1 Copyright Subsistence
1.1 What are the requirements for copyright to subsist in a work?
Copyright exists automatically in every original literary, dramatic, musical and artistic work, published or unpublished, once the work is in a fixed form. The author must be a citizen or resident of Canada or any other treaty country (i.e. Berne Convention, World Intellectual Property Organization Copyright Treaty (“WCT”), Universal Copyright Convention (“UCC”) country or World Trade Organization (“WTO”) member) on the date of making the work.
A work must be original, meaning it was not copied from another work and the author exercised skill and judgment in creating it. The skill and judgment must not be so trivial that it could be characterised as a mechanical exercise (e.g. changing the font to produce another work).
1.2 Does your jurisdiction operate an open or closed list of works that can qualify for copyright protection?
Copyright protection extends to original works that are literary, dramatic, musical and artistic, and compilations being the selection or arrangement of literary, dramatic, musical or artistic works, as well as databases and other selections or arrangements of data. Specific works included in these broad categories are non-exhaustive, and include every original production in the literary, scientific or artistic domain, whatever the mode or form of expression.
Neighbouring copyrights extend to performer’s performances, communication signals and sound recordings.
1.3 In what works can copyright subsist?
Literary works include everything from books to computer software code, packaging and advertising text. Artistic works include paintings and etchings but also logos, maps, charts, photographs and architectural and technical drawings. Musical works include any work of music or musical composition, with or without lyrics. Dramatic works include cinematographic works, as well as plays, choreographic works and mimes, provided the scenic arrangement or acting form is fixed in writing or otherwise. Compilations include the selection or arrangements of original works, as well as databases or other original selections or arrangements of data.
1.4 Are there any works which are excluded from copyright protection?
While copyright can subsist in designs applied to a useful article, or artistic works from which the design is derived, once the useful article is mass produced (quantity of 50 or more), copyright may no longer be enforceable, with limited exceptions. These exceptions include graphics applied to the face of articles, trademarks, representations of people or characters, textiles and buildings. See question 1.7 for details.
1.5 Is there a system for registration of copyright and, if so, what is the effect of registration?
It is possible, but not mandatory, to register copyrights. Benefits of registration are: (a) the registration certificate is considered prima facie evidence of copyright subsistence in the work and copyright ownership; and (b) if the work is registered, an infringer cannot rely on a defence of “innocent infringement” which, if successful, limits an owner’s remedy to an injunction.
1.6 What is the duration of copyright protection? Does this vary depending on the type of work?
The general term of copyright in Canada is the life of the last living author plus 50 years following the end of the calendar year in which the author dies. On June 23, 2022, the Parliament of Canada passed legislation to extend the general term of copyright protection from life of the author(s) plus 50 years to life of the author(s), plus 70 years. This 20-year extension is not yet in force and will be implemented on a forthcoming date set by an order from the Governor in Council.
There are special rules for the term for anonymous/pseudonymous works, as well as posthumous works.
Copyright in works owned by the Crown subsists for 50 years following the end of the calendar year in which that work was first published.
Copyright in a performer’s performance subsists for 50 years from the end of the calendar year in which the performance occurs unless, during the term, the performance is fixed on a sound recording, in which case copyright subsists for 50 years from the end of the calendar year in which the fixation occurs; or, if during the term, that sound recording is published, copyright will subsist until the earlier of the end of the calendar year in which the sound recording was published, plus 70 years or 100 years after the end of the calendar year in which the fixation occurred.
Copyright in a sound recording subsists for 50 years from the end of the calendar year in which it was recorded; or, if during that term the sound recording is published, copyright subsists until the earlier of 70 years from the end of the calendar year in which first publication occurred, or the end of 100 years from the end of the year in which the sound recording was made.
1.7 Is there any overlap between copyright and other intellectual property rights such as design rights and database rights?
There is no separate (or sui generis) statutory protection for databases in Canada. Original compilations of data, resulting from the selection or arrangement of data, have copyright protection. The compilation cannot result from a mechanical exercise; for example, the database may not be considered original if the data entry process results in the “almost instantaneous” appearance in the database.
