Combating Counterfeit Products Act (S.C. 2014, c. 32)
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Assented to 2014-12-09
Combating Counterfeit Products Act
S.C. 2014, c. 32
Assented to 2014-12-09
An Act to amend the Copyright Act and the Trade-marks Act and to make consequential amendments to other Acts
SUMMARY
This enactment amends the Copyright Act and the Trade-marks Act to add new civil and criminal remedies and new border measures in both Acts, in order to strengthen the enforcement of copyright and trade-mark rights and to curtail commercial activity involving infringing copies and counterfeit trade-marked goods. More specifically, the enactment
(a) creates new civil causes of action with respect to activities that sustain commercial activity in infringing copies and counterfeit trade-marked goods;
(b) creates new criminal offences for trade-mark counterfeiting that are analogous to existing offences in the Copyright Act;
(c) creates new criminal offences prohibiting the possession or export of infringing copies or counterfeit trade-marked goods, packaging or labels;
(d) enacts new border enforcement measures enabling customs officers to detain goods that they suspect infringe copyright or trade-mark rights and allowing them to share information relating to the detained goods with rights owners who have filed a request for assistance, in order to give the rights owners a reasonable opportunity to pursue a remedy in court;
(e) exempts the importation and exportation of copies and goods by an individual for their personal use from the application of the border measures; and
(f) adds the offences set out in the Copyright Act and the Trade-marks Act to the list of offences set out in the Criminal Code for the investigation of which police may seek judicial authorization to use a wiretap.
The enactment also amends the Trade-marks Act to, among other things, expand the scope of what can be registered as a trade-mark, allow the Registrar of Trade-marks to correct errors that appear in the trade-mark register, and streamline and modernize the trade-mark application and opposition process.
Her Majesty, by and with the advice and consent of the Senate and House of Commons of Canada, enacts as follows:
SHORT TITLE
Marginal note:Short title
1. This Act may be cited as the Combating Counterfeit Products Act.
R.S., c. C-42COPYRIGHT ACT
2. The definition “Minister” in section 2 of the Copyright Act is replaced by the following:
“Minister”
« ministre »
“Minister”, except in sections 44 to 44.12, means the Minister of Industry;
3. Section 27 of the Act is amended by adding the following after subsection (2.1):
Marginal note:Secondary infringement — exportation
(2.11) It is an infringement of copyright for any person, for the purpose of doing anything referred to in paragraphs (2)(a) to (c), to export or attempt to export a copy — of a work, sound recording or fixation of a performer’s performance or of a communication signal — that the person knows or should have known was made without the consent of the owner of the copyright in the country where the copy was made.
Marginal note:Exception
(2.12) Subsection (2.11) does not apply with respect to a copy that was made under a limitation or exception under this Act or, if it was made outside Canada, that would have been made under such a limitation or exception had it been made in Canada.
4. (1) The portion of subsection 42(1) of the English version of the Act before paragraph (a) is replaced by the following:
Marginal note:Offences
42. (1) Every person commits an offence who knowingly
(2) Subsection 42(1) of the Act is amended by striking out “or” at the end of paragraph (d) and by replacing the portion of the subsection after paragraph (d) with the following:
(e) possesses, for sale, rental, distribution for the purpose of trade or exhibition in public by way of trade, an infringing copy of a work or other subject-matter in which copyright subsists;
(f) imports, for sale or rental, into Canada any infringing copy of a work or other subject-matter in which copyright subsists; or
(g) exports or attempts to export, for sale or rental, an infringing copy of a work or other subject-matter in which copyright subsists.
(3) The portion of subsection 42(2) of the English version of the Act before paragraph (a) is replaced by the following:
Marginal note:Possession and performance offences
(2) Every person commits an offence who knowingly
(4) The portion of subsection 42(2) of the Act after paragraph (b) is repealed.
