The quartet of Jordan Fine, Alicja Puchta, Colin Lyon, and Adrienne Meyers are pleased to share their experience at the moot.

The Problem: A Dimpled Bottle and Sparkling Wine

Imagine: for 11 years, I have owned a valid patent monopoly on a glass bottle. The bottle has dimples lining its interior which enhance fizziness of carbonated drinks held within; but, I claimed the bottle specifically for enhancing sparkling wines. To what extent am I tied to that claim? In other words, can competitors fill my bottles with non-wine drinks (like sparkling apple cider, or non-alcoholic elderflower sodas) to avoid infringement?

Imagine too: I am not just an inventor but also a vineyard. So, for all 11 years, I have only sold a very affordable (and very profitable) high-alcohol wine in my bottle. It seems the local youths are getting quite drunk, quite fast from the combination of high alcohol and enhanced fizziness. Can my bottle patent be invalidated on grounds that it violates public policy or morality?

Finally, imagine: my wine belongs to a class of products known as “Erewine”: a double fermented sparkling white wine made from locally grown grapes. Does my competitor commit extended passing off by calling their non-alcoholic elderflower soda Erewine too?

The for the 2017 annual was packed with IP issues. It landed this year on the three major themes above: claim construction, invalidity for violating public policy or morality, and extended passing off.

The problem was drafted craftily by —Chair of the Organising Committee and co-ordinator for the moot—and it left certain key facts ambiguous (for example, the patent claim is significantly excerpted). Counsel for either side had ample wiggle room to devise and frame unique and creative arguments.

The Competition

After three months of careful legal research, drafting, reviewing, and editing two facta—one each for the Appellant and the Respondent—Osgoode submitted them to Oxford. A month later Osgoode was delighted to discover we were invited to the oral rounds, as our facta ranked among the top 24 of the nearly 60 teams that submitted.

Mooting demands outstanding advocacy. Accordingly, preparations and rehearsals escalated quickly. We had two months to sharpen our oral arguments before intellectual property practitioners and judges, and reach a sufficient level to compete with our adversaries.

Because of the competition’s international nature, it was essential that we could concisely answer complicated questions, the answers to which could span countless legal systems and common law principles. Comprehension, memorization, and delivery were crucial. Studying and practicing became a daily ritual. Finding any opportunity, we rehearsed in the shower to a panel of rubber ducks, practiced in public while walking our dogs, and presented submissions to our patient and supportive significant others and parents.

As we improved, we were given some exceptional opportunities. We argued weekly before panels of practitioners at and , including two of our coaches and . We were thrilled to argue before former Supreme Court Justice, the . We made trips to the Federal Court, before the , and even to the Supreme Court of Canada to argue before . The utter highlight of our legal education was arguing before Justice Abella from a podium frequented in landmark decisions by the best and brightest legal minds in Canada.

(L-R: Colin Lyon, Madam Justice Rosalie Silberman Abella, Aviv Gaon, Jordan Fine)

(L-R: Jordan Fine, Jennifer Davidson, Alicja Puchta, The Honourable Roger T. Hughes, Colin Lyon)

Preliminary Rounds (Thursday March 16th – Saturday March 17th)

After a scrumptious traditional English breakfast in Pembroke College’s exquisite dining hall we carted along ancient cobbled streets several suitcases packed with our heavy bundles of authorities to Oxford’s law faculty. Shortly following an introduction by Prof. Hudson, the competition began. Over two days we faced teams from four universities, before panels comprised of two or three judges.

On day one, we first confronted strong advocacy from Tsinghua (Beijing) before Hilary Pearson, PLC, and Professor Brian Havel (University of Oxford). We then met another tough foe in Monash (Melbourne), before Prof. Hudson (King’s College London), and Mitchell Beebe (Herbert Smith Freehills LLP).

On day two, we opened as appellants against the formidable champions, Bucerius (Hamburg), before Jonathan Ball (Norton Rose Fulbright), and Karen Fong (Collyer Bristow LLP). We ended the preliminary round against the other finalists and hometown rivals, Toronto, before Ian Starr (D Young & Co LLP), Jen Le Miere, (Kymab Ltd), and Marta Iljadica, (University of Aberdeen).

Despite strong performances in all four rounds—at least according to our coaches, Aviv Gaon (Osgoode Hall Law School PhD Candidate) and Jennifer Davidson (Deeth Williams Wall LLP)—we finished the preliminary rounds modestly with only one win and three losses. At dinner on the eve of the quarter-finals, we were surprised to learn we were among the top eight teams; little did we know at that time our scores placed us as the top seed entering the playoffs!

Playoffs (Saturday March 18th)

We once again faced Bucerius—as respondents this time per moot rules—in the quarter-finals, before a panel of three judges including Geoffrey Pritchard, (Three New Square) and once again Marta Iljadica. Facing strong advocacy from both sides [the author comments as impartial sideline observer acting exclusively for the appellants] the panel had a very tough decision to make. Ultimately, Bucerius was victorious.

(Of course, not all was lost for team Osgoode; albeit disappointed by the loss, we were granted an extra few hours to tour Oxford’s local scenery and ancient pubs.)

In the final round, Bucerius faced respondents from the University of Toronto. The finalists argued in front of a panel of three esteemed judges in the Honourable Mr Justice Birss, Her Honour Judge Melissa Clarke, and the Right Honourable Lord Justice Floyd. The hot bench challenged the competitors with posers, but also met them frequently with humour and wit. It appeared close at the round’s end, and Bucerius took the win.

The Gala

The gala took place shortly after the finals, and once again in the charming Pembroke dining hall. During a three-course meal, the award winners were announced (see the complete list , along with pictures from the finals and gala ). As noted, Osgoode was surprised and delighted to receive the award for highest ranked team after the preliminary rounds.

The Oxford Moot was an utterly spectacular experience. We all agreed that the work we put into our written and oral arguments exceeded any other academic pursuits before. We are certainly all stronger legal minds and advocates as a result. Make no mistake, we had fun too. We owe special thanks to Professor David Vaver for his support and guidance; to Justices Abella, Rothstein, and Hughes for taking the time to hear us argue the morality of dimpled bottle patents; and our coaches who were with us week after week: Jennifer, Aviv, Stephen Selznick and Stephen Henderson from Cassels Brock. We could not have succeeded without you. You each made such astoundingly significant contributions to our legal education and we hope in turn we have made you proud of our accomplishments.

(L-R: Aviv Gaon, Alicja Puchta, Jordan Fine, Colin Lyon, Jennifer Davidson, Prof. David Vaver)

Jordan Fine is Senior Editor of the IPilogue and Intellectual Property Journal and a JD candidate at Osgoode Hall Law School.�� He was happy to contribute this blog on behalf of his teammates, Colin Lyon, Alicja Puchta and Adrienne Meyers.

The post Protecting Fizziness: Osgoode at the 15th Annual Oxford Intellectual Property Moot appeared first on IPOsgoode.

I love . I subscribe to the adage “good artists borrow; great artists steal”. So, I’m personally invested in the intellectual property (IP) infringement cases which concern the intangible thievery the law welcomes—innocent, lawful, and genius—and that it seeks to discourage—deliberate, unlawful, and mediocre. To me, infringement cases implicitly describe our culture’s ideas about talented artists, strong corporate branding, and inventiveness.

