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Here is the next case that illustrates the potential pitfalls when dealing with social media:

This recent US copyright decision involving Agence France Presse (AFP) and photographer Daniel Morel dealt with the rights of a news publisher to publish images posted to Twitter.

Mr. Morel is a photojournalist who took a number of images of the 2010 earthquake in Haiti. He then posted those images to Twitter. Those images were picked up by AFP who “licensed” the images on to Getty Images.

When Morel complained, steps were taken to have the images removed from the AFP / Getty system. But through series of mixups (of the kind that would be familiar to anyone dealing with information technology and complex organizations such as AFP and Getty Images), the pictures were not removed and were picked up and published by The Washington Post under their agreement with AFP/Getty.

The court ultimately had to decide whether Mr. Morel – the photographer – had granted a kind of license to AFP by posting his images to Twitter. This required an analysis of the Twitter Terms of Service. The court decided no, the Twitter Terms of Service do not grant such a license. The court stated that “even if some re-uses of content posted on Twitter may be permissible, this does not necessarily require a general license to use this content as AFP has.” Put another way, a copyright owner who posts content to Twitter is clearly giving up some rights to that content – the right, for example, to re-tweet, which is a fundamental part of Twitter and is contemplated (even encouraged) by Twitter’s Terms of Service. However, merely by posting to Twitter, that copyright owner is not giving others an unrestrained right or license to remove the content, copy it and redistribute it commercially.

The court says “…the Twitter TOS were not intended to confer a benefit on the world-at-large to remove content from Twitter and commercially distribute it…” This is an important reminder.

In the final analysis (and that is 58 pages of analysis if you want to read the judgement) AFP and The Washington Post were liable for copyright infringement for use of Morel’s images.

Lessons for business:

• This case confirms that any re-use of content from Twitter – and by extension, other social media streams – should be handled carefully.
• Re-tweets are clearly contemplated as being within the scope of permitted uses, but copying and republishing for commercial purposes clearly is not.
• Many situations will fall somewhere in the middle between those two ends of the spectrum. Before using or re-using content for commercial purposes, take time to review the specific situation, including the applicable social media terms of service. Before posting your own content to Twitter, be aware that the Twitter terms do contemplate certain re-uses (the scope of which is difficult to define precisely). Once it’s posted, it’s hard to stuff the genie back in the bottle

The case is Agence France Presse v. Morel.

Calgary – 07:00 MST

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When is an idea protectable? This question is front-and-centre for many entrepreneurs. When can they discuss their business idea, invention, or brilliant screenplay?

This story relates to the protectability of ideas under the law of copyright. Basically, there is no protection under copyright law for an idea itself, only the particular form and expression of that idea. This was illustrated last week in Elijah Schkeiban v. James Cameron et al (Case No. 2:12-cv-00636, California Central District Court), where the plaintiff claimed that Mr. Cameron’s blockbuster Avatar film infringed copyright in Elijah Schkeiban’s screenplay entitled “Bats and Butterflies”.  In this case, the plaintiff alleged that certain character traits and plot elements were copied by Cameron. These broad elements of a story – good guys vs. bad guys, or flawed protagonists – are precisely the things that are not protectable. The case was dismissed.

It is important to note that courts will review elements of expression such as plot, themes, dialogue, mood, settings and characters, to determine if infringement occurs.

Compare this to earlier decisions that we reviewed here: (Copyright: Apps and APIs; Tetris Holding LLC v. Xio Interactive, Inc.) in which the court decided that the look-alike game Mino did infringe the protectable “look and feel” of Tetris; also see Dath v. Sony Computer Entertainment America Inc., where the US Ninth Circuit Court of Appeals upheld the lower-court decision in a copyright infringement case involving the Sony PS2 and PSP title “God of War”. The plaintiffs alleged that Sony infringed copyright in their written works about war between Sparta and Athens. No infringement was found in that case. (Reviewed in App Law Round-Up.)

Want to know who James Cameron really copied? Go see Fern Gully.

