In Whyte Potter-Mäl c Topdawg Entertainment Inc., the Court of Québec found Universal Music Group, Interscope Records, and Topdawg Entertainment liable for issuing false copyright takedown requests against Montreal artist Jonathan Emile Whyte Potter-Mäl.[1] This represents the first Canadian case holding a copyright owner liable for issuing takedown notices sent pursuant to the American Digital Millennium Copyright Act (DMCA).
The facts of the case are straightforward and to a certain extent typical of online copyright enforcement. Mr. Potter-Mäl had recently released his debut album online by uploading it to YouTube and SoundCloud. One of the songs on the album was a collaboration between Mr. Potter-Mäl and American artist Kendrick Lamar, who was paid $7,500 by Mr. Potter-Mäl for the collaboration. For reasons which remain unclear, the three defendant companies, who are Mr. Lamar’s music publishers, identified the song as infringing their copyright. They issued takedown notices to YouTube and SoundCloud, which resulted in the song being removed from both websites and flagged as infringing content. After hiring a lawyer and spending almost $2,000 in legal fees, Mr. Potter-Mäl succeeded in having his song restored to both sites roughly two months later.
Mr. Potter-Mäl then sued the three companies responsible for the take down notices, alleging infringement of copyright and moral rights under the Canadian Copyright Act, plus interference with property rights guaranteed by s. 6 the Quebec Charter of Human Rights and Freedoms. The three companies did not defend the case, which proceeded to default judgment. In short reasons, the Court of Quebec found the three companies jointly and severally liable for $5,000 in compensatory damages, representing a blend of lost income and damage to reputation.[2] Each company was also found individually liable for $1,000 in punitive damages.
While the decision was a default judgment, and therefore not binding on other courts, it raises a number of important questions. First, it represents the only Canadian case which has found a copyright holder liable for issuing false copyright takedown notices. This is particularly interesting because the Canadian Copyright Act does not expressly address liability for false or misleading copyright notices – in contrast to the American DMCA, which creates a special liability regime for copyright owners who falsely describe online content as infringing.[3] Will other courts follow the Court of Quebec’s lead and impose liability in similar circumstances?
Second, although Whyte Potter-Mäl dealt with a take-down notice issued under the Digital Millennium Copyright Act, might other litigants try to apply similar reasoning to the Canadian “notice and notice” regime? As mentioned above, Canada’s Copyright Act does not contain sanctions for sending false or misleading copyright notices. Yet if the Court of Quebec was willing to find liability under Canadian law for notices issued under US legislation, other litigants might attempt to make similar arguments based on notices sent under Canada’s notice-and-notice regime. This type of argument may present challenges, notably because Parliament would have been aware of the DMCA’s liability regime for wrongful takedown requests, and yet it chose not to include a similar regime in the Canadian Copyright Act when it created the “notice and notice” regime.
Third, does the temporary take down or even the deletion of a copyrighted work constitute a violation of that work’s integrity, thus triggering a moral rights violation? In Canadian law, moral rights provide the author of a work with a cause of action if the work is “distorted, mutilated or otherwise modified” to the prejudice of the author’s honour or reputation.[4] That would appear to be the only possible moral rights violation on these facts, which raises the question of whether deletion or even temporary suppression of a work constitutes a “distortion, mutilation, or modification” of that work.
Fourth, what is the appropriate jurisdiction in which to bring a wrongful takedown notice claim? Here, Mr. Potter-Mäl sued in Canada for a takedown notice that was ostensibly issued under US law, that was probably sent by someone in the United States, and which was ultimately implemented by a US-based company (YouTube) and a German company (SoundCloud). The defendants may well have decided not to oppose this lawsuit because they believe that it was brought in the wrong jurisdiction, and that Mr. Potter-Mäl’s attempt to enforce the judgment in their home jurisdictions would be challenging at best.
Depending on how Canadian courts answer these and other questions, Potter-Mäl represents a thought-provoking case, both for copyright owners enforcing their rights online, and also for anyone who believes that they have been the target of a wrongful takedown request. The authors of this bulletin have experience working with litigation over Canada’s notice and notice regime, and would be happy to discuss further applications of the Potter-Mäl case.
[1] 2016 QCCQ 11725.
[2] Whyte Potter-Mäl c Topdawg Entertainment, 2016 QCCQ 11725 at paras 4-5.
[3] 17 USC § 512(f). For high profile examples of claims under this regime, see Lenz v Universal Music Corp, 801 F. 3d 1126 (9th Cir 2015) (the so-called “Dancing Baby” case); Smith v Summit Entertainment LLC, 3:11CV348 (ND Ohio, Western Division, order issued June 6, 2011).
[4] Copyright Act, RSC 1985, c C-42, s 28.2(1)(a).
