Court File Nos.

A-394-12 and A-395-12 FEDERAL COURT OF APPEAL BETWEEN: RICHARD WARMAN and NATIONAL POST COMPANY APPELLANTS - and MARK FOURNIER and CONSTANCE FOURNIER RESPONDENTS - and SAMUELSON-GLUSHKO CANADIAN INTERNET POLICY AND PUBLIC INTEREST CLINIC INTERVENER - and COMPUTER AND COMMUNICATIONS INDUSTRY ASSOCIATION INTERVENER

BOOK OF AUTHORITIES OF THE INTERVENER SAMUELSON-GLUSHKO CANADIAN INTERNET POLICY AND PUBLIC INTEREST CLINIC

Samuelson-Glushko Canadian Internet Policy & Public Interest Clinic (CIPPIC) University of Ottawa, Faculty of Law, Common Law Section 57 Louis Pasteur Street Ottawa, ON, K1N 6N5 David Fewer, LSUC # 45307C Tel: (613) 562-5800 ext. 2558 Fax: (613) 562-5417 Counsel for the Intervener

i AUTHORITIES
TAB Statutory Copyright Act, R.S.C., 1985, c. C-42, ss. 2 (work), 27(2.3)-(2.4), 41.25-41.27, 43.1 Council Directive 2001/29/EC, [2001] O.J. L. 167/10, on the harmonization of certain aspects of copyright and related rights in the information society, (E.U.), Article 2(a) Case Law

1. 2.

3. 4. 5. 6. 7. 8. 9. 10. 11. 12. 13. 14. 15. 16. 17. 18. 19. 20. 21.

Atomic Energy of Canada Limited v. AREVA NP Canada Ltd., 2009 FC 980 CBS Songs Ltd. v. Amstrad Consumer Electronics, [1988] 2 All ER 484 (U.K. H.L.) CCH Canadian Ltd. v. Law Society of Upper Canada, 2004 SCC 13 Chatterton v. Cave (1878), 3 App. Cas. 483 (U.K. H.L.) Crookes v. Newton, 2011 SCC 47 Edutile Inc. v. Automobile Protection Assn. (C.A.), [2000] 4 F.C. 195, 6 C.P.R. (4th) 211 (F.C.A.) Fairfax Media Publications v. Reed International Books Australia, [2010] FCA 984 (Australian Federal Court of Appeal) Francis, Day & Hunter Ltd. v. Twentieth Century Fox Corp. Ltd., [1939] 4 All E.R. 192, 4 D.L.R. 353 (U.K. Privy Council) Flamand v. Socit Radio-Canada, [1967] 53 C.P.R. 217 (Que. S.C.) Hutton v. Canadian Broadcasting Corporation, 1992 ABCA 39 Ice TV v. Nine Network Australia, [2009] HCA 14 (High Court of Australia) Infopaq International A/S v. Danske Dagblades Forening, 2009 ECR I-06569 (E.C.J.) isoHunt Web Technologies Inc. v. EMI Group Canada Inc., 2009 BCSC 1837 JHP Ltd. v. BBC Worldwide Ltd., [2008] EWHC 757 (U.K. Ch.) King Features Syndicate Inc. v. Lechter, [1950] 12 C.P.R. 60 (Ex. Ct.) Ladbroke (Football) v. William Hill (Football) Ltd., [1964] 1 All ER 465 (U.K. H.L.) Muzak Corp. v. Composer, Authors & Publishers Association of Canada Ltd., [1953] 2 S.C.R. Preston v. Twentieth Century Fox Canada, [1990] 38 F.T.R. 183, 33 C.P.R. (3d) 242 (F.C.T.D.) Prism Hospital Software Inc. v. Hospital Medical Records Institute, [1994] 57 C.P.R. (3d) 129 (B.C.S.C.)

ii 22. 23. 24. 25. 26. 27. 28. 29. 30. 31. 32.
Robertson v. Thomson Corp., 2006 SCC 43 Scarlet Extended SA v. Socit belge des auteurs, compositeurs et diteurs SCRL (SABAM), [2011] Case C-70/10, ECR 00000 (E.C.J.) Shewan v. Canada (Attorney General), [1999] 87 C.P.R. (3d) 475 (ON S.C.) Society of Composers, Authors and Muisc Publishers of Canada v. Canadian Assn. of Internet Providers, 2004 SCC 45 Thberge v. Galerie dArt du Petit Champlain Inc., 2002 SCC 34 Tomas v. Boaden Catering Ltd., [1995] 115 F.T.R. 236, 68 C.P.R. (3d) 275 (F.C.T.D.) U & R Tax Services Ltd. v. H & R Block Canada Inc., [1995] 97 F.T.R. 259, 62 C.P.R. (3d) 257 (F.C.T.D.) Vigneux v. Canadian Performing Right Society, [1945] 1 All ER 432 (P.C.) Wall v. Horn Abbot Ltd., 2007 NSSC 197 Warman v. Fournier, 2012 FC 803 Warwick Film Productions v. Eisinger, [1969] 1 Ch. 508, (U.K. Ch. Div.) Secondary Sources

33. 34.

L. Edwards, Role and Responsibilities of Internet Intermediaries in the Field of Copyright and Related Rights, 2011, Report, WIPO, Excerpt, pp. 1-19 J.S. McKeown, Fox on Canadian Law of Copyright and Industrial Design, Digital Edition, (Toronto: Thomson Reuters Canada, 2013), Excerpt, Section 21:2(c) Production or Reproducing a Substantial Part of a Work OECD, The Role of Internet Intermediaries in Advancing Public Policy Objectives, June 2011, DSTI/ICCP(2010)11/FINAL, Excerpt, pp. 10-24 D. Vaver, Intellectual Property Law: Copyright, Patents, Trade-Marks, 2nd Ed., (Toronto: Irwin Law, 2011), Excerpts, pp. 181-189 (Substantial Infringement); pp. 176178 (Authorization)

35. 36.

CANADA

CONSOLIDATION

CODIFICATION

Copyright Act
R.S.C., 1985, c. C-42

Loi sur le droit dauteur

L.R.C. (1985), ch. C-42

Current to June 25, 2013 Last amended on November 7, 2012

jour au 25 juin 2013 Dernire modification le 7 novembre 2012

Published by the Minister of Justice at the following address: http://laws-lois.justice.gc.ca

Publi par le ministre de la Justice ladresse suivante : http://lois-laws.justice.gc.ca

R.S.C., 1985, c. C-42

L.R.C., 1985, ch. C-42

An Act respecting copyright SHORT TITLE

Short title

Loi concernant le droit dauteur TITRE ABRG 1.Loi sur le droit dauteur.
S.R., ch. C-30, art. 1.
Titre abrg

1.This Act may be cited as the Copyright Act.

R.S., c. C-30, s. 1.

INTERPRETATION
Definitions architectural work uvre architecturale

DFINITIONS ET DISPOSITIONS INTERPRTATIVES 2.Les dfinitions qui suivent sappliquent la prsente loi. accessible sur le march Sentend, en ce qui concerne une uvre ou de tout autre objet du droit dauteur a)quil est possible de se procurer, au Canada, un prix et dans un dlai raisonnables, et de trouver moyennant des efforts raisonnables; b)pour lequel il est possible dobtenir, un prix et dans un dlai raisonnables et moyennant des efforts raisonnables, une licence octroye par une socit de gestion pour la reproduction, lexcution en public ou la communication au public par tlcommunication, selon le cas. appareil rcepteur [Abroge, 1993, ch. 44, art. 79] artiste interprte [Abroge, 1997, ch. 24, art. 1] artiste-interprte Tout artiste-interprte ou excutant. bibliothque, muse ou service darchives Sentend: a)dun tablissement dot ou non de la personnalit morale qui: (i)dune part, nest pas constitu ou administr pour raliser des profits, ni ne fait
artisteinterprte French version only bibliothque, muse ou service darchives library, archive or museum Dfinitions

2.In this Act, architectural work means any building or structure or any model of a building or structure; architectural work of art [Repealed, 1993, c. 44, s. 53]

accessible sur le march commercially available

artistic work uvre artistique

artistic work includes paintings, drawings, maps, charts, plans, photographs, engravings, sculptures, works of artistic craftsmanship, architectural works, and compilations of artistic works; Berne Convention country means a country that is a party to the Convention for the Protection of Literary and Artistic Works concluded at Berne on September 9, 1886, or any one of its revisions, including the Paris Act of 1971; Board means the Copyright Board established by subsection 66(1); book means a volume or a part or division of a volume, in printed form, but does not include (a)a pamphlet, (b)a newspaper, review, magazine or other periodical, (c)a map, chart, plan or sheet music where the map, chart, plan or sheet music is separately published, and

Berne Convention country pays partie la Convention de Berne Board Commission book livre

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Copyright June 25, 2013
UCC country pays partie la Convention universelle

UCC country means a country that is a party to the Universal Copyright Convention, adopted on September 6, 1952 in Geneva, Switzerland, or to that Convention as revised in Paris, France on July 24, 1971; WCT country means a country that is a party to the WIPO Copyright Treaty, adopted in Geneva on December 20, 1996; work includes the title thereof when such title is original and distinctive; work of joint authorship means a work produced by the collaboration of two or more authors in which the contribution of one author is not distinct from the contribution of the other author or authors; work of sculpture [Repealed, 1997, c. 24, s. 1]

WCT country pays partie au trait de lODA work uvre work of joint authorship uvre cre en collaboration

socit de gestion Association, socit ou personne morale autorise notamment par voie de cession, licence ou mandat se livrer la gestion collective du droit dauteur ou du droit rmunration confr par les articles 19 ou 81 pour lexercice des activits suivantes: a)ladministration dun systme doctroi de licences portant sur un rpertoire duvres, de prestations, denregistrements sonores ou de signaux de communication de plusieurs auteurs, artistes-interprtes, producteurs denregistrements sonores ou radiodiffuseurs et en vertu duquel elle tablit les catgories dutilisation quelle autorise au titre de la prsente loi ainsi que les redevances et modalits affrentes; b)la perception et la rpartition des redevances payables aux termes de la prsente loi. tlcommunication Vise toute transmission de signes, signaux, crits, images, sons ou renseignements de toute nature par fil, radio, procd visuel ou optique, ou autre systme lectromagntique. toute uvre littraire, dramatique, musicale ou artistique originale Sentend de toute production originale du domaine littraire, scientifique ou artistique quels quen soient le mode ou la forme dexpression, tels les compilations, livres, brochures et autres crits, les confrences, les uvres dramatiques ou dramaticomusicales, les uvres musicales, les traductions, les illustrations, les croquis et les ouvrages plastiques relatifs la gographie, la topographie, larchitecture ou aux sciences.
L.R. (1985), ch. C-42, art. 2; L.R. (1985), ch. 10 (4e suppl.), art. 1; 1988, ch. 65, art. 61; 1992, ch. 1, art. 145(F); 1993, ch. 23, art. 1, ch. 44, art. 53 et 79; 1994, ch. 47, art. 56; 1995, ch. 1, art. 62; 1997, ch. 24, art. 1; 2012, ch. 20, art. 2.

socit de gestion collective society

WPPT country pays partie au trait de lOIEP WTO Member membre de lOMC

WPPT country means a country that is a party to the WIPO Performances and Phonograms Treaty, adopted in Geneva on December 20, 1996; WTO Member means a Member of the World Trade Organization as defined in subsection 2(1) of the World Trade Organization Agreement Implementation Act.
R.S., 1985, c. C-42, s. 2; R.S., 1985, c. 10 (4th Supp.), s. 1; 1988, c. 65, s. 61; 1992, c. 1, s. 145(F); 1993, c. 23, s. 1, c. 44, ss. 53, 79; 1994, c. 47, s. 56; 1995, c. 1, s. 62; 1997, c. 24, s. 1; 2012, c. 20, s. 2.

tlcommunication telecommunication

toute uvre littraire, dramatique, musicale ou artistique originale every original literary, dramatic, musical and artistic work

Compilations

2.1(1)A compilation containing two or more of the categories of literary, dramatic, musical or artistic works shall be deemed to be a compilation of the category making up the most substantial part of the compilation. (2)The mere fact that a work is included in a compilation does not increase, decrease or otherwise affect the protection conferred by this Act in respect of the copyright in the work or the moral rights in respect of the work.
1993, c. 44, s. 54.

2.1(1)La compilation duvres de catgories diverses est rpute constituer une compilation de la catgorie reprsentant la partie la plus importante. (2)Lincorporation dune uvre dans une compilation ne modifie pas la protection confre par la prsente loi luvre au titre du droit dauteur ou des droits moraux.
1993, ch. 44, art. 54.

Compilations

Idem

Idem

4
Droit dauteur 25 juin 2013 matter that is included in the lesson is prejudicially affected; (c)by way of trade, to distribute it, expose or offer it for sale or rental or exhibit it in public; (d)to possess it for the purpose of doing anything referred to in any of paragraphs (a) to (c); (e)to communicate it by telecommunication to any person other than a person referred to in paragraph 30.01(3)(a); or (f)to circumvent or contravene any measure taken in conformity with paragraph 30.01(6)(b), (c) or (d).
Infringement provision of services

luvre ou tout autre objet du droit dauteur qui est compris dans la leon; c)la mise en circulation, la mise ou loffre en vente ou en location, ou lexposition en public, dans un but commercial; d)la possession en vue de lun des actes viss aux alinas a) c); e)la communication par tlcommunication toute personne qui nest pas vise lalina 30.01(3)a); f)le contournement ou la contravention des mesures prises en conformit avec les alinas 30.01(6)b), c) ou d). (2.3)Constitue une violation du droit dauteur le fait pour une personne de fournir un service sur Internet ou tout autre rseau numrique principalement en vue de faciliter laccomplissement dactes qui constituent une violation du droit dauteur, si une autre personne commet une telle violation sur Internet ou tout autre rseau numrique en utilisant ce service. (2.4)Lorsquil sagit de dcider si une personne a commis une violation du droit dauteur prvue au paragraphe (2.3), le tribunal peut prendre en compte les facteurs suivants: a)le fait que la personne a fait valoir, mme implicitement, dans le cadre de la commercialisation du service ou de la publicit relative celui-ci, quil pouvait faciliter laccomplissement dactes qui constituent une violation du droit dauteur; b)le fait que la personne savait que le service tait utilis pour faciliter laccomplissement dun nombre important de ces actes; c)le fait que le service a des utilisations importantes, autres que celle de faciliter laccomplissement de ces actes; d)la capacit de la personne, dans le cadre de la fourniture du service, de limiter la possibilit daccomplir ces actes et les mesures quelle a prises cette fin; e)les avantages que la personne a tirs en facilitant laccomplissement de ces actes; f)la viabilit conomique de la fourniture du service si celui-ci ntait pas utilis pour faciliter laccomplissement de ces actes.
Violation relative aux fournisseurs de services

(2.3)It is an infringement of copyright for a person, by means of the Internet or another digital network, to provide a service primarily for the purpose of enabling acts of copyright infringement if an actual infringement of copyright occurs by means of the Internet or another digital network as a result of the use of that service. (2.4)In determining whether a person has infringed copyright under subsection (2.3), the court may consider (a)whether the person expressly or implicitly marketed or promoted the service as one that could be used to enable acts of copyright infringement; (b)whether the person had knowledge that the service was used to enable a significant number of acts of copyright infringement; (c)whether the service has significant uses other than to enable acts of copyright infringement; (d)the persons ability, as part of providing the service, to limit acts of copyright infringement, and any action taken by the person to do so; (e)any benefits the person received as a result of enabling the acts of copyright infringement; and (f)the economic viability of the provision of the service if it were not used to enable acts of copyright infringement.

Factors

Facteurs

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Copyright June 25, 2013
Knowledge of importer

(3)In determining whether there is an infringement under subsection (2) in the case of an activity referred to in any of paragraphs (2)(a) to (d) in relation to a copy that was imported in the circumstances referred to in paragraph (2)(e), it is irrelevant whether the importer knew or should have known that the importation of the copy infringed copyright. (4)It is an infringement of copyright for any person to make or possess a plate that has been specifically designed or adapted for the purpose of making infringing copies of a work or other subject-matter. (5)It is an infringement of copyright for any person, for profit, to permit a theatre or other place of entertainment to be used for the performance in public of a work or other subject-matter without the consent of the owner of the copyright unless that person was not aware, and had no reasonable ground for suspecting, that the performance would be an infringement of copyright.
R.S., 1985, c. C-42, s. 27; R.S., 1985, c. 1 (3rd Supp.), s. 13, c. 10 (4th Supp.), s. 5; 1993, c. 44, s. 64; 1997, c. 24, s. 15; 2012, c. 20, s. 18.

(3)Lorsquil sagit de dcider si les actes viss aux alinas (2)a) d), dans les cas o ils se rapportent un exemplaire import dans les conditions vises lalina (2)e), constituent des violations du droit dauteur, le fait que limportateur savait ou aurait d savoir que limportation de lexemplaire constituait une violation nest pas pertinent. (4)Constitue une violation du droit dauteur la confection dune planche conue ou adapte prcisment pour la contrefaon dune uvre ou de tout autre objet du droit dauteur, ou le fait de lavoir en sa possession. (5)Constitue une violation du droit dauteur le fait, dans un but de profit, de permettre lutilisation dun thtre ou dun autre lieu de divertissement pour lexcution en public dune uvre ou de tout autre objet du droit dauteur sans le consentement du titulaire du droit dauteur, moins que la personne qui permet cette utilisation nait ignor et nait eu aucun motif raisonnable de souponner que lexcution constituerait une violation du droit dauteur.
L.R. (1985), ch. C-42, art. 27; L.R. (1985), ch. 1 (3e suppl.), art. 13, ch. 10 (4e suppl.), art. 5; 1993, ch. 44, art. 64; 1997, ch. 24, art. 15; 2012, ch. 20, art. 18.

Prcision

Plates

Planches

Public performance for profit

Reprsentation dans un but de profit

Parallel Importation of Books

Importation of books

Importations parallles de livres 27.1(1)Sous rserve des rglements pris en application du paragraphe (6), constitue une violation du droit dauteur sur un livre limportation dexemplaires de celui-ci dans les cas o les conditions suivantes sont runies: a)la production des exemplaires sest faite avec le consentement du titulaire du droit dauteur dans le pays de production, mais leur importation se fait sans le consentement du titulaire du droit dauteur au Canada; b)limportateur sait ou devrait savoir quil violerait le droit dauteur sil produisait les exemplaires au Canada. (2)Sous rserve des rglements pris en application du paragraphe (6), constitue une violation du droit dauteur sur un livre laccomplissement de tout acte ci-aprs en ce qui a trait des exemplaires viss lalina (1)a) alors que la personne qui accomplit lacte sait ou devrait savoir que limportateur aurait viol le droit dauteur sil avait produit les exemplaires au Canada:
Actes ultrieurs Importation de livres sans le consentement du titulaire du droit dauteur au Canada

27.1(1)Subject to any regulations made under subsection (6), it is an infringement of copyright in a book for any person to import the book where (a)copies of the book were made with the consent of the owner of the copyright in the book in the country where the copies were made, but were imported without the consent of the owner of the copyright in the book in Canada; and (b)the person knows or should have known that the book would infringe copyright if it was made in Canada by the importer.

Secondary infringement

(2)Subject to any regulations made under subsection (6), where the circumstances described in paragraph (1)(a) exist, it is an infringement of copyright in an imported book for any person who knew or should have known that the book would infringe copyright if it was made in Canada by the importer to (a)sell or rent out the book;

38

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Droit dauteur 25 juin 2013 PROVISIONS RESPECTING PROVIDERS OF NETWORK SERVICES OR INFORMATION LOCATION TOOLS 41.25[Not in force] 41.26[Not in force]
Injunctive relief only providers of information location tools

DISPOSITIONS CONCERNANT LES FOURNISSEURS DE SERVICES RSEAU ET DOUTILS DE REPRAGE 41.25[Non en vigueur] 41.26[Non en vigueur] 41.27(1)Dans les procdures pour violation du droit dauteur, le titulaire du droit dauteur ne peut obtenir quune injonction comme recours contre le fournisseur dun outil de reprage en cas de dtermination de responsabilit pour violation du droit dauteur dcoulant de la reproduction de luvre ou de lautre objet du droit dauteur ou de la communication de la reproduction au public par tlcommunication. (2)Le paragraphe (1) ne sapplique que si le fournisseur respecte les conditions ci-aprs en ce qui a trait luvre ou lautre objet du droit dauteur: a)il reproduit luvre ou lobjet et met cette reproduction en antmmoire ou effectue son gard toute autre opration similaire, de faon automatique, et ce en vue de fournir loutil de reprage; b)il communique cette reproduction au public par tlcommunication, et ce en vue de fournir linformation repre par loutil de reprage; c)il ne modifie pas la reproduction, sauf pour des raisons techniques; d)il se conforme aux conditions relatives la reproduction, la mise en antmmoire de cette reproduction ou lexcution son gard de toute autre opration similaire, ou la communication au public par tlcommunication de la reproduction, qui ont t formules, suivant les pratiques de lindustrie, par la personne ayant rendu luvre ou lobjet accessibles sur Internet ou un autre rseau numrique et qui se prtent une lecture ou une excution automatique; e)il nentrave pas lusage, la fois licite et conforme aux pratiques de lindustrie, de la technologie pour lobtention de donnes sur lutilisation de luvre ou de lobjet. (3)[Non en vigueur] (4)Le paragraphe (1) ne sapplique pas lgard de la fourniture de loutil de reprage si celle-ci constitue une violation du droit dauteur prvue au paragraphe 27(2.3).
Exception Injonction : fournisseurs doutils de reprage

41.27(1)In any proceedings for infringement of copyright, the owner of the copyright in a work or other subject-matter is not entitled to any remedy other than an injunction against a provider of an information location tool that is found to have infringed copyright by making a reproduction of the work or other subjectmatter or by communicating that reproduction to the public by telecommunication. (2)Subsection (1) applies only if the provider, in respect of the work or other subject-matter, (a)makes and caches, or does any act similar to caching, the reproduction in an automated manner for the purpose of providing the information location tool; (b)communicates that reproduction to the public by telecommunication for the purpose of providing the information that has been located by the information location tool; (c)does not modify the reproduction, other than for technical reasons; (d)complies with any conditions relating to the making or caching, or doing of any act similar to caching, of reproductions of the work or other subject-matter, or to the communication of the reproductions to the public by telecommunication, that were specified in a manner consistent with industry practice by whoever made the work or other subjectmatter available through the Internet or another digital network and that lend themselves to automated reading and execution; and (e)does not interfere with the use of technology that is lawful and consistent with industry practice in order to obtain data on the use of the work or other subject-matter. (3)[Not in force]

Conditions for application

Conditions dapplication

Exception

(4)Subsection (1) does not apply to the provision of the information location tool if the provision of that tool constitutes an infringement of copyright under subsection 27(2.3).

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Copyright June 25, 2013
Factors scope of injunction

(4.1)If it grants an injunction as set out in subsection (1), the court shall, among any other relevant factors, consider the following in establishing the terms of the injunction: (a)the harm likely to be suffered by the copyright owner if steps are not taken to prevent or restrain the infringement; and (b)the burden imposed on the provider and on the operation of the information location tool, including (i)the aggregate effect of the injunction and any injunctions from other proceedings, (ii)whether implementing the injunction would be technically feasible and effective in addressing the infringement, (iii)whether implementing the injunction would interfere with the use of the information location tool for non-infringing acts, and (iv)the availability of less burdensome and comparably effective means of preventing or restraining the infringement.

(4.1)Sil accorde linjonction mentionne au paragraphe (1), le tribunal tient compte lorsquil en tablit les termes, en plus de tout autre facteur pertinent, de ce qui suit: a)lampleur des dommages que subirait vraisemblablement le titulaire du droit dauteur si aucune mesure ntait prise pour prvenir ou restreindre la violation; b)le fardeau impos au fournisseur de loutil de reprage ainsi que sur lexploitation de loutil de reprage, notamment: (i)leffet cumulatif de cette injonction eu gard aux injonctions dj accordes dans dautres instances, (ii)le fait que lexcution de linjonction constituerait une solution techniquement ralisable et efficace lencontre de la violation, (iii)la possibilit que lexcution de linjonction entrave lutilisation licite de loutil de reprage, (iv)lexistence de moyens aussi efficaces et moins contraignants de prvenir ou restreindre la violation. (4.2)Le tribunal ne peut accorder linjonction vise larticle 39.1 si le fournisseur est dj vis par une injonction au titre du paragraphe (1). (5)Au prsent article, outil de reprage sentend de tout outil permettant de reprer linformation qui est accessible sur lInternet ou tout autre rseau numrique.
2012, ch. 20, art. 47.

Facteurs : porte de linjonction

Limitation

(4.2)A court is not permitted to grant an injunction under section 39.1 against a provider who is the subject of an injunction set out in subsection (1). (5)In this section, information location tool means any tool that makes it possible to locate information that is available through the Internet or another digital network.
2012, c. 20, s. 47.

Limite

Meaning of information location tool

Dfinition de outil de reprage

CRIMINAL REMEDIES
Offences and punishment

RECOURS CRIMINELS 42.(1)Commet une infraction quiconque, sciemment: a)se livre, en vue de la vente ou de la location, la contrefaon dune uvre ou dun autre objet du droit dauteur protgs; b)en vend ou en loue, ou commercialement en met ou en offre en vente ou en location un exemplaire contrefait; c)en met en circulation des exemplaires contrefaits, soit dans un but commercial, soit de faon porter prjudice au titulaire du droit dauteur;
Infractions et peines

42.(1)Every person who knowingly (a)makes for sale or rental an infringing copy of a work or other subject-matter in which copyright subsists, (b)sells or rents out, or by way of trade exposes or offers for sale or rental, an infringing copy of a work or other subject-matter in which copyright subsists, (c)distributes infringing copies of a work or other subject-matter in which copyright subsists, either for the purpose of trade or to such an extent as to affect prejudicially the owner of the copyright,

100

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Droit dauteur 25 juin 2013 order that the work or composition may be performed in whole or in part in public for private profit, is guilty of an offence and liable on summary conviction to a fine not exceeding five hundred dollars and, in the case of a second or subsequent offence, either to that fine or to imprisonment for a term not exceeding four months or to both.
R.S., c. C-30, s. 26.

une partie de cette uvre puisse tre excute ou reprsente en public, dans un but de lucre personnel, est coupable dune infraction et encourt, sur dclaration de culpabilit par procdure sommaire, une amende maximale de cinq cents dollars; la rcidive est punie de la mme amende et dun emprisonnement maximal de quatre mois, ou de lune de ces peines.
S.R., ch. C-30, art. 26.

LIMITATION OR PRESCRIPTION PERIOD

Limitation or prescription period for civil remedies

PRESCRIPTION 43.1(1)Sous rserve du tribunal ne peut accorder lgard dun fait acte contraire la prsente loi suivants: paragraphe (2), le de rparations ou omission que dans les cas
Prescription

43.1(1)Subject to subsection (2), a court may award a remedy for any act or omission that has been done contrary to this Act only if (a)the proceedings for the act or omission giving rise to a remedy are commenced within three years after it occurred, in the case where the plaintiff knew, or could reasonably have been expected to know, of the act or omission at the time it occurred; or (b)the proceedings for the act or omission giving rise to a remedy are commenced within three years after the time when the plaintiff first knew of it, or could reasonably have been expected to know of it, in the case where the plaintiff did not know, and could not reasonably have been expected to know, of the act or omission at the time it occurred.

a) le demandeur engage une procdure dans les trois ans qui suivent le moment o le fait vis par le recours a eu lieu, sil avait connaissance du fait au moment o il a eu lieu ou sil est raisonnable de sattendre ce quil en ait eu connaissance ce moment; b) le demandeur engage une procdure dans les trois ans qui suivent le moment o il a pris connaissance du fait vis par le recours ou le moment o il est raisonnable de sattendre ce quil en ait pris connaissance, sil nen avait pas connaissance au moment o il a eu lieu ou sil nest pas raisonnable de sattendre ce quil en ait eu connaissance ce moment. (2)Le tribunal ne fait jouer la prescription vise aux alinas (1)a) ou b) qu lgard de la partie qui linvoque.
1994, ch. 47, art. 64; 1997, ch. 24, art. 25; 2012, ch. 20, art. 49.
Restriction

Restriction

(2)The court shall apply the limitation or prescription period set out in paragraph (1)(a) or (b) only in respect of a party who pleads a limitation period.
1994, c. 47, s. 64; 1997, c. 24, s. 25; 2012, c. 20, s. 49.

IMPORTATION
Importation of certain copyright works prohibited

IMPORTATION 44.Les exemplaires, fabriqus hors du Canada, de toute uvre sur laquelle un droit dauteur subsiste, qui, sils taient fabriqus au Canada, constitueraient des contrefaons, et au sujet desquels le titulaire du droit dauteur a notifi par crit lAgence des services frontaliers du Canada son intention dinterdire limportation au Canada, ne peuvent tre ainsi imports, et sont rputs inclus dans le no tarifaire 9897.00.00 de la liste des dispositions tarifaires
Importation de certains exemplaires dfendus

44.Copies made out of Canada of any work in which copyright subsists that if made in Canada would infringe copyright and as to which the owner of the copyright gives notice in writing to the Canada Border Services Agency that the owner desires that the copies not be so imported into Canada, shall not be so imported and are deemed to be included in tariff item No. 9897.00.00 in the List of Tariff Provisions set out in the schedule to the Customs

103

9
Droit dauteur 25 juin 2013
AMENDMENTS NOT IN FORCE 2012, c. 20, s. 2(1)
R.S., c. 10 (4th Supp.), s. 1(3); 1994, c. 47, s. 56(3) moral rights droits moraux treaty country pays signataire

MODIFICATIONS NON EN VIGUEUR 2012, ch. 20, par. 2(1) 2.(1)Les dfinitions de droits moraux et pays signataire, larticle 2 de la Loi sur le droit dauteur, sont respectivement remplaces par ce qui suit: droits moraux Les droits viss aux paragraphes 14.1(1) et 17.1(1). pays signataire Pays partie la Convention de Berne, la Convention universelle ou au trait de lODA, ou membre de lOMC. 2012, ch. 20, art. 5 5.Les paragraphes 5(1.01) (1.03) de la mme loi sont remplacs par ce qui suit:
1994, ch. 47, par. 57(1); 1997, ch. 24, par. 5(2); 2001, ch. 34, art. 34 Prsomption L.R., ch. 10 (4e suppl.), par. 1(3); 1994, ch. 47, par. 56(3) droits moraux moral rights pays signataire treaty country

2.(1)The definitions moral rights and treaty country in section 2 of the Copyright Act are replaced by the following: moral rights means the rights described in subsections 14.1(1) and 17.1(1); treaty country means a Berne Convention country, UCC country, WCT country or WTO Member; 2012, c. 20, s. 5

1994, c. 47, s. 57(1); 1997, c. 24, s. 5(2); 2001, c. 34, s. 34 Protection for older works

5.Subsections 5(1.01) to (1.03) of the Act are replaced by the following:

(1.01)For the purposes of subsection (1), a country that becomes a Berne Convention country, a WCT country or a WTO Member after the date of the making or publication of a work is deemed to have been a Berne Convention country, a WCT country or a WTO Member, as the case may be, at that date, subject to subsection (1.02) and sections 33 to 33.2. (1.02)Subsection (1.01) does not confer copyright protection in Canada on a work whose term of copyright protection in the country referred to in that subsection had expired before that country became a Berne Convention country, a WCT country or a WTO Member, as the case may be. (1.03)Subsections (1.01) and (1.02) apply, and are deemed to have applied, regardless of whether the country in question became a Berne Convention country, a WCT country or a WTO Member before or after the coming into force of those subsections. 2012, c. 20, ss. 9(3), (4) 9.(3)Section 15 of the Act is amended by adding the following before subsection (3):

(1.01)Pour lapplication du paragraphe (1), le pays qui devient un pays partie la Convention de Berne ou au trait de lODA, ou un membre de lOMC aprs la date de cration ou de publication de luvre est rput ltre devenu, selon le cas, cette date, sous rserve du paragraphe (1.02) et des articles 33 33.2. (1.02)Le paragraphe (1.01) ne confre aucun droit la protection dune uvre au Canada lorsque la dure de protection accorde par le pays vis a expir avant que celui-ci ne devienne un pays partie la Convention de Berne ou au trait de lODA, ou un membre de lOMC, selon le cas. (1.03)Les paragraphes (1.01) et (1.02) sappliquent et sont rputs avoir t applicables, que le pays en question soit devenu un pays partie la Convention de Berne ou au trait de lODA, ou un membre de lOMC avant ou aprs leur entre en vigueur. 2012, ch. 20, par. 9(3) et (4) 9.(3)Larticle 15 de la mme loi est modifi par adjonction, avant le paragraphe (3), de ce qui suit: (2.2)Le paragraphe (1.1) sapplique galement lorsque la prestation, selon le cas: a)est excute dans un pays partie au trait de lOIEP; b)est fixe au moyen dun enregistrement sonore dont le producteur, lors de la premire fixation, soit est un citoyen ou un rsident permanent dun pays partie au trait de lOIEP, soit, sil sagit dune personne morale, a son sige social dans un tel pays, ou est fixe au moyen dun enregistrement sonore dont la premire publication en quantit suffisante pour satisfaire la demande raisonnable du public a eu lieu dans un pays partie au trait de lOIEP;

Limitation

Rserve

Application of subsections (1.01) and (1.02)

Application des paragraphes (1.01) et (1.02)

Conditions for copyright

(2.2)Subsection (1.1) also applies if (a)the performers performance takes place in a WPPT country; (b)the performers performance is fixed in (i)a sound recording whose maker, at the time of its first fixation, (A)was a citizen or permanent resident of a WPPT country, in the case of a natural person, or (B)had its headquarters in a WPPT country, in the case of a corporation, or

Autres conditions

159

10
Droit dauteur 25 juin 2013
Sections 41.25 and 41.26 as enacted by 2012, c. 20, s. 47
Notice of claimed infringement

Les articles 41.25 et 41.26, dicts par 2012, ch. 20, art. 47 41.25(1)Le titulaire dun droit dauteur sur une uvre ou tout autre objet du droit dauteur peut envoyer un avis de prtendue violation la personne qui fournit, selon le cas: a)dans le cadre de la prestation de services lis lexploitation dInternet ou dun autre rseau numrique, les moyens de tlcommunication par lesquels lemplacement lectronique qui fait lobjet de la prtendue violation est connect Internet ou tout autre rseau numrique; b)en vue du stockage vis au paragraphe 31.1(4), la mmoire numrique qui est utilise pour lemplacement lectronique en cause; c)un outil de reprage au sens du paragraphe 41.27(5). (2)Lavis de prtendue violation est tabli par crit, en la forme ventuellement prvue par rglement, et, en outre: a)prcise les nom et adresse du demandeur et contient tout autre renseignement prvu par rglement qui permet la communication avec lui; b)identifie luvre ou lautre objet du droit dauteur auquel la prtendue violation se rapporte; c)dclare les intrts ou droits du demandeur lgard de luvre ou de lautre objet vis; d)prcise les donnes de localisation de lemplacement lectronique qui fait lobjet de la prtendue violation; e)prcise la prtendue violation; f)prcise la date et lheure de la commission de la prtendue violation; g)contient, le cas chant, tout autre renseignement prvu par rglement. 41.26(1)La personne vise aux alinas 41.25(1)a) ou b) qui reoit un avis conforme au paragraphe 41.25(2) a lobligation daccomplir les actes ci-aprs, moyennant paiement des droits quelle peut exiger: a)transmettre ds que possible par voie lectronique une copie de lavis la personne qui appartient lemplacement lectronique identifi par les donnes de localisation qui sont prcises dans lavis et informer ds que possible le demandeur de cette transmission ou, le cas chant, des raisons pour lesquelles elle na pas pu leffectuer; b)conserver, pour une priode de six mois compter de la date de rception de lavis de prtendue violation, un registre permettant didentifier la personne qui appartient lemplacement lectronique et, dans le cas o, avant la fin de cette priode, une procdure est engage par le titulaire du droit dauteur lgard de la prtendue violaObligations Forme de lavis Avis de prtendue violation

41.25(1)An owner of the copyright in a work or other subject-matter may send a notice of claimed infringement to a person who provides (a)the means, in the course of providing services related to the operation of the Internet or another digital network, of telecommunication through which the electronic location that is the subject of the claim of infringement is connected to the Internet or another digital network; (b)for the purpose set out in subsection 31.1(4), the digital memory that is used for the electronic location to which the claim of infringement relates; or (c)an information location tool as defined in subsection 41.27(5).

Form and content of notice

(2)A notice of claimed infringement shall be in writing in the form, if any, prescribed by regulation and shall (a)state the claimants name and address and any other particulars prescribed by regulation that enable communication with the claimant; (b)identify the work or other subject-matter to which the claimed infringement relates; (c)state the claimants interest or right with respect to the copyright in the work or other subjectmatter; (d)specify the location data for the electronic location to which the claimed infringement relates; (e)specify the infringement that is claimed; (f)specify the date and time of the commission of the claimed infringement; and (g)contain any other information that may be prescribed by regulation.

Obligations related to notice

41.26(1)A person described in paragraph 41.25(1)(a) or (b) who receives a notice of claimed infringement that complies with subsection 41.25(2) shall, on being paid any fee that the person has lawfully charged for doing so, (a)as soon as feasible forward the notice electronically to the person to whom the electronic location identified by the location data specified in the notice belongs and inform the claimant of its forwarding or, if applicable, of the reason why it was not possible to forward it; and (b)retain records that will allow the identity of the person to whom the electronic location belongs to be determined, and do so for six months beginning on the day on which the notice of claimed infringement is received or, if the claimant commences proceedings relating to the claimed infringement and so notifies the person before the end of those six months, for one year

163

11
Copyright June 25, 2013
after the day on which the person receives the notice of claimed infringement.
Fees related to notices

tion et quelle en a reu avis, conserver le registre pour une priode dun an suivant la date de la rception de lavis de prtendue violation. (2)Le ministre peut, par rglement, fixer le montant maximal des droits qui peuvent tre exigs pour les actes prvus au paragraphe (1). dfaut de rglement cet effet, le montant de ces droits est nul. (3)Le seul recours dont dispose le demandeur contre la personne qui nexcute pas les obligations que lui impose le paragraphe (1) est le recouvrement des dommages-intrts prtablis dont le montant est, selon ce que le tribunal estime quitable en loccurrence, dau moins 5000 $ et dau plus 10000 $. (4)Le gouverneur en conseil peut, par rglement, changer les montants minimal et maximal des dommages-intrts prtablis viss au paragraphe (3). Le paragraphe 41.27(3), dict par 2012, ch. 20, art. 47 (3)Dans le cas o le fournisseur reoit un avis de prtendue violation conforme au paragraphe 41.25(2) lgard dune uvre ou dun autre objet du droit dauteur aprs le retrait de celui-ci de lemplacement lectronique mentionn dans lavis, le paragraphe (1) ne sapplique, lgard des reproductions faites partir de cet emplacement, quaux violations commises avant lexpiration de trente jours ou toute autre priode prvue par rglement suivant la rception de lavis. 2012, ch. 20, art. 50 50.Le paragraphe 58(1) de la mme loi est remplac par ce qui suit: 58.(1)Tout acte de cession dun droit dauteur ou toute licence concdant un intrt sur un droit dauteur peut tre excut, souscrit ou attest en tout lieu dans un pays signataire ou dans un pays partie la Convention de Rome ou au trait de lOIEP par le cdant, le concdant ou le dbiteur hypothcaire, devant un notaire public, un commissaire ou autre fonctionnaire ou un juge lgalement autoris faire prter serment ou certifier des documents en ce lieu, qui appose lacte sa signature et son sceau officiel ou celui de son tribunal.
1997, ch. 24, par. 34(1) Excution de la cession ou de la concession Rserve Droits

(2)The Minister may, by regulation, fix the maximum fee that a person may charge for performing his or her obligations under subsection (1). If no maximum is fixed by regulation, the person may not charge any amount under that subsection. (3)A claimants only remedy against a person who fails to perform his or her obligations under subsection (1) is statutory damages in an amount that the court considers just, but not less than $5,000 and not more than $10,000. (4)The Governor in Council may, by regulation, increase or decrease the minimum or maximum amount of statutory damages set out in subsection (3). Subsection 41.27(3) as enacted by 2012, c. 20, s. 47 (3)If the provider receives a notice of claimed infringement, relating to a work or other subject-matter, that complies with subsection 41.25(2) after the work or other subject-matter has been removed from the electronic location set out in the notice, then subsection (1) applies, with respect to reproductions made from that electronic location, only to infringements that occurred before the day that is 30 days or the period that may be prescribed by regulation after the day on which the provider receives the notice. 2012, c. 20, s. 50

Damages related to notices

Dommagesintrts

Regulations change of amounts

Rglement

Limitation

1997, c. 24, s. 34(1) Execution of instruments

50.Subsection 58(1) of the Act is replaced by the following: 58.(1)Any assignment of a copyright, or any licence granting an interest in a copyright, may be executed, subscribed or acknowledged at any place in a treaty country, a Rome Convention country or a WPPT country by the assignor, licensor or secured or hypothecary debtor, before any notary public, commissioner or other official, or the judge of any court, who is authorized by law to administer oaths or certify documents in that place and who also subscribes their signature and affixes to, or impresses on, the assignment or licence their official seal or the seal of the court of which they are a judge.

164

12
L 167/10
EN

Official Journal of the European Communities

22.6.2001

DIRECTIVE 2001/29/EC OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society
THE EUROPEAN PARLIAMENT AND THE COUNCIL OF THE EUROPEAN UNION,

Having regard to the Treaty establishing the European Community, and in particular Articles 47(2), 55 and 95 thereof, Having regard to the proposal from the Commission (1), Having regard to the opinion of the Economic and Social Committee (2), Acting in accordance with the procedure laid down in Article 251 of the Treaty (3), Whereas:
(1) (5)

European industry, both in the area of content provision and information technology and more generally across a wide range of industrial and cultural sectors. This will safeguard employment and encourage new job creation.

Technological development has multiplied and diversified the vectors for creation, production and exploitation. While no new concepts for the protection of intellectual property are needed, the current law on copyright and related rights should be adapted and supplemented to respond adequately to economic realities such as new forms of exploitation.

The Treaty provides for the establishment of an internal market and the institution of a system ensuring that competition in the internal market is not distorted. Harmonisation of the laws of the Member States on copyright and related rights contributes to the achievement of these objectives. The European Council, meeting at Corfu on 24 and 25 June 1994, stressed the need to create a general and flexible legal framework at Community level in order to foster the development of the information society in Europe. This requires, inter alia, the existence of an internal market for new products and services. Important Community legislation to ensure such a regulatory framework is already in place or its adoption is well under way. Copyright and related rights play an important role in this context as they protect and stimulate the development and marketing of new products and services and the creation and exploitation of their creative content. The proposed harmonisation will help to implement the four freedoms of the internal market and relates to compliance with the fundamental principles of law and especially of property, including intellectual property, and freedom of expression and the public interest. A harmonised legal framework on copyright and related rights, through increased legal certainty and while providing for a high level of protection of intellectual property, will foster substantial investment in creativity and innovation, including network infrastructure, and lead in turn to growth and increased competitiveness of

(6)

(2)

Without harmonisation at Community level, legislative activities at national level which have already been initiated in a number of Member States in order to respond to the technological challenges might result in significant differences in protection and thereby in restrictions on the free movement of services and products incorporating, or based on, intellectual property, leading to a refragmentation of the internal market and legislative inconsistency. The impact of such legislative differences and uncertainties will become more significant with the further development of the information society, which has already greatly increased transborder exploitation of intellectual property. This development will and should further increase. Significant legal differences and uncertainties in protection may hinder economies of scale for new products and services containing copyright and related rights.

(7)

(3)

(4)

The Community legal framework for the protection of copyright and related rights must, therefore, also be adapted and supplemented as far as is necessary for the smooth functioning of the internal market. To that end, those national provisions on copyright and related rights which vary considerably from one Member State to another or which cause legal uncertainties hindering the smooth functioning of the internal market and the proper development of the information society in Europe should be adjusted, and inconsistent national responses to the technological developments should be avoided, whilst differences not adversely affecting the functioning of the internal market need not be removed or prevented.

(1) OJ C 108, 7.4.1998, p. 6 and OJ C 180, 25.6.1999, p. 6. (2) OJ C 407, 28.12.1998, p. 30. 3 ( ) Opinion of the European Parliament of 10 February 1999 (OJ C 150, 28.5.1999, p. 171), Council Common Position of 28 September 2000 (OJ C 344, 1.12.2000, p. 1) and Decision of the European Parliament of 14 February 2001 (not yet published in the Official Journal). Council Decision of 9 April 2001.

(8)

The various social, societal and cultural implications of the information society require that account be taken of the specific features of the content of products and services.

13
L 167/16
EN CHAPTER II RIGHTS AND EXCEPTIONS

Official Journal of the European Communities

22.6.2001

Community of that object is made by the rightholder or with his consent. Article 5 Exceptions and limitations 1. Temporary acts of reproduction referred to in Article 2, which are transient or incidental [and] an integral and essential part of a technological process and whose sole purpose is to enable: (a) a transmission in a network between third parties by an intermediary, or (b) a lawful use of a work or other subject-matter to be made, and which have no independent economic significance, shall be exempted from the reproduction right provided for in Article 2. 2. Member States may provide for exceptions or limitations to the reproduction right provided for in Article 2 in the following cases: (a) in respect of reproductions on paper or any similar medium, effected by the use of any kind of photographic technique or by some other process having similar effects, with the exception of sheet music, provided that the rightholders receive fair compensation; (b) in respect of reproductions on any medium made by a natural person for private use and for ends that are neither directly nor indirectly commercial, on condition that the rightholders receive fair compensation which takes account of the application or non-application of technological measures referred to in Article 6 to the work or subjectmatter concerned; (c) in respect of specific acts of reproduction made by publicly accessible libraries, educational establishments or museums, or by archives, which are not for direct or indirect economic or commercial advantage; (d) in respect of ephemeral recordings of works made by broadcasting organisations by means of their own facilities and for their own broadcasts; the preservation of these recordings in official archives may, on the grounds of their exceptional documentary character, be permitted; (e) in respect of reproductions of broadcasts made by social institutions pursuing non-commercial purposes, such as hospitals or prisons, on condition that the rightholders receive fair compensation. 3. Member States may provide for exceptions or limitations to the rights provided for in Articles 2 and 3 in the following cases: (a) use for the sole purpose of illustration for teaching or scientific research, as long as the source, including the author's name, is indicated, unless this turns out to be impossible and to the extent justified by the non-commercial purpose to be achieved; (b) uses, for the benefit of people with a disability, which are directly related to the disability and of a non-commercial nature, to the extent required by the specific disability;

Article 2 Reproduction right Member States shall provide for the exclusive right to authorise or prohibit direct or indirect, temporary or permanent reproduction by any means and in any form, in whole or in part: (a) for authors, of their works; (b) for performers, of fixations of their performances; (c) for phonogram producers, of their phonograms; (d) for the producers of the first fixations of films, in respect of the original and copies of their films; (e) for broadcasting organisations, of fixations of their broadcasts, whether those broadcasts are transmitted by wire or over the air, including by cable or satellite. Article 3 Right of communication to the public of works and right of making available to the public other subject-matter 1. Member States shall provide authors with the exclusive right to authorise or prohibit any communication to the public of their works, by wire or wireless means, including the making available to the public of their works in such a way that members of the public may access them from a place and at a time individually chosen by them. 2. Member States shall provide for the exclusive right to authorise or prohibit the making available to the public, by wire or wireless means, in such a way that members of the public may access them from a place and at a time individually chosen by them: (a) for performers, of fixations of their performances; (b) for phonogram producers, of their phonograms; (c) for the producers of the first fixations of films, of the original and copies of their films; (d) for broadcasting organisations, of fixations of their broadcasts, whether these broadcasts are transmitted by wire or over the air, including by cable or satellite. 3. The rights referred to in paragraphs 1 and 2 shall not be exhausted by any act of communication to the public or making available to the public as set out in this Article. Article 4 Distribution right 1. Member States shall provide for authors, in respect of the original of their works or of copies thereof, the exclusive right to authorise or prohibit any form of distribution to the public by sale or otherwise. 2. The distribution right shall not be exhausted within the Community in respect of the original or copies of the work, except where the first sale or other transfer of ownership in the

14

Federal Court

Cour fdrale
2009 FC 980 (CanLII)

Date: 20090930 Docket: T-1579-06 Citation: 2009 FC 980 Ottawa, Ontario, September 30, 2009 PRESENT: The Honourable Mr. Justice Zinn

BETWEEN: ATOMIC ENERGY OF CANADA LIMITED Plaintiff and

AREVA NP CANADA LTD. and SOCIT DES PARTICIPATIONS DU COMMISSARIAT LNERGIE ATOMIQUE Defendants

REASONS FOR ORDER AND ORDER

[1]

The defendants ask the Court to summarily dismiss the action of the plaintiff pursuant to

Rule 216 of the Federal Courts Rules. In the alternative, they ask the Court to grant a trial on the issue of trade-mark infringement alone.

15 Page: 15

(iii)

that the copying resulted in a substantial portion of the work being reproduced.

[35]

In order for there to be a copying, there must be a causal connection between the original

and the allegedly copied work. The plaintiff must lead evidence of actual copying or of the defendants access to the work which, in combination with substantial similarity, can lead to the inference of copying: Shewan v. Canada (Attorney General) (1999), 87 C.P.R. (3d) 475 (Ont. S.C.J.). AECL has led no evidence of actual copying.

[36]

Substantial similarity is a copy which comes so near to the original as to give every person

seeing it the idea created by the original; such similarity creates prima facie evidence of copying: Roger T. Hughes, Susan J. Peacock & Neal Armstrong, Hughes on Copyright & Industrial Design, 2d ed., looseleaf (Markham, ON: LexisNexis, 2009) 63. However, the simpler a copyrighted work is, the more exact must be the copying in order to constitute infringement: DRG Inc. v. Datafile Ltd., [1988] 2 F.C. 243 at 256 (T.D.) affd (1991), 35 C.P.R. (3d) 243 (F.C.A.).

[37]

AREVAs A Design Mark was created in 2001 by a design firm in France. In response to

an undertaking given on examination for discovery AREVA produced a letter dated November 14, 2008, from Yann Guitton (Carr Noir), confirming that he created the A design for AREVA in 2001, with no knowledge of the AECL A design. AECL has offered no evidence to the contrary. Therefore, even if the AREVA A Design Mark could be said to come so near to AECLs Flying A Design Mark as to give every person seeing it the idea created by the original, AREVA has

2009 FC 980 (CanLII)

16 Page: 16

provided uncontradicted evidence that there was no copying, thus overcoming any inference to the contrary.
2009 FC 980 (CanLII)

[38]

Accordingly, AREVA has established that there is no genuine issue for trial with respect to

AECLs allegation of copyright infringement and its claim must be dismissed.

17
Page 1

All England Law Reports/1988/Volume 2 /CBS Songs Ltd and others v Amstrad Consumer Electronics plc and another - [1988] 2 All ER 484 [1988] 2 All ER 484 CBS Songs Ltd and others v Amstrad Consumer Electronics plc and another

HOUSE OF LORDS LORD KEITH OF KINKEL, LORD TEMPLEMAN, LORD GRIFFITHS, LORD OLIVER OF AYLMERTON, LORD JAUNCEY OF TULLICHETTLE

15, 16, 17, 21, 22, 23 MARCH, 12 MAY 1988 Copyright - Infringement - Right of action - Authorisation of infringement - Incitement to make infringing copies - Defendants advertising and selling twin-deck tape recorders - Machines capable of being used for copying of copyright material - Defendants advertising machines in manner likely to encourage copying - Plaintiffs' copyright material likely to be infringed - Plaintiffs bringing action alleging defendants inciting members of public to commit offence of making infringing copies - Plaintiffs seeking injunction and damages - Whether plaintiffs having good cause of action Copyright Act 1956, s 21(3). The first respondent manufactured twin-deck tape-recording machines which were sold by the second respondent. A tape-to-tape facility on the machines meant that they could be used to reproduce one tape directly onto another and they were advertised in a manner which was likely to encourage home taping and copying of copyright material. However, the first respondent's advertising warned that some copying required permission and made it clear that the first respondent had no authority to grant such permission. The appellants, who were three record companies suing on behalf of themselves and other copyright owners in the music business, brought an action against the respondents seeking an injunction to restrain them from selling the machines without ensuring that the appellants' copyrights in sound recordings were not infringed by use of the machines. The appellants subsequently sought leave to amend their statement of claim to allege that the first respondent had advertised and the second respondent had sold the machines in such a way as unlawfully to incite members of the public to commit an offence under s 21(3)a of the Copyright Act 1956, which prohibited the making of infringing copies of a copyright work. The judge allowed the amendment, holding that the appellants had an arguable case for both injunctive relief and damages arising out of the incitement. On appeal by the respondents, the Court of Appeal refused to allow the amendment and struck out the appellants' claim, on the ground that the respondents' breach of the criminal law by incitement would not, even if proved, give the appellants the right to

18
Page 2

sue for an injunction to compel the respondents not to breach the criminal law and for damages. The appellants appealed to the House of Lords, contending that the first respondent had authorised infringement or was a joint infringer with any person who used the machine to make an infringing reproduction of a copyright recording or, alternatively, the activities of the first respondent constituted incitement to commit a tort, incitement to commit a criminal offence under s 21(3), or negligence, and therefore the amendment should be allowed.

Section 21(3) is set out at p 489 j, post

Held - The appeal would be dismissed for the following reasons-(1) The first respondent had not authorised any infringement which fell within the 1956 Act, because although the first respondent's sale of the tape machines might have facilitated copying in breach of copyright neither its advertising nor the sale of the machines 'authorised' such a breach, since the advertising made it clear that the first respondent had no authority to grant the required permission and the first respondent had no control over the use of the machines once they were sold (see p 486 f, p 492 d to f h, p 493 d, p 494 c and p 499 e to g, post); dicta of Atkin LJ in Falcon v Famous Players Film [1988] 2 All ER 484 at 485 Co [1926] 2 KB at 499 and of Lawton LJ in Amstrad Consumer Electronics plc v British Phonographic Industry Ltd [1986] FSR at 207 applied. (2) The first respondent was not a joint infringer with persons who used the machines unalwfully, since the first respondent had no control over the use of the machines after they were sold, the machines' receiving and recording facilities were capable of being used by the buyer for both lawful and unlawful purposes and the first respondent had not acted with users in a common design to infringe copyright (see p 486 f, p 494 d e, p 495 c f g and p 499 e to g, post). (3) The advertising and sale of the first respondent's machines did not constitute incitement to commit a tort, namely procuring the infringement of copyright, since the first respondent was not concerned to procure and could not procure infringement, still less a particular infringement by a

19
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particular infringer (see p 486 f, p 496 g to p 497 a and p 499 e to g, post). (4) Nor did the advertising and sale of the first respondent's machines amount to incitement to commit a criminal offence, namely having possession of a 'plate' knowing that it was to be used to make infringing copies contrary to s 21(3) of the 1956 Act, since a record was not a plate (see p 486 f, p 490 a p 497 c d and p 499 e to g, post). (5) The first respondent's actions did not amount to negligence since the first respondent had not committed and had not participated in any breach of statutory duty and, although it owed a duty not itself to infringe copyright or to authorise any infringement, it did not owe a duty to prevent or discourage or warn against infringement by others (see p 486 f, p 497 h j and p 499 e to g, post). Decision of the Court of Appeal [1987] 3 All ER 151 affirmed.
Notes

For incitement of another to commit an offence, see 11 Halsbury's Laws (4th edn) para 57, and for cases on the subject, see 14(1) Digest (Reissue) 115-117, 770-788. For infringement of copyright, see 9 Halsbury's Laws (4th edn) paras 909-923, and for the cases on the subject, see 13 Digest (Reissue) 117, 962-968. For criminal offences in relation to copyright, see 9 Halsbury's Laws (4th edn) para 959, and for cases on the subject, see 13 Digest (Reissue) 158-159, 1338-1340. For the right of action for breach of copyright, see 9 Halsbury's Laws (4th edn) para 940, and for cases on the subject, see 13 Digest (Reissue) 138-143, 1136-1178. For the Copyright Act 1956, s 21, see 11 Halsbury's Statutes (4th edn) 279.
Cases referred to in opinions

Amstrad Consumer Electronics plc v British Phonographic Industry Ltd [1986] FSR 159, Ch D and CA. Anns v Merton London Borough [1977] 2 All ER 492, [1978] AC 728, [1977] 2 WLR 1024, HL.

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BPI also asserted that Amstrad's advertisement which had appeared on television was an 'encouragement to break the law'. After some correspondence, Amstrad issued proceedings and by its statement of claim dated 2 November 1984 sought a declaration that by advertising and offering its models for sale it was not acting unlawfully. CBS Songs Ltd, suing on its own behalf and on behalf of the other members of Mechanical Rights Society Ltd, and EMI Records Ltd and Chrysalis Records Ltd, suing on their own behalf and on behalf of the other members of BPI, also issued a writ and by their amended statement of claim dated 16 November 1984 claimed against Amstrad and Dixons:
'An injunction to restrain the Defendants ... from parting with possession of models SM104, TS87 and TS39 cassette reproducing machines (or any like machine) without taking such precautions as are necessary reasonably to ensure that copyrights in sound recordings or musical works owned or exclusively licensed to the Plaintiffs or a member of the British Phonographic Industry Limited or the Mechanical Rights Society Limited are not infringed by the use of such machines.'

Since the plaintiffs were suing in a representative capacity the appellants are referred to in this speech as 'BPI'. BPI also claimed an inquiry as to damages or an account of profits. In the course of interlocutory proceedings Whitford J ordered Amstrad to produce all returned guarantee cards from customers who had purchased Amstrad's impugned models. Amstrad produced 25,000 guarantee cards. BPI selected 1,600 for further investigation and ultimately called three representative witnesses. The first had not seen Amstrad's advertisement, the second knew before he saw the advertisement that home copying was unlawful, and the third had seen the advertisements but also knew that home copying was unlawful. On 17 June 1985 Whitford J dismissed Amstrad's action claiming a declaration that its actions were lawful (see Amstrad Consumer Electronics plc v British Phonographic Industry Ltd [1986] FSR 159). The judge held that Amstrad was authorising infringement, was a joint tortfeasor and might be guilty of negligence and of inciting, procuring, aiding or abetting infringement contrary to law or equity. The Court of Appeal (Lawton, Slade and Glidewell LJJ) ([1986] FSR 159 at 201) disagreed, but on 29 October 1985 declined to make a declaration in favour of Amstrad on the grounds that Amstrad's advertisement might amount to an incitement to a home copier to commit a criminal offence under s 21(3) of the 1956 Act. On 8 May 1986 Whitford J heard and dismissed a summons by Amstrad to strike out BPI's action for an injunction and damages on the grounds that the statement of claim did not disclose a cause of action. On 25 February 1987 the Court of Appeal (Fox and Nicholls LJJ, Sir Denys Buckley dissenting) ([1987] 3 All ER 151, [1988] Ch 61) struck out BPI's action. BPI now appeal to this House and, in brief, contend that the decision of Whitford J in both actions should be upheld. In the course of argument, counsel for BPI, acting on instructions from BPI, amplified the reliefs which BPI seek. BPI ask for an injunction which would prevent

21
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Amstrad from selling machines with a copying facility. That relief, if available against all manufacturers, would appear to be the only form of relief which would elminate home copying. In the alternative, BPI seek an injunction which would prevent Amstrad from selling machines with a high-speed copying facility. This might reduce home copying. If an injunction restraining manufacture and sale is not considered to be appropriate, BPI seek an injunction which will restrain Amstrad from extolling the advantages of double-speed taping and will compel Amstrad to give due notice to a purchaser that copying of copyright material is unlawful. It is doubtful whether this would effect any material reduction in home copying. My Lords, the only relevant rights vested in BPI by the 1956 Act are the [1988] 2 All ER 484 at 492 exclusive rights to reproduce and to authorise others to reproduce BPI's records, and the only relevant remedy conferred on BPI by the Act is the remedy of injunction to restrain an infringement by a person who reproduces or authorises another person to reproduce BPI's records. There is nothing express or implied in the Act which inhibits the invention, manufacture, sale or advertisement of electronic equipment capable of lawful or unlawful reproduction. BPI's initial submissions are that Amstrad 'authorised' infringement and that Amstrad is a joint infringer together with any person who uses an Amstrad machine for the purpose of making an infringing reproduction of a recording in which copyright subsists. Section 1(1) of the 1956 Act confers on the copyright owners in a record the 'exclusive right ... to authorise other persons' to copy the record. BPI submit that by selling a model which incorporates a double-speed twin-tape recorder Amstrad 'authorise' the purchaser of the model to copy a record in which copyright subsists and therefore Amstrad infringe the exclusive right of the copyright owner. My Lords, twin-tape recorders, fast or slow, and single-tape recorders, in addition to their recording and playing functions, are capable of copying on to blank tape, directly or indirectly, records which are broadcast, records on discs and records on tape. Blank tapes are capable of being employed for recording or copying. Copying may be lawful or unlawful. Every tape recorder confers on the operator who acquires a blank tape the facility of copying; the double-speed twin-tape recorder provides a modern and efficient facility for continuous playing and continuous recording and for copying. No manufacturer and no machine confers on the purchaser authority to copy unlawfully. The purchaser or other operator of the recorder determines whether he shall copy and what he shall copy. By selling the recorder Amstrad may facilitate copying in breach of copyright but do not authorise it. BPI's next submission is that Amstrad by their advertisement authorise the purchaser of an Amstrad model to copy records in which copyright subsists. Amstrad's advertisement drew attention to the advantages of their models and to the fact that the recorder incorporated in the model could be employed in the copying of modern records. But the advertisement did not authorise the unlawful

22
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copying of records; on the contrary, the footnote warned that some copying required permission and made it clear that Amstrad had no authority to grant that permission. If Amstrad had considered the interests of copyright owners, Amstrad could have declined to incorporate double-tape double-speed recorders in Amstrad's models or could have advertised the illegality of home copying. If Amstrad had deprived themselves of the advantages of offering improved recording facilities, other manufacturers would have reaped the benefit. The effect of double-tape double-speed recorders on the incidence of home copying is altogether speculative. If Amstrad had advertised the illegality of home copying the effect would have been minimal. Amstrad's advertisement was deplorable because Amstrad thereby flouted the rights of copyright owners. Amstrad's advertisement was cynical because Amstrad advertised the increased efficiency of a facility capable of being employed to break the law. But the operator of an Amstrad tape recording facility, like all other operators, can alone decide whether to record or play and what material is to be recorded. The Amstrad advertisement is open to severe criticism but no purchaser of an Amstrad model could reasonably deduce from the facilities incorporated in the model or from Amstrad's advertisement that Amstrad possessed or purported to possess the authority to grant any required permission for a record to be copied. In Monckton v Path Frres Pathephone Ltd [1914] 1 KB 395 at 403 Buckley LJ said: 'The seller of a record authorizes, I conceive, the use of the record, and such use will be a performance of the musical work.' In that case a performance of the musical work by the use of the record was bound to be an infringing use and the record was sold for that purpose. In Evans v E Hulton & Co Ltd (1924) 131 LT 534 at 535, [1924] All ER Rep 224 at 225-226 Tomlin J said: [1988] 2 All ER 484 at 493
'... where a man sold the rights in relation to a [manuscript] to another with a view to its production, and it was in fact produced, both the English language and common sense required him to hold that this man had "authorised" the printing and publication.'

The object of the sale, namely publication, was bound to infringe. In Falcon v Famous Players Film Co [1926] 2 KB 474 the defendants hired to a cinema a film based on the plaintiff's play. It was held that the defendants infringed the plaintiff's exclusive right conferred by the Copyright Act 1911 to authorise a performance of the play. Here again, the hirer sold the use which was only capable of being an infringing use. Bankes LJ following Monckton v Path Frres Pathephone Ltd and Evans v E Hulton & Co Ltd, accepted that for the purpose of the 1911 Act the expression 'authorise' meant 'sanction, approve, and countenance' (at 491). Atkin LJ said (at 499):
'... to "authorize" means to grant or purport to grant to a third person the right to do the act complained of, whether the intention is that the grantee shall do the act on his own account, or only on account of the grantor ... '

In the present case, Amstrad did not sanction, approve or countenance an infringing use of their model and I respectfully agree with Atkin LJ and with Lawton LJ in the present case that in the

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Law Society of Upper Canada Appellant/ Respondent on cross-appeal v. CCH Canadian Limited Respondent/ Appellant on cross-appeal and between Law Society of Upper Canada Appellant/ Respondent on cross-appeal v. Thomson Canada Limited c.o.b. as Carswell Thomson Professional Publishing Respondent/Appellant on cross-appeal and between Law Society of Upper Canada Appellant/ Respondent on cross-appeal v. Canada Law Book Inc. on cross-appeal and Federation of Law Societies of Canada, Canadian Publishers Council and Association of Canadian Publishers, Socit qubcoise de gestion collective des droits de reproduction (COPIBEC) and Canadian Copyright Licensing Agency (Access Copyright) Interveners Respondent/Appellant

Barreau du Haut-Canada au pourvoi incident c. CCH Canadienne Limite au pourvoi incident et entre Barreau du Haut-Canada au pourvoi incident c.

Appelant/Intim

Intime/Appelante

Appelant/Intim

Thomson Canada Limite, faisant affaire sous la raison sociale Carswell Thomson Professional Publishing Intime/Appelante au pourvoi incident et entre Barreau du Haut-Canada au pourvoi incident c. Canada Law Book Inc. pourvoi incident et Fdration des ordres professionnels de juristes du Canada, Canadian Publishers Council et Association des diteurs canadiens, Socit qubcoise de gestion collective des droits de reproduction (COPIBEC) et Canadian Copyright Licensing Agency (Access Copyright) Intervenants
Rpertori : CCH Canadienne Lte c. Barreau du Haut-Canada Rfrence neutre : 2004 CSC 13.

Appelant/Intim

Intime/Appelante au

Indexed as: CCH Canadian Ltd. v. Law Society of Upper Canada Neutral citation: 2004 SCC 13.

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File No.: 29320. 2003: November 10; 2004: March 4. Present: McLachlin C.J. and Iacobucci, Major, Bastarache, Binnie, Arbour, LeBel, Deschamps and Fish JJ.
ON APPEAL FROM THE FEDERAL COURT OF APPEAL
CCH

v. LAW SOCIETY OF UPPER CANADA

No du greffe : 29320. 2003 : 10 novembre; 2004 : 4 mars.

[2004] 1 S.C.R.

Prsents : La juge en chef McLachlin et les juges Iacobucci, Major, Bastarache, Binnie, Arbour, LeBel, Deschamps et Fish.
EN APPEL DE LA COUR DAPPEL FDRALE

Copyright Infringement Photocopying Fax transmissions Law Society providing custom photocopy service and maintaining self-service photocopiers in library for use by patrons Legal publishers bringing copyright infringement actions against Law Society Whether publishers headnotes, case summary, topical index and compilation of reported judicial decisions original works covered by copyright If so, whether Law Society breached publishers copyright Whether Law Societys fax transmissions of publishers works constitute communications to the public Copyright Act, R.S.C. 1985, c. C-42, s. 3(1)(f).

Droit dauteur Violation du droit dauteur Photocopie Transmissions par tlcopieur Barreau offrant un service de photocopie et mettant des photocopieuses libre-service la disposition des usagers de sa bibliothque diteurs juridiques poursuivant le Barreau pour violation de leur droit dauteur Les sommaires, le rsum jurisprudentiel, lindex analytique et la compilation de dcisions judiciaires publies sont-ils des uvres originales protges par le droit dauteur? Dans laffirmative, le Barreau a-t-il viol le droit dauteur des diteurs? La transmission par tlcopieur, par le Barreau, des uvres des diteurs constituait-elle une communication des uvres au public ? Loi sur le droit dauteur, L.R.C. 1985, ch. C-42, art. 3(1)f). Droit dauteur Violation du droit dauteur Exception Utilisation quitable Barreau offrant un service de photocopie et mettant des photocopieuses libre-service la disposition des usagers de sa bibliothque diteurs juridiques poursuivant le Barreau pour violation de leur droit dauteur Lutilisation par le Barreau des uvres des diteurs constituait-elle une utilisation quitable ? Loi sur le droit dauteur, L.R.C. 1985, ch. C-42, art. 29. Droit dauteur uvres protges par le droit dauteur Sens du terme uvre originale Les sommaires, le rsum jurisprudentiel, lindex analytique et la compilation de dcisions judiciaires publies sont-ils des uvres originales protges par le droit dauteur? Loi sur le droit dauteur, L.R.C. 1985, ch. C-42, art. 2 toute uvre littraire, dramatique, musicale ou artistique originale . Le Barreau appelant assure le fonctionnement de la Grande bibliothque dOsgoode Hall, Toronto, une bibliothque de consultation et de recherche dote dune des plus vastes collections douvrages juridiques au Canada. La Grande bibliothque offre un service de photocopie sur demande aux membres du Barreau et de la magistrature, et aux autres chercheurs autoriss. Dans le cadre de ce service de photocopie, les membres du personnel de la Grande bibliothque prparent et remettent

Copyright Infringement Exception Fair dealings Law Society providing custom photocopy service and maintaining self-service photocopiers in library for use by patrons Legal publishers bringing copyright infringement actions against Law Society Whether Law Societys dealings with publishers works fair dealings Copyright Act, R.S.C. 1985, c. C-42, s. 29.

Copyright Works in which copyright may subsist Meaning of original work Whether headnotes, case summary, topical index and compilation of reported judicial decisions original works covered by copyright Copyright Act, R.S.C. 1985, c. C-42, s. 2 every original literary, dramatic, musical and artistic work.

The appellant Law Society maintains and operates the Great Library at Osgoode Hall in Toronto, a reference and research library with one of the largest collections of legal materials in Canada. The Great Library provides a request-based photocopy service for Law Society members, the judiciary and other authorized researchers. Under this custom photocopy service, legal materials are reproduced by Great Library staff and delivered in person, by mail or by facsimile transmission to

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requesters. The Law Society also maintains self-service photocopiers in the Great Library for use by its patrons. In 1993, the respondent publishers commenced copyright infringement actions against the Law Society, seeking a declaration of subsistence and ownership of copyright in specific works and a declaration that the Law Society had infringed copyright when the Great Library reproduced a copy of each of the works. The publishers also sought a permanent injunction prohibiting the Law Society from reproducing these works as well as any other works that they published. The Law Society denied liability and counterclaimed for a declaration that copyright is not infringed when a single copy of a reported decision, case summary, statute, regulation or a limited selection of text from a treatise is made by the Great Library staff, or one of its patrons on a self-service copier, for the purpose of research. The Federal Court, Trial Division allowed the publishers action in part, finding that the Law Society had infringed copyright in certain works; it dismissed the Law Societys counterclaim. The Federal Court of Appeal allowed the publishers appeal in part, holding that all of the works were original and therefore covered by copyright. It dismissed the Law Societys cross-appeal.

sur place ou transmettent par la poste ou par tlcopieur des copies douvrages juridiques aux personnes qui en font la demande. Le Barreau met aussi des photocopieuses libre-service la disposition des usagers de la Grande bibliothque. En 1993, les diteurs intims ont intent des actions contre le Barreau pour violation du droit dauteur afin dobtenir un jugement confirmant lexistence et la proprit du droit dauteur sur des uvres prcises et dclarant que le Barreau avait viol le droit dauteur lorsque la Grande bibliothque avait produit une copie de chacune de ces uvres. Les diteurs ont en outre demand une injonction permanente interdisant au Barreau de reproduire ces uvres ou toute autre uvre quils publient. Le Barreau a ni toute responsabilit et demand son tour un jugement dclarant quil ny a pas de violation du droit dauteur lorsquune seule copie dune dcision publie, dun rsum jurisprudentiel, dune loi, dun rglement ou dun extrait limit dun trait est imprime par un membre du personnel de la Grande bibliothque ou par un usager au moyen dune photocopieuse libre-service, aux fins de recherche. La Section de premire instance de la Cour fdrale a accueilli en partie laction des diteurs, concluant que le Barreau avait viol le droit dauteur sur certaines uvres; elle a rejet la demande reconventionnelle du Barreau. La Cour dappel fdrale a accueilli en partie lappel des diteurs, statuant que les uvres en cause taient toutes originales et protges par le doit dauteur. Elle a rejet lappel incident du Barreau. Arrt : Le pourvoi est accueilli et le pourvoi incident est rejet. Le Barreau ne viole pas le droit dauteur lorsque la Grande bibliothque fournit une seule copie dune dcision publie, dun rsum jurisprudentiel, dune loi, dun rglement ou dune partie restreinte dun texte provenant dun trait conformment sa politique daccs. Par ailleurs, le Barreau nautorise pas la violation du droit dauteur en plaant une photocopieuse dans la Grande bibliothque et en affichant un avis o il dcline toute responsabilit relativement aux copies produites en violation du droit dauteur. Les sommaires, le rsum jurisprudentiel, lindex analytique et la compilation de dcisions judiciaires publies sont tous des uvres originales confrant un droit dauteur. Une uvre originale au sens de la Loi sur le droit dauteur est une uvre qui mane dun auteur et qui nest pas une copie dune autre uvre. Elle doit en outre tre le produit de lexercice du talent et du jugement dun auteur. Cet exercice ne doit pas tre ngligeable au point quon puisse le qualifier dentreprise purement mcanique. Bien quune uvre crative soit par dfinition originale et protge par le droit dauteur, la crativit nest pas essentielle loriginalit. Cette conclusion sappuie sur le sens ordinaire du mot

Held: The appeal should be allowed and the crossappeal dismissed. The Law Society does not infringe copyright when a single copy of a reported decision, case summary, statute, regulation or limited selection of text from a treatise is made by the Great Library in accordance with its access policy. Moreover, the Law Society does not authorize copyright infringement by maintaining a photocopier in the Great Library and posting a notice warning that it will not be responsible for any copies made in infringement of copyright. The headnotes, case summary, topical index and compilation of reported judicial decisions are all original works in which copyright subsists. An original work under the Copyright Act is one that originates from an author and is not copied from another work. In addition, an original work must be the product of an authors exercise of skill and judgment. The exercise of skill and judgment required to produce the work must not be so trivial that it could be characterized as a purely mechanical exercise. While creative works will by definition be original and covered by copyright, creativity is not required to make a work original. This conclusion is supported by the plain meaning of original, the history

26
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CCH

v. LAW SOCIETY OF UPPER CANADA

[2004] 1 S.C.R.

of copyright law, recent jurisprudence, the purpose of the Copyright Act and the fact that this constitutes a workable yet fair standard. While the reported judicial decisions, when properly understood as a compilation of the headnote and the accompanying edited judicial reasons, are original works covered by copyright, the judicial reasons in and of themselves, without the headnotes, are not original works in which the publishers could claim copyright. Under s. 29 of the Copyright Act, fair dealing for the purpose of research or private study does not infringe copyright. Research must be given a large and liberal interpretation in order to ensure that users rights are not unduly constrained, and is not limited to non-commercial or private contexts. Lawyers carrying on the business of law for profit are conducting research within the meaning of s. 29. The following factors help determine whether a dealing is fair: the purpose of the dealing, the character of the dealing, the amount of the dealing, the nature of the work, available alternatives to the dealing, and the effect of the dealing on the work. Here, the Law Societys dealings with the publishers works through its custom photocopy service were research-based and fair. The access policy places appropriate limits on the type of copying that the Law Society will do. If a request does not appear to be for the purpose of research, criticism, review or private study, the copy will not be made. If a question arises as to whether the stated purpose is legitimate, the reference librarian will review the matter. The access policy limits the amount of work that will be copied, and the reference librarian reviews requests that exceed what might typically be considered reasonable and has the right to refuse to fulfill a request.

originale , lhistorique du droit dauteur, la jurisprudence rcente, lobjet de la Loi sur le droit dauteur et le caractre la fois fonctionnel et quitable de ce critre. Bien que les dcisions judiciaires publies, considres juste titre comme une compilation du sommaire et des motifs judiciaires rviss qui laccompagnent, soient des uvres originales protges par le droit dauteur, les motifs de la dcision en eux-mmes, sans les sommaires, ne constituent pas des uvres originales sur lesquelles les diteurs peuvent revendiquer un droit dauteur. Larticle 29 de la Loi sur le droit dauteur prvoit que lutilisation quitable dune uvre aux fins de recherche ou dtude prive ne viole pas le droit dauteur. Il faut interprter le mot recherche de manire large afin que les droits des utilisateurs ne soient pas indment restreints, et la recherche ne se limite pas celle effectue dans un contexte non commercial ou priv. Lavocat qui exerce le droit dans un but lucratif effectue de la recherche au sens de lart. 29. Les facteurs suivants aident dterminer si une utilisation est quitable : le but de lutilisation, la nature de lutilisation, lampleur de lutilisation, la nature de luvre, les solutions de rechange lutilisation et leffet de lutilisation sur luvre. En lespce, lutilisation des uvres des diteurs par le Barreau, dans le cadre du service de photocopie, tait axe sur la recherche et quitable. La politique daccs circonscrit adquatement les copies que le Barreau effectuera. Lorsque la fin poursuivie ne semblera pas tre la recherche, la critique, le compte rendu ou ltude prive, la demande de photocopie sera refuse. En cas de doute quant la lgitimit de la fin poursuivie, il appartiendra aux bibliothcaires de rfrence de trancher. La politique daccs limite lampleur de lextrait pouvant tre reproduit, et les bibliothcaires de rfrence ont le droit de refuser une demande dont la porte excde ce qui est habituellement jug raisonnable. Le Barreau nautorise pas la violation du droit dauteur en mettant des photocopieuses la disposition des usagers de la Grande bibliothque. Bien que lautorisation puisse sinfrer dagissements qui ne sont pas des actes directs et positifs, ce nest pas autoriser la violation du droit dauteur que de permettre la simple utilisation dun appareil susceptible dtre utilis cette fin. Les tribunaux doivent prsumer que celui qui autorise une activit ne lautorise que dans les limites de la lgalit. Cette prsomption peut tre rfute par la preuve quil existait une certaine relation ou un certain degr de contrle entre lauteur allgu de lautorisation et les personnes qui ont viol le droit dauteur. En lespce, aucune preuve ntablissait que les photocopieuses avaient t utilises dune manire incompatible avec les dispositions sur le droit dauteur. De plus, le Barreau, en affichant un avis o il dcline toute responsabilit relativement aux copies

The Law Society did not authorize copyright infringement by providing self-service photocopiers for use by its patrons in the Great Library. While authorization can be inferred from acts that are less than direct and positive, a person does not authorize infringement by authorizing the mere use of equipment that could be used to infringe copyright. Courts should presume that a person who authorizes an activity does so only so far as it is in accordance with the law. This presumption may be rebutted if it is shown that a certain relationship or degree of control existed between the alleged authorizer and the persons who committed the copyright infringement. Here, there was no evidence that the copiers had been used in a manner that was not consistent with copyright law. Moreover, the Law Societys posting of a notice warning that it will not be responsible for any copies made in infringement of copyright does not constitute an

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[2004] 1 R.C.S.
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express acknowledgement that the copiers will be used in an illegal manner. Finally, even if there were evidence of the copiers having been used to infringe copyright, the Law Society lacks sufficient control over the Great Librarys patrons to permit the conclusion that it sanctioned, approved or countenanced the infringement.

produites en violation du droit dauteur, na pas reconnu expressment que les photocopieuses seraient utilises de faon illicite. Enfin, mme si la preuve tablissait que les photocopieuses ont t utilises pour violer le droit dauteur, le Barreau na pas un contrle suffisant sur les usagers de la Grande bibliothque pour que lon puisse conclure quil a sanctionn, appuy ou soutenu la violation du droit dauteur. Il ny a pas eu violation du droit dauteur une tape ultrieure de la part du Barreau. En transmettant des copies des uvres des diteurs des avocats de lOntario, le Barreau ne les a pas communiques au public. La transmission rpte dune copie dune mme uvre de nombreux destinataires pourrait constituer une communication au public et violer le droit dauteur, mais aucune preuve na tabli que ce genre de transmission aurait eu lieu en lespce. Le Barreau na pas non plus viol le droit dauteur en vendant des copies des uvres des diteurs. En labsence de violation initiale du droit dauteur, il ne peut y avoir de violation une tape ultrieure. Enfin, bien quil ne soit pas ncessaire de trancher cette question, la Grande bibliothque est vise par lexception prvue pour les bibliothques. Jurisprudence Arrts appliqus : Muzak Corp. c. Composers, Authors and Publishers Association of Canada, Ltd., [1953] 2 R.C.S. 182; De Tervagne c. Belil (Ville), [1993] 3 C.F. 227; arrt non suivi : Moorhouse c. University of New South Wales, [1976] R.P.C. 151; arrts mentionns : Moreau c. St. Vincent, [1950] R.C. de l. 198; Goldner c. Socit Radio-Canada (1972), 7 C.P.R. (2d) 158; Grignon c. Roussel (1991), 38 C.P.R. (3d) 4; Thberge c. Galerie dArt du Petit Champlain inc., [2002] 2 R.C.S. 336, 2002 CSC 34; Bishop c. Stevens, [1990] 2 R.C.S. 467; Compo Co. c. Blue Crest Music Inc., [1980] 1 R.C.S. 357; Bell ExpressVu Limited Partnership c. Rex, [2002] 2 R.C.S. 559, 2002 CSC 42; University of London Press, Ltd. c. University Tutorial Press, Ltd., [1916] 2 Ch. 601; U & R Tax Services Ltd. c. H & R Block Canada Inc. (1995), 62 C.P.R. (3d) 257; Feist Publications Inc. c. Rural Telephone Service Co., 499 U.S. 340 (1991); Tl-Direct (Publications) Inc. c. American Business Information, Inc., [1998] 2 C.F. 22; dutile Inc. c. Assoc. pour la protection des automobilistes, [2000] 4 C.F. 195; Slumber-Magic Adjustable Bed Co. c. Sleep-King Adjustable Bed Co. (1984), 3 C.P.R. (3d) 81; Ladbroke (Football) Ltd. c. William Hill (Football) Ltd., [1964] 1 All E.R. 465; Composers, Authors and Publishers Association of Canada Ltd. c. CTV Television Network Ltd., [1968] R.C.S. 676; CBS Inc. c. Ames Records & Tapes Ltd., [1981] 2 All E.R. 812; Hubbard c. Vosper, [1972] 1 All E.R. 1023; Associated Newspapers Group

There was no secondary infringement by the Law Society. The Law Societys fax transmissions of copies of the respondent publishers works to lawyers in Ontario were not communications to the public. While a series of repeated fax transmissions of the same work to numerous different recipients might constitute communication to the public in infringement of copyright, there was no evidence of this type of transmission having occurred in this case. Nor did the Law Society infringe copyright by selling copies of the publishers works. Absent primary infringement, there can be no secondary infringement. Finally, while it is not necessary to decide the point, the Great Library qualifies for the library exemption.

