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Law Society of Upper Canada

15th Annual Intellectual Property Law
The Year in Review
Copyright Update

Barry B. Sookman
Direct Line: (416) 601-7949
E-Mail: bsookman@mccarthy.ca
Websites: mccarthy.ca; barrysookman.com January 13, 2011

9976602 1
Canadian Decisions

2
Bell Canada v SOCAN (Tariff 22) 2010 FCA 220
What is a communication to the public?
¬ “In my view, there is authority to support the proposition that whether or not a
communication is a communication to the public is a function of two factors: the
intention of the communicator, and the reception of the communication by at least
one member of the public. If those two conditions are met, then there has been a
communication to the public.”
¬ “I would summarize my conclusions as follows. The Supreme Court’s conclusion
in CCH...is not authority for the proposition that no “point to point” communication
can ever amount to a communication to the public. The Supreme Court’s caveat to
the effect that a series of repeated transmissions of the same work to numerous
different recipients might constitute a communication to the public is best understood
as a recognition that multiple transmissions of the same work could constitute
evidence of an intention to communicate to the public and, if they did, such
transmissions would indeed constitute a communication to the public... Thus, I
believe that CCH(SCC) can be reconciled with this Court’s decision in CWTA.
Finally, if there is an intention to communicate a work to the public, every
communication of the work, starting with the first, is a communication to the public.”
¬ See also, RecordTV Pte Ltd v MediaCorp TV Singapore Pte Ltd [2010] SGCA 43

3
SOCAN (Tariff 22G) v Bell Canada 2010 FCA 139
¬ “In my view, it would have been unreasonable for the Board to certify this impugned
Item of the proposed Tariff 22 in the absence of the necessary probative evidence, on
mere guesses, speculations and approximations, especially in view of the long
retroactive period covered (1996 to 2006) and the fact that, as the Board found, it is
only at the end of that period that social networking and video sharing sites became
popular.
¬ In addition, to proceed to a determination of the kind sought by SOCAN, in the
absence of that evidence, would be acting arbitrarily and unreasonably. However, to
act arbitrarily and unreasonably when required by law to act fairly and reasonably is
wrong at law. The resulting decision of the Board would have been both
wrong and unreasonable.”
¬ “In submitting a tariff for certification, a proposing party must put its best foot
forward and not ask the Board to do it in its stead.
¬ I should add that it was open to SOCAN under the procedural rules applicable to
proceedings before the Board to request the Board’s assistance in
gathering and complementing its evidence that, it had to know, was fundamentally
deficient. Its omission to do so at the time under these procedural rules cannot be later
transposed into the Board’s duty and failure to, proprio motu, make use of its
discretionary powers under section 66.7 of the Act.”

4
Entertainment Software Association v
CMRRA/SODRAC, 2010 FCA 221
¬ “These dispositions make it clear that the mechanism for the collection of
compensation for the performance and communication to the public by
telecommunication of sound recordings is the enforcement of approved tariffs by
collective societies. Without a tariff, there is, practically speaking, no right to
compensation. Such a regime does not lend itself to the application of a de
minimis rule. The Board’s conclusion on this issue is reasonable.”
¬ “ESA argued that the Board erred in certifying a tariff when SOCAN did not present
evidence to justify the “fair and equitable” character of the tariff. The Board has
previously rejected arguments of this nature...
¬ The collective administration regime depends upon the certification of tariffs. This
system, which seeks to balance the rights of creators and users, cannot be hobbled
by an overly rigid approach to the assessment of the basis upon which a tariff is
certified. In this case, the base rate of .08 per cent of revenues was initially
suggested by ESA itself and was eventually accepted by the Board. The Board’s
decision on this issue is reasonable.”

5
SOCAN v. Bell Canada, 2010 FCA 123 leave to
appeal to the Supreme Court granted
Scope of fair dealing exception for research on Internet.
¬ The word “research” in section 29 is not limited to “scientific”, “economic”, or “cultural”
endeavours.
¬ Research can include an activity in which a “consumer is searching for an object of copyright that
he or she desires and is attempting to locate and wishes to ensure its authenticity and quality
before obtaining it.”
¬ The Court agreed with the Board that “[listening to previews assists in this investigation” and that
the streaming of the previews was research for a fair dealing purpose.
¬ “SOCAN argues that the primary purpose of previews is not research, but rather increased
sales and, accordingly, increased profits. There is no doubt that, for the seller, this is an important
objective, one which also benefits copyright holders through reproduction and performance rights.
I agree. But this does not exclude other equally important purposes. We must consider previews
from the point of view of the person for whom they are intended: the consumer of the subject-
matter of the copyright. Their purpose is to assist the consumer in seeking and finding the
desired musical work.”
¬ The Court also accepted that on the evidence before it that the dealings were also fair. It did not
engage in the analysis proposed by SOCAN of “measuring the amount and determining the
fairness of the dealing by considering the aggregate number of users and previews and the
resulting hours of uncompensated music.”
¬ What will the Supreme Court do?

6
Alberta (Education) v Access Copyright
2010 FCA 198
Whether copying by K-12 educational institutions is a fair dealing?
¬ “The essence of the Board’s Decision was that when a teacher photocopies copyrighted
material for his or her class, that use cannot be private study…
¬ The applicants argue that the adjective “private” is intended to exclude from fair dealing the
commercial use of copyright protected material that has no educational value. I fail to see
how the word “private” should be equated with “non-commercial.” “Private study” presumably
means just that: study by oneself. If Parliament had wished to exclude only commercial
exploitation it could have used words to the effect of “non-commercial” or “not for profit.” ...
When students study material with their class as a whole, they engage not in “private” study
but perhaps just “study.”...
¬ CCH requires the Board to “make an objective assessment of the user/defendant’s real
purpose or motive in using the copyrighted work”...
¬ ..the Board found that since the students in question did not request the photocopies
themselves, given the instructional setting, it is likely that the purpose of the photocopying
was for the instruction of the students, not for private study... Similarly, the Board was entitled
to find that when a student is instructed to read the material, it is likely that the purpose of the
copying was for classroom instruction rather than the student’s private study.”
¬ Will the Supreme Court grant leave to appeal?

7
Sirius Canada Inc. v CMRRA/SODRAC,
2010 FCA 348
“The heart of the Sirius application is its challenge to the Board’s conclusion that a satellite
radio service provider, by supplying a subscriber with a receiver having an extended buffer or
a block recording feature, necessarily authorizes the subscriber to copy works that are
subject to copyright...
¬ Here, the relationship is one of satellite radio service provider and subscriber. The service
provider supplies the subscriber with broadcast content (some of which, but not all, is subject to
copyright) and a receiver that must be used to receive the broadcast content. The use of a
receiver with an extended buffer automatically causes 44 to 60 minutes of broadcast content to
be copied, and the use of a receiver with block recording feature that is engaged automatically
causes up to 10 or 100 hours of broadcast content to be copied...
¬ In practical terms, the use of a satellite radio receiver as it is intended to be used will always
result in the making of infringing copies because of the technological choices made by satellite
radio service providers...
¬ The element of automatic copying by a satellite radio receiver is a factor that was not present
in the CCH case. Each patron of the Great Library could choose what to copy and what not to
copy. By contrast, in this case a subscriber causes the copying of all received broadcast
content merely by using the satellite radio receiver as it is intended to be used. In my view, in
the circumstances of this case, the presumption against the authorization of an infringing act is
rebutted in this case by the degree of control exercised by the satellite radio service providers
over their broadcast content and the features included in the radio receivers supplied to their
subscribers.”
¬ The exclusion in the EULA was not sufficient to rebut the presumption of no authorization.
8
Sirius Canada Inc. v CMRRA/SODRAC,
2010 FCA 348
Does the Copyright Act apply to reproductions wholly made outside of Canada?
¬ “Nor can I accept the argument of CSI that the copying occurred in both Canada and the United
States, so that the location of the copying for purposes of the Copyright Act should be determined on
the basis of the “real and substantial connection” test as applied in the Tariff 22 case. The Tariff 22
case required a determination, for the purposes of the Copyright Act, of the location of a
communication initiated in one country and received in another. Given that a communication cannot
be complete without both a sender and receiver, it was necessary to adopt a principled basis for
choosing whether the communication would be situated at the location of the sender or the location
of the receiver. The principle applied in that case – the real and substantial connection test – is not
required to determine the location of the act of copying where, as in this case, the completed copy
exists only in one location...
¬ I agree with the Board that the making of a copy is not complete until it exists in some material form
(see subsection 3(1) of the Copyright Act). I also agree that the electronic copies of works stored in
the United States main server are outside the Board’s jurisdiction, even if the copying was initiated
in Canada...
¬ CSI argues in the alternative that a person who initiates, in Canada, the making of an electronic copy
of a work in the United States has authorized the copying, and has thereby infringed in Canada the
copyright attached to the work by virtue of the closing words of subsection 3(1) of the Copyright Act.
The Board, based on its interpretation of subsection 3(1), concluded that the act of authorizing
in Canada is not actionable under the Copyright Act where the primary infringement occurs
outside Canada. I agree.”

9
Sirius Canada Inc. v CMRRA/SODRAC,
2010 FCA 348
Is buffer copying a reproduction of a substantial part?
¬ “CSI argues that the Board erred in law in determining that the rolling 4 to 10
seconds of broadcast content stored momentarily in the temporary memory of a
satellite radio receiver is not a copy of the work, or a copy of a substantial part of a
work. The Board’s conclusion on this point is primarily a finding of mixed
law and fact but CSI argues, in essence, that the Board misdirected itself by
reasoning that a copy of a work or a substantial part of a work would exist only if a
complete reproduction of the work exists at one point in time.
¬ While the Board clearly considered it relevant that the 4 to 10 second buffer does
not cause a copy of the entire work to exist at any point in time, I do not read its
reasons as indicating that this was determinative. As I understand the Board’s
reasons, its conclusion was influenced, not only by the fact that a copy of no more
than 4 to 10 seconds of content could exist in the buffer at any one time, but also by
the fact that there would at no time be a choice as to what goes into the
buffer and when it comes out. In my view, the Board’s conclusion that the buffered
content was not a copy of an entire work or a copy of a substantial part of a work was
reasonably open to it on the record and was not based on an error of law. CSI’s
application cannot succeed on this ground.”

10
Commercial Radio Stations Tariff, [2010]
C.B.D. No. 4
In using "works" as they do, are radio stations making protected reproductions?
¬ “"Material form" insofar as copyright infringement is conceivably broader in scope
since the case law recognizes digital temporary incidental copies as acts of
reproduction. Moreover, in Eros-Équipe, the Federal Court defined material form in
the context of copyright infringement. The Court stated that the ordinary meaning of
material form meant something that was palpable, tangible and perceptible. We
were also referred to A & M Records Inc. v. Napster Inc. to establish that
downloading a musical file infringes the exclusive right of reproduction...
¬ The downloaded copy does not need to be incorporated into the playback system to
trigger the application of the Act. The evidence establishes that the audio file is
available for playback immediately after it is downloaded and it does not need to be
ingested in the digital playback system. Setting aside whether the temporary
encrypted file may have met the "materiality exigency" since it was unusable at that
stage, that is not the case once the file is decrypted...
¬ Therefore, we conclude that broadcasters in downloading audio files from MDS
services engage in reproductions that are protected by the Act.”

11
Commercial Radio Stations Tariff, [2010]
C.B.D. No. 4

Does streaming a work result in a reproduction of the work?
¬ “The song audition function is another service that MDS offer broadcasters. It allows
them to listen to a song before deciding whether or not they want to download a
certain song. According to the experts who testified, no downloading occurs when a
station "auditions" or "previews" a song; that function is enabled by streaming. As
noted in the past, some forms of streaming nonetheless involve the creation of a
temporary (or permanent) Internet file on the temporary folder of the end user's
computer. Once the file has been played, the temporary copy is "flushed away" or
appears to be erased but remains indefinitely in the temporary Internet file folder.
¬ In this instance, this does not appear to be the case. Just as with the buffer in
Satellite Radio Services, it fails to reproduce a substantial part of the copyright
subject matter. Consequently, we conclude that the right of reproduction is not
engaged in auditioning songs from the MDS server.”

12
Commercial Radio Stations Tariff, [2010]
C.B.D. No. 4
What is the nature of the performer's reproduction right pursuant to subparagraph
15(1)(b)(ii)?
¬ “The rights granted to performers pursuant to paragraph 15(1)(b) arise only if and when
the performance "is fixed". The performance itself is fleeting; it can only be fixed as it
occurs. The authorization to fix it however, almost always is granted before the
performance occurs (hence, probably, the use of the past tense "authorized"). Once
this is understood, it becomes easier to understand why paragraph 15(1)(b) grants the
rights that it grants. Subparagraph 15(1)(b)(ii) comes into play only if a performance is
fixed with the performer's authorization. Absent such an authorization, the performer's
control over the fixation flows from subparagraph (i), not (ii). Furthermore, performers
who consent to their performances being fixed generally also authorize the person
making the fixation to use it for some purpose or other. As a result, the performer's
reproduction right cannot materialize to the extent that the performer granted the maker
the right to engage in those uses before the fixation even existed. For all other
purposes, however, subparagraph 15(1)(b)(ii) grants to performers the exclusive right to
control the reproduction of the performance embodied in the fixation. Naturally,
subparagraph 15(1)(b)(i), which applies to a performance that is illegitimately fixed,
does not circumscribe the reproduction right of the performer, since the performer
consented to nothing in the first place. The performer retains the exclusive right to
control all subsequent uses of the unauthorized fixation of the performance.”
13
Copying for Private Use (Re: Private Copying
2010), Decision of the Board November 2, 2010
Percentage of total private copies of tracks made by media type (1999-2009)
Pourcentage du total des copies privées de pistes en fonction du type de support (1999-2009)

1999-2000 2001-2002 2005-2006 2006-2007 2008-2009

306.3M 173.4M 36.4M 26.1M 8.9M
Audiocassette/Cassette audio
(54%) (19%) (4%) (2%) (1%)

234.1M 706.1M 639.4M 696.5M 265.7M
CD
(41%) (76%) (69%) (43%) (21%)
n/a n/a 0.5M 29.4M 57.1M
DVD
s.o s.o (0%) (2%) (4%)
Digital Audio Recorder/Enregisteur n/a n/a 206.8M 807.8M 860.4M
audionumérique s.o s.o (22%) (50%) (68%)

28.6M 43.4M 47.2M 70.3M 79.1M
Others/Autres
(5%) (5%) (5%) (4%) (6%)

¬ See also, Decision of the Board December 17, 2010.
¬ “The market for blank CDs is contracting at a very rapid pace, to the benefit of other, newer
copying technologies. The blank CD is reaching the end of its technology life cycle; its
market is expected to become insignificant within the next few years... One can readily
accept that the number of tracks copied onto digital audio recorders (such as iPods) is
going up.”
14
CRTC (Re: Broadcasting Act Reference),
2010 FCA 178
Do retail Internet service providers (ISPs) carry on, in whole or in part,
“broadcasting undertakings” subject to the Broadcasting Act... when, in their role
as ISPs, they provide access through the Internet to “broadcasting” requested by
end-users? Answer no.
¬ “Both the Copyright Act and the Broadcasting Act – like the covenant at issue
in Electric Despatch – are concerned with the content being transmitted rather than
the means of conveying this content. As the owners of the telephone wires
in Electric Despatch, ISPs are “utterly ignorant” of the nature of the message
intended to be sent, and therefore cannot be said to “transmit” a “program” the
purport of which they have no knowledge (Electric Despatch, p. 91).
¬ Relying on the logic adopted by Binnie J. in CAIP in construing the word
“communicate” under the Copyright Act, I am of the view that the definition of
“broadcasting” is also directed at the person who transmits a program and that a
person whose sole involvement is to provide the mode of transmission is not
transmitting the program and hence, is not “broadcasting”.”

