Copyright And How To Protect Your Art (Linkedin)
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Copyright And How To Protect Your Art (Linkedin)

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A presentation on copyright protection of artistic works. Covers Canadian copyright law, fair dealing, infringement and industrial design.

A presentation on copyright protection of artistic works. Covers Canadian copyright law, fair dealing, infringement and industrial design.

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  • I want to thank the Markham Small Business Centre and Markham Arts Council for inviting me to speak tonight. First an introduction about myself – commercial lawyer and civil and commercial litigator. I have a Masters of Law in Intellectual Property. I assist clients with trade-mark and copyright matters, dispute resolution and litigation. I will assume a new role in November this year as an adjudicator at a federal tribunal.
  • My talk tonight is about copyright and how to protect artistic works. Artistic works and other copyrighted work such as literary works are products of the mind. These are what’s known as Intellectual Property or intangible assets. I will do an overview of the traditional forms of intellectual property and intangible assets recognized by the law. Next, I will survey some fundamental copyright principles – purpose of copyright, originality, copyrightable works, author, term of protection I will also cover protection of copyright through registration; commercializing or monetizing copyright through assignment and licensing; enforcement of copyright when someone uses copyrighted work without authorization (called infringement); and defences to copyright (what is commonly known as fair use or public domain arguments); Finally, I will bring up some examples of current copyright debates that have arisen due to digital technologies. T here are now competing commercial and public interest in what should be subject to copyright, and what is part of the public domain for others to use to create new works Finally, some legal resources.
  • Copyright can be considered an intangible asset? What is an intangible asset? Intangible – not bricks and mortar, not land, not personal property such as equipment, inventory Intangible means easily reproducible with or without technology in mass quantities (think counterfeit goods, and similar trade-marks) Just as rights are acquired when a building, land or machinery is purchased, intangible assets are recognized in law and courts to be property – in Canada and other countries that are members of WTO and signed onto WIPO treaties, the government has set up a federal registry system to register intangible assets such as patents, copyright, trade-marks and industrial designs. Tonight I will cover copyright and industrial designs as these assets are most applicable to artistic creations. Owner can use and exploit the assets as in using a trade-mark on a product, licensing a patent to a mfg, publishing a book or script and adapting it into a movie Owner can protect asset by excluding others from using or exploiting the property for their own benefit and gain Owner can exploit the asset for gain by assignment and license Intellectual property has been described as a negative right to exclude others from claiming use of an intangible asset.
  • In order for the Court to grant a remedy, the asset has to be capable of being valued: accounting of profits – what profits were made by the wrongful party that infringed the right assessment of damages – what profits were lost by the owner (past revenues, and benchmarks in the industry)
  • Traditional forms of intellectual property governed by statue and common law Patents Act – protects inventions that are non-obvious, new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any of those (20 years) Patents are granted for inventions or improvements to inventions that satisfy three criteria: new, useful and unobvious. Patents The term of protection is 20 years after filing. This period of protection gives the inventor a head start to develop and market his invention to the exclusion of competition. The inventor is able to recoup the investment made in research and development of the invention during this monopoly period. The exclusive monopoly is also the incentive for the inventor to invest in innovation. Copyright Act – protects works of expression – does not protect an idea but the expression of an idea (life of author + 50 years) Copyright protects only original work that originate from the author with a minimal intellectual effort. Copyright law protects the expression of an idea, not the idea itself. Copyright protects against copying. Another person who creates a substantially similar work independent of any copying is not infringing on copyright. Generally applicable to artistic work, industrial creations such as database compilations and software programs are protected by copyright. The term of protection is life of the author plus 50 years. Trade-marks Act – registered and non-registered trade-marks – protects the mark identifying the source of a good or service (registration valid for 15 years and renewable 15 years thereafter) Trademarks are accorded protection to identify the source of products and services. For example, when we The law of trade-marks protects investment in corporate and brand identity. Trade-marks can be registered or non-registered. There are different categories of trade-marks: trade-marks, certification marks (Wool symbol), distinguishing guise (coke bottle) Industrial Design Act – protects the features of shape, configuration, pattern, or ornament and any combination of these features that in a finished article whose appeal is judged solely by the eye; applied to finished goods; (10 years); does not protect principles of construction, ideas, or colour Industrial designs can qualify for protection under the Industrial Design Act and Copyright Act as long as the articles do not have a utilitarian function and are not mass produced (no more than 50 copies made) The branches of Intellectual property law created by statute are generally known as patents, trade-marks, copyrights. Other lesser known Intellectual Property assets are: integrated circuit topographies and plant breeders' rights created by statute.
