Who would have thought that the week before Christmas would be so fruitful on important decisions in the area of intellectual property.
First, the Supreme Court of Canada has delivered a landmark decision in Cinar Corporation v. Robinson. In it, the Supreme Court of Canada unanimously dealt with many crucial issues pertaining to how copyright cases will be resolved in the future:
– the scope of protection afforded by the Copyright Act;
– the meaning of the words “substantial part” that set out the threshold for copyright infringement;
– rules regarding disgorgement of profits;
– rules regarding non-pecuniary damages; and
– rules regarding punitive damages.
Despite Supreme Court’s unanimity, this decision in fact further blurs the line between unprotectable ideas and protectable expression of ideas by adding a significant degree of subjectivity in the analysis. The Court refused the approach whereby the court first determines the original elements in the plaintiff’s work, then filters out unprotectable elements from that list, and, finally, compares the remaining protectable original features with what was actually used by the defendant. Instead, the Supreme Court preferred the holistic approach where “The character of the works will be looked at, and the court will in all cases look, not at isolated passages, but at the two works as a whole to see whether the use by the defendant has unduly interfered with the plaintiff’s right.”
This case likely turned on the single issue that defendants had access to the plaintiff’s work and knew that plaintiff would object to their use of it. The court wanted to land a helping hand to an author who failed to carry out a project whereas a very similar project was later carried out by several parties some of whom were originally involved in the plaintiff’s project.
It is what some lawyers call “the degree of sneakiness” that decided the case. In other words, the entire copyright law analysis only happened after the judges internally decided that the plaintiff should be rewarded and the defendants should be punished.
While I typically always support those whose rights are infringed in copyright law suits, this may be the case when bad facts make bad law, because I’m not sure that I agree (from the description of the two works, and without having had a chance to compare the actual works) that what was used was more than unprotectable idea.
Time will tell what this case will mean in terms of development of Canadian copyright law.
The second case is the case decided by BC Court of Appeal that affirmed the landmark decision of BC Supreme Court in Woodpecker Hardwood Floors (2000) Inc. v. Wiston International Trade Co..
I already wrote about the facts of the case with a brief analysis before, but briefly here they are again: a BC flooring company that’s been around for over a decade realized that its competitor, another flooring company from the same city trademarked the word “Woodpecker” as its own.
The dilemma – do we spend a ton of money on rebranding or do we spend a ton of money on lawyers to fight this through – was entirely avoidable. All the first company had to do was register its trademark first.
They decided to fight for their trademark. BC Supreme Court granted an injunction recognizing the first company’s prior right in the trademark. Now, the BC Court of Appeal has agreed.
Happy ending? Not really, unless you mean a happy ending for all lawyers involved in this case.
Now that the case has been through the BC Supreme Court level and the Court of Appeal level, the first company has probably spent close to 100 times the amount that it would have cost them to register their trademark when they were starting out.
If anything, it would have been a good insurance policy.
Remember, registering trademarks is within the reach of any business that’s more than just a hobby. It’s a long-term investment that is crucial for any business that spends time, money and energy on branding and marketing.
Now, that there is a way to register your trademarks with a Triple Peace-of-Mind Guarantee™, you are committing a crime against your business if you are not protecting its trademarkable assets!
Speaking of how we help our clients register trademarks, here’s a testimonial from another happy customer:
P.S. Merry Christmas, Happy New Year and Happy Holidays!
Often, I get requests to draft a simple agreement whereby the business owner who paid or is about to pay for some content created specifically for that business would own copyright in what they pay for.
Just today, I got a call from an existing client. They hired a videographer to create videos for their business. Now the videographer is claiming that my client does not own copyright in the videos. However surprising this may be to most people, the videographer is correct, at least from the legal standpoint.
Unless there is an assignment of copyright in writing, the copyright remains with the person who created the work, in this case, the videos.
Often, the client’s situation does not justify hiring a lawyer to create a completely customized agreement.
So I decided to share the template that I developed as a result of many years of writing these agreements in different jurisdictions.
If you hired someone to create content for you or you are about to hire someone to create content for you and you don’t have a budget to document the transfer of intellectual property from your contractor to you, you should definitely check out these templates. They may not ideally fit your situation and are not offered as legal advice, but in my experience, they should take care of 90% of the situations that usually arise around such facts.
This is where you can download standard Content Creation and Copyright Assignment templates at a fraction of what it would cost you to have a lawyer draft a customized contract. Check out the previews and see for yourself that the level of details covered in these templates greatly exceeds anything that you can download for free on the Internet.
Hoping that this will be of value to you.
The new Copyright Act adds a new section 30.02 that virtually equates digital reproduction of works to photocopying (i.e. reprographic reproduction) for educational institutions.
The general idea is that if an educational institution has a license to make photocopies of works, then the institution may also make digital reproductions of these works and communicate such reproductions by telecommunication for an educational or training purpose.
The person who received such digital reproduction of a work is allowed to print one copy of it.
The educational institution is required to pay to the collective society the same license fees as in the case of the conventional photocopying license and to take steps to prevent unauthorized dissemination of the digital reproduction of the work.
Copyright owners whose rights are represented by a collective society that is authorized to grant licenses to photocopy these authors’ works may refuse to authorize the collective society to enter into digital reproduction agreements with respect to their works, but the default rule is that such permission is deemed to be granted.
Based on the provisions of paragraphs 30.02(4)(a) and 30.02(4)(b), it appears that this section will be of lesser importance once separate tariffs for digital reproduction have been certified.
