P.S. Knight Co. Ltd. v. Canadian Standards Association

P.S. Knight Co. Ltd. v. Canadian Standards Association
Court (s) Database
Federal Court of Appeal Decisions
Date
2018-12-07
Neutral citation
2018 FCA 222
File numbers
A-121-16, A-90-16
Notes
Digest
Decision Content
Date: 20181207
Dockets: A-90-16
A-121-16
Citation: 2018 FCA 222
CORAM:
WEBB J.A.
RENNIE J.A.
GLEASON J.A.
BETWEEN:
P.S. KNIGHT CO. LTD. and
GORDON KNIGHT
Appellants
and
CANADIAN STANDARDS ASSOCIATION
Respondent
Heard at Toronto, Ontario, on March 1, 2018.
Judgment delivered at Ottawa, Ontario, on December 7, 2018.
REASONS FOR JUDGMENT BY:
GLEASON J.A.
CONCURRED IN BY:
RENNIE J.A.
DISSENTING REASONS BY:
WEBB J.A.
Date: 20181207
Dockets: A-90-16
A-121-16
Citation: 2018 FCA 222
CORAM:
WEBB J.A.
RENNIE J.A.
GLEASON J.A.
BETWEEN:
P.S. KNIGHT CO. LTD. and
GORDON KNIGHT
Appellants
and
CANADIAN STANDARDS ASSOCIATION
Respondent
REASONS FOR JUDGMENT
GLEASON J.A.
[1] In this appeal, the appellants seek to set aside the judgment of the Federal Court in Canadian Standards Association v. P.S. Knight Co. Ltd., 2016 FC 294 (per Manson J.) as well as the supplemental judgment in Canadian Standards Association v. P.S. Knight Co. Ltd., 2016 FC 387 (also per Manson J.).
[2] In the judgment, the Federal Court granted the application of the respondent Canadian Standards Association (the CSA) for copyright infringement, enjoined the appellants from continuing that infringement, ordered them to deliver up to the CSA all infringing copies of the 2015 version of the Canadian Electrical Code, Part I (the CSA Electrical Code or the Code), as well as all plates or electronic files of the infringing copies, and ordered the corporate appellant (Knight Co.) to pay statutory damages in the amount of $5,000.00. The Federal Court also granted the CSA its costs. In its supplemental judgment, the Federal Court quantified those costs in the amount of $96,336.00 and ordered them to be paid by Knight Co.
[3] For the reasons that follow, I would dismiss both appeals, with costs.
I. The Factual and Statutory Background to these Appeals
[4] It is useful to commence by outlining the relevant factual and statutory background to these appeals.
A. The CSA and the CSA Electrical Code
[5] The CSA is a federal not-for-profit corporation governed by the Canada Not-for-profit Corporations Act, S.C. 2009, c. 23. It is engaged in developing, testing and certifying over 3,000 voluntary standards. One of the most important of these is the CSA Electrical Code, which sets out safety standards for installation and maintenance of electrical equipment in Canada.
[6] The CSA published the first version of CSA Electrical Code in 1927 and has updated and published revised versions of the Code continuously ever since. The CSA sells the CSA Electrical Code and uses the income from these sales to finance the development of the Code and other voluntary standards. The 2015 version of the CSA Electrical Code is at issue in these appeals.
[7] The CSA has been accredited by the Standards Council of Canada (the Standards Council) as a standards development organization. The Standards Council is a non-agent federal Crown corporation, established pursuant to the Standards Council of Canada Act, R.S.C. 1985, c. S-16, s. 3 (the Standards Council Act). According to subsection 4(1) of that Act, the Standards Council’s mandate is to:
[…] promote efficient and effective voluntary standardization in Canada, where standardization is not expressly provided for by law and, in particular, to
[…] de faire progresser l’économie nationale, de contribuer au développement durable, d’améliorer la santé, la sécurité et le bien-être des travailleurs et du public, d’aider et de protéger les consommateurs, de faciliter le commerce intérieur et extérieur, et de développer la coopération internationale en matière de normalisation, le Conseil a pour mission d’encourager une normalisation efficiente et efficace au Canada lorsque celle-ci ne fait l’objet d’aucune mesure législative, et notamment :
(a) promote the participation of Canadians in voluntary standards activities,
a) d’encourager les Canadiens à participer aux activités relatives à la normalisation volontaire;
(b) promote public-private sector cooperation in relation to voluntary standardization in Canada,
b) d’encourager la coopération entre les secteurs privé et public en matière de normalisation volontaire au Canada;
(c) coordinate and oversee the efforts of the persons and organizations involved in the National Standards System,
c) de coordonner les efforts des personnes et organismes s’occupant du Système national de normes, et de voir à la bonne marche de leurs activités;
(d) foster quality, performance and technological innovation in Canadian goods and services through standards-related activities, and
d) d’encourager, dans le cadre d’activités relatives à la normalisation, la qualité, la performance et l’innovation technologique en ce qui touche les produits et les services canadiens;
(e) develop standards-related strategies and long-term objectives,
e) d’élaborer des stratégies et de définir des objectifs à long terme en matière de normalisation.
