Sookman lsuc 2015_copyright_year in review

McCarthy Tétrault S.E.N.C.R.L., s.r.l. / mccarthy.ca
McCarthy Tétrault Advance™
Building Capabilities for Growth
Barry B. Sookman
bsookman@mccarthy.ca
416-601-7949 January 22, 2015
LSUC: The Year in Review 2014:
Copyright
14066455 [Full Version]

McCarthy Tétrault S.E.N.C.R.L., s.r.l. / mccarthy.ca 14066455 [Full Version]
Legislative Developments
2

WIPO Internet Treaties ratification
¬ WPPT and WIPO ratification August 13, 2014
¬ WPPT Notification No. 86 Ratification by Canada
¬ WCT Notification No. 81, WIPO Copyright Treaty Ratification by Canada
¬ Making available right (MAR) for foreign sound recordings in effect on
August 13, 2014
¬ Statement Limiting the Right to Equitable Remuneration of Certain Rome
Convention or WPPT Countries, SOR/2014-181 July 14, 2014
¬ Certain limitations to right to collect equitable remuneration for sound
recordings for makers of following countries: Barbados, Bolivia, Cabo
Verde, Congo, Costa Rica, Japan, Lebanon, Lesotho, Monaco, People’s
Republic of China (including Hong Kong and Macao), Singapore, United
States, and Vietnam
¬ U.S., radio broadcasts of terrestrial radio stations, (excluding
transmissions by Internet, satellite, and mobile devices), background
music for businesses (subject to restrictions), pre-1972 sound
recordings.
3

Notice and notice
¬ Order Fixing the Day that is Six Months after the Day on which this Order
is published as the Day on which Certain Provisions of the Copyright Act
Come into Force, P.C. 2014-675 June 12, 2014
¬ Explanatory Note:
¬ “The notice and notice regime will legally require Internet intermediaries,
such as Internet Service Providers (ISPs), hosts and search engines, to
take action upon receiving a notice of alleged infringement from a
copyright owner…
¬ the Government is bringing into force these provisions after determining
that the regime will function without regulations, as the elements in the
legislation are sufficient…
¬ To provide Internet intermediaries the time needed to implement or modify
their systems before the provisions are in force, the provisions will come
into force six months after the publication of this Order in Council.”
(January 2, 2015)
4

Combating Counterfeit Products Act
¬ Bill C-8, Combating Counterfeit Products Act received royal assent, December 9, 2014.
In force, December 9 2014 effective on royal assent, (copyright related) Sections
27(2.11), (2.12), 42(e-g), 59(1)(d.1).
¬ Civil: S.27 (2.11) It is an infringement of copyright for any person, for the purpose of
doing anything referred to in paragraphs (2)(a) to (c), to export or attempt to export a
copy — of a work, sound recording or fixation of a performer’s performance or of a
communication signal — that the person knows or should have known was made
without the consent of the owner of the copyright in the country where the copy was
made.
¬ Criminal: Section 42 (e) and (g) “possesses, for sale, rental, distribution for the purpose
of trade or exhibition in public by way of trade, an infringing copy of a work or other
subject-matter in which copyright subsists;” and “(g) exports or attempts to export, for
sale or rental, an infringing copy of a work or other subject-matter in which copyright
subsists.”
¬ Criminal Code; 59. (1) The definition “offence” in section 183 of the Criminal Code is
amended by adding “(d.1) section 42 (offences related to infringement of copyright of
the Copyright Act’, to enable police to seek judicial authorization to intercept private
communications in investigations relating to those offences. See, Legislative Summary
of Bill C-8.
5

Combating Counterfeit Products Act
¬ Order Fixing January 1, 2015 as the Day on which Certain Provisions of the
Act Come into Force, P.C. 2014-1451 December 12, 2014
¬ Fixed January 1, 2015 as the day on which sections 2, 5 and 6, subsection
7(6) and sections 43, 44 and 60 of that Act come into force.
¬ “The Act enacts new border enforcement measures, which will include the
creation of a request for assistance (RFA) system and the enabling of
customs officers to detain goods suspected of infringing copyright or
trademark rights. The Act also amends subsection 107(5) of the Customs
Act to allow customs officers to share certain information relating to the
detained goods with rights owners. These new border measures will
further support the civil enforcement of these intellectual property rights by
giving the rights owners the information and assistance necessary to
pursue a remedy in civil court or to reach an out-of-court settlement with
importers and exporters of infringing goods.”
¬ Note, not all parts of Bill C-8 are in force.
6

Canadian Artists’ Representation v. National
Gallery of Canada, 2014 SCC 42
¬ Whether artists’ associations are precluded from bargaining minimum fees for use of
existing artistic works in agreements negotiated under Status of the Artist Act as being
a conflict with the Copyright Act.
¬ “The collective bargaining conducted by artists’ associations such as CARFAC/RAAV
under the SAA in respect of scale agreements covering existing artistic works does not
contradict any provision of the Copyright Act. Artists’ associations are simply bargaining
agents. They have not taken or granted, and do not purport to have taken or granted,
any assignment or exclusive licence, or any property interest, in any artist’s copyright.”
¬ “Artists therefore have two options when dealing with federal governmental producers
for the use of their existing works. One option is to assign or license their copyright to a
collective society or appoint that society as their authorized agent. In that case, tariffs
set under the Copyright Act, and not the SAA and any scale agreements for their
sector, will apply to the works. The other option is to deal directly with the producer, in
which case they will be bound by any applicable SAA scale agreements. Within this
option, artists may either accept the minimum fees, terms and conditions set out in the
scale agreements and model contracts, or they can attempt to negotiate higher fees or
more favourable terms.”
7

Subsistence, Authorship and Ownership
8

Geophysical Service Incorporated v. Canada-Nova-
Scotia Offshore Petroleum Board, 2014 FC 450
¬ Was GSI’s processed seismic data in SEG-Y format infringed by a seismic line
published by the Board where 8.5% of the data was derived from GSI’s data?
¬ “No copyright can subsist in geophysical data or seismic data. The copyright must
exist in the compilations analysis thereof…
¬ “I think …there remains at least a serious issue over copyright ownership given all
the facts that otherwise demonstrate GSI’s ownership of the data and major role in
its collection and compilation.”
¬ “However, I agree with the respondent that there appears to be no serious issue
about the alleged infringement…given the lack of any objective similarity between
the infringing work and the copyrighted work, or at least a substantial part thereof,
for Figure 5.5 to be described as a copy, reproduction or adaptation of the latter….
¬ Given the limited contribution of the applicant’s data to Figure 5.5 and its extensive
manipulation and reworking by the Board, with the overwhelming majority of the
data being provided from other sources, I do not find that Figure 5.5 constitutes a
reproduction or adaptation such as to constitute an infringement of GSI’s copyright.”
9

Denturist Group of Ontario v. Denturist
Association of Canada, 2014 FC 989
¬ Does copyright subsist in the five-digit numerical codes and corresponding
description of denturist services contained within the DAC Procedures Codes and
DAC fee Guides?
¬ “There is no question that the five-digit codes are functional… Further, the
descriptions of the services associated with the codes are primarily functional in
nature as well. Moreover, the five-digit codes and associated service descriptions
are required by third party insurers and service providers in order for all denturists
in Ontario to be paid for services rendered to patients. The codes, in their modified
forms over time, have continuously been used since the 1970’s until the present
date by denturists as required, regardless of whether they are members of the
DAC or the DAO. The insurance companies will only accept one set of codes to
render payment to denturists, making the five-digit codes a professional standard
and a necessity for denturists to be reimbursed by insurance companies and third
party service providers.
¬ I do not find that there is sufficient originality or skill and judgment to justify
copyright subsisting in mere five-digit numerical codes and/or the functional
descriptions of the denturist services associated with those codes.”
10

Sports Data Pty Ltd v Prozone Sports
Australia Pty Ltd [2014] FCA 595
¬ Does copyright subsist in input criteria to provide statistical analysis of rugby
matches?
¬ “It is no doubt because Sports Data appreciates the difficulties involved in
establishing the requisite originality or authorship of individual event descriptions that
it claims copyright only in the compilation. Sports Data does not point to the originality
of expression in the event descriptions themselves. Rather it claims that the relevant
database tables are a compilation or compilations. In that circumstance, copyright
protects the particular form of expression that is, the compilation itself. This includes
the selection, structure and arrangement of the event descriptions…
¬ Whilst the question is not easy, in my opinion Sports Data has at least an arguable
case that copyright subsists in the compilation of event descriptions that is found
within fields in the specified tables extracted from the NRLHistory database. Whilst it
might seem somewhat bizarre to describe the compilation in the database table as a
literary work, that expression is specifically defined in the Act. In my opinion, there is
evidence to a prima facie standard that the compilation of event descriptions and their
selection and arrangement involves sufficient originality and involved sufficient effort
and exertion on the part of the authors to support the conclusion that copyright
subsists.”
11

