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Displaying items by tag: intellectual property

CTV News has reported on a leaked document that suggests that the federal government will be proposing a very specific amendment to the Copyright Act as part of a future budget implementation bill. Specifically, the government will seek to create an exception to copyright infringement that will allow politicians and political parties to make use of media content in political advertisements without the need to seek permission or to pay licensing fees. Normally, the right to authorize the use of copyright protected content is one of the exclusive rights of copyright holders.

The move by the government is sandwiched between two particular events. The first is an announcement in May of this year by major media outlets that they would resist the use of their content in political advertisements. The second, of course, is the looming federal election expected to take place in the fall of 2015 (and for which the campaign already seems to be well under way).

The proposed amendment raises two broad sets of issues. The first relates to process and the second to the substance of the amendment. On the process side of things, the use of budget implementation legislation as a vehicle for ramming through legislative amendments (sometimes of enormous significance) without the normal opportunity for debate, study, and even revision is part of an ongoing degradation of the democratic process in Canada. Copyright reform has always been a lengthy and hotly contested exercise largely because copyright legislation reflects a complex balancing of interests. These interests are diverse, and they include the interests of authors/creators, owners of copyright, industry actors, disseminators of copyright materials, and the broad range of users of copyright protected works. Exceptions to the rights of owners of copyright are generally a key focus of these balancing exercises. The Copyright Act was the subject of substantial reform in 2012 (including the addition of a number of new exceptions), and is slated for another review in 2017. The addition of a new exception at this point in time smacks of self-interested expediency on the part of politicians.

As a matter of substance, it is difficult to comment directly without the actual text of the amendment. However, I offer up some general observations to highlight the complexity of the issues raised, the potential problems, and the ways in which any such amendment might benefit from greater consideration than a budget implementation bill might warrant.

It should be noted that the use of content without need for a licence is already provided for in a variety of contexts under the fair dealing exceptions in the Copyright Act. Under these exceptions, the use of a work must be for a permitted purpose (which can include news reporting, criticism or comment, parody or satire). Such use must also be considered ‘fair’ – in other words, it is not enough to simply allege a specific purpose, one must also use the work or the extract fairly. It is worth noting that the issue of the use of media content in political advertisements in Canada has never been litigated – thus we do not know whether such use might qualify, in appropriate circumstances, for one of the already existing fair dealing exceptions. A first question, therefore, is whether a new exception is needed.

Any specific exception to allow the use of media content in political advertisements would have to consider and define who would be entitled to make such use (Politicians? Candidates? Potential candidates? Political parties? Interest groups?) and what content is up for grabs (Content from mainstream media outlets? From bloggers? Twitter or other social media?). Certain existing fair dealing exceptions require that the source and author be identified when material is used, and presumably something similar should be required here. Further, one would hope that, as with the other fair dealing exceptions, there would also be the additional requirement that any use made of the content must be ‘fair’. It will be very interesting to see whether this is part of any amendment. The ‘fairness’ of any use of content in political advertisements will be a big issue: a use that misrepresents or takes content out of context would be difficult to justify as fair. But if taking things out of context is the name of the game in political ads, will we see an exception that does not impose a fairness limitation on the use of copyright owners’ content?

Any such exception would also fit within the context of the legislation, which provides for certain moral rights. These are available to human authors (and not to corporate owners) of copyright protected works. They can be asserted to protect the honour and reputation of the author, both in terms of the integrity of their work and the causes or institutions in association with which the work is used. While author-employees may waive their moral rights with respect to their employers, they do not, in so doing, necessarily waive them against the rest of the world. Thus, even with a new exception, it might be possible for journalists whose work is used in ways that affect the integrity of their work or that link them, through their work, to a cause or institution they do not support, might still have a moral rights claim. While it is reassuring to think that the exception is not a blank cheque, moral rights case law in Canada is skimpy, and it is difficult to predict what the role will be of moral rights in this context.

Of course, there is a strong public interest in the free and open exchange of ideas. It can certainly be argued that this amendment will enhance the ability to engage with media stories without the need to seek permission to do so, and that this is a good thing – even if many political advertisements are hardly a shining example of engaged political discourse. Nevertheless, to ram through such an exception to the Copyright Act in a budget implementation bill, without due democratic consideration, and in the face of some fairly serious public policy questions on both sides of the issue, makes a mockery of copyright reform. Canadians may remember that it was only in the 2012 amendments to the Copyright Act that an exception was finally included to make the home recording of televised content legal (!) and then only under a tedious list of conditions and limitations. The wheels of copyright reform move slowly and carefully indeed for ordinary Canadians; they clearly move much faster when political self-interest is engaged.

 

Published in Copyright Law

Yet another decision regarding official marks highlights the need for reform of this privileged category of marks protected under the Trade-marks Act. In Terrace (City) v. Urban Distilleries Inc., two concurrent owners of the same official mark -- SPIRIT BEAR -- challenged the use by the defendant company of a mark that they claimed infringed their rights in the official mark.

The City of Terrace had requested that the Registrar of Trade-marks give public notice of its adoption and use of the SPIRIT BEAR mark on January 21, 2004. Almost 3 years later, the Kitsaoo Band Council had the Registrar of Trade-marks give public notice of its own adoption and use of the identical mark. This happened because there is simply no mechanism under the Trade-marks Act to evaluate official marks on their merits, or to limit them in cases where they would cause confusion with already existing official marks (or registered trademarks). An initial dispute between the City and the Band Council over their competing marks was resolved by an agreement entered into by the two under which they agreed to share the mark and to jointly licence its use.

The defendant company, Urban Distilleries, manufactures different alcoholic beverages. In 2010 it applied to register the trademark SPIRIT BEAR VODKA, but the City and the Band Council both opposed the application. Urban Distilleries abandoned the application, apparently because it lacked the funds to defend the opposition. Since January 2011, it has sold vodka and gin using the unregistered trademark SPIRIT BEAR.