Under the Copyright Act (“Act”), where a design is applied to a useful article (i.e. an article that has some function other than merely serving as a substrate for artistic or literary matter) and that article is mass produced (50 or more copies), the copyright in that design on the article becomes unenforceable and the only protection for the article will be through registration under the Industrial Design Act. As noted, there are exceptions to this rule. The copyright will remain enforceable in (a) graphic or photographic representations applied to the face of an article, (b) a trademark or label, (c) woven or knitted materials or ones suitable for piece goods, surface coverings or making clothing, (d) architectural works/models of a building, (e) a representation of a real or fictitious being, event or place applied to the article, or (f) articles sold as a set, where less than 50 sets are made.
1.8 Are there any restrictions on the protection for copyright works which are made by an industrial process?
See question 1.7.
In addition, it is not a copyright infringement to copy, reproduce, reverse engineer, or make drawings of totally functional articles where all the design features are dictated solely by the article’s utilitarian features (e.g. a car valve).
2.1 Who is the first owner of copyright in each of the works protected (other than where questions 2.2 or 2.3 apply)?
Generally speaking, the first owner of the copyright is the author. The author is not defined in the Act, but will generally be considered the individual(s) who actually created the work through an exercise of skill and judgment.
There are exceptions, most notably, works made in the course of employment by employees, as discussed in question 2.3 below.
Also, the owner of copyright in a sound recording is its “maker”, i.e. the person by whom the arrangements necessary for the making of the recording are undertaken. This is typically the record producer or record label.
Copyright in works created or published under the direction or control of the Crown is owned by the Government.
Broadcasters own the copyright in their communication signals.
2.2 Where a work is commissioned, how is ownership of the copyright determined between the author and the commissioner?
Unless there is a written assignment from the author to the commissioning party, copyright in the commissioned work still automatically vests first in the author.
However, the commissioning party may have certain implied rights to reproduce and use the commissioned works.
2.3 Where a work is created by an employee, how is ownership of the copyright determined between the employee and the employer?
Copyright in works created by employees (i.e. those working under a “contract of service”), within the course of their employment, will automatically be owned by the employer unless there is an agreement to the contrary. There is no statutory definition of “contract of service” and the courts have looked at many common law factors in defining this term, primarily whether the employer has direct control over the employee’s work. Also, to be in the course of the employee’s employment, generally the work must fall within the scope of the employee’s duties. Despite this ownership structure, employees that author articles or other contributions to newspapers, magazines and similar periodicals have a right to restrain publication of their work other than as part of the newspaper, magazine or periodical, unless there is an agreement to the contrary.
2.4 Is there a concept of joint ownership and, if so, what rules apply to dealings with a jointly owned work?
The concept of joint authorship/ownership exists under the Act. A work of joint authorship is created where there is a collaboration of two or more authors in which the contribution of one author is not distinct from that of the other authors.
While not completely settled in Canadian law, it is generally accepted that joint authors own the work in equal shares as tenants in common as opposed to joint tenants. Therefore, generally speaking, one author cannot exclusively license or assign the copyright without dealing with the other joint authors/owners.
3.1 Are there any formalities which apply to the transfer/assignment of ownership?
Any assignment must be in writing and signed by the copyright owner or their duly authorised agent.
3.2 Are there any formalities required for a copyright licence?
A licence granting a proprietary interest in a copyright (e.g. an exclusive licence) must be in writing and signed by the owner of the copyright or their duly authorised agent. If the licence does not transfer a proprietary interest but merely permits actions by the licensee, which would normally be infringements, the agreement need not be in writing.
3.3 Are there any laws which limit the licence terms parties may agree to (other than as addressed in questions 3.4 to 3.6)?
Copyright in works generally automatically reverts to an author’s estate 25 years after the author’s death, meaning an exclusive licence (and assignment) made by the author of a work will not vest any rights 25 years following the author’s death, unless covered by the author’s will. Any agreement entered into by the author related to disposition of the reversionary interest is deemed void. There is an exception for collective works. Otherwise, there are no such laws under the Act; however, licence terms may be subject to restrictions under other laws, for example, competition laws.
