Until 1891, the United States was, by law, a copyright piratical nation. Foreign owners of copyrights could not enforce them in the United States. Since 1891, the United States has allowed foreign owners of copyrights to enforce their copyrights in the United States.
Why then did the Fifth Circuit refuse to enforce Canadian copyrights that had already been enforced against the same defendant in Canada by permanent injunction and contempt?
The Canadian Standards Association develops industrial standards and codes. 40% of its standards and codes have been incorporated into Canadian law in one locality or another.
In 2015, Canadian Standards obtained an injunction in Canada forbidding Gordon Knight from infringing its copyright in an electrical code. In his own words, Mr. Knight later "fled the country" and started the same business in Texas, distributing his own versions of the Canadian Standards codes. In 2021, in Canada, Knight was held in contempt of court, permanently enjoined from infringing Canadian Standards' copyrights and certain codes and found liable for $175,000 in damages.
In 2020, Canadian Standards sued Knight in Texas, again claiming copyright infringement. The federal District Court for the Western District of Texas agreed with Canadian Standards, granting summary judgment and permanently enjoining Knight from infringing the codes that were the subject of the litigation.
Despite the fact that Knight was doing substantially the same business in the United States for which he had been found liable in Canada, and despite the fact that the American courts agreed that Canadian Standards had valid copyrights in the relevant codes, the Fifth Circuit reversed the injunction against Knight and ordered the case dismissed. Why?
Under the international treaty called the Berne Convention, foreign copyrights from signatory states are enforceable in the United States. However, the extent of protection that foreign copyrights receive in the United States is determined by United States law, not the law of the country where the copyright originates. Thus, Canadian copyrights receive the same protection - and are subject to the same defenses - as United States copyrights.
In the United States, if a copyrighted work, such as one of Canadian Standards' industrial codes, is adopted by a government body and copied into and made part of a law or regulation, the work may be copied without infringement. The fact, according to the Fifth Circuit, that the work has become law in another country does not matter.
It appears that Canada does not have the same rule under which the right to copy laws is an exception to copyright protection. However, the scope of protection of Canadian works in the United States is determined by United States law. Greater protection in Canada does not extend into the United States.
The Fifth Circuit did not discuss the fact that there was a permanent injunction against Knight in Canada, which was given no effect in the United States. This result, however, would necessarily follow from the fact that U.S. law controls the scope of protection in the United States; enforcing foreign injunctions giving greater protection would contravene that principle. Whether the monetary awards against Knight in Canada would be given comity and enforced against Knight in the United States was not discussed.
One judge dissented and would have affirmed. The dissenter took the view that enactment of a copyrighted work into law was an issue concerning the copyrightability of the work rather than the scope of protection. Since copyright validity is determined by the law of the country of origin, the dissenter would have held that Canadian law controlled that point and rejected the enactment-into-law defense.
Canadian Standards Association v. P.S. Knight Company, Limited, 2024 WL 3418717 (5th Cir. 7/16/24).
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