I spent the semester working on all manner of legal issues and learning about all the different departments and deals that involve IP. Branding and licensing of IP is increasingly important for any company and most agreements involve some mention of the parties’ IP. However, I also learned about all the other areas of law that a broadcaster deals with. Everything from trademark licensing, to pensions, to civil procedure, to language rights, to defamation, to procuring pencils runs through the legal department in some way at some point. In-house lawyers at a broadcaster have to be ready to work in any field of the law. In the legal department at a broadcaster you also get to work on interesting questions you never thought you would have to answer, like reviewing puppets’ costumes for potential liabilities.

Although the CBC deals with a myriad of legal issues, I spent a great deal of time doing research on IP related issues. After all it is an IP intensive. I learned that unlike in the world of school assignments, a clear and definitive answer is a rarity. Often it is a matter of finding the closest or most applicable answer from the case law or textbooks and extrapolating that information to determine how to provide future guidance, or how to respond to the issue. It quickly became apparent to me just how much lawyers have to make sure that their research is solid and then trust their judgment. It was also amazing to have my judgment trusted and to see my opinions or suggestions actually incorporated into practice.

As part of my work with the media department I got to spend a day in the newsroom. I expected to spend the day chasing down a lead, and getting to see how stories get made before they end up on a lawyer’s desk to review for defamation. What I did not expect was to be in the centre of a chaotic and tragic day in Canadian history. I spent the day watching as the newsroom and the nation scrambled to decipher what had happened on Parliament Hill on October 22^nd 2014. Peter Mansbridge garnered international praise for the manner in which he covered this national tragedy and it was extraordinary to be in the newsroom that day.

The biggest thing I learned working in-house for a public broadcaster was that counsel could be pulled in so many directions. There are obligations as a government entity, to the corporation, to the departments within the corporation (which may not always have the same goals), and to outside parties that you contract with. Even in relatively simple transactions there is a whole web of responsibilities and relationships you have to consider. Once you conclude a file with a client you may still work across the hall from them, and likely will have to maintain an ongoing relationship.

The IP intensive has been a greatly rewarding experience. Getting the chance to apply what I’ve learned at Osgoode in a real work setting was an amazing opportunity. I also had the good fortune to spend 10 weeks with an awesome team of people. I really did fall for CBC, and occasionally bump into Steven and Chris (literally).

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The 2014 budget, , is an omnibus bill that includes changes to several pieces of legislation, including the Trade-Marks Act. While some of the proposed changes are relatively insignificant issues of terminology, others have the potential to alter fundamental aspects of Canadian Trade-mark law.

According to the , the changes are intended to make the Act consistent with treaty obligations and will adopt the .��Changes to terminology include an end to the hyphenated “trade-mark” and changing “wares” to “goods”. Simplified registration requirements will also reduce the term of registration from 15 to 10 years.�� The new definition of a trade-mark will include a sign or combination of signs including; 3D shapes, holograms, moving images, mode of packaging goods, sound, scent, taste, texture, and position of sign. The new Act will also remove distinguishing guises and introduces utilitarian function as a limit to registrability. In addition, the Act will permit divisional applications.

The change causing the most consternation is the apparent move from a use-based system to one that is established merely on registration. In the current system, one can apply to register a proposed mark not yet in use. However, if approved, the proposed mark is not actually registered until the owner files a declaration of use. As recently as the decision, the Supreme Court has��stated that:

Registration itself does not confer priority of title to a trade-mark. At common law, it was the use of a trade-mark that conferred exclusive right to the trade-mark. While the Trade-Marks Act provides additional rights to a trade-mark holder than were available at common law, registration is only available once the right to the trade-mark has been established by use.

Under the amended legislation, this would no longer be true. Applicants will be able to gain registration for proposed marks without any proof of use of that mark. This departure from fundamental statements of law is likely to result in some tumultuous case law in the coming years.

