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14th Annual Law Society Intellectual

Property Law – The Year in Review

Copyright Update (2009)

January 14, 2010

Barry B. Sookman

Canadian Decisions

Robinson v. Les Films Cinar Inc,
2009 QCCS 3793
Claim for infringement of copyright and moral rights in The
Adventures of Robinson Curiosity, an educational and children's
television series project, by a series called Robinson SUCRO.
Originality: The Tribunal had no hesitation in concluding that
the work Curiosity was an original work including drawings,
synopses, scripts, scenarios, the theme song and characters.
Substantial part: “The qualitative criterion expresses the idea
that once we reproduce what is the essence, substance or vital
part of a protected work it is infringement. This can happen even
if it reproduces only few lines of text also important or a single
character from a comic or a few bars of a musical [work]…. The
Court concludes that defendants have reproduced the essence,
substance and vital part of the work Curiosity.” (All translations
by Google Translation)

Robinson v. Les Films Cinar Inc, 2009
QCCS 3793

Moral right of paternity: “the plaintiff could have his name appear in the
credits as creator of the main characters, creator of graphics research and the
main characters and creator of the original idea….These arguments are
misleading and do not alter the right of the plaintiff. Either the defendants have
copied or adapted the work of the applicant and, if they were to acquire its
rights, ignore and accept his name entered in the effort to use its rights, the
passage of time n ' removing any moral right to the applicant, or they have not
plagiarized…That curiosity has never been played is not a defense.”
Moral right of integrity: “But I think the appreciation of nature prejudicial to
the honor and reputation of an author also requires an objective assessment of
injury, based on public opinion or expert….There is no evidence as to what honor
and reputation of the plaintiff have been affected by changes in the work. The
Tribunal can not accept the argument of achieving integrity.”

Robinson v. Les Films Cinar Inc, 2009
QCCS 3793

Damages: Court awards substantial damages: $400k for violation of

moral rights; damages of $607k, $1.7 million accounting of profits; $1
million punitive damages; costs $1.5 million.
Damages for infringement of moral rights: “The affect is
characterized by a state of emotional tension important because of the
many concerns about the situation of rape and plagiarism of his work…
the affect is also characterized by feeling that he has no future, and its
capacity for creativity is definitely taken hostage by the shock and the
rape of his creation which he has been subjected.” “Tribunal finds it
reasonable to grant $400,000 as moral damages in the proceeding.”

Drolet v. Gralsbotschaft, 2009 FC 17
Stiftung filed a counterclaim alleging that Mr. Drolet infringed
copyright in the French language translation of the spiritual work
"Grail Message" done by Mr. Kaufmann.
Plaintiff argued that Mr. Kaufmann's translations were merely a
revision of previous translations and not an original translation of the
work of Oskar Ernst Bernhardt.
“I am willing to acknowledge that Mr. Kaufmann's work is not a mere
copy of another work, but shows the exercise of skill and judgment,
to repeat the expression of the Supreme Court in CCH, supra. The
fact that Mr. Kaufmann may have drawn on previous translations in
writing his own does not detract from the originality of his work. He
did not simply repeat a previous translation by making only cosmetic
changes, but substantially altered its style to make it more literary
and less literal. That is undoubtedly a sign of creative work.”

Drolet v. Gralsbotschaft, 2009 FC 17
“I must now determine whether the Stiftung is indeed the owner
of the rights in the translations done by Mr. Kaufmann at its
request. In support of its position, the Stiftung first cited
subsection 53(2) of the Copyright Act. This provision states that
the copyright registration certificate "is evidence that the
copyright subsists and that the person registered is the owner of
the copyright." This presumption appears to me to be quite weak
in the circumstances, however, as the defendants registered their
copyright certificate very late. In fact, as I have already pointed
out, the defendants registered this certificate only after being
granted leave by Justice Pinard to amend their defence and to file
a counterclaim in copyright infringement. In such a context, the
presumption loses much of its weight. Citing CCH Canadian Ltd.
v. Law Society of Upper Canada, [2002] 4 F.C. 213 (Fed. C.A.)

