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Notes on Canadian intellectual property law

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copyright:infringement

Copyright infringement

Anyone who exercises any of the rights provided exclusively to the owner of the copyright without consent of the owner infringes the copyright.

Statutory basis

Infringement

Section 27 of the Copyright Act provides the statutory definition of infringement:

Infringement generally

27. (1) It is an infringement of copyright for any person to do, without the consent of the owner of the copyright, anything that by this Act only the owner of the copyright has the right to do.

Exclusive rights

The exclusive rights granted to copyright owners are provided under s. 3 of the Act:

Copyright in works

3. (1) For the purposes of this Act, “copyright”, in relation to a work, means the sole right to produce or reproduce the work or any substantial part thereof in any material form whatever, to perform the work or any substantial part thereof in public or, if the work is unpublished, to publish the work or any substantial part thereof, and includes the sole right

(a) to produce, reproduce, perform or publish any translation of the work,

(b) in the case of a dramatic work, to convert it into a novel or other non-dramatic work,

(c) in the case of a novel or other non-dramatic work, or of an artistic work, to convert it into a dramatic work, by way of performance in public or otherwise,

(d) in the case of a literary, dramatic or musical work, to make any sound recording, cinematograph film or other contrivance by means of which the work may be mechanically reproduced or performed,

(e) in the case of any literary, dramatic, musical or artistic work, to reproduce, adapt and publicly present the work as a cinematographic work,

(f) in the case of any literary, dramatic, musical or artistic work, to communicate the work to the public by telecommunication,

(g) to present at a public exhibition, for a purpose other than sale or hire, an artistic work created after June 7, 1988, other than a map, chart or plan,

(h) in the case of a computer program that can be reproduced in the ordinary course of its use, other than by a reproduction during its execution in conjunction with a machine, device or computer, to rent out the computer program,

(i) in the case of a musical work, to rent out a sound recording in which the work is embodied, and

(j) in the case of a work that is in the form of a tangible object, to sell or otherwise transfer ownership of the tangible object, as long as that ownership has never previously been transferred in or outside Canada with the authorization of the copyright owner,

and to authorize any such acts.

Based on the wording of the Copyright Act, it would appear that acts of copyright infringement are limited to one of three “categories”: (1) to produce or reproduce a work in any material form, (2) to perform a work in public, or (3) to publish an unpublished work. The items in the enumerated list in s. 3(1) are illustrative of the three categories of rights granted exclusively to copyright owners.1

Elements of infringement

To establish infringement, a plaintiff must generally prove two elements:

  1. Objective similarity between a substantial part of the original work and the alleged copy, and
  2. A causal connection between the original and the alleged copy (i.e. that the original work was the “source” of the copy).2

Similarity between original and copy

Copyright protects not only “identical copies”, but also copies that bear sufficient similarity to the original.3 The “degree of resemblance” between the alleged copy and the original may be a factor in determining whether infringement has occurred, although it is not possible to formulate an exact test. As stated by the House of Lords in King Features Syndicate, Inc v O and M Kleeman, Ltd:4

When, as in this case, the copy or the reproduction is not exact, the court must examine the degree of resemblance. It is impossible to lay down any useful test of what constitutes a copy or a colourable imitation of such a work. I think, as Lord Watson seems to have thought in the not very different case of Hanfstaengl v Baines & Co,5 at p 27, that the language of Bayley J in West v Francis,6 though not always applicable, gives some assistance in determining what resemblance constitutes copying. Bayley J said, at p 743:

A copy is that which comes so near the original as to give to every person seeing it the idea created by the original.

In the same case Lord Shand remarked that, in comparing the works and keeping in view the idea and general effect created by the original, there was [p 31]:

such a degree of similarity as would lead one to say that the alleged infringement is a copy or reproduction of the original or the design – having adopted its essential features and substance.

Similarity, however, is not sufficient in itself to establish copyright infringement, since the defendant may have independently created the work. Nonetheless, if there are too many “coincidental” similarities (e.g. when many errors are common), the degree of similarity may be evidence of copying.7

In addition, the alleged copy must be similar to a “substantial part” of the original work,8 as copyright does not protect every “particle” of the original work.9 Moreover, the comparison, which is a question of mixed fact and law, must be between the works as a whole, and not on an element-by-element basis or a stepwise basis.10

See also: substantiality in copyright law.

