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 ���Ի���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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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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2014 was another exciting year in intellectual property (IP) law. The dominant theme was one of reaction, where legislators and courts were either responding to new industry challenges posed by technology or updating existing laws to reflect already established practices.

Canada in particular saw exciting developments across all three major areas of IP, with a significant legislative update to the Trademarks Act, attempts at judicial balancing of copyright interests between users and creators, and high profile patent litigation over pharmaceuticals.

Trademarks

Trademark law saw various legislative changes and newsworthy headlines shaking up an area of IP that is typically known for its stability.

The most significant developments in Canadian trademark law this past year were brought in by the 2014 federal budget. Bill C-31, an act to implement certain measures of the budget, received in July and altered the in ways big and small. One of the changes involved updating the ������’s terminology, with “trademark” no longer hyphenated and “wares” to be referred to as “goods”. The word “trademark” also got a wider definition, encompassing a sign or combination of signs, including: holograms, sound, scent, and 3-D shapes. The trademark registration process was also simplified, and the term of registration was reduced from fifteen to ten years.

Some of the budget’s additions to the Act were far more significant in their impact on the practice of trademark law in Canada. One of the bigger changes was the adoption of the system. Used in numerous countries, the system aims to fit goods or services into specific classes such as “clothing, footwear, headgear” (Class 25). While the system will not have a practical use in Canada, it will make the country’s trademark system more internationally consistent.

The most controversial development, was the move away from a use-based system of trademark registration. As a result of Bill C-31, there is no longer a requirement to demonstrate the “use” of a trademark in Canada prior to obtaining registration. The result is a significant questioning of a foundational doctrine in Canadian trademark law. For example, the element of use in the “confusion test” will likely need to be re-evaluated. Another concern is that the new law will encourage the registering and subsequent “sitting” on marks without use, a practice that might attract litigation. We will, however, have to give it time for the consequences of Bill C-31 to be felt. Assuaging some fears is the fact trademarks can still be expunged if they have not been used for three years, meaning that a trademark registrant must continue using the mark or risk losing it.

A second legislative change affecting trademark law in Canada this year occurred towards the end of 2014. On December 9, Bill C-8 received , the . This law was created with the intention of providing rights holders and the government, with new tools and remedies in the fight against the trafficking of counterfeit goods. Some of these new mechanisms for rights enforcement include the creation of civil and criminal offences for possessing, distributing, creating, or trafficking counterfeit items for commercial purposes, and enhanced powers for customs officials.

The major trademark news stories this past year took place south of our border. In early 2014 video game and app developer was granted a U.S. trademark for the common word “candy” in association with its extremely popular app Candy Crush Saga. Consequently, concerns were raised about the impact the registration would have on further attempts to extend trademark protections over individual, ordinary words. King experienced a significant wave of public backlash in regards to the registration, and, in a strange turn of events, voluntarily abandoned its claim to the trademark. Despite the value the registration would have had for King legally, the “Saga” demonstrated how important other elements, like public relations, are to IP law and business decisions.

Another headline-grabber was the brief but very public life of in California. Shut down by the Los Angeles Health Department, the establishment proved to be a stunt by comedian . Although no litigation commenced, the opening of “Dumb Starbucks” under the justification of “parody art” sparked many conversations in the legal community (probably over a cup of coffee too).

Finally, a very public discussion about racism and trademarks was incited by the June n of Blackhorse v Pro Football, Inc. The US Patent and Trademark Office in the case made a very clear statement against culturally insensitive trademarks with the cancellation of six registrations for the name “Washington Redskins” for being “disparaging to Native Americans.” Although the actual legal and financial implications for the Washington football team were not necessarily punishing, the case launched an important discussion about the importance of moral victories and the role of public opinion and negative publicity to the value of a brand or trademark.

The important trademark cases of 2014 demonstrated the very public nature of trademark law and its inability to be isolated within the legal sphere.

Copyright

As our world becomes more dependent on technology, new copyright law issues reveal themselves in ways that can be equal parts fascinating and frustrating. 2014 was no exception, as growth and innovation in Canadian creative industries created unique disputes between the various parties in the copyright system.

Copyright trolling was a popular topic of debate in early 2014, with the court in holding that ISPs may be ordered to provide subscriber information to assist in copyright infringement proceedings. Voltage has been described as transforming Canada into for copyright trolls, as liability caps and numerous safeguards may have the effect of dissuading litigation. Consequently, it will be interesting to see how this decision intersects with the newly enacted regime that requires ISPs and other internet intermediaries to send notices of alleged copyright infringement to their customers.

The Copyright Board rendered two tariff decisions that will have wide-ranging impact on the future right to collect money for downloaded works and webcasts. In May, the Copyright Board certified , a decision which royalty rates for webcasting services in Canada. In July, the Copyright Board certified from SOCAN: Tariff 22.D.1 - Audiovisual webcasts; and Tariff 22.D.2 – Audiovisual user-generated content for the years 2007 to 2013. These tariffs will allow royalties to be collected for the performance of musical works embedded in other audiovisual works distributed via the internet. Both certifications were met with .

