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- Contention: Maj
- Kenrick Co v Lawrence Co; Baker Seldon; Delrina Corp v Triolet systems
Majority: Higher life forms cannot be patented. Court used rules of statutory interpretation to limit their own role and give jurisdiction to parliament to determine what is and what isn’t patentable. No possible way to fit higher lifeforms under anything other than manufacture or composition of matter, and based on case law and past interpretation, impossible to fit it under these categories. Parliaments exhaustive construction within the patentable subjects strips the court of jurisdiction Minority: “Common sense distinction” is arbitrary, no difference between lower and higher. Has been patented in multiple other developed countries. Harvard wasn’t claiming patent for the “composition of matter +” just the matter they manipulated. “Degree of complexity” is not in the Patent Act. No distinction is ever made between sentient/non-sentient/higher/lower in law. No morality requirement to consider “playing god” only must examine aspects of patent. Manipulation of even a single gene can make irreparable changes, becomes essential to the make up of the mouse
There is no discretion within the patent act. The courts are not given moral authority, nor are the Patent Offices, to determine what is acceptable. Patent applications are questions of law. If you meet the statutory obligations imposed on you, you are granted a patent flat out. Contention: Maj: HLF’s not considered, no jurisdiction – Min: “Invention broad”, allows jurisdiction Human Patenting Should be avoided at all costs due to commodification and objectification of humans. Would relegate us down to simply our genetic information. Economic exploitation is to be avoided, designer human beings are awesome but probably best avoided. Charter issues would abound as it pertains to ownership over humans or their genetic information. Xenotransplantation – Animals and humans sharing DNA/Body Parts. Where does one begin/end Doctrine of Sound Prediction Apotex Inc v Wellcome Foundation ltd Facts: Apotex is attempting to invalidate the patent of Wellcome claiming they not only did not invent anything, but that there was no basis for Wellcome to have made a “sound prediction” about the treatment benefits that AZT would have for combating AIDS. While Wellcome did not invent AZT, they understood that it could help to sever the chain that allows AIDS to propagate. Early testing proved that AZT was effective in treatment of HIV in rat cells in a petri dish, and even though the team wasn’t sure if it would work on humans, they teamed up with the public NIH who had been able to cultivate a human cell line invitro for testing. They applied for the patent after the testing proved successful. Issue: Are the facts enough to give credit to sound prediction? Or was more testing needed before a sound prediction could be made? When does utility need to be demonstrated and to what extent? Ratio: While a lucky guess is not patentable, sound predictions based on sound lines of reasoning stemming from facts and experimentation are. Analysis: By having a factual basis for the prediction, having a sound line of reasoning at time of patent application and giving full disclosure, Wellcome satisfied the requirements for sound predictions. Even though it is not necessary to know how the invention works at the time of the patent, the scope of the patent referenced the “chain terminator effect” which it understood from past experimentation.
Claim that prophylaxis was not soundly predicted court overruled, could be used for both preventative and treatment purposes, prophylaxis is a part of treatment.
Holding: Upheld patent. Anticipation Apotex Inc v Sanofi-Synthelabo Canada Inc Facts: One of the arguments put forth by Apotex is that by way of anticipation, the smaller compounds are already exposed and therefore selection patents by default are subject to invalidity as they are always known before a patent can be filed. The constituent parts of the compound are out there as part of the whole Issue: Can selection patents be accepted in principle? What level of disclosure is necessary for anticipation to occur Ratio: Selection patents are acceptable in principle as long as they do not suffer from meeting the test for adequate anticipation. Anticipation requires both disclosure and enablement. If through proper disclosure, the special advantages of the selection patent invention are not disclosed, it will not constitute anticipation. If the patent enables someone to make the specific compound, that might not be allowable. There is a certain threshold for what is allowed as enabling. Ultimately, while the reasonably skilled in the art person can supplement the disclosure with their own general knowledge, if an inventive step is required it will most likely not be enabling. Analysis: Where to draw the line on enabling is very difficult as what is reasonable to one person may not be reasonable to another. Idea’s such as “undue burden” and “inventive steps” serve as a rough block away from enabling behaviour. Routine experimentation is of course allowed, but for how long and based on what principles must always be examined in fact. Holding: No anticipation Obviousness Apotex Inc v Sanofi-Synthelabo Canada Inc Facts: Apotex claimed it was obvious to attempt to get this patent. Issue: What is the test for obviousness? Ratio: Obviousness must be assessed at the time of the patent by a the notionally skilled person at the time. The notionally skilled person is aware of prior art, able to make logical inquiries and creative enough to make use of contemporary technology and use of background technical knowledge. Analysis: If the testing would be “obvious to try” as a result of normal procedure or normal logical inquiry, then the invention might be too obvious. If it requires large inventive steps or very specific skills, it may not be too obvious. Certain factual matrices like time it took to develop the patent or ease of experimentation my a team may militate towards something being more obvious, but otherwise it is at least partially a holistic analysis. Quote: Rothstein “For a finding that an invention was “obvious to try”, there must be evidence to convince a judge on a balance of probabilities that it was more or less self evidence to try to obtain the invention. Mere possibility that something might turn up is not enough” Holding: Not obvious. Patent Rights, Terms and Ownership Claim Construction Whirlpool Corp v Camco Inc Facts: Whirlpool invented a type of special washing machine, two of the patents were fine, one of the patents was claimed to be infringing. Issue: How do you construe the claim? Ratio: Claims are to be construed purposively and not literally as literal construction might yield a disadvantage to someone who was trying to be as reasonable as possible during their patent application. Analysis: Literal interpretation might not give a fair result in many instances, so by using the purposive approach and differentiating between “essential” and “non-essential” elements of the invention, the courts can more concretely understand what the patent is really for. By viewing it through the eyes of a “skilled addressee” rather than through a “meticulous verbal analysis:, the courts are more likely to be both flexible and fair.
