The Indigo Kills Kids Site Blocking Injunction Case – Update

 

vs.

The interim (temporary short duration) wide ranging site blocking injunction obtained by Indigo Books from Justice Fuhrer of the Federal Court has now been extended to two years following an unopposed hearing on October 22, 2024. This proceeding has been unopposed by any actual defendant and the ISPs have appeared and taken no position. (Nice work if you can get it 😉)  Bell did not even bother to appear.

I recently blogged about the interim injunction decision dated September 17, 2024, which has been reported. For whatever reason, the interlocutory decision dated October 23, 2024 which was rendered right after the one sided follow up hearing, has not been reported.  But here at the two unreported substantive decisions and orders from October 23, 2024, which I have obtained from the Court:

·       ·  Order and Reasons

·  Order

The reasons for the interlocutory decision are based on what appears, with respect, to be a problematic conflation of trademark law with copyright law, and some very dubious precedent. Where a dispute is really about a trademark, copyright law should not be contorted and muddled with trademark law in order to bring about a result that trademark law should not provide.

So sayeth the Supreme Court of Canada in the landmark decision Euro-Excellence Inc. v. Kraft Canada Inc., 2007 SCC 37 (CanLII), [2007] 3 SCR 20, <https://canlii.ca/t/1s72h>. See para. 65 and note how Kraft unsuccessfully used a “copyright action as an “interesting strategy in an effort to thwart Euro-Excellence’s distribution of” the chocolate bars” in order to get around the inevitable failure of trademarks law to address the issue. Kraft tried but utterly failed to rely on copyright in the small “bear” logo that adorns Toblerone chocolate bars. I recall Justice Binnie at the hearing asking whether anyone would buy a Toblerone chocolate bar in order to frame the wrapper and throw away the chocolate, or words to that effect. I made the prevailing arguments in this case at the SCC on behalf of the Retail Council of Canada.

Now, Indigo Books is using the artifice of apparently minimal copyright entitlement in a logo to bring about a result that would not be available under trademarks law. But nobody was there to argue to the contrary.

While there may be little or no credible sympathy for the absent defendants in this case, their absence means that potentially very important legal arguments were not addressed.  For example, the Plaintiff successfully invoked the wrongly decided (IMHO) United Airlines, Inc. v. Cooperstock, 2017 FC 616 (CanLII), [2018] 1 FCR 188, <https://canlii.ca/t/h4jzk> decision. That was a case in which Dr. Cooperstock was self-represented at trial and which likely would have been successfully appealed. However the appeal, which was in the hands of a major law firm, was suddenly discontinued just four days before the hearing under circumstances that I have refrained from mentioning.

Maybe it’s just as well that the interlocutory Indigo Kids  decision is not formally reported. Given that it was unopposed, and that the reasons are respectfully, IMHO, flawed, it is not, with respect, a helpful or persuasive addition to Canadian IP jurisprudence.

Curiously, there’s also a letter request from Indigo’s very experienced lawyer to block from the record the telephone numbers of the counsel involved. This is very unusual. Anybody can google a lawyer’s phone number and work address in a second or two – so what’s the point?

HPK

AI Litigation for the Canadian Nation

(from Kubrick’s visionary 1968 film, 2001: A Space Odyssey. AI is NOT a new concept.)

 There is a massive lawsuit underway against a number of companies comprising “OpenAI” (i.e. ChatGPT) for “misappropriation” of major Canadian news media material. It also alleges breach of ss. 3, 27 and 41 of the Copyright Act with apparently very few material facts or particulars about how these provisions were breached. “Misappropriation” is not a concept recognized by Canadian copyright law, as I explain below. Section 3 of the Copyright Act is the centrepiece of Canada’s complex copyright legislation and contains many separate and distinct provisions, none of which are identified in the Statement of Claim. It also alleges prohibited TPM circumvention, breaching terms of use, and unjust enrichment.

Michael Geist was quick off the mark with a useful analysis of some of the many difficulties that the plaintiffs face in this lawsuit, its international context, and his prediction that this is mainly about getting a settlement and a licensing deal. He followed up with a podcast with Prof. Robert Diab from Thompson Rivers University, who has also written about this case.

Actually, the case for the plaintiffs could be even weaker and more problematic than Michael or Prof. Diab suggest.

The Plaintiffs are “Canada’s leading media companies and news publishers (collectively, the “News Media Companies”)” including CBC and Canadian Press.

It was brought by the same very respected law firm that vigorously defended the concept of fair dealing in the Supreme Court of Canada in the York University case on behalf of Prof. Ariel Katz, as an intervener. Here’s the law firm’s press release.

