Constitutional Jurisdiction Over Paracopyright Laws

8/11/2019 Constitutional Jurisdiction Over Paracopyright Laws

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PART TWO:

Bill C-: A Closer Analysis


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Constitutional Jurisdiction Over

Paracopyright Laws

Jeremy F. deBeer*

A. INTRODUCTION

In response to evolving social, technological, economic, and cultural envi-

ronments, the Government of Canada has been engaged in a decades-longoverhaul of copyright law. In the reform process, the need to balance therights and interests of all stakeholders is obvious. Some aspects of copy-right reform, however, are less obvious. As copyright expands incremen-tally we risk moving away from core organizing principles that underpinthe system. Not only is this unwise from a policy perspective, it is quitepossibly unconstitutional.

Te purpose of this paper is to determine whether Parliament is constitu-

tionally competent to enact new laws in respect of technological protectionmeasures (PMs) and/or rights management information (RMI) systems fordigital materials. In this context, digital materials include mainly pop cul-ture products such as music, movies, books, games, and software, whetherin electronic form or encoded on CDs, DVDs, or other tangible media. Lawsprotecting the technological and informational tools that protect thesedigital materials are sometimes called paracopyrightprovisions because

* Te Author wishes to thank the University of Ottawa and the Faculty of Lawfor funding this research through an Initiation of Research-New Direction Re-search Grant, and Daphne Gilbert, Stewart Elgie, Ian Kerr, Jane Bailey, JenniferChandler, Michael Geist, Guy Rgimbald, and an anonymous peer for their


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IN HE PUBLIC INERES: HE FUURE OF CANADIAN COPYRIGH LAW

they introduce a new layer of legal protection, above those already affordedby traditional copyrights and technological measures themselves.

Te Constitution Act, gives Parliament the authority to legislate,among other things, in respect of Copyrights. Until now, it seems to

have been taken for granted that the federal Government can and willinclude paracopyright provisions in amendments to the Copyright Actthrough Bill C-, An Act to Amend the Copyright Act, and do so pursu-ant to its jurisdiction under the Copyrights clause. But the Constitutionalso empowers the Provinces to make laws in respect of Property andCivil Rights.Although paracopyright provisions are in a way connectedto copyrights, they simultaneously implicate issues typically reserved forprovincial legislators, such as contractual obligations, consumer protec-

tion, e-commerce, and the regulation of classic property.It is tempting to suggest that the easy solution to the constitutional

dilemma is to prohibit circumvention and/or tampering only for the pur-pose of infringing copyrights. Since this is just what the Government in-tends to do, one might argue that there is no real constitutional issue here.Tat, however, would underestimate the nature of the problem. Te keyissue is not whether the provisions reflect the scope of the Copyright Actin its present form, but whether they are in pith and substance a mat-

helpful comments on my ideas, and Scott Lucyk and Barry Steinman for theiroutstanding assistance with this paper.

See for example David Nimmer, Puzzles of the Digital Millennium CopyrightAct (-) J. Copyr Socy U.S.A. at ; Michael J. Remington,Te Ever-Whirling Cycle of Change: Copyright and Cyberspace () : N. C.

J. L. & ech. at ; Dan L. Burk, Anti-Circumvention Misuse, () UCLA L. Rev. ; Kimberlee Weatherall, On echnology Locks and theProper Scope of Digital Copyright Laws Sony in the High Court () :Sydney L. Rev. at . Peter Jaszi has also used the terms pseudocopyrightand metacopyright to describe similarly new rights: see Peter Jaszi, Is Tisthe End of Copyright as We Know It? Address to Nordinfo Conference, October , in Stockholm, Sweden; Nordiskt Forum fr bibliotekschefer (NORDINFO ).

Constitution Act, , , s. ().

Copyright Act, R.S.C. , c. C-, .

First Reading, June , .

Constitution Act, , above note , s. ().


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Chapter Four Constitutional Jurisdiction Over Paracopyright Laws

ter of Copyrights under the Constitution Act,.Te provisions strictlegal operation is only one of several considerations; their true purposeand practical effects are also determinative of constitutional validity. Inpith and substance, the true character of the proposed provisions is actu-

ally very different from traditional copyright legislation. Moreover, it isunwise to focus solely on Parliaments ability to legislate on this matter.Attention must be paid to the provinces role in the copyright reform pro-cess, which thus far has been largely overlooked.

Terefore, this paper first characterizes the pith and substance of therelevant provisions by examining their purpose and legal and practical ef-fects. It then considers whether they fall within the scope of Parliamentsauthority under the Copyrights clause, or are more accurately regarded as a

matter of Property and Civil Rights. It also queries whether paracopyrightprovisions fall under other heads of power, such as rade and Commerce,Criminal Law, or the Peace, Order, and Good Government of Canada.

Te analysis leads to three main conclusions. First, provisions that at-tempt to trace the scope of existing copyright rules are not invulnerable.For reasons discussed in this paper, the mere inclusion of the phrase forinfringing purposes may not be sufficient for constitutional purposes. Asis, the proposed legislation may creep too far into the provincial domainto be salvaged as ancillary to an overall valid copyright scheme. It is argu-able that this is a colourable attempt to expand the boundaries of Copy-rights further into Property and Civil Rights.

Te second theme in this paper is that if the federal government is con-stitutionally competent to enact legislation on the subject of PMs andRMI, it must exercise restraint in doing so. Te Constitution at least re-quires the Government to resist pressure to widen the proposed provi-sions. Similarly, courts must be cautious when interpreting Bill C- ifand when it becomes law. Te broader the provisions, the further theystray from federal jurisdiction, the more they trench into provincial pow-ers, and the more suspect they become.

In any event, the Governments intention to press forward with BillC- does not necessarily preclude the provinces from enacting legisla-

I am not suggesting here that any or all of the existing Copyright Actis consti-

tutionally invalid, but its status ought not be taken for granted. Tere is littlejudicial authority on point. See David Vaver, Copyright Law(oronto: Irwin Law,) at ; and Jeremy F. deBeer, Copyrights, Federalism and the Consti-tutionality of Canadas Private Copying Levy .


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tion to deal with certain aspects of PMs and RMI. Te third conclusion,therefore, is that Provincial Attorney Generals should at least contributeto this discussion. Doing so will facilitate democratic involvement in thelaw reform process and maximize opportunities for effective citizen par-

ticipation. Tese are among the foremost goals not only of copyright law,but also of the entire Canadian federal system.

B. THE PITH & SUBSTANCE OF THIS MATTER

o determine whether legislation is validly enacted according to the con-stitutional division of powers, one must characterize its leading feature,its true character, its pith and substance.Following characterization

of the matter, the legislation can be classified as relating primarily to oneor another head of power. Notably, the categories in section and are no longer viewed as watertight compartments.Despite the mutualmodificationof Canadas constitutional classes to reduce conflicts, thereare still overlaps in respect of complex policy issues.

Te double aspect doctrine,for example, suggests there are some mat-ters involving aspects of both provincial and federal authority. Te neces-sarily incidental doctrinesuggests that particular provisions tethered to

valid legislation may stand, despite trenching into the other legislatorsdomain. But a particular provision is not constitutionally valid merely be-cause it is included in a valid legislative scheme; the provision must besufficiently integrated with that scheme.Although we will encounter am-biguities as to the proper constitutional approach at a later stage in theanalysis, it is certainly correct to begin by looking at the purpose and legaland practical effects of the Bill C-.

R. v. Morgentaler, [] S.C.R. at , .

Canada (A.G.) v. Ontario (A.G.), [] A.C. at para. . See R.M. Dawson, Te Government of Canada, th ed., N. Ward, ed. (oronto:

University of oronto Press, ) at . See Reference Re: Liquor License Act of (Ont.), (Hodge v R.), [] J.C.J. No. ,

[] App. Cas. (P.C.). General Motors of Canada v. City National Leasing, [] S.C.R. , [General Motors].

KitkatlaBand v. British Columbia (Minister of Small Business, ourism and Culture),[] S.C.R. , at para. .


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) Purpose

Superficially, the purpose of the proposed legislation is to incorporatethe WIPO Internet reaties into Canadian domestic law. According to the

Governments response to frequently asked questions, Te bill will im-plement all the rights and protections provided for in the WIPO Internetreaties.Tis may require a brief explanation.

Provisions addressing the circumvention of PMs and tampering withRMI had their genesis in the World Intellectual Property Organization(WIPO) Copyright reaty(WC)and the WIPO Performances and Phono-grams reaty(WPP).Tese are collectively known as theWIPO Internetreaties. Article of the WCrequires that:

Contracting Parties shall provide adequate legal protection and effec-

tive legal remedies against the circumvention of effective technologi-

cal measures that are used by authors in connection with the exercise

of their rights under this reaty or the Berne Convention and that

restrict acts, in respect of their works, which are not authorized by

the authors concerned or permitted by law.

