In December, the Free Software Foundation (FSF) launched a lawsuit alleging that Cisco has breached the terms of the GNU GPL and LGPL (the General Public License and Lesser General Public License), thereby infringing copyright in the licensed programs. For more information, see the press release and a copy of the complaint filed by the FSF.

Last year in Jacobsen v. Katzer (US Court of Appeals for the Federal Circuit, August 13, 2008), an appeal-level court considered the ability of a copyright holder to distribute software under an open source license, and also obtain a remedy for any breaches of the license terms. In the decision, the court overturned the lower-court decision and decided that the open source license did not permit a licensee to modify and distribute the copyrighted materials without abiding by the copyright notice and modification-tracking conditions.  The case was sent back to the lower level for reconsideration, but it makes clear that:

• the licensor enjoys “economic rights” under the open source license; these “economic rights” come in the form of various intangible economic benefits, even in the absence of traditional royalties or license fees, and
• a licensee is not entitled to disregard the conditions attached to open source licenses.

In early January, a new ruling was issued by the lower court in Jacobsen v. Katzer.  Since the plaintiff failed to specify any damages, the contract claim was dismissed. The court also denied the injunction application (which would have barred Katzer from using the open-source code), on the basis that irreparable harm had not been established.  This shows that open-source licenses will always bump up against the practical realities of commercial litigation: to get a remedy, plaintiffs will still need to show damages and convince the court of the need for an injunction, just like in any lawsuit.

Canadian courts have yet to consider open-source software issues directly, but Canadian law will draw upon this growing body of American caselaw when the time comes.

Calgary – 10:00 MST

To follow-up on our post last year [IP and Internet Law in 2008 ], here are a few issues to watch in ’09:

US Patent Reform 

Although the US Patent Reform Act of 2007 stalled in the US Senate in 2008, it is expected to be brought back onto the government agenda in 2009 as part of the Obama administration’s plan for innovation.  Look for this to be moved forward once the burning economic issues have been addressed. 

Filesharing 

The recording industry tried multiple tactics in 2008. They pursued file-sharing sites rather than individuals. Their lawsuit against Quebec Torrent resulted in a win-by-default, and it is likely that they will pursue other file-sharing sites in Canada, citing this as a precedent. As expected, the recording industry also made a move against individuals using new anti-piracy legislation.  This trend can be expected to continue in 2009. 

Canadian Copyright Reform

While the government continues to grapple with economic and constitutional issues, it is unlikely that copyright reform will be high on the list.  If we do get a revised copyright reform bill, debate can be expected to drag on until the end of the year. 

Olympic Marks

With the 2010 Olympics coming to Canada in a little over a year, ambush marketing and Olympic advertising will likely generate lots of interesting trade-mark disputes.  As seen in Beijing, the efforts of the Olympic “trade-marks police” will bring this issue to the fore, and will provide an opportunity to test the new Olympic and Paralympic Marks Act.

Calgary – 2:45 MST

 

It’s clear that Microsoft has been monitoring an infringer who made headlines last year when he was hit with a substantial damage award for selling pirated Microsoft software. At the time Mr. Cerrelli, the director of the corporate defendant, was personally liable due to his direct involvement and knowledge of the copyright infringement.  As an update to our earlier post, the Quebec man last week pled guilty to contempt of court for side-stepping the original Federal Court order and selling pirated software through a different company.  He was fined $100,000 for contempt and faces jail time if the fines are not paid. 

 

Calgary – 10:00 MST

Alberta has produced what appears to be Canada’s first anti-camcording conviction.

Revisions to the criminal code, which target movie piracy in theatres, were used to obtain a conviction against a Calgary man who was banned from movie theatres for a year and fined $1,500. The convicted man was also prohibited from purchasing or owning video recording equipment during his probation period. There does not appear to be any evidence that he was in the business of distributing or uploading pirated videos. The Canadian Motion Picture Distributors Association was apparently pressing for jail time.

Calgary – 20:45 MST

Lawyers are often asked how much copying will constitute copyright infringement.  Of course, every good lawyer will answer “It depends.”  The recent Harry Potter case illustrates this issue: Author J.K. Rowling claimed that a plan to publish a lexicon (essentially an alphabetized reference listing Harry Potter characters, names and other information) would be a violation of copyright in the Harry Potter series of novels, even though the novels themselves weren’t copied, but rather the character’s names and information about the characters.  Last week’s US ruling came down in favour of Rowling, and the proposed book will never see the light of day.

So, how much is too much?  In Canada, the Copyright Act refers to a “substantial part” but like many legal concepts, the exact meaning is up to the court to determine.  In one recent Alberta case, Flag Works Inc. v. Sign Craft Digital, 2007 ABQB 434 (CanLII) a company copied its competitor’s advertising brochure, changing only the name, and a few details in the text. The court had no trouble concluding that a “substantial part” was copied, and therefore copyright was infringed. 

At the other end of the spectrum, a recent US case (Veritas Operating Corp. v Microsoft Corp., No. 06-0703, 208 US Dist. LEXIS 8166 (W.D. Wash. Feb 4, 2008) made it clear that copying a mere 0.03% of software code (that’s 54 lines out of about 160,000 lines) may constitute copyright infringement, if the copied code is critical to the operation of the program.

A reproduction of about 5% (the copy comprised five lines out 116 lines of original text) was not considered a “reproduction of a substantial part of the whole” in the 2003 decision in Dolmage v. Erskine, 2003 CanLII 8350 (ON S.C.), and therefore did not constitute infringement.

Now you know why lawyers say “It depends”. 

Calgary – 13:10 MST

With the announcement yesterday that Parliament is dissolved, and Canada is heading into a Federal election set for October 14th, the government’s copyright reform bill (Bill C-61) dies on the order paper.  Canadians will have to wait until the dust settles after the election to see what will happen to the copyright debate.  In the meantime, the copyright battles continue, and the latest salvo comes courtesy of isoHunt, a torrent site which has announced a pre-emptive lawsuit against the CRIA , seeking a declaratory judgement that isoHunt’s activities do not infringe copyright.

 

Calgary – 11:30 MST

 

In the current copyright battle between Viacom and Google, the users (including you, if you’ve ever watched a YouTube video) are caught in the cross-fire. 

Viacom and other broadcasters launched a lawsuit against Google last year, alleging $1-billion in damages. The lawsuit claims that thousands of clips of Viacom television programming are available on Google’s YouTube. In the latest salvo, Viacom won a federal court ruling in the US, in which Google was ordered to deliver up its database of records associated with every YouTube clip that users have viewed.  Whenever a YouTube clip is viewed, YouTube’s database apparently collects information about those who viewed it: including log-in names (for users with YouTube accounts), and IP addresses (for viewers without accounts).

Predictably, there was an outcry; even Ontario’s Privacy Commissioner weighed in with an open letter to Google citing the privacy risks for Canadian users. Ultimately, the parties were able to come to an agreement to anonymize certain data elements to make it more difficult to identify individual users.

Two points are worth raising:

• In today’s borderless culture, the jurisdiction of US courts over Canadian personal information is not an academic question. It’s an unavoidable reality – Canadians leave their personal digital fingerprints all over the US whenever they use the internet;
• Secondly, someone should be asking… why is YouTube collecting all this data in the first place? 

Calgary – 13:45 MST

 

The U.S. Customs and Border Protection Office recently announced that the value of counterfeit and pirated products seized at the border had increased in 2008, up to $113.2 million. Of course, that’s just the stuff they seized, and countless other counterfeits and knock-offs are flowing in.

In Canada, the recent case of Louis Vuitton Malletier SA v. 486353 B.C. Ltd. 2008 BCSC 799, illustrates how one brand owner tackled the problem. Louis Vuitton’s investigations showed that counterfeit Louis Vuitton handbags were being sold at various retails locations throughout suburban Vancouver, all operated by one proprietor. The lawyers pounced, seized the counterfeit evidence, but avoided litigation by entering into a settlement agreement with the proprietors in 2006. This included a slap-on-the-wrist payment of $6,000 to Louis Vuitton. After monitoring the stores throughout 2007, it became apparent that the settlement agreement had been breached, and Louis Vuitton brought a second lawsuit, this time pushing it through trial to arrive at a significant damage award of close to $1 million, when all the trade-mark and copyright damages were added up. The court also made it clear that the directors would not avoid personal liability:

“A corporation cannot be used to shield an officer or director or a principal employee, when that individual’s actions amount to a deliberate, willful and knowing pursuit of a course of conduct which was likely to constitute infringement or at least where those actions reflect an indifference to the risk of an infringement.”

The battle against counterfeits has spilled over into eBay where various luxury-goods brand owners such as Tiffany have complained that eBay had become a clearing house for counterfeits. A US judge recently decided that eBay was not liable for the providing the means of selling counterfeit goods, and the key to eBay’s win was its set of policies and procedures to respond to complaints of trade-mark infringement.

