Some of us have engaged in this practice for years, but never in the context of a formal “notice and notice” regime implemented by the Copyright Modernization Act at the start of the new year. So what exactly does this regime entail and how might it affect our online viewing habits?

“Notice and notice” regime

The is a uniquely Canadian approach and has, in fact, been operating in an unofficial capacity for over ten years before becoming law on January 1, 2015. The regime requires internet intermediaries, such as Internet Service Providers (ISPs), to forward infringement notices sent by copyright owners to subscribers whose internet addresses have been identified as sources of possible infringement. These notices must include details on the claimant, the copyright works at issue and the alleged infringing activity.

If the intermediary fails to forward the notification, it must supply an explanation or face damages of up to $10,000. Intermediaries are also required to retain information on the subscriber for six to twelve months.

The notice and notice regime as it affects online viewership

So does this law apply to Internet video streaming? And if so, how?

It appears that very few legal concerns arise with regard to authorized online video services operating in Canada. Examples include Netflix Canada, Shomi, CraveTV, YouTube, and streaming videos that originate directly from broadcasters or content creators. Viewers who stream from these sites are unlikely to be forwarded notices of infringement because these content providers have obtained permission to make the copyrighted content available or have made the content easily removable by rights owners.

Next up for consideration are the authorized services not currently serving the Canadian market. Think Hulu, Amazon Prime, and the US version of Netflix. Here, the analysis gets a bit tricky.

Canadian users who access this content by circumventing "geo-blocks" (a method by which online service providers block users outside a particular geographic area from accessing their content) via a “virtual private network” (VPN) are likely violating the service provider's terms of service. But that is not all.

Geo-blocks could potentially be considered technological protection measures (TPMs). A TPM is any effective technology, device or component that controls access to a work whose use is authorized by the copyright owner, or restricts the exercise of an exclusive right held by the copyright owner ( of the Copyright Act). It is a prohibition to circumvent a TPM (), and the copyright owner is entitled to remedies against the infringing individual ().

This being the case, circumvention of a geo-block via a VPN to stream copyright protected material might constitute an infringement and could result in the service of an infringement notice.

Finally, there are the unauthorized streaming websites that offer free content without having obtained permission from copyright owners. This is another potential scenario in which infringement can occur.

Typically, pursuant to of the Copyright Act, a person who, for the purposes of allowing the telecommunication of a work or other subject-matter through the Internet, provides digital memory in which another person stores the work does not, by virtue of that act alone, infringe copyright in the work. However, these unauthorized websites, because they are “enabling” infringement, can be shut down pursuant to  if they are located in Canada.

As for users of such websites, it is currently uncertain whether their act of streaming video would be found to infringe. Under , a temporary reproduction of a copyright protected work, if completed for technical reasons, is not an infringement. When streaming a video, either a full-length temporary copy is created on your computer via the caching process (and will be deleted the moment the video is closed), or the data is deleted as you watch. Thus, video streaming does not involve actually downloading a ���������Ա�Գ������DZ�� of the work; at most, it merely creates a temporary�����DZ��.

However, in , the Federal Court of Appeal held that “ephemeral” copies -- reproductions that exist solely to facilitate a technological operation by which audiovisual work is created or broadcast -- are, if unauthorized, an infringement of the copyright holder’s rights.

Although this holding was made in the context of broadcasting, it may be applicable in the streaming context. As leave to appeal to the Supreme Court of Canada was granted and oral arguments were recently on March 16th, we will soon be hearing the SCC's opinion on the matter.

The jurisprudence on temporary reproductions in other jurisdictions appear just as unsettled. For instance, the that there is no violation when “a reproduction manifests itself so fleetingly that it cannot be copied, perceived or communicated,” despite some courts holding that . Overseas, meanwhile, the Court of Justice of the European Union (CJEU) ruled on June 5, 2014 that .

However, even if viewers are found to have infringed, the only immediate recourse available to the rights holder appears to be sending a notice of claimed infringement to the host site pursuant to .

Bottom Line

To be safe, it might be wise to stick to your authorized Canadian content providers. But if you are unsatisfied with the offerings of those sites and contemplate streaming an episode or two of your favourite show from an unauthorized source, tread with caution. You just might find yourself breaking bad.