Digging slightly deeper, the purpose of the WIPO Internet reaties, as

stated in their preambles, is:to develop and maintain the protection of the rights of authors [and

performers and producers of phonograms] in their literary and artis-

tic works [and performances and sound recordings] in a manner as

effective and uniform as possible.

Te WC and the WPP, however, give national legislators whether fed-eral or provincial significant leeway to fulfil this purpose. Tere is

Frequently Asked Questions Amendments to the Copyright Act, (Ottawa: Ministryof Industry and Heritage Canada, ), .

World Intellectual Property Organization Copyright reaty, December , I.L.M. , .

World Intellectual Property Organization Performances and Phonograph reaty, December , I.L.M. , .

Art. of the WPP, ibid.,uses similar language in respect of the rights of per-

formers and record producers. Above notes . Mark S. Hayes, Memorandum Concerning the Implementation in Canada of

Articles and of the WIPO Internet reaties Regarding the UnauthorizedCircumvention of echnological Measures Used in Connection with the Exercise


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no obligation to implement adequate legal protection and effective legalremedies into copyright law. Experts acknowledge that countries could in-deed decide to implement the WIPO Internet reatiesin fields of law otherthan in copyright.

For example, by implementing aspects of the WIPO Internet reatiesinto its competition law, not only into its copyright law, Japan has appar-ently recognized their significant purposes and effects outside of copy-right law. Indeed, adequate legal protection can be provided throughdiverse areas of law, including telecommunications regulation, competi-tion, criminal law, tort, and contract.Circumvention could possibly bea breach of contract, a cyber-trespass,an unfair trade practiceor some

of a Copyright Right (Ottawa: Ogilvy Renault, ), online: Industry Canada.

Sverine Dusollier, Situating legal protections for copyright-related techno-logical measures in the broader legal landscape: Anti Circumvention ProtectionOutside Copyright (General Report presented to ALAICongress, June ), at . See also forexample Ian R. Kerr, Alana Maurushat, & Christian S. acit, echnical Protec-tion Measures: iltingat Copyrights Windmill (-) Ottawa L. Rev.

at ; and Jacques de Werra, Te Legal System of echnological ProtectionMeasures under the WIPO Internet reaties, the Digital Millennium CopyrightAct, the European Union Directives and other National Laws (Japan, Austra-lia) General Report presented to ALAI Congress (June ), at .

Copyright Law of Japan, Art, bis, ; andJapanese Anti-Unfair Competition Law, Law No. , promulgated on May as amended by Law No. , April and Law No. , December .See generally Japan, Copyright Update Japan , On the Law to Partially

Amend the Copyright Law (Part ) echnological advances and new steps in copyright

protectionby akao Koshida, (Japan: Office of Multimedia Copyright, CopyrightDivision, Agency for Cultural Affairs), [Japan Update].

Dusollier, above note . See for example Compuserve v. Cyber Promotions, Inc., F.Supp. (S.D.

Ohio ); eBay, Inc. v. Bidders Edge, Inc., F. Supp. d (N.D. Cal., );Register.Com, Inc. v. Verio, Inc., F. Supp. d. (S.D.N.Y., );Intel Corpora-tion v. Kourosh Kenneth Hamidi et al., Cal. App. th ,Cal.Rptr.d (). See further Richard A. Epstein, Cybertrespass () U. Chi. L. Rev.; John D. Saba Jr., Internet Property Rights: E-respass () St. Marys

L.J. . Tere is case law in countries such as Germany to support this view: Dusollier,

above note , citing Lehmann, M. Copyright and technical protections Ger-man report in Copyright in Cyberspace, Otto Cramwinckel ed., ALAI StudyDays, June (Amsterdam, ) at ; and A Raubenheimer, Increasing


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other tort,or even a computer crime.Te point here is that it ought notbe assumed that the WIPO Internet reaties provisions naturally dovetailwith copyright.

In May , the Standing Committee on Canadian Heritage recom-

mended immediate ratification of the WC and WPP. o accomplishthis, the Government introduced Bill C-. It will be discussed belowwhether signing the WIPO Internet reaties is itself enough to empowerthe federal government to enact domestic legislation to fulfil Canadas ob-ligations (the short answer is it is unclear). Regardless, implementation ofthe WIPO Internet reaties is also one aspect of the Government of Cana-das desire to enable copyright stakeholders to address the challenges andopportunities of the Internet.Unfortunately, little has been said about

what, precisely, is the role of these provisions in addressing the challengesand opportunities of the Internet.

While normally one might look to legislative debates, speeches, or oth-er Hansard evidence for the purpose of impugned legislative provisions,we do not yet have the luxury of well-reasoned Parliamentary discussionon this topic. Te Standing Committees Interim Report did not offer arationale for introducing these provisions into Canadian law, except toimplement the WIPO Internet reaties.Te Government of Canada didcommission two thorough studies by Professor Kerr and others, whichastutely describe the nature and function of PMs, RMI, and circumven-tion or tampering prohibitions.Moreover, in the decade since these is-

importance of hardware locks (dongles) in recent German case law () :Information & Communications ech. L. .

See for exampleSega Enterprises Ltd. v. MAPHIA, F.Supp. , Copy. L.Rep. P ,, U.S.P.Q.d (NDCal ); Sega Enterprises Ltd. v. MAPHIA,

F.Supp. , Copy L. Rep. P ,, U.S.P.Q.d (NDCal ). Dusollier, above note . Canada,Interim Report on Copyright Reform: Report of the Standing Committee on

Canadian Heritage (Ottawa: Communication Canada, ), [Interim Report].

Canada,Te Government of Canada Announces Upcoming Amendments to the CopyrightAct: Backgrounder (Ottawa: Ministries of Industry and Canadian Heritage, ),.

Morgentaler,above note at .

Interim Report, above note . See Heritage Canada, echnical Protection Measures: Part I rends in

echnical Protection Measures and Circumvention echnologies by Ian R.Kerr, Alana Maurushat, & Christian S. acit (Ottawa: Department of CanadianHeritage, ),


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sues surfaced a robust body of literature has developed, which may helpto uncover the various reasons paracopyright provisions may be enacted.Note, however, that although much of the literature addresses the wisdomof the policy choices involved, the key question here is not whether the

policy choice is the correct one, but whether it is a choice Parliament isentitled to make.

Te Government has said: to better address the challenges and the op-portunities presented by the Internet and digital technology in general [t]hese amendments will: enhance protection of works in the online en-vironment, both to address infringement and to enable the developmentof new business models .From this, one can infer that paracopyrightprovisions have something to do with the phenomenon of sharing digital

content via peer-to-peer (pp) networks. Content distributors are con-cerned that this wildly popular trend is a threat to their business models,and consequently their bottom line.Te proposed provisions will help topreserve their existing revenue streams and generate new ones.

One might argue that these provisions will safeguard artists interestsand thus encourage the production and dissemination of digital materi-als to the benefit of society at large. Although the provisions will protectcorporate distributors, not necessarily human artists,a financially lucra-tive mass market for digital content might benefit grassroots artists inthat greater profits for distributors could lead to greater opportunities for

index_e.cfm>; and Heritage Canada, echnical Protection Measures: Part II Te Legal Protection of PMs by Ian R. Kerr, Alana Maurushat, & ChristianS. acit (Ottawa: Department of Canadian Heritage, ), .

See for example ALAI Congress: Adjuncts and Alternatives to Copyright(ALAI-USA: New York, ), ; and Jeffrey P. Cunard, Keith Hill, & Chris Barlas, Current Developmentsin the Field of Digital Rights Management Standing Committee on Copyright andRelated Rights, enth Session(World Intellectual Property Organization: Geneva), .

Firearms Referenceat para. . FAQ Bill C-,above note . See, for example, Te Canadian Recording Industry Association, perils of pp,

.

For an illustration of this phenomenon in practice, one can look to the Appleiunes Music Store. It is the company that markets and distributes the digi-tal content, not the artist who produces it, that exploits PMs in its businessmodel. See further Jeremy F. deBeer, Artist Compensation and the CanadianCopyright Regime (oronto: Uniform Law Conference of Canada, ).


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artists. Te benefits, however, are indirect at best.Te dominant purposeof these provisions is, therefore, to protect distributors economic inter-ests, not necessarily artists wellbeing.One could say that this is true ofmany parts of the current Copyright Act, and therefore unobjectionable.

But it will be explained below that protection for artists is at the core ofthe Constitutions Copyrights clause, whereas protection for distributorsmay be considered more peripheral. Legislation with a primary purposerelated to neighbouring rights which themselves have not been settledto be constitutionally valid Copyrights is more vulnerable than wouldbe legislation directly addressing the rights of authors.

