This document discusses the complexities of cross-border copyright litigation, highlighting the differences in copyright laws between jurisdictions, particularly Canada and the U.S. It outlines factors to consider for copyright owners when pursuing actions in multiple jurisdictions, including fair use versus fair dealing, procedural variances, and litigant comfort levels. The document also explores various strategies for effectively navigating these legal challenges.

1. Leveraging Jurisdictional
Differences in Cross-Border
Copyright Litigation
Mark S. Hayes
Blake, Cassels & Graydon LLP
OBA Institute 2009
Toronto, Ontario
February 2, 2009

2. The Opportunity
• Copyright is primarily a national right
• Many copyright infringements occur
simultaneously in multiple jurisdictions
– Use of infringing material in a internationally
distributed work that incorporates many smaller works
– Exploitation of copyright works over the Internet
• When can parallel Canadian action advance the
interests of a copyright owner?

3. Factors to consider
• Copyright law differences
• Procedural differences
• Litigant comfort levels
• Strategies

4. Copyright law differences
• Fair use vs. fair dealing
• Freedom of speech
• Employees and works for hire
• Compulsory licences
• Moral rights
• Neighbouring rights

5. Fair use vs. fair dealing
• US “fair dealing” is very flexible and allows for a
great deal of judicial discretion
• Canadian “fair dealing” imports some of the US
balancing rules, but categories are limited
– research or private study
– criticism or review
– news reporting
• No parody, no time or format shifting

6. Employees and works for hire
• U.S. Copyright Act "work for hire“:
– created by an employee within scope of employment
– work is "specially ordered or commissioned for use as
a contribution to a collective work, as a part of a
motion picture or other audiovisual work” if parties
expressly agree in written instrument signed by them
that work shall be considered work made for hire
• Commissioner is both author of work and first
owner of copyright

7. Employees and works for hire
• Canadian copyright law
– If work is by employee, employer is first owner of
copyright but employee is author
• Employee has moral rights and term is calculated based on
employee’s life span
– If work is by contractor, contractor is first owner of
copyright and author
• Commissioner of work may obtain written assignment of
copyright, but contractor has moral rights and term is
calculated based on contractor’s life span
• Copyright will revert to heirs of contractor 25 years after
contractor ‘s death

8. Procedural differences
• Federal Court and provincial courts
• Summary infringement proceedings
• Costs
• Pleadings

9. Litigant comfort levels
• Legal differences
• Lack of familiarity with local counsel and
procedures
• Additional costs and inconvenience

10. Strategies
• Litigate discrete set of issues in new action
• Raise new issues
• Change, limit or augment parties
• Different timing of proceedings

11. Questions?
For a digital copy of
these slides, just ask!
mark.hayes@blakes.com