This mega action was brought in the Superior Court of Ontario, perhaps because the Federal Court might conceivably have been dismissive of a lawsuit predicated primarily on “misappropriation”, which is a tort and a particularly vague one – and NOT a cause of action pursuant to the Copyright Act (see below). Indeed, the Federal Court conceivably might summarily toss any litigation focussed on “misappropriation”. BTW, the Ontario Court of Appeal successfully disentangled the muddling of misappropriation of personality and copyright in the ill-fated Glenn Gould case back in 1998. See Gould Estate v. Stoddart Publishing Co. Ltd., 1998 CanLII 5513 (ON CA), <https://canlii.ca/t/6gw8>

It will be interesting to see who ends up representing  the defendants here – and how the proceedings unfold.  Based on the copyright claims alone, this case could conceivably get bogged down at the outset and, if it ever does get going, for years to come, and perhaps never achieve a positive adjudicated outcome or even a satisfactory settlement from the plaintiffs’ point of view.

It will be interesting to see how the apparent lack of specificity, material facts, and particulars in the pleading and other issues could play out in procedural wrangles that could drag on with motions and discovery for a very long time. Even if the copyright causes of action survive, it is easy to predict that defences could potentially include the concepts of fair dealing, implied right, and simply non-infringement. Once again, as I’ve said, “misappropriation” is not something recognized by Canadian copyright law.

“Misappropriation” is a tort concept – i.e. judge-made common law that establishes liability for such things as negligence, product liability, taking of personality rights, etc. I shall never forget the great Prof. Harry Glasbeek’s impassioned lesson in 1^st year law school at Osgoode about how a Scottish woman was able to successfully sue after finding a dead decomposed snail in a bottle of ginger beer that she had partially consumed. See  Donoghue v Stevenson. That was a landmark of judge made tort law from the English House of Lords in 1932.

Some tort law finds its way into statute. Much of it does not. Canada’s Copyright Act explicitly excludes tort concepts. Copyright lawyers are – or ought to be - aware of the 1979 SCC decision that prominently mentioned the then very young and now the late Hon. Roger Hughes, namely Compo Co. Ltd. v. Blue Crest Music et al., 1979 CanLII 6 (SCC), [1980] 1 SCR 357, <https://canlii.ca/t/1mjth> wherein the great Justice Estey stated:

Mr. Hughes for the respondent in answer to a question from the Bench put it very well when he said that copyright law is neither tort law nor property law in classifi­cation, but is statutory law. It neither cuts across existing rights in property or conduct nor falls between rights and obligations heretofore existing in the common law. Copyright legislation simply creates rights and obligations upon the terms and in the circumstances set out in the statute. This creature of statute has been known to the law of England at least since the days of Queen Anne when the first copyright statute was passed. It does not assist the interpretive analysis to import tort concepts. The legislation speaks for itself and the actions of the appellant must be measured accord­ing to the terms of the statute.

(highlight, emphasis & underline added)

Needless to say, there is also the very important and venerable s. 89 of the Copyright Act:

No copyright, etc., except by statute

89 No person is entitled to copyright otherwise than under and in accordance with this Act or any other Act of Parliament, but nothing in this section shall be construed as abrogating any right or jurisdiction in respect of a breach of trust or confidence.

1997, c. 24, s. 50 (highlight, emphasis & underline added)

See  Reference re Broadcasting Regulatory Policy CRTC 2010-167 and Broadcasting Order CRTC 2010-168, 2012 SCC 68 (CanLII), [2012] 3 SCR 489, <https://canlii.ca/t/fv76k> paras. 81, 82.

The quantum of damages sought is beyond huge – potentially statutory damages of $20,000 for each of the “hundreds of thousands, if not millions, of Owned Works across the Websites” allegedly infringed. Theoretically, that’s in the Billions. Naturally, mega injunctive relief is also sought.

Here is Section 3 of the Copyright Act. Which of these provisions are implicated here and how? The Statement of Claim – in all of its 84 pages – does not tell us:

Copyright in works

3 (1) For the purposes of this Act, copyright, in relation to a work, means the sole right to produce or reproduce the work or any substantial part thereof in any material form whatever, to perform the work or any substantial part thereof in public or, if the work is unpublished, to publish the work or any substantial part thereof, and includes the sole right

(a) to produce, reproduce, perform or publish any translation of the work,

(b) in the case of a dramatic work, to convert it into a novel or other non-dramatic work,

(c) in the case of a novel or other non-dramatic work, or of an artistic work, to convert it into a dramatic work, by way of performance in public or otherwise,

(d) in the case of a literary, dramatic or musical work, to make any sound recording, cinematograph film or other contrivance by means of which the work may be mechanically reproduced or performed,

(e) in the case of any literary, dramatic, musical or artistic work, to reproduce, adapt and publicly present the work as a cinematographic work,

(f) in the case of any literary, dramatic, musical or artistic work, to communicate the work to the public by telecommunication,

(g) to present at a public exhibition, for a purpose other than sale or hire, an artistic work created after June 7, 1988, other than a map, chart or plan,

(h) in the case of a computer program that can be reproduced in the ordinary course of its use, other than by a reproduction during its execution in conjunction with a machine, device or computer, to rent out the computer program,

(i) in the case of a musical work, to rent out a sound recording in which the work is embodied, and

(j) in the case of a work that is in the form of a tangible object, to sell or otherwise transfer ownership of the tangible object, as long as that ownership has never previously been transferred in or outside Canada with the authorization of the copyright owner,

and to authorize any such acts.

