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Emily Chow is an��IPilogue��Writer and a 1L JD Candidate at Osgoode Hall Law School.��

From the limited scope of my research as a 1L student, as well as my personal interest, I have noticed a lack of creative voices within the legal realms that apply to them. On the one hand, social media has enabled global sharing of news and creative media. However, it also brings new dimensions to copyright and trademark issues. This observation, coupled with seeing multiple artists be exploited by Instagram users and large companies, motivated me to reach out to several creatives online and bring their voices to the IPilogue.

This article features three artists I met over the course of my research:

• Kaitlin Chan (they/she), an autobiographical cartoonist from Hong Kong;
• Tabathia Smith (she/her), a laser-cutting small business owner; and
• Michelle Rial (she/her), a Venezuelan-Spanish-American author and illustrator.

Their extended biographies are included at the end of this article. I am extremely grateful for their time and energy in sharing their experiences.

This article was prompted in part by Tabathia, also known as The Adorned Fox (“TAF”), whose spurred me to reach out and learn more about her experience. This interview has been edited for brevity and clarity; all emphases are mine.

Emily (E): What prompted you to protect TAF and trademark your brand?

Tabathia (T): "A company private messaged me, pretty much accusing me of trademark infringement. After doing my research on their company and trademark, it was very clear this business was trying to intimidate me into changing my business name in hopes I would just do what they say. It was a scary moment for me as a small business, as I couldn’t imagine trying to rebrand. That’s when I knew I had to protect TAF."

E: What were you looking for in your trademark lawyer? Do you have any comments on accessing legal services for yourself?

T: "I was very fortunate in having a father-in-law who knows a lot of lawyers. He reached out to several and they got me in contact with my trademark lawyer."

This was interesting to me as accessing legal services appears grounded in the power dynamic between independent artists and larger companies. According to the World Justice Project, in the past two years. Of those, were able to access help. These folks . This suggests that having a network of legally literate connections (or those who are connected to lawyers) is a significant asset in accessing justice on par with the utility of a lawyer itself. Tabathia also touched upon the issue of disproportionate access to justice for small businesses.

Based on these insights, I was curious about what artists who have gone through some form of legal process would say to their peers.

E: What advice would you give to fellow artists and makers on social media on sharing their work? Is there anything you would have liked to know before or during the legal process that you know now?

T: "If I knew [a trademark dispute] would have ever been a possibility, I would have trademarked my business name immediately all these years ago when I started. I would tell other small businesses that if you are serious about your brand and business, definitely look into protecting what’s yours. Also, it’s important to have [a] LLC [limited liability company] to start the process of a trademark. I didn’t realize that either until after talking with my lawyer."

Kaitlin (K): "My advice would be to not undervalue your work, no matter its scale or the size of your platform. It's easy as an emerging artist on social media to feel like you have to allow any kind of commenting, sharing, and reposting because you are a beginner; but you always have room to say no to having your work used or shared in ways that don't align with you. Your instincts are usually right about this."

Michelle (M): "There are ways to get your [infringed] work taken down by filling out a copyright report. No one is allowed to use or repost what you make without your permission. If something feels exploitative, it probably is and it’s within your right to get it taken down. Accounts often take a long time to respond if you ask them by sending a message. They will often be upset as well. It’s helpful to remember that they didn’t take the time to make anything, and they are taking your time, work, and energy, and reaping the benefit. They have no right to be upset."

Each artist emphasized the importance of individual instincts and understanding your rights. Although these artists were not subject to the Canadian legal system, the nature of the internet surpasses national borders, as do the practices and cultures embedded within them.

E: What would you like to see happen in terms of the culture of social media artists and their followers? What is your stance on people or large companies reposting your work on their accounts or other social media platforms?

T: "Honestly, my account came up in a time when artists and small businesses loved having features on social media platforms. It definitely got my accounts where they are today. Most were very nice to work with and always gave credit where it was due, which in turn boosted your pages. Social media now has changed so much; it’s mainly up to you to create good content or relatable content for it to “go viral”. It is a much different “concoction” than several years ago."

K: "What I would like to see is institutions and companies actively reaching out to people to clarify consent before reposting artists’ work[s] in their feed, especially seeing as corporate representatives may not even know if the artist wants to be associated with their��brand or company. There is an assumption that […] any attention is good attention, and I do not think this is always true. Sometimes, exposing a vulnerable creator to an audience who is not familiar with their broader portfolio and life context can be triggering and frustrating, especially if their work is about their experiences. Not asking someone if you can share their comic about depression before reposting it to your tens or hundreds of thousands of followers is irresponsible and can read as disrespectful of the time the illustrator put into the original artwork."

E: What has your experience been like collaborating with other makers? What about with larger brands (i.e., did you feel properly equipped to negotiate terms or conduct business)? What were some positive or negative experiences you’ve had?

K: "I have had difficulty understanding longer contracts, especially when I was first starting out. It was advice from other artists that lifted me up and taught me to look out for usage clauses—the ways in which my work could potentially be changed or used in the future. With basic negotiating skills and an awareness of how my work would be presented and utilized, I felt more empowered to ask for my true worth instead of just anxiously accepting whatever terms or fees I am initially presented with."

M: "It's often a negative experience because they never ask, and the culture is to use whatever you want. If it's an obvious��thing where they're "crediting" you but hiding your name behind their own promo, I go straight to copyright removal because I don't owe them anything; they’ve already used my work for free and benefitted. It can be beneficial to both parties if they are a large account that’s actually making an effort to showcase you as well as your work, but I rarely see that. Social media "gurus" will teach people how to exploit other people's work for account growth so everyone just assumes they can use anything. I often do not feel equipped to negotiate because brands are used to using anything they find for free."

It was especially impactful when Michelle noted that she is, “super negative on this at the moment, just because [she has] spent so much time trying to advocate for [her]self and it takes away the time [she] could be making things.”

I can attest to this. Following Michelle on LinkedIn, I see how often LinkedIn users repost her graphics to boost their own posts or announcements. I can only imagine the time it takes to catch these and comment to claim ownership and promote the book in which these graphics are published.

Through this limited sample of artists, I hope to encourage and remind legal professionals, marketers, and the broader public to consider their practices and use these reflections to inform decisions. Given the privileged position these professions hold, I believe more can be done to make the process of sharing art more equitable and mutually beneficial.

One form this could take is obtaining consent and structuring captions in a way that the artist prefers. For instance, should the first words in the caption state the authors name and account? How can businesses utilize the comments section and ability to pin individual comments to amplify the original creators?

Centering these experiences in one’s practice, no matter what jurisdiction or field, will be a positive step towards supporting all forms of creative development and the livelihoods of makers.

If you are an artist or small business owner interested in learning more about your intellectual property rights, the can help you obtain the information you need to get started. Learn more about engaging the Clinic’s services .

About the Artists:

(they/she) is an autobiographical cartoonist and gallery worker from Hong Kong. Over 17.3k followers on Instagram engage with their stories, which have appeared in The New 91��ɫer online (where I originally saw their work!), The Margins, Popula, ArtAsiaPacific, The Offing, AWRY, and the Hong Kong Visual Arts Yearbook. In 2018, they co-founded Queer Reads Library, a mobile library that centres queer Asian perspectives by curating publications, organizing reading corners, and hosting public programs. They are also an avid zine contributor, telling stories about quiet moments, friendship, and reflections about their life: everything from leaving religion and finding emo music, to friend breakups, and the banal beauty of city life.

is the maker behind , a hand-lettering Instagram account turned laser-cut, engraving, and painting business with over 66.5k followers. I originally followed her when she was still primarily a hand-lettering account, back in the days of one of my own (failed) attempts to participate in the “artstagram” community. Tabathia is a dynamic artist who strives to learn and grow in new ways, and is always looking to improve her craft as a small business owner.

is the author and illustrator of (2019) and its recent successor, (2021). She’s a Venezuelan-Spanish-American who calls the Bay Area home. She has amassed over 99.2k followers on Instagram with her candid graphics and charts of whimsical, everyday dilemmas of adulthood, including living with chronic illness.

The post Centering Artists’ Voices Within IP Discourse appeared first on IPOsgoode.

It’s no secret that memes have taken the internet by storm. Whether they’re coming from your dad, who finally posted a Bernie Sanders mitten meme to his Facebook feed, a year late, after pestering you for help (good luck, he now thinks you’re a tech tycoon and you will never see another day of peace) or your kid sister, who continues to remind you how old twenty-four is –memes are the universal language of laughter. ��

A meme is simply a photo or video with text overlaid. This text usually describes the image and outlines a feeling or idea that is culturally relevant and relatable. Memes exist in collections, as they are often reposted by various creators, adding slight alterations. The term “” was coined in 1976 by Richard Dawkins, who likened them to genes, because of how quickly they replicate and spread.

