A.     Introduction

This article reviews material developments in Canadian legislation, case law, and practice in the area of copyright in 2016. All references in this article to the “Act” refer to the Copyright Act, R.S.C. 1985, c. C-42, as amended.  This article was originally published by The Continuing Legal Education Society of British Columbia in their “Annual Review of Law & Practice – 2017”.

B.     Law and Policy

The past twelve months were relatively busy in the copyright realm, continuing a trend that started in 2012 when the Supreme Court of Canada released the copyright pentalogy, and the bulk of the Copyright Modernization Act came into force. While we received no new copyright-related pronouncements from the highest court this past year, lower courts did release a slew of interesting decisions, discussed below.

Notably, 2016 also saw growth in the number of copyright-related suits filed, portending a busy 2017—which will likely be made busier for copyright wonks when Parliament commences a review of Canada’s copyright legislation, as required under section 92 of the Act.

But those are matters for next year; for now, let’s start our review of 2016 with a look at changes in domestic copyright law and policy developments.

1.     Bill C-11

On June 22, 2016, Bill C-11, titled An Act to amend the Copyright Act, received Royal Assent. The bill implements provisions of the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired or Otherwise Print Disabled (the “Marrakesh Treaty”), enhancing access to copyrighted materials for the approximately 3,800,000 Canadians who live with perceptual disabilities. Canada ratified the Marrakesh Treaty on June 30th, 2016—and as the 20th signatory, its allowed the treaty to come into force on September 30, 2016.

Using a broad definition of ‘print disability’ (namely, any disability that prevents a person from reading a work in its original format), the amendments allow not-for-profit organizations and governments to copy and reformat literary, musical, artistic or dramatic works (aside from cinematographic works) specifically for use by persons with print disabilities, so long as the work is not commercially available in similar format. Persons with print disabilities may also lawfully copy and reformat such works themselves, even when doing so requires them to circumvent technological protection measures.

Not-for-profit organizations intending to rely on the Act’s new exemptions must first register—but once that occurs, the Act permits them to make the works they reproduce available to not-for-profit organizations in other countries that assist persons with print disabilities, provided works of similar format are not available in a reasonable time for a reasonable price, and cannot be located in that country with reasonable effort.

2.     Trans-Pacific Partnership Agreement

On February 4, 2016, Canada signed the Trans-Pacific Partnership Agreement (“TPP”)—a planned 12 nation trade agreement that had been largely spearheaded by the United States. If ratified by Canada, the TPP would impact a wide range of Canadian laws; for example, in the copyright context it would require Canada to extend copyright term duration to the life of the author plus 70 years, in alignment with current American copyright law terms.

However, as one of his first official acts in office, US President Trump signed a memorandum withdrawing the United States from the agreement; as such, the project appears to be dead, at least in its current form.

C.     Case Law

The discussion below encompasses a selection of interesting copyright cases from 2016. For the most part, the discussion excludes ‘copyright’ cases that are only notable for reasons other than copyright—ie. for developments in law relating to civil procedure, administrative review, or otherwise.

1.     Subject Matter and Originality

Geophysical Service Inc. v 612469 Alberta Ltd., 2016 ABQB 356, considered whether copyright can subsist in collected seismic data, and  whether the regulatory disclosure regime impacts the copyright owner’s rights. By way of background: the plaintiff conducted offshore seismic marine surveys in 1982, and licensed its data to oil and gas companies; some of it was also deposited with the National Energy Board. The defendant accessed and copied that data from the Board in 2010, leading the plaintiff to bring suit.

The court first had to determine whether the data was an original work attracting copyright protection. In doing so, the court relied on the 2004 decision of the Supreme Court in CCH Canadian Ltd. v. Law Society of Upper Canada [2004] 1 SCR 339 (“CCH”), assessing the work for an expression of skill and judgement, which the court found was present. In particular, it concluded the retrieval of the data required the knowledge, developed aptitude and practiced ability of the seismic team who collected it; more, the multitude of discrete decisions the team made in collecting that data was evidence of their exercise of judgement. As such, the court held the seismic data was an original work, and did attract copyright protection.

The court then turned to the Canada Oil and Gas Regulations, and its requirements that data be submitted to the regulatory authority.  Under those regulations, submitted data is available for exclusive use by the submitting party for an initial period, but thereafter a compulsory license comes into effect allowing third parties to copy and use the data.

Applying basic statutory interpretation principles, the court concluded that these specific provisions should be given paramountcy over the more general provisions of the Copyright Act, which might otherwise have precluded such copying and use.

