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2021 Year in Review: Canadian Copyright

February 11, 2022

By: François Larose, Naomi Zener, Tamara Céline Winegust, William Audet, Adam Aucoin, and Mitchel Fleming

For Copyright Law in Canada, 2021 will likely be seen as a year that sowed the seeds of development in this area—from forward-looking government consultations on emerging issues in Copyright, like Artificial Intelligence; to a long-awaited Supreme Court decision that saw now-retired Justice Abella pen unanimous reasons forecasting how Courts should approach fair dealing; to Courts sanctioning claims that represent novel approaches to copyright enforcement in Canada, including inducement to infringe, reverse class actions, and dynamic site-blocking orders.

Below are some of the most notable Copyright developments in Canada from 2021, including links to our articles on these developments and decisions written throughout the year.     

1) COPYRIGHT LEGISLATION AND PARLIAMENTARY ACTION

In 2021, the Federal Government launched three separate consultations on potential changes to the Copyright Act: (a) on how to implement an extended general term of protection; (b) on a framework for online intermediaries; and (c) on a framework for artificial intelligence and the internet of things. Several bills that directly or indirectly could affect the Copyright Act were also introduced into Parliament. They are discussed below.

A – Consultation on How to Implement an Extended General Term of Copyright Protection in Canada

This year we reported on the Federal Government’s launch of its consultation for the planned implementation of its Canada–United States–Mexico Agreement (CUSMA) commitment to extend Canada’s copyright protection term from “life plus 50 years” to “life plus 70 years”. The consultation sought feedback on the consequences of such an extension and suggestions on how to address those consequences. In our 2020 Copyright Year in Review, we reported on the Federal Government Canada–United States–Mexico Agreement Implementation Act S.C 2020, c.1 extended the term of copyright protection for sound recordings, anonymous and pseudonymous works, and cinematographic works to life of the author plus 70, 75 or 100 years, as the case may be, in accordance with the Canadian Government’s obligations under CUSMA. The consultation on the extension for the general copyright term closed on March 31, 2021.

B – Consultation on a Modern Copyright Framework for Online Intermediaries

The Federal Government launched this consultation on April 14th, 2021 to ensure the continued relevance of Canada’s copyright framework for online intermediaries in the face of rapidly developing technological and market changes. We reported on potential options for reform canvassed during the consultation. This included clarifying intermediaries’ safe harbour protections, compelling remuneration through collective licensing, increasing transparency in remuneration processes, and clarifying and/or strengthening enforcement tools against online infringement.

C – Consultation on a Modern Copyright Framework for Artificial Intelligence and the Internet of Things

In 2021, the Federal Government launched a consultation for the development of a copyright framework to address the impacts of the proliferation of artificial intelligence (“AI”) and the Internet of Things (“IoT”), which we reported on. This consultation primarily sought comments on text and data mining, authorship and ownership of works generated by AI, infringement and liability in relation to AI, the right to repair, technological protection measures, and interoperability. AI—a general-purpose technology with widespread economic and social impacts—and the IoT—the term used to refer to an interconnected web of software-enabled products—are profoundly changing how Canadians do business, innovate, and distribute cultural products. Their proliferation will likely require a re-evaluation of the balance in copyright law to help foster a marketplace suited to the changing needs of users while preserving creators’ rights to encourage investment and job creation. The consultation closed on September 17, 2021.

D – Bill C-10

Bill C-10: An Act to amend the Broadcasting Act and to make related and consequential amendments to other Acts was tabled in Parliament on November 3rd, 2020,  and included amendments to the Copyright Act, The amendments included new definitions of “programming,” “undertaking,” “new media” and “retransmitter,” as well as elements considered by many to be controversial, including discoverability and other requirements imposed on streaming platforms and CRTC oversight of user-generated content.  Bill C-10 died on the order sheet when Parliament was dissolved on September 20th, 2021, in anticipation of the Federal Election. The Federal Liberal government has expressed an intention to reintroduce the Bill in 2022.

