UBC Law 422.002

INTELLECTUAL PROPERTY

CopyrightLecture 4

Jennifer A. Marlesjmarles@patentable.com

604-676-8967

www.patentable.com/lectures

Last Class• Works – literary, dramatic, artistic

• Rights comprising copyright – reproduce, perform in public, mechanical contrivances

• Moral Rights

Recap: Literary Works Literary work:

A work which is expressed in print or writing: University of London Press

Must be intended to afford either information and instruction, or pleasure in the form of literary enjoyment: Exxon Corp.

Sufficient if literary sense of functionally assisting, guiding or pointing the way to some end, but not sufficient if just words: Bulman Group v. One Write

Although title is part of the work, copying title not generally a substantial reproduction

See s. 2 “work” and Neudorf. v. Nettwerk Productions

Recap: Literary Works Computer programs

Can have infringement by taking of plot or character, if sufficiently well developed: Nichols v. Universal Pictures

Apply this to computer programs: abstraction/filtration/comparison

Apple v. Mackintosh – copied silicon chip, not source code computer programs are a form of expression; a set of instructions expression does not merge with the idea in silicon chip now see s. 2 “literary work”, “computer program”

Delrina v. Triolet – abstraction/filtration/comparison test Useful for analysis, but in Canada, must consider whether substantial part

of work taken, not dissect component parts Fact that something is an idea, is dictated by function, efficiency or external

factors, or is taken from the public domain may be considered in assessing substantiality

Merger doctrine – if one or only a few ways to express idea, cannot give copyright holder a monopoly on the idea

Recap: Dramatic Works Dramatic Works

Old definition required that “arrangement or acting form or combination if incidents represented give the work an original character”

Canadian Admiral Corp. – live telecasts – footage of football games had not been given an “original character” – no expression of thought

Not produced by a process analogous to cinematography Not akin to photography – no negative created recall also telecasts were not protectable because not fixed

Now s. 11.1 now provides a different term for cinematographic work where the arrangement or acting form or the combination of incidents represented give the work a dramatic character, but all cinematographic works are considered to be dramatic works

Recap: Artistic Works– Old definition “architectural work of art” now

“architectural work” Some older cases had required artistic merit or

element of uniqueness Can have copyright in plan for 'cookie cutter' home copyright owned by author of plans, not builder copyright does not pass to owner of the building

Cuisenaire – coloured rods for teaching math not protectable

Not artistic works: must be intended to have an appeal to the aesthetic senses as an important or one of the important objects for which the work is brought into being

Recap: Interface with Industrial Design

Consider interface between copyright and industrial design protection: s. 64 Copyright Act

Designs applied to useful articles reproduced in quantities of more than 50

Consider importance of this: e.g. produce a blueprint to make a spare part

Producing the spare part infringes copyright in the blueprint

Thus life + 50 year term of protection for spare part, while patent would give only 20 years, industrial design 10 years

Recap: Moral Rights Personal to the author

Cannot be assigned, but can be waived

Descend to author's heirs on death

Very limited in Canadian law

Right of paternity only where reasonable

Right of integrity infringed only if work is distorted/mutilated/modified or used with product etc. to the prejudice of author's honour or reputation

Today Neighbouring Rights Ownership and Assignment Infringement

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 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

Ownership and Assignment

Ownership And Assignment

s. 13 Author is the first owner unless: a) commissioned engraving, portrait or

photograph b) work made in course of employment under

contract of service Owner may assign or licence, but

assignment must be in writing, signed by owner (s. 13(4))

recall moral rights cannot be assigned, but may be waived (need not be in writing) (s. 14.1(2))

cannot legally transfer rights in a future work, agreement to assign future work is an equitable assignment (see London University Press)

Ownership And Assignment s. 14 note reversionary right

Where author is first owner of ©, no assignment/grant made otherwise than by will is effective beyond 25 years from death of author

author of photo is owner of the negative at the time it was made (or initial photo where no negative) (s. 10)

author of cinematographic work undefined producer or director or both see s. 2 “maker” person by whom arrangements

necessary for the making of the work are undertaken “maker” of sound recording = person who made

arrangements necessary for first fixation

Ownership and Enforcement• Ownership is important when considering

enforcement issues legal owners must be joined as parties to any

action see s. 36(2) of the Copyright Act

Problematic if author cannot be located

Ownership And Assignment University of London Press

servant is person who is subject to the commands of his master as to the manner in which he shall do his work [“control test”]

