After discovering an interest in copyright law during my 2L year, I was fortunate enough to experience how policy makers practically apply the case law to everyday situations that impact stakeholder’s livelihoods and the broader Canadian cultural sector. I learned that, while Copyright policy makers have a difficult job balancing the interest of stakeholders,  stakeholder interests often overlap despite the breadth and specificity of the Copyright Act.

Canadian Copyright Law and Policy has a Robust Scope

While we may think of copyright in its most basic terms textbooks to songs on the radio, it is important to remember that the Copyright Act also presents a legislative framework for a complex management system. As our society becomes more dependent on technology and the global marketplace is more focused on Artificial Intelligence (AI), gaps in the Act become more apparent. All parties agree that Canada requires technologically neutral legislation to proactively address these challenges. Our industries, from scientific research institutions, to tech-start-ups to creative artists, must have access to and understand an Act that is not only compliant with our international trading obligations, but also competitive on an international scale.

Re- Thinking Copyright Stakeholders in 2020

In law school, some classes encourage students to think of copyright using the balance: a balance between promoting the public interest in the encouragement and dissemination of works of the arts and intellect and obtaining a just reward for the creator. Or, more accurately, to prevent someone other than the creator from appropriating whatever benefits may be generated (at para 30). Justice Binnie held that the proper balance amongst these and other public policy objectives lies not only in recognizing the creator’s rights but in giving due weight to their limited nature. In other words, it would be insufficient to overcompensate artists and authors for the right of reproduction as it would be self-defeating to undercompensate them (at para 21). Using this balance as a justification, different lobbying interests have emerged. A dichotomy of users versus authors has emerged.

Canadian Heritage allowed me to explore new perspectives. I gained an appreciation for the work of Canadian authors and content creators and how some artists have experienced a decline in the digital era. These case studies emphasized why this dichotomy is false because creators or authors are users. For example, Content generators develop original works using inspiration from previously published works. Independent journalists may be dependent on networks such as Facebook to research their pieces, and then subsequently publish and share their finished articles on the platform to secure future works. However, these dissemination practices may offend their publishers' (or owner’s) copyrights in the work, further diminishing their incomes in this digital age. Copyright policy, therefore, must re-balance between the tech giants, the “Super users” who have a monopoly on their platform users’ data and the corporate copyright owners, and the researcher, AI developer or Canadian public who require reliable news and a civil space to discuss ideas. These groups are particularly critical during the age of a pandemic. These users, in turn, become authors and creators who create dynamic content and innovation as a part of a globalized marketplace.

Written by Natalie Chodoriwsky, JD Candidate 2021, enrolled in Professors D’Agostino and Vaver 2020/2021 IP & Technology Law Intensive Program at Osgoode Hall Law School. As part of the course requirements, students were asked to write a reflective blog on their internship experience.

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The panel featured Professor Giuseppina D’Agostino as moderator, who is a Professor at Osgoode Hall Law School and founder and director of , the Intellectual Property Law and Technology Program at the school. From the(SOCAN), Janet Chong was the second speaker, representing Legal Counsel at Canada’s largest collective managing music rights. Jason J. Kee also spoke from the perspective of Government Affairs and Public Policy Counsel of Google Canada, and from Rogers Communications, Kristina Milbourn gave her legal views as the Director of Copyright & Broadband. Erin Finlay also shared some thoughts on the issues as a Partner with the firm Stohn Hay Cafazzo Dembroski Richmond LLP, specializing in the areas of entertainment law, copyright, privacy, and broadcast regulatory and cultural policy.

The discussion began with Professor D’Agostino summarizing the broad background of the balance principle that has defined the copyright legal landscape since its debut in 2002. Professor D’Agostino noted the concept as nothing new, spanning previous centuries of legal debate between stakeholders of the rights of authorship and reproduction of creative works internationally. After Theberge, the principle continued its influence throughout many more Supreme Court cases that Professor D’Agostino highlighted, including , , , all the way up to as recently as this year with . in 2019.