In a similar vein, the US Supreme Court, in the landmark , decision, ruled that retransmission constituted infringement of the public performance right. By capturing broadcast signals on miniature antennas and delivering them to subscribers, Aereo was attempting to architect its television retransmission processes in order to elude copyright royalties or licences fees. to the decision describe the ruling as having limited scope and numerous shortcomings with regard to copyright's relationship with technology and innovation.

One of the most talked-about topics in copyright law this year was the principle of technological neutrality. One case that touched on this issue was , which concerned the requirement for broadcasters to pay to use incidental copies of musical works. In that case, the CBC argued that it should not have to pay for copies of a work that it creates out of technological necessity and that to rule otherwise would impede innovation and go against the principles of technological neutrality. The Federal Court of Appeal disagreed with the broadcaster, deciding that royalties would attach to the additional copies. The Supreme Court’s willingness to hear an appeal on this issue indicates that the CBC’s argument may have legs. In March, a Quebec Court ruled in that use of a Google image search to retrieve a photo can constitute copyright infringement. This case is one out of many over the past few years which aims to ensure that digital images are just as protected as physical ones. In , the Federal Court of Appeal ruled on the alleged infringement by CBC of five images taken during the September 11 terrorist attack on the World Trade Center by the plaintiff. The issue involved determining how many acts of infringement occurred, and how to appropriately measure damages. The court noted that a “reading of paragraph 2.4(1)(c) of the Act moves in the direction of technological neutrality in that the number of infringing acts does not vary according to the number of intermediaries in the transmission chain. This is consistent with the goal of technological neutrality which the Supreme Court articulated in .” These cases (and any subsequent appeals) showcase the struggle of the law to keep up with technological advancements, and interpret questions of infringement.

Patents

In the past year the unsettled area of patent subject matter eligibility moved into the spotlight both in Canada and other jurisdictions. In the US, 2014 saw the United States Patent and Trademark Office (“USPTO”) issue three sets of proposed guidelines for determining patentable subject matter eligibility of claims involving laws of nature, natural phenomena, and natural products. While the Guidelines were supposed to be a response to the US Supreme Court’s [2012] and [2013] decisions, the released in March was met with much for purported misinterpretation of these two landmark decisions.

In June 2014, the US Supreme Court was presented with another opportunity to address subject matter eligibility in . In Alice, the Court held that using a computer to implement abstract ideas “fails to transform” these ideas into a “patent-eligible invention”. The Court extended the two-part approach enumerated in Mayo to patentability of an abstract idea. As such, when patentable subject matter is at issue one must: (1) determine whether the claim is directed to a patent-ineligible concept, and if so, then (2) decide whether there is any element in the claim that is sufficient to transform the nature of the claim into a patent-eligible application. The most of the Guidelines, released on December 16, reflects the approach adopted in Alice and intends to provide consistency across technologies for determination of patent subject matter eligibility.

Just a few days after the December guidelines release, the US Court of Appeals for the Federal Circuit rendered another decision in the breast cancer gene patent saga. Following the Supreme Court’s 2013 Myriad decision which invalidated Myriad’s human BRCA gene patents, Ambry introduced a competing breast cancer diagnostic test. Myriad brought a motion for a preliminary injunction against Ambry on the basis of patent claims that were not captured by the 2013 decision. The Court of Appeals for the Federal Circuit the District Court’s decision to deny the injunction. Furthermore, it held that the compositions of matter claims were not patent-eligible and claims pertaining to methods of screening were also not patent-eligible as not passing the Alice test. Litigation concerning the BRCA gene patents was also prevalent in Australia. Most recently, the Federal Court of Australia that isolated nucleic acids are different from their natural counterparts, and thus patentable. The issue of patentable subject matter and gene patenting was also present in the Canadian courts in 2014. In November, Children’s Hospital of Eastern Ontario (“CHEO”) commenced a patent proceeding against the patent holders for genes involved in Long QT syndrome, a cardiac disorder. In their , CHEO sought a declaration of non-infringement and invalidity of patents which claim isolated nucleic acids and testing methods of diagnosing and assessing a risk of Long QT. Should this case go to trial, the decision could have strong implications not only in subject matter eligibility, but the biotech industry as a whole.

The past year also saw further developments in the contentious arena of the promise of the patent doctrine in Canada. Eli Lilly continued with its $500 million NAFTA challenge against the Government of Canada and filed its before an arbitration panel. In , the Federal Court held that sound prediction of utility in fulfilling the promise does not require heightened disclosure of underlying facts and sound line of reasoning for inventions, unless it is in the context of a new use for a known compound. Also, the Federal Court of Appeal heard Mylan Pharmaceuticals’ and Apotex Inc.’s with respect to Pfizer’s drug Celebrex. In its decision, the Court outlined that the promise doctrine holds the inventor to an elevated standard where a clear and unambiguous promise has been made. However, a single promise may not apply to each claim. Regrettably for many observers, the case that was set to bring clarity to the interpretation of the promise doctrine did not happen in 2014. The much anticipated appeal of to the Supreme Court of Canada with respect to Sanofi’s blood thinner Plavix, was on the eve of the trial.