Sports Data Pty Ltd v Prozone Sports
Australia Pty Ltd [2014] FCA 595
¬ Is it infringement to copy portions of the compilation for a competing statistical analysis
service?
¬ “There are parts of the two works that are the same or similar, but in my opinion they are not
substantial parts. That is particularly the case when the comparison is approached on the
basis that Sports Data’s work is said to be a compilation. It is not to the point that some
individual event descriptions are the same. Sports Data would need to demonstrate
substantial identity of selection, structure and arrangement. In my opinion it has not done so…
¬ The second difficulty for Sports Data is that it has failed to make out a prima facie case of
causation.
¬ The difficulty for Sports Data is that the only available inference is that at some stage during
Prozone’s consultations with the NRL and NRL Clubs, Prozone received some information
which included event descriptions that had been used by Sports Data. As already indicated,
however, there is no evidence, and it cannot necessarily be inferred, that Prozone received all
or a substantial part of Sports Data’s copyright work. Moreover...It unquestionably involved
independent work and effort on the part of Prozone. It did not necessarily involve copying, let
alone substantial copying, of the selection, structure or arrangement of input criteria in Sports
Data’s copyright work. In my opinion, at least at this stage, no such inference is available.”
12

Animal Welfare International Inc. v. W3
International Media Ltd., 2014 BCSC 1839
¬ Is a web site a work in which copyright subsists?
¬ “AWI submits that based on the considerations relevant to determining originality,
as outlined in the jurisprudence, the originality of the website is reflected in its
general look and feel, which encompass the products selected to appear on the
homepage, the size of the product photos, the size of the price text, the selection
of an image to function as a logo for the website, the location of the logo, and the
general location of images, text, and icons on the webpage…
¬ There is no evidence the website was created using standard form templates or
standard colour and icon schema. The atypical placement of icons, varied icon
sizing, decisions as to where top selling products would be listed, if prices would
be listed on the homepage, how often the products on the homepage changed,
and the overall website layout and colour scheme are all indicative of CVT being
an original creation…
¬ I am satisfied that AWI has made out its claim that the CVT website was an
original work, that AWI was the owner of the copyright, and that W3infringed its
copyright by substantial reproduction of the CVT website without the owner’s
permission as required by the CA.”
13

Tremblay v. Plourde, 2014 QCCS 201
¬ Is copying text from pages of a website infringement?
¬ “There is evidence that the defendant, to build his site, has largely cottoned
his texts from the web page, the plaintiff property. It is not denied.
¬ This webpage covered under the Copyright Act is the property of the plaintiff.
¬ Indeed, the Copyright Act provides in Article 2 that the computer program is
a literary work…
¬ the defendant unlawfully appropriate text, fruit of the efforts and toil
developed over many years. The court will arbitrate a sum of $ 15,000 can
understand that all these efforts when copied and duplicated have both a
direct and indirect impact on theft of intellectual property, which is both
shocking because of the hard work and vexing on the intellectual effort of
conception. This amount includes both an amount related to the cost of
development, the applicant has determined a value of $ 218,000 to its
financial statements, and another on the aspect of the violation.” (Google
Translate)
14

I.J. v. J.A.M., 2014 BCSC 89
¬ Is an idea for a computer architecture a work?
¬ “The “Work” is a business system using the computers of DC at SCMI and
is not capable of protection under the Act. The Work is not a work in which
copyright may subsist within the meaning of the Act…
¬ The fact that the Act does not protect ideas means that there is no
copyright in any arrangement, system, scheme or method for doing a
particular thing or process: Delrina Corp. (c.o.b. Carolian Systems) v.
Triolet Systems Inc. (2002), 58 O.R. (3d) 339 (C.A.) at para. 35.
¬ While the Amended Notice of Civil Claim describes the “Work” as an
“architectural design”, it is clear that the “Work” does not meet the definition
of “architectural work”. It is not a building or structure or model thereof. At
best, the Plaintiff and her team implemented an idea as to how to reshape
the nature of the order tracking and shipping system that was in place
at SCMI.”
15

Bank of Montreal v Rogozinsky, 2014 ABQB 771
¬ Is there a “common law” copyright in a name?
¬ “Ms. Rogozinsky’s November 14, 2014 affidavit included a document entitled
“Common law Copyright Notice”…In brief, this is another foisted unilateral
agreement that claims if someone uses Ms. Rogozinsky’s name without her
permission then she can bill them $1 million. This is the alleged basis for $6
million of Ms. Rogozinsky’s counterclaim.
¬ One of the alleged occasions where the Bank breached Ms. Rogozinsky’s
“Common law Copyright” in her name was that her name was used, without
authorization, on the Bank’s statement of claim.”
¬ “Meads provides a thorough rebuttal to this entire concept: there is no such
thing as a “common law” copyright or trade-mark as both property interests
are the result of legislation (paras 501, 503), copyright cannot subsist in a
personal name (para 502).”
16

Oracle America, Inc. v Google Inc. 750 F.3d.
1339 (CAFC May 9, 2014)
“It is undisputed that the Java programming language is open
and free for anyone to use… it is also undisputed that Google
could have written its own API packages using the Java
language. Google chose not to do that. Instead, it is undisputed
that Google copied 7,000 lines of declaring code and generally
replicated the overall structure, sequence, and organization of
Oracle's 37 Java API packages. The central question before us
is whether these elements of the Java platform are entitled to
copyright protection. The district court concluded that they are
not, and Oracle challenges that determination on appeal. Oracle
also argues that the district court should have dismissed
Google's fair use defense as a matter of law.”
17

1339 (CAFC May 9, 2014)
“Because we conclude that the declaring
code and the structure, sequence, and
organization of the API packages are
entitled to copyright protection, we
reverse the district court’s copyrightability
determination with instructions to
reinstate the jury’s infringement finding as
to the 37 Java packages. Because the
jury deadlocked on fair use, we remand
for further consideration of Google’s fair
use defense in light of this decision.”
18

1339 (CAFC May 9, 2014)
¬ Are APis inherently not protectable by copyright as being a
“method of operation”?
¬ Are APis inherently non-protectable where they must be copied
for compatibility purposes?
¬ If an API becomes widely known and popular e.g. an industry
standard, does it lose copyright protection?
¬ Do the doctrines of merger, scenes a fair, or short phrases
prevent APIs from being protected by copyright?
¬ Does copyright protection for APIs extend only to declaring code
and implementation code or does it also include the structure of
API packages e.g. packages containing classes containing
methods (or functions) and related interfaces?
¬ Is it a fair use to copy APIs?
19

Flo & Eddie, Inc. v. Sirius XM Radio, Inc.
2014 WL 6670201 (S.D.N.Y., Nov. 14, 2014)
¬ Does U.S. common law copyright provide a performance right in pre-1972
sound recordings?
¬ “In short, general principles of common law copyright dictate that public
performance rights in pre–1972 sound recordings do exist. New York has
always protected public performance rights in works other than sound
recordings that enjoy the protection of common law copyright. Sirius
suggests no reason why New York—a state traditionally protective of
performers and performance rights—would treat sound recordings
differently.”
¬ See, also, Flo & Eddie, Inc. v. Sirius XM Radio, Inc. 2014 WL 7178134
(S.D.N.Y., Dec. 12, 2014) denying motion for reconsideration; Flo & Eddie,
Inc. v. Sirius XM Radio, Inc. (C.D.Cal., Sep. 22, 2014) also finding a common
law performance right in pre-1972 sound recordings; Capital Records, LLC v
Sirius XM Radio, Inc (Sup.Ct.Cal. Oct. 14, 2014) recognizing a public
performance right in sound recordings in California.
20

Garcia v. Google, Inc., 766 F. 3d 929 (9th.Cir.
July 11, 2014), (rehearing en banc ordered)
¬ Does the performer Garcia have a copyright in her performance in Innocence
of Muslims?
¬ “Garcia may assert a copyright interest only in the portion of "Innocence of
Muslims" that represents her individual creativity, but even if her contribution
is relatively minor, it isn't de minimis. See Feist, 499 U.S. at 359, 363, 111
S.Ct. 1282. We need not and do not decide whether every actor has a
copyright in his performance within a movie. It suffices for now to hold that,
while the matter is fairly debatable, Garcia is likely to prevail based on the
record and arguments before us.”
¬ See also, Conrad v. AM COMMUNITY CREDIT UNION (7th. Cir. April 14,
2014), (The “Banana Lady” did not have a copyright in performing singing
telegrams. “The performance itself was not copyrighted or even
copyrightable, not being "fixed in any tangible medium of expression…To
comply with the requirement of fixity she would have had either to have
recorded the performance or to have created a written "dance notation" of it.”
21

Klinger v. Conan Doyle Estate, Ltd., 755 F.
3d 496 (7th. Cir. June 16, 2014)
¬ “We cannot find any basis in statute or case law for extending a copyright
beyond its expiration. When a story falls into the public domain, story
elements — including characters covered by the expired copyright —
become fair game for follow-on authors… The copyrights on the derivative
works, corresponding to the copyrights on the ten last Sherlock Holmes
stories, were not extended by virtue of the incremental additions of originality
in the derivative works.
¬ And so it is in our case. The ten Holmes-Watson stories in which copyright
persists are derivative from the earlier stories, so only original elements
added in the later stories remain protected. Id. at 49-50. The "freedom to
make new works based on public domain materials ends where the resulting
derivative work comes into conflict with a valid copyright," Warner Bros.
Entertainment, Inc. v. X One X Productions, 644 F.3d 584, 596 (8th Cir.
2011) - as Klinger acknowledges. But there is no such conflict in this case.”
22

