Canada: Copyright Law Developments Of 2015

Last year saw a flurry of copyright activity, both from the Canadian courts, and legislators, ranging from the Supreme Court's update on the principle of technological neutrality to the Trans-Pacific Partnership (TPP). Below are our top picks for 2015's most significant copyright developments.

1. Technological Neutrality

Canadian Broadcasting Corp v SODRAC 2003 Inc, 2015 SCC 57

In 2015, the Supreme Court of Canada sent a clear message that technological neutrality is an important principle that guides interpretation of the Copyright Act ("the Act"). However, it does not override statutory language and purposive construction.

At issue was whether "broadcast-incidental" copies, (i.e. temporary copies that current broadcasting technology renders necessary in the course of broadcasting a work to the public) engage the reproduction right under the Act. If so, how are these copies to be valued in determining compensation to copyright holders? In 2012, the Copyright Board held that CBC had to pay additional royalties for broadcast-incidental copies to the copyright collective, SODRAC, because these copies engaged the reproduction right under s. 3(1)(d) of the Act. The Federal Court of Appeal upheld that broadcast incidental copies required a separate licence. The CBC appealed to the Supreme Court of Canada.

The majority of the Supreme Court affirmed that broadcast-incidental copies engaged a reproduction right and were subject to a separate royalty payment from that covering the broadcast activity itself. After extensive discussion about the nature and importance of technological neutrality, the majority also held that the Board did not adequately consider this principle or copyright balance in setting the value of CBC's broadcast-incidental copies. It remitted the matter of valuation back to the Board.

In her strong dissent, Justice Abella adopted a functional approach to technological neutrality, finding that, broadcast-incidental copies do not engage the reproduction right. She criticized the majority's "literal" approach to statutory interpretation, noting that it effectively penalized broadcasters for implementing technological advancements by creating extra liability under the Act for incidental activities. Although both the majority and minority stressed the importance of technological neutrality, the majority's decision has significant implications for valuation of licensing and royalty fees.

2. Procedural Fairness

Netflix Inc v SOCAN, 2015 FCA 289

In 2014, Netflix applied to the Federal Court of Appeal for Judicial Review of the decision issued by the Copyright Board concerning proposed SOCAN royalties. In 2012, the Board certified a tariff agreement for audiovisual webcasts for the period 2007-2013. The original proposed tariff did not charge users fees for free trials. Subsequently, the Copyright Board invited parties to make submissions in respect of a revised agreement, not published in the Canada Gazette, that included provisions for extra royalties during free trials. As Netflix was not a party to the original proceeding, it was not invited to participate in the process. Since it offered free trials, however, Netflix made submissions to the Board in opposition, arguing that its free trials were fair dealings and should not be subject to royalties. Ultimately, the Board certified the settlement tariff with payments for free trials without regard to Netflix's submissions.

On Appeal, Netflix alleged the Board violated its right to procedural fairness by refusing to allow Netflix to provide information with respect to fair dealing and technological neutrality. The Court of Appeal reviewed the Board's certification process on the standard of correctness. It set aside the Board's decision insofar as it pertained to royalties for free trials and returned it for redetermination. The Court concluded that Netflix should be given the opportunity to put its case forward since the tariff provision opposed by Netflix arose during the settlement discussions and was not in the original proposed tariff.

3. Copyright and the Internet

Red Label Vacations Inc (redtag.ca) v 411 Travel Buys Limited (411travelbuys.ca), 2015 FC 19, affirmed 2015 FCA 29

The plaintiff, Red Label Vacations, operated a travel business that offered online travel information services and bookings through its website, redtag.ca. Red Label alleged that the defendant, 411 Travel Buys', website infringed the copyright in metatags of redtag.ca. The Federal Court dismissed Red Label's claims. Although it found that 411 Travel copied metatags from Red Label's website, copyright did not subsist in the metatags, which were merely the operation of an algorithm, lacking skill or judgement. As such, the metatags failed to meet the "originality" threshold required to trigger copyright protection. Moreover, even if copyright could subsist in the metatags, there was no substantial copying. The Federal Court further held that the reproduction of metatags was inadvertent and constituted innocent infringement. In December 2015, the Federal Court of Appeal upheld the trial judge's decision but noted that it must be read in light of the specific facts before the trial judge. Consequently, copyright infringement claims from copying metatags might be successfully asserted in the future. (This case was also covered in the "Top Trademark Cases from the Canadian Courts in 2015" available here).

