Copyright Infringement Defences in Canada

Receiving a letter or a statement of claim alleging that you have infringed someone's copyright can be an upsetting experience. The first thing to do is to determine how to respond. If it is no more than a cease and desist letter, then you do not have to respond, but it may still be a good idea to do so (see our article on what to do if you have received a cease and desist letter). If you have been served with a statement of claim on the other hand, you must respond with a statement of defence within a particular time or the plaintiff may bring a motion for default judgment against you. The time for responding can be as little as 20 days from receiving the statement of claim. For this reason, it is important that you speak with a lawyer about how to respond as soon as possible.

The available defences for copyright infringement fall into two main categories: (1) attacking the validity of the copyright or the party's right to enforce; and (2) alleging that your use of the copyrighted work is not an infringing use. Each will be discussed further below.

Response 1: Attack the Validity of Copyright or the Party's Right to Enforce

The first and most obvious line of defence against an allegation of copyright infringement is attempting to prove either that the work in question is not actually protected by copyright and was thus free to be used by anyone or that the entity seeking to enforce the copyright is not the entity entitled to do so. We’ll start with the former.

The Validity of the Copyright

Copyright may not subsist in the work for several reasons: (a) the work was not eligible for copyright in the first place; (b) the copyright has expired; and/or (c) the work has been voluntarily placed in the public domain.

(a) The Work Is Not Eligible for Copyright Protection

In CCH Canadian Ltd v Law Society of Upper Canada, the Supreme Court ruled that for copyright to subsist in a work it must be original and more than a mere copy of another work. What is necessary is an exercise of skill and judgment – though not necessarily uniquely creative judgment – that involves intellectual labour. Copyright subsists automatically in such a work upon its completion without any registration or official process. As such, not finding proof of copyright registration does not mean that the work is not protected by copyright.

If the work is not original, then it may not be protected by copyright and you may have a complete response to the allegations of infringement. To assess whether this is the case, you may want to contact an intellectual property lawyer.

(b) The Copyright Has Expired

Section 6 of the Canadian Copyright Act stipulates that, for works where the identity of the author is known, the term of the copyright is the lifetime of the author, the remainder of the calendar year in which they die and a period of seventy years (as of December 30, 2022) following the end of that calendar year. Where the work in question has multiple authors, the same term applies but is based on the date of death of the last living author.

The current term of copyright of life-plus-seventy extends the former term of life-plus-fifty by twenty years. This extension is one of the amendments to the Copyright Act implemented on December 30, 2022. The extension of the copyright term is not retroactive. If, for example, an author died on June 1, 1970, copyright in their works expired on December 31, 2020. Works protected by copyright on or after December 30, 2022 will receive an additional 20 years of protection. However, any works whose copyright expired before December 30, 2022, will not receive an additional 20 years of protection.

In cases of anonymous works, copyright subsists for the shorter of fifty years from the first known date of publication or seventy-five years from the date the work was completed.

For cinematographic works, excluding the exceptions in s. 11.1 of the Copyright Act , copyright subsists for seventy years following the calendar year the work or compilation was made. If the cinematographic work is published before the end of the seventy year period, the copyright will continue until the earlier of seventy-five years following the calendar year of first publication or one hundred years following the calendar year in which the cinematographic work was made. If you believe that the copyright in the work that you have used has expired in accordance with the above statutory limits, then any cease-and-desist letter that you may have received does not have legal validity and any claim of copyright infringement is unlikely to succeed.

(c) The Work Was Placed in the Public Domain

Works that have been placed in the public domain are available for use by anyone without any copyright-related repercussions. There are two main ways a work can be placed in the public domain: through expiry of the copyright term and through permission from the author.

Works where copyright has expired are automatically placed in the public domain. For example, a Jane Austen novel may be freely reproduced, since it has been more than fifty years since her death.

A copyright holder may also freely assign their copyright to the public domain. If this has occurred, the original copyright holder will not have legal standing to pursue a claim against you. Note that a work being made publicly accessible does not equate to it being in the public domain.

As there is no requirement to register copyright, there is no simple way to know whether a work is in the public domain.

The Opposing Party’s Right to Enforce

Under section 41.23 of the Canadian Copyright Act, only a party that owns the copyright to the work or a party that derives any title, right or interest in or to the copyright by assignment in writing from the copyright owner may pursue legal remedies for infringement.

As such, anyone who sends a cease and desist letter or otherwise attempts to pursue an infringement claim without having a legal interest or right in the work will not succeed.

Initially, it is the author of a work that is the owner of copyright in the work, however, the author, like every subsequent owner, can assign their copyright.

If copyright in a work is registered, the copyright owner should be listed in the Canadian Intellectual Property Canadian Copyrights Database. The database, however, is not conclusive, as although the Office will record assignments of copyright on request, it is not mandatory to record these transfers with the Office. Ownership may, therefore, not be accurately reflected in the database.

Response 2: Defences to Copyright Infringement

There are various defences to allegations of copyright infringement available. We canvass some of the most popular defences below, including: (a) no copying of a substantial part of the copyrighted work; (b) fair dealing; and (c) specific exceptions.

