In this blog entry we deal with copyright developments in the last few months.
The Right to Repair Policy
In its Budget of 2024, the Government of Canada committed to launch a consultation on a right to repair (RTR) policy for home appliances and consumer electronics. The consultation was to gather feedback to determine policy direction, including the policy levers to improve Canadians' ability to repair a range of consumer products. The three areas were explored in consultation– repairability, interoperability and durability. The consultation closed September 26, 2024.
Concurrently two private members bills have been passed and are in force as of November 7, 2024. First, an Act to amend the Copyright Act (diagnosis, maintenance and repair) S.C. 2024, c. 26 amends the Copyright Act to allow the circumvention of a technological protection measure for the sole purpose of maintaining or repairing a product, including any related diagnosing, if the work, performer’s performance fixed in a sound recording or sound recording to which the technological protection measure controls access forms a part of the product.
Second, an Act to amend the Copyright Act (interoperability), S.C. 2024, c. 27 amends the Copyright Act to allow the circumvention of a technological protection measure that protects a lawfully obtained computer program for the purpose of
(a) obtaining information that would allow the person to make the program or a device in which it is embedded interoperable with any other computer program, device or component; or
b) making the program or a device in which it is embedded interoperable with any other computer program, device or component.
To date the government has said nothing about its consultation.
Maier Estate v. Bulger 2024 FC 1267
The Estate is the owner of copyright in original works made by Maier including those included in a collection of 15,172 black and white negatives (the B&W Negatives) and 1,471 colour slides and transparencies (the Colour Negatives and collectively the Maier Works).
The Estate alleged that the defendants infringed copyright by commissioning, exhibiting, offering for sale, and/or selling prints made from the B&W Negatives; offering for sale, selling and/or exporting a hard drive made of scans of the positive images from the B&W Negatives to a Swiss company; authorizing infringement through the sale and exportation of the B&W Negatives and the hard drive to the Swiss company; and making a copy of the hard drive and exporting the copy to the Swiss company for the purpose of offering for sale and selling the original hard drive.
Primary or direct Infringement occurs when any person, without consent of the copyright owner, does anything that only the copyright owner has the right to do under the Copyright Act. The corporate defendant admitted liability and infringement regarding commissioning prints made from 40 unique works embodied in the B&W Negatives.
To establish secondary infringement, three elements must be established: (i) the copy must be the product of primary infringement; (ii) the secondary infringer must, or should have known, that they were dealing with a product of infringement; and (iii) the secondary infringer must have sold, distributed, or exposed for sale the infringing copy.
The burden of proving “knowledge” in item (ii) above rests on the plaintiff. But the burden does not require proof that actual knowledge exists as knowledge may be established when the conduct of the defendant amounts to wilful blindness through a deliberate choice not to know something, despite being given reason to make further inquiries.
The defendants did not deny that the prints made were unauthorized reproductions but asserted that at the time of the alleged infringing activities, they did not have an honestly held belief of infringement.
The Judge reviewed the evidence relating to various exhibitions and the other events and concluded the corporate defendant should not have continued with the exhibitions after September 6, 2014. Once they did so, they became liable for infringement of the prints it continued to exhibit, and all sales made after September 6, 2014.
The plaintiff asserted that the defendants authorized infringement by selling and exporting the B&W Negatives and the Goldstein HD to the Swiss company for the purpose of permitting others to reproduce, publish, offer for sale, sell and exhibit unauthorized and infringing copies of the Maier Works.
Authorization is a distinct right granted to copyright owners. To “authorize” means to sanction, approve and countenance. A person infringes the authorization right where, without the consent or a license from the copyright owner, they hold themselves out as capable of granting one of the copyright owner’s exclusive rights.
Authorization infringes copyright only if the authorized act is itself an act of infringement. The act of authorizing in Canada is not actionable under the Act where the primary infringement occurs outside Canada. For this reason and others, the claim for authorizing infringement was dismissed.
Site-Blocking Orders
The decision in Rogers Media Inc., v. John Doe 1 (No. 2) 2024 FC 1082 builds on recent decisions where the court has issued site-blocking orders to interrupt the infringement of copyright in the broadcast of live sports. In the previous cases, applicants obtained interlocutory injunctions, for a stated period, for live sports events of a single professional league, in proceedings begun as actions, against John Doe defendants. The orders included mandatory terms against ISPs named as third-party defendants who had committed no wrongdoing.
Here the applicants together held the exclusive rights to communicate the full live event footage and/or full live telecast of certain live sports events in Canada. By application, they sought to prevent the unauthorized online streaming of their copyright in live sports events, including National Hockey League (“NHL”) games, National Basketball Association (“NBA”) games, and Premier League football matches.
In contrast to the previous proceedings the applicants together held the exclusive rights to communicate the full live event footage and/or full live telecast of certain live sports events in Canada.
