Date:
20120621
Docket:
T-784-11
Citation:
2012 FC 803
Ottawa, Ontario,
June 21, 2012
PRESENT: The
Honourable Mr. Justice Rennie
BETWEEN:
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RICHARD WARMAN and
NATIONAL POST
COMPANY
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Applicants
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and
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MARK FOURNIER and
CONSTANCE
FOURNIER
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Respondents
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REASONS FOR
JUDGMENT AND JUDGMENT
[1]
The
applicant alleges infringement by the respondents of his copyright in three
works, and seeks several remedies in respect of that alleged infringement. For
the reasons that follow the application is dismissed in respect of all three
works.
Facts
[2]
This
application relates to the alleged infringement of Richard Warman’s (applicant’s)
copyright in three works. The first is a speech authored by the applicant, titled,
“Maximum Disruption: Stopping Neo-Nazis By (Almost) Any Means Necessary” (Warman
Work). The applicant authored the Warman Work in July 2005, and registered his
copyright in the Warman Work on February 18, 2011.
[3]
The
second work is an article authored by Jonathan Kay while he was employed by the
National Post Company (NP), titled “Jonathan Kay on Richard Warman and Canada’s Phony-Racism Industry” (Kay Work). The applicant obtained an exclusive license to
the copyright in the Kay Work through an agreement with NP on January 13, 2010.
The applicant registered his copyright in the Kay Work on March 10, 2011.
[4]
The
third work is a photograph of the applicant and another individual, taken by M.
Barrera (Barrera Work). The applicant obtained the copyright in the Barrera
Work by assignment on August 11, 2010, and registered his copyright on February
18, 2011.
[5]
The
respondents, Mark and Constance Fournier, operate the website
www.freedominion.com (Free Dominion). They describe Free Dominion as an online
political news discussion forum which is accessible to any member of the public
and which is used for discussing political issues from a conservative
viewpoint.
[6]
The
applicant states that he first discovered that the Warman Work had been
reproduced on Free Dominion in September 2007. The respondents acknowledge
that a copy of the Warman Work was uploaded onto the Free Dominion server at
that time. They state that it was a scanned copy of an exhibit in a Canadian
Human Rights Tribunal case. The applicant sent an email to the respondents
through a third party on October 7, 2007, demanding that the Warman Work be
removed from the website.
[7]
The
applicant states that he discovered in April 2010 that the Kay Work had been
reproduced on Free Dominion. The respondents state that the Kay Work was
posted in a discussion thread on Free Dominion on January 10, 2008 (although
the date of the post in the record appears as February 18, 2008). The
applicant demanded that the Kay Work be taken down on April 16, 2010, at which
time the respondents removed the Kay Work, but posted excerpts of the Kay Work
in its place.
[8]
The
applicant states that he discovered that the Barrera Work had been reproduced
on Free Dominion in August 2010, and that the Warman Work also continued to be reproduced
at that time. The respondents state that the Barrera Work was never uploaded
onto the server for Free Dominion; rather, a member posted an inline link to
the Barrera Work as it appeared on the applicant’s personal website on May 27,
2010. The respondents state that the Barrera Work was no longer displayed on
the applicant’s website and therefore the inline link no longer worked, as of
June 7, 2011.
Relevant Legislation
[9]
Section
27 of the Copyright Act (RSC, 1985, c C-42) (Copyright Act) defines
infringement of a copyright:
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Infringement generally
27. (1) It is an
infringement of copyright for any person to do, without the consent of the
owner of the copyright, anything that by this Act only the owner of the
copyright has the right to do.
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Règle générale
27. (1) Constitue
une violation du droit d’auteur l’accomplissement, sans le consentement du
titulaire de ce droit, d’un acte qu’en vertu de la présente loi seul ce
titulaire a la faculté d’accomplir.
