Sally Yoon is an IPilogue Writer, IP Innovation Clinic Fellow, and a 3L JD Candidate at Osgoode Hall Law School.

How similar is too similar? Television producers need to be careful to ensure that they are not mimicking real-life businesses too closely to offer their fictitious shows some realism. According to , AMC Networks and Sony Pictures, the production companies behind Better Call Saul, are being sued for trademark and trade dress infringement by Liberty Tax. The tax company claims that the producers and film studios “decided not to be original at all” and “rip off” of its trademark which has been in use for over 25 years.

The episode in question (Season 6, Episode 2) portrays a business called “Sweet Liberty Tax Services,” shown below. The fictitious business is run by Betsy and Craig Kettleman, who embezzle money by taking advantage of their clients who do not understand the tax system. The real-life tax company "Liberty Tax" claims that the show copied its logo and style, including the Statue of Liberty, which is a frequent identifier of the company.

Photo retrieved from The Wrap

The is no stranger to trademark infringement issues.��Audiovisual professionals know to be especially careful whenever trademarks are displayed on screens. However, production teams can defend their works against claims of trademark infringement. Among these avenues are demonstrating that the trademarks are being used in an “indicative manner” or a “mere accessory,” instead of for identifying goods and services. Camerawork plays an important role in achieving that the trademarks blend into the scene’s overall ambience. For example, to mitigate trademark infringement risks, directors may take active measures to prevent fixed close-ups or give too much screen time to one particular trademark over another.

All that said, a trademark does not necessarily have to be displayed visually to trigger a trademark infringement lawsuit. After the release of “Black Mirror: Bandersnatch” in 2018, , a children’s book publisher known for their ‘game books’ titled Choose Your Own Adventure. As an interactive film, Bandersnatch viewers could take control and make decision for the protagonist, Stefan Butler, as he navigates a series of disturbing events. By adopting the unique narrative structure of its books and using the specific phrase “Choose Your Own Adventure Book,” Chooseco accused Netflix of willfully infringing its trademark and ultimately tarnishing the series’ child-friendly reputation. Netflix eventually settled with Chooseco in late 2020 after unsuccessfully arguing on grounds related to trademark law and fair use allowances.��

Moreover, in 2020, Netflix's movie "Enola Homes" was the by the estate of Sir Arthur Conan Doyle over “similarities to existing Sherlock Holmes material.” The estate argued that the film depicted a version of Holmes that was not yet in the public domain, illustrating how IP infringement issues can arise when films are based on works still under copyright protection.

Liberty Tax’s recent lawsuit shows that minor alterations to fictitious names may not be enough to bypass trademark infringement issues – not so “sweet” anymore for the “Better Call Saul” team.

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Anita Gogia is a IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.

If you left your house within the last 3 weeks, you have heard of the film Top Gun: Maverick. The film is a sequel to the 1986 Top Gun, and has become .

As of June 6, 2022 a has been filed by Shosh Yonay and Yuval Yonay against Paramount Pictures Corporations for all from the Top Gun sequel. Shosh and Yuval are from production, reproduction, distribution or exploitation of Top Gun: Maverick. In their response, Paramount has said in response that ��

Shosh and Yuval Yonay are the widow and son of Ehud Yonay, respectively. that inspired Top Gun. Shosh and Yuval claim that Paramount has infringed on the copyright to Ehud’s article which they own as of January 24^th, 2020. Shosh and Yuval filed a statutory notice of termination under the Copyright Act in 2018, they are heirs to and which took effect in 2020. Per , authors have the right to terminate grants of copyright after thirty-five years.

While Paramount owned exclusive movie rights to the “Top Gun” story from Ehud’s article at the time of Top Gun, Shosh and Yuval that Paramount deliberately ignored the 2020 reversion of the copyright to them. ��Paramount has that Top Gun: Maverick was obviously derived from the Ehud’s article, and argue that the film was “sufficiently completed” when the copyright reverted. this is a “disingenuous attempt” and that the sequel was in fact completed in May 2021. While Top Gun: Maverick was to release in July 2019, the film was to complete production, and then due to the pandemic.

