Indirect infringement in Canadian copyright law

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"Authorization" and "Secondary Infringement" are two instances of "indirect infringement" in Canadian Copyright law. In cases of indirect infringement, individuals can be held liable for infringement even where they did not personally make copies of the copyrighted subject-matter. [1] This expands the scope of liability. The Canadian courts have dealt with these concepts in a number of cases, several of which will be elaborated upon below.

Contents

Authorization

A copyright owner has the right to authorize any of the acts found in S. 3(1) of the Copyright Act [see below]. Anyone who grants, or purports to grant, the right to reproduce or perform a work has authorized it. He is liable for copyright infringement. [2]

S. 27(1): Infringement Generally: 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. [3]

S. 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thereof in any material form whatever, to perform the work or any substantial part thereof in public or, if the work is unpublished, to publish the work or any substantial part thereof, and includes the sole right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, and

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

and to authorize any such acts [4]

Supreme Court Definition of "Authorization": CCH v LSUC [5]

The Supreme Court of Canada defines and discusses the definition of "authorization" in a 2004 case, CCH Canadian Ltd. v. Law Society of Upper Canada. In this case, the LSUC, which maintains and operates the Great Library at Osgoode Hall, engaged in two relevant behaviours.

The relevant issue for the court with regard to "authorization" is whether the Law Society authorized copyright infringement by maintaining self-service photocopy machines, allowing members to illegally photocopy copyrighted material. [5] The court found that it did not. [6] In the court’s analysis, it concluded that "authorization" in Canadian Copyright law has the following characteristics:

  1. The definition of "authorize" is to "sanction, approve, countenance." [7]
  2. "Countenance" in the context of authorizing copyright infringement, must be understood in the strongest dictionary meaning, namely "give approval to, sanction, permit, favour, encourage." [7]
  3. Authorization is a question of fact that depends on the circumstances of each particular case and can be inferred from acts that are less than direct and positive, including a sufficient degree of indifference. (For example, if there is a sufficient degree of control, passivity may be taken as authorization). [7]
  4. A person does not authorize infringement by authorizing the mere use of equipment [such as services and technologies that have a dual use (one which is infringing and one which is not, i.e. photocopier) that could be used to infringe copyright]. [7]
  5. Courts should presume that a person who authorizes an activity does so only so far as it is in accordance with the law. That is, there is a presumption that there is no knowledge of the infringing activity of potential primary infringers. Moreover, knowledge is not enough to attach liability. There must also be some legal capacity to control the activity of the primary infringer. Thus, the presumption can be rebutted if it is shown that a certain relationship or degree of control existed between the alleged authorizer and the persons who committed the copyright infringement. [7]

However, some aspects of authorization remain unclear. While "authorization" is considered a primary infringement (rather than secondary infringement, which will be discussed later), it is not clear whether liability for authorizing infringement requires that actual infringement has taken place. According to Vaver, an expert in the field, actual infringement is required. [1] According to University of Toronto Law Professor, Ariel Katz, the decision in CCH is policy driven: preventing photocopying in libraries would shift the balance of copyright too far in favour of owner’s rights, and unnecessarily interfere with the proper use of copyrighted works for the good of society as a whole.

Authorization and Peer-to-Peer Networks: BMG Canada v John Doe [8]

BMG was an attempt by the record companies to sue individuals for copyright infringement of their songs. The court said that, according to S. 80(1) [9] of the Copyright Act, making a personal copy of a sound recording for one's own private purposes is not infringement. [10] The record companies went further, suggesting that the individuals were involved in authorization of copyright infringement, since they were members of a peer (shared) network. The court disagreed, and suggested that there is no difference between making personal copies and making a shared folder. The court uses an analogy: there is no difference between a library full of copyrighted materials with a self-service photocopier, per CCH, and making a shared folder on the Internet. Therefore, the mere fact of placing a copy on a shared directory in a computer where that copy can be accessed via a peer-to-peer service does not amount to distribution, and hence authorization. [11] According to the case, "before it constitutes distribution, there must be a positive act by the owner of the shared directory, such as sending out the copies or advertising that they are available for copying." [12] Some experts, such as University of Toronto Law Professor Ariel Katz, suggest that the analogy to CCH is flawed, since library use is far more constrained and requires higher transaction costs than does Internet use.

