Sookman lsuc copyright_year_in_review_2013_final

McCarthy Tétrault Advance™
Building Capabilities for Growth

Law Society of Upper Canada:
The Year in Review: Copyright (2013)

Barry B. Sookman
bsookman@mccarthy.ca
416-601-7949
McCarthy Tétrault S.E.N.C.R.L., s.r.l. / mccarthy.ca 13068218

January 16, 2014

Cinar Corporation v. Robinson, 2013 SCC 73

McCarthy Tétrault S.E.N.C.R.L., s.r.l. / mccarthy.ca DOCS #13068218

2

Similarities between Robinson Curiosité and Robinson Sucroë

“The Court concludes that there is a substantial similarity
between these two characters.” (Que.S.C)


3

Similarities between Vendredi Férié and Mereredi



4

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.” Que.S.C)

5

Similarities between Gertrude and Gladys


6

Similarities between Charlie the Pilot and Courtecuisse



7

¬ “The Copyright Act strikes “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… It seeks to
ensure that an author will reap the benefits of his efforts,
in order to incentivize the creation of new works.
However, it does not give the author a monopoly over
ideas or elements from the public domain, which all are
free to draw upon for their own works. For example, “[t]he
general stock of incidents in fiction or drama is free for all
to use ― a substantial part of everyone’s culture, not of
any one individual’s work”…


8

¬ “However, the Act does not protect every “particle” of an original work,
“any little piece the taking of which cannot affect the value of [the] work
as a whole”: Vaver, at p. 182. Section 3 of the Copyright Act provides
that the copyright owner has the sole right to reproduce “the work or
any substantial part thereof”.

¬ A substantial part of a work is a flexible notion. It is a matter of fact and
degree. “Whether a part is substantial must be decided by its quality
rather than its quantity”: Ladbroke (Football), Ltd. v. William Hill
(Football), Ltd., [1964] 1 All E.R. 465 (H.L.), at p. 481, per Lord
Pearce. What constitutes a substantial part is determined in relation to
the originality of the work that warrants the protection of the Copyright
Act. As a general proposition, a substantial part of a work is a part of
the work that represents a substantial portion of the author’s skill and
judgment expressed therein.”


9

¬ “A substantial part of a work is not limited to the words on the page or
the brushstrokes on the canvas. The Act protects authors against both
literal and non-literal copying, so long as the copied material forms a
substantial part of the infringed work. As the House of Lords put it,
¬ . . . the “part” which is regarded as substantial can be a feature or
combination of features of the work, abstracted from it rather than
forming a discrete part. . . . [T]he original elements in the plot of a
play or novel may be a substantial part, so that copyright may be
infringed by a work which does not reproduce a single sentence of
the original.
¬ (Designers Guild Ltd. v. Russell Williams (Textiles) Ltd., [2001] 1 All
E.R. 700 (H.L.), at p. 706, per Lord Hoffmann; see also Nichols v.
Universal Pictures Corporation, 45 F.2d 119 (2nd Cir. 1930), per
Learned Hand J.”


10

“The approach proposed by the Cinar appellants is similar to the
“abstraction-filtration-comparison” approach used to assess substantiality
in the context of computer software infringement in the United States: see
Computer Associates International, Inc. v. Altai, Inc., 982 F.2d 693 (2nd
Cir. 1992)… It has been discussed, though not formally adopted, in
Canadian jurisprudence: Delrina Corp., at paras. 43-47. I do not exclude
the possibility that such an approach might be useful in deciding whether a
substantial part of some works, for example computer programs, has been
copied. But many types of works do not lend themselves to a reductive
analysis. Canadian courts have generally adopted a qualitative and holistic
approach to assessing substantiality. “The character of the works will be
looked at, and the court will in all cases look, not at isolated passages, but
at the two works as a whole to see whether the use by the defendant has
unduly interfered with the plaintiff’s right…”


11

¬

“The trial judge clearly grounded his finding of copying of a substantial part not
in the idea behind Curiosity, but in the way Robinson expressed that idea. He
concluded that the overall architecture of Robinson’s submission for a television
show was copied. He found that the graphic appearance and several aspects of
the personality of Curiosity’s protagonist were copied; the personalities of the
secondary characters that gravitate around Curiosity’s protagonist were copied;
and the graphic appearance of the makeshift village that these characters
inhabit was also copied in part (paras. 685 and 824-26). These findings are not
confined to the reproduction of an abstract idea; they focus on the detailed
manner in which Robinson’s ideas were expressed.”

¬

“The development of a group of characters that have specific personality traits
and whose interactions hinge on those personalities can require an exercise of
skill and judgment sufficient to satisfy the Copyright Act’s originality criterion…
Sucroë reproduces more than generic elements which all are free to draw upon
for inspiration. It reproduces Curiosity’s particular combination of characters with
distinct personality traits, living together and interacting on a tropical island ―
elements that represent a substantial part of the skill and judgment expressed in
Curiosity.”


12

¬ “The question of whether there has been substantial copying focuses on
whether the copied features constitute a substantial part of the plaintiff’s
work ― not whether they amount to a substantial part of the defendant’s
work: Vaver, at p. 186; E. F. Judge and D. J. Gervais, Intellectual Property:
The Law in Canada (2nd ed. 2011), at p. 211. The alteration of copied
features or their integration into a work that is notably different from the
plaintiff’s work does not necessarily preclude a claim that a substantial part
of a work has been copied. As the Copyright Act states, infringement
includes “any colourable imitation” of a work: definition of “infringing”, s. 2.
¬ This is not to say that differences are irrelevant to the substantiality
analysis. If the differences are so great that the work, viewed as a whole, is
not an imitation but rather a new and original work, then there is no
infringement. As the Court of Appeal put it, “the differences may have no
impact if the borrowing remains substantial. Conversely, the result may also
be a novel and original work simply inspired by the first. Everything is
therefore a matter of nuance, degree, and context” (para. 66).”


13


“In my view, the perspective of a lay person in the intended audience for the
works at issue is a useful one. It has the merit of keeping the analysis of
similarities concrete and grounded in the works themselves, rather than in
esoteric theories about the works. However, the question always remains
whether a substantial part of the plaintiff’s work was copied. This question
should be answered from the perspective of a person whose senses and
knowledge allow him or her to fully assess and appreciate all relevant
aspects ― patent and latent ― of the works at issue. In some cases, it may
be necessary to go beyond the perspective of a lay person in the intended
audience for the work, and to call upon an expert to place the trial judge in
the shoes of “someone reasonably versed in the relevant art or technology”:
Vaver, at p. 18”


14

¬

“For expert evidence to be admitted at trial, it must (a) be relevant; (b) be necessary to
assist the trier of fact; (c) not offend any exclusionary rule; and (d) involve a properly
qualified expert… Masterpiece Inc. v. Alavida Lifestyles Inc., 2011 SCC 27, [2011] 2
S.C.R. 387, at para. 75.”

¬

“In the present case, the necessity criterion of the test for the admissibility of expert
evidence is satisfied. First, the works at issue are intended for an audience of young
children. A rigid application of the “lay person in the intended audience” standard would
unduly restrict the court’s ability to answer the central question, namely whether a
substantial part of Robinson’s work was copied. It would shift the question to whether the
copied features are apparent to a five-year-old.

¬

Second, the nature of the works at issue makes them difficult to compare…

¬

Finally, the works at issue had both patent and latent similarities. Or, as Dr. Perraton
explained it, they shared “perceptible” and “intelligible” similarities. “Perceptible”
similarities are those that can be directly observed, whereas “intelligible” similarities ―
such as atmosphere, dynamics, motifs, and structure ― affect a viewer’s experience of
the work indirectly. Expert evidence was necessary to assist the trial judge in distilling
and comparing the “intelligible” aspects of the works at issue, which he would not
otherwise appreciate….”

