Intellectual Property

A Federal Court decision that backs a copyright collective in its battle to collect royalties from an Ontario university cannot be ignored by Canadian post-secondary institutions, says Toronto intellectual property lawyer Bill Northcote.

“It demonstrates that copyright holders of, presumably, mostly academic works are getting more aggressive in terms of enforcing their rights and getting proper compensation,” says Northcote, a partner with Shibley Righton LLP.

Justice Michael Phelan ruled in favour of a collective that administers reproduction rights for Canadian literary works and ordered the university to pay damages for the millions of pages of materials that the university's staff copied for coursework.

The university argued that its copying of book excerpts, articles, videos and other materials fell within the “fair dealing” exceptions allowed for educational users under s. 29 of the Copyright Act, and that it had developed its own “Fair Dealing Guidelines.”

But Phelan found that the university’s use of the material did not fall under the law’s fair dealing exceptions. Its own “Fair Dealing Guidelines” are “not fair in either their terms or their application,” he wrote. The university made “no real effort” to review or enforce its guidelines, he added.

Northcote says the judgment is noteworthy for its detailed analysis of the law’s fair dealing exceptions.

The court went to considerable lengths to distinguish between single-use copying and the more widespread dissemination of materials typical of university coursework, Northcote tells AdvocateDaily.com.

The judge wrote that the university’s wide-ranging, large-volume copying tended toward unfairness. For instance, the university’s “fair dealing” guidelines allowed the copying of 100 per cent of a single work, he said.

Professors and staff typically bound together photocopies of the material in student course packs, while digital reproductions were made available on in-house, password-protected software platforms.

“There’s a substantial amount of money involved here, particularly for what is ultimately distributed to writers,” Northcote says.

An expert called by the copyright collective testified that if all Canadian post-secondary institutions outside Quebec adopted the defendant’s guidelines, it would result in the annual loss of licensing royalties of between $10 million and $14.7 million, with the university’s share being $800,000 to $1.3 million.

The judge accepted evidence about the numerous challenges facing the Canadian post-secondary educational publishing industry as it struggles to adapt to the digital age.

Northcote says the judge went through the case law exhaustively and his decision is carefully written — likely in anticipation of an appeal.

The university has announced it will appeal, calling Phelan’s ruling “the first phase” of the litigation, according to a release from the university’s media relations director.

The court’s decision will likely have an impact on the next round of tariff hearings at the Copyright Board when discussions turn to questions of what is fair dealing and what usage should attract a licensing fee, Northcote says.

This case illustrates how rapid technological change is challenging copyright protections, he adds. “It’s a demonstration of the fact that intellectual property law, particularly copyright law, tends to lag behind technological development in the real world. It’s an ongoing problem.”

The decision puts at risk any university not adhering to the tariff set by the Copyright Board, he says. “It may well have been a bit of a test case for [the copyright collective].”

Northcote predicts more court battles of this nature, particularly as digital and online uses develop.

“It’s a very interesting, developing area of the law. Thirty years ago, intellectual property was not a big area of the law. It was kind of its own special area that the rest of the legal community didn’t pay much attention to,” he says.

“Now that’s completely reversed. Everything a lawyer does in the business field now has some sort of intellectual property aspect to it.”

SAN FRANCISCO — A federal appeals court Monday cleared the way for a trial in a copyright lawsuit over a YouTube video showing a baby dancing to the Prince song "Let's Go Crazy.''

The lawsuit was filed by the baby's mother, Stephanie Lenz, after Universal Music sent a notice to YouTube demanding the video be taken down for violating the song's copyright.

The 9th U.S. Circuit Court of Appeals said copyright holders can't demand videos and other content that uses their material be taken down without determining whether they constitute "fair use.''

Fair use allows segments of copyrighted works to be used for purposes of criticism, comment, research or in other limited circumstances without a license from the copyright holder.

Lenz said the video is fair use, and Universal had failed to consider that before ordering the video taken down.

Universal said it considered fair use and still determined the use of Prince's song in the video was unauthorized.