Causal connection between original and copy

The copyright owner or plaintiff must show that there is actual “copying” in order to establish copyright infringement. Generally, this can be established by proof of access to the original work by the creator of the allegedly copied work.11

As noted above, close similarity or identity of the works may in some cases lead a court to infer copying barring an explanation to the contrary by the defendant (akin to a shifting of the burden of proof).12

A defendant may argue that they independently created the work in question, so as to break the causal link between the two works. It is copyright infringement as between the parties to a suit if it is established that the defendant copied from the plaintiff, but it is not infringement if the defendant created the work independently, or if the defendant copied from a third party or from source material in the public domain. Whether the defendant knew he was copying is generally irrelevant, since subjective belief in non-infringement is no defence.13

Relationship between infringement and originality

Questions of similarity and causal connection may sometimes be intertwined with the inquiry into originality, since a defendant may argue that what was copied was not protected by copyright.

For instance, the similarities between the works in question may be due to inspiration from a common third party source, or the similarities may be due to creative devices which are almost necessary for the genre. This latter doctrine is known as “scènes à faire”, originating in US jurisprudence, and which provides a defence to infringement.14 This doctrine has been accepted in UK case law 15 but has not received any direct treatment in Canadian jurisprudence.16

Reproduction

“Reproduction” under s. 3(1) of the Copyright Act requires that a new copy be made. As the Supreme Court noted in Théberge v Galerie d'Art du Petit Champlain inc, 17 the reproduction right is linked to the historical right against unauthorized multiplication (hence the term “copyright”):

The historical scope of the notion of “reproduction” under the Copyright Act should be kept in mind. As one would expect from the very word “copyright”, “reproduction” is usually defined as the act of producing additional or new copies of the work in any material form. Multiplication of the copies would be a necessary consequence of this physical concept of “reproduction”. In Massie & Renwick, Ltd. v. Underwriters' Survey Bureau, Ltd., [1940] S.C.R. 218, at p. 227, Duff C.J. viewed copyright law as essentially about protecting the right to multiply copies of a work:

I think there can be no doubt that material of that character was subject matter for copyright and, not being published, the exclusive right of multiplying copies of it, or of publishing it, was a right which the common law, prior to the statute of 1921, gave primarily to the authors of it. [Emphasis in original by McLachlin J.] 18

On the facts of Théberge, the physical transfer of prints of a painting from poster paper backing onto canvas backing did not constitute copyright infringement, since no new copy was produced. Copyright as an economic right did not prevent someone who owned the physical work from doing what he or she wanted with it (generally recognized as the doctrine of "first sale" or "exhaustion", though the Court did not invoke this term).19 What the plaintiff sought to do was assert a moral right in the guise of an economic right. Since the plaintiff did not make a moral right claim, his action failed.20

Although reproduction generally requires multiplication, the Court recognized that this right was not limited only to “literal physical, mechanical production” but encompassed copying into other media:

This is not to say that the Act recognizes only literal physical, mechanical reproduction. The legal concept has broadened over time to recognize what might be called metaphorical copying (transformation to another medium, e.g. books to films). It is recognized that technologies have evolved by which expression could be reproduced in ways undreamt of in earlier periods, such as evanescent and “virtual” copies in electronic formats. Transformation of an artistic work from two dimensions to three dimensions, or vice versa, will infringe copyright even though the physical reproduction of the original expression of that work has not been mechanically copied. Equally, translations or transformations into another medium may be infringements of economic rights. Nevertheless, the important evolution of legal concepts in the field of copyright is not engaged by the facts here. This is a case of literal physical, mechanical transfer in which no multiplication (metaphorical or otherwise) takes place.21

In pointing out the problem posed by technological progress, the Court also hinted at the doctrine of "technological neutrality" (also known as “media neutrality”), which would become contentious in other cases.22

In obiter, the Court also noted that although s. 3(1) of the Act uses the term “produce or reproduce”, production has not been given any independent meaning apart from reproduction.23