In this light, the court held that since the initial privileged period had expired, the plaintiff could not rely upon its rights under the Act, the compulsory license applied, and as a result there had been no infringement of copyright on the part of the defendant or related parties in copying it from the National Energy Board’s website.

Bienvenu c. Enseignes Leco ltée, 2016 QCCQ 1154 explored copyright in the narrow context of municipal sign designs, with the court considering whether the defendant municipality, in producing a traffic sign, had breached the plaintiff’s copyright in a similar municipal sign.

The court was also willing to conclude that the sign in question was a work entitled to copyright protection—but, following Construction Denis Desjardins Inc. c. Jeanson, 2010 QCCA 1287, the court held that owners of trivial original works are entitled to less protection than the owners of truly creative and novel works: since a truly novel work involves greater use of skill and judgment in development, that work will accordingly enjoy a greater comparative scope of protection.

As such, the court concluded the plaintiff’s design was entitled only to minimal protection because there were already several other signs very similar to it. The defendant’s sign was not so similar as to constitute a reproduction of the plaintiff’s original work; as such, the claim was dismissed.

The facts in Macnutt v Acadia University, 2016 NSSC 160 relate to the applicant’s production of a design concept for the expansion of a hall in one of the respondent university’s facilities. Upon obtaining funding for the expansion, the university decided to hire a different architect to draft plans for the expansion based largely on the applicant’s design, leading the applicant to draft this copyright infringement action.

While the case was decided largely on the testimony of the parties, the court concluded that the architect’s design was distinct from that of the applicant; in its view, any similarities between the two resulted from the need for the expansion to mimic the architecture of the existing hall’s Georgian design. As such, the claim was dismissed.

2.     Authorship and Joint Authorship

In Andrews v McHale, 2016 FC 624, the Federal Court was asked to consider, in the context of a software program, whether certain non-coding tasks represented a sufficient exercise of skill and judgement to support a claim of authorship in the software.

In particular, the applicant argued that he was a co-author of the software, since he had: obtained relevant information from clients and input that into a spreadsheet; coordinated staff, contactor and user groups; ensured software implementation; ensured client access to software presentations and tools; coordinated client feedback on certain software outputs; and implemented strategies to assist with client difficulties in using the software. Notably, however, the applicant did not perform any software coding.

Interestingly, the court stated that coding itself was not required to support an authorship claim in the software. However, it also concluded that the applicant’s contributions failed to rise to the standard required, as they did not evidence an application of skill and judgement resulting in the expression of the work in material form. Instead his contributions fell “into the category of ideas, methods, procedures, algorithms or other categories of contributions which, while perhaps valuable, fall outside the type of intellectual effort protected by copyright law” (at para. 88).

However, that finding didn’t end the analysis: the applicant had also registered his purported copyright interest in the software with the Canadian Intellectual Property Office. As such, he pointed to section 53(2) of the Act which states that a certificate of registration is evidence that the registrant owns the copyright in the subject work, to support his claims.

In response, the court relied on Close Up International Ltd. v. 1444943 Ontario Ltd. (2006), 151 ACWS (3d) 513, which held that a certificate of registration produces some evidence of copyright ownership, but the court may only point to it as definitive proof in the absence of contradictory evidence. In this case, the consulting agreement under which the applicant had worked contradicted the certificate; given this, and given the nature of his contributions to the software the court found the applicant had failed to establish copyright in the programs, and dismissed the action.

On a related point, the respondent asked the court to expunge the applicant’s certificate under section 57(4) of the Act, but the court declined, concluding that it did not have the jurisdiction to do so unless the respondent brought a separate application.

3.     Moral Rights

In Stoyanova v. Disques Mile-End Inc., 2016 QCCS 5093, the plaintiff sought an injunction and damages against the defendant for allegedly infringing the plaintiff’s copyright in a poem the plaintiff had written, which was later recorded as part of a song.

Both litigants agreed that the poem and its vocal delivery were protected works under the Act, though the case focused on the poem as a literary work since the plaintiff had separately assigned her copyright in all musical works to a third party. The defendant argued he had a license to use the poem, but this was not borne out on the facts, and the court made an award for copyright infringement.

The plaintiff also asserted that the defendant had violated her moral rights in the work for failing to identify the plaintiff as its author on the album. Concluding both that the plaintiff had not renounced her moral rights and that the defendant had not properly identified her on the album, the court awarded a further $5,000 to the plaintiff for damages.