Moreover, the proposed provisions may not encourage the dissemina-tion of digital content, one of the primary goals of copyright law gener-

ally. Rather, they will likely concentrate control over dissemination in thehands of relatively few distributors.According to Professor Hugenholtz,therefore, the new regime is difficult to reconcile with one of the most im-portant rationales of the copyright system: promoting the disseminationof culture and knowledge in society.One could argue, in fact, that thepurpose of the Governments proposed provisions is actually inconsistentwith traditional copyrights.

Alternatively, the purpose of these proposed provisions might be char-acterized as simply to deter or remedy copyright infringement. After all,Bill C- prohibits circumvention or services to circumvent for the pur-pose of an act that is an infringement of the copyright.Tis stands incontrast to other countries implementation of the WIPO Internet reaties,

And may not be worth the costs: see Lawrence Lessig, Free Culture How: Big Me-dia Uses echnology and the Law to Lock Down Culture and Control Creativity, (New

York: Penguin Press, ). See Japan Update, above note , wherein Koshida directly addresses this point

and comments: In these amendments, measures used not at the will of theowner of copyright are not included in technological measures. Tis is becauseit is thought, for example, that a technological measures that is used by adistributor who is not a copyright owner, on his or her own for his or her ownprofit without regard to the intent of the copyright owner, could not be consid-ered a measure to effectively secure copyright.

Indeed, a prohibition on PMs, rather than a prohibition on circumvention,might best promote the objective of widespread dissemination of digital

content. Im not suggesting here that either prohibition is warranted; a neutralapproach that defers to market forces might also be appropriate.

B. Hugenholtz, Copyright, Contract and Code: What Will Remain of the PublicDomain (-) Brook. J. Intl L. at .

Bill C-, above note , s. .().


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most notably the United States Digital Millennium Copyright Act[DMCA],which has been criticized for being vague, overbroad, and skewing thelaw in favour of content distributors.Certainly, federal legislation widerthan that proposed in Bill C- would have a more difficult time passing

constitutional muster. By prohibiting circumvention for infringing pur-poses only, the Government has increased the likelihood that its proposedprovisions can withstand scrutiny. Yet it would be misleading to suggestthat the constitutional conundrum is completely solved.

Te reference to the purpose of infringement may help to align the pro-visions scope with the existing Copyright Act, but it says nothing abouttheir nature. So, the fact that PMs will be protected only insofar as cir-cumvention is for an infringing purpose may not be enough to change the

true characterof this legislation for constitutional purposes. In deter-mining the pith and substance, the court will look beyond the direct legaleffects .In other words, the real issue at this stage has less to do withthe scope of the circumvention prohibitions than their nature. In this re-spect, the proposed provisions are dramatically different from traditionalcopyright laws. Logic proves this: either (a) the new provisions are entirelysuperfluous, which begs the question as to why they are being enacted atall; or (b) they are different from existing copyright law in purpose andeffect, which raises questions as to their validity.

raditional copyright law is one way to control the terms upon whichdigital content is distributed. Te scope of copyright law is determinedby democratically elected representatives and enforced by an independentjudiciary. Te scope of PMs, on the other hand, is determined not by pub-lic officials, but by private companies pursing economic agendas.rue,legal prohibitions against circumvention of PMs will trace the scope ofcopyright law. But the decision to enact this additional layer of protectionnevertheless reveals a purposive shift from one legal regime to another.

Digital Millennium Copyright Act, U.S.C. (). See for examplePamela Samuelson, Intellectual Property and the Digital

Economy: Why the Anti-Circumvention Regulations Need to Be Revised Berkeley ech. L.J. , ; Dan L. Burk, above note ; Simon Fitzpatrick,Copyright Imbalances: U.S. and Australian Responses to the WIPO Digital

Copyright reaty () E.I.P.R. ; Cunard, Hill & Barlas, above note ;Kerr, Maurushat, & acit, above note at ; de Werra, above note at .

Morgentaler, above note at . Ibid.at . Kerr, Maurushat, & acit, above note at .


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Te proposed amendments would contribute to the transfer of controlover the terms of distribution from copyright to contract law. Accordingto Professor Hugenholtz: Contract law, in particular, appears to have allthe makings of becoming a perfect alternative to the copyright system.

Along the same lines, Professor Samuelson has remarked: Tere may benothing for copyright to do, except perhaps to serve as a kind of deus exmachinajustifying the use of technological and contractual means for pro-tecting works in digital form.In particular, if and when Bill C- comesinto force, it will be unnecessary for digital content distributors to invokecopyrights or neighbouring rights at all. Te mere act of circumvention foran infringing purpose could entitle the copyright owner to all remediesprovided by law. Tese paracopyright provisions are thus a replacement

for, not a part of,traditional copyright laws.It is arguable that paracopyright provisions protect contracts about

copyrights, and are therefore themselves in pith and substance a matterof copyright, not contract. Another way of putting it is that these pro-visions relate to copyright licensing issues, not significantly differentfrom, for example, provisions governing ownership of copyright gener-ally.However, in theory and in practice, paracopyright provisions have arather different purpose. Mark Hayes refers to the contracts enforced bytechnological protection measures as super-copyright.He says:

the use of the term licence to refer to these types of super-copyright

agreements is somewhat misleading. Properly understood, these

super-copyright agreements are completely separate from, and ad-

ditional to, copyright protection and impose contractual restrictions

which only should be enforceable if the user is contractually bound to

the restrictions and the restrictions are not unconscionable or other-

wise against public policy.

Tis last point that such contracts should only be enforceable if theyare not unconscionable or against public policy further emphasizesthat many of the questions here are essentially about regulating private

Hugenholtz, above note at . Pamela Samuelson, Copyright, Digital Date, and Fair Use in Digital Networked

Environments in Ejan Mackay et al., eds, Te Electronic Superhighway: Te Shape

of echnology and Law to Come(Te Hague: Kluwer Law International, ) at .

See for exampleCopyright Act, above note ,s. , Hayes, above note at . Ibid.at .


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contractual agreements. Picture a triangle of copyright, contract, andtechnology. Te purposes of the technology and contract are closer to eachother than either is to copyright. Tis becomes even more apparent whenone looks at Bill C-s provisions against tampering with RMI. Tis is es-

sentially a legislative scheme governing contracts about access to and useof digital content. Tis is not really about copyright as Professors Kerrand Bailey have noted: while we refer to rights management systems,what these databases reallymanage is information.

Ultimately, including references to copyright may ostensibly relate thematter to the scope of existing copyright law, but it does not change thetrue character of this legislation. In pith and substance this is perhapsmore of a technological, contractual, or commercial matter than a copy-

right matter. Te Governments proposed legislation is best described as aparacopyrightlaw a law going beyond existing copyright law, althoughnot necessarily in scope, certainly in nature.

) Effects

Recommendations to limit the breadth of effects of paracopyright provi-sions are common among experts who have studied these issues.Until

now many of the arguments have been based primarily on sound policy-making. However, tightly focussed legislation is not just wise policy itis constitutionally mandated. Scholars such as Professors Kerr and Baileyhave noted that provisions inconsistent with fundamental rights such asprivacy or freedom of expression may violate the Charter of Rights and Free-doms.Te distinct constitutional point of this paper is often overlooked.

Ian R. Kerr & Jane Bailey, Te Implications of Digital Rights Management

for Privacy and Freedom of Expression () J. Information, Communica-tion & Ethics in Socy , at .

See for exampleKerr, Maurushat, & acit, above note , and the sources citedtherein.

Ian R. Kerr & Jane Bailey, above note . Professor Kerr has also noted thatthese types of provisions could contain broad and vague statements that maynot withstand constitutional scrutiny. See Kerr, Maurushat, & acit, abovenote at . Experiences in the United States highlight the chilling effect thatthe DMCAs paracopyright provisions have had on expression. See for example

United States v. Elcom Ltd., F. Supp. d (NDCal ); Universal CityStudios v. Reimerdes, F. Supp. d. (SDNY ), affd F. d (d Cir.) [Reimerdes]; Felten v. Recording Industry Association of America, Case No.CV-- (GEB) (DistCtNJ). For a description of the effects of the DMCAinthe scientific community, see Jeffrey Sullivan & Tomas Morrow, Practicing


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From the perspective of the division of legislative powers, the broader theeffect of the new provisions, the further they are from the core of Parlia-ments authority under the Copyrights clause and the more they encroachon provincial jurisdiction over Property and Civil Rights. Tat is, even if

the purpose of paracopyright provisions is related to copyright, broadereffects of the legislation could render it constitutionally invalid. It is herethat the precise scope of the Governments proposal must be considered,so the relevant provisions are reproduced below in full.

Tere is a general threat that PMs will undermine copyright laws deli-cate balance between various stakeholders.Tis balance seeks to providesufficient incentives to generate and disseminate new cultural works whileat the same time respecting rights such as freedom of expression, privacy,

contractual autonomy, and classic private property, as well furthering thepublics interests. Although PMs cannot differentiate between copy-right infringement and legitimate activities, legislation concerning PMsmight.