But infringement is not just about comparing two IP creations’ differences and similarities. IP law—copyright especially—is equally concerned with uses of protected creations that can encroach on owners’ scope of rights. And as we dive headfirst into cyberspace, we develop new ways to consume, share, and create, in turn raising novel use-based infringement issues. Interning at SOCAN—a frequent party in the most of Canadian —provided the ideal placement to fuel my passion.

SOCAN is a Canadian copyright collective management organization (CMO). They represent the Canadian performing rights of their membership—millions of music creators and publishers—and collect royalties and enforce copyright on their behalf. The CMO web can seem complex, but at its simplest: A, a business, wants to use B, C, & D’s music. SOCAN represents B-D’s music performing rights. So A gets a SOCAN license, pays the relevant fees. Then, SOCAN distributes fairly that which they collect to B-D.

Simple, right? Not so fast.

First, complications arise generally for CMOs as a result of copyright’s fragmentation. One song may have two potential groups of ownership: those owning the “musical work”, and those owning its “sound recording” and/or its “performer’s performance”. Each of these owners is also granted a bundle of rights, including reproduction and public performance rights, for works they own.

More complexity abounds as each bundle is broken down by use. This occurs as each new is certified, and includes uses like public performance by live music, background music, or karaoke.

The fragmentation complexity becomes manifest when time comes to distribute millions of works for millions of uses at business across Canada. Oh, did I mention that many works have more than one author, many authors have licensed some or all of their rights, and those rights may be held by a combination of different parties living in different territories across Canada?

If this was not enough to fend with, many businesses do not want to be licensed and remunerate artists for their music use, and they opt not to. Also, some businesses argue that they should not have to pay license fees. Typical arguments posit: a use constitutes fair dealing; a use was already paid under a different tariff (for a different use); or, no current certified tariff even contemplates that particular use (as a hypothetical example, do any tariffs cover thirty-second ringtones programmed to play when an intergalactic spaceship’s )

I expected I would spend most of my time researching such novel questions of music use or working in litigation files. And, I did engage with some of the former and quite a bit of the latter, giving me ample opportunity to hone my legal research and drafting skills. But I also had the chance to investigate and advise on an overwhelmingly broad scope of in-house legal matters: privacy, data retention, and anti-spam law; contract drafting and policy review; competition and American bankruptcy law; and for one glorious brief afternoon, the growing and fascinating field of “bouncy castle law”.

I was constantly impressed by both SOCAN’s exceptional workplace environment (featuring frequent lunchtime music performance sessions by SOCAN-member artists like Dean Brody and Kevin Parent), and its emphasis on building positive and collaborative relationships with its members and licensees alike.

I want to thank my supervisors and the entire legal department at SOCAN for the best ten weeks of my law school experience. I doubt I could have been placed among a more welcoming, helpful, supportive, and patient team. I leave significantly more confident in my practical legal knowhow than when I arrived, and I owe that to SOCAN and the IP intensive program.

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

The post IP Intensive: From Tariffs to Bouncy Castles—A Semester at SOCAN appeared first on IPOsgoode.

It Takes Two

As my discussed, the American test for copyright infringement is not markedly different from our Canadian one. A plaintiff must prove: (1) they own the copyright they seek to enforce; and, (2) infringement—that the defendant copied protected elements of the plaintiff's work. Usually in such musical infringement cases which lack direct evidence of verbatim copying (see at 481), proof of infringement involves evidence that:

• the defendant had access to the plaintiff’s work; and
• the impugned work copied a “substantial part” of the plaintiff’s work.

Together, these two lawsuits are a case study in differentiating the appearance of strong and weak music infringement claims.

Amazing v Photograph

Forget the ad hominem , trying their success with another Gaye hit against another popular artist. The thorough infringement complaint against Sheeran’s appears to establish a prima facie case, detailing considerable evidence of substantial similarity (see ). Also, its claim of access does not rest on sheer public availability, but emphasizes the wide dissemination of in the United Kingdom. Accordingly, it may be harder to establish an independent creation defense for UK residents Sheeran and co-writer Johnny McDaid.

However, the complaint is already facing criticism for being overcomplicated, in the form of from two of the eleven named-defendants, along with :

"Defying the most fundamental pleading requirement of providing short, concise and plain statements, the First Amended Complaint consists of 44 sprawling pages of prolix, repetitive, argumentative and scandalous allegations, made mostly on 'information and belief […] [i]t makes sweeping, generalized allegations — in 156 paragraphs, some of which go on for pages and contain upwards of 25 or 30 different sentences — against eleven distinct Defendants."

Trying to dismiss the claim on grounds that the pleadings fail to meet of the Federal Rules of Civil Procedure may be prudent. The songs’ choruses may be as “strikingly similar” as the claim advocates, sharing a nearly identical (albeit common) I-V-VI-IV chord progression and 64 percent of the melody’s rhythm and pitch (see [96] & [104]). Then again, the longwinded claim includes comparisons of the similar order of their verse-bridge-chorus pop structures (see [91]) and the percentage of time the respective choruses comprise ([see 93]). These comparisons are as trite as comparing two paintings on the basis that both used a canvas. “Overcomplicated” is not a far-fetched description.

Let’s Get it On v Thinking Out Loud

In contrast, the complaint that Sheeran’s substantially infringes —claiming that it copies harmonic progressions and melodic and rhythmic elements (see ()—looks unsupported.

Nearly all music contains harmony, melody, and rhythm; As important a question in infringement as whether copying occurred—which the plaintiffs claim—is, if so, what was copied and how much. On a cursory listen, it indeed sounds like Sheeran’s song has utilized a similar set of chord changes, but that is all. Without more evidence, the substantial similarity claim seems too scant for a prima facie case. As emphasized in my prior infringement pieces, chord progressions alone are as non-protectable in music as colour palettes in painting. There should either be either an overwhelming quantity of unique chordal progression copying or there must be combination of further elements like melody and rhythm to comprise substantial similarity (see at 848). Otherwise, we risk creating an absurd environment where entire genres of music cease on inception, countering a to .

Meanwhile, the evidence supporting access ([38]) is problematic for the pop music realm, since access to forty-year-old classics is as pervasive as the practice of borrowing from them. An inference drawn by combining a classic song’s prevalence with low-threshold substantial similarity would create a standard under which most pop music would be infringing. This is not to say that modern hits are free to infringe old classics. But if infringement claimants cannot prove direct copying, the similarity between the two songs should be substantial enough to leave inspiration-driven homages safe.

Is That Enough?

Though jury trials can make music infringement results unpredictable, popular speculation on the “Blurred Lines” decision suggests the jurors were swayed by visual evidence of sheet music (proving similarity) and the defendants Thicke and Pharrell’s own admission they used “Got to Give it Up” as inspiration (proving access). So despite criticism that, even with proof of copying, the finding of similarity in that case was faulty and could lead to a , a jury may respond favourably to the strong visual evidence in the “A���������Բ�” claim. Lacking in such , the “Let’s Get it On” claim appears less persuasive. Time will tell whether Sheeran walks or settles away from either.

(Merely semi-related but interesting: a third against Sheeran and Bruno Mars by “democratic presidential nominee” Christin Griskie was in 2015.)

Jordan Fine is Senior Editor of the IPilogue and Intellectual Property Journal and a JD candidate at Osgoode Hall Law School. Jordan��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.

