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McCarthy Tétrault Advance™

Building Capabilities for Growth

Law Society: 17th Annual Intellectual Property Law, The Year in Review - Copyright
Barry B. Sookman bsookman@mccarthy.ca 416-601-7949
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January 10, 2013

Canada++

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Copyright law reform: Bill C-11, Copyright Modernization Act, November 7, 2012.

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Supreme Court
¬ ESA v. SOCAN, 2012 SCC 34 ¬ Rogers Communications Inc. v. SOCAN, 2012 SCC 35 ¬ SOCAN v. Bell Canada, 2012 SCC 36 ¬ Alberta (Education) v. Canadian Copyright Licensing Agency (Access Copyright), 2012 SCC 37

¬ Re:Sound v. Motion Picture Theatre Associations of Canada, 2012 SCC 38 ¬ Reference re Broadcasting Regulatory Policy CRTC 2010 167, 2012 SCC 68 ¬ See, Summary of Copyright Pentology by Justice Rothstein @ http://ow.ly/go2cr

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SOCAN v. Bell Canada, 2012 SCC 36
¬ Principles of interpretation: Copyright balance ¬ “Théberge reflected a move away from an earlier, author-centric view which focused on the exclusive right of authors and copyright owners to control how their works were used in the marketplace: see e.g. Bishop v. Stevens, [1990] 2 S.C.R. 467, at pp. 478-79. Under this former framework, any benefit the public might derive from the copyright system was only “a fortunate by-product of private entitlement”… ¬ “Théberge focused attention instead on the importance copyright plays in promoting the public interest, and emphasized that the dissemination of artistic works is central to developing a robustly cultured and intellectual public domain. As noted by Professor David Vaver, both protection and access must be sensitively balanced in order to achieve this goal: Intellectual Property Law: Copyright, Patents, Trade-marks (2nd ed. 2011), at p. 60.”
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Reference re Broadcasting Regulatory Policy CRTC 2010 167, 2012 SCC 68
¬ Principles of interpretation: copyright balance ¬ “The Copyright Act is concerned both with encouraging creativity and providing reasonable access to the fruits of creative endeavour. These objectives are furthered by a carefully balanced scheme that creates exclusive economic rights for different categories of copyright owners in works or other protected subject matter, typically in the nature of a statutory monopoly to prevent anyone from exploiting the work in specified ways without the copyright owner’s consent. It also provides user rights such as fair dealing and specific exemptions that enable the general public or specific classes of users to access protected material under certain conditions.”
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Phonographic Performance Company of Australia Limited v Commonwealth of Australia, [2012] HCA 8 (28 March 2012)
¬ ¬ Principles of interpretation: copyright balance “The copyright given to authors and makers of records was, as Augustine Birrell said of the copyright granted by the Statute of Anne of 1709, "qualified and time-limited property". Although the categories of protected works were much enlarged by the time of the 1911 Act, speaking generally the 1911 Act, like the Statute of Anne, took into account and balanced the interests of authors, entrepreneurs and the public. The public's interest lay in the dissemination of copyright works, including dissemination on reasonable terms. Any detailed consideration of the historical context of the Statute of Anne supports this construction of its intent and its provisions. Further, presaging compulsory licence schemes, the prices of books under the Statute of Anne were regulated to ensure that they were "just and reasonable" and the uses by, and rights of, nominated libraries and universities in respect of copyright works were preserved. It was settled in Donaldson v Beckett that copyright in published works depended upon statute, not the common law, and that the Statute of Anne limited the exclusive right of an author or owner of the copyright to multiply copies of an original published work so as to balance that right against the public interest in freedom to have access to, and to exploit, such works. It can be noted that the American copyright tradition exemplified in Wheaton v Peters follows Donaldson v Beckett.”
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SOCAN v. Bell Canada, 2012 SCC 36
¬ Principles of interpretation: “user rights” ¬ “CCH confirmed that users’ rights are an essential part of furthering the public interest objectives of the Copyright Act. One of the tools employed to achieve the proper balance between protection and access in the Act is the concept of fair dealing, which allows users to engage in some activities that might otherwise amount to copyright infringement. In order to maintain the proper balance between these interests, the fair dealing provision “must not be interpreted restrictively”: CCH, at para. 48.”

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ESA v. SOCAN, 2012 SCC 34
¬ Principles of interpretation: technological (media) neutrality ¬ “The principle of technological neutrality is reflected in s. 3(1) of the Act, which describes a right to produce or reproduce a work “in any material form whatever”. In our view, there is no practical difference between buying a durable copy of the work in a store, receiving a copy in the mail, or downloading an identical copy using the Internet. The Internet is simply a technological taxi that delivers a durable copy of the same work to the end user… ¬ The principle of technological neutrality requires that, absent evidence of Parliamentary intent to the contrary, we interpret the Copyright Act in a way that avoids imposing an additional layer of protections and fees based solely on the method of delivery of the work to the end user. To do otherwise would effectively impose a gratuitous cost for the use of more efficient, Internet-based technologies.”
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Rogers Communications Inc. v. SOCAN, 2012 SCC 35
¬ Principles of interpretation: technological (media) neutrality ¬ “In addition, this Court has long recognized in the context of the reproduction right that, where possible, the Act should be interpreted to extend to technologies that were not or could not have been contemplated at the time of its drafting: Apple Computer Inc. v. Mackintosh Computers Ltd., [1987] 1 F.C. 173 (T.D.), aff’d [1988] 1 F.C. 673 (C.A.), aff’d [1990] 2 S.C.R. 209. That the Act was to apply to new technologies was recently reaffirmed in Robertson v. Thomson Corp., [2006] 2 S.C.R. 363, at para. 49, per LeBel and Fish JJ.: ¬ Media neutrality is reflected in s. 3(1) of the Copyright Act which describes a right to produce or reproduce a work “in any material form whatever”. Media neutrality means that the Copyright Act should continue to apply in different media, including more technologically advanced ones. … [I]t exists to protect the rights of authors and others as technology evolves.”

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ESA v. SOCAN, 2012 SCC 34
¬ Principles of interpretation: Structure of s.3(1) ¬ “Nor is the communication right in s. 3(1)(f) a sui generis right in addition to the general rights described in s. 3(1). The introductory paragraph defines what constitutes “copyright”. It states that copyright “means” the sole right to produce or reproduce a work in any material form, to perform a work in public, or to publish an unpublished work. This definition of “copyright” is exhaustive, as the term “means” confines its scope. The paragraph concludes by stating that copyright “includes” several other rights, set out in subsections (a) through (i). As a result, the rights in the introductory paragraph provide the basic structure of copyright. The enumerated rights listed in the subsequent subparagraphs are simply illustrative.”

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JT International SA v. Commonwealth of Australia [2012] HCA 43 (5 October 2012),
¬ Principle of interpretation: copyright is a negative right ¬ “A copyright is a purely negative right. Thus, if someone owns a copyright in work, the person can stop others from doing any of the acts included within the owner’s exclusive rights. But the copyright does not give the owner the positive right to exercise any of the copyright rights. As a negative right, it has been called a power to prevent the making of a physical thing by copying.”

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Reference re Broadcasting Regulatory Policy CRTC 2010 167, 2012 SCC 68
¬ Principles of interpretation: Copyright pre-emption ¬ S.89: “No person is entitled to copyright otherwise than under and in accordance with this Act or any other Act of Parliament, but nothing in this section shall be construed as abrogating any right or jurisdiction in respect of a breach of trust or confidence.” ¬ “The deliberate use of the words “this Act or any other Act of Parliament” rather than “this Act or any other enactment” means that the right to copyright must be found in an Act of Parliament and not in subordinate legislation promulgated by a regulatory body. “Act” and “enactment” are defined in s. 2 of the Interpretation Act, R.S.C. 1985, c. I-21, where “Act” means an Act of Parliament; and “enactment” means an Act or regulation or any portion of an Act or regulation. ¬ The definitions confirm that Parliament did not intend that a subordinate regulatory body could create copyright by means of regulation or licensing conditions.”
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Reference re Broadcasting Regulatory Policy CRTC 2010 167, 2012 SCC 68
¬ Does the CRTC have jurisdiction to create a “value for signal” regime? ¬ The CRTC does not have jurisdiction to permit local television station broadcasters to negotiate compensation for the retransmission of their signals by cable and satellite companies (BDUs). ¬ First, the value for signal regime conflicts with s. 21(1) of the Copyright Act because it would grant broadcasters a retransmission authorization right against BDUs that was withheld by the scheme of the Copyright Act. ¬ Second, a further conflict arises between the value for signal regime and the retransmission rights in s. 31, which creates an exception to copyright infringement for the simultaneous retransmission by a BDU of a work carried in local signals. ¬ Third, the value for signal regime would create a new right to authorize and prevent retransmission, in effect, amending the copyright conferred by s. 21. Thus the value for signal regime would create a new type of copyright and would do so without the required Act of Parliament, contrary to s. 89.
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ESA v. SOCAN, 2012 SCC 34
¬ Communication/public performance: Is a download a communication? ¬ “We agree with ESA. In our view, the Board’s conclusion that a separate, “communication” tariff applied to downloads of musical works violates the principle of technological neutrality, which requires that the Copyright Act apply equally between traditional and more technologically advanced forms of the same media: Robertson v. Thomson Corp., [2006] 2 S.C.R. 363, at para. 49. The principle of technological neutrality is reflected in s. 3(1) of the Act, which describes a right to produce or reproduce a work “in any material form whatever”. In our view, there is no practical difference between buying a durable copy of the work in a store, receiving a copy in the mail, or downloading an identical copy using the Internet. The Internet is simply a technological taxi that delivers a durable copy of the same work to the end user…”
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ESA v. SOCAN, 2012 SCC 34
¬ “…the right to “communicate” is historically connected to the right to perform a work and not the right to reproduce permanent copies of the work… ¬ The right to perform historically presupposed a live audience that would be present at the site where the performance took place… ¬ we agree with Rothstein J. (at para. 98) that there is a “historic relationship” between the performance right and the communication right in the Copyright Act, but we disagree with his conclusion that Parliament intended to sever this relationship based on the 1988 amendments. In our view, this historical connection between communication and performance still exists today.” ¬ Did the amendments in Bill C-11 change the law?

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Dramatico Entertainment Ltd & Ors v British Sky Broadcasting Ltd & Ors, [2012] EWHC 1152 (Ch)
¬ Communicate to the public/making available right ¬ “I turn, therefore, to consider whether such users [of The Pirate Bay] thereby communicate such recordings available to the public. This involves two questions. First, do they communicate the recordings by electronic transmission? In my judgment they do. I consider that they make the recordings available by electronic transmission in such a way that members of the public may access the recordings from a place and at a time individually chosen by them within section 20(2)(b).” ¬ “Accordingly, I conclude that UK users of TPB infringe the Claimants' copyrights in this way also. This conclusion is consistent with that of the Full Court of the Federal Court of Australia, albeit under a slightly different statutory provision, in Roadshow Films Pty Ltd v iiNet Ltd [2011] FCAFC 23, (2011) 89 IPR 1: see Emmett J at [151]-[158], Jagot J at [322]-[330] and Nicholas J at [664]-[672].”
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Hoffman v Drug Abuse Resistance Education (UK) Ltd, [2012] EWPCC 2 (19 January 2012)
¬ Communication/making available right: Does posting of a photo on a website infringe the MAR? ¬ “Section 20(2)(b) is expressed to include making the work available to the public by electronic transmission in such a way that members of the public may access it from a place and at a time individually chosen by them (see Art 3.1 of the Information Society Directive).” ¬ “In terms of s20(2)(b), in this case the claimant's artistic works have been made available to the public on the defendant's websites by electronic transmission in such a way that members of the public may access the works from a place and at a time individually chosen by them. In terms of the Art 3.1 the claimant's artistic works have been communicated to the public by wire or wireless means and have been made available to the public in such a way that members of the public may access the works from a place and at a time individually chosen by them.”
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Rogers Communications Inc v SOCAN, 2012 SCC 35
¬ Communication/public performance: Are on-demand transmissions “to the public”? ¬ “A communication is not restricted to a purely non-interactive context.”

