sookman lsuc copyright_year_in_review_2013_final

McCarthy Tétrault S.E.N.C.R.L., s.r.l. / mccarthy.ca

McCarthy Tétrault Advance™

Building Capabilities for Growth

Barry B. Sookman

[email protected]

416-601-7949 January 16, 2014

Law Society of Upper Canada:

The Year in Review: Copyright (2013)

13068218

McCarthy Tétrault S.E.N.C.R.L., s.r.l. / mccarthy.ca DOCS #13068218

Cinar Corporation v. Robinson, 2013 SCC 73

2



Similarities between Robinson Curiosité and Robinson Sucroë

“The Court concludes that there is a substantial similarity

between these two characters.” (Que.S.C)

3



Similarities between Vendredi Férié and Mereredi



4



Similarities between Boum Boum and Duresoirée alias

Hildegarde Van Boum Boum

“The Court concludes that there is a substantial similarity between

these two characters Duresoirée and Boum Boum.” Que.S.C)

5



Similarities between Gertrude and Gladys



6



Similarities between Charlie the Pilot and Courtecuisse



7



¬ “The Copyright Act strikes “a balance between promoting

the public interest in the encouragement and

dissemination of works of the arts and intellect and

obtaining a just reward for the creator… It seeks to

ensure that an author will reap the benefits of his efforts,

in order to incentivize the creation of new works.

However, it does not give the author a monopoly over

ideas or elements from the public domain, which all are

free to draw upon for their own works. For example, “[t]he

general stock of incidents in fiction or drama is free for all

to use ― a substantial part of everyone’s culture, not of

any one individual’s work”…

8



¬ “However, the Act does not protect every “particle” of an original work,

“any little piece the taking of which cannot affect the value of [the] work

as a whole”: Vaver, at p. 182. Section 3 of the Copyright Act provides

that the copyright owner has the sole right to reproduce “the work or

any substantial part thereof”.

¬ A substantial part of a work is a flexible notion. It is a matter of fact and

degree. “Whether a part is substantial must be decided by its quality

rather than its quantity”: Ladbroke (Football), Ltd. v. William Hill

(Football), Ltd., [1964] 1 All E.R. 465 (H.L.), at p. 481, per Lord

Pearce. What constitutes a substantial part is determined in relation to

the originality of the work that warrants the protection of the Copyright

Act. As a general proposition, a substantial part of a work is a part of

the work that represents a substantial portion of the author’s skill and

judgment expressed therein.”

9



¬ “A substantial part of a work is not limited to the words on the page or

the brushstrokes on the canvas. The Act protects authors against both

literal and non-literal copying, so long as the copied material forms a

substantial part of the infringed work. As the House of Lords put it,

¬ . . . the “part” which is regarded as substantial can be a feature or

combination of features of the work, abstracted from it rather than

forming a discrete part. . . . [T]he original elements in the plot of a

play or novel may be a substantial part, so that copyright may be

infringed by a work which does not reproduce a single sentence of

the original.

¬ (Designers Guild Ltd. v. Russell Williams (Textiles) Ltd., [2001] 1 All

E.R. 700 (H.L.), at p. 706, per Lord Hoffmann; see also Nichols v.

Universal Pictures Corporation, 45 F.2d 119 (2nd Cir. 1930), per

Learned Hand J.”

10



“The approach proposed by the Cinar appellants is similar to the

“abstraction-filtration-comparison” approach used to assess substantiality

in the context of computer software infringement in the United States: see

Computer Associates International, Inc. v. Altai, Inc., 982 F.2d 693 (2nd

Cir. 1992)… It has been discussed, though not formally adopted, in

Canadian jurisprudence: Delrina Corp., at paras. 43-47. I do not exclude

the possibility that such an approach might be useful in deciding whether a

substantial part of some works, for example computer programs, has been

copied. But many types of works do not lend themselves to a reductive

analysis. Canadian courts have generally adopted a qualitative and holistic

approach to assessing substantiality. “The character of the works will be

looked at, and the court will in all cases look, not at isolated passages, but

at the two works as a whole to see whether the use by the defendant has

unduly interfered with the plaintiff’s right…”

11



¬ “The trial judge clearly grounded his finding of copying of a substantial part not

in the idea behind Curiosity, but in the way Robinson expressed that idea. He

concluded that the overall architecture of Robinson’s submission for a television

show was copied. He found that the graphic appearance and several aspects of

the personality of Curiosity’s protagonist were copied; the personalities of the

secondary characters that gravitate around Curiosity’s protagonist were copied;

and the graphic appearance of the makeshift village that these characters

inhabit was also copied in part (paras. 685 and 824-26). These findings are not

confined to the reproduction of an abstract idea; they focus on the detailed

manner in which Robinson’s ideas were expressed.”

¬ “The development of a group of characters that have specific personality traits

and whose interactions hinge on those personalities can require an exercise of

skill and judgment sufficient to satisfy the Copyright Act’s originality criterion…

Sucroë reproduces more than generic elements which all are free to draw upon

for inspiration. It reproduces Curiosity’s particular combination of characters with

distinct personality traits, living together and interacting on a tropical island ―

elements that represent a substantial part of the skill and judgment expressed in

Curiosity.”

12



¬ “The question of whether there has been substantial copying focuses on

whether the copied features constitute a substantial part of the plaintiff’s

work ― not whether they amount to a substantial part of the defendant’s

work: Vaver, at p. 186; E. F. Judge and D. J. Gervais, Intellectual Property:

The Law in Canada (2nd ed. 2011), at p. 211. The alteration of copied

features or their integration into a work that is notably different from the

plaintiff’s work does not necessarily preclude a claim that a substantial part

of a work has been copied. As the Copyright Act states, infringement

includes “any colourable imitation” of a work: definition of “infringing”, s. 2.

¬ This is not to say that differences are irrelevant to the substantiality

analysis. If the differences are so great that the work, viewed as a whole, is

not an imitation but rather a new and original work, then there is no

infringement. As the Court of Appeal put it, “the differences may have no

impact if the borrowing remains substantial. Conversely, the result may also

be a novel and original work simply inspired by the first. Everything is

therefore a matter of nuance, degree, and context” (para. 66).”

13



“In my view, the perspective of a lay person in the intended audience for the

works at issue is a useful one. It has the merit of keeping the analysis of

similarities concrete and grounded in the works themselves, rather than in

esoteric theories about the works. However, the question always remains

whether a substantial part of the plaintiff’s work was copied. This question

should be answered from the perspective of a person whose senses and

knowledge allow him or her to fully assess and appreciate all relevant

aspects ― patent and latent ― of the works at issue. In some cases, it may

be necessary to go beyond the perspective of a lay person in the intended

audience for the work, and to call upon an expert to place the trial judge in

the shoes of “someone reasonably versed in the relevant art or technology”:

Vaver, at p. 18”

14



¬ “For expert evidence to be admitted at trial, it must (a) be relevant; (b) be necessary to

assist the trier of fact; (c) not offend any exclusionary rule; and (d) involve a properly

qualified expert… Masterpiece Inc. v. Alavida Lifestyles Inc., 2011 SCC 27, [2011] 2

S.C.R. 387, at para. 75.”

¬ “In the present case, the necessity criterion of the test for the admissibility of expert

evidence is satisfied. First, the works at issue are intended for an audience of young

children. A rigid application of the “lay person in the intended audience” standard would

unduly restrict the court’s ability to answer the central question, namely whether a

substantial part of Robinson’s work was copied. It would shift the question to whether the

copied features are apparent to a five-year-old.

¬ Second, the nature of the works at issue makes them difficult to compare…

¬ Finally, the works at issue had both patent and latent similarities. Or, as Dr. Perraton

explained it, they shared “perceptible” and “intelligible” similarities. “Perceptible”

similarities are those that can be directly observed, whereas “intelligible” similarities ―

such as atmosphere, dynamics, motifs, and structure ― affect a viewer’s experience of

the work indirectly. Expert evidence was necessary to assist the trial judge in distilling

and comparing the “intelligible” aspects of the works at issue, which he would not

otherwise appreciate….”