Notably, Shosh and Yuval’s legal team are leading professionals in copyright law. Their attorneys are Marc Toberoff, , and Alex Kozinski, a and

Toberoff explains that allows authors to Toberoff also says that Paramount didn’t ��

This case raises the interesting question of whether copyright infringement is possible where the completion of the work was delayed until after the copyright‘s reversion partly due to the global pandemic. In considering the facts and evidence of this case, it will be a distinguished precedent if the court accepts a grace period in copyright reversion due to the pandemic.

The post More Money, More Problems? Paramount Faces Copyright Lawsuit Over Their Massive Blockbuster Top Gun: Maverick appeared first on IPOsgoode.

Tanzim Rashid is an IP Innovation Clinic Fellow and a 2L JD/MBA Student at Osgoode Hall Law School & the Schulich School of Business. This article was written as a requirement for Prof. Pina D’Agostino’s Directed Reading: IP Innovation Program course.

Taylor Swift’s dispute with Big Machine Records shines a spotlight on the legal and business considerations artists should keep in mind when making decisions about how to manage their catalogue.��

Sparks Fly

In , Ithaca Holdings acquired Big Machine Records for an estimated $300 million, including the master recordings for one of the most popular and successful musicians in the world:��Taylor Swift. Swift, in being denied an opportunity to bid for her masters, in late 2020 that she would re-record her entire pre-2019 catalogue in order to regain control of her music and limit the profitability of Ithaca’s asset. Over the next year, Swift released re-recorded versions of both her Fearless (2008) and Red (2012) albums, receiving widespread commercial and critical success.

Look What You Made Me Do

At the heart of Taylor’s decision was an often overlooked but significant legal distinction in the copyright law governing the music industry. All music can be subdivided into categories of copyright: lyrical, compositional, and sound.��The former (‘recording rights’) are generally retained by an artist, while the (‘master rights’) – as part of a record contract signed by musicians in the formative stages of their career – is owned by the record company (including prohibitions on re-recordings for a set number of years) with certain vetoes the artist can assert with respect to how they are licensed.��Swift, in deciding to re-record her albums, ensured that her new (Taylor’s) versions gave her all three types of intellectual property right over her catalogue, guaranteeing full ownership.

While many artists both past and present have record contracts that follow this same structure (and provide for a legal avenue by which to circumvent the record company’s ownership of the master recordings), it was Swift, at the height of her popularity, who decided to invest the time, energy, and cash in order to take advantage of this technicality. These circumstances are noteworthy: artists in similar positions to Swift often either lack the time, the financial resources, or the industry power to pull off a move like this. It is in Swift’s confidence in her fans adopting the newer versions of her recordings, and thus giving effect to the technicality she is leveraging, that her decision was made and her temporal and financial investment was put forward.

Everything Has Changed

Shamrock Investments, who acquired Swift’s master recordings from Ithaca in 2020, are in an increasingly tenuous position: Swift has them from licensing to ad agencies, films, and tv shows, and where they do license, Swift receives royalties in those cases. On top of all that, their investment in the original recordings depreciates in value every time Swift releases another one of her re-recordings or a company licenses them instead of the originals.

Major players in the music industry (including Swift’s own Universal Music Group) have responded in light of Taylor’s shrewd business moves, doubling or tripling the length of re-recording prohibitions in their most recently signed record .��Artists are now for up to ten years after commercial release before re-recording their music, which also happens to be the period when their works are at their highest monetization potential. The music industry is now acutely aware of how digital streaming platforms provide artists with a never-before-seen ability to sidestep large traditional record companies when attempting to publish their re-recordings, creating a much-heightened potential for Swift’s precedent setting move to be seized upon by other successful artists looking to take back control of their creative output. From a legal perspective, Swift’s ability to resolve this dispute without reliance on costly, time intensive litigation or a protracted negotiations process has also put the music industry on notice, including their in-house counsel, who will be much more meticulous in drafting new agreements to best protect their company’s investment.

