Canadian Standards Ass'n v. P.S. Knight Co.

649 F.Supp.3d 334

CANADIAN STANDARDS ASSOCIATION, Plaintiff-Counterdefendant, v. P.S. KNIGHT CO., LTD., PS Knight Americas, Inc., and Gordon Knight, Defendants-Counterplaintiffs.

Case No. 1:20-CV-1160-DAE

United States District Court, W.D. Texas, Austin Division

Signed January 4, 2023

Elizabeth G. Myers, Nicole L. Williams, Thompson Coburn LLP, Dallas, TX, Katherine E. Colvin, Pro Hac Vice, Michael A. Parks, Pro Hac Vice, Thompson Coburn LLP, Chicago, IL, for Plaintiff-Counterdefendant.

James R. Gourley, Pro Hac Vice, Vincent J. Allen, Carstens, Allen & Gourley, LLP, Plano, TX, for Defendants-Counterplaintiffs.

ORDER GRANTING PLAINTIFF'S MOTION FOR SUMMARY JUDGMENT, DENYING DEFENDANTS' MOTION FOR SUMMARY JUDGMENT, AND MOOTING PLAINTIFF'S MOTION TO STRIKE

David Alan Ezra, Senior United States District Judge

Before the Court are three motions. The first two are cross-motions for summary judgment. On May 18, 2022, Defendants P.S. Knight Co. Ltd., PS Knight Americas, Inc., and Gordon Knight (collectively, "Defendants") filed a Motion for Summary Judgment of Unenforceability and Noninfringement of Copyright. (Dkt. # 62.) Also on May 18, 2022, Plaintiff Canadian Standards Association ("Plaintiff" or "CSA") filed a Motion for Summary Judgment. (Dkt. # 63.) Both parties timely filed a Response and a Reply in Opposition to the other's motion.¹ (Dkts. ## 65, 66, 68, 69.) The Court finds these matters suitable for disposition without a hearing, and, after careful consideration of the filings both in support of and in opposition to summary judgment, the Court—for the reasons that follow—GRANTS Plaintiff's Motion for Summary Judgment in its entirety. (Dkt. # 63.) The Court DENIES Defendants' Motion for Summary Judgment. (Dkt. # 62.)

The third motion before the Court is Plaintiff's Motion to Strike Defendants' Jury Demand. (Dkt. # 61.) Because this Order Granting Plaintiff's Motion for Summary Judgment ends the liability questions in the case, the Motion to Strike is hereby DENIED AS MOOT. (Dkt. # 61.)

BACKGROUND

CSA is a Canadian non-profit corporation that develops over 3,000 voluntary standards and codes in Canada. (Dkt. # 31 ¶ 2.) In particular, CSA has a long history of writing electrical, propane storage and handling, and oil and gas pipeline standards. (Id. ¶ 3-5.) CSA has been awarded Canadian copyright registrations for its standards, including the seven which are at issue in this case (collectively, "CSA's Copyrighted Works"):

1. The Canadian Electrical Code (the "CEC") (versions published in 2015, 2018, 2021);

2. The Propane Storage and Handling Code (versions published in 2015 and 2020); and

3. The Oil and Gas Pipeline Systems Code (versions published in 2015 and 2019).

(CSA Appx. at 151-274.)² CSA's Copyrighted Works are voluntary codes for adoption and enforcement by regulatory authorities. (CSA Appx. at 280.) Accordingly, parts of the CSA's Copyrighted Works have been incorporated by reference into local and federal regulations and statutes in Canada. (CSA Appx. at 281, 288-89, 291, 442-46; Dkt. # 62-1 ("Knight Appx.") at 127, 134.)

Gordon Knight is the president and sole shareholder of Canadian company P.S. Knight Co. ("PSK Canada") and sole corporate director of American company P.S. Knight Americas, Inc. ("PSK Americas"). (CSA Appx. at 456-66.) Gordon Knight also operates a website known as "Deep 6 Project," previously known as "restorecsa.com," that discusses CSA and the copyright litigation between Defendants and CSA. (CSA Appx. at 460-61; see also Gordon Knight, Deep 6 Project, deep6diaries.com).

In 1985, Gordon Knight's father, Peter Knight, published the first Electrical Code Simplified book, which included references with attribution to the CEC. (Dkt. # 31 ¶ 69.) The same year, Peter Knight incorporated PSK Canada. (Id.) CSA alleges that over time, Peter Knight's Electrical Code Simplified transformed from an annotated, shorter version of the CEC to a more exact replica of the CEC. (Id. ¶ 71-72.) CSA attempted to acquire Peter Knight's business, but negotiations broke down in 2005. (Id. ¶ 73.) Subsequently, CSA alleges that it wrote a letter telling Peter Knight that he needed to cease replicating the CEC. (CSA Appx. at 585.) CSA alleges it also issued a similar letter to PSK Canada in 2011, once Peter Knight had sold PSK Canada to Gordon Knight. (Id.) The parties' decade-long legal battle began a few years later.