BTW, there are also allegations of TPM infringement, breach of contract, and unjust enrichment.

The TPM issue could also be interesting because TPMs are also involved in the Blacklock’s litigation, which is presently in the Federal Court of Appeal and is likely to be finally resolved long before this AI litigation even gets fully off the ground, if ever.

Here’s the Plaintiffs’ law firm’s press release. Here’s some coverage in the NY Times.

There is also a recent lawsuit in BC based by Canlii against Clearway et al. Canlii is the very important free database of Canadian legal decisions. Here’s the Statement of Claim filed in the Supreme Court of British Columbia on November 4, 2024, also from a major law firm.  This also involves AI and the Statement of Claim alleges misappropriation, misuse, conversion, and unjust enrichment. Again, one can expect procedural issues that could last for years to come.

Stay tuned for future developments on these lawsuits. But don’t expect anything conclusive any time soon.

AI is a huge growth industry, for better or worse, and affects virtually every sector. And it is now the centrepiece of lots of litigation in Canada and elsewhere. This is inevitable given the nature of the legal profession. The lawsuits will presumably unfold with much deliberation and will hopefully be well argued by all concerned. This is probably better than some hasty and panicked legislation prompted by political opportunism that could conceivably result in bad cures for misdiagnosed problems.

HPK

Blacklock’s Botched Blaming & Begging

Blacklock’s Holly Doan has posted a rather hysterical, histrionic, inaccurate, and misleading post that, among other things, misrepresents Prof. Michael Geist’s blog. This Blacklock’s bravura is telling – if for no other reason than its failing to suggest ANY credible ground of appeal of this heavily fact-based and legally solid decision. Once again, here’s the judgment:

1395804 Ontario Ltd. (Blacklock's Reporter) v. Canada (Attorney General), 2024 FC 829 (CanLII), <https://canlii.ca/t/k4zfr>

Not to be outdone, Ms. Doan’s husband, Tom Korski, appears in a sadly softball podcast interview.

Blacklock’s has kindly provided both of these for public consumption without a paywall:

https://www.blacklocks.ca/this-will-be-law-september-1/#cdnpoli

https://x.com/mindingottawa/status/1801211869656449445

Both of them misstate the careful findings of fact and law by Justice Roy, whose exemplary judgment deals with the use of “licitly” acquired passwords and fair dealing.

Those entities with competently designed websites with “effective” TPMs who understand basic copyright law have nothing to fear from this judgment. Indeed, they should welcome it because it reminds everyone that illicit hacking of a password or content sharing that is not fair dealing can lead to big trouble. The manner in which the work is obtained will go to the fair dealing analysis, but does not necessarily preclude fair dealing.

After all these years and its long litany of litigation losses, Blacklock’s still offers only an individual membership level online. Indeed, its botched business model seems to be that of selling single subscriptions to government departments, posting “inaccurate, deceptive or inflammatory articles”, and then using ATIPs to identify and pursue what it considers to be illegal sharing of passwords and/or content.

If Blacklock’s wants to fundraise off a devastating loss (which is a Donald Trump trick), then Blacklock’s should not mislead potential sympathizers, if there are any. This is clearly unlikely to attract small donors who might otherwise contribute to save endangered elephants or support other meritorious causes. The big players may predictably conclude that any appeal would likely fail and thus simply reinforce Justice Roy’s decision, which in any event is actually helpful to them. Moreover, the SCC is very unlikely to take this case if leave is somehow sought because the SCC doesn’t review fact finding or rewrite statutes. In this case, the statute is what it is and what it has been for the last 12 years re TPMs and the last 100+ years re fair dealing – including several notable decisions since the landmark 2004 CCH decision. Moreover, Blacklock’s Hail Mary fantasy of a legislative fix is extremely unlikely to happen. Both Liberal and Conservative governments have known for decades that controversial copyright revision is not a hill to die on and can indeed be fatal to the careers of whichever politicians lead the charge.

It should be said that the Department of Justice ought to be very pleased with the result of this litigation and the work done by Alexander Gay, General Counsel. Likewise, CIPPIC and Gowlings with respect to its partner James Plotkin’s exemplary intervention.

BTW, where’s @bsookman’s belated Blacklock’s blog?

HPK

Big Black Eye for Bad Built Blacklock’s Business Model: Long Live Felicitous Licit Liberty!

