On June 23, 2022, Bill C-19 received Royal Assent. The bill was introduced by the Honourable Chrystia Freeland, Deputy Prime Minister and Minister of Finance, and resulted in amendments to the Copyright Act1 that will come into force on December 30, 2022, further to an order in council issued earlier this week. Bill C-19, or An Act to implement certain provisions of the budget tabled in Parliament on April 7, 2022, and other measures, was tabled on April 28, 2022, by the federal government following the release of the 2022 budget. This bill essentially follows up on the commitments the government made in its annual budget. In the 2022 budget, the federal government said it wanted to make changes to the Copyright Act. It announced a legislative amendment to meet its obligation under the Canada-United-States-Mexico Agreement (CUSMA) to extend the general term of copyright protection from 50 years to 70 years after the death of the author. Like the United States and Mexico, Canada has committed to a copyright protection term that is not less than the life of the author, plus 70 years following the natural person’s death.   Section 6 of the Copyright Act currently stipulates that copyright protection lasts for the author’s lifetime and an additional 50 years after their death. The section will now read as follows: Except as otherwise expressly provided by this Act, the term for which copyright subsists is the life of the author, the remainder of the calendar year in which the author dies, and a period of 70 years following the end of that calendar year. [emphasis added]. The term of copyright is also extended to 70 years after the death of the author or the last surviving co-author in the case of posthumous works and collaborations. Finally, Bill C-19 clarifies that legislative amendments to the Copyright Act do not reactivate copyrights that expired before the effective date of the amendments. [1] RSC 1985, c C-42.

Ahead of the 2021 holiday season, as children dream about the toys that Santa Claus will bring them, let’s take a look back at a landmark decision that reviews what is copyrightable under the Copyright Act. As visual artist Claude Bouchard (“Bouchard”) learned from the outcome of her legal action against Ikea Canada (“Ikea”),1 the Copyright Act2 does not protect the ideas, styles or methods developed and used by artists to create their works, even if their work is exhibited in museums and marketed internationally. From 1994 to 2005, Bouchard sold in a Montreal’s Unicef store soft toys that she designed based on children’s drawings. In September 2014, Ikea held a drawing competition for children and made 10 soft toys from the winning entries, marketed as part of the “Sogoskatt” collection. A portion of the profits were donated to UNICEF. Originally, Bouchard was seeking a monetary award against UNICEF and Ikea for copying her toys, alleging that they had used, in particular, her idea, her original style and her methods. In 2018, the Superior Court ruled on the case for the first time, dismissing the legal action against UNICEF based on the privileges and immunities of the United Nations.3 UNICEF’s immunity from suits is in this case absolute since Bouchard’s legal action is directly related to the organization’s mission.4 In January 2021, Justice Patrick Buchholz of the Superior Court put an end to the dispute between Bouchard and Ikea, dismissing the legal action for infringement of Bouchard’s works based on the Copyright Act as being ill-founded, destined to fail and unreasonable, thus opening the door to its dismissal for abuse of process.5 Why was Bouchard’s infringement action ill-founded? The Court first examined the arguments put forward by Ikea to the effect that two essential elements giving rise to the infringement action6 could not be demonstrated by Bouchard: There is no evidence that Ikea had access to Bouchard’s work.7 There is no evidence that Ikea reproduced a substantial part of the plaintiff’s work. Therefore, Ikea argues that there was no infringement of the copyright of Bouchard, who was seeking a monopoly on an idea, style or method, which is not protected under the Copyright Act8 Lack of access to Bouchard’s works The Court did not accept Ikea’s first argument that there was a lack of access to Bouchard’s works. It ascertained that the proceedings were at a too preliminary stage to make a determination.9 The Honourable Justice Buchholz pointed out that section 51 of the Code of Civil Procedure is not [our translation] “a free pass to bypass the judicial process and prematurely set aside otherwise allowable claims” when the evidence is still incomplete.10 