Sookman law society_copyright_2012_conference

McCarthy Tétrault Advance™
Building Capabilities for Growth

Law Society: 16th Annual
Intellectual Property Law, The
Year in Review - Copyright
Barry B. Sookman
bsookman@mccarthy.ca
416-601-7949 January 12, 2012

McCarthy Tétrault LLP / mccarthy.ca 11064494 1

Canada


In Supreme Court – what’s at stake

¬ Tariff 22 –SOCAN appeal - is an internet preview a fair dealing for
research purposes?
¬ K-12 –fair dealing in the K-12 educational sector.
¬ what is research
¬ whose purposes should the court consider in determining the
allowable purpose and fairness
¬ is the effect on the market the most important fairness factor
¬ is fair dealing to be construed to be consistent with the three
step test


¬ Tariff 22 – Telco and ESA/ESAC appeals
¬ is a download a “communication”
¬ are demand services “to the public”
¬ are rights separate and distinct
¬ will the Court harmonize Canadian and US law – ASCAP v
RealNetworks and Cablevision
¬ Re: Sound v Motion Picture Theatre Association of Canada 2011
FCA 70 – Are recording artists and record companies entitled to
collect equitable remuneration under s. 19 of Copyright Act when
their music is played in movies and on TV? How to construe the
exclusion for soundtracks in the definition of sound recording?



¬ Reference re Broadcasting Act 2011 FCA 64
¬ Is the CRTC empowered under the Broadcasting Act to establish a regime
(the value for signal regime) to enable private local television stations to
charge royalties for the distribution of their programming?
¬ Per Sharow JA (Nadon JA dissenting) “by making the BDUs’ statutory
retransmission rights in subsection 31(2) of the Copyright Act subject to
paragraph 31(2)(b), Parliament has ranked the objectives of Canada’s
broadcasting policy ahead of those statutory retransmission rights. I see
nothing in the Copyright Act that would justify a reversal of that ranking if
the Commission determines that the objectives of Canada’s broadcasting
policy require the imposition of a regulation or licensing condition that
would permit a private local television station to demand cash or other
consideration from a BDU for the right to retransmit its signals.”


Sirius Canada Inc. v. CSI, 2010 FCA 348 –
leave to appeal denied October 20, 2011
¬ When an entity provides a service for use with its own designed
and manufactured devices e.g., a satellite radio service and radio
receiving set, and the use of the device with the service will
necessarily result in automatic copying of the content by the user,
the provider of the service (in this case XM and Sirius), can be
liable for the copying which occurs on the device under a theory of
authorization.
¬ The Copyright Act does not extend to acts of reproduction that take
place wholly within another country (here the US), even if the act of
copying is authorized from Canada or if the act of copying is
initiated from Canada. The real and substantial connection test is
not applicable to acts that take place wholly within another country.
¬ Copying of small amounts of information of a work in a rolling
(temporary) buffer is not a reproduction of a substantial part of a
work.


Crookes v. Newton 2011 SCC 47
¬ “A hyperlink, by itself, should never be seen as “publication” of the
content to which it refers.”
¬ “it is the actual creator or poster of the defamatory words in the
secondary material who is publishing the libel when a person follows a
hyperlink to that content“.
¬ “Recently, jurisprudence has emerged suggesting that some acts are so
passive that they should not be held to be publication. In Bunt v. Tilley,
[2006] EWHC 407, [2006] 3 All E.R. 336 (Q.B.), considering the potential
liability of an Internet service provider, the court held that in order to hold
someone liable as a publisher, “[i]t is not enough that a person merely
plays a passive instrumental role in the process”; there must be
“knowing involvement in the process of publication of the relevant
words”... see also Metropolitan International Schools Ltd. v.
Designtechnica Corp., [2009] EWHC 1765 (Q.B.)).”


France Animation v Robinson, 2011
QCCA 1361
¬ Whether sketches and characters of the proposed TV series Robinson curiosity
was infringed by Robinson sucro?
¬ “The appellants do not demonstrate a palpable and overriding error in the analysis
and the conclusion of the judge. Among the unique aspects of the work Robinson
Curiosity include such a Robinson who, unlike the hero of the work of Robinson
Crusoe Daniel Defoe, is not alone on his island. He shares his life with many
people one of which, Friday holiday, is the antithesis of the classic Friday. There is
also a very precise and detailed description of the character traits of the ten
characters that populate the island, and especially their relationships with each
other in the context of scenarios for understanding… This dynamic, which is an
essential part of the work.”
¬ “In this case, the author Claude Robinson typed enough characters, their character,
their relationships and their environment so that it is entitled to the protection of the
LDA.”


QCCA 1361
¬ “Counterfeiting is not limited to the copy of the work…as it can be a colourable
imitation as long as it resembles, if not all, at least a substantial part of or significant
the work.”
¬ “It is clear, moreover, that counterfeiting is assessed first by the similarities…”
¬ “the LDA states that still disguised imitation is counterfeit. In other words, the
differences are sometimes used to conceal infringement, which can not make it
disappear.
¬ “the differences may have no impact if the borrowing remains substantial.
Conversely, it is also possible that the result is a new and original work, which was
simply inspired by the first. Everything is matter of nuance, of degree and context,
so that in this respect as in many others, these are questions of fact that are first
and foremost for the trial judge…
¬ if there is substantial reproduction, counterfeiting remains, despite a significant
intellectual effort by the infringer… Thus, even if the infringer through his talent,
has produced an "improved“ version of the original work, which some might argue
here that does not change the reality: the infringement notice and the author is
entitled the protection of the LDA.”

QCCA 1361
¬ “It is true that, generally, the expert testimony is not necessary for the court to
determine whether there is substantial reproduction of a work. The comparison of
two works by an ordinary, observer, would normally allow him to rule without the
help of an expert”.
¬ “in many cases, the judge is in a better position to determine if there substantial
reproduction of the work. In short, the test of necessity must be considered in the
circumstances of the case while ensuring that this testimony does not divert the
attention of the court of the analysis on which it is done. That's what Rothstein
pointed out in Masterpiece, particularly in paragraphs 77, 79 and 93.”
¬ Expert evidence was found useful in the case because:
¬ The work was in draft form and the comparison would have been very time
consuming and difficult without it.
¬ The copying consisted of non-literal copying of the “structure, composition,
and arrangement” of the elements and other matters that were not easily
perceived directly but could be deduced from the perceptible form.


QCCA 1361
“It is common in fact that the author is entitled to delivery of the
portion of the profits of the infringer that a causal relationship to his
work….Monsanto Canada inc. c. Schmeiser is relevant to this
question: Although this case involved a patent issue, the principles
that were laid deserve to be observed in the case of offenses
relating to copyright, given the similarity of the relevant legislation in
both laws. In sum, there is no causal link here between the profits
made by the appellants and the respondent’s …work.”


QCCA 1361
¬ “…the intentional infringement of copyright was an infringement of the owner’s right to the
enjoyment of one’s property and constituted a violation of Articles 6 and 49 of the [Quebec]
Charter of human rights and freedoms”.
¬ “The Copyright Act does not in as many words provide for punitive damages, though section
38.1(7) refers to them by stating the right to claim them, if applicable. These damages are
acknowledged and routinely awarded based on the ordinary law of the province in which the
lawsuit was instituted. In Quebec, a few judgments by our Court have acknowledged the
possibility of awarding punitive damages in cases of intentional copyright infringement. Though
the Court did not specify the basis for such awards, it may be possible, through article
1621 C.C.Q. and sections 6 and 49 of the Charter of human rights and freedoms, to argue
intentional copyright infringement as a breach of the owners’ rights to the peaceful enjoyment of
their property. quoting: Construction Denis Desjardins inc. c. Jeanson, [2010] RJQ 1600, 2010
QCCA 1287
¬ Article 6 Every person has a right to the peaceful enjoyment and free disposition of his property,
except to the extent provided by law.
¬ Article 49 Any unlawful interference with any right or freedom recognized by this Charter entitles
the victim to obtain the cessation of such interference and compensation for the moral or material
prejudice resulting therefrom.
¬ In case of unlawful and intentional interference, the tribunal may, in addition, condemn the
person guilty of it to punitive damages.

