law society of canada: copyright year in review (2008)

8/14/2019 Law Society of Canada: Copyright Year in Review (2008)

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Law Society of Upper Canada:13th Annual Intellectual Property Law The Year in Review

Barry B. Sookman

January 15 2009

[email protected]

3715166

Update on Copyrights 2009


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Canadian Decisions


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Apple Canada Inc. v. Canadian PrivateCopying Collective. 2008 FCA 9 (FCA)

Copying Music onto Devices not Part ofPrivate Copying Regime

Apple. Dell, Microsoft, Sandisk, and Sonysought judicial review of the CopyrightBoards dismissal of their motions to

prevent the tariff proposed by CPCC ondigital audio recorders (DARs) frombeing considered.

The Court held the decision in CanadianPrivate Copying Collective v. CanadianStorage Media Alliance [2005] 2 F.C.R.654 was binding and that the CopyrightBoard does not have jurisdiction tocertify a tariff on DARs or on thememory permanently embedded therein.

Implications of decision?

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Canadian Wireless Telecommunications Association v.Society of Composers, Authors and Music Publishers ofCanada 2008 FCA 6

Whether a transmission of a ringtone to a cell phone as

part of a purchase and sale transaction is a (1)communication that is (2) to the public.

(1) Are the transmissions of downloads of filescommunications?

The FCA held that the meaning of the wordcommunication is the same as the word transmission. Itheld that a communication should be understood toinclude transmissions of content delivered only for later

use.

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The word communication connotes the passingof information from one person to another. A musicalringtone is information in the form of a digital audio filethat is capable of being communicated. The normal modeof communicating a digital audio file is to transmit it. The wireless transmission of a musicalringtone to a cellphone is a communication, whether the owner of the cellphone accesses itimmediately in order to hear the music, or at some later time. The fact that the technology used

for the transmission does not permit the cellphone owner to listen to the music during thetransmission does not mean that there is no communication. In my view, in the context of awireless transmission, it is the receipt of the transmission that completes the communication.

Communications are not limited to broadcasts and similar ephemeral transmissions that can beperceived when transmitted.


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Canadian Wireless Telecommunications Association v.Society of Composers, Authors and Music Publishers ofCanada 2008 FCA 6

(2) Are the transmissions of copies as part of a sale transactionto the public

it seems to me that in determining whether paragraph 3(1)(f) applies to thetransmission of a musical work in the form of a digital audio file, it is not enough to askwhether there is a one-to-one communication, or a one-to-one communicationrequested by the recipient. The answer to either of those questions would notnecessarily be determinative because a series of transmissions of the same musicalwork to numerous different recipients may be a communication to the public if the

recipients comprise the public, or a significant segment of the public. In my view, the conclusion of the Copyright Board that the transmissions in issue in

this case are within the scope of paragraph 3(1)(f) of the Copyright Act is consistentwith the language of that provision and its context. It also accords with common sense.If a wireless carrier were to transmit a particular ringtone simultaneously to allcustomers who have requested it, that transmission would be a communication to thepublic. It would be illogical to reach a different result simply because the transmissionsare done one by one, and thus at different times.

Is this decision consistent with the Cablevision case?

Implications for Internet transmissions of music and Tariff 22?

Why was leave to the Supreme Court denied?

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SOCAN-Tariff 22B-G, Decision of theCopyright Board dated October 25, 2008

Real and Substantial Connection Test The Copyright Board applied the real and substantial

connection test in determining the royalties payablein respect of the communication of music to thepublic from various web sites.

The Board held that all traffic to a Canadian radio orTV site involves a communication to the public inCanada. However, the Board held that certainCanadian sites could remove from their rate base95% of visits from outside of Canada, suggestingthat for non-radio or TV sites only 5% of visits fromforeign sites have a real and substantial connectionto Canada.

The Board also permitted non-Canadian sites toremove all non-Canadian visits, thus suggesting that100% of all Canadian visits to foreign websites wouldhave a real and substantial connection to Canada andbe communications covered by the Act.

Is the decision correct?