¬ See also Pelchat c. Zone 3 inc., 2013 QCCS 78

15



“Section 35 of the Copyright Act provides that a defendant

can be ordered to “disgorge its profit to the extent that such

profit is caused by the infringement. The requirement for a

[causal] link between infringement and profit may require that

the profit be apportioned between that which is attributable to

the infringement and that which is not”: McKeown, at p. 24-

82.3 (emphasis added). The onus is on the infringer to

“satisfactorily separate non-infringing from infringing

activities”: Vaver, at p. 653; Sheldon v. Metro-Goldwyn

Pictures Corporation, 106 F.2d 45 (2nd Cir. 1939), per

Learned Hand J. In some cases, “an infringer may so

interweave the right-holder’s work with its own as to make

separation impossible””…

16



¬ “Section 35 of the Copyright Act provides a dual remedy for

copyright infringement: damages for the plaintiff’s losses and

disgorgement of the profits retained by the

defendant. Disgorgement of profits under s. 35 is designed

mainly to prevent unjust enrichment, although it can also serve a

secondary purpose of deterrence: Vaver, at p. 650. It is not

intended to compensate the plaintiff…”

¬ Disgorgement under s. 35 of the Copyright Act goes no further

than is necessary to prevent each individual defendant from

retaining a wrongful gain. Defendants cannot be held liable for

the gains of co-defendants by imposing liability for disgorgement

on a solidary basis.”

17



¬ “In this case, the trial judge relied heavily on the personal approach,

emphasizing the subjective impact of the infringement of copyright on

Robinson’s mental state and personal life. He bolstered his analysis

by comparing Robinson’s anguish to the similar level of anguish

experienced by the plaintiff in the defamation case Société Radio-

Canada v. Gilles E. Néron Communication Marketing inc., [2002]

R.J.Q. 2639 (C.A.), aff’d 2004 SCC 53, [2004] 3 S.C.R. 95...

¬ I agree with the trial judge that Robinson’s non-pecuniary damages

are analogous to those claimed by a victim of defamation. The

product of Robinson’s artistic exertions was taken from him and the

integrity of his personal creative process was violated, causing deep

psychological suffering. These harms are similar to those suffered by

a victim of defamation.”

18



¬ Quebec Charter of human rights and freedoms, R.S.Q., c. C-12, s. 49.

¬ 1. Every human being has a right to life, and to personal security,

inviolability and freedom.

¬ 4. Every person has a right to the safeguard of his dignity, honour and

reputation.

¬ 6. Every person has a right to the peaceful enjoyment and free

disposition of his property, except to the extent provided by law.

¬ 49. Any unlawful interference with any right or freedom recognized by

this Charter entitles the victim to obtain the cessation of such

interference and compensation for the moral or material prejudice

resulting therefrom.

¬ Punitive damages.

¬ In case of unlawful and intentional interference, the tribunal may, in

addition, condemn the person guilty of it to punitive damages.

19



¬ “Section 49 of the Charter provides that punitive damages may be awarded if there is an

unlawful and intentional interference with any of the rights and freedoms that the Charter

recognizes. The evidence establishes unlawful and intentional interference with several of

Robinson’s Charter rights. Copyright infringement is a violation of s. 6 of the Charter, which

provides that “[e]very person has a right to the peaceful enjoyment and free disposition of

his property, except to the extent provided by law”… Additionally, the infringement of

copyright in this case interfered with Robinson’s personal rights to inviolability and to

dignity, recognized by ss. 1 and 4 of the Charter.

¬ An interference with the right to inviolability “must affect the victim’s physical, psychological

or emotional equilibrium in something more than a fleeting manner”… The trial judge made

detailed findings of fact to the effect that Robinson’s psychological and emotional

equilibrium were deeply affected as a result of the infringement and the ensuing legal

proceedings (paras. 981-82).

¬ An interference with the right to dignity is a violation of “the respect to which every person

is entitled simply because he or she is a human being and the respect that a person owes

to himself or herself”…

¬ Here, Cinar, Weinberg, Charest, and Izard consistently and contemptuously denied having

access to Robinson’s work, and disparaged Robinson’s claims that they had copied his

work. Their behaviour constitutes an interference with Robinson’s Charter right to dignity,

and provides an additional basis for the award of punitive damages.”

20


Rains v. Molea, 2013 ONSC 5016

Rains

Laconia, 1998

Molea

Hero, 2004

Did Molea infringe the copyrights of Rains in the “Classical Series” – paintings

which feature crumpled paper in still life form against a dark background?

21



22

Rains

“Icaria”, 2000

Molea

“Turning Point”, 2005



23

Rains

“Parnassus”, 1992

Molea

“The Last Frontier”, 2007



¬ “In my view, each image of the Classical Series is original as that term is

defined by the Supreme Court of Canada. Each image originates from Rains

and is not copied from another work. Every image is the product of Rains’

skill and judgment. Each Classical Series painting starts with Rains randomly

crushing a large piece of water colour paper. From there, Rains considers

the appropriate vantage point for engaging with the paper and starts painting

the work. The whole process takes approximately two to three weeks, with

works often 44 x 66 inches. Rains’ skill and judgment employed to create the

final images are more than trivial and meet the originality test set out above.”

¬ “Rains and Molea both had the idea of painting a realistic image of crumpled

paper. Their respective expressions of the idea are represented in the

images themselves. The image is a product of diligent work. The artists

spend hours exercising skill and judgment. They apply intellect and employ

techniques learned through study, experience, talent, and influence to

develop, explore, and perfect the expression of that idea in a painting. Both

Rains and Molea repeatedly express the idea through images. Each image is

a different expression and that expression, if original, is subject to copyright.”

24



¬ “I reject Rains’ submission that the Classical Series is a compilation because

it evokes a feeling common to all his works, I conclude that the Classical

Series is not a compilation as defined by the Act because “gestalt” or a

“feeling” is insufficient to meet the test.

¬ Further, in my view it would be unwise to extend copyright protection to the

visual perception of an artistic work, which is intangible and subjective…

There is good reason for this. The scale would be tipped in favour of the

creator’s rights if copyright were to protect an undefined and unarticulated

feeling emoted from artistic works. There would be little room for the public

domain to flourish. Others would be unable to produce new artistic works

without fear of infringing a creator’s self-imposed or critically-bequeathed

imprecise evocation of his work’s feeling or expression. Moreover, the

protection would often extend to works not yet created. This would be a

perverse result considering the purpose of the Act as set out above.”

25



¬ “The 17 comparisons feature the use of crushed white paper against a dark or

sometimes earth-tone background on an occasional lighter, indeterminate, or

reflective flat base with, on one occasion, a Mediterranean title. The facts further

indicate that these similarities are not unique to Rains; they are common, long-

established artistic techniques. I conclude therefore that the similarities between

the 17 comparisons are conventional tropes or artistic devices historically common

among painters.”

¬ “Rains cannot establish infringement by relying on his use of the noted unoriginal,

commonplace, historical painting techniques. This would be akin to Shakespeare

relying on his use of iambic pentameter in his writing or Drake relying on his use of

16 bars to a verse in his music. Commonly used techniques must remain available

to all artists creating literary, dramatic, musical, and artistic works… If the

compilation of these techniques is original, as defined above, the work enjoys

copyright protection. If, after disregarding the commonplace techniques, there

remain sufficient similarities between one work and a preceding original,

substantial copying will likely be established. Because Rains relies on unoriginal

elements, other than shape, to demonstrate similarity, these elements do not

establish substantial copying.”

26



“This case involves two artists who had the same (and not unique) idea

to paint crumpled paper in a realistic way using conventional painting

techniques. Their motivations are different. Their processes are

different. Their resultant expressions are different. The Act protects

each original Rains painting and each original Molea painting from

infringement. If any of Molea’s 17 comparison works were substantial

copies or colourable imitations of Rains’ comparable images, Rains

would be successful in his claim of copyright infringement. However,

simply because Rains expressed his idea before Molea and found

commercial success and critical acclaim for doing so, does not mean

that Molea or any other painter is forever prohibited from independently

creating an expression of crumpled paper in still life form. In my view,

to give Rains exclusive access to this territory would unfairly silence

independent expressions of the idea and render absurd the very

purpose of the Act.”

27


Pelchat c. Zone 3 inc., 2013 QCCS 78

¬ “the applicants claim to hold "the exclusive rights to produce and distribute any

issue relating to the transformation beauty of a person by the clothes, hairstyle

and makeup.”

