Fighting Piracy vs Defending Privacy

ImageBy: Patrycja Nowakowska

In a recent Federal Court decision, VoltagePictures LLC v. John Doe and Jane Doe, 2014 FC 161 , the question of whether the rights of the copyright holders outweigh the privacy rights of those who download copyrighted material using P2P and BitTorrent sites was posed and answered in the affirmative.

The case echoed similar past actions regarding identity disclosure linked to file sharing of copyrighted material, namely the seminal case of BMG v John Doe where a group of music companies (BMG) attempted to force ISP’s to divulge the identities of KazAA and iMesh file sharers in order to proceed with suits for the alleged copyright infringements. The motion, known as ‘equitable bill of discovery’ was found to have to conform to evidentiary rules subsumed under Rule 238 of the Federal Court Rules:

 (1) A party to an action may bring a motion for leave to examine for discovery any person not a party to the action, other than an expert witness for a party, who might have information on an issue in the action.

. . .

(3) The Court may, on a motion under subsection (1), grant leave to examine a person and determine the time and manner of conducting the examination, if it is satisfied that

(a) the person may have information on an issue in the action;

(b) the party has been unable to obtain the information informally from the person or from another source by any other reasonable means;

(c) it would be unfair not to allow the party an opportunity to question the person before trial; and

(d) the questioning will not cause undue delay, inconvenience or expense to the person or to the other parties.

 BMG’s action was unsuccessful due to inadequate evidence linking IP addresses to file sharers and copyright infringement. The case did produce a test for granting the equitable bill of discovery which could order third parties (in this case ISPs) to provide names and addresses of the alleged copyright infringers under the following 5 criteria:

  1. plaintiff must establish bona fide case;
  2. party from whom discovery is sought must have the information at issue;
  3. party from whom discovery is sought must be the only practical source of information available;
  4. party from whom discovery is sought must be reasonably compensated for expenses arising out of compliance with the discovery order and legal costs;
  5. public interests in favour of disclosure must outweigh legitimate privacy concerns.

Applying the binding BMG precedent, the Federal Court held that a plaintiff must satisfy the test under Rule 238 along with a bona fide claim which requires that plaintiff demonstrate a real intention to bring action for infringement based on information obtained without any other improper purpose for seeking the identity of the infringers.  Interestingly, it was found that the bona fide standard was more appropriate in the case than the previous, and more stringent, prima facie standard – this preference for a lighter burden is yet another precedential export from BMG and Glaxo before it. Essentially, under prima facie, infringement must be proved before disclosure – a type of putting the horse before the cart exercise which has the potential of stripping plaintiff’s of a remedy. The bona fide standard requires simply that only infringement is actionable from the information requested without any other use of the data.

Another interesting application in the case involved the so-called ‘Norwich Order’ –  a pre-action discovery mechanism that compels a third party to provide certain data in its possession to provide potential litigants with crucial information that may be otherwise unattainable. In the case at hand, the court addressed important policy considerations in granting the Norwich order in this type of situation. It held that if the above bona fide claim of copyright infringement has been demonstrated by the plaintiff, the order will be granted albeit with qualifications to protect privacy rights of individuals and to avoid the exploitation of the judicial process to coerce innocent individuals to make payments in order to avoid expensive lawsuits.

The arguments brought forth by Voltage hinged on the fact that it has established the bona fide case through its statement of claim along with results from forensic investigations identifying IP addresses linked to the copyright infringements. The court agreed – the facts fit the BMG criteria – and Voltage’s rights to combat piracy outweighed the privacy interests of the affected internet users.

More than a post-scriptum however, was the court’s address limitations to the granted Norwich Order in order to minimize privacy risks to the internet subscribers.  Indeed, the court found value in Voltage’s position that infringers “ought not to be able to hide behind a veil of internet anonymity” but cautioned against the mischief created by compelling all TekSavvy-like parties to reveal private customer information. These so-called ‘copyright-trolling’ actions risk flooding courts with cases potentially involving innocent subscribers as there is no foolproof way to ascertain that a particular user was indeed the party downloading the material from the identified IP address simply by virtue of being connected to the address. As a way of alleviating the deleterious side-effects, the court offered a comprehensive nod to our common law neighbours in the US and UK for safeguards such as a court-preview and approval of the language employed in demand letters to the alleged infringers prior to send-off and a requirement of judicial case-management following any claim.

