Articles about Intellectual Property Law

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Toronto Copyright Lawyer, Gil Zvulony, recently spoke to Pat Bolland of Sun News about DC Entertainment’s refusal to allow the Superman logo to be displayed on a memorial statute of Jeffrey Baldwin.   Gil was critical of the decision to refuse and questioned the legal validity of preventing such usage.

(UPDATE: June 10, 2014 – DC Entertainment has changed its position and will now allow the Superman logo to be used on the Jeffrey Baldwin statue.)

By إبن البيطار (Own work) [GFDL (http://www.gnu.org/copyleft/fdl.html) or CC BY-SA 3.0 (http://creativecommons.org/licenses/by-sa/3.0)], via Wikimedia Commons
The streaming application Popcorn Time uses bit torrent technology in an extremely user-friendly manner to stream pirated movies.

The streaming application Popcorn Time uses bit torrent technology in an extremely user-friendly manner to stream pirated movies.

Gil-ZvulonyToronto Copyright Lawyer, Gil Zvulony recently spoke to Dan Misener of CBC Radio (listen to the podcast) on the legality of the movie streaming application, “Popcorn Time”.  Popcorn Time has been dubbed the “Netflix for Pirates” because of it’s very simple and user-friendly interface.

Gil Zvulony’s legal opinion was that the application likely runs afoul of the Copyright Act, RSC 1985, c C-42 because it is an “enabler” of copyright infringement.  The specific section in the Copyright Act reads as follows:

Infringement — provision of services

(2.3) It is an infringement of copyright for a person, by means of the Internet or another digital network, to provide a service primarily for the purpose of enabling acts of copyright infringement if an actual infringement of copyright occurs by means of the Internet or another digital network as a result of the use of that service.

Factors

(2.4) In determining whether a person has infringed copyright under subsection (2.3), the court may consider

(a) whether the person expressly or implicitly marketed or promoted the service as one that could be used to enable acts of copyright infringement;

(b) whether the person had knowledge that the service was used to enable a significant number of acts of copyright infringement;

(c) whether the service has significant uses other than to enable acts of copyright infringement;

(d) the person’s ability, as part of providing the service, to limit acts of copyright infringement, and any action taken by the person to do so;

(e) any benefits the person received as a result of enabling the acts of copyright infringement; and

(f) the economic viability of the provision of the service if it were not used to enable acts of copyright infringement.

Gil and Dan also discussed potential liability of users of the software. Specifically reference was made to a recent decision by the Federal Court and amendments to the Copyright Act regarding statutory damages that made it uneconomical in most cases, to pursue individual downloaders.

By http://www.flickr.com/photos/byflickr/ By Byflickr, Rohan Kar (http://www.flickr.com/photos/byflickr/2584948850/) [CC BY 2.0 (http://creativecommons.org/licenses/by/2.0)], via Wikimedia Commons

Introduction

by Gil Zvulony

A photograph is two things in one: it is on the one hand a representation of something or someone, and then again it is its own work of art, separate from what or who it represents.  This raises, and has for a long time raised, some interesting issues with regard to the law.  Who owns the rights in a photograph, the person who commissioned the picture or the person who took the picture?  What rights does the subject of the photograph possess? (For a discussion of sharing photos on social media read: Facebook – Who owns My Photos)

There are many different rights in a photo.   A person pictured in a photograph may possess certain rights independently of the photographer’s right to his or her creation.  Canadian court cases have dealt with the question of whether photographing someone can be a violation of that person’s privacy, of whether using someone in a photograph is an infringement of that person’s right to trade-mark his or her image, and whether a photographer can re-use a photograph without getting the permission of the people in it.

Canadian law on rights in a photograph is always in flux.  As the technology and its uses change so do the legal questions that arise.

Copyright Law

Canada’s Copyright Act was changed in 2012.  One key change was that photographs were now treated as any other “artistic work” such as paintings or drawings.   Copyright law gives the owners of artistic works certain exclusive rights to exploit their works, such as reproducing the photograph or selling the photograph.  In the case of photography this means that the copyright owner of a photograph can, in most cases, prevent others from copying that photograph.  With the exception of photographs taken during the course of employment, the photographer will always be the owner of the copyright in a photograph.

Moral Rights

S. 14 of the Copyright Act also grants “moral rights” to an author, which prevent someone from making alterations to the author’s work if those alterations will affect “the integrity of the work,” and require the author to be given proper credit for the work.  The leading case on moral rights was Snow v The Eaton Centre Limited, et. al (1988) 70 CPR (2d) 105, where the Ontario High Court of Justice ruled that an artist who had sold his sculptures to the Eaton Centre had the right to keep them from making unauthorized changes to the work: even though they owned the physical objects, Snow still had rights over the artistic integrity of his creations.   This case can stand for the proposition that even if a photographer assigned copyright to his photographs (but did not waive his moral rights), the photograph can still maintain some artistic control over modifications/distortions of the original photograph.

The application of this principle to photographs was made in the Ontario Superior Court of Justice case of Ritchie v. Sawmill Creek Golf & Country Club.  In this case, Justice Ducharme dealt with the case of a photographer (the plaintiff, Mr. Ritchie) who had presented the defendant with a book of photographs he had taken.  One of the many issues in the case was Ritchie’s contention that his moral rights had been infringed when the defendants enlarged some of his photographs to display on posters: the “horrifying” quality of the enlargements, he contended, ruined the integrity of his work.

Ducharme J. concluded that Ritchie had not proven either head of moral rights infringement to his satisfaction.  In the case of the enlargements, Ritchie had not demonstrated that the enlargements would be considered of poor quality by the standard of the photography business; he had not tried, for example, to get experienced professional photographers to testify that the enlargements were badly done.  To demonstrate infringement of moral rights, a photographer would have to show not only that changes were made to the photograph, but that the changes were unreasonable and harmed the photo artistically.  This must be demonstrated not on the basis of the photographer’s personal opinion, but on evidence of the standards of the profession.

Rights of the Subject – Privacy and Publicity Rights

In some cases, the subject of the photograph may have certain rights as well as those of the copyright owner. The person who was photographed may have the right to suppress the publication of the photograph, or even to obtain damages, if it infringes on his or her rights.  There are two kinds of rights that can be involved here: the right of privacy, and the right of publicity.

Privacy rights prevent other people from seeing a person’s image unless he or she wants it to be seen.  Publicity rights, on the other hand, are about a person’s right to exploit his or her image, to create a public persona, to make money off his or her appearance.  If privacy rights give someone the right not to have their image presented to the public, publicity rights give them the right not to have it presented to the public before they get a chance to do it.

The Right to Privacy

In Aubry v. Editions Vice-Versa Inc. (1998), 50 C.R.R. (2d) 225, [1998] 1 S.C.R. 591, the plaintiff brought an action against a photographer and publisher for taking a picture of her as she was sitting on the steps of a building, and publishing it in a magazine without her consent.  She argued that this was a violation of her right to privacy under Quebec’s Charter.

The Supreme Court, in the jointly-written decision of several justices, ruled that the unauthorized taking of a photograph is, in fact, a violation of a person’s right to privacy if that person is the subject of the photograph, rather than an incidental character in it:

Since the right to one’s image is included in the right to respect for one’s private life, it is axiomatic that every person possesses a protected right to his or her image. This right arises when the subject is recognizable. There is, thus, an infringement of the person’s right to his or her image, and therefore fault, as soon as the image is published without consent and enables the person to be identified.

However, the court ruled that the plaintiff was only eligible to claim nominal damages, $2,000, for the violation of her privacy, as there had been no “moral prejudice” caused by the publication of the photo.  The court ruled that there must be a fairly high degree of “discomfort and upset” caused to the subject of a photograph in order for him or her to prove that the publication of the photograph was actually harmful.

The court’s ruling was, as previously mentioned, based on specific provisions in Quebec’s legislation, and thus might not be completely applicable to all other provinces.  But the tone of the Supreme Court’s discussion of the issue made it clear that the justices saw the issue as being broader than just the specific legislation; the judgment speaks in general terms of the importance of not “extending the photographer’s freedom at the expense of all others,” establishing a general principle that the freedom of a photographer to take pictures must be balanced with, and not permitted to override, the right of an individual to protect his or her privacy.