¬ “The Tribunal viewed several emissions Looks and Metamorphosis with the

parties and again during deliberations.

¬ It does not show even an impression of similarity between the two works to the

point that, to paraphrase Riordan J. in Cummings , one is led to conclude that

not only are the two horses of a different color, but they are not even two

horses.

¬ In fact, besides the concept of transformation and beauty items that are

inherent, there is little or no connects.

¬ It is not surprising in the circumstances that applicants have attempted to

reduce their work to generic elements of any transformation beauty on

television while trying to hide the other or pretend that they are meaningless

elements nor importance in the expression of their concept.” (Google translate)

28


Hobbs v. (Elton) John, 722 F. 3d 1089

(7th.Cir.2013)

¬ Hobbs claims his song "Natasha" is infringed by Elton John’s song entitled

"Nikita“.

¬ “We agree with the district court that "Natasha" and "Nikita" simply "tell

different stories," Hobbs v. John, No. 12C3117, 2012 WL 5342321, at *7

(N.D.Ill. Oct. 29, 2012), and "are separated by much more than `small

cosmetic differences,'" Peters,692 F.3d at 636 (quoting JCW, 482 F.3d at

916). "Natasha" tells the story of an actual, though brief, romantic encounter

between a man from the United Kingdom and a woman from Ukraine. Their

tangible relationship is severed because the woman must sail away. In

contrast, "Nikita" tells the tale of man who sees and loves a woman from

afar. But that love can never find physical expression because the two are

separated by "guns and gates."

¬ We conclude that as a matter of law "Natasha" and "Nikita" are not

"substantially similar" because they do not "share enough unique features to

give rise to a breach of the duty not to copy another's work.“”

29


Klinger v Conan Doyle Estate, Ltd No. 13 C 1226

(N.D.Ill.2013)

¬ Klinger seeks a declaration that various characters, character traits and

other story elements from Sir Arthur Conan Doyle's Sherlock Holmes

stories are free to use in an anthology of new and original short stories by

contemporary authors without infringing Conan Doyle's rights under the

U.S. Copyright Act.

¬ “Where an author has used the same character in a series of works, some

of which are in the public domain, the public is free to copy story elements

from the public domain works...

¬ It is a bedrock principle of copyright that "once work enters the public

domain it cannot be appropriated as private (intellectual) property," and

even the most creative of legal theories cannot trump this tenet.”

¬ “The law is clear that Klinger is entitled to use the Pre-1923 Story

Elements... The Post-1923 Story Elements are protected under copyright,

and as a result neither Klinger nor the public are entitled to use them.”

30


Distrimedic inc. c. Dispill Inc., 2013 FC 1043

¬ Is The Dispill Label Form Susceptible To Copyright Protection?

¬ “I am prepared to accept that what Richards really seems to be

referring to by the term “Dispill Label Form” is a series of entry

screens from a software program written in the DOS language”.

¬ ‘There is no dispute between the parties that a form does not

have to be on a paper support and that a computer screen (which

in any event can be printed) falls within the definition of a “work”

for the purposes of the Copyright Act, and can therefore be

protected. Similarly, the Defendants to the Counterclaim do not

dispute that the DOS Dispill Label Form is a literary work.”

31



¬ “There are…problems preventing the recognition of copyright in the

Dispill Label Form… the selection of the information for the DOS

Dispill Label Form bears a very low degree of originality, as it is

mostly dictated by provincial legislation on the labelling of

prescription drugs, both in Quebec and Ontario, where the parties’

products are mainly sold…

¬ In the case at bar, I have not been convinced that the selection of

information and its arrangement in the DOS Dispill Label Form

required of its author the type of skill and judgment deserving of

copyright protection. It may be, as suggested by counsel for

Richards, that Dispill was the first to create a method of generating

the necessary patient information for printing on each cell of a pill

dispenser. This cannot be the subject of copyright protection,

however, as it would amount to creating a monopoly on an idea or

method, which the law does not permit.”

32



¬ “The asset purchase agreement whereby Mr. Bouthiette sold his

business to his company Dispill Inc., dated January 1, 1998, makes

no mention of any copyright in the Dispill Label Form…

¬ In the present case, I do not think that the Clause 1 of that

Agreement, stating that “[l]e vendeur vend à l’acquéreur, qui l’achète,

son entreprise de vente d’un système de dispensateur de

médicaments, connue sous le nom de DISPILL…”[Google translate:

“the seller sells to the purchaser, who buys his company sales

system dispensing of medicines, known as the DISPILL”], explicit

enough to encompass the alleged copyright in the Dispill Label

Form. This is made even clearer by the description that is given of

that enterprise in that same clause, which explicitly refers in Section

C to the invention in the patent. It doesn’t appear, therefore, that the

parties to the agreement had the Dispill Label Form and the copyright

possibly attaching thereto in mind, particularly as they made no

reference to it despite referring explicitly to the patent.”

33


(AOM) NA Inc. et al v. Reveal Group, 2013

ONSC 8014

¬ “Copyright is a very specific right attaching to a “work”. I agree with the

defendants that the pleading is vague about what it is that is subject to

copyright and what it is alleged has been the breach of copyright giving rise

to this cause of action. Copyright cannot attach to an idea such as a

method. It can of course attach to the manuals or other material in which the

method is described. Similarly with computer software, copyright can attach

to source code, to a graphic user interface, to manuals and to other material

as defined in the Act. Copyright cannot attach simply to what a computer

program does. The plaintiff must specify what it is that is covered by

copyright and what it alleges has been done that gives rise to the statutory

remedies.

¬ On this point the defendant is successful. The claim for copyright breach will

be struck out with leave to amend.”

34


SAS Institute Inc v World Programming Ltd [2013]

EWCA Civ 1482 (21 November 2013)

¬ “The court did not itself define what it meant by "functionality"; and in those

circumstances there is no reason to suppose that it meant anything different

from the way in which the Advocate-General defined the word. Moreover, at

[40] it specifically approved what the Advocate-General had said at [57] of

his opinion:

¬ "… to accept that the functionality of a computer program can be

protected by copyright would amount to making it possible to

monopolises ideas, to the detriment of technological progress and

industrial development.“

¬ It will be recalled that in [39] the court had discussed (a) the functionality of a

computer program, (b) the programming language and (c) the format of data

files used in a computer program. By contrast in [45] it considered only (b)

and (c). One must infer, therefore, that the court considered that the

functionality of a computer program could not be protected under the

Information Society Directive. So I do not think that this carries SAS

Institute's argument further.”

35


Manitoba v. Access Copyright, 2013 FCA 91

¬ 12. Without

prejudice to any

rights or privileges

of the Crown,

where any work is,

or has been,

prepared or

published by or

under the direction

or control of Her

Majesty or any

government

department, the

copyright in the

work shall, subject

to any agreement

with the author,

belong to Her

Majesty…

¬ “The Board’s analysis began with a recognition of the history of

Crown copyright under the Crown prerogative particularly its

right to print and publish. This right goes back hundreds of

years, and includes the right to print and publish statutes, court

decisions, and authorized versions of the Bible, among other

things… The Board concluded that the words “without prejudice

to any right or privilege of the Crown” in section 12 of the Act

are necessary to maintain that common law Crown prerogative,

and the scope of section 12 should be limited accordingly.”

¬ “Having carefully examined the wording of section 12 in its

overall context, including the structure of the Act, its legislative

history and evolution, and other provisions, such as section 89,

I agree with the Board that the words “[w]ithout prejudice to any

right or privilege of the Crown” set out in section 12 are

intended to refer to and preserve the Crown’s rights and

privileges of the same general nature as copyright that may not

fall within the meaning of the rest of this provision. These rights

and privileges could otherwise be excluded by the general

principle set out in section 89 which provides that no person is

entitled to copyright otherwise than under and in accordance

with the Act or any other Act of Parliament.”

36


Manitoba v. Access Copyright, 2013 FCA 91

¬ “In my view, the references in the Act to very strict conditions, to

tariffs fixed by the Board, to the consent of the copyright owners,

and to the power of the court when the defendant is an

“educational institution”, including a federal or provincial

government department, all point to only one logical and

plausible conclusion as to the intent of Parliament: the Crown is

bound.

