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

Canadian entertainment lawyers are forced to look on in wonderment (and envy?) at the plethora of entertainment law-related legal disputes which arise in the United States.  Now (finally!) one with a Canadian angle - Gingrich ordered to stop using Heavy song

U.S. presidential hopeful Newt Gingrich's campaign is striking a sour note with a Montreal record label.

Third Side Music has sent Gingrich's team a cease and desist order demanding they stop using the song "How You Like Me Now" at campaign events.

The song is by the British band The Heavy, and the Third Side record label holds the rights to it.

In recent years, particularly in the 2008 US presidential campaign, assertions of copyright intended to stop politicians from making use of songs reached such a fever pitch that it was one of the primary topics of discussion on Ben Sheffner's late, lamented blog (from which this post swiped its name) Copyrights & Campaigns, and the US Center for Democracy and Technology published a 2010 report entitled Campaign Takedown Troubles: How Meritless Copyright Claims Threaten Online Political Speech.  There are also some great law journal articles on the topic: for example, Erik Gunderson's "Every Little Thing I Do (Incurs Legal Liability): Unauthorized use of Popular Music in Presidential Campaigns" (14 Loy. L.A. Ent. L.J. 137 (1993-1994)) and David Johnston's "The Singer Did Not Approve This Message: Analyzing the Unauthorized Use of Copyrighted Music in Political Advertisements in Jackson Browne v John McCain" (27 Cardozo Arts & Ent LJ 687 (2010)).

What is the position under US copyright law regarding the use of songs by political campaigns?  First, we need to draw a distinction between using a song at a public event, like a rally, and using a song in an advertisement - the legal restrictions are different in the different circumstances.  Tamera Bennett provides a handy summary of the relevant legal implications:

...so long as a campaign secures the necessary public performance license, a song can be played at campaign events without any permission from the artist, songwriter or music publisher.  If Mr. Gingrich would like to incorporate the song into a video or advertisement, then his team would need to secure a master use license from the record label and a synchronization license from the music publisher.

Fairly simple: in the US, using a song at a public event requires only the securing of a valid public performance license from a performing rights organization (such as ASCAP, BMI or SESAC) by either the campaign or the venue at which the event is being held.  Beyond requiring that a public performance license has been secured, it seems that an artist or record company has no other ability to restrict the use of a composition or recording at a political event.  If, however, a political campaign wants to make use of a song in an ad, then a synchronization license and a master use license would be required.

So, if that's the case, on what basis might The Heavy and Third Side Music be objecting to the Gingrinch campaign's use of "How You Like Me Now"?  After all, available news reports indicate that the song was only being played at public events and not being used in ads, and it would be a pretty basic error for either the venue to not have a license or the campaign to not have acquired what is referred to as a "travelling blanket license".  What gives?

Here's where the differences between Canadian and US copyright laws come into the picture (Canadian copyright law is relevant because the record label is in Canada and it was evidently a Canadian lawyer who sent the letter to the Gingrinch campaign).  In Canada, the Copyright Act (Canada) gives to authors rights referred to as "moral rights".  The relevant part of Section 14.1 of the Act reads as follows:

The author of a work has, subject to section 28.2, the right to the integrity of the work...

Section 28.2 of the Act elaborates on what "integrity of the work" means:

The author’s right to the integrity of a work is infringed only if the work is, to the prejudice of the honour or reputation of the author,

(a) distorted, mutilated or otherwise modified; or

 

(b) used in association with a product, service, cause or institution.

 

Thus, under Section 28.2, the use of a composition "in association with a ... cause" which "prejudice[s]" the "honour or reputation of the author" would constitute an infringement of the author's moral rights.

Regrettably, we don't have any Canadian caselaw on point which would help us analyze the circumstances in which a Canadian author might be able to successfully claim an infringement of his or her moral rights if the author's song has been used by a Canadian political campaign.  Presumably the use of a song by a politician who does not enjoy the support of the author could constitute the necessary prejudice, since Canadian courts have held that the question of whether prejudice has occurred is a subjective one - essentially meaning that so long as the author thinks their reputation has been prejudiced, and so long as the author's opinion is "reasonably arrived at", then prejudice will have been deemed to occur (see Snow v. The Eaton Centre Ltd. (1982) 70 C.P.R. (2d) 105).  It doesn't take a very limber imagination to envision an artist who does not want their work used by a politician.

So, does that answer the question? Do The Heavy have a right to stop the Gingrich campaign from using their song?  Well, we're not quite there yet.  A list of just some of the issues which remain outstanding:

• first, the Gingrich campaign is operating in the US - which does not recognize moral rights for authors (or, properly, only recognizes moral rights for authors of works of visual art, such as painting and sculpture) - so someone could not assert a moral rights claim in the US
• second, the UK (from where The Heavy hail) only recognizes a more limited form of moral rights as compared to Canada - and the UK version of moral rights does not include the "used in association with a cause" branch which is found in the Canadian Copyright Act - The Heavy wouldn't suddenly acquire expanded moral rights simply because their record company was located in Canada
• third, moral rights are held by authors, not by record companies or music publishers - if anyone wanted to complain here, it would have to be The Heavy themselves (assuming they are the authors of the song in question), not their surrogates
• fourth, it would be interesting to inquire whether The Heavy (again, assuming they are the authors of the song in question) had waived their moral rights in any kind of music publishing contract they had signed

In sum, then, can The Heavy prevent the Gingrich campaign from using their song at public events?  Not under US law.  Could they prevent a Canadian politician from using their song at a public event in Canada? Possibly - though if they wanted to take the dispute to court they would certainly be breaking new ground in Canadian copyright law.

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After it was announced that Shanghai will soon have its own Disneyland theme park, and just when you thought Mickey Mouse could not get any bigger, he announces that Disney is planning to open 25 to 40 stores across major cities in China. While some North American brands are hesitant to do business in China because of counterfeiting and intellectual property rights issues, Mickey Mouse is not afraid.

Below is a brief comparison of certain intellectual property laws in China and Canada:

Trademarks

China operates on a first-to-file system, which makes trademarks available to third parties with no evidence of past use or ownership.

Canada operates in a similar fashion, however, the Canadian Intellectual Property Office (CIPO) requires evidence of prior use or ownership, and allows third parties to contest such registrations. This system is more akin to a first-to-use system (for clarification, see Masterpiece Inc. v. Alavida Lifestyles Inc., 2011 SCC).

 A key difference between Chinese and Canadian trademark law is enforcement levels. To avoid potential enforcement issues, foreign businesses should register their trademarks with China’s Trademark Office in Beijing and companies should register Chinese versions of their trademarks before entering the market. Apple learned this lesson the hard way. For more on that, click here.

Copyright

In China, registration is not required for copyright protection. Although copyright protection is offered in China to individuals whose countries are members of copyright international conventions or bilateral agreements, registration should be completed to combat potential enforcement issues.

China subscribes to the basic standards of copyright regulation, as signatories to the Berne Convention and the Trade-Related Aspects of Intellectual Property Rights agreement (TRIPS). For example, Canada's fair use exception is not mirrored in Chinese copyright law, which only has explicit exceptions for private study, comment, or news media. Accordingly, it is unlikely that a court would interpret these exceptions to include expressions like political speech.

Over the past few decades, China has strived to improve its intellectual property laws, and is gradually moving towards more comprehensive protective measures. It is a signatory to the World Intellectual Property Organization (WIPO), the Paris Convention, and TRIPS, in addition to other international intellectual property treaties. China has also established judicial mechanisms to settle intellectual property disputes, with an intellectual property rights trial division that has jurisdiction over all intellectual property matters not involving criminal or administrative law. Additionally, the Supreme People’s Court of China has recently established the Intellectual Property Rights Office which provides guidance for intellectual property proceedings.

In addition to these judicial measures, China has implemented administrative mechanisms to protect and enforce intellectual property rights. The country’s Trademark Office oversees the registration and administrative controls of trademarks, and also handles infringement issues. Similarly, the China National Copyright Administration investigates copyright infringement cases. On the enforcement side, the Chinese Customs Agency investigates goods suspected of violating Chinese intellectual property laws, and can detain such infringing products. Despite these improvements, countries including Canada and the U.S. remain concerned about China’s ability to enforce IP rights. These concerns often revolve around copyright-protected products such as books, DVDs and software.

Disney is no stranger to the Chinese judicial system, having won a copyright infringement case in 1995. In Walt Disney Co. v. Beijing Youngsters and Children Publishing House, Disney pursued an action for the illegal production and distribution of children’s books featuring some well-known and loved Disney characters. While the court awarded Disney a lower sum than it had claimed, the win was seen as a promising sign in the mid-90’s that enforcement mechanisms are available, and continuing to evolve.

*Special thanks to Monique Ashamalla, Student-at-Law, for her intellectual property law research assistance

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If you favorite website went black last week during the "Dark Wednesday" protests against the proposed SOPA and PIPA legislation and you don't know what the big deal was (much less what SOPA and PIPA stand for), below are a collection of articles that will catch you up.

• A very good nice overview of recent events and some history of the legislations by Larry Downes writing in Forbes.
• Steve Forbes writing in Forbes on why this legislation is, in his view, bad for business.
• Bill McGeveran writing in The Guardian on why the proposed legislation has only been temporarily delayed and suggestions to make it better.
• Michael Geist writing on the Huffington Post on the potential implications of SOPA and PIPA for Canadians.
• An interesting piece by Kim Masters in the Hollywood Reporter recounting some of the history of the legislation and the relationship between the MPAA, some of Hollywood's leaders and this legislation. 

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Music Canada has released (hat tip: Sundeep Chauhan - @CopyrightReport) a handy publication entitled Licensing Digital Music in Canada, which, starting on page 6, provides useful charts and links to describe what licenses are needed to provide different types of online music services (e.g., for digital downloads, talk to the record labels, SOCAN and CMRRA).  Contact information is provided for all the relevant copyright collectives, the major labels and a slew of indie labels.

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The good folks at the Lawyers Weekly have published a short commentary of mine on the introduction in Canada of a droit de suite (or resale right) for visual artists.  The article can be found in its entirety here, and here is a brief excerpt:

In an age when the challenges of digital technology dominate copyright reform discussions, the world of auctioneers and brushstrokes may seem quaint. But there is an issue among Canadian visual artists that is just as crucial as digital downloads: The lack of a droit de suite, entitling artists to a share of revenues when their art is sold, leaves Canada out of step with many peer countries.

A droit de suite entitlement may at first appear to be not even a copyright issue, since no “copying” is involved in a sale of art. However, s. 3(1)(g) of the Copyright Act already takes special account of works of visual art by granting artists the exclusive right to control public exhibition of their works, which also does not entail making any copies.

There have been a few recent discussions at other forums about droit de suite / resale rights in other jurisdictions which I thought worth highlighting:

• UK droit de suite comes into law
• All You Need to Know About the Right of Resale Lawsuits
• Droit de suite: Lobbying for Resale Rights in the United States
• California Resale Royalties Act

For previous Signal discussion on the droit de suite, see here.

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Selected commentary and information on Bill C-11 (The Copyright Modernization Act):

• Jay Kerr-Wilson offers his thoughts on Bill C-11: Canada's new Copyright Act earns a mixed review
• James Gannon on Bill C-11's digital lock provisions and "fair dealing" in the education community
• Hansard for the parliamentary debates on Bill C-11: Day Two (October 21, 2011); Day Three (November 14, 2011); Day Four (November 22, 2011); Day Five (November 24, 2011)
• John Degen: Should we move from copyright to workright?

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Two recent court decisions (one Canadian, one American) serve as useful reminders that binding contracts and assignments of rights can be created via exchanges of emails almost as easily as they can be created by "written" documents.  In the entertainment industries, which sometimes exhibit fast-moving and casual interactions in which the intention of the parties to create binding contractual commitments is not always clear, it is worth being cognizant about the fact that email communications can bind you to a deal.

As Mark Weisleder notes in the Toronto Star (Can You Sell Your Home by Email?), a recent court decision in New Brunswick has held that a binding contract for the sale of real property (in this case a condominium) can be created via email exchange (it should be noted that leave to appeal has been granted by the Court of Appeal of New Brunswick).

In the United States, the Court of Appeals for the 11th Circuit (Hermosilla v The Coca-Cola Company) has confirmed that copyright can be transferred by exchanged emails which constitute a contract.  In Hermosilla, it was held that copyright in Spanish lyrics crafted by the plaintiff had been transferred to the defendant because the exchanged emails constituted a binding agreement, even though the parties intended to enter into a long-form written contract but never actually did so. (The Property, Intangible blog has a nice overview of the Hermosilla case - hat tip: Clancco)

Students of Canadian copyright law might query whether these decisions are of relevance to Canadian copyright questions - doesn't Section 13(4) of the Copyright Act (Canada) require transfers of copyright to be "in writing"? The Act states that "no assignment or grant is valid unless it is in writing signed by the owner of the right in respect of which the assignment or grant is made". The question of relevance will be answered by reference to provincial/territorial legislation: in Ontario, for example, the Electronic Commerce Act stipulates that "a legal requirement that information or a document be in writing is satisfied by information or a document that is in electronic form if it is accessible so as to be usable for subsequent reference" (Section 5) and also clarifies that "a contract is not invalid or unenforceable by reason only of being in electronic form" (Section 19(3)).

Exchanging emails is often useful because it can assist in providing a documentary record of discussions between the parties - but parties should be careful not to inadvertently create a binding contract (whether or not involving a transfer of copyright).

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Selected commentary and information on Bill C-11 (The Copyright Modernization Act):

• Hansard for the October 18, 2011 discussion in the House of Commons on Bill C-11
• Legislative Summary of Bill C-11
• James Gannon: 5 Steps to Understanding Bill C-11 and "Digital Locks"
• Michael Geist: Why Copyright Reform is Not the Cure for What Ails the Music Industry (which includes discussion on the statutory damages, TPM and ISP liability provisions in Bill C-11)
• James Gannon: Bill C-11 and Statutory Damages - a Guide for Canadian Copyright Law
• Andrei Mincov has created a version of the Copyright Act as it would look with Bill C-11's changes included

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Music Canada, the trade association which "represents Canada’s major [record] labels", has a very handy "licensing primer" on its website, which includes a nice little table summarizing (with links) which collectives you need to obtain licenses from in order to obtain authorization to do certain things with "song" (e.g., talk to AVLA if you need permission to reproduce a sound recording, talk to CMRRA if you need permission to reproduce a composition).

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In honour of Hallowe'en, I wanted to highlight some copyright- and entertainment law-related posts from Jonathan Bailey at PlagiarismToday (which, if you aren't already a fan, should be added to everyone's must-read list for copyright-related information and commentary):

• How Universal Re-Copyrighted Frankenstein’s Monster
• How a Copyright Mistake Created the Modern Zombie
• Dracula vs Nosferatu: A True Copyright Horror Story

I would be remiss if I didn't mention Jonathan's classic 2010 post 5 Copyright Issues for Hallowe'en, which covers such issues as obtaining public performance licenses for the soundtrack you use to add extra "spook" to your haunted house and trade-mark protection for the catchy name you came up with to attract attendees.

Continuing with the theme, from the Copylaw blog:

• Do Albert Einstein Costume Kits Violate His Right of Publicity?

And, finally, some Hallowe'en-themed Canadian caselaw:

• 868756 Alberta Ltd. (Urban Metropolis Entertainment Group) v. 1252654 Alberta Ltd., 2011 ABQB 617 (CanLII)(in which the court declines to issue an injunction over the use of the phrase "Halloween Thriller" to promote a Hallowe'en event at a nightclub)
• Advance Magazine Publishers Inc. v. Farleyco Marketing Inc., 2009 FC 153 (CanLII) (a startlingly detailed consideration of the extent to which the mark "GHOULISH GLAMOUR" was confusing with "GLAMOUR", and which includes the immortal line "Farleyco, I think, correctly points out that its Halloween eyelashes are different from Advance’s magazine wares and services"

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Pop mega-star Beyoncé was accused this past week of copying dance moves in her video for the song "Countdown" (Beyoncé accused of 'stealing' dance moves in new video).  Is it possible to infringe copyright by "copying" a dance?

The Copyright Act (Canada) includes a definition for "choreographic work", which is one of the enumerated types of works which make up the category of "dramatic work".  However, in one of the charming drafting felicities for which the Canadian Copyright Act is so reknowned, "choreographic work" is simply defined to "include[] any work of choreography, whether or not it has any story line".  One benefit of that definition is that it makes it clear that copyright extends to sequences of movements even if they bear no necessary relationship to any external narrative.

To obtain copyright protection a given work of choreography would need to have the characteristics of originality and fixation.  The "fixation" requirement stems from the definition of "dramatic work" which states that "dramatic work" includes "any piece for recitation, choreographic work or mime, the scenic arrangement or acting form of which is fixed in writing or otherwise" [emphasis added].  The "or otherwise" is useful in that it clarifies that a work of choreography can be "fixed" either by written notation, pictorial depiction or by means such as filming (it is worth noting that the film resulting from the recording of a choreographic work may also qualify for protection as a cinematographic work).

(As an aside, the performance of a choreographic work may itself be protected as a "performer's performance" and hence subject to the "neighbouring rights" regime of the Copyright Act (Canada), which would accord the performer of the choreographic work certain exclusive rights in the performance, such as the exclusive right to film/record the performance.)

So, yes, it is possible to infringe copyright, in a variety of senses of that term, by copying a dance.  That being said, there is almost no Canadian caselaw which provides guidance on the matter.  The case of Pastor v. Chen, 2002 BCPC 169 (CanLII), 19 CPR (4th) 206 (where a dance instructor sued a former student of his who was teaching the instructor's dance sequences to other customers) is often cited as precedent for copyright in choreography, but a close reading shows that the court found for the plaintiff on the basis of the breach of a confidentiality agreement, and the court's comments relating to copyright were clearly obiter.

For the most comprehensive online treatment of Canadian copyright law as it relates to choreography, see Laurent Carrière's "Choreography and Copyright", a 44-page masterful summation of Canadian law which includes comparative examples from other jurisdictions.  For US commentary on the topic, see this 1961 US Senate report, Merlyne Jean-Louis' Dancing Around the Issue of Copyright of Choreographic Works, and this interesting discussion of the issue of fixation, written by Joy Mkrdichian.

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UPDATED BELOW

The Montreal Gazette ran an editorial today regarding Bill C-11 (the Copyright Modernization Act) (The Gazette's View: Bringing copyright law into the 21st century), which contains a glaring factual error regarding statutory damages and technological protection measures (TPMs).  From the editorial [emphasis added]:

Less welcome, and the sticking point in previous attempts to pass this bill, is the blanket provision against breaking digital locks, even for purposes of personal use. This includes picking a lock on a DVD purchased overseas to watch at home, or transferring a purchased e-book to read to another personal device. The bill provides for $5,000 fines for even the smallest such violations.

This provision was apparently included as a result of heavy pressure from U.S. authorities and in the interest of maintaining cross-border trade and exemption from protectionist measures that would prevent Canadian firms from bidding on U.S. government procurement contracts. It is unlikely that there will be many prosecutions under this article as long as violations are committed in the privacy of people’s homes and not for any commercial purpose, but it is still a niggling restriction that caves in to the U.S. at the expense of the right of average Canadians to do what they wish to with their own property for their own enjoyment.

Bill C-11 contains no provision which would allow for the imposition of a $5,000 fine for the described activities, nor does it contain any provision which would allow for a court to impose statutory damages were a plaintiff to commence an action for the circumvention of a TPM in the circumstances described in the editorial.  The writers of the editorial seem to think that the statutory damages provisions of the revised Copyright Act would apply to "picking a lock on a DVD purchased overseas to watch at home, or transferring a purchased e-book to read to another personal device" - that conclusion is simply incorrect.

The proposed new Sections 41 and 41.1 would certainly make it an act of infringement to circumvent a TPM - but proposed Section 41.1(3) specifically states that a rightsholder cannot recover statutory damages from an individual who contravened that paragraph only for his or her own private purposes.  The new statutory damages regime would set an absolute maximum statutory damages liability of $5,000 (the number which seems to have caught the eye of the editorial writers) for non-commercial infringement - but proposed Section 41.1(3) says that the statutory damages mechanism does not apply at all to circumventions of TPMs which are done for private purposes. 

There are certainly remedies other than statutory damages which a rightsholder could seek against someone who circumvents a TPM in the circumstances contemplated in the editorial but, as the Gazette editorial notes (refreshingly, in the context of the copyright reform debates), as a practical matter, the chances of such claims being brought are vanishingly small.  Whatever other criticisms one might make of the TPM provisions proposed in Bill C-11, exposing individuals to $5,000 of statutory damages liability for "even the smallest of such violations" is not a possibility.

A short note about terminology: the Gazette editorial uses the word "fine" to describe the non-existent $5,000 "penalty" for which they think an individual could be liable.  A "fine" is something imposed upon a wrongdoer by a state authority (Black's Law Dictionary: "a pecuniary punishment or penalty imposed by lawful tribunal upon person convicted of crime or misdemeanor").  Statutory damages are not "fines" - they are "damages", claimable only by a private plaintiff in a civil court proceeding.  The copyright reform debates often get mired in terminological debates (is copyright infringement theft?), because words matter - describing statutory damages as "fines" is inaccurate and inflammatory.  (The proposed revisions to the Copyright Act do contemplate fines for circumventing TPMs (in proposed Section 42(3.1), but those would only be available where the circumvention is done for commercial purposes.)

UPDATE (10.05.11): The Gazette editorial was published on October 1, 2011, not October 5, 2011, as I indicated in the first line of this post.  Barry Sookman, on October 3, 2011, addressed the inaccuracy of the Gazette's statements in Some observations on Bill C-11: The Copyright Modernization Act.

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Selected commentary on Bill C-11 (The Copyright Modernization Act):

• Sundeep Chauhan's primer on Bill C-32 (the previous iteration of the government's copyright reform legislation) remains a comprehensive guide
• Barry Sookman provides a (lengthy) must-read (and retain) with Some observations on Bill C-11: The Copyright Modernization Act
• from the CBC: Copyright changes: how they'll affect users of digital content
• from the government: Fact Sheets, FAQ, and Backgrounder
• The 1709 Blog has Canada moves to modernise its copyright law
• IPilogue provides a handy collection of its previous posts on Bill C-32

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On September 29, 2011, the Canadian government tabled Bill C-11 (the Copyright Modernization Act), which is effectively a re-introduction of Bill C-32 which died with the dissolution of Parliament in March 2011 ahead of the federal election in May 2011.  As with Bill C-32, we're going to do our best here at the Signal to offer coverage of the debates and progress surrounding this new effort at copyright reform.  (Our coverage of Bill C-32 is archived here.)

Already, as expected, Bill C-32 has prompted a torrent (get it?) of commentary and information.  Some of the more notable:

• James Gannon has (re-)posted TPMs: A comprehensive guide for Canadian copyright law
• the Canadian Communications Law blog has posted Fourth time lucky? Government introduces copyright reform bill - again
• Michael Geist has posted the content-rich Copyright Is Back: Why Canada is Keeping the Flawed Digital Lock Rules which includes a link to the absolutely invaluable clause-by-clause analysis of Bill C-32 which was prepared by the government

For what's it's worth, my own views of Bill C-11 remain remarkably like my views of Bill C-32: there is much which is worthwhile in the bill, and there are elements which deserve modification.  On the larger issue of how Canada tackles copyright reform, I think I covered it in an op-ed which was published in the January 24, 2011 edition of the Hill Times, which I reproduce here (you'll have to excuse the painfully ungainly last sentence):

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 serves the interests of none.

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The federal government has announced that it will be re-introducing Bill C-32 (The Copyright Modernization Act), which would have added "parody" as a category of fair dealing under the Copyright Act (Canada).  In addition, the Supreme Court of Canada is set to hear at least five copyright cases before the end of 2011 - an unprecedented occurrence; and of those five cases, at least two will address fair dealing.

But what of parody as fair dealing under existing law?  Emir Aly Crowne Mohammed has written an immensely useful paper which addresses the topic: "Parody as Fair Dealing in Canada: A Guide for Lawyers and Judges" (Journal of Intellectual Property Law & Practice (Oxford), Vol. 4, No. 7, 2009).  Other sources worth perusing are Graham Reynolds' "Necessarily Critical? The Adoption of a Parody Defence to Copyright Infringement in Canada", Giuseppina D'Agostino's "Healing Fair Dealing - A Comparative Copyright Analysis of Canada's Fair Dealing to U.K. Fair Dealing and U.S. Fair Use",and Carys Craig's "The Changing Face of Fair Dealing in Canadian Copyright Law: A Proposal for Legislative Reform".

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As has been mentioned on this blog numerous times, the "clearance" process for obtaining "errors and omissions" (E&O) insurance for film and TV projects can sometimes be an arduous, frustrating process for both producers and their lawyers.  Producers are often frustrated by the seemingly arbitrary or heavy-handed decisions made by their lawyers to cut, obscure or otherwise modify materials appearing on-screen which the lawyer fears could run afoul of the E&O policy's clearance guidelines which stipulate that no copyrighted or trade-marked materials can appear on-screen without some kind of written permission.  This post is the first in an occasional series which aims to demonstrate that what might seem to a producer to be paranoia on the part of their lawyer is, in fact, well-founded (even paranoids have enemies, goes the saying).  These posts will point to actual lawsuits which have been filed against film/TV producers for copyright or trade-mark infringement - and which inform the nit-picking approach taken by producer's counsel.

As first reported by Eriq Gardner at THR, Esq., the producers of the MTV show "The Real World" have been sued for failing to blur out video images of "shadow dancers" who were visible in the background of scenes filmed in bars/clubs in New Orleans and broadcast in two different episodes of "The Real World" ('The Real World' Sued for Failing to Blur 'Shadow Dancers').  For anyone who is unclear on what a "shadow dancer" is, the official Shadow Dancers website should provide all the clarification which is required.  A copy of the complaint filed in US federal court is available here.

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A number of news outlets have recently reported on the flood of litigation which is expected to arise in the United States as a result of recording artists seeking to terminate and reclaim ownership of their sound recordings issued in 1978 and in subsequent years (New York Times:  Record Industry Braces for Artists’ Battles Over Song Rights; Rolling Stone: Record Biz Braces for Legal Battles Over Copyright Law). 

