Canada: The Kick That Got The Ball Rolling: Copyright In Architectural Works Is Gaining Traction In Canada

Last Updated: January 31 2018
Article by Christie Bates

There are few cases in which a plaintiff has succeeded in a claim that its copyright in an architectural work has been infringed. Those plaintiffs that did succeed rarely recovered significant damages. However, in Lainco inc. c. Commission scolaire des Bois-Francs,1 the Federal Court awarded an unprecedented quantum of damages ($722,996) against a school board, its architectural firm, engineering firm and general contractor for copying the structural design of a neighbouring soccer complex. The court held that a building structure resulting from the simple arrangement of components can be copyrighted in and of itself, despite the author holding no copyright over the individual components of the design. This decision may signal an important change in the otherwise dormant field of architectural works in copyright law.

To understand the key points of the Lainco case, this article will review the history of architectural works in Canadian copyright law. In a sister article, What You Don't Know About Copyright in Buildings Could Cost You So Here's What You Need To Know, recommendations as to how parties in the building sphere can take proactive steps to protect themselves from engaging in intellectual property infringing activities, or in the alternative, set up the appropriate safeguards to guarantee the protection of valuable intellectual property assets.

The History of Canadian Copyright Protection of Architectural Works

At its core, copyright is the right of an author to make copies of her original work. An author of a copyrighted work is empowered to license use of her work, or commence an action for unauthorized use. Originality is the keystone of copyright, and the originality of the author's work must be proved, along with evidence of the fixation of the original idea, in order to establish a right.

Architectural works are defined as including any building or structure or any model of a building or structure.2 The definition of  "artistic work" includes not only architectural works, but also the plans and drawings prepared by the architect used to construct the building  or structure. For an architectural work to be original it is not necessary that the design elements be novel; what is necessary is that the way those elements are arranged to create the design must be the product of skill and judgment. Ordinarily, it is the architect,  and not the builder, who has a primary claim to ownership of the copyright given that the copyright vests in the person who creates the drawings giving rise to the three-dimensional object.3

Prior to 1988,  the definition of "architectural work"  in the Copyright Act  required such a work to possess an identifiable "artistic quality or character" before copyright protection would be granted. Further, protection in architectural works of art expressly did not extend to processes or methods of construction (the appropriate field being patents). Since the 1988 amendments, it is no longer necessary to demonstrate an artistic character or design. Notwithstanding this lowered burden, however, only a handful of infringement cases have gone to court, and damages have often been far lower than the amount claimed.

Lainco case: Bend it like Lebel may have kick-started a new trend

Enter Lainco, shaker of the status quo. Here, the plaintiff, Lainco Inc., claimed copyright in the design, manufacture and erection of an indoor soccer stadium. The defendants, a school board, its architectural firm, engineering firm, and general contractor were found to have infringed copyright through copying  of the structural design itself, by supervising the actual construction of the complex, and by authorizing the work. Notably, prior to the construction of the building, Lainco had alerted the defendants of the potential infringement and had offered to enter a licensing agreement, but the defendants refused the offer and continued in their activities, thus leading to this action.

In his lengthy 150 page decision (available in French only) Justice Lebel made the following core points:

1. Copyright requires striking a balance between the protection of the copyrighted work with allowing the free flow of ideas in the public domain. It is essential that one be able to draw inspiration from the public domain without necessarily being found guilty of  infringing copyright.

2. Copyright only exists in original works. As originality is not defined in the Act, it is determined by the exercise of judicial discretion. The Supreme Court in CCH Canadian Ltd v. Law Society of Upper Canada4 clearly stated that it must be more than the result of a "mechanical" act, and  it is essential that there be evidence of skill, know-how, knowledge and the use of practical experience that allows one to evaluate or compare various possibilities to make a choice.

3. Since the 1988 amendments that removed the artistic character requirement for architectural works, courts should be more open to recognising copyright in this realm.

4. Based on the facts before the court (which included evidence of a site visit to the Lainco soccer complex where photos were taken), while the building was the simple product of well-known structural elements (such as Gerber beams, triangular trusses, X-Braces, and steel columns on the periphery of the building), it was the assembling of these elements to form the whole structure to meet the complex needs of the users that made the work "original". The intellectual contribution to the product was not purely mechanical, as it required discretion and judgement to make it both visually appealing and economical.

