In a decision that highlights the differences between intellectual property regimes in neighboring countries, the Canadian court in Atkinson & Yates Boatbuilders v. Hanson, 27 C.P.R. (4th) 195, held that where a boat hull design was sufficiently distinct, likelihood of confusion could be inferred from intentional copying of that design in order to prove "passing off," even though the boats were sold under different trademarks. The approach is a far cry from the legislative solution implemented by the United States in order to address the same problem.
In the opinion, Judge Dymond specifically noted expert testimony citing hull design "as the distinguishing feature of any boat" since it "determines the buoyancy and how the boat will react to the water" and "its stability and sea keeping." However, the same expert also testified that he was not aware of anyone who had ever applied for a patent, copyright, or trademark on a hull design. The defendant later testified to making modifications to the copied hull, including replacement of its "Ocean Fisher" logo with the term "Swordfish." According to him, this was "a common practice of retooling someone else's hull." There was also a great deal of evidence concerning changes to the interior of the Swordfish model which the court summarily dismissed as being mere customizations. Even so, "the closest the evidence gets to misrepresentation," the opinion concluded, was when the defendant told a customer "that he has a boat like the Ocean Fisher."
Although somewhat difficult to obtain, utility and design patents for boat hull designs are now quite common in the U.S., Canada, and elsewhere. While trademark and copyright registrations for boat hulls may also be catching on in the U.S., enforcement is still limited by the doctrines of "functionality" and "seperability." Canadian jurists might therefore agree with U.S. Register of Copyrights Statement to Congress 1997, that the customary scope of protection provided by patents, trademarks, and copyrights does not provide adequate coverage for boat hull designs. However, whether that problem calls for a judicial and/or parliamentary solution will likely continue to generate debate in the intellectual property communities of both countries.
For a copy of the decision discussed in this issue of "APLF Updates," contact Bill Heinze (firstname.lastname@example.org), at Thomas, Kayden, Horstemeyer & Risley LLP in Atlanta, Georgia USA. Special thanks to Greg Binkley in Toronto for bringing this decision to the author's attention.
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