PART II: ORDERING IP SPACE – CR, TM & PATENT

Donaldson v. Beckett

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  This case establishes the roots of the Anglo copyright tradition upon which our statute is based – economic rights couched in a utilitarian balancing act which justifies limits on those rights (e.g. ltd duration).
  
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  Suggests that utilitarian balancing is primary justification for CR (STRONG public utility argument advanced)  Is that changing?
  
• 
  This case also established the basic idea that IP statutes have superseded any CML rights. Only CML right that remains – right not to publish (though Lametti seems to suggest this is actually a stat right in Canada)
  
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  SH: What underlies these natural rights-based arguments?  Lockian normative theory (desert). DL: Today, perhaps also personhood.
  

• 
  Flow from natural rights theory [SH: rights that attach to the author and not to the work] and are part of the continental tradition. [Attached to author, perpetual, can be waived but not assigned]
  
• 
  In the continental tradition, 4 moral rights recognized:
  

1. 
   right to association/attribution
   
2. 
   right of the integrity of work (i.e. to enjoin mutilation, prejudicial modifications)
   
3. 
   right to w/draw the work from the public sphere
   
4. 
   right to control the destination of the work (how it will be used)
   

• 
  We don’t have 3. or 4. in Cdn CR tradition
  
• 
  In the Anglo-Canadian tradition, starting point was economic rights; moral rights were subsequently grafted on (following Berne Convention).
  
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  DL on justifications: Can these individual rights-based justifications be used to justify economic rights as well, or do they merely justify moral rights? SH: Is there a difference btwn using them to justify economic rights and recognizing rights-based justifications in a system which is primarily based on economic rights? Former = individuals who labour and manifest their person in a given intellectual good should be granted a right to profit from that in order to sustain themselves; money as means to recognize their contribution to progress, etc.. Latter = MP case and Drassinower
  
• 
  Moral rights in the U.S.  U.S. didn’t buy onto moral rights provisions in Berne Convention BUT the justificatory force of these natural rights arguments does appear to have some value in the U.S. Gilliam case suggests that moral rights can be reconciled with rationale underlying the American CR system (i.e. utilitarian, rights as economic incentives for production). SH: Does this suggest that the natural-rights arguments don’t really have much force in so far as they cannot be reconciled with utilitarian justifications?
  
• 
  Moral rights in Canada  Snow is the only successful vindication of moral rights in Canada. Moreover, the cases show that standard for showing infringement is quite high. Does this suggest that Canada doesn’t take moral rights seriously (SH: and thus natural-rights justifications? Could one say that given need to show prejudice to reputation (i.e. you have harmed my ability to sell my work and myself as an author), etc., the justification for vindicating moral rights is economic even though the purported justification underlying them is rights-based?)
  

Snow v. Eaton Centre Ltd.

Snow v. Eaton Centre Ltd. (1982), Ont. H.C.J., CB I p. 359 Facts: Ptf’s sculpture, “Flight Stop,” consisted of 60 geese, and was sold to dft and displayed in the Eaton’s Centre As part of Christmas display, dft attached red ribbons to the geese’s necks. Ptf took action for infringement of moral rights, pursuant to [then] s. 12(7) CA, which gives the author the right to restrain any distortion, mutilation or other modification of his work that would be prejudicial to his honour or reputation. Issue: Was the modification of the sculpture prejudicial to Snow’s honor or reputation? Held: Yes Ratio: Rights conferred by s. 12(7) are broader than those based on libel and slander. The words “prejudicial to his honour or reputation” involve a certain subjective element or judgment on the part of the author so long as it is reasonably arrived at. Ptf Snow is adamant in his belief that his naturalistic composition has been made to look ridiculous by the addition of ribbons [like dangling ribbons from Venus de Milo]. The ptf’s opinion is shared by a number of other well respected artists and people knowledgeable in the field [SH: inklings of an objective test?] The ribbons do modify or distort the ptf’s work and the ptf’s concern that this will be prejudicial to his honour or reputation is reasonable under the circumstances.

POINT: Test for infringement of moral rights  must be distortion, mutilation or other modification that is “prejudicial to honour and reputation.” Determining whether a change is “prejudicial” involves a certain subjective element or judgment on the part of the author so long as it is reasonably arrived at.

Comments (DL):

• 
  This is the only successful vindication of moral rights under the Canadian Copyright Act. Does this say something about the relative importance of moral rights vis-à-vis economic rights?
  