Steve Gordon, over at the Entertainment, Arts & Sports Law Blog, has written The Comprehensive Guide to Reclaiming Old Masters, which rather elegantly sets out the relevant legal analysis under the US Copyright Act.  Gordon highlights two significant issues which will need to be addressed, the latter of which I had not seen previously raised: first, are the sound recordings "works made for hire" and, second, are the artists the only relevant "authors" of the sound recordings, or could producers be considered to be authors (and hence entitled to a reversionary interest) as well?  In any event, it appears that the US music industry is in for a few years of "interesting times" (to borrow from the purported Chinese curse) - as the clock ticks down to the dates on which some of the most commercially successful sound recordings of the last fifty years start to become eligible for "reclamation" by artists and performers.

So - do any similar concerns arise under Canadian copyright law?  The short answer is "not really", at least not in the same way that it is happening under US law - but Canadian copyright law does have a "reversionary interest" which will one day pose similar problems to current owners of some types of copyrighted materials.

Section 14 of the Copyright Act (Canada) provides that, 25 years after an author dies, the copyright in any works which the author created and for which the author was the first owner of copyright (so, basically, excluding works created "in the course of employment") automatically reverts back to the estate of the author.  So, for example, if Bill Smith writes a novel, then enters into an agreement with a book publisher for that novel which grants the publisher the exclusive right to distribute the book, and then Bill dies, 25 years after Bill dies, the rights in the novel revert back to Bill's estate, irrespective of the publishing contract Bill signed or anything which might be contained in it.  Thus, copyright owners should be vigilant about any works they own/control whose author is deceased - the author's estate could pop up out and assert their rights.

Does Section 14 of the Copyright Act (Canada) apply to sound recordings?  It does not appear to, since Section 14 only applies to "works", and "sound recordings" are technically not "works", but a separate subject-matter of copyright protection found in Section 18 of the Act.  The "maker" of a sound recording is the owner of copyright in that sound recording, and so the ownership of Canadian record labels in sound recordings for which they were the "maker" seems more secure than their US counterparts (setting aside for the moment the convoluted analysis which would be required for sound recordings created prior to the current iteration of the "sound recording" regime found in the Act).  All that being said, Section 14 would certainly apply to musical compositions, and so any publishing or licensing arrangements entered into in respect of a musical composition would be subject to the reversionary interest.

Is any of this a good idea?  As I argued in this article published earlier this year, I don't think so:

For copyright exploiters, the existence of the reversionary clause poses a troubling challenge: the security of their tenure as owner is subject to the reversionary interest of the author's estate. For creators, the clause wreaks a counter-intuitive result: given the uncertainty in their ownership and the possibility that they may be excluded from the last twenty-five years of the copyright term, exploiters will be inclined to discount the value they are prepared to pay for a work.

Exploiters may also, given the tenuous nature of their ownership interest, be disinclined to invest resources toward the exploitation of works nearing the reversionary threshold, since they will be unsure whether an author's estate will "pop up" and assert an ownership claim. The doubtful status of ownership of the work is compounded by the fact that so few authors and estates are even aware of the existence of the reversionary interest-leaving assertions of an estate's rights to those who are well-advised by counsel or lucky enough to come across the clause.

Worse, the philosophical and logical foundations of the reversionary interest remain weak. It is unclear why, aside from sentimental reasons, the heirs of creators of copyrightable works should be entitled to an ownership interest in works which the author licensed or sold during his or her lifetime. Not only is no other form of intellectual property treated in this fashion, no other form of property whatsoever is treated this way-a patent, apartment complex or shares of capital stock once owned by a deceased individual are not suddenly snatched from their current owners and bestowed upon an estate on the twenty-fifth anniversary of the death. That threshold further highlights the arbitrary nature of the interest: if the concern is to ensure that the heirs of creators are not left destitute, why would the law require them to wait twenty-five years?

Our Copyright Act requires many alterations to make it easily comprehensible and coherent. Eliminating the reversionary interest would be a minor step in the right direction.

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The good folks at the Lawyers Weekly have published a short piece of mine (in their July 1, 2011 issue) which reflects further on the topic of copyright in jokes - the full text of the article can be accessed here, and the opening paragraphs are below:

What is reputedly the world’s shortest joke clocks in at a mere two words: “Pretentious? Moi?”

Though jokes may seem an incongruous (even humorous) subject for intellectual property (IP) law, examining the extent to which protection is available for jokes provides an opportunity to reflect on a variety of issues relevant to copyright reform debates.

Theoretically, there is no reason that a joke cannot be protected by copyright, so long as it meets the generally applicable requirements: the expression must be original and fixed in some tangible medium. For jokes which are delivered only verbally, the lack of fixation will be a barrier to protection. The law generally shies away from according copyright protection to titles and short phrases for fear that a limited monopoly will be asserted over basic elements of expression — and for similar reasons, short jokes would be unlikely to obtain protection.

Previous Signal coverage on the topic of copyright in jokes is collected here.

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Let's imagine someone wants to use a photograph of a very old painting in their movie or television show (or, what the heck, in a book) - under Canadian law, do they need permission from the photographer or other owner of the photograph?

I sometimes wonder whether lawyers in other practice areas get questions that can be answered with a simple "yes" or "no".  I envy those lawyers.  Let's say you come across a great photograph of an Old Master (say, the Mona Lisa) or even something more ancient (say, a Roman fresco).  And you want to use that photograph in your movie, TV show or even in a book you're planning on publishing.  The thinking might go like this: the original work of art itself is in the public domain, so how can a photograph of it be subject to copyright?  The argument becomes especially acute if the photograph is simply an exact reproduction of the original work of art (i.e., the photograph simply reproduces the entire work of art, from border to border).

So, what's the answer? Well... it's complicated.

Certainly many museums around the world take the position that they own copyright in the photographs they have arranged to be taken of various pieces of art in their collection.  (See, for example, this photograph of a 1505 painting, on the website of the UK's National Portrait Gallery (the "NPG"), which bears the annotation "© National Portrait Gallery, London"; or this detail of the Mona Lisa from the Louvre, which bears the annotation "© Musée du Louvre / A. Dequier - M. Bard"; or this photograph of a Rubens painting at the Art Gallery of Ontario, which bears the annotation "The Thomson Collection © Art Gallery of Ontario").  As an example, the AGO's website has a Copyright page which states "Reproductive uses are prohibited without the express written authorization of the Art Gallery of Ontario or the copyright owner. ... Any commercial or publication use is strictly prohibited. Copying, redistribution, or exploitation for personal or corporate gain is not permitted."  A few years back, the UK's NPG threatened legal action against a US-resident individual who had download thousands of images from their website (see also coverage by Howard Knopf).  (Unfortunately, I was not able to find any further information about whether there was any final resolution in the NPG matter.)

There certainly doesn't seem to be any obvious reason why a Canadian court would conclude that a photograph of a piece of public domain artwork is not protected by copyright.  Canadian courts have held that photos of everything from the Queen at a press conference (Dobran v Bier, [1959] Que. KB 154] to a photograph of a bed in a sales brochure (Slumber-Magic Adjustable Bed Co. v Sleep-King Adjustable Bed Co. (1984), 3 CPR (3d) 81 (BCSC) are photographs protected by copyright.  In the 1930s, the Ontario courts (affirmed by the Privy Council) held that copyright subsisted in photographs of fine art, and that the copyright had been infringed when the photographs were reprinted in a newspaper (Mansell v Star Printing & Publishing Co. of Toronto, [1937] 4 DLR 1).  An old English case (Re Graves (1869), LR 4 QB 715) is usually cited as authority for the proposition that a photograph of a pre-existing artwork is itself protected by copyright, irrespective of the copyright status of the artwork being photographed.

It's a little unclear whether those decisions are incorrect in light of the Supreme Court of Canada's 2004 decision in CCH Canadian Limited v. Law Society of Upper Canada, [2004] 1 S.C.R. 339, 2004 SCC 13, wherein the Supreme Court of Canada set out the current meaning of the term "original" in Canadian copyright law (a work needs to be "original" in order to attract copyright protection).  At para. 16, the Court said the following:

For a work to be “original” within the meaning of the Copyright Act, it must be more than a mere copy of another work.  At the same time, it need not be creative, in the sense of being novel or unique.  What is required to attract copyright protection in the expression of an idea is an exercise of skill and judgment.  By skill, I mean the use of one’s knowledge, developed aptitude or practised ability in producing the work.  By judgment, I mean the use of one’s capacity for discernment or ability to form an opinion or evaluation by comparing different possible options in producing the work. This exercise of skill and judgment will necessarily involve intellectual effort. The exercise of skill and judgment required to produce the work must not be so trivial that it could be characterized as a purely mechanical exercise.  For example, any skill and judgment that might be involved in simply changing the font of a work to produce “another” work would be too trivial to merit copyright protection as an “original” work.

That formulation of originality is tough to apply when we're talking about photographs of fine art.  On the one hand, a photograph of fine art is arguably just a "mere copy" of another work - indeed, short of a photocopy produced by a photocopier or a downloaded file, it's difficult to envision something which is more of a "copy" than a photograph of fine art - since the whole point of a photograph of fine art is to be an exact reproduction of the artwork in question.  However (you knew that was coming, right?), the Court goes on to say "[w]hat is required to attract copyright protection in the expression of an idea is an exercise of skill and judgment.  By skill, I mean the use of one’s knowledge, developed aptitude or practised ability in producing the work".  Whatever else someone wants to say about the photography of fine art of the calibre necessary for use on a museum website, it certainly requires the "exercise of skill and judgment" and the use of "knowledge, developed aptitude or practised ability" - these are professional photographers who are hired to create the photographs (by comparison, feel free to request a copy of my various out of focus, off-kilter, lopsided attempts to photograph artwork in various musuems).  The professional photographers hired to create the photographs in question definitely make use of their "capacity for discernment or ability to form an opinion or evaluation by comparing different possible options" when creating the photographs - issues ranging from lighting to distance to filters to lenses come in to play in making the decision of how to photograph artwork.   And Canadian courts certainly have not been shy about finding that a "work" has copyright protection when an "author" has expended time and effort in creating it - on my reading, it appears often that Canadian courts are more than willing to protect "effort", and certainly don't require that there be much "creativity".

Not everyone agrees, however, with the notion that photographs of fine art can be protected by copyright.  In Bridgeman Art Library, Ltd. v Corel Corp., 36 F. Supp. 2d 191 (SDNY 1999), a US district court, applying both English and US copyright law, held that photos of public domain artwork were not capable of being protected by copyright law as they lacked the requisite "originality" - with respect to English law, the court examined a number of English cases and commentators and concluded that the Re Graves decision was no longer good law in light of subsequent evolution of the notion of "originality".  Having read the district court's reasoning, I'm not entirely convinced they got that correct - it seems that a number of the authorities they cited argue at least as strongly for finding copyright in a photograph of fine art as they argue against it.

So... where does that leave us?  It appears that under US law a photo of public domain fine art is not susceptible of being protected by copyright (maybe - the decision in Alfred Bell & Co. v. Catalda Fine Arts, Inc., 191 F.2d 99 (2d Cir. 1951), which was not mentioned by the Bridgeman decision, seems to go the other way).  Under Canadian and English law, the matter seems, at best, uncertain, with gusts towards "protected by copyright law".  For more detailed consideration of the matter under English law (with particular reference to the National Portrait Gallery matter mentioned above) see Francis Davey, Andreas Guadamuz-Gonzalez and Simon Bradshaw.  The fact that the underlying work is in the public domain probably won't have any impact on the analysis: translations of public domain literary are protected by copyright, as are new arrangements of public domain musical works.

So, if a producer or publisher came to me and asked whether they needed permission to reproduce a photograph of a piece of art in the public domain, assuming that the photograph itself was not so old that it was itself in the public domain, I'd be inclined to say that such permission was required.  It's possible that they'd have a plausible "fair dealing" argument, but that requires an analysis even more contorted and contingent than the one set out in this post for the question of whether copyright exists at all in the photograph.  Ultimately, the producer's/publisher's choice would come down to this: what's going to be cheaper - trying to get permission to reproduce the photograph upfront, or defending a copyright infringement claim if everything goes wrong?

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On May 30, 2011, the Ontario Superior Court of Justice approved the settlement agreements reached among the four major Canadian record labels, CMRRA and SODRAC (click here for previous Signal coverage of the topic).  As reported by Christine Dobby in the Legal Post:

But, in what was described in court as a contentious and heated process that included eight court-assisted mediation meetings and numerous case management appearances, the parties reached an agreement that includes the financial settlement as well as a process for dealing with future use of unlicenced work.

“The result overall is approximately $50.2-million in settlement benefits to the class,” Mr. Foreman said. “I believe it’s a strong financial resolution to the case.”

Harrison Pensa, who acted as counsel to the plaintiffs in the matter, have updated their website to include the Court approved Notice of Certification and Settlement Approval. Of particular interest is the requirement for the creation of "a revised Canadian mechanical licensing platform", to be implemented by January 1, 2013, and which will include a publicly accessible website to "allow for public review and submission of ownership claims of unidentified Musical Works".  So not only will crowd-sourcing become part of the process, but works which remain unidentified will be made the subject of a license application by CSI (CMRRA-SODRAC Inc.) to the Copyright Board under the unlocatable copyright owners regime - and royalties paid in respect of those works will be held in trust pending eventual identification.  The new mechanism seems to be an innovative and productive solution to the challenge of unidentified owners.

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The Copyright Act (Canada) extends copyright protection to "architectural works" (a subset of "artistic works") - does a filmmaker need permission to film the exterior of a building in a film or TV project?

Probably not, at least with respect to the building itself - but as with most matters which involve legal analysis, the answer is probably better phrased as "it depends".  Let's start with some basic principles: Yes, buildings, as architectural works, can be protected by copyright.  Some buildings will be in the public domain (because their author passed away more than fifty years ago, causing the building to have passed beyond the limits of the term of copyright protection in Canada, being life of the author plus fifty years), and so no claim of copyright infringement could plausibly be brought, and so no permission would be required.

If we're talking about buildings which are still under copyright protection, of particular use for filmmakers is Section 32.2(1)(b)(i) of the Copyright Act (Canada), which identifies certain "permitted acts" - the section states the following:

It is not an infringement of copyright ... for any person to reproduce, in a painting, drawing, engraving, photograph or cinematographic work (i) an architectural work, provided the copy is not in the nature of an architectural drawing or plan;

In short: filming a building for use in a film or TV project (each of which would qualify as a "cinematographic work") does not constitute copyright infringement of the copyright in that building.  However, things are rarely quite that simple.  The clearance procedures of most film and TV errors and omissions insurance policies will require that clearance be obtained if the filmed footage will include elements which are separately copyrightable or trade-marked.  Thus, consideration must also be given to any items which are attached to the building in question - such as signs containing business names or logos, or artwork (such as an advertisement consisting of a large poster).  

It's also worth considering whether artistic works which are part of the building itself require a separate clearance (imagine a statute or gargoyle which is attached to a building, or a mosaic or frieze which add decorative elements); while there do not appear to be any Canadian cases on point, there is a US 9th Circuit decision which discusses the matter in the context of a film project (in Leicester v. Warner Bros., 232 F.3d 1212 (9th Cir. 2000) the court concluded that towers attached to a building shown in the film Batman Forever did not require separate clearance, as they fell within the ambit of 17 U.S.C. § 120(a), the US analogue to the Canadian provision we're discussing).

Other non-copyright matters which require consideration include the need to obtain permissions for the location of cameras and lighting which may be required in order to obtain the desired footage (i.e., if you need to get onto private or municipal property in order to set up your shot, permission will be required), and any potential defamation concerns (it's not terribly difficult to, imagine a scene showing the exterior of a building and attributing nefarious activities to the residents of that building - which, if the building and its tenants are readily identifiable, could give rise to a claim).

Thus, what at first appears to be a fairly simple question to answer refracts into a fairly nuanced analysis which could require some timely legal analysis by producer's counsel.  In closing, I should also note that I while researching this post I came across my favourite German word for today: Panoramafreiheit, a German legal concept (which apparently translates as "Freedom of Panorama") which appears roughly analogous to the exception to Canadian copyright discussed in this post. 

[Inspiration for this post was provided by Dear Rich: Does travel photographer need property release?, Dear Rich: Do you need permission to publish pictures of buildings? and by Gordan P. Firemark's Asked and Answered: Using public buildings as setting for a film.]

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When a celebrity (or anyone else) walks down a red carpet, what are they consenting to in terms of the use of their image?  That issue was recently considered in the US district court decision Shirley Jones v Corbis Corporation (Case No 10-8668 SVW (CW)) (hat tip: THR, Esq.) - the decision is noteworthy because, while the layperson's response (or even a prima facie legal response) might be simple ("she's walking down a red carpet - of course she consented to the use of her photograph!") the District Court's reasons illustrate just how narrowly construed legal conclusions can be.

The facts of the case are relatively simple: Shirley Jones (perhaps best known for her role on the 1970s TV show The Partridge Family asserted that Corbis had violated her rights of publicity by displaying "sample" photographs of Jones on their website; Corbis, a stock photo company, maintains multiple websites via which potential customers can search Corbis' library for photographs.  If a user types a term into the search function, low-quality "sample" photographs matching the searched terms will appear.  Corbis often does not own copyright in the photographs, but instead has entered into license agreements with the copyright owners, and in turn offers licenses in the photographs to Corbis' customers. In the case of Jones, when someone typed in "Shirley Jones" a series of sample photos would appear, indicating the inventory of relevant photographs that Corbis had available; some of those photos were of Jones at various "red carpet" events.  Jones asserted that her right of publicity was being infringed by the act of showing those sample photographs.

The District Court rejected Jones' claim.  The court noted that "celebrities who walk down the red carpet generally pose for photographers and respond to their requests to smile, or to look in their direction"; at some red carpet events, notices are posted "stating that the celebrities entering the red carpet consent to being photographed and recorded, and also to having their name or likeness used in connection with the event".  It was undisputed that Jones had consented to the taking of the photographs.  Indeed, Jones even acknowledged that the photographers who took the photos would be selling those photos and would need to show those photos to prospective buyers in order to secure sales of them (in days of yore, photographers would carry around books with copies of the photographs).  The court further noted that "it is custom and practice in the entertainment industry that red carpet photographs are widely used and disseminated".  At this point, it is worth noting just how finely-crafted is the "implied consent" that Jones was deemed to have given: she did not sign any documents granting consent, nor did she even verbally agree to certain uses - instead, the parameters of her consent (taking the photograph, selling the photograph, offering samples of the photograph to prospective buyers) were all implied from her actions and the context in which those actions took place.

As the court described it, Jones' "only argument" could be that "she did not consent to [Corbis'] placement of sample images on its websites for the purpose of soliciting customers".  But such an argument had no cogency: she knew the photographers would be selling their photos, and that they would need to show the photos to others; the fact that the photographers had, in turn, authorized Corbis to show the photos in order to facilitate sales was entirely consistent with the scope of the consent Jones had given - she therefore had no claim against Corbis.  Her follow-up argument that her consent was limited to allow only the individuals photographers to show the photographs was completely unsupported by any evidence.

Again, though, what is remarkable about the decision is how narrow it is - in closing its reasoning, the court expressly states that its holding is "limited to the fact that Plaintiff consented to the display of her likeness for the purpose of distributing the images themselves ... [the] reasoning does not address whether Plaintiff's consent encompasses any other type of display" [emphasis added]; in particular, "the Court's holding leaves Plaintiff's rights of publicity undisturbed in cases where a defendant uses Plaintiff's image to advertise an unrelated product ... or if a defendant transforms Plaintiff's image into a separate product".

Because the court found for the defendant on the issue of consent, the court did not need to consider the defendant's other arguments (that there was First Amendment protection or that the claim was pre-empted by the Copyright Act).

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About a year ago, we posted about Tattoos On Screen, offering a brief overview about the errors and omissions clearance issues posed by reproducing tattoos inked on actors bodies in film and TV projects.  Our early adopter status didn't much help, though: little did we know that, during the recent, er, period of repose that this blog experienced, there would be a major news story talking about, what else, tattoos on screen and that we wouldn't have time to weigh in on the matter.  Rather than do a poor job of attempting to rehash what others have already written about the topic, we offer a selection of some of the best pieces from the legal blogosphere over the last few weeks about The Hangover Part II and the replication of Mike Tyson's facial tattoo:

• Brent Randall wrote an excellent and detailed post at IPilogue - Legal “Hangover” For Warner Bros. Over Mike Tyson Tattoo - which also features further discussion in the comments from David Vaver which is well worth reading
• Gordon P. Firemark offers an interesting take on the need for people with tattoos (tattooees?) to ensure they have obtained copyright in their designs: Getting a tattoo? If you’re in the media you need to get the copyright too!
• Simon Fodden at slaw offers his alliterative thoughts on the topic: The Tyson Tattoo Turmoil
• Rachel Valadez at Law Law Land wrote the seminal blog post on the topic: The Hangover 2 and the Tyson Tattoo: Lessons in Copyright, Contract, and Clearance

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Filming currency can arise in a variety of circumstances: from filming actors exchanging money to using images of money in the opening titles of a film (e.g., a fan of bills of various denominations or a shower of coins in an opening montage to illustrate gambling or some kind of monetary success) to filming close-ups for purposes of illustrating a point in a documentary.  Is anybody's permission required to film Canadian currency?

The basic answer is that if you are filming Canadian paper currency for use in a film or TV project you generally do not need permission.  The Bank of Canada helpfully publishes a Policy on the Reproduction of Bank Note Images, which states the following:

Exception

It is not necessary to request the Bank's permission to use bank note images for film or video purposes, provided that the images are intended to show a general indication of currency, and that there is no danger that the images could be misused.

The corollary of that exception is that in other circumstances (i.e., if the images are intended to show something other than a general indication of currency or where there is a danger that the images could be misused), then permission is required - and that permission can be obtained from the Bank of Canada, which owns copyright in Canadian currency. (An online request form is available from the BoC here.)  The Bank's policy states that "The Bank will usually consent if there is no counterfeiting risk and if the intended use is in good taste."  It is possible to imagine uses which may run afoul of the policy (e.g., a close-up image of a bank note which is then defaced with crude imagery or writing, or an animated treatment which starts with a real bank note but then is modified to incorporate offensive imagery), but those will presumably arise infrequently.

One matter not expressly covered by the Bank's policy is whether permission is required to film Canadian coin currency - the Bank's policy covers only paper notes.  And the reason for that is because the Bank of Canada does not own the intellectual property rights in Canadian coin currency - the Royal Canadian Mint does.  The Mint has its own policies regarding the use of the Mint's intellectual property (which includes "coin images", "drawings" and "creative designs"), including an application form.  The Mint's policies, unlike those of the Bank, do not start with the premise that no permission is required for purposes of filming, and so technically permission should be sought in order to avoid a potential infringement claim.

[Inspiration for this post was provided by David Albert Pierce, Esq., writing at the MovieMaker blog: Cinema Law: Can I Film U.S. Currency?, which provides a detailed explanation of US law on the matter.  Dan Ciraco's "The Money Shot: The Law Surrounding the Reproduction of Bank Note Images" (Ontario Bar Association Entertainment Media and Communications Section Newsletter 15(1) (Nov 2005)) is an invaluable resource of Canadian law on the topic.]

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Reports about Warren Beatty's recent court victory in respect of the film and television rights to the Dick Tracy property offer a chance to reflect on the wording of reversion clauses.  Grants or transfers of rights in entertainment properties are sometimes subject to a reversion clause which obliges the grantee to exploit the rights within a certain period of time or else the rights "revert" to the grantor. 

In Beatty's case, though details are somewhat sparse, it appears that when he obtained the rights to the Dick Tracy property, his continued enjoyment of the rights was subject to a reversion clause: if Tracy failed to produce a new Tracy-based film or TV project by a certain deadline, the rights would revert to Tribune Co. (the owner of the underlying rights in the franchise).  Beatty had produced the 1990 movie Dick Tracy, but Tribune evidently was interested in producing a new TV series.  The most comprehensive coverage of the dispute between Beatty and Tribune is offered by Phil Rosenthal writing at the Chicago Tribune's Tower Ticker blog:

Beatty, who acquired rights to the character from Tribune Co.'s Tribune Media Services in 1985 and made the 1990 movie “Dick Tracy” starring himself and Madonna, filed suit in Los Angeles federal court in 2008 after Tribune Co.'s Tribune Media Services said those rights had reverted back to it. ...

Tribune Co. argued that Beatty was required to produce another Tracy television or movie project to retain the rights before a use-it-or-lose-it deadline TMS had established two years earlier. Beatty countered that, after his request to extend the rights to 2013 was denied, he had begun work on a "Tracy" special before the deadline.

Turner Classic Movies subsequently scheduled a half-hour movie chat between film critic Leonard Maltin and Tracy (as played by Beatty) discussing various portrayals of the comic detective for July 2009, but it's the special didn't run on the cable channel.

Judge Dean D. Pregerson of the Central District of California decided in Beatty's favour: Beatty's commencement of work on the half-hour movie was sufficient to meet the condition he had to satisfy in order to retain the rights.  In short (although this is necessarily speculative without having the benefit of the contractual language or the court's reasons), it would appear that Beatty abided by the terms of the reversion clause, though interpreted strictly: the reversion clause obliged him to commence production on some kind of film/TV project within a certain time frame in order to retain the rights - he did so, and so retains the rights.  Tribune's argument was presumably something along the lines of "to meet the condition, it couldn't just be a perfunctory production - it was supposed to be a real production - something with a big budget, something with stars, something that was intended to be theatrically released or broadcast on a major network or pay/subscription channel - not some rinky-dink 30 minute special which never even got aired".

The court was inclined to prefer Beatty's approach:

"(Tribune Co.) may be frustrated that (Beatty) has not used his rights to Dick Tracy for more profitable ends," Judge Pregerson wrote in his ruling, noting he saw nothing in the contract between the two requiring such a project to make money.

The upshot for practitioners?  Reversion clauses should be drafted with precision: if the grantor of rights intends that only a "real" production will qualify to vest rights in the grantee, then the clause should expressly state a minimum budget amount that is required to be actually spent by a particular date - or require broadcast on particular outlets or theatrical release in a minimum number of theatres by a particular date or require that distribution/license agreement(s) worth a particular dollar amount (paid as a minimum guarantee) be entered into by a specific date.  Other specific provisions can be envisioned, but the primary point to bear in mind is that contractual language needs to be as detailed as possible in order to ensure that performance by the parties can be measured against an express, identifiable standard.

