Law Times

Page 10 September 26, 2016 • Law timeS www.lawtimesnews.com Issue around access to copyrighted shows and movies Ruling stops sale of set-top boxes, for now BY MICHAEL MCKIERNAN For Law Times A Federal Court judge has opened the door to an expansion of the inducement doctrine into the copyright realm after granting an interlocutory in- junction that prevents the sale of set-top boxes pre-loaded with applications promising free ac- cess to copyrighted television shows and movies. As part of her decision grant- ing the temporary injunction, Federal Court Justice Danièle Tremblay-Lamer identified alle- gations that sellers of the set-top boxes were inducing users to in- fringe copyright as a "serious is- sue" to be decided at a later date by the trial judge. Toronto lawyer Catherine Lovrics says Canadian courts have so far limited findings of inducement in the intellectual property context to patent cases. "The court here seems to ac- cept that it was at least arguable that copyright infringement can include inducing others to in- fringe, which is a U.S. concept that has not been embraced yet in Canada," says Lovrics, a part- ner with IP boutique Bereskin and Parr LLP. "If that were to be held at trial, it would certainly be precedential." Many mainstream retailers sell set-top boxes, which con- nect standard televisions to the Internet in order to stream con- tent. However, this court action, brought by a coalition of broad- casters and copyright holders including Bell Canada, Rogers Communications and Video- tron, targets smaller operations that modify the boxes by pre- loading applications that link to illegal streaming sites where copyrighted material can be ac- cessed cheaply or for free. In her June 1 decision granting the injunction in Bell Canada v. 1326030 Inc., Tremblay-Lamer wrote that, in her view, the only reason users were able to access infringing content was because the pre-loaded applications made it "extremely easy to do so." The marketing materials of the defendants, which included claims that consumers would be able to "cancel cable today" but still watch all of their programs for free, also factored into her conclusions on the inducement allegations. Another retailer la- belled itself as the "Original Cable Killer" and gave users detailed in- structions on how to access copy- right-infringing content. "While some consumers might have the desire and tech- nical knowledge to seek out and download such applications, many others might not. The De- fendants market themselves to consumers specifically on the basis that their 'plug-and-play' set-top boxes make it easy to eliminate the need for a cable subscription," Tremblay-Lamer wrote. "I am satisfied that the al- legations of inducement consti- tute a serious issue." One of the defendants, Vin- cent Wesley, the owner of mtl- freetv.com, a retailer targeted by the plaintiff broadcasters, argued against the injunction on the basis that they had failed to make out a prima facie case for copyright infringement. Comparing his pre-loaded set- top boxes to other hardware devices such as a tablet or com- puter, Wesley's position was that they are nothing more than a "conduit with substantial non- infringing uses," according to Tremblay-Lamer's judgment. But she was having none of it, ruling this was not a case where "the defendants serve merely as a conduit. "Rather, they deliberately en- courage consumers and poten- tial clients to circumvent autho- rized ways of accessing content — say, by a cable subscription or by streaming content from the Plaintiffs' websites — both in the manner in which they promote their business, and by offering tutorials in how to add and use applications which rely on il- legally obtained content. The statutory defence provided in paragraph 2.4(1)(b) of the Copy- right Act does not apply to the Defendants who go above and beyond selling a simple 'means of telecommunication.' They also engage in acts related to the content of the infringed com- munications," she added. "Con- sumers can consequently stream or download the Plaintiffs' pro- grams and store them on their device without authorization from the Plaintiffs. This consti- tutes prima facie copyright in- fringement pursuant to section 27 of the Copyright Act." In a brief interview, Montreal lawyer Constantin Kyritsis, who acts for Wesley and another de- fendant, WatchNSaveNow Inc., tells Law Times that Tremblay- Lamer's decision has been ap- pealed but that he was limited in what he could say while the case is before the courts. "We're not very happy with the injunction, which we feel goes beyond the law," Kyritsis says. "We're expecting the appeal to be heard around November. Obvi- ously, the main case is ongoing, and that will take a lot longer." Lovrics says she was intrigued by the approach the plaintiffs took in suing the sellers of the adapted set-top boxes, rather than the makers of the apps that were installed on to them to pro- vide direct access to pirated mate- rial. She says recent amendments to the Copyright Act, which took effect in 2012, added a new form of copyright infringement that made it easier to target "services" whose primary purpose is en- abling infringement. "It's interesting that the plaintiffs in this case didn't go after the services, but maybe that will come in cases to fol- low," she says. LT FOCUS Catherine Lovrics says a recent ruling shows how 'it was at least arguable that copyright infringement can include induc- ing others to infringe. . .' At DW 2 , we pride ourselves on delivering the very best in IP/IT thinking on technology, pharma, or copyright matters to your clients. Count on DW 2 to bring about their red letter day. DWW.com Lawyers, Patent & Trademark Agents With DW 2 , your red letter day will be Green. Untitled-6 1 2016-09-20 2:47 PM

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