Aga Khan v. Tajdin, 2011 FC 14

¬ “A Farman is an address given before an audience. It is recorded and
preserved in audio and often in video form. A Talika is a brief written religious
message… These Farmans and Talikas…are literary works within the meaning
of the Copyright Act.”
¬ “The defendants take the position that the burden of proof is on the Aga Khan
to establish that he did not give consent. In my opinion, they are very much
mistaken. It is not up to the author to prove a negative, i.e. that he did not give
consent. Consent is a matter of defence and so the burden must lie upon the
defendants.”
¬ “The defendants in the Aga Khan case were unrepresented and so could
hardly have been expected to cite all the authorities that supported their
position…their case should not be cited as a precedent for a reverse onus of
proof of consent in copyright or any other IP infringement case.” per Prof.
Vaver Jan. 31, 2011 IP Osgoode.


9077-6204 Québec inc. c. Blanchard
2011 QCCQ 205
¬ Is a fence an original work?
¬ “The leading case in this regard CCH Canada Ltd. v. Law Society of Upper Canada…[it]
emphasizes that to be "original" a work need not be innovative or unique and that the
essential element is the exercise of skill and judgment of the creator... a work need not
have special artistic qualities.”
¬ “The expert Sheppard, meanwhile, refers to the state of the art in the field of construction
and their applications in the construction of a fence. His report presents several
examples of fencing. He stated that the rules of the art in the public domain and are
used by any person constructing a fence...
¬ the Tribunal is of the opinion that the plaintiffs failed to demonstrate the originality of the
fence in relation to other types of closed type "fence“...
¬ All these elements come from the public domain and carpenters' knowledge of the rules
of art. This is the purely mechanical part of the construction of a fence...
¬ the Tribunal is of the opinion that the design and construction of the fence” is not an
original work.”


9077-6204 Québec inc. c. Blanchard
2011 QCCQ 205

¬ Is a fence a work protected by copyright?
¬ "Architectural work“ means any building or structure or any model of
a building or structure”
¬ “the Tribunal is of opinion that...the design and construction of the
fence surrounding the property... are not a work or an architectural
work or an artistic work year under the Act...a fence can hardly fall
into one or other of the above definitions”.
¬ “In the circumstances, to recognize a copyright in a fence might lead
and generate numerous similar cases in the present dispute between
neighbours, between manufacturers and installers of fences that look
like the models, thereby causing large expenditures to key
stakeholders”.


Training and Management Pro-Health
Inc. c. Sampietro 2011 QCCS 4256

¬ Action for infringement in modules of a training program in business
administration and secretarial dentistry.
¬ “The applicant did not invent the language and vocabulary she used.
Of course. She created something from the known. This creation is
undeniable. Just be aware of the work of the applicant to see that it
has used its knowledge, experience, expertise, teaching skills, his trial
and his ability to develop a single document in its mode of expression.
She presented an intelligible and logical information needed to prepare
a diploma in dental secretariat It is therefore an original literary work in
which copyright subsisted recorded.”


Perfect 10, Inc. v. Google, Inc., 2011 FC 348
¬ Google’s appeal to strike out or stay Canadian action because of parallel
action in the US dismissed.
¬ Abuse of process: “The Learned Prothonotary examined the pleadings,
noted the difference in legislative regimes between the U.S. and Canada,
the different rights which potentially flow therefrom, the differences in
parties and the potential scope and limitation of jurisdiction and
enforcement…. I see no error in principle or misapprehension of fact at
this early stage.”
¬ Same claim in another jurisdiction: “For much the same reasons as
reached in respect of abuse of process, the conclusion that the U.S. and
Canadian actions are not the same is reasonable…In the exercise of
discretion, it is reasonable to conclude that this Court (which has
jurisdiction over the claim) ought not to defer to a foreign court in respect
to matters arising in Canada. Google US, by operating in Canada, directly
and/or through a subsidiary subjected itself to Canadian law.”


Perfect 10, Inc. v. Google, Inc., 2011 FC 348
¬ Forum non-conveniens: “I cannot see that the U.S. court is more
convenient and appropriate for dealing with rights under Canadian law –
even assuming a U.S. court could or would make such a determination.
The situation is analogous to other instances of actions based on
intellectual property rights proceeding in two or more national courts at the
same time. It is not forum shopping to assert Canadian rights in Canadian
courts and U.S. rights in U.S. courts.”
¬ “the doctrine is not strictly applicable because neither the U.S. nor
Canadian courts can necessarily assume or exercise jurisdiction over the
actions in the other country.” See, Lucasfilm below.
¬ “The place of contract is not as relevant as the place of infringement. As
the infringement on the internet potentially occurs in a number of places,
including on the server, on the customers’ screen and in the marketing in
Canada, the matter is balanced.”


Harmony Consulting Ltd. v. G.A. Foss
Transport Ltd., 2011 FC 340
¬ Computer programs that are dictated by the operating system or reflect common
programming practices are not original expression and will not receive copyright
protection.
¬ Compilation of computer program elements can be protected by copyright.
¬ Minor fixes to a program which are not original are not protected by copyright.
¬ Program features developed using MS Access “wizard” not original or protectable.
¬ A nunc pro tunc copyright assignment does not satisfy the writing requirements for
assignments where there was no original intention to transfer the copyright.
¬ Section 13(3) of (which vests copyright in works to employers) applies to officers,
directors and employees.
¬ Use of software, without more, outside the scope of a license e.g., more seats than
licensed, is not copyright infringement.
¬ Making modifications to software which include opening a file, making changes and
resaving the file is not a reproduction.
¬ Making a back-up copy does not involve making a reproduction.
¬ How many errors can one court judgment contain?


Century 21 Canada Limited Partnership
v. Rogers Communications Inc., 2011
BCSC 1196
¬ Century 21 sought an injunction and damages against the defendants
for their conduct in accessing Century 21 Canada’s website and copying
photographs and data from that website without consent for display on a
competitive website.
¬ Full property descriptions copied were a substantial portion of each real
estate listing page on the Century 21 website, but copying of truncated
property descriptions was not.
¬ The dealing was not fair
¬ According the case, Canadian law does not recognize
transformative use as a fairness factor.
¬ The extent of the copying and its purpose, which was competitive to
Century 21, were significant reasons why the dealing was not fair.


Layette Miniôme inc. c. Jarrar 2011
QCCS 1743
¬ Is the defendant liable for the reproductions of counterfeit clothing made in China and imported
into Canada?
¬ “The Quebec Civil Code sections 3134 et seq, addresses the international jurisdiction of
Quebec authorities... It has been recognized by the Supreme Court of Canada that Quebec
courts had jurisdiction to hear the case in question because the plaintiff company had suffered
the damage alleged in the territory of the Province of Quebec... The judges also mention the
principle of real and substantial connection akin to the principle of real and substantial
connection.”
¬ “In this case, the making of artistic works and samples was made in Canada by a Canadian
company headquartered in Montreal (Quebec). The transmission of samples made from
Montreal to the applicants, residents of Canada, all in compliance with a binding contract,
contract established in Quebec... This Court therefore has jurisdiction to render a decision in
this case.
¬ We also know that the damage to the plaintiff / respondent, were in Quebec since the latter it is
headquartered. Thus, the real and substantial connection with Canada is undeniable.”
¬ Did the court confuse personal jurisdiction under the QCC with the territorial jurisdiction of the
Copyright Act?


