Intellectual property

Third-party links, content and licences

Can a website owner link to third-party websites without permission?

Yes.

Can a website owner use third-party content on its website without permission from the third-party content provider? Could the potential consequences be civil in nature as well as criminal or regulatory?

It depends on whether an infringement of copyright would occur. In general, it must first be determined whether the use would be a substantial taking under Canadian copyright law (this depends on various quantitative and qualitative factors). If there would be a substantial taking, then a fair-dealing exemption might apply (eg, if the purpose of the taking were research or private study). The fair-dealing analysis would look at quantitative factors as well as at the existence of alternatives, the nature of the work in question and the effect of the taking on the work, among other considerations.

The Copyright Act includes civil consequences (awards of damages) for infringement, while also creating criminal offences, the infringement of which can lead to fines (up to C$1 million) and imprisonment (up to two years). These criminal consequences typically arise in the context of unauthorised commercial exploitation of copyrighted works.  

Can a website owner exploit the software used for a website by licensing the software to third parties?

Not as a matter of course. It would need to have the legal right to create such a licence.

Are any liabilities incurred by links to third-party websites?

It depends. If third-party links lead to malware or otherwise causes users’ data, personal or otherwise, to be compromised, the presence of the links is treated as if it were a data breach and is accordingly governed by the Digital Privacy Act, the Personal Information Protection and Electronic Documents Act and the Criminal Code. Recent guidance released by the Canadian Radio-Television and Telecommunications Commission (CRTC) further signals that links to third-party websites may establish a basis for liability under Canada’s anti-spam legislation for failing to do enough to stop the non-compliant activities of third parties, even if the business did not intend to do so or was unaware that its activities enabled or facilitated contraventions of the law. Canada’s anti-spam legislation allows penalties of up to C$10 million per violation.

In Crookes v Newton (2011) the Supreme Court of Canada held that hyperlinks to defamatory content do not constitute defamation. In Warman v Fournier (2012) the Federal Court held that a hyperlink to a copyrighted work is not copyright infringement where the owners of the linked work essentially authorised the work’s telecommunication to the public by posting it online.

Video content

Is video content online regulated in the same way as TV content or is there a separate regime?

Video content online is not currently regulated in the same way as video content distributed through conventional over-the-air signals or closed distribution channels, such as cable and satellite distributors. 

Although internet-delivered video content is viewed as ‘broadcasting’ under the broad definition contained in the Broadcasting Act, the CRTC has issued a broad exemption order for digital media broadcasting undertakings, such that such services are neither subject to licensing nor the prescriptive regulations that apply to more conventional television content. Rather, digital media broadcasting undertakings are subject only to certain conditions, such as the requirement that such undertakings not give undue preferences (eg, by providing services that favour a particular internet service provider).

However, there is increasing pressure on the Canadian government to make fundamental changes to the regulatory framework for broadcasting in Canada. The government initiated a broad broadcasting and telecoms legislative review in June 2018, appointing an expert panel to examine issues such as:

  • the challenges of ensuring Canadian content creation and distribution in the digital age; and
  • issuing recommendations to the government with respect to potential changes to the regulatory framework.

A 2019 summary of written comments received by the panel indicate that most interested parties from the cultural sector advocated the extension of TV-like regulation to online content. Others proposed that online streaming services be treated in a manner analogous to more traditional broadcasting services, including with respect to Canadian content requirements. The panel’s report is expected in 2020.

IP rights enforcement and remedies

Do authorities have the power to carry out dawn raids and issue freezing injunctions in connection with IP infringement?

Police forces investigating criminal offences under the Copyright Act or the Criminal Code may apply to court for, and then execute, search warrants and may seize and cause the forfeiture of assets in accordance with the law.

What civil remedies are available to IP owners? Do they include search orders and freezing injunctions?

Civil remedies available to IP owners that successfully sue for infringement have access to a wide range of remedies, including:

  • injunctions;
  • damages;
  • an accounting of profits;
  • destruction of infringing goods;
  • cost awards; and
  • statutory damages for copyright infringement. 

In non-criminal matters, Canadian jurisdictions recognise the Anton Piller order – essentially a civil search warrant pursuant to which a plaintiff may search a target premises and remove evidence for the purpose of preserving it. A strict test must be met before a court will issue such an order, the execution of which must be supervised by an impartial lawyer appointed for that purpose.

Also available are Mareva injunctions, which are interlocutory court orders that freeze a defendant’s assets pending final resolution of a matter. Due to their potential effects, Mareva injunctions are also subject to a strict test that includes consideration of the seriousness of the risk that the defendant would remove or dissipate the assets.

Law stated date

Correct on

Give the date on which the information above is accurate.

1 October 2019.