  • 2. . . .     "every original literary, dramatic, musical and artistic work" includes every original production in the literary, scientific or artistic domain, whatever may be the mode or form of its expression, such as compilations , books, pamphlets and other writings, lectures, dramatic or dramatic-musical works, musical works, translations, illustrations, sketches and plastic works relative to geography, topography, architecture or science;
  • Bear these 2 principles in mind when trying to understand copyright principles and also the current copyright debates See Theberge v. Galerie d’art du Petit Champlain Inc . 2002 SCC 34
  •     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, and       ( i ) in the case of a musical work , to rent out a sound recording in which the work is embodied ,       and to authorize any such acts. 5. (1) Subject to this Act, copyright shall subsist in Canada, for the term hereinafter mentioned, in every original literary, dramatic, musical and artistic work if any one of the following conditions is met: ( a ) in the case of any work, whether published or unpublished, including a cinematographic work, the author was, at the date of the making of the work, a citizen or subject of, or a person ordinarily resident in, a treaty country; ( b ) in the case of a cinematographic work, whether published or unpublished, the maker, at the date of the making of the cinematographic work, (i) if a corporation, had its headquarters in a treaty country, or (ii) if a natural person, was a citizen or subject of, or a person ordinarily resident in, a treaty country; or ( c ) in the case of a published work, including a cinematographic work, (i) in relation to subparagraph 2.2(1)( a )(i), the first publication in such a quantity as to satisfy the reasonable demands of the public, having regard to the nature of the work, occurred in a treaty country, or (ii) in relation to subparagraph 2.2(1)( a )(ii) or (iii), the first publication occurred in a treaty country.
  • Mechanical exercise – would be changing a font in a document Example – if I took Yellow Pages directory and reproduced it – would I have infringed copyright What if I took a directory and scanned the pages digitally to make it searchable What if I took a directory and re-classified the topics
  • Example – tying ribbons around the geese in the Eaton Centre
  • Bear these 2 principles in mind when trying to understand copyright principles and also the current copyright debates See Theberge v. Galerie d’art du Petit Champlain Inc . 2002 SCC 34
  • Registration process – fill out an application Pay the fee to the copyright office No need to send in a copy of the work CIPO does not verify the information in the application Can file online Give checklist of the application
  • See Theberge Section 13, 14 CA
  • s.13(4)
  • s.13(4) and (7) C.A. Rudder v. Microsoft Corp. [1999] O.J. No. 3778, additional reasons [1999] O.J. No. 4275
  • s.13(4) and (7) C.A. Rudder v. Microsoft Corp. [1999] O.J. No. 3778, additional reasons [1999] O.J. No. 4275
  • Rudder v. Microsoft Corp. [1999] O.J. No. 3778, additional reasons [1999] O.J. No. 4275
  • Example of a License term Non-exclusive (can grant the license to another party) Non transferable Revocable Royalty free or license fee Geographical region is United States Use – software development focusing on micro payment services in retail
  • Prohibited Uses: No competition No defamation or libel Can’t stock pile the images Can’t transfer to another person
  • Must give credit for the image Can’t use the image as a trade-mark Can’t pretend the image was created by yourself
  • In 2004, Google set out to digitize books for its users Academic libraries such as Harvard and Oxford partnered with Google to digitize collection of works – in many cases without permission from the owner The Authors Guild, Inc. and Association of American Publishers sued Google for copyright infringement The parties settled in 2008. For every book ever published before January 5, 2009, Google would have a non-exclusive right to digitize the book Google would pay US$125M - $45M payment to rights holders ($60 per book) Google can index the work, display up to 20%, display short excerpts, display bibliographic content, allow printing, copying, pasting and annotations to the entire work at a fee, subject to limitations Authors can opt out of settlement  
  • 35                              The appellants purchased on the open market a quantity of posters of the respondent’s artistic works.  They subjected these posters to a technique which involved spreading a special resin or laminating liquid across the face of a poster.  The resin is designed to bond with the surface inks.  After the applied coating is dried (or cured), the coated poster is submerged in a bath of solvent which loosens the paper substrate but leaves intact the fixed ink/resin layer, thus allowing the latter to be peeled off the former.  The rear of the ink/resin layer is then coated with a suitable adhesive resin and transferred to a canvas substrate, which is then smoothed and finished.  HELD: The appellants purchased lawfully reproduced posters of the respondent’s paintings and used a chemical process that allowed them to lift the ink layer from the paper (leaving it blank) and to display it on canvas.  They were within their rights to do so as owners of the physical posters.  There was no production (or reproduction) of a new artistic work “or any substantial part thereof in any material form” within the meaning of s. 3(1) of the Copyright Act .    The image “fixed” in ink on the posters was not reproduced.  It was transferred from one display to another.  