Secondary Infringement

A person is a secondary infringer where he knows or should have known that a work either a) infringes a copyright or, b) would infringe a copyright had it been made in Canada (hypothetical infringement test) and, without the consent of the copyright owner he does anything set out in S. 27(2) of the Copyright Act [see below]. If a person turns a blind eye or honestly but mistakenly believes the goods are non-infringing, he will still be presumed to have the requisite knowledge. There can only be secondary infringement if there has been a primary infringement. [13]

S. 27(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. [14]

CCH on Secondary Infringement

According to CCH, S. 27(2) requires 3 things:

  1. copy must be the product of primary infringement
  2. secondary infringer must have known or should have known that he is dealing with a product of infringement
  3. secondary dealing must be established (must have been a sale)

The Supreme Court of Canada on Secondary Infringement: Euro-Excellence v Kraft Canada [15]

Euro-Excellence Inc. v. Kraft Canada Inc. involves the plaintiff, Kraft Canada, who sues the defendant, Euro-Excellence, for importing chocolate bars with a copyrighted logo into Canada for the purpose of sale and distribution (parallel importation). Parallel importation takes place where a product is imported from abroad to be sold locally. [16] The issue is whether parallel importation is secondary infringement pursuant to s. 27(2)(e).

The case is composed of four distinct judgments: [17]

  1. Justice Rothstein (Majority): (writing for himself, Justice Binnie and Deschamps JJ): Pursuant to s. 27(2)(e), parallel importation is secondary infringement where the parallel importer is an assignee. Where the parallel importation is merely an exclusive licensee (like Euro-Excellence in this case), however, the act of parallel importation is not secondary infringement. [18]
  2. Justice Fish: Concurs with Justice Rothstein with respect to the exclusive licensee issue, but does not necessarily agree than liability would have attached to the parallel importer had the copyright holder been an assignee. His concern is that the Act was not meant to be an instrument of trade control to such an extent. [19]
  3. Justice Abella (dissent): (writing for herself and Justice McLachlin): The Act does make parallel importation an infringement even where the copyright owner is an exclusive licensee. [19]
  4. Justice Bastarache: Finds that a copyrighted logo should not prevent the sale/trade of a non-copyrighted chocolate bar. Section 27(2)(e) covers only copyrighted materials and not merely ancillary attachments to the products. [19]

With four judgments, it is hard to grasp where the law lies. According to Vaver, the case stands for the following: that an exclusive licensee cannot sue the importer of non-copyrighted materials (i.e. the chocolate bars) based on the incidental copyrighted subject matter associated with it (i.e. the wrappers). [20] That is, if the copyright had been assigned to Kraft Canada (rather than exclusively licensed), parallel importation of a genuinely copyrighted product (rather than the incidental copyright of the chocolate wrapper) would be an infringement according to S. 27(2)(e). Therefore, parallel importation of copyright materials is an infringement according to S. 27(2)(e) where the copyright owner is an assignee.

Critical Analysis: Does S. 27(2)(e) Really Cover Parallel Importation?

According to intellectual property expert and professor, Ariel Katz, S. 27(2)(e) is not meant to prevent parallel importation and the resulting market arbitrage. Rather, its purpose is to prevent regulatory arbitrage (protecting the integrity of Canada’s regulatory sovereignty). Section 3 of the Copyright Act does not give a general distribution right; it only gives the right to make copies and publish a work if it is unpublished. This means that a copyright owner does not have the right to prevent parallel importation if he owns the copyright in both countries, since he does not have the general right to distribute (so cannot exclude others). Thus, he should not be able to prevent parallel importation merely by assigning his copyright. He cannot assign a right that did not exist in the first place. Moreover, Canadian law does not prevent parallel trade domestically (that is, between provinces), so there is no reason to prevent it internationally.

