Pankhuri Malik is an IPilogue Writer, IP Innovation Clinic Fellow, and an LLM Candidate at Osgoode Hall Law School.

On , the Delhi High Court protected the title of the iconic Bollywood movie “Sholay” from trademark infringement and passing-off by a U.S. based company, as well as its Indian affiliates and founders.

The lawsuit was filed in 2001 when the defendants were found to have registered the domain name ‘www.sholay.com’ for its website. Additionally, the defendants were also found to be publishing a magazine with the same name and offering for sale various merchandise using content from the movie, including its title, in the same logo script. Through its website, the defendants were found to be offering various electronic services, such as web-chat, e-greetings, horoscopes, classifieds, and Bollywood news.

About “Sholay”

The iconic film “Sholay” was released in India in 1975 and became the biggest record-breaking film in the history of Indian cinema. The movie ran in fully packed theatres until 5 years after its release and made history on numerous occasions., The High Court of Delhi has previously the widespread popularity of Sholay and rights in its’ title and content.

Defences raised

The defendants did not deny their use of the impugned marks. The defendants however contended, in their written response, that:

1. Film titles are not entitled to IP protection;
2. There is no probability of confusion between the defendants’ business and the plaintiffs’ movie;
3. “Sholay” is a dictionary word (translation: embers)

These defences were considered by the court separately. Regarding confusion, the court held that the internet has created an additional market for “Sholay”. The popularity of the film, along with its widespread availability on the internet, would lead individuals to consider the defendants’ goods and services to be “off-shoots” from the film. The court also held that since the defendants’ website is popular within the Indian community in the U.S., the final demographic of the website is yet unclear. This, in addition to the use of an identical logo and marks by the defendant, creates a “”.

 Can movie titles be protected as trademarks in India?

It is settled law in India (and Canada) that titles of movies, books, songs etc. are not eligible for copyright protection. However, Indian courts have trademark protection to from passing off where:

1. The title has acquired a secondary meaning; and
2. There is likelihood of confusion of source, affiliation, sponsorship or connection of potential buyers/audience/viewers.

Accordingly, the court that Sholay has acquired such a reputation over the past (almost) 50 years that the word Sholay connotes only that film and none other.

In accordance with the above findings, the High Court imposed an injunction restraining the defendants from using the mark Sholay and any images from the film for its business.

What about Canada?

As stated above, Canadian copyright law also does not  protect titles of works. However, unlike India, Canadian courts also trademark protection to titles. The Federal Court of Canada last addressed this issue in where protection of a book title as a trademark was refused.

Canadian courts have not addressed this issue in the past decade. It will be interesting to see if the Courts’ stance has changed, given the increasing prevalence of the internet and streaming of content, and sale of artwork etc. in recent years.

The post Rights in Titles: Delhi High Court Affirms Rights in the Title of Iconic Bollywood Film appeared first on IPOsgoode.

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

Russian theatres are turning to pirated films to stay alive during these trying times - and it may not be working. , some theatres in Russia have resorted to screening pirated movies to offset the Hollywood sanctions while others are practicing more caution by renting out spaces to show the films to certain individuals, with or without a fee.

Following the Russian invasion of Ukraine, Hollywood has protested by putting a halt to the release of films in Russian theatres. , going one step beyond its initial commitment to pause all future projects and acquisitions in the country, thereby putting an indefinite stop to the development of four Russian originals. Shortly after , marking the general suspension of the US film and TV business in Moscow. The harsh sanctions have particularly been interesting because . In fact, to ensure that their films would be released in Nazi Germany, Hollywood used from the credits during the 1940s.

Russians are avid cinemagoers and are particularly hard-hit by the sanctions. , Russia had the highest number of admissions in Europe – 145.7 million in 2021. Moreover, Russia’s cinema market seemed to also be bouncing back since the start of COVID. According to data from the International Union of Cinemas (UNIC), represented in the table below, Russia was one of the major territories that performed strongly in its recovery in cinema admissions. compared to 2020. , Paul Heth, CEO of Russia’s cinema operator Karo Group, predicted that they would achieve the near $1 billion box office receipts that they saw in 2019, this year. However, the current situation with Ukraine has prevented box office receipts from approaching anywhere close to those figures.

Image from

So far, there seems to be no consequences for these illegal showings. In March, Russia in an effect to mitigate sanctions imposed by Western nations, thereby legalizing piracy of several entertainment forms, including films. , the Russian government has announced that its companies will no longer be required to pay patent holders from countries that have sanctioned the country for the use of intellectual property, effectively legalizing piracy throughout the country.

But despite efforts to keep the industry alive, the results have not been encouraging – compared to the same time last year. Moreover, the Association of Theatre Owners has that “at least half the movie theatres in Russia would go out of business in the next two months”. Russia is encountering further issues with screening costs, , there has been a sharp increase of about 80% in the cost of lamps and components for projectors, with an estimated 50% of the Russian cinema screens already dark because of the lack of films and equipment. For now, pirated films continue to keep the theatres dimly lit, but it might not be too long before the Russian cinema industry faces a total blackout.