Atlantic Canada Regional Council of Carpenters,
Millwrights, and Allied Workers v. Maritime
Environmental Training Institute Ltd., 2014 NSSC 64
¬ Is a person that commissions a work (a training manual) a joint author?
¬ “Although it is not required that joint authors make an equal contribution, the
joint author must made a substantial contribution to the expression of the
ideas.”
¬ “I have carefully read the affidavit evidence of Gus Doyle. The applicants have
failed to convince me, on the civil standard of the balance of probabilities, that
the scaffolding manual was a work of joint authorship. His affidavit evidence
does not establish in any manner, the applicants’ contribution to the creation of
this work. His affidavit consists of bare assertions as to ownership of the
work. It appears to me to be a commissioned work written by the unknown UK
company. I am persuaded that the UK company was the original author of the
manual in whom the copyright would have vested in 1991. Clearly there was
no assignment of the copyright by the UK company.”
23

Flansberry (Kapture Design) c. 6548890
Canada inc. (Turbo Marketing), 2014
QCCQ 10963
¬ Does a person that commissions a graphic design own the design?
¬ “Counsel for the Plaintiff has devoted much effort in argument, to draw a
parallel between the modern role of the graphic designer and he once played
by the photographer who manipulated boards and negative. This approach
would favor his client giving it the role of the one who commands a work to a
photographer against compensation as provided for in Article 13 (2) CA.
¬ With respect, the Tribunal can not assimilate the work involved in
photography. The provisions relating to photography controlled by a third
party, are an exception to Article 13 (1) CA in favor of the creator. This
exceptional regime must be interpreted restrictively…
¬ the absence of written assignment is fatal to the one who wants to own the
work of another that he is the artistic creator of the work under copyright.”
24

Prolite inc. c. Lasanté, 2014 QCCS 4727
¬ Does a person that hires an independent contractor to develop a website own the
site in the absence of a written agreement?
¬ “The outcome of the dispute lies in the contractual relationship of the parties in
late 2003 and early 2004, and not in the interpretation of the Copyright Act …
¬ The Court notes that at the time of Internet knowledge was limited
and Lasanté was much more experienced than James…
¬ The Tribunal accepts the testimony of James to the effect that in receiving
regular bills Lasanté or business, it has always understood that the website
belonged to the plaintiff…
¬ James may be a specialist in manufacturing caravans but he is not a specialist in
Internet and interpretation of the Copyright Act .The Tribunal accepts that at all
relevant times, until the events of 2013, James was convinced that his company
plaintiff owned websites have paid for the website design, various maintenance
and updates to over the years.
¬ The Court concludes that the websites are the property of the plaintiff and the
company is entitled to claim the access passwords and codes.”
25

Lachance c. Productions Marie Eykel inc.,
2014 QCCA 158
¬ Does an employee own copyright in a work created in the course of
employment if there is a significant amount of creativity expended in
creating the work?
¬ “Without necessarily share all the reasons for the trial judge, the Court is of
the opinion that in this case it has properly applied the conditions necessary
for the application of Article 13 (3) in view of the evidence adduced. Indeed,
the employer owns the copyright in the work of his employee when the
following conditions are met: 1) a work is created under an employment
contract; 2) such a work is created by an employee in the course of
employment; and 3) there is no stipulation to the contrary…
¬ Finally, contrary to what the appellant contends, the application of this
article is not attenuated by the degree of creativity that he was able to show
in the performance of its tasks, nor by destination of the work. In short,
creativity or destination is not among the conditions for the application
of Article 13(3).” (Google Translate)
26

Mejia v. LaSalle College International
Vancouver Inc., 2014 BCSC 1559
¬ Whether a photo taken by a teacher of students in a classroom depicting a
student’s project were made “in the course of employment” under s13(3)?
¬ “In Grayson v. Wellington Insurance Co. (1997), 1997 CanLII 4112 (BC CA), 37
B.C.L.R. (3d) 49… I note that Newbury J.A., at para. 26, commented generally
on the meaning of the phrase “in the course of employment” in a different
context, as follows:
¬ The phrase "in the course of employment" has long been construed widely
enough to include work done by an employee while he is "proceeding
generally about his master's affairs and not off-duty entirely”…and it has
been held that "in the course of" is wider than the word "during“…I also note
the recent decision of the Federal Court of Appeal in Blanchard v.
Canada [1995] 2 C.T.C. 262, where Linden J.A. reasoned that by using the
phrases "in the course of" and "by virtue of" in addition to the phrase "in
respect of employment" in s. 6(1)(a) of the Income Tax Act, Parliament had
intended to "emphasize that only the smallest connection to employment is
required to trigger the operation of the section."”
27

Mejia v. LaSalle College International
Vancouver Inc., 2014 BCSC 1559
¬ “The plaintiff was hired by LaSalle as an instructor and not as a
photographer. While an instructor “proceeding generally about his master's
affairs” could possibly be engaging in a wide variety of activities, whether paid
or unpaid, I do not view the taking of photographs to be an example of such an
activity. In the circumstances of this case, the taking of photographs was not
an activity that was generally considered to be within the duties of the plaintiff
instructor, and there was no contractual agreement that he do so. Though the
photograph is connected with the employer LaSalle by virtue of its subject and
the location in which it was taken, I do not view it as being connected with the
plaintiff’s employment.
¬ I find, therefore, that the photograph was not made in the course of the
plaintiff’s employment with LaSalle and, as such, s. 13(3) of the Copyright
Act does not apply. I find, pursuant to s. 13(1) of the Copyright Act, that the
plaintiff is the first owner of the copyright of the photograph in question.”
28

Kennedy v. Ruminski, 2014 FC 526
¬ What is an agreement to the contrary in s13(3)?
¬ “The parties agree that they have all made contributions to LoL (Law of
the Lan) Project and Product (in final development), and wish to
establish the share in the IP (Intellectual Property) that accrues to each
of the parties.
¬ Mike Kennedy (Product Conception & Project Financing) 80%
¬ Val Ruminski (Database Design & Programming) 20%”
¬ “The Memorandum purports to create “shares of IP” and/or “interests in IP”.
This is inconsistent with complete ownership of copyright in the works
created during the course of the employment relationship belonging to
either party.”
29

Innomax Group Inc. c. Rouma Homes Inc.,
2014 QCCS 1790
¬ Does a nunc pro tunc assignment permit actions for infringement before the
date it was signed?
¬ [W]e are faced with conflicting jurisprudence: on one hand,
decisions Bradale Distribution Enterprises Inc . and Harmony Consulting
Ltd. , giving rise, in some circumstances, the reconnaissance contracts nunc
pro tunc assignment copyright and the other side, the
decision JL . De Ball Canada Inc ., oust action brought by the assignee,
based on violations of law earlier author on the date of signing of the
sale nunc pro tunc …
¬ given the conflicting case law on copyright assignments nunc pro tunc, it
would be premature to end the use IM at this point, without allowing him to
provide evidence the circumstances surrounding the alleged verbal
assignment in June 2009 and as to the intentions of the transferor,
Management Innomax Ltd., on that date.” (Google Translate).
30

Wanless v. Mayfair Music Publications Inc.,
2014 ONSC 4806
¬ Does an agreement to sell copies of a work have to be in writing under
s13(4)?
¬ “Counsel for Mr. Loweth contends that it is pointless to grant Ms. Wanless’
motion to amend her statement of claim, given that, by virtue of section
13(4) of the Copyright Act (“the Act”), the agreement between
Ms. Wanless and the late John Loweth had to be in writing in order to be
valid.
¬ I disagree. Section 13(4) of the Act indicates that any assignment of a
copyright must be in writing to be valid. The section does not state that an
agreement between two persons in which one gives the other the right to sell
copyrighted material must be in writing. To that extent, Ms. Wanless’ oral
contract with John Loweth is not invalid.”
31

Cultural Industries Development Corporation
(SODEC) c. Canadian Broadcasting
Corporation (CBC), 2014 QCCS 951
¬ Does an exclusive license to produce and televise a French-language program
transfer a property interest in the copyright?
¬ Under French law, a license, even exclusive, does not transfer property rights in
copyright.
¬ A sublicense construed under Ontario cannot be used to give more rights to
the sub-licensee (CBC) as the licensee (Distraction) received under the license.
¬ [T]he Supreme Court of Canada in 2007 in the case Euro-Excellence inc . c. Kraft
Canada inc. confirms that there is a distinction and that the distinction between
assignments and exclusive licenses is important and significant…
¬ the Supreme Court confirmed that it is not for nothing that Article 2.7 of
the Copyright Act defines the exclusive license as "permission granted to the
licensee to perform act covered by copyright exclusively, whether granted by the
copyright owner or by a person who already holds an exclusive license ...” (Google
translate).
32

Planification-Organisation-Publications Système
(POPS) Ltée v. 9054-8181 Québec Inc., 2014 FCA 185
¬ Did the trial judge err by granting an implied license to use and make
adaptations to source codes where the plaintiffs had asked for a right to use
computer programs?
¬ “The respondents’ argument to the effect that the user licence sought
necessarily included access to the source code is in no way supported by the
evidence adduced at the hearing. The respondents concede in their
memorandum that the judge did not indicate in his reasons that such access was
a condition of the implicit user licence or that such access was necessary for the
use requested….
¬ However, neither the judge nor this Court can award more that what was sought
in the proceeding by the respondents…
¬ I therefore find it necessary to reformulate the judgment to limit the scope of the
licence to the use of all versions of Ceres, Omega, Epsilon and Comex existing
at the end of the collaboration…It is also necessary, in my view, to remove the
reference to the source code from paragraph viii) of the judgment and to amend
it so that it requires that only the versions described above be provided.”
33

