© TM

http://internet.ca
Not an IP lawyer 

WTF?
IP on the Internet
Preliminary matters:
internet anonymity?
Internet Protocol (IP) Address:
xxx.xxx.xxx.xxx
Where xxx = #(0,255)

IP on the Internet
Internet anonymity? No. Norwich Order
Norwich Pharmacal Company & Ors v. Commissioners of Customs and Excise, [1974] AC 133 (HL)

Plaintiff seeks information from an innocent
3rd party (like an ISP)
1. Plaintiff must show a bona fide claim
2. 3rd party somehow involved in the acts complained of (even
if not bearing any fault)
3. 3rd party is only practical source of information
4. 3rd party can be indemnified for costs
5. Whether the interests of justice favour ordering disclosure

Fers et métaux américains, s.e.c. c. Picard 2013 QCCA 2255

IP on the Internet
Norwich Orders for the internet
• Voltage Pictures LLC v. John Doe and Jane
Doe, 2014 FC 161 (TD)
• BMG Canada Inc. v. Doe, 2005 FCA 193:
“where plaintiffs show that they have a bona fide claim that
unknown persons are infringing their copyright, they have a right
to have the identity revealed for the purpose of bringing action”
• Voltage Pictures LLC v. Does, 2016 FC 881
• York University v. Bell Canada Enterprises, [2009] O.J. No. 3698
• Warman v. Wilkins Fournier, 2011 ONSC 3023
• Olsen v. Facebook Inc., 2016 NSSC 155
• Morris v. Johnson, 2011 ONSC 3996

IP on the Internet
Preliminary matters: jurisidction

IP on the Internet
Preliminary matters: jurisidction
Real and Substantial Connection test
Society of Composers, Authors and Music Publishers of Canada v.
Canadian Assn. of Internet Providers, [2004] 2 S.C.R. 427

“this Court has recognized, as a sufficient
‘connection’ for taking jurisdiction,
situations where Canada is the country of
… reception” (re Copyright Act s. 2.4(1)(b))
IP on the Internet
Jurisdiction makes my life complicated
e.g.
Section 230 of the Communications Decency Act of 1996
47 U.S.C. § 230 (c)(1)

No provider or user of an interactive computer service shall be
treated as the publisher or speaker of any information provided
by another information content provider.
Except…
Nothing in this section shall be construed to limit or
expand any law pertaining to intellectual property.
((e)(2))

IP on the Internet
Jurisdiction Issues in IP

• IP legal and admin systems are generally
national
• Copyright treaties – Berne, WIPO, Rome
convention, TPP(?)

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Online Copyright

“Oh, they have the internet on computers now”

IP on the Internet
© law doesn’t vanish on the internet
Wesley dba MTLFREETV.com v. Bell Canada et al
2017 FCA 55

“This is a motion for injunctive relief with respect to an emerging
phenomenon in the Canadian market, that of pre-loaded "plug-
and-play" set-top boxes. These boxes have several uses for
consumers, some of which are perfectly legal and some which
skirt around the fringes of copyright law. This is not the first
time a new technology has been alleged to violate copyright
law, nor will it be the last. “

IP on the Internet
© law doesn’t vanish on the internet,
but maybe it changes?
ESA v. SOCAN, 2012 SCC 34
Copyright should be technology-neutral:
“The Internet is simply a technological taxi that
delivers a durable copy of the same work to the
end user. ”
“In many respects, the Internet may well be
described as a technological taxi; but taxis need
not give free rides.” [ROTHSTEIN J. (dissenting)]

IP on the Internet
C-11: Copyright Modernization Act
Fourth time’s a charm!

1. C-60 (2005)
2. C-61 (2008)
3. C-32 (2010)
4. C-11 S.C. 2012, c. 20, assented to June 2012; in
force (for the most part) November 7, 2012

IP on the Internet
Copyright Modernization Act
Summary
This enactment amends the Copyright Act to

(a) update the rights and protections of copyright owners to
better address the challenges and opportunities of the Internet,
so as to be in line with international standards;
(b) clarify Internet service providers’ liability and make the
enabling of online copyright infringement itself an infringement
of copyright; (…)
(e) permit certain uses of copyright material by consumers; (…)
(g) ensure that it remains technologically neutral

IP on the Internet
CMA – Notice and Notice
41.25 (1) An owner of the copyright in a work or other subject-matter may send
a notice of claimed infringement to a person who provides
(a) the means, in the course of providing services related to the operation of the
Internet or another digital network, of telecommunication through which the
electronic location that is the subject of the claim of infringement is connected
to the Internet or another digital network;
(b) for the purpose set out in subsection 31.1(4), the digital memory that is used
for the electronic location to which the claim of infringement relates; (…)

41.26 (1) A person described in paragraph 41.25(1)(a) or (b) who receives a
notice of claimed infringement that complies with subsection 41.25(2) shall, on
being paid any fee that the person has lawfully charged for doing so,
(a) as soon as feasible forward the notice electronically to the person to whom
the electronic location identified by the location data specified in the notice
belongs (…)
IP on the Internet
Illegal (?) downloading
Issue: s.80 of the Copyright Act: (“private copying”)

the act of reproducing all or any substantial part
of (a) a musical work… for the private use of the
person who makes the copy does not constitute
an infringement of the copyright in the musical
work, the performer's performance or the sound
recording.

