In the Courts: Fox teaches infringer a costly lesson

• Author: Joanna Vatavu
• Position: Macmillan LLP, Canada
• Pages: 31-31

p. 31WIPO | MAGAZINE | IN THE COURTS

Twentieth Century Fox has achieved a $10.5 million victory against Mr. Hernandez,

the former operator of two Internet web sites dedicated to streaming episodes of the

Simpsons and Family Guy telev ision shows. It was alleged that the d efendant had

illegally copied over 700 ep isodes of the programs from televi sion broadcasts and

uploaded them to the Watch The Simpsons Onl ine and Watch Family Guy Online

websites where the episodes were made available to the public for streaming.

This case is a perfe ct illustration that statutory da mages can be a powerf ul tool for

copyright owners in Can ada. Proving actual damages i n a copyright infringem ent

case can be difc ult, particularly wh ere the defendant is uncoop erative and claims

not to have any sales records. Section 38.1 of the Canadian Copyright Act prov ides

that copyright owners may ele ct to recover statutory damages instead of lost prots

and damages suf fered as a result of activities of infringers. Where the inf ringements

are carried out for a com mercial purpose, the Act provides for a maximum award of

$20,000 in respect of all infring ements relating to each individual work involved in the

proceedings. In this case, the ma ximum statutory damages would have been more

than $14 million. It was alleged that the defendant site operator proted f rom sales

of advertising and promotio nal items related to the television shows, and gi ven the

extensive number of episod es uploaded and shared by him, the court awarded $10

million in statutory dama ges.

Generally a plaintif f can only obtain an injun ction prohibiting the defendant f rom

repeating the infringem ents specically addre ssed in the lawsuit. However, section

39.1 of the Copyright Act permits the court to grant a “wide injunctio n” restraining

infringement of not only the wor ks in issue but any other works owned by the plaintiff.

In this case, the court gran ted a wide injunction against the d efendant prohibiting

him from any further inf ringing dealings wi th the works involved in the proceedin gs

as well as any other works in respec t of which Twentieth Century Fox owns copyrig ht,

including works which co me into existence after the date of the judgment.

The court also foun d that the defendant’s repeated, blatant and intentiona l miscon-

duct merited an award of punitive da mages to serve as deterrence and punishment

for such illegal activiti es. The court ordere d an award of $500,000 in this respect.

This is one of the larger statutor y damage awards a copyright owne r has obtained

in Canada and no doubt sends a stro ng message to those who build bu sinesses

around illegal le sha ring in Canada. ◆

FOX TEACHES

INFRINGER

A COSTLY LESSON

by Joanna Vatavu,

Macmillan LLP, Canada