5. If arranging judicial decisions in a compilation meets the originality test under the Copyright Act (as was the case in CCH), it would be difficult to see how the combination of structural features to make an architectural work would not, even if the components chosen and put together are, hypothetically, without any particular artistic value, ordinary, or result in something that could be qualified as lacking in aesthetic value or contrary to the fashion of the day. Further, while utilitarian features of a copyrighted work are not typically actionable for infringement (pursuant to s.64.1(1)(a) of the Copyright Act), this exception cannot apply to architectural works which always incorporate core structural requirements (being security, performance, and durability). Otherwise, few architectural works, especially for building structures, would be afforded protection.

6. Having concluded copyright had been infringed, the court turned to the attribution of liability amongst the defendants. Justice Lebel concluded that all defendants were liable, for either having directly reproduced an important part of the complex or the construction plans, or for simply having approved the construction of the building. Of note, the court underlined that a lack of intent to engage in copyright infringement is not a defence.

7. The court also concluded that despite the architect's claim of limited involvement in the project, it was nevertheless liable. The architect was unable to refute liability despite its limited involvement in the project because the court held that it was the only one of the defendants able to understand, gather and coordinate all of the activities necessary for the realization of the project including the erection of the building and management of the construction site. Therefore, despite its absence of direct input, its role as a coordinator  was sufficient to ground its liability.

8. Turning to damages, in applying s.35(1) of the Copyright Act, Justice Lebel awarded Lainco nearly three quarters of a million dollars for copyright infringement. Intriguingly, Lainco sought damages for the profits it would have earned had it been hired to create and erect the structure (less the profit it had gained from the projects it had been able to complete during that period). It also sought $50,000 in punitive and exemplary damages (which were not granted). In awarding this amount, the court noted that the goal of restitution in this context is not to indemnify the plaintiff but rather to prevent the unjust enrichment of the defendant.

Closing Remarks 

This case is notable for three reasons:

First, that the Federal Court is increasingly willing to grant copyright in building structures means that key players will need to revisit their agreements to better understand who owns the copyright, what restrictions exist on the copyright, and consider creating a framework as to how the copyright will be managed (for tips, click here).

Second, that this decision comes from a Federal Court judge in Québec, and largely cites Québec jurisprudence, reinforces that the Canadian judicial landscape requires a close understanding of geographic tendencies, despite the case being heard at the Federal level.

Lastly, this case showcases that although the amendments to the architectural works portion of the Copyright Act occurred in 1988, it is only in the past few years that we have seen a movement towards enforcing greater protection. This underscores the importance of staying abreast of current jurisprudence, and not simply relying on past practice and tried and true precedents.

As a footnote, it is worth noting that there is a school of thought that suggests a difference in the way that common law lawyers and civil law lawyers think about the foundations of copyright law, which is perhaps reflected in the respective titles of the Act in English and French.  While it is the Copyright Act in English (that is, the right to control the making of copies), in French it is the Loi sur le droit d'auteur (or the law on the rights of the author). There is a sense in the reasons of Justice Lebel that the manner in which the defendants copied the design was an affront to Lainco's rights as owner of the copyright.

Footnotes

1 Lainco inc. c. Commission scolaire des Bois-Francs, 2017 CF 825.

2 Copyright Act, R.S.C., 1985, c. C-42, s.2.

3 Hay v. Sloan, [1957] O.W.N. 445, at para 7; Meikle v. Maufe, [1941] 3 All E.R. 144 at 148.

4 CCH Canadian Ltd v. Law Society of Upper Canada, [2004] 1 S.C.R. 339.

The foregoing provides only an overview and does not constitute legal advice. Readers are cautioned against making any decisions based on this material alone. Rather, specific legal advice should be obtained.

© McMillan LLP 2018

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Christie Bates
Similar Articles
Relevancy Powered by MondaqAI
Norton Rose Fulbright Canada LLP
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Norton Rose Fulbright Canada LLP
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions