Emily Xiang is an IPilogue Writer, a Senior Fellow with the IP Innovation Clinic, and a 3L JD Candidate at Osgoode Hall Law School.

At last, the on the protectability of the subjects of ‘pop art’. In 1984, Vanity Fair magazine received a licence from photographer Lynn Goldsmith to use her 1981 portrait of Prince, which she had shot on assignment for Newsweek. Fast forward to 2017, when Vanity Fair published a special issue to pay homage to the recently deceased musician that featured ‘Orange Prince’ – Andy Warhol’s pop art depiction of Goldsmith’s photograph. The question of whether Warhol’s Prince silkscreens may be considered fair use has now made its way up to the US Supreme Court, and on October 12th of this year, . This is the outlining the arguments that were made in the matter of Andy Warhol Foundation for the Arts v Goldsmith.

In determining fair use according to the statute, one of the primary points of contention involved the meaning behind the of the alleged use. The Warhol Foundation contended that the purpose of ‘Orange Prince’ was to comment on modern society, thereby conveying unto the original an entirely different meaning and message. Lisa Blatt, representing Goldsmith, proposed that one may just as easily argue that the “purpose” of both uses was the commercial licensing of the works for publication. Blatt’s arguments were supported by Yaira Dubin, representing the Justice Department, who also highlighted the foundation’s commercial licensing of Warhol’s work, saying that “using another artist’s work as a starting point to turn around and compete directly with their original has never been considered fair.”

Of course, the magnitude of such a household name as Andy Warhol’s was not lost to the court. Justice Kagan questioned the influence such a name might have on the query: “Now we know who Andy Warhol was and what he was doing and what his works have been taken to mean. So it’s easy to say that there’s something importantly new in what he did with this image.” On the other hand, Justice Kagan also acknowledged that there must be a reason why Warhol’s art is hung up on the walls of museums: “[W]hy do museums show Andy Warhol? They show Andy Warhol because he was a transformative artist, because he took a bunch of photographs and he made them mean something completely different.”��

The Supreme Court judges addressed a statement made by the , which ruled in favour of Goldsmith. The Court of Appeals had warned that judges “should not assume the role of art critic and seek to ascertain the intent behind or meaning of the works at issue.” Justice Alito, in particular, seemed to disagree with the statement, pondering the kind of perspective that would be appropriate in determining such distinctions: “Well, suppose that [somebody]...made an almost exact copy [of the Mona Lisa]…If you showed [the two works] to most people today, they would say, well, all right, brown dress, blue dress, red dress, doesn’t make any difference, right?...But, if you called somebody who knows something about Renaissance art, the person would say that makes a big difference.”

The commentary strikes at the ambiguity often found in determining cases involving intellectual property, if only because there is an inherently subjective element to construing creations of the mind. However, though patent law has the “person of ordinary skill in the art” standard and trademark law has the “ordinary casual consumer somewhat in a hurry” standard, copyright law often relies on a judge’s evaluation of whether infringement has occurred.

There is much to be anticipated from the Supreme Court’s final decision, the kind of effect such a decision might have on the world of art and photography, as well as whether a ruling in favour of the foundation would indeed “decimate the art of photography by destroying the incentive to create the art in the first place,” as Blatt argues.

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Emily Xiang is an IPilogue Writer, a Senior Fellow with the IP Innovation Clinic, and a 3L JD Candidate at Osgoode Hall Law School.

Over 3 years have passed since New 91��ɫ’s District Court a ruling in the matter of Andy Warhol’s “Orange Prince”, and the ripples of the case have finally made their way up to the Supreme Court. On Wednesday, October 12th, 2022, the judges of the US Supreme Court heard from both sides, and considered whether Warhol’s , which he had based on a 1981 photograph of Prince by photographer Lynn Goldsmith, may be considered a use that is “fair”.��

The doctrine of fair dealing in Canada has long played an important role in balancing the scales of copyright law from leaning too far in favour of copyright holders. The fair dealing exceptions recognize certain uses of protected works as benefitting society, and thereby safeguard those uses from findings of infringement. The parallel doctrine in the US tracks along similar reasoning and is known as the ‘fair use’ doctrine. In determining whether a use of a copyrighted work is “fair,” courts consider numerous factors, including whether the use in question is “transformative” of the original material.

In , the Supreme Court was invited to assess whether a work was “transformative” when it conveys a different meaning or message from its source material, or whether, in cases where the accused work “recognizably derives” from its source material, judges are forbidden from deriving or considering such meanings. It was an engaging proceeding with an abundance of references to pop culture icons and current affairs, and was punctuated at times by laughter in the courtroom at an amusing hypothetical posited by one of the judges.����

Roman Martinez appeared on behalf of the Andy Warhol Foundation, and clarified the issue at hand, as well as the Foundation’s position: “[b]oth courts below agreed, and Goldsmith doesn’t dispute, that Warhol’s Prince Series can reasonably be perceived to convey a fundamentally different meaning or message from Goldsmith’s photograph. The question in this case is whether that different meaning or message should play a role, any role, in the fair use analysis. Our answer is yes.” Martinez argued that while Goldsmith’s original photograph captured a “vulnerable-looking Prince,” Warhol’s depiction turned it into a commentary on celebrity and fame – an entirely different meaning and message.��

The judges somewhat pushed back against this argument. Justice Elena Kagan suggested that in Hollywood, while a movie adaptation of a book might introduce plenty of new elements that may make a derivative work “transformative” under Martinez’s proposed test (“...new dialogue, sometimes new plot points, new settings, new characters, new themes”), one would still expect some sort of licensing agreement to be required.

Chief Justice John Roberts and Justice Clarence Thomas also commented on Martinez’s arguments, albeit in more lighthearted terms. The Chief Justice wondered whether a claimant who depicted Prince with “a little smile on his face” may advance the argument that the “meaning or message” of the work was fundamentally changed to convey that “Prince can be happy” or that “Prince should be happy.” Justice Thomas in turn asked Martinez to imagine the Justice at a Syracuse football game as a Prince fan, “which [he] was in the ‘80s.” Justice Kagan interjected, “No longer?,” to which Justice Thomas replied, “Well…so only on Thursday night.” This elicited some laughter in the courtroom. Justice Thomas continued, “And I decide to make one of those big blowup posters of ‘Orange Prince’ and change the colours a little bit around the edges and put ‘Go Orange’ underneath. Would you sue me for infringement?,” insinuating that the changes and add-ons may be considered to convey a new “message” to Warhol’s work, under the Foundation’s proposed test. In response, Martinez emphasized that the verdict in both scenarios would largely depend on the degree of transformation in meaning or message, as well as the other factors in the ‘fair use’ analysis, such that a holistic assessment may be applied.

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Prof. Pina D’Agostino is the Founder and Director of IP Osgoode, the IP Intensive Program, and the IP Innovation Clinic, the Founder and Editor-in-Chief of the IPilogue, the Deputy Editor of the Intellectual Property Journal, and an Associate Professor at Osgoode Hall Law School. This article features contributions from Ryan Wong (IP Osgoode & IP Innovation Clinic Alumnus), Sabrina Macklai (IPilogue Senior Editor), Tianchu Gao (IPilogue Writer), and Ashley Moniz (IPilogue Managing Editor).

2021 was an exciting year for the IPilogue. Our hard-working students and community members published more than twice as many articles than in 2020 and the most articles in a calendar year since 2011. This sharp increase helped us stay up to date with some of the biggest topics shaking up intellectual property: from , to ; and from growing investments in and , to IP registrars around the world grappling with whether to acknowledge ��as an inventor or artist. This article summarizes the top developments reported on our blog and in patents, trademarks, and copyright law in 2021. For a review of Privacy legislation in Canada, check out .

Top 10 Most Read IPilogue Articles Published in 2021

1. by Sabrina Macklai & Emily Chow
2. by Prof. David Vaver
3. by Claire Wortsman
4. By Claire Wortsman
5. by Natalie Bravo
6. by Prof. Giuseppina D’Agostino
7. by Bonnie Hassanzadeh
8. By Meena Alnajar
9. by Prof. David Vaver
10. by Bonnie Hassanzadeh

Introducing the College of Patent Agents & Trademark Agents

On , the came into force. The Act established the (‘’), an independent public interest regulator of patent and trademark agents in Canada. The purpose of the College is “to enhance the public’s ability to secure the rights provided under the and the .” The College’s responsibilities include maintaining professional competencies and ethics, issuing licences, collecting fees, and administering certification exams. This development marks a key milestone for the profession and for Canada’s . Though still in its infancy, the College has been criticized for and its , which may impose an additional fee on lawyer agents. It remains to be seen how influential the College is on the profession as it is expected to be fully operational within the next two years.

Patents

Overbreadth as an Independent Ground of Invalidity

On July 28, 2021, the Federal Court of Appeal confirmed overbreadth as a standalone attack on patent validity: . In this case, the appellants argued that there is no statutory basis for overbreadth as a ground for invalidity. The Federal Court of Appeal disagreed and found that overbreadth can be supported by a combination of sections 27(3) and 27(4) of the Patent Act. Case law has often overlapped overbreadth with other grounds of invalidity such as obviousness, anticipation, and inutility.��

First Time Interpreting Patent Agent Privilege

Similar to solicitor-client privilege, patent agent privilege was introduced by section 16.1 of the Patent Act on June 24, 2016. The first case on patent agent privilege was decided this year: In this decision, the Federal Court provided some helpful commentary and analysis on the application and limitations of patent agent privilege.��

Patent Prosecution History Now Admissible as Evidence

In 2018, section 53.1 of the Patent Act was added to make patent prosecution history admissible as evidence in patent proceedings. This was a significant development as the Supreme Court of Canada had expressly rejected the idea and stated that admitting patent prosecution history “would undermine the public notice function of the claims, and increase uncertainty as well as fuelling the already overheated engines of patent litigation” (Free World Trust v Électro Santé Inc., 2000 SCC 66 at para. 66). Three subsequent Federal Court of Appeal decisions developed this provision further: ; ; and .��

Continued Debates over AI as an Inventor

Around the world, patent registrars grappled with patent applications that credit artificial intelligence software as the inventor. Dr. Stephen Thaler’s “DABUS” (Device for Autonomous Bootstrapping of Unified Sentience) applied for patents around the world for its interlocking food containers. DABUS was granted patents in Australia and South Africa, with . In line with the and the , the disagreed, stating that absent express intention from Congress, the term “individual” in their statutory definition of “inventor” . The Supreme Court of Canada last considered the definition of "inventor" in 2002, but has yet to consider whether it would include non-human entities.

Trademark Law

Parody in Trademarks is No Joke

In , the Federal Court reaffirmed that parody is not a defence against trademark violation. Unlike the 2020 decision ), where the Federal Court failed to find the marks confusing, Justice McHaffie held there was a likelihood of confusion and passing off. This was based partly on the similarity of the trademarks and the overlap of the goods (both offering baked goods). However, even if the nature of the parties’ trades differ, trademark owners may still find recourse against spoofed versions of their marks through claiming depreciation of goodwill under section 22 of the . Here, the Court found goodwill in Subway’s trademarks, which was damaged by the nature of Budway’s products, as contrary to Subway’s “healthy and active” lifestyle promotion. With damages amounting to $40,000, it is clear the courts are unamused by parody in trademarks.

The Road Less Travelled Cannot be Trademarked

Like most countries, Canada bars the registration of “clearly descriptive” trademarks to prevent applicants from monopolizing words that merely describe the goods or services at hand. For this reason, marks consisting of are typically unregistrable. In , the Federal Court clarified when such marks might be protected. Hidden Bench and Locust Lane are two wineries operating on the same little road, “Locust Lane”. Although the Federal Court agreed that Hidden Bench met the threshold for a valid common law trademark over “Locust Lane”, they ultimately held that the mark, as clearly describing the goods and services’ place of origin, lacked both inherent and acquired distinctiveness. Therefore, Hidden Bench could not establish the necessary goodwill for a passing off claim. Only descriptive marks that have acquired a “secondary meaning” through use may warrant protection.

CIPO Addresses the Application Backlog

While filing trademarks is important for brand protection, the examination stage can take . In May, the Canadian Intellectual Property Office (CIPO) new measures to address the application backlog. Trademark owners may now file requests to expedite their examination where the registration of their mark is necessary for special circumstances such as if a Canadian court action involving the mark is expected or underway or if the goods or services are aimed at preventing, diagnosing, treating, or curing COVID-19. If accepted, the examination will take place within two weeks. The examination is also automatically expedited by approximately 6-10 months when the goods and services in the application are listed in CIPO’s . Though it is too early to assess the effect of these changes on mitigating the “”, the backlog of CIPO’s unexamined trademark applications appears to have as of December 13, 2021.

Push to Register Non-French Trademarks for Use in Quebec

Among the controversies associated with Quebec’s proposed Bill 96, , the bill stipulates new requirements for trademark owners operating in Quebec. Currently, under Quebec’s French-language laws, both registered and unregistered (i.e., common law) trademarks recognized under the may appear on public signs, posters, and commercial advertising in Quebec, in languages exclusively other than French. If enacted, Bill 96 would permit only registered non-French trademarks to appear on public signage, provided there is no corresponding registered French version of the mark. The Coalition Avenir Quebec government tabled Bill 96 on May 13, 2021, and Quebec’s National Assembly last examined it on December 10. Some iteration of the bill will likely become law by the end of this year. But even if it fails to pass, businesses relying on common law trademarks would be wise to try to register them, given the many that registration provides.��

Copyright Law

In 2021, the Federal Court and Federal Court of Appeal heard 57 copyright infringement proceedings, approximately of all IP-related litigations at these levels.

Developments in Fair Dealing

The Copyright Act’s section 29 fair dealing provision, which allows for certain uses of copyright-protected materials, remained a central issue. affirmed that fair dealing for the purpose of news reporting (section 29.2 of the Act) must provide attribution, mentioning both the source and the name of the author. An indirect reference to the author accessible through “minimum research” is insufficient. As such, the Federal Court of Appeal rejected Trend Hunter’s argument that hyperlinking to the source article where Stross was credited was sufficient to meet the second requirement. The Court also declined to find fair dealing under s. 29 more broadly, considering that Trend Hunter’s dealing was commercial in nature, reproduced Stross’ work in its entirety, and that alternatives were available.

Fair dealing was once again at issue in , where the Federal Court held that the Conservative Party’s use of the CBC’s news footage of Liberal Party Leader and Prime Minister Justin Trudeau during their 2019 election campaign did not infringe CBC’s copyright. The court undertook a large and liberal interpretation of fair dealing, finding that the Conservative Party’s use of CBC footage was for the purpose of criticism under s. 29.1.

91��ɫ achieved a in the copyright tariff dispute with the Canadian Copyright Licensing Agency (“Access Copyright”) in In a unanimous decision, the Supreme Court ruled that the interim tariff approved by the Copyright Board is not mandatory. Users can choose whether to accept licences or pursue alternative methods to lawfully copy works. Notably, this marked Justice Rosalie Abella’s final decision before her retirement from the Supreme Court of Canada. Throughout her tenure, and her judgement here provided helpful obiter regarding fair dealing as integral to users’ rights.

Even Fake Facts are Not Copyrightable

involves the alleged copyright infringement of the famous true-crime story The Black Donnellys. The book had always been presented and accepted as “.” The Federal Court ruled that “an author who publishes what is said to be a nonfiction historical account cannot later claim the account is actually fictional to avoid the principle that there is no copyright in facts.” Given today’s popularity of the phrase “based on a true story”, this ruling is a that there is no copyright in facts, even if they are later found to be untrue.

Copyright in Evolving Content Transmission

In , the Federal Court found the defendant liable for copyright infringement in its provision of pre-loaded set-top boxes and internet protocol television (IPTV) services and awarded the plaintiff nearly $30 million in damages. These services made copyrighted works owned by the plaintiff available to the public without the plaintiff’s permission. This decision marks the first time The court dealt with a similar issue in ). As IPTV is growing increasingly popular across the globe, its poses a challenge in Canada.

Availability of Reverse Class Actions for Copyright Infringement Claims

The first of its kind in Canada, the Federal Court of Appeal in affirmed that reverse class actions may be pursued in connection with copyright infringement claims. Though the matter was sent back to the Federal Court for further consideration, this judgement may encourage and enable mass copyright enforcement in the future, especially in our digital age where copyright infringement is more commonplace.