In August 2013, the City and the Band sought an injunction against Urban Distilleries’ use of the SPIRIT BEAR mark. As part of the remedy they sought an order that Urban Distilleries destroy existing inventory and surrender its profits from the sale of products under the offending mark. Urban Distilleries responded by challenging the validity of the official marks. In particular, it argued that the marks had not been adopted and used prior to official notice being given, and it argued that neither the City nor the Band Council were public authorities within the meaning of subparagraph 9(1)(n)(iii) of the Trade-marks Act. They also argued that their use of the marks was not likely to mislead the public, and therefore was not infringing.

Justice Martineau disposed of the case by considering only the issue of adoption and use of the official marks. He noted that the law requires that such marks be adopted and used prior to the Registrar’s giving of public notice. There is a very low threshold for a finding of adoption. The threshold for “use” is similarly not high: “all that is required for use is that the public authority demonstrate that the official mark was made available for public display prior to publication.” (at para 11) However, he found that in this case, neither the City nor the Band Council could be found to have used the mark SPIRIT BEAR prior to public notice having been given.

In the case of the City, there was evidence that the words “spirit bear” were used on the City’s website. However, he noted that nothing on the site mentioned that these words were a mark associated with goods or services. Internal correspondence from that time regarding the use of “SPIRIT BEAR” was not considered to be sufficiently public. Further, the court found that it was not clear that the words were being used in this correspondence as a mark.

In the case of the Band Council, the court found there was no evidence of public use of the mark by the Band Council as a trademark. There was some evidence of a tourism company that used SPIRIT BEAR in one of its publications and in relation to several tours. However, as there was no evidence of any connection between the tourism company and the Band Council, the court found that this did not support an argument that the mark had been adopted and used by the Band Council at the time that public notice was given. Further, the court was not convinced that the words were used on their own as a trademark (as opposed to as a part of longer mark such as SPIRIT BEAR TOUR).

Because there was no evidence of adoption and use of the mark by either the City or the Band Council prior to public notice being given, the court found that both of the marks were unenforceable, and the suit for infringement must necessarily fail. Justice Martineau observed that the City and the Band Council, armed with appropriate evidence, could ask once again for new public notice to be given of the mark. However, any rights flowing from such a request would only be from the time that the public notice was given. Under the Trade-marks Act, marks that are identical to or confusing with official marks may continue to be used after official notice is given, so long as their use predates the public notice. This is the case for Urban Distilleries – it would be able to continue using its unregistered SPIRIT BEAR marks. However, if a new official mark were to be successfully sought by the City and/or the Band Council, this would freeze Urban Distilleries’ rights to what they were at the time of public notice. This means that Urban Distilleries would not be able to expand its line of offerings under the mark, nor would it be entitled to register its unregistered mark.

The co-existence of identical official marks, the improper granting of public notice, and the arbitrary effects on, in this case, a small business owner, all serve as indicators that the official marks regime is very much in need of reform. (For an earlier posting about another problematic official marks case see here). Private Members’ Bill C-611 is currently before Parliament (the bill is discussed here) and it offers concrete proposals for reform in this area. Let us hope it gets due consideration.

Published in Trademarks

After years of neglect, trademark law reform is now all the rage in Canada. Presently, two government bills propose major amendments to the Trade-marks Act – those in the Budget Implementation Act have proven highly controversial; those in Bill C-8 would introduce major changes, although these are less controversial. Yesterday, Liberal MP Geoff Regan introduced a private member’s bill, Bill C-611, which has as its goal the overhaul of official marks under the Trade-marks Act.

Interestingly enough, neither of the government’s trademark law reform bills tackles official marks, notwithstanding that the Report of the Standing Committee on Industry, Science and Technology in March 2013 on the Intellectual Property Regime in Canada recommended that something be done about these marks. Specifically, the report stated:

The Committee recommends that the Government of Canada introduce legislation which amends parts of the Trade-marks Act dealing with official marks to restrict the scope of official marks to important national government symbols and to narrow the definition of public authorities to avoid stifling innovation and distorting markets.

Official marks are a rather unique Canadian creation. Essentially, they allow “public authorities” to bypass the normal procedures (including all of the checks and balances present in the Act) for obtaining a trademark. Instead of applying for a trademark – which is then examined and opened for opposition to insure that it is indeed registrable and does not trample on the trademark rights of others – a “public authority” need only ask the Registrar of Trademarks to give public notice of its adoption and use of an official mark. There are no limits to official marks – they can be identical to or confusing with existing marks, and they can be generic, descriptive or deceptively misdescriptive. Further, unlike regular trademarks which can expire if the registration is not renewed, or which can be lost for non-use, official marks are potentially perpetual.

One of the reasons for the creation of the category of official marks, was perhaps, to save governments from the costs of registering and maintaining trademarks in relation to their various programs and services. While this might be an acceptable rationale for government programs and services in the strict sense, it makes less sense for government entities engaged in the marketing of alcohol and gaming to be exempt from the traditional rules (and checks and balances) of the trademark system.

In addition, until the Federal Court began its attempts to reign in official marks in the early 2000’s, the concept of a “public authority” was rather vague, leading to a flood of bogus official marks. And once public notice is declared, there is no mechanism in place to permit an easy removal of the mark – judicial review must be sought in the Federal Court of the Registrar’s decision to give public notice. This places a costly onus on businesses or other entities that run up against rogue official marks. For example, the Canadian Jewish Congress was obliged to go to court to reverse the decision to allow a U.S.-based evangelical church with a mission to convert Jews to Christianity to hold an official mark for the menorah. In 2005 I wrote an article about a battle between a private company, the Bluenose Heritage Preservation Trust Society and a Nova Scotia business over licensing fees that the Society sought to charge for the use of the name and image of the iconic Nova Scotia schooner. The Society had obtained official marks related to the Bluenose, notwithstanding that it was difficult to see how it qualified as a public authority. The litigation came to an end when the Province of Nova Scotia intervened. The Province subsequently sought to have notice given for its own Bluenose official marks. It is an illustration of the multiple defects of this regime that if you search the trademarks register you will find listed identical official marks held both by the Society and by the Province of Nova Scotia.

It would be easy to go on and on about the problems of official marks and about the problematic exercise of rights in such marks – there are many examples that can be drawn upon. (Do you remember a not too distant news story about a young Nova Scotia musician pursued by the Mint because his album cover featured Canadian pennies (which are official marks of the Mint)? Do you remember Canadian pennies?) But the point here is to discuss the new bill introduced to reform the official marks regime. I should state from the outset that I was consulted on the drafting of this Bill (along with my colleague Andrea Slane). The goal of the exercise was to reform the official marks regime. I note that a good argument could still be made for its wholesale abolition.

The main goal of the proposed reforms is to address some of the regimes key deficiencies. First, the scope of official marks is limited – both in terms of who can get them, and for what purposes. “Public authority” is defined – even more narrowly than in the definition adopted by the Federal Court of Appeal to limit access to official marks. The objective is to limit official marks only to those public authorities with the strongest links to government. Official marks are also available only to public authorities for their names, emblems or logos, or in relation to their programs or services. Access to official marks by universities is limited only to Canadian universities (under the current law, universities in any country of the world can (and do) obtain official marks.)

A second feature of the bill is that it provides for a process by which objection can be made to the public notice given by the Registrar of the official mark. This is meant to be a more expeditious and cheaper procedure than seeking judicial review of a mark. It also introduces other grounds for objection to the official mark, including that it might have a serious adverse effect on the owner of an existing trademark, that it is a generic term, or that it is otherwise not in the public interest.

A third feature sets a term of 10 years of protection for official marks. This protection can be renewed by the public authority – but if it is not, then the mark is no longer protected.

The bill aims to do something that has long needed to be done – it seeks to curtail access to official marks, to place some limits on the marks themselves so as to lessen their impact on other trademark holders, and to provide a mechanism whereby official mark deadwood can be removed. These are certainly important objectives. It is to be hoped that the bill will at least serve to put an option on the table for public debate, with a view to achieving much-needed reform in this area.

 

Published in Trademarks

Ontario’s Divisional Court has decided to certify a class proceeding in Keatley Surveying Ltd. v. Teranet Inc., a case that raises issues about the copyright status of plans of survey that are prepared by surveyors and deposited in provincial land registries. (The decision of the court below refusing to certify the class action was discussed here.) The defendant, Teranet Inc. is the company that runs the province’s electronic land titles system. The class plaintiff argues that individual land surveyors hold copyright in their surveys, and it argues that the defendant Teranet violates those copyrights when it makes electronic copies of those surveys available to others for a fee. The defendant raises several arguments in its defence. These include an argument that copyright in the surveys belongs to the Crown because of the statutory requirement for such surveys. Alternatively, it is argued that copyright is assigned to the Crown through the act of registering the document. Another possibility is that the statutory scheme that governs the registration of a plan of survey creates a process whereby the surveyor consents to the copying of the submitted plan for public purposes. Finally, there is the argument that the electronic land registry system operated by Teranet confers a public benefit such that it would be against public policy to permit surveyors to enforce their copyrights. As noted in a recent posting, these questions regarding the copyright status of documents in public registries are both interesting and important, and arise in other contexts as well.

The Divisional Court was prepared to certify the class proceeding because certain deficiencies identified by the judge at first instance had been corrected in the plaintiff’s revised class certification request. For example, while initially the class had been defined in such a way that membership in the class depended on how the substantive issues would be decided, the revised definition of the class simply includes all land surveyors in Ontario who are authors of a plan of survey found in the electronic database, or who might hold copyright in such a plan as a result of their status as employer of a surveyor, or as an assignee of either the surveyor or his/her employer. The Court of Appeal also found that the other requirements for certification of a class were met.

The Court of Appeal’s decision paves the way for this law suit to proceed – though it remains far from certain that any of the underlying copyright issues will ever ultimately be decided by a court. Nevertheless, should this dispute make its way to court, it may well provide important guidance regarding copyright in documents of all kinds that are filed in public registries for statutory purposes.

Published in Copyright Law

A recent decision from the Federal Court of Canada squarely addresses the issue of copyright trolls and the impact they may have on ordinary Internet users. It also highlights the importance of public interest advocacy in a context that is rife with economic and power imbalances.

The Internet is widely used as a source of content – whether it is in the form of film, music, text or visual works. While there is a great deal of content available both free and for a fee from authorized distributors, other content is shared without the consent of copyright holders. Where unauthorized distribution takes place, copyright may be infringed – but of course whether there has been actual infringement by the downstream user may depend upon a range of considerations.

Copyright owners – particularly those in the film and music industries – have for some time now been decrying the widespread unauthorized sharing of content over the Internet. They have also adopted a variety of strategies to impede these activities. These have included suing file-sharing services such as Napster, Grokster or Pirate Bay, with a view to having them shut down, public education campaigns, and threats of legal action or actual law suits against individual downloaders of protected content. It is with respect to this latter category of action that the label “copyright troll” has been used.

In Voltage Pictures LLC v. John Doe and Jane Doe, Prothonotary Aalto of the Federal Court considered an application for an order to compel Internet service provider TekSavvy to disclose the identities of individuals linked to some 2000 IP addresses that in turn had been associated with illegal downloading of Voltage’s copyright protected films. An earlier Federal Court of Appeal decision in a case involving music downloads had outlined the circumstances in which such an order might be granted, taking into consideration the necessary balance between the applicant’s rights and the privacy rights of the individuals linked to IP addresses. Voltage argued that it had met all of the requirements of this test.

The Samuelson-Glushko Canadian Internet Policy and Public Interest Clinic, more commonly known as CIPPIC, intervened in this case in the public interest. CIPPIC’s intervention was particularly important given that there was really no other available party to speak out for the interests of the still anonymous Internet users whose identities might be disclosed were an order to be issued. It is clear as well from reading Prothonotary Aalto’s reasons, that CIPPIC’s submissions had a significant impact on the outcome.

The decision begins with a quote from a U.S. case which speaks of the rise of “copyright trolls”, and it is clear that the spectre of such trolls looms over the Federal Court’s decision. The concept of “trolls” has become common in both patent and copyright litigation. In the copyright context, a troll is a plaintiff who files “multitudes of lawsuits solely to extort quick settlements”.[1] Trolling is a business model in its own right – suits are launched not so much in order to deter or to compensate for the harm caused by infringement; rather, trolling generates revenue by compelling individuals to settle for sums that are lower than the cost of obtaining legal advice and pursing a defence to the threatened action. As Prothonotary Aalto noted in his extensive reasons, copyright trolls have been active in other jurisdictions, and courts in both the U.K. and the U.S. have striven to find an appropriate result that protects individuals while recognizing the rights of copyright owners to bring legal action.