(5) Section 42 of the Act is amended by adding the following after subsection (2):
Marginal note:Punishment
(2.1) Every person who commits an offence under subsection (1) or (2) is liable
(a) on conviction on indictment, to a fine of not more than $1,000,000 or to imprisonment for a term of not more than five years or to both; or
(b) on summary conviction, to a fine of not more than $25,000 or to imprisonment for a term of not more than six months or to both.
(6) Section 42 of the Act is amended by adding the following after subsection (3):
Marginal note:Notice
(3.01) Before making an order under subsection (3), the court shall require that notice be given to the owner of the copies or plates and to any other person who, in the court’s opinion, appears to have a right or interest in them, unless the court is of the opinion that the interests of justice do not require that the notice be given.
(7) Subsection 42(5) of the Act is replaced by the following:
Marginal note:Parallel importation
(5) For the purposes of this section, a copy of a work or other subject-matter is not infringing if the copy was made with the consent of the owner of the copyright in the country where the copy was made.
5. The heading before section 44 and sections 44 and 44.1 of the Act are replaced by the following:
Importation and Exportation
Interpretation
Marginal note:Definitions
44. The following definitions apply in sections 44.02 to 44.4.
“court”
« tribunal »
“court” means the Federal Court or the superior court of a province.
“customs officer”
« agent des douanes »
“customs officer” has the meaning assigned by the definition “officer” in subsection 2(1) of the Customs Act.
“duties”
« droits »
“duties” has the same meaning as in subsection 2(1) of the Customs Act.
“Minister”
« ministre »
“Minister” means the Minister of Public Safety and Emergency Preparedness.
“release”
« dédouanement »
“release” has the same meaning as in subsection 2(1) of the Customs Act.
“working day”
« jour ouvrable »
“working day” means a day other than a Saturday or a holiday.
Prohibition and Detention by Customs Officer
Prohibition
Marginal note:Prohibition on importation or exportation
44.01 (1) Copies of a work or other subject-matter in which copyright subsists shall not be imported or exported if
(a) they were made without the consent of the owner of the copyright in the country where they were made; and
(b) they infringe copyright or, if they were not made in Canada, they would infringe copyright had they been made in Canada by the person who made them.
Marginal note:Exception
(2) Subsection (1) does not apply to
(a) copies that are imported or exported by an individual in their possession or baggage if the circumstances, including the number of copies, indicate that the copies are intended only for their personal use; or
(b) copies that, while being shipped from one place outside Canada to another, are in customs transit control or customs transhipment control in Canada.
Request for Assistance
Marginal note:Request for assistance
44.02 (1) The owner of copyright in a work or other subject-matter may file with the Minister, in the form and manner specified by the Minister, a request for assistance in pursuing remedies under this Act with respect to copies imported or exported in contravention of section 44.01.
Marginal note:Information in request
(2) The request for assistance shall include the copyright owner’s name and address in Canada and any other information that is required by the Minister, including information about the work or other subject-matter in question.
Marginal note:Validity period
(3) A request for assistance is valid for a period of two years beginning on the day on which it is accepted by the Minister. The Minister may, at the request of the copyright owner, extend the period for two years, and may do so more than once.
Marginal note:Security
(4) The Minister may, as a condition of accepting a request for assistance or of extending a request’s period of validity, require that the copyright owner furnish security, in an amount and form fixed by the Minister, for the payment of an amount for which the copyright owner becomes liable under section 44.07.
Marginal note:Update
(5) The copyright owner shall inform the Minister in writing, as soon as practicable, of any changes to
(a) the subsistence of the copyright that is the subject of the request for assistance; or
(b) the ownership of that copyright.
Measures Relating to Detained Copies
Marginal note:Provision of information by customs officer
44.03 A customs officer who is detaining copies of a work or other subject-matter under section 101 of the Customs Act may, in the officer’s discretion, to obtain information about whether the importation or exportation of the copies is prohibited under section 44.01, provide the owner of copyright in that work or subject-matter with a sample of the copies and with any information about the copies that the customs officer reasonably believes does not directly or indirectly identify any person.