An expansive reading of the economic rights whereby substitution of one backing for another constitutes a new “reproduction” that infringes the copyright holder’s rights even if the result is not prejudicial to his reputation tilts the balance too far in favour of the copyright holder and insufficiently recognizes the proprietary rights of the appellants in the physical posters which they purchased.   The historical scope of the notion of “reproduction” under the Copyright Act should be kept in mind.  “Reproduction” has usually been defined as the act of producing additional or new copies of the work in any material form.  While the Act recognizes that technologies have evolved by which expression could be reproduced in new ways, the important evolution of legal concepts in the field of copyright is not engaged by the facts here.  This is a case of literal physical, mechanical transfer in which no multiplication takes place.   The separate structures in the Act to cover economic rights and moral rights show that a clear distinction and separation was intended.  In terms of remedies, Parliament intended modification without reproduction to be dealt with under the provisions dealing with moral rights rather than economic rights.  A contrary view would allow an artist who objected to a “modification” of an authorized reproduction to sidestep the important requirement of showing prejudice to honour or reputation in order to establish an infringement of moral rights.    Example: if I purchased a print and I framed it – would that be infringement? Annie Lee v. ART Company US Court of Appeal 7 th Circuit (1997) In the U.S. there was a case involving art on stationary and cards. The image was lifted off the cards using epoxy and mounted onto coasters. Artist sued for infringement. Court found no infringement because there was no reproduction. The owner of the cards can do what he wants with the cards. The court posed the question, what if the owner wanted to use the card as a coaster? There would be no infringement.
  • Photograph by AP photographer Mannie Garcia Sheperd Fairey – very successful pop culture artist -turns the photo into initially 350 copies of an iconic poster for the Presidential campaign All proceeds of sale goes to the campaign The poster sells out in minutes and auctioned on E-Bay at a mark-up – 6 figures Smithsonian Portrait Gallery has now acquired the hand finished collage AP photographer asserts copyright in the photo Artist seeks a declaration in court that (1) copyright was not breached; (2) fair use doctrine (3) enjoining AP from asserting copyright from Fairey and third parties such as the Smithsonian, Boston Institute for Contemporary Art from displaying and distributing
  • HP fan (former librarian of in elementary school) compiles an online encyclopedic lexicon of everything related to HP The lexicon was started after the 1 st book in the series was published and compiled with successive books The lexicon was so complete that the director of the HP movie used it as a resource JK Rowling had plans to write an encyclopedia; although the written works related to HP books did not gross as much, they earn about $20M A publisher publishes the Lexicon that was authored by a fan Warner Bros – that purchased the movie rights sues the publisher and author of the lexicon The issue is whether there was copyright infringement or was the lexicon fair use, and whether the lexicon was a derivative work that was unauthorized by the JK Rowlings The court found copyright infringement because much of the text was copied verbatim; the lexicon is not a derivative work
  • Of relevance to the present discussion is the fact that the United States legislation, apart from entitling the copyright holder to control the “reproduction” of his work, allows the copyright holder the right to authorize (or prohibit) the creation of “derivative works”.  The concept is formally defined in s. 101 of the United States Code , Title 17, as follows:   A “derivative work” is a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted .  A work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship, is a “derivative work”.  [Emphasis added.] Therberge  
  • So what is CR infringement in Canada
  • Exceptions to copyright infringement Excerpt of some of the fair dealing defences
  • Institutional licenses with government, universities, colleges
  • in order for the Court to grant a remedy, the asset has to be capable of being valued accounting of profits or assessment of damages
  • Use the Toblerone example
  • Here’s an example of where trade-mark and copyright registrations are both used to protect the brand of a product
  • Title Registration number Grant of interest – license agreement, revoked, assigned Owner and address Agent for the owner to contact for permission and licensing Author who assigned the work to the current owner
  • Library and Archives Canada – can deposit your book with the national library
  • Questions

Copyright And How To Protect Your Art (Linkedin) Copyright And How To Protect Your Art (Linkedin) Presentation Transcript

  • Copyright and How To Protect Artistic Works ©
    • Teresa Cheung
    • J.D., LL.M. (Intellectual Property)
    • [email_address]
  • Overview
    • Forms of intangible business assets
    • Basic copyright principles
    • How to protect your work - registration
    • Commercializing copyright – licensing and assignment
    • Current copyright debates arising from digital technology
    • Copyright infringement in the Canadian context
    • Copyright defences – “fair use” and “fair dealing”
    • Industrial design
    • Legal resources
      • This presentation and slides are not to be used as legal advice.