Canada also sported a rare patent infringement case involving a biologic drug (pharmaceutical product derived from an organism) in 2014. At the beginning of the year, the Federal Court released its decision, holding that Janssen’s antibody drug Stelara infringed AbbVie’s patent. AbbVie was granted an injunction but later in the year the set aside both the infringement decision and the injunction. The matter was sent back to trial before another judge. If the case is to continue, its potential precedential value should not be underestimated since pharmaceutical innovation has been shifting towards biological agents in recent years.

On the legislative front, the Government of Canada released the of the Comprehensive Economic and Trade Agreement between Canada and Europe (“CETA”). The Canadian government also passed , an omnibus budget bill, amending the Patent Act to be consistent with the Patent Law Treaty.

IP Osgoode in 2014

2014 was another busy year for IP Osgoode on all fronts.

We featured a star cast of guest speakers for the IP Osgoode Speaks Series. First up was Prof. Graeme Dinwoodie, who discussed the territoriality of trademarks in a post-national era. This event was followed by Dr. Emily Hudson who spoke on her empirical and qualitative research of user experiences with copyright law and user-rights exceptions. We also heard from Prof. Jane Ginsburg, who analyzed the US Supreme Court’s Aereo decision and the US’s international obligation to implement the ‘making available right’. The series ended in a most privileged fashion with the Honourable Justice Marshall Rothstein of the Supreme Court of Canada who spoke on the impacts of recent IP related cases. We recorded all of our events and if you missed any of them be sure to catch them on the site (, , ).

On October 23 to 24, 2014 IP Osgoode, along with its partners and collaborators, Lassonde School of Engineering, Stanford University’s d.school, and the Canadian Intellectual Property Office, hosted the first ever legal hackathon of its kind at Osgoode Hall Law School. The focus of the hackathon was to deconstruct the unnecessarily complex status quo patent system and discuss ways to make the patenting process more navigable and user friendly. At the end of the two day IP hackathon, the four teams of hackers developed four sets of different user-friendly prototypes with high potential for real life applications. The IP Hackathon was also the result of my research funded by the Social Sciences and Humanities Research Council of Canada (SSHRC).

Osgoode’s flagship IP Intensive program offered two new placements for the fall 2014 term, AstraZeneca Canada Inc. and Cineplex Entertainment. We look forward to the fall of 2015, when we will welcome Adjunct Professors Bob Tarantino and Dan Ciraco as Acting Directors for the IP Intensive, and a new group of enthusiastic students.

Now in its fourth year of operation, IP Osgoode’s Innovation Clinic continues to expand its pro bono services and clientele base through more collaborations and partnerships within 91��ɫ, namely, the Lassonde School of Engineering’s BEST Program and Innovation 91��ɫ.

2015 already promises to be another exciting and busy year for IP Osgoode. Stay tuned for an announcement of another IP hackathon event as we plan to build upon the successes of our first IP Hackathon and host another one in the very near future to tackle other aspects of IP commercialization. Preliminary plans for the next line up of stellar guest speakers for the next IP Osgoode Speaks Series are already underway. We will continue to provide up to date coverage of IP news and events, as well as an announcement of all our events activities on the IPilogue so please check out our website iposgoode.ca, subscribe to our weekly enewsletter, the IPIGRAM, follow us on Twitter (@IPilogue), and connect with us on Facebook and LinkedIn.

Of course, should you have any ideas on any projects you would like us to tackle, posts you would like us to blog on or wish to work with any of us at IP Osgoode please do get in touch as we would be delighted to hear from you.

Top 10 most read IPilogue articles of 2014

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With contributions from Jaimie Franks on Trademarks, Jordan Fine on Copyright, and Anastassia Trifonova on Patents.

The post IP Year in Review 2014 - The Perpetual Motion of IP Law appeared first on IPOsgoode.

The US����(1998), in addition to increasing criminal penalties for infringement of copyright material, offers a mechanism of ‘Online Copyright Infringement Liability Limitation’ by which service providers may escape criminal penalties if they are compliant to copyright owners’ demands to remove infringing content. Such demands are made simple to file, but nothing short of immediate compliance is required.

So who qualifies? The act defines a service provider as “an entity offering the transmission, routing, or providing of connections for digital online communications, between or among points specified by a user, of material of the user’s choosing, without modification to the content of the material as sent or received”, thus ensuring a content-neutral stance must be adopted by the service provider in question. Further limitations are granted based upon the variety of service being provided (with the act enumerating a total of four categories of service provider). s.512(c) provides that, for services that direct information at users (websites being the most common example of this), the following three conditions must be met to qualify for limited liability:

1. The provider must not have the requisite level of knowledge of the infringing activity, as described below.
2. If the provider has the right and ability to control the infringing activity, it must not receive a financial benefit directly attributable to the infringing activity.
3. Upon receiving proper notification of claimed infringement, the provider must expeditiously take down or block access to the material.

