Protecting Online Content on Both Sides of the BorderKUSIC AND KUSIC
Being an IP and business attorney who services both U.S. and Canadian clients, I often find myself caught between the dichotomy of U.S. and Canadian online copyright enforcement laws. In most cases, these bordering countries offer similar legal protections for copyrighted works. However, the extent to which the U.S. and Canada provide rights for content owners to self-enforce their protected works short of litigation varies substantially. While these differences can pose challenges, they also create opportunities for content owners to leverage stronger self-enforcement regimes to protect their works.
The crux of such differences is based in the obligations and legal consequences Internet service providers (ISPs) have under U.S. and Canadian law to remove infringing content they host or store. Under the Digital Millennium Copyright Act (17 U.S.C. § 512(c)(3)(A)), the U.S. has a “notice and takedown” system that provides ISPs immunity from contributory copyright infringement for storing their customer’s infringing content if they disable access or remove such content from the Internet upon the receipt of a notice of the infringement from the content owner (or their authorized agent). Although drafted with the intent of protecting ISPs from liability for unknowingly storing an infringer’s content, the notice and takedown system gives content owners a relatively inexpensive, quick and effective way to enforce their content’s copyright protections without resorting to slow and costly litigation.
In contrast, Canada’s Copyright Act provides a “notice and notice” system requiring a Canadian ISP to provide their infringing customer notice of their infringing acts upon receipt of a notice from the owner or authorized agent of the infringed content. As the notice and notice system does not require the disabling or removing of infringing content, a Canadian ISP has the discretion as to whether it will take down infringing content its hosts—with no guarantee that it will do so. Further, the notice and notice system does not require that a Canadian ISP keep records of notices received. This means that an ISP could potentially not know whether a particular infringing customer has repeatedly abused the ISP’s own policies or infringed multiple protected works that would assist them in determining whether the customer’s website should be take down. Even worse, Canada’s system removes the legal threat of contributory liability for an ISP that fails to give notice to infringing users. An ISP that fails to notify its infringing customers will only be subject to statutory fines ranging from CA$ 5,000-10,000.00 (roughly the same in US$), which, depending on the case may be a substantially lower penalty than the damages they would face for contributory copyright infringement under U.S. copyright law.
The notice and notice system’s combination of reduced enforcement obligations and lack of legal incentives means that a content owner has virtually no guarantee that their notice of infringement to an ISP under Canadian copyright law will result in the disabling or removal of infringing content. Consequently, content owners are forced to rely on the discretion of Canadian ISPs or the violators themselves to remove infringing content—or seek a more expensive and time-consuming judicial remedy to ensure that infringing content will be removed from the Internet. In fairness, a U.S. ISP can opt to not remove infringing content despite the risk of contributory liability under U.S. copyright law. This places a content owner in the same predicament under U.S. law as they would face under Canada’s notice and notice system. However, the U.S. notice and takedown system provides more incentives for an ISP to remove infringing content on behalf of content owners in a timely manner.
So what can a content owner do to protect their works against a Canadian-hosted infringer? Fortunately, they can often take advantage of the U.S. notice and takedown system to persuade a Canadian ISP to remove infringing content. To do so, an owner’s content must be protectable under U.S. copyright law and the Canadian ISP hosting the infringer’s website must be subject to U.S. jurisdiction. Canadian content and content created in other countries that are signatories to the Berne Convention for the Protection of Literary and Artistic Works (“Berne Convention”) qualify for U.S. copyright protection if they would otherwise be considered protected works under U.S. copyright law, and were created by a national or a habitual resident of a Berne Convention country, or first published or published soon thereafter in a Berne Convention country.
If a content owner’s work qualifies as a protected work under U.S. copyright law, a Canadian ISP must have enough interactions with the U.S. (known as “minimum contacts”) to be brought under U.S. jurisdiction. Generally, such contacts require that an ISP have purposeful interactions with U.S. citizens and commerce, such as marketing its services in the U.S. or to U.S. customers that would reasonably and foreseeably bring the ISP under U.S. jurisdiction. Ultimately, determining whether a Canadian ISP can be brought under U.S. jurisdiction is done on a case-by-case basis. However, an ISP who sells services or host sites for U.S customers is generally subject to U.S. jurisdiction.
The potential for content owners to qualify for and utilize the U.S.’ notice and takedown system against infringing Canadian websites can help content owners more timely and cost-effectively protect their copyrighted works in Canada. However, utilizing U.S. notices as described in this article is by no means guaranteed to remove infringing Canadian content and content owners should work with a qualified U.S. attorney to determine whether they can and should utilize the U.S.’ notice and takedown procedures to protect their copyrighted works.
Legal Disclaimer: Lucas S. Michels (the “Author”) intends, but does not represent, promise, or guarantee that this article and any and all information and content included therein, is accurate, correct, complete or up-to-date. All information in this article is provided “as is”, with no guarantee of completeness, accuracy, timeliness or of the results obtained from the use of this information, and without warranty of any kind, express or implied, including, but not limited to warranties of performance, merchantability, fitness for a particular purpose, or infringement of any kind. In no event will Author be liable to a reader or any other party for any decision made or action taken in reliance on the information and content in the Article or for any consequential, special, or similar damages. Readers shall not consider information enclosed in this article to be an invitation or an agreement to initiate an attorney-client relationship with the Author or any other party. The Author does not wish to represent anyone who is in a state, country, or jurisdiction where the Author has no license to practice law, nor disseminate this article where it is not in compliance with local laws or regulations.
 Canada International Intellectual Property Alliance (IIPA) 2013 Special 301 Report on Copyright Protection and Enforcement, IIPA, Feb. 8, 2013, 129, available at http://www.iipa.com/rbc/2013/2013SPEC301CANADA.PDF.
 See generally Bob Taratino, Online Infringement: Canadian “Notice and Notice” vs US “Notice and Takedown”, Heenan Blaikie LLP, Jun. 27, 2012, available at http://www.lexology.com/library/detail.aspx?g=e0e3ffdb-a96f-4176-add3-92fd2812d4bc.
 See id. (citing Copyright Act, Section 41.26(3)).
 Int’l Shoe Co. v. Wash., 326 U.S. 310, 316 (1945).