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Photo by Marjan Blan ()

Booker Zhang is an IPilogue Writer and a 1L JD Candidate at the University of Manitoba.

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On February 15, 2022, Spider-Man: No Way Home has hit at the box office, becoming the sixth-highest grossing movie of all time. Building on the massive success of Avengers: Endgame, Marvel has rapidly become one of the most famous and profitable movie studios worldwide. However, Marvel suffered financial hardships in the early years and made tough decisions. One of them is to sell the Spider-Man film rights. In 1999, Marvel with Sony and officially handed over its most famous superhero for $7 million, which created a list of complex copyright issues for the next 20 years.

In 2002, the first well-known movie was filmed by Columbia Pictures, a division of Sony Entertainment. The film generated $800 million at the box office, redefining what it means to be and successfully saving Sony’s Picture Division from a deficit. The popularity of Spider-Man also made Marvel realize that they gave up a money machine. However, Marvel had no right to unilaterally retain Spider-Man’s copyright unless Sony decided to terminate the contract—which seemed unlikely to happen.

A plot twist occurred in 2008 after Marvel released . The film received praise from critics. The American Film Institution selected it as one of the best films of 2008. The Walt Disney Company saw the potential and purchased Marvel in 2009. With solid financial support from Disney, Marvel ��has successfully promoted the “” and earned a worldwide reputation. In the meantime, Sony’s The Amazing Spider-Man 2 released in 2014 was met with criticism, ending the reboot series.

In 2015, Marvel and Sony made an unprecedented that the two companies would share joint-ownership in Spider-Man's copyright. Marvel would film the movie while Sony would take all the box office earnings and be responsible for the investment and distribution. There is no dispute that the new Spider-Man, starring Tom Holland, is a hit.

According to the deal, Marvel was only authorized to have Spider-Man in 5 movies, and Spider-Man: No Way Home indicated the end of the contract. To avoid spoiling, I will not go into details of the plot, but the movie did result in concerns about the future of Spider-Man. Marvel is currently seeking to retain complete control of Spider-Man through a against Sony.

One interesting fact to mention is that Sony only has the film rights of Spider-Man, not the video game rights. Nevertheless, under the authority of Marvel, Sony released on PlayStation 4 — the best-selling video game in 2018. Until Marvel and Sony reach an agreement, Spider-Man's copyright (like his fate) remains up in the air.

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Photo by Felix Mooneeram ()

Booker Zhang is an IPilogue Writer and a 1L JD Candidate at the University of Manitoba.

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Imagine you are very interested in a three-hour movie that you do not have the time or patience to finish or a horror movie that you are too scared to watch. If a video condenses the film into short clips summarizing the plot, would you choose to watch the video instead? These movie recap videos have become extremely popular in China. While useful, they raise concerns of potential copyright infringement.

AmoGood, one of China’s most famous and influential movie recap bloggers, is well-known for his video series “Watching a Movie within X Minutes.” His on Bilibili, a popular Chinese video website, has over 2.42 million subscribers and 1400 videos. He has ��millions of likes on Facebook and YouTube. In 2017, AmoGood was involved in the first Chinese legal action against movie recap producers.

Five companies, including Walt Disney Company, Deltamac Co., Autoai Design Co., KKTV Co., and Garage Play, brought against AmoGood. They claimed that his videos infringed by using their movie clips without permission. , AmoGood argued that he used the materials for commentary, criticism, parody, news reporting, research, and scholarship, which do not require permission from rights holders. He also argued that his videos should not qualify as infringement as they are non-commercial (free to watch). After a two-year negotiation, AmoGood eventually reached an agreement with the plaintiffs. He released an official apology ��on his page in 2020 and compensated the claimed economic loss his videos caused.

Nevertheless, the lawsuit did not seem to deter AmoGood or other video bloggers of the same nature. AmoGood continues to make and post videos regularly. The market for this content has continued to grow, with an increasing number of creators uploading videos to YouTube and various video platforms. A Korean Youtuber began producing movie recaps in 2017 and has 1.84 million subscribers. His most popular video, explaining Gerald’s Game, has over 33 million views. The low cost and huge potential benefit of movie recaps are enticing.

Though national governments are attempting to address copyright risks, the internet goes beyond borders. The Chinese National Radio and Television Administration introduced a in 2018 to prevent illegal capture, cut, stitching, and adapting audio-visual programs. Japanese police three people for posting a 10-minute move recap on June 23, 2021. However, YouTube, the most popular video website worldwide, adopts a “” copyright policy that allows the reuse of copyright-protected material under certain circumstances without permission from the copyright owner. This ��policy generates difficulties when interfering with domestic intellectual property laws in different regions. It must also be applied on a case-by-case basis, making it impossible for YouTube to identify and eliminate each and every suspicious video.