Cases Cited Applied: Muzak Corp. v. Composers, Authors and Publishers Association of Canada, Ltd., [1953] 2 S.C.R. 182; De Tervagne v. Belil (Town), [1993] 3 F.C. 227; not followed: Moorhouse v. University of New South Wales, [1976] R.P.C. 151; referred to: Moreau v. St. Vincent, [1950] Ex. C.R. 198; Goldner v. Canadian Broadcasting Corp. (1972), 7 C.P.R. (2d) 158; Grignon v. Roussel (1991), 38 C.P.R. (3d) 4; Thberge v. Galerie dArt du Petit Champlain inc., [2002] 2 S.C.R. 336, 2002 SCC 34; Bishop v. Stevens, [1990] 2 S.C.R. 467; Compo Co. v. Blue Crest Music Inc., [1980] 1 S.C.R. 357; Bell ExpressVu Limited Partnership v. Rex, [2002] 2 S.C.R. 559, 2002 SCC 42; University of London Press, Ltd. v. University Tutorial Press, Ltd., [1916] 2 Ch. 601; U & R Tax Services Ltd. v. H & R Block Canada Inc. (1995), 62 C.P.R. (3d) 257; Feist Publications Inc. v. Rural Telephone Service Co., 499 U.S. 340 (1991); Tele-Direct (Publications) Inc. v. American Business Information, Inc., [1998] 2 F.C. 22; dutile Inc. v. Automobile Protection Assn., [2000] 4 F.C. 195; Slumber-Magic Adjustable Bed Co. v. Sleep-King Adjustable Bed Co. (1984), 3 C.P.R. (3d) 81; Ladbroke (Football) Ltd. v. William Hill (Football) Ltd., [1964] 1 All E.R. 465; Composers, Authors and Publishers Association of Canada Ltd. v. CTV Television Network Ltd., [1968] S.C.R. 676; CBS Inc. v. Ames Records & Tapes Ltd., [1981] 2 All E.R. 812; Hubbard v. Vosper, [1972] 1 All E.R. 1023; Associated Newspapers Group plc v. News Group Newspapers Ltd., [1986] R.P.C. 515;

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361

to do something that would not constitute copyright infringement. See Composers, Authors and Publishers Association of Canada Ltd. v. CTV Television Network Ltd., [1968] S.C.R. 676, at p. 680. The publishers argue that the Law Society is liable for breach of copyright under this section because it implicitly authorized patrons of the Great Library to copy works in breach of the Copyright Act.

ses propres droits. Autoriser une personne faire une chose qui ne constitue pas une contrefaon ne viole pas le droit dauteur. Voir Composers, Authors and Publishers Association of Canada Ltd. c. CTV Television Network Ltd., [1968] R.C.S. 676, p. 680. Les diteurs font valoir que le Barreau est responsable, en vertu de cette disposition, du non-respect du droit dauteur pour avoir autoris tacitement les usagers de la Grande bibliothque copier des uvres en contravention de la Loi sur le droit dauteur. Autoriser signifie sanctionner, appuyer ou soutenir ( sanction, approve and countenance ) : Muzak Corp. c. Composers, Authors and Publishers Association of Canada, Ltd., [1953] 2 R.C.S. 182, p. 193; De Tervagne c. Belil (Ville), [1993] 3 C.F. 227 (1re inst.). Lorsquil sagit de dterminer si une violation du droit dauteur a t autorise, il faut attribuer au terme countenance son sens le plus fort mentionn dans le dictionnaire, soit [TRADUCTION] approuver, sanctionner, permettre, favoriser, encourager : voir The New Shorter Oxford English Dictionary (1993), vol. 1, p. 526. Lautorisation est nanmoins une question de fait qui dpend de la situation propre chaque espce et peut sinfrer dagissements qui ne sont pas des actes directs et positifs, et notamment dun degr suffisamment lev dindiffrence : CBS Inc. c. Ames Records & Tapes Ltd., [1981] 2 All E.R. 812 (Ch. D.), p. 823824. Toutefois, ce nest pas autoriser la violation du droit dauteur que de permettre la simple utilisation dun appareil susceptible dtre utilis cette fin. Les tribunaux doivent prsumer que celui qui autorise une activit ne lautorise que dans les limites de la lgalit : Muzak, prcit. Cette prsomption peut tre rfute par la preuve quil existait une certaine relation ou un certain degr de contrle entre lauteur allgu de lautorisation et les personnes qui ont viol le droit dauteur : Muzak, prcit; De Tervagne, prcit. Voir galement J. S. McKeown, Fox Canadian Law of Copyright and Industrial Designs (4e d. (feuilles mobiles)), p. 21-104, et P. D. Hitchcock, Home Copying and Authorization (1983), 67 C.P.R. (2d) 17, p. 29-33.
38

Authorize means to sanction, approve and countenance: Muzak Corp. v. Composers, Authors and Publishers Association of Canada, Ltd., [1953] 2 S.C.R. 182, at p. 193; De Tervagne v. Belil (Town), [1993] 3 F.C. 227 (T.D.). Countenance in the context of authorizing copyright infringement must be understood in its strongest dictionary meaning, namely, [g]ive approval to; sanction, permit; favour, encourage: see The New Shorter Oxford English Dictionary (1993), vol. 1, at p. 526. Authorization is a question of fact that depends on the circumstances of each particular case and can be inferred from acts that are less than direct and positive, including a sufficient degree of indifference: CBS Inc. v. Ames Records & Tapes Ltd., [1981] 2 All E.R. 812 (Ch. D.), at pp. 823-24. However, a person does not authorize infringement by authorizing the mere use of equipment that could be used to infringe copyright. Courts should presume that a person who authorizes an activity does so only so far as it is in accordance with the law: Muzak, supra. This presumption may be rebutted if it is shown that a certain relationship or degree of control existed between the alleged authorizer and the persons who committed the copyright infringement: Muzak, supra; De Tervagne, supra; see also J. S. McKeown, Fox Canadian Law of Copyright and Industrial Designs (4th ed. (loose-leaf)), at p. 21-104, and P. D. Hitchcock, Home Copying and Authorization (1983), 67 C.P.R. (2d) 17, at pp. 29-33.

29
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[2004] 1 S.C.R.

(b) Application of the Law to These Facts

39

b) Application du droit aux faits Depuis plusieurs dcennies, le Barreau met des photocopieuses libre-service la disposition des usagers de la Grande bibliothque. Lutilisation de ces appareils par les usagers ne fait pas lobjet dune surveillance directe. Depuis le milieu des annes 80, lavis suivant est appos au-dessus de chaque appareil :
[TRADUCTION] La lgislation sur le droit dauteur au Canada sapplique aux photocopies et autres reproductions qui sont faites de documents protgs. Certaines reproductions peuvent constituer une violation du droit dauteur. La bibliothque nassume aucune responsabilit en cas de violations susceptibles dtre commises par les utilisateurs des photocopieuses.

For several decades, the Law Society has maintained self-service photocopiers for the use of its patrons in the Great Library. The patrons use of the machines is not monitored directly. Since the mid1980s, the Law Society has posted the following notice above each machine:
The copyright law of Canada governs the making of photocopies or other reproductions of copyright material. Certain copying may be an infringement of the copyright law. This library is not responsible for infringing copies made by the users of these machines.

At trial, the Law Society applied for a declaration that it did not authorize copyright infringement by providing self-service photocopiers for patrons of the Great Library. No evidence was tendered that the photocopiers had been used in an infringing manner.
40

En premire instance, le Barreau a demand un jugement dclaratoire portant quil navait pas autoris la violation du droit dauteur en mettant des photocopieuses libre-service la disposition des usagers de la Grande bibliothque. Aucun lment de preuve na t prsent pour tablir que les appareils avaient t utiliss de manire illicite. Le juge de premire instance a refus de se prononcer sur la question, en partie cause du caractre tnu de la preuve y affrente. La Cour dappel fdrale, sappuyant entre autres sur la dcision Moorhouse c. University of New South Wales, [1976] R.P.C. 151, de la Haute Cour dAustralie, a conclu que le Barreau avait tacitement sanctionn, appuy ou soutenu la violation du droit dauteur sur les uvres des diteurs en omettant de surveiller la ralisation des copies et en se contentant dafficher un avis dans lequel il dclinait toute responsabilit en cas de violation du droit dauteur. En toute dfrence, je ne crois pas que cela quivalait autoriser la violation du droit dauteur. La dcision Moorhouse, prcite, est incompatible avec la jurisprudence canadienne et britannique antrieure en la matire. Voir D. Vaver, Copyright Law (2000), p. 27, et McKeown, op. cit., p. 21-108. mon sens, linterprtation retenue dans Moorhouse penche trop en faveur des droits du titulaire et entrave inutilement lutilisation approprie des uvres protges pour le bien de lensemble de la socit.

The trial judge declined to deal with this issue, in part because of the limited nature of the evidence on this question. The Federal Court of Appeal, relying in part on the Australian High Court decision in Moorhouse v. University of New South Wales, [1976] R.P.C. 151, concluded that the Law Society implicitly sanctioned, approved or countenanced copyright infringement of the publishers works by failing to control copying and instead merely posting a notice indicating that the Law Society was not responsible for infringing copies made by the machines users.

41

With respect, I do not agree that this amounted to authorizing breach of copyright. Moorhouse, supra, is inconsistent with previous Canadian and British approaches to this issue. See D. Vaver, Copyright Law (2000), at p. 27, and McKeown, supra, at p. 21-108. In my view, the Moorhouse approach to authorization shifts the balance in copyright too far in favour of the owners rights and unnecessarily interferes with the proper use of copyrighted works for the good of society as a whole.

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42

Applying the criteria from Muzak, supra, and De Tervagne, supra, I conclude that the Law Societys mere provision of photocopiers for the use of its patrons did not constitute authorization to use the photocopiers to breach copyright law. First, there was no evidence that the photocopiers had been used in a manner that was not consistent with copyright law. As noted, a person does not authorize copyright infringement by authorizing the mere use of equipment (such as photocopiers) that could be used to infringe copyright. In fact, courts should presume that a person who authorizes an activity does so only so far as it is in accordance with the law. Although the Court of Appeal assumed that the photocopiers were being used to infringe copyright, I think it is equally plausible that the patrons using the machines were doing so in a lawful manner. Second, the Court of Appeal erred in finding that the Law Societys posting of the notice constitutes an express acknowledgement that the photocopiers will be used in an illegal manner. The Law Societys posting of the notice over the photocopiers does not rebut the presumption that a person authorizes an activity only so far as it is in accordance with the law. Given that the Law Society is responsible for regulating the legal profession in Ontario, it is more logical to conclude that the notice was posted for the purpose of reminding the Great Librarys patrons that copyright law governs the making of photocopies in the library. Finally, even if there were evidence of the photocopiers having been used to infringe copyright, the Law Society lacks sufficient control over the Great Librarys patrons to permit the conclusion that it sanctioned, approved or countenanced the infringement. The Law Society and Great Library patrons are not in a master-servant or employeremployee relationship such that the Law Society can be said to exercise control over the patrons who might commit infringement: see, for example, De Tervagne, supra. Nor does the Law Society exercise control over which works the patrons

partir des critres dgags dans Muzak et De Tervagne, prcits, je conclus que le Barreau, en mettant des photocopieuses la disposition des usagers, ne les a pas autoriss se servir des appareils pour contrevenir la lgislation sur le droit dauteur. Premirement, aucune preuve ntablit que les photocopieuses ont t utilises dune manire incompatible avec les dispositions sur le droit dauteur. Rappelons que ce nest pas autoriser la violation du droit dauteur que de permettre la simple utilisation dun appareil (comme une photocopieuse) susceptible dtre utilis cette fin. Les tribunaux doivent prsumer que celui qui autorise une activit ne lautorise que dans les limites de la lgalit. Mme si la Cour dappel a tenu pour acquis que les photocopieuses taient utilises pour violer le droit dauteur, je crois quil est galement plausible que les usagers de la bibliothque aient utilis les appareils de manire licite. Deuximement, la Cour dappel a eu tort de conclure que le Barreau, en affichant lavis, reconnaissait expressment que les photocopieuses seraient utilises de faon illicite. La prsence de lavis ne rfute pas la prsomption voulant quune personne nautorise une activit que dans les limites de la lgalit. tant donn que le Barreau rglemente lexercice du droit en Ontario, il est plus logique de conclure que lavis a t affich pour rappeler aux usagers de la Grande bibliothque que la photocopie de documents de la bibliothque est assujettie au rgime du droit dauteur. Enfin, mme si la preuve tablissait que les photocopieuses ont t utilises pour violer le droit dauteur, le Barreau na pas un contrle suffisant sur les usagers de la Grande bibliothque pour que lon puisse conclure quil a sanctionn, appuy ou soutenu la violation du droit dauteur. Il nexiste pas entre le Barreau et les usagers de la bibliothque une relation employeuremploy permettant de conclure que le Barreau exerce un contrle sur les usagers susceptibles de violer le droit dauteur : voir par exemple De Tervagne, prcit. Le Barreau nexerce

43

44

45

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v. LAW SOCIETY OF UPPER CANADA The Chief Justice

[2004] 1 S.C.R.

choose to copy, the patrons purposes for copying or the photocopiers themselves.

pas non plus de contrle sur les uvres que les usagers dcident de copier, sur les fins auxquelles ils les copient, ni sur les photocopieuses elles-mmes. En rsum, jestime que la preuve ne rvle pas que le Barreau a autoris la violation du droit dauteur en mettant des photocopieuses libreservice ainsi que des exemplaires des uvres des diteurs intims la disposition des usagers de la Grande bibliothque. Je ferais droit ce moyen dappel. (3) Le Barreau et lutilisation quitable La Grande bibliothque offre un service de photocopie. la demande davocats, dtudiants en droit, de membres de la magistrature ou de chercheurs autoriss, son personnel prpare des photocopies dextraits douvrages juridiques faisant partie de sa collection et les leur transmet. La question est de savoir si ce service bnficie de lexception prvue lart. 29 de la Loi sur le droit dauteur, qui dispose que [l]utilisation quitable dune uvre ou de tout autre objet du droit dauteur aux fins dtude prive ou de recherche ne constitue pas une violation du droit dauteur. a) Le droit Avant dexaminer la porte de lexception au titre de lutilisation quitable que prvoit la Loi sur le droit dauteur, il importe de clarifier certaines considrations gnrales relatives aux exceptions la violation du droit dauteur. Sur le plan procdural, le dfendeur doit prouver que son utilisation de luvre tait quitable; cependant, il est peut-tre plus juste de considrer cette exception comme une partie intgrante de la Loi sur le droit dauteur plutt que comme un simple moyen de dfense. Un acte vis par lexception relative lutilisation quitable ne viole pas le droit dauteur. linstar des autres exceptions que prvoit la Loi sur le droit dauteur, cette exception correspond un droit des utilisateurs. Pour maintenir un juste quilibre entre les droits des titulaires du droit dauteur et les intrts des utilisateurs, il ne faut pas linterprter restrictivement. Comme le professeur Vaver,

46

In summary, I conclude that evidence does not establish that the Law Society authorized copyright infringement by providing self-service photocopiers and copies of the respondent publishers works for use by its patrons in the Great Library. I would allow this ground of appeal. (3) The Law Society and Fair Dealing

47

The Great Library provides a custom photocopy service. Upon receiving a request from a lawyer, law student, member of the judiciary or authorized researcher, the Great Library staff photocopies extracts from legal material within its collection and sends it to the requester. The question is whether this service falls within the fair dealing defence under s. 29 of the Copyright Act which provides: Fair dealing for the purpose of research or private study does not infringe copyright.

(a) The Law

48

Before reviewing the scope of the fair dealing exception under the Copyright Act, it is important to clarify some general considerations about exceptions to copyright infringement. Procedurally, a defendant is required to prove that his or her dealing with a work has been fair; however, the fair dealing exception is perhaps more properly understood as an integral part of the Copyright Act than simply a defence. Any act falling within the fair dealing exception will not be an infringement of copyright. The fair dealing exception, like other exceptions in the Copyright Act, is a users right. In order to maintain the proper balance between the rights of a copyright owner and users interests, it must not be interpreted restrictively. As Professor Vaver, supra, has explained, at p. 171: User rights are not just loopholes. Both owner rights and user rights should therefore be given the fair

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ICLR: Appeal Cases/1878/Volume 3/FREDERICK B. CHATTERTON AND BENJAMIN WEBSTER APPELLANTS; AND JOSEPH ARNOLD CAVE RESPONDENT. - (1878) 3 App.Cas. 483 (1878) 3 App.Cas. 483

[HOUSE OF LORDS.] FREDERICK B. CHATTERTON AND BENJAMIN WEBSTER APPELLANTS; AND JOSEPH ARNOLD CAVE RESPONDENT.

1878 March 7, 28.

LORD HATHERLEY, LORD O'HAGAN, LORD BLACKBURN and LORD GORDON. Dramatic Copyright - Materiality of Imitation - Judge's Explanation. There cannot be a violation of the 3 & 4 Will. 4, c. 15, s. 2, where the matter or thing taken from the first work and introduced into the second is not material and substantial. A. had produced a drama on the tale as written, and the play as acted, of "The Wandering Jew," the authorship of M. Eugne Sue, but had introduced two scenic representations into his production, not to be found in the French original; and B. afterwards produced a drama on the same subject, in which these two scenic representations were also introduced; an arbitrator had found "that two scenes or points had been taken direct from the drama of the Plaintiffs, but that the drama of the Defendant is not, except in these respects, a copy from or a colourable imitation of the drama of the Plaintiffs," and had directed the verdict to be entered for the Defendant:Held, that the finding was conclusive. The words in the statute "production or any part thereof" must receive a reasonable construction, and are to be treated as implying some part that is substantial and material. At the trial the cause had been withdrawn from the jury and submitted to the decision of the Judge. On a motion that the verdict should be entered for the Plaintiffs, or a new trial granted, on the

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ground that the representation, by the Defendant, of part of the Plaintiffs' play had been found as a fact, the Judge (who was a member of the Court where the case was pending) explained to his brethren on the Bench what was the meaning he intended to convey by the finding:Held, that it was competent for him to do so. IN this case an action had been brought under the 3 & 4 Will. 4, c. 15 (the Dramatic Copyright Act), against the Defendant in respect of his having committed an infringement of the copyright of the Plaintiffs in a drama founded on the novel by Eugne Sue, called "The Wandering Jew." There had been a drama in French founded on the same novel, and the version claimed by the Plaintiffs, prepared by Mr. Lewis and assigned by him to them, was an adaptation from the French. The Defendant had since brought out (1878) 3 App.Cas. 483 Page 484 another adaptation, which it was alleged was, in part, an imitation of the former, and had thereby committed an infringement of the Plaintiff's copyright. The cause came on for trial before Lord Coleridge, C.J., at the Middlesex Sittings after Trinity Term, 1874. After the case had been partly heard it was agreed between the parties that the jury should be discharged, that Lord Coleridge should "read the plays and novel, and have evidence on such points as he may desire, either given before him, or the result found for him by an arbitrator, and thereupon to enter verdict. Either party to have leave to move the Court upon the finding. Plays or novel to be referred to by the Court on the argument. All points of law reserved." On the 2nd of September, 1874, his Lordship published his finding, which was in the following terms: "I find in this case that two scenes or points of the drama of the Defendant have been taken direct from the drama of which Mr. Lewis was the author and the Plaintiffs the assignees, without recourse to either the French novel or the French drama, originals common to the dramas of both the Plaintiffs and Defendant. I find this, first, in respect of the final scene of the Defendant's drama; and, secondly, of the appearance of the Wandering Jew, and the stage business connected with that appearance, which are to be found in the second scene of the second act of the Defendant's drama, and in the fourth scene of the first act of the Plaintiffs' drama. I find that the drama of the Defendant is not, except in these respects, a copy from, or a colorable imitation of, the drama of the Plaintiffs. I direct the verdict to be entered for the Defendant. I assess the damages at 40s., if, upon argument, as provided by the terms agreed to at the trial, the Court should be of opinion that the verdict ought to be entered for the Plaintiffs."

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The case was argued upon a rule obtained to enter the verdict for the Plaintiffs. When the rule came on for hearing, Lord Coleridge was present and explained the grounds on which his finding proceeded, and in his judgment said: "What I meant to convey by my finding was, that two points or situations there had been an imitation of the Plaintiffs' drama by the Defendant. These points, so copied, were not parts of the composition or dialogue of the Plaintiffs' drama, but were in the nature of dramatic situations (1878) 3 App.Cas. 483 Page 485 or scenic effects. It appeared to me that, looking to the general character of the two dramas respectively, the extent to which the one was taken from the other was so slight, and the effect upon the total composition was so small, that there was no substantial and material taking of any one portion of the Defendant's drama from any portion of the Plaintiffs'." The rule to enter the verdict for the Plaintiffs was discharged (1). On appeal this decision was affirmed (2). Mr. Higgins, Q.C., and Mr. H. Poulter (Mr. C. N. Watts, and Mr. A. B. Terrell, were with them), for the Appellants:The ground on which the finding was said to be based was erroneous in fact and in law. In fact, the parts of the Plaintiffs' drama which were imitated in the Defendant's drama were substantial and material; they were called in the finding "points," but they were effective representations and striking dramatic incidents, and gave a character to the whole performance. But even if they had only been "points" they were "parts" of the dramatic representation, and so came within the very words of the statute. The law which applied to dramatic representations was not entirely like that which applied to book writing; of the two it was necessarily stronger and more restrictive on a pirating dramatist, for a "point" in a drama might really involve a whole scene and give a character to the whole drama itself. The imitation here was so close that in fact, the two subject matters, the original and the imitation, were identical. That fact, however, seemed to have been overlooked in the Court below. The principle on which the construction of the Act ought to proceed was clearly pointed out in Planch v. Braham (3). There the singing of a very small part of the Plaintiff's production was held to bring the case within the Act. In the Court below (4) the expressions used by Lord Cottenham in Bramwell v. Halcombe (5) were misunderstood and misapplied, for Lord Cottenham distinctly said "it is not quantity, but value, that is to be looked to." That is what the Appellants say here. The scenes, or "points," as they were called, were

(1)

Law Rep. 10 C. P. 572, where the facts are fully stated.

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(5)

Ibid. at p. 268.

(6)

Law Rep. 8 Ex. 1.

(7)

3 K. & J. 708.

(8)

Law Rep. 10 C. P. 580.

(9)

The River Wear Company v. Adamson, 2 App. Ca. 743.

(1878) 3 App.Cas. 483 Page 489 always received upon the argument on a motion to enter the verdict for one party or the other. Mr. Poulter replied.

LORD HATHERLEY :My Lords, in this case the Appellants were the Plaintiffs, and the Respondent Defendant, in an action brought in the Court of Common Pleas by the Plaintiffs, who claimed to be proprietors of a dramatic piece called "The Wandering Jew," and who alleged against the Defendant that he had caused to be represented divers parts, scenes, stage-play, and dramatic business of such piece at a place of dramatic entertainment without the consent in writing, or at all, of the Plaintiffs, contrary to the provisions of the 3 & 4 Will. 4, c. 15, s. 2. The Defendant pleaded not guilty, and also that the Plaintiffs were not proprietors of the work. The case came on for trial before Lord Coleridge, when it was agreed, "that the jury should be

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discharged, and that Lord Coleridge should read the original French novel and the French play, and the Plaintiffs, and Defendant's versions, and should order how the verdict should be entered, having power to hear evidence on such points as he desired." Some points of law had been raised on behalf of the Defendant, as to the date and sufficiency of the assignment from Leopold David Lewis to the Plaintiffs, and it was part of the said agreement that "leave was reserved to either party to move on any point of law that had arisen or might arise." On the 2nd of September, 1874, the Lord Chief Justice delivered to the solicitors of the parties his finding:- [His Lordship read it: see ante, p. 484.] On the 7th of November, 1874, a rule was granted by the Court of Common Pleas calling on the Defendant to shew cause why the verdict should not be set aside and a verdict entered for the Plaintiffs, pursuant to leave reserved or a new trial had between the parties, on the ground of misdirection in this, that the Judge, upon the finding, should have caused the verdict to be entered for the Plaintiffs, as representation by the Defendant of part of the Plaintiffs' play was found. This rule came on to be argued before the Court, consisting of Lord Chief Justice Coleridge, Mr. Justice (1878) 3 App.Cas. 483 Page 490 (now Lord Justice) Brett, Mr. Justice Grove, and Mr. Justice Lindley, who unanimously concurred in discharging the rule with costs. At the hearing on this occasion, Lord Chief Justice Coleridge stated verbally that what he meant to convey by his finding was that, looking to the general character of the Plaintiffs' and Defendant's dramas, the extent to which the one was taken from the other was so slight, and the effect upon the total composition was so small, that there was no substantial and material taking of any one portion of the Defendant's drama from any portion of the Plaintiffs'. The Plaintiffs appealed from this judgment to the Court of Appeal and, on the 30th of November, 1876, that Court, then consisting of the Lord Chief Justice of England, Lord Justice Mellish, Lord Justice Amphlett, and Lord Justice Bramwell, unanimously affirmed the judgment of the Court of Common Pleas, and from this decision the Plaintiffs have appealed to your Lordships' House. Under these circumstances, my Lords, it appears to me that your Lordships must regard as established the facts found by Lord Chief Justice Coleridge under the reference made by the order of the 19th of June, 1874. I take these facts to be - 1st. That the Defendant did take two scenes of his drama, viz, those specified in Lord Coleridge's note, direct from the drama the right of property in which is in the Appellants. 2nd. That such taking was not a substantial and material taking of any one portion of the Plaintiffs' drama. An attempt has been made to limit this finding to the written note of the Lord Chief Justice. It has

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(1)

4 Bing. N. C. 17.

(1878) 3 App.Cas. 483 Page 500 was entitled to a judgment. But the Court affirmed the verdict, holding that the question before it must "in all cases" be determined by a jury. "It is difficult," said the Chief Justice, "to say what is or is not a representation of a part of a dramatic production, .... and it must be left to a jury to determine the fact." All the Judges concurred in this opinion and refused to interfere, without regard to the merits of the finding, because the question was within the jury's province and had been properly left to their decision. The ruling of Lord Coleridge appears to me to be sustained by this case in all its parts. As a Judge, he declined to direct the jury in the Defendant's favour merely because there had been a talking of the "points;" and in that refusal the judgment in Planch v. Braham (1) expressly approves his course. On the reference to him as a jury, he found the fact that those points did not constitute a part of the drama; and the same judgment declares that such a finding, having been legitimately made by the proper tribunal, ought not to be disturbed. The judgments of the Court of Appeal and the Court of Common Pleas must, in my opinion, be affirmed, and the appeal dismissed, with costs.

LORD BLACKBURN :My Lords, I also am of that opinion. The 3 & 4 Will. 4, c. 15, contains only two sections. The first section enacts that the author of any dramatic piece or his assignee, shall have as his own property the sole liberty of representing or causing to be represented, any such production at any place of dramatic entertainment in any part of the British dominions, and shall be deemed and taken to be the proprietor thereof. Had the statute stopped there, the proprietor of the dramatic work would have had a right to recover damages against any one who infringed his right of property by representing the production, or so much of the production as to infringe his right of property in it, but there might have been frequently difficulty in getting a jury to find more than nominal damages, and the Plaintiff would get no costs. At least, those who framed the Act seem to have thought so; for by the 2nd section it is provided

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Lordships should do so too. And this enables the Plaintiffs to raise farther points, and to contend not only that a representation of a drama, two points in which were taken direct from the Plaintiffs' drama, was necessarily in point of law a representation of part of the Plaintiffs' drama (on which I have already expressed my opinion as being against the Plaintiffs), but also that in coming to the conclusion that it was not such a representation, the Chief Justice acted on wrong grounds. If the Chief Justice had left the question to the jury, and told the jurors in his summing-up that it was proper for them to consider exactly the same things which he says were the grounds of his own decision; if he had told them that, in considering the question whether the Defendant had represented part of the Plaintiffs' drama, they were to consider not only whether the Defendant took these two points direct from the Plaintiffs' drama, but also the nature of the two points which were not parts of the dialogue or composition of the Plaintiffs' drama, but were in the nature of dramatic situations or scenic effects; and that they were also to consider the general character of the two dramas, and the extent to which one was taken from the other, and its effect upon the total composition, and then to say for themselves whether, in representing the Defendant's drama, the Defendant represented what was a part of the Plaintiffs' drama, which was, as Planch v. Braham (2) decides, a question to some extent of degree; would such a summing-up have been a misdirection? If it would, I am inclined to think that the finding, though by a Judge alone, would have been liable to question in the nature of an application for a new trial; but it is unnecessary to decide that, if, as I think, such a direction would have been unexceptionable. I do not say that this direction would have been exhaustive. In other cases there may be other considerations proper to be left to a jury, but every one of those above-mentioned was proper in

(1)

Law Rep. 10 C. P. 572.

(2)

4 Bing. N. C. 17.

(1878) 3 App.Cas. 483 Page 504 the present case; and I see nothing requisite for the decision of this case which has been omitted.

LORD GORDON :-

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Wayne Crookes and West Coast Title Search Ltd. Appellants v. Jon Newton Respondent and Canadian Civil Liberties Association, Samuelson-Glushko Canadian Internet Policy and Public Interest Clinic, NetCoalition, British Columbia Civil Liberties Association, Canadian Newspaper Association, Ad IDEM/Canadian Media Lawyers Association, Magazines Canada, Canadian Journalists for Free Expression, Writers Union of Canada, Professional Writers Association of Canada, PEN Canada and Canadian Publishers Council Interveners
Indexed as: Crookes v. Newton 2011 SCC 47 File No.: 33412. 2010: December 7; 2011: October 19. Present: McLachlin C.J. and Binnie, LeBel, Deschamps, Fish, Abella, Charron, Rothstein and CromwellJJ.

Wayne Crookes et West Coast Title Search Ltd. Appelants c. Jon Newton Intim et Association canadienne des liberts civiles, Clinique dintrt public et de politique dinternet du Canada Samuelson-Glushko, NetCoalition, Association des liberts civiles de la Colombie-Britannique, Association canadienne des journaux, Ad IDEM/ Canadian Media Lawyers Association, Magazines Canada, Journalistes canadiens pour la libert dexpression, Writers Union of Canada, Professional Writers Association of Canada, PEN Canada et Canadian Publishers Council Intervenants
Rpertori: Crookes c. Newton 2011 CSC 47 No du greffe: 33412. 2010: 7 dcembre; 2011: 19 octobre. Prsents: La juge en chef McLachlin et les juges Binnie, LeBel, Deschamps, Fish, Abella, Charron, Rothstein et Cromwell.
EN APPEL DE LA COUR DAPPEL DE LA COLOMBIE-BRITANNIQUE

ON APPEAL FROM THE COURT OF APPEAL FOR BRITISH COLUMBIA

Torts Libel and slander Publication Internet Defendant creating hyperlinks to allegedly defamatory articles Whether hyperlinking, in and of itself, constitutes publication. N owns and operates a website in British Columbia containing commentary about various issues, including free speech and the Internet. One of the articles he posted on it contained shallow and deep hyperlinks to other websites, which in turn contained information about C. C sued N on the basis that two of the hyperlinks he created connected to defamatory material, and

Responsabilit dlictuelle Diffamation Diffusion Internet Le dfendeur a cr des hyperliens menant des articles prtendument diffamatoires Le fait de crer des hyperliens constitue-t-il en soi de la diffusion? N possde et exploite en Colombie-Britannique un site Web commentant divers sujets, dont la question de la libert dexpression dans le contexte de lInternet. Lun des articles qui y figuraient comprenait des hyperliens simples et profonds menant dautres sites Web dans lesquels se trouvaient des renseignements au sujet de C. Ca poursuivi N, allguant que deux des

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that by using those hyperlinks, N was publishing the defamatory information. At trial, the judge concluded that the mere creation of a hyperlink in a website does not lead to a presumption that someone actually used the hyperlink to access the impugned words. The judge agreed that hyperlinks were analogous to footnotes since they only refer to another source without repeating it. Since there was no repetition, there was no publication. Furthermore, in the absence of evidence that anyone other than C used the links and read the words to which they linked, there could not be a finding of publication. A majority of the Court of Appeal upheld the decision, finding that while some words in an article may suggest that a particular hyperlink is an encouragement or invitation to view the impugned site, there was no such encouragement or invitation in this case. In addition, the number of hits on the article itself was an insufficient basis for drawing an inference in this case that a third party had read the defamatory words. The dissenting judge held that there was publication. The fact that Ns website had been viewed 1,788 times made it unlikely that no one had followed the hyperlinks and read the impugned article. Furthermore, the context of the article suggested that readers were encouraged or invited to click on the links.

hyperliens crs par ce dernier renvoyaient des propos diffamatoires et que N avait ainsi diffus de linformation diffamatoire son gard. Au procs, le juge a conclu que la simple cration dun hyperlien dans un site Web nentranait pas une prsomption quon avait effectivement utilis cet hyperlien pour accder aux mots en cause. Le juge tait daccord que les hyperliens sapparentaient des notes de bas de page puisquils ne faisaient que renvoyer une autre source sans toutefois en rpter le contenu. Sans rptition, il ne pouvait y avoir eu diffusion. Par surcrot, en labsence de toute preuve tablissant que qui que ce soit dautre que C avait suivi les liens et lu les mots auxquels ils menaient, il tait impossible de conclure quil y avait eu diffusion. Les juges majoritaires de la Cour dappel ont maintenu la dcision, concluant quil pouvait arriver que certains mots dun article donnent penser quun hyperlien donn constitue un encouragement ou une invitation se rendre au site vis, mais ce ntait pas le cas en lespce. De plus, le nombre de visites relativement larticle lui-mme ne constituait pas un fondement suffisant pour infrer quen lespce un tiers avait lu les mots diffamatoires. La juge dissidente a conclu quil y avait eu diffusion, jugeant quil tait peu probable, compte tenu du fait que le site Web de N avait t consult 1 788 fois, que personne nait suivi les hyperliens et lu les articles en cause. En outre, il ressortait du contexte dans lequel sinscrivait larticle de N quil encourageait ou invitait les lecteurs cliquer sur les liens. Arrt: Le pourvoi est rejet.

Held: The appeal should be dismissed.

Per Binnie, LeBel, Abella, Charron, Rothstein and Cromwell JJ.: To prove the publication element of defamation, a plaintiff must establish that the defendant has, by any act, conveyed defamatory meaning to a single third party who has received it. Traditionally, the form the defendants act takes and the manner in which it assists in causing the defamatory content to reach the third party are irrelevant. Applying this traditional rule to hyperlinks, however, would have the effect of creating a presumption of liability for all hyperlinkers. This would seriously restrict the flow of information on the Internet and, as a result, freedom of expression.

Les juges Binnie, LeBel, Abella, Charron, Rothstein et Cromwell: Pour tablir, dans le cadre dune action en diffamation, quil y a eu diffusion des propos viss, le plaignant doit prouver que le dfendeur a, par le biais dun acte quelconque, transmis des propos diffamatoires au moins un tiers, qui les a reus. Traditionnellement, la forme que revt cet acte et la faon dont il contribue permettre au tiers dy accder sont dnues de pertinence. Lapplication de cette rgle traditionnelle aux hyperliens aurait cependant pour effet de crer une prsomption de responsabilit lgard de tous ceux qui crent des hyperliens. Cela restreindrait gravement la circulation de linformation dans lInternet et, partant, la libert dexpression. Les hyperliens constituent essentiellement des renvois, qui diffrent fondamentalement dautres actes de diffusion. Tant les hyperliens que les renvois signalent lexistence dune information sans toutefois en communiquer eux-mmes le contenu. Ils obligent le tiers qui souhaite prendre connaissance du contenu poser un certain acte avant de pouvoir le faire. Le

Hyperlinks are, in essence, references, which are fundamentally different from other acts of publication. Hyperlinks and references both communicate that something exists, but do not, by themselves, communicate its content. They both require some act on the part of a third party before he or she gains access to the content. The fact that access to that content is far easier

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with hyperlinks than with footnotes does not change the reality that a hyperlink, by itself, is content-neutral. Furthermore, inserting a hyperlink into a text gives the author no control over the content in the secondary article to which he or she has linked.

fait quil soit beaucoup plus facile daccder au contenu dun texte par le biais dhyperliens que par des notes de bas de page ne change rien au fait que lhyperlien en luimme est neutre sur le plan du contenu. En outre, le seul fait dincorporer un hyperlien dans un article ne confre pas lauteur de celui-ci un quelconque contrle sur le contenu de larticle secondaire auquel il mne. Lhyperlien, en lui-mme, ne devrait jamais tre assimil la diffusion du contenu auquel il renvoie. Lorsquune personne se rend, par le biais dun hyperlien, une source secondaire qui contient des mots diffamatoires, cest la personne mme qui cre ou affiche les mots diffamatoires dans le contenu secondaire qui se trouve diffuser le libelle. Ce nest que lorsque la personne qui cre lhyperlien prsente les propos auxquels ce dernier renvoie dune faon qui, en fait, rpte le contenu diffamatoire, que celui-ci doit tre considr comme ayant t diffus par elle. En lespce, rien dans la page Web de N nest en soi prsent comme tant diffamatoire. Puisque lutilisation dun hyperlien ne peut, en soi, quivaloir de la diffusion mme si on le suit en vue de consulter le contenu diffamatoire auquel il mne, N na pas diffus le contenu diffamatoire et laction de C ne saurait tre accueillie. La juge en chef McLachlin et le juge Fish: Nous souscrivons en grande partie aux motifs des juges majoritaires. Cependant, selon nous, lhyperlien quivaut de la diffusion sil ressort du texte qui le contient, interprt en fonction de son contexte, que lauteur adopte le contenu auquel il renvoie, ou y adhre. Le simple renvoi gnral un site Web ne suffit pas pour conclure quil y a eu diffusion. La juge Deschamps: Soustraire les hyperliens la rgle en matire de diffusion constituerait une solution inadquate aux nouveaux problmes soulevs par lInternet. Une telle exclusion gnrale accentuerait la diffrence qui existe entre les renvois et les autres formes de diffusion et traiterait tous les renvois de la mme faon, quil sagisse des notes de bas de page ou des hyperliens. Ce faisant, elle omettrait de reconnatre que les renvois varient considrablement dans la manire dont ils permettent des tiers dobtenir de linformation diffamatoire, et, par consquent, dans le tort quils peuvent causer la rputation des gens. En common law en matire de diffamation, la diffusion comporte donc deux volets: (1) un acte qui rend linformation diffamatoire disponible un tiers, dans un format comprhensible, et (2) la rception de linformation par le tiers, de telle sorte quil en comprend le sens.

A hyperlink, by itself, should never be seen as publication of the content to which it refers. When a person follows a hyperlink to a secondary source that contains defamatory words, the actual creator or poster of the defamatory words in the secondary material is the person who is publishing the libel. Only when a hyperlinker presents content from the hyperlinked material in a way that actually repeats the defamatory content, should that content be considered to be published by the hyperlinker. Here, nothing on Ns page is itself alleged to be defamatory. Since the use of a hyperlink cannot, by itself, amount to publication even if the hyperlink is followed and the defamatory content is accessed, N has not published the defamatory content and Cs action cannot succeed. Per McLachlin C.J. and Fish J.: The reasons of the majority are agreed with substantially. However, a hyperlink should constitute publication if, read contextually, the text that includes the hyperlink constitutes adoption or endorsement of the specific content it links to. A mere general reference to a Web site is not enough to find publication. Per Deschamps J.: Excluding hyperlinks from the scope of the publication rule is an inadequate solution to the novel issues raised by the Internet. This blanket exclusion exaggerates the difference between references and other acts of publication, and treats all references, from footnotes to hyperlinks, alike, thereby disregarding the fact that references vary greatly in how they make defamatory information available to third parties and, consequently, in the harm they can cause to peoples reputations.

In the common law of defamation, publication has two components: (1) an act that makes the defamatory information available to a third party in a comprehensible form, and (2) the receipt of the information by a third party in such a way that it is understood.

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In the context of Internet hyperlinks, a simple reference, absent evidence that someone actually viewed and understood the defamatory information to which it directs third parties, is not publication of that content. In order to satisfy the requirements of the first component of publication, the plaintiff must establish, on a balance of probabilities, that the hyperlinker performed a deliberate act that made defamatory information readily available to a third party in a comprehensible form. An act is deliberate if the defendant played more than a passive instrumental role in making the information available. In determining whether hyperlinked information is readily available, a court should consider a number of factors, including whether the hyperlink is user-activated or automatic, whether it is a shallow or a deep link, and whether the linked information is available to the general public (as opposed to being restricted). Any matter that has a bearing on the ease with which the referenced information could be accessed will be relevant to the inquiry.

Dans le contexte des hyperliens dans lInternet, le simple renvoi de linformation diffamatoire, en labsence de preuve que quelquun en a bel et bien pris connaissance et la comprise, ne constitue pas une diffusion de celle-ci. Pour satisfaire aux exigences du premier volet de la diffusion, le plaignant doit prouver, selon la prpondrance des probabilits, que la personne qui a cr lhyperlien a pos un acte dlibr qui a rendu linformation diffamatoire immdiatement disponible un tiers, dans un format comprhensible. Lacte du dfendeur est dlibr si ce dernier jouait un rle qui dpassait le rle instrumental passif en rendant linformation disponible. Pour dcider si linformation laquelle mne un hyperlien est immdiatement disponible, le tribunal doit prendre en considration certains facteurs, notamment sil sagit dun hyperlien activ par lutilisateur ou automatique, sil sagit dun lien superficiel ou profond, et si linformation laquelle mne le lien est accessible au grand public (ou sil sagit plutt dun contenu accs restreint). Tout ce qui a une incidence sur la facilit avec laquelle on peut prendre connaissance des propos en cause sera pertinent cet gard. Pour avoir gain de cause, la personne qui intente une action en diffamation doit galement tablir, selon la prpondrance des probabilits, que les exigences du deuxime volet de la diffusion sont satisfaites, savoir quun tiers a reu et compris linformation diffamatoire. Il est possible de satisfaire ces exigences soit en produisant une preuve directe, soit en demandant au tribunal de tirer une infrence sur la base de certains facteurs, notamment sil sagissait dun lien activ par lutilisateur ou automatique; sil sagissait dun lien profond ou superficiel; si la page contenait plus dun hyperlien et, dans laffirmative, lendroit o se trouvait le lien contest par rapport aux autres; le contexte dans lequel le lien tait prsent aux utilisateurs; le nombre de visites de la page contenant lhyperlien; le nombre de visites de la page o figurait linformation auquel le lien renvoyait (avant que ce dernier nait t affich et aprs quil la t); si les sites Web en cause taient accessibles au grand public ou sil sagissait plutt de sites accs restreint; si des changements avaient t apports linformation laquelle menait le lien et, le cas chant, le lien qui existe entre ces changements et le nombre de visites de la page dans laquelle se trouvait linformation; et enfin, la preuve relative au comportement des internautes. Si le plaignant parvient tablir que la responsabilit du dfendeur pour diffamation est, premire vue, engage, il incombe alors ce dernier dinvoquer les moyens de dfense qui sont sa disposition. En lespce, N tait plus quun simple intermdiaire en rendant linformation vise disponible. Il a agi

For an action in defamation to succeed, the plaintiff must also satisfy the requirements of the second component of publication on a balance of probabilities, namely that a third party received and understood the defamatory information. This requirement can be satisfied either by adducing direct evidence or by asking the court to draw an inference based on, notably, whether the link was user-activated or automatic; whether it was a deep or a shallow link; whether the page contained more than one hyperlink and, if so, where the impugned link was located in relation to others; the context in which the link was presented to users; the number of hits on the page containing the hyperlink; the number of hits on the page containing the linked information (both before and after the page containing the link was posted); whether access to the Web sites in question was general or restricted; whether changes were made to the linked information and, if so, how they correlate with the number of hits on the page containing that information; and evidence concerning the behaviour of Internet users. Once the plaintiff establishes prima facie liability for defamation, the defendant can invoke any available defences.

Here, N acted as more than a mere conduit in making the hyperlinked information available. His action was

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deliberate. However, having regard to the totality of the circumstances, it cannot be inferred that the first, shallow hyperlink made the defamatory content readily available. The various articles were not placed on the other sites home page and they had separate addresses. The fact that the reader had to take further action in order to find the defamatory material constituted a meaningful barrier to the receipt, by a third party, of the linked information. The second, deep hyperlink, however, did make the content readily available. All the reader had to do to gain access to the article was to click on the link, which does not constitute a barrier to the availability of the material. Thus, C has satisfied the requirements of the first component of publication on a balance of probabilities where this link is concerned. However, the nature of Ns article, the way the various links were presented and the number of hits on the article do not support an inference that the allegedly defamatory information was brought to the knowledge of some third person. The defamation action with respect to either of the impugned hyperlinks cannot succeed.

dlibrment. Toutefois, compte tenu de lensemble des circonstances, on ne peut infrer que le premier hyperlien, qui tait un lien superficiel, rendait le contenu diffamatoire immdiatement disponible. Les divers articles ne figuraient pas sur la page daccueil de lautre site Web et ils avaient des adresses distinctes. Le fait que le lecteur devait naviguer davantage afin de trouver le contenu diffamatoire constituait un obstacle important franchir pour obtenir linformation vise. Cependant, le deuxime hyperlien, qui tait un lien profond, rendait effectivement le contenu immdiatement disponible. Pour consulter larticle, le lecteur navait qu activer lhyperlien dun seul clic de souris, ce qui ne constitue pas un obstacle la disponibilit des propos quil contenait. Par consquent, C a tabli, selon la prpondrance des probabilits, que les exigences du premier volet de la diffusion taient satisfaites pour ce qui est de ce lien. Cependant, la nature de larticle de N, la faon dont les liens taient prsents et le nombre de visites de larticle ne permettent pas dinfrer que linformation prtendument diffamatoire a t porte la connaissance dun tiers quelconque. Laction en diffamation intente relativement lun ou lautre des hyperliens contests ne saurait tre accueillie. Jurisprudence Cite par la juge Abella Arrt appliqu: McNichol c. Grandy, [1931] R.C.S. 696; arrt approuv: Carter c. B.C. Federation of Foster Parents Assn., 2005 BCCA 398, 42 B.C.L.R. (4th) 1; arrts mentionns: Grant c. Torstar Corp., 2009 CSC 61, [2009] 3 R.C.S. 640; Gaskin c. Retail Credit Co., [1965] R.C.S. 297; Stanley c. Shaw, 2006 BCCA 467, 231 B.C.A.C. 186; Hiltz and Seamone Co. c. Nova Scotia (Attorney General) (1997), 164 N.S.R. (2d) 161, conf. en partie par (1999), 173 N.S.R. (2d) 341; Truth (N.Z.) Ltd. c. Holloway, [1960] 1 W.L.R. 997; Lambert c. Thomson, [1937] O.R. 341; Pullman c. Walter Hill & Co., [1891] 1 Q.B. 524; R. c. Clerk (1728), 1 Barn. K.B. 304, 94 E.R. 207; Hird c. Wood (1894), 38 S.J. 234; Buchanan c. Jennings, [2004] UKPC 36, [2005] 1 A.C. 115; Polson c. Davis, 635 F.Supp. 1130 (1986), conf. par 895 F.2d 705 (1990); Crain c. Lightner, 364 S.E.2d 778 (1987); Spike c. Golding (1895), 27 N.S.R. 370; Socit canadienne des auteurs, compositeurs et diteurs de musique c. Assoc. canadienne des fournisseurs Internet, 2004 CSC 45, [2004] 2 R.C.S. 427; Vizetelly c. Mudies Select Library, Ltd., [1900] 2 Q.B. 170; Sun Life Assurance Co. of Canada c. W.H. Smith and Son Ltd. (1934), 150 L.T. 211; Bunt c. Tilley, [2006] EWHC 407, [2006] 3 All E.R. 336; Metropolitan International Schools Ltd. c. Designtechnica Corpn., [2009] EWHC 1765, [2011] 1 W.L.R. 1743; Klein c.

Cases Cited By Abella J. Applied: McNichol v. Grandy, [1931] S.C.R. 696; approved: Carter v. B.C. Federation of Foster Parents Assn., 2005 BCCA 398, 42 B.C.L.R. (4th) 1; referred to: Grant v. Torstar Corp., 2009 SCC 61, [2009] 3 S.C.R. 640; Gaskin v. Retail Credit Co., [1965] S.C.R. 297; Stanley v. Shaw, 2006 BCCA 467, 231 B.C.A.C. 186; Hiltz and Seamone Co. v. Nova Scotia (Attorney General) (1997), 164 N.S.R. (2d) 161, affd in part (1999), 173 N.S.R. (2d) 341; Truth (N.Z.) Ltd. v. Holloway, [1960] 1 W.L.R. 997; Lambert v. Thomson, [1937] O.R. 341; Pullman v. Walter Hill & Co., [1891] 1 Q.B. 524; R. v. Clerk (1728), 1 Barn. K.B. 304, 94 E.R. 207; Hird v. Wood (1894), 38 S.J. 234; Buchanan v. Jennings, [2004] UKPC 36, [2005] 1 A.C. 115; Polson v. Davis, 635 F.Supp. 1130 (1986), affd 895 F.2d 705 (1990); Crain v. Lightner, 364 S.E.2d 778 (1987); Spike v. Golding (1895), 27 N.S.R. 370; Society of Composers, Authors and Music Publishers of Canada v. Canadian Assn. of Internet Providers, 2004 SCC 45, [2004] 2 S.C.R. 427; Vizetelly v. Mudies Select Library, Ltd., [1900] 2 Q.B. 170; Sun Life Assurance Co. of Canada v. W. H. Smith and Son Ltd. (1934), 150 L.T. 211; Bunt v. Tilley, [2006] EWHC 407, [2006] 3 All E.R. 336; Metropolitan International Schools Ltd. v. Designtechnica Corpn., [2009] EWHC 1765, [2011] 1 W.L.R. 1743; Klein v. Biben, 296 N.Y. 638 (1946);

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MacFadden v. Anthony, 117 N.Y.S.2d 520 (1952); Zeran v. America Online, Inc., 129 F.3d 327 (1997); Barrett v. Rosenthal, 146 P.3d 510 (2006); Fair Housing Council of San Fernando Valley v. Roommates.Com, LLC, 521 F.3d 1157 (2008); Dell Computer Corp. v. Union des consommateurs, 2007 SCC 34, [2007] 2 S.C.R. 801; Hill v. Church of Scientology of Toronto, [1995] 2 S.C.R. 1130; WIC Radio Ltd. v. Simpson, 2008 SCC 40, [2008] 2 S.C.R. 420; Reno v. American Civil Liberties Union, 521 U.S. 844 (1997); Barrick Gold Corp. v. Lopehandia (2004), 71 O.R. (3d) 416; Botiuk v. Toronto Free Press Publications Ltd., [1995] 3 S.C.R. 3; Knupffer v. London Express Newspaper, Ltd., [1944] A.C. 116; Butler v. Southam Inc., 2001 NSCA 121, 197 N.S.R. (2d) 97; Bou Malhab v. Diffusion Mtromdia CMR inc., 2011 SCC 9, [2011] 1 S.C.R. 214. By McLachlin C.J. and Fish J. Referred to: Hill v. Church of Scientology of Toronto, [1995] 2 S.C.R. 1130. By Deschamps J. Applied: McNichol v. Grandy, [1931] S.C.R. 696; referred to: WIC Radio Ltd. v. Simpson, 2008 SCC 40, [2008] 2 S.C.R. 420; Grant v. Torstar Corp., 2009 SCC 61, [2009] 3 S.C.R. 640; Gaskin v. Retail Credit Co., [1965] S.C.R. 297; Hill v. Church of Scientology of Toronto, [1995] 2 S.C.R. 1130; Society of Composers, Authors and Music Publishers of Canada v. Canadian Assn. of Internet Providers, 2004 SCC 45, [2004] 2 S.C.R. 427; Gambrill v. Schooley, 93 Md. 48 (1901); Dell Computer Corp. v. Union des consommateurs, 2007 SCC 34, [2007] 2 S.C.R. 801; Carter v. B.C. Federation of Foster Parents Assn., 2005 BCCA 398, 42 B.C.L.R. (4th) 1; MacFadden v. Anthony, 117 N.Y.S.2d 520 (1952); Klein v. Biben, 296 N.Y. 638 (1946); Lambert v. Thomson, [1937] O.R. 341; Botiuk v. Toronto Free Press Publications Ltd., [1995] 3 S.C.R. 3; Day v. Bream (1837), 2 M. & Rob. 54, 174 E.R. 212; R. v. Clerk (1728), 1 Barn. K.B. 304, 94 E.R. 207; Godfrey v. Demon Internet Ltd., [1999] 4 All E.R. 342; Dow Jones & Co. v. Gutnick, [2002] HCA 56, 210 C.L.R. 575; Stanley v. Shaw, 2006 BCCA 467, 231 B.C.A.C. 186; Smith v. Matsqui (Dist.) (1986), 4 B.C.L.R. (2d) 342; Wilson v. Meyer, 126 P.3d 276 (2005); Pond v. General Electric Co., 256 F.2d 824 (1958); Scott v. Hull, 259 N.E.2d 160 (1970); Byrne v. Deane, [1937] 1 K.B. 818; Hellar v. Bianco, 244 P.2d 757 (1952); Tacket v. General Motors Corp., 836 F.2d 1042 (1987); Urbanchich v. Drummoyne Municipal Council (1991), Aust. Torts Rep. 81-127; Frawley v. State of New South Wales, [2007] NSWSC 1379 (AustLII); Underhill v. Corser, [2010] EWHC 1195 (BAILII); Bunt v. Tilley, [2006] EWHC

Biben, 296 N.Y. 638 (1946); MacFadden c. Anthony, 117 N.Y.S.2d 520 (1952); Zeran c. America Online, Inc., 129 F.3d 327 (1997); Barrett c. Rosenthal, 146 P.3d 510 (2006); Fair Housing Council of San Fernando Valley c. Roommates.Com, LLC, 521 F.3d 1157 (2008); Dell Computer Corp. c. Union des consommateurs, 2007 CSC 34, [2007] 2 R.C.S. 801; Hill c. glise de scientologie de Toronto, [1995] 2 R.C.S. 1130; WIC Radio Ltd. c. Simpson, 2008 CSC 40, [2008] 2 R.C.S. 420; Reno c. American Civil Liberties Union, 521 U.S. 844 (1997); Barrick Gold Corp. c. Lopehandia (2004), 71 O.R. (3d) 416; Botiuk c. Toronto Free Press Publications Ltd., [1995] 3 R.C.S. 3; Knupffer c. London Express Newspaper, Ltd., [1944] A.C. 116; Butler c. Southam Inc., 2001 NSCA 121, 197 N.S.R. (2d) 97; Bou Malhab c. Diffusion Mtromdia CMR inc., 2011 CSC 9, [2011] 1 R.C.S. 214. Cite par la juge en chef McLachlin et le juge Fish Arrt mentionn: Hill c. glise de scientologie de Toronto, [1995] 2 R.C.S. 1130. Cite par la juge Deschamps Arrt appliqu: McNichol c. Grandy, [1931] R.C.S. 696; arrts mentionns: WIC Radio Ltd. c. Simpson, 2008 CSC 40, [2008] 2 R.C.S. 420; Grant c. Torstar Corp., 2009 CSC 61, [2009] 3 R.C.S. 640; Gaskin c. Retail Credit Co., [1965] R.C.S. 297; Hill c. glise de scientologie de Toronto, [1995] 2 R.C.S. 1130; Socit canadienne des auteurs, compositeurs et diteurs de musique c. Assoc. canadienne des fournisseurs Internet, 2004 CSC 45, [2004] 2 R.C.S. 427; Gambrill c. Schooley, 93 Md. 48 (1901); Dell Computer Corp. c. Union des consommateurs, 2007 CSC 34, [2007] 2 R.C.S. 801; Carter c. B.C. Federation of Foster Parents Assn., 2005 BCCA 398, 42 B.C.L.R. (4th) 1; MacFadden c. Anthony, 117 N.Y.S.2d 520 (1952); Klein c. Biben, 296 N.Y. 638 (1946); Lambert c. Thomson, [1937] O.R. 341; Botiuk c. Toronto Free Press Publications Ltd., [1995] 3 R.C.S. 3; Day c. Bream (1837), 2 M. & Rob. 54, 174 E.R. 212; R. c. Clerk (1728), 1 Barn. K.B. 304, 94 E.R. 207; Godfrey c. Demon Internet Ltd., [1999] 4 All E.R. 342; Dow Jones & Co. c. Gutnick, [2002] HCA 56, 210 C.L.R. 575; Stanley c. Shaw, 2006 BCCA 467, 231 B.C.A.C. 186; Smith c. Matsqui (Dist.) (1986), 4 B.C.L.R. (2d) 342; Wilson c. Meyer, 126 P.3d 276 (2005); Pond c. General Electric Co., 256 F.2d 824 (1958); Scott c. Hull, 259 N.E.2d 160 (1970); Byrne c. Deane, [1937] 1 K.B. 818; Hellar c. Bianco, 244 P.2d 757 (1952); Tacket c. General Motors Corp., 836 F.2d 1042 (1987); Urbanchich c. Drummoyne Municipal Council (1991), Aust. Torts Rep. 81-127; Frawley c. State of New South Wales, [2007] NSWSC 1379 (AustLII); Underhill c. Corser, [2010] EWHC 1195

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281

allegedly defamatory content, and that the defamatory meaning has therefore been published. (See Gaskin v. Retail Credit Co., [1965] S.C.R. 297.) In view of my conclusion that hyperlinking is not, in and of itself, publication, there is no need to address this argument. II. Analysis [16] To prove the publication element of defamation, a plaintiff must establish that the defendant has, by any act, conveyed defamatory meaning to a single third party who has received it (McNichol v. Grandy, [1931] S.C.R. 696, at p. 699). Traditionally, the form the defendants act takes and the manner in which it assists in causing the defamatory content to reach the third party are irrelevant:
There are no limitations on the manner in which defamatory matter may be published. Any act which has the effect of transferring the defamatory information to a third person constitutes a publication.

en cause pour accder au contenu diffamatoire et quil y a donc eu diffusion de propos ayant un sens diffamatoire. (Voir Gaskin c. Retail Credit Co., [1965] R.C.S. 297.) Vu ma conclusion que la cration dun hyperlien ne constitue pas en soi de la diffusion, il nest pas ncessaire dexaminer cet argument. II. Analyse [16] Pour tablir, dans le cadre dune action en diffamation, quil y a eu diffusion des propos viss, le demandeur doit prouver que le dfendeur a, par le biais dun acte quelconque, transmis des propos diffamatoires au moins un tiers, qui les a reus (McNichol c. Grandy, [1931] R.C.S. 696, p. 699). Traditionnellement, la forme que revt cet acte et la faon dont il contribue permettre au tiers dy accder sont dnues de pertinence:
[TRADUCTION] La faon dont linformation diffamatoire peut tre diffuse ne connat aucune limite. Tout acte qui a pour effet de transfrer cette information un tiers constitue donc de la diffusion.

(Stanley v. Shaw, 2006 BCCA 467, 231 B.C.A.C. 186, at para. 5, citing Raymond E. Brown, The Law of Defamation in Canada (2nd ed.), vol.1, at No.7.3.) See also Hiltz and Seamone Co. v. Nova Scotia (Attorney General) (1997), 164 N.S.R. (2d) 161 (S.C.), at para. 21, affd in part (1999), 173 N.S.R. (2d) 341 (C.A.); Grant, at para. 119; Truth (N.Z.) Ltd. v. Holloway, [1960] 1 W.L.R. 997 (P.C.); Lambert v. Thomson, [1937] O.R. 341 (C.A.), per Rowell C.J.O.; Pullman v. Walter Hill & Co., [1891] 1 Q.B. 524 (C.A.), at p. 527, per Lord Esher M.R. [17] Mr. Crookes argues that, under this definition, a person who includes a hyperlink on a webpage has published any defamatory remarks to which the hyperlink leads, because that person has done an act which has the effect of transferring the defamatory information to any third person who clicks on the link. [18] Under this sole disseminator/sole reader paradigm, the breadth of activity captured by the

(Stanley c. Shaw, 2006 BCCA 467, 231 B.C.A.C. 186, par. 5, citant Raymond E. Brown, The Law of Defamation in Canada (2e d.), vol.1, No.7.3.) Voir aussi Hiltz and Seamone Co. c. Nova Scotia (Attorney General) (1997), 164 N.S.R. (2d) 161 (C.S.), par. 21, conf. en partie par (1999), 173 N.S.R. (2d) 341 (C.A.); Grant, par. 119; Truth (N.Z.) Ltd. c. Holloway, [1960] 1 W.L.R. 997 (C.P.); Lambert c. Thomson, [1937] O.R. 341 (C.A.), le juge en chef Rowell; Pullman c. Walter Hill & Co., [1891] 1 Q.B. 524 (C.A.), p. 527, le lord Esher M.R. [17] M. Crookes soutient que suivant cette dfinition la personne qui incorpore un hyperlien dans une page Web a diffus toute remarque diffamatoire laquelle mne celui-ci, tant donn quelle a accompli un acte qui [TRADUCTION] a pour effet de transfrer linformation diffamatoire tout tiers qui clique sur lhyperlien. [18] Suivant ce modle du dissminateur unique/ lecteur unique, le champ dactivits vis par la

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282
CROOKES v.NEWTON

Abella J.

[2011] 3 S.C.R.

traditional publication rule is vast. In R. v. Clerk (1728), 1 Barn. K.B. 304, 94 E.R. 207, for example, a printers servant, whose only role in an act of publication was to clap down the printing press, was found responsible for the libels contained in that publication, despite the fact that he was not aware of the contents (p. 207). In Hird v. Wood (1894), 38 S.J. 234 (C.A.), pointing at a sign displaying defamatory words was held to be evidence of publication. Other cases have also held that acts merely facilitating communication can amount to publication: see, e.g., Buchanan v. Jennings, [2004] UKPC 36, [2005] 1 A.C. 115; Polson v. Davis, 635 F.Supp. 1130 (D.Kan. 1986), affd 895 F.2d 705 (10th Cir. 1990); Crain v. Lightner, 364 S.E.2d 778 (W.Va. 1987), at p. 785; and Spike v. Golding (1895), 27 N.S.R. 370 (S.C. in banco). And in McNichol v. Grandy, the defendant was found to be liable when he raised his voice and made defamatory statements that were overheard by someone in another room.

rgle traditionnellement applicable en matire de diffusion est trs tendu. Dans R. c. Clerk (1728), 1 Barn. K.B. 304, 94 E.R. 207, par exemple, le tribunal a jug que la responsabilit de lemploy dun imprimeur, dont le seul rle dans lacte de diffusion consistait [TRADUCTION] appuyer sur la presse, tait engage en raison des libelles que contenait linformation diffuse, et ce malgr le fait quil en ignorait le contenu (p. 207). Dans Hird c. Wood (1894), 38 S.J. 234 (C.A.), il a t jug que montrer du doigt une pancarte sur laquelle on pouvait lire des mots diffamatoires constituait une preuve de diffusion. Dans dautres affaires, il a galement t jug que des actes ne faisant que faciliter la communication pouvaient quivaloir de la diffusion: voir, p.ex., Buchanan c. Jennings, [2004] UKPC 36, [2005] 1 A.C. 115; Polson c. Davis, 635 F.Supp. 1130 (D. Kan. 1986), conf. par 895 F.2d 705 (10th Cir. 1990); Crain c. Lightner, 364 S.E.2d 778 (W.Va. 1987), p. 785; et Spike c. Golding (1895), 27 N.S.R. 370 (C.S. in banco). En outre, dans McNichol c. Grandy, la responsabilit du dfendeur a t retenue parce quil avait lev la voix et tenu des propos diffamatoires qui avaient t entendus par une personne se trouvant dans une autre pice. [19] La rgle en matire de diffusion vise galement lensemble des comportements qui suivent:
[TRADUCTION] [Le sens diffamatoire] peut tre communiqu directement par le dfendeur, oralement ou sous une forme crite ou imprime quelconque, ou encore par le biais dune manifestation symbolique, dune pantomime, dune mimique, dune brochure, dun geste, dun feuillet, dune lettre, dune photographie, dune pancarte, dune affiche, dun criteau ou dune caricature. Il peut tre inscrit sur un tableau ou affich sur un miroir ou un poteau de tlphone, ou paratre sur le mur dun immeuble ou le mur pignon de la maison du dfendeur, figurer sur un chque, tre saisi dans une base de donnes ou consult sur un site Web dans lInternet ou tlcharg dun tel site. Il peut figurer sur une bannire tire par un avion, ou encore le dfendeur peut attirer lattention dune personne sur une affiche ou dun texte diffamatoire dj en circulation. Le dfendeur peut donner accs des propos diffamatoires un tiers ou laisser ces derniers dans un endroit o dautres personnes pourront les voir, ou il peut inviter dautres personnes se rendre un

[19] The publication rule has also captured the following range of conduct:
[The defamatory meaning] may be communicated directly by the defendant either orally, or in some written or printed form, or by way of a symbolic ceremony, dramatic pantomime, mime, brochure, gesture, handbill, letter, photograph, placard, poster, sign, or cartoon. It may be inscribed on a blackboard, posted on a mirror or a telephone pole, or placed on the wall of a building or the gable wall of the defendants property, or on the front of a cheque, or entered in a database, or accessed on or downloaded from a website on the internet. It may appear on an ariel banner flown behind an airplane, or someones attention may be drawn by the defendant to a poster, or a defamatory writing already in circulation. A third person may be given access to defamatory material, or defamatory matter may be left in a place where others can see it, or the defendant may request others to go to a place where the defamatory information is available to see and read it, or it may be set into motion as a result of the defendants

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283

death. In each case there is a publication. [Footnotes omitted.]

endroit o elles pourront voir ou lire les renseignements diffamatoires; par ailleurs, la diffamation peut avoir lieu par suite du dcs du dfendeur. Dans chaque cas, il y a une diffusion. [Notes en bas de page omises.]

(Raymond E. Brown, Brown on Defamation (2nd ed. (loose-leaf)), at para.7.3) [20] Defendants obtained some relief from the rules significant breadth with the development of the innocent dissemination defence, which protects those who play a secondary role in the distribution system, such as news agents, booksellers, and libraries: Allen M. Linden and Bruce Feldthusen, Canadian Tort Law (8th ed. 2006), at pp. 783-84; see also Society of Composers, Authors and Music Publishers of Canada v. Canadian Assn. of Internet Providers, 2004 SCC 45, [2004] 2 S.C.R. 427 (SOCAN ), at para. 89; Philip H. Osborne, The Law of Torts (4th ed. 2011), at p. 411. Such subordinate distributors may escape liability by showing that they have no actual knowledge of an alleged libel, are aware of no circumstances to put them on notice to suspect a libel, and committed no negligence in failing to find out about the libel (SOCAN, at para. 89; Vizetelly v. Mudies Select Library, Ltd., [1900] 2 Q.B. 170 (C.A.), at p. 180; Brown, at para. 7.12(6)(c); and also Sun Life Assurance Co. of Canada v. W.H. Smith and Son Ltd. (1934), 150 L.T. 211 (C.A.), at pp.212-14).

(Raymond E. Brown, Brown on Defamation (2e d. (feuilles mobiles)), par.7.3) [20] Il est arriv que des dfendeurs chappent en partie la porte tendue de la rgle grce llaboration du moyen de dfense fond sur la diffusion de bonne foi dont peuvent se prvaloir [TRADUCTION] ceux qui nont quun rle secondaire dans le rseau de distribution, tels que les distributeurs de journaux, les librairies et les bibliothques: Allen M. Linden et Bruce Feldthusen, Canadian Tort Law (8e d. 2006), p. 783-784; voir aussi Socit canadienne des auteurs, compositeurs et diteurs de musique c. Assoc. canadienne des fournisseurs Internet, 2004 CSC 45, [2004] 2 R.C.S. 427 (SOCAN ), par. 89; Philip H. Osborne, The Law of Torts (4e d. 2011), p. 411. De tels distributeurs accessoires peuvent se dgager de leur responsabilit en prouvant quils nont aucune connaissance de la diffamation allgue, nont aucune raison de supposer son existence et nont pas fait preuve de ngligence en ne la dcouvrant pas (SOCAN, par. 89; Vizetelly c. Mudies Select Library, Ltd., [1900] 2 Q.B. 170 (C.A.), p. 180; Brown, par. 7.12(6)(c); et aussi Sun Life Assurance Co. of Canada c. W.H. Smith and Son Ltd. (1934), 150 L.T. 211 (C.A.), p.212-214). [21] Des dcisions rcentes semblent indiquer que certains actes sont si passifs quils ne devraient mme pas tre considrs comme de la diffusion. Dans Bunt c. Tilley, [2006] EWHC 407, [2006] 3 All E.R. 336 (B.R.), la cour a conclu, au sujet de lventuelle responsabilit dun fournisseur de services Internet, qu[TRADUCTION] [i]l ne suffit pas que la personne prenne part au processus en ny jouant quun rle passif pour que sa responsabilit puisse tre engage en tant que diffuseur; elle doit prendre part en connaissance de cause au processus de diffusion des mots pertinents (par. 23 (en italique dans loriginal); voir aussi Metropolitan International Schools Ltd. c. Designtechnica Corpn., [2009] EWHC 1765, [2011] 1 W.L.R. 1743 (B.R.)).

[21] Recently, jurisprudence has emerged suggesting that some acts are so passive that they should not be held to be publication. In Bunt v. Tilley, [2006] EWHC 407, [2006] 3 All E.R. 336 (Q.B.), considering the potential liability of an Internet service provider, the court held that in order to hold someone liable as a publisher, [i]t is not enough that a person merely plays a passive instrumental role in the process; there must be knowing involvement in the process of publication of the relevant words (para. 23 (emphasis in original); see also Metropolitan International Schools Ltd. v. Designtechnica Corpn., [2009] EWHC 1765, [2011] 1 W.L.R. 1743 (Q.B.)).

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Indexed as:

dutile Inc. v. Automobile Protection Assn. (C.A.)

dutile Inc. (Appellant) v. Automobile Protection Association (APA) (Respondent) [2000] 4 F.C. 195 [2000] F.C.J. No. 513 Court File No. A-4-98

Federal Court of Canada - Court of Appeal Dcary, Ltourneau and Nol JJ.A. Heard: Montral, March 13, 2000. Judgment: Ottawa, April 19, 2000. Copyright -- Infringement -- Appellant claiming copyright in price guides for used automobiles, trucks -- Guides directed at consumer clientele using three markets described in three columns -Whether "compilation" protected by Copyright Act -- Originality for copyright purposes found in form chosen to express idea -- Appellant's copyright resulting from selection, layout of two juxtaposed columns dealing with "Private Sale" market, "Retail Value" market -- Work independently created by author, displaying minimal degree of skill, judgment, labour -Respondent reproducing in own guide original feature of appellant's guide -- "Substantial part" of appellant's work appropriated -- Permanent injunction granted -- Matter referred back to F.C.T.D. for assessment of damages other than exemplary, moral damages. This was an appeal from a Trial Division decision dismissing an action for a permanent injunction on the ground that the guides published by appellant did not exhibit the necessary creativity to merit protection under the Copyright Act. In 1994, the appellant published two works: "Used Car Price Guide includes new cars (Spring/Summer 1994)" and "Used Truck Price Guide includes new trucks (Spring/Summer 1994)", both targeted at consumers rather than dealers. For the purposes of its guides, the appellant selected three types of transaction, namely: "Trade-in", "Private Sale" and "Retail Value", which were set out in three columns placed vertically, the "Private Sale" column being in the middle, the "Trade-in" on the left and "Retail" on the right. The appellant sought

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copyright over what the Court called a sub-compilation, alleging that no guide before its own was directed at consumer clientele using the three markets described in the three columns of its guides. In early 1996, the respondent published its own price guide which, in the appellant's submission, infringed its copyright. Two issues were raised on appeal: (1) whether a copyright subsisted in the appellant's work, and (2) if so, whether that copyright was infringed by the respondent's guide. [page196] Held, the appeal should be allowed. (1) The appellant's guides are works resulting from the selection or arrangement of data, but are they a "compilation" protected by the Copyright Act? The history, nature and scope of the protection provided by the Act for compilations has recently been considered by the Federal Court of Appeal in Tele-Direct (Publications) Inc. v. American Business Information, Inc., a decision which the Trial Judge was unaware of when he released his judgment herein. Since the adoption of the North American Free Trade Agreement Implementation Act, a "compilation" enjoys independent protection which is now provided by section 2 of the Copyright Act. In the Tele-Direct case, it was said that, for a compilation of data to be original, it must be a work that was independently created by the author and which displays at least a minimal degree of skill, judgment and labour in its overall selection or arrangement. While not defined in the Act, the word "author" conveys a sense of creativity and ingenuity. In claiming copyright over its work, the appellant relied not on the presentation of the columns but on the selection and presentation, until then unavailable, of the standards for comparison. The fact that another guide existed was irrelevant as originality for copyright purposes is to be found in the form chosen to express the idea, not in the eventual recipients or users of the form selected. The Trial Judge erred in failing to take into account the testimony of the president of the respondent itself, who admitted that setting out the "private sale" market and the "retail value" market side by side in columns was a "brilliant", "innovative" move. In using the "private sale" category and placing it in a column beside another column relating to the retail value, the appellant organized its information according to unpublished standards of selection for the first time in Quebec and in Canada. Such a work was independently created by the author and displayed at least a minimal degree of skill, judgment and labour in its overall selection or arrangement. Copyright accordingly subsisted, resulting from the selection and layout of two juxtaposed columns, one dealing with the "private sale" market and the other with the "retail value" market. (2) It was admitted by the respondent's president that the Association had reproduced in its guide what he acknowledged to be the original feature of the appellant's guide. The question here was whether a "substantial part" (Act, subsection 3(1)) of appellant's work had been reproduced. To determine whether a "substantial part" of a protected work has been reproduced, it is not the quantity as much as the [page197] quality and nature of what was reproduced that matters. The respondent appropriated a "substantial part", indeed the very essence, of the appellant's work within

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the meaning of the case law. In terms of quality and nature, what clearly distinguished the appellant's guide and what the respondent's guide clearly took over, was the layout. Without this borrowing, the respondent's guide would be of no interest to consumers. As to the appropriate remedies, the permanent injunction sought by the appellant should be granted. It appeared that counsel, as well as the Trial Judge, assumed that the assessment of damages would be the subject of a separate proceeding. However, appellant's counsel stated at trial that his client was claiming only $1 as exemplary and moral damages. The matter was accordingly referred back to the Trial Division for the assessment of damages other than exemplary and moral damages. Statutes and Regulations Judicially Considered Copyright Act, R.S.C., 1985, c. C-42, ss. 2 "compilation" (as am. by S.C. 1993, c. 44, s. 53), 3(1) (as am. by S.C. 1997, c. 24, s. 3), 13 (as am. idem, s. 10). Federal Court Rules, 1998, SOR/98-106, r. 386, Tariff B, Column I. North American Free Trade Agreement Implementation Act, S.C. 1993, c. 44. Cases Judicially Considered Applied: Tele-Direct (Publications) Inc. v. American Business Information, Inc., [1998] 2 F.C. 22; (1997), 154 D.L.R. (4th) 328; 37 B.L.R. (2d) 101; 76 C.P.R. (3d) 296; 221 N.R. 113 (C.A.). leave to appeal to S.C.C. refused [1998] 1 S.C.R. xv. Tele-Direct (Publications) Inc. v. American Business Information, Inc. (1996), 27 B.L.R. (2d) 1; 113 F.T.R. 123 (F.C.T.D.). Referred to: ditions JCL Inc. v. 91439 Canada Lte, [1995] 1 F.C. 380; (1994), 120 D.L.R. (4th) 225; 58 C.P.R. (3d) 38; 175 N.R. 241 (C.A.). Breen v. Hancock House Publishers Ltd. (1985), 6 C.I.P.R. 129; 6 C.P.R. (3d) 433 (F.C.T.D.). Ladbroke (Football), Ltd. v. William Hill (Football) Ltd., [1964] 1 All E.R. 465 (H.L.). Beauchemin v. Cadieux (1900), 10 B.R. 255 (Qu.); affd by (1901), 31 S.C.R. 370. Authors Cited Pouillet, Eugne. Trait thorique et pratique de la proprit littraire et artistique et du droit de reprsentation. [page198] Paris: Imprimerie et Librarie gnrale de jurisprudence, 1879. Vaver, David. Copyright Law, Toronto: Irwin Law Inc., 2000. APPEAL from a Trial Division decision ( (1997), 81 C.P.R. (3d) 338; 143 F.T.R. 210) dismissing an action for a permanent injunction on the ground that the guides published by appellant did not display sufficient creativity to merit Copyright Act protection. Appeal allowed.

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offer a private seller for his or her vehicle", which it said referred to the "trade-in" market. In this connection, the APA president explained that the "trade-in" category was in his opinion too subjective and unreliable--he had in fact recommended to dutile himself, when they were doing business together, that this [page207] category be replaced by that of "wholesale"--and that accordingly in his own guide he had used the "wholesale" market. 18 Having noted these differences, the fact remains that it was established by the admission of the APA president himself that the latter had reproduced in its guide what he himself said was the original feature of the dutile guide. 19 20 Is such reproduction an infringement within the meaning of the Copyright Act? Subsection 3(1) of the Act (amended by S.C. 1997, c. 24, s. 3) states that: 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 ... . 21 There was no reproduction here of the protected work. However, was there reproduction of a "substantial part" of the work? 22 To determine whether a "substantial part" of a protected work has been reproduced, it is not the quantity which was reproduced that matters as much as the quality and nature of what was reproduced.7 In Beauchemin v. Cadieux,8 Blanchet J. cited with approval at page 281 this passage from Pouillet, Proprit littraire, No. 507: [TRANSLATION] "It would be risky to confine oneself to determining the number or extent of the borrowings: it is their quality and nature that should be looked at." To enter upon a simple calculation of percentages or proportions in order to determine whether there was an infringement would be to unduly minimize the protection given to copyright. In a copyright matter a part may be as important as the whole, and this seems especially relevant when we are considering arrangements of data which are in the public domain. 23 It seems clear that APA appropriated a "substantial part", indeed the very essence, of dutile's [page208] work within the meaning of the case law. In quantity terms, the essence of the APA and dutile guides is the presentation on each page of a column describing the "Private Sale" market beside a column describing the "Retail Value" market. In terms of quality and nature, what clearly distinguished the dutile guide and what the APA guide clearly took over, was precisely this layout. Without this borrowing the APA guide would be of no interest to consumers. I do not attach great importance to the fact that the left-hand columns do not have the same title and at least on their face do not refer to the same market, as the evidence disclosed that it is the middle column, with its

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unpublished market, beside a column describing the "Retail Value" market, which was of particular interest to the APA. 24 I note in passing that the evidence further disclosed that the APA reproduced the original portion of the dutile guide with full knowledge of the facts; that as soon as the APA guide was published the sales of the dutile guide dropped significantly; and that the market covered by both guides is the same outside of Quebec. Appropriate remedies 25 The action must therefore be allowed and the permanent injunction sought by dutile granted.

