Serena Nath is an IPilogue Writer and a rising 2L JD candidate at Osgoode Hall Law School.

Typically, the name “Vogue” evokes the highly popular fashion and lifestyle magazine or the song “Vogue” by Madonna. But the original “Vogue” actually refers to the in Cornwall, and named after this village is a pub. However, for Condé Nast, the publisher of Vogue the magazine, having a pub called “Vogue” was an issue.

Vogue, the village pub, has existed for approximately 200 years and Vogue, the magazine, has only existed for about 130 years. Yet to ask Vogue, the pub, to change its name. In a letter sent to the pub at the beginning of May 2022, Conde Nast threated to sue the pub over its name, stating that Condé Nast is the proprietor of the Vogue mark. Condé Nast claimed that the pub’s name could “cause problems” because people may become confused and associate the pub with the magazine. The letter also stated that the pub manager had to reply within seven days, otherwise Condé Nast would take remedial action.

The pub manager, Mark Graham, was not terribly bothered by the letter, and in fact found it “hilariously funny.” In , Mr. Graham helpfully pointed out that the pub predates the magazine and the village is even older than the pub. Further, when the name “Vogue” was chosen for the magazine, Condé Nast did not seek permission from the village, the “real Vogue” as Mr. Graham states, to use the name. In the end, Condé Nast offered the pub an apology, admitting that Mr. Graham was correct and that they in this instance.

This case, a clear David versus Goliath situation, illustrates key access to justice issues in intellectual property law, and even more generally, in law as a whole. Although this case ended up in victory for the small pub, before Mr. Graham sent a reply to Condé Nast, he considered submitting a counterclaim. If he had countered the claim, it would have likely been a lengthy battle in which the pub may not have been victorious, despite both the village and pub existing long before the creation of “Vogue” the magazine. Condé Nast clearly has many more resources to help them fight such a battle. This case could have led to including, but not limited to, the pub running out of financial resources midway through litigation or the pub feeling pressured into a settlement. Sometimes a non-legal response can be the way to resolve these issues and avoid a costly legal problem for either party.

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

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

Sparks Fly

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

Look What You Made Me Do

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

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

Everything Has Changed

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

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

End Game

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

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

In April 2022, the federal government released its . This budget proposal included proposed changes to Canada’s . One of the proposed changes aimed to reform legislation regarding educational uses of copyright. In particular, the federal government pledged to amend the Copyright Act to protect and ensure the longevity of the educational publishing industry.

Support for the Proposed Amendments

Many in the field of education publishing saw these proposed changes as the holy grail they have desperately been searching for since the 2012 amendments to the Copyright Act which . The 2012 amendments resulted in a loophole that allowed for widespread photocopying at schools and post-secondary institutions without signing and paying for licences for copied educational materials. This resulted in losses of approximately $200 million in income for the Canadian writing and publishing industry, which effectively destroyed the industry. Thus, when the proposed federal budget announced the government’s urgent intentions to create a sustainable educational publishing industry, it is understandable why . Additionally, because of the lack of payment to the educational publishing industry, there has been a to develop new technologies in this industry, particularly regarding digital educational materials. Thus, many are hopeful that the proposed protection to the educational publishing industry will also incentivize the industry to now innovate to keep up with current times and changing curriculum.

Opposition for the Proposed Amendments

On the other hand, the proposed changes to the Canadian Copyright Act have also faced criticism from Canadian intellectual property scholars. In an addressed to the Federal government, 25 intellectual property scholars from across Canada have voiced their concerns regarding enacting these changes under the federal budget and instead urge the Federal government to enact any changes via the regular legislative process. The group argued that any changes may “throw off the balance between copyright holders and user rights, particularly in education.” Additionally, the group cautions against believing the story regarding lost profits from the Canadian educational publishing industry due to the 2012 amendments, and instead asked the government to review “compelling evidence” before taking any action. Thirdly, the group argued that if amendments proceed through the federal budget, they may be inconsistent with constitutional principles. The group was concerned that the pledged amendments would exceed Parliament’s legislative authority over copyright law and may intrude into the education sector, which is under provincial jurisdiction. Finally, they also warned that enacting the amending legislation through the federal budget is likely to result in a lack of review and democratic debate over the legislation.