Calgary – 07:00

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In a Facebook app called “SuperPoke! Pets”, players adopted virtual pets and acquired or purchased virtual currency to buy things for their virtual pets. As one of the first Facebook apps, the game took off in popularity after its launch in 2008. The game was acquired by Google in 2010, but was eventually discontinued at the end of 2011, leaving users without access to their accumulated virtual pets, currency and pet accessories. Users attempted a class-action suit against Google for “elimination of users’ money, goods and property.”

Google defended the class action by citing the dispute resolution clause, which compelled arbitration. In Abreu v. Slide, Inc., 12 0042 WHA (N.D. Cal.; July 12, 2012), the court confirmed that for an arbitration clause to be unenforceable, it must be both “procedurally” and “substantively” unconscionable. Essentially this means that an unenforceable clause would be oppressive due to unequal bargaining power between the parties, or would lead to “overly harsh or one-sided results.” As the court phrased it, the clause must be so one-sided as to “shock the conscience.”

In this case, the clause was upheld, and the dispute was sent to arbitration to be resolved.

Lessons for business?

• When drafting online terms, ensure you get advice on the dispute resolution options.
• An app developer or game publisher may be tempted to stack the “Terms of Use” in their favour, but these terms must be balanced. The inclusion of harsh or shocking terms in the fine-print may put the entire agreement at risk of being declared invalid and unenforceable by the courts.

Calgary – 07:00 MDT

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Bookmark ipblog.ca on your iPhone, iPad, Android tablet or mobile device for updates and developments in Canadian intellectual property law, including practical information and commentary on intellectual property business issues, technology commercialization and developments in the law, copyright and patent questions, trade-mark law, software and IT outsourcing, and related areas including privacy and cleantech licensing.

ipblog has been published since 2006.  In 2009, we added applaw.ca to our site, covering legal developments in the growing mobile application industry.

We have surpassed 1 million page-views from readers around the world. It’s hard to compete against YouTube cats… but we try.

Thanks to all of our readers. We’ll be taking a break during the month of August, and will resume in September, 2012.

Calgary – 07:00 MDT

For copyright fans, today kicks off a frenzy of reading Supreme Court decisions. Judgments in the 5 copyright cases which were heard last December were released today:

1. ESAC v. SOCAN
2. Rogers v. SOCAN
3. SOCAN v. Bell
4. Alberta v. Access Copyright
5. Re:Sound

IPOsgoode’s exellent summary appears here. Michael Geist’s review appears here. Further coverage to follow.

Calgary – 07:00 MDT

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Bill C-11, the long-awaited and long-debated Copyright Modernization Act has received Royal Assent… but is not yet in force. For an overview of the Act, see the government’s legislative summary.

Calgary – 11:00 MDT

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The House of Commons has now passed Bill C-11, An Act to Amend the Copyright Act, with only minor amendments at the committee stage. The Bill has been sent up to the Senate where it has passed First Reading. Second Reading could commence as soon as today.

After years of ponderous debate, this quick pace suggests the Bill will progress through the Senate efficiently. However, the Senate rises for the summer at the end of June, leaving little more than a week to push the legislation through. If the Bill does not become law by the end of June, then it will be pushed into the fall calendar. The Senate returns from the summer recess on September 17th … (wish we were all so lucky).

Stay tuned.

Calgary – 2:00 MDT

 

In the last in our series about the frontier of intellectual property law, we look at the use of copyright law (roughly 300 years old) to protect yoga poses (roughly 2300 years old). An enterprising yoga instructor – Bikram Choudry - managed to obtain copyright registration for certain poses as part of an intellectual property portfolio that includes protection for “posture sequences”, trade-marks and instructor-certification agreements.

In a lawsuit against another licensed studio (Bikram’s Yoga College of India L.P. v. Yoga to the People, Inc.), the studios are in a pitched battle (cue the “warrior pose”) over the right to use the styles and postures that are allegedly the property of Bikram. The US Copyright Office recently weighed in, saying that exercise poses “do not constitute the subject matter that Congress intended to protect as choreography. We will not register such exercises (including yoga movements), whether described as exercises or as selection and ordering of movements.” This case illustrates an interesting twist on the “future” of IP, by protecting (some would argue ancient) postures through the tools offered by copyright and trade-mark law.

