Who Must Show Consent in an Intellectual Property Infringement Case?

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.

  1. 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.

  2. 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.

  3. Thank you professor for acknowledging your error of fact. Alnaz is indeed a competent lawyer. However, in this case both the plaintiff and the defendant appear to have been handicapped by refrain and therefore I agree that it does not form a precedent. Remember also that an opportunity was lost to seek an answer from the plaintiff. Once they got a court order to cross-examine the Aga Khan, the defendants did not ask the questions they had come prepared to ask and subsequently failed to deliver the transcript to the court. Under these circumstances, the court is handicapped. Yet, it would be interesting to see if an appeal would be entertained on the basis you suggest. Under Canadian law copyright is automatic. Does that make a difference on the issue of reverse onus? And If I recall correctly, the Aga Khan denied ever issuing implied or any other form of consent. In the absence of the lost opportunity to cross examine, that fact would then stand. Or not? It will be interesting to see your longer thesis on an error in law. And as you can already see from Mr. Jiwa’s response he did state his authorities. Regardless, the case does not present a good subject for analysis because of the various flaws that existed in the conduct of the defence. The defendants claim they got divine consent and no words were exchanged between the defendants and the Aga Khan when a book – already published without consent – was presented on a plate. During this occasion, no mention was made of any intent to publish, nor any other matter referencing the book, intent to publish more copies, and distribution. So this would appear to be a case where the defendants suggest they had divine approval. This was the fact they argued. This was also part of the affidavit of the two defendants. I will wait to read your thesis after you have gathered all the facts. I felt you were jumping the gun here a little bit – something you may not tolerate from your students. You should take a good look at all the documentation before you answer because it seems you were unaware of several facts before you wrote your shorter response.

  4. In reply to the previous correspondent: My note deals with a short but important point of law with implications for copyright and other intellectual property. The fact that copyright arises automatically has no impact on the burden of proof, which in our legal system usually stays with the person bringing a case. It does not look as if the court’s decision would have gone the other way had it decided the plaintiff bore the burden of proof; at least, that’s how I interpret the judgment. The case has no doubt many other points of interest for both lawyers and non-lawyers, and someone may want to write a book on it one day, but that someone will not be me.

  5. Here in this case, defendants never challenged that books they published was not copyright materials.

    Instead defendants asked the court to verify that they had explicit authorization to publish those materials; and hence the burden swifted on the defendants and they failed. Defendants did their the best to convince the court that they had implicit authorization. Simple put that implicit materials are not tangible and therefore it is beyond for the court to comprehending.

    The second issue was that, the case was not brought by the original owner.

    Therefore, I don’t believe court made any error. What do you think?

  6. On the second point, there was no dispute about the Aga Khan’s copyright ownership. The judge said at [6] of his reasons that the defendants “admit his ownership and admit that if it were not for his consent they would be infringing his copyright.” On the first point, the judge decided on the material he had that there was no express or implied consent to publication given by the Aga Khan. I can’t see any legal error in how he went about that task — apart from the burden of proof point, which I don’t think affected the outcome of the case anyway — so the defendants will find it hard to have that finding reversed.

  7. Thanks for the response.

    I have two more questions, 1) Since Alnaz Jiwa is a competent lawyer and the defendants in the matter of this case, if he files the frivolous appeal, what kind of the sanction court can imposed on him?

    2) How can Mr. Jiwa disassociates from the case so his co-defendant file the appeal?

  8. 1) If an appeal is filed by a lawyer, presumably he believes he has solid grounds for appeal. In this case, for example, he may think that had the burden of proof on consent been placed on the right party, there would not have been enough evidence of lack of consent to discharge the plaintiff’s burden. It doesn’t look that way to me from reading the court’s reasons for judgment, but I cannot say that is an impossible argument to make. Losing appellants are usually liable for a good part of the legal costs of the winning respondent, besides their own.
    2) It is possible for one party to appeal without the other also doing so. He may have separate grounds from his co-defendant. The named defendants here filed separate statements of defence and represented themselves separately, although the reasons for judgment give the impression that the case on consent was much the same for both.

  9. Plaintiff has burden to show material in contention is in fact an intellect property [by meeting requirements – is unique, it has economic value and was protected] (this was waived by defendants), material was in fact was used [published] (undisputed facts), plaintiff never authorized to publish [by defendants] (this is done with declaration under penalty of perjury which is sufficient at this stage).

    Once above is established, burden shifts on defendants to show that they had consent from the Plaintiff to publish the material.

  10. More precisely, a plaintiff has the legal burden to show he is a qualified person who owns copyright in Canada for a literary work; that the defendant has done an act reserved to the plaintiff (reproduction); and that the plaintiff did not consent to it. If consent is in issue (as it was), the defendants have the onus of leading evidence that in fact shows consent. The legal burden of proving lack of consent on a balance of probabilities always remains on the plaintiff; but the burden is satisfied once the plaintiff produces adequate evidence (as he did) until & unless the evidence led by the defendant adequately contradicts it (which in this case, it did not, according to the judge). The case law cited in my blog note and elaborated for other IP in the forthcoming Note in the IPJ establishes all this. For me, this topic is now exhausted.

  11. The literary work in question must of course also be original – as it was conceded to be by all.

  12. I was in communication with the one of the defendants in this matter. Alnaz says, “There are differences between appealing decisions made by trial judges, or appealing decisions made by interlocutory motions judges, for summary motion decisions etc. One size does not fit all, as well errors of law are treated differently than errors or fact, or errors of mixed fact and law etc etc.”

    Is it true?

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