End Game

Looking to the future, it appears that beyond her personal dispute with the owners of her original masters, Swift is looking to inaugurate a major shift in the music industry at large, relocating bargaining power to artists from record companies. However, in capitalizing on the legal technicality available hitherto her dispute, with the unique power she wields in the industry, it may be the case that Swift’s maneuver may end up disempowering less powerful artists, who will now face stricter terms on their freshman record deals and an army of legal counsel prepared to respond to strategies similar to those deployed by Swift. As record companies fortify their defences, most upcoming artists may not be in a position to fight back against The Man.

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Screenshot from

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

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Anita Baker is a legendary soul and R&B singer-songwriter who rose to fame in the 1980s. The iconic singer has won and various notable awards for her popular and timeless ballads. Earlier this year during Grammy season, Baker requested that fans not . Through Twitter, she expressed that she had outlived all her recording contracts and that her master recordings should legally belong to her. On September 3, Baker in her masters fight and gave fans the go-ahead to listen to her music once more.

Baker’s tweets and subsequent support from fans come as no surprise. In recent years, popular artists have spoken out about compensation from and Ownership of masters within the music industry has become a contentious and popular matter, particularly after Taylor Swift’s legal battle resulted in This case is a bit different as it likely relies on a lesser-known section of U.S. copyright law. When Baker described outliving her contracts, she was referring to her , which lets her reclaim her copyright after 35 years. states that authors or their survivors are entitled to “terminate grants of copyright assignments and licenses that were made on or after January 1, 1978 when certain conditions have been met.” It is not clear what the conditions were in this case besides length of time, however Baker advocated for ownership effectively and succeeded.��

Baker was not only upset that she did not own her masters, but also that the current recordings available were of inferior quality. Baker that the songs currently available lacked the original instrumentation, the recordings were sped up, and the vinyl sold today are not from analog masters, but rather re-processed digital copies. She believes her fans deserve better. Fans encouraged her in a dedicated fashion, with some stating that they just so they could enjoy her music without having to stream it.

Between March and September, Baker frequently provided legal updates through short tweets. Notably, she shared that with Warner Music Group (formerly WEA Records) began in May 2021 and that she was making progress. Finally, on September 3, she published a photo of her catalog and announced that all . Her advocacy on Twitter garnered tremendous support from her fellow musicians. Fun fact: Taylor Swift and tweeted following Baker’s success.

In the words of Anita Baker, “.”

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

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

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

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

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

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

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

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The film/entertainment industry is just one of many industries being largely impacted by the spread of the virus. At a macro level, the industry has seen closures of movie theatres, live shows, festivals, and concerts. For example, Vancouver, also known as “Hollywood North”, brought in $3.2 billion dollars to the economy last year through movie productions, however recent estimates show that or cancel production completely.

The Canadian Entertainment Unions , as performers don’t qualify for employment insurance. As precarious workers, performers are viewed as independent contractors, making them particularly vulnerable during times of economic instability.

In response to this, many industries have been forced to find remote solutions, as work-from-home options provide safe alternatives. In the performance industry this presents a challenge. However, the Vancouver Symphony Orchestra has provided an avenue for adaptation. On Sunday, March 15, , live-streaming the performance for 26,000 people around the world.

This model follows the approach taken in the sports world, as the preceding Tuesday saw multiple competitions played in empty stadiums as the Union of European Football Associations took unprecedented precautions to ensure the safety of players and fans.

As fans of these various entertainment industries are increasingly being told to stay indoors, streaming platforms will need to respond to the increased demand accordingly. Smaller streaming platforms, such as Acorn TV and Sundance Now, have responded to COVID-19 by , hoping to entice new subscribers to remain loyal to their platforms.

Larger platforms like Netflix and Disney Plus will likely have to find other creative solutions to remain competitive during times of “social distancing”. In response to COVID-19, US telecom firm Verizon found that , with online gaming increasing by 75% during peak hours.

Organizations like the World Health Organization and Global Citizen have highlighted the importance of keeping us connected to the arts during isolation through initiatives like . Through enlisting the services of artists such as Coldplay, John Legend, Keith Urban, fans have been treated virtual concerts to promote unity and raise funds for the COVID-19 Solidarity Response Fund.