Reverse Engineering in an Era of Growing Constraints under the Digital Mil-lennium Copyright Act and Other Provisions () Alb. L.J. Sci. & ech.

. Indeed, for various reasons, it has been suggested that the DMCAcould beconstitutionally infirm. See Glynn S. Lunney Jr., Death of Copyright: Digitalechnology, Private Copying, and the Digital Millennium Copyright Act () Va. L. Rev. at . See also Yochai Benkler, Constitutional Bounds ofDatabase Protection: Te Role Judicial Review in the Creation and Definitionof Private Rights in Information () Berkeley ech. L.J. at ;

Yochai Benkler, Free as Air to Common Use: First Amendment Constraints onEnclosure of the Public Domain () N.Y.U. L. Rev. at ; Julie E.Cohen, Copyright and the Jurisprudence of Self-Help () Berkeley ech.L.J. at ; William Patry, Te Enumerated Powers Doctrine and

Intellectual Property: An Imminent Constitutional Collision () Geo.Wash. L. Rev. at .

See for exampleKerr, Maurushat, & acit, above note , at ; Samuelson,above note ; Dan L. Burk & Julie E. Cohen, Fair Use Infrastructure for RightManagement Systems () Harv. J.L. & ech. at .

See, for example Tberge v. Galerie dArt du Petit Champlain Inc et al., SCC, [] S.C.R. , , at paras. [Tberge]; CCH Canadian Ltd. v.Law Society of Upper Canada, SCC , [] S.C.R. , at paras.

, , , and ; [CCH Canadian]; and Society of Composers, Authors andMusic Publishers of Canada v. Canadian Assn. of Internet Providers, [] S.C.R., at paras. , , , , [SOCAN v. CAIP]. (LeBel J. dis-sented for other reasons: ibid.at para. .).


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Tere are two key aspects of Bill C- that may limit its legal effects:only PMs that ordinarily protect copyrights, neighbouring, and moralrights are protected, and only circumvention for infringing purposes orproviding circumvention services that the provider knows or ought to

know will result in infringement are prohibited. As mentioned above, it istempting to conclude that these qualifications are sufficient to eliminateany problem concerning the constitutional division of powers. However,that is not the case. Aside from the fact that (a) the test is not correlationwith the present Copyright Actbut with the Constitution Act, , (b) theprovisions strict legal effect is only one of a number of considerations(in addition to their purpose and practical effect) in characterizing thepith and substance of the matter and (c) it is appropriate to look at both

Parliaments and the provinces role in this debate, there is another is-sue to discuss in respect of the provisions legal effects: (d) the proposedlimitations may not go far enough, as ambiguities make it difficult to drawfirm conclusions.

Subsection () of Bill C- defines a technological measure as:

any technology, device or component that, in the ordinary course of

its operation, restricts the doing in respect of a material form of

a work, a performers performance fixed in a sound recording or asound recording of any act that is mentioned in section , or

or that could constitute an infringement of any applicable moral

rights .

It is unclear whether the definition of a technical measure turns uponthe general type of technical measure at issue (i.e., a hardware or softwarebased access control, copy control, encryption, scrambling, etc.)or on theparticular use of the measure in a given instance.

Te former interpretation seems like the approach taken, for example,in the German Copyright Act, which adopts the language of the E.C. Copy-right Directive almost exactly (Bill C- substitutes ordinary for nor-

Specific examples of technological measures protected under this definitionmight include the Content Scramble System (CSS), which allows motion picturecompanies to control access to content of DVDs, or the Secure Digital Music

Initiative (SDMI), which has been used to control copying, uploading of musicto the Internet, and playback on portable devices. For a description of CSS andSDMI technology, see for exampleDean S. Marks & Bruce H. urnbull, echni-cal Protection Measures: Te Intersection of echnology, Law and CommercialLicences () E.I.P.R. at .


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mal).On this interpretation, the definition would encompass measuresthat protect copyrights, neighbouring, and moral rights, but could alsoencompass a wide array of further measures. Te phrase in the ordinarycourse of its operation raises problems. Te last time the Government

used the word ordinarily in the Copyright Act(as part of the private copy-ing regime) it was interpreted to mean, in effect, not extraordinarily.Adjectives like ordinary and normal dont necessarily capture proportion-ality, at least not as interpreted in Canadian copyright law.A measurethat is used sometimes or often, even if not primarily or exclusively, inconnection with copyright would fall within the proposed definition. Teconstitutional problem here is that a type of measure could be protectedeven though the vast majority of uses for that measure are unconnected

with rights under the Copyright Act, let alone the Copyrights clause. Tatthe constitutionality of the private copying regime has been called intoquestion, in part because of the breadth of the term ordinarily,shouldbe taken as a warning to tighten the meaning of a technical measure.

Te second interpretation, which would look to the particular use ofa measure in a given instance to determine whether it falls within thedefinition, is also problematic but less so from a constitutional perspec-tive. Although a measure applied to non-copyright materials will not beprotected against circumvention, it is uncertain what will happen where ameasure protects both copyright and non-copyright materials in the samedigital work. A reported legal decision illustrates the potential problemhere: the headnote may be subject to copyright whereas the underlying

German Copyright Actof September , as amended on September (English translation) ; and Direc-

tive /EC of the European Parliament and of the Council of May on the harmonisation of certain aspects of copyright and related rights in theinformation society, Official Journal L/, //, . See generally Alexander PeukertCountry Report Germany ; and P.Bernt Hugenholtz, Why the Copyright Directive is Unimportant, and PossiblyInvalid () E.I.P.R. .

Private Copying -, ariff of Levies to be Collected by CPCC (Re) (), C.P.R. (th) , , affdAVS ech-nologies Inc. v. Canadian Mechanical Reproduction Rights Agency, [] F.C.J. No.

, . Private Copying -, ibid. See deBeer, above note , discussing Canadian Private Copying Collective v. Cana-

dian Storage Media Alliance, [] FCA , .


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judgement is not. In such a case the measure is probably encompassedwithin the definition in Bill C-, meaning that protection might extendbeyond what is now protected by copyright.

Te problem of over-breadth could be addressed by replacing the term

ordinary in the definition of technological measure. Unfortunately,the Bill does not incorporate the suggestion of a Government-sponsoredmemorandum that a measure should be protected only if it is primarilyintended to restrict copyright infringement and its effect is to primarilyre-strict copyright infringement.Were the definitions limited to measuresthat exclusively relate to works and activities protected under the CopyrightAct, the legislations constitutional status might be even more secure. Butif a technical measure becomes protected against circumvention merely

because it protects, sometimes or in part, copyrighted materials, this willexpand the laws boundaries significantly. In effect, the law will not belimited to protecting the technologies that protect copyrights; it will pro-tect PMsper se. Tis threatens its status as valid copyrights law.

Granted, under section .(), circumvention of such measures will onlybe prohibited if done for an infringing purpose. Te Bill contains the follow-ing three provisions dealing with circumvention of technological measures.In short, copyright, neighbouring, and moral rights holders can prevent:() circumvention of PMs for the purpose of copyright infringement; ()anyone from offering or providing circumvention services that the providerknows or ought to know will result in an infringement; and () trafficking inworks from which PMs have been removed. More particularly,

. () An owner of copyright in a work, a performers perform-

ance fixed in a sound recording or a sound recording and a holder

of moral rights in respect of a work or such a performers perform-

ance are, subject to this Act, entitled to all remedies by way of in-junction, damages, accounts, delivery up and otherwise that are or

may be conferred by law for the infringement of a right against a

CCH Canadian v. Law Society of Upper Canada, FCA at paras. , affd. CCH Canadian,above note .

Hayes, above note (emphasis added). In Chamberlain Group, Inc. v. Skylink echnologies, Inc., F.Supp.d (NDIll

), U.S.P.Q.D ; F.d (CAFed ) at [Chamberlain], thecourt noted that this could allow any manufacturer of any product to add a singlecopyrighted sentence or software fragment to its product, wrap the copyrightedmaterial in a trivial encryption scheme, and thereby gain the right to restrictconsumers rights to use its products in conjunction with competing products.


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person who, without the consent of the copyright owner or moral

rights holder, circumvents, removes or in any way renders ineffective

a technological measure protecting any material form of the work,

the performers performance or the sound recording for the purpose

of an act that is an infringement of the copyright in it or the moralrights in respect of it or for the purpose of making a copy referred to

in subsection ().

() An owner of copyright or a holder of moral rights referred to

in subsection () has the same remedies against a person who offers

or provides a service to circumvent, remove or render ineffective a

technological measure protecting a material form of the work, the

performers performance or the sound recording and knows or ought

to know that providing the service will result in an infringement ofthe copyright or moral rights.