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Meena Alnajar is an��IPilogue��Writer, IP Innovation Clinic Fellow,��and a 2L JD Candidate at��Osgoode��Hall Law School

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Turning Red, a animated movie set in Toronto and directed by Canadian filmmaker was initially set to be released in theatres on . However, due to the surge of COVID-19 cases, Disney has moved the film’s release online to their streaming service . Streaming services have provided a platform for safely watching films from the comfort of your own home. Yet financially, films released via streaming sites can generate starkly different revenues than releases in theatres. In July 2021, Disney encountered legal issues when Marvel moved the film release to Disney+. The leading actress, Scarlett Johansson, felt that her contract did not the film’s streaming site release. Her legal team claimed that this release changed the actress’ . However, with the rise in streaming and general reluctance to go to in-person theatres, are streaming services the best profit mechanism for filmmakers? What could be lost when films are released on home screens?

Is the theatre dead?

In Canada, movie theatre chain Cineplex has suffered extreme losses due to constant closure from the COVID-19 pandemic. Cineplex recently chose not to renew its lease for its large theatre in . Many people were upset not only at the loss of a family outing, but also at the loss of potential Canadian often presented in Cineplex theatres. Although streaming sites deliver movies instantly for viewers, these sites may further detriment movie theatres in your hometown.

Implications for studios and directors

The decline in movie theatre releases affects many local businesses and takes away community activity. On a practical note, however, these streaming service releases may be the only way for big studios to justify a big budget. For instance, Universal Studios was one of the first to try a streaming service release instead of theatre. In , Universal released “Trolls World Tour” as an on-demand purchase at $19.99. The film earned over $100 million in the US within . In contrast, the first “Trolls” film released in theatres in earned only $120 million over a five-month theatrical run.

Disney would certainly factor in this rapid profit-making capability for streaming services after witnessing a 75% spike in after Hamilton was released on . Disney not only makes a quick profit, but streaming releases also promote Disney’s platform, allowing the company to earn additional revenue from Disney+ memberships. If Disney’s primary goal is revenue for every film release, streaming service releases seem to be the more profitable in a pandemic. ��

Domee Shi sets the film Turning Red in as an homage to her hometown. She explicitly wanted to highlight her life in Canada and Toronto’s diverse culture and scenery . As Canadian VP of Walt Disney Studios notes, “Turning Red is truly a love letter to Toronto and Canada.” With Korean-Canadian Hollywood Star as a lead voice actor in the film, Turning Red is intended to showcase all Canada has to offer in the arts. Unfortunately, the movie will not be released in any local Toronto theatres. The celebration of the film’s release and Toronto’s vibrant culture will be contained to our home screens.

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Source: Screenshot of Night of the Living Dead (1968) opening credit / Public Domain

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

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Halloween season is just around the corner and who doesn’t love a good zombie movie? While many might rather shy away from frightening films, dedicated modern-day zombie enthusiasts live among us. The multi-billion-dollar zombie craze in horror today was popularized by George A. Romero’s Night of the Living Dead, an independent film released in 1968. The film curiously entered the public domain due to a slight error, allowing widespread accessibility and reproduction. The film made over , with the creators seeing little to no share of the profits. The release, paired with the copyright error, changed the horror movie genre and the independent film industry forever.

At the time of the film’s theatrical release, the US required notice to maintain enforceable federal copyright protection. The original distributor, The Walter Reade Organization (WRO) from Night of the Flesh Eaters to avoid confusion with the 1964 film . In doing so, WRO accidentally failed to add the copyright indicator (©) onto the prints. The symbol was not in the opening credits of the movie, the image above - that’s it. Imagine that! Without the symbol and the year of publication, the law specified that you lost copyright and the work enters the public domain forever. While a first print with the original name included the symbol, it was lost in a . Romero later attempted to sue the original distributor who made the error, but the organization declared bankruptcy in the 70s and dissolved. Today, copyright notices are no longer required thanks to the (US); sadly for Romero though, the act does not extend protections to his 1968 film.

Due to the oversight, anyone could copy and distribute the film for free. Hundreds of copies of the film were manufactured in different formats, ranging from VHS, Betamax, LaserDisc, DVD, and Blu-ray throughout the years. (A lifelong Living Dead fanatic and collector, Geoff Turner, has created a project called , in an effort to catalogue all of the releases of the film. Over a hundred fans donated almost $20,000 in a campaign to assist Turner. He even has checklists available for download on his webpage for those with the spirit and the storage!)

Before Night of the Living Dead, zombies were – they were typically only seen in Caribbean folklore, and not portrayed in the way they are today. Romero’s film created a , a re-imagined, brain-eating, re-animated corpse who could be quite literally anyone unlucky enough to be bitten. Romero’s specific traits and rules associated with his zombie characters that have lived on through the years. The film’s entry into the public domain allowed it to be licensed free of charge to any distributor. It also allowed non-affiliated remakes and sequels to follow. Romero could not own the copyright in his specific zombie caricatures due to the mistake, and therefore could not stop anyone from including the same interpretation in their own films. The Walking Dead, Game of Thrones, Zombieland, and many more could not exist in the same way today – or would have had to be licensed by Romero, had the distributor correctly added copyright notice. and would have been completely free to do so, without having to pay Romero anything.

