Category Archives: Canada

Federal Court clarifies that proper process for bringing a claim under the notice-and-notice regime—somewhat

Internet Service Providers (ISPs) have seen an increase in litigation related to Canada’s notice-and-notice regime since it was added to the Copyright Act in 2012. Plaintiffs, generally the owners of copyright in films, have brought claims in Federal Court using various procedures. The Court recently released a decision offering guidance on the proper way to do so although there is still some uncertainty on this point.

The notice-and-notice regime set out in sections 41.25 and 41.26 of the Copyright Act, requires ISPs to forward notices of alleged infringement that they receive from copyright owners to subscribers. The ISPs also need to provide confirmation the copyright owners that the notices have been forwarded (or explaining why one could not be forwarded if that is the case), and to keep the information necessary to allow the subscribers’ identities to be determined. Failure by an ISP to comply with the notice obligations can result in statutory damages..

Plaintiffs have brought claims against several ISPs alleging that they have failed in their obligations to forward these notices for various reasons.

The most recent decision, TBV Productions, LLC v. Doe. found that the proper procedure by which a copyright owner can bring a claim for statutory damages for failure to forward a notice is to start an action. This finding, however, departs from a previous decision of the Federal Court, ME2 Productions Inc. v. Doe, which found that such a claim could proceed by way of motion.

Let’s look at TBV Productions v. Doe. first.

In this case, the plaintiff TBV Productions alleged that three ISPs had failed in their obligations to forward notices to its subscribers.

TBV Productions tried to have its claims against the various ISPs heard by way of a “show cause” motion. The claim was originally part of a Norwich motion by which TBV Productions sought the disclosure of the identities of allegedly infringing subscribers.  The Norwich portion of the motion was no longer at issue by the time of this hearing.

In its decision, the Court found that, in this case, the plaintiff copyright owner would have to bring a claim for damages for failure to forward a notice against an ISP by way of an action. The plaintiff in this case cannot bring it as part of a Norwich motion and will have to bring a separate own claim for damages.

This decision is certainly helpful although there is still some ambiguity in the law given the Federal Court’s earlier decision in ME2 Productions.

In that case, the Court allowed the claim for statutory damages to proceed by way of a motion in an effort to simplify and accelerate the process. Crucially, in that case, the Court was considering an appeal of a decision of a Prothonotary that had created this process and so was reviewing that decision on the standard of palpable and overriding error. The Court concluded that the Prothonotary did not make a reviewable error in reaching their decision and so the claim was allowed to proceed by way of motion.

The Court in TBV specifically addresses the ME2 case in its decision, distinguishing it on the grounds that, in ME2, the claim for damages was tied to the ISP’s alleged failure to keep proper records and so the disclosure and statutory damages issue were intertwined. TBV differed in that the parties had settled the issue of disclosure and so the issue remaining before the Court related only to the damages claim. The Court also emphasized that the ME2 decision was an appeal of a decision of a Prothonotary and so the standard of review played a key role in that decision. Ultimately, the Court found that the circumstances in TBV were sufficiently different from those in ME2 to justify a requirement to pursue a damages claim by way of action.

So while the TBV case offers guidance, ISPs still have to face some uncertainty regarding the proper procedure to defend such a claim in addition to the claim itself. This will likely result in an initial discussion (and potentially disagreement) between the copyright owner and the plaintiff to try and determine if the claim for statutory damages should proceed by way of an “ME2 process” or a “TBV process”.

Fasken acts for several ISPs and advises them on their obligations under the notice-and-notice regime. Let us know how we can help you with notice-and-notice regime compliance and litigation.

Mind the GAP: The PMPRB Changes Definition of GAP Medicines and Reduces Compliance Timeline

On January 15, 2021, the Patented Medicines Prices Review Board (“PMPRB”) initiated a consultation on two proposed amendments to the new PMPRB Guidelines (“Guidelines”): (1) the definition of Gap medicines; and (2) the compliance timeline for Grandfathered and Gap medicines. 

