If you've ever taken piano lessons then titles like
"Bozo's Flippity-Flop", "Shooting Stars"
and "Little Elves and Pixies" may be familiar.
These are among the titles that were drawn into a recent
copyright infringement lawsuit brought by the Royal Conservatory
against a rival music publisher for publication of a series of
musical works. In Royal Conservatory of Music v. Macintosh (Novus
Via Music Group Inc.) 2016 FC 929, the Royal
Conservatory and its publishing arm Frederick Harris Music sought
damages for publication of these works by Conservatory Canada and
its music publisher Novus Via Music.
The case serves as a cautionary tale about records and rights
management, since much of the confusion between the parties, and
indeed within the case itself, could be blamed on missing or
incomplete records about who ultimately had the rights to the
musical works at issue. In particular, a 1999 agreement which would
have clarified the scope of rights, was completely missing. The
court ultimately determined that there was no evidence that the
defendants Conservatory Canada and its music publisher Novus Via
Music could benefit from any rights to publish these songs; the
missing 1999 agreement was never assigned or extended to the
In assessing damages for infringement, the court reviewed the
factors set forth in the Copyright Act, including:
the good faith or bad faith of the
the conduct of the parties before and
during the proceedings;
the need to deter other infringements
of the copyright in question;
in the case of infringements for
non-commercial purposes, the need for an award to be proportionate
to the infringements, in consideration of the hardship the award
may cause to the defendant, whether the infringement was for
private purposes or not, and the impact of the infringements on the
In evaluating the deterrence factor, the court noted: "it
is unclear what effect a large damages award would have in
deterring further copyright infringement, when the infringement at
issue here appears to be the product of poor record-keeping and
rights management on the part of both parties. If
anything, this case is instructive that the failure to
keep crucial contracts muddies the waters around rights, and any
resulting infringement claims. The Respondents should
not alone bear the brunt of this laxity, because the Applicants
played an equal part in the inability to provide to the Court the
key document at issue." [Italics added]
For these reasons, the court set per work damages at the lowest
end of the commercial range ($500 per work), for a total award of
$10,500 in damages.
Calgary – o7:00 MST
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.
The Canadian Intellectual Property Office has issued a report entitled IP Canada Report 2016, discussing trends in IP use domestically, and by Canadians abroad, based on analysis of CIPO's internal data and those collected by the World Intellectual Property Organization.
The value of reliance on a trade-mark registration, as opposed to prior use, stands out sharply in the recent Federal Court of Appeal case of Pizzaiolo Restaurants Inc. v. Les Restaurants La Pizzaiolle Inc. ( 2016 FCA 256 October 28, 2016).
This is an appeal from the Federal Court's decision setting aside the Registrar of Trade-marks decision to the extent that it dismissed the applicant's opposition regarding the mark PIZZAIOLO and Design.
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).