Quarterly Copyright Blog - Q4

• Published date: 27 October 2021
• Subject Matter: Intellectual Property, Litigation, Mediation & Arbitration, Copyright, Trials & Appeals & Compensation
• Law Firm: Goldman Sloan Nash & Haber LLP
• Author: Mr John McKeown

Quarterly Copyright Blog

For those who are interested in recent cases and developments about copyright and related matters, there have been several developments since the last entry.

Copyright in the Title of a Work

In John Winkler v. Nate Hendley 2021 FC 498, the Federal Court considered the definition of a "work" in section 2 of the Copyright Act, which provides 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 be "distinctive" under the Copyright Act does not engage the same issues as it does in trademark law.

A Video Recording can be a Cinematographic Work

A video recording is protected as a cinematographic work when expressed by a process "analogous to cinematography." Cinematography is the art of taking and producing films. Canadian Broadcasting Corporation v. Conservative Party of Canada 2021 FC 425.

When is a Work Created in the Course of Employment?

An English case, Penhallurick v. MD5 Limited [2021] EWHC 293 (IPEC), concluded there is no single test to be applied. Whether or not given acts were carried out in the course of employment for the purposes of section 13 is a multifactorial assessment to be based on all the circumstances. Usually, where an employment relationship has been conceded, there will be factors which point to the copyrighted work being created in the course of that employment and some factors which point otherwise. The factors may include:

1. The terms of the contract of employment;
2. Where the work was created;
3. Whether the work was created during normal office hours;
4. Who provided the materials for the work to be created;
5. The level of direction provided to the author;
6. Whether the author can refuse to create the work/s; and
7. Whether the work is "integral" to the business.

When does a Court have Jurisdiction concerning Copyright Infringement?

In Pourshian v Walt Disney Company, 2012 ONSC 4840 (Divisional Court), the Court reviewed the appropriate approach to determining when a court has jurisdiction concerning alleged copyright infringement.

Where a defendant moves to set aside service ex juris on the ground that there is no real and substantial connection with Ontario, the question is whether there is a "good arguable case" that the connection exists. The path for determining whether there is a good arguable case is as follows:

"a. The statement of claim is the starting point for the analysis. Any allegation of fact that is not put into issue by the defendant is presumed to be true for purposes of the motion. The plaintiff is under no obligation to call evidence for any allegation that has not been challenged by the defendant.

b. However, where a pleading lacks sufficient particularity with respect to the required jurisdictional connections, the plaintiff bears the burden of supplementing the pleading with affidavit evidence establishing a connection.

c. Also, if the foreign defendant files affidavit evidence challenging the allegations in the statement of claim that are essential to jurisdiction, the threshold for the plaintiff to meet is that it has a "good arguable case" in respect of those allegations."

The Supreme Court of Canada has established in Van Breda when dealing with tort claims the following framework for determining whether a court has jurisdiction over a claim brought against foreign defendants.

"a. First, the court must determine whether there is a presumptive connecting factor between the claim and the jurisdiction. In the context of a tort action, the Supreme Court identified the following presumptive factors:

1. The defendant is domiciled in the province;
2. The defendant carries on business in the province;
3. The tort was committed in the province; or
4. A contract connected with the dispute was made in the province.

b. Second, if there is no presumptive connecting factor, the court is to determine whether a new presumptive connecting factor should be recognized. The Court identified the following relevant considerations to this determination:

1. Similarity of the connecting factor with the recognized presumptive connecting factors;
2. Treatment of the connecting factor in the case law;
3. Treatment of the connecting factor in statute law; and
4. Treatment of the connecting factor in the private international law of other legal systems with a shared commitment to order fairness and comity.

c. Even if...