Case 1:20-cv-01160-LY Document 47 Filed 02/09/22 Page 1 of 8
`
`
`
`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TEXAS
`AUSTIN DIVISION
`
`
`CANADIAN STANDARDS
`ASSOCIATION,
`Plaintiff
`
`
`
`v.
`
`P.S. KNIGHT CO., LTD., PS
`KNIGHT AMERICAS, INC., and
`GORDON KNIGHT,
`Defendants
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`
`
`
`
`
`Case No. 1:20-cv-01160-LY
`
`
`
`
`
`
`REPORT AND RECOMMENDATION
`OF THE UNITED STATES MAGISTRATE JUDGE
`
`
`
`TO: THE HONORABLE LEE YEAKEL
` UNITED STATES DISTRICT JUDGE
`
`Before the Court are Defendants’ Motion to Dismiss under Rule 12(b)(6) for Failure to State a
`
`Claim Upon Which Relief Can Be Granted, filed July 26, 2021 (Dkt. 33); Plaintiff Canadian
`
`Standards Association’s Opposition to Defendants’ Rule 12(b)(6) Motion to Dismiss the Amended
`
`Complaint, filed August 9, 2021 (Dkt. 40); and Defendants’ Reply to CSA’s Opposition to Motion
`
`to Dismiss, filed August 16, 2021 (Dkt. 41). The District Court referred the Motion to the
`
`undersigned Magistrate Judge for Report and Recommendation, pursuant to 28 U.S.C.
`
`§ 636(b)(1)(B), Federal Rule of Civil Procedure 72, and Rule 1(d) of Appendix C of the Local
`
`Rules of the United States District Court for the Western District of Texas. Dkt. 35.
`
`I. Background
`
`Plaintiff Canadian Standards Association (“Canadian Standards”) brings this action for
`
`copyright infringement against Defendants P.S. Knight Co., Ltd., PS Knight Americas, Inc., and
`
`Gordon Knight (collectively, “Defendants”) under the Berne Convention for the Protection of
`
`1
`
`

`

`Case 1:20-cv-01160-LY Document 47 Filed 02/09/22 Page 2 of 8
`
`Literary and Artistic Work (“Berne Convention”) and the United States Copyright Act. First Am.
`
`Complaint, Dkt. 31 ¶¶ 10, 150, 164, 178. Canadian Standards is a Canadian not-for-profit
`
`corporation that develops voluntary standards and codes. Id. ¶ 2. In 2015, 2018, and 2021,
`
`Canadian Standards registered copyrights in Canada on the 23rd, 24th, and 25th editions of the
`
`Canadian Electrical Code. Id. ¶ 7. In 2015 and 2020, Canadian Standards registered copyrights in
`
`Canada on the 11th and 12th editions of the Propane Storage and Handling Code. Id. ¶ 8. In 2015
`
`and 2021, Canadian Standards registered copyrights in Canada on the 7th and 8th editions of the
`
`Oil and Gas Pipeline Systems Code. Id. ¶ 9. The Canadian Electrical Code, Propane Storage and
`
`Handling Code, and Oil and Gas Pipeline Systems Code (collectively, the “Canadian Copyrighted
`
`Works”) have been incorporated by reference into several regulations and statutes in Canada, but
`
`not in the United States. Id. ¶ 2.
`
`Defendant P.S. Knight Co. Ltd. is a Canadian book publisher; its president and sole shareholder
`
`is Defendant Gordon Knight. Id. ¶¶ 11, 23. In 2016, P.S. Knight Co. published in Canada an
`
`identical copy of Canadian Standards’ 2015 Canadian Electrical Code titled “Knight’s Canadian
`
`Electrical Code, Part One.” Id. ¶ 11. P.S. Knight Co. also distributed Canadian Standard’s 2018
`
`edition under the same title. Id. In 2019, Canadian Standards obtained a final judgment and
`
`injunction in Canada against P.S. Knight Co. based on its unauthorized publication of its Canadian
`
`Electrical Code. Id.
`
`P.S. Knight Co. and Knight then formed a business entity in the United States, PS Knight
`
`Americas Inc. (“PSK Americas”), a Texas corporation. Id. ¶¶ 13. On September 1, 2020,
`
`P.S. Knight Co. and PSK Americas obtained U.S. Copyright Registration No. TX0008892018
`
`covering the 2018 version of the Canadian Electrical Code (the “U.S. Copyright Registration”).
`
`2
`
`