The shift away from use will necessitate new statements on modes of analysis. For instance, tests for confusion rely on the use of confusing marks or the potential for confusion if the mark is used in any manner open to it under the registration, as the court held in Depreciation of goodwill also has an element of use. How can one depreciate the goodwill in a mark if the owner has not established any goodwill or consumer associations with the mark through use in the marketplace? Theoretically, an owner may be able to argue that even absent their own use, use of the mark by another could depreciate the goodwill and value in the mark. For example, if the junior user had an inferior or hazardous product or created a poor reputation in the marketplace. The senior rights holder may be able to argue that they will have to overcome this depreciation if they actually enter the marketplace. However, it is still difficult to conceive of how courts will protect marks that are unused.

Some fear that the changes will result in an increase in “trade-mark trolls”, entities willing to pay the fees and go through the application process to then sit on marks, which will congest the register and result in costly litigation for individuals who may wish to actually use the marks. Yet, the marks will still be vulnerable to expungement proceedings under of the Act three years after the date of registration, which will provide a check on rampant registration. At that point, interested third parties will still be able to make a request that the registrar demand proof of use. If the registered owner does not produce evidence of use, then the registrar may expunge the mark. It would then be open to the interested party to apply for registration. However, nothing would prevent the initial rights holder from simply re-applying for the mark and sitting on it for another three years.

Although the bill represents an attempt to simplify the registration process, its likely effect will be an increase in litigation. ��Without use to act as a guide, courts will have to navigate new tests and precedents as rights holders engage in disputes to clarify their rights under the changed legislation.��For now it is��, but if enacted as is, Bill C-31 is sure to bring some interesting years to trade-mark law.

Allison McLean is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.��

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(of Gowling Lafleur Henderson LLP) moderated the final panel of the day entitled “Piracy & Digital Distribution”, in which panelists (of Basman Smith LLP), Steve Teixeira (of Universal Music Canada Inc.), and Osgoode Hall Adjunct Professor (of the Motion Picture Association - Canada) spoke about how piracy has affected their respective industries of sports, music, and film.

Kevin Fisher discussed the unique aspects of piracy in live broadcast sporting events. ��Since the value in a sporting event exists in the broadcast, the piracy in this industry includes satellite signal theft, grey market and free-to-air systems, and event channel streaming online. Individuals can legally purchase a broadcast, set up an event stream on a user generated site, and broadcast the stream to the world. This has also led to a new sub-industry of directory sites that guide users to the pirated streams.

Steve Teixeira began his discussion by asking whether anyone in the room has��ever pirated music, and most of those present raised their hands. However, when he asked how many people had stolen a physical CD, only one hand remained raised. Teixeira posited that this disconnect was the result of how the public values (or perhaps, devalues) the more abstract concept of digital music products as compared to physical products. He suggested that this social acceptance of piracy has serious implications for the industry and provided some insight on how the industry will move forward to work towards recapturing paying consumers.

Sundeep Chauhan discussed the increasing trend of dressing up pirated DVDs to look like legitimate products��and selling them at a slightly lower price point, and the resultant displacement of the legitimate physical product market. He also discussed the impact piracy has had on the film ecosystem. Money taken out of the industry due to piracy has disrupted the ability of film makers to reinvest in the film industry. The trickle down effect of piracy has also resulted in job losses both within the industry and for those with jobs related to film production (such as makeup artists, chauffers, general contractors, etc.).��

All three panelists agreed that litigation against end user consumers is not the goal of rights holders.�� After initial attempts to enforce rights against individuals by the music industry resulted in a public relations backlash, content owners realized that it does not make sense to alienate their consumers. It stands to reason that aggressively pursuing consumers and then turning around and asking them to purchase your content was not a viable strategy. Now, the goal is to pursue those who make content available and make profits through subscription fees and advertising revenue. These sites, referred to as “wealth destroyers” (Pirate Bay was an oft-mentioned example), drew criticism as they capitalize on the investments of others while drawing away the profits to be gained from those ventures.

