UBC Law 422.002 INTELLECTUAL PROPERTY Copyright Jennifer A. Marles [email protected]...

UBC Law 422.002

INTELLECTUAL PROPERTY

Copyright

Jennifer A. [email protected]

604-676-8967

www.patentable.com/lectures

mailto:[email protected]

Last Class• History of Copyright

• Requirements for subsistence of ©

• Authorship

• Originality

• Fixation

Recap: Requirements for Copyright Protection

s. 5(1) – copyright shall subsist in Canada…in every original literary, dramatic, musical and artistic work… Subject matter – literary, dramatic,

musical, artistic work Originality Fixation Entitlement (3 connecting factors to treaty

country)

Summary - Requirements Originality (s. 5, CCH “skill and judgment”)

“sweat of the brow” standard rejected: Feist and Tele-Direct illustrate problems with this standard

but SCC says “creativity” too high a standard Entitlement (s. 5 – “treaty country”)

citizenship, residence, or place of first publication Subject Matter

works, non-works, moral rights Fixation

see s. 2 “dramatic works”, “computer programs”; Cdn Admiral Corp.; Gould Estate

Recent SCC cases like Théberge emphasize importance

Today• Works

• Rights Comprising Copyright

• Moral Rights

• Neighbouring Rights

Literary Works

Literary Works - Definitions “work” includes the title thereof when such title is

original and distinctive;

“literary work” includes tables, computer programs, and compilations of literary works;

“computer program” means a set of instructions or statements, expressed, fixed, embodied or stored in any manner, that is to be used directly or indirectly in a computer in order to bring about a specific result;

“compilation” means (a) a work resulting from the selection or arrangement of literary, dramatic, musical or artistic works or of parts thereof, or (b) a work resulting from the selection or arrangement of data;

Literary Works

How substantial must the work be to merit protection?

Exxon – single word, even though invented, not protected by copyright a literary work is intended to afford either

information and instruction, or pleasure in the form of literary enjoyment (University of London Press)

apart from the law of trademarks, no one can claim monopoly rights in the use of a word or name

Literary Works - Titles Copying of title not generally a substantial

reproduction

in general, a title by itself is not proper subject matter of copyright But leaves open that the taking of a title could, in

appropriate circumstances, be a substantial taking

“work” includes the title, but the title is not a separate work (see definition of “work” in s. 2)

See also Neudorf v. Nettwerk Productions Contribution of title not substantial

Literary Works – Type of Work

University of London Press: Words cover work which is expressed in print or

writing, irrespective of the question whether the quality or style is high

“Literary” seems to be used in a sense somewhat similar to the use of the word “literature” in political or electioneering literature and refers to written or printed matter

Mathematics exams held to be literary works

Literary Works – Type of Work Bulman v. One-Write

Copyrightability of accounting forms in issue

Is it enough that the matter be printed or written (U. of London Press) or must there be an imparting of intelligible information as set out in Exxon?

In a compilation, there must be a literary sense of functionally assisting, guiding, or pointing the way to some end, per Collier J.

No need that the compilation impart intelligible information

Literary Works – Protection Beyond the Literal Words?

Nichols v. Universal Pictures Corp. P’s play and D’s motion picture shared

some similar characters and themes But specifics of plot and some characters quite

different Issue of whether the taking of plot or

characters could potentially infringe the literary copyright in the play

p. 29: the right cannot be limited literally to the text, else a plagiarist would escape by immaterial variations

Literary Works – Protection Beyond the Literal Words?

Court holds that two plays may correspond closely enough in plot for there to be infringement Even without direct taking of literal dialogue

Leaves open that the taking of a character could infringe But “the less developed the characters, the

less they can be copyrighted”

Literary Works - Compilations “compilation” - means

(a) a work resulting from the selection or arrangement of literary, dramatic, musical or artistic works or of parts thereof, or

(b) a work resulting from the selection or arrangement of data;

Literary Works - Compilations

Compare BC Jockey Club v. Standen with Feist, Tele-Direct Overnight took a substantial amount of skill,

knowledge and experience to produce, so originality was not in issue

issue was infringement (i.e. substantial taking)

court found that defendant had taken more than just information, but rather the labour and skill which went into the compilation

Literary Works - Compilations BC Jockey Club v. Standen (BCCA)

p. 36 “if the governing principle is as I stated it earlier, and inviolable, then the judge did indeed err”

per Laddie & Vitoria, copyright in a compilation may be infringed by appropriating an undue amount of the material, although the language employed be different, or the order altered

otherwise copyright in a compilation would be of little or no value

Literary Works - Compilations

How to reconcile BC Jockey Club v. Standen with Tele-Direct, Feist? Infringement, not originality, was the issue Infringe by taking a substantial part The selection of facts may be a substantial

part of the originality Here, characterized as an entirely novel list of

horses and other information Look to where author's skill and judgment

applied

Literary Works – Computer Programs

Protected as literary works

See s. 2 definition of “literary works” (includes computer programs)

Also s. 2 defines “computer program”