  • Intangible Business Assets
    • Characteristics:
    • intangible (information that can not be possessed)
    • easily reproducible
    • recognized by law to be property
    • owner can exercise rights:
      • right to use
      • right to exclude others from use
      • right to commercialize (to sell, license)
  • Intangible Business Assets
    • Characteristics:
    • can be valued in most cases:
      • accounting of profits
      • assessment of damages
  • Intangible Business Assets
    • Intellectual Property:
    • patents
    • copyrights
    • trade-marks
    • industrial design
    • Intangible Business Assets:
    • confidential information
    • trade secrets
  • Basic Copyright Principles
    • Applicable to “artistic work”:
    • “ includes paintings, drawings, maps, charts, plans, photographs, engravings, sculptures, works of artistic craftsmanship, architectural works and compilations of artistic works” [s.2 C.A. ]
  • Basic Copyright Principles
      • Dual Purpose of Copyright:
      • to encourage the production and dissemination of artistic and intellectual works as a matter of public interest;
      • to reward creators of work as an incentive for the creation of artistic and intellectual works [ C.A. ]
  • Basic Copyright Principles
    • Copyright protects the form of expression of an idea and not the idea itself
      • Copyright applies to all original work upon creation – and therefore registration is not necessary for copyright to subsist in a work
  • Basic Copyright Principles
    • Work must be “original” – that being an expression of “skill and judgment” and must not be copied.
    • Two concepts of originality – “creativity” versus “sweat of brow” or industriousness (i.e. investment of labour)
    • Canada adopts a middle ground – (eg. copyright exists where there are discernment and ability used in the arrangement of a database and compilation of data);
    • There must be some intellectual effort beyond mechanical exercise
  • Basic Copyright Principles
      • Who is an “author”?
      • The author is the maker of a creative work and is also the first copyright owner [s.13(1) C.A. ]
      • Ownership may be transferred by the author through written assignment
  • Basic Copyright Principles
    • Exceptions to Basic Ownership Principle:
    • Where the work is produced during employment – the copyright is owned by the employer [s.13(3) C.A. ]
    • For photographs: owner of the initial negative or plate at the time it was made; or, the owner of the initial photograph at the time it was made, where there was no negative or plate; where the owner is a corporation, term of ownership is remainder of the year plus 50 years [s.10(2) C.A. ]
    • For an engraving, photograph or portrait, the plate or other original was ordered by some other person and was made for valuable consideration which was paid and there is no agreement to the contrary, then the person who ordered the plate or original is the first owner of copyright [s.13(2) C.A. ]
  • Basic Copyright Principles
    • Moral Rights:
    • right to integrity of the work and to be associated with the work as its author by name, under a pseudonym and the right to remain anonymous [s.14.1 C.A. ]
    • cannot be assigned; can be waived
    • moral rights have the same term as the copyright in the work [s.14.2 C.A. ]
  • Basic Copyright Principles
    • Term of protection:
    • Lifetime of the author, remainder of the calendar year in which the author dies plus 50 years – after which the work falls into public domain
    • Joint authorship – 50 years after the end of the calendar year in which the last author dies [s.9 C.A. ]
  • Basic Copyright Principles
    • Registration :
    • Registration is presumptive proof that copyright subsists and that the authorship and ownership information in the registration is correct [s.53 C.A. ]
    • This means in an infringement dispute, the onus is on the defendant to prove that the particulars of the registration are false [s.10(2) C.A. ]
    • Give notice with the © symbol, year of first publication and the owner’s name (although it is not necessary); this serves as notice to the public that the work is protected by copyright and gives the name of the owner for users to contact for permission to use the work
  • Commercializing Copyright
    • Assignment (with or without conditions)
    • License (exclusive or non-exclusive)
    • Treatment of a work may be authorized by the owner (i.e. to make derivative works)
    • Transferring rights in the physical medium on which the work is carried does not necessary transfer the copyright in the work
  • Assignment of Copyright
    • Transfers the ownership in the work
    • Can be a whole or partial transfer
    • Can be subject to limitations relating to territory, medium or sector of the market, or any other limitations relating to the scope of the assignment
