Copyright Notice & Notice is Flawed

You may have read about the Supreme Court of Canada deciding Rogers can be paid its costs for telling a copyright owner the identity of movie downloading customers. What isn’t talked about is the notice and notice system that puts this in motion.

A summary of the Rogers v Voltage decision is here. Omar has written about this on Slaw as well.

This is a complex and controversial issue. The essence is that sections 41.25 and 41.26 of the Copyright Act allow the owner of a copyright (eg a movie studio) to create a notice to send to people who breached copyright by downloading the movie, or by allowing others to then upload the movie. At this point the copyright owner only knows the downloader’s IP address and their internet service provider (ISP) – not the person’s name or contact information. The ISP is obligated to forward that message on – hence the term notice and notice.

The concept of notice and notice sounds good on the surface. But no matter whether you side with the copyright owner or the downloader – it doesn’t work in practice – and doesn’t help either side.

If a consumer saw a notice that simply said:

We own movie X, we know you downloaded it, and your sharing software is allowing others to download from you. Delete it, and we will leave you alone. If you don’t, we might sue you.

most consumers would comply.

But in what I’ve seen, the notice ends up being a long email with that message buried closer to the end than the beginning. So the consumer’s first inclination is to delete it assuming it is just another unimportant message from their ISP that they can ignore along with other marketing, scam, and quasi- spam emails.

Like any email, if you don’t get the message across immediately and bluntly, it won’t be read.

The email tends to be long as the copyright owner must explain who it is, why they are emailing, and what they know about the consumer’s behaviour to convince the consumer it is legitimate, and that the consumer needs to stop. ISPs tend to add their own message on top of the copyright owner’s email. They want to clarify what is happening, who it is coming from, that they are obligated to send it on, and they won’t reveal the consumer’s identity unless ordered by a court. And both of those messages might be in both official languages.

That is understandable, but until those messages are structured to start off simple and blunt, and explain all that below it, they won’t be effective.

Cross-posted to Slaw

Does Copyright apply to Chicken Sandwiches or Cheerleading Uniforms?

Lately the news has been too full of weighty stuff like elections, the Ashley Madison hack, stock markets, and the Chinese economy.

So today’s post is a bit lighter.

Courts in the United States have recently decided whether copyright applies to chicken sandwiches and to cheerleading uniforms.  They decided that it applies to one – but not to the other.

If you guessed  it doesn’t apply to the chicken sandwich, you got it right.  In the US Court of Appeals the parties were fighting over rights to a sandwich consisting of a fried chicken breast topped with lettuce, tomato, cheese and garlic mayonnaise on a bun.  The judge said that the “district court properly determined that a chicken sandwich is not eligible for copyright protection”.  And that “A recipe—or any instructions—listing the combination of chicken, lettuce, tomato, cheese, and mayonnaise on a bun to create a sandwich is quite plainly not a copyrightable work,”

In a 2 to 1 decision, the US Court of Appeals decided that copyright protection does apply to cheerleading uniforms.  The difference between the majority and the dissent hinged on what the purpose of cheerleading uniforms is.  The majority decided that the design was decorative, not functional.  The dissenting judge however felt that the function of the uniform was to identify a cheerleader as a cheerleader, and thus the design forms part of that function.

Cross-posted to Slaw


A really dumb idea

For the London Free Press – March 14, 2014

Read this at

In February a “Dumb Starbucks” store appeared in Los Angeles. At first glance the coffee shop may have seemed like any other Starbucks store, but it gave away “dumb” versions of items sold by the Seattle-based coffee company, such as “Dumb Iced Espresso” and “Dumb Vanilla Blond Roast”.

People lined up to get in when it first opened, many probably thinking it was a real Starbucks. At least, that is, until they noticed the word “Dumb” in from of all the signage and product names, saw the interior, or actually tasted the products.