3.4 Which types of copyright work have collective licensing bodies (please name the relevant bodies)?
There are numerous organisations in Canada involved in the collective licensing of rights of copyright for specific types of works. The major collective licensing bodies in Canada are: Access Copyright, which represents writers and publishers for the copying of literary materials; the Society of Composers, Authors and Music Publishers (“SOCAN”), which administers public performance and telecommunication rights in musical works for composers and music publishers, and more recently reproduction rights as well; the Canadian Musical Reproduction Rights Agency (“CMRRA”), which licenses reproduction rights, including synchronisation rights, in musical works for music publishers; CONNECT Music Licensing, which licenses the reproduction of sound recordings and the reproduction and broadcast of music videos on behalf of record companies, producers and artists; the Re:Sound Music Licensing Company, which collects royalties for performing artists and record companies concerning their performance rights; and the ACTRA Performing Rights Society (“ACTRA PRS”), which collects royalties for recording artists.
There are also several collectives in the Province of Quebec, which administer similar rights in French language works.
3.5 Where there are collective licensing bodies, how are they regulated?
The requirements to become a collective licensing body are set out in the Act. They are regulated, generally speaking, by the Canadian Copyright Board (“the Board”), an administrative tribunal created under the Act. Some collective licensing bodies must submit proposed tariffs to the Board, in both official languages, of all royalties to be collected. The Board, after proper review and hearing from the parties, certifies the tariffs to be paid for a set period of time. The Board may change the royalties or terms of any licence.
Other collective licensing bodies may, but are not mandated to, file their proposed tariffs with the Board for approval in the event that the licensing body and the users cannot privately agree on terms.
3.6 On what grounds can licence terms offered by a collective licensing body be challenged?
As stated, the Board can vary any terms in a collecting body’s proposed tariff as well as resolve disputes between collectives and users when they cannot agree on licence terms. Decisions of the Board can be appealed to the Federal Court of Appeal (“FCA”).
4 Owners’ Rights
4.1 What acts involving a copyright work are capable of being restricted by the rights holder?
The Act gives copyright owners the exclusive right to: (a) produce or reproduce the work, in whole or substantial part, in any material form; (b) perform the work, in whole or substantial part, in public; (c) publish the work, in whole or substantial part; (d) translate the work; (e) convert one type of work into another, e.g. a novel into a play; (f) make a sound recording or a film out of a literary, dramatic or musical work; (g) communicate the work to the public by telecommunication; (h) publicly exhibit artistic works created after June 7, 1988, for purposes other than rent or sale; (i) rent out a computer program or a sound recording; (j) where the work is in a tangible object, sell or transfer ownership of the tangible object as long as that ownership has never previously been transferred in or outside Canada with the copyright owner’s authorisation; (k) make the work available online to the public; and (l) authorise any of these acts.
Performers have rights in their performances to: (a) first fix them on a recording and make copies of the recording; (b) communicate live performances by telecommunication; (c) perform them in public; (d) rent out recordings of the performances; (e) make such sound recordings available to the public through online on-demand services; (f) if the sound recording is fixed in a tangible object, to sell/transfer ownership of the tangible object as long as that ownership has never previously been transferred in or outside of Canada with the performer/ copyright owner’s authorisation; and (g) authorise any of these activities.
Makers of sound recordings have the right to: (a) first publish the sound recording; (b) reproduce it in any material form; (c) rent it out; and (d) authorise any of these acts.
Broadcasters have the right in respect of their communication signals to: (a) record the signal; (b) make copies of that recording; (c) authorise another broadcaster to retransmit the signal to the public simultaneously with its broadcast; (d) perform a television communication signal in a place open to the public if an entrance fee is paid; and (e) authorise any of these acts.
In addition, it is prohibited under the Act (with some exceptions) to: (a) circumvent a technological protection measure (“TPM”); (b) offer, provide or market services that are primarily for the purpose of circumventing a TPM; or (c) provide or market any technology which is designed or produced primarily for the purpose of circumventing a TPM. It is further prohibited for a person to knowingly and, without proper consent, remove or alter electronic rights management information (i.e. information identifying the work, its author or other rights holder) if they knew or ought to have known that its alteration or removal would conceal or facilitate infringement. It is further prohibited for a person to knowingly sell, rent, distribute, or telecommunicate to the public a work where such information has been altered or deleted in violation of this section.
