Notable Copyright Decisions In 2021

• Published date: 02 February 2022
• Subject Matter: Intellectual Property, Copyright
• Law Firm: Goldman Sloan Nash & Haber LLP
• Author: Mr John McKeown

Notable Copyright Decisions in 2021

It has been a busy year for copyright law. The Supreme Court of Canada has released one decision concerning copyright and two decisions concerning sealing orders. The Federal Court of Appeal has written two decisions relating to remedial matters. The Ontario Divisional Court has written a decision concerning jurisdiction for infringement. The Québec Court of Appeal has released a decision dealing with a claim for an accounting for profits. Finally, the Federal Court has released a number of decisions. This paper provides an overview of the decisions.

The economic factors driving the 2021 decisions do not appear to have changed, and it is very likely that 2022 will see a similar number of decisions. In particular, the desire of rights holders to obtain appropriate and effective remedies will likely result in additional decisions concerning more dynamic site-blocking orders and other injunctive relief.

Anton Piller/ Mavera Orders

In Warner Brothers Entertainment Inc. v. White 2021 FC 53, the court heard a review motion relating to an Anton Piller order. The interim order was continued. There was a genuine risk of the disappearance of assets and a real risk of the assets being removed from the jurisdiction, depriving the plaintiffs of the fruits of a judgment. A Mavera injunction was issued restraining the defendants from selling, assigning, alienating, transferring, or otherwise disposing of assets, pending trial.

Claims Against an ISP for Statutory Damages

In Me2 Productions, Inc. v. Doe 2019 FC 214, an application was made for a Norwich order. The judge decided that a claim against the ISP involved for statutory damages could proceed concurrently with the application. This decision was considered in TBV Productions, LLC v. Doe2021 FC 181. The judge said that the result in ME2 was determined by the facts and, in particular, the order was discretionary and made by a case management judge. In TBV, the judge said that it is not clear that a free-standing claim of damages under the notice-and-notice regime could be initiated by application. A claim for damages for non-compliance with the notice-and-notice scheme is not identified as a proceeding that can be determined in a summary way by application or action, and the procedure for advancing such a claim is not specified in the Act. The general rule is that liability and damages should be decided by way of an action applied.

The Scope of a Defence to a Statutory Damage Claim

In August Image, LLC v. Airg Inc. 2021 FC 272, the Judge accepted that subsection 38.1(5)(b) of the Copyright Act permitted defences to a statutory damage claim to include reference to the plaintiff's conduct before litigation.

Issue Estoppel

In Rogers Communication's Canada Inc. v. Society of Composers, Authors and Music Publishers of Canada 2021, FC 207 plaintiffs sued for the repayment of royalties paid under tariff 24 after a subsequent decision concluded that related tariffs were invalid. The action was dismissed on the basis of issue estoppel. The plaintiff made a business decision to stop fighting over Tariff 24 after a loss on their judicial review application and move on, despite the fact that the download issue was being debated at the time before the Copyright Board in relation to Tariff 22. The circumstances surrounding the execution of the 2010 Agreement relating to Tariff 24 lead to the conclusion that all parties viewed the agreement as settling any potential litigation before the Board regarding ringtone royalties to minimize risk and achieve long-term certainty. The plaintiffs, by their execution of the Agreement and compliance with the agreement, caused SOCAN to believe that the 2010 Agreement had fully and finally settled the ringtones proceedings for the years 2006 to 2013. SOCAN altered its position based on this belief and distributed the ringtones royalties to its members.

Inferring Infringement

In Patterned Concrete Mississauga Inc. v. Bomaite Toronto Ltd. 2021 FC 314, it was confirmed that a court may infer infringement if a) there is substantial similarity such that the allegedly infringing work could be considered a copy or reproduction of the protected work; and b) the defendant had access to the protected work, sometimes referred to as a "casual connection."

Copyright in Historical Facts

In John Winkler v. Nate Hendley, 2021 FC 498, the Court followed the Francis, Day & Hunter [1939] 4 All E.R.192 (Eng. P.C.) decision when considering the definition of a "work" in section 2 of the Copyright Act. The section states that a "work includes the title thereof when such title is original and distinctive." This does not make the title a separate work. Rather, it forms only part of the work as a whole. In addition, the requirement that a title is "distinctive" under the Copyright Act does not engage the same issues as it does in trademark law.

In the same decision, the court affirmed there is no copyright in historical facts. The Court stated that where an author presents work as historically factual, they cannot complain in a copyright infringement action that a subsequent author has taken them at their word and relied on the facts they presented as being true. An author cannot seek to disprove their historical account and purport to claim copyright over the "facts" contained in it because those facts are not true.

Such an approach is not helpful in light of the following comment made by the House of Lords in the Ladbroke [1964] 1 All E.R. 465 at 481 (U.K.H.L.) decision:

Did the defendants reproduce a substantial part of it? Whether a part is substantial must be decided by its quality rather than its quantity. The reproduction of a part...