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SOCAN-Tariff 22B-G, Decision of theCopyright Board dated October 25, 2008

Secondary Liability for Infringement The Board declined to set royalties for uses of music on social networking

and UGC sites.

The Board suggested that the operators of these sites may be jointly andseverally liable with users for the communications to the public ofmusical works from such sites.

Second, given the absence of any reliable evidence on which to baseour decision, any tariff we would have set would have been de minimis,so as to avoid as much as possible the deleterious effects of seeking aplethora of minimum payments for a myriad of very modest uses. Theeffects could be all the more important if, because of joint and severalliability in the communication of music, thousands of individuals who are

active on the social networking or video sharing sites were deemedindividually responsible for minimal payments. We refuse to certify atariff that could potentially have such a broad scope without the properevidence.

What will the Court of Appeal do in the judicial review?

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Ghanotakis c. Expertises Didactiques Lyons Inc.[2007] QCCA 1866

Originality

The respondents designed a series of educational boardgames for children and hired the appellant to providemarketing services for their products. The games containedcontent for different levels of difficulty, corresponding todifferent recommended ages of the users.

As part of his work, the appellant split up the games intoseveral modules, one for each difficulty level, so that theycould be purchased separately. The appellant claimedcopyright in the repackaged games.

The Court of Appeal affirmed the trial decision that themechanical acts of breaking up games to sell them inseparate parts for marketing purposes did not create anoriginal adaptation that was subject to copyright.

The Chief Justice of Canada, on the basis of a former Courtof the Exchequer, writes:

For a compilation under the law, there is a need for morethan a simple mechanical operation. He needed to borrow aphrase often used in case law, there is a spark of creativity."


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Mdias Transcontinental s.e.n.c. c.Soumissoinnez.com Inc. [2008] QCCS 1772

Compilations on Website are Protected by Copyright

it is reasonable to consider that a website is both a work as a wholeand the consolidation of a multitude separate works. In addition, awebsite, like any compilation composed of ideas and data from thepublic domain, may be the protection of the Copyright Act.

The compilation of tender and other information

on the website of the SAO is made through theexercise of skill and discretion of the groupresearch Constructo. In the opinion of the Court,this compilation is a "work" under the [CopyrightAct], regardless of ownership of such tenders.

Online Webwrap Terms Enforced

By accessing the website SAO it isdeemedto have accepted the conditions of accessandisnot allowed sell, publish or reproduce extractsimportant pages of the site.


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Mdias Transcontinental s.e.n.c. c.Soumissoinnez.com Inc. [2008] QCCS 1772

Test for Granting Permanent InformationIn R. v. James Lorimer and Co. Ltd., J. Mahoney of the Court of Appeals wrote:

"The Act [Act copyright] is clear. Infringement does not require that theinfringing work compete in the marketplace with that infringed; it requires onlythat the infringer do something that the copyright owner alone has the right todo. It follows that, where infringement of copyright has been established, the

owner of the copyright is prima facie entitled to an injunction restrainingfurther infringement. [...] The onus is on the infringer to establish groundsupon which the Court may properly exercise its discretion against grantingsuch relief. Those grounds must lie in the conduct of the copyright owner, notin the conduct or motives of the infringer. The fact that the copyright ownerhas suffered no damages as a result of the infringement is not a basis forrefusing an injunction. "

In this case, it was for the defendant to establish why the Court shouldexercise its discretion to refuse the application for injunction, but it did not.

Is this test correct?

Note: All translations into English performed using Google.


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Canwest Mediaworks Publications Inc. v.Horizon Publications Ltd.2008 BCSC 1609

Fair Dealing Does Not Include Parody

The defendants distributed and printed aparody version of the Vancouver Sun andwere sued for copyright infringement byCanwest, which owns and operates the Sun.

The court held that neither parody nor theCharter(freedom of expression) aredefenses to infringement under the Actfollowing the decision in CompagnieGnrale des Etablissements Michelin Michelin & Cie v. National Automobile

Aerospace, Transportation and GnraleWorkers Union of Canada (CAW Canada)(1996) 71 C.P.R. (3d) 348


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Hong Everest Corp. v. Hqart Corp. [2008] O.J.No. 2456

Granting of Interlocutory Injunctions

Hong Everest sought an order restraining defendant Hqart(the principal employee of which used to work for Hong)from offering for sale or marketing products using HongEverests designs, pricelists or catalogues.

