Lainco Inc. v. Commission scolaire des Bois-Francs

Lainco Inc. v. Commission scolaire des Bois-Francs
Court (s) Database
Federal Court Decisions
Date
2017-09-12
Neutral citation
2017 FC 825
File numbers
T-941-13
Decision Content
Date: 20170912
Docket: T-941-13
Citation: 2017 FC 825
[ENGLISH TRANSLATION]
Ottawa, Ontario, September 12, 2017
PRESENT: The Honourable Mr. Justice LeBlanc
BETWEEN:
LAINCO INC.
Plaintiff
and
COMMISSION SCOLAIRE DES
BOIS-FRANCS
and
PLURITEC LTÉE
and
LEMAY CÔTÉ ARCHITECTES INC.
and
CONSTRUCTIONS GAGNÉ ET FILS INC.
Defendants
PUBLIC JUDGMENT AND REASONS
(Confidential judgment and reasons issued September 12, 2017)
Table of Contents
I. Introduction 2
II. Background 3
A. The Victoriaville Complex project 3
(1) Its genesis 3
(2) Launch and preparation of plans and specifications 6
(3) The arrival of Lainco 9
B. The legal proceedings 12
III. Issues 17
IV. Analysis 18
A. Is the Lainco Design protected under the Act? 18
(1) Legal framework 18
(2) Parties’ positions 20
(3) Discussion and conclusions 22
a) The Lainco Design 22
b) Is the Lainco Design the product of its author’s skill and judgment? 26
B. Does paragraph 64.1(1)(a) of the Act defeat Lainco’s claim? 49
C. Did the defendants, through their participation in the design, manufacture and installation of the steel structure in the Victoriaville Complex, infringe on the Lainco Design, as seen in the Lainco architectural Plans and Works, particularly those related to the Artopex Complex? 54
(1) Legal framework 54
(2) Positions of the parties 59
(3) Discussion and conclusions 62
a) Access to the Lainco Design 62
b) The similarities between the structures of the Artopex and Victoriaville complexes 68
c) Is the structure of the Victoriaville Complex the result of an independent creation? 86
d) Is each and every defendant responsible for the infringement of the Lainco Design, as adapted to the Artopex Complex? 92
D. What damages is Lainco entitled to as a result of the defendants’ infringement of its copyright? 101
(1) The claim for lost profits 103
(2) Disgorgement of the defendants’ profits 115
(3) Punitive damages 115
V. Decision 118
I. Introduction
[1] Since October 1, 2013, students in the Bois-Francs region of Quebec have had the great pleasure of having access to a new and modern indoor soccer stadium, built in Victoriaville [the Victoriaville Complex] by their school board, the Commission scolaire des Bois-Francs [CSBF] and its partners in the project, the engineering firm of Pluritec [Pluritec], the architectural firm of Lemay & Côté [Lemay Côté] and the general contractor, Construction Gagné & Fils [Construction Gagné].
[2] While users of the sports complex enjoy their favourite activities, a match of another kind takes place in another arena, that of the courts, between the CSBF and its partners and Lainco Inc. [Lainco], a business specializing in the design and manufacture of steel structures. In fact, the Court is asked here to determine whether the design, manufacture and installation of the steel structure of the Victoriaville Complex were carried out, as claimed by Lainco, in infringement of the rights that it feels it holds under the Copyright Act, RSC 1985, c C-42 [the Act] to the structural plans—and the structure itself—of an indoor soccer stadium built in Granby in 2011 [the Artopex Complex] and to determine, as applicable, the amount of damages to which it is entitled as a result of that infringement.
II. Background
A. The Victoriaville Complex project
(1) Its genesis
[3] According to the evidence on record, the idea of equipping the City of Victoriaville and the Bois-Francs region with an indoor soccer stadium first came up in the late 2000s. The project was then led by the CÉGEP de Victoriaville, in cooperation with the City of Victoriaville and the CSBF. At the time, Pluritec provided technical support to the parties in the project. The sports complex that was being considered included three (3) soccer fields and its budget was estimated at $12 million. Due to a lack of government subsidies, however, the project was abandoned.