E – Bill S-225

We reported on Bill S-225: An Act to amend the Copyright Act (remuneration for journalistic works), which proposed copyright reforms to address challenges faced by the news media sector, specifically by providing Canadian journalistic organizations with a right to remuneration (to be managed by a collective society) for certain digital distributions of their works as a means to combat these organizations declining advertising revenues. While the Bill targeted platforms such as Google and Facebook, it exempted hyperlinks from its scope of application (which is the primary way the platforms targeted by the Bill provide access to news articles). Bill S-225 has not yet received First Reading in the 44th Parliament.

F – Bill C-272

We reported on Bill C-272: An Act to Amend the Copyright Act (diagnosis, maintenance or repair), which proposed amendments to the prohibition of circumvention of technological protective measures (“TPMs”) provisions in the Copyright Act. The proposed amendments would have created an exception to permit diagnosis, maintenance, or repair of a product with an embedded computer program. Bill C-272 has not yet received First Reading in the 44th Parliament. 

2) CASE LAW DEVELOPMENTS

A – Fair Dealing

York University v. Canadian Copyright Licensing Agency (Access Copyright) 2021 SCC 32: In 2011, York University implemented “Fair Dealing Guidelines”, and took the position that such guidelines excused the copying of works by its students and staff for educational purposes; thus, there was no need to enter into a licence with Access Copyright and pay for copies of works in that collective’s repertoire. Whether York’s position had merit was the subject of much debate throughout the appeal process, and many hoped the Supreme Court would provide a definitive answer. They did not – and the decision instead turned on whether licenses obtained through the Copyright Board were mandatory (they are not). However, Justice Abella nevertheless devoted a fair portion of space outlining the Court’s preferred approach to fair dealing, including suggestions of how the fair dealing category of “education” ought to be interpreted in the future, positioning her final decision for the Court as one that is likely to guide future developments in fair dealing jurisprudence. For our full analysis of the decision, click here.

Canadian Broadcasting Corporation v. Conservative Party of Canada, 2021 FC 425

This Federal Court decision established that fair dealing for the purpose of criticism and review need not provide a critique of the copyrighted work used so long as its use supports the overarching hypothesis of the work in which it is included. It has the potential to impact how documentary filmmakers employ copyrighted works in their films. Prior to this decision, Canadian jurisprudence held that to meet the requirements of criticism and review, the copyrighted work in use must be critiqued and analyzed. Furthermore, the Court held that for attribution of the source and author, the inclusion of the CBC’s logo was sufficient to meet the attribution and source requirements under the Copyright Act, which changes the attribution requirements for criticism and review and news reporting fair dealing where the copyright owner’s logo is sufficiently recognizable. For our full article on the decision, click here.

Stross v. Trend Hunter Inc., 2021 FC 955

The decision considered the attribution requirements for a dealing with a copyrighted work to qualify as “fair” in the context of news reporting. The Federal Court held that if an author and the source of a work can be readily identified or inferred from the source, the attribution requirements for “news reporting” could be met; but the attribution requirements would not be satisfied if additional research is required (e.g. clicking through hyperlinks) to determine the author and source of the work. For a full summary of the case, read our article here.

B – Emerging Approaches to Copyright Enforcement

Bell Canada v. L3D Distributing Inc. (INL3D), 2021 FC 832

On a recent ex parte default judgment motion in the Federal Court of Canada, the Court determined the Plaintiffs established, inter alia, a claim that the Defendants knowingly induced copyright infringement through the advertising and sale of pre-programmed set-top boxes for streaming alleged pirated content. Such cause of action is not squarely found in the Copyright Act. This decision may be the first application of a common law inducement test—regularly applied in the context of patent law—to an instance of copyright infringement. For a full summary of the decision, click here.

