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Recent developments

Legal developments

Have there been any notable recent legal developments regarding copyright in your jurisdiction, including any regulatory changes and recent case law?

The Copyright Act was overhauled in 2012. Among other things, the updated legislation:

  • made photographers the first owner of copyright in their photographs;
  • prohibited the removal of or tampering with digital locks and copyright information on works;
  • added a non-commercial user-generated content exception to infringement; and
  • expanded fair dealing provisions to include education, satire and parody.

The legislation is statutorily required to be reviewed every five years and the latest reforms are expected in 2018/2019.

There is a recent trend towards the recognition of copyright in architectural works by Canadian courts and the grant of significant monetary awards for infringement thereof. Most recently, the Federal Court in Lainco Inc v Commission Scolaire Des Bois-Francs (2017 FC 825) confirmed that an indoor soccer complex was subject to copyright protection as an architectural work, marking the first time in recent history that such protection has been recognised for a building structure. Even where building structures are functional, originality in an architectural sense is enough to attract copyright.

In Corocord Raumnetz GmbH v Dynamo Industries Inc (2016 FC 1369) the court considered copyright in the context of useful consumer products. While copyright can exist in useful articles, if the work has not been used as a trademark and more than 50 copies have been reproduced worldwide, a substantial or total reproduction of the product thereafter does not constitute an infringement of copyright. This case was the first to interpret whether ‘50 copies’ referred to copies made in Canada or worldwide.

Technological developments

Have there been any notable technological advances or developments to assist copyright owners in protecting and enforcing their rights?

In 2012 the Copyright Act was amended to include restrictions against and penalties for the circumvention of technological protection measures (TPMs). TPMs include “any effective technology, device or component” capable of restricting access to or copying of a work and can include the physical shape and configuration of a product. The court dealt expressly with these provisions for the first time in 2017, in Nintendo of America Inc v King (2017 FC 246), where more than C$12 million in damages was awarded against a defendant that sold and installed devices allowing customers to bypass TPMs used by the plaintiff to prevent pirated games from being played on their Nintendo consoles.

Legal framework

Domestic law

What is the primary legislation governing copyright in your jurisdiction?

The primary legislation governing copyright in Canada is the Copyright Act. It is a federal statute which came into force in 1924 and is closely modelled on the UK Copyright Act. The last substantial amendments to the Copyright Act were made in 2012. The act is statutorily required to be reviewed every five years.

International law

Is your jurisdiction a party to any international agreements relating to copyright?

Canada is a party to various copyright-related treaties, including:

  • the Berne Convention for the Protection of Literary and Artistic Works, since 1928;
  • the Universal Copyright Convention (Geneva 1952), since 1962;
  • the Agreement on Trade-Related Aspects of Intellectual Property Rights, since 1995;
  • the Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organisations, since 1928;
  • the World Intellectual Property Organisation (WIPO) Performances and Phonograms Treaty, since 2014; and
  • the WIPO Copyright Treaty, since 2014.

Online and digital regulation

Are there any legal provisions specifically covering digital and online content?

Canada’s copyright notice-and-notice system, which came into force in 2015, allows copyright owners to forward allegations of online infringement through internet service providers (ISPs). No obligations are imposed on the receiver of such a notice. ISPs must retain records of the identity of subscribers to whom notices have been forwarded and release the information to the copyright owner if so ordered by a court.

The system has been criticised as it has been subject to misuse by anti-piracy firms, which have widely encouraged subscribers to pay a settlement fee for alleged infringements of copyright. The notice-and-notice provisions are expected to be reviewed and updated in the near future.

Government authorities

Are any government authorities charged with regulating and enforcing copyright law?

Innovation, Science and Economic Development Canada is responsible for the administration of the Copyright Act through the Canadian Intellectual Property Office (CIPO). Copyright registration is carried out via CIPO.

The Copyright Board of Canada is an independent tribunal that establishes royalties for the administration of copyrighted works entrusted to a collective administration society. The board also supervises agreements between users and licensing bodies and issues licences when the copyright owner cannot be located.

The Canadian Border Services Agency deals with the importation of infringing products. However, customs officers do not actively monitor for or detain infringing products. The agency usually intervenes at the request of a rights holder, but a decision from a Canadian court is ultimately required to deal with the disposition of the infringing products.