Policy: Patent is supposed to be clear disclosure, read purposively, this might give people access to more than what their patent originally considered. Also this doesn’t help the public in trying to understand where they can and cannot tread. As per the courts though, it can cut both ways. Holding: ? Catnic Components ltd v Hill & Smith Ltd (UK) Facts: Catnic had a vertical winding lintel that helped secure masonry above doors. Hill invented basically the exact same thing but it was 6 degrees off being perfectly vertical. Catnic sued for infringement Issue: What claim construction method is preferred in the UK? Ratio: Purposive method is preferred Analysis: The purposive method helps to bring some benefit to the public knowing that their invention won’t be read down and strip them of benefits they most likely deserve. Gives flexibility to court to interpret claims broadly even when the initial claim is small. Holding: Infringment on catnic’ design Nature and Content of Rights Monsanto Canada Inc v Schmeiser Fact: Monsanto patented a gene that made their canola crop more resistant to pesticides, specifically round-up. After spraying his crops, Schmeiser noticed certain crops which were resistant to the pesticide. He had the multiplied and sowed his entire field with the roundup crop. As he was not part of the licensing agreement Monsanto had in place, they sued him for patent infringement. Issues: Did Schmeiser’s utilization of the crops amount to “use” in the patent act and thereby constitute a violation of the rights of Monsanto? [28]Is use under the patent act understandable as use of the cell for which the patent was granted, or is cultivation of crops which contain the cell in a different form? Ratio: Not concerned with “innocent blow by” in this case. Use does not apply in just the laboratory setting. Use concerns exploitation, anyone who possesses the patented item is thought to be controlling it and thereby using it. Analysis: The courts adopted Monsanto’s configuration which is a more purposive interpretation than the limited and literal interpretation advised by Schmeiser. Use of the cell in a different form (the matured Canola) is still an exploitation of an essential element of the patent and thus an infringement on their rights. The cell itself was an integral part of the plant and in fact constituted the most important part of its identity compared to normal canola. Policy: Constructing “use” in this context achieves more of the goals of the patent bargain. It explicitly tells people that use of anothers patent in any form is infringing. This helps us to be more competitive on the world stage by overriding Harvard College as well as by allowing researchers the security of knowledge in that they will be able to recoup their costs (discussion at length in the case of research logistical concerns). Also allows for the kind of licensing agreements that Monsanto put into place.
Note: Possession may constitute use (Adair v Young) – Non use for own interests may dispute (British United Shoe) Holding: Infringement Infringement Beloit Canada Ltd v Valmet – Dominion Inc Note: No infringement outside of Canada – “made, used or sold… in Canada” Completely reliant on foreign bodies to protect your rights, You must be entitled to remedy in that jurisdiction. Free World Trust v Electro Sante Inc Facts: The employees at Electro Sante used to be former employees of Free World Trust, they left the company in order to create their own fraudulent electromagnetic therapy machine. After 6 months, their new machine was on the market. The method of their machine was slightly different and FWT is suing them claiming that their method was foreseeable as a result of their original patent. FWT used “control circuits” whereas ES used a “micro controller” similar to a computer, claiming this method of regulating the waves is different than the former invention and doesn’t infringe on the monopoly. Issue: Should the courts adopt the peripheral claiming principle or the central claim drafting principle? Was the addition of the micro-controller a non essential or essential element of the new patent? Ratio: The peripheral claiming principle which focuses on literal construction and defines the legal boundary of the state-conferred monopoly is the preferred approach compared to central claiming which states that the patent embodies a technical idea and should focus on the substance, not the form. Analysis: In a case of infringement, it is important to look at the specific legal boundaries of the patents in order to make sure that the monopoly given is the appropriate one. This prevents people from unintentionally overstepping the boundaries of the patent. The literal scope of the “control circuits” is read to be important, and by substituting the micro-controller which helps the device to function substantially differently, no infringement is found Holding: No infringement Tests Patent Disclosure – Teva v Pfizer
Selection Patents – Apotex Inc v Sanofi-Synthelabo Canada Inc
Obviousness Inquiry – Apotex v Sanofi
Obvious to try test as part of step 5
Copyright Statute of Anne: 14 year protection from first publishing date. Infringer forfeits a penny a page. Kenrick & Co v Lawrence & Co; Baker & Seldon; Delrina Corp v Triolet systems Copyright exists for expression of ideas, not for the ideas themselves Literary Work University of London Press, Limited v University Tutorial Press, Limited Ratio: “The words “literary work” cover work which is expressed in print or writing, irrespective of the question whether the quality or style is high”