The take-home message is that brand owners must police their own brands both online and offline. Online venues such as eBay cannot be pressed into service as trademark watchdogs – though they must be prepared to react if notified of an infringement. Just as brand owners must be prepared to investigate and act decisively in maintaining their brand’s integrity.
Calgary – 22:00 MST

The Quebec Torrent case (past stories here and here ) appears to have ended with the recording industry claiming victory.  Last week a Quebec court issued a permanent injunction against the operators of the P2P site, effectively shutting down the site and turning off the exchange of music files, television shows and other content.  The order prevents the site’s operators from using “any technology allowing the download of any work protected by copyright.” 

A victory? That part is questionable. This order was not a result of a full trial that would have canvassed the issues in court.  The defendant essentially capitulated at the eleventh hour, consenting to the order in exchange for an agreement by the recording industry to drop a $200,000 damages claim.  And remember the P2P site managed to defeat the recording industry’s application for a preliminary injunction earlier in the case.  So this order is by no means a definitive ruling by the court.

Canada is still waiting for its first direct decision on peer-to-peer file sharing.  Meanwhile, the recording industry is expected to use this order as a way of trying to shut down other P2P sites.  If you operate such a site, you can expect a letter containing a copy of the order in the near future if you haven’t received one already.

Calgary – 10:35 MST

For IP lawyers, these are interesting times. It isn’t often that proposed intellectual property legislation makes front-page news and in Canada, the debate over Bill C-61 has been front and centre. There is ample coverage of the proposed law in the media across the country since the bill was introduced last month.  

You might think that all the debate is purely academic: sure, if you download a CD to your iPod and then give the CD away to your brother-in-law, a record company can claim infringement …in theory, but would they really bother?  (If you don’t believe that this is infringement under the proposed law, see here: Section 29.22(4) )

The answer is this, if the law contains a useful tool, copyright owners will use it.  To see how the new tools might be used, we can look to the US, where the DMCA notice-and-takedown system permits copyright owners to send notices of alleged infringement, and demand that the infringing content be removed.  In one recent US case, the notices were filed by Associated Press against independent bloggers for paraphrasing AP news stories in discussion forums.  The message was clear: don’t cut-and-paste or paraphrase any part of our news stories, or we’ll come after you for infringement.   “Fair use” or “fair dealing” exceptions should provide a defence to infringement claims, but of course the boundaries of that concept are open to interpretation.  AP later backed-down and promised certain “guidelines” on how to refer to AP news. 

In the meantime, the take-home message is this: when the US DMCA was introduced, its drafters might never have imagined that a news organization would send take-down notices for online references to its news stories – but the tool was available in the toolbox, and it was used.  Whatever is in Bill C-61 will also be used, sooner or later. 

Calgary – 11:45 MST 

Today the Government finally introduced its long-awaited Copyright Reform bill – (Bill C-61 ). Of course over the coming days, media and bloggers will be dissecting it.  But the immediate summary appears to be that the efforts to balance user rights (things like private copying, format and time-shifting) are restricted by anti-DRM circumvention provisions. 

It appears that you may be permitted to copy a song or movie to your iPod, and if you have to crack a digital lock in order to do so, then you may be able to avoid statutory damages for breaking the lock (statutory damages are automatic damages ranging between $500 and $20,000 per work) if the circumvention was for “private purposes”.  Curiously, it appears that you can only avoid statutory damages, but not actual damages.  This means that the copyright owner could still sue for actual damages, even if the circumvention was for “private purposes.”

 Calgary – 15:00 MST

 

When can a TV broadcaster - or any news organization - use Flickr photos?  Flickr is a popular photo-sharing site. People use it to share photos of every description.  The site hosts millions of images.  So when can a news organization download and publish a “newsworthy” picture from Flickr or Facebook, or from any photo-sharing site?  After all, the Copyright Act (Section 29.2) does permit “fair dealing” for the purpose of “news reporting”.

In this case, photographer Joel Charlebois, clashed with Toronto broadcaster CablePulse 24 when the broadcaster copied Charlebois’s pictures from Flickr without his permission. The photographer complained to the Canadian Broadcast Standards Council, and in its decision the CBSC confirmed that the broadcaster was off-side by failing to provide proper attribution – in other words, indicating the name and source of the photos.  The issue was not one of permission but of attribution.  Permission is not necessarily required, but attribution, at a minimum, is.