Prothonotary Aalto’s decision is, in fact, an exploration of the issues raised and an attempt to find an appropriate balance between the rights of individuals to pursue their online activities without having their identities disclosed to third parties, and the rights of copyright owners to sue for infringing uses of their works. He begins his reasons by considering the test for a Norwich Order laid out by the Federal Court of Appeal in BMG v. John Doe, another case which required the court to balance privacy interests against the rights of copyright holders. Although in Voltage, CIPPIC argued that the threshold for the application of this test was too low, and that parties seeking disclosures of the names of individual Internet users should have to make out a prima facie case of infringement, rather than just a bona fide (good faith) claim, Prothonotary Aalto found that the test set out by the Federal Court of Appeal was both appropriate and applicable. He also found that Voltage had met the prescribed test, ruling that “the enforcement of Voltage’s rights as a copyright holder outweighs the privacy interests of the affected internet users.” (at para 57) He noted, however, that the test left room to consider and to moderate the impact of the order on privacy rights.

There was no evidence in this case that Voltage was a copyright troll. Indeed, Prothonotary Aalto found that Voltage had met its burden of showing that it had a genuine copyright infringement case and that a court order to compel TekSavvy to release the contact information of some of its customers was the only reasonable means of establishing the identities of the alleged infringers. However, he acknowledged evidence and argument by CIPPIC to the effect that there might be technological flaws in the methods used to link IP addresses to downloading activities, such that some IP addresses may have been identified in error. He also accepted that some of the downloading activity might be justifiable under one defense or another. More importantly, perhaps, he was sensitive to the evidence supplied by CIPPIC of copyright troll activities in other jurisdictions and of the concerns of courts in those jurisdictions regarding such practices.

Ultimately, Prothonotary Aalto’s decision seeks to balance the intellectual property rights of the copyright owner with the privacy rights of individuals who might be identified as a result of a court granting a Norwich Order. In his view, it is only in a case where there is “compelling evidence of improper motive on behalf of a plaintiff in seeking to obtain information about alleged infringers” that a court would be justified in refusing to grant such an order. (at para 133) Nevertheless, the court has the authority to place terms and conditions on the grant of the order, and these terms and conditions can protect the privacy of individuals by ensuring that their personal information is not shared or misused by a company that seeks this information for improper purposes, such as copyright trolling.

In issuing the Norwich Order in this case – which compels TekSavvy to furnish the information sought, Prothonotary Aalto placed significant limits on the order. In the first place, Voltage is ordered to compensate TekSavvy for its legal and administrative costs in compiling the requested information. A copy of the court’s order must accompany any correspondence sent to TekSavvy customers by Voltage as a result of the sharing of the customer information. Any such correspondence must also “clearly state in bold type that no Court has yet made a determination that such Subscriber has infringed or is liable in any way for payment of damages.” (clause 8 of the order) This is to avoid the type of demand letter seen in copyright troll cases in other jurisdictions where letters sent to individuals convey the impression that conclusions have already been reached on issues of infringement. As an additional safeguard, Prothonotary Aalto ordered that a draft of any such letter must be reviewed by the Case Management Judge appointed to oversee the process before it is sent to any individuals. The order also provides that the personal information shared by TekSavvy as a result of the order must be kept confidential by Voltage and must not be shared with anyone else – including the general public or the media -- without the court’s permission.

The decision in this case is a welcome one. It reflects a serious effort to ensure fairness and balance between the parties. It provides the applicant with the means to obtain the information it needs to pursue copyright infringement claims; at the same time, it imposes restrictions designed to ensure that the personal information is not used improperly to generate revenue well in excess of any damages suffered by the rights holder by pushing individuals into settlements in order to avoid the costs and stresses of threatened litigation. The decision is a direct result of public interest advocacy and a reminder of the important role played by organizations such as CIPPIC.

It is worth noting that the 2012 amendments to the Copyright Act included changes to the statutory damages provisions in that statute. These provisions allow plaintiffs to opt for a fixed amount of damages in cases of infringement – in other words, to be compensated without having to establish any particular losses. The 2012 amendments drastically reduced the amount of statutory damages that can be awarded against individuals whose infringing activities are essentially non-commercial. This takes away the ability for plaintiffs to stack statutory damages in suits against individual downloaders in order to arrive at the ridiculously high (and ultimately punitive) damage awards that we have seen in the U.S. in lawsuits against students or other private individuals whose downloading was simply for their own consumption. The message from Parliament is clearly that this type of conduct, while still infringing, should not be be exploited by rights holders either to “send messages” or to provide a new business model based on serial demand letters to large numbers of vulnerable individuals. The decision by Prothonotary Aalto is in keeping with this message. While copyright owners are entitled to enforce their rights through the courts, the courts must ensure that “the judicial process is not being used to support a business model intended to coerce innocent individuals to make payments to avoid being sued.” (at para 35)



[1] This is from TCYK, LLC v. Does 1-88, 2013 U.S. Dist LEXIS 88402. The quoted words are part of the passage in the quote that starts off the Federal Court decision.

Published in Copyright Law
Tuesday, 18 February 2014 14:52

Ambush Marketing and the Olympics

With the winter Olympics now getting massive media attention, it is perhaps worth pausing to think about that other, non-official Olympic activity – ambush marketing. Indeed a recent threat of litigation by the Canadian Olympic Committee against North Face for ambush marketing is an indicator that the Olympic marketing games are also in full swing.

Like many other major sporting events, the Olympics have become heavily dependent on funding raised through sponsorship programs. The International Olympic Committee (IOC), in fact, has a carefully structured sponsorship program called TOP, which manages Olympic marketing opportunities. Sponsors pay substantial sums of money for the rights to use certain Olympic symbols in tightly controlled ways. What a sponsor is paying for is the right to associate their own brand with the brand values of the Olympics.

The Olympic logos and symbols, used by the Olympic organizers and licensed for use to sponsors, are protected by trademark or Olympic-related legislation. Any company that uses these marks without permission infringes upon these trademark rights. Ambush marketing is a term used to describe marketing practices which attempt to create an association with a major event without the ambushing company having paid for sponsorship rights. However, what distinguishes it from simple trademark infringement is the fact that ambush marketers generally do not use the trademarks of the event organizers. Instead, ambush marketers create associations through more oblique references to the event itself.

The huge amounts of money involved in the organization of major events, and in paying for sponsorships, have led organizations like the IOC to push for legislation to protect specifically against ambush marketing. In fact, it is now no longer possible to succeed in a bid to host the Olympics without a promise to enact anti-ambush marketing legislation. Canada did so for the Vancouver 2010 Olympic Games. Section 4 of the Olympic and Paralympic Marks Act specifically created a “right of association” and two Schedules to the legislation set out lists of common words that might be considered to trigger an illegal association. These words included: gold, silver, bronze, winter, 2010, twenty-ten, Whistler, Vancouver, and Games.

Anti-ambush marketing legislation is controversial. Some of this controversy is discussed by Benoit Séguin and me in a recent article on the subject. (The article is published in a new book titled Intellectual Property for the 21st Century: Interdisciplinary Approaches). It is not clear, for example, that ambush marketing legislation is truly necessary – beyond serving as a ‘comfort blanket’ for event sponsors. Concerns have also been raised that by attempting to outlaw “associations”, such legislation is unduly broad and vague. It also goes far beyond preventing major competitors of event sponsors from launching ambush marketing campaigns leading up to and during the event. For example, such legislation generally applies equally to all businesses, large or small, even if no one would expect a small local business to be a major event sponsor. Such laws limit the ability of small businesses to make even indirect reference to a major event taking place within their own community. This would seem to be a significant – and rather disproportionate -- limitation on freedom of expression. Further, such legislation privileges event organizers over all other stakeholders. Many athletes or national sporting organizations have their own commercial sponsors – indeed, athletes might be unable to train or compete without such sponsors, and national sporting organizations would not be in a position to develop young talent without commercial sponsorship. Yet when an athlete competes in the Olympics, their own commercial sponsors are limited in the extent to which they can celebrate their sponsored athlete’s achievement without running afoul of anti-ambush marketing laws. In another article, my co-authors and I also raise the issue of whether anti-ambush-marketing legislation might actually allow large corporations to put their legal teams to work to exploit loopholes in the legislation, with the result that major competitors of event sponsors are able to launch challenge-proof ambushes, while ‘associations’ created by small and medium businesses lacking the same resources are suppressed by the law.

Part of the problem with anti-ambush marketing laws is that there is a very broad range of conduct that can fall within the ambit of an “association” with an event. Some activity is clearly more problematic than others. In the case of North Face, it would appear that the company launched a new line of red and white, maple leaf flag-emblazoned sportswear in the lead up to the Sochi Games. Although no Olympic logos were used on the clothing, some items apparently featured dates linked to the Games and some promotional materials may have made direct reference to Sochi. The collection was initially called “village wear” and is now referred to as the “international collection”. The characters RU14 also appeared on some items. NorthFace is not, of course, an Olympic sponsor. The matter may never head to court – if it did, it might provide an opportunity for the courts to explore some of the challenging legal questions around the limits of legal protection against ambush marketing.

Published in Ambush Marketing

[The following is the text of my presentation at the launch conference for the edited collection of papers: The Copyright Pentalogy: How the Supreme Court of Canada Shook the Foundations of Canadian Copyright Law, Michael Geist, ed., University of Ottawa Press, 2013. The conference took place on October 4, at the University of Ottawa. My chapter in the book, titled “Acknowledging Copyright’s Illegitimate Offspring: User-Generated Content and Canadian Copyright Law”, can be found here.]

The recently revised Copyright Act contains many new exceptions to copyright infringement. Some of these involve additions to existing exceptions (expanding fair dealing to include education, parody and satire, for example), and quite a number of them are exceptions that normalize activities that used to be considered copyright infringement in spite of the fact that everyone engaged in them (like home recording of TV shows, making backup copies of software, or ripping one’s CD collection so that it can be played on an mp3 player).

Today I will talk about one of the new exceptions that is noteworthy because unlike these other exceptions it is not about modernization of the law through updating or adapting the law to well established contexts. The exception for User Generated Content addresses the evolving and emerging ways in which works are created and disseminated in our contemporary digital culture. This exception is situated in the context of a strong collection of SCC jurisprudence that directs courts to consider the importance of balancing creators’ rights against the public interest in innovation, creativity and the broad dissemination of works.

During the long progress of this bill into law, the UGC exception was dubbed the YouTube exception, in reference to what was perhaps its paradigmatic activity. For many, it was the idea that (as happened in the US) a mother might be sued for infringing copyright in music playing in the background of a home video posted to YouTube featuring a cute toddler dancing around, that justified the enactment of the UGC exception.

Yet while this may have been the paradigmatic activity (something that would not have been captured by fair dealing exceptions), the UGC exception is intriguing because it is rather breathtakingly broad in terms of the kinds of activity to which it might apply. From one perspective it is a licence to build on the works of others; from another it is a potentially sharp curtailment of the scope of a copyright holder’s ability to control the use of their work. In the end, the scope and importance of the UGC exception may come down to how its limiting provisions are interpreted: and in this regard, the direction already charted by the SCC in its recent copyright decisions will likely have great bearing.

So – what is UGC? UGC flows from the twin phenomena of deprofessionalization and disintermediation. With the now widespread availability of sophisticated, user-friendly, and increasingly portable technologies and software, ordinary individuals, with no specific training are able to engage in a broad range of activities –creating films, recording or remixing music, compiling information, mashing up different works or different types of works – that were once the exclusive domain of professionals. At the same time, digitization, the internet and the rise of social media have made it possible to disseminate user-created works to a global audience without the need of the traditional intermediaries for content publication and distribution. The result is a profoundly different environment for the creation and dissemination of “works” of all kinds within a rapidly transforming normative environment.