The motion was denied for failure to satisfy the irreparableharm and balance of convenience prongs of the

requirements for obtaining an injunction laid down in R.J.R.MacDonald Inc. v. Canada (Attorney General) [1994] 1S.C.R. 311

First, the plaintiffs substantial loss of market share to thedefendants did not constitute irreparable harm that couldbe compensated by way of damages or permanentinjunction at trial.

Second, the inconvenience suffered by the defendantsshould an injunction be granted would be at least as greatas suffered by the plaintiffs should the injunction berefused

Was the motion rightly decided?


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Don Hammond Photography Ltd. v. TheConsignment Studio Inc. [2008] ABPC 9

Statutory DamagesThe defendants had agree to pay the plaintiff $1,431 for the commissionof five photographs, an amount which they did not pay.

The plaintiff elected for statutory damages. S.38.1(1) of the CopyrightActprovides that statutory damages should be assessed at no less than$500 and no more than $20,000 per work infringed.

However, s.38.1(3) provides that if an award pursuant to s.38.1(1) isgrossly out of proportion to the infringement, the court may award anamount lower than $500 per work.

Justice Ingram ruled that the minimum statutory damage award of$2,500 in this case would be grossly out of proportion to the damageincurred and reduced the award to $500 for all five works pursuant tos.38.1(3), plus costs to the unrepresented plaintiff.


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Louis Vuitton Malletier S.A. v. 486353 B.C. Ltd. etal. 2008 BCSC 799

Statutory Damages and Punative Damages

Defendants were found to infringe both trade-marksand copyrights of Louis Vuitton.

For damages under copyright, the Court awarded themaximum statutory damages of $20,000 per work.

Factors leading to this high damage award included that

the defendants acted wilfully and knowingly in violationof the plaintiffs rights, that neither the service of theAnton Pillar order or the seizure of hundreds of articlesdeterred the defendants from continuing infringingconduct, that the defendants ignored the issuance of acease & desist letter and that the defendants attemptedto evade service, ignored production orders and failed

to appear at several court dates.Based on the above, the Court also awarded punitiveand exemplary damages against the defendants. A sumof $100,000 was awarded jointly and severally againstthe defendant corporation and two employees, and asum of $200,000 was awarded against the principal ofthe enterprise.


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Foreign Decisions


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Twentieth Century Fox Film Corp. v. CablevisionSystems Corp., 536 F.3d. 121 (2nd. Cir. 2008)

This case implicates the right to reproducethe copyrighted work in copies, and the rightto perform the copyrighted work publicly. 17U.S.C. 106(1), (4). As discussed above, thedistrict court found that Cablevision infringedthe first right by 1) buffering the data from itsprogramming stream and 2) copying content

onto the Arroyo Server hard disks to enableplayback of a program requested by an RS-DVR customer. In addition, the district courtfound that Cablevision would infringe thepublic performance right by transmitting aprogram to an RS-DVR customer in response

to that customers playback request.

The Court reversed the district court.


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Does Transitory Copying of information in a Buffer Infringe the Reproduction Right?

It is undisputed that Cablevision, not any customer or other entity, takes the content from onestream of programming, after the split, and stores it, one small piece at a time, in the BMRbuffer and the primaryingest buffer. As a result, the information is bufferedbefore any customer requests a recording, and wouldbe buffered even if no such request were made. Thequestion is whether, by buffering the data that make

up a given work, Cablevision reproduce[s] that workin copies, 17 U.S.C. 10 106(1), and therebyinfringes the copyright holders reproduction right.

Copies, as defined in the Copyright Act, are materialobjects...in which a work is fixed by any method...andfrom which the work can be...reproduced. Id. 101. TheAct also provides that a work is fixed in a tangible mediumof expression when its embodiment...is sufficiently

permanent or stable to permit it to be...reproduced...fora period of more than transitory duration.

