CA: Jurisprudence récente en droit d’auteur

Nicholas v. Environmental Systems (International) Limited 2010 FC 741

Avec extraits sur la notion d’absence de consentement requise pour établir la violation du droit d’auteur:

[94]           As the Federal Court of Appeal made clear in Positive Attitude Safety Systems Inc. v. Albian Sands Energy Inc. (2005), 43 C.P.R. (4th) 418 (FCA), at paragraphs 39 and 40, proof of copyright infringement requires proof of lack of consent:

39     However, even if one assumes that the motion judge was right to consider the question, the difficulty is that copyright is defined in terms of the absence of the consent of the owner of the copyright:


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. [Emphasis added.]

* * *

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.  [Non souligné dans l’original.]


Consequently, proof of copyright infringement requires proof of lack of consent. It is therefore illogical to conclude that there has been infringement, subject to the effect of a purported license. It may be that a party has done something which, by the terms of the Copyright Act, R.S.C. 1985, c. C-42, only the owner of the copyright may do. But, before that conduct can be defined as infringement, the judge must find that the owner of the copyright did not consent to that conduct.


40     As a result, the motion judge was not in a position to conclude, as he did, that the appellants infringed the respondents’ copyright subject to the effect of a purported license. Until the issue of consent was dealt with, there could be no finding of infringement.


[95]           It is also clear that the kind of licence that arises on the present facts does not need to be formulized in writing and can arise from the oral agreement of the parties as viewed in the general context. Ritchie v. Sawmill Creek Gold & Country Club Ltd. et al. (2004), 35 C.P.R. (4th) 163 (Ont. Div. Ct.) provides the following helpful summary of the law on this issue:

18     As a matter of law, a license that is a mere permission to do a certain thing, as opposed to a license that gives an ownership interest, need not be in writing. The Appellant hinges his argument on s. 13(4) of the Copyright Act which provides:

(4) Assignments and licenses. The owner of the copyright in any work may assign the right, either wholly or partially, and either generally or subject to limitations relating to territory, medium or sector or the market or other limitations relating to the scope of the assignment, and either for the whole term of the copyright or for any other part thereof, and may grant any interest in the right by license, but no assignment or grant is valid unless it is in writing signed by the owner of the right in respect of which the assignment or grant is made, or by the owner’s duly authorized agent.


19     It is significant that the licensing referred to is limited to licenses where there has been a “grant of an interest”. Some licenses, such as an exclusive license, can grant a property interest. Non-exclusive licenses do not transfer a property interest but rather give permission to do certain things: see Sunny Handa, Copyright Law in Canada (Markham: Butterworths, 2002 at p. 337).


20     The “grant of an interest” referred to in s. 13(4) is the transfer of a property right as opposed to a permission to do a certain thing. The former gives the licensee the capacity to sue in his own name for infringement, the latter provides only a defence to claims of infringement. To the extent there was any uncertainty as to the meaning of “grant of an interest” and whether this section applied to non-exclusive licenses, the issue was resolved in 1997 when the Copyright Act was amended to include s. 13(7):

(7)  For greater certainty, it is deemed always to have been the law that a grant of an exclusive license in a copyright constitutes the grant of an interest in the copyright by license.


21     The oral license granted to Sawmill Creek to use the photographs as it saw fit was a license operating as a permission to do certain things. This type of license does not fall within the ambit of s. 13(4). There is no requirement that such a license be in writing: see John S. McKeown, Fox Canadian Law of Copyright and Industrial Designs, 4th ed., looseleaf (Toronto: Thomson Canada Ltd., 2003) at pp. 19-26; Robertson v. Thomson Corp. (2001), 15 C.P.R. (4th) 147 at 186 (Ont.S.C.J.).


22     Non-exclusive licenses, such as the one granted to Sawmill Creek, may be in any form, including oral. There is no requirement that non-exclusive licenses be signed or in writing: see Handa, supra, at p. 338. The trial judge found that there was an express license between the Appellant and Sawmill Creek. The license granted by the Appellant to Sawmill Creek was a permission, which constitutes a defence to an infringement action. The trial judge made no error in law in finding that the license granted to Sawmill Creek constituted a defence to infringement.


[96]           Netupsky v. Dominion Bridge Co., [1972] S.C.R. 368 at pages 377-378 is also helpful on the facts of this case:

Judicial consideration of the precise point in issue in this appeal has not been extensive. I adopt the statement of principle of the Supreme Court of New Sough Wales in Beck v. Montana Constructions Pty. Ltd. [(1963), 5 F.L.R. 298.], at p. 304-5:


… that the engagement for reward of a person to produce material of a nature which is capable of being the subject of copyright implies a permission or consent or licence in the person making the engagement to use the material in the manner and for the purpose in which and for which it was contemplated between the parties that it would be used at the time of the engagement.


And further:


… the payment for sketch plans includes a permission or consent to use those sketch plans for the purpose for which they were brought into existence, namely, for the purpose of building a building in substantial accordance with them and for the purpose of preparing any necessary drawings as part of the task of building the building.


* * *


     There then remains the question whether there should be any implied right to transfer it and here I think that it must inevitably be implied that the owner, having commissioned the sketch plan and having obtained the right to use it for the purpose of erecting on that site a building in substantial accordance with it, should have the right to transfer that right to a new owner of the land.


    The Beck case has been followed in a recent decision of the English Court of Appeal, Blair v. Osborne and Tomkins [[1971] 2 W.L.R. 503.].


[97]           It is clear from Mr. Vollmer’s evidence that the Report was produced and paid for so that it could be used to secure investors in ESIL and the ESIL technology. No limitations were placed upon the way this was to be done at the material time when the contract for the Report was entered into. Also, the Plaintiff was willing to allow Mr. Vollmer to make changes to the Report for the purpose of attracting investors. There is evidence before the Court that the Plaintiff consented to Mr. Cook making alterations for the same purpose. This evidence was placed on the record by the Plaintiff in the form of a read-in from Mr. Cook’s discovery and an unsent letter composed by Mr. Cook confirming that the Plaintiff had authorized him to make any changes to the Report that he wanted to make. The Plaintiff denies having given his consent to the changes made by Mr. Cook but, as I have discussed above, this denial is not convincing given his willingness to allow Mr. Vollmer to make changes, the Plaintiff’s failure to specify any restrictions in writing and his failure to object to Mr. Cook’s modifications when they were brought to his attention. The contemporaneous evidence suggests that the Plaintiff wanted time to review those modifications so that he could decide whether to take his name off the modified report. It does not show him objecting outright to the modifications per se or to Mr. Vollmer or Mr. Cook and ESIL using the Report to attract investors.


[98]           Hence, I have to conclude that the Defendants had a licence, or at the very least implied consent, to use the Report in the way they used it other than the use that was made of the Report by Re-defining Water when it placed the Report on its website and attempted to use it in conjunction with the sale of its goods and services. The evidence does not suggest to me either a licence or implied consent for that particular use by Re-defining Water so that I believe the Plaintiff has proved infringement for that particular use by Re-defining Water and by Mr. Cook who authorized and instigated such use.


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