What is new here is not the fact that “users” are generating new content using existing works – people have always done this, and it has been either tolerated (or undetectable) when carried out for private purposes. What is new is the scale of this activity, along with its social, political and economic consequences.

The concept of layered rights in a work is well-established in copyright law. For example, the Copyright Act specifically recognizes the independent copyright that will arise in a translation of a work, notwithstanding the fact that the making or authorization of a translation is one of the exclusive rights of the copyright holder. Musical arrangements are also recognized as works independent of the original (although, if unauthorized, they may also be infringing). The whole category of adaptations of works (in the US, derivative works) recognizes that new works can be created from pre-existing works; but that these works may infringe on copyright in the original.

What the UGC exception injects into this concept of layered rights is the possibility that someone may create a new work using a pre-existing work in which copyright subsists, AND that they may disseminate it widely, so long as they do so non-commercially, and so long as this does not (and this is the tricky part) have a “substantial adverse effect, financial or otherwise, on the exploitation or potential exploitation of the existing work.” The exception offers more than fair dealing, in that the purposes for the creation of the UGC are not restricted in any way. In a sense this exception seems to acknowledge that in contemporary society, people interact with digital content in a wide variety of ways, and that such interactions do serve some public purpose, whether it’s the fostering of creative self-expression, the creation and dissemination of new knowledge, or simply a now accepted way of participating in culture in an interactive manner.

What I would like to do now is look at the potential scope and limitations on the UGC exception, keeping in mind the approach laid down by the SCC to addressing the balance of competing interests in copyright law.

To qualify as UGC for the purposes of this exception, the author of UGC must use an existing work – with no limitations on kind or category; and they must use it to create a new work in which copyright subsists.

This is a very broad definition with the potential to include all manner of works. Leaving aside dancing toddlers, the exception is broad enough to include things such as an unauthorized translation of a work, and a compilation (which can be a work that is comprised of other works). (Of course, it is much broader than this, but I have chosen these two examples to illustrate the sheer scope of the definition of UGC). Indeed, if you take the example of a compilation, it would seem that the UGC exception might finally make legal in Canada the much loved but always illegitimate mix tape – a compilation of songs chosen by its maker for their particular significance or in the hope that they will impress or seduce the recipient. None of the other exceptions – the one for private copies, the exception for copying music onto blank audio recording media, or even fair dealing – would seem to legitimate the act of creating a compilation of musical works for the purpose of giving it to someone else; but the UGC exception seems not only to include such a creature within the definition of UGC, it also legitimates the non-commercial distribution.

Many creators already draw upon pre-existing works in the generation of new works. The UGC “User” is different from other creators largely because the works she draws upon to create her own works are still protected by CR and, unlike other creators who make use of the works of others, she may lack the economic ability to obtain a licence for her use of the work. Unlike other creators, her immediate expressive goals may also be served by non-commercial dissemination.

It will be interesting to see whether the implicit view that UGC is somehow parasitic in nature colours how UGC is dealt with by the courts in cases where the source work or works are ones in which the subsistence or scope of copyright might reasonably be challenged. Thus, for example, assume that the UGC work is a mashup of data, or an app that makes use of data from other sources. Providers of data, including governments at all levels in Canada, tend to assert copyright in data in rather broad terms (not all government data, for example, is made available under an open licence, and even the open licences assert copyright in the data sets), so the claim to copyright is there, even though it may be either unsupportable or rather limited in scope. If the creator of a work that is built upon data from other sources decides to commercialize their work, rather than continue to disseminate it at no cost, it will be interesting to see how the UGC exception is reconciled with the use of works in which – to borrow the language of the USSC, copyright is “thin”. In other words, will the focus ultimately be on the legitimacy of the use, or will it be on the legitimacy of the copyright claim? What I wish to underline here is the potential of the UGC exception to push users towards non-commercial dissemination in contexts where commercial dissemination is a real option. One would hope that the strong line on balance taken by the SCC would direct courts towards a careful examination of the underlying copyright claims before shifting their attention to the limits of the exception.

In order to further explore the strengths and weaknesses of this exception and its relationship to other provisions in the Copyright Act, I am going to use an example as an illustration.

A translator typically uses a work protected by copyright as a basis for their translation, which is a work in its own right. The amateur and unauthorized translator used to infringe copyright (unless somehow fair dealing could be asserted) when they created their translation.

Let us assume that Gail is a skilled freelance English/Estonian translator in Canada. She is a huge fan of an obscure Estonian author’s first novel. That author’s market share in Estonia is already small, his publisher, who owns all of the rights in his works, sees no market for an English translation of the book. In her spare time, Gail translates the work and publishes her translation on the Internet, where it begins to develop a following.

To qualify for the UGC exception, the use of the new work or the authorization of its dissemination must be solely for non-commercial purposes. The concept of non-commercial is a tricky one, and it will be interesting to see how it is interpreted. If Gail is not selling copies of her translation on the Internet, this would appear to be non-commercial. On the other hand, if her skilful translation brings attention to her and results in her receiving translation contracts is there now a commercial dimension to her posting of the work? Does it make a difference whether she posts the translation on Facebook or Wattpad, or whether it is placed on her personal website which she also uses to advertise her services as a translator?

The non-commercial restriction is only for the creator of the UGC. Dissemination of the UGC may be carried out for the commercial purposes of the intermediary. Thus it is not an objection to argue that YouTube or Facebook are commercial enterprises. Their role in disseminating the UGC does not disqualify the UGC from the application of the exception. Of course, this creates an interesting dynamic, since it means that SOMEONE may be commercially exploiting the original copyright protected work – if not, perhaps the creator of the UGC. The growing popularity of Gail’s translation may drive users towards a website that features advertising content. This indirect commercial exploitation may frustrate copyright owners. Yet as the SCC has now repeatedly confirmed, the broad dissemination of works is a public good, and one against which owners’ rights must be balanced. Since advertising is a part of the business model for sites that aggregate and disseminate UGC, this commercial dimension may be tolerated as a necessary evil in order to achieve broad dissemination.

