Canada: Quarterly Copyright Blog #4

Last Updated: December 18 2018
Article by John McKeown

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

  • The Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP) is a trade agreement among the original parties to the Trans-Pacific Partnership (TTP) after the withdrawal of the United States. On October 25, 2018 Canada ratified the CPTPP. The CPTPP comes into force when six of the members have ratified it. This seems to be happening fairly quickly.
  • The United States-Mexico-Canada Agreement (USMCA) – Canada, the United States and Mexico have agreed to sign a new trade agreement to replace the existing North American Free Trade agreement. The scope of the agreement is broad but there are provisions dealing with copyright and trade secrets, among other matters, which may require amendment of Canadian laws:

a) Term of Protection – The term of protection for works subject to copyright must be extended to the life of the author and seventy years. There are additional equivalent provisions for extending the term of protection for works where the term is not based on the life of the author.

b) Safe Harbours – The USMCA establishes under Article 20.J.11 copyright safe harbours to provide protection for legitimate online enterprises operating as intermediaries that do not directly benefit from infringement. The Annex to Section J appears to permit Canada to maintain its current notice-and-notice regime but additional changes may be required.

c) Rights Management Information – Each Party shall provide that any person that, without authority, and knowing, or having reasonable grounds to know, that it would induce, enable, facilitate or conceal an infringement of the copyright or related right of authors, performers or producers of phonograms: (i) knowingly removes or alters any Rights Management Information (RMI); (ii) knowingly distributes or imports for distribution RMI knowing that the RMI has been altered without authority; or (iii) knowingly distributes, imports for distribution, broadcasts, communicates or makes available to the public copies of works, performances or phonograms, knowing that RMI has been removed or altered without authority, is liable and subject to civil and administrative procedures and remedies. Broader remedies than presently available will be required.

d) Trade Secrets – Each party shall 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 shall provide for criminal procedures and penalties for the unauthorized and willful misappropriation of trade secrets.

In addition, each Party shall provide for criminal procedures and penalties to be applied if any person is found to have engaged willfully and for purposes of commercial advantage or financial gain in any of the above activities.

Each Party has also confirmed that the enforcement procedures shall be available to the same extent with respect to acts of trademark infringement, as well as copyright or related rights infringement, in the digital environment. Broader remedies will be required, particularly a new criminal offence.

e) Border Measures for Counterfeit Goods – Each Party shall provide that its competent authorities may initiate border measures ex officio against suspected counterfeit trademark goods or pirated copyright goods under customs control that are: (a) imported; (b) destined for export; (c) in transit; and (d) admitted into or exiting from a free trade zone or a bonded warehouse. An "in-transit" good means a good that is under "Customs transit" or "transshipped". Amendments will be required relating to "in-transit" goods.

When the USMCA was negotiated, the US Republican party controlled both the House of Representatives and the Senate. After the elections the US Democratic Party controls the House of Representatives. The House and the President disagree on virtually every issue. It has been suggested that, in order to obtain democratic support for the USMCA, additional assurances and perhaps changes may be required.

  • Bill C-86 – The Government has very recently introduced Bill C-86 which is a lengthy budget bill that includes amendments to the Copyright Act and the Bankruptcy legislation relating to licenses of intellectual property.

The changes to the Copyright Act include excluding settlement demands from the copyright Notice and Notice regime and modernizing the legislative framework relating to the Copyright Board.

Sections 243 to 246 amend the Copyright Act in order to specify that an offer to settle and other prescribed information is not permitted to be included in a notice under the notice and notice regime and to provide for a regulation-making power to prohibit further types of information from being included within such a notice.

Sections 280 to 302 amend the Copyright Act in order to modernize the legislative framework relating to the Copyright Board so as to improve the timeliness and clarity of its proceedings and decision-making processes.

Sections 265 to 271 amend the Bankruptcy and Insolvency Act to provide that intellectual property users may preserve their usage rights when intellectual property rights are sold or disposed of in an insolvency proceeding or when the agreement relating to such property rights is disclaimed in such a proceeding. It also amends the Companies' Creditors Arrangement Act to provide that intellectual property users may preserve their usage rights when intellectual property rights are sold or disposed of.