¬

See also Pelchat c. Zone 3 inc., 2013 QCCS 78


15

“Section 35 of the Copyright Act provides that a defendant
can be ordered to “disgorge its profit to the extent that such
profit is caused by the infringement. The requirement for a
[causal] link between infringement and profit may require that
the profit be apportioned between that which is attributable to
the infringement and that which is not”: McKeown, at p. 2482.3 (emphasis added). The onus is on the infringer to
“satisfactorily separate non-infringing from infringing
activities”: Vaver, at p. 653; Sheldon v. Metro-Goldwyn
Pictures Corporation, 106 F.2d 45 (2nd Cir. 1939), per
Learned Hand J. In some cases, “an infringer may so
interweave the right-holder’s work with its own as to make
separation impossible””…


16

¬ “Section 35 of the Copyright Act provides a dual remedy for
copyright infringement: damages for the plaintiff’s losses and
disgorgement of the profits retained by the
defendant. Disgorgement of profits under s. 35 is designed
mainly to prevent unjust enrichment, although it can also serve a
secondary purpose of deterrence: Vaver, at p. 650. It is not
intended to compensate the plaintiff…”
¬ Disgorgement under s. 35 of the Copyright Act goes no further
than is necessary to prevent each individual defendant from
retaining a wrongful gain. Defendants cannot be held liable for
the gains of co-defendants by imposing liability for disgorgement
on a solidary basis.”


17

¬ “In this case, the trial judge relied heavily on the personal approach,
emphasizing the subjective impact of the infringement of copyright on
Robinson’s mental state and personal life. He bolstered his analysis
by comparing Robinson’s anguish to the similar level of anguish
experienced by the plaintiff in the defamation case Société RadioCanada v. Gilles E. Néron Communication Marketing inc., [2002]
R.J.Q. 2639 (C.A.), aff’d 2004 SCC 53, [2004] 3 S.C.R. 95...
¬ I agree with the trial judge that Robinson’s non-pecuniary damages
are analogous to those claimed by a victim of defamation. The
product of Robinson’s artistic exertions was taken from him and the
integrity of his personal creative process was violated, causing deep
psychological suffering. These harms are similar to those suffered by
a victim of defamation.”


18

¬ Quebec Charter of human rights and freedoms, R.S.Q., c. C-12, s. 49.

¬ 1. Every human being has a right to life, and to personal security,
inviolability and freedom.
¬ 4. Every person has a right to the safeguard of his dignity, honour and
reputation.

¬ 6. Every person has a right to the peaceful enjoyment and free
disposition of his property, except to the extent provided by law.
¬ 49. Any unlawful interference with any right or freedom recognized by
this Charter entitles the victim to obtain the cessation of such
interference and compensation for the moral or material prejudice
resulting therefrom.
¬ Punitive damages.

¬ In case of unlawful and intentional interference, the tribunal may, in
addition, condemn the person guilty of it to punitive damages.


19

¬

“Section 49 of the Charter provides that punitive damages may be awarded if there is an
unlawful and intentional interference with any of the rights and freedoms that the Charter
recognizes. The evidence establishes unlawful and intentional interference with several of
Robinson’s Charter rights. Copyright infringement is a violation of s. 6 of the Charter, which
provides that “[e]very person has a right to the peaceful enjoyment and free disposition of
his property, except to the extent provided by law”… Additionally, the infringement of
copyright in this case interfered with Robinson’s personal rights to inviolability and to
dignity, recognized by ss. 1 and 4 of the Charter.

¬

An interference with the right to inviolability “must affect the victim’s physical, psychological
or emotional equilibrium in something more than a fleeting manner”… The trial judge made
detailed findings of fact to the effect that Robinson’s psychological and emotional
equilibrium were deeply affected as a result of the infringement and the ensuing legal
proceedings (paras. 981-82).

¬

An interference with the right to dignity is a violation of “the respect to which every person
is entitled simply because he or she is a human being and the respect that a person owes
to himself or herself”…

¬

Here, Cinar, Weinberg, Charest, and Izard consistently and contemptuously denied having
access to Robinson’s work, and disparaged Robinson’s claims that they had copied his
work. Their behaviour constitutes an interference with Robinson’s Charter right to dignity,
and provides an additional basis for the award of punitive damages.”


20

Rains v. Molea, 2013 ONSC 5016
Did Molea infringe the copyrights of Rains in the “Classical Series” – paintings
which feature crumpled paper in still life form against a dark background?

Rains
Laconia, 1998


Molea
Hero, 2004

21


Rains
“Icaria”, 2000


Molea
“Turning Point”, 2005

22


Rains
“Parnassus”, 1992


Molea
“The Last Frontier”, 2007

23

¬ “In my view, each image of the Classical Series is original as that term is
defined by the Supreme Court of Canada. Each image originates from Rains
and is not copied from another work. Every image is the product of Rains’
skill and judgment. Each Classical Series painting starts with Rains randomly
crushing a large piece of water colour paper. From there, Rains considers
the appropriate vantage point for engaging with the paper and starts painting
the work. The whole process takes approximately two to three weeks, with
works often 44 x 66 inches. Rains’ skill and judgment employed to create the
final images are more than trivial and meet the originality test set out above.”
¬ “Rains and Molea both had the idea of painting a realistic image of crumpled
paper. Their respective expressions of the idea are represented in the
images themselves. The image is a product of diligent work. The artists
spend hours exercising skill and judgment. They apply intellect and employ
techniques learned through study, experience, talent, and influence to
develop, explore, and perfect the expression of that idea in a painting. Both
Rains and Molea repeatedly express the idea through images. Each image is
a different expression and that expression, if original, is subject to copyright.”


24

¬ “I reject Rains’ submission that the Classical Series is a compilation because
it evokes a feeling common to all his works, I conclude that the Classical
Series is not a compilation as defined by the Act because “gestalt” or a
“feeling” is insufficient to meet the test.
¬ Further, in my view it would be unwise to extend copyright protection to the
visual perception of an artistic work, which is intangible and subjective…
There is good reason for this. The scale would be tipped in favour of the
creator’s rights if copyright were to protect an undefined and unarticulated
feeling emoted from artistic works. There would be little room for the public
domain to flourish. Others would be unable to produce new artistic works
without fear of infringing a creator’s self-imposed or critically-bequeathed
imprecise evocation of his work’s feeling or expression. Moreover, the
protection would often extend to works not yet created. This would be a
perverse result considering the purpose of the Act as set out above.”


25

¬

“The 17 comparisons feature the use of crushed white paper against a dark or
sometimes earth-tone background on an occasional lighter, indeterminate, or
reflective flat base with, on one occasion, a Mediterranean title. The facts further
indicate that these similarities are not unique to Rains; they are common, longestablished artistic techniques. I conclude therefore that the similarities between
the 17 comparisons are conventional tropes or artistic devices historically common
among painters.”

¬

“Rains cannot establish infringement by relying on his use of the noted unoriginal,
commonplace, historical painting techniques. This would be akin to Shakespeare
relying on his use of iambic pentameter in his writing or Drake relying on his use of
16 bars to a verse in his music. Commonly used techniques must remain available
to all artists creating literary, dramatic, musical, and artistic works… If the
compilation of these techniques is original, as defined above, the work enjoys
copyright protection. If, after disregarding the commonplace techniques, there
remain sufficient similarities between one work and a preceding original,
substantial copying will likely be established. Because Rains relies on unoriginal
elements, other than shape, to demonstrate similarity, these elements do not
establish substantial copying.”


26

“This case involves two artists who had the same (and not unique) idea
to paint crumpled paper in a realistic way using conventional painting
techniques. Their motivations are different. Their processes are
different. Their resultant expressions are different. The Act protects
each original Rains painting and each original Molea painting from
infringement. If any of Molea’s 17 comparison works were substantial
copies or colourable imitations of Rains’ comparable images, Rains
would be successful in his claim of copyright infringement. However,
simply because Rains expressed his idea before Molea and found
commercial success and critical acclaim for doing so, does not mean
that Molea or any other painter is forever prohibited from independently
creating an expression of crumpled paper in still life form. In my view,
to give Rains exclusive access to this territory would unfairly silence
independent expressions of the idea and render absurd the very
purpose of the Act.”


27

Pelchat c. Zone 3 inc., 2013 QCCS 78
¬ “the applicants claim to hold "the exclusive rights to produce and distribute any
issue relating to the transformation beauty of a person by the clothes, hairstyle
and makeup.”
¬ “The Tribunal viewed several emissions Looks and Metamorphosis with the
parties and again during deliberations.

