It was around this time that I realized that copyright – the law associated with films, television, and music – is only a small sliver of intellectual property law which comprises patents, trademarks, industrial design, and even plant breeder's rights, among other things. And then I started hearing rumours about how all intellectual property firms are looking for lawyers with backgrounds in engineering or sciences and it looked like my choice five years ago to study history and English had effectively ended my career aspirations before I even knew I had them.

There's a happy ending to this story though: I'm now gainfully employed in a field that I am passionate about and with a company that I believe in. There's not many people that can say that right after finishing law school and articling. So how did I get here?

Osgoode's IP Intensive Program

Osgoode's IP Intensive Program is a semester-long course where students intern at a placement for more than two months. I was placed with the Society of Composers, Authors and Music Publishers of Canada () and you can read about my experience in a .

Law school does a lot of things. It helps you think like a lawyer and identify relevant legal issues in fact scenarios. You become familiar with legal research tools like WestLaw, QuickLaw, and CanLII. And you can impress family and friends by using archaic Latin terms like caveat emptor and contra proferentem. But what's important in law school – grades – only gets you so far in the legal market. What's really important is practical experience and reputation.

After two months at SOCAN, I had practical experience in drafting litigation documents, research memoranda, and company policies. But more importantly, I received feedback from lawyers about my work and developed a reputation for being reliable, thorough, and efficient. After my internship with the IP Intensive Program ended, I returned to SOCAN as a part-time employee and worked there until I wrote the Bar exam. Without the relationships I had formed with SOCAN staff and lawyers during my internship, it is unlikely they would have taken the risk of employing a third-year law student.

The IP Intensive Program helped me develop a lasting connection with the SOCAN legal department (I continued to stay in contact with them during my articles, forwarding them my embarrassing Christmas skit performance – you'll have one too when you article), built up my legal reputation (my research paper entitled, "The Morality of Mash-ups: Moral Rights and Canada's Non-Commercial User-Generated Content Exception", was published in the Vol. 26, No. 2 July 2014), and gave me the practical experience, and confidence, I needed to succeed in the legal profession.

While I ended up articling at a mid-size firm in a completely different legal field from IP, I still applied the skills I learned from the IP Intensive on a daily basis.

Near the end of my articles, I got a call from SOCAN. They remembered my work as an intern and part-time employee and informed me that there was a legal position open that I should apply for. And the rest, as they say, is history.

Fraser Turnbull is now a lawyer working at the Society of Composers, Authors and Music Publishers of Canada (SOCAN). He interned with SOCAN as part of Osgoode’s IP Intensive Program in 2013.

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For those who do not know, SOCAN is the copyright collective that represents composers, authors and publishers and administers their performing and communication rights. SOCAN is also involved in some of the largest copyright cases in Canada. In the “Copyright Pentalogy”, the organization was a party in a whopping three out of five Supreme Court of Canada decisions. SOCAN has tested the limits of fair dealing, , and the proper interpretation of the communication right in .

The legal department at SOCAN is one of the best places to learn how to be a lawyer. The staff are welcoming and incredibly helpful, even when a certain intern needed help with straightforward tasks, like how to operate the photocopier. There were also frequent legal team social events – like celebrating staff birthdays at local restaurants, or an afternoon out at the Woodbine racetrack for a bit of team building. And on Halloween, the whole office transformed into a haunted house, complete with recreations of Harry Potter's Hogwarts, the Bates Motel, and a pumpkin patch. It's the least stressful atmosphere for a student to practically apply what they've learned in the classroom.

In an academic setting, it is easy to compartmentalize the law into discrete subjects. Each course is taught as its own private island, and that is exactly what students expect when they pick their schedules. A copyright law exam is not going to have a question about privacy law (hopefully). But that is not the way it works in practice. Two months in an in-house setting will teach you that, over and over again.

For example, one of my first tasks at SOCAN was to review the legal implications of a potential service. The question covered a variety of topics, from privacy law to trademark law, with a few dashes of consumer protection law and copyright law thrown in for good measure. Even my assigned research tasks considered the various interactions of different legal topics.

I also learned about areas of the law that I had never thought about, like why contests in Canada have a skill-testing question, why you should be petrified of sky-diving (beyond the fact that it's sky-diving), and the legal retention period for various types of documents (hint: it's generally a long time and it's not always clear).

Gaining a new perspective on copyright law was a welcome addition to my understanding of intellectual property. It is really easy to get caught up on painting copyright collectives with the same “anti-user” brush without a nuanced consideration of how the law looks from their perspective. The Copyright Act recently expanded to include three new enumerated purposes (for a total of five), on top of the other exceptions to copyright infringement like criticism and news reporting, and the public performance exemptions for religious, educational, and charitable organizations. From the perspective of a user, there can never be enough “user's rights.” From the perspective of a copyright owner, it can be difficult to determine when licences are needed.

There was one moment near the end of my internship when my supervisor recounted all the work I had done thus far. I had worked on projects for four different departments, drafted a Statement of Claim and demand letters for litigation files, provided several research memos on various legal questions, prepared materials for a conference on user-generated content, and summarized the relevant legal requirements for two statutes.