The panelists highlighted education as an important resource to combat piracy. Erasing the grey area and shaping cultural values about online theft through education will be a valuable tool for content owners moving forward. Intermediary companies will also require this education. These companies pay for advertising space or are involved with the authorization of purchases on sites hosting pirated content. The damage done by "wealth destroyers" can be reduced, and hopefully eliminated, ��if companies are made aware of the consequences of their participation in piracy.��

Although industries affected by piracy were initially resistant to new business models made possible by technological advances, entertainment industries are increasingly embracing emerging business models. The goal of these companies is not to resist innovation, but to ensure that the technology developers and entertainment industries collaborate to improve their products and services. For example, the key to the future use of technological protection measures (TPMs) is to reduce the restrictions placed on users while maximizing protection against would-be pirates. In the past, implementing TPMs often meant that individuals could not use their legally purchased content in legally protected ways��such as��format shifting. Now, TPMs facilitate new business models like iTunes, allowing rights holders to protect content and feel secure about releasing it online while providing their product to the consumer.��For example,��providing a time-limited movie rental at a lower price in addition to a purchase option.��The use of these services allow further opportunities to meet the needs of different consumers by allowing for such things as differentiated pricing options.

It is clear that the entertainment industries are working to embrace technological changes and the new methods in which they can provide content. Teixeira noted that as time goes on, music streaming may become the way of the future. Whether it is through subscription or advertising models, the hope is to eventually increase revenue streams��as these services build up a consumer base. Fisher suggested that with the right technology, live sport streaming can cut out the pirates as well as divert more revenue away from the middle men and directly back to content creators. Chauhan indicated that filmmakers want their content on as many platforms as possible and to work with consumers to provide options catered to their needs, making it just as easy to access legal content as it is to find pirated content.����Perhaps embracing the very technology that initially allowed bootlegging to run rampant will end up saving these industries from piracy.

��Allison McLean is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School. ��

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High-end bicycle part and accessory manufacturer Campagnolo filed an application for the proposed use of the word mark “” in association with bicycle parts and accessories. Notwithstanding the exclusion of “tires, brakes, wheels, rims and spokes” from the listing of wares in the application, and the fact that Bridgestone does not sell bicycle products in Canada, Bridgestone filed an opposition against the application. Bridgestone based its opposition on of the Trade-marks Act - confusion with its own registered mark “”, which is used in association with tires, tubes, and wheels, as well as the mark “” used in association with tires and inner tubes.

The Federal Court reviewed the board’s findings on the factors outlined in ��and noted that per , other factors gain significance once the appraiser finds the marks identical or very similar. Although many of the factors did weigh in favour of Bridgestone’s opposition, due to the resemblance of the marks, the two central factors to the outcome were the nature of the wares and the nature of the trade.

On appeal to the Federal Court, Bridgestone submitted that it would be hard to imagine wares being more similar than in this instance (motor tires and bicycle accessories) and that confusion was likely because Bridgestone’s wares potentially may sell through the same channels of trade as Campagnolo’s. Bridgestone’s opposition was premised on the position that although Campagnolo’s current market is high-end specialty stores, in the future they might create a less expensive line and/or sell their products in box stores alongside Bridgestone’s products. Bridgestone submitted that the Registrar should have looked at hypothetical channels of trade that may be used in the future.

In this case, the specific exclusion of “tires, brakes, spokes, rims and wheels” likely saved the mark from a finding of confusion. In Mr Submarine Ltd v Amandista Investments Ltd (1987), 19 CPR (3d) 3 (FCA), the Federal Court of Appeal remarked that the test for confusion must have regard for “whether confusion would be likely if the appellant were to operate in that area in any way open to it using its trade mark in association with” the respondent’s wares or services. This specific exclusion of Bridgestone’s wares means that it is not open, nor will it ever be open, to Campagnolo to use its mark in association with those wares if the registration were successful.