Francis Day and Hunter, Ltd. Appellants v Twentieth Century Fox Corporation, Ltd and Other Respondents Facts: 20TH Century Fox created a movie called “The Man Who Broke the Bank at Monte Carlo” some 50 years after a song came out with the same title. The appellants came after 20th Century Fox for violation of their copyright in the song by performance in public by virtue of the use of the name. Issue: Did 20th Century Fox infringe by utilizing the title name of the song for their movie? Ratio: Unless it constitutes “substantial copying” titles are not protected under the copyright act and thus there is no infringement. Analysis: Not only was there nothing particularly inventive about the title, but as the title is part of the work, and the work was a huge movie with no relation to the original song, no substantial copying took place. The title is not considered a work of its own and as such, there is no substantial copying in that instance as well. Holding: No copying. Exxon Corp v Exxon Insurance Consultants International Ltd Facts: Exxon Corp did extensive research into finding a suitable name for their corporation. They came upon the name Exxon and adopted it accordingly. Exxon was able to get an injunction against Exxon insurance and prevent them from using the name as a result of “passing off” but they also claimed to have copyright in the word “Exxon” as well. Issue: Can you have copyright in a single word or name? Ratio: Highly, extremely unlikely to have copyright in a name/word, simply too insubstantial. Analysis: A single word or name does not fit into even the extended definition of a “literary work”, let alone in its normal everyday understanding/use. Even though the word Exxon is a creation and totally unique, by itself it means nothing. If it is incorporated into a work so succinctly that it gains that status then it might be possible, but it only really gains that status after having been incorporated into the work… circular Holding: No copyright – impossible for public to infringe every time they use the word.
Quote: “The unpredictability of the action is inconsistent with the concept of choreography” Holding: No copyright in the playing of a sport. Artistic Work DRG Inc v Datafile Ltd Facts: Datafile had come up with a certain color coding filing system and filed a registration for copyright classification under “artistic works”. DRG was attempting to have the registration expunged on the grounds that the design wasn’t a proper matter for copyright protection due to either being a tool or not an artistic work. Issue: How does one determine if something is classified as an artistic work? Ratio: Extrinsic considerations are not necessary for art to be considered art. All that is necessary is to say that an artistic work is that which “finds its expression in a visual medium as opposed to work of literary, musical or dramatic expression” Analysis: There is a large push back against past jurisprudence which attempts to adduce tests which includes the courts understanding of whether something has artistic merit, whether the artist intended for the art to be art and whether people enjoy the art either emotionally or intellectually. Artistic merit may be indicative of it being an artistic work, but not determinative. Art is such an ephemeral concept that trying to distill it into certain tests creates an increased workload that the judiciary is not interested in. Holding: Even though argument was accepted, registration was still expunged (upheld at FCOA) Collective Works v Compilations Robertson v Thomson Facts: Robertson wrote an article for the globe and mail. The work was included on CD’s which had full copies of the newspaper on them. Robertson objected to the reproduction of her individual article on a new database that the globe had created. This database stripped the individual articles from the newspaper and allowed them to be searched individually. Issue: Can the Globe claim copyright ownership over the individual work? Is the database a compilation or a series of collective works? Ratio: The right to reproduce a collective work is not the same as publishing an individual work and shoehorning it into a different collective work. Analysis: The newspaper itself was deemed a collective work. Since the Globe had control over it, it was a valid exercise of ownership to produce the CD’s which were merely a copy of the entire collective work. Once the article is stripped from its original environment, the nature of the copyright changes. The database into which it entered was not a collective work regarding reproduction of the newspapers so much as it was an amalgamation of collected individual works. The database itself creates a “resulting collective work that [when] presented to the public is not simply each of the collective works joined together… it has beco.me a collective work of a different nature” Minority: Making a distinction between collective work and compilation is not important. Robertson herself said that the databases don’t infringe as there is no difference between the actual newspaper itself and the assembly of that days works. Holding: She has copyright over the original copy Sound Recordings Re: Sound v Motion Picture Theatre Associations of Canada Facts: Re: Sound was trying to seek an additional tariff for when soundtracks for movies were played in public as part of the showing of the film. Under the Act, soundtracks incorporated into movies do not count as “sound recordings” and as such they challenged this to try and attain the tariff. Ratio: When the owner of the songs/soundtrack incorporates their work into a movie, they sacrifice their remuneration rights and general copyrights Analysis: The statutes clearly state what is and is not allowed. By allowing the soundtrack owners to get paid for this, they would essentially be receiving a double tariff, one for the original licensing of their work and one for playing in public. If the soundtrack doesn’t accompany the movie, then they keep their rights. Holding: Dismissed, Tariff not allowed Kenrick & Co v Lawrence & Co Facts: in 1890, quite a few people who were allowed to vote could not read. Mr Jefferson of the plaintiffs created a voter card which showed a small drawing of a hand holding a pencil and creating a cross to indicate a vote. He registered this drawing accordingly. The defendants drew basically the exact same thing although with the hand in a different spot. Issue: Can you have a copyright in a commonplace item? If the item is simple. How can you infringe copyright? Ratio: “Although every drawing of whatever kind may be