Teksavvy Solutions Inc. v. Bell Media Inc., 2021 FCA 100

The Federal Court of Appeal unanimously affirmed a site-blocking order issued by the Federal Court requiring Teksavvy Solutions Inc. and several other Canadian ISPs to block their customers from accessing websites (in this case, goldtv.biz and goldtv.ca) that stream infringing content. The decision confirms the availability of “static” site-blocking orders aimed at combating copyright infringement, and that such orders can be updated to account for subsequent circumvention tactics. For our full article on the decision, click here.

Rogers Media Inc. v. John Doe 1, 2021 CanLII 107613 (FC)

The Plaintiffs in this case had requested an interlocutory injunction requiring Canadian ISPs to block or attempt to block the unauthorized streaming of hockey games, which remedy would have amounted to what is known as a “dynamic blocking order”. Unlike a static blocking order—which specifies domain names and IP addresses to be blocked (granted in Teksavvy Solutions Inc v. Bell Media Inc)—a dynamic blocking order of the type sought by the Plaintiffs’ would require ISPs to actively block or attempt to block users’ access to unauthorized material in real-time without specific judicial authorization relating to each domain name or IP address. Such an order has never been granted in Canada. The Samuelson-Glushko Canadian Internet Policy & Public Interest Clinic (“CIPPIC”), and Beanfield Technologies Inc. (“Beanfield”) sought leave to intervene. In this decision, the Court granted the intervener request. In doing so, they noted that CIPPIC’s intervention would bring a unique public interest perspective based on its institutional role and knowledge and its prior intervention experience; and Beanfield’s intervention would be limited to issues relating to the distinct technical configuration and network architecture implications of the order. 

Salna v. Voltage Pictures, LLC, 2021 FCA 176

The Federal Court of Appeal set aside the Federal Court’s 2019 decision in Voltage Pictures, LLC v Salna, 2019 FC 1412 to decline certification of a proposed “reverse class action” for copyright infringement over a BitTorrent network. The Appellate Court’s decision dealt primarily with whether the Federal Court committed a reversible error when it rejected the five class certification criteria. Of note, this decision leaves the door open to copyright holders bringing claims that users of BitTorrent sites have authorized infringement via using the technology, and that rightsholders may be able to use the “notice-and-notice” regime to have internet service providers contact customers identified as Defendants in a proceeding. The decision ultimately confirms that “reverse class actions” may allow copyright owners to address infringement by thousands of individual acts where the relief available against a single infringer or in respect of a single infringement may not justify investing the resources necessary to obtain it. For our full summary of the case, see our article here.

Trimble Solutions Corporation v. Quantum Dynamics Inc., 2021 FC 63

We previously reported on the Federal Court’s decision to embrace the use of antipiracy technology to enforce property rights. In this decision, the Federal Court assessed damages for copyright infringement in a computer program based on an infringement report generated by antipiracy software. Please see our article here.

August Image, LLC v. airG Inc., 2021 FC 272

This Federal Court decision dealt with accusations of copyright trolling and defending against statutory damages claim based on a Plaintiff’s conduct. In this appeal of a prothonotary decision, the Federal Court found a palpable and overriding error in the prothonotary’s grant of August Image’s motion to strike portions of the Statement of Defense that dealt with a “copyright troll” and alleged professional misconduct by the Plaintiff’s counsel. The prothonotary found no material facts supporting the Defendant’s “copyright troll” claim. The Federal Court also held that section 38.1(5)(b) of the Copyright Act permitted the Defendant to defend against a statutory damage claim by pointing to the Plaintiff’s conduct early in the proceedings. This finding was based on the discretion given to the Court by the Act to award statutory damages on the basis of the conduct of the parties before and during the proceedings, which may include the actions of corporate officers or employees and encompass actions taken on a party’s behalf by counsel. The matter was remitted back to the prothonotary to determine whether the impugned paragraphs of the Statement of Defense could be amended in accordance with the Court’s reasons.

