1. UBC Law 422.002 INTELLECTUAL PROPERTY Copyright Jennifer A. Marles jmarles@patentable.com 604-676-8967 www.patentable.com/lectures

2. Last Class History of Copyright Requirements for subsistence of © Authorship Originality Fixation

3. Recap: Requirements for Copyright Protection s. 5(1) – copyright shall subsist in Canada…in every original literary, dramatic, musical and artistic work… Subject matter – literary, dramatic, musical, artistic work Originality Fixation Entitlement (3 connecting factors to treaty country)

4. Summary - Requirements Originality (s. 5, CCH skill and judgment) sweat of the brow standard rejected: Feist and Tele- Direct illustrate problems with this standard but SCC says creativity too high a standard Entitlement (s. 5 – treaty country) citizenship, residence, or place of first publication Subject Matter works, non-works, moral rights Fixation see s. 2 dramatic works, computer programs; Cdn Admiral Corp.; Gould Estate Recent SCC cases like Th é berge emphasize importance

5. Today Works Rights Comprising Copyright Moral Rights Neighbouring Rights

6. Literary Works

7. Literary Works - Definitions work includes the title thereof when such title is original and distinctive; literary work includes tables, computer programs, and compilations of literary works; computer program means a set of instructions or statements, expressed, fixed, embodied or stored in any manner, that is to be used directly or indirectly in a computer in order to bring about a specific result; compilation means (a) a work resulting from the selection or arrangement of literary, dramatic, musical or artistic works or of parts thereof, or (b) a work resulting from the selection or arrangement of data;

8. Literary Works How substantial must the work be to merit protection? Exxon – single word, even though invented, not protected by copyright a literary work is intended to afford either information and instruction, or pleasure in the form of literary enjoyment (University of London Press) apart from the law of trademarks, no one can claim monopoly rights in the use of a word or name

9. Literary Works - Titles Copying of title not generally a substantial reproduction in general, a title by itself is not proper subject matter of copyright But leaves open that the taking of a title could, in appropriate circumstances, be a substantial taking work includes the title, but the title is not a separate work (see definition of work in s. 2) See also Neudorf v. Nettwerk Productions Contribution of title not substantial

10. Literary Works – Type of Work University of London Press: Words cover work which is expressed in print or writing, irrespective of the question whether the quality or style is high Literary seems to be used in a sense somewhat similar to the use of the word literature in political or electioneering literature and refers to written or printed matter Mathematics exams held to be literary works

11. Literary Works – Type of Work Bulman v. One-Write Copyrightability of accounting forms in issue Is it enough that the matter be printed or written (U. of London Press) or must there be an imparting of intelligible information as set out in Exxon? In a compilation, there must be a literary sense of functionally assisting, guiding, or pointing the way to some end, per Collier J. No need that the compilation impart intelligible information

12. Literary Works – Protection Beyond the Literal Words? Nichols v. Universal Pictures Corp. Ps play and Ds motion picture shared some similar characters and themes But specifics of plot and some characters quite different Issue of whether the taking of plot or characters could potentially infringe the literary copyright in the play p. 29: the right cannot be limited literally to the text, else a plagiarist would escape by immaterial variations

13. Literary Works – Protection Beyond the Literal Words? Court holds that two plays may correspond closely enough in plot for there to be infringement Even without direct taking of literal dialogue Leaves open that the taking of a character could infringe But the less developed the characters, the less they can be copyrighted

14. Literary Works - Compilations compilation - means (a) a work resulting from the selection or arrangement of literary, dramatic, musical or artistic works or of parts thereof, or (b) a work resulting from the selection or arrangement of data;

15. Literary Works - Compilations Compare BC Jockey Club v. Standen with Feist, Tele-Direct Overnight took a substantial amount of skill, knowledge and experience to produce, so originality was not in issue issue was infringement (i.e. substantial taking) court found that defendant had taken more than just information, but rather the labour and skill which went into the compilation

16. Literary Works - Compilations BC Jockey Club v. Standen (BCCA) p. 36 if the governing principle is as I stated it earlier, and inviolable, then the judge did indeed err per Laddie & Vitoria, copyright in a compilation may be infringed by appropriating an undue amount of the material, although the language employed be different, or the order altered otherwise copyright in a compilation would be of little or no value

17. Literary Works - Compilations How to reconcile BC Jockey Club v. Standen with Tele-Direct, Feist? Infringement, not originality, was the issue Infringe by taking a substantial part The selection of facts may be a substantial part of the originality Here, characterized as an entirely novel list of horses and other information Look to where author's skill and judgment applied

18. Literary Works – Computer Programs Protected as literary works See s. 2 definition of literary works (includes computer programs) Also s. 2 defines computer program

19. Literary Works – Computer Programs Apple v. Mackintosh (SCC) operating system software vs. application software source code was admittedly protected what about object code burned into a chip? does code continue to be protected when replicated in the circuitry of a silicon chip? direct mechanical copying in issue programs embedded in the silicon chip are a reproduction of the programs in assembly language and as such are protected by copyright under s. 3(1)