Layette Miniôme inc. c. Jarrar 2011
QCCS 1743
¬ “In this case, the plaintiff's claim is that the clothes copied with the contribution of the
defendants maliciously included special features such as graphics, a particular design or
material which the pattern is woven or knitted. The plaintiff alleges that it intends to
demonstrate that it advances in the investigation and hearing.
¬ The applicant adds that therefore, the defendants are wrong to claim that the plaintiff
unilaterally can no longer rely on their copyright because it allowed the production of
clothing copied to more than fifty (50) copies. Indeed, the defendants did not take into
account the statutory exception provided for in Article 64 (3) of the Act...in which the
plaintiff based his action and intends to prove the application during the investigation and
hearing.”
¬ “Section 64 (3) seeks, among other things, to protect the drawing from a utilitarian
object. For example, if an artist allows a manufacturer of t-shirts to reproduce one of his
drawings, t-shirts sold thousands of copies will not be protected by copyright, but the
drawing of the artist and it will not be able to reproduce it on another t-shirt, a dress, a
coat or a coffee mug.” quoting Limited Stores Greenberg et al. C. Import-Export René
Derhy (Canada) inc. 2004 CanLII 15460 (QCCA)


Louis Vuitton Malletier S.A. v. Singga
Enterprises (Canada) Inc., 2011 FC 776
¬ Court finding copyright in Multicolored Monograms used with handbags. Were
they used as part of the handbag designs e.g. a pattern in a finished article
under s64? Were they covered by an exception in s64(3) e.g. (a) a graphic
representation that is applied to an article; (b) a trade-mark, or (c) material that
has a woven or knitted pattern; suitable for piece work or surface coverings?
¬ Court also finding infringement by reproduction and secondary infringement
under s27(2) when distributed in association with counterfeit goods.


¬ “The British Columbia Supreme Court has previously held in counterfeiting
cases that a corporation will not be allowed to be used to shield officers,
directors and principal employees from their actions in the wilful and knowing
sale of counterfeit and infringing goods…I adopt and apply that authority in this
Court.”
¬ “Damages should be awarded on the high end of the scale where the conduct
of the defendants, both before and during the proceedings, is dismissive of law
and order and demonstrates a necessity for deterring future infringements…
The need for deterrence in awarding statutory damages is important. There is
a need for deterrence where, as in the present case, a defendant ignores the
Court process while continuing the counterfeit activities complained of.”
¬ “the Court finds that statutory damages in the amount of $20,000, per each of
the Louis Vuitton Copyrighted Works infringement, is appropriate”


¬ “This case involves counterfeiting on the part of Singga. Singga’s course
of conduct demonstrates a disregard for the court process: delay in proper
documentary discovery, failure to appear or provide evidence on Mr. Lim’s
motion to have himself removed as counsel, and failure to ensure that a new
solicitor was appointed as required by the Order of the Court dated February 9,
2011, notwithstanding the clear indication therein that the Plaintiffs would be
entitled to seek to have its Statement of Defence struck.
¬ Therefore, pursuant to the inherent jurisdiction of the Court and Rule 221(f),
the Singga’s Statement of Defence is to be struck and Singga is to be noted in
default of this proceeding.”


1429539 Ontario Limited v. Café Mirage
Inc., 2011 FC 1290
¬ ”where an author, as in the case here, applies his acquired knowledge,
developed aptitude or practised ability to the development of a restaurant
menu, while engaging his capacity for discernment or his ability to form an
opinion or evaluation by comparing different possible outcomes, the resulting
creation is clearly the product of an exercise of skill and judgment as
envisioned by the Supreme Court of Canada in CCH. An author’s
demonstrated ability to select the food items to be included in the menu, to
generate descriptions of those items and to arrange the layout and overall
design of the menu are examples of the skill and judgment required to support
a finding that a restaurant menu is an original work deserving copyright
protection…
¬ It is clear that thought was given to the menu food items to be included, the
phraseology used in descriptions and the linking with images to associate the
menu with the Symposium concept. I am satisfied that Mr. Argiropoulos has
described a process that meets the standard of an exercise of skill and
judgment in the menu selection, arrangement and design to establish
copyright.”


Inc., 2011 FC 1290
“In addition, section 34.1 of the Copyright Act provides that in any
proceeding for infringement of copyright, in which the defendant puts in
issue the existence of the copyright or the Plaintiff’s title to the copyright,
then copyright shall be presumed, unless the contrary is proved, to subsist
in the work in any proceedings for infringement of copyright. The
Defendants have put the Symposium Café Group’s copyright at issue as
well as control over that copyright. I consider the Defendants’ denials as
engaging s. 34 of the Copyright Act. Accordingly, copyright is presumed
and the Defendants must prove the contrary. They have not. I need not
go further into the question of whether menu food descriptions can be
copyrighted and preserved for the lifetime of an author plus fifty years.”


Inc., 2011 FC 1290
“The Defendants’ claim that the Plaintiffs waived all rights by agreeing to
transfer all assets does not succeed. Copyright does not transfer with the
physical assets such as menus. There is no evidence that the
Symposium Café Group ever transferred more than a license to use its
trade-marks or copyrights. At best, the license to use the menus
continued until they opted not to join the Symposium Café franchise.
Since copyright is presumed and the Defendants have failed to prove the
Plaintiff was no longer entitled to exclusive copyright, the presumption of
copyright and the Plaintiff’s entitlement to copyright continues.”


Inc., 2011 FC 1290

¬ “I consider the copyright infringement to have been committed at
two locations, at the Sheppard Café Mirage and the Kennedy Café
Mirage…
¬ I award damages in the amount of $2,500 at the Sheppard Café
Mirage and $5,000 at the Kennedy Café Mirage for a total of
$7,500 for copyright infringement.”


Suttie v. Canada (Attorney General),
2011 FC 119
¬ “As the Court has the jurisdiction to order the register to be corrected by adding
information that was wrongly omitted (s 57(4)(a)), I see no reason not to grant
Ms. Suttie’s request to add her son’s name to the register.”
¬ ”In some cases, an author’s home address could serve as a means of
identifying him or her. Therefore, to require an author to provide a home
address could interfere with his or her right to remain anonymous. In my view,
the requirement in the Act to provide an address does not oblige an author to
identify where he or she lives – it simply requires the person to provide an
address for purposes of correspondence. This interpretation is borne out by
the Copyright Regulations, which require an author to provide a complete
mailing address, including street name and number, and the postal code
(SOR/97-457, s 4(1)).
¬ Given Ms. Suttie’s privacy concerns, I am satisfied that the register contains
an “error or defect” (s 57(4)(c)) and will issue an order amending the register to
substitute Ms. Suttie’s counsel’s address for her home address.”


SOCAN v v. IIC Enterprises Ltd.
(Cheetah’s Nightclub), 2011 FC 1088
¬ “Under s. 38.1(4) of the Copyright Act, a collective society referred to in section
67 can elect, in lieu of any other remedy of a monetary nature provided by
the Act, to recover an amount of statutory damages in a sum of not less than
three and not more than ten times the amount of the applicable royalties owing.
SOCAN made such an election and seeks an order to recover an award of
statutory damages in a sum of seven times the amount of applicable royalties.”
¬ “Taking into account the factors listed above, and the absence of any
mitigating circumstances, I conclude that an award of statutory damages of six
times the outstanding licence fees is appropriate in this case. The substantial
award should serve as sufficient deterrent to the Defendant, as well as to
others, who seek to profit from the Plaintiff’s musical works with impunity. It
will be a reminder to all licensees of the potentially serious consequences of
non-compliance with the annual reporting requirements and non-payment of
the applicable licence fees under Tariff 3C. Damages available to copyright
holders under the Copyright Actserve an important function and should not be
treated as just another cost of doing business.”


Robertson v. ProQuest Information and
Learning LLC, 2011 ONSC 2629
¬ “Success at a common issues trial was by no means guaranteed... The scope
of that licence was arguably unclear and the defendants claimed it included an
express or implied term permitting the right to publish the works in electronic
media. The plaintiff has always taken the position that class members merely
licenced a one-time right to publish their works in print.”
¬ ”Assuming aggregate damages were awarded, there would still be
considerable uncertainty about the quantum of damages. While the plaintiff
could rely on s. 38.1 of the Copyright Act to pursue statutory damages for
copyright breach, there has been no case that has awarded damages on the
scale sought in circumstances similar to this action.
¬ It is anticipated that the defendants, and in particular the print publishers,
would have argued that the royalties they received pale in comparison to the
statutory damages sought, or that the statutory amounts would be grossly
disproportionate to actual losses and that the court should exercise its
discretion to award damages below the statutory minimums.”