¬ It does not show even an impression of similarity between the two works to the
point that, to paraphrase Riordan J. in Cummings , one is led to conclude that
not only are the two horses of a different color, but they are not even two
horses.
¬ In fact, besides the concept of transformation and beauty items that are
inherent, there is little or no connects.
¬ It is not surprising in the circumstances that applicants have attempted to
reduce their work to generic elements of any transformation beauty on
television while trying to hide the other or pretend that they are meaningless
elements nor importance in the expression of their concept.” (Google translate)


28

Hobbs v. (Elton) John, 722 F. 3d 1089
(7th.Cir.2013)
¬ Hobbs claims his song "Natasha" is infringed by Elton John’s song entitled
"Nikita“.
¬ “We agree with the district court that "Natasha" and "Nikita" simply "tell
different stories," Hobbs v. John, No. 12C3117, 2012 WL 5342321, at *7
(N.D.Ill. Oct. 29, 2012), and "are separated by much more than `small
cosmetic differences,'" Peters,692 F.3d at 636 (quoting JCW, 482 F.3d at
916). "Natasha" tells the story of an actual, though brief, romantic encounter
between a man from the United Kingdom and a woman from Ukraine. Their
tangible relationship is severed because the woman must sail away. In
contrast, "Nikita" tells the tale of man who sees and loves a woman from
afar. But that love can never find physical expression because the two are
separated by "guns and gates."
¬ We conclude that as a matter of law "Natasha" and "Nikita" are not
"substantially similar" because they do not "share enough unique features to
give rise to a breach of the duty not to copy another's work.“”


29

Klinger v Conan Doyle Estate, Ltd No. 13 C 1226
(N.D.Ill.2013)
¬ Klinger seeks a declaration that various characters, character traits and
other story elements from Sir Arthur Conan Doyle's Sherlock Holmes
stories are free to use in an anthology of new and original short stories by
contemporary authors without infringing Conan Doyle's rights under the
U.S. Copyright Act.
¬ “Where an author has used the same character in a series of works, some
of which are in the public domain, the public is free to copy story elements
from the public domain works...
¬ It is a bedrock principle of copyright that "once work enters the public
domain it cannot be appropriated as private (intellectual) property," and
even the most creative of legal theories cannot trump this tenet.”
¬ “The law is clear that Klinger is entitled to use the Pre-1923 Story
Elements... The Post-1923 Story Elements are protected under copyright,
and as a result neither Klinger nor the public are entitled to use them.”


30

Distrimedic inc. c. Dispill Inc., 2013 FC 1043
¬

Is The Dispill Label Form Susceptible To Copyright Protection?

¬ “I am prepared to accept that what Richards really seems to be
referring to by the term “Dispill Label Form” is a series of entry
screens from a software program written in the DOS language”.
¬

‘There is no dispute between the parties that a form does not
have to be on a paper support and that a computer screen (which
in any event can be printed) falls within the definition of a “work”
for the purposes of the Copyright Act, and can therefore be
protected. Similarly, the Defendants to the Counterclaim do not
dispute that the DOS Dispill Label Form is a literary work.”


31

¬ “There are…problems preventing the recognition of copyright in the
Dispill Label Form… the selection of the information for the DOS
Dispill Label Form bears a very low degree of originality, as it is
mostly dictated by provincial legislation on the labelling of
prescription drugs, both in Quebec and Ontario, where the parties’
products are mainly sold…
¬ In the case at bar, I have not been convinced that the selection of
information and its arrangement in the DOS Dispill Label Form
required of its author the type of skill and judgment deserving of
copyright protection. It may be, as suggested by counsel for
Richards, that Dispill was the first to create a method of generating
the necessary patient information for printing on each cell of a pill
dispenser. This cannot be the subject of copyright protection,
however, as it would amount to creating a monopoly on an idea or
method, which the law does not permit.”


32

¬ “The asset purchase agreement whereby Mr. Bouthiette sold his
business to his company Dispill Inc., dated January 1, 1998, makes
no mention of any copyright in the Dispill Label Form…
¬ In the present case, I do not think that the Clause 1 of that
Agreement, stating that “[l]e vendeur vend à l’acquéreur, qui l’achète,
son entreprise de vente d’un système de dispensateur de
médicaments, connue sous le nom de DISPILL…”[Google translate:
“the seller sells to the purchaser, who buys his company sales
system dispensing of medicines, known as the DISPILL”], explicit
enough to encompass the alleged copyright in the Dispill Label
Form. This is made even clearer by the description that is given of
that enterprise in that same clause, which explicitly refers in Section
C to the invention in the patent. It doesn’t appear, therefore, that the
parties to the agreement had the Dispill Label Form and the copyright
possibly attaching thereto in mind, particularly as they made no
reference to it despite referring explicitly to the patent.”

33

(AOM) NA Inc. et al v. Reveal Group, 2013
ONSC 8014
¬ “Copyright is a very specific right attaching to a “work”. I agree with the
defendants that the pleading is vague about what it is that is subject to
copyright and what it is alleged has been the breach of copyright giving rise
to this cause of action. Copyright cannot attach to an idea such as a
method. It can of course attach to the manuals or other material in which the
method is described. Similarly with computer software, copyright can attach
to source code, to a graphic user interface, to manuals and to other material
as defined in the Act. Copyright cannot attach simply to what a computer
program does. The plaintiff must specify what it is that is covered by
copyright and what it alleges has been done that gives rise to the statutory
remedies.
¬ On this point the defendant is successful. The claim for copyright breach will
be struck out with leave to amend.”


34

SAS Institute Inc v World Programming Ltd [2013]
EWCA Civ 1482 (21 November 2013)
¬ “The court did not itself define what it meant by "functionality"; and in those
circumstances there is no reason to suppose that it meant anything different
from the way in which the Advocate-General defined the word. Moreover, at
[40] it specifically approved what the Advocate-General had said at [57] of
his opinion:

¬ "… to accept that the functionality of a computer program can be
protected by copyright would amount to making it possible to
monopolises ideas, to the detriment of technological progress and
industrial development.“
¬ It will be recalled that in [39] the court had discussed (a) the functionality of a
computer program, (b) the programming language and (c) the format of data
files used in a computer program. By contrast in [45] it considered only (b)
and (c). One must infer, therefore, that the court considered that the
functionality of a computer program could not be protected under the
Information Society Directive. So I do not think that this carries SAS
Institute's argument further.”

35

Manitoba v. Access Copyright, 2013 FCA 91
¬
¬

12. Without
prejudice to any
rights or privileges
of the Crown,
where any work is,
or has been,
prepared or
published by or
under the direction
or control of Her
Majesty or any
government
department, the
copyright in the
work shall, subject
to any agreement
with the author,
belong to Her
Majesty…

“The Board’s analysis began with a recognition of the history of
Crown copyright under the Crown prerogative particularly its
right to print and publish. This right goes back hundreds of
years, and includes the right to print and publish statutes, court
decisions, and authorized versions of the Bible, among other
things… The Board concluded that the words “without prejudice
to any right or privilege of the Crown” in section 12 of the Act
are necessary to maintain that common law Crown prerogative,
and the scope of section 12 should be limited accordingly.”

¬

“Having carefully examined the wording of section 12 in its
overall context, including the structure of the Act, its legislative
history and evolution, and other provisions, such as section 89,
I agree with the Board that the words “[w]ithout prejudice to any
right or privilege of the Crown” set out in section 12 are
intended to refer to and preserve the Crown’s rights and
privileges of the same general nature as copyright that may not
fall within the meaning of the rest of this provision. These rights
and privileges could otherwise be excluded by the general
principle set out in section 89 which provides that no person is
entitled to copyright otherwise than under and in accordance
with the Act or any other Act of Parliament.”


36

Manitoba v. Access Copyright, 2013 FCA 91
¬ “In my view, the references in the Act to very strict conditions, to
tariffs fixed by the Board, to the consent of the copyright owners,
and to the power of the court when the defendant is an
“educational institution”, including a federal or provincial
government department, all point to only one logical and
plausible conclusion as to the intent of Parliament: the Crown is
bound.
¬ I have considered that the Act, unlike other statutes such as the
Patent Act, R.S.C., 1985, c. P-4, s.2.1, does not contain an
“expressly binding” clause at the beginning, as was
recommended in the 1985 report entitled A Charter of Rights for
Creators. I am still irresistibly drawn to the conclusion that
Parliament clearly intended to bind the federal and provincial
Crowns by the express language of the Act and through logical
inference.”