20. Literary Works – Computer Programs Basic principles of copyright law: Idea/expression dichotomy – notion that copyright protects expression, but not the underlying ideas Merger – where there is only one way of expressing an idea, copyright would provide a monopoly over the idea itself, and therefore should not extend to protect such expression p. 45

21. Literary Works – Computer Programs To assist in helping the court to distinguish between ideas and expression, US courts developed the abstraction-filtration-comparison test Computer Associates v. Altai (2 nd Cir.) separating the expression from the idea, public domain elements, scenes a faire, etc. to isolate what is protectable and compare what has been copied Discussed in Canada in Delrina v. Triolet

22. Literary Works – Computer Programs ABSTRACTION levels of abstraction programs main purpose system architecture various abstract data types various algorithms and data structures source code object code

23. Literary Works – Computer Programs FILTRATION elements dictated by efficiency if the idea can only be expressed in one way, that expression cant be protected [MERGER] functional elements are not protected nor elements dictated by external factors e.g. scenes a faire, would be included in every treatment of the subject matter, couldnt write the program without certain components elements in the public domain

24. Literary Works – Computer Programs COMPARISON Did the defendant copy any aspect of the protected expression? What is the relative importance of the copied section?

25. Literary Works – Computer Programs Delrina v. Triolet Systems Here, nothing was found to be copied (finding of fact) In any event, any similarities were dictated by functional requirements, common in the community, public domain, interface was functional or common public domain Consider issues of restraint on defendant's ability to earn a living?

26. Practical Example – Abstraction-Filtration- Comparison Test

27. Public domain New code critical Efficiency New code not critical Public domain New code critical Efficiency New code not critical Public domain New code critical Efficiency New code not critical Infringing Work New code critical New code not critical Filtration Abstraction Public domain New code critical Efficiency New code not critical Compare Quality and QuantityAssess Originality Public domain New code critical Efficiency New code not critical

28. Literary Works – Computer Programs So abstraction-filtration-comparison test not necessarily inconsistent with two-step Ladbroke test May assist in analyzing the quality of what was taken But correct approach in Anglo-Canadian law is to apply the two-step analysis In determining substantial taking, look at the quality of what was taken

29. Dramatic Works

30. s. 2: dramatic work includes (a) any piece for recitation, choreographic work or mime, the scenic arrangement or acting form of which is fixed in writing or otherwise, (b) any cinematographic work, and (c) any compilation of dramatic works; old definition prior to 1 January 1994: "dramatic work" includes any piece for recitation, choreographic work or entertainment in dumb show, the scenic arrangement or acting form of which is fixed in writing or otherwise, and any cinematograph production where the arrangement or acting form or the combination of incidents represented give the work an original character; Now whether a cinematographic work has a dramatic character determines the term of copyright in the work (see s. 11.1)

31. Dramatic Works What is dramatic? Some story or plot – thread of consecutively related events Or some element of drama in the scenes e.g. videos on how to sell real estate have been held to be dramatic works

32. Dramatic Works Canadian Admiral Live telecasts were not dramatic works: merely provides an electronic telescope -- no originality in selection and arrangement. Would this apply today? were the live telecasts original artistic works (photographs)? No, photograph involves something physical; the making of a negative Is definition of photograph consistent with our modern understanding?

33. Dramatic Works – Cinematographic Works Canadian Admiral were the live telecasts cinematographic works as produced by an analogous process? No – television converts light to electronic signal for transmission; is not analogous to cinematography Note that Act amended in 1993 to change produced by with expressed by, Does new definition overrule the effect of Canadian Admiral?

34. Artistic Works

35. s. 2: artistic work includes paintings, drawings, maps, charts, plans, photographs, engravings, sculptures, works of artistic craftsmanship, architectural works, and compilations of artistic works; s. 2: architectural work means any building or structure or any model of a building or structure;

36. Artistic Works Architectural Works Some older cases held no copyright in plans for fairly standard home architectrual work of art repealed For architectural work, sufficient that an attempt has been made to produce venustas (beauty) and some originality displayed ownership of copyright in architectural work is in the author of the plans, not builder or purchaser

37. Artistic Works Problem when item is functional Copyright in book does not protect underlying system: Baker v. Selden No copyright in cardboard pattern for measuring ladies' dress sleeves: Hollinrake v. Truswell artistic work must be intended to have an appeal to the aesthetic senses, not just an incidental appeal also a 2D work can be infringed by a 3D reproduction -- King Features

