Contributed By Wilson Lue LLP
The earliest statutes governing copyright in Canada in the 19th century included both Canadian and British Acts, which were supplanted by the Copyright Act, 1921. The 1921 Act was modelled on the British Copyright Act of 1911; while amendments were made from time to time, substantial changes to the Copyright Act only began in the late 20th century as the Act was updated to reflect changing technology and new obligations defined by free trade agreements. The Act was also gradually expanded to include neighbouring rights such as performing rights, and to reflect the use of collective societies. Most recently, the Act has been amended to expand user rights, and to address modern technological issues such as encryption and network services.
Canadian copyright is statutory in nature, and is governed by the federal Copyright Act, RSC 1985, c. C-42. Various regulations have been enacted under the authority of the Copyright Act concerning implementation details such as registration, record-keeping, royalties, definitions and exclusions.
Canada is a party to the following international copyright conventions and treaties:
Copyright protection in Canada generally extends to every work having an author who is ordinarily resident in, or a citizen or subject of, a country that is a member of the Berne Convention, Universal Copyright Convention, WIPO Copyright Treaty, or World Trade Organization, irrespective of where the work was made. The Minister of Industry may also optionally extend the same protection to works made by authors from countries not party to any of these treaties or conventions.
To qualify for copyright protection, a work must be “original” and its author must have been a citizen, subject or ordinarily a resident, of Canada or another treaty country when the work was made, or it must have been first published in Canada or another treaty country. The bar for “originality” is lower than for “creativity.” The Supreme Court of Canada has defined “originality” to require the exercise of non-trivial skill and judgement. That is, the exercise of skill and judgement must not be so trivial as to be a purely mechanical exercise (CCH Canada Ltd v Law Society of upper Canada (2004) SCC 13).
Certain categories of copyrightable works carry a fixation requirement that may be express or implicit; for example, an architectural work is defined as a building or structure, or any model of a building or structure; the scenic arrangement or acting form of a dramatic work must be fixed in writing or otherwise.
Copyright automatically subsists in qualifying works. While there is no requirement to register copyright, registration can provide an owner with strategic advantages during a dispute.
The Canadian Intellectual Property Office administers the Register of Copyright. Registration is an inexpensive and simple procedure that can be performed online for a nominal fee. There is no requirement to deposit a copy of the work embodying the registered copyright.
Canada’s Register of Copyright is publicly available. Entries on the Register for works registered since October 1991 are searchable through the website of the Canadian Intellectual Property Office. Documents on the Register, as well as entries for registrations prior to October 1991, are available for order through the website.
Although registration is optional, it offers several advantages during disputes. A certificate of registration of copyright serves as evidence of ownership and existence of the registered copyright. A certificate of registration of a licence or assignment is evidence that the licensee holds the licensed right or that the assignee is the owner of the assigned right. Registration also entitles a plaintiff to monetary and other remedies, even if the defendant was reasonably unaware of the existence of copyright in the work at issue; otherwise the plaintiff is only entitled to an injunction, that is, an order prohibiting the defendant from further infringement.
Copyright law protects qualifying literary, dramatic, musical and artistic “works.” Copyright also applies to qualifying performers’ performances, sound recordings and broadcasters’ communications signals. These categories are set out in Canada’s Copyright Act.
The Copyright Act defines the categories of “work” using non-limiting examples. The definitions are worded broadly enough to protect uncategorised and non-traditional works of art or forms of expression, provided they meet general qualifications that apply to the listed types of works.
The Copyright Act explicitly includes “computer programs” in the definition of a “literary work.” In addition to the protections that apply to all forms of literary works, computer programs or software benefit from a prohibition on being rented out without the consent of the copyright-owner. Like other forms of works, computer programs must meet the “originality” requirement to qualify for copyright protection.
Ornamental or aesthetic features in a graphical user interface generated by software may be protected by industrial design registration, which is governed by the Industrial Design Act. Software can also qualify for patent protection, provided that it meets the requirements for patentability. Patent protection and copyright protection can apply simultaneously to the same software.
The definition of a “work” under the Copyright Act encompasses a database as a work resulting from a selection or arrangement of data. A database can then benefit from the same protections that apply to other works, provided the same originality and treaty requirements are met. If the assembling or selection of the data was dictated by standard practices, law or function, or if there are only a few ways of arranging the data, then the originality requirement is unlikely to be met. Database owners have faced challenges in establishing “originality” in Canada.
The design applied to a useful article or from which a useful article is derived can be protected simultaneously under copyright law and industrial design law. If the article is produced more than 50 times with the consent of the copyright-owner, another person who subsequently reproduces the same or a substantially similar article, in any form, does not infringe the copyright in the design. However, the design may benefit from protection as an industrial design under Canada’s Industrial Design Act.