 Blacklock’s lengthy litany of litigation losses has now been extended notably with the long-awaited Federal Court  judgment from Justice Roy regarding TPMs and Fair Dealing that is both monumental and minimal in interesting and important ways. See 1395804 Ontario Ltd. (Blacklock's Reporter) v. Canada (Attorney General), 2024 FC 829 (CanLII), <https://canlii.ca/t/k4zfr>

• It is monumental because it is 67 pages of careful, detailed, heavily fact-based findings that are likely bullet proof on appeal because there are no “palpable and overriding” errors and no extricable legal conclusions that are wrong in any way. Indeed, its correctness and common sense are commendable.
• It is minimal because it confirms the obvious point that there someone who “licitly”, i.e. legally, accesses a website without hacking or otherwise illicitly circumventing a TPM can share content consistent with Canadian fair dealing law that goes back to 1911 and the SCC’s venerable “implied right” doctrine.
• No animals were injured in this case – there was no hacking, descrambling or other illicit activity involved. The Government was doing what it paid for and doing its job.
• Enlightened media providers such as the Globe and Mail, NY Times, etc. should  welcome this decision because their sophisticated websites can’t be hacked and the sharing of their content e.g. via cutting pasting for fair dealing purposes is good for business.
• Contrary to some high-powered  social media whining, there is no basis for any argument and no record, in any case, for any argument based on the 2020 Canada-USA “CUSMA” agreement.
• If Blacklock’s (“BR”) is even thinking of an appeal, it may first wish to consider that its likely lack of success will dramatically reinforce this decision. All the more so if it gets to the SCC. But let Blacklock’s  appeal – it will be a “Go ahead, make my day” moment for me and many other observers and potential interveners.
• The likelihood of a legislative intervention on this issue and in response to this decision is close to absolute zero.
• Congratulations to Alexander Gay for the Attorney General of Canada (“AGC”) and James Plotkin (recently made partner  of Gowlings) for CIPPIC who both did superb work.

 Likely to be continued…

 HPK

(P.S.: Let me remind readers, as  always, that nothing on this blog is legal advice.)

 

The Great Bill C-18 Constitutional Gamble and “The Man Who Broke the Bank at Monte Carlo”

Bill C-18 (the so-called “Online News Act”), which is often referred to as the “link tax” bill, is very likely unconstitutional. There's been an excellent analysis of several reasons why this is the case by Konrad von Finckenstein and Phillip Palmer, whose joint and several expertise is quite formidable. 

These learned authors mention copyright and seem to acknowledge a possible connection to copyright – but I would go farther and add one more potentially final nail to the C-18 constitutional coffin. This involves copyright law. I would contend that there is not and cannot be any possible connection to copyright law. The bill has a few references to copyright that are either ill-conceived or perhaps included as Machiavellian tethers to support some sort of connection to constitutional mooring. Absent any valid connection to copyright law, where is the federal jurisdiction to be found?

In Canada there is no copyright in a “title” or headline as such or a short snippet not comprising a “substantial part” of the article. Thus, the issue of fair dealing doesn’t even arise & the reference to the Copyright Act is a constitutional red herring.

Also, a hyperlink by itself is not “publication”. It’s just a modern and more convenient form of the traditional footnote. It is the fundamental raison d'être of the internet.

One of my very favorite copyright cases of all time is that of  Francis, Day & Hunter Ltd. v. Twentieth Century Fox Corp. Ltd. et al., 1939 CanLII 276 (UK JCPC), a Privy Council decision from the legendary Lord Wright that involved alleged copyright infringement in Canada. In a nutshell, the case involved a movie entitled “The Man Who Broke The Bank At Monte Carlo” and a song written earlier with the same title. Other than the title, there was nothing in common between the two works. The Privy Council held that there cannot be copyright in a title because it is not a sufficiently substantial work of authorship.

The Privy Council also indicated that:

In this connection regard must be had to s. 3 of the Act of 1921 which defines copyright as the "right to produce or reproduce the work or any substantial part thereof." The definition (v) does not, in their Lordships' judgment, mean that the title of a work is to be deemed to be a separate and independent "work." Work is to include "the title thereof," that is to say, the title is to be treated as part of the work, provided that it is original and distinctive whatever these words may connote. When that definition is read with s. 3, the result is that to copy the title constitutes infringement only when what is copied is a substantial part of the work. This view would agree in effect with what was said by Jessel M.R. in Dick v. Yates (supra) in the words quoted above and would apply to a case such as a title covering a whole page of original matter, or something of that nature, but would not justify such a wide extension of copyright as the appellant company has contended for, or the holding of McEvoy J. on this point. It is said that so to construe the definition is to treat it as adding nothing to the law. But the definition may have been inserted to settle doubts and to avoid it being said that in no circumstances could a title receive protection. In any event their Lordships do not think that the new definition (y) entitles the appellants to succeed in this case.

(at p. 359 of report) (highlight and underline added)

Thus, any reliance on the notion that Google, or other Digital News Intermediaries (“DNIs”), are infringing copyright by reproducing the title (i.e. headline) of an article is ridiculous. The “Monte Carlo” decision is just as relevant to Canadian law today as it was 84 years ago.

Even the inclusion of  a one or two sentence “snippet” from an article would presumably not entail application of the Copyright Act because it would likely not be a “substantial part” of the article and would thus not even need justification as fair dealing – which only is necessary if a “substantial part” is reproduced. Google News simply does not reproduce whole articles or substantial parts thereof. It long ago stopped providing even “snippets” and now just provides headlines.

