Canada: Copyright Quarterly: Issue 2

Last Updated: October 15 2018
Article by John McKeown

For those who are interested in recent cases and developments in copyright law and related matters there have been a number of developments since the last entry. They are set out below:

United States-Mexico-Canada Agreement (USMCA)

Canada and the United States have agreed to sign a new trade agreement to replace the existing North American Free Trade Agreement. The agreement, which includes Mexico as well, was concluded just before the deadline. A copy of the agreement which includes chapter 20 dealing with intellectual property rights is available here.

The scope of the agreement is broad and our focus is limited to a high level review of copyright provisions. The agreement has not yet been finalized and has only very recently been released to the public.

Canada has agreed that the term of protection for works subject to copyright will be extended to the life of the author and seventy years and for works that have a term of protection not based on the life of the author seventy-five years from the date of publication.

The agreement establishes copyright safe harbours to provide protection for legitimate online enterprises operating as intermediaries that do not directly benefit from infringement.

Each party has agreed to ensure that persons have the legal means to prevent trade secrets lawfully in their control from being disclosed to, acquired by, or used by others (including state-owned enterprises) without their consent in a manner contrary to honest commercial practices. In addition, each party has agreed to provide for criminal procedures and penalties for the unauthorized and wilful misappropriation of trade secrets.

Industrial Design Regulations

On June 27, 2018 the Government published new Industrial Design Regulations in the Canada Gazette and announced that the Amendments to the Industrial Design Act will be brought into force effective November 5, 2018.  In addition, on July 16, 2018, the Government of Canada deposited its instrument of accession to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs, adopted at Geneva on July 2, 1999 (the "Geneva Act"). The Geneva Act will enter into force, in respect of Canada, on November 5, 2018. Canada Gazette, Part II, Volume 152, Number 13.

Case Law

Copyright in the Structural Elements of a Building

The plaintiff succeeded with action for infringement of the copyright in the plans for and the structure of an indoor soccer facility. The judge concluded that the combination of previously known elements could be protected by copyright as long as the arrangement produced by the author stemmed from the exercise of skill and judgment of the author.  The fact that the defendant exercised skill and judgement relating to its alleged independent creation was not relevant when considering a claim for infringement. Finally it was confirmed that the infringing work could be in a material form other than that of the infringed work. Plans can be infringed indirectly by reproducing a three-dimensional object created from them, and vice versa. Lainco Inc. v. Commission scolaire des Bois-francs 2017 FC 825.

Downloading and Posting a Document Originally on Another Website is Copyright Infringement

A recent decision of the Court of Justice of the European Union has clarified that downloading and posting a document originally on another website is copyright infringement. A photograph was posted on an online travel portal with the photographer's consent but without any restrictive measures preventing it from being downloaded. A pupil caused a copy of the photo to be posted on a school website as part of a presentation. The photographer brought proceedings for infringement against the entity which was responsible for the school. The action was allowed and both parties appealed. On appeal questions were directed to the Court of Justice of the EU. The court agreed with the result arrived at in the courts below. The court concluded that the posting of a work protected by copyright on one website other than that on which the initial communication was made with the consent of the copyright holder, in circumstances such as those at issue in the main proceedings, must be treated as making such a work available to a new public. In such circumstances, the public taken into account by the copyright holder when he consented to the communication of his work on the website on which it was originally published was composed solely of users of that site and not of users of the website on which the work was subsequently published without the consent of the right holder, or other internet users. It was also irrelevant that the copyright holder did not limit the ways in which internet users could use the photograph. The court had previously held that the enjoyment and the exercise of the right may not be subject to any formality. Land Nordrhein-Westfalen v. Renckhoff (7 August 2018) Case C-161/17 (Court of Justice of the EU).

No De Facto Expropriation of Copyright in Seismic Data

Geophysical Service Inc. brought an action against the Queen in the Right of Canada alleging a de facto expropriation of its copyright in seismic data. The expropriation was alleged to have been effected through a legislative and regulatory scheme enacted and operated pursuant to various statutes, including primarily the Canada Petroleum Resources Act, RSC 1985, c C-36 (2nd Supp.) and other Acts. The action was struck out as disclosing no reasonable cause of action. It was plain and obvious that nothing was taken by the statutory scheme that GSI ever had. Rather, the copyright created pursuant to the statutory scheme over the data was one that was limited and encumbered, from its inception, by the disclosure provisions of the scheme. Geophysical Service Inc. v. R. 2018 FC 670.

The Implied Undertaking Rule

Even where the subject matter of two proceedings between the same or related parties are similar, and where evidence obtained during one might be relevant in the other, the implied undertaking rule still applies and operates to prevent the use of information obtained on discovery in one proceeding being filed in the other, unless the party who provided the information consents or the court allows the evidence to be filed in the second proceeding. However, in such cases the prejudice to the party providing the information is generally less and a court will typically look favorably on a request for leave to utilize the information obtained in one proceeding in the other proceeding. P.S. Knight Co. v. Canadian Standards Association 2017 FCA 49.

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.

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