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[10]
Section
3 of the Copyright Act sets out the rights included in a copyright in a
work:
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Copyright in works
3. (1) For the purposes of this
Act, “copyright”, in relation to a work, means the sole right to produce or
reproduce the work or any substantial part thereof in any material form
whatever, to perform the work or any substantial part thereof in public or,
if the work is unpublished, to publish the work or any substantial part
thereof, and includes the sole right
(a) to produce, reproduce,
perform or publish any translation of the work,
(b) in the case of a dramatic
work, to convert it into a novel or other non-dramatic work,
(c) in the case of a novel or
other non-dramatic work, or of an artistic work, to convert it into a
dramatic work, by way of performance in public or otherwise,
(d) in the case of a literary,
dramatic or musical work, to make any sound recording, cinematograph film or
other contrivance by means of which the work may be mechanically reproduced
or performed,
(e) in the case of any
literary, dramatic, musical or artistic work, to reproduce, adapt and
publicly present the work as a cinematographic work,
(f) in the case of any
literary, dramatic, musical or artistic work, to communicate the work to the
public by telecommunication,
(g) to present at a public
exhibition, for a purpose other than sale or hire, an artistic work created
after June 7, 1988, other than a map, chart or plan,
(h) in the case of a computer
program that can be reproduced in the ordinary course of its use, other than
by a reproduction during its execution in conjunction with a machine, device
or computer, to rent out the computer program, and
(i) in the case of a musical
work, to rent out a sound recording in which the work is embodied,
and to
authorize any such acts.
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Droit d’auteur sur l’œuvre
3. (1) Le droit d’auteur sur
l’oeuvre comporte le droit exclusif de produire ou reproduire la totalité ou
une partie importante de l’oeuvre, sous une forme matérielle quelconque, d’en
exécuter ou d’en représenter la totalité ou une partie importante en public et,
si l’oeuvre n’est pas publiée, d’en publier la totalité ou une partie
importante; ce droit comporte, en outre, le droit exclusif :
a) de produire, reproduire,
représenter ou publier une traduction de l’oeuvre;
b) s’il s’agit d’une oeuvre
dramatique, de la transformer en un roman ou en une autre oeuvre non
dramatique;
c) s’il s’agit d’un roman ou
d’une autre oeuvre non dramatique, ou d’une oeuvre artistique, de transformer
cette oeuvre en une oeuvre dramatique, par voie de représentation publique ou
autrement;
d) s’il s’agit d’une oeuvre
littéraire, dramatique ou musicale, d’en faire un enregistrement sonore, film
cinématographique ou autre support, à l’aide desquels l’oeuvre peut être
reproduite, représentée ou exécutée mécaniquement;
e) s’il s’agit d’une oeuvre
littéraire, dramatique, musicale ou artistique, de reproduire, d’adapter et
de présenter publiquement l’oeuvre en tant qu’oeuvre cinématographique;
f) de communiquer au public,
par télécommunication, une oeuvre littéraire, dramatique, musicale ou
artistique;
g) de présenter au public lors
d’une exposition, à des fins autres que la vente ou la location, une oeuvre
artistique — autre qu’une carte géographique ou marine, un plan ou un
graphique — créée après le 7 juin 1988;
h) de louer un programme
d’ordinateur qui peut être reproduit dans le cadre normal de son utilisation,
sauf la reproduction effectuée pendant son exécution avec un ordinateur ou
autre machine ou appareil;
i) s’il s’agit d’une oeuvre
musicale, d’en louer tout enregistrement sonore.
Est
inclus dans la présente définition le droit exclusif d’autoriser ces actes.
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Analysis
Warman Work
[11]
The
respondents do not dispute that copyright subsists in the Warman Work, or that
the applicant is the owner of the copyright as the author. I am satisfied that
these elements of establishing infringement are met.
[12]
I
find that, while the applicant has established prima facie
infringement of his copyright in the Warman Work, he is precluded from
obtaining any remedy for the infringement pursuant to section 41(1) of the Copyright
Act.
[13]
The
applicant has established that the respondents authorized the communication of
the Warman Work by telecommunication, by uploading a copy of it onto their
server. The Canada Copyright Board held in Public Performance of Musical
Works (Re), [1999] CBD No 5, at p 19, that a person authorizes
communication of a work by telecommunication when that person makes the work
available to the public on a server. The respondents do not deny doing this
and therefore I find that prima facie infringement has been established.
[14]
The
respondents advance several possible defences for this infringement but they
need not be considered because the applicant is not entitled to a remedy in
respect of this infringement, pursuant to section 41(1) of the Copyright Act,
which states:
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Limitation period for civil
remedies
41. (1) Subject to subsection
(2), a court may not award a remedy in relation to an infringement unless
(a) in the case where the
plaintiff knew, or could reasonably have been expected to know, of the
infringement at the time it occurred, the proceedings for infringement are
commenced within three years after the infringement occurred;
(b) in the case
where the plaintiff did not know, and could not reasonably have been expected
to know, of the infringement at the time it occurred, the proceedings for
infringement are commenced within three years after the time when the
plaintiff first knew, or could reasonably have been expected to know, of the
infringement.