15
Philip Morris Products S.A. v. Malboro Canada
Limited, 2010 FC 1099
The Plaintiffs allege that certain versions of the Defendants’ Marlboro package
design infringe Philip Morris’ artistic copyright in its Marlboro Red Roof package
design.
¬ “I am unable to find that the Defendants’ 1996 and 2001 packages are sufficiently
similar to that of the Plaintiffs’ to conclude that they constitute an infringement of the
Plaintiffs’ copyrights. Indeed, the Plaintiffs’ own expert, Mr. Candib, was of the view
that the Defendants’ 1996 package was not sufficiently similar to the Philip Morris’
Marlboro package to be considered a copy...
¬ Even if I were to find that there is substantial similarity between the Defendants’
2001 and 2007 packages and the Philip Morris Marlboro package, there is no
evidence to establish a causal connection such that the Philip Morris package could
be considered the source of the Defendants’ 2001 and 2007 package redesigns. As
previously mentioned, an allegation of copyright infringement may be rebutted by
establishing independent creation, which is an absolute defence to copyright
infringement. In the present case, extensive testimony was presented at trial showing
that the Defendants’ 2001 and 2007 package redesigns were the product of
independent skill, judgment, and labour and were not copied from the
Philip Morris Marlboro package. ”

16
Canadian Private Copying Collective v. J & E
Media Inc., 2010 FC 102
Jurisdiction of Federal Court for tort claims
¬ “The Moving Defendants argue the Plaintiff’s claims against MDCI should be dismissed
because s.82 of the Act limits the obligation to pay private copyright levies on the first entity to
dispose of blank audio recording media imported or manufactured and MDCI never imported
or manufactured blank media.
¬ Lifting the corporate veil is justified when a corporation “is being used for fraudulent or
improper purposes or as a “puppet” to the detriment of a third party.”
¬ “The Moving Defendants submit this Court does not have jurisdiction to award damages for a
tortious common law conspiracy as it is a provincial matter of civil rights...
¬ In this action, the claim relates to the enforcement of the Act rather than enforcement of a
contract. The claim of conspiracy is advanced by the Plaintiff for the purpose of establishing a
violation of the Act and seeking relief provided therein....
¬ Justice Rouleau confirmed the provision [20(2) of the federal Courts Act] “…confers
jurisdiction on the Court where a right to relief exists.” It is to be noted that s. 88 of
the Act contains provisions for relief with respect to copyright violations.
¬ Based on the foregoing, the question of whether or not the Plaintiff may advance a claim of
conspiracy among the Defendants to avoid paying private copying levies as part of their case
for proving a violation of the Act is a serious question of law. It is best addressed at trial.”

17
Canadian Decisions-Remedies

18
Vinod Chopra Films Private Limited v. John
Doe, 2010 FC 387
¬ “As this case deals with a “rolling” Anton Piller Order the review must also consider criteria such as set
out by Pelletier J. at paragraph 7 of Club Monacosupra:
¬ The affidavits should contain the personal knowledge of the affiant as to the nature and extent of the
problem as it relates to the Plaintiff...
¬ Certain elements of the proof put before the Court are general in nature and cannot be easily be
particularized, for example, the damage to the goodwill of the plaintiff from the existence of
substandard counterfeit goods...
¬ Other elements of the proof can and should be particularized, specifically the instances of
counterfeiting known to the plaintiff which would justify the granting of an order...
¬ In general, a number of instances of counterfeiting would be required to justify a "rolling" order for
the simple reason that a specific instance would only justify a specific order...
¬ In the same way, proof of a number of incidents of counterfeiting in Ontario would only justify an
order which applied to Ontario...
¬ Since it is the allegation of counterfeiting which justifies the extraordinary interference with existing
property rights, the grounds upon which it is believed that counterfeiting is occurring should be
clearly stated...”
¬ “The fact that a number of defendants were known before the action was commenced and before the ex
parte Order was sought, coupled with the fact that those persons had already been put on notice is yet
another reason why this action and the resulting “rolling” Anton Piller Order is inappropriate.”

19
Cheung v. Target Event Production Ltd.,
2010 FCA 255
Scope of injunctive relief
¬ At trial (2010), 360 F.T.R. 54, the Federal Court held that the reproduction of a
market site plan and the construction of a market in accordance with the plan
infringed copyright. The court granted an injunction enjoining the defendant from,
inter alia, operating a market which was a substantial reproduction of the plaintiff’s
site plan.
¬ “The appellants submit that the trial judge erred by enjoining them from “operating” a
market which is a substantial reproduction of the Site Plan because the only
remedies available for copyright infringement are those provided for under
the Copyright Act, R.S.C. 1985 c. C-42. The statute does not contemplate
prohibitions against “use” or “operation”. Target agrees on this point, as do
I. Target’s suggestion that the injunction be amended to correspond to and reflect
the relevant statutory provisions is sound. It was open to the trial judge to enjoin the
appellants from further infringing activity and she did. Target should not be
prejudiced because the scope of the injunction, as drafted, is too broad. The
appropriate statement of injunctive relief is: Paul Cheung and Lions Communications
Inc. are enjoined from further infringing the copyright of Target Event Production Ltd.
in the Market Site Plan by reproducing it, or any substantial part thereof, in any
material form whatever.”

20
Entral Group International Inc. v. MCUE Enterprises
Corp. (Di Da Di Karaoke Company), 2010 FC 606
Statutory damages
¬ “The above facts demonstrate extreme bad faith on the part of the Defendants, inexcusable conduct
by the Defendants both before and during the proceedings, and a need for the Court to impose a
significant sanction to both deter the Defendants and anyone else who might attempt to make
money by ignoring and discounting clearly established rights in copyrighted works. The Defendants
have knowingly engaged in a course of conduct that has left the Plaintiffs with no alternative but to
expend significant time and resources to assert their rights in the Works. The Defendants have
offered no acceptable justification for their conduct in this matter. Their approach has been to put
the Plaintiffs to as much trouble and expense as possible so that the Defendants can continue to
use the Plaintiffs’ works and rights in their business for as long as possible without any payment for
that use. This is deplorable conduct and a deplorable attitude towards the rights of others for
purposes of economic gain. It has to be deterred in no uncertain terms...
¬ The one factor that deters me from awarding the maximum $20,000 per work on the present facts is
that, unlike Justice Harrington’s decision in 9038-3746 Quebec, above, and Justice Snider’s
decision in Louis Vuitton, above, there have been no previous Court orders that the Defendants
have disregarded and the Plaintiffs have been able to establish their case by summary judgment.
On the other hand, the Defendants have knowingly traded on the Plaintiffs’ rights for
years and have shown a cavalier and contemptuous attitude in face of the Plaintiffs’ good faith
efforts to assert their rights and legitimize the Defendants’ conduct. My feeling is that $15,000 per
infringed Work for a total statutory damages award of $105,000.00 is the appropriate sum in the
context of this case.”

21
Nicholas v. Environmental Systems
(International) Limited, 2010 FC 741
Statutory damages
¬ “there is no evidence here that the Plaintiff has suffered any damages or that the
Defendants have made any profit as a result of the infringing act. This is simply a
technical breach and does not warrant the Plaintiff receiving a substantial windfall .
Statutory damages require an assessment of the reality of the case and a just result.
See Telewizja Polsat S.A. v. Radiopol Inc., 2006 FC 584...
¬ There is no evidence of any market for the Report and the conduct of the Defendants
during the proceedings has been consistent with parties simply trying to resist the
Plaintiff’s inflated demands for $27,000,000.00. The Defendants have acknowledged
the Plaintiff’s copyright in the Report, the Report has been removed from Re-defining
Water’s website, and there is no evidence of conduct that requires deterrence.
¬ Consequently, I think the Plaintiff is entitled to no more than $500 in statutory
damages and only as against Mr. Cook and Re-defining Water, jointly and severally.”