The etymology of the word may make sense, but can the same image be copied over and over without intellectual property repercussions?

Copyrighting a Meme

In Canada, copyright protection is afforded to every original literary, dramatic, musical, and artistic work that is fixed. Although originality seems like a low threshold to meet, memes may not exactly make the cut.

Artistic Work

Memes that contain both artistic and literary components may comprise both an artistic and literary work: originality may exist in their combination. Multiple elements selected or arranged in an original way, may also qualify the meme as a protected .

Authorship

The next component to copyright is authorship. Although the term “” is not defined in the federal statute, the first owner of copyright is presumed to be the person who creates the work. This can become difficult to track with memes, as they often appear out of nowhere, on anonymously-run meme pages, such as @memezar and @insta.single. Although TikTok has simplified source tracking, as individual creators have been known to go viral for their content, knowing the identity of the original poster doesn’t always allow authorship to be easily ascertained, as other creators often replicate memes, adding their own twist.

Originality

Another key component of copyright, is originality: the work must be more than a mere copy (). The author need not prove their work is entirely novel or, as would say, “show-stopping, spectacular, never the same, totally unique, completely not ever been done before.” They must demonstrate only that their expression required skill and judgment. This may become tricky in the context of social media, as memes only become popular by copying and reposting. However, while memes reference and communicate with one another, any changes beyond the trivial and mechanical may meet the originality threshold, even if the later work infringes the earlier

Fixation

Lastly, fixation requirements may also be difficult to prove, especially because memes arguably exist in groups. While one image or video is fixed, collections are constantly changing.

Is Infringement Even Possible Then?

While the protection of memes remains unclear and unresolved, plaintiffs can claim copyright, trademark, and personality rights in the underlying images. According to of the Copyright Act, only rightsholders can reproduce their work or “any substantial part thereof.” Copying the whole or a substantial part of a meme could therefore constitute infringement even if new matter is added.

This may become a concern in Canada only when memes are used in a commercial context, as the Copyright Act allows exceptions for non-commercial user-generated content (s.). Infringement may however occur where brands use meme marketing to profit off popularized images — as when, in the US context, Grumpy Cat coffee company, Grenade, and Kim Kardashian fast fashion brand, Missguided, for using memes to sell merchandise.

On the flip side, many companies welcome the meme-ification of their brand, because of the free publicity they receive. This was seen with and, more recently, with the brands responding to logo redesigns.

Possible Remedies?

One defence to copyright infringement is fair dealing for the purpose of parody or satire ( of the Copyright Act). However, holds that, to be allowable, parodies that draw on original works must exhibit noticeable differences. New memes do not usually meet this criterion. If correct, it would affect many forms of parody, such as comedy that pull verbatim from the original.

Conclusion

All this to say – repost with caution, because the scope of what is and isn’t copyrightable or infringing creates problems by the day.����

��

The post What Do You "Meme" That’s Copyrightable? appeared first on IPOsgoode.

Photo by (Unsplash)

Shawn Dhue is an IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.

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Not only do songwriters and artists owe the viral video app for their songs taking off, but most artists also owe their fame to Black creators for creating phenomenal dances which helped those songs to go viral.

In June 2021, the hashtag started trending on multiple social media platforms and was viewed over 7.7 million times on TikTok alone. This trend started due to Black creators getting fed up with the cultural appropriation and credit given to their white counterparts. Black creators have finally spoken out about the recognition and financial gain white creators get from stealing their creations.

The strike centred initially around ’s song, “.” The Texan rapper's prior hit song, “,” alongside Cardi B, has inspired over (not views) made on the app. For the release of Megan Thee Stallion’s new song, Black creators decided to hold off on creating a new dance to show artists and white creators alike how much credit Black creators deserve for their success. Today, “Thot S**t” does not have a viral dance and include the song.

Many Other Controversies

White creators have controversially ��appeared in mainstream media for Black creator content many times. Nicki Minaj's song, “,” went viral again to celebrate Black beauty on TikTok. However, not long after the trend emerged, many white female creators started appearing on Tik Tok’s “” page. Discourse now fills the song's thread on TikTok over .

Another recent controversy surrounds ’s appearance on ’s in . The host asked the TikTok superstar to perform eight famous TikTok dances in a segment which has brought both Fallon and Rae . The show did not credit nor mention the IBPOC creators of the dances, adding more to the conversation of white creators’ success off of Black creators’ content.

Photo from

Both Fallon and Rae have now publicly addressed the backlash. Fallon apologized and admitted that the original creators deserved their spotlight. He then invited some of the creators onto the show to . In an interview with TMZ, spanning less than two minutes, Addison Rae said she loves and respects all the creators of the dances she performed. Additionally, she stated that it is “.”

What Can Black Creators Do Legally?

I recently wrote about . Although this ban from Black creators is similar, and the 6 make it more difficult for these creators to exercise their rights.

Creators would have better luck with claiming copyright protection if not for Tiktok’s app design. By default, once someone uploads a dance video online, it is protected under copyright. However, it is usually hard to figure out who created the dance first and what constitutes a dance. Unlike Facebook or Twitter, TikTok , which creates more difficulty in crediting creators. The app posts videos by popularity and not in chronological order. This ordering makes it extremely hard to figure out who posted the dance first.

The Copyright Act of 1976 has adapted to protect more pieces of works over the years. It was not until 8 that the Act allowed choreography to be copyright protected, Nevertheless, this amendment was for extended choreography, such as ballet routines and other dances performed in front of an audience. On the other hand, "social dances," defined as "," are not protected under the Act. This definition, unfortunately, includes short TikTok dances.

Conclusion

Overall, after researching the common law of copyright protection of TikTok dances, I have found that the law seems not to protect the work of these Black creators. As the strike continues, the best thing that allies and supporters of Black creators can do is to credit the original creators of these works. Recognition for the idea and creativity and the following they deserve will make up for the financial gain these creators have lost. This can be an appropriate solution until the law can adapt to ensure Black creators can get what they rightfully deserve.

The post Hashtag Black TikTok Strike: The Silence From Black Creators and Their Legal Rights appeared first on IPOsgoode.

The Supreme Court of Canada dealt a strong blow to the so-called promise doctrine and made international precedent when it ordered Google to de-index infringing websites across the global Internet. These and the other developments noted below pave the way for an IP-busy 2018 as we await the release of the National IP Strategy, which will hopefully set the stage for Canadian advancements and benefits from emerging technologies and business practices. Here at IP Osgoode, we are set to examine the promise and challenges associated with one of these important technology areas: artificial intelligence (AI). On February 2, 2018, our AI conference, “Bracing for Impact: The Artificial Intelligence Challenge”, will feature internationally renowned AI experts from Canada and abroad. For more information and registration, visit .

We hope you can take part in our AI conference as well as our regular suite of exciting activities and initiatives as 2018 gets further underway!

PATENTS

The patent law landscape experienced incremental changes and some profound shifts that seemed to mimic the changes of the seasons here in Canada during 2017.

It’s All About the Money

The year kicked off with a chilling warning to Non-Practicing Entities (NPEs) seeking to protect patent rights through litigation. NPEs commencing patent infringement actions “without a clear theory of infringement” may be sanctioned with for disregarding the “serious cost consequences [following from] allegations shown to be unwarranted”. In , the Federal Court of Canada was satisfied that the defendant’s activities were non-infringing; and because the plaintiffs “should have known that Bell did not infringe”, they were ordered to pay solicitor-client costs.

The Federal Court of Appeal reminded us in February that in “an extremely complex patent case involving [...] 22 allegations of invalidity, 33 days of discovery, 32 days of trial, written submission exceeding 700 pages, and the closing argument lasting three days”.

The Federal Court of Appeal also decided on profit recovery for infringing activities. In , the Court highlighted that the differential profit approach of recovery is to “ensure that a patentee only receives that portion of the infringer’s profit that is causally attributable to the invention”. Accordingly, the Court asserted that it is as the actual value of the “patent lies in the ability of the patentee to exclude competitors and competition” .

The Season of New Life and Law

In the UK, the beginning of spring was marked with a UK Patent Court decision on the interplay between IP and Competition Law. In , the court tackled issues involving standard-essential patents (SEPs), as well as the (FRAND) principles applicable to licensing agreements between patentees and licensees. In particular, the UK Court explained that the requirement to commit to FRAND terms in a SEP licence serves the public interest insofar as it spurs “the best and most up-to-date technical” standards to be set and inventors to “obtain a fair reward for their invention”. While Canadian jurisprudence is yet to develop on what negotiations are FRAND and what are not, the guidelines forecast issues that industries might face on this matter.

