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UBC Law 422.002
INTELLECTUAL PROPERTY
CopyrightLecture 5
Jennifer A. [email protected]
604-676-8967
www.patentable.com/lectures
Last Class
Neighbouring Rights Ownership and Assignment Term and Registration Infringement
Types of works Secondary infringement
Recap: Neighbouring Rights
Performer’s Performance – ss. 16 and 26 Broadcasters of Communication Signals – s. 21
Both receive some rights without need for fixation
Makers of Sound Recordings – s. 18
Right to equitable remuneration for public performance or telecommunication to public: s. 19
Shared equally between performer and maker of sound recording
NOT a right to prevent public performance (c.f. s. 3)
Recap: Ownership/Assignment
Ownership of © Generally author is first owner, but in some
circumstances will not be (ss. 13(1)-(3)) Note s. 14 reversionary right – 25 years after death
of author, © reverts back to their estate Photographs – owner of negative: s. 10
Assignment Must be in writing, signed by owner of ©: s. 13(4) Moral rights can be waived but not assigned: s.
14.1(2)
Recap: Ownership Works made by employee in course of
employment, employer will own © (s. 13(3)) Control test: servant is person who is subject to
the commands of his master as to the manner in which he shall do his work University of London Press
skilled persons may be employees even if employer cannot tell them how to do their work
Integration test: consider if activities are an integral part of the business, or only an accessory to it
Entrepreneur test: is employee in business for his own account – look at ownership of tools, who pays helpers, chance at profit, risk of loss
Recap: Joint Authorship Neudorf v. Nettwerk Productions
Person who merely contributes ideas is not a joint author
Joint authorship requires common intention
Test for joint authorship:1) must contribute original expression, not merely ideas2) contribution must be significant and substantial (but need
not be equal)3) authors must intend that the work be merged into a unitary
whole (mutual intention)4) authors must intend that the others are joint authors
(mutual intention)
Recap: Term
Term – generally life of the author + 50 years (s. 6)
But other terms apply for joint authors (s. 9), anonymous/pseudonymous works (s. 6.1)
Photographs: depends on whether first owner of © is corporation or natural person (s. 10)
Cinematographic works: s. 11.1 depends on “dramatic character”
Recap: Registration
Registration is optional, but benefit from evidentiary presumptions in s. 53:
That © subsists That registrant is the owner Also rebuts innocent infringement defence
(see s. 39(2)) But need to register before infringing work is
available to benefit: see Grignon v. Roussel Can record assignments for priority purposes (s.
57(3))
Can also benefit from s. 34.1, even in the absence of a registration: if D puts in issue, unless otherwise proven © presumed to subsist Author presumed to be owner
Recap: Infringement Infringement
Must establish π is owner of © in the work And Δ copied a substantial part of the work
Access must be proven Independent creation is complete defence
If you have surprising similarity without other explanation, can raise an inference of copying
shifts onus to Δ
3 year limitation period: s. 41
Recap: InfringementLiterary works
Preston v. 20th Century Fox – Space Pets script not substantially reproduced by Return of the Jedi
Drew on common sources Ewok character not copyrightable:
Must be sufficiently well defined Must also be well-known
Dramatic Works Nichols v. Universal Pictures – recognize there could be
infringement by taking plot, even without taking of any dialogue Roy Export Co. v. Gauthier – infringement by importation (s. 27(2))
Δ was not the one engaging in public performances of the cinematographic works, but had imported work to rent out
Did not matter that work was in the public domain in the US Knowledge of infringement given by letter from π’s counsel
Recap: Infringement Secondary Infringement: s. 27(2)
must be a primary infringement person must know or should have known
that the work is infringing must show secondary dealing (i.e. one of
the acts enumerated in s. 27(2))
See e.g. Roy Export Co. v. Gauthier Notice of infringement given by letter from
counsel
Recap: Infringement Musical Works
Recognize possibility of subconscious copying But π must still prove (or provide evidence to draw a
strong inference) of familiarity with the work alleged to have been copied
Grignon v. Roussel – fairly clear proof of access
Copying found Recognize that originality in the realm of popular
music lies within a narrow scope – slight variations can be original
Recap: Infringement
Infringement – artistic works Kaffka v. Mountainside Developments –
old definition of “architectural work of art” applied
Fact that P was the only one able to obtain planning approval was significant in showing requisite artistic character
Théberge – notion that “reproduction” requires multiplication
changing the medium on which work is displayed did not infringe economic rights
Recap: Damages s. 34 sets out available remedies
damages for P’s own loss and D’s profits: s. 35 Recovery of infringing copies: s. 38