The website ‘Grooveshark’ is a����(UGC) site, in which music is uploaded to the service via its members. At issue in this case��was the allegation from Universal Media Group that although the website was complying with requests to remove infringing material, it had not only express knowledge of infringing activity, but the company was built by encouraging employees to upload infringing material in order to build enough content to attract traffic to the site.

The court found Escape (Grooveshark) liable on three counts for copyright infringement: directly liable for direct infringement (volitional conduct by the directors and employees of the company), and secondarily liable for the actions of its users. Secondary infringement has no statutory basis for a finding of liability, although after�� the common law in the US gives room to find a defendant liable if there is ‘just cause’. In the case of Grooveshark, this is easy enough to ascertain: the company was found to have directly encouraged users to upload violating material, and provided the means to do so. Furthermore, it was evident that Grooveshark was raising revenue from advertising on the site, which would also qualify a failure on the second point��above.

Canada has its own Safe Harbour provision in the��Copyright Act���ܲԻ�����, although in a much more simplistic form. It��offers service providers��an escape by deeming any person that only provides the means of telecommunication necessary for another person to communicate the work to the public to have not communicated the work to the public themselves (which would be the basis for infringement). Thankfully this has received��, who reasoned that the service provider exception could only apply to participants in a telecommunication who only provide “the means of telecommunication necessary”, and remain strictly a conduit, in which case liability is avoided. This requires a strictly “content neutral” approach to hosting services, in which any knowledge of the actual content could provide the basis of liability. For the purposes of Grooveshark and other UGC websites, this offers similar grounds to the conditions of the DMCA “Safe Harbor”.

In a nutshell, although we don’t have a specific statutory scheme here in Canada, the failure to remove infringing content from a server or website can be taken as evidence of authorization, though it is not considered as determinative as in the US. While the US system operates on a “notice and takedown” basis (in which receipt of a notice can potentially provide the basis for liability), Canada divorces the liability from the remedy, so that����(see ss. 41.25 and 41.26). That’s not to say that Grooveshark would escape a finding of liability in Canada, but for service providers who operate in good faith, the threat of being found secondarily liable of infringement is not present. In an era where US sites are being subject to��, one can argue that the Canadian playing field offers a good deal more stability for service providers than our neighbors��to the South.

Andrew Hunter is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

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In pre-action communications, Twitter sent the Defendants a draft transparency report containing the aggregate number of surveillance requests received. The Defendants denied Twitter’s request to publish, claiming that the information contained was deemed classified as it did not adhere to the “framework for reporting data about government requests.”[1] ��This framework was in a settlement agreement between Google (et al) and the Attorney General.

Google, Microsoft, Facebook, Yahoo and LinkedIn filed last year claiming that the statutory publication ban of surveillance request statistics violated their First Amendment Rights. In early 2014, the parties reached a negotiated agreement allowing the plaintiffs to publish data in one of two pre-approved disclosure formats; each approved format allowed the publishing of figures in bands of one thousand (e.g., 0-999 (“NSL”) requests received).

Twitter did not participate in this action, speaking out publicly against it after the agreement was announced. ��The criticisms centered around the belief that the bands are too broad and that any disclosures would require��“.” ��Furthermore, they hold that the framework should not apply to them as they were not party to the action and should not be bound by its outcome.

It is likely that the Defence will rely on a notice adjoined to the Settlement Agreement which announced the DOJ’s intention that the Agreement not be limited to the parties of the action. The notice stipulates, “It is the Government’s position that the terms outlined in the [Settlement Agreement] define the limits of permissible reporting for the parties and other similarly situated companies.”[2]

While the definition of ‘similarly situated companies’ has yet to be further elaborated upon, it is likely that the defence will argue that such a framework was designed to be a working model for all such disclosures.��Twitter argues in the action that the DAG Letter does not legally bind Twitter, and even if it does, Twitter is not 'similarly situated' to the other companies.

"It's our belief that we are entitled under the First Amendment to respond to our users' concerns and to the statements of U.S. government officials by providing information about the scope of U.S. government surveillance—including what types of legal process have or have not been received," wrote Ben Lee, Twitter Vice President, in a . "We should be free to do this in a meaningful way, rather than in broad, inexact ranges."

The lawsuit marks the latest in a series of courtroom battles held in the wake of former��National Security Agency��(NSA) consultant Edward Snowden’s exposé on the US Government’s surveillance activities. At its crux, each suit marks attempts by US-based social media giants to increase transparency by reporting figures of government surveillance requests on user accounts.

Snowden first brought the issue of Silicon Valley’s participation in government surveillance projects in a ground-breaking whistleblower interview with (2013).�� The interview has been called the biggest intelligence leak in the NSA’s history.[3] Post Snowden, Social Media companies have made strides to win back pubic confidence; part and parcel to this effort has been the voluntary reporting of the numbers of government surveillance requests received.