26 In its "amended statement of claim for permanent injunction", the plaintiff sought the following conclusions: [TRANSLATION]

35. The plaintiff reserves all its remedies in damages against the defendant; ... FOR THESE REASONS, MAY IT PLEASE THIS HONOURABLE COURT TO:

ALLOW the instant application;

ORDER the defendant to refrain subject to all legal penalties from writing, publishing, distributing, selling, directly or indirectly or serving as an intermediary in the distribution, sale or design of an automobile guide using the three categories designed and developed by the plaintiff;

[page209]

ORDER the defendant to withdraw or cause to be withdrawn any copies of its guide titled "Used Automobile Price Guide (Spring/Summer 96)" and to submit a list of its sales of this Guide to the plaintiff;

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Australian Law Reports/Judgments/272 ALR/FAIRFAX MEDIA PUBLICATIONS PTY LTD (ACN 003 357 720) v REED INTERNATIONAL BOOKS AUSTRALIA PTY LTD (ACN 001 002 357) (t/as LEXISNEXIS) - 272 ALR 547 - 7 September 2010 43 pages

FAIRFAX MEDIA PUBLICATIONS PTY LTD (ACN 003 357 720) v REED INTERNATIONAL BOOKS AUSTRALIA PTY LTD (ACN 001 002 357) (t/as LEXISNEXIS) - (2010) 272 ALR 547
FEDERAL COURT OF AUSTRALIA Bennett J 2-5 September 2008, 23 July 2009, 7 September 2010 -- Sydney [2010] FCA 984 Intellectual property -- Copyright -- Subsistence -- Edition of newspaper (edition work) constituted literary work -- Compilation comprising newspaper article including headline and byline (article compilation) constituted literary work -- Edition work and article compilation were works of joint authorship and original literary works -- Copyright subsisted in edition work and article compilation -- (CTH) Copyright Act 1968 ss 10, 31, 32, 127, 129. Intellectual property -- Copyright -- Infringement -- Originality of edition work and article compilation comprised in selection, coordination and arrangement of works -- Abstracting service did not take any part of original works -- Abstracting service did not take substantial part of edition work or article compilation -- Reproduction and communication of abstracts for abstracting service amounted to fair dealing for purpose of reporting news -- Abstracting service did not infringe copyright -- (CTH) Copyright Act 1968 s 42. Words and phrases -- "news reporting" -- "copyright" -- "joint authorship" -- "original literary work" -- "fair dealing" -- "estoppel". Fairfax Media Publications Pty Ltd (Fairfax) published The Australian Financial Review (AFR), which was a national newspaper published on each day of the week other than Sunday, in paper form to the general public in each state and territory and electronically in digital form to subscribers in Australia and elsewhere. Reed International Books Australia Pty Ltd (Reed) provided a service known as "ABIX", which involved the provision to subscribers of abstracts of articles published in various newspapers and magazines, including articles in the AFR (the ABIX service). Each abstract included the headline of the article, which was the subject of the abstract, typically without alteration, the by-line of the journalist who wrote the article and a short summary of the article written by an employee of Reed. Typically, abstracts of around 40-60% of articles in each edition of the AFR

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(the abstracts) were provided as part of the ABIX service. The arrangement of the abstracts within the ABIX service as presented to subscribers was not the same as the arrangement of those articles in the AFR. Fairfax alleged that, by reason of the provision of such abstracts as part of the ABIX service, Reed infringed its copyright in a number of different works comprised in each edition of the AFR, which Fairfax contended were original literary works in which copyright subsisted pursuant to the Copyright Act 1968 (Cth) (the Act). Fairfax further alleged that, in the preparation of the abstracts, Reed took the whole or a substantial part of each of the original literary works, which included: (1) each individual headline in an AFR edition; (2) each article, including its headline and by-line, written by journalists employed by Fairfax and published in an AFR edition (article/headline combination); (3) the compilation consisting of all of the articles, including their headlines and by-lines, in an AFR edition (article compilation); and (4) each entire edition of the AFR (edition work). 272 ALR 547 at 548 Reed denied any infringement of copyright on the ground that none of the contended works, other than the edition work, was capable of being a work within the meaning of the Act or a work in which copyright was proven to subsist. Further, Reed contended that even if copyright subsisted in each of the contended works, the abstracts did not reproduce a substantial part of any work other than the individual headline. Reed also raised the defence of fair dealing for the purpose of reporting news under s 42 of the Act and the defence of estoppel. At issue was whether copyright subsisted in any of the contended works pursuant to the Act, whether Reed took the whole or a substantial part of any of those works in which copyright subsisted and, further, whether Reed made out either of its defences. Held, dismissing the application: (i) Fairfax failed to prove that the selected headlines amounted to literary works in which copyright could subsist pursuant to the Act: at [28]-[50]. Kalamazoo (Aust) Pty Ltd v Compact Business Systems Pty Ltd (1985) 5 IPR 213; IceTV Pty Ltd v Nine Network Australia Pty Ltd (2009) 239 CLR 458 ; 254 ALR 386 ; 80 IPR 451 ; [2009] HCA 14, considered (ii) Fairfax failed to prove that the article/headline combinations amounted to literary works in which copyright could subsist pursuant to the Act because the evidence made clear that the writing of articles and the writing of headlines were separate and distinct tasks with different authors, such that Fairfax failed to prove "joint authorship" of the selected article/headline combinations within the meaning of s 10(1) of the Act: at [51]-[65], [71]-[101]. IceTV Pty Ltd v Nine Network Australia Pty Ltd (2009) 239 CLR 458 ; 254 ALR 386 ; 80 IPR 451 ; [2009] HCA 14, applied (iii) The article compilation and the edition work were a "literary work" in which copyright could subsist pursuant to the Act: at [66]-[70]. (iv) The article compilations and the edition works were capable of being works of joint authorship as defined in s 10(1) of the Act, and were original in the sense that they originated from the authors of the work, and the expression and arrangement of the material in the article compilation and the edition work required particular mental effort or exertion by the joint authors, such that copyright

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subsisted in the article compilations and the edition works as original literary works and Fairfax owned the copyright in those works: at [102]-[105]. Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd (2002) 119 FCR 491 ; 192 ALR 433 ; 55 IPR 1 ; [2002] FCAFC 112; IceTV Pty Ltd v Nine Network Australia Pty Ltd (2009) 239 CLR 458 ; 254 ALR 386 ; 80 IPR 451 ; [2009] HCA 14, applied (v) Reed did not take any part of the selection, coordination and arrangement that constituted the original work of the compiler, such that it did not take a substantial part of the article compilation or edition work: at [106]-[129]. Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd (2002) 119 FCR 491 ; 192 ALR 433 ; 55 IPR 1 ; [2002] FCAFC 112; IceTV Pty Ltd v Nine Network Australia Pty Ltd (2009) 239 CLR 458 ; 254 ALR 386 ; 80 IPR 451 ; [2009] HCA 14, applied (vi) Reed's conduct in reproducing and communicating the AFR headlines as part of the abstracts amounted to fair dealing for the purpose of reporting news such that Reed's conduct would not constitute an infringement of Fairfax's copyright by reason of s 42(1)(b) of the Act: at [130]-[144]. De Garis v Neville Jeffress Pidler Pty Ltd (1990) 37 FCR 99 ; 95 ALR 625 ; 18 IPR 292 272 ALR 547 at 549 ; Commonwealth v John Fairfax & Sons Ltd (1980) 147 CLR 39 ; 32 ALR 485; TCN Channel Nine Pty Ltd v Network Ten Pty Ltd (2001) 108 FCR 235 ; 184 ALR 1 ; 50 IPR 335 ; [2001] FCA 108; American Geophysical Union v Texaco Inc 60 F3d 913 (2d Cir, 1994) ; 29 IPR 381, considered (vii) Fairfax was not estopped from asserting that Reed's reproduction and communication of AFR headlines as part of the ABIX service amounted to infringement of its copyright in the contended works because Reed failed to prove that Fairfax had created or encouraged an assumption by Reed that it would not so assert at any time in the future, or that Reed relied on any such assumption: at [145]-[158]. Waltons Stores (Interstate) Ltd v Maher (1988) 164 CLR 387 ; 76 ALR 513; Austotel Pty Ltd v Franklins Selfserve Pty Ltd (1989) 16 NSWLR 582; State Rail Authority (NSW) v Health Outdoor Pty Ltd (1986) 7 NSWLR 170, considered Application This was an application for declarations that the respondent had infringed the applicant's copyright subsisting in contended original literary works pursuant to the Copyright Act 1968 (Cth) and injunctions restraining future infringement. R Cobden SC and C Dimitriadis instructed by Minter Ellison for the applicant (Fairfax Media Publications Pty Ltd (ACN 003 357 720)). D Catterns QC and C Moore instructed by Mallesons Stephen Jaques for the respondent (Reed International Books Australia Pty Ltd (ACN 001 002 357) (t/as LexisNexis)). Introduction The subsistence of copyright [1] [8]

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Fairfax's evidence on headline writing Evidence relating to the Telstra headline and the Health headline Are headlines literary works in which copyright can subsist? Is the article/headline combination a literary work? The evidence of the creation of the AFR Planning an edition Putting an edition together Preparation of copy and subediting Is the article compilation a literary work? Is the edition work a literary work? Originality and authorship Presumption of originality -- s 129 Headlines Joint authorship Article/headline combination Article compilation and edition work Infringement Reed's conduct Headlines

[14] [26] [28] [51] [53] [54] [58] [60] [66] [70] [71] [75] [83] [85] [90] [102] [106] [107] [112]

Article/headline combination The compilations -- article compilation and edition work Writing v compiling Defence of fair dealing Reporting of news Fair dealing Estoppel The assumption Reliance Detriment Consideration Conclusion Bennett J. Introduction

272 ALR 547 at 550 [113] [118] [122] [130] [133] [138] [145] [150] [151] [152] [154] [159]

[1] The applicant (Fairfax) is the publisher of the national newspaper The Australian Financial Review (AFR). The AFR is published on each day of the week other than Sunday, in paper form to the general public in each state and territory and electronically in digital form to subscribers in Australia and elsewhere. [2] The respondent (Reed) provides a service known as "ABIX" which involves the provision to subscribers of abstracts of articles published in various newspapers and magazines, including articles in the AFR (the ABIX service). Each abstract includes the headline of the article which is the subject of the abstract, typically without alteration, the by-line of the journalist who wrote the article

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and a short summary of the article written by an employee of Reed. Typically, abstracts of around 40-60% of articles in each edition of the AFR (the abstracts) are provided as part of the ABIX service, early on the same day as the relevant edition. It is important to appreciate that the appearance of the abstract is not the same as the appearance of the original article as published in the AFR. Further, while the abstract does include the headline and by-line of the corresponding article, the ABIX service does not reproduce the advertisements, the photographs or the quotes from the articles which appear in the AFR. The arrangement of the abstracts within the ABIX service as presented to subscribers is not the same as the arrangement of those articles in the AFR. Nor do the headlines appear in the same order as they appear in the AFR. However, Fairfax argues that the Reed database reproduces the arrangement of the articles and headlines in the AFR. [3] Fairfax alleges that, by reason of the provision of such abstracts as part of the ABIX service, Reed has infringed its copyright in a number of different works comprised in each edition of the AFR. Fairfax contends that each of the following (the contended works) are original literary works in which copyright subsists pursuant to the Copyright Act 1968 (Cth) (the Act) and that Reed takes the whole or a substantial part of each of these works in preparation of the abstracts: (1) (2) (3) (4) each individual headline in an AFR edition; 272 ALR 547 at 551 each article, including its headline and by-line, written by journalists employed by Fairfax and published in an AFR edition (article/headline combination); the compilation consisting of all of the articles, including their headlines and by-lines, in an AFR edition (article compilation); each entire edition of the AFR (edition work).

Fairfax had also pleaded that copyright subsists in a compilation consisting of all of the headlines in an AFR edition but that is no longer pressed and I will not deal with this claimed compilation further. Fairfax seeks against Reed declarations of infringement of its copyright in the contended works and injunctions to restrain future infringement, but does not seek any pecuniary relief pursuant to ss 115 or 116 of the Act. [4] Reed denies any infringement of copyright. It says that none of the contended works, other than the edition work, is capable of being a work within the meaning of the Act or is a work in which copyright has been proven to subsist. [5] Further, Reed contends that even if copyright subsists in each of the contended works, the abstracts do not reproduce a substantial part of any contended work, other than the individual headline. Reed also raises two defences: the defence of fair dealing for the purpose of reporting news under s 42 of the Act and the defence of estoppel. Reed had also pleaded the defences of laches and acquiescence but no longer relies on them. [6] The primary issues in dispute are: (1) whether copyright subsists in any of the contended works pursuant to the Act: o Is each of the contended works a "work"? o Is each of the contended works an original work? whether, in the preparation of the abstracts, Reed takes the whole or a substantial part of any of those works in which copyright subsists; and

(2)

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quirement of sufficient acknowledgement supports Reed's position. It points out that if the use of an article is a fair dealing under the Act, then a reference to the headline will also be a fair dealing such that there would be no infringement even if the headline is itself a copyright work. [35] Fairfax submits that the public policy considerations raised do not support Reed's position as Reed is not in the position of a researcher or academic who wishes to cite an article by reference to its title, or an author who wishes to refer to an article to critique it. Rather, Fairfax says, Reed copies large numbers of its headlines and by-lines and uses them for directly competitive purposes, seeking to substitute for Fairfax's content and remove the need for subscribers to review the AFR. Further, Fairfax submits that if widespread practice in bibliographic referencing does not conform to the letter of the law, it is a matter for the Parliament to amend the law if it so chooses. [36] Reed contends that headlines are analogous to a title of a book or other work and relies on the fact that titles, slogans and other short phrases have been consistently refused separate protection under Australian and English copyright law. In IceTV, French CJ, Crennan and Kiefel JJ acknowledged that generally speaking, no copyright could be claimed in a programme title alone: IceTV 272 ALR 547 at 559 at [27] referring to W A Copinger, E P Skone James, K Garnett, G Davies and G Harbottle, Copinger and Skone James on Copyright, 15th ed, Sweet & Maxwell, London, 2005, at [3-16] and Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 All ER 465 at 469 (Ladbroke) per Lord Reid. Reed concedes that there has been not been complete uniformity in reasoning in previous cases and texts and submits that the correct view is the de minimis principle: that titles and the like are simply too insubstantial and too short to qualify for copyright protection as literary works. Reed relies on the following comments of the Privy Council in Francis Day & Hunter Ltd v Twentieth Century Corporation Ltd [1940] AC 112 at 123 (Francis Day):
As a rule, a title does not involve literary composition, and is not sufficiently substantial to justify a claim to protection. That statement does not mean that in particular cases a title may not be on so extensive a scale, and of so important a character, as to be a proper subject of protection against being copied. As Jessel MR said in Dicks v Yates ... there may be copyright in a title "as, for instance, in a whole page of title of something of that kind requiring invention".

[37] Reed acknowledges that courts have recognised the possibility of copyright protection for short forms of literary expression in exceptional cases but relies on the fact that no modern Australian or English cases involving titles, slogans or other short phrases have been brought within this preserve. It points out that a typical newspaper headline is far less substantial, in quantitative terms, than the example of the "whole page of title" referred to in Dicks v Yates (1881) 18 Ch D 76 at 89 (Dicks). [38] In other cases, the basis for denying protection appears to have been a perceived lack of originality: for example, in Sullivan v FNH Investments Pty Ltd (2003) 57 IPR 63 ; [2003] FCA 323 at [112]-[114] (Sullivan). Fairfax contends that this basis does not apply to the ten selected headlines because they are clearly "original" in the relevant sense. Fairfax points to Mr Short's evidence as set out at [21]. Fairfax accepts that copyright protection has been denied to works such as titles and single words but submits that past cases do not dictate the same result for the ten selected headlines in the present case. [39] The authors of Laddie H, Prescott P, Vitoria M et al, The Modern Law of Copyright and Designs (3rd ed, Butterworths, 2000) commented at [3.62] that most cases in which a work was con-

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sidered too slight a matter to deserve copyright protection were cases concerning titles of publications and advertising slogans. This is so even where it is apparent that skill and labour had gone into the creation of the word (for example "Exxon") or title (for example "Where there's a Will there's a Way"). Interestingly, the authors acknowledge that courts may now be more ready to afford copyright protection to advertising copy to recognise that such material may require creative activity of a high order: at [3.62] at fn 10 and see Budget Eyewear Australia Pty Ltd v Specsavers Pty Ltd (2010) 86 IPR 479 ; [2010] FCA 507. However, they observe that the courts may in fact be denying protection on the ground that some advertising slogans and titles are too short to be a literary work at all, regardless of any skill or labour. Copinger also refers to the reluctance of English courts to confer copyright protection on titles of newspapers, magazines, books and the like: at [3-16]. Examples of refusal extend to the clever use of words to convey more than a simple description of the subject matter. The authors note that the courts have, 272 ALR 547 at 560 however, been careful not to rule out the possibility for such protection in appropriate circumstances, although also noting that no such decision has ever been made. [40] In my view, the headline of each article functions as the title of the article. Indeed, "headline" is defined in the New Shorter Oxford English Dictionary (5th ed, Oxford University Press, 2002) to mean, relevantly, "The line at the top of a page containing the title etc; a title or subtitle in large type in a newspaper etc" and, in the Macquarie Dictionary (3rd ed, The Macquarie Library, 1998) to mean, relevantly, "a display line over an article etc, as in a newspaper; the line at the top of the page, containing the title, pagination etc". [41] It may be a clever title. That is not sufficient: compare "Opportunity Knocks" for a game show; "The Man who Broke the Bank at Monte Carlo" for a song; "Splendid Misery" for a novel. It may be an indication of the content of the article and that is not sufficient: compare "The Lawyer's Diary" for a diary: see generally Copinger at [3-16] and Laddie et al at [3.62]. It may be a grouping of words that convey, in themselves, the subject matter such that the expression was inseparable from the idea conveyed ("Help-Help-Driver- in-danger-Call-Police-Ph.000" in Victoria v Pacific Technologies (Australia) Pty Ltd (No 2) (2009) 177 FCR 61 ; 81 IPR 525 ; [2009] FCA 737). In each case it was determined that the contended work did not justify claims of copyright protection, although the reasoning was not identical. In Lamb v Evans [1893] 1 Ch 218 (Lamb), the "headings" in which copyright was held to subsist were more than mere headlines. They included three translations and catchwords. At 232, Kay LJ said:
There is sufficient literary labour involved in the production of these headings to make them properly the subject of copyright.

That decision does not necessitate a finding of copyright in newspaper headlines generally. [42] The headlines in the AFR range from the more prosaic: "Investors warned on super changes" and "Builders report fall in house sales" to ones that employ what might be thought of as a more interesting and clever use of words, such as "Blackout probe sheds little light" and "Returns after tax will be simply super". While the use of devices such as puns and double entendres may be clever, evoke admiration and attract attention, the reasons for the denial of copyright protection to "works" that are simply too slight have long been invoked and have formed the basis for much judicial precedent. In some cases the headline represents no more than the fact or idea conveyed.

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[43] In Exxon Corporation v Exxon Insurance Consultants International Ltd [1982] Ch 119 ; [1981] 3 All ER 241 (Exxon), protection for an invented word (Exxon) was denied on the basis that, while the word was original and was created after considerable research and labour, it was not a "literary" work because it was not intended to afford information and instruction or pleasure in the form of literary enjoyment (referring to the definition of "literary work" in Hollinrake). A headline may come within the well-used criteria for a literary work as set out in Hollinrake but those criteria do not afford an exhaustive definition. They may well be necessary but they are not sufficient. Such criteria may well describe a literary work but the mere fact that a word or sequence of words provides information or pleasure is not necessarily sufficient to constitute a literary work for the purposes of the Act. 272 ALR 547 at 561 [44] Headlines generally are, like titles, simply too insubstantial and too short to qualify for copyright protection as literary works. The function of the headline is as a title to the article as well as a brief statement of its subject, in a compressed form comparable in length to a book title or the like. It is, generally, too trivial to be a literary work, much as a logo was held to be too trivial to be an artistic work (Cortis Exhaust Systems Pty Ltd v Kitten Software Pty Ltd (2001) ATPR 41-837 ; [2001] FCA 1189 at [33] per Tamberlin J), even if skill and labour has been expended on creation (Exxon). [45] Copyright can only subsist in a "work". Originality does not require novelty, inventiveness or creativity, whether of thought or expression, or any form of literary merit. Any words written by an author, original in that sense and not copied, could be said to satisfy the "literary" part of a literary work for which copyright is claimed. Those words could well convey information and instruction (such as "go outside, the sun is shining") or pleasure (such as "you look beautiful"). However, not every piece of printing or writing which conveys information will be subject to copyright: IceTVat [45]. To obtain copyright protection under the Act, there must be a literary work. I appreciate that this has been the subject of much judicial consideration but I find it helpful to resort to dictionary definitions of "work". The Macquarie Dictionary relevantly defines "work" as "that on which exertion or labour is expended; the product of exertion, labour, or activity: a work of art, literary or musical works". There may well be writings of original words or phrases that simply do not reach the level of constituting a "work", regardless of literary merit. This is not just because they are short, as a deal of skill and effort can go into producing, for example, a line of exquisite poetry. It is because, on its face and in the absence of evidence justifying its description as a literary "work", the writing does not, qualitatively or quantitatively, justify that description. A headline is, generally, no more than a combination of common English words: at 88 per Jessel MR. It is "does not involve literary composition, and is not sufficiently substantial to justify a claim to protection" (Francis Dayat 122); it does not, in the words of Jacobson J in Sullivanat [112], have "the requisite degree of judgment, effort and skill to make it an original literary work in which copyright may subsist" for the purposes of the Act. [46] It may be that evidence directed to a particular headline, or a title of so extensive and of such a significant character, could be sufficient to warrant a finding of copyright protection (Francis Day at 123; see also Milwell v Olympic Amusements Pty Ltd (1999) 85 FCR 436 ; 161 ALR 302 ; 43 IPR 32 ; [1999] FCA 63 at [29]) but that is not the case here. Fairfax claims copyright in each and every one of the ten selected headlines. It claims copyright in the headlines as a class of work, based on evidence of a general practice that headlines are determined by staff and settled at meetings of staff to provide a title to a story which also fits into the format of the page of the AFR. That is insuffi-

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cient to overcome the reasoning for the established practice of denying copyright protection to titles which is the apt characterisation for headlines as a class. [47] The majority of the headlines in the sample editions are short factual statements of the subject of the article. The addition of a pun does not, of itself, in the absence of evidence, convert such statements into literary works. As to the evidence adduced with respect to the Telstra headline and the Health headline, I accept Reed's submission that the evidence is not sufficient to "carry" the rest of the headlines. Further, Mr Bailey's evidence differentiates the work involved in 272 ALR 547 at 562 the headlines of the front page from that for other headlines and demonstrates that the work involved in the Telstra headline was primarily to ensure that the story was accurate, with the changing headline flowing from a changing appreciation of the facts. It is not the "ideas" of the author that is protected by copyright but their fixed expression: IceTVat [160]. [48] The headline and by-line is, as Reed says, meta-information about the work, not part of the work, the work being the article. The need to identify a work by its name is a reason for the exclusion of titles from copyright protection in the public interest. A proper citation of a newspaper article requires not only reference to the name of the newspaper but also reproduction of the headline. This was a matter of common ground between the witnesses. If titles were subject to copyright protection, conventional bibliographic references to an article would infringe. Such considerations may well be a reason for the fact that headlines and "short phrases" are excluded from copyright in the United States: Alberto-Culver Co v Andrea Dumon Inc 466 F2d 705 (7th Cir 1972); Salinger v Random House Inc 811 F2d 90 (2d Cir 1987) at 98; CMM Cable Rep Inc v Ocean Coast Props Inc 97 F3d 1504 (1st Cir 1996) at 1520 n 21. [49] At IceTVat [161], Gummow, Hayne and Heydon JJ criticised the Full Court in Nine Network Australia Pty Ltd v IceTV Pty Ltd (2008) 168 FCR 14 ; 76 IPR 31 ; [2008] FCAFC 71 of tipping the balance too far against the interest of viewers in digital free to air television in the dissemination by means of new technology of programme listings in favour of the interest in the protection of Nine against perceived competition by IceTV. Their Honours noted at [163] a submission that no litigation alleging breach of confidence would have succeeded to protect Nine after the information reached the public domain and that the copyright litigation was an attempt to control the further dissemination of the information. This was discussed in the context of broadcasting information but it does raise a matter of possibly more general application. In my view, to afford published headlines, as a class, copyright protection as literary works would tip the balance too far against the interest of the public in the freedom to refer or be referred to articles by their headlines. [50] This does not exclude the possibility of establishing a basis for copyright protection of an individual headline but Fairfax has failed to prove that the ten selected headlines amount to literary works in which copyright can subsist. Is the article/headline combination a literary work? [51] Fairfax asserts copyright separately in the ten selected articles including their headlines. The majority of articles in each AFR edition are written by journalists employed by Fairfax but some articles are derived from other sources. [52] It is not in dispute that each article is an original literary work but Reed denies that the article together with its headline and by-line forms a discrete work because it is not the work of a single

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[112] If the ten selected headlines constituted copyright works, Reed has infringed that copyright by taking the whole of each headline. Article/headline combination [113] The issue is whether the headline and by-line reproduced in the abstracts amount to a substantial part of each of the ten selected article/headline combinations. Fairfax submits that, to a considerable degree, the headline 272 ALR 547 at 575 encapsulates the whole of the story, comes first in the story and is prominent in the literary construction of the story. It also contends that the ten selected headlines, more or less in each case, incorporate extra cleverness or literary inventiveness, referring particularly to the following of the ten selected headlines: o o o o "Returns after tax will be simply super" "Laser a ray of hope for eye problems" "Gunning for the vote in Bennelong" "October a brilliant stage in dollar's tour de force"

[114] Fairfax further submits that the general evidence of Mr Short and Mr Bailey and the specific evidence in relation to the Telstra headline establish that the headlines exhibit a high degree of literary originality and are the product of significant creative and industrious efforts by the skilled employees of Fairfax. It says that the evidence is clear that the ten selected headlines are qualitatively very significant and should be found to be a substantial part of each of the ten selected article/headline combinations. [115] Reed contends that the reproduction of the headline without the article does not amount to a substantial part of the work because the copying of the title of a work, where it forms part of a larger work, will rarely, if ever, amount to the taking of a substantial work: Copinger at [21-20]. [116] The reproduction of a part which by itself has no originality will not normally be a substantial part of the copyright and therefore will not be protected: IceTVat [37] citing Ladbrokeat 481. If the author would not have copyright in the part standing alone, the part reproduced will not be a substantial part: IceTVat [37]. [117] I have determined that the headline is not a copyright work. Apart from the Telstra headline and the Health headline, there is no evidence of the originality, including skill and effort, which went into the preparation of the headlines in the sample editions, either alone or as a part of the claimed combination with the article and by-line. If the article/headline combination were a discrete work in which copyright subsisted, Fairfax would not succeed in claiming infringement by taking the headline because the headline has not been shown to be an original, and therefore, substantial part of the work. The compilations -- Article compilation and edition work [118] Fairfax relies on the article compilation and the edition work as compilations. In the context of these compilations, the claimed originality lies in the skill, judgment, knowledge, labour or expense involved in gathering, selecting and/or arranging the material included in the compilation.

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All England Law Reports/1939/Volume 4 /Francis Day and Hunter Ltd v Twentieth Century Fox Corporation Ltd and Others - [1939] 4 All ER 192 [1939] 4 All ER 192 Francis Day and Hunter Ltd v Twentieth Century Fox Corporation Ltd and Others

PRIVY COUNCIL LORD THANKERTON, LORD RUSSELL OF KILLOWEN, LORD WRIGHT, LORD ROMER AND SIR LYMAN P DUFF

17, 18 JULY, 12 OCTOBER 1939 Privy Council - Canada - Copyright - Title of song used as title of talkie film - Infringement Performing right - Literary copyright - Passing off - Copyright Act 1842 (c 45) - Copyright (Musical Compositions) Act 1882 (c 40) - Copyright Act 1911 (c 46) - Canadian Copyright Act 1921 (RSC 1927, c 32) - Canadian Copyright Amendment Act 1931 (c 8), ss 2(v), 3. The appellant company for purposes of these proceedings were the owners of the copyright in a song entitled The Man who Broke the Bank [1939] 4 All ER 192 at 193 at Monte Carlo, but they had not printed on each copy of the song the notice required by the Copyright (Musical Compositions) Act 1882. In 1935, a motion picture with that title was exhibited in Canada. The plot of the picture did not correspond with the theme of the song. The appellants brought an action against the distributors of the film in Canada and the exhibitors of it in cinematograph theatres in Canada. The appellants claimed damages for infringement of their copyright in the song by performance in public. The action was subsequently extended to include a claim for infringement of the literary copyright, and for passing off. The picture complained of was a talkie film, but no word of the song was used except the title, which was thrown on the screen at the outset. There was no audible reproduction of any part of the musical composition and no copying of the letterpress or musical notation except of the words of the title. It was contended that such use of these words, in actual production and in advertisements, constituted an infringement:-Held - (i) though the claim was based upon the Imperial Copyright Act 1842, the requirements of the Copyright (Musical Compositions) Act 1882 applied, and, as there had been no publication of the notice required by that Act on each copy of the song, the appellants were not entitled to the

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protection claimed. (ii) assuming that the right in respect of literary infringement depended upon the Imperial Copyright Act 1842, and was not subject to the requirements of any Canadian Act, the copying of the title was in this case so unsubstantial a matter as not to constitute an infringement. (iii) the Canadian Copyright Act 1931, s 2(v), which added a definition of "work" as including the title thereof when such title is original and distinctive, made no change in the law. (iv) there had been, on the facts, no passing off.
Notes

There can be little doubt that so famous a title as that here in question is a very valuable property from a commercial point of view, but that, of course, does not conclude the question whether its use in a given set of circumstances is an infringement of the rights of the owners of the copyright in the song. The legal question is here considered from every angle and there is not found, in the circumstances of this case, to have been any infringement of a legal right vested in those owners. As to Copyright in Title of Work, see Halsbury (Hailsham Edn), Vol 7, p 525, para 826; and for Cases, see Digest, Vol 13, pp 177, 178, Nos 131-142.
Cases referred to

Mansell v Star Printing & Publishing Co of Toronto Ltd [1937] AC 872, [1937] 3 All ER 912; Digest Supp, 106 LJPC 147, 157 LT 445. Dicks v Yates (1881) 18 ChD 76; 13 Digest 178, 133, 50 LJCh 809, 44 LT 660. Licensed Victuallers' Newspaper Co v Bingham (1888) 38 ChD 139; 37 Digest 546, 80, 58 LJCh 36, 59 LT 187. Weldon v Dicks (1878) 10 ChD 247; 13 Digest 177, 131, 48 LJCh 201, 39 LT 467. Kantel v Grant, Nisbet & Auld Ltd, Watson & Dominion Battery Co Ltd [1933] Ex CR 84; Digest Supp.

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no copyright in such works until the passing of the Canadian Copyright Act 1906, and then subject only to the conditions imposed in that Act, which had not been complied with. In the present case, however, as the appellants contended, their only claim to copyright was based on the English Act of 1842, the rights under which did not depend on the performance of conditions under any Canadian Act. That copyright, it was said, subsisted at the date specified as the date of the commencement of the Act of 1921, and, by the terms of the Canadian Act of 1921, rights under that Act took the place of rights under the English Act of 1842, so that at the material dates these latter rights were vested in the appellants, in the circumstances stated above. In this way, it was said, the appellants did not rely upon, and did not need to rely upon, any Dominion copyright legislation, except in so far as the Act of 1921 gave a substituted copyright for the right existing under the Act of 1842. Their Lordships do not think it necessary in the present appeal to determine this controversy, which raises questions of difficulty and importance on the law, because the appeal can, in their opinion, be decided on another ground. Assuming, but not deciding, that the appellant company is entitled to the copyright in Canada which it claims, it is, in their Lordships' judgment, not entitled to succeed in its claim that the respondents have infringed that right. The copying which is complained of is the use of the title, and that is too unsubstantial on the facts of this case to constitute an infringement. The appellants' contention was put as high as that copyright in a title is infringed by the application of that title to a work of a different character from that of the work to which it was originally applied. In the present case, the title was originally applied to a musical composition, whereas it has been applied by the respondents to a motion picture or a film. The argument of the appellant company would be the same, it seems, if the application of the title complained of had been to a picture or a statue. On this reasoning, it would be said that the title "Adam" applied to a work of statuary would be infringed if that title were used as that of a novel. These and other anomalous consequences justify [1939] 4 All ER 192 at 198 the broad principle that in general a title is not by itself a proper subject-matter of copyright. As a rule, a title does not involve literary composition, and is not sufficiently substantial to justify a claim to protection. That statement does not mean that in particular cases a title may not be on so extensive a scale, and of so important a character, as to be a proper subject of protection against being copied. As Sir George Jessel MR said in Dicks v Yates, at p 89 (which, as Lindley LJ said in Licensed Victuallers' Newspaper Co v Bingham, virtually overruled on this point Weldon v Dicks), there might be copyright in a title "as for instance a whole page of title, or something of that kind requiring invention." This could not be said of the facts in the present case, however. There may have been a certain amount, though not a high degree, of originality in thinking of the theme of the song, and even in choosing the title, though it is of the most obvious. To "break the bank" is a hackneyed expression, and Monte Carlo is, or was, the most obvious place at which that achievement or accident might take place. The theme of the film is different from that of the song, and their Lordships see no ground in copyright law to justify the appellants' claim to prevent the use by the respondents of these few obvious words, which are too unsubstantial to constitute an

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infringement, especially when used in so different a connection. The appellants' counsel, however, have strenuously contended that, though this might be the position under English or Canadian law before 1931, it was changed in Canada by an amendment in that year of the Canadian Act of 1921, which added a new definition to those contained in s 2 of the latter Act--namely, "(v) work shall include the title thereof when such title is original and distinctive." It was in virtue of this definition that McEvoy J held that there was infringement, and he awarded damages to the appellant company. The Court of Appeal reversed that holding. Middleton JA did not think it necessary to decide whether the amendment applied to existing copyrights. "It is admitted," he said, "that prior to this Act no such right existed." He did not think that, for the purposes of this case, the Act of 1931 had changed the law. Their Lordships are prepared to assume, for the purposes of this appeal, that the amendment applied to existing copyrights. They will likewise assume that the title was original in the sense that it had not been copied from another work. They are content, for the purposes of this appeal, to adopt the definition given by Maclean J, in Kantel v Grant, Nisbet & Auld Ltd, though they wish to reserve the question how far that definition can be accepted as sufficient in other cases. It is, however, difficult to define satisfactorily the word "distinctive," since it cannot mean merely that the title is used to identify the particular work. 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 [1939] 4 All ER 192 at 199 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 those 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 Sir George Jessel MR, in Dicks v Yates 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. The definition may have been inserted to settle doubts and to avoid its being said that in no circumstances could a title receive protection. In any event, their Lordships do not think that the new definition (v) entitles the appellants to succeed in this case. There remains a third point which has been argued on behalf of the appellants--namely, that the respondents have been passing off the exhibition of their motion picture as a performance of the song. This startling claim was not pleaded, and is dealt with only by the Court of Appeal, who disposed of it in summary fashion: "Certainly the moving picture was not represented as the

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Page 1 1967 CarswellQue 9, 36 Fox Pat. C. 135, [1967] Que. S.C. 424, [1967] C.S. 424, 53 C.P.R. 217

1967 CarswellQue 9, 36 Fox Pat. C. 135, [1967] Que. S.C. 424, [1967] C.S. 424, 53 C.P.R. 217 Flamand v. Socit Radio-Canada Flamand et al. v. Socit Radio - Canada et Autres et David et un Autre, mis en cause Cour suprieure du Qubec Reid J. Judgment: 20 fvrier 1967 Docket: Montral 726,957 Thomson Reuters Canada Limited or its Licensors (excluding individual court documents). All rights reserved. Counsel: Gerald J. Ryan, pour les requrants F. Michel Gagnon, pour les intims Subject: Intellectual Property; Property; Civil Practice and Procedure Copyright --- Material in which copyright may subsist Literary works Titles. Injunctions --- Availability of injunctions Interim, interlocutory and permanent injunctions Duty to make out prima facie right Copyright General. Application for an interlocutory injunction restraining infringement of copyright. The petitioners registered copyright in an unpublished literary work entitled Mdecine d'aujourd'hui Doctor today and produced a series of 39 television programmes. After these television emissions they published a booklet entitled Mdecine d'aujourd'hui. The petitioners learned that the respondent Socit Radio-Canada, in collaboration with others, was planning to present a series of programmes under the above title. The first of these was presented on January 26, 1967, and the other five were to be presented during the five following months. The content of the respondent's programmes was different from those of the petitioners, the former being directed to medical practitioners and nurses, while the latter were of a popular nature. Held: That a mere title cannot be the subject of copyright apart from the work to which it is attached.

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Page 2 1967 CarswellQue 9, 36 Fox Pat. C. 135, [1967] Que. S.C. 424, [1967] C.S. 424, 53 C.P.R. 217

2. That the only exception to this principle is when the title of a work is, according to section 2(u) of the Copyright Act, "original and distinctive". for otherwise the title becomes part of the public domain and is not susceptible of appropriation. 3. That when the owner of a work complains that a part of his work has been taken and that this consists only in the title, he must show originality in default of which he cannot succeed. 4. That when a party desires to obtain an injunction to prevent another person using a given title, he should show not only the original and distinctive character of the title, but also the probability of confusion in the mind of the public between his work and that of the adverse party. 5. That when a given title cannot be the subject of copyright, in the absence of originality, the party asking for an injunction to prevent use by a competitor should show on the competitor's part an intention to deceive the public into taking his work for that of the petitioner. 6. That when a title does not amount to an original creation of the mind and is not susceptible of copyright, the difference in style between two works suffices to exclude all unfair competition because the works are not addressed to the same clientele and do not satisfy the same intellectual needs. 7. That when a title is purely descriptive and, in consequence, deprived of originality, a party cannot obtain an injunction except by proving that his adversary is trying to pass off another work as his. 8. That if, at the time of application for an interlocutory injunction looking to the prevention of use of a mere title apart from the work to which it is attached, the court has the least doubt as to the existence of the right of the petitioner to the exclusive use of that title, it ought to reject the application for injunction. 9. That the title Mdecine d'aujourd'hui is not a title that meets the qualifications required by section 2(u) of the Copyright Act and, in consequence, does not appear to be either original or distinctive and is not comprised within the protected work of the plaintiffs. 10. That the application should be dismissed. Annotation It is established law that a mere title per se cannot be the subject of copyright unless it is of such a length as to constitute a literary composition in itself. In discussing section 2(v) of the Copyright Act, Lord Wright in, Francis Day and Hunter v. Twentieth Century Fox Corporation, [1939] 4 All E.R. 192 at 198 passim, observed: As a rule, a title does not involve literary composition, and is not sufficiently substantial to justify a claim to protection. That statement does not mean that in particular cases a title may not be on so extensive a scale, and of so im-

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Page 3 1967 CarswellQue 9, 36 Fox Pat. C. 135, [1967] Que. S.C. 424, [1967] C.S. 424, 53 C.P.R. 217

portant a character, as to be a proper subject of protection against being copied. ...The definition [s. 2(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 those words may connote. When that definition is read with sec. 3, [defining copyright as the 'right to produce or reproduce the work or any substantial part thereof'] 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 Sir George Jessell M.R. in Dicks v. Yates (1881), 18 Ch. D. 76 at 80, ... and would apply to a case such as a title covering a whole page of original matter, or something of that nature.... See also Ladbroke (Football), Ltd. v. William Hall (Football), Ltd., [1964] 1 All E.R. 465 at 476, per Lord Hodson. The point, therefore, is not solely whether a title is original and distinctive. Of course, a title must be of that quality before any protection can be accorded to it. But, in addition, consideration must be given to whether or not it is of sufficient length to constitute a literary work in itself if the protection asked for relates only to the title itself and not to the title considered as a part of the work to which it is applied. If, in an action for infringement of copyright, the question of substantiality arises, the taking of the title as well as other parts of the work will have its effect on the decision as to whether a substantial part of the copyright work has been taken. But, absent a substantial taking of a work and absent also a length of title sufficient to qualify it as a literary composition in itself, the question whether or not a title is original and distinctive is entirely irrelevant in an action for infringement of copyright. It is when one turns to the subject of passing off by the use of similar titles that the question of distinctiveness becomes important There, it is not essential that the two works be of the same character, although this is a material element. The vital point is whether or not the use of a similar title enables one person employing that title to pass off his work for that of another or, as Maugham J. in Mathieson v. Sir Isaac Pitman & Sons Ltd. (1930), 47 R.P.C. 541 at 549, put the matter "would deceive a purchaser into the belief that he was getting a book written by A, when he was in fact getting an entirely different book written by B." In the case of distinctive titles little difficulty will arise. It is only in the case of non-distinctive titles such as those of a descriptive or geographical nature that difficulties arise. It is then that the doctrine of secondary meaning comes into play and the principle of Reddaway v. Banham, [1896] A.C. 199 at 240, as paraphrased by Maugham J. in the Mathieson case, becomes applicable. Cases Referred to: Gold Star Trading Co. Ltd. v. Collge des Pharmaciens de la Province de Quebec, [1964] Que. Q.B. 49. Text Book Reference: Fox, Canadian Law of Copyright and Industrial Designs, 2nd ed., 1967, pp. 128, 504.Fox, Canadian Law of Trade Marks, 2nd ed., 1956, p. 776.Copinger and Skone James on Copyright, 10th ed., 1965, Paras. 156, 228 et seq.Kerly, Law of Trade Marks and Trade Names, 9th ed., 1966, Para. 771. Reid J.: 1 Les conclusions de la requte pour injonction interlocutoire se lisent ainsi:

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Page 8 1967 CarswellQue 9, 36 Fox Pat. C. 135, [1967] Que. S.C. 424, [1967] C.S. 424, 53 C.P.R. 217

(d) une injonction interlocutoire n'existe pas quand il est possible de dterminer le montant des dommages que les requrants pourraient subir par les actes des intims; (e) le juge, dans sa discrtion, doit considrer les droits apparents des parties et les inconvnients qui peuvent rsulter de l'mission de l'injonction et ne doit pas dterminer quels sont les droits respectifs des parties, mais doit seulement les garder dans les mmes conditions jusqu' ce qu'ils soient tablis dfinitivement par le juge du fond; en pareil cas, le juge ne devrait pas donner son opinion sur le fond de la question et devrait se limiter envisager les droit apparents des parties. 23 Le dictionnaire Larousse dfinit les mots employs dans le sous-paragraphe u de l'article 2 de la Loi sur le droit d'auteur de la manire suivante: "Original": qui est la source premire d'une chose; qui mane de l'auteur. "Distinctif": qui sert reconnatre, distinguer. 24 Le dictionnaire Robert dfinit le mot "original" de la manire suivante: "Original" qui parat ne driver de rien d'antrieur et constituer un commencement, une nouveaut; qui ne ressemble rien d'autre, est unique. 25 Le tribunal a pris en considration toute la jurisprudence et les autorits qui ont t cites par les avocats des parties et plus particulirement les deux volumes de Fox, The Canadian Law of Trade Marks and Unfair Competition, 2e d., t. 2 (1956) et The Canadian Law of Copyrights (1944). 26 Les remarques de cet auteur ainsi que les remarques des juges qui ont rendu jugement dans les causes qui y sont cites semblent faire ressortir les principes suivants: 1. Un simple titre ne saurait faire l'objet d'un droit d'auteur indpendamment de l'oeuvre laquelle il se rattache; 2. Il n'y a exception ce principe que lorsque le titre d'une oeuvre est, suivant l'article 2, paragraphe u, de la Loi sur le droit d'auteur, "original et distinctif", car outrement ce titre fait partie du domaine public et n'est pas susceptible d'appropriation; 3. Lorsque le propritaire d'une oeuvre se plaint de ce qu'on a usurp une partie de cette oeuvre et que celle-ci ne consiste que dans le titre, il doit en dmontrer l'originalit, dfaut de quoi il ne peut russir; 4. Lorsqu'une partie veut obtenir une injonction pour empcher un autre individu d'utiliser un titre donn, elle doit dmontrer soit le caractre original et distinctif de ce titre, soit la probabilit de confusion dans l'esprit du public entre son oeuvre et celle de la partie adverse;

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Page 9 1967 CarswellQue 9, 36 Fox Pat. C. 135, [1967] Que. S.C. 424, [1967] C.S. 424, 53 C.P.R. 217

5. Lorsqu'un titre donn ne peut faire l'objet d'un droit d'auteur, faute d'originalit, la partie qui demande une injonction pour en empcher l'utilisation par un concurrent doit dmontrer chez ce dernier l'intention de tromper le public en lui faisant prendre son oeuvre pour celle du requrant; 6. Lorsqu'un titre ne se prsente pas comme une cration originale de l'esprit et qu'il n'est pas susceptible d'un droit d'auteur, la diffrence de genre entre deux oeuvres qui le portent suffit exclure toute concurrence dloyale parce qu'il s'agit d'oeuvres ne s'adressant pas la mme clientle et ne satisfaisant pas les mmes besoins intellectuels; 7. Lorsqu'un titre est purement descriptif et, par consquent, dpourvu d'originalit, une partie ne peut obtenir une injonction moins de prouver que son adversaire tente de faire passer une autre oeuvre pour la sienne; 8. Si, au stade d'une demande d'injonction interlocutoire visant empcher l'utilisation d'un simple titre indpendamment de l'oeuvre laquelle il se rattache, le tribunal a le moindre doute sur l'existence du droit du requrant l'exclusivit de ce titre, il doit rejeter la demande d'injonction. 27 La preuve a rvl que Flamand a reproduit certains de ses programmes dans un volume qu'il a intitul Mdecine d'aujourd'hui, et il ne semblerait pas raisonnable de prtendre qu'un professeur de la Facult de mdecine, l'Universit de Montral, pourrait tre empche de publier un ouvrage sur la mdecine en gnral intitul Mdecine d'aujourd'hui. 28 L'oeuvre du programme qui a t tldiffus en 1961 et 1962 avec la collaboration troite de Flamand est certainement protge par l'enregistrement qui a t fait en vertu de la Loi sur le droit d'auteur tel que ci-dessus dcrit et personne ne pourrait reproduire ce mme programme sans la permission du propritaire. 29 Pour que le titre puisse tre incorpor dans l'oeuvre protge, il doit tre original et distinctif.

30 Si plusieurs personnes runies dans un salon discutent de mdecine d'aujourd'hui, elle ne lsent pas le droits de Flamand. 31 Si, aprs cette runion, un animateur de TV s'amne et pose des questions ces gens-l sur la mdecine d'aujourd'hui, personne ne prtendra que permission devrait tre demande et si, aprs coup, un programme de TV est organis pour discuter de la mdecine d'aujourd'hui, aprs annonce en consquence, il est peu probable que quelqu'un puisse dire que les droits de Flamand aient t lss en apparence. 32 Prima facie, tout le monde a le droit de discuter de mdecine d'aujourd'hui la TV, la condition de ne pas plagier le genre d'animation qu'en avait fait Flamand il y a cinq ans; 33 34 Le titre veut tout simplement dire: "Nous parlons de mdecine d'aujourd'hui notre manire". Si la manire de prsenter ce programme imite celle de Flamand, il est vident que cela n'est pas permis.

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Page 10 1967 CarswellQue 9, 36 Fox Pat. C. 135, [1967] Que. S.C. 424, [1967] C.S. 424, 53 C.P.R. 217

35 La prsente heure a soixante minutes serait un titre qui ne pourrait tre considr comme original et distinctif, cependant que le titre qui se lirait: Cette heure a sept jours, serait probablement un titre pourrait tre considr comme original et distinctif, parce que normalement personne ne s'attend entendre dire qu'une heure est compose de sept jours. 36 Comme il a t mentionn ci-dessus, prsent jugement ne rgle pas dfinitivement le problme entre les parties, mais il est limit l'interprtation des mots qui sont mentionns dans l'article 752 du Code de procdure civile. 37 Le tribunal est d'opinion qu' prime abord, le titre de l'oeuvre de Flamand: Mdecine d'aujourd'hui, n'est pas un titre qui recontre les qualifications exiges par les sous-paragraphe u de l'article 2 de la Loi sur le droit d'auteur et, par consquent, ne semble pas tre ni original ni distinctif et ne peut tre compris dans l'oeuvre protge de Flamand. 38 Considrant que, vu les raisons ci-dessus mentionnes et dans l'exercice de la discrtion qui lui est accorde par l'article 752 du Code de procdure civile, le tribunal arrive la conclusion que les requrants ne semblent pas avoir droit d'obtenir une injonction et qu'il y a lieu de rejeter leur requte pour injonction interlocutoire pendant l'instance; Requte rejete. END OF DOCUMENT

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Page 1

Indexed as:

Hutton v. Canadian Broadcasting Corp. (CBC) (Alta. C.A.)

Between Douglas Hutton and Denali Music Ltd., Appellants (Plaintiffs), and The Canadian Broadcasting Corporation, Respondent (Defendant) [1992] A.J. No. 122 120 A.R. 291 41 C.P.R. (3d) 45 8 W.A.C. 291 31 A.C.W.S. (3d) 1046 1992 ABCA 39 Appeal No. 9003-0305-AC

Alberta Court of Appeal Edmonton Civil Sittings Bracco, Foisy and Fraser JJ.A. Heard: January 15, 16, 17, 1992 Judgment: February 12, 1992 (11 pp.) STATUTES, REGULATIONS AND RULES CITED: Copyright Act, R.S.C. 1985, c. C-42, ss. 2, 3, 3(1). Copyright -- Infringement -- Whether substantial similarities and connection -- Whether misuse of confidential information.

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This was an appeal from a decision finding that there was no copyright infringement. The appellant conceived and produced a pilot which became a television series "Star Chart" (SC), a co-production between the parties. The respondent cancelled SC. The appellant retained the copyright in SC and registered it. The respondent produced and aired another series and the appellant commenced an action for infringement and misuse of confidential information, alleging that the respondent copied their television program. The trial judge found that the works were not qualitatively similar and that there was no causal connection. He also found that the respondent had not used any allegedly confidential information for its own benefit. HELD: The appeal was dismissed. The trial judge made no error in his conclusions and findings. Having failed to prove either substantial similarity or causal connection, the appellant's claim of infringement failed. M.D. MacDonald, A.A. Garber, J.K. McFadyen and N.B. Thompson, for the Appellants. I.C. Hutton and G.B. Comba, for the Respondent.

MEMORANDUM OF JUDGMENT FOISY J.A. (for the Court, dismissing the Appeal):-II. INTRODUCTION

The appellants conceived and produced a pilot called Star Tracks. In 1980, Star Tracks became the television series Star Chart [S.C.], a co-production between the appellants and the respondent. The respondent cancelled S.C., as it was contractually entitled to do. The appellants retained copyright in S.C, registering it in 1985 under the Copyright Act, R.S.C. 1985, c. C-42 as a dramatic work. In 1983, the respondent produced and aired Good Rockin' Tonite [G.R.T.]. The appellants brought an action for infringement of copyright, as well as breach of fiduciary duty and misuse of confidential information, alleging that the respondent copied their television program. Notwithstanding his finding against the appellants on liability the trial judge also assessed damages. That assessment is also under appeal. II. APPELLANTS' POSITION

The appellants argue that G.R.T. made use of all the components used in S.C. -- the same host, the opening, the introduction of videos, the countdown, and the closing. Given the similarities between the shows and the respondent's access to S.C., the appellants maintain an inference of infringement is inevitable. They contend the trial judge erred in placing insufficient weight on the similarities between the shows and in his interpretation of copyright law.

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I find that GRT had no elements which would qualify it as a dramatic work so there could be no breach of copyright. [AB XII 3415]

I find that it would be stretching any definition of "dramatic work" to say that GRT was such because there we find no attempt at pretence or story line or dramatic incident. . . . Whatever else is common to both SC and GRT, it is not those elements which made SC a "dramatic work". [AB XII 3439] Whatever the classification of G.R.T., if substantial similarity and causal connection to S.C. are shown there could be copyright infringement as is provided for in section 3(1)(b), above. V. NO PALPABLE AND OVERRIDING ERROR

The trial judge's decision that GRT did not infringe SC's copyright protection rests on two key findings: no substantial similarity between the two programs and proof of independent creation of GRT. After reviewing the rationale for the conclusions he reached, I have concluded that the trial judge did not commit any palpable or overriding errors. A. NO SUBSTANTIAL SIMILARITY

I acknowledge that the trial judge may have placed undue emphasis on the characterization of SC as a dramatic work. Because of this, the appellants allege that the trial judge gave insufficient weight to the numerous similarities he found between SC and GRT. I disagree. The trial judge's conclusion of no substantial similarity between the two programs was rooted in much more than his determination that SC qualified as a dramatic work and GRT did not. He recognized, properly in my view, that the test of substantial similarity is one of quality as well as quantity when he said: What we are looking for when addressing the issue of copyright infringement is "substantial similarity". I will go farther and say that what we are looking for is substantial similarity as a whole. One cannot evaluate the mode of expression simply by dissecting the program and numerically reciting the similarities and dissimilarities. That process is helpful, of course, but in itself it does not answer the question of whether one program is substantially similar to the other, viewed in its entirety. [AB XII 3374-3375] The trial judge found the works were not qualitatively similar: Apart from the array of specific differences one can point to, SC and GRT in his [Professor Gardner's] opinion, were differently premised and each had a different structure and feel although both were derived from chart related music shows that date from the 1950's. I accept his assessment.

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[AB XII 3406-3407] Having viewed both shows, I agree with the trial judge's conclusion that the works were not qualitatively similar. While there are some similarities at the component level, a more than casual comparison shows sufficient substantive difference to support the finding of the trial judge that the similarities were unsubstantial and largely unimportant. When both shows are viewed as a whole there is no substantial similarity in the mode of expression. The trial judge found that Mulligan acted as an independent contractor in writing the scripts for Star Chart. However, the trial judge may have erred in finding that Hutton obtained copyright of the Star Chart scripts because the scripted words were an integral part of the dramatic incident. The scripts are not so closely tied to Star Chart that they cannot be subject to separate copyright. Mulligan, as author, retained copyright to the scripts. In any event, this error, if there is one, is not fatal to his findings regarding substantial similarity. Indeed, this error benefitted the appellants. There is evidence that much of the scripting was common media "hype" as well as material provided by the recording companies to introduce rock videos and rock stars. Further the finding by the trial judge that there was not substantial similarity between the two programs provides a complete defence to the appellants' action on the issue of copyright infringement. B. NO CAUSAL CONNECTION

In addition to there being no substantial similarity, the trial judge, in my view, correctly found there was no causal connection. Many of the similarities are attributable to stock devices and personal characteristics and qualifications of Gibson and Mulligan, not to copying. The appellants claim the arrangement of stock components in S.C. was copied in G.R.T.. The trial judge did not find the substantial similarity that would be expected if the shows used the same arrangement. Further, he went on to find little originality in the S.C. arrangement itself: Apart from the fiction of "Music Central", I should think that neither the arrangement, nor the acting form, nor the combination of incidents involved in the presentation of rock videos by a host was original in character. [AB XII 3436] The trial judge also accepted the evidence of independent creation in finding that S.C. and G.R.T. originated from different shows, S.C. from the British Top of the Pops and the Canadian Hot Pops, and G.R.T. from the Canadian Rockin' Doc (a.k.a. Rock n' Talk): Devion asked Gibson to use the basics of this show [Rockin' Doc], re-organize the format and come up with a different video show. I accept this, and because I have also accepted Devion's statement that he had no knowledge of SC at the time of his proposals to Gibson, I must conclude that SC was not the model upon which GRT was produced. [AB XII 3369-3370]

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Intellectual Property Reports/Judgments/80 IPR/ICETV PTY LTD and Another v NINE NETWORK AUSTRALIA PTY LTD - 80 IPR 451 - 22 April 2009 47 pages

ICETV PTY LTD and Another v NINE NETWORK AUSTRALIA PTY LTD (2009) 80 IPR 451
HIGH COURT OF AUSTRALIA French CJ, Gummow, Hayne, Heydon, Crennan and Kiefel JJ 16, 17 October 2008, 22 April 2009 -- Canberra [2009] HCA 14 Copyright -- Literary work -- Subsistence of copyright -- Whether infringement of copyright by reproduction of a substantial part -- Application of skill and labour -- (CTH) Copyright Act 1968 ss 9(3), 10(1), 14(1), 21, 22, 29, 31, 36, Pt III Div 9, Pt III. The respondent is, among other things, in the business of free to air television broadcast and the scheduling of programs to be broadcast. The scheduling of programmes to be broadcast by the respondent involves the use of a database on the respondent's computer network. Approximately two weeks prior to the commencement of each week of broadcasting an employee of the respondent supplies third parties known as "aggregators" with a schedule of programmes to be broadcast on the respondent's network of stations in the applicable week (weekly schedule). Aggregators use the weekly schedule together with comparable material provided by other broadcasters and independently obtained material to produce schedules of programmes to be broadcast on various television stations for publication in various media (aggregated guides). The appellants are not broadcasters, rather they are in the business of providing, via the internet, a subscription based electronic programme guide for television. The programme guide, when downloaded, displays details of programmes scheduled to be broadcast by free to air television stations for the coming 6-8 days, including stations on the respondent's network (program guide). The court considered whether the respondent could obtain relief for copyright infringement arising from the reproduction of individual items of information by the appellant, being part of the time and title information in various programmes contained in the aggregated guides. The alleged reproduction involved the use of the words, figures and symbols, and the chronological arrangement

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in which time and title information was expressed. Held, appeal allowed: Per French CJ, Crennan and Kiefel JJ: (i) In order to assess whether material copied is a substantial part of an original literary work, it is necessary to consider not only the extent of what is copied, but also, critically, the quality of what is copied. This is particularly apposite for compilations as some compilations are no more than a selection of arrangements of facts already in the public domain. A factor critical to the assessment of the quality of what is copied is the originality of the part which is copied: at [30]-[32]. (ii) The expression of the time and title information in respect of each programme is not a form of expression which requires particular mental effort or exertion. The way in which the information can be conveyed is very limited. The authors of the weekly schedule had little, if any choice in the particular form of expression adopted, as that expression was essentially dictated by the nature of the information. The expression lacks the requisite originality (in the sense explained) for the part to constitute a substantial part: at [40]. 80 IPR 451 at 452 (iv) In respect of whether a chronological arrangement of times at which programmes will be broadcast constitutes a substantial part of the work, the chronological arrangement of times at which programmes will be broadcast is obvious and prosaic and lacks the requisite originality: at [41]. (iv) In respect of whether skill and labour was directed to the form of expression of the time and title information, including its chronological arrangement, the skill and labour devoted by the respondent's employees to programming decisions was not directed to the originality of the particular form of expression of the time and title information. The level of skill and labour required to express the time and title information was minimal. That is not surprising given that the particular form of expression of the time and title information is essentially dictated by the nature of that information: at [54]. Per Gummow, Hayne and Heydon JJ: (v) The originality of the compilation, being the weekly schedule, lay not in the provision of time and title information, but in the selection and presentation of that information together with additional programme information and synopses to produce a composite whole: at [152]. (vi) The time and title information appearing on the weekly schedule was decompiled by the appellant into the very different form of the aggregated guides and the appellant derived the time and title information through that medium rather than directly from the weekly schedule published by the respondent: at [186].

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(vii) Appeal allowed with costs. The orders of the Full Court made on 8 May 2008 as varied on 20 August to be set aside and in place thereof order that the appeal to that court should be dismissed with costs: at [189]. J M Ireland QC, S C G Burley SC and J S Cooke instructed by Bartier Perry for the appellants. A J L Bannon SC, R Cobden SC and J M Hennessy instructed by Gilbert & Tobin for the respondent. D K Catterns QC, A J Ryan and S M Rebikoff instructed by Mallesons Stephen Jaques intervening as amicus curiae on behalf of Telstra Corporation Ltd. R J Webb SC instructed by Baker & McKenzie intervening as amicus curiae on behalf of Australian Digital Alliance Ltd. French CJ, Crennan and Kiefel JJ. [1] The respondent, Nine Network Australia Pty Ltd (Nine), is engaged in the business of acquiring, distributing, selecting and scheduling programmes to be broadcast by various free-to-air television stations within the "Nine Network". The scheduling of programmes to be broadcast involves the use of a database on Nine's computer network (the Nine database). Approximately 2 weeks prior to the commencement of each week of broadcasting, an employee of Nine supplies certain third parties known as "aggregators" with a schedule of programmes to be broadcast on Nine Network stations in that week (a "weekly schedule"). Each weekly schedule is produced from the Nine database. [2] Each weekly schedule contains various elements, including particulars of the time and title of programmes to be broadcast (time and title information). The aggregators use the weekly schedule, together with comparable material provided by other Australian television broadcasters and independently obtained material, to produce "aggregated guides", which are schedules of programmes to be broadcast on various television stations, for publication in various media. [3] The first appellant, IceTV Pty Ltd (IceTV), commenced trading in 2005. It is a wholly owned subsidiary of the second appellant, IceTV Holdings Ltd (IceTV Holdings). They are not broadcasters. 80 IPR 451 at 453 [4] The primary business of IceTV is the provision, via the internet, of a subscription-based electronic programme guide for television known as the "IceGuide". When downloaded onto certain devices, which are available for purchase by consumers in Australia, the IceGuide displays details of programmes scheduled to be broadcast by free-to-air television stations for the coming 6-8 days, including stations in the Nine Network. [5] Over the period relevant to this appeal, when preparing the information to be included in the

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had been reproduced.75 In Ladbroke, Lord Evershed expressly rested his decision as to infringement upon the aspects of expression of the betting coupon in question, not the skill and labour in deciding what bets to offer.76 The other members of the House of Lords (except for Lord Devlin, who did not discuss infringement) relied on the aphorism, referred to above, that "what is worth copying is prima facie worth protecting";77 but it is significant that the reproduction was more extensive than in this case and included reproduction of aspects of arrangement. In Time Out, appropriation of skill and labour was not mentioned in the context of infringement. The focus was instead on the commercial value of the information alleged to have been reproduced from the broadcasting schedule in question, in that it concerned peak viewing times and omitted references to programmes which would be known by viewers to be broadcast at fixed times.78 With respect, that focus was upon the information itself, rather than the particular form in which it was expressed. 80 IPR 451 at 465 [52] Rewarding skill and labour in respect of compilations without any real consideration of the productive effort directed to coming up with a particular form of expression of information can lead to error.79 The error is of a kind which might enable copyright law to be employed to achieve anti-competitive behaviour of a sort not contemplated by the balance struck in the Act between the rights of authors and the entitlements of the reading public.80 The Act mandates an inquiry into the substantiality of the part of the work which is reproduced. A critical question is the degree of originality of the particular form of expression of the part. Consideration of the skill and labour expended by the author of a work may assist in addressing that question: that the creation of a work required skill and labour may indicate that the particular form of expression adopted was highly original. However, focussing on the "appropriation" of the author's skill and labour must not be allowed to distract from the inquiry mandated by the Act. To put aside the particular form of expression can cause difficulties, as evidenced by Desktop Marketing.81 [53] It is not seriously in dispute that skill and labour was expended on producing the weekly schedules (and the Nine database). The evidence disclosed considerable skill and labour involved in programming decisions. There was a contest about whether it mattered if some of the skill and labour expended was directed to business considerations.82 Plainly, the skill and labour was highly relevant to matters such as advertising revenue. It is not difficult to understand that questions of the timing of particular broadcasts are crucial for advertising revenues. The fact that business considerations inform the decision to adopt a particular form of expression will not necessarily detract from the originality of that form of expression. [54] However, the critical question is whether skill and labour was directed to the particular form of expression of the time and title information, including its chronological arrangement. The skill and labour devoted by Nine's employees to programming decisions was not directed to the originality of the particular form of expression of the time and title information. The level of skill and labour required to express the time and title information was minimal.83 That is not surprising, given that, as explained above, the particular form of expression of the time and title information is essentially dictated by the nature of that information.

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Animus furandi [55] In the light of these reasons, it is not necessary to consider the relevance of any animus furandi on the part of IceTV or IceTV Holdings.84 Conclusion [56] Any reproduction of the time and title information in the IceGuide was not a reproduction of a substantial part of any of the weekly schedules (or the Nine database). We agree with the orders proposed by Gummow, Hayne and Heydon JJ. 80 IPR 451 at 466 Gummow, Hayne and Heydon JJ. [57] These reasons in favour of allowing the appeal are organised as follows: Introduction The construction of Pt III of the Act Compilations and "substantial part" The Spicer Committee The transition to digital television The IceGuide The litigation Authorship and material form The pleadings and the evidence The holdings of the primary judge and the Full Court Misappropriation of skill and labour "of Nine" The EU Database Directive The submissions on "substantial part" Treatment of "substantial part" by the Full Court "Prediction" of time and title information Conclusions Orders

[58]-[64] [65]-[71] [72]-[76] [77]-[78] [79]-[83] [84]-[90] [91]-[94] [95]-[106] [107]-[121] [122]-[129] [130]-[134] [135]-[139] [140]-[153] [154]-[171] [172]-[184] [185]-[188] [189]

Introduction [58] The commercial interest which has given rise to this appeal is the control sought by the respondent (Nine) over the use of the programme schedules for television transmissions by its network (the Nine Network). The appellants (together "Ice") challenge the decision on 8 May 2008 of the Full Court of the Federal Court (Black CJ, Lindgren and Sackville JJ)85 that there has been

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[125] Bennett J explained that the relevant "skill and labour" of Nine included both the skill and labour of making decisions as to the selection and arrangement of programmes for broadcast in particular timeslots (referred to as the "preparatory" skill and labour) and the later "skill and labour" in drafting the synopses and selecting and arranging the time and title information, the additional programme information and the synopses in the form of the weekly schedule once the preparatory work was done. [126] As to the former, the primary judge found that the preparatory "skill and labour" involved the consideration by Mr Healy and Ms Wieland of many factors, such as viewer preferences and trends, audience size and demographic 80 IPR 451 at 483 appeal, contractual and regulatory obligations, competitor programming and ratings information. However, she also found that the primary purpose here was not to produce a literary work, but rather, to produce a programme line-up that would maximise viewers (and hence advertising revenue). The conclusion followed that the skill and labour in determining the programme line-up was not co-extensive with the skill and labour in creating the weekly schedule. IceTV was not a broadcaster and there was accordingly no relevant "appropriation" by it of the skill and labour of placing programmes. IceTV adopted its own form of presentation of the time and title information and drafted its own synopses and thus had not taken sufficient of "Nine's skill and labour" so as to have infringed by copying "slivers" of time and title information. [127] In the Full Court, the findings by Bennett J as to the identity of the relevant works in suit went unchallenged. The primary issue was whether the copying by Ice of time and title information from publicly available aggregated guides constituted the reproduction of a substantial part of the weekly schedule. After setting out the "Principles" identified earlier in these reasons, the Full Court turned its attention to this issue under the heading "Assessing the Primary Judge's Views on Ice's Appropriation of Nine's Skill and Labour".145 [128] It was in the assessment of this topic that a critical difference of opinion emerged in the reasoning of the Full Court. The Full Court explained (at [111]):146

[111] Ice, to the extent it reproduced time and title information from the Weekly Schedules, appropriated the skill and labour used by Nine to create the Weekly Schedules. Contrary to her Honour's conclusion, the skill and labour in selecting and arranging programming should not be regarded as separate and discrete from the extremely modest skill and labour involved in setting down on paper the programs already selected and presenting them in the form of the Weekly Schedules. The skill and labour expended by Nine were part of a single process leading to the creation of the copyright work as the written record of Nine's programming decisions and the associated program information. [Emphasis added.]

Upon this basis, that the skill and labour invested in the programming decisions could not be separated from the skill and labour of creating the copyright work, the Full Court continued (at [115]):147

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[115] Ice took, via the Aggregated Guides, precisely the pieces of information that reflected the exercise of skill and labour by Nine in determining the program for a particular day or other period ... Ice's use of material derived from the time and title information -we would not use the expression "slivers of information" -- appropriated the most creative elements of the skill and labour utilised by Nine in creating the Weekly Schedules. [Emphasis added.]

[129] The Full Court concluded that the time and title information was the "centrepiece" of the weekly schedule and that by taking it Ice had reproduced a substantial part of the relevant weekly schedules. Accordingly, the appeal was allowed and the proceedings were remitted to the primary judge for hearing and determination consistently with the reasons of the Full Court. 80 IPR 451 at 484 Misappropriation of skill and labour "of Nine" [130] Before turning to the submissions presented in this court, several points should immediately be made concerning the focus by the primary judge and the Full Court upon the skill and labour "of Nine" in their treatment of infringement. [131] The first is to emphasise the dangers when applying the Act of adopting the rhetoric of "appropriation" of "skill and labour".148 A finding that one party has "appropriated" skill and labour, of itself, is not determinative of the issue of infringement of a copyright work. The Act does not provide for any general doctrine of "misappropriation"149 and does not afford protection to skill and labour alone. [132] In the present case, the alleged infringement was identified in the reproduction of a substantial part of the relevant copyright "work": ss 36(1) and 31(1)(a). To speak of the "appropriation" of "Nine's skill and labour", rather than attending to the relevant "original" work of the author or authors, was to take a fundamental departure from the text and structure of the Act. In particular, while s 35(6) might have produced the consequence that Nine was the relevant copyright owner after identification of the relevant "author" or "authors", notions of the "skill and labour" of Nine were irrelevant to the existence of its title to the copyright and to the assessment of "substantial part". [133] The second point is that the conduct of the litigation in this manner reflected the decision in Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd.150 That case decided that telephone directories were "original" works in which copyright subsisted because "Telstra had undertaken substantial labour and incurred substantial expense"151 in compiling and presenting the details of telephone subscribers in a particular region. Infringement was identified in the appropriation of "the benefit of Telstra's substantial labour and expense".152 [134] However, a reason to treat the decision in Desktop Marketing with particular care appears from the reasons of the trial judge. Finkelstein J had observed (at [4]):153

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Whereas, in addition to aiming to protect the copyright in the original selection or arrangement of the contents of a database, this Directive seeks to safeguard the position of makers of databases against misappropriation of the results of the financial and professional investment made in obtaining and collection [of] the contents by protecting the whole or substantial parts of a database against certain acts by a user or competitor.

[139] In the absence of implementation of laws analogous to the kind described in the Directive, the matters now in issue cannot be resolved by concluding, as did the Full Court,162 that Ice appropriated "the fruits of Nine's skill and labour". The submissions on "substantial part" [140] In their submissions in this court, each of Nine and Ice emphasised that the court should look to the "originality" of the work as contributed by the author in determining whether there had been any reproduction by IceTV of a 80 IPR 451 at 486 "substantial part". If that be done, Ice submitted that the relevant originality would be seen to lie not in the composition of the time and title information, but in the selection and arrangement of that information, the additional programme information and the synopses into the "Excel" and "text" format of the weekly schedule. [141] As the course of oral argument progressed, there emerged between the parties fundamental differences as to the nature of the relevant "originality". The extent of these differences crystallised on the second day of the hearing when, apparently for the first time in the litigation, Nine sought to identify the work in suit as a single work "first made" upon the "dumping" of the Nine Programme Schedule into the Nine database by Mr Forrest and "first published" upon the emailing of the weekly schedule in "Excel" and "text" format to the aggregators. These have been described earlier in these reasons as "step five" and "step six".163 [142] Counsel for Nine explained that the work:

... was the work which was in material form made over a period of time but in final material form on the [Nine] [D]atabase. The [Weekly Schedule in "Excel" and "text" format] which were published [were] published by making it in another material form which was a piece of paper and sending it out. It did not become a different work. It was just another form of the same work.

The authors of the work so propounded were said by counsel to be Mr Healy and Ms Wieland164 and their "original" work was identified in the judgment and skill required to create the sequence or relationship between the programme title and time of broadcast, as expressed in the time and title information. In putting the case this way, Nine emphasised that the synopsis and the additional programme information followed "automatically" from the decision to broadcast a particular

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... require some understanding of the process of creating and updating an electronic database. First, the actual creation and updating of a database is rarely as simple as indiscriminately keying new data into some form of digital storage ... A decision has to be made about defining the records and fields (or the rows and columns) that are to be contained within the database ... Even though the final result is produced by the "work" of a computer in arranging the material in this way, human thought went into the scheme of the database and the conception of how the material would look to the external user ... The second response ... is based on the proposition that the authors of databases can claim authorship by virtue of having considered the possible outcomes of their input into the database. They have chosen the software used in the database and therefore chosen the operations that it can carry out on the data included. [Emphasis added.]

In the absence of evidence as to matters of this kind and of any provision in the Act akin to s 9 of the 1988 UK Act,167 Ice submitted in its oral submissions in reply that the relevant author of the weekly schedule was unknown. We agree. It would follow from this that no finding could be made as to whether the weekly schedule was a work of joint authorship within the meaning of s 10(1) of the Act.168 [152] However, the appeal to this court may be resolved without resolving issues of this nature. On the assumption favourable to Nine that the weekly schedule was "the same work" as the Nine database, the court should accept the submission by Ice that the originality of the compilation being the weekly schedule lay not in the provision of time and title information, but in the selection and presentation of that information together with additional programme information and synopses, to produce a composite whole. [153] The reasons for accepting that submission appear from further consideration of the reasons of the Full Court. 80 IPR 451 at 489 Treatment of "substantial part" by the Full Court [154] The effect of s 14(1)(a) of the Act is that an infringement by reproduction of a work may result from the reproduction of "a substantial part of the work". The word "substantial" has been said to be "not only susceptible of ambiguity" but to be "a word calculated to conceal a lack of precision".169 However that may be, which of the various possible shades of meaning the word bears in a provision such as s 14 of the Act will be determined by the context.170 With respect to s 14, that context includes the matters of development of copyright law to which reference has been made earlier in these reasons.171 [155] The Full Court stated that a finding of substantiality depended much more on the quality than the quantity of that which had been copied. That starting point is in accordance with authority.172 However, the "quality" relevant in the case of a literary work, including a compilation, was said to be "the literary originality of what has been copied".173 That quality was to be assessed by reference to "the interest protected by the copyright". The origin of these latter two propositions in Newspaper Licensing174 has been described earlier in these reasons.175 [156] Neither proposition is satisfactory and each is apt to mislead.

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[157] The proposition that in a case such as the present one looks to the literary originality of what IceTV copied, rather than to the weekly schedule as a whole, in answering the question whether IceTV reproduced a substantial part of the weekly schedule, shifts consideration to an extraneous issue. This is whether what the primary judge called the "slivers" of information may themselves be classified as original literary works. The issue requiring the comparison between what was taken and the whole of the work in suit may be distorted by a meditation, inspired by Desktop Marketing,176 upon the protection given by the Act against misappropriation of any investment of skill and labour by the author. In the present case, the temptation then is to classify the slivers each as original literary works. An important proposition may be overlooked. This is that the statutory requirement that the part of a work taken must be substantial assumes there may be some measure of legitimate appropriation of that investment. [158] A collateral matter should be put to one side. The case law does disclose that special difficulty has been encountered in considering the relationship between the phrase "a substantial part" in s 14(1) of the Act and the definition in s 10(1) of that species of "literary work" which is a "computer program", being:

... a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result. [Emphasis added.]

The phrase emphasised suggests the importance of function, although this is usually encountered in patent and designs law, rather than in the "traditional" law of copyright respecting original literary works. 80 IPR 451 at 490 [159] It was in this context, of the infringement of computer programs, that in Data Access,177 Gleeson CJ, McHugh, Gummow and Hayne JJ disfavoured a "but for" analysis which treated as essential for the purposes of substantiality each of the many necessary integers in a computer program, so that the presence of any one of them indicated the taking of a substantial part; such an analysis was overly protective of the interests of the owners of the copyright in that species of literary work, and overlooked the need for some process of qualitative abstraction of the material features of the computer program in question in order to determine any issue of substantiality under s 14(1) of the Act. But the special considerations that are present in cases such as Data Access are not found here. Use of the term "functionality" in compilation cases is unhelpful. [160] The proposition that the court should look to "the interest" which the copyright protects invites processes of reasoning to which there applies the warning by Judge Learned Hand in Nichols v Universal Pictures Corp.178 This is to the effect that the more remote the level of abstraction of the "interest", the greater the risk of protecting the "ideas" of the author rather than their fixed expression. That risk appears to have been realised in the reasoning of the Full Court.

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Copyright 2009 EUR-Lex, European Communities EUR-Lex Database: European Court of Justice Cases Judgment of the Court (Fourth Chamber) of 16 July 2009. Infopaq International A/S v Danske Dagblades Forening. Reference for a preliminary ruling: H[#248]jesteret - Denmark. Copyright - Information society - Directive 2001/29/EC - Articles 2 and 5 - Literary and artistic works - Concept of 'reproduction' - Reproduction 'in part' - Reproduction of short extracts of literary works - Newspaper articles - Temporary and transient reproductions - Technological process consisting in scanning of articles followed by conversion into text file, electronic processing of the reproduction, storage of part of that reproduction and printing out. Case C-5/08. Court of Justice of the European Communities European Court Reports 2009 Page I-06569 2009 ECJ EUR-Lex LEXIS 1493;2009 ECR I-06569 January 4, 2008 July 16, 2009 TYPE: [*1] Judgment SUBJECT: Approximation of laws; Industrial and commercial property; freedom of establishment and freedom to provide services; Right of establishment; Free movement of services PROCEDURE: Reference for a preliminary ruling DISPOSITION: On those grounds, the Court (Fourth Chamber) hereby rules: 1. An act occurring during a data capture process, which consists of storing an extract of a protected work comprising 11 words and printing out that extract, is such as to come within the concept of reproduction in part within the meaning of Article 2 of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society, if the elements thus reproduced are the expression of the intellectual creation of their author; it is for the national court to make this determination. 2. The act of printing out an extract of 11 words, during a data capture process such as that at issue

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in the main proceedings, does not fulfil the condition of being transient in nature as required by Article 5(1) of Directive 2001/29 and, therefore, that process cannot be carried out without the consent of the [*2] relevant rightholders. LANGUAGE: Danish ; INTRODUCTION: In Case C-5/08, REFERENCE for a preliminary ruling under Article 234 EC from the H[#248]jesteret (Denmark), made by decision of 21 December 2007, received at the Court on 4 January 2008, in the proceedings Infopaq International A/S v Danske Dagblades Forening, THE COURT (Fourth Chamber), composed of K. Lenaerts, President of the Chamber, T. von Danwitz, R. Silva de Lapuerta, G. Arestis and J. Malenovsk[#253] (Rapporteur), Judges, Advocate General: V. Trstenjak, Registrar: C. Str[#246]mholm, Administrator, having regard to the written procedure and further to the hearing on 20 November 2008, after considering the observations submitted on behalf of: - Infopaq International A/S, by A. Jensen, advokat, - Danske Dagblades Forening, by M. Dahl Pedersen, advokat, - the Austrian Government, by E. Riedl, acting as Agent, - the Commission of the European Communities, by H. Kr[#228]mer and H. St[#248]vlb[#230]k, acting as Agents, after hearing the Opinion of the Advocate General at the sitting on 12 February 2009,

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gives the following Judgment JUDGMENT-BY: Malenovsk[#253] [*3] JUDGMENT: 1. This reference for a preliminary ruling concerns, first, the interpretation of Article 2(a) of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society (OJ 2001 L 167, p. 10) and, secondly, the conditions for exemption of temporary acts of reproduction within the meaning of Article 5 of that directive. 2. The reference was made in the context of proceedings between Infopaq International A/S ('Infopaq') and Danske Dagblades Forening ('DDF') concerning the dismissal of its application for a declaration that it was not required to obtain the consent of the rightholders for acts of reproduction of newspaper articles using an automated process consisting in the scanning and then conversion into digital files followed by electronic processing of that file. Legal context International law 3. Under Article 9(1) of the Agreement on Trade-Related Aspects of Intellectual Property Rights ('the TRIPs Agreement'), as set out in Annex 1C to the Marrakesh Agreement establishing the World Trade Organisation, which [*4] was approved by Council Decision 94/800/EC of 22 December 1994 concerning the conclusion on behalf of the European Community, as regards matters within its competence, of the agreements reached in the Uruguay Round multilateral negotiations (1986-1994) (OJ 1994 L 336, p. 1): 'Members shall comply with Articles 1 through 21 of the Berne Convention (1971) and the Appendix thereto. --' 4. Article 2 of the Berne Convention for the Protection of Literary and Artistic Works (Paris Act of 24 July 1971), as amended on 28 September 1979 ('the Berne Convention') reads as follows: '(1) The expression "literary and artistic works" shall include every production in the literary, scientific and artistic domain, whatever may be the mode or form of its expression, such as books, pamphlets and other writings; --(5) Collections of literary or artistic works such as encyclopaedias and anthologies which, by reason

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between the different categories of rightholders and users of protected subject-matter must be safeguarded. --(33) The exclusive right of reproduction should be subject to an exception to allow certain acts of temporary reproduction, which are transient or incidental reproductions, [*9] forming an integral and essential part of a technological process and carried out for the sole purpose of enabling either efficient transmission in a network between third parties by an intermediary, or a lawful use of a work or other subject-matter to be made. The acts of reproduction concerned should have no separate economic value on their own. To the extent that they meet these conditions, this exception should include acts which enable browsing as well as acts of caching to take place, including those which enable transmission systems to function efficiently, provided that the intermediary does not modify the information and does not interfere with the lawful use of technology, widely recognised and used by industry, to obtain data on the use of the information. A use should be considered lawful where it is authorised by the rightholder or not restricted by law.' 9. According to Article 2(a) of Directive 2001/29: 'Member States shall provide for the exclusive right to authorise or prohibit direct or indirect, temporary or permanent reproduction by any means and in any form, in whole or in part: (a) for authors, of their works.' 10. Article [*10] 5 of the same directive provides: '(1) Temporary acts of reproduction referred to in Article 2, which are transient or incidental [and] an integral and essential part of a technological process and whose sole purpose is to enable: (a) a transmission in a network between third parties by an intermediary, or (b) a lawful use of a work or other subject-matter to be made, and which have no independent economic significance, shall be exempted from the reproduction right provided for in Article 2. -5. The exceptions and limitations provided for in paragraphs 1, 2, 3 and 4 shall only be applied in certain special cases which do not conflict with a normal exploitation of the work or other subject-matter and do not unreasonably prejudice the legitimate interests of the rightholder.'

