Copyright Law: 2018 Year In Review

This article highlights noteworthy Canadian copyright law decisions and developments from 2018.

Notice and Notice Regime and Norwich Order

Rogers Communications Inc v Voltage Pictures, LLC, 2018 SCC 38

The Supsreme Court of Canada weighed in on the obligations of internet service providers (ISP) under Canada's "notice and notice" regime and what costs are recoverable by ISPs when they comply with a Norwich order (i.e. an order that requires the ISP disclose the identity of the person who allegedly infringed the copyright).

Voltage had alleged that their copyrights were infringed online by approximately 55,000 people. Voltage brought a motion for a Norwich order compelling Rogers to disclose the identity of the owners of the identified IP addresses. Voltage further sought to have this Norwich order made at no cost payable to Rogers. Rogers took no position on whether Voltage was entitled to the Norwich order but maintained that it should be able to recover its costs if the order was granted.

Currently, ISPs are prohibited from charging any amount for complying with their obligations to forward the notice of claimed infringement to the person to whom the IP address belongs pursuant to the notice and notice regime, as the Minster has not fixed a maximum fee under the Regulations. At issue in this proceeding was whether the ISP could recover its costs of compliance with the Norwich order if the steps which it must take to comply with the order overlap with its obligations under the notice and notice regime.

Justice Brown held that in addition to the express obligations that are set out in s. 41.26(1) of the Copyright Act, ISPs also have implicit obligations under the notice and notice regime including:

Determining, for the purpose of forwarding notice electronically, the person to whom the IP address belonged; Taking necessary steps to verify that the notice is accurately forwarded; and Taking necessary steps to verify the accuracy of those records that an ISP must retain and would allow that identity of the person who owns the IP address (name and address) to be determined. To the extent that an ISP incurred expenses in performing its statutory obligations under s. 41.26(1), those costs are not recoverable. Recoverable costs must be reasonable and arise from compliance with the Norwich order such as the cost of discerning a person's identity from its records.

On the question of whether Roger's costs of compliance with the Norwich order were reasonable, Brown J ordered that the matter be returned to the motion judge for re-determination.

Standard of Review

Canadian Copyright Licensing Agency (Access Copyright) v Canada, 2018 FCA 58

The Federal Court of Appeal dismissed an application by Access Copyright for judicial review of a Copyright Board decision certifying the royalty rates payable to Access Copyright for the reproduction of copyright-protected works by the provincial and territorial governments.

The central issue on judicial review was the Board's decision to exclude the "Deletion Provision" and with it digital copies from one of the two proposed tariffs. The Deletion Provision would have required the government licensees delete digital copies of work subject to the tariff after the tariff period.

Access Copyright argued that the Board had no authority under the Copyright Act to vary the terms and conditions on digital uses that Access Copyright agreed to authorize. It characterized the Board's decision as a "removal" of the Deletion Provision and one that attracts a correctness standard because it is a jurisdictional matter.

The respondents characterized the Board's decision differently. The respondents argued that the Board decided not to include the Deletion Provision in its tariff which it was within its discretion to do.

The Federal Court of Appeal conducted a detailed analysis of the appropriate standard of review to be applied to decisions of administrative bodies. The Court provided a detailed analysis of "jurisdictional questions" with an analysis of the law going back to C.U.P.E., Local 963 v. New Brunswick Liquor Corp., [1979] 2 S.C.R. 227, 97 D.L.R. (3d) 417 (S.C.C.). The Court held that the appropriate standard of review for the Board's decision was reasonableness.

The Court ultimately agreed with the respondent's characterization of the decision under review and dismissed the appeal, holding that the Board has the authority under s. 70.15 of the Copyright Act to decide what matters should form part of a tariff. The Court analyzed the decision of the Board and held that the Board's decision to not include the Deletion Provision was reasonable.

Anton Piller Order and Interlocutory Injunction

Bell Canada et al v Lackman, 2018 FCA 42

The appellants (Bell Canada et al) appealed an order of Justice Bell where he vacated an Anton Piller order and dismissed their motion for an interlocutory injunction. Justice LeBlanc has granted the Anton Piller order and interim injunction against the respondent - the respondent was involved in a TV Addons website. The TV Addons website contained a repository of infringing add-ons which enabled users to access and stream digital contents through media players such as the KODI. The appellants alleged that the respondent infringed copyright by communicating and making available to the public the appellant's programs, and by inducing and/or authorizing users of infringing add-ons to infringe by virtue of operating the TV Addons business.

Justice Bell was highly critical of how the Anton Piller order was executed and refused to convert the interim injunction to an interlocutory injunction on the basis of the balance of convenience favoured the respondent. The Federal Court of Appeal allowed the appeal, set aside Justice Bell's order, declared the Anton Piller and interim injunction to have been lawfully conducted and issued the interlocutory injunction.

On the issue of the Anton Piller order, the Court found that Justice Bell misapprehended the evidence and made a palpable and overriding error in his assessment of the strength of the appellants' case. The Court held that the appellants had a strong primia facie case of copyright infringement and paragraph 2.4(1)(b) of the Copyright Act did not apply as the respondent's website was not a mere neutral conduit for information provided by others. The Court then held that had the reversible errors not been committed, the appellants would have met all the criteria for the issuance of an Anton Piller...