General copyright principles apply across all categories of copyright-protected works. However, there are specific issues that arise when applying general principles to certain types of works. For example, originality and fixation requirements are more difficult to establish for certain types of works than others. Further, copyright protects the expression of an idea, not the idea itself. Some types of works are more difficult to categorise as an idea versus the expression of the idea.
In the particular case of fictional characters, the visual depiction of an individual character is capable of copyright protection as an artistic work if that character meets the originality requirement. However, even if that character does not meet the originality requirement on its own, the character may be embodied in an original work. In that case, if another person reproduces the character, the question is whether that other person has reproduced a substantial part of the work, that is, a part that represents a substantial portion of the skill and judgement expressed in the work. In general, the analysis does not consider the copied elements piecemeal; the approach is holistic.
Like characters, television formats can qualify as works, provided they meet the general requirements for copyright protection. However, enforcement of copyright in television formats has proven challenging in Canadian courts, either because there was insufficient detail for the format to qualify as an original work or because the similarities between the format and the disputed production were unsubstantial.
Since copyright protects the “expression” of an idea rather than the idea itself, recipes attract similar considerations. If a recipe is simply the mechanical listing of ingredients and temperatures, it likely would not meet the “originality” requirement of a protected literary work. If, however, the creator of a recipe exercises non-trivial skill and judgement in writing out the recipe, it may attract copyright protection. Still, the creator would likely have a difficult case against another person who copies the quantities and steps, but writes the recipe in a new voice without appropriating the creative elements of the original recipe. The creator should have a higher chance of success in asserting copyright in a compilation of recipes.
The curation of works into an exhibition, such as at a museum, draws on similar concepts as television formats and fictional characters. As in those cases, the eligibility of a museum exhibition for copyright protection depends on the facts, not on any categorical characterisation of an exhibition as copyright-ineligible or -eligible. Further, within an exhibition, the consent of an owner of copyright in any artistic work created after 7 June 1988 may be required to display the work publicly as part of the exhibition.
Copyright protects dramatic works, which includes choreographic works that are arranged in a fixed manner, such as in writing. The general view in Canadian cases is that a sporting event is unfixed, and therefore does not qualify for copyright protection. However, the television production of the sporting event can qualify for protection as a cinematographic work.
The Copyright Act specifically includes maps, charts and plans within the definition of an “artistic work.” Like maps and other plans, plans of survey are eligible for copyright protection as artistic works. Further, the underlying data used to produce a map or plan may also qualify for copyright protection as a compilation of data. A website, too, is protected as an artistic work, while its text content may attract protection as a literary work.
A person who creates a work is an author of that work. For example, the author is the composer of a musical work, the writer of a literary work, and the painter of a painting. Accordingly, an author must be an individual, not a corporation or entity. It is not necessary to identify an author in order for copyright protection to attach to a work.
The author of a work is generally the first owner of copyright in that work. However, authorship under Canadian copyright law is distinct from ownership, and from the “making” of a film or sound recording. Corporations and other types of legal entities are capable of owning copyright and of being a “maker,” that is, the entity or person that makes the necessary arrangements for the making of the film or sound recording.
In a copyright dispute, the author is presumed to be the owner of a work, unless the contrary is proved. If the work indicates a name of a person in the usual manner, then that person is presumed to be the author, unless the contrary is proved or unless different authorship appears on the Copyright Register. In contrast, if no name appears for an author, any other name that appears in the customary manner is presumptively the owner of the work, unless the contrary is proved, or different ownership has been recorded in the Copyright Register.
See 3.1 Author of Copyrightable Work.
See 3.1 Author of Copyrightable Work.
If multiple authors collaborate in the creation of a work and their individual contributions cannot be disentangled, the work is a “work of joint authorship.” The copyright term of a work of joint authorship applies from the death of the last joint author to die. The Copyright Act is otherwise silent on the rights of each author in a work of joint authorship; however, the likely implication is that each author owns the work and all the authors together constitute “co-owners.” Co-ownership also arises whenever two or more owners own copyright in the same work, even when the owners did not jointly author the work. Each co-owner is entitled to sue for infringement of its copyright, even if another co-owner has authorised the infringing act. None of the owners is permitted to exploit the copyrighted work without the consent of the other co-owners.
Copyright law protects compilations and collective works. Collective works include encyclopedias, dictionaries, year books, newspapers, magazines and periodicals, or any other work written by separate authors in distinct parts.
When multiple works are collected together, whether from one or several authors, the copyright in each underlying work remains with the original owner, unless the owners have agreed otherwise. However, the resulting collection, or “compilation” under the Copyright Act, may also attract copyright protection if the compiling meets the “originality” requirement applicable to works generally. Accordingly, if an author exercises non-trivial skill and judgement in assembling the compilation, that author becomes the presumptive owner of copyright in the compilation, subject to each of the other owner’s copyright in his or her underlying work. Compilations of different types of works are treated according to the most substantial type of work in the compilation.
