Bullock - LAW 347 - Reading Notes

Intellectual Property

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LAW 347 | intellectual property

reading notes | 2013-2014

John Bullock


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TABLE OF CONTENTS CHAPTER 1: Introduction ................................................................................................................................. 8 Introduction ............................................................................................................................................................................. 8 Summary of the Copyright Act ....................................................................................................................................... 9

International Treaties .......................................................................................................................................................... 9 Underlying Theory .............................................................................................................................................................. 10 The Scope of Government ................................................................................................................................................. 10 CHAPTER 2: Basic Elements of Copyright Law ........................................................................................ 12 Qualifying for Copyright ................................................................................................................................................... 12

Milliken & Co. v. Interface Flooring Systems ............................................................................................................................ 13 Mascot International v. Harman Investments Ltd. ............................................................................................................... 13

Publication ............................................................................................................................................................................ 13 Oscar Trade Mark ................................................................................................................................................................................ 13 Infabrics Ltd. v. Jaytex Ltd. .............................................................................................................................................................. 13 Robert D. Sutherland Architects Ltd. v. Montykola Investments Inc. ............................................................................ 14

Corporeal and Incorporeal .............................................................................................................................................. 14 re Dickens; Dickens v. Hawksley .................................................................................................................................................... 14

Fixation ................................................................................................................................................................................... 15 Canadian Admiral Corporation Ltd. v. Rediffusion, Inc. ..................................................................................................... 15 Gould Estate v. Stoddart Publishing Co. Ltd. ........................................................................................................................... 15 "A Charter of Rights for Creators" ................................................................................................................................................ 16

Originality/Expression/Idea ........................................................................................................................................... 16 University of London Press, Ltd. v. University Tutorial Press, Ltd. ................................................................................. 16 Fletcher v. Polka Dot Fabrics Ltd. ................................................................................................................................................. 17 Boutin v. Bilodeau ............................................................................................................................................................................... 17 Baker v. Selden ...................................................................................................................................................................................... 18 Cobbett v. Woodward ........................................................................................................................................................................ 18 Page v. Wisden ...................................................................................................................................................................................... 18

CHAPTER 3: Literary Works .......................................................................................................................... 19 General Meaning .................................................................................................................................................................. 19

University of London Press Ltd. v. University Tutorial Press, Ltd. .................................................................................. 19 Hollinrake v. Truswell ........................................................................................................................................................................ 19 The Bulman Group Ltd. v. Alpha One-‐Write Systems BC Ltd. ........................................................................................... 19 Exxon Corporation v. Exxon Insurance Consultants International Ltd. ...................................................................... 20 British Columbia v. Mihaljevic ....................................................................................................................................................... 20 Via Rail Canada Inc. v. Location Via-‐Route Inc. ..................................................................................................................... 21

Titles ........................................................................................................................................................................................ 22 McIndoo v. Musson Book Co. ........................................................................................................................................................... 22 Flamand v. Société Radio-‐Canada ................................................................................................................................................ 22 Francis, Day & Hunter Ltd. v. Twentieth Century Fox Corp. Ltd. .................................................................................... 22 Canadian Olympic Association v. Konica Canada Inc. ......................................................................................................... 23

Translations .......................................................................................................................................................................... 23 Byrne v. Statist Company ................................................................................................................................................................. 23

Unauthorised Translation ............................................................................................................................................ 24 Originality of Translations ........................................................................................................................................... 24

Pasickniak v. Dojacek ......................................................................................................................................................................... 24


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Bishop v. Tele-‐Metropole Inc. ......................................................................................................................................................... 24 Apple Computer Inc. v. Mackintosh Computers Ltd. ............................................................................................................. 25 Prism Hospital Software Inc. v. Hospital Medical Records Institute ............................................................................. 25

Computer Programs ........................................................................................................................................................... 26 "Literal Copying” ............................................................................................................................................................. 26

Apple Computer, Inc. v. Mackintosh Computers Ltd. 1990 SCC ....................................................................................... 26 "Non-‐literal Copying” ..................................................................................................................................................... 26 Three Broad Approaches: ........................................................................................................................................ 26 Look and Feel Approach ............................................................................................................................................................... 26 Broderbund Software Inc. v. Unison World, Inc. .................................................................................................................... 26 Arnstein Test .......................................................................................................................................................................................... 27 Abstraction-‐Filtration-‐Comparison Approach .................................................................................................................... 27 Method or System of Operation ................................................................................................................................................ 28 Computer Assoc. Int’l, Inc. v. Altai, Inc. ....................................................................................................................................... 28 Approach ............................................................................................................................................................................................. 28 Delrina Corp. (Carolian Systems) v. Triolet Systems Inc. ................................................................................................... 30 Prism Hospital Software Inc. v. Hospital Medical Records Institute ............................................................................. 31

CHAPTER 4: Dramatic Works ........................................................................................................................ 32 Statutory Definitions .......................................................................................................................................................... 32 Combination of Incidents/Originality/Fixation ....................................................................................................... 32

Hutton v. CBC ......................................................................................................................................................................................... 32 Kantel v. Frank E. Grant, Nisbet & Auld Ltd. ............................................................................................................................ 33 Green v. Broadcasting Corporation of New Zealand ............................................................................................................ 33

Sports Events ........................................................................................................................................................................ 34 FWS Joint Sports Claimants v. Copyright Board .................................................................................................................... 34 National Basketball Association v. Motorola, Inc. ................................................................................................................. 34 Canadian Admiral Corporation, Ltd. v. Rediffusion, Inc. .................................................................................................... 34

Cinematographic Works ................................................................................................................................................... 35 CHAPTER 5: Musical Works ........................................................................................................................... 36 Amendments to Statutory Definitions ......................................................................................................................... 36 Limitation Prior to August 31, 1993 ............................................................................................................................. 36

Composers, Authors and Publishers Assoc. of Canada Ltd. v. CTV Television Network Limited ....................... 36 Songs ........................................................................................................................................................................................ 37

ATV Music Publishing of Canada, Ltd. v. Rogers Radio Broadcasting Ltd. ................................................................. 37 Arrangements ....................................................................................................................................................................... 38

Wood v. Boosey ..................................................................................................................................................................................... 38 Redwood Music Ltd. v. Chappell & Co. Ltd. ............................................................................................................................... 38

Establishing Copyright/Proving Infringement ......................................................................................................... 38 Grignon v. Roussel ............................................................................................................................................................................... 38 Drynan v. Rostad .................................................................................................................................................................................. 40

CHAPTER 6: Artistic Works ............................................................................................................................ 41 Selected Definitions ............................................................................................................................................................ 41 Meaning of Artistic .............................................................................................................................................................. 41

George Hensher Limited v. Restawile Upholstery (Lancs) Limited ................................................................................ 41 Kenrick & Co. v. Lawrence & Co. .................................................................................................................................................... 42

Artistic-‐ness? ........................................................................................................................................................................ 42 Artistic Works in General ............................................................................................................................................. 42


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Cuisenaire v. South West Imports Ltd. ........................................................................................................................................ 42 DRG Inc. v. Datafile ............................................................................................................................................................................. 43 Lifestyle Homes Ltd. v. Randall Homes Ltd. .............................................................................................................................. 43

Artistic Craftsmanship .................................................................................................................................................. 43 George Henser Limited v. Restawile Upholstery (Lancs) Limited .................................................................................. 44

Architectural Works ...................................................................................................................................................... 44 Hay and Hay Construction v. Sloan ............................................................................................................................................. 44

Other Specified or Numerated Categories .............................................................................................................. 45 Netupsky v. Dominion Bridge Co. Ltd. ........................................................................................................................................ 45 Preston v. 20th Century Fox Canada Limited .......................................................................................................................... 45 LB (Plastics) Limited v. Swish Products Limited .................................................................................................................... 46 Bayliner Marine Corporation v. Doral Boats Ltd. .................................................................................................................. 46 British Leyland ...................................................................................................................................................................................... 47 Spiro-‐Flex Industries Ltd. v. Progressive Sealing Inc. .......................................................................................................... 47 Bayliner Marine Corporation v. Doral Boats. Ltd .................................................................................................................. 47 s 64 of the Copyright Amendment Act .................................................................................................................................... 47 Magasins Greenberg Ltee v. Import-‐Export Rene Derhy .................................................................................................... 48

CHAPTER 7: Compilations and Databases ................................................................................................. 49 CHAPTER 8: Economic Rights, Infringement and Defences ................................................................ 49 Introduction: The Scope of Economic Rights ............................................................................................................. 49 Works Under s. 5: Literary, Dramatic, Musical, and Artistic ............................................................................ 49 Subject Matter Protected by Neighbouring Rights (Other Subject-‐Matter) ................................................ 49 Performer’s Performances ...................................................................................................................................... 49 Sound Recording Makers ......................................................................................................................................... 50 Broadcaster’s Communication Signals ................................................................................................................ 50

Rental Rights .................................................................................................................................................................... 50 Notes .................................................................................................................................................................................... 50

Reproduction ........................................................................................................................................................................ 50 Nichols v. Universal Pictures Corporation ................................................................................................................................ 51 Preston v. 20th Century Fox Limited ........................................................................................................................................... 51 Hanfstaengl v. Empire Palace ........................................................................................................................................................ 51 Roger v. Koons ....................................................................................................................................................................................... 52

Substantiality ................................................................................................................................................................... 52 Quantitatively Substantial ....................................................................................................................................... 52 Hawkes & Son (London) Ltd. v. Paramount Film Service, Ltd. ........................................................................................ 52

Qualitatively Substantial .......................................................................................................................................... 53 Breen v. Hancock House Publishers Ltd. .................................................................................................................................... 53 Hutton v. Canadian Broadcasting Corporation ..................................................................................................................... 53 Prism Hospital Software v. Hospital Medical Records Institute ...................................................................................... 53

Performance in Public ....................................................................................................................................................... 54 Performance ..................................................................................................................................................................... 54

Canadian Cable Television Association v. Copyright Board (Canada) ......................................................................... 54 “In Public” .......................................................................................................................................................................... 54

Jennings v. Stephens ........................................................................................................................................................................... 54 Francis, Day & Hunter Ltd. v. Twentieth Century Fox Corp. Ltd. .................................................................................... 55 Canadian Admiral Corporation, Ltd. v. Rediffusion, Inc. .................................................................................................... 55 Canadian Cable Television Association v. Copyright Board (Canada) ......................................................................... 55


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Authorisation ........................................................................................................................................................................ 55 University of New South Wales v. Moorhouse ......................................................................................................................... 55 CBS Songs Ltd. v. Amstrad Consumer Electronics Plc. ......................................................................................................... 56 Muzak Corporation v. Composers, Authors & Publishers Association of Canada Ltd. ........................................... 56 de Tervagne v. Beloeil ........................................................................................................................................................................ 56

Specific or Enumerated Rights ........................................................................................................................................ 57 Communication to the Public by Telecommunication ....................................................................................... 57 Presentation at a Public Exhibition .......................................................................................................................... 57 From Gutenberg to Telidon: A White Paper on Copyright, Proposals for the Revision of the Canadian Copyright Act ............................................................................................................................................ 58 A Charter of Rights for Creators: Report of the Sub-‐Committee on the Revision of Copyright ........ 58

Infringement ......................................................................................................................................................................... 58 Parallel Importation of Books .................................................................................................................................... 58 Infringement Generally ................................................................................................................................................ 59 Primary Infringement ............................................................................................................................................... 59 Secondary Infringement ........................................................................................................................................... 59

Exceptions, Defences, and Fair Dealing ....................................................................................................................... 59 Sony Corp. v. Universal City Studios, Inc. ................................................................................................................................... 60

Making One Entire Copy ............................................................................................................................................... 60 Copying Unpublished Works ....................................................................................................................................... 60

Allen v. Toronto Star Newspaper Ltd. ......................................................................................................................................... 60 Television New Zealand v. Newsmonitor Services ................................................................................................................ 60 MCA Canada Ltd. v. Gillberry & Hawke Advertising Agency Ltd. .................................................................................... 61

CHAPTER 9: Moral Rights ............................................................................................................................... 62 Snow v. The Eaton Centre Ltd. ....................................................................................................................................................... 62 Prise de parole Inc. v. Guérin, éditeur Ltée. .............................................................................................................................. 62 John Maryon International Ltd. v. New Brunswick Telephone Co. Ltd. (plaintiff) .................................................. 63

CHAPTER 11: A Note on Unfair Competition ............................................................................................ 65 Mogul Steamship Co. v. McGregor, Gow & Co. ......................................................................................................................... 65 Moorgate Tobacco Co. Ltd. v. Philip Morris Ltd. .................................................................................................................... 65 International News Service v. Associated Press ..................................................................................................................... 65

CHAPTER 12: Passing Off ................................................................................................................................ 66 Introduction .......................................................................................................................................................................... 66 The Common Law Tort .................................................................................................................................................. 66

Perry v. Truefitt .................................................................................................................................................................................... 66 Walker v. Alley ...................................................................................................................................................................................... 66 A.G. Spalding & Bros. v. A.W. Gamage Ltd. ................................................................................................................................ 66 Reckett & Colman Products Ltd. v. Borden Inc. ...................................................................................................................... 67 Cadbury Schweppes Pty. Ltd. v. Pub Squash Co. Pty. Ltd. ................................................................................................... 67

The Statutory Tort .......................................................................................................................................................... 67 Asbjorn Horgard A/S v. Gibbs/Nortac Industries Ltd. ......................................................................................................... 67

Elements of Passing Off: Reputation ............................................................................................................................. 68 Protectable Goodwill ..................................................................................................................................................... 68 Shared Goodwill .......................................................................................................................................................... 68 Erven Warnink ...................................................................................................................................................................................... 68 Institut National des Appellations d’Origine des Vins et Eaux-‐de-‐Vie et al. v. Andres Wines Ltd. et al. ........ 68 Dairy Bureau of Canada v. Annable Foods Ltd. ...................................................................................................................... 68


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Foreign Goodwill ......................................................................................................................................................... 69 Common Law ..................................................................................................................................................................................... 69 Orkin Exterminating Co. Inc. v. Pestco Co. of Canada Ltd. et al. ...................................................................................... 69 Statute ................................................................................................................................................................................................... 69 Enterprise Rent-‐A-‐Car Co. v. Singer ............................................................................................................................................. 69

Non-‐Commercial Goodwill ....................................................................................................................................... 69 Polsinelli v. Marzilli ............................................................................................................................................................................. 69

Indicia ................................................................................................................................................................................. 70 General Proof of Distinctiveness ........................................................................................................................... 70 Oxford Pendaflex Canada Ltd. v. Korr Marketing Ltd. ........................................................................................................ 70 Ray Plastics Ltd. et al. v. Dustbane Products Ltd. .................................................................................................................. 70 Robinson v. Bogle -‐ the Belleville College Case ....................................................................................................................... 70

Secondary Meaning .................................................................................................................................................... 70 Descriptiveness ................................................................................................................................................................................ 70 Reddaway (Frank) & Co., Ltd. v. George Banham & Co., Ltd. -‐ (the Camel Hair case) ........................................... 70 Genericness ........................................................................................................................................................................................ 71 Grand Hotel Company of Caledonia Springs, Ltd. v. Wilson .............................................................................................. 71 Get-‐Up – Packaging, Premises .................................................................................................................................................... 71 Reckitt & Colman Products Ltd. v. Borden Inc. ....................................................................................................................... 71 Get-‐Up -‐ Wares .................................................................................................................................................................................. 71 Eli Lilly and Co. v. Novopharm Ltd. .............................................................................................................................................. 71

Range of Indicia ............................................................................................................................................................... 72 Verbal ............................................................................................................................................................................. 72 Visual .............................................................................................................................................................................. 72 Fictional Character ..................................................................................................................................................... 72

Loss of Reputation .......................................................................................................................................................... 72 Abandonment .............................................................................................................................................................. 72 Ad-‐Lib Club Limited v. Granville .................................................................................................................................................... 72

Becoming Generic ....................................................................................................................................................... 73 Institut National des Appellations d’Origine des Vins et Eaux-‐de-‐Vie et al. v. Andres Wines Ltd. et al. ........ 73

Elements of Passing Off: Misrepresentation .............................................................................................................. 73 Proof of Misrepresentation ......................................................................................................................................... 73 Factors ............................................................................................................................................................................ 73 Institut National des Appellations d’Origine des Vins et Eaux-‐de-‐Vie et al. v. Andres Wines Ltd. et al. ........ 73

Common Field of Activity ......................................................................................................................................... 73 McCulloch v. Lewis A. May (Produce Distributors) Ltd. ...................................................................................................... 73 Krouse v. Chrysler Canada Ltd. ...................................................................................................................................................... 74 Young v. Scot Young Ltd. .................................................................................................................................................................. 74

The Test Person ........................................................................................................................................................... 74 Ciba-‐Geigy Canada Ltd. v. Apotex Inc. & Ciba-‐Geigy Canada Ltd. v. Novopharm Ltd. ........................................... 74 Mr. Submarine Ltd. v. Emma Foods Ltd. .................................................................................................................................... 75

Types of Misrepresentation ........................................................................................................................................ 75 Source or Quality ........................................................................................................................................................ 75 Consumers Distributing Co. v. Seiko Time Canada Ltd. ...................................................................................................... 75 Disney Case ............................................................................................................................................................................................. 75

Elements of Passing Off: Damage ................................................................................................................................... 76 Generally ............................................................................................................................................................................ 76 Heads of Damage ............................................................................................................................................................. 76


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Direct Loss of Trade ................................................................................................................................................... 76 Damage to Repute ...................................................................................................................................................... 76 Harmful Association .................................................................................................................................................. 76 Annabel’s (Berkely Square) Ltd. v. Schock ................................................................................................................................ 76

Loss of Licensing or Franchising Opportunity .................................................................................................. 76 House of Faces Inc. v. Leblanc ........................................................................................................................................................ 77

Inability to Expand ..................................................................................................................................................... 77 Dilution ............................................................................................................................................................................... 77

Harrods Ltd. v. Harrodian School Ltd. ........................................................................................................................................ 77 Defences ................................................................................................................................................................................. 77 Unclean Hands ................................................................................................................................................................. 77