Thus, the references in sections 23 to 26 to copyright are simply a red herring. The reference to the Copyright Board about a possible tariff is simply beyond absurd. Given the Boards historical inability to deal correctly with much simpler and more lucid legislative provisions, and its record of taking many years to decide cases and inevitably then retroactively and often wrongly, the notion of a Copyright Board “tariff” dealing with headlines of news articles is simply cringeworthy.

And, of course, links are no more than a modern and more convenient form of classical footnotes. The act of linking to an article without more is simply not “publication” and to legislate otherwise would threaten the very viability of the internet, as the SCC ruled a long time ago in Crookes v. Newton 2011 SCC 47 (CanLII), [2011] 3 SCR 269:

[36] The Internet cannot, in short, provide access to information without hyperlinks.  Limiting their usefulness by subjecting them to the traditional publication rule would have the effect of seriously restricting the flow of information and, as a result, freedom of expression.  The potential “chill” in how the Internet functions could be devastating, since primary article authors would unlikely want to risk liability for linking to another article over whose changeable content they have no control.  Given the core significance of the role of hyperlinking to the Internet, we risk impairing its whole functioning.  Strict application of the publication rule in these circumstances would be like trying to fit a square archaic peg into the hexagonal hole of modernity.

(highlight and emphasis added)

 Thus, there is no rational connection between Bill C-18 and copyright law as we know it in Canada. Any desperate reference to the concept of “neighbouring rights” based upon some civil law based European approach is also a non-starter in Canada, absent a major and likely unconstitutional amendment to the Copyright Act.

The only reason to include the references to copyright in Bill C-18 was presumably to somehow tenuously tether it to a constitutional lynch pin. I would be dismayed if government officials were unaware of this fictitious foundation. Apparently, however, they are doing what officials tend to do – which is to try to rescue their Minister’s misguided and politically based missions and to get them across the finish line through Parliament.

If this should happen with Bill C-18, one hopes that Google would challenge it in the courts. However, Google’s policy strategies have become increasingly opaque in recent years. Moreover, its litigation strategy that effectively snatched defeat from the jaws of victory in the SCC in the 2017 Equustek case was and remains very puzzling. See Google Inc. v. Equustek, 2017 SCC 34.  Hopefully, Google will handle this and other possible constitutional issues, such as of whether it operates "a search engine or social media service, that is subject to the legislative authority of Parliament", more effectively than it dealt with the Equustek case in the SCC.  

Although I am “not practicing law” these days, I would be willing to elaborate on the above in the Senate hearings as a policy provocateur if asked.

 HPK

Indigenous Painting and the Law in Canada

There has been much attention lately to Indigenous painting and law, particularly coyright and criminal law, in Canada.

For example:

Re Noval Morrisseau

Re Autumn Smith:

The left painting is Autumn Smith's interpretation of her being given a traditional name by her grandmother, and was published to Instagram March 29, 2019. The painting on the right is from Tyler Rushnell and was published on Instagram Nov. 9, 2021. (Submitted by Autumn Smith) 

https://www.cbc.ca/news/indigenous/artist-accused-plagiarism-1.6796703

It is important to understand what copyright law does and does not do. Facts and details matter.

There’s no copyright in:

• Ideas as such
• Styles as such
• Symbols including birds, animals, plants, etc. as such

For example, merely copying or imitation of an idea or style is not, by itself copyright infringement. If Monet’s work were not in the public domain, I could still paint my own version of a pond with lilies, as a long as I don’t copy one of his paintings. I might even get away with copying one of his lilies, if it was one small and insubstantial part of a much larger canvas with dozens or hundreds of water lilies and I paint my own version of a lily pond.

Van Gogh – who is regarded as almost as a deity when it comes to paintings of sunflowers – greatly admired the younger Monet’s sunflower painting – even though it superficially seems rather similar. Nobody owns the idea of sunflowers in a vase.

            Van Gogh                                              Monet

This history of all graphic arts, literature, drama, and music has been predicated on imitation and evolution.

The Indigenous community in Canada has some fundamentally different concepts than “Western” property concepts as embodied in common law based copyright law. For example, in Western copyright law, there is no communal ownership. Copyright initially vests in the creator – or the creator's employer in some circumstances - and is limited in time – now 70 years after the artist’s death.

For Canadian copyright law to apply to Indigenous art, as with any art, certain basic facts must be proven. Any party suing for copyright infringement must show that the work is:

• “Original” (which may not be obvious in some cases);
• That the plaintiff is the copyright owner or the assignee (or at least the exclusive licensee of the owner, in which case the owner must included the litigation); and,
• That the work as a whole or at least a sufficiently “substantial part thereof” has been copied or otherwise dealt with contrary to the Copyright Act.

Imitation or even appropriation of a style may not suffice to establish copyright infringement. If I can master my painterly skills to paint pictures in the recognizable style of a well known artist, without copying any of their works or any substantial portion thereof, that alone is likely not copyright infringement.

If, however, I put the famous artist’s name on it, or hold it out as being an authentic Morrisseau or whoever, it may well constitute actionable civil passing off and/or even serious Criminal Code offences.