The Court also noted the seriousness of the links between Ikea and UNICEF, which may have made access to Bouchard’s works possible and likely.11 In this context, only a hearing on the merits could have clarified the question of access to Bouchard’s works by making it possible to test, more precisely, the credibility of the witnesses at trial.12 Lack of reproduction of a substantial part of the work Bouchard alleged that the toys designed by Ikea incorporate eight essential features of her soft toy concept, namely [our translation]: Round eyes cut from non-fraying fabrics and sewn around the edges; Thinly cut linear mouths sewn into non-fraying fabrics; iii. Polyester fibre stuffing; iv. The toy is proportionate to the size of children’s hands; v. Soft toy faithful to the child’s drawing; vi. Child’s name and age on the tag; vii. Everything is solid (head, body, legs, and tail), in the same plane and stuffed; viii.  Use of textiles, plush, and the original colours of the drawings.”13 However, the Court accepted Ikea’s second argument that Ikea’s soft toys did not reproduce a substantial part of Bouchard’s work. Since Bouchard’s works and Ikea’s works did not share a resemblance, this means that a substantial part of the works was not reproduced.14 How to determine if a “substantial part” of a work has been reproduced? Under the Copyright Act, copyright, “in relation to a work, means the sole right to produce or reproduce the work or any substantial part thereof”.15 The Supreme Court defined “substantial part” of the work in the Cinar decision,16 stating that it is a flexible notion to be interpreted based on the facts. The assessment is holistic and qualitative in nature. The criteria to be used by the courts to determine whether there has been a reproduction of a “substantial part” of a work are as follows: The originality of the work, which must be protected under the Copyright Act;17 The part “represents a substantial portion of the author’s skill and judgment”;18 The nature of the two works as a whole, without looking at isolated passages;19 “[T]he cumulative effect of the features copied from the work”.20 Although there are some similarities between the Bouchard and Ikea soft toys, the soft toys are completely different and do not look the same because they are designed from the drawings of different children. Bouchard even admitted that [our translation] “a toy made from a unique child’s drawing is in itself a unique toy”.21 Can the Copyright Act protect an idea, a concept or a body of work? Bouchard instead claimed that Ikea illegally reproduced her idea, concept, style or methods.22 She ultimately argued that Ikea did not copy a specific work, but instead copied her “work” in a broader sense.23 Bouchard’s arguments highlight issues that often come up in the court system and demonstrate a misunderstanding of what is protected by copyright. Copyright of an idea, concept, style or method In 2004, the Supreme Court pointed out that copyright protects the expression of ideas in a work and not the ideas themselves.24 Justice Buchholz rightly pointed out that an artist can be inspired by another artist without infringing the rights protected by the Copyright Act. He noted, for example, that if styles were protected, Monet could not have painted in the Impressionist style.25 The Court also noted that the soft toys made by Bouchard correspond to a generic style dictated by safety standards for the manufacture and sale of toys.26 Thus, the Copyright Act does not offer any protection for ideas, concepts, styles or manufacturing methods and techniques. Copyright of an artistic legacy, corpus, or collection The Court specified that the Copyright Act does not protect a body of work or an artistic legacy, but rather each individual work.27 Bouchard c. Ikea Canada, 2021 QCCS 1376. R.S.C. 1985, c. C-42. Bouchard c. Ikea Canada, 2018 QCCS 2690. Idem, para. 24–25. Section 51, Code of Civil Procedure, CQLR c. C-25.01. Section 2, “infringing”, Copyright Act. Bouchard c. Ikea Canada, supra, note 1, para. 16–17. Idem, para. 15. Idem, para. 34. Idem, para. 28. Idem, para. 37–39. Idem, para. 40. Idem, para. 49. Idem, para. 55. Section 3, Copyright Act. Cinar Corporation v. Robinson, 2013 SCC 73, para. 26, 35–36. Idem, para. 26. Idem. Idem, para. 35. Idem, para. 36. Bouchard c. Ikea Canada, supra, note 1, para. 53. Idem, para. 56. Idem, para. 69. CCH Canadian Ltd. v. Law Society of Upper Canada, 2004 SCC 13, para. 8. Idem, para. 67. Toys Regulations, SOR/2011-17, adopted under the Canada Consumer Product Safety Act, S.C. 2010, c. 21, s. 29, 31–32. Bouchard c. Ikea Canada, supra, note 1, para. 69–71.

