Photo by Simon Noh ()

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

On October 13, 2021, legendary singer and icon Cher filed a at the California Central District Federal Court against Mary Bono [Bono], former Republican U.S. Representative. Bono is the fourth wife and widow of the late Sonny Bono [Sonny], Cher’s ex-husband and famous singing partner. Cher and Sonny recorded famous songs such as , , , and more.��

Cher filed the lawsuit due to Bono and Sonny’s estate refusing to pay Cher royalties from the singing duo’s music catalogue. Overdue to pay these royalties, Bono has made her opinions clear, with her lawyer commenting to the Los Angeles Times: “.” With tensions high, the are nowhere in sight.

Bono claims that Cher is no longer entitled to 50 percent of the royalties from Sonny and Cher’s songs as per the ex-couple’s divorce settlement agreement. The claim states that Cher and Sonny agreed when divorcing that the two will split the royalties of the songs they created together.

Pursuant to section 203 of the U.S.’s ��“Act”], authors are able to cancel transfers of copyright protections and claim all rights after 35 years in certain situations. This notion has been in the news lately involving the late . This section, however, is challenged by section 302(b) of the Act which states: “In the case of a joint work … the copyright endures for a term consisting of the life of the last surviving author and 70 years after such last surviving author’s death.” If section 302 takes priority, Cher should be able to decide the royalties until her death and then 70 years more.

Bono, the trustee of Sonny’s entire estate and trust, configured the trust earlier in 2016. In the lawsuit, Cher states that in 2016, . One of those partnerships is Cher. These changes were only brought to Cher’s attention in September 2021, when she was also alerted that she was no longer allowed to approve the uses of their songs and many other entitled rights.

says that this claim comes down to who . The owner of the music should be the one who decides who is able to transfer and reclaim rights. Most importantly, though, it is absurd that Bono has decided for herself to reclaim all transfers and to end Cher’s royalties.

Cher is now seeking a million dollars in damages and asking the court to make a declaratory judgment saying the estate did not end her rights. This claim will most likely be handled through settlement, but as the public, we should sit back, enjoy this , and watch as .

The post “I Got [Royalties] Babe”: Cher Sues Mary Bono appeared first on IPOsgoode.

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

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

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

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

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

In the words of Anita Baker, “.”

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Prof. David Vaver is the Acting Director of IP Osgoode and a Professor of Intellectual Property Law at Osgoode Hall Law School. The following is a preview of a paper to be published in the Intellectual Property Journal.

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Something has recently gone awry with the law of copyright ownership in a movie or other film — a “cinematographic work”, as s. 2 of the [Act] calls it. ��

Part I of the Act deals with the ownership of copyright in works. Section 13(1) provides that the author of a work is its first copyright owner. Section 13(2) provides one exception: where the work is done by an author-employee for their employer as part of their job and there is no contrary agreement. All this applies to cinematographic works, a species of dramatic work, as the Quebec courts recently confirmed: at [12], aff’ing at [51]-[2] [Choko]. A copyright owner may of course transfer the right as it wishes (s. 13(4)); but apart from another exception on Crown works (s. 12), these provisions in s. 13 are the only ones that deal with the ownership of copyright in works. Another section in Part II of the Act (s. 24) deals with first ownership of copyright in subject-matter other than works: performer’s performances, sound recordings, and communication signals.

Owning copyright is one thing; proving ownership is another. Section 34.1(1) of the Act helps plaintiffs out by giving them certain presumptions if they sue for infringement or take other civil proceedings. The section reads (emphasis added):

"In any civil proceedings taken under this Act in which the defendant puts in issue either the existence of the copyright or the title of the plaintiff to it,

(a)��copyright shall be presumed, unless the contrary is proved, to subsist in the work, performer’s performance, sound recording or communication signal, as the case may be; and

(b)��the author, performer, maker or broadcaster, as the case may be, shall, unless the contrary is proved, be presumed to be the owner of the copyright."

At first sight, the words in (a) — “work, performer’s performance, sound recording or communication signal” — appear to be paired with those in (b), in the same order, to mean “author [of a work], performer [of a performer’s performance], maker [of a sound recording], or broadcaster [of a communication signal]”. It would seem unnatural, for example, to read “maker” as referring to both a “sound recording” and a “work”. That however overlooks the fact that s. 2 of the Act defines “maker” as referring to both a work and a sound recording.

Does that definition apply here so as to disturb the apparent pattern of paras. (a) and (b)? Or do the words in context make s. 2 inapplicable? I suggest that they indeed do disapply s. 2 for cinematographic works and that, in context, “maker” in para. (b) means only the maker of the sound recording referred to in para. (a).

Not everyone thinks so — in particular, some judges of the Federal Court.

*

Section 34.1(1) is supposed to make a plaintiff’s life easier in starting and running a copyright claim in court. It neither creates presumptions outside civil proceedings nor creates, transfers, or changes anyone’s actual title, and any proceeds recovered from a defendant are held for the benefit of the true owner: see Hogg v Toye & Co [1935] Ch 497, 520 (CA) on the corresponding provision in the (UK) on which the Canadian section is based. If any presumption happens to be displaced by contrary evidence, the proceedings can be amended and other parties joined so that defendants are not put in double jeopardy.