The interpretation and the enforcement of copyright law in both civil and criminal matters are left to the Canadian court system.

Protection and ownership

Copyrightable works

What works are eligible for copyright protection in your jurisdiction?

Copyright law protects every original literary, dramatic, musical and artistic work. Copyright does not protect ideas, concepts or themes; it protects the expression thereof.

While the Copyright Act does not provide an exhaustive list of works eligible for copyright protection, there are many examples of copyright protectable works specifically identified in the act. These include:

  • compilations;
  • books;
  • pamphlets and other writings;
  • lectures;
  • dramatic or dramatic-musical works;
  • musical works;
  • translations;
  • illustrations;
  • sketches; and
  • plastic works relative to:
    • geography;
    • topography;
    • architecture; or
    • science.

Artistic works include:

  • paintings;
  • drawings;
  • maps;
  • charts;
  • plans;
  • photographs;
  • engravings (including etchings, lithographs, woodcuts and prints);
  • sculptures;
  • works of artistic craftsmanship;
  • architectural works; and
  • compilations of artistic works.

Literary works include:

  • tables;
  • computer programs; and
  • compilations of literary works.

Dramatic works include:

  • any piece for recitation, choreographic work or mime, the scenic arrangement or acting form of which is fixed in writing or otherwise;
  • any cinematographic work; and
  • any compilation of dramatic works.

Musical works include any work of music or musical composition – with or without words – and any compilation thereof.

The Copyright Act also protects performers’ performances, sound recordings and communication signals that are broadcasted.

Are there any special provisions for the protection of non-artistic works (eg, software and databases)?

Yes. The Copyright Act has specific provisions dealing with the protection of literary works, dramatic works and musical works in addition to artistic works. The act defines ‘literary works’ as including tables, computer programs and compilations. The term ‘computer programs’ is specifically defined in the Copyright Act, which states that the incorporation of a computer program into an integrated circuit product may constitute an infringement.

The act provides specific instances where the reproduction of a computer program does not constitute a copyright infringement.

Are any works explicitly excluded from copyright protection?

While the Copyright Act does not explicitly exclude any work from protection, there is no entitlement to copyright outside of the copyright legislation. Copyright does not protect ideas, concepts or themes; it protects the expression thereof.

Related IP rights

Can copyrightable works be protected by other IP rights (eg, trademarks and designs)?

Copyrightable works may be protected by other IP rights if they meet the applicable requirements for protection.

Significantly, the Copyright Act contains provisions that specifically exclude from infringement the reproduction of a design applied to a useful article for which more than 50 articles have been produced. There are exceptions to this exclusion, including when the artistic work is used as or for a trademark.

This means that cumulative or alternative protection of copyrightable works by other IP rights is not only possible, but desirable as part of an effective IP protection strategy.

Establishment of rights, registration and deposit

Establishment of rights

How is copyright established in your jurisdiction? Is registration, deposit or any other formality required?

Copyright exists from the moment that the work is created. It generally subsists in any work – published or unpublished – provided that at the date of the work’s creation, the author was a citizen, a subject of or a person ordinarily resident in a country that is:

  • a signatory of:
    • the Berne Convention;
    • the Universal Copyright Convention; or
    • the World Intellectual Property Organisation Copyright Treaty; or
  • a member of the World Trade Organisation.

There is a registration system in Canada. While registration provides benefits, it is not mandatory. Copyright registration is a title system; there is no deposit of the work.

Registration and deposit – procedure and effects

What is the procedure for copyright registration and deposit (whether mandatory or voluntary)?

Copyright registration exists but is not mandatory in Canada. The procedure to obtain copyright registration is straightforward, quick and inexpensive. An application form must be completed with payment of the appropriate government fee. The form requires:

  • the title of the work;
  • the category of the work;
  • the publication date (if published);
  • the name and address of the owner;
  • the name and address of the author; and
  • a declaration that the applicant is the author or owner of the work.

The form may be filed electronically, by mail or by fax. The form is subject to very minimal examination, primarily for formalities. The registration certificate will be issued in hard copy within a few weeks of filing the application.