“Historical facts”1 are not protected by copyright. Referring to the Storming of the Bastille or the Battle of the Plains of Abraham will not get an author sued in Federal Court, but must these events have really happened to be considered “historical facts”? The Federal Court recently ruled on this issue in Winkler v. Hendley.2 In its decision, the Federal Court stated that if an author presents their literary work as a history book,3 as long as this assertion is plausible, the events that they describe must be treated as “historical facts” even if they are not. Therefore, the author cannot claim originality when an assessment is made of whether there has been a substantial taking of their work. Originality remains only in the selection and arrangement of the facts. Background This case deals with the following three books written about the Donnelly family, whose crimes made headlines in late 19th century Ontario: The Black Donnellys (hereinafter referred to as The Black Donnellys), a history book published in 1954 by Thomas P. Kelley (hereinafter referred to as Kelley); Vengeance of the Black Donnellys (hereinafter referred to as Vengeance), a work of fiction published in 1962 by Kelley (the same author); and  The Black Donnellys: The Outrageous Tale of Canada’s Deadliest Feud (hereinafter referred to as The Outrageous Tale), a history book published in 2004 by Nate Hendley (hereinafter referred to as Hendley). John Winkler (hereinafter referred to as Winkler), Kelley’s heir and copyright holder, accused Hendley of copying, in The Outrageous Tale, a substantial part of both The Black Donnellys and Vengeance. He argued that both works are fiction, as many of the events described in them are objectively false. Winkler claimed that Hendley repeated the same mistakes in his work. He also asserted that Hendley copied the structure, tone, theme, atmosphere and dialogue in his telling of events. For his part, Hendley admitted that he referred to both of Kelley’s literary works when writing The Outrageous Tale. However, he contended that The Black Donnellys should be considered a history book, as Kelley originally described and presented it as such. Given that “historical facts” are not protected by the Copyright Act4 (the “Act”), Hendley denied having copied Kelley’s work and claimed that The Outrageous Tale is an original literary work. In support of their motions for summary judgment, both parties filed affidavits. In addition, Winkler filed two expert reports. The first compared excerpts from The Black Donnellys and Vengeance to excerpts from The Outrageous Tale.The second was an analysis of the factual nature of The Black Donnellys. The Federal Court’s findings were as follows: Facts that are credibly presented by the author as historically factual must be excluded from copyright protection. Therefore, the author cannot claim originality when an assessment is made of whether there has been a substantial taking of their work. Hendley did not infringe Winkler’s copyright on The Black Donnellys by referring to “historical facts” without copying the structure, tone, theme, atmosphere or dialogue used in presenting them in The Outrageous Tale. Hendley did not infringe Winkler’s copyright on Vengeance, although he did copy various aspects of a fictional character in The Outrageous Tale in a non-literal way.This copying does not concern a substantial part of the literary work Vengeance whenviewed as a whole. Facts that are credibly presented by the author as historically factual must be considered as such The Federal Court ruled that The Black Donnellys was a history book, and, for all intents and purposes, considered it to be an account of “historical facts.” First, the Court relied on Kelly’s statement that he presented The Black Donnellys as “The True Story of Canada’s Most Barbaric Feud” when it was published.5 Second, the Court referred to the introduction in the original 1954 edition in which Kelly stated that the information that he used was gathered from old newspapers, police and court records, trips to the area, and other “unimpeachable sources.”6 The Court determined that it did not have to consider the conclusions of the expert report that the work was “two-thirds fiction.” The law is not a tool to ensure the accuracy of various historical accounts, and its role is not to decide between them based on an objective standard.7 Thus, the notion of “historical facts” must necessarily include those that the author plausibly presents as such.8 The Court has therefore introduced a subjective standard in the assessment of the factual nature of history books. The Federal Court found that Hendley was justified in relying on the version of events presented in The Black Donnellys. The purpose of the law is to maintain a balance between, on the one hand, protecting the talent and judgment of authors and, on the other hand, allowing ideas and material to remain in the public domain for all to