in order to advance the national economy, support sustainable development, benefit the health, safety and welfare of workers and the public, assist and protect consumers, facilitate domestic and international trade and further international cooperation in relation to standardization.
[EN BLANC/BLANK]
[8] Among other things, the Standards Council is empowered to accredit organizations in Canada that are engaged in standards development (paragraph 4(1)(d.1) of the Standards Council Act) and to approve standards submitted by such organizations as national standards (paragraph 4(1)(e) of the Standards Council Act). The Standards Council has approved the CSA Electrical Code as a national standard.
[9] The introduction to the 2015 version of the CSA Electrical Code states that it is a “voluntary code for adoption and enforcement by regulatory authorities”. The Code has been adopted by the federal, provincial and territorial governments and incorporated by reference into legislation and regulations regarding electrical safety.
[10] For example, at the federal level, section 8.1 of Part VIII of the Canada Occupational Health and Safety Regulations, SOR/86-304 incorporates the CSA Electrical Code as part of its definition of “Canadian Electrical Code” that federally-regulated workplaces and employers are required to comply with in accordance with subsection 8.3(1) of those regulations.
[11] At the provincial and territorial level, the CSA Electrical Code has been incorporated by reference into regulations and statutes setting standards for installation and maintenance of electrical equipment, sometimes with variation for local conditions (see, for example, Electrical Safety Regulation, B.C. Reg. 100/2004, s. 20; Electrical Code Regulation, Alta Reg. 209/2006, s. 3(a); The Electrical Code Regulations, R.R.S., c. E-6.3 Reg. 16, s. 3; Manitoba Electrical Code, M.R. 76/2018, s. 1; Electrical Safety Code, O. Reg. 164/99, s. 1; Construction Code, C.Q.L.R., c. B-1.1, r. 2, s. 5.01; General Regulation, N.B. Reg. 84-165, s. 2; Electrical Code Regulations, N.S. Reg. 95/99, s. 3; Canadian Electrical Code Regulations, P.E.I. Reg. EC406/13, s. 2; Electrical Regulations, N.L.R. 120/96, s. 4; Electrical Protection Act, R.S.Y. 2002, c. 65, s. 1.01(1); Electrical Protection Act, R.S.N.W.T. 1998, c. E-3, s. 1(1); Electrical Protection Act, R.S.N.W.T. (Nu) 1988, c. E-3, s. 1(1)).
[12] The evidence before the Federal Court established that the amendments to the CSA Electrical Code that were included in the 2015 version of the Code were developed by a committee set up under the auspices of the CSA and that members of that committee as well as representatives of the CSA expended time and effort to produce the 2015 version of the CSA Electrical Code. Members of the committee included two CSA employees as well as several representatives of provincial, territorial and municipal electrical inspection authorities, certain federal departments and agencies and industry, labour and educational associations. The evidence also indicated that the committee members who were not employed by the CSA had signed agreements, assigning to the CSA the copyright in the amendments developed by the committee that were incorporated into the 2015 version of the CSA Electrical Code. However, the practice of obtaining such assignments appears not to have extended back to the earlier versions of the CSA Electrical Code produced before approximately 2010.
[13] Copyright in the 2015 CSA Electrical Code was registered on April 27, 2015 in favour of the CSA. There was evidence before the Federal Court indicating that a similar registration was made for the 2012 version of the Code.
[14] The introduction to the 2015 version of the CSA Electrical Code claims copyright on behalf of the CSA, shows the CSA as being the publisher, states that the CSA is the owner or authorized licensee of the copyrighted works and warns that the unauthorized use, modification, copying or disclosure of the CSA Electrical Code may violate the law and lead to legal action.
[15] The evidence before the Federal Court indicated that the CSA Electrical Code was published by the CSA and the Ontario Electrical Safety Authority. In the Ontario publication, the Electrical Safety Authority specifically acknowledges the CSA’s copyright in the Code and the fact that it has been given permission by the CSA to reproduce the Code. There was no evidence to indicate whether the CSA Electrical Code was similarly published by other provincial or territorial authorities nor to indicate how easy or difficult it might be to obtain a copy of the CSA Electrical Code.
