Part of a work: reproduction of “any substantial part” of the work?

• 
  More to the quality than the quantity of what is taken. (Cinar Corporation v. Robinson, 2013 SCC 73)
  

• 
  Holistic analysis should be done to determine the breadth and scope of copyright infringement (Cinar Corporation v Robinson)
  
• 
  Literal copying may prove infringement without source (Cinar Corporation v Robinson)
  
• 
  Technological concerns may come into play to determine whether or not something was easy to steal (Cinar v Robinson)
  
• 
  Making a 3D object that is depicted in a 2d drawing amounts to copyright infringement (Bayliner Corporation v Dorval Boats Ltd)
  
• 
  It does not matter if the intermediate copy (3d object) is unprotected (Bayliner v Dorval)
  
• 
  If a 2d drawing does not depict the 3d object but still provides the directions to produce it, copying it will still be infringing (Bayliner v Dorval)
  
• 
  The circuitry in a silicon trip can be both a translation and an exact reproduction of the assembly language program encoded on it (Apple Computer v Mackintosh Computer)
  
  • 
    Reproductions need not be in a human readable form to be protected
    
• 
  Re-fixation of a work does not constitute reproduction (Theberge v Galerie D’art)
  
  • 
    No reproduction if the same number of copies exist before and after change
    

1) Did the infringer have access to the source material? (Yes – Infringe)

2) If not, did they have access to an intermediate source based on the original source? (Yes – Infringe)

3) Is it protected by another legislative entity? (Boat schematic covered by Industrial Design Act)

• 
  No (Crookes v Newton 2011 SCC 47, [2011] 3 SCR 269 (p. 150))
  

Similar but different to performance rights, pseudo re-performance right

• 
  Other actors, musicians and anybody from performing the work in public without the owner’s consent.
  
  • 
    Anyone from switching the radio or TV set in public
    
  • 
    Broadcasters and cable casters from performing with a studio audience present
    

• 
  Performance in a private home where the performance is given, heard or seen by only members of the immediate household, not performance in public
  
• 
  Even if the same private performance occurs in thousands of homes – still not a performance in public
  

• 
  “Telecommunication” defined in s 2
  

• 
  The fax transmission of a single copy to a single individual is not a communication to the public
  
• 
  A series of repeated fax transmissions of the same work to numerous different recipients might constitute communication to the public
  

• 
  A telecommunication occurs when the content is transmitted from the host server to the end server.
  
• 
  Participants in a telecommunication who only provide the “means of telecommunication necessary” are deemed not to be communicators (s. 2.4(1)(b) CA)
  
• 
  Communication on the internet occurs in Canada where it originates here or is received here.
  
  • 
    Logistical issues arise if both users aren’t considered. Any thing originating extra-territorially might not be subject to communication classification, doesn’t make any sense
    
• 
  Content provider, the host server, the intermediaries and the end user can be communicators, if there is real and substantial connection on the facts of a particular transmission.
  
• 
  Should an ISP alter or modify the content being sent, it could be classified as a communicator. If the ISP actively makes the information available, may be less than a neutral conduit, perhaps a communicator
  

• 
  Downloading is reproduction, not communication, therefore covered under old tariff system.
  
• 
  The principle of technological neutrality reflected in s. 3(1) of the Act, ….“in any material form whatever.” – It’s obviously the same entity
  
  • 
    Differentiating between physical/digital violates this principle, no discrimination between methods of delivery
    
• 
  Consistent with Robertson? (Compilation of newspaper in an electronic database is a reproduction of the authors work?)
  
  • 
    Work was stripped from original context and moved into database, completely different set of facts
    
  • 
    Reproduction on CD would essentially be the same
    

• 
  Rogers’ view is untenable. Sending to 100 individuals or 1 block of 100 leads to the same result. Would be out of step with CCH to not take a more holistic approach.
  
• 
  -> Subscriber downloads of ringtones from mobile phone companies are communications to the public under s 3(1)(f ).
  

• 
  Granting, or purporting to grant authority for the commission of acts under s.3(1)
  

Gives them the ability to authorize certain acts that would otherwise breach their Copyrights

Helping others to infringe can be seen as authorizing by the original breaching party
CCH Canadian ltd v Law Society Upper Canada

• 
  Did the library authorize infringement by placing a self-serve photo-copier?
  
