been given personal payment for supplying septic tanks and that the receipts he issued for those tanks bore his own name, not that of Hylton’s Concrete Products.  What's more, Hylton was on record as having given evidence to police officers that he was building septic tanks, and having told Mrs Zotto that he was now self-employed.

Based on this information the trial court stated that the “only rational and reasonable conclusion” was that Hylton had infringed Gold Rock's copyright, either by preparing or giving instructions for the preparation of copies of LAD5, concluding that Hylton had directly copied the LAD5 technical drawing.

The appeal court, citing no authorities, overturned the decision on the basis that the technical drawings did not constitute “artistic works” but fell within the definition of “design of a useful article …in as much as the plans would be a design of a useful article without any artistic features capable of existing independently of the utilitarian aspect of the article”.  Gold Rock and Del Zotto then appealed to the Privy Council.

The decision

The Privy Council held that a technical drawing of septic tank was indeed protected under the Copyright Act.  The first issue before the Board (the term used to describe a panel of Privy Council judges hearing a case) was whether LAD5 was capable of being protected by copyright in the Bahamas.  The Board considered the definition of “artistic works” in section 2(1) of the Copyright Act, which states:

“’artistic works’ include two-dimensional and three-dimensional work of fine, graphic and applied art, photographs, prints and art reproductions, maps, globes, charts, diagrams, models, architectural plans and technical drawings;”

The Board held that it was clear (and why the Appeal Court of the Commonwealth of the Bahamas missed this is unknown to this writer) that LAD5 was a technical drawing and fell within the primary definition of “artistic work”.  It then highlighted section 2(3) of the Copyright Act, which states:

“The term ‘artistic works’ as defined in subsection (1) shall include works of artistic craftsmanship in so far as their form but not their mechanical or utilitarian aspects are concerned; and the design of a useful article, as defined in this section, shall be considered an artistic work only if, and only to the extent that, such design incorporates artistic features that can be identified separately from and are capable of existing independently of, the utilitarian aspects of the article.”

This provision, held the Board, was intended to widen the scope of ‘artistic works’ in section 2(1), since the section beginning “artistic works” as defined “shall include” what follows in the same section.  It added that the other provisions in the Act protecting a “useful article” or a piece of “artistic craftsmanship” were, in its view, directed at three-dimensional physical objects (a criterion that a technical drawing would not satisfy to enjoy protection as such). In allowing the appeal the Board ruled that:

“Any other interpretation would mean that it was almost impossible for any technical drawing to be protected by copyright, even though technical drawings are specifically included in the primary definition of “artistic works.”  

Moreover, to interpret section 2(3) as cutting down the scope of the primary definition of “artistic works” runs contrary to the explicit instruction in the Act that the word “including” is not limiting”. 

In arriving at its decision the Board also considered US jurisprudence on the interpretation of section 101 of the US Copyright Act 1976.  The section defines “Pictorial, graphic and structural works” as including technical drawings, then continues:

“…the design of a useful article…shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.”

The Board acknowledged the ruling in Imperial Holmes Corp v Lamont (1972) on the application of section 101 to architectural drawings.  There the Court of Appeals for the Fifth Circuit agreed that the plans did not grant the architect the right to prevent the reproduction of the building.  However it did rule that

“The exclusive right to copy what is copyrighted belongs to the architect, even though the plans give him no unique claim on any feature of the structure they detail.”

The Board drew attention to a similar matter at issue in Warren Sign Company Inc v Piros Signs Inc (No 4) (1984), concerning the protection afforded to a technical drawing of a sign that was to be erected at Eagle Bank.  The District Court for the Eastern District of Missouri held that

“Even if the Eagle Bank Drawing does depict a ‘useful article’ plaintiff would still be protected against the unauthorized copying of the drawing itself.”

The Board pointed out that, given that both the Copyright Act of the Commonwealth of the Bahamas and the US Copyright Act had been created to give effect to the Berne Convention for the Protection of Literary and Artistic Works, and that they did so in a similar way, the US case law was persuasive on the meaning of section 2(3) of the Copyright Act. 

The Board was unimpressed with the approach taken by the Court of Appeal of the Commonwealth of the Bahamas:

“The proceedings before the Court of Appeal … simply announced its conclusion that the plans did not fall within the definition of “artistic works” but fell within the definition of “design of a useful article … this conclusion fails to give effect to the distinction between the useful article and a technical drawing of the useful article.  It reaches a conclusion that differs from the courts of the USA on almost identical language.”

So had Hylton infringed Gold Rock's copyright by “preparing or instructing the preparation of copies of the said drawings and dimensions or of a substantial part of them…”?  Under the Copyright Act, copyright is infringed if, without a licence from the copyright owner,

“…[a] person…does, or authorizes in relation to that work or any substantial part of that work, any of the acts which the copyright owner has the exclusive right to do pursuant to section 9” (conferring the exclusive right on the copyright owner to reproduce the copyrighted work).   

The Board had little difficulty in satisfying itself that Hylton had infringed by copying the technical drawings.  While it acknowledged that HC8 had been drawn by Rolle, Hylton would not be free of liability if he had authorised this reproduction.  Of this the Board was convinced. 

Comments

This case does not explain how the Court of Appeal of the Bahamas came to miss the definition in the Copyright Act.  It seems clear from reading the relevant legislation that a technical drawing would qualify for copyright.  The comments from the Board are also instructive in that, even if it was not included in the primary definition, a reading of the legislation in the way proposed by the Court of Appeal would leave technical drawings extremely vulnerable to reproduction.

The Privy Council ruling gives no explanation as to why provisions of the United States Copyright Act and its subsequent case law come to be cited in a decision on Bahamian copyright law. The local Copyright Act makes no reference to United States law as either having any binding force or as being an interpretational aid. Can any reader advise?