As the world responds to this pandemic, the entertainment industry reminds us that social distancing does not preclude interconnectedness. Initiatives like #TogetherAtHome demonstrate the entertainment industry’s ability to promote creative alternatives in unprecedented times.

Written by Jason Clarke, a third year JD Candidate at Osgoode Hall Law School. Jason is also a Clinic Fellow at the Osgoode Innovation Clinic.

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The Evolution of the Kirby vs. Marvel Saga

In 2010, Marvel filed suit against Kirby’s heirs, who contended that they had the right to issue copyright termination notices to Marvel (and other entertainment powerhouses like Fox, Sony, Universal and Paramount Pictures) on characters created by Kirby under section ��of the . Marvel argued that Kirby’s works were made for hire and thus his estate had no termination rights. In August of 2011 the district court found in favour of Marvel, applying the “instance and expense test” to find that the works were indeed made for hire. The Kirbys thus appealed and subsequently lost both the and a for the Second Circuit appeal court to rehear the case. Their latest brings the issue to where it stands today.

The Issue Hits the Stands

The March filed by the Kirbys to the Supreme Court focused its attack on the “instance and expense” test used by the Second Circuit court to determine if a creation is work for hire (both doctrines explained rather well by IP lawyer Terry Hart ). ��The Kirbys submitted that the test was used “under the 1909 Act to eviscerate the 1976 Act’s inalienable termination right, and it did so with respect to a major independent artist and numerous invaluable works.” It further suggested that the late Kirby was a “creative genius who redefined an industry from a small drafting board in his basement, without financial security or any participation in the success of his creations, [epitomizing] the very author/publisher imbalance Congress sought to remedy in enacting the termination provisions.” The petition acts as a sort of call-to-arms for creators and their families, who would find great power in holding termination rights over the wealthy and powerful studios relying on these individuals for their works and talents.

Marvel Brings the (Asgardian) Hammer Down

Marvel did not hold back in its to the Kirbys, clearly tired of this seemingly never-ending dance (wait, I thought Marvel liked sequels?). In addition to submitting that the case in question presented “a factbound application of a test uniformly adopted by the lower courts” Marvel sharply summarized its position stating: “It [the decision] implicates no circuit split, no judicial taking, no due process violation, and no grave matter of separation of powers. It does not remotely merit this Court’s review.” Amongst the various arguments used to dismiss the Kirbys’ claims, Marvel’s papers include a discussion of why the Second Circuit was correct in finding that Kirby’s creations were works for hire. Marvel noted that comic book legend Stan Lee “supervised the creation of Kirby’s work from conception to publication” and had the authority to approve Kirby’s art or seek revisions, while Kirby was paid at a fixed fee-per-page created. As such, Marvel argues that they, not Kirby, “bore the “risk” and potential expense if the publication of the works was unsuccessful” and that Kirby himself had repeatedly stated that Marvel owned all the rights in his works.

The Interesting Web That Has Been Woven

Even though it will be a while until we know which party the Supreme Court sides with, the Kirby’s reopening of the issue and Marvel’s response have ignited a conversation about copyright and the��idea of work for hire - a concept extremely significant to the entire entertainment industry. On the Kirbys’ team, Hollywood guilds , the , and the submitted an to the Supreme Court, stating that the appeal court’s decision and a broad interpretation of works made for hire regarding commissioned works creates a huge power shift within the entertainment industry in favour of studios. The decision allows for a “presumption that copyright ownership vests in a commissioning party as a work made for hire, rather than in the work’s creator.”