Perhaps the most open-ended limitation on UGC – and one which is most problematic for those who wish to rely on the exception is that which precludes uses that do not “have a substantial adverse effect, financial or otherwise, on the exploitation or potential exploitation of the existing work”. Unfortunately, this is “shut down” language. It is open-ended enough that it might not only discourage a creator of UGC from disseminating work online, it might be the meat of a very intimidating cease and desist letter. In the case of Gail’s translation, it may be that the growing popularity of the work as a result of her translation means that there is now a market for an English-language translation of the book – although this market is now adversely affected by the availability of Gail’s free translation. As a non-commercial content creator is unlikely to have pockets deep enough to withstand the threat of litigation, this kind of language may unfortunately gut much of what is promising and interesting about this exception.

It is also not clear whether the moral rights provisions of the Copyright Act will operate to limit the creation and dissemination of UGC. The UGC exception provides that qualifying UGC will not infringe copyright, but it is silent as to moral rights. Where the UGC can be argued to result in a mutilation or modification of the original work to the prejudice of the honour or reputation of the creator, then it will be in violation of the creator’s moral right to integrity. Assume that the original author of the work feels that Gail’s translation creates an entirely different mood to the book than that which he believes he created in his own work, or that she has chosen to have the characters speak in a particularly informal kind of English which he feels is completely inappropriate. Jurisprudence on moral rights is relatively uneven and unhelpful; it is not clear how the UGC exception, the need to create a balance of rights, and the moral rights provisions will be reconciled with each other.

Finally, it is worth asking what the relationship is of UGC to the fair dealing exception. The Supreme Court of Canada has now sent repeated strong messages about how the user’s right of fair dealing should be interpreted and applied.

UGC has an interesting relationship to fair dealing: Not all UGC will fit within the fair dealing exceptions, but some will. For example, UGC that is parodic or satirical may also qualify as fair dealing. As the SCC has already told us that fair dealing is always available as an exception notwithstanding other applicable exceptions, one can assume that a parody or satire that is exploited commercially and that therefore does not qualify for the UGC exception, might still be considered under the fair dealing provisions. Gail might perhaps argue that the translation of the work was for the purposes of the potentially very broad category of “education”; she was hoping to educate the public about a talented but obscure Estonian writer. In that case, the fact that the work may have an adverse effect on some potential market for the work is only one of the factors that would be taken into account by a court in an assessment of fair dealing.

Although there is much interpretive uncertainty surrounding this new exception, what the messages sent by the SCC in the copyright pentalogy do is signal an approach to the interpretation of all of the copyright exceptions in a manner that achieves a proper balance between the competing public interests served by copyright law. In particular, the emphasis on the importance of the dissemination of works – including and perhaps in particular their dissemination over the internet, will signal to other courts the need to take into account the value and centrality of this mode of communication in contemporary society, as well as the shifting dynamic of the creation and dissemination of works.

Published in Copyright Law

A recent US copyright law decision addresses one aspect of the question of how copyright law applies to documents that are submitted as part of public processes – in this case, court proceedings. These issues have cropped up in Canada in a couple of fairly recent instances. For example, there is an ongoing class action lawsuit launched by lawyers in private practice who object to the defendant’s inclusion of court documents authored by lawyers into their commercial products without consent or compensation. Another Canadian court refused to certify a class action law suit on behalf of land surveyors who objected to the inclusion of their land surveys into an electronic land registry database without licence or compensation. Although the class was not certified, the court did offer some interesting views regarding ownership of copyright in the documents.

The US decision, Unclaimed Property Recovery Service Inc. v. Kaplan comes from the Court of Appeals, Second Circuit. In this case, the plaintiffs had previously been involved with a class action law suit, for which they had prepared the first class action complaint and compiled the accompanying exhibits. Kaplan was the attorney representing the class. He signed and filed the documents on behalf of the class. When the complaint was dismissed as being outside the prescribed delays, he filed an appeal. Before the appeal was decided, Kaplan and the plaintiffs had a falling out. The plaintiffs retained new lawyers; Kaplan continued on as attorney of record for the class action law suit.

The appeal proceeded and was eventually successful, and leave was granted to file an amended complaint, which was done. The amended complaint was based upon the first complaint and its accompanying documents, and indeed “[s]ignificant portions of the Second Complaint and Second Exhibits were identical to portions of the First Complaint and First Exhibits.” Meanwhile, the plaintiffs registered copyrights in these documents and proceeded to sue Kaplan for having infringed their copyrights in the complaint and exhibits. They sought both an injunction and damages. The district court dismissed the plaintiffs’ action and it proceed on to the Court of Appeals, which unanimously dismissed the appeal.

The Court of Appeals found that when a person who holds copyright in litigation documents authorizes a party to the litigation to make use of the documents, “such an authorization necessarily conveys, not only to the authorized party but to all present and future attorneys and to the court, an irrevocable authorization to use the document in the litigation thereafter.” The Court noted that any other outcome would jeopardize the litigation system. It noted that “[t]he courts could not thoroughly and fairly adjudicate a matter if suddenly in the midst of litigation the parties lost the right to give the court copies of documents already used in the litigation that support their arguments.” It went on to find that the copyright holder who authorizes a party to use documents in litigation must know that as a consequence these documents may be reproduced and distributed for purposes related to that litigation. The Court added that in this context, “[t]he needs of the courts prevail over the copyright holder’s selfish interests, and the authorization becomes irrevocable as to the participants in the litigation for the purposes of the litigation.” The authorization would extend to incorporating all or part of the documents into an amended complaint, as happened in this case.

The Court also noted that to allow the interests of a copyright holder to trump those of parties to the litigation could lead to serious ethical consequences. For example, an attorney who drafts legal pleadings for a client could not invoke her copyright in these pleadings to limit their use without breaching her ethical obligations to that client. A lawyer should also not be able to use his copyright in documents to thwart a client’s attempt to change attorneys. Finally, the court noted that to accept the plaintiff’s arguments would hamper the authority of courts to manage their own affairs: a court order requiring parties to amend their pleadings should not run up against copyright claims in those pleadings.