C – Copyright Board Licenses and Tariffs

York University v. Canadian Copyright Licensing Agency (Access Copyright), 2021 SCC 32

Access Copyright is a copyright collective representing creators and publishers who own copyrighted works in Canada. York University had entered into license agreements with Access Copyright to pay for students to copy works in Access Copyright’s repertoire. In 2011, York opted to forego a license, and instead implemented its own “Fair Dealing Guidelines”. The Supreme Court’s decision considered whether a tariff set by the Copyright Board was mandatory and could be enforced against the University, and included substantive comments about the Court’s approach to fair dealing (the particulars of the University’s Guidelines were not considered). Writing for a unanimous Supreme Court,  now-retired Justice Abella held that while the Copyright Act did set out a license regime, it was not mandatory—users could choose whether to participate and contract. Moreover, Access Copyright lacked standing to sue for copyright infringement as they were neither the copyright owners nor the exclusive licensees of the copied works. For our full analysis of the decision, click here.

SODRAC 2003 Inc. v. CBC, 2021 CB 1

The Copyright Board found that archival copies do not infringe copyright on the basis of fair dealing. SODRAC 2003 Inc. (the Applicant) applied to the Copyright Board to fix royalty rates for the CBC’s reproduction of musical works in the Applicant’s repertoire. Of concern were the royalties payable for use of the musical works in “broadcast incidental copies” (BICs), namely those made for radio and television broadcasts (conventional and Internet). In setting the Tariff, the Board determined that each BIC would be categorized as either: (1) exempt, (2) exempt if CBC meets certain conditions; and (3) non-exempt. The Board decision is noteworthy because it held that the Archive Copies made by CBC did not infringe copyright as they constituted “fair dealing” for the purposes of “private study”, “research” and “education”—and thus fell into the “exempt” category. In particular, the Board found that Archive Copies of television broadcasts were “fair dealing” because they: (1) are made for the purpose of preserving culturally important programming for posterity (the business use is secondary), (2) copy  a small volume; (3) can only serve their purpose if the entire works are preserved; (4) cannot be made in any other reasonable manner; (5) are copies of works intended for public consumption; and (6) have no negative effect on the dealing because they don’t compete with the original works.

Rogers Communications Canada Inc. v. Society of Composers, Authors and Music Publishers of Canada (SOCAN), 2021 FC 207

This decision of the Federal Court is the latest step in a long history of litigation over royalty payments for downloadable ringtones. It confirms that notwithstanding the Supreme Court of Canada’s decisions in Entertainment Software Association v. Society of Composers, Authors and Music Publishers of Canada, 2012 SCC 34 (“ESA”) and Rogers Communications Inc v. Society of Composers, Authors and Music Publishers of Canada, 2012 SCC 35  (“Rogers”), telecommunications companies are not entitled to repayment from SOCAN (the Society of Composers, Authors, and Music Publishers) of royalties paid with respect to communicating downloadable mobile phone ringtones under certified tariffs and settlement agreements entered into prior to the Supreme Court’s decision. Moreover, telecommunications companies that withheld payments owed to SOCAN under such certified tariffs or settlement agreements were required to pay the amount withheld to SOCAN, with interest. For our full article, click here

D – Scope of Copyright Protection

Winkler v. Hendley, 2021 FC 498 

The Federal Court of Canada confirmed the longstanding principle that facts are part of the public domain and free to use by all—even when they are later claimed to be fictional. In Winkler v. Hendley2021 FC 498 (“Winkler”), Justice McHaffie held that historical facts held out as true (in this case, held out as true for nearly 70 years and based on “unimpeachable sources”) are not protected by copyright, regardless of their objective truth, even if some of the “facts” were later determined to be of the author’s own creation. Consequently, the Defendant’s copying of (untrue) facts for his own book based on the same events did not amount to a taking of a “substantial part” of the original portion of the Plaintiff’s work and was not copyright infringement. For our full report on the decision, click here.