4.     Assignments and Licences

In Actuate Canada Corporation v. Symcor Services Inc., 2016 ONCA 217 the Ontario Court of Appeal was called to interpret whether a software licence permitted the defendant to use software on multiple servers and with multiple operating systems.

The court held that the correct way to interpret a software licence for copyright purposes is to look at the contract as a whole, including any schedules to the contract. This approach would come back to benefit and hurt each of the litigants’ claims.

In particular, the schedules at issue permitted use of the software on an ‘enterprise wide basis’, without restricting the number of copies the plaintiff may make of it. Accordingly, the defendant asserted that it was not in violation of its license or of copyright law for having made and used multiple copies of the software. The plaintiff disagreed, arguing that since the software was used with other software purchased on a per-server basis, use of the software in question was similarly restricted. The court rejected the plaintiff’s argument, holding that there was nothing in the license agreement that restricted the software to use on individual servers.

The defendant switched its position on the schedule when it came to consider the use of the software with different operating systems. In particular, the schedule described the software as being used in conjunction with one operating system—but since the defendant was using the software with multiple operating systems, it argued the schedule was not an integral part of the contract, and merely provided a description of the product as opposed to a limitation on use. The court disagreed, and found that software was licensed for use only on one operating system.

Undaunted, the defendant noted that, the contract required it to pay a higher price for technical support when using the software in a manner the licence agreement didn’t contemplate; relying upon this provision, the defendant argued that this meant the contract permitted uncontemplated uses of the software so long as the increased technical support costs were paid. However, the court rejected this argument as well, holding that the additional cost didn’t mean that the uncontemplated use was lawful, but only that the technical support related thereto would be more expensive; no license could be implied.

An interesting question arose at the intersection of the Copyright Act (on the one hand) and the Registry Act and Land Titles Act of Ontario (on the other) in Keatley Surveying Ltd. v Teranet Inc., 2016 ONSC 717.

There, the plaintiff was a class comprised of 350 land surveyors; the defendant was the private-sector company engaged to manage Ontario’s electronic land registry system. The plaintiffs asserted that the defendant infringed their copyright by scanning, copying and making their survey plans available through its land registry system.

Under Ontario law, documents prepared by land surveyors must be registered in the land registry system. On-line copies of registered plans of survey are provided to the public for a statutorily-prescribed fee, but no fees or royalties are provided to the surveyors.

This system was seemingly acceptable to most surveyors when based in paper and managed by the province; however, the province eventually appointed Teranet to develop and manage an electronic system. Over time, perceptions grew that Teranet was realizing significant profits from distributing the surveyors’ plans to the public, and the surveyors became frustrated, bringing this action.

The surveyors argued that their transfer of ownership in the survey documents did not necessarily include the related copyright in those works. However, the court disagreed: it noted that Ontario’s Registry Act and Land Titles Act provide that every instrument or document deposited or registered is “the property of the Crown”. It also found that those acts’ definition of statutory fees for providing copies to the public was a clear indication that copyright was included in the bundle of rights transferred over to the province under the legislation.

Given this, the court concluded that Teranet, acting as agent for the province, was not infringing the surveyors copyright in managing the electronic system and providing copies of documents to the public. The claim was dismissed.

5.     Infringement

In Corocord Raumnetz GMBH v. Dynamo Industries Inc., 2016 FC 1369, the Federal Court considered the distinction between an ‘artistic work’ and a ‘useful article’ under section 64(2) of the Act.

The litigants were both manufacturers and sellers of playground equipment. The plaintiff denoted a high degree of similarity between its equipment and that of the defendant—and being more angered than flattered by the imitation, it filed suit claiming that the defendant’s equipment was a copy of its own. The court agreed, holding that there was copyright in the plaintiff’s design that had been infringed by the defendant.

In response, the defendant turned to section 64(2) of the Act, which distinguishes ‘useful articles’ from artistic works, and which denies copyright protection to useful articles that have been reproduced over 50 times. In this light, the question became whether the plaintiff’s products were useful articles: if so, they would lose substantive copyright protection.

Noting the Act’s definition of ‘useful articles’ as those that have a utilitarian function, the court (somewhat circularly) confirmed that if an article is useful, it is a useful article—in contrast to works of art being made merely(!) to be observed and admired. Applying that analysis here, the court concluded the plaintiff’s products were ‘useful articles’ being designed to be played and climbed upon by children. As such, the claim was dismissed.