Examiners paid a lump sum to set examination; how this was accomplished was left to their discretion

example of equitable assignment, no contract of service with authors

Contract with University meant that examiners were obliged to assign © to the University, which had assigned © to the plaintiff

Ownership And Assignment “control test” of whether employer exercises control over how

work performed does not work well in context of skilled employees Indicia of contract for service include power of selection, power of dismissal

and suspension, payment of wages, right to exclusive service, right to determine place of work and nature of work, provision of tools and equipment

More modern tests are multifactorial Entrepreneur test: is employee in business for his own account?

Consider ownership of tools, chance at profit or risk of loss, who hires and pays any helpers

Integration or Organizational test: consider if employee employed as integral part of employer’s business, or only accessory thereto [difficult to apply]

Distinguish: ship’s master, chauffeur and reporter on staff of newspaper have contract of service, versus a ship’s pilot, a taximan and a newspaper contributor are under a contract for services

Joint Authorship

Joint Authorship Neudorf v. Nettwerk Productions

One does not become an “author” by merely contributing ideas or suggestions

Author is one who contributes to the form of the work

Consider that “author” is free to accept or reject the mere suggestions or ideas of another (exercising choice)

s. 2 “work of joint authorship” = work produced by the collaboration of two or more authors in which the contribution of one author is not distinct from the contribution of the other author or authors

Joint Authorship

Consider what is required in order for an author to make a contribution? Copyright protects an expression of an idea,

but does not protect idea So merely contributing ideas should not suffice

Need to contribute to the expression of an idea Copyright also requires that the expression be

original to justify protection So author should contribute original expression

Joint Authorship How significant must the contribution be?

Is it necessary to contribute something that would be independently copyrightable?

Or does it suffice to make a contribution above a de minimis level?

Law requires that there be a significant or substantial contribution of original expression Goal of preventing spurious claims Consider quality and quantity to assess

significance

Joint Authorship Specifically in the context of musical works, what

can be contributed? defendants argued music = lyrics, melody, chords other parts of a song include musical parts, drum parts,

bass parts, acoustic parts, electric parts, background parts

Also the “hook” – portion that sticks in a listeners mind, or which identifies a song and sets it apart

can also be copyright in the arrangement of a musical work, even based on the re-arrangement of existing music, or in the selection of common, ordinary well-known musical materials

Court holds that contribution of significant original expression to any of these parts can give rise to a claim of joint authorship

Joint Authorship what about the requirement for collaboration? assistance of U.S. law

s. 101 requires “intention that contributions be merged into inseparable or interdependent parts of a unitary whole”

response to cases that had relaxed requirement for intention imported from UK law

US courts equated intention with collaboration; cases are relevant here

“collaboration” Cohen J. concludes same standard of common intention applies

to s. 2 expert witnesses

Contended “dumb” ideas still influence direction of song Court rejects that collaboration before work is fixed suffices

Joint Authorship

But is not enough that authors intend their works to be merged so that their contributions are not distinct Also require that both authors intend to regard

themselves as joint authors Does not require they understand the legal

consequences of that relationship Useful test: in the absence of contractual

agreements concerning listed authorship, would each participant intend that all would be identified as co-authors?

Joint Authorship Neudorf v. Nettwerk Productions

Test for what constitutes joint authorship:

1) a putative joint author must contribute original expression, not merely ideas

2) the contribution must be significant and substantial (but need not be equal)

3) the authors must intend that the work be merged into a unitary whole (mutual intention)

4) the authors must intend that the others are joint authors (mutual intention)

Term and Registration

Term And Registration general rule for works: end of calendar year

of death of author plus 50 years (s. 6)

joint authors: end of calendar year of death of last author to die plus 50 years (s. 9)

works unpublished at death of the author (where the author died after 1997) are now treated the same as published works

but where the author died pre-1997 and the work was posthumously published, there are transitional provisions (s. 7)

previously was 50 years from publication

Term And Registration anonymous/pseudonymous works -- end of

year of first publication plus 50, or end of year of making plus 75, whichever is shorter (s. 6.1)

photographs -- end of year of making plus 50 where owner is a corporation (s. 10(1))

otherwise, general term in s. 6 applies cinematographic works -- same as dramatic

works unless no dramatic character, in which case from end of year of publication plus 50 to a maximum 100 years (s. 11.1)