    • For whole or part of the term of the copyright
    • Signed and in writing by the owner or the authorized agent
    • May be registered with the Canadian Intellectual Property Office (CIPO) Registrar of Copyrights - provide document or certified copy and the fee
  • License of Copyright
    • Grants certain rights in the work and the owner retains ownership in the work; can be whole or partial
    • Can be subject to limitations relating to territory, medium or sector of the market, or any other limitations relating to the scope of the license
    • For whole or part of the term of the copyright
  • License of Copyright
    • Exclusive Licenses
    • Exclusive licenses must be signed and in writing by the owner or the authorized agent
    • Exclusive licensees have limited property rights in the copyright – it may sue third parties for infringement only if the owner is a party. Exclusive licensee have a non-proprietary authorization to do something that would otherwise amount to infringement. Under U.S. law, licensee cannot further assign or sub-license their rights absent an agreement [ Euro-Excellence Inc. v. Kraft Canada Inc. [2007] S.C.J. No. 37]
    • Copyright owner cannot be liable to exclusive licensee for infringement, but could be liable for breach of contract
  • License of Copyright
    • Non-Exclusive License
    • Non-exclusive licensees cannot sue for infringement
    • Subject to multiple licensees and the licensor may benefit from the rights;
    • Need not be in writing - can be oral and need not be signed
    • Examples are shrink-wrap and click wrap licenses
  • Sample Non-exclusive License Clause By this Agreement, Shutterstock grants you a personal, non-exclusive, non-transferable , right to use and reproduce Images in the following ways, subject to the limitations set forth herein and in Part II hereof: a) On web sites, provided that no Image is displayed at a resolution greater than 800 x 600 pixels; b) As toolbar skins, screensavers and mobile phone "wallpaper" for your own personal, non-commercial use, not for resale, download or distribution; c) As prints, posters (i.e. a hardcopy) and other reproductions for decoration in a home, office, restaurant, public area, or store owned or rented by you or by a client for whom you render design services; d) As a hand painted reproduction (not as a printed reproduction) on canvas or other material to be used as decoration or resold; Etc…
  • YOU MAY NOT: 7. Use or display any Image on websites or in connection with any service designed to sell or induce sales of " print on demand " products using or incorporating Image(s), including, by way of example only, postcards, mugs, t-shirts, posters, giclee prints, wallpaper, artwork and other items, this includes custom designed websites as well as sites such as Cafe Press (i.e. www.cafepress.com). … 9. Use an Image in a way that places any person depicted in the Image in a bad light or in a way that they may find offensive - this includes, but is not limited to, the use of Images: a) in pornography, "adult videos" or the like; b) in ads for tobacco products; c) in ads or promotional materials for adult entertainment clubs or similar venues, or for escort, dating or similar services; d) in connection with political endorsements; e) in advertisements or promotional materials for pharmaceutical or healthcare, herbal or medical products, including, but not limited to dietary supplements, digestive aids, herbal supplements, personal hygiene or birth control products; and f) uses that are defamatory, or contain otherwise unlawful, offensive or immoral content. You may not use an Image containing the likeness of a person if such use implies that the model engages in any immoral or illegal activity or suffers from a physical or mental infirmity, ailment or condition. 10. Resell, redistribute or transfer any Image except as specifically provided herein. Displaying any Image in any digital format or for any digital use at a resolution greater than 800 x 600 pixels, except in editorial or preliminary design work, will be deemed to be an attempt to redistribute the Image and could result in the termination of your rights under this agreement. 11. Share an Image by providing access to such Image on shared disk drives, computer networks , intranets of any nature or otherwise. 12. Use Shutterstock Images in a manner that competes with Shutterstock's business . This includes, by way of illustration only and not by way of limitation, displaying Images in any format (including thumbnails) for download on a website, and/or offering Shutterstock Images for sale or resale. Sample Non-exclusive License Clause