4.2 Are there any ancillary rights related to copyright, such as moral rights, and, if so, what do they protect, and can they be waived or assigned?
Authors and performers have moral rights in their works and performances, respectively. The right to the integrity of the work/performance is infringed if the work or performance, to the prejudice of the author’s or performer’s reputation, is: (a) distorted, mutilated or otherwise modified; or (b) used in association with a product, service, cause or institution. They also have the right, where reasonable, to be associated/credited with the work/performance by name or by pseudonym or to have their name removed from the work/performance. Moral rights exist as long as the associated copyright exists and can be bequeathed to the author’s/performer’s heirs. Moral rights cannot be assigned but may be waived. The same remedies are available for moral rights infringement as for copyright, namely, damages, injunctions and delivery of infringing copies.
4.3 Are there circumstances in which a copyright owner is unable to restrain subsequent dealings in works which have been put on the market with his consent?
Generally speaking, once copies of a work have been sold or otherwise distributed to the public, with the copyright owner’s consent, the right of first publication is exhausted and the copies can thereafter be re-sold or re-distributed without further consent of the copyright owner.
However, the rights of copyright set out above remain. Therefore, no subsequent owner of a lawfully distributed copy can exercise those rights without the copyright owner’s consent, e.g., make further copies, modify the copy, publicly perform or telecommunicate the copy, or translate it.
5 Copyright Enforcement
5.1 Are there any statutory enforcement agencies and, if so, are they used by rights holders as an alternative to civil actions?
No, there are no such agencies.
5.2 Other than the copyright owner, can anyone else bring a claim for infringement of the copyright in a work?
In addition to assignees, exclusive licensees may sue for copyright infringement.
Under certain circumstances, an “exclusive distributor” of a book, as defined under the Act, may prohibit the importation, sale, rental, distribution by way of trade, offer for sale or rental or public exhibition of books which were printed with the consent of the copyright owner in a foreign country.
5.3 Can an action be brought against ‘secondary’ infringers as well as primary infringers and, if so, on what basis can someone be liable for secondary infringement?
It is an infringement for any person to sell or rent, distribute to such an extent as to affect prejudicially the copyright owner, by way of trade distribute, offer of sale or rent, or exhibit in public, possess or import into Canada or export from Canada for any of these purposes, copies of a work, sound recording, performer’s performance on a sound recording, or communication signal that the person knows or should have known would infringe copyright or would infringe copyright if made in Canada by the person who made it.
The Supreme Court of Canada (“SCC”) in CCH Canadian Ltd. v. Law Society of Upper Canada stated that there are three elements to secondary infringement: (a) there must be a primary infringement; (b) the secondary infringer should have known that he or she was dealing with an infringing item; and (c) the secondary infringer sold, distributed, or exposed for sale the infringing items.
5.4 Are there any general or specific exceptions which can be relied upon as a defence to a claim of infringement?
There are numerous general and specific exceptions to infringement under the Act. The broadest exceptions, recharacterised by the SCC as “users rights”, not defences, are the fair dealing provisions which permit persons to make a fair use of copyright works for the purposes of research, private study, education, parody or satire.
Criticism and review and news reporting are also recognised as fair dealing purposes, provided the source, and if included in the source, the author’s, maker’s or performer’s name, are credited.
Even if the dealing is for a permitted purpose, it must also be fair. In determining this second issue, the courts look at six factors: (a) the purpose of the use; (b) the nature of the use (commercial v. non-commercial); (c) the scope of the use (amount copied, how many copies made); (d) alternatives to the use; (e) the nature of the work; and (f) the effect of the use on the market for the copied work.
Educational institutions, libraries, archives, and museums are also granted a series of narrower exemptions from infringement for specific uses of works. Likewise, there are specific acts permitted by religious organisations and charities or fraternal organisations.