¬ “Section 3(1)(f) Is Not Limited to Traditional “Push” Technologies; It Is Technology-Neutral” ¬ “Although the words “in any material form whatever” qualify the right to “produce or reproduce the work” in s. 3(1), the same principle should guide the application of the neutral wording of the right to “communicate … to the public by telecommunication”. The broad definition of “telecommunication” was adopted precisely to provide for a communication right “not dependent on the form of technology…”

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Rogers Communications Inc v SOCAN, 2012 SCC 35
¬ “Focusing on each individual transmission loses sight of the true character of the communication activity in question and makes copyright protection dependant on technicalities of the alleged infringer’s chosen method of operation. Such an approach does not allow for principled copyright protection. Instead, it is necessary to consider the broader context to determine whether a given point-to-point transmission engages the exclusive right to communicate to the public. This is the only way to ensure that form does not prevail over substance.” ¬ “CCH (SCC) determined that a “series of repeated … transmissions of the same work to numerous different recipients” may constitute a communication “to the public” within the meaning of s. 3(1)(f) of the Act (CCH (SCC), at para. 78). Where such a series of point-to-point communications of the same work to an aggregation of individuals is found to exist, it matters little for the purposes of copyright protection whether the members of the public receive the communication in the same or in different places, at the same or at different times or at their own or the sender’s initiative.”
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Rogers Communications Inc v SOCAN, 2012 SCC 35
“Ultimately, in determining the extent of copyright, regard must be had for the fact that “[t]he Copyright Act is usually presented as 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” (Théberge v. Galerie d’Art du Petit Champlain inc., 2002 SCC 34, [2002] 2 S.C.R. 336, at para. 30). This balance is not appropriately struck where the existence of copyright protection depends merely on the business model that the alleged infringer chooses to adopt rather than the underlying communication activity. Whether a business chooses to convey copyright protected content in a traditional, “broadcasting” type fashion, or opts for newer approaches based on consumer choice and convenience, the end result is the same. The copyrighted work has been made available to an aggregation of individuals of the general public.”

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American Broadcasting Companies, Inc. v. Aereo, Inc., 2012 U.S. Dist. LEXIS 70749, (S.D.N.Y. 2012)
¬ ¬ Communication/public performance: Are on-demand transmissions “to the public”? “Aereo characterizes its system as merely allowing users to rent a remotely located antenna, DVR, and Slingbox-equivalent device, in order to access content they could receive for free and in the same manner merely by installing the same equipment at home. Housing this argument more specifically in the terms defined by Cablevision, Aereo contends that, like the RS–DVR system in Cablevision, its system creates unique, userrequested copies that are transmitted only to the particular user that created them and, therefore, its performances are nonpublic.” “Despite this creative attempt to escape from the express holding of Cablevision, for the reasons discussed below this Court finds itself constrained to reject the approach Plaintiffs urge. Contrary to Plaintiffs' arguments, the copies Aereo's system creates are not materially distinguishable from those in Cablevision, which found that the transmission was made from those copies rather than from the incoming signal. Moreover, Plaintiffs' attempt to distinguish Cablevision based on time-shifting fails when confronted with the reasoning of that case, particularly considering that the Second Circuit's analysis was directly focused on the significance of Cablevision's copies but did not say one word to suggest that time-shifting played any part in its holding.” See, contra, Fox Television Studios v BarryDriller Content Systems, Case, No. CV-12-6921, (C.D.Cal. Dec 20, 2012)
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Reference re Broadcasting Act, 2012 SCC 4
¬ ¬ Who is responsible for committing the infringing act? “We therefore agree with Noël J.A.’s answer to the reference question, namely, that ISPs do not carry on “broadcasting undertakings” under the Broadcasting Act when, in their role as ISPs, they provide access through the Internet to “broadcasting” requested by end-users.” This interpretation of “broadcasting undertaking” is consistent with Electric Despatch Co. of Toronto v. Bell Telephone Co. of Canada (1891), 20 S.C.R. 83. In Electric Despatch, the Court had to interpret the term “transmit” in an exclusivity contract relating to messenger orders. Like the ISPs in this case, Bell Telephone had no knowledge or control over the nature of the communication being passed over its wires. This Court had to determine whether the term “transmit” implicated an entity who merely provided the mode of transmission. The Court concluded that only the actual sender of the message could be said to “transmit” it... This Court relied on Electric Despatch in Society of Composers, Authors and Music Publishers of Canada v. Canadian Assn. of Internet Providers, 2004 SCC 45, [2004] 2 S.C.R. 427, a proceeding under the Copyright Act, R.S.C. 1985, c. C-42, to conclude that since ISPs merely act as a conduit for information provided by others, they could not themselves be held to communicate the information…”
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Fox Broadcasting Company Inc. v. Dish Network, L.L.C., 2012 U.S. Dist. LEXIS 169112, (C.D. Cal, 2012)
¬ Who is responsible for committing the infringing act? ¬ “It is clear that Dish exercises a degree of discretion over the copying process beyond that which was present in Cablevision. Nevertheless, at this stage of the proceedings, the Court is not satisfied that PTAT [Primetime AnyWhere, home DVR] has crossed over the line that leads to direct liability. Despite Dish's involvement in the copying process, the fact remains that the user, not Dish, must take the initial step of enabling PTAT after deciding that he or she wants to initiate the recording. The user, then, and not Dish, is the “most significant and important cause” of the copy. Prosser and Keeton on Torts § 42. Accordingly, the Court finds that Fox has not established a likelihood of success on the merits of its claim that PTAT directly infringes on its exclusive right to reproduction.”
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National Rugby League Investments Pty Limited v Singtel Optus Pty Ltd, [2012] FCAFC 59 (April 2012)
¬ Who is responsible for committing the infringing act? ¬ Legality of TV Now service enables a subscriber to have free to air television programmes recorded as and when broadcast and then played back at the time (or times) of the subscriber’s choosing on the subscriber’s compatible Optus mobile device or personal computer. ¬ “we consider that Optus’ role in the making of a copy – ie in capturing the broadcast and then in embodying its images and sounds in the hard disk – is so pervasive that, even though entirely automated, it cannot be disregarded when the “person” who does the act of copying is to be identified.” ¬ “So one comes back to the question of construction raised by the word “make” and its application in the present setting. As we have indicated, Optus not only has solicited subscriber utilisation of its Service, it has also designed and maintained a sophisticated system which can effectuate the making of recordings wanted for viewing by subscribers. For s 101 purposes, it manifestly is involved directly in doing the act of copying. It counts as a maker of copies for the subscriber. Does the subscriber as well?”
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Phonographic Performance (Ireland) Ltd v Ireland, CJEU, Case C-162/10, 15 March, 2012
¬ Who communicates a sound recording to the public? ¬ “A hotel operator which provides in guest bedrooms televisions and/or radios to which it distributes a broadcast signal is a ‘user’ making a ‘communication to the public’ of a phonogram which may be played in a broadcast for the purposes of Article 8(2) of Directive 2006/115/EC of the European Parliament and of the Council of 12 December 2006 on rental right and lending right and on certain rights related to copyright in the field of intellectual property.” ¬ “The user makes an act of communication when it intervenes, in full knowledge of the consequences of its action, to give access to a broadcast containing the protected work to its customers. In the absence of that intervention, its customers, although physically within the area covered by the broadcast, would not, in principle, be able to enjoy the broadcast work.”

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Warman v. Fournier, 2012 FC 803
¬ Communication/public performance: does linking communicate a work? ¬ “The evidence is clear that the Barrera Work was posted on the applicant’s personal website and thus the communication of the Barrera Work occurred by creating a hyperlink to the applicant’s own website. Thus, the applicant authorized communication of the Barrera Work by posting it on his website and therefore there is no infringement.” ¬ Crookes v. Newton 2011 SCC 47?

¬ See, Government of the United States v O’Dwyer, Westminister Magistrates’ Court, 13 January, 2012

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Re:Sound v. Motion Picture Theatre Associations of Canada, 2012 SCC 38
¬ Is the soundtrack of a cinematographic work a sound recording? ¬ S2: “sound recording” means a recording, fixed in any material form, consisting of sounds, whether or not of a performance of a work, but excludes any soundtrack of a cinematographic work where it accompanies the cinematographic work; ¬ “The Board made no error in finding that the word “soundtrack” includes pre-existing sound recordings and that such recordings are accordingly excluded from the definition of “sound recording” when they accompany a cinematographic work. This interpretation of the word “soundtrack” is consistent with the scheme of the Act, the intention of Parliament and Canada’s international obligations. Contrary to the appellant’s suggestion, it does not lead to absurd results.”
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Izard, et al. v. Claude Robinson, Supreme Court of Canada case 34468
¬ Infringement: Idea/expression dichotomy/substantial similarity ¬ Leave granted from France Animation v Robinson, 2011 QCCA 1361 ¬ In issue: “Steps and tests for determining whether substantial part of work reproduced within meaning of ss. 2 and 3 of Copyright Act – Admissibility of expert’s testimony concerning reproduction of substantial part of work within meaning of ss. 2 and 3 of Copyright Act.” ¬ Did the main characters, and their characteristics and certain drawings in the children’s TV series Robinson Sucroe infringe the copyright in Robinson Curiosite? ¬ See, also Supreme Court grants leave in Cinar/Robinson copyright cases, http://www.barrysookman.com/2012/05/24/supreme-courtgrants-leave-in-cinarrobinson-copyright-cases/
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Robinson v. Films CINAR Inc., 83 C.P.R. (4th) 1
Similarities between Robinson Curiosité and Robinson Sucroë

“The Court concludes that there is a substantial similarity between these two characters.”
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Robinson v. Films CINAR Inc., 83 C.P.R. (4th) 1
Similarities between Vendredi Férié and Mereredi

“The Court concludes that there is a substantial similarity between these two characters.”
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Robinson v. Films CINAR Inc., 83 C.P.R. (4th) 1
Similarities between Boum Boum and Duresoirée alias Hildegarde Van Boum Boum

“The Court concludes that there is a substantial similarity between these two characters Duresoirée and Boum Boum.”
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Robinson v. Films CINAR Inc., 83 C.P.R. (4th) 1
Similarities between Gertrude and Gladys

“The Court concludes that there is a substantial similarity between these two characters.”
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Robinson v. Films CINAR Inc., 83 C.P.R. (4th) 1
Similarities between Charlie the Pilot and Courtecuisse

“The Court concludes that there is a substantial similarity between these two characters.”
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Marlboro Canada Limited v. Philip Morris Products S.A., 2012 FCA 201
¬ Infringement: objective/substantial similarity ¬ Do the Defendants’ 1996, 2001, and 2007 ITL Canadian Marlboro packages infringe PMPSA’s copyright in the MARLBORO Red Roof Label?

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Marlboro Canada Limited v. Philip Morris Products S.A., 2012 FCA 201
¬ “Mere similarity between two works is insufficient to establish copying. What is required is a substantial similarity between the original work and the allegedly infringing work that is observable when the works are viewed as a whole. Unless a substantial part of a work is copied, there can be no cause of action for copyright infringement. The question to be asked is whether the reproduction contains within it, in qualitative rather than quantitative terms, a substantial part of the skill and judgment exercised by the creator of the original, protected mark: Robertson v. Thompson Corp.,2006 SCC 43 (CanLII), 2006 SCC 43, at para. 81. “Substantial similarity” is made out where the impugned work “…comes so near to the original as to give every person seeing it the idea created by the original; such similarity creates prima facie evidence of copying”.” ¬ Approving decision of trial judge, 2010 FC 1099.

¬ Is the quote an accurate statement of the law?
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Blehm v Jacobs 2012 WL 6700437 (10th.Cir. Dec 27, 2012)
Infringement: idea expression dichotomy

Peace sign images: “We conclude that no reasonable juror could determine that the Jake figure is substantially similar to the protected, expressive choices Mr. Blehm used for the Penman figure.”

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Blehm v Jacobs 2012 WL 6700437 (10th.Cir. Dec 27, 2012)

Frisbee Images: “Although the images share a similar idea of catching a Frisbee between the legs, the protectable expression in the Penman is not substantially similar to the Jake image.”