  • YOU MAY NOT: 13. Withhold a credit attribution or fail to provide a copyright notice required by paragraph 30 of these TOS, except with an advance written waiver of that requirement from Shutterstock in each instance. Each waiver issued by Shutterstock will specify the Image number or numbers and the usage and is applicable only to the specified Image(s) and usage(s). Do not assume that you have or will receive a waiver for a proposed future use because you received a waiver in the past for a similar use. 15. Use any Image (in whole or in part) as a trademark , service mark, logo, or other indication of origin, or as part thereof , or to otherwise endorse or imply the endorsement of any goods and/or services. 16. Use or display an Image in such a manner that gives the impression that the Image was created by you or a person other than the copyright holder of that Image. 18. Stockpile, download, or otherwise store Images not used within twelve (12) months of the expiration of the subscription under which you downloaded the Image. If you fail to use an Image within such twelve (12) month period, you will lose all rights to use that Image. Sample Non-exclusive License Clause
  • Current Copyright Debates
    • Does ownership rights in freelance articles assigned to newspaper extend to reproduction in digital medium
    • Freelance journalist discovered her articles being sold in digital format in an online searchable database
    • Contract did not address digital reproduction
    • Does the newspaper have rights as the owner to reproduce articles digitally without compensation to author
    • SCC held that newspaper was not permitted to reproduce articles digitally without the author’s consent
    • The newspaper’s copyright is in the newspaper as a compilation of articles; the newspaper’s rights does not extend to a different compilation of work
    Robertson v. Thomson Corp. 2006 SCC 43
  • Current Copyright Debates
    • Google set out to digitize books
    • The Authors Guild, Inc. and Association of American Publishers sued Google for copyright infringement
    • The parties settled in 2008
    • For every book ever published before January 5, 2009, Google would have a non-exclusive right to digitize the book
    • Google pays US$125M - $45M payment to rights holders ($60 per book)
    • Google can index the work, display up to 20%, display short excerpts, display bibliographic content, allow printing, copying, pasting and annotations to the entire work at a fee, subject to limitations
    Google Book Settlement
  • Current Copyright Debates
    • The gallery purchased on open market posters containing artwork and subjected the posters to a chemical (epoxy) which bonds to the surface of the poster and lifts the face of the poster intact to be transferred to another medium, a canvass
    • The artist sued for infringement of copyright and of moral rights
    • The SCC held that the transfer of the image was not a “reproduction” nor an infringement
    • The SCC sought to protect the proprietary rights of the purchaser
    • There was no infringement of moral rights because there was no dishonour or harm to the artist’s reputation
    Theberge v. Galerie d’Art du Petit Champlain Inc. 2002 SCC 34
  • Current Copyright Debates Fairey et al. v. The Associated Press (2009) U.S. District Court
  • Current Copyright Debates
    • http://www.hp-lexicon.org/index-2.html
    Warner Bros Entertainment and J.K. Rowling v. RDR Books (2008) U.S. District Court
  • Current Copyright Debates
    • U.S. Fair Use Doctrine:
    • The fair use of a copyrighted work . . . for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright.
    • In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include—
    • (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
    • (2) the nature of the copyrighted work;
    • (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole, and
    • (4) the effect of the use upon the potential market for or value of the copyrighted work.
    • [Section 107 of the US Copyright Act]
    Warner Bros Entertainment and J.K. Rowling v. RDR Books (2008) U.S. District Court
  • Current Copyright Debates
    • U.S. Derivative Work Doctrine:
    • Plaintiffs allege that the Lexicon not only violates their right of reproduction, but also their right to control the production of derivative works.
    • The U.S. Copyright Act defines a “derivative work” as “a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted.”
    • A work “consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represents an original work of authorship” is also a derivative work.
    • Parodies and book reviews are not derivative works and “ownership of copyright does not give a legal right to control public evaluation of the copyrighted work
    Warner Bros Entertainment and J.K. Rowling v. RDR Books (2008) U.S. District Court
  • Copyright Infringement
    •   27. (1) It is an infringement of copyright for any person to do, without the consent of the owner of the copyright, anything that by this Act only the owner of the copyright has the right to do .