The legal battle that Twitter has waged has left a lot on the line for public policy. A decision by the Court will create a precedent on what restrictions should be placed on disclosure; one that will legally bind and dictate the future handling of the release of such information. An outcome in favour of Twitter could have the effect of overruling the Settlement Agreement and increasing disclosure capabilities for social media companies. US President Barack Obama identified increasing transparency as a priority in a : “We will also enable communications providers to make public more information than ever before about the orders that they have received to provide data to the government.”[4]�� Such a ruling would ease online social media users concerns and help mend the public distrust created by Snowden’s exposé. It would also solidify Twitter’s place as a leader in transparency reporting, an enviable position in the fight to gain and maintain user trust and loyalty.

Jennifer R Davidson��is an IPilogue Editor and a J.D. candidate at Osgoode Hall Law School.

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“Innocence of Muslims”

In 2012, producer Mark Basseley Youssef cast Cindy Lee Garcia, a struggling actress, in a minor role in the film “Dessert Warrior”, a production that would never come to fruition. Garcia’s performance would instead appear in a 13-minute controversial film released on YouTube entitled “”. ��The film portrayed the prophet Mohammed as a murderer and sexual deviant. Five seconds of Garcia’s previous work on Dessert Warrior were used in the film, and the clip was partially dubbed over so that she appeared to ask, “Is your Mohammed a child molester?”

It was only when the Muslim backlash began that Garcia realized what had happened.

The inflammatory film immediately sparked political controversy for its anti-Islamic content, causing outrage throughout the Muslim community. Garcia began to receive threats to her life, and petitioned Google to remove the content from YouTube. After Google refused her repeated requests, on the basis that she was not the copyright owner of the film, Garcia initiated legal action to obtain an injunction, requiring Google to take down the video on copyright infringement grounds.��

Decision by the United States Court of Appeals for the Ninth Circuit - Reconceiving Notions of Copyright Ownership

In a 2-1 decision, Chief Judge Alex Kozinski proposed that an actor’s performance in a film is copyrightable, when fixed, if it evinces some minimal degree of creativity. This statement appears inconsistent with , a longstanding authority on what it means to be an author. In that case, the court held that a creative contribution does not suffice to establish authorship of a movie. However, Kozinski argued that Garcia’s situation could be distinguished from Aalmuhammed, as Garcia was not asserting ownership over the whole work: “[n]othing in the Copyright Act suggests that a copyright interest in a creative contribution to a work simply disappears because the contributor doesn’t qualify as a joint author to the entire work.”

Despite the fact that Garcia conceded she had no creative control over the script or her performance, the majority held that Garcia likely has a copyright interest in her personal contribution, being “the portion of the film that represents her individual creativity.” Finding for Garcia, the Court ordered Google to remove all copies of “Innocence of “Muslims” from YouTube and every other platform within Google’s control. In addition, the order requires that Google take all reasonable steps to prevent further uploads of the film.

Most contributions to a motion picture are created as works made for hire (the US equivalent of works made in the course of employment under Canadian copyright law), which prevents the actor from claiming copyright in his or her performance. Alternatively, the filmmaker’s use of the actor’s performance will usually be permitted due to an explicit or implied license.�� As such, it may be a rare occasion where actors can claim copyright in their individual performance in a film.

Nevertheless, the different interpretations of the divided Court illustrates the uncertainty over the application of the law in this area.�� The majority found that Garcia had a copyright interest in her contribution, although the dissenting judge noted that Garcia was "an actress acting out a script that she did not write under the direction of someone else who provides all of the instruments, tools and leadership.” Characterized in this manner, it is difficult to see how Garcia’s performance jives with traditional conceptions of authorship and copyright-protected expression under both US and Canadian law.

The decision implies that anyone who contributes creative expression to a movie or other form of copyrighted work may have an independent copyright interest, which they can use as a sword against the work’s distribution and performance.

What’s the Big Deal?

To avoid liability and benefit from the safe harbor provisions in the US (DMCA), ISPs and OSPs (service providers) must abide by the legislation’s "notice and takedown" (NTD) rules under .�� Under the DMCA, service providers are required to prevent infringement by expeditiously taking down allegedly infringing subject matter when they receive an allegation of infringement from a copyright owner.[1]

While the Ninth Circuit’s take-down-and-stay order originally required Google to remove the film in its entirety, in response to Google’s objections, the Court later restricted the order to versions of the film that include Garcia’s performance. However, the tailoring of the order does not alter the fact that the Court’s novel approach to copyright ownership increases the burden on service providers in responding to allegations of copyright infringement under the DMCA.

The NTD system has already been heavily criticized for introducing a pre-judicial determination of copyright infringement on the part of service providers, who have no expertise in copyright law.[2] As a result, service providers will often remove content based on tenuous or unsubstantiated copyright infringement claims in an effort to immunize themselves from liability.