[4] The project was revived in the fall of 2011, this time with a more modest budget. Pluritec again provided technical support for the project. To prepare the design documents, representatives from the CSBF and Pluritec, Frédéric Gagnon and Louis Viens, respectively, visited two sports complexes at some time in late 2011 or early 2012, i.e. the “Stinger Dome” at Concordia University in Montreal, with a removable structure, and the Bois‑de‑Boulogne multisport complex in the City of Laval, with a wood-arch structure.
[5] On March 29, 2012, a visit was organized at the Artopex Complex at the request of the Mayor of Victoriaville, a dedicated soccer fan who was already familiar with that sports facility. The Mayor wanted the representatives of CSBF and Pluritec to be able to visit that complex, in particular to learn more about its construction and operating costs.
[6] In addition to Mr. Gagnon and Mr. Viens, the Victoriaville delegation also included the Mayor, three (3) municipal employees and another CSBF representative. The manager of the Artopex Complex and a representative from the builder of the Complex, Syscomax, were also on-site for the visit. No one from Lemay Côté, whose services had not yet been solicited, attended the meeting.
[7] The Agreed Statement of Facts and Admissions, submitted in the Court record by the parties in preparation for the trial, recounts that visit to the Artopex Complex as follows:
[TRANSLATION]
64. The two main elements of the Artopex Complex that Mr. Gagnon found particularly interesting during his visit were:
The functionality of the locker rooms; and
The amount of clearance in the playing fields.
65. The visit lasted approximately 45 to 60 minutes.
66. In relation to the visit:
Mr. Viens took handwritten notes and drawings (Exhibit TX-176);
Mr. Gagnon took personal notes (not submitted);
Mr. Viens took photographs (Exhibit TX-229); and
Mr. Viens prepared a report dated April 23, 2012 (Exhibit TX-177).
67. [translation] Mr. Gagnon did not take any photographs or prepare any drawings of the inside the Artopex Complex during the visit.
68 No one present at the visit obtained any copies of the structural plans of the Artopex Complex.
[8] Again according to the Agreed Statement of Facts and Admissions, on returning from the visit to the Artopex Complex, the Mayor of Victoriaville, the Director General of the CSBF and Mr. Gagnon agreed to seriously resume the Victoriaville Complex project in the form of a complex with two (2) “2/3” fields, for which the CSBF would be the principal contractor. To that end, “pre-concept” drawings and plans for the future complex were prepared by Mr. Gagnon and CSBF technical services. Mr. Gagnon also performed some preliminary calculations regarding construction and operating costs for the future complex.
[9] The Artopex Complex is the only indoor soccer stadium with two (2) “2/3” fields, i.e. designed for soccer matches of seven (7) players against seven (7), visited by the CSBF and Pluritec in preparing the design documents for the Victoriaville Complex.
(2) Launch and preparation of plans and specifications
[10] The CSBF seriously launched the Victoriaville Complex project on or around April 18 (2012) when Quebec’s Ministère de l’Éducation, du Loisir et du Sport [the Ministère] announced that it would receive applications for financial assistance for projects related to the development of sports and physical activities. The deadline for submitting such an application to the Ministère was May 18, 2012.
[11] The CSBF immediately retained the services of Pluritec and Lemay Côté to prepare the preliminary and final plans and specifications, including the structural plans and specifications. Lemay Côté was also responsible for coordinating the eventual invitation to tender. In support of its application for financial assistance, the CSBF had to be able to submit the preliminary plans for the project.
[12] Three (3) coordination meetings, involving representatives from the CSBF, including Mr. Gagnon, Mr. Viens and Pluritec, and representatives from Lemay Côté, were held before the deadline of May 18, 2012. Those meetings were held on April 18 and 30 and on May 7, 2012. They are important. For now, it is enough to note the following:
The purpose of the first coordination meeting was, in particular, [translation] “to present the project to the professionals,” for which Mr. Gagnon [translation] “gave the main elements.” In that regard, paragraph 1.2.2 of the report from that first coordination meeting (Exhibit TX‑127) states, among other things, the following:
[translation]
Thus, the new construction will include:
Two playing areas measuring 95 ft by 180 ft (budget 1) or 100 ft by 200 ft (budget 2).
. . .
A steel superstructure covering a large area and providing space above the playing area (2 beams per field with a 35‑ft clearance below the beams and a 50‑ft clearance below the crossbeams). Mr. Viens will work with the Canam company to develop the simplest, most effective and most economical structural design. The free space between the columns supporting each beam will be filled in the exterior envelope with curtain‑wall windows. The lighting and heating equipment will also be integrated into the beams.
