21st Annual Intellectual Property Law - The Year in ReviewCopyright Developments – 2016

Law Society of Upper Canada Continuing Professional Development ProgramOttawa

20 January 2017

Presented by: Margot Patterson, C.S..

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Overview / agenda

Introduction Subsistence and ownership

Infringement Fair Dealing

Moral Rights Tariff IssuesDamages Legislative developments

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Introduction

©

CONTRACT

PROCEDURE

REGULATORY LAW

TM

Subsistence and ownership

5 (1) Subject to this Act, copyright shall subsist in Canada, for the term hereinafter mentioned, in every original literary, dramatic, musical and artistic work

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Maltz v Witterick, 2016 FC 524• Allegation: at least 30 similarities between Documentary and Book

• “Verbatim / almost verbatim copying” of facts unique to Documentary

• No copyright in historical facts, only in the expression of facts through an exercise of skill and judgment

• Moreover - facts are facts - no one owns copyright in facts, regardless of size or significance

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Subsistence and ownership

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Davydiuk v Internet Archive Canada and Internet Archive, 2016 FC 1313• Screenshot photographs:

• Did the selection of these images from videos involve sufficient skill and judgment to attract copyright protection?

• Or were they just a copy of another work – a mechanical exercise?

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Subsistence and ownership

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The Commissioner of Competition v. The Toronto Real Estate Board, 2016 CACT 7

• Competition Act, ss. 79(5): an act engaged in pursuant only to the exercise of any right or enjoyment of any interest derived from the Copyright Act is not anti-competitive

• Not applicable: no copyright in the MLS database• Insufficient originality, skill, judgment and labor. • TREB had merely aligned data inputted by others, no originality • Database was the product of a mechanical exercise that did not

involve adding something original or creating unique elements

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Subsistence and ownership

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Geophysical Service Inc. v. Encana Corp. 2016 ABQB 230• Raw (field) seismic sections (squiggly or zebra lines) were an artistic

work – similar to a map, plan or chart – or a compilation

• Finished product resulted from selection or arrangement of data or sound recordings – met the skill and judgment test

• No need to show that there were only limited ways to create the data• Data was the expression of GSI’s views of what the subsurface image

represented. Therefore: original artistic or literary works

• No need to prove the identity of the specific person that created the data. • Human input involved continuously ≈ creating a sound recording

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Subsistence and ownership

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What was the effect of the Regulatory Regime on Plaintiff’s claims?

Geophysical Service Inc. v. Encana Corp. 2016 ABQB 230Regulatory Regime permissions (to disclose and copy the data) ≈ compulsory licence in perpetuity

- conflicted with -

Copyright Act protections (to allow the owner to withhold consent)

Keatley Surveying Ltd v Teranet Inc, 2016 ONSC 1717• Crown copyright (s. 12 Copyright Act) + regulatory regime (Registry Act,

Land Titles Act) = Teranet copyright

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Subsistence and ownership

Infringement

Copyright in works3 (1) For the purposes of this Act, “copyright”, in relation to a work, means the sole right to produce or reproduce the work or any substantial part thereof in any material form whatever […]

Infringement generally27 (1) It is an infringement of copyright for any person to do, without the consent of the owner of the copyright, anything that by this Act only the owner of the copyright has the right to do.

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Microsoft Corp. v. Liu, 2016 FC 950• 2013: Mr. Liu copied the programs, sold unlicensed copies

• 2015: Mr. Liu handed Henry an external hard drive. Henry installed and sold the software. Did Mr Liu authorize Henry?• CCH: …should presume that a person who authorizes an activity does so only

so far as it is in accordance with the law …. This presumption may be rebutted if it is shown that a certain relationship or degree of control existed between the alleged authorizer and the persons who committed the copyright infringement.

• Here – unclear evidence of relationship, dealings with programs• Someone who merely provides the equipment that could be used to infringe

copyright is not liable …for any subsequent violation of copyright that might occur when that equipment is used by someone else to infringe a copyrighted work. ….external hard drive that Mr. Liu handed to his co-worker …is akin to the self-service photocopiers made available to patrons of the library in CCH.

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Infringement

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Bell Canada et al v 1326030 Ontario Inc. (iTVBox.net), 2016 FC 612• Skirting around the fringes of copyright law

• Broadcasters have exclusive, sole rights in programs and signals

• Were retailers the conduit for infringing consumers? Or were they infringing themselves? 

2.4(1) (b) a person whose only act …consists of providing the means of telecommunication necessary for another person to so communicate the work or other subject-matter does not communicate that work or other subject-matter to the public.

• Retailers deliberately encouraged consumers to circumvent and cancel legal services, get free content

• Above and beyond selling a simple piece of hardware, and instead related to the content of the copyright-protected programming

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Infringement

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VMedia v Bell Canada, 2016 ONSC 7273• VMedia: IPTV broadcast distributor, licensed by CRTC

• VMedia sought a declaration that its New Service did not infringe copyright in CTV TV broadcasts; Bell sought the opposite

• 2016: New Service retransmitted TV channels to subscribers with: Canadian credit card and postal code, internet connection from a CRTC-registered ISP, and ROKU or VMedia set-top box

• Copyright Act compulsory licensing regime: a retransmitter may communicate works and signals to the public without a licence, unless it is a new media retransmitter as defined by the CRTC

• Held: VMedia was acting as a new media retransmitter and not eligible for the compulsory licence

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Infringement

Fair dealing

29 Fair dealing for the purpose of research, private study, education, parody or satire […criticism or review] [news reporting…] does not infringe copyright

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Commercial Radio – SOCAN (2011-2013); Re:Sound (2012-2014); CSI (2012-2013); Connect/SOPROQ (2012-2017); Artisti (2012-2014)

• Fair dealing and other exceptions reduced stations’ royalties by 22 percent

• Stations make Music Evaluation copies to decide whether to add a track; purpose is research; copying is fair based on the 6 CCH factors:• Goal no different from the fact scenarios in Bell and CCH = fair• Amount – whole song ≈ unfairness but likely necessary for the station • Character limited: 1 copy, minimal sharing = fair• Alternatives to copying are widely used ≈ unfair• Nature of the work – new recordings - ≠ fair/unfair• Effect of the copying is ultimately promotional = fair

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Fair dealing

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Blacklock’s Reporter v Canada (Attorney General) 2016 FC 1255• DOF activities for proper research purposes. In the circumstances, fair.