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Over the last couple of weeks a number of articles have come to my attention which, in different measures, I thought provided some great background information on how the business facets of the film and television industries work and what types of arguments can be made for and against the types of copyright reform which many think are necessary to facilitate the continued survival of the entertainment industries in light of digital technology:

• The Economist wrote about Hollywood's disc problem: video nasty, highlighting how innovative business models and delivery systems have undercut the gargantuan DVD/Blu-ray cash behemoth
• in a longer, much more detailed piece, The Economist looked at Hollywood and home entertainment: unkind rewind, a brilliant little explanation of the economics of the film/TV industries and how the increasingly rapid closing of different "windows" of exploitation (eg theatrical, pay-per-view, home video) is impacting different elements of the distribution chain (how unhappy do you think theatre owners are that movies will soon be available for home consumption in as little as eight weeks from their initial theatrical release?)
• with a hat tip to Lon Sobel, Peter Yu's Digital Copyright and Confuzzling Rhetoric offers an enjoyable read on the various arguments being advanced by many parties in the ongoing struggles for copyright reform - he covers four arguments in favour of stronger protection and enforcement, four arguments against it, and offers five strategies for making more convincing the arguments of the entertainment industries

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The good folks at the Lawyers Weekly published an op-ed piece of mine last week (in their March 21, 2011 issue) - the full text of the article can be accessed here, and the opening paragraphs are below:

An arcane CRTC decision in February on “usage-based billing” among Internet service providers prompted an explosion of public anger. When the federal government voiced almost immediate concessions to the rage, at least one conclusion became inescapable: the copyright wars are not going to end any time soon.

Two assumptions underlie the struggle among content creators, distributors and users to re-orient the hoary copyright regime to better account for the realities of digital technology. First, that someone will eventually figure out a mechanism to easily and transparently facilitate payments for authorized online uses; second, that people who access content online will prove willing to pay in accordance with that mechanism. The public and government reaction to “usage-based billing” indicates those assumptions may not be tenable, at least not in a way that ensures the survival of the entertainment industries in their current forms.

Copyrighted entertainment products — songs, movies, TV shows, books — comprise many of the materials shuttling through the digital connections of the Internet. Traditionally, copyright ensured that access to entertainment products required, somewhere along the line, payment. That prospect of payment helped ensure that products were created and distributed on a commercial level. As the Internet has enabled widespread dissemination without multiple intermediaries between creator and consumer, and has made unauthorized consumption of content easier, the critical payment element in the creation and distribution calculus has been eroded. How do the entertainment industries recover that lost revenue?

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Bill C-32 (The Copyright Modernization Act) died with the prorogation of the 40th Canadian Parliament on March 26, 2011.  My own views on the bill were (and remain) largely irrelevant, but I will be discussing what would have changed had the bill been passed into law (and what the lack of passage means for practitioners) at the Law Society of Upper Canada's 2011 Entertainment & Media Law Symposium, along with my co-panelists Erin Finlay and Giuseppina D'Agostino.  In light of the death of Bill C-32, this, final, commentary round-up offers for consideration some selected materials which have made their way into my RSS feeds over the last few weeks:

• Giuseppina D'Agostino: There is no two without three - Bill C-32 is dead
• Leslie Chong: Techies, Artists and Collective Societies Weigh in on Bill C-32
• Ivy Tsui: Musicians and Radio Broadcasters Speak Up on Bill C-32
• Daryl-lynn Carson, writing in the National Post, canvassed a number of lawyers for their thoughts on the bill: Copyright reform close but no cigar

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The twelve-year old me would be incredibly disappointed that my practice does not consist solely of cases which involve the intersection of comic books and copyright law.  A few recent items of worthy of note:

• Evil Twin Comics have published the Comic Book Comics series, which tells "the inspiring, infuriating, and utterly insane story of the American comic book industry" - including a recounting, in the words of Eriq Gardner at THR, Esq., "such disputes as whether the Captain Marvel character was an infringement on the Superman character, the legendary legal battle over the control of Howard the Duck, the legal mystery surrounding the creation of Josie and the Pussycats, and Jack Kirby's battles with Marvel over stolen artwork"
• on a topic related to my post and short article from last year (Copyright and the King), Vincent James Scipior has written "Spider-Man and His Amazing Friends: Trapped in the Tangled Web of the Termination Provisions" (forthcoming in the Wisconsin Law Review, but available now for download from SSRN) - Scipior's article talks about copyright termination claims under US law and concludes, as I did with respect to the reversionary interest clause in Canada's own Copyright Act, that such claims/interests "deprive companies of all certainty in their copyright ownership" (hat tip: Media Law Prof Blog)
• Betty Boop wasn't a comic book character (she was a cartoon character), but that's close enough for our purposes - the US Ninth Circuit Court of Appeals recently decided that the family of the creator of the Boop character could not claim either copyright or trade-mark rights in the character; the decision is noteworthy because the court was emphatic that it would not allow a rights owner to assert a successful trade-mark claim where the effect of such successful claim would be to, in effect, make an end-run around copyright law and result in a virtually perpetual assertion of rights
• Joshua L. Simmons wrote an interesting rumination on "Catwoman or the Kingpin: Potential Reasons Comic Book Publishers Do Not Enforce Their Copyrights Against Comic Book Infringer" (33 Columbia Journal of Law & the Arts 267 (2010) - available for download from SSRN here)

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

• James Gannon posted slides from a recent presentation on TPMs / DRM and Bill C-32
• Robert Karrass queried whether Bill C-32 constitutes  A Lifeline for a Dying Industry?
•  Kyle Lavender offers link-rich Review of Selected Bill C-32 Position Papers
• Ken Anderson provided some Reflections on the Grammys: Glee, Bieber and the Mash-up Provision of Bill C-32
• Barry Sookman, in a detailed and thoughtful post, explores the extent to which Bill C-32's enablement remedy targets secondary copyright infringement

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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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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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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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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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[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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The CBC is reporting about another copyright flare-up involving Canadian political parties:

The federal Conservatives are rejecting a demand by the CBC to withdraw file footage from the national broadcaster that appears in new Tory ads targeting their political opponents.

The Conservatives did not seek permission to use CBC content in three ads that were posted online and broadcast on TV on Monday, says CBC spokesman Marco Dube says.

This seems to be a bit of a recurring theme with the Conservatives: I had written earlier about the 2007 spat which arose because the Conservatives used footage from the 2006 Liberal leadership debates.  As I noted then:

The incident afforded an opportunity to reflect on a larger issue: should there even be a possibility of infringement in situations like this?  In Canada, this appeared to be a case of prima facie infringement - while American readers might have been thinking that there was at least a plausible argument that the use qualified as "fair use".  But Canada lacks a "fair use" concept, instead having a more limited "fair dealing" concept.  The Copyright Act enumerates certain exceptions to infringement - and if you can't fit yourself into one of them, you've infringed copyright.

I concluded then that the chances that the unauthorized use of footage in a political ad would constitute "fair dealing" under Canadian copyright law would be slim - but that such a conclusion was regrettable, since on freedom of expression grounds it almost certainly should be permissible to use short clips or stills, particularly from political debates and particularly from pool or public broadcaster footage, in the context of a political ad.  The 2007 copyright dispute does not appear to have ever had a publicly disclosed resolution - and I suspect the 2011 dispute will end in much the same way.

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In UMG Recordings, Inc. v Troy Augusto, the US Court of Appeals for the Ninth Circuit confirmed that promotional CDs which are distributed by record companies are not subject to restrictions on their sale (hat tip: Barry Werbin). As the court noted, many record companies distribute music CDs to various individuals or organizations (such as music critics and radio stations) in an attempt to develop marketing buzz.  The CDs are often marked with phrases such as "Promotional Use Only - Not for Sale", or even bear printed statements such as:

"This CD is the property of the record company and is licensed to the intended recipient for personal use only. Acceptance of this CD shall constitute an agreement to comply with the terms of the license. Resale or transfer of possession is not allowed and may be punishable under federal and state laws."

Universal Music Group was chagrined to find that Mr. Augusto was obtaining promotional CDs and selling them on eBay - and sued Augusto for copyright infringement (on the basis that Augusto had infringed on UMG's exclusive right to distribute the CDs).  Augusto, in defence, raised the US "first sale" doctrine (found in Section 109(a) of the US Copyright Act, which states that "the owner of a particular copy or phonorecord ... is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy or phonorecord" (Section 109(b) nonetheless prohibits the "rental, lease, or lending" of the CD).  UMG argued that there had never been a "sale" of the CDs, only a license on particular terms - terms which were breached by Augusto's subsequent sales on eBay.

The Ninth Circuit Court of Appeals held that no license had been created: there did not need to be a "sale" of the CD in order to trigger the "first sale" doctrine, only a transfer of title - and title had been transferred by the fact that the CDs were mailed out without any prior agreement (or even discussion) with the recipient as to how the CDs were to be handled.  Simply printing words on the CDs was not sufficient to create a license or to otherwise restrict the ability of the recipient to deal with the CDs.  The court also held that, in the alternative, Augusto was able to rely on the provisions of the Unordered Merchandise Act, which results in the CDs effectively being treated as "gifts" and confers on recipients the right to dispose of the merchandise as they see fit.

(Although not much attention was paid to the matter, the Ninth Circuit distinguished software licenses mostly on the basis that software owners are able to "control" what software users/licensees are able to do with their software - and there seems to be an implicit recognition that software users need to affirmatively "accept" a software license and that the software itself can impose restrictions on what users are able to do with the software (such as the use of copy controls).  However, while that analysis might work for "click-wrap" licenses, it is unclear whether it would work for "shrink-wrap" licenses.)

Canadian copyright law does not enjoy the benefit of a codified "first sale" doctrine, though there is some limited recognition of the concept of "exhaustion", which would be functionally equivalent (see previous Signal discussion about the "first sale" doctrine).  Pascale Chapdelaine, in an IPilogue post we previously highlighted, offers some detailed thoughts about Canadian recognition of a first sale doctrine:

The doctrine of first sale finds its roots in the English common law rule against restraints on alienation of property. In effect, it modulates two competing property interests in the copyrighted work, e.g. the intangible exclusive rights of the copyright holder in the copyrighted work and the property rights in the tangible embodiment of this work by the purchaser. One limits the rights of the other and vice versa (although very asymmetrically, as the exclusive rights conferred by copyright impose greater limitations on copy ownership than the reverse).  First sale is also consistent with the normative values of freedom and autonomy that underlie property including chattels, as well as the instrumental goals of copyright to encourage the creation and dissemination of copyrighted works, when viewed from a broader perspective that also encompasses users of copyrighted works.

Pascale notes that Bill C-32 (The Copyright Modernization Act) incorporates references to the first sale/exhaustion doctrine.  Bill C-32 would, if passed in its current form, appear to result in Canadian law being consistent with the decision in UMG v Augusto.  Clauses 4, 9 and 11 of Bill C-32 create what is colloquially referred to as a "making available" right - similar to the exclusive right to distribute a work created by Section 106(3) of the US Copyright Act.  Clause 4 of Bill C-32 would add a new subclause (j) to Section 3(1) of the Copyright Act (Canada), which would result in the section reading as follows [emphasis added]:

3.(1) For the purposes of this Act, “copyright”, in relation to a work, means the sole right to produce or reproduce the work or any substantial part thereof in any material form whatever, to perform the work or any substantial part thereof in public or, if the work is unpublished, to publish the work or any substantial part thereof, and includes the sole right...

(j) in the case of a work that is in the form of a tangible object, to sell or otherwise transfer ownership of the tangible object, as long as that ownership has never previously been transferred in or outside Canada with the authorization of the copyright owner,

Clause 11 of Bill C-32 would modify Section 18 of the Copyright Act (Canada) by adding a new Section 1.1 reading as follows:

(1.1) ... a sound recording maker’s copyright in the sound recording also includes the sole right to do the following acts in relation to the sound recording or any substantial part of it and to authorize any of those acts: ...

(b) if it is in the form of a tangible object, to sell or otherwise transfer ownership of the tangible object, as long as that ownership has never previously been transferred in or outside Canada with the authorization of the owner of the copyright in the sound recording.

That would have the effect of making the decision of a Canadian court faced with facts similar to those in Augusto almost certainly the same as the Ninth Circuit's decision (at least with respect to copyright issues - I'll leave commentary on whether Canada has anything similar to the Unordered Merchandise Act to someone else).  The new Section 3(1)(j) and 18(1.1) would give record companies the exclusive right to transfer ownership of the tangible object on which a sound recording was embodied - in other words, the physical CD.  But, they would enjoy that right only if ownership had never previously been transferred with the authorization of the record company.  Note that the language does not require a "sale" - only a "transfer of ownership".  Thus, just as the Ninth Circuit held, a Canadian court would likely determine that ownership of the CD had been transferred when the record company mailed out the promo CDs, and that the recipient of the CD, and anyone to whom they transferred the CD, would be free in turn to sell or transfer the CD. 

Of course, the analysis in the preceding two paragraphs depends on Bill C-32 being passed with the relevant language intact.  In the absence of Bill C-32 being passed, Canadian copyright owners do not enjoy an express "making available" right, so Canadian record companies would appear to be in an even less enviable position than their US counterparts when trying to prevent unauthorized sales of promotional CDs.  The possible arguments they could raise would be limited to a copyright infringement action due to a breach of a license term, or a straightforward breach of contract case; without having done any research on the matter, I'm not sure I can see why Canadian courts would be any more receptive to such arguments than the Ninth Circuit was.  Possibly, if the album or single in question had not yet been made publicly available for sale, the record companies could argue that the work on the CD was "unpublished" and that selling a promotional CD was an infringement of their right to "publish" the work - but surely that would be a very time-limited prospect.  Presumably, then, the brisk trade in promo CDs on online auction sites and in used record stores will continue unimpeded on both sides of the border.

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A settlement, which remains subject to court approval, has been reached in the "Pending Lists" class action copyright infringement lawsuit: Major Canadian Record Labels Reach Agreement Regarding Payments to Songwriters and Publishers.  From the press release:

EMI Music Canada Inc., Sony Music Entertainment Canada Inc., Universal Music Canada Inc. and Warner Music Canada Co. have reached an agreement to pay songwriters and music publishers for outstanding "pending list" claims and to resolve a proposed class action lawsuit.

The current music licensing system allows for recordings to be issued without preclearance from copyright owners but subject to licensing agreements with CMRRA and SODRAC, who represent most publishers and songwriters. The vast majority of royalties owing for such sales have always been and will continue to be paid promptly by the record labels. The proposed agreement settles all alleged copyright infringement liability related to that small minority of unlicenced works that have accumulated over the years. The proposed agreement also establishes a new mechanism that will expedite future payments of mechanical royalties to music rights holders.

As also noted in the press release, the "settlement is a compromise of disputed claims and is not an admission of liability or wrongdoing by the record labels".  Michael Geist is reporting that the settlement involves a $45 million payment (though that number doesn't appear in the press release).  The amended Statement of Claim in the class action can be found here.  The plaintiffs' lawyers maintain a website with details about the lawsuit here.  It will be particularly interesting to see the details of the "new mechanism" which has been agreed to, which, in the words of Alain Lauzon, the General Manager of SODRAC, "will keep the pending list problem from building up again".

The Pending Lists lawsuit became the subject of online debate about a year ago, when Michael originally reported on it (Canadian Recording Industry Faces $6 Billion Copyright Infringement Lawsuit), which prompted a fairly blistering response from Barry Sookman (Geist inflates pending lists claim to vilify record labels).  The legal press also got in on the action, with The Lawyers Weekly providing coverage.

UPDATE (1/10/11 - 1pm): The Harrison Pensa website for the case has been updated to include copies of the various settlement agreements with each of the defendants.

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

• Barry Sookman: An FAQ on TPMs, Copyright and Bill C-32 (bonus: slides)
• Michael Geist: Clearing Up the Copyright Confusion - Fair Dealing and Bill C-32 (of particular note is the collection of links to other articles at the end of the post)
• in response to the aforementioned Geist post, Dan Glover has written: A Response to Professor Michael Geist’s Clearing Up the Copyright Confusion
• Chris Castle on the User-Generated Content (or "YouTube" or "mashup") provisions of Bill C-32: Canada: Here be Dragons – The YouTube Autonomous Zone
•  the Liberal Party of Canada has set out its proposed amendments to Bill C-32 (Geist rounds up some reactions)

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A round-up of music-related items which have collected in my Reader over the last little while:

Tamera Bennett posted a couple of items of interest relevant to music law:

• a chart showing income streams for recording artists
• a short memo on music publishing royalties (How the Money Flows: Songwriter Income Streams)

As sales of recorded music continue to fall (which is to say, sales of physical media are falling faster and further than increased digital sales can make up for), of increasing importance to artists and performers are other forms of revenue:

• The Dave Matthews Band shows how to make money in the music industry
• techdirt looks at some alternative methods for making money from music
• The Economist argues that things aren't so bad after all (which I suppose is comforting to those working in areas of the music industry which are making money, but not so much for others): Having a ball - In the supposedly benighted music business, a lot of things are making money

For additional cheery reading, check out New BPI Report Shows Illegal Downloading Remains Serious Threat to Britain's Digital Music Future (hat tip: Entertainment Law Reporter).

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Following up on an earlier Signal post (Visual Artist's Resale Right / Droit de Suite in Canada), the 1709 Blog has posted two additional items on the topic which are worth attention:

• Artist's Royalty Right: not as much impact as was hoped/feared
• Artist Resale Royalty, Harmonisation and a Comment from Down Under

Oddly enough, the discussions in Canada about introducing an artist's resale right even prompted commentary on the matter from Peter Worthington, writing in the Toronto Sun: This artist doesn't want 'greedy' handout.  The Liberal Party of Canada also included the introduction of a resale right as one of their highlighted copyright reform proposals.

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One of the more charming characteristics of lawyers is that we continually feel the need to subject virtually every event or interaction to... well, to persnickety legal analysis.  We're boring that way.  In any event, here goes another example - but, since it is also the time of year when law students will be writing exams for courses from their first semester of the school year, this post will be somewhat more interactive than it might otherwise be.

First, click through and read this Globe and Mail story:  Stephen Harper shows Tory faithful his rock star side.

Having read the story one will discover that Prime Minister Stephen Harper, at the 2010 edition of the Conservative Party Christmas party (held on December 8, 2010), took the stage to play some songs (including Neil Diamond's "Sweet Caroline" and "Jumpin Jack Flash" by The Rolling Stones) backed by a trio of musicians.  So far, so innocuous.  Click further on the Globe website (like, say, here) and you will find an uploaded video of Stephen Harper performing a variety of songs (the video is only viewable after watching a short advertisement and is book-ended by a Canadian Press intro and outro).  This YouTube channel also hosts six videos of the PM's performances.

This is an open-book examination.

• what rights granted under the Copyright Act are implicated in the videos? assess the likelihood that proper documentation exists licensing or otherwise authorizing the use and/or other relevant reproductions of any such rights as embodied in the videos and as such videos are used on the websites in question (hint: bonus points for assessing the relevance of copyrights in the compositions, moral rights in the compositions and performer's rights in their performances)
• can the posting of the Canadian Press video (and the consequent re-posting by the Globe) be properly considered fair dealing? (hint: assess not only what "category" of fair dealing might be applicable, but whether any relevant requirements, such as mentioning sources, have been complied with)
• assuming for the purposes of this question that the compositions embodied in the videos are currently under copyright protection - what liability, if any, does YouTube face, in Canada, for hosting the videos? (hint: bonus points for coherently explaining the status of SOCAN's Tariff 22 as it applies to YouTube)
• using the currently available wording of Bill C-32 (The Copyright Modernization Act), how, if at all, would the proposed exception for "Non-Commercial User-Generated Content" affect the liability of (a) the Canadian Press, (b) the Globe and Mail, (c) the individual who uploaded videos to YouTube, (d) YouTube?
• explain, as precisely as possible (giving reasons both in favour of and in opposition to the position you adopt) whether (and why) you think recording the Prime Minister's and his band's performance as embodied in the videos in question and posting them online should or should not give rise to the legal intricacies inherent in the preceding questions

Answers (and additional questions!) are warmly encouraged in the comments.

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The New York Law School Law Review has published a special edition (55:1) which boasts seven articles focusing on the Google Books Settlement - the issue is available for download.

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

• text of Giuseppina D'Agostino's opening statement to the Bill C-32 Legislative Committee
• National Post story on Bill C-32's expansion of fair dealing categories to include "education"
• The Lawyer's Weekly: Industry players warn copyright bill will harm owners of copyright
•  The Creator's Copyright Coalition has released their position paper on the bill
•  the House of Commons also makes available online the minutes and transcripts of meetings of the Bill C-32 Legislative Committee - there is a delay between the time of the meeting and the posting of the transcript, but as of this writing, transcripts are available for Meeting 3, which included various MPs

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Bill C-32 (The Copyright Modernization Act) contains a clause which would add to the Copyright Act a new Section 29.21, bearing the heading "Non-commercial User-generated Content", but being colloquially referred to as the "YouTube" or "mashup" provision.  "User-generated Content" being in the air, I thought it worth pointing to a couple of recent publications on that topic: Sheldon Burshtein wrote an interesting piece entitled Canada: Risks of User-Generated Content to Website Operators
and Sam Trosow has written Mobilizing User-Generated Content for Canada's Digital Advantage (executive summary available here).

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

• text of Michael Geist's opening statement to the Bill C-32 Legislative Committee
• text of Barry Sookman's opening statement to the Bill C-32 Legislative Committee
• David Vaver posts about the debate over TPMs and the requirements of the WIPO Internet Treaties between Drs. Mihaly Ficsor and Michael Geist; Vaver's post is informative and link-rich - and a refreshingly vigorous debate has erupted in the comments
• Geist writes about Separating copyright facts from fiction; Sookman, in a lengthy response, writes about Separating copyright fiction from facts
• some guy wrote something about how copyright is complicated

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The good folks at The Hill Times were nice enough to publish an op-ed of mine about Bill C-32 earlier this week.  The core of the argument is this: because of the competing nature of the interests which it seeks to balance, some parts of copyright law are inevitably going to be complicated - and complexity which leads to certainty is better than a quixotic attempt at "simplicity" which will only lead to disputes and further litigation.  The full text of the op-ed is available after the jump, below.

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

• Barry Sookman uploaded a great presentation on the new fair dealing and other exceptions found in Bill C-32
• ACTRA's official reaction to the bill: Canadian Content – free today, gone tomorrow (and a response)
• The Globe and Mail on How the new copyright bill will affect Canadian culture
• The Professional Writers Association of Canada has posted their Brief to the Ministers of Industry and Heritage (and a response)
• The Canadian Federation for the Humanities and Social Sciences has published Responding to Bill C-32

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Further to our earlier post (The Challenge of the Unlocatable Copyright Owner), Jeremy de Beer and Mario Bouchard have written a very interesting study entitled Canada's "Orphan Works" Regime: Unlocatable Copyright Owners and the Copyright Board.  In addition to providing an excellent description of the existing "orphan works" licensing process, there is a detailed statistical analysis done on the efficiency of that process.

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Aaron Moss, writing at Law Law Land, has a great post about identical or similar movie titles: Reuse and Confuse? The Recycling of Hollywood Movie Titles.  He provides a slew of examples of how Hollywood's major studios have dealt with competing movie titles (the settlement in respect of Austin Powers in Goldmember (a title to which the producers of Goldfinger objected) evidently obliged star Mike Myers to record on-air promos for airings of the latter movie).  As Moss notes, titles are generally not capable of copyright or even trade-mark protection, so in what arena do disputes arise and get settled?

The answer is the MPAA’s Title Registration Bureau, a voluntary agreement that is binding on all member organizations of the MPAA, including the major studios, as well as independent producers who sign the agreement. Members register in-development film projects with the bureau, which sends out lists of proposed titles. The members can then object to a title that is similar to one that has been previously registered. If the challenged title is not voluntarily withdrawn by the registering studio, the dispute will proceed to mandatory arbitration.

For a Canadian take on the topic of protecting film and TV titles, see my IPilogue post (reproduced in full after the jump - and which, ironically, bears one of the single worst titles I've ever fashioned for a blog post), Neither Fish Nor Fowl – Trade-mark and Copyright Protection for Titles.

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Sometimes, it takes a pirate to beat a pirate.

LimeWire LLC, one of the original file-sharing software developers, are trying to stop various other developers from distributing a "pirate edition" of the LimeWire program. On October 26, a permanent injunction was issued against the company, which enjoins LimeWire from distributing its software. Now, it seems that LimeWire has joined the fight against copycat programmers selling the "LimeWire Pirate Edition" of the original program.

In a statement that can be found on the official LimeWire website,  the company demands that "all persons using the LimeWire software, name, or trademark in order to upload or download copyrighted works in any manner cease and desist from doing so". According to one computer developer/hacker who claims to be the leader behind the pirated version of the LimeWire software, the motivation behind this new program is to "make RIAA lawyers cry into their breakfast cereal."

Now the question for the RIAA may become, how do you stop the pirate of my pirate? 

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[Friend and colleague Simon Chester has graciously consented to our cross-posting the following item (which can also be found at slaw.ca).]

Six Canadian provinces have legislative recognition of Remembrance Day, though only two mention Two Minutes Silence, Ontario and Alberta. Nova Scotia for example says:

Every employer carrying on or engaged in an industry to which Section 3 does not apply shall, subject to Section 8, relieve the employees in the industry from duty, and suspend the operations of the industry, for a period of three minutes, at one minute before eleven o'clock in the forenoon.

This post is about silence, and the legal protection of silence. You have the right to silence. And in Quebec, a judge cannot refuse to adjudicate under pretext of the silence, obscurity or insufficiency of the law. In Britain, veterans' organizations have announced that they intend to use social media and YouTube in particular to promote remembrance with a video featuring noiseless contributions from Prime Minister David Cameron, Thom Yorke, the lead singer of Radiohead, Andy Murray, the tennis player, Martin Johnson, the England rugby coach as well as the British actors Bob Hoskins and David Tennant. The track costs £1 and has already garnered well over 25,000 followers on Facebook, who have joined a group entitled, "I’m going to get the Legion to Number 1 for Remembrance Sunday". Anyone who buys the digital single will also receive a video file, which can be downloaded and played either on a computer or on an MP3 player that has a screen, such as an iPod. It is not available as a compact disk or other physical format.

"We would love it if people watched the online video during the two minute's silence," said a spokesman. It is already on track to reach number one this Sunday, with the book maker Ladbrokes marking it down as favourite.