The post Infringement City Blues (Make Ed Sheeran Wanna Holler) appeared first on IPOsgoode.

This summer, an American jury found that “” [hereafter Stairway] rockers Led Zeppelin did not infringe the song “” [hereafter Taurus], performed by the band Spirit. The plaintiff, Randy Wolfe—or rather, a trustee for the trust which owns the late Wolfe’s copyright—was Spirit’s songwriter, guitarist and vocalist, and the copyright owner of the musical work. Wolfe that Stairway songwriters Robert Plant and Jimmy Page attended a Spirit concert, heard his 1967 composition Taurus, then stole the descending chord progression, arpeggio sequence, and harpsichord melody, using it as their 1971 classic ballad’s introduction.^[1]

—conducted and concluded by jury like the “” — . And, in the wake of the ruling, it was difficult to forecast this case’s outcome. On June 23, however, the jury needed less than a day’s deliberation to deliver a reasonable judgment: scant evidence of copying and little substantial similarity between the songs meant no infringement.

It was reported that Wolfe’s attorney he “lost on a ‘technicality’” and plans to appeal. The technicality on which he lost, , was the substantial similarity comparison. It is a woeful misunderstanding of the significance of substantiality in non-literal copyright infringement to consider it a “mere technicality”.

Verse: Canadian copyright infringement

Applying US or Canadian law should lead to the same result in this case. In Canada, of the Copyright Act [the Act] grants a copyright owner the sole right to reproduce the work or a substantial part of that work. And, section 27(1) of the Act calls it an infringement when anyone, without the owner’s consent, does what the owner has the right to do with that work. When exact copies are not involved, infringement claims typically refer to substantial part reproduction. So, substantial similarity comparisons arise when two works which are dissimilar—like Stairway and Taurus—and courts must compare them to see if the impugned work reproduced a substantial part of the plaintiff’s work.

Therefore, to succeed in this type of infringement claim, the plaintiff (Wolfe’s estate) must prove two elements on a balance of probabilities:

1. the work was copied; and
2. sufficient objective similarity (the copied portion represents a substantial part of the plaintiff’s work).^[2]

Whether a substantial part was taken is crucial to a finding of infringement. If it was not, the Act is not engaged,^[3] and whether the defendant (Led Zeppelin) copied the plaintiff is irrelevant.

can and does result in legitimate new copyrightable works. Also, because ideas are not copyrightable, using tools available to all authors cannot alone make infringement: creators can copy a colour palette from a painting; a series of rhyming words from a poem; a chord progression from a song.^[4] Taking a particle of a work does not infringe.^[5] So, while some cases unfortunately settle on this point, chord progression borrowing in pop music should not, typically, lead to infringement findings. If they did in other musical genres, many blues and jazz compositions would cease to be protectable, as they are genres built on borrowed chord progressions. Rock music, too, is not immune to , but unless the borrowed progression represents a substantial expression of the first work, it would not be infringement. might have benefited from this point before settling with Tom Petty on this count, since the borrowed element in “” is merely part of Petty’s verse, not the chorus (as it is used in Smith’s “”).

So, even if Led Zeppelin were proved to have directly copied the work—a claim which was “strenuously disputed”^[6] though likely conceded when Page and Plant admitted having access to Spirit’s music—Stairway’s use of similar (not identical) arpeggios and one phrase’s chord progression would still have been insufficiently similar to any protected expression in Taurus. This point bears emphasizing because lay listeners are sometimes of infringement upon hearing similar musical phrases, even though most innocent and deliberate is allowed.

A problem that arises in courts is that the line between idea and expression is rarely clear and, particularly for non-literal works, rather hard to quantify. So, courts must embark on a determination of fact to compare and establish if a substantial part of the plaintiff’s work was reproduced in the impugned work. A deviation in the Canadian approach to a substantial similarity comparison presents a unique argument in this case which lacks in discussion of the US decision (though would still lead to non-infringement finding).

Interlude: Canada’s holistic test presents a stronger case for non-infringement

The Supreme Court of Canada (SCC) recently established a new test for comparing two works in a substantial similarity analysis.^[7] The two works are compared cumulatively to see if the defendant unduly interfered with the plaintiff’s rights.^[8] The holistic analysis is new, but it crystallized prior Canadian jurisprudence and does not represent a major departure from prior Canadian copyright cases, save for in one key area: the viewpoint from which the two works should be compared.^[9]

Robinson c. Films Cinar inc [Cinar] shifted the comparative perspective from the traditional “layperson in the intended audience” to that of a person with a more knowledgeable viewpoint,^[10] depending on the nature of the work.^[11] The Cinar decision stated: [1] it is useful to compare the two works from the layperson’s view; but [2] the two works should be viewed from the person who can assess all the patent and latent aspects of a work because their senses and knowledge fully allow it.

This perspective deviates from the American one. There, after an extrinsic stage which asks first which elements are objectively similar,^[12] the intrinsic stage just asks whether a typical lay observer would recognize the accused work as having been copied from the original.^[13] Some courts do refer to the “intended audience” of the work,^[14] a consideration infused into the Canadian comparison, but not all.

Chorus: Comparing the two works from the correct perspective should find no substantial similarity

A key argument to temper any similarity in this case found from the lay perspective is found in �侱�Բ���’s reasons beginning at : “Stairway”, the impugned work, is the more renowned work. Since this suit is based on 45-year-old compositions, any layperson in Spirit’s intended audience would recognize that arpeggio sequence as the introduction to Zeppelin’s rock classic, and more importantly, they would imbue it with significance (as the plaintiff’s expert did, though incorrectly to Wolfe’s composition).^[15] It should be conceded that the impugned passage’s recognizability is not a result of its own inherent substantiality, nor of Spirit’s particular expression of it.

So, the question for the trier of fact, who must take the viewpoint of a person who can assess all patent and latent aspects, is whether Taurus’ A-minor descending sequence as described (the only protectable similar element found by the court in the extrinsic test)^[16] would have been recognizable without thirty years of radio airplay and popular culture references. The trier must pretend they live in a world where Stairway never existed, and ask then if the borrowed element could comprise a substantial part of Taurus.

Bridge: the works being compared are musical compositions, not sound recordings

Note, however, that what the court compared was not two sound recordings (since the plaintiff does not own that copyright).^[17] It had to compare Stairway to the musical composition, Taurus, as written (in musical notation). And while it is permissible for the court to consider Stairway’s sound recording (in Cinar, the court compared a realized animated television show to incomplete, unpublished materials), the comparison remained limited to Taurus’ transcription, and not its recording, which Wolfe has no right to protect.^[18]

Yet, there is some Canadian case law which would militate against Zeppelin, if a similar case were to occur here. A 1991 decision found infringement on the basis that the first eight measures of the two songs had a “striking resemblance” emphasizing the qualitative importance of the first measures of the refrain “which are the ‘hook’ that the ear retains for the purpose of identifying a piece”.^[19] This analysis favours Spirit, but only if one presumes that the opening progression of Taurus is the “hook” of that song. Again, hindsight (or hind-hearing) saturates the allegedly copied��sequence with familiarity, but without ���ٲ������ɲ���’s fame, would it be so for Taurus?