22
Sixty Spa c. 3127885 Canada Inc., 2010 QCCS 2754

Statutory damages
¬ The Court concluded that 3127 had infringed Sixty Spa's copyright material by
importing and selling T-shirts bearing on its front an almost identical reproduction of a
copyright picture.
¬ “The testimonies of Mrs Aysha Singh and Mr Sacha Singh, the 3127's directors,
satisfied the Court that they were not aware and had no reasonable grounds to
believe that they were infringing copyright at the time of the sale and the importation
of the T-shirts. As well, the factors set out in Section 38.1(5) of the Act require
leniency here.
¬ Since only 90 T-shirts were imported in Canada, the statutory damages under Section
38.1(1) and Section 38.1(2), in the opinion of the Court, would be grossly out of
proportion to the infringement.
¬ Accordingly the award, under Section 38.1(5) of the Act shall be for a total of $150.”
¬ Is the decision right?

23
Wira v. Jubilee Enterprises Ltd., 2010 SKQB 320
Can a copyright be seized under the Execution Act?
¬ “ The court’s analysis in the Planet Earth case (supra) gives the widest possible
interpretation to the Ontario equivalent of The Executions Act. In particular its provisions
(similar to the Saskatchewan Act) recognize the Sheriff’s right to “seize any book
debts and other choses in actions of the execution debtor”. Nevertheless I cannot agree
with the conclusion in that case that the definition of “choses in action” is sufficiently wide
to support the right to effect execution upon copyrights and trade-marks.”
¬ Copyrights and trade-marks are quite dissimilar from “book debts”, particularized as an
example of a “choses in action” specifically referred to in ss. 5(2) of the Act. The second
reason I have for concluding that these categories of intellectual property were not
intended to be covered by the Act is with reference to s. 10. Subsection 10(1) constitutes
letters patent “personal property” and specifically recognizes that that category of
intellectual property is exigible under a writ of execution. There are two points to be
made in this regard. Firstly, s. 10(1) constitutes the letters patent “personal
property” and not a “chose in action”. Secondly, although s. 10 recognizes this category
of intellectual property (patents) as exigible to execution, that section, although it could
have done so, did not go on to afford the same recognition to copyrights or trade-marks,
categories of intellectual property often associated with patents.”

24
R. v. Hirani , 2010 BCPC 205

Criminal fines under s 42(1)
¬ Vendor of counterfeit goods charged with criminal offense under s.42(1). The value of
the goods in the store had these goods actually been genuine was $1,300,000. The
income from the sale of the illicit products was (approx) $18,000.
¬ “Given the seriousness of the offence and the significant size of the business involved,
but taking into account her limited ability to earn an income, the appropriate fine in this
case is $4,000. She will be allowed 12 months to pay that fine.
¬ Consistent with reasons given in the cases cited for the imposition of jail sentences, I
am also satisfied that a jail sentence is necessary in order that the fine not be
considered as a cost of a licence to conduct such illegal businesses, and that there is
both a punitive and rehabilitative aspect to this sentence. As this accused represents
no threat to her community and is a caregiver for her children, that jail sentence will be
served in the community as a conditional sentence for a term of six months”.

25
Microsoft Corp. V 9038-3746 Quebec Inc.
2010 FCA 151
Contempt orders
¬ Appellant appeals against the legality and the severity of the contempt sentence imposed by
Beaudry J. who ordered that the appellant pay a fine of $50,000 for each offence, within 120
days from the date of his order, failing which the appellant would have to serve a term of
imprisonment of sixty (60) days.
¬ “there is no firm rule that a first offender on a contempt of court cannot receive a custodial
sentence. As Harrington J., who issued the permanent injunction pointed out, the appellant
“proved himself time and time again to be a liar and a scofflaw”. His conduct “both
before and during these proceedings has been dismissive of law and order, and [his] failure
to provide appropriate records, despite court order, demonstrates the necessity of deterring
other infringements of the copyrights in question...
¬ Contempt of court is a serious offence. It is a challenge to the judicial authority whose
credibility and efficiency it undermines as well as those of the administration of justice. It is
even a more serious offence when, as in this case, the unlawful acts are motivated by
greed and, in addition to a challenge to the judicial authority, they also amount to violations
of the law, i.e. the Trade-marks Act and the Copyright Act.
¬ The sentence imposed in circumstances like the present one must be such as to deter the
offender from repeating his unlawful behaviour as well as other persons who would be
tempted to commit the same kind of offences.”

26
Foreign Decisions – Australia

27
Telstra Corporation Limited v. Phone
Directories Company Pty Ltd. [2010]
FCAFC 149 (15 December 2010)
Does copyright subsist in computer generated yellow and white pages directories?
¬ “The difficulty in this case is not that the efforts which might have gone into the production of the galley
file could not be sufficient acts of an appropriate quality to count as acts of authorship. Rather, the
difficulty is that those tasks were not carried out by humans but by computer programs. The trial judge
found – and it is not disputed – that the production of the galley file was almost entirely automated.
There were some minor aspects of checking which subsequently occurred after the production of the
galley file but even these too were largely automated...
¬ The Act does not presently deal explicitly with the impact of software on authorship... But a computer
program is a tool and it is natural to think that the author of a work generated by a computer program
will ordinarily be the person in control of that program. However, care must taken to ensure that the
efforts of that person can be seen as being directed to the reduction of a work into a material form.
Software comes in a variety of forms and the tasks performed by it range from the trivial to the
substantial. So long as the person controlling the program can be seen as directing or fashioning the
material form of the work there is no particular danger in viewing that person as the work’s author. But
there will be cases where the person operating a program is not controlling the nature of the material
form produced by it and in those cases that person will not contribute sufficient independent
intellectual effort or sufficient effort of a literary nature to the creation of that form to constitute that
person as its author: a plane with its autopilot engaged is flying itself. In such cases, the performance
by a computer of functions ordinarily performed by human authors will mean that copyright does not
subsist in the work thus created.” per Perram J.

28
Acohs Pty Ltd v Ucorp Pty Ltd [2010] FCA
577 (10 June 2010)
Does copyright subsist in electronic information sheets with respect to hazardous
substances and dangerous goods (MSDS) where the sheets are generated using
software (Infosafe) from data in a computer database based on the selection of
parameters by users?
¬ The source codes to the HTML generating routines produced by Infosafe that
produced the pages were not protected by copyright. They were computer
generated and the authorship requirement was not met.
¬ There was copyright in each MSDS. “I am satisfied that the Acohs -author of an
Infosafe MSDS should be regarded as the copyright-author, and that the work
created by him or her was original. Even in a case in which every verbal and
numerical element of an MSDS created by an author was to be found in the CDB,
the author was still required to select from the menu of sub-headings those that
would be used and those that would be irrelevant (and thus would not be used).
The electronic documentary entity which he or she thereby brought into existence
was not merely the result of copying from something else.”

29
Fairfax Media Publications Pty Ltd v Reed
International Books Australia Pty Ltd [2010]
FCA 984 (7 September 2010)
Does providing a service which contains the headlines and by-lines (together with an
original abstract of articles) infringe copyright?
¬ “The headline and by-line is, as Reed says, meta-information about the work, not part
of the work, the work being the article. The need to identify a work by its name is a
reason for the exclusion of titles from copyright protection in the public interest. A
proper citation of a newspaper article requires not only reference to the name of the
newspaper but also reproduction of the headline. This was a matter of common
ground between the witnesses. If titles were subject to copyright protection,
conventional bibliographic references to an article would infringe…. In my view, to
afford published headlines, as a class, copyright protection as literary works would tip
the balance too far against the interest of the public in the freedom to refer or be
referred to articles by their headlines.
¬ This does not exclude the possibility of establishing a basis for copyright protection of
an individual headline but Fairfax has failed to prove that the ten selected headlines
amount to literary works in which copyright can subsist.”
¬ Not followed in The Newspaper Licensing Agency Ltd v Meltwater Holding BV [2010]
EWHC 3099 (Ch) (26 November 2010)

30
Primary Health Care Limited v Commissioner
of Taxation [2010] FCA 419 (4 May 2010)

Does copyright subsist in patient records and consultation notes?
¬ “…I am not satisfied that the consultation notes are original literary works in which
copyright subsists. In summary, the entries in the notes are largely restricted to
notations of the names of medical conditions and medications as well as
physiological and pathological data such as blood pressure and blood count readings.
As such their expression does not display the independent intellectual effort in their
expression necessary for copyright protection.”
¬ “PHC claims copyright in the patient records of the sample practices...I have found
little evidence to support a finding that copyright subsists in them…” “None of this
denies the intellectual effort and professional skill needed to form the diagnoses, to
select methods of treatment or to understand the significance of clinical data that is
recorded, however, copyright protects a form of expression not this underlying
expertise.”

