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Fair Dealing for the Purpose of News Reporting

In HRH The Duchess of Sussex v. Associated Newspapers Limited [2021] EWHC 723 (UK Ch.), the appeal dismissed [2021] EWCA Civ 1801 (UKCA), the plaintiff’s claim for infringement of copyright relating to a letter written by her and its publication in the defendant’s papers was allowed. On appeal, the UK Court of Appeal considered the defendant’s attempt to rely on fair dealing for the purpose of news reporting. The judge, at first instance, rejected the defence. The main reason was that the reproduction of the letter was essentially for the purpose of reporting its contents, which was not a current event, and that the use made of the letter was not fair.

On the appeal, the court said the defendant knew it was dealing with unpublished work, it copied a large and important proportion of the work’s original literary content, most of which infringed the claimant’s privacy rights and was disproportionate to any legitimate reporting purpose. The fairness of the reproduction was very limited. Importantly the use made of the letter was unfair because it was not about reporting current events but reporting the actual contents of the letter splashed as a new public revelation.

Assessing the Similarities between Works

In Pyrrha Design Inc. v. Plum and Posey Inc. 2022 FCA 7 referring to Robertson v. Thomson Corp., 2006 SCC 43 the court confirmed that in action alleging infringement a reviewing court must engage ‘in a qualitative and holistic assessment of the similarities between the works”. In determining whether a work or “any substantial part thereof,” has been reproduced, what will be determinative is the extent to which the item said to be a reproduction contains within it, in qualitative rather than quantitative terms, a substantial part of the skill and judgment exercised by the creator of the work. It was also suggested that the simpler a copyright work is, the more exact must the copying be in order to constitute infringement.

Blank Audio Recording Media Levy 2022-2024

On December 17, 2021, in CPCC –Private Copying Tariff (2022-2024) 2021 CB 12, the Board released its decision concerning proposed levies to be collected in 2022-2024 on the sale of blank audio recording media. The Board concluded that blank CDs will be “ordinarily used” to copy music in 2022, 2023, and 2024 and that a levy of $0.29 was appropriate during these years.

A Claim of Breach of Confidence was Released by a Subsequent Bankruptcy

In Shaver-Kudell Manufacturing Inc. v. Knight Manufacturing Inc. 2020 ONSC 7635, it was found that a grant of bankruptcy did not release the defendant from a claim of breach of confidence. The claim came within the ambit of section 178(1) of the Bankruptcy Act relating to obtaining property by false pretences, particularly where it had been found that the defendant’s actions were deceitful and dishonest.

An appeal from this decision was allowed and the claim was released by the bankruptcy. 2021 ONCA 92. The concept of false pretences requires making a deceitful statement — that is, a statement false to the knowledge of its maker (including willful blindness or recklessness). For the section to apply, the debt or liability to the creditor must have resulted from the bankrupt having obtained property or services by making such a statement. The nature and substance of the liability of the defendant reflected in the trial judgment did not arise from such a statement.

Pleading a Breach of Confidence

A statement of claim must set out the three elements of the cause of action for breach of confidence. A plaintiff must show with precision the information claimed to be confidential and the circumstances that made it confidential., which in substance make up the first two requirements. In Racing Partnership Ltd. v. Sports Information Services Ltd.[2020] EWCA Civ 1300 and see Shenzhen Senior Technology Material Co. Ltd. v. Celgard LLC [2020] EWCA Civ 1293 the court said the starting point in any confidential information case is to identify with precision the information alleged to be confidential. However, if the case involves written confidentiality agreements between the parties the court may accept less specificity Farmers Edge Inc. v. Precision Weather Solutions Inc. 2020 MBQB 136.

Cause of Action Estoppel

In Wiseau Studio, LLC v. Harper 2022 FC 568, it was confirmed that cause of action estoppel applies if these four conditions are shown:

i.there was a final decision of a court of competent jurisdiction in the prior action

ii. the parties to the subsequent litigation were the parties to or in privy with the parties to the prior action;

iii. the cause of action in the prior action is not separate and distinct; and

iv. the basis of the cause of action in the subsequent action was argued or could have been argued in the prior action if the party bringing the subsequent action had exercised reasonable diligence.

A Strong Prima Facie Case

The requirement to show an “extremely strong prima facie case´ in order to obtain an Anton Pillar order has been replaced by a requirement to show a “strong prima facie case” White (Beast IPTV) v. Warner Bros Entertainment Inc. 2022 FCA 34.

Access to Confidential Privileged Information Can Be Fatal

In Continental Bank of Canada v. Continental Currency Exchange Canada Inc. 2022 ONSC 647, it was said that where it is shown that an opposing party or its lawyers have had access to relevant confidential information protected by privilege, prejudice is presumed, and the onus rests on the recipient of the information to rebut the presumption of prejudice. The recipient could not satisfy the onus, and the action stayed.

Motions for Summary Trial

The respondent to a motion seeking summary trial can bring a motion to quash if the motion for summary trial has little merit, but it is harmful in terms of the time and the expense it will cause. When brought early and dealt with quickly before time is wasted and the resources of the Court and the parties are squandered, they can proactively advance the objectives of the Rules and stop harmful litigation conduct in its tracks. In this way, motions to quash are analogous to motions under the Rules concerning scheduling, case management and the restraining of abuses of process. VIIV Healthcare Company v. Gilead Sciences Canada, Inc. 2021 FCA 122.

On a motion for summary trial, there is “no genuine issue for trial” where the judge has “the evidence required to fairly and justly adjudicate the dispute” on a summary basis, i.e., where “the process (1) allows the judge to make the necessary findings of fact, (2) allows the judge to apply the law to the facts, and (3) is a proportionate, more expeditious and less expensive means to achieve a just result”. A case should not proceed to trial unless there is a genuine issue that can only be resolved through the full apparatus of a trial. VIIV Healthcare Company v. Gilead Sciences Canada, Inc. 2021 FCA 122.

Statutory Damages

In 24224508 Ontario ltd. v. Rallysport Direct LLC 2022 FCA 24, the Federal Court of Appeal confirmed that a copyright owner seeking statutory damages need not establish a link between the statutory damages sought and the damages suffered by it because of the infringement. The trial Judge stated she agreed with the principle that probable damages were not determinative and that using such estimates in determining statutory damages was but one means of ensuring that any damages award is fair and proportionate. This was not in error, and the appeal was dismissed.

If you have any questions, please contact me at

John McKeown

Goldman Sloan Nash & Haber LLP

480 University Avenue, Suite 1600

Toronto, Ontario M5G 1V2

Direct Line: (416) 597-3371

Fax: (416) 597-3370

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.

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