We believe that this language plainly imposes two distinct but related requirements: the workmust be embodied in a medium, i.e., placed in a medium such that it can be perceived,reproduced, etc., from that medium (the embodiment requirement), and it must remain thusembodied for a period of more than transitory duration (the duration requirement).


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The Embodiment Requirement

Cablevision does not seriously dispute that copyrighted works areembodied in the buffer. Data in the BMR buffer can be reformatted andtransmitted to the other components of the RS-DVR system. Data in theprimary ingest buffer can be copied onto the Arroyo hard disks if a userhas requested a recording of that data. Thus, a works embodiment ineither buffer is sufficiently permanent or stable to permit it to beperceived, reproduced, (as in the case of the ingest buffer) or otherwisecommunicated (as in the BMR buffer). 17 U.S.C. 101. The result mightbe different if only a single second of a much longer work was placed inthe buffer in isolation. In such a situation, it might be reasonable toconclude that only a minuscule portion of a work, rather than a workwas embodied in the buffer. Here, however, where every second of an

entire work is placed, one second at a time, in the buffer, we conclude thatthe work is embodied in the buffer.

Is this consistent with the Warnerand Football Association cases?


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Who Is Liable for Creating Playback Copies?

When there is a dispute as to the author of an allegedly infringing instance ofreproduction, Netcom and its progeny direct our attention to the volitionalconduct that causes the copy to be made. There are only two instances ofvolitional conduct in this case: Cablevisions conduct in designing, housing, andmaintaining a system that exists only to produce a copy, and a customersconduct in ordering that system to produce a copy of a specific program. In the

case of a VCR, it seems clearand we know of no case holding otherwisethatthe operator of the VCR, the person who actually presses the button to make therecording, supplies the necessary element of volition, not the person whomanufactures, maintains, or, if distinct from the operator, owns the machine.We do not believe that an RS-DVR customer is sufficiently distinguishable from aVCR user to impose liability as a direct infringer on a different party for copiesthat are made automatically upon that customers command.

Here, by selling access to a system that automatically produces copies oncommand, Cablevision more closely resembles a store proprietor who chargescustomers to use a photocopier on his premises, and it seems incorrect to say,without more, that such a proprietor makes any copies when his machines areactually operated by his customers. See Netcom, 907 F. Supp. at 1369.(Emphasis added)


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Transmission of RS-DVR Playback Is it to the public?

In sum, none of the arguments advanced by plaintiffs or the district courtalters our conclusion that, under the transmit clause, we must examine thepotential audience of a given transmission by an alleged infringer todetermine whether that transmission is to the public. And because the RS-DVR system, as designed, only makes transmissions to one subscriber usinga copy made by that subscriber, we believe that the universe of peoplecapable of receiving an RS-DVR transmission is the single subscriber whoseself-made copy is used to create that transmission.

it seems quite consistent with the Act to treat a transmission made usingCopy A as distinct from one made using Copy B, just as we would treat atransmission made by Cablevision as distinct from an otherwise identical

transmission made by Comcast. Both factorsthe identity of the transmitterand the source material of the transmissionlimit the potential audience of atransmission in this case and are therefore germane in determining whetherthat transmission is made to the public.

Will certbe granted?


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Jacobsen v. Katzer535 F.3d 1373 (Fed. Cir.2008)

Whether terms of use in the Artistic Open Source

license are mere covenants for which a violation

is breach of contract or conditions for which a

violation is copyright infringement.

Jacobsen had developed model railroad designsoftware. He made it available for public downloadfree of charge, under the "Artistic License.

The licence permits users to copy, modify or distributethe licensed content provided that they restate theattribution information found in the software, repeatall copyright notices and document any modificationsmade to the software from its original form.

Jacobsen alleged that Katzer downloaded his code,

included it in his competing software program andfailed to comply with the terms of the Artistic License.

He sued Katzer for copyright infringement and soughta preliminary injunction.


