Tuesday, December 24, 2013

UK Telecom BT Rolls Out Its New Parental Control Policy And Software

On December 13, Major UK ISP BT put out a press release rolling out its new parental control policy and software. This move was prompted by BT’s signing onto the UK Parliament’s recent initiative to limit the exposure of children to online pornography. 

Under BT’s new policy, new subscribers will have to choose whether to implement the parental control measures at the time of installation. The default setting will be to have the parental controls engaged, requiring a subscriber to actively turn them off. BT has also undertaken to contact its existing subscribers over the next year prompting them to choose whether to implement the new controls.

Unlike most parental controls which are set and managed at the browser level (i.e. for each computer on an individual basis), BT’s new software is network based. This will allow the settings to apply to device using the subscriber’s network whether connected by cable or Wi-Fi.

ISP’s are normally reticent to implement “default on” policies like this one. However, according to an article written by Katie Collins published this summer on WIRED.co.uk dealing with Prime Minister David Cameron’s ongoing push to limit accessibility to pornography in his country: “ISPs have welcomed the opportunity to work with the government in improving child safety online, and those that haven't already implemented the measures are in the process of doing so.”

I do not see anything inherently wrong with a private corporation taking a stand on any issue and modifying their policies accordingly; providing they are not engaging in unjustified discrimination against an identifiable group. While the default settings may prove to be a minor nuisance for certain BT subscribers, and though they may prove to be ineffective in curbing pornography viewership in the UK, so long as the initiative comes from the corporation, the legitimacy of the policy should not be questioned. It is an open question, however, as to whether government legislation demanding compliance with certain content filtering standard would not be an undue burden on the freedom of speech. It should be noted that for the time being we are only talking about default settings, not outright content bans. This does not mean that such measures are inconceivable. This initiative among ISP’s coincides with David Cameron’s related push to outlaw “violent porn” in the UK. The future of the freedom of pornographic content in the UK is therefore seemingly uncertain.

Wednesday, September 11, 2013

UK Government Launches Consultations on Regulating Collective Licensing Societies based on 2011 Report

The following is an excerpt from my post on the Canadian Intellectual Property Blog on September 11, 2013 dealing with the UK Government's decision to open a consultation for comments on an eventual law that will regulate copyright collective licensing bodies. The full version may be found here

On September 9, the UK Government launched a consultation initiative inviting comment on how copyright collective licensing agencies should be regulated. The consultation will result in new rules for copyright collectives and enforcement measures for the non-respect of those rules.  
Image by Renjith Krishnan

There is currently legislation on the books in the UK requiring copyright collectives to self-regulate. It would seem that the Intellectual Property Office (IPO) does not view these requirements alone as sufficient to address what many consider to be a critical issue for the way forward on digital copyright enforcement.  

The current consultation arose out of recommendations made in a 2011 policy paper known as the Hargreaves Report. A chapter of this Report dealt directly with the issue of collective copyright licensing in the digital age. While the comments of the Report may apply more broadly, much of the information discussed was in the context of the digital music market.

Tuesday, August 27, 2013

The Truth About Digital Copyright Infringement’s Effect on the Film Industry

Below is an excerpt form my most recent posting on the Canadian Intellectual Property Blog. The post discusses a recent study detailing the effect of illicit on-line file sharing on the film industry.

Those of us who remember the Recording Industry Association of America (RIAA) music piracy witch hunt of 2004-2007 and the colorful, if not flamboyant ranting of the late Jack Volenti of the Motion Picture Association of America (MPAA) may be predisposed to thinking that on-line file sharing has had a dreadful effect on the music and film industries.

Image by Renjith Krishnan
A recent study, however, may dispel that myth, at least as it relates to the film industry. Researchers from the Ludwig-Maximilians-Universit├Ąt Munich and Copenhagen Business School have found that far from hindering sales, on-line file sharing has even had a positive effect on some films’ bottom line. The study looked at a sizeable data set- 10,272 movies released in 50 countries from week 31 of 2007 to week 5 of 2013.

On January 19, 2012, the globally popular file hosting site Megaupload.com was shut down and its founder Kim Dotcom arrested. The study found that the shutdown had little effect on the box office numbers for a majority of films. Some films, particular smaller and independent productions, saw a decrease in revenue. Only the top Hollywood films such as Ice Age and Harry Potter saw an increase in revenue after the Megaupload shutdown.

The Full post may be found here

Tuesday, August 13, 2013

Kirby Estate Denied Right to Terminate Copyright License for X-Men, Spiderman, Hulk and Ironman Comics

Here is a brief excerpt of my blog post as featured on the Canadian Intellectual Property Blog dealing with the 2nd Circuit Court of Appeal's recent decision to deny the estate of the late comic book illustrator Jack Kirby the right to terminate its copyright licenses as per §304 17 USC. The Court found the works in question were works for hire and therefore fell under the exception to the §304 protection.  The full post is available here.