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Prescription
41. (1) Sous réserve du
paragraphe (2), le tribunal saisi d’un recours en violation ne peut accorder
de réparations que si :
a) le demandeur engage des
procédures dans les trois ans qui suivent le moment où la violation a eu
lieu, s’il avait connaissance de la violation au moment où elle a eu lieu ou
s’il est raisonnable de s’attendre à ce qu’il en ait eu connaissance à ce
moment;
b) le demandeur engage des
procédures dans les trois ans qui suivent le moment où il a pris connaissance
de la violation ou le moment où il est raisonnable de s’attendre à ce qu’il
en ait pris connaissance, s’il n’en avait pas connaissance au moment où elle
a eu lieu ou s’il n’est pas raisonnable de s’attendre à ce qu’il en ait eu
connaissance à ce moment.
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[15]
The
applicant has acknowledged that he knew about the respondent’s infringement of
the Warman Work since September 2007. Thus, he did not bring this proceeding
within the limitation period prescribed by section 41(1) of the Copyright
Act and therefore he is time-barred from raising copyright infringement in
respect of that work: Philip Morris Products SA v Malboro Canada Ltd,
2010 FC 1099 at para 353.
[16]
The
applicant advanced two arguments on this issue: first, he alleged in his
affidavit that he learned of a new, subsequent infringement in 2010, and
therefore the application falls within the limitation period in respect of that
infringement.
[17]
This
allegation is not substantiated by the evidence. The applicant included a URL
in his affidavit that supposedly led to a second uploaded copy of the Warman
Work but, as the respondents note, that URL was not functional. The applicant
did not, for example, provide a printout of the Warman Work with that URL
listed at the bottom which would have been evidence that there was an additional
uploaded copy of the Warman Work. Thus, the only infringement of the Warman
Work established by the evidence falls outside the limitation period.
[18]
Second,
the applicant argues that, following the Court’s decision in Milliken &
Co. v Interface Flooring Systems (Canada) Inc. (1996), 123 FTR 269, 75 CPR
(3d) 481, the limitation period in section 41(1) of the Copyright Act does
not apply with respect to injunctive relief. In that decision, Justice
Tremblay-Lamer found that section 41(1) was inapplicable to an application for
an injunction, because of the equitable nature of that relief.
[19]
The
only cases cited in that decision date back to the 1920s. I would note that
recent cases of this Court and other courts, including those in which an
injunction was sought, have applied the limitation period and denied any remedy.
No exception was made for injunctive relief: Drolet v Stiftung Gralsbotschaft,
2009 FC 17; Smith v Hayden, 2010 ONCA 271. It is unclear whether the
parties in those cases argued that injunctive relief was available outside the
limitation period.
[20]
In
my view, even if section 41(1) does not preclude the granting of injunctive
relief, it at the very least informs the exercise of the Court’s discretion to
grant an injunction for copyright infringement. It would be contrary to
Parliament’s intent to find that an injunction is presumptively available for
an infringement if the application is brought outside the limitation period. It
is more consistent with the Copyright Act for the Court to limit the
exercise of its discretion to grant an injunction to circumstances where it
will have some practical effect and the balance of convenience strongly favours
granting the injunction. The Supreme Court of Canada (SCC) confirmed in CCH
Canadian Ltd. v Law Society of Upper Canada, 2004 SCC 13, at para 85, that
an injunction is an equitable remedy and thus within the Court’s discretion.
[21]
In
this case, the applicant has not shown that an injunction is necessary to
prevent further infringement; rather, the evidence is that the respondents have
removed the Warman Work from their server and the physical copies they retain
are for the purposes of defending the defamation action brought against them by
the applicant. Thus, I decline to exercise my discretion to grant an injunction
in respect of the Warman Work and this aspect of the application is dismissed.