Brewster Transport Company, Ltd. v. Rocky Mountain Tours and Transport Company, Ltd. ........................... 77 Use of One’s Own Name ................................................................................................................................................. 77

The Hurlburt Company v. The Hurlburt Shoe Company ..................................................................................................... 78 Biba Group Ltd. v. Biba Boutique .................................................................................................................................................. 78 Mario’s Spaghetti House & Pizzeria Ltd. v. Italian Village Ltd. ....................................................................................... 78

“Honestly Using” ......................................................................................................................................................... 78 Hunt’s Ltd. v. Hunt ............................................................................................................................................................................... 78

Concurrent or Prior Use ............................................................................................................................................... 78 J. & A. McMillan Ltd. v. McMillan Press Ltd. .............................................................................................................................. 78 Fraser Taxi Ltd. v. Reid ...................................................................................................................................................................... 79

Disclaimers ....................................................................................................................................................................... 79 Associated Newspapers Group v. Insert Media Ltd. .............................................................................................................. 79 Home Shoppe Ltd. v. National Development Ltd. .................................................................................................................. 79

CHAPTER 13: Registered Trademarks ....................................................................................................... 80 Introduction .......................................................................................................................................................................... 80 Development .................................................................................................................................................................... 80 Definition of Trademark ............................................................................................................................................... 80

Playboy Enterprises Inc. v. Germain ............................................................................................................................................ 80 Central Concepts ............................................................................................................................................................. 80 Use ................................................................................................................................................................................... 80 Confusion ....................................................................................................................................................................... 80 Distinctiveness ............................................................................................................................................................ 81

Assignment and Licensing of Trademarks ............................................................................................................. 81 Unfair Competition and Prohibited Marks ............................................................................................................. 81 Protected Geographical Indications ......................................................................................................................... 82 The Registration Process ............................................................................................................................................. 82

Registrability ........................................................................................................................................................................ 82 Ordinary Trademarks ................................................................................................................................................... 82 Barriers to Registration ........................................................................................................................................... 82 a) Names or Surnames .................................................................................................................................................................. 82 Standard Oil Co. v. Registrar of Trade Marks .......................................................................................................................... 82 b) Descriptiveness ........................................................................................................................................................................... 83 Drackett Co. of Canada Ltd. v. American Home Products Corp. ...................................................................................... 83 Home Juice Co. v. Orange Maison Ltée ....................................................................................................................................... 83 c) Genericness ................................................................................................................................................................................... 83 Wool Bureau of Canada Ltd. v. Bruck Mills Ltd. ..................................................................................................................... 83 Brûlerie Des Monts Inc. v. 3002462 Canada Inc. ................................................................................................................... 83


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d) Confusion with Registered Trademarks .......................................................................................................................... 84 United Artists Corp. v. Pink Panther Beauty Corp. ................................................................................................................ 84 Mattel, Inc. v. 3894207 Canada, Inc. ........................................................................................................................................... 84 Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée ............................................................................................................ 84 s. 22 -‐ alternative remedy to confusion .................................................................................................................................. 84 Exceptions ..................................................................................................................................................................... 85 a) Acquired Distinctiveness ........................................................................................................................................................ 85 b) Marks Registered Abroad: s. 14 ........................................................................................................................................... 85 c) Associated Marks: s. 15 ............................................................................................................................................................ 85 d) Disclaimer: s. 35 .......................................................................................................................................................................... 85 Canadian Jewish Review Ltd. v. Registrar of Trade Marks ................................................................................................ 86 Cooper v. Mark’s Work Wearhouse Ltd. .................................................................................................................................... 86

Distinguishing Guise: s. 13 ........................................................................................................................................... 86 Dominion Lock Co. Ltd. and Independent Lock Co. v. Schlage Lock Co. ....................................................................... 86

Certification Marks: s. 23 .............................................................................................................................................. 86


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PART I: COPYRIGHT LAW

CHAPTER 1: INTRODUCTION

INTRODUCTION

! Copyright Act, RSC 1985, c. C-‐42, copyright law in the following broad dimensions " Matters protected by copyright are divided into two groups:

# works -‐ s.5 as "every original literary, dramatic, musical and artistic work" # "other subject-‐matter" -‐ not specifically defined, rather just a catch-‐all

• performers' performances ss. 15 and 26 • sound recordings s. 18 • broadcasters' communication signals s. 21

" Economic rights are defined in s. 2 as "copyright" and comprise the rights stipulated in s. 3 in the case of a "work" and the rights stipulated in ss. 15, 18, 21 and 26 as relevant to the particular categories of "other subject matter".

" Moral rights as provided for in ss. 14.1, 14.2, 28.1, and 28.2 apply to "works", but not "other subject-‐matter".

! Matters encompassed in "other subject-‐matter" are known internationally as "neighbouring rights"

! Neighbouring must be understood by looking at "droit d'auteur" in civil law jurisdictions to "copyright" in common law jurisdictions. " Droit d'auteur reflects a philosophy of individual and "personal creation" where "the work is part of

the personality of the author and remains linked to him" " Therefore it is a natural and therefore individual right and can only originate in an individual and not

in a company or corporation". " Copyright lacks this recognition of the close personal link with the author and the inherent

connection of a work with the author's persona or personality. " Seen as essentially economic.

! "other subject matter" is treated separately in a few ways: " Scope of protection is limited to economic right specifically stipulated for the particular subject

matter. # "General" economic rights in s. 3 are not applicable to other subject matter

" Protection term is provided separately in ss. 23 and 26(5) and is defined as 50 years from the end of the calendar year in which it was created. # "works" is the life of the author, he remainder or the calendar year in which the author dies, and

a period of fifty years following the end of that calendar year. # The omission of anything to do with the author shows the secondary or derivative nature of

"other subject matter". # Even a cinematographic work (under dramatic work) that does not feature "an arrangement or

acting from or the combination of incidents represented [that gives] the work a dramatic character" (s. 11.1) receives a term of only the remainder of the calendar year and 50 years following.


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" Except in the case of a performer's performance, a corporation or other non-‐human entity may create "other subject matter", with regard to "works", there must always be a human author.

" Moral rights, or droit moral (significant part of droit d'auteur) have also been adopted in many jurisdictions, (including Canada since 1931), but applies only to "works". # See s. 14.1(1) which establishes moral rights for "the author of a work". An author cannot assign

or alienate moral rights, at least inter vivos. • Testimentary and intestate succession is provided for in s. 14.2(2).

SUMMARY OF THE COPYRIGHT ACT

" Works -‐ full moral rights s 14.1, life plus 50 years s.6 # Literary # Dramatic # Musical # Artistic

" "Other subject-‐matter"/Neighbouring Rights 50 years from end of calendar year ss. 23 and 26(5) # Performer's performances (ss. 15 and 26) # Sound recordings s.18 # Broadcasters' communication signals s. 21

" Looking at the relationship between author and publisher Morang and Co. v. LeSueur and Tedesco v. Bosa

INTERNATIONAL TREATIES

! Berne Convention for the Protection of Literary and Artistic Works, 1886 " along with various changes and additions through to the Paris Revision of 1971.

! Berne Principles " Universal protection throughout member countries by either being a national or having a habitual

residence in a member country, or by causing the work to be first published in a union country. " "National Treatment" whereby nationals of a country of the union shall enjoy in other countries of

the union the same rights that copyright law provides to that country's own nationals, as well as the rights specially granted by the Berne Convention.

" The absences of any formalities for the gaining of protection -‐ in effect, copyright is available merely upon the creation of the work, with regard to protection in Union countries outside of the country of origin.

" The provision of a general term of protection of the life of the author and fifty years after his death with the ability of countries to grant terms in excess of this term (art 7(6)) and with shorter terms being permitted to continue in the case of countries party to the convention and which have in existence shorter terms of protection.

! Universal Copyright Convention # States can retain specified formalities as prerequisites for gaining copyright protection. # States can retain a term of protection defined by reference to a term of years from publication or

registration, without necessarily any inclusion of a period determined by the life of an author. In this respect, arts. IV (1) and (2) of Paris 1971 Revision.

# The nature and scope of protections afforded under the UCC are specified in a less detailed manner than those stipulated in the Berne Convention.


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! Copyright Act today uses the s. 5 expression "treaty country" with regard to international protection and in s. 2 defined treaty country as a "Berne Convention country, UCC country, or WTO member" " Key requirements of the WTO concerning IP as set out in the TRIPs agreement:

# Berne Convention: for the protection of literary and artistic works # Berne Convention 1971: the Paris Act of the Berne Convention of July 24, 1971 # Rome Convention: The international Convention for the Protection of Performers, Producers of

Phonograms and Broadcasting Organisations, adopted at Rome on October 26, 1961. # WTO Agreement: The agreement establishing the WTO (namely, the Agreement Establishing the

WTO drawn at Marrakech on April 1, 1994) ! World Intellectual Property Organisation (WIPO)

" Two treaties adopted in diplomatic conference: # WIPO Copyright Treaty # WIPO Performers and Phonograms Treaty

" Mostly to do with electronic media, stopping people from using in a way not explicitly allowed, or removing protection, etc.

UNDERLYING THEORY

! Little attempt to stipulate an underlying theory or rationale to explain and influence the interpretation of the copyright legislation.

! On at least two occasions, the SCC has described the approach to interpreting the CA as simply statutory interpretation. " See Compo Co. v. Blue Crest Music Inc.

! Leading theory on copyright today is pragmatic school: " CR should be determined by statute law based on an analysis of all the interests involved, with

emphasis on the public interest. " Pragmatic analysis of these interests leads one to express the rights granted in terms of exclusive

rights of authors. " Concern with the underlying social philosophy of copyright law is unwarranted unless different

theories lead to different conclusions. ! The US is more based on a social contract theory.. article 1 §8 if the Constitution stipulates that copyright

legislation by the congress must "promote the Progress of Science and useful Arts by securing for limited Times to Authors and Inventors the exclusive right to their respective writings and discoveries."

THE SCOPE OF GOVERNMENT

! Canadian jurisprudence had difficulties with demarcating the boundaries of CR protection. " Historically, there was little need to seek a more precise formulation of the scope of CR because the

influence of copyright in the marketplace and beyond the context of objectives of aesthetic appeal was limited.

! Original form of expression presents the crucial requirement of "copyrightability". " If not present, the subject matter is either protectable by other areas of OP or is in the public domain.

# If CR protection is recognised regardless, then it is being used as a judicially imposed measure against copying simpliciter, in effect against "unfair competition" by misappropriation.

" Difficulty is in defining original and settling the demarcation between protectable form of expression and unprotect able subject matter.

" Traditionally it was said to be established simply if the work was not copied from another source. # Generally adequate, but fails in some instances.


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" Examples: # Concepts that can only be expressed in a certain number of ways; e.g. a circle. # More complicated but still routine, a form with spaces for name, address, phone, etc. # Compilations of facts, information or data, presented in a routine (e.g. alphabetical) # Non-‐distinctive routine instruction, such as "follow the clinic procedure for aftercare. If proper

procedures are followed, no risk of viral infections can occur." # A single word. Consider words such as aftercare, Exxon, Wombles. Are they original?

• If Exxon were copyrightable, would there be a need to retain trademark law?


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CHAPTER 2: BASIC ELEMENTS OF COPYRIGHT LAW

QUALIFYING FOR COPYRIGHT

! Conditions for Subsistence of Copyright " §5(1)(a)-‐(c) " Subject to this Act, copyright shall subsist in Canada, for the term hereinafter mentioned, in every

original literary, dramatic, musical and artistic work if any one of the following conditions is met: # (a) In the case of any work, whether published or unpublished, including a cinematographic

work, the author was, at the date of the making of the work, a citizen or subject of, or a person ordinarily resident in, a treaty country:

# (b) in the case of a cinematographic work, whether published or unpublished, the mater, at the date of the making of the cinematographic work, • (i) if a corporation, had its headquarters in a treaty country, or • (ii) if a natural person, was a citizen or subject of, or a person ordinarily resident in, a treaty

country; or # (c) In the case of a published work, including a cinematographic work,

• (i) in relation to subparagraph 2.2(1)(a)(i), the first publication in such quantity as to satisfy the reasonable demands of the public, having regard to the nature of the work, occurred in a treaty country, or

• (ii) in relation to subparagraph 2.2(1)(a)(ii) or (iii), the first publication occurred in a treaty country.

! First Publication " § 5(1.1) of the Copyright Act states:

# The first publication described is deemed to have occurred in a treaty country notwithstanding that it in fact occurred previously elsewhere, if the interval between these two publications did not exceed thirty days.

! History " Prior to amendments to the Copyright Act effective from January 1, 1994, Canada may not have been

in compliance with the Berne and Universal Copyright Conventions. " The requirements of the Berne and UCC oblige Canada to go further than the present law, in order to

protect works of creators of convention countries regardless of the country of first publication of the work and works of non-‐convention nationals first published in a convention country. In addition, equity dictates that all works created while an author was domiciled or resident in Canada should receive protection.

! Explanation " § 5 of the Copyright Act, prior to January 1, 1994, required in the case of a published work that the

author both be a citizen of a Berne Convention country or a resident of the Commonwealth and first publish in a Berne country. # The qualification of citizenship or residency excluded residents, but not citizens, of Berne

Convention countries outside of the commonwealth. " The Berne Convention 1928 covers citizens or residents of Berne Convention countries and, in the

case of published works, either authors who are citizens or residents or authors who are not citizens or residents of Berne Convention countries but whose works are first published in a Berne Convention country.


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Milliken & Co. v. Interface Flooring Systems

! First held that for copyright to subsist in a work created by a citizen of a foreign country (per the Berne Convention), it must also be first published in that same foreign country of which the creator is a citizen.

! Reversed, by Strayer J, finding that although the English text of § 5 supported this view, the French text allowed first publication in any of the countries adhering to the convention. " Went with the interpretation that is most consistent with the original version of the Convention.

Mascot International v. Harman Investments Ltd.

! What is the purpose of this case? ! Plaintiffs allege copyright infringement on "ornamental items each of which features an animal or insect

made of gold plated metal and crystal" ! Plaintiffs provided copies of the certificates of copyright registration.

" Defendants said that didn't show that they were first published in a convention country. " Judge said it was.

PUBLICATION

! Statutory Provisions " § 3(1) provides as an economic right of copyright the right "to publish the work or any substantial

part thereof" " § 2.2(1) defines publication:

# in relation to works, i. making copies of a work available to the public, ii. the construction of an architectural work, and iii. the incorporation of an artistic work into an architectural work, and

# (b) in relation to sound recordings, making copies of a sound recording available to the public, but not include

# the performance in public, or the communication to the public by telecommunication, of a literary, dramatic, musical or artistic work or a sound recording, or

# the exhibition in public of an artistic work.

Oscar Trade Mark

! Application was made for registration as a trademark the word "Oscar" adjacent to a silhouette of an Oscar statuette, for radio, television and recording apparatus and record players, tape recorders and cassettes.

! Registration was opposed by the Academy of Motion Picture Arts and Sciences. " The silhouette representation of an Oscar in the trademark was an infringement of the academy's UK

copyright in the Oscar statuette. CR for the Oscar statuette, as an artistic work, would exist in the UK at the time only if the various statuettes, created in the US, were unpublished.

! Held that the issuance of many statuettes to award winners was not "publishing" them, because it was not an offer of reproduction to the public, as the issuance and use is very limited and controlled.

Infabrics Ltd. v. Jaytex Ltd.

! Allegation of infringement of copyright by "publication" of a fabric design for use in manufacturing shirts. ! Plaintifs had previously published the design.


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! The defendant had used the design for the manufacture of shirts in Hong Kong for shipment to the UK. ! HoL considered whether the sale in the UK of the shirts of the design constituted a "publication" of

copyright. ! Defendant submitted that in copyright law, publication meant making available to the public copies of a

work previously unpublished. " CoA rejected this, finding that "the acts of importation and sale constituted infringement by

publishing. " The HoL reversed.

! Ruled that "publication" meant making available copies to the public. " JB -‐ What is the meaning of this then? Pretty sure it means you actually have to make copies available

to the public to have copyright.

Robert D. Sutherland Architects Ltd. v. Montykola Investments Inc.

! Plaintiff had authored a development plan for a residential development. ! Plaintiff was to participate as a partner in the development proposal and submitted to the municipality

various plans, including the one that was eventually approved by the town planning advisory committee of the relevant municipality.

! The plaintiff's development plan "formed part of the town's resolution and was attached to the development plan".

! Planned purchase didn't happen, and then a different developer purchased the land at a higher price. " Copies of the development plan appeared "anonymously" at the office of the town engineer, who

attached them to the development agreement of the new purchasers of the land, even though the plaintiff had refused to supply copies and had even forbidden the use of his plans.

" Court discussed various issues, including breach of copyright in the plaintiff's plan. " The defendant owner of the land was found to have infringed the copyright in the plaintiff's plan.

! Found that the defendant owner of the land infringed the copyright in the plaintiff's plan. ! Reasoning:

" The Sutherland plan was designed specifically for the lot of land in question, therefore unique. " In view of the J it was included in the definition of artistic work. " The copyright was restricted to the plan itself, and not a development agreement with the town.

# Only Sutherland had the right to reproduce the plan, to exploit the plan by attaching it to the development agreement.

" Not clear who actually reproduced the pirated copy of the plan, which was probably another breach of copyright.

" The fact that the plan was not used in the actual construction is relevant to the question of damages, but does not take away from the fact of use.

" It wasn't the construction of the buildings that breached the copyright, it was the use of the plans in the development agreement.

CORPOREAL AND INCORPOREAL

re Dickens; Dickens v. Hawksley

" Novelist Charles Dickens died in 1870, gave all his private papers to his sister-‐in-‐law, Hogarth. " Residuary estate, including his copyrights, was given to trustees for the benefit of residual legatees,

Hogarth and Forster.


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" Property included an unpublished manuscript, entitled variously as "The New Testament" among other titles. # Written for the instruction of his children and not intended to be published. # Determined to be amongst Dickens' "private papers" and to have passed to Hogarth.