() If a technological measure protecting a material form of a

work, a performers performance or a sound recording referred to in

subsection () is removed or rendered ineffective in a manner that

does not give rise to the remedies under that subsection, the owner

of copyright or holder of moral rights nevertheless has those rem-

edies against a person who knows or ought to know that the measure

has been removed or rendered ineffective and, without the ownersor holders consent, does any of the following acts with respect to the

material form in question:

(a) sells it or rents it out;

(b) distributes it to such an extent as to prejudicially affect the

owner of the copyright;

(c) by way of trade, distributes it, exposes or offers it for sale or

rental or exhibits it in public; or(d) imports it into Canada for the purpose of doing anything re-

ferred to in any of paragraphs (a) to (c).

Te reference to a purpose of act that is an infringement of copyrightmeans that circumvention for the purpose of fair dealing or other legiti-mate activities under the Copyright Actwill be permitted. It could also bepossible to circumvent to exercise classic property rights normally associ-ated with ownership of tangible property, just as in the Tberge case.

Consumers will be allowed to circumvent in accordance with their express

Tberge, above note .


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or implied contractual rights, as an act done with the authorization of thecopyright owner is not an infringement.

Te details of this qualification, however, remain unclear. It is relativelyobvious that the onus to prove an infringing purpose will lie on the plain-

tiff. Procedurally, the infringing purpose requirement is not a defence orexception. But still, how is the purpose to be determined? What if thepurpose was to infringe, but in fact no infringement ultimately occurs?Is the circumventors subjective intention at the time of circumvention orthe ultimate activity carried out following circumvention determinative?If liability for circumvention turns on whether or not the ultimate activi-ties were infringing, the practical effect may be to eliminate fair dealingsaltogether, as few people would be willing to risk the consequences of an

honest but mistaken belief. If a subjective test of intention were adopted,it might enable a person with a bona fideclaim of fair dealing to exercisehis/her putative rights confidently. Te adoption of this latter test mayhave a less drastic effect, and would therefore, be more closely alignedwith existing copyright doctrine.

It is also problematic that the implicit right to circumvent PMs fornon-infringing purposes will be practically worthless. As I alluded to,there are two types of effects potentially relevant to an analysis of thedivision of powers: legal effects and practical effects. In appropriate cases,one can look beyond the four corners of the legislationat evidence ofthe actual or predicted practical effect of the legislation in operation.An explicit right to circumvent for non-infringing purposes, coupled withguaranteed access to the means to do so, would more closely align the ef-fects of the new regime with the scope of existing copyright law. Tat is,for the limitations in Bill C- to be meaningful in practice, there must bemechanisms in place to ensure consumers have not only the right but alsothe ability to circumvent PMs.Tis could be in the form of prohibitions

Reference re: Anti-Inflation Act, [] S.C.R. at . Practical effects may notalways have great analytic significance: seeMorgentaler, above note at .

Reference re: Alberta Legislation,[] S.C.R. at . Evidence of the practicaleffects of paracopyright legislation on would-be fair

use can be found in a well-known U.S. case where Hollywood movie studiossued three individuals who posted copies of and links to DeCSS software thatdecrypted DVDs. Te District Court issued an injunction, finding that fair use

does not apply under the DMCA: see Reimerdes, above note . Te AppealsCourt affirmed this decision, finding that the DMCAdoes not unduly burdenfair use rights, because there was no authority for the proposition that fairuse guarantees copying by the optimum method or in the identical formatof the original.Ibid.at , ; Elcom, above note at ; Studios


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against the use of PMs in certain circumstances, or a statutory obligationto facilitate certain uses of materials guarded by PMs. Even this may notbe enough however. Te E.C. Copyright Directivecontains a roughly similarrequirement, but this has been criticized as seriously deficient (and pos-

sibly invalid) in terms of its complexity and lack of practical meaning.

But it seems that the Government does not intend to enact protectionsagainst the abuse of PMs. Perhaps this is because such consumer protec-tion aspects of paracopyright provisions are a matter for the provinces todeal with. If so, this could be evidence that the entire scheme is ultra viresParliaments authority, as the consumer protection issues are an integralelement of legislation addressing PMs and RMI. Or it could be that thisis an area of shared responsibility. At this point, it is enough to say that if

the Government does not include mechanisms to render the provisionslimited legal effects practically meaningful, this will increase the possibil-ity that the legislations overall effects could render the provisions consti-tutionally invalid.

Another question about the legal effect of section .() is whether itcould create a novel right of access to works the ability of copyrightholders to control copyright, performance, distribution, etcetera, andalso access to a work. Since it is not presently an infringement to access acopyrighted work, Bill C- appears to allow for the circumvention of pureaccess controls. However, this distinction may not have much practical sig-nificance because accessing a digital work usually involves making a copy,albeit ephemeral. Tis could effectively create a sui generisright of access.Although some argue this is a natural evolution of copyright,others sayit constitutes an unprecedented expansion. Either way, the likelihood

v. Metro Goldwyn Mayer Studios, Inc. F.Supp.d (NDCal ). Tis, ofcourse, ignores the consumers classic property rights: see Jeremy F. deBeer,Reconciling Property Rights in Plants () : J. World Intellectual Prop-erty , .

See Hugenholtz, above note . Tis may not have been intended by the WIPO Internet reaties: see generally

de Werra, above note at ; Burk,above note ; and Michael Landau, Hasthe Digital Millennium Copyright Act Really Created a New Exclusive Right of

Access? Attempting to Reach a Balance Between Users and Content ProvidersRights () J. Copyr. Socy USA .

Jane C. Ginsburg, From Having Copies to Experiencing Works: the Develop-ment of an Access Right in U.S. Copyright Law () J. Copyr. Socy USA, .

See for example Samuelson, above note ; and Kamiel J. Koelman, Te Protec-tion of echnological Measures vs. the Copyright Limitations (Paper Presented


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that the practical effect of this provision will be to create a right of accessto digital materials is a departure from existing copyright principles. Tedebate is simply about the length of this leap.

Te most dramatic legal and practical effects of Bill C-s paracopyright

provisions might result from section .(), which addresses services tocircumvent. Tis provision is shrouded in ambiguity. On the one hand, itcould be meant to cover the operation of a circumvention business, so tospeak. Japan, for instance, has adopted such an approach.Although theJapanese government has defined service much more clearly, the JapaneseCopyright Law prohibits all circumvention businesses, not just circumven-tion businesses with knowledge of eventual infringement, so this wouldnot be a model for Canada to follow.

Section .() of Bill C- could also be interpreted simply to closea loophole that might arise where a person arranges for someone else tocircumvent a technological measure rather than doing it him/herself, inessence like a principal and agent. In such a case, the principal may not beliable because he/she would not have circumvented the technical measure,and the agent may not be liable because he/she would not have had aninfringing purpose. Neither party would fall under section .(), butsection .() might apply. If that were the case, then section .()would not be much more or less objectionable than any of the other para-copyright provisions. Unfortunately, a court may not give this section sucha narrow interpretation. In fact, if this narrow interpretation is correct,the provision is probably unnecessary. Tere would be no loophole if thepurpose referred to in section .() includes another persons purpose.

to ALAI Congress, June ), . U.S. cases that raised this issue illustrate the breadth of effects thatparacopyright provisions could have on matters otherwise related to property,contract, and local commerce. In one such case, which ultimately rejected theplaintiffs claim, the Federal Circuit stated: the appropriate deterrents to this[circumvention] behaviour lie in tort law and criminal law, notin copyright law.See Chamberlain Group v. Skylink echnologies, F.Supp.d (N.D.Ill. ); F.d (CAFed ) at . Another U.S. case has been criticized for but-tressing a fairly naked attempt to use paracopyright law to replace the ordinary

rules of contract and commerce. See Dan L. Burk, Control of the Aftermarketthrough Copyright (-) Harv. J.L. & ech. , criticizingLexmark In-ternational, Inc. v. Static Control Components, Inc., () F.Supp. d (USDCE.Ky. ), F.d (C.A. Ky.).

See Copyright Law of Japan, above note , art. ; and Japan Update, above note .


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Tis is already the case with fair dealing one can deal fairly for anotherspurposes.Tus, .() could easily be removed from Bill C-.