Literary Works –Computer Programs

Apple v. Mackintosh (SCC) operating system software vs. application

software source code was admittedly protected what about object code burned into a chip? does code continue to be protected when

replicated in the circuitry of a silicon chip? direct mechanical copying in issue

programs embedded in the silicon chip are a reproduction of the programs in assembly language and as such are protected by copyright under s. 3(1)


Basic principles of copyright law: Idea/expression dichotomy – notion that

copyright protects expression, but not the underlying ideas

Merger – where there is only one way of expressing an idea, copyright would provide a monopoly over the idea itself, and therefore should not extend to protect such expression

p. 45


To assist in helping the court to distinguish between ideas and expression, US courts developed the “abstraction-filtration-comparison” test Computer Associates v. Altai (2nd Cir.) separating the expression from the idea,

public domain elements, scenes a faire, etc. to isolate what is protectable and compare what has been copied

Discussed in Canada in Delrina v. Triolet


ABSTRACTION levels of abstraction

program’s main purpose system architecture various abstract data types various algorithms and data structures source code object code


FILTRATION elements dictated by efficiency if the idea can only be expressed in one way,

that expression can’t be protected [MERGER] functional elements are not protected nor elements dictated by external factors e.g.

scenes a faire, would be included in every treatment of the subject matter, couldn’t write the program without certain components

elements in the public domain


COMPARISON Did the defendant copy any aspect of the

protected expression? What is the relative importance of the

copied section?


Delrina v. Triolet Systems

Here, nothing was found to be copied (finding of fact)

In any event, any similarities were dictated by functional requirements, common in the community, public domain, interface was functional or common public domain

Consider issues of restraint on defendant's ability to earn a living?

Practical Example – Abstraction-Filtration-

Comparison Test

Public domain

New codecritical

Efficiency

New codenot critical

Public domain

New codecritical

Efficiency


Public domain

New codecritical

Efficiency


Infringing Work

New codecritical


FiltrationAbstraction

Public domain

New codecritical

Efficiency


Compare Quality and QuantityAssess Originality

Public domain

New codecritical

Efficiency



So abstraction-filtration-comparison test not necessarily inconsistent with two-step Ladbroke test May assist in analyzing the quality of what

was taken But correct approach in Anglo-Canadian

law is to apply the two-step analysis In determining substantial taking, look at the

quality of what was taken

Dramatic Works

Dramatic Works s. 2: “dramatic work” includes

(a) any piece for recitation, choreographic work or mime, the scenic arrangement or acting form of which is fixed in writing or otherwise,

(b) any cinematographic work, and

(c) any compilation of dramatic works;

old definition prior to 1 January 1994: "dramatic work" includes any piece for recitation, choreographic work or

entertainment in dumb show, the scenic arrangement or acting form of which is fixed in writing or otherwise, and any cinematograph production where the arrangement or acting form or the combination of incidents represented give the work an original character;

Now whether a cinematographic work has a “dramatic character” determines the term of copyright in the work (see s. 11.1)

Dramatic Works

What is “dramatic”? Some story or plot – thread of

consecutively related events Or some element of drama in the scenes

e.g. videos on how to sell real estate have been held to be dramatic works

Dramatic Works

Canadian Admiral Live telecasts were not dramatic works:

merely provides an electronic telescope -- no originality in selection and arrangement.

Would this apply today? were the live telecasts original artistic works

(photographs)? No, photograph involves something physical;

the making of a negative Is definition of photograph consistent with our

modern understanding?

Dramatic Works – Cinematographic Works

Canadian Admiral

were the live telecasts cinematographic works as produced by an analogous process?

No – television converts light to electronic signal for transmission; is not analogous to cinematography

Note that Act amended in 1993 to change “produced by” with “expressed by”,

Does new definition overrule the effect of Canadian Admiral?

Artistic Works

Artistic Works

s. 2: “artistic work” includes paintings, drawings, maps, charts, plans, photographs, engravings, sculptures, works of artistic craftsmanship, architectural works, and compilations of artistic works;

s. 2: “architectural work” means any building or structure or any model of a building or structure;

Artistic Works

Architectural Works Some older cases held no copyright in plans for

fairly standard home “architectrual work of art” repealed For architectural work, sufficient that an attempt

has been made to produce venustas (beauty) and some originality displayed

ownership of copyright in architectural work is in the author of the plans, not builder or purchaser

Artistic Works Problem when item is functional Copyright in book does not protect

underlying system: Baker v. Selden No copyright in cardboard pattern for

measuring ladies' dress sleeves: Hollinrake v. Truswell

artistic work must be intended to have an appeal to the aesthetic senses, not just an incidental appeal

also a 2D work can be infringed by a 3D reproduction -- King Features

Cuisenaire v. South West Imports

Artistic Works – Interface With Industrial Design Protection

Copyright Act: Non-infringement re certain designs

64(2) Where copyright subsists in a design applied to a useful article or in an artistic work from which the design is derived and, by or under the authority of any person who owns the copyright in Canada or who owns the copyright elsewhere,

(a) the article is reproduced in a quantity of more than fifty, or

(b) where the article is a plate, engraving or cast, the article is used for producing more than fifty useful articles,

it shall not thereafter be an infringement of the copyright or the moral rights for anyone

(c) to reproduce the design of the article or a design not differing substantially from the design of the article by

(i) making the article, or

(ii) making a drawing or other reproduction in any material form of the article, or

(d) to do with an article, drawing or reproduction that is made as described in paragraph (c) anything that the owner of the copyright has the sole right to do with the design or artistic work in which the copyright subsists.

