Allibert S.A. v O'Connor and Others

• Jurisdiction: Ireland
• Judge: MR. JUSTICE COSTELLO
• Judgment Date: 01 January 1982
• Neutral Citation: 1981 WJSC-HC 1426
• Court: High Court
• Date: 01 January 1982

1981 WJSC-HC 1426

THE HIGH COURT

1980 No. 8358P

Allibert v. O'Connor and Others

BETWEEN:

ALLIBERT S.A.

Plaintiff

and

JAMES O'CONNOR trading as JAMES O'CONNOR AND ASSOCIATES and CAN-AM CONTAINERS LIMITED

Defendants

1 JUDGMENT OF MR. JUSTICE COSTELLO delivered the 24th day of June 1981

Introduction

2 The plaintiffs are a company incorporated under the laws of Prance and carry on business as manufacturers of plastic boxes. They employ a very large labour force, and are very large producers of plastic boxes for use in the fishing industry. They have a world-wide organisation for the distribution of their products and one of their subsidiary companies is Sommer Allibert (U.K.) Limited, a company registered under the laws of England, which markets their products both in Great Britain and this country. Plástic boxes in the fishing industry have now largely replaced the traditional wooden type boxes and, as will readily be appreciated, the competition in the market for such boxes is a keen one. A particular style of box was produced in the 1950's by an English company known as Fisher and Ludlow Limited who owned a patent which protected a means of nesting and stacking containers, that is boxes which would "nest" inside one another when empty but when turned by a hundred and eighty, degrees would "stack" on top of another when full without damage to the contents. Originally the plaintiffs manufactured boxes incorporating this principle under a licence from the English company but later they designed and developed their own box.

3 I have had the benefit of the evidence of Mr. Elie Seeg who is the General Manager of the plaintiff company and has been employed with the plaintiff company since the 1st of April, 1960. He establishes that in the year 1963 an employee of the plaintiff company designed a 60 - litre capacit, box which incorporated the stack/nest feature. The drawing of this box has not been produced at the hearing as it has been lost. But the toolmaker, drawings for the tooling of the box has been produced. This drawing is dated the 7th of May, 1963 and has been referred to as "drawing B" throughout these proceedings. The identity of the draughtsman of this drawing can not now be ascertained but, I am satisfied that he was an employee of the plaintiffs. This drawing was used to manufacture the mould by which the completed box was made. The Plaintiffs claim that they own the copyright in this drawing and that the Defendants have infringed it.

4 The second document on which reliance is placed by the plaintiffs in these proceedings is drawing No. 00334 dated the 15th October, 1967. This is a product drawing made by an employee of the plaintiffs which incorporated improvements which had been made in the box between 1963 and 1967. These modifications were not very extensive as it was not necessary to manufacture new moulds to accommodate them. The Plaintiffs say the Defendants have infringed their copyright in this drawing.

5 The third document for which the plaintiffs claim copyright protection is drawing No. M. 127 and is dated the 18th May, 1972. This is a product drawing for a 70 - litre box manufactured for the requirements of the Aberdeen Box Pool in Scotland. The drawing for this box, which incorporated all modifications in the 60 - litre box which had been made up to 1972, was made by Mr. Gerard Bourgneuf an employee of the plaintiffs. Mr. Seeg's evidence satisfied me that both Mr. Bourgneuf and the draughtsman of the earlier 1967 drawing were French citizens. As the Government has in exercise of the powers conferred on them by Section 43 of the Copyright Act 1963applied the provisions of the 1963 Act to Prance (see S.I. No. 132 of 1978) the plaintiffs are entitled to claim the copyright in these three drawings if they can show they obtain protection for them by virtue of the provision of that Act. Whether or not the provisions of the 1963 Act assist them is, of course, a matter strenuously contested by the defendants.

6 The plaintiffs operations in this country met with considerable success. The market here is for a 60 litre box. In the year 1971 Bord Iascaigh Mhara approved three different types of boxes as suitable for subsidy, a Norwegian product, a British product and third the plaintiffs 60 litre box. The plaintiffs have succeeded in out-selling their competitors in the Irish market and their sales of plastic fish boxes (running in the region of £300,000 per annum) make up about 90% of the plastic fish boxes in use in this country.

