Canadian Copyright Law Updates

Articles

A.   Introduction

This article reviews material developments in Canadian legislation, case law, and practice in the area of copyright in 2019. All references in this article to the “Act” refer to the Copyright Act, R.S.C. 1985, c. C-42, as amended. This article was originally published by The Continuing Legal Education Society of British Columbia in their “Annual Review of Law & Practice – 2020”.

B.   Law and Policy

It has been a busy twelve months for Canadian copyright. As always there were some interesting decisions from the Courts, but the most frenetic activity relates to some key policy developments that suggest prospects for substantial legislative changes (or not—depending on the priorities of the current and future Federal governments). In particular, the statutorily mandated review of the Act was completed this year with the release of a hefty report, and 36 recommendations. As well, a different Parliamentary committee issued a related report in relation to remuneration models for artists and creative industries, with potential implications for the Act. Lastly, there has been movement towards implementation of the free-trade agreement with the United States and Mexico discussed in last year’s article.

We’ll have to see what formal legislative activity actually follows in the coming years from the foregoing—but Parliament has now been given much food for thought regarding potential changes to the Act. In addition, some of the more interesting cases from years past are still making their way through the appeal process and undoubtedly we’ll return to them in future years, when further judicial pronouncements are made.

For now, let’s start our review of 2019 with a look at developments on the policy and legislative side. In a departure from the usual edition of this article, the policy side dominates this year!

1.     5-Year Review of the Act

In June, the Standing Committee on Industry, Science and Technology (the “Committee”) released its long awaited report (the “Report”) upon the conclusion of its 5-year review (the “Review”) of the Act. The Committee completed the Review on behalf of Parliament, which is required under s. 92 of the Act.

In the course of the Review, as noted in the Report, the “Committee held 52 meetings, heard 263 witnesses, collected 192 briefs, and received more than 6,000 emails and other correspondence” and “consulted a broad range of stakeholders to ensure all perspectives were duly considered”. Interestingly, beyond the usual suspects, the Committee “also dedicated a portion of the review to Indigenous groups and individuals, which could become standard practice when formulating copyright policy”, with what can be presumed is a view to implementing reconciliation in the context of the Act.

While the full Report runs over 150 pages, the Committee distilled matters down to 36 key policy recommendations, some breathtakingly broad and others dealing with minutiae. Beyond the formal recommendations, the Report also included what were termed ‘observations’ of the Committee, and as noted in the Report, while “these observations do not amount to recommendations, they constitute a genuine effort to respond and engage with stakeholders who have taken the time and expended resources to partake in the review, rather than leaving them to speculate on the Committee’s motives”.

Some of the most notable or interesting recommendations from the Report were as follows:

  • The Committee recommended doing away with the statutory five-year review of the Act (recommendation 1). This was driven by a number of considerations, including that it was unclear that the set period was appropriate, and that the timing for a proper review may be more suitably based on when there is a particular need for review. Otherwise, too frequent a review may itself create instability in the regime and not allow sufficient time for any earlier changes to be fully implemented and properly assessed.
  • An oft-cited concern about the Act is its complexity (in part due to its history and the grafting in of provisions to respond to various needs, e.g. treaties or domestic concerns etc.) and thus a “comprehensive overhaul” may be warranted to reduce the complexity of the Act (recommendation 2). Similarly, while everyone has an opinion or viewpoint on copyright, the Committee was struck by the lack of hard and impartial data. It therefore specifically called for measures to capture and evaluate such data (recommendations 3 and 4—this may, in turn, also assist with the further study recommended in relation to Canada’s private copying regime, see recommendation 33).
  • The Committee acknowledged in the Report concerns that the Act and Canadian law fail “to meet the expectations of Indigenous peoples with respect to the protection, preservation, and dissemination of their cultural expressions” and called on the government to engage on this point, with a view to future developments (recommendation 5).
  • The Report made a number of recommendations regarding the duration of copyright and reversionary rights (recommendations 6 through 8), interestingly calling for the formulation of a time-limited, non-assignable termination right to the creator exercisable 25 or more years after a work is created (recommendation 8). This could have potentially far reaching consequences for copyright contracts and assignments, as well as creators. Similarly, the Committee recommended consideration be given to the enactment of an ongoing “artist’s resale right” or royalty on resale (recommendation 9).
  • The issue of Crown copyright received a fair bit of criticism and suggestions for reform (recommendation 11), much of this relating to broader issues such as openness and dissemination. The Report was issued before the Supreme Court of Canada’s decision in Keatley Surveying Ltd. v. Teranet Inc., discussed later in this article—which, not unexpectedly, does not answer the broader policy issues that are up to government to resolve.
  • Further study was recommended in relation to remuneration rights for online journalistic/news works, particularly in the context of online service providers becoming the public’s primary gateway to news (recommendation 15). Similar issues vis-à-vis technological changes and online dissemination also factored into recommendations relating to online safe harbour provisions (see recommendations 21 and 22).
  • Similarly, as no clear consensus on fair dealing (and in particular educational fair dealing) was forthcoming between users and publishers, further study and facilitation of a consensus was recommended (recommendations 16 and 17, but see also recommendation 18 on making the list of fair dealing purposes illustrative, instead of exhaustive). Depending on how further reform is crafted, there is potential for significant changes to Canada’s laws on fair dealing (akin to fair use laws in the US).

