Category Archives: Copyrights

Confirmation on Appeal of the Pyrrha Copyright Decision Involving Alleged Copying of Jewelry Design

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The Federal Court of Appeal (the “FCA”) recently confirmed a first instance decision from 2019 and relating the alleged copying of certain pieces of jewelry. The decision at issue is Pyrrha Design Inc. v. Plum and Posey Inc. (2022 FCA 7).

As one may remember, the original decision involved a dispute between competing designers of jewelry who both produced and sold certain pieces based on antique wax seals. Though there was unmistakable resemblances between the products at issue, the Federal Court held this did not amount to copying for the purposes of copyright law. Indeed, the concept of the jewelry at issue being the same, did not amount to actually copying works protected by copyright. Given the exact work by the original designer has not been copied (as opposed to the concept of such pieces, for example), no copyright infringement occurred in this case.

On appeal, the FCA validated the reasoning originally applied by the Federal Court, including how it analyzed the issue of the resemblance between the works at issue and whether there had been reproduction of a substantial portion of the original works. As held in the 2019 decision, the FCA decision confirms that, in order to ascertain whether there was infringement, it is appropriate to adopt  a two-step process, whereby one first determines whether there is substantial similarity between the works at issue, then ascertaining whether this resemblance actually relates to portions of the original works that were the fruit of the original artist’s actual contribution to the end result, meaning those that resulted from the exercise of his/her creativity, choices and judgment. In other words, though two works may look like one-another, if the overlap actually relates to pre-existing elements (in the public domain, as in this case) legally we should conclude there was no real copying and, thus, no infringement.

In so doing, the FCA confirmed it is preferable to adopt a holistic approach (by looking at the works at issue as a whole), by contrast to seeking to compare discreet elements/components side-by-side.

Here, one should note that the original artist’s treatment of the antique seals to turn them into jewelry was limited to slight changes to their borders and applying certain effects like oxidation and polishing. As such, these aspects were what his creative efforts resulted in, not the whole of the piece of jewelry, as such. Under such circumstances, the FCA confirms the scope of protection should be limited, as most of what constitutes the works at issue did not result from the exercise of the author’s skill and judgment.

This decision is also a good reminder that copyright law does not deal in concepts, methods or ideas. Having an idea to use antique wax seals as a basis for pieces of jewelry may be neat, but it is not something copyright law protects. The concrete expression of that idea, in designing actual pieces -yes, but not the idea itself. Though a competitor may have “stolen your idea”, it does not mean that we can necessarily do something about it, especially not through copyright law.

A Good Little Example of the Importance of Respecting the Moral Rights of Creators, in Canada, Yes Even After Securing a License as to a Work

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A Québec lower court recently provided us with a good (albeit modest) example of the problem that moral rights can be for Canadian businesses, when handling third-party creations such a photographs, without first obtaining an adequate waiver from creators. The case at issue was: Lavigne (Valmedia) v. 9061-6632 Québec inc. (2021 QCCQ 13322).

This case stemmed from a relationship between a Québec publication called “Journal Accès” and a free-lance photographer who provided certain of his pictures for reuse in the publication at issue. This case was not concerned with whether the publication could publish the 3 photographs at issue, as the creator had consented to the publishing. The issue rather involved how the photographs were presented, upon actual publication, namely after making certain changes to the photos at issues and, worse yet, without acknowledging who the author was.

For the author, the problems in this case included the removal of his logo from the photos, Access’ failure to credit him for taking the 3 pictures at issue, in addition to the publication making unauthorized changes to the photographs, included adjusting colors and cropping them.

Moral rights are a idiosyncrasy of Canadian copyright law, though technically distinct from “copyrights” per se. In effect, “moral rights” generally allow authors to insist that third parties which handle their creations not modify them to any degree one might consider would affect their integrity in a manner that may be prejudicial to the author. Moral rights also allow creators to insist on being acknowledged as the author, whenever a work is used, unless the parties agreed otherwise.

In the case at issue, the photograph had agreed to the publication of his photos but had NOT agreed to the modification of these photos, nor that they could be published without acknowledging he was the author. This justified the photographer taking Accès to court (in small claims court, but still), to obtain redress further to the alleged violation of his moral rights.