The presumption was applied straightforwardly in Choko (above). The plaintiff claimed a declaration of copyright ownership in a documentary he had shot for the defendant, while the defendant counter-claimed that the copyright belonged to the defendant as the plaintiff’s employer. The court applied s. 34.1(1)(b) to presume ownership in the plaintiff, he being the “author” of the “work” (Choko, QCCS at [55]). The defendant lost at trial and on appeal because he failed to prove the contrary, i.e., that he employed the plaintiff under a contract of employment (Choko, QCCA at [13]).

The Federal Court of Canada has, however, in at least three decisions said that s. 34.1(1)(b) presumes that the film’s “maker” is the copyright owner of the “work” unless the contrary is proved: see at [24]-[6]; at [32]; at [47]. The ultimate result in these cases may be justifiable: agreement or employment may have given the plaintiff actual ownership in Interbox (see [24] & [26]-[8] of the decision); ownership was “uncontested” in CBC (see [36] of the decision); and certificates of registration would have shifted the presumption of ownership to the plaintiffs in Bell (see [53] of the decision).

Interbox nonetheless does appear to be a decision on the s. 34.1(1)(b) point and was treated as such in CBC at [32]. ��

The correct view however seems to be that, read in context, “maker” in s. 34.1(1)(b) refers only to the maker of a sound recording. Were it to include the maker of a cinematographic work, s. 34.1(1)(b) would be the only provision in the entire Act where "maker" alone bore this meaning. It would also make s. 34.1(1)(b) create two inconsistent presumptions on ownership of the same work, with no way to decide which should prevail. Suppose an “author” and “maker” of a film sue each other, each claiming to be the copyright owner: whose duelling presumption should prevail? To call the result a stalemate would stultify the point of having presumptions at all and would anyway probably be contrary to art. 15(1) of the [Berne], which requires the author to prevail if their name appears on the work in the usual manner.

The problem is that, although “author” and “maker” can mean much the same thing in ordinary parlance, they do not in copyright law. The Act does not define “author” but judicial decisions identify this person as the individual or individuals who give a work’s ideas their original form or expression ( (NBCA)) — a question of fact in each case. Authorship is established easily enough for the video shot on someone’s smartphone; less so for a complex production such as Star Wars, which could involve multiple authorship or the director as sole auteur, the individual responsible for translating the work’s vision into its final expression.

By contrast, “maker”��—��producteur��in the French version —��has a definition in s. 2 of the��Act��that spans both cinematographic works and sound recordings. For a cinematographic work, the “maker” is��“the person by whom the arrangements necessary for the making of the work are undertaken”; for a sound recording the same formula applies to the first fixation of sounds.����

In cases like��Choko��(above) which involved a single individual shooting and editing a film, the same person may coincidentally be both maker and author: the two roles are easily enough mistakenly conflated (see, e.g.,�� at [156]-[7], appeal dismissed 2021 ONCA 532 for non-compliance with order to post security). In many major commercial films, however, the maker and author��—producteur��and��auteur��—��will be different persons, particularly because the maker may be a corporation whereas an author must be a natural person, i.e., a flesh-and-blood human being:��,��234 [Massie].��

One might ask: if “maker” in s. 34.1(1)(b) really applies only to sound recordings, what is the point of having a definition of “maker” of a cinematographic work at all? The answer: to allow Canada to comply with Berne article 4 and ensure that films are protected in Canada even where none of the authors is a Berne national or resident, no matter who owns the work’s copyright. This s. 5(1)(b)(i) of the Act achieves (see Bell, above, at [47]) and also extends protection to other states as required by treaties such as the of 1994. The relevant part of s. 5 reads: ��

"5.(1) Subject to this Act, copyright shall subsist in Canada, for the term hereinafter mentioned, in every original literary, dramatic, musical and artistic work if any one of the following conditions is met:

���������������������� …

(b) in the case of a cinematographic work, whether published or unpublished, the maker, at the date of the making of the cinematographic work,

(i)��if a corporation, had its headquarters in a treaty country, or

(ii) if a natural person, was a citizen or subject of, or a person ordinarily resident in, a treaty country [emphasis added]."

Section ��34.1(2)(c) reinforces this provision, as Berne art. 15(2) requires, by providing that “if, on a cinematographic work, a name purporting to be that of the maker of the cinematographic work appears in the usual manner, the person so named shall, unless the contrary is proved, be presumed to be the maker of the cinematographic work” — note, not the “copyright owner”, an error made in Wiseau (above) ONSC at [156], although the court ultimately found the person who wrote, acted in, and produced the film to be its “author” and at least a co-owner (ibid at [157]).