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29. Consequently, the Austrian Government cannot successfully contend that it is for the Member States to provide the definition of the concept of 'reproduction in part' in Article 2 of Directive 2001/29 (see, to that effect, with respect to the concept of 'public' as referred to in Article 3 of the same directive, SGAE , paragraph 31). The first question 30. By its first question, the national court asks, essentially, whether the concept of 'reproduction in part' within the meaning [*20] of Directive 2001/29 is to be interpreted as meaning that it encompasses the storing and subsequent printing out on paper of a text extract consisting of 11 words. 31. It is clear that Directive 2001/29 does not define the concept of either 'reproduction' or 'reproduction in part'. 32. In those circumstances, those concepts must be defined having regard to the wording and context of Article 2 of Directive 2001/29, where the reference to them is to be found and in the light of both the overall objectives of that directive and international law (see, to that effect, SGAE , paragraphs 34 and 35 and case-law cited). 33. Article 2(a) of Directive 2001/29 provides that authors have the exclusive right to authorise or prohibit reproduction, in whole or in part, of their works. It follows that protection of the author's right to authorise or prohibit reproduction is intended to cover 'work'. 34. It is, moreover, apparent from the general scheme of the Berne Convention, in particular Article 2(5) and (8), that the protection of certain subject-matters as artistic or literary works presupposes that they are intellectual creations. 35. [*21] Similarly, under Articles 1(3) of Directive 91/250, 3(1) of Directive 96/9 and 6 of Directive 2006/116, works such as computer programs, databases or photographs are protected by copyright only if they are original in the sense that they are their author's own intellectual creation. 36. In establishing a harmonised legal framework for copyright, Directive 2001/29 is based on the same principle, as evidenced by recitals 4, 9 to 11 and 20 in the preamble thereto. 37. In those circumstances, copyright within the meaning of Article 2(a) of Directive 2001/29 is liable to apply only in relation to a subject-matter which is original in the sense that it is its author's own intellectual creation. 38. As regards the parts of a work, it should be borne in mind that there is nothing in Directive

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2001/29 or any other relevant directive indicating that those parts are to be treated any differently from the work as a whole. It follows that they are protected by copyright since, as such, they share the originality of the whole work. 39. In the light of the considerations referred to in paragraph 37 of this judgment, the various parts of a work thus enjoy protection [*22] under Article 2(a) of Directive 2001/29, provided that they contain elements which are the expression of the intellectual creation of the author of the work. 40. With respect to the scope of such protection of a work, it follows from recitals 9 to 11 in the preamble to Directive 2001/29 that its main objective is to introduce a high level of protection, in particular for authors to enable them to receive an appropriate reward for the use of their works, including at the time of reproduction of those works, in order to be able to pursue their creative and artistic work. 41. Similarly, recital 21 in the preamble to Directive 2001/29 requires that the acts covered by the right of reproduction be construed broadly. 42. That requirement of a broad definition of those acts is, moreover, also to be found in the wording of Article 2 of that directive, which uses expressions such as 'direct or indirect', 'temporary or permanent', 'by any means' and 'in any form'. 43. Consequently, the protection conferred by Article 2 of Directive 2001/29 must be given a broad interpretation. 44. As regards newspaper articles, their author' [*23] s own intellectual creation, referred to in paragraph 37 of this judgment, is evidenced clearly from the form, the manner in which the subject is presented and the linguistic expression. In the main proceedings, moreover, it is common ground that newspaper articles, as such, are literary works covered by Directive 2001/29. 45. Regarding the elements of such works covered by the protection, it should be observed that they consist of words which, considered in isolation, are not as such an intellectual creation of the author who employs them. It is only through the choice, sequence and combination of those words that the author may express his creativity in an original manner and achieve a result which is an intellectual creation. 46. Words as such do not, therefore, constitute elements covered by the protection. 47. That being so, given the requirement of a broad interpretation of the scope of the protection conferred by Article 2 of Directive 2001/29, the possibility may not be ruled out that certain isolated sentences, or even certain parts of sentences in the text in question, may be suitable for conveying to the reader the originality of a publication such as a newspaper [*24] article, by communicating to

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that reader an element which is, in itself, the expression of the intellectual creation of the author of that article. Such sentences or parts of sentences are, therefore, liable to come within the scope of the protection provided for in Article 2(a) of that directive. 48. In the light of those considerations, the reproduction of an extract of a protected work which, like those at issue in the main proceedings, comprises 11 consecutive words thereof, is such as to constitute reproduction in part within the meaning of Article 2 of Directive 2001/29, if that extract contains an element of the work which, as such, expresses the author's own intellectual creation; it is for the national court to make this determination. 49. It must be remembered also that the data capture process used by Infopaq allows for the reproduction of multiple extracts of protected works. That process reproduces an extract of 11 words each time a search word appears in the relevant work and, moreover, often operates using a number of search words because some clients ask Infopaq to draw up summaries based on a number of criteria. 50. In so doing, that process increases [*25] the likelihood that Infopaq will make reproductions in part within the meaning of Article 2(a) of Directive 2001/29 because the cumulative effect of those extracts may lead to the reconstitution of lengthy fragments which are liable to reflect the originality of the work in question, with the result that they contain a number of elements which are such as to express the intellectual creation of the author of that work. 51. In the light of the foregoing, the answer to the first question is that an act occurring during a data capture process, which consists of storing an extract of a protected work comprising 11 words and printing out that extract, is such as to come within the concept of reproduction in part within the meaning of Article 2 of Directive 2001/29, if the elements thus reproduced are the expression of the intellectual creation of their author; it is for the national court to make this determination. Questions 2 to 12 52. If the acts at issue in the main proceedings do come within the concept of reproduction in part of a protected work within the meaning of Article 2 of Directive 2001/29, Articles 2 and 5 of that directive make it clear that such reproduction [*26] may not be made without the consent of the relevant author, unless that reproduction satisfies the conditions laid down in Article 5 of that directive. 53. In that context, by questions 2 to 12, the referring court asks, essentially, whether acts of reproduction occurring during a data capture process, such as that at issue in the main proceedings, satisfy the conditions laid down in Article 5(1) of Directive 2001/29 and, therefore, whether that process may be carried out without the consent of the relevant rightholders, since it is used to draw up summaries of newspaper articles and consists of scanning those articles in their entirety to

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Case Name:

isoHunt Web Technologies Inc. v. EMI Group Canada Inc.

Between isoHunt Web Technologies, Inc., Petitioner (Respondent), and EMI Group Canada Inc., doing business as, EMI Music, Canada and said EMI Music Canada, Universal, Music Canada Inc./Musique Universal Canada, Inc. , Sony BMG Music (Canada) Inc., Warner Music Canada Co. and Canadian Recording Industry, Association, Respondents (Applicants) [2009] B.C.J. No. 2721 2009 BCSC 1837 79 C.P.R. (4th) 68 Docket: S086309 Registry: Vancouver

British Columbia Supreme Court Vancouver, British Columbia V.R. Curtis J. (In Chambers) Oral judgment: March 11, 2009. (22 paras.) Counsel: Counsel for the Petitioner: A.M. Grant. Counsel for the Respondents: S. Mason and L. Martz.

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Oral Reasons for Judgment 1 V.R. CURTIS J. (orally):-- It is my Ruling that Mr. Banks' affidavit is admissible in this application, which is an application for a direction that an action for a declaration go to trial rather than being heard as a proceeding under a Petition. 2 I agree that the style of Mr. Banks' affidavit is not what I would hope to see. In some instances, it tends to be argumentative and it has other weaknesses that I can identify. However, the essence of this application is for the Court to determine what the issues are going to be in deciding the issue the Petitioner seeks to have decided by the Court. Looked at from that point of view, Mr. Banks' style of affidavit is less objectionable, because I am not having to decide underlying facts of a case to decide this application. Rather, I am having to determine whether certain things are going to have to be decided as a fact to decide the application, that is, I have to decide what the issues are. Viewed in that light, the majority of Mr. Banks' affidavit can be useful to the Court, and I rule it is admissible. That does not mean that I shall ignore the Rules of Evidence in the application. If there is something stated that is not properly put forward in an affidavit to establish a fact, then it will not do that. (SUBMISSIONS BY COUNSEL) 3 This is an application by the Respondents in a Petition for a direction under Rule 52(11) that the proceeding be converted to a trial rather than proceeding as a Petition. It arises out of a Petition started by isoHunt Web Technologies, Inc. In its Petition, isoHunt Web Technologies, Inc. seeks a declaration that in operating its websites it is not violating the Copyright Act. The Respondents to the Petition are EMI Group Canada Inc., doing business as EMI Music Canada and said EMI Music Canada, Universal Music Canada Inc./Musique Universal Canada Inc., Sony BMG Music (Canada) Inc., Warner Music Canada Co. and Canadian Recording Industry Association. 4 What is involved here is that isoHunt Web Technologies, Inc. runs a number of websites which facilitate peer-to-peer file sharing. The Respondents have written to isoHunt Web Technologies, Inc. seeking to have the websites not facilitate the sharing of copyright material such as songs belonging to those represented by the Respondents. In order to resolve this issue, isoHunt Web Technologies, Inc. applied for the declaration I have referred to. 5 The tests for whether I ought to make the order that it proceed as a trial are set out in summary in the written argument of the Respondents at para. 25, and I will deal with them in order. 6 Is there a dispute about the material facts? I am satisfied on the material before me and on the issues brought up by this proceeding that there are substantial factual disputes in this case. The Copyright Act refers to illegal copying of material without the owner of the copyright's consent, but it also refers to a concept of authorizing the copying of material. The subject of authorizing has been given judicial consideration and authorizing raises two factual issues: knowledge and whether remedial action has been taken to prevent copying of copyright material without the holder's consent. These are two important factual issues and they relate to what the business isoHunt Web

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Technologies, Inc. knows about what is really being done with its website and the state of knowledge of its directors and people operating it and also whether it has made a genuine, workable effort to try and remediate any illegal use of what it is facilitating. 7 The second point: Does the Petition stand on a known or defined body of documents which will govern the result when the Court hears the matter? The answer to that is no. 8 Can all material issues be resolved based on affidavit evidence before the Court? The answer to that is no. This case raises complex factual and legal issues and it is very much in the interests of justice in this case that the facts be properly determined before the law, which is also in question here, be applied to those facts. 9 Do the issues involved require an assessment of demeanor and credibility of witnesses? Very likely. When it comes to the question of what the operators of this website have in mind and what they know or do not know, the believability of the testimony will be subject to question. 10 Are the procedures available for trial by way of action necessary in order for the Court to have a full grasp of all the evidence? The answer to that is yes. I think that examinations for discovery and discovery of documents will ensure that the relevant evidence is put before the Court, and I think that the absence of those procedures would make it unlikely that all of the relevant evidence would be before the Court. 11 Is the conduct and motives of the parties relevant in determining the issues so that their consideration in the context of the full factual matrix is required? The answer to that is yes, as I have already stated. 12 Are serious questions of law raised? Yes, this case raises a very serious question which is of importance to a large number of people far beyond the Petitioner in this case and, for that matter, the Respondents. It is well known in Canada that through the use of the internet many people can download copyright material. It is important for the law at some point to clearly delineate what the limits of facilities which allow this to be done are. Obviously, as stated, isoHunt in this case is not the one doing the illegal copying. It is people using isoHunt's technology that are. IsoHunt's technology also permits copying of publicly available material. There is an interest in the law not limiting the availability of those services, so this is a very complex and important question to be decided. 13 Will disposition of the proceedings have wide ramifications beyond the parties such that it should not be determined on a summary basis? The answer to that is yes, as I have just outlined. 14 Is hearing the matter by way of Petition fair and reasonable in the interests of justice? No for the reasons I have given. 15 For those reasons, I allow the application. I do make the direction under Rule 52(11) that this

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All England Official Transcripts (1997-2008) JHP Ltd v BBC Worldwide Ltd and another Copyright - Artistic work - Infringement of copyright - Written work - Claimant seeking damages for infringement of copyright - First defendant claiming reliance on acquisition of licence to use material in issue - Whether first defendant having valid defence to claim for damages - Copyright, Designs and Patents Act 1988, s 101(3) [2008] EWHC 757 (Ch), (Transcript)

CHANCERY DIVISION NORRIS J

23, 24, 25, 29, 30 OCTOBER 2007, 7, 16 APRIL 2008

16 APRIL 2008 This is a signed judgment handed down by the judge, with a direction that no further record or transcript need be made pursuant to Practice Direction 6.1 to Pt 39 of the Civil Procedure Rules (formerly RSC Ord 59, r (1)(f), Ord 68, r 1). See Practice Note dated 9 July 1990, [1990] 2 All ER 1024. J Mulcahy for the Claimant C May and J Whyte for the First Defendant The Second Defendant did not appear and was not represented Forbes Anderson Free; BBC Worldwide Legal Department

NORRIS J: [1] The Daleks first became known to humankind in 1963 when they appeared in the first series of "Dr Who". They were some of the most engaging and enduring creations of the fertile mind of the

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been copied: and indeed Mr Richards gave evidence that this was done (see above). Thus in part of Mr Richards "Anatomy" he had referred to an energy source focused into an energy beam, and said "The effect is like a bolt of lightning". The quoted sentence was removed from the published version. That same draft had proposed that the sucker cup on the Daleks arm "produces a tremendously powerful vacuum". In the published version the quoted sentence said that the arm "produced an intensely strong vacuum". In each case the quoted sentence bears a marked similarity to something in the Books. Ms Mulcahy invited me to treat this as evidence of attempt to disguise plain copying by Justin Richards. The alternative (more in keeping with my estimation of Justin Richards as a witness) is that even after he had done his best to avoid copying the BBC was anxious to avoid the suggestion that he had. [48] Had it been material to my disposal of the case I would thus not have held that JHP had established on the balance of probabilities that Justin Richards copied from the Books. I believe Mr Richards as to the manner in which he created the material he inserted; and if there are similarities, they arise from the fact that both texts are referring to something that existed as a published artistic concept outside either of them. [49] Given that I am dealing with an alternative disposition of the case only relevant in the event that my primary ground is wrong, and given that I am able to determine that alternative disposition by concluding that save in insubstantial respects there was no copying, I would very briefly record that if (contrary to my view) Mr Richards did copy then, even taking his copying at its most extensive, I would not have found that (when taken together with the copying of Mr Cole and of Mr Tucker and any failure to remove on the part of Ms Warman) the Guide reproduced a substantial part of any of the Books viewed individually. In each case the quantity is small. The significance is relatively minor. Furthermore, amongst the items on this footing "copied" the most significant are not in truth text on which Terry Nation expended significant skill and effort as the author of that particular work, but copies or repetitions of text which Terry Nation had earlier produced in the course of other work. [50] Again, I will support this finding by illustrative examples, rather than a complete schedule itemising each of the extracts from the three books:

(a) Ms Warman left in the Guide a reference to Terry Nation first discovering and translating the "The Dalek Chronicles". "The Dalek Pocketbook" stated that that work was largely based on the ". . . 'The Dalek Chronicles' which I [Terry Nation] discovered and translated . . .". In the original draft the source of the reference in the Guide was explicitly acknowledged but somewhere in the editing process the attribution was removed. Ms Mulcahy says the importance of this reference cannot be overstated. I agree that it is the most significant instance of "copying". But that one sentence

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(important as the idea it embodies is) does not constitute a substantial part of "The Dalek Pocketbook".

(b) Ms Warman left in the Guide a reference to Zolfian commissioning his chief scientist Yarveling to develop a powerful war machine. In the course of evidence it became apparent that rather than simply being "lifted" from an original source ("The Glossary" in "The Dalek Pocketbook") the text had in fact been written by Mr Richards. Even if he had as a matter of fact plundered The Glossary for the names and events described in the text (which I have held he did not) it would not have amounted to copying a substantial part of The Glossary because The Glossary itself simply recorded what Terry Nation had already written on 30 January 1965 in a TV 21 comic strip (about the Daleks perfecting their terrible weapon until war minister Zolfian was satisfied and declared "This is a mighty invention Yarvelling . . . .").

(c) The same original source (TV21) provides the first appearance of "Dalekenium" (the metal used for the Dalek casing) further referred to on p 11 of the "The Dalek Pocketbook"; of the Dalek Zeg's ability to absorb a chemical metal mixture produced by an explosion (ibid); and of the neutron bomb explosion on Skaro, Flidor Gold, and Arkellis Flower Sap (ibid p 14).

(d) Looking at the whole of "The Dalek Book" (some 93 pages in length) the allegations of copying relate to parts of two pages, which concern the The Dalek City and which repeat (in the context of another narrative) parts of the dialogue from the first broadcast Dalek story;

(e) In the Guide it is said that "the area immediately behind the Dalek is the main blind spot". On p 54 of "The Dalek Book" it is said "The main blind spot is immediately behind the Dalek" (and this is repeated in "The Dalek Pocketbook"). This text is no more than a simple and straightforward expression of what is evident in the TV series and a natural consequence of the anatomy of a Dalek (and in fact exactly the same text has been in circulation without apparent objection from JHP since the publication of the "The Dalek 1979 Annual"). Even if in fact copied, and copied from "The Dalek Book" and not from the 1979 Annual, this cannot be the copying of a significant part of the "The Dalek Book".

[51] It is material of this character that has lead me to the conclusion that (aid it been material) Mr Fishman would not have persuaded me on the balance of probabilities that the material taken was a

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substantial part of any of the works. [52] It follows from my conclusions on copying that the issue of "flagrancy" does not arise under s 97(2) of the Act. But for completeness I would add that had I found there to have been substantial copying I would not have considered it is deliberate or intentional or calculated. [53] At the conclusion of this survey of an alternative disposition of the case I return my principal ground for dismissing the claim. I hold that the Agreements were exclusive licences to publish (not assignments of the copyright in the text); and I find that Mr Hancock agreed to the use of the text in circumstances which afford BBCW a defence to the claim for infringement. Judgment accordingly.

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Indexed as:

King Features Syndicate, Inc. v. Lechter

Between: King Features Syndicate, Inc., et al., Plaintiffs; and Benjamin H. Lechter, Defendant. [1950] Ex.C.R. 297 12 C.P.R. 60

Exchequer Court of Canada Cameron J. 1950: February 1, May 3, 4 / 1950: May 4. Copyright -- Infringement -- Copyright Act, R.S.C., 1927, c. 32, ss. 2(j), 3 -- Title as subject matter of copyright -- "Infringing" -- The Unfair Competition Act, 1932, 22-23 Geo. V, c. 38, s. 3(b) 52 -Passing off -- Plaintiffs' mark not registered in Canada -- Registration of defendant's mark obtained by means of a false representation expunged. Plaintiff King Features Syndicate Inc. is owner of the Canadian Copyright in a well-known comic strip consisting of drawings and text, the copyright extending to both. The most widely known character in the comic strip is "Popeye" and that word has been used at times as the title of the strip. Defendant is the registered owner in Canada of the trade mark "Popeye". [page298] Plaintiffs allege that defendant, a wholesale and retail dealer in watches and jewellery carrying on business in Montreal, P.Q., without the authorization or consent of plaintiffs in 1948 was advertising and selling in Canada watches bearing on their dials reproductions of the characters in the above mentioned comic strip and that such were advertised and sold as "Popeye" watches. In an action for infringement of plaintiffs' copyright defendant admitted that the plaintiffs were the owners or licensees of the four characters so reproduced on the dials of defendant's watches and that the reproduction of such characters on his watches infringed plaintiff's copyright in such characters.

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The Court found that in addition to this admission the use of the word "Popeye" in connection with such characters constituted an infringement of plaintiffs' rights. The Court also found that the evidence did not establish that the plaintiffs -- or any of them -- had acquired any common law trade mark rights in the word "Popeye" in Canada and they had no registered trade marks for that word in Canada. Held: That the very limited use of the dial in plaintiffs' "Popeye" watch does not constitute such distribution of the wares in Canada as to bring the name "Popeye" used in connection therewith, within the ambit of s. 3(b) of The Unfair Competition Act, 1932. 2. That mere intent to deceive is not enough, there must be grounds of apprehending actual deception, and plaintiffs are not entitled to restrain defendant from using the trade mark "Popeye" unless that word be used in association with the characters or literary work in which plaintiffs have a copyright, or a copy or a colourable imitation thereof. 3. That since the entry in the register of trade marks does not accurately express or define the existing rights of the defendant as there was no user by him prior to registration it should be expunged. ACTION for infringement of copyright. The action was tried before the Honourable Mr. Justice Cameron at Ottawa. Hazen Hansard, K.C. and Andre Forget, for the plaintiffs. Christopher Robinson, K.C., for the defendant. The facts and questions of law raised are stated in the reasons for judgment.

CAMERON J. now (February 1, 1950) delivered the following judgment: 1 CAMERON J.:-- In this matter the plaintiff, King Features Syndicate, Inc. -- a New York corporation -- is the owner of the Canadian copyright in the well-known comic strip entitled at various times "Thimble Theatre," "Thimble Theatre [page299] Starring Popeye," and "Popeye." The strip consists of drawings and text and the copyright extends to both. The said copyright was first registered in Canada on May 29, 1934. Further registrations were obtained at weekly intervals as the comic strip was published, the last of such registrations being effected on the 27th of April, 1936. The material so registered included a great many drawings and representations of the characters in the strip including "Popeye", "Olive Oyl", "Wimpy", and "Sweetpea". The Hearst Corporation -- the

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the figure "Popeye" being much the largest of the four characters. The word "Popeye" does not appear thereon but the words "King Features Syndicate" appear at the bottom of the dial. 9 In August, 1948, the defendant commenced to advertise and sell watches of which Exhibit 1 is a sample. The dials thereon were prepared to his order by another firm, but do not bear the name of any manufacturer or vendor. Each of the dials, however, has on it a perfect reproduction in miniature of the four characters which I have named; and, except that it bears the word "Popeye" and does not bear the words "King Features Syndicate", is identical throughout with the dial put out by the Harman Watch Company -- Exhibit 47. The reproduction of Exhibit 47 in Exhibit 1 is so perfect and complete that -- as stated by one witness Wimpy's whiskers in each case are made up of exactly nine hairs.

[page301] 10 After all the evidence had been submitted, counsel for the defendant admitted that the plaintiffs were the owners or licensees of the copyright in the four characters so reproduced on the dials of the defendant's watches (Exhibit 1) and that the reproduction of such characters on his watch did infringe the plaintiff's copyright in such characters. 11 This admission of infringement, however, is limited to the reproductions of the four characters on watch dials similar to those in Exhibit 1. The plaintiffs, however, submit that the use of the word "Popeye" in connection with the said characters, one of which is the character known as "Popeye" or "Popeye the Sailorman", is also an infringement of their copyright. "Popeye", as I have said, has been used at times as the title of the plaintiff's comic strip but is also the name of one of the characters in the strip, perhaps the one most widely known. 12 The broad principle is that in general a title is not by itself a proper subject matter of copyright; but there may be particular cases when the title is on so extensive a scale or of so important a character as to be a proper subject of protection against being copied. The general principle, however, has been modified in Canada to a limited extent by an amendment to the Copyright Act. By section 2 of the Copyright Amendment Act, 1931, subsection (v) is added to section 2 of the Act. By that amendment "'work' shall include the title thereof when such title is original and distinctive." The effect of this amendment was considered in the Privy Council in Francis, Day & Hunter Ltd. v. Twentieth Century Fox Corp. Ltd.,1. In that case the plaintiffs claimed copyright in a song entitled "The Man Who Broke the Bank at Monte Carlo," and claimed that the use of those words as the title of a motion picture film infringed their copyright in the musical work. At p. 124 Lord Wright said: Their Lordships are prepared to assume for purposes of this appeal that the amendment applied to existing copyrights: they will likewise assume that the title was original in the sense that it had not been copied from another work. They are

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content for purposes of this appeal to adopt the definition given by Maclean J. in Kantel v. Frank Grant, Nisbet & Auld Ltd., (1933) Ex. C.R. 84, though they wish to reserve the question how far that definition can be accepted as sufficient in other cases. It is, however, difficult to define satisfactorily the word "distinctive", since it cannot mean merely that the title is used to identify the particular [page302] work. 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 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 (v) entitles the appellants to succeed in this case. 13 In the case at bar the evidence establishes that the title "Popeye" was original in that it was the word coined by the plaintiffs or their predecessors in title and had not been copied from any other work; and that it was also distinctive. The defendant's admission that the use of the four characters constitutes infringement of the plaintiff's copyright therein is sufficient, I think, to establish that what the defendant copied was "a substantial part of the work" in which the plaintiffs had copyright. That is sufficient, in my view, to bring the title "Popeye", when used in conjunction with the four characters, within the protection afforded by section 2(v). I find, therefore, that not only was there infringement by the defendant by the reproduction of the four characters as shown in Exhibit 1 (as now admitted by the defendant), but also that the use of the word "Popeye" in connection with such characters, constituted an infringement of the plaintiff's rights. 14 Following a conference with solicitors for the plaintiffs, the defendant says that on September 20, 1948, he discontinued the manufacture and sale of watches with dials such as Exhibit 1. But almost immediately thereafter he advertised, manufactured and sold other "Popeye" watches of which Exhibit 9 is a sample. The dial on that watch has four characters thereon, similarly disposed as in Exhibit 1 and Exhibit 47. The word "Popeye" appears prominently and is so placed that it might be considered as the name of [page303] the watch or, alternatively, as the name of the character on each side of which one-half of the word appears. The plaintiffs allege further that the

105
Page 8

the original as to give every person seeing it the idea created by the original. The similarity here is sufficiently substantial to constitute prima facie evidence of copying; that evidence has not been refuted by any evidence of the defendant to establish that notwithstanding the similarity there was no copying but independent creation; see the [page306] opinion of Lord Wright at p. 414 in King Features Inc. v. Kleeman Ltd., (supra). The defendant has exercised unlawfully the sole right which is conferred on the plaintiffs and should be enjoined therefrom. Moreover, I find that as the copying of the plaintiffs' work was substantial, that the use of that work with the title "Popeye" on Exhibit 9 constitutes an infringement of the plaintiffs' rights for the reasons which I have stated above. 20 As to the other three characters displayed on the dial of Exhibit 9, I need say but little. They appear to be identical copies of the head only of the main character thereon ("Popeye"), the lower one located at 6 o'clock having the same red sailor cap, and the other two, facing inwardly at 3 and 9 o'clock, having blue caps. They are so dissimilar to the characters in which the plaintiffs have copyright that, when used as characters only, they cannot be held to be an infringement of the plaintiffs' copyright. 21 Turning now to the question of the use of the title of "Popeye" alone, I must say that in my opinion this question falls to be considered under the trade mark law rather than that applicable to copyright. There is no evidence that the watch put out by the Harman Watch Co. Inc. -- or its predecessor -- was ever in use in Canada or was known in Canada within the meaning of section 3(b) of The Unfair Competition Act, 1932. The plaintiffs have led evidence intended to establish that about 1935 a watch made by Montgomery Ward & Co. under license from the Hearst Corporation was distributed in Canada and was therefore known in Canada within section 3(b). W. J. O'Neil, Secretary-Treasurer of Paramount Film Services, Ltd., states that about that year his firm received from the parent company -- Paramount Pictures Inc. of New York -- a small number of watches similar to Exhibit 22 for distribution gratis among his firm's employees in Toronto for advertising purposes in connection with "Popeye" film cartoons, and that he or his family received two or three of them, one of which was still in his possession but was not produced. That watch has but one character, that of "Popeye," and the dial bears the name "Popeye" in red ink adjacent to the figure. There is no evidence that that "Popeye" watch was ever advertised or sold in Canada. I am of the opinion that [page307] the very limited use of that dial in that way does not constitute such distribution of the wares in Canada as to bring the name "Popeye", used in connection therewith, within the ambit of section 3(b). 22 The plaintiffs also claim that the defendant has no right to use on his wares in any manner the names of the four characters in which they have copyright, that is the names of "Popeye", "Wimpy", "Sweetpea" and "Olive Oyl". They submit that the defendant did not adopt the trade mark "Popeye" in good faith but as part and parcel of his infringement and in order to obtain for himself a weapon with which to compel the plaintiffs to grant him a license for the production of watch dials bearing those characters. Their contention is that the use of such names constitutes a species of passing off and that the public, by reason of the very extensive use of the "Popeye" strip in magazines, newspapers, comic books, films and radio, and the extensive advertising thereof throughout Canada,

106
Page 1

All England Law Reports/1964/Volume 1 /Ladbroke (Football) v William Hill (Football) Ltd [1964] 1 All ER 465 [1964] 1 All ER 465 Ladbroke (Football) v William Hill (Football) Ltd

HOUSE OF LORDS LORD REID, LORD EVERSHED, LORD HODSON, LORD DEVLINb AND LORD PEARCE

18, 20, 21, 26, 27, 28 NOVEMBER 1963, 21 JANUARY 1964 Copyright - Compilation - Originality - Approach to determining whether copyright exists Compilation regarded as a whole - Skill, labour and judgment involved - Football betting coupon Wagers listed in coupon selected from a very great variety of possible wagers - Work of selecting wagers to be taken into account when assessing originality - Work of presentation of chosen wagers to the eye of the customer by means of the coupon also involving skill, labour and judgment Coupon an original literary work within Copyright Act, 1956 (4 & 5 Eliz 2 c 74), s 2(1) and s 48(1). Copyright - Infringement - Compilation - Approach - Determining first whether work as a whole entitled to copyright and then whether part reproduced was a substantial part - Football betting coupon comprising various parts - Substantial part copied - Copyright Act, 1956 (4 & 5 Eliz 2 c 74), s 2(5)(a) and s 49(1). The correct approach in deciding if there is infringement of copyright in a literary compilation is first to determine whether the work as a whole is entitled to copyright, and, second, to enquire whether the part reproduced by the defendant is a substantial part of the whole; but it is not the correct approach to dissect the work into fragments and, if the fragments are not entitled to copyright, to deduce that the whole compilation could not be so entitled (see p 469, letters c and f, p 475, letter h, and p 479, letter c, post).

Lord Devlin retired on 10 January 1964

107
Page 2

The respondents were well-known bookmakers who had done business for many years in fixed odds football betting sending out to their clients each week during the football season a fixed odds football coupon. The coupon was a sheet of paper on which were printed sixteen lists of matches to be played each week; each list was headed with an appropriate name and offered a variety of wagers at stated odds and contained explanatory notes. One of the lists contained the full list of matches to be played at the end of the week this list being determined by the Football League who owned the copyright in it. The other lists were shorter lists of matches selected by the respondents from the full list. Altogether the coupon offered 148 varieties of wager at widely differing odds. A great deal of skill, judgment, experience and work had gone into devising the coupon for the respondents had to select from the very great variety of possible wagers those that would appeal to the punter while being profitable to the respondents, and had then to arrange and describe the selected wagers in an attractive way on the coupon. The respondents had not altered their coupon since 1951, though the selection of matches in the lists was necessarily changed each week. Some of the wagers offered by the respondents were commonly offered by other bookmakers. The appellants, who were also well-known bookmakers, decided to enter the field of fixed odds football betting in 1959, and in devising their coupon for the 1960/1961 season they copied from the respondents' coupon fifteen out of the sixteen lists arranging them in the same order as they appeared in the respondents' coupon, in many cases with the same headings and almost identical varieties of wager, and with similar explanatory notes. They did not copy the odds offered by the respondents but worked these out for themselves and since the respondents' and the appellants' coupons were published simultaneously each week there was no copying of matches selected by the respondents. The respondents claimed copyright in their coupon and alleged infringement by the appellants. By the Copyright Act, 1956, s 2(1) copyright subsisted in every "original" literary work, a [1964] 1 All ER 465 at 466 literary work including, by virtue of s 48(1), a compilation. Under s 2(5)(a) and s 49(1) copyright gave the exclusive right to reproduce a substantial part of the work in any form. Though the appellants admitted copyright in the respondents' selection of matches and statement of odds (neither of which they had copied) they denied copyright in the rest of the coupon. It was not disputed that, as regards a compilation (such as the coupons), the originality requisite to render a work original for the purposes of s 2(1) was a matter of degree depending on the amount of skill, judgment or labour that had been involved in making the compilation. Held - (i) for the purpose of determining whether the respondents' coupon had the originality requisite to render it original work within s 2(1) of the Copyright Act, 1956, it was right to take into account the considerable skill, judgment and labour expended by the respondents in the selection of types of wagers, for the production of the coupons was an object of the work so done and that work was preparatory work which could not properly be excluded (see p 477, letter c, p 479, letter c, and

108
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p 480, letter i, to p 481, letter a, post; cf p 470, letters a and b, post), moreover (per Lord Evershed) after the work of deciding the wagers had been done, there still remained the further task, requiring considerable skill, labour and judgment, of expressing and presenting the chosen wagers for the eye of the customer (see p 472, letter h, post); accordingly there was copyright in the respondents' coupon. Collis v Cater, Stoffell and Fortt Ltd ((1898), 78 LT 613) and University of London Press Ltd v University Tutorial Press Ltd ([1916] 2 Ch 601) applied. Purefoy Engineering Co Ltd v Sykes Boxall & Co Ltd ((1955), 72 RPC 89) and Cramp & Sons Ltd v Frank Smythson Ltd ([1944] 2 All ER 92) distinguished. (ii) on the facts the copying of the respondents' coupon by the appellants amounted to reproduction of a substantial part of the compilation, and accordingly there was infringement of the respondents' copyright by the appellants (see p 471, letter a, p 474, letter g, p 477, letter i to p 478, letter a, and p 481, letter e, post). Dictum of Peterson J in University of London Press Ltd v University Tutorial Press Ltd ([1916] 2 Ch at p 610) approved. Appeal dismissed.
Notes

As to copyright in compilations and selections, see 8 Halsbury's Laws (3rd Edn) 374, 375, paras 687 and 688; and for cases on the subject, see 13 Digest (Repl) 58-62, 79-98. As to infringement by copying a substantial part of the work see 8 Halsbury's Laws (3rd Edn) 427, para 777; for cases on infringement, see 13 Digest (Repl) 104-110, 451-518. For the Copyright Act, 1956, s 2(1), (5), s 48(1), s 49(1), see 36 Halsbury's Statutes (2nd Edn) 72, 73, 142, 145.
Cases referred to in opinions

Blacklock (H) & Co Ltd v Pearson (C Arthur) Ltd [1915] 2 Ch 376, 84 LJCh 785, 113 LT 775, 13 Digest (Repl) 58, 78.

109
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respondents had established copyright in the coupon. Did the appellants reproduce a substantial part of it? Whether a part is substantial must be decided by its quality rather its quantity. The reproduction of a part which by itself has no originality will not normally be a substantial part of the copyright and therefore will not be protected. For that which would not attract copyright except by reason of its collocation will, when robbed of that collocation, not be a substantial part of the copyright and therefore the courts will not hold its reproduction to be an infringement. It is this, I think, which is meant by one or two judicial observations that "there is no copyright" in some unoriginal part of a whole that is copyright. They afford no justification, in my view, for holding that one starts the inquiry as to whether copyright exists by dissecting the compilation into component parts instead of starting it by regarding the compilation as a whole and seeing whether the whole has copyright. It is when one is debating whether the part reproduced is substantial that one considers the pirated portion on its own. In the present case the learned judge found that there was deliberate copying, but he did not decide whether the part copied was substantial. The majority of the Court of Appeal thought that it was. I agree with them. There are many things which are common to many coupons. But the respondents' coupon had an individuality. The appellants clearly modelled their coupon on the respondents' coupon and copied many of the things that give it this individuality. I cannot regard these things taken together as other than substantial. There is force in the words of Peterson J in the case of the University of London Press Ltd ([1916] 2 Ch at. p 610) that "what is worth copying is ... worth protecting". I would therefore dismiss the appeal. Appeal dismissed. Solicitors: Joynson-Hicks & Co (for the appellants); Hardcastle Sanders & Armitage (for the respondents). Wendy Shockett Barrister.

182

110 SUPREME COURT

OF

CANADA

1953

MUZAK CORPORATION
AND
26

APPELLANT

Mar

2526

June

COMPOSERS AUTHORS AND PUBLISHERS ASSOCIATION OF CANAND

RESPONDENT

ADA LIMITED

ASSOCIATED BROADCASTING
COMPANY LIMITED MAX WELL
and

MARTIN

DEFENDANTS

ON APPEAL FROM THE EXCHEQUER

COURT OF CANADA

Summons of PracticeExchequer CourtCopyrightInfringementWrit Court Service of Notice out of jurisdictionWhether an Exchequer 011 includes an orderWhether English interlocutory judgment
appliesThe
as

Exchequer

Court

Act R.S.C 1927

34

ss

75

821b
under
of

amendedRr
in

42

76
for

The

respondent Exchequer
for service

an

action 76
for

infringement
to issue

of

copyright
of

applied

Court
outside

leave

notice

statement

claim

the
the

jurisdiction

upon The

the

appellant and

corporation having
its

incorporated
chief place of

under

laws

of

the

State of

New York
was deponent

business that

therein
in

application of

supported the

by an
plaintiff

affidavit

stating

the

belief of

the

respondent
allowed of and

had
the

good

cause

action granted

The
it

application under

was

appellant

the Exchequer

then by Court Act R.S.C

leave

821b
by
1949k

1927

34

as

amended

PRESENT

Kerwin Taschereau

Rand

Kellock

and

Cartwright

JJ

S.C.R

111 SUPREME COURT OF CANADA

appealed on the grounds Players that
the

183
had erred
in 1953

court had

below

applying

Falcon

Famous
that be

Film

Co

proceeded was not

upon
sufficient

wrong principle and

to entitle

the material

relied

upon

an

order an

to

made judgment
Court hear within an the

CIoN
COMPOSERS AUTHORS
PUBLISHERS

Held
fore

That

interlocutory

meaning

of

821
there

of the Exchequer was and 75 the and

of jurisdiction to

Act

includes

order and

there-

the appeal

Taschereau
effect 11

Rand
of
the

JJ
Act

expressing and
of of

no

opinion
and 42
in
is

that
to

the

combined ASSOCIATION
OF
applicable

of
of

rr 76

make

ANADA

Supreme

Court

Judicature that

England
adduced that the
in case

Kerwin
support

Taschereau

JJ dissenting
was not outside the

the evidence to
establish

the application
for service

sufficient

was

proper one
Tezirsto

jurisdiction

Vitkovice

Horni

Hutni Falcon

Korner

AC
Co
not

869

referred

to

Famous

Players Film

KB
reported
of

393

K.B 474

distinguished Decision
of the

Exchequer

Court

reversed

APPEAL
Exchequer

from

the

judgment

Thorson was

of granted

the to

Court of Canada wherein leave

to

the respondent service

issue notice

of

the Statement the

of Claim for

out of the jurisdiction against Henderson

for the

appellant

appellant the respondent

Manning

Q.C

for

KERWIN
Justice Estey

dissenting under s-s

in

By
of

leave
of

granted

by

Mr

82

the

Exchequer
appeals

Court from an

Act as enacted
order of the

1949 Muzak Corporation

of the

President

Exchequer

Court

granting

Composers Authors
tiff

and Publishers Association

the notice

plain
of the against

in

an action
of

in

that
for

Court
service

leave to issue

statement
the

claim

out

of the jurisdiction

appellant
82

S-s
to

of
the

82 reads as
Court judgment of

follows
Canada upon
lies

An
from of law with

appeal
final raised

Supreme
or

judgment

demurrer

or point

by the pleadings and

of

leave

judge

of

the

Supreme
in

Court

of

Canada

from

an

interlocutory

judgment
the

pronounced
or

by

Exchequer
in

Court which

an

action

suit cause
in

matter

other

judicial five

proceeding

the

actual

amount

controversy

exceeds

hundred

dollars

Unless interlocutory
cludes

judgment

in

this
it

subsection

in

order

there

is

nothing to which

applies

and the

paragraph would be
the

nugatory and

Notwithstanding the use of

in

word

judgment
in

order
not

other

sections

of

the

Act and
liament cerned

the

Rules

am

prepared to hold

that

Par

in enacting which so far as provision is con was new meant and accomplished nothing thereby

S.C.R again
in

112 OF CANADA SUPREME COURT

be limited to
areas
to of sale

may

or production countries

or performance they

1953

specified

specified

and

may
of

be

MUZAK
CORPORATION

exclusive

one person or open to the market

The
on

material

on which York

the

order that

for

service

out

the

COMPOSERS

jurisdiction
ries in

was

made shows
the

Muzk
of

Corporation

ear
OF

New

business

furnishing

electric

transcriptions the

and programme means by which Associated

in

schedules

by way The
units

of hire as can

CANADA

Broadcasting

Company

perform the compositions ped from

Ontario

are ship-

RandJ

New York

at the

entire cost of Associated

includ
in this

ing customs duties

and other taxes

and
in

fees

payable

country no law
course are or
of

Furnishing the
copyright there

transcript

New York
in

violates ordinary

and

it

is

done

the

business there
is

All payments

to

Muzak by
by
the

Associated Associated as
for

made

The

privilege

enjoyed
is

within

Ontario

exclusive

and
to

of

same nature company

in

another

franchise granted then

different

Quebec
It

is

the

simple

situation of

of

hiring

New York

by
is

Canadian

company
sense

means
to the

or instrument for
in

forming
in

copyright

musical related
is

composition

per Canada Muzak

in

no other

business

Canada
than

of

Associated

and there

no more connection

between
fees

that the

company and the payment of performance payment of customs duties at the border But
include
it is

said

that

the

sole

rights such

enjoyed
acts
in

under aforesaid

that

to

authorize

any

as

which Muzak has violated

authorizes Associated that use
is

Obviously

one sense Muzak which

it

to

make
not

use

of instruments

owns but
dealing suggest the

to be in
is

accordance syllable in
itself

with regulations
the
in

with it
that

There

material

to

Muzak

has made

party the

interest to

performance
fee or

either

by warranting
in the
If

right to perform of partnership device to

its

without
or

by anything
relation as

nature

similar business
is

by

letting

the in the

owner
defiance

to be taken of regulations record

it

engaging very

himself

use

the

distinction give

between
public

right to

make

and the which

right to

per
the

formance by means of Act provides

for
is

Mr
It

Manning

made and
if

wiped out
is

would be as

person

who

lets

gun to another

to be charged with license

authoriz

ing hunting without

game

113
Page 1

Indexed as:

Preston v. 20th Century Fox Canada Ltd.

Between Dean Preston, Plaintiff, and 20th Century Fox Canada Limited, George Lucas and Lucas Films Ltd., Defendants [1990] F.C.J. No. 1011 38 F.T.R. 183 33 C.P.R. (3d) 242 24 A.C.W.S. (3d) 1141 Action No. T-142-85

Federal Court of Canada - Trial Division Calgary, Alberta MacKay J. November 9, 1990 Copyright -- Literary works -- Scripts -- Infringement -- Motion pictures -- Copying -- Copyrightability -- Name -- Idea -- Form -- Similarities in concept -- Substantial similarity -- Tests. Action in copyright infringement. The plaintiff wrote a draft manuscript in which he told the story of two furry characters - Olaks and Ewoks - living on another planet. He sent the manuscript to a friend to develop into a movie or television script. The friend subsequently worked the manuscript and named it "Space Pet". The script was sent to the defendants but its receipt was never acknowledged. The defendants were the producers of a highly successful science fiction series "Star Wars". One of the films "Return of the Jedi", featured a story about certain furry characters living on a distant planet. These characters were not named in the film except in the credit lines at the very end where they were described as "Ewoks". The plaintiff claimed that the defendants' film infringed his copyright, alleging that it was an unauthorized derivation of his literary work "Space Pets". HELD: Action dismissed. The average observer would find no substantial similarity in the script and the film. Accordingly, while there were some general similarities in details depicting the

114
Page 2

Ewoks, there was no substantial similarity between the script "Space Pets" and the movie "Return of the Jedi". Further, while in exceptional circumstances copyright may vest in a name, the characteristics set out in the script did not delineate the character of the Ewok sufficiently distinctly to qualify for copyright. STATUTES, REGULATIONS AND RULES CITED: Copyright Act, R.S.C. 1985, c. C-42, ss. 3, 3(1)(d), 3(1)(e), 13(1), 27(1), 34(1), 34(3). A. Webster Macdonald, Sr., for the Plaintiff. W. Graham Dutton, Q.C. and Rita V. Bambers, for the Defendants.

MacKAY J.:-- In this action, the plaintiff, who describes himself as a writer, producer and entrepreneur in the entertainment industry, residing in Calgary, Alberta, seeks a variety of remedies against the defendants based on alleged infringement of copyright claimed by the plaintiff in a literary work entitled Space Pets [Footnote 1 appended to judgment]. The basis of the claim of the plaintiff is that the defendants used the work said to have been created by the plaintiff without the latter's knowledge, consent or authority in a motion picture entitled Return of the Jedi and in a television series Ewok Adventure and in various other forms and mediums. The defendant, George Lucas, is a well-known motion picture producer, writer and director of films, a major shareholder and Chairman of the Board of the corporate defendant Lucasfilm Ltd., who resides in California. The correct legal names of the defendant corporations are Twentieth Century-Fox Canada Limited and Lucasfilm Ltd. The former carries on business in Alberta and elsewhere in Canada as a distributor of motion pictures and the latter has its head office in California in the United States of America. The defendants together are the producers and distributors, among other films, of a series of films known as the Star Wars trilogy, the third film in this series being Return of the Jedi. That film and others in the Star Wars series, were very successful at the box office and together with the marketing of related wares and merchandise, they led to very significant financial success in the late 1970's and early 1980's. In this action, commenced by statement of claim in 1985, Mr. Preston, the plaintiff, seeks 1) a declaration that the plaintiff has enforceable copyright in the whole, or in the alternative in pages 1 and 2, of the literary work Space Pets and that this copyright has been infringed by the defendants; an injunction restraining the defendants from infringing the plaintiffs copyright in the literary work Space Pets; general damages in an amount of some millions of dollars as well as significant punitive and exemplary damages;

2) 3)

115
Page 22

ing out at the edge, a large crossbow affair that takes several Ewoks to load and fire, and slings with which they are very accurate". They are also depicted in one scene with spears. Only the spears and slings of this group of weapons are used in the film, though a catapult, a weapon used by the Olaks in the script, is used by Ewoks in the film with some other weapons, including a hangglider, not mentioned in the script. Not among their weapons, but generally similar features which on closer examination are different are the Little God Riders of the script ("small battery powered kiddie cycles" which in testimony Preston described as having wheels) and the "speeder bikes" of the film (two seater, airborne, apparently jet propelled vehicles without wheels). A sedan chair is used in both the script (for a throne and to transport the Ewok chieftain) and the film (to transport and honour the droid/automaton character C-3PO, deemed by the Ewoks as a special being, and to permit Luke Skywalker to demonstrate his powers of levitation). In the script a vine net trap falls in a forest clearing but does not trap the human explorers who nevertheless are soon surrounded by Ewoks. In the film a vine net trap does fall and traps the exploring party of humans and droids who break free but are soon surrounded by Ewoks. The voices of the Ewoks are said to be similar in script and film. In the script the voice is "high, squeaky...when passed through the language interpretor, (Langread) comes out sounding similar to the voices used by David Seville of Chipmonk fame" which enables the heroes and the audience to understand them. In the film they also have high voices, but only C-3PO can understand them and he translates for others what they have said. Their voices range in pitch and are not otherwise intelligible even as voices akin to those "of Chipmonk fame". Finally, there is similarity in their forest dwellings, in tree huts joined by platforms or walkways but as earlier noted this scene in the film was from a setting used in 1978, before the date of Hurry's letter, for filming of a television special program. Many of the detailed similarities, in my view, can be traced to the common store of folklore about primitive species with human characteristics upon which Lucas was as free to draw as were Preston and Hurry. Yet drawing upon a common store of information does not in itself answer to the claim of infringement. It is the expression of ideas, not the ideas themselves, that is the subject of copyright. It is entirely possible that two or more authors, composers, dramatists or other artists may draw upon a common store of information for ideas and each may have copyright in his or her expression of those ideas. But if while drawing upon the common information base, one should copy the expression in literary or dramatic form of another author copyright may be infringed. Conclusion concerning similarities alleged Under the Copyright Act, copyright is the sole right to produce or reproduce a literary, dramatic, musical or artistic work or any substantial part of it in any form whatever, copyright is vested first in the author of the work and infringement is deemed when any person without the consent of the owner of the copyright does anything that only the owner has the right to do. (The Act, sections 3(1) and (2), 13(1) and 27(a)) [Footnote 4 appended to judgment.]. Here there is no suggestion that the defendants simply reproduced by film the script Space Pets; rather the claim is that without consent of the plaintiff they incorporated a substantial part of the script in Return of the Jedi. Thus the consideration of similarities claimed between the script and the film. There appears a dearth of Canadian jurisprudence on the test for assessing substantial similarity. Authorities from England and from the United States are helpful for, though the legislation differs in some respects from the Act in Canada, it appears in both cases to be based on similar concepts

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and principles. Substantial similarity is not to be measured only by the quantity of matter reproduced from a copyrighted work, though that may be a significant factor [Footnote: See Horn Abbot Ltd. v. W.B. Coulter Sales Ltd. (1984), 77 C.P.R. (2d) 145 (F.C.T.D.) (The "Trivial Pursuit" case).]. Of more import may be the quality of matter reproduced. At least in the case of literary or dramatic works assessing similarities may depend upon a number of factors. In the recent Canadian decision, Hutton et al. v. Canadian Broadcasting Corp., (1989) 27 C.I.P.R. 12 at 57-60 (Alta. Q.B.), pending appeal, MacCallum J. refers to the test for substantial similarity developed by the Ninth Circuit, in California, of the United States Court of Appeals [Footnote: Sid & Marty Krofft Television Productions, Inc. v. McDonald's Corp., 562 F. 2d 1157 at 1164, 196 U.S.P.Q. 97 (9th Cir. Cal., 1977) (The "H.R. Pufnstuf" case)] and by the District Court for the Southern District of New York [Footnote: Bevan v. Columbia Broadcasting System Inc., 329 F. Supp. 601 at 605, 177 U.S.P.Q. 339 (S.D.N.Y., 1971) (The Hogan's Heroes" case).] (within the Second Circuit of the U.S. Court of Appeals). Two more recent decisions of each Court provide a current overview of the tests as evolved within these two circuits of the U.S. Court of Appeals [Footnote: Shaw v. Lindheim, 908 F. 2d 531 (9th Cir. 1990), and Jones v. CBS Inc., 733 F. Supp. 748 (S.D.N.Y. 1990)]. From the two step developed in the Ninth Circuit and from the single step test of the Second Circuit certain factors for assessing substantial similarity are suggested. These factors include plot, themes, dialogue, mood, setting or scenes, pace, sequence and characters, so far as these are within the recognized limits of copyright in the protected work. In assessing these factors, a decision ultimately for the trier of fact, the test is ultimately whether the average lay observer, at least one for whom the work is intended, would recognize the alleged copy as having been appropriated from the copyrighted work. In my view it is helpful to consider these factors in assessing substantial similarity alleged here in the script and the film. I have already noted that there is no claim to similarity in plot or dialogue, and the previous outlines of the two productions, I believe, clearly indicate no similarity in themes, in mood, pace or sequence. Similarity is claimed in relation to setting or scenes, those involving a net trap of vines, the forest habitat and houses of the Ewoks in both, but it is my view that those scenes in themselves are not subject to copyright or protected by it for they are standard aspects of productions concerning primitive species or primitive humans, drawn from a common pool of folklore. It is my view, after careful consideration of the similarities alleged, that the average lay observer, the average person in the respective intended audiences would find no substantial similarity in the script and the film. I conclude that, while there are some general similarities in details depicting the Ewoks, there is not substantial similarity between the script Space Pets and the film Return of Jedi. This would be sufficient to dispose of any claim that the defendants infringed any right of the plaintiff under subsection 3(1)(d) of the Act, but further consideration must be given to the question of whether the Ewok character, as developed in the script Space Pets, is subject to copyright and the author's right to produce or reproduce that character is protected under subsection 3(1)(d) or (e) of the Act, and if so whether that character was substantially reproduced in the film [Footnote: Quare whether subsection 3(1)(e) applies to the circumstance here set out. The issue of alleged copying of the character of the Ewok from the script was argued, but not with reference to the Act or that subsection, which would appear to relate to the character of the work rather than a character in the work.]. The Ewok character in the script: a matter for copyright?

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In essence the core of the plaintiffs argument is that the Ewok and its characteristics as developed in the script was copied without authorization by the defendants. The name Ewok appears more than forty times in the script Space Pets; as earlier noted it is not heard in the film and it appears only at the end with the printed list of credits to players and others. While generally there cannot be copyright in a mere name [Footnote: See Francis Day and Hunter Ltd. v. Twentieth Century Fox Corporation, Ltd. et al., [1939] 4 All E.R. 192 at 197-198 (P.C.); King Features Syndicate Inc. v. Lechter, [1950] Ex. C.R. 297 per Cameron J. at 305-307], where the name identifies a well known character copyright in the name and associated character may be recognized [Footnote: King Features Syndicate Inc. v. Lechter, [1950] Ex. C.R. 297 per Cameron J. at 305-307, where copyright in "Popeye" characters was conceded; Walt Disney Productions v. The Air Pirates et al., 581 F. 2d 751 (U.S.C.A., 9th Cir. Cal. 1978) (Disney cartoon creatures copyright).]. For such recognition it is said the character must be sufficiently clearly delineated in the work subject to copyright that it become widely known and recognized [Footnote: See Kelly v. Cinema Houses, Ltd. [1932] Macg. Cop. Cas. 362 at 367-8 (C.A.) where Maughan L.J. suggests, dicta, that no infringement could be found if the character taken from a book or play is devoid of novelty; Warner Bros. Pictures Inc. v. Columbia Broadcasting System Inc., 216 F. 2d 945 at 950 (U.S.C.A., 9th Cir., 1954); Universal City Studios Inc. et al. v. Zellers Inc. (1983), 73 C.P.R. (2d) 1 (F.C.T.D.) where Walsh J. enjoined marketing of "E.T." dolls which were subject to copyright.]. In the words of Learned Hand J. [Footnote: Nichols v. Universal pictures Corporation, 45 F. 2d 119 at 121 (U.S.C.A. 2nd Cir. 1930).] "... the less developed the characters, the less they can be copyrighted; that is the penalty an author must bear for marking them too indistinctly". If we review the character of the Ewok as developed in the script Space Pets we know that Ewoks are described in the following terms: - They are shorter than Olaks who stand a mere three feet tall; - like Olaks they are ape like and bipedestrian, apparently with hands; - their hair is darker and longer than the short haired Olaks who have light brown hair; - they have a face like a panda, with large white patches beneath their eyes and dark faces; - they are more warlike than Olaks and dress in heavier armour, of tree bark with skirt styled lower halves in pieces linked by tough vines, and they wear helmets of wood or hollowed skulls of larger animals; - the Ewok chieftain has thinning hair hanging in long strings, is carried in a sedan chair, and wears a wardrobe like other Ewoks except that he also wears a metal crown; - they have been at war for years against the Olaks, they use spears, a spinner type weapon thrown by hand and made from round pieces of wood with spikes

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sticking out around the edge, a large crossbow affair that takes several Ewoks to load and fire, and slings, with which they are very accurate; - like Olaks, they live high off the ground in thatched houses slung between monstrous trees and access to these is by vines knotted for climbing, the houses are joined by habitat; - they speak the same basic language as the Olaks in a high squeaky kind of dialogue that, when passed through the language interpreter (Langread) comes out sounding similar to the voices used by David Seville of Chipmonk fame which permits them to be understood by the human characters in the script and by the audience; - They use a net trap made of vines which drops to trap intended quarry in the one scene where their weapons are used they yell and "woop", rushing forward waving spears and whirling slings over their heads; in their habitat they swing by vines from one branch to another, while female Ewoks use the bridges; they beat drums and they use fire; and - they appear to have many human characteristics, as do the Olaks. In my view the characteristics set out in the script do not delineate the character of the Ewok sufficiently distinctly to warrant recognition as a character subject to copyright. Indeed, it is difficult to distinguish them from the Olaks in the script, in their general dress, their use of primitive weapons, their habitats and their respective roles which are essentially the same. Indeed, as suggested earlier, the plaintiff Preston and experts testifying in support of his case appeared to have difficulty in distinguishing between them in testimony which in part compared both primitive species from the script with Ewoks of the film. Finally, in this case it cannot be said that the Ewok character as developed in the script is widely known by reason of the script in which Preston claims copyright. From his own evidence, Preston indicates that only he and Hurry would be aware of the contents of the script Space Pets, and aside from the allegations concerning the defendants, only one other person, a friend with whom he spent time in Alberta, was shown the script. He did talk about Ewoks with others, including the little people he encountered in Los Angeles in May 1982, the artist who prepared his logo design, and a friend through whom he made arrangements with two unnamed persons for auction sales of Ewok items of clothing. All of these activities together did not make well known the Ewok character as developed in the script. The process which made an Ewok well known, indeed famous, was the work under supervision of George Lucas and Lucasfilm Ltd. in production of the successful film, Return of the Jedi, and related distribution and promotional activities of the defendants. In these circumstances, I conclude that the character of the Ewok as developed in the script Space Pets is not in itself subject to copyright. Copyright in the script Space Pets A third issue raised in these proceedings concerns the matter of copyright in the script Space Pets and, as it was put by counsel for the defendants, whether Preston was the author of the script. If he were not the author he could not claim relief for infringement of copyright. It will be recalled that

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Page 1

Indexed as:

Prism Hospital Software Inc. v. Hospital Medical Records Institute

Between Prism Hospital Software Inc., Edgar Trueit, Penrose Holdings Ltd., John Jeffery and Mainland Business Systems Inc., Plaintiffs, and The Hospital Medical Records Institute, John Stenabaugh, Lynne Abbott and Steve Imbert, Defendants [1994] B.C.J. No. 1906 [1994] 10 W.W.R. 305 97 B.C.L.R. (2d) 201 18 B.L.R. (2d) 1 57 C.P.R. (3d) 129 49 A.C.W.S. (3d) 1065 Vancouver Registry No. C872267

British Columbia Supreme Court Vancouver, British Columbia Parrett J. Heard: November 4, 1991 - July 9, 1992 (47 days). Judgment: August 23, 1994. Filed: August 25, 1994. (307 pp.) Contracts -- Formation of contracts -- Interpretation of contracts -- Extrinsic evidence -- Intention of parties and purpose test -- Contra proferentum rule -- Breach of contract -- Damages, assessment -- Loss of business opportunities -- Licenses -- Ownership of licensed property -Copyright -- Infringement of copyright -- Computer programmes -- Copying and reproduction --

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Substantial similarity test -- "Look and feel" test -- Copying of source code -- Adaptation and improvement of infringed work -- Damages, assessment in copyright infringement case -- Evidence -- Hearsay exceptions -- Business records -- Official records -- Minutes of meetings. Action for breach of contract and copyright infringement. When the parties met, the defendant HMRI maintained and operated a health care information database on a mainframe computer, and the plaintiff Prism was in the business of creating and marketing a computerized health care abstract collection and reporting system. In 1985, HMRI entered into negotiations with Prism whereby the latter would create a medical record abstracting software for HMRI which could be used on desktop PCs. The negotiations culminated in Prism submitting a "Proposal" and later, executing a "License Agreement" with HMRI. The Proposal stipulated a joint venture in which Prism would develop a low-cost PC-based medical abstracting system which would then be distributed by HMRI and placed in hospitals across Canada. Prism would license the software at significantly less than normal rates in return for up-front capital support by HMRI and the commercial exposure it would receive from the placement of the software in several hospitals. The License Agreement incorporated the Proposal by reference. The Agreement contained the usual clause excluding collateral representations etc. etc. It obligated HMRI to aggressively market the software. The Agreement also specifically stated that property in the software remained in Prism. The Agreement authorized HMRI to make additions and modifications on condition that such additions and modifications remained the property of Prism. Although HMRI was allowed to sub-license the software to other hospitals, it was expressly prohibited from transferring or leasing the source code to any person or entity without Prism's written consent. Although HMRI experienced some technical problems with their use of the software, the evidence clearly showed that overall the software was well-received. The problems experienced were established at the trial to be due solely to incompetence on the part of HMRI staff and lack of qualified personal to execute the software. Sometime in late 1986, HMRI hired a Mr. Imbert, a programmer, who began to copy the Prism software. It was established in evidence that Mr. Imbert copied the source code of the Prism software. The License Agreement was terminated and HMRI proceeded to market its own version of the software to the hospitals in direct competition with Prism. Prism sued HMRI for breach of contract and copyright infringement. The factual issues in the case turned on the credibility of the parties and their witnesses. HELD: Action allowed. HMRI committed a fundamental breach of the contract. The Prism Proposal was not extrinsic evidence because it was expressly incorporated into the License Agreement. There was no ambiguity in the terms of the contract as they related to the rights and obligations of the parties. In any case, the contra proferentum rule did not apply because this was not a case in which the terms of the contract were drafted by one party for its sole benefit. The minutes of HMRI's Board of Directors' meetings were admissible to establish favourable opinions that were being expressed by top management in respect of the Prism software during the contract. HMRI's conduct in breaching the contract directly impacted on Prism's ability to compete and market its products. These impacts were reasonably within the contemplation of the parties and

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could properly be remedied in damages. The evidence clearly established that the source code of the software was copied by HMRI and that the end-products were substantially similar. Accordingly, HMRI was liable for infringing Prism's copyright in the software and was liable in damages. Statutes, Regulations and Rules Cited: Copyright Act, R.S.C. c. C-30, ss. 3(1), 27(1). Counsel for the Plaintiff: Adrian Chaster and P. Hamilton. Counsel for the Defendant: G.E. Fisk and N.L. Fishman.

I.

INTRODUCTION

1 PARRETT J.:-- This action raises factual and legal issues which are centered on the relationship between an author of a computer program (or group of programs) and the person for whom the program was written. 2 Once the many factual issues are resolved the essential question to be determined is the scope of protection available to the author of computer software in contract and under the provisions of the Copyright Act, R.S.C., c. C-30. 3 A host of subsidiary issues arise from and around these general issues. These will be referred to in turn within the context in which they arise. 4 It is important to a proper consideration of the issues in this case to place the relationship of the present parties in the historical context in which they arose. In this sense I refer to the development of microcomputer technology itself, which burst on the scene in the early 1970's and began to revolutionize the data processing industry and then set in motion a wave of change that has reached into virtually every aspect of our present lives. The extent of that development and the present level of our familiarity and use of the technology serves to perhaps obscure the rate at which these changes occurred. A proper consideration of the factual disputes in the present case requires a realization of the fact that the relationship of the parties began during the infancy of this technology, at a time of quite extraordinary change and development. 5 The first Apple I computer was demonstrated in July 1976. This was followed by the introduction of the Apple II in 1977. On August 12, 1981 IBM announced the introduction of what it characterized as the IBM Personal Computer a product which soon became known as the "PC". When the parties began their discussions in August of 1985, the discussions were aimed at

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. . . The right to reproduce the work encompasses a wide variety of acts of reproduction by any process for the indefinite multiplication of copies, whether mechanically or otherwise. The concept of reproduction involves two elements: resemblance to, and actual use of, the copyright work. Two elements are required to make out a cause of action for infringement by reproduction: first, the reproduction must be either of the entire work or of a substantial part (or, as it is sometimes said, there must be sufficient objective similarity between the infringing work and the copyrighted work, or a substantial part thereof), and second, there must be some causal connection between the copyrighted work and the infringing work. In other words, the copyrighted work must be the source from which the copy is derived. In Apple Computer Inc. v. Mackintosh Computers Ltd. Hugessen J. stated that the sole right of reproduction includes, by necessary implication, the sole right to produce the means of reproduction of the work, and the sole right to produce anything used or intended to be used to reproduce the work. 599 The use of the phrase "substantial part" is derived in part from the language of s. 3(1) which refers to the ". . . sole right to produce or reproduce the work or any substantial part thereof in any material form whatever. . ." but there is a second aspect to the phrase as well. It is a rare case in which proof of actual copying is available, in those cases where it is not, an evidentiary test can be applied through the comparison of the original and the impugned work. Where this comparison demonstrates the existence of a substantial part of the original work or "sufficient objective similarity" between the two the evidentiary burden has been met and the inference of copying may be drawn. 600 To be actionable the copying must be of the expression, in effect, the author's original or literary work not the ideas, concepts or underlying facts. 601 Infringing is also defined by the Act: "infringing", when applied to a copy of work in which copyrights subsists, means any copy, including any colourable imitation, made, or imported in contravention of this Act; It is also the specific subject of s. 27(1) which provides: 27.(1) Copyright in a work shall be deemed to be infringed by any person who, without the consent of the owner of the copyright, does anything that, by this Act, only the owner of the copyright has the right to do. 602 The term "expression" is sometimes equated with the term originality. Copyright protection is not afforded to collections of facts but rather to the original component contributed by a particular

123
[2006] 2 R.C.S.
RObERTSON

c. THOMSON CORP.

363

Heather Robertson Appellant/Respondent on cross-appeal v. The Thomson Corporation, Thomson Canada Limited, Thomson Affiliates, Information Access Company and Bell Globemedia Publishing Inc. Respondents/Appellants on cross-appeal and Canadian Newspaper Association and Canadian Community Newspaper Association Interveners
Indexed as: Robertson v. Thomson Corp. Neutral citation: 2006 SCC 43. File No.: 30644. Hearing: December 6, 2005. Present: McLachlin C.J. and Major, Bastarache, Binnie, LeBel, Deschamps, Fish, Abella and CharronJJ. Rehearing: April 18, 2006. Judgment: October 12, 2006. Present: McLachlin C.J. and Bastarache, Binnie, LeBel, Deschamps, Fish, Abella, Charron and RothsteinJJ.

Heather Robertson Appelante/Intime au pourvoi incident c. The Thomson Corporation, Thomson Canada Limite, les entreprises affilies Thomson, Information Access Company et Publications Bell Globemedia Inc. Intimes/Appelantes au pourvoi incident et Association canadienne des journaux et Canadian Community Newspaper Association Intervenantes
Rpertori : Robertson c. Thomson Corp. Rfrence neutre: 2006 CSC 43. No du greffe: 30644. Audition: 6 dcembre 2005. Prsents: La juge en chef McLachlin et les juges Major, Bastarache, Binnie, LeBel, Deschamps, Fish, Abella et Charron. Nouvelle audition: 18 avril 2006. Jugement: 12 octobre 2006. Prsents: La juge en chef McLachlin et les juges Bastarache, Binnie, LeBel, Deschamps, Fish, Abella, Charron et Rothstein.
en appel de la cour dappel de lontario

on appeal from the court of appeal for ontario

Intellectual property Copyright Infringement Right to reproduce work Newspaper publishers reproducing in databases and CDROMs articles by freelance and staff writers published in newspapers Freelance author bringing class action against newspaper publishers for copyright infringement Whether newspaper publishers entitled to reproduce in databases and CDROMs freelance articles acquired for publication in newspapers and staff written articles Copyright Act, R.S.C. 1985, c. C42, s.3(1).

Proprit intellectuelle Droit dauteur Violation Droit de reproduire une uvre Articles de pigistes et demploys publis dans un journal reproduits par les diteurs du journal dans des bases de donnes et sur des CDROM Recours collectif pour violation du droit dauteur intent par les auteurs pigistes contre les diteurs du journal Les diteurs de journaux peuvent-ils reproduire dans des bases de donnes lectroniques et sur des CDROM les articles quils acquirent de pigistes en vue de les publier dans leurs journaux et les articles rdigs par leurs employs? Loi sur le droit dauteur, L.R.C. 1985, ch. C42, art.3(1).

2006 SCC 43 (CanLII)

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364
RObERTSON v. THOMSON CORP.

[2006] 2 S.C.R.

Civil procedure Class actions Class members Newspaper publishers reproducing in databases and CDROMs freelance and staff writers articles published in newspapers Freelance author bringing class action against newspaper publishers for copyright infringement Whether staff writers should have been certified as members of class. In 1995, the appellant R wrote two freelance articles that were published in The Globe and Mail. Copyright was not addressed in the agreements with respect to either article. R initiated an action against the respondents (publishers) for copyright infringement, object ing to the presence of her articles in two databases, Info Globe Online and CPI.Q, and a CDROM. In Info Globe Online and CPI.Q, articles from a given daily edition of The Globe and Mail are stored and presented in a database together with thousands of other articles from different newspapers or periodicals and different dates. The databases identify each article by publication date, page number and other contextual information. The CDROMs also contain The Globe and Mail and various newspapers. Their content is fixed and finite and users are able to view a single days edition. The databases and the CDROMs all omit advertisements, most graphic elements, daily information, birth and death notices and some design elements from the original print edition. Rs action was certified as a class action, the class being all contributors to The Globe and Mail except those who died before 1944. R sought partial summary judgment and an injunction restrain ing the use of her works in the databases, seeking judgment for herself and S, an employee of The Globe and Mail. The motions judge found that the databases and the CDROMs reproduced individual articles, not the collective work of the newspapers, but dismissed the motion on the grounds that there were genuine issues for trial. The Court of Appeal affirmed the decision.

Procdure civile Recours collectifs Membres du groupe Articles de pigistes et demploys publis dans un journal reproduits par les diteurs du journal dans des bases de donnes et sur des CDROM Recours collectif pour violation du droit dauteur intent par les auteurs pigistes contre les diteurs du journal Les employs auraient-ils d tre autoriss participer au recours collectif? En 1995, lappelante R a crit deux articles la pige qui ont t publis dans le Globe and Mail. La question du droit dauteur na pas t aborde dans les ententes concernant lun ou lautre de ces articles. R a intent une action contre les intimes (les diteurs) pour violation du droit dauteur, afin de sopposer la prsence de ses articles dans deux bases de donnes, Info Globe Online et CPI.Q, ainsi que sur un CDROM. Dans Info Globe Online et CPI.Q, les articles tirs dune dition quotidienne donne du Globe and Mail sont stocks et prsents dans une base de donnes avec des milliers dautres articles publis dans diffrents journaux ou priodiques et des dates diverses. Les bases de donnes identifient chaque article en mentionnant sa date de publication, le numro de la page et dautres renseignements contextuels. Les CDROM contiennent aussi le Globe and Mail et diffrents journaux. Leur contenu est limit et non modifiable et les utilisateurs peuvent visualiser un journal dans son dition quotidienne. Les bases de donnes et les CDROM omettent les annonces publicitaires, la plupart des illustrations, les renseignements quotidiens, les avis de naissance et de dcs ainsi que certains lments graphiques de ldition papier originale. Laction de R a t certifie en tant que recours collectif pour un groupe form de tous les collaborateurs du Globe and Mail, lexception de ceux qui sont dcds avant 1944. R a demand un jugement sommaire partiel et une injonction interdisant lutilisation de ses uvres dans les bases de donnes, sollicitant un jugement en son nom et en celui de S, employ du Globe and Mail. Le juge des requtes a conclu que les bases de donnes et les CDROM reproduisaient des articles individuels, et non les recueils que constituaient les journaux, mais il a rejet la requte parce quil existait son avis de vritables questions litigieuses. La Cour dappel a confirm sa dcision. Arrt (la juge en chef McLachlin et les juges Binnie, Abella et Charron sont dissidents en partie quant au

Held (McLachlin C.J. and Binnie, Abella and Charron JJ. dissenting in part on the cross-appeal): The

2006 SCC 43 (CanLII)

Intellectual property Copyright Licences Whether licence from freelance author granting right to newspaper publishers to republish his or her articles in databases and CDROMs must be in writing Copyright Act, R.S.C. 1985, c. C42, s.13.

Proprit intellectuelle Droit dauteur Licences La concession par un pigiste dune licence accordant aux diteurs de journaux le droit de reproduire ses articles dans des bases de donnes et sur des CDROM doitelle tre constate par crit? Loi sur le droit dauteur, L.R.C. 1985, ch. C42, art.13.

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[2006] 2 R.C.S.
RObERTSON

c. THOMSON CORP.

365

appeal should be dismissed. The cross-appeal should be allowed with respect to the CDROMs only. Per Bastarache, LeBel, Deschamps, Fish and Rothstein JJ.: Newspaper publishers are not entitled to republish freelance articles acquired for publication in their newspapers in Info Globe Online or CPI.Q without compensating the authors and obtaining their consent. Newspaper publishers have a copyright in their newspapers and have a right, pursuant to s. 3(1) of the Copyright Act, to reproduce the work or any substantial part thereof in any material form whatever. It follows that a substantial part of a newspaper may consist only of the original selection so long as the essence of the newspaper is preserved. The task of determining whether this essence has been reproduced is largely a question of degree but, at a minimum, the editorial content of the newspaper the true essence of its originality must be preserved and presented in the context of that newspaper. Here, in Info Globe Online and CPI.Q, the originality of the freelance articles is reproduced, but the originality of the newspapers is not. The newspaper articles are decontextualized to the point that they are no longer presented in a manner that maintains their intimate connection with the rest of that newspaper. Viewed globally, these databases are compilations of individual articles presented outside of the context of the original collective work from where they originated. The resulting collective work presented to the public is not simply each of the collective works joined together it is a collective work of a different nature. The references to the newspaper where the articles were published, the date they were published and the page number where they appeared merely provide historical information. By contrast, the CDROMs are a valid exercise of The Globe and Mails right to reproduce its collective work. By offering users, essentially, a compendium of daily newspaper editions, the CDROMs remain faithful to the essence of the original work. Lastly, the concept of media neutrality reflected in s. 3(1) of the Act is not a licence to override the rights of authors. Media neutrality means that the Copyright Act should continue to apply in different media, but it does not mean that once a work is converted into electronic data anything can then be done with it. The resulting work must still conform to the exigencies of the Copyright Act. [1-4] [3753]

pourvoi incident): Le pourvoi est rejet. Le pourvoi incident est accueilli en ce qui concerne les CDROM seulement. Les juges Bastarache, LeBel, Deschamps, Fish et Rothstein: Les diteurs de journaux qui acquirent des articles de pigistes en vue de les publier dans leur journal nont pas le droit de reproduire ces articles dans Info Globe Online ou CPI.Q sans rmunrer leurs auteurs et sans obtenir leur consentement. Les diteurs de journaux sont titulaires du droit dauteur sur leur journal et le par. 3(1) de la Loi sur le droit dauteur leur confre le droit de reproduire la totalit ou une partie importante de luvre, sous une forme matrielle quelconque. En consquence, le choix original peut constituer, lui seul, une partie importante dun journal, dans la mesure o lon conserve lessence du journal. La question de savoir si cette essence a t reproduite est surtout une question de degr, mais il faut tout le moins que le contenu rdactionnel du journal sa vritable originalit soit prserv et prsent dans le contexte de ce journal. En loccurrence, loriginalit des articles rdigs la pige est prserve dans Info Globe Online et CPI.Q, mais celle des journaux ne lest pas. Les articles sont dcontextualiss tel point que la manire dont on les prsente ne prserve pas leur lien intime avec le reste du journal. Considres globalement, ces bases de donnes constituent des compilations darticles individuels sortis du contexte du recueil original dont ils proviennent. Le recueil qui en rsulte et qui est offert au public ne reprsente pas simplement un regroupement de chacun des recueils il sagit dun recueil dune nature diffrente. Les mentions du nom du journal dans lequel les articles ont t publis, ainsi que de la date et du numro de la page de leur publication napportent que des renseignements rtrospectifs. En revanche, les CDROM constituent un exercice valide du droit du Globe and Mail de reproduire son recueil. En offrant essentiellement aux utilisateurs un condens des ditions quotidiennes du journal, les CDROM demeurent fidles lessence de luvre originale. Enfin, le principe de la neutralit du support reconnu au par. 3(1) de la Loi ne permet pas dcarter les droits des auteurs. La neutralit du support signifie que la Loi sur le droit dauteur continue de sappliquer malgr lusage de supports diffrents, mais elle ne signifie pas quaprs sa conversion en donnes lectroniques, une uvre peut tre utilise nimporte comment. Luvre finale demeure assujettie la Loi sur le droit dauteur. [1-4] [37-53] La concession dune licence non exclusive accordant le droit de reproduire un article dans les bases de donnes ou sur les CDROM ne doit pas obligatoirement tre constate par crit. Selon les par. 13(4) et (7) de la Loi sur le droit dauteur, seule la concession dune licence exclusive doit tre rdige par crit. [56]

A non-exclusive licence granting the right to republish an article in databases or CDROMs does not need to be in writing. Under s. 13(4) and (7) of the Copyright Act, only an exclusive licence requires a written contract. [56]

2006 SCC 43 (CanLII)

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366
RObERTSON v. THOMSON CORP.

[2006] 2 S.C.R.

Per McLachlin C.J. and Binnie, Abella and Charron JJ. (dissenting in part on the cross-appeal): The class action should be dismissed. The newspaper publishers own the copyright in their newspapers. Since Info Globe Online and CPI.Q contain a reproduction of a substantial part of the skill and judgment exercised by the publishers in creating their newspapers, they are within their right of reproduction conferred by s. 3(1) of the Copyright Act. The originality that conferred copyright in relation to the newspapers has been preserved in the databases because they reproduce fully both the publishers selection and editing of the articles appearing in the newspaper, as well as some of the arrangement. This being the case, the databases reproduce the newspaper. Integrating the electronic reproduction into a database containing similarly organized versions of other newspapers or periodicals is the electronic analogy to stacking print editions of a newspaper on a shelf and does not cause the electronic version to lose its character as a reproduction of a newspaper. Further, any difference between the print and database versions of the newspaper is attributable to the digital form alone, and thus does not detract from the publishers right to reproduce its newspaper in the online databases. Under the concept of media neutrality reflected in s. 3(1), an authors exclusive right to reproduce a substantial part of a copyrighted work is not limited by changes in form or output made possible by a new medium. It is not the physical manifestation of the work that governs, it is whether the product perceivably reproduces the exercise of skill and judgment by the publishers that went into the creation of the work. The loss of context emphasized by the majority underlines the form, not the substance, of the databases, and is inconsistent with the media neutral approach mandated by s.3. [67] [72] [75-76] [80] [89-93] [98-100]

La juge en chef McLachlin et les juges Binnie, Abella et Charron (dissidents en partie quant au pourvoi incident): Le recours collectif devrait tre rejet. Les diteurs du journal sont titulaires du droit dauteur sur leur journal. tant donn que Info Globe Online et CPI.Q contiennent une reproduction dune partie importante du talent et du jugement quont exercs les diteurs en crant le journal, elles relvent de lexercice du droit de reproduction que leur confre le par. 3(1) de la Loi sur le droit dauteur. Loriginalit qui a valu au journal dtre protg par un droit dauteur est prserve dans les bases de donnes, parce quelles reproduisent en entier le choix et ldition, par lditeur, des articles apparaissant dans le journal, ainsi que, dans une certaine mesure, leur disposition. Cela tant, les bases de donnes reproduisent le journal. Lintgration de cette reproduction lectronique dans une base de donnes contenant des versions dautres journaux ou priodiques organises de faon semblable est lquivalent lectronique dditions papier dun journal empiles sur une tablette et ne fait pas perdre la version lectronique son statut de reproduction dun journal. De plus, toute diffrence entre la version papier du journal et sa version figurant dans les bases de donnes nest attribuable qu la forme numrique et, par consquent, ne diminue en rien le droit de lditeur de reproduire son journal dans les bases de donnes lectroniques. Selon le concept de la neutralit du support, reconnu au par. 3(1), le droit exclusif de lauteur de reproduire une partie importante dune uvre protge par le droit dauteur nest pas limit par les modifications que lavnement dun nouveau support peut entraner sur le plan de la forme ou des donnes de sortie. Le critre nest pas celui de la manifestation physique de luvre, mais bien celui de savoir si le produit reproduit, de manire perceptible, lexercice du talent et du jugement consacrs par les diteurs la cration de luvre. La perte du contexte sur laquelle insiste la majorit met laccent sur la forme et non sur le contenu des bases de donnes et est de ce fait incompatible avec le principe de la neutralit du support dont lart. 3 commande lapplication. [67] [72] [75-76] [80] [89-93] [98-100]

2006 SCC 43 (CanLII)

The newspaper staff writers should not have been certified as members of the class because they have no cause of action. Pursuant to s. 13(3) of the Act, the employer owns copyright in articles written in the course of employment while the employee is given a right to restrain publication of the work (other than in a newspaper, magazine or similar periodical). In this case, S never attempted to restrain publication of his articles, and no evidence was introduced indicating that other staff members exercised such a right. [59] [62]

Les employs du journal nauraient pas d tre autoriss participer au recours collectif parce quils nont pas de cause daction. Le paragraphe 13(3) de la Loi prvoit que le droit dauteur sur les articles rdigs par un employ dans lexercice de son emploi appartient lemployeur, mais reconnat lemploy le droit dinterdire la publication de son uvre (ailleurs que dans un journal, une revue ou un autre priodique semblable). En lespce, S na jamais tent de faire interdire la publication de ses articles et aucun lment de preuve produit nindique que dautres employs aient exerc ce droit. [59] [62]

127
[2006] 2 R.C.S.
RObERTSON

c. THOMSON CORP.

