Drt 6455 eCommerce Law lesson 6 – IT and Intellectual Property (part 1) associate professor faculty of law university of montreal university of montreal.

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drt 6455 eCommerce Lawlesson 6 – IT and Intellectual

Property (part 1)

associate professorfaculty of law

university of montrealuniversity of montreal chair

in e-Security and e-Business law www.gautrais.com

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Plan

• Copyright

• Trademark Law

• Patent Law

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Copyright Plan • Copyright Fundaments

• Copyright Conditions

- originality

- fixation• Vehicle protection

- Patrimonial Rights

- Moral Rights• Protection Modalities

- Duration

- Formalities

- Exceptions• And New technologies???

- Who to make pay??????

- Bill C-60

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Uncertain Copyright Fundaments

• Human rights versus commercial rights

• Common law versus « droit civil »

• Property versus usage rights

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Person versus trade (distinction common law / droit civil)• Canada, see: Desputeaux c. Éditions Chouette (1987) inc., [2003] 1 R.C.S.178,

2003 SCC 17: [57] «Parliament has indeed declared that moral rights may not be assigned,

but it permits the holders of those rights to waive the exercise of them.  The Canadian legislation therefore recognizes the overlap between economic rights and moral rights in the definition of copyright. This Court has in fact stressed the importance placed on the economic aspects of copyright in Canada: the Copyright Act deals with copyright primarily as a system designed to organize the economic management of intellectual property, and regards copyright primarily as a mechanism for protecting and transmitting the economic values associated with this type of property and with the use of it ».

• See: Théberge v. Galerie d’Art du Petit Champlain inc., [2002] 2 S.C.R. 336, 2002 SCC 34

[12] « Generally speaking, Canadian copyright law has traditionally been more concerned with economic than moral rights. Our original Act, which came into force in 1924, substantially tracked the English Copyright Act, 1911 (U.K.), 1 & 2 Geo. 5, c. 46.  The principal economic benefit to the artist or author was (and is) the “sole right to produce or reproduce the work or any substantial part thereof in any material form whatever” ».

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Balance: CCH / Théberge [10] Binnie J. recently explained in Théberge, supra, at paras. 30-31, that the Copyright

Act has dual objectives:

The Copyright Act is usually presented as a balance between promoting the public interest in the encouragement and dissemination of works of the arts and intellect and obtaining a just reward for the creator . . . .

The proper balance among these and other public policy objectives lies not only in recognizing the creator’s rights but in giving due weight to their limited nature.

In interpreting the Copyright Act, courts should strive to maintain an appropriate balance between these two goals. 

[11] Canada’s Copyright Act sets out the rights and obligations of both copyright owners and users.  Part I of the Act specifies the scope of a creator’s copyright and moral rights in works.

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Balance: a pragmatic law « [l]e système s’est construit par sédimentation progressive de

pratiques répondant à des problèmes locaux. Tour à tour, il apparaît comme un moyen pour un souverain d’importer technologies et ouvrages étrangers, d’inciter les créateurs indigènes à révéler leurs secrets; pour un État de favoriser l’instruction publique, de contrôler l’édition, de réglementer la concurrence, de protéger l’ordre public; pour un syndicat professionnel de contrôler la profession; pour les investisseurs de rentabiliser leurs investissements; pour les créateurs de tirer profit de leurs créations. »

T. PARIS, Le droit d’auteur : l’idéologie et le système, Paris, Presses universitaires de France, 2002, p. 111.

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Copyright Conditions: originality

Art. 2: «every original literary, dramatic, musical and artistic work” includes every original production in the literary, scientific or artistic domain, whatever may be the mode or form of its expression, such as compilations, books, pamphlets and other writings, lectures, dramatic or dramatico - musical works, musical works, translations, illustrations, sketches and plastic works relative to geography, topography, architecture or science; […] ».

Art. 5 (1): « […] in every original literary, dramatic, musical and artistic work if any one of the following conditions is met […] ».

Theoretically, two persons working over and above and if two identical work, there is no violation.