. . .
[Emphasis added]
According to paragraph 1.2.7 of that report (Exhibit TX-127), Mr. Viens from Pluritec must, as an action item from that meeting, (i) [translation] “quickly provide the architect with the photos from the various visits to similar completed projects for the purposes of this project” and (ii) [translation] “also forward the structural plans to the architect no later than Wednesday, April 25, 2012, so he can include the structural axes in his plans and the structural elements in his wall sections”;
Following the meeting on April 18, Mr. Viens sent the various stakeholders the photos that he had taken at the Artopex Centre during the visit on March 29, 2012. He also developed the preliminary plans for a structure consisting of open‑work crossbeams, such as those designed by Pluritec for the Alphonse Desjardins sports complex in Trois‑Rivières;
At the second coordination meeting, held on April 30, 2012, Mr. Viens presented his structure consisting of open‑work crossbeams. The report from that second meeting (Exhibit TX-128) reiterates that the new construction will include, among other things, [translation] “a steel superstructure covering a large area and providing space above the playing area (2 beams per field with a 35‑ft clearance below the beams and a 50‑ft clearance below the crossbeams).” That report also notes the following regarding the work performed by Mr. Viens:
. . . [translation] Mr. Viens is currently working with the Canam company. He is submitting a traditional system of repetitive crossbeams that, although economical, does not provide space above the playing area. He will therefore develop the desired superstructure and assess the related costs for the next meeting.
[Emphasis added]
Again according to the report from the coordination meeting on April 30, 2012, Mr. Viens committed to providing [translation] “his revised structural plans, including the desired superstructure, as soon as possible” (Exhibit TX‑128, at paragraph 1.2.7).
The report from the third coordination meeting, held on May 7, 2012 (Exhibit TX‑131), notes that Mr. Viens [translation] “is currently working with the Canam company and that the superstructure that the owner wanted was able to be designed and estimated with them.”
In early May 2012, Pluritec issued the preliminary structural plans required to present the CSBF’s application for financial assistance. A few days later, Lemay Côté sent the CSBF two perspectives—one of the interior, the other of the exterior—of the future complex. Those perspectives would also be used in presenting the CSBF’s application for financial assistance. The interior perspective, as we will see, is important in this case.
[13] On October 16, 2012, with the required approvals and funding, the CSBF called a new coordination meeting, the first since the one on May 7. Over the following weeks, Pluritec and Lemay Côté worked together to complete a detailed estimate of the project and prepare the various plans and specifications for the invitation to tender.
[14] The invitation to tender was published on January 21, 2013. Bids were scheduled to be opened on February 18, 2013.
(3) The arrival of Lainco
[15] In the days following the publication of the invitation to tender, after having had access to the plans and specifications, Lainco contacted the CSBF, finding that the steel structure of the future complex reproduced that of the Artopex Complex. On February 14, 2013, four (4) days before bids were to be opened, Lainco sent a notice to the general contractors who had bid on the project, advising them of its copyrights and inviting them to subcontract with it on the design, manufacture and installation of a steel structure for the new complex (Exhibit TX‑45).
[16] In that notice to bidders, Lainco included a copy of the copyright certificates that it had registered as part of the design and construction, in 2009, of the steel structure for the Antony-Carola indoor soccer stadium at the St‑Jean‑Vianney school in Montreal [the Antony-Carola Complex]. The two certificates were related to the plans and the structure itself.
[17] With the notice to bidders, Lainco also included the plans for the steel structure that it was proposing for the complex to be built based on two options: a structure with an arched roof and another with a flat roof. It also advised the bidders of its price for manufacturing and erecting both structures. In the few days after that notice was sent, following informal discussions with representatives from the CSBF, whose proposed complex involved a “monopitch” roof, Lainco reconsidered and withdrew its offer to the bidders regarding the option of the arched roof.
[18] Again as part of informal discussions with CSBF representatives, in particular Mr. Gagnon, Lainco proposed resolving the impasse by granting a licence to use its structural design [the Lainco Design] for a price of ||||||||||||||||||||.
