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
Monday, 17 October 2016 07:27

Tackling Offensive Sports Trademarks

The Toronto Star is reporting that Canadian architect and indigenous activist Douglas Cardinal is seeking an injunction to prevent the Cleveland Indians from wearing uniforms bearing their logo and team name, and from displaying their logo when the visit Toronto this week for the Major League Baseball playoffs.  The legal basis for the injunction is an argument that the team’s name and mascot are discriminatory. Mr. Cardinal has also filed human rights complaints with the Ontario Human Rights Tribunal and the Canadian Human Rights Commission.

While Mr. Cardinal is litigating, he might also want to consider that the name and the offensive cartoonish mascot are also registered trademarks in Canada. (Search for “Cleveland Indians” in the Canadian Trademarks Database). Challenges to the registration of the Washington Redskins’ notorious trademarks are currently before the courts in the U.S. The Redskins trademarks, which most recently have been cancelled in the U.S. for being disparaging of Native Americans (with that decision under appeal), are also registered trademarks in Canada. To date, no one has challenged these or other offensive trademarks in Canadian courts.

Canada’s Trade-marks Act bars the adoption, use or registration of trademarks that are “scandalous, obscene or immoral”. I have written before about circumstances in which this provision has been invoked – or not – to disallow the registration of trademarks. Any challenge to the validity of the marks could be based on the argument that the marks should never have been registered, as they were racist and discriminatory at the time of registration (which, in the case of the Cleveland logo was in 1988). While an applicant to have the trademark expunged might have to address issues of delay in bringing the application, it should be noted that s. 11 of the Trade-marks Act also prohibits the use of a trademark that was adopted contrary to the provisions of the Act. In principle then, the continued use of a trademark that was “scandalous, obscene or immoral” when it was adopted is not permitted under the legislation. Of course, this use restriction raises interesting freedom of expression issues. In the United States, marks that are denied registration for being “disparaging” can still be used, thus arguably shielding the trademarks legislation from First Amendment (free speech) challenges. There is a great deal of unexplored territory around the adoption, use and registration of offensive trademarks in Canada.

Former Justice Murray Sinclair of the Truth and Reconciliation Commission (now Senator Sinclair) called for action to address the use of offensive and racist sports mascots and team names. Douglas Cardinal has clearly responded to that call; there is still more that can be done.

 

Note: At the hearing on the injunction on October 17, 2016, the Court declined to grant the injunction, with reasons to follow. Toronto Star coverage is here.

 

Published in Trademarks

A new report from uOttawa’s Canadian Internet Policy and Public Interest Clinic (CIPPIC) prepared in collaboration with Carleton’s Geomatics and Cartographic Research Centre (GCRC) proposes a strategy for protecting traditional knowledge that is shared in the digital and online context. The report proposes the use of template licences that will allow Indigenous communities to set the parameters for information sharing consistent with cultural norms..

Traditional knowledge – defined by the World Intellectual Property Organization as “the intellectual and intangible cultural heritage, practices and knowledge systems of traditional communities, including indigenous and local communities” – is poorly protected by contemporary intellectual property (IP) regimes. At the root of the failed protection is the reality that Western IP systems were designed according to a particular vision of creativity and innovation rooted in the rise of the industrial revolution. It is a product of a particular social, economic and ideological environment and does not necessarily transplant well to other contexts.

The challenge of protecting indigenous cultural objects, practices and traditional knowledge has received considerable attention – at least on the international stage – as it is a problem that has been exacerbated by globalization. There are countless instances where multinational corporations have used traditional knowledge or cultural heritage to their profit – and without obvious benefit to the source communities. Internationally, the Nagoya Protocol on Access and Benefit Sharing seeks to provide a framework for the appropriate sharing of traditional knowledge regarding plant and genetic resources. Innovative projects such as Mukurtu provide a licensing framework for Indigenous digital cultural heritage. What CIPPIC’s report tackles is a related but distinct issue: how can Indigenous communities share traditional knowledge about themselves or their communities while still maintaining a measure of control that is consistent with their cultural norms regarding that information?

For years now, the GCRC has worked with Indigenous communities in Canada to provide digital infrastructure for cybercartographic atlases that tell stories about those communities and their land. These multimedia atlases offer rich, interactive experiences. For example, the Inuit Siku (Sea Ice) Atlas documents Inuit knowledge of sea ice. The Lake Huron Treaty Atlas is a complex multimedia web of knowledge that is still evolving. These atlases are built upon an open platform developed by the GCRC and that can be adapted by interested communities.

The GCRC sought out the assistance of CIPPIC to explore the possibility of creating a licensing framework that could assist Indigenous communities in setting parameters for the sharing and reuse of their traditional knowledge in these contexts. The idea was to reduce the burden of information management for those sharing information and for those seeking to use it through a series of template licences that can be adapted by communities to suit particular categories of knowledge and contexts of sharing. This is a complex task, and there remains much work to be done, but what CIPPIC proposes offers a glimpse into what might be possible.

A 2016 European Commission report titled Survey report: data management in Citizen Science projects provides interesting insights into how such projects manage the data they collect. Proper management is, of course, essential to ensure that the collected data can be used and reused by project leaders as well as by other downstream users. It is relevant as well to the protection of the privacy of citizen participants. The authors of this report surveyed a large number of citizen science projects. From the 121 responses received they distilled findings that explore the diversity of the citizen science projects, and that reveal a troubling lack of thorough data management practices. A significant shortcoming for many projects was the lack of appropriate data licences to govern reuse of either raw or aggregate data collected.

There has been growing pressure on those carrying out research using public resources to make the fruits of the research – including the research data – publicly available for consultation, verification or reuse. But doing so is not as simple as a binary open/closed choice. There are a number of different questions that researchers must address: Should the raw data be made open or only the aggregate data? Should it be immediately available or available only after an embargo period? Is all data suitable for release or should some be protected for public policy reasons (such as protecting privacy)? And what, if any, terms and conditions should be imposed on reuse?

The authors of the EC report, Sven Schade and Chrysi Tsinaraki, found that overall there was a relatively high level of data sharing from citizen science projects. Significantly, 38% of the respondents to their survey provided access to their raw data; 37% provided access to aggregate data and 30% provided access to both. One interesting observation in this respect was that 68% of those respondents who provided access to their raw data also included within this dataset personal identifiers of citizen contributors to the project. Such data might be advertently collected, as where individuals provide personal information with their data uploads. In some cases, the scope of personal information might be significant. Contributions to a project might include geolocation information and geodemographic details. Schade and Tsinaraki asked respondents about their practices when it came to obtaining informed consent to data collection from project participants; they found that 25% of respondents did not obtain such consent whereas 53% relied upon a generic terms of use document to obtain consent. It was not entirely clear whether the consent being sought related to privacy issues or to obtaining any necessary rights to use or disseminate the data being collected (which might, for example, include copyright protected photographs). In any event, the results of the survey suggest that there is a significant lack of attention to both privacy and IP rights issues in citizen science projects.

On the issue of data licensing, Schade and Tsinaraki found that the conditions imposed on reuse by different projects varied. A majority of those who made data available believed that the data was in the public domain, while others imposed conditions such as non-commercial or share-alike restrictions. When asked which license they used to achieve these goals, 32 out of 56 respondents indicated that they used one of the commonly available template licences such as Creative Commons or Open Data Commons. A surprising number of respondents indicated that no particular licence was used. While data released in this way might be presumed to be “open”, the usefulness of the data might well be hampered by a lack of clarity regarding the scope of permitted reuse.

In addition to providing access to data, the authors of the Report asked whether citizen science researchers allowed open access to research results (presumably in the form of published papers and other output). While the overwhelming majority of projects indicated that they used open access options (ranging from public domain dedication to open access with conditions), Schade and Tsinaraki also found that 14 of the projects they considered used licences with terms that were not consistent with the reuse conditions that the researchers had identified. Clearly there is a need for greater support for projects in developing or choosing appropriate licences.

Although many of the projects indicated that they provided access to their data, the duration of that access was less certain. The authors found that 42% of projects intended to guarantee access to their data only within the lifespan of the project. The authors also found that 40% of projects that provide data access do not provide comprehensive metadata along with the data. This would certainly limit the value of the data for reuse. Both these issues are important in the context of citizen science projects, which are often granted-funded and temporally-limited. The ability to archive and preserve research data and to make it available for meaningful access and reuse should be part of researchers’ data management plans, and is something which should be supported by research institutions and funding agencies.

Overall, the Report provides data that suggests that the burgeoning field of citizen science needs more support when it comes to all aspects of data management. Proper data management practices will help citizen science researchers to meet their own objectives, to share their data effectively and appropriately, and to protect the rights and interests of participants.

Note: In 2015 I drafted a report, with Haewon Chung, for the Wilson Center Commons Lab titled Managing Intellectual Property Rights in Citizen Science. This report addresses many licensing issues related to the collection, sharing and reuse of citizen science data and outputs. It is available under a Creative Commons Licence.

 

Canada’s anomalous and downright dysfunctional official marks system is once again deserving of attention as the Rio Olympics unfold. The protection of Olympic marks in Canada reveals many of the deficiencies of this system.

Under the Trade-marks Act, “public authorities” in Canada can sidestep the whole process for application, review and registration of trademarks by simply asking the Registrar of Trade-marks to advertise whatever logo or word mark they have come up with for whatever undertaking they are engaged with. This includes the names and/or logos of government departments (eg: Heritage Canada & Design), the names and/or logos of municipalities (City of Windsor & Design) or even the names of publicly-funded institutions such as the National Gallery of Canada. At the other end of the spectrum are the myriad logos, slogans and words associated with government activities that are largely run as businesses, such as lotteries and casinos. Official marks are available to any ‘public authority’ and the meaning of this term has not always been clear. In the last 15 years or so the courts have tightened up the definition of a “public authority”, but nonetheless the register is crowded with official marks held by entities that were never entitled to hold them. These illegitimate official marks will remain protected unless someone spends their hard earned money to challenge them in court. This is just one of the ways in which the official marks regime is deeply flawed. The marks never expire; there is nothing in the Act that prevents them from being identical to or confusing with trademarks in which registered trademark owners may have invested a great deal of resources; and none of the limitations on the registrability of trademarks apply. There is also no mechanism (short of going to court) by which a mark can be removed from the Register by anyone other than the public authority once it is advertised. The Register is crowded with obsolete official marks. These marks stand in the way of new trademark registrations.

The Canadian Olympic Committee (COC) has long relied upon official marks to protect hundreds of marks relating to current and past Olympic Games and activities. Yet this protection was not enough for the IOC. In 2007, Canada enacted the Olympic and Paralympic Marks Act (OPMA) to fulfill a commitment made to the IOC in Vancouver’s bid for the 2010 Winter Olympics. Controversially, the OPMA added a new protection against ambush-marketing, and I have written about this aspect of the legislation elsewhere. But it also created a list of protected Olympics-related marks in Schedule 1. These marks are protected for as long as they remain on the Schedule. They include 39 basic Olympic and Paralympic related marks and logos. Further, the federal government can, by regulation, add new marks to the list whenever there is a need to do so. The OPMA also created a second schedule for the protection of Olympic marks related specifically to Games hosted by Canada. These marks would be protected only for the period of time set out in that schedule. In other words, they were limited to the period directly before and after the hosted event. There was no schedule for marks related to Olympic Games that were not hosted by Canada, such as the Rio Olympics.