367

Cases Cited By LeBel and Fish JJ. Referred to: New York Times Co. v. Tasini, 533 U.S. 483 (2001); Allen v. Toronto Star Newspapers Ltd. (1997), 36 O.R. (3d) 201; CCH Canadian Ltd. v. Law Society of Upper Canada, [2004] 1 S.C.R. 339, 2004 SCC 13; dutile Inc. v. Automobile Protection Assn., [2000] 4 F.C. 195; Thrustcode Ltd. v. W. W. Computing Ltd., [1983] F.S.R. 502; Apple Computer, Inc. v. Mackintosh Computers Ltd., [1988] 1 F.C. 673, affd [1990] 2 S.C.R. 209; Ritchie v. Sawmill Creek Golf & Country Club Ltd. (2004), 35 C.P.R. (4th) 163. By Abella J. (dissenting in part on the cross-appeal) Thberge v. Galerie dArt du Petit Champlain inc., [2002] 2 S.C.R. 336, 2002 SCC 34; CCH Canadian Ltd. v. Law Society of Upper Canada, [2004] 1 S.C.R. 339, 2004 SCC 13; Society of Composers, Authors and Music Publishers of Canada v. Canadian Assn. of Internet Providers, [2004] 2 S.C.R. 427, 2004 SCC 45; New York Times Co. v. Tasini, 533 U.S. 483 (2001); Apple Computer Inc. v. Mackintosh Computers Ltd., [1987] 1 F.C. 173, affd [1988] 1 F.C. 673, affd [1990] 2 S.C.R. 209; dutile Inc. v. Automobile Protection Assn., [2000] 4 F.C. 195; Allen v. Toronto Star Newspapers Ltd. (1997), 36 O.R. (3d) 201; Slumber-Magic Adjustable Bed Co. v. Sleep-King Adjustable Bed Co. (1984), 3 C.P.R. (3d) 81. Statutes and Regulations Cited 17 U.S.C. 201(c) (2000). Copyright Act, R.S.C. 1985, c. C-42, ss. 2, 2.1(2), 3, 5, 13(1), (3), (4), (7). Copyright Act, S.C. 1921, c. 24, s.3. Treaties and Other International Documents Berne Convention for the Protection of Literary and Artistic Works, September 9, 1886, art.9. WIPO Copyright Treaty, CRNR/DC/94, December 23, 1996, art.1(4). World Intellectual Property Organization. Guide to the Copyright and Related Rights Treaties Administered

Jurisprudence Cite par les juges LeBel et Fish Arrts mentionns: New York Times Co. c. Tasini, 533 U.S. 483 (2001); Allen c. Toronto Star Newspapers Ltd. (1997), 36 O.R. (3d) 201; CCH Canadienne Lte c. Barreau du Haut-Canada, [2004] 1 R.C.S. 339, 2004 CSC 13; dutile Inc. c. Assoc. pour la protection des automobilistes, [2000] 4 C.F. 195; Thrustcode Ltd. c. W.W. Computing Ltd., [1983] F.S.R. 502; Apple Computer, Inc. c. Mackintosh Computers Ltd., [1988] 1 C.F. 673, conf. par [1990] 2 R.C.S. 209; Ritchie c. Sawmill Creek Golf & Country Club Ltd. (2004), 35 C.P.R. (4th) 163. Cite par la juge Abella (dissidente en partie quant au pourvoi incident) Thberge c. Galerie dArt du Petit Champlain inc., [2002] 2 R.C.S. 336, 2002 CSC 34; CCH Canadienne Lte c. Barreau du Haut-Canada, [2004] 1 R.C.S. 339, 2004 CSC 13; Socit canadienne des auteurs, compositeurs et diteurs de musique c. Assoc. canadienne des fournisseurs Internet, [2004] 2 R.C.S. 427, 2004 CSC 45; New York Times Co. c. Tasini, 533 U.S. 483 (2001); Apple Computer Inc. c. Mackintosh Computers Ltd., [1987] 1 C.F. 173, conf. par [1988] 1 C.F. 673, conf. par [1990] 2 R.C.S. 209; dutile Inc. c. Assoc. pour la protection des automobilistes, [2000] 4 C.F. 195; Allen c. Toronto Star Newspapers Ltd. (1997), 36 O.R. (3d) 201; SlumberMagic Adjustable Bed Co. c. Sleep-King Adjustable Bed Co. (1984), 3 C.P.R. (3d) 81. Lois et rglements cits 17 U.S.C. 201c) (2000). Loi sur le droit dauteur, L.R.C. 1985, ch. C42, art. 2, 2.1(2), 3, 5, 13(1), (3), (4), (7). Loi sur le droit dauteur, S.C. 1921, ch. 24, art.3. Traits et autres documents internationaux Convention de Berne pour la protection des uvres littraires et artistiques, 9 septembre 1886, art.9. Organisation mondiale de la proprit intellectuelle. Guide to the Copyright and Related Rights Treaties Administered by WIPO and Glossary of Copyright and Related Rights Terms, 2003, art.BC9.6.

2006 SCC 43 (CanLII)

It follows that the copyrights of freelance authors whose works appear in those databases are not infringed, and that the employees cannot restrain publication of their individual works in those databases under s. 13(3) of the Copyright Act since that publication continues to be part of a newspaper, magazine or similar periodical. [67]

En consquence, la reproduction des articles des pigistes dans les bases de donnes ne viole pas leur droit dauteur et les employs ne peuvent invoquer le par. 13(3) de la Loi sur le droit dauteur pour interdire la publication de leurs uvres individuelles dans ces bases de donnes, puisquelles continuent ainsi dtre publies dans un journal, une revue ou un priodique semblable. [67]

128
378
RObERTSON v. THOMSON CORP.LeBel

and Fish JJ.

[2006] 2 S.C.R.

The reported judicial decisions here at issue meet the test for originality. The authors have arranged the case summary, catchlines, case title, case information (the headnotes) and the judicial reasons in a specific manner. The arrangement of these different components requires the exercise of skill and judgment. The compilation, viewed globally, attracts copyright protection. [Emphasis in original; paras.33-34.] 37

Les dcisions judiciaires publies qui sont vises en lespce satisfont au critre doriginalit. Les auteurs ont agenc de faon particulire le rsum jurisprudentiel, les mots cls, lintitul rpertori, les renseignements relatifs aux motifs du jugement (les sommaires) et les motifs de la dcision. Lagencement de ces diffrents lments ncessite lexercice du talent et du jugement. Considre globalement, la compilation confre un droit dauteur. [Soulign dans loriginal; par.33-34.]

Similarly, the Publishers have a copyright in their newspapers, each an original collection of different components reflecting the exercise of skill and judgment. Section 2 of the Copyright Act, as noted above, defines a compilation as an original work that is created as a result of selection or arrangement. This same conception of originality underlies the inclusion of the newspapers in the definition of collective work. We note that the use of the disjunctive or in s. 2 is significant. The Copyright Act does not require originality in both the selection and arrangement. Similarly, and with all due respect to Weiler J.A.s contrary finding, we agree with the Publishers that a reproduction of a compilation or a collective work need not preserve both the selection and arrangement of the original work to be consistent with the Publishers reproduction rights.

De mme, les diteurs sont titulaires du droit dauteur sur leurs journaux, dont chacun constitue un recueil original de diffrents lments qui tmoigne de lexercice du talent et du jugement. Rappelons quau sens de lart. 2 de la Loi sur le droit dauteur, une compilation sentend dune uvre rsultant dun choix ou dun arrangement. La mme notion doriginalit sous-tend linclusion des journaux dans la dfinition du terme recueil. Nous constatons que lemploi de la conjonction disjonctive ou lart. 2 importe. La Loi sur le droit dauteur nexige pas que le choix et larrangement rpondent tous les deux au critre doriginalit. De mme, et en toute dfrence pour la conclusion contraire de la juge Weiler, nous estimons, comme les diteurs, quil nest pas ncessaire qu la fois le choix et larrangement de luvre originale soient conservs pour quune compilation ou un recueil soit reproduit en conformit avec le droit de reproduction de lditeur. Larticle 3 de la Loi sur le droit dauteur accorde au titulaire du droit dauteur le droit de reproduire la totalit ou une partie importante de luvre. En consquence, le choix original peut constituer, lui seul, une partie importante dun journal, dans la mesure o lon conserve lessence du journal, c.d. ce qui confre au recueil loriginalit requise pour quun droit dauteur sy rattache. Dans dutile Inc.

38

Section 3 of the Copyright Act provides the copyright owner with the right to reproduce a work or a substantial part thereof. It follows that a substantial part of a newspaper may consist only of the original selection so long as the essence of the newspaper is preserved, i.e., that which embodies the originality of the collective work that is capable of attracting copyright. In dutile Inc. v. Automobile

2006 SCC 43 (CanLII)

does not have copyright in the individual components. However, the arranger may have copyright in the form represented by the compilation. It is not the several components that are the subject of the copyright, but the over-all arrangement of them which the plaintiff through his industry has produced: Slumber-Magic Adjustable Bed Co. v. Sleep-King Adjustable Bed Co. (1984), 3 C.P.R. (3d) 81 (B.C.S.C.), at p. 84; see also Ladbroke (Football) Ltd. v. William Hill (Football) Ltd., [1964] 1 All E.R. 465 (H.L.), at p.469.

forme diffrente, dlments existants. Celui qui leffectue na aucun droit dauteur sur les composantes individuelles. Cependant, il peut dtenir un droit dauteur sur la forme que prend la compilation. [TRADUCTION] Ce ne sont pas les divers lments qui sont viss par le droit dauteur, mais bien leur agencement global qui est le fruit du travail du demandeur: SlumberMagic Adjustable Bed Co. c. Sleep-King Adjustable Bed Co. (1984), 3 C.P.R. (3d) 81 (C.S.C.B.), p. 84; voir galement Ladbroke (Football) Ltd. c. William Hill (Football) Ltd., [1964] 1 All E.R. 465 (H.L.), p.469.

129
[2006] 2 R.C.S.
RObERTSON

c. THOMSON CORP.Les juges LeBel et Fish

379

Protection Assn., [2000] 4 F.C. 195, the Federal Court of Appeal stated:
To determine whether a substantial part of a protected work has been reproduced, it is not the quantity which was reproduced that matters as much as the quality and nature of what was reproduced.... It seems clear that APA appropriated a substantial part, indeed the very essence, of dutiles work .... [Emphasis added; paras.22-23.]

Pour dterminer si une partie importante dune uvre protge a t reproduite, ce nest pas tant la quantit de ce qui a t reproduit qui compte, que la qualit et la nature de ce qui a t reproduit ... Il mapparat vident que lAPA sest appropri une partie importante, voir[e] lessence mme de luvre ddutile ... [Je souligne; par.22-23.]

There is much originality in a newspaper: the editorial content, the selection of articles, the arrangement of articles, the arrangement of advertisements and pictures, and the fonts and styles used. But the true essence of the originality in a newspaper is its editorial content. It is the selection of stories, and the stories themselves, that resonate in the hearts and minds of readers. The task of determining whether this essence has been reproduced may be difficult. Indeed, it is largely a question of degree. At a minimum, however, the editorial content of the newspaper must be preserved and presented in the context of that newspaper. We again agree with the Publishers that their right to reproduce a substantial part of the newspaper includes the right to reproduce the newspaper without advertisements, graphs and charts, or in a different layout and using different fonts. But it does not follow that the articles of the newspaper can be decontextualized to the point that they are no longer presented in a manner that maintains their intimate connection with the rest of that newspaper. In Info Globe Online and CPI.Q, articles from a given daily edition of the Globe are stored and presented in a database together with thousands of other articles from different periodicals and different dates. And, these databases are expanding and changing daily as more and more articles are added. These products are more akin to databases of individual articles rather than reproductions of the Globe. Thus, in our view, the originality of the freelance articles is reproduced; the originality of the newspapers is not.

On retrouve beaucoup dlments originaux dans un journal: le contenu rdactionnel, le choix et la disposition des articles, larrangement des annonces publicitaires et des images, ainsi que la police et le style employs. Toutefois, la vritable originalit dun journal rside dans son contenu rdactionnel, car cest le choix des textes, et les textes eux-mmes, qui touchent le cur et lesprit des lecteurs. Il peut tre difficile de dterminer si cette essence a t reproduite. En fait, il sagit surtout dune question de degr. Cependant, il faut tout le moins que le contenu rdactionnel du journal soit prserv et prsent dans le contexte de ce journal. Nous convenons aussi avec les diteurs que leur droit de reproduction dune partie importante du journal comporte celui de reproduire le journal sans annonces publicitaires, graphiques et tableaux, ou de modifier sa prsentation et sa police de caractres. Mais on ne saurait pour autant en dcontextualiser les articles tel point que la manire dont on les prsente ne prserve pas leur lien intime avec le reste du journal. Dans Info Globe Online et CPI.Q, les articles tirs dune dition quotidienne donne du Globe sont stocks et prsents dans une base de donnes avec des milliers dautres articles publis dans des priodiques diffrents et des dates diverses. De plus, ces bases de donnes croissent et se transforment quotidiennement mesure que lon y verse des articles. Elles ressemblent davantage des banques darticles individuels qu des reproductions du Globe. Nous estimons donc que loriginalit des articles rdigs la pige est prserve, mais non celle des journaux.

39

40

41

2006 SCC 43 (CanLII)

c. Assoc. pour la protection des automobilistes, [2000] 4 C.F. 195, la Cour dappel fdrale a fait les commentaires suivants ce propos:

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Page 1

Copyright 2011 EUR-Lex, European Communities EUR-Lex Database: European Court of Justice Cases Judgment of the Court (Third Chamber) of 16 February 2012. Belgische Vereniging van Auteurs, Componisten en Uitgevers CVBA (SABAM) v Netlog NV. Reference for a preliminary ruling: Rechtbank van eerste aanleg te Brussel - Belgium. Information society - Copyright - Internet Hosting service provider - Processing of information stored on an online social networking platform - Introducing a system for filtering that information in order to prevent files being made available which infringe copyright - No general obligation to monitor stored information. Case C-360/10. Court of Justice of the European Union European Court Reports 2012 Page 00000 2012 ECJ EUR-Lex LEXIS 60 July 19, 2010 February 16, 2012 TYPE: [*1] Judgment SUBJECT: Approximation of laws; freedom of establishment and freedom to provide services; Right of establishment; Free movement of services; Consumer protection PROCEDURE: Reference for a preliminary ruling DISPOSITION: On those grounds, the Court (Third Chamber) hereby rules: Directives: - 2000/31/EC of the European Parliament and of the Council of 8 June 2000 on certain legal aspects of information society services, in particular electronic commerce, in the Internal Market (Directive on electronic commerce); - 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the in formation society; and

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Page 2 2012 ECJ EUR-Lex LEXIS 60, *1

- 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights, read together and construed in the light of the requirements stemming from the protection of the applicable fundamental rights, must be interpreted as precluding a national court from issuing an injunction against a hosting service provider which requires it to install a system for filtering: - information which is stored on its servers by its service [*2] users; - which applies indiscriminately to all of those users; - as a preventative measure; - exclusively at its expense; and - for an unlimited period, which is capable of identifying electronic files containing musical, cinematographic or audio-visual work in respect of which the applicant for the injunction claims to hold intellectual property rights, with a view to preventing those works from being made available to the public in breach of copyright. LANGUAGE: Dutch; INTRODUCTION: In Case C-360/10, REFERENCE for a preliminary ruling under Article 267 TFEU from the rechtbank van eerste aanleg te Brussel (Belgium), made by decision of 28 June 2010, received at the Court on 19 July 2010, in the proceedings Belgische Vereniging van Auteurs, Componisten en Uitgevers CVBA (SABAM) v Netlog NV, THE COURT (Third Chamber), composed of K. Lenaerts, President of the Chamber, J. Malenovsk[#253] (Rapporteur), R. Silva de Lapuerta, G. Arestis and D. v[#225]by, Judges, Advocate General: P. Cruz Villal[#243]n,

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Page 3 2012 ECJ EUR-Lex LEXIS 60, *2

Registrar: M. Ferreira, Principal Administrator, having regard to the written procedure and further to the hearing [*3] on 7 July 2011, after considering the observations submitted on behalf of: - Belgische Vereniging van Auteurs, Componisten en Uitgevers CVBA (SABAM), by B. Michaux, F. de Visscher and F. Brison, advocaten, - Netlog NV, by P. Van Eecke, advocaat, - the Belgian Government, by T. Materne and J.-C. Halleux, acting as Agents, - the Italian Government, by G. Palmieri, acting as Agent, assisted by S. Fiorentino, avvocato dello Stato, - the Netherlands Government, by C. Wissels, acting as Agent, - the United Kingdom Government, by S. Ossowski, acting as Agent, - the European Commission, by A. Nijenhuis and J. Samnadda, acting as Agents, having decided, after hearing the Advocate General, to proceed to judgment without an Opinion, gives the following Judgment JUDGMENT-BY: Malenovsk[#253] JUDGMENT: 1. This reference for a preliminary ruling concerns the interpretation of: - Directive 2000/31/EC of the European Parliament and of the Council of 8 June 2000 on certain legal aspects of information society services, in particular electronic commerce, in the Internal Market (Directive on electronic commerce) (OJ 2000 L 178, p. 1); - Directive [*4] 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society (OJ 2001 L 167, p. 10); - Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the

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Page 12 2012 ECJ EUR-Lex LEXIS 60, *21

39. In order to assess whether that injunction is consistent with EU law, account must also be taken of the requirements that stem from the protection of the applicable fundamental rights, such as those mentioned by the referring court. 40. In that regard, it should be borne in mind that the injunction at issue in the main proceedings pursues the aim of ensuring the protection of copyright, which is an intellectual-property right, which may be infringed by the nature and content of certain information stored and made available to the public by means of the service offered by the hosting service provider. 41. The protection of the right to intellectual property is indeed enshrined in Article 17(2) of the Charter of Fundamental Rights of the European Union ('the Charter'). There is, however, nothing whatsoever in the wording of that provision or [*22] in the Court's case-law to suggest that that right is inviolable and must for that reason be absolutely protected ( Scarlet Extended , paragraph 43). 42. As paragraphs 62 to 68 of the judgment in Case C-275/06 Promusicae [2008] ECR I-271 make clear, the protection of the fundamental right to property, which includes the rights linked to intellectual property, must be balanced against the protection of other fundamental rights. 43. More specifically, it follows from paragraph 68 of that judgment that, in the context of measures adopted to protect copyright holders, national authorities and courts must strike a fair balance between the protection of copyright and the protection of the fundamental rights of individuals who are affected by such measures. 44. Accordingly, in circumstances such as those in the main proceedings, national authorities and courts must, in particular, strike a fair balance between the protection of the intellectual property right enjoyed by copyright holders and that of the freedom to conduct a business enjoyed by operators such as hosting service providers pursuant to Article 16 of the Charter (see Scarlet Extended , paragraph 46). 45. [*23] In the main proceedings, the injunction requiring the installation of the contested filtering system involves monitoring all or most of the information stored by the hosting service provider concerned, in the interests of those rightholders. Moreover, that monitoring has no limitation in time, is directed at all future infringements and is intended to protect not only existing works, but also works that have not yet been created at the time when the system is introduced. 46. Accordingly, such an injunction would result in a serious infringement of the freedom of the hosting service provider to conduct its business since it would require that hosting service provider to install a complicated, costly, permanent computer system at its own expense, which would also be contrary to the conditions laid down in Article 3(1) of Directive 2004/48, which requires that

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measures to ensure the respect of intellectual-property rights should not be unnecessarily complicated or costly (see, by analogy, Scarlet Extended , paragraph 48). 47. In those circumstances, it must be held that the injunction to install the contested filtering system is to be regarded as not respecting the requirement [*24] that a fair balance be struck between, on the one hand, the protection of the intellectual-property right enjoyed by copyright holders, and, on the other hand, that of the freedom to conduct business enjoyed by operators such as hosting service providers (see, by analogy, Scarlet Extended , paragraph 49). 48. Moreover, the effects of that injunction would not be limited to the hosting service provider, as the contested filtering system may also infringe the fundamental rights of that hosting service provider's service users, namely their right to protection of their personal data and their freedom to receive or impart information, which are rights safeguarded by Articles 8 and 11 of the Charter respectively. 49. Indeed, the injunction requiring installation of the contested filtering system would involve the identification, systematic analysis and processing of information connected with the profiles created on the social network by its users. The information connected with those profiles is protected personal data because, in principle, it allows those users to be identified (see, by analogy, Scarlet Extended , paragraph 51). 50. Moreover, that injunction could [*25] potentially undermine freedom of information, since that system might not distinguish adequately between unlawful content and lawful content, with the result that its introduction could lead to the blocking of lawful communications. Indeed, it is not contested that the reply to the question whether a transmission is lawful also depends on the application of statutory exceptions to copyright which vary from one Member State to another. In addition, in some Member States certain works fall within the public domain or may be posted online free of charge by the authors concerned (see, by analogy, Scarlet Extended , paragraph 52). 51. Consequently, it must be held that, in adopting the injunction requiring the hosting service provider to install the contested filtering system, the national court concerned would not be respecting the requirement that a fair balance be struck between the right to intellectual property, on the one hand, and the freedom to conduct business, the right to protection of personal data and the freedom to receive or impart information, on the other (see, by analogy, Scarlet Extended , paragraph 53). 52. In the light of the foregoing, the answer to the question [*26] referred is that Directives 2000/31, 2001/29 and 2004/48, read together and construed in the light of the requirements stemming from the protection of the applicable fundamental rights, must be interpreted as precluding an injunction made against a hosting service provider which requires it to install the contested filtering system.

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Page 1

Indexed as:

Shewan v. Canada (Attorney General)

Between Susan Shewan, plaintiff, and Attorney General of Canada (by the Government of the Yukon Territory, Department of Tourism), Canadian Airlines International Ltd./Lignes Aeriennes Canadien International Lte., and Government of Yukon (by the Government of Yukon, Department of Tourism), defendants [1999] O.J. No. 2790 87 C.P.R. (3d) 475 90 A.C.W.S. (3d) 126 Court File No. 92-CQ-24586

Ontario Superior Court of Justice Archibald J. Heard: June 14-18 and 21-23, 1999. Judgment: July 28, 1999. (24 pp.) Copyright -- Infringement of copyright -- Acts not constituting an infringement -- Torts -Interference with economic relations -- Unfair competition, passing off -- Evidence and proof. Action by Shewan for copyright infringement and passing off. Shewan was a folk singer who lived in the Yukon. In 1978 she wrote a song entitled Yukon Magic and Mystery. The song was recorded and though it had no commercial release, it was played on CBC radio in the Yukon occasionally until 1985. Shewan performed the song live at various festivals from 1978 to 1980. She stopped touring in 1983. There was no reference to the song in any of Shewan's promotional material, resumes, or newspaper articles about her career. The song was not included in rough notes prepared for a list of songs to be included on a proposed album that was never recorded. In 1987, the

136
Page 2

Department of Tourism of the Yukon began to use the slogan Yukon the Magic and the Mystery, which had been developed for Expo 86. Shewan asserted that it would have been impossible for anyone in the Yukon to develop that slogan independently. She claimed that the words of the slogan and the words of her song were indistinguishable, and that everyone in the Yukon would assume that she had endorsed or was somehow connected to the slogan. HELD: Action dismissed. Copyright infringement of a musical work required copying of melody or harmony. The slogan was not accompanied by any melody or harmony, and was therefore not a musical work. As such, there was no copyright infringement. With respect to passing off, Shewan failed to prove that she had a sufficient reputation in the community to establish a connection between her song and the slogan used by the Department of Tourism. At the time the slogan was first used, her song was no longer being played on the radio. As such, the potential confusion in the minds of the public never exceeded the threshold of speculation, conjecture or argument. Statutes, Regulations and Rules Cited: Copyright Act, R.S.C. 1985, c. C-42, ss. 2, 3(1), 5(1). Trade-marks Act, R.S.C. 1985, c. T-13, s. 7(b). Counsel: Frank P. Farfan and Robert Nakano, for the plaintiff. Alexander Pettingill, for the defendants.

1 ARCHIBALD J.:-- In this action, the plaintiff has claimed that there is magic and mystery in the phrase "Yukon Magic and Mystery". The plaintiff wrote a song which was entitled "Yukon Magic and Mystery" in 1978. The first two lines which constitute, in essence, the theme of the song are as follows: Yukon, will you set us free, With your Magic and your Mystery. 2 Yukon's Department of Tourism began to use the slogan "Yukon The Magic and The Mystery" in 1987. The Territory has used that slogan since that time. This slogan has been used to promote the Yukon as a tourist attraction in many national and international periodicals, and on Yukon Brochures and Maps. 3 The plaintiff claims a copyright infringement in her song in relation to the Yukon's unauthorized use of the slogan. Her second cause of action is based upon the tort of passing off and

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combination of melody and harmony, or either of them, printed, reduced to writing or otherwise graphically produced or reproduced". The plain and ordinary meaning of musical work is unambiguous. To copy a musical work, one would copy a portion of either the melody or harmony. In doing so, one would be creating sheet music. In the case at bar, the Yukon slogan consists of a phrase "Yukon the Magic and the Mystery". There is no accompanying melody or harmony to the slogan. The slogan cannot fall within the definition of "musical work". 95 The plaintiff asserts that the song in question could fall within the ambit of the phrase "musical works or compositions with or without words" in the definition of "every original literary, dramatic, musical and artistic work". The argument is to the effect that the narrower definition of "musical work" does not restrict the copyright infringement in this case because of the broader definition provided by the phrase "compositions with or without words". The difficulty in that submission is the reality that the plain meaning of the phrase "composition with or without words" does not seem capable of encompassing the slogan "Yukon, the Magic and the Mystery", particularly, since the phrase seems to be modified by the word "musical" in the definition. A song, however, could fall within such a definition. The slogan is not, however, a song. 96 Mr. Justice Letourneau in the Federal Court of Appeal decision in Canadian Cable Television Association-Association Canadienne Television Par Cable v. Copyright Board et al. (1993), 46 C.P.R. (3d) 359 underlines the reality at page 366 that a composition with or without words is broader in substance than a musical work which is defined more narrowly in section 2. As Justice Letourneau states, "in the case of music, it is appropriate that it extends also to every original composition, not only to musical work as narrowly defined in section 2 ..." 97 The 1993 amendments do not assist the plaintiff since they make it clear that a musical work or composition must contain a musical element. 98 That definitional review could have resulted in the end of this analysis; however, given the nature of this case and the complexity of issues, this Court intends to deal with the other issues to illuminate the conclusion that the plaintiff's copyright in the song in question was not infringed. B. Copyright and Ideas

99 One of the basic principles in copyright law is that it protects only the expression of ideas in a fixed form. It does not protect the idea itself. The leading authority in that area is the Supreme Court of Canada's decision in Cuisenaire v. South West Imports Ltd., [1969] S.C.R. 208. In that decision, Mr. Justice Ritchie on behalf of the Court quoted with approval at page 211 from the decision of President Thorson in the Exchequer Court of Canada in Moreau v. St. Vincent, [1950] Ex. C.R. 198 at 203 as follows: It is, I think, an elementary principle of copyright law that an author has no copyright in ideas but only in his expression of them. The law of copyright does not give him any monopoly in the use of the ideas with which he deals or any

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property in them, even if they are original. His copyright is confined to the literary work in which he has expressed them. The ideas are public property, the literary work is his own. Everyone may freely adopt and use the ideas but no one may copy his literary work without his consent. 100 The plaintiff has vigorously asserted that she is the only person to have linked together the words "Magic and Mystery" with the word Yukon. It is this Court's conclusion that the words "Magic and Mystery" constitute an idea as opposed to the expression of an idea in a fixed form. Evidence was led by the defendants that the phrase Magic and Mystery or variations of it have been used by many authors in the past. One has only to refer to the Beatles' Magical Mystery Tour as an example. The phrase has also been used by authors to describe many countries and places. In this Court's view, the phrase is not unique to the plaintiff but is in common usage in the English language. 101 Her song is copyrighted and so, to a large extent, are the specific lyrics of the song. The opening stanza of her song is as follows: "Yukon will you set us free, with your magic and your mystery". Although the point is trite, the Yukon government has not used the specific lyrics from her song. The Yukon government rather has expressed a concept which has been previously articulated in her song. The manner in which the idea is expressed is copyrighted but not the idea itself. 102 If the Yukon government had used the specific words from her song, her argument would be much more compelling. Even in those circumstances, the plaintiff would still run up against the definition of "musical work" or "composition with words" in the Copyright Act. 103 To a lesser extent, the plaintiff has argued that the registration of the song in 1992 also constitutes a literary registration in addition to musical. The strict wording of the registration would support that argument. Although this Court's conclusion concerning the definition of "musical work" or "composition with words" would not apply to a literary copyright, the Court remains of the conclusion that the government of Yukon has not taken a substantial part of the plaintiff's literary or musical work by using the words Yukon, the Magic and the Mystery. In addition, there is no causal connection between the two works. I will return to that point in a moment. C. "Substantial Part Thereof"

104 The plaintiff complains that a substantial part of her song "Yukon Magic and Mystery" has been copied. She has led evidence from Mr. Morley and in her own testimony to support the proposition that the title "Yukon Magic and Mystery" and "Magic and Mystery" are original and distinctive. Mr. Morley stated that the lyrics in the song were also original and distinctive. The fact that the first and last verse are repeated potentially reinforces in a listener's mind the importance of the phrase "Yukon, will you set us free with your magic and your mystery". In Mr. Morley's and Ms. Shewan's view, the essential and memorable part of the song or its "hook" consists of the words Yukon Magic and Mystery.

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105 The plaintiff's position is that the slogan represents a reproduction of a substantial portion of the song, namely its essential parts in the words Yukon Magic and Mystery. 106 What is noteworthy concerning the resolution of this case was the testimony of the three experts. Mr. Morley testified that he had never heard of a situation concerning copyright infringement wherein the essence of a song had been taken absent the utilization of the music. Mr. Patton indicated that in his thirty-five years of experience, he was not aware of a case where anyone had paid for the use of three words from a song without the accompanying music. He could not think of any single analogous situation to the case at bar. Mr. Renewych for the defendant stated that he could not recall any situation where someone had paid for the use of three words from a song without the musical accompaniment. He did, however, state that someone had once paid a licensing fee to use one sentence from the song "White Christmas". 107 This Court has carefully considered the plaintiff's case concerning whether a substantial part of the song in question has been taken by the Yukon government. This Court has concluded that the words "Yukon, Magic and Mystery" without musical accompaniment cannot constitute a substantial part of the song in question. 108 In addition, this Court is mindful of the decision of the Privy Council in Francis Day and Hunter, Ltd. v. Twentieth Century Fox Corporation, Ltd., et al. [1940], A.C. 112. Mr. Justice Wright in that decision on behalf of the Privy Council stated the point as follows at pages 120-121: "There cannot be an infringement of performing right in a musical composition (assuming it to exist) unless there has been a public performance of the musical composition by the defendant ... A musical composition is performed by audible reproduction, by the voice or by musical instruments, or by mechanical methods of reproduction." 109 Although that case dealt with the use of a song title in a movie, Wright J.'s comments are illustrative of this Court's perspective. Copyright in a song cannot be infringed unless a substantial portion of the song in some medium has been used. The Yukon government has not infringed the copyright in the song in question because they have not used a substantial portion of the song. 110 There are two essential elements which must be established for a finding of copyright infringement: (1) similarity between the two works and; (2) access to the copyrighted work by the creator of the infringing work (i.e. a causal connection between the two works). This Court has concluded that the song and slogan are not sufficiently similar because no music from the song has been used. D. Causal Connection

111 One of the leading authorities on the issue of the causal connection between the two works is the decision of Mr. Justice Carruthers in Gondos v. Hardy (1982), 64 C.P.R. (2d) 145 (Ont. H.C.J.). In that decision, Mr. Justice Carruthers quoted with approval at page 159 from the English Court of Appeal in the decision of Francis, Day and Hunter Ltd. et al. v. Bron (Trading as Delmar Publishing

140
[2004] 2 R.C.S.
SOCAN c. ASSOC. CANADIENNE DES FOURNISSEURS INTERNET

427

Canadian Association of Internet Providers, Canadian Cable Television Association, Bell ExpressVu, Telus Communications Inc., Bell Canada, Aliant Inc. and MTS Communications Inc. Appellants/Respondents on cross-appeal v. Society of Composers, Authors and Music Publishers of Canada Respondent/Appellant on cross-appeal and Internet Commerce Coalition, European Telecommunications Network Operators Association, European Internet Service Providers Association, Australian Internet Industry Association, Telecom Services Association, U.S. Internet Industry Association, Canadian Recording Industry Association and International Federation of Phonogram Industry Interveners
Indexed as: Society of Composers, Authors and Music Publishers of Canada v. Canadian Assn. of Internet Providers Neutral citation: 2004 SCC 45. File No.: 29286. 2003: December 3; 2004: June 30. Present: McLachlin C.J. and Iacobucci, Major, Bastarache, Binnie, Arbour, LeBel, Deschamps and Fish JJ.
ON APPEAL FROM THE FEDERAL COURT OF APPEAL

Association canadienne des fournisseurs Internet, Association canadienne de tlvision par cble, Bell ExpressVu, Telus Communications Inc., Bell Canada, Aliant Inc. et MTS Communications Inc. Appelantes/Intimes au pourvoi incident c. Socit canadienne des auteurs, compositeurs et diteurs de musique Intime/Appelante au pourvoi incident et Internet Commerce Coalition, European Telecommunications Network Operators Association, European Internet Service Providers Association, Australian Internet Industry Association, Telecom Services Association, U.S. Internet Industry Association, Association de lindustrie canadienne de lenregistrement et International Federation of Phonogram Industry Intervenantes
Rpertori : Socit canadienne des auteurs, compositeurs et diteurs de musique c. Assoc. canadienne des fournisseurs Internet Rfrence neutre : 2004 CSC 45. No du greffe : 29286. 2003 : 3 dcembre; 2004 : 30 juin. Prsents : La juge en chef McLachlin et les juges Iacobucci, Major, Bastarache, Binnie, Arbour, LeBel, Deschamps et Fish.
EN APPEL DE LA COUR DAPPEL FDRALE

Constitutional law Extraterritorial application of laws Parliaments legislative competence to enact laws having extraterritorial effect Presumption that Parliament did not intend to do so in absence of clear words or necessary implication to contrary.

Droit constitutionnel Extraterritorialit des lois Pouvoir du Parlement dadopter des lois ayant une porte extraterritoriale En labsence dun libell clair ou dune dduction necssaire leffet contraire, le lgislateur est prsum ne pas avoir voulu confrer une porte extraterritoriale une loi.

141
428
SOCAN v. CANADIAN ASSN. OF INTERNET PROVIDERS

[2004] 2 S.C.R.

Copyright Applicability of copyright legislation Communication of music on Internet SOCAN seeking to impose liability for royalties on Internet Service Providers Whether real and substantial connection to Canada sufcient to support application of Copyright Act. Copyright Infringement Communication to public by telecommunication Communication of music on Internet SOCAN seeking to impose liability for royalties on Internet Service Providers Copyright Act deeming participants in telecommunication that provide only means of telecommunication not to be communicators Whether Internet Service Providers providing solely a conduit for information communicated by others can claim benet of s. 2.4(1)(b) of Copyright Act Whether Internet Service Providers impart or transmit copyrighted music and thereby infringe copyright Whether creation of cache of Internet material, even for a purely technical reason, infringes copyright Copyright Act, R.S.C. 1985, c. C-42, s. 2.4(1)(b).

Droit dauteur Applicabilit de la lgislation sur le droit dauteur Communication duvres musicales au moyen de lInternet Demande de la SOCAN an que les fournisseurs de services Internet soient contraints au versement de redevances Lexistence dun lien rel et important avec le Canada suft-elle pour que sapplique la Loi sur le droit dauteur? Droit dauteur Violation Communication au public par tlcommunication Communication duvres musicales au moyen de lInternet Demande de la SOCAN an que les fournisseurs de services Internet soient contraints au versement de redevances Suivant la Loi sur le droit dauteur, le participant une tlcommunication qui ne fait que fournir les moyens de tlcommunication nest pas rput en tre lauteur Le fournisseur de services Internet qui se contente dtre un agent permettant autrui de communiquer bncie-t-il de lart. 2.4(1)b) de la Loi sur le droit dauteur? Le fournisseur de services Internet fait-il connatre ou transmet-il une uvre musicale protge et viole-t-il de ce fait le droit dauteur? La cration dune antmmoire, mme pour des raisons purement techniques, viole-t-elle le droit dauteur? Loi sur le droit dauteur, L.R.C. 1985, ch. C-42, art. 2.4(1)b). Le prsent pourvoi soulve la question de savoir qui doit verser des redevances aux artistes et aux compositeurs titulaires du droit dauteur canadien sur les uvres musicales tlcharges au Canada partir dun autre pays au moyen de lInternet. Lintime est une socit de gestion qui gre au Canada les droits dauteur sur les uvres musicales de ses membres canadiens et des membres trangers de socits homologues. Elle veut percevoir des redevances auprs des fournisseurs de services Internet situs au Canada parce que, selon elle, ils violeraient le droit exclusif confr par la loi au titulaire du droit dauteur de communiquer luvre au public par tlcommunication et dautoriser une telle communication. Les appelantes reprsentent une vaste coalition de fournisseurs canadiens de services Internet. Elles font valoir quelles ne communiquent pas duvres musicales ni n autorisent leur communication puisquelles ne sont que des agents et ne rglementent pas le contenu des communications Internet quelles transmettent. En 1988, le Parlement a ajout la Loi sur le droit dauteur la disposition antrieure lactuel al. 2.4(1)b) prvoyant que la personne qui ne fait que fournir un tiers les moyens de tlcommunication ncessaires pour que celui-ci [e]ffectue [une communication] nest pas elle-mme partie une communication illicite.

This appeal raises the question of who should compensate musical composers and artists for their Canadian copyright in music downloaded in Canada from a foreign country via the Internet. The respondent is a collective society which administers in Canada the copyright in music of Canadian members and foreign members of counterpart societies. The respondent wants to collect royalties from Internet Service Providers located in Canada because, it argues, they infringe the copyright owners exclusive statutory right to communicate the work to the public by telecommunication and to authorize such communication. The appellants represent a broad coalition of Canadian Internet Service Providers. They argue that they neither communicate nor authorize anyone to communicate musical works because they are merely a conduit and do not regulate the content of the Internet communications which they transmit. In 1988 Parliament added what is now known as s. 2.4(1)(b) to the Copyright Act which provides that persons who only supply the means of telecommunication necessary for another person to so communicate are not themselves to be considered parties to an infringing communication.

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[2004] 2 R.C.S.
SOCAN c. ASSOC. CANADIENNE DES FOURNISSEURS INTERNET

429

In 1995, the respondent applied to the Copyright Board for approval of Tariff 22 which proposed the amount and allocation of the royalty. The Board convened a hearing to determine which activities on the Internet attract liability under the tariff. The Board held that copyright liability attaches to content providers but that the normal activities of Internet Service Providers other than the content providers did not constitute a communication for the purpose of the Copyright Act and thus fall within the protection of s. 2.4(1)(b). Even where the intermediary does more than act as a conduit, the Board held that no copyright liability is incurred in Canada unless the communication originates from a server located in Canada (except perhaps if the content provider has the intention to communicate it specically to recipients in Canada).

En 1995, lintime a demand la Commission du droit dauteur dhomologuer le tarif 22 proposant le paiement dune redevance dun certain montant. La Commission a tenu des audiences pour dterminer quelles activits Internet emportaient lobligation de payer la redevance prvue par le tarif. La Commission a statu que le fournisseur de contenu pouvait tre contraint au versement dune redevance, mais que les activits habituelles dun fournisseur de services Internet autre quun fournisseur de contenu ne constituaient pas une communication au sens de la Loi sur le droit dauteur et, par consquent, jouissaient de la protection de lal. 2.4(1)b). Mme lorsque lintermdiaire est davantage quun simple agent, la Commission a conclu labsence de violation du droit dauteur au Canada moins que la communication ne provienne dun serveur situ au Canada (sauf peut-tre si le fournisseur du contenu a lintention de le communiquer prcisment des destinataires au Canada ). La Cour dappel fdrale a estim quune redevance peut tre exige chaque fois quune tlcommunication a un lien rel et important avec le Canada et non seulement lorsquune communication Internet provient dun serveur hte se trouvant au Canada. Elle a conrm la dcision de la Commission selon laquelle les appelantes ne violaient pas le droit dauteur lorsquelles agissaient uniquement titre dintermdiaires. Les juges majoritaires ont cependant statu que le fournisseur de services Internet au Canada qui cre une antmmoire , mme pour des raisons purement techniques, nest plus un simple intermdiaire, mais participe la violation du droit dauteur et est assujetti cet gard au tarif 22. La juge dissidente a convenu avec la Commission que la mise en antmmoire dans le but damliorer lefcacit des communications Internet et den rduire le cot ne constitue pas une violation du droit dauteur. Arrt : Le pourvoi est accueilli en partie; le pourvoi incident est rejet. La juge en chef McLachlin et les juges Iacobucci, Major, Bastarache, Binnie, Arbour, Deschamps et Fish : La possibilit de diffuser des uvres artistiques et intellectuelles grce lInternet est lune des grandes innovations de lre de linformation. Le recours lInternet doit tre facilit, et non dcourag, mais pas de manire injuste, au dtriment des crateurs. LInternet reprsente un vritable d pour les lois nationales sur le droit dauteur qui, de par leur nature mme, sappliquent habituellement dans des territoires donns. En adoptant lal. 2.4(1)b) de la Loi sur le droit dauteur, le lgislateur a fait une distinction de principe entre ceux qui utilisent lInternet pour fournir ou se procurer du contenu, notamment de la musique peu de frais, et ceux qui font partie de linfrastructure Internet

The Federal Court of Appeal found that copyright may be imposed in respect of any telecommunication that has a real and substantial connection with Canada, and is not restricted only to an Internet communication from a host server located in Canada. The Boards exclusion of the appellants from copyright liability where they perform a pure intermediary function was upheld. However, the majority held that where an Internet Service Provider in Canada creates a cache of Internet material, even for purely technical reasons, they no longer act as a mere intermediary and thus become a participant in the copyright infringement and are liable to that extent under Tariff 22. The dissenting judge agreed with the Board that to cache for the purpose of enhancing Internet economy and efciency did not constitute infringement.

Held: The appeal should be allowed in part; the crossappeal should be dismissed. Per McLachlin C.J. and Iacobucci, Major, Bastarache, Binnie, Arbour, Deschamps and Fish JJ.: The capacity of the Internet to disseminate works of the arts and intellect is one of the great innovations of the information age. Its use should be facilitated rather than discouraged, but this should not be done unfairly at the expense of the creator of the works. The Internet presents a particular challenge to national copyright laws, which are typically territorial in nature. By enacting s. 2.4(1)(b) of the Copyright Act, Parliament made a policy distinction between those who use the Internet to supply or obtain content such as cheap music and those who are part of the infrastructure of the Internet itself. Parliament decided that there is

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430
SOCAN v. CANADIAN ASSN. OF INTERNET PROVIDERS

[2004] 2 S.C.R.

a public interest in encouraging intermediaries that make telecommunications possible to expand and improve their operations without the threat of copyright infringement. Section 2.4(1)(b) indicates that in Parliaments view, Internet intermediaries are not users at all, at least for purposes of the Copyright Act.

comme telle. Le lgislateur a dcid quil est dans lintrt du public dencourager les intermdiaires, qui rendent les tlcommunications possibles, tendre et dvelopper leurs activits sans sexposer au risque de violer le droit dauteur. Lalina 2.4(1)b) indique que, de lavis du lgislateur, les intermdiaires Internet ne sont pas du tout des utilisateurs , tout le moins pour lapplication de la Loi sur le droit dauteur. Il y a tlcommunication lors de la transmission de luvre musicale du serveur hte lutilisateur nal. La communication Internet qui franchit une ou plusieurs frontires nationales se produit dans plus dun pays, soit tout le moins dans le pays de transmission et dans le pays de rception. Point nest besoin quune communication provienne dun serveur situ au Canada pour quelle se produise au Canada. La Commission a eu tort de conclure quune communication qui ne provient pas du Canada ne se produit pas au Canada. Conclure en sens contraire irait non seulement lencontre du sens ordinaire des mots, mais aurait de graves consquences dans dautres domaines de lapplication de la loi lInternet. Lapplicabilit de la Loi sur le droit dauteur une communication laquelle participent des ressortissants dautres pays dpend de lexistence entre le Canada et la communication dun lien sufsant pour que le Canada applique ses dispositions conformment aux principes dordre et dquit. Lexistence dun lien rel et important avec le Canada suft pour que notre Loi sur le droit dauteur sapplique aux transmissions Internet internationales conformment au principe de la courtoisie internationale. En ce qui concerne lInternet, le facteur de rattachement pertinent est le situs du fournisseur de contenu, du serveur hte, des intermdiaires et de lutilisateur nal. Limportance accorder lun deux en particulier varie selon les circonstances de laffaire et la nature du litige. La conclusion selon laquelle le Canada pourrait exercer sa comptence en matire de droits dauteur lgard tant des transmissions effectues au pays que de celles provenant de ltranger est conforme non seulement notre droit gnral, mais aussi aux pratiques nationales et internationales en la matire. Cest une autre question, toutefois, que celle de savoir si lintention du lgislateur canadien tait dexercer sa comptence en matire de droits dauteur de faon contraindre au versement de redevances tout participant une communication Internet ayant un lien rel et important avec le Canada. Le rglement de cette deuxime question exige linterprtation des dispositions de la Loi sur le droit dauteur. Lalina 2.4(1)b) de la Loi sur le droit dauteur dispose que le participant une tlcommunication qui ne fait que fournir les moyens de tlcommunication

A telecommunication occurs when music is transmitted from the host server to the end user. An Internet communication that crosses one or more national boundaries occurs in more than one country, at a minimum, the country of transmission and the country of reception. To occur in Canada, a communication need not originate from a server located in Canada. To the extent that the Board concluded that a communication that does not originate in Canada cannot be said to occur in Canada, it erred. To hold otherwise would not only y in the face of the ordinary use of language, but would have serious consequences in other areas of law relevant to the Internet. The applicability of the Copyright Act to communications that have international participants will depend on whether there is a sufcient connection between this country and the communication in question for Canada to apply its laws consistently with the principles of order and fairness. A real and substantial connection to Canada is sufcient to support the application of our Copyright Act to international Internet transmissions in a way that will accord with international comity. In terms of the Internet, relevant connecting factors would include the situs of the content provider, the host server, the intermediaries and the end user. The weight to be given to any particular factor will vary with the circumstances and the nature of the dispute. The conclusion that Canada could exercise copyright jurisdiction in respect both of transmissions originating here, and transmissions originating abroad but received here, is not only consistent with our general law but with both national and international copyright practice. It is a different issue, however, whether Canada intended to exercise its copyright jurisdiction to impose copyright liability on every participant in an Internet communication with a real and substantial connection to Canada. This latter issue raises questions of statutory interpretation of the Copyright Act.

Section 2.4(1)(b) of the Copyright Act provides that participants in a telecommunication who only provide the means of telecommunication necessary are deemed

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[2004] 2 R.C.S.
SOCAN c. ASSOC. CANADIENNE DES FOURNISSEURS INTERNET

431

not to be communicators. The provision is not a loophole but is an important element of the balance struck by the statutory copyright scheme. The words of s. 2.4(1)(b) must be read in their ordinary and grammatical sense in the proper context. In this context, the word necessary is satised if the means are reasonably useful and proper to achieve the benets of enhanced economy and efciency. The means include all software connection equipment, connectivity services, hosting and other facilities and services without which such communication would not occur. So long as an Internet intermediary does not itself engage in acts that relate to the content of the communication, but connes itself to providing a conduit for information communicated by others, then it will fall within s. 2.4(1)(b). The attributes of such a conduit include a lack of actual knowledge of the infringing contents, and the impracticality (both technical and economic) of monitoring the vast amount of material moving through the Internet. However, the protection provided by s. 2.4(1)(b) relates to protected functions, not to all of the potential activities of an Internet Service Provider. A content provider is not immune from copyright liability by virtue only of the fact that it employs a host server outside the country. Conversely, a host server does not attract liability just because it is located in Canada. The liability of a host server should be determined by whether or not the host server limits itself to a conduit (or content-neutral) function and thereby qualies for protection under s. 2.4(1)(b). The creation of a cache copy is a serendipitous consequence of improvements in Internet technology, is content neutral, and in light of s. 2.4(1)(b) of the Act ought not to have any legal bearing on the communication between the content provider and the end user. Caching is dictated by the need to deliver faster and more economic service, and should not, when undertaken only for such technical reasons, attract copyright liability and therefore comes within the shelter of s. 2.4(1)(b). The Boards view is correct and its decision in that regard should be restored. An Internet Service Providers knowledge that someone might be using content-neutral technology to violate copyright is not necessarily sufcient to constitute authorization, which requires a demonstration that the defendant did give approval to, sanction, permit, favour, or encourage the infringing conduct. Notice of infringing content, and a failure to respond by taking it down, may in some circumstances lead to a nding of authorization. Therefore, authorization could be inferred in a proper case, but all would depend on the facts.

ncessaires nest pas rput en tre lauteur. Cette disposition nest pas une chappatoire, mais un lment important de lquilibre tabli par le rgime lgislatif en cause. Il faut interprter les termes quelle emploie dans leur sens ordinaire et grammatical, selon le contexte. Dans le contexte considr, un moyen est ncessaire sil est raisonnablement utile et appropri pour lobtention des avantages que sont une conomie et une efcacit accrues. Les moyens englobent tous les logiciels de connexion, les services assurant la connectivit, les installations et services offrant lhbergement sans lesquels la communication naurait pas lieu. Lintermdiaire Internet qui ne se livre pas une activit touchant au contenu de la communication, mais qui se contente dtre un agent permettant autrui de communiquer, bncie de lapplication de lal. 2.4(1)b). Ce qui caractrise entre autres un tel agent , cest lignorance du contenu attentatoire et limpossibilit (tant sur le plan technique que nancier) de surveiller la quantit norme de chiers circulant sur lInternet. Toutefois, la protection prvue lal. 2.4(1)b) sapplique une fonction protge, et non toute activit possible dun fournisseur de services Internet. Le fournisseur de contenu nchappe pas lapplication des dispositions sur le droit dauteur du seul fait quil utilise un serveur hte situ ltranger. linverse, un serveur hte nest pas assujetti ces dispositions seulement parce quil est situ au Canada. La responsabilit du serveur hte doit tre dtermine par le fait quil se limite ou non au rle d agent (ou na aucune incidence sur le contenu); dans lafrmative, il bncie de la protection prvue lal. 2.4(1)b). Lantmmoire est une belle invention issue du progrs de la technologie Internet, elle na aucune incidence sur le contenu et, au vu de lal. 2.4(1)b) de la Loi, elle ne devrait avoir aucun effet juridique sur la communication intervenant entre le fournisseur de contenu et lutilisateur nal. La mise en antmmoire est dicte par la ncessit doffrir un service plus rapide et plus conomique. Elle ne devrait pas emporter la violation du droit dauteur lorsquelle a lieu uniquement pour de telles raisons techniques et bncie donc de la protection prvue lal. 2.4(1)b). La Commission avait raison sur ce point, et sa dcision doit tre rtablie cet gard. Le fait quun fournisseur de services Internet sache que quelquun pourrait violer le droit dauteur grce une technologie sans incidence sur le contenu nquivaut pas ncessairement autoriser cette violation, car il faut dmontrer que lintress a approuv, sanctionn, permis, favoris ou encourag le comportement illicite. Lomission de retirer un contenu illicite aprs avoir t avis de sa prsence peut, dans certains cas, tre considre comme une autorisation . Celle-ci peut parfois tre infre, mais tout dpend des faits.

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SOCAN v. CANADIAN ASSN. OF INTERNET PROVIDERS

[2004] 2 S.C.R.

The Copyright Act is often presented as a balance between the rights of those who create works of the arts and the intellect and those who wish to use such works. However, the balance is only tangentially at issue here because Parliament has expressed the view in s. 2.4(1)(b) that those who provide internet infrastructure are not properly to be considered users of such works for purposes of the Act. Per LeBel J.: Except for the analysis of the appropriate test for determining the location of an Internet communication under the Copyright Act, the judgment of the majority and the disposition of the appeal is agreed to. Parliaments power to legislate with extraterritorial effect is well-settled as a matter of Canadian law. However, it is a common law presumption that Parliament does not intend legislation to apply extraterritorially. The presumption is rebuttable where the contrary intention is expressly stated or implied by the legislation. Nothing in the Copyright Act impliedly gives s. 3(1)(f) extraterritorial effect, particularly given the principle of territoriality of copyright law. Therefore, given that Parliament did not intend the Act to have effect outside Canada, an Internet communication only occurs within Canada where it originates from a host server located in Canada. In this way, the copyright works physically exist within Canadian territory and thus attract the protection of s. 3(1)(f). This test for determining the situs of a communication, which is the location of the host server, has the virtue of simplicity; it best accords with the principle of territoriality and harmonizes our copyright law with international treaty principles, and it diminishes privacy concerns. It is also sound from an operational perspective and it provides the requisite predictability and best accords with the meaning and purpose of the Act.

On dit souvent de la Loi sur le droit dauteur quelle tablit un quilibre entre les droits de ceux qui crent des uvres artistiques et intellectuelles et ceux des personnes dsireuses dutiliser ces uvres. Le prsent pourvoi ne touche quaccessoirement cet quilibre, le lgislateur ayant indiqu lal. 2.4(1)b) que ceux qui fournissent linfrastructure Internet ne doivent pas tre considrs comme des utilisateurs pour lapplication de la Loi. Le juge LeBel : Sauf lanalyse relative au critre quil convient dappliquer pour localiser dune communication Internet au regard de la Loi sur le droit dauteur, le jugement des juges majoritaires et le rglement du pourvoi quils proposent sont accepts. Le pouvoir du Parlement dadopter des lois ayant une porte extraterritoriale est bien tabli en droit canadien. En common law, le Parlement est prsum ne pas avoir eu lintention de confrer une loi une porte extraterritoriale. Cette prsomption peut tre rfute par lintention contraire exprime expressment ou implicitement dans la loi. Aucune disposition de la Loi sur le droit dauteur ne confre implicitement une porte extraterritoriale lal. 3(1)f), compte tenu, tout particulirement, du principe de territorialit du droit dauteur. Puisque le Parlement na pas voulu que la Loi sapplique lextrieur du Canada, une communication Internet a donc lieu au Canada uniquement lorsquelle provient dun serveur hte situ au Canada. De la sorte, les uvres protges par le droit dauteur existent physiquement sur le territoire canadien et bncient donc de la protection de lal. 3(1)f). Ce critre de localisation de la communication, fond sur lemplacement du serveur hte, a le mrite dtre simple; il respecte le mieux le principe de la territorialit et il harmonise notre droit dauteur avec les principes formuls dans les traits internationaux. En plus de rduire le risque datteinte la vie prive, il est valable sur le plan pratique, il offre la prvisibilit voulue et il est le plus compatible avec la porte et lobjet de la Loi. En revanche, il est inopportun dappliquer le critre du lien rel et important, qui a vu le jour dans un contexte trs diffrent, pour dterminer si une communication a eu lieu au Canada. Ce critre a t formul en fonction des exigences de la fdration canadienne et ne saurait tre transform la lgre en rgle dinterprtation lgislative. Ce nest pas un principe de comptence lgislative; il sapplique uniquement aux tribunaux. De plus, il cadre mal avec le principe de la territorialit et ne devrait pas tre interprt comme limitant le pouvoir du Parlement dadopter des lois ayant une porte extraterritoriale. Le recours ce critre comporte galement le risque dune superposition des redevances exigibles dans les diffrents tats.

By contrast, importing the real and substantial connection test that was developed in a very different context is inappropriate to determine whether a communication occurred within Canada. The real and substantial connection test was developed to deal with the exigencies of the Canadian federation and should not be lightly transposed as a rule of statutory construction. The real and substantial connection test is not a principle of legislative jurisdiction; it applies only to courts. Furthermore, it is inconsistent with the territoriality principle and its use should not be understood as a limit on Parliaments power to legislate with extraterritorial effect. There is also a danger that this approach could also result in a layering of royalty obligations between states.

146
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SOCAN c. ASSOC. CANADIENNE DES FOURNISSEURS INTERNET

433

This Court should adopt an interpretation of s. 3(1)(f) that respects end users privacy interests, and should eschew an interpretation that would encourage the monitoring or collection of personal data gleaned from Internet-related activity within the home. Locating the communication at the place of the host server addresses privacy concerns, as such concerns are diminished because it is the content provider who has made the information public by posting it on the server. By contrast, the real and substantial connection test, insofar as it looks at the retrieval practice of end users, encourages the monitoring of an individuals surng and downloading activities. Privacy interests of individuals will be directly implicated where owners of copyrighted works or their collective societies attempt to retrieve data from Internet Service Providers about an end users downloading of copyrighted works. Cases Cited By Binnie J. Referred to: Thberge v. Galerie dArt du Petit Champlain inc., [2002] 2 S.C.R. 336, 2002 SCC 34; CCH Canadian Ltd. v. Law Society of Upper Canada, [2004] 1 S.C.R. 339, 2004 SCC 13; Citron v. Zundel (2002), 41 C.H.R.R. D/274; Reference re Earth Future Lottery, [2003] 1 S.C.R. 123, 2003 SCC 10; Braintech, Inc. v. Kostiuk (1999), 171 D.L.R. (4th) 46; Dow Jones & Co. v. Gutnick (2002), 194 A.L.R. 433, [2002] HCA 56; Goldman v. The Queen, [1980] 1 S.C.R. 976; Dr. Q v. College of Physicians and Surgeons of British Columbia, [2003] 1 S.C.R. 226, 2003 SCC 19; Tolofson v. Jensen, [1994] 3 S.C.R. 1022; Morguard Investments Ltd. v. De Savoye, [1990] 3 S.C.R. 1077; Unifund Assurance Co. v. Insurance Corp. of British Columbia, [2003] 2 S.C.R. 63, 2003 SCC 40; Libman v. The Queen, [1985] 2 S.C.R. 178; Canada (Human Rights Commission) v. Canadian Liberty Net, [1998] 1 S.C.R. 626; Kitakufe v. Oloya, [1998] O.J. No. 2537 (QL); Hunt v. T&N plc, [1993] 4 S.C.R. 289; Holt Cargo Systems Inc. v. ABC Containerline N.V. (Trustees of), [2001] 3 S.C.R. 907, 2001 SCC 90; Spar Aerospace Ltd. v. American Mobile Satellite Corp., [2002] 4 S.C.R. 205, 2002 SCC 78; Beals v. Saldanha, [2003] 3 S.C.R. 416, 2003 SCC 72; Bell ExpressVu Limited Partnership v. Rex, [2002] 2 S.C.R. 559, 2002 SCC 42; WIC Premium Television Ltd. v. General Instrument Corp. (2000), 8 C.P.R. (4th) 1; Re World Stock Exchange (2000), 9 A.S.C.S. 658; Commission of the European Communities, Commission Decision of 8 October 2002 relating to a proceeding under Article 81 of the EC Treaty and Article 53 of the EEA Agreement (Case No. COMP/C2/38.014 IFPI Simulcasting); National Football League v. PrimeTime

Notre Cour doit opter pour linterprtation de lal. 3(1)f) qui respecte le droit la vie prive de lutilisateur nal et carter toute interprtation qui favoriserait le contrle ou la collecte de donnes personnelles lors dune utilisation de lInternet domicile. Localiser la communication en fonction du serveur hte permet dassurer la protection des renseignements personnels : le risque datteinte la vie prive est rduit parce que cest le fournisseur de contenu qui a rendu linformation publique en la rendant disponible sur le serveur. Par contre, dans la mesure o il touche aux pratiques dextraction des utilisateurs naux, le critre du lien rel et important favorise le contrle des activits individuelles de tlchargement et de navigation. Le droit au respect de la vie prive sera directement touch lorsquun titulaire du droit dauteur ou une socit de gestion tentera dobtenir dun fournisseur de services Internet des donnes sur les uvres protges que tlcharge un utilisateur nal. Jurisprudence Cite par le juge Binnie Arrts mentionns : Thberge c. Galerie dArt du Petit Champlain inc., [2002] 2 R.C.S. 336, 2002 CSC 34; CCH Canadienne Lte c. Barreau du Haut-Canada, [2004] 1 R.C.S. 339, 2004 CSC 13; Citron c. Zundel (2002), 41 C.H.R.R. D/274; Renvoi relatif la Earth Future Lottery, [2003] 1 R.C.S. 123, 2003 CSC 10; Braintech, Inc. c. Kostiuk (1999), 171 D.L.R. (4th) 46; Dow Jones & Co. c. Gutnick (2002), 194 A.L.R. 433, [2002] HCA 56; Goldman c. La Reine, [1980] 1 R.C.S. 976; Dr Q c. College of Physicians and Surgeons of British Columbia, [2003] 1 R.C.S. 226, 2003 CSC 19; Tolofson c. Jensen, [1994] 3 R.C.S. 1022; Morguard Investments Ltd. c. De Savoye, [1990] 3 R.C.S. 1077; Unifund Assurance Co. c. Insurance Corp. of British Columbia, [2003] 2 R.C.S. 63, 2003 CSC 40; Libman c. La Reine, [1985] 2 R.C.S. 178; Canada (Commission des droits de la personne) c. Canadian Liberty Net, [1998] 1 R.C.S. 626; Kitakufe c. Oloya, [1998] O.J. No. 2537 (QL); Hunt c. T&N plc, [1993] 4 R.C.S. 289; Holt Cargo Systems Inc. c. ABC Containerline N.V. (Syndics de), [2001] 3 R.C.S. 907, 2001 CSC 90; Spar Aerospace Lte c. American Mobile Satellite Corp., [2002] 4 R.C.S. 205, 2002 CSC 78; Beals c. Saldanha, [2003] 3 R.C.S. 416, 2003 CSC 72; Bell ExpressVu Limited Partnership c. Rex, [2002] 2 R.C.S. 559, 2002 CSC 42; WIC Premium Television Ltd. c. General Instrument Corp. (2000), 8 C.P.R. (4th) 1; Re World Stock Exchange (2000), 9 A.S.C.S. 658; Commission des affaires europennes, Dcision de la Commission du 8 octobre 2002 relative une procdure dapplication de larticle 81 du trait CE et de larticle 53 de laccord EEE (Affaire COMP/C2/38.014 IFPI Simulcast ); National Football League c. PrimeTime

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Binnie J.

[2004] 2 S.C.R.

proper to achieve the benets of enhanced economy and efciency.

92

blement utile et appropri pour lobtention des avantages que sont une conomie et une efcacit accrues. Lalina 2.4(1)b) soustrait lapplication des dispositions sur le droit dauteur les activits lies la fourniture un tiers de moyens de tlcommunication lui permettant deffectuer une communication. Comme la conclu la Commission, [l]es moyens [. . .] ne se limitent pas aux routeurs et autre matriel. Ils englobent tous les logiciels de connexion, les services assurant la connectivit, les installations et services offrant lhbergement sans lesquels la communication naurait pas lieu (p. 39). Je suis daccord. Lintermdiaire Internet qui ne se livre pas une activit touchant au contenu de la communication, dont la participation na aucune incidence sur celui-ci et qui se contente dtre un agent permettant autrui de communiquer bncie de lapplication de lal. 2.4(1)b). Cest pourquoi les appelantes exhortent notre Cour ne pas tirer sur de simples messagers. En rejetant largument de la SOCAN sur ce point, la Commission a conclu (p. 40) :
Au bout du compte, il faut prendre chaque transmission isolment an de dcider si, en loccurrence, un intermdiaire donn est un simple agent permettant autrui de communiquer ou sil agit un autre titre. Dune faon gnrale, cependant, on peut dire coup sr, en ce qui a trait la plupart des transmissions, que seule la personne qui rend disponible une uvre musicale communique celle-ci. [Je souligne.]

Section 2.4(1)(b) shields from liability the activities associated with providing the means for another to communicate by telecommunication. The means, as the Board found, . . . are not limited to routers and other hardware. They include all software connection equipment, connectivity services, hosting and other facilities and services without which such communications would not occur (p. 452). I agree. So long as an Internet intermediary does not itself engage in acts that relate to the content of the communication, i.e., whose participation is content neutral, but connes itself to providing a conduit for information communicated by others, then it will fall within s. 2.4(1)(b). The appellants support this result on a general theory of Dont shoot the messenger!

93

In rejecting SOCANs argument on this point, the Board concluded (at p. 453):
In the end, each transmission must be looked at individually to determine whether in that case, an intermediary merely acts as a conduit for communications by other persons, or whether it is acting as something more. Generally speaking, however, it is safe to conclude that with respect to most transmissions, only the person who posts a musical work communicates it. [Emphasis added.]

94

The Board also found, after its analysis of the activities of the various participants in an Internet transmission, that the person who make[s] the work available for communication is not the host server provider but the content provider (at p. 450):
Any communication of a work occurs because a person has taken all the required steps to make the work available for communication. The fact that this is achieved at the request of the recipient or through an agent neither adds to, nor detracts from the fact that the content provider effects the communication. [Emphasis added.]

Aprs avoir analys les activits des diffrents participants une transmission Internet, la Commission a conclu que la personne qui [rend luvre] disponible pour communication nest pas le fournisseur du serveur hte, mais le fournisseur de contenu (p. 37) :
Toute communication dune uvre a lieu parce quune personne a accompli toutes les dmarches ncessaires pour la rendre disponible pour communication. Le fait que cela se ralise la demande du destinataire ou par lintermdiaire dun tiers ne change rien au fait que le fournisseur de contenu est lauteur de la communication. [Je souligne.]

95

This conclusion, as I understand it, is based on the ndings of fact by the Board of what an Internet

Selon moi, la Commission sest appuye cet gard sur ses conclusions de fait concernant

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SOCAN c. ASSOC. CANADIENNE DES FOURNISSEURS INTERNET

Le juge Binnie

467

intermediary, including a host server provider, actually does. To the extent they act as innocent disseminators, they are protected by s. 2.4(1)(b) of the Act. As the Board put it, at p. 452:
As long as its role in respect of any given transmission is limited to providing the means necessary to allow data initiated by other persons to be transmitted over the Internet, and as long as the ancillary services it provides fall short of involving the act of communicating the work or authorizing its communication, it should be allowed to claim the exemption.

lactivit relle dun intermdiaire Internet, y compris le fournisseur du serveur hte. Sil y a diffusion de bonne foi, lal. 2.4(1)b) sapplique. Comme la dit la Commission (p. 39) :
Tant que son rle relativement une transmission donne est limit la fourniture des moyens ncessaires la transmission de donnes provenant dautrui et destines tre transmises sur lInternet, et tant que les services accessoires quil fournit ne vont pas jusqu la participation la communication de luvre ou lautorisation de sa communication, il convient de lui accorder le bnce de lexemption.

I agree with this approach. Having properly instructed itself on the law, the Board found as a fact that the conduit begins with the host server. No reason has been shown in this application for judicial review to set aside that conclusion. A comparable approach to technology infrastructure was taken by this Court in a contract dispute involving telephone companies back in 1891:
The owners of the telephone wires, who are utterly ignorant of the nature of the message intended to be sent, cannot be said within the meaning of the covenant to transmit a message of the purport of which they are ignorant.

Je partage ce point de vue. Aprs avoir dment tenu compte du droit applicable, la Commission a tir la conclusion de fait que la fonction d agent commence au serveur hte. Aucune raison invoque lappui de la demande de contrle judiciaire ne justie le rejet de cette conclusion. En 1891, appele statuer sur un litige contractuel opposant des compagnies de tlphone, notre Cour a adopt un point de vue comparable relativement une infrastructure technologique :
[TRADUCTION] On ne peut dire des propritaires des ls tlphoniques, qui ignorent tout de la nature du message devant tre transmis, quils transmettent, au sens de la convention, un message dont ils ignorent la teneur. 96

(Electric Despatch Co. of Toronto v. Bell Telephone Co. of Canada (1891), 20 S.C.R. 83, at p. 91, per Gwynne J.) Interpretation of s. 2.4(1)(b) in this way is consistent with art. 8 of the WIPO Copyright Treaty. In the accompanying Agreed Statements, the treaty authority states:
It is understood that the mere provision of physical facilities for enabling or making a communication does not in itself amount to communication within the meaning of this Treaty or the Berne Convention.

(Electric Despatch Co. of Toronto c. Bell Telephone Co. of Canada (1891), 20 R.C.S. 83, p. 91, le juge Gwynne) Pareille interprtation de lal. 2.4(1)b) respecte lart. 8 du Trait sur le droit dauteur de lOMPI. Les dclarations communes adoptes relativement cet article prcisent :
Il est entendu que la simple fourniture dinstallations destines permettre ou raliser une communication ne constitue pas une communication au public au sens du prsent trait ou de la Convention de Berne. 97

Similarly, the European E-Commerce Directive provides, in clause 42 of its Preamble, that Internet intermediaries are not liable where their actions are conned to
the technical process of operating and giving access to a communication network over which information made

De mme, la Directive sur le commerce lectronique europenne prvoit (au par. 42 de son prambule) que lintermdiaire Internet ne peut tre tenu responsable lorsque son activit est limite
au processus technique dexploitation et de fourniture dun accs un rseau de communication sur lequel les

98

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SOCAN v. CANADIAN ASSN. OF INTERNET PROVIDERS

Binnie J.

[2004] 2 S.C.R.

available by third parties is transmitted or temporarily stored, for the sole purpose of making the transmission more efcient; this activity is of a mere technical, automatic and passive nature, which implies that the [Internet intermediary] has neither knowledge of nor control over the information which is transmitted or stored. 99

informations fournies par des tiers sont transmises ou stockes temporairement, dans le seul but damliorer lefcacit de la transmission. Cette activit revt un caractre purement technique, automatique et passif, qui implique que [lintermdiaire Internet] na pas la connaissance ni le contrle des informations transmises ou stockes.

While lack of knowledge of the infringing nature of a work is not a defence to copyright actions generally (J. S. McKeown, Fox on Canadian Law of Copyright and Industrial Designs (4th ed. (looseleaf)), at pp. 21-4 and 21-5), nevertheless the presence of such knowledge would be a factor in the evaluation of the conduit status of an Internet Service Provider, as discussed below. The Internet Service Provider, acting as an intermediary, does not charge a particular fee to its clients for music downloading (although clearly the availability of free music is a signicant business incentive). I conclude that the Copyright Act, as a matter of legislative policy established by Parliament, does not impose liability for infringement on intermediaries who supply software and hardware to facilitate use of the Internet. The attributes of such a conduit, as found by the Board, include a lack of actual knowledge of the infringing contents, and the impracticality (both technical and economic) of monitoring the vast amount of material moving through the Internet, which is prodigious. We are told that a large on-line service provider like America Online delivers in the order of 11 million transmissions a day. Of course an Internet Service Provider in Canada can play a number of roles. In addition to its function as an intermediary, it may as well act as a content provider, or create embedded links which automatically precipitate a telecommunication of copyrighted music from another source. In such cases, copyright liability may attach to the added functions. The protection provided by s. 2.4(1)(b) relates to a protected function, not to all of the activities of a particular Internet Service Provider.

Lignorance du caractre attentatoire dune activit ne peut tre oppose en dfense une action pour violation du droit dauteur (J. S. McKeown, Fox on Canadian Law of Copyright and Industrial Designs (4e d. (feuilles mobiles)), p. 21-4 et 21-5), mais le fait dtre conscient de ce caractre attentatoire peut jouer dans la dtermination de la qualit d agent de lintermdiaire Internet, comme je lindique ci-aprs. Le fournisseur de services Internet, titre dintermdiaire, nexige pas de frais de ses clients pour le tlchargement duvres musicales (mme sil est clair que laccs des chiers musicaux gratuits les incite grandement faire affaire avec lui). mon avis, suivant la Loi sur le droit dauteur, qui consacre la politique lgislative du Parlement, lintermdiaire qui fournit des logiciels et du matriel pour faciliter le recours lInternet ne viole pas le droit dauteur. Comme la conclu la Commission, ce qui caractrise entre autres un tel agent cest lignorance du contenu attentatoire et limpossibilit (tant sur le plan technique que nancier) de surveiller la quantit norme, voire prodigieuse, de chiers circulant sur lInternet. Un important fournisseur de services en ligne comme America Online effectue, nous dit-on, quelque onze millions de transmissions par jour. Certes, un fournisseur de services Internet au Canada peut jouer de nombreux rles. En plus dagir comme intermdiaire, il peut aussi tre fournisseur de contenu ou crer des liens intgrs qui communiquent automatiquement des uvres musicales protges par le droit dauteur provenant dautres sources. Dans de tels cas, les fonctions supplmentaires peuvent engager la responsabilit au regard du droit dauteur. La protection prvue lal. 2.4(1)b) sapplique une fonction protge, et non toute activit dun fournisseur de services Internet.

100

101

102

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SOCAN c. ASSOC. CANADIENNE DES FOURNISSEURS INTERNET

Le juge Binnie

469

On the other hand, as Evans J.A. pointed out, at para. 141, Internet Service Providers who operate a host server would not lose the protection of paragraph 2.4(1)(b) by providing their normal facilities and services, such as housing and maintaining the servers, and monitoring hits on particular Web pages, because these added services are merely ancillary to the provision of disk space and do not involve any act of communication. (b) The Liability of the Host Server Having held quite specically that the content provider effects the communication (p. 450) and that only the person who posts a musical work communicates it (p. 453 (emphasis added)), the Board added the further limitation that to attract copyright liability, a communication must originate from a server located in Canada (p. 459). This added limitation arose from a misreading by the Board of the earlier decision of the Federal Court of Appeal in Canadian Assn. of Broadcasters v. Society of Composers, Authors and Music Publishers of Canada (1994), 58 C.P.R. (3d) 190 (CAB 1994). The Board described what it conceived to be the effect of CAB 1994 as follows at p. 459:
CAB 1994 makes it clear that communications occur where the transmission originates. The place of origin of the request, the location of the person posting the content and the location of the original Web site are irrelevant. As a result, the right to authorize must be obtained from the person administering the right in Canada only when the information is posted on a Canadian server, and the right to communicate must be obtained from that same person only when the transmission originates from a server located in Canada. [Emphasis added.]

Par contre, comme la soulign le juge Evans au 103 par. 141 de ses motifs, le fournisseur de services Internet qui exploite un serveur hte nest pas priv de la protection de lal. 2.4(1)b) lorsquil fournit ses installations et services habituels, tels que lhbergement et la maintenance des serveurs, et quil compte les visites dun site Web, ces services supplmentaires tant simplement accessoires la fourniture despace disque et ne constituant pas une communication. b) La responsabilit du serveur hte Aprs avoir expressment conclu que le four- 104 nisseur de contenu est lauteur de la communication (p. 37) et que seule la personne qui rend disponible une uvre musicale communique celle-ci (p. 40 (je souligne)), la Commission a ajout qu il faut [que la communication] provienne dun serveur situ au Canada pour que sappliquent les dispositions canadiennes sur le droit dauteur (p. 48). Cette restriction supplmentaire dcoule de lin- 105 terprtation errone dun arrt antrieur de la Cour dappel fdrale : Assoc. canadienne des radiodiffuseurs c. Socit canadienne des auteurs, compositeurs et diteurs de musique, [1994] A.C.F. no 1540 (QL) ( ACR 1994 ). Voici quel tait leffet, selon la Commission, de cet arrt (p. 48) :
Il ressort clairement de larrt ACR 1994 que les communications se produisent au lieu do provient la transmission. Le lieu dorigine de la demande, la situation de la personne qui rend disponible le contenu et la situation du site Web initial nont aucun rapport. Par consquent, le droit dautoriser ne doit tre obtenu de la personne qui administre le droit au Canada que lorsque linformation se trouve sur un serveur canadien, et le droit de communiquer ne doit tre obtenu de cette mme personne que lorsque la transmission provient dun serveur situ au Canada. [Je souligne.]

I agree with Evans J.A. that CAB 1994 which dealt with the timing of a transmission, not its location, does not support the Boards conclusion (para. 172). The correct view is that a content provider is not immunized from copyright liability by virtue only of the fact it employs a host server outside the country.

Je conviens avec le juge Evans que larrt ACR 1994, qui portait non pas sur le lieu de la communication, mais sur le moment o elle se produit, nappuie pas la conclusion de la Commission (par. 172). Force est de conclure que le fournisseur de contenu nchappe pas lapplication des dispositions sur le droit dauteur du seul fait quil utilise un serveur hte situ ltranger.

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106
SOCAN v. CANADIAN ASSN. OF INTERNET PROVIDERS

Binnie J.

[2004] 2 S.C.R.

Conversely, a host server does not attract liability just because it is located in Canada. A simple host server test would catch communications that have no connection to Canada other than the location of a piece of physical equipment, serving a neutral role as a technological conduit. Indeed it may be impossible for the user to predict the location of the [host] server; see A. P. Reindl, Choosing Law in Cyberspace: Copyright Conicts on Global Networks (1997-1998), 19 Mich. J. Intl L. 799, at p. 820.

linverse, un serveur hte nest pas assujetti ces dispositions seulement parce quil est situ au Canada. Ne tenir compte que de lemplacement du serveur hte assujettirait des communications nayant aucun lien avec le Canada si ce nest lemplacement dune composante de lquipement physique servant uniquement de support la fonction dagent. Il peut en effet tre [TRADUCTION] impossible, pour lutilisateur, de prvoir lemplacement du serveur hte ; voir A. P. Reindl, Choosing Law in Cyberspace : Copyright Conicts on Global Networks (1997-1998), 19 Mich. J. Intl L. 799, p. 820. Cest sur ce point que je suis en dsaccord avec mon collgue le juge LeBel, qui fait droit la restriction gographique tablie par la Commission, savoir que pour lapplication du droit dauteur, une communication na lieu au Canada que lorsquelle provient dun serveur hte situ au Canada. [. . .] [Cela] offre [. . .] une rgle simple et logique (par. 146). Mon collgue convient que, de prime abord, la responsabilit du fournisseur du serveur hte, comme celle de tout autre fournisseur de services Internet, doit tre dtermine par le fait quil se limite ou non au rle d agent , tel quil est mentionn prcdemment; dans lafrmative, il bncie de la protection prvue lal. 2.4(1)b). Or, selon mon collgue, mme le participant une communication Internet qui ne se contente pas de jouer le rle d agent et qui, autrement, violerait le droit dauteur au Canada, bnciera de lexception prvue moins que le serveur hte ne soit lui-mme situ au pays. Avec gards, jestime quil sagit dune condition supplmentaire indment formaliste qui dfavoriserait injustement les titulaires de droits dauteur. Si des rgles formalistes doivent sappliquer, il appartient au Parlement de les tablir. Mon collgue le juge LeBel invoque galement au par. 149 de ses motifs lart. 8 du Trait sur le droit dauteur de lOMPI, qui reconnat aux titulaires de droits dauteur le droit exclusif de [mettre leurs uvres] la disposition du public . Or, comme je lai dj signal, la Commission a conclu que, pour les besoins du droit dauteur, cest le fournisseur de contenu, et non le fournisseur du serveur hte, qui

107

It is on this aspect of the test that I respectfully disagree with my colleague LeBel J., who accepts the Boards geographic limitation, i.e., that for copyright purposes there is no communication in Canada unless a communication originates from a host server located in Canada. . . . [This] provides a straightforward and logical rule (para. 146). My colleague agrees that in the rst instance the liability of a host server provider, as with any other Internet Service Provider, should be determined by whether or not the host server provider limits itself to a conduit function, as discussed above, and thereby qualies for protection under s. 2.4(1)(b). However, in my colleagues view, even those participants in an Internet telecommunication who step outside the conduit role, and who would otherwise be liable for copyright infringement, will be exempt from liability for Canadian copyright unless the host server itself happens to be located here. In my view, with respect, such an added requirement would be unduly formalistic and would tilt the balance unfairly against the copyright owners. If there are to be formalistic rules they should be imposed by Parliament. My colleague LeBel J., at para. 149, also relies on art. 8 of the WIPO Copyright Treaty, which gives the copyright owner the exclusive right of making available to the public . . . their works, but as previously noted, the Board found that in copyright terms it is the content provider, not the host server provider, that makes the work available. Accordingly, as I see it, the issue of the relevance of art. 8 to

108

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the interpretation of the Copyright Act does not arise.

met luvre la disposition du public. Par consquent, jestime que la question de la pertinence de lart. 8 pour linterprtation de la Loi sur le droit dauteur ne se pose pas. La Commission est galement arrive la con- 109 clusion quun fournisseur de serveur hte comme AT&T Canada donne simplement au client [le fournisseur de contenu] le droit de mettre de linformation sur les serveurs (p. 24). En gnral, le fournisseur du serveur hte ne contrle pas la lgalit du matriel rendu disponible, notamment au regard des dispositions sur le droit dauteur. tant donn lnorme quantit de chiers accessibles, il est impossible, en ltat actuel de la technologie, dexiger du fournisseur du serveur hte quil le fasse. De toute manire, on ne saurait prter ce fournisseur une connaissance du droit dauteur sufsante pour assurer en tout temps la lgalit du contenu variable de ses serveurs, et ce, en labsence de toute allgation de violation. Toutefois, si le fournisseur du serveur hte est 110 inform de la prsence de chiers protgs par le droit dauteur, il pourrait, comme la conclu la Commission, donner suite la plainte, conformment au Code dthique de [lAssociation canadienne des fournisseurs Internet] [et pourrait notamment] exiger du client, au moyen dun avis de retrait, quil retire les chiers faisant lobjet de la plainte (p. 25). Sil ne se conforme pas lavis, on pourrait conclure quil a autoris la communication des chiers protgs par le droit dauteur, ce sur quoi je reviendrai. Malgr son interprtation errone de larrt ACR 111 1994, la Commission a tir une juste conclusion gnrale sur ce point ( la p. 40), que je reproduis de nouveau pour des raisons de commodit :
Au bout du compte, il faut prendre chaque transmission isolment an de dcider si, en loccurrence, un intermdiaire donn est un simple agent permettant autrui de communiquer ou sil agit un autre titre. Dune faon gnrale, cependant, on peut dire coup sr, en ce qui a trait la plupart des transmissions, que seule la personne qui rend disponible une uvre musicale communique celle-ci. [Je souligne.]

The Board found that a host server provider like AT&T Canada merely gives the customer [i.e., the content provider] the right to place information on the servers (p. 441). Typically the host server provider will not monitor what is posted to determine if it complies with copyright laws and other legal restrictions. Given the vast amount of information posted, it is impractical in the present state of the technology to require the host server provider to do so. In any event, it is unrealistic to attribute to a provider an expertise in copyright law sufcient to lawyer all of the changing contents of its servers on an ongoing basis in the absence of alleged infringements being brought to their attention.

However, to the extent the host server provider has notice of copyrighted material posted on its server, it may, as the Board found, respond to the complaint in accordance with the [Canadian Association of Internet Providers] Code of Conduct [which] may include requiring the customer to remove the offending material through a take down notice (p. 441). If the host server provider does not comply with the notice, it may be held to have authorized communication of the copyright material, as hereinafter discussed. Shorn of its misreading of the CAB 1994 case, the Board was correct in its general conclusion on this point, which for ease of reference I set out again (at p. 453):
In the end, each transmission must be looked at individually to determine whether in that case, an intermediary merely acts as a conduit for communications by other persons, or whether it is acting as something more. Generally speaking, however, it is safe to conclude that with respect to most transmissions, only the person who posts a musical work communicates it. [Emphasis added.]