Sections 5(1)(b)(i) and 34.1 (2)(c) are the only provisions to which the definition of “maker” of a cinematographic work applies. Had the drafters integrated the contents of s. 34.1(2)(c) into s. 5(1), as they could easily have done, the definition of “maker of a cinematographic work” could also have been shifted from s. 2 to s. 5(1). The mischief its location in s. 2 causes would have disappeared. Such are the potential effects of drafting decisions that are thought to be stylistic but which others misunderstand as having a substantive effect.

Let us examine more closely why s. 34.1(1)(b), in context, cannot include the maker of a cinematographic work. Admittedly, s. 2 could make it include that person — which raises the question: had the drafters intended to confine “maker” to sound recordings, why did they not just add the phrase “of a sound recording”? The answer is because, in the context of section 34.1 and the Act as a whole, the drafting in this respect is often elliptical, and the drafters here thought that meaning was already implied.

The drafters used a similar ellipsis in the next subsection, s. 31.1(2), where the word “maker” in the phrase “author, performer, maker or broadcaster” in the concluding portion of s. 31.1(2)(a), and in s. 31(2)(b)(i) and (ii), clearly means the “maker of the sound recording” specifically mentioned earlier in s. 31.1(2)(a)(iii).

They also used the same ellipsis elsewhere in the Act. Thus s. 29.21(1)(b) requires the creator of user-generated content to name their available source if they are to avoid infringement. The source is stated to be “the author, performer, maker or broadcaster” of the prior “work or other subject-matter.” “Other subject-matter” is the shorthand used throughout the Act for a performer’s performance, sound recording, or communication signal, and the preceding section (s. 29.2(b)(iii)) again makes it clear that the “maker” referred to is the “maker of a sound recording”.

The fact is that the words found in s. 34.1(1)(a) “work, performer’s performance, sound recording or communication signal” in either their singular or plural form appear as a set throughout the Act and are typically linked distributively to the set of persons the Act designates as their respective first owners: “author, performer, maker of a sound recording, or broadcaster” (see, e.g., s. 2, definition of “collective society”). Thus s. 13(1) designates the author as first owner of a work and sections 24(a), 24(b), and 24(c) respectively — and significantly, in the same order — designate the performer, maker of a sound recording, and broadcaster as first owner of their respective subject-matter.

The maker of a cinematographic work would be the odd one out in s. 34.1(1)(b), for the provision otherwise designates the presumption only in favour of first owners. Nothing in the Act, other than employment, contradicts s. 13(1)’s grant of first ownership to the work’s author. The Act nowhere suggests that the maker of a film displaces the author as first owner. Nor does the Act bridge the gap between “maker” and “author” the way UK law does by deeming a film’s author to be its maker — or “producer,” as UK law has it—together with the principal director ( (UK), s. 9(2)(ab)). Although Canadian and UK ownership rules may differ, both are internationally compliant: Berne art. 14^bis(2)(a) allows member states to decide ownership rules for films for themselves since the states had widely disparate views on the matter and no agreed position could be struck at Berne.

It is equally noteworthy that the maker of a cinematographic work is omitted from the list of persons whose interests may be recorded on the Copyright Register — namely, “authors, performers, makers of sound recordings, broadcasters, owners of copyright, assignees of copyright, and persons to whom an interest in copyright has been granted by licence” (s. 54(1)(b)). All these categories are persons whom the Act designates as first or later owners of copyright or an interest in copyright. The omission of the maker of a cinematographic work as such — nowhere designated as a category of owner or holder of an interest — is striking were it is indeed presumed to be an owner for civil proceedings. ��

In general, it makes sense when civil proceedings are brought, to start with a presumption that the person the Act designates as the first owner of any copyright is still its owner unless someone proves the contrary. It generally makes no sense to start with a presumption that a person that the Act nowhere designates as such as first or any owner should currently be presumed the owner. The only exception is where material is anonymous or pseudonymous: for reasons of privacy, s. 34.1(2)(b) provides that the publisher whose name appears on a work is presumed to be its owner — even though the publisher is likely not the first owner and, as Berne article 15(3) states, is really only “deemed to represent the author” to vindicate the latter’ s rights.

None of this will come as any surprise to corporate broadcasters and film producers. They have known for decades that they cannot rely on the presumption in s. 34.1(1)(b) favouring a film’s “author” since in Canada, as noted earlier, the term “author” is reserved for flesh-and-blood human beings: Massie (above) at 234. They have also known for decades of the “intolerably heavy” burden and “serious handicap” the author/ownership presumption imposes on them or any other plaintiff who happens not to be the author: , 605. They also have known for decades of the cheap and effective way to overcome this burden and handicap, as endorsed by Circle Film, itself a case on cinematographic works: before filing infringement proceedings, just spend the $50 and the few minutes it takes to apply online to register the film’s copyright with the Canadian Intellectual Property Office, and get a certificate of registration stating one’s copyright ownership. Registration then provides all the contrary proof needed for the registrant to rebut the author/owner presumption (Act, s. 53(2); Circle Film, at 606-7). That is why no practical need has existed to amend the law to include a presumption of ownership in favour of the maker of a cinematographic work. Registrations can go where presumptions fail to tread.