The applicants sought final injunctive relief against the two groups of respondents. First, the applicants seek a permanent injunction against the John Doe Respondents and no financial compensation: The injunction was proscriptive, in that it would bar the John Doe Respondents from conduct that infringed the applicants’ copyright. The applicants also seek a “wide” injunction against the John Doe Respondents under section 39.1 that would enjoin the infringement of copyright in other works. Second, the applicants seek a two-year mandatory injunction against the ISPs named as Third-Party Respondents that requires them to take certain steps to prevent the infringement of the applicants’ copyright.
The Judge agreed that the John Doe Respondents should be enjoined permanently from infringing the applicants’ copyright in the Protected Live Content, under subsection 34(1) of the Copyright Act. The definition of Protected Live Content in the Court’s Judgment (Schedule 1) includes the applicants’ rights in the NHL, NBA and Premier League games.
The Judge agreed that because of the evidence filed related to copyright infringement of live sports events and the scope of section 39.1, the applicants should have a mechanism to update the definition of Live Protected Content to include rights that did not exist as of the time of Judgment regarding live sports events after Judgment. However, the Judge refused to stretch the remedial flexibility granted by section 39.1 to enable a party to enforce new or additional rights under the Copyright Act without, at a minimum, adjudication of the issues related to the rights and works under paragraphs 39.1(1)(a) and (b).
To implement the requirements of subsection 39.1(1), the Judgment contains terms that enable the applicants to file a motion to the Court with supporting evidence to amend Schedule 1. This was to ensure that the Court is satisfied that the applicants have the rights in the live sports events they wish to protect by dynamic site‐blocking (before they do so under Court Judgment) and that the John Doe Respondents will likely infringe the applicants’ rights in the broadcast of those live sports events, all on evidence filed with the Court. To avoid a proliferation of motions, the applicants may do so twice without leave of the Court and thereafter with leave.
Canadian Charter of Rights and Freedoms
On appeal in Macciacchera v. Bell Media Inc 2024 FCA 138 the appellant argued that the Federal Court committed an error of law due to the failure to consider the Canadian Charter of Rights and Freedoms and the Charter values in reviewing the terms of an Anton Pillar order and the way it was executed.
The Court said the appellant could not ground their appeal upon a Charter right because the Charter does not apply between private parties, and Charter rights do not exist absent state action: The execution of an Anton Piller order did not involve state action as the order was not placed in the hands of a public authority for execution. An Anton Piller order authorizes a private party to insist on entrance to the premises of its opponent to conduct a surprise search, the purpose of which is to seize and preserve evidence to further its claim in a private dispute.
Summary Judgement and Trials
In Demirören TV Radyo Yayincilik Yapimcilik A.S. v. General Entertainment and Music Inv. 2024 FC 1127 the court said the failure of the respondent to respond to a motion for summary judgement coupled with the plaintiff’s obligation to put its best foot forward in making out its claims, meant that the Court would be in no better position to assess the relevant facts and apply the law than if a trial or a summary trial were to be ordered. Deciding the issues on a summary basis ensures fair access to affordable, timely and just adjudication of the issues which the Supreme Court called for and is in keeping with the objectives set out in Rule 3 of the Federal Courts Rules.
In Mud Engineering Inv. V. Secure Energy Services Inc 2024 FCA 131 the Federal Court of Appeal said that who bears the burden of proof in summary trials was unsettled and an open issue in the Court.
Granting of a Permanent Injunction
In Rogers Media Inc., v. John Doe 1 (No. 2) 2024 FC 1082 the court said that to said that to obtain a permanent injunction, the claiming party must show three elements:
1) an infringement of rights – that is, proof of each of the elements of the cause of action on a final adjudication of the claimed rights;
2) that damages or other alternative remedies are not sufficient or adequate to address the wrongful conduct; and
3) that there is no impediment to the Court’s discretion to grant an injunction.
In addition, the following additional matters should be considered:
a) The injunction should be carefully tailored to remedy the wrong committed or threatened in the specific case and to ensure compliance with its aim.
b) The terms of a permanent injunction, particularly one that involves mandatory action, should be carefully examined to ensure that its terms are precisely drafted.
c) One of the reasons for careful drafting of an injunction order is that non-compliance may give rise to contempt proceedings.
d) The Court should be cautious about making orders that require ongoing supervision or “cumbersome court-supervised updating”.
If you have questions, please contact me at mckeown@gsnh.com
Goldman Sloan Nash & Haber LLP 480 University Avenue, Suite 1600 Toronto, Ontario M5G 1V2 Direct Line: (416) 597-3371 Fax: (416) 597-3370 Email: mckeown@gsnh.com
These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.
A version of this article originally appeared in the Law360 Canada published by LexisNexis Canada Inc.
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