• Didn't give her the copyright for the work, this passed to the trustees for Hogarth and Forster.

# Passed through various estates until 1934 when the executrix and trustee of the then holders assigned it to Associated Newspapers Ltd for publication, which duly took place. • Beneficiaries of the residual legatees sued for copyright infringement.

" Copyright laws: # At time of death in 1870, unpublished literary matters the rights of an author and his personal

representatives and of those who became entitled to the unpublished literary matter either upon an intestacy or by virtue of a testamentary disposition rested upon the provisions of the common law.

# Before July 1, 1912, the date upon which the Copyright Act, 1911, came into effect, there was no statutory copyright in unpublished literary works.

# Neither the Copyright Act, 1942, nor the earlier Copyright Acts which ere thereby repealed, earliest of which was the 8th Anne, c 19, protected unpublished literary property.

" Held in the respondent's favour on the basis that copyright in an unpublished work was an incorporeal right of property which subsisted independently of the actual manuscript.

! Maybe take a look at the notes on pg 33 to see what additional stuff is in the other cases listed there.

FIXATION

Canadian Admiral Corporation Ltd. v. Rediffusion, Inc.

! Looking at ss. 2 and 3 of the Copyright Act, for copyright to exist in a "work" it must be expressed to some extent at least in some material form, capable of identification and having a more or less permanent endurance.

! All the works included in the definitions of "artistic work" and "literary work" must be printed, reduced to writing or otherwise graphically produced or reproduced.

! Likewise, in regard to "dramatic works" there is the requirement that the scenic arrangements or acting form must be fixed in writing or otherwise.

! Cinematographic productions, which are also dramatic works, are obviously "fixers otherwise" since they involved the making of films.

Gould Estate v. Stoddart Publishing Co. Ltd.

! Gould, a young concert pianist, was interviewed for an article by Carroll. ! Talked on a variety of occasions and in numerous venues. ! Over this time, Carroll took approximately 400 photos of Gould, copious notes, and some tape-‐recordings

of their conversations. " Some of these photos, notes, etc, were used in the article.

! ~40 years later, Carroll published a book through Stoddart publishing "Glenn Gould: Soime Portraits of the Artist as a Young Man"

! Gould had died 13 years prior, and his estate did not authorise its publication or receive royalties from the book.


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! Issue: Whether Gould (and now his estate) has copyright in the oral conversations, which occurred between himself and Carroll and form the essence of the text in the book in question.

! S. 2 discusses lectures, further defined as including "address, speech and sermon". " Plaintiffs submit that spoken words are therefore clearly contemplated within the definition of

"literary works". " Goes counter to judicial decisions which have held that for copyright to subsist in a work, it must be

expressed in material form and having a more or less permanent endurance (Canadian Admiral Cord v. Rediffusion).

" A person's oral statements in a speech, interview or conversation are not recognised in that form as literary creations and do not attract copyright protection (Walter v. Lane). # The person who makes notes or report of the speech is the author of the report and obtains

copyright in the report. # Exception for a scribe, merely writing an article from dictation (Walter v. Lane) # Excerpt from Falwell v. Penthouse sayings that Falwell's claim of copyright presupposes that

every utterance he makes is a valuable property, and any time celebrities or public figures said anything it should be afforded the protection of copyright.

! In Canada it relies often on fixation and who fixed the "work". " In the US, fixation is the subject of a statutory definition:

# …sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration. A work consisting of sounds, images, or both, that are being transmitted, is "fixed for purposes of this title if a fixation of the work is being made simultaneously with its transmission".

"A Charter of Rights for Creators"

! Report of the Sub-‐Committee on the Revision of Copyright: Standing Committee on Communications and Culture

! Report in 1984 said that the current definition of fixation was out of date and needed to be revisited, and expanded to include any form of fixation.

! Suggestion was that it should take into account all forms of material media, even those that do not exist at present.

! 54. Said that fixation should be defined as all means capable of capturing a work, including capture in computer media, but excluding capture in a medium as volatile as a computer's main storage or display screen.

! 55. With respect to the right of reproduction, a material form should be one that has a certain degree of permanence.

ORIGINALITY/EXPRESSION/IDEA

University of London Press, Ltd. v. University Tutorial Press, Ltd.

! Examiners appointed by the UoL prepared examination papers to be written by students. ! By agreement, the copyright in the examination papers was owned by the university., which in turn

assigned the copyright to the plaintiff ! Plaintiff published the examination papers after the exams had been taken. ! The defendant had taken the exams and published them together with answers to some of the questions

in the papers as well as some criticisms on the manner in which the papers had been set. ! Reasoning: Are these examination papers, within the meaning of the Act, original literary works?


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" s. 35 states what the phrase includes; the definition is not a completely comprehensive one, but the section is intended to show what, amongst other things, is included in the description of "literary work".

" includes maps, charts, plans, tables and compilations. " In the judge's view, literary work covers work which is expressed in print or writing, irrespective of

the question whether the quality or the style is high. ! Established that it is a literary work, but is it original?

" Doesn't mean that the work must be the expression of original or inventive thought. Just needs to be an original expression of thought.

" Must originate from the author, not copied from another source. " Doesn't require knowledge that is unique to only the author, or else historians could only publish

work about facts they discovered themselves. " Time expended can't be the test, or else a poem written quickly wouldn't be able to get copyright.

! Held that the book and the papers alike originate from the author and are not copied by him from another book or other papers. " Rough test that what is worth copying is worth protecting. " Papers set by the examiners are "original literary work" and property subject for copyright under the

Act of 1911.

Fletcher v. Polka Dot Fabrics Ltd.

! September 1989 the plaintiff designed a pattern for a cloth diaper and marketed the pattern under the trademark "Snappy Nappy".

! From March to August 1990, the defendant or parties connected with the defendant purchased 5 shipments of the pattern.

! In spring 1991, the plaintiff discovered that the defendant had commenced producing a diaper pattern under the trademark Baby Precious. " Although the pattern cover for BP was dissimilar to the cover of the plaintiff's, she believed her

pattern to have been copied and brought proceedings for infringement of her copyright. ! Reasoning:

" Notes that copyright protects the expression of ideas rather than the ideas themselves. # The form of the idea, not the ideas contained in that form.

" No one can copyright an idea. " Plaintiff's work is both literary and artistic, and has material form. " The Snappy Nappy was the result of the plaintiff's personal labour.

Boutin v. Bilodeau

! The respondent put on the market tickets to be used for promotions and to raise funds for charitable or non-‐profit organisations.

! As with certain kinds of lottery tickets, these tickets had 100 squares covered with a thin film which is scratched to show the amount of the voluntary contribution.

! In Oct 1984 the respondent obtained copyright of these tickets registered as a literary work. ! In 1986 Boutin decided to go into that same market.

" Once informed, the respondents reacted strongly. " Also contacted Boutin's clients directly to encourage them not to enter into any agreements with

Boutin and made remarks about the appellant which the judge of first instance found to be defamatory.


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" Initial ruling found the appellants liable for infringement. ! For liability to exist, not enough that Boutin borrowed an idea. There has to be a wrong.

" This wrong consists in a copy of the original, a copy such that, in anyone who sees it, it produces the same idea as that given by the original (King Features Syndicate Inc. v. Lechter)

! From case law, two conditions have to be met for a copy to be at fault. " Has to be a connection between the original work and the copy, in the sense that it must be possible

to established that the original work is the source for the copy. # In this case, condition is undoubtedly met.

" Had to be a sufficient objective similarity between the original and the copy for the latter to be considered as a reproduction or an adaptation of the first, without necessarily being perfectly identical. # Same number of squares, placed in an identical way. # Words on the two tickets are very similar.

! Looking at the originals, different size, construction, colour, and general appearance are different. ! Held: Criterion of sufficient objective similarity between the original and second had not been met, and

that the latter cannot be viewed as a reproduction or at best as as simple adaptation of the original. ! Then went to SCC, where it was found that the CoA erred in thinking that it must only be a simple copy.

Baker v. Selden

! Selden the testator of the complainant in this case in 1859 took the requisite steps for obtaining the copyright of a book. " Object of which was to exhibit and explain a peculiar system of bookkeeping.

! In 1860-‐61 he took the copyright of several other books containing additions to and improvements upon the said system.

! Bill of complaint was filed against the defendant for an alleged infringement of these copyrights. ! If Baker had the right to exclusive use of the system, it would be difficult to contend the defendant didn't

infringe regardless of the differences in column arrangement and headings. " Selden has used essentially the same system, but presented in a different way.

! More like an issue of patent. If a doctor devises a system of healing, and publishes it, he has made it available to the world. " By publishing the book, without getting a patent for the art, the latter is given to the public. " The illustrations are the mere language employed by the author to convey his ideas more clearly. " Math book cannot give the author the exclusive right to use that sort of math.

Cobbett v. Woodward

! Claim to copyright in a catalogue of furniture which the published had on sale in his establishment, illustrated with many drawings.

! Defendants used the same illustrations, but also had the same products on sale. ! Held that there could be no copyright, because it was a mere ad for the sale of particular articles which

anyone might imitate and anyone might advertise for sale.

Page v. Wisden

! Copyright was claimed in a cricket score sheet, held that it was not a fit subject for copyright partly because it was not new, but also because "to say that a particular mode of ruling a book constituted an object for a copyright is absurd".


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CHAPTER 3: LITERARY WORKS

GENERAL MEANING

University of London Press Ltd. v. University Tutorial Press, Ltd.

! s1(1) of the Copyright Act 1911 provides for copyright in "every original literary dramatic musical and artistic work", subject to certain conditions which for this purpose are immaterial and the question is whether these examination papers are, within the meaning of this Act, original literary works.

! s 35 states what the phrase includes, though the definition is not a comprehensive one. " Includes maps, charts, plans, tables, and compilations.

! "The word 'literary' seems to be used in a sense somewhat similar to the use of the word 'literature' in political or electioneering literature and refers to written or printed matter." " "Papers set by examiners are, in my opinion, "literary work", within the meaning of the present Act.

! Question then becomes whether or not they are original.

Hollinrake v. Truswell

! Plaintiff claimed copyright protection in a "sleeve-‐chart" designed to be used in dressmaking. ! It consisted Readi a piece of cardboard curved to resemble parts of an arm and depicted phrases and

measurement scales to be followed when using the chart. ! Had certain descriptive words, and measurement labels. ! Proceedings at time were under Literary Copyright Act in the UK, at the time they would have been

"literary work" in Canada, until Copyright Amendment Act 1988 and would now be known as an artistic work.

! Ruling: " "Literary work is intended to afford either info and instruction or pleasure in the form of literary

enjoyment." " Sleeve gives us no information or instruction, doesn't add to the stock of human knowledge and

doesn't give any instruction. " Doesn't afford any pleasure or enjoyment. " Said it is a mechanical contrivance, appliance or tool. " Should have been a patent for an invention.

The Bulman Group Ltd. v. Alpha One-‐Write Systems BC Ltd.

! Plaintiffs claimed copyright in seven business forms constituting an overall accounting system that avoided the necessity of repeating entires in subsequent accounting documentation.

! Known as a "one-‐write" system. ! Judge found sufficient originality skill and labour required to render the work in issue capable of being

copyrighted. ! Trial Judge:

" Not only s 4 but all throughout the act literary works are linked with dramatic, musical and artistic works. # Settled law that the literary merit of a work need not be high and indeed might be minimal or

non-‐existent, especially in the case of a compilation. " May be a trade director or a compilation of some sort as long as some original skill and judgment is

required in its preparation.


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! Federal CoA " Trial judge erred in saying that a work must be informative to be a literary work within the meaning

of the Copyright Act. " American Cyanimid v. Ethicon Ltd.

# Application for an interlocutory inunction is not the stage for determining difficult questions of law on which the merits of the case depend, and that where the other conditions for an injunction are satisfied, it should not be refused if there is a serious question to be tried.

! Held that the request for interlocutory injunction should not have been refused on the ground that the forms were not proper subject-‐matter for copyright.

Exxon Corporation v. Exxon Insurance Consultants International Ltd.

! Plaintiff had invented the name Exxon. ! Principal issue is whether or not protection could be given to the single word. ! Submitted that the creation of the word had involved considerable time and labour and was accepted as

being original, although with some reservation as to the extent and nature of the literary or research work involved.

! Clear from the definition from University of London Press, words literary and original must be treated reasonably broadly, and it stems from that if a word is invented it must for practical purposes be considered as original.

! If a copyright were granted, the general public wouldn't be able to refer to any of the plaintiff companies or to any of their goods without having the plaintiff's licence expressly or impliedly to do so.

! It's merely a word which, though invented and therefore original, has no meaning and suggests nothing in itself. " To give it meaning it must be accompanied by other words.

! Already covered by Trade Marks Act, but that shouldn't impact the decision on whether or not the Copyright Act may also cover it.

! Doesn't have any of the qualities which common-‐sense would demand. " Conveys no information, provides no instruction, gives no pleasure, simply an artificial combination

of court letters which serves a purpose only when it is used in juxtaposition with other English words.

British Columbia v. Mihaljevic

! Relationship between copyright and trademark protection was raised before Macdonell J. ! The province of BC, in preparation for Expo 86, obtained trademark registration and official mark

notification in various words, phrases and designs. Two of these were Expo 86 and Expo. ! Province had official marks notified in Nov '82 and Dec '85, with Trademark applications filed in July '82

and Nov '83. " Registration was completed in Aug '85 and Sep '85. " Sought a declaration as to its exclusive right to these words or phrases.

! Defendant, was an entrepreneur, concluded from the success of the exposition in Montreal in 67 that the same would happen in Vancouver. " Designed logos with the words Expo 86 in them, and registered copyrights for designs and words

Expo and Expo 86 on August 1, 1985. " Claimed copyrights to have existed in his works prior to the province's registration of its trade and

official marks. " Interlocutory injunction was granted on April 16, '86 against the defendant.


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! Ruling: " Defendant has failed to establish a causal connection between the plaintiff's designs and the

copyrighted designs. " The common elements are Expo and Expo 86, though a prominent part of the defendant's designs,

these marks alone do not constitute a "substantial part" of the designs. " Further, none of the plaintiff's designs reproduce any of the defendant's graphic representations of

the marks. # For the defendant to succeed, would have to prove copyright in word Expo or Expo 86. # In order to gain exclusive use of a word or name, one must turn to the law of trade marks.

" Copyright vs. trade mark # Analogous case is King Features Syndicate v. Lechter, Canadian defendant saw Popeye watches

being promoted in the US and started doing so in Canada with 4 of the Popeye characters on them.

# Court held that the reproduction of the 4 characters constituted infringements of the plaintiff's copyright. • Also held that the use of the name Popeye in conjunction with the characters was

infringement. # Plaintiff claimed that the defendant had no right to use the name Popeye on watches, the court

stated the the law of copyright would not assist the plaintiff on this point -‐ reliance had to be placed on the law relating to passing off. • Attempting to sue for passing off was unsuccessful, because there had been no attempt by

the plaintiff to market the watches in Canada before. ♦ Despite the defendant clearly using the popularity of the cartoon character as an aid to

sell the watches. " On the basis of King Features the defendant's copyrights cannot prevent the plaintiff from adopting,

using and registering the words as office marks and/or trade marks. # Therefore if the defendant is to succeed against the province, must rely on the common law tort

of passing off. # On the facts of the case, cannot succeed in that -‐ plaintiff was using the marks well before the

defendant began selling his souvenir items. " Copyright is essentially a protection against plagiarism. To set it up as a defence to a trade mark

infringement action is to misconceive the nature of and protection offered by a copyright.

Via Rail Canada Inc. v. Location Via-‐Route Inc.

! Plaintiff is a Crown corporation providing a national rail passenger service. " Registered a design trademark (April 15, 83) and an artistic copyright (Oct 20, 87) in its corporate

logo. " From May 87, the defendant used the design trademark VIA ROUTE for its business of automobile

and truck rentals. " The plaintiff claimed infringement of both its trademark and its copyright.

! Ruling: " Previously established that the copyright registration certificate covered an artistic work entitled

"via" (the logo). " This doesn't manifestly accord copyright on the VIA trade mark itself, just the logo. " Function of the logo is to convey the idea behind the word "via", the word itself is not protected by

the registration. " Copyright Act doesn't protect the idea itself but simply the expression of it.


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" Common word, in English and French. " Logo also doesn't just said VIA, the 'A' is an upside down V, technically not the word anyway (JB-‐this

seems like a cop-‐out excuse to me)

TITLES

McIndoo v. Musson Book Co.

! Plaintiff published a book entitled the New Canadian Bird Book. ! Defendant's book on the same subject was entitled the Canadian Bird Book. ! Plaintiff's book was released in the market three or four months prior to the defendant's book. ! The plaintiff claimed breach of copyright in the title and passing off. ! Judge referred to English dictum in Dicks v. Yates

" "there cannot in general be any copyright in the title or name of a book" ! Held that the appellant has not right by reason of his copyright to prevent the publication and sale of the

respondent's book, and the case for passing off was not sufficient.

Flamand v. Société Radio-‐Canada

! Plaintiffs had registered copyright in a title “Medecine d’aujourd’hui -‐ Doctor Today”. ! Produced a series of tv broadcasts and printed publications using that title in ’61-‐’62. ! In ’67 the defendants produced a series of televised courses entitled “Medecine d’aujourd’hui”.

" A popular expose of medicine. " Meant to educate doctors and nurses away from big cities in new discoveries.

! Reid J " A mere title cannot form the object of a copyright apart from the work to which it relates. " No exception to this principle except when the title of a work is “original and distinctive”. " Must be proven that it is original. " To get an injunction, you must prove the original and distinctive character of the title. " When any title cannot form the subject-‐matter of a copyright because of lack of originality, must be

proven that the accused party is attempting to deceive the public to accept the work in place of the original.

" If neither work has copyright, but are sufficiently different enough that regardless of the same title they won’t be confused, no protection.

" If a title is purely descriptive, devoid of originality, no injunction unless it’s proven that the adversary is attempting to pass off other work as the applicant’s.