It is therefore hard to understand why s. 34.1(1) has been pressed into doubtful service where clear and simple alternative means of initially establishing copyright subsistence and title for film “makers” so readily exist. The sooner the Federal Court clears the matter up, the better.

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Claire La Mantia is a Guest Writer and a 2L JD Candidate at Osgoode Hall Law School.

Determining whether an employer or an employee owns the intellectual property of a work produced during the course of employment can be challenging. While an employer may have invested significant resources to facilitate the production of an invention and wish to capitalize on their investment, their employee also likely devoted significant time and energy into developing the invention and may feel entitled to benefit from its associated IP. Although different types of intellectual property protections may apply, including , patents, industrial designs, trademarks, and trade secrets, this article will focus on private and public sector employees’ patent rights to inventions produced during the course of their employment.

Private Sector Employees

The contains no express provisions pertaining to the ownership of inventions produced by an employee during the course of their employment. However, common law jurisprudence indicates that employees are generally presumed to own patent rights in these circumstances. One is where an employee is specifically hired to invent something for the employer, as was determined in In determining whether an employee was , courts may consider eight factors:

1. The employee was hired for the express purpose of inventing.
2. At the time of hiring, the employee previously had made inventions.
3. The employer put incentive plans in place to encourage inventions and product development.
4. The employee's conduct following the creation of the invention suggests that the employer is the owner.
5. The invention is the product of the employee being instructed to solve a specific problem or invent a solution.
6. The employee sought help from the employer or consulted the employer in making the invention.
7. The employee created or developed the invention with the employer's confidential information.
8. It was a term of the employee's employment that they could not use ideas that they developed to their own advantage.

As such, employees intending to patent inventions made during their employment should be aware of the purpose of their employment and the assistance or instruction provided by an employer in developing the invention.

A written contract including an express contractual term contrary to the presumption of employee ownership . Each party would have to approve an express provision granting the employer ownership of any work produced by an employee through their employment in order for the provision to apply, but the provision would provide employers a stronger guarantee of IP protection than relying on the “hired to invent” exception. Private sector employees should read contracts carefully to understand their obligations to their employer and whether the presumption of employee ownership of IP produced during the course of their employment could potentially be refuted.��

Public Sector Employees

In contrast to the private sector’s presumption of employee ownership, a reverse presumption applies to the patent rights of public sector employees. The Public Servants Inventions Act () that any invention produced by a public employee in the scope of their employment duties or made using the facilities or funding provided by or on behalf of the federal government, and inventions connected to or resulting from one’s employment in the public sector, are the property of the federal government. This to any new and useful art, process, machine, manufacture or composition, or any new and useful improvement.��

However, public service employees may obtain the relevant minister’s permission to file a patent for their invention outside of Canada. Public service employees may also file patents for their inventions in Canada by disclosing their status as a public servant on their patent application. Ministers may public servant inventors for their work where the invention in question is determined to be the property of the federal government.

The question of IP ownership in the public sector could unfold in Canada following the firing of a publicly employed scientist at the country’s highest infectious disease laboratory, the Winnipeg-based National Microbiology Lab (NML). A recent article revealed that Dr. Xiangguo Qiu filed patents for two inventions in China, each pertaining to work that she conducted as a civil servant at the NML in Canada. As a public service employee, the PSIA applies to these inventions. The question remains whether Dr. Qiu obtained permission from the applicable minister to patent the inventions in China or violated the PSIA in filing patents outside of Canada.

Generally, it is important for all employees to be aware of their obligations to employers and their right to retain ownership of their inventions produced as part of, or in connection with, their employment. Part of this awareness is an understanding that an employee’s obligations and rights may differ depending on whether they are employed in the private or the public sector.

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Shannon Flynn is a Guest Writer and the Managing Editor of Rehack Magazine.

You may subscribe to the idea that after you craft something, creatively or professionally, it is automatically yours by right. That is not always the case; at the heart of legal ownership is intellectual property rights. IP is thrown around a lot in business, especially as it relates to software development and creative projects. But how do IP rights apply to software? In this article, I will explore what software engineers and developers need to know to protect their work in both the U.S. and Canada.

Deconstructing Intellectual Property Rights

Intellectual property rights can be broken down into four different types. Copyright protection covers many creative works, including computer programs, databases, technical drawings, and mobile applications. Developers should also consider acquiring software patents and trade secrets. Trademarks may also apply to protect the company’s names, symbols, and brand assets.

Ultimately, intellectual property rights refer to an intangible form of ownership over a creation or finished product (in this case, a software application). Patents, copyrights, trade secrets, and trademarks each offer a specific kind of protection for software.

Software Patents

In the United States, patents offer creators exclusive monopoly to manage an invention. Patent holders are free to produce, use and sell the item as they see fit. The trade-off is that they must describe their product in full detail to the U.S. Patent Office, which publishes this information publicly.

Unfortunately, “there is no legal or conclusive definition for a software patent.” This is because does not allow for the patenting of abstract ideas.