Public Consultations Ahead of 2022’s Copyright Reform

As part of the (CUSMA), which came into force on July 1, 2020, Canada has until the end of 2022 to implement numerous changes to their domestic copyright laws; most notably, extending the general term of copyright protection from . In light of the upcoming legislative amendments, the Government of Canada hosted three public copyright consultations in 2021:

• ;
• ; and

With the consultations now closed, it will be interesting to see how Canadian copyright laws will change in 2022 to accord not only with international obligations but our ever evolving digital world and public attitudes surrounding copyright laws.

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Emily Xiang is an IPilogue Writer, the President of the Intellectual Property Society of Osgoode (IPSO), and a 2L JD Candidate at Osgoode Hall Law School.

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For fifty years, the Copyright Society of the USA (CSUSA) has invited numerous esteemed figures to present the annual . This past Monday, Osgoode’s very own Professor David Vaver delivered the 2021 Brace lecture on “User Rights: Fair Use and Beyond” as the series’ very first international speaker from outside the United States. Professor Vaver spoke on the origins of fair dealing in Canada and its differences and similarities in comparison to the American legal concept of “fair use”, its evolution throughout the history of Canadian common law jurisprudence, and its potentially far-reaching future beyond Canada and copyright law.��

Professor Vaver opened his lecture by introducing Jack McClenaghan’s novel Moving Target[1], a man-on-the-run thriller set in New Zealand during World War II that follows an army deserter as he is hunted by the military. Similarly, the boundary between copyright and user rights can also be likened to a “moving target” – elusive, ever-evolving, and always open to debate. And like McClenaghan’s fictional account of militant pursuit, the history of tension between copyright and user rights has been a tale of survival on the part of both.��

“Fair dealing” in Canada is a statutory exception to copyright infringement, and has been “as an integral part of the Copyright Act [and more] than simply a defence”. The Court refers to it more specifically as a “user’s right”. However, fair dealing’s designation as an “exception” inherently produces a negative implication: that copyright law is the “natural order” of things. That anyone’s use of a copyright-protected work infringes the copyright owner’s property. That any deviation from that rule must be an “exception”.��

However, the history of copyright law has always read quite differently. Up until the 20th century, , the public had relatively free reign and plenty of rights to use and to benefit from the circulation of works at the time. However, over the course of the 20th and 21st centuries, the island of copyright law that once stood amidst a sea of user rights began to expand, and as the sea around it shrank, the two eventually seemed to switch in character altogether.��

It wasn’t until the late 1900s that courts in the UK began to recognize a problem with the tendency towards legal copyright. In , the Church of Scientology sued a former member for publishing a book criticizing Scientology that contained material copied from Scientology books and documents, as well as confidential information pertaining to Scientology courses. The Court of Appeal unanimously held that the scope and content of the fair dealing defence should include works of criticism. Along a similar vein in the US, Professor L. Ray Patterson and Judge Stanley F. Birch argued in their 1996 article that “the subject matter of copyright is information and learning, which implicates the right of citizens to know. This right is protected by both the First Amendment and the copyright clause”.��

Over time, Canadian courts also began to increasingly recognize the need for a careful balancing act to weigh the rights of copyright owners against those of the public. In , the court noted that “[t]he Copyright Act is usually presented as a balance between promoting the public interest in the encouragement and dissemination of works of the arts and intellect and obtaining a just reward for the creator...In crassly economic terms it would be as inefficient to overcompensate artists and authors for the right of reproduction as it would be self-defeating to undercompensate them.” Professor Vaver also credited Chief Justice McLachlin (as she then was) and Justice Abella for influencing this trajectory in Canadian copyright jurisprudence, as reflected by their rulings in more recent copyright law cases such as , in which the Court unanimously held that the Law Society’s practice of providing photocopy services to researchers fell within the ambit of fair dealing, and , in which the use of previews of musical works on online music services was also considered to be fair dealing.��

In conclusion, Professor Vaver invited listeners to consider how the idea of user rights may extend beyond the concept of fair dealing as a legal defence, perhaps beyond copyright law, or even beyond Canadian borders. In quoting from his own 2013 article “[J]urisdictions that view copyright's primary purpose as - to quote Nimmer - ‘not to reward the author but rather to secure the general benefits derived by the public from the labors of authors’ may find user rights a concept worth considering for their copyright law. And, while one is at it, why not for all intellectual property laws?”

[1] Jack McClenaghan, Moving Target (Gollancz, 1966).

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Tianchu��Gao is an��IPilogue��Writer and a 1L JD Candidate at��Osgoode��Hall Law School.��

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The decade-long dispute between Google and Oracle over computer code’s copyrightability finally came to an end on April 5, 2021. It started out in 2010 when Oracle sued Google for copying the ��of��Java, a programming language developed and licensed by Sun Microsystems��and��later��acquired by Oracle, in��Google’s��development of��the����operating system. The fight between the two tech giants, with��billions of��dollars at stake,��attracted��significant����and��.��Many��academics, businesses,��and computer professionals����for��Google before the case was heard at the��U.S.��Supreme Court��on��October 7, 2020.��The����bears great weight in shaping the development of the IT industry and��U.S.��copyright law. It is arguably, as Stanford law professor Mark Lemley coined it, “”����

The case��meandered��through��constant reversals of judicial judgements.��It is composed of two phases centering on two legal issues that were trialed separately—the��copyrightability of APIs��and��the��.��In the first phase, the�� that Oracle’s APIs functioned somewhat like a “system or method of operation” which could be implemented in various ways and, on the facts of the case, Google’s use of them was permitted under the��Copyright Act.��The����and claimed that��“the overall��structure of Oracle's API packages is creative, original, and��‘resembles a taxonomy’.”��It also��ordered��a second��trial��to determine��whether Google’s use of Java��API��was��acceptable under the fair use��doctrine. In��the��, the jury voted��in��favour��of��non-infringement��on the ground that��Google’s use��was��fair.��Oracle appealed successfully. The�� that Google’s use of Java API is a non-transformative use, with transformativeness being a requirement for finding fair use, and that it has profited commercially from Android. As expected, Google was unhappy with the outcome and appealed again. ��

Finally, with the support of��s from the Solicitor General of the United States and numerous other professionals,��the Supreme Court��made a�� that is more in tune with the context of programming and the IT industry. The majority opinion held that, although API is copyrightable, Google’s use of Java API is within the bounds of fair use. It highlighted the distinction between declaring code and implementing code—the former proposes a hypothetical function that serves a particular objective, and the latter is the actual realization of that hypothesis. According to the Supreme Court, Java API is essentially a set of declaring code that resolves general task division and organization. It enables programmers to “ The very creativity that contributes to technological breakthroughs lies in implementation rather than merely declaring code. It is in Google’s interest to use Java APIs, rather than developing its own, because programmers have already invested time and effort to learn them. Google wanted to attract as many programmers as possible to develop smartphone apps on Android, thereby furthering copyright’s creativity objectives. In addition, Breyer J. ruled that Google’s use is “minimal,” about 0.4 percent of the total Java source code, and it does not diminish Java’s marketability since Android is used in different platforms (i.e., smartphones).����

While��some��are����about the chilling effect��that��the decision��may have on programming innovations,��professionals have�� it. It accords with the�� that programmers rely on to pursue innovations. It also marks an important accommodation made in copyright law to face the new challenges posed by the booming IT industry.����

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Sabrina Macklai is an IPilogue Senior Editor and a 2L JD Candidate at the University of Toronto Faculty of Law.

On July 30, the Supreme Court of Canada released their much-anticipated judgement in [91��ɫ]. The unanimous decision, written by Justice Abella, endorses several past Supreme Court judgements including and . Perhaps one of the most important copyright decisions since the 2012 ‘’ cases, 91��ɫ reflects the Supreme Court’s intention to develop Canadian copyright law in a way that maintains a balance between users’ and creators’ rights.

Background

Historically, Canadian educational institutions negotiated licence agreements with copyright collectives Access Copyright and Copibec to fulfill their copying needs within the collectives’ repertoires. In 2010, Access Copyright sought the Copyright Board’s approval for a new proposed tariff for post-secondary education institutions of a flat fee of $45 per full-time university student and $35 per full-time college student per year. This was a drastic increase from the fees stipulated in the 1994 to 2010 licence agreement between Access Copyright and post-secondary institutions. On December 23, 2010, the Copyright Board granted Access Copyright an interim tariff at the rate of $3.38 per full-time student and $0.10 per page for course packs, receiving . In anticipation of the upcoming academic session in July of 2011, 91��ɫ chose to “opt out” of Access Copyright’s licensing agreement and rely on alternative means, particularly the “educational purpose” under the , to continue reproducing copyrighted works for their students. Like with most educational and library institutions, 91��ɫ published internal “Fair Dealing Guidelines” that interpret section 29 to help 91��ɫ faculty and staff comply with the law. Access Copyright subsequently sued for copyright infringement. 91��ɫ then counterclaimed and sought a declaration that its Fair Dealing Guidelines complied with section 29 of the Act.

In 2017, ruled in favour of Access Copyright in all regards, claiming that the interim tariff is mandatory and that 91��ɫ’s Fair Dealing Guidelines and its actual practices are not fair under section 29. In 2020, the reversed the lower court’s decision on the tariff issue, finding that tariffs set by the Copyright Board are only applicable to those voluntarily under a licence with Access Copyright and therefore not mandatory. However, on the fair dealing issue, the Federal Court of Appeal found that the lower court did not make any “palpable and overriding errors” in conducting their fair dealing analysis. 

Issues at Appeal

The Supreme Court appeal considered two issues: 1) is the tariff mandatory? and 2) if the tariff is mandatory, are 91��ɫ’s Fair Dealing Guidelines “fair” such that their activities may be covered by section 29 fair dealing?

Access Copyright’s Non-Mandatory Interim Tariff

The Supreme Court upheld the Federal Court of Appeal’s reasoning on the tariffs issue, agreeing that the interim tariff is not mandatory and thus not enforceable against 91��ɫ. They affirmed that users are free to pursue alternative methods to lawfully copy works, such as acquiring transactional or site licences or relying on section 29 fair dealing. In their reasons, they drew heavily upon arguments made by Professor Ariel Katz at the University of Toronto Faculty of Law, who asserted that where a user makes an unauthorized use, the appropriate remedy is an action for infringement—one that Access Copyright lacks standing to initiate.