In addition, the Court held that the Registrar was correct to only consider the predictable and usual channels of trade rather than simply any hypothetical channel imagined by Bridgestone, following the Federal Court of Appeal’s decision in . In that case the Court approved a statement from the TMOB in that, “the parties’ respective statements of services must be read with a view to determining the probable type of business or trade intended by the parties rather than all possible trades that might be encompassed by the wording.” Though a confusion analysis will look at any area open to use of the mark, the court restrains the analysis to the realm of probable trade. In this case, though the scenarios posited by Bridgestone were deemed as possible, they were not considered probable. The mark’s relevant trade must be grounded in realistic possibilities in order for this factor to point towards a finding of confusion.

While at first glance this appears to be a reasonable constraint on the scope of analysis, I think that this subjective inquiry could cause problems for the court in the future. In this case, the court dealt with the straightforward example of a registration application that excluded the wares covered by a pre-existing mark which it would have allegedly been confused with. Moreover, the court determined that consumers of Campagnolo products would be sophisticated and likely to know the difference between Campagnolo and Bridgestone wares - even if Bridgestone did start to sell bicycle tires and Campagnolo sold their wares in box stores alongside Bridgestone products. However, it is likely that further clarification on how one determines the demarcation point between possible and hypothetical channels of trade will be required. For example, the quality of phone cameras today can and are often offered in the same channels of trade. Would a court have considered an SLR camera and a cellphone to be probable to enter the same channels of trade even ten years ago? ��Hypothetical versus probable is not only a subjective determination, but may ignore the nature of innovation in a number of contexts.

Allison McLean is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.��

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Claim for Infringement and Counterclaim

Mattel argued that Zynga's use of the mark was contrary to article 9 of the��.��This provision allows exclusive rights to a community mark, and the right to prevent use of a sign that is either : 1) identical ��to the registered mark, 2) similar to the registered mark and likely to cause confusion in relation to identical and similar goods, or 3) where use of the mark takes unfair advantage of the distinct character and reputation of the community mark.��Zynga counterclaimed that the SCRAMBLE mark was invalid as it lacked distinctive character, was descriptive and had common usage, and that their mark was therefore non-infringing.

Evidence provided to the court indicated that Mattel was aware of the game for a number of years before launching a claim. At the time of the decision, the game was in its fifth version, and not only was Mattel aware of the game in earlier incarnations, but employees played the game with each other. The court also found it troubling that the claim was launched soon after negotiations regarding a joint venture between Mattel and Zynga broke down. The court concluded that such a delay indicated at worst that the negotiations were not carried out in good faith, and at best, that Mattel did not consider the game worthy of an infringement claim.�� In comparison, the court found that an email detailing Zynga’s concern over the potential confusion between Scrabble and Scramble to be insignificant.

Decision

The Court held that the word “scramble” was the common name for this type of game. As a result, the court agreed that Zynga merely used a wording in��the public domain that is descriptive of the game and therefore did not infringe the mark.��The Court concluded that neither “Scramble” nor “Scramble With Friends” infringed the SCRABBLE trade-mark. The Court deemed that mark was not similar and not likely to cause confusion for infringement or passing off. Yet, the Court did qualify this decision on a modification of the logo. The Scramble logo at the time contained an “m” on its side. The Court found that this gave “the impression that the word is scrabble when one looks at it quickly and has the propensity to confuse.” Although Zynga was largely successful they will have to alter their logo to avoid this potential confusion.

Canadian Outcomes

In North America, Hasbro holds the�� trade-mark, and Electronic Arts holds the rights to�� of the game. In addition, Hasbro entered into an����to create physical versions of games in the Zynga family, similar to the failed agreement in the Mattel claim. These games include a "" version of Monopoly��and a "" version of Pictionary that have tie-ins to the online versions of Zynga games.