In 2012, the Ontario Court of Appeal adopted a new tort of invasion of privacy (formally called “Intrusion Upon Seclusion”) in the case of Jones v. Tsige.  While the Jones case did not deal with photographs, the court did give guidance as to when someone’s privacy could be violated.  The court stated that the following factors must be present:

  1. The defendant’s conduct must be intentional or reckless
  2. The Defendant invades the plaintiff’s private affairs “without lawful justification”
  3. A “reasonable person would regard the invasion as highly offensive causing distress, humiliation or anguish”

The court also added a “reasonableness” limitation to claims of Intrusion upon Seclusion. The court stated that:

[c]laims from individuals who are sensitive or unusually concerned about their privacy are excluded: it is only intrusions into matters such as one’s financial or health records, sexual practices and orientation, employment, diary or private correspondence that, viewed objectively on the reasonable person standard, can be described as highly offensive.

 Thus, it is safe to say that photographs taken in intimate or private situations (such as “revenge porn” or so called “up-skirt photos) violate the privacy rights of the persons in them.

Publicity Rights

A case that dealt with publicity rights in a photograph was Athans v. Canadian Adventure Camps Ltd. (1977), 17 O.R. (2d) 425 at p. 434, 80 D.L.R. (3d) 583.  The plaintiff was an athlete, and the defendant had put out a brochure which had used an image based on (but not directly copied from) a photograph of the plaintiff.  Even though the brochure did not directly represent the plaintiff, the court ruled that the plaintiff’s rights had been violated because the defendants had appropriated his “trade-mark pose,” and thus an element of his personality that he relied upon for publicity purposes.

Though the pose was referred to as a trade-mark, and theoretically the above situation could have been framed as a trade-mark violation (passing off the defendant’s camp as having been endorsed by the plaintiff), the decision was based less upon trade-mark rights than proprietary rights, namely the exclusive right to control the marketing of one’s image. In his decision, Henry J stated that “it is clear that Mr. Athans has a proprietary right in the exclusive marketing for gain of his personality, image and name, and that the law entitles him to protect that right, if it is invaded.”  In other words, a person has a proprietary right in the ability to market and exploit his or her image.

In Gould Estate v. Stoddart Publishing Co. 1998 CanLII 5513 (ON C.A.) Finlayson J.A. dealt with the question of whether the subject of a photograph can sue for the tort of appropriation of personality.  Finlayson J.A. declined to rule on the issue of whether appropriating someone’s image could be a separate tort, which seemed to imply that even though Athans had suggested the possibility of a tort of appropriation of personality, later cases would restrict this tort to the narrow scope of misuse of someone’s image for marketing purposes.  In this particular case (where Glenn Gould’s estate was trying to prevent the re-use by a photographer of some photos that he had taken of Gould years before), he pointed out that the case could be settled decisively in the defendant’s favour simply by applying the principle that unless the subject’s image has been borrowed for commercial purposes, a subject’s rights in a photograph end with the consent to the taking of the photograph:

The owner of the negatives is the author and owner of the copyright in the photographs and the author of the written material in the book is the owner of the copyright in that written material. The subject of the photographs and the written materials has no proprietary interest whatsoever unless he or she had obtained an interest by express contract or implied agreement with the author. Looked at in this light, the concept of appropriation of personality has no application.

The subject of a photograph can also claim that by distributing a photo of him or her, a photographer is committing the tort of “passing off,” of making the public believe incorrectly that the subject is associated with certain goods or services.  If a photographer distributes photos of a celebrity, the public may mistakenly believe that the celebrity is associated with, or approves of, the photographer’s work.

This was the argument advanced in Salé v. Barr, [2003] A.J. No. 595, an Alberta case where figure skaters sued to stop a photographer from distributing photos he had taken of them.  The court ruled that the plaintiffs had a right to control the use of their trade-mark image, and that included the right not to have their image associated in the public’s mind with that photographer’s work.

By-standers

One other question about the rights of a person in a photograph is what happens when a person is not, in fact, the subject of a photograph, but is merely a sort of bystander, incidental to the real subject-matter.  The Supreme Court in Aubry suggested that if someone is not the subject of a photo, he or she does not need to approve his or her presence in it; no permission need be obtained from a person who is “an anonymous element of the scenery, even if it is technically possible to identify individuals in the photograph.”  The court did not clarify what would constitute an “element of the scenery,” nor did it deal with the contradiction inherent in the idea that someone could be simultaneously be anonymous and identifiable.

Rights of Models

In the United States, there have been cases dealing with the rights of models who pose for photographs and in whether they need to give their consent to the further use of such photographs.  One such case involved a Canadian corporation operating online, Perfect 10, Inc. v. Talisman Communications Inc., where Paez J. ruled that models, who assigned their rights of publicity to one company, had those rights violated when the photos were used by someone else for advertising purposes. There is no federal law on the issue, but state-level cases such as this one have established that while a model’s image is not in itself copyrightable, a model retains rights of privacy and publicity in his or her image even after the photograph is taken.  The primer on privacy and publicity by the Library of Congress sums up the prevailing rule as follows:

If no formal relationship (e.g., a release form signed by the subject) exists that permits the photographer to licence the use of the photograph for all uses or otherwise waives the subject’s, sitter’s or model’s rights, then the advertiser must seek permission from the subject of the photograph because the subject has retained both privacy and publicity rights in the use of their likeness.

This issue has not been dealt with much in Canada.  One of the few cases that dealt with the issue was the Quebec Court of Appeal’s decision in Malo v. Laoun, 2003 A.C.W.S.J. 8462.  The case involved a Quebec actress who posed for photographs to advertise a manufacturer of eyeglasses.  The defendant, who operated an optician’s store where the advertisements were displayed, gave permission for them to be displayed in a commercial directory, without obtaining the actress’s consent.  The Court of Appeal ruled that the plaintiff was entitled to compensation for economic and moral damages, and that her consent for one type of advertising did not create a right to use the photograph for any type of advertising.

In his decision, however, Dussault JJA adopted the principle that the plaintiff should not be awarded damages for “usurpation of artistic identity” as a separate tort.  While all this is based on the Quebec Civil Code rather than common law, it does suggest how Canadian courts might approach the issue in future: a person’s rights in his or her image do not end with giving consent to one type of exploitation, and consent must be obtained for any further type of exploitation, but the damage created must all fall under pre-existing tort headings.

Based on this, and on the Aubry decision, suggesting as it does that people must consent to the use of their image, it seems possible that Canadian law might eventually tend in the same direction as U.S. law, with the result that a photographer would be well advised to get models to sign release forms.  And since Canadian cases such as Athans have recognized a right to commercial exploitation of one’s own image, this principle could be used to argue that if the photographer intends to make more money from the model’s image, the model must share in this too.  On the other hand, the fact that the legislation is moving away from giving rights to anyone other than the photographer might suggest that models will eventually have fewer, not more, rights, so this issue could arguably develop in any number of directions.

Conclusion

Canadian law has moved to granting more and more rights to the person who takes the photograph, as opposed to the person who commissions it or the person who is in it.  The 2012 modifications to the Copyright Act grant broad rights to the creator of a photograph, and only very narrow rights to the person who pays for its creation.  As for the subject of the photograph, Canadian courts will not go (or at least have not gone) very far in granting rights to someone who is pictured in a photograph.  There might be a basic requirement to get the subject’s consent for the taking and initial use of the photograph, and there might be a requirement to get someone’s consent for the commercial exploitation of their image.  But if these conditions are satisfied, then the photographer’s copyright will be treated as absolute.  Just as the writer of a book has certain rights that usually supersede the rights of the publisher or the subject of the book, the photographer has rights that usually – not always, but usually – supersede the rights of others.

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By 1RadicalOne (Own work) [Public domain], via Wikimedia Commons

By Shaya Silber

A common question in copyright law is how much reproduction or use of a work is considered copyright infringement? In the case of music, The Supreme Court of Canada  (SCC) recently shed some light on this question in SOCAN v. Bell Canada.