Sally Kang is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

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A recent filed in the Central District of California helps to illustrate the concept of trade dress and the scope of its legal power. The plaintiff, Nicole Lee, a handbag and accessories company based in Los Angeles, filed a complaint on September 29 alleging trade dress infringement against several handbag companies.

Despite holding various copyrights to the artwork and features of its handbags, as well as trademarks for its logo and other features, these rights do not protect the handbags as a whole. Trade dress, on the other hand, is able to ensure protection of the handbags in their entirety.

So, what exactly is trade dress? The term generally refers to visual characteristics of a product or its packaging that identify to consumers the source of that particular product. Essentially, it is the total image, design, and appearance of a product or its packaging. The US Supreme Court noted in that trade dress may include features such as “size, shape, color or color combinations, texture, [or] graphics”. As such, a handbag easily falls within the ambit of trade dress.

Both the US and Canada acknowledge trade dress as a valid right; there are both similarities and differences in the jurisprudence of each jurisdiction.

Statutory Authority

A statutory cause of action for trade dress infringement is provided by both American and Canadian legislation. For the former, creates a federal cause of action for unfair competition. The provision prohibits the sale of goods by use of:

any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, which is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person.

In Canada, a statutory cause of action for trade dress infringement is legitimated by a conjunctive reading of sections 2, 7(b) and 7(c) of the . Section 2 defines a trademark as including a “distinguishing guise” which is the "shaping of wares or their containers" or "a mode of wrapping or packaging wares." A trade dress can thus be registered with the Trademarks Office as a distinguishing guise and its owner can enforce its right as would any other trademark owner. Sections 7(b) and 7(c) provide a statutory cause of action for all trademarks.

Registration Requirements

In both the US and Canada, for a trade dress to be registered, it must be both non-functional and distinctive. Generally, a trade dress is not “functional” if its configuration of shapes, designs, colours or materials does not serve a utility or function outside of creating recognition in the consumer’s mind. “Distinctive” means that consumers perceive a trade dress as identifying a product’s source; in other words, there is an association between the trade dress and a source in the consumer's mind.

Unregistered Trade Dress

An unregistered trade dress is still subject to legal protection. In the US, a claim under section 43(a) of the Lanham Act is not circumscribed to registered trade dresses. The test articulated in Two Pesos for finding a trade dress infringement requires a plaintiff to establish that:

1) the design is non-functional;

2) the design is distinctive; and

3) there is a likelihood of confusion.

In Canada, unregistered trade dresses can be protected at common law through the tort of passing off. The classic test of passing off (see ) requires a plaintiff to demonstrate:

1) existence of goodwill in the trade dress;

2) deception of the public due to a misrepresentation; and

3) actual or potential damage to the plaintiff.

Additionally, a plaintiff must show the design to be non-functional.

Does Nicole Lee have a case?

Nicole Lee claims it owns trade dress in its designs, which consists of an “artistic depiction of a stylish woman with a doll-like face” combined with other Nicole Lee-associated elements such as, but not limited to, “a pyramid-shaped lock with the brand name in red” and “beige lining with small graphics and brand name”.

The alleged trade dress is not registered, but as mentioned above, this does not bar legal protection or right to bring a legal action.

In its complaint, the plaintiff claims that its trade dress is non-functional and distinctive as “[t]he appearance, nature and mood of [the trade dress] are of such an unusual design that a customer would immediately rely on them to ascertain the source of the product”. The presence of confusion is also alleged as the defendants manufactured and sold copies of the plaintiff’s handbags, sometimes “with confusing and misleading references to #NicoleLee or Brand: Nicole Lee.”

Based on the contents of the complaint, it seems that so long as Nicole Lee is able to prove all of its allegations at trial, it may be well on its way to making out a valid claim for trade dress infringement under US law. If the proceedings were to take place in a Canadian court, the company could successfully establish a passing off claim so long as it can prove the asserted non-functionality, goodwill in the trade dress, deception of public, and the damages it believes to be in excess of $5,000,000.

Sally Kang is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

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