Robertson v. ProQuest Information and
Learning LLC, 2011 ONSC 2629
¬ “In Thomson, the gross settlement was $11 million. After deducting class
counsel fees ($4 million and $200,000 in G.S.T.), disbursements ($85,074.19),
the cost of notice (approximately $455,000), charitable payments... ($75,000),
payments to the Class Proceedings Fund ($602,050.59) and the costs of
administration ($160,662.78), the net sum of $5.4 million was available for
distribution to class members.”
¬ ”Many of the deductions will be less in this action, leaving a larger percentage
of the global fund for distribution to the class. In particular, class counsel is
seeking fees in the range of $1.9 million (exclusive of taxes and
disbursements)...
¬ As a result, a higher proportional percentage of the settlement funds will be
available for distribution to class members than in the Thomson settlement.
Specifically, some $5 million, or about 63% of $7,871,894.40, versus $5.4
million, or 49% of $11 million as in Thomson.”


R. c. Fiset 2011 QCCQ 1344
¬ Prosecution for selling counterfeit copies of paintings created after 1994 and offered for
sale in 2008 under s42(1)(a) which makes it an offense for “Every person who
knowingly... makes for sale or rental an infringing copy of a work or subject-matter in
which copyright subsists”.
¬ “The literal translation of ‘makes for sale’ is ‘to manufacture to sell’... the Act prohibits the
reproduction of artistic works for sale.”
¬ “To succeed in proving this type of crime, the prosecution must prove beyond a
reasonable doubt the commission of the prohibited act and culpable mental state of its
author. It must prove actual intent to commit the offense... The intention is to be
analyzed subjectively...
¬ Based on these principles, the Tribunal believes that the evidence must show beyond a
reasonable doubt that when she is busy (engaged) to copy works, the accused intends
to sell. That reproduction is a deliberate step in pursuing the goal illegal, the sale of an
artistic counterfeit.”
¬ In this case, the evidence does not demonstrate that when she forged the artistic work,
the accused had the specific intent to sell. She did not reproduce for sale. This is not a
deliberate step taken in the pursuit of the objective that is illegal to use for commercial
purposes of an artistic work without the consent of its author.”


Reprographic Reproduction, 2011-2013
Interim Decision March 16, 2011
¬ Over the years, the Board has developed a number of principles in dealing with applications for
interim decisions...They can be stated as follows:
¬ An interim decision serves above all to counteract the negative consequences caused by
the length of the proceedings...
¬ An interim decision may be issued to prevent a legal vacuum...
¬ An interim decision may be issued if the main application is not plainly without merit...
¬ Interim decisions are made expeditiously on the basis of evidence often insufficient for the
purposes of the final decision, and even in the absence of any evidence...
¬ Balance of convenience is taken into account in deciding whether to issue an interim
decision...
¬ Generally, the best way to achieve the purposes of an interim decision is to maintain the
status quo while preventing a legal vacuum. Thus, when an agreement exists between the
parties, it is generally preferable to extend that agreement on an interim basis.
¬ When there is no pre-existing agreement or tariff or when new uses are involved, the Board
prefers to establish a symbolic interim royalty unless the context requires a different
approach.
¬ The Board can make interim decisions even when the Act provides for the automatic
continuation of an existing tariff on an interim basis.

¬ “One of the objects of the Act is to ensure that rights holders get paid for
protected uses of their works. Adopting an interim tariff favours this objective
by providing a mechanism for royalty payments to rights holders during the
Gap Period.”
¬ “Under the Act and subject to specific exceptions, copyright owners or their
agents are under no obligation to inform users of what they own or of the
conditions under which they are willing to allow the use of what they own. The
onus is on users to determine whether a contemplated use requires a licence
and if so, to seek the copyright owner and ask for permission before any such
use.
¬ Much of what the Objectors advanced seems to disregard this principle. To
argue that a user is entitled to use a work without the permission of the
copyright owner until such time as the owner seeks payment is as reasonable
as stating that a person is entitled to use a telecommunication signal without
the permission of the service supplying the signal until such time as the service
insists on being paid.”


¬ “Section 70.17 of the Act provides that “no proceedings may be brought for the
infringement of a right referred to in section 3, 15, 18 or 21 against a person
who has paid or offered to pay the royalties specified in an approved tariff....
¬ In our view, section 70.17 sets out the parameters for the private enforcement
of an approved tariff, interim or final... The “offer to pay” provision merely
confirms that a user does not need the permission of the collective to use the
repertoire as long as royalties are tendered: a refusal to accept payment
becomes irrelevant. The collective is barred from suing a user who offers to
pay only to the extent that the collective is entitled to collect. There can be no
quid pro quo if the offer to pay can be made in the absence of an obligation to
pay, as there can be no refusal of an offer to pay that does not come with a
payment. Furthermore, how can a user comply with terms and conditions that
have not been set?...
¬ section 70.17 applies only to the extent that a payment can be made pursuant
to a tariff, whether interim or final.... Clearly, the immunity is triggered only
once the decision is issued, not before.”


Interim Decision September 23, 2011
¬ “when a collective opts for a tariff, it is in part to avoid the costs associated
with transactional dealings. Such a course of conduct is rational and prima
facie fair...Therefore, a collective’s refusal to deal with users outside of the tariff
does not constitute misconduct warranting an intervention on the part of the
Board absent exceptional circumstances”.
¬ “On the other hand, the remedy Professor Katz proposes is not within the
Board’s powers to grant. Once a collective has applied for a tariff pursuant to
the general regime, the Board cannot force it to deal outside the tariff with
users that are subject to the tariff. Neither can the Board, under any
circumstances, force those who have asked the collective to act on their behalf
to deal directly with users, on a transactional basis or otherwise. On this issue,
Professor Katz confuses the power to regulate a collective’s dealings with
users (which the Board has) with the power to regulate the dealings of a
collective’s rights holders with those same users (which the Board does not
have).”


Interim Decision September 23, 2011

¬ “The Board’s power to vary a tariff is so wide as to allow it to substitute
a completely novel formula to that which a collective proposed, as long
as the tariff remains a tariff. Even though Access applied for a tariff that
offers only the FTE licence, it will be open to the Board in its final
decision to set royalties according to any reasonable formula it
chooses...”
¬ “Reporting, monitoring and audit provisions are key to most licensing
regimes: if rights holders are entitled to expect that users will seek
licences without being prompted, they are also entitled to expect that
users will either propose or accept mechanisms that allow the efficient
monitoring of compliance with the licence. A transactional licensing
regime without such provisions is an invitation to copyright violation
and unthinkable”.


Unlocatable copyright owners (orphan
works)
¬ Licenses granted by the Copyright Board pursuant to section 77(1):
¬ the reproduction and the communication to the public by the telecommunication of three images
published in The Canadian Home Journal in a article entitled "The Media, Gendered, Fat and
Other Problematic Bodies“
¬ the mechanical reproduction and the communication to the public by telecommunication of a
musical work entitled "Men are Like Street Cars" by Louis Jordan or Charley Jordan
¬ the synchronization, reproduction and communication to the public by telecommunication of an
excerpt of a musical work entitled "Le temps est bon" written by Stéphane Venne and published
by JFM Investments Inc.
¬ for the reproduction, synchronization and public performance of an excerpt of a musical
recording entitled "Seeburg Background Music Record BA-109A" in a short film
¬ for the reproduction of a poster created by the artists group Kukryniksy
¬ the reproduction, synchronization and public performance of an extract of a television series
entitled "Maria del Barrio“
¬ the reproduction of "Chaudières marine, questions et réponses" as translated by W.D. Ewart
from "Marine Boilers Questions and Answers" by G.T.H. Flanagan and published in 1984 by
Stanford Maritime, London UK
¬ See, http://www.cb-cda.gc.ca/unlocatable-introuvables/licences-e.html


IPC Order MO-2635/June 30, 2011
¬ “The affected party asserts that releasing the records would result in a breach
of the provisions of the Copyright Act. It is not necessary for me to delve into
this issue in great length. Sections 32.1(1)(a) and (b) of the Copyright Act,
provide:
¬ 32.1 (1) It is not an infringement of copyright for any person (a) to disclose,
pursuant to the Access to Information Act, a record within the meaning of that
Act, or to disclose, pursuant to any like Act of the legislature of a province, like
material; (b) to disclose, pursuant to the Privacy Act, personal information
within the meaning of that Act, or to disclose, pursuant to any like Act of the
legislature of a province, like information; …”
¬ “Simply put, the fact that the information contained in the records may be
subject to copyright, while it may suggest some measure of ownership, it does
not, in and of itself, provide a basis to deny access to the information under the
provisions of the Act, or oust its application.”