Related Research Articles

The first-sale doctrine is an American legal concept that limits the rights of an intellectual property owner to control resale of products embodying its intellectual property. The doctrine enables the distribution chain of copyrighted products, library lending, giving, video rentals and secondary markets for copyrighted works. In trademark law, this same doctrine enables reselling of trademarked products after the trademark holder puts the products on the market. In the case of patented products, the doctrine allows resale of patented products without any control from the patent holder. The first sale doctrine does not apply to patented processes, which are instead governed by the patent exhaustion doctrine.

<span class="mw-page-title-main">Copyright law of Canada</span>

The copyright law of Canada governs the legally enforceable rights to creative and artistic works under the laws of Canada. Canada passed its first colonial copyright statute in 1832 but was subject to imperial copyright law established by Britain until 1921. Current copyright law was established by the Copyright Act of Canada which was first passed in 1921 and substantially amended in 1988, 1997, and 2012. All powers to legislate copyright law are in the jurisdiction of the Parliament of Canada by virtue of section 91(23) of the Constitution Act, 1867.

The Copyright Act of Canada is the federal statute governing copyright law in Canada. It is jointly administered by the Department of Industry Canada and the Department of Canadian Heritage. The Copyright Act was first passed in 1921 and substantially amended in 1988 and 1997. Several attempts were made between 2005 and 2011 to amend the Act, but each of the bills failed to pass due to political opposition. In 2011, with a majority in the House of Commons, the Conservative Party introduced Bill C-11, titled the Copyright Modernization Act. Bill C-11 was passed and received Royal Assent on June 29, 2012.

<i>CCH Canadian Ltd v Law Society of Upper Canada</i> Supreme Court of Canada case

CCH Canadian Ltd v Law Society of Upper Canada, [2004] 1 SCR 339, 2004 SCC 13 is a landmark Supreme Court of Canada case that established the threshold of originality and the bounds of fair dealing in Canadian copyright law. A group of publishers sued the Law Society of Upper Canada for copyright infringement for providing photocopy services to researchers. The Court unanimously held that the Law Society's practice fell within the bounds of fair dealing.

<i>Snow v Eaton Centre Ltd</i> 1982 Canadian copyright case

Snow v. Eaton Centre Ltd. is a leading Canadian decision on moral rights. The Ontario High Court of Justice affirmed the artist's right to integrity of their work. The operator of the Toronto Eaton Centre was found liable for violating Michael Snow's moral rights by putting Christmas bows on his work Flight Stop.

The copyright law of Australia defines the legally enforceable rights of creators of creative and artistic works under Australian law. The scope of copyright in Australia is defined in the Copyright Act 1968, which applies the national law throughout Australia. Designs may be covered by the Copyright Act as well as by the Design Act. Since 2007, performers have moral rights in recordings of their work.

Fair dealing is a limitation and exception to the exclusive rights granted by copyright law to the author of a creative work. Fair dealing is found in many of the common law jurisdictions of the Commonwealth of Nations.

In Canada, the Copyright Act provides a monopoly right to owners of copyrighted works. This implies no person can use the work without authorization or consent from the copyright owner. However, certain exceptions in the Act govern circumstances where a work will not be held to have been infringed.

Fixation in Canadian copyright law is a threshold consideration that must be used in copyright infringement cases by courts to determine if copyright actually exists.

Authorship and ownership in copyright law in Canada is an important and complex topic which lies at the nexus between Canada's Copyright Act, an important body of case law, and a number of compelling policy motives. Analysis of authorship and ownership of copyrightable works in Canada can proceed by examination of the rules determining the initial allocation of copyrights, rules governing subsequent changes in ownership, and finally rules governing complex works such as compilations.

