The Court noted that the BitTorrent technology involved in this case brings about complex concerns.  Since torrent files are based on the idea of a “swarm” of users uploading and downloading pieces of one file simultaneously, there are potentially many more users downloading and sharing than in the more straightforward peer-to-peer process or single website hosting files.  Some of the ways that were suggested to the Court, on behalf of the claimant, for at least curbing the prevalence of the photos were tracking the IP addresses of those sharing the torrent, filtering the claimant’s name from search engines in connection with torrent sites, or having ISPs block access to those torrent sites hosting the file.

The claim was brought against “Persons Unknown”, since none of the users who seeded the files were identified by their IP addresses.  Claiming against users yet to be identified was required, AMP argued, because the number of seeders, and therefore potential defendants, would be constantly increasing over time.  The reasoning is that “by identifying the class of persons unknown by reference to their particular characteristic, namely any person in control of any part or parts of the relevant files containing the relevant digital photographic images, would be a sufficient description of the Defendants to enable them to be served with any order which the court might make.”  The Honourable Mr. Justice Ramsey was persuaded by this argument, and agreed that the case was appropriately brought against “Persons Unknown”.

AMP was seeking injunctive relief under two separate acts dealing with invasion of her privacy (the ) and harassment (the ).  In regards to the claimant’s privacy, Mr. Justice Ramsey had to consider whether she had a reasonable expectation of privacy when it came to the photos on her phone.  Mr. Justice Ramsey stated that “in this case the circumstances in which the photographs were taken, the nature and purpose of the intrusion caused by the distribution of the photographs, [and] the absence of consent” all made a strong case for AMP having a reasonable expectation of privacy.  This expectation of privacy, however, still needed to be balanced with the freedom to receive and impart information without interference which is also provided by the Human Rights Act.   For Mr. Justice Ramsey, it was clear that the claimant’s right deserved to take precedence in this situation.  Furthermore, since AMP was found to be “likely to establish at trial that publication should not be allowed” she was granted interim relief through an injunction.

Regarding the harassment claim, Mr. Justice Ramsey felt that the situation was such that it met the six factors previously established in to make out a claim of harassment:

(1) conduct which occurs on at least two occasions,
(2) targeted at the claimant,
(3) calculated in an objective sense to cause alarm or distress and
(4) objectively judged to be oppressive and unacceptable,
(5) “oppressive” and “unacceptable” depending on the social or working context in which the conduct occurs
(6) with special consideration of the difference between conduct that would actually be harassment and conduct that is simply unattractive or unreasonable.

Mr. Justice Ramsey therefore concluded that the claimant was to be granted relief both for breach of her right to privacy and harassment.  This entitled the claimant to an interim injunction to prevent the distribution of her images via any torrent site or through any other use  of a BitTorrent program.

Perhaps the most newsworthy part of this case is in the terms of the interim injunction that Mr. Justice Ramsey ordered, since those terms apply to the still unidentified “Persons Unknown”.  The order requires such persons to:

(1) immediately cease seeding any BitTorrent containing any part or parts of the files in question
(2) not uphold or transmit to any other person any part or parts of the files
(3) not create any derivatives of the files
(4) not disclose the name of the claimant or information that may lead to her identification, or the names of the files.

Professor Andrew Murray, who actually provided witness statements in the case, , largely based on the assumption that most of the seeders would be within the jurisdiction of the Court.  Professor Murray has some reservations, however, about whether the decision means that BitTorrent content can be regulated.  A sees a possibility of users of social networking sites like Twitter and Facebook being impacted by this decision in the future.

What remains to be seen is whether the order does in fact deter users from downloading the torrent in question.  Practically speaking, such a deterrent effect would be difficult or impossible to actually measure.  The goal of the Court in this case may have really been to scare away potential offending users, while not necessarily expecting to reveal IP addresses and track down seeders.

Another issue may be the fact that the Court’s jurisdiction cannot possibly cover all possible seeders, as anyone with an Internet connection and the proper software can download the torrent file in question.  Professor Murray has stated that the goal is not to “close down all seeders[,] just enough to turn the tap to a trickle.” The underlying assumption is that most of the seeders will be people with connections to AMP, and therefore within the jurisdiction of the Court.  It would seem that, while this decision may act as a deterrent in this particular instance, its applicability may be limited when a torrent file attains global popularity, (such as in the context of a world-renowned celebrity).

Brent Randall is a JD candidate at the University of Ottawa.

The post Court Decision May Be Closest Thing To BitTorrent Regulation appeared first on IPOsgoode.

According to Directive 96/9/EC, databases can be protected by either copyright, or the sui generis right, which essentially considers how substantial of an investment was required to build up and maintain the database in order to determine if it is worthy of protection.  Since fixture lists failed on the sui generis claim in 2004, Advocate General Mengozzi considered whether the fixture lists Football Dataco Ltd. (and others) draw up could be protected by copyright.  Otherwise, they could be used freely, as Yahoo! UK (and others), the defendants, are hoping.

