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McCarthy Tétrault S.E.N.C.R.L., s.r.l. / mccarthy.ca McCarthy Tétrault Advance™ Building Capabilities for Growth Barry B. Sookman [email protected] 416-601-7949 January 22, 2015 LSUC: The Year in Review 2014: Copyright 14066455 [Full Version]

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  • McCarthy Ttrault S.E.N.C.R.L., s.r.l. / mccarthy.ca

    McCarthy Ttrault Advance Building Capabilities for Growth

    Barry B. Sookman

    [email protected]

    416-601-7949 January 22, 2015

    LSUC: The Year in Review 2014: Copyright

    14066455 [Full Version]

  • McCarthy Ttrault S.E.N.C.R.L., s.r.l. / mccarthy.ca 14066455

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    Legislative Developments

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    WIPO Internet Treaties ratification

    WPPT and WIPO ratification August 13, 2014

    WPPT Notification No. 86 Ratification by Canada

    WCT Notification No. 81, WIPO Copyright Treaty Ratification by Canada

    Making available right (MAR) for foreign sound recordings in effect on

    August 13, 2014

    Statement Limiting the Right to Equitable Remuneration of Certain Rome

    Convention or WPPT Countries, SOR/2014-181 July 14, 2014

    Certain limitations to right to collect equitable remuneration for sound

    recordings for makers of following countries: Barbados, Bolivia, Cabo

    Verde, Congo, Costa Rica, Japan, Lebanon, Lesotho, Monaco, Peoples Republic of China (including Hong Kong and Macao), Singapore, United

    States, and Vietnam

    U.S., radio broadcasts of terrestrial radio stations, (excluding

    transmissions by Internet, satellite, and mobile devices), background

    music for businesses (subject to restrictions), pre-1972 sound

    recordings.

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    Notice and notice

    Order Fixing the Day that is Six Months after the Day on which this Order

    is published as the Day on which Certain Provisions of the Copyright Act

    Come into Force, P.C. 2014-675 June 12, 2014

    Explanatory Note:

    The notice and notice regime will legally require Internet intermediaries, such as Internet Service Providers (ISPs), hosts and search engines, to

    take action upon receiving a notice of alleged infringement from a

    copyright owner

    the Government is bringing into force these provisions after determining

    that the regime will function without regulations, as the elements in the

    legislation are sufficient

    To provide Internet intermediaries the time needed to implement or modify

    their systems before the provisions are in force, the provisions will come

    into force six months after the publication of this Order in Council. (January 2, 2015)

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    Combating Counterfeit Products Act

    Bill C-8, Combating Counterfeit Products Act received royal assent, December 9, 2014.

    In force, December 9 2014 effective on royal assent, (copyright related) Sections

    27(2.11), (2.12), 42(e-g), 59(1)(d.1).

    Civil: S.27 (2.11) It is an infringement of copyright for any person, for the purpose of

    doing anything referred to in paragraphs (2)(a) to (c), to export or attempt to export a

    copy of a work, sound recording or fixation of a performers performance or of a communication signal that the person knows or should have known was made without the consent of the owner of the copyright in the country where the copy was

    made.

    Criminal: Section 42 (e) and (g) possesses, for sale, rental, distribution for the purpose of trade or exhibition in public by way of trade, an infringing copy of a work or other

    subject-matter in which copyright subsists; and (g) exports or attempts to export, for sale or rental, an infringing copy of a work or other subject-matter in which copyright

    subsists.

    Criminal Code; 59. (1) The definition offence in section 183 of the Criminal Code is amended by adding (d.1) section 42 (offences related to infringement of copyright of the Copyright Act, to enable police to seek judicial authorization to intercept private communications in investigations relating to those offences. See, Legislative Summary

    of Bill C-8.

    5

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    Combating Counterfeit Products Act

    Order Fixing January 1, 2015 as the Day on which Certain Provisions of the

    Act Come into Force, P.C. 2014-1451 December 12, 2014

    Fixed January 1, 2015 as the day on which sections 2, 5 and 6, subsection

    7(6) and sections 43, 44 and 60 of that Act come into force.

    The Act enacts new border enforcement measures, which will include the creation of a request for assistance (RFA) system and the enabling of

    customs officers to detain goods suspected of infringing copyright or

    trademark rights. The Act also amends subsection 107(5) of the Customs

    Act to allow customs officers to share certain information relating to the

    detained goods with rights owners. These new border measures will

    further support the civil enforcement of these intellectual property rights by

    giving the rights owners the information and assistance necessary to

    pursue a remedy in civil court or to reach an out-of-court settlement with

    importers and exporters of infringing goods.

    Note, not all parts of Bill C-8 are in force.

    6

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    Canadian Artists Representation v. National Gallery of Canada, 2014 SCC 42

    Whether artists associations are precluded from bargaining minimum fees for use of existing artistic works in agreements negotiated under Status of the Artist Act as being

    a conflict with the Copyright Act.

    The collective bargaining conducted by artists associations such as CARFAC/RAAV under the SAA in respect of scale agreements covering existing artistic works does not

    contradict any provision of the Copyright Act. Artists associations are simply bargaining agents. They have not taken or granted, and do not purport to have taken or granted,

    any assignment or exclusive licence, or any property interest, in any artists copyright.

    Artists therefore have two options when dealing with federal governmental producers for the use of their existing works. One option is to assign or license their copyright to a

    collective society or appoint that society as their authorized agent. In that case, tariffs

    set under the Copyright Act, and not the SAA and any scale agreements for their

    sector, will apply to the works. The other option is to deal directly with the producer, in

    which case they will be bound by any applicable SAA scale agreements. Within this

    option, artists may either accept the minimum fees, terms and conditions set out in the

    scale agreements and model contracts, or they can attempt to negotiate higher fees or

    more favourable terms.

    7

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    Subsistence, Authorship and Ownership

    8

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    Geophysical Service Incorporated v. Canada-Nova-

    Scotia Offshore Petroleum Board, 2014 FC 450

    Was GSIs processed seismic data in SEG-Y format infringed by a seismic line published by the Board where 8.5% of the data was derived from GSIs data?

    No copyright can subsist in geophysical data or seismic data. The copyright must exist in the compilations analysis thereof

    I think there remains at least a serious issue over copyright ownership given all the facts that otherwise demonstrate GSIs ownership of the data and major role in its collection and compilation.

    However, I agree with the respondent that there appears to be no serious issue about the alleged infringementgiven the lack of any objective similarity between the infringing work and the copyrighted work, or at least a substantial part thereof,

    for Figure 5.5 to be described as a copy, reproduction or adaptation of the latter.

    Given the limited contribution of the applicants data to Figure 5.5 and its extensive manipulation and reworking by the Board, with the overwhelming majority of the

    data being provided from other sources, I do not find that Figure 5.5 constitutes a

    reproduction or adaptation such as to constitute an infringement of GSIs copyright.

    9

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    Denturist Group of Ontario v. Denturist

    Association of Canada, 2014 FC 989

    Does copyright subsist in the five-digit numerical codes and corresponding

    description of denturist services contained within the DAC Procedures Codes and

    DAC fee Guides?

    There is no question that the five-digit codes are functional Further, the descriptions of the services associated with the codes are primarily functional in

    nature as well. Moreover, the five-digit codes and associated service descriptions

    are required by third party insurers and service providers in order for all denturists

    in Ontario to be paid for services rendered to patients. The codes, in their modified

    forms over time, have continuously been used since the 1970s until the present date by denturists as required, regardless of whether they are members of the

    DAC or the DAO. The insurance companies will only accept one set of codes to

    render payment to denturists, making the five-digit codes a professional standard

    and a necessity for denturists to be reimbursed by insurance companies and third

    party service providers.

    I do not find that there is sufficient originality or skill and judgment to justify

    copyright subsisting in mere five-digit numerical codes and/or the functional

    descriptions of the denturist services associated with those codes.

    10

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    Sports Data Pty Ltd v Prozone Sports

    Australia Pty Ltd [2014] FCA 595

    Does copyright subsist in input criteria to provide statistical analysis of rugby

    matches?

    It is no doubt because Sports Data appreciates the difficulties involved in establishing the requisite originality or authorship of individual event descriptions that

    it claims copyright only in the compilation. Sports Data does not point to the originality

    of expression in the event descriptions themselves. Rather it claims that the relevant

    database tables are a compilation or compilations. In that circumstance, copyright

    protects the particular form of expression that is, the compilation itself. This includes

    the selection, structure and arrangement of the event descriptions

    Whilst the question is not easy, in my opinion Sports Data has at least an arguable

    case that copyright subsists in the compilation of event descriptions that is found

    within fields in the specified tables extracted from the NRLHistory database. Whilst it

    might seem somewhat bizarre to describe the compilation in the database table as a

    literary work, that expression is specifically defined in the Act. In my opinion, there is

    evidence to a prima facie standard that the compilation of event descriptions and their

    selection and arrangement involves sufficient originality and involved sufficient effort

    and exertion on the part of the authors to support the conclusion that copyright

    subsists.

    11

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    Sports Data Pty Ltd v Prozone Sports

    Australia Pty Ltd [2014] FCA 595

    Is it infringement to copy portions of the compilation for a competing statistical analysis

    service?

    There are parts of the two works that are the same or similar, but in my opinion they are not substantial parts. That is particularly the case when the comparison is approached on the

    basis that Sports Datas work is said to be a compilation. It is not to the point that some individual event descriptions are the same. Sports Data would need to demonstrate

    substantial identity of selection, structure and arrangement. In my opinion it has not done so

    The second difficulty for Sports Data is that it has failed to make out a prima facie case of

    causation.

    The difficulty for Sports Data is that the only available inference is that at some stage during

    Prozones consultations with the NRL and NRL Clubs, Prozone received some information which included event descriptions that had been used by Sports Data. As already indicated,

    however, there is no evidence, and it cannot necessarily be inferred, that Prozone received all

    or a substantial part of Sports Datas copyright work. Moreover...It unquestionably involved independent work and effort on the part of Prozone. It did not necessarily involve copying, let

    alone substantial copying, of the selection, structure or arrangement of input criteria in Sports

    Datas copyright work. In my opinion, at least at this stage, no such inference is available.

    12

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    Animal Welfare International Inc. v. W3

    International Media Ltd., 2014 BCSC 1839

    Is a web site a work in which copyright subsists?

    AWI submits that based on the considerations relevant to determining originality, as outlined in the jurisprudence, the originality of the website is reflected in its

    general look and feel, which encompass the products selected to appear on the

    homepage, the size of the product photos, the size of the price text, the selection

    of an image to function as a logo for the website, the location of the logo, and the

    general location of images, text, and icons on the webpage

    There is no evidence the website was created using standard form templates or

    standard colour and icon schema. The atypical placement of icons, varied icon

    sizing, decisions as to where top selling products would be listed, if prices would

    be listed on the homepage, how often the products on the homepage changed,

    and the overall website layout and colour scheme are all indicative of CVT being

    an original creation

    I am satisfied that AWI has made out its claim that the CVT website was an

    original work, that AWI was the owner of the copyright, and that W3infringed its

    copyright by substantial reproduction of the CVT website without the owners permission as required by the CA.

    13

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    Tremblay v. Plourde, 2014 QCCS 201

    Is copying text from pages of a website infringement?

    There is evidence that the defendant, to build his site, has largely cottoned his texts from the web page, the plaintiff property. It is not denied.

    This webpage covered under the Copyright Act is the property of the plaintiff.

    Indeed, the Copyright Act provides in Article 2 that the computer program is

    a literary work

    the defendant unlawfully appropriate text, fruit of the efforts and toil

    developed over many years. The court will arbitrate a sum of $ 15,000 can

    understand that all these efforts when copied and duplicated have both a

    direct and indirect impact on theft of intellectual property, which is both

    shocking because of the hard work and vexing on the intellectual effort of

    conception. This amount includes both an amount related to the cost of

    development, the applicant has determined a value of $ 218,000 to its

    financial statements, and another on the aspect of the violation. (Google Translate)

    14

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    I.J. v. J.A.M., 2014 BCSC 89

    Is an idea for a computer architecture a work?

    The Work is a business system using the computers of DC at SCMI and is not capable of protection under the Act. The Work is not a work in which

    copyright may subsist within the meaning of the Act

    The fact that the Act does not protect ideas means that there is no

    copyright in any arrangement, system, scheme or method for doing a

    particular thing or process: Delrina Corp. (c.o.b. Carolian Systems) v.

    Triolet Systems Inc. (2002), 58 O.R. (3d) 339 (C.A.) at para. 35.

    While the Amended Notice of Civil Claim describes the Work as an architectural design, it is clear that the Work does not meet the definition of architectural work. It is not a building or structure or model thereof. At best, the Plaintiff and her team implemented an idea as to how to reshape

    the nature of the order tracking and shipping system that was in place

    at SCMI.

    15

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    Bank of Montreal v Rogozinsky, 2014 ABQB 771

    Is there a common law copyright in a name?

    Ms. Rogozinskys November 14, 2014 affidavit included a document entitled Common law Copyright NoticeIn brief, this is another foisted unilateral agreement that claims if someone uses Ms. Rogozinskys name without her permission then she can bill them $1 million. This is the alleged basis for $6

    million of Ms. Rogozinskys counterclaim.

    One of the alleged occasions where the Bank breached Ms. Rogozinskys Common law Copyright in her name was that her name was used, without authorization, on the Banks statement of claim.

    Meads provides a thorough rebuttal to this entire concept: there is no such thing as a common law copyright or trade-mark as both property interests are the result of legislation (paras 501, 503), copyright cannot subsist in a

    personal name (para 502).

    16

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    Oracle America, Inc. v Google Inc. 750 F.3d.

    1339 (CAFC May 9, 2014)

    It is undisputed that the Java programming language is open and free for anyone to use it is also undisputed that Google could have written its own API packages using the Java

    language. Google chose not to do that. Instead, it is undisputed

    that Google copied 7,000 lines of declaring code and generally

    replicated the overall structure, sequence, and organization of

    Oracle's 37 Java API packages. The central question before us

    is whether these elements of the Java platform are entitled to

    copyright protection. The district court concluded that they are

    not, and Oracle challenges that determination on appeal. Oracle

    also argues that the district court should have dismissed

    Google's fair use defense as a matter of law.

    17

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    Oracle America, Inc. v Google Inc. 750 F.3d.

    1339 (CAFC May 9, 2014)

    Because we conclude that the declaring code and the structure, sequence, and

    organization of the API packages are

    entitled to copyright protection, we

    reverse the district courts copyrightability determination with instructions to

    reinstate the jurys infringement finding as to the 37 Java packages. Because the

    jury deadlocked on fair use, we remand

    for further consideration of Googles fair use defense in light of this decision.

    18

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    Oracle America, Inc. v Google Inc. 750 F.3d.

    1339 (CAFC May 9, 2014)

    Are APis inherently not protectable by copyright as being a

    method of operation?

    Are APis inherently non-protectable where they must be copied

    for compatibility purposes?

    If an API becomes widely known and popular e.g. an industry

    standard, does it lose copyright protection?

    Do the doctrines of merger, scenes a fair, or short phrases

    prevent APIs from being protected by copyright?

    Does copyright protection for APIs extend only to declaring code

    and implementation code or does it also include the structure of

    API packages e.g. packages containing classes containing

    methods (or functions) and related interfaces?

    Is it a fair use to copy APIs?

    19

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    Flo & Eddie, Inc. v. Sirius XM Radio, Inc.

    2014 WL 6670201 (S.D.N.Y., Nov. 14, 2014)

    Does U.S. common law copyright provide a performance right in pre-1972

    sound recordings?

    In short, general principles of common law copyright dictate that public performance rights in pre1972 sound recordings do exist. New York has always protected public performance rights in works other than sound

    recordings that enjoy the protection of common law copyright. Sirius

    suggests no reason why New Yorka state traditionally protective of performers and performance rightswould treat sound recordings differently.

    See, also, Flo & Eddie, Inc. v. Sirius XM Radio, Inc. 2014 WL 7178134

    (S.D.N.Y., Dec. 12, 2014) denying motion for reconsideration; Flo & Eddie,

    Inc. v. Sirius XM Radio, Inc. (C.D.Cal., Sep. 22, 2014) also finding a common

    law performance right in pre-1972 sound recordings; Capital Records, LLC v

    Sirius XM Radio, Inc (Sup.Ct.Cal. Oct. 14, 2014) recognizing a public

    performance right in sound recordings in California.

    20

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    Garcia v. Google, Inc., 766 F. 3d 929 (9th.Cir.

    July 11, 2014), (rehearing en banc ordered)

    Does the performer Garcia have a copyright in her performance in Innocence

    of Muslims?

    Garcia may assert a copyright interest only in the portion of "Innocence of Muslims" that represents her individual creativity, but even if her contribution

    is relatively minor, it isn't de minimis. See Feist, 499 U.S. at 359, 363, 111

    S.Ct. 1282. We need not and do not decide whether every actor has a

    copyright in his performance within a movie. It suffices for now to hold that,

    while the matter is fairly debatable, Garcia is likely to prevail based on the

    record and arguments before us.

    See also, Conrad v. AM COMMUNITY CREDIT UNION (7th. Cir. April 14,

    2014), (The Banana Lady did not have a copyright in performing singing telegrams. The performance itself was not copyrighted or even copyrightable, not being "fixed in any tangible medium of expressionTo comply with the requirement of fixity she would have had either to have

    recorded the performance or to have created a written "dance notation" of it.

    21

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    Klinger v. Conan Doyle Estate, Ltd., 755 F.

    3d 496 (7th. Cir. June 16, 2014)

    We cannot find any basis in statute or case law for extending a copyright beyond its expiration. When a story falls into the public domain, story

    elements including characters covered by the expired copyright become fair game for follow-on authors The copyrights on the derivative works, corresponding to the copyrights on the ten last Sherlock Holmes

    stories, were not extended by virtue of the incremental additions of originality

    in the derivative works.

    And so it is in our case. The ten Holmes-Watson stories in which copyright

    persists are derivative from the earlier stories, so only original elements

    added in the later stories remain protected. Id. at 49-50. The "freedom to

    make new works based on public domain materials ends where the resulting

    derivative work comes into conflict with a valid copyright," Warner Bros.

    Entertainment, Inc. v. X One X Productions, 644 F.3d 584, 596 (8th Cir.

    2011) - as Klinger acknowledges. But there is no such conflict in this case.

    22

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    Atlantic Canada Regional Council of Carpenters,

    Millwrights, and Allied Workers v. Maritime

    Environmental Training Institute Ltd., 2014 NSSC 64

    Is a person that commissions a work (a training manual) a joint author?

    Although it is not required that joint authors make an equal contribution, the joint author must made a substantial contribution to the expression of the

    ideas.

    I have carefully read the affidavit evidence of Gus Doyle. The applicants have failed to convince me, on the civil standard of the balance of probabilities, that

    the scaffolding manual was a work of joint authorship. His affidavit evidence

    does not establish in any manner, the applicants contribution to the creation of this work. His affidavit consists of bare assertions as to ownership of the

    work. It appears to me to be a commissioned work written by the unknown UK

    company. I am persuaded that the UK company was the original author of the

    manual in whom the copyright would have vested in 1991. Clearly there was

    no assignment of the copyright by the UK company.

    23

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    Flansberry (Kapture Design) c. 6548890

    Canada inc. (Turbo Marketing), 2014

    QCCQ 10963

    Does a person that commissions a graphic design own the design?

    Counsel for the Plaintiff has devoted much effort in argument, to draw a parallel between the modern role of the graphic designer and he once played

    by the photographer who manipulated boards and negative. This approach

    would favor his client giving it the role of the one who commands a work to a

    photographer against compensation as provided for in Article 13 (2) CA.

    With respect, the Tribunal can not assimilate the work involved in

    photography. The provisions relating to photography controlled by a third

    party, are an exception to Article 13 (1) CA in favor of the creator. This

    exceptional regime must be interpreted restrictively

    the absence of written assignment is fatal to the one who wants to own the

    work of another that he is the artistic creator of the work under copyright.

    24

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    Prolite inc. c. Lasant, 2014 QCCS 4727

    Does a person that hires an independent contractor to develop a website own the

    site in the absence of a written agreement?

    The outcome of the dispute lies in the contractual relationship of the parties in late 2003 and early 2004, and not in the interpretation of the Copyright Act

    The Court notes that at the time of Internet knowledge was limited

    and Lasant was much more experienced than James

    The Tribunal accepts the testimony of James to the effect that in receiving

    regular bills Lasant or business, it has always understood that the website

    belonged to the plaintiff

    James may be a specialist in manufacturing caravans but he is not a specialist in

    Internet and interpretation of the Copyright Act .The Tribunal accepts that at all

    relevant times, until the events of 2013, James was convinced that his company

    plaintiff owned websites have paid for the website design, various maintenance

    and updates to over the years.

    The Court concludes that the websites are the property of the plaintiff and the

    company is entitled to claim the access passwords and codes.

    25

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    Lachance c. Productions Marie Eykel inc.,

    2014 QCCA 158

    Does an employee own copyright in a work created in the course of

    employment if there is a significant amount of creativity expended in

    creating the work?

    Without necessarily share all the reasons for the trial judge, the Court is of the opinion that in this case it has properly applied the conditions necessary

    for the application of Article 13 (3) in view of the evidence adduced. Indeed,

    the employer owns the copyright in the work of his employee when the

    following conditions are met: 1) a work is created under an employment

    contract; 2) such a work is created by an employee in the course of

    employment; and 3) there is no stipulation to the contrary

    Finally, contrary to what the appellant contends, the application of this

    article is not attenuated by the degree of creativity that he was able to show

    in the performance of its tasks, nor by destination of the work. In short,

    creativity or destination is not among the conditions for the application

    of Article 13(3). (Google Translate)

    26

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    Mejia v. LaSalle College International

    Vancouver Inc., 2014 BCSC 1559

    Whether a photo taken by a teacher of students in a classroom depicting a

    students project were made in the course of employment under s13(3)?

    In Grayson v. Wellington Insurance Co. (1997), 1997 CanLII 4112 (BC CA), 37 B.C.L.R. (3d) 49 I note that Newbury J.A., at para. 26, commented generally on the meaning of the phrase in the course of employment in a different context, as follows:

    The phrase "in the course of employment" has long been construed widely

    enough to include work done by an employee while he is "proceeding

    generally about his master's affairs and not off-duty entirelyand it has been held that "in the course of" is wider than the word "duringI also note the recent decision of the Federal Court of Appeal in Blanchard v.

    Canada [1995] 2 C.T.C. 262, where Linden J.A. reasoned that by using the

    phrases "in the course of" and "by virtue of" in addition to the phrase "in

    respect of employment" in s. 6(1)(a) of the Income Tax Act, Parliament had

    intended to "emphasize that only the smallest connection to employment is

    required to trigger the operation of the section."

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    Mejia v. LaSalle College International

    Vancouver Inc., 2014 BCSC 1559

    The plaintiff was hired by LaSalle as an instructor and not as a photographer. While an instructor proceeding generally about his master's affairs could possibly be engaging in a wide variety of activities, whether paid or unpaid, I do not view the taking of photographs to be an example of such an

    activity. In the circumstances of this case, the taking of photographs was not

    an activity that was generally considered to be within the duties of the plaintiff

    instructor, and there was no contractual agreement that he do so. Though the

    photograph is connected with the employer LaSalle by virtue of its subject and

    the location in which it was taken, I do not view it as being connected with the

    plaintiffs employment.

    I find, therefore, that the photograph was not made in the course of the

    plaintiffs employment with LaSalle and, as such, s. 13(3) of the Copyright Act does not apply. I find, pursuant to s. 13(1) of the Copyright Act, that the

    plaintiff is the first owner of the copyright of the photograph in question.

    28

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    Kennedy v. Ruminski, 2014 FC 526

    What is an agreement to the contrary in s13(3)?

    The parties agree that they have all made contributions to LoL (Law of the Lan) Project and Product (in final development), and wish to

    establish the share in the IP (Intellectual Property) that accrues to each

    of the parties.

    Mike Kennedy (Product Conception & Project Financing) 80%

    Val Ruminski (Database Design & Programming) 20%

    The Memorandum purports to create shares of IP and/or interests in IP. This is inconsistent with complete ownership of copyright in the works

    created during the course of the employment relationship belonging to

    either party.

    29

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    Innomax Group Inc. c. Rouma Homes Inc.,

    2014 QCCS 1790

    Does a nunc pro tunc assignment permit actions for infringement before the

    date it was signed?

    [W]e are faced with conflicting jurisprudence: on one hand,

    decisions Bradale Distribution Enterprises Inc . and Harmony Consulting

    Ltd. , giving rise, in some circumstances, the reconnaissance contracts nunc

    pro tunc assignment copyright and the other side, the

    decision JL . De Ball Canada Inc ., oust action brought by the assignee,

    based on violations of law earlier author on the date of signing of the

    sale nunc pro tunc

    given the conflicting case law on copyright assignments nunc pro tunc, it

    would be premature to end the use IM at this point, without allowing him to

    provide evidence the circumstances surrounding the alleged verbal

    assignment in June 2009 and as to the intentions of the transferor,

    Management Innomax Ltd., on that date. (Google Translate).

    30

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    Wanless v. Mayfair Music Publications Inc.,

    2014 ONSC 4806

    Does an agreement to sell copies of a work have to be in writing under

    s13(4)?

    Counsel for Mr. Loweth contends that it is pointless to grant Ms. Wanless motion to amend her statement of claim, given that, by virtue of section

    13(4) of the Copyright Act (the Act), the agreement between Ms. Wanless and the late John Loweth had to be in writing in order to be

    valid.

    I disagree. Section 13(4) of the Act indicates that any assignment of a

    copyright must be in writing to be valid. The section does not state that an

    agreement between two persons in which one gives the other the right to sell

    copyrighted material must be in writing. To that extent, Ms. Wanless oral contract with John Loweth is not invalid.

    31

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    Cultural Industries Development Corporation

    (SODEC) c. Canadian Broadcasting

    Corporation (CBC), 2014 QCCS 951

    Does an exclusive license to produce and televise a French-language program

    transfer a property interest in the copyright?

    Under French law, a license, even exclusive, does not transfer property rights in

    copyright.

    A sublicense construed under Ontario cannot be used to give more rights to

    the sub-licensee (CBC) as the licensee (Distraction) received under the license.

    [T]he Supreme Court of Canada in 2007 in the case Euro-Excellence inc . c. Kraft

    Canada inc. confirms that there is a distinction and that the distinction between

    assignments and exclusive licenses is important and significant

    the Supreme Court confirmed that it is not for nothing that Article 2.7 of

    the Copyright Act defines the exclusive license as "permission granted to the

    licensee to perform act covered by copyright exclusively, whether granted by the

    copyright owner or by a person who already holds an exclusive license ... (Google translate).

    32

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    Planification-Organisation-Publications Systme

    (POPS) Lte v. 9054-8181 Qubec Inc., 2014 FCA 185

    Did the trial judge err by granting an implied license to use and make

    adaptations to source codes where the plaintiffs had asked for a right to use

    computer programs?

    The respondents argument to the effect that the user licence sought necessarily included access to the source code is in no way supported by the

    evidence adduced at the hearing. The respondents concede in their

    memorandum that the judge did not indicate in his reasons that such access was

    a condition of the implicit user licence or that such access was necessary for the

    use requested.

    However, neither the judge nor this Court can award more that what was sought

    in the proceeding by the respondents

    I therefore find it necessary to reformulate the judgment to limit the scope of the

    licence to the use of all versions of Ceres, Omega, Epsilon and Comex existing

    at the end of the collaborationIt is also necessary, in my view, to remove the reference to the source code from paragraph viii) of the judgment and to amend

    it so that it requires that only the versions described above be provided.

    33

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    Planification-Organisation-Publications Systme

    (POPS) Lte v. 9054-8181 Qubec Inc., 2014 FCA 185

    Did the trial judge err by finding that a non-exclusive license was perpetual and

    not revocable for cause?

    In my opinion, there is no generally applicable rule of law that would preclude a non-exclusive user licence from being non-revocable when the licensee has

    provided consideration. Neither the law nor the Act restrict the parties contractual freedom in this regard. In every case, it is for the trial judge to

    determine the terms that are implicit in the contract in light of all of the relevant

    contextual elements in civil law.

    This is exactly what the judge did in this case and the appellants have not

    established the existence of any palpable or overriding error in this regard.

    Naturally, and as the appellants argue, the expression non-revocable must not be understood in its strictly narrow sense. It certainly means, as the judge

    indicated, that the appellants cannot repudiate the licence unilaterally or

    wantonly. It is not necessary to attempt to define the situations in which such a

    licence could be repudiated because in this case and for the reasons that follow I

    am satisfied that the appellants had no such right, whether the licence was

    revocable for misconduct or non-revocable.

    34

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    Exclusive Rights

    35

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    Canadian Broadcasting Corporation v.

    Sodrac 2003 Inc 2014 FCA 84

    Do broadcasters have to pay for the right to make ephemeral copies of

    musical works synced in programming under Bishop v Stevens or was that

    decision overruled in ESA?

    In my view, this passage [from ESA] reaffirms the fundamental distinction between reproduction and performance (communication to the public by

    telecommunication) that the Court articulated in Bishop v. Stevens. Nothing in

    this passage, or elsewhere in ESA, would authorize the Board to create a

    category of reproductions or copies which, by their association with

    broadcasting, would cease to be protected by the Act. ESA did not explicitly,

    or by necessary implication, overrule Bishop v. Stevens.

    As a result, I am unable to accept the Broadcasters argument that the comments about technological neutrality in ESA have changed the legal

    landscape to the point where the Board erred in finding that incidental copies

    are protected by copyright. The Broadcasters argument with respect to technological neutrality fails.

    36

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    Canadian Broadcasting Corporation v

    SODRAC 2003 Inc. Supreme Court file 35918

    Intellectual property law Judicial review Copyright Licenses Licensing societies Royalties Ephemeral copies Application by broadcaster for review of licenses issued by Copyright Board allowed in part

    Collective society imposing royalties on producers of content and broadcasters Licences allow collective society to collect royalties for copies incidental to use of new broadcast technologies Whether the Court of Appeal erred in refusing to apply the principle of technological neutrality

    in its interpretation and application of the Copyright Act, R.S.C. 1985,

    c. C-42 Whether the Court of Appeal erred by adopting a non-technologically neutral interpretation of the Copyright Act that fails to

    achieve the correct balance between the rights of copyright holders and

    users, as well as the public interest in fostering innovation Whether the Court of Appeal erred by departing from this Courts jurisprudence on the grounds that they provide insufficient guidance. (emphasis added)

    37

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    Labrecque (O Sauna) c. Trudel (bellaza

    Centre GP), 2014 QCCQ 2595

    Does posting a photo retrieved using Google Image search on the web

    infringe?

    The fact that the defendants were able to get their hands on that photograph through the Google search engine on the Internet it comes then change the

    right enjoyed by Ms. Labrecque?

    It would probably be at first tempted to think given the democratization of the

    Internet qu'amne information.

    There are indeed a huge amount of data including images, which for the

    most part, do not indicate be protected by any right of author.