The US Court of Appeal for the 2nd Circuit ruled yesterday that the estate of famous comic book illustrator Jack Kirby could not terminate the copyright license held by Marvel Comics and Disney corp. (Marvel/Disney). Jack Kirby is known as one of the most prominent comic book illustrators of all time. He began his career as an illustrator in the 1930s when he created the now famous Captain America series.  
At issue in this case were drawings Kirby did between 1958 and 1963. Jack Kirby’s children sought to apply the complicated “termination provision” found in §304 17 USC. This provision allows the owner of a copyright protected work to terminate any assignment or license agreement after a defined period which depends on whether the work was created before 1978.

Wednesday, August 7, 2013

USTR disapproves of ITC decision on Apple import ban

Bellow is an excerpt from an article I published on the Canadian Intellectual Property Blog (CIPB) regarding the USTR's overturning an ITC decision to prohibit Apple Inc. from importing its phones and tablets that infringe a Samsung Electronics Co. Patent.

On June 4th, 2013, the International Trade Commission (ITC) issued a ruling prohibiting Apple Inc. (Apple) from importing its iPhone 3G, iPhone 3Gs, iPhone 4, iPad and iPad 2 because they infringe a patent owned by Samsung Electronics Co. (Samsung). On August 3rd, the United States Trade Representative (USTR), in a rare interventionist move, disapproved of the ITC’s ruling allowing Apple to continue its importation of the infringing products. 
Under § 1337 of the Tariff Act, the ITC may issue an exclusion order (injunctive type relief) against an entity that imports a patent infringing product. In deciding whether to grant the exclusion order, the ITC must consider the effects of the order on US trade and commerce. If the ITC believes that the public interest would not be best served by the issuance of the exclusion order, it has the discretion to refuse it. 
Samsung’s patent is what is known as a “standard-essential patent” (SEP). These patents cover inventions that must be incorporated into a given device if they are to meet some applicable technical standard. SEPs have the potential to give vertically integrated patent holders an advantage over their competitors whom, for all intents and purposes must license the technology from them. 

Please find the full article here

Thursday, August 1, 2013

Faulkner Estate loses copyright infringement suit over use of one line from Requiem for a Nun

In Faulkner Literary Rights, LLC v. Sony Pictures Classics Inc., the estate of William Faulkner sued Sony Pictures over use of a single line from Faulkner’s book, Requiem for a Nun, even though the character attributed the line to Faulkner in the scene of the film. The film in question was Midnight in Paris which was written and directed by Woody Allen. Chief Judge Michael P. Mills of the US District Court for the Northern District of Mississippi granted Sony’s motion to dismiss the suit for lack of a reasonable cause of action (roughly equivalent to a motion to strike in Canada).

At the heart of this case was the following sentence from Faulkner’s novel: “The past is never dead. It’s not even passed”. In Allen’s film, the protagonist Gil Pender says: “The past is not dead. Actually, it’s not even past. You know who said that? Faulkner, and he was right. I met him too. I ran into him at a dinner party.” As can be seen from this quote, the character actually attributes the slightly modified line to Faulkner in the movie itself. This was apparently insufficient for the Faulkner Estate who decided to sue Sony for copyright infringement and for some form of trademark/appropriation claim based loosely on the Lanham Act (the United States federal statute dealing with trade-marks and unfair competition).

Photo by Renjith Krishnan
Among the issues the Court was tasked with deciding was the question of de minimiscopying. The Latin maxim de minimis non curat lex stands for the proposition that the law does not concern itself with the very minor or insignificant. This doctrine has been accepted as applicable in the copyright context in both the Unites States and Canada.

Given the Fifth Circuits thin case law on the matter of de minimis copying, the Court chose to examine the question under the ambit of the fair use analysis- which Sony put forward as an affirmative defense to the claim. The third factor in the fair use analysis is: “the amount and substantiality of the portion used in relation to the copyrighted work as a whole”. This factor mirrors the “substantiality test” used by several US jurisdictions to determine if there was a copyright infringement in the first place.

Originating in the 2nd Circuit, the substantiality test was first applied in Marks v. Leo Feist, Inc. In that case, the Court wrote that: “To constitute an infringement of the [Plaintiff’s] composition, it would be necessary to find a substantial copying of a substantial and material part of it.” This test derives from the equitable doctrine of substantiality. Historically, a plaintiff would not succeed in their claim at equity if the injury suffered was not deemed substantial enough for the law to take an interest.

