Entitled "Can the Canadian UGC Exception Be Transplanted Abroad?", this article builds on the excellent  on the international law aspects of the Canadian UGC exception chaired by Prof. David Vaver. The panel also featured presentations by Barry Sookman, a partner of the law firm of McCarthy Tétrault, and Prof. Joost Blom of the Faculty of Law of the University of British Columbia.

Although the panel presenters examined the international law aspects of section 29.21, including its compliance with the Berne Convention and the WTO TRIPS Agreement, one issue that has not been covered much is whether this exception would serve as an ideal model for other jurisdictions that are now undertaking digital copyright reform. Using Hong Kong as an example, my forthcoming article will argue that the Canadian UGC exception, with appropriate modifications, can be—and should be—transplanted abroad.

This article begins by discussing the efforts by the Hong Kong government to transplant copyright laws from abroad as part of its digital copyright reform. It further examines the benefits and drawbacks of legal transplants. Using the US Digital Millennium Copyright Act of 1998 as a point of comparison, this article argues that the Canadian UGC exception provides a timely and attractive model for legal transplant.

The article then discusses specifically the UGC exception proposal I submitted to the Hong Kong government. Focusing on two major aspects of legal transplant—modelling and adaptation—it discusses the policy choices the submission considered. It also addresses the key objections raised by copyright holders and their industry groups, in particular their claim that the Canadian UGC exception may not comply with the TRIPS Agreement.

This article concludes by recounting the Hong Kong government’s recently-released  on the parody consultation, which sadly echoed the concerns raised by copyright holders and their industry groups. Although I strongly disagree with the government's preliminary analysis of the proposed UGC exception, this article takes the government's international compliance concerns seriously and offers additional modifications to further adapt the proposed transplant.

To begin with, the government could easily build the relevant WTO standards into the proposed UGC exception, similar to the existing provisions in the Hong Kong Copyright Ordinance and the laws of other jurisdictions. The government could also introduce a fair dealing exception for UGC. If it takes the position that fair dealing exceptions meet international standards, a fair dealing exception for UGC will clearly meet those standards.

In addition, the government could introduce a quid pro quo arrangement that allows authors and copyright owners to use the internet users’ derivative creations for predominantly non-commercial purposes. If significant commercial interests are involved, the government could also introduce a profit-sharing arrangement that requires internet users and intermediaries to provide equitable remuneration to copyright owners. Levy systems, for example, have been widely practiced in Canada, Europe, the United States and other parts of the world.

Even if the government remains reluctant to legalize the creation of UGC, in light of the ongoing, unsettled international copyright policy debate, the government could introduce laws to prevent internet users from being criminally prosecuted or sued in civil actions. The government could also institute a five-year sunset period for the proposed exception if it considers a permanent exception unsuitable for a rapidly changing licensing environment.

In sum, regardless of whether one agrees with the Hong Kong government's highly restrictive interpretation of the TRIPS Agreement, many ways still exist to address its international compliance concerns. From the standpoint of examining the expediency and viability of transplanting the Canadian UGC exception abroad, it is also important to separate drafting problems from modelling problems. A good model of legal transplant should not be abandoned when adaptations can be made to improve the transplanted law.

Peter K. Yu, an affiliated scholar of IP Osgoode, holds the Kern Family Chair in Intellectual Property Law at Drake University Law School in the United States. Born and raised in Hong Kong, he serves as the general editor of The WIPO Journal published by the World Intellectual Property Organization and chairs the Committee on International Intellectual Property of the American Branch of the International Law Association.

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As part of this consultation exercise, I submitted a on behalf of the Journalism Media Studies Centre of the University of Hong Kong. This paper, which was repeatedly cited in the government’s recently-released , made three main assertions. First, none of the three identified options alone can adequately address the needs, interests and concerns of internet users in Hong Kong. Because each option serves a different purpose and has varying strengths, the government should consider adopting a combination of all three identified options.

Second, both civil and criminal exceptions, with appropriate qualifications, should be created for parodies, satires, caricatures and pastiches. Although the creation of a fair dealing exception is highly welcome, a separate criminal exception will still be needed even if that exception is to be adopted. After all, an internet user could be exempted from criminal sanctions even though the court did not find his or her dealing with the copyright work fair.