B. The Appellants and the Circumstances Giving Rise to the Application by the CSA to the Federal Court
[16] Knight Co. is a commercial competitor of the CSA. One of the publications offered and sold in the past by Knight Co. was the Electrical Code Simplified (the ECS), a simplified version of the CSA Electrical Code intended for residential applications. It was developed in the 1960’s by Peter Knight, the former president and director of Knight Co. and father of the appellant, Gordon Knight, who is now the president and a director of Knight Co.
[17] At the time the ECS was first developed and published, Peter Knight and the CSA had a good working relationship, providing each other with advance copies of their respective publications. In 1968 and 1969, they exchanged a series of letters, which included reminders from the CSA that Peter Knight ensure that he not infringe the CSA’s copyright in the Code and make sure that he properly attributed the excerpts from the CSA Electrical Code used in the ECS. In response, Peter Knight wrote that he was “very careful to avoid any infringement of C.S.A.’s copyright” (Affidavit of Gordon Knight, Exhibit 3, Appeal Book, Vol. 2, p. 485) and that “[i]f we are in fact infringing on C.S.A. copy-right [sic] we will take immediate steps to correct this situation” (Affidavit of Gordon Knight, Exhibit 5, Appeal Book, Vol. 2, p. 490).
[18] A letter sent by the CSA in 1969 gave Peter Knight permission to quote from the CSA Electrical Code, so long as “recognition of the source is given in a clear manner on those items which are direct quotations” (Affidavit of Gordon Knight, Exhibit 7, Appeal Book, Vol. 2, p. 495). In his affidavit filed with the Federal Court, Gordon Knight claims that this permitted use was assigned from Peter Knight to Knight Co. after it was incorporated, though no additional evidence was provided to substantiate this fact, and the CSA claims it did not have knowledge or approve of any such assignment.
[19] In 2004, the CSA offered to purchase Knight Co., but the offer was refused. Following the breakdown in negotiations, the relationship between the parties deteriorated. In a letter dated July 12, 2007, the CSA offered to grant a licence to Peter Knight personally to reproduce excerpts from the Code that could not be assigned or transferred to any other person or legal entity. No response to that letter was received by the CSA.
[20] Following Gordon Knight’s purchase of Knight Co. in 2010, the CSA wrote to Knight Co. to inform the company that any licence that may have existed was terminated. In 2012, the CSA discovered that Knight Co. intended to publish a new version of the ECS which is the subject of the action in Federal Court file T-1178-12, which is still pending before that Court. After that action was commenced, the relationship between the parties continued to worsen and Gordon Knight started a website which is intensely critical of the CSA. In response, the CSA launched a defamation proceeding in the Ontario Superior Court of Justice: see Canadian Standards Association v. P.S. Knight Co. Ltd., 2015 ONSC 7980 and 2016 ONSC 896. That proceeding appears still to be pending.
[21] At the behest of Gordon Knight, a Member of Parliament asked questions in the House of Commons in 2013 relating to the federal government’s perspective on the CSA. The Minister of Industry explained that the CSA was not a regulatory entity, but rather a not-for-profit-membership-based association. The Minister further explained the federal government’s view that standards development organizations such as the CSA “maintain the intellectual property and copyright of voluntary standards that are referenced in regulations” (Affidavit of Doug Morton, Exhibit 14, House of Commons Debates, 41st Parliament, 2nd Session, No. 026 (November 28, 2013), Appeal Book, Vol. 1, pp. 324-327).
[22] In 2016, Knight Co. reproduced and threatened to distribute a complete and identical copy of the 2015 version of the CSA Electrical Code at one-third the price the CSA charges, advertising as follows:
Why purchase the PS Knight edition of the CEC?
Same Code – Different Price
PS Knight’s Code Book • $60
CSA’s Code book • $180
You save $120. All the Code at 1/3 the cost!
(Affidavit of Doug Morton, Appeal Book, Vol. 1, Tab 10, p. 117, para. 37)
[23] In response, the CSA initiated the application under Rules 61 and 300 of the Federal Courts Rules, SOR/98-106, and the Copyright Act, R.S.C. 1985, c. C-42 that gave rise to the judgments under appeal.
C. The Statutory and Regulatory Framework for Publication and Reproduction of Statutes and Regulations
[24] It is convenient to next summarize the framework that applies to the publication and reproduction of statutes and regulations. As the discussion that follows demonstrates, this framework does not apply to materials incorporated by reference into statutes or regulations, like the CSA Electrical Code.