37

Nautical Data International, Inc. v. C-Map
USA Inc., 2013 FCA 63
¬ Was a grant of a license to data/charts exclusive so as to give NDI the right to
sue for infringement?
¬ “Subject to the rights reserved in Sections 2.4 and 2.5 below, Canada grants
to NDI a sole worldwide right and license (the “License”) to use the CHS Data
to produce Products and Product Updates, to integrate these Products with
other products or services (provided that such integrated offerings do not
derogate in any respect from the availability or reliability of the Products or
Product Updates) and to distribute same directly or through third parties to
whom a sublicense is granted in accordance with the terms hereof. Except as
expressly set out herein, CHS shall have no right to distribute the Products or
Product Updates to any person.”
¬ “There is no other provision in the Licence that says expressly that the Crown
reserved to itself the right to make digital copies of the CHS Works. That
would tend to support the argument of NDI that the Licence was intended to
be an exclusive licence.”


38

VLM Holdings Ltd v Ravensworth Digital Services
Ltd [2013] EWHC 228 (Ch) (13 February 2013)
¬

“Since the grant by UK was a grant by a sub-licensor, what is the effect on such a grant
of the cesser of the head licence?”

¬

“Since one starts with the question of permission, it is therefore pertinent to determine
who has permitted whom to do what. It is certainly possible to imagine circumstances in
which a sub-licence would survive the termination of the head licence. Take, for
example, a case in which a copyright owner gives a licence to another, and expressly
permits that other to grant sub-licences which (say) endure for a given period and which
are clearly expressed as being capable of surviving the termination of the head licence.
It seems obvious that the sub-licences would indeed survive that event. The reason for
that, in my view, is that the permission extended by the express term means that there
was an authority (permission) from the copyright owner to use the copyright material. In
effect, the sub-licensor was authorised to give that consent and, to that extent, to bind
the owner. This demonstrates that the key lies in the area of authority – what authority
was the sub-licensor given by the owner? In my example the answer is plain.”

¬

“The real question is therefore as to the scope of the authority given by the head
licensor to the sub-licensor. That depends on all the facts. If the authority is sufficiently
wide to allow the grant of a sub-licence which is capable of surviving the termination of
the head licence, then the head licensor (copyright owner) must be taken as giving the
ultimate permission himself, on normal agency principles.”


39

Orr-Adams (t/a Applied Concrete Systems, A
Partnership) v Bailey [2013] EWPCC 30 (12 Jun. 2013)
¬ Does a licensee have a continuing right to use confidential information and
copyright works after a contract termination and an obligation to continue pay
royalties for such use?
¬ “Bearing that guidance in mind, I accept that the Defendants' contention that
they remained able to exploit the Disputed Formulations after determination
of the agreement made some commercial sense, as otherwise they could
have been faced with the difficulty of not having products to sell after
determination. Therefore, there would have been an implied term of the
agreement for the Defendants to have the right to continue to sell products
made to the Disputed Formulations for a limited period after determination.
Or, it may have been reasonable for there to be an implied term that they
could carry on exploiting them generally after termination. However, in either
case I can see no basis for the Defendants' contention that such posttermination sales did not carry with them an obligation to continue making
payments to the Claimants. That seems to me to be the obvious corollary of
any implied right to continue making such sales.”

40

Agence France Presse v. Morel, 106 U.S.P.Q.
2d 1192 (S.D.N.Y.2013)
¬ “AFP argues that it was a third party beneficiary to the Twitter TOS and
derives a license from those terms of service, and is therefore insulated from
liability...The test for determining whether a contract was made for the benefit
of a third person is whether an intent to benefit a third person appears from
the terms of the contract. An individual may be a third-party beneficiary to a
contract if the terms of the contract "necessarily require" that the promisor
conferred a benefit on that third party.”
¬ “The Court need not fix the precise scope of any license created by the Twitter
TOS in order to resolve the dispute before it. Rather, it suffices to say that
based on the evidence presented to the Court the Twitter TOS do not provide
AFP with an excuse for its conduct in this case... Put differently, the evidence
does not reflect a clear intent to grant AFP a license to remove the Photos-atIssue from Twitter and license them to third parties, nor does it "necessarily
require" such a license... Indeed, this is the fatal flaw in AFP's argument: it
fails to recognize that even if some re-uses of content posted on Twitter may
be permissible, this does not necessarily require a general license to use this
content as AFP has.”

41

Oakcraft Homes Inc v Ecklund, 2013 CanLII
41981 (ON SCSM)
¬

Innocent infringement?

¬

“The failure to mark ownership on the plan does not in law as set out above, defeat the
right to copyright. The Ecklunds knew that the plan originated with the Plaintiff, the Plaintiff
having discussed it with them, having made changes in writing thereon and having been
sent an updated plan with proposed changes as discussed following attendances at other
custom homes built by the Plaintiff. The Ecklunds cannot excuse their conduct in passing
those plans onto Toscana merely because the ownership is not marked on the plans and
merely because the Plaintiff did not specifically tell the Ecklunds they could not use them.
It defies logic and common sense for the Ecklunds to use those factors as an excuse to
escape liability for their actions. They took the plans with full knowledge that they had no
colour of right to them and then they knowingly passed them on to the Defendant
Toscana and solicited others as well for the sole purpose of them being used as jump off
points for their custom home design. What the Ecklunds did in the result was infringe the
Plaintiff’s copyright in the plans.

¬

Toscana knowingly took those plans with the intention of using them as jump off points to
satisfy a potential customer shopping for the best deal on a custom home. Its principals
were wilfully blind to determining where the plans came from and who authored them.
They chose not to ask knowing that their potential customer was not the author.”


42

41981 (ON SCSM)
¬ Measure of damages
¬ “On the measure of damages, the Plaintiff seeks by its Claim the
sum of $17,500.00 for the value of the plans had they been sold
as a separate item. The Defendant Toscana claims that the
proper value to be assessed for the plans is $5700.00. Neither
party presented very cogent evidence on the proper amount to be
assessed for damages for the value of the plans. It is therefore
left to the court to make a determination in this regard. In doing
so, I have regard to the approach taken by the Quebec Court of
Appeal in the Construction Denis Desjardins Inc. v. Jeanson case
to strike the midpoint as the measure of damages in the absence
of cogent proof as to value. In this case, the midpoint is
$11,600.00. Accordingly, I assess the Plaintiff’s damages at
$11,600.00.”

43

Tremblay v. Orio Canada Inc., 2013 FC 109
¬ “Any development done for Orio Canada Inc. shall become the exclusive
property thereof and may not therefore be marketed or reused by
Service Informatique Professionnel or any other party.”
¬ “In this case, the Court has no choice but to find that a signature is
lacking. Although the parties have confirmed before this Court that the
plaintiff submitted other bids to the defendant that include the same
clause, there is nothing in the evidence to support a finding that the bids
submitted after April 2007 were signed... Had it not been for the absence
of the plaintiff’s signature, there would have been an assignment of the
copyright under the Act, but in the circumstances, the Court can only find
that, pursuant to subsection13(4) of the Act, the plaintiff did not assign
his copyright in the modified SAM program. Accepting the defendant’s
argument and making the opposite finding solely on the basis of the
plaintiff’s testimony would render meaningless the requirement imposed
by Parliament. This finding may appear rigid, but it complies with the
formal requirements of the Act.”

44

Tremblay v. Orio Canada Inc., 2013 FC 109
¬

“the Court is nevertheless of the view, on the basis of the record and the evidence,
that the plaintiff granted an implied licence of use to the defendant with respect to
the modified SAM program. This conclusion is dictated by the following reasons.

¬

First, the Court notes that this case rests on one key, determinative factor: the
plaintiff authored the clause at issue, and it was the plaintiff, not the defendant,
who included it in the bids. Next, the evidence shows that the plaintiff included this
clause repeatedly in all of his bids to the defendant and that this was his usual
practice. The plaintiff confirmed this upon examination by explaining that the
purpose of the clause was to allow the defendant to market the modified SAM
program. The evidence also shows that the plaintiff knew that the modified SAM
program would be installed at car dealerships. The plaintiff even travelled to some
of these dealerships himself on occasion. The Court also notes that the plaintiff
was paid for his work…

¬ Therefore, in light of the evidence, the Court finds that the plaintiff granted the
defendant an implied licence to use the modified SAM program. It has been
recognized in the case law that an implied licence can be inferred from the parties’
conduct and need not be made in writing… The Court is of the view that this is the
case here.”

