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UBC Law 422.002 INTELLECTUAL PROPERTY Copyright Lecture 5 Jennifer A. Marles 604-676-8967

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Presentation on theme: "UBC Law 422.002 INTELLECTUAL PROPERTY Copyright Lecture 5 Jennifer A. Marles 604-676-8967"— Presentation transcript:

1 UBC Law INTELLECTUAL PROPERTY Copyright Lecture 5 Jennifer A. Marles

2 Last Class Neighbouring Rights Ownership and Assignment Term and Registration Infringement Types of works Secondary infringement

3 Recap: Neighbouring Rights Performers Performance – ss. 16 and 26 Broadcasters of Communication Signals – s. 21 Both receive some rights without need for fixation Makers of Sound Recordings – s. 18 Right to equitable remuneration for public performance or telecommunication to public: s. 19 Shared equally between performer and maker of sound recording NOT a right to prevent public performance (c.f. s. 3)

4 Recap: Ownership/ Assignment Ownership of © Generally author is first owner, but in some circumstances will not be (ss. 13(1)-(3)) Note s. 14 reversionary right – 25 years after death of author, © reverts back to their estate Photographs – owner of negative: s. 10 Assignment Must be in writing, signed by owner of ©: s. 13(4) Moral rights can be waived but not assigned: s. 14.1(2)

5 Recap: Ownership Works made by employee in course of employment, employer will own © (s. 13(3)) Control test: servant is person who is subject to the commands of his master as to the manner in which he shall do his work University of London Press skilled persons may be employees even if employer cannot tell them how to do their work Integration test: consider if activities are an integral part of the business, or only an accessory to it Entrepreneur test: is employee in business for his own account – look at ownership of tools, who pays helpers, chance at profit, risk of loss

6 Recap: Joint Authorship Neudorf v. Nettwerk Productions Person who merely contributes ideas is not a joint author Joint authorship requires common intention Test for joint authorship: 1) must contribute original expression, not merely ideas 2) contribution must be significant and substantial (but need not be equal) 3) authors must intend that the work be merged into a unitary whole (mutual intention) 4) authors must intend that the others are joint authors (mutual intention)

7 Recap: Term Term – generally life of the author + 50 years (s. 6) But other terms apply for joint authors (s. 9), anonymous/pseudonymous works (s. 6.1) Photographs: depends on whether first owner of © is corporation or natural person (s. 10) Cinematographic works: s depends on dramatic character

8 Recap: Registration Registration is optional, but benefit from evidentiary presumptions in s. 53: That © subsists That registrant is the owner Also rebuts innocent infringement defence (see s. 39(2)) But need to register before infringing work is available to benefit: see Grignon v. Roussel Can record assignments for priority purposes (s. 57(3)) Can also benefit from s. 34.1, even in the absence of a registration: if D puts in issue, unless otherwise proven © presumed to subsist Author presumed to be owner

9 Recap: Infringement Infringement Must establish π is owner of © in the work And Δ copied a substantial part of the work Access must be proven Independent creation is complete defence If you have surprising similarity without other explanation, can raise an inference of copying shifts onus to Δ 3 year limitation period: s. 41

10 Recap: Infringement Literary works Preston v. 20 th Century Fox – Space Pets script not substantially reproduced by Return of the Jedi Drew on common sources Ewok character not copyrightable: Must be sufficiently well defined Must also be well-known Dramatic Works Nichols v. Universal Pictures – recognize there could be infringement by taking plot, even without taking of any dialogue Roy Export Co. v. Gauthier – infringement by importation (s. 27(2)) Δ was not the one engaging in public performances of the cinematographic works, but had imported work to rent out Did not matter that work was in the public domain in the US Knowledge of infringement given by letter from πs counsel

11 Recap: Infringement Secondary Infringement: s. 27(2) must be a primary infringement person must know or should have known that the work is infringing must show secondary dealing (i.e. one of the acts enumerated in s. 27(2)) See e.g. Roy Export Co. v. Gauthier Notice of infringement given by letter from counsel

12 Recap: Infringement Musical Works Recognize possibility of subconscious copying But π must still prove (or provide evidence to draw a strong inference) of familiarity with the work alleged to have been copied Grignon v. Roussel – fairly clear proof of access Copying found Recognize that originality in the realm of popular music lies within a narrow scope – slight variations can be original