There are also several infringement exceptions for individuals making non-commercial and personal uses of works, including for time-shifting purposes, transferring from one media to another, creating online user-generated content which contains third-party works without any motive of gain, and making additional copies of computer programs for back-up purposes or to make the program compatible with another program. There are restrictions on some of these personal use exemptions, including not circumventing TPMs (“digital locks”) to make these permitted uses.
Incidental, non-deliberate inclusion is deemed not to infringe.
There are also infringement exceptions for certain activities; for example, photographing architectural works such as buildings, and reading or reciting in public a reasonable extract from a published work.
Finally, in appropriate cases, the equitable defences of laches and estoppel are also available against infringement claims.
5.5 Are interim or permanent injunctions available?
Interim, interlocutory and permanent injunctions are available. Canadian courts have adopted a three-step test for granting interlocutory injunctions: (1) the applicant must show there is a serious question to be tried; (2) the applicant must also show that there would be irreparable harm to the their own interests if an injunction were not issued; and (3) the court must determine, on a balance of convenience, which party would suffer the greater harm by ordering or refusing the injunction.
5.6 On what basis are damages or an account of profits calculated?
Under the Act, an infringer is liable to pay the damages the
owner has suffered due to the infringement, along with the part of the infringer’s profits that were not taken into account when calculating damages. In appropriate cases of egregious behaviour by an infringer, a court may also award punitive damages.
Alternatively, a plaintiff can elect to receive statutory damages at any time prior to final judgment. The Act sets statutory damages with respect to all infringements of a commercial nature for each work in the proceedings, in a range of not less than CAD500 and not more than CAD20,000, at the discretion of the court. Where the infringement is not commercial in nature, the range of statutory damages is reduced to not less than CAD100 and not more than CAD5,000, with respect to all infringements involved in the proceedings for all works.
In certain equitable circumstances, the Act permits the court to further reduce the statutory damages awarded, per work, to below CAD500 for commercial infringements.
5.7 What are the typical costs of infringement proceedings and how long do they take?
Prosecuting an infringement action from filing the claim to trial typically takes a minimum of two years, often longer. The courts will hold status reviews to move proceedings forward to either settlement or trial but, often, it still takes years to complete the various stages of litigation and a trial. There are strategies that can be implemented in order to move through the court faster, and a copyright owner may choose to proceed by way of application (which is a paper-based procedure), which can be faster.
Costs vary depending on how many motions or other interlocutory steps arise in the litigation. Typically, the cost of taking an action to trial would be in the range of CAD150,000 to CAD400,000. Most actions, however, settle before trial.
5.8 Is there a right of appeal from a first instance judgment and, if so, what are the grounds on which an appeal may be brought?
Any decision of the Federal Court can be appealed to the FCA, pending leave from the Court. Appeals can be brought to challenge final decisions, judgments on a question of law or interlocutory injunctions.
If a copyright action is brought in a Provincial Court, which in some instances also has copyright jurisdiction, an appeal can be brought to the relevant Provincial Appeal Court.
5.9 What is the period in which an action must be commenced?
An action must be commenced within three years of the time when the plaintiff knew or was reasonably expected to know that the infringement had taken place. However, every time another infringing copy is made, it is considered to be a new infringement, which starts the three-year limitation period running again. Therefore, in cases of ongoing infringement over several years, an action will not be statute-barred by the time limitation, although the owner may not be able to obtain remedies for infringements occurring more than three years before the action was commenced.
6 Criminal Offences
6.1 Are there any criminal offences relating to copyright infringement?
Under the Act, it is a criminal offence to knowingly: (a) make infringing copies of a work, or other copyright-protected subject matter, for sale or rental; (b) sell or rent such infringing copies; (c) distribute such copies for the purposes of trade or to such an extent as to prejudicially affect the copyright owner; (d) publicly exhibit such infringing copies by way of trade; and (e) import or export or attempt to export such infringing copies into or out of Canada for sale or rental.
6.2 What is the threshold for criminal liability and what are the potential sanctions?
For criminal liability, the infringer must know that his/her actions are infringing.