If voluntary, what are the benefits of registration/deposit?

There are many benefits to obtaining a copyright registration.

Registration facilitates the establishment of title in a copyright and decreases the burden of proof of the plaintiff, as it creates a presumption:

  • as to the validity of copyright;
  • that the person registered is the owner of the copyright; and
  • of the veracity of the information found on the registration certificate.

Registration prevents an infringer from raising an innocent infringement defence. It also entitles a plaintiff to recover statutory damages when it is difficult to establish actual damages.

Ownership

Eligibility

Who may own copyright in a work?

It is important to distinguish between authorship and ownership. The general rule is that the author of a work is the first owner of copyright. However, there are some exceptions – for example, works produced by government employees as part of their duties are subject to Crown copyright. Works created during the course of an employee’s employment duties under a contract of service belong to the employer.

Joint and collective ownership

What rules and restrictions govern the joint or collective ownership of a copyright work?

While the Copyright Act recognises a work of joint authorship, it does not address whether the rights belong to and can be exploited jointly by its authors or if each author may exercise the right separately from the other. For these reasons, having an agreement is recommended to avoid surprises.

In the case of a work of joint authorship, following the death of the last surviving author, copyright extends for the remainder of the calendar year plus 50 years following the end of that calendar year.

Employee and commissioned work

What rules and restrictions govern the ownership of copyright in a work created in the course of employment (including works by employees and commissioned works by independent contractors)?

The Copyright Act provides that works created during the course of an employee’s employment duties under a contract of service belong to the employer. Where the work is an article or other contribution to a newspaper, magazine or similar periodical, the author has a right to restrain the publication of the work otherwise than as part of a newspaper, magazine or similar periodical.

Case law has shown that works created by an employee outside the scope of their regular duties may be owned by the employee unless an agreement provides otherwise.

Works created or commissioned by an independent contractor belong to the independent contractor unless an agreement provides otherwise.

The best course of action to avoid conflict is to have a contract that explicitly states who owns the work.

Exercise of rights

Owners’ rights

What rights are afforded to copyright owners (including rights to use and limit the use of the copyrighted work)?

Copyright owners are afforded the sole right to produce, reproduce, perform or publish a work or any substantial part thereof, including the right to:

  • produce, reproduce, perform or publish any translation of the work;
  • convert a dramatic work into a novel or other non-dramatic work;
  • convert a novel to a dramatic work;
  • make a sound recording of the work;
  • communicate the work to the public by telecommunication;
  • rent out a computer program that can be reproduced; and
  • rent out a sound recording of a musical work.

The copyright owner can also authorise such acts by others, generally accomplished through a contractual licensing arrangement.

Are there any limits or restrictions on the rights holder’s exercise of its rights, including any fair use allowances and parody exceptions?

Yes. The Copyright Act provides that fair dealing for the purpose of research, private study, education, parody or satire does not infringe copyright.

Other restrictions on the rights holder’s exercise of its rights are provided in the act when dealing with:

  • works relating to non-commercial user-generated content;
  • reproduction for private purposes;
  • fixing signals and recording programmes for later listening or viewing;
  • backup copies;
  • educational institutions;
  • libraries;
  • archives; and
  • museums.

Ancillary rights

What ancillary or neighbouring rights arise in relation to copyright (if any)? Are there any rules or restrictions on their exercise?

If a sound recording (other than a soundtrack of a cinematographic work) has been published, the performer and maker are entitled to be paid equitable remuneration for its performance or communication to the public by telecommunication. The owner of the neighbouring rights has the exclusive right to:

  • cause the sound recording to be heard in public or broadcasted; and
  • make secondary copies of the recording.

Neighbouring rights are collectively administrated in Canada through collective societies, and tariffs as well as agreements between users and collectives are overseen by the Copyright Board of Canada, an independent tribunal established for this purpose.

Duration

When does copyright protection begin and what is the duration of protection?

The general duration of copyright protection is that of the life of the author plus the remainder of the calendar year in which the author dies and 50 years following the end of that calendar year.

Exceptions may apply when dealing with:

  • an unknown author;
  • joint authorship;
  • cinematographic work;
  • Crown copyright; and
  • a performer’s performance.

