Teresa Scassa - Blog

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

A small Canadian company seems poised to take on the Canadian Intellectual Property Office (CIPO) over the issue of whether the trademark it seeks to register for its vodka, LUCKY BASTARD, is scandalous, obscene or immoral.

Similar to laws in other countries, Canada’s Trade-marks Act bars the registration of marks that would offend public mores. Or at least, that’s the theory. According to s. 9(1)(j) of the Act, no mark that is “scandalous, obscene or immoral” can be adopted as a trademark. Other provisions of the statute bar both the registration (s. 12(1)(e)) and the use (s. 11) of such marks.

The decision as to what is “scandalous, obscene or immoral” is in the hands of the Registrar of Trademarks. The only guidance provided by CIPO on this issue is found in the Trademarks Examination Manual. According to the Manual,

  • A scandalous word or design is one which is offensive to the public or individual sense of propriety or morality, or is a slur on nationality and is generally regarded as offensive. It is generally defined as causing general outrage or indignation.
  • A word is obscene if marked by violations of accepted language inhibitions or regarded as taboo in polite usage. This word is generally defined as something that is offensive or disgusting by accepted standards of morality or decency; or offensive to the senses.
  • A word or design is immoral when it is in conflict with generally or traditionally held moral principles, and generally defined as not conforming to accepted standard of morality.

Clearly, there is an element of subjectivity in making such assessments. In the case of the word “bastard”, it is fair to say that today it is generally considered to be a highly inappropriate term to use to refer to a child born to an unmarried mother. What is less clear is whether, used today in its more casual sense – as in the expression “lucky bastard” – it rises to the level of “causing general outrage or indignation”.

Canada has almost no case law on how to interpret and apply s. 9(1)(k). The experience in other jurisdictions has highlighted the often contentious and sometimes seemingly arbitrary approach to comparable provisions. In some cases, applicants for registration seek to use controversial words in a deliberately edgy way. In a case currently making its way through the courts in the U.S., an Asian-American dance rock band called The Slants is challenging the U.S. Patent and Trademarks Office’s refusal to register their band name as a trademark. They argue that the denial or registration violates their freedom of expression. The band apparently seeks to ‘reclaim’ the otherwise derogatory term. When the trademark DYKES ON BIKES was initially denied registration in the U.S., its owners argued that the term DYKES, although derogatory in some contexts, was, when used self-referentially, had been re-appropriated and was a term of empowerment. These arguments were ultimately successful.

The arbitrariness of provisions barring the registration of trademarks on public order and morality grounds is not limited to the difficult issues around what terms are offensive and in what contexts. A quick search of the Canadian trademarks register reveals that the word “bastard” already appears in several registered trademarks, including FAT BASTARD BURRITO, DOUBLE BASTARD (for beer), PHAT BASTARD (for oysters) and FAT BASTARD (for wine). It is clear from the register that several other attempts to register marks containing the word “bastard” have been abandoned – possibly over objections to the propriety of the term.

In the U.S., challenges to the constitutionality of the equivalent U.S. provision on First Amendment (free speech) grounds have thus far failed. Courts have ruled that the provision only bars registration and not use of the mark, and therefore the right to expression oneself by using the term as an (albeit unregistered) trademark is not affected. The government remains entitled to refuse to grant a state sanctioned monopoly right to use a term that is immoral or disparaging. The constitutional issues will be under scrutiny again in the case involving The Slants, as well as in the infamous Redskins case both of which are making their way through the appellate courts in the U.S. Freedom of expression arguments in relation s. 9(1)(j) of Canada’s Trade-marks Act have yet to be tested in court. It is worth noting that in Canada it is not just registration that is denied to a “scandalous, obscene or immoral” trademark, but also adoption and use. Nevertheless, freedom of expression challenges to a similar provision in Europe have failed under the European Charter of Human Rights because of counter-balancing considerations similar to the Canadian Charter’s tolerance of “reasonable limits” placed on rights so long as they are “demonstrably justified in a free and democratic society”.

There may well be reasons to deny registration to trademarks that clearly cross the line of what is acceptable. Our laws make it clear that discrimination and hate speech, for example, are not tolerated. Perhaps what is needed is a refocussing of the s. 9(1)(j) discretion to concentrate on trademarks that offend norms that are clearly supported by other legislation and the constitution.

The disallowance of LUCKY BASTARD should also be considered in the light of the recent controversy regarding the Edmonton football franchise’s ESKIMOS trademark. The later term is considered derogatory and disparaging of Canadian Inuit (and I note that there a great number of other trademarks on the Canadian register that contain the word “eskimo”). Justice Murray Sinclair of the Truth and Reconciliation Commission has recently called for action to address the use of offensive and racist sports mascots and team names. The infamous Washington Redskins trademarks – under challenge in the U.S. – are also registered (and as yet unchallenged) trademarks in Canada. The arbitrary application of public morality clauses in trademarks law brings discredit to the system. It may also serve to highlight the extent to which some biases are so ingrained within the system that they become normalized.