Dumb Starbucks turned out to be a publicity stunt. To extend the ruse, the creators anticipated the “how is this legal?” question. They published FAQs stating that because of parody exceptions to copyright and trademark law adding the word ‘dumb” meant that they were technically “making fun” of Starbucks. The shop said that by doing this, it allowed them to use the Starbucks trademark under a law known as “fair use.” The FAQ defined fair use as a legal doctrine that permits use of copyrighted or trademarked material in a parody without permission from the rights holder.

Although the shop was a fully functioning coffee shop, the FAQ stated “that for legal reasons Dumb Starbucks needs to be categorized as a work of parody art. So, in the eyes of the law, our ‘coffee shop’ is actually an art gallery and the ‘coffee’ you’re buying is considered the art”.

This legal explanation caused a bit of a kerfuffle for a short time until it became apparent that the FAQ was as fake as the store.

That legal explanation was a nice try, but conveniently overlooked some things. Such as the fact that fair use exceptions like parody rely on a fairness test and are not absolute. And the fact that the basic purpose of adding “Dumb” to the Starbucks brands was to trade on the goodwill Starbucks has earned for their brands.

Parody and satire have existed as fair use exceptions to copyright and trademark law in the United States for some time. They were added to Canadian copyright law in 2012. The Canadian Copyright Act states that fair dealing (as it is called in Canada) for the purpose of research, private study, education, parody or satire does not infringe copyright.

To determine whether fair use or dealing is indeed fair, the courts look at criteria such as its purpose; its character; the amount; available alternatives; the nature of the work; and the effect of the use on the original work. In other words, was it a reasonable thing to do, how necessary was it, and might it hurt the copyright owner?

This turned out to be a short-lived publicity stunt, but if anyone actually thinks they can trade on the goodwill of another’s brand by simply adding “dumb” to the name to turn it into a parody or satire they are just, well, dumb.

Copyright process a complex action

For the London Free Press – February 24, 2014

Read this at

In December 2013, the Supreme Court of Canada confirmed that copyright applies to protect how an idea was expressed in a story, but not the idea behind the story.

The case of Cinar v. Robinson dealt with an author’s claim that a Cinar television show was so similar to an idea he pitched to them previously that it breached his copyright. The court agreed.

Claude Robinson “spent years developing an educational children’s television show, The Adventures of Robinson Curiosity (… Robinson) drew his inspiration (for this project) from Daniel Defoe’s novel Robinson Crusoe, as well as from his own life experiences.”

During the mid-1980s, Robinson and his company, Les Productions Nilem Inc., pitched the idea of his television show to Cinar Corporation.

Several years later, Robinson happened to watch a television show entitled Robinson Sucroe, a show that appeared to copy several aspects of his creation The Adventures of Robinson Curiosity — the show he had pitched years earlier to Cinar.

Upon further investigation, Robinson “discovered that several parties who had been given access to his Curiosity project . . . were also involved in the production of” the show that actually made it to television.

Robinson launched a copyright infringement case against the individuals behind the production of the show that made it to television.

The court had to determine what constituted part of the public domain, versus the property of an individual that attracts copyright protection. Both shows were, after all, modelled after the novel Robinson Crusoe. The Supreme Court agreed with the trial judge decision that there was an infringement by Cinar and other related parties upon Robinson’s work.

This decision was based on the similarity of the distinct visual appearance and personalities of the characters. Their appearance and personalities were the product of Robinson’s skill and judgment. The court also felt that particular visual elements of the island were conceived by Robinson and copied by Cinar.

The test to determine if copyright has been breached is whether the defendant copied a substantial amount of the author’s work. The Supreme Court stated that “a qualitative and holistic approach must be adopted (in determining whether someone’s idea was stolen). In order to determine whether a substantial part of Robinson’s work was copied, the features that were copied by Cinar appellants must be considered cumulatively, in the context of Robinson’s work taken as a whole.”

In other words, the test for infringement (at least for written works) is not to tear the work apart and compare only the original elements.