The Daily Telegraph reports from Leeds based marketers Communisis that British workers may be tempted to log on this morning at 11:

A quarter of 3,000 respondents asked in the survey claimed they would continue to send emails during tomorrow’s vigil, while one in eight admitted they would be happy posting status updates on Facebook and six per cent would continue to write a blog entry or post a message on the Twitter micro-blogging service. The survey was undertaken on behalf of Communisis, a marketing company, which said that typing recorded an average measure of 60 decibels and a conversation between two people was not that much louder at 80 decibels. Alistair Blaxill, director at Communisis, said: “The rise of social networking and online communications has created a workforce that feels the need to stay connected to their friends and colleagues whatever the circumstances. For many continuing to work and communicate despite the two minute silence will be second nature. “We hope that all of the British workforce will take a step back and stop what they are doing during the two minute silence, ceasing all communication, both on and offline.” The Royal British Legion, which organises the two minute's silence, said it was entirely up to individuals as to how they observed the tradition. "All we ask is that people stop, pause and reflect for two minutes," a spokesman said. He made it clear that emailing or tweeting would clearly fail to constitute "pausing and reflecting" but this year the charity does, in fact, want people to log onto the internet at 11 o'clock. That is because it has released a single to raise money, which can be downloaded from the internet with an accompanying video.

For intellectual property lawyers this raises the interesting - and entirely theoretical question, whether the Royal Legion video may have infringed the rights of the John Cage Estate, which has asserted rights over a musical work consisting of silence, namely 4 minutes and 33 seconds. Interestingly this work was rebroadcast this week as the choice of Ian McMillan on Desert Island Discs. The issues are fully canvassed by Jeffrey Richardson's The Sounds of Silence - How Copyrights Affect Composition, Michigan Bar Journal, Vol. 82, Issue 6 (June 2003), pp. 36-41.

The Planets' album Classical Graffiti contained a track entitled "A One Minute Silence", consisting of one minute of silence. In August 1952, however, John Cage had published a piano piece called 4'33'', which also consisted entirely of silent notes. Mike Batt, the man who composed and arranged The Planets' album, was accused of plagiarism from Cage's music publishers. While the case on silence copyright was seen as a potential test for establishing what a "musical work" could be if litigated, it was settled out of court with a reported six figure settlement. Batt had credited the piece initially to Batt/Cage just for a laugh. Batt justified his position

But my silence is original silence, not a quotation from his silence. My piece was qualitatively different because the recorded silence consists of the absence of noise, rather than the presence of ambient silence. I certainly wasn't quoting his silence. I claim my silence is original silence... Our's is better silence", he said, "it's digital. Their's is only analogue. Mine is a much better silent piece. I have been able to say in one minute what Cage could only say in four minutes and 33 seconds.

The Guardian Arts Section review compares a performance of the two works:

First, the Planets perform A One Minute Silence. Batt conducts, waving his hands contemplatively as though like he is stroking a cat in slow motion. The spangly people look at him intently. They all hold their instruments in the ready position, apart from the violinist. He must be the one that rebellious teenagers identify with. Let us call him Uranus. The "silence" constitutes these ambient noises: the hum of an air-conditioner, the swooshing of polyester trouser material, a jangle of keys, and a deep nasal exhalation. A minute later, it's all over. We applaud enthusiastically. Cage's 4'33" is performed next, by Marc Dooley, a clarinettist and employee of Peters Edition. He warms up with a few burbling arpeggios, and adjusts the sheet music. Then he solemnly inserts the clarinet into his mouth and begins. It becomes clear that this is a very different piece. Batt's work did not feature, for example, the rustling of paper as people followed the printed score (thoughtfully handed out beforehand), nor the footsteps of wandering camcorderists, nor the unzipping of a bag. The live performance of Batt's A One Minute Silence was actually unfaithful to the original CD version, which is simply one minute's-worth of the absence of any digital signal. Cage's 4'33", on the other hand, has always been meant to be an ambient soundwork, rather than a pure silence. In the post-performance discussion, Batt says: "Ours is better silence: it's digital. Theirs is only analogue." Let us, too, compare the scores. Cage's score consists merely of vertical ruled lines marked with timings. Batt's piece, on the other hand, is clearly in the key of G major (or E minor), and is more structurally complex, finishing with a flourish of metre-switching from five-eight to three-eight to four-four. These are obviously quite different pieces of music.

I predict that the Legion will go to number 1 on this week's charts, and the Cage Estate will decide to sit the infringement route out - sometimes even litigants with rights would look ridiculous to sue. Of course we've been down this road before. The British techno group Orbital (Phil and Paul Hartnoll) released the video below to protest against a statute which clamped down on the rave scene in England: Are We Here? (Criminal Justice and Public Order Act 1994?)

The Parliamentary draftsman had fun trying to describe a rave which is according to section 63:

a gathering on land in the open air of or more persons (whether or not trespassers) at which amplified music is played during the night (with or without intermissions) and is such as, by reason of its loudness and duration and the time at which it is played, is likely to cause serious distress to the inhabitants of the locality; and for this purpose— (a)such a gathering continues during intermissions in the music and, where the gathering extends over several days, throughout the period during which amplified music is played at night (with or without intermissions); and (b)“music” includes sounds wholly or predominantly characterised by the emission of a succession of repetitive beats.

And Remembrance Day may be marked by the Last Post, too, rather than silence.

Eric Wong will be at Dundas Square at 11 AM in Toronto.

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As Bill C-32 moves into the critical committee stage, commentary on the topic has been piling up at a frenzied pace.  Some selected materials for perusal:

• Hansard of the second day of Parliamentary discussion on second reading of Bill C-32
• Michael Geist: In Search of a Compromise On Copyright
• James Gannon: TPMs - A comprehensive guide for Canadian copyright law
• Barry Sookman: Some observations about the debates on Bill C-32 in the House of Commons
• Meera Nair provides some thoughts the day after second reading
• Nino Ricci: This updated copyright bill guts Canadian culture
• David Fewer had a letter published in the Ottawa Citizen regarding the proposed addition of "education" as a head of "fair dealing"
• Michael Geist summarized Where The Parties Stand on C-32's Digital Lock Provisions

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A round-up of questions and answers provided by entertainment law blogs (readers should note that the links below are to US-based blogs, and so the advice dispensed is limited to situations governed by US law):

• I'm Producing a Film Based On a Memoir. Any Tips to Minimize the Chance of a Defamation Suit? (Law Law Land)
• Legendary characters – public domain or protected? (Gordon P. Firemark)
• I'm Spoofing a Well-Known Person in My Film, Should I Worry About Defamation or Likeness Issues?(Law Law Land)
• Do I Understand This Unsolicited Submission Agreement, Saying That I Am Basically Giving Up All My Rights?(Law Law Land)
• How do I protect myself when I submit my idea? (Gordon P. Firemark)

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[The following post was written by Heenan Blaikie articling student Michael Shedletsky - I'd like to thank him for contributing to the Signal.]

Over twenty years ago, the Supreme Court of Ontario held in Planet Earth Productions Inc. v. Rowlands 73 O.R. (2d) 505 that photographic negatives and the copyright therein could be seized from the owner to satisfy a judgment debt. The Court stated that the negatives were worthless without the accompanying copyright to them. The decision relied on copyright falling under the definition of ‘choses in action’ used in section 19(2) of Ontario's Execution Act (RSO 1980, c. 146), and under the ambit of rights to chattels in section 18. Rights to chattels included, “any interest in or in respect of any goods, chattels or personal property… of the execution debtor”. At the time, the Execution Act, under section 17, only explicitly permitted the seizure of patents as personal property.

Shortly after the decision in Planet Earth, Professor David Vaver wrote a lengthy paper on the decision "Can Intellectual Property be Taken to Satisfy a Judgment Debt?" ((1991) 6 Banking & Finance Law Review 255). His view was that intellectual property should not be subject to sheriff’s seizure in Canada unless express statutory language permitted such seizure. Although it took over twenty years, the Saksatchewan Court of Queen's Bench in Wira v. Jubilee Enterprises Ltd (2010 SKQB 320) recently held that both trademarks and copyrights were not available for seizure by a judgment creditor. In the case, the Sheriff seized copyrights and trademarks registered in the name of the judgment debtor in regards to a board game named “Dare to Dream” as a result of a writ of execution in favour of the judgment creditor. The judge held that the copyrights and trademarks could not be seized because they were not choses in action and the Sheriff was ordered to return the intellectual property associated with the board game. However, even the judge in the Wira decision was of the view that his decision will be short-lived.

The Saskatchewan Enforcement of Money Judgments Act, S.S. 2010, c. E-9.22 received royal assent on May 20, 2010, but has not been proclaimed into force as of October 29, 2010. The EMJA permits the sheriff to seize intellectual property to satisfy judgment debts. According to section 2(1)(z) of the EMJA, “intellectual property” includes any property right or interest in: a copyright; letters patent for an invention; a trade mark; an industrial design; integrated circuit topography; plant breeder’s rights; and a transferable licence, interest or right derived from or associated with any of the intellectual property mentioned in subclause (i) to (vi); whether the property right or interest arise or was recognized under the law of Canada or the law of any other country.

In Ontario, the Execution Act still does not cover the seizure of intellectual property other than patents. However, the Planet Earth decision is precedent for the seizure of copyrights. Perhaps Ontario and other provinces will amend their execution statutes to follow the Planet Earth decision and Saskatchewan’s EMJA by permitting all forms of intellectual property to be seized to satisfy judgment debts. It is only a matter of time before the sheriff attempts to seize copyrights or trademarks in Ontario again. Maybe then the legislators will revisit this issue, and give it further consideration. For additional background, please see this IPilogue post on the topic.

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The Globe and Mail last weekend ran an interesting article by Kate Taylor: Visual artists seek a percentage of resale riches (hat tip: Stikes).  As the article notes:

In 59 ... countries including most of Europe, [painter Mary] Pratt would get a small percentage (from a fraction of one per cent to five per cent, depending on the sale price) of the hammer price of her resold painting thanks to a principle known as “droit de suite,” or the artist’s resale right.

The right, which has existed in France for decades but was only introduced to the U.K. in 2006, means that an artist, who has previously sold works for low prices, can profit from rising prices on subsequent sales of those pieces. The law applies after death too, so that an artist’s heirs would get a share until copyright expires, 75 years after death in most of these countries.

“The whole value of an art work is not made on the original sale,” said April Britski, national executive director of the Canadian Arts Representation (CARFAC). “Visual artists are at a great disadvantage compared to writers or musicians who keep getting money from recordings or books. [With art,] you sell it once and it’s gone.” Britski said the right would be particularly valuable to older artists and to Canada’s aboriginal artists, who may sell works for much less than urban collectors eventually pay for them. Australia has just adopted the right specifically to address the exploitation of its aboriginal artists.

CARFAC has published information regarding the resale right (see their brief backgrounder and detailed Recommendations).  Also worth reading are this very detailed treatment of the Australian resale regime (along with some international comparisons) prepared by Caslon Analytics, Mara Grumbo's "Accepting Droit de Site as an Equal and Fair Measure under Intellectual Property Law and Contemplation of Its Implementation in the United States Post Passage of the EU Directive" 30 Hastings Comm. & Ent. L.J. 357 (2007-2008) and the California Arts Council's online resources about the California Resale Royalty Act.

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More selected Bill C-32 (The Copyright Modernization Act)-related commentary for perusal:

• James Gannon points out Charlie Angus’ C-32 Blunder
• Gannon also discusses the Bill's TPM provisions and queries What Do the WIPO Treaties Require?
• Barry Sookman has posted his slide presentation Bill C-32: Impacts on the IT Community
• Michael Geist chronicles the first day of Bill C-32's Second Reading: The Bill C-32 Debate Begins: Locks, Levies & Misinformation on Fair Dealing
• Hansard of the first day of Second Reading is available here

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IP Osgoode has announced the winners of its 2010 IP Writing Challenge.  Pascale Chapdelaine's winning entry in the Graduate Students category, "The nature and justification of the consumer’s ownership rights in the copy of a copyrighted work", should be of particular interest to entertainment lawyers.  As can be gleaned from its title, the paper addresses the theoretical analysis underlying what kinds of rights consumers obtain when they purchase an entertainment product, such as a CD or digital file.  We've talked earlier here at the Signal about Canadian law and what is, in the US context, referred to as the "first sale doctrine" (First Sale Doctrine and Canadian Law) and Chapdelaine's article provides some insight into similar areas.

UPDATE (December 1, 2010): Pascale has posted further thoughts on the matter at IPilogue: What is Mine is Not Yours and What is Yours is in Fact Mine: Copyright, Consumers and First Sale.

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The recent decision of the Southern District of New York Court in The Sheldon Abend Revocable Trust, v. Steven Spielberg et al., No. 08 Civ. 7810 United States District Court, S.D. New York, September 21, 2010 (full text of the decision is available here) offers another opportunity to see how courts handle assessing the "idea/expression dichotomy" in cases of alleged copyright infringement.  Mark Litwack offers his thoughts on a case which pitted the owners of copyright in the short story "Rear Window" against owners of copyright in the movie "Disturbia".  The case is particularly interesting as the court describes just how similar two works can be at high levels of abstraction and yet not be instances of infringement, and is useful for assessing the viability of infringement claims when dealing with plot elements and premises in entertainment-related projects.  As Litwack notes:

The court found that “It cannot be disputed that both works tell the story of a male protagonist, confined to his home, who spies on neighbors to stave off boredom and, in so doing, discovers that one of his neighbors is a murderer. The voyeur is himself discovered by the suspected murderer, is attacked by the murderer, and is ultimately vindicated. Although it is possible to characterize the plots of both works so they appear indistinguishable, such similarity is not, standing alone, indicative of substantial similarity. The law of copyright only protects an author's particular expression of an idea, not the idea itself.”

The court concluded that the expression of the voyeur-suspicion-peril-vindication plot idea is quite different in the two works. This broad plot idea, or premise, is not a protectible element. Similarity at this level of generality is not probative of the question of infringement.

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The decision of the High Court of Ireland (which is a trial level court and not an appellate court) in EMI Records (Ireland) et al v UPC Communications (full text of the decision available here) is a fascinating (if long) read.  The plaintiffs sought an injunction against an internet service provider to "prevent the theft of their copyright by third parties illegally downloading it over the internet".  Peculiarly, according to the decision, "the form of injunction is left to the discretion of the court".  Analyses of the decision which are well-worth reading are offered by Barry Sookman and James Gannon.  In any event, in light of his finding that "the business of the record companies is being devastated by internet piracy", it is clear from the tenor of the decision that Mr. Justice Charleton of the High Court really, really wanted to grant an injunction - but found that the High Court lacked the jurisdiction to do so.  The High Court's conclusion:

Solutions are available to the problem of internet copyright piracy. It is not surprising that the legislative response laid down in our country in the Copyright and Related Rights Act 2000, at a time when this problem was not perceived to be as threatening to the creative and retail economy as it has become in 2010, has made no proper provision for the blocking, diverting or interrupting of internet communications intent on breaching copyright. In failing to provide legislative provisions for blocking, diverting and interrupting internet copyright theft, Ireland is not yet fully in compliance with its obligations under European law. Instead, the only relevant power that the courts are given is to require an internet hosting service to remove copyright material. Respecting, as it does, the doctrine of separation of powers and the rule of law, the Court cannot move to grant injunctive relief to the recording companies against internet piracy, even though that relief is merited on the facts.

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A plethora of selected Bill C-32 (The Copyright Modernization Act)-related commentary from the past few weeks for perusal:

• James Gannon on enshrining protection for TPMs:Protecting Protection is Nothing New
• Carys Craig also on TPMs:Locking Out Lawful Users
• Kate Taylor in the Globe: Can copyright bill survive with all its kinks?
• Free stuff! From "Radical Extremism" to "Balanced Copyright": Canadian Copyright and the Digital Agenda - all twenty essays plus introduction available now for download under Creative Commons license
•  Barry Sookman: Turning up the rhetoric on C-32’s TPM provisions

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While late to the party, I thought I'd take a moment to provide a legal perspective on last week's blogosphere brouhaha regarding the Canadian Broadcasting Corporation's evident policy of not allowing Creative Commons-licensed music to be used on (at least) its radio broadcasts and podcasts.  For background, see the comments to this post at the CBC's website, particularly the comment made by Chris Boyce, who is Programming Director at the CBC; this post by Michael Geist; this post at the Creative Commons blog (which itself contains numerous links to other sites covering the story); and this post by Chris Castle.  I should also note, for what it's worth, that I am an admirer of the Creative Commons effort to create a licensing scheme which facilitates the dissemination of creative works.

If I had to use two phrases to summarize my concerns to a client who asked whether they could or should be using CC-licensed materials on their radio broadcasts or podcasts, it would be these: ease of use; and lack of legal recourse.

To see how we get to those concerns, let's start by looking at how the CBC is currently situated.  They have, according to comments left at the CBC website, a bulk licensing arrangement in place with a music provider (APM Music).  That arrangement likely provides something along these lines: the CBC pays a license fee, gets access to a huge library of music, and can essentially make whatever use they'd like of the music contained in that library when creating their broadcasts.  All they do is give their employees/contractors access to the library and they can have at 'em - find a song you like and stick it into the program, no worries, because it's all covered by the license which a lawyer farther up the chain has vetted and confirmed is acceptable.  How does that compare to the situation where someone wants to make use of CC-licensed music?  Let's back into the answer to that question by looking at Chris Boyce's comment [emphasis added]:

The issue with our use of Creative Commons music is that a lot of our content is readily available on a multitude of platforms, some of which are deemed to be “commercial” in nature (e.g. streaming with pre-roll ads, or pay for download on iTunes) and currently the vast majority of the music available under a Creative Commons license prohibits commercial use.

In order to ensure that we continue to be in line with current Canadian copyright laws, and given the lack of a wide range of music that has a Creative Commons license allowing for commercial use, we made a decision to use music from our production library in our podcasts as this music has the proper usage rights attached.

As others have pointed out, there is some CC-licensed music which is available for commercial use (though as Boyce notes, the vast majority is not).  Let's look at the explanation offered by the CC wiki:

The majority of music released under a CC license uses one of the licenses that prohbit commercial use (BY-NC, BY-NC-ND, BY-NC-SA). Below are some pointers to finding music that allows commercial use.

If your use also involves adapting the music (including syncing to video), you'll further have to exclude music under Attribution-NoDerivatives (BY-ND; which does allow commercial verbatim use), and either release your work under Attribution-ShareAlike (BY-SA) or also exclude music under that license. This leaves music under plain Attribution (BY) or in the public domain.

Already we're starting to get into some potential wrinkles.  We have to exclude all music licensed under an NC license, but what about ND licenses?  The wiki explanation says if you want to "adapt" the music, you have to exclude BY-ND licensed music.  What does "adapt" mean?  Let's look at a Canadian CC BY-ND license: there's no mention of the word "adapt", but it does say that a licensee cannot "alter, transform, or build upon this work".  That starts to worry me.  What does "alter" mean?  Does that mean I can't edit the work (for example, just playing the chorus, or editing the track so that the chorus comes before the verses, or speeding it up, or slowing it down)?  What exactly are my radio programmers planning on doing with this track?  Are they going to play the entire track as a track so listeners can listen along, or are they planning on using the track is some more innovative way, such as incorporating it into an on-air skit?  It's hard for me to predict what someone is going to do with the song, and hence whether the BY-ND license will permit that use - presumably the bulk licensing arrangement already addresses this kind of situation, so that would be one less headache to deal with. 

If I drill down further into the full text of BY-ND license, I'm really not any farther ahead - there's still no definition of "adapt", or "alter", and while there's a definition "Derivative Work", the license doesn't actually state that what I'm allowed to do or not do in connection with a "Derivative Work", though it does say that a "Derivative Work" is "a work that produces or reproduces the Work or any substantial part thereof in any material form".  Going back to the face-plate of the BY-ND license, it states "No Derivative Works" - which seems to mean that I can't incorporate the licensed Work into any other work, which would preclude me from using the Work in a radio show, which is itself a "work".  The full text of the license does include a definition of a "Collective Work", and states that a Collective Work is not a "Derivative Work" - but is a radio broadcast a "Collective Work"?  Hard to say - arguably it is, but all of the examples used to illustrate the definition of "Collective Work" are print-based.  Again, my bulk license would expressly contemplate using licensed tracks in radio broadcasts, so my concerns there would be minimal.

Maybe I'll just avoid the potential confusion and, as the CC wiki recommends, limit myself to songs which are licensed under a BY (Attribution) license.  (The BY-SA (Share Alike) license is a non-starter since it would mean that the resulting work (ie the radio broadcast) would itself need to be licensed on a CC BY-SA basis, and I'm assuming that the client isn't willing to contemplate - maybe they are, but that's going to get into policy considerations which are beyond the scope of this exercise.) 

So, the edict goes forth: employees, you can use music licensed under a CC BY licenses.  Have at 'em!

 The CC wiki, in addition to pointing to a variety of other sites which contain CC licensed music which allows for commercial use, contains this information:

As of October 2010 Jamendo hosts 7414 albums under BY-SA, 1607 albums under BY, and 987 albums under BY-ND.

Clicking on the middle link takes us here, and since we're patriotic Canadians we're going to filter for Canadian music, which takes us here.  Clicking on the first album in the search results reveals a critical flaw - the album is actually licensed under a BY-SA license, not just a BY license (it's also licensed under a US version of the CC license, not a Canadian version, but let's set that aside for the moment).  So, as a lawyer, I'm already getting worried for my client - it seems that every time one of their employees tries to find a simple BY licensed song, they're going to have to investigate whether the search engine their using is actually pulling up only BY licenses, or BY+ licenses.  The second album is also BY-SA, but when I get to the third album, I discover that it is a simple BY license.  Taking a spin through the full text of the Attribution 3.0 license, it's looking good (setting aside for the moment that it is a US form of the license, not a Canadian one) - no concerns about restrictions on use, no real issues at all, frankly, until we get to this:

UNLESS OTHERWISE MUTUALLY AGREED TO BY THE PARTIES IN WRITING, LICENSOR OFFERS THE WORK AS-IS AND MAKES NO REPRESENTATIONS OR WARRANTIES OF ANY KIND CONCERNING THE WORK, EXPRESS, IMPLIED, STATUTORY OR OTHERWISE, INCLUDING, WITHOUT LIMITATION, WARRANTIES OF TITLE, MERCHANTIBILITY, FITNESS FOR A PARTICULAR PURPOSE, NONINFRINGEMENT, OR THE ABSENCE OF LATENT OR OTHER DEFECTS, ACCURACY, OR THE PRESENCE OF ABSENCE OF ERRORS, WHETHER OR NOT DISCOVERABLE. SOME JURISDICTIONS DO NOT ALLOW THE EXCLUSION OF IMPLIED WARRANTIES, SO SUCH EXCLUSION MAY NOT APPLY TO YOU.

Here's my legal take on that: um, no.

Even better/worse, at the bottom of the license is this:

Creative Commons is not a party to this License, and makes no warranty whatsoever in connection with the Work. Creative Commons will not be liable to You or any party on any legal theory for any damages whatsoever, including without limitation any general, special, incidental or consequential damages arising in connection to this license.

Here's my legal take on the combination of those two quotes: no, no, no, no, no.

My client, the licensee, could take no comfort from these licenses whatsoever.  What assurances do I have that the person who is putting up this music and tagging it with a CC license has any rights whatsoever to do so?  I have no idea whether this person owns the music they claim to own.  Creative Commons (understandably) is also refusing to make any representations about the rights in the song.  So if it turns out that the person who is purporting to make this song available under a CC license does not, in fact, have the right to do that, then the licensee is left with no obvious legal recourse - can't sue the person who put up the song (since the license disclaims representations and liability) and can't sue CC itself (since the license disclaims representations and liability).  If I use a bulk licensing service and something goes wrong, I can sue them (i.e., an entity with actual assets) for breach of the representations and warranties in their license with me - and the onus is on them to ensure that they have properly licensed the rights they are claiming to grant to me.  A CC license, on the other hand, expressly states that it contains no representations and warranties, and that the licensors are not liable for damages.

So we get back to my concerns expressed above.  In comparison to a bulk licensing service, the CC approach contains a number of drawbacks: a comparatively limited selection of music; high transaction costs in that each potential track will not only need to be paid for, but someone will need to actively review each license for compliance with the strict BY requirement (as distinct from the bulk licensing scheme where only one license per provider is reviewed); a lack of certainty regarding ownership of the rights which are purportedly being licensed; and a lack of meaningful legal recourse if it turns out that the "licensor" did not own the necessary rights.

As I alluded to above, I think the Creative Commons licensing scheme is an innovative and productive undertaking, one which places an enormous amount of power in the hands of licensors and licensees who use the licenses in an informed manner.  But the concerns outlined above illustrate that an enormous amount of caution is warranted in making the decision to use such licenses, particularly for large commercial or public broadcasters.  (As an aside, I note that Chris Boyce's original comment indicated that while the CBC would not be using CC-licensed music, it would continue to use other CC-licensed works such as photographs - I don't think that the analysis outlined in this post differs all that much when it comes to the use of works other than music.)

UPDATE: I neglected to make mention of Tony Duarte's incisive post at IPilogue which examines CC-type licenses for film and TV productions, and which raises some concerns of broader application when reviewing such licenses - The Hazards of Mass Licensed Internet Digital Content For Film and Television Reuse.

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The past week has seen a number of different entries in the ongoing debates regarding Bill C-32 (The Copyright Modernization Act):

• Barry Sookman: Are the TPM provisions in C-32 more restrictive than those in the DMCA?
• Michael Geist: From Rhetoric to Reality: The Key Issues in Bill C-32
• James Gannon: The full picture on Michael Geist’s “facts” about Canadian copyright
• Barry Sookman: Separating facts from hype about C-32

Also of particular interest is the availability of the Library of Parliament's Legislative Summary of Bill C-32. 

On an anticipatory note, Irwin Law will in October be publishing From "Radical Extremism" to" Balanced Copyright": Canadian Copyright and the Digital Agenda.

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 Michael Geist has an opinion piece on Bill C-32 in the September 27, 2010 issue of The Hill Times.   While Professor Geist likes the new consumer exceptions in the Bill that permit time shifting, format shifting, back up copies and UGC, he continues to be troubled by the Bill’s digital lock provisions (known as the anti circumvention rules in Bill C-32).  Geist strikes a somewhat alarmist tone on digital locks, arguing that these provisions: “effectively trump all other copyright (particularly fair dealing and the new consumer exceptions)”; are a “huge flaw that undermines many of the positive steps forward”; and that a “compromise” needs to be found.

