A.   Introduction

This article reviews material developments in Canadian legislation, case law, and practice in the area of copyright in 2018. 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 – 2019”.

B.   Law and Policy

The past twelve months were relatively busy ones in the copyright realm. While there were some key and interesting judicial pronouncements, the driver of the current (and anticipated!) activity stems from recent and prospective legislative changes. These flow from a statutorily mandated review of the Act, but also from trade agreements to which Canada has acceded in the last year. There are also implications flowing from Canada formally adopting a National Intellectual Property Strategy.

We expect more formal legislative activity to continue next year as a result of these policy factors. Furthermore, some of the more interesting cases from 2017 are still making their way through the appeal process, and so we may still return to these next year as well.

But that’s for next year; for now, let’s start our review of 2018 with a look at developments on the policy and legislative side.

1.     5-Year Review of the Act

In March, the Standing Committee on Innovation, Science and Economic Development (the “Committee”) announced it was launching its 5-year review (the “Review”) of the Act on behalf of Parliament, as required under s. 92 of the Act. While this was expected to originally begin in 2017, some slippage in the Parliamentary calendar occurred, as noted in last year’s article. The Review is planned to be conducted in three phases. The first and second phases were completed in 2018, and the third phase is expected to be completed in early 2019. The purpose of the Review is to hear perspectives from interested individuals and organizations from across the country with a view to improving the copyright legislative framework and keeping the Act current as technology evolves.

Phase I consisted of testimony from persons representing specific sectors such as publishing, visual arts, software and telecommunications. In Phase II, the Committee heard from stakeholders involved in multiple sectors including Indigenous communities and various interest groups. Finally, in Phase III, the Committee will conduct interviews with individual academics and lawyers, and professional associations. Individuals or groups from across Canada were also invited to submit written briefs and feedback on the Act to the Committee, and stakeholder organizations were busy in highlighting points of concern on behalf of their memberships.

In support of the Review, the Committee has also invited the Standing Committee on Canadian Heritage to conduct a study on remuneration models for artists and creative industries, being of particular concern in a global and increasingly digital economy.

The results of the Review and any proposals for legislative changes will become available (we expect) sometime in 2019, and so stay tuned for next year’s article!

2.     Anticipated Legislative Changes Due to Trade Treaties

On January 23, 2018, Canada and 10 other countries concluded negotiations on the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (“CPTPP”), following the withdrawal of the United States from the Trans-Pacific Partnership (the “TPP”) in January of 2017. The CPTPP contains a comprehensive chapter on intellectual property, which is intended to set minimum standards in the Asia-Pacific region for the protection and enforcement of intellectual property rights.

The final text of the CPTPP incorporates the original text of the TPP by reference; however the signatories to the CPTPP agreed to suspend a number of intellectual property provisions contained in the TPP to better reflect the interests of the remaining parties. With respect to copyright, the CPTPP suspended TPP obligations:

• extending the term for copyright protection to 70 years after the author’s death (which Canada appears obliged to do under a separate agreement with the United States, discussed below);
• requiring internet service providers (“ISPs”) to cooperate with copyright owners and take action to deter the unauthorised transmission and storage of copyrighted materials;
• requiring treatment of copyright payments to be no less favourable to other signatory nations than national treatment; and
• creating criminal procedures and penalties with respect to circumventing technological protection measures (aka “digital locks”) and rights management information (aka “digital watermarks”).

There is no indication when or if the suspension of these provisions will end, or if the suspension will become permanent.

On September 30, 2018, Canada reached a free-trade agreement with the United States and Mexico (the “CUSMA” or, as referred to in the United States, the “USMCA”) which is intended to replace the current North American Free Trade Agreement. The agreement still needs to be domestically ratified in each country, and is not expected to come into force until at least mid-to-late 2019.

The CUSMA covers a range of intellectual property issues in its chapter 20—though the Act already meets or exceeds most of those requirements. The most significant expected amendment to copyright law, which was found in the original TPP text, would increase the term of copyright protection in a work from 50 to 70 years following the author’s death. Canada has up to 2.5 years from the date the CUSMA comes into force to make this amendment to the Act. Also notably, Canada will not be required to amend its “notice-and-notice” regime for ISPs under s. 41.25 of the Act to the US-style “notice-and-takedown” regime.