The case was meticulously reasoned, jurisprudence aptly respected and interests of both piracy pugilists and privacy protectors diligently balanced. Time will tell whether the holding will truly deprive trolls of their dubious legal antics but the prognosis is thus far evincing a positive direction.

Robinson Saga Comes to a Close

photo 1

By: Patrycja Nowakowska

December 2013, the Supreme Court of Canada handed down its decision in Cinar Corporation v. Robinson (see: Cinar Corporation v. Robinson, 2013 SCC 73) – a case that has been brewing in the courts for over a decade. In its unanimous decision the Supreme Court found in favor of Robinson and laid important precedential groundwork for some core copyright areas such as, inter alia, assessing the presence of a “substantial part” of work reproduction; the pertinence of expert evidence; as well as, assessment of damages for infringement including non-pecuniary damages cap; and punitive damages.


The facts revolved around an educational children’s tv show, a brainchild of Robinson which combined his own persona and experiences with Daniel Defoe’s iconic Robinson Crusoe novel (in the public domain). Robinson developed characters, drew sketches, and wrote scripts and synopses for the project entitled The Adventures of Robinson Curiosity. The work was shopped around but never came to fruition. By 1995, Robinson was surprised to discover a new children’s TV show, Robinson Sucroë with characters and environment there depicted closely resembling those of his work: a bearded, Robinson Crusoe-like protagonist with glasses and a straw hat who lives on an island and interacts with other characters including marauding villain pirates. The new show was a Cinar production – a company composed of individuals who had been given access to Robinson’s Curiosity project, namely Weinberg, Charest, and Izard. He concluded that Sucroë was copying Curiosity.

Judicial History

The Quebec Court found in favor of Robinson and awarded substantial damages. Court of Appeal affirmed in large part, differing on the amount of quantum where a cap for non-pecuniary damages was imposed and the amount lowered.


The issues at heart revolved around: the standing of Robinson (and his co-plaintiff, Nilem); Copyright infringement; the scope of personal liability for the infringement; Cinar, Weinberg, and Charest’s extra-contractual liability; profits disgorgement; non-pecuniary damages; as well as punitive damages. The highlights of the holding deal mainly with the copyright infringement framework hinging on a holistic as opposed to a particularized analysis; the expertise in such assessment; as well as the nature of the plaintiff’s suffering and the non-pecuniary damages resulting thereof.


I. The whole is greater than the sum of its parts:

For the first, the court emphasized its past mantra:

“the need to strike an appropriate balance between giving protection to the skill and judgement exercised by authors in the expression of their ideas, on the one hand, and leaving ideas and elements from the public domain free for all to draw upon, on the other”. (Théberge)

Affirming the approach of the lower courts, it was found that Cinar copied a number of features and that, considered as a whole, the copied features made for a substantial part of Robinson’s work. This approach diverged from a traditional three step approach. In such analysis the court would need to (1) determine what elements of the first work (Robinson’s Curiosity) were original according to Copyright Act; (2) exclude non protectable features of the work (ideas, elements drawn from the public domain, and generic elements commonplace in kids’ TV shows); and (3) compare what remains of Curiosity after this “weeding out” process to Sucroë, to see if a substantial part of Curiosity was reproduced. The court argued that this would risk dissecting Robinson’s work into its component parts and such exclusion of non protectable elements at the start of analysis would prevent a truly holistic assessment. It is rather the cumulative effect of the features copied from the work that must be considered to determine if the features sum up to a substantial part the author’s skill and judgement expressed in his work as a whole. The question should be if the copied features constitute a substantial part of the plaintiff’s work — not if they amount to a substantial part of the defendant’s work.

