Teresa Scassa - Blog

Displaying items by tag: intellectual property

Is it “legal” to post your fan fiction tribute to Star Trek online? Or to post a video of your children cavorting to a pop song? The recent amendments to Canada’s Copyright Act have, among other things, added an exception to the basic rules of infringement for user-generated content (UGC). According to this exception, user-generated content is some form of work (literary, artistic, dramatic or musical) that would be eligible for copyright protection in its own right, and that is built upon or integrates the copyright protected work of another. This would clearly seem to cover both of the examples given above. Recognizing that individuals now interact with digital works for all kinds of private and expressive purposes, the federal government has moved these activities from the realm of copyright infringement, and legitimized them – so long as the resultant UGC is non-commercial and has no substantial adverse effect (financial or otherwise) on the original.

The UGC exception is not the only new exception in the Act to normalize activities which, prior to the amendments, were considered infringing. For example, it used to be an infringement of copyright in Canada to record television shows to watch at a later time, and to make copies of legally acquired works so that they could be stored in electronic form, put on an MP3 player, or used for some other private purpose. These were activities in which Canadians routinely engaged, and sensibly, new exceptions now render them non-infringing. The UGC exception is also not the only new exception to carve out more room for expressive interactions with works. The fair dealing provision, which used to apply only to the fair use of works for the purposes of research, private study, criticism, comment or news reporting, now also permits the fair use of works for the purposes of education, parody or satire. The UGC exception thus fits within a framework of exceptions that normalize how people commonly interact with works and that encourage creative engagement with works – within certain limits.

During the debates on the amendments to the Copyright Act, the UGC exception was referred to as the “You Tube” exception, because it seemed that the paradigmatic act contemplated by this section was the home video posted on You Tube that incidentally incorporated a popular song. Yet the exception has potentially enormous breadth: there are so many ways in which existing copyright works can be incorporated into new works. The exception permits not just the making of these ‘mashups’, it permits the non-commercial dissemination of the new work. Translations and adaptations of existing works would appear to meet the definition of UGC. Compilations (mix tapes, anthologies, etc) would also seem to qualify. Those who create maps using the data sets of others and post them online may also find comfort in the UGC exception. Perhaps unwittingly, this exception appears to give great scope for the creation and distribution of works based upon the work of others. Of course, other than being non-commercial, the dissemination must not have no substantial adverse effect (financial or otherwise) on the work(s) incorporated into the UGC – it remains to be seen how much limiting effect these ‘weasel words’ will have.

[For a more detailed discussion of the UGC exception in Canada’s Copyright Act, I invite you to read my chapter on the subject in Michael Geist’s new collection of essays on copyright law, titled The Copyirght Pentalogy: How the Supreme Court of Canada Shook the Foundations of Canadian Copyright Law. Published by the University of Ottawa Press, this book and all its chapters is also available free online under a Creative Commons licence.]

Published in Copyright Law

If there is any need for further evidence that the official marks provision in s. 9(1)(n)(iii) of the Trade-marks Act is in dire need of reform, then it can be found in the advertisement by Canada Post in 2005 of official marks in the words POSTAL CODE and CODE POSTAL.

Official marks are a special species of trademark available only to “public authorities.” In theory, a public authority is an entity that is under the control of a federal or provincial government and that acts for the public benefit. While a regular business would have to choose a trademark that does not create confusion with existing registered trademarks, a public authority can pick pretty much any mark it chooses. Further, unlike other businesses, public authorities can choose marks that are generic or descriptive. The adoption of “POSTAL CODE” and “CODE POSTAL” is a case in point. These words are generic: there really are no other words to describe the thing to which they refer – the postal code.

Public authorities also enjoy substantial procedural advantages when it comes to official marks: there is no opposition proceeding for official marks, there is no examination, and there are no registration fees. Once a public authority asks the Registrar to advertise an official mark (and has demonstrated that the mark has been adopted and used) the mark is protected. No one else may adopt, use or register the same mark, or one closely resembling it. Once advertised, such marks live on until voluntarily withdrawn, or removed from the register as a result of costly legal proceedings. For an example of the dysfunction of official marks, consider the fact that both the province of Nova Scotia (no doubt a public authority) and the Bluenose II Preservation Trust Society (almost certainly not a public authority) currently have the identical official mark BLUENOSE on the trademark register.

