Entertainment & Media Law Signal : Canadian Entertainment Lawyers for Licensing, Intellectual Property & New Media Matters

With a hat tip to Mark Fowler, I thought it worth pointing to keepyourcopyrights.org (dubbed "a resource for creators"), a rich resource of sample clauses regarding grants of copyright rights, sample contracts from a variety of entertainment industries and general advice for contracts ranging from book publishing to photography (the site is based in the United States, so Canadian visitors to the site should be cautious about drawing any conclusions without speaking to a Canadian lawyer). 

One of the most interesting features of the site is its "critical review" of individual contract clauses, which includes a "thumbs up" (creator-friendly), "thumbs in the middle" (could be worse), "thumbs down" (creator-unfriendly) and "red claw of death" (incredibly overreaching).  The site is a great resource for anyone who needs sample clauses or anyone who wants to think critically about the language they are being asked to sign or review.

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The efficacy of tax credits for the videogame industry, has been the subject of a variety of coverage recently:

• No Go for UK Tax Breaks for Video Games Industry (includes details on why the UK government has thus far declined to introduce credit incentives for the industry)
• notwithstanding the foregoing, "Hollywood" continues lobbying efforts with the UK government - Hollywood Lobbying UK Government Over Gaming Tax Breaks
• the State of Michigan has also made moves towards eliminating its videogame tax credits - Michigan Gov. Seeks to Scale Back Game Incentives - Do Tax Credit Plans Work?

That last link (written by Drew Boortz and from Reed Smith's Developing Concerns blog) contains some very thoughtful commentary on the topic of videogame tax incentive programs, of which I'll only excerpt this:

One final though on this issue - it is possible that a straight cost-benefit analysis is not the only appropriate way to measure the success of a tax incentive program.  There are other considerations, including the revitalization of underprivileged areas, promoting education and STEM skills in the area's schools, etc., that may not lend themselves to a "hard cash" analysis, but are nevertheless worthy goals. 

In sum, the bottom line is that tax credits and incentives are tricky, complex beasts, and can cut for the better or for the worse.  I for one would like to see more study of this, but based on the limited information available from a comparison of two state systems (Texas and Michigan), it seems to me that games projects are well-suited for tax credit financing, and that treating games as their own form of media, both for the purposes of project approval and payouts, is a strategy worth considering.

For the current state of play on videogame tax incentives in Canada, PwC's The Big Table series of publications is invaluable: the most recent Big Table of Digital Media and Animation Incentives in Canada — August 2010 can be downloaded at the link.

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Pandora Media, Inc.'s Form S-1 (hat tip: Geist), filed with the US Securities and Exchange Commission on February 11, 2011, offers interested readers some detailed information not just about their financials, but also about the licensing arrangements that US-based online music services have to put in place:

(From the "What We Do" section): Our largest royalty expense arises from our use of sound recordings. We obtain performance rights licenses and pay performance rights royalties to the copyright owners of sound recordings, typically performing artists and recording companies, pursuant to the Digital Performing Right in Sound Recordings Act of 1995, or DPRA, as amended by the Digital Millennium Copyright Act of 1998, or DMCA. Under federal statutory licenses created by the DPRA and DMCA, we are permitted to stream any lawfully released sound recordings and to make reproductions of these recordings on our computer servers, without having to separately negotiate and obtain direct licenses with each individual copyright owner. These statutory licenses are granted to us on the condition that we operate in compliance with the rules of statutory licenses and pay the applicable royalty rates to SoundExchange, the non-profit organization designated by the Copyright Royalty Board, or CRB, to collect and distribute royalties under these statutory licenses. The rates we pay to SoundExchange for non-interactive streaming of sound recordings pursuant to these licenses are privately negotiated or set by the CRB. In 2007, the CRB set royalty rates for non-interactive, online streaming of music that were extremely high. In response to the lobbying efforts of internet webcasters, including Pandora, Congress passed the Webcaster Settlement Acts of 2008 and 2009, which permitted webcasters to negotiate alternative royalty rates directly with SoundExchange outside of the scope of the CRB process. In July 2009, certain webcasters reached a settlement agreement with SoundExchange establishing a royalty structure more favorable to us that by its terms will apply through 2015. This settlement agreement is commonly known as the “Pureplay Settlement.” Once the rates and terms of the Pureplay Settlement came into effect in July 2009, any qualifying commercial webcaster could elect to avail itself of those rates and terms by filing an initial notice, followed by annual notices, of election with SoundExchange through 2015. In July 2009, we elected to be subject to the Pureplay Settlement and have timely filed notices of election with SoundExchange for 2010 and 2011 and intend to continue to make such elections through 2015.

As the charts available in the filing show, the Pureplay Settlement, in setting rates for the non-subscription portion of Pandora's service, contemplates a licensee fee which has a floor of 25% of gross revenues.  And that does not include payments owing in respect of Pandora's use of compositions (which are the subject of separate licenses with ASCAP, BMI and SESAC, which shave another few points off gross revenues).  Indeed, as the Statement of Operations shows (page F-3 of the filing), Pandora spends an amount equal to approximately half of its gross revenues on content acquisition (meaning license fees payable to rights owners).  Puts the discussion from last fall about the license fees sought by Canadian music collectives in a slightly different light.