  • In Bell Canada v. 7265921 Canada Ltd., 2018 FCA 174 the Federal Court of Appeal heard an appeal by Bell Canada and Bell Media Inc. from decisions made by the Canadian Radio-television and Telecommunications Commission (CRTC). It was argued, among other things, that the decisions violated the appellant's copyright interests. In dismissing the appeal the court made two important observations. First, the rights granted under the Copyright Act, such as in paragraph 3(1)(f) and subsection 13(4) are not unequivocal. They may be conditioned by other legislation with which the copyright intersects. Second, that the owner of a copyright is not immune or exempt from laws of general application. While they enjoy the benefit of market exclusivity, they must nevertheless abide by the rules governing the particular market in which they have chosen to participate. These observations are very similar to the approach taken by numerous courts with respect to attacks based on interference with trademark rights brought by tobacco companies concerning legislation implementing plain packaging for tobacco products.
  • In Rogers Communications Inc. v. Voltage Pictures, LLC 2018 SCC 38 the Supreme Court of Canada said that the notice and notice regime was enacted to serve two complementary purposes: (1) to deter online copyright infringement; and (2) to balance the rights of interested parties. The second purpose involves not only balancing the rights of copyright owners and Internet users who may infringe, but also the interests of Internet intermediaries such as ISPs.

A Norwich order is a type of pre-trial discovery which, among other things, allows a rights holder to identify wrongdoers. In order to obtain such an order, among other requirements, the person from whom discovery is sought must be reasonably compensated for the expenses arising out of compliance with the discovery order in addition to his legal costs.

The statutory notice and notice regime has not displaced the necessity of a copyright owner obtaining a Norwich order in order to compel an ISP to disclose the identity of a person who is alleged to have committed an infringement of copyright. There is a distinction between an ISP's obligation under the notice and notice regime to ensure the accuracy of its records that allow the identity of the person to whom an IP address belonged to be determined, and an ISP's obligation under a Norwich order to actually identify a person from its records

  • In Toronto Real Estate Board v. Commissioner of Competition, 2017 FCA 236, leave to appeal to the S.C.C. refused, the Federal Court of Appeal considered the intersection of rights available under the Copyright act and prohibitions contained in the Competition Act. Subsection 79(5) of the Competition Act seeks to protect the rights granted by Parliament to copyright holders and, at the same time, ensure that the exclusivity rights created are not exercised in an anti-competitive manner. The language of subsection 79(5) is unequivocal. The subsection insulates copyright rights from allegations of anti-competitive conduct in circumstances where the right is the sole purpose of the exercise or use. Anti-competitive behaviour cannot shelter behind a claim of copyright unless the use or protection of the copyright is the sole justification for the practice.
  • Amendments to the Industrial Design Act and regulations were brought into force November 5, 2018. There are numerous changes in practice which have allowed Canada to become a party to the Hague Agreement. The Industrial Design Office Practices have been replaced by the Industrial Design Office Practice Manual effective November 5, 2018. The manual has been updated to reflect the changes to the Act and regulations.
  • In Seedlings Life Science Ventures, LLC v. Pfizer Canada Inc., 2018 FC 956 a judge of the Federal Court said that a protective order governs the way in which parties may designate information as confidential and handle such information during the pre-trial disclosure phase of an action. A confidentiality order, on the other hand, allows parties to file confidential information under seal with the court registry. There may also be hybrid orders that deal with both disclosure and filing.

The test for issuing a protective, confidentiality or hybrid order is the same. The applicant must show that: 1) the information has been treated at all relevant times as confidential and that on a balance of probabilities the applicant's proprietary, commercial and scientific interests could reasonably be harmed by the disclosure of the information, and 2) the information is of a confidential nature in that it has been accumulated with a reasonable expectation that it be kept confidential.

  • in Arkipelago Architecture Inc. v. Enghouse Systems Ltd., 2018 FCA 192 the Federal Court of Appeal confirmed that that counsel's-eyes only protective orders should only be granted in unusual circumstances. This type of order deals with the designation of information as confidential and limits its disclosure to counsel for the parties. The parties are not allowed to have access to the designated information. Each case where such an order is sought must be decided on its own merits on the basis of the two pronged test described above. In the context of harm to a commercial business interest, such an order is warranted where the disclosure of the confidential information at issue presents a "serious threat" that is "real, substantial, and grounded in the evidence".

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
John McKeown
Similar Articles
Relevancy Powered by MondaqAI
Goldman Sloan Nash & Haber LLP
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Goldman Sloan Nash & Haber LLP
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Mondaq Sign Up
Gain free access to lawyers expertise from more than 250 countries.
 
Email Address
Company Name
Password
Confirm Password
Position
Industry
Mondaq Newsalert
Select Topics
Select Regions
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