Twentieth Century Fox has achieved a $10.5 million victory
against Mr. Hernandez, the former operator of two Internet websites
dedicated to streaming episodes of the Simpsons and Family Guy
television shows. It was alleged that the defendant had illegally
copied over 700 episodes of the programs from television broadcasts
and uploaded them to the Watch The Simpsons Online and Watch Family
Guy Online websites where the episodes were made available to the
public for streaming.
This case is a perfect illustration that statutory damages can
be a powerful tool for copyright owners in Canada. Proving actual
damages in a copyright infringement case can be difficult,
particularly where the defendant is uncooperative and claims not to
have any sales records. Section 38.1 of the Canadian Copyright
Act provides that copyright owners may elect to recover
statutory damages instead of lost profits and damages suffered as a
result of activities of infringers. Where the infringements are
carried out for a commercial purpose, the Act provides for a
maximum award of $20,000 in respect of all infringements relating
to each individual work involved in the proceedings. In this case,
the maximum statutory damages would have been more than $14
million. It was alleged that the defendant site operator profited
from sales of advertising and promotional items related to the
television shows, and given the extensive number of episodes
uploaded and shared by him, the court awarded $10 million in
Generally a plaintiff can only obtain an injunction prohibiting
the defendant from repeating the infringements specifically
addressed in the lawsuit. However, section 39.1 of the
Copyright Act permits the court to grant a "wide
injunction" restraining infringement of not only the works in
issue but any other works owned by the plaintiff. In this case, the
court granted a wide injunction against the defendant prohibiting
him from any further infringing dealings with the works involved in
the proceedings as well as any other works in respect of which
Twentieth Century Fox owns copyright, including works which come
into existence after the date of the judgment.
The court also found that the defendant's repeated, blatant
and intentional misconduct merited an award of punitive damages to
serve as deterrence and punishment for such illegal activities. The
court ordered an award of $500,000 in this respect. This is one of
the larger statutory damage awards a copyright owner has obtained
in Canada and no doubt sends a strong message to those who build
businesses around illegal file sharing in Canada.
The foregoing provides only an overview. Readers are
cautioned against making any decisions based on this material
alone. Rather, a qualified lawyer should be consulted.
The Federal Court dismissed a motion by Apotex seeking particulars from Allergan's pleading relating to the prior art, inventive concept, promised utility and sound prediction of utility of the patents at issue.
Last year we saw the Canadian Courts release trademark decisions that granted a rare interlocutory injunction, issued jailed sentences for failure to comply with injunctive relief, grappled with trademark and internet issues...
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).