31
Larrikin Music Publishing Pty Ltd v EMI
Songs Australia Pty Limited [2010] FCA 29
(4 February 2010)

Scope of copyright protection for musical works.
¬ “In my opinion, there is a sufficient degree of objective similarity between the bars
of Kookaburra which are seen and heard in Down Under to amount to a
reproduction of a part of Miss Sinclair’s round. The question of whether it is a
reproduction of a substantial part of that work is a different question which I will
address later.”
¬ “I have come to the view that the 1979 recording and the 1981 recording of Down
Under infringe Larrikin’s copyright in Kookaburra because both of those recordings
reproduce a substantial part of Kookaburra.”

32
Roadshow Films Pty Ltd v iiNet Limited (No. 3)
[2010] FCA 24 (4 February 2010)
Internet piracy-graduated response
¬ The court made a number of important rulings about the liability arising from the use of
BitTorrent networks.
¬ An ISP that simply provides internet connectivity to subscribers does not by that act alone
authorize the subscriber’s infringing activity.
¬ Seeders and peers that make music available for sharing are infringers under Australia’s
making available right.
¬ The transmission of copyright files as part of a BitTorrent swarm constitutes a transmission
(communication) to the public by participants in the stream and is infringing.
¬ A peer that downloads a copyright file over an unauthorized BitTorrent network infringes the
reproduction right of the copyright owner.
¬ There can be liability for the transmission over a BitTorrent network even if some part of the
transmission occurs outside of Australia.
¬ Operators of BitTorrent sites are probably liable for copyright infringement for having
authorized infringement.
¬ What will the Full Court of Australia do?

33
Foreign Decisions – Europe

34
PADAWAN SL v Sociedad General de Autores y
Editores (SGAE) (Case C-467/08) 21 October, 2010
Is the Spanish private Copying Regime Compliance with the EU Directive?
¬ “The concept of ‘fair compensation’, within the meaning of Article 5(2)(b) 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, is an autonomous concept of European Union law which must be interpreted
uniformly in all the Member States that have introduced a private copying exception,
irrespective of the power conferred on the Member States to determine, within the
limits imposed by European Union law in particular by that directive, the form, detailed
arrangements for financing and collection, and the level of that fair compensation.”
¬ “Article 5(2)(b) of Directive 2001/29 must be interpreted as meaning that a link is
necessary between the application of the levy intended to finance fair compensation
with respect to digital reproduction equipment, devices and media and the deemed
use of them for the purposes of private copying. Consequently, the indiscriminate
application of the private copying levy, in particular with respect to digital reproduction
equipment, devices and media not made available to private users and clearly
reserved for uses other than private copying, is incompatible with Directive 2001/29.”

35
REFERENCE for a preliminary ruling from the
Nejvyšší správní soud (Czech Republic) ECJ 22
December, 2010
¬ Is a GUI protected as a computer program? No. “the graphic user interface does not enable the
reproduction of that computer program, but merely constitutes one element of that program by means
of which users make use of the features of that program.”
¬ Can a GUI otherwise be protected by copyright? Yes. “[A]n interface can be protected by copyright
as a work by Directive 2001/29 if that interface is its author’s own intellectual creation”. But there is no
protection if the GUI is dictated by a “technical function” “since the different methods of implementing
an idea are so limited that the idea and the expression become indissociable.”
¬ Note: the court applies a “merger” like doctrine at originality stage rather than at the infringement stage.
¬ Is the transmission of a GUI by TV broadcast a communication to the public? No. “if, in the
context of television broadcasting of a programme, a graphic user interface is displayed, television
viewers receive a communication of that graphic user interface solely in a passive manner, without the
possibility of intervening. They cannot use the feature of that interface which consists in enabling
interaction between the computer program and the user. Having regard to the fact that, by television
broadcasting, the graphic user interface is not communicated to the public in such a way that
individuals can have access to the essential element characterising the interface, that is to say,
interaction with the user, there is no communication to the public of the graphic user interface within
the meaning of Article 3(1) of Directive 2001/29.”
¬ Is the decision right?

36
The Pirate Bay Appeal, SVEA Court of Appeal,
26 November, 2010
Jurisdiction of Sweden’s copyright laws to p2p infringement cases
¬ “In the opinion of the Court of Appeal, the fact that it was possible for the general public to
obtain access to the works in Sweden (as well as in almost all of the other countries of the
world) cannot alone form the basis for the conclusion that the principal offences are to be
deemed to have been committed in Sweden.”
¬ “In order for there to be a copyright law exploitation... i.e. making available through a
transmission to the public, it is probably insufficient that the uploader (the original seeder)
creates a torrent file which refers to the work which he or she stored on his or her hard drive.
In order for the public to actually obtain access to the work, it must normally be required that
the seeder presents the torrent file in such a manner that individual users in wider circles can
find it via search engines or collections of links... Taking into consideration how the aiding
and abetting acts have been stated in the description of the criminal acts, the claims...must
be deemed to include placing torrent files in TPB’s database. According to the Court of
Appeal’s approach regarding the construction of the main criminal acts according to the
prosecution, the placement of the torrent files in TPB’s database thus constituted an
essential element of the main perpetrators’ criminal act. Since it has been proven that TPB’s
servers were located in Sweden, the crimes must thus be deemed to have been committed
here in the country and Swedish law is applicable. For the same reasons, Swedish courts
have jurisdiction to hear the action.”

37
The Pirate Bay Appeal, SVEA Court of Appeal,
26 November, 2010
Accessorial (secondary) liability of P2P site operators for aiding and abetting infringement
¬ “The Court of Appeal shares the District Court’s conclusion that TPB’s website, through its
search functionality (uploading and storage possibilities for torrent files, and tracker which
brokered contact between individual file sharers), contained a service which facilitated the
principal offences. Even if the service was not a necessary condition for the individual principal
offences to occur, it has made it simpler and quicker for the users to transmit the works to the
general public through file sharing.
¬ Thus, any person who provides such a service furthers the crime, which gives rise to liability for
aiding and abetting under the wording of Chapter 23, section 4 of the Penal Code.”
¬ “...irrespective of the share of legally presented works in the database, the file sharing of
protected works, which were not covered by the rights holders’ consent, constituted the
dominant activity amongst TPB’s users. In this respect, the users’ actions involved an attack on
the fundamental values of our legal culture... No safety measures were taken and torrent files
which referred to protected works were not removed even after requests and warnings. In a
weighing between the social benefit of providing a service for file sharing of lawfully-provided
material and the entirely obvious risk that the activities, to a massive extent, would lead to
infringement of copyright holders’ constitutionally protected rights, the Court of Appeal finds that
a release from liability on the grounds of unwritten exception rules regarding social benefits and
lack of criminal intent cannot be relevant.”

38
FTD B.V. v Eyeworks Film & TV Drama BV, Court
of Appeal of the Hague, 15 November, 2010

Accessorial (secondary) liability of online site operators
¬ “It boils down to FTD operating an application in a structural/systematic way,
through which an activity (i.e. illegal uploading) is encouraged, and it consequently
knows or should be aware that this results in infringement of the copyright held by
Eyeworks as well as (serious) harm to Eyeworks, while it, FTD, itself makes a profit
from the activity….
¬ FTD has acted contrary to the due diligence and care that it should observe vis-à-
vis Eyeworks. The alternative application by Eyeworks, insofar as it is based on
the action of FTD with regard to encouraging uploading, is therefore admissible on
the basis of Article 6:162 of the Civil Code.”
¬ Court also holding that downloading from an illegal source is not infringement
under Dutch copyright law as it is exempted under its private copying exception.
See also, ACI Adam BV v Stichting De Thuiskopie Court of Appeal of the Hague,
15 November, 2010.

