Intellectual Property Law - SCC

The appellant infringed a patent held by the respondents for metallocene linear low-density polyethylenes (thin but strong plastics).

Following a liability finding, a reference judge awarded the respondents an accounting of profits equal to the appellant's actual revenue minus actual full costs, and also awarded springboard profits — profits earned post-patent-expiry causally attributable to infringement during the patent period.

The majority dismissed the appeal, holding that an accounting of profits requires disgorgement of all profits causally attributable to the invention using a three-step framework; the appellant's concession that no non-infringing option existed precluded reduction of the award; and springboard profits are legally permissible and factually supported.

Côté J. dissented, arguing the differential profit approach should have been available and the matter remitted to the Federal Court.

The appellants challenged the Federal Court of Appeal's decision setting aside the Copyright Board of Canada's tariff determination, which had held that s. 2.4(1.1) of the Copyright Act created a separate compensable 'making available' right triggering royalties both when works are made available online and again when downloaded or streamed.

The majority held that the Board's interpretation violated the principle of technological neutrality and was inconsistent with the text, structure, and purpose of the Act; correctness was the applicable standard of review as concurrent first instance jurisdiction between courts and the Board constitutes a sixth category of correctness review.

Section 2.4(1.1) was interpreted as clarifying only that s. 3(1)(f) applies to on-demand streams and that a work is performed as soon as it is made available for on-demand streaming, with Canada's obligations under art. 8 of the WIPO Copyright Treaty satisfied through a combination of existing performance, reproduction, and authorization rights.

The concurring minority would have applied a reasonableness standard but agreed the Board's decision was unreasonable for disregarding binding precedent and the principle of technological neutrality.

Appeal dismissed.

A copyright collective society sought to enforce an interim tariff against a university that had refused to continue as a licensee, while the university counterclaimed for a declaration that its fair dealing guidelines protected its copying activities.

The Court held that Board-approved tariffs are not mandatory against users who choose not to be licensed, as the relevant statutory provision only gives a collective society the right to collect defaulted payments from voluntary licensees.

Because the tariff was unenforceable, there was no live dispute to ground the university's request for declaratory relief on fair dealing.

The Court nonetheless identified significant errors in the lower courts' fair dealing analysis, which wrongly focused exclusively on the institutional perspective rather than the perspective of the students as the ultimate users.

A land surveying company brought a class action on behalf of Ontario land surveyors whose plans of survey had been digitized, stored, and copied by the province's electronic land registry service provider without payment of royalties.

The appellant argued that Crown copyright under s. 12 of the Copyright Act did not vest in the registered and deposited plans.

The majority held that the comprehensive provincial land registration regime gave the Crown complete control over the publication process, satisfying the requirements of s. 12.

A concurring minority agreed on the outcome but adopted a different interpretive framework, requiring both that the work be published 'by or under the direction or control' of the Crown and that the work qualify as a 'government work' serving a public purpose.

The appeal was dismissed without costs.

The Court allowed the appeal and held that an Internet service provider may recover reasonable costs required to comply with a Norwich order, but not costs tied to obligations already imposed by the statutory notice and notice regime under ss. 41.25 and 41.26 of the Copyright Act.

Because the record did not permit a proper allocation between recoverable and non-recoverable work, the matter was remitted to the motion judge to determine the reasonable quantum, with Rogers permitted to adduce fresh evidence.

The Court allowed AstraZeneca’s appeal and held the patent ‘promise doctrine’ is not the correct approach to utility under s. 2 of the Patent Act.

It found the doctrine improperly imports disclosure obligations into the utility requirement and wrongly invalidates patents when one of multiple promised uses is unproven.

The correct test asks whether the claimed subject-matter has at least one practical use related to that subject-matter, demonstrated or soundly predicted at filing.

Applying that test, the ‘653 patent had sufficient utility and was not invalid.

The Court dismissed Google’s appeal and upheld a worldwide interlocutory injunction requiring de-indexing of websites used to sell products in breach of court orders.

The majority held courts may grant global injunctive relief against a non-party where necessary to prevent ongoing irreparable harm and where balance of convenience favours relief.

The dissent agreed jurisdiction existed but would have refused the order as effectively final, insufficiently proven effective, and available alternatives remained.