Ms. Chong followed with the perspective from SOCAN, a major Canadian music collective that cooperates with hundreds of thousands of music creators and businesses worldwide. She mentions the presence of SOCAN in Canada’s most influential IP cases within the past two decades, including three that were within the pentalogy of Supreme Court copyright cases of 2012. In terms of SOCAN’s position on the copyright balance in practice, Binnie’s principle is not much of an influence on her general work of advocating for fair rates and royalties for creators, and providing the end users with music services. But in terms of policy, the balance principle does shape the discourse in strengthening SOCAN’s lobbying efforts.

Erin Finlay provided her interpretation of the balance principle that she claims has lost its vigour over recent years. She emphasized the public interest as a balance of three factors, rather than it being misinterpreted as polarized between creator and user. There is a public interest in three things, claims Finlay: encouraging creation and encouraging dissemination of creative works, and obtaining a just reward for creative works. In her business, the principles “fair dealing” and “substantial part”, historic in our copyright law, are almost never relied on when the industry is creating entertainment products. She claims, instead, that the majority of her work is about collective bargaining, negotiations on copyright ownership, and rates licensing, all of which seeks the balance between creator, producer, and end user.

Kristina Milbourn then discussed how a company like Rogers Communications thinks about the concept of balance in our copyright law through its many branches. She notes that a massive corporation like Rogers shouldn’t be considered as a monolith when considering balance principles of our copyright law. Rather, as a parent company to a series of businesses, sometimes the interests align, and sometimes they don’t. This would mean that considerations of �ճ����������’s principles would vary from the perspective of managing Television stations, to Internet services, to Broadcast Distribution Undertakings (BDUs), and depends on their interests at the time, which may or may not conflict.

Google Canada shared its views on the policy side through Jason Kee as counsel of government affairs. From a global perspective, Kee notes that Theberge is not dissimilar to international norms, and the interpretation of a polarized balance is also missing the mark, as Finlay has noted. He suggests that there are human rights issues at stake in terms of freedom and expression and right to remuneration, which may both align despite the discourse on the tensions that exists between them. What Kee emphasizes the most is not that balance should or should not be sought, as this is unanimously agreed upon by the national and international community. Instead, Kee stresses the difficulty of putting a defined quantum, or amount deserving for a certain party, in terms of payments to owners of copyrights who have their works circulating online.

Following each panelist’s presentation, questions were presented by Professor D’Agostino, and debate ensued, which revolved around the subjects previously covered, including how to properly remunerate creators, the notion of access and the balance principle, the international approach to solutions, and optimism for the future. As the discussion continued to spark debate amongst the distinguished panelists, it is certain that the topic will have a very prevalent place in our legal discourse on copyright law in Canada for years and decades ahead. It was certainly a successful inaugural seminar presentation by the Copyright Society, and I wish them the best on their continuing and much-needed presence in our legal community.

Written by Sebastian Romanutti, who is in his third year at Osgoode Hall Law School. This semester Sebastian was enrolled in Professors D’Agostino and Vaver 2020/2021 IP & Technology Law Intensive Program at Osgoode Hall Law School and was a Legal Intern at SOCAN.

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IP Day was a phenomenal experience, especially as a student having the opportunity to meet leaders in the IP field and many of the judges before whom IP cases often come. I was especially excited to attend the Judges’ Dinner, which honoured Justice Roger T. Hughes. The CBA’s Intellectual Property section organised a fantastic event and I certainly hope to attend many more times in the future.

“Just Laugh It Off: Trademark Parody and the Expansion of User Rights” will appear in the upcoming issue of the . The introduction to the paper is excerpted below.

In Canada, the concept of fair dealing has been described as a “user’s right,”[1] as have the other exceptions in the Copyright Act [2]. In CCH Canadian Ltd v Law Society of Upper Canada, the Supreme Court of Canada explained that a non-restrictive interpretation of these rights is integral to maintaining a proper balance “between the rights of a copyright owner and users’ interests.”[3] Previously, the Court recognised that such a balance is a fundamental element of copyright law, stating in �ճ�é��������� v Galerie d'Art du Petit Champlain inc that there is a “balance between promoting the public interest in the encouragement and dissemination of works of the arts and intellect and obtaining a just reward for the creator.”[4] Indeed, this balance has been a feature of copyright cases decided after �ճ�é��������� and CCH.[5] Thus, the conceptualization of the intellectual property rights in copyright operate within the context of the competing interests of creators/owners of works and those third parties who wish to use the works.