Many online music stores offer the opportunity for visitors to listen to a sample of a song before purchasing that song. The samples are typically around thirty seconds. In the past, the copyright owners of the music (either artists, record labels, or collectives who collect royalties on behalf of owners), demanded payment for the use of a song regardless of how much of a song was available for listening. The operators of these stores took the position that the availability of the thirty second sample fell within the “fair dealing” (not to be confused with the American “fair use” doctrine) provisions of the Copyright Act, and were therefore not subject to royalty payments.

The relevant section of the Copyright Act (as it was at the time of the case) read:

Research or private study

29. Fair dealing for the purpose of research or private study does not infringe copyright.

Criticism or review

29.1 Fair dealing for the purpose of criticism or review does not infringe copyright if the following are mentioned:

(a) the source; and
(b) if given in the source, the name of the(i) author, in the case of a work,
(ii) performer, in the case of a performer’s performance,
(iii) maker, in the case of a sound recording, or
(iv) broadcaster, in the case of a communication signal.

The task before the Supreme Court of Canada was to determine whether the music samples fall within the fair dealing provisions of the Copyright Act.

The Court set out a two step test to determine what constitutes fair dealing. First, the SCC asked whether the situation fell within the definition of “research” or “private study”. Second, the SCC asked whether the usage was “fair”.

SOCAN asked the SCC to define “research” in a narrow manner (for example, defining it narrowly would limit the situations that could be considered “research” to scientific research).  The SCC rejected this idea, and defined “research” in broader terms. The decision stated that these previews allowed visitors to conduct research to determine which music to buy. The sample allowed the purchaser to confirm the song that was about to be purchased.

In regards to determining whether the usage was “fair”, the SCC examined the six factors to be used in fair dealing assessments (the purpose, amount, character, alternatives, nature, and effect – click here for further information on “fair dealing”).  After examining these factors, the court confirmed that the usage did not have an adverse effect on the music that would justify a narrow interpretation of the fair dealing provisions.

The court ultimately applied a broader interpretation to “research” in the fair dealing provisions and therefore allowing thirty second previews of songs.

https://www.flickr.com/photos/azrainman/1003163361/in/photolist-2wDtw2-5xtiGh-7PBNhi-ayMkd1-9Yx1Jn-781dTA-nSvDgi-aBgfi7-5Us16p-ajfM3h-5weRaZ-oKikHS-qGs9UM-8RVeSN-bBi4mF-7rvhF-d8CnT5-5bprAc-5xtiH5-eNkwbA-qPKMFX-MAwA3-oDyutU-fMNjJ2-28caBX-nhZCGs-5G88VK-oq5qqD-6b3vUA-6aYkZp-nU82wz-hyHRSr-bQLeQ8-7PBNmR-9YzU1L-eew1QJ-5xoVf2-eevZ3y-bwKi8w-a2KGD4-eevZ7f-8rPKHx-68E4nZ-p5WsJk-oKid2u-m7gM9V-7PFM3J-6bNPGm-27djq-4xHtMJ

by Shaya Silber

Fair dealing has always been a hot topic in copyright law. The line of what is permissible and what is not permissible is unclear in many circumstances, making this an area of law that is constantly debated. One of the more contentious fair dealing provisions, is the right to use copyrighted works for the purpose of “research or private study.”  Ideally, copyright owners would like to be paid for every use of their works, and try to narrow the definition of what is considered research and private study. On the other hand, students, professors, and educational institutions would prefer a broader interpretation, thereby allowing broader use of copyrighted materials.

The Supreme Court of Canada (SCC) has settled some of this debate in Alberta (Minister of Education) v. Canadian Copyright Licensing Agency. The SCC was asked whether copying materials for classroom use was considered fair dealing. The SCC found that such use did fall within the definition of Fair Dealing in the Copyright Act and was therefore permissible.  However, the SCC did outline certain qualifiers, and offered some clarification into the “fair dealing”.

The SCC first asked two questions. The first question was whether the use fell into one of the categories of fair dealing (click here for a discussion on fair dealing). The second question asked whether the usage was fair.

In determining whether the usage was fair, the court examined a variety of factors, including:

  • The amount of the use: here the court examined the amount that was copied in comparison to the entire work; and
  • Alternatives to the use: the SCC found that requiring students to purchase an entire book would be impractical where only a small portion of it was required.