¬ I have considered that the Act, unlike other statutes such as the

Patent Act, R.S.C., 1985, c. P-4, s.2.1, does not contain an

“expressly binding” clause at the beginning, as was

recommended in the 1985 report entitled A Charter of Rights for

Creators. I am still irresistibly drawn to the conclusion that

Parliament clearly intended to bind the federal and provincial

Crowns by the express language of the Act and through logical

inference.”

37


Nautical Data International, Inc. v. C-Map

USA Inc., 2013 FCA 63

¬ Was a grant of a license to data/charts exclusive so as to give NDI the right to

sue for infringement?

¬ “Subject to the rights reserved in Sections 2.4 and 2.5 below, Canada grants

to NDI a sole worldwide right and license (the “License”) to use the CHS Data

to produce Products and Product Updates, to integrate these Products with

other products or services (provided that such integrated offerings do not

derogate in any respect from the availability or reliability of the Products or

Product Updates) and to distribute same directly or through third parties to

whom a sublicense is granted in accordance with the terms hereof. Except as

expressly set out herein, CHS shall have no right to distribute the Products or

Product Updates to any person.”

¬ “There is no other provision in the Licence that says expressly that the Crown

reserved to itself the right to make digital copies of the CHS Works. That

would tend to support the argument of NDI that the Licence was intended to

be an exclusive licence.”

38


VLM Holdings Ltd v Ravensworth Digital Services

Ltd [2013] EWHC 228 (Ch) (13 February 2013)

¬ “Since the grant by UK was a grant by a sub-licensor, what is the effect on such a grant

of the cesser of the head licence?”

¬ “Since one starts with the question of permission, it is therefore pertinent to determine

who has permitted whom to do what. It is certainly possible to imagine circumstances in

which a sub-licence would survive the termination of the head licence. Take, for

example, a case in which a copyright owner gives a licence to another, and expressly

permits that other to grant sub-licences which (say) endure for a given period and which

are clearly expressed as being capable of surviving the termination of the head licence.

It seems obvious that the sub-licences would indeed survive that event. The reason for

that, in my view, is that the permission extended by the express term means that there

was an authority (permission) from the copyright owner to use the copyright material. In

effect, the sub-licensor was authorised to give that consent and, to that extent, to bind

the owner. This demonstrates that the key lies in the area of authority – what authority

was the sub-licensor given by the owner? In my example the answer is plain.”

¬ “The real question is therefore as to the scope of the authority given by the head

licensor to the sub-licensor. That depends on all the facts. If the authority is sufficiently

wide to allow the grant of a sub-licence which is capable of surviving the termination of

the head licence, then the head licensor (copyright owner) must be taken as giving the

ultimate permission himself, on normal agency principles.”

39


Orr-Adams (t/a Applied Concrete Systems, A

Partnership) v Bailey [2013] EWPCC 30 (12 Jun. 2013)

¬ Does a licensee have a continuing right to use confidential information and

copyright works after a contract termination and an obligation to continue pay

royalties for such use?

¬ “Bearing that guidance in mind, I accept that the Defendants' contention that

they remained able to exploit the Disputed Formulations after determination

of the agreement made some commercial sense, as otherwise they could

have been faced with the difficulty of not having products to sell after

determination. Therefore, there would have been an implied term of the

agreement for the Defendants to have the right to continue to sell products

made to the Disputed Formulations for a limited period after determination.

Or, it may have been reasonable for there to be an implied term that they

could carry on exploiting them generally after termination. However, in either

case I can see no basis for the Defendants' contention that such post-

termination sales did not carry with them an obligation to continue making

payments to the Claimants. That seems to me to be the obvious corollary of

any implied right to continue making such sales.”

40


Agence France Presse v. Morel, 106 U.S.P.Q.

2d 1192 (S.D.N.Y.2013)

¬ “AFP argues that it was a third party beneficiary to the Twitter TOS and

derives a license from those terms of service, and is therefore insulated from

liability...The test for determining whether a contract was made for the benefit

of a third person is whether an intent to benefit a third person appears from

the terms of the contract. An individual may be a third-party beneficiary to a

contract if the terms of the contract "necessarily require" that the promisor

conferred a benefit on that third party.”

¬ “The Court need not fix the precise scope of any license created by the Twitter

TOS in order to resolve the dispute before it. Rather, it suffices to say that

based on the evidence presented to the Court the Twitter TOS do not provide

AFP with an excuse for its conduct in this case... Put differently, the evidence

does not reflect a clear intent to grant AFP a license to remove the Photos-at-

Issue from Twitter and license them to third parties, nor does it "necessarily

require" such a license... Indeed, this is the fatal flaw in AFP's argument: it

fails to recognize that even if some re-uses of content posted on Twitter may

be permissible, this does not necessarily require a general license to use this

content as AFP has.”

41


Oakcraft Homes Inc v Ecklund, 2013 CanLII

41981 (ON SCSM) ¬ Innocent infringement?

¬ “The failure to mark ownership on the plan does not in law as set out above, defeat the

right to copyright. The Ecklunds knew that the plan originated with the Plaintiff, the Plaintiff

having discussed it with them, having made changes in writing thereon and having been

sent an updated plan with proposed changes as discussed following attendances at other

custom homes built by the Plaintiff. The Ecklunds cannot excuse their conduct in passing

those plans onto Toscana merely because the ownership is not marked on the plans and

merely because the Plaintiff did not specifically tell the Ecklunds they could not use them.

It defies logic and common sense for the Ecklunds to use those factors as an excuse to

escape liability for their actions. They took the plans with full knowledge that they had no

colour of right to them and then they knowingly passed them on to the Defendant

Toscana and solicited others as well for the sole purpose of them being used as jump off

points for their custom home design. What the Ecklunds did in the result was infringe the

Plaintiff’s copyright in the plans.

¬ Toscana knowingly took those plans with the intention of using them as jump off points to

satisfy a potential customer shopping for the best deal on a custom home. Its principals

were wilfully blind to determining where the plans came from and who authored them.

They chose not to ask knowing that their potential customer was not the author.”

42



41981 (ON SCSM)

¬ Measure of damages

¬ “On the measure of damages, the Plaintiff seeks by its Claim the

sum of $17,500.00 for the value of the plans had they been sold

as a separate item. The Defendant Toscana claims that the

proper value to be assessed for the plans is $5700.00. Neither

party presented very cogent evidence on the proper amount to be

assessed for damages for the value of the plans. It is therefore

left to the court to make a determination in this regard. In doing

so, I have regard to the approach taken by the Quebec Court of

Appeal in the Construction Denis Desjardins Inc. v. Jeanson case

to strike the midpoint as the measure of damages in the absence

of cogent proof as to value. In this case, the midpoint is

$11,600.00. Accordingly, I assess the Plaintiff’s damages at

$11,600.00.”

43


Tremblay v. Orio Canada Inc., 2013 FC 109

¬ “Any development done for Orio Canada Inc. shall become the exclusive

property thereof and may not therefore be marketed or reused by

Service Informatique Professionnel or any other party.”

¬ “In this case, the Court has no choice but to find that a signature is

lacking. Although the parties have confirmed before this Court that the

plaintiff submitted other bids to the defendant that include the same

clause, there is nothing in the evidence to support a finding that the bids

submitted after April 2007 were signed... Had it not been for the absence

of the plaintiff’s signature, there would have been an assignment of the

copyright under the Act, but in the circumstances, the Court can only find

that, pursuant to subsection13(4) of the Act, the plaintiff did not assign

his copyright in the modified SAM program. Accepting the defendant’s

argument and making the opposite finding solely on the basis of the

plaintiff’s testimony would render meaningless the requirement imposed

by Parliament. This finding may appear rigid, but it complies with the

formal requirements of the Act.”

44


Tremblay v. Orio Canada Inc., 2013 FC 109

¬ “the Court is nevertheless of the view, on the basis of the record and the evidence,

that the plaintiff granted an implied licence of use to the defendant with respect to

the modified SAM program. This conclusion is dictated by the following reasons.