In this case, Football Dataco organizes both the English and Scottish soccer leagues by creating and publishing a list of all the matches to be played in the season.  Yahoo! UK has been using the schedules for its news service as well as for the purposes of organizing betting activities.  Football Dataco wants payment from parties like Yahoo! UK who use their fixture lists in such a way, and rely particularly on Article 3(1) of Directive 96/9/EC which states that “…databases which, by reason of the selection or arrangement of their contents, constitute the author’s own intellectual creation shall be protected as such by copyright…”

From this Article, Advocate General Mengozzi asks and answers a few important questions in giving his opinion:

“(1) what is meant by “databases which, by reason of the selection or arrangement of their contents, constitute the author’s own intellectual creation” and in particular:
(a) should the intellectual effort and skill of creating data be excluded?
(b) does “selection or arrangement” include adding important significance to a pre-existing item of data (as in fixing the date of a football match)?
(c) does “author’s own intellectual creation” require more than significant labour and skill from the author, if so what?”

Advocate General Mengozzi starts by noting that the Directive provides copyright protection for the structure of the database, not the contents, as they would be dealt with in the standard copyright law.  The sui generis right goes not to the originality of the database itself, and instead focuses on the investment of effort in the data it contains.  This is important because it shows that although the sui generis claim in 2004 failed, it does not necessarily ensure failure for a copyright claim in the same type of database.  Furthermore, it also foreshadows Advocate General Mengozzi’s ultimate conclusion, as he notes that Yahoo! have limited their use of the fixture list to the use of the data contained – the dates, teams, times – and not the structure of the list itself.

Advocate General Mengozzi essentially answered his own question 1(a) with his opening considerations of the issue, as he notes that any factor connected with the creation of data, like intellectual effort and skill, must fall outside of the scope of the Directive.

Regarding 1(b), the problem found in Football Dataco’s claim is that the data entered into the fixture lists has already been finalized before it goes into the database.  Team X versus Team Y on Date Z is already decided before the information is put on the fixture list.  Once again, this means that since any “selection or arrangement” that might be worthy of copyright protection takes place at the data creation stage, rather than as a result of the structure of the database itself, Football Dataco’s claim in this respect should fail, according to Advocate General Mengozzi.  He does note however, that while Football Dataco should fail on this point, in general, when data is put into a database such inputting could add “important significance” to the data and thus afford the database protection in that situation.

Question 1(c) concerns whether the way data is selected and arranged in a database by the author is intellectually creative enough to be afforded copyright protection.  Once again, Advocate General Mengozzi sees Football Dataco’s problem hinging on the fact that any creativity takes place before the information is put into the database.  At the input stage, he states, “it is not sufficient [for copyright protection] that the creation of the database required labour and skill.”  He recognizes that generally, the originality threshold required for copyright, in most jurisdictions is actually quite low and often met precisely when a creator applies labour, skill or effort.  However, the threshold of originality that the Directive requires is more than mere effort and focuses on creativity, since the sui generis protection is the branch of protection concerned with resources and work expended in creating and maintaining the database.

The opinion of Advocate General Mengozzi appears to skew more toward the reasoning of the United States Supreme Court in , rather than the Supreme Court of �䲹�Բ��岹’s decision in .  While both of those cases rejected the “sweat of the brow” doctrine for an original work, the United States Supreme Court required a “minimal degree of creativity” while the Supreme Court of Canada called for the “exercise of skill and judgment”.  In fact, it would seem that the Directive forces Advocate General Mengozzi to call for this slightly higher standard.

For Advocate General Mengozzi, if Football Dataco, and parties in a similar situation, want copyright protection, all is not completely lost.  He states that if the creator, in putting the database together, introduces original features, like a particular color coded or graphic based means for representing the data, it could be a very likely candidate for copyright protection.

Brent Randall is a JD candidate at the University of Ottawa.

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On December 1, 2011, the involving English soccer superstar Wayne Rooney and his former agency, Proactive Sports Management Limited, over commission payments.  Among five issues the Court decided, the most important involved whether the agency was entitled to commissions from contracts it had negotiated previously, and whether the contract it entered into with Mr. Rooney was a restraint of trade.

As here on IP Osgoode, the plaintiff, Proactive, sued Mr. Rooney for the payment of commissions from an image rights representation agreement (IRRA) between Proactive and Mr. Rooney.  Mr. Rooney ended his relationship with the agency, but Proactive argued that they should still get their 20% commission from those continuing endorsements and advertising deals negotiated when Mr. Rooney was a client of their agency.  Since Mr. Rooney was only 17 at the time of the agreement, and both he and his parents did not appreciate the legal implications of the contract, including its relatively long term (eight years) and high, unchanging, commission rate, the agreement was .  Proactive was .