If the infringer is convicted on summary conviction, he/she is liable to a fine of not more than CAD25,000 and/or a prison term of not more than six months.
If convicted on indictment, he/she is liable to a fine of not more than CAD1,000,000 and/or a prison term of not more than five years.
7 Current Developments
7.1 Have there been, or are there anticipated, any significant legislative changes or case law developments?
On June 23, 2022, the Parliament of Canada passed legislation to extend the term of copyright protection in literary, dramatic, musical, and artistic works from life of the author(s) plus 50 years to life of the author(s), plus 70 years. The necessary amendments to the Copyright Act, which were included in Bill C-19, the Budget Implementation Act, 2022, No. 1, will come into force on a date to be determined by the federal cabinet.
Upon coming into force in 2022, the term extension will not be retroactive, meaning any works the copyright of which expired on or before December 31, 2021, will remain in the public domain. Works that would have fallen into the public domain at the end of 2022, however, will remain subject to copyright protection for an additional 20 years, and all other existing and future works will be subject to the longer term.
The Government of Canada has agreed to conduct consultations regarding Artist’s Resale Right (ARR). ARR allows creators to receive a small portion of the resale price of their works whenever they are sold again by art market professionals.
The Artist’s Resale Right, once adopted, would allow an equitable sharing of wealth between creators and resellers of their works, and would see artists (or their heirs) receive a small percentage of the resale price of their works by commercial galleries or auction houses, for the term of copyright protection. Implementation of the ARR would have Canada join the ranks of more than 80 countries including France and the UK.
On the heels of the SCC unanimous 2021 decision in the York University v. Canadian Copyright Licensing Agency (Access Copyright) case in which the SCC ruled that copyright tariffs approved by the Copyright Board are not mandatory and therefore not enforceable against unwilling educational institutions, the Government of Canada hinted at its intention to amend the Copyright Act to ensure fair remuneration for copying in the educational sector through its 2022 Budget which can be accessed here: https://budget.gc.ca/2022/pdf/budget-2022-en.pdf.
Annex 3 ‘Legislative Measures’ of Budget 2022 states that:
The government is committed to ensuring that the Copyright Act protects all creators and copyright holders. As such, the government will also work to ensure a sustainable educational publishing industry, including fair remuneration for creators and copyright holders, as well as a modern and innovative marketplace that can efficiently serve copyright users.
Thus far, no plans have been revealed on potential amendments to the Copyright Act to implement this change.
In Rogers Media Inc. v. John Doe 1, the plaintiff media companies sought an interlocutory injunction requiring the third-party respondents, established Canadian Internet service providers (“ISPs”), to block Internet protocol (“IP”) addresses that host copyright-infringing pirate streams of live National Hockey League (“NHL”) broadcasts. On May 27, 2022, the Federal Court issued the injunction directing the ISPs to block access to certain IP addresses identified in real time during NHL hockey matches. This ruling represents the first dynamic site blocking order granted in Canada.
In Teksavvy Solutions Inc. v. Bell Media Inc., et al. the Supreme Court of Canada denied Teksavvy Solutions Inc’s application for leave to appeal a decision of the Federal Court of Appeal (2021 FCA 100), affirming the Federal Court’s decision in Bell Media Inc et al v Goldtv.biz et al, 2019 FC 1432, to grant a ‘static’ site blocking order where a specific number of sites were blocked with new sites being added only by order of the Court.
In Dish Network L.L.C. et al v. Butt et al. the Superior Court considered the appropriate penalty for the defendants’ contempt in copyright infringement proceeding which took place in the year prior. The defendants’ contempt consisted principally of continuing to stream television and movie content belonging to the plaintiffs over various networks operating under the name Shava TV or variations of that name. At the sentencing hearing, the Plaintiffs sought six and four-month prison terms for each of the two personal defendants, respectively. However, the Court found that since being held in contempt in Ontario, the defendants had taken steps to comply with the original court order. As a result, the Court found it more appropriate to deliver a sentence of a conditional discharge subject to probation of two years less a day.