7 The first contact which the plaintiffs had with the second named defendants, Can-Am Containers Limited a company incorporated in Canada, occurred in the month of August 1977 when Mr. Seeg together with Mr. Ward (a Director of the plaintiffs United Kingdom subsidiary, Sommer Allibert (U.K.) Limited) visited Canada where they attended a world fishing exhibition in Halifax, Nova Scotia, between the 31st August, and the 7th September, 1977. There they saw a plastic fish box which Can-Am were marketing. They were shocked by what they saw, being satisfied that it was a copy of an Allibert box.

8 The plaintiffs next became aware of Can-Am1s operations in the month of June 1980. Their representatives visited the "Catch 80" trade fair in Aberdeen and at the stand of a company called Dynoplast Limited saw a fish box supplied by Can-Am which appeared to them to be a copy of the Allibert 70 litre box. It took some little time before the plaintiffs were able to obtain a specimen of the box but eventually they obtained one from a customer of the plaintiffs United Kingdom subsidiary. This box was produced at the hearing. It is similar to but not identical with the box which later Can-Am sold in this country.

9 The plaintiffs became aware that the defendants might attempt to enter the Irish market when they observed an advertisement in the August edition of the "Irish Skipper". This had been inserted by the first named defendant but was headed "Can-Am" and contained photographic reproductions of the defendant's box. As a result of this advertisement the plaintiffs English solicitor wrote to the first named defendant on the 19th August, 1980 setting out Allibert's claim to copyright in very clear terms. By letter of the 23rd August, 1980 Mr. O'Connor's solicitors replied denying that any breach of copyright had occurred. Thereafter the present proceedings were instituted. The evidence establishes that Mr. O'Connor is a manufacturers agent and that he had arranged the importation of 10,000 70 litre Can-Am boxes for sale by Can-Am to a Company in Donegal. These boxes arrived in Dublin in the first half of August, Mr. O'Connor had placed an order for a second consignment of 5,000 boxes but delivery was suspended after the receipt of the letter of the 19th August. In the pleadings the plaintiffs also say that they are the proprietors of registered designs No. D.4240, D. 4241, and D.4245, registered in this country on the 7th December, 1976 and that the Defendants have, in addition to infringing their copyright in the three drawings to which I have referred, also infringed these registered designs. The defendants have counterclaimed and have sought an order under Section 129 of the Industrial and Commercial Property (Protection) Act 1927directing that these registrations be expunged from the Register. At the hearing the plaintiffs have accepted that the designs were wrongly registered because they had been published in the State prior to registration and they submit to an order under the section which I will, accordingly make. The case is therefore limited bow to one relating to the alleged infringements of the rights claimed by the Plaintiffs under the Copyright Act, 1963.

10 There is one other aspect of the case which can usefully be disposed of here. As I have already pointed out the Plaintiffs claim copyright protection not only in two product drawings of (a) a 60 litre and (b) a 70 litre box, but also copyright protection in the drawing of a tool from which these boxes are made, i.e. drawing B. This claim was not pressed with any great vigour during counsel's submissions and I am satisfied it is not sustainable. The defendants have not infringed any copyright which the plaintiffs may enjoy in this drawing; they have not reproduced or published this drawing in any way, nor have they made a three dimensional reproduction of it. The plastic container produced by Can-Am and which forms the basis for the Plaintiffs complaints in this action can in no way be regarded as a reproduction of drawing B. The present claim must therefore be confined to the Plaintiffs rights, if any, in drawing 00334 and drawing M. 127.

11 The issues which thus arise for determination can be shortly stated. The Defendants accept that a product drawing can be an "artistic work" within the Act but say that the Plaintiffs are not entitled to copyright in either drawing 00334 or drawing M. 127 firstly because neither is an "original" artistic work. Secondly, although the designs were wrongly registered under the 1927 Act the Defendants say they were capable of being so registered. Because of this copyright in the drawings cannot be claimed. They then argue that even if the Plaintiffs enjoy copyright in these drawings the Defendants have not infringed the Plaintiffs rights firstly because Can-Am did not copy the Plaintiffs boxes and secondly because the Can-Am box is a three dimensional reproduction of the drawings and no infringement took place because of section 14 (7) of the 1963 Act which provides that a three dimensional reproduction of a two dimensional artistic work is no infringemen if the three dimensional article would not appear to a non-expert to be a reproduction of the artistic work. I will proceed now to consider the parties submission of these issues and the evidence relevant to them.

Are drawing 00334 and M. 127...