`

`Case 1:20-cv-01160-LY Document 47 Filed 02/09/22 Page 3 of 8
`
`Id. ¶¶ 13, 33. Defendants sell copies of the 2018 Canadian Electrical Code in the United States
`
`through their websites without Canadian Standards’ consent. Id. ¶ 34.
`
`On November 20, 2020, Canadian Standards filed suit against Defendants, alleging that they
`
`infringed its copyrights in the Canadian Electrical Code. Dkt. 1. Defendants then began
`
`distributing copies of the following works through their websites without Canadian Standards’
`
`consent: (1) the 2015 and 2020 versions of the Propane and Handling Code, under the title
`
`“Knight’s Propane Storage & Handling Code”; (2) the 2015 and 2019 versions of the Oil and Gas
`
`Pipeline Systems Code, under the title “Knight’s Oil & Gas Pipeline Systems Code;” and (3) the
`
`2021 version of the Canadian Electrical Code, under the title “Knight’s Canadian Electrical Code,
`
`Part One, 2021-2024.” Dkt. 31 ¶¶ 14-16, 36-39. Canadian Standards subsequently amended its
`
`complaint to add new copyright infringement claims related to those works.
`
`Canadian Standards seeks damages for copyright infringement, an injunction against further
`
`infringement, and declaratory relief. Id. ¶ 19. Canadian Standards requests declarations that
`
`Defendants (1) fraudulently obtained the U.S. Copyright Registration, rendering it invalid; and
`
`(2) own no copyright in any version of the Canadian Copyrighted Works. Id. Defendants move to
`
`dismiss of Canadian Standards’ copyright infringement claim for failure to state a claim.
`
`II. Legal Standard
`
`Rule 12(b)(6) allows a party to move to dismiss an action for failure to state a claim on which
`
`relief can be granted. In deciding a Rule 12(b)(6) motion to dismiss for failure to state a claim, the
`
`court accepts “all well-pleaded facts as true, viewing them in the light most favorable to the
`
`plaintiff.” In re Katrina Canal Breaches Litig., 495 F.3d 191, 205 (5th Cir. 2007) (citation
`
`omitted). The Supreme Court has explained that a complaint must contain sufficient factual matter
`
`“to state a claim to relief that is plausible on its face.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009)
`
`3
`
`

`

`Case 1:20-cv-01160-LY Document 47 Filed 02/09/22 Page 4 of 8
`
`(quoting Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007)). “A claim has facial
`
`plausibility when the plaintiff pleads factual content that allows the court to draw the reasonable
`
`inference that the defendant is liable for the misconduct alleged.” Iqbal, 556 U.S. at 678.
`
`While a complaint attacked by a Rule 12(b)(6) motion to dismiss does
`not need detailed factual allegations, a plaintiff’s obligation to provide
`the grounds of his entitlement to relief requires more than labels and
`conclusions, and a formulaic recitation of the elements of a cause of
`action will not do. Factual allegations must be enough to raise a right
`to relief above the speculative level, on the assumption that all the
`allegations in the complaint are true (even if doubtful in fact).
`
`Twombly, 550 U.S. at 555 (cleaned up). In determining whether a plaintiff’s claims survive a
`
`Rule 12(b)(6) motion to dismiss, the factual information to which the court addresses its inquiry
`
`is generally limited to (1) the facts set forth in the complaint, (2) documents attached to the
`
`complaint, and (3) matters of which judicial notice may be taken under Federal Rule of Evidence
`
`201. Walker v. Beaumont Indep. Sch. Dist., 938 F.3d 724, 735 (5th Cir. 2019).
`
`A. Berne Convention
`
`III. Analysis
`
`The Berne Convention guarantees certain minimum protections for authors of copyrighted
`
`works in its member states. Golan v. Holder, 565 U.S. 302, 308 (2012) (citing 828 U.N.T.S. 221,
`
`July 24, 1971 (originally signed Sept. 9, 1886)). The United States “became party to the Berne’s
`
`multilateral, formality-free copyright regime in 1989.” Id. at 309. In compliance with the Berne
`
`Convention, the Copyright Act grants foreign authors co-extensive rights with domestic authors,
`
`including the right to sue for copyright infringement. 17 U.S.C. §§ 104, 1203; see also Jaso v.
`
`Coca Cola Co., 435 F. App’x 346, 352 n.4 (5th Cir. 2011) (stating that “published works authored
`
`by Berne nationals and domiciliaries are protected under U.S. copyright law” (quoting 1 MELVILLE
`
`B. NIMMER & DAVID NIMMER, NIMMER ON COPYRIGHT § 5.07[B] (2011)).
`
`4
`
`