While Romero and his team expressed regret at the error, they subsequently agreed that the mistake allowed them to garner popularity and recognition. In a , Romero stated “But that film really gave us our careers. I have no complaints.” The filmmaker passed away in 2017, but not before creating official zombie sequels and . Suffice to say, public domain means the zombie genre refuses to die. If interested, check out Night of the Living Dead for on most streaming platforms, or the .

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Prof. David Vaver is the Acting Director of IP Osgoode and a Professor of Intellectual Property Law at Osgoode Hall Law School. The following is a preview of a paper to be published in the Intellectual Property Journal.

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Something has recently gone awry with the law of copyright ownership in a movie or other film — a “cinematographic work”, as s. 2 of the [Act] calls it. ��

Part I of the Act deals with the ownership of copyright in works. Section 13(1) provides that the author of a work is its first copyright owner. Section 13(2) provides one exception: where the work is done by an author-employee for their employer as part of their job and there is no contrary agreement. All this applies to cinematographic works, a species of dramatic work, as the Quebec courts recently confirmed: at [12], aff’ing at [51]-[2] [Choko]. A copyright owner may of course transfer the right as it wishes (s. 13(4)); but apart from another exception on Crown works (s. 12), these provisions in s. 13 are the only ones that deal with the ownership of copyright in works. Another section in Part II of the Act (s. 24) deals with first ownership of copyright in subject-matter other than works: performer’s performances, sound recordings, and communication signals.

Owning copyright is one thing; proving ownership is another. Section 34.1(1) of the Act helps plaintiffs out by giving them certain presumptions if they sue for infringement or take other civil proceedings. The section reads (emphasis added):

"In any civil proceedings taken under this Act in which the defendant puts in issue either the existence of the copyright or the title of the plaintiff to it,

(a)��copyright shall be presumed, unless the contrary is proved, to subsist in the work, performer’s performance, sound recording or communication signal, as the case may be; and

(b)��the author, performer, maker or broadcaster, as the case may be, shall, unless the contrary is proved, be presumed to be the owner of the copyright."

At first sight, the words in (a) — “work, performer’s performance, sound recording or communication signal” — appear to be paired with those in (b), in the same order, to mean “author [of a work], performer [of a performer’s performance], maker [of a sound recording], or broadcaster [of a communication signal]”. It would seem unnatural, for example, to read “maker” as referring to both a “sound recording” and a “work”. That however overlooks the fact that s. 2 of the Act defines “maker” as referring to both a work and a sound recording.

Does that definition apply here so as to disturb the apparent pattern of paras. (a) and (b)? Or do the words in context make s. 2 inapplicable? I suggest that they indeed do disapply s. 2 for cinematographic works and that, in context, “maker” in para. (b) means only the maker of the sound recording referred to in para. (a).

Not everyone thinks so — in particular, some judges of the Federal Court.

*

Section 34.1(1) is supposed to make a plaintiff’s life easier in starting and running a copyright claim in court. It neither creates presumptions outside civil proceedings nor creates, transfers, or changes anyone’s actual title, and any proceeds recovered from a defendant are held for the benefit of the true owner: see Hogg v Toye & Co [1935] Ch 497, 520 (CA) on the corresponding provision in the (UK) on which the Canadian section is based. If any presumption happens to be displaced by contrary evidence, the proceedings can be amended and other parties joined so that defendants are not put in double jeopardy.

The presumption was applied straightforwardly in Choko (above). The plaintiff claimed a declaration of copyright ownership in a documentary he had shot for the defendant, while the defendant counter-claimed that the copyright belonged to the defendant as the plaintiff’s employer. The court applied s. 34.1(1)(b) to presume ownership in the plaintiff, he being the “author” of the “work” (Choko, QCCS at [55]). The defendant lost at trial and on appeal because he failed to prove the contrary, i.e., that he employed the plaintiff under a contract of employment (Choko, QCCA at [13]).

The Federal Court of Canada has, however, in at least three decisions said that s. 34.1(1)(b) presumes that the film’s “maker” is the copyright owner of the “work” unless the contrary is proved: see at [24]-[6]; at [32]; at [47]. The ultimate result in these cases may be justifiable: agreement or employment may have given the plaintiff actual ownership in Interbox (see [24] & [26]-[8] of the decision); ownership was “uncontested” in CBC (see [36] of the decision); and certificates of registration would have shifted the presumption of ownership to the plaintiffs in Bell (see [53] of the decision).