In Canada, the case of Pastor v. Chen, 2002 BCPC 169 (CanLII) addressed a dispute over choreographed dance moves and the court’s review of confidentiality and copyright protection. Although the reasoning in that decision is somewhat inconsistent (protection affforded by copyright should not depend on whether the material qualifies as “confidential information”), the Court in the end did agree that the choreography was eligible for copyright protection. 

Calgary – 07:00 MST

 

 

iBooks Author is Mac app  allowing users to develop and publish multitouch digital books. If you author a digital book, you can then submit it to the iBookstore for purchase or free download, or distribute it through iTunes U, or use it with the iPad. It’s being touted as a way to bring digital publishing to the masses – for example, textbooks with embedded videos, audio and rotatable 3-D models that students can pinch and zoom.

Sounds great, but do you own what you create? Let’s have a look at the EULA (End User License Agreement v. 1.0.1).

According to the terms of the EULA (section 2(b)), you own the rights to the content that you create, and you can distribute that content any way you want, as long as it doesn’t include any files in the .ibooks format. (Making files in the .ibooks file format is the whole point of using this app.) If it does include .ibook files, then you can distribute the book by any means as long as you are giving it away for free. If you want to distribute your digital book for a fee, then it must be sold through Apple’s iBookstore, with Apple taking its customary 30% cut.

This does not mean (as some blog posts have suggested) that Apple takes any ownership of the content you have authored. You continue to own that content. The license terms mean that, by agreeing to use their software, templates and publishing tools (and in particular, the .ibooks file format), you agree to sell your iBooks book through Apple’s retail channel.

This isn’t really all that different from an author’s agreement with a traditional publisher, since a publisher will typically insist on exclusivity in handling final editing, packaging, marketing and sales of a book. They take a cut and share the royalties with the author. The author, who remains the copyright owner, is not free to then sell the book through a different distribution channel. They must sell through their publisher.
Calgary – 07:00 MST

 

 

Join us on March 1, 2012, (see our Events page) for the upcoming meeting of the Licensing Executives Society (LES) on The Alberta Innovation System. Technology commercialization has its challenges. However, resources and funding programs are available to support technology development for small and medium sized enterprises (SMEs) in Alberta. Within Alberta, the “innovation system” has undergone reorganization over the past 2 years. In Calgary, Calgary Technologies Inc., (CTI), and University Technologies International, (UTI) have amalgamated to form Innovate Calgary. Across the province, Alberta Ingenuity, Alberta Research Council, iCORE and nanoAlberta have merged into Alberta Innovates – Technology Futures (AITF).

How does this impact licensing professionals, counsel, advisors, SMEs and entrepreneurs? What do you need to know about commercialization support within Alberta? Attend the LES Alberta Innovation System luncheon with our panel: Darren Massey Senior VP, Innovate Calgary, David Reese, Vice President, Licensing, Innovate Calgary and Scott Bass, Alberta Innovates – Technology Futures.  

Calgary 07:00 MST   

 

Copyright complaints against apps are now common, and this one frames the issues nicely: In Shanti Deva Korpi v. Apple Inc. , 1:11-cv-00906- LY (U.S. District Court) a photographer who posts her photos to Flikr, has filed a lawsuit against Apple, claiming that two iOS apps – one of which was entitled “Unofficial Guide to Hipstamatic” – engaged in a practice of scraping and republishing her photos, without authorization or attribution. According to the claim, this is a violation of copyright.

In Canada, the recent decision of the B.C. Supreme Court in Century 21 Canada Ltd. Partnership v. Rogers Communications Inc., deals directly with this issue (see my commentary Coming to terms with online copyright published in the November 25, 2011 issue of the Lawyers Weekly). The B.C. case is not an app-related dispute, but the court makes it clear that copyright will be enforceable in situations where content (including images) is scraped off the internet, and is then repackaged and republished without authorization.