According to the PMPRB, the two amendments were required due to the change in the coming-into-force date of the Regulations Amending the Patented Medicines Regulations (“Regulations”), which was pushed from January 1, 2021 to July 1, 2021.

And so, on March 17th, the PMPRB rendered its decision.

Definition of Gap Medicines.

Under the Guidelines, Gap medicines were defined as those which were assigned a DIN was on or after August 21, 2019 (the date the Regulations were adopted) and were first sold in Canada prior to January 1, 2021. Following the consultation, the PMPRB has extended the date of first sale to July 1, 2021. This means the Gap medicine provisions in the Guidelines will now apply more broadly.

Gap medicines are subject to the harshest price standards under the Regulations. More specifically, the Maximum List Price (“MLP”) for this category of medicine is  the lower of:

• the median international price for the medicine in the PMPRB11; and

• the medicine’s ceiling under the previous Guidelines.

In contrast, the MLP for Grandfathered medicines (i.e. those launched prior to August 21, 2019) is the lower of:

• the highest international price; and

• the medicine’s ceiling under the previous Guidelines.

By contrast, the MLP of new medicines (i.e. those with a first sale after July 1, 2021) is determined only by reference to the median international price for the medicine in the PMPRB11.

The revised definition of Gap medicines works against the interests of patentees, as medicines that were launched between January 1, 2021 and March 17, 2021 (i.e., today) will now be subject to more stringent limits on the MLP set out above.

New Compliance Timelines.

The PMPRB has also modified the compliance timeline for Gap medicines and grandfathered medicines. The initial version of the Guidelines stated that patentees of these products would have two reporting periods (i.e. until July 1, 2022) to ensure the MLP was consistent with the median international price. This timeline has been shortened to December. 1, 2021

While the federal government delayed the coming into force of the Regulations “to minimize the imposition of new administrative burden on industry as patented drug manufacturers face increased demands related to supply chains and shortages of existing products and, potentially, new treatments and vaccines in response to COVID-19”, patentees of Gap medicines who are now subject to more stringent price regulation may be wondering whether the administrative burden was actually minimized at all.

The Federal Court of Appeal Upholds Finding that Trademark Use Can Be Established Without a Physical Presence in Canada.

With the rise of e-commerce, many non-Canadian businesses can now advertise their services to Canadians online without having any physical presence in Canada. If these businesses have Canadian registered trademarks associated with these services, there are however important considerations for businesses wanting to properly maintain their trademarks in Canada. Unlike other forms of intellectual property, an owner of a Canadian trademark must “use” their registered mark in Canadian commerce or it may lose the protections provided by the Trademarks Act. It goes without saying that without a physical presence in Canada, it could be challenging for foreign trademark owners to prove that they are meeting the “use” requirement. The WALDORF ASTORIA case provides helpful guidance for foreign trademark owners to mitigate the risk of compromising their intellectual property.  

Recently in Miller Thomson LLP v Hilton Worldwide Holding Inc., 2020 FCA 134[1], the Federal Court of Appeal confirmed that a non-Canadian business may be able to establish “use” of its mark in Canada in association with its services, despite not having a “bricks and mortar” presence in Canada. The mark at issue in this case was the WALDORF ASTORIA trademark, registered by Hilton Worldwide Holding LLP in Canada (“Hilton”) in association with “hotel services”. Despite having this mark registered in Canada, there was no hotel operating under that name in Canada.

This case was originally before the Canadian Registrar of Trademarks, where the Registrar found that the absence of a brick-and-mortar hotel in Canada was fatal and ordered the WALDORF ASTORIA registration be removed. The Registrar’s decision was subsequently appealed to the Federal Court. On appeal, the Federal Court set aside the decision of the Registrar and concluded that a “bricks and mortar” hotel was not necessary to establish “use”, so long as Canadians obtained some tangible, meaningful benefit from the services in Canada. The Federal Court had found that hotel services encompass more than the provision of a room and that the evidence advanced by Hilton had established that there were several benefits that were available to people in Canada, over and above their eventual enjoyment of their stay in a “bricks and mortar” hotel. Moreover, the evidence established that many people in Canada had already taken advantage of such benefits.