Doing so would go a long way toward strengthening the arguments infavour of constitutional validity, as it would eliminate the drastic legal

and practical effects that could result from a possible broader interpre-tation. Tese provisions could otherwise revolutionize the principles ofthird-party liability for copyright infringement by replacing Canadaswell-settled rules governing the authorization of infringing acts with theAmerican doctrine of contributory infringement.Te Supreme Court hasexplicitly cautioned that such a move must be scrutinized very carefullybecause of some fundamental differences in copyright concepts betweenthe two countries.Such a sudden and radical shift may not be permitted

under Canadas Copyrights clause.Presently in Canada: a person does not authorize infringement by au-

thorizing the mere use of equipment that could be used to infringe copy-right,nor by manufacturing, distributing, or marketing equipment usedto infringe copyright unless there is a relationship of care and control.Bill C-, however, could result in liability for anyone who provides a ser-vice to circumvent. Te meaning of service is unclear. Copyright holdersare likely to argue that the effect is no different from the DMCAs ban on acircumvention technology, product, service, device [or] component.TeDMCAcontains a list of alternative factors that can bring a service withinits scope, whereas the proposed Canadian legislation would incorporatea requirement of knowledge of infringement. Under Bill C-, offering orproviding a service to circumvent is prohibited only if the provider knowsor ought to know that an infringement will result. Although this soundslike a high hurdle for plaintiffs, the evidentiary burden is really not oner-ous. Actual subjective knowledge is not required, as it is enough that theprovider ought to know the results of his/her actions. And despite the

CCH Canadian, above note . Sony Corp. of America v. Universal Studios, U.S. ();Metro-Goldwyn-

Mayer Studios Inc. v. Grokster, Ltd., F.d (CA th), S.Ct. ().As copyright expert Mark Hayes noted in his government-commissionedmemorandum: Te introduction of a regime to ban circumvention devices would necessitate some fundamental rethinking of Canadian copyright law. Hecalled this a fundamental change in Canadian law relating to infringing equip-

ment and authorization. Hayes, above note . Compo Co. v. Blue Crest Music Inc.,[] SCR . CCH Canadian, above note at para. . See also SOCAN v. CAIP, above note . CCH Canadian, above note at para. . DMCA, above note , (a)().


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apparent certainty of the word will (as opposed to could or might), thereasonable provider merely ought to know that an infringement (notsome or many) will result. Te number of non-infringing uses of the ser-vice would seem to be irrelevant under section .(), and it isnt clear

what steps a service provider must take to assure him/herself that no in-fringement will occur. Under existing Canadian law, a provider of prod-ucts or services that could be used for infringement is entitled to presumelawful use.Will that still be the case?

Lawsuits under the DMCAhave created the potential for what has beencalled tertiary or quaternary liability.Te legal effect of this two, threeor even four-step departure from existing Canadian copyright law would beto create a brand new form of civil liability under the auspices of the Copy-right Act. Even if the legal effects are not as drastic as feared, the uncertaintyalone may have a chilling effect on the technology sector as manufactur-ers and distributors seek to avoid litigation. Furthermore, there is also arelationship between section .() and section .(), as potential fairusers and other non-infringers may not have access to technologies that fa-cilitate the exercise of their rights. In sum, section .() unnecessarilyjeopardizes the constitutional validity of the entire scheme.

If circumvention is permitted under sections .() or .(), a per-sons subsequent use of the circumvented material may be prohibited undersection .(). Such a provision would seem redundant, as it is usually al-ready an infringement to distribute copyright material. o avoid the risk ofunintended consequences that might threaten the constitutionality of thenew scheme, this section might simply be eliminated from Bill-.

Te Bill also deals with rights management information, which is de-fined in subsection () as information that:

(a) is attached to or embodied in a material form of a work, a per-formers performance fixed in a sound recording or a sound re-

cording, or appears in connection with its communication to the

public by telecommunication, and

(b) identifies or permits the identification of the work or its author,

the performance or its performer, the sound recording or its mak-

er or any of them, or concerns the terms or conditions of its use.

CCH Canadian, above note . Mark A. Lemley & Anthony R. Reese, Reducing Digital Copyright Infringement

Without Restricting Innovation () Stan. L. Rev. , citing Landau,above note , and Burk, above note .


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It is noteworthy that the definition of rights management informationincludes information concerning the terms or conditions of the use of awork that may have nothing to do with the existence or scope of copyrightprotection. Apparently, information concerning any and all contractualterms will be protected, as long as the contract concerns a work protectedby copyright, neighbouring, or moral rights.

Te following two provisions prohibit tampering with RMI:

. () Te owner of copyright in a work is, subject to this Act,

entitled to all remedies conferred by law for the infringement of

a right against a person who, without the consent of the copyright

owner, knowingly removes or alters any rights management infor-

mation in electronic form that is attached to or embodied in anymaterial form of the work or appears in connection with its com-

munication to the public by telecommunication and knows, or ought

to know, that the removal or alteration will facilitate or conceal any

infringement of the owners copyright.

() Te owner of copyright referred to in subsection () has the

same remedies against a person who, without the owners consent,

knowingly does any of the following acts with respect to any materi-

al form of the work, and knows or ought to know that the rightsmanagement information has been removed or altered in a way that

would give rise to a remedy under subsection ():

(a) sells it or rents it out;

(b) distributes it to such an extent as to prejudicially affect the

owner of the copyright;

(c) by way of trade, distributes it, exposes or offers it for sale or

rental or exhibits it in public;(d) imports it into Canada for the purpose of doing anything re-

ferred to in any of paragraphs (a) to (c); or

(e) communicates it to the public by telecommunication.

Te anti-tampering prohibition in section .() may have significanteffects on the protection of personal privacy. Te definitions of PMs and,especially, RMI could protect computer programs that automatically col-lect personal information. As a result, it will be an infringement of copy-

right when a consumer tampers with or circumvents such a program andthen engages in any of the subsequent uses prohibited in sections .()and .(). Tis could, arguably, unduly trench on users privacy andproperty rights.


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Te last point to make about the effect of the proposed provisions con-cerns the nature of the remedy provided. Both sections . and .offer to a copyright owner all remedies by way of injunction, damages,accounts, delivery up and otherwise that are or may be conferred by law

for the infringement of a right . Tis is very broad. Te remedies avail-able seem not to be limited to remedies under the Copyright Act, but os-tensibly include all remedies conferred by any law. It would make sense tointerpret infringement of a right as meaning a copyright, neighbouring,or moral right. Tis should be clarified however, or the legal effect of thisprovision could have a broader scope.

C. ENUMERATED LEGISLATIVE POWERS

Te matter of PMs and RMI is not clearly allocated within the constitu-tional division of powers. Such paracopyright provisions raise issues ofinternational law, copyright, criminal, property, tort, contract, competi-tion, consumer protection, and other commercial law. In terms of the di-vision of powers, this implicates Copyrights, Property and Civil Rights,rade and Commerce, Criminal Law, and the Peace, Order, and Good Gov-ernment of Canada. As mentioned, there is considerable overlap between

these categories, and the idea that provincial and federal legislators mightshare responsibility over PMs and RMI systems is plausible.

Unfortunately, it is unclear what is the exact manner in which to as-sess constitutional validity at this stage of the analysis.Certainly, iftheGovernments proposal is in pith and substance within federal jurisdic-tion, there is no constitutional problem regardless of the degree to whichit may also affect a provincial power. Parliament can exercise its powersto the fullest extent necessary for effective regulation of areas within its

competence. But, at some point, the provisions will lose their link to fed-eral jurisdiction and become in pith and substance a provincial matter.

If the matter is in pith and substance within provincial jurisdiction, theGovernments proposal would seem to be constitutionally invalid. But, itis still possible that it might be salvaged if it is necessarily incidental toan overall valid federal scheme. Constitutional validity will then turnon just how far the provisions have trenched into provincial domain, and

Patrick J. Monahan, Constitutional Law, d ed. (oronto: Irwin Law, ) at.

Kitkatla, above note .


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how integral they are to the overall valid federal scheme.Given the Su-preme Courts advice that the approach must be flexible rather than tech-nical or formalistic,the following discussion simply highlights the keyconsiderations.

) Copyrights

Determining whether PMs and RMI are sufficiently linked to Copyrights,or whether the Governments proposal goes too far, requires an analysisof the scope of Parliaments authority under section (). Te difficultlyhere is the absence of judicial authority or academic commentary on point.In years of constitutional interpretation, courts have rarely touched

on Parliaments authority under the Copyrights clause.Academic com-mentary is similarly sparse.

Based on rough sketches of historical, international, conceptual andfunctional perspectives, it seems that the Copyrights clause gives Parlia-ment the authority to enact legislation with the aim and effect of pro-moting authors cultural expression. Neighbouring rights, protectingperformers, record producers, or other distributors are peripheral. Al-though their constitutional validity is often taken for granted, this has

never actually been settled.Similarly, moral rights may lie nearer to theedge of the Copyrights clause.

Ibid; see also General Motors, above note . Morgentaler, above note at . See for exampleSmiles v. Belford, [] O.J. No. (Ont. Ct. Chancery), affd

[] O.J. No. (Ont. C.A.); R. v. Ferguson, [] W.W.R. (B.C.C.A.);

Composers, Authors & Publishers Assn. of Canada v. Elmwood Hotel Ltd., [] Ex.C.R. ; Composers, Authors & Publishers Association of Canada, Ltd. v. SandholmHoldings Ltd., (), C.P.R. ;Bishop v. elemetropole Inc., (), C.P.R.(d) (F.C..D.);Doulton Canada Inc. v. Cassidys Ltd., [] F.C. ;Aldrichv. One Stop Video Ltd.(), B.C.L.R. (d) (S.C.); Society of Composers,

Authors and Music Publishers of Canada v. Landmark Cinemas of Canada, (), C.P.R. (d) ; Evangelical Fellowship of Canada v. Canadian Musical ReproductionRights Agency, [] F.C. (C.A.); Private Copying , above note ;and CPCC v. CSMAabove note .

deBeer, above note .

