Copyright Infringement Hinges on Substantial Similarity



Copyright law protects not ideas, but the form in which ideas are expressed. Thus, a copyright owner may control the reproduction of the original expression in a copyrighted work, such as a book, but cannot monopolize the concept or process expressed in the work.


In Canada, unauthorized reproduction of any substantial part of an original work may constitute an infringement of copyright in that work.


Canadian case law has defined reproduction to mean copying, which is the act of producing additional or new copies of the work in any material form. Reproduction can be established by direct proof of copying, or can be inferred from access to the copyright work and substantial similarity between the allegedly infringing work and the copyright work. However, an inference of copying can be rebutted by proof of independent creation. In other words, there is no copyright infringement if a work was created entirely independently.


Whether a part of a work is “substantial” shall not be measured only by the quantity of matter reproduced from a copyrighted work, even though that may be a significant factor. What is more important is the nature or quality of matter reproduced. Although it may be useful to compare components of each work, the overriding requirement for infringement is substantial similarity of the works as a whole and substantial similarity in the modes of expression.


A substantial part of a work is a flexible notion. It is a matter of fact and degree … What constitutes a substantial part is determined in relation to the originality of the work that warrants the protection of the Copyright Act. As a general proposition, a substantial part of a work is a part of the work that represents a substantial portion of the author’s skill and judgment expressed therein.


The law is settled that a computer program is protected by copyright at the source code and object code level.


However, questions remain as to whether copyright may extend to protect other components of the computer program, such as the structure, sequence or organization of the program, the user interface, application programming interface (API) and the functionality of the program.


The answers to these questions may very well depend on whether a particular component of a program qualifies as an expression of an idea, or the idea itself, in light of the over-all arrangement of the computer program.



Patent Infringement by Sale of Unassembled Parts

Patent Infringement by Sale of Unassembled Parts

assembled wrench by Creative Tools licensed under CC BY 2.0



In Canada, the case law has defined patent infringement as any act that interferes with the full enjoyment of a patent owner’s exclusive rights of making, using, and vending its patented invention.


Where the patented invention is an assembly of well-known parts, Canadian courts have broadly interpreted the scope of the patent owner’s exclusive rights.


For example, signing in Canada an agreement to make and sell an allegedly infringing product may amount to infringement in Canada even if the product has not been manufactured at the time of the agreement. In other words, “vending” includes an actual sale, where the property in the goods is transferred from the seller to the buyer, as well as an agreement to sell.


In addition, a supplier may not avoid infringement liability by selling unassembled parts of a patented invention, where the only purpose for buying the unassembled parts is to assemble them into the patented invention.


Further, “making” a patented invention includes making all of the parts that are later sufficiently assembled to test the fitting of the parts. Thus, a manufacturer cannot avoid infringement liability by separating an infringing product for exporting outside Canada after the testing of the completed assembly have occurred in Canada.


With respect to “use”, Canadian courts have broadly held that infringement through “use” applies to patented products and processes, and may also extend to their output where the patented invention plays an important role in producing the output.


“It is no bar to a finding of infringement that the patented object or process is a part of or composes a broader unpatented structure or process, provided the patented invention is significant or important to the defendant’s activities that involve the unpatented structure.”


What is not always clear from case law, however, is whether making and exporting unpatented devices for practising abroad a Canadian patented method would constitute infringement in Canada.


In such context, it may be necessary to determine whether a physical device or apparatus can be a “part” of a claimed method, which generally comprises steps for performing the method and not the physical devices used in performing the method. It may also call for an analysis of whether there is a “making” of the claimed method by supplying devices for performing the method, and whether a sale of those devices is a “vending” of the method.