In 2012, CSA brought a copyright action in Canadian federal court against Peter Knight, Gordon Knight, and PSK Canada, alleging that the Electrical Code Simplified infringed the CEC.³ (CSA Appx. at 627.) Just after CSA filed the 2012 action, Gordon Knight launched "Restore CSA," now known as "Deep 6 Project," a website in which he authored articles and blogs about the copyright litigation between CSA and Defendants. (CSA Appx. at 460, 469, 669.) In response, CSA filed its second suit in Canadian court against PSK Canada and Gordon Knight in 2015, alleging defamation. See Canadian Standards Association v. P.S. Knight Co. Ltd., 2015 ONSC 7980 (CanLII). PSK Canada and Gordon Knight then threatened to sell "essentially an identical copy" of CSA's 2015 CEC, and CSA filed a suit for copyright infringement based on CSA's copyright in the 2015 CEC. (CSA Appx. at 586.) The Canadian trial court ruled in favor of CSA, holding that:

1) CSA owns a valid copyright under Canadian law in the 2015 CEC;

2) Defendants presented no valid evidence to support their defense that Peter Knight was a co-author of the 2015 CEC;

3) Defendants did not have a license to reproduce or distribute the 2015 CEC; and

4) Defendants infringed CSA's copyright in the 2015 CEC.

(CSA Appx. at 580-612.) The Canadian court enjoined PSK Canada and Gordon Knight from reproducing, distributing, or selling any publication infringing on the 2015 CEC. (CSA Appx. at 580-612.) This judgment was affirmed on appeal on December 7, 2018. (CSA Appx. 275-441, 656.)

On June 17, 2020, Gordon Knight formed PSK Americas. (CSA Appx. at 672.) In a blog post titled "Knight's Code is Back!" and dated October 18, 2020, Gordon Knight described PSK Americas and its purpose:

Knight's Code is back. That's right folks, our release of the 2018-2021 Canadian Electrical Code, which the [Canadian] Court [r]uled against, is happily available once again . . . [s]o how can we re-release Knight's Code now? Well first "we," (that's me), incorporated a new entity in the US and transferred assets to that new entity. Knight's Code is re-released by PS Knight Americas Inc., from the US, and outside the direct jurisdiction of the [Canadian] Federal Court.

(CSA Appx. at 669.) Next, Gordon Knight applied for and registered a U.S. Copyright ("Knight's Copyright") under the name Canadian Electrical Code, for Knight's Canadian Electrical Code, Part One: 24^th Code Edition, 2018-2021 (IBSN 978-0-920312-64-3). (CSA Appx. at 681-83, 463-64.) The listed author of the work is Peter Slim Knight, the date of completion is 2018, and the date of publication is April 1, 2018. (CSA Appx. at 682-83.) Gordon Knight's October 18, 2020 blog post describes Knight's Copyright as being a copyright on the same document as the 2018 CEC copyrighted by CSA:

It turns out that [CSA] somehow forgot to register copyright over this document, even while it was under litigation in Canada . . . [and] didn't bother to lock down copyright in the US. So we did. As you read this, the Canadian Electrical Code is the private property of PS Knight Americas Inc. in the US. Can you just imagine the fuming at CSA headquarters as they read that last sentence? [I]t's only $60. Tell your friends!

(CSA Appx. at 669.) As of at least June 18, 2021, https://psknight.com/ offered the following works:

1. Knight's Canadian Electrical Code, Part One: 24^thCode Edition, 2018-2021 (hereinafter "Knight's 2018 CEC") (CSA Appx. at 576) ("2018 Legacy Code - 24^th Code Edition - Still available - Buy");

2. Knight's Canadian Electrical Code - 25^thEdition, 2021-2024 (hereinafter "Knight's 2021 CEC") (CSA Appx. at 576) ("Knight's Canadian Electrical Code contains the full [CEC] . . . all illustrations, explanations and descriptions therein are presented entirely and exactly as enacted by Governments.");

3. Knight's Propane Storage & Handling Code - 2015 Edition (hereinafter "Knight's 2015 Propane Code") (CSA Appx. at 578) ("[a]ll the Code at less than ½ the cost" of "CSA's Propane Storage & handling Code");

4. Knight's Oil & Gas Pipeline Systems Code - 2019 Edition (hereinafter "Knight's 2019 Oil & Gas Code") (CSA Appx. at 579) (advertising the product as "identical to other reproductions of this Code," and "Same Code - Different Price" as "CSA's Oil & Gas Pipeline Systems Code").

In a blog post titled "PS Knight Publishes Two New Codes" posted on May 24, 2021, Gordon Knight described his motivation for publishing Knight's 2015 Propane Code and Knight's 2019 Oil & Gas Code:

Every time the Civil Service financially harms PS Knight, we have to dream up ways to offset the damage. These new titles Knight's 2015 Propane Code and Knight's 2019 Oil & Gas Code] are an example of that. As the damage they cause increases, so our response is increased . . . I'll be blunt with you; the sum of financial damage to PS Knight over the course of the last decade of Civil Service litigations and harassment now exceeds $24MM. That's a lot to recover from but we're working on it. And we're just getting going . . . You can help us collect on that bill. These new books are a bargain . . . [b]uy lots of them. Buy them as presents, reference material, pieces of protest art.

(CSA Appx. at 763-64.)

In December of 2020, CSA requested the Canadian federal court issue an Order of Contempt against Defendants for:

"Resum[ing] reproduction, distribution and sales of infringing Knight Code publications through a newly incorporated entity, Knight Americas, contrary to the terms of the Judgment."

Canadian Standards Association v. PS Knight Co., Ltd. And Gordon Knight, 2021 FC 770. In a July 20,...