Reconciling the Two Views

In my opinion, I can understand the scholars’ views of wanting to ensure constitutional compatibility, proper review of legislation, and a democratic debate. However, I also recognize the sense of urgency from the Canadian educational publishing industry. I believe that the publishing industry may be on the verge of a timely death, with many content creators not getting paid and the education system potentially suffering due to a lack of innovation in the educational publishing community. If any amendments were to occur via the regular legislative process, this may delay any detrimental effects to the educational publishing industry. It is unclear how this balance can be achieved, but I welcome any suggestions, thoughts and fresh perspectives in the comments section.

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Beginning by acknowledging the recent “seismic shifts in the publishing industry,” Mr. Pepper added that these changes were the result of numerous factors – including, but not limited to the market trends started by online booksellers like Amazon, and the “conglomeratization,” or the phenomena of larger book publishers buying up smaller ones. A third factor, according to Mr. Pepper, has been the decline of traditional book media itself – where the coverage of noteworthy books just isn’t done as often anymore. Due to the economic limitations and readership crises it faces, the newspaper industry doesn’t seem to have as much print space as it used to. All along, the Internet has stepped in to fill the physical printer’s shoes, and it seems that publishing houses, and by extension, the larger industry itself, has turned to the World Wide Web for the marketing, dissemination and sale of books. Mr. Pepper’s message was that books themselves are not in any danger of disappearing; it is merely the means of their conveyance to the world that are changing, attuned as the industry is to the needs of an increasingly intangible world.

E-books have also been instrumental in opening books, and specifically, the long form novel to readers across generations, according to Mr. Pepper. The e-book, by making its home on tablets and e-readers across the country, has become an enabler of the written word, rather than its arch nemesis. “People who would have never thought about going into a book store are now reading, through e-books,” noted Mr. Pepper. Ultimately, it seems that the novel itself is an undying art form, and e-books and online media are only serving to pique the interest of a previously untapped audience.

On the legal side, Mr. Pepper emphasized that the book publishers in general are concerned about the online piracy of books, and the general consensus is that the author’s copyright in the work should be protected; this was consistent with Mr. Pepper’s earlier hat-tip to authors as being the “ones with skin in the game.” Using the music industry’s handling of piracy as an example, Mr. Pepper stated that publishing industry’s management of similar issues has to be different, mostly because the target pirates are, in themselves, different. “Teenagers do not pirate War and Peace like they pirate music,” said Mr. Pepper, while also reminding the audience that, at heart, both industries have one common goal, which is to protect copyrighted material.

The talk then turned into an interactive discussion, since Mr. Pepper seemed eager to understand the collective psyche of the people present in the room, and opened the floor up by shooting an inquiry of his own to the audience, asking, “Where do you find your books? What do you read? And what do you discuss around books?” He then patiently answered queries for over an hour. The range of questions asked were certainly reflective of the audience, which included students, librarians, writers, lawyers and members of authors groups. Mr. Pepper first addressed the question of the publishing industry’s relationship with “entrepreneur authors,” or those writers who already have a sizeable audience before being signed onto a publisher’s roster. He pointed out that while a strong online following built through social media can be a definite asset to an author’s print sales, he also believed that the publisher-author relationship was defined by other factors such as the financial security, marketing and editing support that the former provided to the latter, implying that social media and self-marketing techniques are often lacking in these functions. Some aspects of the traditional mechanism, such as the acquisition of books and the publishing process are still relevant, and are becoming a part of the e-book industry as well. When asked if the current publishing model should change, especially since the business side of it (a fixed price for a copy) might not always mesh well with the technology (an e-book is tethered to the device it is attached to and thus, limited in distribution potential), Mr. Pepper admitted that while there are emerging challenges to the current model, certain core aspects should remain unchanged, and the industry’s “flux period” as it now is, would need to rely on “tried and true formula[e]” to navigate the changing landscape of the Canadian publishing industry.