By expanding the scope of authorship to contributors who wouldn’t previously have been considered copyright owners, the Garcia decision forces online content platforms to ascertain which of the actors in a particular video have a legitimate copyright claim. As Andrew McDiarmid of the US Center for Democracy and Technology : “DMCA takedown notices from frustrated bit players, which last week would have been easily ignored as not coming from the copyright holder for the work, might now be honored for fear of litigation.”

Suppose an individual alleges infringement of their contribution to a copyrighted work and notifies the service provider, as Garcia did. ��Due to last week’s decision and the liability structure of the DMCA, rather than dispute the claim, that��service provider is much more likely to remove the entire work without bothering to determine the legitimacy of the person’s copyright interest or going through the hassle of removing only those segments pertaining to the claimant’s particular contribution. It seems reasonably inevitable that the Garcia decision, combined with the NTD regime, will prove to be a significant barrier to freedom of expression.

Such damaging repercussions may have been avoided under a notice-and-notice system of��service provider liability, such as the one implemented by the Canadian Under our Canadian scheme, service providers are not liable for infringement as long as they forward the notice from the copyright owner to its allegedly infringing end user. There is no requirement that the��service provider remove the disputed content. Under such a system, the consequences of the Garcia decision for service providers would be limited to the administrative hassle of forwarding significantly more alleged infringement notices from a greater pool of potential copyright owners. This is particularly noteworthy given that it may be easier for someone in Ms. Garcia's shoes to claim copyright infringement in Canada in light of and newly enacted , which contemplate the copyright interest of performers in certain circumstances.

Although a US decision, the Court’s ruling in this case may have a chilling effect for internet users and content creators worldwide, as the future of online expression and democratic dialogue is dangerously threatened under the notice-and-takedown provisions of the DMCA.

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In the decision no. 11/2014 handed down on January 31st, the Audiencia Provincial Civil de Madrid has rejected Telecinco’s appeal against the judgement of the Juzgado de lo Mercantil dated 20th September 2010.

The proceedings concerned a claim for copyright infringement raised by Telecinco as a consequence of the posting of some videos on the YouTube platforms youtube.es and youtube.com.

The Court of First Instance had found that YouTube bore no responsibility for the publication of copyrighted materials, since it acted as hosting provider having no control over the contents posted by users through the use of its services.

The appeal decision establishes itself in the wake of the judicial efforts of EU Member States’ courts to determine upon which conditions ISPs should face the consequences of violations (including copyright infringements) committed by users.

The legislative framework in force in the EU, in fact, constituted by the Directive 2000/31/EC (E-Commerce Directive), contains provisions which are likely to appear dated and, to a certain degree, not consistent with the evolution of the technological scenario.

The Court of Justice of the European Union, in the leading case Google v Louis Vuitton (C-236/08 to C-238/08), has pointed out that the provisions governing ISPs liability must be construed in accordance with the ways operators actually perform their services. A crucial factor to determine whether the liability exemptions set forth in the Directive are enforceable, in the Luxembourg Court’s view, is whether the ISP in question does act in a purely passive way, i.e. as an intermediary.

Moving to the case, the appeal brought by Telecinco against the decision of the Juzgado Mercantil was based on different grounds.

First of all, Telecinco alleged that YouTube did actually operate as a content provider with an editorial control over the website. Then, the point was not whether liability exemptions were applicable or not, since the argument of Telecinco assumed that YouTube bore a direct responsibility, acting as a content provider.

In a nutshell, the attempt of Telecinco was to demonstrate that YouTube fell outside the scope of the service providers and, accordingly, could not avail of the provisions of the E-Commerce Directive.

To support this claim, Telecinco referred to some circumstances that were supposed to reflect the exercise of an editorial control by YouTube. Among others, it was pointed out that (i.) YouTube had obtained from the relevant collecting societies the licenses concerning copyright and related rights over certain contents; ��(ii.) YouTube had established a content regulation through the implementation of a policy that must be accepted by users; ��(iii.) YouTube had provided particular “Terms and Conditions of Service”; (iv.) YouTube selected the most popular contents and provided a classification of the contents in different categories.

According to the Court of Appeals, none of these circumstances support the assumption that YouTube was operating as a content provider. The fact, for instance, that YouTube had obtained licenses for the use of certain contents or that contents were classified in different categories, does not imply that it is acting in a non-passive way, in the sense required by the Court of Justice to exclude the applicability of the liability exemptions.

The second point raised by Telecinco was that, even if YouTube acted as a service provider, the liability exemption for hosting providers -entrusted to Article 16 of the Law 34/2002 (implementing the E-Commerce Directive)- was inapplicable. In the appellant’s view, even were Telecinco qualified as service provider, it would have nevertheless had actual knowledge of the existence of unlawful activities. Thus, Telecinco could not benefit of the liability exemption.