    In the Tribunal's view, the effect would have to think so much easier to be

    able to circumvent legislation on this subject, so that as soon as a work is

    available on the Internet, it falls outside the legal field of property

    intellectual. (Google Translate)

    38

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    Labrecque (O Sauna) c. Trudel (bellaza

    Centre GP), 2014 QCCQ 2595

    The author Stphane Gilter then lying on the subject, also came to the same conclusion that says:

    The functioning of the Internet, the constant exchange of digital files, is to facilitate

    copying and probably contributes to trivialize it. The fact remains that the rules of

    copyright apply in the digital environment, the Act even enshrining the principle of

    technological neutrality. Thus, an author does not lose his rights merely because a work

    is dematerialized and used or distributed without physical media. As expressed by the

    Chief Justice McLachlin, on behalf of the Supreme Court:

    The subsection 3 (1) of the Copyright Act reflects the principle of media neutrality,

    recognizing a right to produce or reproduce a work "in any material form." Media

    neutrality means that the Copyright Act continues to apply despite the use of

    different media, including those that rely on more advanced technology. However, it

    does not mean that after his conversion to electronic data, a work can be used

    anyhow. The final work remains subject to the Copyright Act . The principle of media

    neutrality does not rule out the rights of authors - it was established to protect the

    rights of authors and others as technology evolves.

    Whether to respect the neutrality of the support, it follows that the rules we have

    previously described and briefly apply fully to digital environments (Google Translate)

    39

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    Leuthold v. Canadian Broadcasting

    Corporation, 2014 FCA 173

    Does par 2.4(1)(c) make a person who transmits programming to BDUs as part of a network

    liable for a single network wide communication or for each communication made by each

    BDU?

    I am of the view that paragraph 2.4(1)(c), properly interpreted, has the effect of making a network transmission of cable programming material to the public via BDUs a single

    infringement of a copyright holders rights if the network has not properly cleared the rights with respect to that transmission.

    This reading of paragraph 2.4(1)(c) of the Act moves in the direction of technological neutrality in that the number of infringing acts does not vary according to the number of

    intermediaries in the transmission chain. This is consistent with the goal of technological

    neutrality which the Supreme Court articulated in Entertainment Software Association v.

    Society of Composers, Authors and Music Publishers of Canada, 2012 SCC 34

    Paragraph 2.4(1)(c) serves to distinguish this case from Bishop v. Stevens where, as noted,

    each unauthorized reproduction was found to be a violation of the copyright holders rights. While that may have been the case for unauthorized communications to the public by

    telecommunication prior to the passage of paragraph 2.4(1)(c) and its companion disposition

    subsection 31(2) of the Act, it is no longer the case now.

    40

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    Leuthold v. Canadian Broadcasting

    Corporation, Supreme Court (leave

    application) file 36030

    Statement of issue:

    Pursuant to Paragraph 2.4(1)(c) of the Act, does a transmission of an unlicensed work protected by

    copyright by a production undertaking to more than one

    distribution undertaking result in more than one

    transmission for which the production undertaking and

    each of those distribution undertakings are jointly and

    severally liable?

    41

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    SOCAN Tariffs 22.D.1 Audiovisual webcasts and 22.D.2 Audiovisual user-generated content for the years 2007 to 2013, Copyright Board July 18, 2014

    Netflix argued that royalties on free trials are a violation of the Supreme Court principle of technological neutrality established in

    ESA. We do not agree.

    The principle of technological neutrality is that, since only the

    reproduction right is triggered when a CD is sold in a store, only the

    reproduction right should be triggered when a digital album is sold

    online. The CD is an alternative technology to the digital download.

    There is no alternative- technology equivalent to a Netflix free trial.

    Video stores never offered a free months membership with the right to rent as many videos as the customer wanted for no additional

    charge. Thus, there is no issue with technological neutrality.

    42

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    SOCAN Tariffs 22.D.1 Audiovisual webcasts and 22.D.2 Audiovisual user-generated content for the years 2007 to 2013, Copyright Board July 18, 2014

    The decision of the Supreme Court of Canada in ESA v. SOCAN meant that SOCAN no longer had the right to collect royalties for permanent

    downloads and limited downloads. This was reflected in the Boards recent decision on online music services which had been structured the same way.

    As a result, neither agreement filed by SOCAN makes reference to

    downloads.

    See also, Re:Sound No. Tariff 8 Non-interactive and semi-interactive webcasts, 2009-2012, Copyright Board, May 14, 2014 since the decision of the Supreme Court of Canada in Entertainment Software Association v.

    Society of Composers, Authors and Music Publishers of Canada, downloads

    of musical works or other subject-matter do not engage the right of

    communication to the public by telecommunication but only the reproduction

    right. Therefore, the distinction between a communication and a

    transmission, when referring to copyright-protected content, is now very

    important. A communication is a type of transmission but not all

    transmissions are communications.

    43

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    John Kaldor Fabricmaker UK Ltd v Lee Ann Fashions

    Ltd [2014] EWHC 3779 (IPEC) (21 November 2014)

    (1) The first stage is to consider whether the claimant has established a prima facie

    inference of direct or indirect copying by reason of the similarities between the

    copyright work and the defendant's work.

    (2) Similarities which constitute the expression of ideas that have no connection with

    the literary, dramatic, musical or artistic nature of the work are to be disregarded.

    (3) Similarities not thus excluded but which are shown to be commonplace give rise to

    little or no inference of copying; the nearer a similarity approaches the strikingly

    original end of the spectrum, the greater weight it carries in supporting an inference of

    copying.

    (4) If the claimant establishes a prima facie case of inferred copying, this may be

    rebutted by the defendant's evidence of independent design. The stronger the prima

    facie case, the more cogent the defendant's evidence must be to rebut the inference.

    the two works.

    (5) If there is no finding of copying, there is no infringement. If there is a finding of fact

    that there has been copying, the next stage is to consider whether copying was done

    either in relation to the copyright work as a whole or any substantial part of it.

    44

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    John Kaldor Fabricmaker UK Ltd v Lee Ann Fashions

    Ltd [2014] EWHC 3779 (IPEC) (21 November 2014)

    (6) Designers Guild sanctions two alternative approaches to the question of substantial

    part. They are alternatives because neither was expressly endorsed by a majority. The

    first is to disregard the defendant's work and to assess whether the similarities from

    which an inference of copying was drawn constitute a substantial part of the copyright

    work. This is a qualitative, not a quantitative assessment. The second, which applies

    only in an instance of altered copying, is to determine whether the infringer has

    incorporated a substantial part of the intellectual creation of the author of the work. In

    many cases the difference between the two approaches to an allegation of altered

    copying may be limited.

    (7) To the extent that it has not already been excluded under step (3), a commonplace

    similarity can in any event make no contribution to any substantial part of the copyright

    work alleged to have been copied since it is not capable of attracting copyright

    protection.

    (8) Assessment of whether there has been copying of a substantial part of the

    copyright work is a necessary and distinct step in the determination of whether the

    defendant has infringed. However, where copying has been established, on the facts it

    may be that this will almost inevitably lead to the conclusion that a substantial part of

    the copyright work has been copied. This may be influenced by the degree to which

    the finding of copying depended on the similarities between the two works.

    45

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    Geophysical Service Incorporated v Nwest

    Energy Corp 2014 ABQB 205

    Does a person who merely receives a copy of seismic data protected by

    copyright liable for infringement?

    In regards to copyright, the claim is in essence that if a person obtains a pirated copy of copyright material and performs it, or shows it to others, or

    plays it on the radio, then the viewer, reader or listener is liable to the

    owner of the copyright for infringement merely by virtue of having seen or

    heard it. The Copyright Act (Canada) goes to great lengths to define what

    constitutes infringement of copyright, but I have been unable to find in any

    of the definitions and exceptions to definitions that merely receiving,

    reading, or hearing a copyright work constitutes infringement, even if the

    recipient knew that the work is a pirated copy.

    46

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    Hayward Industries inc. c. Pool equipment

    Carvin inc. , 2014 QCCS 2400 Is copying a training manual for use in a chlorinator infringement?

    Hayward argues that this latest version is 70% identical to its manual

    According to Carvin , an instruction manual for the use of a chlorinator is a document

    that helps a consumer to use the product. In the case of similar products in the same

    industry, it argues that it is not surprising that textbooks are the same, given the lack

    of originality and inherent creativity.