3.     A National IP Strategy & Bill C-86

On April 26, 2018, the Government of Canada unveiled its National Intellectual Property Strategy (the “Strategy”). The 2017 Federal Budget dedicated $85.3 million over five years to the implementation of the Strategy. A part of the Strategy is dedicated to the consideration of intellectual property law reforms.

One area of reform under the Strategy sought to reduce alleged abuse by copyright owners and their agents under the “notice-and-notice” regime in s. 41.25 of the Act. This section currently provides that an owner of copyright may send a notice to an ISP where the owner alleges an infringement of copyright by an internet user. The ISP must, in turn, provide the notice to the user of the alleged infringement. Stakeholders expressed concern that the regime was being abused by some copyright owners who would make demands, using language seen as threatening, to coerce the recipient into a settlement. The sending of a notice, of course, did not establish that infringement had occurred or that the recipient was liable for it. The Strategy calls for revisions to the provision to prevent the copyright owner from including settlement demands or other threats in the notice.

On October 29, 2018, the Government of Canada tabled the omnibus budget bill C-86, which introduced the amendments to s. 41.25 of the Act contemplated by the Strategy. The bill also introduced amendments to the Act intended to modernize the framework under which the Copyright Board of Canada (the “Board”) operates, flowing in part from the consultations for reform to the Board discussed in last year’s article. Bill C-86 received royal assent on December 13, 2018.

 C.   Case Law

The discussion below encompasses a selection of interesting copyright cases from 2018. For the most part, the discussion excludes ‘copyright’ cases that are only notable for reasons other than copyright—i.e. for developments in law relating to civil procedure, administrative review, or otherwise.

1.     Subject Matter and Originality

Evans v. Discovery Communications LLC, 2018 FC 1153 involved a plaintiff (“Evans”) who made the rather novel claim of “non-literal copyright infringement” in relation to “the scientific content of the works only and not to the story” (para 11). Evans did not allege that the defendant (“Discovery”), copied all or parts of his novel, but rather that Discovery’s television program copied the “scientific content.” Evans presented a detailed analysis of both works showing the similarities in the topics and themes. Discovery made a motion for summary judgement dismissing the action.

In the result, Justice Zinn of the Federal Court explained that there is no copyright in ideas, and it is only in the expression of ideas. He concluded that Evans’ claim of “non-literal copyright infringement” could only mean that he was asserting infringement on his ideas. Further, even if there was some similarity between the works, there was not substantial similarity in the expression of these ideas – while both works may have covered similar topics, they were presented in entirely different scenes. The motion for summary judgement in favour of Discovery was granted as the court concluded that there was no genuine issue for trial.

The appellants (“Knight”), in P.S. Knight Co. Ltd. v. Canadian Standards Association, 2018 FCA 222 sought to set aside Justice Manson’s decisions in Canadian Standards Association v. P.S. Knight Co. Ltd., 2016 FC 294 and 2016 FC 387 (the “Trial Judgements”). In the Trial Judgements, Justice Manson of the Federal Court held that Knight infringed the copyright owned by the Canadian Standards Association (“CSA”), an independent not-for-profit organization, in the 2015 CSA Electrical Code (the “Code”) when Knight reproduced the Code in its entirety and offered it for sale.

The Code is a set of voluntary electrical safety standards related to equipment maintenance, many of which have been incorporated by reference into various federal and provincial statutes. Knight is the publisher of the Electrical Code Simplified, which is a competing product of the Code. After a commercial dispute between Knight and the CSA, in 2016 Knight created an identical copy of the 2015 Code and offered it at 1/3 the price charged by the CSA. In the Trial Judgements, Justice Manson ordered Knight to deliver all infringing copies of the Code to the CSA, granted an injunction, and awarded statutory damages of $5,000 and costs of $96,336.