(1) Federal
[25] At the federal level, original statutes and nearly all original regulations are published by the Queen’s Printer: Publication of Statutes Act, R.S.C. 1985, c. S-21, s. 10; Statutory Instruments Act, R.S.C. 1985, c. S-22, ss. 10(1), 11(1). (Section 15 of the Statutory Instruments Regulations, C.R.C., c. 1509 exempts certain regulations from publication on national security and other grounds.) The Queen’s Printer for Canada is an “officer of the Department [of Public Works and Government Services]” and “exercise[s] [his or her] printing and publishing functions”, including those “assigned […] by the Minister [of Public Works and Government Services]”, “under the supervision of the Minister”: Department of Public Works and Government Services Act, S.C. 1996, c. 16, s. 19. Likewise, the federal Minister of Justice and Attorney General maintains and publishes the consolidated statutes and regulations: Legislation Revision and Consolidation Act, R.S.C. 1985, c. S-20, ss. 2, 26, 28(1). The Revised Statutes and supplements to them were printed and distributed in accordance with the Revised Statutes of Canada, 1985 Act, R.S.C. 1985, c. 40 (3rd Supp.), ss. 8, 15.
[26] The relevant definitions in the Statutory Instruments Act exclude from the definition of a “regulation” and “statutory instrument” materials that are incorporated by reference into a regulation. In this regard, subsection 2(1) of the Statutory Instruments Act defines a “regulation” as meaning a “statutory instrument”:
(a) made in the exercise of a legislative power conferred by or under an Act of Parliament, or
a) soit pris dans l’exercice d’un pouvoir législatif conféré sous le régime d’une loi fédérale;
(b) for the contravention of which a penalty, fine or imprisonment is prescribed by or under an Act of Parliament,
b) soit dont la violation est passible d’une pénalité, d’une amende ou d’une peine d’emprisonnement sous le régime d’une loi fédérale.
and includes a rule, order or regulation governing the practice or procedure in any proceedings before a judicial or quasi-judicial body established by or under an Act of Parliament, and any instrument described as a regulation in any other Act of Parliament;
Sont en outre visés par la présente définition les règlements, décrets, ordonnances, arrêtés ou règles régissant la pratique ou la procédure dans les instances engagées devant un organisme judiciaire ou quasi judiciaire constitué sous le régime d’une loi fédérale, de même que tout autre texte désigné comme règlement par une autre loi fédérale.
[27] Subsection 2(1) of the Statutory Instruments Act defines a “statutory instrument” as meaning:
(a) […] any rule, order, regulation, ordinance, direction, form, tariff of costs or fees, letters patent, commission, warrant, proclamation, by-law, resolution or other instrument issued, made or established
a) Règlement, décret, ordonnance, proclamation, arrêté, règle, règlement administratif, résolution, instruction ou directive, formulaire, tarif de droits, de frais ou d’honoraires, lettres patentes, commission, mandat ou autre texte pris :
(i) in the execution of a power conferred by or under an Act of Parliament, by or under which that instrument is expressly authorized to be issued, made or established otherwise than by the conferring on any person or body of powers or functions in relation to a matter to which that instrument relates, or
(i) soit dans l’exercice d’un pouvoir conféré sous le régime d’une loi fédérale, avec autorisation expresse de prise du texte et non par simple attribution à quiconque — personne ou organisme — de pouvoirs ou fonctions liés à une question qui fait l’objet du texte,
(ii) by or under the authority of the Governor in Council, otherwise than in the execution of a power conferred by or under an Act of Parliament,
[emphasis added]
(ii) soit par le gouverneur en conseil ou sous son autorité, mais non dans l’exercice d’un pouvoir conféré sous le régime d’une loi fédérale;
[mon soulignement]
[28] In accordance with the foregoing, a regulation must be a statutory instrument. Hence, something that is not a statutory instrument cannot be a regulation. And, to be a statutory instrument, the instrument must either be issued, made or established pursuant to a power established under federal legislation under which the instrument is expressly authorized to be issued, made or established or must have been issued, made or established by or under the non-statutory authority of the Governor in Council.
[29] Neither can be said of the CSA Electrical Code. It was not issued, made or established by or under the non-statutory authority of the Governor in Council. Nor was it made or established in the execution of a power by or under an Act of Parliament under which it was expressly authorized to be issued because it was not issued under the authority of the Standards Council Act or any other legislation. Rather, the CSA Electrical Code was developed and issued by the CSA, a private corporation. The fact that the Standards Council has recognized the CSA Electrical Standard as a national standard and that the CSA has been accredited by the Standards Council does not transform the CSA Electrical Code into a statutory instrument. As was noted by the British Columbia Court of Appeal in R. v. Sims, 2000 BCCA 437, 148 C.C.C. (3d) 308 at para. 32:
The Canadian Standards Association is a voluntary non-statutory organization. In developing standards and publishing them, the Association does not exercise powers conferred by or under an Act of Parliament and therefore its standards cannot be regarded as “statutory instruments” or “regulations” within the meaning of the Statutory Instruments Act.