A secondary issue examined by the court related to whether the reproduction requirement in section 64(2) spoke to reproductions solely in Canada, or made anywhere in the world. Again examining the wording of the section, the court noted reference to reproductions being made “by or under the authority of any person who owns the copyright in Canada or who owns the copyright elsewhere” [emphasis added], and concluded that parliament’s intention was that the section apply to worldwide reproduction.

Boaden Catering Ltd. v Real Food for Real Kids Inc., 2016 ONSC 4098, was a dispute between two businesses involved in providing catering services to children, and the case considered copyright questions amongst a variety of other issues. In particular, the plaintiff asserted the defendant had copied certain features of its menu and website, thereby infringing its copyright. The court found that the only similarities between the menus and the websites were the product of general common sense and experience, being highly generic features. As such, the court concluded there was no basis for the claim.

In Miguna v Walmart Canada et al, 2016 ONCA 174 the Ontario Court of Appeal considered the appellant’s claim that the respondents had violated copyright in his book. Believing that his book had been published without his permission and was being sold via Walmart’s online portal, the appellant brought an action against the publisher for primary infringement, and against Walmart for secondary infringement.

The motion judge, relying on Euro Excellence Inc v Kraft Canada Inc., 2007 SCC 37, considered the elements required to evidence secondary infringement—namely, whether the work was reproduced without the author’s consent (primary infringement) and whether a person that sells an unauthorized reproduction should have known they were dealing with the product of copyright infringement (secondary infringement). Concluding that there was no evidence that either respondent copied the plaintiff’s book (that is, that there was no primary infringement), the motion judge held that the appellant’s copyright had not been violated.

In its review of the case, the Court of Appeal concluded the motion judge’s findings of fact were supported by evidence and entitled to deference; as such, it dismissed the appeal.

In Société québécoise de gestion collective des droits de reproduction (Copibec) c. Université Laval 2016 QCCS 900, the Quebec Superior Court considered Copibec’s application for class certification on behalf of several authors, publishers and copyright management companies regarding unauthorized copying done at the university. Laval argued that its use of the works constituted fair dealing under the Act and did not, therefore, violate the class members’ rights.

The court denied the class certification request, holding that conducting the appropriate fair dealing assessment would necessarily require the court to decide whether each reproduction of each work constituted fair dealing in the specific context of that work and the reproduction made. In that light, collective determination would not practically be possible. (For a different approach to this issue, see the discussion under the heading “Decisions of the Copyright Board” below.)

The court also ruled that Copibec was not suitable to represent the class, since it did not hold copyright, moral rights, or publishing rights of any of the class members’ works. Accordingly, Copibec did not have sufficient legal interest to advance the claim on  behalf of the class.

In Canadian Standards Association v PS Knight Co. Ltd., 2016 FC 294, the CSA argued that the defendant had breached copyright in its electrical code by reproducing substantial parts of it in a commentary it prepared regarding the code.

In reply, the defendant advanced a variety of arguments, including most notably that:

• the CSA did not own copyright in the code, since the code was incorporated by reference into a variety of statues and copyright therein was therefore owned by the Crown;
• the defendant enjoyed a license to publish the code, and that CSA attempts to unilaterally revoke the license were invalid;
• in any event, their activities amounted to fair dealing for research and private study and/or an educational purpose, and therefore did not constitute copyright infringement.

These arguments were all rejected by the court. As it concerned fair dealing, the court noted that effectively 100% of the code was being reproduced, and any dealing in such circumstances can never be fair. Additionally, the court noted that since the defendant’s version of the code is a competitive commercial undertaking, any claims that the reproduction is being made for educational purposes have no merit.

Both a permanent injunction and delivery up were ordered; statutory damages in the amount of $5000 were also awarded.

The question of whether historical facts enjoy any copyright protection was revisited in Maltz v Witterick, 2016 FC 524.  There, a group of filmmakers brought suit against an author who developed a book based upon the same subject matter reflected in the filmmakers’ earlier documentary. In fact, the plot and all main characters from the documentary appear in the book, and the author acknowledged the documentary as the source of her inspiration for the book in several public interviews.

The court held that while the documentary as a whole was protected by copyright, the defendant only made use of the historical facts reflected in the documentary, and not the filmmakers specific form of expression of those facts. Being settled law that there is no copyright in facts, the court concluded they do not form a part of a work’s originality—and as a result, there was no substantial taking of any original part of the plaintiff’s documentary by the book’s author.