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Temple Island Collections Ltd v. New English Teas Ltd & Anor [2012] EWPCC 1 (12 January 2012)
“The blank sky serves to emphasise the buildings and gives the whole image a dramatic appearance and the bright red bus stands out even more prominently. This has been reproduced. The basic composition of the image has the Routemaster driving from right to left on the bridge but there is more to it than that. The bus is actually framed by the building. Although the framing is a little different in Annex 2, to my eye the essence of the framing effect has been reproduced. Although the bus is larger in Annex 2 than Annex 1, in both images the bus roughly in scale with the facade of the Houses of Parliament. Also the riverside facade of the building is a prominent feature. There are no other vehicles clearly visible and although there are some small people visible they are not prominent. This all gives the image an element of simplicity and clarity.”

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Harmony Consulting Ltd. v. G.A. Foss Transport Ltd., 2012 FCA 226
¬ Infringement: Is a screen display a reproduction of a computer program? ¬ “With respect, I cannot agree that a screen display is simply a reproduction of the object code. A computer program is defined in section 2 of the Act as: ¬ “computer program” means a set of instructions or statements, expressed, fixed, embodied or stored in any manner, that is to be used directly or indirectly in a computer in order to bring about a specific result; ¬ In my view, the screen display on a user monitor is the result of such a set of instructions rather than a reproduction of the set of instruction in another form. To use the analogy of the Supreme Court of Canada in Cuisenaire v. South West Imports Ltd., 1968 CanLII 122 (SCC), [1969] S.C.R. 208, 2 D.L.R. (3d) 430, the screen display is the rabbit pie rather than the recipe (the recipe being the set of instructions).”

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Keatley Surveying LTD v Teranet Inc, 2012 ONSC 7120
¬ Infringement: what is a translation? ¬ “What is a translation? The word “translation” is not defined in the Copyright Act. However, there is case law and authoritative texts that discuss the meaning of this word as used in the Act. In essence these sources confirm that the word “translation” is used in the Act in its “primary sense of the turning of something from one human language into another”…In order to constitute a “translation”, the resulting work must also be original… ¬ The statement of claim alleges that copies of the plans of survey “were translated into various digital formats, including Portable Document Folder (PDF) and Tagged Image File Format (TIFF)”. Following Apple, I conclude that scanning the plans of survey to create a digital format is not a translation within the meaning of s. 3(1)(a) of the Copyright Act. The resulting digital plan of survey is not an original work, as there is no “skill and judgment” involved in simply scanning the plans of survey.”

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SOCAN v Bell, Access Copyright
¬ Fair dealing: the framework ¬ The onus is on the person invoking “fair dealing” to satisfy all aspects of the test. ¬ The term “private study” can include students in a classroom setting. The word “private” in “private study” “should not be understood as requiring users to view copyrighted works in splendid isolation. Studying and learning are essentially personal endeavours, whether they are engaged in with others or in solitude.” ¬ The term “research” must be given a large and liberal interpretation and can include users listening to previews to decide whether to purchase music. “Research” is not limited “to creative purposes”. It can “include many activities that do not demand the establishment of new facts or conclusions. It can be piecemeal, informal, exploratory, or confirmatory. It can in fact be undertaken for no purpose except personal interest.” Consumers’ uses of previews for the purpose of conducting research to identify which music to purchase can be “research” under the fair dealing framework.

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SOCAN v Bell, Access Copyright
¬ Fair dealing: the framework ¬ The “relevant perspective when considering whether the dealing is for an allowable purpose under the first stage of CCH is that of the user” and not the copier. ¬ The copier’s purpose is relevant at the fairness stage; “copiers cannot camouflage their own distinct purpose by purporting to conflate it with the research or study purposes of the ultimate user”. ¬ “If, as in the “course pack” cases, the copier hides behind the shield of the user’s allowable purpose in order to engage in a separate purpose that tends to make the dealing unfair, that separate purpose will also be relevant to the fairness analysis.”

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Monge v. Maya Magazines, Inc., 2012 U.S. App. LEXIS 16947, (9th Cir. 2012)
¬ ¬ Fair use “The fair use doctrine has been called “the most troublesome in the whole law of copyright.” Dellar v. Samuel Goldwyn, Inc., 104 F.2d 661, 662 (2d Cir. 1939) (per curiam). This affirmative defense presumes that unauthorized copying has occurred, and is instead aimed at whether the defendant’s use was fair… In the years following the 1976 Act, courts have decided countless cases involving the fair use doctrine. Some commentators have criticized the factors, labeling them “billowing white goo” or “naught but a fairy tale,” echoing courts that threw up their hands because the doctrine is “so flexible as virtually to defy definition.” Princeton Univ. Press v. Mich. Doc. Servs., Inc., 99 F.3d 1381, 1392 (6th Cir. 1996) (citation omitted). A leading treatise in this area notes that the statute provides “no guidance as to the relative weight to be ascribed to each of the listed factors,” and, in the end, “courts are left with almost complete discretion in determining whether any given factor is present in any particular use.” Nimmer on Copyright § 13.05[A] (footnotes omitted). We acknowledge the porous nature of the factors but nonetheless recognize that we are obliged to make sense of the doctrine and its predicates…” See, also, Balsley v. LFP, INC 691 F.3d 747 (6th.Cir.2012)
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Authors Guild, Inc. v. HathiTrust, 2012 U.S. Dist. LEXIS 146169, (SDNY, 2012)
¬ Fair use: ¬ “The totality of the fair-use factors suggest that copyright law's "goal of promoting the Progress of Science . . . would be better served by allowing the use than by preventing it." Bill Graham, 448 F.3d at 608. The enhanced search capabilities that reveal no in-copyright material, the protection of Defendants' fragile books, and, perhaps most importantly, the unprecedented ability of print-disabled individuals to have an equal opportunity to compete with their sighted peers in the ways imagined by the ADA protect the copies made by Defendants as fair use to the extent that Plaintiffs have established a prima facie case of infringement... I cannot imagine a definition of fair use that would not encompass the transformative uses made by Defendants' MDP and would require that I terminate this invaluable contribution to the progress of science and cultivation of the arts that at the same time effectuates the ideals espoused by the ADA.” ¬ See also, Cambridge University Press v. Becker, 863 F.Supp.2d 1190 (N.D.Ga. 2012)
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Meads v. Meads, 2012 ABQB 571
¬ Subsistence of copyright: originality ¬ “There is not authority present, nor, I believe, capable of establishing that a personal name can form a creative work that would be subject to copyright. In any case, even if that were so, then copyright in a name would presumably vest with its authors, Mr. Meads’ parents. The Copyright Act also sets the consequence of infringement on copyright: ss. 34-41. Infringement can lead to damages and recovery of profit (s. 35) and where no damage is proven then statutory damages (s. 38.1) can be claimed. There is no provision for the kind of ‘contract’ or ‘notice’ claims found in OPCA foisted unilateral copyright agreements.”

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Waldman v. Thomson Reuters Corporation, 2012 ONSC 1138
¬ ¬ Subsistence of copyright: originality “I would have thought that the overwhelming majority of documents on Litigator are the product of judgment and skill, especially since Thomson advertised this feature in promoting litigator, but, nevertheless, Thomson is entitled to assert that a particular document is not subject to copyright protection, and it cannot be simply assumed that originality exists in all of the court documents available on Litigator. Thomson’s position means that question 1 is not a certifiable question because it lacks commonality.” “I agree with Thomson that ultimately authorship and ownership is an individual issue about what class member has the copyright in a particular court document. If one borrows from the set theory of mathematics, there will be a correspondence between individual members of the set of authors and copyright owners and the set of documents in Litigator, but this correspondence will be an individual correspondence and not a class-wide correspondence. Accordingly, question 2 is not certifiable because again it is not a common issue and its answer requires individual assessments.”
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Acohs Pty Ltd v Ucorp Pty Ltd [2012] FCAFC 16 (2 March 2012)
¬ ¬ Subsistence: originality, computer generated works “The primary judge reasoned (at [47]), correctly in our view, that there was no a priori reason to deny a body of source code, such as that described, the status of a literary work. The significant question, however, was whether the HTML source code for each identified MSDS, generated and rendered by the Infosafe system as described, was an original literary work for copyright purposes.” “On appeal the appellant sought to invoke the notion that in any given case of a literary work whose creation has been assisted by computer, the question whether the work has been created by a human author or by human authors is one of fact and degree: Telstra Corporation Ltd v Phone Directories Company Pty Ltd (2010) 194 FCR 142 at [118] per Perram J and [169] per Yates J. To this end, we were taken in the course of argument, to an example of the relevant source code. This example simply confirmed the discrete nature of the source code as a separate work created by the operation of the Infosafe program on other elements entered into the Infosafe system. It did not emanate from authors. It was not an original work in the copyright sense.”
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Harmony Consulting Ltd. v. G.A. Foss Transport Ltd., 2012 FCA 226
¬ ¬ Infringement: Onus of proof “Writing for the Court in Positive, Justice Pelletier held that infringement is defined in the Act in terms of the absence of consent and, consequently, proof of infringement requires proof of lack of consent…In my view, this statement can only mean that the plaintiff bears the burden of persuasion with respect to the lack of consent. This is in line with the general principle that a plaintiff must establish on a balance of probabilities all the necessary elements of its claim.” “A defendant who says he has the plaintiff’s implied consent equally puts this point in issue, but then it seems reasonable for the defendant to plead and prove the facts on which he relies, and the inferences to be drawn from them. The plaintiff can then produce whatever tends to rebut this case. That does not change the ultimate legal burden of proof, which remains on the plaintiff throughout. Only the evidentiary burden shifts to the defendant: he needs to produce some evidence of consent or the plaintiff’s prima facie case succeeds… Quoting, David Vaver, “Consent or No Consent: The Burden of Proof in Intellectual Property Infringement Suits”, (2001) 23 I.P.J. 147
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Nautical Data International, Inc. v. C-Map USA Inc., 2012 FC 300
¬ Infringement: status of sole licensee to sue ¬ “NDI relies on subsection 13(7) of the Copyright Act which provides that: “For greater certainty, it is deemed always to have been the law that a grant of an exclusive licence in a copyright constitutes the grant of an interest in the copyright by licence.” Hence, it says, there is no doubt that a licensee of an exclusive licence is allowed to bring an action in its own name: Robertson. NDI relies on authorities which found an exclusive licence where the licensee had a sufficient grant of interest to preserve and enforce its rights protected under the Copyright Act: Bouchet v Kyriacopoulos (1964), 45 CPR 265 and Close Up. However, those authorities do not say that the contractual right to sue will necessarily lead to an exclusive licence. In my view, even if a licensee has been given a right to sue in its own name by means of an agreement, it does not necessarily lead to a characterization of the licence as exclusive.”