Patterned Concrete Mississauga Inc. v. Bomanite Toronto Ltd., 2021 FC 314

The Federal Court granted this motion for summary judgment in favour of the Plaintiff (“Patterned Concrete”) in the context of a copyright infringement action against its competitor (“Bomanite”). Patterned Concrete asserted copyright in a quotation form, a contract form, and a limited warranty certificate developed for its business. It sought statutory damages for past infringement under section 38.1 of the Copyright Act, punitive damages, and an order enjoining the defendant from infringing copyright in the asserted works. For our full summary of the decision, see our article here.

Toronto Regional Real Estate Board v. IMS Incorporated (Motion to Strike) & 2021 FC 1239

After the Case Management Judge granted the Defendant’s motion to strike the Plaintiff’s (Toronto Regional Real Estate Board (“TRREB”)) claim for copyright infringement for no reasonable cause of action and abuse of process, the Plaintiff moved to appeal under Rule 51 of the Federal Courts Rules. The Federal Court upheld the decision on the basis that the Federal Court of Appeal had already decided that copyright does not subsist in TRREB’s MLS System in a separate and earlier decision (See Toronto Real Estate Board v Commissioner of Competition, 2017 FCA 236). For a full summary of the decision, click here. In addition, click here for our report on TRREB’s other recent litigation.

Ark Innovation Technology Inc. v. Matidor Technologies Inc., 2021 FC 1336

Ark Innovation Technology Inc. and Ark Platforms Inc. (the “Plaintiffs”) claimed that Mr. Lam and Matidor (the “Defendants”) infringed copyright in the Plaintiffs’ Arkit map-based project management software and promotional materials, as well as engaged in passing off. The Defendants admitted that their Matidor software had infringed copyright in the Arkit software and various associated promotional and logistical works, at one point in time. However, they contested whether the most recently updated version of their software infringed Ark’s copyright. The Defendants admitted that their Matidor software was premised upon using the Arkit source code and released a publicly accessible version, but claimed their later versions of Matidor did not copy the Plaintiff’s source code. The Court ultimately found that all versions of the Matidor software infringed copyright in the Arkit software. The Court awarded $277,400 in damages; however, the Plaintiffs’ claims for a $900,000 “at large” damages award and punitive damages were rejected. The Court explained that “at large” damages means that there is no distinction between damages for copyright infringement and for passing off. The Court noted that its ability to grant damages at large does not excuse the Plaintiffs from their obligation to prove damages. Further, it clarified that “damages at large” does not necessarily mean “large damages,” and that the assessment of compensatory damages remains an assessment of the damage caused and/or profits gained by the infringement. in rejecting the punitive damages claim, the Court found the intentional copying was not malicious enough to warrant an exemplary award. Finally, the Court ordered the Defendants to deliver up infringing material and enjoined them from further infringement of copyright. However, the Court refused to enjoin the Defendants from making further substantial use of the Arkit software on the ground that it would have precluded the Defendants from using software that did not infringe copyright in the Arkit software.

E – Interlocutory Injunctions

Allarco Entertainment 2008 Inc v. Staples Canada ULC, 2021 ABQB 340

This case involved several distinct claims by the Plaintiff, Allarco Entertainment 2008 Inc., against four major retailers who were alleged to be “fanning the flames of piracy” through the promotion and sale of TV set-top boxes and advising on how to modify such devices to access pirated content. The Court held that the Plaintiff failed to prove that the interests of justice dispensed with the statutory requirement under section 41.23(2)(c) of the Copyright Act of adding the copyright owners as parties to the main action. The Court also denied the Plaintiff’s motion for an interlocutory injunction to stop the Defendants from selling and promoting the TV set-top boxes. For a full summary of the decision, click here.

