Oxford professor and intellectual property expert David Vaver, defines Intellectual Property as “a term that denotes copyrights, patents, trade-marks, trade-names, industrial designs, plant breeders’ rights, and ICT rights, and sometimes rights arising from provincial law relating to, for example, trade secrets, misappropriation of personality, and passing off. Both “intellectual” and “property” may be misnomers.”

Infringement takes place whenever a person exercises any of the copyright owner’s exclusive rights without consent. Infringement actions are generally brought before the Federal Court of Canada and typically fall under the broad category of civil law, where litigants are private parties.

Defences for copyright infringement are various. Important ones include contesting the plaintiff’s alleged ownership of the intellectual property, claiming that a minimal amount of the work was taken, or arguing that the use constituted a “fair dealing” under the Copyright Act. The “fair dealing” exemptions permit reasonable copying of a work for limited non-commercial purposes, such as research, private study, criticism, review or news-reporting. Given the commercial requirement within sections 42 and 43 of the Copyright act, the defence of “fair dealing” for those specific offences are typically reserved for non-criminal matters.

In some circumstances however, criminal prosecution may occur. The defendant if convicted may be liable to a fine or a term of imprisonment.

What is then a criminal offence with respect to intellectual property? One might immediately think of large scale media piracy or the importation and sales of counterfeit goods for instance. I will not dwell on the obvious in this article, but focus rather on the less obvious situations that could indeed lead to a criminal indictment.

Sections 42 and 43 of the Copyright Act stipulate the following:

42. Every person who knowingly

(a) makes for sale or rental an infringing copy of a work or other subject-matter in which copyright subsists,

(b) sells or rents out, or by way of trade exposes or offers for sale or rental, an infringing copy of a work or other subject-matter in which copyright subsists,

(c) distributes infringing copies of a work or other subject-matter in which copyright subsists, either for the purpose of trade or to such an extent as to affect prejudicially the owner of the copyright,

(d) by way of trade exhibits in public an infringing copy of a work or other subject-matter in which copyright subsists, or

(e) imports for sale or rental into Canada any infringing copy of a work or other subject-matter in which copyright subsists

is guilty of an offence and liable

(f) on summary conviction, to a fine not exceeding twenty-five thousand dollars or to imprisonment for a term not exceeding six months or to both, or

(g) on conviction on indictment, to a fine not exceeding one million dollars or to imprisonment for a term not exceeding five years or to both.

43. (1) Any person who, without the written consent of the owner of the copyright or of the legal representative of the owner, knowingly performs or causes to be performed in public and for private profit the whole or any part, constituting an infringement, of any dramatic or operatic work or musical composition in which copyright subsists in Canada is guilty of an offence and liable on summary conviction to a fine not exceeding two hundred and fifty dollars and, in the case of a second or subsequent offence, either to that fine or to imprisonment for a term not exceeding two months or to both.

Change or suppression of title or author’s name

(2) Any person who makes or causes to be made any change in or suppression of the title, or the name of the author, of any dramatic or operatic work or musical composition in which copyright subsists in Canada, or who makes or causes to be made any change in the work or composition itself without the written consent of the author or of his legal representative, in order that the work or composition may be performed in whole or in part in public for private profit, is guilty of an offence and liable on summary conviction to a fine not exceeding five hundred dollars and, in the case of a second or subsequent offence, either to that fine or to imprisonment for a term not exceeding four months or to both.

I have bolded the key elements of sections 42 & 43, namely knowledge, meaning that the Crown must prove that the accused had the intent to commit the offence. Secondly, the commercial aspect, the Crown must prove that the offender’s actions were for profit.

In R v. Allen the accused was charged under section 42(1)(a) of the Act with having infringed a copyright  held on a book of maps of the City of Calgary. The offence consisted of  the accused’s tracing of a the copyrighted map to produce his own to be sold commercially. The defendant challenged the “originality” of the copyright holder’s work, arguing that there is no copyright in “facts”. The judge concluded that the originality of the infringed work resided in the manner of compiling and presenting the information.  The defendant was found guilty.

In R v. Fiset, a thorough dissection of  section 42(1) (a) was undertaken by the court. The defendant was accused of making for sale, between March 9 and 26, 2008, infringing copies of nine artistic works, contrary to section 42(1)(a) of the Act. The accused in this matter was an artist that had painted copies of another artists works. She testified to the effect that the infringed copies were intended as gifts for her children, and that only once she had faced financial difficulties did she decide to put them up for sale.  The court determined that even though the works were obvious copies and that they were in fact intended for sale, the prosecution must prove that the, intent to sell and the making of the infringing copy, was “contemporaneous and concomitant” in order to meet the requirements of section 42(1)(a). The judge concluded that the Crown was unable to prove that both intent to sell and the making of the copies coexisted during the period covered by the charges, namely between March 9 and 26, 2008. The defendant was therefore acquitted. Had the Crown opted for section 42(1)(b) instead of 42(1)(a) of the Copyright Act, it would have likely secured a conviction.

It is worth mentionning that unlike all summary offences prescribed in the Canadian Criminal Code which have a 6 month statutory limitation, the crown has up to 2 years to lay summary charges under sections 42 & 43 of the Copyright Act from the date of the offence.

Important ammendments have recently been introduced to the Copyright Act. The Copyright Modernization Act (Bill C-11) has received royal assent as of June 29th 2012 and will become law on a date to be announced. The purpose of this law is to update the Copyright Act so that it may be more compatible with the digital age.

Circumvention of technological protection measures, i.e: breaking digital locks, is a controversial new offence that has been the focus of much debate.

The new offence is introduced as follows:

41.1 (1) No person shall

(a) circumvent a technological protection measure within the meaning of paragraph (a) of the definition “technological protection measure” in section 41; …

I invite you to read the section of the law in its entirety at the following page.

Section 42 of the Act is amended by adding the following after subsection (3):

3.1) Every person, except a person who is acting on behalf of a library, archive or museum or an educational institution, is guilty of an offence who knowingly and for commercial purposes contravenes section 41.1 and is liable

(a) on conviction on indictment, to a fine not exceeding $1,000,000 or to imprisonment for a term not exceeding five years or to both; or

(b) on summary conviction, to a fine not exceeding $25,000 or to imprisonment for a term not exceeding six months or to both.

There are several listed exceptions to this rule which I will not go into. But one important one that does not appear to be listed is the breaking of a digital lock on purchased films such as DVD’s and blu-ray’s. This in theory would criminalize the act of breaking a digital lock on a blu-ray  in order to make a digital copy for your tablet device.

It is of course one thing to criminalize a certain activity and another thing to prosecute it. There are obscure crimes in the criminal code that still exist to this day, nocturnal water skiing for instance. Time will only tell to what extent  these new amendments will be enforced and challenged.