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SOCAN v. CANADIAN ASSN. OF INTERNET PROVIDERS

Binnie J.

[2004] 2 S.C.R.

In my view, the Federal Court of Appeal was right to uphold this aspect of the Boards ruling. (c) The Use of Caches

mon avis, la Cour dappel fdrale a eu raison de conrmer ce volet de la dcision de la Commission. c) La mise en antmmoire La Cour dappel fdrale a conclu la majorit que lal. 2.4(1)b) ne sapplique pas la mise en antmmoire. Le juge Evans a estim (au par. 132) quil nest possible de se prvaloir de la protection que lorsque, sans [l]intervention [de la personne], la communication par ce moyen de tlcommunication ne serait pas ralisable ou, selon toute vraisemblance, naurait pas eu lieu . Il sagit dun critre dapplicabilit trs strict qui pourrait freiner le dveloppement de moyens de tlcommunication plus efcaces. La SOCAN et dautres reprsentants des titulaires de droits dauteur pourraient toujours soutenir, peu importe les avances techniques ultrieures, quune tlcommunication aurait quand mme pu tre ralise laide de lancienne technologie et que, dune faon ou dune autre, la tlcommunication aurait selon toute vraisemblance eu lieu. Avec gards, je crois que le juge Evans a plac la barre trop haute. Le lgislateur a dcid quil est dans lintrt du public dencourager les intermdiaires, qui rendent les tlcommunications possibles, tendre et dvelopper leurs activits sans sexposer au risque de violer le droit dauteur. Imputer aux intermdiaires une responsabilit en la matire freinerait manifestement cette croissance et ce dveloppement, lesquels ont permis la cration de lantmmoire. La Commission a signal que, au dbut, le recours lInternet pour la transmission duvres musicales tait limit par la ncessit davoir une largeur de bande relativement grande pour transmettre des chiers audio (p. 4). Cet obstacle technique a pu tre contourn grce notamment aux antmmoires . La Commission a dit ( la p. 14) que [l]a mise en antmmoire rduit le cot de livraison des donnes en permettant lemploi dune largeur de bande plus petite. Les progrs techniques fulgurants dans le domaine de linformatique et la chute rapide du cot support par le consommateur tiennent de la lgende. Le professeur Takach a rvl une donne renversante : si lindustrie automobile avait pu

113

The majority in the Federal Court of Appeal concluded that the use of caching amounts to a function falling outside s. 2.4(1)(b). Evans J.A. took the view, at para. 132, that protection is only available when, without that persons activity, communication in that medium of telecommunication would not be practicable or, in all probability, would not have occurred. This is a high eligibility test which could inhibit development of more efcient means of telecommunication. SOCAN and others representing copyright owners would always be able to argue that whatever the advances in the future, a telecommunication could still have been practicable using the old technology, and that one way or the other the telecommunication would in all probability have occurred. In my view, with respect, Evans J.A. has placed the bar too high.

114

Parliament has decided that there is a public interest in encouraging intermediaries who make telecommunications possible to expand and improve their operations without the threat of copyright infringement. To impose copyright liability on intermediaries would obviously chill that expansion and development, as the history of caching demonstrates. In the early years of the Internet, as the Board found, its usefulness for the transmission of musical works was limited by the relatively high bandwidth required to transmit audio les (p. 426). This technical limitation was addressed in part by using caches. As the Board noted, at p. 433: Caching reduces the cost for the delivery of data by allowing the use of lower bandwidth than would otherwise be necessary. The velocity of new technical developments in the computer industry, and the rapidly declining cost to the consumer, is legendary. Professor Takach has unearthed the startling statistic that if the automobile industry was able to achieve the same performance-price improvements as has the computer chip industry, a car today would cost

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under ve dollars and would get 250,000 miles to the gallon of gasoline: see Takach, supra, at p. 21. Section 2.4(1)(b) reects Parliaments priority that this entrepreneurial push is to continue despite any incidental effects on copyright owners.

obtenir le mme rapport rendement-prix que le secteur des microprocesseurs, une automobile coterait aujourdhui moins de cinq dollars et pourrait parcourir 250 000 milles avec un seul gallon dessence; voir Takach, op. cit., p. 21. Lalina 2.4(1)b) traduit la volont du lgislateur que se poursuive cet essor anim par lesprit dentreprise malgr ses effets accessoires sur les titulaires de droits dauteur. De lavis de la Commission, les moyens nces- 115 saires au sens de lal. 2.4(1)b) sont ceux qui nont aucune incidence sur le contenu et qui simposent pour maximiser les conomies et la rentabilit de l agent Internet. Cette interprtation me parat assurer le mieux la promotion, dans lintrt du public, de la cration et de la diffusion des uvres artistiques et intellectuelles (Thberge, prcit, par. 30) sans dpouiller le titulaire du droit dauteur de ses droits lgitimes. L antmmoire est en somme une belle invention issue du progrs de la technologie Internet, elle na aucune incidence sur le contenu et, au vu de lal. 2.4(1)b) de la Loi, elle ne devrait avoir aucun effet juridique sur la communication intervenant entre le fournisseur de contenu et lutilisateur nal. Comme je lai dj mentionn, les exigences 116 de lInternet ont permis la SOCAN de repousser largument des appelantes selon lequel elles ne communiquaient pas une uvre musicale , mais simplement des paquets de donnes qui peuvent arriver ou non dans le bon ordre. Il me semble contradictoire que la SOCAN nie maintenant aux appelantes le droit dinvoquer elles aussi ces exigences . La mise en antmmoire est dicte par la ncessit doffrir un service plus rapide et plus conomique et ne devrait pas emporter la violation du droit dauteur lorsquelle a lieu uniquement pour de telles raisons techniques. Aux tats-Unis, une dcision a t rendue en 117 ce sens sur le fondement de la Digital Millennium Copyright Act, qui a codi en partie la dcision Religious Technology Center c. Netcom On-line Communication Services, Inc., 907 F.Supp. 1361 (N.D. Cal. 1995), o la cour a dit aux p. 13691370 :

In the Boards view, the means necessary under s. 2.4(1)(b) were means that were content neutral and were necessary to maximize the economy and cost-effectiveness of the Internet conduit. That interpretation, it seems to me, best promotes the public interest in the encouragement and dissemination of works of the arts and intellect (Thberge, supra, at para. 30) without depriving copyright owners of their legitimate entitlement. The creation of a cache copy, after all, is a serendipitous consequence of improvements in Internet technology, is content neutral, and in light of s. 2.4(1)(b) of the Act ought not to have any legal bearing on the communication between the content provider and the end user. As noted earlier, SOCAN successfully relied on the exigencies of the Internet to defeat the appellants argument that they did not communicate a musical work but simply packets of data that may or may not arrive in the correct sequence. It is somewhat inconsistent, it seems to me, for SOCAN then to deny the appellants the benet of a similar exigencies argument. Caching is dictated by the need to deliver faster and more economic service, and should not, when undertaken only for such technical reasons, attract copyright liability.

A comparable result has been reached under the U.S. Digital Millennium Copyright Act, which in part codied the result in Religious Technology Center v. Netcom On-line Communication Services, Inc., 907 F.Supp. 1361 (N.D. Cal. 1995), where it was observed, at pp. 1369-70:

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Binnie J.

[2004] 2 S.C.R.

These parties, who are liable under plaintiffs theory, do no more than operate or implement a system that is essential if Usenet messages are to be widely distributed. There is no need to construe the Act to make all of these parties infringers. Although copyright is a strict liability statute, there should still be some element of volition or causation which is lacking where a defendants system is merely used to create a copy by a third party.

[TRADUCTION] Les personnes qui, selon la partie demanderesse, violeraient le droit dauteur ne font rien dautre quexploiter ou faire fonctionner un systme essentiel la large diffusion des messages Usenet. Point nest besoin dinterprter la Loi de manire faire de toutes ces personnes des contrefacteurs. Mme si la loi sur le droit dauteur tablit un rgime de responsabilit stricte, il doit nanmoins y avoir un acte volontaire ou un lien de causalit, ce qui nest pas le cas lorsque le systme en cause permet uniquement un tiers de faire une copie.

See also M. B. Nimmer, Nimmer on Copyright (loose-leaf ed.), vol. 3, at p. 12B-13.

118

Voir aussi M. B. Nimmer, Nimmer on Copyright (feuilles mobiles), vol. 3, p. 12B-13. La Directive sur le commerce lectronique europenne dispose que les tats membres veillent ce que les fournisseurs de services Internet nengagent pas leur responsabilit pour la mise en antmmoire (art. 13, par. 1). mon avis, la Commission du droit dauteur a eu raison de conclure que la mise en antmmoire bncie de la protection prvue au par. 2.4(1), et je suis davis de rtablir sa dcision cet gard. d) Autoriser la violation du droit dauteur Autoriser une communication par tlcommunication constitue une violation distincte du par. 3(1); voir Compo, prcit, p. 373 et 376. Lintime prtend que, mme si les appelantes nont pas viol elles-mmes le droit dauteur, elles ont autoris les fournisseurs de contenu le faire parce que les intermdiaires Internet savent que les utilisateurs naux consulteront les chiers (y compris ceux protgs par le droit dauteur) des fournisseurs de contenu. Le juge Evans a effectivement soulign (au par. 120) que [l]e fait de connatre le contenu de linformation diffuse sur Internet, et notamment des uvres musicales gratuites et dtre au courant de lintrt des utilisateurs naux y accder constituent des lments qui sont susceptibles dinciter fortement les utilisateurs naux sabonner auprs des fournisseurs daccs et dencourager les fournisseurs de contenus sabonner auprs des exploitants de serveurs htes. videmment, de nombreux chiers Internet ne sont pas protgs par le droit dauteur tout comme, dans laffaire rcente CCH, de nombreux docu-

The European E-Commerce Directive mandates member States to exempt Internet Service Providers from copyright liability for caching (art. 13(1)).

119

In my opinion, the Copyright Boards view that caching comes within the shelter of s. 2.4(1) is correct, and I would restore the Boards conclusion in that regard. (d) Authorizing Infringement

120

Authorizing a communication by telecommunication is a discrete infringement of s. 3(1); see Compo, supra, at pp. 373 and 376. The respondent argues that even if the appellants did not themselves infringe the copyright, they were guilty of authorizing content providers to do so because Internet intermediaries know that material (including copyright material) placed on their facilities by content providers will be accessed by end users. Indeed as Evans J.A. pointed out, at para. 120: Knowledge of the content available on the Internet, including free music, and of end users interest in accessing it, are powerful inducements for end users to sign up with access providers, and content providers with operators of host servers.

121

122

Of course there is a good deal of material on the Internet that is not subject to copyright, just as there was a good deal of law-related material in the Great

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Library at Osgoode Hall that was not copyrighted in the recent CCH appeal. In that case, as here, the copyright owners asserted that making available a photocopier and photocopying service by the Law Society of Upper Canada implicitly authorized copyright infringement. This Court, however, held that authorizing infringement under the Copyright Act is not so easily demonstrated, at para. 38, per McLachlin C.J.:
. . . a person does not authorize infringement by authorizing the mere use of equipment that could be used to infringe copyright. Courts should presume that a person who authorizes an activity does so only so far as it is in accordance with the law. . . . This presumption may be rebutted if it is shown that a certain relationship or degree of control existed between the alleged authorizer and the persons who committed the copyright infringement. . . . [Emphasis added.]

ments juridiques ne ltaient pas non plus la Grande bibliothque dOsgoode Hall. Dans cette affaire, les titulaires de droits dauteur soutenaient que, en mettant un photocopieur la disposition des usagers et en leur offrant un service de photocopie, le Barreau du Haut-Canada autorisait tacitement la violation du droit dauteur. Notre Cour a toutefois statu quil nest pas facile dtablir lacte d autoriser au sens de la Loi sur le droit dauteur (la Juge en chef, par. 38) :
. . . ce nest pas autoriser la violation du droit dauteur que de permettre la simple utilisation dun appareil susceptible dtre utilis cette n. Les tribunaux doivent prsumer que celui qui autorise une activit ne lautorise que dans les limites de la lgalit [. . .] Cette prsomption peut tre rfute par la preuve quil existait une certaine relation ou un certain degr de contrle entre lauteur allgu de lautorisation et les personnes qui ont viol le droit dauteur . . . [Je souligne.]

See also Vigneux v. Canadian Performing Right Society, Ltd., [1945] A.C. 108 (P.C.); Muzak Corp. v. Composers, Authors and Publishers Association of Canada, Ltd., [1953] 2 S.C.R. 182. SOCAN contends that the host server in essence acts as a commercial partner with the content provider when material is made available on the Internet, but there was no such nding of fact by the Board, and I do not think the rights and obligations of partnership can be so casually imposed. The operation of the Internet is obviously a good deal more complicated than the operation of a photocopier, but it is true here, as it was in the CCH case, that when massive amounts of non-copyrighted material are accessible to the end user, it is not possible to impute to the Internet Service Provider, based solely on the provision of Internet facilities, an authority to download copyrighted material as opposed to non-copyrighted material. On this point the Board concluded as follows (at p. 458):
Even knowledge by an ISP that its facilities may be employed for infringing purposes does not make the ISP liable for authorizing the infringement if it does not purport to grant to the person committing the infringement a

Voir galement : Vigneux c. Canadian Performing Rights Society, Ltd., [1945] A.C. 108 (C.P.); Muzak Corp. c. Composers, Authors and Publishers Association of Canada, Ltd., [1953] 2 R.C.S. 182. La SOCAN prtend que le serveur hte est essentiellement un associ commercial du fournisseur de contenu lorsque les chiers sont rendus disponibles sur lInternet, mais la Commission na tir aucune conclusion de fait en ce sens, et je ne crois pas que lexistence de droits et dobligations dcoulant dune association puisse tre tablie ainsi sans plus. Le fonctionnement de lInternet est videmment 123 beaucoup plus compliqu que celui dun photocopieur, mais il est vrai en lespce, comme dans laffaire CCH, que lorsque lutilisateur nal a accs une quantit phnomnale de donnes non protges par le droit dauteur, on ne peut dire du fournisseur de services Internet, du simple fait quil fournit laccs lInternet, quil autorise le tlchargement de chiers protgs par le droit dauteur par opposition des chiers non protgs. La Commission a conclu ce sujet (p. 47) :
Mme le fait quun ISP sache que ses installations peuvent servir des ns illicites ne peut rendre ce fournisseur responsable davoir autoris la violation sil ne prtend pas accorder lauteur de latteinte une licence ou une 124

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Binnie J.

[2004] 2 S.C.R.

license or permission to infringe. An intermediary would have to sanction, approve or countenance more than the mere use of equipment that may be used for infringement. Moreover, an ISP is entitled to presume that its facilities will be used in accordance with law.

permission dagir illgalement. Il faudrait quun intermdiaire sanctionne, appuie et soutienne plus que la seule utilisation de matriel qui peut servir porter atteinte au droit dauteur. De plus, lISP a le droit de prsumer que ses installations seront utilises conformment la loi.

This conclusion is generally consistent with the decision of this Court in the CCH case, although I would point out that copyright liability may well attach if the activities of the Internet Service Provider cease to be content neutral, e.g. if it has notice that a content provider has posted infringing material on its system and fails to take remedial action.
125

Cette conclusion est gnralement compatible avec larrt CCH de notre Cour. Je ferais cependant remarquer que le fournisseur de services Internet pourrait violer le droit dauteur si ses activits avaient une incidence sur le contenu, cest--dire sil savait quun fournisseur de contenu rend du matriel illicite disponible grce son systme et ne prenait pas de mesures pour y remdier. Suivant la Directive sur le commerce lectronique europenne, le fournisseur de services Internet doit promptement bloquer laccs linformation mise en antmmoire lorsquil est inform de son caractre illicite. Il doit alors retirer linformation ou en rendre laccs impossible sur le site initial (art. 13, par. 1, point e)). Aux tats-Unis, la Digital Millennium Copyright Act prvoit que celui qui met de linformation en antmmoire ne peut tre tenu responsable lorsquil agit promptement pour retirer cette information ou en rendre laccs impossible aprs avoir t avis de son caractre illicite (div. 512(b)(2)(E)). La loi amricaine tablit la procdure suivre lorsque le fournisseur de contenu nie que luvre soit protge par le droit dauteur. Dans la prsente affaire, la Cour dappel fdrale a statu que, en ce qui concerne les serveurs htes, on pourrait conclure quils accordent lautorisation implicite de communiquer des donnes [illicites] sils omettent de les supprimer aprs avoir t aviss de leur prsence sur le serveur et aprs avoir eu une possibilit sufsante de les retirer (par. 160). Elle a invoqu Apple Computer Inc. c. Mackintosh Computers Ltd., [1987] 1 C.F. 173, conf. par [1990] 2 R.C.S. 209, p. 211 et 208, citant C.B.S. Inc. c. Ames Records & Tapes Ltd., [1982] 1 Ch. 91, p. 110 : un fournisseur de services Internet pourrait tre considr comme ayant autoris la violation du droit dauteur parce que [TRADUCTION] . . . lindiffrence dmontre par des actes, de la nature dune excution ou dune omission, peut tre telle quon

Under the European E-Commerce Directive, access to cached information must be expeditiously curtailed when the Internet Service Provider becomes aware of infringing content. At that time, the information must be removed or access disabled at the original site (art. 13(1)(e)). Under the U.S. Digital Millennium Copyright Act, those who cache information are not liable where they act expeditiously to remove or disable access to material once notice is received that it infringes copyright (s. 512(b)(2)(E)). If the content provider disputes that the work is covered by copyright, the U.S. Act lays out a procedure for the resolution of that issue.

126

In the present appeal, the Federal Court of Appeal stated that, in the case of host servers, an implicit authorization to communicate infringing material might be inferred from their failure to remove it after they have been advised of its presence on the server and had a reasonable opportunity to take it down (para. 160). Reference was made to Apple Computer Inc. v. Mackintosh Computers Ltd., [1987] 1 F.C. 173, affd [1990] 2 S.C.R. 209, at pp. 211 and 208, citing C.B.S. Inc. v. Ames Records & Tapes Ltd., [1982] 1 Ch. 91, at p. 110, i.e., an Internet Service Provider may attract liability for authorization because . . . indifference, exhibited by acts of commission or omission, may reach a degree from which authorisation or permission may be inferred. It is a question of

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fact in each case . . . . See also Godfrey v. Demon Internet Ltd., [1999] 4 All E.R. 342 (Q.B.).

peut linterprter comme une autorisation ou une permission. La vritable conclusion tirer de la conduite dune personne constitue une question de fait dans chaque cas . . . . Voir galement Godfrey c. Demon Internet Ltd., [1999] 4 All E.R. 342 (Q.B.). Le fait de savoir que quelquun pourrait violer 127 le droit dauteur grce une technologie sans incidence sur le contenu (par ex. un photocopieur, comme dans CCH) nquivaut pas ncessairement autoriser cette violation, car il faut dmontrer que lintress a approuv[], sanctionn[], perm[is], favoris[], encourag[] (CCH, par. 38) le comportement illicite. Je conviens que lomission de retirer un contenu illicite aprs avoir t avis de sa prsence peut, dans certains cas, tre considre comme une autorisation . Toutefois, ce nest pas le cas en lespce. Tout dpend en grande partie des circonstances. Conclure htivement une autorisation placerait le fournisseur de services Internet dans une situation difcile. Il devrait alors dterminer si lallgation de violation du droit dauteur est fonde et dcider soit de contester laction pour violation du droit dauteur, soit de manquer ventuellement ses obligations contractuelles envers le fournisseur de contenu. La meilleure solution serait que le lgislateur adopte une procdure davis et de retrait linstar de la Communaut europenne et des tatsUnis. En rsum, je conviens avec la Cour dappel que 128 l autorisation peut tre infre dans certains cas, mais que tout dpend des faits. D. Ltablissement dun juste quilibre pour les titulaires de droits dauteur Il ne fait aucun doute que la croissance exponen- 129 tielle de lInternet a cr de srieux obstacles la perception des redevances exigibles au titre du droit dauteur. Comme lcrit Pietsch, loc. cit., p. 278 :
[TRADUCTION] Grce lInternet, il est dsormais possible un grand nombre de personnes travers le monde de copier rapidement des chiers protgs par le droit dauteur. Un logiciel comme Gnutella leur permet de le faire sans avoir passer par un service centralis que les titulaires de droits dauteur pourraient cibler pour tenter de faire respecter leurs droits, comme dans le cas de

The knowledge that someone might be using neutral technology to violate copyright (as with the photocopier in the CCH case) is not necessarily sufcient to constitute authorization, which requires a demonstration that the defendant did (g)ive approval to; sanction, permit; favour, encourage (CCH, at para. 38) the infringing conduct. I agree that notice of infringing content, and a failure to respond by taking it down may in some circumstances lead to a nding of authorization. However, that is not the issue before us. Much would depend on the specic circumstances. An overly quick inference of authorization would put the Internet Service Provider in the difcult position of judging whether the copyright objection is well founded, and to choose between contesting a copyright action or potentially breaching its contract with the content provider. A more effective remedy to address this potential issue would be the enactment by Parliament of a statutory notice and take down procedure as has been done in the European Community and the United States.

In sum, I agree with the Court of Appeal that authorization could be inferred in a proper case but all would depend on the facts. D. Achieving a Balance Fair to Copyright Owners There is no doubt that the exponential growth of the Internet has created serious obstacles to the collection of copyright royalties. As Pietsch, supra, writes, at p. 278:
The Internet makes it possible for large numbers of people to rapidly copy protected materials worldwide. With software like Gnutella, they can do so without any centralized clearinghouse that intellectual property owners could target in an effort to enforce copyright protection, such as Napster. Such developments have led some to hypothesize that copyright law is dead because

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THBERGE v. GALERIE DART

[2002] 2 S.C.R.

Galerie dArt du Petit Champlain inc., Galerie dArt Yves Laroche inc., ditions Multi-Graph lte, Galerie dArt Laroche, Denis inc. and Serge Rosa Appellants v. Claude Thberge Respondent

Galerie dArt du Petit Champlain inc., Galerie dArt Yves Laroche inc., ditions Multi-Graph lte, Galerie dArt Laroche, Denis inc. et Serge Rosa Appelants c. Claude Thberge Intim

Indexed as: Thberge v. Galerie dArt du Petit Champlain inc. Neutral citation: 2002 SCC 34. File No.: 27872. 2001: October 11; 2002: March 28. Present: McLachlin C.J. and LHeureux-Dub, Gonthier, Iacobucci, Major, Binnie and LeBel JJ.

Rpertori : Thberge c. Galerie dArt du Petit Champlain inc. Rfrence neutre : 2002 CSC 34. No du greffe : 27872. 2001 : 11 octobre; 2002 : 28 mars. Prsents : Le juge en chef McLachlin et les juges LHeureux-Dub, Gonthier, Iacobucci, Major, Binnie et LeBel.
EN APPEL DE LA COUR DAPPEL DU QUBEC

ON APPEAL FROM THE COURT OF APPEAL FOR QUEBEC

Copyright Infringement Civil remedies Ownership of copies Definition of copyright Art galleries transferring authorized reproductions of painters works from paper-backed posters to canvas for purposes of resale Whether galleries copied artists works Whether new artistic work was produced in any material form within meaning of s. 3(1) of Copyright Act Whether painters copyright infringed Whether seizure before judgment justified Copyright Act, R.S.C. 1985, c. C-42, ss. 3, 38(1).

Droit dauteur Contrefaon Recours civils Proprit des exemplaires Dfinition du droit dauteur Transfert sur toile par des galeries dart, des fins de revente, de reproductions papier autorises des uvres dun peintre Les galeries ont-elles reproduit les uvres de lartiste? Une nouvelle uvre artistique a-t-elle t produite sous une forme matrielle quelconque au sens de lart. 3(1) de la Loi sur le droit dauteur? Y a-t-il eu violation du droit dauteur du peintre? La saisie avant jugement tait-elle justifie? Loi sur le droit dauteur, L.R.C. 1985, ch. C-42, art. 3, 38(1). Procdure civile Mesures provisoires Saisie avant jugement Transfert sur toile par des galeries dart, des fins de revente, de reproductions papier autorises des uvres dun peintre Saisie, par le peintre, des reproductions sur toile Y a-t-il eu violation du droit dauteur du peintre? La saisie avant jugement tait-elle justifie? Code de procdure civile, L.R.Q., ch. C-25, art. 734 Loi sur le droit dauteur, L.R.C. 1985, ch. C-42, art. 38(1). Lintim, un artiste peintre jouissant dune rputation internationale enviable, cde par contrat un diteur le droit de publier des reproductions, des cartes ainsi que dautres produits de papeterie reprsentant certaines de

Civil procedure Provisional remedies Seizure before judgment Art galleries transferring authorized reproductions of painters works from paper-backed posters to canvas for purposes of resale Painter having canvas-backed reproductions seized Whether painters copyright infringed Whether seizure before judgment justified Code of Civil Procedure, R.S.Q., c. C-25, art. 734 Copyright Act, R.S.C. 1985, c. C-42, s. 38(1). The respondent, a painter who enjoys a wellestablished international reputation, assigned by contract the right to publish reproductions, cards and other stationery products representing certain of his works to

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a publisher. The appellant art galleries purchased cards, photolithographs and posters embodying various of the artists works from the publisher, and then transferred the image to canvas. The process in issue here involves lifting the ink that was used in printing a paper poster and transferring it onto a canvas. Since this process leaves the poster blank, there is no increase in the total number of reproductions. The respondent applied for an injunction, accounting, and damages against the appellants in the Quebec Superior Court. He also obtained a writ of seizure before judgment, under art. 735 of the Code of Civil Procedure (C.C.P.), with respect to all of the canvas-backed reproductions embodying his works, claiming to have a deemed right of ownership in those items under s. 38(1) of the Copyright Act. Section 38(1) provides that the owner of the copyright in a work may recover possession of all infringing copies of that work. Infringing, in relation to a work, is defined in s. 2 of the Copyright Act as any copy, including any colourable imitation, made or dealt with in contravention of this Act. The appellants applied to have the seizure quashed. The Superior Court concluded that transferring an authorized paper reproduction onto canvas did not amount to infringement within the meaning of the Copyright Act, and ordered that the seizure be quashed. The Court of Appeal, finding that there had been infringement, set aside that decision and upheld the seizure before judgment with respect to the canvas-backed reproductions.

ses uvres. Les galeries dart appelantes achtent de lditeur des cartes, photolithographies et affiches reprsentant diffrentes uvres de lartiste, pour ensuite en entoiler limage. Lentoilage est un procd qui permet de prlever dune affiche papier imprime les encres utilises et de les reporter sur une toile. Ce procd laissant laffiche dorigine blanche, il ny a pas daugmentation du nombre total de reproductions. Lintim intente contre les appelants un recours en injonction, reddition de comptes et dommages-intrts devant la Cour suprieure du Qubec. Il obtient galement la dlivrance dun bref de saisie avant jugement, en vertu de lart. 735 du Code de procdure civile ( C.p.c. ), qui vise tous les entoilages de ses uvres, allguant avoir un droit de proprit prsum sur ces biens en vertu du par. 38(1) de la Loi sur le droit dauteur. Le paragraphe 38(1) nonce que le titulaire du droit dauteur peut recouvrer la possession de tous les exemplaires contrefaits duvres. La contrefaon lgard dune uvre est dfinie lart. 2 de la Loi sur le droit dauteur comme toute reproduction, y compris limitation dguise, qui a t faite contrairement la prsente loi ou qui a fait lobjet dun acte contraire la prsente loi . Les appelants demandent la cassation de cette saisie. La Cour suprieure conclut que lentoilage dune reproduction papier autorise nquivaut pas contrefaon au sens de la Loi sur le droit dauteur et accorde une mainleve des saisies. La Cour dappel, concluant quil y a contrefaon, infirme ce jugement et maintient la saisie avant jugement quant aux entoilages. Arrt (les juges LHeureux-Dub, Gonthier et LeBel sont dissidents) : Le pourvoi est accueilli. Lordonnance du juge des requtes annulant la saisie et ordonnant la restitution des biens saisis aux appelants est rtablie. Le juge en chef McLachlin et les juges Iacobucci, Major et Binnie : La Loi sur le droit dauteur confre lintim la fois des droits conomiques et des droits moraux sur son uvre. Les droits conomiques sont fonds sur une conception des uvres artistiques et littraires qui les considre essentiellement comme des objets de commerce. Ces droits peuvent tre cds et lintim ne peut faire valoir en vertu de la Loi que les droits conomiques quil a conservs. Les droits moraux, qui sont incessibles, traitent luvre comme un prolongement de la personnalit de lartiste et lui attribuent une dignit qui mrite dtre protge. Il ny a violation de lintgrit de luvre que si celle-ci est modifie dune manire prjudiciable lhonneur ou la rputation de lauteur. Les droits moraux restreignent de faon permanente lutilisation que les acheteurs peuvent faire dune uvre une fois que son auteur sen est dparti, mais il faut tenir compte des limites qui constituent une partie

Held (LHeureux-Dub, Gonthier and LeBel JJ. dissenting): The appeal should be allowed. The order of the motions judge setting aside the seizure and ordering that the seized goods be returned to the appellants should be restored. Per McLachlin C.J. and Iacobucci, Major and Binnie JJ.: The Copyright Act provides the respondent with both economic and moral rights to his work. The economic rights are based on a conception of artistic and literary works essentially as articles of commerce. Such rights can be assigned and the respondent can only assert under the Act the economic rights he has retained. Moral rights, which are not assignable, treat the uvre as an extension of the artists personality, possessing a dignity which is deserving of protection. The integrity of the work is infringed only if the work is modified to the prejudice of the honour or reputation of the author. Moral rights act as a continuing restraint on what purchasers can do with a work once it passes from the author, but respect must be given to the limitations that are an essential part of the moral rights created by Parliament. Economic rights should not be read so broadly that they cover the same ground as the moral

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[2002] 2 S.C.R.

rights, making inoperative the limits Parliament has imposed on moral rights.

essentielle des droits moraux crs par le lgislateur. Il ne faut pas interprter les droits conomiques en leur attribuant une porte tellement large quils engloberaient les mmes lments que les droits moraux, ce qui rendrait inapplicables les limites aux droits moraux imposes par le lgislateur. En lespce, lintim tente de faire valoir un droit moral sous le couvert dun droit conomique et cette tentative doit tre repousse. Les appelants ont achet des affiches des peintures de lintim reproduites lgalement et ont utilis un processus chimique pour dtacher la couche dencre du papier (laissant celui-ci blanc) et pour lapposer sur une toile. En leur qualit de propritaires des affiches, ils avaient le droit dagir ainsi. Il ny a pas eu de production (ni de reproduction) dune nouvelle uvre artistique ni d une partie importante de luvre, sous une forme matrielle quelconque au sens du par. 3(1) de la Loi sur le droit dauteur. Limage fixe dans lencre sur les affiches na pas t reproduite. Elle a t transfre dun support un autre. Une interprtation large des droits conomiques selon laquelle la substitution dun support un autre constitue une nouvelle reproduction qui porte atteinte aux droits du titulaire du droit dauteur mme si le rsultat nest pas prjudiciable sa rputation fait trop pencher la balance en faveur du titulaire du droit dauteur et ne reconnat pas suffisamment les droits de proprit des appelants sur les affiches quils ont achetes. Il faut garder lesprit la porte historique de la notion de reproduction figurant dans la Loi sur le droit dauteur. La reproduction est gnralement dfinie comme laction de produire des copies supplmentaires ou nouvelles de luvre sous une forme matrielle quelconque. Bien que la Loi reconnaisse que lvolution technologique permet maintenant la reproduction de lexpression par de nouveaux moyens, lvolution importante des concepts juridiques dans le domaine du droit dauteur nentre pas en jeu, compte tenu des faits. Il y a eu en loccurrence transfert littral matriel et mcanique sans multiplication. Lexistence dans la Loi de rgimes distincts couvrant les droits conomiques, dune part, et les droits moraux, dautre part, dnote lintention dtablir une distinction et une sparation claires. En ce qui a trait aux recours, le lgislateur a voulu que la modification sans reproduction soit rgie par les dispositions portant sur les droits moraux plutt que par celles portant sur les droits conomiques. Adopter une opinion contraire permettrait un artiste qui soppose une modification de la reproduction autorise de se soustraire lexigence importante de prouver le prjudice caus son honneur ou sa rputation pour tablir que ses droits moraux ont t viols.

In this case, the respondent is asserting a moral right in the guise of an economic right, and the attempt should be rejected. The appellants purchased lawfully reproduced posters of the respondents 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 holders 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.

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Since the respondent has not brought himself within s. 38 of the Copyright Act, he had no authority to obtain a seizure of the appellants copies under art. 734 C.C.P. The respondents real complaint is more properly characterized as the alleged infringement of his moral rights and its potential impact on the market for his works. An art. 734 seizure before judgment is not available to an artist or author who relies on the alleged infringement of a moral right. The evaluation of a potential breach of moral rights calls for the exercise of a good deal of judgment. A distortion, mutilation or modification of a work is only actionable if it is to the prejudice of the honour or reputation of the author. The artist or writer should not become the judge in his own cause on such matters and it is therefore entirely understandable that Parliament should insist on prior judicial review before any seizure takes place based on an assertion of violation of moral rights. Whether a fuller record adduced at trial will demonstrate a breach of economic rights or moral rights will be for the trial judge to determine. At this stage, we need to decide only that the interlocutory record did not justify the seizure before judgment.

Lintim ne rpondant pas aux critres dapplication de lart. 38 de la Loi sur le droit dauteur, lart. 734 C.p.c. ne lui permettait pas dobtenir la saisie des exemplaires des appelants. Il serait plus juste de considrer la vritable plainte de lintim comme visant latteinte prsume ses droits moraux et leffet potentiel de cette atteinte sur le march de ses uvres. Lartiste ou lauteur qui allgue la violation dun droit moral ne peut pas recourir la saisie avant jugement permise par lart. 734. Lvaluation dune violation potentielle des droits moraux fait grandement appel lexercice du jugement. La dformation, la mutilation ou la modification dune uvre ne peut donner lieu une poursuite que si elle est faite dune manire prjudiciable lhonneur ou la rputation de lauteur . Lartiste ou lauteur ne doit pas devenir juge de sa propre cause en ces matires et il est tout fait comprhensible que le lgislateur insiste sur la tenue dun examen judiciaire pralable toute saisie fonde sur une allgation de violation des droits moraux. Il appartiendra au juge de premire instance de dterminer si la preuve plus complte produite au procs dmontre lexistence dune violation des droits conomiques ou des droits moraux. ce stade-ci, il nous suffit de conclure que le dossier interlocutoire ne justifiait pas la saisie avant jugement. Les juges LHeureux-Dub, Gonthier et LeBel (dissidents) : La Loi sur le droit dauteur pourvoit la fois la protection du droit dauteur (copyright) et des droits moraux de lauteur. Le droit dauteur protge contre lappropriation et la dissmination illicites de lexpression crative. Cest un droit de nature patrimoniale qui peut faire lobjet dune cession. Lobjet du droit dauteur est un droit sur luvre et non un droit personnel. Llment-cl est luvre incluant son support matriel, et non lide de luvre. Pour leur part, les droits moraux sattachent principalement la protection de lintgrit et de la paternit de luvre, celle-ci tant alors considre comme une extension de la personnalit de lauteur. Il sagit donc de droits extra-patrimoniaux, par dfinition incessibles. Les notions de droits moraux sont inapplicables aux faits de la prsente affaire. En lespce, les appelants ont illgalement procd la reproduction des uvres de lintim sous une forme matrielle quelconque en violation du par. 3(1) de la Loi sur le droit dauteur. Pour quune uvre soit reproduite, il nest pas ncessaire de dmontrer une augmentation du nombre total de copies de celle-ci. Le lgislateur na pas uniquement protg le droit de reproduire la totalit de luvre, mais galement une partie importante de celle-ci. Il faut donc tenir compte non pas uniquement de laspect quantitatif, mais galement de laspect qualitatif. Une analyse restrictive uniquement base sur la multiplication de luvre ne saurait lui octroyer la protection

Per LHeureux-Dub, Gonthier and LeBel JJ. (dissenting): The Copyright Act provides protection for both copyright and the authors moral rights. Copyright protects against the unlawful appropriation and distribution of creative expression. It is a patrimonial right that may be assigned. The subject-matter of copyright is a right in the work and not a personal right. The key factor is the work, including its material support, and not the idea expressed by the work. Moral rights are concerned primarily with protecting the integrity and paternity of the work, which is then regarded as an extension of the authors personality. These are extra-patrimonial rights, which, by definition, are not assignable. The concepts of moral rights are inapplicable to the facts of this case.

In this case the appellants unlawfully reproduced the respondents works in a material form in breach of s. 3(1) of the Copyright Act. In order for a work to be reproduced, there is no requirement to establish that there has been an increase in the total number of copies of the work. Parliament did not protect the right only to reproduce the work as a whole but also to reproduce a substantial part of the work. It is therefore necessary to consider not only the quantitative aspect, but also the qualitative aspect. A restrictive analysis based solely on multiplication of the work could not provide the work with the necessary protection and would ignore the

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[2002] 2 S.C.R.

concept of substantial part thereof, which is protected by s. 3(1). The concept of work refers to any materialized and original form of expression. Fixation of the work in a medium is a condition sine qua non of the production of a work. Therefore, producing a work refers to the initial materialization and reproducing it refers to any subsequent material fixation that is modelled (in the causal sense) on its first fixation. Fixation of the work in a new medium is therefore the fundamental element of the act of reproduc[ing] . . . in any material form whatever what already existed in a first, original material form. That type of conduct amounts to plagiarism and constitutes an infringement of copyright under s. 3(1). It is important to distinguish between the medium, which is protected by s. 3(1) and is inextricably connected to the work, and the concept of structure in s. 28.2(3) of the Copyright Act. A change to the medium is prohibited by s. 3(1), while a change to a physical structure containing the work will be prohibited by s. 28.2(3) if the author establishes that the new physical structure causes prejudice to the integrity of his or her work. The Copyright Act provides that a copyright owner may dispose of his or her right, either wholly or partially, retaining the residue of the sole reproduction rights that were not assigned. The respondent had given his publishers very detailed authorization for the reproduction of his works. The contract between the respondent and his publishers must be interpreted in accordance with the general requirements of arts. 1425 to 1432 C.C.Q. The respondent never intended to assign in full his right to reproduce the works in question in any material form whatever. The contractual provisions, when construed as a whole, show that the right conferred is limited solely to reproduction on paper products, thereby excluding reproduction in any other material form, including affixing an image representing the respondents work onto a canvas. The use of the expression other stationery products implies that the products that are expressly authorized are also stationery products. The fact that the product may be framed, laminated or combined with other products also suggests that the product is in fact a stationery product, as the authorized medium is not physically altered and is still paper. The rights assigned by contract certainly do not include the ability to alter the authorized product by changing its medium. By expressly confining the rights that were assigned to producing reproductions of his works on paper, the respondent therefore retained all his rights to produce

ncessaire et ignorerait le concept de partie importante de luvre qui se trouve protg par le par. 3(1). La notion d uvre renvoie toute forme dexpression matrialise et originale. La fixation un support matriel constitue une condition sine qua non de la production dune uvre. Ainsi, produire une uvre fait rfrence une premire matrialisation et la reproduire toute fixation matrielle ultrieure qui sinspire (au sens causal) de la premire fixation. La fixation un nouveau support matriel constitue donc llment fondamental de lacte de reproduire [. . .] sous une forme matrielle quelconque ce qui existait dj sous une premire forme matrielle. Un tel comportement relve du plagiat et constitue une violation des droits dauteur trouvs au par. 3(1). Il est important de distinguer entre le support matriel protg par le par. 3(1) et qui est inextricablement li luvre, et la notion de structure qui se retrouve au par. 28.2(3) de la Loi sur le droit dauteur. Une modification du support matriel est prohibe par le par. 3(1), tandis que la modification dune structure qui contient luvre sera prohibe par le par. 28.2(3) si lauteur dmontre que la nouvelle structure porte prjudice lintgrit de son uvre. La Loi sur le droit dauteur prvoit la possibilit pour le titulaire du droit dauteur de disposer de son droit en totalit ou en partie, conservant alors le reliquat des droits exclusifs de reproduction quil na pas cds. Lintim a autoris de faon trs dtaille la reproduction de ses uvres par ses diteurs. Le contrat entre lintim et ses diteurs doit sinterprter selon les directives gnrales offertes aux art. 1425 1432 C.c.Q. Lintim na jamais eu lintention de cder la totalit de son droit de reproduire les uvres vises sous une forme matrielle quelconque. Une interprtation de lensemble des dispositions contractuelles montre que le droit confr se limite la seule reproduction sur produits papier, excluant par le fait mme la reproduction sous toute autre forme matrielle, dont lapposition dune image reprsentant une uvre de lintim sur une toile. Lutilisation de lexpression autres produits de papeterie laisse croire que les produits expressment autoriss sont galement des produits de papeterie. La possibilit dencadrer, laminer ou regrouper le produit avec dautres indique galement que le produit en est un de papeterie, le support autoris ne subissant pas de modification matrielle et demeurant du papier. Les droits cds par contrat nincluent certainement pas la possibilit de dnaturer le produit autoris en en changeant le support. En limitant expressment les droits cds des reproductions de ses uvres sur support papier, lintim a donc conserv tous ses droits de reproduction sur quelque

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341

reproductions on any other medium whatsoever. By transferring posters of the respondents works onto canvas, the appellants did in fact reproduce the respondents works or a substantial part thereof in any material form whatever, contrary to s. 3(1). The fact that the respondent did not consent means that his copyright was infringed. The appellants had therefore engaged in infringement and the respondent was entitled to seize the canvas-backed reproductions under art. 734(1) C.C.P. and s. 38(1) of the Copyright Act. Cases Cited By Binnie J. Distinguished: Apple Computer, Inc. v. Mackintosh Computers Ltd., [1987] 1 F.C. 173, affd [1988] 1 F.C. 673, affd [1990] 2 S.C.R. 209; approved: Snow v. The Eaton Centre Ltd. (1982), 70 C.P.R. (2d) 105; Fetherling v. Boughner (1978), 40 C.P.R. (2d) 253; No Fear, Inc. v. Almo-Dante Mfg. (Canada) Ltd. (1997), 76 C.P.R. (3d) 414; referred to: Compo Co. v. Blue Crest Music Inc., [1980] 1 S.C.R. 357; R. v. Stewart, [1988] 1 S.C.R. 963; Bishop v. Stevens, [1990] 2 S.C.R. 467; Morang and Co. v. LeSueur (1911), 45 S.C.R. 95; Millar v. Taylor (1769), 4 Burr. 2303, 98 E.R. 201; Underwriters Survey Bureau Ltd. v. Massie & Renwick Ltd., [1937] Ex. C.R. 15, revd [1940] S.C.R. 218; Tom Hopkins International, Inc. v. Wall & Redekop Realty Ltd. (1984), 1 C.P.R. (3d) 348; Walter v. Lane, [1900] A.C. 539; Compagnie Gnrale des tablissements MichelinMichelin & Cie v. National Automobile, Aerospace, Transportation and General Workers Union of Canada (CAW-Canada), [1997] 2 F.C. 306; Mirage Editions, Inc. v. Albuquerque A.R.T. Co., 856 F.2d 1341 (1988); Crim., January 28, 1888, Bull. crim., No. 46, p. 68; Crim., December 2, 1964, Bull. crim., No. 320, p. 672; Crim., October 20, 1977, Bull. crim., No. 315, p. 801; Civ. 1st, May 5, 1976, Bull. civ., No. 161, p. 128; Paris, March 18, 1987, D. 1988.Somm.209, note Colombet; Civ. 1st, April 19, 1988, Bull. civ., No. 112, p. 76; Paris, April 27, 1945, Gaz. Pal. 1945.1.192; Hovener/ Poortvliet, HR January 19, 1979, NJ 412; Frost v. Olive Series Publishing Co. (1908), 24 T.L.R. 649; C. M. Paula Co. v. Logan, 355 F.Supp. 189 (1973); Peker v. Masters Collection, 96 F.Supp.2d 216 (2000); Lee v. A.R.T. Co., 125 F.3d 580 (1997); King Features Syndicate, Inc. v. O. and M. Kleeman, Ltd., [1941] A.C. 417; Thriault v. Succession de Rmi Thriault, [1977] C.S. 1120.

autre support que ce soit. En entoilant des affiches papier des uvres de lintim, les appelants ont bel et bien reproduit les uvres de lintim ou une partie importante de celles-ci sous une forme matrielle quelconque en contravention du par. 3(1). Labsence de consentement de lintim fait en sorte que son droit dauteur a t viol. Les appelants se sont ainsi adonns des actes de contrefaon et lintim tait en droit de saisir les entoilages conformment aux dispositions des par. 734(1) C.p.c. et 38(1) de la Loi sur le droit dauteur. Jurisprudence Cite par le juge Binnie Distinction davec larrt : Apple Computer, Inc. c. Mackintosh Computers Ltd., [1987] 1 C.F. 173, conf. par [1988] 1 C.F. 673, conf. par [1990] 2 R.C.S. 209; arrts approuvs : Snow c. The Eaton Centre Ltd. (1982), 70 C.P.R. (2d) 105; Fetherling c. Boughner (1978), 40 C.P.R. (2d) 253; No Fear, Inc. c. Almo-Dante Mfg. (Canada) Ltd. (1997), 76 C.P.R. (3d) 414; arrts mentionns : Compo Co. c. Blue Crest Music Inc., [1980] 1 R.C.S. 357; R. c. Stewart, [1988] 1 R.C.S. 963; Bishop c. Stevens, [1990] 2 R.C.S. 467; Morang and Co. c. LeSueur (1911), 45 R.C.S. 95; Millar c. Taylor (1769), 4 Burr. 2303, 98 E.R. 201; Underwriters Survey Bureau Ltd. c. Massie & Renwick Ltd., [1937] Ex. C.R. 15, inf. par [1940] R.C.S. 218; Tom Hopkins International, Inc. c. Wall & Redekop Realty Ltd. (1984), 1 C.P.R. (3d) 348; Walter c. Lane, [1900] A.C. 539; Compagnie Gnrale des tablissements MichelinMichelin & Cie c. Syndicat national de lautomobile, de larospatiale, du transport et des autres travailleurs et travailleuses du Canada (TCA-Canada), [1997] 2 C.F. 306; Mirage Editions, Inc. c. Albuquerque A.R.T. Co., 856 F.2d 1341 (1988); Crim., 28 janvier 1888, Bull. crim., no 46, p. 68; Crim., 2 dcembre 1964, Bull. crim., no 320, p. 672; Crim., 20 octobre 1977, Bull. crim., no 315, p. 801; Civ. 1re, 5 mai 1976, Bull. civ., no 161, p. 128; Paris, 18 mars 1987, D. 1988.Somm.209, note Colombet; Civ. 1re, 19 avril 1988, Bull. civ., no 112, p. 76; Paris, 27 avril 1945, Gaz. Pal. 1945.1.192; Hovener/Poortvliet, HR 19 janvier 1979, NJ 412; Frost c. Olive Series Publishing Co. (1908), 24 T.L.R. 649; C. M. Paula Co. c. Logan, 355 F.Supp. 189 (1973); Peker c. Masters Collection, 96 F.Supp.2d 216 (2000); Lee c. A.R.T. Co., 125 F.3d 580 (1997); King Features Syndicate, Inc. c. O. and M. Kleeman, Ltd., [1941] A.C. 417; Thriault c. Succession de Rmi Thriault, [1977] C.S. 1120. Cite par le juge Gonthier (dissident) Fetherling c. Boughner (1978), 40 C.P.R. (2d) 253; Tri-Tex Co. c. Gideon, [1999] R.J.Q. 2324; 2946-1993 Qubec inc. c. Sysbyte Telecom inc., J.E. 2001-1143;

By Gonthier J. (dissenting) Fetherling v. Boughner (1978), 40 C.P.R. (2d) 253; Tri-Tex Co. v. Gideon, [1999] R.J.Q. 2324; 2946-1993 Qubec inc. v. Sysbyte Telecom inc., J.E. 2001-1143;

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THBERGE c. GALERIE DART

Le juge Binnie

347

authorized the printing and sale of the poster purchased. More specifically, I think that if modification of these posters were to give rise to any legitimate objection on the part of the artist, it must be as a result of violation of his moral right to the integrity of his work. In that regard, however, my colleague Gonthier J. and I are in agreement that seizure before trial is not a remedy available in an action based on the alleged breach of the artists moral right in a work. III. The Content of the Respondents Rights Under the Copyright Act The Act provides the respondent with both economic and moral rights to his work. The distinction between the two types of rights and their respective statutory remedies is crucial.

lartiste qui a autoris limpression et la vente de laffiche achete. Jestime plus particulirement que, si la modification de ces affiches pouvait donner lieu une opposition lgitime de la part de lartiste, cest sur latteinte au droit moral de lauteur lintgrit de son uvre quelle devrait sappuyer. Sur ce point, cependant, mon collgue le juge Gonthier et moi sommes daccord pour dire quon ne peut pas recourir la saisie avant jugement dans le cadre dune action fonde sur une atteinte au droit moral de lartiste sur une uvre. III. La teneur des droits confrs lintim par la Loi sur le droit dauteur La Loi confre lintim la fois des droits conomiques et des droits moraux sur son uvre. La distinction entre ces deux catgories de droits et entre les recours que la loi prvoit respectivement leur gard revt une importance capitale. De faon gnrale, le droit canadien en matire de droit dauteur sintresse traditionnellement davantage aux droits conomiques quaux droits moraux. Notre loi originale, entre en vigueur en 1924, reprenait essentiellement la loi anglaise, la Copyright Act, 1911 (R.-U.), 1 & 2 Geo. 5, ch. 46. Le principal avantage conomique confr lartiste ou lauteur tait (et est toujours) le droit exclusif de produire ou reproduire la totalit ou une partie importante de luvre, sous une forme matrielle quelconque (par. 3(1)) pendant sa vie et une priode de cinquante ans aprs sa mort (art. 6). Les droits conomiques sont fonds sur une conception des uvres artistiques et littraires qui les considre essentiellement comme des objets de commerce. (Dailleurs, on a adopt la premire loi sur le droit dauteur, la Copyright Act, 1709 (R.-U.), 8 Ann., ch. 21, pour apaiser les craintes des imprimeurs, et non celles des auteurs.) Conformment cette philosophie, ces droits peuvent tre achets et vendus en totalit ou en partie, dune faon gnrale ou avec des restrictions territoriales, pour la dure complte ou partielle de la protection (par. 13(4)). Le titulaire du droit dauteur peut donc tre lauteur de luvre, mais ce nest pas ncessairement le cas. Ce sont ses
11 10

Generally speaking, Canadian copyright law has traditionally been more concerned with economic than moral rights. Our original Act, which came into force in 1924, substantially tracked the English Copyright Act, 1911 (U.K.), 1 & 2 Geo. 5, c. 46. The principal economic benefit to the artist or author was (and is) the sole right to produce or reproduce the work or any substantial part thereof in any material form whatever (s. 3(1)) for his or her life plus fifty years (s. 6). The economic rights are based on a conception of artistic and literary works essentially as articles of commerce. (Indeed, the initial Copyright Act, 1709 (U.K.), 8 Ann., c. 21, was passed to assuage the concerns of printers, not authors.) Consistently with this view, such rights can be bought and sold either wholly or partially, and either generally or subject to territorial limitations, and either for the whole term of the copyright or for any part thereof (s. 13(4)). The owner of the copyright, thus, can be, but need not be, the author of the work. It was the respondents economic rights in enumerated works that were the subject-matter of an assignment to two poster manufacturers, ditions Galerie LImagerie .G.I. Lte (.G.I.) by contract dated October

12

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348
THBERGE v. GALERIE DART

Binnie J.

[2002] 2 S.C.R.

29, 1996, and New York Graphic Society, Ltd. by contract dated February 3, 1997.

droits conomiques sur les uvres numres que lintim a cd deux fabricants daffiches, soit ditions Galerie LImagerie .G.I. Lte ( .G.I. ) (par contrat dat du 29 octobre 1996) et la New York Graphic Society, Ltd. (par contrat dat du 3 fvrier 1997). On nous a dit que toutes les reproductions en cause avaient t imprimes par .G.I., dont le contrat avec lintim prvoit, la clause 19 :
19- Libre utilisation du produit. Le produit est mis en vente sans restriction dutilisation, i.e. quil peut tre encadr, lamin ou regroup avec dautres produits sans que ces utilisations ne soient considres comme ayant gnr des produits ou sous-produits autres que ceux prvus ce contrat.

13

We are told that all of the reproductions at issue here were printed by .G.I., art. 19 of whose contract with the respondent provided that:
[TRANSLATION] 19- Free use of the product. The product is offered for sale without restriction as to use, i.e. it may be framed, laminated or combined with other products and such uses shall not be considered to have generated products or sub-products other than those provided for in this contract.

14

The appellants were not party to this contract, but I agree with my colleague Gonthier J. that its terms may nevertheless be relevant in determining to what extent the respondent assigned away his economic rights under the Copyright Act, and to what extent he still holds them. .G.I., it is noted, is not a party to this proceeding. The only economic rights the respondent can assert under the Act are those rights that he has retained. Accepting, as I do, my colleagues interpretation of the .G.I. contract to the effect that the respondent (rather than .G.I.) retained the right to bring this action, the respondent must still establish a breach by the appellants of s. 3(1) of the Act. Moral rights, by contrast, descend from the civil law tradition. They adopt a more elevated and less dollars and cents view of the relationship between an artist and his or her work. They treat the artists uvre as an extension of his or her personality, possessing a dignity which is deserving of protection. They focus on the artists right (which by s. 14.1(2) is not assignable, though it may be waived) to protect throughout the duration of the economic rights (even where these have been assigned elsewhere) both the integrity of the work and his or her authorship of it (or anonymity, as the author wishes). The civiliste tradition surfaced at an early date in this Court in Morang and Co. v. LeSueur (1911),

Les appelants ntaient pas parties ce contrat, mais je conviens avec mon collgue le juge Gonthier que ses modalits peuvent nanmoins tre pertinentes pour dterminer dans quelle mesure lintim a cd les droits conomiques que lui confre la Loi et dans quelle mesure il en est encore titulaire. Il faut souligner qu.G.I. nest pas partie la prsente instance. Les seuls droits conomiques que lintim peut faire valoir en vertu de la Loi sont ceux quil a conservs. Mme si lon retient, comme je la retiens, linterprtation que mon collgue donne au contrat avec .G.I. selon laquelle lintim (plutt qu.G.I.) a conserv le droit dintenter la prsente action, lintim doit encore tablir que les appelants ont contrevenu au par. 3(1) de la Loi. Par opposition, les droits moraux sont issus de la tradition civiliste. Ils consacrent une conception plus noble et moins mercantile du lien entre un artiste et son uvre. Ils traitent luvre de lartiste comme un prolongement de sa personnalit et lui attribuent une dignit qui mrite dtre protge. Ils mettent laccent sur le droit de lartiste (que celui-ci ne peut cder, mais auquel il peut renoncer en vertu du par. 14.1(2)) de protger pendant la dure des droits conomiques (mme lorsque ceux-ci ont t cds un tiers) lintgrit de luvre et sa paternit (ou lanonymat de lartiste si cest ce quil dsire). La tradition civiliste a surgi trs tt dans la jurisprudence de notre Cour. En effet, dans larrt

15

16

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[2002] 2 R.C.S.
THBERGE c. GALERIE DART

Le juge Binnie

353

V. Expansion of the Economic Right My colleague, Gonthier J., proposes that we should treat the movement of the same physical layer of inks around different substrates as a violation of the respondents s. 3(1) right to produce or reproduce the work . . . in any material form whatever. More specifically, he identifies fixation as an act of reproduction, and therefore fixation of the ink layer to a new substrate as an infringement of copyright, at para. 147:
Fixation of the work in a new medium is therefore the fundamental element of the act of reproduc(ing) . . . in any material form whatever. . . . Reproducing a work therefore consists mainly of the subsequent non-original material fixation of a first original material fixation. [Emphasis in original.]

V. Lexpansion du droit conomique Mon collgue le juge Gonthier affirme que nous devons considrer le transfert de la mme couche dencre sur diffrents supports comme une atteinte au droit confr lintim par le par. 3(1) de produire ou reproduire [. . .] luvre, sous une forme matrielle quelconque . Il qualifie plus particulirement la fixation de reproduction et, par voie de consquence, la fixation de la couche dencre sur un nouveau support datteinte au droit dauteur (au par. 147) :
La fixation un nouveau support matriel constitue donc llment fondamental de lacte de reproduire (. . .) sous une forme matrielle quelconque . [. . .] Reproduire une uvre consiste donc essentiellement en la fixation matrielle ultrieure et non originale dune premire fixation matrielle originale. [Soulign dans loriginal.] 24

Fixation has a relatively well settled but rather different connotation in copyright law. It distinguishes works capable of being copyrighted from general ideas that are the common intellectual property of everyone:
Thus a copyright springs into existence as soon as the work is written down or otherwise recorded in some reasonably permanent form (fixated).

La fixation a un sens relativement bien tabli plutt diffrent en matire de droit dauteur. Cette notion sert distinguer les uvres susceptibles dtre protges par le droit dauteur des ides gnrales qui sont la proprit intellectuelle de tous :
[TRADUCTION] Un droit dauteur prend donc naissance ds que luvre est crite ou autrement atteste sous une forme raisonnablement permanente ( fixe ).

25

(H. Laddie et al., The Modern Law of Copyright and Designs (3rd ed. 2000), vol. 1, at para. 1.2) My colleague proposes that the idea of fixation be carried forward into the physical composition of the work embodying the copyrighted expression, so that substitution of one backing for another constitutes a new reproduction that infringes the copyright holders rights even if the result is not prejudicial to his reputation.

(H. Laddie et autres, The Modern Law of Copyright and Designs (3e d. 2000), vol. 1, par. 1.2) Mon collgue propose que la notion de fixation soit intgre la composition matrielle de luvre qui incorpore lexpression protge par le droit dauteur, de manire ce que la substitution dun support un autre constitue une nouvelle reproduction qui porte atteinte aux droits du titulaire du droit dauteur mme si le rsultat nest pas prjudiciable sa rputation. Dans cette optique, le fait que les appelants nen taient pas leur premier transfert dencre ou quil sagissait dentits commerciales engages dans le march de la revente na aucune importance. Latteinte au droit dauteur survient au
26

On this view, it does not matter that the appellants were multiple offenders at ink transfers or that they were commercial entities participating in the resale market. The copyright infringement occurred at the moment of reproduction in each

27

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354
THBERGE v. GALERIE DART

Binnie J.

[2002] 2 S.C.R.

instance, and would have been similarly objectionable, according to my colleagues approach, if done to a single copy by the individual appellant to hang in his own living-room.

moment de la reproduction et, dans la logique du raisonnement de mon collgue, elle aurait t aussi rprhensible si elle avait t commise par lappelant qui est un particulier, relativement un seul exemplaire quil aurait voulu suspendre dans son salon. mon humble avis, cette interprtation large des droits conomiques dcrits au par. 3(1) fait trop pencher la balance en faveur du titulaire du droit dauteur et ne reconnat pas suffisamment les droits de proprit des appelants sur les affiches quils ont achetes. En retenant cette interprtation largie, on introduirait la notion civiliste de droit de destination sans que la Loi ne le permette, et on estomperait la distinction entre les droits conomiques et les droits moraux que le lgislateur a pourtant impose. Jexaminerai ces questions dans lordre suivant : (i) lquilibre actuel entre lintrt conomique du titulaire du droit dauteur et le droit de proprit du public acheteur serait modifi de faon importante au dtriment du public; (ii) le critre propos drogerait au principe gnral selon lequel il ne saurait y avoir violation du droit dauteur sans reproduction; (iii) il ny a pas eu reproduction dune partie importante de luvre ; (iv) le critre du march imprvu appliqu par la Cour dappel du Qubec outrepasse galement les limites au droit dauteur fixes par la loi; (v) le critre propos estomperait la distinction entre les droits moraux et les droits conomiques, contrairement lintention du lgislateur; (vi) un droit de destination serait introduit dans notre droit sans que la Loi sur le droit dauteur ne le permette; (vii) le critre propos serait contraire la jurisprudence manant dautres ressorts comparables;

28

In my view, with respect, this expansive reading of the s. 3(1) economic rights 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. Adoption of this expanded interpretation would introduce the civiliste conception of droit de destination into our law without any basis in the Copyright Act itself, and blur the distinction between economic and moral rights imposed by Parliament. I will address these issues in the following order: (i) the present balance between the economic interest of the copyright holder and the proprietary interest of the purchasing public would be significantly altered to the publics detriment; (ii) the proposed test would depart from the general principle that breach of copyright requires copying; (iii) there was no reproduction in substantial part; (iv) the Quebec Court of Appeal test of unanticipated market similarly exceeds statutory copyright limits; (v) the proposed test would undermine the distinction between moral rights and economic rights contrary to legislative intent; (vi) a droit de destination would be introduced into our law without any basis in the Copyright Act; (vii) the proposed test would conflict with precedent from other comparable jurisdictions;

29

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Page 1

Indexed as:

Tomas v. Boaden Catering Ltd.

Between John Tomas and Choice Children's Catering Limited, plaintiffs, and Boaden Catering Limited, defendant [1995] F.C.J. No. 1778 [1995] A.C.F. no 1778 115 F.T.R. 236 68 C.P.R. (3d) 275 63 A.C.W.S. (3d) 517 Court File No. T-290-95

Federal Court of Canada - Trial Division Toronto, Ontario Simpson J. Heard: November 20, 1995 Oral judgment: November 20, 1995 Reasons dated: April 19, 1996 (4 pp.) Copyright -- Infringement of copyright -- Nature of infringement of copyright -- Substantial similarity -- Acts not constituting an infringement -- Use of generic words -- Remedies -- Damages. Action for copyright infringement. The parties were both in the business of developing meal menus specifically for children and catering meals at child care facilities. Both parties issued brochures describing their menus and services. The plaintiff alleged that 58 per cent of two pages of the defendant's brochure were copied from two pages of the plaintiff's brochure. The defendant's

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brochure incorporated a theme of multiculturalism which was absent from the plaintiff's brochure. There was a table in the defendant's brochure which appeared to have been substantially copied from a table in the plaintiff's brochure. The defendant added different graphics to its table. HELD: Action allowed to the extent that the table was copied; matter referred for an assessment of damages. The defendant's brochure when considered as a whole did not infringe copyright. The presentation of multicultural menus distinguished the defendant's brochure from the plaintiff's. Most of the impugned common words were generic, and were words one would reasonably expect to use when explaining children's nutritional requirements. The table, however was substantially copied and the defendant's use of graphics did not change that fact. Counsel: Chris Kvas and Nancy Miller, for the plaintiffs. Eugene Gierczak, for the defendant.

1 SIMPSON J. (Reasons for Order, orally):-- The parties are both in the business of developing meal menus which are suitable for young children and catering those meals at day care and nursery facilities. Both parties have brochures which describe their menus and services. In this motion, the applicants (Plaintiffs) allege that the second version of the defendant's brochure (the "D. Brochure") infringes their copyright in their brochure (the "P. Brochure") BACKGROUND 2 This matter was previously before the court on October 24th, 1995. At that time, Joyal J. ordered, on consent, that versions 1 and 1.1 of the D. Brochure infringed the Plaintiffs' copyright. A reference was ordered to assess damages. As matters have developed, a version three of the defendant's brochure is now in use with the Plaintiffs' consent. ANALYSIS 3 The Plaintiffs' first concern is that 58 per cent of the pages four and five in the D. Brochure, were copied from pages two and three of the P. Brochure, and that I should find substantial copying for this reason. 4 I must consider the D. Brochure as a whole; its appearance, its use of graphics, and its principal theme of multiculturalism. It is the presentation of multicultural menus which makes the D Brochure substantially different from the P Brochure. 5 I have concluded that most of the impugned common words are short phrases and titles which

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can be described as "generic". Anyone speaking of small children and their nutritional requirements based on the Canada Food Guide could reasonably use these words. Even though the evidence discloses that much of the D. Brochure was originally copied from the P. Brochure, I find that pages four and five of the D. Brochure no longer infringe. 6 In this context, I adopt the language used by Strayer, J., as he then was, in Overseas Enterprises Ltd. v. Feathers Publishing & Marketing Inc. (1990), 34 CPR (3d) 78 at 81 when he noted that a plaintiff cannot assert a monopoly in words commonly used to describe a subject matter. 7 I turn now to the Plaintiffs' second concern which is Table (a) in the D. Brochure. While an effort has been made to improve it by adding graphics, I still find substantial copying, in that all of the food items and the breakdown of the portions, texture, and samples mirror Table (a) in the P. Brochure. 8 Apart from the degree of copying, I have also concluded that the four other factors described by Richard, J. in U & R Tax Services Ltd. v. H & R Block Canada Inc. (1995), 62 CPR (3d) 257 (F.C.T.D.) apply. I accept that Table (a) in the P. Brochure is an essential part of the plaintiffs' sales effort, even if personal contact is the primary sales method. I should note that there is no issue about copyright or intentional copying. The defendant began its brochure development by giving its advertising company the P. Brochure. Finally, both companies use their brochures for marketing, and they are competitors. 9 Accordingly, an order will go that Table (a) of the D. Brochure infringes the Plaintiffs' copyright. The order will also provide that a reference is to be held to determine what damages, including punitive damages, are to be awarded arising from the infringement in Table (a). This reference is to be heard together with the reference ordered by Joyal, J. qp/s/hbb/DRS/DRS

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Indexed as:

U & R Tax Services Ltd. v. H & R Block Canada Inc.

Between U & R Tax Services Ltd., plaintiff (defendant by counterclaim), and H & R Block Canada Inc., defendant (plaintiff by counterclaim) [1995] F.C.J. No. 962 [1995] A.C.F. no 962 97 F.T.R. 259 62 C.P.R. (3d) 257 56 A.C.W.S. (3d) 396 Action No. T-891-89

Federal Court of Canada - Trial Division Winnipeg, Manitoba and Toronto, Ontario Richard J. Heard: January 23 - 26 and 31, 1995 Judgment: June 20, 1995 (20 pp.) Copyright -- Works subject to copyright -- Original works -- Particular works -- Tax preparation forms -- Ownership -- By authorship -- Where author an employee -- Infringement of copyright -Acts constituting an infringement -- Copying forms - - Remedies -- Damages -- Defences, limitations of actions. This was an action for copyright infringement. The plaintiff tax education and preparation company claimed for damages and also sought a declaration that copyright subsisted in its 1988 tax form. The defendant, also a tax education and preparation company, counterclaimed for damages for copyright

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infringement with regard to one of its own forms. The 1988 form was prepared by the plaintiff in a year in which there were considerable changes to the Income Tax Act. M created the form in consultation with government officials, but had no access to the actual tax form that was released by the government after the form was created for the plaintiff. The defendant gained access to the form by virtue of the fact that one of the plaintiff's employees was married to an employee of the defendant's. The district manager for the plaintiff claimed that he had received a draft of the plaintiff's form but had thought that it was a government form. He could not explain why he had scrutinized the form closely enough to have deleted a reference to a worksheet by the plaintiff in the form but failed to notice that this form did not have a Canadian flag appearing at the top of the first page as all other tax department forms contained. The manager never tried to contact the plaintiff to determine whether the form belonged to it. He admitted copying a portion of this form. Copies of the plaintiff's draft were used by the defendant at various instructors' meetings and were used to prepare the defendant's instructors to teach the 1988 tax changes to their students. This form was used until the official Revenue Canada form became available approximately five months later. HELD: The action was allowed and the counterclaim was dismissed. The plaintiff was entitled to a declaration that copyright subsisted in the form, that it was the owner of the form and that the defendant infringed its copyright. The plaintiff was awarded $145,010 as damages for infringement. The creation of the imputed form involved labour, skill and judgment. The work was an original literary work within the meaning of the Copyright Act. As the form was authored by persons employed by the plaintiff, the plaintiff was the owner of the copyright in the work. The defendant infringed the plaintiff's copyright in the form by copying a substantial portion of it and using it for a period of time. The material taken was for the same purpose as the plaintiff created it for. The plaintiff also proved that the defendant had access to its form. The defendant's claim that the form was a useful article and thus not subject to copyright was not accepted by the court as the paper on which the form was written was merely serving as a carrier for the matter and was not functional in and of itself. The court accepted the damages asserted by the plaintiff as correct. They involved the revenue that the plaintiff would have realized if the defendant would have purchased its training courses for 831 students, minus the expense of providing these materials. The claim for damages for lost employee revenues and lost royalties was speculative. There was no award for conversion as such an award would have duplicated the damages awarded for the infringing copies. This was not a proper case for punitive damages as the action was not brought against individual persons. The corporate defendant ceased using the form prior to the action and thus there was not evidence that damages were required to deter future infringement. There was no malice. The counterclaim was statute barred as the form the defendant claimed copyright in was allegedly copied in 1984 and the counterclaim was brought in 1989 well beyond the three-year limitation period prescribed for such an action. As well, the defendant failed to establish that it created the form or that the plaintiff copied it. Statutes, Regulations and Rules Cited: Act to amend the Income Tax Act, S.C. 1988, c. 55.

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Copyright Act, R.S.C. 1985, c. C-42, ss. 2, 3(1), 5(1), 27, 34(1), 34(3), 35, 38, 53(2), 64, 64.1. Federal Court Act, ss. 36, 37. Federal Court Rules, Rules 324, 344(7). Income Tax Act, S.C. 1970-71-72, c. 63. Judgment Interest and Discount Act, S.M. 1986-87 c. 39. Counsel: Neil Belmore and Kelly Gill, for the plaintiff. David Allsebrook and Kevin D. Lee, for the defendant.

1 RICHARD J.:-- This is an action for copyright infringement in which the plaintiff (U&R) claims general damages, damages for conversion, punitive damages, and the costs of this action on a solicitor and its own client basis. In addition, the plaintiff asks for a declaration that copyright subsists in the work entitled "The U&R 1988 T1 General Draft Form" and that the plaintiff is the owner of the copyright in that literary work. The action was commenced by the filing of a statement of claim on April 27, 1989. The statement of claim was amended on April 23, 1993, and further amended on December 5, 1994. 2 The defendant's (H&R) re-amended statement of defence and counterclaim is dated January 13, 1995. In it, the defendant denies that copyright subsists in the literary work claimed by the plaintiff or that it has infringed such work, and counterclaims for damages for copyright infringement by the plaintiff (defendant by counterclaim) of a form T1-31 in which the defendant (plaintiff by counterclaim) claims that copyright subsists. Background 3 U&R is a Canadian company involved in the business of income tax education and preparation. H&R is a multinational company and industry leader in the same field. Both businesses consist of providing income tax education, preparation and discounting services. U&R was the largest competitor of the defendant, but a distant second, having approximately 100 offices to H&R's 878 offices, and only 35% of the defendant's market share in 1988. 4 In 1988, H&R's corporate structure was headed by a Vice-President, Canada. Below him were three regional directors. The Western Regional Director was Gary Douglas. Twenty-one district managers reported to Mr. Douglas, including the two Winnipeg district managers, David Grant (Winnipeg District 1) and Jill Parker (Winnipeg District 2). 5 The literary work in which copyright is claimed by U&R is described as the "U&R 1988 T1

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reproduce the work or any substantial part thereof in any material form whatever, to perform, or in the case of a lecture to deliver, the work or any substantial part thereof in public or, if the work is unpublished, to publish the work or any substantial part thereof... Under section 27 of the Copyright Act, copyright is deemed to be infringed by any person who, without the copyright owner's consent, inter alia, does anything that the Act gives the owner the sole right to do: 27(1) Copyright in a work shall be deemed to be infringed by any person who, without the consent of the owner of the copyright, does anything that, by this Act, only the owner of the copyright has the right to do. 35 In order to find copyright infringement, a plaintiff must prove copying of the work or a substantial part thereof and access to the copyright protected work. In this instance, the defendant has admitted to copying a portion of U&R's form and the enquiry is therefore directed to whether the copying was "substantial" within the meaning given to that the term by the courts: "[w]hat constitutes a "substantial part" is a question of fact and, in this respect, the courts have given more emphasis on the quality of what was taken from the original work rather than the quantity."11 Some of the matters that have been considered by Courts in the past include: (a) the quality and quantity of the material taken; (b) the extent to which the defendant's use adversely affects the plaintiff's activities and diminishes the value of the plaintiff's copyright; (c) whether the material taken is the proper subject-matter of a copyright; (d) whether the defendant intentionally appropriated the plaintiff's work to save time and effort; and (e) whether the material taken is used in the same or a similar fashion as the plaintiff's.

36 In my view, H&R copied a substantial portion of U&R's form. The form they used for at least four months was U&R's form with only a very minor deletion and the addition of the H&R Block Logo. Also, the material taken was used for the same purpose that U&R created it for, to teach the new tax changes. 37 In addition to copying, a plaintiff must prove access to the copied work for there to be infringement. Hughes Richard explains the nature of the inquiry required as follows: A striking similarity between two works, alone, is insufficient to prove plagiarism. While it is recognized that copyright infringement may result from unconscious copying, there must be evidence of access to the copied work or a connection between the two works for a court to find that infringement has occurred. Evidence of access alone will not suffice; evidence of copying of a substantial part of a protected work also has to be proved.

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All England Law Reports/1945/Volume 1 /Vigneux and Others v Canadian Performing Right Society Ltd - [1945] 1 All ER 432 [1945] 1 All ER 432 Vigneux and Others v Canadian Performing Right Society Ltd

PRIVY COUNCIL VISCOUNT MAUGHAM, LORD RUSSELL OF KILLOWEN, LORD MACMILLAN, LORD PORTER AND LORD SIMONDS

18 JANUARY 1945 Privy Council - Canada - Copyright - Musical work - Gramophone performance in restaurant Radio or gramophone performance in "place other than a theatre" - Owners or users exempted from payment of fees - Canadian Copyright Act, 1921 (RSC, 1927, c 32) - Canadian Copyright Amendment Act, 1931 (c 8), s 10, 10A, 10B (1), (6) (a), (7), (8), (9), (as amended by c 28 of 1936, s 2, and c 27 of 1938, s 4). Vigneux were the owners of a business which installed and provided service for electrically operated gramophones which, on the insertion of a coin, performed musical selections from one or other of the records placed in it. Raes, the owners of a restaurant, hired one of these gramophones from Vigneux for a payment of $10 a week. The gramophone might be operated by anyone and was mainly used by the patrons of the restaurant. In May, 1941, a customer in the restaurant inserted a 5 cent coin with the result that a musical composition called Star Dust was played on the gramophone. Among the listeners was a representative of the respondent society, who owned the copyright in Star Dust. The society brought an action against Vigneux and Raes alleging that they had infringed the society's copyright in Star Dust. By an amendment made in 1938 to the Canadian Copyright Act, 1931, it was provided, by sect 10B(6)(a), that, from June, 1938, in respect of public performances by means of radio set or gramophone in any place other than a theatre (as defined) no fees, charges or royalties should be collectable from the owner or user of the radio receiving set or gramophone, but the Copyright Appeal Board should, so far as possible, provide for the collection in advance from radio broadcasting stations or gramphone manufacturers of fees, etc, appropriate to the new conditions produced by the provisions of the subsection and should fix the amount. No amount had, however, been fixed by the Board with regard to payments by gramophone manufacturers. Vigneux and Raes contended that the at 433

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effect of subsect (6)(a) was to allow a person to give a public performance by means of a radio receiving set or gramophone in the specified circumstances without paying for the right to do so, and, therefore, the playing of Star Dust in the restaurant was not an infringement of copyright. The society contended that the subsection merely provided that, in future, it was the broadcasting stations or gramophone manufacturers and not the persons giving public performances by means of radio receiving sets or gramophones, in the specified circumstances, who had to be licensed in order that such a performance might not be an infringement of copyright, and, therefore, since the manufacturer of the gramophone in question had made no payment, the performance of Star Dust was an infringement of copyright by Vigneux and Raes. The Supreme Court of Canada, in dismissing the appeal of Vigneux and Raes, agreed with the decision of the Exchequer Court that Vigneux and Raes were not within the class protected by subsect (6)(a) because they were virtually partners in a venture of publicly performing musical works for profit:-Held - (i) upon the true construction of subsect (6)(a), the exoneration of owners or users of receiving sets and gramophones from all payments in respect of performances of musical compositions by means of those instruments in the specified circumstances was absolute and unqualified; the statutory right to perform was in no way conditional upon payment of the charges payable, under the subsection, by broadcasting stations or gramophone manufacturers. Such a public performance was, therefore, a lawful act and no infringement of copyright. (ii) there was no foundation for the view that Vigneux and Raes were virtually partners in a distinct class of business. Raes hired a machine to attract custom to their restaurant and Vigneux merely supplied the machine in the ordinary course of their business at a fixed rental. (iii) Raes, as users of the gramophone, were protected by the provisions of the subsection. Vigneux, although legally the owners of the gramophone, did not require to claim the protection of the subsection, since they neither gave the performance of Star Dust nor authorised it. Decision of the Supreme Court of Canada ([1943] SCR 348) reversed.
Notes

The purpose of the Canadian copyright legislation of 1938 was to protect purchasers of gramophone records and possessors of radio sets, in view of decisions on public performances, such as Canadian Performing Right Society v Ford Hotel ([1935] 2 DLR 391; Digest Supp). Lyman Duff CJ accordingly held in the Supreme Court (dissenting from Rinfret, Kerwin and Taschereau JJ on this point) that the Act gives such persons an unqualified statutory right to perform, independently of whether fees have been fixed by the copyright Appeal Board. The Privy Council agree with the Chief Justice on this point, and reverse the Supreme Court on the ground that the parties were not,

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as there decided, carrying on a partnership for the public performance of copyright musical works disqualifying them from the statutory protection. As to Copyright in Musical Works, see Halsbury, Hailsham Edn, Vol 7, pp 543-545, paras 847-851; and for Cases, see Digest, Vol 13, p 187, Nos 223-226. As to Copyright in Dominions, see Halsbury, Hailsham Edn, Vol 7, pp 529-532, paras 832, 833; and for Cases, see Digest, Vol 13, pp 162, 163, and Supplement, Copyright.
Appeal,

Appeal, by special leave, from a judgment of the Supreme Court of Canada (Duff CJ Rinfret, Davis, Kerwin and Taschereau JJ), dated 4 May 1943, and affirming, with a variation, a judgment of the Exchequer Court of Canada (Maclean P), which had granted an injunction against the appellants in respect of the public performance of a musical composition on the ground that the appellants would thereby infringe the respondent's copyright. The facts and the relevant sections of the Canadian Copyright Amendment Acts are fully set out in the judgment of the Board delivered by Lord Russell Of Killowen. Samuel Rogers KC (of the Canadian Bar) and Frank Gahan for the appellants. Charles Harman KC and G H Lloyd-Jacob for the respondent. 18 January 1945. The following judgment was delivered.

LORD RUSSELL OF KILLOWEN. This appeal, by special leave, from the Supreme Court of Canada, raises a difficult question under the Canadian copyright legislation. The Supreme Court affirmed a decision in favour of the present respondent which had been pronounced by the Exchequer Court, although at 434 as will hereafter appear the reasons for such affirmation were not unanimous. The present respondent (hereinafter referred to as the society) is a company incorporated under the laws of the Dominion. It carries on in Canada the business of acquiring copyrights in dramatico-musical and musical works or performing rights therein, and deals with or in the issue or grant of licenses for the performance in Canada of such works. It owns the copyright in a musical

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gramophones from uncertainties, only add to their doubts and perplexity. The exoneration of owners or users of receiving sets and gramophones from all payments in respect of public performances of musical compositions by means of those instruments in the specified circumstance, is absolute, unqualified and unconditional, and in their Lordships' opinion must necessarily carry with it the consequence that, as from the date of the coming into operation of the subsection, such a public performance was a lawful act and no infringement of copyright. Rinfret J appeared to read the subsection as if it merely shifted the fees payable from the owners or users of the instruments to the broadcasting stations and the makers of gramophones. He even alluded to the fact that in this case no fees "had been paid by the appellants or for them." He seemed to their Lordships to give insufficient weight to the actual wording of the subsection, which starts off with a complete exoneration from any payment of the owners or users of the instruments which give the public performance and gives by way of compensation to the owners of the right of performance a different payment, viz, an amount to be fixed by the Board and to be paid by the broadcasting stations or gramophone makers. So far their Lordships have construed the subsection as entitling those persons who are within its scope to give public performances by means of any radio receiving set or gramophone in any place other than a theatre as defined without paying anything for the right to do so, and without thereby infringing copyright. It remains to consider whether the Raes and Vigneux or either and which of them come within the provisions of the subsection. In their Lordships' opinion at 439 Raes do, as being the users of the gramophone by means of which a public performance of Star Dust was given in a place other than a theatre as defined. From another point of view it may be said that the customer, who is no party to these proceedings, was the user. But the point is immaterial, since their Lordships feel no doubt that Raes, who hired the instrument and had it placed in their restaurant in order to attract customers, who enjoyed a combination of food and music, used the instrument as a means whereby public performances of Star Dust and other musical compositions were given. In regard to Vigneux, no doubt in law they are the owners of the gramophone. As such they might, if necessary, claim to be protected by the section. But in their case no such claim is necessary, because, as their Lordships think, they neither gave the public performance of Star Dust, nor did they authorise it. They had no control over the use of the machine; they had no voice as to whether at any particular time it was to be available to the restaurant customers or not. The only part which they played in the matter was, in the ordinary course of their business, to hire out to Raes one of their machines and supply it with records, at a weekly rental of $10. Their Lordships are unable to accept the view of MacLean P (accepted by Sir Lyman Duff CJ and Davis J) that Raes and Vigneux were carrying on:
'... a distinct class of business, a venture of publicly performing musical works purely for profit.'