Given the potentially far-reaching implications for copyright reform and the importance of the Review to the Act, reproduced below are the complete list of the 36 recommendations from the Report—except for updating references to the Act for consistency to this article and correcting some typos for clarity, they have been reproduced verbatim from the Report.

Recommendation 1

That the Government of Canada introduce legislation to repeal s. 92 of the Act in order to remove the requirement to conduct a five-year review of this Act.

Recommendation 2

That the Government of Canada simplify the wording and the structure of the Act.

Recommendation 3

That the Government of Canada establish a Research Chair on Remuneration and Business Models for Creators and Creative Industries in the Digital Economy as well as a Research Chair on the Economics of Copyright.

Recommendation 4

That the Government of Canada mandate Statistics Canada to develop consistent indicators and authoritative data on the economic impacts of copyright legislation in Canada, notably to determine its effects on the remuneration of Canadian creators and the revenues of Canadian creative industries.

Recommendation 5

That the Government of Canada consult with Indigenous groups, experts, and other stakeholders on the protection of traditional arts and cultural expressions in the context of Reconciliation, and that this consultation address the following matters, among others:

  • The recognition and effective protection of traditional arts and cultural expressions in Canadian law, within and beyond copyright legislation;
  • The participation of Indigenous groups in the development of national and international intellectual property law;
  • The development of institutional, regulatory, and technological means to protect traditional arts and cultural expressions, including but not limited to:
    • Creating an Indigenous Art Registry;
    • Establishing an organization dedicated to protecting and advocating for the interests of Indigenous creators; and
    • Granting Indigenous peoples the authority to manage traditional arts and cultural expressions, notably through the insertion of a non-derogation clause in the Act.

Recommendation 6

That, in the event that the term of copyright is extended, the Government of Canada consider amending the Act to ensure that copyright in a work cannot be enforced beyond the current term unless the alleged infringement occurred after the registration of the work.

Recommendation 7

That the Government of Canada introduce legislation amending the Act to provide that a reversion of copyright under s. 14(1) of the Act cannot take effect earlier than 10 years following the registration of a notification to exercise the reversion.

Recommendation 8

That the Government of Canada introduce legislation amending the Act to provide creators a non-assignable right to terminate any transfer of an exclusive right no earlier than 25 years after the execution of the transfer, and that this termination right extinguish itself five years after it becomes available, take effect only five years after the creator notifies their intent to exercise the right, and that the notice be subject to registration.

Recommendation 9

That the Government of Canada consult with provincial and territorial governments, Indigenous groups, and other stakeholders to explore the costs and benefits of implementing a national artist’s resale right, and report on the matter to the House of Commons Standing Committee on Industry, Science and Technology within three years.

Recommendation 10

That the Government of Canada consider amending the Act to remove the words “created after June 7, 1988,” from s. 3(1)(g) of this Act, with no retroactive effect and providing stakeholders with a significant transitional period.

Recommendation 11

That the Government of Canada improve Crown copyright management policies and practices by adopting open licences in line with the open government and data governance agenda, with respect to any work prepared and published:

  • By or under the direction or control of a Canadian government; and
  • In the public interest and for the purpose of public use, education, research, or information.