In a similar case in Canada,��, the Canadian Federal Court examined the similarity between Trivial Pursuit and a parodic adult version. In a comparison of the script and packaging, the court found that the defendant’s script was reminiscent of, but not identical to, the plaintiff’s script. The court went on to hold that the design and appearance of the game intended to raise an association with Trivial Pursuit. The court in that case rejected an argument that Trivial Pursuit was descriptive of the type of game, as it did more than merely describe the game. In that case, the court turned its mind to the use of a trade-mark and made it clear that the focus of the action is "use", not the similarities between the games.��In that case, the court did find that the parody infringed the Trivial Pursuit trade-mark.

Due to the agreement between Hasbro and Zynga and the fact that the game is unavailable to Canadian consumers, a similar claim is unlikely to be made in Canada. If a claim was brought in Canada, the claimant would have to show infringement of the SCRABBLE mark itself, rather than rely on the Zynga game’s similarity to Scrabble, or infringement of SCRAMBLE, since that ��is owned by Konami. ��Even absent this web of ownership, I believe that based on��Horn Abbot,��a Canadian court would be unlikely to find infringement in this case. To��determine whether trade-marks or trade-names are confusing, the court must have regard for the surrounding circumstances including the degree of resemblance between the marks in appearance or sound or the ideas suggested according to ��of the��Trade-marks Act.��Unlike in��Horn Abbot, the marks are not similar in appearance. The UK court noted the use of��different words, script and packaging. Furthermore, I think that the addition of “With Friends” to the Zynga game's name identifies Scramble as a member of the Zynga "With Friends" family of marks rather than an attempt to confuse consumers by passing off.

In this case, Scrabble appears to be scrambling for a better result. A Mattel spokesperson has that Mattel was “disappointed that the court did not rule that Zynga should cease using the Scramble name, which Mattel intends to appeal.”

Allison McLean is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.��

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Google recently , presumably for use with Google Glass, that would potentially allow users to interact with the device and their environment. Currently, . According to the patent, these gestures will provide user input to a wearable computing device or a head-mounted device (Google Glass, in this case) to indicate items that "may be considered or classified as important or worthy of attention or notice". The device would recognize these gestures and then carry out particular actions in response. The device would then transmit the image to a “social networking service”.

The three hand gestures provided in the patent are the “heart”, the “frame” and the “loop”. When the device recognizes the user making a "heart" gesture with two hands it will generate an image bounded by the hands and will in this case, add a qualitative ranking to the image, similar to “liking” a post on social networks. The second gesture, the “frame”, involves making a frame with the user’s thumb and forefinger finger at a right angle in the same way that we think of directors framing a shot.�� An image is generated by the device, bounded by the diagonal right angles, uploaded to a server (and potentially to a social networking service). Finally, the “loop” requires the user to trace a closed loop with their forefinger and the device will determine the bounds of that loop, generate the corresponding image, and upload the image to a server (or again, to a social networking service).

Of course, patenting hand gestures is not a new phenomenon.�� There are several existing patents for physical gestures associated with an invention. These functional gestures are increasing in popularity with the rise of touch screens and motion sensing devices. Some recent examples include Apple’s patent for “” and Telefonaktiebolaget L M Ericssons’ patent on “”.

Patents for a gesture associated with functions like zoom, unlock, or even making a frame, may not be all that controversial as a patentable subject matter in my view. The gesture as part of the patent is associated with a function, and a particular device, which takes the gesture into the realm of patentable subject matter.�� Even though the frame is a common gesture, it makes functional sense as a way to bound the image to be captured when using a wearable device that utilizes your field of vision. This gets interesting when it comes to a patent claim that the heart symbol indicates a qualitative ranking, as this gesture already exists in pop culture. From��pop star to ad campaigns, individuals use the gesture to imply that they��like the thing they are “heart-ing”.