  • 
    Countenance means to give approval to, sanction, permit, favour, encourage
    
    • 
      Implicit authorization of infringement can come from failing to take action or omission where proven on facts
      
    • 
      Rebuttable presumption in place that people are using technology lawfully
      
  • 
    Can mere placing a self-serve photo-copying can be considering authorizing?
    

• 
  An intermediaries are content neutral unless they sanction, approve or countenance more than allowing the mere use of equipment that may be used for infringement
  
• 
  An ISP is entitled to presume that its facilities will be used in accordance with law
  
• 
  EU, US: ISPs required to take down copyright
  
• 
  Canada: s. 41.26 (1) forward notice, keep records
  
  • 
    No obligation to take down websites, but must do everything else reasonable
    

BMG Canada Inc v John Doe: Should ISP disclose addresses of customers alleged to have been infringing copyright? Under certain circumstances yes

• 
  27 (2.3): It is an infringement of copyright for a person, by means of the Internet or another digital network, to provide a service primarily for the purpose of enabling acts of copyright infringement if an actual infringement of copyright occurs by means of the Internet or another digital network as a result of the use of that service.
  

• 
  MGM Studios, Inc. v. Grokster, Ltd. manufacuting and marketing of P2P file sharing software, primarily used to infringe copyright constitutes “authorizing”
  
• 
  Voltage Pictures LLC v John Doe and Jane Doe (February 20, 2014)
  
  • 
    TekSavvy should disclose the identities of roughly 2,000 subscribers alleged to have downloaded movies without authorization.
    
    • 
      balancing of personal privacy interests and the public interest in Copyright
      

• 
  “to do … anything … only the owner of the copyright has the right to do” s.27 cum s.3 (1)
  
• 
  s. 27(2) – Secondary infringement
  
  • 
    See Milliken & Co v Interface Flooring Systems Inc
    
    • 
      Did the defendant have knowledge that its carpet tile infringed the plaintiff’s copyright?
      
  • 
    CCH Canadian
    
    • 
      Did the Law Society infringe copyright by selling Copies?
      
      • 
        See tests. Para. 81
        
  • 
    Euro-Excellence Inc Vs Kraft Canada
    
    • 
      Can copyright over design trademark be used to restrict importation of under s. 27 (2)?
      
    • 
      Use of secondary infringement to try and regulate trade
      
      • 
        Bastarache: no copyright infringement under 27 (2). On what ground?
        
      • 
        Rothstein: Would Impugned works have infringed copyright if they had been made in Canada?
        
      • 
        Fish: ?
        
      • 
        Dissent: Kraft Canada can prevent Euro Excellence under s. 27 (2).
        
• 
  27 (3) – Infringement via the Internet or another digital network
  
• 
  s. 27.1 – Infringement through parallel importation of books
  
  • 
    Prevents unlawful importing and selling of lawfully produced items
    

Secondary infringement requires proof of primary infringement and the knowledge of the primary infringement by the secondary infringer

Authorization is allowing someone to do what only the copyright holder is allowed to do.
Digital Locks –

Parallel important only counts for books in Canada, using US Netflix in Canada doesn’t violate copyright

s.41 Technological Protection Measures
Tests

• 
  substantially similar works?
  
  • 
    Qualitative and quantitative standard
    
• 
  Is the copyrighted work the source?
  
  • 
    Proof of copying
    
  • 
    Inferred from access
    
• 
  Proof of independent creation rebuts inference of copying
  
• 
  Question of Fact
  

must intrude on the substance of the work. Quantity of whats taken doesn’t always give proof towards whether infringement occurred.

Is the copyrighted work the source for this work?

Can you infer that the author of the second work had access to the original work?

Inference of copying can be rebutted by defendant, based on evidence.

If you cannot establish a connection, look into substantiality. Judgement of facts

Experts can be brought forward to establish the possibility of the connection.
Substantiality – Qualitative / Quantitative factors taken into account from facts.

Changes in sentence structure, phrasing, words etc, might not qualify as significant enough changes. The form may still be underlying.