United States


Agency France Presse v Morel, 769
F.Supp.2d 295 (S.D.N.Y. 2011)
¬ Whether photos of earthquake in Haiti uploaded to Twitpic were licensed by
third party news agencies for their publication uses.
¬ “By their express language, Twitter's terms grant a license to use content only
to Twitter and its partners. Similarly, Twitpic's terms grant a license to use
photographs only to “Twitpic.com or affiliated sites.” AFP and TBS do not claim
they are partners of Twitter or affiliates of Twitpic licensed under the terms of
service. Moreover, the provision that Twitter “encourage[s] and permit[s] broad
re-use of Content” does not clearly confer a right on other users to re-use
copyrighted postings... Twitter's terms of service do not meet that standard.
Accordingly, AFP and TBS do not meet their burden to establish that they had
a license to use Morel's photographs.”


Warner Bros. Entertainment Inc v WTV
Systems, Inc. 2011 WL 4001121 (C.D.Cal.
Aug, 1, 2011)
¬ Defendants provide what they describe as a DVD “rental” service known as
Zediva, which is available at www.zediva.com.
¬ “As in On Command, Defendants' Zediva service transmits performances of
Plaintiffs' Copyrighted Works “directly under the language of the statute.” In
this case, the Zediva service “communicates” the “images and sounds” of
Plaintiffs' Copyrighted Works through the use of a “device or process”—the
equipment, including various servers, and internet—from a central bank of
DVD players to individual customer's computers, where the images and
sounds are received “beyond the place from which they are sent.”
¬ “Defendants' transmissions are “to the public” for purposes of the transmission
clause. Customers watching one of Plaintiffs' Copyrighted Works on their
computer through Zediva's system are not necessarily watching it in a “public
place,” but those customers are nonetheless members of “the public.”


Flava Works, Inc, v Gunter dba myVidster ,
2011 WL 1791557 (N.D.Ill.May 10, 2011) and
2011 WL 3205399 (N.D.Ill. July 27, 2011)
¬ Liability of social networking site myVidster through which site members store and “bookmark”
video files and post links to third-party websites on which the files are available.
¬ “Because there is no allegation that defendants caused copies of plaintiff's copyrighted works
to be made, plaintiff fails to state a claim for direct copyright infringement, and Count I will be
dismissed.”
¬ Plaintiff “alleges that defendants provide a website that stores infringing material, allows
backup copies to be made, and encourages sharing. It also alleges that myVidster has no
filters or identifiers in place to prevent repeat infringers and that it took no action to stop or ban
the repeat infringers who allegedly posted plaintiff's copyrighted works. These allegations are
more than sufficient to allege material contribution.”
¬ “We also have no doubt that defendants knew or should have known of the infringement
occurring on myVidster... “The knowledge element for contributory copyright infringement is
met in those cases where a party has been notified of specific infringing uses of its technology
and fails to act to prevent future such infringing uses, or willfully blinds itself to such infringing
uses.”... It is undisputed that over a period of several months, plaintiff sent defendants at least
seven DMCA notices that identified specific infringing files and users as well as specific repeat
infringers.”


Flava Works, Inc, v Gunter dba myVidster ,
2011 WL 3876910 (N.D.Ill. Sep. 1, 2011)

“To the extent that Perfect 10 can be read to stand for the proposition
that inline linking can never cause a display of images or videos that
would give rise to a claim of direct copyright infringement, we respectfully
disagree. In our view, a website's servers need not actually store a copy
of a work in order to “display” it. The fact that the majority of the videos
displayed on myVidster reside on a third-party server does not mean that
myVidster users are not causing a “display” to be made by bookmarking
those videos. The display of a video on myVidster can be initiated by
going to a myVidster URL and clicking “play”; that is the point of
bookmarking videos on myVidster—a user can navigate to a collection of
myVidster videos and does not have to go to each separate source site
to view them.”


Perfect 10, Inc v Megaupload Limited 2011
WL 3203117 (S.D.Cal., Jul. 27, 2011)
¬ Liability of cyberlocker Megaupload for direct and contributory infringement.
¬ “Drawing all reasonable inferences in Perfect 10's favor, Megaupload serves
as more than a passive conduit, and more than a mere “file storage” company:
it has created distinct websites, presumably in an effort to streamline users'
access to different types of media (e.g., megaporn.com, megavideo.com)...; it
encourages and, in some cases pays, its users to upload vast amounts of
popular media through its Rewards Programs; it disseminates URLs for various
files throughout the internet; it provides payouts to affiliate websites who
maintain a catalogue of all available files; and last, at a minimum, it is plausibly
aware of the ongoing, rampant infringement taking place on its websites.
Taken together, Perfect 10 has adequately alleged Megaupload has engaged
in volitional conduct sufficient to hold it liable for direct infringement.”
¬ “Under the circumstances of this case, if Megaupload lacks knowledge of
infringing activity, Plaintiff's allegations suggest such a lack of knowledge is
willful. The Court concludes Perfect 10 has satisfactorily pleaded specific
knowledge of contributory infringement, and therefore DENIES Megaupload's
motion to dismiss that claim.”

Disney Enterprises, Inc v Hotfile 798
F.Supp.2d 1303 (S.D. Flo. 2011)
¬ Liability of cyberlocker Hotfile for direct and contributory infringement.
¬ “Hotfile and Mr. Titov are not liable for direct copyright infringement because they
own and manage internet facilities that allow others to upload and download
copyrighted material.” See CoStar, 373 F.3d at 550; Parker, 422 F.Supp.2d at 497.
¬ “Finally, the plaintiffs contend that they have alleged a volitional act because they
allege that hotfile.com makes additional copies once the copyrighted material is
uploaded to the server. This argument too fails, for courts have repeatedly held that
the automatic conduct of software, unaided by human intervention, is not
“volitional”.
¬ “The complaint alleges that hotfile.com is a website that Hotfile uses to promote
copyright infringement and alleges that Hotfile took affirmative steps to foster this
infringement by creating a structured business model that encourages users to
commit copyright infringement. The complaint, moreover, outlines this business
model in detail. At this stage, that suffices to plead a claim for inducing copyright
infringement.


UMG Recordings v Shelter Capital Partners
LLC (Veoh Networks) 101 U.S.P.Q.2d 1001
(9th. Cir. 2011)
¬ Veoh satisfied the threshold requirement to fall within the hosting exception that the
infringement be “by reason of the storage at the direction of a user of material” residing
on Veoh’s system even though Veoh had transcoded the files.
¬ The Court held that hosting a category of copyrightable content, such as music videos,
with the general knowledge that one’s services could be used to share infringing
material, is insufficient to meet the DMCA knowledge requirement. The Court also
reached the same conclusion with regard to the §512(c)(1)(A)(ii) inquiry into whether a
service provider is “aware of facts or circumstances from which infringing activity is
apparent.” The Court held that Veoh’s general knowledge that it hosted copyrightable
material and that its services could be used for infringement was insufficient to constitute
a red flag.
¬ Under the DMCA, a service provider is eligible for the §512(c) safe harbor only if it “does
not receive a financial benefit directly attributable to the infringing activity, in a case in
which the service provider has the right and ability to control such activity.” The Court
held that the “right and ability to control” under § 512(c) “requires control over specific
infringing activity the provider knows about”.


