Teresa Scassa - Blog

The Federal Court has just released a decision in a case that raised issues of fair dealing and copyright abuse. Blacklock’s, an Ottawa-based online news agency, had argued that officials at the Department of Finance breached its copyright in news articles when these articles were circulated internally. The decision is an important confirmation of the ‘right to read’ in Canada and may go some way to dispelling the aftertaste of an earlier flawed decision by the Ontario Small Claims Court in a similar dispute.

Blacklock’s business model is to offer its news content on a subscription-only basis. Its articles are behind a paywall, and only subscribers, equipped with a password, can gain access to them. Individual subscriptions are available for $148 a year, whereas institutional subscription rates range between $11,470 and $15,670.

In this case, a reporter from Blacklock’s had interviewed the President of the Canadian Sugar Institute, Sandra Marsden, for a story relating to sugar tariff changes. The same reporter had sought comments from Department of Finance officials and ultimately had an exchange of email correspondence with the Department’s media relations officer. In what appears to be Blacklock’s practice, teasers about the story were sent out to Marsden by email and by Twitter. Based on the teasers Marsden became concerned about the accuracy of the article. She paid for an individual subscription in order to access it. After reading the article her concerns grew and she cut and pasted the article into an email, to a Department official. The same reporter wrote a follow up piece which Marsden also found problematic; she forward this piece to the Department of Finance as well. The two articles were circulated between a total of 6 Finance employees who discussed amongst themselves whether any follow-up with Blacklock’s was required. In the end it was decided that the matter should be dropped.

Justice Barnes found that there was no disputing that the Finance officials had used Blacklock’s copyright-protected material without paying for it or seeking Blacklock’s consent. The key issue was whether the use fell within the fair dealing exception for research or private study in s. 29 of the Copyright Act. After reviewing the Supreme Court of Canada’s landmark fair dealing decision in CCH Canadian v. Law Society of Upper Canada and its more recent decision in SOCAN v. Bell Canada, he concluded that the use constituted fair dealing. He noted that, according to the case law, “research” does not have to lead to the creation of a new work of authorship; it can be ““piecemeal, informal, exploratory, or confirmatory”, and can be undertaken for no purpose except personal interest.” (at para 31)

Justice Barnes found that the Finance officials “had legitimate concerns about the fairness and accuracy” of the reporting in the article. Her further found the internal circulation of the piece was justified on the basis that “[e]veryone involved had a legitimate need to be aware in the event that further action was deemed necessary”. (at para 35) He identified a number of considerations that influenced his conclusion that the officials’ dealing with the material was fair. He noted that the articles had not been obtained by illegal means such as hacking the website; rather, they had been provided by a subscriber to the site who had legally accessed them and had forwarded them for “a legitimate business reason”. (at para 36) The articles had been sent to the Finance officials and not solicited by them; they received limited circulation; and they were not republished or used for any commercial purpose. The court also found that the two articles were a tiny fraction of the content available from the Blacklock’s site. Further, Justice Barnes opined that “a finding of copyright infringement against a news source for the simple act of reading the resulting copy is likely to have a chilling effect on the ability of the press to gather information.” (at para 36). Justice Barnes also stated that “copyright should not be a device that serves to protect the press from accountability for its errors and omissions.” (at para 36).

Blacklock’s had argued that its terms and conditions for access to its paywalled content had been breached when the material was forwarded to Finance officials, and that this breach should serve to negate a finding of fair dealing. Justice Barnes appeared sympathetic to this argument on its face, stating that it was a “relevant consideration” (though he did not state that it would necessarily be determinative). However, he cautioned that for this factor to be taken into account, the copyright owner would have to demonstrate that the user was aware of the terms and conditions and that the terms and conditions actually barred the conduct at issue. In this case, he found that none of the parties involved had either read or even been aware of Blacklock’s terms and conditions which were not readily part of the process for signing up for an individual subscription. He also found that the terms and conditions were not clear, stating: “On the one hand they seemingly prohibit distribution by subscribers but, on the other, they permit it for personal, or non-commercial uses.” (at para 42).

Blacklock’s also objected that a finding of fair dealing would undermine its business model – selling online news through a subscriber-only paywall. Justice Barnes was not particularly sympathetic, noting that “All subscription-based news agencies suffer from work-product leakage.” (at para 45) Further, he stated that “whatever business model Blacklock’s employs it is always subject to the fair dealing rights of third parties.” (at para 45) At the same time, he noted that by so stating, he was not endorsing “blameworthy conduct in the form of unlawful technological breaches of a paywall, misuse of passwords or the widespread exploitation of copyright material to obtain a commercial or business advantage.” (at para 45)

As I noted in an earlier comment on this case, the defendants had argued that Blacklock’s was engaged in copyright misuse and was acting as a kind of “copyright troll”. In fact, there are 9 other suits brought by Blacklock’s against the federal government on similar sets of facts. Noting that “there are certainly some troubling aspects to Blacklock’s business practices”, Justice Barnes nevertheless found it unnecessary to rule on the copyright abuse and trolling arguments in light of his findings on fair dealing. The other cases, which were stayed pending the resolution of this first dispute, may now end up being settled out of court.

In the course of his decision, Justice Barnes referred to what occurred in this case as “no more than the simple act of reading by persons with an immediate interest in the material.” (at para 36) This right to read is fundamentally important in a society that values knowledge and the freedom of expression. The decision makes it clear that business models for content distribution cannot run roughshod over certain fundamental users rights.

Published in Copyright Law

A pair of interesting copyright lawsuits are making their way through the federal court and are worth watching for the novel issues they raise and the potential they have for shaping copyright law in Canada.