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Copyright Conditions: originality

• Feist Publications Inc. c. Rural Telephone Service Co., 499 U.S. 340 (1991)

• Télé-Direct (Publications) Inc. c. American Business Information, Inc., 1997 IIJCan 6378 (C.A.F.), [1998] 2 C.F. 22 (C.A.)

• See CCH.

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Copyright Conditions: originality (CCH)

[16] « 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 ».

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Copyright Conditions: fixation

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 (…) ».

Berne Convention: art. 2 (1): «The expression “literary and artistic works” shall include every production in the literary, scientific and artistic domain, whatever may be the mode or form of its expression (…) ».

Jurisprudence : Apple Computer c. McKintosh Computers, [1988] 1 C.F. 673 (CAF): (see Federal Court Reports:(1987), [1988] 1 C.F. 673

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Patrimonial Rights (art. 3(1))

• Reproduction Rights

• Rights of Communication to the public

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Patrimonial Rights (art. 3(1)) • 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

• (a) to produce, reproduce, perform or publish any translation of the work,• (b) in the case of a dramatic work, to convert it into a novel or other non-dramatic work,• (c) in the case of a novel or other non-dramatic work, or of an artistic work, to convert it into a dramatic

work, by way of performance in public or otherwise,• (d) in the case of a literary, dramatic or musical work, to make any sound recording, cinematograph film or

other contrivance by means of which the work may be mechanically reproduced or performed,• (e) in the case of any literary, dramatic, musical or artistic work, to reproduce, adapt and publicly present

the work as a cinematographic work,• (f) in the case of any literary, dramatic, musical or artistic work, to communicate the work to the public by

telecommunication,• (g) to present at a public exhibition, for a purpose other than sale or hire, an artistic work created after

June 7, 1988, other than a map, chart or plan,• (h) in the case of a computer program that can be reproduced in the ordinary course of its use, other than

by a reproduction during its execution in conjunction with a machine, device or computer, to rent out the computer program, and

• (i) in the case of a musical work, to rent out a sound recording in which the work is embodied,• and to authorize any such acts ».

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Reproduction Rights

• Physical support (clear!) and digital (???)

• Berne Convention is implicit (art. 9: Authors of literary and artistic works protected by this Convention shall have the exclusive right of authorizing the reproduction of these works, in any manner or form).

• WIPO Copyright Treaty (December 20, 1996 ): Agreed statements concerning Article 1(4): « The reproduction right, as set out in Article 9 of the Berne Convention, and the exceptions permitted thereunder, fully apply in the digital environment, in particular to the use of works in digital form. It is understood that the storage of a protected work in digital form in an electronic medium constitutes a reproduction within the meaning of Article 9 of the Berne Convention ».

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Rights of Communication to the public Art. 8 WIPO Copyright Treaty :

« Without prejudice to the provisions of Articles 11(1)(ii), 11bis(1)(i) and (ii), 11ter(1)(ii), 14(1)(ii) and 14bis(1) of the Berne Convention, authors of literary and artistic works shall enjoy the exclusive right of authorizing any communication to the public of their works, by wire or wireless means, including the making available to the public of their works in such a way that members of the public may access these works from a place and at a time individually chosen by them ».

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Moral Rights (art.14(1) Copyright Act )

• 14.1 (1) « The author of a work has, subject to section

28.2, the right to the integrity of the work and, in connection with an act mentioned in section 3, the right, where reasonable in the circumstances, to be associated with the work as its author by name or under a pseudonym and the right to remain anonymous ».

• (2) Moral rights may not be assigned but may be waived in whole or in part. No waiver by assignment

• (3) An assignment of copyright in a work does not by that act alone constitute a waiver of any moral rights.

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Moral Rights (art. 28 (1) Copyright Act )

• 28.1 Any act or omission that is contrary to any of the moral rights of the author of a work is, in the absence of consent by the author, an infringement of the moral rights.

• 28.2 (1) 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• EX: Snow c. Eaton, (1982) 70 CPR 105 (Ont. H.C.J.).• 3) For the purposes of this section,• (a) a change in the location of a work, the physical means by which

a work is exposed or the physical structure containing a work, or• (b) steps taken in good faith to restore or preserve the work• shall not, by that act alone, constitute a distortion, mutilation or other

modification of the work.