Capitol Records, Inc. v. MP3tunes, LLC,
101 U.S.P.Q.2d 1093 (S.D.N.Y.2011)
¬ “Service providers must take down the specific infringing material identified in the notice
but are not required to search for and take down other material that may infringe the
identified copyrighted works.”
¬ “Where service providers such as MP3tunes allow users to search for copyrighted works
posted to the internet and to store those works in private accounts, to qualify for DMCA
protection, those service providers must (1) keep track of the source and web address of
stored copyrighted material, and (2) take content down when copyright owners identify
the infringing sources in otherwise compliant notices.”
¬ “General awareness of rampant infringement is not enough to disqualify a service
provider of protection... Put another way, if investigation is required to determine whether
material is infringing, then those facts and circumstances are not “red flags”.”
¬ “MP3tunes continued to provide locker services to its users even though it knew they
had unlawfully downloaded EMI's protected material. More particularly, MP3tunes
allowed users to continue to store and access those works on its servers. Accordingly,
EMI's motion for summary judgment on its claim for contributory infringement with
respect to the songs listed in EMI's takedown notices and which MP3tunes failed to
remove from users' lockers is granted.”


Arista Records LLC v. MyxerInc., f/k/a Visible
Technologies, Inc., Case No. CV 08-3935-
GAF-JC (C.D. Cal. April 1, 2011)
¬ Myxer Technologies, Inc., (“Myxer”) operates a website that allows Myxer’s
customers to upload recorded music to the site and then, through the use of
Myxer’s software, download the music to cellular phones for use as a ring tone.
¬ “Pursuant to both UMG Recordings I and Youtube, the downloading at issue is
covered by § 512(c) because it occurs as a result of the uploaded material, which
both parties agree is clearly covered by § 512(c). See UMG Recordings I, 620
F.Supp.2d at 1088. Moreover, § 512(c)'s broadly defined purpose makes clear that
the downloading at issue is covered by the DMCA, lest "service providers would be
greatly deterred from performing their basic, vital and salutary function-namely,
providing access to information and material for the public." Youtube, 718 F. Supp.
2d at 527. Accordingly, the Court concludes that the downloading at issue fits
within the scope of § 512(c)'s "by reason of the storage at the direction of a user of
material" because it occurs "as a result of" users' uploaded material.”
¬ Arista’s summary judgment motion for non-compliance with DMCA takedown
process dismissed.


Arista Records LLC v. Myxer Inc., f/k/a
Visible Technologies, Inc., Case No. CV 08-
3935-GAF-JC (C.D. Cal. April 1, 2011)
¬ “The Court finds that the purpose of the use component of the first factor weighs against
finding that Myxer's use of Plaintiff's works constitutes fair use; as the uploading and
downloading of copyrighted sound recordings does not fall clearly within any of the
purposes specifically identified in the statute's preamble, e.g., criticism, comment, news
reporting, teaching, scholarship.”
¬ “With respect to the remaining issues relevant to the first factor, although Myxer's use is
not transformative, the weight accorded the "commercial" nature of Myxer's use is
diminished by the fact that the downloaded copies represent only portions of the
entertainment value of the original works. The second factor, which relates to the nature
of the copyrighted work, weighs slightly against fair use because even though Plaintiff's
copyrighted works are published, they are clearly creative in nature. Additionally, the
amount and substantiality of the copyrighted excerpt supports a determination that the
third factor weighs against a finding of fair use; the 25-40 second ringtones arguably
constitute the "heart" of each of Plaintiff's works. Finally, Plaintiff provides sufficient
basis for a reasonable jury to find that an existing or potential market that Plaintiff can
exploit is adversely affected by Myxer's use of its works and Myxer has wholly failed to
bring forward favorable evidence about relevant markets.”


The Authors Guild et al v. Google
Inc. 770 F.Supp.2d 666 (S.D.N.Y. 2011)
“While the digitization of books and the creation of a universal digital
library would benefit many, the ASA would simply go too far. It would
permit this class action – which was brought against defendant Google
Inc. (“Google” ) to challenge its scanning of books and display of
“snippets” for on-line searching to implement a forward-looking business
arrangement that would grant Google significant rights to exploit entire
books, without permission of the copyright owners. Indeed, the ASA
would give Google a significant advantage over competitors, rewarding it
for engaging in wholesale copying of copyrighted works without
permission, while releasing claims well beyond those presented in the
case.”


Penguin Group (USA) Inc. v. American
Buddha 16 N.Y.3d 295 (Ct.App.N.Y. 2011)
¬ Where is damage suffered where a literary work is uploaded onto the Internet?
¬ “In sum, the role of the Internet in cases alleging the uploading of copyrighted
books distinguishes them from traditional commercial tort cases where courts
have generally linked the injury to the place where sales or customers are lost.
The location of the infringement in online cases is of little import inasmuch as
the primary aim of the infringer is to make the works available to anyone with
access to an Internet connection, including computer users in New York. In
addition, the injury to a New York copyright holder, while difficult to quantify, is
not as remote as a purely indirect financial loss due to the broad spectrum of
rights accorded by copyright law. The concurrence of these two elements—the
function and nature of the Internet and the diverse ownership rights enjoyed by
copyright holders situated in New York—leads us to view this case as closer
to Sybron than Fantis Foods. Thus, we conclude that the alleged injury in this
case occurred in New York”.


Penguin Group (USA) Inc. v. American
Buddha 16 N.Y.3d 295 (Ct.App.N.Y. 2011)

“a New York copyright holder whose copyright is infringed suffers something
more than the indirect financial loss...For instance, one of the harms arising
from copyright infringement is the loss or diminishment of the incentive to
publish or write... ["(P)ublishers obviously need economic incentives to publish
scholarly works... If publishers cannot look forward to receiving permission fees,
why should they continue publishing marginally profitable books at all? And how
will artistic creativity be stimulated if the diminution of economic incentives for
publishers to publish academic works means that fewer academic works will be
published?"]). And, the harm to a plaintiff's property interest in copyright
infringement cases "has often been characterized as irreparable in light of
possible market confusion" (Salinger v Colting, 607 F.3d 68, 81 [2d Cir 2010]).”


Kernal Records Oy v. Mosley, 794
F.Supp.2d 1355 (S.D.Fla. 2011)

“We hold that publishing AJE on a website in Australia was an act
tantamount to global and simultaneous publication of the work,
bringing AJE within the definition of a “United States work” under §
101(1)(C) and subject to § 411(a)'s registration requirement. Gallefoss
elected to publish AJE on the Internet and the legal consequences of
that decision must apply. Plaintiff was therefore required to register
AJE prior to seeking judicial enforcement of its copyright rights.”


Seng-Tiong Ho v. Taflove, 2011 WL
2175878 (7th.Cir, 2011)
“Although the line between an expression and an idea can be difficult to
determine at times, we do not believe that the record in this case presents
a particularly difficult situation. The Model is an idea. In Professor Ho and
Ms. Huang's own words, the Model “mimic[s] ... certain behaviors of
millions of particles in a photonic device.” Appellants' Br. 4. That is, the
Model attempts to represent and describe reality for scientific purposes.
This scientific reality was not created by the plaintiffs. Rather, the Model
embodies certain newly discovered scientific principles. Granted, as the
plaintiffs note, the Model makes certain hypothetical assumptions, but
those hypothetical assumptions do not render the Model fictitious. Rather,
the Model strives to describe reality, and, as conceded at oral arguments,
the value of the Model is its ability to accurately mimic nature.”


UK and Commonwealth


Lucasfilm Ltd & Ors v Ainsworth & Anor
[2011] UKSC 39 (27 July 2011)

¬ Is a stormtroopers helmet a sculpture?
¬ “It would not accord with the normal use of language to apply the
term "sculpture" to a 20th century military helmet used in the making
of a film, whether it was the real thing or a replica made in different
material, however great its contribution to the artistic effect of the
finished film. The argument for applying the term to an Imperial
Stormtrooper helmet is stronger, because of the imagination that
went into the concept of the sinister cloned soldiers dressed in
uniform white armour. But it was the Star Wars film that was the
work of art that Mr Lucas and his companies created. The helmet
was utilitarian in the sense that it was an element in the process of
production of the film.”