One of these is actually a series of lawsuits brought by the news service Blacklock’s Reporter against a total of 7 federal government departments and agencies and 3 Crown corporations and agencies. Blacklock’s provides articles on a subscription basis only; it accuses the various defendants of having accessed copies of its articles without having subscribed to the service and in breach of their copyrights. The defendants argue that Blacklock’s “employs a pattern of writing misleading or inaccurate articles about an organization with the expectation that these articles would be accessed and shared internally.”[1] They then allege that Blacklock’s files access to information requests to uncover details of such access and distribution in order to issue claims for damages for copyright infringement. Essentially, they contend that Blacklock’s is engaged in copyright trolling. (Note that I wrote about an earlier law suit brought in Ontario small claims court by Blacklock’s against the Canadian Vintner’s Association here.)

The Federal Court has just upheld a prothonotary’s decision to streamline this litigation by issuing a stay of proceedings in 9 of the 10 lawsuits until certain legal issues have been aired and decided in the 10th. The decision is based on the view that since each of the cases raises similar issues, it would be more just and a more efficient use of resources to proceed in this way.

The defendants do not appear to deny having accessed the articles in question. Instead, they argue that the uses made of the articles in question were fair dealing (based on use of the material for “internal government reporting purposes”). They also raise the defense of copyright misuse. Copyright misuse relies on an argument that the copyright owner, through its conduct, is attempting to secure for themselves a broader right than it is entitled to by law. The defence now has a considerable track record in the United States, but remains novel in Canada. Clearly this litigation raises interesting arguments that make it worth following. The five-day trial for the case that is to go forward has been scheduled for September 2016.

A second case involves what is called a “reverse class action law suit” brought by Voltage Pictures against an as-yet unidentified group of defendants for copyright violation related to the downloading of films in which Voltage holds copyright. Typically a class action law suit is brought by a large group of plaintiffs who have all been harmed by the same wrong allegedly committed by a single defendant. The class action law suit allows plaintiffs to pool their efforts and it makes for a more efficient use of judicial resources. Class action law suits can also be used to hold defendants to account in cases where large numbers of people are negatively affected, but no single individual has suffered enough economic harm to make it worthwhile taking their case to court. In these ways, class action law suits improve access to justice. The reverse class-action law suit is quite another animal. In a reverse class-action law suit, there is a single plaintiff who essentially is arguing that it has been harmed by the actions of multiple defendants. Rather than sue each defendant individually, they proceed against a single defendant who is considered representative of the much larger class.

Voltage has recently succeeded in having a court compel Rogers Communications Inc. to reveal the name and address of a subscriber whose account has been linked by Voltage to allegedly illegal downloading activity. This will be the representative defendant in a law suit that may put the activities of thousands of other as yet unnamed ISP subscribers at issue. Of course, a court has yet to certify the reverse class action law suit.

Voltage’s strategy comes as both the courts and Parliament have put limits on the extent to which ordinary consumers can be targeted in copyright infringement lawsuits for non-commercial uses of works. By significantly limiting the damages available in such instances, Parliament made it deliberately difficult for copyright holders to launch law suits seeking massive amounts of damages against ordinary individuals – a practice that has become notorious in the United States. The “notice and notice” provisions of the Copyright Act also protect against sweeping accusations of copyright infringement that might otherwise limit freedom of expression by compelling the take down of content that might fall within the fair dealing exceptions to copyright infringement. Canadian courts have also been quite protective of individual privacy, requiring that a plaintiff establish a bona fide claim of copyright infringement before a court will issue an order compelling a service provider to produce customer name and address information that is linked to the allegedly infringing activity. The reverse class action lawsuit offers plaintiffs a work-around to some of these protective measures and could open the door to the large-scale pursuit of those who download unauthorized content over the internet. Both copyright owners and users’ rights advocates will be watching this case with interest.

Published in Copyright Law

The social sciences research community has been buzzing over the announcement on May 17, 2016 that the Social Sciences Research Network (SSRN) has been acquired by Elsevier Publishing Group.

SSRN is a digital repository that was created in order to enable researchers in the social sciences to share their work in advance of its publication. Prior to the launch of SSRN, long delays between submission and print publication of papers had been a significant problem for researchers – particularly those working in rapidly changing and evolving fields. In addition, it was not always easy to find out who was working in similar areas or to be aware of developing trends in research as a result of the long publication delays. SSRN allows researchers to publish working papers, conference papers, and pre-print versions of accepted papers – as well as (where permitted by journals) published versions of papers. Access to the database is free to anyone with an Internet connection. This too is important for sharing academic research more broadly – many published academic journals sit behind digital paywalls making broader public access impractical or impossible. SSRN has been a game-changer, and it is now widely used by academics around the world as a vehicle for sharing research.

Elsevier is a commercial publisher which has, in the past, focused primarily on the fields of science, technology and health. It publishes over 2000 international journals. In recent years it has developed other information “solutions”. These include not only digital publishing platforms, but also data analytics, as well as tools to enhance and facilitate collaboration among researchers.

The controversy over the acquisition of SSRN lies in the deep distrust many researchers seem to have about the willingness of a commercial publisher known for its top-dollar subscriptions and generally restrictive access policies to maintain a publicly accessible information dissemination service that is free to both academics and the broader public. The founders of SSRN maintain that Elsevier, which also publishes open access journals, understands the need for broad sharing of research and has no intention of placing the site behind a paywall. They argue that SSRN’s acquisition by Elsevier will only enhance the services it can offer to scholars.