Planification-Organisation-Publications Système
(POPS) Ltée v. 9054-8181 Québec Inc., 2014 FCA 185
¬ Did the trial judge err by finding that a non-exclusive license was perpetual and
not revocable for cause?
¬ “In my opinion, there is no generally applicable rule of law that would preclude a
non-exclusive user licence from being non-revocable when the licensee has
provided consideration. Neither the law nor the Act restrict the parties’
contractual freedom in this regard. In every case, it is for the trial judge to
determine the terms that are implicit in the contract in light of all of the relevant
contextual elements in civil law.
¬ This is exactly what the judge did in this case and the appellants have not
established the existence of any palpable or overriding error in this regard.
Naturally, and as the appellants argue, the expression “non-revocable” must not
be understood in its strictly narrow sense. It certainly means, as the judge
indicated, that the appellants cannot repudiate the licence unilaterally or
wantonly. It is not necessary to attempt to define the situations in which such a
licence could be repudiated because in this case and for the reasons that follow I
am satisfied that the appellants had no such right, whether the licence was
revocable for misconduct or non-revocable.”
34

Exclusive Rights
35

Canadian Broadcasting Corporation v.
Sodrac 2003 Inc 2014 FCA 84
¬ Do broadcasters have to pay for the right to make ephemeral copies of
musical works synced in programming under Bishop v Stevens or was that
decision overruled in ESA?
¬ “In my view, this passage [from ESA] reaffirms the fundamental distinction
between reproduction and performance (communication to the public by
telecommunication) that the Court articulated in Bishop v. Stevens. Nothing in
this passage, or elsewhere in ESA, would authorize the Board to create a
category of reproductions or copies which, by their association with
broadcasting, would cease to be protected by the Act. ESA did not explicitly,
or by necessary implication, overrule Bishop v. Stevens.
¬ As a result, I am unable to accept the Broadcasters’ argument that the
comments about technological neutrality in ESA have changed the legal
landscape to the point where the Board erred in finding that incidental copies
are protected by copyright. The Broadcasters’ argument with respect to
technological neutrality fails.”
36

Canadian Broadcasting Corporation v
SODRAC 2003 Inc. Supreme Court file 35918
“Intellectual property law — Judicial review — Copyright — Licenses —
Licensing societies — Royalties — Ephemeral copies — Application by
broadcaster for review of licenses issued by Copyright Board allowed in part
— Collective society imposing royalties on producers of content and
broadcasters — Licences allow collective society to collect royalties for copies
incidental to use of new broadcast technologies — Whether the Court of
Appeal erred in refusing to apply the principle of technological neutrality
in its interpretation and application of the Copyright Act, R.S.C. 1985,
c. C-42 — Whether the Court of Appeal erred by adopting a non-
technologically neutral interpretation of the Copyright Act that fails to
achieve the correct balance between the rights of copyright holders and
users, as well as the public interest in fostering innovation — Whether
the Court of Appeal erred by departing from this Court’s jurisprudence on the
grounds that they provide insufficient guidance.” (emphasis added)
37

Labrecque (O Sauna) c. Trudel (bellaza
Centre GP), 2014 QCCQ 2595
¬ Does posting a photo retrieved using Google Image search on the web
infringe?
¬ “The fact that the defendants were able to get their hands on that photograph
through the Google search engine on the Internet it comes then change the
right enjoyed by Ms. Labrecque?
¬ It would probably be at first tempted to think given the democratization of the
Internet qu'amène information.
¬ There are indeed a huge amount of data including images, which for the
most part, do not indicate be protected by any right of author.
¬ In the Tribunal's view, the effect would have to think so much easier to be
able to circumvent legislation on this subject, so that as soon as a work is
available on the Internet, it falls outside the legal field of property
intellectual.” (Google Translate)
38

Labrecque (O Sauna) c. Trudel (bellaza
Centre GP), 2014 QCCQ 2595
¬ “The author Stéphane Gilter then lying on the subject, also came to the same conclusion
that says:
¬ The functioning of the Internet, the constant exchange of digital files, is to facilitate
copying and probably contributes to trivialize it. The fact remains that the rules of
copyright apply in the digital environment, the Act even enshrining the principle of
technological neutrality. Thus, an author does not lose his rights merely because a work
is dematerialized and used or distributed without physical media. As expressed by the
Chief Justice McLachlin, on behalf of the Supreme Court:
¬ The subsection 3 (1) of the Copyright Act reflects the principle of media neutrality,
recognizing a right to produce or reproduce a work "in any material form." Media
neutrality means that the Copyright Act continues to apply despite the use of
different media, including those that rely on more advanced technology. However, it
does not mean that after his conversion to electronic data, a work can be used
anyhow. The final work remains subject to the Copyright Act . The principle of media
neutrality does not rule out the rights of authors - it was established to protect the
rights of authors and others as technology evolves.
¬ Whether to respect the neutrality of the support, it follows that the rules we have
previously described and briefly apply fully to digital environments…” (Google
Translate)
39

Leuthold v. Canadian Broadcasting
Corporation, 2014 FCA 173
¬ Does par 2.4(1)(c) make a person who transmits programming to BDUs as part of a network
liable for a single network wide communication or for each communication made by each
BDU?
¬ “I am of the view that paragraph 2.4(1)(c), properly interpreted, has the effect of making a
network transmission of cable programming material to the public via BDUs a single
infringement of a copyright holder’s rights if the network has not properly cleared the rights
with respect to that transmission.”
¬ “This reading of paragraph 2.4(1)(c) of the Act moves in the direction of technological
neutrality in that the number of infringing acts does not vary according to the number of
intermediaries in the transmission chain. This is consistent with the goal of technological
neutrality which the Supreme Court articulated in Entertainment Software Association v.
Society of Composers, Authors and Music Publishers of Canada, 2012 SCC 34…
¬ Paragraph 2.4(1)(c) serves to distinguish this case from Bishop v. Stevens where, as noted,
each unauthorized reproduction was found to be a violation of the copyright holder’s rights.
While that may have been the case for unauthorized communications to the public by
telecommunication prior to the passage of paragraph 2.4(1)(c) and its companion disposition
subsection 31(2) of the Act, it is no longer the case now.”
40

Leuthold v. Canadian Broadcasting
Corporation, Supreme Court (leave
application) file 36030
Statement of issue:
¬ “Pursuant to Paragraph 2.4(1)(c) of the Act, does a
transmission of an unlicensed work protected by
copyright by a production undertaking to more than one
distribution undertaking result in more than one
transmission for which the production undertaking and
each of those distribution undertakings are jointly and
severally liable?”
41

SOCAN Tariffs 22.D.1 – Audiovisual webcasts and
22.D.2 – Audiovisual user-generated content for the
years 2007 to 2013, Copyright Board July 18, 2014
¬ “Netflix argued that royalties on free trials are a violation of the
Supreme Court principle of technological neutrality established in
ESA. We do not agree.
¬ The principle of technological neutrality is that, since only the
reproduction right is triggered when a CD is sold in a store, only the
reproduction right should be triggered when a digital album is sold
online. The CD is an alternative technology to the digital download.
There is no alternative- technology equivalent to a Netflix free trial.
Video stores never offered a free month’s membership with the right
to rent as many videos as the customer wanted for no additional
charge. Thus, there is no issue with technological neutrality.”
42

¬ “The decision of the Supreme Court of Canada in ESA v. SOCAN meant
that SOCAN no longer had the right to collect royalties for permanent
downloads and limited downloads. This was reflected in the Board’s recent
decision on online music services which had been structured the same way.
As a result, neither agreement filed by SOCAN makes reference to
downloads.”
¬ See also, Re:Sound No. Tariff 8 – Non-interactive and semi-interactive
webcasts, 2009-2012, Copyright Board, May 14, 2014 “since the decision of
the Supreme Court of Canada in Entertainment Software Association v.
Society of Composers, Authors and Music Publishers of Canada, downloads
of musical works or other subject-matter do not engage the right of
communication to the public by telecommunication but only the reproduction
right. Therefore, the distinction between a communication and a
transmission, when referring to copyright-protected content, is now very
important. A communication is a type of transmission but not all
transmissions are communications.”
43

John Kaldor Fabricmaker UK Ltd v Lee Ann Fashions
Ltd [2014] EWHC 3779 (IPEC) (21 November 2014)
¬ (1) The first stage is to consider whether the claimant has established a prima facie
inference of direct or indirect copying by reason of the similarities between the
copyright work and the defendant's work.
¬ (2) Similarities which constitute the expression of ideas that have no connection with
the literary, dramatic, musical or artistic nature of the work are to be disregarded.
¬ (3) Similarities not thus excluded but which are shown to be commonplace give rise to
little or no inference of copying; the nearer a similarity approaches the strikingly
original end of the spectrum, the greater weight it carries in supporting an inference of
copying.
¬ (4) If the claimant establishes a prima facie case of inferred copying, this may be
rebutted by the defendant's evidence of independent design. The stronger the prima
facie case, the more cogent the defendant's evidence must be to rebut the inference.
the two works.
¬ (5) If there is no finding of copying, there is no infringement. If there is a finding of fact
that there has been copying, the next stage is to consider whether copying was done
either in relation to the copyright work as a whole or any substantial part of it.
44