Another interesting part of the decision was the court’s examination of who used the work, rather than who did the copying.  For example, the SCC found that if a teacher makes copies of an article for his/her students, the teacher would not be infringing either. Requiring an entire classroom of students to individually make their own copies is simply not practical.

The Supreme Court clearly signaled its willingness to give the Fair Dealing provisions in the Copyright Act an expansive interpretation.

By No machine-readable author provided. Scindo assumed (based on copyright claims). [Public domain], via Wikimedia Commons

By Shaya Silber,

Copyright law protects the expression of ideas. The expression of the idea must be in a fixed form (i.e. it must have some permanency). For example, let’s say I have an idea to a story. I then tell my idea to a friend of mine, the idea would not be protected by copyright law because although I expressed my idea, it has no permanency.  It is not fixed.   Now, let’s say my friend goes and writes down the idea, technically my friend owns the copyright, because he/she was the first person to express the idea in a fixed form.

Section 1 of the Copyright Act automatically grants protection once a work is expressed in a fixed form. A “fixed form” can mean a variety of things. It can be handwritten, emailed, spoken into a voice recorder and so on.

There are no formal requirements to receive copyright protection. As long as the work is original and fixed it’s automatic. However, depending on what you are trying to protect, it may be advisable to take certain steps to protect your work. In the event that your ownership is ever challenged, it is better to have something concrete to rely on as proof. You may rely on the testimony of a witness who viewed the work at a certain point in time, but there are more reliable steps you may take.

Copyright Registration

There are many ways to do this. Here are a few examples. The first, and possibly the best method is registering your work with the Canadian Intellectual Property Office (CIPO).  Registration is not free, nor is it necessary in order to obtain copyright protection.  However, registering your work with CIPO creates a rebuttable presumption of copyright ownership – something the other methods lack.   This means that you are the presumed copyright owner. Anyone wishing to challenge your ownership, bares the burden of proof to demonstrate otherwise.

When registering, all you need to submit is the title of work, the type of work, and some other information depending on the nature of the work (date of first publication, location of first publication etc.).  This is an inexpensive process that one of our copyright lawyers can help you with.

Once you register, the Copyright Office will send you a certificate of registration and your name will be available in a publicly searchable database.

Mailing a Copy of the Work to Yourself

Another popular method is to mail a copy of the work to yourself and keeping the envelope sealed.  I do not know of any case where this method was actually held up in court.  It is not recommended that someone do this as their only method of proof.  This method could be used in conjunction with other methods.

Notarized Copies

You may also have the work notarized.  Each page of your work will be signed and stamped by a notary public, which demonstrates that a notary public has verified the existence of the work, and the time of verification.

 

by Shaya Silber

Everyone has a website these days. People are creating websites for personal use and commercial use. Having a web presence is essential for business today, and this is not likely to go away any time soon. With the surge in websites, many domain names are being registered. Some domain registrations are for immediate use. In other instances, however, people register websites for future use, either because they believe that the domain name will offer a valuable business opportunity, or they may be able to sell it for a profit.

For Canadian businesses, having a dot-ca domain name (i.e. zvulony.ca) can be important for their online presence and SEO strategies. Dot-ca domains are administered by the Canadian Internet Registration Authority (CIRA).  CIRA has several requirements before someone can register a dot-ca domain name. For example, the registrant must meet certain Canadian presence requirements. Furthermore, CIRA’s policy prohibits the registration of domains in bad faith, or domain registrations that are intended for future sale (at a profit) to a person or business with rights in that name (i.e. registration of cocacola.ca to sell it back to the Coca Cola company for a profit).

Disputes over coveted domain names are on the rise. When an amicable settlement cannot be reached, a complainant has two options.

Court Action

Depending on the situation, a complainant may opt to pursue a court action. There are pros and cons to pursuing a court action.

The advantage of a court action is that in addition to obtaining an injunction or transfer, a complainant can also seek damages. For example, if the use of a domain name constitutes trademark infringement, a court may award damages for said infringement. Furthermore, if control of the domain by an unauthorized party constitutes breach of contract, a court action may be the appropriate route.

