• Low-Cost Procedures for Effective Copyright Litigation
  • July 5, 2013 | Author: Eve Heafey
  • Law Firm: Smart & Biggar/Fetherstonhaugh - Ottawa Office
  • Canada is home to very attractive options for those contemplating the initiation of copyright infringement proceedings.

    For example, the Canadian Copyright Act (the “Act”) contains specific provisions that enable copyright owners to obtain highly cost-effective relief for infringement claims. These special provisions relate to:

    1. the availability of summary proceedings in copyright infringement matters, namely applications and robust summary judgment and trial procedures in actions; and
    2. the availability of statutory damages that simplify the assessment of damages to be awarded.

    Summary proceedings. Section 34(4)(a) of the Act provides that proceedings for infringement of copyright or moral rights may be commenced by way of application rather than by way of a more complicated action. Further, motions for summary judgment and summary trial can be brought in most courts in Canada, including in the Federal Court, which hears most IP matters in Canada.

    In proceedings brought by way of an application, as well as in summary judgment and summary trial motions, evidence is filed by affidavit. Although the affiants are subject to cross-examination, there is generally no live testimony of witnesses at the hearing, nor wide-ranging discoveries like in proceedings brought by way of an action. As such, Canadian copyright litigation can be conducted quickly and cost-efficiently.

    Statutory damages. The Act also contains statutory damages provisions that allow the plaintiff to elect to recover compensation per work infringed — as opposed to compensation for actual damages (and/or the infringer’s profits) — based on the number of infringing copies. Statutory damages eliminate the difficult exercise of establishing the quantum of damages the plaintiff suffered or the quantum of illegitimate profits derived by the defendant from the infringement.

    In particular, section 38.1(1) provides that statutory damages may be awarded by the court “in a sum of not less than $500 and not more than $20,000” for each work infringed with the proviso that, pursuant to section 38.1(3), even the minimum amount can be lowered on the basis of proportionality of damages to the infringing activity “as the court considers just.”

    As an example, in a recent case Smart & Biggar handled in the Federal Court — Adobe Systems Incorporated, Microsoft Corporation and Rosetta Stone Ltd v Dale Thompson, 2012 FC 1219 — the Court granted summary judgment, including broad injunctive relief and a monetary award of well over $400,000 on a motion for summary trial based on affidavit evidence filed by the plaintiffs. Maximum statutory damages were awarded in respect of unauthorized reproduction of software works proven to have been reproduced without authority through purchases made by the plaintiffs and unauthorized reproduction of cover art from software products of the plaintiffs by the defendant on the Internet.

    Conclusion. The availability of statutory damages and efficient enforcement options may make copyright infringement an attractive cause of action, even where infringement of other forms of intellectual property such as trade-marks is the primary concern. IP rights holders hoping to deal with an infringement matter should always consider possible copyright claims and the options offered by the Canadian Copyright Act, which can provide fast and simple procedures for addressing infringement of their rights.