F – The Court’s Jurisdiction and Procedures

Pourshian v. Walt Disney Company, 2021 ONSC 4840

Damon Pourshian is a Toronto-based Sheridan film student. He commenced a copyright infringement lawsuit against The Walt Disney Company, Pixar, and several other defendants for copyright infringement of his film INSIDE OUT. In 2021, Pourshian partially succeeded in an appeal to continue his case against various of the US-based Defendants. The Appellate Court found that the Master made various legal errors in its 2020 decision, including failing to apply the requisite test in determining whether the defendants had a “real and substantial connection” to Ontario, and ultimately concluded the Ontario court had jurisdiction over six of the eight US defendants. For our complete summary of the case, click here. For our report on the earlier decision, click here.

Dunn’s Famous International Holdings Inc. v. Devine, 2021 FC 64

In this Federal Court decision, the Plaintiff’s failure to prove authorship or ownership of the works at issue led to an outright dismissal of its copyright claims. The Court held that plaintiffs claiming copyright infringement must show a clean chain of title to ownership of the copyright in the work at issue, or they will lack standing to sue under the Copyright Act. For a full report on the decision, click here.

TBV Productions, LLC v. Doe, 2021 FC 181

This Federal Court decision confirms that where an ISP fails to forward a notice of infringement to the alleged copyright infringer, the rightsholder should seek damages from the ISP by way of a separate action and not by way of a motion in the action against the alleged infringers. For our article on the decision, click here.

F.1 – Contempt of Court

2021 saw a number of contempt proceedings brought against defendants to copyright actions, and Courts issuing contempt orders, including (in one instance) jail.

Canadian Standards Association v. P.S. Knight Co. Ltd., 2021 FC 770

The Federal Court found the Respondents, P.S. Knight Co. Ltd. (Knight Co.) and Mr. Gordon Knight, as well as a related company, PS Knight Americas Inc. (the “Respondents”) in contempt of court for breaching, or assisting others to breach, the terms of a previously issued judgment. The Applicant, Canadian Standards Association, alleged that since October 2020, the Respondents resumed reproduction, distribution and sales of infringing publications through a newly incorporated entity, Knight Americas, contrary to the terms of the judgment, in which Knight Co. was found to have infringed CSA’s copyright in its 2015 edition of the Canadian Electrical Code, Part I, and in a deliberate, bad faith attempt to circumvent the injunction. Where a person interferes with the orderly administration of justice, or to impair the authority or dignity of the Court, they will be found in contempt of court. The Court was satisfied that the evidence established beyond a reasonable doubt that the Respondents had violated the Judgment, and that Mr. Knight, as the sole directing mind of both Kinght Co. and Knight Americas, should be held in contempt as the responsible officer along with both organizations.

Warner Bros. Entertainment Inc. v. White, 2021 FC 989 & 2021 FC 996

The Federal Court (FC) companion decisions in Warner Bros. Entertainment Inc. v. White (Beast IPTV), 2021 FC 989 and 2021 FC 996 showcase how a defendant’s change in conduct can affect the disposition of contempt charges for non-compliance with an interim order issued in a copyright litigation. For our report on the decision, click here.

Dish Network L.L.C. v Shava IPTV Network LLC, 2021 ONSC 1582

The Plaintiff sought declarations holding the Defendants, Imran and Naeem Butt, in contempt of a copyright and trademark infringement judgment. The underlying litigation involves the Defendants sale of set-top boxes and subscriptions, including to people in Ontario. The Defendants conceded that they contravened the judgment but disputed the extent of the contravention. The Court found the Defendants’ contempt to be far more widespread than what the Defendants admitted to. The judge, on her own initiative, raised a question regarding the court’s jurisdiction over Defendant Naeem considering that he has lived in Germany since 2018. The Court found a sufficiently real and substantial connection to Ontario to give the Court jurisdiction over the contempt issue based on the sale of set-top boxes and subscriptions to individuals in Ontario. In addition, Defendant Naeem was also found to have used a Canadian hosting company to stream the infringing channels. Accepting that Internet-related offences may be committed from anywhere in the world, the Court stated that the concept of territorial jurisdiction may require some elasticity when dealing with copyright and trademark infringements via the Internet.