Marginal note:Provision of information to pursue remedy
44.04 (1) A customs officer who is detaining copies of a work or other subject-matter under section 101 of the Customs Act and who has reasonable grounds to suspect that the importation or exportation of the copies is prohibited under section 44.01 may, in the officer’s discretion, if the Minister has accepted a request for assistance with respect to the work or subject-matter filed by the owner of copyright in it, provide that owner with a sample of the copies and with information about the copies that could assist them in pursuing a remedy under this Act, such as
(a) a description of the copies and of their characteristics;
(b) the name and address of their owner, importer, exporter and consignee and of the person who made them;
(c) their quantity;
(d) the countries in which they were made and through which they passed in transit; and
(e) the day on which they were imported, if applicable.
Marginal note:Detention
(2) Subject to subsection (3), the customs officer shall not detain, for the purpose of enforcing section 44.01, the copies for more than 10 working days — or, if the copies are perishable, for more than five days — after the day on which the customs officer first sends or makes available a sample or information to the copyright owner under subsection (1). At the request of the copyright owner made while the copies are detained for the purpose of enforcing section 44.01, the customs officer may, having regard to the circumstances, detain non-perishable copies for one additional period of not more than 10 working days.
Marginal note:Notice of proceedings
(3) If, before the copies are no longer detained for the purpose of enforcing section 44.01, the owner of copyright has provided the Minister, in the manner specified by the Minister, with a copy of a document filed with a court commencing proceedings to obtain a remedy under this Act with respect to the detained copies, the customs officer shall continue to detain them until the Minister is informed in writing that
(a) the proceedings are finally disposed of, settled or abandoned;
(b) a court directs that the copies are no longer to be detained for the purpose of the proceedings; or
(c) the copyright owner consents to the copies no longer being so detained.
Marginal note:Continued detention
(4) The occurrence of any of the events referred to in paragraphs (3)(a) to (c) does not preclude a customs officer from continuing to detain the copies under the Customs Act for a purpose other than the proceedings.
Marginal note:Restriction on information use — section 44.03
44.05 (1) A person who receives a sample or information that is provided under section 44.03 shall not use the information, or information that is derived from the sample, for any purpose other than to give information to the customs officer about whether the importation or exportation of the copies is prohibited under section 44.01.
Marginal note:Restriction on information use — subsection 44.04(1)
(2) A person who receives a sample or information that is provided under subsection 44.04(1) shall not use the information, or information that is derived from the sample, for any purpose other than to pursue remedies under this Act.
Marginal note:For greater certainty
(3) For greater certainty, subsection (2) does not prevent the confidential communication of information about the copies for the purpose of reaching an out-of-court settlement.
Marginal note:Inspection
44.06 After a sample or information has been provided under subsection 44.04(1), a customs officer may, in the officer’s discretion, give the owner, importer, exporter and consignee of the detained copies and the owner of copyright an opportunity to inspect the copies.
Marginal note:Liability for charges
44.07 (1) The owner of copyright who has received a sample or information under subsection 44.04(1) is liable to Her Majesty in right of Canada for the storage and handling charges for the detained copies — and, if applicable, for the charges for destroying them — for the period beginning on the day after the day on which a customs officer first sends or makes available a sample or information to that owner under that subsection and ending on the first day on which one of the following occurs:
(a) the copies are no longer detained for the purpose of enforcing section 44.01 or, if subsection 44.04(3) applies, for the purpose of the proceedings referred to in that subsection;
(b) the Minister receives written notification in which the owner states that the importation or exportation of the copies does not, with respect to the owner’s copyright, contravene section 44.01;
(c) the Minister receives written notification in which the owner states that they will not, while the copies are detained for the purpose of enforcing section 44.01, commence proceedings to obtain a remedy under this Act with respect to them.
