Copyright year in review - 2016

This article highlights noteworthy Canadian copyright law decisions and developments from 2016. For more updates on the latest intellectual property trends and insights, sign up to receive our IP Report newsletter.

Rogers Communications Partnership v. SOCAN, 2016 FCA 28

In 2006, the Copyright Board certified Tariff 24 (Ringtones) for the period 2003-2005. A judicial review of this decision by the potential payors (corporations selling ringtones) was dismissed and leave to appeal to the Supreme Court of Canada was eventually denied.¹ The Board certified a second Tariff 24 (Ringtones) in June 2012 for the period 2007-2013. No review was sought of that decision. In July 2012, the Supreme Court of Canada issued two decisions (ESA & Rogers) in different contexts which determined that when musical works are delivered to consumers by way of downloads, this does not constitute a communication of a musical work to the public by telecommunication.²

Corporations stopped making Tariff 24 payments to SOCAN and asked the Board, in effect, to rescind Tariff 24, retroactively to 2003, in light of ESA and Rogers. The Board refused. The Corporations brought an action against SOCAN in the Federal Court of Canada seeking to recover the monies paid under Tariff 24. SOCAN defended the action on the basis that the prior tariff proceedings were res judicata and could not be attacked once the appeals of those decisions were concluded (or, in the case of the second decision, never taken).

A Rule 220(1)(a) order issued for six questions of law to be determined prior to trial. A Federal Court Judge heard the motion and answered all six. On appeal, the Federal Court of Appeal concluded that three of the six questions were not pure questions of law and ought not to have been answered. One of the remaining questions was whether the Plaintiffs' claim has already been finally decided against them (res judicata / issue estoppel). The Federal Court of Appeal found that circumstances for issue estoppel exist, subject only to the trial judge's ultimate discretion to apply or not apply the doctrine to the Plaintiffs' claims.

Fair Dealing

The defence of fair dealing was made out by the Defendant in 1395804 Ontario Ltd operating as Blacklock's Reporter v. Canada (Attorney General), 2016 FC 1255. Blacklock published articles regarding the Department of Finance suspected to be inaccurate. A subscription to Blacklock's website was purchased and articles forwarded internally for comment and consideration. Blacklock brought a claim for copyright infringement for what it said was unauthorized distribution of its copyrighted articles to others.

Fair dealing for research purposes was made out. Articles were legally obtained (subscription), not used for a competing or commercial purpose, distribution was limited and no terms of use were brought to the subscriber's attention.

The defence of fair dealing failed in Canadian Standards Assn v PS Knight Co, 2016 FC 294. The Defendant had reproduced a copy of one of the Plaintiff's commercial publications (the Canadian Electrical Code) and sold it in competition to the Plaintiff at 1/3rd the Plaintiff's retail price. The defence of fair dealing did not apply, even though arguably end users might use the Defendant's book to engage in research and even though the Plaintiff's work had been adopted by reference into provincial electrical laws.

Useful Articles

In Corocord Raumnetz GmbH v. Dynamo Industries Inc, 2016 FC 1369, the Defendant sold playground equipment it admitted it modeled on the Plaintiff's equipment. It defended copyright infringement proceedings by arguing that section 64(2) of the Copyright Act applied because the Plaintiff had sold more than 50 copies of its equipment, being "useful articles" to which artistic designs had been applied.

While more than 50 units had been sold world-wide, less than 50 had been sold by the Plaintiff in Canada.

The Court performed a statutory interpretation of section 64(2) and concluded that the relevant issue is worldwide sales by the Plaintiff of the useful article, and not merely their Canadian sales. As a result, the Defendant's defence succeeded.

Originality

In Davydiuk v Internet Archive, the Defendant moved for summary judgment on the Plaintiff's claims for infringement in relation to certain videos and photographs. The Plaintiff did not have original copies (meaning the first copies) of his videos or photographs. The Defendants argued that without the first copies, a trial judge could never assess the skill and judgment to create these works (originality). The Court rejected the argument.

