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COPYRIGHT - Indirect infringement - Sale, distribution, exhibition or importation - Remedies - Injunctions

Tuesday, March 13, 2018 @ 8:45 AM  


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Appeal by Bell et al from a judge’s decision to vacate an Anton Piller order and to dismiss the appellants’ motion for an interlocutory injunction to restrain Lackman from operating TVAddons. Lackman was involved in the creation and operation of the TVAddons website, a repository for software used to supplement other applications with additional functions or features. One such application was the KODI media player, a software application installed on electronic devices to allow users to play multimedia content. When used in conjunction with add-ons, the KODI media player could be used to access and stream multimedia content hosted on the Internet. Some add-ons directed users toward legitimate websites, while others directed users toward copyrighted content where the user had no authorized access. TVAddons had both infringing and non-infringing add-ons. The appellants characterized the site as a platform for copyright piracy. The add-ons found on the site could be used to access Canadian television stations and live sports as well as on-demand TV and motion pictures. Following ex parte and in camera motions, a judge issued an interim injunction enjoining Lackman from communicating or making available to the public the appellants’ programs, and from inducing anyone to initiate acts of infringement of the appellants’ rights to communicate their programs to the public by telecommunication. Lackman was ordered to provide his login credentials for modification by a computer forensics expert and deactivation of the website. Solicitors for the appellants were authorized, pursuant to an Anton Piller order, to inspect Lackman’s residence, make copies of documents pertaining to the website and financial records, remove materials, and make mirror images of digital devices, as well as to question Lackman in regards to the location of information relating to the development and operation of the website. The orders were valid for 14 days. In the impugned decision, another judge, critical of the manner in which the Anton Piller order was carried out, found that the true purpose and effect of the order was to destroy Lackman’s livelihood, deny him the financial resources to finance a defence to the copyright infringement claim by the appellants, and to provide an opportunity to discover Lackman without procedural safeguards. This judge found that the appellants lacked a strong prima facie case of infringement, vacated the Anton Piller order and denied the appellants an interim injunction.

HELD: Appeal allowed. The judge who vacated the Anton Piller order misapprehended the evidence in assessing the strength of the appellants’ case. There was clear evidence that most of the featured add-ons on the website were infringing, so the judge erred in finding that just over one per cent of the add-ons were purportedly infringing. The judge also appeared to have misunderstood the nature of Lackman’s activities. The appellants made out a strong prima facie case that Lackman, by hosting and distributing infringing add-ons, was making the appellants’ programs and stations available to the public in a way that allowed users to access them from a place and time of their choosing, contrary to the Copyright Act. The judge erred in characterizing TVAddons as a mere neutral conduit for information provided by others. Given that a strong prima facie case for infringement was made out, the injunction was justified given the clear evidence of irreparable harm. Lackman’s efforts to conceal his assets made it impossible for him to prove that the injunction would prevent him from earning a living and therefore from defending the action. The execution of the Anton Piller order on Lackman was not undertaken in a manner akin to an interrogation. The questions asked of Lackman were completely within the contemplation of the issuing judge. The order needed to be broad to ensure that the infringing conduct was ceased.

Bell Canada v. Lackman, [2018] F.C.J. No. 176, Federal Court of Appeal, M. Noël C.J., J. Gauthier and Y. de Montigny JJ.A., February 20, 2018. Digest No. TLD-Mar122018004