Fair dealing is a statutory exception to copyright infringement, and is also referred to as a user's right. According to the Supreme Court of Canada, it is more than a simple defence; it is an integral part of the Copyright Act of Canada, providing balance between the rights of owners and users. To qualify under the fair dealing exception, the dealing must be for a purpose enumerated in sections 29, 29.1 or 29.2 of the Copyright Act of Canada, and the dealing must be considered fair as per the criteria established by the Supreme Court of Canada.

Moral rights in Canadian copyright law are protected under the Copyright Act of Canada and include an author's right to attribution, integrity and association of a work. Moral rights are to be distinguished from economic rights; moral rights essentially being derived from the reflection of the author's personality in his or her work, whereas economic rights grant an author the ability to benefit economically from their work. An author of a work retains moral rights for the length of the copyright, even if the copyright has been assigned or licensed to another party. Moral rights cannot be assigned or licensed, but can be waived by contract.

<span class="mw-page-title-main">Defences and remedies in Canadian patent law</span>

A patent holder in Canada has the exclusive right, privilege and liberty to making, constructing, using and selling the invention for the term of the patent, from the time the patent is granted. Any person who does any of these acts in relation to an invention without permission of the patent owner is liable for patent infringement.

<i>Euro-Excellence Inc v Kraft Canada Inc</i> Supreme Court of Canada case

Euro-Excellence Inc v Kraft Canada Inc, 2007 SCC 37, [2007] 3 S.C.R. 20, is a Supreme Court of Canada judgment on Canadian copyright law, specifically on the issue of indirect infringement and its application to parallel importation. Kraft Canada sued Euro-Excellence Inc. for copyright infringement due to their importation of Côte d’Or and Toblerone chocolate bars from Europe into Canada. A majority of the court found that the copyright claim could not succeed, although they split on whether the claim failed due to the rights of an exclusive licensee or due to the scope of copyright law.

<i>Hubbard v Vosper</i>

Hubbard v Vosper, [1972] 2 Q.B. 84, is a leading English copyright law case on the defence of fair dealing. The Church of Scientology sued a former member, Cyril Vosper, for copyright infringement due to the publication of a book, The Mind Benders, criticizing Scientology. The Church of Scientology alleged that the books contained material copied from books and documents written by L. Ron Hubbard, as well as containing confidential information pertaining to Scientology courses. Vosper successfully defended the claim under the fair dealing doctrine, with the Court of Appeal deciding unanimously in his favour. The judgment given by Lord Denning clarified the scope and content of the fair dealing defence.

<i>Alberta (Education) v Canadian Copyright Licensing Agency (Access Copyright)</i> Supreme Court of Canada case

Alberta (Education) v Canadian Copyright Licensing Agency , 2012 SCC 37, is a Supreme Court of Canada case that considered whether the photocopying of textbook excerpts by teachers, on their own initiative, to distribute to students as part of course materials is fair dealing pursuant to the provisions of the Copyright Act. The Supreme Court, in a 5/4 split, concluded that the Copyright Board made several errors in its analysis of the "fairness factors". Thus, it allowed the appeal and remitted the matter back to the Copyright Board for reconsideration.

Penguin Books Ltd. v. India Book Distributors and Others, was a decision of the Delhi High Court issued in 1984. Penguin Books Ltd. of England brought a suit for perpetual injunction against the respondents, India Book Distributors of New Delhi, to restrain them from infringing Penguin's territorial license in 23 books, the subject matter of the suit.

Contributory copyright infringement is a way of imposing secondary liability for infringement of a copyright. It is a means by which a person may be held liable for copyright infringement even though he or she did not directly engage in the infringing activity. In the United States, the Copyright Act does not itself impose liability for contributory infringement expressly. It is one of the two forms of secondary liability apart from vicarious liability. Contributory infringement is understood to be a form of infringement in which a person is not directly violating a copyright but induces or authorises another person to directly infringe the copyright.