A copyright-protected compilation can also arise from the selection or arrangement of data, provided that the author exercised non-trivial skill and judgement in selecting or arranging the data. That is true even if the underlying data are not copyright-protected.
A licence to include a work within a compilation is not also a licence to that work disembodied from the compilation.
Under Canadian copyright law, if an author creates a work during the course of employment, the author’s employer is the “first owner” of the work, unless there is an agreement otherwise. Employers and employees are free to contract into a different arrangement.
The inverse presumption applies to contractors. A contractor who authors a work is the owner of copyright in the work unless there is an agreement otherwise. Nevertheless, the person commissioning the work will typically receive an implied or written licence to use the work for the purpose intended under any agreement with the contractor.
In the specific case of an employee who writes an article or other contribution to a newspaper, magazine or periodical, then the default presumption is that the employer owns copyright in the work, while the employee retains the right to restrict publication of the work other than as part of a newspaper, magazine or periodical.
In the academic realm, ownership is typically dictated by the terms of agreements or policies in place between institutions and their academics.
The Crown owns works published or prepared by or under the control or direction of Canada’s federal or provincial governments or the Crown. In recent years, this has given rise to disputes around the use of materials prepared by private-sector entities and submitted to government agencies under regulatory regimes.
If the identity of the author of a work is unknown, then the term of copyright in that work expires 50 years after the end of the year when the work was first published or 75 years after the end of the year in which the work was made, whichever happens earlier. However, the usual copyright term will apply if the author’s identity becomes commonly known beforehand. If there were multiple authors of the work and none can be identified, the same term of copyright applies.
Anyone who is unable to locate the owner of copyright in a published work can apply to the Copyright Board for a licence to use the work. The Copyright Board must be satisfied that the applicant was unable to locate the owner after making reasonable efforts to do so. The Copyright Board can attach terms and conditions to the licence and set a royalty for the applicant to pay if the owner attempts to collect them within five years of the expiry of the licence.
Copyright includes the sole right to produce and reproduce a work or a substantial part of the work in any material form, to perform it in public, to be the first to publish it, and to authorise any of these acts. The Copyright Act provides further enumerated examples of sole rights belonging to the owner, including the right to communicate any literary, dramatic, musical or artistic work to the public by telecommunication, and the right to produce, reproduce, perform or publish any translation of the work. Anyone who does any of these acts without the consent of the copyright-owner infringes the owner’s copyright, unless an exception is available. It is also an infringement to sell, rent, offer to sell or rent, distribute, or exhibit in public an infringing copy of a work if the person doing so knew or should have known that the copy infringes copyright or would have infringed copyright if made in Canada by the person who made the copy.
Courts and tribunals interpret the Copyright Act definition of “copyright” flexibly to accommodate technological change. Technological neutrality – interpretation of copyright law in a manner that neither favours nor prejudices a particular technology – is a central consideration in Canadian copyright jurisprudence, at least whenever the consideration does not directly contravene the express provisions of the Copyright Act.
Copyright generally lasts for the life of the author plus 50 years following the end of the calendar year in which the author dies. If the author is anonymous, different considerations apply, as previously discussed.
In certain cases, the general term of copyright depends on when and whether the author of a work has died and when and whether the work was first published after the author’s death. For example, the term of copyright in a work that is first published after its author’s death, but prior to 31 December 1998, is 50 years after the calendar year in which first publication occurred. Similar provisions apply to a lecture, dramatic or musical work that was first performed in public or communicated to the public by telecommunication after the death of the author.
The term of copyright in an unpublished, non-dramatic cinematographic work expires 50 years from the end of the calendar year in which the work was made. However, if that work is first published before that expiry date, the term expires 50 years after the end of the calendar year in which it is first published.
Copyright belonging to the Crown expires 50 years after the end of the calendar year of first publication of the underlying work.
Recent negotiations between the United States, Canada and Mexico on the terms of the proposed Canada–United States–Mexico Agreement (CUSMA) provide an extension of Canada’s current 50-year term limits to 70 years. As of the date of writing this article, the three countries have signed the agreement, but none has ratified it.
Copyright is broadly transferable. An owner can assign and grant licences under its entire copyright or under each right granted to it under copyright. For example, an owner can assign the sole right to communicate a work by telecommunication of a work, while retaining for itself the sole right to translate the work. The owner may impose additional limitations on the assignment, such as limitation on the medium through which the assignee can communicate the work by telecommunication.
While there are few formal requirements for a licence or assignment in copyright, an assignment or exclusive licence must be signed and in writing to be valid.
A copyright assignment or licence may endure for the entire term of copyright. However, if the author of a work is the first owner of the copyright in that work, then any assignment or grant returns to the author’s estate 25 years after the author’s death, unless the assignment or grant was to the copyright in a collective work or to publish a work or part of a work as part of a collective work. This reversion also does not apply if the assignment or grant is by a will.
