Recent copyright developments: Eye-appealing features applied to useful articles

Law360 Canada (July 29, 2024, 11:37 AM EDT) --

John McKeown

Based on statements and debates from around the time that subsection 64(2) was introduced into the Copyright Act, the broad purpose of the provision was to limit the scope of copyright and moral rights for designs applied to certain products reproduced in industrial quantities. The general idea was that such designs should instead be protected by registration of an industrial design, which has a much shorter life than copyright.

In French v. The Royal Canadian Legion, 2024 FCA 63, the Federal Court of Appeal said the wording Parliament chose for subsection 64(2) was more nuanced than the broad purpose and general idea described above. Parliament did not simply provide that a design that is, or could be, the subject of an industrial design could not be enforced through the Copyright Act. The text of subsection 64(2) does not simply state there can be no copyright or moral rights infringement of a design. Rather, Parliament chose to exclude certain activities from infringement and carefully crafted wording both for the kinds of designs that are covered by subsection 64(2) and for the activities shielded from infringement.

The plaintiff also asserted a false claim of authorship had been made concerning his work, which infringed his right to be associated with his work as its author or to remain anonymous. He claimed this claim did not come within paragraph 64(2) (c) or paragraph 64(2)(d). While there was some technical merit in this argument, the court disagreed and said the answer was in s. 14.1.

Subsection 14.1(1) contemplates two aspects of moral rights: integrity of the work and authorship. The text relevant to authorship is limited to a right “in connection with an act mentioned in section 3”. Section 3 of the Copyright Act defines the rights associated with copyright, including the sole right to produce, reproduce, perform and publish the work, and authorize any of the foregoing activities. The reference in subsection 14.1(1) to these rights ties an author’s moral rights to copyright in the work in much the same way that subsection 64(2) is tied to the use of copyright. This suggests that the defence to infringement of moral rights provided for in subsection 64(2), including paragraph 64(2)(d), is intended to cover any infringement of the author’s moral rights. For there to be an infringement of moral rights, it must be in connection with the copyright; if there is no act in connection with the copyright, there is no infringement of moral rights. This interpretation of subsection 64(2) and the scope of moral rights is also consistent with the broad purpose and general idea of subsection 64(2).

Either paragraph 64(2)(d) benefited the Legion as a defence to infringement of moral rights (if the false statement was associated with a reproduction of the Poppy Puppy), or there was no infringement of moral rights in the first place (because the false statement was not associated with a reproduction of the Poppy Puppy). Either way, the Legion is not liable for infringement of moral rights.

Subsistence of copyright in Canada for foreign authors is determined under the Canadian Copyright Act

In GE Renewable Energy Canada Inc. v. Canmec Industrial Inc., 2024 FC 322, the author of the work in issue created it in France during his employment. In determining whether the law of France or Canada applied, the court said s. 5 sets out conditions for the subsistence of copyright in Canada, including that the author be a citizen, subject or ordinary resident of a Berne Convention or other treaty country at the time of creation: Copyright Act, s. 5(1)(a). There is no requirement in s. 5 that the copyright in the work be recognized in its country of origin. Whether Canadian copyright subsists in a work is a matter expressly dictated by the Canadian Copyright Act, without reference to the law of the jurisdiction in which the work is created. It is also clear that the Copyright Act is expressly intended to govern the works of foreign authors. This is consistent with the statement in Article 5(2) of the Berne Convention that the enjoyment and exercise of copyright is independent of the existence of protection in the country of origin of the work. The text, context, and purpose of subsection 13(1) indicate that Parliament intended the first ownership rule to apply to all works, no matter where they were authored.

Injunctions at trial

The Federal Court in Vidéotron Ltée v. Konek Technologies Inc., 2023 FC 741, summarized the obligations of a plaintiff seeking an injunction as follows:

In a nutshell, the plaintiff must prove an infringement of their rights, that there is sufficient risk that this infringement will continue, that there is no adequate alternative remedy, and that there are no discretionary considerations that weigh against granting the injunction.

In that case, the plaintiff asserted copyright in specific programs and not its television signal. They sought a wide injunction prohibiting the re-transmission of the signal itself, which would include additional works and future works. Absent challenge the injunction was granted relating to the signal.

This is the second of a three-part series. Part one: Recent copyright developments: Too early to draw adverse inference
 
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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