Interbox nonetheless does appear to be a decision on the s. 34.1(1)(b) point and was treated as such in CBC at [32]. ��

The correct view however seems to be that, read in context, “maker” in s. 34.1(1)(b) refers only to the maker of a sound recording. Were it to include the maker of a cinematographic work, s. 34.1(1)(b) would be the only provision in the entire Act where "maker" alone bore this meaning. It would also make s. 34.1(1)(b) create two inconsistent presumptions on ownership of the same work, with no way to decide which should prevail. Suppose an “author” and “maker” of a film sue each other, each claiming to be the copyright owner: whose duelling presumption should prevail? To call the result a stalemate would stultify the point of having presumptions at all and would anyway probably be contrary to art. 15(1) of the [Berne], which requires the author to prevail if their name appears on the work in the usual manner.

The problem is that, although “author” and “maker” can mean much the same thing in ordinary parlance, they do not in copyright law. The Act does not define “author” but judicial decisions identify this person as the individual or individuals who give a work’s ideas their original form or expression ( (NBCA)) — a question of fact in each case. Authorship is established easily enough for the video shot on someone’s smartphone; less so for a complex production such as Star Wars, which could involve multiple authorship or the director as sole auteur, the individual responsible for translating the work’s vision into its final expression.

By contrast, “maker”��—��producteur��in the French version —��has a definition in s. 2 of the��Act��that spans both cinematographic works and sound recordings. For a cinematographic work, the “maker” is��“the person by whom the arrangements necessary for the making of the work are undertaken”; for a sound recording the same formula applies to the first fixation of sounds.����

In cases like��Choko��(above) which involved a single individual shooting and editing a film, the same person may coincidentally be both maker and author: the two roles are easily enough mistakenly conflated (see, e.g.,�� at [156]-[7], appeal dismissed 2021 ONCA 532 for non-compliance with order to post security). In many major commercial films, however, the maker and author��—producteur��and��auteur��—��will be different persons, particularly because the maker may be a corporation whereas an author must be a natural person, i.e., a flesh-and-blood human being:��,��234 [Massie].��

One might ask: if “maker” in s. 34.1(1)(b) really applies only to sound recordings, what is the point of having a definition of “maker” of a cinematographic work at all? The answer: to allow Canada to comply with Berne article 4 and ensure that films are protected in Canada even where none of the authors is a Berne national or resident, no matter who owns the work’s copyright. This s. 5(1)(b)(i) of the Act achieves (see Bell, above, at [47]) and also extends protection to other states as required by treaties such as the of 1994. The relevant part of s. 5 reads: ��

"5.(1) Subject to this Act, copyright shall subsist in Canada, for the term hereinafter mentioned, in every original literary, dramatic, musical and artistic work if any one of the following conditions is met:

���������������������� …

(b) in the case of a cinematographic work, whether published or unpublished, the maker, at the date of the making of the cinematographic work,

(i)��if a corporation, had its headquarters in a treaty country, or

(ii) if a natural person, was a citizen or subject of, or a person ordinarily resident in, a treaty country [emphasis added]."

Section ��34.1(2)(c) reinforces this provision, as Berne art. 15(2) requires, by providing that “if, on a cinematographic work, a name purporting to be that of the maker of the cinematographic work appears in the usual manner, the person so named shall, unless the contrary is proved, be presumed to be the maker of the cinematographic work” — note, not the “copyright owner”, an error made in Wiseau (above) ONSC at [156], although the court ultimately found the person who wrote, acted in, and produced the film to be its “author” and at least a co-owner (ibid at [157]).

Sections 5(1)(b)(i) and 34.1 (2)(c) are the only provisions to which the definition of “maker” of a cinematographic work applies. Had the drafters integrated the contents of s. 34.1(2)(c) into s. 5(1), as they could easily have done, the definition of “maker of a cinematographic work” could also have been shifted from s. 2 to s. 5(1). The mischief its location in s. 2 causes would have disappeared. Such are the potential effects of drafting decisions that are thought to be stylistic but which others misunderstand as having a substantive effect.

Let us examine more closely why s. 34.1(1)(b), in context, cannot include the maker of a cinematographic work. Admittedly, s. 2 could make it include that person — which raises the question: had the drafters intended to confine “maker” to sound recordings, why did they not just add the phrase “of a sound recording”? The answer is because, in the context of section 34.1 and the Act as a whole, the drafting in this respect is often elliptical, and the drafters here thought that meaning was already implied.

The drafters used a similar ellipsis in the next subsection, s. 31.1(2), where the word “maker” in the phrase “author, performer, maker or broadcaster” in the concluding portion of s. 31.1(2)(a), and in s. 31(2)(b)(i) and (ii), clearly means the “maker of the sound recording” specifically mentioned earlier in s. 31.1(2)(a)(iii).

They also used the same ellipsis elsewhere in the Act. Thus s. 29.21(1)(b) requires the creator of user-generated content to name their available source if they are to avoid infringement. The source is stated to be “the author, performer, maker or broadcaster” of the prior “work or other subject-matter.” “Other subject-matter” is the shorthand used throughout the Act for a performer’s performance, sound recording, or communication signal, and the preceding section (s. 29.2(b)(iii)) again makes it clear that the “maker” referred to is the “maker of a sound recording”.