[19] In the meantime, the CSBF sought an opinion from Pluritec on the merits of Lainco’s claims regarding its copyrights. On February 15, 2013, Pluritec refuted Lainco’s allegations in writing (Exhibit TX‑148). In particular, it assured that it had never had access to the structural plans used in the construction of the Artopex Complex or that it copied that structure, and stated that the design used for the structure of the Victoriaville Complex is an original design, in that it is the result of research, analyses, calculations, computer modelling and drawings as part of the mandate given it by the CSBF, and takes into account local seismic and meteorological conditions, which differ from those in Granby.
[20] On February 18, 2013, the CSBF asked the bidders to disregard the notice from Lainco, to proceed as usual with the analysis of the subcontracting bids, and to use the subcontractors of their choice (Exhibit TX‑47).
[21] The same day, the contract for the construction of the Victoriaville Complex was awarded to Construction Gagné, in the amount of $4,147,886 (Exhibit TX‑151). The manufacture and erection of the structure for the new complex was later awarded by Construction Gagné to the Aciers Solider company, which in turn subcontracted the manufacture of the structure to the Canam company.
[22] The Victoriaville Complex was inaugurated on October 1, 2013. According to the Agreed Statement of Facts and Admissions, its steel structure includes, in particular, the following four elements:
Four (4) triangular master trusses;
“Gerber” secondary beams (chords);
Steel columns on the periphery of the building; and
X‑braces.
[23] The playing area in this Complex, like the one at the Artopex Complex, meets the regulations of FIFA, the international federation that governs soccer worldwide, which requires clearance of 35 feet between the playing area and the ceiling above it. As I understand it, this allows for certain levels of soccer competitions to be presented.
B. The legal proceedings
[24] Lainco commenced this proceeding on May 27, 2013. It amended its Statement of Claim first in May 2013 and again in August 2016. Lainco argues, in essence, that it holds copyrights on the plans that it designed, between 2009 and 2011, for the steel structures of the Antony‑Carola Complex, the hangar for the Air Inuit airline in Montreal and the Artopex Complex, as well as on each of the three structures themselves, manufactured and erected in accordance with those plans.
[25] More specifically, it claims that the plans for the steel structure of the Antony‑Carola Complex, designed in 2009, are not only original, but also innovative compared with what is currently done in the market and that, in particular, they allow for [translation] “a structure with a limited number of trusses, thus optimizing aesthetics while reducing costs” (Reamended Statement, at paragraph 7). It adds that the structural plans for the Air Inuit hangar and the Artopex Complex are a variation of the same innovative design, the only difference being, in the case of the Air Inuit hangar, that it is designed with a flat roof to allow for water retention whereas, in the case of the Artopex Complex, they reflect the reduced dimension of the space occupied by the soccer fields. Lainco argues that those plans and structures are not only original and unique in the industry, but that they have also become distinctive of the goods and services that it offers. It also notes that it won the “2012 Award of Excellence” awarded by the Canadian Institute of Steel Construction (CISC) for the steel structure of the Artopex Complex.
[26] Lainco alleges that, as owner of the copyrights on those plans and structures, which it collectively refers to as the “Lainco Plans” and the “Lainco Architectural Works” and for which it was issued certificates of registration of copyright under subsection 53(2) of the Act, only it can produce or reproduce all or a substantial part of the “Lainco Plans” and “Lainco Architectural Works,” or authorize anyone else to do so.
[27] It argues, however, that the plans for the steel structure of the Victoriaville Complex prepared by Pluritec and Lemay Côté and provided by the CSBF to the parties interested in building that Complex, as well as the steel structure built from those plans by Construction Gagné, are an unauthorized reproduction of all or a substantial part of the Lainco Design included in the “Lainco Architectural Works” and the “Lainco Plans” that, in its opinion, is a breach of sections 3 and 27 of the Act.
[28] Lainco thus feels that it is entitled to receive damages corresponding to the profits that it would have earned by providing and building the structure for the Victoriaville Complex, which only it could do or authorize a third part to do. It is also seeking an amount of $50,000 as punitive and exemplary damages, as well as solicitor-client costs in this action, including all applicable taxes and expert fees.
[29] The defendants are asking that the action by Lainco be dismissed. In particular, the CSBF argues that the “Lainco Architectural Works” are not protected by the Act because they are not the result of the exercise of the author’s intellectual skills and efforts. It submits that, in any event, the plans used in the construction of the Victoriaville Complex are original and in no way constitute a reproduction of all or a substantial part of the Lainco Design. Finally, based on section 64.1 of the Act, the CSBF alleges that the Lainco Design is not protected under the Act because the elements that make it up are useful articles integrated into that Design solely for utilitarian functions.