Prise de Parole Inc. v. Guerin

Prise de Parole Inc. v. Guerin, [1995] F.C.T.D., CB I p. 360 Facts: Ptf author writes novels directed at teenagers. Has contract with ptf publisher to publish his novel “La vengeance de l’orignal” which was sold to schools for use in Grade 9 curriculum. Dft publisher Guerin, w/o the permission of the ptf, published excerpts of the novel in a Grade 8 reader. This caused sales of the novel to fall significantly. Excerpts excluded rich description and sub-plot. Author claimed that this modification was to the prejudice of his honour and reputation Ptf publisher and author sued Guerin. Issue: Infringement of CR? Violation of moral rights? Held: Yes and no. Ratio: [Infringement of copyright]: Court did not deal with infringement issue at length b/c infringement was obvious and egregious; court did, however, discuss infringement in context of exemplary damages award which was granted on the basis that dft’s conduct was “inexcusable” and “flagrant” – after admitting its responsibility when its infringement was discovered, dft deliberately continued to sell its textbook to the ptf’s detriment, w/o worrying about the consequences of its action. [Infringement of moral rights]: As per Snow, determination of whether the work was distorted, mutilated or otherwise modified to the prejudice of the author’s honour or reputation involves a subjective element. It also requires, however, an objective evaluation of the prejudice, based on public or expert opinion. In this case, work was clearly distorted, mutilated or otherwise modified (subplot and descriptive details left out). However, author could not show that, objectively, his work was modified to the prejudice of his honour or reputation. He had not been ridiculed or mocked by his colleagues or the newspapers, and had not heard any complaints. He also has a good reputation as an author. He is often asked to give lectures in schools and when asked whether the frequency of lecture requests declined after the Guerin publication, he said that, “It didn’t do any harm.”

POINT: Determination of prejudice to honour and/or reputation requires subjective and objective evaluation of the prejudice (latter based on public or expert opinion). Was public reputation harmed? Was author ridiculed or mocked?

Comments (DL):

• 
  Objective test is high standard. One who takes a strong natural-rights view would not agree with this case; would believe that standard should be subjective
  
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  Even if we do have moral rights in CR Act, we haven’t accorded them much weight.
  
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  SH: I don’t think we would have so much sympathy for the author if there hadn’t been such an egregious CR infringement. The abridgment in this case was made for efficiency reasons (teaching 8^th graders how to read and analyze literature).
  

Gilliam v. American Broadcasting Companies

Gilliam v. American Broadcasting Companies (2d Cir. 1976), CB I p. 350 Facts: Monty Python holds copyright in its works and has an agreement with the BBC regarding the airing of its script. The agreement states that the BBC may license the transmission of recording of the television programs in any overseas territories. Time-Life films acquired the right to distribute in the U.S. certain BBC programs, including the Monty Python series. Time Life was permitted to edit the programs for insertion of commercials, applicable censorship or governmental rules and regulations. ABC agreed with Time Life to broadcast two Monty Python specials; they did some serious editing to accommodate commercials. Monty Python viewed the changes after the program was aired and were “appalled” at the discontinuity and “mutilation” that resulted from the editing. They alleged that ABC had ruined the integrity of their work. Issue: Did ABC infringe copyright in the underlying work? Did ABC impair the integrity of the work? Held: Yes and Yes Ratio: [Copyright Infringement]: Since the CR in the underlying script [held by MP] survives intact despite the incorporation of that work into a derivative work, one who uses the script, even w/ the permission of the proprietor the derivative work [i.e. BBC – holds CR in the recording], may infringe the underlying CR One who obtains permission to use a CRed script in the production of a derivative work, however, may not exceed the specific purpose for which permission was granted. BBC had the right to vend or distribute the derivative work to third parties, however it had no right to make revisions w/o consulting MP. BBC could not grant more rights than it had. Thus, ABC’s broadcast of a program edited after recording and w/o consultation with MP exceeded the scope of any license that BBC was entitled to grant. Court then goes on to reject all of ABC’s arguments. [Integrity of the work – Moral Rights]: Regardless of the right ABC had to broadcast an edited program, the cuts made constituted an actionable mutilation of MP’s work. This cause of action finds its root in the continental concept of moral rights While American CR law doesn’t explicitly recognize moral rights, the economic incentive for creative activity, i.e. the foundation of American CR law, cannot be reconciled w/ the inability of artists to obtain relief for mutilation or misrep of their work to the public on which the artists are financially dependent. Court uses Lanham Act [effectively a federal unfair competition law] to vindicate MP’s moral rights. Characterized the truncation as a “misrepresentation that may injure ptf’s business or personal reputation.” ABC effectively represented the truncated episodes as the work of MP and thus makes MP subject to criticism for work that it has not done. Concurring (in result): Lanham Act is a trademark act, not a CR statute CR Act provides no recognition of moral rights of authors; nor are such rights recognized in field of copyright law in U.S. If distortion or truncation constitutes an infringement, no need for another cause of action. Lanham Act doesn’t deal with artistic integrity; it isn’t a substitute for moral rights. It only goes to misdescription of origin and the like.