Finally, in addition to the three identified options, the government should consider adopting a fourth option not identified in the consultation paper – an exception for predominantly noncommercial user-generated content (UGC). This option is badly needed because even a broad, unlimited copyright exception for parody, satire, caricature or pastiche would not cover most of the derivative creations generated by internet users. Examples of these creations are modified photos, altered lyrics and home-made videos of music performances.

The proposal for this UGC exception is of particular interest to IPilogue readers, because it draws heavily on section . For reasons ranging from shared legislative experiences to protection against international isolation, the proposal calls for a virtually verbatim transplant of the Canadian provision. Specifically included are the provision’s three key qualifying conditions: identification of the underlying work, legality of the work or copy used, and the absence of a substantial adverse impact on the original work.

The only substantive change made was the replacement of the word “solely” with “predominantly” in the remaining qualifying condition concerning noncommercial purposes. Although this change has arguably broadened the exception to cover a wider array of UGC works, it was made primarily to clarify situations where the UGC in question does not fall squarely within the area of noncommercial UGC. A case in point is when the UGC developer has received inconsequential advertising revenue from an internet or social media platform.

Legal commentators generally disfavor the unadapted transplant of foreign copyright laws, due largely to their ineffectiveness and insensitivity to local conditions. Nevertheless, the proposed transplant would provide an important compromise needed to advance the digital copyright reform debate in Hong Kong. A UGC exception is also badly needed considering the government’s hitherto inadequate response to the needs and interests of internet users. Because users will play an increasingly important role in internet development, the proposed transplant would further strengthen Hong Kong’s knowledge-based economy while transforming the region into an internet service and information technology hub.

Notwithstanding these many benefits, the transplant effort is fraught with challenges. In anticipation of the potential criticisms from policymakers, copyright owners and their industry groups, the position paper explains in detail why the proposed UGC exception would comply with the TRIPS Agreement (in particular its provisions on the three-step test and criminal intellectual property enforcement). The paper also addresses additional questions concerning the lack of case law in regard to the Canadian UGC exception, the potential complications of rights in the underlying works and the loophole the proposed exception might create for commercial pirates.

Peter K. Yu, an affiliated scholar of IP Osgoode, holds the Kern Family Chair in Intellectual Property Law at Drake University Law School in the United States. Born and raised in Hong Kong, he serves as the general editor of The WIPO Journal published by the World Intellectual Property Organization and chairs the Committee on International Intellectual Property of the American Branch of the International Law Association.

The post Transplanting the Canadian UGC Exception to Hong Kong: Part 1 appeared first on IPOsgoode.

Featuring Professor Victor Nabhan
Genest Global Faculty

Thursday October 10, 2013, 9:30am to 5:00pm
Osgoode Hall Law School, 91ŃÇÉ«

IP Osgoode and the Pierre Genest Memorial Fund are proud to present “User-Generated Content under Canadian Copyright Law”, a full day symposium focused on the legal and commercial aspects of user generated content (“UGC”) featuring , the Genest Global Faculty member for the fall 2013 term at Osgoode Hall Law School.

The symposium promises to be an informative, lively and entertaining one with live performances and demonstrations by various UGC artists and practitioners, followed by presentations by leading experts in academia, the legal profession, and industry.

Some of the topics for discussion include an analysis of the UGC exception under Canadian copyright law, the interaction of the UGC exception with fair dealing, specific legal aspects of fan fiction and appropriation art, and whether the UGC exception is in conformity with international treaty standards.  Representatives from SOCAN, YouTube and BCE will also provide some insights on the commercial aspects of UGC and practical strategies for minimizing risks associated with UGC.

The panel sessions will be chaired by IP Osgoode faculty members, Professor David Vaver, Professor Carys Craig, Professor Ikechi Mgebeoji, and IP Osgoode’s founder & director, Professor Giuseppina D’Agostino.

Lunch will be served.  Please RSVP to (Event Code: UGC) by October 3, 2013.  All are welcome and there is no registration fee.  Click for more information and the latest version of the symposium agenda.

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