That the Government of Canada introduce legislation amending the Act to provide that no Canadian government or person authorized by a Canadian government infringe copyright when committing an act, either:

  • Under statutory authority; or
  • For the purpose of national security, public safety, or public health.

In the context of Crown copyright and acts done under statutory authority or for the purpose of national security, public safety, or public health, that the Government of Canada consider implementing measures to compensate rights-holders for acts done by a Canadian government or a person authorized by a Canadian government that would otherwise infringe copyright, when appropriate.

That the Crown exercise copyright protections that are reasonably in the public interest.

Recommendation 12

That the Government of Canada maintain the definition of “sound recording” under s. 2 of the Act.

Recommendation 13

That the Government of Canada update the rules governing first ownership of cinematographic works in light of the digital age and in consideration of maintaining competitiveness in a global market.

Recommendation 14

That the Government of Canada consider amending the Act or introducing other legislation to provide clarity around the ownership of a computer-generated work.

Recommendation 15

That the House of Commons Standing Committee on Canadian Heritage consider conducting a study to investigate the remuneration of journalists, the revenues of news publishers, the licences granted to online service providers and copyright infringement on their platforms, the availability and use of online services, and competition and innovation in online markets, building on their previous work on Canada’s media landscape.

Recommendation 16

That the Government of Canada consider establishing facilitation between the educational sector and the copyright collectives to build consensus towards the future of educational fair dealing in Canada.

Recommendation 17

That the House of Commons Standing Committee on Industry, Science and Technology resume its review of the implementation of educational fair dealing in the Canadian educational sector within three years, based on new and authoritative information as well as new legal developments.

Recommendation 18

That the Government of Canada introduce legislation amending s. 29 of the Act to make the list of purposes allowable under the fair dealing exception an illustrative list rather than an exhaustive one.

Recommendation 19

That the Government of Canada examine measures to modernize copyright policy with digital technologies affecting Canadians and Canadian institutions, including the relevance of technological protection measures within copyright law, notably to facilitate the maintenance, repair or adaptation of a lawfully-acquired device for non-infringing purposes.

Recommendation 20

That the Government of Canada review s. 29.21 of the Act to ensure that the creator of non-commercial user-generated content is not held liable for unintended copyright infringement.

Recommendation 21

That the Government of Canada monitor the implementation, in other jurisdictions, of extended collective licensing as well as legislation making safe harbour exceptions available to online service providers conditional to measures taken against copyright infringement on their platforms.

Recommendation 22

That the Government of Canada assert that the content management systems employed by online service providers subject to safe harbour exceptions must reflect the rights of rights-holders and users alike.

Recommendation 23

That the Government of Canada introduce legislation to amend the Act to facilitate the use of a work or other subject-matter for the purpose of informational analysis.

Recommendation 24

That the Government of Canada work with industry and relevant stakeholders to explore ways to support the production of works published in formats specially designed for persons with a perceptual disability, and to measure, on a yearly basis, the availability of works published in such formats.

Recommendation 25

That the Government of Canada make regulations to require notices sent under the notice-and-notice regime be in a prescribed machine-readable format.

Recommendation 26

That the Government of Canada examine ways to keep IPv6 address ownership information up-to-date in a publicly accessible format similar in form and function to American Registry for Internet Numbers’ IPv4 “WHOIS” service.

Recommendation 27

Following the review of the Telecommunications Act, that the Government of Canada consider evaluating tools to provide injunctive relief in a court of law for deliberate online copyright infringement and that paramount importance be given to net neutrality in dealing with impacts on the form and function of Internet in the application of copyright law.

Recommendation 28

That the Government of Canada introduce legislation amending the Act to increase upper and lower limits of statutory damages provided under ss. 38.1(1), 38.1(2) and 38.1(3) of this Act to account for inflation, based on the years when they were originally set.

Recommendation 29

That the Government of Canada introduce legislation amending the Act to clarify that users can negotiate with a collective society as a group and to allow users to jointly apply to the Copyright Board of Canada, when the Board deems it appropriate.

Recommendation 30

That the Government of Canada report to the House of Commons Standing Committee on Industry, Science and Technology within three years on the effectiveness of the reform of the Copyright Board of Canada, including measures introduced and amended by the Budget Implementation Act, 2018, No. 2.