(a) No Copying of a Substantial Part of the Work

Not all reproductions of a work constitute copyright infringement. Section 3 of the Canadian Copyright Act stipulates that the copyright owner is the sole entity who may rightfully reproduce the work or a substantial part thereof. The key word here, however, is "substantial". Excerpts of the work, such as quotes or short clips in many cases may be replicated without penalty. The assessment of whether the replicated portion is "substantial" depends on the particular work in question and can involve several factors, including the size of the reproduced excerpt compared to the size of the entire work and whether a critical portion of the work was reproduced rather than a more negligible part.

Importantly, independently producing an identical or similar work without copying the copyrighted work does not constitute copyright infringement under Canadian law. However, proving independent production of a work may be difficult if the case does proceed to litigation, especially if the copyrighted work in question is widely available.

(b) Fair Dealing

If you did copy part or all of a copyrighted work, you may be able to rely on a defence of fair dealing. Fair dealing is actually not a defence to copyright infringement at all, but an exception. A fair dealing is not an infringement of copyright. The burden of proof when asserting fair dealing lies with the defendant and requires the defendant to prove proof that the dealing was: 1) for an allowable purpose under the Copyright Act, and 2) fair in nature.

Allowable purposes under the Copyright Act are research, private study, education, parody, satire, criticism, review and news reporting. If your situation falls into one (or more) of these categories, you have met the first criterion for fair dealing. Of course, it can be difficult to make this determination without knowledge of what courts have historically understood these purposes to mean (i.e., without knowing what exactly constitutes “research”). Assuming your use of a copyrighted work was in fact for an allowable purpose, you must still prove that the dealing was "fair". The Supreme Court of Canada in CCH provided a framework for determining what constitutes "fair" dealing. Courts must consider:

1. The purpose of the dealing: was the dealing in question done for an allowable purpose? Even if so, some allowable purposes may be more or less fair than others. For example, use for commercial research may be considered less fair than use for research done for a charitable purpose.
2. The character of the dealing: here, the court will consider whether the work was reproduced in a single copy or in multiple copies, and whether it was distributed to a wide audience. In general, the more a work is reproduced and distributed, the less likely a defence of fair dealing will be accepted by the court.
3. The amount of the dealing: reproducing a trivial amount of the work will not trigger a fair dealing analysis at all because where there is no copying of a substantial part, there is no infringement to begin with. If the amount reproduced is substantial or the work is reproduced in its entirety, the court will assess whether the quantity reproduced is commensurate with the goals of the dealing.
4. Alternatives to the dealing: if non-copyrighted alternatives exist that could have been used to accomplish the same purpose, the court will consider their availability in the determination of fairness.
5. The nature of the work: if the reproduced work was intended to stay confidential, this may harm a defence of fair dealing. If, however, the authors benefitted from greater publicity and the reproduced work was credited to them, this may favour a finding that the dealing was fair.
6. Effect of the dealing on the work: finally, the court will assess how the reproduction impacted the profitability and desirability of the original work. Generally, inhibiting the original work's commercial success will undermine a claim of fair dealing.

Recently, the court has also needed to carefully consider the circumstances of a dealing in the first stage of the fair dealing analysis: purpose. An interesting case decided in 2017, United Airlines, Inc. v. Cooperstock, had the court reflecting on the meaning of one particular purpose, that of parody. Dr. Cooperstock created a website on which to share his negative experiences with United Airlines. The website gained popularity, and others started submitting their complaints to the site. Cooperstock designed the site to closely resemble that of the airline in terms of layout, logos, etc. In deciding whether Cooperstock was liable for copyright infringement, the court considered whether his dealing was for the purpose of parody. The court decided that although the website was a spoof of the airline’s site, the doctor’s dealing was not captured by parody because the spoof was too good. It was not clear that the website was his own and not that of the airline, and some customers had actually believed they were submitting claims to United. Parody, the court wrote, depends on the recipient or viewer recognizing that the work in question is a spoof. Dr. Cooperstock was on the hook for infringement.

(c) Specific Exceptions

There are several other defences available to those that have used a copyrighted work without the owner's consent (circumstances under which activity which would otherwise constitute copyright infringement may be allowed), but they typically address a very specific set of circumstances. Statutory exceptions to copyright include the use of copyrighted material by certain types of organizations, such as educational institutions, museums, archives and libraries. For software programs and electronic materials, reproduction for private purposes, such as making a single backup copy, creating an encrypted version, or making a copy of a program for later personal viewing could serve as a sufficient defence. Note that these specific exceptions are typically accompanied by conditions. For example, this exception for educational institutions wanting to show a copyrighted news program:

29.6 (1) It is not an infringement of copyright for an educational institution or a person acting under its authority to

(a) make, at the time of its communication to the public by telecommunication, a single copy of a news program or a news commentary program, excluding documentaries, for the purposes of performing the copy for the students of the educational institution for educational or training purposes; and

(b) perform the copy in public before an audience consisting primarily of students of the educational institution on its premises for educational or training purposes.

To review the other statutory exceptions available, please refer to sections 29.21-32.3 of the Copyright Act. As evidenced by the above noted examples, however, these exceptions are very narrow in scope and you may want to consult a lawyer to see if your use may fall within any one of them.

Conclusion

Receiving a copyright infringement notice does not mean that you are automatically at fault. You should first establish whether copyright subsists in the work in question, whether the entity asserting infringement has any interest in that copyright, and, if so, whether your use of the work constitutes infringement or falls within one of the defences set out above.

If you are unsure whether your case falls under any of these scenarios or are otherwise looking for assistance in responding to an infringement claim, contact us now for a complimentary and confidential initial telephone appointment to discuss your options.