The Plaintiff argued that since the test for substantial similarity is a qualitative and not quantitative analysis, the two sentence quote is enough to constitute copyright infringement in theory. They further claimed that the quote in question described “the essence of Requiem”. The Court did not find this argument persuasive. Even if the quote encapsulated the theme of the book, it is the expression- i.e. the text itself- that is protected by copyright law. The argument failed because of the idea-expression dichotomy at the heart of copyright law. Expressions are protectable; ideas are not.

The Plaintiff’s claim based on the Lanham Act was sketchy at best, referring to state tort law by analogy to make its point. The Court rejected this argument out of hand, writing that the Plaintiff was unsuccessful in clearly laying out the law upon which its complaint relied. In a nutshell, the Plaintiff argued that use of the line in the movie would cause confusion as to its origin. They argued further that use of the line without permission amounted to a misappropriation of Faulkner’s identity. Though the Court declined to deal fully with this argument because of the way it was brought, Chief Judge Mills noted in passing that Sony’s 1st amendment right must trump the Plaintiff’s claim under the Lanham Act.

All in all this decision was unsurprising. While the Plaintiff was correct in asserting that the relevant measure for determining what constitutes a substantial part of a copyright protected work is quality and not quantity, its arguments were patently absurd in the context. To purport that nine words out of a 240 page novel constitutes the qualitative heart of the work is a serious stretch. Even if they were able to make this argument convincingly, this is still a cut and dried instance of fair dealing. Woody Allen used the line in a novel and transformative way that in no way affects the commercial value of the source work.

Monday, July 29, 2013

B.C. Supreme Court re-affirms: No Common Law Tort of Invasion of Privacy...in B.C.

On July 22, 2013, Madame Justice Russell of the Supreme Court of British Columbia struck out a plaintiff’s claim alleging breach of the common law right to privacy. In Ari v. Insurance Corporation of British Columbia, the Defendant ICBC, a provincial crown corporation, made an application to strike out the Plaintiffs' claims for breach of privacy. 

Image by Idea Go
The Plaintiffs (a class comprising over 60 individuals) claim that an employee of ICBC accessed their information “wilfully and without a claim of right” for an unauthorized purpose. As a result of this breach of their privacy, the Plaintiff’s claim that they had their homes and vehicles broken into and became the victims of shootings and arson. 

The class action was built on a cocktail of legal bases: Common law tort, the Privacy Act, and the Freedom of Information and Protection of Privacy Act (FIPPA). While the Court allowed the action to precede based on violation of the Privacy Act, it stuck the claims based on FIPPA and tort. 

With reference to the claim under the common law, the Court was nothing if not blunt:

[63]        There is no common law tort of invasion or breach of privacy in British Columbia: Hung v. Gardiner, 2002 BCSC 1234 (CanLII), 2002 BCSC 1234 (affirmed 2003 BCCA 257 (CanLII), 2003 BCCA 257) at para. 110; Bracken v. Vancouver Police Board, 2006 BCSC 189 (CanLII), 2006 BCSC 189 at para. 28
Justice Russell did not find the recent decision of the Ontario Court of Appeal in Jones v. Tsieg persuasive enough to import the newly crafted tort of intrusion upon seclusion into the law of British Columbia. In her ruling, she distinguished the case based on the type of information that was taken in that case and the case before her. In Jones, the Plaintiff’s banking information was taken whereas in Ari, it was the Plaintiffs’ names and home addresses. 

I found it somewhat curious that Justice Russell explicitly accorded a lower degree of protection for information such as a person’s name and address compared with their banking information. While banking information is of a highly confidential nature, so too is ones name and home address. In this very case, the lives and property of the Plaintiffs were put in immense danger as a result of the employee’s conduct. 

It is worth noting that the Plaintiffs have not yet proven the veracity of the facts upon which their claim is based. However, on a motion or application to strike out a pleading, the claim is only to be struck if, assuming all the facts plead are true, there is no reasonable cause of action. I would think that if it is true that these 60 plus people were shot at, robbed, and had their cars and homes burned, the conclusion that citizens should enjoy a lesser degree of privacy in information like their name and address is patently absurd. 

In one sense I understand Justice Russell’s position. Given the fact that a person’s name and address are more easily accessible to the public than their banking information, misconduct involving the latter is more egregious than misconduct involving the former. There is a higher standard of confidentiality associated with one's finances than their name and address. Still, a person’s name and address are “information about an identifiable individual” which is the definition of personal information utilized by a number of privacy statutes at the federal and provincial levels, including the Privacy Act. In that regard, the fact that a person’s banking information is “more secret” than their name and address is irrelevant. 

The Plaintiffs still have time to appeal this decision. Given the fact that Justice Russell made an unequivocal statement of law that that there exists no common law cause of action for breach of privacy, it is not inconceivable that the B.C. Court of Appeal may like to weigh in.