The primary basis of Knight’s appeal was that because the Code had been incorporated by reference into various statutes, it had become the law, and a person cannot own copyright in the law. Knight further argued that all Canadians should have access to the law, and therefore there should be no copyright in the law for public policy reasons. In the alternative, Knight suggested that if the Code is subject to copyright, that copyright belongs to the Crown pursuant the Crown prerogative. Knight made a further alternative argument that Justice Manson erred in his application of the test for fair dealing.

Knight relied on several American decisions for the proposition that the Code was not subject to copyright. However, American copyright legislation specifically provides that there is no copyright in federal statutes or regulations. The Federal Court of Appeal held that the American authorities referred to by Knight were not relevant in Canada. The Act provides no similar prohibition; instead, s. 5 provides that copyright subsists “in every original literary, dramatic, musical and artistic work.” The court also held that public policy concerns over access to the law do not arise when the argument is raised by a party seeking to protect its commercial interest in selling a copy-cat version. Further, in the court’s view, public policy actually favours recognizing CSA’s copyright as the collaborative process for developing the Code which is then incorporated into laws at all levels of government is “is an example of cooperative federalism at its best.” (para 90).

While the Act is binding on the Crown, s. 12 preserves its rights and privileges recognized at common law, including the Crown prerogative which allows it to publish works of a legislative nature. However, only the Crown may raise the Crown prerogative, and it is not available as a defence to another party.

As for the fair dealing defence put forward, the court held that while Knight may have met the allowable purpose part of the test, it failed on the second part of the test set of whether the dealing was fair. This is to be considered as per the six factors of “the purpose, character, and amount of the dealing; the existence of any alternatives to the dealing; the nature of the work; and the effect of the dealing on the work” (para 163, quoting from Society of Composers, Authors and Musical Publishers of Canada v. Bell Canada, 2012 SCC 36, the factors as set-out in CCH Canadian Ltd. v. Law Society of Upper Canada, 2004 SCC 13 (“CCH”)). The analysis of the court showed that each of the factors militated heavily against the dealing being fair, and the court held that Justice Manson made no error in its application of the fair dealing test.

2.     Ownership and Assignments

1586091 Ontario Ltd. v. Waffle, 2018 ONSC 3943 was an appeal of a trial decision of the Ontario Superior Court, which dismissed an action where 1586091 Ontario Ltd. (“RHED”) claimed damages against Robyn Waffle (“Waffle”) for infringement of copyright. RHED had entered into a contract for services with The Templar Hotel Corporation (“Templar”) which included a term that any intellectual property created by RHED for Templar remained the property of RHED until all accounts were paid. Waffle had been employed by Templar, and continued employment with the mortgagee (“CVC”), which took possession of the Templar Hotel when Templar went bankrupt. RHED alleged that Waffle infringed its copyright when creating new logos for the Templar Hotel after CVC took possession.

The trial judge found that RHED failed to prove Templar had not paid all its accounts, following which payments copyright ownership would pass to Templar. On appeal, Justice Swinton of the Divisional Court found no palpable and overriding error in the trial judge’s reasons, and dismissed the appeal on the merits.

Geophysical Service Incorporated v. EnCana Corporation, 2017 ABCA 125 was discussed in last year’s article. In brief, in that case, the court concluded the Crown could lawfully collect and redistribute certain seismic data collected by Geophysical Service Incorporated (“GSI”): though GSI owned copyright in the material, that copyright was encumbered by the provisions in the statutory regime which permitted GSI to operate. Seemingly displeased with that decision, Geophysical Service Inc. v. Canada, 2018 FC 670 saw GSI bring a new action seeking compensation for what it calls the “de facto expropriation of its intellectual property rights” (para 1) due to that statutory regime. The Federal Court quickly struck this claim by GSI as disclosing no reasonable cause of action. It explained that the underlying action determined that the intellectual property rights in the seismic data were created by the various statutes in issue; as such, the copyrights were encumbered from the moment they were created, so GSI never fully owned the rights and could not complain of the expropriation of rights it did not own in the first place.