<span class="mw-page-title-main">Copyright Act (Ghana)</span>

The Copyright Act is the legal framework that protects the use of an individual's work once the idea has been physically expressed. It is a form of intellectual property that protects original works of authorship of literary, dramatic, musical and artistic works such as poetry, novels, movies, songs, computer software and architecture. Copyright does not protect facts, ideas, systems or methods of operation, although it may protect the way these things are expressed. Ghana's current copyright law is Act 690 issued by the Parliament of the Republic of Ghana. It was enacted on 17 May 2005 and replaced Parliament's Act No. 110, the country's previous Copyright law from 1985. The Copyright law affords protection to a variety of works, grants Copyright holders rights to their work and defines the duration of that Copyright protection.

References

  1. 1 2 David Vaver, Intellectual Property Law: Copyright Patents Trade-Marks, 2d ed (Toronto: Irwin Law Inc., 2011) at 176.
  2. ↑ David Vaver, Intellectual Property Law: Copyright Patents Trade-Marks, 2d ed (Toronto: Irwin Law Inc., 2011) at 177.
  3. ↑ Copyright Act, RS 1985, c C-42, s 27(1).
  4. ↑ Copyright Act, RS 1985, c C-42, s 3(1).
  5. 1 2 CCCH Canadian Limited v. The Law Society of Upper Canada, 2008 SCJ 12 at para 4.
  6. ↑ CCCH Canadian Limited v. The Law Society of Upper Canada, 2008 SCJ 12 at paras 41-46.
  7. 1 2 3 4 5 CCCH Canadian Limited v. The Law Society of Upper Canada, 2008 SCJ 12 at para 38.
  8. ↑ BMG Canada Inc v John Doe 2004 FC 488, [2004] 3 FCR 241.
  9. ↑ Copyright Act, RS 1985, c C-42, s 80(1).
  10. ↑ BMG Canada Inc v John Doe 2004 FC 488, [2004] 3 FCR 241 at para 24-25.
  11. ↑ BMG Canada Inc v John Doe 2004 FC 488, [2004] 3 FCR 241 at para 27.
  12. ↑ BMG Canada Inc v John Doe 2004 FC 488, [2004] 3 FCR 241 at para 28.
  13. ↑ David Vaver, Intellectual Property Law: Copyright Patents Trade-Marks, 2d ed (Toronto: Irwin Law Inc., 2011) at 190.
  14. ↑ Copyright Act, RS 1985, c C-42, s 27(2).
  15. ↑ Euro-Excellence Inc v Kraft Canada Inc, 2007 SCC 37, [2007] 3 SCR 20.
  16. ↑ David Vaver, Intellectual Property Law: Copyright Patents Trade-Marks, 2d ed (Toronto: Irwin Law Inc., 2011) at 191.
  17. ↑ Drassinower, Abraham, "The Art of Selling Chocolate: Remarks on Copyright's Domain," in Michael Geist ed, "Radical Extremism" to "Balanced Copyright" (Toronto: Irwin Law Inc, 2010) at 121.
  18. ↑ Drassinower, Abraham, "The Art of Selling Chocolate: Remarks on Copyright's Domain," in Michael Geist ed, "Radical Extremism" to "Balanced Copyright" (Toronto: Irwin Law Inc, 2010) at 126.
  19. 1 2 3 Drassinower, Abraham, "The Art of Selling Chocolate: Remarks on Copyright's Domain," in Michael Geist ed, "Radical Extremism" to "Balanced Copyright" (Toronto: Irwin Law Inc, 2010) at 127.
  20. ↑ David Vaver, Intellectual Property Law: Copyright Patents Trade-Marks, 2d ed (Toronto: Irwin Law Inc., 2011) at 194-195.
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