Only a copy that infringes economic rights is “infringing”: Thberge
Statutory damages: s. 38.1 Innocent infringement: injunction only remedy
where D not aware of ©: s. 39(1) Exception does not apply where copyright
registered: s. 39(2) Also costs, pre- and post-judgment interest
See Kaffka v. Mountainside Developments Damages are at large – assess as a matter of
common sense loss of ability to enhance reputation (not loss of
reputation) Also punitive/exemplary damages
Today
Infringement By Importation Exceptions to Infringement (Fair Dealing) Collective Administration of Rights
Exam Review
Infringementby Importation
Infringement by Importation Even if a person does not make copies of the work, can still be liable for secondary infringement: see s. 27(2)
Fly by Nite – 'deleted' albums legitimately purchased in the U.S. for resale in Canada
Infringed by importing copies that would have been infringing, had they been made in Canada
Note Kraft Canada v. Euro Excellence – exclusive licensee cannot sue copyright owner for infringement
Authorizing Infringement
Infringement - Authorization s. 3 gives right to “authorize” the listed acts
UK approach: “authorize” means “sanction, approve, countenance”
to grant to a third person, or purport to grant, the right to do the act complained of
merely supplying the means which make infringement possible not enough if no control over the means
e.g. sale of dual cassette recorders including hi-speed dubbing feature in CBS Songs v. Amstrad
c.f. Australian illustrated by Moorehouse - must take steps to prevent infringement
Provision of photocopiers authorizes infringement
Infringement - Authorization Canada follows UK approach See excerpts from CCH and Tariff 22
not infringe to authorize an act that is not an infringement Presumption that a person who authorizes does so only as far
as is in accordance with the law “authorize” means “sanction, approve and countenance”
i.e. give approval to, sanction, permit; favour, encourage Can infer authorization from acts amounting to a
sufficient degree of indifference e.g. if ISP has notice it is hosting infringing content
Australian position shifts balance too far in favour of copyright owners
Infringement and the Internet
Infringement – Communications Via Internet
SOCAN v. Cdn. Assn. of Internet Providers (“Tariff 22”) SOCAN sought to impose liability for royalties on
ISPs in Canada, irrespective of where the transmission originates
Various activities at issue: Communication of work Host server role of ISPs Caching Hyperlinks (and automatic hyperlinks)
Infringement – Communication Via The Internet
The statutory framework: s. 2 “telecommunication” s. 3(1)(f) – telecommunication to the public
Internet communication is made “to the public” because files made available openly and without concealment, to be conveyed to all who might access
s. 2.4(1)(b) – person does not communicate the work or other subject matter to the public if only act consist of providing the means of telecommunication necessary for another person to so communicate the work
s. 2.3 – communication to public by telecommunication is not a performance in public
“communicate” means to impart or transmit Generally only the person who posts a work communicates it
telecommunication occurs when music is transmitted from host server to end user
Infringement – Communication Via The Internet
How to determine when a telecommunication occurs in Canada? Test is the “real and substantial connection test” For communications on the Internet, consider:
situs of content provider situs of host server situs of intermediaries situs of end user
Recognize that this results in overlapping jurisdiction Art. 8 of WCT and making available right would avoid this
overlap; not yet implemented in Canadian law
Infringement – Internet Communications
Consider liability of ISPs for copyright infringement: s. 2.4(1)(b) protects those who serve as intermediaries “necessary” means reasonably useful and proper to
achieve the benefits of enhanced economy and efficiency
ISP protected so long as it does not engage in acts that relate to content
e.g. acting as host server, use of caching, etc., are content neutral
but embedding hyperlinks that automatically lead to a work may infringe
knowledge of infringing nature of content is a factor to consider
Consider also the impracticality (technical and economic) of monitoring the large amount of material disseminated via the Internet
Infringement – Internet Communications
Potential liability for other functions of ISP Acting as host server
Not liable where no knowledge of content But potentially liable for authorizing infringement to the
extent ISP has notice of allegedly infringing content Caching
Content neutral Dictated by need to deliver faster and more economic
service Therefore is “necessary” and falls within s. 2.4(1)(b)
Providing hyperlinks Board found creation of an automatic hyperlink by a
Canadian ISP attracts copyright liability Is not a communication, but authorizes communication
by telecommunication
Exceptions to Infringement
s. 29 – for research or private study s. 29.1 – for the purpose of criticism or review