Drolet v. Gralsbotschaft, 2009 FC 17
“Mr. Drolet did not deny that this comparison was
accurate, but he tried to argue that the additions he made
to the Stiftung version must also be taken into account. He
also submitted that the re-arrangement of the essays to
better reflect the author's original intention made his work
original. I cannot accept this argument.
To counter an action in copyright infringement, it is not
enough to change the order of the chapters or even to add
to the plagiarized text. What must be assessed for the
purposes of such a proceeding is the extent to which the
original work was reproduced. What may have been added
to it or the order in which its components are reproduced
is of little consequence.”

Drolet v. Gralsbotschaft, 2009 FC 17
“What of the defence of fair dealing? The plaintiff tried to
rely on section 29 of the Act by claiming that his sole
aim was to do justice to the author by reproducing his
true work...
Unfortunately, good faith is not a relevant test for
determining whether the fair dealing exception applies.
As the Supreme Court stated in CCH Canadian Ltd. v.
Law Society of Upper Canada...the person claiming the
benefit of this exception must prove (1) that the dealing
was for the purpose of either research or private study
and (2) that it was fair.”

Drolet v. Gralsbotschaft, 2009 FC 17
“What remains is the defence based on limitation. Subsection
41(1) of the Act provides for a limitation period of three
years after the infringement occurred where the plaintiff
knew, or could reasonably have been expected to know, of
the infringement at the time it occurred.”
“I am quite willing to acknowledge that detecting a copyright
infringement in a work of several hundred pages is a more
laborious task than identifying an illegal use of trade-marks.
However, I find it difficult to believe that more than six years
were necessary for the Stiftung to spot an infringement of
their copyright....
Accordingly, the defendants' counterclaim based on
infringement of their copyright is time-barred and must be

Atomic Energy of Canada Limited v.
Areva NP Canada Ltd., 2009 FC 1119
“In order to succeed in an action for copyright infringement, AECL must prove,
on a balance of probabilities: (i) that the work in which it claims copyright is
original (and pre-dates the alleged infringement); (ii) that there has been a
copying from that work without its consent; and (iii) that the copying resulted
in a substantial portion of the work being reproduced.
In order for there to be a copying, there must be a causal connection between
the original and the allegedly copied work. The plaintiff must lead evidence of
actual copying or of the defendant’s access to the work which, in combination
with substantial similarity, can lead to the inference of copying...AECL has led
no evidence of actual copying.”
AREVA’s A Design Mark was created in 2001 by a design firm in
France... AREVA produced a letter...confirming that he created the A design for
AREVA in 2001, with no knowledge of the AECL A design. AECL has offered no
evidence to the contrary. Therefore, even if the AREVA A Design Mark could be
said to come so near to AECL’s Flying A Design Mark as to give every person
seeing it the idea created by the original, AREVA has provided uncontradicted
evidence that there was no copying, thus overcoming any inference to the

Beach v. Toronto Real Estate Board,
2009 CanLII 68183 (ON S.C.)
”Canadian copyright law generally protects derivative works
in their own right as long as the originality required by
the Copyright Act, R.S.C. 1985, c. 10, as amended, is
present. A derivative work is viewed as one which is
substantially derived from pre-existing material: Fox on
Canadian Law of Copyright and Industrial Designs, Fourth
Edition, page 4-9. Under section 7(c) of the AUA an
authorized user was prohibited from creating “derivative
works of the …MLS Database…” I have found that all of the
listing information contained on BNV’s website was taken
from the MLS Database. Accordingly, since the content of
BNV’s website was substantially derived from pre-existing
material - the Content of the MLS Database - BNV breached
section 7(c) of the AUA by creating a derivative work of the
MLS Database.”

Neugebauer v. Labieniec, 2009 FC 666
“Levy v. Rutley (1871) 6 L.R. 976 (CP) 1870-71 523...continues to be cited
as the leading authority on the constituent elements of joint authorship
under English and Canadian law. For example, Normand Tamaro...cites
this judgment as establishing the following three important elements
concerning work of joint authorship:
First, the existence of a work of joint authorship is established by the facts
and by the law, and is not based on the parties’ intentions...
Second, the contributions of each of the parties need not be equal, though
each must be substantial...
Third, even if one contribution may be qualitatively and quantitatively
inferior to the other, there must be a joint labour in carrying out a
common design.”
Court refuses to follow Neudorf v. Nettwerk Productions Ltd. (1999), 3
C.P.R. (4th) 129 (B.C.S.C.) which had required that a joint author make a
contribution “pursuant to a common design (or, in other words, some form
of shared intent).”