¬ First, the Court notes that this case rests on one key, determinative factor: the

plaintiff authored the clause at issue, and it was the plaintiff, not the defendant,

who included it in the bids. Next, the evidence shows that the plaintiff included this

clause repeatedly in all of his bids to the defendant and that this was his usual

practice. The plaintiff confirmed this upon examination by explaining that the

purpose of the clause was to allow the defendant to market the modified SAM

program. The evidence also shows that the plaintiff knew that the modified SAM

program would be installed at car dealerships. The plaintiff even travelled to some

of these dealerships himself on occasion. The Court also notes that the plaintiff

was paid for his work…

¬ Therefore, in light of the evidence, the Court finds that the plaintiff granted the

defendant an implied licence to use the modified SAM program. It has been

recognized in the case law that an implied licence can be inferred from the parties’

conduct and need not be made in writing… The Court is of the view that this is the

case here.”

45


Tremblay c. Canada (Orio Canada Inc)., 2013

CAF 225

¬ “Thus, the case law provides unanimously that we can not oppose the holder of a

copyright assignment or exclusive licensee who is not evidenced by a writing

signed by the holder of the right in question …

¬ However, these decisions do not deal with a case where the owner of the

copyright recognized in court to have consented to the transfer of ownership of

the right in question. It seems to me an exaggerated formalism that make

ineffective against a transferor a transfer clause of copyright that he has written

himself and recognizes court as governing its relations with the transferee, and

this for the simple reason that it is not signed. As I mentioned earlier, the purpose

of subsection 13 (4) and (7) of the Act, copyright is to protect the owner of the

copyright assignment against a law that is not granted clearly. Where the

transferee recognizes himself in court the assignment clause which governs its

reports, the purpose of the Act is about me filled.”

¬ Orio, however, has not made a cross-appeal against the decision of the judge

trying the assignment of copyright is unenforceable to the caller. In these

circumstances, it is not for this Court to reform this aspect of the judge's

decision.” (Google translate)

46


B4U Network (Europe) Ltd v Performing Right

Society Ltd [2013] EWCA Civ 1236 (16 October 2013)

¬ “At common law a man cannot give to another that which he does not

own or does not yet possess. Thus, absent statute, a work must be in

existence before ownership in the rights in the work can be assigned

at law. But although future property, or an expectancy, cannot be

assigned at law, equity would decree specific performance of the

contract, provided it was for value and sufficiently specific (Maitland

on Equity, 2nd ed. 1936, p.150, Kitto, Equity Doctrines and Remedies

Butterworths Aus. 2002).

¬ Accordingly, where an author, or composer, assigned the copyright in

works which he had not yet created, the assignment took effect only

in equity as an agreement to assign future copyright in those works,

should they be created. Once the work was created, the legal title

would have to be dealt with by a separate assignment.”

48


B4U Network (Europe) Ltd v Performing Right

Society Ltd [2013] EWCA Civ 1236 (16 October 2013)

¬ It is, in my view, inconsistent with the concept of a higher right created by an

equitable assignment, independent of the contract, to suggest that a

reasonable person would have understood the parties to have intended only

to transfer rights in works of which they became owner once the works had

been composed. To do so would turn the priority rules in relation to equitable

assignments topsy-turvy; it permits the property rights created by the

equitable assignment to be undermined by a subsequent equitable

assignment…

¬ The conclusion I have reached gives full effect to the words of the PRS

agreement, without addition or substitution. At the time of that agreement the

composers could have become owners of the song. As prospective owners,

their assignment took effect under section 91 once the song had been

composed.”

49


Delta Hotels v. Backus-Naur et al., 2013

ONSC 582

¬ “The defendants also say that equitable ownership of copyright is an

untenable plea and, as such, should be disallowed. Equitable ownership

of copyright is a recognized principle in the United Kingdom. Ms. Zagar

submits (and the excerpt cited by her from Professor Vaver’s Intellectual

Property Law: Copyright, Patents, Trademarks, 2d ed., at 140 appears to

support her submission) that there is no direct discussion in Canadian

jurisprudence in favour or against equitable ownership of copyright.”

¬ Ms. Zagar says that...having regard to the state of the law in Canada, it is

not absolutely clear that a claim founded on equitable ownership of

copyright is incapable of success (even if success is uncertain). On the

materials before me, I am inclined to agree with this submission,

too. While I accept, as Mr. Seed has argued, that there is now no

precedent in Canadian law for the alternative plea proposed, I cannot say

that it necessarily follows that on the specific facts of any given case, or

this case, there could never be.”

50



41981 (ON SCSM)

¬ Is there a copyright in house plans created using computer tools?

¬ “It is clear from the evidence and I so find that Thompson embarked upon a

course of conduct over time that turned his visions intellectually applied and

conceptually conceived into an exceptional work deserving of copyright

protection. His plan as presented to the Ecklands and after consultation with

them embodied his vision and was unique to that vision. The fact that the

plan was sent to a draftsman who reduced it to technical standards

commanded by planning authorities does not in any way diminish the

intellectual exercise used to create the original plan nor does it shift

ownership to the draftsperson. Drafting for that purpose is a technical art

using technical drawing tools. Today, that art has become a science by the

use of computer aided design (CAD). Can it be said that the use of CAD

thereby converts ownership in the original work to the computer software

technician operating the machine or the computer software programmer who

programmed the CAD software? The answer is obvious….NO!”

51



41981 (ON SCSM)

¬ Ownership of works created by corporate officers?

¬ ”The Court has recognized over the years that when dealing with senior

officers of corporations like presidents or other key officers, that these people

are usually considered an employee of the company, whether or not a

written contract of services exists and the copyright will therefore be owned

by the company. B & S Publications Inc. v. Max-Contacts Inc,. 2001

Carswell Alta 69 at para. 21.

¬ On the issue of who owns the copyright in the plan and the allegation that

the Plaintiff is not the rightful owner, the law is clear in that where an

individual in the employ of a corporate entity is a principal/owner and senior

officer thereof and he creates the work while in the corporation’s employ, the

ownership resides in the corporation and a formal assignment of one to the

other is therefore unnecessary.”

¬ Is the decision correct?

52


Coward v Phaestos Ltd & Ors [2013] EWHC

1292 (Ch) (17 May 2013)

¬ Is software created by a partner a partnership asset even if there is no

written assignment of copyright?

¬ “It is not in dispute that the software which was created by Dr Coward, was

created for the purposes of the partnership and was the bedrock of that

business. The trading could not have been undertaken without it. It was

the central tool by which the trading and investment operations of the

business were to be carried out.

¬ If one tests the proposition further by applying the criteria set out by Jacob

J in Robin Ray, in my judgment, it is equally clear that it is necessary to

infer that the software was partnership property.”

¬ “an asset is not prevented from being partnership property as a result of a

lack of a transfer of the legal title. As in the case of Don King Productions

Inc v Warren, if necessary, the legal owner of the asset will found to hold

the legal title upon trust for the partnership.”

53


Tremblay c. Canada (Orio Canada Inc)., 2013

CAF 225

¬ ”As to the implied license to use, I see no error in the judge's decision

wanting that, given the circumstances, the appellant consented not only an

implied license marketing SAM modified, but also to that can be changed by

software Orio to improve marketing. In this regard, the decision of the

Supreme Court of Canada in Netupsky c. Dominion Bridge , [1972] SCR 368

appears to me analogous to the present case…

¬ There is no doubt in my opinion that the parties had in mind that the modified

SAM could not only be marketed, but that this program could also be future

improvements at the request of Orio, and that these improvements could be

made either by calling or by a third party designated by Orio. Explicitly

recognizing that "[a] ny development is Orio Canada inc. become the

exclusive property "thereof, the appellant was in fact waived exclusivity on

the development of all future enhancements audit program. The implied

license arising from all relationships between the parties therefore allows

Orio to copy the source code of SAM modified to do rework by third

parties. The trial judge therefore did not err in so ruling.” (Google translate)

54


Pinto v. Bronfman Jewish Education Centre,

2013 FC 945

¬ “Mr. Pinto has failed to make out this critical component of infringement. The

evidence establishes that Mr. Pinto consented to, and indeed actively

facilitated, BJEC’s use of his music. This is not a case of uncertainty or

ambiguity. The evidence is consistent with consent.

¬ A court may find an implied licence has been granted when an artistic work

was created as part of a freelance contract at the request of the purchaser. In

such cases, the freelance contract is construed as including an implied licence

for the purchaser to use the work for the purpose it was created…

¬ This principle is directly applicable to the present circumstances. BJEC

engaged Mr. Pinto to compose, produce, arrange, perform and record music

for the TaL AM curriculum. BJEC paid Mr. Pinto for his work, and in exchange

for the consideration, received an implied licence to use the work for the

purpose contemplated by the parties”.