Kay Work
[22]
The
applicant obtained an exclusive license to the copyright in the Kay Work on
January 13, 2010, and therefore is able to sue a third party for infringement:
Euro Excellence Inc v Kraft Canada Inc, 2007 SCC 37, at para 31. Once
again, the respondent does not dispute that copyright subsists in the Kay Work
or that the applicant is entitled to bring an application for infringement. The
respondents argue the application is also time-barred in respect of the Kay
Work; however, the applicant did not obtain license to the copyright until
2010, and therefore could not have become aware of infringement of his
copyright until that time.
No Reproduction of a Substantial
Part
[23]
The
applicant submits that the respondents infringed his copyright in the Kay Work
by reproducing excerpts from it. He argues that the reproduced excerpts
constitute a substantial part of the Kay Work, contrary to sections 3 and 27 of
the Copyright Act. Whether a substantial part of a work has been reproduced
is a question of fact and involves a qualitative rather than quantitative
analysis. The relevant factors to be considered include:
a. the
quality and quantity of the material taken;
b. the
extent to which the respondent’s use adversely affects the applicant’s
activities and diminishes the value of the applicant’s copyright;
c. whether
the material taken is the proper subject-matter of a copyright;
d. whether
the respondent intentionally appropriated the applicant’s work to save time and
effort; and
e. whether
the material taken is used in the same or a similar fashion as the applicant’s:
U & R Tax Services Ltd v H & R Block Canada Inc, [1995] FCJ No
962, at para 35.
[24]
Applying
those factors to this case, I find that the respondents did not reproduce a
substantial part of the Kay Work, and therefore there is no infringement.
[25]
Quantitatively,
the reproduction constitutes less than half of the work. The Kay Work itself
consists of a headline and eleven paragraphs. The reproduction on Free
Dominion included the headline, three complete paragraphs and part of a fourth.
Qualitatively, the portions reproduced are the opening “hook” of the article,
and the summary of the facts on which the article was based. Most of the
commentary and original thought expressed by the author is not reproduced.
[26]
Most
of the other factors are not directly relevant in this case given the
circumstances in which the applicant obtained the copyright: he does not appear
to “use” the subject matter of the copyright in the sense of reproducing or
publishing the Kay Work. It is a highly critical article about the applicant
and it appears he sought the exclusive license to the Kay Work in order to
prevent its further publication.
[27]
It
does not appear that the excerpts of the Kay Work were reproduced to “save time
and effort”. Based on the context of the posting, the respondents reproduced
portions of the Kay Work to preserve a record of the facts summarized in the
article, so that members of Free Dominion could continue to discuss those facts
on the forum. Also, contrary to the applicant’s argument, the reproduction
does include a summary or paraphrase of part of the work, specifically the
second paragraph.
[28]
Thus,
considering the matter as a whole, I find as a fact that the applicant has not
established that the excerpts of the Kay Work reproduced by the respondent
constitute a “substantial part” of the work, and there is therefore no
infringement.
Fair Dealing for the Purposes of News
Reporting
[29]
In
the alternative, even if the reproduced portions of the Kay Work amount to a
substantial part, I find that the respondents’ reproduction constitutes fair
dealing for the purposes of news reporting, pursuant to section 29.2 of the Copyright
Act.
[30]
The
SCC’s decision in CCH sets out important guiding principles in applying
the fair dealing exception. The SCC emphasized at paragraph 48 that fair
dealing is best understood as an integral part of the copyright regime and as a
user’s right, rather than a defence. In order to avail themselves of the
exception the respondents must establish first, that the dealing was for one of
the purposes articulated in section 29 of the Copyright Act, and second,
that the dealing was fair.
[31]
The
SCC stated in CCH, at paragraph 51, that the fair dealing purposes (in
that case, research) “must be given a large and liberal interpretation in order
to ensure that users’ rights are not unduly constrained.” Applying this large
and liberal interpretation to news reporting, I find that the respondents’
dealing in respect of the Kay Work falls within this purpose. They posted the
excerpts of the Kay Work on Free Dominion to promulgate the facts recounted in
that article. Thus, the first criterion for fair dealing is met. The news
reporting exception also requires that the source and author be mentioned,
which is also satisfied in this case.
[32]
The
SCC set out several factors that may be relevant in determining whether dealing
is fair in CCH, at paragraph 53:
(1) the purpose of the dealing; (2) the character of
the dealing; (3) the amount of the dealing; (4) alternatives to the dealing;
(5) the nature of the work; and (6) the effect of the dealing on the work.