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Nautical Data International, Inc. v. C-Map USA Inc., 2012 FC 300
¬ Where, as here, the suit is being brought by a person other than the copyright owner, a grant of interest is necessary. A copyright owner may “grant any interest” in writing to whomever it so wishes, either wholly or partially: Copyright Act, s. 13(4). ¬ The parties are in agreement that only an exclusive licence constitutes a grant of interest sufficient to grant a licensee standing to bring a claim for copyright infringement. The Supreme Court of Canada in Robertson v Thomson Corp, 2006 SCC 43 (CanLII), 2006 SCC 43 at para 56 [Robertson], stated: ¬ We are satisfied that Weiler J.A. was correct in concluding that only an exclusive licence must be in writing. If Parliament intended for any type of non-exclusive licence to be deemed a "grant of an interest" requiring a written contract, it could have explicitly provided so just as it did for exclusive licences in s. 13(7).
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Golden Eye (International) Ltd & Ors v Telefónica UK Litd & Anor [2012] EWCA Civ 1740 (21 December 2012)
¬ ¬ Infringement: obtaining identities of alleged infringers “In my judgment the correct approach to considering proportionality can be summarised in the following propositions. First, the Claimants' copyrights are property rights protected by Article 1 of the First Protocol to the ECHR and intellectual property rights within Article 17(2) of the Charter. Secondly, the right to privacy under Article 8(1) ECHR/Article 7 of the Charter and the right to the protection of personal data under Article 8 of the Charter are engaged by the present claim. Thirdly, the Claimants' copyrights are "rights of others" within Article 8(2) ECHR/Article 52(1) of the Charter. Fourthly, the approach laid down by Lord Steyn where both Article 8 and Article 10 ECHR rights are involved in Re S [2004] UKHL 47, [2005] 1 AC 593 at [17] is also applicable where a balance falls to be struck between Article 1 of the First Protocol/Article 17(2) of the Charter on the one hand and Article 8 ECHR/Article 7 of the Charter and Article 8 of the Charter on the other hand. That approach is as follows: (i) neither Article as such has precedence over the other; (ii) where the values under the two Articles are in conflict, an intense focus on the comparative importance of the specific rights being claimed in the individual case is necessary; (iii) the justifications for interfering with or restricting each right must be taken into account; (iv) finally, the proportionality test – or "ultimate balancing test" - must be applied to each.“ Statement on Norwich orders approved in Rugby Football Union v Consolidated Information Services Limited [2012] UKSC 55
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EMI Records (Ireland) Ltd & Ors v The Data Protection Commissioner, [2012] IEHC 264
¬ ¬ Infringement: obtaining identities of alleged infringers "An activity of swarm participation for peer-to-peer downloading does not legitimately carry the expectation of privacy. It is flying in the face of commonsense for the Data Protection Commissioner to equate participation in an open communication with all comers on the internet for the purpose of illegal downloading of copyright material with interception, with tapping or with listening. Those concepts are rightly to be deprecated as illegal in circumstances of privacy. That is not the situation here: there is no legitimate reposing of trust pursuant to contract or reasonable expectation that when a person goes on the internet with a view to uploading or downloading what does not belong to them. That circumstance does not give rise to any constitutional entitlement or human right to remain immune from a music company also participating in that open forum to discover the economic damage that is being done to it and to creative artists. The interest of music companies is proper and proportionate. It is beyond doubt that while each individual act of copying, in itself, does little damage the reproduction of that activity by millions repeated over time is industrial in scale. The response of internet service providers of doing nothing perhaps reflects the greater economic strength of intermediaries as compared to creative people or recording companies. There is also the immeasurable and disproportionate power of these peer-to-peer swarms which are increasingly rendering the entitlement to those on whom creativity depends to no consideration.”
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Blizzard v. Simpson, 2012 ONSC 4312
¬ Remedies: enforcement of foreign injunction orders ¬ “Based on the evidence before me, the submissions of Mr. Radhakant and Mr. Simpson, and the case law upon which the plaintiff relies, I am satisfied that the plaintiff has met the test for recognition and enforcement of foreign judgments, as set forth by the Supreme Court of Canada in Beals v Saldana, supra, and that none of the defences to enforcement are applicable, including fraud, denial of natural justice or breaches of public policy. I am satisfied that the injunctive relief sought is enforceable in this Court, that the terms of the Order of the California Court are clear and specific and that the considerations set forth in Pro Swing Inc. v Elta Golf Inc., 2006 S.C.C. 612 have been satisfied. Accordingly, I order that the judgment of the United States District Court of the Central District of California, Southern Division CV – 01495 – CJC (MLG) dated July 20, 2011 be recognized and enforced as a judgment of this Court.”

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Blizzard v. Simpson, 2012 ONSC 4312
¬ “Mr. Simpson submitted that the Blizzard lawyers must have gained access to his website and, in so doing, given the terms and conditions, would have breached those conditions, being affiliated with Blizzard. I note that the snapshot was taken in the context of the investigation pursuant to the California Court order… ¬ With respect to the Blizzard lawyers accessing Mr. Simpson’s map hack website and breaching the terms of his user agreement, Mr. Radhakant submitted that if infringers could protect themselves from infringement actions by posting terms and conditions on their websites, this would be an untenable position in IP law. I agree with the Applicant’s submissions, Mr. Simpson has not satisfied the onus of establishing any applicable defences to enforcement of the California judgment.”
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United States

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Blehm v Jacobs 2012 WL 6700437 (10th.Cir. Dec 27, 2012)
Infringement: idea expression dichotomy

Peace sign images: “We conclude that no reasonable juror could determine that the Jake figure is substantially similar to the protected, expressive choices Mr. Blehm used for the Penman figure.”

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Blehm v Jacobs 2012 WL 6700437 (10th.Cir. Dec 27, 2012)

Frisbee Images: “Although the images share a similar idea of catching a Frisbee between the legs, the protectable expression in the Penman is not substantially similar to the Jake image.”

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Society of Holy Transfiguration Monastery, Inc. v. Gregory, 689 F.3d 29, (1st.Cir. 2012)
¬ Infringement: substantial similarity ¬ “We traditionally have assessed whether substantial similarity lies between copyrightable expressions by applying the ‘ordinary observer’ test. Under this rubric, two works will be deemed substantially similar if a reasonable ordinary observer, on examining both, ‘would be disposed to overlook [the disparities between the works], and regard their aesthetic appeal as the same.’” ¬ “a court's substantial similarity analysis must center on a work's original elements.. Such examination may require more than the simple determination that "an overall impression of similarity" between the contested works as a whole exists... Typically, to properly conduct this examination, a court must "dissect[] the copyrighted work and separat[e] its original expressive elements from its unprotected content," honing in solely on the unique (and thus protected) components... Indeed, should a work's appearance of similarity rest upon elements that are not themselves copyrightable, this will drive a problematic stake through an infringement claim.”
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Oracle v Google 2012 WL 1964523 (N.D.Cal. May 31, 2012)
¬ ¬ Infringement: idea/expression dichotomy “As long as the specific code written to implement a method is different, anyone is free under the Copyright Act to write his or her own method to carry out exactly the same function or specification of any and all methods used in the Java API. Contrary to Oracle, copyright law does not confer ownership over any and all ways to implement a function or specification, no matter how creative the copyrighted implementation or specification may be. The Act confers ownership only over the specific way in which the author wrote out his version. Others are free to write their own implementation to accomplish the identical function, for, importantly, ideas, concepts and functions cannot be monopolized by copyright.” “As for classes, the rules of the language likewise insist on giving names to classes and the rules insist on strict syntax and punctuation in the lines of code that declare a class. As with methods, for any desired functionality, the declaration line will always read the same (otherwise the functionality would be different) — save only for the name, which cannot be claimed by copyright. Therefore, under the law, the declaration line cannot be protected by copyright. This analysis is parallel to the analysis for methods. This now accounts for virtually all of the three percent of similar code.”
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Tetris Holding, LLC v. Xio Interactive, Inc., 2012 U.S. Dist. LEXIS 74463 (D NJ, 2012)
¬ ¬ Infringement: idea expression dichotomy “Xio's argument that the Tetris pieces are unprotectible because they are related to a rule or function of the game is without merit. The idea of Tetris does not necessitate the particular characteristics of the audio-visual display. And Tetris's copyright is not protecting the style and movement of the pieces as methods of operation, but instead the expression associated with those elements. There are many ways Xio could have expressed these same concepts. To accept Xio's reasoning would give a copyright defendant free reign to copy another's expression, to pilfer another's creativity, merely by describing that expression in sufficient detail related to a rule or a function. Tetris Holding has given the rules of its game to the public domain, but has kept the rights to its expression. Tetris Holding made specific and deliberate design choices and its product has enjoyed great success; to allow Xio to profit off that expression, and that success, by blatant copying, without offering any originality or ingenuity of its own, defies the very purpose of copyright law. Any game expression can always be defined as relating to a game rule and be defined in such detail that the description of the expression would add nothing to the idea. There was no necessity for Mino to mimic Tetris's expression other than to avoid the difficult task of developing its own take on a known idea.”
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Tetris Holding, LLC v. Xio Interactive, Inc., 2012 U.S. Dist. LEXIS 74463 (D NJ, 2012)
“The first is Tetris and the second is Mino. Without being told which is which, a common user could not decipher between the two games. Any differences between the two are slight and insignificant. If one has to squint to find distinctions only at a granular level, then the works are likely to be substantially similar. […] There is such similarity between the visual expression of Tetris and Mino that it is akin to literal copying. While there might not have actually been ‘literal copying’ inasmuch as Xio did not copy the source code and exact images from Tetris, Xio does not dispute that it copied almost all of visual look of Tetris. This leaves one to wonder what Xio believed was protectible expression.”

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WPIX, Inc. v. Ivi, Inc., 2012 U.S. App. LEXIS 18155 (2d Cir, 2012)
¬ Communication/public performance: Is internet streaming a public performance? ¬ “Indeed, ivi’s actions — streaming copyrighted works without permission — would drastically change the industry, to plaintiffs’ detriment…The absence of a preliminary injunction would encourage current and prospective retransmission rights holders, as well as other Internet services, to follow ivi’s lead in retransmitting plaintiffs’ copyrighted programming without their consent. The strength of plaintiffs’ negotiating platform and business model would decline. The quantity and quality of efforts put into creating television programming, retransmission and advertising revenues, distribution models and schedules –- all would be adversely affected. These harms would extend to other copyright holders of television programming. Continued live retransmissions of copyrighted television programming over the Internet without consent would thus threaten to destabilize the entire industry.”

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Flava Works, Inc. v. Gunter, 2012 U.S. App. LEXIS 15977, (7th Cir, 2012)
Public performance: is uploading a video to a web site “to the public” “But if the uploaded video is copyrighted, the uploader has (depending on the terms of use) infringed the copyright. A customer of Flava is authorized only to download the video (or if he obtained it on a DVD sold by Flava, to copy it to his computer) for his personal use. If instead he uploaded it to the Internet and so by doing so created a copy (because the downloaded video remains in his computer), he was infringing.” “One possible interpretation is that uploading plus bookmarking a video is a public performance because it enables a visitor to the website to receive (watch) the performance at will, and the fact that he will be watching it at a different time or in a different place from the other viewers does not affect its “publicness,” as the statute makes clear. We’ll call this interpretation, for simplicity, “performance by uploading.” An alternative interpretation, however—call it “performance by receiving”—is that the performance occurs only when the work (Flava’s video) is transmitted to the viewer’s computer—in other words when it is “communicated to the public in a form in which the public can visually or aurally comprehend the work.”
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American Broadcasting Companies, Inc. v. Aereo, Inc., 2012 U.S. Dist. LEXIS 70749, (SD NY, 2012)
¬ ¬ Communicate/public performance: are on-demand transmissions to the public? “Aereo characterizes its system as merely allowing users to rent a remotely located antenna, DVR, and Slingbox-equivalent device, in order to access content they could receive for free and in the same manner merely by installing the same equipment at home. Housing this argument more specifically in the terms defined by Cablevision, Aereo contends that, like the RS–DVR system in Cablevision, its system creates unique, userrequested copies that are transmitted only to the particular user that created them and, therefore, its performances are nonpublic.” “Despite this creative attempt to escape from the express holding of Cablevision, for the reasons discussed below this Court finds itself constrained to reject the approach Plaintiffs urge. Contrary to Plaintiffs' arguments, the copies Aereo's system creates are not materially distinguishable from those in Cablevision, which found that the transmission was made from those copies rather than from the incoming signal. Moreover, Plaintiffs' attempt to distinguish Cablevision based on time-shifting fails when confronted with the reasoning of that case, particularly considering that the Second Circuit's analysis was directly focused on the significance of Cablevision's copies but did not say one word to suggest that time-shifting played any part in its holding.” See, contra, Fox Television Studios v BarryDriller Content Systems, Case, No. CV-12-6921, (C.D.Cal. Dec 20, 2012)
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Fox Broadcasting Company Inc. v. Dish Network, L.L.C., 2012 U.S. Dist. LEXIS 169112, (CD Cal, 2012)
¬ Who is responsible for committing the infringing act? ¬ “It is clear that Dish exercises a degree of discretion over the copying process beyond that which was present in Cablevision. Nevertheless, at this stage of the proceedings, the Court is not satisfied that PTAT has crossed over the line that leads to direct liability. Despite Dish's involvement in the copying process, the fact remains that the user, not Dish, must take the initial step of enabling PTAT after deciding that he or she wants to initiate the recording. The user, then, and not Dish, is the “most significant and important cause” of the copy. Prosser and Keeton on Torts § 42. Accordingly, the Court finds that Fox has not established a likelihood of success on the merits of its claim that PTAT directly infringes on its exclusive right to reproduction.”

