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Copyright Infringement Defences in Canada

By: Christopher Heer, Stefanie Di Giandomenico, Daryna Kutsyna | Last updated: August 14, 2018
Receiving a cease and desist 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 a cease and desist letter, then you do not have to respond, but it may be a good idea to do so (see our article on cease and desist letters). If you have been served with a statement of claim you must respond with a statement of defence within a particular time or the plaintiff may bring a motion for default judgment against you. Therefore, 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 is attempting to prove that the work in question is not actually protected by copyright, and was thus free to be used by anyone. 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; (c) the work could have been voluntarily placed in the public domain; and/or (d) the party from whom you have received the infringement notice or statement of claim does not have a right, title or interest to the work in question.

(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 have a complete response to the allegations of infringement. In order to make this assessment, you may want to contact a 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 plus fifty years following death. Where the work in question has multiple authors, copyright subsists for fifty years after the death of the last author.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 (with few exceptions that can be found in s. 11 of the Copyright Act), copyright subsists for fifty years following the calendar year of first publication. If the work was never published, copyright subsists for fifty years following the calendar year of making.

If you believe that the copyright on the work that you have used has expired in accordance with the above statutory limits, then the cease and desist letter that you have received does not have legal validity.

(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 of 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.

(d) The Plaintiff Does Not Own Copyright in the Work

Under section 41.23 of the Canadian Copyright Act, only a party that owns the copyright to the work or a party that derives title, right or interest in the copyright 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.

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 confusingly 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 fair dealing defence. The burden of proof for the fair dealing defence lies with the defendant, and requires proof that the dealing was for an allowable purpose under the Copyright Act, and that the dealing was fair in nature.

Allowable purposes for fair dealing 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. However, you must still prove that the dealing was "fair". The Supreme Court of Canada in CCH has 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.

(c) Specific Defences

There are several other defences available to those that have used a copyrighted work without the owner's consent, but they typically address a very specific set of circumstances.

Statutory exceptions to copyright include the use of copyright 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.

To see 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 would fall within any 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 and, if so, whether your use of the work would likely constitute infringement or would fall 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 to setup an initial complimentary and confidential telephone appointment to discuss your options.