However, software patents can be obtained for systems, methods, algorithms, techniques, display presentations, UI features, and similar mechanics. They must be presented as new ideas with practical use and they must be “non-obvious.”

Copyright Protection

Copyright is probably the most important intellectual property protection for software.

Copyright protection complements patent protection. While patents protect the inner workings of a software application, as well as novel ideas and concepts, copyright protection extends to the manifestation of those ideas. It for literary, artistic, dramatic, or musical works. In other words, it covers the source code, creative elements, and UI and visual elements.

For example, consider if someone creates an application that allows users to rent out items they own to members of their local community. The underlying code and deployment of that application are protected under copyright law, along with the unique UI elements, visuals, and content. However, the idea itself, a rental app, can be copied by others without repercussions, so long as they do not use the same source code and content.

Trade Secrets

A trade secret refers to any medium discovered and maintained by the original owner that remains private and usually provides a competitive advantage. It can include but is not limited to formulas, recipes, patterns, devices, compounds, tools, processes, and mechanisms. There is no federal trade secrets law or statute in Canada. Instead, Canadian trade secret laws are or civil law.

There is no time limit on trade secrets, as they can be kept private forever. The only exception is if another party discovers them on their own, which is possible. Because they are hidden, trade secrets may only be stolen as opposed to being infringed upon.

Cybersecurity events pose a major risk as trade secrets may be stolen or required as collateral by the attackers. Not protecting trade secrets and intellectual property when working with other parties can have serious consequences, like the case with Aerojet Rocketdyne Holdings Inc. and its efense.

With software, trade secrets are kind of tricky. They might include proprietary code and the inner workings or ideas behind it. But if those ideas can be gleaned through reverse engineering, or someone independently discovers them, there is no legal redress.

Trademarks

Trademarks are designed to related to a business or venture. They are “concerned with a company’s need to identify its goods or services among its customers and potential customers.”

Trademarks protect a company’s name, domain, images, and product design elements. They must be registered to activate the legal protections. Some popular trademarks include Nike’s iconic check, Coca-Cola’s logo, and Disney’s Mickey ears.

In the software world, Microsoft’s Windows logo is an excellent example.

Open Source and IP

In the software development world, things can get confusing because of a few different practices. For example, open-source software and agreements can be difficult to navigate. Many open-source projects on depositories, , allow a community of creators to participate.

“When you tap into GitHub [...], you’re free to access any of the files hosted on the platform, and you can even use the content as you wish. You can download the code and use the resulting software, study it to better your own projects, or build upon and improve it to make the existing project better.”

However, releasing an open-source project does not necessarily forfeit intellectual property rights. There are different licenses to choose from, and the permissions granted to umbrella users must be followed closely. They must abide by licensing rules, or they .

Author versus Owner

When it comes to software, the author of various elements like code or visuals isn’t necessarily the legal owner entitled to intellectual property rights. This is a particular concern for employer-employee relationships, where developers work at a large company with dozens or even hundreds of others.

Unless it is otherwise stated, the employer owns what is . Even independent contractors must abide by a legally-binding contract unless they’ve negotiated rights ownership.

Section 13(1) of the "author of a work” is the first owner of the “copyright therein.” In addition, Section 13(3) of the Act stipulates that any works created under a "contract of service" by employees are owned by the employer.

Protecting Your Work

The best way to protect your work, secure intellectual property rights, and lockdown trade secrets, where applicable, is to make sure you understand these concepts and how they apply to your project. If you’re working on a software application by yourself or with a small team, it will be your responsibility to protect your content and systems.

If you’re working for an employer, they likely already have protections in place, and you need to understand where you fit in. For instance, you probably do not own the rights to the content or code you are creating.

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What is NFT?

are non-fungible tokens based on Ethereum, powered by smart contracts. means it is unique and one of a kind. It can also be understood as a proof of ownership and authenticity. is an open source and decentralized software platform, and it is also the technology behind the cryptocurrency ether (ETH).

There are various platforms for NFT marketplace, such as , , and (for sports digital collectibles).

What does NFT mean for artist, collectors and the market?

Traditionally, artists would sell the physical copy of their painting, but this business model is not as suitable for digital artworks as physical artworks. Some artists were posting their artwork , or unable to sell their digital work, because there was significant difficulties in the digital work or authenticating the owner of the original copy when there is no physical copy. With NFTs and increasing amount of marketplaces for digital works, artists might be able to finally make money with their works.

This article written by Andrew R. Chow also mentioned that NFTs seemed to encourage and applaud more creative and innovative forms of artworks - “[m]any other artists working in groundbreaking and sometimes controversial styles are also receiving unprecedented interest from NFT collectors. Art with whirling 3-D renderings, street-style oversaturated color schemes, and hyper-referential (and often crass) cartoons are thriving.”

For collectors and the digital art market, NFT is a proof that the person is the owner of the original copy. Collectors might be paying more for “” or appreciation of digital arts than just for the money in this .

Concerns about NFTs?

