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. 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. 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, 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.
Canadians have made it through the first
four weeks of social distancing and are now settling into new routines as much
as possible. For many, that means turning to online resources for our business,
social, entertainment, educational, and fitness needs.
In response to the COVID-19 pandemic,
there is a proliferation of innovative online offerings that are enabling our
businesses to continue operating, offering a sense of community, continuing
education, or even just providing ways for busy parents to entertain their kids
for a couple of hours. In a time of extreme isolation, the internet is bringing
Canadians together and helping us to stay connected.
One thing that has not changed, however,
is copyright law. Although the states of emergency declared across Canada and
around the world are disrupting many things, the Copyright Act remains in force.
Developing new online services that
attempt to replicate in-person interactions and transactions may trigger some
unexpected copyright obligations.
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.
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.”
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.
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
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.