The decision seems eminently sensible, but it does not resolve some of the other copyright issues that swirl around documents submitted as part of legal processes. For example, it does not address the issue raised in Waldman v. Thomson Reuters Corporation, which turns on whether copyright in documents that are part of a public court record can be asserted against a publisher that seeks to commercialize these documents – albeit in works aimed at assisting lawyers in their practice. The Second Circuit Appeals Court was careful to emphasize that their decision reached only to the particular facts of the case before them – the issue was whether copyright law could be used to prevent the class action plaintiffs from making use of documents which they had previously been authorized to use. The court noted: “We do not decide whether a party who is authorized to file a legal pleading in one case is also authorized to file it in others cases. We do not decide whether the parties to the litigation may use the pleading for other purposes unrelated to the litigation.” And, of course, they do not decide whether those pleadings, as part of the public record, can be used by others for their own purposes.

Published in Copyright Law
Wednesday, 04 September 2013 13:34

Copyright and the visual arts: new court decision

A recent decision of the Ontario Supreme Court offers a relatively rare glimpse into how copyright laws are applied to artistic works in Canada.

The plaintiff in this case, visual artist Malcolm Rains, painted a series of oil paintings over a period of 22 years. He calls this series the “Classical Series” and it currently comprises over 200 paintings. Each of these paintings is a still life of a sheet of crumpled paper against a particular background. The defendant is visual artist Lucian Bogdan Molea. In 2000, Molea began painting still lifes of crumpled paper. Rains brought suit against Molea, arguing that he had infringed his copyright in individual canvases, as well as in his series as a compilation.

Justice Chiappetta began her analysis by considering whether copyright subsisted in the individual canvasses painted by Rains and in the series. She found that the plaintiff’s canvasses met the standard of originality set out by the Supreme Court of Canada, notwithstanding the fact that the he “employed commonplace tropes used by painters for centuries”. The paintings emanated from Rains and were not copies of other works; they also reflected an exercise in skill and judgment that was more than trivial. She rejected the argument that the paintings amounted to an unprotectable merger of idea and expression. Justice Chiappetta noted that the idea was to paint a still life of a crumpled piece of paper; the expression of the idea was found in each individual painting. Recognizing copyright in the paintings did not give Rains a monopoly over the idea.

Although she found that each painting was protected by copyright, Justice Chiappetta reached a different conclusion with respect to the series. It was argued that the series was itself a distinct work, namely, a compilation. To be protected, a compilation must be an original expression that reflects an exercise of skill and judgment. In the case of the series of paintings, there was a concept, and a progression of canvases, but there was not the exercise of skill and judgment necessary to create a compilation. She explained: “There is no originality in the label itself, there is no skilful organizational aspect of the Classical Series that warrants protection for the series as a whole.” (at para 17) The paintings were not specifically selected and/or arranged as part of a collection; rather, the series was an open-ended and evolving category of works. Justice Chiappetta also rejected arguments that the series should be considered a compilation because it evokes a common feeling or “gestalt”. She stated: “it would be unwise to extend copyright protection to the visual perception of an artistic work, which is intangible and subjective.” (at para 22).

Having determined that copyright subsisted in the plaintiff’s individual paintings, Justice Chiappetta next considered whether Molea’s works infringed upon those copyrights. At the outset she dismissed any similarities between the works that were due to “common, long-established artistic techniques”. She also found that these similarities represented “a substantial part of the respective works.” (at para 30) She noted that painting crumpled paper “has been employed as a model since the French Academy was founded in 1664”. (at para 35) Painting it on a flat surface had similarly been around for at least 200 years. She also noted that the choice of certain colours for backgrounds also reflected long established practices. However, Justice Chiappetta was careful to clarify that she was not imposing a “novelty” standard for the protection of artworks under copyright law; rather, an artist: “cannot establish infringement by relying on his use of the noted unoriginal, commonplace, historical painting techniques. This would be akin to Shakespeare relying on his use of iambic pentameter in his writing or Drake relying on his use of 16 bars to a verse in his music.” (at para 40). In other words, the scope of protection available to copyright works must not be so broad as to give rightsholders a monopoly over techniques or practices. Ultimately she found that there were sufficient dissimilarities between the works to conclude that Rains’ canvasses were not the result of copyright infringement, but were original works in their own right.

In rejecting arguments that the defendant’s works might be mistaken for those of the plaintiff, Justice Chiappetta also made an important distinction between a confusion analysis and the analysis required for copyright infringement. A confusion analysis is more common in trademark law, where the question is whether the defendant’s trademark creates confusion in with that used by the plaintiff. Since a trademark is meant to serve as an indicator of source; misrepresenting one’s products or services as those of another is at the heart of trademark infringement. In the copyright context, however, it is not enough to argue that the work of one person is evocative of the work of another, absent proof of infringement. In the words of Justice Chiappetta: “it would be unwise to establish confusion as the test for colourable imitation of an artistic work. This test by its very nature lends itself to the subjective nuances of comparison [. . . ]”. (at para 44) “Confusion” in the context of art might be the result of the use of fairly similar techniques or methods. Further, copyright law allows for independent creation – the creation of even identical works can be tolerated so long as one was not the result of copying of the other.

Justice Chiappetta’s findings on the issue of access are also interesting. Because independent creation is always a theoretically possible explanation of substantially similar works, there must be some evidence that the defendant had access to the works that he or she allegedly copied. In this case, it was clear that Molea had previously seen a number of canvasses in Rains’ series. However, Justice Chiappetta found that this general access to a broad spectrum of work by Rains was not sufficient. Rather, it was necessary to show specific access to those particular works which were allegedly copied. She also refused to presume access on the basis that Molea had only commenced painting canvasses featuring crumpled paper after his move to Canada, when he would first have been exposed to the works of Rains. She found that Molea had provided a logical explanation for the evolution of his work over time.

This case is interesting in its application of copyright principles to the visual arts in a context where it is necessary to separate both concept and techniques and methods from the work itself. A finding of infringement in a case such as this would make it difficult for anyone to paint a crumpled piece of paper without fear of a finding of copyright infringement.

Published in Copyright Law

My colleague Michael Deturbide and I are very honoured to have been awarded the 2013 Walter Owen Book Prize for our new book Electronic Commerce and Internet Law in Canada, published by Wolters Kluwer (CCH). We are very grateful to the Foundation for Legal Research, which awards this prize, and which also has been a strong pillar of support for legal research in Canada.

 

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