Shortly after, the Federal Court of Canada released its , which aimed at developing efficient, expedient, and proportional use of court time. A rundown of the particularly noteworthy protocols to streamline trials and court’s resources is available .

The spring also ushered in a as the Comprehensive Economic and Trade Agreement (CETA) between Canada and the European Union received Royal Assent on the 16^th of May []. It is important to note that CETA listed the ICSID tribunal as the main recourse for disputes. on how this may affect the IP environment domestically suggests that the ICSID’s unappealable decisions could be a new problem for Canada, absent the requirement of certification in domestic courts. So, in addition to CETA’s implications toward patent term restoration, appeals under NOC regulations, and the potential end of dual litigation — see general outline and significance for pharmaceutical patent protection — further developments stemming from the tribunal jurisdiction are anticipated for the new year.

The last development of the season provided an important lesson from a business perspective regarding IP transfer agreements. In , poor management of IP rights and poorly conceived transfer agreements proved to be a hindrance to enforceability. The Federal Court also delivered an important lesson around patent infringement when it announced the Public Judgement and Reasons in , awarding Dow Chemical the largest patent infringement monetary award in Canadian history: $644,623,550 and pre-judgement interest.

Utility, Enforceability, and NOCs

Two hot-button issues from the Supreme Court of Canada heated up the start of the summer. One involved the decision that did away with the Promise Doctrine, and the other pertained to a global takedown order imposed on an online intermediary (Google) that may change the future of IP enforcement.

In the first, , the Court effectively abolished the Promise Doctrine on utility. , all explicit promises of utility made by a patentee had to be fulfilled for the patent to be valid. The Court nonetheless deemed this requirement “unsound” and “not good law”. For the Court, “depriv[ing] such an invention of patent protection if even one ‘promised’ use is not soundly predicted or demonstrated is punitive and has no basis in the Act”. So, in bringing the common-law more into accord with the requirements for patentability, the Court revamped , requiring that the patentees demonstrate, essentially, what the subject-matter of the invention is, and how it is useful in serving a practical purpose.

The second case, , played an important role in increasing IP enforcement outreach in the Internet era. It provides the courts with a more effective measure to protect IP rights. Specifically, the precedent allows an IP owner to obtain a court order against search engines — such as Google in this case — for the removal, on a global scale, of search results (websites) that facilitate infringement of IP rights. It will be interesting to observe whether or not this decision affecting online intermediaries such as Google will to address the problem of unreachable wrongdoers, or will conversely be deemed a to non-infringing actors that are a .

The end of summer featured the ’s proposed amendments to the Notice of Compliance (NOC) Regulations. The amendments seek to update the pharmaceutical patent litigation regime in Canada, enabling Canada to . A discussion of the most significant changes to Canada’s NOC Regulations can be found . The changes will apply to proceedings in which Notices of Allegation (NOAs) were served on or after September 21, 2017 — the date of the NOC Regulations.

Promptly after, the Federal Court released its for actions under the amended NOC Regulations to promote efficiency in light of the strict timelines — 24-month timeframe for a proceeding to be completed and a decision rendered — imposed by the . The guidelines set out procedural rules to be observed for proceedings under the amended NOC Regulations. Some key points worthwhile to look at were outlined .

A Not-So-Obvious Future

Lastly, the winter months saw an of the Canadian law of obviousness. In , the Federal Court of Appeal deemed the “inventive concept” set out in the case an “unnecessary satellite debate” in the analysis of obviousness. After being over the years — see , — the current test for obviousness seems to place emphasis on the as a , at least until a clearer definition of the “inventive concept” is developed by the Supreme Court.

TRADEMARKS

2017 saw a number of notable Canadian court decisions in the realm of trademark law. Outside of the courts, other developments will also shape the IP landscape going forward.

Consumer Criticism Gets a Bit Riskier

In a case dealing with consumer criticism of a brand - - the Federal Court returned a decision favourable to brand-owners. The plaintiff, United Airlines, sued the defendant, Jeremy Cooperstock, for trademark and copyright infringement, depreciation of goodwill, and passing off, over his “gripe site” . The court characterized the website as a “consumer criticism website where visitors can find information on the Plaintiff, submit complaints about the Plaintiff, and read complaints about the Plaintiff dating back to 1998 in the database of complaints.” The website included an .

Justice Phelan held that Cooperstock provided “services” through the website and that the marks were “being used or displayed in the advertising or performance of services pursuant to s 4(2) of the Trade-marks Act.” He also found that there was a likelihood of confusion. As a result, the defendant was found to have infringed s. 20(1)(a).

The defendant was also found liable for passing off: the court found significant goodwill attached to the United marks, that there was confusion and the likelihood of confusion, and that the plaintiff�� suffered damages or was likely to suffer potential damages.

The court held that Cooperstock “intentionally attempted to attract the Plaintiff’s online consumers to his own website for notoriety” and therefore depreciated the goodwill associated with the United marks, contrary to s. 22. Of note, the Defendant was also found to have infringed copyright in the marks and Justice Phelan dismissed the fair dealing defence of parody.

Whereas previous decisions such as Michelin v. Canadian Auto Workers and��BCAA et al. v. Office and Professional Employees’ Int. Union et al., had held that trademark owners’ rights to control the use of their mark in the context of criticism were limited, the United case demonstrates that brand critics must be careful in their use of brands’ logos and trademarks. While , “[i]n this case, the Defendant sailed too close to the wind – and he was put up on the rocks.”

Why Seek an Injunction Anywhere Else?

In , the plaintiff Sleep Country was successful in its motion for an interlocutory injunction. Sleep Country sought to restrain Sears from using the slogan “THERE IS NO REASON TO BUY A MATTRESS ANYWHERE ELSE”, which it argued was confusing with its own slogan “WHY BUY A MATTRESS ANYWHERE ELSE?” Sleep Country alleged that Sears’ use of the slogan was causing harm to Sleep Country as “a result of confusion between the two slogans, as well as depreciation of the goodwill and loss of distinctiveness of Sleep Country's registered trade-marks.”

The court considered the tripartite RJR-MacDonald test for issuing such an injunction: a serious issue has been raised, the party seeking the injunction will suffer irreparable harm if the injunction is not granted, and the balance of convenience favours the seeking party. The key issue on the motion was irreparable harm, which the court found was established by Sleep Country’s “concrete and non-speculative evidence.” Justice Kane held that lost sales, loss of distinctiveness, and depreciation of value of the slogan would lead to irreparable harm, and that the harm could not easily be quantified. The balance of convenience was also found to favour Sleep Country.

It has traditionally been quite difficult for trademark owners to obtain interlocutory injunctions. The Sleep Country case indicates that the courts may be relaxing the onus on trademark owners to prove irreparable harm, particularly in cases where confusion is quite apparent.

Notably, the Quebec Superior Court in denied the plaintiff a similar injunction because “the Court cannot come to the conclusion that it is clear that the use by Cascades new Fluff trademark will cause confusion with the Royale trademarks.” Irving dealt with the allegation that Cascades’ fluffy bunny was confusing with Irving’s furry Royale kittens. The court concluded that “the use of white furry animals is not unique to the packaging for living's products” and that any harm would be quantifiable. Contrasted with Sleep Country, in which it was held that any harm would be too difficult to quantify, Irving shows that it may still be difficult for trademark owners to obtain interlocutory injunctions.

Injunctions Go Global

In a case that dealt with trade secrets and passing off, , the Supreme Court affirmed the effectiveness of an extra-territorial injunction granted by the lower courts. The issue on appeal was “whether Google can be ordered, pending a trial, to globally de-index the websites of a company which, in breach of several court orders, is using those websites to unlawfully sell the intellectual property of another company.”

The court concluded that the injunction was the only way to mitigate the harm to Equustek pending the resolution of the underlying litigation. The case therefore stands for the availability of an extra-territorial injunction as an equitable remedy in Canadian courts: “Where it is necessary to ensure the injunction’s effectiveness, a court can grant an injunction enjoining conduct anywhere in the world.”

Among the other trademark cases decided by Canadian courts this year, and are of particular interest.�� In Travelway, the Federal Court of Appeal held that owning a registered mark is not a complete defence to infringement – the respondent’s registered mark was held to infringe that of the applicant’s. In Diageo, the Federal Court held that Heaven Hill’s Admiral Nelson rum products infringed Diageo’s registered Captain Morgan marks. The court considered the plaintiff and defendant’s trade dress and found the Captain Morgan trade dress to be a distinguishing guise and therefore enforceable under the Trade-marks Act. The court also found that the goodwill associated with the Captain Morgan mark had been depreciated.