`

`Case 1:20-cv-01160-LY Document 47 Filed 02/09/22 Page 5 of 8
`
`Canadian Standards alleges that its Canadian Copyrighted Works were created and published
`
`in Canada, a member state protected under the Berne Convention. Dkt. 31 ¶¶ 2-9. The Berne
`
`Convention therefore applies to Canadian Standards’ works.
`
`B. Copyright Infringement
`
`Defendants argue that Canadian Standards cannot state a claim for copyright infringement
`
`because the Canadian Copyrighted Works have no copyright protection in the United States.
`
`Defendants contend that the Canadian government’s adoption of the Canadian Electrical Code, the
`
`Propane Storage and Handling Code, and the Oil and Gas Pipeline Systems Code precludes any
`
`claim of copyright in the works under the government edicts doctrine. Canadian Standards asserts
`
`that it holds valid, foreign copyrights on which it can seek relief for infringement in the United
`
`States under the Berne Convention.
`
`To state a claim for direct copyright infringement under the Copyright Act, a plaintiff must
`
`show (1) ownership of a valid copyright and (2) copying of constituent elements of the plaintiff’s
`
`work that are original. Baisden v. I’m Ready Prods., Inc., 693 F.3d 491, 499 (5th Cir. 2012). For
`
`foreign works, copyright ownership is determined by the law of the country in which the work is
`
`created, and infringement is governed by the law where the infringement took place. See Alameda
`
`Films SA de CV v. Authors Rights Restoration Corp., 331 F.3d 472, 476 (5th Cir. 2003) (addressing
`
`plaintiffs’ rights in Mexican films under Mexican copyright law); Saregama India Ltd. v. Mosley,
`
`635 F.3d 1284, 1290 (11th Cir. 2011) (“Initial ownership of a copyrighted work is determined by
`
`the laws in the work’s country of origin.”) (citation omitted); Edmark Indus. SDN. BHD. v. S. Asia.
`
`Int’l (H.K.) Ltd., 89 F. Supp. 2d 840, 843 (E.D. Tex. 2000) (citing Itar-Tass Russian News Agency
`
`v. Russian Kurier, Inc., 153 F.3d 82 (2d Cir. 1998)). Proof of U.S. registration is not a prerequisite
`
`to suit if the work originated in a country that is a signatory to the Berne Convention. Edmark, 89
`
`5
`
`

`

`Case 1:20-cv-01160-LY Document 47 Filed 02/09/22 Page 6 of 8
`
`F. Supp. 2d at 844 n.1; see also 17 U.S.C. § 411(a) (requiring that only a United States work be
`
`registered or preregistered before a civil action for infringement can be instituted); Fourth Est.
`
`Pub. Benefit Corp. v. Wall-Street.com, 139 S. Ct. 881, 891 (2019) (stating that Congress removed
`
`§ 411(a) registration requirement for foreign works to comply with the Berne Convention). A party
`
`relying on the registration exemption must sufficiently allege that the works are not United States
`
`works within the meaning of Section 101 of the Copyright Act. DigitAlb, Sh.a v. Setplex, LLC, 284
`
`F. Supp. 3d 547, 555 (S.D.N.Y. 2018).
`
`Defendants contest only the first element of Canadian Standards’ copyright infringement
`
`claim: ownership of a valid copyright. Defendants contend that, because “[n]o one can own the
`
`law” in the United States, Canadian Standards cannot hold a copyright in model codes adopted by
`
`the Canadian government. Dkt. 33 at 1. Defendants rely on cases in which courts in the United
`
`States have found no copyright protection for works created by U.S. government officials in the
`
`course of their official duties or works adopted as law by U.S. jurisdictions. See Georgia v.
`
`Public.Resource.Org, Inc., 140 S. Ct. 1498, 1508 (2020) (stating that copyright does not vest in
`
`works created by U.S. judges and legislators in the course of their judicial and legislative duties);
`
`Veeck v. S. Bldg. Code Congress Int’l, Inc., 293 F.3d 791, 796 (5th Cir. 2002) (finding that building
`
`codes adopted by Texas municipalities are not copyrightable); Int’l Code Council, Inc. v. UpCodes,
`
`Inc., No. 17 Civ. 6261 (VM), 2020 WL 2750636, at *6 (S.D.N.Y. May 27, 2020) (finding that
`
`building codes adopted into law by U.S. jurisdictions are in the public domain).
`
`As stated above, copyright ownership is determined by the law of the country in which the
`
`work is created – here, Canada. Defendants provide no authority that Canada has an analogous
`
`government edicts doctrine that would affect Canadian Standards’ ownership rights in Canada. As
`
`6
`
`