The Court held that broadcast-incidental copies engage the reproduction right and that no implied licence covered those copies, but allowed the appeal because the Copyright Board’s royalty valuation failed to apply technological neutrality and balance.

The 2008-2012 licence and related interim licence were set aside and remitted for reconsideration.

In this patent damages appeal under s. 8 of the Patented Medicines (Notice of Compliance) Regulations, the Court upheld the Federal Court of Appeal decision and dismissed the patentees' appeal.

The Court agreed with the majority's reasoning on liability period, market-entry assumptions, and compensation for lost sales tied to unapproved indications.

The Court considered whether a patent specification for erectile-dysfunction treatment satisfied disclosure obligations under s. 27(3) of the Patent Act where cascading claims ended with two individual compounds but did not identify the tested effective compound.

The Court held sufficiency must be assessed on the specification as a whole and not by isolating a single surviving claim under s. 58.

Because a skilled person would need further testing to determine which claimed compound worked, the specification did not enable successful use of the invention from the disclosure alone.

The appeal was allowed, the prohibition order was set aside, and the patent was held invalid for insufficient disclosure.

The appeal concerned whether downloading a video game containing musical works over the Internet engages the communication right under s. 3(1)(f) of the Copyright Act in addition to reproduction rights.

A majority held that applying a separate communication tariff to permanent downloads would offend technological neutrality because downloading a durable copy is functionally equivalent to purchasing a copy in physical form.

The majority interpreted the communication right as historically tied to performance-based activity and set aside the tariff certification as applied to downloads.

The dissent would have treated communication and reproduction as distinct independent rights both engaged by Internet downloads.

In a copyright tariff appeal concerning online music services, the Court addressed whether on-demand transmissions over the Internet constitute communication to the public by telecommunication under the Copyright Act.

The Court held that individual user-initiated streaming transmissions are not private in character when viewed as repeated transmissions to members of the public, and therefore remain within the communication right.

In light of the companion ruling on downloads, the download issue was moot and the appeal succeeded only to that extent.

The Court further held that correctness applied to the legal question under the statutory scheme, while a concurrence preferred reasonableness deference to the specialized tribunal.

The appeal concerned whether online music previews streamed before purchase are fair dealing for the purpose of research under the Copyright Act.

The Court held that research must be interpreted broadly and assessed from the user perspective, not only from the service provider perspective.

Applying the CCH framework, the Court found the previews fair in purpose, character, amount, alternatives, nature of the work, and market effect.

Because the previews were short, lower quality, temporary, and supported consumer selection without substituting for purchases, no additional royalties were payable for them.

In an appeal from judicial review of a copyright tariff ruling, the Court examined whether teacher-made classroom photocopies qualified as fair dealing for research or private study under s. 29 of the Copyright Act.

The majority held the tribunal unreasonably applied key fairness factors by separating teacher and student purposes, assessing amount on aggregate copying rather than excerpt-to-work proportion, treating additional textbook purchases as a practical alternative, and inferring market harm without an adequate evidentiary link.

Applying reasonableness review, the Court concluded the unfairness determination could not stand and remitted the matter for reconsideration.

A dissent would have deferred to the tribunal’s multifactor factual assessment and would have upheld the result despite one flawed effect-of-the-dealing finding.

In a copyright appeal, the Court considered whether pre-existing sound recordings embedded in film and television soundtracks remain subject to equitable remuneration under s. 19 of the Copyright Act when the soundtrack accompanies a cinematographic work.

Applying modern statutory interpretation, the Court held that the soundtrack exclusion in the definition of sound recording captures pre-existing recordings in that context.

The Court found this reading consistent with the legislative scheme, parliamentary intent, and international obligations under the Rome Convention.

As a result, the proposed tariffs could not be certified for performances or communications of recordings when accompanying cinematographic works.

On a motion in related leave applications, the moving parties sought an order requiring multiple opposing parties to post $3,250,000 as security for amounts payable if appeals were unsuccessful.

The Court held that security under s. 60(1)(b) of the Supreme Court Act has traditionally been symbolic and that the substantial security requested is ordinarily addressed in stay proceedings under ss. 65 or 65.1 or equivalent provincial provisions.

The Court found that existing stay conditions imposed by the court below continued to govern and that the motion effectively attempted to review that decision.

The Court also emphasized access-to-court considerations in the leave framework.

The motion was dismissed without costs.