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Open Source Licensing is PopularOpen source licensing has become a widely used method of creativecollaboration that serves to advance the arts and sciences in a manner andat a pace that few could have imagined just a few decades ago. Forexample, the Massachusetts Institute of Technology (AMIT@) uses aCreative Commons public license for an OpenCourseWare project that

licenses all 1800 MIT courses. Other public licenses support the GNU/Linuxoperating system, the Perl programming language, the Apache web serverprograms, the Firefox web browser, and a collaborative web-basedencyclopedia called Wikipedia. Creative Commons notes that, by someestimates, there are close to 100,000,000 works licensed under variousCreative Commons licenses. The Wikimedia Foundation, another of the amici

curiae, estimates that the Wikipedia website has more than 75,000 activecontributors working on some 9,000,000 articles in more than 250languages.


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The Artistic License grants users the right to copy, modify, and

distribute the software provided that [the user] insert a prominentnotice in each changed file stating how and when [the user] changedthat file, and provided that [the user] do at least ONE of the following:

a) place [the users] modifications in the Public Domain or otherwisemake them Freely Available, such as by posting said modificationsto Usenet or an equivalent medium, or placing the modifications on

a major archive site such as ftp.uu.net, or by allowing theCopyright Holder to include [the user=s] modifications in theStandard Version of the Package.

b) use the modified Package only within [the user=s] corporation ororganization.

c) rename any non-standard executables so the names do not conflictwith the standard executables, which must also be provided, andprovide a separate manual page for each nonstandard executablethat clearly documents how it differs from the Standard Version, or

d) make other distribution arrangements with the Copyright Holder.


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The Artistic License states on its face that the document creates

conditions: The intent of this document is to state the conditions underwhich a Package may be copied. The Artistic License also uses thetraditional language of conditions by noting that the rights to copy, modify,and distribute are granted provided that the conditions are met.

The clear language of the Artistic License creates conditions to protect theeconomic rights at issue in the granting of a public license. These

conditions govern the rights to modify and distribute the computerprograms and files included in the downloadable software package. Theattribution and modification transparency requirements directly serve todrive traffic to the open source incubation page and to inform downstreamusers of the project, which is a significant economic goal of the copyrightholder that the law will enforce. Through this controlled spread ofinformation, the copyright holder gains creative collaborators to the opensource project; by requiring that changes made by downstream users bevisible to the copyright holder and others, the copyright holder learnsabout the uses for his software and gains others knowledge that can beused to advance future software releases.


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Copyright holders who engage in open source licensing have the

right to control the modification and distribution of copyrighted

material. As the Second Circuit explained in Gilliam v. ABC, 538 F.2d14, 21 (2d Cir. 1976), the unauthorized editing of the underlying work,if proven, would constitute an infringement of the copyright in that worksimilar to any other use of a work that exceeded the license granted bythe proprietor of the copyright. Copyright licenses are designed tosupport the right to exclude; money damages alone do not support orenforce that right. The choice to exact consideration in the form ofcompliance with the open source requirements of disclosure andexplanation of changes, rather than as a dollar-denominated fee, isentitled to no less legal recognition. Indeed, because a calculation ofdamages is inherently speculative, these types of license restrictionsmight well be rendered meaningless absent the ability to enforce throughinjunctive relief.


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Test for Preliminary Injunction

In determining whether to issue a preliminary injunction, the Ninth Circuitrequires demonstration of (1) a combination of probability of success on themerits and the possibility of irreparable harm; or (2) serious questions going tothe merits where the balance of hardships tips sharply in the moving partysfavor. Perfect 10, Inc. v. Amazon.com, Inc., 487 F.3d 701, 713-14 (9th Cir. 2007) In cases involving copyright claims, where a copyright holder has shown

likelihood of success on the merits of a copyright infringement claim, the NinthCircuit has held that irreparable harm is presumed But see MGM Studios, Inc. v.Grokster, Ltd., 518 F. Supp. 2d 1197, 1212 (C.D. Cal. 2007) (noting that thelongstanding rule that irreparable harm can be a presumed after a showing oflikelihood of success for purposes of a copyright preliminary injunction motionmay itself have to be reevaluated in light of eBay [Inc. v. MercExchange, L.L.C.,

547 U.S. 388 (2006)]). Thus, for a preliminary injunction to issue, Jacobsenmust either show (1) a likelihood of success on the merits of his copyrightinfringement claim from which irreparable harm is presumed; or (2) a fair chanceof success on the merits and a clear disparity in the relative hardships that tipssharply in his favor.