39
Foreign Decisions –UK, Ireland,
Singapore

40
SAS Institute Inc v World Programming Ltd
[2010] EWHC 1829 (Ch) (23 July 2010)

Scope of protection for computer programs
¬ Copyright in computer programs does not protect programming languages from
being copied.
¬ Copyright in computer programs does not protect interfaces from being copied
where this can be achieved without decompiling the object code.
¬ Copyright in computer programs does not protect the functions of the programs
from being copied.
¬ See also, SAS Institute Inc v World Programming Ltd [2010] EWHC 3012 (Ch)
(22 November 2010) referring these and other questions to the Court of Justice of
the European Union under Article 267 of the Treaty on the Functioning of the
European Union.

41
Football Dataco Ltd v Brittens Pools Ltd, [2010]
EWHC 841 (Ch) (23 April 2010)
A preliminary issue concerned whether the annual fixture lists produced and
published for the purposes of the English and Scottish (football) Premier Leagues
and football leagues ("the Fixture Lists") are protected by copyright as a database
under the CDPA 1988.
¬ “In my judgment the selection or arrangement required...is not confined to selection or
arrangement performed after the data is finally created. The process of selection and
arrangement of the contents of a database can and often will commence before all the
data is created. I see no reason why selection decisions made about the contents of the
database in the course of arriving at the final version should not properly be described
as selection or arrangement. To cut out from consideration these selection decisions,
merely because they occur whilst the database is being created, seems to me to be
arbitrary, and conceptually fraught with difficulty. Nevertheless it is necessary to focus
on skill and labour which is actually concerned with selection and arrangement, and to
exclude that which is not.”
¬ Would a Canadian Court follow this approach or the approach in Australia in IceTV Pty
Limited v Nine Network Australia Pty Limited [2009] HCA 14 (22 April 2009)?

42
The Newspaper Licensing Agency Ltd v
Meltwater Holding BV [2010] EWHC 3099 (Ch)
(26 November 2010)
Are headlines protected by copyright?
¬ Meltwater monitors a wide range of websites, including those of the Publishers using "spider"
programs to "scrape" or "read" the content. Its programs then create an index which records
the position of every word in every article on every such website. Meltwater 's customer will
select particular search terms and Meltwater will then provide Meltwater News, a Monitoring
Report with details of every article containing the agent published within a defined period, for
instance the preceding day or 7 days. Meltwater News is either emailed to the customer or
the customer is given the facility to access it at Meltwater 's website.
¬ “In my opinion headlines are capable of being literary works, whether independently or as part
of the articles to which they relate.”
¬ “I have no doubt that in many (though not all) cases the text extracts, even leaving aside the
headline, do contain elements which are the expression of the intellectual creation of the
author of the article as a whole. That is so whether one is applying the test of whether there
has been an unfair appropriation of the author's labour and skill which went into the creation
of the original article or whether parts of sentences have been appropriated "which may be
suitable for conveying to the reader the originality of a publication such as
a newspaper article, by communicating to that reader an element which is, in itself, the
expression of the intellectual creation of the author." (Infopaq [47]).”

43
The Newspaper Licensing Agency Ltd v
Meltwater Holding BV [2010] EWHC 3099 (Ch)
(26 November 2010)
Does viewing a work on a browser infringe copyright?
¬ “When an End User receives an email containing Meltwater News, a copy is made on the End
User's computer and remains there until deleted. Further, when the End User views Meltwater
News via Meltwater 's website on screen, a copy is made on that computer.
¬ Therefore the End User makes copies of the headline and the text extract in those two situations
and there is prima facie infringement.
¬ When an End User clicks on a Link a copy of the article on the Publisher's website which
appears on the website accessible via that Link is made on the End User's computer... However
it seems to me that in principle copying by an End User without a licence through a direct Link is
more likely than not to infringe copyright.
¬ An End User who uses the share function to forward a headline Link (and, a fortiori, an End User
who simply forwards an email) to a client will make further copies and thus further infringe. Such
forwarding will also be issuing a copy to the public under s. 18 CDPA.”
¬ “s. 28A CDPA...is inapplicable to permit the End Users to make copies with impunity.” “the
temporary copies exception is solely concerned with incidental and intermediate copying so that
any copy which is 'consumption of the work', whether temporary or not, requires the permission
of the copyright holder. A person making a copy of a webpage on his computer screen will not
have a defence under s. 28A CDPA simply because he has been browsing.”
44
ITV Broadcasting Ltd v TV Catch Up Ltd [2010]
EWHC 3063 (Ch) (25 November 2010)

Is offering an on demand web service a communication of a broadcast?
¬ The defendant operates a website at www.tvcatchup.com which allows members of the
public to watch live UK television on their computers, iPhones and games consoles.
Any member of the public wishing to access the service must first become a member.
He can then select one of over 50 channels by pressing on the appropriate icon,
whereupon he is taken to a new screen on which the defendant provides a stream of the
programme being broadcast on that channel.
¬ “Mr Boswood nevertheless submits that one cannot communicate a broadcast other
than by means of a mode of delivery which has the characteristics of a broadcast.
These characteristics include transmission for simultaneous reception by members of
the public, that is to say "one to many". By contrast, he says, the defendant's
transmission is not "one to many" but rather "one to one...
¬ I am unable to accept this argument... For the reasons I have given, I am satisfied that
the claim does have a real prospect of success.”
¬ Compare with RecordTV case.

45
Media C.A.T. Ltd. v A [2010] EWPCC 17
(01 December 2010)

Does permitting another person to use your internet connection to make unlicensed
copies authorizing infringement?
¬ The Claim alleged that the defendant was liable for infringement because “someone
authorised by him to use his internet connection, or someone who gained access to the
defendant's internet connection due to the router to that connections having no or no
adequate security was at all material times a user of the peer-to-peer ("P2P") file sharing
software known as BitTorrent 6.1.2 which allows the user to share digital media content files
on a network with other users.”
¬ “Peer to peer file sharing which involves copyright infringement is an important and serious
matter and claimants with a proper claim are entitled to use the full machinery of the courts
to enforce their rights.”
¬ “The claimant's right to bring these claims at all may be entirely solid but that does not
emerge clearly from the statement of case. A key part of the plea of infringement rests on
an assertion that "allowing" others to infringe is itself an infringing act, when it is not. There
is no plea that the works qualify for copyright protection at all.”

46
Football Dataco Ltd v Sportradar GmbH, [2010]
EWHC 2911 (Ch) (17 November 2010)
Jurisdiction: Where is a work made available?
¬ GmbH provides a competing service to the claimants called "Sport Live Data". The
data is stored on webservers in Germany and Austria, but can be accessed via links
from elsewhere, including from the United Kingdom.
¬ “neither side suggested that there was or could be any sensible distinction between the
interpretation of making available to the public of the work by an electronic or online
transmission in section 20(2)(b) of the Act and Article 3.1 of the Information Society
Directive on the one hand and Article 7(2)(b) of the Database Directive and paragraphs
12 and 16 of the Copyright and Rights in Database Regulations on the other.
¬ I have come to the conclusion that the better view is that the act of making available to
the public by online transmission is committed and committed only where the
transmission takes place. It is true that the placing of data on a server in one state can
make the data available to the public of another state but that does not mean that the
party who has made the data available has committed the act of making available by
transmission in the State of reception. I consider that the better construction of the
provisions is that the act only occurs in the state of transmission.”
¬ In Canada, would the real and substantial connection test be applied?

47
Crosstown Music Company 1, LLC v Rive Droite
Music Ltd [2010] EWCA Civ 1222 (02 November
2010)
Jurisdiction to determine international copyright ownership of a work
¬ “Turning to the authorities, notably Lucasfilm, which was concerned with the
justiciability of claims for infringement of foreign copyright, they do not
support Crosstown's submissions on the non-justiciability of the title issues to foreign
copyrights. The issue of ownership of copyright as between the parties in this case
turns on the legal effect of contractual documents that, according to their express
terms, have to be construed according to English law and are subject to the exclusive
jurisdiction of the English courts.”
¬ “In my judgment, the judge correctly decided that the automatic reverter provisions in
the songwriting agreements were compatible with the partial nature of the assignments
of copyright permitted under s90 of the 1988 Act. There is nothing in the 1988 Act, or
in any other Act, or at common law to prevent the automatic reverter provisions from
taking effect according to their agreed terms.”