" An application to prevent the use of the title independently of the work to which it relates, the Court entertains the slightest doubt regarding the petitioner’s right to the exclusive use of the title, petition will be dismissed.

! If the presentation was done in a way to imitate the original, then it’s not allowed. ! Held that it was not original or distinctive enough, cannot be protected.

Francis, Day & Hunter Ltd. v. Twentieth Century Fox Corp. Ltd.

! One of the issues concerned whether there was copyright in the title of the plaintiff’s song “The Man Who Broke the Bank at Monte Carlo”. " Defendants had produced a motion picture under that title.


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! Lord Wright says the plaintiffs are not entitled to succeed because they used the title only and that is too unsubstantial in the facts of this case to constitute an infringement. " Reasoned that due to the statue called Adam, you couldn’t have a book or movie entitled Adam as

well. " Part of the reason why, in general, a title is not by itself a proper subject-‐matter of a copyright.

! Further argued by the plaintiffs that s. 2 of the Canadian Act of 1921 (amended in 1931) extended work to include the title thereof when such title is original and distinctive. " Didn’t think that for the purposes of this case the amendment had changed the law.

! Reasoned that the definition 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” -‐ the title is treated as part of the work, so long as it is original

and distinctive.

Canadian Olympic Association v. Konica Canada Inc.

! Plaintiff held official marks in Olympic, Summer Olympics, Winter Olympics. ! Guinness licensed to Konica Canada the exclusive right to public and distribute in Canada a premium

edition of the book of Olympic records. ! Hugessen JA:

" The name “Guinness Book of Olympic Records” is much less original than even “The Man Who Broke the Bank at Monte Carlo”.

" Nothing to do with copyright of the original book of olympic records, but the right to use the word “Olympic” as a trademark in association with films and cameras.

" Example given was an artist who painted a picture of someone’s trademark would have copyright in his work, but wouldn’t allow him to use the work as a trademark. Conversely, the owner of the trademark could not reproduce the work without the authority of the owner of the copyright.

! CCH Canadian Ltd. v. Butterworths Canada Ltd. " The plaintiff and the defendant corporations carried on business in Canada as publishers of business

and legal texts. " “The Access Letter” v. “Access to Canadian Income Tax”

# Defendants are correct that copyright protection extends to the title. # However, registration of a copyright in a work cannot be used as a basis to restrain another from

using the title as a trademark. # Therefore, the defendant’s copyright is not a bar to a passing-‐off action by the plaintiff.

TRANSLATIONS

! In 1988, s.2 of the Copyright Act was amended to include “translations” in the definition “literary work”. ! In 1994, this reference was deleted and reference to “translations” was inserted in the definition of the

broader expression “every original literary, dramatic, music and artistic work” in s 2 of the Act. ! Therefore, the concept of a translation can apply to all categories of works. ! Prior to 1988 translation was considered to be a work independent of the work from which it was

derived and therefore entitled to its own copyright.

Byrne v. Statist Company

! Plaintiff was employed by an English newspaper, the Financial Times. ! Able to translate Portuguese.


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! A communication from a government official in Brazil was delivered to a state legislative body, and official agreed to allow the message to be published in the Financial Times in English.

! Plaintiff cut down the speech by a third, removed less material parts, added paragraphs and headers. ! Defendant newspaper saw the add and paid the official to include it in their newspaper as well. ! Plaintiff claimed he held the copyright. ! Court found that the translation was not performed by the plaintiff as part of the plaintiff’s employment

with the Financial Times. ! Reasoning:

" Translation is a literary work, was it original and the work of the plaintiff? # Yes.

" Translator of a literary work has been held to be the author of his translation. " In Walter v. Lane, it was stated that a shorthand writer who reported a speech verbatim was the

author of his report.

UNAUTHORISED TRANSLATION

! If a translation is made without the consent of the copyright owner of the original work it would be an infringement.

! Redwood Music Ltd. v. Chappell & Co. Ltd. " No copyright can subsist in an arrangement of a work made in infringement of the copyright in the

original work. ! Pasickniak v. Dojacek

" Copyright should be denied for “fraudulent works”. ! Aldrich v. One Stop Video

" Position on “fraudulent works” was left open.

ORIGINALITY OF TRANSLATIONS

! In addition to infringement or other illegality or public interest objection, a translation may not have sufficient originality to gain separate copyright protection.

! Translating from one national or ethnic language to another ordinarily meets this requirement, but would Morse Code or Braille meet qualify?

Pasickniak v. Dojacek

! Plaintiff sought to restrain an alleged copyright infringement in a book he had written in the Ukrainian language.

! Book was in the nature of a dictionary for interpreting dreams. ! Some interpretations were copied from other books. ! Plaintiff’s selection and arrangement were found to be original as a “compilation”. ! Apart from everything else, clear that such part of the plaintiff’s book as is not original was translated

from other languages. ! The parts that were not original were translated from other languages, and thus count as an original

literary work.

Bishop v. Tele-‐Metropole Inc.

! Plaintiff alleged an infringement of his musical work, song “Stay”.


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! Defendant produced a version of the song with both English and French lyrics, entitled "Please Stay" and "Ne t’en vas pas”.

! Please Stay is very much the same, with omission of the second verse. ! Lyrics of the French version were substantially different.

" Same theme, but more of a lament for a decision already made rather than an exhortation not to go. " Cannot be viewed as a translation.

Apple Computer Inc. v. Mackintosh Computers Ltd.

! The defendants’ position is that there is no copyright protection given to the hexadecimal form of the source code program because it is not a translation of that work but a different literary work. " Conversion from assembly code to hex is called a “translation” by computer programmers. " But not a relevant factor. " Question is whether or not the hex code version is a translation of the original assembly code version,

in terms of the Copyright Act. " If yes, then the right to produce any such translation belongs exclusively to the holder of copyright in

the original work. s 3(1)(a) ! “express the sense of (word sentence, speech, book poem) in or into another language, in or to another

form of representation.” -‐ Concise Oxford Dictionary " Conversion from one code to another clearly falls within that definition.

! Same as with Morse Code, could be converted and called “instructions to the telegraph operator on how to send the message”. " Still retains the character of the original work.

! Held that the hexadecimal form of the program is the same literary work, and therefore a translation. ! Federal Court of Appeal said that it had to be human languages for it to count as a translation between

“languages”.

Prism Hospital Software Inc. v. Hospital Medical Records Institute

! Plaintiff was providing the defendant with software program for maintaining and operating a health care information database.

! Difficulties arose between the parties, defendant engaged another supplier who rewrote the plaintiff’s program in another source code language.

! “Not dealing with the conversion of the plaintiff’s program into a machine language, but into another “human” programming language”. " In this process there has been a “translation”: of the plaintiff’s software within the meaning of

3(1)(a). ! The Copyright Act does not define the concept “translation” except in s. 30.6(a) when providing an

exception to copyright infringement in specified circumstances of making a computer program compatible with a particular computer. " Parliament says “translating” into another computer language, basically nullifies the FCoA

from Apple Computer.


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COMPUTER PROGRAMS

"LITERAL COPYING”

! In 1988 the Copyright Act was amended to include within the meaning of “literary work” in s. 2 the expression “computer program”. " A set of instructions or statements, expressed, fixed, embodied or stored in any manner, that is to be

used directly or indirectly in a computer in order to bring about a specific result. ! s 30.6 was added to provide exceptions or defences for reproductions of computer software programs. ! Amendment put beyond doubt that computer software programs were within the category of literary

work and granted protection against at least literal copying of such programs.

Apple Computer, Inc. v. Mackintosh Computers Ltd. 1990 SCC

! Issues raised in the appeal is whether a computer program originating in copyrightable written form, continues to be protected by copyright when it is replicated in the circuitry of a silicon chip.

! Found that the programs embedded in the silicon chip should be regarded as software, and found that the circuitry in the chip was both a translation and an exact reproduction of the assembly language program.

! Held that it was infringement of a copyright.

"NON-‐LITERAL COPYING”

! Apple Computer and the legislative changes in the Copyright Act have ensured that computer programs are protected as literary works, the scope of available protection is unresolved.

! The problem explored in Lotus Development Corp. v. Borland International Inc. in the US is that computer programs are fundamentally different in one aspect. " Programs are a means for causing something to happen, they have a mechanical utility, an

instrumental role in accomplishing the world’s work. " Granting protection can have some of the consequences of patent protection in limiting other

people’s ability to perform a task in the most efficient manner. ! Non-‐literal copying involves the “plot” of a work:

" The structure, sequence or organization of a program, including screen and user interactive displays and commands.

THREE BROAD APPROACHES:

LOOK AND FEEL APPROACH

! Largely intuitive and originated from “non-‐literal” infringement approaches developed in earlier contexts.

! If an alleged infringing program, in its screen displays, sequences, and user interface looks, or in its operation, feels to the user similar to the plaintiff’s program, an infringement was found.

Broderbund Software Inc. v. Unison World, Inc.

! Plaintiff had a computer program, “The Print Shop”, for creating customized greeting cards, posters, signs and other items.


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! Defendant’s computer program for similar productions was called “The Printmaster” ! Can’t copyright a jewel-‐encrusted bee pin, because there are limited ways you can express that idea. ! Defendant said the same about the program, but plaintiff put forth a different program that did

essentially the same things but in a much different way, proving that there were indeed multiple expressions possible for the same idea.

Arnstein Test

! Leading case in this area, adopted in Krofft. ! Requires the application of an “extrinsic” test aimed at determining whether there exists a substantial

similarity in underlying ideas and an “intrinsic” test to ascertain whether there exists a substantial similarity in the expression of the underlying idea.

! Analytic dissection and expert testimony are admissible to prove similarity for the extrinsic test, but the intrinsic test is solely the response of the ordinary reasonable person.

! In Whelan, the court abandoned the bifurcated test of substantial similarity in complex copyright actions. " Instead adopted an integrated substantial similarity tests pursuant to which boy law and expert

testimony would be admissible. ! The Test in Krofft

" Application of the Extrinsic Test # As stated above, the extrinsic test is aimed at determining whether there exists a substantial

similarity between the underlying ideas of the copyrighted and allegedly infringing works. # Experts said that Print Shop and Printmaster had the exact same ideas, that they do almost the

same thing, and that the purpose and uses of both programs are virtually identical. # Application of the extrinsic test clearly compels a finding of substantial similarity of ideas.

" Application of the Intrinsic Test # Finder of fact is to determine whether an ordinary reasonable person would find the expression

of the subject works to be substantially similar. # Question is whether the offending work captures the “total concept and feel” of the protected

work. Krofft • In Print Shop the ordinary observer could hardly avoid being struck by the eerie

resemblance between the screens of the two programs.

ABSTRACTION-‐FILTRATION-‐COMPARISON APPROACH

! Current trend is to analyse the programs in dispute from the perspective of separating protected “form” from unprotected “idea” in a more analytical manner and to determine: " The portions of the plaintiff’s program that can be said to be covered by copyright because it presents

original “form or expression; and " The extent to which these protected portions of the plaintiff’s program have been reproduced in the

defendant’s program and whether this extent meets the usual tests for infringement. # Substantial and actual proof of copying or proof of “access” together with substantial similarity

of the works. " Adopted in Computer Assoc. Int’l Inc v. Altai, Inc. USA, 1992

# Approved in Canada in Delrina Corporation (Carolian Systems) v. Triolet Systems Inc. 1993. ! Test was unhelpful in Lotus where the issue was whether “the literal copying of a menu command

hierarchy constitutes copyright infringement”. " Needed to be able to use “copy”, “paste”, “print”, etc. in order to tell the computer what to do.


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METHOD OR SYSTEM OF OPERATION

! In the US a third trend that is said to demarcate a limit of copyright protection by distinguishing a process or system of operation of essentially a machine from the usual context of protecting code in a literary format in an its independent of the computer’s operation itself.

Computer Assoc. Int’l, Inc. v. Altai, Inc.

! Plaintiff had created an operating program known as ADAPTER. " Translation or operating program that enabled an application program CA-‐SCHEDULER, also by the

plaintiff, to function on different operating systems. " Used for DOS/VSE, MVS or CMS.

! Defendant had its own computer scheduling program known as ZEKE. " Designed to be used with a VSE operating system. " Defendant wished to have ZEKE function with an MVS operating system and decided to rewrite for

that purpose. " Recruited an employee of Computer Assoc. to undertake this work. " This employee was intimately knowledgeable of the plaintiff’s translation program. " Employee created the translation program using 30% of plaintiff’s program. " Proceedings were brought, and program’s copied parts were re-‐written.

! Therefore, literal copying was removed, but plaintiff alleged non-‐literal copying. " “remained substantially similar to the structure” and included “general flow charts … the specific

organization of inter-‐modular relationships, parameter lists and macros” etc. ! Ruling discussed the “form/idea” distinction and the decision from Whelan. ! “the purpose or function of a utilitarian work would be the work’s idea and everything that is not

necessary to that purpose or function would be part of the expression of the idea.” " If there are various ways of achieving the desired purpose, then the particular means chosen is not

necessary to the purpose. ! Critical flaw in Whelan is that it assumes only one “idea” in copyright terms underlies any computer

program, and that once a separable idea can be identified, everything else must be expression. " Whelan focuses too much on metaphysical distinctions and does not place enough emphasis on

practical considerations. ! To accommodate these concerns the judges recommend a three-‐step procedure based on the

abstractions test utilized by the district court. " Cognizant of the fact that evolving technology may not allow for a literal application of the procedure

outlined.

APPROACH

! In ascertaining substantial similarity under this approach, a court would first break down the allegedly infringed program into its constituent structural parts.

! Then, by examining each of these parts for such things as incorporated ideas, expression that is necessarily incidental to those ideas, and elements that are taken from the public domain, a court would then be able to sift out all non-‐protectable material.

! With whatever remains the court would then be able to compare this material with the structure of an allegedly infringing program. " The result of this comparison will determine whether the protectable elements of the programs at

issue are substantially similar so as to warrant a finding of infringement.


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! Step 1: Abstraction " The theoretical framework for analysing substantial similarity expounded by Learned Hand in

the Nichols case is helpful in the present context. " The abstractions test “implicitly recognizes that any given work may consist of a mixture of

numerous ideas and expressions”. " Initially, in a manner that resembles reverse engineering on a theoretical plane, a court should

dissect the allegedly copied program’s structure and isolate each level of abstraction contained within it. # Begins with the code and ends with an articulation of the program’s ultimate function. # Along the way need to retrace and map out each of the designer’s steps.

" At the lower level, a program may be thought of in its entirety as a set of individual instructions organized into a hierarchy of modules.

" At a higher level, instructions in the lowest-‐level may be replaced conceptually by the functions of those modules.

" As you go higher, the lower levels are eventually left with nothing but the ultimate function of the program.

! Step 2: Filtration " Once the program’s abstraction levels have been discovered, the substantial similarity inquiry moves

from the conceptual to the concrete. " A successive filtering method can be used for separating protectable expression from non-‐

protectable material. # This process entails examining the structural components at each level of abstraction to

determine whether their particular inclusion at that level was “idea” or was dictated by considerations of efficiency, so as to be necessarily incidental to that idea, required by factors external to the program itself; or taken from the public domain and non-‐protectable as a result.

# Each case requires its own fact specific investigation. " By applying well developed doctrines of copyright law it may ultimately leave behind a “core of

protectable material”. " Elements Dictated by Efficiency

# The portion of Baker v. Selden which denies copyright protection to expression necessarily incidental to the idea being expressed appears to be the cornerstone for what has developed into the doctrine of merger.

# Underlying principle is when there is essentially one way of expressing an idea, that and its expression are inseparable and copyright is no bar to copying that expression. • The expression has “merged” with the idea itself.

# A court must inquire “whether the use of this particular set of modules is necessary efficiently to implement hat part of the program’s process” being implemented.

# Herbert Rosenthal Jewelry Corp -‐ Since evidence of similarly efficient structure is not particularly probative of copying, it should be disregarded in the overall substantial similarity analysis.

# Support for applying the merger doctrine in cases that have already addressed the question of substantial similarity in the context of computer program structure.

# Lotus Dev. Corp. -‐ One element is present in most if not all expressions of such a program, therefore no protection.

" Elements Dictated by External Factors # Where it is virtually impossible to write about a particular historical era or fictional theme

without employing certain stock or standard literary devices, such expression is not copyrightable.


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• Hoehling v Universal City Studios -‐ Infringement suit stemming from several works on the Hindenberg disaster, similarities in representations of German life. Events dictated were indispensable in the treatment of German life, so no copyright protection.

# Known as the scenes à faire doctrine, has analogous application to computer programs. -‐ Cf. Data East USA

# Professor Nimmer: “in many instances it is virtually impossible to write a program to perform particular functions in a specific computing environment without employing standard techniques”. • Result of considerations such as:

♦ The mechanical specifications of the computer on which a particular program is intended to run.

♦ Compatibility requirements of other programs with which a program is designed to operate in conjunction.

♦ Computer manufacturers’ design standards. ♦ Demands of the industry being serviced. ♦ Widely accepted programming practices within the computer industry.

# Q-‐Co Industries -‐ Court denied copyright protection to four program modules employed in a teleprompter program. • Decision was ultimately based upon the court’s finding that “the same modules would be an

inherent part of any prompting program”. # Must conclude that a court must also examine the structural content of an allegedly infringed

program for elements that might have been dictated by external factors. " Elements Taken from the Public Domain " Related to scenes à faire, material found in the public domain cannot be protected. " Free for the taking an cannot be appropriated by a single author even though it is included in a

copyrighted work. " Sheldon -‐ We see no reason to make an exception to this rule for elements of a computer program

that have entered the public domain by virtue of freely accessible program exchanges and the like. ! Step 3: Comparison

" After a court has sifted out all elements of the allegedly infringed program which are “ideas” or are dictated by efficiency or external factors, or public domain, there may remain a core of protectable expression. -‐ Brown Bag Software

" Court’s substantial similarity inquiry focuses on whether the defendant copied any aspect of this protected expression, as well as an assessment of the copied portion’s relative importance with respect to the plaintiff’s overall program.