• 
  Canadian approach: Delrina Corp. v. Triolet Systems Inc. (ON CA)
  
  • 
    Weed out from copyright protection those portions which cannot be protected by copyright (Abstraction)
    
    • 
      Non-copyrightable code must be distinguished from essential code
      
  • 
    determine if there is substantial copying (Comparison)
    
    • 
      Could be abated by essential need of the program in its basic operation
      
  • 
    Disregard copied elements of the work that either have no originality, are dictated by functional considerations or are otherwise mere ideas (filtration)
    
• 
  US approach: Computer Associates International Inc. v. Altai, Inc. (2d Cir. June 22, 1992)
  
  • 
    Abstraction–Filtration–Comparison Test
    

Importation of copyright protected chocolate would infringe copyright of design.

Holding: Kraft Canada cannot prevent EE from importing.

Bastarache: When copyright protected work is an incidental or incident to the good imported, they can only control copyright over the incidental copyrighted work.

Rothstein: Only an exclusive license is not equal to having property rights/ownership. Different than non exclusive license, different than assignee.

Exclusive license holder cannot prevent sale of goods.

Abella (Dissent): Distinction between incidental and non-incidental is artificial, not appropriate. Disagreed with difference between license and non license owner. Can be used as trade control.
Infringement in Music

• 
  Did the author know about the primary work?
  
• 
  Is it so substantial as to cause confusion for consumers?
  
• 
  Does it prevent the primary copyright owners ability to enjoy their own work now or in the future, affect their economic interests.
  
• 
  What does an expert think?
  

1. Copyright doesn’t subsist in the work

2. Has expired

3. P is not owner

4. No infringing act: user’s right

Or,

6. Private copying regime

7. Private use

8. Common carrier exception

9. Fair dealing (User’s Rights)

There is a difference between user’s rights and exceptions to owners rights.

User’s rights are interpreted as equal to Owners rights.

Interpreted in context, purposively in the copyright act

Exception to owners rights are interpreted narrowly.
Miscellaneous Exceptions

• 
  1. s. 29.4 – 30: Educational institutions
  
• 
  2. s. 32: Perceptual Disability
  
• 
  3. Specific situations/ certain types of works
  
  • 
    Statutory authorizations: s. 32.1
    
  • 
    Importation of books: s. 45
    
  • 
    Incidental inclusions: s. 30.7 (Advertisement in background, accidentally capture something) Hard to tell if intentional)
    
  • 
    Computer programs: 30.61 (Allowed to have backup copies)
    
  • 
    news reporting or news summary of public lectures and political speeches: s.32.2. (c)
    
  • 
    Recitations in public: 32 .2 (d)
    
• 
  4. Libraries, archives and museums (S. 30.1, 30. 2 & 30.21)
  
• 
  5. Libraries, archives and museums in educational institutions (s. 30.4)
  
• 
  6. Using Machines Installed in Educational Institutions, Libraries, Archives and Museums (s. 30.3)
  
• 
  7. Library and Archives of Canada (s. 30.5)
  

If you copy using a recording medium, you are not infringing copyright.

Taxes are levied against storing mediums.

What is a recording medium? Blank casettes/dvds are obvious, what about an MP3 Player?

• 
  Whether an MP3 player is a recording medium for the purpose of levy under the copyright.
  
• 
  “recording medium, regardless of its material form” s. 79 of the CA?
  
  • 
    “Ordinarily used” – Is it seen by the ORP/Populace as a recording device?
    
    • 
      “technologically neutral” (Whatever it is, must be used for recording)
      
    • 
      Ordinary usage of the product (For recording), not use of the product generally
      
  • 
    Audio recording medium”:
    
    • 
      Copying is not covered by the exception and is an infringement of copyright is a medium does not qualify as an “audio recording medium”
      
    • 
      Tapes and recordable CDs qualify
      
    • 
      IPods, MP3 players and removable memory storage cards (digital audio recorders) do not qualify
      

• 
  29.22 (1) 
  
  • 
    “It is not an infringement of copyright for an individual to reproduce a work or other subject-matter or any substantial part of a work or other subject-matter if you have started with a non-infringing copy and have been authorized to use the medium on which it is reproduced.”
    