45

Tremblay c. Canada (Orio Canada Inc)., 2013
CAF 225
¬

“Thus, the case law provides unanimously that we can not oppose the holder of a
copyright assignment or exclusive licensee who is not evidenced by a writing
signed by the holder of the right in question …

¬

However, these decisions do not deal with a case where the owner of the
copyright recognized in court to have consented to the transfer of ownership of
the right in question. It seems to me an exaggerated formalism that make
ineffective against a transferor a transfer clause of copyright that he has written
himself and recognizes court as governing its relations with the transferee, and
this for the simple reason that it is not signed. As I mentioned earlier, the purpose
of subsection 13 (4) and (7) of the Act, copyright is to protect the owner of the
copyright assignment against a law that is not granted clearly. Where the
transferee recognizes himself in court the assignment clause which governs its
reports, the purpose of the Act is about me filled.”

¬

Orio, however, has not made a cross-appeal against the decision of the judge
trying the assignment of copyright is unenforceable to the caller. In these
circumstances, it is not for this Court to reform this aspect of the judge's
decision.” (Google translate)


46

B4U Network (Europe) Ltd v Performing Right
Society Ltd [2013] EWCA Civ 1236 (16 October 2013)
¬ “At common law a man cannot give to another that which he does not
own or does not yet possess. Thus, absent statute, a work must be in
existence before ownership in the rights in the work can be assigned
at law. But although future property, or an expectancy, cannot be
assigned at law, equity would decree specific performance of the
contract, provided it was for value and sufficiently specific (Maitland
on Equity, 2nd ed. 1936, p.150, Kitto, Equity Doctrines and Remedies
Butterworths Aus. 2002).
¬ Accordingly, where an author, or composer, assigned the copyright in
works which he had not yet created, the assignment took effect only
in equity as an agreement to assign future copyright in those works,
should they be created. Once the work was created, the legal title
would have to be dealt with by a separate assignment.”


48

B4U Network (Europe) Ltd v Performing Right
Society Ltd [2013] EWCA Civ 1236 (16 October 2013)
¬ It is, in my view, inconsistent with the concept of a higher right created by an
equitable assignment, independent of the contract, to suggest that a
reasonable person would have understood the parties to have intended only
to transfer rights in works of which they became owner once the works had
been composed. To do so would turn the priority rules in relation to equitable
assignments topsy-turvy; it permits the property rights created by the
equitable assignment to be undermined by a subsequent equitable
assignment…
¬ The conclusion I have reached gives full effect to the words of the PRS
agreement, without addition or substitution. At the time of that agreement the
composers could have become owners of the song. As prospective owners,
their assignment took effect under section 91 once the song had been
composed.”


49

Delta Hotels v. Backus-Naur et al., 2013
ONSC 582
¬ “The defendants also say that equitable ownership of copyright is an
untenable plea and, as such, should be disallowed. Equitable ownership
of copyright is a recognized principle in the United Kingdom. Ms. Zagar
submits (and the excerpt cited by her from Professor Vaver’s Intellectual
Property Law: Copyright, Patents, Trademarks, 2d ed., at 140 appears to
support her submission) that there is no direct discussion in Canadian
jurisprudence in favour or against equitable ownership of copyright.”
¬ Ms. Zagar says that...having regard to the state of the law in Canada, it is
not absolutely clear that a claim founded on equitable ownership of
copyright is incapable of success (even if success is uncertain). On the
materials before me, I am inclined to agree with this submission,
too. While I accept, as Mr. Seed has argued, that there is now no
precedent in Canadian law for the alternative plea proposed, I cannot say
that it necessarily follows that on the specific facts of any given case, or
this case, there could never be.”

50

41981 (ON SCSM)
¬ Is there a copyright in house plans created using computer tools?
¬ “It is clear from the evidence and I so find that Thompson embarked upon a
course of conduct over time that turned his visions intellectually applied and
conceptually conceived into an exceptional work deserving of copyright
protection. His plan as presented to the Ecklands and after consultation with
them embodied his vision and was unique to that vision. The fact that the
plan was sent to a draftsman who reduced it to technical standards
commanded by planning authorities does not in any way diminish the
intellectual exercise used to create the original plan nor does it shift
ownership to the draftsperson. Drafting for that purpose is a technical art
using technical drawing tools. Today, that art has become a science by the
use of computer aided design (CAD). Can it be said that the use of CAD
thereby converts ownership in the original work to the computer software
technician operating the machine or the computer software programmer who
programmed the CAD software? The answer is obvious….NO!”


51

41981 (ON SCSM)
¬ Ownership of works created by corporate officers?
¬ ”The Court has recognized over the years that when dealing with senior
officers of corporations like presidents or other key officers, that these people
are usually considered an employee of the company, whether or not a
written contract of services exists and the copyright will therefore be owned
by the company. B & S Publications Inc. v. Max-Contacts Inc,. 2001
Carswell Alta 69 at para. 21.
¬ On the issue of who owns the copyright in the plan and the allegation that
the Plaintiff is not the rightful owner, the law is clear in that where an
individual in the employ of a corporate entity is a principal/owner and senior
officer thereof and he creates the work while in the corporation’s employ, the
ownership resides in the corporation and a formal assignment of one to the
other is therefore unnecessary.”
¬ Is the decision correct?


52

Coward v Phaestos Ltd & Ors [2013] EWHC
1292 (Ch) (17 May 2013)
¬ Is software created by a partner a partnership asset even if there is no
written assignment of copyright?
¬ “It is not in dispute that the software which was created by Dr Coward, was
created for the purposes of the partnership and was the bedrock of that
business. The trading could not have been undertaken without it. It was
the central tool by which the trading and investment operations of the
business were to be carried out.
¬ If one tests the proposition further by applying the criteria set out by Jacob
J in Robin Ray, in my judgment, it is equally clear that it is necessary to
infer that the software was partnership property.”
¬ “an asset is not prevented from being partnership property as a result of a
lack of a transfer of the legal title. As in the case of Don King Productions
Inc v Warren, if necessary, the legal owner of the asset will found to hold
the legal title upon trust for the partnership.”

53

Tremblay c. Canada (Orio Canada Inc)., 2013
CAF 225
¬

”As to the implied license to use, I see no error in the judge's decision
wanting that, given the circumstances, the appellant consented not only an
implied license marketing SAM modified, but also to that can be changed by
software Orio to improve marketing. In this regard, the decision of the
Supreme Court of Canada in Netupsky c. Dominion Bridge , [1972] SCR 368
appears to me analogous to the present case…

¬ There is no doubt in my opinion that the parties had in mind that the modified
SAM could not only be marketed, but that this program could also be future
improvements at the request of Orio, and that these improvements could be
made either by calling or by a third party designated by Orio. Explicitly
recognizing that "[a] ny development is Orio Canada inc. become the
exclusive property "thereof, the appellant was in fact waived exclusivity on
the development of all future enhancements audit program. The implied
license arising from all relationships between the parties therefore allows
Orio to copy the source code of SAM modified to do rework by third
parties. The trial judge therefore did not err in so ruling.” (Google translate)

54

Pinto v. Bronfman Jewish Education Centre,
2013 FC 945
¬ “Mr. Pinto has failed to make out this critical component of infringement. The
evidence establishes that Mr. Pinto consented to, and indeed actively
facilitated, BJEC’s use of his music. This is not a case of uncertainty or
ambiguity. The evidence is consistent with consent.
¬ A court may find an implied licence has been granted when an artistic work
was created as part of a freelance contract at the request of the purchaser. In
such cases, the freelance contract is construed as including an implied licence
for the purchaser to use the work for the purpose it was created…
¬ This principle is directly applicable to the present circumstances. BJEC
engaged Mr. Pinto to compose, produce, arrange, perform and record music
for the TaL AM curriculum. BJEC paid Mr. Pinto for his work, and in exchange
for the consideration, received an implied licence to use the work for the
purpose contemplated by the parties”.