When considering the issue of whether Proactive was entitled to commissions, after termination, on those endorsements and contracts it had negotiated, the test according to Lady Justice Arden was a simple one: the right to commission was created whenever Proactive procured an endorsement contract.  Mr. Rooney’s counsel had argued that the idea of continuing commissions, even after termination of their agreement, would be unfair as Proactive would essentially be getting paid for not doing any work for Mr. Rooney at the time. Lady Justice Arden put this argument to rest when she stated that “it is the procuring of endorsement contracts that gives rise to the right to commission and not the ongoing provision of services.”  Proactive ought to be entitled to reap the benefits of the work that it did for Mr. Rooney, based on the agreement they had in place, regardless of how long those benefits may extend.

In fact, this should be a key incentive in an agent-client relationship: the client wants a long, lucrative contract, and the agent is motivated to negotiate one in order to be rewarded with the commissions. In addition to this, Lady Justice Arden also noted that practically speaking, Proactive likely had significant expenses to provide Mr. Rooney with the services he expected, and as such, would be counting on commissions from the contracts they negotiated to continue in order to be compensated.  Proactive’s appeal on this issue was therefore allowed.

However, Proactive did not have the same success on the remaining issues.  In appealing that the contract between Proactive and Mr. Rooney was not an unreasonable restraint of trade, the agency set out three arguments:

1. Mr. Rooney’s trade is playing soccer, not endorsements, and as such the IRRA could not restrain his trade;
2. The IRRA did not restrict Mr. Rooney’s earning potential, and in fact increased it.
3. Nothing about the IRRA made it unfair or oppressive, as had been required in previous case law on the issue such as in .

On the first argument, Lady Justice Arden noted that while Mr. Rooney’s primary occupation is soccer, “a person’s ancillary activity of exploiting his image rights is just as capable of protection under the doctrine of restraint of trade as any other occupation.”  Lady Justice Arden appealed to public policy, as she said that to the public, it would not matter whether someone’s potential is being restrained in their primary or ancillary activities – having potential restrained ought to be enough to be problematic.

Furthermore, Lady Justice Arden noted that except in very rare circumstances, the exploitation of image rights is by its very nature going to be ancillary to someone’s primary occupation.  This only further strengthened the reasoning that just because an activity is ancillary it does not naturally follow that the doctrine of restraint of trade is unavailable.

On the second argument, Lady Justice Arden referred to Schroeder in stating that “it is possible for a single activity…to be both creative and yet ‘sterilised’.”  In Schroeder, the argument had been made by the defendant that the agreement could not have been an unfair restraint of the plaintiff’s trade because it was a means for sharing his creative talent with the world.  Essentially, just because a contract brings someone benefit does not necessarily mean that it is not still unfair, as it may not fully suit the best interests of one party to the agreement.

On the third argument, Lady Justice Arden considered what was required to trigger the restraint of trade doctrine.  For Lady Justice Arden, the very unusual length of the contract (which she noted, at eight years, was about the average length of a soccer player’s career), the fact that the Mr. Rooney and his parents had no legal advice at the time of signing, and lack of bargaining power afforded Mr. Rooney despite being a “hot property” all pointed toward the agreement being oppressive.  From the disposal of all of these arguments, Proactive was denied its appeal on this issue.

After considering the rest of the issues on appeal, Lady Justice Arden and the rest of the Court decided that while Proactive was entitled to commissions for those contracts negotiated prior to termination, the agreement was an unfair restraint of trade and therefore nullified the claim for commissions.

The important lesson to take away from this case is not new: contracts must be carefully drafted and appreciated by all of the parties involved.  This means setting out, in as certain terms as possible, what each side intends by its agreement, and assuring that the other side understands what benefits or restrictions each term implies (which usually requires independent legal advice).  Perhaps a newer lesson that this case teaches us is that since a person’s reputation, likeness, and overall “brand value” could endure indefinitely, considerations must be made in the contract to appreciate that fact.  This would include paying particular attention to how long aspects of the agreement can extend into the future, what happens in the event that a party breaches or ends the contract, and what will occur when the contract naturally ends but the work and benefits of the relationship continue to live on.

The post Rooney Doesn’t Have To Pay Commissions Due To Unfair Restraint Of Trade appeared first on IPOsgoode.

It is a seemingly lofty goal for a court: keep legal reasoning simple.  As anyone who has a read a court’s decision knows, that is easier said than done, either because a judge wants to make sure all relevant issues are dealt with thoroughly, or because the interplay between the facts and statutes involved is complicated.  The Court of Appeal of England and Wales attempted to achieve this simplicity in regards to registered designs in its October 27, 2011, decision in .