Four arpeggios alone, non-identically copied, is a weak basis for an infringement claim. Inclusion of a matching melody line, similar rhythmic accompaniment, or other musical elements and Stairway could create a threshold case of substantial similarity. Wolfe's expert attested that �ղ��ܰ��ܲ�’ harpsichord melody resembled Plant’s vocal line in Stairway, albeit the court rejected its inclusion without giving reasons for doing so.^[20]

One might surmise that comparing ���ٲ������ɲ���’s prominent vocal melody—a complex performance of lyrical content infused with a performer’s distinct��vocal timbre—to a written lifeless harpsichord line (albeit perhaps with some direction for dynamics and articulation) was beyond the scope of the plaintiff’s protection.^[21] Because the protected work is a musical composition and not a sound recording, a trier of fact should and did have difficulty establishing a lone dissimilar arpeggio sequence as comprising a substantial part of a composition. That difficulty is amplified when the impugned work is not to be compared to performance and production elements in the protected work.

Outro

Perhaps a Canadian court would find another legal peg in Cinar to rest a non-infringement finding on: in paragraph [40] the unanimous court wrote that “If the differences are so great that the work, viewed as a whole, is not an imitation but rather a new and original work, then there is no infringement.” Comparing Taurus—an airy two-and-a-half-minute baroque-style instrumental piece—to Stairway—an eight-minute hard rock ballad recording featuring several iconic guitar solos, lyrics, vocal melodies, drum riffs, and other protectable expression galore—should demonstrate that the latter is a new and original work. It should especially do so because, in 2016, it would be unfair to reward Taurus with a substantial part finding as a result of ���ٲ������ɲ���’s fame, and it would build a mechanism for less successful litigants to sue more successful artists for original works which legitimately employ common chords, melodies and rhythms: tools otherwise free for any composer to make music, but slowly locked away in spite of the Act’s purpose to encourage the creation and dissemination of new works.

Jordan Fine is Senior Editor of the IPilogue and Intellectual Property Journal and a JD candidate at Osgoode Hall Law School

^[1] Skidmore v. Led Zeppelin, No. CV153462RGKAGRX, 2016 WL 1442461, (C.D. Cal. Apr. 8, 2016) [Skidmore].

^[2] , RSC 1985, c C-42, ss 3(1), 14.1, 28.2 [C Act]; John McKeown, Fox on Canadian Law of Copyright and Industrial Designs, 4th ed, vol 1 (Toronto: Carswell, 2012) (online version updated in 2014) at 21:2 [Fox on Copyright]; Francis Day & Hunter v. Bron, [1963] 2 All ER 16 at 27 (CA) [Francis Day].

^[3]��C Act, Ibid, s 3(1).

^[4] As David Vaver wrote in Copyright Law (Toronto: Irwin Law, 2000): “[a]nyone was (and is) free to paint funny-looking people holding guitars: what they cannot do is imitate Picasso’s expression of these subjects.”

^[5] , 2013 SCC 73, 2013 CarswellQue 12345 [Cinar] at para [143].

^[6] Skidmore v. Led Zeppelin, No. 2:15-cv-03462 RGK (AGRx), 2016 WL 1470076 (C.D.Cal. Apr. 4, 2016) (Trial Motion, Memorandum and Affidavit).

^[7]Cinar, supra note 5 at [25].

^[8] Ibid, at paras [35] & [143].

^[9] Ibid, at paras [50]-[51].

^[10] Ibid, at [51].

^[11] Ibid at [51]-[55].

^[12] , 919 F.2d 1353, 1356–57 (9th Cir. 1990).

^[13] , 154 F.2d 464, 467 (2d Cir. 1946).

^[14] ., 905 F.2d 731, 733–36 (4th Cir. 1990).

^[15] Skidmore, supra note 1 at *4.

^[16] Ibid at *16.

^[17] Skidmore v. Led Zeppelin, No. 2:15-CV-03462-RGK-AGR, 2016 WL 2771246 (C.D.Cal.) (Trial Motion, Memorandum and Affidavit); Ibid.

^[18] Ibid.

^[19] (1991), 38 C.P.R. (3d) 4.

^[20] Skidmore, supra note 1 at *16.

^[21] Ibid.

The post Stairway to Infringement appeared first on IPOsgoode.

Ann Phibian��v The Canadian Frog Association

The hypothetical scenario devised by the moot’s sponsor, , raised several novel copyright issues. The plaintiff, Phibian, licensed 50 Shades of Green��to the defendant, the Canadian Frog Association (“CFA”) for promotional use. Phibian revoked her licence upon her discovery that one of CFA’s conservation programs, aptly titled "Switch and Bait", resulted in the death of frogs belonging to an over-populated species.

After complying with Phibian’s request to nullify the licence, the CFA contracted Greenback to replace Phibian's work. Using a Photoshop-like editing program,��and One Giant Leap as a mutual source, Greenback generated a suspiciously similar logo for the CFA. Outraged by the��similarity between her work and Greenbacks, Phibian sued for copyright and moral right infringement.

Among many novel copyright questions raised, the primary issues concerned: [1] the correct current approach to substantial similarity analyses of two works which borrow heavily from the public domain; [2] the admissibility of expert testimony and the role it should play in comparing two works; [3] the correct current approach to prove a work was copied; and, regarding moral rights, [4] the appropriate test for evaluating the potential prejudice to an author’s honour or reputation and how to apply that test.

The problem was drafted craftily and left certain key facts ambiguous (for example, there is no image of either leaping frog design found in the problem), so counsel for either side had ample wiggle room to devise and frame unique and creative arguments.

The Competition

After nearly five months’ of preparation, the Osgoode Hall Law School team attended the Moot on Friday February 19 and 20 at the Federal Court of Canada, along with eight other teams from law schools across Canada. The team was comprised of Alicja Puchta, Keton Motta-Freeman (Appellants), Jordan Fine, Ran He (Respondents), and Asad Akhtar (Researcher, both sides).

The competition opened midday Friday with a keynote speech delivered over lunch by��the Honourable Mr.��, former Justice of the Supreme Court of Canada (and current Distinguished Visiting Professor at Osgoode). His lecture, titled “The Value of Copyright: Applying the Principles of Technological Neutrality and Balance”, focused on the recent Supreme Court decision [SODRAC], Justice Rothstein’s final written decision before his retirement.

The SODRAC decision is contentious. The majority’s endorsement of technological neutrality in copyright has been argued as outdated and anti-technology. It was recently the subject of a recent , organized by Osgoode and the University of Toronto, where three panels dissected and debated the decision's potential impact on the , , , and all other��industries, institutions and organizations who create, use, license, and manage copyright works.

Justice Rothstein discussed the reasons behind his majority opinion and the dissenting opinions by Justice Abella and Justice Karakatsanis. In particular, he focused on legislative language, statutory interpretation and the intentions of Parliament (or lack thereof) which supported his decision that the Copyright Act should not be interpreted or applied to favour or discriminate against any particular form of technology. The team discussed the lecture and SODRAC during our breaks, and while some of us were unsatisfied by the result of the decision, we were all persuaded by Justice Rothstein’s sound reasoning. His presence on the bench and contributions to matters of Canadian IP law will be missed, but we are proud and thrilled to have him join the Osgoode community.

Qualifying Rounds

The preliminary rounds shortly followed the luncheon at the Federal Court building in downtown Toronto.��Each team was required to participate in three rounds. At this stage, the panels were composed of three members drawn from the judiciary and IP bar.

