INTELLECTUAL PROPERTY - COPYRIGHT INFRINGEMENT

1. GENERALLY

Copyright infringement is the unauthorized exercise of an exclusive right under copyright in a work. Anyone who violates any of the exclusive rights of a copyright owner and moral rights in works of visual art as provided under the Copyright Act of 1985 is an infringer of the copyright or the moral rights of the author.

2. ELEMENTS OF COPYRIGHT INFRINGEMENT

To establish a claim of copyright infringement, the owner of copyright or exclusive rights under copyright must prove (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original or their use in violation of other exclusive rights.

Ownership of Valid Copyright

To prove ownership of a valid copyright, a plaintiff must prove that the work is original and that the plaintiff complied with applicable statutory formalities.

Copying

Proof of copying or other violations may be shown either by direct evidence of the copying or other act, in the absence of such evidence, inferred from proof of access to the copyright work and substantial similarity between the copyright work and the alleged infringement.

3. SECONDARY LIABILITY FOR COPYRIGHT INFRINGEMENT

In general parties who themselves infringe any of the exclusive rights under copyright are liable for direct copyright infringement. Under certain circumstances, third parties may also be jointly and severally liable for copyright infringement by others if they knowingly induce or provide other persons with the means for infringement, or if they enjoy a financial benefit from infringement by other persons while failing to exercise their right and ability to control it. Secondary liability for copyright infringement has been a prominent means for taking legal action against copyright infringement facilitated by widely used digital copying and communications tools and services. Digital copying tools and communication services, in particular the Internet, make it easy and inexpensive for individuals to reproduce infringing copies and records for personal use, and to make these works available for other individuals to copy. In addition, the suppliers of pirated digital content have exploded, making detection and response much more difficult and costly for copyright owners and law enforcers. Secondary liability for copyright infringement arises under two common law doctrines – contributory copyright infringement and vicarious liability. In general, one infringes contributorily by intentionally inducing or encouraging direct infringement, and infringes vicariously by profiting from direct infringement while declining to exercise a right to stop or limit it.

4. CONTRIBUTORY INFRINGEMENT

Contributory copyright infringement is based on the relationship between the defendant and the act of infringement by the primary infringer. Contributory infringement occurs when one who, with knowledge of the infringing activity, induces, causes, or materially contributes to the infringing conduct of another. The elements of contributory infringement are (i) proof of copyright infringement by another person, (ii) proof that defendant had knowledge of the infringing conduct of another person, and (iii) proof that the defendant induced, caused, or materially contributed to the infringing conduct of another person.

Knowledge of Infringement Conduct

In addition to proof that defendant induced, caused, or materially contributed to direct infringement by other persons, contributory infringement requires proof that defendant had knowledge of the infringing activity by those other persons. Knowledge of the infringing conduct requires only that the defendant knew that the infringing conduct was occurring, e.g. copying of protected works, and does not require that the defendant knew the legal significance of the activity, e.g. that the copying infringed copyright. The standard of knowledge is objective, rather than subjective, and may be established by proof that defendant had actual knowledge of the infringing conduct or, in the alternative, had constructive knowledge of the infringing conduct, i.e. reason to know of the infringing activity from facts that would have prompted a reasonable person to inquire into whether an infringement was occurring. Actual knowledge of infringement by others may be demonstrated through proof that defendant knew that others were making unauthorized use of copyrighted works or specific notice to defendants from copyright owners. Actual knowledge of infringement by others may also be demonstrated through plans to evade Canadian copyright and related laws and development of technical protection circumvention tools. In lieu of actual knowledge, constructive knowledge of infringement by others may be demonstrated by proof that defendants have experience in a copyright industry, have enforced intellectual property rights in other instances, or have used its own service or product to infringe. Constructive knowledge may also be demonstrated by defendants' attendance at a conference advising attendees of copyright and other legal violations arising from conduct similar to that of defendant. Constructive knowledge may also be demonstrated by proof that defendants were “willfully blind,” i.e. deliberately avoided information about copyright infringement by others. In the absence of evidence of inducement, the knowledge required to establish contributory infringement may need to be more specific with respect to providing online facilities or distributing products that, in addition to infringing uses, also have substantial noninfringing uses.

Inducement or Material Contribution to Infringing

Conduct In addition to knowledge by defendant of the infringing conduct by other persons, contributory infringement requires that defendant induced, caused, or materially contributed to infringement by those other persons. This element of contributory infringement may be established by proof of any one of these items - causing others to infringe, making a material contribution to infringement, or inducing other to infringe.

Causing Infringement

Defendants who are in a position to control the use of copyrighted works by others and authorize such use without permission of the copyright owner are contributory infringers because they cause copyright infringement by others. Examples include licensing restaurant franchisees to perform a musical work that was no longer authorized by the copyright owner, and licensing motion picture distributors to arrange commercial exhibition of a film dramatization of a copyrighted novel that defendant had produced without authorization.

Material Contribution to Primary Infringement

Defendants who knowingly make material contributions to infringement by others are liable for contributory infringement. A material contribution to infringement by others may take several forms, including a contribution of labour or services, materials, equipment, or site and facilities. Knowingly contributing labor or services for the purpose of facilitating copyright infringement by others, or substantial participation in infringement by others, can result in liability for contributory infringement. Examples include “pervasive participation” in selecting musicians and directing programming for concert halls without obtaining public performance licenses, and operating and advertising “swap meets” by renting sales space and providing advertising, customer parking, and utilities to vendors of unauthorized sound recordings and phonograms.