Critics of the sale of SSRN to Elsevier raise a number of concerns. One of these is, of course, whether SSRN will genuinely continue to be available as a free resource for sharing research. The reassurances of both Elsevier and SSRN’s founders are firm in this respect. Nevertheless, there are concerns that Elsevier might more strictly police what content is available on SSRN. It is likely the case that some academics post articles to which their publishers hold the copyright on the view that enough time has passed since publication to make free dissemination normatively if not legally acceptable.

The potential that access to some content might be limited is only one of the issues that should be on scholars’ radar – and it is probably not the most important one. By acquiring SSRN, Elsevier will enhance its expanding analytics capability – and data analytics are an important part of its business model. Researchers should consider the nature and extent of these analytics and how they might impact on the publication, dissemination, valuation and support for research in other venues and other contexts. For example, how might granting agencies or governments use proprietary data analytics to make decisions about what research to fund or not fund? Will universities purchase data from Elsevier to use in the evaluation of their researchers for tenure, promotion, or other purposes? Does it serve the academic committee to have so much data – and its analytic potential – in the hands of a single private sector organization? Given that this data might have important ramifications for scholars, and, by extension, for society, are there any governance, accountability or oversight mechanisms that will provide insight into how the data is collected or analyzed?

Essentially, the noble project that was SSRN has evolved into a kind of Facebook for academics. Researchers post their articles and conference papers to share with the broader community – and will continue to do so. While for researchers these works are what define them and are the “value” that they contribute to the site, the real commercial value lies in the data that can be mined from SSRN. Who collaborates with whom? How many times is a paper read or downloaded? Who cites whom, and how often? The commercialization of SSRN should be of concern to academics, but it is data governance and not copyright that should be the focus of attention.

Published in Copyright Law

What is the status of copyright protected documents or data sets that are provided to government institutions as part of regulatory, judicial or administrative processes? In my previous blog post I considered one instance where a court decided that a regulatory regime effectively expropriated the copyrights in works submitted to certain federal regulatory boards. In early May of this year, an Ontario court considered a similar issue: what happens to the copyright of land surveyors in the documents and drawings they prepare when these are submitted to Ontario’s electronic land registry system.

Keatley Survey Ltd. v. Teranet Inc was a class action law suit brought by a group of Ontario land surveyors against the private sector company authorized by the government to run its electronic land registry system – Teranet. Teranet recovers its costs of creating and operating the system by charging fees for access to and reproduction of the documents contained in the registry. The plaintiffs in this case argued that they had copyright in those documents, and that they were entitled to fees or royalties from the commercial use of these documents by Teranet.

It was undisputed by the defendants that there was copyright in the survey plans created by the plaintiffs. What was more contentious was the issue of ownership of that copyright. The defendants argued that copyright in the plans was owned by the Crown (in this case, the Ontario government). Under section 12 of the Copyright Act, Crown copyright subsists in works that are “prepared or published by or under the direction or control of Her Majesty or any government department. . . .”. The court rejected the argument that the plans were “prepared” under the control of government. Instead, Justice Belobaba ruled that the plans were produced independently of government by the surveyors at the requests of their clients. The fact that the plans might need to conform with regulatory requirements did not mean that they were prepared under the direction or control of the Crown. Justice Belobaba noted that if this argument were accepted, then “lawyers who file pleadings or facta at court registries would lose the copyright in their work simply because they complied with the statutory filing requirements about form or content.” (at para 33).

Teranet also argued that Crown copyright applied because the plans were “published” under the control of government. Justice Belobaba expressed doubts on this point, finding that the reference to publication in s. 12 of the Copyright Act did not independently create a basis for Crown copyright. He stated: “Just because the federal or provincial government publishes or directs the publication of someone else’s work (as opposed to governmental material) cannot mean that the government automatically gets the copyright in that work under s. 12 of the Copyright Act.” (at para 37) Nevertheless, he did not decide the matter on this point. Instead, he found that the legislation relating to the land registry system specifically establishes that any copyrights in surveys are automatically transferred to the Crown when they are filed.

Section 165(1) of the Land Titles Act and section 50(3) of the Registry Act both provide that “all plans of survey submitted for deposit or registration at a land registry office become “the property of the Crown”.” (at para 6). While this might simply refer to ownership of the physical property in the documents, Justice Belobaba found that other provisions in the statutes addressed the rights of the government to copy, computerize and distribute the documents, and to do so for a fee. He wrote: “The statutory prescription and authorization for copying the plans of survey strongly suggests a legislative intention that “property of the Crown” as used in these statutory provisions includes copyright.” (at para 7).

If copyright in these documents becomes the property of the Crown, how does this come about? The Copyright Act requires that any assignment of copyright must be in writing and signed by the owner of copyright. Justice Belobaba found that the declaration required of surveyors to certify that their plans are correct and in accordance with the legislation did not amount to an assignment of copyright. This is an interesting point. Ultimately, the court finds that copyright is “transferred to the province” when plans are deposited, but that there is no signed assignment in writing. This must, therefore, be a form of regulatory expropriation of the copyright in the surveys and plans. Here, any such expropriation is implicit, not explicit. Since copyright is a matter of federal jurisdiction, it is fair to ask whether a provincial government’s expropriation of copyrights is an improper interference with federal jurisdiction over copyrights. Certainly, a provincial government might require an assignment of copyright as a condition of the filing of documents; what is less clear is whether it can actually override the Copyright Act’s provision which requires assignments to be signed and in writing. There is an interesting jurisdictional question below the surface here.

Because the court concludes that the plaintiffs did not retain copyright in their surveys or plans, there was no need to consider other interesting issues in the case relating to fair dealing or whether there was a public policy exception permitting copying and distribution of the documents.