[2011] UKSC 39 (27 July 2011)

¬ Is a claim to US copyright justiciable in the UK?
¬ ‘There is no doubt that the modern trend is in favour of the enforcement of foreign
intellectual property rights...
¬ There are no issues of policy which militate against the enforcement of foreign copyright.
States have an interest in the international recognition and enforcement of their copyrights,
as the Berne Convention on the International Union for the Protection of Literary and
Artistic Works shows. Many of the points relied on by the Court of Appeal to justify the
application of the Moçambique rule in this case as a matter of policy would apply to many
international cases over which the English court would have jurisdiction and would in
principle exercise it, especially the suggestion that questions of foreign law would have to
be decided. It was also said...that a defendant may be restrained by injunction from doing
acts in this country which are lawful in this country. But such an injunction will be granted
only if the acts are anticipated to achieve fruition in another country, and there is no
objection in principle to such an injunction. Nor is there any objection in principle, as the
Court of Appeal thought, to a restraint on acts in another country. Extra-territorial
injunctions are commonly granted here against defendants subject to the in personam
jurisdiction.”


[2011] UKSC 39 (27 July 2011)
¬ What is the standard of review in a copyright case?
¬ “The type of judgmental conclusion that often has to be reached in intellectual
property cases – on issues such as obviousness, inventiveness, and copying – are
matters on which appellate courts should be slow to interfere with the judgment of
the trial judge...
¬ We would uphold the judgments below very largely for the reasons that they give.
But (at the risk of appearing humourless) we are not enthusiastic about the "elephant
test" in para [77] of the Court of Appeal's judgment ("knowing one when you see it").
Any zoologist has no difficulty in recognising an elephant on sight, and most could no
doubt also give a clear and accurate description of its essential identifying features.
By contrast a judge, even one very experienced in intellectual property matters, does
not have some special power of divination which leads instantly to an infallible
conclusion, and no judge would claim to have such a power. The judge reads and
hears the evidence (often including expert evidence), reads and listens to the
advocates' submissions, and takes what the Court of Appeal rightly called a multi-
factorial approach. Moreover the judge has to give reasons to explain his or her
conclusions.”


[2011] UKSC 39 (27 July 2011)
¬ Policy considerations re expanding the scope of copyright protection.
¬ “There is one other matter to which the Court of Appeal attached no weight, but
which seems to us to support the judge's conclusion. It is a general point as to the
policy considerations underlying Parliament's development of the law in order to
protect the designers and makers of three-dimensional artefacts from unfair
competition... It is possible to recognise an emerging legislative purpose (though the
process has been slow and laborious) of protecting three-dimensional objects in a
graduated way, quite unlike the protection afforded by the indiscriminate protection of
literary copyright. Different periods of protection are accorded to different classes of
work. Artistic works of art (sculpture and works of artistic craftsmanship) have the
fullest protection; then come works with "eye appeal" (AMP Inc v Utilux Pty
Ltd [1971] FSR 572); and under Part III of the 1988 Act a modest level of protection
has been extended to purely functional objects (the exhaust system of a motor car
being the familiar example). Although the periods of protection accorded to the less
privileged types have been progressively extended, copyright protection has always
been much more generous. There are good policy reasons for the differences in the
periods of protection, and the Court should not, in our view, encourage the
boundaries of full copyright protection to creep outwards.”


Football Dataco Ltd & Ors v Sportradar
GmbH & Anor [2011] EWCA Civ 330 (29
March 2011)
¬ Copyright does not subsist in a database that records goals, goalscorers, own goals,
penalties, yellow and red cards and substitutions and like information from football
matches. “It may be that some of the information collected for the claimants includes
matter which involves intellectual creation. So there may be copyright in Football Live.
But what is alleged to have been copied is mere data on any reasonable view. Its
recording may sometimes involve some skill (who scored in a goalmouth scramble) but it
is not creative skill.”
¬ Court refers following questions to ECJ on location in which extraction of data from
database occurs:
¬ “Where a party uploads data from a database protected by sui generis right under
Directive 96/9/EC ("the Database Directive") onto that party's webserver located in
member state A and in response to requests from a user in another member state B the
webserver sends such data to the user's computer so that the data is stored in the
memory of that computer and displayed on its screen(a) is the act of sending the data an
act of "extraction" or "re-utilisation" by that party?(b) does any act of extraction and/or re-
utilisation by that party occur(i) in A only(ii) in B only; or(iii) in both A and B?”


Twentieth Century Fox Film Corp & Ors v
British Telecommunications Plc [2011]
EWHC 1981 (Ch) (28 July 2011)

¬ A UK court can grant an injunction requiring a UK ISP to
block a foreign website in order to stop the ISP’s facilities
from being used by third parties engaged in unauthorized
online file sharing.
¬ Court had power to make the order under s. 97A of the
CDPA enacted to implement Article 8(3) of the EU
Information Society Directive.
See also, [2011] EWHC 2714. BT ordered to implement IP
address re-routing and DPI-based URL blocking.


ITV Broadcasting Ltd & Ors v TV Catchup
Ltd [2011] EWHC 1874 (Pat) (18 July 2011)
¬ Does capturing streams from terrestrial or satellite broadcast signals
and streaming the programming to individuals in the privacy of their
homes infringe the communication “to the public” or reproduction
rights.
¬ ``…the aggregate of the individual communications which TVC make at
any given time is properly to be regarded as a communication to the
public, as opposed to a plurality of individual and private
communications… It would be an unfortunate result if a point-to-
multipoint communication were to be actionable but a number of point
to point transmissions were not.
¬ My provisional view is therefore that TVC do reproduce and authorise
the reproduction of a substantial part of the films in the buffers and on
the screens.


The Newspaper Licensing Agency Ltd &
Ors. v Meltwater Holding BV & Ors [2011]
EWCA Civ 890 (27 July 2011)
¬ Can an online article clipping service can legally be operated in the UK?
¬ the conclusion of Proudman J in paragraph 71 of her judgment that newspaper
headlines are capable of being original literary works is plainly correct... In
those circumstances the conclusion in the last sentence of paragraph 72 that
“some of the headlines are independent literary works..” is, in my view,
unassailable.
¬ The Court of Appeal also ruled that the reproduction of extracts from the
articles comprising no more than 256 characters would inevitably constitute the
reproduction of a substantial part of the articles.
¬ The defence of fair dealing is conferred by s.30 CDPA… I should refer to the
fact that even if these conditions had been complied with Meltwater’s dealings
were not ‘fair’. The judge rejected the fair dealing defence on the ground that
the dealing was for commercial purposes and was encouraging end-users to
infringe the Publishers’ copyright. I agree


Roadshow Films Pty Ltd. v iiNet Limited,
[2011] FCAFC 23 (decision of High Court
pending)
“Even though the Copyright Owners are not entitled to the relief
claimed in this proceeding, it does not follow that that is an end of
the matter. It is clear that the questions raised in the proceeding
are ongoing. It does not necessarily follow that there would never
be authorisation within the meaning of s 101 of the Copyright
Act by a carriage service provider, where a user of the services
provided by the carriage service provider engages in acts of
infringement such as those about which complaint is made in this
proceeding. It does not necessarily follow from the failure of the
present proceeding that circumstances could not exist whereby
iiNet might in the future be held to have authorised primary acts of
infringement on the part of users of the services provided to its
customers under its customer service agreements.”


EU (other than UK)


La société Des Auteurs des Arts Visuels et de L’image
Fixe Visual Auteurs (SAIF) v. Google France S.A.R.L.
and Google Inc., Paris Court of Appeal, Jan. 26, 2011

¬ Was Google liable for reproducing and communicating copies of visual images to
the public in France?
¬ Google’s search service involved making reproductions of the copyright works of
visuals artists from France, Canada and elsewhere. Those reproductions were
communicated to the public in France. Hence, there were acts of direct copyright
infringement that Google could have been liable for.
¬ However, the Court held that Google was not liable for those acts. Google’s
search service was that of a neutral intermediary.
¬ Google is not be liable for purely automated acts that are an integral and essential
part of the proper technical functioning of a search engine, at least as long Google
remains an innocent intermediary by, for example, taking steps to remove or
disable access to infringing content from its indexes and caches when it becomes
aware of infringement (such as by complying with notices of claimed infringement
and removing the allegedly infringing files from its indexes and caches).