    •       (2) It is an infringement of copyright for any person to
    •       ( a ) sell or rent out,
    •       ( b ) distribute to such an extent as to affect prejudicially the owner of the copyright,
    •       ( c ) by way of trade distribute, expose or offer for sale or rental, or exhibit in public,
    •       ( d ) possess for the purpose of doing anything referred to in paragraphs ( a ) to ( c ), or
    •       ( e ) import into Canada for the purpose of doing anything referred to in paragraphs ( a ) to ( c ),
    •       a copy of a work, sound recording or fixation of a performer's performance or of a communication signal that the person knows or should have known infringes copyright or would infringe copyright if it had been made in Canada by the person who made it.
    •       
  • Copyright Infringement Remedies
    • 34. (1) Where copyright has been infringed, the owner of the copyright is, subject to this Act, entitled to all remedies by way of injunction, damages, accounts, delivery up and otherwise that are or may be conferred by law for the infringement of a right.
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  • Canadian Fair Dealing Defence
    • A sample of the fair dealing defence:
      • 29. Fair dealing for the purpose of research or private study does not infringe copyright.
      • 29.1 Fair dealing for the purpose of criticism or review does not infringe copyright if the following are mentioned:
      •       ( a ) the source; and
      •       ( b ) if given in the source, the name of the
      •       (i) author, in the case of a work, (ii) performer, in the case of a performer's performance,
      •       (iii) maker, in the case of a sound recording, or
      •       (iv) broadcaster, in the case of a communication signal.
      •    30.2 (1) It is not an infringement of copyright for a library, archive or museum or a person acting under its authority to do anything on behalf of any person that the person may do personally under section 29 or 29.1.
      •     
  • Canadian Fair Dealing Defence
    • The Supreme Court of Canada set out the following factors for applying the fair dealing defence in the context of private study or research:
    • Purpose of the Dealing - There must be an allowable purpose mentioned expressly in the Act . Within allowable purposes there is variability, (eg “philanthropic research is more likely to be fair than commercial research).
    • Character of the Dealing - For example, reproducing a single copy for a single requester is more likely to be considered fair than providing for widespread dissemination.
    • Amount of the Dealing - Consider the number and types of activities undertaken. As to what would be unfair, the court suggested this example: one patron requesting copies of multiple reported judicial decisions from the same series or volume over a short period of time. In such a case, the patron would be expected to purchase the works from the publisher.
  • Canadian Fair Dealing Defence
    • Alternatives to the Dealing - Circumstances to be considered include “whether the material is reasonably available elsewhere, or whether the publishers have an effective monopoly”. The more alternatives available, the less fair copying would be, and vice versa . Consider whether the source work was available within a reasonable time at an ordinary commercial price.
    • Nature of the Work - Some of the jurisprudence suggests that fair dealing is more applicable for works that are factual in nature than for works which are creative, or imaginative.
    • Effect of the Dealing on the Work - Courts consider the “degree in which the use may prejudice the sale, or diminish the profits, or supersede the objects, of the original work”. If the copying was done in order to be incorporated into a competing work, there is more likely to be infringement.
    • [ CCH Canadian Ltd. v. Law Society of Upper Canada ]
  • Copyright Collectives
    •   .
    •       
    • Collectives are common in Canada (eg. music performance rights, publishing, motion pictures)
    • A copyright collective is a society, association or corporation that carries on business of collective administration of copyright royalties and enforcement for the benefit those who authorize the collective to act on their behalf.
    • The collective can negotiate institutional licenses and collects royalties for copyright owners.
    • Some collective societies are affiliated with foreign societies; this allows them to represent foreign copyright owners as well
    • For a list of collectives in Canada see:
    • http://www.cb-cda.gc.ca/societies-societes/index-e.html
  • Industrial Design Protection
    • Copyright does not cover design elements of finished “useful” articles, if more than 50 copes of the articles are made [64 CA]
    • Photographs, sketches or patterns of the useful items not covered by the exemption and thus are copyrightable
    • The features of shape, configuration, pattern, or ornament applied to finished articles are covered by Industrial Design Act
    • Does not cover functional features, principles of construction, ideas, or colour
    • Industrial design can be protected under both Acts as long as the article does not have utilitarian function and are not mass produced (i.e. less than 50 copies made)
  • Examples of Registered Industrial Design The design consists of the features of shape, ornament, pattern and configuration of a PORTABLE ELECTRONIC MULTI-MEDIA COMMUNICATION DEVICE shown in the drawings. The portions of the drawings in stippled lines are for illustration purposes only and do not form any part of the design.