Official marks have a long history of abuse. The Federal Court has been kept busy trying to establish some standards for official marks – these are entirely absent from the legislation. Thus the court has established a test to aid in determining who qualifies as a “public authority”, has determined that public authorities must be Canadian, and has also set a test to determine whether certain official marks have been adopted and used by the public authority seeking to monopolize them. While the court has done its best, the entire system is flawed and is desperately in need of review.

This brings us back to POSTAL CODE. Canada Post, a public authority, has claimed official mark status for the very words in French and English that describe that series of numbers and letters that form a part of each address for mail delivery purposes. There is no obvious need for Canada Post to monopolize this term. There is no obvious public interest in having it monopolized. Yet ongoing litigation between Canada Post and Canadian company Geolytica suggests that Canada Post may be attempting to use a monopoly in the term POSTAL CODE/CODE POSTAL to make it more difficult for others to compete with it in the area of postal code related products or services. Geolytica, which offers a free online postal code look-up directory and other for-fee services through its Geocoder website is being sued by Canada Post for copyright infringement, and – surprise, surprise – for infringement of its official marks.

The recent report of the House of Commons Standing Committee on Industry, Science and Technology on the Intellectual Property Regime in Canada recommends amendments to the Trade-marks Act to narrow the definition of public authorities to help prevent abuse of official marks “to avoid stifling innovation and distorting markets”. Yet it is important to keep in mind that the problem is not just with those who wrongly claim to be public authorities. Actual public authorities might also use official marks to stifle innovation and distort markets – arguably this is what is happening with the POSTAL CODE/CODE POSTAL mark. Perhaps the reform of the official marks provision needs to be even more profound. Abolishing the category of official marks is a policy option that would require public authorities to play by the same trademark rules as all other businesses. With this as the default position – and with, perhaps, some clear exceptions for the names of government agencies or departments – we might finally see an end to the abuse of official marks.

Published in Trademarks

A recent Federal Court of Appeal decision may have significant implications for the licensing of government data by federal and provincial governments. Nautical Data International Inc v. C-Map USA Inc. is a decision that relates to a lawsuit brought by Nautical Data against the defendant C-Map after C-Map allegedly used data from Canadian Hydrographic Service charts and maps to create its digital charts. Nautical Data took the position that it had acquired the rights, through an exclusive licence, to the raw data that was used in the preparation of the charts, and that these rights were infringed by C-Maps activities. Of course, the two parties were competing in the production of digital navigation products.

Typically, government data licences, whether open or otherwise, assert that the government has rights in the data being licensed. Even the federal government’s recently proposed Open Data Licence covers information that is defined as “information protected by copyright or by database right...”. Leaving aside the imported and inappropriate reference to database rights that do not exist in Canada (see my earlier blog on this point), the government is clearly assuming that it has copyright in the data that is the subject of such licenses. Geobase’s Unrestricted Use Licence Agreement also boldly asserts that “Canada is the owner of or has rights in the data (the Data) addressed by the terms and conditions of this Agreement”. The claims, evident in these open licences, are repeated in more closed licences as well. The licence at issue in the Nautical Data case defined CHS data as “any data owned by Canada and maintained by CHS”.

This idea that data can be “owned” and that copyright law is the vehicle for this ownership is clearly evident in these and in many other licences in both the private and public sectors. This is the case, notwithstanding the fact that in copyright law, there can be no monopoly in facts or data. Copyright will only protect an original expression of facts or data. In a compilation of data, that expression will be manifest in an original selection or arrangement of the data. Even if there is an original selection or arrangement, the protection extends only to that selection or arrangement; it never extends to the underlying data.

While copyright academics have made this point before, it has largely fallen on deaf ears. That is why the comments by the Federal Court of Appeal on this point are so interesting. While the decision is not on the merits of the case (the litigation was about whether summary judgment should be rendered on the issues; the court ruled was that it should not – that the matter should proceed to trial) Justices Nadon and Sharlow state quite plainly that “there can be no copyright in information.”(at para 11). Moreover, they express a certain surprise at the wording of the licence. They state:

Section 6.1 is intended to be a formal acknowledgement of Crown copyright, but it refers to copyright in the CHS Data. Either the parties were unaware that copyright could not subsist in information (which we would not presume), or they understood the phrase “CHS Data” by necessary implication to mean or at least include the CHS Works, even though the definition of “CHS Data” in the licence seems to limit its meaning to “data”. (at para 13)

