The interaction between national borders and the jurisdictional nature of intellectual property rights raises complex issues regarding the infringement of Canadian intellectual property rights through activities with an extraterritorial component. This three-part article series seeks to provide a brief overview of the scope of intellectual property rights held in Canada in relation to export-related activities and the potential for infringement of those rights through such activities. This is Part Three, which addresses copyright. Part One addressed patents and industrial designs and Part Two addressed trade-marks.
The Canadian Copyright Act (“CA”) sets out provisions governing the rights of copyright holders and expressly addresses exportation rights.
Exclusive Rights and Infringement by Exportation
The CA grants the owner of copyright various exclusive rights in relation to works, performer’s performances, sound recordings or communication signals in which copyright subsists. The exclusive rights cover a wide range of activity, depending on the type of copyright at issue, including for example, the right to produce, reproduce, perform, publish, communicate by telecommunication, sell or rent a literary, dramatic, musical or artistic work (s.3); the right to communicate or make available by telecommunication, perform, fix, reproduce, sell or rent a performer’s performance or a sound recording (ss. 15, 18); and the right to fix, reproduce, retransmit, or perform a communication signal (s.21). These rights cover the copyrighted work, etc. as a whole or any substantial part thereof.
Section 27(2.11) of the CA deems as secondary infringement the exportation, for the purposes of selling or renting, offering for sale or rental, distributing or exhibiting, of a copy of a work that the person knows or should have known was made without the consent of the copyright owner in the country where the copy was made. The secondary infringement provision also applies to the exportation of copies of sound recordings, fixation of performer’s performances and communication signals. However, Section 27(2.12) provides an exception to secondary infringement by exportation provision where the copy at issue was made under a limitation or exception under the CA.
With respect to a related secondary infringement provision under Section 27(2), which covers the sale, rental, distribution or exhibition of an infringing copy, or the possession or importation of the copy for such purposes, the Supreme Court of Canada held that the copy of the work at issue must be the product of primary infringement in order for secondary infringement to take place (see at CCH Canadian Ltd. v. Law Society of Upper Canada,  S.C.J. No. 12,  1 S.C.R. 339 at para. 82). Although the Canadian courts have yet to address secondary infringement under Section 27(2.11), this section expressly requires the copies to have been made “without the consent of the owner of the copyright” and suggests that primary infringement must occur on some level before liability for secondary infringement can take place – which is also implied by exception to secondary infringement under Section 27(2.12).
Section 42 of the CA deems it to be an offence to knowingly export for sale or rental an infringing copy of a work or other subject matter in which copyright subsists. Punishment for such an offence can include a fine up to $1,000,000 and/or imprisonment for a term of up to 5 years.
Prohibition Against Exportation of Counterfeit Products
The CA contains provisions governing Canada’s border enforcement regime intended to address imports and exports of counterfeit products.
Section 44.01 of the CA provides a general prohibition against the exportation of copies of a work or other subject matter in which copyright subsists where (i) the copies were made without the consent of the owner of the copyright in the country where they were made; and (ii) the copies infringe copyright or would infringe copyright had they been made in Canada by the person who made them. This general prohibition does not apply where: (i) the exportation is for personal use; or (ii) the goods are being imported/exported through Canada merely as a “transshipment” between places outside of Canada.
Section 44.02 of the CA allows for a copyright owner to file a Request for Assistance (“RFA”) requesting the assistance of the Canadian Border Services Agenc (“CBSA”) in pursuing remedies under the CA with respect to exported goods in contravention of section 44.01. The RFA can include, amongst other thigns, details about the rights holder and list of copyrighted works, the name and description of authentic goods, a list of trusted importers/exporters, and a list of known illegitimate importers/exporters.
Once the RFA is approved, the CA empowers CBSA officers with ex officio powers to detain suspicious goods attempting to be exported and to notify the copyright owner. The copyright owner will then have the option of pursuing remedies against the exporter. A more detailed review of the Canadian border enforcement regime for counterfeit products is available here.