CANADA Law and Practice Contributed by: Casey Chisick, Steven Kennedy, Karen MacDonald, Jessica Zagar, Dian Howard and Steven Henderson, Cassels Brock & Blackwell LLP
of circumventing a TPM, and manufacturing, importing, distributing, offering for sale or rental or providing any technology, device, or compo - nent designed or produced primarily for the pur - poses of circumventing a TPM. Other provisions address liability for removing electronic rights management information from a work, sound recording, or performer’s performance. Moral rights infringement is addressed in 3.4 Copyright Rights . 7.3 Factors in Determining Infringement Trade Mark Infringement under Section 19 requires “use” of the impugned mark contrary to the Trademarks Act. With respect to Section 20, whether a mark is confusing is to be determined with reference to the non-exhaustive factors set out in the Trademarks Act. All surrounding circumstances should be considered, including, for example, evidence of actual confusion among consumers or evidence of similar third-party trade marks. Copyright The right to produce or reproduce a work is infringed where a person produces, reproduc - es, performs in public, or publishes a work, or a substantial part of it, without the consent of the copyright owner. Copyright infringement requires access and similarity: that is, the plaintiff must prove that the defendant had access to the protected work and that there is sufficient similarity between the protected and infringing works to establish infringement. Where the alleged infringement is non-literal, or some but not all of a work or other subject matter has been used, a court will conduct a holistic comparison of the material
at issue to determine whether a substantial part of the protected material has been used. Sub - stantiality is primarily a question of quality, not quantity. 7.4 Prerequisites and Restrictions to Filing a Lawsuit There are no prerequisites to filing a trade mark or copyright lawsuit. Although a demand letter is often sent before initiating proceedings, it is not required. If a party sends a frivolous demand letter to a party’s customers or makes unfounded com - plaints to third-party retailers, it may in some cases be grounds for an action in tort. Under the Trademarks Act, Section 7(a) prohibits mak - ing false and misleading allegations of infringe - ment. Generally, though, a demand letter sent only to the alleged infringer will not give rise to these risks. 7.5 Lawsuit Procedure Trade Mark The Federal Court and provincial superior courts have concurrent jurisdiction to hear any action brought under the Trademarks Act, with the exception of certain criminal provisions. A pure common law claim for the tort of passing off must be brought in a provincial superior court. Copyright The Federal Court and provincial superior courts have concurrent jurisdiction to hear any action brought under the Copyright Act. However, the Federal Court’s jurisdiction is generally limited to deciding disputes and awarding remedies under the Copyright Act. Where a claim involves contract or tort matters in addition to a claim for copyright infringement, it usually must be brought in a provincial court, which has general jurisdiction over those matters.
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