The disadvantage to pursing a court action can be time and money. In most instances, a court action will cost significantly more than a CIRA arbitration. Furthermore, a court action will take more time than arbitration, which may not be practical in today’s fast-paced business environment.

CIRA Dispute Resolution

A more practical option may be CIRA’s dispute resolution mechanism. CIRA has appointed two dispute resolution providers in Canada to oversee arbitrations of dot-ca domain names.

The advantage to CIRA’s dispute resolution is that the matter can be resolved in a much shorter time frame than a court action. Furthermore, because the time frame is much shorter, and the process is a lot more simplified than a court action, it requires less preparation of legal documents and eliminates frequent court appearances, which results in less fees passed on to the complainant.

The disadvantage to CIRA’s arbitration process is that a complainant cannot seek damages.  Furthermore, the complainant must pay for the fees required for the arbitration.

By text modified from SOPA to COPY by Akaniji, copied from the work by user:Arch [CC BY-SA 3.0 (http://creativecommons.org/licenses/by-sa/3.0)], via Wikimedia Commons

by Shaya Silber

[please note that this article contains references to Bill C-11.  Bill C-11 is now a law that is full force and effect]

The role of Internet Service Providers (ISPs) in facilitating copyright infringement has been a controversial topic since the beginning of the world wide web.  The Canadian government is expected to amend the Copyright Act to address this issue.

C-11 (the proposed amendments to the Copyright Act) contains provisions that are aimed at curbing copyright infringement.  One of these measures is known as the Notice-and-Notice (N&N) provision. This modification to the Copyright Act (if it’s passed into law) provides the opportunity for a copyright holder to send a notice of copyright infringement to an ISP such as Bell or Rogers.  The ISP then forwards the notice to the user who is allegedly engaging in infringing activity. (The N&N is different from the current practice in the US under the Digital Millennium Copyright Act or DMCA).  The US currently has what’s known as Notice-and-Takedown (N&T). Essentially, once a copyright holder submits a notice of infringement and swears that they are the owner and that they are making the claim in good faith, the ISP is required to remove the content in order to avoid liability themselves.

The N&N must contain information such as the date and nature of the infringement. Furthermore, ISPs are required to keep a record of the notices that they have forwarded, as well as the identity of the infringing individual. The ISPs are required to keep a record of this information, in the event of future infringement proceedings. If the ISPs do not maintain such records, they may be liable to pay damages of up to $10,000.

However, many ISPs have been adhering to a sort of voluntary N&N regime for the last decade or so. There are questions about its efficacy. The data is not clear as to whether the individuals who are receiving the notices are actually discontinuing their illegal activities.  In addition, there are privacy concerns  about what type of information the ISPs are providing about their users in response to these requests.

An N&N regime is certainly less strict with respect to suspected copyright infringement than its American counterpart of N&T.  In the N&T, ISPs remove the content without investigating who actually owns the rights.  In the N&N model there is no obligation for an ISP.

 

 

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by Shaya Silber

New products are created every day. Some products have distinct design features that may have legal protection from others copying the design.  This type of intellectual property  is called “industrial design”. Industrial design is covered by a unique set of intellectual property rules.

According to the Industrial Design Act, industrial design means “features of shape, configuration, pattern or ornament and any combination of those features that, in a finished article, appeal to and are judged solely by the eye.” This means that the product must have visual elements that are original and unique. For example, a fabric with unique embroidery and/or patterns may qualify for protection under the Industrial Design Act.  Ideas alone cannot be registered.

The next question is how to protect your designs. Industrial designs and copyright have some similarities, but are governed by a different set of rules. In Canada, industrial designs must be registered with the Canadian Intellectual Property Office (CIPO). Registration gives the registrant, the exclusive right to reproduce and sell their design for ten years. After the ten year period, anyone is free to reproduce and sell the design in Canada.

Unlike copyright, you are not automatically granted Exclusive Rights over your creation. If you do not register your design with CIPO, anyone can legally reproduce and sell your design without your permission.