Johnson v. Rakhmanova, 2018 ONSC 5258 saw two self-represented litigants before the court, singing from different songbooks. The plaintiff (“Johnson”) was a music producer who collaborated on several recordings with the defendant (“Rakhmanova”). After the recordings were made, Johnson refused to sign a joint publishing and master recording contract to recognize Rakhmanova’s contributions—following which Rakhmanova informed Johnson that he no longer had her consent to use her melodies and recorded lyrics in the songs. At this point, one of the recordings (“Recording 1”) had already been digitally released. Johnson, without notice to Rakhmanova, obtained copyright registrations for Recording 1 in Canada and the United States. Subsequently, he digitally altered Recording 1 and re-released it as a second version (“Recording 2”) without giving any attribution to Rakhmanova.

When Rakhmanova learned of the release of Recording 2 as well as the copyright registrations, she made a number of allegedly defamatory posts about Johnson on various social media platforms. Johnson commenced proceedings seeking damages for libel and interference in economic relations, punitive damages and a permanent injunction. Johnson failed to appear to argue his case on a number of occasions, and Rakhmanova brought a cross motion to dismiss the proceeding as frivolous and without merit.

The Ontario Superior Court found that Rakhmanova authored the title, melody and lyrics to Recording 1, and pursuant to s. 13(1) Act, she was the copyright holder of those elements. Johnson’s copyright registration of Recording 1 did not grant him the right to use those elements in Recording 2 without her consent (of course, a copyright registration provides a rebuttable presumption of ownership—however, as this matter was not before the Federal Court, the court could not order rectification of the Copyright Register). Further, by using these elements without attributing them to Rakhmanova, Johnson had infringed on her moral rights to the work contrary to s. 14.1(1) of the Act. Given these findings on the copyright issue, the court held that most of the social media posts by Rakhmanova were truthful and justified, and Johnson’s claim with respect to those posts were dismissed as lacking merit and frivolous (claims with respect to other posts being dismissed on the basis, inter alia, that they related to the US registration and the proper venue was the US).

Milano Pizza Ltd. v. 6034799 Canada Inc., 2018 FC 1112 was a motion for summary judgement before the Federal Court on a number of claims related to a dispute between the owners of a group of restaurants  known as Milano pizzerias, and the purchasers of one of those restaurants. The Defendants had purchased one Milano pizzeria location in 2002, and operated it under that name while maintaining a cordial business relationship with the owners of the Plaintiff company until sometime in 2013. At that point the business relationship soured, and the Plaintiff purported to revoke an alleged licence agreement giving the Defendants the right to use registered trade-marks and copyrights owned by the Plaintiff related to Milano pizzerias. (You could say they no longer wanted to share the pie, but that might be cheesy.) When the Defendants refused to discontinue using the marks and works, the Plaintiff commenced an action claiming, inter alia, copyright infringement, and the Defendants sought summary judgement dismissing all claims.

On the copyright claim, the Plaintiff alleged the Defendants infringed its copyright in the MILANO design mark. While trade-marks and logos are considered artistic works for the purposes of s. 5 of the Act, the court noted that it was established in Kantel v. Grant, [1933] Ex. C.R. 84 that copyright protection does not extend to ideas and is confined to their expression. The court held that, even if believed, the evidence of the Plaintiff only goes so far as to establish that one of the principals of the Plaintiff company provided the idea behind the MILANO design mark to a graphic designer, and did not create it himself. Further, even if the Plaintiff’s principal had personally authored the mark, the Plaintiff did not put forth any evidence that the principal assigned his copyright to the Plaintiff as required by s. 13(4) of the Act. As such, the named Plaintiff could not demonstrate it owned copyright in the mark, and there was therefore no genuine issue for trial on this issue. To the extent this action was framed as a claim in copyright, it was dismissed.

The Plaintiffs in Glasz c. Choko, 2018 QCCS 5020 were a pair of young documentary filmmakers who found themselves in a brawl over some boxing footage: they believed they were the owners of footage (the “Footage”) of former professional boxer, Mike Tyson (“Tyson”). The Defendant was a boxing promoter and author who had assured the Plaintiffs he could get them access to Tyson. In order to make this assurance, the Defendant had told the Plaintiffs they had to send him an email assigning the rights to the Footage to the Defendant as a condition imposed by Tyson (the “Assignment”). The Plaintiffs’ understanding was this was simply to appease Tyson, and would not be enforced by the Defendant. In fact, the Quebec Superior Court found, Tyson had never requested this condition at all.