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Eriq Gardner at THR, Esq. reported earlier this month about a recent lawsuit filed in the United States: CBS Sued Over 63-Year-Old Song Used in 'Family Ties'.  A copy of the complaint can be found here.  The facts of the claim, as set out in the complaint, are fairly straightforward: in 1985, the producers of the sitcom Family Ties entered into a license agreement with the owners of copyright in a song entitled "The Texaco TV Star Theatre Theme Song".  The license agreement authorized use of the song in the television broadcast.  In 2008, the current owners of the rights in the sitcom decided to release episodes of the show on DVD - and only subsequently released that they had undertaken an activity which lay beyond the scope of the license they had entered into twenty-three years previously.  Attempts to enter into a retroactively effective license were unsuccessful, and the plaintiffs elected to bring the copyright infringement claim.

The dispute highlights the dangers, for producers of film, TV and other audio-visual content, of the dangers of entering into licenses for content which have a limited duration or a limited scope of authorized media.  It would have been a remarkably prescient individual in 1985 who could have foreseen that popular television shows would have an economically valuable afterlife as home video products - but bargaining for rights "in perpetuity, in all media whether now known or hereafter devised" would have saved some headaches down the line.

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[The following originally appeared in the OBA's Entertainment, Media and Communications Law Section Newsletter, vol. 20, no. 2 January/Janvier 2011]

This article explores the interface between Canada’s primary federal privacy legislation, the Personal Information Protection and Electronic Documents Act (“PIPEDA”), and the activity of filming or photographing an individual where the resulting film or photograph is used in a motion picture or television project. The following analysis seeks to answer the question of how and to what extent PIPEDA impacts on the ability of motion picture and television producers to film and photograph individuals for inclusion in an audio-visual project. It should be noted that the provinces of British Columbia, Alberta and Quebec have enacted legislation recognized as “substantially similar” to PIPEDA – but there are some material differences between the provincial legislative regimes and its federal cousin. The analysis below does not canvass the provincial legislation, and so caution should be exercised in transposing conclusions reached about PIPEDA to the relevant provincial context.

It is generally accepted practice among entertainment lawyers that a signed release authorizing the reproduction of a person’s image is required for each individual who appears identifiably on-screen in an audio-visual project. There are some widely-recognized limited exceptions to that general rule, such as the placement of prominently-displayed notices in “public” or general access locations alerting pedestrians or attendees that filming is taking place and that entering into the area or venue will be deemed to be authorization for the filming and reproduction of their image. Such an approach ensures, for instance, that “lifestyle” shows which depict weddings do not feature simply a haze of blurred-out faces when showing the crowd at the reception.

This article is an effort to articulate one of the underlying rationales for the generally accepted practices described above – namely, that obtaining a release which evidences the consent of the individual is possibly required under PIPEDA. In doing so, the goal is to allow for systematic and comprehensive analysis of the issue, so that treatment of the matter can become standardized and predictable, which will be of benefit to both counsel and clients. In proceeding through this analysis, it may be useful to keep in mind examples of the situation in which questions of this sort may arise: in the course of filming a couple dining in a restaurant, numerous other diners seated at tables in the background are clearly visible; while filming an interview with the subject of a documentary outdoors in a public park, multiple clearly identifiable individuals walk by in the background; a producer finds a photograph of a smiling family which she thinks would be an excellent piece of set dressing as a memento on the desk of her main actor.

What Does PIPEDA Require?

In a letter written by the Privacy Commissioner of Canada (the “Commissioner”) to Immersive Media Corp. in connection with the Google “Street View” application,¹ the Commissioner provided a concise statement about PIPEDA and the obligations it imposes: “Pursuant to PIPEDA, businesses that wish to collect, use or disclose personal information about people generally require individuals’ consent, and they may only use or disclose that information for the purpose for which individuals gave consent.” Section 4(1)(a) of PIPEDA states that its personal information protection provisions apply “to every organization in respect of personal information that the organization collects, uses or discloses in the course of commercial activities”. The operative elements of the Commissioner’s statement, which reflect legal obligations imposed by Sections 4, 5 and Schedule I of PIPEDA,² are (i) the collection, use or disclosure of (ii) personal information, which requires (iii) consent, and which may only be used or disclosed (iv) for the purposes for which consent was given. One of the analytically challenging aspects of the privacy regime under PIPEDA is that it is principles-driven – Schedule I of PIPEDA sets out a series of principles which inform obligations with which those subject to PIPEDA are expected to comply. The principles include such notions as “accountability”, “consent” and “limiting collection”. Rather than close scrutiny of individual terms or setting out detailed prescriptions to guide future actions, formal PIPEDA analysis as undertaken by the Commissioner focuses on developing the content of the principles in a purposive manner and developing “recommendations” for consideration. The analysis below attempts to reconcile those approaches in order to determine the extent to which the four operative elements of PIPEDA’s obligations, noted above, are present when an individual is filmed/photographed for inclusion in an audio-visual project.

Does a Person’s Image Constitute “Personal Information” About That Person?