Recommendation 31

That the Government of Canada introduce legislation amending s. 72(2) of the Copyright to ensure that the radio royalty exemption only applies to small, independent broadcasters.

That the Government of Canada make regulations to define “community systems” under s. 72(6) of the Act in order to identify broadcasters to which s. 72(3) of this Act applies.

Recommendation 32

That the Government of Canada evaluate the forms of statutory damages available under the Act to a collective society or a rights-holder who has authorized a collective society to act on their behalf where applicable royalties are set by the Copyright Board of Canada and the defendant has not paid them.

Recommendation 33

That the Government of Canada study the private copying regimes in place in other countries with a view to identifying the digital environment, the distribution of royalties flowing from the private copying levy, and the impact on consumers on which a private copying levy applies, including the impact of the private copying regime on the retail prices of the different types of digital device to which they apply.

Recommendation 34

That the Government of Canada evaluate the constitutional feasibility of establishing minimal standards in private agreements relating to a transfer of a right provided by the Act.

Recommendation 35

That the Copyright Board of Canada review whether provisions of the Act empower the Board to increase the transparency of collective rights management to the benefit of rights-holders and users through the tariff-setting process, and report to the House of Commons Standing Committee on Industry, Science and Technology within two years.

Recommendation 36

Given the important role of collective societies in the copyright framework and in the collective administration of rights, that the Government of Canada consider the benefits and mechanisms for increasing the transparency of collective societies, particularly with regards to their operations and the disclosure of their repertoire.

2.     Study on Remuneration Models for Artists and Creative Industries

As part of the Review, the Committee had also invited the Standing Committee on Canadian Heritage (the “Heritage Committee”) to conduct a study on remuneration models for artists and creative industries, being of particular concern in a global and increasingly digital economy.

The Heritage Committee issued its 68 page report and 22 recommendations in May (the “Heritage Report”). The Heritage Committee, in the process leading to the final Heritage Report, “heard testimony from 115 witnesses” and “received 75 briefs”. Like the Committee, the Heritage Committee also “heard of the importance of considering the Indigenous perspective regarding copyright”.

While the Heritage Report is not as ‘Act-centric’ as the earlier discussed Report, it also included recommendations relating to the Act and some broader copyright policy and educational initiatives for the Government of Canada to pursue. Given the narrower and more specific mandate of the Heritage Committee, the Heritage Report’s “recommendations focus on modernizing remuneration models and leveling [sic] the playing field for artists and creative industries”. Indeed, when it comes to future legislative amendments to the Act, the two reports are complimentary and it can be expected that Parliament will consider both when proposing any changes.

Some of the more notable or interesting recommendations from the Heritage Report, in relation to the Act, were as follows (reproduced verbatim, except for updating references to the Act for consistency to this article):

Recommendation 5

That the Government of Canada review the safe harbour exceptions and laws to ensure that Internet service providers are accountable for their role in the distribution of content.

Recommendation 6

That the Government of Canada increase its efforts to combat piracy and enforce copyright.

Recommendation 7

That the Government of Canada pursue its commitment to implement the extension of copyright from 50 to 70 years after the author’s death.

Recommendation 18

That Government of Canada amend the Act to clarify that fair dealing should not apply to educational institutions when the work is commercially available.

Recommendation 20

That the Government of Canada review, harmonize and improve the enforcement of the statutory damages for infringement for non-commercial use in s. 38.1(1) of the Act.

Recommendation 22

That the Government of Canada establish an artist’s resale right.

It’s worth noting that after the 2019 Federal election, the Prime Minister’s Mandate Letter to the Minister of Innovation, Science and Industry directed that the Minister should work “with the Minister of Canadian Heritage” in reviewing the Act, and correspondingly the Mandate Letter to the Minister of Canadian Heritage exhorted that Minister to similarly work “with the Minister of Innovation, Science and Industry”. This may suggest movement on the Report and/or the Heritage Report during the current Parliament. That being said, stay tuned to future editions of this article to see the scope and speed of changes, if any!

3.     NAFTA 2.0 is CUSMA 1.1

As discussed in last year’s article, in late 2018 Canada reached a free-trade agreement with the United States and Mexico (usually abbreviated and referred to as “CUSMA” in English or “ACEUM” in French in Canada, “USMCA” in the United States, and T-MEC in Mexico) which was intended to replace the North American Free Trade Agreement. Most significantly for copyright, CUSMA would extend the term of copyright protection under the Act from 50 to 70 years following the author’s death.