entitled to registration… the degree and kind of protection given must vary greatly with the character of the drawing” If something is so simple that the only copyright is on the subject, then copyright cannot be granted. Analysis: As the judge pointed out, there are not very many ways one can draw a hand making a cross on a page. It is so simple and mechanical that to grant a copyright would be to grant it to the subjett itself, which cannot be allowed as this would prevent people for 50 years being able to make a reproduction of a simple hand making a cross. If a simple but somewhat unique drawing is copied exactly, that might be enough to constitute copyright. Holding: No copyright Baker v Selden Facts: Selden obtained the copyright for a book on how to construct ledgers for book keeping. Baker also had a book with different designs that served roughly the same purpose of instructing people how to design ledgers for book keeping. Selden obviously has copyright on the books, but the question before the courts is whether in using substantially the same methods of graphing for the ledger Baker has violated Seldens copyright. Issue: “[Can] the exclusive property in a system of book keeping… be claimed… by means of a book in which the system is explained? Ratio: Systems such as these may be subject to patent protection, but cannot be protected under the copyright act. Analysis: “By publishing the book without getting a patent for the art, the latter is given to the public”. In this case the judge states that the designs are merely a means to effect his words.It makes no sense to have an instructional book teaching how to make ledgers and then effectively deny the people to make said ledgers. This is not in keeping with the bargain made to the public. Also, instructional books are designed to teach, and this noble goal should be effected by allowing people to utilize the teachings appropriately. “The teachings of science and the rules and methods of useful art have their final end in application nd use” – unlike drawings which might be protected under copyright as artistic works, these things must be utilized for different purposes other than pure appreciation Holding: No copyright in the drawings, copyright in the books. Delrina Corp v Triolet Systems Inc Facts: The two computer programs (Sysview and Assess) were created by the same programmer (Duncombe). Delina (possibly) suing Triolet for copying their system Issue: How much copying is allowable? Are there extrinsic factors that allow copying? How much of the copied programs are actually copyright eligible? Is it at all “original”? Can you protect ideas or facts?
What kind of conversations can or cannot attain copyright protection? Are spoken words contemplated within the definition of “literary work”? Did Carroll achieve copyright protection through fixation? Ratio: Normal conversation cannot be the subject of copyright protection. Planned conversation, speeches, lectures etc where there is a set dialogue may be allowed to be copyrighted. The desire to have copyright may be indicative of copyright protection, but someone must want the copyright Analysis: The recorded conversations between Gould and Carroll were never meant to be the subject of copyright. They were breezy conversations intended to capture Gould when he was relaxing. He was not dictating or giving a lecture. By fixating the comments onto tape, Gould actually attained copyright over them. Additionally, Gould in giving interviews must have known that his words would end up in public, and by continuing to speak with no preface he implicitly gave away any copyrights he may have had. Caroll is the full author of everything through desire and fixation. Policy: Normal conversation cannot be copyrightable as this would mean you might be infringing whenever you spoke or repeated someones words. Enforcement of this regime would be impossible. Freedom of the press and freedom of speech would also be curtailed if people had to watch their words that carefully (especially human beings who are notorious for saying random stuff). Note: Walter v Lane – Oral statements not recognized as literary creations Note: Canadian Admiral Corp ltd v Rediffusion Inc – “For copyright to subsist in a work, it must be expressed in a material form and have a more or less permanent endurance. Applies to Carrolls tapes. Holding: Carroll owns copyright in oral conversations. Theberge v Galerie d’Art du Petit Champlain inc Facts: The Galerie d’Art purchased merchandise from Theberge legally and took part in a chemical process which lifted the art from the poster papers they had bought and allowed them to transpose them onto canvas backings. There was no copying done in the traditional sense as the old poster paper was left blank. Even though there was a contract signed that said there was no restriction of use, Theberge still sued and had a possession order executed, GDA is trying to get their stuff back. Issue: Does “reaffixing the work” amount to a reproduction? Does the transfer between substrates violate the copyright act Ratio: Switching between substrates does not amount to a violation of the copyright act. Analysis: Determining that “fixation” occurs when the substrates change in physical characteristics would effectively bar both commercial sellers as well as private users from ever manipulating their works. allowing this kind of definition of fixation might actually set a dangerous precedent as it pertains to the fine balance between the public interest and the author’s rights. Policy: Copyright is a balance between public interest in dissemination and giving the creator his just rewards or accolades. The court is designed to “recognize the creators right but in giving due weight to their limited nature”. By not allowing modification after use that is not in contravention of the authors moral rights, the balance would swing too heavily against the proprietary rights of the owners over their chattle. The long term interest of society is benefitted by being able to utilize these artworks freely. Holding: Give my art back. Originality