In spite of this special legislation for Olympic-related marks, the COC still relies upon the official marks provisions of the Trade-marks Act to protect Olympics-related marks. Some of the marks found in Schedule 1 of the OPMA are also official marks under the Trade-marks Act (see, for example: FASTER HIGHER STRONGER, OLYMPIAD, OLYMPIC GAMES and OLYMPICS). This means that even if the federal government decided to remove these marks from this Schedule, they would still receive protection under the Trade-marks Act. The situation was much worse prior to 2014, when the COC (finally) withdrew from the Register of Trade-marks many of its official marks that also appeared in Schedules 1 and 2 of the OPMA, thus limiting the impact of the double-protection. Of course, this double protection endured for 7 years before being rectified, and it has not been completely corrected. Further, it was done purely voluntarily. Nothing in Canadian law prevents the COC from asking the Registrar of Trade-marks to advertise the same marks again as official marks. The legislative dysfunction is also evidenced by the surfeit of Olympic marks that are still protected as official marks including, for example, WINTER OLYMPIC GAMES, SUMMER OLYMPIC GAMES, OLYMPIC FLAME, OLYMPIC TORCH, and the list goes on. In addition, there is a pile of Olympic clutter on the Register, including marks and logos from past Olympiads such as the ones in Lake Placid, Calgary, Torino, Seoul – you get the picture.

For the Rio Games, the Canadian Olympic Committee has chosen to use the Trade-marks Act to protect two Rio-specific marks as official marks: Rio 2016, and Rio 2016 & Rings Design. Anyone who, misled by the title of the Olympics and Paralympics Marks Act, checked that statute to see what Olympic marks were protected and which ones were not, could be forgiven for missing those two – but forgiven they will not be if they use either of the marks.

There really are two issues here that need to be addressed. The first is that the federal government must do something about the hugely problematic category of official marks. That the official marks regime is dysfunctional is a well-known fact. The federal Liberals surely know this; when they were in opposition, MP Geoff Regan brought forward a private member’s bill to address the regime’s deficiencies.

The other problem is that the government has put in place two different regimes that can be used simultaneously to protect Olympic and Paralympic marks, and the (limited) checks and balances in one are not reflected in the other. The result is a mess of, well, Olympic proportions.

Published in Trademarks

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

The Fédération Étudiante Collégiale du Québec has succeeded in its opposition to a Quebec entrepreneur’s attempt to register its symbol of protest, the carré rouge (which means “red square”), as a trademark for use in association with T-shirts, posters, cups, wristbands, and other paraphernalia. While this decision offers some protection from the appropriation and commercialization of a protest symbol, it also reveals the limits of such protection.

The carré rouge – essentially a small square of red fabric attached to clothing by a gold safety pin – was adopted by the Fédération in January of 2011 as a symbol of a massive strike that was about to be launched to protest proposed tuition fee hikes in Quebec. Members of the Fédération – which included over 65,000 students – were encouraged to wear the symbol on their clothing and to participate in the series of organized rallies and protests across the province. The student demonstrations received a great deal of media attention and the carré rouge quickly became a public symbol associated with the student unrest.

Very shortly after the last of the major demonstrations in 2012, Raymond Drapeau sought to register as a trademark a design consisting of a red square with a gold pin. The Fédération opposed this registration. While they had clearly been the first to adopt and use the carré rouge as a symbol, they had not used it as a trademark – in other words, they had not used it to distinguish their goods or services from those of others. Absent a prior commercial use, they could not rely on grounds of opposition based upon their greater entitlement to the registration of the mark. This was confirmed by the Trade-marks Opposition Board (TMOB) in its December decision.

The Fédération was, however, successful with its argument that the carré rouge could not be distinctive of Drapeau’s goods because the public would associate the symbol with the Fédération and its protests, and not with Drapeau. The quintessential characteristic of a trademark is its capacity to distinguish its owner as the source of the goods or services in association with which it is used. This quality is referred to as distinctiveness. The TMOB found that the size of the student protests and the degree of media coverage was such that the symbol would be associated with the Fédération’s protest movement. It was therefore not capable of distinguishing Drapeau as a trade source. The application for trademark registration was therefore refused.