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They can see no foundation on which such a view can be based. As stated above, Raes hired a machine which they thought would attract custom to their restaurant. Vigneux supplied the machine in the ordinary course of their business at a fixed rental; they had no interest beyond that. To hold, on those materials, that "they are virtually partners in a distinct class of business," and to decide the case on that ground, cannot, in their Lordships' opinion, be justified. Some subsidiary points must be referred to. Counsel for the society pointed to the provision in the Copyright Act and the amending Acts which enacted in specific terms that certain acts should not constitute infringement, the Act of 1938 itself containing one such provision, and argued that if subsect (6)(a) bore the meaning for which the appellants contended, one would expect to find a provision to the effect that the public performances contemplated by the subsection should not constitute infringement. While at first sight there is force in this argument, it loses it when one realises that on the society's construction of the subsection, inasmuch as the Appeal Board has fixed an amount to be paid by broadcasting stations, a public performance by means of a receiving set in a place other than a theatre as defined would not be an infringement. Nevertheless no specific provision to that effect is to be found. It was also contended that it was necessary to find express or clear words depriving the society of rights, and that the wording of the subsection was not sufficiently clear for that purpose. Their Lordships agree with Sir Lyman Duff CJ that the words are clear; and they would also point out that the subsection provides (by way of compensation) for the payment of an appropriate sum payable "in advance" which apparently means in advance of any public performance, and, therefore, payable whether or not a public performance does in fact take place. Finally it was suggested that there was nothing in the legislation to deprive the society of its rights to an injunction, which was the only relief claimed in the action. If, however, the public performance here in question was made a lawful act by the subsection, and no infringement, the claim to an injunction necessarily fails. For the reasons indicated, their Lordships are of opinion that this appeal should succeed, the orders of the Supreme Court and the Exchequer Court should be discharged, and an order made dismissing the action with costs in both courts, and they will humbly advise His Majesty accordingly. The respondent must pay the costs of the appeal to His Majesty in Council. Appeal allowed with costs. Solicitors: Charles Russell & Co (for the appellants); Syrett & Sons (for the respondents). Hubert B Figg Esq Barrister.

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Case Name:

Wall v. Horn Abbot Ltd.

Between David H. Wall, Plaintiff, and Horn Abbot Ltd., 679927 Ontario Limited (formerly Horn Abbot Productions Limited), Christopher Haney, Charles Scott Abbott, John Haney and Edward Martin Werner, Defendants [2007] N.S.J. No. 280 2007 NSSC 197 256 N.S.R. (2d) 34 158 A.C.W.S. (3d) 650 Docket: S.N. No. 101331

Nova Scotia Supreme Court Halifax, Nova Scotia D. MacAdam J. Heard: May 23-25, June 5-8, 12-15, 19-22, July 4-7, 10-12, 19, 24, 25, 31, August 1, 8-10, 14-17, 21-24, 28-30, October 30, November 30 and December 1, 2006; January 5 and 6, 2007; written submissions, February 7, 2007. Judgment: June 22, 2007. (617 paras.) Limitation of actions -- Non-statutory limitation periods -- Laches -- The plaintiff's action for damages for having allegedly misappropriated the idea for the board game Trivial Pursuit was dismissed -- The plaintiff's claims in breach of fiduciary duty, breach of copyright and breach of confidence were not dismissed on the basis of laches, however, the plaintiff had failed to establish his claims on the balance of probabilities.

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Limitation of actions -- Jurisdiction -- Nova Scotia -- The plaintiff's action for damages for having allegedly misappropriated the idea for the board game Trivial Pursuit was dismissed -- The plaintiff's claims in breach of contract, conversion, theft, fraud and deceit were dismissed, as the limitation period commenced to run when the plaintiff became aware that the defendants had produced and marketed the board game in 1983, meaning the limitation period relevant to those claims had expired. Limitation of actions -- Topics -- Torts -- The plaintiff's action for damages for having allegedly misappropriated the idea for the board game Trivial Pursuit was dismissed -- The plaintiff's claims in breach of contract, conversion, theft, fraud and deceit were dismissed, as the limitation period commenced to run when the plaintiff became aware that the defendants had produced and marketed the board game in 1983, meaning the limitation period relevant to those claims had expired. Tort law -- Interference with economic relations -- Breach of fiduciary obligation -- The plaintiff's action for damages for having allegedly misappropriated the idea for the board game Trivial Pursuit was dismissed -- The plaintiff failed to establish his claims for breach of confidence or breach of fiduciary obligation on the balance of probabilities. The plaintiff alleged that some 15 years ago he and a friend were picked up by the individual defendant as hitchhikers, during which time the plaintiff disclosed to the dfendant his idea for a board game based on trivia -- The plaintiff claimed that the defendants had taken his idea, and produced it and marketed it for themselves under the name "Trivial Pursuit" -- The issues before the court included whether or not the alleged hitchhiking encounter had ever occurred, whether limitations defences or a defence of laches applied, and whether the plaintiff had a cause of action -HELD: The action was dismissed -- The statutory period did not begin to run until the plaintiff was aware that the defendants had brought the game to market -- Although he had every reason to conclude that Haney was cutting him out, and going ahead with his friends, it was not until the game was produced and marketed to his exclusion that the full extent of his action was evident -Therefore the limitation period only commenced to run from the date the plaintiff returned to Nova Scotia, in late 1982 or early 1983 -- Consequently, the causes of action for which there was a statutory limitation period were dismissed, including the causes of action in contract and conversion, theft, fraud and deceit -- However, the court was not persuaded that the circumstances warranted the dismissal of the plaintiff's equitable causes of action on the basis of laches, or the application of statutory limitation periods by analogy -- The claims for breach of fiduciary duty, breach of confidence, and the claims for copyright infringement were thus not dismissed on the basis of laches -- However, the court was not satisfied on a balance of probabilities as to what, if anything was capable of copyright registration in Canada; ideas could not be the subject of copyright -- It was clear in the circumstances that there was no fiduciary relationship and thus the claim for breach of fiduciary duty was dismissed -- The necessary elements of equitable and/or legal fraud and deceit had not been established by the plaintiff -- Finally, the plaintiff's strongest claim was that of breach of confidence, yet even so, on the basis of all the evidence, the plaintiff had not

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met the onus or burden of proving his claim. Statutes, Regulations and Rules Cited: Copyright Act, R.S.C. 1985, c. C-42, s. 41 Industrial Design Act, s. 7(3) Limitation of Actions Act, R.S.N.S. 1989, c. 25, s. 2(1) Limitations Act, R.S.O. 1980, c. L-15, s. 3 Court Summary: Contract -- Fiduciary duty -- Breach of confidence -- Limitations and laches -- Copyright -Credibility -- Burden of proof. The plaintiff says that in November 1979, while hitchhiking with a friend, he was picked up by the individual defendant, Christopher Haney and, during the subsequent drive and on reaching his destination, he disclosed to Haney his idea for a board game based on trivia. The plaintiff says the ensuing discussion resulted in the "virtual creation" of the popular board game "Trivial Pursuit". The plaintiff alleges the defendants then took his idea, including the game as developed in Mr. Haney's car, and produced and marketed it for themselves. Issues of remedy and damages, were reserved for a separate hearing, if required pursuant to a Court Order of Chief Justice Kennedy, dated August 17, 1998. Issue: Whether the hitchhiking encounter with Haney occurred; whether, because of the lapse of 15 years before the plaintiff commenced this proceeding, defences of limitations and/or laches apply; whether the version of the encounter as testified to by the plaintiff, would provide him with a cause of action. Result: The limitation defences in respect to the causes of action founded in contract and conversion were allowed on the basis that the maximum period for commencing such actions were the statutorily prescribed six years, with a discretion to extend the period for a maximum of four more years. The running of the limitation period was triggered when in 1983, or possibly 1984 the plaintiff, knowing the defendants had brought the game "Trivial Pursuit" to market, returned from British Columbia to Nova Scotia for a brief visit. The defence of laches and limitation by analogy did not apply to the equitable causes of action, namely Breach of Fiduciary Duty and Breach of Confidence. The claim pursuant to the Copyright Act, R.S.C. 1985, c. C-42, was limitation restricted to claims arising within three years preceding the commencing of the proceeding. Also held, however, that in the circumstances, there was no claim under the Copyright Act since "ideas" cannot be the subject of copyright, and the extent of the expression of the ideas on paper, as recalled by the plaintiff, was insufficient to maintain a copyright claim. A claim for a Declaration

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that intellectual property and trade mark registrations were held by the defendants in trust for the plaintiff were matters of "Remedy and Damages", and therefore for determination in the event such a hearing is necessary. There was no breach of fiduciary duty since the prerequisites for such a duty did not exist. There was not the necessary relationship between the plaintiff and the defendant, Haney, as to create such a duty. The claim of breach of confidence was, on the version of the encounter suggested by the plaintiff, established. The plaintiff said he disclosed the idea and discussed how it would be the basis of a board game on the understanding that Haney agreed it was the plaintiff's idea and he would not take it from him. The onus or burden of proof was on the plaintiff to establish his claim on a "balance of probabilities". In view of the many "inconsistencies and contradictions" both within the plaintiff's own evidence when compared to his discovery and affidavits he filed in Court, and compared with the evidence of other witnesses, including witnesses called by the plaintiff as well as persons he had identified previously as having knowledge, but who were to be called as witnesses by the defendants, it was held the plaintiff had not satisfied the onus or burden of proof. Judgment for the defendants. [Note: This summary does not form part of the Court's judgment. Quotations must be from the judgment, not this summary.] Counsel: Kevin A. MacDonald, for the Plaintiff. John C. Cotter, for the Corporate Defendants. William L. Ryan, Q.C., and Christa M. Hellstrom for the Individual Defendants.

INDEX

Paragraph No.

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right. It simply extinguishes the cause of action to legally pursue a remedy for a breach of that right; (2) expiration of limitation period of three years on an initial copyright infringement does not preclude action on ongoing and subsequent infringements (Morton, supra); and (3) the limitation period does not run in instances of fraud (Morton, supra). 455 The plaintiff therefore claims that although the Copyright Act would bar any recovery (in the absence of fraud) for infringements prior to November 14th, 1991 (three years prior to the commencement of the action), infringements since that time are actionable. Every reproduction of the pie-shaped board or marker, or use of the name, or any derivative flowing from any of these, constitutes a breach of Wall's common law copyright. 456 Plaintiff's counsel would appear to be incorrect, at least in respect to his assertion "the expiration of the limitation period, being procedural". On the other hand, defence counsel do not appear to take issue with his assertion that infringements within three years of the commencement of this proceeding would not be statute barred. D. Conclusion on Limitations and Laches 457 It is not until the plaintiff was aware the defendants had brought the game to market, that the statutory period begins to run. Until then, the plaintiff from the January 1981 call was only aware that Haney was looking to breach his agreement, not that he had yet done so. Wall says, Haney was authorized by him to contact persons in Montreal with the obvious purpose of advancing their common goal of producing and marketing the game. 458 Although he had every reason to conclude that Haney was cutting him out, and going ahead with his friends, it is not until the game was produced and marketed, to the exclusion of Wall, that the full extent of his cause of action is evident. This occurred when Wall realized his idea has been brought to fruition, which, on his evidence, occurred while he was in British Columbia. However, in view of the legal disability cause by his then absence from Nova Scotia, the limitation period only commences to run from the date he returned, namely late 1982 or early 1983. 459 The causes of action for which there is a statutory limitation period, and where any statutory extension period has expired, are consequently dismissed. Included in this dismissal are the causes of action on contract and conversion, and to the extent advanced as causes of action, this for theft, fraud and deceit. There is nothing in the submissions of the Plaintiff that provides a legal basis for any discretionary relief from the statutorily mandated limitation periods. To the extent the Plaintiff suggests conduct amounting to concealed fraud extends any limitation period or bars the running of any limitation period, regardless of the merits of such a legal assertion, the facts and conduct of the defendants were sufficiently known to the Plaintiff more than 10 years prior to his initiating this proceeding, and therefore, more than the statutory six year limitation period and the maximum four year extension permitted under the Limitations Act. 460 In respect to the remaining causes of action, the defendants assert an entitlement to a

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Case Name:

Warman v. Fournier
Between Richard Warman and National Post Company, Applicants, and Mark Fournier and Constance Fournier, Respondents [2012] F.C.J. No. 851 [2012] A.C.F. no 851 2012 FC 803 414 F.T.R. 249 104 C.P.R. (4th) 21 2012 CarswellNat 2545 Docket T-784-11

Federal Court Ottawa, Ontario Rennie J. Heard: May 28, 2012. Judgment: June 21, 2012. (42 paras.) Intellectual property law (Copyright) -- Copyright -- Protected subject matter -- Artistic works -Photographs -- Literary works -- Defences to Infringement -- Statutory Defences -- Consent of copyright owner -- Procedure -- Limitation periods -- Application by Warman for order that Fourniers infringed his copyright in three works by posting on website dismissed -- Warman knew about Fourniers' infringement of one work since September 2007 but did not bring this proceeding within limitation period prescribed by section 41(1) of Copyright Act -- Fourniers did not reproduce substantial part of second work, so there was no infringement -- Warman authorized any communication of third work by posting it on his own website.

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Information technology -- Internet -- Hypertext links -- Web sites -- Application by Warman for order that Fourniers infringed his copyright in three works by posting on website dismissed -Warman knew about Fourniers' infringement of one work since September 2007 but did not bring this proceeding within limitation period prescribed by section 41(1) of Copyright Act -- Fourniers did not reproduce substantial part of second work, so there was no infringement -- Warman authorized any communication of third work by posting it on his own website. Information technology -- Intellectual property -- Copyright -- Infringement -- Defences -- Consent of copyright owner -- Fair dealing -- No substantial taking -- Statutory defences or exceptions -Application by Warman for order that Fourniers infringed his copyright in three works by posting on website dismissed -- Warman knew about Fourniers' infringement of one work since September 2007 but did not bring this proceeding within limitation period prescribed by section 41(1) of Copyright Act -- Fourniers did not reproduce substantial part of second work, so there was no infringement -- Warman authorized any communication of third work by posting it on his own website. Application by Warman for an order that the Fourniers infringed his copyright in three works. The first was a speech authored by Warman in July 2005, titled, "Maximum Disruption: Stopping Neo-Nazis By (Almost) Any Means Necessary" (Warman Work). Warman registered his copyright in the Warman Work on February 18, 2011. The second work was an article authored by Jonathan Kay while he was employed by the National Post, titled "Jonathan Kay on Richard Warman and Canada's Phony-Racism Industry" (Kay Work). Warman obtained an exclusive license to the copyright in the Kay Work through an agreement with National Post on January 13, 2010. Warman registered his copyright in the Kay Work on March 10, 2011. The third work was a photograph of Warman and another individual, taken by Barrera (Barrera Work). Warman obtained the copyright in the Barrera Work by assignment on August 11, 2010, and registered his copyright on February 18, 2011. The Fourniers operated the website www.freedominion.com (Free Dominion). They described Free Dominion as an online political news discussion forum. Warman claimed that he first discovered the Warman Work had been reproduced on Free Dominion in September 2007. The Fourniers acknowledged that a copy of the Warman Work was uploaded onto the Free Dominion server at that time. They stated that it was a scanned copy of an exhibit in a Canadian Human Rights Tribunal case. Warman discovered in April 2010 that the Kay Work had been reproduced on Free Dominion. The Fourniers state that the Kay Work was posted in a discussion thread on Free Dominion on January 10, 2008. Warman claimed that he discovered that the Barrera Work had been reproduced on Free Dominion in August 2010, and that the Warman Work also continued to be reproduced at that time. The Fourniers stated that the Barrera Work was never uploaded onto the server for Free Dominion, but a member posted an inline link to the Barrera Work as it appeared on Warman's personal website on May 27, 2010. The Fourniers state that the Barrera Work was no longer displayed on Warman's website and therefore the inline link no longer worked, as of June 7, 2011.

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HELD: Application dismissed. There was no dispute that copyright subsisted in the Warman Work, or that Warman was the owner of the copyright as the author. However, Warman was precluded from obtaining any remedy for the infringement pursuant to section 41(1) of the Copyright Act. Warman acknowledged that he knew about the Fourniers' infringement of the Warman Work since September 2007. Thus, he did not bring this proceeding within the limitation period prescribed by section 41(1) of the Copyright Act and therefore he was time-barred from raising copyright infringement in respect of that work. The Fourniers did not reproduce a substantial part of the Kay Work, and therefore there was no infringement. Quantitatively, the reproduction constituted less than half of the work. The Kay Work itself consisted of a headline and 11 paragraphs. The reproduction on Free Dominion included the headline, three complete paragraphs and part of a fourth. Qualitatively, the portions reproduced were the opening "hook" of the article, and the summary of the facts on which the article was based. Most of the commentary and original thought expressed by the author was not reproduced. Even if the reproduced portions of the Kay Work amounted to a substantial part, the Fourniers' reproduction constituted fair dealing for the purposes of news reporting, pursuant to section 29.2 of the Copyright Act. The application in respect of the Barrera Work failed because Warman authorized any communication of the Barrera Work by telecommunication. The Barrera Work was posted on Warman's personal website and thus the communication of the Barrera Work occurred by creating a hyperlink to Warman's own website. Thus, Warman authorized communication of the Barrera Work by posting it on his website. Therefore, there was no infringement. Statutes, Regulations and Rules Cited: Copyright Act, R.S.C. 1985, c. C-42, s. 3, s. 27, s. 29.2, s. 41(1) Counsel: James Katz, for the Applicant, Richard Warman. Mark Fournier, Constance Fournier, the Respondents.

[Editor's note: Amended reasons were released by the Court on . The changes were not indicated. This document contains the amended text.]

REASONS FOR JUDGMENT AND JUDGMENT 1 RENNIE J.:-- The applicant alleges infringement by the respondents of his copyright in three works, and seeks several remedies in respect of that alleged infringement. For the reasons that follow the application is dismissed in respect of all three works. Facts

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19 The only cases cited in that decision date back to the 1920s. I would note that recent cases of this Court and other courts, including those in which an injunction was sought, have applied the limitation period and denied any remedy. No exception was made for injunctive relief: Drolet v Stiftung Gralsbotschaft, 2009 FC 17; Smith v Hayden, 2010 ONCA 271. It is unclear whether the parties in those cases argued that injunctive relief was available outside the limitation period. 20 In my view, even if section 41(1) does not preclude the granting of injunctive relief, it at the very least informs the exercise of the Court's discretion to grant an injunction for copyright infringement. It would be contrary to Parliament's intent to find that an injunction is presumptively available for an infringement if the application is brought outside the limitation period. It is more consistent with the Copyright Act for the Court to limit the exercise of its discretion to grant an injunction to circumstances where it will have some practical effect and the balance of convenience strongly favours granting the injunction. The Supreme Court of Canada (SCC) confirmed in CCH Canadian Ltd. v Law Society of Upper Canada, 2004 SCC 13, at para 85, that an injunction is an equitable remedy and thus within the Court's discretion. 21 In this case, the applicant has not shown that an injunction is necessary to prevent further infringement; rather, the evidence is that the respondents have removed the Warman Work from their server and the physical copies they retain are for the purposes of defending the defamation action brought against them by the applicant. Thus, I decline to exercise my discretion to grant an injunction in respect of the Warman Work and this aspect of the application is dismissed. Kay Work 22 The applicant obtained an exclusive license to the copyright in the Kay Work on January 13, 2010, and therefore is able to sue a third party for infringement: Euro Excellence v. Kraft Canada Inc., 2007 SCC 37, at para 31. Once again, the respondent does not dispute that copyright subsists in the Kay Work or that the applicant is entitled to bring an application for infringement. The respondents argue the application is also time-barred in respect of the Kay Work; however, the applicant did not obtain license to the copyright until 2010, and therefore could not have become aware of infringement of his copyright until that time. No Reproduction of a Substantial Part 23 The applicant submits that the respondents infringed his copyright in the Kay Work by reproducing excerpts from it. He argues that the reproduced excerpts constitute a substantial part of the Kay Work, contrary to sections 3 and 27 of the Copyright Act. Whether a substantial part of a work has been reproduced is a question of fact and involves a qualitative rather than quantitative analysis. The relevant factors to be considered include: a. b. the quality and quantity of the material taken; the extent to which the respondent's use adversely affects the applicant's activities and diminishes the value of the applicant's copyright;

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c. d. e.

whether the material taken is the proper subject-matter of a copyright; whether the respondent intentionally appropriated the applicant's work to save time and effort; and whether the material taken is used in the same or a similar fashion as the applicant's: U & R Tax Services Ltd v H & R Block Canada Inc, [1995] FCJ No 962, at para 35.

24 Applying those factors to this case, I find that the respondents did not reproduce a substantial part of the Kay Work, and therefore there is no infringement. 25 Quantitatively, the reproduction constitutes less than half of the work. The Kay Work itself consists of a headline and eleven paragraphs. The reproduction on Free Dominion included the headline, three complete paragraphs and part of a fourth. Qualitatively, the portions reproduced are the opening "hook" of the article, and the summary of the facts on which the article was based. Most of the commentary and original thought expressed by the author is not reproduced. 26 Most of the other factors are not directly relevant in this case given the circumstances in which the applicant obtained the copyright: he does not appear to "use" the subject matter of the copyright in the sense of reproducing or publishing the Kay Work. It is a highly critical article about the applicant and it appears he sought the exclusive license to the Kay Work in order to prevent its further publication. 27 It does not appear that the excerpts of the Kay Work were reproduced to "save time and effort". Based on the context of the posting, the respondents reproduced portions of the Kay Work to preserve a record of the facts summarized in the article, so that members of Free Dominion could continue to discuss those facts on the forum. Also, contrary to the applicant's argument, the reproduction does include a summary or paraphrase of part of the work, specifically the second paragraph. 28 Thus, considering the matter as a whole, I find as a fact that the applicant has not established that the excerpts of the Kay Work reproduced by the respondent constitute a "substantial part" of the work, and there is therefore no infringement. Fair Dealing for the Purposes of News Reporting 29 In the alternative, even if the reproduced portions of the Kay Work amount to a substantial part, I find that the respondents' reproduction constitutes fair dealing for the purposes of news reporting, pursuant to section 29.2 of the Copyright Act. 30 The SCC's decision in CCH sets out important guiding principles in applying the fair dealing exception. The SCC emphasized at paragraph 48 that fair dealing is best understood as an integral part of the copyright regime and as a user's right, rather than a defence. In order to avail themselves of the exception the respondents must establish first, that the dealing was for one of the purposes

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ICLR: Chancery Division/1969/Volume 1/WARWICK FILM PRODUCTIONS LTD. v. EISINGER AND OTHERS - [1969] 1 Ch. 508 [1969] 1 Ch. 508

[CHANCERY DIVISION] WARWICK FILM PRODUCTIONS LTD. v. EISINGER AND OTHERS

1967 June 13, 14, 15, 16, 19, 20, 21, 22, 23, 26, 27, 28, 29, 30; July 3, 4, 5, 31

PLOWMAN J. Copyright - Infringement - Literary work - Film script writer's use of copyright sources - Reproduction of parts of copyright book, itself reproducing parts of earlier copyright book - Alleged infringement of copyright in both books - Title to copyright of earlier book - Statutory presumption where author anonymous - Presumption where publisher not a plaintiff - Whether based on probability - Unauthorised use of material in second book, but with sufficient original additions and work - Literary work enjoying copyright - Reproduction mainly of unoriginal passages from second book - Whether substantial part of book reproduced in film - Copyright Act, 1911 (1 & 2 Geo. 5, c. 46), s. 6 (3) - Copyright Act, 1956 (4 & 5 Eliz. 2, c. 74), s. 20 (4). 1 Statute - Construction - International convention, as aid to - Only admissible to resolve ambiguities, if any, in domestic legislation - Statutory amendment - No ambiguity- Copyright Act, 1911 s. 6 (3) Copyright Act, 1956 s. 20 (4). In 1960 the first five defendants made or exhibited a cinematograph film entitled "Oscar Wilde," the script of which was ____________ [Reported by C. M. G. BUTTERFIELD, ESQ., Barrister-at-Law.]

1 Copyright Act, 1956, s. 20: "(4) Where, in an action brought by virtue of this Part of this Act with respect to a literary, dramatic, musical or artistic work, subsection (2) of this section does not apply, but it is established - (a) that the work was first published in the United King-

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dom, or in another country to which section 2, or, as the case may be. section 3, of this Act extends, and was so published within the period of 50 years ending with the beginning of the calendar year in which the action was brought, and (b) that a name purporting to be that of the publisher appeared on copies of the work as first published, then, unless the contrary is shown, copyright shall be presumed to subsist in the work and the person whose name so appeared shall be presumed to have been the owner of that copyright at the time of the publication."

[Note, section 20 (2) is concerned with copyright material bearing the name of the author.]

[1969] 1 Ch. 508 Page 509 written by E. (the first defendant). Contemporaneously W. (the plaintiff company) also made a cinematograph film based on the trials of Oscar Wilde. W. claimed to be exclusive licensees of the copyright in a book called "The Trials of Oscar Wilde" edited by H., published in 1948 and also to be entitled to rights in an anonymous book called "Oscar Wilde: Three Times Tried" published in 1911-1912 by F.P. Ltd. That book contained an account of the trials and connected proceedings, much of which was taken directly from transcripts of shorthand notes of the proceedings and newspaper reports. Apart from those reports and an incompleteextract of some of the proceedings published in Paris in 1906, "Three Times Tried" appeared to be the source work on those trials and H.'s book copied large parts of it. A play written by S. performed in 1938 also drew heavily on "Three Times Tried." W. alleged that E.'s script infringed their copyright in the two books and sought an injunction to restrain the defendants from exhibiting the film "Oscar Wilde" and they claimed damages. The defendants admitted that E. had copied parts of H.'s book but deniedthat those parts were original work or that the film reproduced a substantial part of that book or of "Three Times Tried." They also denied that any copyright subsisted in either of these books or that the plaintiffs had any rights of copyright in "Three Times Tried" even if such copyright subsisted:Held, dismissing the action, (1) that whilst both books contain much unoriginal matter they were both literary works in their own right and ones in which copyright subsisted. (2) That section 20 (4) of the Copyright Act, 1956, did not limit the presumption of ownership of copyright in an anonymous work to actions in which the publisher was a plaintiff and that F.P. Ltd. must therefore be presumed to have been the owners of the copyright in "Oscar Wilde: Three Times Tried"; that the plaintiffs had not rebutted that presumption, and that as they had not proved their title to the copyright through F.P. Ltd., their claim in respect of this book failed. Hogg v. Toye & Co. Ltd. [1935] Ch. 497, C.A. distinguished. (3) That there was no ambiguity in section 20 (4) of the Act of 1956 and, accordingly, that the Brussels Convention, 1948, was not admissible evidence to aid the construction.

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Ellerman Lines Ltd. v. Murray [1931] A.C. 126, H.L. followed. Salomon v. Comrs. of Customs & Excise [1967] 2 Q.B. 116; [1966] 3 W.L.R. 1223; [1966] 3 All E.R. 871, C.A. considered. (4) That the statutory presumption was not based upon inherent probability and therefore it was not legitimate to speculate on what fact might have existed which would have rendered the presumption true in fact. (5) That the defendants' film did not reproduce a substantial part of the book by H. for, although considerable use had been made of unoriginal material in that book, this had attracted copyright only by collocation with edited passages and taken alone [1969] 1 Ch. 508 Page 510 could not constitute a substantial part of the book; that the defendants' use of original material was very limited and did not infringe the plaintiffs' copyright. Ladbroke (Football) Ltd. v. William Hill (Football) Ltd. [1964] 1 W.L.R. 273; [1964] 1 All E.R. 465, H.L.(E.) applied.
Action.

Warwick Film Productions Ltd. and William Hodge & Co. Ltd. issued a writ on April 26, 1960, seeking an injunction to restrain Joseph Eisinger, Robert Goldstein, Gregory Ratoff and Vantage Films Ltd. from infringing what the plaintiffs alleged were their rights in the copyright in a book written by H. Montgomery Hyde entitled "The Trials of Oscar Wilde" and the first plaintiffs claimed copyright in a book written by Christopher Sclater Millard entitled "Oscar Wilde: Three Times Tried" and claiming damages and delivery up or destruction of all infringing material. The writ was amended, on July 15, 1960, to add Twentieth Century Fox Film Co. Ltd. as a defendant and was further amended on November 7, 1963, to strike out the second plaintiff, who was the publisher of "The Trials of Oscar Wilde," and add it as a defendant pursuant to the Copyright Act, 1956, s. 19 (8). The first defendant was the script writer of a cinematograph film entitled "Oscar Wilde." The second defendant alleged to have authorised the exhibition of the film. The third defendant was the director of the film (he died in December, 1960 and the action against him abated). The fourth defendant was the production company for the film (it ceased to exist when it was struck off the Register of Companies in 1965 and the action against it abated). The fifth defendant distributed and possibly exhibited the film. The plaintiffs claimed to be the exclusive licensees of certain rights of copyright in Mr. Hyde's book and that the defendants had infringed those rights by making and exhibiting their film. They also alleged that the material for Mr. Hyde's book was derived from an earlier anonymous book entitled "Oscar Wilde: Three Times Tried" of which Mr. Millard was the author and that his executor had assigned the copyright in that book to them. In their respective defences the first, second and fifth defendants did not admit that Mr. Hyde wrote the "Trials of Oscar Wilde" but

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only that he was the editor; nor did they admit that any copyright subsisted in the book or any part of it or that it was an original work. Alternatively, if copyright did exist, they denied that the plaintiffs had any exclusive rights in the work or that they had infringed any right by writing their script or making and exhibiting their [1969] 1 Ch. 508 Page 511 film. They did not admit that Mr. Millard wrote "Oscar Wilde: Three Times Tried," or that it was an original work, or that any copyright subsisted in the whole or any part of it especially the part which purported to be a verbatim transcript of court proceedings. Alternatively, they contended, in reliance on the Copyright Act, 1956, s. 20 (4), the publishers of that book, The Ferrestone Press Ltd., must be presumed to have been the owner of any copyright therein at the time of publication and Mr. Millard's executors would have had no copyright to assign. They denied that the plaintiffs enjoyed any rights in that copyright or that the defendant had infringed the copyright. They denied that the plaintiffs had suffered any damage and claimed that they were not entitled to any equitable relief, as the idea of making a film about the trials of Oscar Wilde had been pirated by them from the first two defendants and they had made and exhibited a rival film on the same subject. The plaintiffs on an interlocutory motion failed to obtain an injunction preventing the exhibition of the film "Oscar Wilde." The facts are fully set out in the judgment. Guy Aldous Q.C., Douglas Falconer Q.C. and David Young for the plaintiff. M. O'Connell Stranders Q.C. and J. N. B. Penny for the first and second defendants. F. P. Neill Q.C. and J. N. B. Penny for the fifth defendants. William Aldous for the sixth defendant. The following cases, in addition to those referred to in the judgment, which sets out the main submissions of counsel, were cited in argument: Millar v. Taylor2; Dering v. Winchelsea (Earl)3; Platts v. Button4; Rex v. Debenham5; Rundell v. Murray6; Short v. Lee7; Humble v. Hunter8; Jefferys v. Boosey9; Hogg v. Scott10; Reg. v. Wilson11; Weldon v. Dicks12; Hudson v. Fernyhough13; Bowden's Patents Syndicate Ltd. v. Herbert Smith & Co.14; In re Jude's Musical Compositions15; Formby Bros. v. Formby16; Attenborough v. Solomon17; H. Blacklock & Co. Ltd.

(1769) 4 Burr. 2303.

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to), Eisinger took a total of 30 or 40 words, apart from a quotation or two from the indictment, and the phrases, "May it please your Lordship" and "Gentlemen of the Jury." It is right, however, not to lose sight of the fact that the parts of his trial scenes which Eisinger copied from Stokes and from those parts of Hyde's book which are unoriginal to him (because he copied them direct from "Three Times Tried" without editing them) are very much more extensive. The question then arises whether, in the circumstances which I have outlined, Eisinger infringed the copyright in the Hyde book. It was argued on behalf of the defendants that since, when [1969] 1 Ch. 508 Page 530 Hyde wrote his book in 1947, he had no permission from anyone who has been proved to be the owner of the copyright in "Three Times Tried" to use that book, his accounts of the trials must be regarded as piratical, and that no copyright exists in a pirated book, or, at any rate, in so much thereof as was pirated. In support of this submission counsel cited Cary v. Faden19, Cary v. Longman20; Walter v. Steinkopff21 and Walter v. Lane,22 per Lord Brampton,23 as well as two cases from the United States of America: Edward Thompson & Co. v. American Law Book Co.24 and American Code Co. v. Bensinger.25 Counsel also submitted the alternative argument that, as a matter of law, copyright can subsist in some parts of a literary work without subsisting in other parts, and that no copyright will be held to subsist in those parts which consist of copied raw material on which no labour and skill have been expended. In support of these propositions counsel cited Low v. Ward,26 Leslie v. J. Young & Sons27 and Macmillan & Co. v. Cooper.28 I do not, however, propose to refer to these cases in any further detail because recently the House of Lords has preferred a different approach to the problem which arises where a literary work includes unoriginal or pirated material. I refer to Ladbroke (Football) Ltd, v. William Hill (Football) Ltd.29 The facts, which I summarise from the headnote, were as follows. Since 1951 the respondents, who were well-known bookmakers, had sent their customers each week fixed odds football betting coupons arranged in a certain general form. In 1959 the appellants, who were also bookmakers, started to send out coupons closely resembling the respondents'. The headnote then describes a football coupon, and goes on:
"The respondents' coupon contained 16 lists, each with an appropriate name. The appellants' coupon, which contained 15 lists, closely resembled the respondents'. The lists offered by the appellants were almost identical with those offered by the respondents in their corresponding lists. For some lists the appel-

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lants devised new headings and they worked out for themselves the different odds offered in respect of the various kinds of bets which, accordingly, they did not copy. The matches, which altered every week, were not copied either. What the appellants adopted from the respondents

19

(1799) 5 Ves. 24.

20

(1801) 1 East. 358.

21

[1892] 3 Ch. 489.

22

[1900] A.C. 539, H.L.

23

Ibid. 558.

24

(1903) 122 Fed.Rep. 922.

25

(1922) 282 Fed.Rep. 829.

26

(1868) L.R. 6 Eq. 415.

27

[1894] A.C. 335, H.L.

28

(1923) 40 T.L.R. 186, P.C.

29

[1964] 1 W.L.R. 273; [1964] 1 All E.R. 465, H.L.(E.).

[1969] 1 Ch. 508 Page 531

were the types of wagers and to a large extent the arrangement and the heading:-

"Held, that there had been a breach of copyright by the appellants, since the respondents' compilation, which must be regarded as a single work, was 'original' and protected by copyright and the part taken by the appellants was substantial. It did not follow that because the fragments of the compilation, taken separately, would not be copyright, the whole could not be copyright."

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Lord Reid said this30:

"The first question to be determined is whether or to what extent copyright attaches to these coupons. The respondents say that a coupon must be regarded as a single work and that as such it is protected by copyright. The appellants seek to dissect the coupon. They would not only dissect it into the 16 lists, but they would further dissect each list into heading, selection of matches, and statement of odds offered for the various kinds of bets. They admit that there is copyright in the selection and in the statements of odds offered: they can safely do that because there they did not copy. But they deny any copyright as regards the rest of the coupon.

"The Copyright Act, 1956, provides, by section 2, that copyright shall subsist in every original literary work and, by section 48, that literary work includes any written Table or compilation. I have no doubt that the coupon must be treated as a single compilation. The appellants' dissection theory is derived from some statements in infringement cases and I must, therefore, examine at this point the law regarding infringement. Copyright gives the exclusive right todo certain things including 'reproducing the work in any material form' (section 2 (5)), and reproduction includes reproduction of a substantial part of the work (section 49 (1)). Broadly, reproduction means copying, and does not include cases where an author or compiler produces a substantially similar result by independent work without copying. And, if he does copy, the question whether he has copied a substantial part depends much more on the quality than on the quantity of what he has taken. One test may be whether the part which he has taken is novel or striking, or is merely a commonplace arrangement of ordinary words or well-known data. So it may sometimes be a convenient short cut to ask whether the part taken could by itself be the subject of copyright. But, in my view, that is only a short cut, and the more correct approach is first to determine whether the plaintiffs' work as a whole is 'original' and protected by copyright, and then to inquire whether the part taken by the defendant is substantial.

"A wrong result can easily be reached if one begins by

30

[1964] 1 W.L.R. 273, 276.

[1969] 1 Ch. 508 Page 532

dissecting the plaintiffs' work and asking, could section A be the subject of copyright if it stood by itself, could section B be protected if it stood by itself, and so on. To my mind, it does not follow that, because the fragments taken separately would not be copyright, therefore the whole cannot be. Indeed, it has often been recognised that if sufficient skill and judgment have been exercised in devising the arrangements of the whole work, that can be an important or even decisive element in deciding whether the work as a whole is protected by copyright."

Lord Hodson said31:

"The defendants have sought to argue that the coupons can be dissected and that upon analysis no copyright attaches to any of their component parts and accordingly no protection is available. In my opinion, this approach is wrong and the coupons must be looked at as a whole."

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Lord Devlin said32:

"I do not think it necessary in this type of case that the work done should have as its sole, or even as its main, object the preparation of a document such as a list or catalogue or race card. It is sufficient that the preparation of the document is an object of the work done. If that be so, the work cannot be split up and parts allotted to the several objects. The value of the work as a whole must be assessed when the claim to originality is being considered."

The reconciliation of this approach to the problem with that of the earlier cases, where the courts appeared willing to analyse a literary work and to allocate copyright to some parts but not to others, is to be found in the speech of Lord Pearce33:
"In my opinion, the majority of the Court of Appeal rightly held that the plaintiffs had established copyright in the coupon. "Did the defendants reproduce a substantial part of it? Whether a part is substantial must be decided by its quality rather than its quantity. The reproduction of a part which by itself has no originality will not normally be a substantial part of the copyright and therefore will not be protected. For that which would not attract copyright except by reason of its collocation will, whenrobbed of that collocation, not be a substantial part of the copyright and therefore the courts will not hold its reproduction to be an infringement. It is this, I think, which is meant by one or two judicial observations that 'there is no copyright' in some unoriginal part of a whole that is copyright. They afford no justification, in my view, for holding that one starts the inquiry as to whether

31

[1964] 1 W.L.R. 285.

32

Ibid. 290.

33

Ibid. 293.

[1969] 1 Ch. 508 Page 533

copyright exists by dissecting the compilation into component parts instead of starting it by regarding the compilation as a whole and seeing whether the whole has copyright. It is Film when one is debating whether the part reproduced is substantial that one considers the pirated portion on its own."

That passage which I have just read in my judgment is really decisive of the present case. Did the defendants reproduce a substantial part of the Hyde book? Mr. Aldous argued that a good test by which to judge the answer to that question would be to see how important to the defendants was the part which had been copied, and he quoted the well-known dictum of Peterson J. in University of London Press Ltd. v. University Tutorial Press Ltd.34: "after all, there remains the rough

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practical test that what is worth copying is prima facie worth protecting." Mr. Aldous then submitted that the part of the defendants' film which had been copied was the major part of the film in importance and was therefore a substantial part of the Hyde book. The objection to this argument, in my judgment, is that it transfers the criterion of substantiality to the wrong work. The question is whether the defendants' film reproduces a substantial part of the Hyde book, not whether the reproduced part of the Hyde book forms a substantial part of the defendants' film. I return to Lord Pearce35 and I quote;
"Whether a part is substantial must be decided by its quality rather than its quantity. The reproduction of a part which by itself has no originality will not normally be a substantial part of the copyright and therefore will not be protected. For that which would not attract copyright except by reason of its collocation will, when robbed of that collocation, not be a substantial part of the copyright and therefore the courts will not hold its reproduction to be an infringement."

Let me try to apply that statement to the facts of the present case. Hyde copied "Three Times Tried." The result is reflected in his book in two ways: (1) edited copying; and (2) unedited copying. As regards Hyde's edited copying, Eisinger himself copied only to the very limited extent which I have already indicated. Such copying, taken by itself, does not, in my judgment, constitute the reproduction of a substantial part of the Hyde book and cannot therefore constitute an infringement of copyright. As regards Hyde's unedited copying, it had no originality and attracted 34 [1916] 2 Ch. 601, 610.

35

[1964] 1 W.L.R. 273, 293.

[1969] 1 Ch. 508 Page 534 copyright, as part of the whole book, only by reason of its collocation. When robbed of that collocation it does not, in my judgment, represent a substantial part of the copyright and so does not involve an infringement of it. What is true of the two parts is, in my judgment, equally true of the whole, and I, therefore, hold that there was no reproduction of a substantial part of the Hyde book, and no infringement of copyright. I should perhaps add this, that even if I am wrong in my view of the effect of the statutory presumption in section 20 (4) of the Act of 1956 and even assuming that the plaintiffs have established a title

200

ROLE AND RESPONSIBILITY OF INTERNET INTERMEDIARIES IN THE FIELD OF COPYRIGHT AND RELATED RIGHTS

prepared by Lilian Edwards, Professor of E-Governance, University of Strathclyde

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I.

OUTLINE AND INTRODUCTION TO PROBLEM This report is divided into eleven sections. Sections I and II look at the historical background to the development of regimes of immunity, limited liability or safe harbor for online intermediaries, from the early days of the commercial Internet, drawing on the report prepared for WIPO in 2005 by Edwards and Waelde. Early pressures on Internet service providers (ISPs) and hosts who feared being held responsible for multiple types of unwelcome content authored by third parties (including not just copyright infringing material but also illegal and harmful material such as pornography, hate speech and defamatory content) led to the promulgation of the two main global models, the EC Electronic Commerce Directive (ECD), and the US Digital Millennium Copyright Act (DMCA). These instituted a bright line, with some caveats, of no liability for intermediaries unless they received actual notice or became aware of facts or circumstances indicating illegal content or activity. This led to general voluntary participation by intermediaries in notice and take down (NTD) even where not mandated by law. In this model, prior monitoring was not expected of intermediaries. Sections III and IV look at the global scene and the leading US and EU regimes in more detail, in particular noting the problems remaining with NTD paradigms in relation to potential chilling of free speech due to lack of public oversight of possible wrongful demands for take down of content; and the unhelpful uncertainty as to the extent of immunities for new linking intermediaries such as search engines. Section V looks at the economic and technical developments in peer to peer (P2P) filesharing which lead to IP rightsholders looking beyond NTD for protection from the downturn in industry revenues, and turning towards suing P2P intermediaries such as torrent sites which enabled users to share files without permission, and to suing users themselves in volume litigation. In particular, different generations of P2P technologies are separately described. Section VI discusses the jurisprudence which has developed over the last decade in lawsuits against P2P intermediaries such as Napster, Grokster et al, and concludes that although there have been legal victories in this domain; they have been somewhat Pyrrhic, with filesharing relatively undaunted. Lawsuits against users have similarly turned out to be counter productive, paving the way for new approaches in the form of graduated response. Section VII examines the various global models for graduated response, focusing in particular on laws passed in the UK, France, South Korea and elsewhere, and lawsuits imposing such a regime on users in Ireland. To found a discussion of the impact on human rights, a summary is given of the technical methods used by private P2P investigation agencies to identify file sharers using systems such as Dtecnet, Audible Magics Copysense and Global File Registry. Notice and notice and notice and disconnection (or suspension) are both analyzed. A detailed analysis is given of both the advantages asserted for graduated response by the content industries, including speed, cheapness, effectiveness and educational value, and the problems so far identified with graduated response as respects users, rightholders, intermediaries and the public interest. These problems include impacts on due process, possibilities of error, impact on fundamental rights of privacy, freedom of speech and access to the Internet and unintended consequences e.g. impact on those supplying free open wireless access to the Internet.

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This section also canvasses whether graduated response may breach the pre-existing regimes of intermediary immunities noted in sections III and IV as well as other existing laws such as EU data protection laws. Finally, it attempts to outline a framework for deciding when or whether graduated response regimes can be proportional to reducing the harms caused by unlawful filesharing. Section VIII looks further at the solutions of content filtering or website blocking which are sometimes seen as part of graduated response. Global jurisprudence and laws are surveyed and some problems with filtering highlighted which also affect the general proportionality assessment of graduated response. Section IX recognizes that some hosts such as video streaming sites or cloud storage sites have also become identified by content industries as part of the copyright infringement problem, and addresses recent significant case law in both the US and EU as to whether the traditional immunity regimes described in sections II and III should continue to apply to these sites, and on what terms. In particular, the fight over whether intermediaries are required to move from mere duties of NTD to prior filtering is examined in the context of the US YouTube and EC eBay, Google Adwords and SABAM cases. Section X looks at what new business models have developed to enable monetization of digital music services, and what voluntary initiatives are being undertaken by the ISP and host industries to prevent unlawful filesharing. Section XI attempts to draw some lessons learned from the above and to outline some possible research questions and issues for the future. II. INTRODUCTION: THEMES AND ISSUES Internet content is distributed, hosted and located by online intermediaries, whose part in the entire enterprise of the information society is thus vital. Content or services often carry with them legal liability, which may be civil or criminal e.g. obscene, defamatory, racist content. Most saliently, for the purposes of this report, it may infringe the copyright of the rightsholder, if the host, publisher, reader or listener has made an unauthorized copy or breached other recognized rights under copyright law. It is important throughout this report however to keep in mind that the issue of how to regulate the liability of online intermediaries for copyright infringement has to be situated in the wider debate around their liability for other types of illegal or actionable activity or content. Online intermediary liability has become increasingly controversial in relation to copyright material as a result of two key developments: the rise in unauthorized downloading of digital music, film and video since the beginning of the P2P revolution; and the arrival of Web 2.0 interactive user generated or mediated content (UGC or UMC see section IX) sites such as eBay, YouTube, Facebook, etc. Both of these phenomena will be explored in depth below. Historical development and general background to policy issues The problem of the liability of Internet intermediaries for content authored by, or activities carried out by, third parties known at first as the issue of ISP liability, but now of considerably wider scope was one of the earliest problems in the cyberspace

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environment to worry the emerging Internet industry and demand the serious attention of lawyers1. Early cases mainly originated in the United States and focused on the liability of the first ISPs such as AOL or CompuServe for hosting, transmitting, or publishing material that was in some way criminally or civilly actionable: notably libelous, defamatory or pornographic content. A few early cases dealt with liability of ISPs for hosting copyright infringing works e.g. texts of the Church of Scientology. The different policy issues raised by different classifications of authorship, responsibility and editorial control across different types of content were largely not teased out systematically in the early jurisprudence, leading to widely differing regimes being imposed both across different legal systems, and within the same legal system but in differing scenarios depending often on what analogy was selected e.g. publisher, newsstand, common carrier. From the mid 1990s, this lack of harmonization in the emerging case law lead to calls from industry for some form of rescuing certainty in the form of special statutory regimes giving immunity from liability or in US terminology, safe harbors. In Europe, the liability regime debate came to be seen less as tied to different types of contentlibel, pornography, material infringing copyrightand more as a holistic problem of whether intermediaries on the Internet should in general be made responsible for the content they made accessible to the public, and more importantly, whether they could in practice take any steps to deal with such responsibility and avoid risk. In the US, however, as we shall see below special rules did evolve for different types of content. Both the EU and US models have since become global model regimes in this area (section IV below). At the same time, the issue of liability for content became a major worry not just for the relatively small traditional ISP community, but also for a wider spectrum of Internet hosts, e.g., universities, traditional media organizations going digital (e.g. the BBC, the Times), software providers such as Microsoft or Sun, libraries and archives, chatrooms and weblog sites, individuals setting up personal Web home pages and the emerging social networking sites and also affected a wider range of Internet communications intermediaries than traditional ISPs, such as Internet backbone providers, cable companies, and mobile phone communications providers. The early sharp distinction drawn between Internet Access Providers (IAPs) - who merely provided fundamental communications services such as access, information storage etc, and ISPs, who provided some additional service which facilitates a transaction between end users, e.g. identifying one of the parties, providing search facilities etc2 became less and less meaningful as the ISP sector expanded during the boom years of the Internet to provide portal services giving access to large amounts of both in-house and third party produced content. Simultaneously, providers of what might be seen as pure telecommunications services, like mobile phone companies, also became deeply involved in both the content business and in providing value added services such as locational data handling. The scene was further muddied more recently by the arrival of novel and important online intermediaries such as notably, search engines, auction sites,
1

Cubby v CompuServe 766 F Supp 135 (SDNY, 1991), for example was one of the earliest cyberlaw cases of any kind to be decided, in 1991, and concerned ISP liability for a users libel hosted on a CompuServe forum. A Dutch prosecution of an ISP for hosting copyright material was also reported in 1991, see DTL Oosterbaan, et al, eCommerce 2003: Netherlands in Getting the Deal Through: eCommerce 2003 in 25 Jurisdictions Worldwide (Law Business Research Ltd, 2003). 2 C Reed, Internet Law: Text and Materials (Butterworths, 2000) ch 4, p 78.

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aggregators and comparison sites, and the mature social networking sites. All this had important implications for the development of an online intermediary liability regime which was practical, uniform, acceptable to industry and yet protective of both consumer and citizen needs. Policy factors and the development of the limited liability paradigm The ISPs and hosts case for immunity from content liability around the world, which heavily informed the development of limited liability regimes such as the US copyright statute, DMCA and ECD arts 12 to 15, rested mainly at the time on three factors:
1. 2. 3.

lack of effective legal or actual control; the inequity of imposing liability upon a mere intermediary (shooting the messenger), and; in Europe especially, consequences for the public interest if unlimited liability was, nonetheless, imposed.

1. Factual impracticality and legal restraints. On the first point, ISPs argued that they could not manually check the legality of all the material which passed through their server, without impossible amounts of delay and expense, nor was it desirable, or possibly legal, for them to do so without invading the privacy and confidentiality of their subscribers3. Their aim was thus ideally legally to be classified not as publishers who carried the risk of the content they made available to the public but as common carriers, akin to the postal service and phone companies in the US, i.e. institutions which carry no liability for content carried but do owe duties of confidentiality4. In the 2000 turning point of the France vs. Yahoo! case, however, the French court, presented with the defense that it was technically impossible for Yahoo! US to block access to all persons from France to pages on its site selling Nazi memorabilia items, passed on the question of whether automated filtering of requests from a particular location was feasible, to a technical sub-committee to investigate. They reported back that, in fact, Yahoo! had the capacity (already used to serve up adverts in the relevant language to users from whatever country of origin) to identify and thus block access to 90% of French citizens.5 Accordingly, Yahoo! was instructed to block access. This decision was unusual in some senses in that it related to location-based rather than content-based blocking (since Yahoo! already manually classified the types of items for sale on its site). However, in cases of pure automated content classification, the view widely held was that online intermediaries could not yet successfully automate the filtering of unwanted material and remain in business. Furthermore, contrary to conventional

BT Internet estimated in 1999 that just to effectively monitor news-group traffic alone, they would have to hire 1500 new employees working 24 hours a day. See WIPO Workshop on Service Provider Liability, Geneva, 9 and 10 December 1999, paper by Janet Henderson, Rights Strategy Manager, BT Internet. Ones mind boggles to think what the figure would be today. 4 In fact the US courts took a middle way in two early decisions. See discussions in Cubby v CompuServe 766 F Supp 135 (SDNY, 1991) and Stratton Oakmont Inc v Prodigy Services LEXIS 229 (NY Sup Ct, Nassau Co., 1995). The former held in US law that the early ISP fitted best into the model of distributor rather than a carrier; the latter that an ISP which took some editorial decisions might nonetheless still be classed as a publisher with full liability for content published. 5 See LICRA et UEJF vs Yahoo! Inc and Yahoo France, (20 November 2000, Tribunal de Grande Instance de Paris, Superior Court of Paris) p14.

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publishers, ISPs and hosts were exposed to risk as a result of content authored by parties with whom they often had no contractual relationship.6 2. Equity. Secondly, ISPs argued that they were mere messengers and not content providers, and thus that it would be inequitable to hold them liable.7 The model typically contemplated at the time was probably that of a subscriber, business or domestic, who used his ISP, or an online host like Geocities or Hotmail, to store his web pages, documents or emails; perhaps also of a university or school where large numbers of students stored files on central servers for free. In such a scenario, the host is easy to see as both morally innocent and factually devoid of actual or constructive knowledge of illegal or unwelcome content, unless specific notice is given. This perception of ISPs and hosts as innocent was however combated early on by the music and audiovisual industries, whose business model was already under threat by 2000 from online piracy. In particular, the former President of the Motion Picture Industry Association of America, Jack Valenti, successfully headed an initiative against ISPs in the hearings prior to the passing of the US DMCA to prevent them being granted total immunity in respect of downloadable infringing content8. 3. Unwanted economic consequences. Finally the ISP industry argued that their emergent business could not withstand the burden of full liability for content authored by others. Since the promotion of e-commerce and the information society depended on a reliable and expanding Internet infrastructure, an immunity regime was in the public interest. Without it, the ISP industry might be rendered uneconomic. In Europe this argument was even stronger as the US online industry already had a head start, and it was feared unlimited liability on EC online intermediaries would encourage them to migrate to more sympathetic jurisdictions. Against these pleas, however, was the strong state interest in ISPs, as the only effective gatekeepers, taking up the role of cleaning up the Internet, i.e., ridding it of pornography, spam, libel and other forms of undesirable content. This was also, somewhat later, the role sought for ISPs by the content industries. By the year 2000 or so, arguably a rough compromise had emerged in both Europe and the United States among the various stakeholders. ISPs should in principle be guaranteed freedom from liability for content authored by third parties, so long as they were prepared to cooperate when asked to remove or block access to identified illegal or infringing content. Such an immunity or safe harbor, was implemented in Europe in the ECD, and in the United States, in the 1998 DMCA (as respects copyright infringing material only). These regimes were to prove of critical importance in allowing the growth of the innovation, e-commerce and fledgling user generated content (UGC) industries.

Conventional publishers, such as newspapers or book publishers could limit their risk contractually, by, for example, issuing acceptability guidelines to its employees, or putting indemnity clauses into contracts with freelancers. 7 See adoption of this metaphor in G Sutter, Dont Shoot the Messenger? The UK and Online Intermediary Liability (2003) 17 Intl Rev L, Computers and Technology 73. 8 See in particular On-Line Copyright Liability Limitation Act and WIPO Copyright Treaties Implementation Act: Hearing on HR 2280 and HR 2281 Before the House Judiciary Committee, Courts and Intellectual Property Subcommittee, 105th Cong (1997) (statement of Jack Valenti, President, Motion Picture Industry Association of America). Famously Valenti described downloading as the ISP industrys dirty little secret, claiming that around 80% of ISP bandwidth was devoted to P2P traffic.

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III.

GLOBAL REGIMES OF SAFE HARBORS OR ISP/INTERMEDIARY IMMUNITIES Model legal frameworks for Internet intermediaries have thus developed taking two different approaches: (i) "horizontal" regulation that deals with the liability of intermediaries across all types of content, such as the ECD, or (ii) "vertical" regulation which lays down rules for special domains (copyright, protection of children, personal data, counterfeiting, domain names, online gambling, etc). Examples of the latter include the US Internet gambling law, the UK Defamation Act 1996, S 1, the US DMCA and the French Code montaire et financier for online fraud with a payment card. USA: In the US, two separate regimes of immunities were created for ISPs and hosts, one relating to all types of liability material except for intellectual property (IP) and the other relating to liability for material infringing copyright. The first regime is found in s 230(c) of the Communications Decency Act (CDA) which provides total immunity in respect of all kinds of liability bar that relating to IP9, so long as the content in question was provided by a party other than the service provider. The second regime, found in the DMCA, Title 512, exempts online intermediaries of various types from liability in relation to copyright infringement by means of a set of safe harbors, but only on certain terms, such as the disclosure of the identity of infringers on request, subscription to a detailed code of practice relating to notice, take-down and put-back, and the banning of identified repeat infringers from access. The regime is described in detail below. EU: In Europe, a harmonized horizontal regime exists in the ECD, covering liability for all kinds of content, except gambling and privacy/data protection, which are exempted. The ECD regime is described in detail below, but it should be noted that the Commission is currently consulting on reform of the Directive including arts 12 to 1510. The global scene: Similar rules are found in many other developed and emergent economy countries. In some countries, following the US model, the rules on intermediary immunity for infringing material are dealt with separately from other types of content liability. China, for example, in its Regulation on Protection of the Right to Network Dissemination of Information of 2006, exempts network service providers, including search and linking providers, from liability for hosting IP infringing material on certain terms, similar to those of the US DMCA11. The Republic of Korea regulates liability of online intermediaries copyright under the Korean laws 'Act on Promotion of Information and Communications Network Utilization and Information Protection()', as amended in 2002, and the Korean 'Copyright Act of April 2009, under which online service providers are exempted from liability provided they take down illegal content on notice if it is deemed to be harmful or copyright infringing. Online intermediaries may post a response if they disagree with the notification. India, however, has a generic regime more along the lines of the ECD model. It introduced for the avoidance of doubt a wide provision in its IT Act 2000 that no person providing any service as a network service provider shall be liable under this Act, rules or regulations made thereunder for any third party information or data made available by him
9

See detailed discussion of the very wide scope of this immunity in Lemley M Rationalizing Safe Harbors [2007] 6 J. On Telecomms and High Tech L 101, at 102-105. 10 See Public consultation on the future of electronic commerce in the internal market and the implementation of the Directive on electronic commerce (2000/31/EC), closed November 5 2010, at http://ec.europa.eu/internal_market/consultations/2010/e-commerce_en.htm. 11 See http://www.chinaitlaw.org/?p1=print&p2=060717003346.

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if he proves that the offence or contravention was committed without his knowledge or that he had exercised all due diligence to prevent the commission of such offence or contravention. This mainly related to the cybercrime offences created by the Act. The IT Amendment Act 2008 refined the section to correspond more closely to the DMCA/ECD model of near-total immunity for mere conduits and notice and take down for hosts. Many developing countries still have no rules but tend to regard the DMCA and ECD as potential models. IV. A. THE LEADING MODEL REGIMES The European E-Commerce Directive (ECD) ISSPs definition Articles 12 to 15 of the ECD introduced throughout Europe a harmonized regime on the liability of online intermediaries12. The regime affects ISSPs: i.e., information society services providers or, as the title of Section 4 of the ECD also calls them, intermediary service providers13. An information society service is defined as any service normally provided for remuneration, at a distance, by means of electronic equipment for the processing (including digital compression) and storage of data, and at the individual request of a recipient of a service14. Recipient of a service is defined as any natural or legal person who uses an information society service. Thus, broadly, the ECD intermediary service provider liability regime covers not only the traditional ISP sector, but also a much wider range of actors including hosting services, ecommerce merchants, social network sites, cloud computing services, mobile providers, etc. There are a number of key exceptions to what can be defined as an ISSP. First, since an information society service must be offered at the individual request of the recipient, TV and radio broadcasters do not fall within the remit of the ECD liability regime, although sites which offer individually on-demand services such as video-ondemand or email are included15. Secondly, there is the issue that the ISSP must provide a service normally provided for remuneration. Recital 18 of the ECD notes explicitly that although a service may be free to the recipient, the provider of that service may still be an ISSP if the service broadly forms part of an economic activity: so, arguably, this can include providers of noncommercial services on-line, such as the delivery of e-government services by state departments, if the state will be making economic gains out of the activity (e.g., if they are cutting costs by putting service delivery on line). Given that one of the dominant successful models of e-business is to give away a product or service but then make money out of it in lateral ways, most notably in the search engine and social networking markets, it would not make sense for the ECD definition of an ISSP to be interpreted

2000/31/EC, passed 8 June 2000. Art 2(b), ECD. These providers can be natural or juristic persons. 14 Art 2(a) of the ECD refers back to the definition in Art 1(2) of Directive 98/34/EC as amended by Directive 98/48/EC. The definition is discussed further in Recs 17 and 18 of the ECD. In particular spammers and other providers of commercial communications are included as providers of information society services. Art 2(d), ECD. 15 See further Rec 18, ECD.
13

12

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restrictively.16 The European Court of Justice (ECJ) has now given guidance that the Google Adwords referencing service falls, under certain conditions, within the remit of the hosting exemption of the ECD i.e. is an ISSP benefiting from Art 1417. However this does conclusively not settle the matter of whether Google in its role as a cost-free provider of search links qualifies as an ISSP (the absence of linking liability immunity within the ECD is also discussed further below). Thirdly, the ECD also excludes certain activities from its remit entirely, including taxation, competition law, and the activities of notaries and gambling. Liability for privacy or data protection breaches is also, somewhat surprisingly, exempted from the ECD (see the controversial Italian criminal case of Italy v Google)18. It is possible this may be corrected in the current reform process of the EC Data Protection Directive19. Thus, online intermediaries in these domains do not fall within the ISSP immunity regime. B. The substantive rules EU and the ECD The ECD, as noted above, takes a horizontal approach to ISP liability. Furthermore, rather than giving a blanket immunity to ISSPs in all circumstances, as the US CDA section 230(c) does (see below), its approach is to separately address the various functions of ISSPs. Where ISSPs act as a mere conduit i.e., merely transmitting content originated by and destined for other partiesthe ECD, Art 12, regards them as basically absolved from all liability as regards that content. To maintain immunity, the ISP must not initiate the transmission, select the receiver of the transmission or modify the information contained in the transmission20. Where ISPs cache material, they will not be liable for it subject to the same conditions as in Art 1221. Caching is a ubiquitous technical process whereby local copies of remote web pages are made by hosts when requested, in order to speed up delivery of those pages on subsequent request to speed up the Web for all users. Immunity is also subject to the ISSP taking down cached copies once they obtain actual knowledge that the original

A UK court upheld the view albeit obiter that Google the search engine qualified as an information society service provider in Metropolitan v Designtechnica [2009] EWHC 1765 (QB). See also obiter discussion affirming this view in Bunt v Tilley [2006] EWHC 407 (QB) paras 43-45. Note also that a French court has found Wikipedia, the free online encyclopedia to be deserving of ISSP immunity: see OUT-Law news report of 6/11/2007, at http://www.outlaw. com/page-8615. 17 Google France v Louis Vuitton, etc, conjoined cases, Judgment of the Court, Grand Chamber, 23 March 2010, Joined Cases C-236/08 to C-238/08. 18 See OUT-LAW News, 3 March 2010 at http://www.out-law.com/page-10805. 19 See initial proposal, A comprehensive approach on personal data protection in the European Union, 4 November 2010, at http://ec.europa.eu/justice/news/consulting_public/0006/com_2010_609_en.pdf. 20 Art 12. Transmission includes automatic, intermediate, and transient storage. Presumably information excludes header information which ISPs routinely and automatically add to through traffic they forward. Such header information is vital to the routing of packets through the Internet to their destination, but does not form part of the message information actually read by the recipient. 21 Art 13, ECD actually refers in full to automatic, intermediate and temporary storage of that information, performed for the sole purpose of making more efficient the informations onward transmission to other recipients of that service.

16

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source of the information has been removed or access to it disabled, or removal or blocking of access has been ordered by a competent court or authority. The main controversy in the EC regime has centered on the hosting provisions in Art 14, which deals with circumstances where ISSPs host or store more than transiently content originated by third parties. Under Article 14, ISSPs are exempt from criminal liability in respect of the storage of information provided by a recipient of their services, so long as they have no actual knowledge of illegal activity or information; and are immune from civil liability so long as they have no such actual knowledge and are not aware of facts and circumstances from which the illegal activity or information is apparent. Art 15 provides furthermore that EC member states are not to impose on ISSPs a general obligation actively to seek facts or circumstances indicating illegality. On the other hand, Art 14(2) expressly preserves the right of parties to seek injunctive relief to terminate or prevent an infringement and in practice, this is increasingly (if controversially) invoked as a route by which prior monitoring or filtering may be imposed on ISSPs in Europe by court order despite the apparent intent of Art 15 to restrain such (see further below, especially section VIII). Note that recital 48 provides that it is still possible for states to require ISSPs to apply duties of care which can reasonably be expected from them and which is specified by national law, in order to detect and prevent certain types of illegal activities. However it has been normally assumed that such duties of care22 mean those imposed by criminal or public law e.g. aid in investigation of crime or security matters, not as extending to duties under private law, e.g., to help prevent copyright infringement - since that would negate the point of Article 15 and indeed Art 14 generally. Even if a host receives notice of offending content, it can avoid liability if it takes down or blocks access to that content expeditiously. This imports the well known notice and take down or NTD regime. What exactly expeditiously means is a source of uncertainty around the ECD regime, especially for small ISPs and platforms. No guidance is given in the Directive as to what expeditious means and whether it allows enough time to, e.g. check facts, consult an in house lawyer, find an external lawyer or request counsels opinion. This vagueness can clearly be oppressive to defendants who wish to clarify their position before taking down. In large ISSPs, it may take some time for a takedown request to find the appropriate employee, or for the appropriate page to be located on a large website (a problem aggravated by the lack of a statutory form of notice); while in small ISSPs it may be difficult to identify an employee responsible, especially in a non profit making or volunteer organization; and how these indoor management issues affect expedience remains unclear. National implementations of the ECD tend, unfortunately, to provide no further guidance than the Directive23. Article 14, furthermore, seems to imply that once notice has been given and the expedient period of grace expired, liability is strict even if takedown presents technical or administrative problems. A better alternative might be, as the German Multimedia Act provides, for liability to arise only after the ISSP has failed to take some kind of reasonable steps. Reed suggests similarly that once an ISSP has received a takedown

See e.g. R Bagshaw, Downloading Torts: An English Introduction to On-Line Torts in H Snijders and S Weatherill, E-Commerce Law (Kluwer, 2003). 23 Member states can of course clarify the time for expeditious take down in their own laws e.g. the UK Electronic Commerce Directive (Terrorism Act 2006) Regulations 2007, prescribe that take down, of terror-related content only, must take place within two days.

22

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notice, its duty should not be an absolute requirement to remove but merely to to do what is reasonable to prevent further communication of that notified content24. United States CDA and DMCA In 1996, Congress passed the Communications Decency Act (CDA) in an effort to prevent minors from accessing undesirably adult speech online. While most of the CDA was struck down as unconstitutional, s 230(c) remained in force and grants total immunity to any interactive service provider in respect of content provided by a third party. The section has been interpreted broadly, to apply to many types of publication tort, including defamation, privacy, negligent misstatement and most recently, soliciting prostitution by advertising, but criminal content is excluded. Notably, it has been repeatedly upheld to grant immunity, even where notice to take down is served on the service provider and even if they then fail or refuse to remove it. Copyright liability is however exempted from s 230(c) and instead dealt with by the regime for online intermediaries created in the DMCA in 1998. The DMCA creates a limited liability regime much more akin to the ECD than the total immunity of the CDA s 230(c). As with the ECD, different functions carried out by intermediaries are given immunities known as safe harbors: as with the ECD these include mere conduit, caching and hosting, but the DMCA goes further and also includes linking tools, which include search engines and hyper linkers (e.g. price aggregators or comparison sites). Because those classes were fixed in the statute in 1998, their application to later-developed technologies such as P2P intermediaries has been raised but rejected by the US courts (see below). The DMCA safe harbors apply only if the service provider establishes, publicizes, and implements both a NTD system for removing content when copyright owners complain, and a system for identifying repeat infringers and removing them from the system. The DMCA also requires hosts to accommodate technical protection measures (TPMs). The DMCA (like the ECD, and unlike the CDA) also allows suit for injunctive relief against an intermediary. C. General concerns with notice and takedown paradigms Freedom of speech and privatized censorship Many have claimed that NTD regimes can exert a potential chilling effect on freedom of speech. Research seems to support the proposition that in the interest of avoiding litigation or risk, ISPs and hosts are sometimes inclined to remove or block access to notified content, without investigating it in detail. They are thus arguably pushed into colluding on what has been termed privatized censorship even though they do not have the authority of a court, or always any knowledge of specific relevant areas of law, such as fair use or libel law25. In research carried out at Oxford known as the Mystery Shopper test a major ISP in the United Kingdom was asked to take down a web page alleged to be a pirate copy.26 In fact the web page contained an extract from Mills On Liberty, published in 1869 and long in the public domain. Nonetheless the webpage was removed

24 25

See Reed C, Policies for Internet Immunity, (2009) 19(6) Computers and Law 20. See discussion in C Ahlert, C Marsden and C Yung, How Liberty Disappeared from Cyberspace: the Mystery Shopper Tests Internet Content Self-Regulation (Mystery Shopper) cited at http://pcmlp.socleg.ox.ac.uk/text/liberty.pdf. 26 Ibid.

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without demur.27 The Oxford researchers concluded from this and other examples that the current regulatory settlement has created an environment in which the incentive to take down content from the Internet is higher than the potential costs of not taking it down28. Looking at the roughly similar copyright NTD regime of the DMCA, Urban and Quilter found that almost a third of takedown requests made by rightsholders were apparently flawed or unjustified, and that over half the demands for link removal came from competitor companies.29 The project analyzed all the take down notices (876 in totals) received by the search engine Google between 2002 and 2005 and subsequently posted on the Chilling Effects website30. 30% of take down notices received raised obvious queries as to validity, which a court would have been bound to consider before granting an injunctive remedy. These included defenses for fair use, claims over public domain material, and notices in unclear form. The authors commented: The surprising number of questionable takedowns we observed, taken in conjunction with the ex ante removal of content, the minimal remedies for abuse of process, and the lack of knowledge about the counter notice procedures, suggest that few are well served by [the NTD process]. In the ongoing consultation on reform of the ECD, Art 19, a global civil society group for freedom of expression has argued strongly there should be no take down without intervention of judicial oversight31. Few EC countries currently provide for such on a mandatory basis though some e.g. Belgium do require an official such as a prosecutor to agree to removal of criminal content. One factor that might deter an ISSP from taking down might be the fear that unfounded takedown would lead to a claim for breach of contract from the content provider. In the US DMCA, when an ISSP takes down in good faith, it is protected from any liability arising. No such protection exists in the ECD (although as the Directive is a minimum harmonization, there is no reason why states cannot introduce such protection). It seems likely, though, that European ISSPs still regard default take down on demand as their safest and easiest option. Acceptable use clauses in subscriber contracts can probably control the risk of breach of contract, and consumer-oriented ISSPs may also rely on the inertia of consumers in relation to litigation. By contrast the risk of liability for e.g. obscene

Similar results were found in a similar experiment carried out subsequently by Sjoera Nas at Bits of Freedom, a digital human rights group based in the Netherlands. Nas, posing as copyright owner, asked 10 Dutch ISPs to remove works by a Dutch writer who died in 1860 and hence was in the public domain. 7 providers took down the text without apparently checking it out at all; one failed to respond to the complaint; one examined the text complained of and noted it was in the public domain (xs4all, a small ISP with a history of digital rights activism) and one forwarded the complaint to the website owner. Her takedown hit rate was thus 70%. 28 Mystery Shopper, above n 25, at 12. 29 Urban J and Quilter L, Efficient Process or Chilling Effects? Takedown Notices Under Section 512 of the Digital Millennium Copyright Act: Summary Report, available at http://mylaw.usc.edu/documents/512Rep-ExecSum_out.pdf. 30 See Chilling Effects Clearinghouse at http://www.chillingeffects.org/, a joint project of the Electronic Frontier Foundation and Harvard, Stanford, Berkeley, University of San Francisco, University of Maine, and George Washington School of Law clinics. The site hosts take down notices voluntarily submitted by private parties and participating ISPs and sites such as Google. 31 See Art 19 press release, 9 November 2010, at http://www.article19.org/pdfs/press/europeancommission-freedom-of-expression-needs-better-protection-in-digital.pdf.

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material or copyright infringement is less easy to shift and is more likely to be pursued by state agencies such as police. The DMCA builds in other safeguards to discourage arbitrary NTD. Any takedown notice must be notified to the content provider, who then has the opportunity to protest that the material should not be removed, in which case it must be put back by the ISP. If the original notifier then continues to dispute the legality of the content, and the content provider to assert it, the argument must be taken to the courts. While dispute is in progress, the ISP is given safe harbor to keep the content up, free from liability, even if in the end a court does decide the content was illicit or actionable. This system of notices and counter-notices largely builds on a common understanding between rightholders and intermediaries, and represents a serious attempt to provide a balanced solution. By contrast, nothing in the EC regime requires notification to the site whose content is taken down, and this would be a matter for each states legislation or most often, for each ISSPs internal procedures and subscriber contracts. The uncertain requirement of expedient take-down in the ECD (see above), lacking the DMCAs safeguards, only encourages EU ISSPs further to take down now, and investigate later, if at all. The DMCA also has strict rules that the person demanding take down must properly identify themselves as the rights-holder with locus to demand take down (using digital signature identification if requesting take down by email) and specifies details enabling offending content to be easily located. Both rules discourage fraudulent, unauthorized or over-broad complaints and help the recipient of the notice to be able to practically comply. Furthermore there are serious penalties for any person making a false allegation as to infringement (s 512 (f)) which have been enforced in the US courts32. These DMCA rules in principle seem beneficial to any copyright NTD regime and have an obvious deterrent function in regard of eventual misuse of the system. Search engines and linking liability Search engines, such as Google, Bing, Baidu and others have become crucial to the navigation and management of Internet resources. There is no global consensus however as to whether search engines should benefit from the safe harbors or immunities given to traditional online intermediaries. Search engines as their raison dtre create links to material over which the search engine has neither legal nor de facto control, nor, in practice, any human knowledge (since the web spidering systems are entirely automated) and yet there is a constant risk of some kind of liability arising, including under some theory of authorizing copyright infringement. The US DMCA under its head locational tools expressly grants immunity under certain conditions where a link is made to infringing material.33 In Europe, by contrast, there is no explicit category of immunity. Hosting as dealt with in Article 14, requires storage, itself undefined in the ECD, which seems to imply that merely making a hyper-link to content cannot constitute hostingtherefore any liability which may arise in relation to a hyperlink under national law is not excluded by Article 14. Very few cases in Europe have as yet actually created any problems by ascribing liability to search engines for making links however34 (arguably one of the few such examples being the Belgian copyright case of

32

See Online Policy Group v. Diebold, 337 F. Supp. 2d 1195 (N.D. Cal. 2004). S 512 (d) Information Location Tools. 34 See e.g. Spanish, Swiss and French decisions all exculpating Google as responsible for defamation by virtue of linking to such text, discussed in the English case Metropolitan International
33

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Copiepresse)35. As noted below, the ECJ has looked at the liability of Google as a host in Google v LVMH36 but not yet at Google as a linking intermediary. The question of linking liability in the EC thus remains a matter for the domestic law of each member state. Although the EC Commission was specifically instructed to investigate linking liability on an ongoing basis by Article 21(2) of the ECD, so far, only a few states have chosen to create special linking immunities, creating cross-Europe disharmony.37 Linking is of ever greater significance as the Internet becomes manageable only via search engines and other linking intermediaries e.g., tagging sites like Digg38 and delic.io.us. Since the drafting of the ECD, aggregators have also become important online intermediaries sites which aggregate content from a variety of linked sites so that, say, a user can read the headlines and a few lines from multiple news sites conveniently on one page, or compare prices from a range of providers for utilities like gas or water, or read multiple blogs on one page (so-called RSS readers). What all such aggregators are doing is in essence making links to a wide variety of upstream content over which they have no editorial control, and where they may or may not have technical control to remove individual items, depending on how the software code is implemented. Aggregator sites, alongside search engines and tagging sites are generally seen as a public good in terms of promoting access to knowledge, information management, consumer choice and competition39. This is one area where there is broad consensus, except perhaps in the online news industry40, that search engines and other linkers need the comfort of a certain level of certainty and protection from legal risk, and it would seem distinctly desirable for model global guidelines to be produced on the liability of search engines and hyper linkers. V. GOING BEYOND NOTICE AND TAKEDOWN WHY? The new online intermediaries and new ways to enable or assist copyright infringement P2P intermediaries and hosts for infringing files We noted above, that in the time since the last report on this subject was commissioned by WIPO from the current author Edwards, along with Waelde, in 2005, the problems shaping the question of online intermediary liability for copyright infringement have
[Footnote continued from previous page]

School v Designtechnica [2009] EWHC 1765(QB) at paras 97ff. The English court also found Google not liable for linking to a defamatory snippet. 35 Copiepresse v Google, [2007] ECDR 5, Brussels Court of First Instance (TGI), 13 February 2007. 36 Case C-236/08. See discussion at n 17 supra. 37 See UK Consultation document on the electronic commerce directive: the liability of hyperlinkers, location tool services and content aggregators - Government response and summary of responses, DTI, December 2006. 38 See the controversy in 2007 over whether Digg were legally responsible for taking down on notice tags made by its users, linking to sites featuring a digital encryption key, which AACS were attempting to suppress since it assisted in DVD piracy. As Boing-Boing reported (May 2 2007, at http://www.boingboing.net/2007/05/02/digg-users-revolt-ov.html) Digg's users revolted at this stricture, and saw to it that every single item on the front page of Digg contained the forbidden number. 39 See e.g. Pasquale F, Copyright in an Era of Information Overload: Towards the Privileging of Categorisers (2007) 60 Vand. L Rev 135. 40 See Copiepresse case, supra n 35.

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changed dramatically. First and most obviously, the problem of infringing P2P filesharing, although already regarded as severe in 2005, appears, according to industry reports, to have vastly increased. Secondly, infringing music, video, film and even e-book content is also widely available for download from hosting intermediaries, many originally based around the idea of users uploading content which may be their own UGC but which have evolved also to host copyright infringing content. Such web 2.0 online intermediaries include video streaming sites such as YouTube, Megavideo and DailyMotion. Infringing content may also be directly available for download, in open or, frequently, encrypted form, from host or cloud intermediaries whose primary business is hosting, not social networking or UGC. These may be reputable businesses such as some cloud computing sites e.g. Dropbox, Amazon Web Services, or may have an approach which seems to be predominantly based on infringing material. In the course of the UK Digital Economy Bill debates these latter were termed cyberlockers and it was alleged by ministers that around 20% of infringing content was shared from such sites. Many such sites are based in foreign jurisdictions where they are hard to track down, or frequently move server when investigated; some hosting countries are regarded as law havens. The BPI claimed in December 2009 that the use of foreign unlicensed MP3 sites among British adults grew 47% in the last 6 months of 2009, and that MP3 search engines, as well as blogs and message boards linking to online hoards of music were also becomingly increasingly prevalent41. The question thus arises whether special duties should be imposed on (or immunities from liability removed from) such online intermediaries, in order to protect the legal rights and business interests of rightsholders. We look at the possible form such duties might take relating to P2P filesharing, with a particular focus on graduated response regimes, in sections V to VII below. In section VIII, we consider the use of legal regimes which require ISPs and hosts to filter content and block websites, which can be used both to limit access to sites facilitating P2P filesharing, and also to block access to sites hosting infringing content. In section IX, we examine in more detail the question of whether particular hosts, such as video streaming and social networking sites, should be required to take steps to filter out infringing uploaded content. Peer to peer (P2P) There is considerable industry-supplied evidence that the advent of P2P technologies has created a massive increase in copyright infringement, which in turn threatens the health of the traditional digital content based industries, such as the music, film, video and gaming industries, with the publishing industry also affected. For example, in one much-quoted statistic, the International Federation of the Phonographic Industry (IFPI) estimated that in 2008, 40 billion files were shared online unlawfully and as a result 95% of all music downloads in that year were unlicensed42. The OECD also estimated in 2007 in the context of a major study of non-digital counterfeiting, that the consumption of pirated digital goods was widespread43.