Clearly, Google did not create the "hand heart", but they have functionally integrated it into an invention. Since the patent is for use in association with a device like Google glass, individuals can continue to use the gesture itself without infringing the patent. However, it does raise the question about the future of gesture-based control as gestures become increasingly functional and integrated with technology. Companies may have an incentive to integrate gestures existing in the public domain that are imbued with meaning and already familiar to users, rather than creating and branding new gestures. These popular gestures could then effectively be restricted to technological commands associated with a particular device and fall into disuse among those without that particular device. As the pool of potential gestures in the public domain diminishes, could we one day see a gesture patent thicket?

If use of the hand heart denotes “liking” something and Google Glass becomes pervasive, could use of the hand heart become restricted to Google glass users? In the future could your gesticulation be determined by which products you use? ��For example, could Facebook patent “thumbs-up” to indicate “liking”? “Thumbs-up” and “heart” could become the modern day Montagues and Capulets.

Allison McLean is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

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At in Vancouver BC, Michael Hallatt resells marked-up and unmodified Trader Joe’s products purchased at retail price in Washington State Trader Joe’s locations. Currently, Trader Joe’s only operates in the United States and hold several registered trade-marks on . The mark is used to identify both the company itself, and its branded goods. Trader Joe’s also currently has two ��for retail grocery services in Canada.

In the��, Trader Joe’s alleged that Hallatt prominently displayed their mark in an attempt to pass as an authorized dealer of their products. Interestingly, in the wake of the trade-mark infringement claim made by Trader Joe’s, Hallat’s store now goes by _IRATE JOE’S with the tagline “Unauthorized, Unaffiliated and Unafraid”. On October 2^nd, a Seattle Washington court����the claim for lack of subject-matter jurisdiction, but allowed Trader Joe's to amend the claim under state laws.

Under Rule of the United States��Federal Rules of Civil Procedure,��a court can ��only if it is immaterial and appears to be made solely for the purpose of obtaining jurisdiction, or the claim is wholly immaterial or frivolous. In making this determination, the court unless the party mounting a jurisdictional challenge asserts facial or factual attacks on the claims. The court held that Hallatt failed to make a factual or facial attack but that nevertheless there was no basis for extra-territorial application of the ��in this case.

The Lanham Act confers broad power on the court to exert jurisdiction. To make this determination, courts must apply the .�� First, courts ask whether the actions complained of effect American foreign commerce. Second, whether this effect presents a cognizable injury under the Lanham Act. Third, the court must conduct a seven-factor analysis as to whether assertion of extra territorial authority is justifiable. To satisfy the first two parts of the test, a plaintiff must show only that there has been “some” effect on foreign commerce when construing all facts in their most favourable interpretation. In this case, all the alleged trade-mark infringement took place in Canada and there was no proof of economic harm in the United States.

Trader Joe’s failed to show an effect on American commerce that would warrant the application of the Lanham Act. ��The degree of conflict with foreign law or policy weighed against establishing jurisdiction because Trader Joe’s has two trade-mark applications in Canada and the infringement is wholly foreign. Hallatt’s permanent resident alien status and his frequent purchase trips to the US would likely be sufficient for establishing jurisdiction through the nationality factor. Third, Hallatt’s presence is not strong enough in the US to apply jurisdiction. Fourth, as wholly foreign acts, there was not a significant effect in the United States. (Even if there was some diversion of business or impact on the reputation of Trader Joe's, this factor still weighed against applying jurisdiction.) Fifth, Pirate Joe’s�� clearly purchased Trader Joe’s products at retail value to resell and it was unclear whether this was intended to harm Trader Joe's since it did not actually lose sales. As a result, it was was not necessarily foreseeable under the sixth factor that the actions would cause harm. Finally, the actions were clearly more significant in Canada than in the United States, since that is where the products were sold after being lawfully purchased in the US.��The court found that on the whole the seven factors supported not extending jurisdiction.