Considering the Ultimate User in Fair Dealing Analyses

Although the Court deemed it inappropriate to rule on fair dealing, given that this is not a copyright infringement suit, Justice Abella nonetheless provided helpful obiter on fair dealing in Canada. Namely, she clarified that the reasoning of both the Federal Court and Federal Court of Appeal on the fair dealing issue is not endorsed. Both lower courts erred in their evaluation of the purpose of the work, by only considering the institutional perspective. As Justice Abella discussed in multiple past decisions, including Alberta, the end-user perspective must also be considered when assessing the fairness of a dealing. In this case, but for the students, there would be no copying. Therefore, the judgement must consider the students’ perspective. The institutional purpose is not completely irrelevant, but it must be interpreted in light of the end-user. Here, Justice Abella found that educational institutions have no “ulterior or commercial purpose” when copying for their students’ benefit under fair dealing, even if the institutions benefit financially by saving funds. As the first discussion of the educational purpose of fair dealing since it was introduced during the , the Supreme Court clarifies that the appropriate way to assess an educational institution’s fair dealing practices is to determine whether those practices facilitate their students’ educational purposes in a fair manner, maintaining the balance between users’ and creators’ rights.

91��ɫ adds to a growing list of copyright jurisprudence by the Supreme Court, many of which were spearheaded by the . This latest decision delivers several wins to the users’ rights community, particularly through confirming that users always have the choice to rely on section 29 fair dealing when working with copyright-protected materials. Educators and librarians across the country can breathe a sigh of relief that they may continue to lawfully offer their services, many of which rely on fair dealing, to the benefit of their students and patrons.

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Sabrina Macklai is an IPilogue Senior Editor and a 2L JD Candidate at the University of Toronto Faculty of Law.

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May 21 was a historic day for copyright fanatics around the country. Not only did the Supreme Court of Canada hear the much-anticipated appeal, an important case on the nature of copyright collective licensing and educational fair dealing, but it was also the Honourable Rosalie Silberman Abella’s final hearing as a Supreme Court Justice.

During her 17 years on the highest court in Canada, Justice Abella was instrumental in advancing users’ rights in Canadian copyright law, particularly helping develop Canada’s fair dealing jurisprudence. She wrote reasons for several landmark copyright decisions, even delivering judgements in four out of the five 2012 “” cases. Some of her most notable copyright holdings include , , and .

In Alberta, Justice Abella wrote for the 5-4 majority, performing a rigorous analysis of the fair dealing test as laid out in The decision interpreted fair dealing for the purpose of private study. Justice Abella, for the majority, found that the correct way to interpret the purpose of a dealing is to consider the perspective of the end-user, in this case, students. When teachers photocopy short excerpts of works to distribute to students as part of class instruction, their dealings qualify as fair dealing for the purpose of facilitating students’ private study.

In SOCAN, Justice Abella once again took the pen to deliver the judgements of the unanimous court. Like Alberta, the case concerned the proper interpretation of fair dealing, this time for the purpose of research. Looking through the perspective of the ultimate user, music stores providing short previews of music may be considered fair dealing for the purpose of research by enabling consumers to determine what they wish to purchase. The Court emphasized that upholding users’ rights was “central to developing a robustly cultured and intellectual public domain.”

In Keatley, Justice Abella affirmed the importance of balancing creators’ rights with users’ rights, claiming that all provisions of the Copyright Act must be interpreted with this balance in mind “so that the Copyright Act continues to further the public interest.” In the decision, the Supreme Court interpreted section 12 of the Copyright Act, which deals with Crown copyright. Though they ultimately found the Crown had copyright, they clarified that Crown copyright has a narrow scope and is limited to situations where the Crown took a substantial role in the creation or dissemination of the work.��

Users’ rights are still a growing concept in Canadian copyright law. Though they were first introduced in the , through duplicating the fair dealing section 2(1)(i) of the U.K.’s , users’ rights did not gain the same consideration as creators’ rights until the early 2000s following the decision in . Here, the Supreme Court affirmed that copyright is “a balance between promoting the public interest in the encouragement and dissemination of works of the arts and intellect and obtaining a just reward for the creator.”

Justice Abella’s decisions in Alberta, SOCAN, and Keatley provide guidance on interpreting the fair dealing provisions in section 29 of the Copyright Act; they are to be given a large and liberal interpretation and should be considered not as mere exceptions but as users’ rights. According to Justice Abella, the fair dealing component of Canada’s copyright law is “,” symbolizing the importance of the users’ rights framework in balance with creators’ rights.

When Justice Abella was appointed to the SCC in 2004, section 29 did not include the purposes of education, satire, and parody. These were introduced during the to the Act and have yet to be interpreted by the Supreme Court.

One of the major issues on appeal in 91��ɫ is how to properly interpret the educational purpose of fair dealing. The copyright collective Access Copyright argues that 91��ɫ’s copying of works to create course packs is to alleviate financial burdens on the university. In contrast, 91��ɫ argues that their copying falls under fair dealing since it is to facilitate the education of their students, as the ultimate users. Given the jurisprudence, it seems likely the Supreme Court will rule in favour of 91��ɫ, at least on the fair dealing issue.

Although a decision for 91��ɫ has yet to be released, it is quite fitting that possibly the last decision Justice Abella will pen for the Supreme Court is on a field she has transformed over the past two decades. It is fair to say the Canadian copyright community, especially advocates of users’ rights, will sorely miss Justice Abella on the bench.

The post The Fairest of Them All: Justice Abella’s Legacy in Canadian Copyright Law appeared first on IPOsgoode.

Shawn��Dhue��is an��IPilogue��Writer and a 2L��JD Candidate at��Osgoode��Hall Law School.��

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On April 30, Australia's Federal Court the the country has ever seen for a copyright infringement. Australian billionaire and businessman turned politician, Clive Palmer, owes $1.5 million AUD to Universal Music Publishing Pty Ltd (“UMP”) and Songs of Universal, Inc. (“Songs”) for using an altered version of the iconic 1980s Twisted Sister song “We’re Not Gonna Take It” (WNGTI) in his 2019 federal election campaign. Palmer’s right-wing United Australia Party (UAP) slightly changed the lyrics of the hit song, under the title “Aussies Not Gonna Cop It” (ANGCI).