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Nine Network Australia Pty Ltd v. IceTV Pty Ltd.[2007] FCA 1172

The main issue in the appeal is whether the primary Judge correctly rejected the

claim by the appellant (Nine) that the respondents (Ice) had infringed Ninescopyright in its television program schedules, the Weekly Schedules in producingits subscription-based electronic program guide (EPG) for television calledIceGuide.

The time and title information incorporated into the Weekly Schedules reflected agreat deal of skill and labour... Ice, to the extent it reproduced time and titleinformation from the Weekly Schedules, appropriated the skill and labour used by

Nine to create the Weekly Schedules. Contrary to her Honours conclusion, the skilland labour in selecting and arranging programming should not be regarded asseparate and discrete from the extremely modest skill and labour involved insetting down on paper the programs already selected and presenting them in theform of the Weekly Schedules. The skill and labour expended by Nine were part of asingle process leading to the creation of the copyright work as the written record ofNines programming decisions and the associated program information.

What will the High Court of Australia do on appeal?

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Football Association Premier League Ltd v QC


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Football Association Premier League Ltd v. QCLeisure Ltd. [2008] EWHC 1411 (Ch)

These actions concern the use of foreign decoder cards in theUK to access foreign transmissions of live Premier Leaguefootball matches.

The claimants complain that the dealing in and use of suchcards in the UK involves an infringement of their rights unders.298 of the UK CDPA and of the copyrights in various artisticand musical works, films and sound recordings embodied inthe Premier League match coverage.

Two of the actions are brought against suppliers of equipment

and satellite decoder cards to pubs and bars, which enablethe reception of non-Sky satellite channels (including NOVA orART channels) that carry live Premier League matches.

The third action (the Madden action) is against licensees oroperators of four pubs that have shown live Premier Leaguematches broadcast on ART channels. The claims contend theMadden defendants have infringed their copyrights by

creating buffer copies of the works in the internaloperation of the satellite decoder

by displaying the works on screen

by communicating the works to the public in pubs

by authorising pubs (the Madden defendants) and usersto whom they have supplied decoder cards.

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Football Association Premier League Ltd v.QC Leisure Ltd. [2008] EWHC 1411 (Ch)

Creating copies of the works in the internal operation of the satellite decoder

It is clear that fragments of the various film works, the musical work and the sound recordingare stored sequentially in the decoder. The question is whether such fragments individuallyamount to a substantial part of the copyright work and, if not, whether they should beconsidered collectively.

This dispute gives rise to two questions which are, at least to some extent, interlinked: first,does a fragment consisting of four frames of a video stream amount to a substantial part?Second, in considering whether a substantial part has been copied, does one consider whetherthe material in existence at any one point in time is a substantial part, or does one considerthe whole volume of material which is progressively created and then destroyed?

As to the first question, I have reached the conclusion that four frames do not constitute asubstantial part of the film works. They occupy a fraction of a second and there is nosuggestion that they have any inherent value other than as part of the whole.

This brings me to the next question which is whether it is appropriate to consider thefragments on a cumulative or rolling basis... In my judgment it is simply not possible to fitsuch a situation into the language of the statute. It is a restricted act to make a transient copyof a substantial part of the work. In other words, the substantial part must be embodied in thetransient copy, not a series of different transient copies which are stored one after the other inthe decoder box. (Emphasis added)

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Football Association Premier League Ltd v.QC Leisure Ltd. [2008] EWHC 1411 (Ch)

Infringement by displaying works on a screen

I have to say that I entertain some doubt as to whether thosewho framed the CDPA ever contemplated that displaying animage on a television screen amounts to copying... However...despite my reservations, I have reached the conclusion that it isindeed this broad... I am confirmed in this view by the decisionof Aldous J in Bookmakers Afternoon Greyhound Services v WilfGilbert (Staffordshire) Ltd[1994] FSR 723... which, like the

CDPA, restricted "reproducing the work in any material form".Aldous J held that the defendants infringed the copyrightsubsisting in race cards by showing them on television monitorsin their shops. This, he found, involved reproducing them in amaterial form. In my judgment the position under the CDPA isno different...