Canwest Mediaworks Publications
Inc. v. Murray, 2009 BCSC 391
Murray published a mock edition of a Canwest newspaper
duplicating the masthead. Murray claimed that any
infringement of copyright was saved by Charter rights
which protected freedom of expression.
“Mr. Murray has also pleaded that if the Trade-marks
Act and Copyright Act,...operate to prohibit him from
publishing the mock newspaper, then they are invalid,
because they constitute an infringement of his freedom of
expression. He argues that the truth of the statements in
the mock newspaper with respect to Canwest's editorial
policies is relevant in determining that issue. For the
same reasons I expressed with respect to the prior point, I
do not agree.”

Peak Innovations Inc. v. Meadowland
Flowers Ltd., 2009 FC 661
“The sole issue on this appeal is whether the Federal Court has
jurisdiction to entertain a proceeding brought by a party for
determinations and declarations of whether that party’s products
infringe industrial design registrations of another party, in the absence
of an action for infringement.”
“Therefore, without a statutory grant of jurisdiction for a cause of
action seeking a declaration of non-infringement, it is plain and
obvious that the Federal Court lacks jurisdiction to entertain such as
proceeding, and the portions of the Amended Statement of Claim
seeking such relief must be struck.”
“The legislative provisions submitted by the Plaintiff are therefore not
able to support the Plaintiff’s jurisdictional argument. It is therefore
plain and obvious that the Federal Court does not have jurisdiction
over a cause of action for non-infringement of an industrial design.”

Microsoft Corporation v. PC Village
Co. Ltd., 2009 FC 401
“I conclude that the amount of statutory damages must reflect not
only the bad faith of the Defendants and their disregard for the rights
of the Plaintiff. It must also deter the Defendants from continuing
their course of action. In my view, the amount for statutory copyright
damages must be sufficiently high to serve a salutary message and
deter future infringements on the part of the named Defendants and
other parties.”
The individuals involved with the Defendant numbered corporations
attract personal liability for infringing activities of the corporation by
their direct participation in activities knowing they likely constitute
infringement..The Defendants Aziz and Ye were certainly aware of the
infringing activity and actively promoted such by offering to provide
unauthorized copies of the software at reduced or no cost as part of
the computer system sales by the Defendant numbered corporations.”
Order $10k statutory damages per work; $50k punitive damages;
$50k solicitor client costs.

Microsoft Corporation v. 1276916
Ontario Ltd., 2009 FC 849
”I conclude the amount of statutory damages must reflect not only the
Defendants’ bad faith and their disregard for the rights of the Plaintiff. In light of
Smart Buy’s ongoing infringement of Microsoft’s copyrights despite having
received notice of its infringing activities, including through the commencement of
this lawsuit, there is a need to deter further infringing activity by Smart Buy. In
my view, the amount for statutory copyright damages must be sufficiently high to
serve a salutary message and deter future infringements.
Further, software piracy is a significant problem affecting Microsoft. In addition, it
not only adversely impacts Microsoft, but other computer retailers competing with
Smart Buy. A business like Smart Buy that distributes unlicensed software with
its computer systems has a competitive price advantage over businesses that
distribute licensed software. This behaviour should be specifically discouraged.
Smart Buy’s bad faith and its conduct before and during proceedings are closely
related. I find Smart Buy acted in bad faith and its conduct before and during the
proceedings justifies a statutory award consistent with the amount in Microsoft
Corporation v. PC Village Co. Ltd. I would award $10,000 for each of the eight
software works infringed.”
Also $50k in punitive damages.

Microsoft Corporation v. 1276916
Ontario Ltd., 2009 FC 849
”Microsoft submits that a permanent injunction should be
granted. It argues a wide injunction provided for in section
39.1 of the Copyright Act is appropriate. However, the
evidence indicates the Defendants’ infringing actions related
to specific popular software programs and operating
systems. The Defendants’ infringing activities involved what
could be described as illegal installation of the Plaintiff’s
computer operating systems and basic software programs
rather than infringement across a broader range including
business or entertainment computer programs. Without
more, I consider the injunction should be restricted to
previous, current and future variations of the Microsoft
software programs and operating systems identified by
Microsoft’s investigator.”