[30] The recently-enacted federal Incorporation by Reference in Regulations Act, S.C. 2015, c. 33 recognizes that standards like the CSA Electrical Code need not be published in accordance with the requirements set out in the Statutory Instruments Act. This Act amends the Statutory Instruments Act to provide for an express power to incorporate by reference in regulations:
18.1 (1) Subject to subsection (2), the power to make a regulation includes the power to incorporate in it by reference a document — or a part of a document — as it exists on a particular date or as it is amended from time to time.
18.1 (1) Sous réserve du paragraphe (2), le pouvoir de prendre un règlement comporte celui d’y incorporer par renvoi tout ou partie d’un document, soit dans sa version à une date donnée, soit avec ses modifications successives.
[31] Following these amendments, subsection 18.3(1) of the Statutory Instruments Act requires that the appropriate authority, usually the minister responsible for the administration of a regulation, ensure that material that is incorporated by reference is “accessible”, though that term is left undefined and has yet to be interpreted in a reported decision. Section 18.4 provides that publication in the Canada Gazette of material incorporated by reference is not required, reflecting the understanding that one of the advantages of incorporation by reference is the possibility of bypassing the formal requirements of the Statutory Instruments Act concerning publication.
[32] Thus, under federal law, the CSA Electrical Code is not a regulation and need not be published by the federal government, although the appropriate authority must ensure that it is accessible.
[33] The appellants point to the Reproduction of Federal Law Order, SI/97-5 (the Reproduction of Federal Law Order), which allows for the copying of federal enactments and decisions, asserting that the Reproduction of Federal Law Order provides authority for Knight Co. to copy and sell the CSA Electrical Code. I disagree.
[34] The Reproduction of Federal Law Order provides that:
Anyone may, without charge or request for permission, reproduce enactments and consolidations of enactments of the Government of Canada, and decisions and reasons for decisions of federally-constituted courts and administrative tribunals, provided due diligence is exercised in ensuring the accuracy of the materials reproduced and the reproduction is not represented as an official version.
Toute personne peut, sans frais ni demande d’autorisation, reproduire les textes législatifs fédéraux, ainsi que leur codification, et les dispositifs et motifs des décisions des tribunaux judiciaires et administratifs de constitution fédérale, pourvu que soient prises les précautions voulues pour que les reproductions soient exactes et ne soient pas présentées comme version officielle.
[35] The term “enactment” is not defined in the Reproduction of Federal Law Order, but, in my view, must be understood as only encompassing statutes enacted by Parliament and regulations made by the Governor in Council or otherwise under statutory authority. The term does not include materials incorporated by reference into a regulation that need not be published in the manner contemplated by the Statutory Instruments Act.
[36] The federal Interpretation Act, R.S.C. 1985, c. I-21, s. 2(1) defines an enactment as meaning “an Act or regulation or any portion of an Act or regulation”, and a regulation as including:
an order, regulation, rule, rule of court, form, tariff of costs or fees, letters patent, commission, warrant, proclamation, by-law, resolution or other instrument issued, made or established
Règlement proprement dit, décret, ordonnance, proclamation, arrêté, règle judiciaire ou autre, règlement administratif, formulaire, tarif de droits, de frais ou d’honoraires, lettres patentes, commission, mandat, résolution ou autre acte pris :
(a) in the execution of a power conferred by or under the authority of an Act, or
a) soit dans l’exercice d’un pouvoir conféré sous le régime d’une loi fédérale;
(b) by or under the authority of the Governor in Council;
b) soit par le gouverneur en conseil ou sous son autorité.
[37] Although the definitions in subsection 2(1) of the Interpretation Act are stated to apply for the purposes of the Interpretation Act itself, paragraph 15(2)(b) of the Interpretation Act provides that:
Where an enactment contains an interpretation section or provision, it shall be read and construed
Les dispositions définitoires ou interprétatives d’un texte :
[…]
[…]
(b) as being applicable to all other enactments relating to the same subject-matter unless a contrary intention appears.
b) s’appliquent, sauf indication contraire, aux autres textes portant sur un domaine identique.
