Decision offers lessons on Copyright Act limitations

A recent Federal Court case successfully argued by Toronto civil litigator, Bruce Baron, is a reminder that the limitation period for actions brought under the Copyright Act does not necessarily run from the time an alleged infringement is discovered.

Baron, principal of Gaertner Baron Professional Corporation, acted for the defendant in the case, which involved a dispute between two private career colleges over the use of course materials.

The plaintiff college has offered a number of certificates and diplomas since 1990, aimed mainly at those working in the travel, tourism and hospitality fields.

In 1996, it sold a franchise to two individuals, who operated the business through a numbered company. However, the agreement was terminated in 2001 following financial difficulty, after which the company was sold to the defendant, a former employee of the plaintiff who had established his own rival private college.

The plaintiff alleged that the defendant had used its copyrighted materials as part of the provincial approval process for his career college and its travel and tourism offerings, claiming to have discovered the infringement as a result of a discussion with one of the numbered company’s former owners in 2011.

The plaintiffs action was launched in 2013, apparently well within the three-year deadline set by s. 43.1 of the Copyright Act. However, the Federal Court in the case agreed with Baron, who argued that the plaintiff could have discovered the claim as early as 2002, when it wrote to the defendant, warning him against improper use of its course materials.

“Where a limitations defence is raised, a plaintiff has the burden of proving that the cause of action arose within the prescribed limitation period,” wrote Federal Court Justice Simon Fothergill in his Oct. 31 judgment. “I am not persuaded that [the plaintiff] has met this burden. The evidence adduced in this case, particularly the strongly-worded demand letter of August 12, 2002, demonstrates that the material facts were discoverable with reasonable diligence in 2002. This action is therefore statute-barred.”

“The case primarily turned on its facts,” Baron tells, noting that what qualifies as “reasonable diligence” will vary depending on the surrounding circumstances.

The judge wrote that the 2002 letter confirmed the plaintiff’s concern about the defendant, explaining that it had a number of options to find out more about his travel and tourism diploma and certificates.

“It could have obtained a brochure, sent someone to register for [the defendant’s] program, or made a request to the Ministry under freedom of information legislation, as it did many years later,” Fothergill wrote.

The judge went on to find that the plaintiff fell short of proving the defendant had made use of its materials or caused it any damages, calling its claims “circumstantial and speculative” and “contradicted by the preponderance of the evidence adduced in these proceedings.”

Instead, Fothergill accepted the defendant’s testimony that he had registered his own college’s travel and tourism programs using materials purchased from another source.

Posted in: