Teresa Scassa - Blog

Does copyright subsist in documents that must be submitted as part of judicial or regulatory processes and that are, as a result, publicly available? Some time ago I wrote about two cases making their way through the legal system that raised this issue. A proposed class action settlement agreement in one of these cases, Waldman v. Thomson Reuters Canada, Ltd., has just been smacked down by Justice Perell of the Ontario Superior Court.

The representative plaintiff of this class action lawsuit is lawyer Lorne Waldman, who is well known for his representation of Maher Arar, among others. The defendant is Thomson Reuters Canada Ltd., which operates a major legal database on a fee-for-access basis. As part of this database it provides a “Litigator” service which includes copies of documents filed by lawyers in important cases in Canada. The kinds of documents reproduced in Litigator include affidavits, factums, and pleadings. Such documents are of use to other lawyers – and to the growing number of self-represented litigants – as precedents, or as research resources. They are also of interest to law students and legal academics.

The copyright issues around such documents are interesting. Most would be considered original works of authorship, and would normally be protected by copyright. Because these documents must be filed in court proceedings, they are generally publicly accessible under the open courts principle. However, for the most part these documents are still not available in open, electronic databases hosted by courts. Where they are not electronically available, individuals may consult the court files in person, and/or may request copies of documents for a fee. No licence is sought by the court registrars from lawyers in these circumstances for the right to copy their documents. Indeed, under the open courts principle, a lawyer could not refuse permission to access or copy these documents. Although not directly on point, in a recent court decision in the U.S., which involved claims of copyright in court documents, the court found that as between courts, clients and their lawyers, copyright issues had to take a back seat to the interests of justice.

Even if there were no general licence to copy court documents, in the case of those who are not parties to the litigation and who seek to use such materials, whether they are found in court records or in Litigator, copyright’s fair dealing exception for research or private study would most likely cover their activities. Recent Supreme Court of Canada decisions make it clear that courts should take a liberal approach to interpreting fair dealing, including fair dealing for the purposes of research or private study. In 2004, the Supreme Court of Canada specifically found that research for commercial purposes – including legal research carried out for clients – fell within the scope of this defence. It is less clear that the activities of Thomson would qualify as fair dealing, but to the extent to which they facilitate access to documents already available to the public, there may be some traction to the argument.

It is likely that rather than find that documents filed in court are not protected by copyright at all, a court would find that there is an implied licence permitting copying in respect of all documents filed in court proceedings. What is less clear is the scope of any such licence. Would it include the broad-based copying of materials so as to make them available for a fee? Would it make a difference if the cost of acquiring copies through this paid service was less than the cost of acquiring those copies through the courts?

In the settlement agreement that was brought to the court for its approval, Thomson agreed not to claim copyright in the materials in Litigator, and to provide notice to its subscribers that some material in its database might be covered by third party copyright. It also agreed that for a period of ten years (and apparently no longer) it would give notice to any lawyer whose materials it planned to include in Litigator. If the lawyer objected to the inclusion of the materials, those documents would be excluded from the service. It also agreed to create a trust fund to support public interest litigation. In exchange for the above, the class members would provide Thomson with a non-exclusive worldwide, perpetual and irrevocable licence to use the works. Class members would have the ability to opt out of the settlement. The settlement agreement also included a fee of $850,000 to be paid to the lawyers for the class.

There was support for the settlement from a number of organizations such as the Canadian Bar Association, the Canadian Civil Liberties Association, and the B.C. Civil Liberties Association. These organizations were chiefly onside because of the trust fund that would benefit public interest litigation. Six class members also wrote letters in support of the settlement. However, support was not universal. Seven class members wrote letters opposing the settlement. It may not be surprising that the lightning rod for opposition to the settlement was the huge disparity between the amount of the fund created to support public interest litigation and the fees sought by class counsel. One opponent wrote: “this smacks of lawyers taking an opportunity to make money in a scenario where there was likely little value to the individual class members.” (at para 69). Another stated: “This reeks of a distortion of the noble goal of legitimate class action proceedings”. (at para 70). A third lawyer objected on the basis that he felt that court documents were public as of the moment of filing, and should be readily available electronically. Another noted that class members received nothing of benefit in exchange for the licence they would be required to give to Thomson.

Justice Perell was unequivocal in his rejection of this settlement agreement. He found that the Agreement was not “fair, reasonable, and in the best interests of the Class Members” (at para 90). He found that the settlement allowed the plaintiffs to “emerge unscathed” from what was now “prohibitively high-risk litigation” (presumably because of the weakness of the copyright claims). For Thomson, the Agreement would allow it to acquire, at relatively low cost, 13,000 non-exclusive copyright licences and releases from copyright owners. They also would evade any litigation risk, and would be spared further costs of litigation.

Justice Perell found that the class members would derive no benefit from the agreement. In fact, he concluded that the agreement “brings the administration of justice and class actions into disrepute because: (a) the Settlement is more beneficial to Class Counsel than it is to the Class Members; and (b) in its practical effect, the Settlement expropriates the Class Members’ property rights in exchange for a charitable donation from Thomson.” (at para 95). Interestingly, Justice Perell characterized the principle at issue in this case as being “that Thomson should not take what most lawyers would be prepared to give away for free if only politely asked.” (at para 98). Here, Justice Perell found that providing Thomson with a licence did not respond to that basic principle. He found that “there is no access to substantive justice for the claims of Class Members and no meaningful behaviour modification for Thomson.” (at para 101)

Justice Perell was also scathing about the imbalance between the amount of the charitable trust fund and the amount of the lawyers’ fees. He was not mollified by the offer of class counsel to donate $150,000 of their fee payment to the trust fund. He wrote “a fairer and more reasonable resolution of this class action would have been to seek court approval of a discontinuance of the action on terms that provided for a cy-près payment and a fair and reasonable Class Counsel Fee and no granting of licences.” (at para 107)

It would seem that this suggestion of a possible settlement embraces the view that no licence is needed to copy the documents at issue. Yet, it is not clear what any settlement that did not involve a concession of licences would mean for Thomson and its desire to continue offering these materials through Litigator. Without resolution of the underlying copyright issues, the uncertainty regarding the re-use of such materials will remain.

Published in Copyright Law

A recent decision from the Federal Court of Canada squarely addresses the issue of copyright trolls and the impact they may have on ordinary Internet users. It also highlights the importance of public interest advocacy in a context that is rife with economic and power imbalances.

The Internet is widely used as a source of content – whether it is in the form of film, music, text or visual works. While there is a great deal of content available both free and for a fee from authorized distributors, other content is shared without the consent of copyright holders. Where unauthorized distribution takes place, copyright may be infringed – but of course whether there has been actual infringement by the downstream user may depend upon a range of considerations.

Copyright owners – particularly those in the film and music industries – have for some time now been decrying the widespread unauthorized sharing of content over the Internet. They have also adopted a variety of strategies to impede these activities. These have included suing file-sharing services such as Napster, Grokster or Pirate Bay, with a view to having them shut down, public education campaigns, and threats of legal action or actual law suits against individual downloaders of protected content. It is with respect to this latter category of action that the label “copyright troll” has been used.

In Voltage Pictures LLC v. John Doe and Jane Doe, Prothonotary Aalto of the Federal Court considered an application for an order to compel Internet service provider TekSavvy to disclose the identities of individuals linked to some 2000 IP addresses that in turn had been associated with illegal downloading of Voltage’s copyright protected films. An earlier Federal Court of Appeal decision in a case involving music downloads had outlined the circumstances in which such an order might be granted, taking into consideration the necessary balance between the applicant’s rights and the privacy rights of the individuals linked to IP addresses. Voltage argued that it had met all of the requirements of this test.

The Samuelson-Glushko Canadian Internet Policy and Public Interest Clinic, more commonly known as CIPPIC, intervened in this case in the public interest. CIPPIC’s intervention was particularly important given that there was really no other available party to speak out for the interests of the still anonymous Internet users whose identities might be disclosed were an order to be issued. It is clear as well from reading Prothonotary Aalto’s reasons, that CIPPIC’s submissions had a significant impact on the outcome.

The decision begins with a quote from a U.S. case which speaks of the rise of “copyright trolls”, and it is clear that the spectre of such trolls looms over the Federal Court’s decision. The concept of “trolls” has become common in both patent and copyright litigation. In the copyright context, a troll is a plaintiff who files “multitudes of lawsuits solely to extort quick settlements”.[1] Trolling is a business model in its own right – suits are launched not so much in order to deter or to compensate for the harm caused by infringement; rather, trolling generates revenue by compelling individuals to settle for sums that are lower than the cost of obtaining legal advice and pursing a defence to the threatened action. As Prothonotary Aalto noted in his extensive reasons, copyright trolls have been active in other jurisdictions, and courts in both the U.K. and the U.S. have striven to find an appropriate result that protects individuals while recognizing the rights of copyright owners to bring legal action.

Prothonotary Aalto’s decision is, in fact, an exploration of the issues raised and an attempt to find an appropriate balance between the rights of individuals to pursue their online activities without having their identities disclosed to third parties, and the rights of copyright owners to sue for infringing uses of their works. He begins his reasons by considering the test for a Norwich Order laid out by the Federal Court of Appeal in BMG v. John Doe, another case which required the court to balance privacy interests against the rights of copyright holders. Although in Voltage, CIPPIC argued that the threshold for the application of this test was too low, and that parties seeking disclosures of the names of individual Internet users should have to make out a prima facie case of infringement, rather than just a bona fide (good faith) claim, Prothonotary Aalto found that the test set out by the Federal Court of Appeal was both appropriate and applicable. He also found that Voltage had met the prescribed test, ruling that “the enforcement of Voltage’s rights as a copyright holder outweighs the privacy interests of the affected internet users.” (at para 57) He noted, however, that the test left room to consider and to moderate the impact of the order on privacy rights.

There was no evidence in this case that Voltage was a copyright troll. Indeed, Prothonotary Aalto found that Voltage had met its burden of showing that it had a genuine copyright infringement case and that a court order to compel TekSavvy to release the contact information of some of its customers was the only reasonable means of establishing the identities of the alleged infringers. However, he acknowledged evidence and argument by CIPPIC to the effect that there might be technological flaws in the methods used to link IP addresses to downloading activities, such that some IP addresses may have been identified in error. He also accepted that some of the downloading activity might be justifiable under one defense or another. More importantly, perhaps, he was sensitive to the evidence supplied by CIPPIC of copyright troll activities in other jurisdictions and of the concerns of courts in those jurisdictions regarding such practices.

Ultimately, Prothonotary Aalto’s decision seeks to balance the intellectual property rights of the copyright owner with the privacy rights of individuals who might be identified as a result of a court granting a Norwich Order. In his view, it is only in a case where there is “compelling evidence of improper motive on behalf of a plaintiff in seeking to obtain information about alleged infringers” that a court would be justified in refusing to grant such an order. (at para 133) Nevertheless, the court has the authority to place terms and conditions on the grant of the order, and these terms and conditions can protect the privacy of individuals by ensuring that their personal information is not shared or misused by a company that seeks this information for improper purposes, such as copyright trolling.

In issuing the Norwich Order in this case – which compels TekSavvy to furnish the information sought, Prothonotary Aalto placed significant limits on the order. In the first place, Voltage is ordered to compensate TekSavvy for its legal and administrative costs in compiling the requested information. A copy of the court’s order must accompany any correspondence sent to TekSavvy customers by Voltage as a result of the sharing of the customer information. Any such correspondence must also “clearly state in bold type that no Court has yet made a determination that such Subscriber has infringed or is liable in any way for payment of damages.” (clause 8 of the order) This is to avoid the type of demand letter seen in copyright troll cases in other jurisdictions where letters sent to individuals convey the impression that conclusions have already been reached on issues of infringement. As an additional safeguard, Prothonotary Aalto ordered that a draft of any such letter must be reviewed by the Case Management Judge appointed to oversee the process before it is sent to any individuals. The order also provides that the personal information shared by TekSavvy as a result of the order must be kept confidential by Voltage and must not be shared with anyone else – including the general public or the media -- without the court’s permission.

The decision in this case is a welcome one. It reflects a serious effort to ensure fairness and balance between the parties. It provides the applicant with the means to obtain the information it needs to pursue copyright infringement claims; at the same time, it imposes restrictions designed to ensure that the personal information is not used improperly to generate revenue well in excess of any damages suffered by the rights holder by pushing individuals into settlements in order to avoid the costs and stresses of threatened litigation. The decision is a direct result of public interest advocacy and a reminder of the important role played by organizations such as CIPPIC.

It is worth noting that the 2012 amendments to the Copyright Act included changes to the statutory damages provisions in that statute. These provisions allow plaintiffs to opt for a fixed amount of damages in cases of infringement – in other words, to be compensated without having to establish any particular losses. The 2012 amendments drastically reduced the amount of statutory damages that can be awarded against individuals whose infringing activities are essentially non-commercial. This takes away the ability for plaintiffs to stack statutory damages in suits against individual downloaders in order to arrive at the ridiculously high (and ultimately punitive) damage awards that we have seen in the U.S. in lawsuits against students or other private individuals whose downloading was simply for their own consumption. The message from Parliament is clearly that this type of conduct, while still infringing, should not be be exploited by rights holders either to “send messages” or to provide a new business model based on serial demand letters to large numbers of vulnerable individuals. The decision by Prothonotary Aalto is in keeping with this message. While copyright owners are entitled to enforce their rights through the courts, the courts must ensure that “the judicial process is not being used to support a business model intended to coerce innocent individuals to make payments to avoid being sued.” (at para 35)



[1] This is from TCYK, LLC v. Does 1-88, 2013 U.S. Dist LEXIS 88402. The quoted words are part of the passage in the quote that starts off the Federal Court decision.

Published in Copyright Law

In December 2013, Justice Campbell of the Federal Court of Canada awarded 10 million dollars in statutory damages to Twentieth Century Fox Film Corporation against Nicholas Hernandez and two unknown defendants. The court also awarded an additional half a million dollars in punitive damages. The decision was reached by default judgment, which means that the defendants did not respond to the lawsuit.

Statutory damages for copyright infringement have been available under Canada’s Copyright Act since 1997. Essentially, a plaintiff in a copyright infringement suit has the option to choose to receive statutory damages rather than to establish the actual quantum of damages suffered. For infringement with a commercial purpose, statutory damages range from a minimum of $500 to a maximum of $20,000 for all of the infringements related to a given work. A plaintiff might choose statutory damages when the amount of their loss is either very small or is difficult to quantify. Statutory damages are of particular benefit to large corporate rights holders whose works are downloaded in large quantities from the internet, and who might otherwise face difficult challenges in proving actual losses. Among other things, statutory damages provisions in the U.S. have made it worthwhile for record companies to sue individuals for music downloading. Where a defendant has downloaded 1000 songs, for example, the per-work damage awards would quickly add up to a significant total, making the lawsuit not simply about the recovery of damages (which may greatly exceed the benefit obtained by the defendant) but also about punishment and arguably deterrence. In Canada, the 2012 amendments to the Copyright Act have made these kinds of lawsuits more difficult in cases where the defendants have copied works for purely private purposes. In such cases, the amount of statutory damages is considerably reduced and such damages are awarded not per work, but rather for all infringements and for all works in any given proceeding.

In Twentieth Century Fox v. Hernandez,* the defendants were alleged to have operated two websites that made unauthorized copies of episodes of both The Simpsons and Family Guy available for free download or streaming. These activities were not of a purely private nature – the copies were made with a view to disseminating them further, and there was evidence that the defendants profited from their venture. The Court did not provide a detailed accounting of how it arrived at the statutory damages award of $10,000,000. For example, it did not identify how many episodes of the two television series were made available for download. As a result, it was not clear whether Justice Campbell was awarding damages at the low or high end of the scale – or somewhere in between. Since no amount per work is actually specified (nor is the number of works provided) it is no surprise that there is also no explanation of the rationale for the per-work amount. These details would seem to be important in shaping the jurisprudence in relation to these types of awards. Further, according to Justice Campbell, the award of statutory damages alone was not sufficient “to achieve the goal of punishment and deterrence of the offense of copyright infringement in this case”. For this reason, the additional half million dollars in punitive damages was awarded. Without any indication of the number of works at issue or the per work amount of damages, it is also difficult to assess the appropriateness of the award of punitive damages. Given that the defendants did not defend themselves in the proceedings, it is not likely they will file an appeal; however, the low likelihood of an appeal is not an excuse for not providing full reasons to explain the award of damages. [Note that there are approximately collectively about 750 episodes of the two shows. If all episodes were made available from the websites, then the damage award would be just over $13,000 per episode – on the high end, but not at the top of the scale.]

Mistrale Goudreau and Joao Velloso have written an interesting article on statutory damages in the recently published book Intellectual Property Law for the 21st Century: Interdisciplinary Approaches. In their piece, titled “Punishment Private Style: Statutory Damages in Canadian Copyright Law”, Goudreau and Velloso argue that punitive and statutory damages are used by courts to penalize copyright infringement – as is evident in the Hernandez case. The authors argue that the result is a form of punishment for infringing activity that lacks the procedural safeguards that are normally present in criminal prosecutions. While the authors’ focus is more on the use of statutory damages in non-commercial contexts, they offer some thoughtful – and critical – insights into the role of statutory damages within our copyright regime.

* Note that the court decision discussed in this blog is not available from the Federal Court’s website. This link is to a private website that has made the decision publicly available.

Published in Copyright Law

A terrific collection of papers that I had the pleasure of editing along with Mistrale Goudreau, Courtney Doagoo and Madelaine Saginur, titled Intellectual Property Law for the 21st Century: Interdisciplinary Approaches, has just been published by Irwin Law. The book is available for sale from Irwin as an eBook or in paperback format. It is also published under a Creative Commons Licence, and individual chapters can be downloaded here.

This book flows from a workshop we hosted at the University of Ottawa. Our goal was to bring together Canadian academics interested in interdisciplinary approaches to IP law. Participants were from many different disciplines, including law, English, cultural studies, music, library and information studies, criminology, political science, and sports management. The papers cover a broad range of IP subject matter, including copyright, trademark and patent law, as well as laws restricting ambush marketing, and personality rights.

The collection of papers pushes us to think about the importance of interdisciplinary perspectives and approaches in a context where intellectual property law is no longer simply a matter of commercial relationships, but also trenches deeply on issues of economics, culture, health, innovation, creativity, and intellectual freedom. Some of the papers use insights from other disciplines to examine how the law should be interpreted and applied (in the context of copyright infringement analysis in music or film, for example), others bring to bear the theories of methodologies of other disciplines to elucidate the historical evolution of certain IP rights, or the political discourse surrounding IP law and its reform. There is truly an immense breadth of content here, from a discussion of evidentiary problems in business method patent litigation to the impact of commercialization approaches to scientific research on academic scientists. Check out the table of contents to get a sense of the full range of topics.

Published in Copyright Law

Open licences have become a popular means by which works covered by copyright or database rights are made available for use and reuse. In fact, open licences are so popular that even governments are embracing them. Canada’s federal government, for example, has launched its own open government licence, and similar licences have been adopted by provincial and municipal governments. Some open licences contain restrictions (such as on commercial use) – or requirements (such as attribution), while others contain virtually no limitations. Open licences promote sharing of works as well as the creation of new works derived from or built upon the licensed works.

The popularity of open licences, as well as the diverse contexts in which they are developed and used, mean that compatibility between the licences can be a problem for users who wish to combine two or more works that have been made available under open licences. While basic technical interoperability is required when combining digital works, ‘legal interoperability’ is a term used to describe the ability to compile works made available under different open licences in such a manner that the legal status of the resulting compilation is clear. This can be surprisingly challenging. Given that open licences are generally designed to be accessible and user-friendly so as not to stifle creativity under a blanket of legalese, it can be a problem if creators are left having to determine the compatibility of the different rights and permissions set out in a variety of open licences.

This is what makes the newly launched website CLIPOL.org an interesting and potentially important resource. CLIPOL.org is an initiative of the Samuelson-Glushko Canadian Internet Policy and Public Interest Clinic (CIPPIC), and was funded in part by Natural Resources Canada through its GeoConnections programme. The website contains a catalogue of open licences from around the world and from a range of different contexts. Two apps are available from the site to use with the licence database. The “text compare” app has two functions. The first allows a user to evaluate the compatibility of different licences in the database. Highlighting and redlining are used to show how the actual licence terms differ in the two licences. The second a schematic comparison of a family of similar licences. The other app available from the site is a compatibility tool which allows users who are thinking of combining works under different licences to assess the extent to which the different licences are compatible.

The website also offers a useful set of resources on open licencing through the link to the CIPPIC Open Governance site, and it provides links to other major sites that deal with open licencing issues.

The project is already publicly available, but it will be formally launched through a free webinar hosted by GeoConnections on February 11, 2014.

Published in Copyright Law

[The following is the text of my presentation at the launch conference for the edited collection of papers: The Copyright Pentalogy: How the Supreme Court of Canada Shook the Foundations of Canadian Copyright Law, Michael Geist, ed., University of Ottawa Press, 2013. The conference took place on October 4, at the University of Ottawa. My chapter in the book, titled “Acknowledging Copyright’s Illegitimate Offspring: User-Generated Content and Canadian Copyright Law”, can be found here.]

The recently revised Copyright Act contains many new exceptions to copyright infringement. Some of these involve additions to existing exceptions (expanding fair dealing to include education, parody and satire, for example), and quite a number of them are exceptions that normalize activities that used to be considered copyright infringement in spite of the fact that everyone engaged in them (like home recording of TV shows, making backup copies of software, or ripping one’s CD collection so that it can be played on an mp3 player).

Today I will talk about one of the new exceptions that is noteworthy because unlike these other exceptions it is not about modernization of the law through updating or adapting the law to well established contexts. The exception for User Generated Content addresses the evolving and emerging ways in which works are created and disseminated in our contemporary digital culture. This exception is situated in the context of a strong collection of SCC jurisprudence that directs courts to consider the importance of balancing creators’ rights against the public interest in innovation, creativity and the broad dissemination of works.

During the long progress of this bill into law, the UGC exception was dubbed the YouTube exception, in reference to what was perhaps its paradigmatic activity. For many, it was the idea that (as happened in the US) a mother might be sued for infringing copyright in music playing in the background of a home video posted to YouTube featuring a cute toddler dancing around, that justified the enactment of the UGC exception.

Yet while this may have been the paradigmatic activity (something that would not have been captured by fair dealing exceptions), the UGC exception is intriguing because it is rather breathtakingly broad in terms of the kinds of activity to which it might apply. From one perspective it is a licence to build on the works of others; from another it is a potentially sharp curtailment of the scope of a copyright holder’s ability to control the use of their work. In the end, the scope and importance of the UGC exception may come down to how its limiting provisions are interpreted: and in this regard, the direction already charted by the SCC in its recent copyright decisions will likely have great bearing.

So – what is UGC? UGC flows from the twin phenomena of deprofessionalization and disintermediation. With the now widespread availability of sophisticated, user-friendly, and increasingly portable technologies and software, ordinary individuals, with no specific training are able to engage in a broad range of activities –creating films, recording or remixing music, compiling information, mashing up different works or different types of works – that were once the exclusive domain of professionals. At the same time, digitization, the internet and the rise of social media have made it possible to disseminate user-created works to a global audience without the need of the traditional intermediaries for content publication and distribution. The result is a profoundly different environment for the creation and dissemination of “works” of all kinds within a rapidly transforming normative environment.

What is new here is not the fact that “users” are generating new content using existing works – people have always done this, and it has been either tolerated (or undetectable) when carried out for private purposes. What is new is the scale of this activity, along with its social, political and economic consequences.

The concept of layered rights in a work is well-established in copyright law. For example, the Copyright Act specifically recognizes the independent copyright that will arise in a translation of a work, notwithstanding the fact that the making or authorization of a translation is one of the exclusive rights of the copyright holder. Musical arrangements are also recognized as works independent of the original (although, if unauthorized, they may also be infringing). The whole category of adaptations of works (in the US, derivative works) recognizes that new works can be created from pre-existing works; but that these works may infringe on copyright in the original.

What the UGC exception injects into this concept of layered rights is the possibility that someone may create a new work using a pre-existing work in which copyright subsists, AND that they may disseminate it widely, so long as they do so non-commercially, and so long as this does not (and this is the tricky part) have a “substantial adverse effect, financial or otherwise, on the exploitation or potential exploitation of the existing work.” The exception offers more than fair dealing, in that the purposes for the creation of the UGC are not restricted in any way. In a sense this exception seems to acknowledge that in contemporary society, people interact with digital content in a wide variety of ways, and that such interactions do serve some public purpose, whether it’s the fostering of creative self-expression, the creation and dissemination of new knowledge, or simply a now accepted way of participating in culture in an interactive manner.

What I would like to do now is look at the potential scope and limitations on the UGC exception, keeping in mind the approach laid down by the SCC to addressing the balance of competing interests in copyright law.

To qualify as UGC for the purposes of this exception, the author of UGC must use an existing work – with no limitations on kind or category; and they must use it to create a new work in which copyright subsists.

This is a very broad definition with the potential to include all manner of works. Leaving aside dancing toddlers, the exception is broad enough to include things such as an unauthorized translation of a work, and a compilation (which can be a work that is comprised of other works). (Of course, it is much broader than this, but I have chosen these two examples to illustrate the sheer scope of the definition of UGC). Indeed, if you take the example of a compilation, it would seem that the UGC exception might finally make legal in Canada the much loved but always illegitimate mix tape – a compilation of songs chosen by its maker for their particular significance or in the hope that they will impress or seduce the recipient. None of the other exceptions – the one for private copies, the exception for copying music onto blank audio recording media, or even fair dealing – would seem to legitimate the act of creating a compilation of musical works for the purpose of giving it to someone else; but the UGC exception seems not only to include such a creature within the definition of UGC, it also legitimates the non-commercial distribution.

Many creators already draw upon pre-existing works in the generation of new works. The UGC “User” is different from other creators largely because the works she draws upon to create her own works are still protected by CR and, unlike other creators who make use of the works of others, she may lack the economic ability to obtain a licence for her use of the work. Unlike other creators, her immediate expressive goals may also be served by non-commercial dissemination.

It will be interesting to see whether the implicit view that UGC is somehow parasitic in nature colours how UGC is dealt with by the courts in cases where the source work or works are ones in which the subsistence or scope of copyright might reasonably be challenged. Thus, for example, assume that the UGC work is a mashup of data, or an app that makes use of data from other sources. Providers of data, including governments at all levels in Canada, tend to assert copyright in data in rather broad terms (not all government data, for example, is made available under an open licence, and even the open licences assert copyright in the data sets), so the claim to copyright is there, even though it may be either unsupportable or rather limited in scope. If the creator of a work that is built upon data from other sources decides to commercialize their work, rather than continue to disseminate it at no cost, it will be interesting to see how the UGC exception is reconciled with the use of works in which – to borrow the language of the USSC, copyright is “thin”. In other words, will the focus ultimately be on the legitimacy of the use, or will it be on the legitimacy of the copyright claim? What I wish to underline here is the potential of the UGC exception to push users towards non-commercial dissemination in contexts where commercial dissemination is a real option. One would hope that the strong line on balance taken by the SCC would direct courts towards a careful examination of the underlying copyright claims before shifting their attention to the limits of the exception.

In order to further explore the strengths and weaknesses of this exception and its relationship to other provisions in the Copyright Act, I am going to use an example as an illustration.

A translator typically uses a work protected by copyright as a basis for their translation, which is a work in its own right. The amateur and unauthorized translator used to infringe copyright (unless somehow fair dealing could be asserted) when they created their translation.

Let us assume that Gail is a skilled freelance English/Estonian translator in Canada. She is a huge fan of an obscure Estonian author’s first novel. That author’s market share in Estonia is already small, his publisher, who owns all of the rights in his works, sees no market for an English translation of the book. In her spare time, Gail translates the work and publishes her translation on the Internet, where it begins to develop a following.

To qualify for the UGC exception, the use of the new work or the authorization of its dissemination must be solely for non-commercial purposes. The concept of non-commercial is a tricky one, and it will be interesting to see how it is interpreted. If Gail is not selling copies of her translation on the Internet, this would appear to be non-commercial. On the other hand, if her skilful translation brings attention to her and results in her receiving translation contracts is there now a commercial dimension to her posting of the work? Does it make a difference whether she posts the translation on Facebook or Wattpad, or whether it is placed on her personal website which she also uses to advertise her services as a translator?

The non-commercial restriction is only for the creator of the UGC. Dissemination of the UGC may be carried out for the commercial purposes of the intermediary. Thus it is not an objection to argue that YouTube or Facebook are commercial enterprises. Their role in disseminating the UGC does not disqualify the UGC from the application of the exception. Of course, this creates an interesting dynamic, since it means that SOMEONE may be commercially exploiting the original copyright protected work – if not, perhaps the creator of the UGC. The growing popularity of Gail’s translation may drive users towards a website that features advertising content. This indirect commercial exploitation may frustrate copyright owners. Yet as the SCC has now repeatedly confirmed, the broad dissemination of works is a public good, and one against which owners’ rights must be balanced. Since advertising is a part of the business model for sites that aggregate and disseminate UGC, this commercial dimension may be tolerated as a necessary evil in order to achieve broad dissemination.

Perhaps the most open-ended limitation on UGC – and one which is most problematic for those who wish to rely on the exception is that which precludes uses that do not “have a substantial adverse effect, financial or otherwise, on the exploitation or potential exploitation of the existing work”. Unfortunately, this is “shut down” language. It is open-ended enough that it might not only discourage a creator of UGC from disseminating work online, it might be the meat of a very intimidating cease and desist letter. In the case of Gail’s translation, it may be that the growing popularity of the work as a result of her translation means that there is now a market for an English-language translation of the book – although this market is now adversely affected by the availability of Gail’s free translation. As a non-commercial content creator is unlikely to have pockets deep enough to withstand the threat of litigation, this kind of language may unfortunately gut much of what is promising and interesting about this exception.

It is also not clear whether the moral rights provisions of the Copyright Act will operate to limit the creation and dissemination of UGC. The UGC exception provides that qualifying UGC will not infringe copyright, but it is silent as to moral rights. Where the UGC can be argued to result in a mutilation or modification of the original work to the prejudice of the honour or reputation of the creator, then it will be in violation of the creator’s moral right to integrity. Assume that the original author of the work feels that Gail’s translation creates an entirely different mood to the book than that which he believes he created in his own work, or that she has chosen to have the characters speak in a particularly informal kind of English which he feels is completely inappropriate. Jurisprudence on moral rights is relatively uneven and unhelpful; it is not clear how the UGC exception, the need to create a balance of rights, and the moral rights provisions will be reconciled with each other.

Finally, it is worth asking what the relationship is of UGC to the fair dealing exception. The Supreme Court of Canada has now sent repeated strong messages about how the user’s right of fair dealing should be interpreted and applied.

UGC has an interesting relationship to fair dealing: Not all UGC will fit within the fair dealing exceptions, but some will. For example, UGC that is parodic or satirical may also qualify as fair dealing. As the SCC has already told us that fair dealing is always available as an exception notwithstanding other applicable exceptions, one can assume that a parody or satire that is exploited commercially and that therefore does not qualify for the UGC exception, might still be considered under the fair dealing provisions. Gail might perhaps argue that the translation of the work was for the purposes of the potentially very broad category of “education”; she was hoping to educate the public about a talented but obscure Estonian writer. In that case, the fact that the work may have an adverse effect on some potential market for the work is only one of the factors that would be taken into account by a court in an assessment of fair dealing.

Although there is much interpretive uncertainty surrounding this new exception, what the messages sent by the SCC in the copyright pentalogy do is signal an approach to the interpretation of all of the copyright exceptions in a manner that achieves a proper balance between the competing public interests served by copyright law. In particular, the emphasis on the importance of the dissemination of works – including and perhaps in particular their dissemination over the internet, will signal to other courts the need to take into account the value and centrality of this mode of communication in contemporary society, as well as the shifting dynamic of the creation and dissemination of works.

Published in Copyright Law

A recent US copyright law decision addresses one aspect of the question of how copyright law applies to documents that are submitted as part of public processes – in this case, court proceedings. These issues have cropped up in Canada in a couple of fairly recent instances. For example, there is an ongoing class action lawsuit launched by lawyers in private practice who object to the defendant’s inclusion of court documents authored by lawyers into their commercial products without consent or compensation. Another Canadian court refused to certify a class action law suit on behalf of land surveyors who objected to the inclusion of their land surveys into an electronic land registry database without licence or compensation. Although the class was not certified, the court did offer some interesting views regarding ownership of copyright in the documents.

The US decision, Unclaimed Property Recovery Service Inc. v. Kaplan comes from the Court of Appeals, Second Circuit. In this case, the plaintiffs had previously been involved with a class action law suit, for which they had prepared the first class action complaint and compiled the accompanying exhibits. Kaplan was the attorney representing the class. He signed and filed the documents on behalf of the class. When the complaint was dismissed as being outside the prescribed delays, he filed an appeal. Before the appeal was decided, Kaplan and the plaintiffs had a falling out. The plaintiffs retained new lawyers; Kaplan continued on as attorney of record for the class action law suit.

The appeal proceeded and was eventually successful, and leave was granted to file an amended complaint, which was done. The amended complaint was based upon the first complaint and its accompanying documents, and indeed “[s]ignificant portions of the Second Complaint and Second Exhibits were identical to portions of the First Complaint and First Exhibits.” Meanwhile, the plaintiffs registered copyrights in these documents and proceeded to sue Kaplan for having infringed their copyrights in the complaint and exhibits. They sought both an injunction and damages. The district court dismissed the plaintiffs’ action and it proceed on to the Court of Appeals, which unanimously dismissed the appeal.

The Court of Appeals found that when a person who holds copyright in litigation documents authorizes a party to the litigation to make use of the documents, “such an authorization necessarily conveys, not only to the authorized party but to all present and future attorneys and to the court, an irrevocable authorization to use the document in the litigation thereafter.” The Court noted that any other outcome would jeopardize the litigation system. It noted that “[t]he courts could not thoroughly and fairly adjudicate a matter if suddenly in the midst of litigation the parties lost the right to give the court copies of documents already used in the litigation that support their arguments.” It went on to find that the copyright holder who authorizes a party to use documents in litigation must know that as a consequence these documents may be reproduced and distributed for purposes related to that litigation. The Court added that in this context, “[t]he needs of the courts prevail over the copyright holder’s selfish interests, and the authorization becomes irrevocable as to the participants in the litigation for the purposes of the litigation.” The authorization would extend to incorporating all or part of the documents into an amended complaint, as happened in this case.

The Court also noted that to allow the interests of a copyright holder to trump those of parties to the litigation could lead to serious ethical consequences. For example, an attorney who drafts legal pleadings for a client could not invoke her copyright in these pleadings to limit their use without breaching her ethical obligations to that client. A lawyer should also not be able to use his copyright in documents to thwart a client’s attempt to change attorneys. Finally, the court noted that to accept the plaintiff’s arguments would hamper the authority of courts to manage their own affairs: a court order requiring parties to amend their pleadings should not run up against copyright claims in those pleadings.

The decision seems eminently sensible, but it does not resolve some of the other copyright issues that swirl around documents submitted as part of legal processes. For example, it does not address the issue raised in Waldman v. Thomson Reuters Corporation, which turns on whether copyright in documents that are part of a public court record can be asserted against a publisher that seeks to commercialize these documents – albeit in works aimed at assisting lawyers in their practice. The Second Circuit Appeals Court was careful to emphasize that their decision reached only to the particular facts of the case before them – the issue was whether copyright law could be used to prevent the class action plaintiffs from making use of documents which they had previously been authorized to use. The court noted: “We do not decide whether a party who is authorized to file a legal pleading in one case is also authorized to file it in others cases. We do not decide whether the parties to the litigation may use the pleading for other purposes unrelated to the litigation.” And, of course, they do not decide whether those pleadings, as part of the public record, can be used by others for their own purposes.

Published in Copyright Law
Wednesday, 04 September 2013 13:34

Copyright and the visual arts: new court decision

A recent decision of the Ontario Supreme Court offers a relatively rare glimpse into how copyright laws are applied to artistic works in Canada.

The plaintiff in this case, visual artist Malcolm Rains, painted a series of oil paintings over a period of 22 years. He calls this series the “Classical Series” and it currently comprises over 200 paintings. Each of these paintings is a still life of a sheet of crumpled paper against a particular background. The defendant is visual artist Lucian Bogdan Molea. In 2000, Molea began painting still lifes of crumpled paper. Rains brought suit against Molea, arguing that he had infringed his copyright in individual canvases, as well as in his series as a compilation.

Justice Chiappetta began her analysis by considering whether copyright subsisted in the individual canvasses painted by Rains and in the series. She found that the plaintiff’s canvasses met the standard of originality set out by the Supreme Court of Canada, notwithstanding the fact that the he “employed commonplace tropes used by painters for centuries”. The paintings emanated from Rains and were not copies of other works; they also reflected an exercise in skill and judgment that was more than trivial. She rejected the argument that the paintings amounted to an unprotectable merger of idea and expression. Justice Chiappetta noted that the idea was to paint a still life of a crumpled piece of paper; the expression of the idea was found in each individual painting. Recognizing copyright in the paintings did not give Rains a monopoly over the idea.

Although she found that each painting was protected by copyright, Justice Chiappetta reached a different conclusion with respect to the series. It was argued that the series was itself a distinct work, namely, a compilation. To be protected, a compilation must be an original expression that reflects an exercise of skill and judgment. In the case of the series of paintings, there was a concept, and a progression of canvases, but there was not the exercise of skill and judgment necessary to create a compilation. She explained: “There is no originality in the label itself, there is no skilful organizational aspect of the Classical Series that warrants protection for the series as a whole.” (at para 17) The paintings were not specifically selected and/or arranged as part of a collection; rather, the series was an open-ended and evolving category of works. Justice Chiappetta also rejected arguments that the series should be considered a compilation because it evokes a common feeling or “gestalt”. She stated: “it would be unwise to extend copyright protection to the visual perception of an artistic work, which is intangible and subjective.” (at para 22).

Having determined that copyright subsisted in the plaintiff’s individual paintings, Justice Chiappetta next considered whether Molea’s works infringed upon those copyrights. At the outset she dismissed any similarities between the works that were due to “common, long-established artistic techniques”. She also found that these similarities represented “a substantial part of the respective works.” (at para 30) She noted that painting crumpled paper “has been employed as a model since the French Academy was founded in 1664”. (at para 35) Painting it on a flat surface had similarly been around for at least 200 years. She also noted that the choice of certain colours for backgrounds also reflected long established practices. However, Justice Chiappetta was careful to clarify that she was not imposing a “novelty” standard for the protection of artworks under copyright law; rather, an artist: “cannot establish infringement by relying on his use of the noted unoriginal, commonplace, historical painting techniques. This would be akin to Shakespeare relying on his use of iambic pentameter in his writing or Drake relying on his use of 16 bars to a verse in his music.” (at para 40). In other words, the scope of protection available to copyright works must not be so broad as to give rightsholders a monopoly over techniques or practices. Ultimately she found that there were sufficient dissimilarities between the works to conclude that Rains’ canvasses were not the result of copyright infringement, but were original works in their own right.

In rejecting arguments that the defendant’s works might be mistaken for those of the plaintiff, Justice Chiappetta also made an important distinction between a confusion analysis and the analysis required for copyright infringement. A confusion analysis is more common in trademark law, where the question is whether the defendant’s trademark creates confusion in with that used by the plaintiff. Since a trademark is meant to serve as an indicator of source; misrepresenting one’s products or services as those of another is at the heart of trademark infringement. In the copyright context, however, it is not enough to argue that the work of one person is evocative of the work of another, absent proof of infringement. In the words of Justice Chiappetta: “it would be unwise to establish confusion as the test for colourable imitation of an artistic work. This test by its very nature lends itself to the subjective nuances of comparison [. . . ]”. (at para 44) “Confusion” in the context of art might be the result of the use of fairly similar techniques or methods. Further, copyright law allows for independent creation – the creation of even identical works can be tolerated so long as one was not the result of copying of the other.

Justice Chiappetta’s findings on the issue of access are also interesting. Because independent creation is always a theoretically possible explanation of substantially similar works, there must be some evidence that the defendant had access to the works that he or she allegedly copied. In this case, it was clear that Molea had previously seen a number of canvasses in Rains’ series. However, Justice Chiappetta found that this general access to a broad spectrum of work by Rains was not sufficient. Rather, it was necessary to show specific access to those particular works which were allegedly copied. She also refused to presume access on the basis that Molea had only commenced painting canvasses featuring crumpled paper after his move to Canada, when he would first have been exposed to the works of Rains. She found that Molea had provided a logical explanation for the evolution of his work over time.

This case is interesting in its application of copyright principles to the visual arts in a context where it is necessary to separate both concept and techniques and methods from the work itself. A finding of infringement in a case such as this would make it difficult for anyone to paint a crumpled piece of paper without fear of a finding of copyright infringement.

Published in Copyright Law

Back in March I wrote about a decision of the Federal Court of Appeal in a dispute over rights in nautical charts and maps. At issue was whether the matter should be resolved on summary judgment or whether it should proceed to trial. The Court decided that it should go to trial. In reaching its decision in the case, the Court made a comment in passing on the wording of a federal government licence agreement that was relevant to the dispute. This comment, which is reproduced in my earlier report on the case, puzzled over the government’s claim in its licence to copyright in its data, given that it was entirely clear in law that there could be no copyright in data.

Leave to appeal this decision to the Supreme Court of Canada has just been denied by that Court. This means that the decision of the Federal Court of Appeal stands, and that the matter should now proceed to trial. The case raises some very interesting copyright issues and will be worth following.

Last year Canada (finally) responded to the changes wrought by the internet and amended the Copyright Act to address, among other things, the creation, reproduction and dissemination of works in a digital environment. The Supreme Court of Canada has also recently re-emphasized the need to interpret the law in a technologically neutral manner. These developments, however, may still not be enough to prepare us for the new wave of digital reproduction technology that is coming with 3-D printing. As was the case with other digital reproduction technologies, 3-D printing technology is now moving from very expensive devices predominantly in the hands of corporate owners, to increasingly inexpensive technology on the verge of becoming popularized among ordinary consumers. This shift is similar to those which we have already seen with respect to personal and mobile computing.

Three-dimensional objects of widely varying complexity can now be printed using this technology using a variety of materials. A recent news story has even reported on the potential for this technology to print organs for transplant. The printers are evolving to use a wide range of materials that go well beyond the initial plastics and polymers.

Three-dimensional printing is likely to present some significant challenges for intellectual property regimes. This is certainly the thrust of a recent article on the subject in the World Intellectual Property Review (WIPR). Unlike 2-D printing, which is predominantly useful in reproducing works protected by copyright, 3-D printing affects copyright, patent, industrial design and trademark law. We are not far from a future where individuals widely use online file sharing networks to widely distribute plans that will allow for the reproduction of all manner of 3-D objects, including utilitarian objects, replacement parts, jewellery, toys, guns, uniquely configured, eye-catching products, miniatures and action figures based on copyright protected characters from books or movies.

Canada’s IP laws – like those of other countries – may not be fully ready to deal with the challenges posed by affordable and accessible 3-D printing. In the first place, the reproduction of 3-D objects may implicate one or more IP statutes. Three-dimensional objects that are artistic in nature are often protected by copyright law; the drawings or plans for the making of three-dimensional objects may also be protected as artistic works under copyright law. The visual appearance and design features of utilitarian objects can be protected through industrial design registration. Three-dimensional features of objects may, if they are distinctive of their trade source, be protected as trademarks. Functional 3-D items may also be protected under patent law. Clearly, there is IP protection available for 3-D items, but it is highly fragmented which will likely make it harder for individuals and companies to understand the parameters of legal activity. Further, while copyright law has been substantially revised to deal with the challenges posed by easy digital reproduction and the online dissemination of works, the other regimes have not received attention in this regard. Much has also been done to address the different ways in which copyright law may be infringed online – this includes a number of important new defences to copyright infringement that seek to create balance, along with an adjustment of statutory damages available where copying is non-commercial in nature. The other IP laws in Canada are not well adapted to copying by private individuals for non-commercial purposes. Three-dimensional printing may thus bring with it a paradigm shift which will no doubt create tensions between IP owners and users that may ultimately have to be addressed by the legislature. Yet we are still grappling with old-tech IP reform. For example, a new IP Bill C-56, currently before Parliament, addresses counterfeiting under both the trademark and copyright regimes, but the focus of these amendments is on the movement of goods across borders, and on enhancing the available measures to stop the importation of infringing works. Just as the law is moving towards addressing the flow of counterfeit goods across the border, counterfeiting may soon shift to digitally networked 3-D printers, the online dissemination of plans and designs, and small scale reproduction of works by multiple and widely dispersed individuals.

Published in Copyright Law
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