The plaintiff, , is a world-famous British technology company that rose to fame for its innovative vacuum cleaners, but also offers products such as washing machines, hand dryers and fans.  The defendant, , calls itself “the UK’s best selling floorcare brand”, offering vacuums, carpet cleaners, and hard wood floor cleaners of many varieties.

One Dyson product, , is referred to as “the world’s first bagless cylinder vacuum”.  Vax released a product called the , which also prides itself on its cylinder technology.  Dyson that its registered design in the DC02 had been infringed by Vax’s Mach Zen.  The High Court found that there was no infringement.

The clear-cut issue that the Court of Appeal was faced with was whether “the Mach Zen ‘does not produce on the informed user a different overall impression’”.  The framing of the issue in this way reflects, verbatim, the scope of protection for registered designs set out in Article 9(1) of the .  This Directive is regarded as a substantial complement to the UK’s .  Sir Robin Jacob (a member of IP Osgoode's International Advisory Council) penned the decision of the court. He stated that trying to ascertain the “overall impression” of a design should be simple: it is what can be seen with your eyes.  The 2007 High Court decision of (a case which Sir Robin also decided), set out the most important things in a registered designs case:

1. the registered design;
2. the accused object;
3. the prior art.

However, even with these three guiding factors, Sir Robin stated in the Proctor & Gamble case that the most important thing about each of them, to the court, is what they look like.  So confident in how simple a registered designs case should be, Sir Robin stated in Procter & Gamble that a decision should be able to be rendered in only a few hours, since there is little need for evidence other than the two designs in question.

On the same note, Sir Robin stated that any expert evidence should be sought only for very precise and clear purposes, since the scope of protection refers to informed users, not anyone with highly technical expertise related to the designs.  The concern is that “left to their own devices experts all too often address questions of their own choosing.”  This statement also clearly goes hand-in-hand with the desire to keep registered design cases simple.

This goal of simplicity is quite similar to the way that courts deal with trade-marks.  For example, in the recent Supreme Court of Canada decision of , Rothstein J. (a member of IP Osgoode's Advisory Board) made a similar statement regarding expert evidence when he said that:

In a case such as this, where the “casual consumer” is not expected to be particularly skilled or knowledgeable, and there is a resemblance between the marks, expert evidence which simply assesses that resemblance will not generally be necessary.  And it will be positively unhelpful if the expert engages in an analysis that distracts from the hypothetical question of likelihood of confusion at the centre of the analysis.

The Masterpiece decision, and indeed any trade-mark confusion case, has a clear similarity to a registered design case, as both depend on objective tests for establishing what impression the product would have on a fictional consumer or user.  The legal fiction in Masterpiece is the “casual consumer somewhat in a hurry” while Dyson deals with an “informed user” as per the Designs Directive 98/71.

There seems to be a flaw in Sir Robin’s steps toward achieving simplicity in registered design cases.  The concept of an “informed user” sounds simple enough, but when the characteristics of this user are set out, it seems less simple.  In Dyson and the cases it quotes, the informed user is described as a person who is:

Neither a manufacturer nor a seller of the products...particularly observant and has some awareness of the state of the prior art…uses the product in which the design is incorporated, in accordance with the purpose for which that product is intended…knows the various designs which exist in the sector concerned, possesses a certain degree of knowledge with regard to the features which those designs normally include, and, as a result of his interest…shows a relatively high degree of attention when he uses them...and reasonably discriminatory [but not] able to distinguish, beyond the experience gained by using the product concerned, the aspects of the appearance of the product which are dictated by the product’s technical function from those which are arbitrary.

Clearly, there are a lot of considerations that go into what makes up the “informed user”.  Sir Robin considered the two designs and was satisfied that there were enough to distinguish Vax’s design from Dyson's and, therefore, found no infringement of Dyson’s vacuum.

The post Keep Design Cases Simple, England And Wales CA Tells Dyson appeared first on IPOsgoode.

The European Comission (MOU) between European libraries, publishers, authors and their collecting societies.  The MOU sets out key principles that allow cultural institutions in Europe, such as libraries, an easier way to digitizing out-of-commerce books and other publications for use in their collections.

This MOU is meant to be a complement to a previous proposal that the European Commission submitted regarding a similar usage of orphan works (for IP Osgoode’s coverage, ).  There are a couple key differences between the two situations.  First, and more obviously, orphan works are different from out-of-commerce works.  , the copyright owners of out-of-commerce works are still known and can be located.  The problem is that their works have either fallen out of print, or are no longer sold through traditional means.  Orphan works may still be in print or sold traditionally, but their copyright owners are not known, or cannot be found.