Though unsuccessful, the filmmakers raised an interesting argument encouraging the court to distinguish between ‘large facts’ and ‘small facts.’ In particular, while the filmmakers were willing to concede that there was no copyright in the ‘large facts’ of history (for example, that the Second World War formally commenced due to German aggression against Poland), in contrast ‘small facts’ (which made up the bulk of the story told in the extremely personal documentary, and by extension the book inspired by it) ought to be protected, given the significant efforts required to uncover them. The filmmakers pointed out that this approach is broadly reflected in principles relating to academic plagiarism, and argued it ought to apply in the copyright context as well.

The court rejected this proposition, denoting that any distinction between large and small facts would be artificial and arbitrary, confirming, there “can be no copyright in facts or ideas, but only in their expression through an exercise of skill and judgement” (at para. 32).

Biocad Médical Inc. c. Panthera Dentaire Inc., 2016 QCCS 3096, dealt with two pieces of software—and in particular, the plaintiff’s claims that similarities between them were due to the copying of the plaintiff’s software by the defendants, who were former employees.

The court’s analysis appropriately focused on the distinction between idea and expression, and confirmed that software source code was, eligible for copyright protection. However, the court also noted that commonplace elements of software programs are not protected by copyright; similarly, in circumstances where an idea cannot be separated from its expression, copyright protection will likewise not apply, as to hold otherwise would be to award a monopoly over the idea itself.

With those principles in mind, the court concluded in this case that while some segments of the defendant’s source code were substantially similar to the plaintiff’s source code, for the most part those similarities did not relate to copyright protectable elements owned by the plaintiff. And for those similarities relating to portions of the plaintiff’s source code where copyright did subsist, in the court’s view those portions did not amount to a “substantial part” of the plaintiff’s software. Accordingly, the claim was dismissed.

The decision in 1395804 Ontario Ltd. dba Blacklock’s Reporter v. Canada (Attorney General), 2016 FC 1255 is  another in a series of cases relating to an Ottawa-focused new service called Blacklock’s Reporter, which provides its digital content to subscribers for a fee.  Emboldened by its success in a small claims proceeding in 2015 (discussed in last year’s edition of this work), Blacklock’s continued in similar claims against a variety of government agencies, alleging their copyright infringement through their reproduction and distribution of articles appearing in the publication.

In this particular instance the target was the Department of Finance, who, in their defence, argued that the internal acquisition and distribution of two articles from the publication amounted to fair dealing, obviating Blacklock’s infringement claims.

After careful consideration of the facts the court concluded that the Department had circulated the articles for a true research purpose in a manner that was, on balance, fair, owing in part to the facts that:

• the articles were initially obtained through legal and appropriate means by a paid subscriber;
• the articles were received by the Department unsolicited, and used for legitimate business purposes;
• the articles’ distribution inside the Department was modest in scope, and the articles were not republished or otherwise used for a commercial purpose;  and
• the articles represented only a small fraction of Blacklock’s total news copy.

Interestingly, Blacklock’s had itself argued that a deliberate breach of the terms applicable to access and use of the subject material would be a relevant consideration in assessing the overall fairness of the dealing. While the court agreed in principle, it concluded that Blacklock’s had failed both to bring its terms to the attention of subscribers sufficiently, and to express those terms without ambiguity.  As such, the court construed these failures against Blacklock’s, giving no weight to the purported breach of terms in the fair dealing analysis.

The court therefore dismissed the claim.

6.     Damages

AB+ Publications Inc. v Sze, 2016 QCCQ 1497 was focused upon an author’s copyright interest in an entrance exam. The defendant purchased a digital copy of the plaintiff’s exam and posted it on her website, in violation of Canadian copyright law and of a prohibition against such reproductions that was a term of the purchase. The defendant did not participate in the litigation.

Unsurprisingly, the court found the defendant had violated the plaintiff’s copyright and awarded $5000 for lost sales, $1000 for the plaintiff’s trouble and inconvenience, and a further $1000 in punitive damages.

In Chung c Brandy Melville Canada Ltd., 2016 QCCQ 2735, the court awarded $5000 in damages against a retail store who had used a photographer’s images in unauthorized applications. In particular, the photographer agreed to provide the store with some photos at no charge, provided he was given certain attribution and the photos were only used on certain social networking sites. However, the store subsequently decided to use one of the photos for other promotional purposes, including attaching it to every bag given to purchasers at one of its retail locations.

The court concluded that the photographer’s copyright and moral rights had been infringed, and made the denoted award.

Similarly, Parent c Gagnon 2016 QCCQ 3744 also concerned the inappropriate use of photos. Here, the defendant posted six of the plaintiff’s photographs on his website without permission; the plaintiff sought statutory damages under section 38.1 of the Act.