Feist Publications, Inc v Rural Telephone Service Company [US] Facts: Rural Telephone was able to come up with its own telephone listings by virtue of being a telephone service provider. Feist created a gigantic listing by licensing information from the 11 other county providers in the area. Rural elected not to license its listing so Feist used them without their consent. Rural sued for copying after finding 4 fake inserted phone numbers that ended up in Feists directory. Feist claimed the information they copied was beyond the scope of copyright protection. Issue: What is the approach the courts must use to determine if something is original and worthy of copyright protection. Are facts copyrightable? Are compilations of facts copyrightable Ratio: While an author may hold copyright over a compilation and the arrangement of the facts within, there is no copyright over the facts as they are not an invention or a discovery. There must be some basic spark of creativity, sweat of the brow approach no longer accepted. Analysis: The underlying facts (names, addresses, phone numbers) existed regardless of whether Rural printed them or not. Additionally, their organizing of the compilation held no creative spark whatsoever. There must be something that transforms “mere selection into copyrightable expression”. Copyright law only protects elements of work that possess more than a “de minimis quantum of creativity” Holding: No Infringement CCH Canadian ltd v Law Society of Upper Canada, 2004 Facts: CCH produced case law commentaries and books containing all sorts of good stuff. Sued LSUC for supposedly authorizing copying on the copy machines. One of LSUC’s arguments was that there was nothing original about the works they created. Issue: Was CCH’s work original? Ratio: The standard of originality is low. As long as it originates from the author, is more than a mere copy, and the quality of the work shows some expression of both skill and judgement, it will be deemed to be original Analysis: Because CCH used their skill (knowledge/developed aptitude) in producing the work by organizing things together in thematically relevant ways and used their judgement (discernment/comparison skills) to figure out what was relevant and what was not, it was deemed that their work had copyright protectability through originality. The headnotes had “independently composed features”, the case summary has picked and chosen what elements of the judgement to include or exclude, the topical index was ok as it picked the seminal GST cases as well as appropriate headings, the reported judicial decisions were arranged in such a way as to be exercises of skill and judgement. The decisions by themselves though are not copyrightable as not enough is added to distinguish them creatively (they are a mere mechanical exercise) Note: McLachlin chose the middle ground between the purely mechanical “Sweat of the brow” approach and the “de minimus creativity” approach used in Feist. This is a good middle ground as skill and judgement need not produce results that are creative but are clearly more than just a mechanical exercise. Note: The more tenuous the claim to copyright, the more skill and judgement must be shown. Holding: Copyright in all elements of the work. Requirement – S.5: Appropriately connected to Canada
Copyright – Ownership Rights Who owns the rights Shaw v Berman Facts: Berman made a documentary about the life of Shaw. Berman went out to Shaws house in California for interviews and film recording, all of the costs borne by Berman. Berman even charged her for his time. Shaw came after Berman for profits of the movie, considering that he thought that if he knew the movie would be a commercial product he would ask for more compensation (no written contract existed between them). Berman confirmed multiple times that she would uphold her end of the credit and fees bargain if Shaw gave her exclusive rights in the movie to use some unused music. Shaw is mostly claiming ownership over performances that were done over 50 years ago and well before the 1996 amendments to the copyright act as well Issue: Is Shaw entitled to any license fees from the songs allegedly used in the film without his consent? Ratio: No claim can be made for performance rights prior to January 1, 1996. Analysis: There are multiple issues with Shaws submissions. He was trying to bring an action against Berman who did her due diligence and got permission from other companies to the performance rights of Shaw, claiming he gave no consent, but no consent was needed anyways. There was no profit sharing or overriding contract and all of the burden was borne by Berman. It is most likely that the people who got the songs back in the day became the owner of the rights and were able to move them around as they pleased Holding: Berman off the hook. Authorship Mattel v MGA Entertainment F: Work done in spare time, created Bratz – I: Who is author? – R: Author always first creator, sometimes owner. A: Employment – Employer first owner, if not stated, goes to employee (13.3) Joint Authorship Neugebauer v Labieniec Facts: One author was trying to allege that the other was not factually or legally entitled to joint authorship of the novel Issue: What test helps us to consider who has joint authorship? Ratio: American Jurisprudence overruled; As per statute, there must be significant contributions by both parties and the contributions must not be distinct Analysis: There is no need for authorization of joint ownership or any feeling or sentiment towards whether you want to be a joint owner with someone. By holistically looking at the nature of the owkr, you can determine whether the resulting collaboration constitutes joint authorship. More a question of fact than of law. Intention of co-authorship or recognizing oneself as a co-author or introducing another as a co-author are indicitave but not determinative. Boudreau v Lin – Referenced in Infringement Note: Small modifications and minimal suggestions do not give co-authorship status Crown Ownership Hawley v The Queen Facts: While an inmate of