For those who are interested in recent cases and developments concerning copyright and related matters there have been several developments since the last entry.
Keatley Surveying Ltd. v. Teranet Inc 2019 SCC 43
The Supreme Court of Canada said that the general approach to copyright law in Canada is one which balances the rights of creators of works and their users. All provisions of the Act must be interpreted with this balance in mind, so the Act continues to further the public interest. In particular, this clarifies that all the exceptions to infringement need to be considered as a user’s right which balances the rights of creators of works and their users.
The court also provided its views on the interpretation of section 12 of the Copyright Act, which deals with Crown copyright. The section has two parts — the prepared prong and the published prong — the two “prongs” are different only to the extent that preparation and publication are different processes. While the manner of assessing whether the requisite degree of direction or control is present will vary depending on whether Crown copyright is asserted based on preparation or publication, the overarching question remains: has the Crown exercised sufficient direction or control, consistent with the purposes of Crown copyright, that it can be said that Crown copyright subsists?
Kogan v Martin [2019] EWCA Civ 1645
The U.K. Court of Appeal provided detailed rules for determining when individuals are the joint authors of a work. While the decision is not binding on a Canadian court it will likely be very persuasive. The court emphasized that a work of joint authorship is a work produced by the collaboration of all the people who created it. There will be collaboration where those people undertake jointly to create the work with a common design as to its general outline, and where they share the labour of working it out. The first task for the court in such a case is to determine the nature of the co-operation between the putative joint authors which resulted in creating the work.
Amendments to the Bankruptcy and Insolvency Act and to the Companies’ Creditors Arrangement Act
The amendments extend the effect of the 2009 amendments relating to the grant to another party of a right to use intellectual property in a proposal. The amendments came into force November 1, 2019 but apply only regarding proceedings commenced after this date.
First, if the bankrupt is a party to an agreement that grants to another party a right to use intellectual property, the disclaimer or resiliation of that agreement by the trustee does not affect that other party’s right to use the intellectual property — including the other party’s right to enforce an exclusive use — during the term of the agreement, including any period for which the other party extends the agreement as of right, as long as the other party continues to perform its obligations under the agreement in relation to the use of the intellectual property.
Second, if the bankrupt is a party to an agreement as described above that is included in a sale or disposition by the trustee, that sale or disposition does not affect that other party’s right to use the intellectual property — including the other party’s right to enforce an exclusive use — during the term of the agreement, including any period for which the other party extends the agreement as of right, as long as the other party continues to perform its obligations under the agreement in relation to the use of the intellectual property.
Finally, similar rights to use intellectual property apply to the disclaimer or resiliation or a sale or disposition made by a receiver of an insolvent person or a bankrupt.
Pourshiam v. Walt Disney Company 2019 ONSC 5916
In this case the court applied Club Resorts Ltd. v Van Breda 2012 SCC 17 and found that the fact the defendant carried on business in Ontario and that the alleged infringement occurred in Ontario were presumptive connecting factors which created a good arguable case of a real and substantial connection that the defendant did not rebut.
Bell Media Inc. v. GoldTV.Biz 2019 FC 1432
Federal Court recently granted a site-blocking order against several Internet service providers. To obtain such an order, the plaintiffs must first satisfy the standard test for granting an interlocutory injunction: (1) there is a serious issue to be tried; (2) irreparable harm will result if the injunction is not granted; and (3) the balance of convenience favours the plaintiff. Further, and because the order is aimed at innocent third parties, the plaintiffs must demonstrate that the proposed order is properly targeted, that the ISPs should be justifiably bound by it, and that the effect of the order appropriately balances the interests of the defendants, the ISPs and the public.
The last part of the test is directed at assessing proportionality and can be considered as a part of determining whether the balance of convenience favours the plaintiffs. In determining whether a site blocking order was proportional, the Judge considered the following factors that had been considered by the UK Court of Appeal: necessity, effectiveness, dissuasiveness, complexity, cost barriers to legitimate use or trade, fairness, substitution and safeguards.
After considering these factors, the judge was satisfied that the balance of convenience favoured the plaintiffs and granted the order. The order contains a mechanism, subject to court review, for adding additional sites if solely or predominantly used by the defendants for infringing purposes. The order also requires that the plaintiff’s indemnify the ISP for the reasonable marginal cost of implementing it.
The Copyright Board
Effective April 1, 2019 the nature of the Board’s mandate in establishing fair and equitable royalties has been modified by statute. The Budget Implementation Act (2018) has added section 66.501 to the Act which provides that:
66.501 The Board shall fix royalty and levy rates and any related terms and conditions under this Act that are fair and equitable, in consideration of
(a) what would have been agreed upon between a willing buyer and a willing seller acting in a competitive market with all relevant information, at arm’s length and free of external constraints;
(b) the public interest;
(c) any regulation made under subsection 66.91(1) and any other criterion that the Board considers appropriate.
In addition, the amendments provide two other broad directions. First, all matters before the Board shall be dealt with as informally and expeditiously as the circumstances and considerations of fairness permit but, in any case, within any period or no later than any day provided for under this Act. Second, for greater certainty, any person or entity may authorize any other person or entity to act on their behalf in any matter before the Board.
Finally, case management now applies to proceedings before the Board. The Chair or Vice-chair may assign a member, officer or employee of the Board or a person engaged under subsection 66.4(3) to act as a case manager of a matter before the Board. This is part of the attempt to improve the timeliness of the decision-making process.
If you have any questions or concerns, please contact me at mckeown@gsnh.com.
John McKeown
Goldman Sloan Nash & Haber LLP
480 University Avenue, Suite 1600
Toronto, Ontario M5G 1V2
Direct Line: (416) 597-3371
Fax: (416) 597-3370 Email: mckeown@gsnh.com
These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.