The court awarded damages, punitive damages and costs totalling more than $2 million. But given the complexity and time involved in seeing this copyright action through to the Supreme Court of Canada, it has been suggested that Robinson is still behind financially.


You must get permission to use photos for commercial purposes

For the London Free Press – May 27, 2013 – Read this at

It’s easy to copy video clips, music and photos from the Internet and use them on your own Website or ads. But we don’t have the legal right to copy and use published content for commercial purposes without the owner’s permission.

The use of video, music and images can be a powerful tool. But we can’t forget that someone created them, and we can’t use them for commercial purposes without the copyright holder’s consent.

Using such material without permission can result in an expensive copyright fight, and merely stopping to use it after a demand won’t end a damage claim. Copyright is one of the rare instances where the owner doesn’t have to prove actual damages. Using one photograph found on the net for a commercial purpose can result in a damage award of thousands of dollars.

So how can this risk be avoided?

If you hire someone to create an image or video, get either a copyright assignment or permission in writing.

If you found the image somewhere, make sure you have permission to use it.

There are many sources on the Internet that offer photos and other material for our use based on an express license. Depending on the source, prices range from free to expensive.

Licence rights vary widely, though, and must be read carefully. There may be restrictions on how the image can be used, what it can be used for, how many times it can be used or the size or resolution. For example, it’s possible to have rights to use a photo in print, but not on the Web. Sometimes images can be used for personal or editorial use, but not for commercial use.

Consider not only what you want to use the image for now, but what you might want to do with it in the future. It’s not unusual for people to get into trouble when they acquire the rights to use an image for their Website and later decide to use it in a brochure. But they forget that when they bought the rights in the first place, they paid only for the Web rights.

iStockphoto is an example of a popular image source. iStockphoto’s licences that apply to most of their images are detailed on their website at .

iStockphoto’s standard licence includes rights such as print ads, the Web, video, book covers and stationery. That would include use on things such as letterhead, business cards and general promotional material. Standard rights do not, however, include the right to re-sell the image or to use the image as part of a logo or trademark.

Ultimately, think before you click. Before you copy an image found on the Internet, obtain whatever permission you may need to use it for your own purposes. This additional step — though more time-consuming than a simple point and click — may save you a tremendous amount of grief, embarrassment, cost and time. Your future self will thank you. 


Cloud storage, privacy, and Megaupload

Today’s Slaw post:

The ongoing Megaupload case is a controversial lightning rod case for issues on cloud storage, privacy and copyright.  Megaupload basically ran a file storage and viewing service.  The US Department of justice shut them down, seized assets, and launched criminal prosecutions alleging that it is an organization dedicated to copyright infringement. 

Ben Schorr mentioned the case on Slaw recently, starting with the comment that “One thing has become clear in the last few months: Hollywood has declared war on the Internet.”  

Wikipedia summarizes the situation well, and points out that:

Techdirt argued that while the founder of Megaupload had a significant history of “flouting the law”, evidence had potentially been taken out of context or misrepresented and could “come back to haunt other online services who are providing perfectly legitimate services”.[81] Eric Goldman, a professor of law at Santa Clara University, described the Megaupload case as “a depressing display of abuse of government authority”. He pointed out that criminal copyright infringement requires that willful infringement has taken place, and that taking Megaupload offline had produced the “deeply unconstitutional effect” of denying legitimate users access to their data.[5]

Concerns include the arbitrary way the site was shut down, leaving the files of legitimate users stranded.  Also the possible over-reaching effect on legitimate cloud storage sites and file sharing.

The fight has come to Canada as well.  US prosecutors asked the Canadian AG to obtain a court order to send mirror imaged copies of 32 servers in Canada to US prosecutors.  The Ontario Superior Court of Justice refused to give the order based on the notion that the request was overly broad, and encouraged counsel to try to agree on the scope of material that would be relevant.

I find it interesting that the same Department of Justice that has been unrelenting and perhaps over reaching in the Megaupload case, is, according the the CIO blog:

giving a qualified endorsement of an update to a 1986 privacy law that leading cloud-service providers, public-interest groups and others argue is woefully out of step with the current methods of sending and storing communications.