Other Changes to Trademark Law

Canada’s updated Trademarks Act is set to come into force in early 2019. In June 2017, the the first draft of the new Trademark Regulations. Comments were accepted until July 21, 2017 and will be taken into consideration when revising the draft regulations. Among the notable changes coming in 2019 are Canada’s accession to the Madrid Protocol, the Singapore Treaty, and the Nice Agreement and its classification system. Also significant will be the removal of the use requirement at the time of registration.

COPYRIGHT

2017 continued many of the debates and cases started from the previous year. While some decisions received accolades, others received outright criticism. As was the case in 2016, fair dealing questions came to the fore and hit close to home at 91��ɫ.

Fear Dealing and Post-Secondary Education

In a much anticipated decision, the Federal Court ruled against 91��ɫ in and directed the university to pay an interim tariff to Access Copyright. In 2011, 91��ɫ opted out of the Access Copyright licence due to increasing tariffs and implemented its own copyright guidelines. Crucially, the 91��ɫ guidelines allowed students enrolled in a class or course to receive a single copy through a coursepack or via a posting on an online learning management system if the copying was done in accordance with “fair dealing”. However, the Federal Court held that 91��ɫ did not have any right to opt-out of tariffs and that the university’s guidelines were arbitrary and not compliant with section 29 of the . Among other things, the guidelines operated under the assumption that the use of 10% of a copyright-protected work was “fair dealing” but did not provide an explanation. Quantitatively, this threshold might seem to restrict copying of an entire text. But, as , qualitatively, the parts copied may constitute the “core” of the work, making such use “unfair,” and conceivably allow for the reproduction of the entirety of a work if multiple sections are used across courses and faculties. Further, the court emphasised the school’s failure to comply with the guidelines and therefore, enforced the interim tariff. the inclusion of “education” as a fair dealing purpose played little role in this decision. While much attention on the case framed the important issues with respect to fair dealing, note that the case was not about copyright infringement, but rather whether tariffs imposed by the Copyright Board of Canada are mandatory for post-secondary institutions that use copyright-protected material licensed by Access Copyright. 91��ɫ indicates it will the decision so these questions will continue in 2018 and beyond.

Anti-Circumvention and Technological Protection Measures

Setting precedent in 2017, in the Federal Court applied substantive rules on the anti-circumvention of technological protection measures (TPMs), which were introduced in the Copyright Act 2012. The Federal Court expressed its willingness to enforce the TPMs and protect against circumvention in the digital age. The case involved a corporation named Go Cyber shopping (2005) Ltd., which sold and installed circumventing devices enabling users to play potentially hundreds The Federal Court in the suit filed by Nintendo, awarded $12.7 Million as damages and held that Go Cyber “authorized” copying by providing instructions to download header data without the consent of Nintendo constituting infringement. suggests that by adopting “a broad interpretation of a technological protection measure”, the court confirmed Canadian copyright law’s tough stance on copyright piracy.

Obligations of Internet Service Providers

The ongoing conflict between reached the Supreme Court after the decision of the Federal Court of Appeal (FCA) in 2017. Rogers filed before the Supreme Court to consider the scope of the Internet service provider’s (ISP) obligations under the notice and notice system. The FCA ruled that ISPs can disclose the alleged offender’s identity for free. The decision surprised the industry because it would be easier for copyright holders to that they come to financial settlements.

Data protections

Affirming the trial court’s ruling on the copyright protection of seismic data, the appeal in the Alberta case of was dismissed and appeal by GSI to the Supreme Court was denied. On Appeal, GSI argued that Section 101 of should be interpreted properly. , “The correct interpretation of "disclose" also confers on these Boards the legal right to grant to others both access and opportunity to copy and re-copy all materials acquired from GSI and collected under the Regulatory Regime”.

This decision will ensure copyright protection of seismic data by simultaneously providing a framework to access it.

Canadian content and Copyright-related Reviews

In 2017, the Federal Government also adopted initiatives to protect Canadian creators and introduced a policy framework to extend Canadian content worldwide. On September 28, Mélanie Joly, Minister of Canadian Heritage, announced Later in the year, on December 13, the Government officially announced the Parliamentary Review of the Copyright Act, as mandated by the 2012 Copyright Modernization Act.�� The government also to reform Copyright Board of Canada in August.

U.S. Developments

In the U.S., perhaps the biggest copyright case of 2017 was The case dealt with the issue of whether copyright could subsist in the “pictorial, graphic, or sculptural features” of a “design of a useful article” – in this case, cheerleading uniforms. Ultimately, the U.S. Supreme Court held that such design features as the arrangement of lines and shapes on cheerleading uniforms were eligible for copyright protection, so long as they were separable from the useful article in question. In other words, if the impugned designs were imagined in abstraction – say for example if they appeared on a canvass – and thus eligible for copyright protection, then they would be equally eligible for copyright protection as part of a useful article. Therefore, while copyright cannot protect the shape, cut, or dimensions of cheerleading uniform, those design features that are separable from the functional object may be eligible for copyright protection. And while such a holding is not entirely novel, the Star Athletica decision likely sets a valuable precedent for lower courts that have struggled with the extent to which copyright protects the design features of a functional object.

Fair use was also a hot topic in U.S. courts in 2017, with a variety of interesting outcomes in cases across creative media. In , a raunchy parody of the Dr. Seuss classic “How the Grinch Stole Christmas” was held to be the kind of transformative work that qualifies as fair use. Meanwhile, in , a U.S. district court judge held that unauthorized children’s versions – or “KinderGuides” – of classic books by Hemmingway, Kerouac, and the like did not constitute fair use, but rather infringing use. In music, Drake’s use of a spoken word sample from jazz artist James Oscar Smith was held to be fair use in , and in film, a Star Trek fan-fiction movie was held to be a derivative work and not fair use in .

Copyright Around the World

Internationally, toymaker Lego was successful for the first time in a against manufacturers in China of some near-identical toys. 2017 also saw China clearly establish its growing importance on the international copyright stage, with deals in the book industry and increasing pressure on to meet international standards with respect to copyright licensing. Meanwhile in the E.U., courts held that if they perform an essential role in facilitating piracy of copyright-protected material, and that the may constitute copyright infringement.

IP OSGOODE

In 2017, IP Osgoode celebrated one of our very own, , who has been a guiding force in the Canadian intellectual property (IP) landscape for the past 40 years.�� IP Osgoode and Osgoode Hall Law School hosted a special symposium entitled, “” in celebration of Prof. Vaver’s in recognition of “his leadership in intellectual property law as a scholar and mentor”.

The symposium included a distinguished set of participants drawn from Prof. Vaver’s network of former students, colleagues and research collaborators, and highlighted four main themes of Prof. Vaver’s extensive scholarship: overlap and redundancy in the IP system, legislation and reform, users’ rights, and the importance of history. The luncheon keynote speaker, The , CC,QC (Supreme Court of Canada, 2006 to 2015),�� who was introduced by The , QC (Federal Court of Canada, 2001 to 2016), provided a heartwarming speech that gave the audience a glimpse into Prof. Vaver’s early life and career.

To mark the year��Prof. Vaver��received the��Order of Canada, IP Osgoode medal. The medal will be awarded yearly to an Osgoode student in the graduating class who merits special recognition for outstanding achievements in the area of intellectual property law. The student’s achievements extend beyond academic excellence, and can include significant contributions to research in intellectual property and related areas or exceptional commitment and enthusiasm through their participation in intellectual property-related extra-curricular activities.

Following the previous year’s successful partnership with Norton Rose Fulbright LLP, the IP Osgoode Innovation Clinic continued to grow in 2017. On behalf of IP Osgoode, Professor D’Agostino entered into an exciting with the International Law Research Program at the Centre for International Governance Innovation (CIGI) to support the Innovation Clinic. The IP Osgoode-CIGI partnership stems from a mutual desire to facilitate the discovery, dissemination and application of new knowledge concerning practical IP law training of law students and the desire the to facilitate the provision of basic IP legal services to early stage innovators and start-ups. IP Osgoode hired Dr. as the first full-time Innovation Clinic Coordinator. The addition of a full time coordinator has allowed for a substantial increase of the Clinic’s carriage of client files and expanded the Innovation Clinic’s outreach beyond the 91��ɫ and Osgoode Hall communities as well as the Toronto and 91��ɫ Regions into the Waterloo Region and throughout Ontario.