However, a closer look at the new fair dealing exceptions and the digital lock provisions underscores why rights holders are so intent on seeking amendments to the Bill going in the other direction. Several commentators (Sookman, Gannon) have pointed out that on closer examination the prohibition against circumventing digital locks does not extend to circumventing copy-control protection measures. Therefore, in no way do the digital lock provisions “trump” any existing fair dealing exceptions or the new parody and satire fair dealing exceptions found in Section 21 of Bill C-32. Once you have legal access to a work, there is no provision in the new Bill that would prevent anyone from making use of the fair dealing copyright exceptions, digital lock or not. So one might reasonably take issue with Geist’s assertion that creators will not face significant financial losses under the Bill’s list of new fair dealing categories and consumer exceptions, suggesting that the need to fine tune these loopholes is clearly a matter of perspective. Rights holders continue to be adamant that the current exceptions in the Bill are too broad and potentially undermine other protections in the Bill against digital piracy. 

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The US Federal Court of Appeals for the Second Circuit decision in US v ASCAP (sometimes referred to as ASCAP v RealNetworks) (text of decision is available here) has generated a surprising amount of commentary - particularly from practitioners and academics outside of the United States.  The two cruxes (cruxii?) of the decision are that the downloading of a digital song file does not constitute a "public performance" for purposes of US copyright law - and so entities (such as RealNetworks and Yahoo!, who were applicants and appellees in the case) who offer music downloading services to end-users are not liable to make payment to performing rights organizations such as ASCAP - and that the district court charged with setting the royalty which ASCAP could charge to online service providers made some analytical errors in deciding on a rate.  For purposes of this post, only the first issue, that relating to public performances, will be discussed.

As Barry Sookman has noted (in a comprehensive post on the matter), the decision highlights differences between Canadian and US copyright law.  Ben Chaliss, writing at the 1709 Copyright Blog (and from a UK perspective), also provides a useful review of the decision in "Internet rates, rights (and wrongs)".  As Barry notes,

[t]he decision highlights a significant difference between US and Canadian law on whether copyright owners of the performance rights in musical works are entitled to royalties when a copy of a music file is transmitted over a network

I'd like to explore how that "significant difference" arises, because I think it's worth highlighting the fact that it stems from fundamental differences in how our respective copyright legislation conceptualizes the "bundle of rights" which comprise copyright, and not from divergence about how to interpret the same right.  In short, the same activities (selling a song for download over the internet) are treated differently on either side of the border because our copyright legislation characterizes the rights which are engaged in completely different ways.

In the United States, as has now been confirmed by the 2nd Circuit Court of Appeals, the downloading of a song does not constitute a "public performance" - an exclusive right of the copyright owner accorded by Section 106(4) of the US Copyright Act - and so no royalty is payable to ASCAP (or, presumably, BMI or SESAC, the other public performance collectives).

In Canada, by contrast, the federal appeals courts appear to have determined that SOCAN (the Canadian equivalent of ASCAP, BMI and SESAC) is entitled to a royalty when a song is downloaded - but not because the song has been "publicly performed".  Instead, under Canadian law, a royalty is payable because the composition has been "communicated to the public by telecommunication", a right which is exclusively controlled by SOCAN (see the Tariff 24 Ringtones Decision (2008 FCA 6) and the SOCAN v Bell Canada decision (released September 2, 2010)).

Compare the wording of the relevant pieces of legislation:

• in the US Copyright Act: "the owner of copyright under this title has the exclusive rights to do and to authorize ... in the case of ... musical ... works ... to perform the copyrighted work publicly" (Section 106(4))
  
• in the Canadian Copyright Act: "“copyright”, in relation to a work, means the sole right to ... perform the work or any substantial part thereof in public ... and includes the sole right ... in the case of any ... musical ... work, to communicate the work to the public by telecommunication" (Section 3(1))

ASCAP is not entitled to a royalty when a song is downloaded because that song has not been "publicly performed".  Under Canadian law, however, whether the song has been "performed" or not (whether publicly or otherwise) is largely irrelevant  - SOCAN is entitled to receive a royalty when a song is downloaded because the song has been "communicated to the public by telecommunication".  Canadian courts are not relying on an expansive concept of "performance" (whether public or not) when affirming the right of SOCAN to collect a royalty for downloads - they are recognizing the existence of a distinct, separate (even if logically subordinate) right.

The foregoing isn't to say that the decision which the Canadian courts have reached about downloads and communications to the public is unimpeachable.  While it's difficult to find fault with the US 2nd Circuit's ruminations on the nature of a "performance" and its conclusion that downloading a song doesn't resemble anything we would normally think of as a performance (as the court rather drily noted, "a download plainly is neither a 'dance' nor an 'act'"), the conclusion of the Canadian Federal Court that a download constitutes a communication to the public seems somewhat less secure.  The Federal Court in the SOCAN v Bell decision notes that there is a distinction between the concepts of a "performance in public" and a "communication to the public", but focuses its analysis only on the latter - and ends with the conclusion that one can communicate to the public "by means of a series of private communications" (supplemented by the notion that it is mostly the intention to communicate to the public which is conclusive, even if you only succeed in being "heard" (or downloaded) by one person).  The Court used an apt metaphor to describe its reasoning: a store sells goods "to the public" even if it only sells items one at a time.  That being said, the stability of that analysis, being heavily dependent on context, is open to question, and, as Sookman alludes, a Supreme Court confirmation would be welcome.

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The Toronto Star has been publishing an excellent series of articles by Kate Taylor on Canadian culture in a digital age - the series is a great demonstration of the potential power of long-form journalism.  A couple of particular highlights for me were the discussion about the need for "Canadian content" radio regulations in light of the sense that the Canadian music industry has matured to the point where such content mandates may no longer be required, and "The downloading debate: when it comes to copyright, it’s impossible to satisfy everyone", whose title pretty much speaks for itself.  With respect to the latter article, Chris Castle has posted a response to the proposal raised by Eddie Schwartz for an internet-wide music licensing scheme.

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CBC News reported earlier this week about the lack of availability in Canada of online/mobile streaming services in Canada such as Pandora and Spotify: "Mobile music service rejects Canada, blames fees".  As noted in the CBC story:

...in Canada, the idea is barely getting off the ground, and one of the biggest players in the industry is blaming royalties sought by major record labels.

"These rates … are astronomical," Tim Westergren, founder of California-based Pandora wrote in an email to The Canadian Press.

 "As long as rights societies take this approach, they will prevent Pandora from launching to Canadian users."

The story lit up Canadian websites and Twitter feeds, cited as evidence that Canadian music industry copyright owners were seeking excessive royalties, thereby keeping out desired services (and, for the record, I personally loved using Pandora during the brief period of time it was available in Canada and would welcome its speedy return).

It strikes me, however, that the story is somewhat more nuanced than that: it should be understood as a story about the collective administration of copyright in Canada, the effects of government intervention in the marketplace and how those two factors impact business negotiating strategies.  The words of Tim Westergren are probably best seen as a snapshot of a moment in time in the back-and-forth negotiations between a licensor and licensee - and in this post I'll try to describe what it is about the Canadian copyright licensing milieu which explains the narrative set out in that CBC story.

Before going further, it should be noted that Canada is hardly unique when it comes to Pandora: as the FAQ on the Pandora website notes, Pandora only offers its music streaming service in the United States - so Pandora hasn't been able to obtain the licenses it needs on terms it finds agreeable in any country except <strike>Canada</strike> the United States [CORRECTED: 9.26.10].  Additionally, as the CBC story notes, "other [similar] services are willing to pay the fees" - MOG has plans to enter the market soon (and hasn't to date because of Canada's "relatively small population", and Rdio is already here, having entered into agreements with the relevant rights collectives.  In other words, read the story long enough and it starts to look like the problem lies less with Canada's copyright licensing scheme than with Pandora's willingness to accede to the rates which are being put on the table in front of it.

And therein lies the crux of this story: Pandora and Re:Sound, one of the copyright collectives from which Pandora needs to obtain a license to stream music in Canada, are still in the midst of negotiations about the royalties which Pandora would be obliged to pay.  But, because of the structure of the Canadian copyright licensing regime, the dynamic at work is not simply two commercial entities negotiating in an open market - it involves two entities negotiating in a situation where one of them has the ability to resort to the enforceable decision of a state entity (the Copyright Board of Canada) if it thinks it can get a higher rate than what the party across the table is willing to <strike>give</strike> agree to [CORRECTED: 9.26.10].

In Canada, there are three sets of rights-holders whose interests are engaged when a service like Pandora proposes to stream music online: rights in the compositions (owned by composers and music publishers), rights in the sound recordings (usually owned by record companies) and rights in the performances contained on the sound recordings (often owned by record companies, though the performers usually retain a right to receive royalties).  In order to obtain those rights, Pandora need not track down each individual owner, but rather can obtain a license from a collective which acts on behalf of its members - in the case of online streaming, Pandora would need to deal with SOCAN (for public performance rights in the compositions), CMRRA/SODRAC Inc. (CSI) (for reproduction of the compositions) and Re:Sound (formerly the Neighbouring Rights Collective of Canada) (for public performance of the sound recording and performers' performances) (and potentially AVLA/SOPROQ for reproduction of the sound recording in the event that AVLA/SOPROQ elect to file a tariff).  Thus, at least three sets of negotiations are required - while seemingly straight-forward, they are complicated by the fact that collectives in Canada have the ability to have tariffs certified by the Copyright Board of Canada.  The certification of a tariff means that the applicable collective no longer needs to enter into individual negotiations with an end-user - they can simply offer the license on the terms set out in the tariff.

Making matters even more complicated is the fact that there are no currently certified tariffs applicable to the online streaming of music in the current year. SOCAN's Tariff 22.A, which covered "online music services" which "deliver[] streams to subscribers", only covered the years 1996-2006.  SOCAN's proposed tariffs for subsequent years await certification by the Board.  Similarly, the CSI certified tariff for online music services covered only the years 2005-2007 - they also have filed various proposed tariffs for subsequent years (for further details on their most recent tariff proposal applicable to online music services, see here).  Re:Sound, however, has never had a certified tariff for online music services - they have recently (July 2010) filed a proposed tariff with the Copyright Board which would cover what the proposed tariff describes as "semi-interactive webcasting" (a term, it should be noted, which does not appear in either the SOCAN or CSI tariffs) - and it is that Re:Sound proposed tariff which raised the eyebrows of the CBC reporter who wrote the Pandora story under discussion.  As noted in the CBC story:

[Re:Sound] wants to charge web-based music sites that stream to mobile devices the greater of two figures: 45 per cent of the site's gross revenues in Canada or 7.5-tenths of a cent for every song streamed. While that 45% number certainly seems high on first glance, to understand its significance it has to be put into context: the number is just Re:Sound's "opening bid", so to speak, in a process taking place before the Copyright Board.  Re:Sound will almost certainly not get a number in the final tariff which is anywhere near what they've requested - but they have every incentive to ask for the highest plausible amount, knowing full well that the number will be countered with a much lower number by interested parties who object to it, and that the Board will in all likelihood end up at a number somewhere between the opening numbers offered by the participants.  It's a bit like a segment on Pawn Stars: if you're looking to sell something, go in asking for an outrageous amount in the expectation that Rick is going to come back with a low-ball counter and you'll end up somewhere in the middle.  But obtaining a license in Canada is like a really strange version of a negotiation, because if you can't come to a mutually agreeable price, one party gets to go to (what is in effect) a government agency and have them set the price. And that's where Pandora seems to find itself: at a guess, they opened negotiations with Re:Sound, couldn't come to an agreement on what the royalty rate should be, and Re:Sound said something along the lines of "Fine, then we'll have the Copyright Board set the royalty" and started the process by asking for a massive (and likely unsustainable) amount.  The CBC story, however, glosses over that entire process. But this isn't a uniquely Canadian problem, and none of this will be a surprise for anyone who has followed Pandora: it was only fairly recently that they were able to come to terms in the United States for the exact same rights as those controlled by Re:Sound:

The long, strange saga surrounding webcaster royalty payments is (mercifully) over after a multiyear fight.

Back in 2007, the US government's Copyright Royalty Board set royalty rates for the online streaming of music that many in the business felt were unrealistically high for a nascent market, leading at least one prominent streaming service, Pandora, to threaten to pull the plug. Negotiations over an alternate pricing scheme broke down earlier this year, leaving things looking grim. With a slight nudge, however, the parties returned to the table and today announced an agreement that provides webcasters with a new royalty structure.

The fact that negotiations were even happening took Congressional action. In 2008, Congress passed the Webcaster Settlement Act, which gave the webcasters roughly a year to come to terms with SoundExchange, the entity that collects royalties on behalf of the rightsholders. But the deadline set in that act expired earlier this year, an event that triggered the breakdown of the negotiations.

Pandora founder Tim Westergren tells Ars that the parties were reasonably close to an agreement at that point, but backed away once the deadline passed. Westergren credited a number of factors for getting things back on track, including pressure from the webcasters' audience and some innovative ideas from A2IM, a trade group which represents independent musicians; he also praised Representative Howard Berman (D-CA) for getting the parties an extension on the deadline.

If there were no government presence in the marketplace, it's possible these negotiations would be resolved more quickly - the ability to resort to the binding decision of the Copyright Board means that the parties aren't fully incentivized to conclude negotiations between themselves.  Compare the lengthy saga, described above, that Pandora endured in the US with SoundExchange (which levies royalties which are subject to the oversight of the US Copyright Royalty Board, and so is broadly similar to the situation in Canada) with the apparent lack of drama that SoundExchange faced with ASCAP, BMI and SESAC (whose royalties are not subject to the oversight of a government agency).  The problem isn't so much that collectives are seeking to maximize the fees they receive (that's not only rational, but what we would expect any actor in a marketplace to do), the problem is the distorting effect of having a government-sanctioned decision imposed on the parties and the agonizing slowness of those decisions being made.  By having negotiations over the royalty rate for Canadian music licenses modulated by the Copyright Board (which, because it is, broadly speaking, a government actor is obliged to observe various due process requirements which end up slowing down the process), we end up with a cumbersome, expensive system which may not be well-placed to respond to the pace of change in a digital world.

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[Good artists copy - great artists steal (I'm so hardcore I won't even provide an attribution for that aphorism).  To that end, we're going to slightly alter our "Questions and Answers" feature: instead of just linking to question/answer posts found at other blogs, we're going to steal their questions and provide our own answers!  (Innovative, yes?)  There's a practical reason for this, however: many entertainment and media law blogs are written by and for residents of the United States, and so the same question posed by a Canadian would result in a different answer.  Inspiration for this post was provided by Jesse Saivar at Law Law Land.]

So, you've written a novel, composed a song, taken a photograph or drawn a picture - assuming you're not an employee and created that work in the course of your employment, congratulations, you're the author of that work and own copyright in it.  Is it necessary to register your copyright?  No, it is not necessary to file a registration, but there are certain advantages to doing so under the Copyright Act (Canada).  What are those advantages?  Section 53 of the Copyright Act (Canada) provides the details:

(1) The Register of Copyrights is evidence of the particulars entered in it, and a copy of an entry in the Register is evidence of the particulars of the entry if it is certified by the Commissioner of Patents, the Registrar of Copyrights or an officer, clerk or employee of the Copyright Office as a true copy.

(2) A certificate of registration of copyright is evidence that the copyright subsists and that the person registered is the owner of the copyright.

(2.1) A certificate of registration of an assignment of copyright is evidence that the right recorded on the certificate has been assigned and that the assignee registered is the owner of that right.

(2.2) A certificate of registration of a licence granting an interest in a copyright is evidence that the interest recorded on the certificate has been granted and that the licensee registered is the holder of that interest.

In short, registering your copyright (or the interest which you have acquired in copyright by means of an assignment or license) provides prima facie evidence that you in fact have the rights which you claim to have.  That can be very handy in the event that you find yourself in court - if a copyright owner sues someone for infringement, the first argument which the defendant will try to raise is to require the plaintiff to prove that (a) copyright actually exists in the work in question, and (b) the plaintiff actually possesses the rights it claims to have.  A certificate of registration from the CIPO will be proof of both - in the absence of such a certificate the plaintiff will be obliged to provide some other relevant evidence (such as documentation relating to the creation or publication of the work, contracts indicating that the plaintiff is the owner or licensee of the rights, etc.).  That $65 filing fee can save a lot of hassle down the road.

In addition, Section 39(1) of the Act provides that an injunction is the only available remedy for infringement if the defendant "was not aware and had no reasonable ground for suspecting that copyright subsisted" in the work in question.  But that limitation does not apply if the work was registered on the date of infringement.

It should be noted that this is quite different from United States law as it relates to copyright registration: in the United States, a registration with the Library of Congress is required in order to bring an action in US federal court, and statutory damages and recovery of legal fees are only available if registration was obtained in a timely manner - none of those limitations apply in Canada.  Finally, the very different nature of the Canadian copyright registry, as compared to that in the United States, should be remarked upon: in the United States an actual copy of the work in question must be deposited in order to obtain registration; in Canada, no deposit is required or even permitted.

The Canadian Intellectual Property Office (CIPO), the good folks who maintain Canada's copyright registry, offers a handy online guide to filing an application for registration of a copyright. 

Important legal stuff (which can also be found in our Disclaimer): This post contains information of a general nature that is not intended to be legal advice and should not be considered or relied on as legal advice. Any reader of this post who has legal matters involving information addressed in this post should consult with an experienced entertainment lawyer. This post does not create an attorney-client relationship with any reader.

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Following up the earlier post "Canadian Copyright and Derivative Rights in Non-Fiction Books", Christina Bohannan has recently published Taming the Derivative Works Right: A Modest Proposal for Reducing Overbreadth and Vagueness in Copyright ((2010) 12 Vanderbilt Journal of Entertainment & Technology Law 669) which has a nice explanation of how US copyright law treats the matter of "derivative works".  Bohannan advances the argument that the US derivative works right is possibly unconstitutional for vagueness or over-breadth, and recommends two interpretive approaches [citations omitted]:

First, courts should ensure that violation of the derivative works right requires not only that the allegedly infringing work is based upon the copyrighted work but also that it substantially incorporates copyrighted expression from that work. Many courts already limit the derivative works right in this way, but all courts should do so consistently. This requirement is the only way to maintain the idea/expression dichotomy; otherwise, copyright holders could prevent others from borrowing uncopyrightable ideas from their works in making new works. ...

Second, the catch-all language in the derivative works right must be interpreted more narrowly. As previously discussed, the language, "any other form in which a work may be modified,transformed, or adapted," renders the derivative works right overbroad. Courts currently interpret this language as applying to nearly all uses of copyrighted material that change the copyrighted work in some way, including uses that change not merely the form but also the content or message. This interpretation is not necessarily the best one, even on the definition‘s own terms. ... it should be interpreted under the principle noscitur a sociis in light of the more specific examples that precede it. Those examples reflect common forms of a copyright holder‘s own expression, not new works containing very different expression. For instance, works such as satire, parody, guide books, trivia books, etc. are conspicuously absent from the list of statutory examples; yet the catch-all language is clearly broad enough to include those types of works. A narrower and more reasonable interpretation of the language would cover the conversion of the copyright holder‘s own expression into other forms or media but would not cover subsequent works comprised largely of new substantive content. That is, this interpretation would include common forms of the copyright holder‘s own expression that are similar to the listed examples, but would not include works that borrow from a copyrighted work to create a work with different content.

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In light of the expectation that copyright reform, and in particular Bill C-32 (The Copyright Modernization Act), will be a priority issue for Parliament this fall and winter, I thought it might be useful to collect some of the notable commentary on the Bill since our last round-up.

• www.copyrightgetitright.ca (featuring some heavyweight partners) recently launched
• Howard Knopf speculates on how Bill C-32 might fare in the legislative committee process
• James Gannon published an op-ed in the Toronto Star entitled "Bill C-32, copyright and digital locks"
• Michael Geist provides his "Perspective on the Key Issues"
• The Toronto Star itself published an editorial entitled "Copyright bill needs changes" (in turn prompting this Howard Knopf response)
• Michael Geist breaks down the responses of various music industry organizations to Bill C-32 and opines on various criticisms of the proposed fair dealing amendments
• Jenna Wilson and Sangeetha Punniyamoorthy wrote in the Lawyers Weekly on their view that Bill C-32 "disturbs rights balance between creators and users"
• James Gannon compared Dutch copyright law and the reforms proposed by Bill C-32
• Artists Carole Pope (Putting a value on creation) and Maia Davis published op-eds as well - the Davis piece is evidently no longer available online, but it prompted two lengthy responses at IPilogue, one from Stuart Freen (Maia Davis Mixes Music Biz Morality and Economics) and one from Nathan Fan (Maia Davies Redux: Artists and TPMs)

As a reminder, here at the Signal we're going to do our best over the next few months to keep tabs on developments and commentary, from a variety of perspectives, surrounding Bill C-32, so we invite readers to check back often (clicking the "Bill C-32" tag below will bring you to an index of all posts on the Signal about the topic).

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When you're one of the biggest rap stars in the world, it shouldn't be surprising to find news of one of your recent court victories splashed all over the mainstream news; when that court victory prompts reactions like "staggering", no one should be shocked to see major news stories about the court decision being carried by major outlets all over the world (a sampling of coverage: the Toronto Star; the Los Angeles Times; the Wall Street Journal).  And so it is with the US Ninth Circuit Court of Appeals decision in the case of F.B.T. Productions et al v Aftermath Records et al (full text of the decision is available here), a court case relating to the works of Marshal B. Mathers III, otherwise known as Eminem.  (For ease of reference in the following discussion I'm going to use the term "artist" and "label" to refer to the plaintiffs (FBT et al) and the defendants (Aftermath, et al), respectively, even though, technically, the plaintiffs in this case weren't necessarily limited to the artist and the defendants weren't limited to the record labels.)

The background to the dispute between the parties is fairly simple.  Most recording contracts between an artist and a record label provide that the artist is entitled to received royalties in at least two different situations: first, where there is a "sale" of a "record" (ie the physical object on which the music is embodied); second, where there is a "license" of the rights to duplicate or make another use of the record.  A "sale" is pretty straightforward: someone goes into a record store and buys a CD (the "sale" which a record contract is usually concerned with is not that sale, but the sale by the record label to a wholesaler or distributor, but set that aside for now).  A "license" is little more esoteric: historically it was limited to licensing the master recording for use in a compilation or for use in a film, television show or commercial.  The distinction was important because two different royalty rates are applied: for a "sale", the artist received either a percentage of the sale price or the revenues received by the label (the percentage itself generally ranged from 10-25%, the upper end being rarely accorded and reserved largely for "superstar" acts); for a "license", convention was to provide a 50% royalty.  All other things being equal, then, the artist would prefer to encounter many more licenses than sales.

Enter the internet and the downloading of digital versions of songs.  Is that a "sale" or a "license"?  Where a track came laden with digital rights management (DRM) protections, the issue was even fuzzier: if I give you something but make it subject to a bunch of restrictions on how you can make use of it, does that seem more like I've sold something to you or more like I've licensed something to you?  In this case, with reference to the Eminen tracks, the label entered into contracts enabling providers like Apple's iTunes service to make the digital tracks available for download.  The label took the position that such a contract involved a "sale" (and hence was subject to the lower royalty rate) - presumably their argument was something along the lines of "Consumers are purchasing a track which they can download to their computer and in meaningful sense they then 'own' that track - that looks like selling a single LP or CD, and so should be characterized as a 'sale'".  The artist took a contrary position, arguing that the iTunes contract should be treated as a license - their argument presumably went something like this: "There hasn't been a 'sale' of anything, because there hasn't been a physical object to which ownership has been transferred; all you've done is given iTunes the right to make digital copies of the song and to, in turn, authorize others, upon payment of a $0.99 fee, make their own digital copies - which looks an awful lot like a 'license'".

The US Ninth Circuit Court of Appeals has come down on the side of the plaintiffs:

[9] When the facts of this case are viewed through the lens of federal copyright law, it is all the more clear that Aftermath’s agreements with the third-party download vendors are “licenses” to use the Eminem master recordings for specific purposes authorized thereby—i.e., to create and distribute permanent downloads and mastertones—in exchange for periodic payments based on the volume of downloads, without any transfer in title of Aftermath’s copyrights to the recordings. Thus, federal copyright law supports and reinforces our conclusion that Aftermath’s agreements permitting third parties to use its sound recordings to produce and sell permanent downloads and mastertones are licenses.

One of the reasons the decision is noteworthy is that it provides further evidence that seemingly novel issues arising at the interface of copyright and technology can be, in the forum of a litigation matter, be resolved with reference to relatively simple legal principles:

[7] There is no dispute that Aftermath was at all relevant times the owner of the copyrights to the Eminem recordings at issue in this case, having obtained those rights through the recording contracts in exchange for specified royalty payments. Pursuant to its agreements with Apple and other third parties, however, Aftermath did not “sell” anything to the download distributors. The download distributors did not obtain title to the digital files. The ownership of those files remained with Aftermath, Aftermath reserved the right to regain possession of the files at any time, and Aftermath obtained recurring benefits in the form of payments based on the volume of downloads. ...

[8] Under our case law interpreting and applying the Copyright Act, too, it is well settled that where a copyright owner transfers a copy of copyrighted material, retains title, limits the uses to which the material may be put, and is compensated periodically based on the transferee’s exploitation of the material, the transaction is a license. See, e.g., Wall Data Inc. 13410 F.B.T. PRODUCTIONS v. AFTERMATH RECORDS Case: 09-56069 09/03/2010 Page: 11 of 15 ID: 7462343 DktEntry: 42-1
v. Los Angeles County Sheriff’s Dep’t, 447 F.3d 769, 785 (9th Cir. 2006); MAI Sys. Corp. v. Peak Computer, Inc., 991 F.2d 511 (9th Cir. 1993); United States v. Wise, 550 F.2d 1180, 1190-91 (9th Cir. 1977); Hampton v. Paramount Pictures Corp., 279 F.2d 100, 103 (9th Cir. 1960). [emphasis added]

(As a side note, it strikes me that the Ninth Circuit's analysis of the distinction between a sale and a license of copyright is broadly consistent with how a Canadian court would approach the matter.)