The fact is that the words found in s. 34.1(1)(a) “work, performer’s performance, sound recording or communication signal” in either their singular or plural form appear as a set throughout the Act and are typically linked distributively to the set of persons the Act designates as their respective first owners: “author, performer, maker of a sound recording, or broadcaster” (see, e.g., s. 2, definition of “collective society”). Thus s. 13(1) designates the author as first owner of a work and sections 24(a), 24(b), and 24(c) respectively — and significantly, in the same order — designate the performer, maker of a sound recording, and broadcaster as first owner of their respective subject-matter.

The maker of a cinematographic work would be the odd one out in s. 34.1(1)(b), for the provision otherwise designates the presumption only in favour of first owners. Nothing in the Act, other than employment, contradicts s. 13(1)’s grant of first ownership to the work’s author. The Act nowhere suggests that the maker of a film displaces the author as first owner. Nor does the Act bridge the gap between “maker” and “author” the way UK law does by deeming a film’s author to be its maker — or “producer,” as UK law has it—together with the principal director ( (UK), s. 9(2)(ab)). Although Canadian and UK ownership rules may differ, both are internationally compliant: Berne art. 14^bis(2)(a) allows member states to decide ownership rules for films for themselves since the states had widely disparate views on the matter and no agreed position could be struck at Berne.

It is equally noteworthy that the maker of a cinematographic work is omitted from the list of persons whose interests may be recorded on the Copyright Register — namely, “authors, performers, makers of sound recordings, broadcasters, owners of copyright, assignees of copyright, and persons to whom an interest in copyright has been granted by licence” (s. 54(1)(b)). All these categories are persons whom the Act designates as first or later owners of copyright or an interest in copyright. The omission of the maker of a cinematographic work as such — nowhere designated as a category of owner or holder of an interest — is striking were it is indeed presumed to be an owner for civil proceedings. ��

In general, it makes sense when civil proceedings are brought, to start with a presumption that the person the Act designates as the first owner of any copyright is still its owner unless someone proves the contrary. It generally makes no sense to start with a presumption that a person that the Act nowhere designates as such as first or any owner should currently be presumed the owner. The only exception is where material is anonymous or pseudonymous: for reasons of privacy, s. 34.1(2)(b) provides that the publisher whose name appears on a work is presumed to be its owner — even though the publisher is likely not the first owner and, as Berne article 15(3) states, is really only “deemed to represent the author” to vindicate the latter’ s rights.

None of this will come as any surprise to corporate broadcasters and film producers. They have known for decades that they cannot rely on the presumption in s. 34.1(1)(b) favouring a film’s “author” since in Canada, as noted earlier, the term “author” is reserved for flesh-and-blood human beings: Massie (above) at 234. They have also known for decades of the “intolerably heavy” burden and “serious handicap” the author/ownership presumption imposes on them or any other plaintiff who happens not to be the author: , 605. They also have known for decades of the cheap and effective way to overcome this burden and handicap, as endorsed by Circle Film, itself a case on cinematographic works: before filing infringement proceedings, just spend the $50 and the few minutes it takes to apply online to register the film’s copyright with the Canadian Intellectual Property Office, and get a certificate of registration stating one’s copyright ownership. Registration then provides all the contrary proof needed for the registrant to rebut the author/owner presumption (Act, s. 53(2); Circle Film, at 606-7). That is why no practical need has existed to amend the law to include a presumption of ownership in favour of the maker of a cinematographic work. Registrations can go where presumptions fail to tread.

It is therefore hard to understand why s. 34.1(1) has been pressed into doubtful service where clear and simple alternative means of initially establishing copyright subsistence and title for film “makers” so readily exist. The sooner the Federal Court clears the matter up, the better.

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Meena Alnajar is an IPilogue Writer, IP Innovation Clinic Fellow, and a 2L JD Candidate at Osgoode Hall Law School.

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American actress Scarlett Johansson, known for playing the Black Widow in Disney & Marvel’s The Avengers franchise, took action against Disney on July 30, 2021 for an alleged breach of contract involving the recent Black Widow film’s distribution. According to , Johansson’s contract read that Black Widow would be guaranteed a ‘wide release’, meaning that “the film would be shown .” The caveat here in the streaming service age is the term ‘screens.’ Johansson’s legal team argues that ‘screens’ means movie theatre screens exclusively. This implies a theatrical release, where a . Disney countered the argument, stating that Black Widow received a theatrical release, but that this release does not imply an exclusive release to theatres only. As such, Disney was within their rights to simultaneously launch the film on their streaming service, Disney Plus.

Experts argue that this may be a case of ambiguity with the phrase ‘wide release.’ In contract law, ambiguity is addressed in several ways. Absent fraud or misrepresentation, the court may choose to examine —verbal agreements made between parties, usually in the negotiation stage. Johansson’s legal team stated that they between them and Marvel’s Chief Counsel, Dave Galluzzi. In the email, the studio attorney promised a release “like our other pictures” and that if plans should change, they would be “discussed with [Johansson’s legal team].” Further, even without the email, courts generally resolve ambiguity , which in this case is . Therefore, Johansson is likely to win in court.