Does a photograph or film record of someone’s face (ie their “image”) constitute “personal information”? The answer appears to be “yes”, though that answer, somewhat surprisingly, does not appear to have been considered in detail by either the Commissioner or the courts. Section 2(1) of PIPEDA states that

““personal information” means information about an identifiable individual, but does not include the name, title or business address or telephone number of an employee of an organization”.

The threshold question is whether an individual’s image or appearance constitutes “information”. “Information” is not defined in PIPEDA, but the word appears to function as a synonym for “data”. The Commissioner has issued an “Interpretation”³ on the meaning of “personal information”, which, while not legally binding, is best viewed as an authoritative guide. According to the Interpretation, “video footage” of an employee constitutes “personal information”, and “[v]ideo surveillance that captures an individual’s physical image or movement may also constitute his or her personal information”.

In the Google Streetview Letter, the Commissioner unequivocally stated that “[o]ur Office considers images of individuals that are sufficiently clear to allow an individual to be identified to be personal information within the meaning of PIPEDA”. Despite the relative lack of scrutiny of the matter, the most cogent argument concluding that an image constitutes “personal information” is premised on the fact that recordation, whether by means of film or digital device, of an individual’s image creates “information” which itself can be used to identify an individual. 

Is Filming or Photographing Someone a “Collection” of Personal Information?

The Commissioner’s decisions⁴ and the single court ruling⁵ which are cited in the Interpretation in support of the conclusion that a person’s image constitutes “personal information” do not themselves ever expressly consider the question of whether filming or otherwise recording a person’s image constitutes a collection of personal information – they simply assume that it does. When the Federal Court considered the matter, in the context of an appeal from the Commissioner arising from a complaint about the installation of video surveillance cameras at a workplace, the court stated “[c]learly, the factual matrix behind the applicant’s complaint to the Commissioner is the collection of personal information”, without further enquiring into the matter.⁶

Implicit in the Google Streetview Letter, the Commissioner’s Findings cited in the Interpretation and subsequent Commissioner’s Findings involving the photographing or filming of individuals,⁷ is the conclusion that filming or photographing an individual constitutes a “collection” of personal information. The Commissioner has also held that simply filming an individual, even without an actual recording of the image being kept, constitutes a collection of personal information;⁸ a fortiori a recordation of an image is a collection.

Does Exploiting an Audio-visual Project Constitute “Use” or “Disclosure” of Personal Information?

“Use” is not defined in PIPEDA, though it is treated in the Commissioner’s various findings and court decisions as an expansive concept. Reproduction of an image for public viewing (such as in a movie theatre or television broadcast) or private viewing (such as an individual watching a DVD at home) almost certainly constitutes “use” or “disclosure” of that image.

What Constitutes “Consent” in the Context of Making Use of Footage Filmed for Audio-visual Project?

It is important to note that privacy decisions are profoundly informed by context. The reasonable expectation of privacy which an individual might have will likely be quite different in each of the examples which were described at the beginning of this article: what constitutes a reasonable expectation, and hence informs the form and substance of the required consent, is going to be different when dealing with a family photograph, as compared to dining in a restaurant, as compared to walking in a public park.

Principle 4.3 set out in Schedule I to PIPEDA states that the knowledge and consent of the individual are required for the collection, use, or disclosure of personal information, except where obtaining such consent would be inappropriate (as would be the case, for example, when collecting information for fraud detection or law enforcement purposes). The Commissioner has published Your Privacy Responsibilities – A Guide for Businesses and Organizations (the “Guide”),⁹ which attempts to clarify what constitutes valid consent. The Guide indicates that consent must be obtained before or at the time of collection (i.e., filming or photographing) and that obtaining consent requires informing “the individual in a meaningful way of the purposes for the collection, use or disclosure of personal data”. The Guide goes on to provide that requests for consent should be communicated in “a manner that is clear and can be reasonably understood”, and that consent should not be obtained “by deceptive means”. Principle 4.3.2. provides that, for consent to be meaningful, the purposes for which the information is being collected “must be stated in such a manner that the individual can reasonably understand how the information will be used or disclosed”.

A signed consent form in which the individual acknowledges that they have been or will be filmed and that the recordation is going to be included in an audio-visual project, and specifies the manner in which the project will be exploited, will almost certainly constitute sufficient consent. The Commissioner has issued guidelines applicable in the context of overt video surveillance which seem to indicate that the posting of signs on the perimeter of an area where filming is occurring, thereby giving individuals the ability to avoid entering the area, can constitute sufficient notice to give rise to a valid consent.¹⁰ The guidelines also state that signs “should include a contact in case individuals have questions or if they want access to images related to them”, and Section 4.9 of Schedule I to PIPEDA provides that individuals should be granted access upon request to their personal information which has been collected.