Ioanna Lapatoura has discussed copyright ownership with respect to NFTs in her recent article on . NFT ownership is different from copyright ownership or a proprietary right over an actual asset. NFT is the “proof of owning an unique digital version of an asset, rather than the asset itself”. There is also new type of alleged infringement – copied artwork . Since NFTs are still new and developing, there is likely to be difficulties in enforcing intellectual property rights.

What’s in the Future of NFTs?

Some people view NFTs as cards and were bidding on the virtual future. Some people were skeptical and worrying that the NFT bubble might burst. Nonetheless, NFTs are providing creators of digital works a way to monetize their work product and receive real returns for their virtual work. Since NFTs are based on the Ethereum blockchain, maybe the other question that we ought to ask is – what is Ethereum and ETH’s long term growth potential?

Written by Ya-En Cheng, JD Candidate 2022, enrolled in Professor D'Agostino's Directed Reading: IP Innovation Clinic course 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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In Solid Oak Sketches, the defendants (video game developer Take-Two Interactive Software and their subsidiary 2K Sports) reproduced life-like depictions of NBA players and their tattoos in three installments of their popular video game franchise “NBA 2K”. The plaintiff (Solid Oak Sketches), having obtained the exclusive licencing rights to five of the tattoos that appear on three of NBA 2K’s playable characters, filed a suit for copyright infringement. The defendants motioned for summary judgement, which was granted by the Court on the basis that the defendants’ infringement was de minimus and that it constituted fair use. Furthermore, the Court determined that an implied non-exclusive licence may be found “.” Based on an assessment of the facts, the Court held that even if Solid Oak were able to establish copyright infringement, their claim must fail because the three NBA players in question received implied licences to use their tattoos as elements of their likenesses when they obtained their tattoos: (i) the Players each requested the creation of the Tattoos, (ii) the tattooists created the Tattoos and delivered them to the players by inking the designs onto their skin, and (iii) the tattooists intended the Players to copy and distribute the Tattoos as elements of their likeness, each knowing that the Players were likely to appear in public, on television, in commercials, or in other forms of media.

Although merely persuasive in Canada, this decision follows years of national discussion with respect to the reproduction of tattoos in television, movies, and video games. Many have been quick to point out that the notion that copyright protection extends to tattoo artists and not their human canvases is consistent with the Canadian , however, with most high-profile cases occurring outside of Canadian jurisdiction, the jury is still out when it comes to binding jurisprudence. When it comes to tattoo ownership, questions remain with respect to and , however, and has even been in relation to tattoo authorship by Mark D. Penner and Olivia McKenzie.

Solid Oak is a noteworthy case that may impact the development of Canadian copyright law. It is wise for courts to consider whether an implied licence exists when assessing claims for copyright infringement concerning the reproduction of tattoos, but there is still work to be done when it comes to qualifying what constitutes a likelihood of reproduction. An implied licence can be easily ascertained when the recipient of a tattoo is a celebrity, but the Court’s decision in Solid Oak Sketches does not lend itself to circumstances where the recipient of a tattoo does not expect to reproduce their likeness but subsequently does so. Parity is an essential�� policy element that should not be taken into consideration when developing the common law. Therefore, it may ideally follow that an implied licence to reproduce a tattoo as an element of one’s likeness is presumed for all individuals who decide to “get inked”, not just celebrities.

Written by Lamont Abramczyk, a second year JD Candidate at Osgoode Hall Law School. Lamont is also a Clinic Fellow at IP Osgoode Innovation Clinic.

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The plaintiffs, the Chapniks, own an architect-designed, multi-million dollar home in the Forest Hill neighbourhood of Toronto. In 2013, the defendants bought a house nearby and promptly began renovations. According to the plaintiffs, the renovated house looked “strikingly similar” to their home and the Chapniks commenced an infringement action.

Architectural works may be protected by copyright as an “artistic work”.[2] However, in asserting infringement claims regarding housing designs, homeowners (Chapniks included), face two significant obstacles. They are required to prove: (1) ownership in the copyright; and (2) that the defendants reproduced a substantial part of the expression.

Ownership

In order to succeed in an infringement action, the plaintiff must be the owner of the copyright. In Canada, the author of the work is the first owner.[3] With respect to architectural works, it is usually the architect who is the first owner of the copyright that subsists in the design of a house.[4] In the case of Hay v Sloan, the court stated, “[f]or copyright purposes, the owner of the architectural work of art is the author of the plans … [n]or does copyright pass to the owner of the building.”[5]

Similarly, in Chancellor v Oasis, the court concluded that it was the architect who was the owner of the copyright and not the owner of the building. The owner’s contribution was “limited to suggesting certain design elements in a general way”, while it was the architectural firm that implemented these suggestions into the design.[6]

Therefore, had the Chapniks’ case gone to trial, unless the architect assigned to them the copyright, it seems unlikely that the Chapniks could have succeeded since they are not the owners.