G – Copyright Infringement in Quebec

Gadbois c. 2734-3540 Québec inc., 2020 QCCQ 11186

The sculptor and painter Marc Gadbois (the “Plaintiff”) sued 2734-3540 Quebec Inc. (the “Defendant”), an organization that has operated an exhibition of Quebecois artists since 1989, for infringement of the Plaintiff’s painting. The dispute arose when the Defendant photographed one of the Plaintiff’s sculptures presented at an exhibition in 1995 and later used the photograph in an invitation sent to current members of the exhibition in 2017. The decision reaffirms that it is prudent to obtain the rightsholder’s written consent to avoid relying on oral testimony. For our full report, please read our article here.

Quintcap inc. c. I. Quint Group Inc., 2021 QCCS 1932

This case involved a dispute between former affiliates with competing websites, the owner of Quintcap (the “Applicants”) and his nephew, the owner of Groupe Quint (the “Respondents”). In the decision, the Court held there is no difference between a draft and final version of a work when both are copied and made publicly available. The Respondents argued that the initial version of Groupe Quint’s website in 2015 was only a draft, published to allow management to make changes, and that it was never “officially” launched despite being accessible to the public. As for the final two sites, the Respondents claimed that the copied photographs were removed upon request. The Respondents also argued that there was only one instance of copyright infringement: the borrowed texts which formed a single body of work and appearing only in one section. While the infringing material was removed upon request by the Applicants, the infringing materials were used during Groupe Quint’s launch and was only removed from one of the two sites. This decision provides helpful guidance for: (1) content creators, reconfirming that there is copyrighting in all original versions of a work: and (2) web content creators, making clear one should avoid using copyrighted photos as placeholders during the development of a website, and websites under development should not be publicly available and remain offline until the works included therein have been used under license or a valid exception to copyright infringement.

Bouchard c. Ikea Canada, 2021 QCCS 1376

In Bouchard, the Superior Court of Québec dismissed a copyright infringement claim brought by a Canadian artist against IKEA on the basis that her action was clearly unfounded and had no reasonable chance of succeeding. Since 1970, the Plaintiff has been creating plush toys based on children’s drawings, mainly her own children’s. In 1995, Ms. Bouchard approached UNICEF with a project to sell plush toys from children’s drawings, but UNICEF ultimately declined. In 2014, IKEA revamped its fundraising campaign aimed at providing quality education to vulnerable children living in poverty in developing countries. IKEA invited children from around the world to submit drawings as part of an international competition. The winning drawings became patterns for plush toys made by IKEA, and proceeds from the sales of these toys were then donated to various organizations including UNICEF. In her application, the Plaintiff was claiming that IKEA had stolen her idea of creating derivative works (i.e., plush toys) from children’s drawings. In a pre-trial examination, the Plaintiff admitted that her toys did not resemble IKEA’s and that she had no evidence that IKEA had access to her work. The Court found that the Plaintiff was seeking to assert a copyright over an idea (i.e., a non protectable element under copyright law) and held that her claim was doomed to fail and frivolous. The Court dismissed the application in its entirety.

Lavigne (Valmedia) c. 9061-6632 Québec inc., 2021 QCCQ 13322

Emmanuel Lavigne (Valmedia) (the “Applicant”), a professional photographer and videographer, alleged that 9061-6632 Québec inc. (Journal Accès) (the “Defendant”) infringed his copyright and moral rights by publishing an edited version of his photographs without authorization. The Applicant sought damages of $5,000 per photograph, for a total of $15,000, as well as an order requiring the Defendant publish a formal apology and a copy of the judgment. The Defendant plead ignorance, but subsequently offered to publish an erratum.