A number of points should be made about how the foregoing principles inform the obligations of producers of audio-visual projects. As an example, it is not likely to be feasible to require filmmakers to allow individuals to have access to the images taken of them in accordance with Section 4.9 of Schedule I – most filmmakers lack the administrative wherewithal to respond to such requests. Further, while much of the discussion around obtaining “consent” presumes that written disclosure of the collection, use and disclosure of information is required, one can query whether that would apply in the context of an audio-visual project: to what extent has consent been obtained if someone is interviewed on-camera, with full awareness that they are being filmed and that the footage will be used in some kind of audio-visual project? To what extent is disclosure required of the precise ways in which that footage or project will be exploited required (e.g., in theatres, on DVD, via online streaming)? 

Are There Any Relevant Exceptions to the Application of PIPEDA?

PIPEDA contains one exception to its application which is of potential relevance for film and television producers.¹¹ Section 4(2) of PIPEDA states that the relevant provisions of PIPEDA discussed in this paper do not apply to:

(c) any organization in respect of personal information that the organization collects, uses or discloses for journalistic, artistic or literary purposes and does not collect, use or disclose for any other purpose [emphasis added]

Unfortunately for our purposes, only the term “journalistic” has been considered by the Commissioner or the courts.¹²

Qualifying for the exception under Section 4(2) would be a boon for producers of audio-visual projects, as it would liberate them entirely from the constraints of PIPEDA obligations, at least as they pertain to the collection and inclusion of images in audio-visual projects. A tension arises from the wording of the exception. Section 4(1)(a) of PIPEDA states that its personal information protection provisions apply “to every organization in respect of personal information that the organization collects, uses or discloses in the course of commercial activities” [emphasis added]. Section 4(2) operates to limit the extent of that application – and raises the question of whether the presence of “commercial” elements in an activity will “taint” that activity such that it does not qualify as “artistic”. In the sole decision by the Commissioner which considered the nature of the “journalistic” exception, a for-profit radio station was held to fall under the ambit of Section 4(2) when it disclosed the name and recordation of the voice of a caller to its crime tip-line.¹³ In that case, then, the presence of “commercial” elements did not “taint” the ability to qualify for the exception. Since many artistic or literary efforts are going to be undertaken in the presence of at least some commercial element or incentive, for the exception to be meaningful it would have to accommodate artistic endeavours rendered in the guise of commercial undertakings.

There are at least three areas for further inquiry under Section 4(2) for producers of audio-visual projects. First, can exploitation of any audio-visual project qualify as use for an “artistic” purpose, regardless of the nature of the project, or are different projects treated in different ways (eg is an over-the-top special effects-heavy action-adventure movie to be treated in the same fashion as a sombre avant-garde short film)? Second, are there some audio-visual projects which could qualify as “journalistic” endeavours in addition to or regardless of their qualification as “artistic” – such as documentaries? Is there a “timeliness” element to the latter analysis (eg does a subject need to be timely or of current concern in order to be “journalistic” or can “journalistic” cover a documentary about some historical event)? Finally, attention would need to be paid to the limitation imposed by Section 4(2): an image can be used or disclosed only for the artistic purpose. The scope of what constitutes an “artistic purpose” would require further development. For example, in light of that limitation, it is unclear whether images could also be used for promotional purposes – in other words, could the images be used in a “trailer” or advertisement for the project?

We can tentatively conclude that there is a strong possibility that the inclusion of an image in many audio-visual projects would qualify as a use for an “artistic” purpose, and thus outside of the scope of PIPEDA. Such a conclusion would mean that producers are free to collect, use and disclose (ie film or photograph an individual, and include that film or photograph in an audio-visual project) without the need to obtain consent from that individual in order to comply with the producer’s obligations under PIPEDA. That conclusion is, however, only tentative. It remains to be seen how the federal or provincial privacy commissioners will resolve the tension between the conflicting commercial and artistic imperatives present in the scope of PIPEDA and its exceptions. Until there is a definitive pronouncement from the Commissioner or the courts regarding the scope of the “artistic purpose” exception, prudent lawyers will continue to counsel their clients to obtain written confirmation of authorization from individuals who appear recognizably on-screen in an audio-visual production.

Conclusion

Although a definitive conclusion is difficult to arrive at, current industry practice seems to accord with PIPEDA’s requirements: producers generally obtain written authorization when recording the image of an individual and including it in an audio-visual project. In certain circumstances, primarily involving non-controlled environments such as public spaces or large private gatherings, prominently-displayed notices which permit individuals to decide whether to continue into the area where filming is taking place likely also comply with PIPEDA. The privacy regime set out in PIPEDA also offers an untested exception for “journalistic” and “artistic” projects, which may shelter audio-visual projects. The scope of the exception remains unclear, but in a worst-case scenario, where no written consent has been obtained and no written notice was provided, the exception may yet prove to be of significant value.