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Monge v. Maya Magazines, Inc., 2012 U.S. App. LEXIS 16947, (9th Cir. 2012)
¬ ¬ Fair use “The fair use doctrine has been called “the most troublesome in the whole law of copyright.” Dellar v. Samuel Goldwyn, Inc., 104 F.2d 661, 662 (2d Cir. 1939) (per curiam). This affirmative defense presumes that unauthorized copying has occurred, and is instead aimed at whether the defendant’s use was fair… In the years following the 1976 Act, courts have decided countless cases involving the fair use doctrine. Some commentators have criticized the factors, labeling them “billowing white goo” or “naught but a fairy tale,” echoing courts that threw up their hands because the doctrine is “so flexible as virtually to defy definition.” Princeton Univ. Press v. Mich. Doc. Servs., Inc., 99 F.3d 1381, 1392 (6th Cir. 1996) (citation omitted). A leading treatise in this area notes that the statute provides “no guidance as to the relative weight to be ascribed to each of the listed factors,” and, in the end, “courts are left with almost complete discretion in determining whether any given factor is present in any particular use.” Nimmer on Copyright § 13.05[A] (footnotes omitted). We acknowledge the porous nature of the factors but nonetheless recognize that we are obliged to make sense of the doctrine and its predicates…” See, also, Balsley v. LFP, INC 691 F.3d 747 (6th.Cir.2012)
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Society of Holy Transfiguration Monastery, Inc. v. Gregory, 689 F.3d 29 (1st.Cir. 2012)
¬ Fair use:

¬ “Applying this framework, we agree with the Monastery that the Archbishop "profited" from his use of the Works. Regardless of whether the Archbishop's versions generated actual financial income for himself or the Dormition Skete, he benefitted by being able to provide, free of cost,[22] the core text of the Works to members of the Orthodox faith, and by standing to gain at least some recognition within the Orthodox religious community for providing electronic access to identical or almost-identical English translations of these ancient Greek texts. For these reasons, we conclude that as to the first factor, the scales tip in the Monastery's favor.”

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Authors Guild, Inc. v. HathiTrust, 2012 U.S. Dist. LEXIS 146169, (SDNY, 2012)
¬ Fair use: ¬ “The totality of the fair-use factors suggest that copyright law's "goal of promoting the Progress of Science . . . would be better served by allowing the use than by preventing it." Bill Graham, 448 F.3d at 608. The enhanced search capabilities that reveal no in-copyright material, the protection of Defendants' fragile books, and, perhaps most importantly, the unprecedented ability of print-disabled individuals to have an equal opportunity to compete with their sighted peers in the ways imagined by the ADA protect the copies made by Defendants as fair use to the extent that Plaintiffs have established a prima facie case of infringement... I cannot imagine a definition of fair use that would not encompass the transformative uses made by Defendants' MDP and would require that I terminate this invaluable contribution to the progress of science and cultivation of the arts that at the same time effectuates the ideals espoused by the ADA.”
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Cambridge University Press v. Becker, 863 F.Supp.2d 1190 (N.D.Ga.2012)
¬ ¬ Fair use: “Taking into account the foregoing considerations in relation to the books involved in this case, the factor three conclusions are: Where a book is not divided into chapters or contains fewer than ten chapters, unpaid copying of no more than 10% of the pages in the book is permissible under factor three. The pages are counted as previously set forth in this Order. In practical effect, this will allow copying of about one chapter or its equivalent. Where a book contains ten or more chapters, the unpaid copying of up to but no more than one chapter (or its equivalent) will be permissible under fair use factor three. Excerpts which fall within these limits are decidedly small, and allowable as such under factor three. Access shall be limited only to the students who are enrolled in the course in question, and then only for the term of the course. Students must be reminded of the limitations of the copyright laws and must be prohibited by policy from distributing copies to others. The chapter or other excerpt must fill a demonstrated, legitimate purpose in the course curriculum and must be narrowly tailored to accomplish that purpose. Where the foregoing limitations are met factor three will favor fair use, i.e., will favor Defendants. Otherwise factor three will favor Plaintiffs.”
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Cambridge University Press v. Becker, 863 F.Supp.2d 1190 (N.D.Ga.2012)
¬ “The Court must also consider, under fair use factor four, the effect of the use in question on the potential market for or value of the copyrighted book. Unpaid use of a decidedly small excerpt (as defined under factor three) in itself will not cause harm to the potential market for the copyrighted book. That is because a decidedly small excerpt does not substitute for the book. However, where permissions are readily available from CCC or the publisher for a copy of a small excerpt of a copyrighted book, at a reasonable price, and in a convenient format (in this case, permissions for digital excerpts), and permissions are not paid, factor four weighs heavily in Plaintiffs' favor. Factor four weighs in Defendants' favor when such permissions are not readily available. The Court has considered whether unlicensed copying of small excerpts as contemplated by this Order would disserve the purposes of the copyright laws, namely, "To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." U.S. Const. art. I, § 8, cl. 8. Because the unpaid use of small excerpts will not discourage academic authors from creating new works, will have no appreciable effect on Plaintiffs' ability to publish scholarly works, and will promote the spread of knowledge, the Court concludes that it would not.” See also, Order, Aug 10, 2012.
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Fox Broadcasting Company Inc. v. Dish Network, L.L.C., 2012 U.S. Dist. LEXIS 169112, (CD Cal, 2012)
¬ Fair use: is time shifting fair use? ¬ “Here, the parties agree that the Hopper [Whole Home High Definition Digital Video Recorder] is only available to private consumers and the evidence does not suggest that consumers use the PTAT [PrimeTime Anytime] copies for anything other than timeshifting in their homes or on mobile devices. In fact, Fox has identified no specific theory under which individual PTAT users could themselves be liable for copyright infringement without circumventing Sony. In the absence of any evidence of such direct infringement on the part of PTAT users, Dish cannot be responsible for “intentionally inducing or encouraging direct infringement,” or for “profiting from direct infringement while declining to exercise a right to stop or limit it .” Grokster, 545 U.S. at 930.”
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Fox Broadcasting Company Inc. v. Dish Network, L.L.C., 2012 U.S. Dist. LEXIS 169112, (CD Cal, 2012)
¬ Fair use: ¬ “Dish also makes QA copies of the primetime line-ups to ensure that AutoHop, when enabled, functions properly on PTAT recordings.... ¬ Having considered the fair use factors, the Court finds that, on balance, the QA copies do not constitute a fair use under the Copyright Act. Although they are “intermediate” copies not ultimately used in any end product, they threaten to reduce the value of the right to copy the Fox Programs and undermine Fox's relationships with licensees who pay for that right. The fact that consumers ultimately use AutoHop in conjunction with PTAT for private home use, a fair use under Sony, does not render the intermediate copies themselves a fair use as well.”
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Capitol Records, Inc. v. Thomas-Rasset, 2012 U.S. App. LEXIS 19040 (8th Cir, 2012)
¬ ¬ Remedies: statutory damages “On the question of damages, we conclude that a statutory damages award of $9,250 for each of the twenty-four infringed songs, for a total of $222,000, does not contravene the Due Process Clause. The district court erred in reducing the third jury's verdict to $2,250 per work, for a total of $54,000, on the ground that this amount was the maximum permitted by the Constitution.” “Congress's protection of copyrights is not a "special private benefit," but is meant to achieve an important public interest: "to motivate the creative activity of authors and inventors by the provision of a special reward, and to allow the public access to the products of their genius after the limited period of exclusive control has expired.“...With the rapid advancement of technology, copyright infringement through online file-sharing has become a serious problem in the recording industry. Evidence at trial showed that revenues across the industry decreased by fifty percent between 1999 and 2006, a decline that the record companies attributed to piracy. This decline in revenue caused a corresponding drop in industry jobs and a reduction in the number of artists represented and albums released. ”
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Flava Works, Inc. v. Gunter, 2012 U.S. App. LEXIS 15977, (7th Cir, 2012)
¬ ¬ Infringement: secondary/contributory infringement “Is myVidster therefore a contributory infringer if a visitor to its website bookmarks the video and later someone clicks on the bookmark and views the video? myVidster is not just adding a frame around the video screen that the visitor is watching. Like a telephone exchange connecting two telephones, it is providing a connection between the server that hosts the video and the computer of myVidster’s visitor. But as long as the visitor makes no copy of the copyrighted video that he is watching, he is not violating the copyright owner’s exclusive right, conferred by the Copyright Act, “to reproduce the copyrighted work in copies” and “distribute copies … of the copyrighted work to the public.” “But if the public performance is the transmission of the video when the visitor to myVidster’s website clicks on the video’s thumbnail…and viewing begins, there is an argument that even though the video uploader is responsible for the transmitting and not myVidster, myVidster is assisting the transmission by providing the link between the uploader and the viewer, and is thus facilitating public performance.” myVidster was not liable for contributing to the transmissions of Flava’s videos. This was because there was no admissible evidence that users had actually accessed any of Flava’s videos via myVidster, rather than via other websites. Since no videos had actually been accessed by clicking on the inline links created by myVidster, “myVidster is not contributing to their performance”.
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Viacom International, Inc v YouTube, Inc. 676 F.3d 19 (2nd.Cir. 2012)
¬ Scope of DMCA safe harbours ¬ Actual knowledge or awareness of specific and identifiable instances of infringement are required before online service provider can lose the DMCA hosting safe harbor. ¬ Willful blindness doctrine can apply to meet the DMCA knowledge threshold. ¬ Vicarious liability condition in DMCA safe harbor does not contain specific knowledge requirement. ¬ Automated functions of conversion, transcoding, playback and related video function are protected under the hosting safe harbor.

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The Authors Guild v Google, Inc 2012 WL 1951790 (S.D.N.Y. May 31, 2012)
¬ Procedure: class action certification ¬ “Furthermore, given the sweeping and undiscriminating nature of Google's unauthorized copying, it would be unjust to require that each affected association member litigate his claim individually. When Google copied works, it did not conduct an inquiry into the copyright ownership of each work; nor did it conduct an individualized evaluation as to whether posting "snippets" of a particular work would constitute "fair use." It copied and made search results available en masse. Google cannot now turn the tables and ask the Court to require each copyright holder to come forward individually and assert rights in a separate action. Because Google treated the copyright holders as a group, the copyright holders should be able to litigate on a group basis.”

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Phonographic Performance Company of Australia Limited v Commonwealth of Australia, [2012] HCA 8 (28 March 2012)
¬ ¬ Principles of interpretation: copyright balance “The copyright given to authors and makers of records was, as Augustine Birrell said of the copyright granted by the Statute of Anne of 1709, "qualified and time-limited property". Although the categories of protected works were much enlarged by the time of the 1911 Act, speaking generally the 1911 Act, like the Statute of Anne, took into account and balanced the interests of authors, entrepreneurs and the public. The public's interest lay in the dissemination of copyright works, including dissemination on reasonable terms. Any detailed consideration of the historical context of the Statute of Anne supports this construction of its intent and its provisions. Further, presaging compulsory licence schemes, the prices of books under the Statute of Anne were regulated to ensure that they were "just and reasonable" and the uses by, and rights of, nominated libraries and universities in respect of copyright works were preserved. It was settled in Donaldson v Beckett that copyright in published works depended upon statute, not the common law, and that the Statute of Anne limited the exclusive right of an author or owner of the copyright to multiply copies of an original published work so as to balance that right against the public interest in freedom to have access to, and to exploit, such works. It can be noted that the American copyright tradition exemplified in Wheaton v Peters follows Donaldson v Beckett.”
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JT International SA v. Commonwealth of Australia, [2012] HCA 43 (5 October 2012),

¬ Principle of interpretation: copyright is a negative right ¬ A copyright is a purely negative right. Thus, if someone owns a copyright in work, the person can stop others from doing any of the acts included within the owner’s exclusive rights. But the copyright does not give the owner the positive right to exercise any of the copyright rights. As a negative right, it has been called a power to prevent the making of a physical thing by copying.

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Acohs Pty Ltd v Ucorp Pty Ltd, [2012] FCAFC 16 (2 March 2012)
¬ ¬ Subsistence: originality, computer generated works “The primary judge reasoned (at [47]), correctly in our view, that there was no a priori reason to deny a body of source code, such as that described, the status of a literary work. The significant question, however, was whether the HTML source code for each identified MSDS, generated and rendered by the Infosafe system as described, was an original literary work for copyright purposes.” “On appeal the appellant sought to invoke the notion that in any given case of a literary work whose creation has been assisted by computer, the question whether the work has been created by a human author or by human authors is one of fact and degree: Telstra Corporation Ltd v Phone Directories Company Pty Ltd (2010) 194 FCR 142 at [118] per Perram J and [169] per Yates J. To this end, we were taken in the course of argument, to an example of the relevant source code. This example simply confirmed the discrete nature of the source code as a separate work created by the operation of the Infosafe program on other elements entered into the Infosafe system. It did not emanate from authors. It was not an original work in the copyright sense.”