    In this regard and by analogy, it refers to an Ontario decision [Kilvingston

    Bros. Ltd . v. Herbert Goldberg et al ., (1957) 16 Fox Pat., p. 164-168] citing Judson

    J. of the Supreme Court of Ontario:

    The similarities are plain to be seen purpose They do not enable me to draw an

    inference of copying. Tombstone workers were working task of this kind are

    working with common ideas and with only a limited field for the expression of

    those ideas. It is not surprising que la results are similar.

    In other words, the information contained in textbooks of the two parties of a

    "common source" or, in this case, the operation of salt chlorinator pool, so that the

    ideas to be expressed in textbooks are common. (Google Translate)

    47

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    American Broadcasting v. Aereo, Inc., 134 S.

    Ct. 2498

    We do not see how the fact that Aereo transmits via personal copies of programs could make a difference. The Act applies to transmissions "by means

    of any device or process." Ibid. And retransmitting a television program using

    user-specific copies is a "process" of transmitting a performance. A "cop[y]" of a

    work is simply a "material objec[t] ... in which a work is fixed ... and from which

    the work can be perceived, reproduced, or otherwise communicated." Ibid. So

    whether Aereo transmits from the same or separate copies, it performs the same

    work; it shows the same images and makes audible the same sounds. Therefore,

    when Aereo streams the same television program to multiple subscribers, it

    "transmit[s] ... a performance" to all of them.

    Finally, we note that Aereo's subscribers may receive the same programs at different times and locations. This fact does not help Aereo, however, for the

    Transmit Clause expressly provides that an entity may perform publicly "whether

    the members of the public capable of receiving the performance ... receive it in

    the same place or in separate places and at the same time or at different

    times." Ibid. In other words, "the public" need not be situated together, spatially or

    temporally.

    48

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    UPC Telekabel Wien (Judgment of the Court)

    [2014] EUECJ C-314/12 (27 March 2014)

    Does a website that makes streams and downloads of infringing copies

    movies and TV programming infringe the making available right even without

    proof of any access?

    rightholders have the exclusive right to authorise or prohibit any act of making available to the public, it must be stated that an act of making

    protected subject-matter available to the public on a website without the

    rightholders consent infringes copyright and related rights

    holders of a copyright or of a related right may act without having to prove that the customers of an internet service provider actually access the

    protected subject-matter made available to the public without their

    agreement.

    That is all the more so since the existence of an act of making a work

    available to the public presupposes only that the work was made available to

    the public; it is not decisive that persons who make up that public have

    actually had access to that work or not (see, to that effect, Case

    C-306/05 SGAE [2006] ECR I-11519, paragraph 43).

    49

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    Svensson v Retriever Sverige AB, (13 February

    2014) CJEU, Case C-466/12 (13 February 2014)

    Does a person infringe the communication right by providing hyperlink to a

    work?

    A work that is posted on a website is communicated to the public by virtue of

    its being made available to the public.

    An ordinary clickable hyperlink to a work can make it available to the public,

    whether the work is accessed through the link or not.

    Whether a link makes a work available to the to the public depends on a

    number of factors. It must be made available to the same public as the public

    for the work at the location to which it was made freely available by the rights

    holder. If the work at the original site is protected by a technical measure,

    has been taken down, is otherwise inaccessible, or if the link otherwise

    makes the work available to a public other than the public for whom the work

    is made available at the original site, the link to the file would make it

    available to the public and would be an infringing act.

    A link that makes available a work in a frame would appear to be assessed

    using the same principles.

    50

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    BestWater International (Order) [2014]

    EUECJ C-348 / 13_CO (21 October 2014)

    Does the act of framing to a non-infringing copy of a work made freely

    available on the Internet infringe the communication to the public right?

    The mere fact that a protected work, freely available on an internet site, is inserted into another internet site by means of a link using the framing technique, such as that used in the case in the main proceedings, cannot

    classified as communication to the public within the meaning of Article 3(1) of Directive 2001/29/EC of the European Parliament and of the

    Council of 22 May 2001 on the harmonisation of certain aspects of

    copyright and related rights in the information society since the work at

    issue is not transmitted to a new public or communicated a specific

    technical method different from that of the original communication.

    51

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    Paramount Home Entertainment & Anor v

    British Sky Broadcasting & Ors [2014]

    EWHC 937 (Ch) (18 February 2014)

    Do websites that offer streaming of movies and TV programming using an

    embedded player to infringing copies make available and communicate the

    works to the public so as to enable a court to make a blocking order against

    ISPs?

    Svensson isof some interest because it establishes more clearly than previous authority had done that the mere provision of access by means of a

    hyperlink will normally amount to a communication within the meaning of

    Article 3(1). Furthermore, it will normally amount to a "communication to the

    public" within the meaning of that Article.

    For present purposes, I need only refer to paragraph 32 of Paramount v

    BSB where Arnold Jtook the view that the operators were intervening in a highly material way to make the copyright works available to a new

    audience. I respectfully agree, and I see no reason to come to any different

    conclusion in the circumstances of the present case.

    52

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    1967 Ltd & Ors v British Sky Broadcasting Ltd

    & Ors [2014] EWHC 3444 (Ch) (23 October 2014)

    Do users of BitTorrent sites communicate musical works to the public?

    In Svensson the CJEU ruled that the provision on a website of clickable links to works freely available on another website does not constitute an act of

    communication to the public within Article 3(1) of the Information Society

    Directive. It held at [17]-[20] that there was an act of communication, but it held at

    [21]-[31] that the communication was not to the public since it was not to a new

    public, that is to say, a public which had not been taken into account by the

    copyright owners when they authorised the initial communication to the public.

    The reason for this was that all internet users could freely access the works on

    the other website to which the works had been communicated with the

    authorisation of the copyright owners

    Accordingly, I remain of the view that, where UK users of a Bittorrent website

    upload recordings as part of a swarm, all three questions fall to be answered in

    the affirmative: see EMI v Sky at [39]-[41]. It follows that UK users of the Target

    Websites infringe in this way as well. It is immaterial that 13 of the Target

    Websites do not permit uploading of torrent files.

    53

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    1967 Ltd & Ors v British Sky Broadcasting Ltd

    & Ors [2014] EWHC 3444 (Ch) (23 October 2014)

    Do operators of BitTorrent sites communicate musical works to the public?

    In my judgment, the operators of the Target Websites do communicate Members' recordings to the public for the following reasons.

    First, the operators of the Target Websites communicate the recordings by electronic

    transmission. Their role is by no means passive. On the contrary, they intervene in an

    active and highly material way so as to enable users to access and to download

    recordings content in an easy and convenient way. This is true not only of the eight

    Target Websites which allow their users to upload torrent files, but also of the 13 Target

    Websites which only aggregate links to torrent files on other websites

    Secondly, the communication is to the public. In at least eight cases, this is because the

    communication uses a different technical means to that of the previous communication.

    Even if the communication is not by a different technical means to that of the previous

    communication in the case of the 13 Target Websites that use crawlers, as to which I

    shall refrain from expressing a view, it is a communication to a new public, which is to

    say a public which was not considered by the rightholders concerned when they

    authorised the original communication or other act of dissemination of the recordings.

    54

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    OSA Ochrann svaz autorsk pro prva k dlm hudebnm o.s. v Lebn lzn Marinsk Lzn a.s., CJEU, Case C-351/12, February 27, 2014

    Does the operator of a spa communicate works when it transmits works through TVs

    and radios to rooms?

    First of all, the concept of communication must be construed as referring to any transmission of the protected works, irrespective of the technical means or process

    used

    Therefore, the operator of a spa establishment carries out a communication when it

    deliberately transmits protected works, by intentionally distributing a signal through

    television or radio sets, in the rooms of the patients of that establishment

    As regards that last criterion specifically, the cumulative effect of making the works

    available to potential recipients should be taken into account. It is in particular relevant

    in that respect to ascertain the number of persons who have access to the same work

    at the same time and successively

    As the Advocate General noted in point 28 of her Opinion, a spa establishment is likely

    to accommodate, both at the same time and successively, an indeterminate but fairly

    large number of people who can receive broadcasts in their rooms.

