On June 1, 2016, the Federal Court granted an interlocutory
injunction against retailers of television set-top boxes with
pre-loaded applications that permit the unauthorized streaming and
downloading of copyrighted content. Recognizing the "emerging
phenomenon" of "pre-loaded set-top boxes" in Canada,
this injunction comes at a time of rapid growth in the popularity
of such devices. Finding for the plaintiff broadcasting companies,
Order in Bell Canada et al. v 1326030 Ontario Inc.
et al., 2016 FC 612 also permitted the plaintiffs to
identify and add other retailers of pre-loaded set-top boxes as
additional defendants to bring them under the injunction.
As of June 13, 2016, two of the five retailers originally
brought under the injunction are now in the process of appealing
The plaintiffs, including Bell Media Inc. and Rogers Media Inc.,
are well-known Canadian broadcasting companies and broadcast
distribution entities that own or licence the copyrighted
television content made accessible by the pre-loaded set-top
The defendants are individuals and businesses that sell set-top
boxes on which they have installed or otherwise
"pre-loaded" applications designed to access
copyright-protected content. Advertised as "Cable
Killer[s]" capable of accessing free television content while
allowing the avoidance of cable fees, these
"plug-and-play" set-top boxes are pre-loaded with:
KODI, an open-source media player that, with proper add-ons,
could be used to access online streaming websites;
Showbox, a media player application that permits the access of
online streaming websites to permanently download television or
motion picture content; and
Private IPTV services that permit the re-transmission of
television broadcasts over the internet for a monthly fee.
Finding of the Federal Court
The sole issue in this motion was whether an interlocutory
injunction should be granted. Pursuant to the three-part test
established by the Supreme Court of Canada, the granting of an
interlocutory injunction requires the satisfaction of three
there must be a serious question to be tried;
there must be irreparable harm; and
the balance of convenience must weigh in favor of the person
requesting the injunction.
Finding that inducing consumers to commit copyright infringement
was indeed a serious issue, the Court accepted that the plaintiffs
have established a strong prima facie case of copyright
infringement under both the Copyright Act and the
Radiocommunications Act. Rejecting the defendants'
claim that they were merely selling hardware with non-infringing
uses, the Court found prima facie evidence that the defendants were
actively enabling consumers to commit copyright infringement
through the use of the device.
The Court was also satisfied that the plaintiffs would suffer
irreparable harm if the injunction was not granted. Recognizing
that "the market for pre-loaded set-top boxes will keep
growing if left unchecked", the Court found that the actions
of the defendant retailers, if not restrained, would incentivize
consumers to permanently cancel their cable subscriptions.
Finally, determining that the defendants' business
activities will not unduly suffer from being restricted to only
"legal [and] non-copyright-infringing" applications in
their set-top boxes, the balance of convenience was found to weigh
in favour of the plaintiffs.
This interlocutory injunction demonstrates that the Federal
Court is willing to adopt a strong position against emerging
technologies that promote or enable copyright infringement. In
particular, by allowing the plaintiffs to expand the scope of the
injunction through the inclusion of additional defendants, the
Court has sent a clear message empowering copyright holders to act
in the face of these emerging technologies.
Observing that "[t]his is not the first time a new
technology has been alleged to violate copyright law...nor will it
be the last", the Court's Order suggests to copyright
holders that interlocutory injunctive relief may be available
against those who utilize new technologies to commit copyright
infringement. Given the importance of this remedy and the national
ambit of the decision, copyright holders across Canada would be
well-advised to follow this case and the pending appeal of this
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.
A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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).