This is part of a series rounding up the biggest IP cases in Canada in 2015. You can view the patent and trade mark overviews by clicking on the links below.
2015 in Canadian IP cases: patent
2015 in Canadian IP cases: trade mark
A ruling on technological neutrality
The most important copyright case in Canada last year came in November when the Supreme Court of Canada affirmed the principle of technological neutrality in copyright law, in Canadian Broadcasting Corp v Sodrac 2003.
The 7-2 split decision affirmed that incidental copies of work made to facilitate broadcasting will engage the reproduction right and require a licence. The Supreme Court underlined the vital role the technological neutrality plays in Canadian copyright law, with its principle that the Copyright Act should not be interpreted or applied to favour or discriminate against any particular form of technology.
The Copyright Board and the Federal Court of Appeal had previously found that the Copyright Act required CBC to have a separate licence for incidental copies of works made to facilitate broadcasting as had been argued by the Society for Reproduction Rights of Authors, Composers and Publishers in Canada (Sodrac).
The majority said the principle of balance and technological neutrality informs the interpretation of the Copyright Act but cannot override its express wording. Although it affirmed the need for a licence, the majority held that the licence fee was inappropriate because the Copyright Board did not consider the principles of technological neutrality and balance between users’ and rights holders’ interests.
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"The majority said the principle of balance and technological neutrality informs the interpretation of the Copyright Act but cannot override its express wording" |
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The minority said that Sodrac was trying to claim royalties for a particular method of broadcasting musical works as part of television programmes and movies despite never before receiving royalties for broadcasting.
This ruling on inappropriateness of the size of the licence fee meant – despite CBC clearly suffering a setback through being told to pay for a licence for incidental copies – that both sides could claim some victory. As a result, Sodrac expressed “both satisfaction and disappointment” after the decision was handed down.
The case must be returned to the Copyright Board of Canada, which will determine again the value of the royalties for the broadcast-incidental copies, this time taking into account certain principles that the Supreme Court has put forward in recent judgments.
"Several aspects of this decision confirm the legitimacy of our rights and of the actions we are taking to maximize our author, composer and music publisher members' royalties," said Jehan Valiquet, Chairman of Sodrac. "While recognizing the rights of music creators, the Supreme Court has also define the scope of our rights in the digital realm. However, we are disappointed to have to re-initiate a long and expensive process, so that these rights can translate into royalties.”
Music Canada and the Canadian Musical Reproduction Rights Agency (CMRRA) – which both acted in the case as interveners – welcomed the ruling. “The creative community should have access to a fair and functioning market that rewards them based on demand for their work,” said Graham Henderson, president and CEO of Music Canada. “CMRRA is pleased with the Supreme Court’s decision in CBC v Sodrac, another successful effort to protect the rights of songwriters and music publishers,” said CMRRA.
Matteau Poirier avocats represented Sodrac, while Fasken Martineau DuMoulin represented CBC.
Other copyright cases
An analysis of the copyright year in review by Gowlings identified other copyright cases of interest during the year. These were:
Voltage Pictures v John Doe: The Federal Court concluded that the cost arising from non-party internet service provider TekSavvy’s decision to notify 200,000 subscribers of litigation would not be a reasonable cost of compliance that could be recovered. In 2014, the Federal Court ordered TekSavvy to produce names of about 2,000 customers alleged to have infringed copyright through illegally showing the film The Hurt Locker. In the 2015 decision, however, the court did agree that reasonable costs of compliance should be recovered and it allowed a slightly higher costs award.
Red Label Vacations v 411 Travel Buys: The Court of Appeal in December upheld the Federal Court’s January 2015 ruling that, while copyright could subsist in meta tags, it did not subsist in the particular tags at issue in the case. The plaintiff had accused the defendant of violating its copyright or trade mark rights by using the same or similar metatags to increase its business being listed in search engine results. The Court of Appeal stressed that the decision should be read as fact specific and did not preclude claims for copyright or trade mark infringement in future meta tag disputes.
Netflix v SOCAN: The Court of Appeals agreed with the applicant that procedural fairness had been denied when the Copyright Board considered a proposed tariff on audiovisual works transmitted online. The Court of Appeals set aside the tariff relating to royalties on free trials and returned the matter back to the Board. Gowlings noted the “interesting requirement that a different panel of the Board be constituted to hear the matter”.
Rogers Communications Partnership v SOCAN: The Federal Court ruled that C$15 million of royalties paid by mobile service providers between 2003 and 2012 should not be repaid to the providers. The providers said that two 2012 Supreme Court decisions meant the royalties should not have been paid. The Federal Court said, however, the tariff had been validly certified by the Copyright Board at the time.