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Tonnex International Pty Ltd v Dynamic Supplies Pty Ltd, [2012] FCAFC 162 (16 November 2012)
¬ ¬ Subsistence: originality Whether copyright subsists in a compatibility chart, a CSV file with information about
whether types of printer cartridges or other consumables are suitable for use on a particular type of printer or other device. ¬ “There are several observations to make concerning his Honour’s assessment of the evidence in relation to the issue of originality. First, the primary judge was careful to distinguish between the skill, judgment and labour required to create and maintain the Navision database from the skill, judgment and labour necessary to create the compatibility chart. Secondly, the primary judge was careful to focus on the intellectual effort brought to bear by Mr Campbell in selecting and arranging the information contained in the compatibility chart. Thirdly, the primary judge rejected Tonnex’s argument that, for any practical purpose, the information contained in the compatibility chart could only be expressed in one form. His Honour undertook a detailed examination of the nature of the intellectual effort expended by Mr Campbell in creating the compatibility chart and found that this involved making choices as to what information would or would not be extracted from the Navision database for use in the compatibility chart based upon Mr Campbell’s appreciation of customers’ needs.”
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Abraham Moon & Sons Ltd v Thornber & Ors, [2012] EWPCC 37 (05 October 2012)
¬ Subsistence: are instructions that produce an artistic work an artistic work? ¬ “Artistic copyright must relate to the content of the work of the artist and not the medium in which it is recorded. It is or should be a "content" copyright and not a "signal" copyright. The visual image of Skye Sage if it was fixed in a material form as a drawing would be protected by artistic copyright. It seems to me that to deny artistic copyright in this case – despite the fact that the visual image is indeed fixed in a material form – is to confuse the medium with the message... ¬ I find that the Skye Ticket Stamp is an artistic work within s4 of the 1988 Act. I think it is best described as a "graphic work" within s4(1)(a) and 4(2). Mr Turner submitted that terms like "graphic work" should be given their ordinary meaning. I do not think it is doing violence to the language to regard the ticket as a graphic work. It may be of an unusual sort but it is a record of a visual image.”
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Temple Island Collections Ltd v. New English Teas Ltd & Anor [2012] EWPCC 1 (12 January 2012)
Infringement: idea expression dichotomy

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Temple Island Collections Ltd v New English Teas Ltd & Anor [2012] EWPCC 1 (12 January 2012)
¬ “I have not found this to be an easy question but I have decided that the defendants' work does reproduce a substantial part of the claimant's artistic work. In the end the issue turns on a qualitative assessment of the reproduced elements.... Although the techniques used by Mr Fielder to achieve the effect he did may have been simple, the result has an aesthetic quality about it which is the product of his own work. The blank sky serves to emphasise the buildings and gives the whole image a dramatic appearance and the bright red bus stands out even more prominently. This has been reproduced. The basic composition of the image has the Routemaster driving from right to left on the bridge but there is more to it than that. The bus is actually framed by the building. Although the framing is a little different in Annex 2, to my eye the essence of the framing effect has been reproduced. Although the bus is larger in Annex 2 than Annex 1, in both images the bus roughly in scale with the facade of the Houses of Parliament. Also the riverside facade of the building is a prominent feature. There are no other vehicles clearly visible and although there are some small people visible they are not prominent. This all gives the image an element of simplicity and clarity.”

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CA, Inc. v ISI Pty Limited [2012] FCA 35
¬ Infringement: objective similarity ¬ “The 1999 Macros are, it is accepted by the experts, virtually identical to the R9 CA URT Macros. Bearing in mind the way in which the CA URT Macros were created and the arbitrary decisions of Mr Lynn as part of that process, the facts that the 1999 Macros when compared with the R9 CA URT Macros:
¬ are so textually similar; ¬ have identical names; ¬ act to create URTs; ¬ utilise the four External Macros and the DBURGEN Macro; and ¬ contain parameters that are the same, including those not utilised by 2BDB2 or for the purposes of DB2,

¬ means that the clear conclusion is that the 1999 Macros are a reproduction of a substantial part of the CA URT Macros, notwithstanding any minor differences.”
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Meltwater Holding BV v The Newspaper Licensing Agency Limited, UK Copyright Tribunal, 14 February, 2012
¬ Infringement: what is a substantial part; news clippings? ¬ “The Google News and Google Alerts services are very similar to the Meltwater News service save of course that it is not paid for by the end user. The articles are identified automatically without human intervention. Unlike Meltwater, Google do not provide a personal service assisting with the search algorithms. Like Meltwater, the link provided by Google is a link to the newspaper’s website and behaves in the same way (subject to caching (below)). Both Meltwater and Google provide other related services as well and there was some unsatisfactory evidence about a further Google service called Google Reader. This arose as part of an argument about just how similar Meltwater’s overall offering may or may not be to Google. It seemed to us to be of peripheral relevance and we will ignore Google Reader.... ¬ We find that all three services are based essentially on the same thing – identifying relevant articles and sending links to those articles to clients.”
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Dramatico Entertainment Ltd & Ors v British Sky Broadcasting Ltd & Ors, [2012] EWHC 1152 (Ch)
¬ Communicate to the public/making available right ¬ “I turn, therefore, to consider whether such users [of The Pirate Bay] thereby communicate such recordings available to the public. This involves two questions. First, do they communicate the recordings by electronic transmission? In my judgment they do. I consider that they make the recordings available by electronic transmission in such a way that members of the public may access the recordings from a place and at a time individually chosen by them within section 20(2)(b). In any event, however, it is clear from the CJEU’s judgment in FA v QC Leisure at [193] that the concept of communication must be construed broadly.” ¬ “Accordingly, I conclude that UK users of TPB infringe the Claimants' copyrights in this way also. This conclusion is consistent with that of the Full Court of the Federal Court of Australia, albeit under a slightly different statutory provision, in Roadshow Films Pty Ltd v iiNet Ltd [2011] FCAFC 23, (2011) 89 IPR 1: see Emmett J at [151]-[158], Jagot J at [322]-[330] and Nicholas J at [664]-[672].”
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Hoffman v Drug Abuse Resistance Education (UK) Ltd, [2012] EWPCC 2 (19 January 2012)
¬ ¬ Communication/making available right: Does posting of a photo on a website infringe the MAR? “Section 20(2)(b) is expressed to include making the work available to the public by electronic transmission in such a way that members of the public may access it from a place and at a time individually chosen by them (see Art 3.1 of the Information Society Directive).” “In terms of s20(2)(b), in this case the claimant's artistic works have been made available to the public on the defendant's websites by electronic transmission in such a way that members of the public may access the works from a place and at a time individually chosen by them. In terms of the Art 3.1 the claimant's artistic works have been communicated to the public by wire or wireless means and have been made available to the public in such a way that members of the public may access the works from a place and at a time individually chosen by them. Since the websites in issue in this case were the defendant's own websites, and in the absence of any other evidence to the contrary, I find that it is the defendant who has committed the acts restricted by s20/Art 3 in relation to the works on its websites. It seems to me on the paucity of evidence before me, the fact that the websites may have been designed by someone else does not matter. In my judgment the defendant is the person responsible for those sites and is liable under s20/Art 3.”

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Government of the United States v O’Dwyer, Westminister Magistrates’ Court, 13 January, 2012
¬ ¬ Communication to the public: does linking to a work communicate it? “I am grateful to both learned counsel for their original and additional written submissions as well as oral argument. Without, I hope, discourtesy the lengthy submissions come to a comparatively narrow dispute. Mr Cooper argues nothing in the instant Request amounts to a basis for saying Richard O’Dwyer “made available” copyright material that came from remote websites not the two domain names operated by Richard O’Dwyer… This has necessarily been a lengthy ruling given the arguments and material put forward. A dispassionate appraisal of all matters is the essential function of any court. I acknowledge the endeavours of both learned counsel. I repeat again all matters have been considered even if not expanded upon or cited directly here. That said, for the reasons given, I reject all challenges advanced to this Request. No bars or other challenge being raised or found I send the case to the Secretary of State (for her consideration of the statutory criteria) pursuant to Section 87(3) Ex Act 2003. Richard O’Dwyer has the right to pursue an appeal to the High Court so long as it is submitted in time and in proper form (s 103 Ex Act 2003) but cannot be heard until after the Secretary of State has confirmed an order for extradition.”
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National Rugby League Investments Pty Limited v Singtel Optus Pty Ltd, [2012] FCAFC 59 (April 2012)
¬ ¬ Infringement: who is responsible for the infringing act? Legality of TV Now service enables a subscriber to have free to air television programmes recorded as and when broadcast and then played back at the time (or times) of the subscriber’s choosing on the subscriber’s compatible Optus mobile device or personal computer. we consider that Optus’ role in the making of a copy – ie in capturing the broadcast and then in embodying its images and sounds in the hard disk – is so pervasive that, even though entirely automated, it cannot be disregarded when the “person” who does the act of copying is to be identified.” “So one comes back to the question of construction raised by the word “make” and its application in the present setting. As we have indicated, Optus not only has solicited subscriber utilisation of its Service, it has also designed and maintained a sophisticated system which can effectuate the making of recordings wanted for viewing by subscribers. For s 101 purposes, it manifestly is involved directly in doing the act of copying. It counts as a maker of copies for the subscriber. Does the subscriber as well?
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National Rugby League Investments Pty Limited v Singtel Optus Pty Ltd, [2012] FCAFC 59 (April 2012) focussed not only upon the automated service which is held out as able to ¬ If one
produce, and which actually produces, the copies but also on the causative agency that is responsible for the copies being made at all, the need for a more complex characterisation is suggested. The subscriber, by selecting the programme to be copied and by confirming that it is to be copied, can properly be said to be the person who instigates the copying. Yet it is Optus which effects it. Without the concerted actions of both there would be no copy made of a football match for the subscriber. Without the subscriber’s involvement, nothing would be created; without Optus’ involvement nothing would be copied. They have needed to act in concert to produce – they each have contributed to – a commonly desired outcome. The subscriber’s contributing acts were envisaged by the contractual terms and conditions. How they were to be done were indicated by the prompts given on the Optus TV Now TV guide page. The common design – the production of the selected programme for transmission to the subscriber – informed the solicitation and the taking of a subscription by the subscriber; it was immanent in the service to be provided. ¬ In consequence, they could both properly be said to be jointly and severally responsible for the act of making the copies.”
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Abraham Moon & Sons Ltd v Thornber & Ors, [2012] EWPCC 37 (05 October 2012)
¬ Infringement: can an artistic work infringe the copyright in a literary work? ¬ “I do not propose to go down the road suggested by Ms EdwardsStuart to the extent of denying the existence of differences between literary and artistic works. At this stage of the case I am concerned with literary copyright. As a literary work the Skye Ticket Stamp embodies a series of instructions which define how to make something. In my judgment it is just not accurate to say that this Spring Meadow fabric is a reproduction of this literary work. It is not a copy of the instructions. Although the Spring Meadow ticket is an infringing copy of the Skye Ticket Stamp, I find that the Spring Meadow fabric is not.”

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Dramatico Entertainment Ltd & Ors v British Sky Broadcasting Ltd & Ors, [2012] EWHC 1152 (Ch)
¬ Infringement: authorization/secondary liability ¬ “Conclusion. In my judgment, the operators of TPB do authorise its users' infringing acts of copying and communication to the public. They go far beyond merely enabling or assisting. On any view, they "sanction, approve and countenance" the infringements of copyright committed by its users. But in my view they also purport to grant users the right to do the acts complained of. It is no defence that they openly defy the rights of the copyright owners. I would add that I consider the present case to be indistinguishable from20C Fox v Newzbin in this respect. If anything, it is a stronger case.” ¬ “In the present case, the matters I have considered in relation to authorisation lead to the conclusion that the operators of TPB induce, incite or persuade its users to commit infringements of copyright, and that they and the users act pursuant to a common design to infringe. It is also relevant in this regard that the operators profit from their activities. Thus they are jointly liable for the infringements committed by users.”
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Roadshow Films Pty Ltd v iiNet Ltd, [2012] HCA 16 (20 April 2012)
¬ Infringement: authorization ¬ “For the reasons that follow, in our opinion, the conduct of iiNet did not constitute authorisation of its customers’ infringing acts. ¬ The appellants’ submission, that iiNet should be taken to have authorised the infringements unless it took measures with respect to its customers, assumes obligations on the part of an ISP which the Copyright Act does not impose. A consideration of the factors listed in s 101(1A) does not permit a conclusion that iiNet is to be held liable as having authorised the infringements.”