This is perhaps one of the politest ways possible to criticize the drafting of the licence. Justices Nadon and Sharlow go on to note that the allegation in the licence that the Crown “owns” the data is similarly troublesome. They state: “If it is intended to mean that data can be owned in the same way as property can be owned, then there is some question as to whether it is correct as a matter of law. . . . there is no principle of property law that would preclude anyone from making use of information displayed in a publicly available paper nautical chart, even if the information originated with the Crown or is maintained by the Crown.” (at para 14)

These statements are both interesting and important, and direct attention towards the rather thorny issues around the protection of data in Canada. Data producers, whether in the public or private sectors, have asserted claims to copyright in their data that are far stronger than the law apparently supports. They can do this largely because to challenge such a claim would require engaging in costly and time-consuming litigation which is beyond the reach of ordinary citizens and many businesses as well. It is perhaps the law’s version of Stephen Colbert’s ‘wikiality’ – let’s call it legiality: if you can get enough people to say that certain rights exist, then perhaps for all intents and purposes they do.

Although the copyright issues are not fully litigated in this installment of the Nautical Data saga, the statements by Justices Nadon and Sharlow are a jurisprudential shot across the bows (if you will forgive the nautical reference) of those who claim excessive rights to data in copyright licenses. Whether it is the Nautical Data case that will eventually provide the clarification of the law on these issues or other cases that may be working their way through the system, it really is time for our courts to reinforce the Federal Court of Appeal's clear message regarding over-claiming data licences: there simply is no copyright in facts.

Published in Copyright Law

The legendary Bluenose schooner has become a Nova Scotian – if not a national – icon. It has been featured on our dime since 1937. While the ship is invoked in stories and songs (the original Bluenose sank in 1946), it also lives on in a physical replica, the Bluenose II, which tours Nova Scotia and abroad, and which is a popular attraction. The ship took its name from the term “bluenose” which has been used as a nickname for Nova Scotians since at least the 1700s.

 

Being an icon is not an easy thing – even for a ship. In fact, the Bluenose has been the subject of a number of intellectual property skirmishes in recent years, and is set to be the focus of yet another round of litigation. The first round of intellectual property battles took place in the early 2000’s, when the company retained by the Nova Scotia government to maintain and manage the Bluenose II (which belongs to the province) received official marks protection for the name Bluenose II and a number of related marks. It then sought to enforce its newfound trademark rights against a number of local businesses that used the word Bluenose in their name. An account of this litigation and its outcome can be found in an article I published in the Dalhousie Law Journal in 2004.

 

Now, in 2013, the heirs to the naval architect who designed the original Bluenose schooner have filed an application in the Nova Scotia Supreme Court, arguing that the Province of Nova Scotia and those it hired to restore the Bluenose II have violated the copyright in the naval architectural plans for the ship. It is also argued that the moral rights of the naval architect, the late William James Roué have also been violated. Because Mr. Roué passed away in 1970, the copyright in the plans would only expire in 2020.

 

To understand this argument, it is first necessary to know that the naval architectural plans would constitute drawings, which in turn are protected as artistic works under the Copyright Act. Case law establishes that the copyright in drawings can be infringed when someone builds a three-dimensional object from what is represented in the drawing. Thus the building of a house may infringe the copyright in a set of architectural plans, and the building of a ship, presumably, can also infringe the copyright in its naval architectural drawings. Although the province claims that the work done on the Bluenose II (which was by all accounts in a sad state) was a restoration of an existing, authorized reproduction. The heirs of William J. Roué, by contrast, argue that the existing ship was reverse-engineered; new drawings were done, and an infringing copy of the ship was built. This is the heart of the copyright claim, and it raises interesting issues about the boundary lines between restoration and replication.

 

Moral rights are intended to protect the honour and integrity of the creator of a work and to ensure that he or she is recognized as the author of the work. The heirs appear to argue that the work done on the Bluenose II amounted to the distortion or mutilation of the copyright protected work to the prejudice of the honour or reputation of William J. Roué. In part, it seems that the heirs are arguing that they should have been involved or consulted in the process in order to protect moral rights, arguing that the prejudice to honour or reputation flows from the fact that “the Applicants are unable to ensure that construction of the Vessel will be completed properly and that the vessel called “Bluenose II” will remain an authentic tribute to the original Bluenose and Bluenose II and the creator of the legacy.” (Second Amended Notice of Application, Schedule A, para 37.) The outcome of this claim may depend upon whether the project is considered a restoration or a reconstruction. The Copyright Act provides that “steps taken in good faith to restore or preserve a work” are not, of themselves, a distortion, mutilation or modification of the work (s. 28.2(3)(b)).