In testimony before a House subcommittee on Tuesday, Elana Tyrangiel, acting assistant attorney general at the DoJ’s Office of Legal Policy, affirmed the Obama administration’s support for an overhaul of the Electronic Communications Privacy Act (ECPA) to provide stronger privacy protections for Webmail, documents stored online and other cloud services.

Cloud storage can be a useful tool – but be careful what you put there, use services with a good reputation, and keep duplicates elsewhere.  If your data is sensitive, consider your own encryption so no one else can see the contents.

New law accepts everyday activities

For the London Free Press – November 26, 2012

Read this on Canoe

You’re no longer breaking the law when you use your PVR to record your favourite TV show for later viewing.

Teachers are no longer infringing copyright when they print publicly available materials from the Internet to share with students.

Comedians are no longer violating the Copyright Act when they create a parody of a topical song or movie.

The much-anticipated, long-awaited Bill C-11 — Copyright Modernization Act — has finally become law in Canada. Though some aspects of the new act are controversial, the changes are for the most part welcome and long overdue.

The new act addresses everyday digital activities and legitimizes many of them under our copyright laws. The legislation aims to strike a balance between the interests of the creators of copyright and the rights of users.

Copyright protection is vital to the promotion of innovation. But at the same time, there are other interests best served by allowing users access to copyrighted material.

Chief among the important changes to Canada’s copyright regime is the expanded definition of “fair dealing.” Previously, the exception for “fair dealing” was limited to research, private study, news reporting, criticism and review. Now, fair dealing also includes reproduction of copyrighted materials for education, parody and satire purposes.

The new law also distinguishes between commercial and non-commercial copyright infringement. Statutory damages for non-commercial infringement are now smaller than for commercial infringement — capped at $20,000 for each infringed work for commercial purposes and $5,000 for all infringed works for non-­commercial purposes.

Of course copyright owners can still sue for actual damages that they can prove, but in many non-commercial situations, it may be hard to show actual damages exceeding the purchase price of the work.

Some of the controversy the bill generated has been the result of the digital lock provisions. It is illegal to break digital locks in most situations. A digital lock is put on content by the provider to prevent copying. It might, for example, stop you from copying a DVD or CD. That is despite the fact that the law gives consumers the explicit right to do things such as format shift a CD to a memory stick to play it on another device owned by the consumer. The digital lock rule essentially allows the publisher to take away some rights that the legislation grants.

All of the consumer-oriented provisions have come into force. These include the expansion of the fair dealing concept, the limit to statutory damages for non-commercial infringement and the exception for publicly available electronic materials used by educational institutions in non-commercial settings.

Provisions still to come include rules requiring Internet service provider to forward notices to subscribers accused of violating copyright. The ISP also has to maintain a detailed record of the notification in case court proceedings follow.

Court quashes double-dipping fees on music, books

For the London Free Press – August 13, 2012

Read this on Canoe

Consumers can breathe a small sigh of relief. The Supreme Court of Canada recently released judgments on five different cases involving copyright collectives — known as the “Copyright Pentalogy” — which heralded a victory for Canadian consumers. Copyright collectives collect licence fees on behalf of creators of materials such as music and books.

The court quashed a plan that would have authorized the collection of additional royalties on music downloaded through legitimate services, on the theory that buying a song by downloading it is essentially the same as buying it in a store. The court also ruled against fees being placed on song previews that we can listen to on sites like iTunes before we buy. The court held that this is research and falls within a fair-dealing exception of the Copyright Act.

Canada’s video gamers and movie watchers can also claim victory. The collectives sought to collect additional royalties for music used in video games and movies. However, the court held that this would amount to a “double-dipping” and that additional royalties would not apply.