[30] For its part, Pluritec argues that the plans that it prepared for the Victoriaville Complex are original and do not in any way reproduce any original, innovative or unique aspect specific to the Lainco Design.
[31] Lemay Côté defends itself in the action by Lainco by arguing that the Lainco Design does not include any characteristics that were previously unknown or that constitute innovation and is therefore not a work within the meaning of the Act. Like the CSBF and Pluritec, it also feels that the plans that it prepared for the Victoriaville Complex are original and do not in any way constitute a reproduction of all or a substantial part of the Lainco Design. Alternatively, Lemay Côté argues that, if it is found that there was an infringement of the copyright in this case, the responsibility for that infringement must lie solely with the CSBF and Pluritec, as it was not involved in preparing the plans used to erect the steel structure of the Victoriaville Complex.
[32] Finally, Construction Gagné, which was represented by the same counsel as the CSBF, reiterates substantially the same means of defence as the CSBF. It also argues that it cannot be found at fault in anything as it was in no way involved in the preparation of the plans for the structure of the Victoriaville Complex and only followed instructions from the CSBF, including those contained in the notice to bidders dated February 18, 2013 (Exhibit TX-47), in which the CSBF refuted the allegations by Lainco and invited bidders to choose subcontractors as usual.
[33] Moreover, the defendants find the damages sought by Lainco to be grossly exaggerated.
[34] At trial, Lainco called, as its main witness, one of its two main officers and shareholders, Éric Lachapelle, an engineer by training. It also called two expert witnesses, Vadim Siegel, an architect, and Martin Fafard, a chartered professional accountant and specialist in investigative and forensic accounting. Mr. Siegel’s mandate was to compare the plans for the structure of the Victoriaville Complex and the structure itself with the plans designed—and with the structures built—by Lainco, in particular for the Antony-Carola Complex, the Air Inuit hangar and the Artopex Complex, and to identify significant similarities, if any. Mr. Fafard’s mandate was to quantify the damages suffered by Lainco, in particular its lost profits, from the alleged infringement of its copyrights.
[35] Pluritec called four (4) witnesses. On questions of fact, it first offered the testimony of its project leader for the Victoriaville Complex project, Mr. Viens, and then that of its financial controller, Gilles Cousineau, who testified regarding the profits that it made from that project. On technical questions and regarding the quantification of damages, it also called two expert witnesses, Norman Kadanoff, a structural engineer, who offered an opinion on the differences and similarities between the structure of the Victoriaville Complex and those designed by Lainco, including the elements of the Lainco Design, and Alain David, also a certified professional accountant and specialist in investigative and forensic accounting, who responded to Mr. Fafard.
[36] Alain Côté, an architect by training and project leader with Lemay Côté for the Victoriaville Complex project, testified on behalf of that firm, as did Jacques Côté, who is also an architect and who also offered his opinion, based on common architectural practices, regarding the role of Lemay Côté in that project, more specifically regarding the insertion of the structural plans in the architectural plans for the project.
[37] Finally, the CSBF called one expert witness, Thomas Egli, an engineer. Mr. Egli’s mandate was to determine whether, in his opinion:
the structural plans developed for the Victoriaville Complex reproduce all or a substantial part of the plans developed by Lainco for the Antony-Carola Complex, the Air Inuit hangar and the Artopex Complex;
the structure itself of the Victoriaville Complex reproduces all or a substantial part of the structures of the Antony-Carola Complex, the Air Inuit hangar and the Artopex Complex, erected from the plans prepared by Lainco;
the Lainco Design can be deemed to be the product of the exercise of its author’s skill and judgment; and
the elements of the Lainco Design are useful articles and whether the characteristics attributed to them are solely the result of their utilitarian function.
[38] Moreover, the CSBF did not call any representatives and Construction Gagné called no witnesses.
[39] During the trial, the parties also submitted as evidence excerpts of discoveries held in this matter, namely those of Mr. Lachapelle (Lainco), Mr. Viens (Pluritec), Alain Côté (Lemay Côté), Mr. Gagnon (CSBF), and Michel Dalcourt (Construction Gagné).