Public performance

The Copyright Act defines “performance” as the following:

“performance” means any acoustic or visual representation of a work, performer’s performance, sound recording or communication signal, including a representation made by means of any mechanical instrument, radio receiving set or television receiving set 24

Historically, the “right to perform … presupposed a live audience that would be present at the site where the performance took place.”25

While the majority of the Supreme Court in Entertainment Software Association v Society of Composers, Authors and Music Publishers of Canada suggested that the s. 3(1) right to perform a work in public is a “general right”, of which the s. 3(1)(f) right of communication a work to the public by telecommunication is a specific example,26 Canadian jurisprudence of the public performance right has focused almost exclusively on the specific wording of s. 3(1)(f).27

In ESA, a majority of the Court drew a sharp distinction between “performance” and “reproduction”:

Performing a work is fundamentally different than reproducing it. As this Court concluded in Bishop v. Stevens,28 a performance is impermanent in nature, and does not leave the viewer or listener with a durable copy of the work:

The right to perform (including radio broadcast), and the right to make a recording, are separately enumerated in s. 3(1). They are distinct rights in theory and in practice … . [T]he rights to perform and to record a work are considered sufficiently distinct that they are generally assigned separately, and administered by different entities.
… A performance is by its very nature fleeting, transient, impermanent. When it is over, only the memory remains… . Furthermore, no imitation of a performance can be a precise copy. A recording, on the other hand, is permanent. It may be copied easily, privately, and precisely. Once a work has been recorded, the recording takes on a life of its own… . Once the composer has made or authorized a recording of his work, he has irrevocably given up much of his control over its presentation to the public. These are the reasons why the rights to perform and to record are recognized as distinct in the Act, and why in practice a composer may wish to authorize performances but not recordings of his work. [Emphasis added by Abella J.; pp. 477-79.] 29

Thus, linking the word “communication” in s. 3(1)(f) with the concept of “performance”, the Court held that delivery over the Internet of musical works embedded within video games engaged only the “reproduction” right and not the communication right. As a result, the Court held that SOCAN, the collective society representing owners of reproduction rights, could not apply for a tariff based on communication rights since reproduction rights for the works in question were already paid for.

In contrast to the concept of “performance”, the concept of “public” has been somewhat more difficult to define. The concept has been said to include a subjective element of what the author would have considered to be “public”, since whether each work is being performed “in public” depends on the nature of the work, the character of the audience, and the intent of the author.30 Thus, a play performed for a “private” drama club consisting of fee-paying members was held to be a performance in public because the audience was not merely a gathering of relations or friends, but more akin to members of the play-going public.31

Whether a performance is “public” has proven to be more difficult to define in the information age, as the proliferation of telecommunications has blurred the line between a private and public audience. Early decisions favoured the position that viewings of telecasts in private homes were not “in public”.32 However, more modern decisions have tended to focus on the aggregate audience in the context of broadcasts and other telecommunications.

In a companion case to ESA released on the same day, Rogers Communications Inc v Society of Composers, Authors and Music Publishers of Canada,33 the Supreme Court also clarified the meaning of the words “to the public” within s. 3(1)(f).34 Summarizing the jurisprudence,35 the Court reaffirmed that to be “to be ‘to the public’ a communication must be targeted at an aggregation of individuals, which is more than a single person but not necessarily the whole public at large”.36

In CCH, for example, the Court held that “a series of repeated fax transmissions of the same work to numerous different recipients might constitute communication to the public in infringement of copyright”.

In Canadian Wireless Telecommunications Assn v Society of Composers, Authors and Music Publishers of Canada,37 the Federal Court of Appeal held that offering to sell mobile phone ringtones to members of the public was a communication to the public, regardless of whether the transmissions were done “one by one”.