The idea of balance between owners of intellectual property and the public’s interests in using that property is not restricted to copyright. The Supreme Court has said that the “patent system is based on a ‘bargain’ … the inventor is granted exclusive rights in a new and useful invention for a limited period in exchange for disclosure of the invention so that society can benefit from this knowledge.”[6] Copyright and patent law offer a trade-off of sorts between the monopolies they grant and the public interest in using the fruits of those monopolies in some way. Of course, there is tension between creators/owners and users because of this balancing act. This struggle led the Federal Court of Appeal to cite the nineteenth-century British case Hanfstaengl v Newnes[7] with approval:

The protection of authors, whether of inventions, works of art, or of literary compositions, is the object to be attained by all patent and copyright laws … On the other hand, care must always be taken not to allow them to be made instruments of oppression and extortion.[8]

Intellectual property law, then, must take note of those who use what it protects and should not extend beyond its prescribed boundaries.

We therefore have a tense balance and a bargain in intellectual property law. Fair dealing is an example of both legislation and courts accounting for this fact. What is conspicuously absent from the law, however, is any express acknowledgement of user rights in trademark law. Trademarks are intellectual property, even if they are “something of an anomaly,”[9] and they are often dealt with by third parties. Trademarks depicted by non-owners might appear in a number of ways, such as in paintings of a university football team,[10] on union literature criticising an employer,[11] or even parodying a canned luncheon meat in a puppet film.[12] Yet, the law of trademarks does not explicitly recognise these dealings or uses as fair (or at least potentially fair) – there is no set of fair dealing provisions for research, parody, criticism, or news reporting[13] in the Trade-marks Act.[14] The absence of such provisions in the trademark realm is indicative of a lack of balance between the public interest and intellectual property owners’ rights. There is the potential for owners to attempt to extend their rights beyond “the purpose of distinguishing or so as to distinguish goods or services.”[15] As Professor David Vaver has noted, maintaining a strong public domain benefits competition, innovation, consumer markets, and the public interest. Intellectual property protection must therefore be carefully circumscribed and should not extend beyond its specified limits.[16] The lack of circumscription for trademarks invites overreach (the potential oppression and extortion mentioned in Hanfstaengl), including in the area of free expression, and the lack of acknowledgement of users creates imbalance. Consequently, it is time that Canadian trademark law recognise a form of fair dealing.

Sebastian Beck-Watt is Senior Editor of the IPilogue and a graduate of Osgoode Hall Law School.

[1] CCH Canadian Ltd v Law Society of Upper Canada, 2004 SCC 13, [2004] 1 SCR 339, at para 48 [CCH].

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

[3] CCH, ibid. at [48]

[4] �ճ�é��������� v Galerie d'Art du Petit Champlain inc, 2002 SCC 34, [2002] 2 SCR 336, at para 30 [�ճ�é���������].

[5] David Vaver, “Copyright Defenses as User Rights” (2013) 60:4 J.Copyright Soc'y USA 661, at 669.

[6] Teva Canada Ltd v Pfizer Canada Inc, 2012 SCC 60, [2012] 3 SCR 625, at para 32.

[7] [1894] 3 Ch 109 (CA), at 128.

[8] Canadian Assn of Broadcasters v Society of Composers, Authors and Music Publishers of Canada, [1994] FCJ No 1540, 58 CPR (3d) 190 (FCA), at para 13.

[9] Mattel, Inc v 3894207 Canada Inc, 2006 SCC 22, [2006] 1 SCR 772, at para 21 [Mattel].

[10] The University of Alabama Board of Trustees v New Life Art, Inc, Daniel A Moore, 683 F3d 1266, 1269–70 (11th Cir 2012) [Moore].