4. Evidence

Canadian Copyright Licensing Agency (Access Copyright) v Alberta, 2015 FCA 268

Access Copyright brought an application for judicial review to quash the Copyright Board's decision setting certain royalties to be collected for the reproduction of works in Canada by employees of provincial and federal governments. Pursuant to Rule 317 of the Federal Courts Rules, Access Copyright requested the materials that were before the Board. The Board rejected this request. Subsequently, Access Copyright included the material it purported was before the Board into its application record without providing a covering affidavit. The employees brought a motion to remove that material.

The Federal Court of Appeal concluded that Access Copyright should have served an affidavit explaining that the material was before the Board when it made its decision. Although, an innocent error, the employees were denied their right to cross-examine. The Court rejected the respondents' submission that Access Copyright should be barred from including an affidavit appending the materials in the application record and held that the impugned material should be struck from the record. However, Access Copyright could still serve an affidavit appending the materials that were before the Board.

5. Costs Awards and Norwich Orders

Voltage Pictures LLC v John Doe and Jane Doe, 2015 FC 1364

In 2014, Voltage Pictures LLC, brought a motion under Rule 238 of the Federal Courts Rules seeking a Norwich Order against internet service provider, TekSavvy, to produce the names and addresses of subscribers associated with 1,140 IP addresses that Voltage identified as engaging in copyright infringement of the film "The Hurt Locker" through illegal file sharing. TekSavvy decided that it was appropriate to notify the affected subscribers of the pending proceedings and notified more than 200,000 of its subscribers. The notice generated a high volume of inquiries and administrative costs for TekSavvy. TekSavvy sought to recover these costs, which it assessed to be at $321,277.

The Prothonotary issued a costs order of $21,577.50. On appeal, the Federal Court awarded TekSavvy an additional $11,822.50. It held that TekSavvy had no reasonable basis to give notice of the pending motion to all 200,000 subscribers, so the costs arising out of these activities could not be recovered. However, the Prothonotary erred in failing to consider all of TekSavvy's legal costs and disbursements, which the Court cited as reason to adjust the costs award.

6. Recovering Tariff Payments

Rogers Communications Partnership et al v SOCAN, 2015 FC 286, reversed in part 2016 FCA 28

This case dealt with the validity of a Copyright Board tariff that required the plaintiffs, including Rogers Communications Partnership, to pay royalties to SOCAN for the transmission of downloadable ringtones and ringbacks to subscribers over the Internet. At the trial level, Rogers sought to invalidate the tariff arguing this activity did not constitute communications of musical works to the public that would trigger section 3(1)(f) of the Act. The tariff, originally covering 2003-2005, was extended to cover 2006-2013. However, in light of decisions rendered by the Supreme Court of Canada in Rogers Communications Inc v SOCAN ("Rogers") and Entertainment Software Association v SOCAN ("ESA"), that downloads of videogames and musical works were not communications of works to the public, Rogers took the view that the tariff was no longer valid.

In addition to determining issues of res judicata and estoppel, the Court considered whether internet transmissions of ringtones to mobile devices were "communications" that implicated the section 3(1)(f) right. The Court held that the principles espoused in the Rogers and ESA decisions supported a finding that such transmissions were reproductions of musical works but not public communications.

Rogers further argued that, given these Supreme Court's decisions, the Board should have never certified the tariff. The Court, however, indicated that the tariff was not beyond the Board's jurisdiction, although it became unenforceable after the Rogers and ESA decisions. The plaintiffs further raised an unjust enrichment claim against SOCAN, but the Court rejected it and denied an order tracing distribution of the tariff royalties.