The Court held that there was no infringement of the Applicant’s copyright; however, there was a violation of the Applicant’s moral rights in two of the photos. The Court found that the Applicant offered four types of licenses to clients. The three photographs in dispute were found to be subject to a “community” license which allowed, for a small consideration, the distribution of the work in any mode, without time limit provided any reproduction retained the Valmedia logo. While the reproduction of all three of the Applicant’s works were found to be covered by the community license, the omission of the Valmedia logo constituted an infringement of the Applicant’s moral rights. The Court noted that the editorial discretion claimed by the Defendant did not allow it to erase credits added to the works. However, cropping the photos for publication and changing the colours of the photos did not violate the right to the integrity of the work under the criteria of 28.2 of the Copyright Act – otherwise, the court would “expose distributors, printers and newspapers to damage” if their reproduction was not completely identical to the original work.

After taking into account the factors enumerated under section 38(5) of the Copyright Act, the Court granted the Plaintiff damages in the amount of $400. The Court declined to order publication of an erratum on the basis that, as the Small Claims Division of the Court of Quebec, it lacked jurisdiction to issue injunctive orders.

Agence du revenu du Québec c. Unidisc musique inc., 2021 QCCA 393

The Quebec Court of Appeal held that the Court of Quebec erred in law by concluding that the Respondent, Unidisc Musique Inc., acquired no rights upon its purchase of master recordings in the context of tax assessments issued by the appellant, Agence du revenu du Québec. Pursuant to the purchase agreement for master tapes, the Respondent acquired all rights and interests in the tapes, including the physical discs and all neighbouring rights. The purchase agreement also stipulated that all royalties were to be paid to the composer and publisher on reproduction and sale of the recordings. The Court of Appeal found that the agreement was clear that the Respondent obtained both the tangible rights and the intangible rights arising from section 18 of the Copyright Act (copyright in sound recordings).  The lower court thus erred by ignoring the contractual provisions describing the sale of neighbouring rights, and equating the copyright protected under sections 3, 13, and 15 of the Copyright Act with all the intangible rights described in the Act, including section 18, to find Unidisc only acquired the physical tapes.

Choko c. Munden, 2021 QCCA 786

Alexandre Choko (the Appellant) promised Fraser Munden and Michael Glasz (the Respondents) permission to film the boxer Mike Tyson and use the footage for a documentary in exchange for the Respondents’ promise to film the Appellant for the purposes of the Appellant’s own promotion. However, the Appellant told the Respondents that Tyson’s wife had requested that they assign copyright in the Tyson footage to the Appellant as an assurance to Tyson and a precondition to filming. This request was contained in a chain of e-mail correspondence, where the Appellant asked the Respondents to include language confirming that the Appellant would personally own the Tyson footage, which the Respondents agreed to with great reservation. The parties later signed a short-form assignment agreement confirming the language in the e-mail correspondence. When it became clear that the Appellant would not be able to obtain Tyson’s permission, the Respondents demanded payment for damages. At trial, the Court found for the Respondents, invalidating the assignment based on fraud by the Appellant and declaring that one of the Respondents owned the Tyson footage. On appeal, the invalidation of the assignment was upheld. The Court of Appeal relied on subsections 13(3) and (4) of the Copyright Act that presumes the author is the first owner of the work, and found no employment relationship or written assignment to rebut the presumption, respectively. The Court of Appeal rejected the Appellant’s arguments that the Respondents confirmed the assignment in the short form contract and that the Respondents had ceded their copyright interest to “have an experience”. Ultimately, the Court of Appeal found no palpable and overriding errors in trial court’s findings.

Content shared on Bereskin & Parr’s website is for information purposes only. It should not be taken as legal or professional advice. To obtain such advice, please contact a Bereskin & Parr LLP professional. We will be pleased to help you.

Author(s):

François Larose François Larose
B.A.A., LL.L., LL.M.
Partner
514.871.2109  email François Larose
Tamara Céline Winegust Tamara Céline Winegust
B.F.A., J.D.
Associate
416.957.1651  email Tamara Céline Winegust
William Audet William Audet
LL.B., J.D.
Associate
514.871.2931  email William Audet