I had not realized how much I had accomplished during my short stint at SOCAN, probably because I had such a great time doing it. The free CDs helped too.��

Fraser Turnbull is a JD Candidate at Osgoode Hall Law School and was enrolled in Osgoode’s Intellectual Property Law Intensive Program.�� As part of the program requirements, students were asked to write a reflective blog on their internship experience.

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And that's exactly what happened in , 695 F.3d 946 (2012). On October 1, 2013, the U.S. Supreme Court it would hear an appeal.

After boxer Jake LaMotta retired, he collaborated with author Frank Petrella to write a book and two screenplays about his life. In 1976, the rights to the book and both screenplays were assigned “exclusively and forever, including all periods of copyright and renewals and extensions thereof” to Chartoff Winkler Productions Inc., who subsequently assigned them to Metro-Goldwyn-Mayer Inc. (“MGM”). These works allegedly formed the basis for the critically-acclaimed film Raging Bull.

In 1981, Mr. Petrella died, and his “exclusive and forever” assignment became not quite “exclusive and forever” any longer. Before the U.S. Copyright Act was amended in 1976 to extend protection for the life of the author plus fifty years (later increased ), the period of copyright protection for Mr. Petrella was a 28-year original term followed by a second 28-year renewal term. But in 1990, the U.S. Supreme Court decided in , 495 US 207 (1990), that an assignment by an author of his or her renewal rights made before the original copyright expires is valid against the world, if the author is alive at the commencement of the renewal period. If the author dies before the commencement of the renewal period, the rights revert back to the author’s heirs, notwithstanding any agreement to assign the renewal rights to a third party.

Because Mr. Petrella died before the commencement of the renewal period for his 1963 screenplay, his rights reverted back to his daughter Paula in 1991, who then had a cause of action against MGM for copyright infringement. However, Ms. Petrella did not sue MGM until 2009, eighteen years after she became aware of her right to do so.

The US district court (C.D. Cal.) viewed her delay as unreasonable and granted summary judgment for the defendants based on the equitable doctrine of laches, whatever the merits of Ms. Petrella's claims (the district court’s decision is available at of the plaintiff’s petition for a writ of certiorari). The Ninth Circuit affirmed (albeit reluctantly in a concurring judgment by Circuit Judge Fletcher).

The point is that Ms. Petrella's suit, albeit eighteen years after she became aware of it, was found in the U.S. Copyright Act. The three-year limitation period for civil actions accrues separately for each act of infringement, essentially creating a “rolling” limitation period for a series of continuing subsequent infringements. While Ms. Petrella filed her lawsuit in 2009, her claim only covered infringements that had occurred in or after 2006.

Applying the doctrine of laches to override a statutory limitation period may create uncertainty where none should exist. The three-year limitation period provides a hard-line rule for plaintiffs and defendants to rely on. Barring any consideration of the merits of a plaintiff’s claim despite her complying with the letter of the statute seems an unjustifiable boon for defendants. Courts elsewhere would agree. In the recent Canadian case of , (2012) FCA 12, Gauthier J.A. had difficulty seeing how the doctrine of laches could apply in light of a statutory limitation period, and do not recognize laches as a defence at all.

Meanwhile, in [2009] UKHL 41 (“Fisher”), the House of Lords allowed a claim of co-authorship where a plaintiff had waited for thirty-eight years before suing.�� It affirmed an award to the plaintiff of a percentage of the copyright in the disputed work. The court found that the defendants, far from being prejudiced by the delay, had financially benefited from it by not being liable for back royalties.�� Similarly, Ms. Petrella’s delay has benefited MGM because the company has enjoyed twenty-six years of profits that Ms. Petrella is statute-barred from claiming.

In contrast to Fisher, a recent decision of the Ninth Circuit Court of Appeals that claims of co-authorship are statute-barred three years after “plain and express repudiation of co-ownership [has been] communicated to the claimant.”

The U.S. Supreme Court will therefore have to decide whether plaintiffs who “sleep on their rights” allow defendants to dream easily, unaffected by long-standing copyright claims.

Fraser Turnbull is a JD Candidate at Osgoode Hall Law School and is enrolled in Osgoode’s Intellectual Property Law Intensive Program. As part of the program requirements, students were asked to write a blog on a topic of their choice.

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Bell's Perspective – Adapting to UGC��

The first speaker, Tanya Woods, is the resident copyright specialist for BCE Inc. (Bell TV, Bell Mobility, Bell Canada, etc.). Because the company is a massive distributor, intermediary, content broadcaster and creator, of the Copyright Modernization Act (the “A����”) presents a unique challenge for a business that acts both as a copyright user and copyright owner.

Woods began her presentation with a discussion of what UGC means; referring to how users draw on new technologies to express themselves and that this category of works includes blogs, social media, and potentially the news. In examining section 29.21, Woods made an interesting observation - the provision does not specify that UGC has to be digital, which implies that analog forms of UGC may also be covered by the exception.