    • 
      Non Commercial Use
      
    • 
      The source is mentioned
      
    • 
      Believe you are not infringing copyright
      
    • 
      No substantial effect on the market or interests of the copyright owner
      
  • 
    Putting it on the internet may be infringing but downloading it might not be if it is your own private copy. Downloading someone else’s legal copy is not allowed.
    
• 
  Downloading over the internet. S. 29.22. (2)
  
• 
  Time-shifting. s. 29.23 (Recording it for later viewing)
  
• 
  Non-commercial User-generated Content s. 29.23:
  
  • 
    “It is not an infringement of copyright for an individual to use an existing work or other subject-matter or copy of one, which has been published or otherwise made available to the public, in the creation of a new work or other subject-matter in which copyright subsists and for the individual — or, with the individual’s authorization, a member of their household — to use the new work or other subject-matter or to authorize an intermediary to disseminate it, if …”
    
    • 
      Youtube videos, cover songs, video mashups, remixes
      

• 
  2.4 (1) For the purposes of communication to the public by telecommunication,
  
  • 
    (b) a person whose only act in respect of the communication of a work or other subject-matter to the public 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
    
  • 
    Internet cache copy.
    
    • 
      Providing the cached copy is a copy, could be seen as infringing in principle.
      
    • 
      Necessary under s. 2 (4) (1) (b) if the means are reasonably useful and proper to achieve the benefits of enhanced economy and efficiency. It meets the test of necessity.
      

• 
  Purpose must fall under the headings of one of the recognized goals: research, private study, education, parody or satire, criticism, review, and news reporting
  
• 
  Criticism, review, and news reporting, source: and the name of the author be mentioned
  
• 
  Dealing must be “fair”
  

• 
  Fair dealing is a users’ right, not just a defense – exists outside of LAMEI exceptions – you can assert your right to fair dealing.
  
• 
  Question of fact: not of law or mixed law and fact
  
• 
  Purpose: Exhaustive, interpreted broadly
  
  • 
    “Research purpose”: The way in which someone uses the material may deny them protection
    
  • 
    Considerations
    
    • 
      Character of the dealing – Examines how works were dealt with, look up custom or practice in a particular industry, general handling of the material.
      
      • 
        Always dealt with individually, single copies. Does it amount to disseminating it to the public? How fairly is the work being treated.
        
    • 
      Amount of the dealing – Amount is not entirely based on quantity, how much of the copyrighted work is being taken?
      
    • 
      Alternatives to the dealing – Could they have received it in another way? Is it normal that each person would seek the information this way?
      
    • 
      Nature of the work – Is it a private work? Is it a commercial item? How long has it been exploited for?
      
    • 
      Effect of the dealing on the work – Is the market negatively affected? Does it render substantial economic hardship on the copyright owner. Does the new work even compete with the copied work?
      

It must first fit into purpose, once it does, you consider the additional factors.

• 
  Song previews can be considered as research: also help to better the public interest and uphold the bargain aspect of copyright between users and owners (SOCAN v Bell Canada)
  
• 
  Copies provided to students for private readings are made on behalf of the students must be examined from the POV of the students (Alberta (Education) vs Access Copyright)
  

Research and study for a non-commercial purpose only

Canada: Commercial purpose is allowed.

Market impact determines fairness (based on loss of profit, loss of competition)

Canada: Multiple determining factors.
Fair Use in the US

• 
  S. 107 Copyright Act
  
• 
  Open-ended (Not related to specific purposes like in Canada)
  
• 
  Factors to consider
  
  • 
    Purpose and character of use
    
  • 
    Nature of copyrighted work
    
  • 
    Amount and substantiality of portion
    
  • 
    Effect of use upon potential market or value
    

No express appreciation for users rights. Factors based on CCH.

Variety of uses accommodated in fair use and not necessarily in fair dealing

• 
  Eg. appropriation art (might be considered a parody/satire after 2012)
  
• 
  Reverse engineering - circumventing DRMs (Circumventing in Canada is illegal)
  

• 
  Imitates the characteristic style of an author or a work for comic effect or ridicule
  
• 
  Campbell v. Acuff-Rose Music
  

Parody distinguished from satire. How?