Also: “Reproduction for Private Purposes” (s.
29.22)
IP on the Internet
Illegal (?) downloading
“I cannot see a real difference between a library
that places a photocopy machine in a room full
of copyrighted material and a computer user that
places a personal copy on a shared directory
linked to a P2P service. In either case the
preconditions to copying and infringement are
set up but the element of authorization is
missing.”
“downloading a song for personal use does not
amount to infringement”
BMG Canada Inc. v. John Doe, [2004] 3 F.C.R. 241 (T.D.)

IP on the Internet
Arrrggh downloaders online pirates?
“In general, the basic conditions for the
subsistence of copyright under s. 3 are
satisfied for files shared through BitTorrent.
Given the operation of s. 27 there is certainly
a torrent of copyright infringement by
BitTorrent users.”

-unpublished LL.M. thesis

IP on the Internet
CMA – Statutory damages limits
38.1 (1) Subject to this section, a copyright owner may elect, at any time
before final judgment is rendered, to recover, instead of damages and profits
referred to in subsection 35(1), an award of statutory damages for which any
one infringer is liable individually, or for which any two or more infringers are
liable jointly and severally,
(a) in a sum of not less than $500 and not more than $20,000 that the
court considers just, with respect to all infringements involved in the
proceedings for each work or other subject-matter, if the infringements
are for commercial purposes; and
(b) in a sum of not less than $100 and not more than $5,000 that the
court considers just, with respect to all infringements involved in the
proceedings for all works or other subject-matter, if the infringements are
for non-commercial purposes.

IP on the Internet
CMA – ISP / hosting liability shield
31.1 (1) A person who, in providing services related to the
operation of the Internet or another digital network, provides
any means for the telecommunication or the reproduction of a
work or other subject-matter through the Internet or that other
network does not, solely by reason of providing those means,
infringe copyright in that work or other subject-matter.

(4) Subject to subsection (5), a person who, for the purpose of allowing the
telecommunication of a work or other subject-matter through the Internet or
another digital network, provides digital memory in which another person
stores the work or other subject-matter does not, by virtue of that act alone,
infringe copyright in the work or other subject-matter.

IP on the Internet
USA – Shield + Notice and Takedown
DMCA - 17 U.S. Code § 512

(a) A service provider shall not be liable for monetary relief, or, (…) for
injunctive or other equitable relief, for infringement of copyright by reason of
the provider’s transmitting, routing, or providing connections for, material
through a system or network controlled or operated by or for the service
provider (…)
(b) …intermediate and temporary storage of material on a system…
2 (E) if the person described in paragraph (1)(A) makes that material available
online without the authorization of the copyright owner of the material, the
service provider responds expeditiously to remove, or disable access to, the
material that is claimed to be infringing upon notification of claimed
infringement

IP on the Internet
CMA - Enabling © infringement
• Secondary infringement – enabling:
27 (2.3) It is an infringement of copyright for a
person, by means of the Internet or another
digital network, to provide a service primarily for
the purpose of enabling acts of copyright
infringement if an actual infringement of
copyright occurs by means of the Internet or
another digital network as a result of the use of
that service.
• piratebay.org, isohunt.com

IP on the Internet
Enabling © infringement - factors
(2.4) In determining whether a person has infringed copyright under
subsection (2.3), the court may consider
(a) whether the person expressly or implicitly marketed or promoted the
service as one that could be used to enable acts of copyright infringement;
(b) whether the person had knowledge that the service was used to enable a
significant number of acts of copyright infringement;
(c) whether the service has significant uses other than to enable acts of
copyright infringement;
(d) the person’s ability, as part of providing the service, to limit acts of
copyright infringement, and any action taken by the person to do so;
(e) any benefits the person received as a result of enabling the acts of
copyright infringement; and
(f) the economic viability of the provision of the service if it were not used to
enable acts of copyright infringement.

IP on the Internet
Mister Worf, fire the mashups!

IP on the Internet
Mister Worf, SHIELDS!!!!!
• Non-commercial user-generated content
29.21 (1) It is not an infringement of copyright for an
individual to use an existing work or other subject-
matter or copy of one, which has been published or
otherwise made available to the public, in the
creation of a new work or other subject-matter in
which copyright subsists…
 Conditions: 1. attribution; 2. non-commercial; 3.
original work did not violate ©; 4. no adverse
effect (financial or otherwise) on original work
IP on the Internet
Parting © thought (from C2MTL)
Copyright just doesn’t work online. Solutions?

1. Global regulation and enforcement
2. Education and notice
3. Open-sourced embedded code
4. Community standards
5. Give up, make it all free

IP on the Internet
Online Trademarks

IP on the Internet
ICANN

Internet
Corporation for
Assigned
Names and
Numbers

IP on the Internet
ICANN - UDRP
Uniform Domain Name Dispute Resolution Procedure
4. a. Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event
that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of
Procedure, that

(i) your domain name is identical or confusingly similar to a trademark or service
mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.

b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following
circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the
registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the
purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is
the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration
in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from
reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such
conduct; (…)
IP on the Internet
Internet trademark dispute

Equustek Solutions Inc. v. Google Inc., 2015
BCCA 265 (leave to appeal to SCC granted)

- Website selling trademark-infringing goods
- Google forced to delist websites worldwide

IP on the Internet
Thanks!
Questions?

allen@allenmendelsohn.com

allenmendelsohn.com

IP on the Internet

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