What's the impact of this decision (noting that the defendants have indicated they will appeal)?  As the news report indicate, views on that question range from an artist's manager who calls the decision "staggering" and says "it affects everyone" (as recounted in the Toronto Star), to much more circumspect and conservative.  Ethan Smith, writing the in the WSJ, probably has it correct when he says:

while Friday’s ruling may be philosophically intriguing, in most cases, the song is likely to remain the same

In short, this decision is highly unlikely to result in a windfall for many artists.  I think that's because of a few different factors: First, the decision enunciates not a principle of copyright law but a finding of contract interpretation - the contract under consideration in the Eminem case was particularly unclear as to whether, as between the parties, digital downloads should be treated as sales or licenses; such ambiguities are, for the most part, and particularly in the case of major label contracts, a thing of the past.  Certainly any major label recording contract signed in the last five to eight years, which, to be clear, accounts for an awful lot of the songs which are being digitally downloaded on major commercial sites, will specifically set out that digital downloads are to be treated as sales and thus subject to the lower royalty rate.

Second, while the decision may have some bearing on older contracts, it appears (at least according to the WSJ report) that even in those cases many of the artists and record labels have amended or re-negotiated the terms of the contracts to more clearly address the treatment of digital downloads.

Finally, for contracts which don't fall into either of the foregoing categories (ie contracts which are so old that they are unclear on what royalty rate applies to digital downloads and which have not been amended or otherwise updated), those contracts are in many cases going to be for artists whose tracks don't see much activity on legitimate commercial download sites and, hence, won't have an obvious economic incentive to bring a court action seeking redress (if your song has been downloaded 300 times in the last five years, it's going to cost you a lot more just to describe the situation to your lawyer than you could possibly recover in a claim).

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An important part of an entertainment lawyer's job is determining what rights need to be obtained or licensed when a client wants to make some kind of use of a copyrighted work (eg making a movie based on a novel) - and part of that process is determining whether the work in question is even protected by copyright law at all.  The task is complicated by a number of factors, particularly where the work in question originated in another country.  With a tip of the hat to Simon Fodden at slaw, Creative Commons Canada offers a useful flowchart for determining whether a work is in the "public domain" in Canada (ie is of sufficient age that it has fallen out of copyright protection such that it is no longer subject to the restrictions on use contained in the Copyright Act).  

The flowchart has some parts which are confusing (I have no idea what the box at the top of the flowchart is meant to say) or unclear (how one determines whether something is "Crown Copyright" is left vague), but it provides a helpful starting point (though it should be noted that if Bill C-32 comes to pass, the portion of the chart dealing with photographs will have been rendered obsolete).  Fodden also helpfully points to Kenneth D. Crews short article Researching the Copyright Status of a Book: Protected or Public Domain? which, though written from a US standpoint (thus requiring considerably more complexity in the analysis because of the various renewal obligations which US copyright law once required), again offers practical guidance for any lawyer undertaking a similar inquiry.

For a thoughtful academic treatment of the matter of the public domain, Carys Craig's "The Canadian Public Domain: What, Where, and to What End?" (2010) 7 Canadian Journal of Law & Technology 221, is well worth the investment of time.

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Matt Galsor (writing at Law Law Land) answers the question:  I Want to Write a Screenplay About a Guy Who Uses a Particular, Published Book. Do I Still Need to Option the Book?  The question relates to using a book as the basis for a movie - not using a novel, however, but using a non-fiction instructional book (let's pretend it's Seven Steps to Becoming the Best Entertainment Lawyer You Could Possibly Be).  Let's pretend someone writes a screenplay featuring a character who buys 7STBTBELYCPB, a screenplay which chronicles the character's inspiring implementation of those seven steps.   What rights would the screenwriter (or producer) need from the author of the book?  Matt's answer, which he offers from a US perspective, is one with which every entertainment lawyer should be able to agree:

while you may not need to option the book (which would give you the ability to acquire the exclusive right to turn the book into a movie), what you do need is an agreement, akin to a release, in which the author grants you permission to use the book in the manner in which you want to use it (e.g., to use it as a plot point, to reproduce certain quotes, to use the title)

What's of particular interest is how Matt reaches his conclusion and the slight (but important) differences between US and Canadian copyright law which the analysis exposes.  Matt's conclusion is of course informed in part by a practical, E&O-based concern (ie E&O insurers will want to see some kind of release even if, strictly speaking, the copyright law basis for that requirement isn't completely clear-cut) - and that concern is shared north of the border as well.  In focusing just on the copyright analysis, however, Matt says the following:

One of the most important rights held by a copyright owner is the exclusive right to create derivative works based on her original copyrighted material. Derivative works are new original works that contain copyright-protected elements from a pre-existing copyrighted work. A movie based on a book is considered a derivative work because it will share with that book many of its copyright-protected elements (like characters and scenes). Therefore, at the outset, every author of a book owns the exclusive right to create a movie based on that book. ...

The question here is whether a movie about a guy following an instructional guide is a derivative work of that book. Unlike a typical situation in which the movie is going to contain many of the copyright-protected elements of the book on which it is based, your movie is simply using the book as a plot point and likely won’t be making use of elements such as the plot and characters (since such elements likely don’t even exist). Therefore, you may not need to acquire the movie rights to the book like you would in the traditional sense.

Matt's analysis hinges on the question of whether a movie which depicts the steps contained in an instructional book is a "derivative work" (he concludes that it might be, but even if it's not, given the aforementioned E&O-driven practical concerns, obtaining a release is still advisable).  It's the "derivative work" question where Canadian and US copyright law diverge.  Canadian copyright law does not have a distinct "derivative work" concept (unlike the US, where "derivative work" is defined in the US Copyright Act) - instead, the ability of our purported author to claim infringement would rest on two alternative theories: first, the author could claim that the screenplay/movie copies a substantial part of his original work in a material form (and the right to make a copy of a substantial part in a material form is an exclusive right of the copyright owner, per Section 3(1) of the Copyright Act (Canada)); alternatively, the author could claim that the movie infringes the author's sole right (found in Section 3(1)(e)) to reproduce, adapt and publicly present a "literary work" as a movie (or "cinematographic work").  (It's worth noting, parenthetically, that a "literary work" need not be "literary" in any meaningful sense - so long as it is in writing, it qualifies as "literary" - and so our imaginary instructional book would qualify.)

In short, I think under Canadian law we can more easily conclude that the screenplay and/or resulting movie would be an infringement of the author's copyright in the instructional book - and so obtaining a release or license would be imperative, rather than being subject to a cost/benefit analysis.

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A further development (see our earlier posts on the topic: Previews of Music as Fair Dealing and Previews of Music as Fair Dealing (Redux)) in the SOCAN v Bell Canada, et al case - where the Federal Court of Appeal recently held that "previews" of songs offered by online music services constituted "fair dealing" for the purposes of research.  SOCAN has filed a motion for leave to appeal the Federal Court's decision to the Supreme Court of Canada.  SOCAN's motion can be found here (hat tip: Sookman).  The Memorandum of Argument begins on page 104 of 133.

SOCAN's primary argument is subtle, one which trades on the enriching of the fair dealing defence prompted by the Supreme Court of Canada's decision in CCH v LSUC (2004 SCC 13).  In essence, the argument is premised on the notion that a purposive approach to interpreting fair dealing necessarily involves a taking a highly fragmented approach to that interpretive exercise; in short, the argument seems to be, if you want to understand whether a particular activity constitutes "fair dealing" you must investigate that activity with full immersion in its factual circumstances - and if you do that, then the notion that an online preview constitutes "research" in the sense that the Copyright Act is intended to facilitate falls apart.  Put a different way, the argument is that the finding in CCH arose in very particular circumstances, which don't translate to the online exploitation of music.   From paragraphs 7-9 of the Memorandum of Argument:

The Applicant submits that in finding that the actions of the Respondents constitute fair dealing, the Court below has created a very significant and unwarranted expansion in the scope of the defence. This expansion disrupts the balance between creators and users that the Act was intended to strike and results in the complete removal of the Applicant’s rights over a significant use of its music repertoire on the Internet in a manner that is incompatible with the object, spirit and purpose of the Act.

The defence of fair dealing is intended to further the central purpose of copyright law, that is, to strike a balance between the public interest in the creation and dissemination of creative works and the interest of creators in obtaining a just reward for their efforts. The Act imposes two conditions on the availability of the fair dealing defence: the dealing must be for an allowable purpose as enumerated by the Act and the dealing must be, in fact, fair. The allowable purposes listed in section 29 of the Act are “research and private study.” In light of the purpose of the Act, the use of music previews by the Respondents cannot be considered either research or private study and the volume of previews transmitted by the Respondents is too large to be considered fair.

The decisions below imperil the balance between protecting the interest of creators and promoting the development of creative works by expanding the definition of the term “research” to include activities that do not encourage the creation and dissemination of new works and by failing to consider the amount of the dealing in the aggregate.

Because any eventual Supreme Court decision in this case would be one of the first opportunities for the Court to authoritatively describe the contours of fair dealing following CCH v LSUC, whether Court agrees to hear the appeal, almost as much as the decision itself, will be important.

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The New York Times had an excellent article last week ("The Music-Copyright Enforcers" by John Bowe) (hat tip: Miri Frankel at The 1709 Blog) which explores the task and challenges facing performing rights organizations (the entities, such as SOCAN (in Canada), ASCAP and BMI (in the US)) which license the public performance of musical compositions.

During her five years with BMI — on trips to Texas, Ohio, Florida, Washington — Baker has learned a lot: managers of adult clubs tend to be polite. People who run coffee shops tend to be difficult. Skating rinks are a pain – they have the longest outgoing messages in the world. Casinos owned by Indian tribes are tough. Every decision goes to the tribal council, and it can take forever. Arts and crafts festivals, forget it; creative types never have any money. (“You’d think they’d get it,” Baker said, “But . . . .” She waved her hand.) The most important rule of the road, however, is never — Baker looked me in the eye — eat in the venue, even if they invite you. Because God only knows what they might put in your food.

... Once contacted by BMI, owners are given a worksheet. Does their venue use a radio, CD players, karaoke machine? Do they feature live music? If so, how often? How many people can the venue legally hold? For smaller businesses with low capacity that don’t make much use of music, a license may be as little as $300 a year. For really big operators, the cost might be as much as $9,000 per location per year, the maximum BMI is permitted to charge a single customer. (The fees are distributed to artists based on what BMI calls “an appropriate surrogate” — local radio or TV — that reflects a sampling of bars and restaurants in the area.)

... The excuses fell like rain. On the road, Baker’s client-management software offers her a list of common excuses — 24 in all — to keep track of what she’s told. But in the end, she knows it’s a game, a game she’s going to win. Because after all the phone calls, letters and visits, she possesses a secret weapon: the law. Whether or not a music user believes copyright infringement is a big deal, violators face fines of anywhere from $750 to $150,000 per song. If after several years, a violator refuses to back down, Baker ups the ante and sends what is known in-house as “the Larry Stevens letter,” named after one of Baker’s bosses, informing them that their case is being referred to BMI’s lawyers. Most but not all cases are settled out of court. That’s because in 51 years, BMI has never lost a single case it has tried.

The article is rich in that same sort of revealing background information and on-the-ground reporting, and is a treasure for anyone who's interested in how this area of the music industry functions.

As MIri Frankel's post on the article describes, PROs face (and have always faced) a reluctance on the part of some commercial music users to pay license fees for such uses - but that's nothing particularly unique, since many people would, in most cases, prefer to get something for nothing, as aptly illustrated by James Gannon in his post Independent PC Game Developers Experiment With TPM-Free Releases:

Some independent game producers have taken a different path. In order to provide their customers with a hassle-free experience, the independent makers of the World of Goo and Machinarium games each (separately) released their game free of any TPM – whether devices controlling access to the game or controlling the ability of the game to be copied. Unfortunately, these developers found very little success with thier “respect the consumer” strategies.

After the great World of Goo had been released for a few months, the developers reported that the piracy rate for the title was somewhere near 90%...

I still think that one of the best (and most concise) pieces on the challenges arising at the interface of, among other things, digital technology, "free" culture and basic economics is Andrew Potter's February 2008 article "No one likes to pay for music—or much else"; as Potter observes:

If you’re trying to square the notion of free culture with how the economy works, a handy rule of thumb is this: in the end, the consumer pays for everything. So when it comes to seemingly free media like radio and television, they are funded for the most part by commercial advertising, which is in turn paid for at the cash register by consumers. ... In the end, you get the culture you pay for, which is why the motto that everyone involved should be rallying around is “Free Lunch.” As in, there’s no such thing as a.

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Last week's news story about the FBI demanding that Wikipedia remove from its website a high-quality image of the FBI's logo offers a timely reminder of the need to obtain permission for the use of official logos and crests when conducting errors and omissions (E&O) reviews of film and TV productions.

E&O insurance policies will generally stipulate that permission is required for the on-screen depiction of the logo, crest or uniform of a government agency such as a police force.  The agencies themselves may have their own explicit policy stating that their permission is required for any such depiction - thus, for example, the US Department of Justice has a policy on seals, logos and other official insignia, and the LAPD has its own Entertainment and Trademark Unit which producers can contact.

As the KWIKA Entertainment Law Blog points out in the post Police Departments and Public Domain, US caselaw on the issue of whether government agencies have a protectable interest (be it copyright or trade-mark) in their logos is "surprisingly unsettled" - suffice it to say that Canadian caselaw is even more sparse (for purposes of comparison, I was unable to find any mention on either the RCMP website or the Toronto Police Service website of any contact information for reproduction of their respective logos).  And where the law is unsettled, E&O insurance providers are loath to tread: better safe than sorry is the guiding principle when it comes to obtaining (and issuing) E&O coverage.

As the Wikipedia entry for the film The Departed notes:

Martin Scorsese asked the [Massachusetts State Police] if he could use actual logos, badges, and color schemes on the uniforms and the cruisers, but was denied. As a result, the uniforms, police cruisers, and logos in the film are slightly different from the real ones.

General tip: when Martin Scorsese and Warner Bros. (the studio which distributed The Departed) aren't willing to run the risk of a claim based on infringing reproduction of a logo, other producers should probably shy away as well.

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The idea/expression dichotomy is fundamental to copyright law, and can be stated with relative ease:

“[I]n Canada, as in the United States, copyright protection does not extend to facts or ideas but is limited to the expression of ideas." (CCH v LSUC 2004 SCC 13 at para. 22)

That simple statement, however, hides an awful lot of conceptual and analytical depth: where is the line drawn between "idea" and "expression"?  As an example, we can easily conclude that the notion of a boy wizard attending a school for wizards and witches is not protected by copyright, but somewhere along the line between that skeletal concept and its formulation in Harry Potter and the Philosopher's Stone, it transforms from an unprotected "idea" to protected "expression".  How do we articulate where that line exists?

Academics and judges have long struggled with the dichotomy, which is particularly important in the entertainment industries, since imitation can sometimes be more valuable than innovation - if I have an idea for a show about vampires, at what point, if ever, do I need worry about treading on the copyrights of True Blood, The Vampire Diaries, the Twilight books or movies, Angel or any of more than the half-dozen Dracula movies which have been made?  Three of the best academic papers on trying to articulate the line between idea and expression are Allen Rosen's “Reconsidering the Idea/Expression Dichotomy” ((1992) 26 UBCL Rev 263), Carys Craig's “Resisting Sweat and Refusing Feist: Rethinking Originality After CCH” ((2007) 40 UBCL Rev 69) and Abraham Drassinower's "A Rights-Based View of the Idea/Expression Dichotomy in Copyright Law" ((2003) 16 Canadian Journal of Law and Jurisprudence) (my own paper which touches on the idea/expression dichotomy, "'I’ve Got This Great Idea for a Show…' – Copyright Protection for Television Show and Motion Picture Concepts and Proposals" (2004) 17 Intellectual Property Journal 189, is available for download here). 

Learned Hand, when considering the idea/expression dichotomy in Nichols v Universal Pictures Corp., 45 F2d 119 (2d Cir 1930), opined that "nobody has ever been able to fix that boundary, and nobody ever can".  And yet courts are constantly called upon to try to identify what constitutes unprotected idea and what constitutes protected expression.  Two recent United States appellate court decisions provide further insight into how courts will (and should) attempt to meet the challenge.

In the 9th Circuit Court of Appeals decision in Mattel v MGA Entertainment (09-55673) (text of decision) (hat tip: Sookman), the dispute centred around a claim of copyright infringement asserted in respect of dolls: did the Bratz doll line infringe copyright held by Mattel in the iconic Barbie doll (an overview of the dispute, though from a couple of years ago, can be found in this BusinessWeek article).  The 9th Circuit articulated its analysis, before concluding that there was no copyright infringement, as follows [emphasis added]:

Mattel, of course, argues that MGA went beyond this by copying Bryant’s unique expression of bratty dolls, not just the idea. To distinguish between permissible lifting of ideas and impermissible copying of expression, we have developed a two-part “extrinsic/intrinsic” test. See Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1442 (9th Cir. 1994). At the initial “extrinsic” stage, we examine the similarities between the copyrighted and challenged works and then determine whether the similar elements are protectable or unprotectable. See id. at 1442-43. For example, ideas, scenes a faire (standard features) and unoriginal components aren’t protectable. Id. at 1143-45. When the unprotectable elements are “filtered” out, what’s left is an author’s particular expression of an idea, which most definitely is protectable. Id.

Given that others may freely copy a work’s ideas (and other unprotectable elements), we start by determining the breadth of the possible expression of those ideas. If there’s a wide range of expression (for example, there are gazillions of ways to make an aliens-attack movie), then copyright protection is “broad” and a work will infringe if it’s “substantially similar” to the copyrighted work. See id. at 1439, 1146-47. If there’s only a narrow range of expression (for example, there are only so many ways to paint a red bouncy ball on blank canvas), then copyright protection is “thin” and a work must be “virtually identical” to infringe. See id.; Satava v. Lowry, 323 F.3d 805, 812 (9th Cir. 2003) (glass-in-glass jellyfish sculpture only entitled to thin protection against virtually identical copying due to the narrow range of expression). The standard for infringement—substantially similar or virtually identical—determined at the “extrinsic” stage is applied at the “intrinsic” stage. See Apple Computer, 35 F.3d at 1443. There we ask, most often of juries, whether an ordinary reasonable observer would consider the copyrighted and challenged works substantially similar (or virtually identical). See id. at 1442. If the answer is yes, then the challenged work is infringing.

... When works of art share an idea, they’ll often be “similar” in the layman’s sense of the term. For example, the stuffed, cuddly dinosaurs at issue in Aliotti v. R. Dakin & Company, 831 F.2d at 901, were similar in that they were all stuffed, cuddly dinosaurs—but that’s not the sort of similarity we look for in copyright law. “Substantial similarity” for copyright infringement requires a similarity of expression, not ideas. See id. The key question always is: Are the works substantially similar beyond the fact that they depict the same idea?  MGA’s Bratz dolls can’t be considered substantially similar to Bryant’s preliminary sketches simply because the dolls and sketches depict young, stylish girls with big heads and an attitude.

The 11th Circuit Court of Appeals also recently considered the idea/expression dichotomy, in Baby Buddies, Inc. v. Toys “R” Us, Inc. (08-17021 / 03-01377 CV-T-17-MSS) (text of decision) (hat tip: Exclusive Rights), a case involving two similar "bear-themed" baby pacifiers (the Exclusive Rights post has a photo of the two pacifiers side-by-side for ease of comparison). 

Equally fundamentally, “[i]n no case does copyright protection for an original work of authorship extend to any idea.” 17 U.S.C. § 102(b); see also Harper & Row Publishers, 15 Inc. v. Nation Enters., 471 U.S. 539, 556, 105 S. Ct. 2218, 2228, 85 L. Ed. 2d 588 (1985) (“No author may copyright his ideas or the facts he narrates.”). Accordingly, we must apply the substantial similarity test to only those elements of the copyrighted work that are actually subject to copyright protection—that is, elements of original expression in the copyrighted work. ...

In deciding whether the protected elements of two works are substantially similar, we compare the various components of the two works, but are mindful that “lists of similarities are ‘inherently subjective and unreliable, particularly where the lists contain random similarities, and many such similarities could be found in very dissimilar works.’” Corwin, 475 F.3d at 1251 (quoting Herzog, 193 F.3d at 1257). At the same time, “[a]nalyzing relatively amorphous characteristics of the [work] as a whole (such as the ‘mood’ or ‘combination of elements’) creates a danger of unwittingly extending copyright protection to unoriginal aspects of the work.” Leigh, 212 F.3d at 1215. At the most narrow, focused level, two works will almost always be distinguishable, and at the broadest level of abstraction they will almost always appear identical. Thus, although we identify and compare the protected expressive features of the two works, we do so not simply to count the number of similarities and differences, but rather to determine whether the work’s protected expression has been copied. ...

We begin with the plastic teddy bears, which are the most prominent features of both pacifier holders. As mentioned, both bears are formed from white, sculpted plastic. They also share the same basic anatomical features common to all teddy bears—a head, two ears, two eyes, a nose, a mouth, a torso, two upper paws (representing the fore paws of a real bear), and two lower paws (representing the hind paws on a real bear). But every sculpture of a teddy 17 bear shares these features simply because these features are what defines a teddy bear. To protect this basic combination of features would in effect give Baby Buddies exclusive rights over the very idea of a plastic sculpted teddy bear, which is expressly precluded under the copyright laws.

From there, the decision continues on to examine such elements of the bears as the positioning of the paws, the shape of the ears and the belly of the bears (pot belly vs a flatter torso - I swear I am not making this up...).

In addition to providing further examples of the nature of the analysis which US courts undertake, tThe decisions are notable from a Canadian perspective because of the highly formulaic manner in which the analysis proceeds: identify the elements of both works, separate out the protectable from the non-protectable elements, then compare the protectable elements to determine whether copying of a substantial part has occurred.  While that step-by-step approach is nascent in some Canadian cases (see my paper, linked to above, for its application in Canadian entertainment copyright cases), Canadian courts should regularize their analysis in a similar fashion so as to encourage the predictability of the infringement analysis.

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Last week's promulgation by the United States' Librarian of Congress of a rule which creates an exemption for certain classes of works from the prohibition (in the US Copyright Act, first introduced by the Digital Millennium Copyright Act, or DMCA) against circumventing technological measures that control access to copyrighted works - which is rather a mouthful (or eyeful) - is noteworthy for a number of reasons which are of immediate relevance to Canadian entertainment lawyers and copyright enthusiasts.

First, the background (hat tip to Barry Sookman for providing a number of the relevant links): the US Copyright Office announced that it had made certain recommendations (here is the full text of the June 11, 2010 recommendation) to the Librarian of Congress regarding the Librarian's rulemaking power under the US Copyright Act, which recommendations had been accepted.   The DMCA modified the US Copyright Act to prohibit circumvention of certain technological measures employed by or on behalf of copyright owners to protect their works.  In particular, Section 1201(a)(1)(A) of the US Copyright Act provides that “[n]o person shall circumvent a technological measure that effectively controls access to a work protected under this title.”  However, the DMCA also created, in Section 1201(a)(1)(B), a mechanism which permits the Librarian to make rules which modify the application of the prohibition by identifying particular classes of work whose users would be "adversely affected" by the operation of the prohibition in their ability to make non-infringing uses of the works in question.  In short, if the Librarian determines that the prohibition on breaking technological measures would unduly and negatively interfere with the ability of users to engage in non-infringing uses, then the prohibition could be circumscribed by a rule so as to eliminate that negative impact.

And that's precisely what the Librarian did last week (Statement of the Librarian; Determination of the Librarian and Text of the Regulation as set out in the US Federal Register). The Librarian determined that the fair use rights of documentary filmmakers were adversely affected by a strict prohibition on circumventing technological protection measures used on things like DVDs. 

That determination resulted in the following class designation [emphasis added]:  

"Motion pictures on DVDs that are lawfully made and acquired and that are protected by the Content Scrambling System [CSS] when circumvention is accomplished solely in order to accomplish the incorporation of short portions of motion pictures into new works for the purpose of criticism or comment, and where the person engaging in circumvention believes and has reasonable grounds for believing that circumvention is necessary to fulfill the purpose of the use in the following instances:

• Educational uses by college and university professors and by college and university film and media studies students;
• Documentary filmmaking;
• Noncommercial videos."

In short, when someone circumvents CSS protection on a lawfully-acquired DVD for the purposes of incorporating a short portion of a motion picture into a new documentary film (or other non-commercial video) for the purpose of critiquing or offering commentary on that short portion, then that circumvention does not itself violate the US Copyright Act.

The explanatory notes of the Librarian in its Determination are of particular interest [emphasis added]:

"The justification for designating this class of works is that some criticism and/or commentary requires the use of high–quality portions of motion pictures in order to adequately present the speech–related purpose of the use. Where alternatives to circumvention can be used to achieve the noninfringing purpose, such non–circumventing alternatives should be used. Thus, this limitation seeks to avoid an overly broad class of works given the limited number of uses that may require circumvention to achieve the intended noninfringing end.

The class has also been limited to include only motion pictures rather than all audiovisual works. Because there was no evidence presented that addressed any audiovisual works other than motion pictures, there was no basis for including the somewhat broader class of audiovisual works (which includes not only motion pictures, but also works such as video games and slide presentations)."

Thus, only where the type of high quality image made possible by CSS circumvention is required can the exception be relied upon - for example, if using screen capture software to obtain a still image will suffice, then that must be used.  It is also worth noting that only motion pictures are covered by the class designation - if a videogame or slide presentation is protected by CSS, then the class designation cannot be relied upon.

Of even more importance is how narrow the exception is - the Librarian's commentary makes it clear that the class designation is intended to permit circumvention only for criticism or commentary of the motion picture itself [emphasis added]:

"What the record does demonstrate is that college and university educators, college and university film and media studies students, documentary filmmakers, and creators of noncommercial videos frequently make and use short film clips from motion pictures to engage in criticism or commentary about those motion pictures, and that in many cases it is necessary to be able to make and incorporate high–quality film clips in order effectively to engage in such criticism or commentary. In such cases, it will be difficult or impossible to engage in the noninfringing use without circumventing CSS in order to make high–quality copies of short portions of the motion pictures."

So the class designation is not intended to allow circumvention for the purpose of using the clip for offering a broader social critique (eg taking a clip from Avatar to emphasize the need for environmentally conscious development policies), or for the purpose of trying to illustrate some kind of historical development (eg taking a clip from Titanic to show the maturation of ship-building technology).

The Librarian was particularly emphatic on these points:

"there was no evidence in the record to support the conclusion that anything more than incorporating relatively short portions of motion pictures into a new work for purposes of criticism or commentary would be a fair use."