¬ See also, Planification-Organisation-Publications Systèmes (POPS) Ltée v.
9054-8181 Québec Inc, 2013 FC 427


55

2013 FC 945
¬ “When a licence is granted in exchange for consideration,
as in this case, it cannot be unilaterally revoked: Silverson
v Neon Products Ltd, [1977] BCJ No 1092 (SC) at paras
33-36; Fox Canadian Law of Copyright and Industrial
Designs, ch 19 at 29.”
¬ See also, Planification-Organisation-Publications
Systèmes (POPS) Ltée v. 9054-8181 Québec Inc, 2013
FC 427


56

2013 FC 945
¬

“Section 2 of the Act provides that the “maker” is “the person by whom the
arrangements necessary for the first fixation of the sounds are undertaken.” Section
2.11 explains that the necessary arrangements include “entering into contracts with
performers, financial arrangements and technical arrangements required for the first
fixation of the sounds for a sound recording.”

¬

Case law interpreting these provisions has emphasized the element of financial risk
and payment for the recording. The maker is not necessarily the person who has
personally undertaken the necessary arrangements, but instead the individual or
corporation that bore the financial risk of doing so, such as a record company”…

¬

“However, it was BJEC that ultimately assumed the financial risk for the recording, as
its payments to Mr. Pinto covered all of his costs, including paying the studio and
vocalist…. In my view, though he was not an employee, he was entitled to be
reimbursed for his expenses and therefore did not assume the financial responsibility
for the recording. It is significant that for fourteen years BJEC paid every invoice
provided by Mr. Pinto, including all disbursements. Accordingly, I conclude that BJEC
was the maker of the sound recording and owned the copyright.”


57

2013 FC 945
“The certificates create only a presumption of ownership.
As the certificates were registered after Mr. Pinto began
these proceedings, the presumption has less weight: CCH
Canadian Ltd v Law Society of Upper Canada, 2002 FCA
187 (CanLII), 2002 FCA 187 at para 63. In any event, in
this case, there is substantial additional evidence regarding
copyright ownership, all of which pre-dates registration. As
will be discussed below, this evidence rebuts any
presumption created by registration, assuming that
registration is valid.”


58

2013 FC 945
¬ “There should be some relationship between the actual damages
and statutory damages: Hughes & Peacock on Copyright and
Industrial Design, at 665. Hughes J and Susan Peacock
continue and observe that:
¬ The overarching mandate of a judge assessing statutory
damages in lieu of damages and loss of profits is to arrive at
a reasonable assessment in all of the circumstances in order
to yield a just result. There should be some correlation
between actual damages and statutory damages.
¬ This, in turn, directs the inquiry to a broad range of factors,
including whether or not the defendants acted in good or bad
faith and the need for deterrence.”


59

Planification-Organisation-Publications Systèmes
(POPS) Ltée v. 9054-8181 Québec Inc., 2013 FC 427
“As discussed in the immediately preceding section above, IDP
provided substantial consideration in exchange for an explicit or
implied licence to use and to continue to develop the Software. That
consideration was provided pursuant to an explicit or verbal
agreement, and was further evidenced by a course of conduct
pursued by the parties over the course of many years. Accordingly,
POPS was not entitled to unilaterally revoke that licence (Katz
(Michael Katz Associates) v Cytrynbaum (1983), 76 CPR (2s) 276,
at para 19 (BCCA), citing H G Fox, The Canadian Law
of Copyright and Industrial Designs, 2d ed (Toronto: Carswell, 1967),
at pp 339-340); see also (J S McKeown, Fox, Canadian Law
of Copyright and Industrial Designs, 4th ed, (Toronto: Carswell,
2009) at 19:4(e); and Winter Garden Theatre v Millenium Products,
[1948] A.C. 173, at 193 and 198).”


60

Metro. Reg'l Info. Sys. v. AMER. HOME
REALTY NET., 722 F. 3d 591 (4th.Cir.2013)
¬

“A transfer of one or more of the exclusive rights of copyright ownership by
assignment or exclusive license "is not valid unless an instrument of conveyance,
or a note or memorandum of the transfer, is in writing and signed by the owner of
the rights conveyed or such owner's duly authorized agent." 17 U.S.C. § 204(a)”

¬

“The issue we must yet resolve is whether a subscriber, who "clicks yes" in
response to MRIS's electronic TOU prior to uploading copyrighted photographs,
has signed a written transfer of the exclusive rights of copyright ownership in those
photographs consistent with Section 204(a). Although the Copyright Act itself does
not contain a definition of a writing or a signature, much less address our specific
inquiry, Congress has provided clear guidance on this point elsewhere, in the ESign Act.”

¬

“To invalidate copyright transfer agreements solely because they were made
electronically would thwart the clear congressional intent embodied in the E-Sign
Act. We therefore hold that an electronic agreement may effect a valid transfer of
copyright interests under Section 204 of the Copyright Act. Accordingly, we agree
with the district court that MRIS is likely to succeed against AHRN in establishing its
ownership of copyright interests in the copied photographs.”


61

Craigslist, Inc. v. 3Taps INC., 2013 U.S.Dist.
LEXIS 61837 (N.D.Cal.Apr. 30, 2013)
¬ Action for copyright infringement for scraping ads based on license.
¬ “You also expressly grant and assign to [Craigslist] all rights and causes of action
to prohibit and enforce against any unauthorized copying, performance, display,
distribution, use or exploitation of, or creation of derivative works from, any
content that you post (including but not limited to any unauthorized downloading,
extraction, harvesting, collection or aggregation of content that you post).”
¬ “Whether that clause has effect depends on whether users granted Craigslist an
exclusive license to the user-created content. "[O]nly the owner of an exclusive
right under the copyright is entitled to sue for infringement.“... A party may not
assign the right to sue for infringement without also granting an exclusive license
or ownership.”
¬ “The Court therefore concludes that the TOU, standing alone, did not grant
Craigslistan exclusive license. Without an exclusive license, Craigslist cannot sue
for infringement; the TOU provision that purportedly granted Craigslist the right to
sue is "impermissible”.”

62

Righthaven LLC v Hoehn 2013 WL 1908876
(9th.Cir.May 9, 2013)
¬ “Stephens Media and Righthaven executed a copyright assignment
agreement for each article. Each copyright assignment provided that,
“subject to [Stephens Media’s] rights of reversion,” Stephens Media granted
to Righthaven “all copyrights requisite to have Righthaven recognized as the
copyright owner of the Work for purposes of Righthaven being able to claim
ownership as well as the right to seek redress for past, present, and future
infringements of the copyright . . .in and to the Work.”
¬ “Abraham Lincoln told a story about a lawyer who tried to establish that a
calf had five legs by calling its tail a leg. But the calf had only four legs,
Lincoln observed, because calling a tail a leg does not make it so. Before us
is a case about a lawyer who tried to establish that a company owned a
copyright by drafting a contract calling the company the copyright owner,
even though the company lacked the rights associated with copyright
ownership. Heeding Lincoln’s wisdom, and the requirements of the
Copyright Act, we conclude that merely calling someone a copyright owner
does not make it so.”

63

Layette Minimome Inc c Jarrar, 2013 QCCS
6084
¬ “But the defendants rely, with reason, that the Act has no
application here because the copies were made in China, at the
request of a resident of Dubai and were sold in the UAE. As the
Supreme Court of Canada emphasized in Society of Composers,
Authors and Music Publishers of Canada c. Canadian Association
of Internet Providers, the Parliament of Canada has the power to
legislate with extraterritorial effect, but in the absence of clear
words or a necessary deduction to the contrary, it is presumed not
to have wanted to do it. Nothing here to conclude that the
legislature intended to give extraterritorial effect to the provisions
on counterfeiting and nothing in the evidence to conclude that any
element of the infringement has taken place in Canada.
¬ The Act is therefore not applicable to the circumstances of the
dispute.” (Google translate)


64

Selzer v Green Day, Inc. 725 F.3d
1170 (9th.Cir. 2013)

Seltzer sues rock band and concert effects provider, alleging that unauthorized use of his
illustration of screaming face, Scream Icon of a screaming, contorted face. in a video
backdrop of band's stage show infringed his copyright.