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Slater v Wimmer [2012] EWPCC 7 (16 February 2012)
¬ ¬ Who owns firm footage of a skydive over Mount Everest? “Although the term "producer" is a defined term in the 1988 Act, "director" is not. Neither side directed me to any authority under the 1988 Act on the point. Laddie Prescott & Vitoria 4th Ed (para 7.41) suggests that in most cases the principal director is likely to be the person who had creative control of the making of the film and cite some decisions from other European courts on the point. That seems to me to be correct.” “Clearly the question of who is the "person by whom the arrangements necessary for the making of the film are undertaken" is highly fact sensitive. Nonetheless there are points of principle that seem to me to follow from the cases I have cited. The definition does not simply refer to the person who made the film, it focuses on the person undertaking the necessary arrangements for doing so. So in A & M Records the person was P and not R and in Century Communications the person was E and not C. On the other hand one cannot go too far up the chain and away from the film making arrangements. The bank is not the person undertaking the necessary arrangements even if the money all came from a bank.”
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Acohs Pty Ltd v Ucorp Pty Ltd [2012] FCAFC 16 (2 March 2012)
¬ ¬ Implies licenses “In the present case the parties treated the licence as arising as a matter of law in a particular class of contract between an MIS and a service provider, such as the appellant or the first respondent: cf Concrete at [18]. “Necessity”, in that context, means necessary for the reasonable or effective operation of all contracts of that particular class lest the enjoyment of rights be “rendered nugatory, worthless, or, perhaps, be seriously undermined”: Byrne at 450; see also Concrete at [59]. The implication of such terms is to be distinguished from terms implied in the circumstances of the particular case to give business efficacy to the contract. In that latter category of case the terms implied are unique to the particular contract in question, depending upon the form of the contract, the express terms and the surrounding circumstances: Byrne at 448. In those cases, the implication is taken to reflect the actual intention of the parties. In cases of contracts of a particular class, wider considerations are at play and the term is implied as a legal incident of such contracts”.

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Slater v Wimmer [2012] EWPCC 7 (16 February 2012)
¬ ¬ Implies licenses “I have considered whether I should limit this judgment to UK copyright only. In my judgment I should not. The parties have argued this case entirely generally. For example neither side has pleaded a case which says in effect even if they lose the UK copyright, they still own the Danish rights. They have both approached this case on the basis that all copyrights are in issue and stand or fall together. If the parties had wished to take a territorial or jurisdictional point they could and should have done so much earlier. The English courts have jurisdiction to deal with questions relating to foreign copyrights (Lucasfilm v Ainsworth [2011] UKSC 39). By the trial, both sides were professionally represented. I also bear in mind proportionality and cost. This is not a case about rights worth large sums of money. Quite the reverse. Accordingly it seems to me the right thing to do is decide the case on the evidence and submissions provided already.” “It seems to me that there are only two possible sensible outcomes, either (i) the contract has no implied terms in it at all and all the foreign rights lie whereever the local law places them absent a contract or (ii) necessity demands an implied term which treats all the rights in the same way and puts them in the same place.”
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Golden Eye (International) Ltd & Ors v Telefónica UK Litd & Anor [2012] EWCA Civ 1740 (21 December 2012)
¬ ¬ Infringement: obtaining identities of alleged infringers “In my judgment the correct approach to considering proportionality can be summarised in the following propositions. First, the Claimants' copyrights are property rights protected by Article 1 of the First Protocol to the ECHR and intellectual property rights within Article 17(2) of the Charter. Secondly, the right to privacy under Article 8(1) ECHR/Article 7 of the Charter and the right to the protection of personal data under Article 8 of the Charter are engaged by the present claim. Thirdly, the Claimants' copyrights are "rights of others" within Article 8(2) ECHR/Article 52(1) of the Charter. Fourthly, the approach laid down by Lord Steyn where both Article 8 and Article 10 ECHR rights are involved in Re S [2004] UKHL 47, [2005] 1 AC 593 at [17] is also applicable where a balance falls to be struck between Article 1 of the First Protocol/Article 17(2) of the Charter on the one hand and Article 8 ECHR/Article 7 of the Charter and Article 8 of the Charter on the other hand. That approach is as follows: (i) neither Article as such has precedence over the other; (ii) where the values under the two Articles are in conflict, an intense focus on the comparative importance of the specific rights being claimed in the individual case is necessary; (iii) the justifications for interfering with or restricting each right must be taken into account; (iv) finally, the proportionality test – or "ultimate balancing test" - must be applied to each.“ Statement on Norwich orders approved in Rugby Football Union v Consolidated Information Services Limited [2012] UKSC 55
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EMI Records (Ireland) Ltd & Ors v The Data Protection Commissioner, [2012] IEHC 264
¬ ¬ Infringement: obtaining identities of alleged infringers "An activity of swarm participation for peer-to-peer downloading does not legitimately carry the expectation of privacy. It is flying in the face of commonsense for the Data Protection Commissioner to equate participation in an open communication with all comers on the internet for the purpose of illegal downloading of copyright material with interception, with tapping or with listening. Those concepts are rightly to be deprecated as illegal in circumstances of privacy. That is not the situation here: there is no legitimate reposing of trust pursuant to contract or reasonable expectation that when a person goes on the internet with a view to uploading or downloading what does not belong to them. That circumstance does not give rise to any constitutional entitlement or human right to remain immune from a music company also participating in that open forum to discover the economic damage that is being done to it and to creative artists. The interest of music companies is proper and proportionate. It is beyond doubt that while each individual act of copying, in itself, does little damage the reproduction of that activity by millions repeated over time is industrial in scale. The response of internet service providers of doing nothing perhaps reflects the greater economic strength of intermediaries as compared to creative people or recording companies. There is also the immeasurable and disproportionate power of these peer-to-peer swarms which are increasingly rendering the entitlement to those on whom creativity depends to no consideration.”
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Wilkinson v London Strategic Health Authority [2012] EWPCC 48 (14 November 2012)
¬ Assignments of copyright ¬ “Where the first assignment in time is of the later work, then its effect will depend on its construction but prima facie an assignee of the copyright in the later work can maintain an action for infringement against a person using the first work to the extent it can be said to reproduce the later work.1 This is on the basis that the assignment of the second work must generally be taken to include an assignment of the copyright in the preceding works to the extent that they are found in the final work. Otherwise the assignment would be valueless if confined only to what was new in the final work. The assignment could of course be expressly framed to have this effect.” Quoting Copinger (16th Ed) in paragraph 5-93.

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EU (other than UK)

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Infopaq International A/S v Danske Dagblades Forening, Case C-302/10 January 17, 2012
¬ Article 5(1) of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society must be interpreted as meaning that the acts of temporary reproduction carried out during a ‘data capture’ process, such as those in issue in the main proceedings, fulfil the condition that those acts must constitute an integral and essential part of a technological process, notwithstanding the fact that they initiate and terminate that process and involve human intervention; fulfil the condition that those acts of reproduction must pursue a sole purpose, namely to enable the lawful use of a protected work or a protected subject-matter; fulfil the condition that those acts must not have an independent economic significance provided, first, that the implementation of those acts does not enable the generation of an additional profit going beyond that derived from the lawful use of the protected work and, secondly, that the acts of temporary reproduction do not lead to a modification of that work.
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Martin Luksan v. Petrus van der Let, Case C-277/10, 9 February, 2012
¬ “rights to exploit a cinematographic work such as those at issue in the main proceedings (reproduction right, satellite broadcasting right and any other right of communication to the public through the making available to the public) vest by operation of law, directly and originally, in the principal director. Consequently, those provisions must be interpreted as precluding national legislation which allocates those exploitation rights by operation of law exclusively to the producer of the work in question.”

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SABAM v Netlog NV, 2012 EUECJ C-360/10 16 February, 2012
¬ “according to Article 8(3) of Directive 2001/29 and the third sentence of Article 11 of Directive 2004/48, holders of intellectual property rights may apply for an injunction against operators of online social networking platforms, such as Netlog, who act as intermediaries within the meaning of those provisions, given that their services may be exploited by users of those platforms to infringe intellectual property rights. ¬ In addition, it follows from the Court’s case-law that the jurisdiction conferred on national courts, in accordance with those provisions, must allow them to order those intermediaries to take measures aimed not only at bringing to an end infringements already committed against intellectual-property rights using their information-society services, but also at preventing further infringements (see Case C-70/10 Scarlet Extended [2011] ECR I-0000, paragraph 31).”

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SABAM v Netlog NV, 2012 EUECJ C360/10 16 Febuary, 2012
¬ However, national courts are precluded “from issuing an injunction against a hosting service provider which requires it to install a system for filtering: ¬ information which is stored on its servers by its service users; ¬ which applies indiscriminately to all of those users; ¬ as a preventative measure; ¬ exclusively at its expense; and ¬ for an unlimited period, ¬ which is capable of identifying electronic files containing musical, cinematographic or audio-visual work in respect of which the applicant for the injunction claims to hold intellectual property rights, with a view to preventing those works from being made available to the public in breach of copyright.”
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Football Dataco Ltd and Ors v. Yahoo! UK and Ors., Case C-604/10, 1 March 2012
¬ Article 3(1) of Directive 96/9/EC of the European Parliament and of the Council of 11 March 1996 on the legal protection of databases must be interpreted as meaning that a ‘database’ within the meaning of Article 1(2) of that directive is protected by the copyright laid down by that directive provided that the selection or arrangement of the data which it contains amounts to an original expression of the creative freedom of its author, which is a matter for the national court to determine. As a consequence: the intellectual effort and skill of creating that data are not relevant in order to assess the eligibility of that database for protection by that right; it is irrelevant, for that purpose, whether or not the selection or arrangement of that data includes the addition of important significance to that data, and the significant labour and skill required for setting up that database cannot as such justify such a protection if they do not express any originality in the selection or arrangement of the data which that database contains. Directive 96/9 must be interpreted as meaning that, subject to the transitional provision contained in Article 14(2) of that directive, it precludes national legislation which grants databases, as defined in Article 1(2) of the directive, copyright protection under conditions which are different to those set out in Article 3(1) of the directive.
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Phonographic Performance (Ireland) Ltd v Ireland, Case C-162/10, 15 March, 2012
¬ Who communicates a sound recording to the public? ¬ “The user makes an act of communication when it intervenes, in full knowledge of
the consequences of its action, to give access to a broadcast containing the protected work to its customers. In the absence of that intervention, its customers, although physically within the area covered by the broadcast, would not, in principle, be able to enjoy the broadcast work.” ¬ Who is a “public”? ¬ ”the term ‘public’ refers to an indeterminate number of potential listeners and a fairly large number of people…

¬ As regards, to begin with, the ‘indeterminate’ nature of the public, the Court has observed that, according to the definition of the concept of ‘communication to the public’ given by the WIPO glossary, which, while not legally binding, none the less sheds light on the interpretation of the concept of public, it means ‘making a work … perceptible in any appropriate manner to persons in general, that is, not restricted to specific individuals belonging to a private group’”.

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Phonographic Performance (Ireland) Ltd v Ireland, Case C-162/10, 15 March, 2012
¬ “A hotel operator which provides in guest bedrooms televisions and/or radios to which it distributes a broadcast signal is a ‘user’ making a ‘communication to the public’ of a phonogram which may be played in a broadcast for the purposes of Article 8(2) of Directive 2006/115/EC of the European Parliament and of the Council of 12 December 2006 on rental right and lending right and on certain rights related to copyright in the field of intellectual property.” ¬ “A hotel operator which provides in guest bedrooms, not televisions and/or radios to which it distributes a broadcast signal, but other apparatus and phonograms in physical or digital form which may be played on or heard from such apparatus, is a ‘user’ making a ‘communication to the public’ of a phonogram within the meaning of Article 8(2) of Directive 2006/115/EC. It is therefore obliged to pay ‘equitable remuneration’ under that provision for the transmission of those phonograms.”