! Policy Considerations " Apple Computer -‐ The line must be a pragmatic one, which keeps in consideration the preservation

of the balance between competition and protection.” # Some people, and Computer Assoc. argue against this approach stating it will cause programmers

to not invest time in new programs. # Must consider advancing the public welfare through rewarding artistic creativity in a manner

that permits the free use and development of non-‐protectable ideas and processes.

Delrina Corp. (Carolian Systems) v. Triolet Systems Inc.

! Established the merger doctrine in Canadian copyright law. ! Carolian Systems International Inc. subsequently merged into Delrina Corp. The plaintiff had employed a

highly qualified and experienced computer programmer to rewrite its program “Sysview”.


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" Program provided a “performance” monitoring tool” for use with an HP computer. " Delrina licensed the Sysview program to users of HP 3000 computers.

! Broderbund -‐ held that copyright protection is not limited to the literal aspects of a computer program, but rather … it extends to the overall structure of a program including its audiovisual displays.”

! General principles to law: " No copyright in ideas or info, just expression. " Subsists in original works. " If the expression does no more than embody laments of the idea that are functional in the utilitarian

sense the expression of the idea is not copyrightable. ! Much of the code is shared amongst the HP 3000 community, some calls out specific variables, etc. ! Some problems do not lend themselves to multiple solutions -‐ but must be solved in one or two ways. ! Displays similar info with a similar layout. ! Held: Not satisfied that ay substantial part of the Sysview interface is copyrightable. Sae doesn’t apply to

the Sysview source code. ! The parts of Sysview in issue were not entitled to copyright and were not copied by the defendants.

Prism Hospital Software Inc. v. Hospital Medical Records Institute

! To be actionable the copying must be of the expression, if effect, the author’s original or literary work, not the ideas, concepts or underlying facts.

! Copyright protection is not afforded to collections of facts but rather to the original component contributed by a particular author.

! Feist Publications Inc. v. Rural Telephone Service Co Inc. " Refused to extend copyright protection to a telephone directory. " Mere fact that a work is copyrighted does not mean that every element of work may be protected. " No matter how original the format, the facts themselves do not become original through association.

! ICD-‐9 codes which were published by the WHO. " The list of more than 10,000 codes were examined and truncated to fit within a 59-‐character field.

# Once it’s down to 59 characters there is less flexibility, but why 59 and not 20? or 80? ! In the end what must be demonstrated is that either directly or indirectly through his actions, the

defendant has taken the fruits of the plaintiff’s labour. ! The applicability in Canada of American Law

" So much in the way of software/computer cases in the US. " Not binding on Canada, but they are entitled to both consideration and respect where they touch on

areas which have not yet been considered or on issues that are similar in US and Canadian legislation. ! The protection of the expression of ideas

" Johnson Controls v Phoenix Central Systems Inc. # US CoA for the Ninth Circuit had occasion to consider what constitutes a computer program and

in what circumstances copyright protection is extended. # Computer program is made up of source, object code, structure, sequence and/or organisation of

the program, UI and the function or purpose of the program. # Copyright protection depends on whether it qualifies as an “expression” of an idea rather than

the idea itself. " Ladbroke (Football), Ltd. v William Hill (Football), Ltd.

# So long as work, taste and discretion have entered into the composition, that originality is established.


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CHAPTER 4: DRAMATIC WORKS

STATUTORY DEFINITIONS

! s 2 of the Copyright Act defines dramatic work as: " “dramatic work” includes

# any piece for recitation, choreographic work or mime, the scenic arrangement or acting from of which is fixed in writing or otherwise,

# any cinematographic work, and # any compilation of dramatic works.

! Also defines choreographic work as “includes any work of choreography , whether or not it has any story line”.

! A cinematographic work “includes any work expressed by any process analogous to cinematography, whether or not accompanied by a soundtrack”.

COMBINATION OF INCIDENTS/ORIGINALITY/FIXATION

Hutton v. CBC

! Plaintiff co-‐produced with the defendant, CBC, a television series known as Star Chart. ! Based on an earlier work of the plaintiff, known as Star Tracks. ! Series Star Chart comprised 19 programs before the CBC cancelled the program, as it was entitled to do in

the contract. ! Three years later the CBC produced a series called Good Rockin’ Tonite. ! Hutton alleged CBC copied his concept and creative elements and breached his copyright. ! Findings:

" The format of the two series was different, SC was more of a variety show whereas GRT was more in the nature of a rock magazine show.

" There was found to be no infringement of copyright. " Was SC truly a dramatic work and entitled as such to protection under the Act?

# There must be a story, a thread of consecutively related events, either narrated or presented by dialogue or action or both to be a dramatic composition.

# Concept of “Music Central” with the assistants gathering info for the host using the computer, and the introduction of performances on three different stages, lent enough dramatic incident and seminal storyline to qualify as a dramatic work.

" No equivalent in GRT to the SC story line. " From Seltzer v. Sunbrock

# In order to infringe, under the Copyright Act the production on the stage must obviously tell the same story as the copyrighted drama.

# If it tells another story or acts another sequence of events, it is outside the protection afforded the registered work.

" Not much of a story, but only thing that lends dramatic incident to the programmes. GRT tells no story at all.

! Originality " s 2 of the Act, it is the arrangement or acting form or the combination of incidents represented which

give the work an original character and which are thereby afforded protection by the Act, not the idea behind the arrangement, form or incidents.


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" Distinction between idea and form of expression was considered in Kantel v. Frank E. Grant, Nisbet & Auld Ltd. # Copyright Acts are not concerned with ideas or the originality of ideas -‐ in which there is no

copyright: it is the language in which the idea is expressed which is the only thing protected, and it is that to which “original” in the Act relates.

" “Music Central” constituted the “arrangement or acting form or the combination of incidents represented” which gave SC its original character.

! Just because GRT had no elements that would qualify as a dramatic work, doesn’t mean it couldn’t have infringed on SC.

! Musical work was changed in 1993 to a manner that no longer requires a musical work, including a song, to be any combination of melody and harmony, or either of them, printed, reduced to writing or otherwise graphically produced or reproduced in order to qualify for copyright as a musical work.

Kantel v. Frank E. Grant, Nisbet & Auld Ltd.

! Plaintiff was an author and producer. ! Employed by the defendant to prepare a radio presentation, referred to as a ‘sketch’, involving a celebrity

character, “Uncle Bob”, who broadcast regularly presenting a “Sunshine Club” for infant listeners. ! The defendant used the sketch to advertise its products. ! The defendant subsequently cancelled the series, then later broadcasted a similar sketch that was found

to be an infringement of the plaintiff’s copyright as a dramatic work. ! Lots of facts, the sketch in question must be held to constitute a dramatic work within the meaning of

copyright law. ! Clearly had a dramatic composition. ! “From a perusal of decided cases wherein copyright in works has been upheld, I am led to the conclusion

that there is enough of original literary and dramatic work in the sketch to support that plaintiff’s claim to copyright” though the judge was inclined in the opposite direction during the trial.

! Compilation means: " a work resulting from the selection or arrangements of literary, dramatic, musical or artistic works

or of parts thereof, or " a work resulting from the selection or arrangement of data.

Green v. Broadcasting Corporation of New Zealand

! Appellant is a well known personality in the entertainment world. ! Author, presenter and compere of a talent show. ! Broadcasting corporation of NZ did the same show, same name. ! The protection which copyright gives creates a monopoly and “there must be certainty in the subject-‐

matter of such monopoly in order to avoid injustice to the rest of the world”. -‐ Tate v. Fullbrook ! In this case, the subject matter of copyright claimed for the dramatic format of the show is conspicuously

lacking in certainty. " A dramatic woe must have sufficient unity to be capable of performance and that the feature claimed

as constituting the “format” of a television show, being unrelated to each other except as accessories to be used in the presentation of some other dramatic r musical performance, lack that essential characteristic.


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" Appeal dismissed.

SPORTS EVENTS

FWS Joint Sports Claimants v. Copyright Board

! Determination by the Copyright Board that fees be paid by Canadian cable television companies for the retransmission of certain radio and television signals.

! The board found that sports games per se were not the subject of copyright. ! Playing of the game itself couldn’t be seen as copyrightable, due to its unscripted nature -‐ not

choreographed. ! The unpredictability in the playing of a football or hockey game is so pervasive, despite the high degree of

planning, that it cannot be said to be copyrightable.

National Basketball Association v. Motorola, Inc.

! Defendant manufactured and sold pager devices that displayed game info from the plaintiff’s basketball games.

! Plaintiff alleged a violation of state tort law for misappropriation of a business value and federal law copyright infringement.

! Facts: " Sports events are not authored in any common sense of the word. " Cannot copyright sports moves/plays without impairing the underlying competition in the future. " In 1976 Congress extended copyright protection to the broadcast of games, due to the camera work,

etc. but not to the games themselves. ! Held:

" District judge correctly held that the appellants were not infringing a copyright in the NBA games.

Canadian Admiral Corporation, Ltd. v. Rediffusion, Inc.

! Not contended that there is copyright in any spectacle itself. " Submission is that the originality is to be found in the conception, selection and arrangement of the

production, which in this case, goes on the air. ! Talks of three cameras set up to record the game, and a producer picks which feed to use. ! No films were taken of the games, and when the telecasting was completed, there was no record of any

sort remaining. ! s 2(g) defines dramatic work and one of the requirements is that the scene arrangement or acting form of

the work is fixed in writing or otherwise. " In “Law of Copyright” it is said that the making of a work is prima facie the production of a material

thing -‐ a manuscript, a picture or negative, in the case of a lecture or speech, of the literary work which is the subject-‐matter of copyright from which the lecture or speech was delivered.

" Also says, “when however, any material has embodied those ideas, then the ideas, through that corporeity can be recognized as a species of property by the common law” # The claim is not to ideas, but to the order of words, and this order has a marked identity and a

permanent endurance. ! All of the works included in the definitions of artist work and literary work have a material existence,

musical work must be printed, reduced to writing or otherwise graphically produced or reproduced. Dramatic must be in writing somehow. Cinematographic works are fixed in film.


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! In this case, nothing fixed, nothing planned ahead of time. An ad lib production.

CINEMATOGRAPHIC WORKS

! Dramatic work includes a cinematographic work. ! Pre-‐Jan 1, 1994 used to be that a cinematographic work was protected as a dramatic work if “the

arrangement or acting form or the combination of incidents represented [gave] the work an original character.” " If it didn’t meet this, could only be protected as a photograph under artistic work.

! The requirement of originality in this context was considered in Canadian Admiral and live telecast scenes and the telecasting of extracts from previously filmed games were found to lack the requisite originality to constitute “dramatic works”.

! To meet requirement for cinematographic works as dramatic works, the maker of the film had to have some involvement in the actual arrangement of the acting form or the combination of incidents being filmed. " Mere selection of scenes or events was not enough.

! As of January 1, 1994, in NAFTA, a cinematographic work is protected as a dramatic work whether or not the element of originality is present. " However, if the elements is not present, then s. 11.1 of the Copyright Act limits the term of

protection: # (a) for the remainder of the calendar year of the first publication of the cinematographic work …

and for a period of fifty years following the end of the calendar year; or # (b) if the cinematographic work or … is not published before the expiration of fifty years

following the end of the calendar year of its making, for the remainder of that calendar year and for a period of fifty years following the end of that calendar year.

" Further change was to the definition: # Before 1994: cinematographic includes any work produced by any process analogous to

cinematography. # After Jan 1, 1994: cinematograph includes any work expressed by any process analogous to

cinematography # The expression cinematograph was replaced with cinematographic work by s 1(2) of

the Copyright Amendment Act 1997, and the definition now reads “cinematographic work” includes any work expressed by any process analogous to cinematography, whether or not accompanied by a sound track.”

" The definition of photograph was similarly amended with effect from January 1, 1994. # The word expressed replaced the word produced with respect to any process analogous to

photography. • In Canadian Admiral Cameron J considered whether the live telecast process in that case

could be protected as cinematography or photography -‐ rejected any analogy. ♦ Said the process by which film is made is much different from how photographs are

taken (true in a physical sense, less true now with digital media though. ♦ Could you say film was a series of photographs compiled into a compilation?

• Look to Copyright Amendment Act 1997 ss. 1(5) and 14 inserting s 18 concerning “Rights of Sound Recording Makers” and the definition in s. 2 of “sound recording”.


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CHAPTER 5: MUSICAL WORKS

AMENDMENTS TO STATUTORY DEFINITIONS

! Current definitions (from Jan 1, 1994 on) relevant to musical works include the following: " “musical work” means any work of music or musical composition, with or without words, and

includes any compilation thereof. " “every original literary, dramatic, musical and artistic work: includes every original production in the

literary, scientific or artistic domain, whatever may be the mode or form of its expression, such as … dramatico-‐musical works, musical works, translations.

! The definition of every original literary, dramatic, musical and artistic work” continued as it was prior to August 31, 1993, but on January 1, 1994, the reference to “or compositions with or without words” was deleted.

! For amendments with effect from Aug 31, 1993 see the Copyright Amendment Act. ! For amendments with effect from Jan 1, 1994, see the NAFTA Implementation Act.

LIMITATION PRIOR TO AUGUST 31, 1993

! The narrow definition of musical works prior to Aug 31, 1993, presented a principal limitation on the scope of protection for musical works -‐ only the written score or music fixed in a written or graphic format could be protected. " Music composed at a piano, and then recorded on an audio tape was not covered. " Also meant that transmission was not covered, only the written work was.

Composers, Authors and Publishers Assoc. of Canada Ltd. v. CTV Television Network Limited

! Plaintiff was a performing rights society representing owners of copyright in musical works. ! Percentage of the sale was to be paid as tariffs.

" Network sold tapes with advertising to the affiliates. " Plaintiff wanted a percentage of the network’s receipts (which were higher). " Copyright Appeal Board granted a tariff that would allow this, but the defendant refused to obtain a

licence and continued with existing practice. ! Plaintiff sued for copyright infringement of seven named musical works.

" Focus was on s 3(1)(f) as it was, which provided a right in the copyright owner “to communicate a work by radio communication”.

" Today 3(1)(f) provides an exclusivity “in the case of any literary, dramatic, music or artistic work, to communicate the work to the public by telecommunication”.

! The affiliates had the right to transmit the works. " Network enabled them to do so. " Can’t be a tort merely to authors or cause a person to do something that that person has a right to do.

! CAPAC’s claim is based essentially on (f) and the concluding words of sub (1) of s. 3 of the act, enacted that copyright includes the sole right in case of any literary, dramatic, musical or artistic work, to communicate such work by radio communication; and to authorize any such acts as aforesaid. " Consider “musical work” " Consider “performance” means any acoustic representation of a work or any visual representation of

any dramatic work, including a representation made by means of any mechanical instrument or by radio communication.


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! The signals transmitted from CTV to the affiliated stations did not communicate the musical works as defined in the Act, that is graphic reproductions of melody and harmony. " What was communicated was a performance of the works.

! On a literal construction of the Act, CAPAC’s case fails as it rests on (f). ! Read somehow aside from literal?

" Looking at the french version: Authors of literary and artistic works shall enjoy the exclusive right of authorizing the communication of their works to the public by radio communication.

" To the public is linked with communication, the communication isn’t to the public in this case. ! Held:

" CAPAC’s contention cannot be supported either on the literal meaning of the statute or on construction in the light of the intention revealed by the whole act, including the schedule.

! Issue with networks and affiliates was dealt with by the inclusion of ss 3(1.4), (1.41) and (1.5) of the Copyright Act by s. 2 of the Copyright Amendment Act which provided for joint and several liability between the two entities.

SONGS

! Definition of musical work in Canada includes the phrase “with or without words”. ! In Canada the single musical work of tune and lyrics has presented some difficulty with respect to

parody. " Context historically had focused on s. 29(1) of the Copyright Act which provided a statuary lien sing

system enabling persons to make recordings of any musical, literary, or dramatic work if recordings had previously been made with the consent or acquiescence of the owner of the copyright in the work and prescribed notice was given and royalties, as stipulated in the Act, were paid.

" s 29(2) precluded any alterations in or omissions from the work in the licensed production. # Being a single work, an alteration would occur in a parody, which would mean there would be an

infringement of the original work within s. 29 of the Act. " Today it’s of no relevance, but a parody may constitute an infringement of the moral right to the

integrity of the act. " Further issues arise if one person writes the lyrics, the other the tune or music.

ATV Music Publishing of Canada, Ltd. v. Rogers Radio Broadcasting Ltd.

! Revolution was originally composed by Beatles. ! Defendants recorded and broadcast a song, Constitution, with words written by the defendant, and with

the music of Revolution. ! Defendants had sought and been refused permission to use the music of Revolution. ! Motion for interlocutory relief. ! Defendants submit that there are separate copyrights in the music and the words of Revolution. ! Ludlow Music Inc v. Canint Music Corp Ltd. et al.

" According to the ordinary use of words by ordinary people, a song is a musical work and the words of a song (apart from tune) do not constitute a musical work.

" The tune of a song (considered apart from the words) is not a song. ! Thibault v. Turcot et al

" QCSC found that when two people collaborated, the one writing the music and the other the libretto, the work is one complete unit for the purpose of copyright.

! MCA Canada Ltd et al. v. Benwell et al.


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" Injunction refused where the defence was that the plaintiffs had no copyright and that what the defendants were proposing to do did not constitute an infringement of such rights if they existed.

" Copyright claimed was in an oratorio comprised of 23 different songs connected by choral chants. " Defendants had been licensed to perform the 23 individual songs, were to perform 15 of them in a

different sequence, interspersed with other musical works. " Was that a performance of the oratorio?

! In the Canadian act, as in the English act, it is recognized that a collective work may have a copyright of its own.

! Defendants admit that the music is the music to Revolution, written by the same people that wrote the lyrics for Revolution. " Both people wrote both, no evidence to contrary. " Therefore, no evidence of separate copyright.

! As a result “work of joint authorship” for which there would be one copyright of which the plaintiff is the owner in Canada.

