and
Beverley Moore ,
Adrian Howard and
Ryan Steeves
Copyright Cases
Appeal Dismissed: Dispute over Ownership, Alleged Copyright Infringement of Software Programs, Scope of a License, and the Revocation of a Certificate of Registration
Planification-Organisation-Publications
Systèmes (POPS) Ltée v. 9054-8181 Québec
Inc., 2014 FCA 185
This was an appeal from a judgment of the Federal Court (decision
here, summary here) dismissing the action for damages of
Elizabeth Posada ("Posada") and the company incorporated
by Posada, Planification-Organisation-Publications Systèmes
(POPS) Ltée ("POPS"), and for infringement of
their copyright on software.
By way of background, Posada used a computer program developed by
a third-party to build an interface so that the software could be
used on microcomputers. This was called "Ceres". Posada
and the two individual defendants used Ceres as part of their
duties as professors at the Université du Québec
à Montreal (UQAM). The two named defendants purchased
licenses to use Ceres on behalf of UQAM. There was a business
relationship between POPS and the corporate defendant, 9054-8181
Québec Inc. ("IDP"). Posada became a paid employee
of IDP, to develop adaptations of Ceres, such as Omega, Comex and
Epsilon. Following Posada's departure from IDP, Posada (and
POPS) demanded that IDP cease using Ceres, Epsilon and Comex. The
appellants, POPS and Posada, commenced the proceeding in the
Federal Court and, after the proceeding was filed, obtained a
Certificate of Registration of Copyright in respect of Omega and
Epsilon.
The trial judge held that POPS was the copyright owner in Ceres.
The Court then found that Posada was hired by IDP to develop Omega,
Comex and Epsilon, and as a result, that Posada granted IDP at
least an implied non-exclusive license to use Ceres and its
adaptations, including Omega, Epsilon and Comex. Finally, the trial
judge struck the Certificate of Registration in respect of the
adaptations Epsilon and Comex, which identified Posada as the sole
author and POPS as the sole owner.
The first issue on appeal was whether the judge erred in his
interpretation of the rights granted by POPS or Posada to IDP. POPS
and Posada argued that IDP only had a license on software products
that existed before the collaboration between IDP and Posada ended.
POPS and Posada further argued that the judge acted ultra petita
because the Respondents had only requested a license to use the
products in question (i.e. they never requested to have access to
the source code or to have the right to modify the products). The
Court of Appeal held that the judge nor the Court of Appeal can
award more than what was sought in the proceeding by the
Respondents. As such, the Court of Appeal chose not to limit the
scope of the license to the use of all versions of Ceres, Omega,
Epsilon and Comex existing at the end of the collaboration between
Posada and IDP.
The second issue on appeal was with respect to the trial
judge's determination that the user license was non-revocable.
POPS and Posada argued that the term was neither reasonable nor
equitable since the Respondents no longer collaborate with Posada
and there is therefore no consideration. The Court of Appeal
disagreed and found that the judge construed the true intention of
the parties and terms of the implicit license correctly.
On the issue of copyright infringement, the Court of Appeal agreed
with the trial judge that there was no infringement of POPS or
Posada's copyright because IDP did not use the various programs
that are subject of the appeal without POPS or Posada's
consent.
Finally, the Court of Appeal upheld the judge's decision to
strike the Certificate of Registration of Copyright identifying
Posada as the sole author and POPS as the sole owner of the rights
in respect of the Epsilon and Comex works. POPS and Posada argued
that the work covered by the Registration was a compilation in
which only POPS could claim to be the owner. However, the trial
judge merely concluded that POPS was one of the owners. The Court
of Appeal was not satisfied that the Registration related to a
compilation. Posada was working for IDP when the lines of source
code referred to in the Registration were written. Therefore,
pursuant to subsection 13(3) of the Copyright Act, IDP (the
employer) was the first owner of the copyright. Therefore, neither
Posada nor POPS could claim to be the sole owners of the copyright
in the absence of a specific agreement to that effect with IDP,
which was not found to exist. The Court of Appeal found that due to
the erroneous or incomplete information contained in the Epsilon
Registration, it was open to the trial judge to strike it even if
it was considered to be a compilation.
Therefore, the appeal was dismissed, except for that part of the
judgment relating to the scope of the license, which was
reformulated by the Court of Appeal not to include reference to
"any future adaptations" of the software products
developed by or on behalf of IDP.
Industry News
Health Canada has published a Policy on Drug/Medical Device
Combination Product Decisions.
Health Canada has published a Revision to an administrative
practice regarding the acknowledgement of receipt of Clinical Trial
Application Notifications received in the Office of Clinical Trials
of the Therapeutic Products Directorate.
The BLG Life Sciences Group has published LIFESIGNS: Life Sciences Legal Trends in
Canada, a Report on Intellectual Property, Litigation,
Corporate Commercial legal trends and industry developments in
Canada.
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