The Supreme Court in Rogers followed and built on this line of cases, holding that it did not matter whether the individual transmissions were one-to-one or one-to-many, nor whether the technology was “push” (i.e. the provider sending to the customer without request) or “pull” (i.e. the customer requesting the download “on-demand”). The transmissions must be looked at in context of the whole system of aggregate transmissions.38

Authorization

The last line of s. 3(1) in the Copyright Act also gives the owner the sole right to “authorize” any acts listed in the section. Authorization has been defined by the Supreme Court to mean “sanction, approve and countenance”.39 There is a presumption that a person who authorizes an activity does so in accordance with the law (that is, courts will presume that a person did not authorize infringing activities).Therefore, to prove that there was infringement by “authorization”, a plaintiff must show that an infringement under s. 3(1) (other than authorization) occurred, and that there was a certain relationship or degree of control between the alleged authorizer and the person who committed the (direct) copyright infringement.40

The mere provision of equipment (such as photocopiers) without further proof of control does not in itself constitute authorization of infringement.41 Similarly, provision of facilities by a “neutral” intermediary (such as an internet service provider acting as a “conduit”) is not authorization, although actual knowledge of specific infringing activities may be a factor in determining liability.42

Secondary infringement

In addition to the acts that constitute infringement described above, the Copyright Act also defines “secondary infringement” in s. 27(2):

Secondary infringement

(2) It is an infringement of copyright for any person to

(a) sell or rent out,

(b) distribute to such an extent as to affect prejudicially the owner of the copyright,

(c) by way of trade distribute, expose or offer for sale or rental, or exhibit in public,

(d) possess for the purpose of doing anything referred to in paragraphs (a) to (c), or

(e) import into Canada for the purpose of doing anything referred to in paragraphs (a) to (c),

a copy of a work, sound recording or fixation of a performer’s performance or of a communication signal that the person knows or should have known infringes copyright or would infringe copyright if it had been made in Canada by the person who made it.

However, absent “primary” infringement, there can be no secondary infringement.43 The three requirements to prove a claim of secondary infringement are therefore:

  1. the copy must be the product of primary infringement;
  2. the secondary infringer must have known or should have known that he or she is dealing with a product of infringement; and
  3. the secondary dealing must be established.44

With respect to s. 27(2)(e), secondary infringement by importation into Canada requires only “hypothetical infringement” rather than proof of actual infringement (that is, the imported product would have been infringing if produced in Canada).45 This is an important consideration for so-called “grey market goods”.