    55

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    Jurisdiction

    56

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    Davydiuk v. Internet Archive Canada, 2014

    FC 944

    Does the Federal Court have jurisdiction over the Internet Archive for copyright

    infringement by archiving materials on a Canadian website on servers in the US?

    Both parties agree that the Prothonotary correctly used SOCAN to establish jurisdiction as the test for real and substantial connection

    I find that Internet Archive did reach into Canada to the Intercan website when they

    requested the web pages. Whether it was automated or not does not affect my finding.

    The action of following a link or requesting pages as described by Internet Archive requires Internet Archive to reach out to the Canadian servers that subsequently

    transmit back to the United States. The request and return transmission is not done with

    permission or on consent. The Canadian public can access the webpage and have it

    transmitted back to Canada. This is exactly the evidence Daniel Davydiuk provided the

    Court

    In reference to a trademark matter, in HomeAway.com, Inc v Hrdlicka, 2012 FC 1467

    (CanLII) at para 22, Justice Roger T. Hughes found that a trademark simply appearing

    on a computer screen in Canada constituted use and advertising in Canada. I would

    apply the same rationale that two people accessing a website in Canada constitutes

    access in Canada.

    57

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    Paramount Home Entertainment & Anor v

    British Sky Broadcasting & Ors [2014] EWHC

    937 (Ch) (18 February 2014)

    Does the UK copyright statute apply to foreign websites that offer streaming of movies

    and TV programming to UK users?

    Earlier cases, including in particular EMI Records Ltd v British Sky Broadcasting Ltd [2013] EWHC 379 (Ch), list the factors which have in the past led the court to

    conclude that the acts of communication were targeted at the UK. They include such

    matters as the number of users of the relevant websites in the UK, the inclusion on the

    websites of large numbers of recordings by UK artists which were otherwise in

    demand in the UK, the fact that the default language of the websites was English, and

    the presence of advertisements with prices in sterling.

    In the context of the present case, which of course involves films and TV programmes

    rather than musical recordings, these and similar factors are clearly established on the

    evidence. There is evidence, for example, about the degree of popularity of the

    websites in the UK, about advertisements published on them which are clearly aimed

    at the UK market, and that English is the default language of each website. In short, I

    am fully satisfied that this particular requirement is fulfilled.

    58

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    1967 Ltd & Ors v British Sky Broadcasting Ltd

    & Ors [2014] EWHC 3444 (Ch) (23 October 2014)

    Does the UK copyright statute apply to foreign BitTorrent websites that

    offer services to UK users?

    the Target Websites' acts of communication to the public are targeted at the public in the UK: (a) the Target Websites are all in the

    English language (albeit that three of them offer alternative languages);

    (b) a large number of visitors to the websites (and a significant

    proportion of their total number of visitors) are from the UK; (c) a

    substantial proportion of the albums on the UK Top 40 albums chart

    were available on the websites on inspection, and (d) the advertising

    on the Target Websites, and certain additional features of the sites, are

    targeted in many instances at the UK.

    59

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    Omnibill (Pty) Ltd v Egpsxxx Ltd & Anor

    [2014] EWHC 3762 (IPEC) (17 November 2014)

    Does posting photos on a website hosted in South Africa infringe copyright in the UK

    where the photos are available from the South African sub-domain and site targets South

    African, UK and other users?

    Looking at the Escortgps site as a whole and the sub-domains, it is not correct to analyse them as a series of separate national sites. In truth, this is a single global

    offering with national elements. One can infer from the content of the site that the

    operators intend that, for example, visitors from the UK will visit the South African sub-

    domain

    I recognise that there is a significant local element to the content of the South African

    sub-domain. Mr Heald is right to emphasise that the services offered by the escorts are

    obviously located in South Africa and the prices are in Rand and so on. However,

    although part of the way in which this website raises revenue is through selling premium

    advertising services to the escorts themselves, another important way in which the

    operators of the Escortgps website earn revenue is by generating traffic to the site and

    earning money from advertising. That traffic can be from anywhere in the world. It is

    therefore in the interests of the operators of the website that, for example, visitors from

    the UK will visit the South African sub-domain albeit that those visitors may only be doing

    that for the purposes of titillation

    60

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    Omnibill (Pty) Ltd v Egpsxxx Ltd & Anor

    [2014] EWHC 3762 (IPEC) (17 November 2014)

    It was common ground that mere accessibility on the internet is not enough to show infringement, otherwise every website would be potentially amenable to

    the jurisdiction of every country in the world. However, as Mr Ward submitted,

    a finding that this site is at least in part targeted to the UK is consistent with the

    purpose of that concept in copyright law. The way the site is constructed with a

    global front page will clearly attract users from many countries. The operators

    of the website intend that to be the case. There is nothing surprising about the

    fact that a substantial proportion of the visitors to the South African sub-domain

    are from the UK.

    I find that the first defendant's Escortgps website and the sub-domain at

    www.southafrica.escortgps.xxx were communicating reproductions of the

    claimant's artistic works to the public in the UK.

    61

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    Martin Blomqvist v Rolex SA, [2014] EUECJ

    C-98/13 (06 February 2014)

    Is a pirated good distributed for copyright purposes in a member State when it is

    purchased online from a non-member State and shipped from another non-member

    State?

    goods coming from a non - member State which are...copies of goods protected in the European Union by copyrightcan be classified as pirated goods where it is proven that they are intended to be put on sale in the European Union, such proof being

    provided, inter alia, where it turns out that the goods have been sold to a customer in

    the European Union or offered for sale or advertised to consumers in the European

    Union

    In the light of the foregoing, the answer to the questions referred is that the customs

    regulation must be interpreted as meaning that the holder of an intellectual property right

    over goods sold to a person residing in the territory of a Member State through an online

    sales website in a non - member country enjoys the protection afforded to that holder by

    that regulation at the time when those goods enter the territory of that Member State

    merely by virtue of the acquisition of those goods. It is not necessary, in addition, for the

    goods at issue to have been the subject, prior to the sale, of an offer for sale or

    advertising targeting consumers of that State.

    62

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    Defenses

    63

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    Public Relations Consultants Association v

    Newspaper Licensing Agency Ltd & Ors (Judgment

    of the Court) [2014] EUECJ C-360/13 (5 June 2014)

    Does web browsing of non-infringing copies of works infringe the

    reproduction right or does the exception for temporary acts of copying

    apply?

    Article 5 of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of

    copyright and related rights in the information society must be interpreted

    as meaning that the copies on the users computer screen and the copies in the internet cache of that computers hard disk, made by an end-user in the course of viewing a website, satisfy the conditions that those copies

    must be temporary, that they must be transient or incidental in nature and

    that they must constitute an integral and essential part of a technological

    process, as well as the conditions laid down in Article 5(5) of that directive,

    and that they may therefore be made without the authorisation of the

    copyright holders.

    64

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    SOCAN Tariffs 22.D.1 Audiovisual webcasts and 22.D.2 Audiovisual user-generated content for the years 2007 to 2013, Copyright Board July 18, 2014

    Netflix also wanted the Board to find that the free trials are fair dealing in the same way that the Board found that free previews are

    fair dealing. We decline to do so, for several reasons.

    First, the analogy between free previews and free trials is weak. In a

    free preview, the customer can hear a portion of a musical work in a

    degraded format. In a free trial, the customer can hear complete

    musical works, to the extent that such works are fixed in the

    audiovisual work being watched

    Third, and equally importantly, we do not have the evidentiary base

    with which to make that decision the fact that Netflix declined to participate in the process for many months is sufficient reason for us

    to decline to do so. If Netflix now wants to argue that it does not owe

    anything for its free trials, the appropriate forum in which to do so is

    not the Board.

    65

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    Authors Guild, Inc. v. HathiTrust, 755 F. 3d

    87 (2nd. Circuit June 10, 2014)

    Turning to the first factor, we conclude that the creation of a full-text searchable database is a quintessentially transformative use. As the example

    on page 7,supra, demonstrates, the result of a word search is different in

    purpose, character, expression, meaning, and message from the page (and

    the book) from which it is drawn. Indeed, we can discern little or no

    resemblance between the original text and the results of the HDL full-text

    search.

