UBC Law 422.002

INTELLECTUAL PROPERTY

CopyrightLecture 5

Jennifer A. Marlesjmarles@patentable.com

604-676-8967

www.patentable.com/lectures

Last Class

Neighbouring Rights Ownership and Assignment Term and Registration Infringement

Types of works Secondary infringement

Recap: Neighbouring Rights

Performer’s Performance – ss. 16 and 26 Broadcasters of Communication Signals – s. 21

Both receive some rights without need for fixation

Makers of Sound Recordings – s. 18

Right to equitable remuneration for public performance or telecommunication to public: s. 19

Shared equally between performer and maker of sound recording

NOT a right to prevent public performance (c.f. s. 3)

Recap: Ownership/Assignment

Ownership of © Generally author is first owner, but in some

circumstances will not be (ss. 13(1)-(3)) Note s. 14 reversionary right – 25 years after death

of author, © reverts back to their estate Photographs – owner of negative: s. 10

Assignment Must be in writing, signed by owner of ©: s. 13(4) Moral rights can be waived but not assigned: s.

14.1(2)

Recap: Ownership Works made by employee in course of

employment, employer will own © (s. 13(3)) Control test: servant is person who is subject to

the commands of his master as to the manner in which he shall do his work University of London Press

skilled persons may be employees even if employer cannot tell them how to do their work

Integration test: consider if activities are an integral part of the business, or only an accessory to it

Entrepreneur test: is employee in business for his own account – look at ownership of tools, who pays helpers, chance at profit, risk of loss

Recap: Joint Authorship Neudorf v. Nettwerk Productions

Person who merely contributes ideas is not a joint author

Joint authorship requires common intention

Test for joint authorship:1) must contribute original expression, not merely ideas2) contribution must be significant and substantial (but need

not be equal)3) authors must intend that the work be merged into a unitary

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

(mutual intention)

Recap: Term

Term – generally life of the author + 50 years (s. 6)

But other terms apply for joint authors (s. 9), anonymous/pseudonymous works (s. 6.1)

Photographs: depends on whether first owner of © is corporation or natural person (s. 10)

Cinematographic works: s. 11.1 depends on “dramatic character”

Recap: Registration

Registration is optional, but benefit from evidentiary presumptions in s. 53:

That © subsists That registrant is the owner Also rebuts innocent infringement defence

(see s. 39(2)) But need to register before infringing work is

available to benefit: see Grignon v. Roussel Can record assignments for priority purposes (s.

57(3))

Can also benefit from s. 34.1, even in the absence of a registration: if D puts in issue, unless otherwise proven © presumed to subsist Author presumed to be owner

Recap: Infringement Infringement

Must establish π is owner of © in the work And Δ copied a substantial part of the work

Access must be proven Independent creation is complete defence

If you have surprising similarity without other explanation, can raise an inference of copying

shifts onus to Δ

3 year limitation period: s. 41

Recap: InfringementLiterary works

Preston v. 20th Century Fox – Space Pets script not substantially reproduced by Return of the Jedi

Drew on common sources Ewok character not copyrightable:

Must be sufficiently well defined Must also be well-known

Dramatic Works Nichols v. Universal Pictures – recognize there could be

infringement by taking plot, even without taking of any dialogue Roy Export Co. v. Gauthier – infringement by importation (s. 27(2))

Δ was not the one engaging in public performances of the cinematographic works, but had imported work to rent out

Did not matter that work was in the public domain in the US Knowledge of infringement given by letter from π’s counsel

Recap: Infringement Secondary Infringement: s. 27(2)

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))

See e.g. Roy Export Co. v. Gauthier Notice of infringement given by letter from

counsel

Recap: Infringement Musical Works

Recognize possibility of subconscious copying But π must still prove (or provide evidence to draw a

strong inference) of familiarity with the work alleged to have been copied

Grignon v. Roussel – fairly clear proof of access

Copying found Recognize that originality in the realm of popular

music lies within a narrow scope – slight variations can be original

Recap: Infringement

Infringement – artistic works Kaffka v. Mountainside Developments –

old definition of “architectural work of art” applied

Fact that P was the only one able to obtain planning approval was significant in showing requisite artistic character