This decision combined that that in Geophysical Services Inc., strongly suggests that courts in Canada are open to arguments around the regulatory expropriation of copyrights by governments in the public interest. In both cases, the courts found support for the expropriation in legislation, although in neither case was it clear on the face of the legislation that expropriation of copyrights was specifically contemplated. As digital dissemination of information, public-private partnerships, and new forms of commercialization of data may impact the commercial value of information submitted to governments by private actors, governments may need to be more explicit as to the intended effects of their regulatory schemes on copyrights.

 

 

Published in Copyright Law

Can a government cut short the term of copyright protection in the public interest through a regulatory scheme? This question was considered in the recent decision in Geophysical Services Inc. v. Encana. In my previous blog post I discussed the part of the decision that dealt with whether the works at issue in the case were capable of copyright protection. In this post, I consider the regulatory expropriation issues.

Geophysical Services Inc (GSI) had argued that the government had violated its copyright in its compilations of seismic data and in its information products based on this data, when it released them to the public following a relatively short confidentiality period. The data had been submitted as part of a regulatory process relating to offshore oil and gas exploration. GSI also argued that the oil and gas companies which then used this data in their operations, without paying license fees, also violated their copyright. As discussed in my previous post, Justice Eidsvik of the Alberta Court of Queen’s Bench found that both the compilation of data and the related analytics were original works and were the product of human authorship.

The infringement issue, however, did not end with a finding of copyright in the plaintiff’s works. The outcome of the case turned on whether the government was entitled to release the information after the end of the 5-15 year confidentiality period established by the regulatory regime – and, by extension – whether anyone was then free to use this material without need for permission. The normal term of copyright protection for such a work would be for the life of the author plus an additional 50 years.

GSI was engaged in geological surveying, using seismic testing to create charts of the ocean floor. In order to engage in this activity it needed a permit from the relevant provincial and federal authorities: the National Energy Board, the Canada Newfoundland and Labrador Offshore Petroleum Board and/or the Canada Nova Scotia Offshore Petroleum Board. It was also required, as part of the regulatory process to submit its data to the relevant Boards. The process of mapping the ocean floor using seismic testing is time and resource intensive, and requires considerable human expertise. Once it was collected and compiled, GSI would license its data to offshore oil and gas exploration companies who relied upon the quality and accuracy of the GSI product to carry out their activities.

According to the regulatory regime any data or information submitted to a Board must be kept confidential by the Board for a specified period. Disclosure is governed by the Canada Petroleum Resources Act (CPRA). Section 101 of the CPRA provides that documentation submitted as part of the regulatory process is privileged and shall not be disclosed except for purposes related to the regulatory regime. In the case of data or information related to geophysical work, the period of privilege is 5 years. It was agreed by the parties that this meant that the data could not be disclosed without consent for at least 5 years. However, the plaintiff argued that its copyright in the materials meant that even if the privilege expired, the plaintiff’s copyrights would prevent the publication of its information without its consent.

In reviewing the legislative history, Justice Eidsvik concluded that it was the government’s clear intention to stimulate oil and gas exploration by ensuring that exploration companies could get access to the relevant seismic data after a relatively short period of privilege. The proprietary rights of GSI (and other such companies) could be asserted within the privilege period. According to the legislative history, this period was set as the amount of time reasonable to permit such companies to recoup their investment by charging licence fees before the data was made public. Justice Eidsvik found a clear intention on the part of the legislature to limit the copyright protection available in the public interest. The 5-year privilege period was designed to balance the rights of the copyright holder with the broader public interest in oil and gas exploration. She also found that the publication of the data was a form of compulsory licence – oil and gas exploration companies were free to make use of this data once it was released by the Boards. Essentially, therefore, the legislative regime provided for an expropriation – without compensation – of the remainder of the term of copyright protection. According to Justice Eidsvik, the inclusion of a no-compensation clause in the statute “acknowledges Parliament’s intent to confiscate private property in return for a policy it believed to be in the public interest to promote early exploration of its resources in the offshore and frontier lands.” (at para 237)

GSI argued that changes in technology combined with the high cost of collecting and processing the data had disrupted any balance that might have been contemplated in setting the original 5-year privilege period. In fact, although the legislation allows for the publication of the data after 5 years, the practice of the Boards has been to delay the release of the data anywhere up to 15 years. However, GSI still maintained that the balance was no longer fair or appropriate. Justice Eidsvik was clearly sympathetic to GSI’s arguments, but she found that as a matter of statutory interpretation the legislation was clear in its effect. She noted that it would be for Parliament to change the legislation if it needs to be adapted to changing circumstances.

The issues raised by this case are interesting. Copyright law already contains many provisions that aim to balance the public interest against the rights of the copyright holder. Fair dealing is just one example of these. In fact, the term of protection (currently life of the author plus 50 years) is another one of these balancing mechanisms. What the court recognizes in Geophysical Services Inc. v. Encana is that other federal legislation can limit the term of copyright protection in order to advance a specific public interest.

This is not the only circumstance in which copyright may be limited by laws other than the Copyright Act. Another case which has recently been settled without being resolved on the merits (Waldman v. Thompson Reuteurs Canada Ltd.—discussed in my blog post here) raised the issue of whether the open courts principle effectively creates an implied public licence to use any materials submitted to the courts as part of court proceedings. This would include documents authored by lawyers such as statements of claim, factums, and other such documents. In Waldman, these materials had been taken from court records and included in a pay-per-use database by a legal publisher.