¬ See also, Planification-Organisation-Publications Systèmes (POPS) Ltée v.

9054-8181 Québec Inc, 2013 FC 427

55



2013 FC 945

¬ “When a licence is granted in exchange for consideration,

as in this case, it cannot be unilaterally revoked: Silverson

v Neon Products Ltd, [1977] BCJ No 1092 (SC) at paras

33-36; Fox Canadian Law of Copyright and Industrial

Designs, ch 19 at 29.”

¬ See also, Planification-Organisation-Publications

Systèmes (POPS) Ltée v. 9054-8181 Québec Inc, 2013

FC 427

56



2013 FC 945

¬ “Section 2 of the Act provides that the “maker” is “the person by whom the

arrangements necessary for the first fixation of the sounds are undertaken.” Section

2.11 explains that the necessary arrangements include “entering into contracts with

performers, financial arrangements and technical arrangements required for the first

fixation of the sounds for a sound recording.”

¬ Case law interpreting these provisions has emphasized the element of financial risk

and payment for the recording. The maker is not necessarily the person who has

personally undertaken the necessary arrangements, but instead the individual or

corporation that bore the financial risk of doing so, such as a record company”…

¬ “However, it was BJEC that ultimately assumed the financial risk for the recording, as

its payments to Mr. Pinto covered all of his costs, including paying the studio and

vocalist…. In my view, though he was not an employee, he was entitled to be

reimbursed for his expenses and therefore did not assume the financial responsibility

for the recording. It is significant that for fourteen years BJEC paid every invoice

provided by Mr. Pinto, including all disbursements. Accordingly, I conclude that BJEC

was the maker of the sound recording and owned the copyright.”

57



2013 FC 945

“The certificates create only a presumption of ownership.

As the certificates were registered after Mr. Pinto began

these proceedings, the presumption has less weight: CCH

Canadian Ltd v Law Society of Upper Canada, 2002 FCA

187 (CanLII), 2002 FCA 187 at para 63. In any event, in

this case, there is substantial additional evidence regarding

copyright ownership, all of which pre-dates registration. As

will be discussed below, this evidence rebuts any

presumption created by registration, assuming that

registration is valid.”

58



2013 FC 945

¬ “There should be some relationship between the actual damages

and statutory damages: Hughes & Peacock on Copyright and

Industrial Design, at 665. Hughes J and Susan Peacock

continue and observe that:

¬ The overarching mandate of a judge assessing statutory

damages in lieu of damages and loss of profits is to arrive at

a reasonable assessment in all of the circumstances in order

to yield a just result. There should be some correlation

between actual damages and statutory damages.

¬ This, in turn, directs the inquiry to a broad range of factors,

including whether or not the defendants acted in good or bad

faith and the need for deterrence.”

59


Planification-Organisation-Publications Systèmes

(POPS) Ltée v. 9054-8181 Québec Inc., 2013 FC 427

“As discussed in the immediately preceding section above, IDP

provided substantial consideration in exchange for an explicit or

implied licence to use and to continue to develop the Software. That

consideration was provided pursuant to an explicit or verbal

agreement, and was further evidenced by a course of conduct

pursued by the parties over the course of many years. Accordingly,

POPS was not entitled to unilaterally revoke that licence (Katz

(Michael Katz Associates) v Cytrynbaum (1983), 76 CPR (2s) 276,

at para 19 (BCCA), citing H G Fox, The Canadian Law

of Copyright and Industrial Designs, 2d ed (Toronto: Carswell, 1967),

at pp 339-340); see also (J S McKeown, Fox, Canadian Law

of Copyright and Industrial Designs, 4th ed, (Toronto: Carswell,

2009) at 19:4(e); and Winter Garden Theatre v Millenium Products,

[1948] A.C. 173, at 193 and 198).”

60


Metro. Reg'l Info. Sys. v. AMER. HOME

REALTY NET., 722 F. 3d 591 (4th.Cir.2013)

¬ “A transfer of one or more of the exclusive rights of copyright ownership by

assignment or exclusive license "is not valid unless an instrument of conveyance,

or a note or memorandum of the transfer, is in writing and signed by the owner of

the rights conveyed or such owner's duly authorized agent." 17 U.S.C. § 204(a)”

¬ “The issue we must yet resolve is whether a subscriber, who "clicks yes" in

response to MRIS's electronic TOU prior to uploading copyrighted photographs,

has signed a written transfer of the exclusive rights of copyright ownership in those

photographs consistent with Section 204(a). Although the Copyright Act itself does

not contain a definition of a writing or a signature, much less address our specific

inquiry, Congress has provided clear guidance on this point elsewhere, in the E-

Sign Act.”

¬ “To invalidate copyright transfer agreements solely because they were made

electronically would thwart the clear congressional intent embodied in the E-Sign

Act. We therefore hold that an electronic agreement may effect a valid transfer of

copyright interests under Section 204 of the Copyright Act. Accordingly, we agree

with the district court that MRIS is likely to succeed against AHRN in establishing its

ownership of copyright interests in the copied photographs.”

61


Craigslist, Inc. v. 3Taps INC., 2013 U.S.Dist.

LEXIS 61837 (N.D.Cal.Apr. 30, 2013)

¬ Action for copyright infringement for scraping ads based on license.

¬ “You also expressly grant and assign to [Craigslist] all rights and causes of action

to prohibit and enforce against any unauthorized copying, performance, display,

distribution, use or exploitation of, or creation of derivative works from, any

content that you post (including but not limited to any unauthorized downloading,

extraction, harvesting, collection or aggregation of content that you post).”

¬ “Whether that clause has effect depends on whether users granted Craigslist an

exclusive license to the user-created content. "[O]nly the owner of an exclusive

right under the copyright is entitled to sue for infringement.“... A party may not

assign the right to sue for infringement without also granting an exclusive license

or ownership.”

¬ “The Court therefore concludes that the TOU, standing alone, did not grant

Craigslistan exclusive license. Without an exclusive license, Craigslist cannot sue

for infringement; the TOU provision that purportedly granted Craigslist the right to

sue is "impermissible”.”

62


Righthaven LLC v Hoehn 2013 WL 1908876

(9th.Cir.May 9, 2013)

¬ “Stephens Media and Righthaven executed a copyright assignment

agreement for each article. Each copyright assignment provided that,

“subject to [Stephens Media’s] rights of reversion,” Stephens Media granted

to Righthaven “all copyrights requisite to have Righthaven recognized as the

copyright owner of the Work for purposes of Righthaven being able to claim

ownership as well as the right to seek redress for past, present, and future

infringements of the copyright . . .in and to the Work.”

¬ “Abraham Lincoln told a story about a lawyer who tried to establish that a

calf had five legs by calling its tail a leg. But the calf had only four legs,

Lincoln observed, because calling a tail a leg does not make it so. Before us

is a case about a lawyer who tried to establish that a company owned a

copyright by drafting a contract calling the company the copyright owner,

even though the company lacked the rights associated with copyright

ownership. Heeding Lincoln’s wisdom, and the requirements of the

Copyright Act, we conclude that merely calling someone a copyright owner

does not make it so.”

63


Layette Minimome Inc c Jarrar, 2013 QCCS

6084

¬ “But the defendants rely, with reason, that the Act has no

application here because the copies were made in China, at the

request of a resident of Dubai and were sold in the UAE. As the

Supreme Court of Canada emphasized in Society of Composers,

Authors and Music Publishers of Canada c. Canadian Association

of Internet Providers, the Parliament of Canada has the power to

legislate with extraterritorial effect, but in the absence of clear

words or a necessary deduction to the contrary, it is presumed not

to have wanted to do it. Nothing here to conclude that the

legislature intended to give extraterritorial effect to the provisions

on counterfeiting and nothing in the evidence to conclude that any

element of the infringement has taken place in Canada.

¬ The Act is therefore not applicable to the circumstances of the

dispute.” (Google translate)

64


Selzer v Green Day, Inc. 725 F.3d

1170 (9th.Cir. 2013)

Seltzer sues rock band and concert effects provider, alleging that unauthorized use of his

illustration of screaming face, Scream Icon of a screaming, contorted face. in a video

backdrop of band's stage show infringed his copyright.

