Copyright - 2016 Year In Review

Below are our selections of the most interesting developments in Canadian copyright law in 2016 ... from documentaries, toys, building plans, surveys, and software, to treaties, alleged copyright trolls and reverse class actions.

Limits of copyright protection: facts, non-fictional characters and useful articles

Two cases from the past year addressed the limits on copyright protection.

First, Maltz v Witterick, 2016 FC 524, affirmed that copyright does not protect facts, irrespective of whether the facts are "large" (e.g. Germany invaded Poland in World War II) or "small" (e.g. a soldier's diary entry disclosing a specific event during World War II). The decision involved whether copyright in a documentary film was infringed by a book that took the "core story" from a documentary based on historical facts, with differences in expression, content, form, feel and experience, and without a substantial taking of structure, tone, theme, atmosphere and dialogue. The respondent in Maltz v Witterick prevailed by arguing that her fictionalized version of the appellant's compiled history (i.e. that formed the subject of the appellant's documentary) did not infringe upon any protected work. The decision confirms that copyright only protects the expression of facts: "Facts are facts; and no one owns copyright in them no matter what their relative size or significance ... The particular means, method, and manner the Applicants used to tell [the] story, such that instances of verbatim copying - i.e. transcription of the Documentary - may well constitute copyright infringement. However, using an actual fact from the Documentary is not infringement no matter how large or small, significant or insignificant, such a fact may be." As an adjunct to copyright not protecting facts, the decision also limits the scope of protection afforded to well-delineated characters to fictional characters: "there are only real people or references to and recollection of once real persons, and there cannot be copyright over a real person, whether dead or alive".

Documentary filmmakers and non-fiction authors may take comfort in the decision since it confirms that compiling facts, even obscure facts from a single source, does not carry an inherent risk of infringement, despite a holistic approach to infringement. At the same time, though, the decision limits the ability to enforce non-fiction copyrights against a subsequent teller of a true story, irrespective of who uncovered the facts.

Second, Corocord Raumnetz GMBH v. Dynamo Industries Inc, 2016 FC 1369, affirms that once 50 copies of a useful article have been sold anywhere, copyright is no longer enforceable. There are only a handful of Canadian cases that discuss the scope of the Copyright Act provision that deems it non- infringement to copy useful articles. The decision is noteworthy, not only because it confirms that the threshold number of 50 sales applies to global sales, and not Canadian sales, but also because it sheds light on what "useful" means. In a prior case, the Federal Court of Appeal made obiter comments that "useful" works must have a practical use in addition its esthetic value, and drew a line between useful jewellery (a tie clip or cufflinks) and non-useful jewellery (purely ornamental brooch or earrings). Play structures were at issue in this case, and the Court found that their being designed to be played on is "clearly useful, and ... more than just a work of art to be merely observed and admired." Toy manufacturers are likely to note the decision, since it remains an open question under Canadian law whether children's toys are "useful" articles. This decision supports the argument that toys are useful articles, at least those toys and playthings whose design is not guided by aesthetic purposes, but by security concerns and safety standards.

Injunction against devices that enable acts of infringement and "induce" copyright infringement

In Bell Canada v 1326030 Ontario Inc, 2016 FC 612, an interlocutory injunction was issued against vendors of pre-loaded set-top boxes. These boxes were "pre-loaded" with apps that allow consumers to download or stream pirated content for viewing on that television - including the plaintiffs' content.

The case is noteworthy because action was successfully taken against the party selling the devices, not the party creating the apps who is truly providing the service that results in direct access to the pirated content. Canadian copyright laws were recently amended to introduce infringement by "services" (not devices) that primarily enable acts of infringement, with enumerated factors to assess this type of infringement. It is interesting that the Court found infringement by the party who sold the devices, without formally canvassing the factors to determine if a service is "primarily for the purpose of enabling acts of infringement". It is also worth mentioning that the Court referred to infringement based on "inducing" infringement. This is a US concept, different from the Canadian concept of "authorizing" infringement. The defendants were denied the protection of the "conduit" exception. Evidently, using slogans such as "Original Cable Killer" and offering tutorials on how to use the set-top boxes "went above and beyond" providing...