 

There is, of course, money involved in this dispute. The government did not seek permission to use the copyright protected drawings to produce a new replica of the Bluenose, nor did it pay royalties to the copyright holders – their position is that they are simply restoring the ship that they own. The heirs, by contrast argue that they have “suffered a lost opportunity. . . to financially benefit from exploitation of the Copyright Work”. (Second Amended Notice of Application, Schedule A, para 44).

 

For its part, the Government of Nova Scotia has challenged the existence of copyright in the naval architectural plans, and whether such copyright actually passed to the applicant heirs. They are also arguing that the “restoration” of the Bluenose II “is not a substantial reproduction of the Bluenose; it is an independent design” (para 17 of the decision on the motion). Finally, the government seems to be arguing that any copyright in the naval architectural drawings does not include rights in the name “Bluenose”. Presumably this means that they assert the right to give this name to any ship they build.

 

It will be interesting to see how this litigation unfolds. The conflict here perhaps reflects what happens when someone’s intellectual property underlies what has become a public icon, and when the owner of a physical and functional object – like a ship – feels that they should not be constrained by intellectual property laws in their dealings with that object.

Published in Copyright Law

Roberta Bell of the Orillia Packet and Times has reported on an art exhibit that was pulled by a local art gallery after concerns were raised about possible copyright infringement. The situation highlights competing public policy concerns.

The artist in question, K.D. Neely, had digitally enhanced a series of photographs she had taken of graffiti from the Raval district in Barcelona. This is not the first time such an issue has arisen in Canada. Similar copyright concerns led to the closing of another exhibit of photographs of graffiti at a Toronto Gallery in 2008.

There is no question that graffiti may constitute an “artistic work” within the meaning of the Copyright Act. It is an interesting and open question whether copyright can be enforced in illegal works, but not all graffiti is illegal. Many such works are commissioned by building owners or municipalities, for example.

The owner of copyright in a graffiti artwork, like any other copyright owner, has a series of rights under the Act which include the right to reproduce or authorize the reproduction of their work. Taking a photograph of all or a substantial part of a graffiti artwork is a reproduction under copyright law. Further, an artist has certain moral rights in relation to their work. These would include the right to be associated with their work by name or pseudonym, or to remain anonymous. The moral right of integrity protects the artist against any distortion, modification, or mutilation of their work to the prejudice of their honour or reputation. In the case of a painting, the prejudice is deemed to have occurred as a result of any mutilation or modification. A photograph that presents only part of a graffiti work, or that adds elements to it might therefore violate the artist’s right of integrity.

Of course, a photographer whose photographs do more than simply reproduce the work of another would also have copyright in their own works. A photographer who makes choices as to what parts of a graffiti work to include in her photo, or how to include other aspects of the urban landscape, for example, is creating a new, copyright protected work. However, it is well established that an artist (or a writer, or musician) cannot incorporate the copyright protected works of others into their own works unless they have permission to do so, or unless they can rely upon a fair dealing defence. The fact that a new work is created is not, on its own, a defence to copyright infringement. Musicians who engage in sampling and appropriation artists have railed against these restrictions on how they create their own works, but copyright law has remained, by and large, unyielding in the face of these arguments. One of the public policy issues raised by this case, therefore, is whether the law gives appropriate latitude to creators to draw upon the works of others in the creation of their own works. When does a new work sufficiently transform the work on which it is based so as to be free from the need to seek permission to use the earlier work?

In Canada, the fair dealing defence to copyright infringement is available only where works are used for certain purposes. These are: research or private study, criticism or comment, news reporting, parody or satire, and education. In addition to being used for one of the specified purposes, any dealing with the work must be fair. The amount of the work used, and the impact of the dealing on the original are both factors that are taken into account in assessing fair dealing. Fair dealing is thus a very context-specific defence, and in many cases it will be frankly rather difficult to know whether a person’s dealing with a work was fair without engaging in costly litigation. There is no general exception to infringement based on arguments that a new work has been created.

