Principles of Copyright Law – Cases and Materials

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IV. INFRINGEMENT AND ENFORCEMENT

EXAMPLE:

The plaintiffs were the copyright owner of a computer program contained in

device that decoded scrambled pay television signals, and the First Choice

television channel which was the exclusive licensee of that device. They sued

the defendant for copyright infringement for making and marketing a decoding

device that copied the copyright program. The plaintiffs sought an interlocutory

injunction:

Titan Linkabit Corp. v. S.E.E. See Electronic Engineering Inc., (1993) 48

C.P.R. (3d) 62 (Canada: Federal Court, Trial Division)

MR JUSTICE MacKAY:

[T]he test for an interlocutory injunction in this court is ... whether there is a serious issue to be

tried; if so, whether the applicant establishes it will suffer irreparable harm if the interlocutory

injunction is not granted; and if so, whether in all the circumstances the balance of convenience

favours the granting of an interlocutory injunction pending trial of the issues between the parties.

Serious issue

Defendants ... admit to copying some of the plaintiffs’ [works] but submit the [works] are

merely multiple digit numbers and are not original literary works. ... [They also] submit they

have not copied [other] works, but have independently developed a functional equivalent of the

plaintiffs’ programs, or copied only those portions of the works that can be expressed in no other

way. ...

On the basis of the evidence and argument presented by counsel, I find the plaintiffs have

established that there are a number of serious issues, concerning claimed copyright ... interests,

arising in this case. Those issues are not here dealt with on their merits; their final resolution

awaits a trial of the issues.

Irreparable harm

The plaintiffs claim they will suffer irreparable harm, if an injunction is not now granted pending

trial of the issues...

Infringement of their copyright interests, it is urged, constitutes sufficient harm per sefor the

grant of injunctive relief without the necessity of further proof of irreparable harm. ... [It was

said in a trademarks case:] “Here the validity of the respondent’s mark is very much under attack

and in issue in these proceedings. In my view, a determination of the merits which involve

extensive evidence and contentious and disputed factors which address the vital question of the

validity of the mark should not be decided at the interlocutory injunction stage. In such a

situation a conclusion that mere infringement of a proprietary right in a trade mark constitutes,

of itself, irreparable harm is somewhat contradictory since it is the very “proprietary right”

which is at issue...”

[T]he same principle ... must apply where the validity of claimed copyright interests is

contested. ...

[I]f an injunction is not awarded to the plaintiffs pending trial, they will suffer irreparable harm

through the following circumstances. Continuing distribution and sales of defendants’ ...

descramblers will place devices in the hands of consumers which the plaintiffs, even if