Protect your design: Recent developments in Canadian copyright law

19 January 2018

This article was originally published in the Canadian Consulting Engineer Magazine.

The Federal Court has recently confirmed that copyright protection for "architectural works", which includes architectural and structural engineering plans and constructed structures themselves, is alive and well in Canada. While it is said that 'imitation is the sincerest form of flattery', recent cases show that if imitation crosses the line into infringement, those involved in designing and constructing infringing architectural works may face serious consequences.

To qualify for copyright protection in Canada, a work must be "original". It cannot be a copy of an existing work, and must be the product of the "skill and judgment" of its author. The Copyright Act gives the owner of copyright the sole right to reproduce the work or any "substantial part" of the work, for the duration of the author's life plus 50 years. If another person produces or reproduces the work without permission during that time, they will be liable for copyright infringement.

In Canada, copyright cases involving architectural works are rare. As a result, the scope of protection and remedies for infringement has been uncertain. However, recent case law now provides useful guidance and sets a valuable precedent.

In September, the Federal Court released its decision in Lainco Inc. v Commission Scolaire Des Bois-Francs.[1] The plaintiff, Lainco Inc., a company specializing in the design and construction of steel structures, had previously designed and built the Artopex indoor soccer complex in Granby, Quebec. The Artoplex complex featured a steel structure which allowed for a distinctive interior look with an unobstructed ceiling and a more open design than conventional structures.

The defendants (a school board, engineering firm, architecture firm, and building contractor) had collaborated to design and build the Victoriaville complex, an indoor soccer complex in Victoriaville, Quebec, featuring a similar-looking steel structure.

Following a 10-day trial, the Court found that the defendants had infringed Lainco's copyright.

The defendants had raised various defences, including that: (1) Lainco's steel structure was not entitled to copyright protection as it consisted merely of an arrangement of well-known structural elements (various types of trusses, columns and beams) and did not require any special talent or judgment to design; and (2) Lainco's steel structure performed a utilitarian function and was not inherently protectable by copyright. The Court rejected these arguments and found that while the individual elements of Lainco's steel structure were not novel, and that any architectural work was to a degree functional or utilitarian, the overall design deserved copyright protection. The selection and arrangement of the various elements was found to have required significant "trial and error" testing and the exercise of skill and judgment on the part of Lainco's engineers.

The defendants had also argued that even if Lainco's steel structure was protected by copyright, the Victoriaville complex featured engineering differences which meant that it did not infringe. The Court rejected this argument noting that representatives of the defendant school board and engineering firm had admitted visiting and photographing the Artoplex complex prior to designing the Victoriaville complex, and that any differences between the two structures were insignificant.

The Court found all of the defendants responsible for the infringement, given their roles in producing infringing structural engineering and architectural plans, building the infringing structure, and authorizing and enabling these various acts.[2] The Court ordered the defendants to pay damages of over $700,000, based on profits Lainco would have earned had it won the call for tender for the Victoriaville complex.

Shortly after the Lainco decision was released, another case alleging copyright infringement of the design of a private residence in Toronto, Ontario was widely reported in the media.[3] In that case it was alleged that in designing and building a nearby residence, a defendant builder and architect had unlawfully copied exterior elements of the plaintiff's house design referred to as the "Strathearn Design". The case was ultimately settled before trial, with the parties agreeing to the issuance of a judgment by the Federal Court declaring that the Strathearn Design was protected by copyright. The Court also granted a permanent injunction prohibiting the builder and architect defendants from "reproducing without the Plaintiff's permission a substantial part of the Strathearn Design or a colourable imitation of it" in the future.

Together, these cases demonstrate that Canadian courts will recognize copyright in architectural works, and grant significant monetary awards and other remedies if copyright is infringed. As a result, structural engineers, architects, and all others involved in designing and constructing buildings and structures need to be aware both of their rights (as owners of copyright in the architectural works that they design and build) and to be cognizant of the rights of others (to avoid liability for infringement).

[1] Lainco Inc. v Commission Scolaire Des Bois-Francs et al, 2017 CF 825.

[2] As of the date this article was prepared, appeals to the Federal Court of Appeal have been filed by the various defendants which remain pending (Court File Nos. A-300-17, A-309-17, and A-310-17).

[3] Strathearn Consulting Inc. v Kirshenblatt et al (Court File No. T-1876-14).

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