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Who Must Show Consent in an Intellectual Property Infringement Case? - 2011-01-31

Monday, 2011, January 31
David Vaver

Professor David Vaver is a member of IP Osgoode, a Professor at Osgoode Hall Law School, an Emeritus Professor at the University of Oxford, an Emeritus Fellow of St. Peter’s College at Oxford and former Director of the Oxford Intellectual Property Research Centre.

The unauthorized publication by two of the Aga Khan’s followers of a compilation of his speeches got a fair amount of publicity last year and produced the first reported Canadian judgment on copyright of 2011, Aga Khan v. Tajdin, 2011 FC 14. The Federal Court granted the plaintiff summary judgment and the usual remedies for copyright infringement, finding the defendants lacked the consent they said the plaintiff gave them to publish. The court’s judgment is, however, marred by a (fortunately obiter) statement that it was not for a plaintiff in a copyright infringement suit to prove a lack of consent to the defendants’ publication. He need not “prove a negative, i.e. that he did not give consent,” said Harrington J. at para. [30] of the judgment: consent “is a matter of defence and so the burden must lie upon the defendants.”

This statement will be the subject of a critical Note in the next issue of the Intellectual Property Journal. The criticism is briefly this: a plaintiff who wants to show infringement of any intellectual property right must say that (1) the defendant is doing something only I am entitled to do, and (2) I have not given him any consent to do that. The plaintiff cannot get away with just saying (1) the defendant is doing something only I am entitled to do, but (2) I am not telling him whether I gave him consent or not: he has to tell me whether I did or not. That is neither good sense nor good law. The Copyright Act does give a plaintiff the benefit of certain presumptions of authorship, copyright and title if the defendant puts those in issue (s. 34). Lack of consent is not among them.

Intellectual property statutes, including the Copyright Act, are drafted so that lack of consent is a constituent ingredient of infringement. Doing whatever an IP owner alone is authorized to do is not wrong: only doing so without his consent is. The statutes do not make consent an excuse or justification for, or exception from, infringement. It is therefore not a defence: Avel Pty Ltd. v Multicoin Amusements Pty Ltd. (1990), 171 C.L.R. 88. So too with criminal copyright infringement: an Ottawa copyshop that was charged with printing student course packs in violation of the Copyright Act was acquitted because, among other things, the Crown did not show that the copyright owners of the material in the course packs had not given the copyshop consent: R. v. Laurier Office Mart Inc. (1994), 58 C.P.R. (3d) 403, 414, aff’d (1995), 63 C.P.R. (3d) 229, 232 (Ont. G.D.). In patent law too, the plaintiff who does not prove that he has not consented to the defendant’s acts expressly or impliedly will lose his infringement case: Betts v. Willmott (1871), 6 Ch. App. 239; Pfizer Corp. v. Bristol Pharmaceutical Co. Ltd., [1967] R.P.C. 346. The argument that it is for defendants to prove they have the owner’s consent was specifically rejected in both those cases.

The defendants in the Aga Khan case were unrepresented and so could hardly have been expected to cite all the authorities that supported their position. They may have deserved to fail on the facts, but meanwhile their case should not be cited as a precedent for a reverse onus of proof of consent in copyright or any other IP infringement case.


Relevant comments:


Alnaz Jiwa (Defendant), on February 1, 2011 at 11:33 am Said:

I did cite a Federal Court of Appeal case, Positive Attitude Safety System Inc. v. Albian Sands Energy Inc., 2005 CarswellNat 3575, 2005 FCA 332 at para. 39, which held:

“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. 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.”

The Motion’s judge failed to apply the case, which, it is respectfully submitted, was binding on him, and he did not even explain why it was not binding on him, or why he chose to ignore it.

I had argued it in my Memoramdum of Law, and also argued it in my submissions.


D Vaver, on February 1, 2011 at 12:07 pm Said:

Thank you for adding those points, Mr Jiwa. My apologies: the blog is much shorter than the Note that will be published in the IPJ. The Note does mention the Federal Court of Appeal decision in Positive Attitude to which you refer and which the judge decided not to follow, and the critique goes on to consider more fully why he should have followed it. I should also not have said that the defendants were “unrepresented”; rather, that they represented themselves, and that one of them, Mr Jiwa, was in fact a solicitor on the record.


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