On August 21, 2021 Disney responded to Johansson’s suit with a motion to move the suit to . Arbitration is a method of whereby parties choose a sole arbitrator and venue of arbitration to settle a dispute. The arbitrator’s ruling is . Hollywood dispute lawyer would make this move back in July. Moving this issue to arbitration helps and contract drafting out of the public eye and protects their public image from damage. But Disney’s representatives counter this view, stating that they simply wish that was agreed upon between both parties to the contract. Disney also argues that the company made good on its contract by displaying the movie on .

Additionally, instead of coming after Marvel, as the party involved in the contract, Johansson’s team is pushing for a public suit against the parent company Disney. Disney suggests that Johansson is participating in “gamesmanship” by making Johansson’s compensation Disney’s responsibility, rather than carrying out the dispute in arbitration with Marvel. is a dubious technique where lawyers create additional expense or agitate the other side to put them in a tough position where they must either settle or abandon the case. Since arbitration is often dispute resolution than a public lawsuit, Johansson’s team may indeed be partaking in gamesmanship with the constant push for a public lawsuit.

Whether the parties decide to settle the dispute confidentially or publicly, this contractual disagreement emphasizes the new contractual landscape for actors and production companies. With the rise in streaming services and decline of theatre capacity during the COVID-19 pandemic, movie production companies should work to be more explicit in their compensation plans and in their definition of ‘wide release.’ 30,000 movie theatre screens versus 30,000 users on Disney Plus can make millions of dollars of a difference.

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Ryan Erdman is an��IPilogue��Writer and a 2L JD Candidate at��Osgoode��Hall Law .

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In 2015, Inside Out captivated audiences with its creative insight into the emotional landscape of a pre-teen girl named Riley. The film’s main characters are manifestations of young girl’s internal emotions that attempt to help her navigate various experiences and challenges in her life. The brilliance of the film’s storytelling was realized through its depth and the way it resonates with individuals of all ages. Winning the that year, it has grown to be regarded as one of the best animated films of all time.

While the general and critical response was overwhelmingly positive, one individual who did not experience the same initial “joy” was , a graduate of Sheridan College in Oakville, Ontario. In July 2018, Pourshian commenced an action against Walt Disney Pictures Inc., Pixar Animation Studios, and four other subsidiaries claiming that they infringed on his copyright to a film he initially conceived as a high school student. The claim was brought under��sections 3��and��27��of Canada’s��

In 2000, Pourshian, then a film student at Sheridan College, wrote the screenplay and produced a short movie similarly titled Inside Out, where the protagonist was guided by their personified internal organs. According to Pourshian, the film was “widely shown” at the school, and the defendants, having a “close relationship” with Sheridan College, would have had access to his film on numerous occasions. Further, he claims former students at the college now working with Disney and Pixar were tied to the production.

The recent did not surround the substance or efficacy of the infringement claims, but revised a preliminary jurisdictional order. The U.S.-based defendants initially brought a motion to stay the action on the basis that Ontario lacked jurisdiction. In October 2019, a Master granted the order against all defendants, except for Pixar, Walt Disney Pictures Inc., and Disney Shopping Inc.

Pourshian appealed, and the remaining defendants cross-appealed the decision on the basis that the Master erred in applying the test for determining if the court has jurisdiction over claims against foreign defendants. The test, as established by the Supreme Court of Canada in , looks to determine if there is a “real and substantial connection” between the subject matter of the litigation and the chosen forum. To do so, the court will determine whether there is a presumptive connecting factor (established or novel) between the claim and the jurisdiction. As noted in Van Breda regarding tort claims, connecting factors that��prima facie entitles a court to assume jurisdiction include the defendant residing or carrying out business in the province, the tort being committed in the province, or a contract connected to the dispute being made in the province.

The court found that the Master made at minimum three legal errors, including failing to analyze the meaning of “carrying on” business in Ontario and disregarding evidence filed by the parties. Seeing no utility in sending the case back, the court proceeded to determine jurisdiction in relation to each individual defendant. Pourshian argued that Ontario had jurisdiction because it was the “jurisdiction of reception” for��the movie, the claim was in respect of (intellectual) property in Ontario, and some of the defendants carry on business in Ontario.

Most significantly, the court clarified that copyright infringement is “essentially a statutory tort,” such that the Van Breda analysis is correctly applied, and the analogous connecting factor is whether the alleged copyright infringement occurred in the jurisdiction where the action was brought. Relying on , they note that the infringement can occur both where the communication was transmitted from and where it was received. Subsequently, the court looked to the main issue of whether Pourshian’s claim established a “good arguable case” that each defendant played a role in authorizing the “transmission” or distribution of��the film in Ontario.