Changes of colour or the inclusion or elimination of small details in a “copy” of an original work may not suffice to avoid copyright infringement – though watch to see if the Supreme Court of the USA lets the Andy Warhol Estate off the hook for doing little or nothing more than that. What happens in the USA does not always stay in the USA.

Indigenous artists are no better or worse off than other creators when it comes to the cost of litigation. Lawsuits can be expensive, if done properly. But cost recovery is getting better and damage awards are getting higher. And injunctions can be very powerful – and result in jail time for those who disobey them.

In any case, I have always thought that Indigenous artists should take better advantage of the certification mark provisions of Canada’s Trademarks Act, so as to provide a “seal of approval”, as it were, as to the indigeneity of the artist  and the authenticity of his or her works. There is little indication that this mechanism has been used to adequate advantage – or indeed to any significant extent. Such a collective might even be able to help out with the costs of funding litigation when appropriate.

There is much discussion about a “resale” right that might benefit Indigenous artists. Such a right is unlikely to be established in the USA, with whom we have a very open border, in the foreseeable future. It might greatly affect and even disrupt the art market in Canada. And it would only be of any benefit to living artists who are sufficiently successful such that their works significantly appreciate in value while they are still alive. Otherwise, it could become another vehicle for collectives, estates, and lawyers.

HPK

Canadian Copyright Term Extension: Is December 30, 2022 Perhaps Premature Proclamation?

(not the recent proclamation)

 During the CUSMA negotiations with the Trump administration, Canada sadly handed over a gratuitous gift that will mostly by far benefit American copyright owners by extending the term of copyright for 20 years. Canada made a bad decision even worse by ignoring the considered legal and policy analyses by the former US Register of Copyrights, Maria Pallante and Canada’s own Minister of Justice, David Lametti, when he was a law professor, explaining that a registration requirement for the additional 20 years would be perfectly acceptable under international law. Such a requirement would have gone a long way to clearing out deadwood and preserving a more vibrant public domain. I pointed all  this and more out last year to the Government in response to the disingenuous consultation that was based upon faulty analysis and that ignored my and many others carefully researched analyses.

Now, to arguably add insult to injury, the Government has proclaimed the new 20-year extension into force very possibly two crucial days earlier than necessary – namely on December 30, 2022 rather than January 1, 2023. That matters a lot because it deprives Canadians of the cohort of material that would have entered the public domain on January 1, 2023 from the creators who died in 1972. Here is the Proclamation:

Her Excellency the Governor General in Council, on the recommendation of the Minister of Industry and the Minister of Canadian Heritage, under section 281 of the Budget Implementation Act, 2022, No. 1, chapter 10 of the Statutes of Canada, 2022, fixes December 30, 2022 as the day on which Division 16 of Part 5 of that Act comes into force.

Perhaps the most notable Canadian death in 1972 was that of  Lester B. Pearson, the great 14^th Prime Minister of Canada and Nobel Peace Prize winner. Historians won’t be happy about waiting another 20 years to gain full access to any of Pearson’s important writings that may be needlessly protected in the meantime.

Here’s what Internet Archive Canada had to say.

For copyright and international law geeks, here’s the CUSMA deal:

For Section H, amendments to Canadian legislation are required to meet the obligations under Article 20.62 and Article 20.67. The CUSMA Implementation Act implements these obligations by amending the Copyright Act. Canada has a transition period of 2.5 years following the date of entry into force of the Agreement to implement the obligation in Article 20.62(a) related to extending Canada’s general term of protection to life of the author plus 70 years (up from plus 50 years).

Here’s where it says we had “2.5 years” to implement this deal from the day that CUSMA came into force:

Article 20.89: Final Provisions

…

4. With regard to obligations subject to a transition period, Canada shall fully implement its obligations under the provisions of this Chapter no later than the expiration of the relevant time period specified below, which begins on the date of entry into force of this Agreement.

· (a) Article 20.7.2(f) (International Agreements), four years;

· (b) Article 20.44 (Patent Term Adjustment for Unreasonable Granting Authority Delays), 4.5 years; and

· (c) Article 20.62(a) (Term of Protection for Copyright and Related Rights), 2.5 years.

 Here’s where it says that CUSMA came into force on July 1, 2020:

On November 30, 2018, Canada, the United States and Mexico signed a protocol to replace the 1994 North American Free Trade Agreement (NAFTA) with the Canada-United States-Mexico Agreement (CUSMA or Agreement). Under the protocol, NAFTA would be formally replaced by CUSMA upon entry into force of the new Agreement. On December 10, 2019, the Parties agreed to modify certain elements of the Agreement to improve the final outcome in the areas of state-to-state dispute settlement, labour, environment, intellectual property and rules of origin. The Parties subsequently provided their formal notifications of the completion of domestic procedures in April 2020. Under the terms of the protocol, entry into force of CUSMA was set for July 1, 2020. The Canada-United States Free Trade Agreement (CUSFTA), which was suspended upon entry into force of NAFTA, remains suspended until such time as the suspension of CUSFTA is terminated.