ARRANGEMENTS

Wood v. Boosey

! ON composed for orchestra an opera in 1849 in Berlin. Died two months later. ! 2 years later representatives for the estate commissioned one Brissler to adapt the opera from orchestra

to the pianoforte alone. ! Copyright registration in the UK required the name of the author of the work, said ON, which was wrong

because the new work was authored by Brissler. ! If the copyright has expired, a work based on a previous work has its own copyright. ! Easier to copy the new arrangement than to do it all over. ! While Brissler has not invited the tune nor the harmony, there is a certain composition to what he has

done. ! Therefore, considered an original work.

Redwood Music Ltd. v. Chappell & Co. Ltd.

! Regards an arrangement as a more difficult exercise than that of translation. " “Of course… there may be copyright in works of a comparatively humdrum nature, such as

straightforward translations”

ESTABLISHING COPYRIGHT/PROVING INFRINGEMENT

Grignon v. Roussel

! According to the plaintiff, around August, 1986, he composed a musical work CN7. " Distributed to certain librettists and people in the artistic world in Montreal, hoping that a song

would be eventually made from it. " The next year a song came out with tune that was strikingly similar, but showed a different

composer. " Plaintiff brought an action for an injunction and damages for breach of copyright. " Defendant claimed to have written year prior, and updated since.


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! s 53(2) -‐ A certificate of registration of copyright in a work is evidence that copyright subsists in the work and that the person registered is the owner of the copyright.

! Can the plaintiff, whose work was registered after distribution of the work of the defendant, who is also disputing its originality, benefit from the presumption created by s 53 and so more readily establish that he is the holder of a right? " Point is of some importance with respect to to the burden of proof in establishing copyright. " Some difficulty because it was registered after TLJ, to which the defendant claims they wrote the

music. " Registration has no effect on the actual existence of a copyright though, so doesn’t really change the

case. " s 34(3) says that if an action is brought by a plaintiff for infringement of his right, and the defendant

challenges the existence of the copyright, the plaintiff’s work is deemed to be protected by copyright until proof of the contrary is provided the plaintiff is deemed to be the owner of the copyright.

" To succeed in an action, the plaintiff must show the following: # That he has a copyright in the musical work # That it is an original work # That the defendant unfairly copied that

• He had access to the plaintiff’s work before composing his own, and that a substantial part of both works is very similar.

! Plaintiff’s copyright " No real debate of the ownership of copyright to the plaintiff’s work.

! Originality of work " Is the plaintiff’s work an original one? " US precedents seem to indicate that a plaintiff in an action for copyright infringement has a prima

facie right to a presumption of originality under s.53(2). # Judge doesn’t follow this.

" Defendant’s expert witness didn’t really debate the originality of the plaintiff’s work, commented more on how the CN7 and TLJ were dissimilar.

" As the court has found that the plaintiff owns a copyright to an original musical work, it remains to determine: # 1 -‐ whether the defendant’s work, which he also regards as original, bears sufficient objective

similarity to that of the plaintiff to be the subject of an order by the court, and # 2 -‐ whether it can be shown that the plaintiff’s work was the basis for that of the defendant.

! Resemblance between the two works " Is there such a striking resemblance between the two musical works that the defendant’s constitutes

an infringement of the plaintiff’s copyright? " Only the first eight measures of the refrain are argued to have been infringed.

# The hook is the “attractive” part. " Asking for a qualitative examination rather than quantitative.

# Canadian Performing Right Society v. Canadian National Exhibition Assn. • Court found there was an infringement of copyright by a defendant who had copied between

5 and 32 measures (defendant v. plaintiff) # “Question of infringement is not to be decided by note for note comparison, but whether the

substance of the original work is taken or not. This falls to be determined by the ear as well as by the eye.”

" Case at hand, the similarity between the refrains is clearly noticeable. ! Expert witnesses

" Only one of five expert witnesses has extensive academic training in the classic sense.


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# “same delivery and same hooks” " Expert says the result of analysis forced him to rule out chance from the hypothesis.

! Defendant’s access to plaintiff’s work " Witness said, categorically, had played the cassette for the defendant. " Defendant did not recall having heard CN7.

! Too difficult to imagine the similarities resulting due to coincidence. ! In judge’s opinion, the direct and circumstantial evidence together with the striking resemblance of the

melodies proven by experts and noticeable by the least attentive ear cannot be the result of coincidence or chance.

Drynan v. Rostad

! Plaintiff brought action alleging that in July, 1989, he composed a word entitled “FFW” and recorded it on cassette.

! In summer of 1990, defendant composed a word entitled HWAOTRA. " Became the opening theme for a TV series hosted by him and produced by the CBC.

! Plaintiff heard song in 1993, and now alleges that the defendant’s song was strikingly similar to that of his own and an infringement of the copyright. " Defendant said was composed independently, any similarities are purely coincidental.

! Song was played at a family reunion, played numerous times, a performance done by children. ! Defendant was retained to perform at the celebration under written contract.

" Twice, 5:15 and 7, arrived at 5 and left at 10. " Defendant spent some time in the home.

! Plaintiff went to defendant after song was performed, and defendant said “nice song”. ! Defendant doesn’t recall that, or of hearing the song. ! Songs were very similar -‐ expert evidence.

" Defendant’s expert evidence said they were both country music songs, could have come to same thing independently.

" Some similarities were basically general knowledge. ! Not identical but strikingly similar. ! Ruling:

" First test as set out in Francis Day & Hunter and adopted in Grignon has been met. " Although not identical, the defendant’s work can be properly described as a reproduction of the

plaintiff’s. " Strong evidence provided by the plaintiff, not so for the defendant.

# Though honest, just didn’t have recollection, and said there was a possibility of having heard the song.

" “On the evidence adduced, ant to my ear, but for plaintiff’s song, the defendant’s song would not have existed.”

! In Canada, many issues are covered by Crowe, “The Song You Write May Not Be Your Own” " Issue will be whether the non-‐melodic differences outweigh the melodic similarity in their musical

effect. " As a general rule, the larger the portion of music that is reasonably similar in both the plaintiff’s and

defendant’s works, the greater must be the non-‐melodic differences, that is, rhythm, harmony, accompaniment and mood, in order that the defendant escape liability.


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CHAPTER 6: ARTISTIC WORKS

SELECTED DEFINITIONS

! Artistic Work " Includes paintings, drawings, maps, charts, plans, photographs, engravings, sculptures, works of

artistic craftsmanship, architectural works, and compilations of artistic works. ! Architectural Work

" Means any building or structure or any model of a building or structure. ! Engravings

" Include etchings, lithographs, woodcuts, prints and other similar works, not being photographs. ! Photograph

" Includes photo-‐lithograph and any work expressed by any process analogous to photography. " After January 1, 1994, photograph included any work expressed by any process analogous to

photography rather than produced. ! Sculpture

" Incudes a cast or model.

MEANING OF ARTISTIC

! Has not been authoritatively defined.

George Hensher Limited v. Restawile Upholstery (Lancs) Limited

! Only the issue of whether it is artistic is at issue in this brief. ! Expert witness, independent of the plaintiff, though he didn’t like the chairs, said they had appeal to the

public and were a good commercial design. " A distinctive individuality. " Individual characteristics which distinguish it from a mere utilitarian work of craftsmanship.

! Court of appeal said that in order to qualify as a work of artistic craftsmanship, there must at least be expected in an object or work that is utilitarian or functional appeal should not be the primary inducement to its acquisition or retention -‐ completely dismissed by the House of Lords.

! House of Lords dismissed the plaintiff’s appeal. " By common usage it is proper for a person to say that in his opinion a thing has an artistic character if

he gets pleasure or satisfaction or it may be uplift from contemplating it. # Great differences of opinion on what is art.

" Can have artistic craftsmanship without actually being considered a work of art. " Looking nice appears to me to fall considerably short of having artistic appeal.

# No evidence that anyone felt or thought that the furniture was artistic in the sense which I have tried to explain.

" Must have craftsmanship, but must have the added character of being artistic. " In deciding whether a work is one of artistic workmanship I consider that the work must be viewed

and judged in a detached and objective way. " In the present case the evidence fell short of establishing that the knock-‐up qualified to be

characterised as a work of artistic craftsmanship. " Shouldn’t be left to judges to assess artistic merit. " Says no to an object being artistic if it gives visual pleasure -‐ e.g. a pretty girl or a landscape.


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" Statutory phrase is not “artistic work of craftsmanship” it’s “work of artistic craftsmanship”. " Given the craftsmanship, it is the presence of such aim and impact -‐ “the intent of the creator and its

result” … which will determine that the work is one of artistic craftsmanship. " Shall come into existence as the product of an author who is consciously concerned to produce a

work of art. ! Found that the common meaning of the word artistic did not allow it to be used as a description for the

craftsmanship involved in the production of the chair.

Kenrick & Co. v. Lawrence & Co.

! Plaintiff printers had produced cards to inform illiterate persons how to vote. ! Defendant published similar cards, with the hand positioned slightly differently. ! Box and cross can only be drawn in so many ways. ! Needs to be an actual work of art, something that has merit or value as and in its character of a drawing,

etc, and not simply because it conveys by way of a picture a description or direction which could be just as well put into words.

ARTISTIC-‐NESS?

! From DRG Inc. v. Datafile, some confusion regardless the measure of artistic-‐ness that is necessary in subject matter to qualify as artistic works. " Works of artistic craftsmanship and architectural works -‐ historically have been seen as requiring a

qualitative feature. " The remaining specific categories in the definition of artistic work, essentially paintings, drawings,

maps, charts, plans, photographs, engravings, sculptures -‐ authorities would suggest that no qualitative measure of artistic-‐ness is required.

" Artistic work sin general, or the residual content of the definition beyond the specified categories.

ARTISTIC WORKS IN GENERAL

Cuisenaire v. South West Imports Ltd.

! Plaintiff created rods of different sizes and colours for the purpose of teaching arithmetic to children. " Claimed protection as original productions in the scientific field under the general definition under:

# Every original literary, dramatic, musical and artistic work # in s. 2 “artistic works” # works of “artistic craftsmanship”.

" All rejected. ! The rods are physically littler more than tools or counters to be used for a particular purpose. ! Never intended primarily as an article regarded as artistic or beautiful in itself even if the artistic

requirements requires here are not too great. ! Originality in size, shape, selection and arrangement.

" It is, however, the artistic work itself which is entitled to protection and not the idea behind it. ! Plaintiff’s rods may have a certain attraction to children, but that would be a very secondary purpose.


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DRG Inc. v. Datafile

! Application brought to expunge the respondent’s registration of copyright as artistic works in two subjects comprising colour-‐coded file labels as follows: " A series of colour coded numeric labels composing the numbers 0-‐9 " A series of colour coded numeric labels comprising the letters of the alphabet from A-‐Z

! Grounds for expungement: " The design was not a proper subject matter for copyright because

# it lacked the characteristics of an artistic work # it was essentially a functional tool

" The work was not sufficiently original because it did not constitute a substantial modification of the pre-‐existing art.

! Colours followed the rainbow, sequenced twice for alphabet, light then dark, etc. ! Criteria:

" Is the work in question a work of art? " Did the artist have a conscious intention to create a work of art? " Would a substantial section of the public genuinely admire and value the thing for its appearance and

get intellectual or emotional pleasure from it? ! Again look to s 3(1), irrespective of artistic quality ! Argued it was an engravings, “other similar works”. ! Held that it was an artistic work for purposes of copyright and no higher standard of originality is

required than the case of literary copyright from University of London Press, Ltd. v. University Tutorial Press, Ltd. " In this case, it’s not the folders, or the labels for which the copyright exists, it’s the graphic design

itself. " Not the system that is being protected, just the specific design of it.

! “The simpler the copyrighted work is, the more exact the copying must be in order to constitute infringement”

! Compared the labels to the flash cards in Cuisenaire.

Lifestyle Homes Ltd. v. Randall Homes Ltd.

! Copyright is different than patents and industrial designs. ! To be entitled to the protection envisaged by the Act, two things are required:

" An original expression of thought, and " An attempt to convey “beauty”.

! The author can borrow an idea and take inspiration from others so long as it is ultimately an original expression of thought.

! To interpret the Act properly, the tribunal should not attempt to exercise a personal aesthetic judgment to consider the intent of the creator and its result.

! Originality does not necessarily mean that it is a brand new idea or that it is being presented for the first time.

ARTISTIC CRAFTSMANSHIP

! Requires an element of artistic-‐ness, or a qualitative factor, in order to gain copyright protection. ! In Canada this continues to await determination by the SCC. ! In DRG Inc. v. Datafile:


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" Artistic-‐ness is necessary for subject matter within the category of artistic craftsmanship but: " expressly forebears from stating whether that must be determined by the courts for works of

craftsmanship and architecture " Notes, that the text of the Canadian Copyright Act mirrors that of the 1911 Act of the UK, where

jurisprudence has seemed to indicate that such is required. " notes the Canadian decision of Hay & Hay Construction Co. v. Sloan to have accepted this, but to have

struggled to find an appropriate test and " comments that even if works of craftsmanship and architecture must be measured against some test

of artistic-‐ness, as set out in the Hensher, Merlet or Hay cases) it would not apply to artistic works outside of craftsmanship or architecture.

George Henser Limited v. Restawile Upholstery (Lancs) Limited

! Focus now is on the meaning to be given to the expression “craftsmanship” in the specified or enumerated category of “artistic craftsmanship”.

! Must be manifest that to qualify as a work of artistic craftsmanship a work must at least be a work of craftsmanship, but it must not only be that, it must have the added character of being artistic.

! “Work of artistic craftsmanship” must be construed as a whole. ! Misleading to ask, first, if this is a work produced by a craftsman, and secondly, is it a work of art?

" More pertinent to ask, is this the work of one who was in this respect an artist-‐craftsman? # The artistic merit would then be irrelevant.

" “Intent of the creator and its result” which will determine that the work is one of artistic craftsmanship.

ARCHITECTURAL WORKS

! Used to be that designs for houses/cabins/etc. had to have some sort of panache, flair, distinctiveness, etc. " Finding panache or any one of the synonyms should no longer be required. " Designs of any sort of building, even low-‐cost mass-‐produced homes, and products of landscape

architecture, such as garden or golf course layouts are protectable.

Hay and Hay Construction v. Sloan

! Plaintiff had designed Belaire, a residential house on a lot the corporate plaintiff was to sell. ! Rather conventional disposition of the available space but used to the best advantage by making an

otherwise undistinguished ground plan into a split level house. ! Exterior had an attractive cottage-‐roof and a very attractive disposition of windows, doors, and treatment

of exterior building material. ! Defendant tried to get permission to copy Belaire on a different lot, permission was refused, but bought

the other lot anyway and put up a house almost exactly the same as Belaire. ! Minor changes were made to Belaire, and those were done to the defendant’s house too during

construction. ! Defendant said that for such a small house, must use materials and design in a certain way, therefore no

copyright was possible. ! Belaire was quite different from anything a expert witness, land surveyor, had seen before.

" Many distinctive features. " 6 architects would have all made a different-‐looking front facade.


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! Belaire was found to have artistic character and design within the meaning of the Copyright Act -‐ artistic work.

! None of the design elements were novel, but altogether it was enough.

OTHER SPECIFIED OR NUMERATED CATEGORIES

! Definition of photograph " January 1994 NAFTA, any work expressed by any process analogous to photography (therefore

including digital photography). ! Engravings

" Found in DRG Inc. v. Datafile to include the designs on file labels. ! Paintings

" Found to potentially include body painting and tattooing. " Should there be a distinction between makeup and a tattoo? (temporary or fixed?) " Clowns would frequently put makeup on in the same pattern, would a drawing or painting be

required to ensure copyright?

Netupsky v. Dominion Bridge Co. Ltd.

! Pre-‐1998 case illustrates how a three-‐dimensional building construction can constitute a copyright infringement by reference. " Not to architectural work, but to categories of drawings and plans. " At the time, plans were protected as a literary work.

! Claimed copyright infringement in design plans for a distinctive A-‐shape frame design for football stadium ice arena complex in Ottawa.

! The frame had a dual purpose of housing the ice arena and supporting a cantilever roof covering the seating area stadium.

! At trial no infringement was found because the artistic character or shape remained the same. " Only the method of construction used to bring about the same shape has been changed and that, in

any event, the contract entered into by the plaintiffs impliedly allowed such changes. ! At appeal, the court considered whether there was a copyright and infringement therefor, not in the

structure itself as an architectural work of art, but in the plaintiffs’ design plans of the structure as drawings or plans.

! Copyright subsists not in the building itself, but in the artistic character or design thereof. ! Therefore, an architect obtains art in his plans as literary works in view of the fact that literary works are

defined as including plans, and in his sketches and drawings as artistic works in view of the fact that artistic works are defined as including drawings.

! Court found the plaintiffs’ plans to have been substantially reproduced in later drawings or plans made by the defendant.

! Court concluded that copyright infringement would be excluded only if the plans used by the defendant cannot be considered to be in the nature of architectural drawings or plans, of any architectural work of art.

! Need to know more about this case, SCC said that the contract allowed for the changes, even though the building was clearly based off of the plaintiff’s work.

Preston v. 20th Century Fox Canada Limited

! Blurs the lines between two-‐dimensional artistic drawings and a literary description.


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! Plaintiff combined ownership and infringement of his literary copyright in a manuscript entitled Space Pets and a character in that script described as an Ewok.

! Name Ewok is never said in the film, but 40 times in the script, and in the credits. ! If there is to be copyright in a name, it has to identify a well-‐known character copyright, and associated

character must be recognised. " Character must be sufficiently clearly delineated in the work subject to copyright that it become

widely known and recognised. ! Characters were not widely known, not many had heard of them, or read the script. ! Clearly it was Star Wars that made the Ewoks famous.

" Characters in works can have copyright protection once they meet the criteria from Preston.

LB (Plastics) Limited v. Swish Products Limited

! Plaintiffs manufactured sets of plastic drawers for the furniture industry. ! Drawers were in component parts for assembly by the buyer. ! Defendants made similar sets, and there was evidence that they had some desire to establish

interchangeability between its own and those of the plaintiffs. ! No evidence that the defendants had seen the drawings, it was the manufactured goods that were copied. ! Three dimensional copy of a three dimensional product, thereby constitution an infringement of the two-‐

dimensional drawing of that product. ! Suggestion that the plaintiffs had made the 3d drawers and component parts first, then made the

drawings. " This presented the issue whether the drawings could be said to be original.