See BPI: Filesharers finding alternatives to P2P, PCPro.co.uk, 18 December 2009. IFPI, DIGITAL MUSIC REPORT 2009: NEW BUSINESS MODELS FOR A CHANGING ENVIRONMENT (2009), available at http://www.ifpi.org/content/library/DMR2009-real.pdf. 43 OECD, Economic Impact of Counterfeiting and Privacy, 2007 at http://www.oecd.org.
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Such assertions are not, however, uncontested. Those who counter the evidence for the impact of filesharing on content industry revenues often raise the following points: (i) every unlawful download cannot be regarded as a lost legal sale, given the idea of try before you buy and the fact that downloading may merely be replacing radio in this function; (ii) that downloading may in fact act as advertising or marketing for the legal content sectors, with some surveys showing high consumers of infringing downloads are also high consumers of legal music; (iii) some downloads may be of material not available legally and thus not replacing sales, e.g. deleted back catalogue; (iv) there is some doubt as to the methodologies and accuracies of the key surveys in the field44; and (v) even apart from dubieties over the figures on filesharing itself, decline in music industry revenues may be at least partly due to factors other than P2P filesharing, including the growth of alternative consumer goods on which to spend income45, a loss of innovation in the music and film markets, and the decline of blip profits caused by the windfall effect of the format transfer from vinyl to CD in the 90s46. It is not the place of this report to adjudicate on the empirical evidence for and against the extent of infringing filesharing and, more importantly, its economic impact; but such controversy is nonetheless relevant when, as we will below, we come to look at what legal solutions are appropriate and proportionate to solving the problems faced by the content industries. Early litigation in the P2P wars focused on the detail of copyright legislation rather than the more general rules on immunity or safe harbors surveyed, but did to some extent consider if immunities applicable to traditional online hosts or distributors, such as ISPs, could or should be applied to P2P intermediaries. (We will speak here both specifically of certain P2P actors such as clients, torrent sites, etc; and generically of these as P2P intermediaries). P2P intermediaries do not themselves typically host files of any kind which infringe copyright (cf, early simple download sites such as MP3.com, where the site itself was a host and clearly a primary infringer of copyright). Instead, P2P intermediaries usually enable users who have downloaded P2P software to then inter se unlawfully swap and share files containing works protected by copyright. Conceptually, such sites are best seen as pointing to infringing material since they do not directly host it, nor transmit it to peers. There are three or four clear generations of P2P systems and each has generated different legal issues and interpretations. The first generation P2P intermediary, on its own website, provided a centralized index to all the files stored and available for upload on the various users individual computers. This centralized model, which initially provided the most speedy and efficient search facilities for users, was that used by the now defunct pre-commercial Napster site, later found liable in the US courts for contributory and vicarious infringement of copyright (see below, section VI). The second generation, which was developed both for greater robustness but also to avoid legal liability after Napster, has no such centralized index. Each user instead maintains an index only of those files stored on his or on her own machine. A user searching for a particular file obtains a desired file by sending out a request which is
See e.g. Goldacre B Illegal downloads and dodgy figures, Guardian, 5 June 2009 at http://www.guardian.co.uk/commentisfree/2009/jun/05/ben-goldacre-bad-science-musicdownloads, rejecting figures quoted for impact on the UK economy. 45 See figures and graph available at http://www.guardian.co.uk/news/datablog/2009/jun/09/gamesdvd-music-downloads-piracy. 46 See general discussion in Piacentin R R Unlawful? Innovative? Unstoppable? A Comparative Analysis of the Potential Legal Liability Facing P2P End-Users in the United States, United Kingdom and Canada (2006) 14 IJLIT 195.
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passed from user to user of the P2P software in question, until it is met with a positive response, after which the file download is negotiated by the software directly between the user who has the file and the user who made the request. This decentralized model is that used by P2P services descended from Gnutella such as KaZAa and Grokster, which in their turn became the subject of lawsuits to more or lesser degrees of success depending on the jurisdiction (see also below). Systems still in use using this protocol include Ares and eDonkey, both still popular in Latin America though little present now in United States and Europe47. Some systems such as the recently defunct Limewire48 enabled users access to filesharing via both P2P and BitTorrent (see below). A third approach which is merely a variation on the above, is that although there is still no centralized index, a number of user computers (supernodes) act as servers hosting subindexes, thereby speeding up search times. Such supernodes can be seen conceptually as sub-Napsters. A fourth approach, or third generation, which is now the dominant player in most Westernized markets except Latin America49 is the "BitTorrent" (BT) approach or protocol, originally devised by Bram Cohen in 2001. Although Cohens own company, BitTorrent Inc, makes one client available, there are numerous other clients available running the protocol. In the BitTorrent protocol, files are not shared as one file but instead divided into small parts (bits) which can be individually uploaded and downloaded, enabling hundreds of thousands of users to very efficiently share even very large files such as HD movie and video files (or large legal files such as Linux operating system upgrades, or BBC iPlayer TV programmes). BT thus combines the decentralized approach of second generation P2P with the enabling of very fast downloading. It is a complicated protocol to analyze in legal context, involving several parties: the site which provides the client software; the site which provides torrent files which help locate other users who hold all or parts of the file which a user seeks to download; the tracker site which monitors the users contributing to the file transfer and passes their data to the client software; and the swarm, one or more users (often in their thousands) also using the BitTorrent protocol, who join in uploading parts of the file sought (usually because they have themselves previously downloaded it). In common BT parlance, a user providing upload access to a file is a seeder, and one seeking to download it is a leecher. Torrent files themselves in principle do not host any copyright content, but merely point the would-be downloader towards users who are likely to be able to supply such content (or parts of it). It is noticeable that this is not dissimilar to the role played by search engines such as Google which also point searchers towards files hosted by other users, while failing to host any such content themselves (or only for short periods, or only in small fragments) we will return to this point in the discussion on the legal liability of P2P intermediaries below. An excellent slightly more

47

eDonkey was in fact closed down as a client site under pressure from US courts in 2006: see RIAA drops the dead eDonkey, OUT-Law News, 14 September 2006 at http://www.outlaw.com/page-7299. 48 See LimeWire shut down by Federal Court, Guardian, 27 October 2010 at http://www.guardian.co.uk/technology/2010/oct/27/limewire-shut-down. 49 See BitTorrent still dominates global Internet traffic, Torrent Freak, 27 October 2010 at http://torrentfreak.com/bittorrent-still-dominates-global-internet-traffic-101026/ revealing that although in most of the world, BitTorrent now dominates, in Latin America P2P traffic of the second generation still forms the majority traffic with Ares the most used client.

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poetic description of how the BitTorrent protocol operates can be found in a recent Australian case, Roadshow Films Pty Ltd v iiNet Limited50. 70. To use the rather colorful imagery that internet piracy conjures up in a highly imperfect analogy, the file being shared in the swarm is the treasure, the BitTorrent client is the ship, the torrent file is the treasure map, The Pirate Bay provides treasure maps free of charge and the tracker is the wise old man that needs to be consulted to understand the treasure map. 71. Whilst such an analogy grossly oversimplifies the situation it will suffice for present purposes. It demonstrates that all of the constituent parts of the BitTorrent protocol must work together before a person can access the file sought. In this judgment the Court will refer to all the constituent parts together as the BitTorrent system. 72. Such analogy also demonstrates that a number of deliberate steps are required to be taken by a person to bring about the means to infringe the applicants copyright. The person must download a BitTorrent client like Vuze, seek out torrent files related to copyright material from websites, and download those torrent files and open them in their BitTorrent client. Thereafter, the person must maintain connection to the internet for as long as is necessary to download all the pieces. The length of this downloading process will depend on the size of the file, the number of peers in the swarm and the speed of those peers internet connections. It is important to note that BT is merely a protocol; like all P2P systems from Napster on, it can be used to share non-infringing files as well as infringing material (and as the examples above show, often is). Another key point to note is that the BT approach, unlike earlier P2P systems, only works efficiently if all or at least most of the users are both uploaders and downloaders, and accordingly software is mainly designed so it is the default to do both simultaneously (although there are ways to avoid this). This can be significant both for strategies of law enforcement, as campaigns of action against users have mainly concentrated on suing key repeat uploaders, rather on the millions of downloaders; and for the legal defenses of users in some civilian legal systems such as France, where downloading for private non-commercial purposes of a certain number of copies is a legal exception to copyright. Finally it may also be significant for legal characterization that, as files are made available in small pieces, no one user can be identified as supplying (making available) the file as a whole to any other user: it comes, as the judge explained in Iinet, from the swarm. Litigation relating to this newest generation of P2P has so far centered to date, for reasons of both imputed culpability and practicality when faced with millions of infringers, on suing high volume uploaders for making available (a globalised infringement under international copyright law) copyright works without permission, and where that has seemed ineffective, on suing torrent sites such as the notorious Pirate Bay (which themselves provide the pointer to tracker sites). Suing the creators of the client software, given its multiple uses, legal and non-legal; the lack of a direct revenue stream related to infringement; and the fact that many of the authors had academic or theoretical purposes
[2010] FCA 24 available at http://www.austlii.edu.au/cgibin/sinodisp/au/cases/cth/FCA/2010/24.html. See further details on how BitTorrent works at paras 56-73, and a good commentary on the decision at http://www.technollama.co.uk/landmark-ispliability-case-decided-in-australia. iiNet was appealed in February 2010, but the first instance judgment upheld, see http://www.austlii.edu.au/au/cases/cth/FCAFC/2011/23.html.
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in mind when they designed such systems, has been rare. However there has been a prosecution of the inventor of Winny P2P in Japan on criminal charges -this was however reversed on appeal51. More recent approaches such as graduated response shift attempts to enforce copyright from concentrating on the serious uploaders to the downloading population as a whole, by adopting non-court based enforcement methods which arguably scale better and cost less than court-based processes (see discussion, sections VII and VIII). Many variations on BT have evolved, to meet both technical goals and the goal of avoiding legal detection of copyright infringement. Notably, a number of systems now exist running the BT protocol which also in various ways encrypt the content shared, or hide the IP addresses of the users sharing files. Some of the most prominent of such systems are Freenet52 and Tor53, the latter of which was created explicitly in pursuance of freedom of speech goals by the EFF to enable sharing of files without interception by authoritarian regimes. Neither system has become widely used by ordinary filesharers as the anonymisation of content nor does identity have the side effect of making the software slow and fiddly to use. In Japan however, encrypted P2P systems such as Winny and its more recent variant Share54, running on much higher speed consumer broadband than is common in the West, are already in widespread use. It is likely that if placed under legal pressure by systems such as graduated response, Western uptake of encrypted P2P will become much more common, especially as next generation high speed broadband is also rolled out in the West55. Finally P2P systems where access is limited to known parties or those they introduce are also increasingly in use. In such darknets, users manually establish connections with nodes run by people they know. Darknet typically needs more effort to set up but a node only has trusted nodes as peers. Again, it has been predicted that as more efforts are made to identify anonymous filesharers and apply sanctions, darknets, which evade detection methods, will be increasingly used by hardcore infringers56. VI. P2P: EARLY LEGAL STRATEGIES OF CONTROL Suing P2P intermediaries In the 2005 forerunner of this report, Edwards and Waelde reported in depth on the then relatively novel advent of P2P-related litigation. Five years on it is estimated that more than 35,000 lawsuits have been launched against individual filesharers in the US alone57
See http://joi.ito.com/weblog/2006/12/17/winny-comments.html and http://yro.slashdot.org/story/09/10/09/0033200/Japanese-Ruling-Against-Winny-Dev-OverturnedOn-Appeal. 52 See R Roemer, The Digital Evolution: Freenet and the Future of Copyright on the Internet 2002 UCLA J.L. & Tech. 5 at http://www.lawtechjournal.com/articles/2002/05_021229_roemer.php. 53 See http://www.torproject.org/. 54 See http://en.wikipedia.org/wiki/Share_. 55 Note the estimate of 20% of downloading taking place via encrypted P2P in Europe accepted in expert testimony in one 2010 Irish case, see infra n 96. 56 See Why the Pirate Bay Verdict Doesnt Matter Billboard, April 16, 2009, at http://www.billboard.biz/bbbiz/content_display/industry/e3i9d7aa37d46e1460bf43ebe5148049570 and Darknets and the future of P2P investigators, Ars Technica, March 5 2009, at http://arstechnica.com/tech-policy/news/2009/03/the-new-version-of-p2p.ars. 57 See von Lohmann F, RIAA vs The People Turns from Lawsuits to 3 Strikes, 19 December 2008, at http://www.eff.org/deeplinks/2008/12/riaa-v-people-turns-lawsuits-3-strikes.
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FoxCopyright 21 McKeown: Fox on Canadian Law of Copyright and Industrial Designs John S. McKeown Thomson Reuters Canada Limited or its Licensors (excluding individual court documents). All rights reserved. Chapter 21 Infringement of Copyright Chapter 21 Infringement of Copyright 21:2 The Right to Produce or Reproduce a Work (c) Producing or Reproducing a Substantial Part of a Work The right to produce or reproduce is limited to "the work or any substantial part thereof". Unless a substantial part of a work is reproduced, there is no cause of action for infringement.[FN66] To ascertain what is a substantial part, both the original and the infringing work must be looked at. A small part of the original work may form a large and substantial part of the second work and in such case there will be infringement.[FN67] The determination of whether a substantial part has been taken is a question of fact.[FN68] All of the circumstances of a particular case must be considered.[FN69] Some of the matters to be considered include: 1. the quality and quantity of the material taken;[FN70] including the importance of the parts taken to the plaintiff's work[FN71] and the extent of originality of the parts taken;[FN72] 2. the extent to which the defendant's use adversely affects the plaintiff's activities and diminishes the value of the plaintiff's copyright;[FN73] 3. whether the material taken is the proper subject-matter of a copyright;[FN74] 4. the purpose for which the material is taken including whether the defendant intentionally appropriated the plaintiff's work to save time and effort;[FN75] 5. whether the material taken is used in the same or a similar fashion as the plaintiff's.[FN76] A rough practical test was succinctly stated by Peterson J. in University of London Press Ltd. v. University Tutorial

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Press Ltd.[FN77] to the effect that "what is worth copying is prima facie worth protecting."[FN78] A recent decision of the High Court of Australia in the case of Nine Network Australia Pty Limited v Ice TV Pty Limited[FN78.1] considered whether Ice TV had infringed the rights of Nine Network by reproducing a "substantial part" of a compilation that was agreed to be protected by copyright. The High Court is the Court of final appeal for the whole of Australia and six judges heard the case. Nine Network acquires, distributes, selects and schedules programs to be broadcast by various television stations which make up its network. The scheduling of programs to be broadcast involved the use of a database on the Nine Network computer network. Approximately two weeks prior to the commencement of each week of broadcasting an employee of Nine Network supplied certain third parties known as "Aggregators" with a schedule of programs to be broadcast in the upcoming week. Each weekly schedule contained various elements including particulars of the time and the title of the programs to be broadcast. The primary business of Ice TV was the provision, via the internet of a subscription-based electronic program guide for television known as the "Ice Guide". When downloaded onto certain devices that were available for purchase by consumers in Australia, the Ice Guide displayed details of programs scheduled to be broadcast by television stations for the upcoming week, including stations in the Nine Network. The initial information included in the Ice Guide was generated by an employee watching television over a period of time, obtaining information from programs on the Internet and reviewing published aggregated guides. No complaint was made concerning this by Nine Network. However, each day an employee of Ice TV compared the existing Ice Guide schedule with a number of the aggregated guides. In almost all cases there were differences in the information and as a result the Ice Guide was amended. It was alleged that the time and title information included in the Ice Guide constituted a reproduction of a substantial part of the weekly schedule of the Nine Network which was the source of the information. The primary Judge and the Full Court made up of three appellate Judges dealt with the matter on the basis that the dispute was to be resolved, by a determination of whether the time and title information which was reproduced, constituted a "substantial part" of the weekly schedules. All of these Judges approached the issue of whether a substantial part of any weekly schedule had been reproduced, by identifying the "skill and labour"[FN78.2] which was expended in creating the weekly schedules and asking whether Ice TV had appropriated Nine Network's skill and labour. The primary Judge and the Full Court reached opposite conclusions. The primary Judge considered that the skill and labour in making the programming decisions was not relevant and there was not a reproduction of a substantial part of it. The Full Court considered that skill and labour was relevant and there was a reproduction of a substantial part of it. The Chief Justice and two other Judges of the High Court said that in order to assess whether the material copied was a substantial part of the work in issue, it is necessary to consider not only the extent of what had been copied but the quality of what was copied, which was said to be critical. It is often said that questions of whether a substantial part has been copied are questions of fact and degree. However, a factor critical to the assessment of the quality of what is copied is the "originality" of the part which is copied. The reproduction of a part which by itself has no originality will not normally be a substantial part of the copyright work and therefore will not be protected. The fact that the expres-

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sion of time and title information for each program was not a form of expression that required particular mental effort or exertion led to the conclusion that the part of the weekly schedule alleged to be reproduced was not a substantial part. The other three Judges, while agreeing with the result, emphasized the danger of adopting the rhetoric of "appropriation of skill and labour". A finding that one party has "appropriated" skill and labour is not determinative of the issue of whether a reproduction of a substantial part of a work has occurred. The legislation in Australia like the Canadian Act does not refer to "misappropriation". (i) The Quality and Quantity of the Material Taken Generally speaking, the courts have given more weight to the quality of what is taken than the quantity.[FN79] In Leslie v. Young & Sons, the pages that had been copied constituted only a small portion of the plaintiff's book, namely, four pages out of 40. Lord Herschell L.C. said: But I do not think that is a just way of regarding the matter in point of law, because a compilation of this kind may contain several independent features of different merit, of differing advantage to the public, and likely to operate to a different extent in promoting the sale of the work. It may be that one part of a work of this kind, though containing only a few pages, may be the very thing that the presence or absence of which would most largely promote or retard the sale of the work. Therefore, although these pages are but few, it seems to me that nevertheless they may be properly treated as an independent work and protected by the copyright law.[FN80] The word "substantial" is not limited to denoting bulk or length of extracts. As Lord Cottenham said in Bramwell v. Halcomb[FN81]: "When it comes to a question of quantity, it must be very vague. One writer might take all the vital part of another's book, though it might be but a small proportion of the book in quantity. It is not only quantity but value that is always looked to."[FN82] Even a few bars of music may be a substantial part if they constitute a recognizable reproduction of an essential part of the melody.[FN83] In Ladbroke (Football) Ltd. v. William Hill (Football) Ltd.[FN84], Lord Hodson said that "[s]ubstantiality depends on quality not quantity."[FN85] The character of the works will be looked at,[FN86] and the court will in all cases look, not at isolated passages, but at the two works as a whole to see whether the use by the defendant has unduly interfered with the plaintiff's right.[FN87] In Joy Music Ltd. v. Sunday Pictorial Newspapers (1920) Ltd., McNair J. said: It is quite clear that the question of substantiality is not determined solely by any process of arithmetic. It would not be right merely to say, the whole of the original copyright consisted of so many lines, the lines which appear in the alleged infringing copy were only so-and-so, therefore it was not a substantial part. You have really got to look, it seems to me, to a large extent to the primary I will not say "idea" because idea cannot be the subject of copyright but at the essential feature of the work which is alleged to have been subject to copyright.[FN88]

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When parts of a work are copied, this may be actionable[FN89] and it is no defence that the defendant has added original material which was independently created.[FN90] As Lord Elgin L.C. said in Mawman v. Tegg: If an individual chooses in any work to mix my literary matter with his own, he must be restrained from publishing the literary matter which belongs to me; and if the parts of the work cannot be separated, and if by that means the injunction, which restrained the publication of my literary matter, prevents also the publication of his own literary matter, he has only himself to blame.[FN91] (ii) Adverse Economic Impact In considering whether a substantial part has been taken, particular emphasis must be given to the fact that the defendant's work competes with the plaintiff's work,[FN92] or may serve as a substitute for it,[FN93] or will interfere with a work that the plaintiff may publish in the future.[FN94] However, competition between the two works is not an essential ingredient of infringement.[FN95] The determination does not necessarily depend upon the quantity of the plaintiff's work that is quoted by the defendant or introduced into the defendant's work.[FN96] In Walter v. Steinkopff[FN97], North J. pointed out that "the passages pirated are taken in their entirety for the very purpose for which they were used by the Times namely, to convey intelligence or information to the readers of the paper. It is not a case of the selection of a part, or quotation of an extract."[FN98] In a case involving infringement of copyright in a dictionary, Lacoste C.J. said: Unquestionably the second is in a sense an improvement on the first in the same way as a second edition of a work is an improvement on the first, but these improvements do not efface the wrong. In a sense they aggravate it in rendering the second work more useful, more complete and more attractive, and consequently more prejudicial to appellants' work.[FN99] The absence of competition may affect the determination. In Chappell & Co. v. D.C. Thompson & Co.[FN100], the plaintiff was the owner of copyright in a song entitled, "Her Name Is Mary". The defendants published a serial story in their paper under the same title and at the head of each installment they printed the first four lines of the song. After pointing out that the Copyright Act was not to be used as an instrument of oppression and extortion, Farwell J. said: Can I say in those circumstances, these words being taken for a totally different purpose from any purpose for which the plaintiff's work was published, and being used in a way which really, in my judgment, cannot compete with the plaintiffs in the sense of depriving the plaintiffs of anything to which they would have been properly entitled as owners of the copyright in the musical work, that the defendants have really taken a substantial part of the plaintiff's work? In my judgment, I ought not to come to that conclusion.[FN101] The absence of competition[FN102] or commercial gain[FN103] is not a defence to an action relating to the making of

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infringing copies. In an American case, the plaintiff published physics text books for students containing problems that could be assigned for homework. The defendant published a book of solutions to the problems although there was no copying of the problems themselves. It was held that the sale of the defendant's book would seriously impair the sale of the plaintiff's book because few educators would use it if the solutions to the problems were available to the students without the necessity of working them out for themselves. In giving judgement, the Court observed that the trend of the law was to enforce higher standards of fairness and morality in trade, depending upon the character and nature thereof.[FN104] If a vital part of the plaintiff's work is taken, it does not matter that it is used for a totally different purpose.[FN105] If the part taken by the defendant tends to vulgarize the author's work, infringement will more easily be found.[FN106]

ENDNOTES FN66. Kantel v. Grant, [1933] Ex. C.R. 84 at 96 (Can. Ex. Ct.); Cardwell c. Leduc (1962), 23 Fox Pat. C. 99 at 110 (Can. Ex. Ct.); Whittingham v. Wooler (1817), 2 Swan. 428; Murray v. Elliston (1822), 5 B. & Ald. 657; Pike v. Nicholas (1869), L.R. 5 Ch. 251; Boosey v. Whight (1899), [1900] 1 Ch. 122 (Eng. C.A.); Cooksley v. Johnson & Son (1905), 25 N.Z.L.R. 834; Pitman & Turner v. Fletcher & MacDonald (1953), LXIV The Author, No. 1, p. 13. FN67. Kelly v. Hooper (1839), 4 Jur. 21. As to possible infringement by copying a single long and wholly original word, see Life Music Inc. v. Wonderland Music Inc. (1965), 241 F.Supp. 653. FN68. Planch v. Braham (1837), 4 Bing N.C. 17; Moore v. Clarke (1842), 9 M. & W. 692; Bradbury v. Hotten (1872), L.R. 8 Ex. 1; Chatterton v. Cave (1878), 3 App. Cas. 483 at 498; Beere v. Ellis (1889), 5 T.L.R. 330; Frankenburg and Penguin Books Ltd. v. Gibbens, (1952), LXIII The Author, No. 2, p. 36. King Features Syndicate Inc. v. Lechter, [1950] Ex. C.R. 297 (Can. Ex. Ct.), in which the taking of the title "Popeye" together with the representation of certain fanciful characters was held to amount to the taking of a substantial part of the work and see U&R Tax Services Ltd. v. H&R Block Canada Inc. (1995), 17 C.P.R. (3d) 257 (Fed. T.D.). FN69. Tinsley v. Lacy (1863), 1 H. & M. 747; Warne & Co. v. Seebohm (1888), 39 Ch. D. 73; Trading Auxiliary Co. v. Middlesborough (1889), 40 Ch. D. 425. See Hager v. E.CW Press Ltd. (1998), 85 C.P.R. (3d) 289 (Fed. T.D.); Warman v. Fournier (2012), 2012 FC 803, 104 C.P.R. (4th) 21 (F.C.) for a recent application of these principles. FN70. Sweet v. Cater (1841), 11 Sim 572 (Eng. Ch. Div.); Ricordi (G.) & Co. v. Clayton & Waller Ltd., [1928-35] Macg. Cop. Cas. 154; Chappell & Co. v. Thomson (D.C.) & Co., [1928-35] Macg. Cop. Cas. 467; Carr v. Nat. Cap. Press Inc. (1934), 21 U.S.P.Q. 408; Canadian Performing Right Society Ltd. v. Canadian National Exhibition Assn., [1934] O.R. 610 (Ont. H.C.); Catnic. Components Ltd. v. Hill & Smith Ltd., [1957] F.S.R. 529 (Eng. C.A.); Hubbard v. Vosper, [1972] 2 W.L.R. 389 (Eng. C.A.); L.B. (Plastics) Ltd. v. Swish Products Ltd., [1979] F.S.R. 145 (H.L.); British Columbia Jockey Club v. Standen (Winbar Publications) (1983), 73 C.P.R. (2d) 164 at 175 (B.C.S.C.); affirmed

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(1985), 8 C.P.R. (3d) 283 (B.C.C.A.). FN71. Bramwell v. Halcomb (1836), 3 My. & Cr. 737; Rees v. Melville, [1914] Macg. Cop. Cas. 168; Hawkes & Sons (London) Ltd. v. Paramount Film Service Ltd., [1934] Ch. 593 (C.A.). FN72. Ladbroke (Football) Ltd. v. William Hill (Football) Ltd., [1964] 1 W.L.R. 273 (U.K. H.L.). FN73. Bramwell v. Halcomb (1836), 3 My. & Cr. 737; Campbell v. Scott (1842), 11 Sim 31; Leslie v. Young & Sons, [1894] A.C. 335 (U.K. H.L.); Tinsley v. Lacy (1863), 1 H. & M. 747; Neale v. Harmer (1897), 13 T.L.R. 209; Cadieux v. Beauchemin (1900), 10 Que. K.B. 255; affirmed (1901), 31 S.C.R. 370 (S.C.C.); Hawkes & Sons (London) Ltd. v. Paramount Film Service Ltd., [1934] Ch. 593 (C.A.); Carr v. National Capital Press Inc. (1934), 21 U.S.P.Q. 408; Zamacois v. Douville (1943), 2 C.P.R. 270 (Can. Ex. Ct.); Ravenscroft v. Herbert, [1980] R.P.C. 193 (Eng. Ch. Div.); Rotisseries St.-Hubert Lte c. Syndicat des travailleurs(euses) de la Rotisserie St.-Hubert de Drummondville (CSN) (1986), 12 C.I.P.R. 89 (C.S. Qu). FN74. Ladbroke (Football) Ltd. v. William Hill (Football) Ltd., [1964] 1 W.L.R. 273 (U.K. H.L.); Warwick Film Productions Ltd. v. Eisinger, [1969] 1 Ch. 508 (Eng. Ch. Div.); Ravenscroft v. Herbert, [1980] R.P.C.193 (Eng. Ch. Div.). FN75. Scott v. Stanford (1867), L.R. 3 Eq 718; Hogg v. Scott (1874), L.R. 18 Eq. 444; Hawkes & Son (London) Ltd. v. Paramount Film Service Ltd., [1934] Ch. 593; Ravenscroft v. Herbert, [1980] R.P.C. 193 (Eng. Ch. Div.); Slumber-Magic Adjustable Bed Co. v. Sleep-King Adjustable Bed Co. (1984), 3 C.P.R. (3d) 81 at 86 (B.C.S.C.). FN76. Leslie v. Young & Sons, [1894] A.C. 335 (U.K. H.L.); Hutton v. Canadian Broadcasting Corp. (1989), 29 C.P.R. (3d) 398 at 412 (Alta. Q.B.); affirmed (1992), 41 C.P.R. (3d) 45 (Alta. C.A.). FN77. [1916] 2 Ch. 601 (Eng. Ch. Div.). FN78. And see Ladbroke (Football) Ltd. v. William Hill (Football) Ltd., [1964] 1 All E.R. 465 at 471, Lord Reid (U.K. H.L.); but see Lambretta Clothing Co. v. Teddy Smith (U.K.) Ltd., [2004] EWCA Civ. 886 (U.K. C.A.), where this statement was categorized as an indication of the dangers of departing from the text and structure of the legislation. FN78.1. [2009] HCA 14 (High Court of Australia). FN78.2. In Australia the test for originality was said to be "skill and labour" but the High Court expressed doubt as to whether this was sufficient. See Chapter 7, part 7:6 for a discussion of the Canada test of "skill and judgment". FN79. Tinsley v. Lacy (1863), 1 H. & M. 747; Warne & Co. v. Seebohm (1888), 39 Ch. D. 73; Trading Auxiliary Co. v. Middlesborough (1889), 40 Ch. D. 425 and see Breen v. Hancock House Publishers Ltd. (1985), 6 C.P.R. (3d) 438 (Fed. T.D.).

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FN80. [1894] A.C. 335 at 342 (U.K. H.L.). FN81. (1836), 3 My. & Cr. 737 at 738. FN82. See also per Lord Cottenham L.C. in Saunders v. Smith (1838), 3 My. & Cr. 711 (Eng. Ch. Div.); Johnstone v. Bernard Jones Publications Ltd., [1938] 2 All E.R. 37 at 49. FN83. Hawkes & Son (London) Ltd. v. Paramount Service Ltd., [1934] Ch. D. 593. FN84. [1964] 1 All E.R. 465 at 477 (U.K. H.L.). FN85. And see per Lord Reid at 469, and per Lord Evershed at 473; Pitman & Turner v. Fletcher & MacDonald (1953), The Author, No. 1, p. 13. FN86. Bradbury v. Hotten (1872), L.R. 8 Ex. 1; Smith v. Chatto (1874), 31 L.T. 775; Leslie v. Young & Sons, [1894] A.C. 335 (U.K. H.L.) and see Federal Liberal Agency of Canada v. CTV Television Network Ltd. (1988), 24 C.P.R. (3d) 470 at 475-6 (Fed. T.D.); affirmed (1988), 99 N.R. 74 (Fed. C.A.); Hutton v. Canadian Broadcasting Corp. (1989), 29 C.P.R. (3d) 398 at 412 (Alta. Q.B.); affirmed (1992), 41 C.P.R. (3d) 45 (Alta. C.A.). FN87. Kelly v. Hooper (1839), 4 Jur. 21; Sweett v. Cater (1841), 5 Jur. 68 at 70, Shadwell V.C. FN88. [1960] 1 All E.R. 703 at 705 (Eng. Q.B.). FN89. Mawman v. Tegg (1826), 2 Russ. 385 (Eng. Ch. Div.); Shaw v. Butterworth (1855), 19 J.P. 804; G.A. Cramp & Sons Ltd. v. Frank Smythson Ltd., [1944] 2 All E.R. 92 at 97, Lord Porter (U.K. H.L.). FN90. Tonson v. Walker (1752), 3 Swan. 672; G.A. Cramp & Sons Ltd. v. Frank Smythson Ltd., [1944] 2 All E.R. 92 (U.K. H.L.). FN91. (1826), 2 Russ. 385. FN92. Kelly v. Hooper (1839), 4 Jur. 21; Bohn v. Bogue (1846), 10 Jur. 420; Scott v. Stanford (1867), L.R. 3 Eq. 718; Cooper v. Stephens, [1895] 1 Ch. 567 (Eng. Ch. Div.); Cambridge University Press v. University Tutorial Press (1928), 45 R.P.C. 335. FN93. Roworth v. Wilkes (1807), 1 Camp. 94. FN94. Bradbury v. Hotten (1872), L.R. 8 Ex. 1; Weatherby & Sons v. International Horse Agency & Exchange Ltd., [1910] 2 Ch. 297.

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FN95. Weatherby & Sons v. International Horse Agency & Exchange Ltd., [1910] 2 Ch. 297. FN96. Bramwell v. Halcomb (1836), 3 My. & Cr. 737 at 738, Lord Cottenham C.J.; Saunders v. Smith (1838), 3 My. & Cr. 711 (Eng. Ch. Div.); Kelly v. Hooper (1841), 1 Y. & C. Ch. Cases 197; Stevens v. Wildy (1850), 19 L.J. Ch. 190; Scott v. Stanford (1867), L.R. 3 Eq. 718; Chatterton v. Cave (1878), 3 App. Cas. 483; Cooper v. Stephens, [1895] 1 Ch. 567 at 572 (Eng. Ch. Div.); Neale v. Harmer (1897), 13 T.L.R. 209; Brookes v. Religious Tract Society (1897), 45 W.R. 476; Blackie & Sons v. Lothian Book Publishing Co. (1921), 29 C.L.R. 396 (Australia H.C.). FN97. [1892] 3 Ch. 489 at 496. FN98. See also Zamacos v. Douville (1943), 3 Fox Pat. C. 44 at 66 (Can. Ex. Ct.). FN99. Cadieux v. Beauchemin, 2 Can. Com. R. 337 at 350 (Que. K.B.); affirmed (1901), 31 S.C.R. 370 (S.C.C.). FN100. [1934] Macg. Cop. Cas. 467. FN101. [1934] Macg. Cop. Cas. 467 at 471. FN102. Weatherby v. International Horse Agency, [1910] 2 Ch. 297; British Broadcasting Co. v. Wireless League Gazette Publishing Co., [1926] 1 Ch. 433 at 442; Weatherby & Sons v. Galopin Press Ltd., [1931] Macg. Cop. Cas. 297; Football League Ltd. v. Littlewoods Pools Ltd., [1959] 2 All E.R. 546 at 555 (Eng. Ch. Div.). FN103. Canadian Tire Corp. v. R.C.U., Local 1518 of United Food & Commercial Workers Union (1985), 7 C.P.R. (3d) 415 (Fed. T.D.). FN104. Addison-Wesley Publishing Co. v. Brown (1962), 133 U.S.P.Q. 647, (1963), 139 U.S.P.Q. 47 . FN105. D'Almaine v. Boosey (1835), 1 Y. & C. Ex. 288; Neale v. Harmer (1897), 13 T.L.R. 209. FN106. Hanfstaengl v. Smith & Sons, [1905] 1 Ch. 519.

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Unclassified
Organisation de Coopration et de Dveloppement conomiques Organisation for Economic Co-operation and Development

DSTI/ICCP(2010)11/FINAL

22-Jun-2011 ___________________________________________________________________________________________ English - Or. English

DIRECTORATE FOR SCIENCE, TECHNOLOGY AND INDUSTRY

COMMITTEE FOR INFORMATION, COMPUTER AND COMMUNICATIONS POLICY

DSTI/ICCP(2010)11/FINAL Unclassified
THE ROLE OF INTERNET INTERMEDIARIES IN ADVANCING PUBLIC POLICY OBJECTIVES Forging partnerships for advancing policy objectives for the Internet economy, Part II English - Or. English JT03304378
Document complet disponible sur OLIS dans son format d'origine Complete document available on OLIS in its original format

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DSTI/ICCP(2010)11/FINAL

TABLE OF CONTENTS MAIN POINTS ............................................................................................................................................... 5 The role of Internet intermediaries .............................................................................................................. 5 Internet intermediaries evolving legal responsibilities .............................................................................. 6 Business practices and self- or co-regulatory codes .................................................................................... 7 Case studies: examples of Internet intermediaries practices ...................................................................... 7 THE LEGAL RESPONSIBILITIES OF INTERNET INTERMEDIARIES................................................ 10 Historical development ............................................................................................................................. 10 Global safe harbour regimes or ISP/intermediary liability limitations...................................................... 12 Legal uncertainties and jurisdictional variations ....................................................................................... 17 Pressure to filter ex ante rather than take down ex post ............................................................................ 22 An evolving view of Internet intermediary liability .................................................................................. 23 BUSINESS PRACTICES AND SELF OR CO-REGULATORY CODES.................................................. 25 Business practices: Internet intermediaries as platform regulators ........................................................... 25 Internet intermediaries self- and co-regulatory approaches can help advance public policy goals ......... 27 CASE STUDIES IN DIFFERENT POLICY AREAS ................................................................................. 30 Global free flow of information ................................................................................................................ 31 ISPS illegal content and child-inappropriate content ................................................................................ 44 Illegal Internet gambling ........................................................................................................................... 50 Copyright infringement ............................................................................................................................. 57 Online marketplaces and the sale of counterfeit goods ............................................................................. 70 Consumer protection in e-commerce payments ........................................................................................ 75 Other internet intermediary-related policy issues / competition ............................................................... 84 ANNEX 1. EXAMPLES OF ISSUES RELATED TO INTERNET INTERMEDIARIES ROLE ........... 85 ANNEX 2 ..................................................................................................................................................... 86 TRANSPOSITION OF THE 2000 EC E-COMMERCE DIRECTIVE INTO NATIONAL LAW ............. 86 TRANSPOSITION OF THE DIRECTIVE ON THE HARMONISATION OF CERTAIN ASPECTS OF COPYRIGHT AND RELATED RIGHTS IN THE INFORMATION SOCIETY OF MAY 2001 ............. 86 NOTES ......................................................................................................................................................... 87

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FOREWORD

Internet intermediaries Internet service providers (ISPs), hosting providers, search engines, ecommerce intermediaries, Internet payment systems and participative Web platforms provide essential tools that enable the Internet to drive economic, social and political development, for example by facilitating aggregation of demand, new models of collaboration, citizen journalism and civic participation. Yet intermediary platforms can also be misused for harmful or illegal purposes, such as the dissemination of security threats, fraud, infringement of intellectual property rights, or the distribution of illegal content. The Declaration on The Future of the Internet Economy, adopted at the OECD meeting at Ministerial level in Seoul in 2008, invited the OECD to: examine the role of various actors, including intermediaries, in meeting policy goals for the Internet economy in areas such as combating threats to the security and stability of the internet, enabling cross-border exchange, and broadening access to information. In response, the OECDs Committee for Information, Computer and Communications Policy (ICCP) undertook a broad project to gain a more comprehensive view of Internet intermediaries, their economic and social functions, development and prospects, benefits and costs, and roles and responsibilities as part of its programme of work. The first part of the project (The Economic and Social Role of Internet Intermediaries) developed a common definition and understanding of what Internet intermediaries are, of their economic function and economic models, and discussed market developments and the economic and social uses that these actors satisfy. The present report (The Role of Internet Intermediaries in Advancing Public Policy Objectives) is the second part of the project. It examines the roles and responsibilities of Internet intermediaries in advancing public policy objectives, as well as the costs and benefits of their involvement. After introducing how intermediaries could take on a policy role through responses to legal requirements; through industry selfregulation; and through their business practices, this report takes an issue-based approach to evaluate possible involvement of Internet intermediaries in helping to advance specific policy objectives. Case studies look at the free flow of information, reinforcing cyber-security, combating illegal content and child inappropriate content, deterring illegal online gambling, ensuring respect of copyrights and trademarks, and protecting consumers in e-commerce transactions. The third part provides a summary of the workshop on The Role of Internet Intermediaries in Advancing Public Policy Objectives, held in Paris on 16 June 2010. Its goal was to identify best practices and lessons learned from Internet intermediaries experience advancing public policy objectives. The report was prepared by Ms. Karine Perset of the OECDs Directorate for Science Technology and Industry (DSTI) under the guidance of Mr. Dimitri Ypsilanti, also of the OECDs DSTI. The legal section draws extensively on work by Ms. Lilian Edwards, Professor of E-Governance at Strathclyde University. Mr. Mark MacCarthy, Professor at Georgetown University, researched and drafted several case studies. The research of Mr. Bruno Basalisco of Imperial College Business School is also acknowledged. This paper has greatly benefited from the expert input of delegations from the Business and Industry Advisory Committee (BIAC), the Civil Society Internet Society Advisory Council (CSISAC), and the 3

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DSTI/ICCP(2010)11/FINAL Internet Technical Advisory Committee (ITAC), in addition to OECD member countries and observers. The support of the Norwegian Ministry of Government Administration and Reform and the Norwegian Ministry of Transport and Communications for this project is gratefully acknowledged. The report was declassified by written procedure of the Committee for Information, Computer and Communications Policy (ICCP) in February 2011.

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THE LEGAL RESPONSIBILITIES OF INTERNET INTERMEDIARIES

Historical development The liability of Internet intermediaries for content authored by or activities carried out by third parties known at first as ISP liability, but now much wider in scope was one of the earliest issues facing the emerging Internet industry.2 Early cases mainly originated in the United States and focused on the liability of early commercial Internet service providers (ISPs) such as AOL or CompuServe for hosting, transmitting or publishing material that was legally actionable, such as libellous, defamatory or containing pornographic content.3 Problematic content may originate from a party with whom the ISP had a contractual relationship, such as a subscriber, from a third party with no contractual relationship with the ISP, such as a newsgroup posting, or from the ISP itself. The policy issues raised by the different classifications of authorship, responsibility, control and types of content were generally not uniformly dealt with in early jurisprudence. The result was widely differing regimes both across legal systems and under the same legal system, depending on the type of content or the type of publisher, author or host. By 1995 the emerging US online industry recognised the serious threat posed by the risk of intermediary liability for content posted by third parties. The early Stratton Oakmont, Inc. v Prodigy Services Co. case suggested that service providers who assumed an editorial role with regard to customer content were publishers and thus responsible for their customers libel and other torts. It was feared that this responsibility might discourage providers from taking self-regulatory initiatives to monitor content. Partly in response, the US Congress enacted a provision now commonly known as Section 230 (part of the Telecommunications Act of 1996), which provided online service providers broad protection from liability for content posted by others. It is often considered to have contributed to the significant growth over the past 15 years of innovative online sites and services (especially user-generated content sites). In Europe, from the mid-1990s, the lack of harmonisation in emerging case law led to industry calls for special statutory regimes. In the late 1990s, the liability regime debate came to be seen, at least in Europe, not only as tied to different threats (libel, pornography, infringement of copyright, but also as a the more general problem of whether Internet intermediaries should be responsible for the content they made available to the public and whether they could take steps to manage this responsibility and limit their liability. At the same time, the issue of liability for third-party content or activities became a major concern not just for the traditional ISP community, but also for Internet hosts such as universities, traditional media organisations online, such as the BBC or the Times, software providers, libraries, chat rooms and blog sites, individuals with their own websites and emerging social networking sites. Potential liability also affected communications intermediaries such as Internet backbone providers, cable companies and mobile phone operators. Providers of telecommunications services, such as mobile operators, began providing content and value-added services such as geolocational data. This showed the need for an online intermediary liability regime that was practical, uniform, acceptable to industry and also protective of consumers, citizens, institutions and businesses.

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DSTI/ICCP(2010)11/FINAL The development of the limited liability paradigm Secondary liability exists in most legal systems. It applies liability to an individual or company based on the actions of another party.4 Principles of secondary liability are established in various jurisdictions; common law jurisdictions have the concepts of vicarious liability and contributory liability, and, in the United States, of inducement liability. The concept of authorisation exists in common law countries such as Australia and the United Kingdom, as well as liability based on joint tort-feasorship or aiding and abetting. In civil law jurisdictions, national civil codes contain general provisions imposing a duty of care and tort liability, which can be incurred by both direct and indirect infringers. Today, most intermediary liability issues involve: hosting and transmission of child pornography and other types of criminal content; material that infringes intellectual property rights, especially copyright but also trademarks, patents and publicity rights; and libellous or defamatory material. The growth of music, film and information content piracy and peer-to-peer networks in recent years has raised many issues. In addition to its adverse impact on authors and distributors of content, piracy has exposed ISPs and hosts to a volume and manner of potential risk different from that anticipated in early cases. As such, piracy concerns continue to reshape this area of law. Given their role as enablers of Internet publication, ISPs and hosts quickly became aware of their potentially high risks in content liability cases. Therefore, in the early to mid-1990s, these intermediaries plea for immunity from content liability around the world played a role in the development of immunity from liability provided by Section 230 as well as in the limitations on liability regimes in the United States copyright statute, the Digital Millennium Copyright Act (DMCA) and the EC Electronic Commerce Directive (ECD), Articles 12-15. The concerns of Internet intermediaries, ISPs in particular, were mainly of three sorts: i) the potential negative consequences of liability on growth and innovation; ii) their lack of effective legal or actual control; and iii) the inequity of imposing liability upon a mere intermediary (common carrier argument). On the first point, although the rise in illegal activity challenged legitimate business models, there were concerns that imposing liability on ISPs and hosts for content authored by others would stifle growth and innovation. These concerns are still present today in the broader debate about maintaining respect for legal norms in the online environment. Since growth and innovation of e-commerce and the Internet economy depend on a reliable and expanding Internet infrastructure, an immunity or limited liability regime was, and is, in the public interest. A related desire was to preserve the open and decentralised architecture of the still growing Internet. Second, Internet intermediaries argued that they could not manually check the legality of all the material that passed through their network routers or servers, and that it might not be feasible or possibly legal to do so without invading their subscribers privacy and confidentiality.5 Automation is one way to circumvent the problem of filtering large amounts of information, but in the late 1990s, content classification and filtering technologies remained very unsatisfactory and tended to under- and over-block significantly. In areas such as libel, false advertising and hate speech, where semantic meaning depends on human interpretation, filtering usually was, and still is in many cases, judged impractical.6 There were, and still are, questions about the effectiveness and proportionality of filtering from the technical, cost and operational perspectives, and some argue that they are easy to circumvent. The 2000 LICRA v Yahoo! case was a turning point. The defence presented to the French court argued that it was technically impossible for Yahoo! US, as host of online auctions, to block access to pages on its site selling Nazi memorabilia to all persons from France. The Court passed the question of automated filtering of requests from a particular location to a technical sub-committee for investigation. They reported

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DSTI/ICCP(2010)11/FINAL that, in fact, Yahoo! had the ability already used to put advertisements into the relevant language to users in a given country to identify and block access to 90% of French citizens.7 Accordingly, Yahoo! was instructed to block access. This decision related to content blocking for a particular location. In this case, third parties who posted items for sale on Yahoo! manually classified the types of items for sale. However, in cases of pure automated content classification, the view widely held was that Internet intermediaries could not yet successfully automate the filtering of unwanted material and remain in business. Furthermore, ISPs and hosts were exposed to risk as a result of content authored by parties with whom they most often had no contractual relationship. The LICRA v Yahoo! case also raised freedom of expression concerns for many in civil society. Finally Internet intermediaries in some countries argued that they were mere conduits, not content providers, and thus that it would be inequitable to hold them liable (Sutter, 2003). Their aim was to be treated not as creators or facilitators of content but as conduits like the postal service and phone companies which, in the United States, are not liable for content carried and are required to respect confidentiality. They did not want to be classified as publishers, because of the risks raised by making the content available to the public.8 From the mid-1990s, then, Internet intermediaries in the United States, Europe and elsewhere vigorously, and largely successfully, maintained that they should face only limited liability under certain circumstances, as established under statute. In the United States, in addition to Section 230, which established exemptions from limited liability, the DMCA in 1998 established caveats to the liability exemptions, in the form of safe harbours regarding copyright infringement. In Europe, the European Commission challenged the argument for limited liability of Internet intermediaries, based on their understanding of the role that ISPs and hosts could play in controlling online pornography, spam, libel and other forms of undesirable content. This was a policy goal not only for obvious reasons, such as child protection, but also as part of a general drive to improve public trust and confidence in the Internet as a safe space for economic activity. Before 2000, a rough consensus had emerged in both Europe and the United States that a balance needed to be struck. While recognising at a general level that different categories of ISPs perform different functions and require specific responses, ISPs should in principle be guaranteed exemption or limited exemption from liability for content authored by third parties. The consensus also held that, to benefit from this liability limitation, ISPs should in many cases be prepared to co-operate when asked to remove or block access to identified illegal or infringing content. Such liability limitation, or, safe harbour, as it is known in the United States, was implemented in Europe in the ECD and in the United States in the DMCA (copyright infringing material only). These regimes were to prove critically important to the ISP, ecommerce and emerging user-generated content (UGC) industries. Global safe harbour regimes or ISP/intermediary liability limitations As a result, most OECD countries adopted regulations from the late 1990s through the early 2000s that define specific liability regimes for actors such as Internet access providers, hosts and, less consistently, other Internet intermediaries. In most cases, they are organised around two broad principles: i) intermediaries are not responsible, in principle, for third-party content distributed or conveyed on the Internet or for transactions taking place, nor do they have a general monitoring and surveillance obligation; but ii) intermediaries nevertheless have specific obligations, which may vary by country, such as identifying users, preserving traffic data in response to qualified requests, removing (taking down) content upon receipt of a valid notice, etc. Over the years, legal frameworks for Internet intermediaries were developed, structured around two types of regulation: i) "horizontal" regulation such as Section 230 and the ECD which deals specifically 12

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DSTI/ICCP(2010)11/FINAL with the liability of intermediaries in various domains; and ii) "vertical" regulation which lays down rules for special domains (copyright, protection of children, personal data, counterfeiting, domain names, online gambling, etc.). Examples of the latter include the US Internet gambling law, the UK Defamation Act 1996, the US DMCA (see below), and the French Code montaire et financier for online fraud with a payment card. Some key distinctions made in various countries, to varying degrees, to regulate the liability of Internet intermediaries include: The intermediarys level of passivity. Generally speaking, the more an intermediary acts as a mere conduit, the less likely it will be considered responsible for actions of third parties using its platform. The nature of the relationship between originator or author of problematic content/activity and the Internet intermediary, and notably whether a contractual relationship exists (as between ISP and subscriber) or not (as between search engine and casual searcher). Whether there was any modification of the transmitted information. In the ECD, for example, activities which involve the modification of transmitted information do not qualify for limitation of liability. Whether the intermediary had knowledge of the online activity. Whether knowledge must be actual or may be constructive (drawn from facts and circumstances), and how it is obtained by the intermediary, has been a controversial issue (see below). Whether the intermediary acted expeditiously when notified of illegal activity. The ECD, for example, requires intermediaries to act expeditiously to remove or to disable access to such information on their systems or networks, if they are to avoid liability after obtaining actual or constructive knowledge of infringing or illegal activities. In the United States, two separate limited liability regimes were created for ISPs and hosts, one relating to all types of liability material except intellectual property (IP) and the other relating to liability for material infringing copyright. The former is found in Section 230(c), which provides a potentially broad granting of immunity from secondary liability in a variety of circumstances, except those relating to intellectual property or federal criminal liability, as long as the content in question was provided by a party other than the service provider (Lemley, 2007). The second regime, found in the DMCA, Title 17, Section 512, limits the remedies available in copyright infringement actions against Internet service providers who are eligible for safe harbours. These limits include immunity from monetary damages and a partial limitation on injunctive relief. Certain conditions apply to the limitation of liability and remedies, such as the disclosure of the identity of alleged infringers who have stored information on Internet intermediaries platforms or networks upon receipt of a subpoena, subscription to a detailed code of practice relating to notice, take-down and put-back, and a requirement to adopt a policy for the termination of accounts of repeat infringers in appropriate circumstances determined by the Internet intermediary. The regime is described below. In Europe, the ECD contains a harmonised horizontal regime, covering liability for all kinds of content, except gambling and privacy/data protection, which are exempted. Cases across Europe have covered material infringing copyright or trademark, which is in contempt of court, and which is blasphemous or racist, antisemitic or hate speech, etc. Some of these topics are explored in more detail in the case studies section of the present report. The ECD regime is described in detail below.

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DSTI/ICCP(2010)11/FINAL Variations in liability regimes according to the roles and policy issues involved Different types of Internet intermediaries may have different legal responsibilities under the various national or supranational regimes. Both the DMCA and the ECD divide service providers into useful categories by function. The most common categories are mere conduits (or communications or access providers), hosts, providers of caching services, and search engines (or information location tools) or other linking intermediaries. 1. United States In 1996, Congress passed the Communications Decency Act (CDA) in an effort to prevent minors from accessing adult speech. In that act, Congress responded to concerns that ISPs making efforts to filter out adult content would render themselves liable as publishers and would discourage editorial activity by ISPs. To address this concern, Section 230(c) was passed, providing that: No provider or user of an interactive computer service shall be treated as the publisher or speaker of any information provided by another information content provider.... No cause of action may be brought and no liability may be imposed under any State or local law that is inconsistent with this section. Section 230(c) has been interpreted broadly to apply to many forms of Internet intermediaries, including ISPs, hosting providers, mailing lists, and online auction and listing sites, and in many types of publication tort including defamation, privacy or inducing prostitution. Its breadth has been criticised as unfair to true victims, e.g. of online libel. However, many commentators justify this breadth on grounds that freedom of speech would otherwise be chilled, i.e. constrained; they consider that Section 230 enables Internet intermediaries to enjoy limited liability and promote the free flow of information, while also making business choices about content deemed offensive by users. In contrast to the broad immunity of Section 230(c) for offenses regarding the content of online communications, the 1998 DMCA creates a limited liability regime for copyright liability. Title II of the DMCA, the Online Copyright Infringement Liability Limitation Act (OCILLA), creates a safe harbour for Internet service providers against copyright liability if they adhere to and qualify for certain prescribed safe harbour guidelines and promptly block access to allegedly infringing material (or remove such material from their systems) if they receive a notification claiming infringement from a copyright holder or the copyright holder's agent.9 Four classes of intermediaries are given immunity on certain terms known as safe harbours: mere conduits such as telephone companies, which simply transmit packets sent by A to B without modifying them; hosts that store or cache content authored by another; and linking tools, which includes search engines and hyper-linkers (e.g. price aggregators) [Section 512 (a, b, c, d)]. Because these classes were set in 1998, their application to technologies developed later, such as peer-to-peer networks and online auction sites, has not always been clear [MGM v Grokster 545 U.S. 913 (2005)]. Importantly, most of these protected classes of intermediary benefit from the safe harbour only if they establish, publicise and implement both a notice and take-down (NTD) system for removing content when copyright owners complain, and a policy for terminating the accounts of repeat infringers in appropriate circumstances determined by the Internet intermediary, and only if they accommodate technical measures. The DMCA, like the ECD, and unlike the CDA, also allows suit for injunctive relief against an intermediary. 2. The European E-Commerce Directive (ECD) regime Intermediary service providers: definition Articles 12-15 of the EC E-Commerce Directive (ECD) introduced throughout Europe a harmonised regime on the liability of Internet intermediaries.10 The regime affects not just ISPs but also ISSPs, i.e. information society service providers, or, as the title of Section 4 of the ECD calls them, intermediary

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DSTI/ICCP(2010)11/FINAL service providers. An information society service is defined as any service normally provided for remuneration, at a distance, by means of electronic equipment for the processing (including digital compression) and storage of data, and at the individual request of a recipient of a service.11 Recipient of a service is defined as any natural or legal person who uses an information society service. Broadly, the ECD intermediary service provider liability regime covers not only the traditional ISP sector, but also a much wider range of actors involved in: selling goods or services online (e.g. ecommerce sites such as Amazon and eBay); offering online information or search tools for revenue or not for revenue (e.g. Google, BBC News website, MSN); and pure telecommunications, cable and mobile communications companies offering network access services.12 The ECD notes explicitly that although a service may be free to the recipient, this does not mean that the provider of that service necessarily falls outside the scope of the ECD if the service broadly forms part of an economic activity. Given that a successful intermediary revenue model is to give away a major product or service but then make money out of it in lateral ways on two-sided markets (e.g. search engines, which give away search services but generate revenue from associated advertising), the ECD definition of a service provider is generally interpreted widely.13 The ECD also excludes from its remit certain relationships not provided wholly at a distance, as well as activities such as taxation, competition law, activities of notaries and gambling. Liability for privacy or data protection breaches is also excluded from the ECD scheme. Limitation of Liability/Notify and Take-Down Approach The ECD, as noted above, takes a horizontal approach to intermediary service provider liability. Furthermore, rather than giving wide immunity in all circumstances, like the US CDA Section 230(c), its approach is to address their various activities separately. When intermediary service providers act as a mere conduit, i.e. as a relay transmitting content originated by and destined for other parties, the ECD, in Article 12, regards them as basically absolved from all liability, as long as the service provider does not initiate the transmission, does not select the receiver of the transmission or does not modify the information contained in the transmission. When service providers cache material, they are not liable for it under the same conditions. In addition, the cached copy must be updated regularly according to industry practice and the intermediary service provider must take down cached copies once it obtains actual knowledge that the original information has been removed or access to it disabled, or that a competent court or authority has ordered the removal or blocking of access. Discussion in the EC regime has mainly centred on the hosting provisions in Article 14, which deal with circumstances in which intermediary service providers host or store more than transient content originated by third parties. Under Article 14, they are exempt from criminal liability in respect of the storage of information provided by a recipient of their services, so long as they have no actual knowledge of illegal activity or information; and they are immune from civil liability as long as they have no such actual knowledge and are not aware of facts and circumstances from which the illegal activity or information is apparent. In addition, Article 15 provides that EC member states are not to impose any general monitoring requirement on intermediary service providers, and especially a general obligation actively to seek facts or circumstances indicating illegality. This has generally been taken to mean that intermediary service providers cannot be required to look for and filter out illegal content on a constant, ongoing basis, since this would counteract the notice and take-down limited liability paradigm. 15

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DSTI/ICCP(2010)11/FINAL Recital 48 provides however that it is still possible for states to require intermediary service providers to apply duties of care which can reasonably be expected from them and which are specified by national law, in order to detect and prevent certain types of illegal activities. For example, UK service providers are asked to monitor and intercept transmissions under the Regulation of Investigatory Powers Act 2000 for purposes of crime prevention and national security. However, some argue that duties of care should not be read as extending to duties under private rather than public or criminal law, since that would negate the point of Article 15 on general monitoring obligations (Bagshaw, 2003). In practice, the main debate to date in countries such as the United Kingdom around Articles 14 and 15 has concerned not constructive knowledge but actual knowledge and the effect of notice and take-down on free speech. In the future, however, as discussed below, the main issue may be whether rights holders find that notice and take-down is enough to meet their claims or whether the regime should in some cases require intermediaries to take proactive measures, such as monitoring and filtering in advance. 3. Other countries Similar rules are found in other OECD countries. Canada has passed legislation relating only to copyright and giving service providers a similar mere conduit liability limitation: a person whose only act in respect of the communication of a work or other subject-matter to the public consists of providing the means of telecommunication necessary for another person to so communicate the work or other subject-matter does not communicate that work or other subject-matter to the public.14 The Canadian Supreme Court interpreted this provision of the Copyright Act to exempt a service provider from liability when it acted as a mere conduit.15 In that case the court also interpreted the statute to require something akin to the notice and take-down provision of the DMCA.16 In Australia, an online intermediary liability regime relating only to adult content has received significant international attention. The Broadcasting Services Amendment (Online Services) Act 1999, amending the Broadcasting Services Act 1992, requires Australian service providers and mobile operators to remove from their servers content officially classified as adult or unsuitable for minors by the Australian Communications and Media Authority (ACMA, formerly the Australian Broadcasting Authority, ABA) on receipt of a take-down notice from that body.17 Attempts to extend this regime to require ISPs to block access to similar material identified on foreign servers were on hold in mid-2010 (see the case study on illegal content and child-inappropriate content). Korea regulates liability of Internet intermediaries for both copyright and illegal content. The Korean Act on Promotion of Information and Communications Network Utilization and Information Protection (), as amended in 2002, and the Copyright Act of April 2009, exempts online service providers from liability, fully or in part, provided they take down illegal content on notice, temporarily make inaccessible (place provisional blindings) content that is deemed harmful (e.g. defamation), or attempt to prevent or stop reproduction and interactive transmission of content deemed to infringe copyright. Internet intermediaries may post a response if they disagree with the notification. Iceland proposed a parliamentary resolution in June 2010, the Modern Media Initiative, which aims to turn Iceland into a supportive and attractive jurisdiction for the publication of investigative journalism and other threatened online media, with the worlds strongest press and whistleblower protection laws. The relevance is that it includes rules on the protection of intermediaries based on the prevalent ECD model.18 Many developing countries still have no rules but tend to regard the DMCA and ECD as potential models. Some enhanced engagement countries have rules.

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DSTI/ICCP(2010)11/FINAL China regulates liability for material infringing copyright and other types of intellectual property. The Regulation on Protection of the Right to Network Dissemination of Information of 2006 grants limitations of liability to network service providers, including search and linking providers, for hosting IP-infringing material on certain terms. In addition to the online copyright law, the Central Bank of China issued on 21 June 2010, a first set of regulatory measures for Chinese non-bank third-party payment processors. These rules are expected to affect profoundly Chinas third-party payment services, an important feature and integral part of e-commerce. Eventually not only will third-party payment service providers be affected, but e-commerce itself. India introduced for the avoidance of doubt a wide provision in its IT Act 2000 that no person providing any service as a network service provider shall be liable under this Act, rules or regulations made thereunder for any third party information or data made available by him if he proves that the offence or contravention was committed without his knowledge or that he had exercised all due diligence to prevent the commission of such offence or contravention. This mainly related to the cybercrime offences defined by the Act. The IT Amendment Act 2008 refines the section to correspond more closely to the DMCA/ECD model of near-total immunity for mere conduits and notice and take-down for hosts. Legal uncertainties and jurisdictional variations Since legal regimes concerning Internet intermediaries were established, the scope, activities and actors in the Internet landscape have continued to evolve, creating ongoing regulatory challenges and a large quantity of case law. This is leading several OECD countries to consider how best to reconcile current liability regimes with emerging issues or ongoing issues that have increased in scale. Questions include, for example, the responsibility of auction platforms for preventing counterfeiting on their platforms, the role of social networking sites in responding to child protection issues on their networks, or whether sellers of advertisements and other advertising intermediaries must monitor the content of these advertisements for trademark infringement or misleading advertising. Issues in this section include: The meaning of expeditious take-down in the ECD, e.g. whether expeditious means one hour, one day or one week. Distinguishing hosts from content providers. In the world of social networking sites, online marketplaces and video platforms, whether intermediaries, especially some of the newer types, are hosts or content providers. Legal uncertainties: Sometimes case law by two courts differs on the same issue in the same country. For example, different courts in France have categorised video-hosting sites (see below) as hosting providers or as publishers. The impact of notice and take-down on freedom of speech and whether there is abuse of NTD systems that may result in chilling, i.e. restraining, speech. The status of search engines and hyperlinks: The ECD, for example, does not explicitly mention a separate safe harbour provision for search engines, although these play a key role in the Internet economy. Countries such as the United States (for copyrighted material), Bulgaria and Romania have explicitly included search engines in national legislation; elsewhere, case law attempts to fill in. Linking liability and peer-to-peer: whether a sharp line can be drawn between sites that enable users to search for and locate copyright-infringing material (e.g. with BitTorrent technology) to separate good hyper-linkers that link only to legal content and deserve limitations of liability, from bad ones, which do not.

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DSTI/ICCP(2010)11/FINAL Meaning of expeditious take-down in the ECD regime The ECD provides that as long as an intermediary service provider acts expeditiously to remove or to disable access to the information it hosts, it retains immunity even after notice. The directive gives no guidance as to what expeditious means, however, and whether it allows enough time to check a claims validity or consult a legal expert before taking down. In the UK Mumsnet case, for example, the defendants settled, apparently because they were unsure whether even removal within 24 hours was expeditious.19 National implementations of the ECD often provide no further guidance, although in the United Kingdom, the specialised Electronic Commerce Directive Regulations 2007, which provide specific immunities for service providers from offences under the Terrorism Act 2006, do prescribe that take-down must take place within two days. Take-down periods vary from 24 hours to about a week, depending on the type of content and the size of the organisation (Edwards, 2007). In large organisations, it may take some time to find the right employee or to locate the page on a large website, while in small intermediary service providers it may be difficult to identify the employee responsible. The German Multimedia Act provides for liability to arise only after the intermediary service provider has failed to take reasonable steps. Distinguishing hosting providers from content providers: the roles of knowledge and financial gain When the ECD was originally debated, the distinction between an online hosting service provider and a content provider was quite clear. Since then, the growth of participative networking platforms and interactive marketplaces has blurred this distinction, with owners encouraging subscribers to use platform facilities to publish and share their own user-generated content (UGC) to generate advertising revenue (Perset, 2010).20 Over 500 million users had Facebook accounts and 2 billion videos were served on YouTube daily as of July 2010.21 This raises the question of whether a site that gains financial or other benefit from hosting illegal or infringing content should be at least partly liable for infringement or other offenses associated with distributing the content. A further question concerns the role that knowledge of illegal or infringing activity should play in establishing intermediary liability. When a so-called neutral intermediary bases its business model on hosting large amounts of UGC, some of which is anecdotally well known to be illegal or actionable, should it bear some responsibility, even when no notices have been served? This is the constructive knowledge provided for by the ECD in relation to civil, though not criminal, liability in Article 14. For some IP right holders, these issues have become crucial to their economic survival. So far, however, the legal response from the courts has varied. Some key areas are discussed below. Online marketplaces and liability for trademark infringement Online marketplaces are known to have listings that advertise counterfeit goods. For trademark holders, the first response is to give notice of listings which attempt to sell counterfeit goods. Online marketplaces usually take down listings expediently to avoid contingent liability. However, policing such a notice and take-down policy takes significant vigilance by brands, which inevitably act after the fact. For trademark holders, a more desirable solution would probably be to compel online marketplaces to filter out listings containing infringements in advance. The typical argument is that online marketplaces must have some degree of knowledge of, and control over, their listings because their revenue comes from commissions on listed sales, and because they provide software for automated categorisation of, and search for, items. Consequently some have argued that online marketplaces must have constructive knowledge of infringement that disqualifies them for immunity under Article 14. Accordingly, in Louis Vuitton Mot Hennessy (LVMH) v eBay, a French court found, despite the immunity provisions of the ECD as

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DSTI/ICCP(2010)11/FINAL implemented in French law, that eBay was responsible for failing to prevent the sale of counterfeit luxury goods on its site.22 However in a very similar dispute in the United States, eBay won and Tiffany lost.23 The case was argued under the rules of US trademark and unfair competition law. The US District Court held that it was the trademark owners burden to police its mark and companies like eBay cannot be held liable for traders based solely on their generalised knowledge that trademark infringement might be occurring on their websites. In the United Kingdom, eBay won another decision in 2009, but the merits of the case with regard to intermediary service provider liability were not dealt with in detail pending a referral to the European Court of Justice (ECJ) that was outstanding in July 2010.24 Until the ECJ reaches a final determination, or the ECD is revised, the outcome of such cases is likely to be uncertain. In the Google AdWords case, the question was whether Google was liable for trademark infringement because it allowed companies to advertise on its site using trademarks owned by competitors.25 The court held that Google was entitled to claim immunity under Article 14 of the ECD if Googles role [was] neutral in the sense that its conduct is merely technical, automatic and passive pointing to a lack of knowledge or control of the data which it stores. It stated (paragraph 116) that the mere facts that the referencing service is subject to payment, that Google sets the payment terms or that it provides general information to its clients cannot have the effect of depriving Google of the exemptions from liability provided for in Directive 2000/31. Therefore, the key issue seemed to be knowledge or awareness rather than financial gain. The case of Viacom v YouTube is another example, from the United States, of a UGC intermediary generating revenue from hosting content supplied by others, some of which is infringing, not of trademarks but of copyright. In 2007, Viacom, owner of the rights to numerous entertainment television programmes and movies, sued Google, as owner of YouTube, for copyright infringement involving the unauthorised posting of clips from properties owned by Viacom (such as MTV videos, or TV comedy clips).26 In US law, the DMCA, Section 512(c)(i), holds a service provider immune from liability for copyright-infringing content if it does not have actual knowledge of such content, or is not aware of facts and circumstances which make such infringing activity apparent if the infringing material is taken down or access blocked expeditiously. In June 2010, a US district court decided at first instance that YouTube was entitled to the safe harbour of the DMCA27 and granted Googles motion for summary judgment.28 The court held that loss of immunity required knowledge of specific and identifiable infringements of particular individual items and that mere knowledge of such activity in general is not enough. Viacom filed a notice of appeal with the Second Circuit appellate court in August 2010. In the meantime, YouTube has worked with the content industry to develop an automated system, known first as Claim Your Content and now as Content ID, which enables both copyright holders and YouTube to generate advertising revenue from copyright-protected content that is uploaded to YouTube. More specifically, Content ID enables holders of IP rights to submit the content they want protected to YouTube, which embeds a watermark hash against which user-supplied videos are compared. If the content to be uploaded matches a known copyright item, then the rights holder can ask YouTube to block it entirely, to monetise it by placing ads next to it, with the rights holder sharing in the revenue, or alternately to gather statistics on who views the content and where.29 YouTube thus appeared to have voluntarily made available the pre-emptive filtering solution which Tiffany had proposed in the eBay case. YouTubes Content ID solution is automated and thus economically feasible for them while rights holders must do the work of identifying their content to YouTube.

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DSTI/ICCP(2010)11/FINAL Host or publisher? Some European courts have tended to avoid the immunity provisions of the ECD (as locally implemented) in contentious web 2.0 cases, by classifying a site as a publisher rather than an intermediary. In the French MySpace decision of 22 June 2007, a French cartoonist whose sketches had been posted without his authorisation successfully sued MySpace for infringement of his authors rights and personality rights.30 The court found that MySpace should be classified as a publisher because it provided "a presentation structure with frames, which is made available to its members" and "broadcasts advertising upon each visit of the webpage, from which it profits". As a result MySpace did not benefit from the hosting immunity provision of Article 6.I.2 of the Law on Confidence in the Digital Economy. Instead, in another French case, Dailymotion, the court found that Dailymotion, a French video platform, was not a publisher.31 Nonetheless, the court reached the same decision as in the MySpace case. It ruled that Dailymotion, although classed as a hosting provider, was still liable for providing Internet users with the means to commit copyright infringement, because the success of Dailymotions website depended upon the broadcast of famous works because ... these works captured larger audiences and ensured greater advertising revenues. The court also found that Dailymotion should have exerted prior restraint on access to copyright infringing works, that is, it should have installed effective filtering tools. Since it had not, it was liable. Such decisions in France and elsewhere show that every case depends on the facts at hand and that the ECD is interpreted differently across jurisdictions in the European Union and indeed within the same member state. These differences are compounded by differences between the European Union, the United States and other jurisdictions. An additional reason for the persistent lack of consistency in web 2.0 jurisprudence is that litigation may simply not occur, not because there may be no grounds for liability, but because business sense leads to negotiated settlement or overlooking the issue. Freedom of speech and potential chilling effects of the notice and take-down paradigm Many have claimed that NTD regimes can exert a potential chilling effect on freedom of speech. In the early UK case of Godfrey v Demon Internet, a British physicist, Lawrence Godfrey, alleged that an anonymous hoax message posted in a newsgroup, soc.culture.thai, in 1997 was libellous. Godfrey asked the ISP, Demon, which carried the newsgroup in question, to remove the offensive posting. When Demon did not comply, Godfrey sued Demon, as publisher, for libel. In essence Demon pleaded that it did not know the text was libellous.32 However the court held that because Demon had been notified and had not removed the post, it lost the benefit of its statutory immunity as host. The interpretation of Godfrey by many United Kingdom ISPs was that, to avoid the risk of litigation, they should remove or block access to any notified item without detailed investigation. Cyber-liberties groups protested that this meant any competitor or pressure group could censor text posted on the Internet simply by complaining to the intermediary service provider. A factor that might deter an intermediary service provider from taking down is the fear that unfounded take-down could lead the content provider to claim breach of contract, although acceptable use clauses in subscriber contracts can help control this risk. In the US DMCA, when an intermediary service provider takes down in good faith, it is protected from any such liability. Such protection does not exist in the ECD; however, it is a minimum harmonisation, so that states have discretion to introduce it. European intermediary service providers likely still regard default take-down on demand as their safest and easiest option. UK and US research shows that the incentive to take down content upon receipt of a NTD request weighs more heavily than the potential costs of not doing so.33 In the United States, one study concluded

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DSTI/ICCP(2010)11/FINAL that almost a third of take-down requests made by rights holders under the DMCA were substantively or procedurally flawed and over half of demands for link removal came from competitor companies.34 In the United States, the DMCA builds in a number of safeguards to discourage arbitrary NTD. Any take-down notice must be notified to the content provider, which can file counter-notice to object to the removal of the material. In this case it can be put back by the service provider, although it is not required to do so.35 If the original notifier continues to dispute the legality of the content, and the content provider to assert it, the argument must be taken to the courts. While the dispute is in progress, the service provider is given safe harbour to keep the content up, free from liability, even if in the end a court decides the content is illicit or actionable. Nothing in the EC regime requires notification to the site whose content is taken down; this is largely a matter for each intermediary service providers contractual rules and internal procedures. The DMCA also has strict rules to ensure that the person demanding take-down properly identifies himself as the person with the right to demand take-down (using digital signature identification if requesting take-down by email) and specifies details to enable the offending content to be easily located. This discourages fraudulent, unauthorised or over-broad complaints. For example, Section 512(f) of the DMCA allows Internet users whose content has been wrongfully removed to bring a lawsuit against a party that knowingly materially misrepresents that material or activity is infringing for damages or an injunction. In one instance, a US court found that a copyright holder violated 512(f) by sending takedown notices regarding documents posted under the fair use exemption.36 Search engines and hyper-linkers Linking liability is another issue expressly dealt with by the DMCA but not addressed in the ECD. It is particularly critical for search engine sites, which create links to material over which the search engine has neither legal nor practical control. Hosting as detailed in ECD Article 14 requires storage, which seems to imply that merely making a hyperlink to content may not constitute hosting. The DMCA by contrast expressly limits immunity when a link is made to infringing material under certain conditions.37 Although the European Commission specifically instructed countries to investigate linking liability on an ongoing basis by Article 21(2) of the ECD, only a few states have so far created special linking immunities. This creates inconsistency across Europe.38 Since the drafting of the ECD, aggregators which essentially make links to a wide variety of upstream content over which they have no editorial control and may or may not have technical control to remove individual links have also become important Internet intermediaries. Aggregator sites, like search engines and tagging sites, are generally seen as a public good in terms of promoting access to knowledge, information management, consumer choice and competition.39 Many have therefore suggested incorporating immunity from linking liability into the ECD intermediary scheme in future to reduce business risk and to harmonise within Europe and with the US DMCA scheme. 40 However, the argument for not doing so is the fact that very few cases in Europe have created problems by ascribing liability to search engines in respect to links made.41 The ECJ has looked at the liability of Google as a host but not as a linking intermediary.42 The question of linking liability in the European Union thus remains a matter for the domestic law of each member state. This issue is significantly complicated by the operations of clearly infringing sites (such as Pirate Bay) which operate by providing links to infringing materials, rather than hosting and distributing the content directly. Linking liability and the illicit P2P file-sharing problem When downloading and file sharing became a major issue for the content industry in 2000-05, litigation was pursued globally against sites such as Napster43 and Grokster for authorising or promoting copyright infringement. These applications based on peer-to-peer (P2P) technology did not host infringing

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DSTI/ICCP(2010)11/FINAL files themselves, but pointed to such files held by others. Napster originally aided unauthorised file sharing by providing a centralised database index to music files hosted by others; later, P2P-powered client sites, such as Grokster, provided software that helped locate the uploaders. The Supreme Court in Grokster held that there was liability for inducement of infringement. It based its analysis of the technology providers culpability not on the distribution of the technology, but on the providers intent to induce infringement. Modern decentralised protocols such as BitTorrent make it difficult to find a critical central chokepoint intermediary to sue, but still depend on intermediary sites, such as the well-known Pirate Bay,44 which host files known as torrents. Torrent files are text files which, when installed on a P2P software client, point to other users using the same P2P client and network, from whom parts of the desired file can be downloaded. Combating illegal P2P file sharing would be easier if torrent hosts were considered to be infringers of copyright; such a ruling was made for the first time in a Swedish court, in 2009. The courts found that the operators of Pirate Bay had criminally infringed Swedish copyright law, and sentenced them to a year in jail and a GBP 2.4 million fine.45 Some argued that Pirate Bay merely provided links to offending files, and did nothing more than search engines like Google, but the Swedish court found that both their awareness of illegality and their acts were very different. Since Pirate Bay posted take-down letters sent by copyright owners on its site to ridicule them, the court determined they had actual knowledge of copyright infringement but failed to take action. Furthermore the court found financial complicity, given that the Pirate Bay operators generated sizeable revenue from advertising on the site. In addition, the majority of files Pirate Bay linked to were protected by copyright, an indication that their business model was substantially based on infringement. As a matter of policy, the question arises as to whether a clear theoretical line can be drawn between good hyper-linkers, which deserve limitations on their liability, and bad hyper-linkers, which do not. The question is how to make an objective assessment: by revenue models (both Pirate Bay and search engines generate revenue from site advertising), by the type of content accessed (the Swedish court emphasised that most content linked to by Pirate Bay torrents was infringing, while content search engines link to a mix of infringing, licensed and non-copyright work); or by the intention of the site operators and the intention of their users. As seen in the US Viacom case, which is however currently under appeal, the district court decided that YouTubes fulfilment of its notice and takedown provisions absolved it from liability under the DMCA, despite more subjective claims that YouTube had knowledge of infringement on its network. In another case, the ECJ seemed willing to engage in more subjective factors by introducing in the Adwords case the notion of the neutral intermediary. Disagreement seems to be emerging as to whether the new types of intermediaries should be structurally independent of their users in order to warrant immunity from liability. Pressure to filter ex ante rather than take down ex post Overall the preceding discussion has suggested some pressure, supported by luxury goods trademark holders, publishers, and video or music rights holders, to move from the currently prevalent NTD solution, which only obliges intermediaries to remove illegal or actionable content ex post, to filtering solutions, which monitor content and if needed reject it. This trend can be observed in the intellectual property field, and in some countries Internet intermediaries are asked to take action against repeat infringers rather than merely asked to remove infringing works. Several roles have been proposed and some enacted for ISPs, such as disclosing the identities of file sharers, with or without a court order;46 notifying file sharers that their illegal downloading has been observed; blocking access to known P2P sites; traffic prioritisation; and operating a policy of

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DSTI/ICCP(2010)11/FINAL notice and disconnection, i.e. eventually removing or suspending the repeat offenders Internet access if the alleged infringing activity continues after several notifications (known as graduated response). There is support from some law enforcement agencies (LEAs) and child protection agencies for ISPs to be required to filter out online child pornography (see the case study on Illegal Content and Child sexual abuse material). Yet another area in which ISPs are being encouraged by some to help fix problems is Internet security (see the case study on ISPs and Malicious Software (Malware) Security Threats). Such cases reflect an evolution of the view that Internet intermediaries should not be liable without specific notice for content created by third parties, nor made liable if they refuse to filter it, monitor it, investigate it, etc. An evolving view of Internet intermediary liability Three factors were once put forward by the emergent ISP industry to secure regimes of immunity from or limitations on liability: i) if ISPs were held liable, the consequences for the public interest in terms of growth and innovation in the Internet economy could be harmful; ii) ISPs could not exercise effective factual or legal control over the content or activities of others; and iii) ISPs were not morally responsible for the content or acts of others. By 2010, it had become appropriate to consider whether and how these factors have evolved across all sizes of enterprises. However, with access to and ability to use the Internet increasingly indispensable to fully function in society, ensuring that intermediaries are able to provide these essential services may be more important than ever, and this may involve continuing to limit their liability for the wrongful conduct of third parties. Today, the Internet economy is more mature. Internet service industries are well established, multinational and often now part of larger business entities. Special start-up immunities may seem less necessary for large established entities, although they might still benefit new start-up Internet service entities. A significant change has been technological. Automated filtering of some infringing material, such as hosted content but not necessarily content in transit carried by ISPs, is increasingly possible, even though this raises serious technical and practical problems for many small-scale intermediaries. Without the cooperation of rights holders, as in YouTubes Content ID, such technologies still appear very demanding in terms of resources and subject to a degree of inaccuracy. When determination of illegality is contextual and subjective, such as libellous or obscene content, filtering is likely to remain impossible to automate in any foreseeable future. Even schemes for blocking obscene content which claim success, such as the UK Internet Watch Foundation (IWF), are based on blacklists built from human complaints and scrutiny, or classified by expert humans, as in the Australian system, and thus block only a tiny percentage of the obscene content accessible on the Internet. Even in areas such as copyright, which are more amenable to automated detection, defences of fair use and fair dealing raise issues that need to be considered and may be difficult to fit into automated systems.47 Systems, such as PhotoDNA, promise improvements in filtering of child abuse images, but the technology cannot be extended to other types of content.48 If filtering could to some extent be automated, the question would then shift to whether it should be mandated, given the possibilities of error, scope creep and effects on free speech, as well as the costs imposed on intermediaries and copyright holders. The required degree of accuracy, the level of costs that is justified, what can be reasonably be expected from intermediaries and what trade-offs are acceptable in terms of free speech, privacy, due process and restraints on access to knowledge, and who decides what the trade-offs should be are all critical questions.

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DSTI/ICCP(2010)11/FINAL Finally, there is the argument that the intermediary should not be held responsible for the wrongs of third parties. There are in fact no proposals to hold intermediaries responsible for the wrongs of third parties. Rather, consideration of the appropriate burden on intermediaries relates to determinations about the duty of care to be exercised in conducting their business. Lawsuits against large intermediaries, such as eBay and YouTube, indicate a relative weakening of the mere conduit argument in some countries. This can be attributed to the decline of the simple access provider, the development of services offered at no direct cost to users through advertising, and the sense that some intermediaries are engaged in a common enterprise with their infringing users. However, the revenues of many ISPS or hosting providers come directly from delivering hosting and Internet access services, rather than advertisements. Many are not large companies. These actors include important industries such as server farms and cloud computing service providers whose needs must also be considered. At the same time, incentives to place liability burdens on intermediaries seem to have increased. Consequently, the concept of safe harbours is sometimes interpreted more flexibly, as courts in some OECD countries attempt to take new circumstances into account. Even in the jurisprudence of the US Communications Decency Act, Section 230(c), which generally grants not limited but total immunity to online service providers in respect of publication torts, this immunity has been questioned in cases such as Grace v EBay,49 Fair Housing Council v Room Mates,50 Doe v Friendfinder51 or Barnes v Yahoo!52 Overall, in 2010 in the United States, there seemed to be no real drive towards reform of the DMCA or the CDA Section 230, although judicial interpretation was critical. In Europe, ways of getting around intermediary immunity allowed under the ECD, e.g. the seeking of injunctive relief and demands to reveal the identity of anonymous or pseudonymous content providers, were used more and more by rights holders and other aggrieved parties. Attempts had been made to find intermediaries liable on the basis of constructive as well as actual knowledge. In many OECD countries, there had been pressure on non-traditional intermediaries such as ecommerce payment intermediaries at least to self-regulate to help control illicit content. ISPs rely more and more on technical methods of access prevention (Edwards, 2005). In Europe, the immunity provisions of the ECD in Articles 12-15 were, after some delay, to be reviewed, with a consultation launched in August 2010 by the European Commission and a communication expected before the end of 2010.53 In the meantime a large number of references for clarity on Articles 12-15 were pending at the ECJ. With or without supranational legislative or judicial intervention, there seemed to be a move towards piecemeal European laws as interpreted by national courts, national legislatures and industry sector regulators. REFERENCES Bagshaw, R. (2003), Downloading Torts: An English Introduction to On-Line Torts, E-Commerce Law. Edwards, L. (2000), Defamation and the Internet and Pornography and the Internet in Edwards L. and C. Waelde, eds., Law and the Internet: A Framework for Electronic Commerce, Hart. Edwards, L. (2007), From Casual Censorship to Cartelisation? ISP Control of Illegal and Harmful Content, 3rd IDP Conference on Internet, Law, and Politics, Barcelona. Edwards, L. (ed.) (2005), The New Shape of European Electronic Commerce, Hart. Lemley, M. (2007), Rationalising Safe Harbors, 6 J. On Telecomms and High tech L 101, at 102-105. Perset, K. (2010), "The Economic and Social Role of Internet Intermediaries", OECD Digital Economy Papers, No. 171. doi: 10.1787/5kmh79zzs8vb-en. Sutter, G. (2003), Dont Shoot the Messenger? The UK and Online Intermediary Liability, 17 Intl Rev L, Computers and Technology. 24

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