38. Cuisenaire v. South West Imports

39. Artistic Works – Interface With Industrial Design Protection Copyright Act: Non-infringement re certain designs 64(2) Where copyright subsists in a design applied to a useful article or in an artistic work from which the design is derived and, by or under the authority of any person who owns the copyright in Canada or who owns the copyright elsewhere, (a) the article is reproduced in a quantity of more than fifty, or (b) where the article is a plate, engraving or cast, the article is used for producing more than fifty useful articles, it shall not thereafter be an infringement of the copyright or the moral rights for anyone (c) to reproduce the design of the article or a design not differing substantially from the design of the article by (i) making the article, or (ii) making a drawing or other reproduction in any material form of the article, or (d) to do with an article, drawing or reproduction that is made as described in paragraph (c) anything that the owner of the copyright has the sole right to do with the design or artistic work in which the copyright subsists. Exception: (3) Subsection (2) does not apply in respect of the copyright or the moral rights in an artistic work in so far as the work is used as or for (a) a graphic or photographic representation that is applied to the face of an article;…

40. Artistic Works – Interface With Industrial Design Protection Industrial design basics: Protects features of shape, configuration, pattern and/or ornament that appeal to and are judged solely by the eye Monopoly right: make, import, sell, rent System of government registration Apply on a country-by-country basis Limitation period for filing application: one year in Canada, US Most countries, no grace period Limited term – 10 years in Canada

41. Artistic Works – Interface With Industrial Design Protection Value of industrial design rights? Apple v. Samsung global patent wars Both utility patent and industrial design rights being litigated Germany – preliminary injunction granted against Samsung's Galaxy tablet based on Apple's Community design rights U.S. - case involving design patents proceeding, although preliminary injunction refused

42. Artistic Works – Interface With Industrial Design Protection c.f. copyright Arises automatically Recognized in most countries No need for government registration No limitation period for filing application Very long term (life + 50 years)

43. Rights Comprising Copyright - Substantial Reproduction Ladbroke – two part test: first determine whether the Plaintiffs work as a whole is original then inquire whether the part taken is substantial wrong to ask whether the part taken by itself is protected i.e. cannot dissect the work as a short cut, can ask if the part taken would itself be the subject of copyright, but this is only a shortcut Substantial involves quality as well as quantity can look to whether what was taken is novel or striking, or merely commonplace

44. Rights Comprising Copyright - Performance in Public Canadian Cable TV v. Copyright Board in public means openly, without concealment and to the knowledge of all see s. 2.3 – now communicating work to public by telecommunication not performing or delivering work in public, nor is it authorization to do that act Overruled Cdn Admiral v. Rediffusion – looked at nature of audience Broadcast to many private homes not in public

45. Rights comprising Copyright - Mechanical Contrivances Warner Bros.-Seven Arts Is a videotape a mechanical contrivance? Note definition of mechanical that is applied: acting, worked or produced by a machine or mechanism How does this apply in the context of more modern technology?

46. Moral Rights

47. 14.1 (1) The author of a work has, subject to section 28.2, the right to the integrity of the work and, in connection with an act mentioned in section 3, the right, where reasonable in the circumstances, to be associated with the work as its author by name or under a pseudonym and the right to remain anonymous. rights of paternity and integrity 28.2 (1) The authors right to the integrity of a work is infringed only if the work is, to the prejudice of the honour or reputation of the author, (a) distorted, mutilated or otherwise modified; or (b) used in association with a product, service, cause or institution.

48. Moral Rights Cannot be assigned, but can be waived in whole or in part: s. 14.1(2) Subsist for same term as copyright in the work: s. 14.2 s. 28.1 and 28.2 deal with infringement of moral rights An act that is contrary to any of the moral rights Note for certain works, prejudice is deemed if there is any distortion, mutilation or other modification of the work: s. 28.2(2) However, change in location of work or physical means by which exposed or physical structure containing it, or steps taken in good faith to restore or preserve the work shall not, by that act alone, constitute a distortion, mutilation or other modification: s. 28.2(3)

49. Moral Rights Moral rights limited by reasonableness Th é berge – descend from civil law tradition Focus of Canadian law is on economic rights Moral rights treat work as extension of authors personality, deserving of protection Snow v. Eaton Centre Flock of geese adorned with ribbons Can consider authors subjective views, so long as reasonably arrived at

50. Neighbouring Rights

51. Performers Rights s. 15, s. 26 if not fixed right to communicate to the public by telecommunication to perform in public by non-broadcast telecommunication to fix in any material form if fixed right to reproduce unauthorized fixation to reproduce unauthorized uses of authorized fixation to rent out Right to remuneration – s. 19

52. Neighbouring Rights Sound Recordings s. 18 right to publish for the first time, reproduce in any material form, or rent (and to authorize such acts) right to remuneration for public performance or communication to the public by telecommunication (split 50/50 with performer/maker) (s. 19)

53. Neighbouring Rights Communication Signals s. 21 right to fix it, reproduce any unauthorized fixation, authorize simultaneous retransmission, perform TV broadcast in public for an entrance fee

54. Neighbouring Rights Term s. 23 Performers right 50 years from end of calendar year in which first fixation or unfixed performance occurred Sound Recordings 50 years from end of calendar year in which first fixation occurred Communication Signals 50 years from end of calendar year in which broadcast

55. Next Class Ownership and Assignment Infringement of Copyright in Works – (By Importation, Authorizing Infringement; Fair Dealing will be covered in our last class) Read pages 67-103 for next class