This section also severely limits the remedies for unauthorized use of the works.
Because copyright owners at least have an opportunity to opt out from the application of this section, I would be happy with it if not for two issues:
First, I do not understand the reasoning behind curtailing the remedies of copyright owners in case their rights are infringed beyond what the exception has already taken away from them; and
Second, I would prefer some clarification as to how this new section is supposed to coexist with the addition of the word “education” to section 29 of the Act.
Speaking of the latter, I am getting many calls and emails with questions about whether this or that use can be justified under the “education” exception. Some are very creative in trying to justify what appears to be blatant copyright infringement under the pretense of having educational purposes.
If specific sections of the Copyright Act are meant to limit the application of s. 29 in that educational purposes are limited to those specific instances that are listed elsewhere in the Act, then the problem is of a much smaller caliber (albeit I still disapprove of the expansion of so-called “user rights”). If, on the other hand, s. 29 is to stand on its own in addition to all these specific instances then we are about to open the Pandora’s box.
BOTTOM LINE: Time will tell.
PS. The new Section 30.03 deals with tariffs. In a language whose clarity is only superior to that of the Income Tax Act, an attempt is made to specify what happens if a new tariff is introduced for digital reproduction or if the educational institution enters into an agreement that specifically deals with digital reproduction. The new section 30.03 is supposed to make it clear what happens with the license fees that the educational institution was paying under s. 30.02. The new section 30.03 may contain an answer to this question, but make it clear it does not...
On February 13, 2013, I delivered a seminar on intellectual property at the New York Institute of Technology in Vancouver.
Great to see so many aspiring students with lit-up eyes who came to learn about IP.
The new Canadian Copyright Act introduces a concept that is novel to world copyright laws. More unjustified exceptions are now recognized in respect of a “lesson”.
A “lesson” is defined as a “lesson, test or examination” (or a part of a lesson, test or examination), in or during which an educational institution or a person acting under its authority does what would be considered an infringement of copyright, but is permitted under one of the numerous limitations or exceptions.
In other words, these are the elements of the definition:
1. a work (or other subject-matter) must be used in or during a lesson, test or examination;
2. the work (or other subject-matter) must be used by an educational institution or a person under its authority;
3. the use of the work (or other subject-matter) must be an infringement of copyright (except for limitations or exceptions contained in the Act);
4. there must exist exceptions or limitations in the Act that would permit the use of the work (or other subject-matter).
In other words, nothing is a “lesson” unless it involves unauthorized use of a work (or other subject-matter) justified under an exception or a limitation. In the attempt to be overly inclusive, the legislator has created a catch 22: Section 30.01 sets out an exception that only applies in respect of a work (or other subject-matter) that by definition would be infringed by the educational institution if not for the fact that such use is somehow already “permitted under a limitation or exception under the Copyright Act.”
Here is the question, if the use is already excused or justified through a different exception or limitation, what is the added benefit of Section 30.01? On the other hand, would exceptions and limitations set out in the Section 30.01 count towards the “exceptions and limitations” referred to in the definition? Based on the rules of statutory interpretation, they shouldn’t. But again – if they don’t, what is the purpose of Section 30.01?
In my post on Section 29.4 of the Copyright Act, I already questioned the interrelationship of the amended s. 29.4 and the new s. 30.01. Section 29.4 is so broad that I cannot see why anyone would ever want to use s. 30.01.
Things get even more convoluted with subsection 30.01(2), which states that Section 30.01 does not apply so as to permit reproduction, conversion of non-dramatic works into dramatic works and conversion of dramatic works into non-dramatic works, if such use of the works would infringe copyright. Again, the definition of “lesson” already states that the use must be permitted through a limitation or exception under the Act. If no such limitation or exception exists, the “lesson, test or examination” during which the work is used would not be a “lesson” under the definition of Section 30.01. If it’s not a “lesson”, then s. 30.01(2) is redundant. On the other hand, if s. 30.01(2) is not redundant, then we run into the problem with the definition.
Subsequent subsections don’t make things any clearer.
Subsection (3) sets out that a fixation of a “lesson” for the purpose of its communication to the public by telecommunication for educational or training purposes is not an infringement of copyright. Again, if fixation and communication of a work included in a “lesson, test or examination” is not permitted under a limitation or exception under the Act, then the lesson, test or examination do not constitute a “lesson”. In this case, Section 30.01(3) would not apply. If such use of a work is already permitted, then there is hardly any additional benefit in restating that the permission is valid for the use of the work as part of the “lesson”. Moreover, if the use of a work is already permitted, there is no reason why educational institutions should consider themselves limited with the additional conditions set out in the follow-up provisions of Section 30.01.
Subsection (5) allows a student who has access to a “lesson” through telecommunication to reproduce it in order to watch it and listen to it at a more convenient time, but the student must destroy all copies not later than 30 days after the student received the final course evaluation.
Subsection (6) requires that the educational institution take reasonable measures to limit access to the “lesson” to students only and then destroy all fixations of a lesson 30 days after the students received their final course evaluation.
BOTTOM LINE: Besides incomprehensible wording of this Section 30.01, a larger question remains: WHY is it OK to use protected works in “lessons”, to fixate and to communicate the lessons containing works used without permission?
To me, this is a poorly drafted arbitrary decision based on an out-of-place compromise.
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Tags:Small BusinessNew Copyright ActFair DealingCollectivismPhilosophy