Copyright passes to the owner’s heirs on death, and general estates principles apply, except for the specific reversionary interest described above when an author is also the first owner of copyright in a work.
An author receives moral rights in any work that he or she has created. Moral rights mean the right to the integrity of the work and, where reasonable, to be associated with the work as its author by name or pseudonym, or to remain anonymous in relation to any activity performed under the copyright in the work.
Moral rights have the same duration as the copyright in the underlying work.
Moral rights can only be waived, not assigned. An assignment of copyright does not by that act alone constitute a waiver of moral rights.
The only permissible “transfer” of moral rights is on death, when these rights pass to the author’s successive heirs.
Generally, the age at which a person in Canada can enter into an enforceable contract is 18 or 19 years, depending on the province. Further, a person less than 18 or 19 years old, depending on the province, requires a litigation guardian to sue or be sued in Canadian courts.
While there are few formal requirements for a licence or assignment in copyright, an assignment or exclusive licence must be signed and in writing to be valid.
To the extent that Canadian copyright law involves an “exhaustion doctrine” it does so by implication or omission, and that doctrine is circumscribed in special circumstances. In one famous case, an artist sued an art gallery that had obtained legitimate posters of the artist’s work. The gallery transferred the images from those posters onto canvas in a process that destroyed the poster. For each poster, only one copy was made onto canvas. The artist was unsuccessful in establishing infringement because there was no “reproduction.” In another famous case, the Supreme Court of Canada in obiter dicta suggested that the importation into Canada of a copy of a work made abroad with the permission of the copyright-owner in that territory could still constitute secondary infringement in Canada if there was a different owner of the Canadian copyright in the work.
Further, Canadian copyright law includes prohibitions on the circumvention of technological protection measures (TPMs) that place limits on any implicit “exhaustion doctrine.”
Canada has made several key amendments to its Copyright Act that specifically address copyright in the internet age. For example, Canada codified a notice-and-notice system in which internet service-providers (“ISPs”) must forward notices of alleged infringement from copyright-owners to their internet subscribers. At the same time, ISPs and providers of information location tools (such as Google) gained the benefit of “safe harbour” exemptions from copyright liability.
Canada also enacted a “making available” right, which allows copyright-owners to assert infringement when anyone in Canada makes the work available to the public by “telecommunication” in a way that permits the public to access the work on demand.
In general, hyperlinking to a copyright-protected work does not constitute copyright infringement under Canadian law, at least not in the case where the owner of the copyright has authorised the posting of the work online through a publicly available website where the hyperlink directs. Embedding (also called “framing” or “windowing”) occurs when a website at one internet address displays content from a different address. Embedding may attract copyright and contractual liability particularly where a person embeds the work within their own content.
The right to reproduce a musical work within a film or other cinematographic work is generally termed a “synchronisation right,” which is licensed under a “synchronisation licence.” Synchronisation licences can be obtained directly from rights-holders. Collective societies, such as the society for reproduction rights of authors, composers and publishers in Canada (SODRAC), may also arrange synchronisation licences with the consent of their members.
At least 38 different societies collectively manage copyright in Canada. These collective societies represent different groups of copyright-owners and manage their respective rights within various fields of use.
Anyone wishing to acquire a specific licence under the copyright in a work can negotiate with the collective society responsible for licensing that right, if the work forms part of the repertoire of that collective society. If the parties are unable to agree on a tariff – a price for the licence – then either of them is entitled to apply to the Copyright Board of Canada to fix the tariff. Collective societies can also apply to the Copyright Board to fix a proposed tariff. No infringement proceedings can be brought against a person who has offered to pay the tariff applicable to the right claimed to be infringed.
If a collective society has negotiated an agreement for a licence, either the collective society or the licensee may file the agreement with the Copyright Board. The Commissioner of Competition is then entitled to review the filed agreement. However, the filed agreement is exempt from anti-conspiracy provisions of Canada’s Competition Act.
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The Copyright Act sets out a list of exemptions from copyright infringement. Some exemptions are expressed as “fair dealing” for specified purposes, akin to the fair use doctrine, while others enumerate specific conditions or use cases that are exempt from infringement.
A “fair dealing” for the purpose of research, private study, education, parody or satire, criticism or review, or news reporting is not infringement. While these purposes are expressly enumerated by statute, their scope is determined by case law. A defendant asserting the fair dealing exemption for criticism or review or news reporting must also meet certain statutory requirements to provide attribution to the source of the copyrighted work.
The specific conditions and use cases are also expressly enumerated by statute, and include the following activities:
A user who wishes to assert one of these specific exemptions must also meet the specific requirements defined in the Copyright Act in respect of that exemption.