Provided source and name of author (if given in source) are mentioned
s. 29.2 – for the purpose of news reporting
Provided source and name of author (if given in source) are mentioned
Are further exceptions for educational institutions (s. 29.4 to 30); libraries, archives and museums (s. 30.1 – 30.5); and further exceptions (s. 30.6 – 32.3)
Exceptions to Infringement – Fair Dealing s. 29, 29.1, 29.2
Exceptions to Infringement – Fair Dealing
Only consider exception where there would otherwise be infringement (i.e. substantial reproduction)
Onus on defendant to show it can rely on exception
Must be both fair and for one of the listed purposes: see CCH
For s. 29.1 or 29.2, must also comply with requirements of section
CCH – making single copies for purposes of legal research was fair dealing, even though it was for a commercial purpose
Exceptions to Infringement – Fair Dealing
Research or private study – CCH Large and liberal interpretation Not limited to non-commercial contexts Legal research is still research
Sampling of music downloads has been held to be research: 2010 FCA 123
SCC heard appeal Dec. 2011
Exceptions to Infringement – Fair Dealing
Factors to consider in assessing fairness: CCH ¶53 Purpose of the dealing
Must be allowable purpose; commercial use can still be fair Character of the dealing
e.g. making single copy and destroying after use Amount of the dealing: taking whole work generally not fair
But no per se rule Alternatives to the dealing
But do not consider availability of a license as a factor Nature of the work – published or unpublished
Publication leads to wider dissemination, but not fair if work is confidential
Effect of the dealing on the copyright work e.g. does the copy compete with the market for the original work
Making a copy for someone else’s fair use is OK
Exceptions to Infringement – Fair Dealing
University of London Press Copying of entirety of mathematics exams
was not fair dealing Although useful for education, copying
was not done for educational purposes Although papers were criticized, additional
information provided was minimal
Exceptions to Infringement – Issue of Parody
Is parody a criticism? Compare US (Pretty Woman parody – Campbell
v. Acuff-Rose) and Canada Michelin v. CAW case
US law encourages transformative use, new creation
Distinguish transformative work, which supersedes an original, from a derivative work, which includes major components of the original and which infringes
Canadian law more protective of copyright owner Do not permit appropriation of private property (i.e.
copyright works) for purposes of expression
Exceptions to Infringement – Issue of Parody
Michelin v. CAW Michelin failed on trademark issues: no “use” But succeeded on the copyright issues
• court rejects that parody is criticism “criticism” connotes analysis and judgment of another work
that sheds light on the original The union’s Bibendum was not a new creation; was not
sufficient to “bestow mental labour” on the work to avoid infringement
CAW did not mention the source and author’s name “mention” requires more than passive/implicit
acknowledgement did not treat work in a fair manner (i.e. good faith)
“good faith” = free from discrimination, dishonest, impartial
Exceptions to Infringement – Issue of Parody
Consider how this case balances freedom of expression with copyright protection
– Note that position on parody has not changed: see e.g. Canwest v. Horizon, 2008 BCSC 1609, where court held that parody and freedom of expression could not be a defence to a claim for copyright infringement
Collective Administration
Collective Administration
Very difficult to identify and contact individual copyright owners to seek permission to use a work
Often rights assigned to collective societies
Single point of contact for a person wishing to use any works within the society’s repertoire
Many different such societies
Summary of Lecture 5
Recap: Authorization
Authorizing infringement – “authorize” means sanction, approve, countenance CCH, Tariff 22
Could infer authorization from sufficient acts of indifference
e.g. consider if ISP has knowledge that an infringing work is posted on its host server
Recap: Internet Communications on the Internet: Tariff 22
Person who posts communicates the work Work is telecommunicated when music is transmitted
from host server to end user Communication occurs in Canada if it has a real and
substantial connection to Canada Look at situs of content provider, host server, intermediaries,
end user
s. 2.4(1)(b) protects activities of intermediaries such as ISPs, provided they are content neutral
Caching is “necessary” for efficiency, therefore falls within s. 2.4(1)(b)
Recap: Fair Dealing Fair dealing: ss. 29, 29.1, 29.2
Note requirement to mention source and author in ss. 29.1 and 29.2
Dealing must be both fair and for the listed purposes: CCH Purpose of dealing Character of dealing Amount of dealing Alternatives to dealing Nature of work – published or unpublished Effect of the dealing on the copyright work
Mere fact taking is for educational purposes does not make it fair: University of London Press
Parody is not fair dealing in Canada: Michelin v. CAW c.f. Bill C-11
EXAM REVIEW