Until Trader Joe’s actually enters into the Canadian market they may have a difficult time preventing Hallat from selling their products at Pirate Joe's. To be successful in a claim in a Canadian court, Trader Joe’s would have to show actual use of the mark in Canada. Trader Joe's may have an argument that if their mark is displayed on a website accessed by Canadians it should be considered “used”��, though this has been a controversial point of law in recent times. (It is important to note that a mark displayed on a website is not�� “used” in Canada unless Canadians can����associated with the mark.) Currently, Trader Joe’s does not allow Canadians to purchase goods through their site and therefore may not pass the threshold for use in Canada. As time goes on, even with trade-mark applications, if the mark is not used ��in Canada the registration could be expunged. Moreover, with Pirate Joe's tagline "Unauthorized, Unaffiliated and Unafraid", I think it would be difficult to indicate consumer confusion in the face of such clear indications about the lack of association with Trader Joe's.

Despite the favourable ruling, Hallatt may still have difficulty stocking his shelves. Several Trader Joe's locations now , and Hallatt has already had to resort to sending others in to shop for him. ��That said, for the time being, fans of Pirate Joe’s can continue to sing “Yo ho ho and a bottle of all-natural apple juice!”

Allison McLean is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.��

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In , Yehuda Pinto sought damages for copyright infringement of materials he prepared during his 14-year period working with the (BJEC) and the curriculum.Pinto Began working as a freelancer for TaL AM in 1992. His work involved original compositions, arranging traditional songs, and various other aspects of the musical component of the Tal AM curriculum. Since there was no written contract, the court had to make a determination as to what agreement the parties reached at the time. BJEC always paid Pinto at an hourly rate and he never received any royalties for the use of his works, though he did once receive a bonus as a thank you for his contributions.

The relationship ended in 2006 when an employee of BJEC discovered hidden copyright annotations in Pinto’s invoices. The documents were submitted electronically and contained white text on a white background, claiming that copyright in the works would remain with Pinto. At that time, BJEC required that Pinto either sign a document stating that all of his compositions were the property of TaL AM or an acknowledgement that his services would be terminated.

Copyright Ownership

At trial, both parties agreed that Pinto owned the Copyright to 58 of his original compositions pursuant to of the Copyright Act, which states that the author of a work is the first owner of copyright. His works were BJEC, since he was a freelancer and he did not sign the agreement, opting instead to end the relationship. In other works such as the actual songs, the Court found BJEC and Pinto to be joint authors. BJEC was also held to be the of the sound recordings, since they bore the associated financial risks. Finally, if Pinto consented to the use of the underlying works, BJEC ��held the copyright in the of the curriculum.

Additionally, Pinto did not assign the copyright because such an assignment must be in writing, per of the Act, and once again there was never any written contract or an agreement between the parties. Therefore, the central question before the Court was whether Pinto consented to the use of his works as a part of the contract for his services. The Court held that Pinto granted an implied licence to use his works and the actions of the defendants were within the scope of the licence. The action was dismissed.

Implied Consent

According to��, the burden of proof of lack of consent is on the party seeking to establish infringement.�� In its analysis, the Court stated that the testimony given did indeed establish that Pinto granted consent to use his work. He knew that his work was commissioned for Tal AM, and during the proceedings he acknowledged that he permitted BJEC to use his music for the TaL AM curriculum.��Pinto’s request for a written contract was not evidence of a lack consent. Pinto had argued that his repeated requests for a written contract to protect his “rights” established that he did not grant a licence.�� The Court reasoned that the fact that he continued to work with BJEC after they refused his requests meant that he impliedly consented to the terms as presented by the defendants.

In , the Supreme Court held that when a work is created at the request of a purchaser, the Court��can find an implied licence to use the work for the purpose for which it was created. Therefore, through the continued relationship, Pinto implied consent to the use of the works in the TaL AM curriculum.��The Court further held that there were no limitations put on the consent. No restrictions were communicated by Pinto, nor were they reasonably contemplated by the parties at the time.