The availability of the fair dealing exemption depends on the purpose of the dealing, the character of the dealing, the amount of the dealing, the nature of the work, available alternatives to the dealing, and the effect of the dealing on the work. The courts have indicated that fair dealing must not be interpreted restrictively.
As noted above, the additional exemptions that are enumerated in the Copyright Act include specific requirements that must be met by the user. These specific requirements can include the particular purpose or nature of the use, the published nature of the work, the period of time a temporary copy is retained, and other matters.
A user may reproduce copyrighted matter, provided the source of the copy itself is not infringing and was legally obtained by the user other than by borrowing or renting it. The user must be authorised to use the medium or device on which the work is reproduced and must not have circumvented a technological protection measure in order to make the copy. The user must not give the copy away, and must use it only for their own private purposes.
The Copyright Act provides an exemption from infringement in the case where a person reproduces, in a painting, drawing, engraving, photograph or cinematographic work, an architectural work (provided it is not an architectural drawing or plan), sculpture, work of artistic craftsmanship, or a cast or model of a sculpture or work of artistic craftsmanship, that is permanently situated in a public place or building. Furthermore, it is not an infringement of copyright to include, incidentally and not deliberately, a work in another work.
A person who provides services related to operation of the internet or a digital network, who provides means for the telecommunication or reproduction of a work, or caches the work for efficiency purposes, does not infringe copyright simply by providing those means. However, if the person engages in caching the work, they must not make modifications to the work, and must carry out operations consistent with industry practice. A person who presents a work by retrieving it from the location where the owner stored it, and “frames” the work with their own content, may be liable for infringement.
Similarly, a person who provides hosting services that are used by another person to store a work does not infringe copyright by virtue of that act alone. This exemption is not available if the person providing the hosting services learns of a court decision to the effect that the person storing the work infringes copyright in that stored work.
However, if the person is providing these services primarily for the purpose of enabling copyright infringement, the above exceptions do not apply when an infringement occurs as a result of the use of that service.
The fair dealing exemption includes the purpose of satire or parody. A parody is considered to evoke the existing work, while being different from it, and expressing mockery or criticism of its subject. However, even if the purpose of parody is established, the dealing must still be assessed for the other factors relevant to fair dealing, such as the character of the dealing, the amount of the dealing, the nature of the work, available alternatives to the dealing, and the effect of the dealing on the work.
Freedom of expression is a protected right in Canada, but the courts recognise that this right is not absolute. Prior to the creation of the parody, fair dealing right, the use of a copyrighted work was found to be a use of private property that did not constitute a protected form of expression. However, this outcome is now less likely, particularly in view of the more expansive fair dealing rights that were added to the Copyright Act. Furthermore, in some situations the public interest in protecting expression may weigh against the granting of an injunction in favour of a copyright owner tending to squelch free speech.
The Copyright Act also includes express exceptions from infringement for parties making disclosures pursuant to the federal Access to Information Act and Privacy Act or under similar provincial statutes.
Neighbouring rights were introduced as part of the 1997 amendments to the Canadian Copyright Act. Neighbouring rights include copyright in a performer’s performance, which is originally owned by the performer; copyright in sound recordings, which is originally owned by the maker of the sound recording; and copyright in communication signals, which is originally owned by the broadcaster.
The maker of a sound recording has the sole right, in relation to a sound recording or any substantial part thereof, (a) to publish it for the first time, (b) to reproduce it in any material form, and (c) to rent it out. If a sound recording has been published, the performer and maker are entitled to be paid equitable remuneration for its performance in public or its communication to the public by telecommunication.
Copyright in a sound recording subsists for 50 years after the year in which the first fixation occurs. However, if the sound recording is published before the copyright expires, the copyright continues until the earlier of 70 years after the year in which the first publication occurs and the end of 100 years after the year in which that first fixation occurs.
A performer is entitled to certain rights in relation to the performance, depending on whether the performance is fixed. Copyright in a performer’s performance subsists until the end of 50 years after the end of the calendar year in which the performance occurs. However, that term may be extended if the performance is fixed as a sound recording and if the sound recording is published before the copyright expires.
The performer of a live aural performance or a performance fixed in a sound recording has moral rights in the performance. These moral rights may not be assigned but may be waived in whole or in part. Upon the performer’s death the moral rights are transmissible.
Broadcasters own copyright in the communication signals they broadcast, which includes, among other things, the sole right to fix the communication signal, to reproduce any fixation of it that was made without the broadcaster’s consent, and to authorise another broadcaster to retransmit it to the public simultaneously with its broadcast. Copyright in a communication signal subsists until the end of 50 years after the end of the calendar year in which the communication signal is broadcast.
Neighbouring rights may be assigned. Reversion does not apply to neighbouring rights. Copyright in neighbouring rights passes to the owner’s heirs on death, and general estates principles apply.