The guilds’ interest in the matter reflects the importance of the case for the entertainment industry, especially if the Supreme Court reviews the issue. As noted by , “film studios, record labels and publishing houses have built their businesses in no small part on the conveyed rights of artists like Kirby, who worked quasi-independently.” If the Supreme Court were to find in favour of the Kirbys’ camp, the leaders of the entertainment industry could see their copyrights in important (and financially lucrative) franchises, characters, and works be challenged and potentially taken away by individual creators and their families or estates. This could result in a huge shift in how these studios, record labels, and publishing houses do business, having to possibly create partnerships with these artists and seek permission to use the works their businesses rely on. The artist’s or creator’s role could thus be elevated within the industry, no longer just a “worker” or “gear” in the machine but a partner in the creation of entertainment products. If Marvel wins or the Supreme Court decides not to revisit the case I can only assume that the status quo would hold and artists and their families may be deterred from spending the time and money to challenge industry giants like Marvel again. Whether this is the correct way for the entertainment industry to function (cue debate on artist’s rights and artistic integrity vs. the commercialization of art and entertainment), that is a discussion for another day.

There is a strong chance the Supreme Court will not open the case. Only a handful of cases from those requested to be reviewed are examined��each year, and as noted by this is a year of hot-button topics and to the that may trump the Kirby estate’s petition in importance. Yet, there are signs that the case may actually be heard. For example, Marvel originally declined to respond to the petition and only did so after being asked to by the Court’s justices because they planned to take the case into conference - a step towards a hearing. Again, nothing has been decided yet, but I think I feel my Spidey senses tingling...

Jaimie Franks is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.��

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The Background to the Battle

According to the , Frank Petrella co-wrote a screenplay about boxer Jake LaMotta in 1963. When Frank Petrella passed away, renewal rights reverted to his heirs. Consequently, his daughter Paula renewed the copyright in 1991. However, LaMotta’s life had been put on film in 1980 in Martin Scorsese's Oscar-winning movie . In 1998 Petrella advised MGM that Raging Bull infringed her copyright, but did not sue until January 6, 2009. MGM argued in response that the equitable doctrine of laches��prevented Petrella from seeing through her lawsuit as her 18 year delay in filing the claim was unreasonable and prejudicial. The District Court and Ninth Circuit Court of Appeals agreed with MGM, but as we see here, the Supreme Court did not.

The Majority’s Strike

Justice Ginsburg delivered the of the Court, noting that of the Copyright Act provides that “[n]o civil action shall be maintained under the [Act] unless it is commenced within three years after the claim accrued.” The Court found that the equitable defence of laches could not be invoked to preclude an action brought within a federally prescribed limitation period. Therefore, since Petrella was not seeking relief for conduct that occurred outside the limitation period, and was only addressing acts of infringement occurring on or after January 6, 2009, the lower courts’ decisions to bar her suit on the basis of laches were overturned. Justice Ginsburg did, however, acknowledge that the doctrine and a plaintiff's delay in filing suit could still play a role in regards to equitable relief and when considering what an appropriate remedy may be.

The most powerful blow to the entertainment industry however was Justice Ginsburg’s ��that Petrella’s decision to hold off on suing MGM until the film made money was not a wrongdoing.�� Justice Ginsburg argued that “there is nothing untoward about waiting to see whether an infringer's exploitation undercuts the value of the copyrighted work, has no effect on the original work, or even complements it.” According to Justice Ginsburg, the limitation period allows a copyright owner to “defer suit until she can estimate whether litigation is worth the candle.” Essentially, knowing that your copyright has been infringed but waiting to see if the infringing work is profitable is not a reason to be barred from pursuing a claim - no matter how many years ago the infringement occurred.

The Dissenters Enter the Ring

For the ��judges, Justice Ginsburg’s decision “disables federal courts” from dealing with the unfairness that can arise in the “unjust hardship” created on a party by another that “unreasonably delays [filing] a suit.” Such hardships could include situations where a claim is made for a film released so far in the past that witnesses and evidence that could be crucial to a defendant’s ability to prove their case are no longer around.

In my opinion, the dissent's discussion of section , which is recognized by the majority as a tool to ensure fairness in awarding damages, was very convincing. ��§504(b) only allows a plaintiff to recover profits attributed to the infringement in question, and only those profits less “deductible expenses incurred in generating those profits.” However, the dissent rightly notes that fairness is not guaranteed. A plaintiff’s purposeful delay could mean that by the time a claim is filed the defendant may have recovered the majority of his or her expenses. Thus, a defendant that has devoted years to producing a work can lose their future profit stream to the plaintiff who waited in the shadows for the work to move out of the red, the plaintiff who will make more now than they would have had royalties and a licence been negotiated at the onset.

