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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- to perform the work or any substantial part thereof in public or, if the work is unpublished, to publish the work or any substantial part thereof.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)?
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.