John Kaldor Fabricmaker UK Ltd v Lee Ann Fashions
Ltd [2014] EWHC 3779 (IPEC) (21 November 2014)
¬ (6) Designers Guild sanctions two alternative approaches to the question of substantial
part. They are alternatives because neither was expressly endorsed by a majority. The
first is to disregard the defendant's work and to assess whether the similarities from
which an inference of copying was drawn constitute a substantial part of the copyright
work. This is a qualitative, not a quantitative assessment. The second, which applies
only in an instance of altered copying, is to determine whether the infringer has
incorporated a substantial part of the intellectual creation of the author of the work. In
many cases the difference between the two approaches to an allegation of altered
copying may be limited.
¬ (7) To the extent that it has not already been excluded under step (3), a commonplace
similarity can in any event make no contribution to any substantial part of the copyright
work alleged to have been copied since it is not capable of attracting copyright
protection.
¬ (8) Assessment of whether there has been copying of a substantial part of the
copyright work is a necessary and distinct step in the determination of whether the
defendant has infringed. However, where copying has been established, on the facts it
may be that this will almost inevitably lead to the conclusion that a substantial part of
the copyright work has been copied. This may be influenced by the degree to which
the finding of copying depended on the similarities between the two works.
45

Geophysical Service Incorporated v Nwest
Energy Corp 2014 ABQB 205
¬ Does a person who merely receives a copy of seismic data protected by
copyright liable for infringement?
¬ “In regards to copyright, the claim is in essence that if a person obtains a
pirated copy of copyright material and performs it, or shows it to others, or
plays it on the radio, then the viewer, reader or listener is liable to the
owner of the copyright for infringement merely by virtue of having seen or
heard it. The Copyright Act (Canada) goes to great lengths to define what
constitutes infringement of copyright, but I have been unable to find in any
of the definitions and exceptions to definitions that merely receiving,
reading, or hearing a copyright work constitutes infringement, even if the
recipient knew that the work is a pirated copy.”
46

Hayward Industries inc. c. Pool equipment
Carvin inc. , 2014 QCCS 2400
¬ Is copying a training manual for use in a chlorinator infringement?
¬ “Hayward argues that this latest version is 70% identical to its manual…
¬ According to Carvin , an instruction manual for the use of a chlorinator is a document
that helps a consumer to use the product. In the case of similar products in the same
industry, it argues that it is not surprising that textbooks are the same, given the lack
of originality and inherent creativity.
¬ In this regard and by analogy, it refers to an Ontario decision [Kilvingston
Bros. Ltd . v. Herbert Goldberg et al ., (1957) 16 Fox Pat., p. 164-168] citing Judson
J. of the Supreme Court of Ontario:
¬ The similarities are plain to be seen purpose They do not enable me to draw an
inference of copying. Tombstone workers were working task of this kind are
working with common ideas and with only a limited field for the expression of
those ideas. It is not surprising que la results are similar.
¬ In other words, the information contained in textbooks of the two parties of a
"common source" or, in this case, the operation of salt chlorinator pool, so that the
ideas to be expressed in textbooks are common.” (Google Translate)
47

American Broadcasting v. Aereo, Inc., 134 S.
Ct. 2498
¬ “We do not see how the fact that Aereo transmits via personal copies of
programs could make a difference. The Act applies to transmissions "by means
of any device or process." Ibid. And retransmitting a television program using
user-specific copies is a "process" of transmitting a performance. A "cop[y]" of a
work is simply a "material objec[t] ... in which a work is fixed ... and from which
the work can be perceived, reproduced, or otherwise communicated." Ibid. So
whether Aereo transmits from the same or separate copies, it performs the same
work; it shows the same images and makes audible the same sounds. Therefore,
when Aereo streams the same television program to multiple subscribers, it
"transmit[s] ... a performance" to all of them.”
¬ “Finally, we note that Aereo's subscribers may receive the same programs at
different times and locations. This fact does not help Aereo, however, for the
Transmit Clause expressly provides that an entity may perform publicly "whether
the members of the public capable of receiving the performance ... receive it in
the same place or in separate places and at the same time or at different
times." Ibid. In other words, "the public" need not be situated together, spatially or
temporally.”
48

UPC Telekabel Wien (Judgment of the Court)
[2014] EUECJ C-314/12 (27 March 2014)
¬ Does a website that makes streams and downloads of infringing copies
movies and TV programming infringe the making available right even without
proof of any access?
¬ “… rightholders have the exclusive right to authorise or prohibit any act of
making available to the public, it must be stated that an act of making
protected subject-matter available to the public on a website without the
rightholders’ consent infringes copyright and related rights…
¬ …holders of a copyright or of a related right may act without having to prove
that the customers of an internet service provider actually access the
protected subject-matter made available to the public without their
agreement.
¬ That is all the more so since the existence of an act of making a work
available to the public presupposes only that the work was made available to
the public; it is not decisive that persons who make up that public have
actually had access to that work or not (see, to that effect, Case
C-306/05 SGAE [2006] ECR I-11519, paragraph 43).”
49

Svensson v Retriever Sverige AB, (13 February
2014) CJEU, Case C-466/12 (13 February 2014)
¬ Does a person infringe the communication right by providing hyperlink to a
work?
¬ A work that is posted on a website is communicated to the public by virtue of
its being made available to the public.
¬ An ordinary clickable hyperlink to a work can make it available to the public,
whether the work is accessed through the link or not.
¬ Whether a link makes a work available to the to the public depends on a
number of factors. It must be made available to the same public as the public
for the work at the location to which it was made freely available by the rights
holder. If the work at the original site is protected by a technical measure,
has been taken down, is otherwise inaccessible, or if the link otherwise
makes the work available to a public other than the public for whom the work
is made available at the original site, the link to the file would make it
available to the public and would be an infringing act.
¬ A link that makes available a work in a frame would appear to be assessed
using the same principles.
50

BestWater International (Order) [2014]
EUECJ C-348 / 13_CO (21 October 2014)
¬ Does the act of framing to a non-infringing copy of a work made freely
available on the Internet infringe the communication to the public right?
¬ “The mere fact that a protected work, freely available on an internet site,
is inserted into another internet site by means of a link using the ‘framing’
technique, such as that used in the case in the main proceedings, cannot
classified as ‘communication to the public’ within the meaning of Article
3(1) of Directive 2001/29/EC of the European Parliament and of the
Council of 22 May 2001 on the harmonisation of certain aspects of
copyright and related rights in the information society since the work at
issue is not transmitted to a new public or communicated a specific
technical method different from that of the original communication.”
51

Paramount Home Entertainment & Anor v
British Sky Broadcasting & Ors [2014]
EWHC 937 (Ch) (18 February 2014)
¬ Do websites that offer streaming of movies and TV programming using an
embedded player to infringing copies make available and communicate the
works to the public so as to enable a court to make a blocking order against
ISPs?
¬ Svensson ”is…of some interest because it establishes more clearly than
previous authority had done that the mere provision of access by means of a
hyperlink will normally amount to a communication within the meaning of
Article 3(1). Furthermore, it will normally amount to a "communication to the
public" within the meaning of that Article.”
¬ For present purposes, I need only refer to paragraph 32 of Paramount v
BSB where Arnold J…took the view that the operators were intervening in a
highly material way to make the copyright works available to a new
audience. I respectfully agree, and I see no reason to come to any different
conclusion in the circumstances of the present case.”
52

1967 Ltd & Ors v British Sky Broadcasting Ltd
& Ors [2014] EWHC 3444 (Ch) (23 October 2014)
¬ Do users of BitTorrent sites communicate musical works to the public?
¬ “In Svensson the CJEU ruled that the provision on a website of clickable links to
works freely available on another website does not constitute an act of
communication to the public within Article 3(1) of the Information Society
Directive. It held at [17]-[20] that there was an act of communication, but it held at
[21]-[31] that the communication was not to the public since it was not to a new
public, that is to say, a public which had not been taken into account by the
copyright owners when they authorised the initial communication to the public.
The reason for this was that all internet users could freely access the works on
the other website to which the works had been communicated with the
authorisation of the copyright owners…
¬ Accordingly, I remain of the view that, where UK users of a Bittorrent website
upload recordings as part of a swarm, all three questions fall to be answered in
the affirmative: see EMI v Sky at [39]-[41]. It follows that UK users of the Target
Websites infringe in this way as well. It is immaterial that 13 of the Target
Websites do not permit uploading of torrent files.”
53