If the owners of Lucky Bastard Vodka do eventually have to take their trademark fight to court it might mean that we finally get some judicial insight into the proper interpretation and application of s. 9(1)(j). This would surely be welcome.

 

Published in Trademarks
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

It is not every day that courts are asked to interpret Creative Commons licenses, which is what makes the recent U.S. decision in Drauglis v. Kappa Map Group, LLC of particular interest.

Creative Commons offers a suite of licenses that can be used by those seeking to license their copyright-protected works under terms that facilitate different levels of sharing and use. Some licenses are virtually without restriction; others restrict uses of the work to non-commercial uses; contain requirements to give attribution to the author of the work; or require that any derivative works made using the licensed work by made available under similar license terms (Share-Alike). The licenses are available in multiple languages and have been adapted to the laws of a variety of different countries. They are even used for open government licensing of works in countries like Australia and New Zealand.

In this case, the plaintiff Art Drauglis was a photographer who had posted a photograph on Flickr under a Creative Commons Attribution-ShareAlike 2.0 license (CC BY-SA 2.0). The defendant was a company that published maps and map-related products. It downloaded a copy of the plaintiff’s photograph from Flickr, and used it on the cover of an atlas it published titled “Montgomery co., Maryland Street Atlas”. The atlas was sold commercially, and the defendant claimed copyright in it. The copyright notice for the atlas appeared its first page, along with its table of contents. On the rear cover of the atlas, the title of the plaintiff’s photograph was provided as well as the information about the name of the photographer and the fact that it was used under a CC-BY-SA-2.0 license.

The plaintiff’s first claim – that the defendant had breached his copyright in the photograph – was quickly rejected by the Court. The District Court (District of Columbia) found that the defendant had used the image under license. Further, the license specifically permitted commercial uses of the image. Thus the plaintiff was limited to arguing that the defendant’s use of the photograph was not in compliance with the terms of the license. There were 3 main arguments regarding non-compliance. These were that: 1) the Share-Alike condition of the license was breached by the defendant’s commercial sale of the atlas; 2) the defendant did not include a proper Uniform Resource Identifier for the CC license as required by the license terms; and 3) the defendant did not provide the proper attribution for the photograph as required by the license.

The CC BY-SA 2.0 license requires that derivative works made using the licensed works also be made available under the same or comparable license terms. The plaintiff therefore argued that the defendant breached this term by publishing the atlas commercially and not under an equivalent license. The court disagreed. It found that the CC license contemplated two categories of re-use of the licensed work – in a “collective work” (defined in the license as a “periodical issue, anthology or encyclopedia, in which the Work in its entirety in unmodified form” is included with other contributions into a collective whole), or as a “derivative work” (defined in the license as a “work based upon the Work. . . in which the Work may be recast, transformed, or adapted”.) It is only derivative works that must be licensed under comparable license terms. The court found that the use of the photograph in this case was as part of a collective work. That collective work was the atlas, consisting of a series of separate works (maps) compiled together with other elements, including the plaintiff’s photograph, in a book. The court rejected arguments that the photograph had been cropped, and was thus “recast, transformed or adapted” rather than incorporated “in its entirety in unmodified form”. It was not persuaded that any cropping had taken place; if it had it was so minor in nature that it was inconsequential.

The CC BY-SA 2.0 license also requires that the licensee “must include a copy of, or the Uniform Resource Identifier for, this License with every copy . . . of the Work”. The plaintiff argued that this clause had been violated by the defendant because it only referred to the license as a CC-BY-SA 2.0 license and did not provide a URL for the license. The court distinguished between a Uniform Resource Identifier (URI) and a URL, noting that ‘URI’ is a term with a broader meaning than URL. While providing a URL might meet this requirement, providing the abbreviated name and version of the license met the requirement for a URI. The court noted that anyone searching the internet for “CC BY-SA 2.0” would easily arrive at the proper license.

The plaintiff also argued that the defendant did not properly attribute authorship of the photograph to the plaintiff in accordance with the terms of the license. The license required that any credit given to the author of a work in a derivative or collective work must, at a minimum, “appear where any other comparable authorship credit appears and in a manner at least as prominent as such other comparable authorship credit.” (Section 4(c)). Because the copyright information for the atlas as a whole appeared on the inside front page and the credit for the cover photo appeared on the back of the atlas, the plaintiff argued that this condition was not met. However, the court found that copyright information was provided for each map on each page of the atlas, and that this type of credit was comparable to that provided for the cover photograph. The court found that “the Photograph is more akin to each of the individual maps contained with the Atlas than to the Atlas itself; the maps are discrete, stand-alone pictorial or graphic works, whereas the Atlas is a compilation of many elements, arranged in a specific and proprietary fashion, and constituting a separate and original work.” (at p. 18) As a result, the attribution provided for the cover photo was comparable to that provided for other works in the collective work.

This would appear to be a case where the plaintiff’s expectations as to what the CC license he used for his work would achieve for him were not met. It is perhaps a cautionary tale for those who use template licenses – the simplicity and user-friendliness of the human readable version of the license does not mean that the detail in the legal code should be ignored – particularly where the licensor seeks to place specific limits on how the work might be used.

Published in Copyright Law
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