Section 32.2 of the Copyright Act sets out a series of “permitted acts” in relation to copyright protected works. In paragraph 32.2(2)(b), the law provides that it is not copyright infringement to “reproduce, in a painting, drawing, engraving, photograph or cinematographic work” either an architectural work or a sculpture that is permanently situated in a public place or building. The provision clearly aims to establish a balance between the rights of copyright holders and the rights of individuals to occupy and relate to the public spaces around them. In other words, if your art work is in a public place, you have to accept that it will be treated as part of the landscape in photographs and other artworks. This is the case whether photos are taken by tourists, artists, or by photographers who sell their works for postcards or calendars.

What the drafters of s. 32.2(2)(b) omitted to address, however, was the issue of paintings that are situated in public spaces. Indeed, graffiti is very much a part of public landscapes. However, it would seem that unlike sculptures in parks or city squares, it cannot be photographed with impunity. This clearly seems to be a gap in the law. Why should graffiti artists be put in a better position than architects or sculptors when it comes to their rights in relation to their works? Why should anyone be inhibited in the taking of photographs of urban streetscapes that contain graffiti?

One answer to these questions might be that graffiti artists are in a different position than architects and sculptors, who are often paid handsomely for their contributions to public space. Although some works of graffiti are commissioned, many are not, and graffiti artists might well object to the capture of their works in photographs that are sold in galleries or reproduced for sale in other contexts without their permission and without compensation. The position is certainly understandable, yet it is also important to keep our public spaces as public as possible. Layering our streetscapes with private rights is almost certainly not in the broader public interest. Yet barring a change in the law or a surprising court interpretation of fair dealing in the context of photos of graffiti, this would seem to be our current situation.

 

Published in Copyright Law

The U.S. Court of Appeals for the Eleventh Circuit recently issued an interesting opinion that addresses the issue of whether trademarks can be reproduced without permission in artistic works. In The University of Alabama Board of Trustees v. New Life Art, Inc. & Daniel A. Moore, the University of Alabama sued a well known artist who had built his career around paintings featuring the University’s famous Crimson Tide football team. The paintings inevitably feature a number of the University’s trademarks, including logos on helmets and jerseys and the team’s signature colours. The well-known artist sold not only his paintings, but also prints, calendars, mugs and other items featuring reproductions of his works.

Moore painted football scenes from 1979 to 1990 without entering into any kind of agreement with the University of Alabama. In the period between 1991 and 1999 he entered into several different licence agreements for the production and marketing of specific items that would feature both his artistic works and additional University of Alabama trademarks. These products would bear markings indicating they were “official” merchandise, and proceeds of sale were shared with the university. During this period Moore continued to create paintings independent of any licence agreement. The university never asked him to pay royalties or otherwise seek permission for the sale of any paintings or prints of his work.

In 2002, the University changed its position with respect to Moore’s work, and informed him that he would need a licence for any University of Alabama-related works that featured University trademarks. Moore disagreed and did not seek licences for his paintings and prints. The University bookstore sold unlicensed calendars featuring Moore’s work during this period. It also had several of Moore’s unlicensed paintings hanging at different locations on campus. The disagreement eventually blossomed into litigation; the University sued Moore for violating their trademark rights in his paintings, prints, calendars, mugs and other items. At trial, the judge ruled that use of trademarks in the paintings and prints was protected by the First Amendment (freedom of speech), but that the reproduction of these same paintings on other merchandise fell outside the scope of the First Amendment and would likely infringe the trademarks by causing consumer confusion.

The Court of Appeals ruled that the inclusion of the University’s trademarks in the paintings, prints and calendars was indeed protected by the First Amendment. The Court stated: “we conclude that the First Amendment interests in artistic expression so clearly outweigh whatever consumer confusion that might exist on these facts that we must necessarily conclude that there has been no violation of the Lanham Act with respect to the paintings, prints, and calendars.” The Court rejected the University’s arguments that the paintings, prints and calendars represented commercial speech, and were therefore entitled to a lower level of constitutional protection. According to the Court, the fact that the items were sold for money did not render them commercial speech. The Court ruled that trademark rights should be construed narrowly in the context of artistic works. It ruled that “[t]he depiction of the University’s uniforms in the content of these items is artistically relevant to the expressive underlying works because the uniform’s colors and designs are needed for a realistic portrayal of famous scenes from Alabama football history.”