1 Entertainment Software Association v Society of Composers, Authors and Music Publishers of Canada, 2012 SCC 34 at paras 41-42 [ESA].
2 Boutin v Bilodeau (1992), 46 CPR (3d) 395 (QCCA), rev'd on other grounds (1994), 54 CPR (3d) 160 (SCC); Robinson v Cinar Films inc, 2009 QCCS 3793 at paras 246-249, aff'd on this ground 2011 QCCA 1361, aff'd 2013 SCC 73.
3 Boutin v Bilodeau (1992), 46 CPR (3d) 395 (QCCA) (“…there has to be a sufficient objective similarity between the original and the copy for the latter to be considered as a reproduction or an adaptation of the first, without necessarily being perfectily identical”), rev'd on other grounds (1994), 54 CPR (3d) 160 (SCC); Francis Day & Hunter, Ltd v Bron, [1963] 1 Ch 587 (CA) (“I can find no warrant for the suggestion that reproduction, within the meaning of the section, occurs only when identity is achieved”, per Willmer LJ.).
4 King Features Syndicate, Inc v O and M Kleeman, Ltd, [1941] AC 417 (HL), per Maugham VC; see also King Features Syndicate Inc v Lechter (1950), 12 CPR 60, [1950] Ex CR 297.
5 [1895] AC 20.
6 (1822), 5 B & Ald. 743.
7 Cadieux v Beauchemin (1901), 31 SCR 370, aff'g (1900), 2 Comm LR 337 (Que QB).
8 Copyright Act, s 3(1).
9 Robinson v Cinar Films inc, 2013 SCC 73.
10 Robinson v Cinar Films inc, ibid at paras 35-47, declining to apply the “abstraction-filtration-comparison” test favoured by the appellant and imported from US jurisprudence. See e.g. Nichols v Universal Pictures Corporation, 45 F(2d) 119 (2d Cir 1930); Computer Associates International, Inc v Altai, Inc, 982 F.2d 693 (2d Cir 1992).
11 Boutin v Bilodeau (1992), 46 CPR (3d) 395 (QCCA), rev'd on other grounds (1994), 54 CPR (3d) 160 (SCC); Robinson v Cinar Films inc, 2009 QCCS 3793 at paras 246-249, aff'd on this ground 2011 QCCA 1361, aff'd 2013 SCC 73.
12 Cadieux v Beauchemin (1901), 31 SCR 370, aff'g (1900), 2 Comm LR 337 (Que QB); Koslowski v Courrier, 2009 FC 883; Francis Day & Hunter, Ltd v Bron, [1963] 1 Ch 587 (CA).
13 Francis Day & Hunter, Ltd v Bron, [1963] 1 Ch 587 (CA).
14 Cain v Universal Pictures Co, 47 F Supp 1013 (SD Cal 1942); Ets-Hokin v Skyy Spirits Inc, 323 F(3d) 763 (9th Cir 2003). See also Leslie A Kurtz, “Copyright: The Scenes A Faire Doctrine” (1989) 41 Florida L Rev 79.
15 See e.g. John Richardson Computers Ltd v Flanders, [1993] FSR 497 (applying the concept to software).
16 Delrina Corp v Triolet Systems Inc (1993), 47 CPR (3d) 1 at para 121 (Ont Gen Div), aff'd (2002), 17 CPR (4th) 289 (Ont CA), leave to appeal refused [2002] SCCA No 189.
17 2002 SCC 34 at paras 42-47 [Théberge].
18 Théberge at para 42.
19 Théberge at paras 28, 72.
20 Théberge at para 74.
21 Théberge at para 47.
22 See e.g. Entertainment Software Association v Society of Composers, Authors and Music Publishers of Canada, 2012 SCC 34.
23 Théberge at para 48.
24 Copyright Act, s 2.
25 Entertainment Software Association v Society of Composers, Authors and Music Publishers of Canada, 2012 SCC 34 at para 16, per Abella J; see also ibid at para 98, per Rothstein J, dissenting, citing EF Judge and DJ Gervais, Intellectual Property: The Law in Canada (2d ed, 2011) at 166-67.
26 ESA at paras 41-42.
27 See also Rothstein J's dissenting judgment in ESA at paras 90-92, where he implies that the s. 3(1) rights are self-standing and not merely illustrative.
28 [1990] 2 SCR 467.
29 ESA at para 35.
30 Jennings v Stephens, [1936] 1 All ER 409 at 418-21 (CA).
31 Jennings v Stephens, ibid.
32 See e.g. Canadian Admiral Corporation, Ltd v Rediffusion, Inc, [1954] Ex CR 382, 20 CPR 75 at 97-102.
33 2012 SCC 35 [Rogers].
34 Although the definition of “to the public” was made with reference to s. 3(1)(f), it would presumably also apply to the words “perform … in public” in s. 3(1) under the rationale in ESA, supra, linking the two terms.
35 See e.g. CCH Canadian Ltd v Law Society of Upper Canada, 2004 SCC 13; Canadian Wireless Telecommunications Assn v Society of Composers, Authors and Music Publishers of Canada, 2008 FCA 6, leave to appeal refused, [2008] 2 SCR vi [CWTA].
36 Rogers at para 25, citing CCH Canadian Ltd v Law Society of Upper Canada, 2002 FCA 187 at para 100, per Linden JA [emphasis added by Rothstein J].
37 CWTA, supra.
38 Rogers, supra at paras 29-56 (Rothstein J also appeared to have applied the principle of Technological neutrality in copyright law in reaching this conclusion.).
39 CCH at para 38.
40 CCH at para 38.
41 CCH at paras 39-46.
42 Society of Composers, Authors and Music Publishers of Canada v Canadian Assn of Internet Providers, 2004 SCC 45 at para 127.
43 CCH at para 82.
44 CCH at para 81, aff'g 2002 FCA 187, per Rothstein JA.
45 Euro-Excellence Inc v Kraft Canada Inc, 2007 SCC 37 at para 20.
copyright/infringement.txt · Last modified: 2015/08/22 10:47 by KPS