• Child Playground Structures Were Not Found to Have a Distinguishing Guise and Copyright Did Not Apply After the 51st Worldwide Sale
  • January 11, 2017 | Authors: Jillian Brenner; Adrian J. Howard; Beverley Moore; Chantal Saunders
  • Law Firm: Borden Ladner Gervais LLP - Ottawa Office
  • Corocord Raumnetz GMBH v. Dynamo Industries Inc., 2016 FC 1369

    The Federal Court has dismissed a series of trademark and copyright claims relating to child playground structures.

    The plaintiff Corocord makes and sells playground equipment, and alleged that Dynamo "imitated, copied and reverse engineered" their designs, then sold them in direct competition to Corocord.

    Corocord alleged they had rights in the distinguishing guise of the design, that Dynamo made false and misleading statements and that they also directed attention to its wares in such a way that it would cause confusion between the playground structures. Corocord also alleged their copyright had been infringed. Corocord did not have any rights under the Industrial Designs Act.

    The Court found that Corocord did not provide any evidence that the relevant market had begun to recognize the share of their play structures as coming from a single source. The evidence also did not show the shape or aesthetics elements were used to market the play structures. Even Corocord's own expert witness had never seen the structures before they were shown to him by the plaintiffs in 2016, in connection with these proceedings. Thus, the Court held there was no protectable trademark in the form of a distinguishing guise.

    Without a valid trademark and no evidence of goodwill, the claims under sections 7(a) and (b) of the Trade-marks Act could not be sustained.

    Dynamo conceded that there was copyright in the design of the Corocord playground structures and admitted their playgrounds were engineered to be equivalents of Corocord's playground structures. However, Dynamo relied on subsection 64(2) of the Copyright Act, arguing that Dynamo only sold its product after the 51 st worldwide reproduction of Corocord's playground structures.

    The Court held that the structures were "useful articles", and not mere works of art. They were subject to technical safety aspects such as arm reach and rope sizes that were not guided by aesthetic purposes, but by security concerns and safety standards precisely because the initial purpose of the structures was not merely to serve as art work, but as playgrounds for children.

    Since fewer than 50 playgrounds were sold in Canada, a question arose as to whether the playground structures needed to be reproduced 50 times in Canada or just 50 times worldwide, for subsection 64(2) of the Copyright Act to apply. The Court interpreted the statute to apply after the playgrounds were "reproduced in a quantity of more than fifty in Canada and elsewhere". Since it was admitted that there were more than 50 productions worldwide the defence was held to be valid.