Calgary – 07:00 MST

 

My article Coming to terms with online copyright is published in the November 25, 2011 issue of the Lawyers Weekly. It reviews a recent decision of the B.C. Supreme Court in Century 21 Canada Ltd. Partnership v. Rogers Communications Inc. , [2011] B.C.J. No. 1679. The decision reviews the current state of the law in Canada on the topics of online contracting and copyright, and even the question of whether unauthorized access to a website constitutes trespass.

Calgary – 07:00 MST

 

 

 

   

For more, see mimiandeunice.com Calgary – 07:00 MST 

 

Here’s an update to our earlier post (Copyright in Art … Part 2) about the case of photographer Patrick Cariou and appropriation artist Richard Prince. Earlier this year, a US District Court sided with Cariou in his copyright claim against Prince, based on Prince’s use of Cariou’s photographs of Rastafarians. The court dismissed the fair use defence since Prince’s copying was substantial compared with the “slight transformative value”. The New York Times reports that decision has now been granted an appeal (Court Allows Richard Prince to Appeal Copyright Decision) by the US Second Circuit Court of Appeals. The outcome will be closely watched by artists.

Calgary – 07:00 MDT

 

The Federal Tories have made it clear that they intend to re-introduce their copyright reform bill (the bill formerly known as Bill C-32) this fall, with new legislation possible by Christmas. They may want to re-think that timeline and ask Santa to wait on the shiny new copyright law. The Supreme Court of Canada is scheduled to weigh in on the subject, with a record five copyright cases scheduled in early December. While the issues in these five appeals will not span all of copyright law, the interpretation and analysis of copyright will undoubtedly impact the proposed legislation.

Calgary – 07:00 MDT

Check out this interesting summary of Art Law concepts: Art Law TV, a series of videos which explores copyright and other legal issues faced by artists, presented through the lens of artistic practice.

Calgary – 07:00

 

In a new series, we review the basics of Canadian trade-mark, copyright and patent law.

• Canadian Copyright: The Canadian Copyright Act gives authors the right to control their creative works, such as books and pictures. Under copyright law, the concept of “author” is understood broadly and includes software programmers, photographers, musicians, mobile-app developers, animators, graphic designers, artists, dancers, writers, cinematographers, painters and poets. Original creative works are protected automatically under the Copyright Act, which gives authors the right to make copies for the term of copyright. Copyright generally lasts for 50 years after the death of the author.  It is an infringement of copyright to makes unauthorized copies of a work that is protected by copyright. One important point to remember is that copyright law does not protect ideas or concepts, but protects the expression of the idea – as expressed in written or fixed form, such as a book, a sound recording, a photo or a painting.
• Best Practices:
• Notation - A standard copyright notation is “© ABC Company Inc. 2011, all rights reserved.” A notation of this type is not required by the Copyright Act but it is recommended on copyright protected works.
• Register Copyright – Registration is relatively easy and inexpensive, and provides the owner with proof of ownership of copyright . In Canada, you are not required to submit a copy of the work with your application for registration.
• Public Domain – Just because something is publicly available on the internet does not mean that it’s in the “public domain” for copyright purposes. The concept of “public domain” refers to the expiry of copyright protection. So, for example, the original works of Shakespeare or an 18th century painting can be said to be in the public domain since the term of copyright has lapsed.
• Copyright in Software: Software, even open source software, is subject to copyright. The owner of the software could be the author of the code, or a company employing the author. To protect the intellectual property rights in software of any kind – whether it’s sold on a disc at the retail level, or is downloadable, whether an operating system or a mobile app - the owner should use proper copyright notations and implement a well-drafted license agreement. An end-user software license is a contract between the owner and the user that deals with topics such as ownership, use restrictions, warranties, liability, tech support, and related terms.
• Copyright Outside Canada: Under the Copyright Act and international copyright conventions, Canadians enjoy copyright protection in countries who are parties to treaties such as the Berne Convention, Universal Copyright Convention and the Rome Convention. Even with this legal framework in place, enforcement of copyright is challenging in the context of the internet, since infringement can occur easily and anonymously in multiple jurisdictions on multiple servers. Specialized assistance is usually required in combatting copyright infringement outside Canada.  

For more information and assistance with your copyright and software licensing needs, visit Field’s Intellectual Property & Technology Group. 