Western Steel and Tube Ltd. v. Erickson
Manufacturing Ltd., 2009 FC 791
“WST relies on a line of jurisprudence that, it submits,
demonstrates that it is not necessary to show irreparable
harm in cases of clear violation of copyright registered
under the Copyright Act...[to obtain an interlocutory
In short, there is no automatic conclusion that irreparable
harm exists merely because the foundation of an action is
an infringement of copyright or trademark or the alleged
tort of passing off.”
interlocutory Injunction denied.

Litecubes, L.L.C. v. Northern Light
Products, Inc., 2009 BCSC 181
Litecubes seek to enforce in BC a foreign judgment for damages for
copyright infringement in excess of US $600,000 against the defendant
“In the circumstances of GlowProducts’ submission to the foreign
jurisdiction, I conclude that GlowProducts ought not to be permitted to
now challenge the foreign court’s jurisdiction by arguing that the “real
and substantial connection” test was not met. However, if I am wrong
and attornment is not a stand alone ground for recognizing the foreign
court’s jurisdiction, I conclude that GlowProducts’ submission to the US
Court amounts to a real and substantial connection between the US
Court and the subject matter of the US Proceeding and GlowProducts.
If no real and substantial connection existed before, by the facts of its
participation in the US Proceeding, GlowProducts created a real and
substantial connection with the US Court. This conclusion leads to the
same result, namely, recognition of the US Judgment, and it is not
necessary to find other connections.”

Foreign Decisions

IceTV  Pty Limited v Nine Network Australia 
Pty Limited [2009] HCA 14 (22 April 2009)
“One final point should be made. This concerns the submission by the
Digital Alliance that this Court consider the Full Court's decision in
Desktop Marketing and, to the contrary of Desktop Marketing, affirm
that there must be "creative spark” or exercise of "skill and judgment”
before a work is sufficiently "original" for the subsistence of copyright.
“It is by no means apparent that the law even before the 1911 Act was
to any different effect to that for which the Digital Alliance contends. It
may be that the reasoning in Desktop Marketing with respect to
compilations is out of line with the understanding of copyright law over
many years. These reasons explain the need to treat with some
caution the emphasis in Desktop Marketing upon "labour and expense"
per se and upon misappropriation. However, in the light of the
admission of Ice that the Weekly Schedule was an original literary
work, this is not an appropriate occasion to take any further the
subject of originality in copyright works.” Per Gummow J.

IceTV  Pty Limited v Nine Network Australia 
Pty Limited [2009] HCA 14 (22 April 2009)
"There is some argument that some databases do not have authors in the copyright sense. This
argument is based on the proposition that electronic databases are arranged automatically by
the computer program ... The operator may simply key in the data in an undiscriminating
manner or insert data that are already in digital form, and the data may be organised by the
computer program. There may be no originality associated with the selection of the data included
in the database, particularly if the selection consists of all the available material relating to a
particular topic. It could be further argued that, as the arrangement has occurred automatically
as a consequence of the operation of the computer program that manipulates the data, the
supposed author of the database has not in fact authored it.”...
“there are a number of possible responses to this problem, but that these:
"require some understanding of the process of creating and updating an electronic database.
First, the actual creation and updating of a database is rarely as simple as indiscriminately
keying new data into some form of digital storage ... A decision has to be made about defining
the records and fields (or the rows and columns) that are to be contained within the database ...
Even though the final result is produced by the 'work' of a computer in arranging the material in
this way, human thought went into the scheme of the database and the conception of how the
material would look to the external user ...
The second response ... is based on the proposition that the authors of databases can claim
authorship by virtue of having considered the possible outcomes of their input into the database.
They have chosen the software used in the database and therefore chosen the operations that it
can carry out on the data included.” Quoting, Davison, The Legal Protection of Databases.