The SCC further held that indeed, the Copyright Act protects original literary, dramatic, musical, and artistic works as well as the expression of ideas through an exercise of skill and judgment in such works, rather than ideas in and of themselves but it does not protect every “particle” of an original work. Section 3 provides that the copyright owner has the sole right to reproduce “the work or any substantial part thereof”. But this “substantial part” of a work is a flexible notion – a matter of “fact and degree”, determined in relation to the originality of the work that warrants protection. The SCC concluded that a substantial part of a work is one that represents ample skill and judgment expressed therein.

Applied to the facts at hand, the court affirmed past finding that the overall architecture of Robinson’s television show was copied including graphic appearance and several aspects of the personality of the protagonist; personalities of the secondary characters; and the graphic appearance of the makeshift village. These features amounted to the overall manner in which Robinson’s ideas were expressed. But were these characters and idea that ties them together not just a spin on the 300 year old Defoe tale – elements now ingrained in pop culture and generic enough to be free to draw upon for inspiration? No. Curiosity’s particular combination of characters with distinct personality traits, living together and interacting on a tropical island ― elements that represent a substantial part of the skill and judgment. The gestalt wins over particulars – the forest swallows up the trees in perspective.

II. The perspective – who is the proper beholder?

The court agreed that the perspective of the lay person in the intended audience for the works at issue is useful for its merit of keeping analysis of similarities concrete rather than esoteric. However a rigid application of the “lay person in the intended audience” standard would restrict court’s ability to assess whether a substantial part of Robinson’s work was copied by shifting the question to whether the copied features were apparent to a five-year-old. The question was put beyond the lay person perspective and called on an expert – someone reasonably versed in the relevant art or technology: Dr. Charles Perraton, an expert in Semiology, the study of signs and symbols and how they convey meaning. His evidence stipulated that, apart from the surface meaning of the works, there were latent similarities in how the two works used atmosphere, dynamics, motifs, symbols, and structure to convey meaning.

III. Non-pecuniary Damages: to cap or not to cap

The SCC chose to characterize Robinson’s psychological suffering as a non pecuniary damage stemming from material injury. The infringement of copyright was a breach of property rights- an initial breach, a material injury with pecuniary consequences (the profits generated by its use) and non-pecuniary consequences (psychological injury of stress and emotional distress). In assessing quantum for this injury, the courts found the damages analogous to those claimed by victims of defamation. Non-pecuniary loss as a broad category, covers elements such as “loss of enjoyment of life, esthetic prejudice, physical and psychological pain and suffering, inconvenience, etc…” Non-pecuniary damages have been subject to a quantum cap, known as the Andrews cap. However, precedent has been laid in Hill, for a non-application of the cap to non-pecuniary damages stemming from defamation.

Applied to the facts, the court found that Cinar, consistently and contemptuously denied access to the work, and disparaged Robinson’s claims that they copied his work. The impact of this conduct was serious by depriving him of a source of revenue, as well as his sense of proprietorship over a project that had deep personal significance. The court found that the amount of $500,000 reached an appropriate balance between the overarching principle of restraint that governs these damages, on the one hand, and the need to deter conduct of this gravity, on the other. Lastly, the court held that awarding punitive damages on a solidary basis would be inconsistent with the principles set forth in art. 1621 of the Civil Code of Québec, which requires that the punitive objectives such as prevention, deterrence (both specific and general), and denunciation of acts that are particularly reprehensible in the opinion of the justice system, be taken into account. Thus awards of punitive damages must be individually tailored to each defendant against whom they are ordered.

Oracle v Google: The Java Battle Not Over

Image By: Patrycja Nowakowska

Last spring, Oracle America, Inc. v. Google, Inc. of the United States District Court for the Northern District of California, confronted copyright and patent law in relation to application programming interfaces (API’s), namely Java. It was found that copyright’s reach did not extend that far. The decision, favoring Google, is being appealed at the Federal U.S. Circuit Court of Appeals.

The facts

In 2010, Oracle acquired Sun Microsystems ‘Sun’, the original developers of computer programming language, Java.