The Aftermath

Petrella is not just a bold statement about the doctrine of laches, but also greatly impacts the entertainment industry as it functions today. Movie studios, for example, will always be wondering if the film they put out twenty years ago may be subject to a lawsuit tomorrow. This may not be a bad thing however. According to lawyer :��“Now [studios] are going to have to be more vigilant, search their titles more, communicate more with copyright holders.” Copyright holders in turn will have to be more aware of the practices of studios, looking out for revivals of past forgotten works. The expectation for both sides of the copyright battle to do their due diligence in the creation of future works is in my opinion a happy consequence.

It is not yet clear how the decision may impact pending copyright infringement concerns for works already in existence. Commentators have discussed what the ruling might mean for the current infringement claim against�� Led Zepplin relating to their song��“”, and whether Stan Lee Media Inc. may be able to assert ownership over ��- a claim that has been dismissed in the past as “time-barred”. Lawyer believes that, “We can expect a flood of new lawsuits based on purported infringement of films, television programs, music and other copyrighted materials that were created decades ago but are still exploited today.” A statement all so true in this era of revivals and re-releases (exactly how many Spidermans have there been?)

Concluding Thoughts

I think it is a positive consequence of the ruling that both large studios and individual creators alike will now have an increased level of accountability when it comes to being aware of each other’s actions when releasing new works. ��However, with no way to shut out old claims, organizations may find themselves digging through files in an attic in order to defend against lawsuits for works possibly released before the company’s lawyers were born. In a way, there will be no sense of finality or completeness in the entertainment industry if creative works are forever vulnerable to lawsuit. What’s immortalized through film or script or song will essentially also live forever in the eyes of the law.

Jaimie Franks 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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A suitable name for an entertainment project can be critical to its success and can even enhance the aesthetic effect of the overall work.�� In an over-saturated information environment, a memorable title for a novel or movie can be the difference between a hit whose name is on everyone’s lips and a dud which sinks anonymously into the churning waters of the entertainment industry’s annual output.�� That being said, idiosyncratic titles are no guarantee of success or even attention: the six-letter Avatar is a box office sensation orders of magnitude greater than Mr. Magorium’s Wonder Emporium.

Prompted by the Federal Court of Canada’s decision in Drolet v. Stiftung Gralsbotchaft (2009 FC 17) [Drolet], this short article addresses what protection, if any, is available under Canada’s statutory intellectual property regimes for the “title” of a book, movie or song.�� The answer may surprise owners of certain registered trade-marks.

Copyright

In the realm of copyright, the matter approaches the status of truism: the title of a work is not itself eligible for protection as a copyrighted work.�� However, some scrutiny is required in order to reach that conclusion.�� The definition of “work” in the Copyright Act (Canada) is brief: “‘work’ includes the title thereof when such title is original and distinctive”.�� It may be tempting to conclude that copyright can therefore subsist in a title (the title presumably being a “literary work”).�� But David Vaver opens his discussion of titles in his text Copyright Law with his own admirably concise statement: “Titles have no copyright” (Vaver, Copyright Law, Irwin Law (2000) [Vaver] at 49).�� The favoured interpretation of the Copyright Act is that a title, in and of itself, cannot be the subject of copyright protection independent from the work to which it refers.�� The leading cases in the area (see, e.g., Francis, Day & Hunter Ltd. v Twentieth Century Fox Corp. Ltd. (1939), [1940] AC 112 (PC) [Fox] and Flamand v Societe Radio-Canada (1967), 53 CPR 217 (Que. SC)) express scepticism at the notion that a title could ever qualify for protection, preferring to view the definition of “work” as simply clarifying that the title is merely included in the ambit of protection accorded to the broader work itself.�� In any event the cases appear to set a bracingly high threshold for protection of a title qua title: “The Man Who Broke the Bank at Monte Carlo” was deemed, in Fox, to be insufficiently “original and distinctive” to allow the owner of copyright in a song of that name to exercise his copyright so as to prevent someone from releasing a movie featuring the same name.