There are other contexts in which materials are submitted to regulators and later made public as part of that process. (Consider, for example, patent disclosures under the Patent Act). The legislation in such cases may not be as explicit as the CPRA – Justice Eidsvik found this statute to be very clear in its intent to make this data open and available for reuse after the statutory confidentiality period. In particular, she cited from the parliamentary debates leading up to its enactment in which disclosure in the interest of stimulating oil and gas exploration was explicitly contemplated.

One question going forward is in what circumstances and to what extent do legislated requirements to disclose data or documents terminate copyright protection in these materials. Another interesting issue is whether a provincial government could establish a regulatory regime that effectively brings to an end the term of copyright protection (since copyright falls within federal jurisdiction). In an environment where intellectual property rights are increasingly fiercely guarded, Parliament (and the legislatures?) may need to be more explicit about their intentions to cut short IP rights in the public interest.

Published in Copyright Law

A Canadian court has just handed down a decision in a case that interweaves interesting issues about copyright in data with issues around how the government can limit the scope of these rights in its view of the public interest. The case is complex – it involves a large number of defendants and is tied to a range of other law suits relating to the regulatory regime for oil and gas exploration in Canada. The complexity of the case is such that I will divide my analysis over two blog posts. This – the first – will address the issues around whether there is copyright in the data submitted to the regulator; the second blog post will deal with the issues relating to the curtailment of the copyright within the context of the regulatory regime.

The plaintiff in this case and in the mass of related litigation is Geophysical Service Inc. (GSI). GSI is a Canadian company that is in the business of carrying out marine seismic surveys and licensing the data that it collected and a compiled as a result of its activities. It claims that its flood of litigation around the copyright and regulatory regime issues resulted from the fact that the government’s approach is driving it out of business. As copyright is often touted as providing incentives to create and innovate, GSI’s precarious status as an innovator in this area sets an interesting context for the issues raised in the litigation.

In a nutshell, GSI – like other companies in this field – had to obtain a licence from the national regulator to conduct its expensive, time and labour intensive work. A condition of the licence was that the data it generated and processed into information products would be submitted to the appropriate regulatory bodies that oversee offshore oil and gas exploration. It is this data and the related information products that GSI claims is protected by copyright law. Under the statutes governing the regulatory process, data submitted to the regulator can be made public after a 5 year period. GSI was in the business of selling its data and information products to companies engaged in oil and gas exploration. GSI argued that the fact that the same data and analysis could be released to the public after 5 years, and was, as a matter of policy released between 5 and 15 years after its submission made its business ultimately unsustainable. They argued, therefore, that they had copyright in the data they collected and in the analytics they carried out on the data. They then argued that the regulator, by releasing this data to the public before the expiration of the copyright term, infringed its copyrights. They also maintained that the other private sector companies which made use of their data obtained from the public sources, violated their copyrights.

The first issue, therefore, was whether the seismic data and related information products produced by GSI amounted to original works that could be protected by copyright law. It is a basic principle of copyright law that there can be no copyright in facts – facts are in the public domain. At the same time, however, it is possible to have copyright in a compilation of facts – so long as that compilation meets the requirements of originality. According to the Supreme Court of Canada in CCH Canadian v. Law Society of Upper Canada, originality requires that a work: a) is not copied; b) reflects an exercise in skill and judgment and 3) can be attributed to a human author. In this case, the defendants argued that the GSI data was ‘copied’ from the environment (i.e. it was factual material not protected by copyright law); that its collection and compilation did not involve sufficient skill and judgment because it was in part automated, and in part collected and compiled according to industry standards; and that the technology-assisted and highly human- and other resource-intensive process involved in its collection and compilation meant that it did not originate from an identifiable human author.

Justice Eidsvik of the Alberta Court of Queen’s Bench found resoundingly for the plaintiffs on the copyright issues. She carefully considered the manner in which the seismic data was both collected and processed. She found that both the raw data and the processed data constituted “works” within the meaning of the Copyright Act. She analogized the raw seismic data to a literary work or a literary compilation. She also found that some of the seismic sections – data represented as squiggly lines – would fall within the definition of an artistic work. Both “works” in this case met the necessary threshold for originality. She noted that the creation and compilation of the seismic data required significant levels of skill, noting that “The data is created, not merely collected, through the intervention of human skill” (at para 79). The collection of this seismic data requires a complex series of choices. She accepted the analogy that it was like taking a photograph. Justice Eidsvik observed:

In this case, the photograph is not just a quick snapshot; rather, it is one that requires careful selection of the location, angle of technological instruments (e.g. the size and depth of the airguns, the length and depth of the streamers, and the number and placement of hydrophones), and finally the filtering and refining of the product. (at para 80)

She also found apt an analogy from one of the expert witnesses between the creation of the data and the conducting of a symphony, where the conductor “ensures that some instruments are played louder, or softer, or faster or slower, to make a beautiful creation. The same types of decisions are made on board the seismic acquisition ship to obtain “beautiful” raw seismic data.” (at para 81)

Having found copyright in the compilation of raw data, it is not surprising that the judge also found copyright in the processed data as well. She found that substantial skill and judgment went into the processing of the data, stating that “The raw data is not simply pumped into a computer and a useful product comes out.” (at para 83) She found that the quality of the processed data is very much dependent upon the participation of a skilled processor, and that different companies would produce different processed data from the raw data depending upon the skill of the processor involved.