Transfer, assignment and licensing

Transfer and assignment

What rules, restrictions and procedures govern the transfer and assignment of copyright? Are any formalities required to secure the legal effect of the transfer or assignment?

An assignment must be in writing and signed by the copyright owner or the owner’s duly authorised agent. While the recordal of a copyright assignment is not mandatory, recording establishes priority of rights as between conflicting assignments of ownership. This means that the first recorded copyright assignment will be taken as valid against an earlier assignment that has not been recorded.

Moral rights – which are the right to the integrity and paternity in the work – cannot be assigned. They may be only waived, in whole or in part. There is no presumption of a waiver of moral rights when the work is assigned.

Where the author of a work is the first owner of the copyright, the assignment of the work other than by will is subject to a reversionary interest 25 years from the death of the author. This means that the work devolves on the author’s legal representatives as part of the author’s estate. This rule does not apply to the assignment of the copyright in a collective work.

Licensing

What rules, restrictions and procedures govern copyright licensing?

The Copyright Act permits the grant of licences, provided that the license is in writing. The licence must be signed by the copyright owner or the owner’s duly authorised agent. While the recordal of a licence agreement is not mandatory, recording establishes priority of rights as between conflicting assignments and licences.

An exclusive licensee can do any act that is subject to copyright to the exclusion of all others, including the copyright owner.

The grant of a licence is subject to a reversionary interest. Where the author of a work is the first owner of the copyright, the grant of a license other than by will reverts to the author’s legal representatives as part of the author’s estate 25 years from the death of the author. This rule does not apply to a licence to publish a work as part of a collective work.

The registration of a licence creates a presumption as to the existence of the licence and that the registered licensee is the holder of that interest. The licensee may obtain a copyright registration on behalf of its owner.

Are there any special provisions governing sub-licensing?

There are no provisions regarding sub-licensing in the Copyright Act. Sub-licensing is permissible in the absence of an agreement to the contrary.

What collective licensing bodies operate in your jurisdiction and how are their activities regulated?

Many collective societies operate in Canada, some of which are affiliated with foreign societies. The Copyright Board of Canada regulates the collective societies. The board oversees the tariff-setting process for all copyrights and approves agreements entered into by users and collectives. Board decisions may be reviewed by the Federal Court of Appeal.

For audiovisual and multimedia, the collective societies are:

  • Audio Ciné Films;
  • the Canadian Screenwriters Collection Society;
  • Christian Video Licensing International;
  • Criterion Pictures;
  • the Directors Rights Collective of Canada;
  • the Producers Audiovisual Collective of Canada; and
  • Société civile des auteurs multimédias.

For educational rights, the collective society is the Educational Rights Collective of Canada.

For literary (eg, literary works, dramatic works and texts), the collective societies are:

  • Access Copyright, the Canadian Copyright Licensing Agency;
  • the Playwrights Guild of Canada;
  • Société des auteurs et compositeurs dramatiques;
  • Société québécoise de gestion collective des droits de reproduction; and
  • Société québécoise des auteurs dramatiques.

For media monitoring, the collective society is the Canadian Broadcasters Rights Agency.

For music, the collective societies are:

  • ACTRA Performers’ Rights Society;
  • ArtistI;
  • the Canadian Musical Reproduction Rights Agency;
  • Christian Copyright Licensing Inc;
  • CMRRA-SODRAC Inc;
  • Connect Music Licensing;
  • the Musicians’ Rights Organisation Canada;
  • Re: Sound Music Licensing Company;
  • Société de gestion collective des droits des producteurs de phonogrammes et vidéogrammes du Québec;
  • Société de gestion des droits des artistes-musiciens Inc;
  • the Society for Reproduction Rights of Authors, Composers and Publishers in Canada; and
  • the Society of Composers, Authors and Music Publishers of Canada.

For private copying, the collective society is the Canadian Private Copying Collective.

For retransmission, the collective societies are:

  • Border Broadcasters Inc;
  • the Canadian Broadcasters Rights Agency;
  • the Canadian Retransmission Collective;
  • the Canadian Retransmission Right Association;
  • the Copyright Collective of Canada;
  • Direct Response Television Collective;
  • FWS Joint Sports Claimants;
  • the Major League Baseball Collective of Canada; and
  • the Society of Composers, Authors and Music Publishers of Canada.