build upon. To allow Kelley to present something as a “historical fact” and then allow Winkler to sue another author on the grounds that such “historical fact” is false would unduly impede the flow of ideas and disturb this fair balance.9In short, Winkler cannot seek to refute the historical nature of Kelley’s book and claim copyright over the fabricated facts it contains.10 Given that they are considered “historical facts,” Winkler cannot claim originality as part of the assessment of whether there has been a copying of a substantial part of his work. Hendley did not copy a substantial part of Kelley’s work The Federal Court reiterated that the law protects original literary, dramatic, musical and artistic work. Thus, copyright protection exists whether a literary work is a history book or a piece of fiction. However, in the case of a history book, the protection does not extend to “facts of history” or their chronological sequence.11 The originality of Kelley’s work lies solely in the means of expression and thus in the selection and arrangement of facts. Consequently, the Court analyzed the copying of structure, tone, theme, atmosphere and dialogue in the telling of “historical facts,” not the facts themselves. The Supreme Court advocated a holistic and comprehensive approach to determining whether a substantial part of a plaintiff’s work was copied by a defendant.12 However, given the format of the expert report, the Federal Court found it necessary to analyze every single excerpt and then assess whether their cumulative effect amounted to a substantial copying of each of Kelley’s works.13 A) The Outrageous Tale does not amount to a reproduction of a substantial part of The Black Donnellys The Federal Court concluded that the expert report did not demonstrate any significant similarities in the comparison of some twenty excerpts from The Black Donnellys with allegedly analogous excerpts from The Outrageous Tale. Winkler alleged that the mere copying of fictional events in The Outrageous Tale constituted an unauthorized reproduction. The Court rejected this argument because to consider The Black Donnellys a history book implies that the “historical facts” it contains are not part of the originality of the work.14 Consequently, the Federal Court excluded the 20 or so excerpts because they merely mentioned the same “historical facts.”15  As for the excerpts that show some significant similarities, the Federal Court criticized the expert’s method of analyzing isolated words out of context to demonstrate greater similarities between the two texts. Instead, the Court chose to rely on more complete passages taken directly from the works to assess similarities in the selection and arrangement of facts.  The reproduction of fictional events is more easily detectable. Indeed, describing the same “historical facts” means that some significant similarities are inevitable. The Federal Court said the following regarding the description of a street battle:   In the foregoing passage, the linguistic similarity—references to Flanagan, the gun, the road, the 17 men—are all important parts of the factual aspect of the event. There may be a vast number of ways in which to recount facts. However, it would be difficult if not impossible to describe an event in which Flanagan, carrying a shotgun, went down the road with 17 men without using those terms. Here, the lack of copyright in “facts,” whether actually factual or simply asserted to be factual, becomes particularly important. If these descriptions of a fight were found in two works of fiction, there would be a stronger case that copying these elements contributed to a substantial taking. In a work of nonfiction, these factual elements are not part of the work’s originality.16 The Federal Court rejected the allegations of copying in the other passages based on the same argument. It concluded that the analysis carried out on the structure, tone, theme, atmosphere and dialogue of the work does not demonstrate that Hendley copied in The Outrageous Tale any substantial part of The Black Donnellys.  The decision is surprising in that the protection given to works under copyright and the assessment of whether there has been a substantial taking of the work should be objective: Was a substantial part of the first work copied in the second work in terms of quality? A fact is either historical or it is not. That an author may reasonably believe that such fact is historical should not affect the originality of the first work, nor should it affect the issue of “substantial taking” in the second work. While one understands that the judge was trying to achieve a fair outcome, one might question whether the legal means adopted were adequat For the purposes of this text, “historical facts” refer to events of a factual nature. 2021 FC 498 In this text, the notion of “history book” refers to a work of “history,” understood as the branch of knowledge that studies the past and seeks to reconstruct “historical facts.”  R.S.C., 1985, c. C-42 Winkler v. Hendley, supra note 2, para. 72 Id., para. 73 Id., para. 96 Id., para. 92 Id., para. 92 Id., para. 92 Id., para.  56 Cinar Corporation v. Robinson, 2013 SCC 73; Copyright Act, supra note 6, s. 3  Id., para. 113 Winkler v. Hendley, supra note 2, para. 58 Id. Id., para. 122