POINT: Justifcatory force behind moral rights has value in the U.S. Moral rights can be reconciled with rationale underlying American CR system (economic incentive to produce intellectual goods will be undermined if authors are not protected from mutilation or distortion that de-values their work). Basing moral rights on a utilitarian justification rather than a personhood or natural rights justification.

Comments (DL):

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  SH: Note the court’s general comment: “…copyright law should be used to recognize the important role of the artist in our society and the need to encourage production and disseminate of artistic works by providing adequate legal protection for one who submits his work to the public.”
  
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  DL: The court uses two alternative governance tools to come to this result:
  
  • 
    Contract  cannot grant (by K) more rights than you have. If BBC was not (in license from MP) granted right to edit, cannot grant this right to ABC [SH: but this wouldn’t work if CR had been assigned to BBC or ABC…thus using K as means to maintain control over the integrity of a work only works where there is not assignment?]
    
  • 
    Moral rights  no stat basis for recognition of moral rights in U.S. Judge uses Lanham Act and pure justifications.
    

Computer Software

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  Printing press changed underlying parameters of CR, nature of rights and players. Computers have done the same. They have made copying easier, but have also made restricting access easier (SH).
  
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  Have also introduced the Q of how to protect computer software. It is definitely something we want to protect (people labour on it; it is useful to society and contributes to progress). But how should it be protected? Schlumberger rejected patent protection for computer software.
  
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  Computer software is a challenging resource for which some governance tool must be modeled. Challenging b/c looks like something that might be protected by CR (language, binary code, etc.) but also something that might be protected by patent (is process-based and performs a function)
  

Apple Computer v. Mackintosh Computers

Apple Computer v. Mackintosh Computers, [1990] S.C.C., CB I p. 365 Facts: Rspdt held reg’d CR in Apple II+ O/S since 1982. Program was written in code (CRed) and then etched into the glass of a silicon chip. Aplts, manufacturers of Apple II+ clones, copied the programs embodied in the chips by burning them onto other chips. Rspdt sued aplt for CR infringement. Aplt admitted that written assembly language versions of the programs were CRable, but argued that since they had copied only the silicon chip, they had not infringed this CR. Issue: Whether computer program originating in copyrightable written form continues to be protected by CR when it is replicated in the circuitry of a silicon chip. Held: Yes; Apple wins (at trial, in C.A., in S.C.C.) Ratio: Programs embedded in the silicon chip are both a reproduction and exact translation of the programs in assembly language and as such are protected by CR under s. 3(1) of the CA. These programs constitute a form of expression that is conceptually and functionally unique and cannot be regarded as a merger of idea and expression. Australian Computer Edge decision should not be applied in Canada. Australian court portrayed the silicon chip as a dynamic “sequence of electrical impulses” that could not be subject to CR. The appropriate approach in Canada is to view the silicon chip program as embodying a set of instructions in machine code which are designed to move information and perform other specified tasks, not as a dynamic interchange of electrical impulses. Silicon chip as static object encoded w/ written instructions, thus properly subject to protection by CR. Unauthorized copying = violation of CR.

POINT: Computer programs are static set of written instructions, and not a dynamic interchange of electrical impulses, and thus protected by CR and not patent. CR in such instructions is infringed when the silicon chip which embodies them is replicated.

Notes (DL):

• 
  DL thinks that Cory got it wrong in this case. CR is not the right tool to protect computer software.
  
• 
  There is another governance tool (ICT Act) which protects the layout of silicon chips, but it is rarely relied upon because CR provides longer and more robust protection.
  
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  Why isn’t CR the right tool to protect software?  Justifications for robust protection are absent:
  
  • 
    Labour – labour which goes into it can be rewarded/encouraged by much shorter protection
    
  • 
    Personhood – most software developed in teams thus product not embodiment of one’s self
    
  • 
    Utilitarian – life plus 50 protection exceeds the period of software marketability; WP 3.0 is totally obsolete and yet still protected; shorter protection will allow code to go into public domain and to enhance the ability of others to build upon that which has come before. Ability to profit (and therefore incentive to produce in the first place) doesn’t require such long protection b/c cannot profit after about 5 years anyway.
    

• 
  Apple deals with direct copying. How do we deal with competing software? What happens when someone takes the features of a piece of software and copies it?
  