In this regard, the Court expressly quotes the reasoning of the Tribunal Supremo in a ruling of 2009 regarding the construction of the requirement of “actual knowledge”. In the view of the Spanish Supreme Court, the actual knowledge must be established not only “when a competent authority has declared the unlawful nature of the contents, ordered the removal or the blocking of the same and the provider has been noticed of such decision”. In fact, even the knowledge of the unlawful activities that a provider obtains indirectly or otherwise, regardless of the specific ways, is relevant.

In the case at stake, the Court points out that a notice was given by Telecinco to YouTube that copyrighted contents had been unlawfully uploaded on the website and that Telecinco’s mark was featured on the images of the concerned videos. Making reference to the judgment of the Court of Justice in the case ��’O��é���� (C-324/09), the Court of Appeals has clarified that the sole communication that a rightholder provides to the owner of a website noting the existence of violation may not suffice to establish the “actual knowledge” requirement. For instance, the notice could be not specific enough in defining the contents that amount to copyright infringements.

In the case at stake, the Court has found that nothing in the notices given to YouTube permitted to identify which contents were infringing Telecinco’s rights. Then, YouTube had no actual knowledge of the parts of the website that must be subject to removal or blocking as result of a copyright violation.

The third and last argument advanced by Telecinco claims for the imposition over YouTube of a system aimed at blocking the access to its services to the users involved in copyright infringements.

As regards this point, the Court of Appeals has referred to some decisions of the Court of Justice (Sabam, C-360/10 and Scarlet C-70/10, in particular) to conclude that such a system would (i.) undermine the protection of other fundamental rights enshrined in the Charter of Fundamental Rights of the European Union, and (ii.) be in contrast with the absence of a general obligation of control over ISPs.

In fact, any order directed to ISPs for the removal of unlawful contents in breach of copyright is not per se prohibited in the EU relevant law, but must respect the conditions set forth under the Directive 2001/29/EC and 2004/48/EC, further to the E-Commerce Directive.

Then, the Court has rejected the appeal and confirmed the decision of the Juzgado Mercantil.

In light of the arguments convincingly used by the Court, it is supposed that there will be no room for different rulings in the case in the future.

[The original posting of this can be found on the blog, MediaLaws: Law and Policy of the Media in��a Comparative Perspective.]

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Having analyzed the numbers from Google’s latest , and other media outlets that the removes approximately 8-9 sites from its indexes every second. This is done in order to comply with takedown requests issued through the United States’ (DMCA).

In spirit, Title II of the DMCA works to balance the interests of intellectual property (IP) rights-holders with the technological and economic needs of Internet-based services and companies. introduces a mechanism that allows IP rights-holders to alert online services, such as search engines, about the existence of infringing content or websites.

This procedure is designed to limit the liability of online service providers by giving them ‘safe harbor’ protection against monetary liability that could otherwise result from the infringing activities of third parties. Amongst other conditions, these liability limitations are granted if “upon obtaining such knowledge or awareness [of infringement], [the service provider] acts expeditiously to remove, or disable access to, the material” (DMCA, Sec. 512(c)(1)(A)(iii)). Section 512 also provides opportunities for challenging notices and/or takedowns that are considered improper or illegitimate.

Although for its unintended consequences, the combination of the ‘n�dzپ�����-���Ի�-�ٲ�����Ƿɲ�’ mechanism with the ‘safe harbor’ provisions has been critical to the continuing evolution of the Internet as a tool for social and economic growth. However, there are concerns that this system and the spirit of the law are being manipulated and used for purposes not related to copyright infringement.

In a Yale Law School Information Society Project talk, , Google’s Legal Director for Copyright, Fred von Lohmann, that the company is seeing an increase in the amount of DMCA notices that are used for non-copyright related purposes or as a form of . These developments problematize the DMCA system at a time when search engines and other online service providers are facing criticism.

In particular, creative industry representatives are taking aim at the perceived inaction of search engines to deal with how they link to websites containing infringing content. In a recent to the House Judiciary Subcommittee on Courts, Intellectual Property and the Internet, the Chairman and CEO of the Recording Industry Association of America (RIAA), Cary H. Sherman, took aim at Google and mentioned the company 19 times. This is a topic the organization is familiar with: in the past year, the RIAA nearly 30 million notices to Google.

Responding to an August 2012 , which laid out the search engine’s plans to adjust its algorithm to downgrade websites with repeated instances of copyright infringement, Sherman “ … indicate that sites for which Google has received hundreds of thousands of infringement notices are still appearing at the top of search returns. Worse still, users are being directed to these sites through the use of ‘autocomplete’ features”.

These calls come as Google and other online service providers and technology companies are increasing collaboration efforts aimed at minimizing the viability of infringing websites. On 15 July 2013, , then the U.S. Intellectual Property Enforcement Coordinator, that “24/7 Media, Adtegrity, AOL, Condé Nast, Google, Microsoft, SpotXchange, and Yahoo!, with the support of the Interactive Advertising Bureau” were committing to a set of . This voluntary system will work to disable advertising support for websites that are identified through the notice-and-takedown system and .