The plaintiffs appealed and SOCAN cross-appealed the decision. On January 27, 2016 the Federal Court of Appeal allowed in part both the appeal and cross-appeal as regards to issue estoppel and Federal Court's authority over certain questions of mixed fact and law. However, the finding that ringtones engaged only the reproduction right was not an issue before the Court. As such, that part of the trial judgement still remains.

7. Class Actions

Last year, the Ontario Courts considered two copyright infringement class action lawsuits. Although, the decisions discussed below concerned particular procedural issues, they are both underlaid with important copyright claims.

In Keatley Surveying Ltd v Teranet Inc, 2015 ONCA 248, the Ontario Court of Appeal upheld the Divisional Court's decision to allow class certification. The proposed class consisted of land surveyors asserting copyright in survey plans they prepared and registered in the land registry system. Teranet, who manages Ontario's electronic land registry system for the government, provides electronic copies of registered plans to the public for a fee set by statute, but pays no royalties to the land surveyors. Teranet took the position that the surveys, once registered, become property of the Crown. They relied on various provincial statutes and section 12 of the Act. The lead plaintiff, Keatley, argued that these provisions could not override federal copyright protection. The Court of Appeal did not comment on the merits of the case, but merely upheld the class certification.

In Waldman v Thomson Reuters, 2015 ONSC 3843, the Court granted the plaintiffs leave to appeal to the Divisional Court from a judgement of the Superior Court concerning a settlement approval. A class action had been commenced by Waldman, claiming Thomson infringed copyright of the Class Members by making available copies of court documents authored by Class Members and their law firms, to subscribers of Thomson Carswell's "Litigator" service without the Class Members' permission, and for a fee. The Class Members comprised all the Canadian attorneys whose documents appeared in the "Court Document Collection" of the "Litigator" service. The Parties reached a settlement agreement and sought court approval. However, the trial judge refused to approve the settlement agreement, on the basis it was not beneficial or fair to the copyright owners in the class. This prompted the parties to seek leave to appeal.

8. Fair Dealing and Technological Protection

1395804 Ontario Limited (Blacklock's Reporter) v. Canadian Vintners Association, 2015 CanLII 65885 (ON SCSM)

The plaintiff, Blacklock's Reporter, provides access to online articles for a fee, through a paid subscription service. The defendants, Canadian Vintner's Association, sought access to an article about the Association published by Blacklock's and hidden behind the subscriber paywall, it obtained a copy of the article through a third party subscriber to the Blacklock's service. Blacklock's discovered the Association's actions, and brought an action in Small Claims Court for copyright infringement and circumvention of a technological protection measure contrary to section 41 of the Act. The Association claimed the article was obtained to review it for any inaccuracies about the Association, and took the position that such use did not infringe because it constituted fair dealing for research and private study. The Court disagreed, found the paywall a "technological protection measure" that was circumvented by the Association's activities, and that fair dealing was not available because the article had not been legally obtained. Further, the Court held that, in any event, the Association failed to establish the dealing was for the purpose of research/private study, since no further action was taken (i.e., after the review, they did not lodge any complaints about inaccuracies with Blacklock's). The Court awarded Blacklock's damages of $11,470 (the cost of a corporate subscription to the service) and $2,000 punitive damages, based on several factors, including "trivializing the value of the Plaintiff's work and its efforts at protecting its copyrighted material".

9. Evidence of Infringement

Miguna v Walmart Canada et al, 2015 ONSC 5744, affirmed 2016 ONCA 174

Applying the secondary infringement test, the Court granted the defendants' motion for summary judgement to dismiss an action. The plaintiff, Miguna, wrote a book about his experiences in Kenya that was published by a U.K.-based publisher, Gilgamesh Africa Ltd. In 2014, the plaintiff became aware that his book was being offered for sale on Walmart's website, which identified a different entity, Consortium, as the publisher. The plaintiff brought action against Walmart and Consortium for breach of copyright, claiming that he did not consent to any publication, production, reproduction or release of his book, as well as for secondary infringement. The Court applied the three required elements of secondary infringement established in Euro Excellence Inc v Kraft Canada Inc (1. there is primary infringement, 2. the secondary infringer should have known that he or she was dealing with a product of infringement, and, 3. the secondary infringer sold, distributed or exposed for sale the infringing goods), and found there was no direct or indirect infringement by the defendants. As such, there could be no secondary infringement either. Moreover, there was no connection between the plaintiff's claims and Canada, since Miguna provided no evidence of sales or of the product being offered for sale by the defendants in Canada. Consequently, the Act could not be applied. The plaintiff appealed this order. On March 1, 2016 the Ontario Court of Appeal upheld the motion judge's decision and dismissed the appeal.