As to whether the whole or a substantial part of the film works

are reproduced, the claimants position is no stronger than forthe decoder.

But the position in relation to the artistic works (the variousgraphics, devices and logos) is different. I accept that these arereproduced in full within one frame of the broadcast signal in thedecoder and as seen on the television.

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Infringement by communicating matches to the public

in pubs.

The claimants... submit the publicans are communicatingthe copyright works to the public in two ways:rebroadcasting from the pub's satellite dish to the public bararea and by displaying the visual works on the pub'stelevision screens and the playing of the audio worksthrough the television's speakers.

Have the publicans communicated the copyright works tomembers of the public not present at the origin of thosecommunications? They have plainly displayed them andplayed them to members of the public...The audience is farwider than the publicans and their families. But it is myprovisional view they have not communicated them to thepublic within the meaning of Article 3. There has been noretransmission by the publicans whether by wire or

otherwise. They have simply received the signal, decoded itand displayed it on a television. The only acts ofcommunication to the public have been those of the FAPL,NOVA and ART. In short, there has been no act ofcommunication to the public within the Directive separatefrom the satellite broadcast itself.

Decision shows difference between perform in public andcommunicate to the public rights.

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Infringement by authorising pubs (the Madden defendants) and users to

whom they have supplied decoder cards.This is an important aspect of the copyright claim. It is contended that QC and AVhave infringed FAPL's copyrights by authorising the infringing acts of theircustomers, including those of the Madden defendants. Authorisation is a primaryinfringement under s.16(2) of the CDPA.

In my judgment decoder cards are quite different to the twin-tape recorders thesubject of theAmstraddecision. Those recorders might or might not be used toperform the allegedly infringing activities and there was nothing inherent in the salewhich suggested that Amstrad had the authority to allow those activities to becarried out. By contrast, a decoder card is the key which allows the viewer to watchencrypted programming. It has one purpose only, which is to permit him access towhat he would otherwise be denied. In this sense it is an authorisation in physicalform. Absent a statement or some other indication to the contrary, the supply ofdecoder cards to customers therefore constitutes authorisation to use the decodercards for the purpose for which they were supplied. In the case of publicans, theywere supplied to allow customers to watch the television programming in the pubs. Itherefore conclude that QC and AV have authorised any infringing acts of theMadden defendants and other members of the public to whom they havesupplied the NOVA and ART cards. (Emphasis Added.)

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Lucasfilm Ltd. v. Ainsworth. [2008]EWHC 1878 (Ch.)

This was an action for infringement of copyright related toreplicas of helmets and armour of characters in Star Warsfilm.

The defendant had created the prototypes and moulds forthese items. He then used the original moulds and soldreplicas over the Internet. He was sued by Lucas in the U.S.Who obtained a copyright infringement judgement.

Case in the U.K. involved: Could the U.S. Judgement be enforced in the U.K.

Was the defendant liable for copyright infringement underU.K. Law

Was the U.S. Claim for copyright infringement justicible inthe U.K. Courts

Who owns the copyright in designs commissioned formanufacturing purposes in the absence of a writtenagreement

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Was the defendant liable for copyright infringement under U.K. law

Neither the helmets nor the armour were scultpures or works of artistic craftmanship.

First, the original Stormtrooper helmet... It was a mixture of costume and prop. Butits primary function is utilitarian. While it was intended to express something, thatwas for utilitarian purposes... it was not conceived, or created, with the intention thatit should do so other than as part of character portrayal in the film.... It is not that itlacks artistic merit; it lacks artistic purpose.

I do not consider that they are works of artistic craftsmanship... Their purpose wasnot to appeal to the aesthetic at all. It was to give a particular impression in a film...Itwas no part of their purpose that it should in any way appeal as a piece of art; or thatit should be admired for any aspect of its appearance as such; or that it should doanything more than what was necessary to give the correct impression of thecharacter inside (and perhaps an environment) when used in a film (with all theassistance that the techniques of filming can to do to enhance an impression...Unlikea work of artistic craftsmanship, they were not intended to sustain close scrutiny.