Exception: (3) Subsection (2) does not apply in respect of the copyright or the moral rights in an artistic work in so far as the work is used as or for

(a) a graphic or photographic representation that is applied to the face of an article;…


Industrial design basics:

Protects features of shape, configuration, pattern and/or ornament that appeal to and are judged solely by the eye

Monopoly right: make, import, sell, rent

System of government registration

Apply on a country-by-country basis

Limitation period for filing application: one year in Canada, US

Most countries, no grace period

Limited term – 10 years in Canada


Value of industrial design rights?

Apple v. Samsung global patent wars

Both utility patent and industrial design rights being litigated

Germany – preliminary injunction granted against Samsung's Galaxy tablet based on Apple's Community design rights

U.S. - case involving design patents proceeding, although preliminary injunction refused


c.f. copyright

Arises automatically

Recognized in most countries

No need for government registration

No limitation period for filing application

Very long term (life + 50 years)

Rights Comprising Copyright - Substantial Reproduction

Ladbroke – two part test: first determine whether the Plaintiff’s work as a whole is

original then inquire whether the part taken is substantial

wrong to ask whether the part taken by itself is protected

i.e. cannot dissect the work as a short cut, can ask if the part taken would itself be

the subject of copyright, but this is only a shortcut “Substantial” involves quality as well as quantity

can look to whether what was taken is novel or striking, or merely commonplace

Rights Comprising Copyright - Performance in Public

Canadian Cable TV v. Copyright Board “in public” means openly, without concealment

and to the knowledge of all

see s. 2.3 – now communicating work to public by telecommunication not performing or delivering work in public, nor is it authorization to do that act

Overruled Cdn Admiral v. Rediffusion – looked at nature of audience

Broadcast to many private homes not “in public”

Rights comprising Copyright - Mechanical Contrivances

Warner Bros.-Seven Arts Is a videotape a mechanical contrivance?

Note definition of “mechanical” that is applied: “acting, worked or produced by a machine or mechanism” How does this apply in the context of more

modern technology?

Moral Rights

Moral Rights 14.1 (1) The author of a work has, subject to section 28.2, the

right to the integrity of the work and, in connection with an act mentioned in section 3, the right, where reasonable in the circumstances, to be associated with the work as its author by name or under a pseudonym and the right to remain anonymous.

rights of paternity and integrity

28.2 (1) The author’s right to the integrity of a work is infringed only if the work is, to the prejudice of the honour or reputation of the author,

(a) distorted, mutilated or otherwise modified; or

(b) used in association with a product, service, cause or institution.

Moral Rights Cannot be assigned, but can be waived in whole or in

part: s. 14.1(2) Subsist for same term as copyright in the work: s.

14.2 s. 28.1 and 28.2 deal with infringement of moral rights

An act that is contrary to any of the moral rights Note for certain works, prejudice is deemed if there is any

distortion, mutilation or other modification of the work: s. 28.2(2)

However, change in location of work or physical means by which exposed or physical structure containing it, or steps taken in good faith to restore or preserve the work shall not, by that act alone, constitute a distortion, mutilation or other modification: s. 28.2(3)

Moral Rights Moral rights limited by reasonableness Théberge – descend from civil law

tradition Focus of Canadian law is on economic rights Moral rights treat work as extension of

author’s personality, deserving of protection Snow v. Eaton Centre

Flock of geese adorned with ribbons Can consider author’s subjective views, so

long as reasonably arrived at

Neighbouring Rights

Neighbouring Rights

Performer’s Rights s. 15, s. 26 if not fixed

right to communicate to the public by telecommunication

to perform in public by non-broadcast telecommunication

to fix in any material form

if fixed right to reproduce unauthorized fixation to reproduce unauthorized uses of authorized fixation to rent out

Right to remuneration – s. 19

Neighbouring Rights

Sound Recordings s. 18 right to publish for the first time, reproduce in

any material form, or rent (and to authorize such acts)

right to remuneration for public performance or communication to the public by telecommunication (split 50/50 with performer/maker) (s. 19)

Neighbouring Rights

Communication Signals s. 21 right to fix it, reproduce any unauthorized

fixation, authorize simultaneous retransmission, perform TV broadcast in public for an entrance fee

Neighbouring Rights

Term s. 23 Performers’ right

50 years from end of calendar year in which first fixation or unfixed performance occurred

Sound Recordings 50 years from end of calendar year in which first

fixation occurred Communication Signals

50 years from end of calendar year in which broadcast

Next Class• Ownership and Assignment

• Infringement of Copyright in Works

– (By Importation, Authorizing Infringement; Fair Dealing will be covered in our last class)

Read pages 67-103 for next class

UBC Law 422.002 INTELLECTUAL PROPERTY Copyright Jennifer A. Marles [email protected]...

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