Unfortunately, Moore did not appeal the decision of the lower court that the paintings on the mugs and other items (including t-shirts, towels and so on) fell outside first amendment protection. Instead, he argued that the University, through its conduct had acquiesced to the sale of this merchandise. The issue was remanded to the district court for further consideration. It would certainly have been interesting to have a ruling on the issue of whether a trademark owner could place limits on the right of an artist to sell copies of works featuring trademarks through a broad range of merchandising opportunities.

Although similar questions have not yet been raised in Canadian courts, the issues are important here as well. In 2007, the federal government enacted special legislation to give enhanced protection to Olympic and Paralympic trademarks. When concerns were raised about the impact the law might have on the freedom of expression of artists who might create works incorporating these well known marks, Parliament amended the law to include the following exception:

 

3(6) For greater certainty, the inclusion of an Olympic or Paralympic mark or a translation of it in any language in an artistic work, within the meaning of the Copyright Act, by the author of that work, is not in itself a use in connection with a business if the work is not reproduced on a commercial scale. [my emphasis]

 

The expression “for greater certainty” suggests that the provision is simply clarifying the law rather than creating a new exception. While the provision makes it clear that the protected trademarks may be incorporated into artistic works, those works only qualify for the exception if they are “not reproduced on a commercial scale.” This is a rather tricky phrase. It is not at all clear what the reproduction of an artistic work on a commercial scale would entail. A single painting offered for sale might be acceptable, but a numbered series of prints might not. Further, it might not be permissible for an artist to licence multiple unnumbered prints, or to publish his or her work in a calendar. While all of these uses of an artistic work would appear to be protected by the First Amendment in the United States, the Olympic and Paralympic Marks Act seems to codify a narrower scope for artistic expression. The question of mugs, t-shirts and other items featuring the artistic work is entirely unresolved.

Canadian courts have tended to take a narrow view of freedom of expression issues in intellectual property law. The Moore case in the United States is provocative for challenging the balance between the expressive rights of an artist whose work incorporates the trademarks of others and the rights of the trademark holder. It remains to be seen how a Canadian court will approach such a balancing act, and how, in consequence it might interpret such an ambiguous provision as s. 3(6) of the Olympic and Paralympic Marks Act.

 

Published in Trademarks

Voltage Pictures LLC has brought a motion in Federal Court seeking a court order that would compel Internet Service Provider Teksavvy Solutions Inc. to disclose the identities of customers using certain IP addresses that have been linked to Internet file-sharing of works in which Voltage owns the copyright. If the court were to order the disclosure, the identified individuals could be sued for copyright infringement by Voltage.

The University of Ottawa’s Samuelson-Glushko Canadian Internet Policy and Public Interest Clinic (CIPPIC) has brought a motion to intervene in the proceedings. CIPPIC has an established track record in representing the public interest in cases of this kind; they have argued for a balance between individuals’ privacy interests in their online activities and copyright holders interests in previous litigation. The Federal Court has adjourned its hearing of Voltage’s motion in order to consider the issue of CIPPIC’s intervention.

Published in Privacy

A recent decision of the Federal Court has caused a small stir over language that, taken at face value, would have a dramatic impact on trademark law in Canada. In Homeaway.com, Inc. v. Hrdlicka, Justice Hughes considered an application to have the respondents registered trademark VRBO, for vacation real estate listing services, expunged from the register. The applicant was the owner of the U.S. based website VRBO.com, which offers vacation real estate listings on a worldwide basis. The applicant argued that the respondent’s trademark registration was invalid as Hrdlicka was not the person entitled to register the mark in Canada.

 

The person entitled to register a trademark in Canada is the one who has first used it or made it known in this country. The “making known” provision of the Trade-marks Act is designed to protect well-known foreign trademarks from being registered by Canadian businesses with the likely consequence of creating confusion among Canadian consumers already familiar with the foreign mark. Unfortunately, as Justice Hughes noted in his decision, the “making known” provisions were drafted in the technological dark ages and specifically refer to marks that have been made known through the print or broadcast media. Notwithstanding this, there is still hope for a foreign trademark owner that has actually used its trademark in Canada; if they were the first to use the mark in this country, then they are the party entitled to register it.

 

The Trade-marks Act contains a definition of “use” that varies depending on whether the mark is registered for wares or services. In this case, the VRBO mark related to services. For a mark to be used in relation to services, it must be “used or displayed in the performance or advertising of those services.” (s. 4(2)) The VRBO mark appears on the VRBO website and in its URL. However, the case law also makes it clear that for there to be use in Canada, it is not sufficient for there to be advertising featuring the mark in Canada, the services must also be offered in Canada.