65


Selzer v Green Day, Inc. 725 F.3d 1170

(9th.Cir. 2013)

¬ “A leading treatise on this topic has lamented the frequent

misuse of the transformation test, complaining that it has

become a conclusory label which is “all things to all people.”

Melville B. Nimmer & David Nimmer, 4 Nimmer on Copyright

§ 13.05 [A][1][b], 13–168–70 (2011) (internal quotation

marks omitted); see also id. at 13–168–69 (listing cases

which have “erroneous[ly] with[held]” the transformative

label).

¬ The plethora of cases addressing this topic means there is

no shortage of language from other courts elucidating (or

obfuscating) the meaning of transformation.”

66


Seltzer v Green Day, Inc. 725 F.3d 1170

(9th.Cir. 2013)

¬ “Although the law in this area is splintered, as discussed above, our conclusion on

transformation is generally in line with other appellate authority on transformative use.

In the typical “non-transformative” case, the use is one which makes no alteration to

the expressive content or message of the original work.”

¬ “In contrast, an allegedly infringing work is typically viewed as transformative as long

as new expressive content or message is apparent. This is so even where—as

here—the allegedly infringing work makes few physical changes to the original or fails

to comment on the original.”

¬ “We conclude, therefore, that Green Day's use of Scream Icon was transformative.

Furthermore, although the statute instructs us to consider the “commercial nature” of

a work (and Green Day's concert was undoubtedly commercial in nature) “the degree

to which the new user exploits the copyright for commercial gain—as opposed to

incidental use as part of a commercial enterprise—affects the weight we afford

commercial nature as a factor.”… Green Day's use of Scream Icon was only

incidentally commercial; the band never used it to market the concert, CDs, or

merchandise. Under these circumstances, the first fair use factor weighs in Green

Day's favor.”

67


CARIOU v. Prince, 714 F.3d 694,

(2nd.Cir.2013)

68

Cariou sues Prince, a well-known appropriation artist based on use of photos of

Rastafarians and Jamaican landscape in paintings that were marketed and sold by

gallery and owner.



(2nd.Cir.2013)

69

¬ “Prince and Gagosian principally contend on appeal that Prince's work is

transformative and constitutes fair use of Cariou's copyrighted

photographs, and that the district court imposed an incorrect legal

standard when it concluded that, in order to qualify for a fair use

defense, Prince's work must “comment on Cariou, on Cariou's Photos,

or on aspects of popular culture closely associated with Cariou or the

Photos. We agree with Appellants that the law does not require that a

secondary use comment on the original artist or work, or popular culture,

and we conclude that twenty-five of Prince's artworks do make fair use

Cariou's copyrighted photographs. With regard to the remaining five

artworks, we remand to the district court, applying the proper standard,

to consider in the first instance whether Prince is entitled to a fair use

defense.”



(2nd.Cir.2013)

70

¬ “Here, our observation of Prince's artworks themselves convinces us of the

transformative nature of all but five, which we discuss separately below.

These twenty-five of Prince's artworks manifest an entirely different aesthetic

from Cariou's photographs. Where Cariou's serene and deliberately

composed portraits and landscape photographs depict the natural beauty of

Rastafarians and their surrounding environs, Prince's crude and jarring

works, on the other hand, are hectic and provocative. Cariou's black-and-

white photographs were printed in a 9 1/2" x 12" book. Prince has created

collages on canvas that incorporate color, feature distorted human and other

forms and settings, and measure between ten and nearly a hundred times

the size of the photographs. Prince's composition, presentation, scale, color

pal-ette, and media are fundamentally different and new compared to the

photographs, as is the expressive nature of Prince's work.”



(2nd.Cir.2013)

71

¬ “…as the Supreme Court has recognized, Congress “could

not have intended” a rule that commercial uses are

presumptively unfair. Campbell, 510 U.S. at 584, 114 S.Ct.

1164 Instead, “[t]he more transformative the new work, the

less will be the significance of other factors, like

commercialism, that may weigh against a finding of fair use.”

Id. at 579, 114 S.Ct. 1164. Alt-hough there is no question that

Prince's artworks are commercial, we do not place much

significance on that fact due to the transformative nature of

the work.”


Bouchat v. Baltimore Ravens Ltd. (4th. Cir.

Dec. 17, 2013)

¬ Flying B Logo

72



Dec. 17, 2013)

¬ “The NFL wishes to create narratives about various aspects of its history,

including some that transpired between 1996 and 1998, when the Flying B

logo represented the Ravens. These videos have told new stories and

feature all of the hallmarks of documentary films. They also, of course,

contain fleeting, insubstantial images of the Flying B logo. But just as it would

have been a terrible shame to prevent Edward Hopper from painting the

"Esso" sign in his masterful Portrait of Orleans, so too would it be a mistake

to prevent the NFL from using the Flying B logo to create new protected

works. See E.S.S. Entm't 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d

1095, 1100 (9th Cir. 2008) (noting that under trademark law, the First

Amendment protects those uses that have artistic relevance). The NFL may

not arouse sympathies in the way that a revered artist does, but the

consequences of this case reach far beyond its facts. Society's interest in

ensuring the creation of transformative works incidentally utilizing

copyrighted material is legitimate no matter who the defendant may be.”

73



Dec. 17, 2013)

“Were we to require those wishing to produce films and documentaries to

receive permission from copyright holders for fleeting factual uses of their works,

we would allow those copyright holders to exert enormous influence over new

depictions of historical subjects and events. Such a rule would encourage

bargaining over the depiction of history by granting copyright holders substantial

leverage over select historical facts. It would force those wishing to create

videos and documentaries to receive approval and endorsement from their

subjects, who could "simply choose to prohibit unflattering or disfavored

depictions." See IDA Brief at 5. Social commentary as well as historical narrative

could be affected if, for example, companies facing unwelcome inquiries could

ban all depiction of their logos. This would align incentives in exactly the wrong

manner, diminishing accuracy and increasing transaction costs, all the while

discouraging the creation of new expressive works. This regime, the logical

outgrowth of Bouchat's fair use position, would chill the very artistic creation that

copyright law attempts to nurture. “

74


The Authors Guild, Inc. v Google Inc. 2013

WL 6017130 (S.D.N.Y. Nov.14, 2013)

¬ “In my view, Google Books provides significant public benefits. It

advances the progress of the arts and sciences, while maintaining

respectful consideration for the rights of authors and other creative

individuals, and without adversely impacting the rights of copyright

holders. It has become an invaluable research tool that permits

students, teachers, librarians, and others to more efficiently identify

and locate books. It has given scholars the ability, for the first time, to

conduct full-text searches of tens of millions of books. It preserves

books, in particular out-of-print and old books that have been

forgotten in the bowels of libraries, and it gives them new life. It

facilitates access to books for print-disabled and remote or

underserved populations. It generates new audiences and creates

new sources of income for authors and publishers. Indeed, all society

benefits.”

75


The Authors Guild, Inc. v Google Inc. 2013

WL 6017130 (S.D.N.Y. Nov.14, 2013)

¬ What is a “fair” treatment of books and other works created in an analog

age? Should their authors have a right to negotiate the details of their digital

exploitation in a developing online technological marketplace?

¬ Should the transformative nature of digital technologies allow their makers to

use fair use to trump exclusive rights?

¬ In a rapidly evolving technological age, what counts as a truly

‘transformative’ and should new uses of works for commercial purposes be

viewed as tending to be fair or unfair?

¬ Is it fair that online service providers should be able to reap all of the

commercial benefits of new uses of works without paying for such uses?

¬ Should the courts or Congress make policy choices to address copyright

issues presented by technological developments?

¬ See, The Google Book project: is it fair use?

http://www.barrysookman.com/2014/01/05/the-google-book-project-is-it-fair-

use/

76


American Institute of Physics v. Schwegman

Lundberg & Woessner, PA 2013 WL 4666330

(D.Minn., 2013)

“Having weighed all these factors, this Court concludes that Schwegman is

entitled to the fair use defense as a matter of law. The record demonstrates

no genuine dispute that Schwegman's use of the Articles was new and

different than and did not merely supersede the original purpose of the

Articles. Also, the undisputed facts demonstrate that the nature of the

Articles is predominantly informational. Further, although Schwegman did

make complete copies of the Articles in its patent prosecution practice, the

only reasonable inference to draw from the record is that Schwegman's

copying of the Articles was consistent with the new and different purpose

and character of Schwegman's use. And there is no evidence to suggest

that Schwegman's copying impacted a traditional, reasonable, or likely to be

developed market for the Articles. Thus, all four fair use factors weigh in

favor of finding that Schwegman's use in this matter is fair as a matter of

law.”