The Government of Canada introduced Bill C-100 in Parliament to implement CUSMA for first reading on May 29, 2019, but domestic ratification in each country was held up for a variety of reasons, including US Congressional demands for changes and the Canadian Federal election.

After further (re)negotiation, on December 10, 2019 revisions were agreed to CUSMA, and domestic ratification and implementation is now expected to occur in 2020.

C.   Case Law

The discussion below encompasses a selection of interesting copyright cases from 2019. For the most part, the discussion excludes ‘copyright’ cases that are only notable for reasons other than copyright—i.e. for developments in law relating to civil procedure, administrative review, or otherwise.

1.     Crown Copyright

Keatley Surveying Ltd. v. Teranet Inc., 2019 SCC 43 presented the Supreme Court of Canada with its first opportunity to consider the Act’s almost century-old provisions on Crown copyright.

S. 12 of the Act provides that the Crown owns copyright in a work that is, or has been, “prepared or published by or under the direction or control” of the Crown or any governmental department. Further, in accordance with s. 165(1) of the Land Titles Act, RSO 1990, c L.5, all survey plans deposited at a land registry office in Ontario become the property of the Crown. In the present case, the Crown (here, the Government of the Province of Ontario) had contracted the defendant Teranet Inc. (“Teranet”) to convert Ontario’s paper-based land registry system into an electronic one. Teranet continued to operate the system on the Province’s behalf. The representative plaintiff company Keatley Surveying Ltd. (“Keatley”) was owned and operated by a professional land surveyor, and had brought a motion to certify a class action on behalf of all land surveyors in Ontario. Keatley claimed that Teranet infringed surveyors’ copyright by digitizing, storing, and copying the plans of survey in the electronic system. The central issue, as this case made its way up the courts (the Ontario Court of Appeal decision was discussed in the 2017 edition of this article), was whether the Crown, through Teranet, “published” the plans of survey, which in turn would mean it owned the copyright in the plans.

The court dealt with an issue that was not fully resolved in the earlier decision of the Ontario Court of Appeal, namely, the threshold required for s. 12 to be invoked. Keatley argued that s. 12 should be read restrictively such that the work must have been “prepared by or under the direction or control” of the Crown (para. 62), whereas Teranet argued for a broad interpretation that would give the Crown copyright in any work it published. The court used fair dealing jurisprudence to inform its analysis, commenting that fair dealing “balances the rights of creators of works and their users” (para. 46), and is helpful in determining the scope of s. 12.

The majority of the court held that the Crown need not directly prepare the work as the author, but copyright in works completed by independent contractors commissioned by the Crown would vest in the Crown, due to the direction and control the Crown exercises over the work’s creation. The Court set out a number of factors or indicia to consider in determining whether the Crown exercised sufficient direction or control over the preparation or publication of a work to ground a finding of copyright. These include (at para. 69):

  • the presence of a statutory scheme transferring property rights in the works to the Crown;
  • a statutory scheme which places strict controls on the form and content of the works;
  • whether the Crown physically possesses the works;
  • whether exclusive control is given to the government to modify the works;
  • the opt-in nature of the statutory scheme; and
  • the necessity of the Crown making the works available to the public.

The majority concluded that “only when it can be said that the Crown has sufficient governmental direction or control over the publication process that Crown copyright will subsist within the meaning of s. 12” (ibid.). The same factors apply when a third party (i.e. Teranet) published the plans of survey. The court examined the nature of the relationship between Teranet and the Province, and found that the Crown effectively had complete control over the process of publication—Teranet acted only in accordance with relevant legislation and agreements with the Province—as such, copyright vested in the Crown rather than the creator of the work.

The court commented on the principle of technological neutrality and held that the digitization of the land title system did not change the assessment of whether the Crown had copyright under s. 12: there was no practical difference between obtaining a copy of a plan of survey from a physical office or through electronic means. As such, since the Crown owned the copyright in the electronically published survey plans and Teranet only acted on behalf of the Crown, there was no infringement.