Fisher v Brooker & Ors [2009] UKHL
41 (30 July 2009)
Ownership dispute related to the musical copyright in “A Whiter Shade of Pale” by Procal
Why copyright is important: “There is no concept in our law that is more absolute
than a right of property. Where it exists, it is for the owner to exercise it as he pleases.
He does not need the permission of the court, nor is it subject to the exercise of the
court’s discretion. The benefits that flow from intellectual property are the product of
this concept. They provide an incentive to innovation and creativity…These are rights
which the court must respect and which it will enforce if it is asked to do so.”
Implied Assignments: “This argument [for an implied assignment of copyright] is
based on implication, which is normally invoked in order to give rise to an unexpressed
term into an existing contract. However, it is clear, as a matter of principle, commercial
reality, and indeed authority, that an unexpressed contract can arise by way of
implication….Thus, in this case, the respondents have to show that, at the time of the
alleged assignment, (a) it would have been obvious to Mr Fisher (as well as Essex) that
his interest in the musical copyright was being, or had to be, assigned to Essex, or,
which may amount to the same thing, (b) the commercial relationship between the
parties could not sensibly have functioned without such an assignment.”

Editions du Seuil v Google Inc, Tribunal de Grande
Instance de Paris 3ème chambre, 2ème section Ruling of
December 18, 2009
French law applies to the acts of digitization and publication of extracts.
“But seeing that the law applicable to non-contractual liability in tort complex
is the state where the harmful event occurred; this place means that both
the fact that the damage that that place of realization of the latter;
in this case, it is undisputed that the disputed works of French authors to be
scanned with excerpts available to users on French national territory, that
also should be noted that besides the fact that the court is the French court,
the plaintiffs are companies established in France for the Editions du Seuil
company or subsidiary of a French company for the other two, as well as
stakeholders volunteers empowered to defend the interests of authors and
publishers of French are of French nationality, that Google France has its
headquarters in France, that the domain name to access the site has an extension. "en" and that this site is written in
French ;
it follows from all of these elements that France is the country having the
closest connection with the dispute, which justifies the application of French
law contrary to the contentions of the defendants;”

Editions du Seuil v Google Inc, Tribunal de Grande
Instance de Paris 3ème chambre, 2ème section Ruling of
December 18, 2009
“The Court, publicly, by making available to the Registry, by trial
and made contradictory at first instance...
Said that the law applicable to this case is the French law.
Said that fully reproducing and making available extracts from
works items of the minutes of the bailiff June 5, 2006 and on
which the plaintiffs hold copyrights on the site whose address is a
"http: / / "without their permission, Google Inc.
has committed acts of infringement of copyright to the detriment
of companies Editions du Seuil, Delachaux & Niestle and Harry N.
* Translations performed using Google Translation.

Lucasfilm Ltd & Ors v Ainsworth & Anor
[2009] EWCA Civ 1328 (16 December 2009)
“Firstly we think that the two-fold rule in Moçambique applies to such
claims... Infringement of an IP essentially a local matter involving
local policies and local public interest. It is a matter for local judges.
Secondly enforcement may involve a clash of the IP policies of different
Thirdly... Extra-territorial jurisdiction will involve (and does here) a restraint
on actions in another country – an interference which prima facie a foreign
judge should avoid...
Fourthly if national courts of different countries all assume jurisdiction there
is far too much room for forum-shopping, applications for stays on forum non
conveniens grounds, applications for anti-suit injunctions and applications for
declarations of non-infringement.
Fifthly it is quite clear that those concerned with international agreements
about copyright have refrained from putting in place a regime for the
international litigation of copyrights by the courts of a single state...
Sixthly all of the other considerations which we have mentioned and which
led the Court of Appeals in Voda to decline jurisdiction over foreign patent
claims apply equally to enforcement of a foreign copyright here.”

Lucasfilm Ltd & Ors v Ainsworth & Anor
[2009] EWCA Civ 1328 (16 December 2009)
To enforce a foreign judgement, UK law requires that the judgment debtor be
present in the foreign country at the time proceedings are commenced.
“Therefore, does the use by Mr Ainsworth or his company of the
website...amount to such presence?
…The question... is whether for current purposes the internet or a website are
fundamentally different from other matters which have enabled business
persons to present themselves and their products where they are not
themselves present: such as advertisements, salesmen, the post, telephone,
telex and the like. We do not believe so...
On the contrary, it might be said that the sheer omnipresence of the internet
would suggest that it does not easily create, outside the jurisdiction or
jurisdictions in which its website owners are on established principle already to
be found, that presence, partaking in some sense of allegiance, which has been
recognised by our jurisprudence and rules of private international law as a
necessary ingredient in the enforceability of foreign judgments.”
*Note under Beals v. Saldanha, [2003] 3 S.C.R. 416 the result would be
different in Canada.