Schools also participated in the good news. Ruling against the proposal to collect royalties on photocopies for educational purposes, the court held that the educational use of photocopies is research, and thus fell within a fair dealing exception in the Copyright Act. The court held that it did not matter whether the copying was done by a teacher or a student. There are limits, however. It would not be considered fair dealing, for example, to copy an entire textbook.

These decisions were mainly centred on the common theme of fair dealing. The concept of fair dealing has existed in the Copyright Act for quite some time. The Canadian concept of fair dealing has allowed users to engage in certain activities relating to research, private study, criticism, review, or news reporting. These recent court decisions, and some others over the past few years, have expanded the practical application of fair dealing, which must be given a “large and liberal interpretation in order to ensure that users’ rights are not unduly constrained.”

In addition to broadening the right of fair dealing, the court also broadened the approach by deciding that the relevant perspective when considering the purpose of the dealing is the user.

Hot on the heels of these cases is Bill C-11, coming into force some time in the next few months, which further expands the concept of fair dealing by adding education, parody, and satire to the fair dealing list. 



Court protects hyperlink activity on Internet

For the London Free Press – July 23, 2012 – Read this on Canoe

Hyperlinks form the basis of the way we use the Internet – ranging from Facebook to Twitter to blogs to email. But can linking to content that might be defamatory be itself defamatory? Can linking to copyrighted material be a copyright violation? Fortunately, the courts have said mere links to such content are not.

A recent Federal Court decision dealt with a link to copyrighted material. Warman and National Post vs. Fournier stemmed from Fournier posting portions of articles and a link to a photograph.

Regarding the photograph, the court found that the work was posted on the applicant’s personal website and thus the communication of the work occurred by creating a link to the applicant’s own website.

The work remained within the applicant’s full control and if the author did not wish it to be communicated by telecommunication, he could remove it from his website, as he eventually did. Thus, the applicant authorized communication of the work by posting it on his website and therefore there was no infringement. In other words, a link to the photograph is not copying the photograph.

The copyright claim for posting an article was based on the reposting of 3 1/2 paragraphs of an 11-paragraph article.

Reposting portions of articles within a commentary or reporting context is very common. The court concluded that this amount of copying was not a “substantial part” of the work and therefore there was no infringement.

The court added that even if it was a “substantial part,” the reproduction of the work was covered by fair dealing for the purposes of new reporting, as outlined in the Copyright Act.

The Federal Court cited a 2004 Supreme Court of Canada decision that explained fair dealing as an integral part of the copyright regime and a user’s right.

Fair dealing “must be given a large and liberal interpretation in order to ensure that users’ rights are not unduly constrained.”

That case is consistent with the 2011 Supreme Court of Canada decision in Crookes vs. Newton, where the applicant’s defamation claim was based on two links created by the respondent that connected to defamatory material. The argument was that by using those hyperlinks, the respondent was publishing the defamatory material.

The court ruled that hyperlinks are fundamentally different from other acts of “publication.” Inserting a link gives the author no control over the content in the article to which he or she has linked.

The court stated that a hyperlink, by itself, should never be seen as “publication” of the content to which it refers. When a person follows a link to a source containing defamatory words, the actual creator or poster of the defamatory words in the secondary material is the person who is publishing the libel.

The court concluded that applying traditional defamation rules to hyperlinkers would seriously restrict the flow of information on the Internet and, as a result, freedom of expression.

In both of these decisions the court applied a liberal interpretation in order to ensure users’ rights are not unduly constrained, recognizing the unique nature of Internet linking.

Another decision that linking is, well, just linking

Today’s Slaw post:

In a decision dated June 21, 2012, the Federal Court made it clear that, for purposes of copyright, using a hyperlink is not copying the material it points to. That seems obvious, but its nice to see it recognized by the courts. The  Warman and National Post v Fournier  decision also said that – at least in the circumstances of the case at bar – reproducing 1/4 of an original article was not a substantial part for copyright purposes, and was thus not a copyright violation.

This follows a Supreme Court of Canada decision last fall that said that a hyperlink to defamatory material is not in itself defamatory.