The Fédération’s victory is an important one, but it is not one that should allow activist or protest groups to feel complacent. It is important because the TMOB was prepared to recognize the link between a protest group and its symbol as being of a kind that can make the symbol difficult for others to appropriate for commercial purposes. However, the decision of the TMOB merely denies registration of the mark. It does not prevent Drapeau (or others) from using the symbol as an unregistered trademark. Use in this way might actually lead to acquired distinctiveness; which could, in turn, be a basis for eventual trademark registration. Indeed, the TMOB observed that “substantial evidence of use of the Mark by the Applicant might possibly have supported an argument that the Mark had become distinctive as of the relevant date.” (at para 40). It also noted that “a symbol can be a trade-mark if it can serve to identify the source of the goods and services associated with it.” (at para 43)

A protest movement that wishes to acquire the kind of goodwill in its mark or symbol that will give rise to its own trademark rights will need to use the mark in association with goods or services. This type of commercial use might well go against the movement’s ideology – and might, in any event, be too complicated within the context of a spontaneous movement; particularly one that gathers more momentum than initially anticipated at the outset. Copyright law offers a possible source of protection: an original design can be protected by copyright law – and it is possible to oppose the registration of a trademark that would infringe the copyright of another. But the carré rouge as used by the students is not a “work” in which copyright subsisted. In this case, the simplicity of the symbol, while contributing to its uptake and use, undermined its capacity to be “owned” by the Fédération and in turn controlled by it. Of course, the whole concept of private ownership of public symbols runs against the spirit of the protests, and the Fédération maintained throughout that the carré rouge was in the public domain and thus not capable of private ownership. They were successful on the facts as they stood, but the TMOB decision reminds us that even symbols in the so-called public domain may be appropriated in certain circumstances.

 

Published in Trademarks

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

Mellos, an iconic diner in Ottawa’s Byward Market, was forced to close its doors this week after the restaurant’s landlord refused to renew their lease. The diner, which had been in that location for over 70 years had the down-at-heel feel of a real diner yet boasted a quirky menu of terrific food. Its next door neighbor, a much more upscale restaurant will be taking over Mellos’ space – just a coincidence and not a conquest or so the story goes.

The owners of Mellos have had to leave their long-time location, but they do have plans to find another space within the Byward Market area and to reopen as soon as possible. The fact that they are down, but not out, has led to an interesting conflict between private property rights and intellectual property rights.

Mellos diner had a classic neon outdoor sign that hung over the Dalhousie sidewalk outside its door. Because it is located in a Heritage Conservation area, both the building and its sign are protected under the province’s Heritage Act. Any changes to the building, including the removal or relocation of the sign would have to be approved by a series of committees and City Council. At the same time, the sign itself is a fixture – a piece of once moveable property that by reason of its attachment to a building has become a part of the building. This means that the sign is the property of the landlord. And, to make it more interesting, the name on the sign – Mellos – is the intellectual property of the restaurant owners. It is an unregistered trademark – and given that its owners intend to reopen in the same general area – the goodwill in the trademark is certainly still in existence.

According to the Ottawa Citizen, the sign was taken down late in the evening of December 21 – the day that Mellos finally closed its doors. The police have apparently been called – it is not clear by whom – and an investigation is underway.

The problem is a thorny one. The real piece of heritage – the diner itself – has been closed. The desire to preserve what is left – the iconic sign – is well-meaning. However, for the owners of the trademark it would clearly be unacceptable to have the sign hang over another restaurant if Mellos were to reopen in the same area. This would send one of at least 3 confusing messages to the public: that the restaurant that moved into the space is somehow linked to Mellos; that Mellos is closed and no longer exists; or that the newly opened Mellos at a fresh location is not the same as the original. From a trademark law point of view, the sign simply cannot stay where it is, fixture or not. The heritage laws would permit a relocation – but this would only happen after a long and bureaucratically taxing process – something that might also not be acceptable from a trademark law point of view – since in the meantime the sign would stay in place, conveying its potentially confusing message to the public. Finally, the building owner might insist upon its private property rights – placing these squarely in conflict with Mellos trademark rights. To insist upon maintaining a sign that is confusing to the public, and potentially in violation of trademark rights, would seem unreasonable, but this does not appear to have been an amicable parting of the ways in any event.

Now that the sign is down – and safely stored – the dispute can play itself out. The real loss to Ottawa’s heritage has been Mellos – the living, breathing restaurant – and the best outcome would be to see it re-established in the market – with its iconic sign hanging outside. Whether the tangle of property, intellectual property and heritage property laws – and the costs of resolving all of the issues they raise – will ultimately permit this remains to be seen.

Published in Trademarks
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