Much of Java has already been released as free and open software, ‘FOSS’, in 2007 with virtually all of its core code available under free software/open-source distribution terms of the GNU General Public License ‘GPL’. Within seven months, Google took advantage of the freebies, releasing a beta of its acquired Android platform and acknowledging the incorporation of some of Java’s technology. Pre-Oracle-owned Sun was supportive and some talk of partnering up as well as licensing possibilities ensued but never reached fruition.

By January of 2010, Oracle was the new owner of Sun and negotiations were reopened, again with no agreement reached. However, because Google used Java as a key pillar in the Android operating system and in the applications design for the Android platform, Oracle filed a copyright and patent infringement suit by August 2010.

Judicial History:

A federal jury ruled in Google’s favour under, among other factors, a correct deployment of “fair use”. Subsequently, Hon. William Haskell Alsup ruled on May 31, 2012 that API’s cannot be copyrighted.

Oracle’s arguments that the method header lines were identical, did not seal the deal for infringement under Copyright Act’s s. 102(b), which stipulates:

“In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.”

As the method header lines were deemed to comprise no more than a “system or method of operation”, the code of implementation was found to be distinct and thus non-infringing. The court opted for a more cautious approach to copyright, in keeping with the s. 102(b) and a weariness of copyright monopoly over what should be conferred only by patent.


Oracle is preparing an appeal to reverse Justice Alsup’s ruling as well as the jury verdict concerning Google’s correct application of the “fair use” defense. The case, Oracle America Inc v. Google Inc, Federal U.S. Circuit Court of Appeals 13-1201, is awaiting a reply brief from Google due in May.

The Oracle appellate brief maintains that Google’s use of Java structure was “decidedly unfair” pointing out that the creativity, resources, labour and originality of the works copied deserve protection. Oracle attorney, Joshua Rosenkranz, illustrated Google’s behavior with a hypothetical scenario: suppose an individual, “Ann Droid,” obtains an advance copy of a Harry Potter novel, copies all the chapter titles, topic sentences of each paragraph and then paraphrases the rest. This surely would not constitute non-infringement. This is presented as analogous to the actions of Google in its use of Java API’s. Whether the argument holds water will remain to be seen. It will be worthwhile to see if protectionist arguments pointing to other media can withstand the nuanced differences that technology ushers in when responding to the questions of what is originality.

Cinar/ Robinson Copyright saga hits SCC

“What a good thing Adam had–when he said a good thing, he knew nobody had said it before”
– Mark Twain’s Notebook



By: Patrycja Nowakowska

The France Animation v Robinson,  2011 QCCA case (also known as Cinar v Robinson) found its way to the Supreme Court on February 13th, 2013. IP IT & Policy Club of McGill Law joined U of Ottawa Law students in attendance to witness the proceedings first-hand.

The main thrust of this appeal deals with the possibility of infringement vis-à-vis the cartoon sketches of characters of Mr. Claude Robinson’s (unaired) pilot, Robinson Curiosite and Cinar and France Animation’s co-produced, aired series, Robinson Sucroe.

The defendant/appellants, Cinar and France Animation point to Daniel Defoe’s character Robinson Crusoe from his 1791 novel as the common point of similarity – the work is now in the public domain. They also structure their argument on the integrity of the work as diverging from particulars. In other words, copyright needs to take each particular detail into consideration as a detail as opposed to beholding the completed gestalt as the comparative work– this is where expertise ought to outweigh layperson perceptions of similarities. Another need for such expertise deals with partial completion and alteration of the work. The arguments boil down to ss. 2 and 3 of Copyright Act’s definition of “cinematographic work” and “maker”.

Trial judge found for Mr. Robinson’s claims of infringement and the Court of Appeal upheld the judgment, in part. The case has been loitering the courts since 1996.

In terms of remedy, respondent pleadings elaborated on the following areas: the idea of separating defendants and avoiding solidarity; the “patent standard” in calculating profits; damages’ tests for moral, psychological and/or physical under Quebec law; and quantum determination based on facts.