Due to the key difference between out-of-commerce works and orphan works, the means for dealing with such copyright issues also needs to be different.  This is why the proposal regarding orphan works was legislative, in order to make up for the deficiency of not having access to the copyright holder.  Legislation could therefore allow consistency and predictability for those wondering what the copyright implications may be when using orphan works. The MOU for out-of-commerce works is not a legal measure, as the copyright holders are available, and instead it is a way to bring together the interested parties so they can reach an agreement to allow the libraries use of their copyright to ensure legal digitization.

Both the orphan works proposal and out-of-commerce proposals are aimed at the same goal, however, which is to “further the development of digital libraries in Europeand provide the widest possible access to [its] cultural heritage.”  The European Commission has recognized that e-books and digital publishing has seen significant increases, as sales and downloads .

This MOU, along with the orphan works proposal, are two illustrations of how the European Commission is working toward what it calls a “single market for intellectual property rights”.  When it proposed the Single Market Act in April 2011, the Commission stated that it intended to propose “12 key actions to boost European competitiveness and to unlock economic growth and jobs…”  One of those key actions was the development of a “digital single market.”  The goal is to streamline as much as possible in the European Union, so that everything is seamlessly accessible – including the availability of works of cultural significance.

This new MOU is a major step forward for Europe in the digitization of works, which is becoming more and more convenient and preferable for people.  Instead of trying to track down a single copy of a rare book, several readers could pull up the same copy on their computer, which would hopefully lead to more widespread cultural enrichment.  A concern that may develop over time however, is that these principles are just that.  They are not law, or even contract.  The parties have agreed to the MOU, but it is not fully binding or certain.  There is room for interpretation and alteration of the terms depending on what the parties want.  This means that while cultural institutions now have a better way for dealing with copyright concerns on their way to digitizing books, the parties may still want something slightly more certain and binding at some point in the future.

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After a very difficult summer regarding the security of the personal information of Sony customers, the technology company has chosen to protect itself from class action litigation in the future.  In the Terms of Service (TOS) for the company’s Playstation Network, which is where the much-publicized security breaches began, Sony has included a clause waiving a user’s right to file a class action lawsuit.

At the end of April of this year, it was that may have compromised the personal information of up to 77 million users.  Over the , Sony stated that Sony Online Entertainment, Sony Ericsson customers, and the Sony Pictures website all were victims of hackers as well, increasing the amount of sensitive data that was potentially stolen.  A class action lawsuit was , with the possibility of costing the company billions of dollars.  In an attempt to prevent such major litigation from happening again, .

The terms appear when a user attempts to access the Playstation Network to play games online or purchase media from Sony.  The new TOS to users as a means of settling disputes.  If a user wants to opt out of the binding arbitration and , they must send a letter to Sony headquarters stating their intention.

The important aspect of this situation is whether this new TOS is completely enforceable if people .  There are many classic contract law cases that speak to alleged parties to an agreement not adequately appreciating the terms as seen in “ticket cases” like   The Supreme Court of British Columbia on September 2, 2011 also recently took on a sort of “modern ticket case” in .  In that case, the Court decided that simply accessing a website can automatically bind a user to the site’s terms of use ( of that case).

Whether Sony’s new terms are adequately expressed and what difference the digital context may have are questions that will surely be considered by a court or government body soon.  As the “ticket cases” show, the amount of notice expected to be given is proportionate to how onerous the provisions are.  How onerous is a clause forcing all disputes to be brought to arbitration rather than by class action? If another mass security breach were to hit Sony, this question may be answered differently than if only a few people encounter rare problems.

When it comes to the enforceability of Sony’s TOS, the company is relying heavily on the behaviour of AT&T.  On April 27, 2011, the United States Supreme Court decided the case of .  In a 5-4 decision, the Court ruled that AT&T’s cell phone contract excluding class action lawsuits was acceptable under the , despite state laws specifically finding such clauses unconscionable.  A that the change to its TOS was made based on the Supreme Court decision, stating that the new TOS “is designed to benefit both the consumer and the company by ensuring that there is adequate time and procedures to resolve disputes.”

Canada recently looked at the enforcement of similar arbitration clauses in telecommunication contracts when the Supreme Court of Canada decided (you can find ).  The Court reviewed the arbitration clause in light of consumer protection legislation and stopped short of deciding whether class action waivers were unconscionable.

It is safe to say that we have not heard the last of Sony’s new terms of service.  Either a court, consumer protection agency or other body will be considering the impact of the new clauses.  Given the US Supreme Court's decision in AT&T Mobility, the last word on the issue may have been said, at least for now.  Here in Canada, however, there is still room for the Supreme Court of Canada to weigh in and when it does, it will undoubtedly be informed by the way the issue has unfolded in the United States.

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On September 8, 2011, the Supreme Court of Canada in the Federal Court of Appeal case of The copyright case will be heard by �䲹�Բ��岹’s highest court along with four others on December 6-7, 2011.