In December 2018, section 53.1 was added to the Patent Act (the “Act”) allowing reference to be made to communications exchanged with the Canadian Intellectual Property Office (“CIPO”) during the prosecution of an application with respect “[...]to the construction of a claim.” This concept is more commonly known as “file wrapper estoppel.” Salient points Expert evidence regarding how to construe the claims of a patent is not required in order to determine whether infringement has occurred. In a motion for summary judgment, the responding party must put its best foot forward and cannot simply contest the motion on the grounds that the moving party’s evidence is insufficient. File wrapper estoppel applies when rebutting a representation made by the patentee; however, only communications with CIPO are accepted, not those with a foreign patent office. There are several substantive issues yet to be resolved with respect to the file wrapper estoppel doctrine in Canada. In September of 2019, the Federal Court rendered its first decision concerning section 53.1 of the Act in Canmar Foods Ltd v. TA Foods Ltd.1 The decision was appealed, and, on January 20, 2021, the Federal Court of Appeal rendered its first judgment on the application of said section, and thus on the file wrapper estoppel doctrine in Canada.2 Background Canmar Foods Ltd. (“Canmar”) holds a patent on a method for roasting seeds used to produce vegetable oil (the “Patent”). The method claimed in the Patent consists of four steps, including heating the oil seed to a certain temperature in a “stream of air” and transferring the heated oil seed into an “insulated or partially insulated roasting chamber or tower.”  During the prosecution of the Patent application, the steps of heating in a “stream of air” and transferring the seeds in the manner mentioned above was added to the Patent claims by amendment in order to limit the scope of the claims. During the prosecution of the Patent application in Canada, Canmar referred to amendments that were “substantially the same” as those made during prosecution of the corresponding U.S. patent application in response to novelty and obviousness objections that had been raised by the examiner. After the Patent was obtained, Canmar sued TA Foods Ltd. (“TA”) for infringement thereof. TA filed a motion for summary judgment on the grounds that the method it used did not include either the step of heating the seeds in a “stream of air” or the step of transferring them into an “insulated or partially insulated roasting chamber or tower.” In support of the motion for summary judgment, the parties both filed affidavits. However, no expert evidence was filed regarding the construction of the claims of the Patent by a person of ordinary skill in the art, a “POSITA.” The Federal Court found that: Expert evidence regarding how to construe the claims of a patent is not required in order to determine whether infringement has occurred. In a motion for summary judgment, the responding party must put its best foot forward and cannot simply contest the motion on the grounds that the moving party’s evidence is insufficient. Section 53.1 of the Act applies because, in contesting the motion for summary judgment, Canmar advanced a construction of the claims that would have the effect of nullifying the amendments made during the prosecution of the patent application. Exceptionally, the prosecution history of the U.S. patent could be relied upon because Canmar made reference thereto during the prosecution of the application for the Canadian Patent. In light of the prosecution history of the U.S. patent, the steps of heating the seeds in a “stream of air” and transferring the heated oil seed into an “insulated or partially insulated roasting chamber or tower” were found to be essential elements of the claims of the Canmar Patent. Even without reference to the prosecution history of the U.S. patent, the Court would have found that these elements were essential. The Court of Appeal upheld the Federal Court’s decision, but pointed out that the judge erred in law by referring to the prosecution history of the U.S. patent. Thus, the Court of Appeal confirmed that the Federal Court had jurisdiction to construe the claims of the Patent and that expert evidence regarding a POSITA’s construction was not necessary in this case. The Court of Appeal nevertheless issued the following warning: Of course, the judge who dispenses with expert evidence will do that at his or her own peril, and it is not a practice that should be lightly countenanced. Claims must always be construed in an informed and purposive way, and it is only in the clearest of cases that judges should feel confident enough to construe the claims of a patent as they would be understood by a skilled person, without the help of any expert evidence. The Court of Appeal also criticized Canmar for failing to produce reply evidence with respect to the infringement. Specifically, the Court states that Canmar should have put its best foot forward, for example by submitting a claim construction that could lead even theoretically to a finding of infringement. In the absence of such evidence, the judge committed no palpable and overriding error in granting the motion for summary judgment.  