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Was the U.S. Claim for copyright infringement justicible in the U.K.Courts

an English court can, and in an appropriate case should, determine at leastquestions of infringement of foreign copyright cases. Those cases will includecases where subsistence is not in issue. I would not, however, hold thatquestions of subsistence can never be decided here. In land cases incidental

questions of title can apparently now be considered. I can see no reason whythe same should not apply to copyright.

at least so far as copyright is concerned, the whole of a foreign copyrightclaim, no matter how fundamental the points, might be capable of beinglitigated here.

What would the result be in Canada? See Rim v. Atari.

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Who owns the copyright in commissioned designs

Where the outside draftsman was merely commissioned to produce engineeringor production drawings from rough sketches supplied by the manufacturer thecase for saying that the manufacturer is the owner in equity is very strongindeed. The principle in operation in all these cases is that both parties intendedthat the manufacturer or commissioner should have the rights necessary for himto protect the property he has purchased and the enterprise for which thedrawings were intended to be used. Where that is the case, the law will considerthe commissioner to be entitled to the copyright in equity, and the author to beunder an obligation to assign it.

Mr Ainsworth was working to render into 3D form the copyright designs ofothers... He must have known that the client would expect full exploitation rightsin the future for the purposes of its dramatic offering and cannot realisticallyhave expected to have retained any for himself. If the officious bystander hadasked the required question (suggesting that Lucas would have all the rights andthat Mr Ainsworth would not be entitled to exploit them without Lucas's licence)then the required testy suppression would have been forthcoming. I think thatthis is a classic case for saying that there is an implication that the commissionerwould have the copyright in the helmet (if any).

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SABAM v. SA Scarlet (Tiscali). No. 07/15472/A


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( ) / /(Court of First Instance of Brussels),Oct. 22, 2008

ISP Scarlet ordered to block infringingp2p transmissions of users through itnetworks.

Scarlet asked that the decision berescinded because blocking or filtering forinfringing p2p files was not possible.

The court held that Scarlet had notestablished that blocking or filtering ofinfringing files was not possible. Anexpert had identified 6 possible methodsof blocking files. Scarlett was given 6months to implement a solution or pay

daily damages to SABEM.

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Copyright Reform

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What is Bill C-61?

Bill C-61 aimed to:

Amend the Copyright Act in order to implement the World IntellectualProperty Organization Copyright Treaty (WCT) and Performances andPhonograms Treaty (WPPT)

Create exceptions for certain uses of copyright material for privatepurposes

Create exceptions for Internet Service Providers (ISPs)

Permit certain uses for educational and research purposes of Internetand other digital technologies, and

Change for photographers.


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Safe Harbors for ISPs

Bill C-61 would have introduced four safe

harbors for ISPs: A network services exception, intended to

provide protection to intermediaries who actas conduits in relation to the Internet.

A caching exception, which includes the actof caching where necessary to make a

telecommunication more efficient. A hosting services exception, intended to

provide an exception for providers of hostingservices.

An exception for information location toolsintended to provide the operators of search

engines with immunity against any remedyother than injunctions.


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Consumer Exceptions

Bill C-61 would have established three new exceptions to copyright

infringement related to private, non-commercial uses:

1. Time shifting, which allows individuals to fix acommunication signal or reproduce a work that isbeing broadcast in order to record a program forthe purpose of watching it later.

2. Format shifting, which would permit an individualto reproduce a work onto another medium ordevice.

3. A special format shifting exception only for music.

Bill C-61 would also have substantiallyreduced the potential liability ofindividuals who infringe copyright forprivate, non-commercial purposes.


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Education and Photography Provisions

Bill C-61 would have allowed educationalinstitutions to make copies of copyrightedmaterial for distance education for students

The provisions would also allow educationalinstitutions to copy or perform publiclyavailable material (PAM) found on the

Internet.

Bill C-61 would have repealeds.13(2) of the Copyright Act,which made a person whocommissions a portrait,photograph or engraving thefirst owner of the copyright.


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law society of canada: copyright year in review (2008)

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