Most people think of intellectual property only as something that should be protected from others.

It is clear that when you invent something great, or write a thrilling new book, or shoot an awesome new movie, that you would want to protect your work from being used against your wish.

Most people and companies, however, are not this fortunate, and do not really create enough to want to hire a lawyer to protect what they’ve created.

This is one of the reasons why many businesses don’t think that they need to consult an IP lawyer. Their thinking goes like this: “Well, we don’t really create anything, and even if we do, it’s not enough to justify spending thousands and thousands of dollars to try to protect it.”

They may be right, but this approach misses a very serious point. IP is not only what you have to protect against others, it’s also something that others can use against you.

If you are a dentist, you may be interested in registering a trademark for your business, but really there is unlikely to be much more beyond that in terms of using IP as a tool of competitive advantage. But if you have a popular website that promotes your practice, you want to make sure that you own every little bit of content on that website.

What you don’t want to happen one day when your business finally makes it, is to find out that someone wants a piece of your pie, simply because you’ve been using their IP for several years to promote your business.

This is the difference between using IP as a sword (to obtain a tool of competitive advantage) and using IP as a shield (to make sure that nobody can lay a claim on your business).

Few businesses will need to use IP as a sword, but most of them are using IP created by somebody else.

If you don’t take care of IP as a shield, you will be sorry if your business becomes successful.

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.

Talk about crazy numbering of provisions.

Let me say that again: after the Copyright Modernization Act comes into effect, Canadian Copyright Act will have section 2.4(1.1) (proudly pronounced “section two point four subsection one point one”), which section effectively adds to Canadian copyright laws what is universally referred to as the “making available right”.

This right was first recognized in the 1996 WIPO treaties, where the right is worded as the right to authorize “any communication to the public of the works, by wire or wireless means, including the making available to the public of the works in such a way that members of the public may access these works from a place and at a time individually chosen by them.”

In Canada, by virtue of the new section 2.4(1.1) this right will fall under the umbrella of the previously existing right of “communication to the public by telecommunication”. This is done by including the “making 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” in the definition of “communication to the public by telecommunication”.

This may be a sound policy decision, since having two or more separate rights for the same action is confusing. It is enough that uploading of a counterfeit work to the internet may already be considered both a reproduction and communication to the public. Adding a separate right of making available would necessarily raise the question, “If we need a separate right for this, then it means that neither the reproduction nor the communication to the public covers the uploading to the web, and if so, any unauthorized uploads that took place before the new law came into effect must be legitimate.”

In 1996, it made sense to make it abundantly clear that use of works online is not off-limits. Therefore, the new “making available” right came to be. But now that no one is seriously questioning the general principle that unauthorized use of copyrighted works, online or offline, constitutes copyright infringement, using one of the pre-existing rights is a safer bet for continuing disputes.

BOTTOM LINE: Good. The making available right is introduced without disturbing the balance of other rights of copyright owners.

UPDATE: Jason J. Kee (@jasonjkee) made a valid point that folding the making available right into the communication right will have implications because of the existing collective licensing regime. Personally, I’m not a big fan of overreaching collective licensing scheme (or anything collective, for that matter), but I understand that from a practical standpoint it could have been easier to create a new tariff for a new right than to amend the existing tariff to reflect the expansion of the existing right.

Tariffs, albeit very important to most authors, are not what copyright law is about. As I argued in my post How Not to Fix Copyright – My Response to William Patry, copyright is not about getting paid, copyright is about control. Existing tariffs should not determine the right to control one’s works. It is the right to control one’s works that gives rise to tariffs, when necessary.