[40] Finally, it is important to mention that a confidentiality order was issued in this matter on March 26, 2014, and renewed on October 12, 2016, a few days before the proceedings began. That order primarily limited the disclosure of financial information. During the proceedings, it required an in-camera hearing for certain testimonies or portions of testimonies. Two versions of these reasons, one public, the other confidential, will therefore be issued simultaneously.
III. Issues
[41] In my view, this action raises the following four issues:
a) Is the Lainco Design, as seen in the Lainco Architectural Plans and Works, particularly those related to the Artopex Complex, an original work within the meaning of the Act?
b) If so, does paragraph 64.1(1)(a) of the Act nonetheless defeat Lainco’s claim?
c) If not, did the defendants, through their participation in the design, manufacture and installation of the steel structure of the Victoriaville Complex, infringe on the Lainco Design, as seen in the Lainco Architectural Plans and Works, particularly those related to the Artopex Complex? and
d) If so, is Lainco entitled, in whole or in part, to the damages that it is seeking, including the punitive damages to which it feels it is entitled under the Act?
IV. Analysis
A. Is the Lainco Design protected under the Act?
(1) Legal framework
[42] In Canada, the rights and remedies of someone claiming to hold a copyright are set out in the Act. That system, statutory in origin, is exhaustive (Théberge v Galerie d’Art du Petit Champlain Inc., 2002 SCC 34 at paragraph 5, [2002] 2 SCR 336 [Théberge]; CCH Canadian Ltd. v Law Society of Upper Canada, 2004 SCC 13 at paragraph 9, [2004] 1 SCR 339 [CCH]). It is constructed in a way that establishes “a balance between promoting the public interest in the encouragement and dissemination of works of the arts and intellect and obtaining a just reward for the creator (or, more accurately, to prevent someone other than the creator from appropriating whatever benefits may be generated)” (Théberge, at paragraph 30; CCH, at paragraph 10).
[43] Accordingly, and as noted by all parties in this case, a copyright does not protect the ideas behind the work, but strictly their expression in the work (CCH, at paragraph 8). The idea is therefore public property and its use is not subject to any monopoly. It is the work, in which the idea is expressed, that belongs to the author and that, as long as it is fixed in a material form, provides the rights and protections set out in the Act (CCH, at paragraph 8, citing Moreau v St. Vincent, [1950] Ex. C.R. 198, page 203).
[44] In other words, the need to strike an appropriate balance between giving protection to the skill and judgment of authors in the expression of their ideas, and leaving ideas from the public domain free for all to draw upon forms the “background” against which the Act must be interpreted and the arguments of the parties considered (Cinar Corporation v Robinson, 2013 SCC 73 at paragraph 28, [2013] 3 SCR 1168 [Cinar SCC]; HCC, at paragraph 10).
[45] The Act protects four (4) main categories of works: artistic, dramatic, literary and musical. The category of works cited by Lainco is that of artistic works, which includes architectural works. These two expressions are defined in the Act as follows:
artistic work includes paintings, drawings, maps, charts, plans, photographs, engravings, sculptures, works of artistic craftsmanship, architectural works, and compilations of artistic works; (œuvre artistique)
œuvre artistique Sont compris parmi les œuvres artistiques les peintures, dessins, sculptures, œuvres architecturales, gravures ou photographies, les œuvres artistiques dues à des artisans ainsi que les graphiques, cartes, plans et compilations d’œuvres artistiques. (artistic work)
architectural work means any building or structure or any model of a building or structure; (œuvre architecturale)
œuvre architecturale Tout bâtiment ou édifice ou tout modèle ou maquette de bâtiment ou d’édifice. (architectural work)
[Emphasis added]
[46] However, for the copyright to exist on a work that falls into one of these four (4) categories of works, the work must still be “original” under section 5 of the Act. The concept of original work is not defined in the Act, a task that is left to the courts. The subject of contradictory jurisprudence until the Supreme Court of Canada decided the issue in CCH, an original work is, in general terms, a work by an author that is not a copy of another work. However, to meet the bar of originality, it is not enough for it to simply be from the author if it is not also the product of the author’s skill and judgment and if that exercise of skill and judgment is so trivial as to be a purely mechanical exercise (CCH, at paragraph 16). Skill is a matter of aptitude, proficiency, know-how, knowledge and practical experience, and judgment is a matter of wisdom and the ability to assess or compare various possibilities in order to choose from them (Construction Denis Desjardins Inc. v Jeanson, 2010 QCCA 1287, at paragraph 6 [Construction Desjardins]).