The Defendants also argued that the photographs in question were mere screen captures from the videos, and that still images should not in law attract copyright (being purely mechanical captures from the videos). This was also rejected.

In Maltz v. Witterick, 2016 FC 524, a film maker alleged copyright in the film had been violated by an author's book which, all agreed, had been inspired by the story told in the film. The Court concluded that the only similarities in expression related to what the Court described as facts, and the Court affirmed that copyright will not be attributed to facts, even those that the Plaintiff attempted to describe as "large facts."

Finally, in Geophysical Service Inc. v. Encana Corp., 2016 ABQB 230, the Court concluded that

offshore marine seismic surveys (squiggly or zebra lines) were an artistic work - similar to a map, plan or chart - or a compilation, since the product was the result of the selection or arrangement of data or sound recordings. Human input was involved continuously. The Court refused to characterize the words as essentially facts or ideas.

Crown Copyright

Keatley Surveying Ltd v. Teranet Inc, 2016 ONSC 1717 is a long-running dispute between land surveyors and the private sector company that manages the provinces' electronic land registry system. Plans and other documents prepared by land surveyors are registered in the province's land registry system. Provisions of the Registry Act and the Land Titles Act provide that all plans submitted for registration become "the property of the Crown." The Defendant, Teranet, provides online copies of registered plans to the public for a fee. Teranet does not pay fees or royalties to surveyors who prepare the plans.

One issue was whether copyright in the Plaintiffs' plans became vested in the Crown by virtue of section 12 of the Copyright Act.

The Court concluded that the plans are not in the first instance "prepared by or under the direction" of the Crown. Also, the mere fact that someone else's work is ever published by the Crown does not automatically vest copyright in the Crown under section 12. However, in this case, since ownership of property in the plans was transferred to the Crown upon deposit (under provincial property statutes) at that point the Crown did obtain "control," and its then publishing of the works transferred copyright to the Crown by section 12.

New Media

In Bell Canada v. 1326030 Ontario Inc (iTVBox.net), 2016 FC 612 and in Media v. Bell Canada, 2016 ONSC 7273, the Courts granted interlocutory injunctions against retailers of services designed to offer Canadians "free" or cheaper television programming.

In iTVBox.net, the Federal Court of Canada granted an injunction against retailers of pre-loaded "plug-and-play" set-top boxes, pre-loaded with applications to allow consumers to access TV programs and movies without cable or other subscriptions. The Respondents argued that they were mere "conduits" who could afford themselves of the defence provided in section 2.4(1) of the Copyright Act but this was rejected. The Court said their activities "went above and beyond" selling a simple piece of hardware, and instead related to the content of the copyright-protected programming.

In VMedia, the Defendant began offering retransmission of over-the-air television signals to subscribers who had VMedia's proprietary set-top box. These channels included CTV and CTV2, both owned by Bell. Section 31 of the Copyright Act sets out, in effect, a compulsory licensing regime that permits "retransmitters" (who perform a function comparable to cable retransmission system) to communicate works to the public by telecommunication without an express copyright license from content owners. However, excluded from the definition "retransmitters" are "new media retransmitters," defined to mean someone whose retransmission is lawful under the Broadcasting Act "only by reason of the Exemption Order for New Media Broadcasting Undertakings…" (emphasis added). VMedia claimed that its new service was not captured by the definition, because it enjoyed an additional license under the Broadcasting Act. However the Court rejected this argument, finding that its Internet services were only authorized under the legislation by the Exemption Order.

Legislative Developments

Bill C-11 (An Act to Amend the Copyright Act (Access to Copyrighted Works or Other Subject-Matter for Persons with Perceptual Disabilities) received royal assent on June 22, 2016. This Act amends the Copyright Act and implements the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired or Otherwise Print Disabled to facilitate access for such persons to copyright materials.

On February 4, 2016, Canada signed the Trans-Pacific Partnership (TPP). If ratified, arguably the most notable change to Canada's copyright law would be the extension of the term of copyright to life of the author plus 70 years.