`

`Case 1:20-cv-01160-LY Document 47 Filed 02/09/22 Page 7 of 8
`
`the Canadian appellate court in the parties’ previous litigation stated, “American precedents
`
`regarding the lack of copyright in the law are of no relevance in Canada.” Dkt. 31-11 ¶ 70.
`
`Applying the elements articulated above, Canadian Standards has alleged facts sufficient to
`
`state a claim for copyright infringement. First, Canadian Standards alleges that it owns valid
`
`copyrights in the Canadian Copyrighted Works. Dkt. 31 ¶¶ 147, 161, 175. Canadian Standards
`
`alleges that the Canadian Copyrighted Works were created and published in Canada. Id. ¶¶ 2-6. It
`
`further alleges that it sought and received Canadian copyright registrations from the Canadian
`
`government for the works. Id. ¶¶ 7-9. Canadian Standards also alleges that it is exempt from U.S.
`
`registration requirements under 17 U.S.C. § 411 because the Canadian Copyrighted Works are
`
`foreign works. Id. ¶¶ 146, 160, 174. Finally, Canadian Standards alleges the Defendants infringed
`
`its copyrights in the Canadian Copyright Works “by reproducing, publicly displaying, publishing
`
`and/or distributing unauthorized copies and/or derivatives” of the works in the United States. Id.
`
`¶¶ 149, 163, 177. Accordingly, Canadian Standards has stated a claim for copyright infringement.
`
`IV. Recommendation
`
`Based on the foregoing, the undersigned Magistrate Judge RECOMMENDS that the District
`
`Court DENY Defendants’ Motion to Dismiss under Rule 12(b)(6) for Failure to State a Claim
`
`Upon Which Relief Can Be Granted (Dkt. 33).
`
`It is FURTHER ORDERED that the Clerk remove this case from the Magistrate Court’s
`
`docket and RETURN it to the docket of the Honorable Lee Yeakel.
`
`V. Warnings
`
`The parties may file objections to this Report and Recommendation. A party filing objections
`
`must specifically identify those findings or recommendations to which objections are being made.
`
`The District Court need not consider frivolous, conclusive, or general objections. See Battle v.
`
`7
`
`

`

`Case 1:20-cv-01160-LY Document 47 Filed 02/09/22 Page 8 of 8
`
`United States Parole Comm’n, 834 F.2d 419, 421 (5th Cir. 1987). A party’s failure to file written
`
`objections to the proposed findings and recommendations contained in this Report within fourteen
`
`(14) days after the party is served with a copy of the Report shall bar that party from de novo
`
`review by the District Court of the proposed findings and recommendations in the Report and,
`
`except on grounds of plain error, shall bar the party from appellate review of unobjected-to
`
`proposed factual findings and legal conclusions accepted by the District Court. See 28 U.S.C.
`
`§ 636(b)(1); Thomas v. Arn, 474 U.S. 140, 150-53 (1985); Douglass v. United Servs. Auto. Ass’n,
`
`79 F.3d 1415, 1428-29 (5th Cir. 1996) (en banc).
`
`SIGNED on February 9, 2022.
`
`
`
` SUSAN HIGHTOWER
` UNITED STATES MAGISTRATE JUDGE
`
`8
`
`