65

Selzer v Green Day, Inc. 725 F.3d 1170
(9th.Cir. 2013)
¬ “A leading treatise on this topic has lamented the frequent
misuse of the transformation test, complaining that it has
become a conclusory label which is “all things to all people.”
Melville B. Nimmer & David Nimmer, 4 Nimmer on Copyright
§ 13.05 [A][1][b], 13–168–70 (2011) (internal quotation
marks omitted); see also id. at 13–168–69 (listing cases
which have “erroneous[ly] with[held]” the transformative
label).
¬ The plethora of cases addressing this topic means there is
no shortage of language from other courts elucidating (or
obfuscating) the meaning of transformation.”


66

Seltzer v Green Day, Inc. 725 F.3d 1170
(9th.Cir. 2013)
¬

“Although the law in this area is splintered, as discussed above, our conclusion on
transformation is generally in line with other appellate authority on transformative use.
In the typical “non-transformative” case, the use is one which makes no alteration to
the expressive content or message of the original work.”

¬

“In contrast, an allegedly infringing work is typically viewed as transformative as long
as new expressive content or message is apparent. This is so even where—as
here—the allegedly infringing work makes few physical changes to the original or fails
to comment on the original.”

¬

“We conclude, therefore, that Green Day's use of Scream Icon was transformative.
Furthermore, although the statute instructs us to consider the “commercial nature” of
a work (and Green Day's concert was undoubtedly commercial in nature) “the degree
to which the new user exploits the copyright for commercial gain—as opposed to
incidental use as part of a commercial enterprise—affects the weight we afford
commercial nature as a factor.”… Green Day's use of Scream Icon was only
incidentally commercial; the band never used it to market the concert, CDs, or
merchandise. Under these circumstances, the first fair use factor weighs in Green
Day's favor.”


67

CARIOU v. Prince, 714 F.3d 694,
(2nd.Cir.2013)

Cariou sues Prince, a well-known appropriation artist based on use of photos of
Rastafarians and Jamaican landscape in paintings that were marketed and sold by
gallery and owner.

68

(2nd.Cir.2013)
¬ “Prince and Gagosian principally contend on appeal that Prince's work is
transformative and constitutes fair use of Cariou's copyrighted
photographs, and that the district court imposed an incorrect legal
standard when it concluded that, in order to qualify for a fair use
defense, Prince's work must “comment on Cariou, on Cariou's Photos,
or on aspects of popular culture closely associated with Cariou or the
Photos. We agree with Appellants that the law does not require that a
secondary use comment on the original artist or work, or popular culture,
and we conclude that twenty-five of Prince's artworks do make fair use
Cariou's copyrighted photographs. With regard to the remaining five
artworks, we remand to the district court, applying the proper standard,
to consider in the first instance whether Prince is entitled to a fair use
defense.”


69

(2nd.Cir.2013)
¬ “Here, our observation of Prince's artworks themselves convinces us of the
transformative nature of all but five, which we discuss separately below.
These twenty-five of Prince's artworks manifest an entirely different aesthetic
from Cariou's photographs. Where Cariou's serene and deliberately
composed portraits and landscape photographs depict the natural beauty of
Rastafarians and their surrounding environs, Prince's crude and jarring
works, on the other hand, are hectic and provocative. Cariou's black-andwhite photographs were printed in a 9 1/2" x 12" book. Prince has created
collages on canvas that incorporate color, feature distorted human and other
forms and settings, and measure between ten and nearly a hundred times
the size of the photographs. Prince's composition, presentation, scale, color
pal-ette, and media are fundamentally different and new compared to the
photographs, as is the expressive nature of Prince's work.”


70

(2nd.Cir.2013)
¬ “…as the Supreme Court has recognized, Congress “could
not have intended” a rule that commercial uses are
presumptively unfair. Campbell, 510 U.S. at 584, 114 S.Ct.
1164 Instead, “[t]he more transformative the new work, the
less will be the significance of other factors, like
commercialism, that may weigh against a finding of fair use.”
Id. at 579, 114 S.Ct. 1164. Alt-hough there is no question that
Prince's artworks are commercial, we do not place much
significance on that fact due to the transformative nature of
the work.”


71

Bouchat v. Baltimore Ravens Ltd. (4th. Cir.
Dec. 17, 2013)
¬ Flying B Logo


72

Dec. 17, 2013)
¬ “The NFL wishes to create narratives about various aspects of its history,
including some that transpired between 1996 and 1998, when the Flying B
logo represented the Ravens. These videos have told new stories and
feature all of the hallmarks of documentary films. They also, of course,
contain fleeting, insubstantial images of the Flying B logo. But just as it would
have been a terrible shame to prevent Edward Hopper from painting the
"Esso" sign in his masterful Portrait of Orleans, so too would it be a mistake
to prevent the NFL from using the Flying B logo to create new protected
works. See E.S.S. Entm't 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d
1095, 1100 (9th Cir. 2008) (noting that under trademark law, the First
Amendment protects those uses that have artistic relevance). The NFL may
not arouse sympathies in the way that a revered artist does, but the
consequences of this case reach far beyond its facts. Society's interest in
ensuring the creation of transformative works incidentally utilizing
copyrighted material is legitimate no matter who the defendant may be.”


73

Dec. 17, 2013)
“Were we to require those wishing to produce films and documentaries to
receive permission from copyright holders for fleeting factual uses of their works,
we would allow those copyright holders to exert enormous influence over new
depictions of historical subjects and events. Such a rule would encourage
bargaining over the depiction of history by granting copyright holders substantial
leverage over select historical facts. It would force those wishing to create
videos and documentaries to receive approval and endorsement from their
subjects, who could "simply choose to prohibit unflattering or disfavored
depictions." See IDA Brief at 5. Social commentary as well as historical narrative
could be affected if, for example, companies facing unwelcome inquiries could
ban all depiction of their logos. This would align incentives in exactly the wrong
manner, diminishing accuracy and increasing transaction costs, all the while
discouraging the creation of new expressive works. This regime, the logical
outgrowth of Bouchat's fair use position, would chill the very artistic creation that
copyright law attempts to nurture. “


74

The Authors Guild, Inc. v Google Inc. 2013
WL 6017130 (S.D.N.Y. Nov.14, 2013)
¬ “In my view, Google Books provides significant public benefits. It
advances the progress of the arts and sciences, while maintaining
respectful consideration for the rights of authors and other creative
individuals, and without adversely impacting the rights of copyright
holders. It has become an invaluable research tool that permits
students, teachers, librarians, and others to more efficiently identify
and locate books. It has given scholars the ability, for the first time, to
conduct full-text searches of tens of millions of books. It preserves
books, in particular out-of-print and old books that have been
forgotten in the bowels of libraries, and it gives them new life. It
facilitates access to books for print-disabled and remote or
underserved populations. It generates new audiences and creates
new sources of income for authors and publishers. Indeed, all society
benefits.”

75

The Authors Guild, Inc. v Google Inc. 2013
WL 6017130 (S.D.N.Y. Nov.14, 2013)
¬ What is a “fair” treatment of books and other works created in an analog
age? Should their authors have a right to negotiate the details of their digital
exploitation in a developing online technological marketplace?
¬ Should the transformative nature of digital technologies allow their makers to
use fair use to trump exclusive rights?
¬ In a rapidly evolving technological age, what counts as a truly
‘transformative’ and should new uses of works for commercial purposes be
viewed as tending to be fair or unfair?
¬ Is it fair that online service providers should be able to reap all of the
commercial benefits of new uses of works without paying for such uses?
¬ Should the courts or Congress make policy choices to address copyright
issues presented by technological developments?
¬ See, The Google Book project: is it fair use?
http://www.barrysookman.com/2014/01/05/the-google-book-project-is-it-fairuse/

76

American Institute of Physics v. Schwegman
Lundberg & Woessner, PA 2013 WL 4666330
(D.Minn., 2013)
“Having weighed all these factors, this Court concludes that Schwegman is
entitled to the fair use defense as a matter of law. The record demonstrates
no genuine dispute that Schwegman's use of the Articles was new and
different than and did not merely supersede the original purpose of the
Articles. Also, the undisputed facts demonstrate that the nature of the
Articles is predominantly informational. Further, although Schwegman did
make complete copies of the Articles in its patent prosecution practice, the
only reasonable inference to draw from the record is that Schwegman's
copying of the Articles was consistent with the new and different purpose
and character of Schwegman's use. And there is no evidence to suggest
that Schwegman's copying impacted a traditional, reasonable, or likely to be
developed market for the Articles. Thus, all four fair use factors weigh in
favor of finding that Schwegman's use in this matter is fair as a matter of
law.”