Théberge – notion that “reproduction” requires multiplication

changing the medium on which work is displayed did not infringe economic rights

Recap: Damages s. 34 sets out available remedies

damages for P’s own loss and D’s profits: s. 35 Recovery of infringing copies: s. 38

Only a copy that infringes economic rights is “infringing”: Thberge

Statutory damages: s. 38.1 Innocent infringement: injunction only 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

See Kaffka v. Mountainside Developments Damages are at large – assess as a matter of

common sense loss of ability to enhance reputation (not loss of

reputation) Also punitive/exemplary damages

Today

Infringement By Importation Exceptions to Infringement (Fair Dealing) Collective Administration of Rights

Exam Review

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

Infringement and the Internet

Infringement – Communications Via Internet

SOCAN v. Cdn. Assn. of Internet Providers (“Tariff 22”) SOCAN sought to impose liability for royalties on

ISPs in Canada, irrespective of where the transmission originates

Various activities at issue: Communication of work Host server role of ISPs Caching Hyperlinks (and automatic hyperlinks)

Infringement – Communication Via The Internet

The statutory framework: s. 2 “telecommunication” s. 3(1)(f) – telecommunication to the public

Internet communication is made “to the public” because files made available openly and without concealment, to be conveyed to all who might access

s. 2.4(1)(b) – person does not communicate the work or other subject matter to the public if only act consist of providing the means of telecommunication necessary for another person to so communicate the work

s. 2.3 – communication to public by telecommunication is not a performance in public

“communicate” means to impart or transmit Generally only the person who posts a work communicates it

telecommunication occurs when music is transmitted from host server to end user

Infringement – Communication Via The Internet

How to determine when a telecommunication occurs in Canada? Test is the “real and substantial connection test” For communications on the Internet, consider:

situs of content provider situs of host server situs of intermediaries situs of end user

Recognize that this results in overlapping jurisdiction Art. 8 of WCT and making available right would avoid this

overlap; not yet implemented in Canadian law

Infringement – Internet Communications

Consider liability of ISPs for copyright infringement: s. 2.4(1)(b) protects those who serve as intermediaries “necessary” means reasonably useful and proper to

achieve the benefits of enhanced economy and efficiency

ISP protected so long as it does not engage in acts that relate to content

e.g. acting as host server, use of caching, etc., are content neutral

but embedding hyperlinks that automatically lead to a work may infringe

knowledge of infringing nature of content is a factor to consider

Consider also the impracticality (technical and economic) of monitoring the large amount of material disseminated via the Internet

Infringement – Internet Communications

Potential liability for other functions of ISP Acting as host server

Not liable where no knowledge of content But potentially liable for authorizing infringement to the

extent ISP has notice of allegedly infringing content Caching

Content neutral Dictated by need to deliver faster and more economic

service Therefore is “necessary” and falls within s. 2.4(1)(b)

Providing hyperlinks Board found creation of an automatic hyperlink by a

Canadian ISP attracts copyright liability Is not a communication, but authorizes communication

by telecommunication

Exceptions to Infringement

s. 29 – for research or private study s. 29.1 – for the purpose of criticism or review

Provided source and name of author (if given in source) are mentioned

s. 29.2 – for the purpose of news reporting

Provided source and name of author (if given in source) are mentioned

Are further exceptions for educational institutions (s. 29.4 to 30); libraries, archives and museums (s. 30.1 – 30.5); and further exceptions (s. 30.6 – 32.3)

Exceptions to Infringement – Fair Dealing s. 29, 29.1, 29.2

Exceptions to Infringement – Fair Dealing

Only consider exception where there would otherwise be infringement (i.e. substantial reproduction)