Calgary – 07:00 MDT

 

In a new series, we review the basics of Canadian trade-mark, copyright and patent law.

• Canadian Trade-marks: Trade-marks protect the rights to brand names, such as a word, logo or design. A trade-mark is used in the marketplace to identify products of one company, and distinguish these products from others in the marketplace. Trade-marks can be extremely valuable assets of a company, and represent the company’s reputation with consumers. If mishandled or left unprotected, trade-mark rights can be eroded or lost. In Canada, trade-marks can be registered through the Canadian Intellectual Property Office, and a Trade-mark Agent can assist with screening searches and registration services.
• Best Practices:
• Registration – Seek registration for your core brands. This extends your rights to that mark, in connection with your products, across Canada. Unregistered marks do not enjoy the same scope of protection.
• Screening Searches – Make better business decisions with better information. Searches are critical, particularly before launching a new brand. This helps assess risk and provides insight about potential competitors in the marketplace.
• Notation –  Mark your brands with the â„¢ symbol or the ® symbol for registered marks. Consider establishing brand guidelines for your organization.
• Licensing – Marks used within a large corporate group, or between a parent company and its subsidiaries, licensees or franchisees, should be properly licensed. Otherwise, a company risks losing its rights to unlicensed marks.
• Trade-marks on the Internet: Trade-mark policing and enforcement is challenging in the context of the internet, since infringement can easily occur in any jurisdiction, and from any server. Establish a strategy that’s suitable and cost-effective in your industry, coordinating with your domain names and your national and international brand portfolio.
• Trade-marks Outside Canada: If you have or are seeking customers outside Canada, then get advice on trade-mark protection in those markets, whether in the US, China, the EU, or developing markets in South America. Trade-mark rights are governed country-by-country, so remember that trade-mark rights in Canada will not provide any protection in the US or elsewhere. Prioritize your brands and markets and seek assistance from professionals who can help establish a strategy for brand protection beyond Canada’s borders.

For more information and assistance with your trade-mark needs visit Field’s Intellectual Property & Technology Group. 

Calgary – 07:00 MDT

 

In a recent US decision (Murphy v. Millenium Radio, 2011 WL 2315128 (June 14, 2011)), the Third Circuit Court of Appeals decided that removing the name of a photographer from a photo constitutes a violation of the DMCA. In this case, a photographer took pictures of two local radio personalities for publication in a magazine. The photo was later scanned and uploaded by the radio station, but in the scanning process, the photographer’s name was cropped out, without the artist’s authorization. The court found that this breached § 1202 of the DMCA which deals with “Integrity of copyright management information”.

In Canada, this would be covered by Section 14.1 of the Copyright Act, which addresses “moral rights”. Under this heading, an author or creator of a work has the right to be associated with the work as its author by name, or under a pseudonym, or the right to remain anonymous. Tampering with the right of a photographer to be associated with the work would infringe moral rights in Canada.

Calgary – 07:00 MDT

 

Our update on Canadian copyright law now should be updated, as the Tory majority government is set to take the reins of power in Parliament.  The Conservatives made it clear in their campaign that they would, if given a majority, reintroduce and pass the bill formerly known as Bill C-32, An Act to amend the Copyright Act  (which will have a new number in the next Parliament). The bill’s digital-lock provisions remain contentious, and it is unclear how this will be addressed or amended, if at all, by the Harper government.  Parliament will resume June 2.  The traditional summer recess also usually starts in June.  So Parliament will not likely get much done before September.

On a related note, leave to appeal was granted by the Supreme Court of Canada in the case of Province of Alberta as represented by the Minister of Education, et al. v. Canadian Copyright Licensing Agency operating as “Access Copyright” (SCC #33888 – appeal from the Federal Court of Appeal; link to decision: 2010 FCA 198) This case deals with non-infringing use of copyrighted material for the purposes of “fair dealing“. This means the SCC will hear two “fair dealing” cases this term: the decision in SOCAN v. Bell Canada is also on the court’s docket; that case deals with the interpretation of the word “research” and whether 30-second song previews qualify as “fair dealing“.
Calgary – 07:00 MDT