Reproducing a Substantial Part

Copyright provides the owner with the sole right to reproduce the work in a substantial part.[7] Copying is not necessarily infringement if what has been copied is not a substantial part of the original work.[8]

The Chapniks would likely have established copying. According to the Article, the trim, stonework and the shape of door were similar. Also, the defendants’ contractors allegedly were instructed to copy the architectural work. Finally, there is a causal connection with the original work since the two homes are located only 850 metres apart.[9]

The more difficult aspect of the claim is proving that the defendants reproduced a substantial part of the expression. It is trite law that copyright protects only expression and not ideas. However, when answering the question of whether copying is substantial, the assessor must take a holistic approach having regard to the quality and quantity of what was copied.[10] Excluding unprotectable ideas at the outset prevents this holistic approach.[11]

Upon the facts and photos provided in the Article, it is difficult to come to a firm conclusion on whether a substantial part of the expression was copied. When considering the alleged similarities between the two houses, it seems that some aspects are very common elements of architecture such as the trim colour and stonework. In Rains v Molea, the Court considered whether a painting of a crumpled piece of paper was infringed by a different artist also painting crumpled paper. The court found that although there were many similarities, these were common techniques used by artists and not capable of copyright protection.[12]

Several friends of the Chapniks had allegedly called to inform them of the copycat house. This would have bolstered their claim since when considering substantiality, “the perspective of a lay person in the intended audience for the works at issue is a useful one”.[13] Similarly, even though there are many differences between the houses, differences in the number of rooms and areas may not be enough to prevent judges from concluding that the substance of the architectural work has been copied.[14]

Conclusion

A homeowner asserting copyright in the design of their house as an architectural work will face difficulties due to issues of ownership and substantial reproduction. This appears to be a laudable result since approximately 84% of the Article’s readers believe that copyright should not subsist in the “look of your house”.[15]

William Chalmers��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 blog on a topic of their choice.

[1] Vjosa Isai, “This Forest Hill couple sued their neighbours for $2.5 million over a house they claim was renovated to look like theirs”, The Toronto Star (October 5, 2017), online: < > [Article].

[2] Copyright Act, RSC 1985, c C-42, s 2 [Copyright Act].

[3] Copyright Act, supra note 1, s 13(1).

[4] David Vaver, Intellectual Property Law: Copyright, Patents, Trade-marks (Toronto: Irwin Law Inc., 2011) at 138.

[5] Hay v Sloan (1957), 12 DLR (2d) 397 at para 7.

[6] Chancellor Management Inc. v Oasis Homes Ltd, 2002 ABQB 500 at para 65.

[7] Copyright Act, supra note 1, s 3(1).

[8] Ladbroke (Football), Ltd. v William Hill (Football), Ltd., [1964] 1 All ER 465 at 481,��per��Lord Pearce (HL).

[9] Gondos v Hardy (1982), 38 OR (2d) 555 at para 33 (ONSC).

[10] Cinar Corporation v Robinson, 2013 SCC 73 at para 26 [Cinar].

[11] Cinar, supra note 10 at para 36.

[12] Rains v Molea, 2013 ONSC 5016 at para 30.

[13] Cinar, supra note 10 at para 50.

[14] Kaffka v Mountain Side Developments Ltd. (1982), 62 CPR (2d) 157 at para 15 (BCSC).

[15] Article, supra note 1.

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MOVA was first developed in the early 2000’s by Rearden. The head of the incubator, Steve Perlman, put his long-time friend Greg LaSalle in charge of the project. LaSalle formed his own company, MO2, and transferred MOVA to it before selling the software to Digital Domain Holdings (DDH), a US visual effects studio. MOVA was transferred to DDH’s Chinese subsidiary, Shenzhenshi Haitiecheng Science and Technology (SHST).

��𲹰�����’s over the ownership of MOVA was with SHST in 2016. SHST initiated the proceedings, but Rearden argued that LaSalle had no right to sell MOVA to SHST in the first place. A federal court in San Francisco issued an injunction against SHST and all of their licencees (including DDH’s US subsidiary, Digital Domain 3.0 or DD3) for distributing and using MOVA.

In August 2017, the that Rearden officially owned MOVA, not DDH. Rearden is now going after the movie studios Disney, Fox, and Paramount for using the copies of MOVA that were illegitimately licensed to DD3. The studios have filed a ��𲹰�����’s suit, which was by Rearden.

One of ��𲹰�����’s arguments is that they own the copyright in the studio’s CG characters because 1) they own the output of their software, and 2) this output was incorporated into the films, thus making the films derivative works.

For output ownership, Rearden relies on two video game cases ( and ) where the courts ruled that the audiovisual output of computer programs is afforded copyright protection, even if the end user contributes to this output.

This is a questionable comparison to the current case because the nature of audiovisual output in a video game is significantly different from the output of a graphics design program. With interactive entertainment, the output is not intended to have any further use. Even when video game footage is used in subsequent works (like s), it is done so under licence. The content creator only owns the copyright in their footage and commentary, not the game. This is unlike the output of MOVA, where the 3D render output is intended to be used in further works.

Rearden also claims that they own MOVA’s output because the software does a “lion’s share” of the work required to produce the output. They rely on a US case, , in which the court ruled that the plaintiff software maker owned the output of their software because the end user only contributed single words or phrases, and this was considered “marginal” input.