The Appellants kicked off the competition for Team Osgoode with submissions to Justice Victoria Chiappetta (Ontario Superior Court of Justice), Mark Biernacki (Smart & Biggar LLP) and Mario Bouchard (Former General Counsel of the Copyright Board of Canada). Despite a persistent barrage of hard hitting questions, the Appellants stood strong.��Their second submission on Friday was argued in front of the panel consisting of Justice Allan Diner (Federal Court), Allyson Nowak (Norton Rose Fulbright LLP), and Trent Horne (Bennett Jones LLP). The final submissions for the Appellant Team were made on Saturday morning to Mario Bouchard, Alexandra Peterson (Torys LLP), and Michael Charles (Bereskin & Parr LLP). Having received strong praises from the Moot Bench, Keton and Alicja’s strong performances in all three rounds placed them first among Appellant teams at the close of the preliminary rounds.

The Respondent Team began their rounds on Friday with submissions to Justice Paul Perell (Ontario Superior Court of Justice), David Aitken (Aitken Klee LLP), and Sana Halwani (Gilbert’s LLP). The Respondents argued two rounds on Saturday Morning: the first was argued to a panel consisting of Justice James O’Reilly (Federal Court), Heather Watts (Deeth Williams Wall LLP), and Brian Gray (Norton Rose Fulbright LLP); the latter to Jek-Hui Sim (Chairperson, Patent Appeal Board), Stephen Selznick (Cassels Brock LLP), and Essien Udokang (Baker & McKenzie LLP). Despite their vigorous delivery of oral arguments, Jordan and Ran finished in a tight fourth place among the fierce competition of Respondent teams, and just shy of making the playoff rounds.

Semi-Final Round

The Osgoode Appellants moved on to the semi-finals, where they faced the University of Ottawa (last year’s defending champions). Their��panel consisted of three judges: and Sharpe from the Ontario Court of Appeal, and Justice Gauthier from the Federal Court of Appeal. The round began with early rapid-fire questions from the judges, who peppered all four mooters throughout their submissions. With regards to the copyright issues, the judges were particularly interested in specific points of law, and whether, on the facts of the case, copyright infringement had truly been made out. The moral rights discussion was far more policy-infused: the judges asked questions at length about the appropriate test for demonstrating prejudice to an artist’s reputation. Everyone held their ground admirably, with both teams offering each other their heartfelt congratulations. The Osgoode team was ecstatic to see Justice Gauthier attend the final round to show her support (and even help offer a few last minute tips!) The team was also lucky enough to speak at length with Justice Brown later that evening at dinner, which was certainly one of the day’s highlights.

The Finals

The Osgoode Appellants made the finals and faced respondents from the University of Toronto. The two teams argued in front of a panel of five judges: Justice��Suzanne Côté��and��Justice��Rothstein��of the Supreme Court of Canada, Justice��David Stratas��of the Federal Court of Appeal, Justice��Kathryn Feldman��of the Ontario Court of Appeal, and Justice��Roger Hughes��of the Federal Court.��The judges asked tough questions, forced counsel to jump back and forth quickly between their submissions, and had them recall specific details from case law and decisions of the��fictional��lower courts. Neither of the teams crumbled under the pressure and the competition appeared close when the round closed.

The Gala

At the gala that evening, during a three-course meal at the stately University Club, the winners were announced. The respondents from the University of Toronto (Stefan Case��and��Victoria Hale)��took home first place and best respondent's factum award, and the appellants from Osgoode (Alicja Puchta��and��Keton Motta Freeman) took home second place and best appellant's factum award.��Stefan Case from the University of Toronto won best oral advocate and best mooter in a non-graduating year. Members of the awards committee described at length how impressed they were by��all��mooters that day.

The Fox Moot was an incredible experience. A lot of work went into our written and oral arguments, and we would all agree that in addition to improving our legal skills and understanding of IP legal principles, we had a lot of fun along the way. A special thanks is owed to our coaches from Cassels Brock & Blackwell LLP: Steven Kennedy, Eric Mayzel and Peter Henein. Our success is a result of their tutelage and patient willingness to endure frog puns.

The post Osgoode Wins Best Factum, Takes 2nd Place at the 2016 Fox IP Moot appeared first on IPOsgoode.

After two exciting and lively debates on the principle of technological neutrality (see Sebastian Beck-Watt’s coverage ) and reproduction rights (see Paul Blizzard’s coverage ), IP Osgoode’s Unpack��SODRAC symposium turned to a new panel to ‘unpack’ the paragraphs of [SODRAC] concerning the mandatory (or not) nature of tariffs set by the Copyright Board.

The fresh panel was asked to tackle the issue of whether the majority decision of SODRAC dispelled the notion—coined by Ariel Katz as the “”—that once the Copyright Board approves a tariff, any unauthorized use of a work triggers legal obligations to pay the royalties specified in the tariff and comply with the terms and conditions. The majority judgment’s alleged ‘debunking’ is found in paragraphs [101]-[13]. At paragraph [107] Justice Rothstein (for the majority) wrote: “In the absence of clear authority that this is Parliament’s intent, the burdens of a license should not be imposed on a user who does not consent to be bound by its terms” and, at [112] he concluded “that the statutory licensing scheme does not contemplate that licences fixed by the Board pursuant to [of the Copyright Act (the “Act”)] should have a mandatory binding effect against users [emphasis added].”

This issue was posed to the panel—comprised of Katz ( Intellectual Property Professor), Mario Bouchard (former General Counsel, ), Adriane Porcin ( Copyright Professor), Bobby Glushko (Head of the at University of Toronto), and Howard Knopf (Copyright Lawyer and )—in the form of the following questions: what are the potential implications for collective management organizations (CMOs), copyright users, and the copyright board?; and, more specifically (a major point of contention) does the reasoning of paragraphs [112]-[113] extend to other tariffs approved by the Copyright Board, and if so, does this “debunk” the so-called “mandatory tariff” theory?

Ariel Katz – The spectre is dismissed

Katz promptly asserted that Copyright Board issued tariffs are not mandatory. He focused on the language of of the Act, stating that even though a literal reading of s 68.2(1) appears to grant CMOs a right to collect royalties, it does not grant such a right. The provision reads:

68.2 (1) Without prejudice to any other remedies available to it, a collective society may, for the period specified in its approved tariff, collect the royalties specified in the tariff and, in default of their payment, recover them in a court of competent jurisdiction.

Katz examined the key phrase “default of their payment”, and reasoned that a collective may only collect royalties if the user owes a payment. Logically, Katz argued, if the user does not owe any payment they cannot be in default. As a result, a CMO’s right to collect only extends to a licensee, and not a user who falls outside the definition of the type of users to which the tariff applies.

Katz then argued that the holding was applicable to of the Act, since it is indistinct from s 70.2. He focused on the plain meaning of the word “tariff” and stated that if parliament wanted it to be mandatory, they would have called it a “Levy”.

As a joint intervener in the case with the Centre for Intellectual Property Policy, more of Katz’ argument can be found in his .

Mario Bouchard – Copyright Board-issued tariffs are mandatory

Bouchard followed Katz and began with a criticism of the way the issue was framed for the panel. He was concerned by the classification of s 70.2 licenses as tariffs. Bouchard dispelled this notion by explaining that s 70.2 licenses are not tariffs, they are regulations.