[38] The Interpretation Act and the Reproduction of Federal Law Order relate to the same subject matter, namely federal enactments. As can be inferred from R. v. Hay, 2010 SCC 54, [2010] 3 S.C.R. 206 at para. 4 and British Columbia Ferry Corp. v. M.N.R., 2001 FCA 146, [2001] 4 F.C. 3 at para. 13, for the rule in paragraph 15(2)(b) of the Interpretation Act to apply, the enactments need not relate to an identical subject-matter so long as there is sufficient similarity among their subject-matters. Such similarity exists here. Therefore, the definition of “enactment” in the Interpretation Act should be applied to interpret the term as it is used in the Reproduction of Federal Law Order.
[39] For the same reasons set out above in the context of the Statutory Instruments Act, the CSA Electrical Code is not a regulation and, consequently, not an enactment within the meaning of the Interpretation Act and the Reproduction of Federal Law Order.
[40] This interpretation is shared by the federal government. As noted by the respondent, the federal Department of Innovation, Science and Economic Development has indicated on its website that the Reproduction of Federal Law Order “does not apply to any materials that have been copyrighted privately or separately by a third party, and that happen to have been included with, added to, or referred to in the Government of Canada legislation, statute, regulation and/or decision”. (https://www.ic.gc.ca/eic/site/icgc.nsf/eng/07415.html#p3.2)
(2) Provincial and Territorial
[41] Most provinces and territories have dealt with these issues in a similar fashion and require that the Queen’s Printer (or equivalent official) publish original statutes and regulations and allow for the publication of consolidations: Queen’s Printer Act, R.S.B.C. 1996, c. 394, ss. 5, 7; Regulations Act, R.S.B.C. 1996, c. 402, s. 5(1); Queen’s Printer Act, R.S.A. 2000, c. Q-2, s. 3; Regulations Act, R.S.A. 2000, c. R-14, s. 3(1); Queen’s Printer Act, R.S.S. 1978, c. Q-3, ss. 3-4; Regulations Act, 1995, S.S. 1995, c. R-16.2, s. 6(1); Statutes and Regulations Act, C.C.S.M., c. S207, ss. 5, 16, 23; Legislation Act, 2006, S.O. 2006, c. 21, Sched. F., ss. 15(1), 25(1); An Act respecting the Centre de services partagés du Québec, C.Q.L.R., c. C-8.1.1, s. 41; An Act respecting the Compilation of Québec Laws and Regulations, C.Q.L.R., c. R-2.2.0.0.2; Regulations Act, C.Q.L.R., c. R-18.1, s. 15; Queen’s Printer Act, R.S.N.B. 2011, c. 214, ss. 3(2), 6(1), (3); Communications and Information Act, R.S.N.S. 1989, c. 79, ss. 6, 7(1); Regulations Act, R.S.N.S. 1989, c. 393, s. 4(1); Queen’s Printer Act, R.S.P.E.I. 1988, c. Q-1, s. 4(1); Statutes and Subordinate Legislation Act, R.S.N.L. 1990, c. S-27, ss. 7, 8(1), 11(1); Public Printing Act, R.S.Y. 2002, c. 180, s. 5; Regulations Act, R.S.Y. 2002, c. 195, s. 3(1); Public Printing Act, R.S.N.W.T 1988, c. P-15, ss. 2, 3; Statutory Instruments Act, R.S.N.W.T. 1988, c. S-13, s. 9(1); Public Printing Act, R.S.N.W.T. (Nu.) 1988, c. P-15, ss. 2, 3; Statutory Instruments Act, R.S.N.W.T. (Nu.) 1988, c. S-13, s. 1(1).
[42] Most provinces and territories also exempt standards incorporated by reference into regulations from the usual publication requirements that apply to regulations: British Columbia Regulations Act, s. 1 (definition of “regulation”); Alberta Regulations Act, para. 1(2)(d) (definition of “regulation”); Saskatchewan Regulations Act, 1995, s. 2 (definition of “regulation”); Manitoba Statutes and Regulations Act, para. 8(2)(b); Ontario Legislation Act, 2006, para. 62(4)(a) (by implication); Quebec Regulations Act, s. 16(1); Nova Scotia Regulations Act, para. 3(5)(c); Prince Edward Island Queen’s Printer Act, para. 4(1)(a) (by implication); Newfoundland and Labrador Statutes and Subordinate Legislation Act, para. 9(1)(e); Yukon Regulations Act, s. 1 (definition of “regulation”) (by implication); Northwest Territories Statutory Instruments Act, s. 9(3); Nunavut Statutory Instruments Act, s. 9(3).