The factual record showed that UAP had quite a history with WNGTI. First, the Court established that Dee Snyder, lead singer and songwriter of Twisted Sister, wrote WNGTI, UMP was the licensee, and Songs owned the copyright to it. Following this brief analysis, the Court looked at the making of ANGCI. Extensive email evidence showed that David Wright, who the UAP engaged to provide production services for its 2019 federal election advertising campaign, attempted to negotiate a licence with UMP for WNGTI. After back and forth exchanges, UMP offered a 12-month license of the song for $160,000, pending Dee Snyder’s approval of the rendition. UAP declined. Email exchanges between Wright and “Terry Smith,” Palmer's alias, showed the two were worried UAP’s campaign might “leak” in the hands of Dee Snyder.

However, through reviewing additional emails and recovered audio files, the Court found that Wright and Palmer were nevertheless planning a song that used the words of WNGTI. During cross-examination, Wright admitted that he told local musicians to sing a few different variations of WNGTI. These variations with a local band eventually led to ANGCI. Wright considered “cop” to be a synonym for “take.”

On the contrary, Palmer alleged during cross-examination that he got the lyrics “We’re not gonna take it,” from the 1976 movie Network, starring Peter Finch. In multiple scenes, Finch exclaims “.” In his judgement for the Court, Katzmann J noted that this statement took “.” Palmer also said that he wrote those words down on a piece of paper at 4 a.m. one morning in September 2018, left the paper on his bedside table, and it was thrown out without his knowledge. The paper was subsequently not included in the evidence.

After UAP’s campaign featuring ANGCI went public, Twisted Sister fans tweeted at Dee Snyder, alerting him of the . On January 1, 2019, Dee Snyder responded to fans in a tweet that ‘“We're Not Gonna Take It’ is a song about EVERYONE'S right to free choice. "We've got the right to chose and there ain't no way we'll lose it!" The FIRST LINE of the first verse! ” Once the copyright allegations surfaced, UAP released a stating Dee Snyder was not the original creator of WNGTI and that the song was a “rip-off” of the famous Christmas carol “O Come All Ye Faithful.” Katzmann J rejected this defence, finding that “the copied part of WNGTI is not devoid of originality — far from it.”

Palmer’s last defence was that use of WNGTI in ANGCI fell under the fair dealing exception of parody and satire. Under section 41A of Australia’s , a fair dealing of an adaptation of work for the purpose of parody or satire is not an infringement of copyright. The respondent must satisfy the two-part test to enact such a defence: (1) there must be dealing with the work for parody or satire reasons and (2) the dealing must be fair. The Court determines “fairness” in relation to the purpose of parody or satire. Katzmann J found Palmer failed the test as ANGCI did not alter WNGTI to satirize anyone or anything. Rather, the Court ruled that UAP used ANGCI to promote UAP’s key political message.��

Overall, the Court ruled that Palmer infringed copyright by: (i) reproducing; (ii) authorizing the reproduction of; (iii) communicating to the public; and (iv) authorizing the communication to the public of WNGTI without a license to do so. In considering appropriate remedies, Katzmann J referenced Yates J in : “The plaintiff may not have suffered actual loss from the use, and the wrongdoer may not have derived actual benefit. Nevertheless, under the principle, the defendant is obliged to pay a reasonable sum for the wrongful use.” Concluding, Katzmann J ordered Palmer to refrain from using and reproducing WNGTI in any form and to turn over all copies of the reproduced work. Additionally, Palmer must pay $500,000 AUD for copyright infringement and $1,000,000 AUD in additional damages. Under section 115(4)(b) of Australia’s , the Court may grant additional damages for “the flagrancy of the infringement,” defined as “scandalous conduct, deceit and such like.” Given that Katzmann J found Palmer’s arguments to be “ludicrous,” awarding additional damages was justified.

Clive Palmer and his legal team are considering an .

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Sabrina��Macklai��is an��IPilogue��Senior Editor and a��2L JD Candidate at the University of Toronto Faculty��of Law.��

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The 2019 Canadian federal election season was ripe with . Adding to the list, the Canadian Broadcasting Corporation (CBC) against the Conservative Party of Canada mere days before the election was held. The CBC claimed that the Conservative Party infringed copyright by using, without permission, CBC’s video clips in their advertisement and tweets as part of an ‘attack ad’ against Prime Minister Justin Trudeau.

On May 13, 2021, nearly two years after the Liberal Party won a minority government, the , holding that the use of CBC footage in political campaigns constitutes “fair dealing” under s. 29 of the , and so does not infringe copyright.

In order for a use of a copyrighted work to be considered a fair dealing, the dealing must 1) be for an allowable purpose, as listed in the Act, and 2) it must be fair, considering the six factors outlined in the landmark Supreme Court of Canada decision, .

The Federal Court determined that the Conservative Party’s use of CBC footage was for the allowable purpose of “criticism,” per s. 29.1 of the Act. Though the CBC argued that the purpose of “criticism” should be limited to criticizing the form of the dealing, the court held that criticism may be directed towards the “idea set out in the work.”

By giving the fair dealing provisions a large and liberal interpretation, the court reaffirmed that their purpose is to balance the rights of copyright owners and users. Users’ pursuit of allowable purposes should not be arbitrarily restricted in the name of protecting copyright. As Justice Phelan stated, “it would be artificial to limit criticisms to the expression of how the work was produced but preclude showing the ideas or actions being challenged.”