  • Examples of Registered Industrial Design The said Industrial Design consists of the features of shape, ornament, pattern and configuration of the entire Photograph Organizer shown in the hereto annexed drawings wherein: Figure 1 is a perspective view of the design; Figure 2 is side elevational view of the design shown in Figure 1; Figure 3 is a top view of the design shown in Figure 1; Figure 4 is a bottom view of the design shown in Figure 1; Figure 5 is a perspective view of a variant of the design shown in Figure 1; and Figure 6 is a side elevational view of the design shown in Figure 5. Drawings of the Design are included.
  • Examples of Registered Industrial Designs The design consists of the features of shape, pattern and ornamentation of the entire cordless drill shown in the drawings. The drawings of the design are included wherein Figure 1 is a perspective view; Figure 2 is a perspective view from bottom; Figure 3 is a side view facing right; Figure 4 is a front view; Figure 5 is a side view facing left; Figure 6 is a rear view; Figure 7 is a top view; and Figure 8 is a bottom view.
  • Examples of Registered Industrial Designs The design is the visual features of the HANDBAG shown in the drawings, whether those features are features of one of shape, configuration, ornament or pattern or are a combination of any of these features. Drawings of the design in seven (7) views are included.
  • Examples of Registered Industrial Design
    • The said Industrial Design consists of the features of shape, configuration, ornamentation and pattern of a snack chip as shown in the drawings. Drawings of the design are included where: Figure 1 is a top perspective view of the snack chip of the present design; Figure 2 is a bottom perspective view thereof; Figure 3 is a top plan view thereof; Figure 4 is a bottom plan view thereof; Figure 5 is a front elevational view thereof; Figure 6 is a rear elevational view thereof; Figure 7 is a right side elevational view thereof; and Figure 8 is a left side elevational view thereof.
  • Product Branding
    • Trade-marks and copyright can be used to protect a product brand
    • To prevent copying and protect economic interests
    • To prevent confusion in the market place
    • Consumers protection – consumers know the source of the product
  • Examples of Registered Trade-marks TRADE-MARK:                                        REGISTRATION NUMBER: TMA290252 DISTINGUISHING GUISE:                                        REGISTRATION NUMBER: TMA562648 DISTINGUISHING GUISE:                                        REGISTRATION NUMBER: TMA164635 TRADE-MARK:                                        REGISTRATION NUMBER: TMA355239
  • Example of Registered Copyright Title: TOBLERONE MOUNTAIN Type: Copyright Registration Number: 1006932 Status: Registered Registered: 2002-10-25 Category Of Work: Artistic Date Published: 2000 Country Published: Switzerland Related Grant of interest: COPYRIGHT LICENSE AGREEMENT 1006941 REVOCATION OF LICENSE AND COPYRIGHT ASSIGNMENT 1053036 Interested Parties: Owner: Company Name: Kraft Foods Schweiz AG Original Address: ellerivestrasse 203, 8034 Zurich Switzerland Current Address: Chaussée de Bruxelles, 450, B 1500 Halle Belgium Original Address: ellerivestrasse 203, 8034 Zurich Switzerland Current Address: Chaussée de Bruxelles, 450, B 1500 Halle Belgium Agent: Company Name: Sim, Hughes, Ashton & McKay Person Name Wendy M Noss 330 University Avenue. 6th Floor Toronto Ontario M5G 1R7 Canada Author: Person Name Andrew Davidson Original Address: Moors Cottage, Swells Hill, Borleigh Stroud Gloucester GL52SP United Kingdom
  • Legal Resources
    • Artists Legal Aid Services http://alasontario.com
    • free summary legal advice to artists living in Ontario
    • Access Copyright – The Canadian Copyright Licensing Agency
    • http://www.accesscopyright.ca/Default.aspx?id=11
    • Canadian Intellectual Property Office http://www.cipo.ic.gc.ca
    • CIPO Copyright Registration Database
    • http://www.ic.gc.ca/app/opic-cipo/cpyrghts/dsplySrch.do?lang=eng
    • Industry Canada Copyright , Economic Impact Studies
    • http://www.ic.gc.ca/eic/site/ippd-dppi.nsf/eng/h_ip01070.html
    • Library and Archives Canada – Legal Deposit
    • http://www.collectionscanada.gc.ca/legal-deposit/index-e.html
  • Teresa Cheung LL.M. (Intellectual Property), J.D. [email_address]