At the end of the day, the judgement does confirm that there really was an issue with moral rights in this case, albeit only as to the issue of identifying the photographer as the creator of the photos at issue, and nothing else. Indeed, thought Accès did modify the photographs to a certain extent, including correcting colors and cropping the images, the judge essentially came to the conclusion that such changes were minor enough to be unlikely to have a real effect on the photographer’s reputation, notwithstanding whatever else he may be claiming.

That said, for the judge, the omission of the photographer’s logo, as originally included on the 3 photographs at issue, coupled with the omission of his name next to the photographs pretty clearly constituted a violation of this moral rights. That being the case, one could apply the rules relating to statutory damages, to come up with a “damages” figure, with or without actual evidence of prejudice from the plaintiff.

In practice, this lead the court to award very modest damages ($400.00). The decision is nevertheless worth mentioning, if only as a example of the continued importance of keeping moral rights in mind, whenever dealing with the use of Canadian works. Even when an organization has first obtained a license (or even an assignment), the issue of moral rights may rear its ugly head later on, unless a full waiver was obtained. Failing that, the full recourses contained in the Copyright Act may be brought to bear for things like modifications or even the simple failure to acknowledge who the original author was.

The Federal Court Imports Copyright Infringement by Inducement into Canadian Law

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The Federal Court recently provided us with an interesting copyright decision, in Bell Canada v. L3D Distributing Inc. (2021 FC 832), a case that dealt with devices called set-top boxes (“STB”) used to stream content on TVs. In that case, a group of Canadian companies was sued by content owners and licensees, to stop these defendants from continuing to market and sell their STB devices in Canada, and ideally also obtain some compensation based on infringement of copyrights.

To make a long story short, in 2016 the group of plaintiffs that included Bell and Videotron sued some Canadian businesses marketing STBs in Canada, based on fact that such devices were largely being used by purchasers to infringe copyrights as to pirated TV shows and movies. The plaintiffs basically argued that availability of STBs made it too easy for Canadian consumers, allowing them to find, download and watch pirated content on their TVs. Indeed, thanks to these devices and instructions provided by the defendants at issue, Canadians could too easily get round the usual predictions against availability of pirated content -hence the proceedings filed before the Federal court.

We should mention that the defendants at issue not only marketed STBs in Canada but did so by promotion and information that made it clear that the typical function and use of these devices was essentially to obtain access to pirated content. In short, there was nothing subtle about the fact that activities of the defendants relied heavily on benefiting from allowing consumers to infringe copyrights on pirated content placed online by third parties. Looking at the promotional and other materials produced by defendants, it was clear that the main use of the devices at issue was to secure access to pirated content, particularly once purchasers installed a third-party add-on recommended by the defendants to enable pirating.

The federal court started by concluding that the defendants had in fact infringed copyrights over thousands of series and movies, by essentially making them available by telecommunications to Canadians. For the court, lack of actual copying, uploading or downloading may be disregarded in a blatant case such as this, as the defendants basically made content available through their devices and activities. Even though the defendant did not actually do any of the specific acts reserved to copyright owners by the Canadian act, the court held that the defendants’ activities related to STBs basically amounted to making pirated content available, a conclusion which many now question, including it seems to go beyond the actual provisions of the Copyright Act.

Interestingly, the Federal court here also went as far as holding that these defendants infringed copyrights not only directly (by making pirated content available, as described above), but also by merely encouraging, or rather inducing, Canadian users who purchased STBs to seek, download and watch pirated content placed online by third-parties. This is new law for Canada, as the Canadian Copyright Act does not contain any provision dealing expressly with inducement as a basis for finding infringement, contrary to the Patent Act, for example. For the court, the fact that Canadian common law generally provides for inducement as a basis for liability justifies importing that legal concept into copyright law, notwithstanding the absence of such a concept in our piece of copyright legislation.

Based on these findings of infringement, the court granted injunctive relief (of course) and awarded the plaintiffs 31 million dollars in statutory damages, along with some punitive damages, for good measure. Ouch.

I should mention that, not too surprisingly, the decision at issue was the result of ex parte proceedings and was a default judgment. One may express doubts as to whether the result would have been the same had the defendants actually participated and made submissions.

At any rate, I guess we’ll just have to see whether Canadian jurisprudence does really continue to import here the concept of infringement by inducement in copyright matters.