Empowered by , Re:Sound is a copyright collective responsible for ensuring performers and makers of works are paid “equitable remuneration” for the performance in public or communication to the public by any transmission of their work.  In March of 2008, Re:Sound (at the time called the Neighbouring Rights Collective of Canada) filed two tariff proposals, tariff 7 and tariff 9.  claimed royalties on the use of sound recordings in a movie by theatres, while claimed royalties on the use of sound recordings in programs broadcast by television providers.  The (MPTAC) objected to tariff 7 while several broadcasting distribution undertakings including Rogers, Shaw and Bell objected to tariff 9.

On September 16, 2009, the whether Re:Sound was in fact entitled to collect such royalties.  The Board’s reasons were ultimately based on the interpretation of the Copyright Act’s section 2 definition of a sound recording, which states:

“sound recording” means a recording, fixed in any material form, consisting of sounds, whether or not a performance of a work, but excludes any soundtrack of a cinematographic work where it accompanies a cinematographic work.

Re:Sound argued that the purpose of the exclusion was to “consolidate rights in the visual features of a cinematographic production with the rights in the audio features of a cinematographic production” and together those rights would be protected as a “cinematographic work.” The objecting parties argued that a plain reading of the definition shows that sound recordings are excluded when part of any cinematographic work.

In order to effectively define “sound recording” for this decision, the Board had to first define the term “soundtrack” which is not included in section 2.  Re:Sound argued that a soundtrack was the “aggregate of sounds” and because of this any pre-existing sound recordings included in a soundtrack could still be deemed separate from it.  Re:Sound felt that not separating the recordings from the soundtrack would leave copyright holders vulnerable, as it would follow that unauthorized copying of a pre-existing song from a DVD would not violate the copyright in the recording, while copying the same song from a soundtrack released on CD would.   The objecting parties, using their plain meaning argument, agreed that the sound recording would not change character and lose copyright protection if it was part of a soundtrack, but that once the owner of the movie or program is allowed to exploit the work, they should be allowed to do so without worrying about a veto from those who contributed sound recordings (for example, a contributor may attempt to prevent rental of the movie by citing ss. or ).

The Copyright Board ultimately agreed with the objecting parties, stating that “neither the soundtrack nor any of its constituent parts are a ‘sound recording’ when they are communicated or performed with [a] program or movie.”

When Re:Sound applied to the Federal Court of Appeal for judicial review of the decision, it was rejected on February 25, 2011.  Re:Sound argued that the Copyright Board was wrong in its definition of “sound recording” as excluding individual components of a soundtrack that may be pre-existing recordings.  Trudel J.A., writing for the Court, stated that the Board was correct in the conclusion it reached, although commented on some issues.

First, the Court re-asserted what the Board had already stated, and said that Re:Sound’s concerns about the protection of rights of performers and makers when their work is disseminated without permission or extracted from a DVD were incorrect.  The Court noted that under , unauthorized use of performances in cinematographic works is illegal.  Furthermore, if a song were to be extracted from a DVD, performers and makers would be protected in the same way as if they had a standalone sound recording.

Second, the Court made it clear that comparative law arguments can only extend as far as their similarity to current Canadian legislation.  Re:Sound had relied on an argument based on cases from Australia and the UK, which were found to be baseless due to their fundamental differences from Canadian copyright law in this area.

Finally, the Court addressed Re:Sound’s argument that they should be entitled to a tariff for live-to-air broadcasts.  This argument was characterized as a “limited ground” by Trudel J.A., but ultimately did not strengthen Re:Sound’s case, since the argument was never raised with the Copyright Board.  As such, there could be no judicial review of the Board not addressing an issue never brought before them.

It will be interesting to see how this case develops at the Supreme Court of Canada in December, and how it is impacted by the other copyright cases it is being heard with.  While it seems that Re:Sound’s arguments were dealt with quite conclusively, apparently something more is left to be said.  Regardless of how these cases develop, all parties with an interest in copyright law will be closely watching the Supreme Court of Canada in the next few months.

The post Re:Sound Not Soundly Defeated Just Yet appeared first on IPOsgoode.

On August 15, 2011, that it would be acquiring Motorola Mobility which will enhance the capabilities of their Android operating system for smartphones.  While the purchase of Motorola gives Google the ability to produce hardware optimised for their software, what this new development may mean for the future of communications.

Google’s acquisition of Motorola has come just over a month after the search engine-turned-tech-giant to a group of bidders including Apple, Microsoft, Research In Motion and Sony ( for an IPilogue article on the auction and for an IPilogue article regarding the fate of the patents).  Although the acquisition of Motorola allows Google to better optimize its Android for those particular smartphones, in terms of software and hardware compatibility, Google stressed in its press release that it is still “firmly committed to Android as an open platform and a vibrant open source community.”