Several disputes arose between the parties when the Plaintiffs refused to turn over the Footage. The Defendant made several threats against the Plaintiffs, legal and otherwise. The Plaintiffs sought either a nullity of the Assignment or to have it declared revoked.

The court noted that the Plaintiffs are presumed to be the owner of the copyright in the Footage as the authors of the work pursuant to s. 13(1) of the Act. While the Plaintiffs did purportedly assign their copyright to the Defendant, the Assignment was induced by a misrepresentation of the Defendant on an essential condition, and was therefore held void in accordance with provisions of the Civil Code of Quebec, SQ 1991, c. 64.

Further, there was no consideration given for the Assignment, so even if valid, the court held it could be revoked the by Plaintiffs at any time. The Defendant put forth the novel response that the experience of meeting Tyson was the consideration. Justice Conte rejected this argument, stating that “every creative work can arguably be said to involve an experience, such that, there would never be a need to remunerate the author for the assignment of copyright in his work” (para 67).

3.     Infringement and Fair Dealing

Next up: Goldi Productions Ltd. et al v. Adam Bunch (Court File No: 15-5800—thanks to John Simpson of Shift Law for making a copy of this decision available through Alan Macek’s IPPractice website; summary reported in 296 A.C.W.S. (3d) 827).  This is an unreported decision of the Ontario Small Claims Court, where the plaintiff John Goldi (“Goldi”) went to battle with Adam Bunch (“Bunch”) alleging Bunch had infringed on his copyright in certain war photos and stories displayed on Goldi’s internet museum website. These photos were discovered by Goldi during his research on the Boer War, and enhanced for display online. Goldi marked the photos as copyrighted. Bunch had reproduced some of these photos and accompanying information in an article on his internet blog, and attributed the source to Goldi. Goldi’s claim for damages included lost revenue in the amount of $3,356.10, punitive damages of $5,000 for Bunch’s refusal to remove the photos, and special damages of $15,000 to as compensation for Goldi’s inability to exploit his own work to produce a book.

Bunch counter-attacked with claims that Goldi did not own the copyright in the photos or the reproduced information, or alternatively, that his use constituted fair dealing pursuant to s. 29 of the Act. The court found (relying on CCH) that copyright protection did not extend to facts or ideas, and therefore Goldi did not own the copyright in the facts of the stories displayed on his website (it appears that what was copied was facts per se, and not the expression of the story, though this is not entirely clear in the decision).

With respect to the photos, s. 5 of the Act only gives copyright protection to “original” works. Relying again on CCH, the court noted that for a work to be original within the meaning of the Act, it must be more than a mere copy and requires the skill and judgement of the author. Goldi submitted that he had to source the original photos, take his own photographs of those photos, and then use a computer program to digitally enhance them. The court concluded at para 16 that this was a “purely mechanical process” as described in CCH, and therefore the photos on Goldi’s website were not original works. From this it followed that Goldi did not own copyright in them, and consequently, there can be no infringement of his rights.

With respect to the alternative argument: while not necessary for disposing of the case, the court found that fair dealing under the Act had also been made out. The court, however, did not engage in an in-depth analysis of the CCH factors for fair dealing; rather it accepted that fair dealing “should be applied to this situation where the purpose of the article of […] was to promote history” (para 21).