a prison, Hawley painted a picture of a mountain. Hawley claims it belongs to him, the crown says it belongs to him due to the work being commissioned by the prison authorities and done during his work periods, essentially creating an employer-esque relationship. Hawley claims that he was forced into the work under threat of punishment and since there was no formal agreement the copyright should vest in Hawley. The crown claims he volunteered for the work, was paid for it and on completion titles vests in the crown. Additionally, he didn’t make claim to the painting but did make claim to a $1 item upon leaving the prison. Issue: How does title vest in the case of work done for the crown by gov’t employees or contractors. Ratio: The crown has normal contract law and employment law principles apply to it. The work was done by agreement and for the benefit of the crown. Analysis: Even though he did some of the work in his leisure time, the crown was the one that provided the tools and time for him to complete the painting. The judge points out that there is no reason to apply different rules to penal inmates as quite often they will engage in similar behaviours to normal contract situations. He could either be considered as an employee or a contractor, but regardless of which he no doubt had direction and control exercised over him. Holding: No copyright ownership for Hawley. Assignments and Licenses Robertson v Thomson (Globe and Mail) Facts: Globe and mail supra – dealing specifically with the contours of the differentiation between exclusive and non-exclusive licensing. 13(7) – “a grant of an exclusive license in a copyright constitutes the grant of an interest in the copyright by license” Ratio: If parliament wanted non-exclusive licensing to be “grants of interest”, they would have stated as much. Analysis: “The grant of an interest… is the transfer of a property right as opposed to a permission to do a certain thing” --- “The grant of interest allows the licensee to sue in his own name for infringement, non exclusive licensing only provides a defence to claims of infringement” The judge finds it hard to believe that freelancers impliedly gave the Globe the implied license to republish their articles in their electronic databases. Most of this can be governed by contract even if it was true Reproduction Apple Computer Inc v Mackintosh Computers Ltd Facts: Mackintosh computers had silicon chips which had encoded in them the Autostart Rom and Applesoft programs. The lines of code were 99% exactly the same as those of Apple. The only real differences were to change the name from Apple to Mackintosh. Issue: Is a computer program when embodied in a silicon chip in the computer a subject matter in which copyright exists? Does the lines of coding attain copyright status when they are converted into electrical signals or when it is embodied in the device that allows code replication Ratio: Reproduction of the code does not need to be in human readable form in order for it to constitute copyright infringement Analysis: Unlike a piano roll which can be removed with ease, the medium on which the information is stored, regardless of whether it is in Arabic characters is irrelevant. The ROM chip which contains electrical signals and codes which have been translated from hexadecimals or programming language is a reproduction of the work in a different form. “Since the programs can be “Read” out of the ROM and visually compared to another program, it can be used to help determine if copying has occurred and thus be said to be in readable form. Note: “Copyright means the sole right to reproduce or produce the work…in any form whatsoever” – read holistically them copying the electrical signals should suffice to infringe. SCC Holding: “The circuitry in the silicon chip was both a translation and an exact reproduction of the assembly language” – Essentially, the program has just been reproduced in another medium, pretty cool Holding: Disgorgement of profits and seizure of computers Additional Copies Théberge v Galerie d’Art du Petit Champlain Inc Facts: Theberge Supra, claimed that moving between the substrates might have counted as reproduction Issue: Is there a difference between reproduction and an additional copy? Does re-fixation amount to reproduction? Ratio: Re-fixing does not constitute reproduction. Modifying the work doesn’t reproduce it if the same number of copies exist before and after the change Analysis: Preserving the asset in this way cannot be against the ownership rights of the person who has legally purchased the work. Judge: “Reproduction” is usually defined as the act of producing additional or new copies of the work in any material form” That is not what has happened here, there is still a one to one translation. Reproduction is historically better understood to prevent multiple copies of a work being prepared against the authors will or economic interests. Note: Metaphorical copying can take place to the prejudice of the author, this case deals with strict physical ramifications of owners actions. Quote: “My view is that parliament intended modification without reproduction to be dealt with under provisions dealing with moral rights rather than economic rights” Droit de Destination would tip the scales too far in favour of the artist in the copyright bargain, would too greatly effect economic mobility and freedom of asset owners. Reproduction of Part of the Work Cinar Corporation v Robinson Facts: Robinson created a character and script for a childrens television show which he pitched to studios of which Cinar was one. He was unsuccessful for a number of years. 13 years after he came up with the idea, Cinar created a rip off show which caused Robinson to be furious and sue. Issue: Ideas cannot be copyright protected, but how much protection extends to a portion of an expression of an idea? How do we determine if a “substantial part” of a work has been copied Ratio: “Whether a part is substantial must be decided by its quality rather than its quantity"[ “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.”