77


The Associated Press v. Meltwater U.S.

Holdings, Inc (S.D.N.Y, March 21, 2013)

¬ “Examining the four factors individually, and considering them as a whole in light of

the purposes of the Copyright Act and the fair use defense, Meltwater has failed to

raise a material question of fact to support its fair use defense. Meltwater's

business model relies on the systematic copying of protected expression and the

sale of collections of those copies in reports that compete directly with the copyright

owner and that owner's licensees and that deprive that owner of a stream of income

to which it is entitled. Meltwater's News Reports gather and deliver news coverage

to its subscribers. It is a classic news clipping service. This is not a transformative

use…

¬ Meltwater has attempted to escape the straight forward application of the four-part

fair use test by characterizing itself as a search engine. Meltwater has failed to

show, however, that its interactions with its subscribers are equivalent in any

material way to the functioning of search engines, as that term is commonly

understood. Exploitation of search engine technology to gather content does not

answer the question of whether the business itself functions as a search engine. In

any event, however Meltwater's business is classified, it must still show that its use

of copyrighted expressive content was a fair use. This it has not done.”

78


Diversey v Schmidly, No. 13-2058

(10th Dec. 23 Cir.2013)

¬ Was the distribution right implicated when a University library listed a work in

its library catalog for public lending?

¬ “As Diversey points out, § 106(3) explicitly protects the copyright owner's

exclusive right to distribute copies by lending. See Hotaling, 118 F.3d at 203

("When a public library adds a work to its collection, lists the work in its index

or catalog system, and makes the work available to the borrowing or

browsing public, it has completed all the steps necessary for distribution to

the public.")…

¬ This is the essence of a violation of the copyright owner's exclusive right to

distribute his work via lending…. Peter S. Menell, In Search of Copyright's

Lost Ark: Interpreting the Right to Distribute in the Internet Age, 59 J.

Copyright Soc'y U.S.A. 1, 52-66 (2011) (analyzing the legislative history

regarding the distribution right and concluding the requirement of actual

distribution of an unauthorized copy is unwarranted).”

79


Columbia Pictures Industries, Inc. v. Fung,

710 F.3d 1020 (9th. Cir. 2013)

¬ “Various film studios alleged that the services offered and websites maintained

by Appellants Gary Fung and his company, isoHunt Web Technologies, Inc.

(isohunt.com, torrentbox.com, podtropolis.com, and ed2k-it.com, collectively

referred to in this opinion as "Fung" or the "Fung sites") induced third parties to

download infringing copies of the studios' copyrighted works. The district court

agreed, holding that the undisputed facts establish that Fung is liable for

contributory copyright infringement. The district court also held as a matter of law

that Fung is not entitled to protection from damages liability under any of the

"safe harbor" provisions of the Digital Millennium Copyright Act ("DMCA”)…By

separate order, the district court permanently enjoined Fung from engaging in a

number of activities that ostensibly facilitate the infringement of Plaintiffs' works.

¬ Fung contests the copyright violation determination as well as the determination

of his ineligibility for safe harbor protection under the DMCA. He also argues that

the injunction is punitive and unduly vague, violates his rights to free speech, and

exceeds the district court's jurisdiction by requiring filtering of communications

occurring outside of the United States. We affirm on the liability issues but

reverse in part with regard to the injunctive relief granted.”

80


Disney Enterprises, Inc. v. Hotfile Corp.

2013 WL 6336286 (S.D.Fla.,2013)

¬ “The analysis here, based on precedent, is straightforward. Hotfile controls

the means of infringement by among other things mandating user

registration and hosting the infringing materials on its own servers..

Moreover, Hotfile has a stated policy that permits it to control user activity

(and, as in Fonovisa, to exclude users) and maintains that it has exercised

that control in policing content. Hotfile has also adopted technology that it

claims is effective in filtering and targeting infringing works. These actions,

which benefit Hotfile in an assessment of direct liability, belie Hotfile's

argument that it lacks control because it has no search function and no way

to identify or remove infringing files. It is also clear that prior to the filing of

the Complaint, Hotfile failed to properly exercise its control in light of the

number of users who were blatantly infringing and the estimates of the

Studios' experts regarding the prevalence of protected content available for

download. Accordingly, on this record, the Studios have made a case for

vicarious liability, and summary judgment is entered in their favor.”

81


Pearson Education, Inc. v. Ishayev, No. 11

Civ. 5052 (PAE), (S.D.N.Y.2013)

¬ “As a matter of law, sending an email containing a hyperlink to a site facilitating

the sale of a copyrighted work does not itself constitute copyright infringement. A

hyperlink (or HTML instructions directing an internet user to a particular website)

is the digital equivalent of giving the recipient driving directions to another

website on the Internet. A hyperlink does not itself contain any substantive

content; in that important sense, a hyperlink differs from a zip file. Because

hyperlinks do not themselves contain the copyrighted or protected derivative

works, forwarding them does not infringe on any of a copyright owner's five

exclusive rights under § 106.”

¬ “To be sure, if Ishayev had himself uploaded the electronic copies of the manual

onto the filesonic.com website, he would then be liable for copyright

infringement, assuming plaintiffs had met their burden in showing that more than

a de minimis amount of copyrighted material was present in the instructors'

manuals.”

¬ “To be sure, "[a]lthough hyperlinking per se does not constitute direct copyright

infringement because there is no copying . . . in some instances there may be a

tenable claim of contributory infringement or vicarious liability.”

82


Football Dataco Ltd & Ors v Stan James Plc &

Ors [2013] EWCA Civ 27 (06 February 2013) ¬ Is the operator of a website that offers a pop-up box that links to another site and which,

when accessed by a user, will inevitably result in infringement, liable for primary infringement

as a joint tort-feasor?

¬ “What is at issue is whether Stan James is a joint-tortfeasor with the UK punters who avail

themselves of the pop-up Live Scores on Stan James' website.

¬ What does follow from the fact that Stan James and Sportradar act together is that Stan

James' pop-up Live Scores should be treated just as if it were Stan James' own link.

¬ So the question boils down to this: if A has a website containing infringing material which will

inevitably be copied into the computer of B if he enters that website, is A a joint tortfeasor

with B? I am conscious that this question is important. The answer would seem to apply

equally to copyright as to database rights. If the answer is yes, then the owner of any website

anywhere in the world will be a joint tortfeasor with a UK user of that website if the inevitable

consequence of access to that site by the user is infringement by that user.

¬ I would hold the answer to be yes. The provider of such a website is causing each and every

UK user who accesses his site to infringe. His very purpose in providing the website is to

cause or procure acts which will amount in law to infringement by any UK user of it. The case

is not one of a mere facilitator, such as eBay or Amstrad where the choice to infringe or not

ultimately lay with the consumer. Here Stan James is in reality responsible for the punter's

infringement.”

83


Public Relations Consultants Association Ltd v The Newspaper

Licensing Agency Ltd & Ors [2013] UKSC 18 (17 April 2013)

84

¬ UK Supreme Court ruled that the exception permitting temporary

copying as part of a technical processes in section 28A of the

Copyright, Designs and Patents Act 1988, permitted copying in a

web browser.

¬ “...it has never been an infringement, in either English or EU law,

for a person merely to view or read an infringing article in physical

form...All that article 5.1 of the Directive achieves is to treat the

viewing of copyright material on the internet in the same way as its

viewing in physical form, notwithstanding that the technical

processes involved incidentally include the making of temporary

copies within the electronic equipment employed...


American Broadcasting Companies, Inc. v

Aereo, Inc. US.Sup.Ct. Docket for 13-461

85


Inhale, Inc. v Starbuzz Tobacco, Inc.,

Case: 12-56331 (9th.Cir. Jan 9, 2014)

86

Copyright in a “hookah” (a device for smoking tobacco)?


Slides available @ barrysookman.com and mccarthy.ca

• Underlines in quotes may reflect emphasis added.

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