Justice Eidsvik also found that the requisite human author was present. In doing so, she addressed the Telstra decision from the Australian High Court which had found no copyright in a telephone director in part because it was created following a largely automated process in which there was relatively little human input. In this case, she found the human input to be a significant factor in determining the quality of the output at both the stage of acquisition of the data and the processing stage. She reviewed the few Canadian cases involving compilations of data, noting that in cases where human input is more significant in terms of the choices made in arranging the facts, the courts accept that the compilation is original.

Justice Eidsvik rejected the argument that it is necessary to identify a specific human author in order to find copyright in a complex factual work. She accepted that a team of “authors” could create a factual compilation. Nevertheless, she was also prepared to identify in this case the head of the seismic crew on the ship as the author of the raw data and the person in charge of the computing as the author of the processed data. She noted as well that in this case the actual owner of the copyright would be the employer of both of these individuals – GSI.

In finding copyright in both the raw and the processed data, Justice Eidsvik was careful to note that she was not deviating from the principle that there could be no copyright in facts or ideas. She found that the “seismic data is an expression of GSI’s views of what the image of the subsurface of the surveyed areas represents.” (at para 97). The raw facts – the features of the subsurface – are there for anyone to see and are in the public domain – but the data collected about those facts is authored. Critical data theorists will recognize in here the seeds of the essential subjectivity of collected data, where choices are made as to how to collect the data, and according to what parameters.

Justice Eidsvik also rejected the idea that the works at issue lacked originality because their collection and compilation were dictated by “practical considerations, utility or externally imposed requirements.” (at para 105) Notwithstanding the presence of industry standards that would influence some of the decision-making involved in the collection and processing of the data, she found that “the original skill and judgment that comes to bear on the final product of the seismic work far outweighs the portion of “hard wired” industry standards in play.” (at para 105)

Based on the facts of this case it is not surprising that Justice Eidsvik would conclude that there was copyright in both the compilation of seismic data and in the processed data. Her extensive review of the process by which the data is first collected and then processed reveals a substantial amount of skill and judgment. In a “datified” society, the decision may give some comfort to those who collect and process all manner of data: their products – whether compilations of raw data or processed data (analytics) – are works that can be protected under copyright law. Such protection will be dependent upon an ability to show that the collection and/or processing involve choices motivated by skill and judgment, rather than mechanical decision-making or compliance with industry norms or standards.

While for GSI it was a victory to have copyright confirmed in its data products, the victory was largely pyrrhic. The second part of the decision – and the part that I will consider in a subsequent blog post – deals with the regulatory regime which the court ultimately finds to have effectively expropriated this copyright interest. Stay tuned!

Published in Copyright Law

Citizen science is the name given to a kind of crowd-sourced public participatory scientific research in which professional researchers benefit from the distributed input of members of the public. Citizen science projects may include community-based research (such as testing air or water quality over a period of time), or may involve the public in identifying objects from satellite images or videos, observing and recording data, or even transcribing hand written notes or records from previous centuries. Some well-known citizen science projects include eBird, Eyewire, FoldIt, Notes from Nature, and Galaxy Zoo. Zooniverse offers a portal to a vast array of different citizen science projects. The range and quantity of citizen science experiences that are now available to interested members of the public are a testament both to the curiosity and engagement of volunteers as well as to the technologies that now enable this massive and distributed engagement.

Scientific research of all kinds – whether conventional or involving public participation – leads inevitably to the generation of intellectual property (IP). This may be in the form of patentable inventions, confidential information or copyright protected works. Intellectual property rights are relevant to the commercialization, exploitation, publication and sharing of research. They are important to the researchers, their employers, their funders, and to the research community. To a growing extent, they are of interest to the broader public – particularly where that public has been engaged in the research through citizen science.

What IP rights may arise in citizen science, how they do so, and in what circumstances, are all issues dealt with by myself and co-author Haewon Chung in a paper released in December 2015 by the Commons Lab of the Wilson Center for International Scholars in Washington, D.C. Titled Best Practices for Managing Intellectual Property Rights in Citizen Science, this paper is a guide for both citizen science researchers and participants. It covers topics such as the reasons why IP rights should be taken into account in citizen science, the types of rights that are relevant, how they might arise, and how they can be managed. We provide an explanation of licensing, giving specific examples and even parse license terms. The paper concludes with a discussion of best practices for researchers and a checklist for citizen science participants.

Our goal in preparing this report was to raise awareness of IP issues, and to help researchers think through IP issues in the design of their projects so that they can achieve their objectives without unpleasant surprises down the road. These unpleasant surprises might include realizing too late that the necessary rights to publish photographs or other materials contributed by participants have not been obtained; that commitments to project funders preclude the anticipated sharing of research results with participants; or that the name chosen for a highly successful project infringes the trademark rights of others. We also raise issues from participant perspectives: What is the difference between a transfer of IP rights in contributed photos or video and a non-exclusive license with respect to the same material? Should participants expect that research data and related publications will be made available under open licenses in exchange for their participation? When and how are participant contributions to be acknowledged in any research outputs of the project?

In addition to these issues, we consider the diverse IP interests that may be at play in citizen science projects, including those of researchers, their institutions, funders, participants, third party platform hosts, and the broader public. As citizen science grows in popularity, and as the scope, type and variety of projects also expands, so too will the IP issues. We hope that our research will contribute to a greater understanding of these issues and to the complex array of relationships in which they arise.

Note: This research paper was funded by the Commons Lab of the Wilson Center and builds upon our earlier shorter paper: Typology of Citizen Science Projects from an Intellectual Property Perspective: Invention and Authorship Between Researchers and Participants. Both papers are published under a Creative Commons Licence.

 

Published in Copyright Law
Wednesday, 02 December 2015 08:06

Like taking copyright from a kid . . .

