For those who are interested in recent cases and developments concerning copyright and related matters there have been several developments since the last entry.
Voltage Pictures, LLC v. Salna 2019 FC 1047
This case, which involves a Norwich order, has a lengthy judicial history having made its way to the Supreme Court of Canada where the court referred the issue of compensation back to the motion judge. The motion judge has now determined that $67.23 should be paid to Rogers Communications Inc. for assembling and providing its customer information to Voltage Pictures, LLC. The decision refers to five records, but it is not clear how many customers were involved. There seem to be thousands of defendants in this class action. The requirement to pay $67.23 for 5 records may present a financial roadblock to this litigation. In addition, this determination is specific to Rogers Communication Inc. and another ISP may have different costs and methods for providing the information.
Young v. Thakur 2019 FC 835
There seems to be some uncertainty concerning the amount of statutory damages when the infringement is for commercial purposes. Some early cases suggested there should be some correlation between the actual damages suffered and the statutory damages awarded. More recently decisions have been referring to an assessment based on the reality of the case and a just result. The case referred to above suggested a reasonable assessment based on all of the circumstances in order to reach a just result.
The Copyright Board
While the Board currently does not have formal rules of procedure recently a model Directive on Procedure has been issued as well as Practice Notices concerning submitting electronic files, acknowledgements by expert witnesses, sworn statements or solemn declarations by fact witnesses and the filing of proposed tariffs. Copies of the directive and Notices are available on the Board’s website at https://cb-cda.gc.ca.
CTC Pharmaceutical Holdings, Inc. v. Rapid Dose Therapeutics Inc. 163 C.P.R. (4th) 463 (Ont. S.C.J.)
In order to make out a claim for breach of confidence three elements must be proved: the information has the necessary quality of confidence about it; circumstances giving rise to an obligation of confidence; and misuse of the confidential information. In this case the judge said that there must also be actual evidence of financial loss. The goal of the remedy is to restore the plaintiff to the position it was in prior to the breach. Failure to prove an actual loss is failure to prove the grounds for the remedy.
T-Rex Property AB v. Pattison Outdoor Limited Partnership 2019 FC 1004
In an extreme case the court may grant an order limiting access to designated confidential information to counsel and experts only and the opposite party may not be entitled to access. The granting of such an order can put counsel in a difficult position.
In this case a Prothonotary issued a protective order and a confidentiality order with the protective order limited to documents and information necessary for the determination of liability, and to include “confidential” and “outside counsel eyes only” designations. However, it was also ordered that counsel for the receiving party may communicate with or advise their client of general or high-level conclusions based on their review of “Confidential Information”, including “outside counsel eyes only” designated information. On appeal to a judge of the Federal Court it was found that the Prothonotary had made no error in adding the reference to general or high-level conclusions as described above.
Keatley Surveying Ltd. v. Teranet Inc 2019 SCC 43
This decision considers the scope of Crown copyright and section 12 of the Act. On appeal to the Supreme Court of Canada the court agreed with the Court of Appeal but dealt with the interpretation of the section at length. The majority judgement referred to the fact that the Court has said on a number of occasions the Copyright Act aims to achieve “a balance between promoting the public interest in the encouragement and dissemination of works … and obtaining a just reward for the creator”. This balance informs the proper interpretation and scope to be given to section 12.
Critical to the assessment of whether Crown copyright subsists, is the notion and extent of government direction or control in relation to a work. Section 12 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 varies depending on whether Crown copyright is asserted on the basis of 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?
The prepared prong applies in two situations. First, a work will be prepared by the Crown when an agent or servant of the Crown brings the work into existence for and on behalf of the Crown in the course of his or her employment. In such circumstances, the Crown — including its agents and employees — has ultimate direction and control over the creation of a work.
Second, a work will be prepared under the Crown’s direction or control when the Crown essentially determines whether and how a work will be made. In this way, works produced by independent contractors who complete Crown commissions in which the Crown exercises direction or control over the creation of the work will be subject to Crown copyright.
The prepared prong does not extend to situations where the Crown merely lays down formal requirements or guidelines for how a work should be made. The preparation of the work must be the focus of the direction and control.
The scope of published prong should be interpreted in a way which is conceptually symmetrical with the approach to the prepared prong. A work will only be published by or under the direction or control of the Crown when the Crown exercises direction or control over the publication process, including both the person publishing the work and the nature, form and content of the final, published version of a work. An inquiry into the Crown’s interest in the works at the time of publication is necessary since this interest will demonstrate the degree of direction or control exercised by the Crown over the publication process. As with the prepared prong, the Crown must exercise direction or control over the publication process, regardless of whether the works are published “by” the Crown itself, or by a third party under the Crown’s “direction or control”.
The relevant indicia of governmental direction or control may include the presence of a statutory scheme transferring property rights in the works to the Crown; a statutory scheme which places strict controls on the form and content of the works; whether the Crown physically possesses the works; whether exclusive control is given to the government to modify the works; the opt-in nature of the statutory scheme; and the necessity of the Crown making the works available to the public.
The concurring minority interpreted the words “prepared or published by or under the direction or control” of the Crown according to their ordinary meaning. To avoid the absurd result from interpreting all of section 12 literally, their interpretation was that the copyright in a work is vested in the Crown where the work is “prepared or published by or under the direction or control” of the Crown, and where the work is a government work. A government work is a work that serves a public purpose and in which vesting the copyright in the Crown furthers that purpose.