For visual arts (eg, photographs and paintings), the collective societies are:

  • Copyright Visual Arts; and
  • the Society for Reproduction Rights of Authors, Composers and Publishers in Canada.

Enforcement

Jurisdiction

Which courts are empowered to hear copyright disputes?

The Federal Court has concurrent jurisdiction with the provincial courts to determine all proceedings for copyright disputes for infringement. Copyright disputes regarding the collective societies, the tariff-setting process for copyright and disputes between users and collectives are overseen by the Copyright Board of Canada.

Infringement

What acts constitute copyright infringement in your jurisdiction (including with regard to online and digital content)?

The Copyright Act provides that it is an infringement for any person to do anything that, according to the act, only the copyright owner has the right to do. In relation to a work, this means the sole right:

  • to produce or reproduce the work or any substantial part thereof in any material form whatsoever; and
  • 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.

Many examples of what is covered by the owner’s ‘sole right to do’ are identified in the Copyright Act. There are also specific provisions dealing with the meaning of an owner’s ‘sole right to do’ in relation to a performer’s performance, sound recording and communication signal.

Copyright infringement for any act or omission that is contrary to the author’s moral rights and secondary infringement are recognised by the legislation.

The Copyright Act also contains provisions relating to the digital world – for example, dealing with digital locks and an exemption for non-commercial user-generated content.

Is contributory infringement recognised in your jurisdiction (including liability for internet services providers and other online/digital actors)?

Contributory infringement is recognised in Canada. It is an infringement of copyright for any person to sell or rent out, distribute, import, by way of trade distribute, expose or offer for sale a copy of a work that the person knows or should have known to infringe copyright. There are provisions dealing specifically with the role that internet service providers must play in relation to copyright infringement by being required to send notices of alleged copyright infringement to their subscribers when requested to do so.

Actions

What actions can be taken against copyright infringement (eg, civil, criminal or administrative), and what are the key features and requirements of each?

The copyright owner may initiate a civil action for copyright infringement before the Federal Court or the Canadian provincial courts. Civil matters are for cases involving two private parties.

Criminal sanctions also exist, but would arise only in cases where the government prosecutes a private party for violation of the Copyright Act. Sanctions can range from monetary fines to imprisonment.

Who can file a copyright infringement action?

A copyright infringement action may be filed by the owner of the copyright or its successor in title. An exclusive licensee may also be entitled to file a copyright infringement action, but in many cases, it will be required to join the copyright owner as a party to the proceeding unless the court authorises otherwise.

What is the statute of limitations for filing infringement actions?

The limitation period is three years after the plaintiff knew or could reasonably have been expected to know of the act of infringement.

What is the usual timeframe for infringement actions?

The Federal Court rules provide that a proceeding brought by way of action should be ready to proceed within one year of the proceeding being commenced, and a proceeding brought by way of an application should be ready to proceed within six months. In practice, if often takes two to three years to obtain judgment after a proceeding is commenced, and sometimes more in complex cases.

What are the typical costs incurred in infringement actions?

A party bringing proceedings for copyright infringement will be required to pay their attorney’s fees in addition to out-of-pocket expenses, which may include:

  • court fees;
  • witness fees;
  • expert fees;
  • travel expenses; and
  • security for costs.

Copyright infringement actions are generally commenced before the Federal Court of Canada as opposed to the provincial courts, because a decision rendered by the Federal Court will be enforceable across the country.

Costs will vary greatly depending on whether the proceedings are commenced by way of an application or an action. The action is the traditional method of bringing the claim, which requires the parties to present detailed pleadings, documentary and oral discovery and a trial with live witnesses. The case is heard and decided by a single judge. Costs can range from C$150,000 to C$250,000 at the lower range to multiples of that in complex or hard-fought cases.

An application is a summary procedure that involves more limited pleadings, affidavit evidence and cross-examination. The judge decides the case based on a paper record and no witnesses. Costs may range from C$20,000 to C$50,000 at the lower range to multiples of that in complex cases.

How are attorneys’ fees handled? Can they be claimed in infringement actions?