Now, the arithmetic appears quite simple. Whether “2.5 years” means 2 years and 6 months or 2 years and 183 days, that would take us to January 1, 2023 and NOT December 30, 2022.

See also the Interpretation Act:

           Calculation of a period of months after or before a specified day

28 Where there is a reference to a period of time consisting of a number of months after or before a specified day, the period is calculated by

(a) counting forward or backward from the specified day the number of months, without including the month in which that day falls;

(b) excluding the specified day; and

(c) including in the last month counted under paragraph (a) the day that has the same calendar number as the specified day or, if that month has no day with that number, the last day of that month.

            Construction of year

37 (1) The expression year means any period of twelve consecutive months, except that a reference

(a) to a calendar year means a period of twelve consecutive months commencing on January 1;

(b) to a financial year or fiscal year means, in relation to money provided by Parliament, or the Consolidated Revenue Fund, or the accounts, taxes or finances of Canada, the period beginning on April 1 in one calendar year and ending on March 31 in the next calendar year; and

(c) by number to a Dominical year means the period of twelve consecutive months commencing on January 1 of that Dominical year.

 I don’t profess any great expertise in the machinery of government when it comes to calculations of these kinds of deadlines or proclamations by the Governor in Council. So, if I’m wrong, I would welcome any reasoned correction and be a little more humble and a little less cynical.

But if I’m right about this being a premature proclamation, the Government owes Canadians an overdue explanation. However, given the handling of this term extension issue all along, it would not be prudent to hold one’s breath.

 HPK

 

Oops! He Did It Again: Budget 2022 Hides Copyright Time Bomb By Throwing Parliamentary Scrutiny Under the Omnibus Bus

 

(Merriam Webster)

There is a ticking time bomb buried deep in the 2022 Federal Budget. It is deviously hidden at page 274 in Annex 3 in a manner so as to avoid detection, debate and the democratic process itself. This is contrary to a basic campaign promise Justin Trudeau made in 2015. It saddens me to say that he and Finance Minister Chrystia Freeland, both in process and substance, appear to have caved in to greedy lobbyists to the detriment of democracy.

In 2015, Justin Trudeau made a campaign promise to do better than Stephen Harper, who it will be recalled gave away an extra gratuitous 20 years of copyright protection for nothing in return to the American recording industry in an omnibus bill just before he lost the 2015 election:

We will not resort to legislative tricks to avoid scrutiny.

Stephen Harper has used prorogation to avoid difficult political circumstances. We will not.

Stephen Harper has also used omnibus bills to prevent Parliament from properly reviewing and debating his proposals. We will change the House of Commons Standing Orders to bring an end to this undemocratic practice.

 Justin Trudeau broke that promise in 2018 – and, oops, he’s done it again even more blatantly and harmfully in Budget 2022 where he and Minister Freeland announced  in a manner that only those who knew what to look for would find:

Amendments to the Copyright Act

In Budget 2022, the government proposes to introduce amendments to the Copyright Act to extend the general term of copyright protection from 50 to 70 years after the life of the author as agreed under the Canada-United States-Mexico Agreement.

The government is committed to ensuring that the Copyright Act protects all creators and copyright holders. As such, the government will also work to ensure a sustainable educational publishing industry, including fair remuneration for creators and copyright holders, as well as a modern and innovative marketplace that can efficiently serve copyright users.

 That may sound abstruse, abstract, irrelevant or maybe even positive to most Canadians who naively or, for selfish financial reasons, think that, if copyright is good, more and stronger copyright must be even better. However, those who understand these issues know that it will “tax” and harm all those concerned about education, research, culture, innovation, learning, science, and creativity itself. After all, the entire history of the arts, science and culture is built upon achievements from the past. If that past is locked up too long, there will be less progress in the future.

This is a flagrant yet stealthy insult to democracy. By using omnibus budget implementation legislation, there will be nothing but token and extremely little if any debate or parliamentary scrutiny on these measures. Any hope of opposition is lost since Canada no longer has a viable opposition party that can do its job in a minority parliament. The NDP’s ill-conceived three year peace, silence and non-aggression pact with Justin Trudeau, which has likely guaranteed its own irrelevance and perhaps even oblivion in the future, will ensure that there is no effective opposition to this budget or the massive omnibus implementation bill that can soon be expected.  

All Canadians, ranging from pre-schoolers to the most senior scholars and creators, whether interested in innovative science and research or just plain fun reading, music listening, film or art enjoyment will be deprived of access to the “public domain” for an additional 20 years (meaning life + 70) going forward. Assuming that the law takes effect on January 1, 2023, that would include the likes of foreign luminaries such as Noel Coward, Pablo Picasso, J.R. Tolkien, Leonard Bernstein and  John Lennon  and Canadian icons such s  Northrop Frye, Yousuf Karsh, Marshall McLuhan, Lester B. Pearson, and Pierre Trudeau himself. It will be good news for certain publishers, other copyright content owners such as foreign movie and music industry multinationals, collectives and their executives, lobbyists and – of course and as always – lawyers for all of the above. It will cost the Canadian public at least about $474 million a year with a present value of about $4.176 billion, based upon my admittedly facile extrapolation to the Canadian context from a careful study conducted for the Government of New Zealand in 2009 in contemplation of the ill-fated TPP.