Trade-mark

If copyright has proven an inhospitable choice, Canadian mark owners, and the Canadian Intellectual Property Office (CIPO), have traditionally viewed trade-mark protection as a more fruitful possibility for protecting titles.�� The following films and television shows turn up in the CIPO trade-marks database as either a registered or allowed mark in connection with the “ware” of motion pictures or filmed entertainment: Borat, The Godfather, Grey’s Anatomy, Mission: Impossible and The Dark Knight.�� The availability of trade-mark protection under Canadian law is at odds with the approach adopted by the United States, where single-work titles are barred from registration (see Julie Jauron, “Drolet v Stiftung: Protection of titles under trademark law: the Canadian Situation” (May 2009), 217 Trademark World 15 [Jauron]; and see In re Cooper (1958), 254 F.2d 611 and Herbko International Inc. v Kappa Books Inc. (2002), 308 F.3d 1156).�� However, that Canadian availability may now be a thing of the past.

In Drolet, the Federal Court of Canada definitively pronounced, in what appears to have been a case of first impression, that titles of entertainment works are not registrable as trade-marks under the Trade-marks Act (Canada) and the court ordered the expungement of a registered book title.�� The court concluded that, even if a book could qualify as a “ware”, a title fails to meet the requirements of Section 12 of the Trade-marks Act because the title is inherently descriptive – the title of a book is, effectively, simply a description of the book itself (Drolet at paras. 180 and 185).�� As the court rhetorically asks, “How would it be possible to market a book without referring to its title?” (Drolet at para. 188).

The reasoning in Drolet also made reference to the Copyright Act, asserting that allowing trade-mark registration of a title would “thwart and skirt” the Copyright Act, by permitting the limited monopoly of the trade-mark owner, which through continual use could potentially extend in perpetuity, to preclude use of the combination of words which make up the title long after copyright protection in the underlying work had lapsed (Drolet at para. 188).�� To use the example cited by the Federal Court, if a title could be trade-marked, even after copyright had expired for the work called Gone With the Wind, the book could only ever be sold under a different name.

Policy Considerations

The Canadian treatment of titles under intellectual property statutes appears, in light of Drolet, to be converging: single-work titles should not be the subject of copyright or trade-mark protection (absent some heretofore unseen level of “distinctiveness” which might result in copyright protection).�� Though the Federal Court in Drolet was considering only the title of a book, the reasoning is easily transferable to titles of works such as movies and songs.�� While “one-off” titles are not proper candidates for protection, the titles of periodicals and book series can be protected as trade-marks (see Jauron at page 17) – because the title in such cases is more than simply descriptive of the product, it also confirms that each issue, edition or installment originates from the same source (see Jauron at page 17).

The most compelling rationale for the approach is that single-work titles are so granular (and potentially consist of words that are simply component parts of speech and writing) that according protection to them would radically expand the field of protected works and correspondingly drastically reduce the ambit of the public domain (see Vaver at page 50).�� Such an expansion is problematic from both copyright and trade-mark perspectives: copyright because it would preclude use of the protected word(s) in fields far beyond the initial use, and trade-mark because protection (and thus exclusion) could be so long-lasting.�� Further, titles (considered solely as titles) have marginal economic or cultural value, so there is little reason to incentivize their creation by according them statutory protection, and much damage which could be done by doing so.

There is also an underlying subtlety to the disarmingly straightforward rationale found in Drolet: while the court may overstate matters when it says that there is no way to refer to a book other than by its title (for example, one could use a book’s ISBN, or refer to it as “that book Stephen King published in December 2009”), using a title seems to be the most effective.�� That appeal to efficacy, then, ties together the different motivations: allowing protection for titles would dramatically and negatively alter the calculus of protection and the public domain, increase clearance costs, limit the viability of free expression and insert unnecessary logical puzzles and philosophical conundrums (How do you separate a work from its title? Why should copyright extend to a word only a few letters long?) into the heart of intellectual property law.

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