    There is no evidence that the Authors write with the purpose of enabling text

    searches of their books. Consequently, the full-text search function does not

    "supersede[] the objects [or purposes] of the original creation,

    In sum, we conclude that the doctrine of fair use allows the Libraries to digitize

    copyrighted works for the purpose of permitting full-text searches.

    We conclude that providing access to the print-disabled is still a valid purpose under Factor One even though it is not transformative. We reach that

    conclusion for several reasons.

    66

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    CAMBRIDGE UNIVERSITY PRESS v. Patton,

    (11th. Circuit October 17, 2014) Does placing portions of textbooks on e-reserves constitute fair use?

    The District Court did not err in holding that the first factorthe purpose and character of the usefavors fair use. Although Defendants' use was nontransformative, it was also for nonprofit educational purposes, which are favored under the fair use statute.

    [T]he District Court did err in holding that the second fair use factorthe nature of the copyrighted workfavors fair use in every casethe District Court should have held that the second factor was neutral or even weighed against fair use where such material

    dominated.

    With regard to the third factorthe amount used in relation to the copyrighted work as a wholethe District Court erred in setting a 10 percent-or-one-chapter benchmark. The District Court should have performed this analysis on a work-by-work basis, taking into

    account whether the amount taken qualitatively and quantitativelywas reasonable in light of the pedagogical purpose of the use and the threat of market substitution.

    With regard to the fourth factorthe effect of Defendants' use on the market for the originalthe District Court did not err. However, because Defendants' unpaid copying was nontransformative and they used Plaintiffs' works for one of the purposes for which they are

    marketed, the threat of market substitution is severe. Therefore, the District Court should

    have afforded the fourth fair use factor more significant weight in its overall fair use

    analysis.

    67

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    Kienitz v. Sconnie Nation LLC, 766 F. 3d 756

    (7th. Cir. Sept. 15, 2014)

    We're skeptical of Cariou's approach, because asking exclusively whether something is "transformative" not only replaces the list in 107

    but also could override 17 U.S.C. 106(2), which protects derivative

    works. To say that a new use transforms the work is precisely to say that it

    is derivative and thus, one might suppose, protected under

    106(2). Cariou and its predecessors in the Second Circuit do no explain

    how every "transformative use" can be "fair use" without extinguishing the

    author's rights under 106(2).

    We think it best to stick with the statutory list, of which the most important

    usually is the fourth (market effect).

    68

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    Deckmyn and Vrijheidsfonds (Judgment of the

    Court) [2014] EUECJ C-201/13 (3 September 2014)

    Is a political cartoon drawing capable of being a parody?

    Article 5(3)(k) of Directive 2001/29 must be interpreted as meaning that the essential characteristics of parody, are, first, to evoke an existing work, while

    being noticeably different from it, and secondly, to constitute an expression of

    humour or mockery. The concept of parody, within the meaning of that provision, is not subject to the conditions that the parody should display an

    original character of its own, other than that of displaying noticeable differences

    with respect to the original parodied work; that it could reasonably be attributed to

    a person other than the author of the original work itself; that it should relate to

    the original work itself or mention the source of the parodied work.

    However, the application, in a particular case, of the exception for parody, within

    the meaning of Article 5(3)(k) of Directive 2001/29, must strike a fair balance

    between, on the one hand, the interests and rights of persons referred to in

    Articles 2 and 3 of that directive, and, on the other, the freedom of expression of

    the user of a protected work who is relying on the exception for parody, within the

    meaning of Article 5(3)(k).

    69

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    Media Monitoring 2011-2016 (Copyright

    Board) August 8, 2014

    Are Provincial governments bound by the Copyright Act and liable to pay

    royalties for reproducing radio and TV programming and signals? Is this activity a

    fair dealing?

    Another ground of objection for some provinces was that they are not bound by the Act because of their Crown Immunity. As part of another proceeding, the

    governments of seven provinces and one territory challenged the legality of the

    proposed Access Copyright tariffs for the reproduction of works for the years

    2005 to 2014 on the basis of Crown Immunity. On January 5, 2012, the Board

    dismissed the provinces and territories claim of Crown Immunity by reason that the Act binds the Crown by necessary implication. We maintain that position.

    According to the province of Alberta, the proposed royalties do not reflect the fair or appropriate value of the copying done by Albertas employees and do not account for the fact that many copying activities made by its employees are non-

    infringing, exempted or excluded such as fair dealing for research purposes or

    insubstantial copying.

    70

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    Remedies

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    Voltage Pictures LLC v. John Doe, 2014

    FC 161

    Privacy considerations should not be a shield for wrongdoing and must yield to an injured partys request for information from non-parties. This should be the case irrespective of the type of right

    the claimant holds. The protection of intellectual property is ipso

    facto assumed to be worthy of legal protection where a valid

    cause of action is established. There is little dispute with the

    correctness of this assertion. Copyright is a valuable asset which

    should not be easily defeated by infringers. The difficulty in this

    case is that it is not clear that the protection of copyright is the

    sole motivating factor supporting Voltages claim in this Court.

    Subscriber data ordered to be provided on terms.

    72

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    Geophysical Service Incorporated v. Canada-Nova-

    Scotia Offshore Petrolium Board, 2014 FC 450

    Where the plaintiffs have established a prima facie case of copyright

    infringement can they get an interlocutory injunction without proving they will

    suffer irreparable harm?

    There exist situations where the applicants case is sufficiently strong that the threshold for meeting the other two factors can be set so low as to be

    irrelevant. I believe that this may have been the approach underlying the

    statement in Diamant Toys, above, that it was not necessary to establish

    irreparable harm where copying is blatant.

    These are not the facts in this case. Figure 5.5 is the result of extensive

    reworking and adaptation of materials originating not just from the applicant,

    but from many other contributors to produce a document that bears very little

    resemblance or content to that of the copyrighted material.

    Accordingly, I conclude that the applicant must demonstrate by clear and non-

    speculative evidence that it will suffer irreparable harm, not compensable in

    damages, between now and the outcome of the trial if the injunction is not

    granted.

    73

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    Jules Jordan Video inc. c. 144942 Canada

    inc., 2014 QCCS 3343

    Will a Quebec court recognize and enforce a copyright

    judgment for monetary damages from a U.S. court?

    Yes, except under Section 3155 of the Civil Code: the

    decision was rendered had no jurisdiction under the

    provisions of this title; was made in violation of basic

    principles of procedure; or the result of the foreign

    decision is manifestly incompatible with public order as

    understood in international relations.

    74

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    Resource Well Completion Technologies Inc.

    v Canuck Completions Ltd., 2014 ABQB 209

    Is an employee who reverse engineers a piece of equipment personally liable for

    infringement by making indirect copies of drawings?

    If these allegations are true, one of three scenarios appears possible:

    1. Mr. Graf did so at the request of his employer and it is arguable, in line with the case

    law, that this act was so egregious, i.e. tantamount to theft, that it should attract personal

    liability. Arguably, an employee cannot undertake such acts and claim immunity on the

    basis that it was in the course of his employment.

    2. He alone, or in concert with others, caused the corporation to do these acts, and they

    were not in the best interests of the corporation, as a corporations best interests involve acting in a bona fide way, with the result that, arguably, he should be personally liable.

    3. He did so unbeknownst to his employer, who hired him to develop the equipment, not

    steal the design from a competitor, and it can be argued, in line with the case law, that his

    acts take on the independence necessary to find him personally liable.

    The result is that, at this stage of the proceedings, it cannot be said that the claim against

    Mr. Graf is hopeless.

    What about Section 64.1?

    75

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    Mitchell Repair Information Company v.

    Wayne Long, 2014 FC 562

    The plaintiff requested orders directed at third parties to shut down or remove from public viewing and access infringing advertisements, web

    pages, profiles etc., in addition to requiring other third parties to disclose

    information related to these matters. These third parties in some instances

    were not identified and in others, such as with Paypal