________________

¹ Letter from Jennifer Stoddart dated August 9, 2007, to Letter to Mr. Myles M. McGovern, President, CEO and Director, Immersive Media Corp., available at http://www.priv.gc.ca/media/let/let_070911_02_e.cfm [the “Google Streetview Letter”].
² http://laws.justice.gc.ca/eng/P-8.6/20090818/page-4.html.
³ Available at http://www.priv.gc.ca/leg_c/interpretations_02_e.cfm.
⁴ PIPEDA Case Summary #264 - Video cameras and swipe cards in the workplace - http://www.priv.gc.ca/cf-dc/2004/cf-dc_040219_01_e.cfm; PIPEDA Case Summary #290 -Video surveillance cameras at food processing plant questioned - http://www.priv.gc.ca/cf-dc/2005/290_050127_e.cfm; PIPEDA Case Summary #279 - Surveillance of employees at work - http://www.priv.gc.ca/cf-dc/2004/cf-dc_040726_e.cfm; PIPEDA Case Summary #114 - Employee objects to company’s use of digital video surveillance cameras - http://www.priv.gc.ca/cf-dc/2003/cf-dc_030123_e.cfm; see also Case Summary # 2002-89 – pilot taking photograph of airplane passengers - http://www.priv.gc.ca/cf-dc/2002/cf-dc_021112_1_e.cfm.
⁵ Eastmond v. Canadian Pacific Railway, 2004 FC 852 (CanLII), 33 C.P.R. (4th) 1 [Eastmond].
⁶ Eastmond at para. 111.
⁷ See, e.g., PIPEDA Case Summary #2009-007, available at http://www.priv.gc.ca/cf-dc/2009/2009_007_0504_e.cfm
⁸ PIPEDA Case Summary #2001-1, available at http://www.priv.gc.ca/cf-dc/2001/cf-dc_010615_e.cfm
⁹ Available at http://www.priv.gc.ca/information/guide_e.cfm#016
¹⁰ See Guidelines for Overt Video Surveillance in the Private Sector - http://www.priv.gc.ca/information/guide/2008/gl_vs_080306_e.cfm
¹¹ Section 7(1)(c) of PIPEDA states that an organization may collect personal information without the knowledge or consent of the individual if the collection is solely for journalistic, artistic or literary purposes. That exception, however, is of very limited utility for producers, as it only allows for the collection of personal information without knowledge or consent, and does not permit the use or disclosure of that information.
¹² PIPEDA Case Summary 2003-123 [http://www.priv.gc.ca/cf-dc/2003/cf-dc_030228_e.cfm] – “journalistic” purposes test was satisfied where local radio station recorded a phone call and used the name of an individual who called a “tip line” to report a crime he had witnessed.
¹³ PIPEDA Case Summary 2003-123 [http://www.priv.gc.ca/cf-dc/2003/cf-dc_030228_e.cfm].

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Last summer's Viacom v YouTube decision (copy of judgment available here), though currently on appeal, continues to have resonance - particularly for Canadian copyright and entertainment lawyers in light of the fact that Bill C-32 (The Copyright Modernization Act) contains a provision (dubbed, variously, the "YouTube exception", the "mash-up exception" or the "UGC exception") which would create an exception to copyright infringement for "Non-Commercial User-generated Content".

Wendy Serres, writing at IPilogue in To Mix or Not to Mix: Bill C-32 “Mash Up” Provision is Getting Attention, summarizes what recent submissions to the Bill C-32 legislative committee have had to say about the UFC exception. 

In User-Generated Content Sites and Section 512 of the US Copyright Act, Jane C. Ginsburg critically assesses the Viacom v YouTube decision, with particular focus on the issue of copyright liability for the entrepreneurs who create and provide access to sites such as YouTube and Facebook - both the very definition of UGC sites.

Stephen Zolf and I spoke in December 2010 about how the Viacom v YouTube decision might be seen to interface with the proposals found in Bill C-32 - our slides can be accessed here.

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The American University Center for Social Media has published its Code of Best Practices in Fair Use in Poetry.  While the analysis is obviously US-centric, this continues the AUCSM's practice of developing guidelines for industry participants regarding fair use analysis (see their previous Documentary Filmmakers’ Statement of Best Practices in Fair Use), and will be of interest for Canadian entertainment and copyright lawyers both for comparative purposes and for purposes of assessing the Documentary Organization of Canada's Guidelines to Fair Dealing Practices for Documentary Filmmakers (for previous Signal coverage of the latter, see here).

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Back in April of 2010, we posted about efforts in the UK undertaken by the producers of Coronation Street to protect their interest in a fictional brand of beer featured on the show (Trade-mark Protection for a Fictional Beer).  With a hat tip to the indispensable Lon Sobel at Entertainment Law Reporter, Benjamin Arrow has written a great article on protecting fictional trade-marks: "Real-Life Protection for Fictional Trademarks" (21 Fordham Intell. Prop. Media & Ent. L.J. 111). 

Assessing the question from the point of view of US law, Arrow looks at trade-mark and copyright issues relating to the protection of fictional brands, with nods to the case where DC Comics sought (and obtained) an injunction against someone publishing a newspaper called The Daily Planet, and the seminal Australian case on the topic, wherein the producers of The Simpsons, sought to prevent use of the word "Duff" in connection with the sale of beer (Twentieth Century Fox Film Corporation and Matt Groening Productions Inc v the South Australian Brewing Co Ltd and Lion Nathan Australia Pty Ltd [1996] FCA 1484).