Re:Sound is a collective society authorised to administer the performance rights of performers and record labels in sound recordings. On behalf of performers and makers of sound recordings of musical works, Re:Sound collects and distributes equitable remuneration. The remuneration is in accordance with royalty tariffs certified by the Copyright Board.
While there are few formal requirements for a licence or assignment in copyright, an assignment or exclusive licence must be signed and in writing to be valid.
General exceptions to copyright apply to neighbouring rights, which includes the fair dealing defence.
The Copyright Act contemplates multiple forms of infringement, including direct infringement, secondary infringement, infringement by provision of internet services, and moral rights infringement.
Direct infringement occurs whenever anyone violates the copyright-owner’s sole rights under section 3 of the Copyright Act, including the sole right to produce or reproduce the work or any substantial part thereof.
Secondary infringement is defined under section 27 of the Copyright Act, which sets out that it is an infringement of copyright, amongst other things, to sell or rent out, distribute, expose, or offer for sale or rental or exhibit in public or to import or export a copy of a work that the person knew or should have known infringes copyright.
Infringement by provision of internet services occurs when a service is provided primarily for the purpose of enabling acts of copyright infringement by means of the internet.
It is an infringement of an author’s moral rights if attribution and association with the work is omitted and could reasonably have been included. Further, the author’s right to the integrity of the work is infringed if the work is distorted, mutilated or otherwise modified to the prejudice of the author’s honour or reputation.
There are additional forms of infringement set out in the Copyright Act in addition to the above.
The defences available against infringement include:
Privacy issues are a concern where copyright-owners seek to have an internet service provider disclose personal information such as the identities and details of subscribers alleged to have infringed copyright, for example, via the unauthorised distribution of works. The courts must balance privacy interests and the public interest where confidential information is sought to be revealed.
Some courts have given primacy to the public concerns that intellectual property rights be protected and not be eroded over privacy concerns by ensuring that the confidential information is not misused and giving specific direction as to the type of information to be disclosed (Voltage Picture LLC v John Doe, 2014 FC 161 and BMG Canada Inc v Doe, 2005 FCA 193).
An owner of copyright can bring infringement proceedings by way of an action or application in either the Federal or Provincial Court. In addition, they can bring a motion for an interlocutory injunction to seek injunctive relief prior to a trial on the merits.
Neighbouring rights are set out in the Copyright Act and are subject to the same remedies and judicial procedures applicable to other types of copyright infringement.
Moral rights can be enforced by way of a court proceeding.
An alleged infringer can bring a counterclaim seeking a declaration of non-infringement.
Both the Federal Court and the provincial courts have concurrent jurisdiction over copyright matters, except for prosecution of criminal provisions under sections 42 and 43 of the Copyright Act for which the Federal Court does not have jurisdiction.
An owner of copyright has standing to initiate copyright proceedings. Generally, the copyright-owner is to be made a part of the proceedings except in certain cases as set out in section 41.23 of the Copyright Act.
In addition, if an exclusive licence exists that allows the licensee to initiate copyright proceedings, then such an exclusive licensee can also bring copyright proceedings. See section 13 of the Copyright Act and Robertson v Thomson Corp, 2006 SCC 43 and Euro-Excellence Inc v Kraft Canada Inc, 2007 SCC 37.
In infringement proceedings, a defendant can bring a claim against third parties or other defendants who may share liability with the defendant. Any damages awarded may be apportioned between defendants.
There are various court fees in Canadian proceedings. The court fees for initiating a lawsuit in Canada depend on the court and type of proceeding. For example, the fees for issuing a statement of claim in the Federal Court and Ontario Superior Court are currently CAD150 and CAD220, respectively. Fees may also be payable for other steps in a proceeding, such as the issuance of subpoenas and writs of execution. As a further example, court fees are payable in the Federal Court for hearings or trials that last longer than three days.
There are no formalities per se that are mandatory before initiating a copyright action. However, it is recommended that a cease-and-desist letter be sent to the defendant prior to initiating the action as the court can consider the conduct of the parties during and before the proceeding in determining the remedies granted.
It is not mandatory but also recommended that copyright be registered prior to the start of proceedings and, if possible, well before any proceedings are even contemplated.
There is no mandatory waiting period prior to initiating proceedings.
A motion for an interlocutory injunction can be brought on an urgent basis before a trial on the merits. The motion is usually filed at the same time as initiating the infringement proceedings. Other types of urgent measures include Mareva injunctions to restrain defendants from disposing of assets, and Anton Piller orders, permitting the search of premises and seizure of evidence without notice when there is a real possibility that relevant evidence will be destroyed.
In order for a plaintiff to succeed on a motion for an interlocutory injunction, it must show that (a) the proceeding raises a serious question to be tried and that the plaintiff has a strong prima facie case, (b) the plaintiff would suffer irreparable harm if the motion is not granted, and (c) the balance of convenience favours the plaintiff. Delay is a factor that may affect the balance of convenience and that can also defeat this motion for equitable relief.