13 Recap: Infringement Infringement – artistic works Kaffka v. Mountainside Developments – old definition of architectural work of art applied Fact that P was the only one able to obtain planning approval was significant in showing requisite artistic character Théberge – notion that reproduction requires multiplication changing the medium on which work is displayed did not infringe economic rights

14 Recap: Damages s. 34 sets out available remedies damages for Ps own loss and Ds profits: s. 35 Recovery of infringing copies: s. 38 Only a copy that infringes economic rights is infringing: Th berge Statutory damages: s Innocent infringement: injunction only remedy where D not aware of ©: s. 39(1) Exception does not apply where copyright registered: s. 39(2) Also costs, pre- and post-judgment interest See Kaffka v. Mountainside Developments Damages are at large – assess as a matter of common sense loss of ability to enhance reputation (not loss of reputation) Also punitive/exemplary damages

15 Today Infringement By Importation Exceptions to Infringement (Fair Dealing) Collective Administration of Rights Exam Review

16 Infringement by Importation

17 Even if a person does not make copies of the work, can still be liable for secondary infringement: see s. 27(2) Fly by Nite – 'deleted' albums legitimately purchased in the U.S. for resale in Canada Infringed by importing copies that would have been infringing, had they been made in Canada Note Kraft Canada v. Euro Excellence – exclusive licensee cannot sue copyright owner for infringement

18 Authorizing Infringement

19 Infringement - Authorization s. 3 gives right to authorize the listed acts UK approach: authorize means sanction, approve, countenance to grant to a third person, or purport to grant, the right to do the act complained of merely supplying the means which make infringement possible not enough if no control over the means e.g. sale of dual cassette recorders including hi- speed dubbing feature in CBS Songs v. Amstrad c.f. Australian illustrated by Moorehouse - must take steps to prevent infringement Provision of photocopiers authorizes infringement

20 Infringement - Authorization Canada follows UK approach See excerpts from CCH and Tariff 22 not infringe to authorize an act that is not an infringement Presumption that a person who authorizes does so only as far as is in accordance with the law authorize means sanction, approve and countenance i.e. give approval to, sanction, permit; favour, encourage Can infer authorization from acts amounting to a sufficient degree of indifference e.g. if ISP has notice it is hosting infringing content Australian position shifts balance too far in favour of copyright owners

21 Infringement and the Internet

22 Infringement – Communications Via Internet SOCAN v. Cdn. Assn. of Internet Providers (Tariff 22) SOCAN sought to impose liability for royalties on ISPs in Canada, irrespective of where the transmission originates Various activities at issue: Communication of work Host server role of ISPs Caching Hyperlinks (and automatic hyperlinks)

23 Infringement – Communication Via The Internet The statutory framework: s. 2 telecommunication s. 3(1)(f) – telecommunication to the public Internet communication is made to the public because files made available openly and without concealment, to be conveyed to all who might access s. 2.4(1)(b) – person does not communicate the work or other subject matter to the public if only act consist of providing the means of telecommunication necessary for another person to so communicate the work s. 2.3 – communication to public by telecommunication is not a performance in public communicate means to impart or transmit Generally only the person who posts a work communicates it telecommunication occurs when music is transmitted from host server to end user

24 Infringement – Communication Via The Internet How to determine when a telecommunication occurs in Canada? Test is the real and substantial connection test For communications on the Internet, consider: situs of content provider situs of host server situs of intermediaries situs of end user Recognize that this results in overlapping jurisdiction Art. 8 of WCT and making available right would avoid this overlap; not yet implemented in Canadian law

25 Infringement – Internet Communications Consider liability of ISPs for copyright infringement: s. 2.4(1)(b) protects those who serve as intermediaries necessary means reasonably useful and proper to achieve the benefits of enhanced economy and efficiency ISP protected so long as it does not engage in acts that relate to content e.g. acting as host server, use of caching, etc., are content neutral but embedding hyperlinks that automatically lead to a work may infringe knowledge of infringing nature of content is a factor to consider Consider also the impracticality (technical and economic) of monitoring the large amount of material disseminated via the Internet

26 Infringement – Internet Communications Potential liability for other functions of ISP Acting as host server Not liable where no knowledge of content But potentially liable for authorizing infringement to the extent ISP has notice of allegedly infringing content Caching Content neutral Dictated by need to deliver faster and more economic service Therefore is necessary and falls within s. 2.4(1)(b) Providing hyperlinks Board found creation of an automatic hyperlink by a Canadian ISP attracts copyright liability Is not a communication, but authorizes communication by telecommunication