Crown copyright -- end of year of publication plus 50 (s. 12)

Term and Registration

Non-works: see s. 23 50 years from end of calendar year

when first fixation of performance (or the performance if unfixed), fixation of sound recording, or broadcast of communication signal

Term And Registration Registration is optional, but has benefits:

s. 53(1) registration is evidence of the particulars entered in it

s. 53(2), registration is evidence that copyright subsists and the registrant is the owner

Registration rebuts an innocent infringement defence (s. 39(2))

Assignments can be recorded for priority purposes (s. 57(3))

void against subsequent assignee/licensee unless registered

Infringement

Infringement

s. 27(1) Copyright Act – it is an infringement to do anything only the owner of copyright may do s. 3 for works ss. 15, 18, 21, 26 for performer’s rights,

sound recordings and broadcasts

Infringement To establish infringement, P must prove:

1) that the plaintiff is the owner of copyright in the work

2) that the defendant copied a substantial part of the work

Copying requires access, so access must be proven, though it can be inferred from substantial similarity could use fictitious entries to help prove copying

Limitation Period• See s. 41 of the Copyright Act

– 3 year limitation period for acts of copyright infringement

– But discoverability principle applies• Time does not start to run until plaintiff knew or

could reasonably have known of the infringement

• E.g. in cases of fraudulent concealment of the infringement

Infringement - Presumptions

Looked at registration: s. 53(2) Registration is evidence that copyright

subsists and that the person registered is the owner

Even if work is unregistered, see s. 34.1 Copyright shall be presumed to subsist

unless the contrary is proved Author presumed to be owner of copyright,

unless the contrary is proved

Infringement – Possible Defences

No copyright – lack of subject matter, fixation, originality, entitlement

Common sources Alternative explanation for similarity

(see e.g. Delrina) Plaintiff not author or owner Fair dealing (viewed as an exception,

rather than a defence: see CCH)

Infringement - Literary works Preston v. 20th Century Fox

did Lucas have access to Space Pets? was there a substantial reproduction?

Common sources; alternative explanation for similarities

Would average lay observer, recognize the alleged copy as having been appropriated from the copyrighted work? Both drew on common sources (folklore

involving primitive human-like creatures) Ewok character alone not protected by

copyright must have become well-known and recognized

Infringement – Literary Works

Computer programs Recall Delrina v. Triolet – can abstract

concepts from source code to look at overall structure of program

But caution in directly applying abstraction-filtration-comparison test – useful tool, but cannot replace substantial reproduction analysis

Particular considerations: functional or external limitations on expression, public domain materials, programming conventions

Infringement – Secondary Infringement

Sometimes hard to go after primary infringers Use secondary infringement to pursue bigger fish

s. 27(2) – is an infringement of copyright to engage in specific activities with a copy of a work, sound recording or fixation of a performer’s performance or of a communication signal that the person knows or should have known infringes copyright or would infringe copyright if it had been made in Canada by the person who made it

Can registration establish knowledge? (see s. 39(2))

Can a copyright notice establish knowledge?

Infringement – Secondary Infringement

Requirements for secondary infringement:

must be a primary infringement person must know or should have known that

the work is infringing must show secondary dealing (i.e. one of the

acts enumerated in s. 27(2)

Infringement - Dramatic works See Nichols v. Universal Pictures Corp.

Abstraction/Filtration/Comparison originated with analysis of dramatic work

Dramatic work can be protected even if no literal copying of dialogue occurs

Roy Export Co. Est. v. Gauthier indirect or secondary infringement under s. 27(2)

by renting out cinematographic works Even though work was in public domain in US Knowledge that works were infringing was given in

this case by letter from P’s counsel

Infringement – Musical Works

Not determined by a note-for-note comparison, but is determined by the ear as well as the eye Time and rhythm as important as correspondence

of notes Expert evidence of similarity often used

Room for variation in popular music is small Recognition that small variations may be original And similarities may be explained by use of

common techniques of composition

SurprisingSimilarityWithoutother

explanation

SurprisingSimilarityWithoutother

explanation

ACCESSACCESS

SUBSTANTIALSIMILARITY

SUBSTANTIALSIMILARITY

+

INFRINGEMENT

Infringement – Subconscious Copying

No mens rea element to infringement Subconscious copying is a possibility

But need to show proof (or at least a strong inference) of de facto familiarity with the work alleged to be copied