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Società Consortile Fonografici (SCF) v Marco Del Corso, Case C-135/10, 15 March 2012
¬ ”As is clear from the explanatory memorandum to the Proposal for Directive 2001/29 (COM(97) 628), confirmed by recital 25 of that directive, making available to the public, for the purposes of that provision, is intended to refer to ‘interactive on-demand transmissions’ characterised by the fact that members of the public may access them from a place and at a time individually chosen by them. According to the decision for reference, the issue in the main proceedings is the broadcasting of music in a dental practice for the benefit of the patients present and not interactive on-demand transmission.” “The concept of ‘communication to the public’ for the purposes of Article 8(2) of Directive 92/100 must be interpreted as meaning that it does not cover the broadcasting, free of charge, of phonograms within private dental practices engaged in professional economic activity, such as the one at issue in the main proceedings, for the benefit of patients of those practices and enjoyed by them without any active choice on their part. Therefore such an act of transmission does not entitle the phonogram producers to the payment of remuneration.”

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Bonnier Audio et al. v Perfect Communication Sweden AB, Case C-461/10, 19 April, 2012
¬ “Directive 2006/24/EC of the European Parliament and of the Council of 15 March 2006… must be interpreted as not precluding the application of national legislation…in order to identify an internet subscriber or user, permits an internet service provider in civil proceedings to be ordered to give a copyright holder or its representative information on the subscriber to whom the internet service provider provided an IP address which was allegedly used in an infringement…” ¬ “Directives 2002/58/EC of the European Parliament and of the Council of 12 July 2002 concerning the processing of personal data and the protection of privacy in the electronic communications sector (Directive on privacy and electronic communications) and 2004/48 must be interpreted as not precluding national legislation such as that at issue in the main proceedings insofar as that legislation enables the national court seised of an application for an order for disclosure of personal data, made by a person who is entitled to act, to weigh the conflicting interests involved, on the basis of the facts of each case and taking due account of the requirements of the principle of proportionality.”
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UsedSoft GmbH v Oracle International Corp., Case C-128/11, 24 April, 2012
¬ “Article 4(2) of Directive 2009/24/EC of the European Parliament and of the Council of 23 April 2009 on the legal protection of computer programs must be interpreted as meaning that the right of distribution of a copy of a computer program is exhausted if the copyright holder who has authorised, even free of charge, the downloading of that copy from the internet onto a data carrier has also conferred, in return for payment of a fee intended to enable him to obtain a remuneration corresponding to the economic value of the copy of the work of which he is the proprietor, a right to use that copy for an unlimited period. Articles 4(2) and 5(1) of Directive 2009/24 must be interpreted as meaning that, in the event of the resale of a user licence entailing the resale of a copy of a computer program downloaded from the copyright holder’s website, that licence having originally been granted by that rightholder to the first acquirer for an unlimited period in return for payment of a fee intended to enable the rightholder to obtain a remuneration corresponding to the economic value of that copy of his work, the second acquirer of the licence, as well as any subsequent acquirer of it, will be able to rely on the exhaustion of the distribution right under Article 4(2) of that directive, and hence be regarded as lawful acquirers of a copy of a computer program within the meaning of Article 5(1) of that directive and benefit from the right of reproduction provided for in that provision.”
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DR and TV2 Danmark v NCB - Nordisk Copyright Bureau, Case C-510/10, 26 April, 2012
¬ “For the purposes of ascertaining whether a recording made by a broadcasting organisation, for its own broadcasts, with the facilities of a third party, is covered by the exception laid down in Article 5(2)(d) of Directive 2001/29 in respect of ephemeral recordings, it is for the national court to assess whether, in the circumstances of the dispute in the main proceedings, that party may be regarded as acting specifically ‘on behalf of’ the broadcasting organisation or, at the very least, ‘under the responsibility’ of that organisation. As regards whether that party may be regarded as acting ‘under the responsibility’ of the broadcasting organisation, it is essential that, vis-à-vis other persons, among others the authors who may be harmed by an unlawful recording of their works, the broadcasting organisation is required to pay compensation for any adverse effects of the acts and omissions of the third party, such as a legally independent external television production company, connected with the recording in question, as if the broadcasting organisation had itself carried out those acts and made those omissions.”
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SAS Institute v World Programming Limited, Case C-406/10, 2 May 2012
“On the basis of those considerations, it must be stated that, with regard to the elements of a computer program which are the subject of Questions 1 to 5, neither the functionality of a computer program nor the programming language and the format of data files used in a computer program in order to exploit certain of its functions constitute a form of expression of that program for the purposes of Article 1(2) of Directive 91/250.”

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SAS Institute v World Programming Limited, Case C-406/10, 2 May 2012
¬ “In the present case, the keywords, syntax, commands and combinations of commands, options, defaults and iterations consist of words, figures or mathematical concepts which, considered in isolation, are not, as such, an intellectual creation of the author of the computer program. It is only through the choice, sequence and combination of those words, figures or mathematical concepts that the author may express his creativity in an original manner and achieve a result, namely the user manual for the computer program, which is an intellectual creation (see, to that effect, Infopaq International, paragraph 45)...” “Consequently, in the light of the foregoing considerations, the answer to Questions 8 and 9 is that Article 2(a) of Directive 2001/29 must be interpreted as meaning that the reproduction, in a computer program or a user manual for that program, of certain elements described in the user manual for another computer program protected by copyright is capable of constituting an infringement of the copyright in the latter manual if – this being a matter for the national court to ascertain – that reproduction constitutes the expression of the intellectual creation of the author of the user manual for the computer program protected by copyright.”

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Re Titus Alexander Jochen Donner, Case C-5/11, 21 June 2012
“A trader who directs his advertising at members of the public residing in a given Member State and creates or makes available to them a specific delivery system and payment method, or allows a third party to do so, thereby enabling those members of the public to receive delivery of copies of works protected by copyright in that same Member State, makes, in the Member State where the delivery takes place, a ‘distribution to the public’ under Article 4(1) of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society.”

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Football Dataco Ltd. v Sportradar GmbH, Case C-173/11, 18 October, 2012
¬ “the mere fact that the website containing the data in question is accessible in a particular national territory is not a sufficient basis for concluding that the operator of the website is performing an act of re-utilisation caught by the national law applicable in that territory concerning protection by the sui generis right… If the mere fact of being accessible were sufficient for it to be concluded that there was an act of re-utilisation, websites and data which, although obviously targeted at persons outside the territory of the Member State concerned, were nevertheless technically accessible in that State would wrongly be subject to the application of the relevant law of that State”. “Accordingly, in the dispute in the main proceedings, the fact that, at the request of an internet user in the United Kingdom, data on Sportradar’s web server is sent to that internet user’s computer for technical purposes of storage and visualisation on screen is not in itself a sufficient basis for concluding that the act of re-utilisation performed by Sportradar on that occasion takes place in the territory of the United Kingdom. The localisation of an act of re-utilisation in the territory of the Member State to which the data in question is sent depends on there being evidence from which it may be concluded that the act discloses an intention on the part of its performer to target persons in that territory”.
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Football Dataco Ltd. v Sportradar GmbH, Case C-173/11, 18 October, 2012
“Article 7 of Directive 96/9/EC of the European Parliament and of the Council of 11 March 1996 on the legal protection of databases must be interpreted as meaning that the sending by one person, by means of a web server located in Member State A, of data previously uploaded by that person from a database protected by the sui generis right under that directive to the computer of another person located in Member State B, at that person’s request, for the purpose of storage in that computer’s memory and display on its screen, constitutes an act of ‘re-utilisation’ of the data by the person sending it. That act takes place, at least, in Member State B, where there is evidence from which it may be concluded that the act discloses an intention on the part of the person performing the act to target members of the public in Member State B, which is for the national court to assess.”

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GEMA v YouTube Hamburg Regional Court, Case 310 O 461/10, 20 April, 2012
¬ “Relevant to evaluating whether the operator of an Internet site has appropriated the content accessible on it is an objective consideration based on the foundation of reviewing all relevant circumstances. In doing so, it is relevant whether a prudent Internet user is given the impression that the Internet site’s operator is also responsible for the content on the site. The circumstance alone that it is recognizable that the content does not originate from the Internet site’s operator does not necessarily exclude the content being attributed to the operator (see German Supreme Court ruling dated 12/11/2009, file ref.: I ZR 166/07 – marions-kochbuch, GRUR 2010, 616/618 marg. no. 23, 24, 27). Within the scope of this requisite overall review, it especially must be checked whether the Defendant has editorial control regarding uploaded content, whether the way the content is presented infers that the Defendant appropriates it, whether the videos named are among the Internet site’s core editorial content, and whether the Defendant assumes economic benefit from the videos, e.g. by having comprehensive exploitation rights conceded to it for its own commercial exploitation.” “According to a ruling by the German Supreme Court, anyone who – without being perpetrator or participant – in any way willingly and adequately causally contributes to a rights infringement can fundamentally be subject to a negligence claim as Störer.”
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GEMA v YouTube Hamburg Regional Court, Case 310 O 461/10, 20 April, 2012
¬ Since Störer liability may not be unduly placed upon third parties who did not commit the illegal encroachment themselves, Störer liability is contingent upon the infringement of reasonable conduct obligations according to the German Supreme Court’s ruling, especially a breach of auditing obligations. Whether and the extent to which it is reasonable to expect a Störer against whom a claim has been made to perform audits is based on the corresponding circumstances of the individual case in consideration of its function, duties, and the own authority of the party that performed the illegal encroachment directly…According to these standards, it fundamentally is not reasonable to expect of the operator of a commercial Internet platform to audit every offering prior to publishing on the Internet for potential rights infringement. If, however, a reference is made to a clear rights infringement, then the operator does not have to block the concrete offering immediately, but rather must undertake precautionary measures so that further rights infringements of the same nature do not occur to the extent possible”. Court ordered YouTube to use its content ID and a keyword filtering system to prevent identified infringing videos to be posted on the site.

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GEMA v YouTube Hamburg Regional Court, Case 310 O 461/10, 20 April, 2012
“According to the German Supreme Court’s ruling, no controlling measures can be reasonably expected of the operator of an Internet auction platform that would not track down suspected cases of rights infringement using filter software. Thus, filter software that can track down suspected cases must be available to the operator. The use of filter software that “tracks down suspected cases by entering corresponding search terms, which may then have to be checked manually,” however, cannot be reasonably expected according to the ruling by the BGH. The threshold of reasonably expectable, however, is reached when there are no properties suitable for entry into a search system”.

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Slides available @ barrysookman.com and mccarthy.ca

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Underlines in quotes may reflect emphasis added. Some quotes were translated from original source.

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VANCOUVER
Suite 1300, 777 Dunsmuir Street P.O. Box 10424, Pacific Centre Vancouver BC V7Y 1K2 Tel: 604-643-7100 Fax: 604-643-7900 Toll-Free: 1-877-244-7711

MONTRÉAL
Suite 2500 1000 De La Gauchetière Street West Montréal QC H3B 0A2 Tel: 514-397-4100 Fax: 514-875-6246 Toll-Free: 1-877-244-7711

CALGARY
Suite 3300, 421 7th Avenue SW Calgary AB T2P 4K9 Tel: 403-260-3500 Fax: 403-260-3501 Toll-Free: 1-877-244-7711

QUÉBEC
Le Complexe St-Amable 1150, rue de Claire-Fontaine, 7e étage Québec QC G1R 5G4 Tel: 418-521-3000 Fax: 418-521-3099 Toll-Free: 1-877-244-7711

TORONTO
Box 48, Suite 5300 Toronto Dominion Bank Tower Toronto ON M5K 1E6 Tel: 416-362-1812 Fax: 416-868-0673 Toll-Free: 1-877-244-7711

UNITED KINGDOM & EUROPE
125 Old Broad Street, 26th Floor London EC2N 1AR UNITED KINGDOM Tel: +44 (0)20 7489 5700 Fax: +44 (0)20 7489 5777

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