Google v Copiepresse et al, Brussels Court
of Appeal (9th Chamber) May 5, 2011
The decision canvasses many issues including
¬ the choice of law to apply to evaluate the claims of infringement,
¬ whether Google’s caching of news articles is infringement,
¬ whether the transmission of article titles and short extracts violates
the reproduction and communication to the public rights,
¬ whether Google News violates the moral rights of authors,
¬ whether statutory fair dealing defenses apply,
¬ whether Google can rely on implied licenses from publishers and
authors to publish Google News, and
¬ whether intermediary safe harbors are available under Belgium law
for providers of these services. See, Is Google News legal?
http://www.barrysookman.com/2011/05/17/is-google-news-legal/


Premier League Football (ECJ Case C-
403/08), 4 October 2011
¬ Sporting events cannot be regarded as intellectual creations classifiable as works within
the meaning of the Copyright Directive. That applies in particular to football matches,
which are subject to rules of the game, leaving no room for creative freedom for the
purposes of copyright. But, certain elements within FAPL matches, such as the opening
video sequence, the highlight reels showing recent matches, and various graphics, could
attract copyright protection.
¬ The reproduction right extends to transient fragments of the works within the memory of
a satellite decoder and on a television screen, provided that those fragments contain
elements which are the expression of the authors’ own intellectual creation, and the unit
composed of the fragments reproduced simultaneously must be examined in order to
determine whether it contains such elements.
¬ Acts of reproduction, which are performed within the memory of a satellite decoder and
on a television screen, fulfil the conditions laid down in Article 5(1) of Directive 2001/29
and may be carried out without the authorisation of the copyright holders concerned.
¬ Communication to the public must be interpreted as covering transmission of the
broadcast works, via a television screen and speakers, to the customers present in a
public house.


Scarlet Extended SA v SABAM , (ECJ
Case C-70/10) 24 November, 2011
¬ “under Article 8(3) of Directive 2001/29 and the third sentence of Article 11 of Directive
2004/48, holders of intellectual property rights may apply for an injunction against
intermediaries, such as ISPs, whose services are being used by a third party to infringe their
rights.”
¬ “the jurisdiction conferred on national courts …must allow them to order those intermediaries
to take measures aimed not only at bringing to an end infringements already committed
against intellectual-property rights using their information-society services, but also at
preventing further infringements.”
¬ “The protection of the right to intellectual property is indeed enshrined in Article 17(2) of the
Charter of Fundamental Rights of the European Union… There is, however, nothing
whatsoever in the wording of that provision or in the Court’s case-law to suggest that that right
is inviolable and must for that reason be absolutely protected.”
¬ EU law does not permit “an injunction made against an internet service provider which requires
it to install a system for filtering all electronic communications passing via its services, in
particular those involving the use of peer-to-peer software; which applies indiscriminately to all
its customers; as a preventive measure; exclusively at its expense; and for an unlimited period,
which is capable of identifying on that provider’s network the movement of electronic files
containing a musical, cinematographic or audio-visual work in respect of which the applicant
claims to hold intellectual-property rights, with a view to blocking the transfer of files the
sharing of which infringes copyright.”


Stichting de Thuiskopie v Opus (ECJ
Case C-462/09) 16 June 2011
¬ “It should however be recalled that, according to recital 9 in the preamble to Directive 2001/29, the European
Union legislature expressed its desire for a high level of protection to be guaranteed for copyright and related
rights, since they are crucial to intellectual creation. Their protection helps to ensure the maintenance and
development of creativity in the interests of authors, performers, producers, consumers, culture, industry and
the public at large. Thus, according to recital 10 in the preamble to Directive 2001/29, if authors or performers
are to continue their creative and artistic work, they have to receive an appropriate reward for the use of their
work.”
¬ “the final user who carries out, on a private basis, the reproduction of a protected work must, in principle, be
regarded as the person responsible for paying the fair compensation provided for in Article 5(2)(b). However,
it is open to the Member States to establish a private copying levy chargeable to the persons who make
reproduction equipment, devices and media available to that final user, since they are able to pass on the
amount of that levy in the price paid by the final user for that service.”
¬ “Directive 2001/29, in particular Article 5(2)(b) and (5) thereof, must be interpreted as meaning that it is for
the Member State which has introduced a system of private copying levies chargeable to the manufacturer or
importer of media for reproduction of protected works, and on the territory of which the harm caused to
authors by the use for private purposes of their work by purchasers who reside there occurs, to ensure that
those authors actually receive the fair compensation intended to compensate them for that harm. In that
regard, the mere fact that the commercial seller of reproduction equipment, devices and media is established
in a Member State other than that in which the purchasers reside has no bearing on that obligation to achieve
a certain result. It is for the national court, where it is impossible to ensure recovery of the fair compensation
from the purchasers, to interpret national law in order to allow recovery of that compensation from the person
responsible for payment who is acting on a commercial basis.”


Copyright law reform:
Bill C-11, Copyright
Modernization Act


Overview:
¬ The Bill will:
¬ implement the rights and protections of the World Intellectual Property
Organization (WIPO) Internet treaties;
¬ provide a new right of enablement;
¬ clarify the roles and responsibilities of ISPs and search engines;
¬ providing expanded exceptions for education;
¬ provide exceptions for encryption research, security testing, and
technical computer processes;
¬ protect Technological Protection Measures (TPMs);
¬ create new individual exceptions to permit format shifting, time
shifting, making back-up copies, creating and disseminating UGC
works;
¬ reduce statutory damages where purpose is non-commercial;
¬ Process and timing.


Where technical amendments are being
sought
¬ TMPs
¬ The enablement right
¬ The Non-Commercial User-Generated Content (UGC) exception
¬ Statutory damages
¬ The ISP (network service, caching, hosting) and ILT exceptions and
responsibilities
¬ The fair dealing for education exception
¬ The exceptions for encryption research, security testing, and
technical computer processes


Slides available @
barrysookman.com and
mccarthy.ca

* Translations of French language cases were created using Google
Translate. Some translations were altered for clarification.


VANCOUVER MONTRÉAL
Suite 1300, 777 Dunsmuir Street Suite 2500
P.O. Box 10424, Pacific Centre 1000 De La Gauchetière Street West
Vancouver BC V7Y 1K2 Montréal QC H3B 0A2
Tel: 604-643-7100 Tel: 514-397-4100
Fax: 604-643-7900 Fax: 514-875-6246
Toll-Free: 1-877-244-7711 Toll-Free: 1-877-244-7711

CALGARY QUÉBEC
Suite 3300, 421 7th Avenue SW Le Complexe St-Amable
Calgary AB T2P 4K9 1150, rue de Claire-Fontaine, 7e étage
Tel: 403-260-3500 Québec QC G1R 5G4
Fax: 403-260-3501 Tel: 418-521-3000
Toll-Free: 1-877-244-7711 Fax: 418-521-3099
Toll-Free: 1-877-244-7711
TORONTO
Box 48, Suite 5300 UNITED KINGDOM & EUROPE
Toronto Dominion Bank Tower 125 Old Broad Street, 26th Floor
Toronto ON M5K 1E6 London EC2N 1AR
Tel: 416-362-1812 UNITED KINGDOM
Fax: 416-868-0673 Tel: +44 (0)20 7786 5700
Toll-Free: 1-877-244-7711 Fax: +44 (0)20 7786 5702


Sookman law society_copyright_2012_conference

Recomendados

Recomendados

Más contenido relacionado

Destacado

Destacado (6)

Similar a Sookman law society_copyright_2012_conference

Similar a Sookman law society_copyright_2012_conference (20)

Más de bsookman

Más de bsookman (19)

Último

Último (20)

Sookman law society_copyright_2012_conference