Analysis: When you make a pitch to a company, there must be some form of protection for your verbalized expression, although how much will no doubt depend on the quality/quantity of your representation. As it is a question of fact, whether a substantial portion is taken will be based on a holistic analysis of how much work was taken and how much work has been contributed. This approach is preferable as it gives the courts leeway to better effect the copyright bargain. Holding: Infringement Bayliner Marine Corporation v Doral Boats Ltd Facts: Bayliner claims that Doral effectively copied the design of two of their boats. Doral claims that the copyright that is contained within the schematics of the boat only pertains to the schematic itself and not to the manufacture of the boat. Also, they did not protect their work under the “industrial design act”. Doral would not utilize schematics, but would purchase a boat, break it down into constituent elements and used some of the pieces to construct its boats. Issue: Can copyright be infringed by copying an intermediate copy of an original work? Ratio: Following the statute, the copyright act “gives protection to the work or any substantial part thereof “in any form whatsoever”. Schematics and blueprints give copyright protection to the things they design.
Analysis: It would set a dangerous precedent if the intermediary item (Bayliners finished boats) could be copied in such a way as to remove any copyright protection from the original schematic. This would effectively allow people to copy from the original product whenever they got the chance to with impunity. As long as the item in the schematic can be translated and the fungible good that is derived therein is copied, it should be a breach of the copyright. The drawings are obviously not 1-1 accurate of the finished product, but they are the physical manifestation of the work which has been expressed. Dorling v Honnor - Quote from quoted case paraphrase: would violate the spirit of the act if an artistic work was infringed if reproduced in only the same dimensions. Holding: Infringement Performance in Public Canadian Admiral Corp v Rediffusion Inc Facts: Canadian Admiral Corp had the rights to live broadcast the 6 live home games and the option to purchase the films of the 6 away games of the Alouettes. CAC was given the rights to perform and distribute the material through normal service or rediffusion. Rediffusion took the air signal and relayed it to its subscribers and showroom. Rediffusion claims that rediffusion is not performance an that by playing the live game they are just continuing a performance. Issue: Does rediffusion of the telecasts constitute performance? Does it constitute performance in public? Ratio: Perveying a visual representation is included in the definition of performance
Cases referenced: Duck v. Bates: performance in a Hospital to nurses and attendants, together with the medical men and students and some of their families = Closed domestic audience - private Harms Inc. and Chappel: performance at Embassy Club: club members and some guests are audience - in public = No real restriction of audience Performing Right Society Ltd.: performance in the lounge of a hotel where several guests of the hotel were present—in public = no real restriction of audience Analysis: The showroom was being used as a means to sell the defendants service, and since it was viewable by anyone who happened to walk by, it was clearly not meant to be limited to any one group. Even though the cable transmission might go to multiple people in multiple different households, as long as it is always to a private, well defined viewership, it won’t be a performance in public. Communication to the Public by Telecommunication CCH Canadian v Law Society of Upper Canada Ratio: Fax transmission of a single copy to a single individual is not a communication to the public Multiple transmissions to multiple different recipients of the same work might constitute communication to the public
If a party only provides the conduit, are they communicating? Does a communication not count if it originates outside of Canada If the ISP modifies the content, are they then communicating? Ratio: A telecommunications occurs when the content is transmitted from the host server to the end server
Analysis: SOCAN was effectively trying to levy a fee against each piece in the chain of people so as to generate as much revenue as possible. It makes good policy sense to not charge the ISP’s as they would no doubt pass the charge along to consumers. Additionally, as they have no control over the subject matter, charging them for something they might abhor does not seem fair. The courts took a view that still gives legislative competence to the federal system, but also construed communications and telecommunications in such a way as to reflect the realities of the current internet age. Using rigid definitions doesn’t serve anyone but SOCAN’s interest. Holding: Not allowed. Entertainment Software Association v Society of Composers, Authors and Music Publishers of Canada Facts: Videogame sound track producers license the rights to their song as part of the original licensing agreement for a game. SOCAN was claiming that downloaded videogames were different and as such they should be able to levy a tariff against consumers on behalf of the original videogame music composer. SOCAN was attempting to claim that Downloading constitutes communication to the public under S.3(1)(f) Issue: Does downloading a video game containing musical work amount to “communicating to the public” under 3.1.f? Ratio: Downloading is a reproduction, not a communication. Technological neutrality is consistent with the copyright act. Analysis: The court rejects SOCAN’s fee system as 3.1 gives users the right to reproduce in any material form whatsoever. Downloaded copies are simply more durable copies of the original work (an exact replica). Just because it is delivered in a different manner than a hard copy of the game does not make them different. Historically, the right to “communicate” is more directly tied to performance and not reproduction of copies of the work.