4.     Damages

Paragon Testing Enterprises Inc. v. Lee, 2018 BCSC 634 tested infringement claims made by the plaintiff (“Paragon”) in its rights in certain test preparation materials, as well as the registered trade-marks “CELPIP” and a design in the shape of a leaf, all of which were used in connection with the provision of English language proficiency training and testing. Paragon’s testing program is approved by Immigration, Refugees and Citizenship Canada and relied on by Canadian governmental agencies. The defendant (“Lee”) had instructed a person to take the course offered by Paragon for the express purpose of obtaining and copying Paragon’s materials for resale and reuse in his own test preparation business. Lee further disclosed Paragon’s test questions and formulated template responses for his students, which compromised Paragon’s ability to test English language proficiency. Default judgement had previously been granted against Lee after he failed to respond to the proceeding in the British Columbia Supreme Court; this application was for determination of relief following the default judgement. On the copyright aspects, Paragon sought its damages and a disgorgement of profits pursuant to s. 35(1) of the Act, injunctive relief and punitive damages (the trade-mark aspects are not considered in this article).

Justice Baker was satisfied that Paragon had proved damages of $18,495.20 for the costs of its investigation into the matter, and incurred further damages of $62,301.34 to replace the compromised questions (for a combined total of $80,796.54 in damages). Paragon was not entitled to damages for lost textbook sales, as that would amount to double recovery after taking the disgorgement of profits into account.

Justice Baker gave a passing grade to Paragon’s estimate of $78,880 as Lee’s revenue from infringing activities, finding the estimate reasonable, and noting Lee had failed to appear on the application to give evidence of any costs or expenses incurred to earn that revenue. As per s. 35(2) of the Act, Paragon was only required to prove revenues from the infringement and it was up to Lee to prove costs (i.e. to get to profits). As such, Paragon was found to be entitled to disgorgement of deemed profits in the full amount of $78,880.

Sections 34 of the Act provides for injunctive relief in addition to damages. The court held that “Paragon is entitled to injunctive relief because Lee has demonstrated a complete disregard for the rights of Paragon” (para 41).

Paragon was further awarded $15,000 in punitive damages as a result of Lee’s “dishonest and deliberate” (para 48) conduct.

In Andrew Collett v. Northland Art Company Ltd. et al, 2018 FC 269, Andrew Collett (“Collett”) alleged the defendant (“Northland”) infringed copyrights and moral rights in his photographic works. Collett had provided Northland prints of his works for the purpose of resale early in the summer of 2011. Collett’s relationship with Northland began to break down after the sale of Northland to Nicholas Tamburi (“Tamburi”) in September 2012, and in November 2013, Collett informed Tamburi that Northland was no longer authorized to distribute or sell any of his works. Collett alleged that after November 2013, Northland infringed his copyrights and moral rights in six different photographic works, as well as his website and biography pages. Collett sought statutory damages under s. 38.1(1) of the Act in the amount of $20,000 per infringement, damages in the amount of $60,000 for the infringement of his moral rights, and aggravated and punitive damages in the amount of $100,000.

After hearing from both parties, Justice Gleeson of the Federal Court generally found the picture provided by Collett’s to be more credible, while considering Tamburi’s statements to be far more blurry, describing them as “evasive and argumentative” (para 37) and even “incredible” (para 51). Ultimately, the court found that infringement of moral rights occurred with respect to one work (“Photo 1”), and infringement of copyright occurred with respect to a number (though not all) of the works at issue. Of note, it was not entirely clear in the reasons whether copyright infringement of certain webpages was made out due to a reproduction of their content, or whether it was the mere linking to these that satisfied the court that infringement had occurred. No doubt, the court’s finding that Northland’s conduct was “flagrant and deliberate” (para 61) for one of the works, and in any case “intentional conduct [with] a disregard for the rights of the copyright holder” (ibid) entered into the court’s overall assessment.

On infringement of moral rights, the court found that Northland had intentionally attributed Photo 1 to someone else contrary to s. 28.1 of the Act, but the court did not consider arguments as to Collett’s right to the integrity of the work pursuant to s. 28.2 of the Act (Collett had argued that the infringements were “of lower resolution and inferior quality” (para 35)). By implication, damages would flow from the infringement from one moral right, but are not necessarily compounded by an infringement of multiple moral rights, though this may have factored into the court’s overall assessment on damages.