! Can there be copyright in a copy? ! Even if the 3D models had been made first, and then drawings, J is of opinion they would qualify as

original works. ! Absurd that by making a drawing a man should get protection extending for his life plus 50 years,

whereas under a registered design or patent he can only get 15 or 16 years. ! Copyright isn’t effective against anyone who produces something independently.

" It is only effective to stop third parties from helping themselves to too liberal a portion of another man’s skill and labour for their own exploitation.

! Has not been proven that the defendants copied a drawer made in accordance with the relevant drawing. " No copyright infringement then.

! Comparing Hensher and LB Plastics it is apparent that a copyright exclusivity can be far more readily

established in the 3D products themselves if there is a drawing.

Bayliner Marine Corporation v. Doral Boats Ltd.

! Plaintiff manufactured boats. ! Claimed copyright infringement against the defendant for manufacturing boats by stripping down the

plaintiff’s boats, using the hull and superstructure sections to make a 3D rendering (a plug) and then making a mould for its own boats.

! This saved the defendant from engaging in engineering design of its boats. ! Plaintiff made its boats by preparing design drawings of the hull and superstructure, then rendering, then

plug, a mould. " Defendant could make same boats way cheaper.

! Issue here:


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" The scope of copyright protection for 3D copying from a 3D object for which there existed antecedent drawings protected by copyright.

! By looking at the two boats it’s obvious the defendant’s was made from the drawing, despite their use of an intermediary.

British Leyland

! Dissent ! Majority of the HoL found copyright in design drawings of automotive spare parts to be infringed by the

reverse engineering. ! BUT the majority declared that automobile owners had a right to keep their cars in good repair, and they

were entitled to a free market in spare parts as a result. " Government never intended to have copyright law prevent the reproduction of a functional object

depicted in a drawing. " “Reproducing in s 3(5) should not be given the extended meaning of indirect copying in cases which

the mechanical drawing or blueprint is of a purely functional object. " “You may prolong the life of a licensed article but you must not make a new one under the cover of

repair"

Spiro-‐Flex Industries Ltd. v. Progressive Sealing Inc.

! Nothing in the speeches in British Leyland that would diminish the force of King Features as an authority upon which to rely in this case as in Bayliner.

! “the plain words of the Act (“in any material form”) get rid of any difficulty there might otherwise have been in treating a copy in three dimensions as an infringement of copyright in a sketch in two dimensions.

Bayliner Marine Corporation v. Doral Boats. Ltd

! Discusses s. 46 of the Copyright Act which was in force until replaced by s. 64 in 1988. ! Act doesn’t apply to designs capable of being registered under the Industrial Designs Act, except designs

that though capable of being so registered, are not used or intended to be used as models or patterns to be multiplied by any industrial process.

! General rules under the IDA may be made for determining the conditions under which a design shall be deemed to be used for such purposes as aforesaid.

! Page 227 for the IDA stuff. ! Could parliament have intended for someone to gain 10 years’ protection after registering under IDA, but

50 years if they forget and have protection under copyright? " No.

! Only question is whether the subject-‐matter of the claimed copyright is a design within the meaning of the IDA.

! If it is, it’s subject of s. 46 of the Copyright Act as something capable of being registered under the IDA.

S 64 OF THE COPYRIGHT AMENDMENT ACT

! Article " means any thing that is made by hand, tool or machine

! Design


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" means features of shaper, configuration, pattern or ornament and any combination of those features that, in a finished articles, apple to and are judged solely by the eye

! Useful article " means an article that has a utilitarian function and includes a model of any such article

! Utilitarian function " in respect of an article, means a function other than merely serving as a substrate or carrier for

artistic or literary matter ! Read s(2) on page 230.

" Has exceptions.

Magasins Greenberg Ltee v. Import-‐Export Rene Derhy

! After quoting s. 64(2), the respondent argued that contrary to the arguments of the applicants, this section does not have the effect of denying a design covered by these provisions the status of a work which can be protected by the Copyright Act within the meaning of s. 2 of the Act.

! s 64(2) is only a defence which may be raised in a copyright infringement proceeding. " Section only indicates the limits of the protection conferred by the copyright without thereby

denying the existence of that copyright. ! The holder of the copyright to this design must have authorised, first, reproduction of the applied design

in an article reproduced in a quantity of more than fifty, or second, in the case of a plate, engraving or cast, the design, again with the authorisation of the holder of the copyright., must be used for producing more than fifty useful articles.


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CHAPTER 7: COMPILATIONS AND DATABASES

See syllabus.

CHAPTER 8: ECONOMIC RIGHTS, INFRINGEMENT AND DEFENCES

INTRODUCTION: THE SCOPE OF ECONOMIC RIGHTS

WORKS UNDER S. 5: LITERARY, DRAMATIC, MUSICAL, AND ARTISTIC

! These categories receive the rights provided for under s. 3 and involve the sole right to: " produce or reproduce the work or any substantial part thereof in any material form whatever " perform the work or any substantial part thereof in public " publish the work or any substantial part thereof " engage in any of the enumerated rights set out in ss. 3(1)(a) to (i); and " authorize any of the above acts

SUBJECT MATTER PROTECTED BY NEIGHBOURING RIGHTS (OTHER SUBJECT-‐MATTER)

PERFORMER’S PERFORMANCES

! s. 15 provides for protection of a performer’s performance that takes place in Canada or in a country that is party to the International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organisations, signed in Rome on October 26, 1961. " s 15(1) -‐ a performer has a copyright in the performer’s performance, consisting of the sole right to

do the following in relation to the performer’s performance or any substantial part thereof: # (a) if it is not fixed,

• (i) to communicate it to the public by telecommunication • (ii) to perform it in public, where it is communicated to the public by telecommunication

otherwise than by communication signal, and • (iii) to fix it in any material form,

# (b) if it is fixed, • (i) to reproduce any fiction that was made without the performer’s authorisation • (ii) where the performer authorized a fixation, to reproduce any reproduction of that

fixation, if the reproduction being reproduced was made for a purpose other than that for which the performer’s authorisation was given, and

• (iii) where a fixation was permitted under Part III or VIII, to reproduce any reproduction of that fixation, if the reproduction being reproduced was made for a purpose other than one permitted under Part III or VIII, and

# (c) to rent out a sound recording of it, " and to authorize any such acts.

! s. 2 “performer’s performance” means any of the following when done by a performer: " (a) a performance of an artistic work, dramatic work or musical work, whether or not the work was

previously fixed in any material form, and whether or not the work’s term of copyright protection under this Act has expired,


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" (b) a recitation or reading of a literary work, whether or not the work’s term of copyright protection under this Act has expired, or

" (c) an improvisation of a dramatic work, musical work or literary work, whether or not the improved work is based on a pre-‐existing work.

! s. 26(1) the sole right to do the following in relation to the performer’s performance or any substantial part thereof: " (a) if it is not fixed, to communicate it to the public by telecommunication and to fix it in a sound

recording, and " (b) if it has been fixed in a sound recording without the performer’s authorization, to reproduce the

fixation or any substantial part thereof, and to authorize any such acts.

SOUND RECORDING MAKERS

! s. 18 provides for rights of coins recording makers when the sound recording is first fixed by a citizen or permanent resident of, or first published in, a Berne Convention country or a country that is a TWO member.

! s. 19 provides for a right of remuneration by royalty payments to both the performer of the performance and the maker of the sound recording of that performance in a situation where the sound recording has been published.

! The sound recording must either be first fixed by a Canadian citizen or permanent resident of Canada, or a citizen or permanent resident of a Rome Convention country. " The circumstances and scope of this right of remuneration by royalty payments is specified in ss.

19(2) and (3), with exceptions in s. 20.

BROADCASTER’S COMMUNICATION SIGNALS

! ss. 21 to 23 provide a copyright to a broadcaster … in the communication signals that it broadcasts. " Exceptions in s. 21(3) and reciprocity provisions in s. 22.

RENTAL RIGHTS

! Computer programs, musical work, a sound recording in which the work is embodied, sound recording, and a performer’s performance.

! Rental under s. 2.5 of the Copyright Act.

NOTES

! Difference between works under s. 5, and the scope or content of “other subject-‐matter” or “neighbouring rights”. " Other subject-‐matter does not enjoy full and general economic rights under s. 3.

! Moral rights under s. 14.1 are only available to the original author “of a work”.

REPRODUCTION

! s. 3(1) of the Copyright Act is the “sole right to produce or reproduce the work or any substantial part therefor in any material form whatever”.

! Quite clear on ordinary contexts of literal copying, such as photocopying pages from a book.


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! Concept of reproduction is more difficult, however, when it occurs in a different medium, presentation, form, or dimension. " Literal copying of the “object code” of a software program.

# Virtually non-‐readable by humans, it is a reproduction of a human-‐readable code and is protected (pp 83).

" Non-‐literal copying of software programs (pp 90). " 3D copying by making an object presented in a plan, chart, or drawing (pp 216). " Distinction between reproduction of the selection and arrangement of a database or between the

compilation and reproduction of the data or content of the database (pp 233).

Nichols v. Universal Pictures Corporation

! Two plays, different stories but similar characters. ! “A comedy based upon conflicts between Irish and Jews, into which the marriage of their children enters,

is no more susceptible of copyright than the outline of Romeo and Juliet.” ! Expert evidence was said to not be needed. ! Found in the defendant’s favour. ! Character protection, again from Nimmer.

" A character can be protected separately form the plot, but must be “distinctively delineated” in the work; and

" This delineation can be achieved more readily through an artistic depiction (as in cartoon characters) than through a literary description or “word portrait”.

Preston v. 20th Century Fox Limited

! Plaintiff was resident in Canada. ! Claimed that the motion picture “Return of the Jedi” and a tv series, was an infringement of his Space Pets

manuscript. ! Copyright in the Ewok character was discussed at the trial division.

" Claim was dismissed. ! Generally no copyright in a mere name.

" But, where the name identifies a well-‐known character copyright in the name and associated character may be recognised.

" For such recognition it is said the character must be sufficiently clearly delineated in the work subject to copyright that it became widely known and recognised.

" In words of Learned Hand J, the less developed the character, the less they can be copyrighted. ! 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. " Not sufficiently different from other characters in the same movie, name not really mentioned in

actual script, only popular due to Star Wars anyway.

Hanfstaengl v. Empire Palace

! Exhibition presented five pictures of which the plaintiff held the copyright. ! Defendant did tableaux vivants of the pictures, exact reproductions of the pictures as such.

" Backgrounds were painted on canvas. ! Copyright includes exclusive right to copy, engrave, reproduce, and multiply… by any means and by any

size … could that include the exhibition of living figures? " Doubt it.


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" Dicks v. Brooks # Madame Tussaud case, allows the wax sculptures as they don’t compete with the originals in any

way (the paintings or photos on which they were based). ! Doesn’t seem like the original legislative intent was to cover this, would be a stretch, so no.

Roger v. Koons

! Copyright in a black and white photo of eight newly born German Shepherd puppies with a man and woman.

! Defendant made sculptures of the puppies. ! Sculpture was clearly to be based exactly off of the photo. ! Had the appellant simply used the idea, would not have been copying.

" But, copied expression exactly. ! Held that there was infringement, trial judgement was correct.

SUBSTANTIALITY

! In determining what is substantial copying, two primary criteria are utilized. " Quantity " Quality

# Qualitative factors are more significant. • Relative effort between the parties in preparing their respective works • The economic impact on the plaintiff’s market • Other factors re: some notion of unfair competition

" Inquiry as to substantiality within broader considerations of: # Whether there has been an infringement through the similarity or striking similarity of the

respective works to a substantial extent, or whether there is substantial similarity between copyrightable elements in the respective works

# Whether a fair amount has been taken in a manner of the fair dealing defence. " “If the quantity taken be neither substantial nor material, if, as has been expressed by some judges, a

“fair use” only be made of the publication, no wrong is done and no action can be brought"

QUANTITATIVELY SUBSTANTIAL

Hawkes & Son (London) Ltd. v. Paramount Film Service, Ltd.

! Plaintiffs owned a copyright in a song “Colonel Bogey”. ! Defendants filmed an event were the song was played, film had some of the music in it. ! Trial J

" No substantial part of the work has been reproduced. " What has been used is fair dealing. " Impossible for there to be substantial injury from it. " Defendants didn’t have knowledge the work had been infringed.

! LJ " Though not prolonged, clearly a substantial, vital, and essential part which was reproduced. " Despite not really causing any damage, and the fact this will hamper news films, has infringed.


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QUALITATIVELY SUBSTANTIAL

! Illustrated best with musical works involving a portion that is highly appealing and often repeated, the “hook”.

Breen v. Hancock House Publishers Ltd.

! Plaintiff completed a doctoral thesis in ’72 on the Canadian West and the Ranching Frontier. ! Defendant prepared a manuscript in the 70s on Ranching. ! Defendant was working on own manuscript, at recommendation of others looked at the plaintiff’s.

" Late for deadline, made liberal use of the plaintiff’s work. ! Plaintiff went to update own work, read defendant’s, found substantial copying. ! Quantitatively small, but seemed to be more than fair dealing. ! Only conjecturally damaging. Sale of second book was disappointing. ! Even in the absence of monetary loss, or of accountable profits, the finding of infringement might

nevertheless entitle a successful plaintiff to exemplary or punitive damages. ! Publisher was unaware, so sufficient to limit to permanent injunction. ! Though a scholarly work might have limited commercial value, it is nonetheless entitled to the full

protection of copyright. ! It is his work, his labour an chis talent which have produced it.

" Plaintiff succeeded in proving this point.

Hutton v. Canadian Broadcasting Corporation

! Facts were done before, two TV shows, Star Chart and Good Rockin’ Tonite. ! Appreciable similarity between the words of the two productions, at least between the words of SC and

the first 125 programmes of GRT. ! Same author for those, same host. ! Common stock elements like teases, bumpers, montages, etc. were common to the trade. ! Some similarities were inevitable due to the author’s personal writing style and the clichés of the

business. ! Trial J: Deal with similar subject matter, but no substantial similarity in the presentation of it, due to the

dramatic incidents of SC, which give it its original character, are altogether lacking in GRT. ! Appeal: Different premises, different structure, based on similar things (show from the 50s). When both

shows are viewed as a whole, there is no substantial similarity in the mode of expression.

Prism Hospital Software v. Hospital Medical Records Institute

! Two computer programs, facts given earlier. ! Had access to the source code, had other program installed on computer while doing the other version. ! Evidence of actual copying. ! Defendants tried to hide their activities. ! No literal copying, more of a translation. ! Actual copying has been demonstrated, access to the source code has been demonstrated, and the

programs are substantially similar on the positive evidence available. ! Bad copying, but still copying. ! Copying goes beyond a reproduction explainable by reference to the specifications for data collection laid

down.


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" Program is more similar to other one, doesn’t align with specific requirements of HMRI.

PERFORMANCE IN PUBLIC

! Expressed in s. 3(1) of the Copyright Act as the sole right “to perform the work or any substantial part thereof in public”.

PERFORMANCE

! s. 2 of the Copyright Act, “performance” means any acoustic or visual representation of a work, performer’s performance, sound recording or communication signal, including a representation made by means of any mechanical instrument, radio receiving set or television receiving set. " WTO Agreement Implementation Act 1994 " NAFTA Implementation Act 1993 " Copyright Amendment Act 1993

Canadian Cable Television Association v. Copyright Board (Canada)

! Immediately prior to this case the definition read at the end: “any mechanical instrument or by radio communication”.

! Primarily concerned with s. 3(1)(f), the right to communicate a work to the public by telecommunication” and whether this includes the performance of musical works in transmissions to cable subscribers.

! At this time, the expression musical works was still defined as the written score. ! Musical work means any combination of melody and harmony, or either of them, printed, reduced to

writing or otherwise graphically produced or reproduced. ! Issue required the court to consider the meaning of performance and the meaning of public.

" The court found the communication to be a performance and to be in public. ! Definition includes any acoustic representation. ! “Includes” is generally not limitative, and not apt in this context to limit Parliament’s intention to cover all

kinds of acoustic representations.

“IN PUBLIC”

Jennings v. Stephens

! Dramatic society gave an unlicensed performance of a dramatic work at a meeting of a women’s institute. ! Meeting took place in the village hall, no admission paid, but yearly fee to be included in the institute. ! No persons, aside from members, were allowed to be present at the meetings because the institute

considered that the presence of non-‐members would change it from private to “public”. ! Owner of copyright has the sole right to do which is by the Act conferred on the owner of the copyright. ! The expression “in public” must be considered in relation to the owner of the copyright. ! If the audience considered in relation to the owner of the copyright may properly be described as the

owner’s “public” then it would be infringement for anyone aside from the copyright holder to perform. ! Regardless of the fact that the performers were a part of the same institute as the viewers, not the same

as presenting a play in front of family members. " They are members of the institute for things such as this. " Compare it to taking a lecture from a speaker, and performing without his permission.


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Francis, Day & Hunter Ltd. v. Twentieth Century Fox Corp. Ltd.

! Plaintiff held the copyright to a song composed in 1892 TMWBTBAC, same titled movie came out in Canada in 1935. " Entirely different plot.

! Cannot be an infringement of performing right in musical composition unless there has been a public performance of the musical composition by the defendant.

! To say that the mere showing of the title of the song on the screen was a public performance of a musical composition is abhorrent to common sense.

! Musical composition is performed by audible reproduction, by the voice or by musical instruments or by mechanical methods of reproduction.

Canadian Admiral Corporation, Ltd. v. Rediffusion, Inc.

! Plaintiff had the exclusive right to certain telecasts of games. ! Defendant maintained an antenna in Montreal and would intercept the broadcasts and further transmit

them to units in the homes of their subscribers, etc. ! The character of the individual audiences remains exactly the same, each is private and domestic. ! Plaintiff wanted as many people as possible to see the telecast, so their goal hasn’t really been hurt by the

defendant. " The advertisements and everything were rediffused as a whole.