Dish Network LLC v Zentek 
International Co Ltd [2009] HKEC 220
“The word "publish" is defined to mean, among others: (1) to make
public, to make publicly or generally known, ... (4)(a) to issue or
cause to be issued for sale to the public (copies of a book, writing,
engraving, piece of music, or the like); said of an author, editor, or
spec. of a professional publisher, (b) to make generally accessible
or available for acceptance or use; to place before or offer to the
public, now spec. by the medium of a book, journal, or the like.
I prefer the meaning of "publish" as defined in the Oxford
Dictionary and disagree with the defendants on their interpretation
of section 275(2)(b). I find that the mere availability of the
software on the Websites…amounts to publishing and constitutes
an infringement of the plaintiffs' rights as copyright owners. I
therefore find in favour of the plaintiffs that there is cogent and
compelling evidence that serious tortious activities against the
plaintiffs have taken place in Hong Kong.”

RecordTV Pte Ltd v MediaCorp TV 
Singapore Pte Ltd [2009] SGHC 287
Whether for profit companies that operate Internet DVR services for
television programming are liable for copyright infringement.
Who makes copies: Following the reasoning in Cartoon Network LP v
CSC Holdings Inc 536 F 3d 121 (2nd Cir 2008), the court held that “If
the end-user is the maker of this time-shifted recording for the
purposes of the VCR, it must remain that the end-user is the maker of
the recording in the context of the DVR, remote or local.”
Who communicates the programs to the public: “The key question
is this: where exactly do the end-user’s volition and control cease to
operate? ...
The line, therefore, has to be drawn somewhere, and I think it sensible
that it be drawn once the end-user has properly exercised his volition in
making a choice. In other words, while I accept and have accepted that
the end-user is the one who has control over what programmes to
record, the subsequent transmission of that content would be effected
by a process governed entirely by the plaintiff.”

The Online File Sharing Cases

IsoHunt Web Technologies, Inc v EMI Group 
Canada Inc. Sup. Ct. B.C. March 11, 2009
The Court: “It’s obvious. I mean, you take another field. A person
who sells handguns isn’t automatically responsible for the murder.
If he sells the handgun knowing that the person intends to go out
and kill somebody with it, he is...And then it’s kind of the same
issue here.
Mr Mason: “Absolutely.”
The Court: “Are serious questions of law raised? Yes, this case
raises a very serious question which is of importance to a large
number of people far beyond the Petitioner in this case and, for
that matter, the Respondents. It is well known in Canada that
through the use of the Internet many people can download
copyright material. It is important for the law as some point to
clearly delineate what the limits of facilities which allow this to be
Case not appropriately brought Isohunt by way of application.

Columbia Pictures Industries Inc v
Fung (C.D.Cal. Dec 21, 2009)
Inducement: The argument that bittorrent sites like Isohunt are nothing but
content neutral search engines like Google was dismissed by the court holding
that “the evidence of Defendant’s intent to induce infringement is overwhelming
and beyond reasonable dispute”. This finding was backed up by detailed findings
about messages to users, assistance to users, and the implementation of
technical features, which were all intended to induce direct infringement by site
users. The court also found that the defendants’ business model depended on
massive infringing uses of the plaintiffs’ copyright materials.
Territoriality “However, United States copyright law does not require that both
parties be located in the United States. Rather, the acts of uploading and
downloading are each independent grounds of copyright infringement liability.
Uploading a copyrighted content file to other users (regardless of where those
users are located) violates the copyright holder’s § 106(3) distribution right.
Downloading a copyrighted content file from other users (regardless of where
those users are located) violates the copyright holder’s § 106(1) reproduction
right… Accordingly, Plaintiffs need only show that United States users either
uploaded or downloaded copyrighted works; Plaintiffs need not show that a
particular file was both uploaded and downloaded entirely within the United

Arista Records LLC v Inc.
91 USPQ2d 1744 (S.D.N.Y.2009)
Operators of site found liable for directly infringing
the distribution right. “...contrary to Defendants’ contentions,
here their service is not merely a ‘passive conduit’ that
facilitates the exchange of content between users who upload
infringing content and users who download such content;
rather, defendants actively engaged in the process so as to
satisfy the ‘volitional-conduct’ requirement for direct
Plaintiffs also successful in establishing liability for (1)
inducement of copyright infringement, (2) contributory
copyright infringement and (3) vicarious copyright

