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| John McKeown |
In addition, nothing in subsection 38.1(3) requires works to be present simultaneously on a single medium, such as a hard drive or RAM. A “single medium” includes any technological infrastructure that makes it possible to reproduce, display or retransmit several works one after another.
Equitable remedies can’t be used to turn copyright regime on its head
Before the Supreme Court’s decision in York University v. Canadian Copyright Licensing Agency (Access Copyright), [2021] S.C.J. No. 32, the Ministries of Education of 10 Canadian provinces and territories (excluding British Columbia, Ontario and Quebec) and each of the school boards in Ontario commenced an action against Access Copyright seeking, among other relief: (a) a declaration that Access Copyright’s tariffs as certified by the board were not mandatory; (b) a declaration that the plaintiffs overpaid Access Copyright for
Alena Butusava: ISTOCKPHOTO.COM
The claimed refund represented the difference between the FTE rate of $4.81 paid in 2010 through 2012 and the $2.46 FTE rate that was ultimately certified in accordance with the approved 2010–2015 Tariff. Access Copyright defended the proceedings on multiple grounds including that the plaintiffs had no right to opt out of the tariffs because they voluntarily engaged in the tariff process beginning in 2010, including after Jan. 1, 2013, and made use of works in Access Copyright’s repertoire. Having made their election to engage in the tariff process, and having paid royalties from 2010 to 2012, the plaintiffs were voluntary licensees.
The matter moved forward by way of summary trial Province of Alberta v. The Canadian Copyright Licensing Agency, 2024 FC 292. The first issue was whether the plaintiffs were bound by the licences in issue. This issue was resolved based on whether they had paid or offered to pay the royalties due under the licences in issue under s. 70.17 of the Act. It was observed that paying or offering to pay is a permissive act triggering licence acquisition that must be interpreted considering the voluntary nature of the licensing regime.
“Offer to pay” must also be interpreted in accordance with the Supreme Court’s finding that a licensee must be able to review the terms and conditions of a tariff before agreeing to its terms, which is a critical component of what it means to be a voluntary licensee.
The court did not consider that any conduct by the plaintiffs, on its own or viewed collectively, constituted a clear and unequivocal offer to pay for a statutory licence.
The second issue was whether the plaintiffs were liable in equity to pay Access Copyright an amount equivalent to the tariff for 2013–2015. Access Copyright asserted that it was entitled to equitable relief based on unjust enrichment, estoppel by representation, common law and equitable election, issue estoppel, abuse of process and/or collateral attack.
The court said:
To interpret the Copyright Act as allowing equitable remedies that permit recovery of a remedy provided for under subsection 68.2(1), but not otherwise available to Access Copyright under the Copyright Act (because the plaintiffs were not licensees), would be incompatible with the object of the Copyright Act and result in absurdity. Parliament has struck a careful balance between users’ and creators’ rights, as well as with respect to the risk of collective societies developing monopolistic powers. In striking that balance, Parliament chose to make statutory licenses voluntary. To permit Access Copyright to obtain through equity what it cannot obtain under the Copyright Act would turn the copyright regime on its head, by effectively making voluntary statutory licences mandatory through the use of equitable remedies. Under the circumstances, it is “irresistibly clear” that the statutory scheme precluded Access Copyright from seeking the equitable remedies it claims.
Dr. Wright and Bitcoin
Dr. Wright succeeded in establishing in an interlocutory matter that the Bitcoin file format was sufficiently fixed to be subject to copyright. At the trial of a subsequent action, it was found that Dr. Wright was not the pseudonymous Satoshi Nakamoto, had not written Bitcoin’s foundational White Paper and had not developed the Bitcoin software Crypto Open Patent Alliance v. Wright, [2024] EWHC 1198 (U.K. Ch).
Privacy rights and IP addresses
In BMG Canada Inc. v. John Doe, 2005 FCA 193, the Court of Appeal said that privacy rights are significant and must be protected. But privacy concerns must yield to public concerns for the protection of intellectual property rights in situations where infringement threatens to erode those rights. These comments may need to be further considered in light of the decision of the Supreme Court of Canada in R. v. Bykovets, 2024 SCC 6.
In a criminal context, the court by a majority of five to four concluded that s. 8 of the Canadian Charter of Rights and Freedoms protects IP addresses. An IP address is the crucial link between an Internet user and their online activity. Viewed normatively, it is the key to unlocking a user’s Internet activity and, ultimately, their identity. An IP address attracts a reasonable expectation of privacy. Accordingly, a request by the state for an IP address is a search under s. 8 of the Charter.
The burden imposed on the state by recognizing a reasonable expectation of privacy in IP addresses is not onerous. This recognition adds another step to criminal investigations by requiring that the state show grounds to intrude on privacy online. But in the age of telewarrants, this hurdle is easily overcome when the police seek the IP address in the investigation of a criminal offence.
TPMs do not defeat fair dealing
In 1395804 Ontario Ltd. v. Canada (Attorney General), 2024 FC 829, the court said the purpose of the TPM measures was to better enable digital copyright owners to enforce copyright in the online environment. They provide an additional remedial arrow in the copyright owner’s quiver where an infringement occurs in a digital context “to better address the challenges and opportunities of the Internet.” They were not intended to effectively enlarge copyright protection for digital works by letting owners employ TPMs to defeat fair dealing, an inherently non-infringing activity.
The court also declined to determine whether a password could be a technological protection measure since there was no evidence of its effectiveness.
Industrial designs, and buildings and structures
As of June 14, 2024, the Industrial Design Office takes the position that buildings and structures, including those constructed on site, may be acceptable finished articles to which a design can be applied. This revised practice applies to all pending applications, regardless of their filing date.
This is the third of a three-part series. Part one: Recent copyright developments: Too early to draw adverse inference. Part two: Recent copyright developments: Eye-appealing features applied to useful articles.
John McKeown, counsel at Goldman Sloan Nash & Haber LLP, is certified by the Law Society of Ontario as a specialist in intellectual property law (trademarks/copyright). He is the author of Canadian Intellectual Property Law and Strategy: Trademarks, Copyright and Industrial Designs. He can be reached at mckeown@gsnh.com.
The opinions expressed are those of the author and do not reflect the views of the author’s firm, its clients, Law360 Canada, LexisNexis Canada or any of its or their respective affiliates. This article is for general information purposes and is not intended to be and should not be taken as legal advice.
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