The Act identifies the factors a court is to consider when assessing statutory damages in s. 38.1(5) of the Act, and here the court was of the view the infringements were for commercial purposes. Thus, the court had regard to the particular factors in ss. 38.1(5)(a) to (c). Mr. Justice Gleeson found that each of the factors were aggravating in relation to Northland’s conduct as a whole, and especially so with respect to the infringement of the copyright in Photo 1. He found that (i) as regards the good of bad faith of the infringer, the reproduction was flagrant, deliberate and clearly in bad faith, (ii) as regards the conduct of the parties before and during the proceedings, that Northland failed to comply with filing and payment timelines throughout the litigation process, and (iii) as to the need for deterrence in respect of the copyrights in question, there was a clear need in this case to deter the defendants from future infringements given the apparent ease they were able to infringe on this work with modern technology. Justice Gleeson assessed the maximum allowable statutory damages under s. 38.1(1) of the Act in the amount of $20,000 in respect of the deliberately copied and falsely attributed Photo 1, and a combined further $25,000 for the remaining infringements (awarding $10,000 as against one work, and $7,500 in respect of two others). Cumulatively, this led to statutory damages of $45,000.

The court made a further award of $10,000 for the infringement on Collett’s moral rights with respect to Photo 1. The court held that punitive damages were also appropriate in this case to address the objectives of retribution and denunciation, noting that the range of punitive damages for individuals of $15,000-$100,000, set out in Microsoft Corporation v. Liu, 2016 FC 950, would also be of “assistance” in this case involving a corporate defendant (para 75). While the upper end of the range, being the $100,000 sought by Collett, was found to be excessive in the circumstances, a significant punitive damages award of $25,000 was set, in addition to costs being awarded.

D.   Select Decisions of the Copyright Board

In early 2018, the Board released its decision regarding a request made the previous year by the Royal Canadian Mint (the “RCM”), pursuant to s. 77 of Act, seeking a licence to reproduce the image of the Angel of Victory sculpture (the “Sculpture”) on  a collector coin. The Sculpture was created by Mr. Cœur de Lion McCarthy. Three castings of the Sculpture were erected in 1921 for Canadian Pacific Railway at three of its train stations across the country. The statues were located in public places and have been seen by thousands of people over the years. Both the properties on which the statues were located and the statues themselves have changed ownership at least once and possibly several times.

The RCM was unable to locate the artist in order to obtain this licence directly. Under s.77 of the Act, the Board may grant a licence to use, inter alia, a published work in which copyright subsists if the Board is satisfied the applicant has made reasonable efforts to locate the owner without success. Ultimately, the Board handed not victory but defeat to the RCM, concluding that it could not grant the licence in this case because the Sculpture is not a “published work” as required under s. 77 of the Act.

In reaching that conclusion, the Board considered and rejected two arguments about whether the Sculpture was a published work. The first was that the statues have been located in public places for many years. While s. 2.2(1) of the Act defines publication as “making copies of a work available to the public,” it expressly excludes “the exhibition in public of an artistic work.” Thus, this argument could not sustain that there was a “published work”.

The second more novel argument was that the copies were made available to the public when the train stations in which they were located were made available for sale. The analogy used was that photographs included in a book for sale constitute the publishing of the photographs, despite the primary object of the sale being the textual work. However, the Board found the general scheme of the Act and the legislative intent appeared to limit situations where artistic works should be considered to be published. In addition to s. 2.2(1) of the Act, s. 2.2(2) states that “the issue of photographs and engravings of sculptures and architectural works is not deemed to be publication of those works”. Further, while the photograph-in-a-book analogy may intuitively include publication, “this intuition does not extend to the situation where, for example, a book is located on the premises of a property that is sold” (para 14).

The Board therefore held at para 15 that “the sale, or offer for sale, of copies of the work, as part of the sale, or offer for sale, of the properties on which they were contained did not constitute publication of that work.” On this basis, the Board concluded it had no jurisdiction to grant a licence pursuant to s. 77 of the Act.

The author would like to acknowledge the guidance of Jeffrey Vicq, a previous author of this annual article and a partner in Clark Wilson LLP’s Intellectual Property and Technology Law groups. The author would also like to acknowledge the helpful assistance of Scott McLeod, an articled student with Clark Wilson LLP, in preparation of this article.