Computer Associates Int’l v. Altai

Computer Associates Int’l v. Altai Inc., (2d Cir, 1992), CB I p. 368 Issue: Test for determining whether the non-literal elements of 2+ computer programs are substantially similar. Held: Court fashioned the Abstraction-Filtration-Comparison test Ratio: Step One: Abstraction Use the “abstractions” test for separating ideas from expressions Dissect the allegedly copied program’s structure [i.e. the “target” program’s structure] and isolate each level of abstraction contained w/in it. This process begins with the code and ends with an articulation of the program’s ultimate function [DL: try to figure out what the computer software, at its most abstract level, enables us to do. E.g. type text] Step Two: Filtration [DL: the critical step] Must separate protectable expression from non-protectable material, to leave behind a “core of protectable material.” [DL: try to filter out the parts of the program that wouldn’t be protectable (original) under CR doctrine. Trying to get at the kernel of originality.] Three types of non-protectable expression: Elements dictated by efficiency No protection for expression necessarily incidental to the idea being expressed Doctrine of merger: when there is essentially only one way to express an idea, the idea and its expression are inseparable – the idea and expression have merged – consequently, no protection Computer context – while there might, hypothetically, be a myriad of ways in which a programmer may effectuate certain fns w/in a program, efficiency concerns may so narrow the practical range of choices as to make only one or two forms of expression workable options. When specific instructions, even though previously copyrighted, are the only and essential means of accomplishing a given task, their later use by another will not be infringement, i.e. where particular set of modules is necessary efficiently to implement that part of the program’s process, it will not be protected Elements dictated by external factors Analogous to ‘scenes a faire’ doctrine No protection where program is dictated by extrinsic considerations such as (1) the mechanical specs of the computer on which a particular program is intended to run; (2) compatability requirements of other programs with which a program is designed to run in conjunction; (3) computer manufacturers’ design standards; (4) demands of the industry being serviced; and (5) widely accepted programming practices w/in the computer industry. Elements taken from the public domain E.g. elements of a computer program that have entered the public domain by virtue of freely accessible program exchanges and the like. Ptfs may not claim CR protection of an express that is, if not standard, then commonplace in the computer software industry. Step Three: Comparison Once all non-protectable elements are sifted out, there will remain a core of protectable expression. Court must determine whether the dft copied any aspect of this protected expression as well as assess the copied portion’s relative importance wrt the ptf’s overall program. Policy Considerations Line drawn btwn idea and expression impacts scope of CR protection thus line must be pragmatic one, keeping in mind the preservation of the balance btwn competition and protection. Interest of CR law is not merely in conferring monopoly on industrious persons but in advancing the public welfare through rewarding artistic creativity, in a manner that permits the free use and development of non-protectable ideas and processes. Need to encourage creative work but also serve cause of promoting broad public availability of lit, music and other arts. Test articulated in this case is consistent with the rejection of the “sweat of the brow” doctrine in Feist. It will not lead to dire consequences for the computer program industry. Finally, court observes that CR is not ideally suited to computer programs – is like trying to fit square peg in round hole.

POINT: Computer software – court must employ the abstraction-filtration-comparison test in order to identify those elements of the software, those kernels of originality, which are protectable by CR. Filtration is critical step – filter out non-protectable elements, i.e. those which (1) are elements dictated by efficiency [i.e. only really one way to accomplish a given task]; (2) are elements dictated by external factors [such as hardware, compatibility and industry standards/users expectations]; (3) are elements taken from the public domain. Then compare to see if the dft copied any of the protectable expression and, if so, if copied part was sufficiently impt to his overall program.

Notes (DL):

• 
  This A-F-C test was adopted in Canada in the Delrina case. Leave to S.C.C. refused.
  
• 
  Perhaps this test could apply in other contexts (e.g. factual compilations – alpha organization is an element dictated by external considerations, i.e. users expectations).
  
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  This test sets a high originality standard for computer software. At the end of the day, seems that not much of a computer program will be protected. Certainly not standard features such as pull-down menus, bookmarks, etc.
  
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  Consumer expectations figure prominently into what is considered a standard. Almost like trademark – become generic part of program and then lose their protection. DL asks – does this seem right?
  
• 
  Is better solution? – 2 years but much lower standard for infringement – i.e. no borrowing?
  

Schlumberger + Apple + Altai  It’s CR. Exact copy = infringement. Inexact copy = everything changes. Degree of protection is much lower. One will be much more hard pressed to prove what is original in that CR work. Higher standard of originality.

Directory: pubdocs -> files -> IntellectualandIndustrialProperty
files -> Chapter 1: Property as rights, not thing
files -> Insurance Law – May 4
files -> Contractual Obligations – Prof. Helge Dedek Introduction 1
files -> Constitutional Limits on Criminal Law 1
files -> Antonio Iacovelli Winter 2005 Advanced Criminal Law
files -> Private International Law – Prof. Walsh Summer 2005
files -> Part I – general 5 The Sources of Int’l Air Law 5 Q? How does customary law relate to int’l law?
files -> Topic One Seaworthiness and Common Venture, chapter 15
IntellectualandIndustrialProperty -> I – Introduction a – La nature des droits intellectuels

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