Thompson Coburn’s IP litigation team recently assisted client Canadian Standards Association (“CSA”) in a summary judgment win in a copyright infringement dispute that began over 10-years ago in Canada and spread into the U.S. in 2020. The case involved issues of foreign law and the application of international copyright treaties.
CSA is a non-profit organization that publishes and sells model electrical, propane storage and other safety standards that have been incorporated by reference into several Canadian statutes and regulations. A competing publisher in Canada – P.S. Knight Co., run by an individual named Gordon Knight – decided to copy CSA’s copyrighted works, almost verbatim, and sell them for profit by advertising that they were identical to CSA’s publications – but for 1/3 the price. When CSA sued for copyright infringement in Canada over 10 years ago, Knight and his companies defended their conduct by arguing they were merely copying “the law” of Canada and no one can be sued for copying the law. The Canadian federal courts (including the Canadian Supreme Court) rejected this argument under Canadian law and found Knight and his companies guilty of copyright infringement.
In mid-2020, Knight left Canada to relocate to Dallas, Texas to continue his infringement of CSA’s copyrights from the U.S. This time Knight argued his copying was legal because U.S. courts recognize a “government edicts doctrine” that permits copying of anything enacted into law. Knight also fraudulently registered one of CSA’s copyrighted works in his own name with the U.S. Copyright Office and began publicly stating he now owned CSA’s copyrighted work in the U.S.
When CSA brought this problem to Thompson Coburn’s attention, the firm immediately assembled a cross-office team to stop Knight’s infringement in the U.S. IP attorneys from the Chicago and St. Louis offices, with assistance from the Dallas office, set out to stop Knight’s infringement in the U.S. and get his fraudulent U.S. copyright registration cancelled. After extensive written discovery, depositions, and complicated international copyright research and analysis, Thompson Coburn assembled the evidence it needed to move for summary judgment in CSA’s favor on all claims in the case.
Thompson Coburn won summary judgment of infringement by Defendants on all seven of CSA’s copyrighted works at issue in the case. Thompson Coburn also won – on summary judgment – damages against all Defendants. The Texas federal court also permanently enjoined all Defendants from any further infringement in the U.S. and ordered them to cancel their fraudulent U.S. copyright registration. The court also rejected all of Defendants’ defenses and made clear the U.S. “government edicts doctrine” does not apply to foreign copyrighted works incorporated by reference into foreign law.
Thompson Coburn’s IP team included Michael Parks, Tom Polcyn, Robyn Ast-Gmoser, Katie Colvin, and Alex Weidner. The firm’s Dallas team included litigators Nicole Williams and Jasmine Wynton.
The case is Canadian Standards Association v. P.S. Knight Co., Ltd. et al., 1:20-cv-01160, in the United States District Court for the Western District of Texas. Read the Order here.
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