• Articles legally obtained, no longer behind a paywall • Articles originally sent, received, used for legitimate business purpose• DOF had immediate interest in content • Articles distributed to limited group of people with a legitimate interest• No commercial advantage sought or obtained by DOF• Only two (of many) articles, one article made public soon after• DOF not aware of Blacklock’s Terms and Conditions• simple act of reading will almost always constitute fair dealing• Copyright should not protect the press from accountability for E&O

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Fair dealing

Damages

34 (1) Where copyright has been infringed, the owner of the copyright is, subject to this Act, entitled to all remedies by way of injunction, damages, accounts, delivery up and otherwise that are or may be conferred by law for the infringement of a right.

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Microsoft Corp. v. Liu, 2016 FC 950• Request: s. 38.1 statutory damages of CA$180,000 ($20,000 x 9 works)

• Order: CA$50,000 ($10,000 x 5 works) • Here, not egregious and only one occasion…• However - recidivism, failure to comply with previous injunction: clear and

compelling need to deter Mr. Liu from any future infringing activity

• Request: Punitive and exemplary damages of CA$250,000

• Order: CA$50,000. Grounds for punitive damages in view of the misconduct, need for denunciation, and to deter future infringement

• Practice note: see paragraph 28 of the decision for a list of recent Federal Court punitive damages awards for copyright infringement

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Damages

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Royal Conservatory of Music v. MacIntosh (Novus Via Music Group Inc. and Conservatory Canada), 2016 FC 929• Damages awarded at CA$500 per work, lowest end of range, total

$10,500

• Section 38.1(5): • No bad faith

• No improper conduct

• Large award wouldn’t deter future infringement (it arose here from both parties’ poor record-keeping and rights management)

• Should be some correlation between actual and statutory damages• Estimation of probable damages is not determinative, but can help

ensure fairness, proportionality

• Section 38.1 relieves the applicant of the burden of proving actual damages; however, court must base decision on some evidence

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Damages

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Stoyanova c. Disques Mile-End inc. 2016 QCCS 5093• Actual damages “Any reasonable method can be used to calculate the

damages that the plaintiff has suffered”. Court accepts Stoyanova’s detailed accounting of damages, including CA$13,528 representing:• Minimum fees for creating the recording

• Reproduction licenses for the physical and digital copies

• Monitor’s sale and streaming revenues (profits)

• Moral rights. CA$2000, for failure to attribute recording to Stoyanova by her name or performer pseudonym

• No punitive damages. Mile End had underestimated the scope of Stoyanova’s implicit consent, but not intentionally or maliciously

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Damages

Moral rights

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.

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Maltz v Witterick, 2016 FC 524

“The courts have acknowledged that the concept of moral rights has not only a highly subjective aspect,

which in practice only the author can prove, but an objective one as well.”

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Moral rights

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Tariff issues

“[…] In cases where there is no difference, one technology should not result in higher royalties than another”

SODRAC v. CBC Redetermination (2008-2012); Determination (2012-2017)

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SODRAC v. CBC Licences [Redetermination (2008-2012); Determination (2012-2017)]• 2015: SCC remits decisions back to Board, to consider principles of

technological neutrality and balance

• Board finds that:• The principle of technological neutrality requires a comparison of the value to

the user of the use of different technologies.• Where there is no difference, technology A should not result in higher royalties

than technology B. But, where the value to the user is higher with one technology, the principle of technological neutrality justifies a higher royalty.

• The principle of balance can impact the value to the user, and on royalties. Risk, investment, how work is used in new technology

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Tariff issues

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Commercial Radio – SOCAN (2011-2013); Re:Sound (2012-2014); CSI (2012-2013); Connect/SOPROQ (2012-2017); Artisti (2012-2014)

• Exceptions (fair dealing, backup and technological processes) reduced stations’ reproduction rights payments by 22 percent

• Backup reproductions (section 29.24)

• Reproductions that are part of a technological process (section 30.71)

• Broadcast ephemeral copies (section 30.9)

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Tariff issues

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Marrakesh Treaty

• Bill C-11 An Act to amend the Copyright Act re Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired or Otherwise Print Disabled

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Legislative developments

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Trans-Pacific Partnership (TPP) ….??

• Copyright term extension

• Internet intermediary liability

• Technological protection measures (TPMs)

• Penalties for piracy and circumvention of TPMs

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Legislative developments

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2017 Copyright Act Review

Review of Act92 Five years after the day on which this section comes into force and at the end of each subsequent period of five years, a committee of the Senate, of the House of Commons or of both Houses of Parliament is to be designated or established for the purpose of reviewing this Act.

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Legislative developments

Thank you

Margot Patterson, C.S.Dentons Canada LLP99 Bank Street, Suite 1420Ottawa, Ontario K1P 1H4

D: +1 613 783 9693margot.patterson@dentons.com

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