Registration of a design only provides protection within Canada, and does not protect you abroad.  For example, to protect your work from being reproduced and sold in the United States, you must meet US requirements as well.

Registration can be done at any time, provided that the design was not published or otherwise made public. However, once a design is made public (either shown to others, or offered for sale), you have a 12-month window to register. Furthermore, only the owner of the design may register. Contractors and employees are not permitted to register industrial designs.

http://pixabay.com/en/facebook-connection-social-network-76531/

By Shaya Silber and Gil Zvulony, Toronto Internet Lawyers

What are the rules of ownership for content that users upload on social media sites, such as Facebook and Twitter?

Once an idea is expressed in a fixed form, copyright ownership is immediately vested in that work. The copyright protection is granted under the Copyright Act, by default.  No registration is required (though copyright registration may be worthwhile in some circumstances).  Therefore, when you take a picture, record a song, write a note or produce any other kind of content, you are automatically granted copyright ownership in that work (assuming it has not already been created by someone else, in which case the person who expressed it first in a fixed form would be the copyright owner, unless done in the course of employment).

Many people don’t bother to read the terms and conditions when signing up for a social media site such as Facebook. The terms and conditions govern the legal relationship between you and the service provider.  Terms of Use agreements are legally binding.   In many instances, when you agree to the terms, you are granting broad permission to use your content. For example, when a photographer, whose photographs may be a valuable source of income, uploads the photographs onto Facebook, that person is actually granting permission for Facebook to use the photos in a relatively broad manner.

Let’s examine the legal terms and conditions on the popular site Facebook.  Facebook’s terms (Date of Last Revision: April 26, 2011) regarding the “Sharing” of your content states:

You own all of the content and information you post on Facebook [..]

Facebook is stating here that you retain the copyright ownership that you have in any material that you upload to Facebook.  This might lead some people to believe that they retain all their rights with respect to the content they upload.  That is not the case.  All this clause really says is that Facebook cannot stop you from using the content that you provide.

The permissions that you give Facebook are granted in the following clause:

For content that is covered by intellectual property rights, like photos and videos (“IP content”), you specifically give us the following permission, subject to your privacy and application settings: you grant us a non-exclusive, transferable, sub-licensable, royalty-free, worldwide license to use any IP content that you post on or in connection with Facebook (“IP License”).

This section outlines the permission that you give Facebook for your materials. You grant Facebook the “non-exclusive” right to use the material. This makes sense since you are retaining ownership over the content, Facebook’s rights to your content act in conjunction with your rights to the content, thus Facebook’s non-exclusivity.

What Facebook can do with your works is unclear. The Terms contain the word “use” which is very broad. “Use” can mean any number of things, such as selling your photographs, or publishing your status updates in a book or magazine.

Facebook’s Terms go on to say that you give Facebook the “transferable, sub-licensable, royalty-free, worldwide license to use any IP content that you post on […] Facebook.”

You grant Facebook the right to “transfer” and “sub-license” your content. Facebook’s right to “use” your content is a transferable right which Facebook can transfer to any party they wish. Not only can Facebook sell your photograph, they can sell the right to sell it.  In other words they can sell your photo to a stock photo agency who can then sell it to their customers.

Finally, the rights to your content that you grant Facebook are royalty-free. This means that Facebook can use all of your content for free. Facebook does not have any financial obligation to you.

All of the above permission that you grant Facebook lasts until you delete the content or close your account, “unless your content has been shared with others, and they have not deleted it.” Therefore, if you or a friend share content that you upload to Facebook, and you wish to subsequently delete your account, Facebook still retains the right to use that content as long as it still remains on an existing member’s profile.

Interestingly enough, Facebook’s Terms of Use do not have a waiver of Moral Rights/Author’s Rights clause.  This means that Facebook would be restricted in certain kinds of modifications of photographs and other content.  It also means that in most circumstances an author or photographer name could not be removed from a work.  See our article on Moral Rights/Author’s Rights to understand this right.

Common social networking contracts can be daunting and confusing.  Most people do not bother taking the time to review a website’s terms of use.   Fortunately, we can help.  If you have any questions regarding the terms of use for any online service that you use, please do not hesitate to contact us for some confidential legal advice.