[47] However, that bar is met even if that exercise of skill and judgment does not produce a novel and unique work (CCH, at paragraphs 16 and 25). In fact, the originality set out in the Act “does not expect or require that a work be novel, unheard-of, unique or inventive” (Construction Desjardins, at paragraph 6).
[48] I note in passing that, since 1988, the Act has not required that an architectural work, previously referred to by the legislator as an “architectural work of art,” possess an “artistic quality or character” to be protected by the Act. That therefore means that there is no longer any reason to be stricter toward architectural works or plans than toward other types of works protected by the Act (Construction Desjardins, at paragraph 14). Moreover, this is not contested.
(2) Parties’ positions
[49] Lainco argues that the Lainco Design meets the definition of an architectural work and artistic work, and that it is a work that presents the level of originality needed to be protected under the Act, as the evidence shows that it is the product of the author’s skill and judgment. It noted during the trial that particular attention should be paid to that Design, as adapted at the Artopex Complex, as that is the work that was allegedly infringed upon.
[50] Citing the work by Stéphane Gilker, La protection des œuvres architecturales par le droit d’auteur au Canada, (1991), 3:3 CPI 241, part 1, [Gilker], Lainco notes that the courts previously considered a broad range of works and structures as architectural works, such as commercial buildings, single and row dwelling houses, a plan for a boutique facade, a railroad loading dock, a half tennis court made of concrete paving blocks marked with play lines and posts for holding a net, landscaping consisting of a pond, a jetty, a stairway and a walkway, a squash centre, a telecommunications tower, and the interior design for an architectural work (Gilker, at pages 268–269).
[51] Lainco continues by stating that this list also includes the steel structure of the former Ottawa Civic Centre, which allowed for the layout, within the same sports complex, of a football stadium and an arena (Netupsky et al v Dominion Bridge Co. Ltd., 5 DLR (3d) 195, at p 196 [Netupsky]), as well as the design of the interior and exterior layout of a grocery store chain seeking to offer a new customer experience (2426‑7536 Québec inc. v Provigo Distribution inc., [1992] Q.J. No. 2565, EYB 1992‑75117).
[52] The defendants argue that the Lainco Design does not have the degree of originality needed to be protected under the Act, for two reasons. First, the Lainco Design is allegedly imprecise, as the evidence shows that it sometimes has four key components, sometimes three, and sometimes two, meaning that it is impossible to accurately determine what makes it original and, as such, what is protected and protectable by copyright.
[53] The defendants also argue that the Lainco Design is simply the result of combining structural elements that are already well known (master trusses, Gerber secondary chords and columns on the periphery of the building), an exercise that, in their view, does not require any particular skill or judgment.
(3) Discussion and conclusions
a) The Lainco Design
[54] The defendants argue that, since a copyright gives its owner a form of monopoly on the production or reproduction, in any material form, of all or a substantial part of the work in question, what makes it original must be clearly defined, which allegedly is not the case here.
[55] They find that the definition of the Lainco Design has evolved, in all senses, depending on the various stages of this case. They thus note that:
In its Statement of Claim, Lainco presents it as [translation] “having a structure with a limited number of trusses, thus optimizing aesthetics while reducing costs,” without specifying the number of trusses needed and without mentioning the presence or contribution of secondary chords, peripheral columns or braces;
In discovery, its representative, Éric Lachapelle, stated that the Lainco Design included main trusses close to each other with the use of Gerber beams or chords as secondary elements;
Its expert, Mr. Siegel, in turn, sees four main elements: (i) steel columns on the periphery of the building; (ii) triangular master trusses supporting the chords in a cantilever assembly; (iii) secondary chords attached to the cantilever chords in the roof bridging; and (iv) X‑bracing;
During the proceedings, Mr. Lachapelle testified that the use of Gerber chords is not essential and that the Lainco Design can use any form of master truss, while Mr. Siegel is of the view that, in the end, neither the columns on the periphery of the building nor the cross braces truly contribute to the aesthetic aspect of the Lainco Design.