Infringement – Subconscious Copying Bright Tunes Music Corp. v. Harrisongs

Music Ltd. 420 F. Supp. 177 (S.D.N.Y. 1977) He’s So Fine vs. My Sweet Lord Harrison knew subconsciously that the hook had

already worked in a hit song though his conscious mind did not bring it forward when he wrote My Sweet Lord

Innocent infringement/lack of intent not a defence

INFRINGEMENT - Musical works Grignon v. Roussel

evidentiary effect of registration after infringement Cannot benefit from presumption in s. 53(2) Originality is not presumed

other presumptions s. 34.1, regardless of registration © presumed to subsist, and author presumed to be owner

Note use of “poor man’s copyright” Originality: quotes Fox - popular songs built on a

simple accepted pattern, note also limits of chromatic scale small variations may qualify as original

Access and striking similarity proven Must be a causal connection between the work and the

infringing work In this case, cassette had been left with defendant

Infringement – Artistic Works

Similar principles applied – work in 3 dimensions can infringe copyright in 2 dimensional work

Bear in mind overlap with industrial design protection

May not be an infringement of copyright to reproduce a useful article

Or to apply features that are dictated solely by a utilitarian function of that article

See ss. 64 and 64.1

Infringement - Damages s. 34 sets out available remedies

Injunction, damages, accounts, delivery up and otherwise conferred by law for infringement of a right

P can claim damages for its own loss and D’s profits: s. 35

Recovery of infringing copies: s. 38 Statutory damages: s. 38.1 Innocent infringement: injunction the only available

remedy where D not aware of ©: s. 39(1) Exception does not apply where copyright registered: s.

39(2) Also costs, pre- and post-judgment interest

Infringement – Artistic Works Kaffka v. Mountainside Developments

damages are at large, dealt with broadly as a matter of common sense, not minutely accurate

lost profits - would the copyright owner have made the defendant’s profit? What would the copyright owner have charged for a license?

loss of ability to enhance reputation ($$$) nominal damages – not necessarily small punitive/exemplary statutory damages s. 38.1 - $500 to $20,000 per work injunction, delivery up s. 39 – injunction only remedy where D not aware of © interest, costs

Infringement - Artistic Works Théberge

a copy is not “infringing” because it violates moral rights s. 38 gives right to recover possession to “owner” rather than

“author” also moral rights only added in 1985, while s. 38 always present

modification without reproduction is dealt with as a moral rights problem

dicta suggest this change in physical structure containing the work probably not an infringement of moral rights

but artist’s name had been removed – potential infringement

no reproduction without multiplication c.f. dissent – change to medium can infringe s. 3(1) right

of reproduction

Infringementby Importation

Infringement by Importation Even if a person does not make copies of the work, can still be liable for secondary infringement: see s. 27(2)

Fly by Nite – 'deleted' albums legitimately purchased in the U.S. for resale in Canada

Infringed by importing copies that would have been infringing, had they been made in Canada

Note Kraft Canada v. Euro Excellence – exclusive licensee cannot sue copyright owner for infringement

Authorizing Infringement

Infringement - Authorization s. 3 gives right to “authorize” the listed acts

UK approach: “authorize” means “sanction, approve, countenance”

to grant to a third person, or purport to grant, the right to do the act complained of

merely supplying the means which make infringement possible not enough if no control over the means

e.g. sale of dual cassette recorders including hi-speed dubbing feature in CBS Songs v. Amstrad

c.f. Australian illustrated by Moorehouse - must take steps to prevent infringement

Provision of photocopiers authorizes infringement

Infringement - Authorization Canada follows UK approach See excerpts from CCH and Tariff 22

not infringe to authorize an act that is not an infringement Presumption that a person who authorizes does so only as far

as is in accordance with the law “authorize” means “sanction, approve and countenance”

i.e. give approval to, sanction, permit; favour, encourage Can infer authorization from acts amounting to a

sufficient degree of indifference e.g. if ISP has notice it is hosting infringing content

Australian position shifts balance too far in favour of copyright owners

Next Class Finish Infringement

Fair dealing

Exam review