A minority concurred in the result, but disagreed with the consideration of all the factors cited by the majority. The concurring minority would have interpreted s. 12 more narrowly only “where the work is a government work” (para. 99) which it defined as a work that “serves a public purpose and in which vesting the copyright in the Crown furthers that purpose” (ibid.).

2.     Subject Matter and Originality

In Pyrrha Design Inc. v. Plum and Posey Inc., 2019 FC 129, the plaintiff Pyrrha Design Inc. (“Pyrrha”) raised allegations of copyright infringement at the Federal Court against the defendants Plum and Posey Inc. and Adrinna Hardy (collectively, “Plum”). The parties were involved in jewellery making, and the case illustrates that all that glitters is not gold. The parties had a long and protracted history of litigation and a settlement, involving the subject of wax seal jewellery, which was also at issue in this case. As the court explained “[w]ax seal jewellery is created by transferring the image from a pre-existing wax seal impression or wax seal tool to metal jewellery” (para. 31) and is not itself a new process. While the court accepted that jewellery is an ‘artistic work’ and that the particular expression involved in a piece of jewellery can be protectable under copyright, it does not automatically follow that a similar work by Plum is infringing. As the court noted, a “showing by [Pyrrha] of sufficient similarity and access to the work would raise a prima facie case of infringement. However, a showing by [Plum] that the infringing work is the result of work from a common source or that it is an independent creation, means no infringement could be found” (para. 122). In this case, the court concluded that the works by Plum were not sufficiently similar to ground infringement, but its comments on ‘common source’ are instructive for industries where creators draw from the same well.

The common well of facts and ideas, versus their expression, also featured at the Court of Queen’s Bench of Manitoba in Albo v. The Winnipeg Free Press et al., 2019 MBQB 34. Copyright infringement and various claims relating to breach of contract were alleged by the plaintiff Frank Albo (“Albo”) against the defendant The Winnipeg Free Press (“WFP”). Albo was accepted as “an architectural historian and leading authority on the architecture and urbanism of the City of Winnipeg” (para. 14), and had previously collaborated with the WFP on the publication of a book. Subsequently, he was retained as a paid consultant by the WFP, due his expertise, in relation to a further project on the architectural history of the city—this was for a series of newspaper articles (the “Stories”). These articles acknowledged and quoted Albo, but the article author also utilized and relied on other sources. While not contemplated initially, the Stories were subsequently turned into a ‘coffee table book’ in collaboration with the other defendant, the Manitoba Association of Architects (the “Coffee Table Book”). It was only subsequent to the Coffee Table Book being published that Albo raised any concerns and then commenced this proceeding. Albo accepted in cross-examination that “save for when he is quoted directly, the Book does not use his words or even similar words to express the ideas and facts that he claims as his own” (para. 88). On the quotations used, the court found Albo did not have copyright, and alternatively would have found fair dealing applied. The court dismissed the claims, effectively reminding us all to not judge a book by its cover and to not architect claims with weak foundations.

Turning to Carpentier c. Fabricville Co. inc., 2019 QCCQ 1515, a small claims court decision from Quebec, we see that if life gives you lemons, you might need to ask for permission before you make lemonade, or lemon fabric! The plaintiff Julie Carpentier (“Carpentier”) alleged that the defendant Fabricville Co. inc. (“Fabricville”) infringed copyright in one of her wallpaper designs, by use of a lemon design for tablecloth fabric. The design in question consisted of three lemons arranged in a pattern. Fabricville had countered that it obtained the fabric from its supplier, who in turn received it from a worldwide supplier of fabric based in China (the “Chinese Supplier”). A Fabricville representative deposed that the fabric design existed for many years, and relied on a letter from the Chinese Supplier that stated the design was developed in January of 2012 (prior to when Carpentier created her design) and printed and sold thereafter. Fabricville further argued that in any event, the design was not sufficiently original to ground copyright. The court disagreed and found that the wallpaper had sufficient originality to constitute a protectable work based on the various steps necessary to create the design—originality not being a high bar. As Carpentier was credited on the website where her design was sold, the court found that she benefitted from the presumption in s. 34.1 of the Act that the indicated author is the copyright holder. The court also found that the Chinese Supplier’s letter had weak probative value and since no other evidence was tendered in favour of rebutting the 34.1 presumption, the court concluded that the Carpentier had copyright and held her copyright had been infringed. Although there was limited discussion on this point, it appears the court found that Fabricville’s design wasn’t an exact copy, but nevertheless was sufficiently similar to support a finding of infringement. Carpentier was awarded 15% of the value of the fabric sold by Fabricville that bore her design and moral damages at $2,750.

