Canada: Media Pirates Walk The Plank: Extraordinary Remedies Against Copyright Infringers In Canada

In most jurisdictions, copyright owners often face numerous challenges when seeking to enforce their rights against media pirates. These challenges may include suffering ongoing harm pending judgment, the difficulty of proving damages and the risk of unscrupulous defendants destroying evidence or failing to comply with court orders. However, in a series of recent decisions, the Federal Court has granted various extraordinary remedies against media pirates, making Canada an attractive forum for copyright owners to litigate such cases.

I. Interim and Interlocutory Injunctions

Generally, the Federal Court will only issue a permanent injunction restraining a defendant from further engaging in infringing activities after a hearing on the merits. However, given that it often takes two to three years (or more in complex cases) to obtain judgment after commencing a legal proceeding, a copyright owner may suffer significant harm if its rights are continuously infringed throughout the proceeding.

To remedy this situation, two types of temporary injunctions are available in Canada, namely, interim and interlocutory injunctions.

An interlocutory injunction restrains a defendant from engaging in infringing activities until issuance of a final judgment. In order to obtain this remedy, a plaintiff must demonstrate that:

(a) its case raises a serious question to be tried;

(b) it will suffer irreparable harm if the injunction is not issued; and

(c) the "balance of convenience" favors the plaintiff, i.e. not granting the injunction will cause the plaintiff more inconvenience than granting the injunction will cause the defendant.

An interim injunction is similar to an interlocutory injunction, with the exception that a plaintiff may bring its motion ex parte (i.e. without providing notice to the other party) and that the injunction is only valid for a maximum of 14 days (although in practice such injunctions are typically extended until the hearing of the plaintiff's motion for an interlocutory injunction). In addition to satisfying the above noted three requirements for granting an interlocutory injunction, plaintiffs seeking an interim injunction must also demonstrate urgency.

Although the Federal Court has historically been somewhat reluctant to issue interim and interlocutory injunctions, recent cases suggest that it has become more willing to do so in intellectual property disputes, notably in copyright infringement proceedings targeting media piracy.

In Bell Canada et al v 1326030 Ontario Inc dba et al (2016 FC 612), three Canadian television broadcasters obtained an interlocutory injunction against retailers of "pre-loaded set-top boxes", i.e. devices pre-configured with software that provides consumers with unauthorized access to vast amounts of television programs owned and/or broadcasted by the plaintiffs.

In the case, because the defendants made the plaintiffs' works available to the public without their authorization, the Court held that the plaintiffs had shown a prima facie case of copyright infringement. The Court also found that the plaintiffs had demonstrated irreparable harm, notably because of the real risk that the Canadian market for pre-loaded set-top boxes would continue to grow and damage the plaintiffs' businesses. On the issue of the balance of convenience, the Court noted that the defendants' businesses would not be unduly harmed as they could continue selling devices that do not contain infringing software.

The Federal Court therefore issued an interlocutory injunction enjoining the defendants from, inter alia, advertising, offering for sale and selling pre-loaded set-top boxes.

Notably, since retailers of pre-loaded set-top boxes often operate inconspicuously, the Federal Court issued a special "John-Doe" interlocutory injunction, which includes a mechanism authorizing the plaintiffs to implead additional retailers on an ongoing basis as they are identified on the market, making them subject to the injunction. This flexible and efficient mechanism has allowed the plaintiffs to successfully implead over 100 new defendants.

More recently, in Bell Canada et al v Lackman (2018 FCA 42), the same plaintiffs brought a motion for an interim injunction and an Anton Piller order (discussed further below) against Mr. Adam Lackman, an individual who owns and operates a website named TVAddons, which promotes and distributes the infringing software that is installed on the pre-loaded set-top boxes described above.

In the Lackman case, the Federal Court of Appeal issued an interlocutory injunction against the defendant, for reasons similar to those in the case above. Interestingly, the Court also recognized the validity of the "hands-on" interim injunction that had been issued at first instance, which not only restrained the defendant from operating his infringing website, but also authorized bailiffs to seize and take custody of the TVAddons internet domains, servers and social media until a final judgment on the merits. In doing so, the Court noted that the defendant had gone to great lengths to mask his identity as the operator of the TVAddons website, including by using offshore companies and bank accounts, and that control over such a website could otherwise easily be transferred outside of the Court's jurisdiction.

These recent cases show that the Federal Court is not only increasingly open to issuing interim and interlocutory relief in intellectual property matters, but that it is willing to tailor this remedy to the particular facts of each case in order to ensure that the injunction has the intended effect.