48
Twentieth Century Fox Film Corporation v.
Newzbin Ltd., [2010] EWHC 601 (Ch) (29
March 2010)
Internet piracy and accessorial liability doctrines
¬ English court found the operators of the Usenet Newzbin service to be liable for
organizing and making hyperlinks to movies available to premium subscribers.
¬ The Court found liability based on authorizing acts of infringement by its members,
procuring, encouraging and entering into a common design with its members to infringe,
and communicating the claimants’ copyright works to the public, namely, the
defendants’ members.
“For all these reasons I am entirely satisfied that a reasonable member would deduce
from the defendant's activities that it purports to possess the authority to grant any
required permission to copy any film that a member may choose from the Movies
category on Newzbin and that the defendant has sanctioned, approved and
countenanced the copying of the claimants' films, including each of the films specifically
relied upon in these proceedings.”
“In all these circumstances, I believe the question I have identified admits of only
answer. The defendant has indeed procured and engaged in a common design with its
premium members to infringe the claimants' copyrights.”

49
EMI Records & Ors v Eircom Ltd, [2010] IEHC 108
Copyright as a human right and Internet piracy
¬ “In dealing with this aspect of data protection entitlement, I feel I must return, for a
moment, to some basic principles of law. There is fundamental right to copyright in Irish
Law. This has existed as part of Irish legal tradition since the time of Saint Colmcille. He
is often quoted for his aphorism: le gach bó a buinín agus le gach leabhar a chóip (to
each cow its calf and to every book its copy). The right to be identified with and to
reasonably exploit one’s own original creative endeavour I regard as a human
right. Apart from legal tradition, the rights now enshrined in the Copyright and Related
Rights Act, 2000 were, under their previous legislative incarnation, identified
in Phonographic Performance Ireland Limited v. Coady, [1994] I.R. 504 by Keane J. at
511 has having a pre-legislative origin and super-legislative effectiveness as part of the
unenumerated fundamental rights under the Constitution”..
¬ “The internet is only a means of communication. It has not rewritten the legal
rules of each nation through which it passes. It is not an amorphous extraterrestrial
body with an entitlement to norms that run counter to the fundamental principles of
human rights. Since the early days of the internet, and increasingly as time has gone on,
copyright material has been placed on world wide web by those with no entitlement to
share it. There, it is downloaded by those who would normally have expected to pay for
it. Among younger people, so much has the habit grown up of downloading copyright
material from the internet that a claim of entitlement seems to have arisen to have what
is not theirs for free.”
50
EMI Records (Ireland) Ltd v UPC
Communications Ireland Ltd [2010] IEHC 377

Internet piracy and graduated response
¬ “Solutions are available to the problem of internet copyright piracy. It is not
surprising that the legislative response laid down in our country in the Copyright
and Related Rights Act 2000, at a time when this problem was not perceived to be
as threatening to the creative and retail economy as it has become in 2010, has
made no proper provision for the blocking, diverting or interrupting of internet
communications intent on breaching copyright. In failing to provide legislative
provisions for blocking, diverting and interrupting internet copyright theft, Ireland is
not yet fully in compliance with its obligations under European law. Instead, the
only relevant power that the courts are given is to require an internet hosting
service to remove copyright material. Respecting, as it does, the doctrine of
separation of powers and the rule of law, the Court cannot move to grant injunctive
relief to the recording companies against internet piracy, even though that relief is
merited on the facts.”

51
RecordTV Pte Ltd v MediaCorp TV Singapore
Pte Ltd [2010] SGCA 43
¬ Whether for profit companies that operate Internet DVR services for television
programming are liable for copyright infringement.
¬ Who makes the server copies? Following the reasoning in Cartoon Network LP v CSC
Holdings Inc 536 F 3d 121 (2nd Cir 2008), the court held that if the end-user is the maker
of this time-shifted recording for the purposes of the VCR, it must remain that the end-
user is the maker of the recording in the context of the DVR, remote or local.
¬ Are streams transmitted to subscribers communicated to “the public”? No. “The
aggregate of private communications to each “registered User is not...a communication
to the public.”
¬ Who communicates the program streams to the public? “since the only MediaCorp
shows that were “communicated” were those shows that appeared on each Registered
User’s playlist, and since the exact make-up of each playlist depended on the specific
shows which the Registered user in question had requested to be recorded, “the person
responsible for determining the content of the communication at the time the
communication [was] made” would be that Registered User himself.”
¬ Did RecordTV authorize the reproductions or communications? No. Its terms of
use limited the use of the service for non-infringing purposes.
¬ Compare with the Satellite Radio case on the communication and authorization issues.
52
Foreign Decisions – USA

53
US v. ASCAP 2010 WL 3749292 (2nd. Cir.
Sept. 28, 2010)
Is a download of a work a public performance?
¬ “… we affirm the district court's ruling that a download of a musical work does not
constitute a public performance of that work.”
¬ “The downloads at issue in this appeal are not musical performances that are
contemporaneously perceived by the listener. They are simply transfers of
electronic files containing digital copies from an on-line server to a local hard drive.
The downloaded songs are not performed in any perceptible manner during the
transfers; the user must take some further action to play the songs after they are
downloaded. Because the electronic download itself involves no recitation,
rendering, or playing of the musical work encoded in the digital transmission, we
hold that such a download is not a performance of that work, as defined by § 101.”
¬ Compare to the Tariff 24 Ringtones case.

54
Vernor v. AUTODESK, INC. 621 F.3d 1102
(9th.Cir. 2010)

First sale doctrine-when is a transaction a sale or license?
¬ “We hold today that a software user is a licensee rather than an owner of a
copy where the copyright owner (1) specifies that the user is granted a license;
(2) significantly restricts the user's ability to transfer the software; and (3)
imposes notable use restrictions. Applying our holding to Autodesk's SLA, we
conclude that CTA was a licensee rather than an owner of copies of Release 14
and thus was not entitled to invoke the first sale doctrine or the essential step
defense.”
¬ Followed in MDY Industries, LLC v Blizzard Entertainment, Inc. 2010 WL
5141269 (9th.Cir. 2010)

55
MDY Industries, LLC v Blizzard Entertainment,
Inc. 2010 WL 5141269 (9th.Cir. Dec 14, 2010)
When is a term in a license a covenant or a condition?
¬ “We conclude that for a licensee’s violation of a contract to constitute copyright
infringement, there must be a nexus between the condition and the licensor’s
exclusive rights of copyright. Here, WoW players do not commit copyright
infringement by using Glider in violation of the ToU. MDY is thus not liable for
secondary copyright infringement, which requires the existence of direct copyright
infringement.”
¬ “Here, ToU § 4 contains certain restrictions that are grounded in Blizzard’s exclusive
rights of copyright and other restrictions that are not...
¬ Were we to hold otherwise, Blizzard — or any software copyright holder — could
designate any disfavored conduct during software use as copyright infringement, by
purporting to condition the license on the player’s abstention from the disfavored
conduct. The rationale would be that because the conduct occurs while the player’s
computer is copying the software code into RAM in order for it to run, the violation is
copyright infringement. This would allow software copyright owners far greater rights
than Congress has generally conferred on copyright owners.”

56
Columbia Pictures Industries Inc v Fung
2:06-cv-05578-SVW-JC (C.D. Cal. May 20, 2010)

What is the scope of the US Copyright Act to claims for infringement that involves
foreign elements?
¬ “this Permanent Injunction enjoins the conduct of Defendants wherever they may be
found, including without limitation in Canada.
¬ The Court further clarifies that this injunction covers any acts of direct infringement,
as defined in 17 U.S.C. § 106, that take place in the United States. To the extent that
an act of reproducing, copying, distributing, performing, or displaying takes place in
the United States, it may violate 17 U.S.C. § 106, subject to the generally applicable
requirements and defenses of the Copyright Act. As explained in the Court’s
December 23, 2009 Order, “United States copyright law does not require that both
parties be located in the United States. Rather, the acts of uploading and
downloading are each independent grounds of copyright infringement liability.”...
Each download or upload of Plaintiffs’ copyrighted material violates Plaintiffs’
copyrights if even a single United States-based user is involved in the “swarm”
process of distributing, transmitting, or receiving a portion of a computer file
containing Plaintiffs’ copyrighted content.”