This amendment will be a one way ratchet that cannot conceivably ever be undone. As framed in the budget, it ignores the recommendations from many experts including Prof. David Lametti, as he then was before he was elected and became Minister of Justice, and Maria Pallante, the former Register of Copyrights in the USA,  that there be mandatory registration to take advantage of the 20 year extension. This would clear away dead wood and still allow commercial interests to exploit works that still have a market value. Here’s my submission from the so-called consultation process, which has apparently been ignored along with those of many other well-known copyright scholars. If the Government can’t figure out how to implement a registration system at this time, it can at least enable the enactment of registration regulations by the Governor in Council. Such a deferral of details does not require rocket science.

The hidden budget time bomb signals that we can expect this and potentially other even worse copyright measures to be included very soon in an omnibus bill that will receive virtually no parliamentary scrutiny and be immune from the usual bulwarks of democracy that Justin Trudeau and Chrystia Freeland have deemed dispensable. This is nothing if not ironic and frankly shocking – though hardly surprising given Trudeau’s past record.

What is even worse in the copyright proposals in Budget 2022 is the second paragraph that suggests, in coded but fairly explicit terms to those in the know, the promise to remove “education” as a recognized fair dealing purpose in s. 29 of the Copyright Act. It sadly seems that the responsible Minsters Champagne & Rodriguez are unaware that “teaching (including multiple copies for classroom use), scholarship, or research” has been hardwired into American copyright legislation as an essential example of  “fair use” since 1976. They are probably unaware that three decisions of the Supreme Court of Canada since 2004 on fair dealing were rendered before “education” was explicitly included in s. 29 of the Copyright Act in 2012. I was involved in one of these. They are probably unaware that the repertoire of Access Copyright, who has been doing most of the whining, has very little place in Canada’s colleges and universities. Engineering, accounting, psychology and almost all other post post-secondary students are not required to read Margaret Atwood.

But that’s not all, as they say on TV commercials. Included and still even worse and nearly explicit, given the context,  is the promise to make Copyright Board tariffs mandatory for users.  All of this would undo two Supreme Court of Canada decisions from 2015 and 2021 in which I also had a direct and influential role as counsel working with Prof. David Lametti, as he then was, along with Prof. Ariel Katz in the first case (CBC v. SODRAC).  CARL was my client in the later case of York v. Access Copyright where our intervener arguments prevailed.

The result of such an amendment would be an affront to the Supreme Court and a century or more of legislative history. This would roughly be the equivalent of legislating that nobody has the right to get from Ottawa to Toronto except by flying on Air Canada – unless they pay Air Canada’s fare for an all-year Canada-wide pass  or even for a multi-year period even if they never actually travel from Ottawa to Toronto that year. In turn, that fare would be set by a small, very expensive, very inefficient, and extremely dysfunctional Federal tribunal which takes as much as a decade to render usually retroactive and frequently decisions that are routinely reversed in the courts. In this case, that would be the Copyright Board, which was deemed “dated, dysfunctional and in dire need of reform” by a Senate committee in 2016 and which has seen no significant improvements since then despite a very large increase in its budget. Indeed, the Board has not even held a hearing in almost five years since September, 2017 with nothing scheduled until October 18, 2022 and its website has become even worse, despite enormous expenditures.

This will not be the first time that Trudeau has played this Harper trick.  
Bill C-86, which was given first reading on October 29, 2018, was 884 pages long. It was an omnibus budget implementation bill that touched innumerable issues unrelated to an concept of “budget” and amended dozens of acts unconnected with the budget. It caused much mischief in trade-marks law and launched the College of Patent and Trademark Agents, an expensive solution in search of a problem imposed with great expense upon already highly regulated law firms for no good reason. In turn, even C-86  was not the first Liberal omnibus bill that that broke that important campaign promise.  It followed Bill C-74 earlier in 2018, being the first budget implementation  bill in that sad year.

Sadly, at this time, the NDP has muzzled itself. And the Conservatives can hardly be expected to criticize the same undemocratic methodology that they themselves perfected under Harper.

It is time for Canadians and the organizations that profess to be concerned with education, research, culture and innovation in Canada to demand democracy and transparency when it comes to potential enactment of major deleterious legislation that is so detrimental to the public interest.

Prof. Adam Dodek, the former Dean of Common law at the University of Ottawa, has written an important article about the legal, including constitutional, issues that could potentially arise from the use and abuse of omnibus legislation.

It is absolutely essential in an age where democracy is under threat everywhere, potentially even in Canada, to ensure that legislation is dealt with democratically and not be thrown under the omnibus bus.

HPK

PS: Here's a very important open letter to Ministers dated April 13, 2022 from 25 top IP scholars about these issues and the process.