Lessons for the Future

The lesson from this case is to make sure everything in writing. The relationship could have been preserved had the parties’ expectations been made clear from the start through a negotiation of rights and remuneration. Moreover, BJEC could have negotiated ownership of the works from the beginning as part of the contract for services. Alternately, if Pinto had held firm in his request for a written agreement, perhaps he would not have granted an implied licence. If he stopped working for BJEC immediately after the refusal he could argue that there was no implied consent to BJEC's terms. This ruling is a reminder to authors that even though they can retain copyright in their works, they may lose some degree of control over their use if they grant implied licences by continuing a "for service" relationship. The importance of this reminder is amplified in this context because in copyright, it’s all about control.

Allison McLean is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.��

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The what uses of copyrighted works are considered fair dealing, which is in accordance with the policies of several other institutions. Fair dealing is generally accepted to include: up to 10% of a work, a single chapter or article, an entire artistic work from a compilation, an entire newspaper article or page, an entire poem or musical score, or an entire entry from a reference work providing that no more is copied than required. The AUCC developed ��tailored to various members of the post-secondary community that explain how the policy is to be put into practice by institutions. The guideline offers suggestions to post-secondary institutions about what specific information to include in their own policies in light of , such as a for institutions to post near copying services indicating the institution's copyright policies.

Interestingly, the guidelines dictate that any restrictions imposed by an institution’s licensing agreement will over the fair dealing guidelines. The guideline also implements “” to ensure compliance with fair dealing exceptions. This results in a fairly�� guideline, but the AUCC also indicates that activities outside the scope of the restrictions may still be protected by fair dealing exceptions.

There is concern from some that this policy will result in the narrowing of the scope of fair dealing. In , the Court held that one of the factors to consider is the industry standard. While not a conclusive defence, the Court may look to the guidelines set out by a community to determine whether a dealing is fair. If post-secondary institutions broadly accept these guidelines then they will in effect become the industry standard examined by future courts. Post-secondary institutions may opt to remain within the "safeguards" to in an attempt to ensure that they are not the target of infringement claims. If this creates a new outer boundary drawn by the community then courts may follow suit and narrow the concept of fair dealing for education or research. On the other hand, the Court may still hold that dealings falling within industry standards exceed what is fair.�� Thus, even if institutions choose to remain well within the boundaries of the guidelines, there is neither a guarantee that claims will be prevented,��nor a guarantee that conduct within the scope of the guidelines will result in a favourable ruling in any proceedings that follow.

On the other hand, there is nothing to prevent the court from determining that a use beyond the scope of an industry practice is nevertheless fair. Courts have made it clear that these policies remain guidelines and nothing more. They will still examine the overall feel of the copying and look to the quality rather than quantity of material copied. In��CCH��the Court supported a “large and liberal” interpretation and��asserted fair dealing as a user right.

The guidelines are most concerned with the supplemental aspect of the ruling. In that case, the Court stated that it would be unrealistic to expect classrooms to purchase a full book for each student when only a small portion was used to supplement the main text used in the class. Therefore, course packs must remain supplemental to be protected under fair dealing. I suspect that the guidelines are intended to stem the trend of making various excerpts available to students so that the course pack or posted readings become the main reading material provided to students. Even though each individual piece may fall within generally accepted usage and the CCH guidelines, ��the overall effect of such course packs may not pass the Alberta (Education) test for supplemental materials.

Post-secondary institutions do not want to be on the wrong side of a test that balances the rights of students to deal fairly with copyright protected materials and the rights of copyright holders to retain control of the reproduction of their works. The Court continues to affirm tech neutrality and the guideline’s conservative outlook may be attributed to an attempt to remain open to the changes that could be brought about by forthcoming technology. Viewed this way, the guidelines are not restrictive but responsive to the changing ways in which materials are available and the flexible nature of the fair dealing exceptions as viewed by the Canadian court system in recent years.

Allison McLean is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

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