The announcement of the class designation resulted in a flurry of commentary, some of it focusing on the impact for US documentary filmmakers (Finally, a DMCA Exception for Documentary Filmmaking by Dan Nabel) and some focusing on the relevance of this change for Canadian copyright law (U.S. Move to Pick Digital Locks Leaves Canadians Locked Out by Michael Geist; Exit Strategy for Digital Locks Dilemma of Canada's Bill C-32 by Howard Knopf).  I think there are a few aspects of the Librarian's decision which are of particular relevance to the Canadian context:

First, the enviable power and flexibility which is accorded by the triennial rulemaking power of the Librarian of Congress.  That mechanism assists in keeping the US Copyright Act current, and thus not as susceptible to the ossification of the Canadian Copyright Act which only gets amended once every decade or so.  Bill C-32 (the Copyright Modernization Act) keeps alive the concept of a quincennial (just a great word, by the way) review of the Act by a Parliamentary committee (also found in the current Section 92 of the Canadian Copyright Act) - but the political realities of legislative copyright reform mean that actual modification of the Act would likely, as it has in the past, take place only on a much more telescoped time frame.  Fine tunings of copyright law may be better-served by a dedicated agency (such as the Copyright Board) rather than the blunt instrument of legislative committees.

Second, even in light of the Librarian of Congress' seemingly-far reaching powers, we should note just how incremental this type of change ends up being: what might at first blush seem like an expansive accommodation of documentary filmmakers' concerns is in fact a relatively narrowly-cast exception.

Finally, it will be interesting to see how the documentary filmmaking exception is interpreted by the US Courts - whether the prima facie breadth of the exception (ie covering all forms of commentary and criticism) will be "read down" in light of the Librarian's commentary (ie indicating that the exception is meant to address commentary and criticism of the motion picture being excerpted).  This bears on the point made by others - namely that the fact of the class designation itself should inform an assessment of Bill C-32 - since it will indicate just how flexibly and broadly the US fair use device will be in addressing the wants/needs of documentary filmmakers.

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Further to an earlier posting here at the Signal (Copyright In Jokes), Nathan Fan, writing at IPilogue, has penned a thoughtful piece on topic: Whose line is it anyway? IP Norms in Stand-Up Comedy.  Fan's piece also does a nice job of summarizing some of the norms identified in Dotan Oliar and Christopher Sprigman's "There's No Free Laugh (Anymore): The Emergence of Intellectual Property Norms and the Transformation of Stand-Up Comedy" (citation: 94 Va. L. Rev. 1787 (2008)).  Fan's final paragraph is particularly thought-provoking:

As communication technology continues to advance, there is a growing fear of having one’s perfectly crafted joke stolen.  First, the radio and television allowed a joke to be broadcast across a nation. Now with the use of YouTube and Twitter, a comic’s first performance could be posted to millions on the internet by the following morning. It seems that the stand-up community’s ability to self-police was at least partially due to its tribal, communal nature. All of the major acts know each other and cross each other’s paths. But with the ability of a joke to easily cross borders and cross oceans, such a self-policed system becomes much more difficult to employ. However, stand-up’s normative system has some hope of surviving as it could foreseeably utilize the Internet itself for its sanctioning purposes (e.g. YouTube is rife with videos alleging joke-thievery). Nonetheless, the stand-up comedy community has put a spotlight on the fact that some creative communities are being better served by informal normative regimes than by the traditional legal system. Perhaps other creative communities  can learn a thing or two from stand-up comedy.

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Given the volume of material available, we've decided to make our round-up of entertainment law questions posed and answered a recurring feature.  Readers should heed the usual caveat that many of the links are to US-based blogs, and so the answers provided may be different than what would obtain under Canadian law.

• I'm in the WGA, But Can't I Write for a Friend Even if He Can't Pay the WGA Minimum? (Law Law Land)
• Do I need to clear rights for a historical film set in the 1700s? (Gordon P. Firemark)
• That Movie Is Just Like My Movie - Who Do I Sue? (THR, Esq.)

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Never let it be said that entertainment lawyers are unwilling to give freely of their time and advice (readers should note that the links below are to US-based blogs, and so the advice dispensed is limited to situations governed by US law):

• How Do I Stop Someone From Spreading Lies Online? (THREsq.)
• When Are Friends and Family Co-Authors? (Gordon P. Firemark)
• How Do I Attach, Benefit, and Protect Myself With a Script Brought to My Attention to Help With Funding? (Law Law Land)
• How Do You Make a Biopic and Avoid Getting Sued? (Law Law Land)
• We Started It Together, But I Want to Move Forward Alone... What Do I Owe Him? (yep, Law Law Land again)
• Real Events Reported in the Media - What Rights Do I Need? (Gordon P. Firemark)

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On July 6, an Australian Federal Court Justice ruled that Australian band, Men at Work, had copied their signature flute riff on the 80's hit "Down Under" from a children's campfire song. The Australian children's song known as "Kookaburra Sits in the Old Gum Tree" was written more than 70 years ago by Australian teacher Marion Sinclair.

The judge in the case ruled that Men at Work's recording company, EMI Songs Australia, and songwriters Colin Hay and Ron Strykert, must pay 5 percent of royalties earned from "Down Under" since 2002 and from its future earnings to Larrikin Music, the publishing company which holds the copyright in "Kookaburra". Larrikin Music was originally asking for 60 percent of royalties earned.

A musical comparison between the flute riff from 'Down Under' and the melody to "Kookaburra" can be heard here.

Expect the dollar amount of 5 percent of such royalties to be in area of several hundred thousand dollars as Larrikin can only collect royalties since 2002. 

For an excellent comparison of various "sound-alike" songs, check out this page from "JamsBio Magazine". 

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Further to this earlier post about the Federal Court of Appeal's decision in Society of Composers, Authors and Music Publishers of Canada v Bell Canada, et al., 2010 FCA 123, which held that an online "preview" of a music track constitute "fair dealing" for purposes of research, Emir Aly Crowne-Mohammed and Yonatan Rozenszajn have written a nice little summary of the decision over at the charmingly-named JIPLP (otherwise known as the "weblog of the Journal of Intellectual Property Law and Practice").  As Crowne-Mohammed and Rozanszajn note,

Given the nature of the ‘research’ involved in users listening to the 30-second clips or previews of songs online, the court felt that research be given its primary and ordinary meaning, this being the use of previews to help consumers in their search for a particular song as to ensure its authenticity and quality before purchasing it. In this context, ‘research’ included consumer research.

The court then examined whether a 30-second preview, or less, was fair. The Federal Court of Appeal agreed with the Copyright Board in holding that the amount of the dealing is presumptively fair, given the length of the complete work.

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UPDATED BELOW

The Copyright Board of Canada has issued its decision and reasons on the commercial radio tariffs of SOCAN, Re:Sound, CSI, AVLA/SOPROQ and ArtistI.  (See Decision of the Copyright Board, July 9, 2010, the Board's news release, a useful fact sheet from the Board which summarizes various aspects of the decision and provides some useful information about the radio broadcasting industry as a whole, and, finally, the tariff itself).  In short, the decision spells out how much money commercial radio stations will be paying to the various collectives as a license fee for the years 2008-2012 (with some qualifications, since not all of the tariffs cover the entire four year period) for the right to reproduce and communicate to the public the musical works which form the bulk of a commercial radio station's programming.  

The decision is notable for a number of reasons.  Howard Knopf points out the financial implications of the decision (quoting from the Board's fact sheet):

How much will the new rates generate in royalty payments, compared to the old rates?

The Board estimates that commercial radio stations will pay a total of $85 million in royalties. This is based on total station revenues of slightly over $1.5 billion in 2009. Using the previously certified rates, radio stations would have paid about $72 million. The new rates thus increase the amount of royalties by $13 million. Of this amount, $10.2 million represent royalties resulting from the introduction of two new rates, for AVLA/SOPROQ and ArtistI.

How much will each collective society receive?

Of the total amount of royalties of $85 million paid by radio stations, the Board estimates that $51 million will go to SOCAN, $13 million to Re:Sound, $11 million to CSI, $10 million to AVLA/SOPROQ and $200,000 to ArtistI.

Of particular worth from the decision itself is that it provides a useful summary of all of the rights which are engaged when a song is played on the radio and the collectives responsible for administering those rights (see paras. 8-13 of the decision):

These proceedings involve six rights or sets of rights. They are reviewed in the order in which the Board was asked to set a tariff.

The first set of rights is the exclusive right of the owner of the copyright in a musical work to communicate it to the public by telecommunication and to authorize such a communication. SOCAN administers these rights in Canada for virtually all copyright owners. SOCAN is subject to sections 67 to 68.2 of the Act (the “SOCAN regime”) and if it does not file a proposed tariff, it cannot, in practice, collect royalties.

The second and third rights are the remuneration rights that performers and makers each enjoy when a published sound recording of a musical work is communicated to the public by telecommunication. These two rights are treated together because they always trigger a single payment; in the case of sound recordings of musical works, that payment is always made to a collective society authorized by the Board to collect it. Re:Sound administers these rights for the vast majority of eligible performers and makers. It too is subject to the SOCAN regime. The remuneration rights are subject to a number of conditions.

The fourth set of rights is the exclusive right of the owner of the copyright in a musical work to reproduce it and to authorize such a reproduction. Together, SODRAC and CMRRA administer most, but not all, of this repertoire in Canada. SODRAC represents the vast majority of rightsholders in Québec and most works written in French by Canadians as well as many of its foreign counterparts. CMRRA represents a large number of Canadian and foreign Englishlanguage music publishers. Both collectives are subject to sections 70.1 to 70.6 of the Act (the “general regime”) and as such, they can negotiate licensing agreements directly with users or ask the Board to certify tariffs. Where both collectives opt to use a tariff, CSI acts for them.

The fifth set of rights is the exclusive right of the owner of the copyright in a sound recording to reproduce it and to authorize such a reproduction. SOPROQ represents mostly Francophone record producers from Québec. AVLA acts for the major record companies and for many independent labels, artists and producers. Together, they represent the vast majority of the repertoire. These collectives are subject to the general regime.

The sixth set of rights is the exclusive right of the owner of the copyright in a performer’s performance to reproduce any reproduction of an authorized fixation of the performance for a purpose other than that for which the authorization was given and to authorize such a reproduction. Three collective societies administer these rights: ArtistI, ACTRA PRS and AFM Canada. Only ArtistI, which acts predominantly but not exclusively for Frenchspeaking performers from Québec, has filed a tariff. ACTRA PRS represents professional cinema, television, radio and recording artists who work in English. Its mandate includes the collection and distribution of fees, royalties, residual fees and all other forms of compensation or remuneration to which members and permit holders of the Alliance of Canadian Cinema Television and Radio Artists (ACTRA) may be entitled. AFM Canada, acting for musicians in the United States, Canada and other countries, collects and distributes government mandated or other compulsory royalties or remuneration that are subject to collective administration. These collectives are subject to the general regime.

There are two is one additional points worth noting in relation to the decision.  First, if Bill C-32 (the Copyright Modernization Act) is passed in its current form, it will eliminate the tariffs for "ephemeral reproductions" payable to CSI, AVLA/SOPROQ and ArtistI (for an explanation of how and why the tariffs will be eliminated, see my post "Bill C-32 - An Anticipatory Requiem for What We'll Lose" at IPilogue). ; Finally, as noted in the last quoted paragraph, above, with respect to the right to reproduce a performer's performance, only one collective (out of the three collectives who administer that right) has elected to file a tariff - meaning that there could be yet further monies payable by radio broadcasters for making use of musical works.

UPDATED (July 14, 2010): Thanks to the insight of my colleague Stephen Zolf, I need to correct the record with respect to the language struck out in the last paragraph, above.  Bill C-32, which contains a provision which repeals the "exception to the exception" found in Section 30.9(6), even if passed, will actually not eliminate the tariff for "ephemeral reproductions" (more accurately, "pre-recorded recordings").  That is because, as the Copyright Board found in their reasons of March 28, 2003 respecting the initial CSI tariff, as a practical matter, the activities of commercial radio broadcasters simply do not fall within the ambit of Section 30.9 because they generally do not abide by the requirement to delete their pre-recorded recordings within 30 days - so, the elimination of the "exception to the exception" won't actually impact in any meaningful sense the obligation to make payments under the tariffs.  Indeed, the factors which prompted the Board to make its findings in 2003 (ie the comprehensive reproduction by radio stations of works and sound recordings onto servers and hard drives in order to facilitate broadcasting activities) are even more pronounced today.

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Nathan Fan, writing at IPilogue, looks at the impact that Bill C-32 (the Copyright Modernization Act) would have on the copyrights of photographers and performers:

The Copyright Modernization Act seeks to eliminate the distinction between photographs and other works by removing section 13(2), putting photographers back on equal footing with other authors (see Bill C-32 section 7).

The Bill also completely removes section 10, which was also an exception to the authorship and term of protection for photographs (see Bill C-32 section 6). ... The repeal of section 10 in its entirety again attempts to equalize the rights of photographers with other authors.

... Bill C-32 also seeks to bring performer rights up to par with other creators by implementing the 1997 WIPO Performances and Phonograms Treaty (WPPT) and WIPO Copyright Treaty (WCT). Section 10 of Bill C-32 proposes to extend moral rights to performers for live aural performances or performances fixed in a sound recording and for the same duration as the copyright term, as required by Article 5 of the WPPT.

...Section 9 of Bill C-32 amends section 15 of the current Act to provide performers the exclusive right in digital distribution (making available to the public by telecommunication) of performances in sound recordings as well as the exclusive right to first sale or transfer of tangible copies of such sound recordings. Section 11 of the Bill also extends these rights to the makers of such sound recordings.

 As Nathan points out, the changes to the provisions affecting photographers and performers have attracted comparatively little attention in the wake of Bill C-32's introduction - but as his post demonstrates, the proposed changes are quite consequential for both sets of creators.

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Ben Sheffner (who's creating his own niche in covering political campaigns being accused of infringing copyright) does a nice bit of analysis of claims by Canadian rock band Rush that American libertarian politician Rand Paul made unauthorized and infringing use of Rush songs in his campaign materials.  The CBC coverage of the story notes:

Paul's campaign used Rush's The Spirit of Radio to energize a rally and another song, Tom Sawyer, in a fundraising video.

Paul also has used a line from The Spirit of Radio in speeches: "Glittering prizes and endless compromises shatter the illusion of integrity."

As Sheffner notes, a distinction needs to be drawn between playing songs at a campaign event (which would be a public performance requiring a license from the collecting society which administers those rights, such as ASCAP, BMI or, in Canada, SOCAN - the license could be held by the venue in which the event takes place or by the campaign itself) and incorporating the songs into an advertisement or online video (which would require master use and synchronization licenses from the owners of the master recording and the publishing rights in the composition).

Here at the Signal we previously discussed the use of copyrighted materials in political campaigns in the unimaginatively titled "Copyrights and Campaigns".

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A busy couple of weeks (including the ever-eventful Banff World Television and nextMEDIA extravaganza)  has meant that the Signal has fallen behind in keeping track of the commentary occasioned by the release of Bill C-32 (The Copyright Modernization Act).  That being said, here are links to items we thought worth drawing attention to from the last ten days:

• James Gannon provides some thoughts (complete with visual aids) about User Exceptions and Digital Locks
• Mihály Ficsor, writing at Barry Sookman's blog offers what can be described as a startlingly detailed analysis about the 1996 WIPO Treaties in light of certain comments on Bill C-32
• Michael Geist proposes Proposed Amendments to the Digital Lock Provisions of Bill C-32
• in an exciting battle of the catchy and on-topic taglines, Michael Geist (him again) offers 32 Questions and Answers on Bill C-32, while James Gannon (him again, too) parries with 32 Exceptions in Bill C-32
  
• Steven Zuccarelli, writing at IPilogue, ruminates on the notion of the bill's digital lock provisions Acting as the Fulcrum between Owners’ and Users’ Rights

As a reminder, here at the Signal we're going to do our best over the next few months to keep tabs on developments and commentary, from a variety of perspectives, surrounding Bill C-32, so we invite readers to check back often (clicking the "Bill C-32" tag below will bring you to an index of all posts on the Signal about the topic).

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As anticipated, the release of Bill C-32 (The Copyright Modernization Act) has generated an enormous amount of commentary - herewith, some of the material I thought it worth drawing attention to:

• James Gannon posts on The Top 5 Myths About the New Copyright Bill and Digital Locks
• Cameron Hutchison: The Good, the Bad & the Ugly of Bill C-32
• Sam Trosow provides a helpful set of links to the public statements of various organizations
• IP Osgoode's schedule for posts on various aspects of the Bill
• Michael Geist offers a set of links to reactions from multiple stakeholders
• Barry Sookman offers Some Thoughts on Bill C-32
• Craig Collins-Williams provides a run-down of the details of Bill C-32
• the government's own Backgrounder on Bill C-32 and its balancedcopyright.gc.ca site

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One of the more contentious elements of Bill C-32 (The Copyright Modernization Act) is the introduction of provisions addressing "digital locks" or "technological protection measures" (found in Sections 47 and 48 of the Bill, which would create new Sections 41 and 42 of the Copyright Act).  Critics of the digital locks provisions decry them in the following terms (let's use Michael Geist's comments as representative):

All these attempts at balance should be welcomed, yet they are undermined by the no-compromise position on digital locks.

The foundational principle of the new bill is that anytime a digital lock is used, it trumps virtually all other rights. This means that both the existing fair dealing rights and Bill C-32’s new rights all cease to function effectively so long as the rights holder places a digital lock on their content or device.

I want to contest the notion that the current draft of Bill C-32 represents a "no compromise position".  Given that we've only had the text of the Bill for a few hours, this is by necessity going to be a preliminary assessment.

In practical terms, the digital lock provisions enable a copyright to place a "lock" on their content which control access to that content and acts to prohibit certain reproductions - so, for example, the distributor of a movie on Blu-ray could place a digital lock on the Blu-ray which prevented the purchaser of that disc from copying the content of the disc onto the hard drive of the purchaser's desktop computer.  The purchaser might say they wanted to make the copy solely for purposes of creating a back-up, in case the original disc was lost.  The distributor would respond by saying that they don't want to run the risk that the purchaser is going to upload the movie onto a file-sharing site, thereby allowing other users to download the movie for free.  But, the purchaser might respond, Bill C-32 specifically allows me to create back-up copies (see Section 22 of the Bill, which creates a new Section 29.22 of the Act).  Tough, the distributor would respond: the Bill makes it clear that "breaking" a digital lock is infringement, and that doesn't change just because the lock is being "broken" in order to facilitate what would otherwise be a non-infringing use.  Hence, as Geist puts it, "anytime a digital lock is used, it trumps virtually all other rights".

As a legal matter, Geist is correct.  But this Bill needs to be assessed not just as a theoretical matter, but as a practical one.  And if we drill down a bit further into the proposed legislation, what we see is that the government has, as in so many other areas in this Bill, crafted what seems to be a rather elegant solution: the statutory damages provisions have been altered to the point where it disincentivizes a rightsholder from bringing an infringement action for infringing activity which is for private use.  The practical result?  "Breaking" a digital lock is copyright infringement, but is no more likely to result in a lawsuit against your average "private" infringer than they were likely to be sued for recording TV shows on their PVR over the past few years.

Here's the analysis: Section 46 of the Bill modifies the statutory damages provisions (Section 38.1 of the Act) to draw a distinction between infringement for commercial purposes (where damages can range from $500 to $20,000 for each work infringed) and infringements for non-commercial purposes (where damages can range from $100 to $5,000 for all works infringed).  So right off the top we've made it less punitive for "private" infringers.  The Bill then goes to mandate that courts, in the case of "private" infringers, consider the need for damages awards to be proportionate and take account of any hardship the damages might impose.

All of which is nice, but largely irrelevant (though indicative of the trend), because, even more importantly, what will become Section 41.1(3) of the revised Act provides that statutory damages are not available to an owner who sues an individual for "breaking" a digital lock when that breaking was done only for private purposes - which means, consistent with prior jurisprudence on copyright damages, damages are calculated to put a rightsholder in the position they would have occupied but for the infringement.  And in the case of an infringement for private use (such as the back-up copy illustration used above), those damages are likely to be negligible.  Absent the prospect of statutory damages, the likelihood of a rightsholder bringing an action for enforcement is radically reduced, since they'd be forced to expend enormous amounts of money to recover virtually nothing.

Thus, the proposed language seems to navigate between the two positions: it allows rightsholders to say that their digital locks are secure and claim a moral victory by describing the breaking of a digital lock as infringement, but then accords private infringers some comfort that the prospect of actually being sued is fairly minimal (after all, in all the years prior to the introduction of Bill C-32, when the full weight of statutory damages was available to rightsholders, how many lawsuits have been brought in Canada by rightsholders against people who were format-shifting or time-shifting their entertainment product?).  It's not a perfect solution, but life rarely admits of those.

The foregoing could be criticized on the basis that it is hopelessly naive to think that rightsholders will not sue - look south of the border and you'll find plenty of examples.  But admitting that involves ignoring a few things: the very different litigation cultures which obtain in Canada and the United States; the fact that the new Bill eliminates the prospect of statutory damages for "private" digital lock infringers but the lawsuits which have been criticized in the US are predicated on the availability of those very statutory damages; and the fact that mass lawsuits, as an empirical matter, simply haven't been brought in Canada to date (the fate of the initial attempt represented by the BMG v John Doe (2004 FC 488) case is illustrative).

In short, with respect to digital locks, it seems that Bill C-32, in its practical details, represents a compromise (imperfect as all such compromises necessarily are) - and likely one that all interested stakeholders can live with.

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The full text of Bill C-32 as it will be presented to Parliament for first reading is now available online.

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The Canadian government today announced the details of what will become Bill C-32: the Copyright Modernization Act (the text of the Bill is not yet available online) - the opening act of what is certain to be a contentious debate which will unfurl over the next few months.  Jason Magder provides coverage ("New copyright bill introduced") as does Steven Chase ("Tories unveil tougher copyright bill").  Some highlights from Magder's coverage in the Montreal Gazette:

It will be easier for recording companies and film studios to go after those who share files illegally, if a new copyright law introduced in the House of Commons Wednesday is passed.

The new law would require Internet service providers to notify their users if they receive a notice that a copyright has been infringed upon. The ISPs would then be required to hold on to the personal information of the infringing member, to turn it over if a court orders them to do so. Under the current law, ISPs only notify copyright infringers on a voluntary basis.

... Among other changes, the law legitimizes activities that most Canadians already do, such as transferring music from a legally purchased CD to an MP3 player, or recording a television show, which goes against current copyright rules, universally seen as outdated and last updated in 1997.

The legislation, however, makes it illegal to circumvent digital locks, even for personal or educational purposes.

And from Chase's coverage in the Globe and Mail:

The new bill aims to soften the blows of changes for consumers by legitimizing a lot of commonplace but grey-area activities such as home taping of TV or copying CDs to other devices or for backup purposes. It would legalize personal recording of TV, radio and Internet programs for later viewing or listening – as long as this is not done to create a permanent library of duplicated work. It would also okay the practice of copying already-purchased music, film or other electronic works to other playback devices such as MP3 players – or for backup purposes.

In what might be called the YouTube exemption: Canadians will be also free to create video “mashups” that borrow from commercial works for posting online.

Preliminary reaction from around the internet includes Michael Geist's impressively detailed consideration ("The Canadian Copyright Bill: Flawed But Fixable"), which ends with this:

...the initial reaction depends on whether you are a glass half full or glass half empty person.  For the glass half-full, the compromise positions on fair dealing, the new exceptions, and statutory damages are not bad - not perfect - but better than C-61.  For the glass half-empty, the digital lock provisions are almost identical to C-61 and stand as among the most anti-consumer copyright provisions in Canadian history.

Personally, I'm a glass half-full kind of guy (at least when it comes to copyright reform) and, without having seen the text of the bill, would strike a position even more positive than Geist's: most legislation, and particularly copyright legislation, ends up being an ungainly compromise among the interests of various stakeholders, so a bill which attempts to address a broad range of concerns and take account of a broad range of interests is inevitably going to contain elements that are problematic for whoever is assessing it.  It seems that there are many positive elements to this bill, and it will be interesting to see what survives and changes through the committee process in Parliament.

Here at the Signal we're going to do our best over the next few months to keep tabs on developments and commentary, from a variety of perspectives, surrounding Bill C-32, so we invite readers to check back often (clicking the "Bill C-32" tag below will bring you to an index of all posts on the Signal about the topic).

UPDATE: The CBC has a piece with reactions from a variety of stakeholders ("Copyright bill would outlaw breaking digital locks").

 UPDATE: The Entertainment Software Association of Canada "welcomes strong action on copyright".

UPDATE: ACTRA describes the bill as "a real blow to artists".

UPDATE: Canadian Recording Industry Association (CRIA) and Canadian Independent Music Association (CIMA) "thank the government for taking this step to protect the right of artists and other rights holders to earn a living from their work".

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What to do when you stumble across a copyrighted work (eg, a film clip, a lengthy excerpt from a book, a portion of a song, a photograph, etc.) which you want to incorporate into anew work which you are creating (such a film or book or multimedia project)?  Jeremy Phillips, posting at the 1709 Copyright Blog, notes that the UK's Intellectual Property Office has published its answer to the question: How do I locate a copyright owner if I want to use the work?  The answer provides various bits of advice on how to go about identifying who the owner of copyright is and then actually tracking them down in order to request permission.

All of which is well and good, but what happens when the owner is difficult or impossible to find?  In the UK, the advice of the Intellectual Property Office is as follows:

... if you are having difficulty locating a right holder, you should keep good records of your efforts. (This will help to show that you have been trying to act in good faith.) If you are unsuccessful in tracing the right holder, and still wish to proceed with your project, you should do so with caution. You may wish to set aside an appropriate fee for the use of the work in a special bank account, and, when you use the work, apply a statement indicating that you have tried to trace the right holder, but have failed to do so, and then invite any legitimate right holder to contact you. You should bear in mind that should the right owner appear, they may consider suing you for infringement of their rights, and in such a case you would want to show the right holder, and perhaps the courts, that you have acted in good faith and have made reasonable efforts to try to track down the right holder.

Helpful as far as it goes, but when the advice ends with "well, if you get sued, this might be helpful", perhaps it leaves something to be desired...

Here in Canada, that answer can be supplemented, as outlined in this helpful brochure published by the Copyright Board of Canada: Unlocatable Copyright Owners.  As the brochure notes, if a person desires to use a published copyrighted work (and the contemplated use does not fall within one of the exceptions to infringement contained in the Copyright Act or does not constitute fair dealing) and they have "made every reasonable effort to find the copyright owner" but been unsuccessful, then under Section 77 of the Copyright Act (Canada), an application can be made to the Copyright Board of Canada for a license.  The brochure contains useful tips on preparing an application for a license.