[43] Some provinces and the territories also allow for reproduction of statutes and regulations (but not copyrighted material incorporated by reference in them) in a fashion analogous to that provided for in the Reproduction of Federal Law Order: British Columbia Queen’s Printer Licence (http://www.bclaws.ca/standards/2014/QP-License_1.0.html); Alberta (http://www.qp.alberta.ca/copyright.cfm); Saskatchewan (http://www.publications.gov.sk.ca/freelaw/index.cfm?fuseaction=content.display&id=78D82F52-0E92-4934-9C5521C6046079BF); Manitoba (https://www.gov.mb.ca/legal/mb_laws.html); Ontario (https://www.ontario.ca/page/copyright-information-c-queens-printer-ontario#section-1); Quebec (http://www.droitauteur.gouv.qc.ca/en/copyright.php); New Brunswick (http://www2.gnb.ca/content/gnb/en/departments/attorney_general/acts_regulations/content/disclaimer_and_copyright.html); Prince Edward Island (https://www.princeedwardisland.ca/en/information/executive-council-office/website-disclaimer-and-copyright-policy); Nova Scotia (https://nslegislature.ca/legal/copyright); Newfoundland and Labrador (https://www.assembly.nl.ca/CopyrightPrivacyStatement.aspx); Yukon Reproduction of Yukon Law Order, O.I.C. 2000/52; Northwest Territories (https://www.justice.gov.nt.ca/en/legislation/#gn-filebrowse-0:/); Nunavut (https://www.nunavutlegislation.ca/).
[44] Alberta, Newfoundland and Labrador, Ontario and Yukon expressly require that the CSA Electrical Code, as amended, be made available to the public in some form: Safety Codes Act, R.S.A. 2000, c. S-1, s. 65(7); Public Safety Act, S.N.L. 1996, c. P-41.01, s. 34(4); Ontario Electrical Safety Code, s. 3; Ontario Legislation Act, 2006, s. 62(4); Yukon Electrical Protection Act Regulation, 1992, O.I.C. 1992/017, s. 19. There is seemingly no equivalent statutory requirement in the other provinces and territories.
II. The Decision Below
[45] With this background in mind, I turn now to review the decision of the Federal Court. In its Reasons, the Federal Court found that copyright subsisted in the 2015 version of the CSA Electrical Code, that the CSA owned that copyright and that Knight Co. could not rely on the defences of fair dealing or licence.
[46] The Federal Court began its analysis by considering the question of whether copyright subsisted in the 2015 version of the CSA Electrical Code. It discounted the CSA’s certificate of registration as presumptive evidence, viewing as suspicious the fact the 2015 registration had not occurred until three days after the commencement of the CSA’s application. However, the Federal Court did not mention the evidence that indicated that the CSA had likewise obtained a registration in 2012 with respect to the previous version of the CSA Electrical Code.
[47] Despite rejecting the certificate of registration, the Federal Court found that the CSA was entitled to the presumptions of ownership and validity created by paragraph 34.1(2)(a) of the Copyright Act, which provides that if the name of the author is indicated on the work in the usual manner, there is a presumption that the author owns valid copyright. In so concluding, the Federal Court did not discuss the fact that the CSA is a corporate entity and that contributions to the 2015 CSA Electrical Code were made by individual members of the committee, the majority of whom were employees of organizations other than the CSA.
[48] The Federal Court then moved on to reject the appellants’ arguments that the CSA did not exercise sufficient skill and judgment in compiling the works of others and that the Code is not sufficiently original to justify copyright protection, holding that the CSA Electrical Code “does in fact involve significant skill and judgment”, concluding that considerable time and effort was expended to produce it.
[49] Next, the Federal Court rejected the appellants’ argument that the Crown owned the copyright by reason of the fact that the Code is incorporated by reference into provincial and federal statutes and regulations and the argument that public policy militated against law being copyrighted. In so concluding, the Federal Court referred to the fact that the CSA is independent of government and that the CSA Electrical Code is a voluntary standard that legislators incorporate by reference into law at their own discretion. In addition, the Federal Court referred to the above-mentioned statements from the Minister of Industry and concluded that there was no evidence that the federal Crown or any provincial Crown claimed copyright in the CSA Electrical Code. In concluding on this issue, the Federal Court stated that:
[…] in light of the fact that the CSA has undertaken significant effort and expense [to] produce and publish the CSA Code, it would be contrary to a purposive construction of the Copyright Act to strip the CSA of its rights in the 2015 CSA Code simply because certain provinces have incorporated it into law.