A & E Canadian Classroom is running a student essay competition titled 2015 Lives that Make a Difference. The contest offers cash prizes to schools and to children who submit original essays that identify and discuss a person who has had a significant impact on Canadian society. The contest is no doubt laudable for encouraging children to write, and on a worthwhile theme. Schools from across the country are probably encouraging students from grades 5 to 12 to submit their work to this contest.

While the contest may be laudable, the way in which it deals with student intellectual property rights in their work is not. The home page for the contest features a fillable form through which a student’s 300 word essay can be submitted. At the bottom of the form is a check box with the words: I agree to allow my child (named above) to participate in the A&E Network® Canadian Lives That Make a Difference Essay Contest. I am in accordance with the terms outlined in the rules.” There is no hyperlink from either of the words “terms” or “rules” that would take a parent to the rules to which they are agreeing. This on its own is a poor practice. A parent interested in the rules has to search elsewhere on the page for the tab labelled “official rules”. On the issue of intellectual property, these rules provide:


“All essays become the property of A&E Television Networks and will not be acknowledged or returned. Entrants acknowledge and agree that they waive all rights of any kind whatsoever to their entries and that their entries become the property of A&E Television Networks, which thereby has the right to edit, adapt, modify, reproduce, publish, promote and otherwise use entries in any way they see fit without further compensation, except where prohibited by law.”

Contest winners will not receive their prizes unless they execute an “assignment of rights within 10 days of notification attempt”.

Clearly, if A & E is to publish winning entries on their website or feature them in other media they will need permission to do so. A & E may also be mining the contest to get a sense of which public figures are inspiring kids across the country. To this end, they probably also want to insulate themselves from potential lawsuits if they later produce content about some of the individuals featured in student essays. It is therefore entirely reasonable for A & E to address IP issues in the contest rules. What is less reasonable is to require students to surrender all IP rights in their essays as a condition of participation. The quid pro quo for this wholesale surrender of IP rights by potentially thousands of kids across the country is the chance to win one of only 4 student prizes.

It is possible for A & E to hold the contest, to insulate itself from legal risk, and to get kids excited about writing without pillaging their intellectual property rights. The perpetual, non-exclusive, worldwide, royalty-free license is a device that is much used and well known. It allows the licensee to make full and free use of a work while still leaving the copyright with its author. This means that the author of the work would be free to use it in other contexts and for other purposes (which might include, for example, sharing it with friends of family through social media). It is not as if any of these essays are likely to have a market value – after submission, most will quickly be forgotten by their authors. But there is an issue here of respect.

We have all experienced the inundation of copyright notices in relation to films, music, and other content. We are told that we have to respect authors and creators, that copyright infringement is analogous to theft or piracy. What we hear much less about is the exploitation of unequal bargaining power as well as unequal knowledge and resources by corporations that arrogate to themselves more rights in the intellectual property of others than is necessary. There is something fundamentally problematic about bludgeoning kids with dire warnings about respecting the IP rights of others while at the same time showing total disregard for their own rights as creators.

And lest this all be about A & E (the terms and conditions of other similar contests and publishing “opportunities” offered to students bear examination), there should also be some onus on school boards to consider the terms and conditions under which students are encouraged to apply to these sorts of contests. It would be helpful if they used their power as conduits for student participants to insist that terms and conditions are fair and respectful of the students’ rights as creators.

 

Published in Copyright Law

The recent story of the wholesale copying of an Inuit shaman’s robe by a UK designer raises interesting issues regarding the legal protection (or lack thereof) for indigenous cultural heritage in Canada as well as the cultural dissonance that can arise in disputes over the right to use certain motifs, designs and images.

In this case, the great-granddaughter of an Inuit shaman has expressed dismay over the use of the design of a shaman’s jacket. The design for the original jacket was one that came to her great-grandfather in a dream. The jacket had been photographed and the photograph appeared in a book titled Northern Voices: Inuit Writing in English by Penny Petrone, published in 1988. According to the CBC story, a replica of the same shaman’s jacket was used in a 2006 film titled The Journals of Knud Rasmussen.

Seen through a Western IP lens, the shaman who created the design might well be its author, and the design might be capable of copyright protection, but the term of copyright protection would have expired by now. As a result, the design is in the “public domain” and anyone is free to copy it. Yet from the great-granddaughter’s perspective, the design is sacred, and its reproduction or use should be subject to consent. Who is entitled to give this consent and under what terms may be complex questions, yet they are questions that ethics, at least, if not law, require to be asked.

The issue of the appropriation of indigenous imagery or designs in fashion and in other contexts is a recurring one. In Canada, for example, a dispute arose over the decision of HBC to outsource the creation of imitation Cowichan sweaters for sale during the Vancouver Olympics. Other fashion designers have been taken to task for their appropriation of indigenous cultural imagery and design. There have also been concerns raised about the appropriation of indigenous tattoo designs, as well as the incorporation of other indigenous designs or symbols into fashion and home décor items. There have been many instances as well of the use of indigenous pictographs on t-shirts. In March 2015, the CBC also reported on the use of First Nations design elements in the fashion line of Dsquared2, although in this case the concerns were not simply over cultural appropriation but also over the use of offensive terminology. These are only a very few examples.