Ultimately, the court found sufficient evidence that Ontario had jurisdiction in relation to six of the defendants, largely due to direct connections to the film’s production or its distribution to third-party providers. This reversed the original decision in relation to three defendants. The two remaining defendants, Walt Disney Company (the parent company to the remaining defendants) and American Broadcasting Companies, Inc., successfully rebutted the presumption by proving a lack of involvement in the production and distribution of the film in Ontario.

In what should be an extremely intriguing copyright case moving forward, Pourshian seeks a declaration that he owns the intellectual property to the screenplay, live theatrical production, and the short film Inside Out, and that the defendants infringed his copyright through their production and distribution of��the Disney film. In addition, he is seeking a permanent injunction and damages, which would be significant given that Inside Out more than $850 million worldwide. Interestingly, Pourshian has been in a similar U.S. claim, voluntarily withdrawing a 2018 California lawsuit two months after it was filed.

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MOVA was first developed in the early 2000’s by Rearden. The head of the incubator, Steve Perlman, put his long-time friend Greg LaSalle in charge of the project. LaSalle formed his own company, MO2, and transferred MOVA to it before selling the software to Digital Domain Holdings (DDH), a US visual effects studio. MOVA was transferred to DDH’s Chinese subsidiary, Shenzhenshi Haitiecheng Science and Technology (SHST).

��𲹰�����’s over the ownership of MOVA was with SHST in 2016. SHST initiated the proceedings, but Rearden argued that LaSalle had no right to sell MOVA to SHST in the first place. A federal court in San Francisco issued an injunction against SHST and all of their licencees (including DDH’s US subsidiary, Digital Domain 3.0 or DD3) for distributing and using MOVA.

In August 2017, the that Rearden officially owned MOVA, not DDH. Rearden is now going after the movie studios Disney, Fox, and Paramount for using the copies of MOVA that were illegitimately licensed to DD3. The studios have filed a ��𲹰�����’s suit, which was by Rearden.

One of ��𲹰�����’s arguments is that they own the copyright in the studio’s CG characters because 1) they own the output of their software, and 2) this output was incorporated into the films, thus making the films derivative works.

For output ownership, Rearden relies on two video game cases ( and ) where the courts ruled that the audiovisual output of computer programs is afforded copyright protection, even if the end user contributes to this output.

This is a questionable comparison to the current case because the nature of audiovisual output in a video game is significantly different from the output of a graphics design program. With interactive entertainment, the output is not intended to have any further use. Even when video game footage is used in subsequent works (like s), it is done so under licence. The content creator only owns the copyright in their footage and commentary, not the game. This is unlike the output of MOVA, where the 3D render output is intended to be used in further works.

Rearden also claims that they own MOVA’s output because the software does a “lion’s share” of the work required to produce the output. They rely on a US case, , in which the court ruled that the plaintiff software maker owned the output of their software because the end user only contributed single words or phrases, and this was considered “marginal” input.

Deciding who does the “lion’s share” of the work when producing a CG character is a difficult issue. To briefly explain the process of creating a CG character using MOVA, an actor wearing special makeup is filmed. This 2D recording is passed through MOVA, which synthesizes a 3D rendering of the face and head. This 3D model is then used as a template onto which animators add features like hair, colour, and wrinkles. Once this is complete, the 3D model is removed, leaving just the animated shell that we see in the movies.

So, it becomes a chicken-and-egg problem: without the software, there is no output, but without the acting and direction, there is no input to make the output. The analogy that the movie studios draw to Adobe Photoshop is quite apt because there is a clear distinction between the contribution of the artist and the contribution of the software, and in that case, it can hardly be said that the artist contributes “marginal” input. The software used in Torah was much simpler and may not offer the best comparison to the present case.

It will be interesting to see how the court decides the issue of derivative works. The movie studios argue that their CG characters and movies are not derivative works because they do not “substantially incorporate protected material from [a] pre-existing work” (quoting ). Rearden, on the other hand, argues that the CG characters and movies do incorporate their works (i.e., the output of their software). Even though the 3D template and related coding are taken out during the production process and do not appear in the movie, Rearden argues that because the facial motion is transferred from the 3D template to the CG character with “sub-millimeter precision,” the CG character is similar enough to constitute a derivative work. But how would that weigh against the fact that the CG character is also “substantially similar” to the original actor’s face and performance, which the studio owns?

Another important point is the substantial relief that Rearden is requesting. They want all infringing copies of MOVA output and the movies that contain them to be destroyed. Logistically, it is difficult to imagine what this would entail. There is no a guarantee that every copy of Guardians of the Galaxy can or will be destroyed. There is also the question of what will happen to clips of the movies that are being used by third parties. Would those have to be destroyed as well?

The Rearden case brings up some complex copyright issues, and it will be interesting to see whether the courts decide in favour of Rearden or the movie studios. A ruling for Rearden could have major implications on the way end users manage their copyright when using computer programs.

Alexandria Chun is a JD Candidate at Osgoode Hall Law School and was enrolled in Osgoode’s Intellectual Property Law Intensive Program. As part of the program requirements, students were asked to write a blog on a topic of their choice.

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