Satire: The original work is used to criticize something else. Satire requires more justification.
Moral Rights

The relationship of an author or creator with his or her work

Author’s work as an extension of the author’s person

Any assault on the work may be construed as an attack against the author

Can’t be assigned

Can be inherited

Can be waived

Owned by author only

Want to avoid damages to reputation when certain actions might be construed as endorsing.

Either want to get credit or remain completely anonymous.

modification should be prejudicial to the author’s honour or reputation

Determined on subjective/objective tests

2. 
   (2): Deeming provision:(paintings, sculptures, and engravings
   
   1. 
      Every modification is deemed prejudicial
      
   2. 
      Subject to 28.2 (3) (a) & (b) – Good faith or change in medium doesn’t constitute prejudice.
      

28.2.1  creates a rebuttable presumption of prejudice against moral rights. Defendant can use subjective/objective test to rebut presumption.

• 
  ISPs may be compelled to divulge identities of file sharers under certain conditions: BMG (2005), Voltage Pictures v. Does(2014)
  
  • 
    Normally ISPs are covered by common carrier (conduit) exception, but authorization may allow it.
    
  • 
    Hard to balance property rights of copyright owners against privacy concerns.
    
    • 
      Person asking for divulging of details would have to show a prima facie case.
      
• 
  Is downloading work from a P2P program/network infringing?
  
  • 
    Every download is a reproduction technically. Depending on defenses, it may or may not be infringing (reproducing for private use is legal, but only if download is not of an infringing copy)
    
  • 
    Private copying regime (s. 80): are computer hard drives may not qualify as “audio recording medium”?
    
    • 
      Downloading to computer, is the computer a recording medium?
      
      • 
        Ipods etc don’t count, therefore computers might not apply as well.
        
      • 
        Private copying regime only applies to music, what about books, movies?
        
        • 
          Activity may or may not be infringing based on work/conditions
          
  • 
    Private Use: (s. 29.22) conditions 1 (a)-(e)
    
• 
  Is it legal to upload work via a P2P program/network?
  
  • 
    Does putting the file in a shared directory constitute communicating the work under s. 3 (1) (f)?
    
    • 
      Offering members of the public the opportunity to download ringtones communicates the musical works in the ringtones to the public within the ambit of s 3(1)(f). (Canadian Wireless Telecommunications Assn. v. Society of Composers, Authors and Music Publishers of Canada, 2008 FCA 6,)
      
    • 
      Transmission of any file from the online service’s website to the customer’s computer constitutes communicating under s. 3 (1) (f) (Rogers Communications Inc v Society of Composers, Authors and Music Publishers of Canada 2012 SCC 35)
      
      • 
        Might be held to be communication: When would they be considered to be communicating the work to the public?
        
        • 
          What does communicating mean, what does “to the public” mean
          
• 
  Do P2P programs/networks authorize infringement?
  
  • 
    Are they authorizing infringement? Not yet addressed in Canada
    
    • 
      May argue based on CCH – Operating a p2p network may be seen as implicit authorization.
      
      • 
        BMG (2004)Federal Court: I cannot see a real difference between a library that places a photocopy machine in a room full of copyrighted material and a computer user that places a personal copy on a shared directory linked to a P2P service.
        
      • 
        BMG FCA: “at the early stages of this case, it is premature to reach any conclusion as to the applicability of the CCH case. …whether the users’ act of copying the Songs onto their shared directory could constitute authorization because it invited and permitted other persons with Internet access to have the musical works communicated to them and be copied by them.
        
• 
  US: MGM v. Grokster, 545 U.S. 913 (2005):
  
  • 
    “one who distributes a device with the object of promoting its use to infringe copyright … is liable for the resulting acts of infringement by third parties”
    
    • 
      P2P people might be held to be infringers as the primary use is to infringe copyright.
      

Prevents of manufacturors and consumers in the market. Aspects of passing off are codified in the Trademark Act.

• 
  Company B represents its products as being those of Company A to take advantage of Company A’s goodwill and reputation
  
• 
  Goods of Company B given to a consumer who ordered the goods of Company A, but the consumer believes she received Company A’s goods as ordered.
  