In 2424508 Ontario Ltd et al v. Rallysport Direct LLC the Federal Court of Appeal upheld an earlier-obtained award to the plaintiff, Rallysport, at the trial level of statutory damages for copyright infringement as well punitive damages against two Ontario companies and their two directors and officers jointly and severally. Rallysport’s former authorised wholesaler scraped photos from Rallysport’s website for the wholesaler’s use to promote its own business. When Rallysport found out, it objected to the use of its photos and terminated its relationship with the wholesaler. In response, the wholesaler continued using the photos and Rallysport commenced a copyright infringement claim. During the proceeding, the wholesaler’s principals incorporated a new entity and transferred the wholesaler’s website content to the new entity. In 2019, the Federal Court held that Rallysport Direct’s copyright in 1,430 photographs had been infringed by its former authorised wholesaler. The wholesaler appealed the award of damages, on the ground that the amount awarded was disproportionate and excessive. The Federal Court of Appeal dismissed the wholesaler’s appeal of the damages award. The Court observed that in awarding statutory damages it may consider the good or bad faith of the defendant, the parties’ conduct before and during the proceedings, and the need to deter future copyright infringements.
7.2 Are there any particularly noteworthy issues around the application and enforcement of copyright in relation to digital content (for example, when a work is deemed to be made available to the public online, hyperlinking, in NFTs or the metaverse, etc.)?
In Society of Composers, Authors and Music Publishers of Canada v. Entertainment Software Association the SCC considered whether section 2.4(1.1) of the Copyright Act entitled authors to an additional “making available” royalty in Canada. In 1997, Canada signed the international treaty WIPO Copyright Treaty (“WCT”). Article 8 of the WCT provides that authors have the exclusive right to make their works available to the public. In 2012, the Copyright Modernization Act (“CMA”) amended the Copyright Act by adding s. 2.4(1.1) which modified s. 3(1)(f) and states that “communication of a work or other subject matter to the public by telecommunication includes making it available to the public by telecommunication in a way that allows a member of the public to have access to it from a place and at a time individually chosen by that member of the public”. As a result of this change the SOCAN required, and the Copyright Board of Canada (the “Board”) agreed, that s. 2.4(1.1) deems the act of making works available to be a separately protected and compensable activity resulting in users paying two royalties to access works online i.e. (1) when it is made available online (the offer to stream), and (2) when the work is actually streamed or downloaded (actually streaming). The SCC dismissed the appeal, upholding the Federal Court of Appeal’s decision to overturn the Board’s decision and concluding that Parliament did not intend to create a new compensable making available right, and that, properly interpreted, s. 2.4(1.1) did not subject downloads and streams to two royalties.
7.3 Have there been any decisions or changes of law regarding the role of copyright in relation to artificial intelligence systems, including the use of copyright in those systems and/or any work generated by those systems?
In 2021 the Federal Government of Canada launched a public consultation to develop a modern copyright framework for AI and the IoT. With respect to AI, the consultation paper covers three potential areas of reform: (1) text and data mining (“TDM”); (2) authorship and ownership of works generated by AI; and (3) copyright infringement and liability regarding AI.
For the first time in Canada the Canadian Intellectual Property Office accepted an application to register copyright in a painting where the co-author is an AI program. The painting’s human co-author, Ankit Sahni, used his RAGHAV Artificial Intelligence Painting App to ‘create’ the painting.
The Canadian Copyright Office does not examine applications, and generally issues registrations provided an application is duly completed. Consequently, the registration issuing does not yet set a precedent. Nevertheless, this is an interesting development which perhaps foreshadows how copyright law will evolve or be interpreted, as these types of “creative” AI technologies develop. Traditionally, the view in Canada has been that only a natural person can author a copyrighted work. Issuing the registration creates a presumption under the Act as to the validity of copyright and the veracity of the information found on the registration certificate that can only be disputed in court. This presumption can be rebutted, though, and therefore the issue is yet to be determined.
The authors of the 2023 edition of this chapter thank Jill Tonus, Naomi Zener and Lesley Gallivan for their contributions to previous editions of this chapter.
This article was first published in International Comparatives Legal Guides (ICLG) - Copyright, on October 18, 2022.