Marginal note:Exception — paragraph (1)(a)
(2) Despite paragraph (1)(a), if the copies are forfeited under subsection 39(1) of the Customs Act and the Minister did not, before the end of the detention of the copies for the purpose of enforcing section 44.01, receive a copy of a document filed with a court commencing proceedings to obtain a remedy under this Act with respect to the detained copies or the written notification referred to in paragraph (1)(b) or (c), the period ends on the day on which the copies are forfeited.
Marginal note:Exception — paragraph (1)(c)
(3) Despite paragraph (1)(c), if the copies are forfeited under subsection 39(1) of the Customs Act after the Minister has received the written notification referred to in that paragraph, the period ends on the day on which the copies are forfeited.
Marginal note:Joint and several or solidary liability
(4) The owner and the importer or exporter of copies that are forfeited in the circumstances set out in subsection (2) or (3) are jointly and severally, or solidarily, liable to the owner of copyright for all the charges under subsection (1) paid by the copyright owner with respect to the period
(a) in the circumstances referred to in subsection (2), beginning on the day on which the copies are no longer detained for the purpose of enforcing section 44.01 and ending on the day on which the copies are forfeited; and
(b) in the circumstances referred to in subsection (3), beginning on the day on which the Minister receives the written notification referred to in paragraph (1)(c) and ending on the day on which the copies are forfeited.
Marginal note:Exception
(5) Subsections (1) to (3) do not apply if
(a) the detention of the copies for the purpose of enforcing section 44.01 ends before the expiry of 10 working days — or, if the copies are perishable, before the expiry of five days — after the day on which the customs officer first sends or makes available a sample or information to the copyright owner under subsection 44.04(1); and
(b) the Minister has not, by the end of the detention, received a copy of a document filed with a court commencing proceedings to obtain a remedy under this Act with respect to the detained copies or the written notification referred to in paragraph (1)(b) or (c).
No Liability
Marginal note:No liability
44.08 Neither Her Majesty nor a customs officer is liable for any loss or damage suffered in relation to the enforcement or application of sections 44.01 to 44.04 and 44.06 because of
(a) the detention of copies of a work or other subject-matter, except if the detention contravenes subsection 44.04(2);
(b) the failure to detain copies; or
(c) the release or cessation of detention of any copies, except if the release or cessation contravenes subsection 44.04(3).
Powers of Court Relating to Detained Copies
Marginal note:Application to court
44.09 (1) In the course of proceedings referred to in subsection 44.04(3), the court may, on the application of the Minister or a party to the proceedings,
(a) impose conditions on the storage or detention of the copies that are the subject of the proceedings; or
(b) direct that the copies are no longer to be detained for the purpose of the proceedings, on any conditions that the court may impose, if their owner, importer, exporter or consignee furnishes security in an amount fixed by the court.
Marginal note:Minister’s consent
(2) If a party applies to have the detained copies stored in a place other than a bonded warehouse or a sufferance warehouse, as those terms are defined in subsection 2(1) of the Customs Act, the Minister must consent to the storage of the copies in that place before a condition to that effect is imposed under subsection (1).
Marginal note:Customs Act
(3) The court may impose a condition described in subsection (2) despite section 31 of the Customs Act.
Marginal note:Continued detention
(4) A direction under paragraph (1)(b) that the copies are no longer to be detained for the purpose of the proceedings does not preclude a customs officer from continuing to detain the copies under the Customs Act for another purpose.
Marginal note:Security
(5) In the course of proceedings referred to in subsection 44.04(3), the court may, on the application of the Minister or a party to the proceedings, require the owner of copyright to furnish security, in an amount fixed by the court,
(a) to cover duties, storage and handling charges, and any other amount that may become chargeable against the copies; and
(b) to answer any damages that may, because of the detention of the copies, be sustained by the owner, importer, exporter or consignee of the copies.