In considering the appropriate award, the court elected to fix damages at $300 per photo, noting that the violation occurred in good faith, for non-commercial purposes, that the defendant recognized the plaintiff’s rights and took the photos down after receiving the plaintiff’s demand letter, that only 39 people had visited the defendant’s website after the photos were posted, and that the plaintiff had suffered no other actual harm.

In Microsoft Corporation v Liu, 2016 FC 950, the Federal Court awarded $50,000 in statutory damages and $40,000 in costs for a single reproduction of five of the plaintiff’s computer programs. The court also awarded a further $50,000 in punitive damages.

The defendant was in the business of building and repairing personal computers. In 2013, the plaintiff hired a private detective to purchase a computer from the defendant, as it suspected the defendant was infringing copyright in its software. Indeed, in response the plaintiff offered to sell the private investigator a computer he had loaded with five of the plaintiff’s computer programs, which programs were stored on a separate hard drive. The defendant indicated to the investigator he did not have licenses for the software.

The investigator returned in 2015 and purchased a refurbished computer with the same software from an employee of the defendant; the employee had been given the hard drive by the defendant.

Perhaps unsurprisingly, the court found the defendant infringed the plaintiff’s copyright by loading the software onto the computer sold to the investigator in 2013. But the court did not hold the defendant responsible for the 2015 transaction, concluding that the plaintiff did not show that the defendant had sufficient control over the employee to establish joint or vicarious liability for the sale. While the plaintiff had provided the hard drive to the employee, following CCH, the court held that mere provision of equipment that can be used to violate copyright is not sufficient to establish liability for its subsequent use.

The damage award is perhaps higher than might have been expected because in committing these infringements, the defendant was both in breach of two prior settlement agreements with the plaintiff, and of an injunction. Giving these considerations great weight, the court acknowledged a need for denunciation and deterrence, and awarded a further $10,000 in punitive damages for each of the infringements.

Piechnik v McFarlen, 2016 BCPC 245 concerned the defendant’s use of four of the plaintiff’s photographs on his website. The plaintiff had taken the photographs for use on a website he was developing for the plaintiff. When a dispute arose between the parties regarding that website, the defendant acquired a new website and uploaded the photos both to it and his Facebook profile. When the plaintiff informed him he was infringing copyright through the reproduction of the photos on the new website and on Facebook, he immediately removed them.

The plaintiff sought to rely on section 38.1(1)(a) of the Act, which contemplates a statutory damage award of $500 to $20,000 for all infringements of a work made for commercial purposes. The plaintiff asserted eight instances of infringement: four infringements on the defendant’s webpage, and four on the defendant’s Facebook page. The court observed that section 38.1(1)(a) has previously been interpreted to mean damages of $500 to $20,000 for each work, “regardless of how many times or in how many places the work was published by the infringer” (at para. 25). As such, the court found there had only been four compensable infringements.

In turn, the defendant pointed to section 38.1(3), which permits the court to award an amount lower than $500 when there is more than one work in a single medium, after assessing all the relevant factors. The court concluded that the defendant had not acted in bad faith (having removed the photos as soon as he understood he was infringing), and that there was no need to deter others from breaching the copyright in question. As such, the court adjusted the total compensable amount downward, to $500 in aggregate.

The court in Royal Conservatory of Music v Macintosh (Novus Via Music Group Inc.), 2016 FC 929 was largely seized with questions of contractual interpretation, but it did make some interesting comments on copyright. The central issue was whether the applicant had granted the respondent a license to publish a series of its books. The court concluded it had not, and that the respondent had infringed the applicant’s copyright through publication.

The respondents asserted that the applicants, in bringing the action,  were engaged in ‘copyright misuse’—an equitable defence to copyright infringement that appears to be gaining some traction in American intellectual property law. Copyright misuse is meant to apply when a copyright holder exercises their copyright beyond the scope of the rights granted by the law-maker, and in a manner that violates the public policy goals of copyright law. The court noted that the doctrine is not yet well-developed in Canada, and ultimately concluded that it was not applicable on the facts of this matter.

As regarding the appropriate damage award, the applicant claimed that the infringements were commercial in nature; the respondent instead argued that because the applicant was a not-for-profit educational institution, their sales of the plaintiff’s books were inherently non-commercial. The court rejected the respondent’s argument, holding the books had been sold for a commercial purpose. Still, the court ultimately awarded damages on the lowest end of the commercial scale: $500 per work, for a total of $10,500, attributing the infringement to errors in book-keeping and rights management on the part of both parties.

