Category Archives: Copyrights

Key Estate Planning Considerations for Individuals with IP (Part I: Introduction & Copyrights)

This is the first entry in a three-part blog series about the interaction between estates law and intellectual property law. Part I will introduce Ontario’s succession law regime, and provide an analysis of succession law vis-à-vis copyright law. Part II will apply this analysis to trademark law. Finally, Part III will examine this area in relation to patent law, as well as provide some concluding thoughts and considerations.

In the world of will-making, when we think about how the assets of the will-maker (usually referred to as the “testator”) are going to be distributed, we often think about what’s going to happen to their real estate, their vehicles, their jewellery or their other personal belongings. While it is natural for us to first turn our mind to property that is physical or tangible, it is important to ensure that we turn our focus to intangible property as well, as such property often requires more attention and direction.

One form of property that undoubtedly fits this definition is intellectual property. In making provision for one’s friends and family in their will, it is important to consider the financial and sociocultural impact of any intellectual property they may own, and manage such property accordingly. In this blog post, we will go over some key legal considerations, under Ontario and federal law, for the transfer of copyrights, trademarks and patents upon an individual’s death.

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Destruction and Delivery Up: a Year in Review

Copyright and trade-mark owners whose IP is infringed may seek a variety of remedies against the perpetrators, including damages, injunctive relief and legal costs. Psychologically though, destruction and delivery up may provide the most satisfaction. Specifically provided for in the respective statutes,  these remedies allow the successful plaintiff to either compel the infringer to destroy the counterfeit items under oath or actually take possession of them. In this post, we survey destruction and delivery up orders granted and denied in 2019. Overall, the year’s rulings are mixed, demonstrating that even as the victim of infringement, “you can’t always get what you want.”

Luxury Goods

Luxury goods are common targets for counterfeiters, as this year’s crop of destruction and delivery up orders illustrates. Appearing four times before the Federal Court was Nathalie Marie Tobey, aka Nathalie Henrie. Operating out of a clandestine retail establishment on Old Yonge Street, Ms. Tobey was accused of selling counterfeit Givenchy, Louis Vuitton, Dior and Celine merchandise.  Her defence was essentially that a well-informed member of the public would not confuse the goods she was selling with the plaintiffs’. Justice Norris dismissed this defence as having “no hope of success whatsoever,” before ordering the delivery up of all goods bearing the plaintiff’s subject trademarks, at least, those not already seized by the Toronto Police Service.

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Minority Report: How Canada’s Electoral System Disrupts Copyright Reform

Canadian elections have a tendency to disrupt copyright reform initiatives and the 2019 contest which resulted in a minority Liberal government under Prime Minister Justin Trudeau is no exception.

The trend started in 2005, when the Liberal Government of Prime Minister Paul Martin introduced Bill C-60, An Act to Amend the Copyright Act, which was Canada’s first attempt at adopting the comprehensive amendments required to ratify the two WIPO internet treaties that had been negotiated in 1996 and signed by Canada in 1997.

The minority Liberal government was defeated by a vote of no confidence in November 2005, killing Bill C-60.

After the general election in January 2006, the defeated minority Liberal government was replaced by a minority Conservative government under Prime Minister Stephen Harper. The Conservatives tabled Bill C-61, An Act to Amend the Copyright Act, in June 2008. The bill was substantially similar to the Liberals’ copyright reform legislation.

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Federal Court rejects controversial copyright litigation strategy

On November 12th, the Federal Court of Canada dismissed a motion for certification of a reverse class action lawsuit that was brought against potentially thousands of Canadiansby Voltage Pictures, LLC, a Canadian film production company (“Voltage”).

Voltage was able to identify thousands of IP addresses that were alleged to have infringed copyright by offering or uploading its films through BitTorrent, a peer-to-peer file sharing platform.

In 2016, it brought a motion for an order to certify its application as a respondent class proceeding. The proposed class respondents were all those individuals whose internet accounts had been detected as involved in direct or indirect infringement of its films or offering the copyrighted works for download.

Voltage has already brought 96 of these lawsuits against classes of unnamed defendants in the United States, according to an affidavit which was submitted to the Court. This litigation strategy has often been dubbed “copyright trolling” by its opponents.

A preliminary issue which was raised before the Court was the respondents’ lack of an incentive to defend themselves. This issue was solved through the intervention of the Samuelson-Glushcko Canadian Internet Policy and Public Interest Clinic (CIPPIC), which submitted strong arguments against certification.

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The Ins and Outs of Canadian Copyright: Movies and the real and substantial connection test

A recent decision of the Ontario Superior Court of Justice sheds some light on the application of the “real and substantial connection test” under Canadian copyright law where alleged infringement takes place across geographic borders. In Pourshian v. Walt Disney Company, an Ontario court allowed an action for copyright infringement to proceed against three Walt Disney Company related entities based on a movie distributed through Canadian movie theaters.

The plaintiff, Damon Pourshian, filed a Statement of Claim against a group of companies related to the Walt Disney Company. He alleged that Pixar’s award-winning animated film, “Inside Out”, released in 2015, infringed his copyright in a short film that he created in 1998 also entitled “Inside Out”. In Pourshian’s film, five organs—Heart, Stomach, Colon, Bladder, and Brain—guide the protagonist’s behaviour while in Pixar’s film, five emotions—Joy, Sadness, Anger, Fear, and Disgust—influence the protagonist’s behaviour.

In response, the defendants filed a motion to set aside service of the Statement of Claim and to stay the action on the grounds that the defendants are incorporated and have their principal places of business in the United States, that Pixar’s “Inside Out” was made in California, and as a result Canada’s Copyright Act does not have extraterritorial application. The main issue on the motion. therefore, was whether the Ontario court should assume jurisdiction over Pourshian’s action.

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