[56] For its part, Lainco argues that the evidence on record shows that the design that it developed is characterized by the presence of a limited number of long triangular master trusses that are intentionally visible, imposing (approximately 200 feet in length by 15 feet in height) and spaced out, Berber secondary beams with the benefit of being low-profile, even hidden, and double columns supporting the master trusses, as well as, and in particular, the unique choice and layout of these three elements.
[57] This description seems to me to effectively reflect what is shown by the evidence. The Lainco Design, as I understand it from the evidence, seems to me to be the result of the specific layout, in order to give a distinctive aesthetic appeal to the playing area structure, which is clear, of two main elements: the triangular master trusses, preferably arched, which to some extent are the main appeal of the design and that, since the completion of the Artopex Complex, are two per field, and the Gerber secondary beams that serve to highlight the master trusses. To a lesser degree, the Lainco Design also includes the presence of double columns used to support the master trusses.
[58] In my view, this is clear from Mr. Lachapelle’s testimony at the trial (Transcripts, vol. 1, at pages 65, 76, 154, 155, 190, 191, 195 and 196). Moreover, it is not exactly accurate to say that, during his discovery, Mr. Lachapelle referred only to the master trusses and the Gerber beams in describing the Lainco Design. Although more discreet than during the trial, we also see a reference to the double columns (Exhibit D‑15A, at pages 105–106).
[59] It is also inaccurate to say that Mr. Siegel finally admitted that the double columns did not make any contribution to the Lainco Design. Under cross-examination, he stated that the said columns contributed to the Lainco Design through their configuration (Transcripts, vol. 2, at pages 177–178), although he admitted that, on their own, unless windows were integrated into them, they did not contribute to the creation of an atmosphere inside the structure, as users are not inclined to specifically notice the layout of the columns (Transcripts, vol. 2, at page 186). I do not see that as a repudiation of the double columns’ involvement in or contribution to the Lainco Design. Once again, neither Mr. Lachapelle nor Mr. Siegel claimed that the double columns played a key role.
[60] As for the statements attributed to Mr. Lachapelle that the use of Gerber chords is not essential or that the Lainco Design can accommodate any form or configuration of master trusses, nuances must be pointed out. First, I understand from Mr. Lachapelle’s testimony that other types of beams could always be installed rather than Gerber beams, or crossbeams, which he considered at one point. However, I also understood that that would result in a secondary chord that would cost more if beams other than Gerber were used, or that would be less appealing if crossbeams were used, thus altering the Lainco Design. In other words, there is no aesthetic and business logic, according to Mr. Lachapelle, in modifying the design in that way (Transcripts, vol. 1, at pages 192–193). He also explained why continuous beams were used instead of Gerber beams for the Air Inuit hanger, a much larger structure with a flat roof to retain water (Transcripts, vol. 2, at pages 20–22). Mr. Lachapelle testified that using those beams nonetheless maintained the distinctive aesthetic appeal of the Lainco Design (Transcripts, vol. 2, at page 20).
[61] Moreover, regarding the form of the master trusses, it is true that Mr. Lachapelle admitted that the Lainco Design did not depend on a single configuration of master trusses. However, he noted that it is the presence of the master trusses, grouped in a certain manner, that is at the heart of the Lainco Design and not their configuration, which in no way, in his opinion, changes the general aesthetic aspect associated with the Design (Transcripts, vol. 1, at pages 190–192).
[62] I would add the following. I agree with counsel for Lainco that what is first and foremost at issue in this case is the Lainco Design as adapted to the Artopex Complex, as the plans for that Complex, and the structure built according to those plans, were allegedly infringed upon by the defendants. The plans are precise and the structure exists. The work that must ultimately be examined in this case is therefore that one and it includes triangular master trusses, as does the Antony‑Carola Complex and the Air Inuit hangar. The Act does not prohibit a work from being adapted, as long as the adapted work, to be protected under the Act, reproduces an important part of the original work (Théberge, at paragraph 73).
[63] In this case, I am satisfied that the Lainco Design is characterized by the presence of a limited number of long triangular master trusses that are intentionally visible, imposing and spaced out (two per field in the case of the indoor soccer stadiums), Gerber secondary beams and double columns supporting the master trusses. The X-braces are not part of it.
[64] A 3D axonometry of the structure of the Artopex Complex clearly shows the various elements of the Lainco Design (Exhibit TX‑70):