IP Law Daily, COPYRIGHT NEWS: ‘No, Canada’: Supreme Court will not review protection of technical standards incorporated in into Canadian law, (Jan 21, 2025)

By Matthew Hersh, J.D.

An appellate court ruling that the standards could be lawfully copied will remain in place.

A court of appeals decision holding that copyrighted technical standards incorporated into Canadian law can be lawfully copied will not be reviewed on certiorari, the Supreme Court has announced. The Court’s decision, which comes in the form of a one-line order denying review, leaves in place a decision that applied U.S. circuit court authority to materials from the country’s northern neighbor and drew a sharp dissent from a member of the three-judge panel which heard the case below.

The denial of the petition for certiorari in Canadian Standards Association v. P.S. Knight Co., Ltd., No. 24-537, is the latest development in a multigenerational battle between the Canadian Standards Association, on one side, and a father-and-son venture on the other. The standards association has developed over 3,000 voluntary standards and codes in Canada, many of which have been incorporated by reference into different regulations or statutes in the Maple Leaf state. But the association’s ire was raised in 1985 when entrepreneur Peter Knight published “Electrical Code Simplified,” a book that included references to the Canadian Electrical Code and several other standards—all developed and owned by the Canadian organization.

After Peter Knight’s son, Gordon, took over and continued to run the family business, the standards organization filed suit—and prevailed—in a Canadian court. But the younger Knight was not deterred. He “fled the country” (in his own words) and set up shop in the United States, publishing seven different electrical standards on this side of the border. The standards organization pursued him for copyright infringement into Texas and again found success: the district court granted summary judgment on its copyright claim and ordered Knight to surrender the illegitimate registration he had obtained for the electric code in this country.

Decision on appeal. The Fifth Circuit, in a ruling last year, reversed. Although the Canadian standards organization successfully demonstrated its ownership of the codes, the court noted, it still could not prevent others from copying them. In so holding, the panel relied on Veeck v. Southern Building Code Congress International, Inc., 293 F.3d 791 (5th Cir. 2002), a case involving two Texas cities that incorporated by reference into law the model building codes adopted by a private non-profit company. The court of appeals rejected a copyright infringement claim in that case, finding that “[w]hen [model] codes are enacted into law,... they become to that extent ‘the law’ of the governmental entities and may be reproduced or distributed as ‘the law’ of those jurisdictions.” Moreover, the court held, it made no difference under the Veeck precedent that the plaintiff in this case was Canadian as opposed to Texan, the court of appeals found.

Circuit Judge Dana M. Douglas dissented from the panel’s holding. To be sure, Judge Douglas noted, “Knight’s conduct in this case was egregious.” But the problem here was the difference between Canadian and American views on whether—and under what circumstances—model codes were copyrightable. Under Circuit law, Judge Douglas emphasized, once model codes were adopted as “the law” in the United States, “those codes lost their copyright protection and could not be infringed upon.” But the situation was different in Canada, Judge Douglas observed: “Canada has determined that CSA’s model codes, whether adopted into Canadian law and regulations or not, are copyrightable.” Accordingly, Judge Douglas reasoned, “Veeck’s reasoning is inapplicable because it is premised on our understanding that ‘the law’ in the United States is not copyrightable, unlike it is in Canada.”

Petition. The standards association brought this petition to the Supreme Court, arguing that the decision conflicted with the Court’s opinion in Georgia v. Public.Resource.Org, Inc., 590 U.S. 255 (2020). In that case, the Court found that annotations to Georgia’s official code were ineligible for copyright protection, even though they were drafted by a private company, because they were created under the control and supervision of a commission appointed by the legislature. But the rationale of that decision, the petition argued, was not that the annotations were incorporated into law. Rather, the petition argued, the rationale in Georgia was that the annotations were effectively “created by a legislative body vested with the authority to make law.” Thus, in the view of the petition, because the Fifth Circuit decision rested on how the standards were incorporated into law—rather than who effectively wrote the standards—the decision could not be squared with the high court’s precedent.

The petition also took issue with the Fifth Circuit’s alternative ground for its decision, namely the merger doctrine. According to Veeck, the petition noted, the model codes “transformed into the ‘fact’ and ‘idea’ of the towns’ buildings codes” once, after their creation, they became “the law” through incorporation by reference. But the court of appeals in Veeck “applied the merger doctrine in light of the circumstances at the time of infringement, rather than at the time of creation,” the petition asserted. That view created a sharp split between the Fifth Circuit and the Federal Circuit, the petition argued, which had held—in a case involving Google and Oracle—that a lower court erred by “focusing its merger analysis on the options available to Google at the time of copying” rather than “on the options that were available to [Oracle] at the time it created the [copyrighted] packages.” The high court should take the case in order to resolve the split, the petition argued.

The case is Dkt. No. 24-537.

Attorneys: Kannon K. Shanmugam (Paul, Weiss, Rifkind, Wharton & Garrison LLP) for Canadian Standards Association. James Robert Gourley (Carstens, Allen & Gourley, LLP) for P.S. Knight Company, Ltd.

Companies: Canadian Standards Association; P.S. Knight Company, Ltd.

News: Copyright TechnologyInternet