Onus on defendant to show it can rely on exception

Must be both fair and for one of the listed purposes: see CCH

For s. 29.1 or 29.2, must also comply with requirements of section

CCH – making single copies for purposes of legal research was fair dealing, even though it was for a commercial purpose

Exceptions to Infringement – Fair Dealing

Research or private study – CCH Large and liberal interpretation Not limited to non-commercial contexts Legal research is still research

Sampling of music downloads has been held to be research: 2010 FCA 123

SCC heard appeal Dec. 2011

Exceptions to Infringement – Fair Dealing

Factors to consider in assessing fairness: CCH ¶53 Purpose of the dealing

Must be allowable purpose; commercial use can still be fair Character of the dealing

e.g. making single copy and destroying after use Amount of the dealing: taking whole work generally not fair

But no per se rule Alternatives to the dealing

But do not consider availability of a license as a factor Nature of the work – published or unpublished

Publication leads to wider dissemination, but not fair if work is confidential

Effect of the dealing on the copyright work e.g. does the copy compete with the market for the original work

Making a copy for someone else’s fair use is OK

Exceptions to Infringement – Fair Dealing

University of London Press Copying of entirety of mathematics exams

was not fair dealing Although useful for education, copying

was not done for educational purposes Although papers were criticized, additional

information provided was minimal

Exceptions to Infringement – Issue of Parody

Is parody a criticism? Compare US (Pretty Woman parody – Campbell

v. Acuff-Rose) and Canada Michelin v. CAW case

US law encourages transformative use, new creation

Distinguish transformative work, which supersedes an original, from a derivative work, which includes major components of the original and which infringes

Canadian law more protective of copyright owner Do not permit appropriation of private property (i.e.

copyright works) for purposes of expression

Exceptions to Infringement – Issue of Parody

Michelin v. CAW Michelin failed on trademark issues: no “use” But succeeded on the copyright issues

• court rejects that parody is criticism “criticism” connotes analysis and judgment of another work

that sheds light on the original The union’s Bibendum was not a new creation; was not

sufficient to “bestow mental labour” on the work to avoid infringement

CAW did not mention the source and author’s name “mention” requires more than passive/implicit

acknowledgement did not treat work in a fair manner (i.e. good faith)

“good faith” = free from discrimination, dishonest, impartial

Exceptions to Infringement – Issue of Parody

Consider how this case balances freedom of expression with copyright protection

– Note that position on parody has not changed: see e.g. Canwest v. Horizon, 2008 BCSC 1609, where court held that parody and freedom of expression could not be a defence to a claim for copyright infringement

Collective Administration

Collective Administration

Very difficult to identify and contact individual copyright owners to seek permission to use a work

Often rights assigned to collective societies

Single point of contact for a person wishing to use any works within the society’s repertoire

Many different such societies

Summary of Lecture 5

Recap: Authorization

Authorizing infringement – “authorize” means sanction, approve, countenance CCH, Tariff 22

Could infer authorization from sufficient acts of indifference

e.g. consider if ISP has knowledge that an infringing work is posted on its host server

Recap: Internet Communications on the Internet: Tariff 22

Person who posts communicates the work Work is telecommunicated when music is transmitted

from host server to end user Communication occurs in Canada if it has a real and

substantial connection to Canada Look at situs of content provider, host server, intermediaries,

end user

s. 2.4(1)(b) protects activities of intermediaries such as ISPs, provided they are content neutral

Caching is “necessary” for efficiency, therefore falls within s. 2.4(1)(b)

Recap: Fair Dealing Fair dealing: ss. 29, 29.1, 29.2

Note requirement to mention source and author in ss. 29.1 and 29.2

Dealing must be both fair and for the listed purposes: CCH Purpose of dealing Character of dealing Amount of dealing Alternatives to dealing Nature of work – published or unpublished Effect of the dealing on the copyright work

Mere fact taking is for educational purposes does not make it fair: University of London Press

Parody is not fair dealing in Canada: Michelin v. CAW c.f. Bill C-11

EXAM REVIEW