¬ Do operators of BitTorrent sites communicate musical works to the public?
¬ “In my judgment, the operators of the Target Websites do communicate Members'
recordings to the public for the following reasons.
¬ First, the operators of the Target Websites communicate the recordings by electronic
transmission. Their role is by no means passive. On the contrary, they intervene in an
active and highly material way so as to enable users to access and to download
recordings content in an easy and convenient way. This is true not only of the eight
Target Websites which allow their users to upload torrent files, but also of the 13 Target
Websites which only aggregate links to torrent files on other websites…
¬ Secondly, the communication is to the public. In at least eight cases, this is because the
communication uses a different technical means to that of the previous communication.
Even if the communication is not by a different technical means to that of the previous
communication in the case of the 13 Target Websites that use crawlers, as to which I
shall refrain from expressing a view, it is a communication to a new public, which is to
say a public which was not considered by the rightholders concerned when they
authorised the original communication or other act of dissemination of the recordings.”
54

OSA – Ochranný svaz autorský pro práva k dílům
hudebním o.s. v Léčebné lázně Mariánské Lázně a.s.,
CJEU, Case C-351/12, February 27, 2014
¬ Does the operator of a spa communicate works when it transmits works through TVs
and radios to rooms?
¬ “First of all, the concept of ‘communication’ must be construed as referring to any
transmission of the protected works, irrespective of the technical means or process
used…
¬ Therefore, the operator of a spa establishment carries out a communication when it
deliberately transmits protected works, by intentionally distributing a signal through
television or radio sets, in the rooms of the patients of that establishment…
¬ As regards that last criterion specifically, the cumulative effect of making the works
available to potential recipients should be taken into account. It is in particular relevant
in that respect to ascertain the number of persons who have access to the same work
at the same time and successively…
¬ As the Advocate General noted in point 28 of her Opinion, a spa establishment is likely
to accommodate, both at the same time and successively, an indeterminate but fairly
large number of people who can receive broadcasts in their rooms.”
55

Jurisdiction
56

Davydiuk v. Internet Archive Canada, 2014
FC 944
¬ Does the Federal Court have jurisdiction over the Internet Archive for copyright
infringement by archiving materials on a Canadian website on servers in the US?
¬ “Both parties agree that the Prothonotary correctly used SOCAN to establish jurisdiction
as the test for “real and substantial” connection…
¬ I find that Internet Archive did reach into Canada to the Intercan website when they
requested the web pages. Whether it was automated or not does not affect my finding.
The action of “following a link” or “requesting pages” as described by Internet Archive
requires Internet Archive to reach out to the Canadian servers that subsequently
transmit back to the United States. The request and return transmission is not done with
permission or on consent. The Canadian public can access the webpage and have it
transmitted back to Canada. This is exactly the evidence Daniel Davydiuk provided the
Court…
¬ In reference to a trademark matter, in HomeAway.com, Inc v Hrdlicka, 2012 FC 1467
(CanLII) at para 22, Justice Roger T. Hughes found that a trademark simply appearing
on a computer screen in Canada constituted use and advertising in Canada. I would
apply the same rationale that two people accessing a website in Canada constitutes
access in Canada.”
57

Paramount Home Entertainment & Anor v
British Sky Broadcasting & Ors [2014] EWHC
937 (Ch) (18 February 2014)
¬ Does the UK copyright statute apply to foreign websites that offer streaming of movies
and TV programming to UK users?
¬ “Earlier cases, including in particular EMI Records Ltd v British Sky Broadcasting
Ltd [2013] EWHC 379 (Ch), list the factors which have in the past led the court to
conclude that the acts of communication were targeted at the UK. They include such
matters as the number of users of the relevant websites in the UK, the inclusion on the
websites of large numbers of recordings by UK artists which were otherwise in
demand in the UK, the fact that the default language of the websites was English, and
the presence of advertisements with prices in sterling.
¬ In the context of the present case, which of course involves films and TV programmes
rather than musical recordings, these and similar factors are clearly established on the
evidence. There is evidence, for example, about the degree of popularity of the
websites in the UK, about advertisements published on them which are clearly aimed
at the UK market, and that English is the default language of each website. In short, I
am fully satisfied that this particular requirement is fulfilled.”
58

¬ Does the UK copyright statute apply to foreign BitTorrent websites that
offer services to UK users?
¬ “…the Target Websites' acts of communication to the public are
targeted at the public in the UK: (a) the Target Websites are all in the
English language (albeit that three of them offer alternative languages);
(b) a large number of visitors to the websites (and a significant
proportion of their total number of visitors) are from the UK; (c) a
substantial proportion of the albums on the UK Top 40 albums chart
were available on the websites on inspection, and (d) the advertising
on the Target Websites, and certain additional features of the sites, are
targeted in many instances at the UK.”
59

Omnibill (Pty) Ltd v Egpsxxx Ltd & Anor
[2014] EWHC 3762 (IPEC) (17 November 2014)
¬ Does posting photos on a website hosted in South Africa infringe copyright in the UK
where the photos are available from the South African sub-domain and site targets South
African, UK and other users?
¬ “Looking at the Escortgps site as a whole and the sub-domains, it is not correct to
analyse them as a series of separate national sites. In truth, this is a single global
offering with national elements. One can infer from the content of the site that the
operators intend that, for example, visitors from the UK will visit the South African sub-
domain…
¬ I recognise that there is a significant local element to the content of the South African
sub-domain. Mr Heald is right to emphasise that the services offered by the escorts are
obviously located in South Africa and the prices are in Rand and so on. However,
although part of the way in which this website raises revenue is through selling premium
advertising services to the escorts themselves, another important way in which the
operators of the Escortgps website earn revenue is by generating traffic to the site and
earning money from advertising. That traffic can be from anywhere in the world. It is
therefore in the interests of the operators of the website that, for example, visitors from
the UK will visit the South African sub-domain albeit that those visitors may only be doing
that for the purposes of titillation…”
60

Omnibill (Pty) Ltd v Egpsxxx Ltd & Anor
[2014] EWHC 3762 (IPEC) (17 November 2014)
¬ “It was common ground that mere accessibility on the internet is not enough to
show infringement, otherwise every website would be potentially amenable to
the jurisdiction of every country in the world. However, as Mr Ward submitted,
a finding that this site is at least in part targeted to the UK is consistent with the
purpose of that concept in copyright law. The way the site is constructed with a
global front page will clearly attract users from many countries. The operators
of the website intend that to be the case. There is nothing surprising about the
fact that a substantial proportion of the visitors to the South African sub-domain
are from the UK.
¬ I find that the first defendant's Escortgps website and the sub-domain at
www.southafrica.escortgps.xxx were communicating reproductions of the
claimant's artistic works to the public in the UK.”
61

Martin Blomqvist v Rolex SA, [2014] EUECJ
C-98/13 (06 February 2014)
¬ Is a pirated good distributed for copyright purposes in a member State when it is
purchased online from a non-member State and shipped from another non-member
State?
¬ “…goods coming from a non - member State which are...copies of goods protected in
the European Union by copyright…can be classified as… ‘pirated goods’ where it is
proven that they are intended to be put on sale in the European Union, such proof being
provided, inter alia, where it turns out that the goods have been sold to a customer in
the European Union or offered for sale or advertised to consumers in the European
Union…
¬ In the light of the foregoing, the answer to the questions referred is that the customs
regulation must be interpreted as meaning that the holder of an intellectual property right
over goods sold to a person residing in the territory of a Member State through an online
sales website in a non - member country enjoys the protection afforded to that holder by
that regulation at the time when those goods enter the territory of that Member State
merely by virtue of the acquisition of those goods. It is not necessary, in addition, for the
goods at issue to have been the subject, prior to the sale, of an offer for sale or
advertising targeting consumers of that State.”
62

Defenses
63

Public Relations Consultants Association v
Newspaper Licensing Agency Ltd & Ors (Judgment
of the Court) [2014] EUECJ C-360/13 (5 June 2014)
¬ Does web browsing of non-infringing copies of works infringe the
reproduction right or does the exception for temporary acts of copying
apply?
¬ “Article 5 of Directive 2001/29/EC of the European Parliament and of the
Council of 22 May 2001 on the harmonisation of certain aspects of
copyright and related rights in the information society must be interpreted
as meaning that the copies on the user’s computer screen and the copies
in the internet ‘cache’ of that computer’s hard disk, made by an end-user in
the course of viewing a website, satisfy the conditions that those copies
must be temporary, that they must be transient or incidental in nature and
that they must constitute an integral and essential part of a technological
process, as well as the conditions laid down in Article 5(5) of that directive,
and that they may therefore be made without the authorisation of the
copyright holders.”
64

¬ “Netflix also wanted the Board to find that the free trials are fair
dealing in the same way that the Board found that free previews are
fair dealing. We decline to do so, for several reasons.
¬ First, the analogy between free previews and free trials is weak. In a
free preview, the customer can hear a portion of a musical work in a
degraded format. In a free trial, the customer can hear complete
musical works, to the extent that such works are fixed in the
audiovisual work being watched…
¬ Third, and equally importantly, we do not have the evidentiary base
with which to make that decision… the fact that Netflix declined to
participate in the process for many months is sufficient reason for us
to decline to do so. If Netflix now wants to argue that it does not owe
anything for its free trials, the appropriate forum in which to do so is
not the Board.”
65