Ibid. See for example Wanda Noel & L.B.Z. Davis, Some Constitutional Consider-

ations in Canadian Copyright Law Revision () C.P.R. d . See for example David Vaver, above note ; and David Vaver, Authors Moral

Rights in Canada () IIC .


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Copyright, neighbouring, and moral rights holders, however, are onlypart of the equation. Te most important thing about copyright law iswhat it prohibits: copyrights, like all property or monopoly rights, limitwhat people can do.Copyrights are, by definition, constraints on individ-

uals rights.So Parliaments authority includes balancing encouragementfor authors against the social interest in dissemination, and against otherindividuals basic property, contractual, and constitutional rights. Notethat there are three spheres of interests, not two,that require balancing:creators, the general public, and individual consumers.

Balance is a fundamental principle in copyright law, but it is alsoconstitutionally mandated. It might be fine to say that authors interestand societys interest both fall within the scope of Parliaments power

over Copyrights. However, we are not merely pitting copyright againstthe broad and perhaps vague public interest. We are measuring copyrightagainst other identifiable rights human rights, contractual rights, andclassic property rights.In fact, this is what Tberge was all about. TeCourt had to weigh one right (a copyright) against another (a classic prop-erty right). Tis aspect of balance implicates not just Copyrights but alsoProperty and Civil Rights.

Accordingly, provincial authority over Property and Civil Rights marksthe boundary of valid federal Copyrights laws. Tis is not to say that allCopyrights legislation is an invalid intrusion into a provincial head ofpower. Parliament may trench into provincial jurisdiction as an incidentalconsequence of legislating within its constitutional domain. But, at somepoint, there is a line that cannot be crossed. Because this is not a brightline, difficult cases arise at the margins legislation in respect of PMsand RMI systems is an example. In borderline cases, the Supreme Courthas candidly noted that the courts must seek to maintain an appropriatebalance. . . between the federal and provincial heads of power.Granted,this sort of balance is different from the traditional balancing for policyreasons, but it would nevertheless be fair to say that balance is constitu-tionally entrenched in Copyrights law.

Jeremy Waldron, From Authors to Copiers: Individual Rights and Social Valuesin Intellectual Property () Chi.-Kent L. Rev. at .

deBeer, above note .

Ibid. Above note . See deBeer, above note . Reference re: Firearms Act, [] S.C.R. at para. [Firearms Reference],

cited in Monahan, above note [emphasis added].


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In light of the above analysis of the purpose and effects of the Govern-ments proposed legislation, it could be difficult to characterize it as, inpith and substance, falling within Parliaments authority over Copyrights.Indeed, the relationship between paracopyright provisions and Copy-

rights seems to be based on a few tenuous links: the putative purpose offacilitating the commercial distribution of works subject to copyright inorder to indirectly encourage authors cultural creativity, the legally am-biguous and perhaps practically meaningless limitations on the effects,and the fact the provisions will be introduced through amendments to theCopyright Act.

However, even if the proposed paracopyright provisions are not them-selves a matter of Copyrights, they may be necessarily incidental to

validly enacted federal legislation. Tere are three questions to consider:do the provisions trench into provincial jurisdiction, are they part of anoverall valid federal legislative scheme, and are they sufficiently integrat-ed with that scheme to be upheld.Since the Governments proposal doesseem to trench into provincial jurisdiction over Property and Civil Rights,and we are in presence of an overall valid federal legislation, the CopyrightAct, the crux of the issue is whether the proposed provisions will be suf-ficiently integrated with the Copyright Actto withstand scrutiny.

In different contexts, courts have set down different requirements forsufficient integration. As put by Dickson C.J. in General Motors, we mustdecide what test of fit is appropriate. Fit, according to Dickson C.J.,looks at how well the provision is integrated into the legislation and howimportant it is for the efficacy of the legislation as a whole. On the facts ofGeneral Motors, the Court upheld the impugned legislation as functionallyrelatedto the general objective of the legislation. By comparison, in Vapor,the Court held that the provision in question was entirely unconnected tothe overall scheme.Other possible tests include rational and functionalconnection,ancillary, necessarily incidental and truly necessary,an intimate connection, an integral part or a complementary pro-

Kitkatla, above note , at para. . General Motors, above note at paras. . Ibid.at paras. . Papp v. Papp, [] O.R. ; R. v. Zelensky, [] S.C.R. ;Multiple Access

Ltd. v. McCutcheon, [] S.C.R. [Multiple Access]. Regional Municipality of Peel v. MacKenzie, [] S.C.R. ; R. v. Tomas Fuller

Construction Co.() Ltd., [] S.C.R. . Northern elecom Ltd v. Communications Workers of Canada,[] S.C.R. ;

Clark v. Canadian National Railway Co., [] S.C.R. .


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vision. In essence, there is really a spectrum of possible tests withvarying degrees of scrutiny that one could apply to determine whether aprovision is sufficiently integrated with an overall valid legislation.

Applying the GMfunctionally related test for integration, paracopy-

right provisions could be upheld if it was successfully argued that the ul-timate, albeit indirect, objective was to encourage authors. Such being thesame objective as the Copyright Actas a whole, paracopyright provisionswould be tools permitting the statute in general to be more workable andefficient. However, this relies on a series of assumptions about the meritsor demerits of pp networks, the role of corporate intermediaries in thecreative and distribution process, and the relationship between technol-ogy, contract, and copyright. Even on the lowest threshold of integration,

therefore, Bill C-s paracopyright provisions may fail.Certainly, paracopyright provisions are by no means truly necessary

and do not have an intimate connection with the rest of the Act. Tey areclearly not pivotal. Te Copyright Act operates reasonably well as it is, with-out such provisions. Cases are now working their way through the courts,indicating that copyright law provides plenty of protection for creatorsand distributors of digital content.Obviously, these provisions would beeasily severable from the Act.

Precisely which test of fit will be applied all depends upon how farthe provision intrudes on provincial powers. A provision that encroach-es marginally may only require a functional relationship, whereas ahighly intrusive provision calls for a stricter test. Te more the provi-sion creeps into the other governments jurisdiction, the harder it will beto sustain its validity.

Given the degree to which the Governments proposal trenches intoprovincial jurisdiction over Property and Civil Rights, as discussed below,it is possible although far from certain that these paracopyright pro-visions can be sustained as valid federal legislation under the Copyrightsclause. Of course, if the proposal was modified to take account of the con-cerns expressed in this paper, the odds that the legislation would with-stand constitutional scrutiny might be increased. Certainly, any broader

MacDonald v. Vapor Canada Ltd., [] S.C.R. [Vapor Canada].

Record producers have and will continue to sue under existing copyright law,and have applauded the blueprint for doing so, which was recently providedby the Federal Court of Appeal inBMG Canada Inc. v. Doe, FCA , .

General Motors, above note at paras. .


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provisions would exacerbate the constitutional problems. At least, there-fore, Bill C- should not be broadened either by the relevant legislativecommittee before it is enacted or by the courts after it becomes law.

) Property & Civil Rights

Property and Civil Rights has been interpreted to be among the broad-est of all the constitutional heads of power. Monahan notes that startingwith Citizens Insurance Co. v. Parsonsthe Privy Council began to definethe provinces power so as to virtually encompass the entire field of law-making apart from criminal law.Some might argue, however, that theprovinces have jurisdiction over Property and Civil Rights, except inso-

far as Copyrights or certain aspects of rade and Commerce are involved.While this is generally true to some extent, the lines between these cat-egories are far from clear. And, as mentioned, there is a line that cannotbe crossed.

It was suggested above that Bill C-s paracopyright provisions may betangentially linked to Copyrights, and despite their intrusion into Prop-erty and Civil Rights, could stand if they are sufficiently integrated withan overall valid legislative scheme. However, this may actually state the

matter backwards. Te Governments proposal might instead fall mainlyon the provinces side of the grey area between Copyrights and Propertyand Civil Rights. In this light, legislation in respect of PMs would seemto be in pith and substance a matter of Property and Civil Rights, givingthe provinces the right to trench incidentally into Copyrights. It wouldnot seem to be in pith and substance Copyrights, which would give thefederal government the right to trench incidentally into Property and Civ-il Rights. When the true character of the proposed provisions is revealed,

this might appear to some to be a colourableattempt to expand theboundaries of Copyrights in a constitutionally impermissible manner.