Holding: Overturned, no fees. Canadian Wireless Telecommunications Assn. v. Society of Composers, Authors and Music Publishers of Canada, 2008 – CTWA v SOCAN Facts: Multiple companies were selling ringtones as digital downloads that users could purchase from the ISP. SOCAN had a new fee approved which would allow for a royalty any time a wireless user downloaded a ringtone from an ISP. Issue: Is allowing a ringtone to be downloaded a “communication to the public”? Ratio: Apparently yes it is. Analysis: Rogers et al quite rightly attempted to use the idea that they were sending the song to an individual as a private transaction. When looking at the transaction from the POV of the recipient, it is a private communication. However, SOCAN focused on the fact that the information was available for anyone to download, and that by looking at the work over time, it wouldn’t make sense to allow 100 individual downloads to be private but 1 batch download of 100 to be public. This would be out of step with the idea of multiple faxes as elucidated in CCH. Since the ISP has taken a ringtone from their server to the end user, we know they are communicating as well. Note: communication not limited to simply pushing through information, applies to on-demand content, users pulling the data, etc. Almost anything can be a communication. Holding: Royalty upheld Rogers Communications INC v Society of Composers, Authors and Music Publishers of Canada Facts: Rogers et al offer streaming services for movies and music. SOCAN wants to obviously levy another fee. Rather than dealing with succinct downloads which are not communicated when downloaded, we examine streaming which provides no copy of the work. Issue: Does streaming constitute a communication to the public even though it may end up only going to private users? Ratio: Even though the material is transmitted point to point, the availability of the works to the public and the quantity in which they are accessed classifies them as communications to the public. Analysis: This mirrors the decision in CTWA and in CCH in which a “series of repeated transmissions of the same work to numberous different recipients” may constitute communication to the public. Regardless of whether the media is pushed to the consumer or the consumer pulls it, this decision keeps streaming in line with the jurisprudence regarding public communications in a similar way to TV and Radio. This also seperates it from downloading which is moreso a reproduction right. Holding: constitutes public communication Authorization CCH Canadian Ltd v Law Society of Upper Canada Facts: CCH is claiming that by providing photocopiers, LSUC implicitly authorized infringement of their copyrights. No evidence was ever provided showing this had happened. Issue: Did LSUC authorize infringement by proving the self-serve photo copier Ratio: A rebuttable presumption exists in assuming that technology is being used lawfully. If there is no control over how someone uses your tool and no approval of their actions, there is no authorization. Analysis: Merely allowing someone to access something does not directly or indirectly authorize infringement. Especially as no evidence was presented showing that the library would have ever known about infringing activities, they were perfectly reasonable to assume that people would use it lawfully, especially lawyers who presumably know about the restrictions of fair dealing. Mere allowance of utilization is not authorization. Also, posting the notice about copyrights over the copier is not an implicit acceptance that they will be used in an offending manner. Unlike the special services the library provides, they had no control over people using the machines but if they did, they would surely act on it Holding: No authorization in providing the machines. Society of Composers, Authors and Musi Publishers of Canada v Canadian Association of Internet Providers – SOCAN v CAIP 2004 – Tariff 22 Facts: SOCAN wants to levy fees against anyone who they can, claim that they should be able to levy against ISP’s for providing the infringing equipment that allows internet users to be bad. Claims they are authorizing infringement Issues: Can ISP’s be held to be “authorizing” by means of allowing people to use their service to download? If not, when can ISP’s be considered to be authorizing? Ratio: Simply providing the equipment to access the content does not give rise to authorization. Even if the ISP’s know infringing content is passing through their wires, it is still not authorization. Authorization only occurs either through direct condoning or direct acquiescence in failing to abide by multiple takedown requests Analysis: Only through sheer recalcitrance or indifference can an ISP be found to be implicitly authorizing behaviour as it pertains to take down notices. The same rebuttable presumption of legality applies to the internet as it does to the copier in CCH. Similarly in CCH, the ISP’s may not have direct control and as such are not directly or indirectly authorizing. Quote: “Intermediaries are content neutral unless they sanction, approve or countenance more than allowing the mere use of equipment that may be used for infringement” Note: S 41.26: ISPS have no obligation to take down infringing websites but must keep records on infringing activities. Holding: No finding of authorization BMG Canada Inc v John Doe Facts: Due to the anonymous nature of the internet, BMG was unable to locate the people whom they accused of using p2p file sharing program to traffic in copyrighted works. They are seeking an order to compel the ISP’s to give them the names and addresses of the people who have used that service. At trial there was no evidence that the accused did anything other than upload the file and allow it to be shared, not download Issue: Can/Should ISP’s be compelled to disclose the personal information of their customers who are being accused of copyright infringement? Is uploading a file to a p2p network an explicit or implicit authorization to conduct copyright infringement Ratio: Unclear. 27(2.3) of CA might state yes or no 27(2.4)(b) – whether the person had knowledge that the service was used to enable a significant number of acts of copyright infringement. Analysis: Trial judge did not see any difference between the great library and the p2p networks. While uploading the file may be a “precondition to copying and infringement” in the same way the copier is, there is not necessarily an element of authorization.
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