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As we've discussed previously here at the Signal (Title Dispute - Similar or Identical Titles for Film and TV Projects) the extent to which the "title" of a motion picture or television project can function as a trade-mark involves a fairly detailed analysis.  Leonard Glickman has published "What's In a Title?" (hat tip: Entertainment Law Reporter), which offers a lengthy consideration of the matter, including a discussion of the possibility of a title which would otherwise be unprotectable as a trade-mark acquiring a "secondary meaning".  As Leonard notes in his conclusion:

In light of the foregoing restrictions with respect to the protection and registration of titles, what options are available to producers of films or other single work titles? In Canada, an applicant could apply on a proposed use basis for a series of works and stretch out the application process by extending the time frame for filing a declaration of use. In the interim, the applicant could produce and release a sequel thereby creating a series and removing obstacles to registration and enforceability. Even if a sequel is not produced and the application is abandoned, the producer can start to build secondary meaning in the title and attempt to enforce its rights in the title against third parties. When filing the application, the applicant must have a bona fide intent that it will produce a series of productions. Otherwise, the application or registration may be open to challenge under Section 30(i) of the Canadian Trade-marks Act.

US commentators have suggested there is merit to registering single work titles under the state registration system. Although the registrations have little substantive value, they will be disclosed in title search reports and potentially deter a third party from adopting the title. Another method used to protect titles is to register proposed titles with the Motion Picture Association of America’s Title Registration Bureau, the members of which are the Hollywood studios and hundreds of independent production companies. Once a title is so registered, other members of the Bureau are bound by the Bureau’s rules which impose restrictions on their ability to adopt and use the same title or a confusingly similar title.

On a slightly tangential (but related, really!) point, Samuel M. Duncan's article "Protecting Nominative Fair Use, Parody, and Other Speech-Interests by Reforming the Inconsistent Exemptions from Trademark Liability", while bearing a bit of a mouthful of a title, offers an excellent overview of US trademark law and, of particular value for entertainment lawyers, provides the tools to assess when the use of a trademark in an audio-visual project is shielded from claims of infringement.

Finally, with a hat tip to the Dear Rich blog, an interesting little tidbit about depicting trademarked tobacco products in movies.  As readers of the Duncan article, linked to above, will know, the mere depiction of a trademarked product in a film or TV project may not give rise to a viable infringement claim (though often E&O policy clearance requirements will nevertheless prohibit such a depiction) - notwithstanding that, however, Philip Morris has made this rather polite request to film and TV producers:

Unfortunately, the fact that we do not engage in product placement does not mean that our brands are never shown. Some producers and directors choose to depict our brands in their work without our permission. But we are limited in our ability to stop all displays of our brands because federal and state trademark laws, as well as the U.S. Constitution, protect freedom of expression and the "fair use" of trademarks in works such as movies and television shows. Our position is clear – we do not want our brands or brand imagery depicted in movies and television shows. The unauthorized use of our brands and brand imagery perpetuates the misunderstanding among some that we pay or are otherwise responsible for these depictions, which is simply not the case. We strongly encourage the movie studios to eliminate references to or depictions of our brands.

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Selected materials for consideration about Bill C-32 (The Copyright Modernization Act):

• Joint Statement on Bill C-32 issued by a consortium of Canadian cultural industry organizations
• Association of Universities and Colleges of Canada (AUCC) submission to the Bill C-32 legislative committee
• Michael Geist's Roadmap to a Compromise on Bill C-32
•  The Canadian Bar Association's National Intellectual Property and National Privacy and Access Law Sections have released their submission to the Bill C-32 legislative committee

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Who owns the copyright in an interview?  While this may seem to be an obscure (or least inconsequential) question, it has relevance not just for journalists, but for freelance writers, documentarians, creators of non-fiction works and novelists.

We should distinguish between different types of interviews: (1) verbal interviews which are either transcribed (using short-hand, for example) or recorded (using, say, a digital voice recorder) by an interviewee; (2) filmed interviews; and (3) written interviews in which the interviewer and interviewee exchange written questions and responses (via email, for instance).  Each of these interviews can be protected by copyright in a variety of ways: (a) an interview which is reduced to writing would be protected as a "literary work"; (b) an interview whose audio portion is recorded would be protected as a "sound recording"; and (c) an interview which is filmed would be protected as a "cinematographic work".

Who then "owns" the copyright in each of those three different situations?  For verbal interviews which are recorded or transcribed, Canadian courts have concluded that the person responsible for turning the interview into written words is the presumptive author and owner of the work (we'll set aside for the moment the question of whether and when an interview might be a "work made in the course of employment" - such as where a journalist is a staff employee of a broadcaster or newspaper).  The Federal Court of Canada, in Neugebauer v Labieniec, 2009 FC 666 (CanLII), noted the following:

[39] In Gould Estate v. Stoddart Publishing Co. 1996 CanLII 8209 (ON S.C.), (1996), 30 O.R. (3d) 520 (Gen. Div.), aff’d 1998 CanLII 5513 (ON C.A.), (1998), 80 C.P.R. (3d) 161 (Ont. C.A.). Glenn Gould, who was the subject of the literary work, contributed substantially to the content of the work in the form of statements given in interviews. However, the author was held to be the person who conducted interviews and performed the creative task of assembling his statements into a literary work. Accordingly, Gould states that people do not have copyright in a work simply because they are its subjects or respond to questions in interviews. Following Gould, Hager v. ECW Press Ltd., 1998 CanLII 9115 (F.C.), [1999] 2 F.C. 287, 85 C.P.R. (3d) 289, at para. 24, noted that:

Under Anglo-Canadian law, insofar as private interviews are concerned, it is the person who reduces the oral statements to a fixed form that acquires copyright therein. That individual is considered to be the originator of the work.