The pictures capture a failed burglar who tried to escape from a botched break-and-enter, fell two storeys, broke his leg and was arrested. To see the photos: Torontoist Article

Calgary – 10:30 MST

First, there has been much debate about when the Tory government in Ottawa will table their revised copyright bill.  In late 2007, draft legislation was pulled amid an unusual groundswell of opposition.  Now, there is renewed speculation that the bill will be introduced before Parliament breaks for the summer (assuming there is no election in the meantime).  If it is introduced, the bill will head into a thorough committee review, meaning the bill wouldn’t likely become law until sometime next year. 

Second, the QuebecTorrent case (a lawsuit by the canadian recording industry against an online file-sharing site) is reportedly scheduled to go to trial this summer. (Earlier post here.) If it proceeds through to a court decision, it will be a potentially landmark case for online copyright law in Canada, and it will be interesting to see how it dovetails with the proposed copyright legislation.  In the US, a decision released Monday (Atlantic Recording Corp. v Howell) is a setback for the anti-file-sharing efforts of the US recording industry.  In that decision, the court stated that copyright is not infringed unless there is actual distribution of an unauthorized copy of the work: “Merely making an unauthorized copy of a copyrighted work available to the public does not violate a copyright holder’s exclusive right of distribution.”  This is significant since loading a file onto a shared folder is “making available”, and according to this decision, such an act on its own does not constitute infringement. 

 

Calgary – 10:30 MST

In Canada, what is the liability of online service providers — so-called “interactive computer services” —  including Craigslist, Yahoo Groups or Facebook?

The US Court of Appeals decison last week in the case of Chicago Lawyers’ Committee for Civil Rights Under Law v. Craigslist, Inc., 2008 WL 681168 (7th Cir. March 14, 2008) highlights the US approach: under Section 230 of the Communications Decency Act, providers of an “interactive computer service” who publish information provided by others can obtain immunity from liability.  In the Craigslist decision, the popular site was sued on the basis of discriminatory rental listings which were posted on the site.  The court decided that Section 230 immunity protected Craigslist from liability for those postings.

In Canada, the law is still unclear. Courts have touched on this issue.  The Canadian decision in Society of Composers, Authors and Music Publishers of Canada v. Canadian Assn. of Internet Providers (C.A.), 2002 FCA 166 (CanLII) dealt with copyright online and commented that: “…operators of host servers and Internet access providers do not effectively control the content of what is transmitted …their role is passive and that their activities usually consist only of the provision of the means of telecommunication.” 

We previously reviewed the decision in Crookes v. Yahoo, 2007 BCSC 1325 (CanLII), which dealt with alleged defamatory postings on a Yahoo site.  Although the case was decided on other grounds, the court observed that: “Yahoo did not author the postings.  Yahoo is joined in this action on the basis that it provided the means by which the defamatory material was published and it failed to remove the postings.”  This is precisely the area that requires clarity, and we’re waiting for a decision to tackle this issue head-on. 

 

Calgary – 10:50 MST

A photographer is hired to do some work on an ad campaign.  If the photographer’s bill is never paid, and the photographs are used, is it copyright infringement? 

The Copyright Act makes it clear that copyright would belong to the person who ordered the photographs.  But that only applies if the photographer is paid – no money, no copyright.  The recent Alberta decision in Don Hammond Photography Ltd. v. The Consignment Studio Inc., 2008 ABPC 9 might be the first time a court has considered those particular sections of the Act.  In that decision, the court was clear that copyright was infringed when the photographs were used without payment of the photographer’s invoice, and that statutory damages were appropriate in the circumstances.  The lessons for business? 

• Pay your photographers;
• When engaging an ad agency, website designer or other graphic designer, determine who is responsible for payment of photographers and other sub-contractors; and
• Remember this doesn’t just apply to an ad campaign. The same principle applies to images used in any corporate media – websites, annual report packages, brochures, and newsletters.

Calgary –  10:30 MST

The story of Montrealer Gérémi Adam, who is an alleged copyright pirate, has attracted more attention after the man dropped out of sight on the date of a scheduled court appearance last month.  He did appear in court yesterday to answer the charges and to plead not guilty.  If the case goes to trial it will provide a good test case on what evidence the court will accept as proof that a particular individual posted a particular pirated copy of a movie.  He was charged before Canada’s new anti-camcording law came into effect, so he will face penalties under the previous copyright infringement provisions.  Another Montreal man, Louis-René Haché, was charged under the new anti-camcording legislation enacted last year and his case may provide a test of that law.    