 

This is where the decision of the Federal Court has caused confusion and controversy. In discussing “use”, Justice Hughes makes the apparently bold statement that “a trade-mark which appears on a computer screen website in Canada, regardless where the information may have originated from or be stored, constitutes for Trade-marks Act purposes, use and advertising in Canada.” (at para 22) On the one hand, the statement offers nothing particularly surprising – it is not controversial to find that use on a website can constitute “advertising” for the purposes of determining use in relation to services under s. 4(2). However, the statement falls short in that it fails to clarify that this finding is limited to use in relation to services; a mark being featured on a web site is, on its own, not a use in relation to wares. Further, the statement appears to conflate the issue of whether featuring a mark on a website is advertising with the broader issue of whether a trademark has been used in Canada. As noted earlier, the person entitled to register the mark is the person who has first used the mark in Canada, and the case law is clear that for this to happen the services in question must not just be advertised in Canada – they must also be offered in Canada.

 

Although the statement taken at face value is controversial, the decision in the case is not particularly troubling. Indeed, Justice Hughes is aware of the importance of the services being offered in Canada, even though he does not refer to the relevant case law. He finds that HomeAway not only advertised its services in Canada, it entered into contracts with Canadians to list their vacation properties, and the site was used by Canadians to find vacation rental properties. It is just unfortunate that the rather elliptical way in which the decision was framed can lead to the impression that a trademark will be considered to be “used” in Canada simply by virtue of the fact that it can be seen on websites accessible to Canadians over the Internet. This is certainly not true in the case of wares, and is only true, in the case of services, if the services are also genuinely available to Canadians.

Published in Trademarks
Monday, 07 January 2013 10:51

Copyright in Public Documents

Who owns copyright in documents created by private individuals for public purposes? This issue has been raised in at least two recent motions for certification of class action law suits for copyright infringement in the Ontario Superior Court.

The first of these, Waldman v. Thomson Reuters Corporation, resulted in the certification of a class action in February 2012. The plaintiff represents lawyers in private practice who object to the incorporation of court documents authored by lawyers into the defendant’s commercial databases without consent or compensation. The documents at issue include pleadings, notices of motions, affidavits and factums. All of these documents must be filed in court, and become part of a public record during the course of litigation. These court documents are already available to the public through different channels – for example, the public can obtain copies of documents in court records by visiting a court office and by paying the prescribed fees. Some documents are also now made available online by courts. The plaintiff in the class action suit in Waldman objected to the inclusion of these same documents in a commercial, for-profit service.

More recently, the Ontario Supreme Court has refused to certify a class action lawsuit brought by a land surveyor who objected to the inclusion of land survey documents in Ontario’s online land registry system Teranet. Copies of documents in Teranet are available to the public for a fee. The plaintiff in Keatley Surveying Ltd. v. Teranet Inc. argued that the survey documents were works in which copyright subsisted and their inclusion in the database without licence or compensation was a violation of those copyrights.

Both cases raise interesting issues regarding privately authored documents that are drafted as part of public processes, and that must necessarily be accessible to the public as a matter of public policy. Indeed, David Vaver has argued, in an article about the specific issue of copyright in legal documents, that in addition to the usual fair dealing exceptions in the Copyright Act, there may also be arguments around custom and public policy that permit copying without need for permission. Of course, this does not address the issue of whether a private company can commercialize access to the public documents without licence or compensation, and it will be interesting to see the outcome of the Waldman case.

The Keatley motion to certify was rejected by the court because it did not meet any of the criteria for certification of a class action. Among other things, the court was not convinced that there was an identifiable class of similarly affected individuals for the plaintiff to represent. This was because many prominent surveyors and land survey companies were involved in the design and creation of Teranet, and it was not clear whether any other surveyors in Ontario shared the plaintiff’s views on the copyright issues. Further, the court noted that membership in the proposed class would depend on the outcome of the litigation – the proposed class defined itsmembers as those who were holders of copyright in land survey documents, and one of the issues to be determined was whether land surveyors actually had copyright in their documents. If they did not, there could be no member of the class.