That reasoning would seem to apply with equal force to situations involving a sound recording of an interview or a filmed recordation of the interview: whoever was responsible for "fixing" the interview (ie responsible for the recording or the filming) would be the presumptive author and owner of the resulting sound recording or cinematographic work.

This seemingly straight-forward rule, however, still leaves some areas unclear: who owns copyright in an interview conducted via email? There, the person answering the questions will be the one responsible for "fixing" their responses, and so would appear to have copyright in those answers (the person conducting the interview via email would presumably have copyright in the questions which are posed, and in the arrangement of the questions and answers).  

Questions of ownership can become important if an interview is used by a third party in some unauthorized fashion - for instance, if a blog, magazine or book reproduces some or all of a written interview previously published elsewhere, or if a blog or television show reproduces some or all of a filmed interview first broadcast elsewhere,  the identity of the proper plaintiff to claim infringement would need to be considered.

Tangential to the question of "ownership", but often no less important, is the question of whether the use made by the interview of the interview constitutes a breach of a condition or limitation placed on the use of the interview by the interviewee.  For example, an interviewee might say that the interview is conducted solely on a "no attribution" basis, or that the interview can only be used in connection with publication in a particular venue (such as a particular magazine or particular television show).  In such a situation, the aggrieved interviewee may try to bring an action for breach of contract - and then the question will devolve into a consideration of what terms, if any, were agreed to by the parties. 

[Inspiration for this post was provided by Mark Fowler at Rights of Writers - and that post is highly recommended for anyone interested in how the question this posts poses might be answered in the United States.]

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• From the "old, but new to me" file, the Future of Music website has an interesting post listing The 29 Streams: twenty-nine streams of revenue which "music" can "generate".  Some are a bit of a fudge - "government grants" isn't really what I'd consider a "revenue stream" - but the post offers a handy, and nicely-detailed, explanation of how composers, performers and owners of sound recordings can monetize their "assets".
• The Economist offered a brief overview of changes to the concert-pricing paradigm in Live music: pricing the piper.  A couple of interesting innovations appear to be afoot: dynamic pricing (where tickets become more expensive closer to the date of performance, or prices fluctuate in accordance with demand) is particularly interesting, and seems to be similar to what the airline industry already does (meaning that concert-goers will now get to enjoy that unique feeling of never being quite that you didn't just overpay for your ticket...).  It's also worth remembering what the Economist notes: "At least four players are involved in putting on a live-music show: an artist, a promoter, a ticket-seller and a venue."
• With a tip of the hat to Entertainment Law Reporter, Richard Watt has written a fascinating article (of course, I can't claim to understand much of the math used in the article) on the "correct" price for music licenses for radio broadcast (in other words, how much should a radio station have to pay in order to license music for use on air?): Fair Copyright Remuneration: The Case of Music Radio. The article is of interest for anyone considering how the Copyright Board of Canada sets tariffs for music exploitation. (Slightly frightening point from the article's conclusion: radio play appears not to increase the sale of music.)
• Chris Castle offers a lengthy consideration of How Not to Monetize File Sharing. 

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JETLawBlog has an interesting post up about the ongoing dispute between concert impresario Michael Cohl and LiveNation (Upcoming Rolling Stones Tour Fuels the Battle between Live Nation and Michael Cohl) - of particular value is a link to the purchase agreement which memorialized the "divorce" between the parties.  The agreement provides an intriguing drafting precedent in a number of respects: from the structuring of the payments and the description of the assets, to, in particular, the manner in which the non-competition provisions were handled.

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Further to an earlier post (Chilean Miners: Now That They're Out, What Rights Can They Sell?), Jeremy Phillips, writing in the Journal of Intellectual Property Law & Practice, has posted an interesting short comment (Instant branding, Chile-style):

Branding is a slow process because it requires time to educate the consumer as to what the brand value means, and then more time for the consumer to assess the full meaning of the brand proposition, to decide if it fits the consumer's wish-list and to try it out.

Some forms of branding, for example event brands, can cut corners and accelerate the process of adoption by the public, but usually at the price of their sustainability. Thus Beijing 2008 was an immensely commercial brand proposition for businesses in the years leading up to the Olympic Games held there. Bidding for the right to use it was competitive and laws gave it extra protection. Its core values of international competitiveness and individual excellence were meaningful to consumers and producers alike—yet now the brand is all-but-valueless. London 2012 has replaced it, with Rio 2016 awaiting its turn.

Another form of brand that can spring suddenly into a state of commercial viability is that which is born of the moment, a creature of opportunity. ... A far greater event in terms of its global appeal, and far more likely to be exploited on a grand commercial scale, is the ‘Los 33’ brand, representing the dreadful plight, stalwart resilience, and unprecedented rescue of 33 trapped Chilean miners from what would otherwise have been a slow, dark, and horrific death.