In Whyte Potter-Mäl c. Topdawg Entertainment Inc., 2016 QCCQ 11725, the court awarded damages against a defendant for issuing a false copyright takedown notice against the plaintiff. Here, the plaintiff’s song was removed from YouTube and SoundCloud for two months after the defendants reported that the plaintiff was infringing their copyright. Only after the plaintiff hired a lawyer was his song reinstated on social media.

In response, the plaintiff brought this action, arguing that the ‘false report’ negatively impacted income and reputation; the defendants did not contest the proceeding. The court awarded $5000 for moral and economic damages, and an additional $1000 in punitive damages against each of the three defendants.

In Thoi Bao Inc. v. 1913075 Ontario Limited (Vo Media), 2016 FC 1339, the applicant sought a declaration and an injunction enjoining the respondent from operating a website it asserted infringed upon their copyright. Interestingly, the matter was settled prior to the hearing as regarding Vo Media and all other respondents; as such, the hearing considered only the personal culpability of the owner of Vo Media, Mr. Vo.

The applicant was a Vietnamese news service; Mr. Vo was a former employee of the applicant who established a website with a domain name and content closely resembling the applicant’s website. Mr. Vo offered no responding evidence in his defence.

The applicant claimed Mr. Vo infringed its copyright under section 27(1) of the Act by broadcasting two of the applicant’s programs on its website. The court confirmed that as the first author and broadcaster of the content, the applicant was the copyright owner—and, since the broadcast from the Vo Media website occurred without authorization, there was a violation of the applicant’s copyright.

In awarding damages, the court lifted the corporate veil of the respondent, holding Mr. Vo personally responsible to pay damages to the applicant since he had engaged in “a deliberate, wilful and knowing pursuit of a course of conduct that was likely to constitute infringement or an indifference to the risk of infringement, as opposed to the direction of the company in the ordinary course of [Mr. Vo’s] relationship to it” (at para. 16).

As such, the court awarded $25,000 for copyright and trademark infringement, and a permanent injunction enjoining Mr. Vo from broadcasting the applicant’s content.

7.     Injunctions

In Vancouver Aquarium Marine Science Centre v Charbonneau, 2016 BCSC 625, the court was faced with a motion for an interlocutory injunction on the plaintiff’s contention that the defendant’s reproduction of a number of segments of video owned by the plaintiff violated copyright.

The defendant had produced a documentary about the plaintiff’s aquarium, which included a number of videos shot by the plaintiff’s employees and other third parties subject to the plaintiff’s photo policy. The plaintiff sought an interlocutory injunction prohibiting the defendant from displaying those video clips in its documentary until the matter was decided at trial.

From the copyright standpoint, the defendant attempted to rely on the non-commercial user generated content exemption, in addition to a claim of fair dealing for research, education, criticism and review purposes.  Not wholly persuaded by any of these arguments, the court concluded that the defendant’s use of the video segments was a triable issue. Further, the court accepted the applicant’s claims that damages would not be an acceptable remedy if the applicant was successful at trial. In that context the court granted the injunction, finding that a balance of convenience would be struck by having the defendant remove the allegedly infringing segments from the video until trial.

VMedia v. Bell Canada and Bell Media Inc., 2016 ONSC 7273, examined whether internet rebroadcasters who hold broadcast licenses are entitled to protection under section 31 of the Act, which, historically, has allowed cable companies to rebroadcast the content of local TV signals without paying a royalty to the owners of those signals or the content expressed by them.

Here, the applicant sought an order that they were not infringing copyright by rebroadcasting the defendant’s content via the internet to users of a proprietary set-top box, asserting they were entitled to exercise the same rights as the cable companies under the legislation.  The court did not agree.

To understand why, one must consider the history of retransmission broadcasting under the Act. Prior to the advent of cable companies, in order to broadcast in Canada a person required two licences: (i) a licence under the Broadcasting Act; and (ii) a licence from the copyright holder of the content they wished to broadcast.

Then the technology developed and cable companies emerged, able to acquire over-the-air TV signals and rebroadcast them to customers through a fixed wire or cable. Parliament responded by introducing section 31 into the Act, which effectively provided that cable companies would not require a licence from local TV companies to rebroadcast their content; only the licence under the Broadcast Act was required for lawful operation.

With the advent of the internet, Parliament had to consider whether internet broadcasters should be eligible for the same ‘compulsory licence’ as the cable companies. Instead, it elected to exclude these ‘new media retransmitters’ from section 31 application, in effect obliging them to obtain a licence from each copyright holder whose content they wanted to rebroadcast.