At least, this might be an instance where the double aspect doctrinemight apply. Tis doctrine, although not extinct, is rarely used.Never-theless, in this case, even if PMs and RMI systems were mainly a matter

(), App Cas. . (P.C.). Monahan, above note at .

Switzman v. Elbling, [] S.C.R. at . Bell Canada v. Qubec (Commission de sant et de la scurit du travail du Qubec),

[] S.C.R. ; Rio Hotel Ltd. v. New Brunswick (Liquor Licensing Board), [] S.C.R. ;Multiple Access, above note ;Hodge v. Te Queen(), App.Cas. ; Russell v. Te Queen(), App. Cas. .


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of Copyrights, the provinces should still have a role to play. Undoubtedly,there are significant consumer protection issues to address; PMs andRMI systems raise important questions about e-commerce and contract-ing on and offline. If the federal government is not interested in legislat-

ing in respect of these important topics, the provinces can and should.Provincial Attorney Generals must therefore get involved in this copy-

right debate. Tis will broaden the base of stakeholders contributing to theconversation, hopefully leading to a well-reasoned and workable frame-work to govern PMs and RMI systems. Tis would surely be a positivedevelopment from the perspective of copyright law reform. Indeed, this isone of the primary goals of Canadian federalism as well: Te advantageof a decentralized federal system, then, is that it maximizes opportunities

for effective citizen participation.If the provinces were to get involved,the public good would be more strongly felt and abuses would be less ex-tensive.

) Trade and Commerce

If the Governments paracopyright provisions are to be upheld, a strongerargument might be made based upon Parliaments rade and Commerce

power than its Copyrights power. Te aforementioned Parsonscasead-dressed the line between Property and Civil Rights and rade and Com-merce. Te Privy Council divided the federal governments rade andCommerce power into two branches: first, inter-provincial or internation-al trade, and second, commercial matters affecting the whole dominion.

Parliament has the sole jurisdiction over goods, people, capital, or ser-vices crossing Canadian or provincial territories for the purpose of tradeor commerce. But the federal government has no authority over intra-pro-

vincial trade. Courts have considerably restricted Parliaments ability toregulate local trade, even if doing so is necessarily incidental to effectiveregulation of inter-provincial or international trade.Parliament can al-most never affect issues such as the production or marketing of a productthrough federal legislation.

Richard E. Simeon, Criteria for Choice in Federal Systems (-)

Queens L.J. at . Ibid., citing Montesquieus view. Above note . Monahan, above note at . Ibid.


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Tis places a significant constraint on the federal government when itcomes to enacting provisions that purport to regulate persons who offercircumvention services. More generally, recall that PMs enforce con-tracts governing the sale of digital content, which can either be embed-

ded in a physical medium or distributed electronically via the Internet. Anencrypted DVD sold pursuant to certain express or implied conditions isan example of the former, a paid download from the Apple iunes MusicStore an example of the latter.

In terms of distributed physical content, it is difficult to say this isa matter of inter-provincial or international trade. Most aspects of thetransaction take place within a particular province. Electronic commerce,however, raises novel questions. Both the federal government and the

provinces have legislated in this area, although both in a general manner.Te federal Personal Information Protection and Electronic Documents Actisexpressly qualified so as to apply only to electronic alternatives in respectof federal laws. Te Ontario E-Commerce Act,on the other hand, appliesmore broadly. It is presently unclear how a jurisdictional scuffle in thisarea might be resolved.

As for commercial issues affecting the whole dominion, General Motorsis a leading authority.According to then-Chief Justice Dickson, thereare five criteria for this second branch to apply. For federal legislation tobe a valid exercise of the Parliaments jurisdiction over the general tradebranch of trade and commerce, the act or section must be: () part of ageneral regulatory scheme; () monitored by the continuing oversight of aregulatory agency; () concerned with trade as a whole rather than with aparticular industry; () of a nature that the provinces jointly or severallywould be constitutionally incapable of enacting; and () jeopardized bythe failure to include one or more provinces or localities in a legislativescheme.Chief Justice Dickson also indicated that these criteria are notdeterminative, and that the main factor to consider was whether the issuebeing addressed was a national economic concern and not just a collec-tion of local ones.

Personal Information Protection and Electronic Documents Act, , c. , .

Electronic Commerce Act, , S.O., c. , .

General Motors, above note . Ibid. at ; Vapor Canada, above note . General Motors, above note at


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It would be an uphill battle to convince any court that the matter ofPMs and RMI systems affects the whole dominion. Aside from the factthere is no complete regulatory scheme, nor any regulatory agency over-seeing this issue, this issue does not affect trade as a whole. It mainly af-

fects the business models of record producers, motion picture studios, anda limited number of other entities that distribute particular types of digi-tal products. Moreover, the provinces have demonstrated their ability toregulate other aspects of commerce, particularly electronic commerce. Teexclusion of a particular province would not jeopardize effective regula-tion of PMs and RMI systems.

) Criminal law

Generally speaking, there are three indicia of valid federal legislation inrespect of Criminal Law: there must be a prohibition of certain activity;the prohibition must be accompanied by a penalty for breach; and the lawmust be enacted for a criminal . . . public purpose, defined as includ-ing [p]ublic peace, order, security, health, morality.Copyright law inCanada and abroad does incorporate some criminal sanctions. One mightargue that the paracopyright provisions could stand under the Criminal

Law power, given that there is clearly a prohibition and that there appar-ently are penal consequences for breach of the prohibition. Te copyright,neighbouring, or moral rights holder will be entitled to all remedies con-ferred by law for the infringement of a right. However, even the CanadianRecording Industry Association, one of the principal lobbyists for toughercopyright laws, agrees that this matter is not and should not be aboutcriminal law sanctions.

In the Margarine Reference,legislation prohibiting dealings in marga-

rine was enacted in order to protect the dairy industry by banning productsthat would compete with butter. Tis was not a valid Criminal Law purpose.Similarly, legislation protecting the copyright industries has an economicpurpose of regulating commercial dealings between private parties.

Monahan, above note at , citing Reference re Dairy Industry Act (Canada)S.(a), [] S.C.R. at [Margarine Reference].

Te Associations president, Graham Henderson, said on CVs Canada A.M.

the week prior to the tabling of the proposed legislation: Tis isnt providinga criminal remedy. Its a civil remedy. I dont think anybody would wantto get into the business of applying criminal sanctions to -year-olds who aredownloading music or film products. .

Above note .


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On the other hand, the Supreme Court has given Parliament muchleeway with the amorphous concepts such as health and morality underCriminal Law. Tis stands in contrast to the constraints it has imposedon the rade and Commerce power, for example.Terefore, although it

would be intuitively difficult to see this as a matter affecting public peace,order, security, health or morality, the breadth of Parliaments CriminalLaw power could conceivably support the Governments proposal.

) Peace, Order, and Good Government of Canada

Parliaments power to legislate for the Peace, Order, and Good Governmentof Canada () encompasses at least three areas: new matters, emergen-

cies, and issues of national importance. Courts are now very reluctant toallow federal jurisdiction over new matters, as such matters usually touchupon other heads of power. Despite the cutting-edge nature of somePMs, the emergence of new RMI systems and the modern phenomenonof pp networking, these are clearly not new matters for constitutionalpurposes; they can surely be linked to existing heads of power.

A court last applied the emergency power in the Anti-Inflation Refer-ence.It would be inapplicable here since Bill C-s paracopyright provi-

sions are not temporary. Moreover, it would be inappropriate to say thatcircumvention is an emergency that warrants the exercise of Parliaments powers.

If the underlying problem addressed by paracopyright provisions isto be considered a matter of national importance, the Government mustmeet the test set in R. v. Crown Zellerbach. Tis means it must have asingleness, distinctiveness and indivisibility that clearly distinguishes itfrom matters of provincial concern and a scale of impact on provincial

jurisdiction that is reconcilable with the fundamental distribution of leg-islative power under the Constitution.It is doubtful this issue is a mat-ter of national importance unless, however, it could be shown that this

Monahan, above note at , citing cases such as RJR-MacDonald Inc v Canada(A.G.),[] S.C.R. .

Te Supreme Court last applied this concept in R. v. Hauser, [] S.C.R. ,

where the Court held that theNarcotic Control Actwas a valid expression ofParliaments power because it dealt with a genuinely new problem.

Reference re Anti-Inflation Act,above note . R. v. CrownZellerbach,[] S.C.R. . Ibid.at para. .


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branch of the power includes the authority to implement interna-tional treaties.

Recall that the stated purpose of Bill C- is to implement the WIPOInternet reaties into Canadian domestic law. An argument could be made

although it has never yet been successful that Parliament has con-stitutional authority to implement international treaties, regardless ofwhether the subject matter would otherwise fall within provincial juris-diction.

It is accepted that the federal government has the power to make trea-ties on