[11] Cie générale des établissements Michelin - Michelin & Cie v. CAW – Canada, [1997] 2 FC 306, [1996] FCJ No. 1685 (FCT) [Michelin].

[12] Hormel Foods Corp v Jim Henson Prods, 73 F3d 497 (2d Cir 1996) [Hormel].

[13] Copyright Act, supra note 2, s 29-29.2.

[14] RSC 1985, c T-13 [TM Act].

[15] TM Act, supra note 14, s 2(a).

[16] David Vaver, Intellectual Property Law, 2d ed (Toronto: Irwin, 2011) at 23 [Vaver, IP Law].

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This summer, two proceedings were commenced in New 91��ɫ and California against Warner/Chappell Music, which had to “Happy Birthday to You” in 1988 and collects over a million dollars annually in royalties for the use of the song. Just last month, U.S. District Judge George H. King let the case proceed in , dealing first with the issue of whether Warner/Chappell owns copyright in the song.

No doubt the plaintiffs have read the published by Robert Brauneis, professor of law at George Washington University Law School, contesting copyright in “Happy Birthday to You” through an extensive analysis of evidence spanning nearly 120 years. There is no contention that the melody of the song was authored and first published in 1894 by two sisters, Mildred and Patty Hill, both teachers who put together a collection called “Song Stories for the Kindergarten”. The melody of what is now known as “Happy Birthday to You” was published in this collection under the title and lyrics “Good Morning to You.” What is less clear is who first combined the melody of “Good Morning to You” with the “Happy Birthday” lyrics, authoring the song as we now know it. This combination of the melody and new lyrics constitutes a new derivative work, itself subject to U.S. copyright.

Brauneis’s study challenges the subsistence of copyright in “Happy Birthday to You” on two main grounds. First, the evidence to support the notion that Mildred and Patty Hill were the ones to combine their melody with the “Happy Birthday” lyrics is not sufficient to find that they are the authors of the derivative work, “Happy Birthday to You.” If they are not the authors of this new work, then the 1935 copyright registration on which Warner/Chappell bases its claim to ownership is unauthorized and invalid. Second, even if the song was properly registered in 1935, copyright would have expired 28 years later, unless it were validly renewed. Brauneis contends that the renewal filed in 1962 only covered a particular arrangement of the song, and not the music and lyrics themselves.

Copyright currently offers some of the broadest protection for intellectual property, much longer than the term for patents, and for a much broader range of works and activities than trade-mark law covers. It certainly seems absurd, , that you would need permission or a licence from Warner/Chappell “if you posted a video of your kid’s first birthday on the Web.” This absurdity was cited by Justice Breyer of the U.S. Supreme Court in his dissenting opinion in , the case that ruled the retroactive twenty-year extension of copyright protection in the United States to be constitutional.

What significance has this saga for Canadian copyright law? If Mildred and Patty Hill are the joint authors of “Happy Birthday to You,” copyright protection for the song – on the assumption that the combination of tune and lyrics would, as in the US, have a separate – would have expired in 1996, 50 years after the death of Patty Hill, the work’s last surviving author. Even if copyright subsisted, a YouTube video of little Larry’s first birthday would likely be permitted under the new exception for User Generated Content enacted in 2012 by the . In that year, the Supreme Court of Canada also made it clear that users have rights, and these rights must be broadly interpreted. Much of the recent discussion of user rights has focused on fair dealing and the other exceptions to infringement in the Copyright Act. “Happy Birthday to You” serves as a reminder that the term of copyright and its expiry are also integral to the maintenance of the balance in promoting the dissemination of creative work while generating incentives for creators. When copyright protection extends so far beyond the life of the author, who really stands to benefit from these incentives? Perhaps the author’s descendants, but more commonly, a corporate owner like Warner/Chappell, one of the largest music publishers in the world.

Nevertheless, if the convoluted history of this simple song can be unwound and Warner/Chappell’s claim to copyright in “Happy Birthday to You” is defeated, the movement to restrict the term of copyright will lose one of its best, and certainly its most popular, poster children.

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