3.     Damages and Injunctions

Thomson v. Afterlife Network Inc., 2019 FC 545 was a decision of the Federal Court, in respect of a class proceeding where Dawn Thomson (“Thomson”) was the representative plaintiff and Afterlife Network Inc. (“Afterlife”) the defendant. In short, Afterlife had operated a website which posted obituaries and photographs authored by Thomson and others in Canada without their consent, usually with some sort of an option to purchase flowers or virtual candles that allowed Afterlife to profit—as discussed in the decision, many class members were mortified that others, however, would think they (i.e. the class members) were profiting from their bereavement through the sale of flowers and virtual candles. Thomson alleged that this use of the obituaries and photographs infringed the copyright therein and the moral rights of the class members, and sought injunctive relief and damages. Afterlife did not participate in the proceeding, but in response it shut down the original website, redirecting all traffic to a new website wherein the obituaries were in a template form rather than exactly copied.

The court found that Afterlife had infringed the copyright of class members in the obituaries they wrote and photographs they took, but did not find moral rights infringement—it agreed with Thomson that Afterlife’s conduct could be “aptly characterized as ‘obituary piracy’” (para. 77). The only available evidence suggested “that approximately two million infringements occurred, because Afterlife posted over one million Canadian obituaries and a sample indicated that most were accompanied by a photograph” (para. 56). In addition to an injunction, the court awarded statutory damages of $10,000,000 based on the quantum Thomson sought for the class—the court noted that if it “were to award the lowest amount of $500 per infringement and apply this amount to the estimate of approximately two million infringements […] the statutory damages would amount to $1 billion. In these circumstances, such an amount would be grossly disproportionate” (para. 63). The court further awarded aggravated damages of $10,000,000 due to the vulnerability of grieving family members and embarrassment over the association of obituaries with profit. While the defendant’s conduct was “high-handed, reprehensible and represents a marked departure from standards of decency” (para. 77), the court found that the high threshold for punitive damages had not been met, and the $20,000,000 award against Afterlife was sufficient.

Bell Media Inc. v. GoldTV.Biz, 2019 FC 1432 was a Federal Court matter that involved a number of Canadian broadcasting companies as plaintiffs (collectively, the “TV Companies”). The TV Companies alleged that two John Doe defendants had infringed their copyright in various TV programs by operating unauthorized subscription services called ‘GoldTV’, which provided GoldTV subscribers access to the TV Companies’ content over the Internet. In prior proceedings, interim and interlocutory injunctions ordering the John Doe defendants to cease operating GoldTV had been issued, however the John Does remained unknown and “some of the GoldTV Services remain in operation and the alleged infringement continues” (para. 8). As a result the TV Companies sought an interlocutory mandatory injunction against various third-party ISPs, which would compel them to block their (i.e. the ISP’s) customers from accessing the GoldTV services. The ISPs, who were third parties to the proceedings either consented or took no position on the merits, except for TekSavvy Solutions Inc. (“TekSavvy”), who opposed the motion.

The court considered whether it had jurisdiction to make a ‘site-blocking order’, and found that it could issue the order under its equitable jurisdiction. While TekSavvy argued that the Court should decline to exercise its jurisdiction because, inter alia, such relief does not exist in the Act, the court disagreed. While much of the discussion and analysis related to procedural aspects, including the tests for granting mandatory interlocutory injunctions, for copyright purposes the takeaway is that the court did, in fact, issue a ‘site-blocking order’. This is the first time such an order has been granted in the context of sites alleged to be infringing copyright, and so it may be a newly available tool to combat alleged copyright infringement. Near the end of 2019, TekSavvy filed a Notice of Appeal in this matter, so this may only be a season finale and not the series finale—stay tuned to this channel, er, website!

The author would like to acknowledge the helpful assistance of Sarah Tradewell in preparation of this article. Sarah was an articled student with Clark Wilson LLP at the time this article was first written and is now an Associate with our Family Law and Strata Property practice groups.