The motion is usually filed at the same time as initiating the infringement proceedings.
In an action for copyright infringement, each party, including the alleged infringer, must produce all non-privileged documents in its possession that are relevant to the issues in dispute. Each party may also examine for discovery each adverse party. In the case of a corporation, partnership or unincorporated association, the party must put forward a representative for examinations for discovery.
The parties, including the rights-holder, can seek to examine non-parties who might have information on an issue in the action. The discovery testimony of non-parties cannot be used as evidence at the trial but may be used in cross-examination.
If the infringement proceeding is brought by way of application rather than action, the rights-holder is limited to the affidavit evidence, if any, produced by the alleged infringer and any cross-examination of the affiant(s).
Rights-holders can also seek Norwich Orders to compel third parties to produce relevant evidence in their possession.
Rights-holders can seek Mareva injunctions to restrain infringers from disposing of or dissipating any assets, including monies. To obtain a Mareva injunction, a plaintiff must:
Canada’s “notice and notice” regime under sections 41.25 and 41.26 of the Copyright Act allows copyright owners to send a notice to an internet service-provider (ISP) claiming copyright infringement by a person at a certain IP address. The ISP must then forward that notice to the person at the IP address. This regime does not, however, require ISPs to provide the identity of the person at the IP address. To obtain that person’s identity, rights-holders must obtain a Norwich Order compelling the ISP to disclose it. With the person’s identity, the rights-holder can then name them in a lawsuit for infringement.
As mentioned above, rights-holders can seek Norwich Orders to compel third parties to produce relevant evidence in their possession. In addition to ISPs, this could apply to other intermediaries.
In addition, injunctions, including interlocutory injunctions, can be sought against non-parties, where it is just or convenient to do so.
In Canadian court proceedings, including copyright cases, the admission of expert evidence depends on criteria including: (a) relevance; (b) necessity in assisting the trier of fact; (c) the absence of any exclusionary rule; and (d) a properly qualified expert. (R v Mohan,  2 SCR 9)
In copyright cases, although the intended audience of the works at issue may often be lay persons, expert evidence may be necessary to place the trial judge in the position of “someone reasonably versed in the relevant art or technology” (Cinar Corporation v Robinson, 2013 SCC 73 at para 51). For instance, the Supreme Court has provided the following helpful example of when expert evidence may be of assistance to the court:
“Two pieces of classical music may, to the untrained ear, sound different, perhaps because they are played on different instruments, or at different tempos. An expert musician, however, might see similarities suggesting a substantial part has been copied – the same key signature, the same arrangement of the notes in recurring passages, or a recurrent and unusual harmonic chord.” (Cinar Corporation v Robinson, 2013 SCC 73 at para 52)
Expert evidence may also assist the court in copyright cases involving software, for example to explain what is common general knowledge in the field versus what is original.
In addition to assessing copyright infringement, expert evidence may also be tendered, for example, in the quantification of damages or an accounting of profits.
Rights-holders do not need to register their copyright with the Canadian Intellectual Property Office to enforce it. However, registration creates a presumption of validity in that copyright in civil actions taken under the Copyright Act, including infringement action.
A range of remedies are available for copyright infringement in Canada, including injunctions, wide injunctions (ie, against infringement of other works in which the plaintiff has a claim), statutory and compensatory damages, accounting of profits, punitive and exemplary damages, delivery-up, and costs. If an infringer was not aware and had no reasonable grounds to suspect that copyright subsisted in the work at issue, only an injunction will be granted. The Copyright Act also provides for criminal remedies for certain offences, which may include fines or imprisonment.
In Canadian litigation, costs are discretionary. The successful party is generally entitled to recover a portion of its legal fees and its reasonable disbursements at the conclusion of the proceeding. The amount and manner of calculating the costs varies depending on the jurisdiction. For example, courts in the Province of Ontario typically award costs on a “partial indemnity” rate to the successful party, which can be up to 60% or more of reasonable actual rates, plus reasonable disbursements. In more exceptional cases when the court wishes to express its disapproval of the conduct of a party, “substantial indemnity” costs may be awarded. Parties may further be entitled to full indemnity if the conduct is especially egregious. In the Federal Court of Canada, costs may be awarded based on fixed tariff amounts.
Formal settlement offers can also affect the costs awarded at the end of proceedings. For example, under Rule 49 of Ontario’s Rules of Civil Procedure, if a party makes a settlement offer that is not accepted, and that party then obtains a result at trial that is better than its offer, there will be cost consequences from the date the offer was made favouring the party who made the offer.