• 
  Company B misrepresents Company A’s goods as being Company B’s? Perhaps sell a lower class good at a higher price due to their good reputation.
  

• 
  Three necessary components :Ciba-Geigy Canada Ltd v Apotex Inc [1992] 3 SCR 120
  
  1. 
     Must be reputation or goodwill by the plaintiff that is capable of being utilized
     
  2. 
     Deception of the public due to a misrepresentation
     
     • 
       Must be proof of misrepresentation and deception resulting therein
       
  3. 
     Actual or potential damage to the plaintiff
     

• 
  Symbol or feature be used and gain reputation in passing off; “use” suffices in trade-marks
  
  • 
    Simple use is all that is required in TM, must be gain of reputation in passing off
    
• 
  Passing-off accords local protection while registered trademark offers protection nation-wide\
  
  • 
    Only protects where the mark is known, TM is under federal statute.
    
  • 
    Local competitors are thought to be more likely to pass off.
    
• 
  Use of the same mark or confusingly similar trade-marks is prohibited while confusion or misrepresentation does not suffice in passing off
  
  • 
    Passing off additionally requires damage/reputation and deception.
    
• 
  Passing off codified in s. 7(b) and (c) of TMA
  
  • 
    As long as the basis of passing off arises from the use of “marks” as TM, passing off claim may be pursued under TMA.
    
    • 
      See Discussion in Nissan Canada vs. BMW Canada
      
      • 
        If the mark was sufficiently associated with the ware or service at the time of transfer of the property to purchasers in a normal course of trade: marked on the wares, or on the packages or notice of association is given at the time of transfer. S. 4
        
  • 
    Passing off occurs through more ways than just through the use of the mark. Distinguishing guise (may be no marks due to no trademark act and no registration)
    
  • 
    Use of mark in advertising, under section 4 it doesn’t count as using of mark under a trademark, passing off might work even though you are not entitled to passing off under the TMA.
    
• 
  Passing off preferred where registration is invalid, or mark is unregistrable.
  
• 
  Passing off broader, more instantly adaptable
  
  • 
    More adaptable to technological innovations, can protect non profit and public activities. Trademark act applies to commercial operators through regulation of trade power federally.
    
  • 
    Internet protection – misleadingly similar websites (bcaa case) – use of meta tags to divert traffic might be covered by passing off
    

• 
  Trademarks?
  
  • 
    Parliament: “Regulation of Trade and Commerce” ss. 91 (2) [Federal]
    
• 
  C/L tort of passing off, misappropriation of personality?
  
  • 
    Provinces: 92 (13) “Property and Civil Rights in the Province”
    
  • 
    92 (16) Matters of primarily a local nature
    
  • 
    Provincial courts have some jurisdiction over interpretation of federal statutes (BCSC)
    
  • 
    Kirkbi AG v Ritvik Holdings Inc: s. 7(b) of TMA is sufficiently integrated into the federal trade-mark scheme, and hence, constitutional
    
    • 
      As long as passing off is regulating marks (not trade marks) it is sufficiently related to federal trade. Ok for parliament to regulate it.
      
• 
  s. 57(1) TMA: Federal Court has exclusive jurisdiction re-entry of the register of trade-marks made, expunged, varied or rectified
  

BCCA – Power to declare trademark invalid is not enumerated in 57(1) under federal powers.

Expunging that comes after would go from provincial to federal.
Justification for Trademark Protection
Vaver: Trademark is not a reward for creativity, not purely intellectual, no real product or innovation. Copyright is the product of the mind being rewarded, patent rewards innovation.

Justification must be different from Copyright/Patent due to lack of mental process.

1. 
   Economic efficiency in consumer search cost
   

• 
  Less transactional costs, no one needed to fact check.
  
• 
  Primary justification is not about proprietary interests. Not fully concerned with exploitation of the resulting good as it is not a mental product.
  

2. 
   Protecting TM owners proprietary interests
   

• 
  Protecting the hard work of the owner who establishes a good reputation.
  
• 
  Gain a proprietary interest once you have established a good reputation, probably not there when you begin.
  

Can be protected as a trademark, in common law, through provincial privacy acts.