Turning to SODRAC, Bouchard argued in favour of the mandatory tariff theory. He reasoned that the SODRAC decision misapplied, misapprehended, and ignored copyright principles, principles of statutory interpretation, judicial precedents, legislative history, and the way foreign copyright values approach the regulation of collective societies. Concerning copyright principles, Bouchard stated that—well established by the —where permission is required, it is for the user to ask permission from the copyright owners, not the other way around. Asking rhetorically “are we to embrace Google’s approach to copyright: use first, ask forgiveness later”, he conceded that it may be an appealing instrumentalist approach, but Berne still legally controls.

Adriane Porcin – Do users need CMOs in a transactional world?

Porcin followed Bouchard and took a different approach to the issue, seeking not to conclude what the majority decision means. Rather, she examined the context in which the decision was made and inquired into the purpose of the tariff regime, mandatory or not. After detailing the “one size fits all” approach tariffs impose on users, she opined on the purpose of s 70.2 and CMOs in a transactional world where organizations (like CBC) are free to negotiate licensing terms with or without the assistance of the Copyright Board as arbitrator.

She presented four points on this topic: [1] different copyright collectives have different types of relationships with their members, depending on the nature of the work and industry in which the tariff functions, and so the ability to maneuver around s 70.2 depends on the rights granted to each CMO; [2] because some CMOs’ license valuations have disconnected from the utility of those licenses to the users, intervention of the Copyright Board is essential to ensure that users are not subjected to the CMO’s own price setting; [3] the Copyright Board is in a better position than CMOs to assess the fair market price, but the timing of valuations is an issue in fulfilling their role as market surrogate; and [4] CMOs’ evolving governance structures may alleviate the issue. On the last point, Porcin used Access Copyright as an example of a CMO that evolved by shrinking their number of directors and recruiting them based on their industry knowledge and skills. She explained this may be an encouraging step toward reducing the disconnected valuations between CMOs and users).

Bobby Glushko – The lack of clarity about tariffs is not user-friendly

Glushko—Head of Scholarly Communications and Copyright at University of Toronto—brought a unique user’s viewpoint to the panel. Glushko, whose role is to help his institution identify, evaluate and mitigate risk, focused on the uncertainty of this area of copyright law. He explained that in his case, the uncertainty over whether tariffs are mandatory or not—combined with the uncertain potential outcome of valuations involved in those tariff hearings—made his job particularly difficult.

Glushko further explained how the Principle of Technological Neutrality, in light of the SODRAC decision, only exacerbates the uncertainty in his position. It remained unclear what activities constitute copying, whether they are compensable, and what the value of those copies may be.

Howard Knopf – If you don’t like the bridge toll you can swim across

Knopf closed the panel and described why CMOs might see the SODRAC decision as bad for business: it expressed a clear message that, for users, tariffs are not mandatory. Knopf detailed the historical nature of a tariff, proffering an analogy to the old train tariffs from Toronto to Ottawa to regulate train companies, and suggesting that these were only mandatory it you took that particular train—you could ride a bus, plane, bike or hitchhike if they were cheaper, faster or better means to travel. His argument was that the SODRAC decision gives users leeway to choose “alternate means of transportation” by clearing rights for works they want to use through different mechanisms without running afoul of the Act. Bouchard spoke up in disagreement with this analogy, clarifying that users are free to use alternate repertoire (reinforcing the mandatory tariff theory).

Knopf conceded an earlier argument by Bouchard—that tariffs are in fact regulations—but tempered the concession by adding that parliament is capable of adding explicit provisions to make such tariffs mandatory. In the absence of such language, tariffs as regulations still need not be mandatory.

Conclusion

In light of the disagreement between the panelists on whether the mandatory tariff ‘Spectre’ had been debunked, the panel illuminated the difficulty presented by Glushko: ��If we cannot agree on the very nature of tariffs, it makes it difficult for both users and CMOs alike to predict the implications of �����ٸ鴡��’s decision. And, with CMOs acting as representation for authors (and owners), and users often being authors themselves, it is hard to find where the SODRAC majority decision falls with regard to the Act’s role as balancer of the public interest and obtaining a just reward for the creator. Does it tilt in favour of the public interest, giving more transactional freedom to users and authors, and accordingly encourage dissemination of new works? Or, does it inject more uncertainty and place greater barriers to the just reward of creators? One thing is certain: the issue made for a fascinating and passionate panel.

The post Tariffbusters: Does the CBC v SODRAC decision debunk the "Mandatory Tariff Theory appeared first on IPOsgoode.

Agar began by expanding on his default indifference stating it is a frequent response to the entitlement displayed by people who often call the show facetiously promising that they would be doing Agar a favour by coming onto his show when in fact it is they who want his help. Agar expressed how this entitlement mentality—which he mused was likely a generational-effect from oft-received consolation trophies— fails to consider the abundant competition for media time.

The rest of Agar’s talk illuminated how to leverage media to overcome intense competition for airtime. He used several examples to differentiate the successful stories from the unsuccessful, starting with the successful: star of Dragon’s Den Kevin O’Leary and his surprising run for Tory leadership, which was as being neck-and-neck with that of Peter MacKay.

According to Agar, the key was not found in this quote often attributed (though unverified) to Theodore Roosevelt: “[n]obody cares how much you know until they know how much you care”; rather, it was found in Agar’s adjustment to that quote: “most people don’t care until they find out what’s in it for them”. To cater to gatekeepers’ interests in order to get a message out, Agar emphasized that brief, efficiently told stories—stories than can be told in one sentence—are most appealing to those gatekeepers not just because it makes their job easy, but because the story will be easily communicable to their audiences.

Further, if a brief one-line summary of an issue provokes more questions, it will be more likely to incite callers, on-air debate, and will be less likely to result in dead-air. Agar’s first example of a powerful description was the lead line: “people living in high-rise buildings in a city have less chance of surviving a heart attack”. This line tells a story entirely but also provokes immediate more questions (such as why?), making it vastly superior to those one sentence stories which do not, like Agar’s example of a botanical fair’s announcement and description.

Agar had advice beyond perfecting the quality of a pitch, also focusing on the importance of the degree of research and knowledge on the proposed subject. He pointed out that getting a message out through the gatekeeper does not guarantee the benefits generally yielded by the broadcast of that message. To illustrate his point, he recounted two disastrous stories of broadcast subjects: one who could not answer questions about her chosen topic (a school trustee who did not know why hypothetical marijuana retailers should not be in close proximity to a school even though LCBOs can be); and, another who was uninformed on her chosen topic (a teacher asking the public to “walk a mile in her shoes” who did not know taxpayers subsidized her salary).

Finally, Agar honed in on some other important factors which could contribute to getting him (and his audience) to care about you, including: putting the listener first, being assertive, being creative, and, seeing opportunities and capitalizing on them.

Though the talk focused on radio broadcasting, Agar tied his message back to the law and how to apply storytelling in the legal profession by relating the concepts he discussed to client advocacy and professional self-branding. Doubtlessly, the media can play a profound role in the former context, whether soliciting the media’s help in telling the story the way you want to tell it, or whether the media comes to you first, leaving you no choice in the matter. Also, it is unquestionable that lawyers in today’s climate can leverage the media to get the word of their services out to the public. As a law student, storytelling is a major component of the non-stop application processes I began the day I applied to law school, and Agar’s advice will no doubt stick with me long into my legal practice.

Jordan Fine is the IPilogue Content/Publication Editor��and a JD Candidate at Osgoode Hall Law School.