However, the Court of Appeal found that by referring to the prosecution history of the U.S. patent, the Federal Court judge erred in law.  After a detailed review of American and British case law on file wrapper estoppel, the Federal Court of Appeal stated: I agree with the appellant that courts should be wary to extend the detailed language of section 53.1, which is specific about the communications being limited to those with the Canadian Patent Office. The legislation is carefully tailored, and it would go against statutory interpretation principles to try to go beyond its original intent. There are also public policy reasons for treading carefully in allowing extrinsic evidence. Opening the door to allowing foreign patent prosecution history into the analysis might lead to overly contentious and expensive litigation. It should be noted that the Court of Appeal then qualified the above statement as follows: Yet, whether the doctrine of incorporation by reference should formally be treated as an exception to the general prohibition on foreign prosecution files, is a question best left for another day. (…) There is nothing in the prosecution file of the ’376 Patent that identifies with any detailed particularity what specific “written communication” from the US prosecution history is incorporated and where that written communication can be found. It is virtually certain that if Canmar had amended its claims and filed with the Canadian patent office the same response that it filed with the U.S. patent office, that response could have been invoked under section 53.1 of the Act. Nevertheless, in such a case, the response in question would unambiguously form part of the Canadian file. On the other hand, if, instead of filing the U.S. response, the applicant had only referred to it in express terms, would section 53.1 of the Act have applied? This is a question that another court will likely have to answer. The Court of Appeal nonetheless dismissed the appeal because the trial judge had found that even without reference to the prosecution history of the U.S. patent, the Federal Court would have concluded that the elements in question were essential. The Court of Appeal found no manifestly unreasonable error in this part of the Federal Court’s judgment. Nor did the Court of Appeal rule on the question as to whether patent prosecution history can be raised solely to rebut an inconsistent construction made by the patentee, or whether it can be referred to whenever claim construction is called into question: The emphasis, therefore, is not so much on the rebuttal of a particular representation, but rather on the interpretive process itself. As the Court stated in Bauer Hockey, “there is no need to identify a particular representation and rebuttal every time a reference is made to the prosecution history. It is simply integrated in the interpretive process” (at para. 65). The resolution of this dispute is best left for another day, as the facts of this case clearly meet the more restricted interpretation of section 53.1 and do not require a broader reading of that section. More germane to the resolution of the case at bar is whether this new provision allows for the consideration of foreign prosecution files. This issue is more than just a theoretical discussion point. In fact, in a recent decision, the Federal Court3 found that section 53.1 was not applicable since the file wrapper was not raised to rebut the patentee’s claim construction. This is because the patent owner had left it to its exclusive licensee to allege infringement.  Therefore, although the patentee was eventually made a party to the proceedings (only because invalidity of the patent had been alleged), the claim construction that the defendant wanted to rebut was not made by the patentee, but rather by its exclusive licensee. Thus, unlike Judge Manson in Canmar, Judge Barne in Allergan adopted a much more restrictive interpretation of section 53.1 of the Act.  This debate regarding the file wrapper estoppel doctrine will continue and will most likely go all the way to the Supreme Court of Canada. Stay tuned! Canmar Foods Ltd. v. TA Foods Ltd. 2019 FC 1233 Canmar Foods Ltd. v. TA Foods Ltd. 2021 FCA 7 Allergan Inc. v. Sandoz Canada Inc. et al. 2020 FC 1189.