Applied to the facts, the court found criticism embedded in the Conservative Party’s impugned ad and tweets, which aimed to criticize the “ideas” present in the CBC’s clips, particularly those of Prime Minister Trudeau’s performance in office and during the 2019 federal election’s leaders’ debate.

In finding an allowable purpose under the first step of the fair dealing analysis, the court did not consider that the criticism was being advanced by a competitor who would directly benefit from the consequences of the criticism. Rather, motive became relevant at the second step of the fair dealing analysis, when assessing the first factor (i.e., the fairness of the purpose of the dealing). Following , “some dealings, even if for an allowable purpose, may be more or less fair than others,” depending on the user’s “real purpose or motive in using the copyrighted work.”

While Justice Phelan acknowledged that the Conservative Party’s use of CBC footage was “not criticism for the sake of criticism,” he held that the dealing was nonetheless for a “legitimate political purpose.” Since political campaigns are used to secure votes to form a government, the court found the Conservative Party’s purpose engaged with the democratic process and was therefore fair.

This departs from where the Supreme Court stated that, in determining the fairness of an allowable purpose, the court must assess if there is a “demonstrably ulterior” motive at play. That is, courts are concerned by users who attempt to escape liability for copyright infringement under the guise of invoking an allowable purpose, like criticism. Such ulterior motives tend towards a finding of unfairness for the first factor of the fairness inquiry.

Despite finding the Conservative Party’s ultimate purpose was not to provide criticism but to gain votes, the court did not discuss the possibility of an ulterior motive. In fact, the Conservative Party’s politically driven motive was used as support in finding fairness. This seemingly broadens the fair dealing provision’s scope by permitting a dealing’s ultimate purpose to differ from its allowable purpose, so long as it is a political purpose.

Instead, as University of Ottawa professor Michael Geist , political advertising is protected by the criticism purpose of fair dealing since it is directly linked to the Charter’s s. 2(b) guarantee of expressive freedom, which underpins the values of political democracy, the search for truth, and self-actualization. Rather than authorizing a user’s ultimate purpose to differ from the allowable purpose where a political motive is involved, the court ought to establish a sufficient nexus between the purposes to support a finding of fairness. This can be achieved through determining the foundation of the allowable purpose, like the basis of criticism to advance political democracy.

As Ontario gears up for the , it will be interesting to see how parties use copyrighted materials in their campaigns in light of this decision. Beyond political parties, this decision highlights the need for greater guidance on how to properly interpret the fair dealing provisions, especially in determining the fairness of the purpose of the dealing.

The post A “Legitimate Political Purpose”: Federal Court Rules the Conservative Party Played “Fair” in the 2019 Federal Election appeared first on IPOsgoode.

Access Copyright is a collective society which administers certain copyrights on behalf of its member writers, visual artists, and publishers. Specifically, authors assign the “reproduction” and “making available” rights to Access Copyright, which then licenses its entire repertoire (made up of the works of all of its members) to organizations such as 91��ɫ. Organizations , which are negotiated between the collective society and the organizations (ss.68-70.1 of the Act). These tariffs encompass specific time periods, often 2-3 years, and may or may not be certified by the Copyright Board of Canada.

Judicial History of Access Copyright and 91��ɫ

The case at issue revolves around the Copyright Board’s (at para 1). 91��ɫ decided to stop paying the tariff mid-way through the term and instead issued fair dealing guidelines to its students, staff, and faculty (collectively, “employees”) under the belief that their activities were acceptable due to the decision in or under the newly amended Copyright Act. Access Copyright applied to the courts to enforce the tariff, and 91��ɫ counterclaimed that the tariff was not properly certified pursuant to . The court was asked two questions:

1. Whether the interim tariff is enforceable against 91��ɫ.
2. Whether 91��ɫ’s dealings were fair for the purposes of

At the Federal Court, Justice Phelan decided in favour of Access Copyright, declaring that and that tariffs certified by the Copyright Board were mandatory (at para 356). The panel at Federal Court of Appeals reversed in part the earlier decision, finding that the tariff was not mandatory, while dismissing 91��ɫ’s counterclaim that its Guidelines complied with the fair dealing exception.

Extended Collective Licensing in Canada

Collective societies exist to ease the administration and licensing of copyrighted works. Canada legislates via the Copyright Act how collective societies operate and collect such fees. Outside of Canada, many countries have adopted extended collective licensing (“ECL”) regimes, which further legislate how collective societies operate, both to protect society members and non-members on behalf of whom collective societies collect royalties. Depending on the jurisdiction, ECL offers collective societies additional powers, such as legal standing on infringement claims and the ability to issue compulsory licenses.

If not for collective societies, licensing materials would be piecemeal, with universities having to individually licence every textbook, article, and video which its employees wanted to read and make copies of – a very cumbersome task. With collective societies, universities pay a set rate to collectives, reporting on what has been used, and then the collectives pay the owners for their work. With ECL, collective societies could have increased leverage to act on behalf of authors in enforcing their statutory rights and righting any supposed imbalance brought by aspects of fair dealing.

Access Copyright is likely to argue this case in the SCC this year. Whatever decision results will undoubtedly have a lasting effect on our understanding of fair dealing in respect of education and on how collective societies operate.

Written by Rachael Glassman, Osgoode JD Candidate, enrolled in Professors D’Agostino and Vaver 2020/2021 IP & Technology Law Intensive Program at Osgoode Hall Law School. As part of the course requirements, students were asked to write a blog on a topic of their choice.

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