Editor's Note: A link to a recording of Mr. Pepper's talk will be made available soon in the .

Mekhala Chaubal is a JD candidate at Osgoode Hall Law School.

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IP Osgoode is proud to present our winter speaker series. In the last five years book publishing has probably gone through more change and upheaval than the previous twenty years combined. Douglas Pepper, a veteran of the publishing industry, will talk about those changes and the effects they’ve had on all elements of the book world, and perhaps make a few predictions. Although, according to Mr. Pepper, trying to predict anything in the book industry these days, even on a quarterly basis, may be a fool’s game.

Details:

"Books Are Dead. Long Live Books!" - February 13, 12:30pm-2:00pm, Room 1014, Osgoode Hall Law School, 91��ɫ, 4700 Keele St, Toronto, Canada. Please RSVP to , Event Code: Pepper, by Tuesday February 12. Lunch will be served. All are welcome. Click for details.

Douglas Pepper: Douglas Pepper has been in the publishing industry for 28 years, first as the first editor at Random House of Canada’s nascent publishing program, then in New 91��ɫ as a Vice President and Senior Editor at Crown, a division of Random House, Inc. He moved back to Canada to become the President and Publisher of McClelland & Stewart in 2004, and most recently is founding publisher of his own non-fiction imprint, Signal/McClelland & Stewart, a division of Random House of Canada. He is a graduate of the University of Toronto and The Radcliffe Publishing Procedures program at Harvard, and grew up in Toronto. The authors he has published include Carol Shields, Jimmy Breslin, Michael Cunningham, Julian Barnes, Peter Carey, Christopher Buckley, Samantha Nutt, Jonathan Ames, Conrad Black, Ann Coulter, Christopher Hitchens, Alain de Botton, Simon Shama, Anne Applebaum, and many others. He lives in Toronto with his wife and two children.

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In June, the European Publishing commission delivered the to the European Commission. The declaration has , most of which are German publishers but also a few international heavy hitters such as Dow Jones and Newscorp. The publishers advocate that they should be able to control who has access to their sites and what they can do with them. This comes in the wake of in Europe and elsewhere concerning Google News and similar aggregators. News aggregators typically don't create any original content themselves but rather crawl the web looking for stories to link to. Google then generates revenue by harvesting information and selling targeted online ad space on its search pages, none of which it shares with the papers it links to. Publishers argue this is creating a music industry-like problem where people get their content for free and only the search engines profit. Furthermore, with a near-monopoly in the online ad-space market Google could theoretically give preferential treatment to the stories and sites that generate the most revenue.

Google responded to the Hamburg Declaration with a post on its own . The post points out that there is a simple technical fix that has been around for years to stop search engines from indexing pages: The “robots.txt” method. Webmasters simply have to insert two short lines of code into their sites in order to block web-crawling robots from searching them. The post goes on to criticize the publishers’ proposals, saying that they would “fundamentally change – for the worse – The way the web works.”

So, if there’s such a simple method for blocking Google and its ilk, why are the publishers so upset? It really comes down to them wanting to enjoy the best of both worlds. On the one hand, they want (or perhaps need) to be indexed by search engines. Millions of people get their news via aggregators, driving up the publishers’ own traffic and readership. Yet, on the other hand they want Google to pay royalties for the privilege of linking to their sites. The publishers don’t want to block Google, they want Google to start coughing up.

Whether the publishers realize it or not, what they are asking for would indeed change the web for the worse. It would transform Google's role from that of an open, automated search engine into a discerning news distributor. Furthermore, the implications it has for the rest of the net are severe. Should every website have to pay the target site whenever they post a link? Sorry newspaper publishers, but I’m with Google on this one: If you want your sites to be publicly accessible you need to take the good with the bad.

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