If there is a method to this madness, I surely don’t see it.

Copyright Modernization Act adds subsections 15(1.1), 15(2.1), 15(2.2), and 15(4) to the Copyright Act. These subsections are essentially an updated version of what used to be ss. 15(1), 15(2) and 15(3) of the Copyright Act.

The problem is that the Copyright Modernization Act does not repeal these former versions, and so, it appears, the Copyright Act will simultaneously have both the old and the new version.

This makes me wonder how many people who were so passionately debating over the amendments, have actually read the bill.

I see no reason other than sloppy drafting for the new Copyright Act to have both the old s. 15(1), which defined the scope of rights of performers in respect of their performances and the new s. 15(1.1), which does the same thing in a different way.

For example, old s. 15(1) mimics Article 7 of the Rome Convention and contains three subparagraphs 15(1)(b)(i), 15(1)(b)(ii) and 15(1)(b)(iii) defining the rights of a performer with respect to reproduction of his performance that is fixed: (i) to reproduce the fixation made without the performer’s authorization; (ii) to reproduce fixation made with authorization for purposes that were outside of the initial authorization; and (iii) to reproduce the fixation that was done without authorization but excused under various exceptions allowed by the Copyright Act for purposes that were outside the scope of such exceptions. The new s. 15(1.1) simply states that performers have a right to reproduce the fixation, period. Question, will an authorization by the performer to fix the performance for the purpose of putting a video on YouTube deprive the performer of the right to reproduce the performance for the same purpose?

In other words, will limitations of the old s. 15(1) still apply, even if s. 15(1.1) offers broader protection?

Section 15(1.1)(d) uses the following wording: “A performer’s copyright in the performer’s performance consists of the sole right … to make a sound recording of it available to the public by telecommunication in a way that allows a member of the public to have access to the sound recording from a place and at a time individually chosen by that member of the public and to communicate the sound recording to the public by telecommunication in that way”. Section s. 15(1.1)(a)(i) gives the performer, whose performance is not fixed, to communicate the performance to the public by telecommunication. Furthermore, s. 2.4(1.1) of the Copyright Act clearly states that “For the purposes of this Act, communication of a work or other subject-matter to the public by telecommunication includes making it available to the public by telecommunication in a way that allows a member of the public to have access to it from a place and at a time individually chosen by that member of the public.”

Now, quiz time:

1. Does the performer whose performance is not fixed have the right to communicate it to the public by telecommunication both in the old-fashioned way and in a way that amounts to the making available right?

2. Does the performer whose performance is fixed only have the making available right with respect to his performance due to the wording in s. 15(1.1)(d) or does he also have the traditional right to communicate the fixed performance to the public by telecommunication?

3. If the answer to #2 is that it’s only the disguised making available right, then what was the purpose of blending telecommunication to the public with the making available right if they are treated separately in the end?

My guess is as good as yours.

Section 15(1.1)(e) contains another masterpiece of legal drafting. It states that if the performance is fixed in a sound recording that is in the form of a tangible object, then the performer has the right to sell or otherwise transfer ownership of the tangible object, as long as that ownership has never previously been transferred in or outside Canada with the authorization of the owner of the copyright in the performer’s performance. If you haven’t already, please read my general comments about merging ownership in tangible objects and ownership of copyright in a work. How do you fix a performance in a sound recording that is not in the form of a tangible object? Would Bryan Adams, according to the new rules, own all iPhones that were used to record his performance at Rogers Arena in Vancouver on June 16, 2012?

It gets better from here.

Section 15(2) was the section that defined the national boundaries of protection for performers. Essentially it gave protection to performances if the performer or the performance had a connection to Canada or a Rome Convention country. The new Copyright Act keeps s. 15(2) intact and adds ss. 15(2.1) and 15(2.2). Section 15(2.1) gives protection to performances if the performer or the performance has a connection to Canada. Section 15(2.2) gives protection to performances if the performer or the performance has a connection to a WIPO Performances and Phonograms Treaty (WPPT). No word in the newly added sections about Rome Convention countries.

If the new sections were meant to displace the old s. 15(2), then it would mean that performances originating from performers who are citizens or permanent residents of a Rome Convention country, but not a WPPT country, will not be protected in Canada. If the new sections were meant to add to the old s. 15(2), then why would the new s. 15(2.1) duplicate the provisions of s. 15(2) in respect of connection to Canada?

Finally, the newly added s. 15(4) essentially duplicates provision of the old s. 15(3) and defines the first publication of a sound recording as it occurs in a WPPT country, whereas s. 15(3) used to define the first publication of a sound recording as it occurs in a Rome Convention country.

BOTTOM LINE: Awful, awful drafting. The intentions may have been good, but the resulting s. 15 is now more confusing than it used to be. A real shame for a massive amendment that the Copyright Modernization Act was supposed to achieve.

Copyright Modernization Act repeals s. 13(2) of the Copyright Act.

This was a section vesting the first copyright in a photograph or a portrait in the person who ordered and paid the photographer or the artist to take the photograph or create the portrait. In other words, when you paid a photographer to take a picture of you, unless you had agreed otherwise, it was you who owned copyright in the picture, not the photographer.

Now this provision is repealed, and it will be the photographer who will own copyright in the photograph or portrait he creates, even if the photographer is paid to do so.

This gives photographers essentially the same rights as web designers, copywriters, software developers, and everyone else who creates content for others. Just because they are getting paid to do something does not mean that the person who commissions the work will automatically own copyright in the works they create.

If ownership of copyright is important, the parties must sign an agreement that would unambiguously transfer copyright from the photographer to the person who ordered the photographs.

The repeal is also backed by adding a new s. 32.2(1)(f), which allows for non-commercial use of the photographs and portraits by the person who ordered and paid for such photographs and portraits. I will discuss this new provision as we get there.

BOTTOM LINE: Good. Even though it may add to the transaction cost when hiring a photographer, it is fair for the Copyright Act to recognize that if the photograph falls under the definition of an “original artistic work”, the photographer should be the first owner of it. If owning copyright in the photograph is important for the person who commissions the photograph, it should not be a problem to sign a short form assignment of copyright.

PS. If you are a photographer or someone who uses services of a photographer, you need to have a professionally drafted agreement that will Protect Your Ideas and Cover Your Assets™. From the legal standpoint, it does not matter who will end up owning copyright in the photograph. What matters is that both the photographer and the person paying the photographer for the photograph know exactly who will be the copyright owner in it.

I have been drafting copyright licenses and assignments for over 15 years. Let me know if I can be of assistance to you.

Copyright Modernization Act repeals s. 10 of the Copyright Act.

This was the section that provided special treatment to photographs and their authors.

It used to be the rule that the owner of the initial negative, plate or photograph at the time they were made was deemed the author of the photograph, which included the possibility that a corporation could be recognized as the author of the photograph.

With repeal of this section, there will be no special rules as to who will be recognized as the author of a photograph, so the usual rules will apply. This means that it is the person whose creative effort resulted in the creation of the work that will be recognized as the photograph’s author, regardless of the ownership in the photograph itself.

It will be curious to see how this repeal will work in conjunction with the newly added s. 3(1)(j) of the Copyright Act, which sets forth that copyright, among other things, includes the right to transfer ownership in the tangible object, if copyright is in the form such object.

Here’s a hypothetical situation that happens all the time. What if I ask someone to take a picture of me with my ipad. The person then carefully chooses the angle to ensure that the light is not interfering with the composition of the photograph, tells me to say ‘cheese’ and takes the photograph. The person who took the photo has just become an author. Moreover, the photo is a work that is in the form of a file that exists on my ipad, and is, in fact, a constituent part of my ipad. Can the person now sell my ipad based on s. 3(1)(j)?

This, of course, is me attacking s. 3(1)(j) again. As for the issue of authorship in photographs, this move is in compliance with the world practice and makes perfect sense. As long as the photograph is an “original artistic work”, it is protected by copyright and there is no reason to grant authorship in that photograph to somebody other than the person who made the creative effort.

BOTTOM LINE: Good. There was no reason to treat photographers differently than any other authors. As long as all criteria of copyrightability are met (and, granted, not all photographs will meet that criteria, however lenient), the person whose creative effort results in the creation of the work should reap the benefits of being recognized the author of the work.

The amendments to s. 5 of the new Copyright Act are merely technical and reflect the fact Canada is implementing 1996 WIPO Copyright Treaty.

Subsections (1.01), (1.02) and (1.03) of the Act are meant to give retrospective effect to protection of foreign works that may have originated from countries that become parties to international copyright treaties after the creation or the publication of the work in question.

The revised version of these subsections now takes into account that a WCT country also falls under the definition of a “treaty country”.

The practical effect of the amendment is, however, going to be zero, since today there is not a single country on the planet that is a party to the WCT but is not a party to the Berne Convention. Given that there are 165 parties to the Berne Convention and that WCT requires that all WCT members must comply with all substantive provisions of the Berne Convention, this situation is very unlikely to change any time soon.

BOTTOM LINE: Neutral. The changes are purely technical, and will have no practical effect on application of the Act

Copyright Modernization Act adds a new right that makes up the bundle of rights that is copyright. The new right is added as s. 3(1)(j) and it reads as follows: “‘copyright’ … includes the sole right, in the case of a work that is in the form of a tangible object, to sell or otherwise transfer ownership of the tangible object, as long as that ownership has never previously been transferred in or outside Canada with the authorization of the copyright owner.”

This provision goes against everything that copyright laws are about. It is Copyright 101 that ownership of copyright and ownership in the tangible object in which copyright may be expressed are two separate rights, which may or may not belong to the same person.

Granted, some European states provide the right to painters to receive remuneration for subsequent sales of their original paintings (droit de suite), but this right is protected as an add-on right, not as the substance of what copyright is defined as.

It has always been clear that granting a license to use copyright embodied in an object did not also mean the sale of the object, just as the sale of the object did not also mean the grant of a license to use copyright embodied in it.

The new provision muddies the waters and merges copyright in the work with ownership of the object.

The wording of the new provision is also unacceptably broad. It refers to works that are “in the form of a tangible object”. Most works are embodied in some form of a tangible object. Even if it’s merely a computer file. Because that file is stored on a tangible object, somewhere. However, the law refers to works that are in the form of a tangible object. Works protected by copyright have a separate life from the form in which they might exist. With respect to music, there is only one single copyright to a song – be it recorded on a CD, a tape, a computer file, or note paper.

Even more intriguing is the question why that provision was added to the Copyright Act. We don’t need the Copyright Act to tell us that whoever creates a tangible object will become its owner and will have the right to sell or otherwise transfer ownership in it. If I buy a canvas and draw something on it (or even if I don’t), then – even without the Copyright Act – I know that I can sell the canvas as a tangible object. This is what ownership is all about it. If you own it, then you can sell it. It does not require a separate provision in the Copyright Act.

On the other hand, it would make even less sense to add a provision to the Copyright Act that would somehow grant ownership in a tangible object to those who happened to embody their creative work in a tangible object previously owned by somebody else. If this was the case, then graffiti artists will be able to claim ownership of the houses on whose walls they are painting; strangers whom we ask to take a picture of us will be able to claim ownership of our cameras, or at least their flash drives; users of internet cafes will be able to claim ownership of computers they use to send literary works in the form of emails; etc.

Clearly, both situations are absurd. But really, either you own the object before it happens to embody a work of copyright or you don’t. The section 3(1)(j) is so poorly drafted that it can mean virtually anything to anybody, which is never a good thing for a provision that purports to form the definition of what copyright is.

BOTTOM LINE: Bad. Very bad. Whatever good intentions may have been behind this provision will probably be lost due to the poor wording. The added drawback is that this provision dilutes the clear line between ownership of copyright and ownership of physical objects in which copyright may be embodied.