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Mattel, Inc. v. MGA Entertainment, Inc., 616
F. 3d 904 (9th.Cir.2010)

Idea expression dichotomy
¬ Who owns the Bratz doll?
¬ “MGA's Bratz dolls can't be considered substantially similar to Bryant's
preliminary sketches simply because the dolls and sketches depict young,
stylish girls with big heads and an attitude. Yet this appears to be how the
district court reasoned… It might have been reasonable to hold that some of
the Bratz dolls were substantially similar to Bryant's sketches, especially those
in the first generation. But we fail to see how the district court could have found
the vast majority of Bratz dolls, such as "Bratz Funk `N' Glow Jade" or "Bratz
Wild Wild West Fianna," substantially similar—even though their fashions and
hair styles are nothing like anything Bryant drew—unless it was relying on
similarities in ideas.”

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Baby Buddies, Inc. v. Toys " R" Us, Inc., 2010
WL 2853720 (11th.Cir. July 22, 2010)

Idea expression dichotomy
¬ “In fact, there are almost no similarities between the two pacifier holders beyond
the general ideas of including a teddy bear (with the requisite ears, eyes, nose,
mouth, arms, and legs), a ribbon bow, and a pastel-based color scheme on
a baby's pacifier holder. Any reasonable jury, properly instructed, would pick up
on these differences and their cumulative effect on the noticeably different
aesthetics embodied in the two pacifier holders. Because no reasonable jury
could conclude that the pacifier holders are substantially similar at the protected
level, the district court properly granted Toys R Us's motion for summary
judgment on the copyright infringement count.”

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Benay v. Warner Bros. Entertainment, Inc.,
607 F. 3d 620 (9th. Cir. 2010)
Idea expression dichotomy
¬ Did the film “The Last Samurai” infringe a screenplay by the same name?
¬ “At a very high level of generality, both works share certain plot similarities. “Funky
Films, 462 F. 3d at 1081. "But `[g]eneral plot ideas are not protected by copyright
law; they remain forever the common property of artistic mankind.’” Id. (quoting
Berkic, 761 F. 2d at 1293); see also Cavalier, 297 F. 3d at 824 ("[B]asic plot ideas,
such as this one, are not protected by copyright law."). A number of similarities
between the works arise out of the fact that both works are based on the same
historical events, take place at the same time and in the same country, and share
similar themes. These similarities are largely between unprotected elements—
historical facts, characteristics that flow naturally from their shared premise, and
scenes-a-faire. See Berkic, 761 F. 2d at 1293-94. Considering the Screenplay
and the Film in their entireties, we conclude that the district court was correct in
granting summary judgment to the Defendants on the Benays' federal copyright
claim.”

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Sony Computer Entertainment America, Inc v
Jaffe, 2010 WL 816651 (N.D.Cal, 2010)
Idea expression dichotomy
¬ “An examination of articulable similarities between the plot, themes, dialogue, mood,
settings, pace, characters and sequence of events of God of War and plaintiffs’ works
reveals far less similarity than would be required to overcome summary judgment,
even if plaintiffs had proven access. Plaintiffs have pointed to no persuasive similarity
in dialogue or narration that would suggest actual copying. As in Berkic v. Crichton,
761 F.2d at 293, there is some degree of similarity between the plots at an extremely
generalized level. Yet, as that court admonished, “No one can own the basic idea for
a story. General plot ideas are not protected by copyright law; they remain forever the
common property of artistic mankind.” Id. This is particularly true when virtually all of
the elements comprising plaintiffs’ works are stock elements that have been used in
literary and artistic works for years, if not millennia. As noted, the particular sequence
in which an author strings a significant number of unprotectable elements can itself be
a protectable element. Metcalf 294 F.3d at 1074. Here, the sequences of elements,
and the relationships between them, are entirely dissimilar. No reasonable trier of fact
could conclude that God of War is substantially similar to any of plaintiffs’ works.”

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Ho v. TAFLOVE, 696 F. Supp. 2d 950
(N.D.Ill.2010)

Copyright protection for algorithms
¬ “Plaintiffs … argue that defendants copied plaintiffs' "expression of a
complicated physical phenomenon, consisting of 1) the Model formulation, 2)
the related full derivation of equations, and 3) two figures….
¬ However, the Copyright Act clearly provides that "[i]n no case does copyright
protection for an original work of authorship extend to any idea, procedure,
process, system, method of operation, concept, principle, or discovery,
regardless of the form in which it is described, explained, illustrated, or
embodied in such work" 17 U.S.C. § 102(b). Defendants contend that the
items allegedly copied are unprotectable concepts, ideas, methods,
procedures, processes, systems, and/or discoveries, even if contained in a
copyrighted work. Additionally, defendants contend that the merger doctrine
applies because there are so few ways of mathematically expressing the
Model.”

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Viacom Int’l Inc. v. YouTube, Inc., 718 F.Supp.2d
514 (S.D.N.Y. June 23, 2010)

What is the scope of the DMCA safe harbour for a UGC site like YouTube?
¬ “Although by a different technique, the DMCA applies the same principle, and its
establishment of a safe harbor is clear and practical: if a service provider knows
(from notice from the owner, or a “red flag”) of specific instances of infringement,
the provider must promptly remove the infringing material. If not, the burden is
on the owner to identify the infringement. General knowledge that infringement
is “ubiquitous” does not impose a duty on the service provider to monitor or
search its service for infringements.”

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Arista Records, LLC v Lime Wire Group 2010
WL 1914816 (S.D.N.Y.2010)
Internet piracy-scope of contributory infringement doctrines
¬ There was “overwhelming evidence that LimeWire engaged in purposeful conduct
that fostered infringement” to support liability based on inducement.
¬ “LimeWire has engaged in purposeful conduct that fostered infringement, with the
intent to foster such infringement. LimeWire distributes its software LimeWire, and
(1) is aware that LimeWire’s users commit a substantial amount of copyright
infringement; (2) markets LimeWire to users predisposed to committing infringement;
(3) ensures that LimeWire enables infringement and assists users committing
infringement; (4) relies on the fact that LimeWire enables infringement for the
success of its business; and (5) has not taken meaningful steps to mitigate
infringement.”
¬ The court found LimeWire vicariously liable the infringements of its users based on
substantial evidence that LimeWire “had the right and ability to limit the use of its
product for infringing purposes, including by (1) implementing filtering; (2) denying
access; and (3) supervising and regulating users.”
¬ Permanent injunction granted October 26, 2010.

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Arista Records, LLC v. Doe 3, 604 F. 3d 110
(2nd.Cir.2010)
Internet piracy-privacy of users and fair use defense
¬ “Thus, to the extent that anonymity is used to mask copyright infringement or to facilitate such
infringement by other persons, it is unprotected by the First Amendment.”
¬ “…we regard Doe 3's expectation of privacy for sharing copyrighted music through an online
file-sharing network as simply insufficient to permit him to avoid having to defend against a
claim of copyright infringement.”
¬ “Finally, we note that Doe 3 several times mentions the copyright doctrine of "fair use,"
stating, for example, that "the right to make a personal copy of copyrighted material may be
protected as fair use“… and that "some downloading may be permissible as fair use“...
Whether or not these and other statements are intended to suggest that Doe 3 has a fair-use
defense to plaintiffs' claims of copyright infringement, we reject the proposition that these
arguments are sufficient to warrant quashing plaintiffs' subpoena. "Fair use" is an equitable
doctrine, the applicability of which presents mixed questions of law and fact... "Fair use
presupposes good faith and fair dealing," and one pertinent consideration is "whether the
user stands to profit from exploitation of the copyrighted material without paying the
customary price”… Here, the second, third, and fourth elements are clear. The works at
issue are original musical compositions, present in the respective Doe defendants' file-
sharing folders in their entirety; and, assuming lack of the copyright owners' consent, the
likely detrimental effect of file-sharing on the value of copyrighted compositions is well
documented”.

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Slides available at
barrysookman.com and mccarthy.ca

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