The Pirate Bay Case, Stokholm
District Court, April 17, 2009
Is the making available an offence under Swedish law?
“A common factor for the named users is that they have all or parts of
the relevant file stored on their computer (hard drive). By connecting
to the Internet and activating their BitTorrent software – which is a
necessary condition – they are making it possible for other Internet
users to acquaint themselves of the content of and, therefore, produce
copies of the relevant file themselves. As far as accessibility for other
Internet users is concerned, the procedure is, in principle, the same as
when a work is made available by downloading it to an open Internet
website. Provided that a seeder is connected to the Internet, another
Internet user, a leecher, can gain access to the work form a place and
at a time of his or her own choosing. The way in which the specified
files are processed by an original seeder and the users who, through
filesharing, have obtained all or segments of the current files does, in
District Court’s view, constitute the type of making available which,
according to the Copyright Act, would be regarded as making available
to the general public.”

The Pirate Bay Case, Stokholm
District Court, April 17, 2009
Is the making available an offence under Swedish law where the seeders
are outside of Sweden?
“The investigation into the case has revealed that some of The Pirate
Bay’s users, whose making available is the subject of the action, have
been located outside Sweden when they made the works available to the
general public…
According to the District Court, there is strong reason to regard an
offence which involves the making available of something on the Internet
as having been committed in a country where the Internet user can
obtain the information which has been made available, provided that the
making available has legal implications in the country. This applies not
least when the information – as in this case – is published in a language
spoken in that country. This suggests that all principal offences, even
those committed by persons located outside Sweden, should be regarded
as having been committed in Sweden. This conclusion is further
reinforced by the fact that the servers (computers) hosting The Pirate
Bay’s website and the tracker were located in Sweden.”

The Pirate Bay Case, Stokholm
District Court, April 17, 2009
Were the site operators liable for aiding and abetting infringement?
“The investigation into the case has shown that, during the time
period specified in the indictment, The Pirate Bay was a popular
website with a large number of users around the world. The purpose
of The Pirate Bay was to create a meeting place for filesharers.
In accordance with what will be further demonstrated below, all the
defendants were aware that a large number of the website’s users
were engaged in the unlawful disposal of copyright protected
material. By providing a website with advanced search functions and
easy uploading and downloading facilities, and by putting individual
filesharers in touch with one other through the tracker linked to the
site, the operation run via The Pirate Bay has, in the opinion of the
District Court, facilitated and, consequently, aided and abetted these

COURT OF UTRECHT, 26 August 2009
The District Court:
“5.1. issues a declaratory judgment that Mininova is acting unlawfully by
enabling, inducing and profiting from infringements of the copyrights and
neighbouring rights of the entitled parties affiliated with Brein;
5.2. orders Mininova to take such measures within three months after the
service of this judgment to ensure that no torrent links are offered on its
platform regarding which there should be a valid doubt as to whether
they contain copyrighted works or works protected by neighbouring
rights, the disclosure of which has not been authorised by the entitled
5.3. orders that if, after three months after the service of this judgment,
torrent links are offered on Mininova’s platform, the titles of which are
identical or similar to titles of works appearing on a list of titles of
copyrighted works or works protected by neighbouring rights provided by
Brein... Mininova will incur a penalty of EUR 1,000 to Brein for each
automatic reference to such an infringing file or per day that such a
reference is offered, such at the discretion of Brein, at a maximum of
EUR 5,000,000.00;”

Sony BMG  Music Entertainment v Tenenbaum, 
2009 WL 4547019 (D.Mass. Dec 7, 2009).

The defendant “mounted a broadside attack that would

excuse all file sharing for private enjoyment.” He argued that
all a defendant needs to show is that he did not make money
from the files he downloaded or distributed-i.e., that his use
was “non-commercial”.
“It is a version of fair use so broad that it would swallow the
copyright protections that Congress created, defying both
statute and precedent.”
Court held that allowing fair use for any non-commercial file
sharing would be harmful to rights holders and undermine
legitimate markets for sound recordings.