The 9th Circuit said a jury would have to decide whether Universal had done enough to form a good faith belief that the video violated fair use. The court agreed with a lower court that rejected Universal's and Lenz's motions to grant pre-trial judgments in their favour.

The Electronic Frontier Foundation (EFF) represented Lenz and said Monday's ruling had ramifications beyond her case.

"Today's ruling sends a strong message that copyright law does not authorize thoughtless censorship of lawful speech,'' EFF Legal Director Corynne McSherry said in a statement.

Toronto intellectual property and entertainment lawyer Bill Northcote tells AdvocateDaily.com this case is not surprising given U.S. law, and adds that the Canadian Copyright Act includes parody and satire within the definition of fair use.

Northcote, partner with Shibley Righton LLP, tells the online legal publication this case would play out differently in Canada.

“In Canada, we have an exception to copyright infringement where an individual uses an existing work (in this case the song ‘Let’s go Crazy’), which has been made available to the public if: (a) the use of the new work is solely for non-commercial purposes; (b) the source of the original work is mentioned if reasonable in the circumstances; (c) the individual had reasonable grounds to believe that the existing work was not infringing copyright; and (d) the use of the new work does not have a substantial adverse effect, financial or otherwise on the exploitation of the existing work (i.e. the song).”

He notes the EFF’s interpretation is a reflection of the U.S. approach to free speech that is typically not a significant legal issue in Canada.

Universal Music did not immediately have any comment.

The recent copyright dispute over the “monkey selfie” illustrates that as intellectual property rights unfold, novel issues will continue to arise faster than legislators’ ability to develop policy and implement laws, says Toronto business lawyer Bill Northcote.

According to an article in The Telegraph, British photographer David Slater was taking pictures of a group of Indonesian macaque monkeys in 2011, when one of the simians grabbed his camera and snapped off hundreds of pictures, most of which were out of focus. However, the animal managed to capture incredible images in the process, one of which is the infamous monkey's self-portrait.

The copyright dispute arose when Wikimedia included the picture in its royalty-free databaseng it is in the public domain because there is no owner of the image. Slater, a professional photographer, argues providing the image for free is causing him financial difficulties and a court should decide who owns the image.

Northcote, chair of Shibley Righton LLP’s business law group, says that Wikimedia’s response that the image is public domain challenges the perception that all artistic or creative works are the copyright of some person.

“Of course some copyrighted works become in the ‘public domain’ after the expiration of the time period for copyright protection,” Northcote says. “In the case of the monkey selfie, however, Wiki argues that no person can or ever will own the copyright in the original image.”

Although this is not a Canadian case, Northcote points to 2007 Federal Court decision, which held that the author of a copyrightable work generally “must be a human being or a group of human beings.”

Another requirement to obtain copyright is that the author must be a citizen or resident in a treaty country. “Most countries are 'treaty countries' for the purposes of the Copyright Act (Canada),” says Northcote. “In this case, the photographer claiming ownership is, according to media reports, a British subject. The United Kingdom is a treaty country. Of course, the monkey cannot be a citizen and is not a person.”

Northcote says that there could be a potential remedy for the British photographer because the 2011 image was taken before recent changes to the Copyright Act.

“At that time, the Copyright Act provided that the owner of film or a photographic plate – think Matthew Brady and daguerreotypes images – was deemed to be the first owner of the copyright in that image. Of course, the law is not settled as to whether digital images are entitled to the same protection as film for the purposes of this now repealed section,” he says.

“The photographer may have other copyright protections available to the extent that he altered the monkey selfie provided that he met two of the other basic requirements of copyright – originality and expression,” says the Toronto lawyer. “It's unclear from the media reports as to whether this occurred and the manner in which the images became available to Wikimedia and the public generally.”

While the monkey selfie dispute is a novel one, Northcote says it highlights the lag between emerging works and changing legislation.

Northcote says that as creative persons continue to create new works in ways that are unforeseen, legislators will continue to struggle to develop policy, "while balancing the economic benefits to be provided to creators against the commercial interests of the public in using and exploiting works and then implement legislation,” he says.