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Further to earlier mention of the release by the Documentary Organization of Canada (DOC) of its Guidelines to Fair Dealing Practices for Documentary Filmmakers, Vincent Doré has written a brief comment on the Guidelines at IP Osgoode's IPilogue:

The Copyright Act thus adequately considers user rights and the public interest by allowing documentary filmmakers in Canada to bring to viewers a true depiction of reality without prohibitive and unnecessary copyright clearance costs. For instance, the Guidelines state that the use of copyrighted material “for the purpose of critiquing or reviewing the composition of the material, or the views expressed in the material,” does not require copyright clearance if the use meets the requirements of “fair dealing,” and the source and author of the material are mentioned (it is noteworthy that U.S. law does not require the mentioning of source and author). Therefore, the use of copyrighted material may not require clearance, even if it undermines the market of the original work. However, the creator of the original work can be comforted by the fact that a documentary that is a substitute for or competes with the market for the original work without copyright clearance is less likely to be held to be “fair”.

As alluded to in the earlier post here at the Signal, the DOC Guidelines themselves require some close interrogation as they tend to (understandably, given the DOC's mandate for its members) adopt the most producer-favourable interpretation of various provisions in the Copyright Act and court decisions - hopefully Doré's post will be the start of a wide-ranging discussion about the Guidelines and their efficacy.

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The CBC reports that "Arcade Fire music sparks Ottawa school play":

Students at an Ottawa high school have transformed the music of Montreal indie rock band Arcade Fire into a stage play.

The Neon Bible Project, by students at Canterbury High School, is a performance of movement and dance based on Arcade Fire songs.

The band has given its blessing to the Neon Bible Project, developed by ardent fans.

(The Neon Bible Project maintains its own blog, which provides information on the project and performances.)  Many people will be aware that playing music for an audience in a public place (including in a facility which charges an admission fee, such as a concert hall) triggers the payment of a royalty for the "public performance" of the composition (for which a license from SOCAN is required).  Likely to be less familiar is the need to license so-called "grand rights" when music is used in the fashion contemplated by The Neon Bible Project (ie as an integral part of a dramatic presentation involving such elements as narration, storyline or scenery).

"Grand rights" are the "dramatic performing rights" which are held by the owner of copyright in a composition (other public performance rights are referred to as "small rights", though actually hearing that term used is relatively rare).  Grand rights are administered separately from other public performance right - thus SOCAN is not able to grant a license for the grand performing rights in a composition.  Generally, the rights are administered directly by the publisher (or the composer).  The Canadian League of Composers offers a helpful guide to grand rights and a checklist of elements which should be present in a grand rights license.  Gordon P. Firemark has also written a short post (from a US perspective) outlining considerations for producers who wish to make use of existing songs in their stage plays.

On a somewhat related note, Brent Giles Davis has written an excellent paper exploring whether and when "tribute bands" need to license grand rights: "Identity Theft: Tribute Bands, Grand Rights and Dramatico-Musical Performances" (24 Cardozo Arts and Entertainment Law Journal 845).  The paper provides a detailed consideration of grand rights and the US caselaw surrounding them.

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The film version of The Girl With the Dragon Tattoo was released in North America on March 19, 2010 - for entertainment lawyers, it raises the question: what do you do about a girl with a dragon tattoo who appears on-screen?

The errors and omissions "clearance" process requires producers of audio-visual projects to obtain licenses for all copyrighted materials which appear recognizably on-screen.  A tattoo is, at least at some level, simply a drawing or painting rendered on a somewhat unusual canvas (ie the human body).  At first glance, then, the tattoo should be the subject of copyright protection - but who should you approach to request permission to reproduce the image?  The actor who has the tattoo imprinted on their body, or the tattoo artist who originally drew the tattoo (and what about a tattoo which is itself simply a reproduction of a pre-existing artwork or trade-mark)?

Christopher Harkins has written what appears to be the only currently-available long-form consideration of the question: "Tattoos And Copyright Infringement: Celebrities, Marketers, And Businesses Beware Of The Ink" (10 Lewis & Clark Law Review 314) (hat tip: Simon Chester at slaw), which opens with a discussion about a case involving a tattoo artist suing the NBA for copyright infringement when the NBA created advertisements depicting player Rasheed Wallace and a close-up (and animation) of the tattoo on his right forearm (the case was eventually settled with no public disclosure of the settlement terms).  Harkins analyzes the matter from the perspective of US copyright law, and Jordan S. Hatcher also offers some thoughts on the matter (including an interesting sidebar on the intersection of tattoos and moral rights).  The answers are not straightforward, regardless of the jurisdiction: Harkins offers an apposite closing thought when considering tattoos on-screen: "a veritable gauntlet of copyright issues may lurk".

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On May 12, a US Federal Court ruled that popular peer-to-peer (P2P) file sharing site, LimeWire,  and its founder/chairman, Mark Gorton, were liable for copyright infringement. The Recording Industry Association of America (RIAA) brought the suit in 2006 and was seeking damages and an injunction against the site. RIAA's chairman and CEO, Mitch Bainwol, called the ruling "extraordinary". 
 

This ruling only goes to strengthen the 2005 U.S. Supreme Court's decision in MGM v. Grokster, which held the following:

One who distributes a device with the object of promoting its use to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement, going beyond mere distribution with knowledge of third-party action, is liable for the resulting acts of infringement by third parties using the device, regardless of the device’s lawful uses.

Meanwhile, the International Anti-Piracy Caucus, a group of lawmakers that work closely with the RIAA, released a list of the six most "notorious" file sharing web-sites.

The six sites are as follows: Baidu (China), IsoHunt (Canada), Mp3fiesta (Ukraine), RapidShare (Germany), RMX4U.com (Sweden), and the Al Capone of these BitTorrent and P2P forums...The Pirate Bay (Sweden).

These sites are now clearly the most wanted pirates sailing the digital seas. It will be interesting to see who sinks first.    

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The Documentary Organization of Canada (DOC) has announced the release of its Guidelines to Fair Dealing Practices for Documentary Filmmakers.  Documentaries, by their very nature (ie because they seek to depict and reproduce the world as it actually is, and generally are not filmed on controlled and artificial sets), face greater "clearance" challenges when it comes to obtaining errors and omissions insurance - permission must be obtained for, among other things, the on-screen reproduction of any copyright or trade-marked materials, such as songs, posters or film clips.  The DOC Guidelines aim to provide guidance on when "fair dealing" may be relied upon to avoid having to obtain clearances.

The issue of the extent to which Canada's "fair dealing" mechanism can be used to ease the clearance process is a contentious one, with producers (and their counsel) squaring off against E&O providers (and their counsel) - and is ultimately a subset of the larger debate regarding the efficacy of "fair dealing" itself.  As DOC notes in their press release, the Guidelines are intended as a stop-gap measure on the way to DOC's goal of achieving a more wide-ranging reform of fair dealing.

Of particular interest is the role to be played by efforts to create industry-standard guidelines.  Cogent arguments have been advanced, including those by Giuseppina D'Agostino, that reforming the law of fair dealing will not prove as constructive as creating "fair dealing best practices" (see D'Agostino, "Healing Fair Dealing? A Comparative Copyright Analysis of Canadian Fair Dealing to UK Fair Dealing and US Fair Use", 53 McGill Law Review 309, available for download from SSRN).  In other words, perhaps the most productive way forward is by developing, informed by the positions and (competing) preferences of all stakeholders in the relevant industry sector, precisely the sort of guidelines and standards which the DOC Guidelines are a first step in creating.  (The Center for Social Media at American University has promulgated a Documentary Filmmakers’ Statement of Best Practices in Fair Use which is an effort similar in ambition to that of DOC.)  Though such guidelines do not have the force of law, there is the hope that, to quote D'Agostino, courts will see fit to treat them "as 'soft law' when interpreting fair dealing cases". 

The DOC Guidelines will almost certainly not be the final word on the matter - they do not appear to have been endorsed by E&O providers, for example.  There will be elements of the Guidelines which prove contentious (as an example, as I touched on in this short piece at IP Osgoode on the "incidental inclusion" exception in Canadian copyright law, the DOC Guidelines adopt the most aggressive, and producer-favourable, interpretation of the "incidental inclusion" exception).  But the DOC Guidelines will hopefully serve as a welcome first step in the ongoing process of clarifying and simplifying how Canada's copyright laws can, and should, interface with day-to-day film and television production activities.

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I confess that back when buying an album on CD was a big part of my life, I was always offended when the booklet didn't contain the lyrics - really, they couldn't just throw in the words for my $14.99?  The internet abhors a vacuum, and so lyrics sites were created - many, many lyrics sites, many of which were completely unlicensed (and sometimes contained incorrect lyrics).  Lyrics enjoy copyright protection just as much as the notes which comprise the song (or, in what may be a more appropriate comparison, just as much as a poem).  Joseph Plambeck in the New York Times offers a look at the ongoing evolution of lyrics websites: Lyrics Sites at Center of Fight Over Royalties.

Music publishers have partnered with rights clearinghouses such as Gracenote and LyricFind to offer licenses to websites who wish to reproduce protected lyrics.  As the story notes, while revenue generation is modest at this point in time, it is anticipated to grow - particularly since successful lyrics sites, such as the Vancouver-based MetroLyrics, are evidently enjoying annual revenues of around $10 million.

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POST UPDATED

This post is somewhat curious to write - it is about a decision of the Canadian Federal Court of Appeal which, at the moment, appears not to be available online, thus limiting discussion of the appeal to what has been reported in other blogs and news outlets.  Here is what we know at this time (this post will be updated when the full decision is made publicly available - UPDATE May 25, 2010: the text of the decision is available here):

• Barry Sookman has reported that at some point last week the Federal Court of Appeal issued a decision in the ongoing judicial review of the Copyright Board of Canada's decision regarding SOCAN's Tariff 22.A - according to Sookman, the Court of Appeal has, confirming the decision of the Copyright Board, ruled that offering an online "preview" of a song in order to enable a consumer to decide whether to purchase that song constitutes an example of "fair dealing" for research purposes, and hence no public performance royalty is payable to SOCAN in connection with that preview
• The Copyright Board of Canada's original decision (released on October 18, 2007) which was the subject of the appeal to the Federal Court, is available here.  The Board's conclusion regarding "previews" begins at page 31 of the .pdf.
• Michael Geist, in his post discussing the FCA decision, evidently has access to a copy of the decision (where does he get those wonderful toys?), and reproduces a passage from the decision which indicates that the FCA has vigorously adopted the Supreme Court of Canada's guidance in the CCH Canadian Ltd. v. Law Society of Upper Canada, [2004] 1 S.C.R. 339, 2004 SCC 13 that the "fair dealing" provisions in the Copyright Act should be given a liberal and purposive interpretation

As Geist notes, the implications of the decision are "very significant".  In declining to accord the word "research" a restricted interpretation (as Sookman notes, "SOCAN had argued before the Court that the term “research” applied to activities involving investigation, systematic research, critical analysis, scientific inquiry and factual discoveries arising and being carried out in a formal setting"), the FCA has affirmed that, in Geist's words, "the door is open to creative uses of the fair dealing provision in Canada consistent with the Supreme Court of Canada's view of a copyright balance between user rights and creator rights".

What may be most significant about the decision is that it may work to undercut the arguments of those (including this writer) who have argued in the past that a "fair use" approach to user's rights may be more beneficial than the "fair dealing" mechanism currently found in Canadian copyright law.  ("Fair dealing" provides for a prescribed and limited set of acceptable uses (research, private study, criticism or review and news reporting) which fall outside the ambit of a copyright owner's exclusive rights, while "fair use" is an American concept which allows for an open-ended assessment of the purposes, and so is not limited to the five acceptable purposes found in Canadian law.)  

Counter-intuitively, with respect to online "previews" of music, "fair dealing" has proved to be more accommodating than "fair use" - as Sookman notes, in the US decisions on this matter (United States v. American Society of Composers, Authors and Publishers, (In re AT&T Wireless), 599 F.Supp. 2d 415 (S.D.N.Y. 2009) and Video Pipeline v. Buena Vista Home Entertainment Inc. 342 F.3d 191) the US courts have held that offering an online "preview" is not fair use, and that a public performance royalty is payable.  A reassessment of the purported limits of "fair dealing" may be in order.

Though the issue appears settled in Canada, it continues to be live in the United States (at least one of the aforementioned decisions is currently on appeal). Greg Sandoval wrote a detailed article canvassing the various arguments surrounding whether online previews should be considered fair use, which is well-worth reading.

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The discussion of "fan fiction" at Wikipedia begins as follows:

Fan fiction (alternately referred to as fanfiction, fanfic, FF, or fic) is a broadly-defined term for fan labor regarding stories about characters or settings written by fans of the original work, rather than by the original creator. Works of fan fiction are rarely commissioned or authorized by the original work's owner, creator, or publisher; also, they are almost never professionally published. Fan fiction, therefore, is defined by being both related to its subject's canonical fictional universe and simultaneously existing outside the canon of that universe.

While the problematic legal implications of fanfic should be obvious, there are a multitude of other perspectives and considerable discussion about the propriety of fanfic and whether and how copyright owners should respond to, tolerate or even encourage it.

Jonathan Bailey, writing at Plagiarism Today, has a detailed discussion about "The Messy World of Fan Art and Copyright".  The legal portion of Bailey's analysis (though Bailey isn't a lawyer, he writes frequently on copyright-related matters) focuses on US law, and he offers a nice exploration of the various factors (legal, commercial, artistic) which intersect in discussions of fan fiction.

The key point to remember is this: Fan fiction and fan art are, usually, an infringement of the right of the copyright holder to prepare and license derivative works based on the original. This is almost without exception.

However, many copyright holders, for good reasons, tolerate fan art and even encourage it, but this should not be taken as carte blanche to do what you want with the source material. There are many lines that a fan artist can cross and wind up in legal trouble.

Canadian lawyer Grace Westcott published a lengthy and thoughtful article on the topic in the Literary Review of Canada: "Friction Over Fan Fiction".  As Westcott notes:

Under Canadian law, as in the U.S., characters from fiction or television, such as Anne of Green Gables, can be protected by copyright, provided that the characters are sufficiently creative, distinctive, thorough and complete, or constitute a substantial part of the work itself. While the Canadian Copyright Act has no explicit concept of derivative works, it does confer on artists and authors the exclusive right to control the production of their works in other mediums and adaptations. The basic question is whether a substantial amount of the source has been produced or reproduced, in any material form whatever. This would likely capture most fan fiction.

As she also notes, of potentially even greater concern under Canadian copyright law is the presence of "moral rights": Sections 14.1 and 28.2 of the Copyright Act (Canada) provide that if a work is "distorted, mutilated or otherwise modified" to the point where there is "prejudice to the honour or reputation" of the author, then an infringement of moral rights has occurred.

Other, non-legal, considerations should be taken in account as well, as Westcott notes:

Broader benefits may flow from fan fiction as well. Tushnet argues that fan fiction allows fan writers — and potentially children, too, in an educational setting — to develop their writing skills using their favourite characters and worlds as a starting point. The fan community provides an important social network for this. ...

Media companies may judge that the promotional value of creatively engaged fans outweighs the risks of fan fiction.

Canadian author James Bow, who spent his own time in the fanfic trenches, offers his own perspective in "In Defence of Fan Fiction":

When it comes to the best that fan fiction has to offer, you will find individuals working as hard as any professional, producing something that is well written, well crafted and a lot of hard work. And it has all been done for no reason other than love.

... So this author is not going to shy away from his fan fiction heritage. He will not shoo away the kids from his backyard. As long as they don’t damage the fence or step on my begonias, I’ll be content to listen to their playful chatter. I honestly think that my life and my work will be all the richer because of it.

As with so many current issues in Canadian copyright law, we await a Canadian court's pronouncement on the legality of fan fiction - but we see, also, that the considerations to be taken into account are not limited to the purely legal.

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Anti-piracy laws are gaining momentum across the Atlantic and beyond. The U.K. Digital Economy Act was given Royal Assent on April 8, 2010, and includes provisions in which copyright holders can send a “copyright infringement report” to ISPs with evidence of suspected infringement and the ISP must notify its subscriber within a month. More significantly, UK telecom regulator, OFCOM, will have the power to introduce various technical measures and suspensions of accounts if the ISPs do not make an impact on these potential infringers.

The U.K. Digital Economy Act was passed into law with growing criticism from various U.K. ISPs, who have already voiced their concerns about the new law.  U.K. ISP Talk Talk, recently stated that the company will "continue to battle against these oppressive proposals during the follow-up process in parliament". Still, other jurisdictions are quickly following the U.K.'s lead. On April 23, 2010, New Zealand's Copyright (Infringing File Sharing) Amendment Bill unanimously passed its first reading in parliament. Also, the Spanish government will soon be proposing legislation to block or shut down websites that offer links to unauthorized content.

Meanwhile, Canadian Heritage Minister James Moore, plans to introduce the government's latest version of its copyright legislation this spring. In the meantime, major music labels were busy responding to a motion by the three opposition parties calling for this country's blank cd/tape levy to be expanded to digital devices such as iPods. However, the governing Conservatives rejected the proposal as a "tax" on consumers.

One would think that with a growing number of foreign governments quickly putting pen to paper and implementing various anti-piracy laws, Canada would be set to follow suit. Then again, history has shown that Canada often fight digital pirates on their own time and at their own pace.   


      

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UPDATED BELOW

The good folks at The Lawyers Weekly have published a short article of mine about the reversionary interest under Canadian copyright law.  Wait - it's actually more interesting, and more consequential, than it sounds.

A handful of individuals can count on being called “King” — the next heir to the throne of England, for instance, or Elvis Presley. But for aficionados of comic book art, only one man earns the sobriquet: Jack “the King” Kirby.

Co-creator of fictional legends such as Captain America, the Incredible Hulk and the X-Men, Kirby is also widely regarded as one of the most innovative and influential artists in the history of what is referred to as “sequential art.” Kirby passed away in 1994, but the traditional proclamation, “The king is dead; long live the king!” remains apt: Kirby’s heirs are embroiled in legal proceedings with Marvel Comics, arguing that they are rightfully the sole or joint owners of copyright in various characters created by Kirby. The heirs claim entitlement to a share of profits earned from various derivative works based on those characters, a potentially vast sum—gross revenues from just the North American theatrical release of the three most recent X-Men movies exceed $600 million.

As I noted in the article, Section 14 of the Copyright Act (Canada) provides that, 25 years after an author dies, the copyright in any works which the author created and for which the author was the first owner of copyright (so, basically, excluding works created "in the course of employment") reverts back to the estate of the author.  Jack Kirby's heirs are attempting to claim ownership of various properties created by Kirby by making use of a somewhat similar provision under US copyright law.  The article sets out my critique of the reversionary interest and why I think it is a provision whose continued existence is difficult to defend.

I should also note a brief update on the story hook for the article: Eriq Gardner, writing at THR, Esq., notes that Marvel Comics has won an early round in the ongoing litigation.

UPDATE: One item in the published piece requires correction.  It is incorrect to state that the estate of Joe Shuster has obtained a court ruling granting it a share of copyright in the Superman character beginning in 2013.  Rather, the estate of Joe Shuster, Siegel's partner and Superman co-creator, filed termination notices with the U.S. copyright office in 2003 which, if valid, will allow the estate to recapture Shuster¹s share of the copyright starting in 2013.

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The good folks at IP Osgoode's IPilogue blog have published a short article I wrote which explores the "incidental inclusion" exception to copyright infringement, an exception which, depending on who you talk to, could be of major significance for film and TV producers facing errors and omissions clearance problems: "Cindy, Incidentally – The “Incidental Inclusion” Exception in Canadian Copyright Law".  The opening paragraph:

A filmmaker films an individual walking down a city street, past a convenience store.  The camera captures, among others, two things: an advertisement consisting of the familiar, stylized Coca-Cola symbol hanging in the window, and the faint, but audible, strains of a popular song drifting from inside the store as an unseen customer opens the door.  Concerned, the filmmaker speaks with an entertainment lawyer and asks whether there’s anything to worry about.  From such a simple fact scenario rises one of the more vexing questions in Canadian intellectual property law.

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Copyrights and political campaigns, that is.  Ben Sheffner has comprehensive post up about the lawsuit brought by Don Henley against a politician who used two of Henley's songs from his post-Eagles work in ads mocking Senator Barbara Boxer, a politician with whom Henley is simpatico in his political views:

Both sides in Don Henley's lawsuit against California US Senate candidate Chuck DeVore (R) over campaign "parody" videos that used Henley's tunes set to lyrics mocking Sen. Barbara Boxer (D) have now filed cross-motions for summary judgment, teeing up a case that will likely clarify the rules for political uses of third-party material.

The motions focus largely on one issue: whether the videos, which use the compositions "The Boys of Summer" and "All She Wants to do is Dance," are indeed "parodies," and thus likely fair uses, or, rather, unprivileged "satires."

Sheffner provides in-depth consideration of applicable precedent and the workability of the distinction between parody and satire.  (A short but also comprehensive article on the topic, "The Politics of Fair Use", was written by Denise Mroz and David Levenson, and can be found in NYSBA Entertainment Arts & Sports Law Journal, Vol. 18, No. 3 (Fall/Winter 2007).)  As Sheffner discusses, in a case involving an allegation of copyright infringement, all of the action is occurring in determining whether using the songs without permission constitutes an allowable "fair use" under US copyright law - because US copyright law recognizes a fairly robust parody exception to copyright infringement, as set out in the US Supreme Court decision in Campbell v Acuff-Rose.  The existence and extent of a parody exception (and/or a satire exception) has an importance well beyond political campaigns - it can be of significance in areas such as documentary and fictional film-making as well.  Of particular note for Canadians is the fact that under Canadian copyright law, it is unlikely that the debate could occur at all.

The interface of copyright law and political campaigns (and filmmaking) is likely only to increase over time - as digital media allows for an increased ability to mix and mash-up materials, the temptation to make use of elements which are subject to copyright protection will only increase.  Indeed, Canadians enjoyed their own brief flare-up a few years ago when copyright and political campaigns collided.  As the Toronto Star reported in January 2007:

Conservative attack ads fired at Liberal Leader Stephane Dion may end up sideswiping the ruling party after questions were raised about possible breach of copyright laws.

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Wikipedia maintains a "World's Funniest Joke" page - of the three currently on offer, this joke, which apparently won top honours in the UK, is my favourite:

A woman gets on a bus with her baby. The bus driver says: "That's the ugliest baby that I've ever seen. Ugh!" The woman goes to the rear of the bus and sits down, fuming. She says to a man next to her: "The driver just insulted me!" The man says: "You go right up there and tell him off – go ahead, I'll hold your monkey for you."

You can never go wrong with including a monkey in a joke.  So - what intellectual property rights, if any, protect that joke?  Could the originating comedian or writer of that joke sue for copyright infringement if someone "stole" the joke?

CBC Radio's Jian Gomeshi, on the Q program, hosted an interesting discussion on April 20, 2010 (podcast is available here - the discussion starts at about 01:45 of the episode) on the topic of copyright in jokes, and spoke with Dotan Oliar and Christopher Sprigman, the authors of the article "There's No Free Laugh (Anymore): The Emergence of Intellectual Property Norms and the Transformation of Stand-Up Comedy" (citation: 94 Va. L. Rev. 1787 (2008)).  As the abstract for the article notes:

In this paper, we analyze how stand-up comedians protect their jokes using a system of social norms. Intellectual property law has never protected comedians effectively against theft. Initially, jokes were virtually in the public domain, and comedians invested little in creating new ones. In the last half century, however, comedians have developed a system of IP norms. This system serves as a stand-in for formal law. It regulates issues such as authorship, ownership, transfer of rights, exceptions to informal ownership claims and the imposition of sanctions on norms violators. Under the norms system, the level of investment in original material has increased substantially. We detail these norms, which often diverge from copyright law's defaults.

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Over at IP Osgoode's IPilogue, Billy Barnes writes about a situation where intellectual property law rubber meets the entertainment law road: the "first sale" doctrine and digital content.

Normally when a consumer purchases a copyrighted work embodied in a tangible object (e.g., a book or a CD) they are completely free to lend or resell that object without the permission of the rightsholder. In the United States, this is called the doctrine of first sale and it has been recognized for over a century. Business practices, prices, and consumer expectations all reflect the assumption that sale of a book is just a regular property transaction. This article discusses how this changes when we switch from tangible objects to digital distribution.

(Also worth checking out, as noted by Barnes, is the IP Colloquium episode devoted to the first sale doctrine.) As Barnes points out, the durability of the first sale doctrine is increasingly being tested in a world where entertainment products (such as books and movies) are delivered not as a physical product but as a digital stream.  I used to be able to take my CDs down to the used CD store and sell them once I was no longer interested in listening to them - to what extent, if any, do or should I have the same right if what I purchased was not a physical disc but a downloaded track (or book, or movie, etc.)?

These questions are even more pertinent in Canada because, unlike in the United States, we do not have a clearly defined "first sale" doctrine, particularly with respect to copyright law.  Outside the United States, the "first sale" doctrine is more commonly referred to as the concept of "exhaustion" (as in, the sale has "exhausted" the owner's rights in the product). 

Macklin and Leger wrote this report for the International Association for the Protection of Intellectual Property which gives a basic background on the lack of an exhaustion doctrine in Canada.  More recently, Jeremy de Beer and Robert Tomkowicz have written "Exhaustion of Intellectual Property Rights in Canada" (not available online, but can be found in the Intellectual Property Institute of Canada's journal at 25 Canadian Intellectual Property Review 3).  de Beer and Tomkowicz examine recent Supreme Court of Canada cases to tease out the contours of Canada's "exhaustion" doctrine, and encourage the courts to more precisely define its limits.

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How entertaining is playing a game?  Gordon P. Firemark offers some thoughts, in his post  Asked and Answered: Protection for a game, on the various legal strategies (such as copyright and trade-marks) available for protecting games.  For an academic treatment of whether games can be the subject of copyright protection under US law, Bruce Boyden offers this post, and also a paper (entitled "Games and Other Uncopyrightable Systems") which has been uploaded to SSRN (the issue is a live one in the US because of Section 102(b) of the US Copyright Act., which limits copyright protection for "systems").

For those who are really interested in the topic, also well-worth checking out are Boyden's comprehensive four-part series of posts (1, 2, 3, 4 plus this supplemental post) exploring the issue of games and copyright, using the Scrabulous (now Lexulous) litigation as a starting point.

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