Authors Guild, Inc. v. HathiTrust, 755 F. 3d
87 (2nd. Circuit June 10, 2014)
¬ “Turning to the first factor, we conclude that the creation of a full-text
searchable database is a quintessentially transformative use. As the example
on page 7,supra, demonstrates, the result of a word search is different in
purpose, character, expression, meaning, and message from the page (and
the book) from which it is drawn. Indeed, we can discern little or no
resemblance between the original text and the results of the HDL full-text
search.
¬ There is no evidence that the Authors write with the purpose of enabling text
searches of their books. Consequently, the full-text search function does not
"supersede[] the objects [or purposes] of the original creation,“…
¬ In sum, we conclude that the doctrine of fair use allows the Libraries to digitize
copyrighted works for the purpose of permitting full-text searches.”
¬ “We conclude that providing access to the print-disabled is still a valid purpose
under Factor One even though it is not transformative. We reach that
conclusion for several reasons.”
66

CAMBRIDGE UNIVERSITY PRESS v. Patton,
(11th. Circuit October 17, 2014)
¬ Does placing portions of textbooks on e-reserves constitute fair use?
¬ “The District Court did not err in holding that the first factor—the purpose and character of
the use—favors fair use. Although Defendants' use was nontransformative, it was also for
nonprofit educational purposes, which are favored under the fair use statute.”
¬ “[T]he District Court did err in holding that the second fair use factor—the nature of the
copyrighted work—favors fair use in every case…the District Court should have held that
the second factor was neutral or even weighed against fair use where such material
dominated.
¬ “With regard to the third factor—the amount used in relation to the copyrighted work as a
whole—the District Court erred in setting a 10 percent-or-one-chapter benchmark. The
District Court should have performed this analysis on a work-by-work basis, taking into
account whether the amount taken— qualitatively and quantitatively—was reasonable in
light of the pedagogical purpose of the use and the threat of market substitution.”
¬ With regard to the fourth factor—the effect of Defendants' use on the market for the
original—the District Court did not err. However, because Defendants' unpaid copying was
nontransformative and they used Plaintiffs' works for one of the purposes for which they are
marketed, the threat of market substitution is severe. Therefore, the District Court should
have afforded the fourth fair use factor more significant weight in its overall fair use
analysis.”
67

Kienitz v. Sconnie Nation LLC, 766 F. 3d 756
(7th. Cir. Sept. 15, 2014)
¬ “We're skeptical of Cariou's approach, because asking exclusively
whether something is "transformative" not only replaces the list in § 107
but also could override 17 U.S.C. § 106(2), which protects derivative
works. To say that a new use transforms the work is precisely to say that it
is derivative and thus, one might suppose, protected under §
106(2). Cariou and its predecessors in the Second Circuit do no explain
how every "transformative use" can be "fair use" without extinguishing the
author's rights under § 106(2).
¬ We think it best to stick with the statutory list, of which the most important
usually is the fourth (market effect).”
68

Deckmyn and Vrijheidsfonds (Judgment of the
Court) [2014] EUECJ C-201/13 (3 September 2014)
¬ Is a political cartoon drawing capable of being a parody?
¬ “Article 5(3)(k) of Directive 2001/29 must be interpreted as meaning that the
essential characteristics of parody, are, first, to evoke an existing work, while
being noticeably different from it, and secondly, to constitute an expression of
humour or mockery. The concept of ‘parody’, within the meaning of that
provision, is not subject to the conditions that the parody should display an
original character of its own, other than that of displaying noticeable differences
with respect to the original parodied work; that it could reasonably be attributed to
a person other than the author of the original work itself; that it should relate to
the original work itself or mention the source of the parodied work.
¬ However, the application, in a particular case, of the exception for parody, within
the meaning of Article 5(3)(k) of Directive 2001/29, must strike a fair balance
between, on the one hand, the interests and rights of persons referred to in
Articles 2 and 3 of that directive, and, on the other, the freedom of expression of
the user of a protected work who is relying on the exception for parody, within the
meaning of Article 5(3)(k).”
69

Media Monitoring 2011-2016 (Copyright
Board) August 8, 2014
¬ Are Provincial governments bound by the Copyright Act and liable to pay
royalties for reproducing radio and TV programming and signals? Is this activity a
fair dealing?
¬ “Another ground of objection for some provinces was that they are not bound by
the Act because of their Crown Immunity. As part of another proceeding, the
governments of seven provinces and one territory challenged the legality of the
proposed Access Copyright tariffs for the reproduction of works for the years
2005 to 2014 on the basis of Crown Immunity. On January 5, 2012, the Board
dismissed the provinces and territories’ claim of Crown Immunity by reason that
the Act binds the Crown by necessary implication. We maintain that position.”
¬ “According to the province of Alberta, the proposed royalties do not reflect the fair
or appropriate value of the copying done by Alberta’s employees and do not
account for the fact that many copying activities made by its employees are non-
infringing, exempted or excluded such as fair dealing for research purposes or
insubstantial copying.”
70

Remedies
71

Voltage Pictures LLC v. John Doe, 2014
FC 161
¬ “Privacy considerations should not be a shield for wrongdoing and
must yield to an injured party’s request for information from non-
parties. This should be the case irrespective of the type of right
the claimant holds. The protection of intellectual property is ipso
facto assumed to be worthy of legal protection where a valid
cause of action is established. There is little dispute with the
correctness of this assertion. Copyright is a valuable asset which
should not be easily defeated by infringers. The difficulty in this
case is that it is not clear that the protection of copyright is the
sole motivating factor supporting Voltage’s claim in this Court.”
¬ Subscriber data ordered to be provided on terms.
72

Geophysical Service Incorporated v. Canada-Nova-
Scotia Offshore Petrolium Board, 2014 FC 450
¬ Where the plaintiffs have established a prima facie case of copyright
infringement can they get an interlocutory injunction without proving they will
suffer irreparable harm?
¬ “There exist situations where the applicant’s case is sufficiently strong that the
threshold for meeting the other two factors can be set so low as to be
irrelevant. I believe that this may have been the approach underlying the
statement in Diamant Toys, above, that it was not necessary to establish
irreparable harm where copying is blatant.
¬ These are not the facts in this case. Figure 5.5 is the result of extensive
reworking and adaptation of materials originating not just from the applicant,
but from many other contributors to produce a document that bears very little
resemblance or content to that of the copyrighted material.
¬ Accordingly, I conclude that the applicant must demonstrate by clear and non-
speculative evidence that it will suffer irreparable harm, not compensable in
damages, between now and the outcome of the trial if the injunction is not
granted.”
73

Jules Jordan Video inc. c. 144942 Canada
inc., 2014 QCCS 3343
¬ Will a Quebec court recognize and enforce a copyright
judgment for monetary damages from a U.S. court?
¬ Yes, except under Section 3155 of the Civil Code: the
decision was rendered had no jurisdiction under the
provisions of this title; was made in violation of basic
principles of procedure; or the result of the foreign
decision is manifestly incompatible with public order as
understood in international relations.
74

Resource Well Completion Technologies Inc.
v Canuck Completions Ltd., 2014 ABQB 209
¬ Is an employee who reverse engineers a piece of equipment personally liable for
infringement by making indirect copies of drawings?
¬ “If these allegations are true, one of three scenarios appears possible:
¬ 1. Mr. Graf did so at the request of his employer and it is arguable, in line with the case
law, that this act was so egregious, i.e. tantamount to theft, that it should attract personal
liability. Arguably, an employee cannot undertake such acts and claim immunity on the
basis that it was in the course of his employment.
¬ 2. He alone, or in concert with others, caused the corporation to do these acts, and they
were not in the best interests of the corporation, as a corporation’s best interests involve
acting in a bona fide way, with the result that, arguably, he should be personally liable.
¬ 3. He did so unbeknownst to his employer, who hired him to develop the equipment, not
steal the design from a competitor, and it can be argued, in line with the case law, that his
acts take on the independence necessary to find him personally liable.
¬ The result is that, at this stage of the proceedings, it cannot be said that the claim against
Mr. Graf is hopeless.”
¬ What about Section 64.1?
75

Mitchell Repair Information Company v.
Wayne Long, 2014 FC 562
“The plaintiff requested orders directed at third parties to shut down or
remove from public viewing and access infringing advertisements, web
pages, profiles etc., in addition to requiring other third parties to disclose
information related to these matters. These third parties in some instances
were not identified and in others, such as with Paypal, were named, but
without being served or otherwise put on notice of the requests for
injunctive orders directed at them. Courts would not normally make orders,
and in particular injunctions, against third parties unless they have been
put on notice and provided with an opportunity to respond and participate
in the application. The plaintiff provided no jurisprudence demonstrating
that similar orders had been granted without notice to persons affected
thereby. The requested orders are therefore refused.”
76

UPC Telekabel Wien (Judgment of the Court)
[2014] EUECJ C-314/12 (27 March 2014)
¬ Does making a blocking order against a website that makes streams and
downloads of infringing copies movies and TV programming available to the
public consistent with fundamental rights recognized by EU law?
¬ “The fundamental rights recognised by EU law must be interpreted as not
precluding a court injunction prohibiting an internet service provider from allowing
its customers access to a website placing protected subject-matter online without
the agreement of the rightholders when that injunction does not specify the
measures which that access provider must take and when that access provider
can avoid incurring coercive penalties for breach of that injunction by showing
that it has taken all reasonable measures, provided that (i) the measures taken
do not unnecessarily deprive internet users of the possibility of lawfully accessing
the information available and (ii) that those measures have the effect of
preventing unauthorised access to the protected subject-matter or, at least, of
making it difficult to achieve and of seriously discouraging internet users who are
using the services of the addressee of that injunction from accessing the subject-
matter that has been made available to them in breach of the intellectual property
right, that being a matter for the national authorities and courts to establish.”
77