The post IP Osgoode Speaks Series featuring Jerry Agar: I Don’t Care About You appeared first on IPOsgoode.

In a timely manner, only three days after the of the conclusion of negotiations on the Trans-Pacific Partnership Agreement (TPP), Prof. Matthew Rimmer accepted our invitation and shared few of the hidden secrets behind the agreement as part of IP Osgoode speaks series.

This ‘blockbuster agreement’—supposedly a jovial landmark in the sphere of diplomatic international relations—was diluted with a mixture of uncertainty and secrecy. According to Prof. Rimmer, the TPP is a controversial agreement for several reasons. First, many concerns were raised regarding the involvement of major companies, via special advisory groups and executives, in drafting parts of the agreement. Consequently, the companies allegedly had more influence over the TPP than the legislators since the latter could not review the agreement that was protected (and still is) under the blinds of confidentiality. Second, a few notable countries are not signatories of the TPP (China and Russia for example). The reasons underlying China and Russia’s exclusions raise questions regarding the TPP’s true nature—is it really a trade agreement or simply, as Prof. Rimmer implied, ‘the coalition of the willing’ that was established as part of a U.S. global trade strategy.

Much of what we know to date about the TPP was retrieved from . Jamie Love, the director of (KEI), who recently shared��a into the TPP deliberations, alerted that "[i]n many sections … the TPP would change global norms, restrict access to knowledge, create significant financial risks for persons using and sharing information, and, in some cases, impose new costs on persons producing new knowledge goods."

IP Principles and Objectives

The TPP’s IP chapter covers a wide scope of topics and is positioned to change the normative boundaries of IP and, more specifically, of copyright. The traditional approach, as shaped in the U.S. and the U.K., is rooted in the perception of copyright as a means to inspire creation and proliferate knowledge. However, as Prof. Rimmer explains, it appears that the current vision of the TPP, under the influence of the music and movie industries, seeks to transform the normative balance of IP in order to strengthen the owners’ well-fortified rights. It is not hyperbole to define the TPP as a game changer that could have grave implications to the public domain.

A ‘Mickey Mouse’ Copyright Term Extension

According to Prof. Rimmer, the movie and the music industries have strategically argued for a prolonged extension of copyright terms. The TPP seems to answer their call, as it extends the term of protection to 70 years after the life of the author. This extension will likely have a profound affect in various fields, including Canadian cultural heritage, competition, innovation and the public domain. However, it is unclear if the TPP will include a demand for the revival of copyright works that were previously in the public domain. Prof. Rimmer also indicated that the TPP seeks to for orphan works.

Fair Use/Dealing and Disability Rights

There has been much academic discourse concerning whether the TPP language, in regards to the definition of fair use/dealing, is far too narrow or too broad compared to previous agreements, particularly the , in defining copyright exceptions. The TPP definition will most likely affect the course of this discussion. If the TPP adopts a narrow definition for fair use/dealing, it could set back recent developments in Canada related to the Supreme Court landmark decision in .

Copyright and disability rights stand in the center of recent international progress in copyright law. The —the most prevalent—aims to expand the recognition of the rights and interests of disabled people to access copyright protected materials, ending what was known as the ‘Book Famine’. According to Prof. Rimmer, the TPP makes an effort to recognize the Marrakesh Treaty. However, the Marrakesh Treaty is narrowly limited in scope to the visually impaired. Prof. Rimmer argues for a broader scope that will include other disabilities as well.

DMCA

The TPP seeks to export aspects of The Digital Millennium Copyright Act () and imbed Technological Protection Measures (known as ‘digital Locks’). Such anti-circumvention measures might endanger the fair use/dealing exceptions. The DMCA is a premature regime that was enacted almost two decades ago, in a pre-search engine and social media era, and is not well designed for current challenges. Stressing the absolute DMCA model as part of the TPP seems unreasonable. It should be noted that the DMCA model may have grave consequences to Canada, which in the past decade have defended its copyright laws against the DMCA successfully.

Protection and Enforcement

Protection and enforcement measures play an important role in the implementation of any international agreement. The TPP includes an arsenal of IP enforcement measures such as criminal offences and civil remedies. However, the TPP's rigid structure does not enable the members of the agreement much flexibility in adapting the TPP into their domestic laws. Prof. Rimmer criticized that the TPP ‘locks’ a specific model rigidly; it is uncompromising in regards to changes and modifications to the enforcement measures since it requires the approval of all members.

TPP’s Radical Vision

Prof. Rimmer concluded his lecture by stating that the TPP agreement ‘is radical’ not only in its objectives and purposes, but it also changes some of the fundamental doctrines in copyright such as term extension, fair use/dealing, liability issues etc., while diminishing the public domain in the process.

The TPP agreement is indeed a defining moment in the international effort to consolidate IP laws, however, the shroud of secrecy surrounding the TPP is not an encouraging sign. There is the general concern that the leaked terms of the TPP agreement will cause copyright laws to regress and destabilize the delicate balance between authors' and creators' rights to the public domain, thereby doing more harm than good.

The Sum of All Fears

On the eve of posting this blog, The Office of the U.S. Trade Representative (USTR) finally published the��. Not surprisingly, we discovered that the TPP’s negotiation leaks were, in general terms, accurate. For example,��the TPP includes a copyright term extension of ‘not less than the life of the author and 70 years after the author’s death’ (Article 18.63(a) to the TPP) as predicted. Obviously, we should read the TPP thoroughly, however—as it seems—it is indeed what we all feared it to be.

Aviv Gaon is a PhD candidate at Osgoode Hall Law School

The post IP Osgoode Speaks Series Featuring��Prof. Matthew Rimmer appeared first on IPOsgoode.

There is reason for optimism, as Justice Blair comes highly regarded with a considerable��deal of applicable��. In November of 2003, after serving 12 years as a trial judge on the Superior Court, he��was appointed to the Court of Appeal for Ontario. He has presided over matters involving almost all areas of the law, and has��been��involved��in many copyright��and intellectual property related cases over the years. His involvement in one��such��cases demonstrates engagement with current�� :����(a case concerning whether a��newspaper was entitled to��republish��freelance articles in digital media or databases without proper remuneration or��the author's��consent).* He has also judged the����competition since its inception in 2008, demonstrating his��eagerness��to engage in contemporary IP issues.

Beyond his encouraging background and reputation,��there is reason to see Justice Blair's appointment as potential to address the Board's known weaknesses.��The Board's for 2014-2015 placed��an emphasis on��improving their��capacity to deliver��timely and fair processes and decisions. It is ��that the ��of the Copyright Board is of its operations��, and how that pace��is at odds with��the with��modern��technological innovation. As Co-Chair of of the Ontario����and��longtime of Alternative Dispute Resolution, Justice Blair has��a keen understanding of the importance of and methodologies behind rendering timely, effective, and fair��judgments.

I��look forward to seeing how��this incoming��era of the Board pans out. Justice Blair voiced his opinion about��the��significance of his role��in the Government of Canada��, saying:��"The Board is a very important federal tribunal whose decisions affect the livelihood of the many Canadians involved in the creation, performance and reproduction of literary, artistic and musical works and sound recordings, and the users of those creative works." I��agree and hope it can begin to operate at a rate��that aligns with the ever-evolving��technological environment.