The partnership also supports Prof. D’Agostino’s research project, which consists of a critical evaluation of the Innovation Clinic model as well as clinic models elsewhere, and identifying potential opportunities for developing a sustainable network of clinics in Canada and beyond. The research and report will further dialogues between industry, law schools, law societies, the Canadian Intellectual Property Office (CIPO), levels of government, and other relevant stakeholders regarding the creation of a network of IP law clinics across Canada. This work will be published in 2018 and help inform and support CIPO and federal government initiatives to increase IP awareness, accessibility, and education in Canada.

Top 10 most read 2017 IPilogue articles

Giuseppina D’Agostino is the Founder & Director of IP Osgoode, the IP Intensive Program, and the Innovation Clinic, the Editor-in-Chief for the IPilogue and the Intellectual Property Journal, and an Associate Professor at Osgoode Hall Law School.

With contributions from Stephen Cooley (IPilogue Editor & Osgoode JD Candidate) and Haramrit Kaur (IPilogue Editor and Osgoode Professional Development LLM (Canadian Common Law) Candidate) on Copyright, Sebastian Beck-Watt (IPilogue Senior Editor & Osgoode Graduate) on Trademarks, and Bruna Kalinoski (IPilogue Editor & Osgoode LLM Graduate) on Patents.

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If you were born in the late 1980s or early 90s or have young children, you have probably encountered a red-cheeked mouse called Pikachu or any of the hundreds of other that exist in the �ʴǰ�é���Dz� media franchise. While the premise of catching colourful creatures is rather straightforward, its simplicity and charm belie its commercial value.

The �ʴǰ�é���Dz� franchise started as a pair of handheld video-games but currently spans 19 television seasons, 20 movies, 10 cinematic shorts, 2 television specials, a 20-year-old trading card game, 27 video games, a multimillion dollar smartphone application, and many other enterprises. So, when considering the substantial amount of success the franchise has had, why might the legitimacy of the �ʴǰ�é���Dz� name not be held in the same esteem as other brands? One possibility is that the youth-oriented nature of the brand casts doubt on its potential; however, with its revenue earnings standing at ��the name and associated characters are well worth protecting.

The Difference a Name Makes

The �ʴǰ�é���Dz� brand can have a substantial impact on the public’s perception and purchasing habits of goods. For example, compare and contrast the success of ��last two mobile gaming applications: ��and . Both games feature location-based, augmented reality gameplay with king of the hill style competition between players. However, there is a drastic difference in the success of the two games. Despite being released two and a half years earlier, ��with only a tenth of ��on the Google Play store. Given the similarities in the core mechanics of gameplay, the fact that both games were developed by the same company (Niantic), and that both use the same map databases on which their augmented reality features work, it seems likely that the main contributor to the difference in public reception of the titles is the �ʴǰ�é���Dz� branding. Thus, when considering the protection of intellectual property rights for even youth oriented products, it is important to consider the full scope of the effects a simple change in name and characters can have on otherwise similar products.

Fandom

The �ʴǰ�é���Dz� universe has experienced a significant amount of growth since its inception, which is partially attributable to the thriving fandom and associated subculture. Having mediums to discuss interests or share themed artwork is��good publicity that compounds the awareness and recognition of the name-brand. While this sense of camaraderie among consumers has helped substantially, sometimes the limits of what is lawful are crossed. ��sought an injunction over the inclusion of two �ʴǰ�é���Dz� characters, Pikachu and Snivy, in promotional material for a �ʴǰ�é���Dz� themed event. At first, it seems like a straightforward case: the defendant did not acquire permission to reproduce the two creatures and the plaintiff wanted their IP rights respected. The peculiarity of this case comes from its context within the tech, fantasy, sci-fi, gaming, art, and internet subculture.

The contested promotional material was for a sold-out, �ʴǰ�é���Dz� themed party at the , a large and well-established gaming convention founded��in 2004 by the authors of . The ��is partly attributable of these types of social events, where like-minded individuals can meet, discuss their interests, and foster recognition for their hobbies. So, when a �ʴǰ�é���Dz� themed party to celebrate the start of PAX is cancelled, there is some damage to the promotion of the subculture itself. That is to say, the people who are using the intellectual property of others unlawfully in a promotional context are often also the��individuals who have indirectly developed the franchise and contributed to its popularity.

To the disappointment of many fans, the �ʴǰ�é���Dz� themed party was cancelled because of the lawsuit. The plaintiff, �ʴǰ�é���Dz� Company International Inc., put forth an initial settlement offer for damages and its attorney fees. In response, the self-representing defendant who organized the party��turned to the �ʴǰ�é���Dz� fandom through crowd-funding to cover the costs of the settlement and successfully raised enough money. However, the defendant, Ramar Larkin Jones, did not respond in time to the offer and published a ��from the �ʴǰ�é���Dz� Company detailing the settlement, which is generally an unwise decision in the normally confidential process of settlement discussions. What the this did achieve for the defendant was substantial community outcry over the lawsuit, with , , , and many other publishers within the subculture expressing dissatisfaction with the �ʴǰ�é���Dz� Company suing one of its own fans. In response to this backlash the �ʴǰ�é���Dz� Company lessened the settlement to a against the defendant’s unlawful reproduction of copyrighted material, who accepted the new resolution.

Moving a Franchise and��its Subculture Forward

Obviously, lawyers��cannot allow the free use of copyright-protected images, like our friend Pikachu, without any restraint. However, by being overly inflexible about the use of any character with a vague likeliness to a �ʴǰ�é���Dz� the brand itself may be damaged. Consider Maroon 5’s latest music video for their song , which features a star-studded cast of celebrities, including Ed Helms, Sarah Silverman, Vince Vaughn, and Shaquille O’Neal, being chased by throngs of people looking to “catch” them on their smart phones in a manner similar to �ʴǰ�é���Dz� Go’s mechanics. There is a strong resemblance in the video between certain costumes and �ʴǰ�é���Dz� characters, with front-man Adam Levine’s costume appearing to be based on the Squirtle �ʴǰ�é���Dz�. Yet the homage paid by Maroon 5 is likely to be of great benefit to the �ʴǰ�é���Dz� brand due to the association with a . This becomes��especially important when considering that the widely popular �ʴǰ�é���Dz� Go game has lost . Ultimately, the protection of IP rights for a franchise must be a careful balancing act that does not preclude the possibility of growth through fandom, since��the fans are the same people��who are responsible for the brand’s success.

Dominic Cerilli is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

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These��questions were��posed��on February 25th when Osgoode Hall Law School in collaboration with the University of Toronto, Faculty of Law, held Unpack��SODRAC, a symposium aimed at unpacking the myriad of issues covered in the 2015 Supreme Court case , [SODRAC].

Unpack��SODRAC was organized by Osgoode Associate Dean and University of Toronto Professor . The symposium��covered three main topics from the case: Technological Neutrality, Reproduction Rights, and Mandatory Tariffs.

The parties in this case include the appellant CBC, and respondent SODRAC. CBC, Canada’s national broadcaster, is responsible for the creation of many television programs and movies.��SODRAC is a french-language collective society in Quebec within the statutory definition found in of the Act.��The facts revolve��around��incidental copies made by��CBC during the video editing and broadcast preparation process. These are referred to as ‘broadcast-incidental’ copies.

Interveners on the case included Howard P. Knopf and David Lametti from the Centre for Intellectual Property Policy and Ariel Katz, David Fewer and Jeremy de Beer from the Samuelson-Glushko Canadian Internet Policy and Public Interest Clinic, Casey M. Chisick, Peter J. Henein and Eric Mayzel from the Canadian Musical Reproduction Rights Agency Ltd., the Canadian Music Publishers Association and the International Confederation of Music Publishers, and Barry B. Sookman and Daniel G. C. Glover from Music Canada, the International Federation of the Phonographic Industry, the Canadian Council of Music Industry Associations, the Canadian Independent Music Association and Association québécoise de l'industrie du disque, du spectacle et de la vidéo.

Licensing for musical works often uses a 'through to the viewer' model, where synchronization (copies created during editing of the work), broadcast-incidental (copies created during broadcasting of the work) and distribution-incidental (copies created during the distribution of the work) licenses are bundled together. This was not the case with the licensing scheme used by SODRAC.

CBC argues that broadcast incidental copies are the result of technological efficiency and it would contravene the Principle of Tech Neutrality to compensate SODRAC for ephemeral copies of their repertoire whose use has nothing to do with copyright holders' legitimate interests.�� SODRAC argues they are entitled by the Act (and by the decision in the 1990 case ��[Bishop]) to remuneration for the ephemeral copies.

The first panel of the day discussed the emerging principle of technological neutrality in Copyright. The panel was chaired by Professor Giuseppina D’Agostino, and included Craig, Dean Gregory Hagen (University of Calgary), Professor Cameron Hutchinson (University of Alberta), and Richard Pfohl (General Counsel, Music Canada).