To appropriately navigate section 29.21, Woods advises to follow two objectives: (1) respect legal obligations and (2) engage your viewers.

As an example of respecting legal obligations and engaging viewers, Woods referred to Bell's developed for the 2012 Olympic games. The app allows users to record a short video which, when watched, plays back in slow motion with the theme to Chariots of Fire as the background music. This app engaged Bell's audience and encouraged the creation of UGC, while also respecting the legal obligation to properly licence the music and clear the rights to the Chariots of Fire theme.

Woods then offered practical advice for businesses entering the UGC space, with some general advice applicable to users as well:

• Businesses and users have to be aware that for UGC to fall into the exception, it has to be non-commercial;
• Users should also be mindful of the Terms and Conditions of UGC sites, because you may lose your intellectual property rights to your material depending on where you post it; and
• For businesses actively engaging with their audience on social media like Facebook and Twitter, it's important to realize that bad UGC is inevitable (such as a post on the TSN Facebook page criticizing the decision to hire Drake as the ambassador for the Toronto Raptors).

Respecting the copyright owners have in their works and responsibly engaging in the creation and encouragement of UGC were two of the key takeaways from this presentation, both of which allow for section 29.21 to be properly navigated and adapted to.������

SOCAN's Perspective – UGC and the (De)valuation of Music

Eric Baptiste, CEO of the (“SOCAN”), spoke about how section 29.21 affects the performing rights organization's business model.

SOCAN is assigned the performing rights to musical works by artists and publishers in Canada. Through reciprocal foreign agreements with international performing rights organizations, SOCAN essentially owns the performing rights in Canada for most of the music in the world.

How their business model works is simple: SOCAN provides a blanket licence to establishments like restaurants, bars, broadcasters, and shops (among other entities) to use all the music they want. It's essentially a one-stop shop for users. The difficulty of this system is in the valuation of music licences.

SOCAN is under the Act to file proposed tariffs with the Copyright Board. Different uses of music are licenced at different rates. And within those rates there can be further fluctuations based on the size of the venue and how many days the establishment operates. The Copyright Board publishes these proposed tariffs and then hears objections from third parties before certifying an appropriate royalty. Baptiste suggests that section 29.21 will prove problematic in determining an appropriate royalty for the use of music on online services such as YouTube.

Currently, SOCAN has an “experimental” agreement with YouTube where the online service pays the same royalties as a traditional broadcaster. This agreement only lasts until the end of 2013, and does not take into consideration section 29.21 – meaning that music used in non-commercial UGC, which does not require a licence, is licenced under this agreement. What will happen after the agreement expires remains to be seen, although YouTube may pursue a lower royalty because of the UGC exception.

Baptiste closed his presentation by saying that the UGC exception is unique and that it does not exist anywhere else in the world. He also thinks the UGC exception is an unnecessary addition to the Act and that it creates uncertainty and complexity, while posing a threat to appropriate compensation for professional musicians.

Legitmix's Perspective – The “Win-Win” Model?

Omid McDonald, the CEO and Co-Founder of , wants UGC creators and original artists to be properly compensated for their work. And he's come up with a creative solution to work within the law to make it happen.

After a friend's documentary was never released because he could not afford the fees to clear the music,�� McDonald realized that something was backwards about the copyright regime. Remixes and mash-ups have become mainstream, but it is a time-consuming and expensive process to get the proper licences from the publishers and composers of multiple works. While section 29.21 streamlines the process for non-commercial UGC and exempts creators from “clearing the rights” to their works, it is still not perfect. The non-commercial UGC creators still cannot get paid unless they clear the rights, and McDonald views that to be a gap in the legislation.

Legitmix's model works by separating a remix into its constituent parts: the remix file and the sampled works. Users who want to listen to their favourite remix have to buy the remix file and the Legitmix software scans their iTunes library to see if the user owns the sampled works. If the user does not own the sampled work, then they have to buy the individual tracks from iTunes or another legal music provider. Once all the sampled tracks are available, the remix file can then play the new work.

In this model, UGC creators can be compensated because they are not technically “using” existing works. They are selling their original work (the remix file), while the actual sampling of the existing works is done in the privacy of the user's home, once legal copies of the existing works exist on the user's computer.

McDonald said that record companies love the idea because UGC creators essentially become salespeople for record companies' back catalogues.����

Concluding Thoughts

The speakers for this session demonstrated wildly different perspectives of section 29.21, from determining the appropriate way to adapt within the requirements of the provision, to lamenting the new change and the uncertainty it creates, and finally to creatively working around the section to remedy perceived shortfalls.

Many of the speakers noted that section 29.21 is the first exception of its kind in the world. It will be interesting to see if this provision delivers on its promise to clarify the legality of UGC and be adopted by other countries, or whether the restrictive requirements and the uncertainty the section allegedly creates will doom it to the margins.

Fraser Turnbull is is a JD candidate at Osgoode Hall Law School and is currently enrolled in Osgoode’s Intellectual Property Law and Technology Intensive Program.������Fraser is��interning at SOCAN as part of the IP��Intensive Program.����

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