While Google could have decided to restrict Android to Motorola hardware to maintain consistent performance, much like Apple does with its computers, it has instead opted to be more like Microsoft personal computers (PCs), allowing other manufacturers to use their software.  A noted this similarity, and considered how the battle for the biggest piece of the mobile market compares with the way the personal computer market developed.

A first key difference noted is that while the Microsoft Windows operating system took off quickly to gain a huge share in the PC market, patent infringement lawsuits have made it harder for Android to do the same (interestingly, Microsoft has actually been ).  Despite the toll this has taken on Android, its global .  Allowing many different parties to integrate the Android operating system into their phones certainly has helped Google achieve this standing, however such expansion can be a double-edged sword.  While Android reaches a range of consumers who purchase smartphones from companies like LG, Samsung, HTC, Sony Ericsson, and now Motorola, some feel that the operating system has sacrificed and for such widespread compatibility.

A second difference between the current mobile industry and past PC development is that there will be more vertical integration, as Google now owns a producer of hardware to run Android.  Apple is , as their computers and “i devices” such as the iPod, iPad, and now iPhone, have been solely manufactured by their company, and run their own operating system.  Working with only one piece of hardware and only one operating system allows Apple to focus more of its resources on optimizing the way the two interact.  Google can now achieve similar optimization between Motorola phones and Android, but still maintain compatibility with other large manufacturers.  There have been rumours that other companies may follow Google’s lead – such as Samsung () and Microsoft () –in order to cover more of its production bases.  All of these developments show that vertical integration will be a continuing trend in the communications industry.

This trend toward vertical integration leads to the third difference that The Economist notes between mobile communications and computers: no one company is likely to dominate the market quite like Microsoft dominated the PC market.  Having already secured the intellectual property of Nortel and Motorola, the big names in technology may be looking for partners with whom to strengthen their mobile business.  Along with the previous rumours involving Samsung, HP, Microsoft, and Nokia, some are to get in on the market.

With so many companies stocking up on their smartphone IP in the past couple months, it seems that others who still want to compete in the market will be required to follow suit.  As these companies pool their resources together, it looks as though the battle lines for dominance of the mobile market are in the process of being drawn.

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Justice Marshall Rothstein of the Supreme Court of Canada recently spoke at the held on August 6, 2011, in Toronto. His speech was largely focused on how the Supreme Court of Canada may arrive at different conclusions in patent cases, as compared to its American counterpart, mainly due to differing standards of proof.  In addition to this contrast, Justice Rothstein also gave his thoughts on the patentability of higher life forms.  The full text of his remarks will be published in an upcoming edition of the .

In , the United States Supreme Court ruled that the standard of proof for rebutting the presumption of a patent’s validity was “clear and convincing evidence” instead of the usual civil standard of a “preponderance of evidence”.  Although Justice Rothstein explicitly stated, in the future, he may decide that the opinions he expressed in his speech are wrong, he went on to offer his view on why Microsoft v. i4i likely would have been decided differently in Canada based on differing standards of proof.
Justice Rothstein began by referencing , and noted that like the , once a patent is granted by the Patent Office, it is presumed to be valid in the absence of any evidence to the contrary, with no mention of a standard of proof.  From Justice Rothstein’s perspective, this means that patent cases should be decided with the same standard as any other civil case.

Also troubling for Justice Rothstein was the similarity that the “clear and convincing evidence” standard has to the criminal standard of proof “beyond a reasonable doubt”.  Based on the precedents that the United States Supreme Court referred to in Microsoft v. i4i (including and ), Justice Rothstein stated that if he interpreted the strong wording in those cases correctly, “the clear and convincing standard is to all intents and purposes equivalent to proof beyond a reasonable doubt.”

Justice Rothstein voiced his concern with the difficulty for both judges and juries to understand what “clear and convincing evidence” really means in terms of how much evidence is necessary to rule in the favour of one side over the other.  While it is fairly easy to understand the idea of a balance of probabilities, it is more difficult to understand the concept of beyond a reasonable doubt, at least for some juries and the judges who explain it to them (as in the Supreme Court of Canada case of ).  “Clear and convincing evidence” appears to be an even more unclear concept – falling somewhere between the traditional civil and criminal standards.  But where? This uncertainty can be avoided by only having one standard for civil cases, and feeling confident that a judge or jury’s decision was based on evidence that was sufficiently clear and convincing.