Craig surveyed the spectrum of case law that includes three different types of neutrality: Media neutrality at one end and a purposive approach to neutrality at the other.�� This spectrum reflects the fact that prior to SODRAC there was not a clear consensus on the spirit and the content of the principle of technological neutrality. Jurisprudence on this principle stems from two main cases: 1990's Bishop and��2012's����[ESA v SOCAN]. Justice McLachlin (as she was), writing for the court in Bishop,��held that s 3(1) of the Act did not include the right to make "ephemeral" recordings for the purpose of facilitating broadcasting. This meant that licensing was required for both synchronization copies of works and incidental copies.

At the conservative end of the spectrum, the interpretation of media neutrality was introduced in 2006 in����[Robertson]. In that��case, neutrality meant that the Act continued to apply in different types of media, and that actions undertaken when using a new technology should be reviewed rather than the technologies net effect. This position is echoed in Justice Rothstein's dissent in ESA.

In the middle of the spectrum is the functional equivalence approach found in .��In this case, Justice Abella explains that technological neutrality "seeks to have the Copyright Act applied in a way that operates consistently, regardless of the form of media involved, or its technological sophistication."

The purposive approach to neutrality was introduced by Justices Abella and Moldaver writing for��the majority in��ESA. This case represented a major evolution in the interpretation of the Act, and Technological Neutrality, demonstrated by the following quote:

"[5] ... The principle of technological neutrality is reflected in s 3(1) of the Act, which describes a right to produce or reproduce a work “in any material form whatever”. In our view, there is no practical difference between buying a durable copy of the work in a store, receiving a copy in the mail, or downloading an identical copy using the Internet. The Internet is simply a technological taxi that delivers a durable copy of the same work to the end user. "

The underlying technological neutrality issue in SODRAC is the statutory interpretation of the Act, and the Court's refusal to displace the ordinary meaning of the text. The modern Canadian approach to statutory interpretation is Driedger's Modern Principle, as identified in ��[Rizzo].

Specifically, the question is when principles of interpretation (such as the principle of technological neutrality) can displace the ordinary meaning of a statute. This is argued in SODRAC at ]. Exceptions exist in the Act for ephemeral/incidental copying under and .��However, CBC's incidental copying did not fall under them. Based on the legislative history, including failed lobbying by broadcasters to , the majority concluded that it was not possible to displace the ordinary meaning of the Act.��Panelist Greg��Hagan argued��that the majority's interpretation missed the point made in Rizzo at ], which��held that the ordinary meaning could��be displaced if it led��to an unreasonable and/or absurd outcome.

The principle of technological neutrality in statutory interpretation makes it clear that functionally equivalent technologies (in this case the delivery of television and movie programming using a digital content management system versus an analog one) should be treated equally by the Act.�� As broadcasters increasingly deliver their content digitally, SODRAC is problematic because it offers a potential disincentive for the use of these innovative technologies.�� As it stands, there is a good case to make for parliament to expand the incidental copying exceptions under and to avoid this absurd outcome and continue to encourage innovation in media delivery.

Paul Blizzard is a JD Candidate at Osgoode Hall Law School.��Twitter: .

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The public domain as the “storehouse of the raw materials of creative expression, freely available to all.” Integral to��the copyright system, access to the public domain facilitates��the spread of knowledge as well as innovation, artistic freedom and more. Furthermore, access to the public domain should ideally allow for dialogue and the debate��of various ideas. Some believe in “a public domain that reflects and protects the dialogic processes of culture on the face of increasingly restrictive intellectual property structures.” ��compare it to freedom of speech, claiming that “both the public domain and the principle of free speech construct, or aim at constructing, a communicative sphere, where people can interact with each other in various circles, whether it is an interpersonal circle, a communitarian one or a wider political circle.” No matter what concept you ascribe to, however,��dissuading��editors from publishing newly edited versions of Mein Kampf runs counter to the��spirit of a robust��public domain. What is important here is not the unrestricted availability of the manifesto as a symbol of humanism-contradicting��ideologies, but rather the unrestricted access��to��a pedagogical tool that can spark��dialogue through commentaries and annotations, and the contradictions or lies these notes can highlight.

Mein Kampf’s history after Hitler’s death also justifies a reedited version of the manifesto. Having inherited the rights over the book from the Nazi leader’s estate, the State of Bavaria was able to the copying and printing of new editions in all of Germany. Considering the historical and legal context, that decision was understandable, but ultimately incompatible with the copyright system.�� The public domain plays a crucial role in the of intellectual property, a system defined by monopolies and exclusive rights. By preventing further publications, the State of Bavaria used this very system as a tool for censorship, when the systems'��primary goal is actually to . If the public domain is indeed to act as a balancing sphere, then its respect calls for the existence of an annotated, explanatory version of Mein Kampf as opposed to yet another form of censorship.

The reediting of Mein Kampf is even more relevant in today’s context than it ever was. Once it falls into the public domain it will be available to anyone and everyone via the Internet. The digitalization of our society is an to the access of the public domain, but it also makes ideas even easier to propagate. The State of Bavaria’s ��to limit the distribution of Mein Kampf in other countries have been mostly unsuccessful, as Hitler’s book has become quite popular in certain regions of the world, including��the . Mélenchon was right to say that , and concerns coming from the propagation of Nazi ideology��in an already fragile Europe are legitimate.��The counteracting existence of a pedagogical,��annotated version of the manifesto, however, will be more than necessary to fight the possible misuse of Mein Kampf and explain the pitfalls and horrible consequences that can arrive from such a point of view.

Allowing the publication of Mein Kampf may seem counter-intuitive, as no one can deny the dangers of the manifesto’s ideology. We cannot deny, however, that the book is part of our global history and��heritage. The public domain plays an essential role in��the ��by refusing to��edit��out��historical lows so that we can avoid repeating the��mistakes of��the past. Its purpose is to let us grow as a society, through access to��knowledge.��By not making a distinction between immoral and moral works, the public domain has decided to stand by the belief that “.”

Aicha Tohry is an IPilogue Editor and a JD Candidate at Université de Montréal.

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On November 4th and 5th 2015 the Italian Judge Permanent Training Program for the Court of Milan (Hon. Francesca Fiecconi), with the collaboration of AIPPI Italian Group (Ms Renata Righetti, Avv.ti Giorgio Mondini, Simona Lavagnini, Fabrizio Sanna) and Franzosi Law Firm (with a team composed by Prof. Avv. Mario Franzosi, Avv.ti Gianluca Campus and Anna Maria Stein), organized in the Aula Magna of the Court of Milan a Congress for practitioners and academics from all over Europe aimed at discussing the most recent evolutions in the copyright law, taking into consideration the reform proposals indicated by the Europen Commission in the .

The introduction of communications via Internet and the wide use of digital contents have dramatically demonstrated that most of the national copyright laws need to be re-evaluated and that the borders between communication, distribution and reproduction rights should be reviewed taking into consideration needs and structure of digital economy. The Digital Single Market Strategy for Europe highlights that the reform of copyright law plays an important role in achieving the goals indicated by President Jean-Claude Juncker.

EU legislative proposals for a reform of the copyright regime are expected at the end of 2015 and early 2016. This made the Congress a strategic occasion for information and discussion, a thinking arena, with the purpose of comparing national approaches on copyright issues, looking to a European view.

The Congress has been organized in three sessions, dedicated respectively to: (1) Distribution of digital contents on the internet; (2) Copyright infringements on the internet and the enforcement of rights; (3) Collective rights management in the digital era. Each session has been followed by a Panel Discussion dedicated to academics, judges, lawyers, technicians, collective rights managers and in-house lawyers.

Have joined the Congress, among others, Judges specialized in IP matters (Hon. Marina Tavassi, Amedeo Santosuosso, Francesca Fiecconi, Francesco Cajani, Giovanni Canzio and Roberto Bichi) the European Commission, the World Intellectual Property Organization, the Max Planck Institute (Munich), the Institute for Information Law (IviR) of the University of Amsterdam, the Italian Authorities for Communications (AGCOM) and for Competition (AGCM), the Universities Milan Bicocca, Milan Bocconi, Ferrara, Washington, the collecting societies SIAE, Nuova Imaie, SCF, IFPI and Google, Sky Italia, Mediaset, V-Nova, Italiaonline, Sinapsi. The Congress Proceedings will be in English and in Italian and will published in 2016 both in electronic form and in paper form with Aracne Editrice in the book collection “”, directed by Prof. Oreste Pollicino.