*This sentence was amended, as it has been recently��pointed out by��:��the Ontario Court of Appeal "Justice Blair" who I stated had participated in the 1989 case called R v Miles of Music Ltd��was not��new Chair of the Copyright Board,��Justice Robert A. Blair. Rather it was Justice Duncan Gordon Blair, who sat on the Ontario Court of Appeal from 1979-1994.

Jordan Fine is the IPilogue Content/Publication Editor��and a JD Candidate at Osgoode Hall Law School.

The post Ottawa Finally Fills Position Copyright Board Chair: Justice Robert A. Blair appeared first on IPOsgoode.

The event, held at the��Rosewater Supper Club, brought together academics, intellectual property lawyers, and industry professionals for dinner and discourse.��IP Osgoode's own moderated two��speakers: (partner of Borden Ladner Gervais LLP) and Richard Pfohl (General Counsel, , ).��The frank discussion comprehensively explored the major themes and driving factors of the background cases, along with��the merits of the arguments of every party and intervenor in CBC. Tackling��the vagueness of the principle of technological neutrality — as it was described��several times throughout the evening, a "ghost" of the SCC's��own making — was a recurring motif.

Professor D'Agostino

Professor D'Agostino's opening remarks laid out��the background of technological neutrality (humourously confessing��it has��become a favoured��subject for��her��law school exam questions). She identified��the definition of��the principle as set out by the SCC in ESA:��"different forms of media should be treated the same for copyright purposes, regardless of their level of technological sophistication." She succinctly outlined the��major��critical theme about the principle which��would punctuate��the rest of the evening: there is significant disagreement about what��the principle means and how it should apply.

Professor D'Agostino emphasized��to the room that��the principle was not new, having��existed��in other jurisdictions since 2001, including the US in��.��There, it was known��as the principle of media neutrality. (Tasini��was referred to and followed by the SCC in��.)

The introduction��concluded by accentuating��the principle's ambiguity��perceived��by the��Federal Court of Appeal in their decision: "...ESA, while restating the principle of technological neutrality in copyright law, provides no guidance as to how a court should apply that principle when faced with a copyright problem in which technological change is a material fact." Professor D'Agostino highlighted this flaw by citing Justice Rothstein's dissent in��ESA, where he suggested that "a principle should not override statutory rights in the Copyright Act."

Christina Pallotta

With the principle��described and defined, Pallotta launched into a detailed��overview of the background cases that led to its inception. She��began��with ��(a 1990 SCC decision case about incidental copies for a prerecording in a televised broadcast of a song) which affirmed��a��crucial��distinction between performances and recordings.��Bishop was quoted in��ESA and faced a similar quandary as��CBC: what is to be done when "the introduction of new technology present[s] a situation not contemplated by the drafters of the original Canadian Copyright Act"? The Court in Bishop��distinguished between recording and performing, but they also��underlined the��importance of��balancing needs of technology with��creators' rights.

Pallotta then outlined the driving factors behind the majority and dissenting opinions in��ESA. She noted��that the majority sought to balance the public interest and creator rights (as in��Bishop, and with more backing from��)��using predominantly��economic reasoning��to tip the scales. She��reinforced this methodology by referencing the majority's statement that "[t]he Internet is simply a technological taxi that delivers a durable copy of the same work to the end user."

Pallotta characterized the dissent as taking��a divergent��approach to the issue, with Parliamentary��intent superseding��economic reasoning. She first highlighted Rothstein J's dismissal of the majority's cab metaphor: "taxis need not give free rides." Rothstein J acknowledged the appeal of technologically neutral copyright law. However, Pallotta neatly summarized how his��reluctance to employ technological neutrality��follows a simple three-step argument: [1] copyright��is a creature of statute; [2] it is comprised of a bundle of independent statutory rights; and [3] courts must respect the language chosen by Parliament – not override it. Pallotta's unbiased juxtaposition of majority and dissent in ESA��made a strong case in favour of��applying Rothstein J's opinion.

Richard Pfohl

From there, Pfohl took over by leading the room through a history of CBC��v SODRAC.��He��started by outlining the Board's��, and followed with a concise��retelling of the FCA����under appeal (where they��admitted they did not know what to do with the principle in the first place due to the lack of guidance in ESA –��Pfohl called this a big "red flag"). He��finished by��dissecting every major��argument of the appellant, respondent, and nearly every intervenor in CBC��(, , ;��omitted were arguments from the��).��

After an exhaustive list��of CBC's objections to��SODRAC's incidental copy licencing (including:��“double-dipping”,��“royalty stacking”,��"triple-paying",��“gratuitous cost” and “chilling effect”), Pfohl explained how CBC wanted��the principle��to be applied, synthesizing from their : “broadcast-incidental copies do not engage the reproduction right”, the principle "creates implied license in �����ٸ鴡��’s synch license", and��“a technologically-neutral licence would attribute only nominal value to broadcast-incidental copies.”

SODRAC's ��to CBC's arguments��resembled Rothstein J's dissent in��ESA. Pfohl noted��how��SODRAC posited that there is in fact no layering or double-dipping (the acts in question in this case are not simultaneous, unlike in��ESA,��where a video game was��either downloaded or bought in person, but not both) and the court should not��upset Parliament’s balance: “neither the Board nor the Courts can 'balance' away a right that is provided by statute.”

As Pfohl moved through��the intervenors, it was clear they provided the Court with unique and compelling arguments. CMRRA on the importance of the fundamental divisibility of copyright (owners are entitled to divide and subdivide their exclusive rights) and��a consistent application of the which has always protected broadcast-incidental��copies. Music Canada��(a ��promoting this interests of numerous��companies engaged in all aspects of the recording��industry, and which Pfohl represents ) ��to reject Functional Equivalence as being inconsistent with the language, structure, and history of the Act.

CIPPIC's addressed a peripheral yet��pressing contemporary issue at stake in��CBC: what do we do with the practical reality that ephemeral copies are ubiquitous in digital technology (you likely��just made an ephemeral copy��of my blog post in your web cache – I'll take cash or cheque)?��CIPPIC suggests that��“fleeting, transient, impermanent” copies should not be protected, and those copies that are protected must be “durable”.

Regardless of how the��SCC��applies��statutory language to the facts and context of CBC's ephemeral copies, the threshold��issue raised by CIPPIC��appears more than��merely��trivial. The Court would be wise to address this concern irrespective of the ultimate holding of the case.

Conclusion

A brief round of comments followed, enthusiastically kicked off by counsel for CMRRA, Casey Chisick, who provided an astute��summation of the principle of technological neutrality. Chisick��analogized the criticism of the SCC majority's��ESA��principle as "wrestling with a ghost/monster of their own making, which creates an unpredictable situation."��Professor D'Agostino expanded on��this comment in her closing remarks, saying that this case has the opportunity to "play ghostbuster" as dissents can often become majorities.

Perhaps Rothstein J's dissent in ESA will provide a more consistent methodology for the Court to apply the Copyright Act, and a catalyst for Parliament to recognize the need to "future-proof" their legislation so technology does not��impede on creators' rights.

(The slides for the event may��be accessed .)

Jordan Fine is the IPilogue Content/Publication Editor��and a JD Candidate at Osgoode Hall Law School.

The post TIPG Copyright and Technological Neutrality Event: Ghostbusting with Professor Giuseppina D'Agostino, Christine Pallotta and Richard Pfohl appeared first on IPOsgoode.