The court has discretion to award costs. Costs are generally awarded to the successful party, but these represent only a portion of the legal fees incurred – typically less than 30%, plus reasonable out-of-pocket expenses. While court costs are typically awarded based on a tariff, there is a recent trend, adopted by the Federal Court, of awarding (in appropriate cases) one-third of legal expenses incurred by the other party plus reasonable out-of-pocket expenses.  

Injunctions

What rules and procedures govern the issuance of injunctions to prevent imminent or further infringement?

Three types of injunction may be granted.

Interim injunction This is a temporary injunction to deal with urgent situations where the copyright owner may suffer significant harm if its rights are continuously infringed throughout the proceedings. It may be granted ex parte and is usually valid for 14 days. In practice, it often remains in place until the request for an interlocutory injunction can be heard. To be granted an interim injunction, the plaintiff must demonstrate:

  • a serious issue to be tried;
  • that the plaintiff will suffer irreparable harm if the injunction is not granted;
  • that the balance of convenience favours the plaintiff; and
  • urgency.

Interlocutory injunction Its purpose is to restrain the defendant from engaging in infringing activities until issuance of a final judgment. The test is similar to the test for an interim injunction, but without the need to show urgency.

Permanent injunction Its purpose is to restrain a defendant from further engaging in infringing activities. It will be granted only after a hearing on the merits of the case.

Remedies

What remedies are available to owners of infringed copyrights?

The successful plaintiff may receive damages and profits. In the alternative, the plaintiff may elect to receive statutory damages when it is unable to demonstrate its damages or provide the profits of the infringer.

Other remedies include:

  • an injunction;
  • delivery up;
  • exemplary or punitive damages;
  • seizure before judgment;
  • Anton Piller orders; and
  • recovery of possession of copies of the work and of all plates used for the production of infringing copies.

Customs enforcement

What customs enforcement measures are available to halt the import or export of pirated works?

A copyright owner may request the assistance of the Canadian Border Services Agency (CBSA) to halt the import or export of pirated works. The CBSA customs officers do not actively monitor for or detain infringing products. They usually intervene at the request of a rights holder, but a decision from a Canadian court is ultimately required to deal with the disposition of the pirated works.

Defence

What defences are available to infringers?

Depending on the facts of the case, many defences may be asserted – including:

  • that there was no copyright in the work created;
  • that no substantial part of the copyrighted work was taken;
  • that the work has expired or is in the public domain;
  • that the plaintiff is not the owner of the copyright;
  • that the work was not copied;
  • a defence of public interest; and
  • a defence of fair dealing with the work.

Appeal

What is the appeal procedure for infringement decisions?

The Federal Court has concurrent jurisdiction with the provincial courts to determine all proceedings for copyright disputes for infringement. An appeal of an infringement decision may be brought as of right to the Federal Court of Appeal if the matter was initially heard before the Federal Court (or if the matter was heard initially provincially, before the provincial appeal courts).

For proceedings before the Federal Court of Appeal, an appeal must be filed within 30 days of the decision. An appeal is commenced by filing a notice of appeal outlining the grounds for the appeal. The respondent files a notice of appearance to confirm its intention to appear. Appeal books are filed, the contents of which are agreed to by the parties. While there is generally no new evidence filed in an appeal, leave to file new evidence may be requested if the evidence:

  • is credible;
  • was unavailable at the time of the hearing; and
  • is practically dispositive of an issue on appeal.

Each party files a memorandum of fact and law. The appeal is then heard before three judges and will be disposed of based on the evidence and representations made by counsel for the parties. No witnesses appear before the Court of Appeal.

Online/digital considerations

Protection and enforcement measures

What special measures and safeguards should rights holders consider in protecting their online/digital content?

Rights holders should consider using technological protection measures to protect their digital content. These measures include “any effective technology, device or component” capable of restricting access to or copying of a work and can include the physical shape and configuration of a product. There are restrictions against the circumvention of such measures.

If an infringement of online content is discovered, the notice-and-notice provisions can be used to require that an internet service provider (ISP) notify the alleged infringer of the infringement. ISPs must retain records of subscribers to whom notices have been forwarded and may be compelled by a court to disclose the subscriber’s identity.