The Federal Court of Appeal ultimately agreed with the lower court’s earlier determination, noting in its reasons that that trademark “use” requirements had to adapt to accord with 21st century commercial sales practices – i.e. sales and services in the Internet age.

The Federal Court of Appeal however cautioned that:

…bare assertions of use will not be enough, and the mere display of a mark on a website from outside of Canada will not suffice to establish use of the mark in this country in association with registered services. Moreover, the ability of individuals in Canada to passively view content on a foreign website will be insufficient to constitute use of a mark in this country. There must, at a minimum, be a sufficient degree of interactivity between trademark owner and Canadian consumer to amount to use of a mark in Canada in conjunction with services over the internet.

Based on the foregoing, it appears that for foreign trademark owners seeking trademark protection in Canada, it will be important to create a record supporting that the use of a trademark in Canada has been established. As noted by the Federal Court of Appeal, the determination as to whether a particular mark has been “used” in Canada in association with specified services is largely factual in nature. Trademark owners should appreciate that such cases will therefore most likely turn on the quality of the evidence.

The Federal Court of Appeal provided the following examples of evidence that may be persuasive in establishing the “use” of a mark in Canada as it relates to online services:

  • Website metrics demonstrating the number of times that a displaying mark has been accessed by people in Canada;
  • Evidence that the content offered by the website is stored on servers located in Canada;
  • Sales figures with respect to value of the registered services that have been provided to Canadian consumers over the internet; and  
  • Evidence that prices are listed in Canadian dollars.

Foreign trademark owners should consider these categories of evidence when designing websites to be accessed by Canadians in association with a specified service.


[1] https://decisions.fca-caf.gc.ca/fca-caf/decisions/en/item/484960/index.do

Mark D. Penner Recognized as IAM Global Leader for 2021

Fasken partner, Mark D. Penner, has been recognized in the first ever edition of the IAM Strategy 300 Global Leaders Guide. You can visit the website here to view this year’s edition.

The IAM Strategy 300 Global Leaders guide draws from the worlds of private practice, consulting and other service providers, with specialists from the major IP markets in the America’s, Europe and Asia. Together they boast a wide range of expertise in IP-intensive sectors such as high-tech and life sciences. Given the myriad strategic challenges that patent owners face throughout the world, this guide will quickly become a valuable resource for stakeholders across the IP community!

Mark’s practice focuses on all aspects of the acquisition, protection, enforcement and strategic use of a wide range of intellectual property assets in Canada and around the world.

Foreign Certificate of Registrations of Copyright may not suffice to prove ownership of copyright in Canada

Proving chain of title to a work is essential for any party wishing to assert copyright infringement. However, this is not always easy, given that the author of the work is not required to register its copyright to acquire the protection by copyright law, provided that the author is Canadian or a citizen of any of the signatory countries to the Berne Convention for the Protection of Literary and Artistic Works of September 9, 1886.[1] Further, in any civil proceeding in which a defendant puts in issue either the existence of copyright or the title of the plaintiff to it, the author shall be presumed to be the owner of the copyright unless the contrary is proven.[2] Given that copyright exists from the moment the original work is created and that the title of ownership may easily be passed around since its existence, it is important to keep a robust documentation of the chain of title of a work.

In the recent decision Lickerish, Ltd v Airg Inc,[3] a copyright infringement action regarding the unauthorized use of two photographs of a celebrity on the defendant’s website, the Federal Court found that the would-be plaintiff did not have standing to bring the copyright infringement action, given that it was unable to prove its ownership to the asserted copyright to the photographs. This is an interesting case because it speaks to (1) the insufficiency of uncertified foreign certificates of registration of copyright as evidence of ownership, and (2) the use of screen captures as evidence of copyright infringement.

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