(Reasons, para. 40)
[50] Having found that copyright subsists in the 2015 Code, the Federal Court next considered whether the CSA owned that copyright. Since the CSA is a corporation, the appellants argued the CSA could own copyright only to the extent it had obtained valid assignments from the authors. The appellants invited the Federal Court to draw an adverse inference from the fact the only evidence of assignments adduced by the CSA was in the form of a general statement in the affidavit filed by a representative of the CSA. The Federal Court declined to draw the inference, noting that the CSA had obtained executed assignments from authors who contributed to improvements in the 2012 and 2015 editions, which evidence was provided to the appellants during discovery in the pending action before the Federal Court. The Federal Court thus agreed with the CSA that the appellants had failed to produce any credible evidence to dispute the CSA’s ownership.
[51] The Federal Court then turned to the question of whether the appellants had a valid defence. It first considered whether the appellants had a licence to reproduce the 2015 version of the CSA Electrical Code and rejected the appellants’ submission that the correspondence between the parties in the 1960’s amounted to a subsisting perpetual licence to reproduce the CSA Code, concluding that the letters (i) were addressed to a non-party, Peter Knight; (ii) did not purport to confer on Peter Knight the right to assign the permission to the appellants; (iii) pertained to a booklet made in 1969, not a copy-cat Code made in 2015; (iv) at best, provided a permission to quote from CSA’s 1969 Code, not copy the entirety of the 2015 Code while passing it off as the appellants’ work; and (v) the 1969 letters could not be read as a perpetual and non-revocable licence in light of the fact that the CSA provided express notice of termination in both 2007 and 2011.
[52] The Federal Court next considered whether the appellants could avail themselves of the defence of fair dealing and concluded that the exception could not apply because “[w]hen 100% of a work is copied, the dealing cannot be fair” (Reasons, para. 59). The Federal Court also found there was no merit to the argument that the Knight Co. version of the CSA Electrical Code was for educational purposes, as it was a competitive commercial undertaking by the appellants to compete with the 2015 version of the CSA Electrical Code. It therefore concluded that Knight Co. had infringed CSA’s copyright and granted the remedies detailed above.
III. The Issues in these Appeals
[53] Having outlined the foregoing background, I now move to detail the various arguments made by the parties in these appeals.
[54] The appellants first submit that the Federal Court erred in concluding that the CSA Electrical Code can be the subject of copyright. Because it is incorporated into various statutes and regulations, the appellants say that the CSA Electrical Code is law and, relying principally upon American case law, say that there cannot be any copyright in the law. The appellants also assert public policy reasons why CSA cannot own the copyright in the CSA Electrical Code, submitting that the rule of law requires that the Code be available to all Canadians. Closely connected to this argument, the appellants submit, in the alternative, that if the CSA Electrical Code may be the subject of copyright, such copyright belongs to the Crown, either by virtue of the Crown’s prerogative rights and privileges outside the Copyright Act or by virtue of section 12 of the Copyright Act, which provides that:
Without prejudice to any rights or privileges of the Crown, where any work is, or has been, prepared or published by or under the direction or control of Her Majesty or any government department, the copyright in the work shall, subject to any agreement with the author, belong to Her Majesty and in that case shall continue for the remainder of the calendar year of the first publication of the work and for a period of fifty years following the end of that calendar year.
Sous réserve de tous les droits ou privilèges de la Couronne, le droit d’auteur sur les œuvres préparées ou publiées par l’entremise, sous la direction ou la surveillance de Sa Majesté ou d’un ministère du gouvernement, appartient, sauf stipulation conclue avec l’auteur, à Sa Majesté et, dans ce cas, il subsiste jusqu’à la fin de la cinquantième année suivant celle de la première publication de l’œuvre.
[55] The appellants further say that copyright cannot subsist in the 2015 CSA Electrical Code because it lacks the originality necessary for copyright, is a collaborative product, created through a consensus process more analogous to a legislative committee than an individual author and is, as law, “a matter of fact and evidence to be determined by the Judge” and, accordingly, cannot be copyrighted as copyright cannot apply to facts (appellants’ memorandum of fact and law, at paras. 98-103).
[56] In response to these arguments, the CSA submits that the appellants did not raise these arguments in their notice of appeal and are therefore foreclosed from making them. Subsidiarily, the CSA contends that the American case law relied upon by the appellants is inapplicable in Canada, that copyright in this country is a creature of statute and that, under section 5 of the Copyright Act, the CSA Electrical Code is capable of being the subject of copyright. The CSA also says that Crown prerogative does not extend to the CSA Code, underscoring the position taken by the federal Minister of Industry. As for section 12 of the Copyright Act, the CSA asserts that the CSA Electrical Code was not prepared under the direction or control of the Crown and therefore submits that the section is inapplicable.
[57] The ap