To close, Justice Rothstein spoke about subject matter patentability, with reference to two frequently-cited Supreme Court of Canada decisions: , also known as the “Harvard Mouse” case, and .  Justice Rothstein authored a judgment in the Harvard Mouse case while sitting on the Federal Court of Appeal, where he ruled that a genetically altered mouse for research purposes was patentable.  This judgment was eventually overturned by the Supreme Court of Canada, due largely to concerns of what patenting complex and sentient life forms could lead to.  In his disagreement with that decision, Justice Rothstein set out six key points that should guide the approach to subject matter patentability:

1. the context of the Canadian Patent Act is expansive, meaning it should encourage innovation even if it is unsure what it may be,
2. patents will not be granted indiscriminately, as they still must be new, useful and non-obvious,
3. since Parliament repealed a provision prohibiting inventions with potentially illicit objectives, this further strengthens the expansive interpretation of the Patent Act from 1.,
4. courts cannot deny patents based on potential social, cultural or economic impacts of an invention,
5. furthermore, what is patentable should not be confused with what should be regulated.  An invention may need be regulated for the sake of public policy, but this does not mean it is not patentable,
6. as per the Harvard Mouse case, if a distinction between higher and lower life forms is to be made, that is a distinction for Parliament, and not the courts to make.

It is important to remember, as Justice Rothstein mentioned, that he disagreed with the ruling in Harvard Mouse, and felt that the decision was all but overruled by the Supreme Court of Canada in Monsanto.  Certainly, there may be differing opinions from the other Supreme Court of Canada Justices if they were to give a speech on the same topic.  Nevertheless, Justice Rothstein’s voice is often heard in the Court's decisions on intellectual property cases (most recently in , IP Osgoode ) and as such, speeches like this recent one to the American Bar Association members may provide insight into future intellectual property decisions made by �䲹�Բ��岹’s highest court.

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The Canadian Copyright Act does not explicitly define the term “author”, but the statute does appear to assume that the “author” will be a human. A seeks to challenge this assumption as she argues that “all creativity is inherently algorithmic” and therefore works produced by computers should not be viewed as significantly different from those produced by humans.

In her paper, Coding Creativity: Copyright and the Artificially Intelligent Author, Professor Bridy is not focusing on the creative ways humans interact with computers to author works. Instead, she concerns herself with “the ways in which people are enabling computers to produce art and other creative works in new ways, virtually all by themselves.”

In the 1884 case, , the Supreme Court of the United States considered the extension of copyright protection to photographs, despite the creation of such works relying heavily on the camera and not just the human.  The Court refused a judgment that would make the camera the author in such instances and instead used a causation argument to find that the author is “the person who effectively is as near as he can be, the cause of the picture which is produced…”

Building on Burrow-Giles was the 1903 Supreme Court of the United States decision, , in which it was affirmed that, “[t]he copy is the personal reaction of an individual upon nature.  Personality always contains something unique.  It expresses…something irreducible, which is one man’s alone. That something he may copyright…”

The cases of Burrow-Giles and Bleistein, Professor Bridy argues, “marks the jurisprudential moment at which copyright protection became virtually guaranteed for any work produced by human hand, regardless of its perceived creativity or aesthetic merit.”   But what, exactly, creativity is has not been clearly explained with the closest attempt coming in the 1991 United States Supreme Court decision,

Professor Bridy focuses heavily on trying to figure out the definition of creativity and whether artificial intelligence (AI) is capable of being creative or, if by its very definition, creativity implies the work of a human.  If, for the sake of argument, creativity does not require a human, what would a computer have to do to produce something creative and therefore potentially be considered an author? Must it produce results that are unpredictable? Can a computer do anything unpredictable, if it must first be created and programmed by a human, or is that just a more complicated instance of human causation as seen in Burrow-Giles? What follows for Professor Bridy is a deeply philosophical exploration of the meaning of thought and the workings of the human mind.  Cognitive scientist that the brain is nothing more than a “meat machine”, presumably subjected to its own kinds of “programming” from parents, society, and education.

The ultimate conclusion for Professor Bridy is that the American "work made for hire" doctrine could be applied in cases in which an author is a computer.  The United States defines work for hire quite similarly to �䲹�Բ��岹’s , which states that, “[w]here the author of the work was in the employment of some other person…the person by whom the author was employed shall…be the first owner of the copyright.”  Looking at creation in this way avoids complications with deciding who – or what – the author is, since it essentially “bypasses” their rights associated with the work (except for moral rights, which likely would not matter to a computer, at least at this point in the development of AI).

What one’s definition of “creativity” includes ultimately has a major impact on the definition of authorship.  Such a definition would likely involve concepts of unpredictability and novelty.  But even this definition causes problems for AI authorship, at least for some, since there is a question of how unpredictable and novel creations can be when they are made by a machine built and programmed by a human.  However, it seems that computers are capable of behaving unpredictably () and as such, their creativity may be enough for authorship.  Regardless of one’s definition of creativity and authorship, it seems that the status of works created by AI may not matter as much if the copyright in such works is ultimately owned by human employers.

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