Deciding who does the “lion’s share” of the work when producing a CG character is a difficult issue. To briefly explain the process of creating a CG character using MOVA, an actor wearing special makeup is filmed. This 2D recording is passed through MOVA, which synthesizes a 3D rendering of the face and head. This 3D model is then used as a template onto which animators add features like hair, colour, and wrinkles. Once this is complete, the 3D model is removed, leaving just the animated shell that we see in the movies.

So, it becomes a chicken-and-egg problem: without the software, there is no output, but without the acting and direction, there is no input to make the output. The analogy that the movie studios draw to Adobe Photoshop is quite apt because there is a clear distinction between the contribution of the artist and the contribution of the software, and in that case, it can hardly be said that the artist contributes “marginal” input. The software used in Torah was much simpler and may not offer the best comparison to the present case.

It will be interesting to see how the court decides the issue of derivative works. The movie studios argue that their CG characters and movies are not derivative works because they do not “substantially incorporate protected material from [a] pre-existing work” (quoting ). Rearden, on the other hand, argues that the CG characters and movies do incorporate their works (i.e., the output of their software). Even though the 3D template and related coding are taken out during the production process and do not appear in the movie, Rearden argues that because the facial motion is transferred from the 3D template to the CG character with “sub-millimeter precision,” the CG character is similar enough to constitute a derivative work. But how would that weigh against the fact that the CG character is also “substantially similar” to the original actor’s face and performance, which the studio owns?

Another important point is the substantial relief that Rearden is requesting. They want all infringing copies of MOVA output and the movies that contain them to be destroyed. Logistically, it is difficult to imagine what this would entail. There is no a guarantee that every copy of Guardians of the Galaxy can or will be destroyed. There is also the question of what will happen to clips of the movies that are being used by third parties. Would those have to be destroyed as well?

The Rearden case brings up some complex copyright issues, and it will be interesting to see whether the courts decide in favour of Rearden or the movie studios. A ruling for Rearden could have major implications on the way end users manage their copyright when using computer programs.

Alexandria Chun 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 blog on a topic of their choice.

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The entered the blockchain world to solve four problems facing the creative industry: (1) unclear ownership of intellectual property (IP), (2) inadequate data authenticity (which often leads to unfair distribution of proceeds), (3) the centralized governance of publishing, distribution and platform management (which can prevent quality content from reaching consumers), and (4) difficulty in converting work products to liquid assets such as cash.

So how can this technology help creative minds address the aforementioned problems? Last Fall, I attended the launch event of to talk to its developers and find out. is a decentralized solution that harnesses the combined power of Consortium Blockchain, Public Blockchain and Cross-chain Interoperability to address challenges with respect to ownership and rights to the resulting content.

Decentralization means that the control of any process or service, such as domain or content registration, does not to belong to a single person, organization or government. Rather, the process is distributed among all users to record and track ownership of content that cannot be erased or modified by third parties.

Consortium blockchain is a type of a hybrid between and .

Cross-chain technology allows two people holding tokens (or any other asset) on two different blockchains to trade directly and instantly without the risk of one party pulling out of the trade before its completion.

So how does Ink use this technology?

Firstly, as , an attorney at Gerard Fox Law, : “When IP rights holders register their works to a blockchain, the rights holders can ultimately end up with concrete evidence of ownership, which is free from tampering, because once a work has been registered to a blockchain, that information cannot ever be lost or changed. So, third parties can use the blockchain to see the complete chain of ownership of a work, including any licenses and assignments.” Overall, the system addresses a fundamental challenge in content creation by allowing the owner and consumer to trail content ownership.

Secondly, the aforementioned blockchain designs each serve a distinct technical purpose. Ink strategically chose to use consortium blockchain to limit operations to country-specific regions. They refer to this concept as the “”. Given that content creators are bound by their country’s unique legal frameworks, regulatory policies and even cultural norms, the design had to account for complications that might arise from operating in multiple jurisdictions by implementing this very concept.

But, if the technology is only operable within a given country, how can Ink fulfill its mission to “distribute creative work without ���dzܲԻ岹�������”? This is where cross-chain technology comes in and acts like a bridge that allows information and content to flow freely between public blockchain (Qtum) and Sovereign Consortium Blockchain. For example, once you produce content that adheres to domestic regulations including copyright law, you can secure it on the local sovereign consortium blockchain. The content then passes into the proprietary Cross-chain Protocol to reach various public blockchains and can be traded through the blockchain globally.

By creating a decentralized registration system that allows one to claim ownership within seconds and reach its users around the globe through the cross-chain protocol, Ink is set to tackle the concerns of content providers and facilitate the flow of innovative ideas. It seems clear to me that, as part of the emerging decentralized web, blockchain has the potential to revolutionize our understanding of content creation, registry, and dissemination by using a decentralized database for IP.

Ekin Ober is an IPilogue Editor and a JD/MBA student at Osgoode Hall Law School and the Schulich School of Business.

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