77

The Associated Press v. Meltwater U.S.
Holdings, Inc (S.D.N.Y, March 21, 2013)
¬

“Examining the four factors individually, and considering them as a whole in light of
the purposes of the Copyright Act and the fair use defense, Meltwater has failed to
raise a material question of fact to support its fair use defense. Meltwater's
business model relies on the systematic copying of protected expression and the
sale of collections of those copies in reports that compete directly with the copyright
owner and that owner's licensees and that deprive that owner of a stream of income
to which it is entitled. Meltwater's News Reports gather and deliver news coverage
to its subscribers. It is a classic news clipping service. This is not a transformative
use…

¬

Meltwater has attempted to escape the straight forward application of the four-part
fair use test by characterizing itself as a search engine. Meltwater has failed to
show, however, that its interactions with its subscribers are equivalent in any
material way to the functioning of search engines, as that term is commonly
understood. Exploitation of search engine technology to gather content does not
answer the question of whether the business itself functions as a search engine. In
any event, however Meltwater's business is classified, it must still show that its use
of copyrighted expressive content was a fair use. This it has not done.”


78

Diversey v Schmidly, No. 13-2058
(10th Dec. 23 Cir.2013)
¬ Was the distribution right implicated when a University library listed a work in
its library catalog for public lending?
¬ “As Diversey points out, § 106(3) explicitly protects the copyright owner's
exclusive right to distribute copies by lending. See Hotaling, 118 F.3d at 203
("When a public library adds a work to its collection, lists the work in its index
or catalog system, and makes the work available to the borrowing or
browsing public, it has completed all the steps necessary for distribution to
the public.")…
¬ This is the essence of a violation of the copyright owner's exclusive right to
distribute his work via lending…. Peter S. Menell, In Search of Copyright's
Lost Ark: Interpreting the Right to Distribute in the Internet Age, 59 J.
Copyright Soc'y U.S.A. 1, 52-66 (2011) (analyzing the legislative history
regarding the distribution right and concluding the requirement of actual
distribution of an unauthorized copy is unwarranted).”


79

Columbia Pictures Industries, Inc. v. Fung,
710 F.3d 1020 (9th. Cir. 2013)
¬

“Various film studios alleged that the services offered and websites maintained
by Appellants Gary Fung and his company, isoHunt Web Technologies, Inc.
(isohunt.com, torrentbox.com, podtropolis.com, and ed2k-it.com, collectively
referred to in this opinion as "Fung" or the "Fung sites") induced third parties to
download infringing copies of the studios' copyrighted works. The district court
agreed, holding that the undisputed facts establish that Fung is liable for
contributory copyright infringement. The district court also held as a matter of law
that Fung is not entitled to protection from damages liability under any of the
"safe harbor" provisions of the Digital Millennium Copyright Act ("DMCA”)…By
separate order, the district court permanently enjoined Fung from engaging in a
number of activities that ostensibly facilitate the infringement of Plaintiffs' works.

¬

Fung contests the copyright violation determination as well as the determination
of his ineligibility for safe harbor protection under the DMCA. He also argues that
the injunction is punitive and unduly vague, violates his rights to free speech, and
exceeds the district court's jurisdiction by requiring filtering of communications
occurring outside of the United States. We affirm on the liability issues but
reverse in part with regard to the injunctive relief granted.”


80

Disney Enterprises, Inc. v. Hotfile Corp.
2013 WL 6336286 (S.D.Fla.,2013)
¬ “The analysis here, based on precedent, is straightforward. Hotfile controls
the means of infringement by among other things mandating user
registration and hosting the infringing materials on its own servers..
Moreover, Hotfile has a stated policy that permits it to control user activity
(and, as in Fonovisa, to exclude users) and maintains that it has exercised
that control in policing content. Hotfile has also adopted technology that it
claims is effective in filtering and targeting infringing works. These actions,
which benefit Hotfile in an assessment of direct liability, belie Hotfile's
argument that it lacks control because it has no search function and no way
to identify or remove infringing files. It is also clear that prior to the filing of
the Complaint, Hotfile failed to properly exercise its control in light of the
number of users who were blatantly infringing and the estimates of the
Studios' experts regarding the prevalence of protected content available for
download. Accordingly, on this record, the Studios have made a case for
vicarious liability, and summary judgment is entered in their favor.”


81

Pearson Education, Inc. v. Ishayev, No. 11
Civ. 5052 (PAE), (S.D.N.Y.2013)
¬

“As a matter of law, sending an email containing a hyperlink to a site facilitating
the sale of a copyrighted work does not itself constitute copyright infringement. A
hyperlink (or HTML instructions directing an internet user to a particular website)
is the digital equivalent of giving the recipient driving directions to another
website on the Internet. A hyperlink does not itself contain any substantive
content; in that important sense, a hyperlink differs from a zip file. Because
hyperlinks do not themselves contain the copyrighted or protected derivative
works, forwarding them does not infringe on any of a copyright owner's five
exclusive rights under § 106.”

¬

“To be sure, if Ishayev had himself uploaded the electronic copies of the manual
onto the filesonic.com website, he would then be liable for copyright
infringement, assuming plaintiffs had met their burden in showing that more than
a de minimis amount of copyrighted material was present in the instructors'
manuals.”

¬ “To be sure, "[a]lthough hyperlinking per se does not constitute direct copyright
infringement because there is no copying . . . in some instances there may be a
tenable claim of contributory infringement or vicarious liability.”

82

Football Dataco Ltd & Ors v Stan James Plc &
Ors [2013] EWCA Civ 27 (06 February 2013)
¬

Is the operator of a website that offers a pop-up box that links to another site and which,
when accessed by a user, will inevitably result in infringement, liable for primary infringement
as a joint tort-feasor?

¬

“What is at issue is whether Stan James is a joint-tortfeasor with the UK punters who avail
themselves of the pop-up Live Scores on Stan James' website.

¬

What does follow from the fact that Stan James and Sportradar act together is that Stan
James' pop-up Live Scores should be treated just as if it were Stan James' own link.

¬

So the question boils down to this: if A has a website containing infringing material which will
inevitably be copied into the computer of B if he enters that website, is A a joint tortfeasor
with B? I am conscious that this question is important. The answer would seem to apply
equally to copyright as to database rights. If the answer is yes, then the owner of any website
anywhere in the world will be a joint tortfeasor with a UK user of that website if the inevitable
consequence of access to that site by the user is infringement by that user.

¬

I would hold the answer to be yes. The provider of such a website is causing each and every
UK user who accesses his site to infringe. His very purpose in providing the website is to
cause or procure acts which will amount in law to infringement by any UK user of it. The case
is not one of a mere facilitator, such as eBay or Amstrad where the choice to infringe or not
ultimately lay with the consumer. Here Stan James is in reality responsible for the punter's
infringement.”


83

Public Relations Consultants Association Ltd v The Newspaper
Licensing Agency Ltd & Ors [2013] UKSC 18 (17 April 2013)
¬ UK Supreme Court ruled that the exception permitting temporary
copying as part of a technical processes in section 28A of the
Copyright, Designs and Patents Act 1988, permitted copying in a
web browser.
¬ “...it has never been an infringement, in either English or EU law,
for a person merely to view or read an infringing article in physical
form...All that article 5.1 of the Directive achieves is to treat the
viewing of copyright material on the internet in the same way as its
viewing in physical form, notwithstanding that the technical
processes involved incidentally include the making of temporary
copies within the electronic equipment employed...


84

American Broadcasting Companies, Inc. v
Aereo, Inc. US.Sup.Ct. Docket for 13-461


85

Inhale, Inc. v Starbuzz Tobacco, Inc.,
Case: 12-56331 (9th.Cir. Jan 9, 2014)
Copyright in a “hookah” (a device for smoking tobacco)?


86

Slides available @
barrysookman.com and
mccarthy.ca

•

Underlines in quotes may reflect emphasis added.


87

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