Although these considerations will not all arise in every case of fair dealing,
this list of factors provides a useful analytical framework to govern
determinations of fairness in future cases.
[33]
These
factors militate in favour of a finding of fair dealing in this case. As
discussed above, the dealing was for one of the allowable purposes under the Copyright
Act. The amount of the dealing was very limited. The reproduced portion
of the Kay Work contained mostly facts and did not contain most of the original
commentary by the author. The nature of the work favours a finding of fair
dealing. The Kay Work is not currently published, which supports a finding of
fair dealing because one of the purposes of copyright law is to promote wider
dissemination of works: CCH, at para 58. Furthermore, the dealing is
not competing with the applicant’s use of the Kay Work because he does not seek
to publish it.
[34]
Some
of the factors weigh less strongly in favour of a finding of fair dealing:
there was arguably an alternative to the dealing, namely providing a summary of
the Kay Work instead of reproducing excerpts. Also, the character of the
dealing does not strongly support a finding of fair dealing. The excerpts are
widely distributed on the internet as opposed to the making of a private copy. However,
balancing all the factors together, I find that the reproduction of the Kay
Work falls within the fair dealing exception for the purposes of news
reporting.
[35]
Thus,
because the reproduction of the Kay Work did not constitute a substantial part,
and even if it did, the reproduction falls within the scope of fair dealing for
the purposes of news reporting, the application in respect of the Kay Work is
dismissed.
Barrera Work
[36]
The
application in respect of the Barrera Work must fail because any communication
of the Barrera Work by telecommunication was authorized by the applicant. Communication
of a work by telecommunication will only constitute infringement if it was
unauthorized. In Public Performance, the Copyright Board held at page
19 that making a work available on an internet website accessible to the public
constitutes authorization of communication by telecommunication:
“Authorization” constitutes a separate protected use
under the Act. To authorize is to sanction, approve or countenance. The person
who makes a musical work available on an Internet-accessible site authorizes
its communication. The work is posted for the sole purpose of being
communicated and with full knowledge and intention that such a communication
would occur. The person who makes the work available does more than merely
provide the means to communicate the work; he/she either controls or purports
to control the right to communicate it.
[37]
The
evidence is clear that the Barrera Work was posted on the applicant’s personal
website and thus the communication of the Barrera Work occurred by creating a
hyperlink to the applicant’s own website. Thus, the applicant authorized
communication of the Barrera Work by posting it on his website and therefore
there is no infringement.
[38]
Counsel
for the applicant argued that the respondents cannot rely on the fact that the
Barrera Work was posted on the applicant’s website because that would amount to
“blaming the victim”. However, the applicant is only a victim of infringement
if the respondents did something only he has the right to do without his
authorization. As the respondents submit, the Barrera Work was within the
applicant’s full control and if he did not wish it to be communicated by
telecommunication, he could remove it from his website, as he eventually did.
[39]
Therefore,
the application in respect of the Barrera Work is also dismissed.
Damages / Costs
[40]
The
respondents submit that the applicant has brought the administration of justice
into disrepute by making this application and that since it constitutes an abuse
of process, the Court should award punitive or exemplary damages against the
applicant. I agree with the applicant that the defence of abuse of process is
not applicable in this case. The application was not frivolous or vexatious,
nor have the respondents shown that the applicant unnecessarily lengthened the
proceedings or brought unnecessary motions.
[41]
It
appears that what the respondents are actually arguing is that the application
is an abuse of process because it was brought for an improper, collateral
purpose. The applicant was not seeking to exercise his copyright, but rather
was using the copyright regime as a means to harass the respondents because of
their political views. Thus, what the respondents appear to argue is actually
the tort of abuse of process; however, that is a separate action that must be
brought by the respondents. The Court makes no comment on whether the tort of
abuse of process could be established in this instance.
[42]
The
respondents also ask that the Court grant costs on the highest scale permitted.
However, they again have not presented any evidence of conduct of the
applicant during this proceeding that would warrant a higher cost award than
the norm. Therefore, party-and-party costs in accordance with Column III of Tariff
B are awarded.
JUDGMENT
THIS
COURT’S JUDGMENT is that the application for judicial review is
dismissed with costs to the respondents. Party-and-party costs in accordance
with Column III of Tariff B are awarded.
"Donald J.
Rennie"
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