But what can one do with the brand? The first thing a trade mark attorney wants to know is what classes of goods and services in the Nice Classification should be made watertight by registration. While some things are unlikely to benefit from such branding it is by examination of the brand's core values that one is likely to reach a commercially realistic conclusion.

Jeremy had also written earlier at the IPKat blog about the potential weaknesses of the "Los 33" brand.  The "Los 33" mark comes from the note which the then-trapped miners had sent to the surface, containing the message "Estamos bien en el refugio los 33" (rough translation: "we are alright in the refuge, the 33").  A search of the Canadian Intellectual Property Office's trade-marks database indicates that no filing has been made in respect of the "Los 33" mark.  The US Patent and Trademark Office's database shows two filings, both from October 2010 (when the Chilean miners story was at its peak in terms of media coverage) - and covering, respectively, wines (the applicant appears to be a Chilean winery) and athletic apparel (the applicant appears to be a private US individual).

Among the different questions which are raised by the prospect of a "Los 33" trade-mark registration: Who would be the owner? (The ideal situation would presumably involve all thirty-three of the miners joining together in some kind of association, whether corporate or otherwise, and then the mark being registered in the name of that association.) To what extent could any one of the thirty-three use the mark in the absence of consent from the others? What would be the ideal mechanism for decision-making in such a large group on how to make use of the mark? (Examples would include majority-rule votes, unanimity, delegation of authority to one or more "officers", etc.)

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[The good folks at The Hill Times were generous enough to publish the following op-ed of mine in their January 24, 2011 edition.]

Copyright is contentious, in some cases intractably so, but the way in which we approach copyright reform is making matters worse.

As Sara Bannerman notes in her essay in From "Radical Extremism" to "Balanced Copyright": Canadian Copyright and the Digital Agenda (edited by Michael Geist), in 1923 copyright was referred to as “the most controversial subject that has ever been before the Parliament of Canada” – so the fact that that copyright reform generates heated, sometimes vicious, rhetoric is nothing new. Unfortunately, the methods we use to reform copyright are likewise not new, and so a cycle of failed efforts at reform perpetuates itself. Bill C-32 (The Copyright Modernization Act), currently before legislative committee, represents the third attempt in the last ten years to achieve comprehensive reform – and that is precisely the problem.

Recent copyright reform efforts, like Bill C-60, Bill C-61 and particularly the current Bill C-32, read as if they are striving to solve every conceivable copyright concern in one fell swoop. To nobody’s surprise, they fail to achieve that goal. Bill C-32 covers at least thirteen different major aspects of the copyright regime – from photography to internet service provider liability to so-called “format shifting” – any one of which is fertile enough ground for virtually ceaseless lobbying, debate and fine-tuning. Other than the fact that they all fall under the general heading of “copyright”, there is little which binds the various matter together. Copyright, and those Canadians who are affected by it, would be far better served if Parliament avoided efforts at omnibus legislative reform and opted instead for piece-meal “fixes” of discrete problems.

As an example, why should updating our legislation to allow for the ability to record and watch a television program without the prospect of incurring liability for copyright infringement (something which has been an issue since the advent of the VCR a generation ago) be contingent on also revising the scope of various educational institution exceptions? It would of course be wonderful if we could “solve” all the outstanding copyright problems at once, but yoking multiple individual problems together, particularly the much-more controversial with the much-less controversial, merely jeopardizes any advancement on any front. Issues on which there is relatively broad consensus (such as format- and time-shifting) get packaged with issues which seem set to dissolve into wars of attrition (such as technological protection measures or “digital locks”).

And, of course, the comprehensive reform approach virtually inevitably overlooks a few issues of concern. The matter of Crown copyright remains unaddressed by Bill C-32, as does the open question of the identity of the “author” of a motion picture. These may be minor affairs in the grand sweep of the copyright debate, but the adoption of a “once per decade” approach to copyright reform means that live issues overlooked now will not be addressed for many years. Brute political calculus rules the copyright reform agenda – instead of legislating to get efficient and practical reforms, we get legislation which seeks to give just enough marginal benefit to every possible stakeholder that they are willing to overlook the negative aspects of other parts of the bill.

Omnibus legislation poses at least two dangers. First, given a surplus of information and deficits of time and attention, not all elements of the legislation may receive the scrutiny which is warranted, allowing unanticipated problems or infelicities of drafting to “sneak through”; second, good elements can be outweighed or “crowded out” because of bad elements. Positive amendments may be lost because the negative amendments are so deleterious that we cannot in good conscience pass the legislation simply in order to obtain the good parts.

We would be better served by discrete, targeted amendments to the Copyright Act, introduced in a timely fashion and which can each be assessed on their own merits. Repeated failed attempts at omnibus amendments serve the interests of few, except lobbyists and lawyers. Just as the music industry has seen fit to “unbundle” its offerings, moving from selling entire albums to individual tracks, so too should copyright reform be approached in a way which allows for incremental improvements. Otherwise we remain the unwitting victims of an “all or nothing” approach which advance the interests of none.

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