Actions for copyright infringement often take two to three years, or longer, to reach a decision from a trial judge. Trial decisions are often appealed, further prolonging the lawsuit. If a rights-holder is seeking a quicker determination on the merits, he or she can consider bringing the case by way of application rather than an action, which may result in a hearing within a year from the start of the lawsuit. In addition, summary proceedings such as summary judgment motions and, in some jurisdictions, summary trials, are available to reach final determinations sooner. It is also possible to bring a claim in copyright infringement in provincial small-claims courts, where cases can resolve more quickly. However, small-claims courts generally cannot provide the same range of remedies as the superior courts in the provinces, or the Federal Court.
In addition to contempt orders, court orders in Canada may be enforced in several ways. For example, in the Federal Court, orders for the payment of money may be enforced by (a) a writ of seizure and sale; (b) garnishment proceedings; (c) a charging order; (d) the appointment of a receiver; and (e) a writ of sequestration (Rule 425 of the Federal Courts Rules). An order for possession of real property or immovables may be enforced by (a) a writ of possession; and (b) an order of committal or a writ of sequestration, or both (Rule 427 of the Federal Courts Rules). Where a person ordered to do an act or abstain from doing an act refuses to comply, the order may be enforced by, among other things, a writ of sequestration against the property of the person or, if the person is a corporation, against the property of any director or officer of the corporation (Rule 429 of the Federal Courts Rules).
Under section 42 of the Copyright Act, the Crown may bring criminal proceedings against someone who knowingly performed certain acts of infringement, such as, among other things, making for sale or rental an infringing copy of a work, importing or exporting or attempting to export, for sale or rental, an infringing copy of a work. Persons who commit offences under the criminal provisions of the Copyright Act are liable on indictment to a fine of not more than CAD1 million or to imprisonment for a term of not more than five years or to both, and on summary conviction, to a fine of not more than CAD25,000 or to imprisonment for a term of not more than six months or to both.
Rights-holders may submit an application for the “Request For Assistance” (RFA) programme, provided by the Canada Border Services Agency (CBSA), identifying the trade mark, geographical indication, and/or copyrights at issue. It is not necessary for the copyright to be registered in Canada; however, it is recommended. If approved for the programme, the CBSA will monitor commercial shipments to identify and detain suspected counterfeit goods. If suspected counterfeit goods are intercepted, the rights-holder will be notified and given an opportunity to take action within five days for perishable items, and ten days for all other items.
There is no power to seize parallel importations in Canada. However, the Supreme Court of Canada’s decision in Euro-Excellence Inc v Kraft Canada Inc, 2007 SCC 37 has left the door open for rights-holders in Canada to assert copyright infringement under section 27(2)(e) of the Copyright Act for parallel importations, if the foreign product originated from someone other than the Canadian copyright-owner.
The Book Importation Regulations govern the parallel importation of books in Canada, and particularly, provide requirements for distributors of foreign-published books to be “exclusive” distributors in Canada and to prohibit others from importing the books. Qualifying exclusive distributors can obtain border seizure remedies normally only available to copyright-owners and exclusive licensees.
Appeals of copyright lawsuits in Canadian courts are treated in the same manner as other lawsuits and are not heard in specialised courts. Decisions of the Copyright Board of Canada, however, are appealed directly to the Federal Court of Appeal.
With respect to appeals from lower courts, courts of appeal will review questions of fact and mixed fact and law for palpable and overriding errors. A palpable and overriding error is one that is plainly seen. Questions of law are reviewed on a standard of correctness, which means that the court of appeal is free to replace the opinion of the trial judge with its own on such questions. (Housen v Nikolaisen, 2002 SCC 33)
In the context of judicial reviews of administrative decisions, such as decisions from the Copyright Board of Canada, courts of appeal review the decisions either on the deferential standard of reasonableness or the correctness standard. As to which standard applies, the Supreme Court has stated “questions of fact, discretion and policy as well as questions where the legal issues cannot be easily separated from the factual issues generally attract a standard of reasonableness while many legal issues attract a standard of correctness. Some legal issues, however, attract the more deferential standard of reasonableness.” (Dunsmuir v New Brunswick, 2008 SCC 9) Decisions of the Copyright Board are reviewable on a standard of correctness for questions of law, not reasonableness; however, its decisions on questions of law may be reviewable on a reasonableness standard when there is no shared primary jurisdiction between the Board and the court.
Generally, parties on an appeal are limited to the evidence that was before the court of first instance. However, courts of appeal may grant leave to present new evidence in an appeal in special circumstances. The test is stringent:
For most part, ADR in Canadian copyright disputes is voluntary, with mediation being the most common form of ADR. In some jurisdictions, however, it may be ordered or is mandatory. For instance, in some regions in the Province of Ontario, mediation is mandatory for civil actions (with a few exceptions), including copyright infringement. The Federal Court may order that any proceeding, or issue in a proceeding, be referred to a dispute resolution conference conducted by a case management judge or prothonotary of the Court. The dispute resolution conference in the Federal Court may be conducted as a mediation, a non-binding “neutral evaluation,” or non-binding “mini-trial.”