II. Anton Piller Orders

An "Anton Piller" order allows a plaintiff to search a defendant's premises and seize and preserve evidence when there is a risk that the defendant will hide or destroy that evidence. Because the element of surprise is necessary for this remedy to be effective, it is always obtained without putting the defendant on notice.

Before the Federal Court will issue an Anton Piller order, the plaintiff must demonstrate:

(a) a very strong prima facie case against the defendant;

(b) very serious damage, actual or potential;

(c) that the defendant possesses relevant evidence and that there is a real possibility that it may hide or destroy such evidence; and

(d) that the search will not harm the defendant or its case.

In the Lackman case discussed above, the Federal Court of Appeal held that the plaintiffs had met the four-prong test and declared that the Anton Piller order had been lawfully sought and executed by the plaintiffs. Importantly, the Federal Court of Appeal found that the defendant's history of copyright piracy and other criminal behavior, as well as his attempt to destroy and conceal relevant evidence during the execution of the Anton Piller order, were relevant factors in upholding its validity.

Anton Piller orders are notoriously difficult to obtain in the Federal Court, particularly due to the need to show a strong prima facie case of infringement at the interlocutory stage. The Lackman case demonstrates that the Federal Court can nevertheless find that a plaintiff's prima facie case is very strong even when the technology in question is relatively complex and the defendant vigorously raises a statutory defense to infringement.

III. Statutory Damages

An important advantage of the Canadian copyright regime is the ability to seek statutory damages on a "per-work" basis in lieu of actual damages and the defendant's profits. Under the Copyright Act, a copyright holder may elect to recover statutory damages in the amount of up to $20,000 per infringed work if the infringement was for commercial purposes, or up to $5,000 per work for non-commercial purposes. This option can lead to substantial damages awards, especially in the television and video game industries where rights holders often own massive libraries of copyrighted works.

For example, in Twentieth Century Fox Film Corporation v. Hernandez (T-1618-13), the Federal Court awarded Twentieth Century Fox the sum of $10 million in statutory damages against the defendant, an individual who copied and transmitted hundreds of episodes of The Simpsons and Family Guy over the Internet. 

In Nintendo of America Inc v King et al (2017 FC 246), the Federal Court awarded Nintendo of America Inc. over $11 million in statutory damages. Importantly, the Nintendo case was the first time any Canadian court had issued a judgment for circumvention of technological protection measures, which is prohibited under the Copyright Act. Notably, the Federal Court granted statutory damages per work made accessible by the circumvention of technological protection measures.

IV. Contempt Proceedings

The Federal Court has inherent power to ensure that its orders are respected. Federal Court judges can therefore hold a party in contempt and issue significant penalties, including the payment of a fine, completion of community service and up to five years of imprisonment.

Before the Federal Court will find a defendant guilty of contempt, the plaintiff must demonstrate:

(a) the existence of a court order;

(b) the defendant's knowledge of the order; and

(c) that the defendant deliberately performed (or failed to perform) an act in violation of the order.

Given the quasi-criminal nature of contempt proceedings and the prospect of incarceration, the plaintiff bears the burden to prove its case beyond a reasonable doubt. Nevertheless, if the plaintiff tenders evidence of contempt, any "reasonable" doubt must be based on common sense, be logically based on the evidence or lack of evidence, and cannot be imaginary or frivolous.

For instance, in Bell Canada et al v Vincent Wesley dba (2018 FC 66), the plaintiffs had presented evidence that the defendant, Mr. Vincent Wesley, had sold a pre-loaded set-top box in contravention of the Federal Court's interlocutory injunction mentioned in the case above. The evidence showed that the pre-loaded set-top box sold by Mr. Wesley was configured with software providing access to infringing content, in contravention with the injunction. However, Mr. Wesley argued that he had not configured software on the set-top box and that it must have therefore been tampered with by an unknown party. Rejecting Mr. Wesley's argument as unfounded and based on mere suspicion, the Federal Court found him guilty of contempt of Court. As Mr. Wesley had already been sentenced to hundreds of hours of community service for prior contempt, the sentence for this most recent contempt judgment is still pending.


These recent decisions demonstrate that the Federal Court is prepared to grant a wide range of extraordinary remedies to copyright owners in an era where media piracy is on the rise and the underlying technology is constantly evolving. The Federal Court has become an important venue for rights holders in these industries and clearly recognizes the investments made by artistic communities and the economic value their works create. Copyright owners should not hesitate to turn to the Federal Court to seek appropriate remedies against infringers located in Canada.

The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Mark Biernacki
Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
Up-coming Events Search
Font Size:
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
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
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 (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

To Use 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.


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.


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