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Protection Modalities- Duration

• Principle: The term for which copyright shall subsist shall (…) be the life of the author, the remainder of the calendar year in which the author dies, and a period of fifty years following the end of that calendar year (art. 6).

• Except - In the case of a work of joint authorship: copyright shall subsist during the life of the

author who dies last, for the remainder of the calendar year of that author’s death, and for a period of fifty years following the end of that calendar year ( art. 9).

- Where the owner referred to in subsection (2) is a corporation, the term for which copyright subsists in a photograph shall be the remainder of the year of the making of the initial negative or plate from which the photograph was derived or, if there is no negative or plate, of the initial photograph, plus a period of fifty years (art. 10).

- where any work is, or has been, prepared or published by or under the direction or control of Her Majesty or any government department, the copyright in the work shall, subject to any agreement with the author, belong to Her Majesty and in that case shall continue for the remainder of the calendar year of the first publication of the work and for a period of fifty years following the end of that calendar year (12).

• Debates in the U.S. (Disney Law, 75 years).

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Protection Modalities- formalities

• None ( Ex: art. 5 (2) Berne Convention (1971): «The enjoyment and the exercise of these rights shall not be subject to any formality (…) »

• Thus “formal” uselessness of « © »

• Not completely but not necessary to the validity

• Possible record nevertheless - Not expensive - Only useful for proof - See art. 54 and S.

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Protection Modalities-Exceptions (private coping )

• 80. (1) Subject to subsection (2),the act of reproducing all or any substantial part of

• (a) a musical work embodied in a sound recording,• (b) a performer’s performance of a musical work

embodied in a sound recording, or• (c) a sound recording in which a musical work, or a

performer’s performance of a musical work, is embodied• onto an audio recording medium for the private use of

the person who makes the copy does not constitute an infringement of the copyright in the musical work, the performer’s performance or the sound recording.

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Protection Modalities-Exceptions (private coping )

Are subject of a tax:• Recordable compact discs (CD-R)• Rewritable compact discs (CD-RW)• Audio recordable compact discs (CD-R audio)• Audio compact discs rewritable (CD-RW audio).

Are not subject of a tax:• “recording audio numerical” (reader MP3 or iPod)

(different from Europe )

• “Hard drive”

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Regime of private coping (see Canada Copyright Board opinion, p. 19 and S.) • Since 1998 - Part 1 A of Copyright Act• Will to counter incapacity in fact to control • Articles 80 and seq.• Right of private copying against payment of a charge• Paragraph determining, p. 20 : «The regime does not address the

source of the material copied. There is no requirement in Part VIII that the source copy be a non-infringing copy. Hence, it is not relevant whether the source of the track is a pre-owned recording, a borrowed CD, or a track downloaded from the Internet ».

• Importance of the support of destination: “audio support” • Is worth even if support is not approved - Logic: they may do the "death" - Additional condition which is not in the Act

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Protection Modalities-Exceptions (private coping )

• Position of the Copyright Board was followed in :

Canadian Private Copying Collective v. Canadian StorageMedia Alliance (F.C.A .), 2004 FCA 424 (2004), [2005] 2

F.C.R. 654

• Three major questions

- Is this charge a tax? NO - Can the company organize exemptions? NO - Is MP3 audio support? NO

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Protection Modalities-Exceptions (equitable use)

• Using an unimportant part of the work (art. 21)• Fair dealing for the purpose of research or private study

(art. 29)• Ephemeral recordings (art. 30.8)• Perform in public a literary or dramatic work (art. 32.2)• An educational institution or a library, archive or museum

( but collective management necessary) (art. 30.3) • etc.• Approach very different from what occurs to the United

States (and the concept of Fair Uses).