Related reading: Microsoft Scores Software Piracy Win

Calgary – 16:00 MST

There are virtual lawyers, virtual commerce, virtual brands.  So logically someone has finally opened what purports to be the Second Life Patent and Trademark Office saying: “We allow you to register, protect, and add value to your Second Life creations to protect your intellectual property rights.” 

It is unclear how virtual protection of virtual rights would function in Second Life (let alone First Life).  There have been more real-world disputes over virtual rights, including a real lawsuit  launched a few months ago by virtual business operators Le Cadre Network and others who complain of copyright infringement and passing off within Second Life.  Bear with me here…  The complainants in that suit filed (real) copyright registrations for their (virtual) products in the (real) US Copyright Office.  Maybe they can convince their lawyers to charge virtual legal fees. 

 

Calgary – 11:45 MST

There is growing debate (and some misinformation) about the control by private interests over the very essence of language and thought in our society.  For example, some of the analysis over the Olympic and Paralympic Marks Act (which came into force in December, 2007) has suggested that anyone uttering the number “2010” in the same breath as “gold medal” will be subject to sanction at the hands of VANOC, the defenders of the Olympic brand.  VANOC has tried to explain its approach to infringement assessment to manage this issue. They seem to be applying an even-handed analysis to enforcement, although I’m sure someone will find a way to test the bounds of that law.

Similarly, the current interest in copyright reform in Canada is fuelled by a perception that giving private companies increased protection over copyright will result in a privatization of language and culture itself. 

A recent article in the Toronto Star is a case in point.  The article makes some good arguments but Canada’s intellectual property laws do not prevent someone from using the phrase “freedom of expression” just because someone has registered that slogan as a trade-mark. Infringement involves an analysis of the use of a mark in association with certain goods or services which are the subject of the trade-mark registration. 

The law should engage in a balancing act between competing interests.  Let’s hope that the current groundswell of public interest in intellectual property law will help lawmakers reach that balance.

 

Calgary – 10:10 MST

Four intellectual property topics to watch in the new year:

Canadian Copyright Changes

The government’s announcement of new copyright legislation has generated considerable debate in Canada in the last few weeks – when copyright reform hits the front page of the Globe and Mail, then you know something is up.  So far all of the media interest, including a Facebook group of several tens of thousands of concerned citizens, seems to have triggered a review of the proposed legislation.  We will be watching to see what the bill looks like.

Filesharing

We are hoping to see some clarity in this area in 2008.  The recording industry seems to be pushing for an opportunity to litigate, and the proposed copyright legislation may address this issue, providing guidance to content-providers, musicians, users and industry alike.

US Patent Reform

The proposed patent reform bill in the US is currently making its way through Capitol Hill and the changes effected by the new law will undoubtedly transform the patent landscape.  We’ll keep an eye on these developments south of the border because of their impact on so many Canadian patent holders and inventors.

Privacy Online

Privacy issues will continue to play a central role in the conduct of online business.  Massive privacy breaches have become almost common-place – announcements of lost data or hacked credit card info now seem to be weekly occurences - and Canadian law in this area is changing as new decisions and investigations try and produce guidelines for business.  Watch for this area to continue to evolve over the next year.

 

Calgary – 10:35 MST

There seems to be a run on BusyBox litigation this fall and the lawyers at the Software Freedom Law Center (SFLC) have been busy; last week they filed another copyright infringement lawsuit against Verizon Communications, Inc., alleging violation of the GNU General Public License (GPL). The open source movement is expanding past the world of software into areas of biological and life sciences. Because of the growing interest in this area, we have decided to compile a list of resources regarding open source organizations and law.

Software

Software Freedom Law Center: http://www.softwarefreedom.org/

Free Software Foundation: http://www.fsf.org/

Open Source Initiative: http://www.opensource.org/ 

Biotech / Life Sciences

The BiOS Initiative:http://www.bios.net/

BiOS Compatible Agreement Listing:
http://www.bios.net/daisy/bios/licenses/2997.html

Public Intellectual Property Resource for Agriculture: http://www.pipra.org/

Tropical Disease Initiative: http://www.tropicaldisease.org/

WCLP: http://www.westcoastlicensing.com/index.htm 

AFMnet: http://www.afmnet.ca/ 

LES Presentation Slides: lespresentation-open-source.pdf

Calgary – 16:00 MST