Nevertheless, there were some interesting issues raised in the lawsuit, and it is unfortunate that their consideration must be left to another day. For example, Teranet argued that if there is copyright in the land surveys, it lies with the provincial Crown. Crown copyright arises under s. 12 of the Copyright Act where a work is “prepared or published by or under the direction or control of Her Majesty or any government department”. Teranet argued that the provincial laws and regulations governing the creation and use of plans of survey amounted to direction or control over the creation of the works by the Crown. In the words of the court, “Legislation dictates the manner in which the survey is conducted, the content of the plan of survey, the form of the plan, and even details of the plan’s physical appearance, such as the type of paper used, the shape of the paper and the type of ink used.” (at para 102). If this type of direction or control can be said to give rise to Crown copyright, it might have interesting implications for a very broad range of other documents and data prepared under strict rules, standards or guidance – including, perhaps, some legal documents prepared for and submitted to courts.

Teranet also argued that Ontario’s Land Titles Act and the Registry Act both provide that deposited and registered plans are the “property of the Crown” and that this supports a finding of Crown copyright in the documents.. Of course, this same wording could easily be interpreted to refer to property rights in the physical document and not the underlying intangible intellectual property rights. Since copyright is a matter of federal jurisdiction and since s. 12 of the Copyright Act specifically addresses the circumstances in which Crown copyright arises, an interpretation of provincial legislation that creates a new basis for Crown copyright (the deposit and registration of documents) might take the legislation beyond the scope of provincial competence. Nevertheless, the court was of the view that “a compelling case can be made that copyright belongs to the Crown, based on s. 12 of the Copyright Act and the statutory regime that governs plans of survey”( at para 113), although it stopped short of actually drawing this conclusion. This is a complex and interesting question, and one with implications in many other contexts.

While Waldman will not answer these specific questions, it may provide some important insights on issues of fair dealing, custom and public policy (certainly, in the case of land surveys there has been a longstanding practice of providing copies to members of the public for a fee – even prior to the development of Teranet). These arguments, which provide a justification for the exercise by others of the exclusive rights of authors, seem far preferable to arguments that the state has expropriated these same rights through the creation of a registry system.

A foodie furore has erupted in Ottawa over the decision of Service Ontario to cancel the registration of the name “Union Local 613” for an Ottawa restaurant. The popular and well-reviewed restaurant has been in operation since July 2012 and its website indicates that the name was chosen to reflect a “Brotherhood of Cookers, Eaters & Drinkers”. The number 613 is the area code for the Ottawa region.

The decision by Service Ontario was made under the Business Names Act, which provides, in section 4(7) that the registrar of business names may cancel a registration where the name “does not comply with the prescribed requirements” of the legislation. These requirements are set out in the Restrictions Respecting Names. Article 4(7) of the regulations states that “A name shown in a registration must not use a word or expression that would suggest that the registrant is a form of organization that the registrant is not.” Clearly, the concern of the Registrar is that the reference to a union local might suggest to the public that the restaurant is run by or affiliated with a union. The owners of the restaurant have a right to appeal the decision of the Registrar to the Divisional Court.

The wording of the regulation is such that it is triggered where a name “would suggest” a different form of organization. This is not a confusion standard – the issue is not whether there is a likelihood that the public would be confused or misled into thinking that the restaurant is somehow associated with a particular union. Clearly, the uproar in the blogosphere regarding the province’s decision would suggest that actual and prospective patrons of this popular eatery are not at all confused. The restaurant’s website gives prominent place to its slogan “Brotherhood of Cookers, Eaters & Drinkers”, and for those who visit the restaurant or its website, the risk of confusion seems small. Yet with a much lower threshold for rejecting the name in the regulations – a mere suggestion – the chances of success on appeal may be small.

The principle served by article 4(7) is a legitimate one. To allow names that might lead members of the public to think they were dealing with charities, unions, non-profits, or other types of organizations when in fact they are not, could put the public at risk of potentially harmful deception. Yet in this case, any “suggestion” that the restaurant is somehow union affiliated seems utterly remote since the kinds of services offered by unions to their membership typically do not involve food. One cannot help but feel sympathy for the restaurant owners who have already built considerable goodwill in a name that was chosen specifically to evoke a spirit of foodie solidarity in the Ottawa region.

 

NOTE: October 25, 2012 - It is reported in the news that Service Ontario has decided to allow Union Local 613 to keep their name. Apparently, the fact that the name had initially been registered, and that the restaurant had already acquired substantial goodwill under that name, prompted a reconsideration. The media attention to the issue probably also played a role.

 

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