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Limits in Canadian law face new technologies

• Making intermediaries pay (“Peer-to-Peer”) NO - BMG - Idem in France? - Undoubtedly not (more) in the USA

• Making consumers pay NO- BMG

• Making the supports pay BOF!- SCPCP

• Making the service providers pay NO- SOCAN

- and the right of authorization…

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BMG

• BMG and the slap to industry

- Decision which legalizes Peer-to-Peer in Canada

- Request communication of personal information NO

- Reproduction NO

- Availability of the public NO

- See the comparison with CCH

• BMG attenuated on appeal

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BMG • Glaxo Wellcome PLC v. M.R.N., 1998 IIJCan 9071 (C.A.F.), [1998] 4 C.F.

439 (C.A.)

a) The applicant must establish a prima facie case against the unknown alleged wrongdoer; NO (main question)

b) The person from whom discovery is sought must be in some way involved in the matter under dispute, he must be more than an innocent bystander; YES (in just few lines)

c) The person from whom discovery is sought must be the only practical source of information available to the applicants; NO (no evidence; in just few lines)

d) The person from whom discovery is sought must be reasonably compensated for his expenses arising out of compliance with of the discovery order in addition to his legal costs; YES (OK even if it may be quite expensive)

e) The public interests in favour of disclosure must outweigh the legitimate privacy concerns. NO (no evidence)

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BMG (point a)

• [16] There are three deficiencies in the prima facie case advanced by the plaintiffs:

- (i)     The affidavit is deficient as to content (hearsay)

- (ii)     There is no evidence of connection between the pseudonyms and the IP addresses (poor evidence)

- (iii)     no evidence of infringement of copyright (main question)

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BMG (point a)

• a.     reproduction of sound recordings by the alleged infringers (s. 18(1) and s. 27(1));

• b.     authorization of the reproduction of the sound recordings (s. 18(1) and s. 27(1));

• c.     distribution of unauthorized copies of the sound recordings to such an extent as to affect prejudicially the plaintiffs (s. 27(2)(b)), and

• d.     possession of unauthorized copies, which the alleged infringers knew or ought to have known were infringing, for the purpose of distribution, as set out above (s. 27(2)(d)).

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BMG (point a)

a) reproduction [25] Thus, downloading a song for personal use does not amount to infringement. See Copyright Board's, Private Copying 2003-2004 Decision, 12 December, 2003, at page 20.

b) authorization [27] As far as authorization is concerned, the case of CCH Canadian Ltd. v. Law Society of Upper Canada, 2004 SCC 13 (CanLII), [2004] 1 S.C.R. 339 established that setting up the facilities that allow copying does not amount to authorizing infringement. I cannot see a real difference between a library that places a photocopy machine in a room full of copyrighted material and a computer user that places a personal copy on a shared directory linked to a P2P service. In either case the preconditions to copying and infringement are set up but the element of authorization is missing.

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BMG (point a)c) la mise en circulation [28] The mere fact of placing a copy on a shared directory in a computer where that copy can be accessed via a P2P service does not amount to distribution. Before it constitutes distribution, there must be a positive act by the owner of the shared directory, such as sending out the copies or advertising that they are available for copying. No such evidence was presented by the plaintiffs in this case. They merely presented evidence that the alleged infringers made copies available on their shared drives. The exclusive right to make available is included in the World Intellectual Property Organization. WIPO Performances and Phonograms Treaty, Geneva, December 20, 1996, however that treaty has not yet been implemented in Canada and therefore does not form part of Canadian copyright law.

d) possession (no evidence)

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ISP – SCC and Society of Composers, Authors and Music Publishers of Canada v. Canadian

Assn. of Internet Providers, 2004 SCC 45

CCH:      «. . . a person does not authorize infringement by authorizing the mere use of equipment that could be used to infringe copyright.  Courts should presume that a person who authorizes an activity does so only so far as it is in accordance with the law. . . . This presumption may be rebutted if it is shown that a certain relationship or degree of control existed between the alleged authorizer and the persons who committed the copyright infringement. . . .  [Emphasis added.]  »

• Reference to European Directive / DMCA • Ask to legislator to intervene (par. 127)

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new bill C-61 (2008)

• Distribution rights in P2P network (as in 11 WIPO)

• Technical measures – Lock down policy 41

• ISP Liability 41

• Everything may be change by contract 29.21