27 Exceptions to Infringement

28 s. 29 – for research or private study s – for the purpose of criticism or review Provided source and name of author (if given in source) are mentioned s – for the purpose of news reporting Provided source and name of author (if given in source) are mentioned Are further exceptions for educational institutions (s to 30); libraries, archives and museums (s – 30.5); and further exceptions (s – 32.3) Exceptions to Infringement – Fair Dealing s. 29, 29.1, 29.2

29 Exceptions to Infringement – Fair Dealing Only consider exception where there would otherwise be infringement (i.e. substantial reproduction) Onus on defendant to show it can rely on exception Must be both fair and for one of the listed purposes: see CCH For s or 29.2, must also comply with requirements of section CCH – making single copies for purposes of legal research was fair dealing, even though it was for a commercial purpose

30 Exceptions to Infringement – Fair Dealing Research or private study – CCH Large and liberal interpretation Not limited to non-commercial contexts Legal research is still research Sampling of music downloads has been held to be research: 2010 FCA 123 SCC heard appeal Dec. 2011

31 Exceptions to Infringement – Fair Dealing Factors to consider in assessing fairness: CCH ¶ 53 Purpose of the dealing Must be allowable purpose; commercial use can still be fair Character of the dealing e.g. making single copy and destroying after use Amount of the dealing: taking whole work generally not fair But no per se rule Alternatives to the dealing But do not consider availability of a license as a factor Nature of the work – published or unpublished Publication leads to wider dissemination, but not fair if work is confidential Effect of the dealing on the copyright work e.g. does the copy compete with the market for the original work Making a copy for someone elses fair use is OK

32 Exceptions to Infringement – Fair Dealing University of London Press Copying of entirety of mathematics exams was not fair dealing Although useful for education, copying was not done for educational purposes Although papers were criticized, additional information provided was minimal

33 Exceptions to Infringement – Issue of Parody Is parody a criticism? Compare US (Pretty Woman parody – Campbell v. Acuff-Rose) and Canada Michelin v. CAW case US law encourages transformative use, new creation Distinguish transformative work, which supersedes an original, from a derivative work, which includes major components of the original and which infringes Canadian law more protective of copyright owner Do not permit appropriation of private property (i.e. copyright works) for purposes of expression



36 Exceptions to Infringement – Issue of Parody Michelin v. CAW Michelin failed on trademark issues: no use But succeeded on the copyright issues court rejects that parody is criticism criticism connotes analysis and judgment of another work that sheds light on the original The unions Bibendum was not a new creation; was not sufficient to bestow mental labour on the work to avoid infringement CAW did not mention the source and authors name mention requires more than passive/implicit acknowledgement did not treat work in a fair manner (i.e. good faith) good faith = free from discrimination, dishonest, impartial

37 Exceptions to Infringement – Issue of Parody Consider how this case balances freedom of expression with copyright protection – Note that position on parody has not changed: see e.g. Canwest v. Horizon, 2008 BCSC 1609, where court held that parody and freedom of expression could not be a defence to a claim for copyright infringement

38 Collective Administration

39 Very difficult to identify and contact individual copyright owners to seek permission to use a work Often rights assigned to collective societies Single point of contact for a person wishing to use any works within the societys repertoire Many different such societies

40 Summary of Lecture 5

41 Recap: Authorization Authorizing infringement – authorize means sanction, approve, countenance CCH, Tariff 22 Could infer authorization from sufficient acts of indifference e.g. consider if ISP has knowledge that an infringing work is posted on its host server

42 Recap: Internet Communications on the Internet: Tariff 22 Person who posts communicates the work Work is telecommunicated when music is transmitted from host server to end user Communication occurs in Canada if it has a real and substantial connection to Canada Look at situs of content provider, host server, intermediaries, end user s. 2.4(1)(b) protects activities of intermediaries such as ISPs, provided they are content neutral Caching is necessary for efficiency, therefore falls within s. 2.4(1)(b)

43 Recap: Fair Dealing Fair dealing: ss. 29, 29.1, 29.2 Note requirement to mention source and author in ss and 29.2 Dealing must be both fair and for the listed purposes: CCH Purpose of dealing Character of dealing Amount of dealing Alternatives to dealing Nature of work – published or unpublished Effect of the dealing on the copyright work Mere fact taking is for educational purposes does not make it fair: University of London Press Parody is not fair dealing in Canada: Michelin v. CAW c.f. Bill C-11


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