Marginal note:Damages against copyright owner
44.1 (1) The court may award damages against the owner of copyright who commenced proceedings referred to in subsection 44.04(3) to the owner, importer, exporter or consignee of the copies who is a party to the proceedings for losses, costs or prejudice suffered as a result of the detention of the copies if the proceedings are dismissed or discontinued.
Marginal note:Damages awarded to copyright owner
(2) Any damages under subsection 34(1) awarded to the owner of copyright in proceedings referred to in subsection 44.04(3) are to include the charges incurred by the copyright owner as a result of storing, handling or, if applicable, destroying the detained copies.
Prohibition Resulting from Notice
Marginal note:Importation of certain copyright works prohibited
44.11 Copies made outside Canada of any work in which copyright subsists that if made in Canada would infringe copyright and as to which the owner of the copyright gives notice in writing to the Canada Border Services Agency that the owner desires that the copies not be imported into Canada, shall not be so imported and are deemed to be included in tariff item No. 9897.00.00 in the List of Tariff Provisions set out in the schedule to the Customs Tariff, with section 136 of that Act applying accordingly.
Court-ordered Detention
Marginal note:Power of court
44.12 (1) A court may make an order described in subsection (3) if the court is satisfied that
(a) copies of the work are about to be imported into Canada, or have been imported into Canada but have not been released;
(b) the copies were either
(i) made without the consent of the person who is owner of the copyright in the country where they were made, or
(ii) made elsewhere than in a country to which this Act extends; and
(c) the copies would infringe copyright if they were made in Canada by the importer and the importer knows or should have known this.
Marginal note:Who may apply
(2) A court may make an order described in subsection (3) on application by the owner of the copyright in a work in Canada.
Marginal note:Order of court
(3) In an order made under subsection (1), the court may
(a) direct the Minister
(i) to take reasonable measures, on the basis of information reasonably required by the Minister and provided by the applicant, to detain the copies of the work, and
(ii) to notify the applicant and the importer, immediately after detaining the copies of the work, of the detention and the reasons for the detention; and
(b) provide for any other matters that the court considers appropriate.
Marginal note:How application made
(4) An application for an order under subsection (1) may be made in an action or otherwise, and either on notice or ex parte, except that it must always be made on notice to the Minister.
Marginal note:Security
(5) Before making an order under subsection (1), the court may require the applicant to furnish security, in an amount fixed by the court,
(a) to cover duties, storage and handling charges and any other amount that may become chargeable against the copies of the work; and
(b) to answer any damages that may by reason of the order be incurred by the owner, importer or consignee of the work.
Marginal note:Application for directions
(6) The Minister may apply to the court for directions in implementing an order made under subsection (1).
Marginal note:Minister may allow inspection
(7) The Minister may give the applicant or the importer an opportunity to inspect the detained copies of the work for the purpose of substantiating or refuting, as the case may be, the applicant’s claim.
Marginal note:If applicant fails to commence action
(8) Unless an order made under subsection (1) provides otherwise, the Minister shall, subject to the Customs Act and to any other Act of Parliament that prohibits, controls or regulates the importation or exportation of goods, release the copies of the work without further notice to the applicant if, within 10 working days after the applicant has been notified under subparagraph (3)(a)(ii), the applicant has not notified the Minister that they have commenced a proceeding for a final determination by the court of the issues referred to in paragraphs (1)(b) and (c).
Marginal note:If court finds in plaintiff’s favour
(9) If, in a proceeding commenced under this section, the court is satisfied that the circumstances referred to in paragraphs (1)(b) and (c) existed, the court may make any order that it considers appropriate in the circumstances, including an order that the copies of the work be destroyed, or that they be delivered up to the plaintiff as the plaintiff’s property absolutely.
Marginal note:Other remedies not affected
(10) For greater certainty, nothing in this section affects any remedy available under any other provision of this Act or any other Act of Parliament.
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