Speeches and Panel discussion focused on the evolution of the market of digital contents that requires copyright rules fitting the purpose of enabling better cross-border transactions, at least at European level and possibly at a worldwide level. In detail the Speakers analyzed the core actions indicated in Digital Single Market Strategy. Mr Marco Giorello (Deputy Director of the Copyright Unit of the DG Connect – European Commission) has introduced the legal framework and the roadmap for the implementation of the Digital Single Market Strategy for Europe (“DSMS”). The DSMS could have a huge impact on the reform of copyright law at a European level. It is anyway still matter of discussion which direction should take this reform.

For Prof. Mario Franzosi (University of Washington) the entire regime of copyright should change in order to face the challenges of the digital era. If the regime does not change, it could perish. Prof. Vincenzo Franceschelli (University of Milan Bicocca) has highlighted that is of the utmost importance to balance the right to economic exploitation of copyrighted materials with the right to private use of the same materials. Without such balance also the review of the Infosoc Directive (included in the DSMS) could lead to a “payable information society”. Also Hon. Vittorio Ragonesi (Italian Supreme Court – Legal Advisor Italian Foreign Office) suggested that the selection of conducts that constitute copyright infringement plays an important role. A possible balance could be found at the level of the exceptions to exclusive rights on copyrighted materials.

Other Speakers from European countries suggested possible ways for modernizing copyright law. For Prof. Bernt Hugenholtz (Institute for Information Law, Universiteit van Amsterdam) despite 25 years of copyright harmonization at a EU level, territoriality of copyright is left mostly intact and copyright protection is limited to national borders. An effective response to territoriality could be the review of the Sat/Cab Directive and the extension of the satellite broadcasting rules to Internet. On the other hand Prof. Dr. Michael Lehmann (Max Planck Institut Munich) analyzed the definition of Digital Contents in the Consumer Rights Directive and the recent ECJ case law on used software (Usedsoft case) and realized that the ECJ-decision is valid only for software: interprets the Software Directive. But at the time of the Software Directive every on-line activity was classified as a service. In the digital era we must treat on-line and off-line delivery of all types of “digital contents” as equal.

With reference to the topic of copyright infringements on the internet and the enforcement of rights, Hon. Francesco Cajani (Public Prosecutor – Pool for Cybercrime of the Court of Milan) has gone through the Google-Vividown case law in Italy in 2010, highlighting that the interpretation of the Public Prosecutor’s Office of Milan with reference to the liability of the ISP for managing personal data has been essentially confirmed in recent years by the case law of the European Court of Justice (C-131/12 Mario Costeja Gonzalese e AEPD Vs Google Spain e Google Inc.). Mr Giorgio Greppi (Italian Communication Authority – AGCOM) has reconstructed the legal basis for AGCOM power of control on on-line copyright infringements in the Italian legal system. Since 31st March 2014 the Regulation is in force in Italy and AGCOM has already managed 380 claims raised by copyright holders. But Mr Thomas Dillon (Counsellor, BRIP Division, WIPO) has remebered the different interpretations raised by national courts on the extent of liability of ISPs. National courts implement the copyright laws in divergent ways, in particular with regard to injunctions against intermediaries.�� Such orders (and their refusal) may certainly have cross-border consequences. The Digital Single Market Strategy for Europe should face the challenge of overcoming such fragmentation among national approaches.

Also the collective rights management is a core topic for the digital era. Hon. Gabriella Muscolo (Italian Competion Authority – AGCM) considers that antitrust rules and an harmonized legislative framework are complementary means for implementing an effective digital single market of collective rights. The current scenario underlines a contrast between: (i) the request by the users of access to digital contents anytime and anywhere; (ii) the principle of territoriality of copyright and the complexity in copyright clearance. In the light of the above, an efficient and transparent system of collective rights management at a European level could represent a solution for implementing cross-border licensing and for reducing transaction costs.

Ms Stefania Ercolani (SIAE – Director of Multimediality Department) has indicated that also historical factors impacted the area of collective rights management. In Italy there is a dichotomy between the collective management of copyright and the collective management of neighbouring rights (only for the latter the Italian legislature has introduced a certain level of competition). It will be interesting to verify how the implementation of the Collective Rights Management Directive could impact both sectors.

P.S. a long form of this Conference Report will be published in the Journal of European Consumer and Market Law (December 2015)

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Which is the legal framework surrounding Internet Service Providers (ISPs) in the EU, when it comes to copyright protection? The following article analyses the importance of ISPs in the enforcement of rights in Cyberspace and in balancing different interests.

This work finds its roots in the essay composed in the context of the LSE Summer School 2015 Cyberlaw course attended by the author, during which he was given a full introduction on all the hot topics covered by Information Technology Law.

SCENARIO

A European ISP, EasyTelco, leases to its clients its fiber-optic cables to deliver fast Internet access.
A movie producer, DotCom Entertainment, has recently informed EasyTelco that some of its clients are allowing users to access a website based in Greece, called FreeShare.com, which hosts unauthorised copies of some of the products of DotCom Entertainment. Hence, they ask EasyTelco to block access to FreeShare.com and to any other site on which they know are illegally hosted DotCom Entertainment movies.

THE LAW

As a matter of simplicity, we will not domicile EasyTelco in any EU State in particular, in order to hold a more generic point of view. Moreover, we will focus only on the ISP regime, omitting the position of the other subjects involved in the case.

First, it is easy to recognise that DotCom Entertainment, being the author of the multimedia products involved in the dispute, holds a rightful copyright over them, which includes, among others, an exclusive right to make or authorise the making of copies of the work and to decide whether to issue those to the public. Thus, it is copyright infringing to engage in unauthorised copying for commercial purposes, and the law gives action on that to the right holder.

In the light of this right, the position of EasyTelco is a complex one, because it lays at the very cross-over between contrasting interests, as we will see.

The ISPs legal status has been shaped by the European Electronic Commerce Directive[1] and the Copyright and Related Rights in the Information Society Directive[2]. As a matter of fact, Art. 8(3) of the Copyright and Related Rights in the Information Society Directive creates a “notice and take down” system:

��“Member States shall ensure that rightholders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe a copyright or related right.”

However, protection of copyright needs to be balanced with the safe harbour provision of the art. 15(1) of the Electronic Commerce Directive, which says that:

��“Member States shall not impose a general obligation on providers, when providing the services covered by Articles 12, 13 and 14, to monitor the information which they transmit or store, nor a general obligation actively to seek facts or circumstances indicating illegal activity.”

The article refers to art. 12, 13 and 14, which all define different types of ISPs, to identify the subjects benefiting from the protection of the above-mentioned article. In brief, the three articles set forth that “mere conduit”, caching and hosting providers shall not be liable for the information they transmit, cache and host, unless they are made aware of their (defamatory, copyright infringing, etc.) nature. In particular, art.12[3] is the one relevant for our purposes, as long as it defines the “mere conduit” provider as whoever allows transmission of information in or access to a communication network, which happens to be the exact activity of EasyTelco. As a final point, the third paragraph of the article allows norms such as art.8 of the Directive on copyright protection, stating that:

“3. This Article shall not affect the possibility for a court or administrative authority, in accordance with Member States’ legal systems, of requiring the service provider to terminate or prevent an infringement.”

Therefore, EasyTelco should not be held liable for copyright violations occurred within its connection services, as long as it is unaware of them, according to the general prohibition set forth by art.15 Ecommerce Directive on imposing a general duty to monitor the content of communications. However, following the “notice and take down” system, it is likely that a court would grant an injunction to the claiming party to oblige EasyTelco to unable access to copyright infringers such as FreeShare.com.

AN EXAMPLE FROM THE UK

An English case helps us understanding how courts balance the two contrasting EU provisions: Twentieth Century Fox and ors v British Telecommunications plc (Newzbin II) [4]. The “Studios” were trying to close the P2P sharing website Newzbin, liable of hosting copyright infringing materials. The claimants decided to seek an injunction under s.97A[5] of the CDPA 1988, which mirrors art.8 of the Copyright and Related Rights in the Information Society Directive, against BT, to oblige it to prevent users to access Newzbin via the inclusion of the URL in the Cleanfeed blacklist.

As a matter of fact, the majority of the ISPs in the UK have implemented since 2004 a technical system developed originally by BT, called Cleanfeed, which blocks all the requests from the UK to any webpage inserted in a blacklist because of hosting child abuse related images. This content blocking solution has proved to be the ideal solution to inhibit access to sites which have been found infringing copyright during their activities, but whose servers are located abroad, consequently voiding any chance of direct enforceability of a UK court order. Then, when BT claimed violation of art.15 of the Ecommerce Directive, Arnold J pointed out that, due to the previous existence of the Cleanfeed filter, adding a single site to the blacklist could not be regarded as imposing a general obligation, so he granted the injunction to the claimants. In arguing that, he referred to a similar Belgian case[6] at that moment under the scrutiny of the ECJ, where the Belgian authors society was asking the national ISPs to cover all the communications across their networks with a totally new monitoring system to prevent copyright violations. Arnold J underlined the striking difference between the two cases, and that only the Belgian one implied a violation of art.15, as it was eventually ruled by the ECJ, because it obliged all Belgian ISPs to create, at their own expenses, a brand new filtering scheme.