Equustek Solutions Inc. v. Jack, 2014
BCSC 1063
¬ Can a court make a word wide de-indexing order against a search engine to
block specific websites to enforce a court order in which the operations of the
sites are found to be infringing to?
¬ “The Court has inherent jurisdiction to maintain the rule of law and to control
its own process. The power to grant injunctions is a broad one and is
confirmed by s. 39 of the Law and Equity Act. Injunctions may be issued in "in
all cases in which it appears to the court to be just or convenient that the
order should be made ... on terms and conditions the court thinks just”…
¬ I conclude that the Court has authority to grant an injunction against a non-
party resident in a foreign jurisdiction in appropriate circumstances. The fact
that an injunction has not before been made against an internet search
provider such as Google is reason to tread carefully, but does not establish
that the Court does not have subject matter competence. Indeed, the notion
that a court may only make the orders it has made in the past is anathema to
the spirit of the common law.”
78

Cartier International AG & Ors v British Sky
Broadcasting Ltd & Ors [2014] EWHC 3354
(Ch) (17 October 2014)
¬ Does a court have inherent jurisdiction to grant a web site
blocking order against ISPs against sites that sell counterfeit
goods?
¬ “…not only does the Court have jurisdiction to grant a website
blocking injunction against an ISP in a trade mark case, but also
there is a principled basis upon which the Court may exercise
that jurisdiction.
¬ Accordingly, I conclude that, upon a purely domestic
interpretation of section 37(1), the Court has jurisdiction to grant
the orders sought by Richemont and that there is a principled
basis for it to do so.”
79

Garcia v. Google, Inc., 766 F. 3d 929 (9th.Cir.
July 11, 2014) (rehearing en banc ordered)
¬ Does the performer Garcia have a right to an injunction against Google to
take down her performance and to use filtering to prevent it from being
performed?
¬ “It's hard to see how Google can defend its refusal on equitable grounds and,
indeed, it doesn't really try. Instead, it argues that an injunction would be
inequitable because of the overwhelming public interest in the continued
hosting of "Innocence of Muslims" on YouTube.
¬ The problem with Google's position is that it rests entirely on the assertion
that Garcia's proposed injunction is an unconstitutional prior restraint of
speech. But the First Amendment doesn't protect copyright infringement.”
¬ “Concurrent with this opinion, we have issued an order directing Google to
take down all copies of "Innocence of Muslims" from YouTube and any other
platforms within its control and to take all reasonable steps to prevent further
uploads. This temporary injunction shall remain in place until the district court
is able to enter a preliminary injunction consistent with our opinion.”
80

Waldman v. Thomson Reuters Canada
Limited, 2014 ONSC 1288
¬ Should the court approve settlement of a copyright class action involving the “Litigator”
service where funds go only to lawyers and to a cy-pres trust?
¬ “Class Counsel were of the view that the Supreme Court’s decisions, particularly the
decisions in Society of Composers, Authors and Music Publishers of Canada v. Bell
Canada, 2012 SCC 36 (CanLII) and Alberta (Education) v. Canadian Copyright
Licensing Agency (Access Copyright), 2012 SCC 37 (CanLII) substantially increased the
litigation risk for the Class Members, particularly with respect to Thomson’s fair dealing
defence and the irrelevancy of its profit motive…
¬ In his factum, Mr. Waldman stated that in light of the recent Supreme Court of Canada
copyright law jurisprudence, there was a substantial likelihood of the action being
dismissed, and I, therefore, think the Settlement Agreement is an excellent settlement
for Mr. Waldman and for Class Counsel, and indeed it would be a great success for
them if I approved the Settlement and they emerged unscathed from what started out as
high-risk uncertain litigation but what has become prohibitively high-risk litigation.”
¬ See also, Médias Transcontinental, senc, 2014 QCCS 3767 (class action settlement
approved).
81

Waldman v. Thomson Reuters Canada
Limited, 2014 ONSC 1288
¬ ”I, however, do not find that the Settlement Agreement is substantively,
circumstantially, or institutionally fair to Class Members. In this regard, I agree with
the general sentiment of the objectors to the Settlement that the Settlement
Agreement brings the administration of justice and class actions into disrepute
because: (a) the Settlement is more beneficial to Class Counsel than it is to the
Class Members; and (b) in its practical effect, the Settlement expropriates the
Class Members’ property rights in exchange for a charitable donation from
Thomson…
¬ “The cy-près trust fund is a public good, but it does not justify approving the
Settlement Agreement. Many, but not necessarily all, Class Members as members
of the legal profession may be pleased to see the establishment of a trust to
support public interest litigation and the training of law students, but the purpose of
class actions is not to fund worthy projects but to provide procedural and
substantive access to justice to Class Members.
¬ In my opinion, in the case at bar, there is no access to substantive justice for the
claims of Class Members and no meaningful behaviour modification for Thomson.”
82

IMAX Corp. v. Trotum Systems Inc., 2014
ONSC 3863
¬ Can acts of infringement also constitute the tort of conversion?
¬ “The tort of conversion is “a wrongful interference with the goods of another,
such as taking, using or destroying these goods in a manner inconsistent
with the owner’s right of possession.” Boma Manufacturing Limited v.
Canadian Imperial Bank of Commerce, 1996 CanLII 149 (SCC), [1996] 3
SCR 727.
¬ It is clear on the evidence that Tsui stole various pieces of information
from IMAX for his use in China. The most glaring instance of theft by Tsui
was his misappropriation of IMAX 2D to 3D conversion software. That Tsui
took this technology is well supported by the evidence of Blair and Qiang. It
is also supported by Mr. Poynton’s opinion evidence. From a technical
perspective, the only plausible explanation how Sunway was able to
compete against IMAX in the 2D to 3D conversion business so quickly and
without any significant investment in research and development is that Tsui
stole the 2D to 3D technology from IMAX.”
83

R. v. Cisar, 2014 ONCA 151
¬ Does stealing source code constitute theft under the Criminal Code?
¬ “I am also satisfied that the wording of the information did not
prejudice the appellant or mean that the offences were not made out.
The appellant’s argument is that because the information refers to
the Imagenation computer software and he only stole and used the
source code that was used to produce the software sold to the public,
no offences were made out. The charge that makes the appellant’s
case clearest is the theft charge: that the appellant on or about July
22, 1996 “did steal the IMAGENATION computer software, the
property of Spicer Corporation, of a value exceeding five thousand
dollars, contrary to Section 334(a) of the Criminal Code of Canada”.”
¬ See, R. v. Stewart, [1988] 1 SCR 963
84

Re:Sound v. Fitness Industry Council of
Canada, 2014 FCA 48
¬ Did the Board breach the duty of fairness by basing the royalties tariff on the
average of the amounts paid under licence agreements obtained by the Board
from SOCAN after the close of the hearing on Tariff 6.B?
¬ “Agencies such as the Board that administer a complex regulatory program
are not restricted to the evidence adduced by the parties…
¬ Since nothing in the Act precludes the Board from seeking extraneous
information and relying on it in its decision, it was open to the Board in the
present case to obtain from SOCAN copies of the confidential licensing
agreements with users…
¬ Nonetheless, it is a breach of the duty of fairness for a tribunal to base its
decision on a ground that could not reasonably have been anticipated by
those affected and that they did not have an opportunity to address…
¬ Since the tariff set by the Board was based entirely on a methodology not
raised as an issue at any point in the decision-making process, Tariff 6.B
cannot stand.”
85

Canadian Association of Film Distributors
and Exporters v SODRAC 2014 FCA 235
¬ “The Board has the authority to reopen a prior decision pursuant to
section 66.52 of the Copyright Act or based on the well-established
case law that entitles administrative tribunals to correct slips or other
types of errors committed inadvertently. In this case, the Board
authorized itself to reopen the proceedings in order to correct what it
itself identified as a palpable error.
¬ In my opinion, the Board erred in assuming the authority to reopen
the matter on this ground. The correction of a palpable error is not
one of the recognized exceptions to the functus officio rule, nor is it a
ground for redetermination under section 66.52 of the Copyright Act,
which authorizes the Board to vary its decision to take into
consideration a change in circumstances postdating the decision.”
86

Private Copying 2015, Copyright Board,
December 12, 2014
¬ “The core issue in this decision is whether or not CDs qualify as a
medium ordinarily used for private copying, pursuant to section 79 of
the Act. In our opinion, they do for the following reasons…
¬ A finding that a medium is ordinarily used for the purpose of private
copying is a matter of impression, taking into account not only levels
but also trends.
¬ The trends in private copying onto CDs are clearly moving
downward, if in a non-linear fashion. Absent a dramatic change in
behaviour, CDs will cease to qualify as a medium ordinarily used for
private copying at some point in the future, possibly as early as 2017.
Our impression of private copying behaviour is such, however, that
CDs still qualify for 2015 and 2016. Thus, we certify a tariff for those
two years.”
87

Slides available @
barrysookman.com and
mccarthy.ca
• Underlines in quotes may reflect emphasis added.
• Some citations or references in quotes removed.
88

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