Tuesday, July 2, 2013

New development in Google Books saga: Google will get its chance to argue fair use

The latest salvo in the Google Books saga promises to be a big one. On July 1, the United States 2nd Circuit Court of Appeals issued an order decertifying the plaintiff class, the Authors Guild et al. The Court found that District Judge Denny Chin’s June 11, 2012 order certifying the plaintiff class was made in error.

As discussed in more depth in an earlier post, in 2004, Google undertook its massive “Library Project”. Google, in cooperation with a number of libraries began scanning, digitizing and indexing millions of books. At the time my last post on this case was published, the total number of books digitized was estimated at 15 million. The 2nd Circuit’s decision puts that number at 20 million today. A group of plaintiffs- eventually settled into a class headed up by the Authors Guild- instituted a copyright infringement action.

The 2nd Circuit found Judge Chin’s class certification to be premature in light of Google’s fair use argument on the merits. The Court wrote that allowing the statutory fair use defense to be affirmatively argued may render some or all of the issues moot, thereby eliminating the need for the costly, complex class action to go forward.

Notable authority on the Google Books saga Professor James Grimmelmann has opined that the wording of the 2nd Circuit’s ruling, though not directly dealing with the fair use argument, suggested that the argument would be compelling. Grimmelmann explains that the normal procedure when the certification of the plaintiff class is itself, in whole or in part, contingent on the merits, the court will usually consider the merits only insofar as they aid in determining if the plaintiff class is appropriate. In this decision however, the 2nd Circuit gave express instructions in its remand to the district court to consider the fair use issue specifically and to its end.

Professor Grimmelmann wrote that this unorthodox, if not pragmatic order may not only be a signal that the 2nd Circuit finds Google’s fair use argument to be meritorious; they may believe it to have a fair chance of success.

I've read a couple interesting breakdowns of Google’s fair use argument and while not all the case law is neatly on their side, the argument is tenable and persuasive; but that’s another post. 

Monday, July 1, 2013

Author Resale rights in Canadian Copyright Law

On May 29th, Liberal MP Scott Simms (Bonavista—Gander—Grand Falls—Windsor) introduced a private members bill, bill c-516, that proposes to modify the Copyright Act to create an “artist resale right” for authors of copyright protected works. 

The resale rights (also known as a “droit de suite”) would allow an author to be remunerated not only for the first purchase of a copy of their work, but for every subsequent resale of that work. The droit du suite came about at the end of the 19th century in France as a response to a case in which the owner of a painting sold it for a hefty sum while the artist who painted it lived in poverty. 

Photo by Ranjith Krishnan

The droit de suite is a theory that runs directly counter to the “first sale doctrine”. This Common Law doctrine dictates that a copyright owner’s right to remuneration is extinguished after the first sale of a copy of a protected work. The first sale doctrine comes from the Common Law principle that restraint on the alienation of tangible property is to be avoided. The doctrine was first cited by the US Supreme Court in Bobbs-Merrill Co. v. Straus (1908) and was later codified in the American Copyright Act of 1909.

Today, the European Union, Australia and the Philippines have resale rights legislation. The State of California also had a resale right law on the books until it was struck down by the U.S. District Court (Central District of California) on May 17, 2012. Judge Jacqueline H. Nguyen found the law to be unconstitutional because it encroached on the Federal power over interstate commerce. This decision is currently being appealed to the 9th Circuit Court of Appeal.

The bill is presently in its first reading before Parliament. It proposes to grant authors the right to capture a 5% royalty in any subsequent sales of a work where the value of the transaction is $500 or more. This resale right is not limited to the first subsequent sale, but to all subsequent sales of the work while the work remains in copyright. The resale right may not be waived by the author and is not transferable. The onus is on the seller of the work to report and pay out the royalty. The bill mandates that royalty collection be carried out by a collective licensing society. 

One interesting feature of the bill is that its provisions only apply to:

- Authors who were Canadian citizens or residents at the time of the sale; and
- Authors in other countries that offer similar resale rights to Canadian authors in their home jurisdictions (namely the EU as mentioned above). 

Though the resale right is not transferable inter vivos, the right is transmissible upon the death of the author. The right passes to the person to whom it was expressly bequeathed; or, failing that, the person to whom the copyright in the work has been bequeathed. 

While the chances of this legislation passing are slim, this initiative represents a potential shift in Canadian copyright policy towards the EU. This proposed change to the Copyright Act is more than likely related to the ongoing negotiations taking place between Canada and the EU on the “Canada-EU Trade Agreement” (CETA) in which the EU is putting pressure on Canada to once again amend its intellectual property laws to come into line with their own. 

Though this iteration of the resale right may not pass, interested parties should keep watch as the negotiations over CETA progress. It is quite possible that a similar amendment may be introduced in the near future; though next time, it may come from the government’s side of the aisle.