Time will tell if the current ‘n�dzپ�����-���Ի�-�ٲ�����Ƿɲ�’ regime and the emerging Ad Network Best Practices will have a significant impact on curtailing infringing websites. With the number of legitimate and illegitimate websites growing on a daily basis, both the content and the online service industries face an uphill battle. What is certain, though, is that in order for these industries and the broader public to thrive in the future, the calls for need to be carefully calibrated so that government regulations and business policies contribute to the sustainability of the Internet Economy.

In theory, relying upon voluntary and technological means for content filtering will be beneficial. However, as recent cases have shown, the all-seeing but non-contextual ‘eye’ of an algorithm-based approach can lead to and . While imperfect, the current DMCA-based approach provides necessary tools for protecting the rights of creators and IP rights-holders as well as challenging mechanisms that can be used to oppose illegitimate uses and protect the rights of citizens and the public at large. The real test will to be to ensure that the spirit of the DMCA can be promoted and protected going forward.

Joseph F. Turcotte is an IPilogue Editor, a PhD Candidate and SSHRC Doctoral Fellow in the Communication & Culture Program (Politics & Policy) at 91��ɫ, and a Nathanson Graduate Fellow at the Jack & Mae Nathanson Centre on Transnational Human Rights, Crime and Security at Osgoode Hall Law School.��

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On 21 December 2012, the Milan Court of Appeals overturned��the decision issued in 2010 by the Court of Milan in the��’Google Vividown’ case. Filed on 27 February 2013, the Court��of Appeals’ decision was based on and confirmed the general��principle that Internet Service Providers (ISPs) have no��general duty to monitor user-uploaded content on their��systems. Laura Liguori and Federica De Santis, Partner ���Ի���Associate respectively at Portolano Cavallo Studio Legale,��analyse the impact of the case on ISPs’ liability and the wider��landscape of overlapping interests in the digital climate.

In this case, three executives from Google were sentenced to a six-month��suspended conviction for unlawful data processing pursuant to Italian data��protection laws after a video showing an autistic boy being bullied by his��classmates was uploaded to the Google Video platform. The Milan Court of��Appeals overturned the 2010 first instance ruling by finding the Google��executives not guilty for unlawful data processing under Italian law.

Court of Appeals

First, the Court of Appeals upheld the lower court’s decision to acquit the��Google executives of defamation, since Google had no duty to review the��content on its system. According to the Court of Appeals, an ISP’s functionality��would be clearly impaired if it were required to prevent defamation on its��platform, as the ISP would have to apply general filtering systems on the��uploaded content to prevent defamatory postings.

The Court of Appeal also ruled:

• the jurisdiction of the Italian Courts applies in the case at hand, as the��damages (the diffusion of the relevant content) occurred in Italy, regardless of��where the Google servers with the uploaded content are located.
• the Italian Data Protection Code (Legislative Decree no. 196/2003) applies to��Google Italy either because it is established in Italy according to Section 5,��paragraph 1 of the Data Protection Code or because Google Italy should be��considered as ‘non-automated equipment’ located in Italy for processing��personal data according to Section 5, paragraph 2 of the Data Protection��Code.
  
  

Nevertheless, the decision reversed the unlawful data processing conviction for��the following reasons:

• No general duty to monitor may be imposed on ISPs, in accordance with the��relevant provisions under the EU E-commerce Directive (2000/31/EC),��implemented in Italy by the E-commerce Decree (Legislative Decree no.��70/2003). From a technical standpoint, it would be impossible to impose��such a duty, which could undermine freedom of expression.
• Failure to provide data subjects with a proper privacy notice does not result��in unlawful data processing, punished as a crime under Section 167 of the��Italian Data Protection Code, and is subject only to administrative fines��according to Section 161 of the Code.
• Only the user who processed the autistic boy’s data when she recorded the��disputed video and then uploaded it to the Google Video platform should��have obtained the boy’s parents’ consent before the video was uploaded to��Google Video, as she was the relevant data controller with regard to such��data. This did not apply to Google which, according to the Court, is not the��controller of the data in the video uploaded by users nor is processing data��when storing such data.
• Unlawful data processing is considered as a crime only when personal data��are processed (i) with a view to gain an advantage; or (ii) with wilful intent to��cause harm to others. The Court of Appeals held that in the case at hand,��Google had no intent to profit from the disputed video since no sponsored��link appeared on it and the Google executives did not act with ‘wilful intent’��since they were not aware of the content of the disputed video before it was��uploaded.
  
  

Conclusion

The Court of Appeals decision offers a comprehensive overview of Italian case��law regarding an ISP’s liability for when users violate laws or infringe on others’��rights, especially in cases of violation of personal data protection laws. Against��this backdrop, the decision does not address Google’s role from a data��protection standpoint nor it clarifies why handling a video (e.g. storing or deleting��it) is not tantamount to processing of personal data.

While there are still unclear issues in the decision, the latter will contribute��significantly to the ongoing debate about how to balance the competing��interests involved in the digital environment: protecting personal data and third��parties’ rights vs. safeguarding freedom of speech and internet freedom.

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