Arguments about the right to restrict and control the use of sacred imagery, or the right to control the production and reproduction of indigenous designs are frequently treated as normative ones. In other words, they turn on what “should” be done, rather than what “must” be done. Laws, including intellectual property laws, provide legal tools to exercise control over works, but the reality is that these laws are focussed on identifying and defining property rights in creative output and in facilitating the economic exploitation of this output. While intellectual property laws can also be used to restrict the commercial exploitation of works, their focus on individual authors and the limited term of protection are not well-adapted to protecting material that is sacred to a people. The concept of the “public domain” – those things which are not protected or no longer protected by IP laws and are therefore free to all to use – can be particularly problematic when it comes to the disconnect between IP laws and indigenous cultural property. While many First Nations in Canada have found ways to use existing intellectual property laws to give them some ability to prevent or control the commercial exploitation of traditional images or designs (certification marks and official marks, for example, have been used in some cases), the effectiveness of these tools will vary according to the circumstances, and in some cases they may simply not be suitable.

Normative arguments are easy to dismiss and ignore, in part because the legal machinery of the state is not there to recognize and enforce them. As Canada enters a new era of reconciliation, law and policy makers should turn their attention to addressing the gaps between what it is right to protect and what the law will actually protect.

 

 

Published in Copyright Law

The Ontario Small Claims Court has issued a decision in a copyright dispute that is extremely unfriendly to users’ rights or the right to read in Canada. The case involves the increasingly common practice of placing digital content behind a paywall.

In this case, the defendant is the Canadian Vintners Association (CVA). It represents the interests of wine producers in Canada. The plaintiff is the company which produces Blacklock’s Reporter, a news service that provides original digital content to subscribers. The CVA was aware of Blacklock’s Reporter, but had decided that it was not interested in subscribing (at a corporate rate of $11,470 per year.)

On December 13, 2013 Blacklock’s published a story that discussed the testimony of the defendant’s president and CEO, Dan Pazsowski, before a Commons Committee. Pazsowski was sent an electronic bulletin notifying him that he had been quoted in the story. Since his company did not have a subscription to the service, he contacted a colleague at another company that did have a subscription and asked if they could forward a copy to him. They did so. He then contacted Blacklock’s to discuss the content of the story, about which he had some concerns. He was asked how he had obtained access to the story, and was later sent an invoice for the cost of two personal subscriptions (because he had shared the story with another employee of his organization). The cost of two subscriptions was $314 plus HST). The defendant’s refusal to pay the invoice ultimately led to the law suit for breach of copyright.

In reaching his decision in this case, Deputy Judge Gilbert was particularly concerned with the fact that the defendant had not complied with the terms and conditions of the plaintiff’s website. However, the website was not the source of the material that was allegedly improperly accessed by Pazowski in this case. The article was shared with Pazsowski by a colleague who had a subscription. If the terms of use of that person’s contact with Blacklock’s prohibited her from sharing any content, then she may have been in breach of her contract. This, however, does not mean that Pazsowski infringed copyright. Receiving and reading a copy of an article sent by another person is not per se copyright infringement.

Judge Gilbert also found that the defendant had unlawfully circumvented technical protection measures in order to access the material in question, in contravention of controversial new provisions of the Copyright Act. It would seem that, in the eyes of the court, to ask someone for a copy of an article legally obtained by that person could amount to a circumvention of technical protection measures. If such an approach were accepted, the scope of the anti-circumvention provision would be disturbingly broad. In fact, in this case, nothing was done to circumvent any technological protection measures. The article was legally accessed by a subscriber. The issue is with the sharing of the content by the subscriber with another, in contravention of the terms of use agreed to by the subscriber.

The defendant had asserted a fair dealing defence, arguing that he had sought access to the article out of concern that it contained inaccuracies that he wanted to take steps to correct. This was argued to be fair dealing for the purpose of research or private study, which is permitted under the Copyright Act. Notwithstanding the very broad scope given to the fair dealing exception by the Supreme Court of Canada, Judge Gilbert ruled that there was no fair dealing. He wrote: “it cannot be said that the purpose here was genuine given the fact that nothing came of the research (obtaining the full article) once obtained. Giving the Defendants the benefit of the doubt here that the intention was genuine, the follow through was not.” (at para 57). This novel proposition suggests that research must result in some concrete or tangible outcome to amount to fair dealing. As any researcher knows, there may be many false starts or cold trails. In any event, the court seems to overlook the fact that Pazowski actually contacted Blacklock’s to discuss their article with them. It was this contact that led to the lawsuit. Justice Gilbert also rejected the fair dealing claim on the basis that the article had not been legally obtained. This, of course, is a significant fair dealing issue in the context of paywalls and other barriers to access to works. Given, however, that Pazowski obtained the article from someone with legal access to the database, there was room here for a more nuanced assessment.

If the decision itself is not enough to raise your eyebrows, then the damage award surely will. Keep in mind that the plaintiffs originally sought the price of two personal annual subscriptions as compensation for the access to the article by the defendant ($314 plus HST). The court ordered damages in the amount of $11,470 plus HST – the cost of a corporate annual subscription. Judge Gilbert cited as justification for this amount the fact that the defendants “continued to stand steadfast to the notion that they had done nothing wrong while knowing that they had taken steps to bypass the paywall.” (at para 64). In addition, he awarded $2000 in punitive damages.

A business that is entirely reliant on providing content behind a paywall clearly has an interest in ensuring that access to that content is limited to subscribers to the extent possible. But does this mean that no other access to the content can be tolerated? A person who has legally purchased a book may lend it to another to read. Is there room for the law adopt an equivalent approach for content behind pay walls? It certainly does not seem appropriate that a news service can publish articles about individuals and then have the courts support them in their attempts to so securely lock down that content that the individual cannot even see what was written about them without having to pay for an annual subscription. This decision is so entirely lacking in the balance mandated by the Supreme Court of Canada that one can only hope it is nothing more than a strange outlier.

 

Published in Copyright Law
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