THE DEBATE

Nowadays, ISPs are one of the most powerful tools to regulate cyberspace and to enforce laws and court orders, in a manner that remembers the concept of “regulation by architecture” theorised by Lawrence Lessig[7].�� As a result, they are at the very intersection of various interests, from copyright to freedom of expression, right to privacy and the preservation of a functional and efficient Internet.

”Originally the European legislature made a lot of efforts to restrain intermediaries from choosing
party and made sure they would take up a merely neutral-passive role. This is clearly reflected by the
special exemption regime installed by the E-Commerce Directive that was adopted in 2000 as a
response to the disparities that existed amongst Member States concerning the liability of service
providers acting as intermediaries which prevented the smooth functioning of the Internal Market”[8].

However, legislators are constantly looking for new solutions to regulate them, as the French HADOPI system. HADOPI (Haute Autorité pour la Diffusion des Oeuvres et la Protection des droits sur Internet) is an administrative authority to whom copyright holders may notify infringements of their copyright, hence activating a so-called “three strikes procedure”, which consists of two consecutive warnings, first an email, then a more formal letter, down to the last step if the user continues in his offending activities, which contemplates a temporary suspension of internet access. Concerns related to the constitutionality of the new law were raised before its approval by the Conseil Constitutionnel, which eventually led to introducing the possibility for the user to appeal to a court against the HADOPI’s suspension of Internet access. Similar multi-strikes approaches have been followed by countries like U.S., Eire and the UK with the Digital Economy Act 2010, but all of those hide a problem of fair balancing between the rights at stake.

There are clear problems surrounding that design-based manner of enforcing law on the Internet, unquestionably one is the power to limit freedom of expression, a fundamental right as acknowledged by the ECHR (art.10), which is given to an administrative authority, expression of the government, and not to the judiciary.

Again, as soon as copyright holders’ claims start growing, it is not clear how the courts will deal with extending blocking techniques to all the offending users without contrasting with the general prohibition of art.15 of the Electronic Commerce Directive and the neutral role of ISPs it wants to preserve. Lastly, it might be argued that also serious privacy matters arise when an administrative body such as HADOPI requires surveillance over a citizen. Indeed, art. 8 (2) of the Human Rights Act allows some limitations of the right to privacy one enjoys only for, amongst others, “the protection of the rights and freedoms of others”, which could be the case when enforcing copyright. Nevertheless, are we sure it is best way to allow a body of the Government to compress a fundamental right just to protect an economic interest of some corporations? An authoritative point of view on the subject was expressed in 2008 by the ECJ in the Spanish Promusicae v. Telefonica, in which a copyright holder asked the ISP to communicate the personal data of users of Kazaa to allow suing them in civil trial. The court decided that there was no obligation under UE law for Member States to impose a duty to disclose personal data to ensure copyright protection.

Curiously, it is interesting to notice how even in Italy the one year-old regulation on online copyright issued by AGCOM, it is under review at the moment by the Italian Constitutional Court. The reasons behind this is that the Authority, quiet similarly to HADOPI in France, wants to protect copyright holders up to blocking access to offending sites after a summary hearing of the parts involved. As distinctly reported by Marco Bellezza in an article appearing on Medialaws.eu[9], what basically has been challenged is that this procedure underlies some critical constitutional issues, i.e. the fact that orders to limit ��a fundamental right as freedom of expression in favour of a so-called “economic freedom” should not come from a regulation of an executive body, but from an act of parliament, and together with the chance of battling them in court, not before a mere administrative authority.

[1] Dir. 2000/31/EC of the European Parliament and of the Council of 8 June 2000, OJ L 178, 17 July 2000.
[2] Dir. 2001/29/EC of the European Parliament and of the Council of 22 May 2001, OJ L 167, 22 June 2001.
[3] “(1)Where an information society service is provided that consists of the transmission in a communication network of information provided by a recipient of the service, or the provision of access to a communication network, Member States shall ensure that the service provider is not liable for the information transmitted […]“
[4] [2011] EWHC 1981 (Ch).
[5] “(1)The High Court (in Scotland, the Court of Session) shall have power to grant an injunction against a service provider, where that service provider has actual knowledge of another person using their service to infringe copyright.”
[6] Scarlet Extended SA v SABAM. (C-70/10) [2012] ECDR 4.
[7] Lessig, L. (1999) “Code and Other Laws of Cyberspace”. New 91��ɫ: Basic Books.
[8] Werkers, E. Intermediaries in the Eye of the Copyright Storm – A Comparative Analysis of the Three Strike Approach within the European Union (August 15, 2011). ICRI Working Paper No. 4/2011.
[9] Bellezza, M. #dda online: la questione di costituzionalità e il regolamento AGCOM. Retrived: 05/08/15, from: http://www.medialaws.eu/ddaonline-la-questione-di-costituzionalita-e-il-regolamento-agcom/

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When Rogers locked up a 12-year, $5.2 billion dollar deal to broadcast NHL hockey in Canada in 2013, CBC was forced to launch what some sources are reportedly calling a ��featuring��layoffs��of over 2000 employees. Despite these changes, CBC promised��Canadians some of coverage of the Toronto 2015 Pan Am��Games��across television, online and mobile platforms, in both English and French. This article provides an overview of��the��key legal issues��impacting CBC's ability to fulfill its promise to the Canadian public.

Broadcasters' Rights

Advances in communication technologies have revolutionized the ways in which billions of people around the world take part in major sporting events. It is imperative that the��rights of individuals to remotely view the events is balanced with the legal rights of the host broadcaster.

According to the World Intellectual Property Organization (WIPO), the sale of broadcasting and media rights is now the for most sports organizations. Meanwhile, the royalties that broadcasters like CBC earn from selling their exclusive footage to other media outlets is what allows them to invest in the expensive technical work required to provide top-quality coverage.

For the Pan Am Games, CBC has already sold broadcasting rights to a number of different broadcasting companies, including: ESPN (USA), ESPN Deportes (USA), TyC (Argentina), Claro Sports (Mexico) and Rede Record (Brazil). Through these broadcasters alone, in the Americas.

Retransmission of the Games

Retransmission occurs when off-air broadcasts are picked up by a transmitter, and sold as part of a package to subscribers outside that broadcaster's reach. For the Games, CBC has the right to authorize or prohibit rebroadcasting, fixation and reproduction of their broadcasts. The Copyright Board of Canada determines the royalty rates that these re-transmitters must pay to use their broadcasts.

Royalty rates are calculated based on a formula that is largely based on TV audience ratings, with a new tariff being set every 5��years. The most recent tariff negotiations,��which are outlined in detail in the , were��received as a major victory for rights holders, who the rate per subscriber per month and CRC's share of the total Canadian retransmission royalties. These changes��represent a combined $3 million more annually for broadcasters, in comparison to 2009.

Growing Piracy "Contaminating" Live Sports

In addition to the broadcasters showing the Games, there will also be many��illegal peer-to-peer streams. In recent years, these streaming sites had improved to include��HD content, interactive program listings (also known as EPGs)��and other attractive��features such as live��social media updates. This has especially been a problem for live sporting events, considering the pirate does not need to pay for the bandwidth that enabled HD resolution, allowing these sites to compete with legal offers for 'free'.

Although host broadcasters could try to go after every individual they believe to be infringing their copyrights, this strategy��can be disastrous from a public relations standpoint (if the reported fallout from the�� from ten years ago are any indication). Even if done for legitimate reasons, suing one's customers may be a dangerous��business model. Additionally, with reporting that the number of illegal peer-to-peer sites has doubled every six months for the past two years, viewers have countless options and little reason to stop streaming.

One Possible Solution?

Some suggest that technology itself might offer a way to curb the piracy issues that currently affect broadcasters. Imagine if something similar to the ��(which is designed to listen to the environment of the user), could be integrated into live streaming apps to detect streams that potentially infringe copyright. However, the terms of use would have to be revised to include consent to this type of monitoring while the app is in use, which raises a number of additional privacy concerns.

What is certain is that illegal live streams are finding ways for sports fans to circumvent the offerings of��public broadcasters,��and these Pan Am Games will be no different.

The post CBC vs. The World: Let the Broadcasting Games Begin appeared first on IPOsgoode.