10. Quality of Infringing Copies

Geophysical Service Inc v Antrim Energy Inc, 2015 ABQB 482

In recent years, the plaintiff, Geophysical Services Incorporated ("GSI"), has commenced numerous actions in Canada against various companies and government bodies, including for alleged copyright infringement, based on use of the plaintiff's seismic data without a licensing agreement. This case involved the Canada Newfoundland and Labrador Offshore Petroleum Board ("CNLOPB"), a regulatory board operating a regime for the exploration and development of oil and gas. Third parties, like GSI, are required to provide CNLOPB with seismic data. Antrim, the defendant, contacted GSI in 2011, seeking access to certain seismic data. GSI proposed Antrim pay a licensing fee to access the data. Antrim refused and subsequently requested public information in possession of CNLOPB. CNLOPB provided Antrim with the requested data, which included two lines of seismic data produced by GSI. GSI discovered Antrim obtained that data, and commenced an action for breach of copyright. Antrim sought summary judgement, and argued, among other things, that the poor quality of the photocopies obtained from CNLOPB made them unusable, and therefore, there was no infringement. The Court rejected this argument, and held that unauthorized acts of copying constituted infringement since the Act did not require the "infringing work [to] compete in the marketplace with the infringed". The purpose of obtaining the copy was to assess the likelihood of a resource discovery. The fact that Antrim determined the data received was not useful did not excuse the copying. The Court also dismissed Antrim's argument that, since it had made no use of the data, there should be no damages. Consequently, the application for summary dismissal was denied.

11. Update on Amendments to the Copyright Act

Canada's "Notice-and-Notice" regime came into full force on January 2, 2015. The Notice-and-Notice provisions represent the last of the major changes to the Copyright Act to be proclaimed in force that were contained in the Copyright Modernization Act. That Act received Royal Assent on November 7, 2012. Under the Notice-and-Notice regime, internet intermediaries, such as ISPs and website hosts, who receive notices of alleged infringement from a copyright owner, are legally required to forward those notices to the alleged infringer.

On June 23, 2015 the Bill C-59, the Economic Action Plan 2015, Part 1 received Royal Assent. Among several notable changes to the intellectual property framework, it amended the Copyright Act by extending the term of copyright protection for sound recordings and performances from 50 years to 70 years. Longer protection will be afforded for sound recordings and performances fixed in sound recordings that are published within 50 years of first fixation to the earlier of (a) the end of 70 years after the sound recording is published or (b) the end of 100 years after the recording is first fixed. The extended protection will not apply to unpublished sound recordings or performances not fixed in sound recordings, which are protected for 50 years from the date of the first performance. These amendments, however, will not apply retroactively and will not revive copyright if protection ended before the changes were implemented.

Finally, on October 5, 2015 the Canadian Federal government announced that Canada has become one of the members of the TPP, a trade agreement between 12 Pacific Rim countries. The summary of the text was released to the public in November, and among various intellectual property amendments it proposed a general extension of the copyright term from 50 to 70 years plus the life of the author(s). Canada signed the agreement on February 4, 2016.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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
Jill Jarvis-Tonus
Tamara Céline Winegust
Anastassia Trifonova
Similar Articles
Relevancy Powered by MondaqAI
Clark Wilson LLP
Clark Wilson LLP
Bereskin & Parr LLP
Gowling WLG
Bereskin & Parr LLP
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Clark Wilson LLP
Clark Wilson LLP
Bereskin & Parr LLP
Gowling WLG
Bereskin & Parr 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