This particular case turned on whether the plaintiff was rightly considered a ‘new media retransmitter’, even though it held a license under the Broadcast Act. Under the Act, a ‘new media retransmitter’ is a person whose retransmission is lawful under the Broadcast Act ‘only’ by reason of an exemption order issued by the CRTC. The applicant argued its broadcast license ought to be viewed as technology agnostic—and through that lens, its activities weren’t lawful only because of the exemption order, but because of its broadcast license.

As such, the applicant asserted it was not a ‘new media retransmitter’ for the purposes of the provision, and pursuant to section 31 it was entitled to rebroadcast the signals without a further license from rights holders.

The court disagreed, concluding that the applicant’s internet services were lawful only because of the ‘new media retransmitter’ exemption. As such, the court dismissed the application and granted the respondent a declaration that the applicant was violating their copyright, enjoining the applicant from continued rebroadcast.

Also in the new media space, in Bell Canada et al v 1326030 Ontario Inc. dba ITVBox.net et al, 2016 FC 612, the Federal Court granted an interlocutory injunction against makers of set-top boxes that contain software enabling users to access streamed content through various websites.

The plaintiff broadcasters claimed that by providing these products, the defendants breached the broadcasters’ sole right to broadcast and copy the content in question. In reply, the defendants tried to rely on section 2.4(1) of the Act, which carves out an exemption for persons who only provide the means for the telecommunication necessary to communicate a work.

The court rejected this argument, holding the plaintiffs had deliberately encouraged the users of their product to breach the plaintiff’s copyright by advertising it as a means to cancel cable subscriptions. In the court’s view, doing so went ‘above and beyond’ providing a means of telecommunication, and prima facie, infringed the plaintiff’s copyright.

Finding that the plaintiff’s had established the elements for an injunction, the court granted an order enjoining the defendants from configuring, marketing and selling the set-top boxes, and permitted the plaintiffs to serve that order on other retailers of similar products.

D.     Copyright Board

In February, the Copyright Board issued a decision titled Reprographic Reproduction, 2010-2015, outlining the royalties payable by elementary and secondary level education institutions (aside from Quebec) for the reproduction of books, newspapers and magazines in the repertoire of Access Copyright. Coming some two years after hearing oral arguments in the matter, and some seven years after the tariff was initially filed, the 176-page decision is an important one for Canadian copyright—particularly in the contexts of fair dealing and non-substantial copying.

The Board set the royalty rate at $2.46 per student per year for the period 2010-2012, and $2.41 per student per year for the period 2013-2015. These rates are far lower than what Access Copyright had originally proposed—namely, rates of $15 per employee for 2010-2012 and $9.50 for 2013-2015, later revised to $13.69 and $9.50 per student per year, respectively. In this light, the Board’s decision is yet another setback for Access Copyright, who received a similarly challenging decision from the Board in 2015 regarding the rates payable by provincial and territorial governments for the copying of literary works by their employees (see Reproduction of literary works, 2005 – 2014, discussed in last year’s edition of this work).

In their efforts to assess the appropriate tariff, the parties agreed to rely upon a 2006 study examining the nature and scope of copying in the K-12 context. From that, the Board concluded that only two types of copying—namely, copying for administrative and for entertainment purposes—was unfair, warranting the payment of royalties. This assessment resulted in the exclusion of most of the copying done, setting aside 97.2% of copying from books, 98.1% from newspapers and 98.5% from periodicals from the application of the royalties.

The Board then grappled with how best to assess whether an act of copying encompassed a ‘substantial part’ of a work, thereby infringing the rights provided the copyright holder pursuant to section 3 of the Act. The Board agreed with Access Copyright’s assertions that such an assessment should not be merely quantitative in nature, but should consider qualitative factors as well.

However, the Board further found that such an approach would not be possible in every instance—and in particular, it could not be used in this case, where there was insufficient evidence about each reproduced work, about the skill and judgement used to create those works, and about the nature of the portion taken.  As such, the Board was left with a quantitative analysis: for books, this typically meant that the taking of more than one-to-two pages would be substantial; the taking of newspaper and magazine articles would also be substantial, given the inherently shorter nature of those works.

Access Copyright filed for judicial review of the decision, which was heard by the Federal Court of Appeal in November, 2016.

The author would like to acknowledge the helpful assistance of Brent Grunenberg, an articled student with Clark Wilson LLP, in preparation of this article.