! Performances in the homes and apartments of the subscribers of the defendant company were not performances “in public”.

! Much different in the defendant’s showroom, where they would also show the footage. " Showroom was there to demonstrate and sell its services, open to the public. " Nothing of a domestic or quasi-‐domestic nature and constituted a performance in public.

Canadian Cable Television Association v. Copyright Board (Canada)

! Already found to be a performance, now considering if it is in public. ! “Performance is no less in public because the listeners are unable to communicate with one another or

are not assembled within an enclosure or gathered together in some open stadium or park etc” " Also not private just because people are in the privacy of their homes when viewing.

AUTHORISATION

! s. 3(1) concludes with the right of the copyright owner to authorize any of the preceding rights in s. 3(1).

University of New South Wales v. Moorhouse

! Plaintiff and respondent, Moorhouse, was the author and art owner of ashore stories in magazines and later in a book. " Granted the second plaintiff the right to print, publish and sell the book in Australia.

! Defendant and appellate had made 2 photocopies of about 10 pages of a book. ! Deals with fair dealing under s 40 and reasonable portion under s 49. ! Seemed as though the university may have authorized the use of the photocopiers for illegal means,

however a copy of the act was available and there was a notice on the photocopier. ! Found that the university fig not give adequate notice on the machines for the purpose of informing users

that the machines were not to bemused in a manner that would constitute an infringement of copyright.


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! Copies were infringing.

CBS Songs Ltd. v. Amstrad Consumer Electronics Plc.

! Plaintiffs suing the defendant for making recording equipment that would allow members of the public to copy records in which copyright subsists and that the defendant must not advertise their equipment in such a way so as to encourage copying.

! Pirates don’t use the type of technology that the defendant is selling. ! Defendant’s machine was advertised to be able to copy cassettes, did have an asterisk saying that copying

of some material would need permission under the Copyright Act. ! BPI submitted that defendant authorised infringement, and would be a joint infringer together with

anyone who uses a machine for the purpose of making an infringing copy. ! No manufacturer or machine confers on the purchaser authority to copy unlawfully. ! By selling the recorder it may facilitate copying, but does not authorise it. ! Already said it shouldn’t be used illegally, but did advertise aspects which could be intriguing for illegal

purpose (double-‐tape, twice the speed). " If they didn’t advertise this, other manufacturers would.

! Defendant conferred the power to copy, but did not grant or purport to grant the right to copy. ! Joint infringes are two or more persons who act in concert with one another pursuant to a common

design in the infringement.

Muzak Corporation v. Composers, Authors & Publishers Association of Canada Ltd.

! Respondent has the sole right to perform the works in Canada. " Alleges infringement on the part of the appellant because, it claims, the appellant has authorized the

performance of the musical works under the contract with the defendant broadcasting company. ! No infringement found. ! CAPAC was the owner of the sole right to perform certain musical works in public throughout Canada. ! CAPAC submitted that Muzak had authorised the performance of the works by leasing records containing

the musical works in question to the Canadian ABC franchise (broadcasting corp.). ! These recordist contained the musical pieces in question, which recordings were subsequently broadcast

in public by ABC. ! SCC rejected the authorisation connection. ! Mere fact of supplying the means which permitted a person to commit an infringement did not amount to

authorisation.

de Tervagne v. Beloeil

! Plaintiff was an author of a dramatic work, lived in Paris. ! Defendant was a town in QC.

" Town owned a cultural centre that performed dramatic works. ! Second defendant was a non-‐profit that rented the cultural centre. ! Proceedings had been brought against the producer, but his company went bankrupt. ! Plaintiff found out about the play, tried to negotiate terms with the producer, but they were not complied

with. ! Plaintiffs asserted that the defendant had authorised the play to go on. ! Authorise to mean “sanction, approve and countenance”.


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! Atkin LJ “authorise means to grant or report 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”

! A defendant who simply supplies the means which make the infringement possible cannot be held liable for authorizing the infringement if he had no control offer the means in question.

! A lot to do with the element of control. ! Held that the defendants have no liability.

" Did not authorise the performances of the play. " The producer alone had control over the choice of play.

! Situations that might constitute an infringement by authorisation can include the following: " Situations similar to contributory infringement in the US.

# Concurrent rather than joint tortfeasors. # The acts of the tortfeasors are several or independent, but both cause the damage.

• There must be some link, such as the ability to control the use of copyrighted works by others.

• Knowledge of the infringement occurring as a result of the aid provided. # No need for the authoriser to benefit from the infringement.

" Situations where the authoriser can be said to sanction, approve, and countenance the infringement by granting or purporting to grant to a third person the right to do the act complained of. # Essence of this test is that the authorisation can come only from somebody having or purporting

to have authority to give the authorisation. # This test precludes any authorisation by merely assisting, encouraging, or facilitating.

" Situations in between the above two. " Merely providing the means of infringement is not in itself sufficient to constitute “authorisation”.

# A seller can presumptively assume that lawful use will be made of any equipment.

SPECIFIC OR ENUMERATED RIGHTS

! Paragraphs (a) to (i) of s. 3(1) are listed.

COMMUNICATION TO THE PUBLIC BY TELECOMMUNICATION

! Bunch of random stuff. ! Does caching by the ISP amount to reproduction, or is it merely a necessary part of the means of

telecommunication. " Necessary part of the means of telecommunication (so long as that is what is happening)

PRESENTATION AT A PUBLIC EXHIBITION

! s. 3(1)(g) provides for the presentation at a public exhibition, for a purpose other than sale or hire, of an artistic work created after June 7, 1988 as stipulated in Copyright Amendment Act. " Arose due to the provision of the right to perform a work or any substantial part thereof in public

was not applicable to static artistic works.


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FROM GUTENBERG TO TELIDON: A WHITE PAPER ON COPYRIGHT, PROPOSALS FOR THE REVISION OF THE CANADIAN COPYRIGHT ACT

! Droit de suite. There is none in the present Act. " This right would enable the creator of an original artistic work to share in the proceeds of its resale. " In this manner an artist and even possibly his heirs, could claim a share of increases in the value of a

work of art as it was resold. # In the relatively few jurisdictions that do grant the right, it applies oily to works sold by public

sales or auctions. " Many practical and legal difficulties, and the ease of evading the right there remains the difficulty of

ensuring that the right would dapple only to Canadian creators. # If Canada were to have one, it would benefit foreign artists’ work in Canada, but not to Canadians

whose work was sold overseas. ! Exhibition right for artistic works

" Such a right would enable artist to control the public exhibition of their work. " This would control the public presentation of their art even after it was sold.

A CHARTER OF RIGHTS FOR CREATORS: REPORT OF THE SUB-‐COMMITTEE ON THE REVISION OF COPYRIGHT

! Creators of artistic works have long maintained that compared to creators of other types of works, they are short-‐changed by the present Act. " No royalties, etc.

! Would have to be restored only by recognizing the unique uses made of an artistic work and by providing exclusive rights to these under the Copyright Act.

! Recommendation is that the revised law should recognize a right to exhibit the original of an artistic work in public. " This right should also extend to artistic works which are part of a limited edition.

! Droit de suite " The biggest set back would deb that it would have to be extended to non-‐Canadian artists, and could

displace the art to neighbouring jurisdictions where the right doesn’t exist. " Recommendation is that droit de suite not be introduced in the new act.

INFRINGEMENT

! Provided in s. 22 and 27.1 of the Copyright Act, as inserted by s. 15 of the Copyright Amendment Act 1997.

PARALLEL IMPORTATION OF BOOKS

! s. 27.1 deals specifically with the parallel importation of books. ! The copy of the book is obtained lawfully in the extraterritorial jurisdiction. ! Policy objective of this section is to protect the Canadian copyright owner of any book by preventing the

importation of the book from an extraterritorial source. ! It reflects trade protection of the publishing industry in Canada.

" Primary infringement is the act of importation. " Secondary is by dealing with a book that is imported contrary to this section.


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" s. 44.2 enables the owner of the copyright/licensee/distributor to invoke the remedial provisions of s. 44.1(3).

" s. 45 has the exceptions, including the importation of 2 copies for the use of the importer only.

INFRINGEMENT GENERALLY

PRIMARY INFRINGEMENT

! s. 27(1) stipulates primary infringement: " An infringement of copyright for any person to do, without the consent of the owner of the copyright,

anything that by this Act only the owner of the copyright has the right to do. ! Two aspects to take note of:

" One of the most conceptually difficult elements in establishing infringement by reproduction is that of “access”. # Must be established to provide the causative link in the copying of the plaintiff’s work, as

opposed to the position that the defendant’s work constitutes an independent creation. # If access can be established by direct evidence, no difficulty. # If only circumstantial, or ‘implied’, inquiry must necessarily involve how far account should be

taken of, or what weight ought to be given to, a comparison of the respective works and the factors of striking or substantial similarity in itself.

" An emphasis on identifying and protecting only copyrightable material, especially in cases of non-‐literal copying. # Isolating the protectable form of expression, figuring out what the author actually created, and

evaluating whether or not infringement has occurred by applying the tests for infringement to a comparison.

SECONDARY INFRINGEMENT

! Stipulated in s. 27(2) concerns “dealing” in various ways with an infringing copy of a subject matter protected by copyright.

! Infringement of copyright for any person to " a -‐ sell or rent out, " b -‐ distribute to such an extent as to affect prejudicially the owner of the copyright, " c -‐ by way of trade distribute, expose or offer for sale or rental, or exhibit in public, " d -‐ possess for the purpose of doing anything referred to in paras a to c, or " e -‐ import into Canada for the purpose of doing anything referred to in paras a to c.

EXCEPTIONS, DEFENCES, AND FAIR DEALING

! Exceptions to infringement are set out in ss. 29 to 32.2. " Substantially expanded by the Copyright Amendment Act 1997, ss . 18 and 19. " The general defence of fair dealing stayed the same, but greatly expanded for educational

institutions, libraries, museums and archives. ! Fairly restrictive in Canada, must fall into specified category:

" Research, private study, criticism or review, or news reporting. ! Much more judicial discretion in the US.


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Sony Corp. v. Universal City Studios, Inc.

! Respondents owned copyright in various broadcast television programs. ! Petitioners made VCRs. ! Even unauthorised uses of a copyrighted work are not necessarily infringing.

" An unlicensed use of the copyright is not an infringement unless it conflicts with one of the specific exclusive rights conferred by the copyright statute.

! Time-‐shifting for private home use must be characterised as a non-‐commercial, non-‐profit activity. ! Plaintiffs admitted that no actual harm to their copyrights has occurred to date. ! No infringement found. ! Dissent argues that when a scholar is refused the ability of fair use, the whole public loses, while if an

individual at home is denied, they are the only loser.

MAKING ONE ENTIRE COPY

! Making a whole copy can never qualify as a “fair” amount. ! s. 30(2) allows libraries, archives, or museums to make a single copy for a library user for the purpose of

research or private study. " For some reason wasn’t amended to allow that user to make his or her own copy.

COPYING UNPUBLISHED WORKS

! Any usage by reproduction, public performance, or otherwise under s. 3 of an unpublished work has never been held to qualify as fair. " Many sources agree with this.

! There is no statutory limitation to this effect because s. 29 has not expressly limited the scope of fair dealing to only published works.

! The reproduction of anything that is unpublished could have the effect of it, or a portion of it, being published. " A separate economic right under s. 3. " From Gutenberg to Telidon thought it prudent that fair use doctrine apply to all copyright subject

matter that has generally been made available to the public, regardless of whether it has been published in the traditional sense.

Allen v. Toronto Star Newspaper Ltd.

! Plaintiff was a freelance photographer. ! Engaged by a nation-‐wide magazine to do a cover photo. ! The defendant, 5 years later, used the photo in their newspaper. ! The magazine had no issue with the photo being used. ! The defendant had put the older photo aside a new one to show the change she had undergone. ! The nature and purpose of the use by the defendant was to illustrate a current news story, therefore the

defence of fair dealing was allowed.

Television New Zealand v. Newsmonitor Services

! Plaintiff telecasts news and current events.


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! Defendant monitored these broadcasts for its clients, providing to them a transcript of any broadcast in which they were interested.

! To do so, the defendant videotaped all telecasts of the plaintiff that the defendant considered might be needed. " If they were not needed, they were then deleted.

! Plaintiff doesn’t want to put them out of business, just wants to get royalties. ! News monitoring service is parasitic, doesn’t do any of its own work. ! Defendant needed to record whole programme to effect its work, no other way of doing so. ! Found that all the takings are so substantial with regard to the program they came from couldn’t be fair

dealing. " What the defendant was doing wasn’t research or private study, at least not for itself. " “Research means searching into a matter or subject or the investigation or close study of it including

written materials or those captured in electronic form.” " “Private study connotes a form of study which is personal to the person undertaking it.”

MCA Canada Ltd. v. Gillberry & Hawke Advertising Agency Ltd.

! Action for damages for infringement of copyright in a musical work. ! The defendant commissioned a parody of the words of the musical work “Downtown” using the same

tune. ! Person who made the parody looked into finding who held the copyright.

" Knew that it existed. ! Defendant song author knew the head of MCA Canada, could have asked him. ! Found that it was more than fair dealing, needed to be licensed for parody. ! Damages were assessed at what it would have cost to license properly.


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CHAPTER 9: MORAL RIGHTS

! Introduction " Even after the transfer of the copyright, the author shall have the right to claim authorship of the

work, as well as the right to object to any distortion, mutilation, or other modification of the work which would be prejudicial to his honour or reputation.

" The determination of the conditions under which these rights shall be exercised is reserved for the national legislation of the countries of the Union.

" The means of redress for safeguarding these rights shall be regulated by the legislation of the country where protection is claimed.

" s 14.1 and s 28. 1 deal with moral rights. # s. 34(2) deals with remedies.

Snow v. The Eaton Centre Ltd.

! Application relies solely on s. 12(7) of the Copyright Act. " Allows the author the right to restrain any distortion, mutilation, or other modification of his work

that would be prejudicial to his honour or reputation. ! Defendant attached ribbons to the necks of the 60 geese forming a sculpture known as Flight Stop.

" Done without the knowledge or permission of the plaintiff. ! Plaintiff is an artist of international reputation. ! Defendants say the case doesn’t fall under s. 12(7), and if it does, it’s unconstitutional. ! “Prejudicial to honour or reputation” is subjective, involves a judgment on the part of the author so long

as it is reasonably arrived at. " Says the addition of the ribbons make it look ridiculous.

! Plaintiff only wants for the ribbons to be removed. ! Held that the ribbons did distort or modify the plaintiff’s work. Were to be removed.

Prise de parole Inc. v. Guérin, éditeur Ltée.

! Defendant published a collection for schools containing a number of stories, including an extract from a work, which was protected and duly registered original work within the meaning of the Copyright Act.

! The author of the work had assigned the exclusive right to print and publish it and to negotiate his copyright to the plaintiff.

! Already clear that the defendant had infringed the copyright of the work. ! Sales were good for the market in which it was sold, mainly grade 9 and 10, until the extract was

published in the defendant’s collection. ! Collection was targeted to Grade 8. ! About a third was reproduced word for word. ! Author said that it was so clumsily adapted (missing key parts), that he would have rather his name not

be associated with it at all. ! Under s 14.1 the author has, subject to s. 28.2 the right to the integrity of his work -‐ moral rights.

" Rights may not be assigned, but can be waived. This has not been done. ! s. 28.2(1) does not require the plaintiff to prove prejudice to his honour or reputation, must be proved

that the work was distorted, mutilated, or otherwise modified. " Allows for the use of the author’s opinion in assessing whether an infringement is prejudicial.


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! This case differs from Snow v. The Eaton Centre Ltd. in that the judge believes, in the assessment of the distortion, there is a requirement of an objective evaluation of the prejudice based on public or expert opinion. " In this case, the evidence certainly shows that the author felt frustrated by the publication of a

shortened version of his work. " Clearly demonstrated that the work was distorted, mutilated or otherwise modified. " Author’s reputation is established. " Didn’t think that the amount of lectures he was asked to give had been affected by the altered work. " Admitted that he hadn’t been ridiculed, or had any complaints expressed to him by his colleagues or

newspapers. ! Found that although the work clearly has been distorted, has not been shown that it was modified to the

prejudice of his honour or reputation. " Some considerations on page 291 of the Course Pack.

John Maryon International Ltd. v. New Brunswick Telephone Co. Ltd. (plaintiff)

! Plaintiff had engaged the defendant to construct a new tower in downtown Moncton. ! Engineering design work was done by a defendant as well. ! President of both companies was the same man. ! Dispute ensued as to the quality of the tower’s construction. ! Plaintiff issued proceedings against the defendants claiming breach of contract and negligence in order to

recover expenditures for repairs it had made. ! Various counterclaims were made by the defendants, including infringement of copyright.

" The plaintiff placed a girdle around the tower for the purpose of repairing it. " This was alleged to constitute an interference with the structural design of rate tower as an

“architectural work of art”. " At both trial and appeal the defendant was not found to be the author of the structural design. " Sufficient to dispose of the claim, but the CoA discussed the relationship between copyright and

implied terms of any contract that may limit copyright, as well as a claim to an infringement of moral rights (the right of integrity) that the defendant made.

! Laforest said even if the defendant was the author of the design, don’t think he could recover. " SCC looked to the Netupsky v. Dominion Bridge Co. Ltd. case where changes to a contract had been

contemplated by the parties but the contractor refused to make them. # Second contractor made the changes, in doing so the court found they could use the plans in

which the original contractor held the copyright. " Defendant knew the structure was intended as a communications tower. " Had to be safe, and be perceived to be safe by the public. " Public safety had to be ensured without arousing public concern. " NB Tel considered making repairs inside the tower, but didn’t want to risk interfering with the

communications facilities. " Tried to bring in s. 20 which would give a right to damages for copyright infringement. " Looks to European law which indicates the necessary distinction that must be made in the treatment

of works where the function of which is utilitarian as well as artistic. " There’s a balance, utilitarian function is first here, takes precedent. Counterclaim dismissed.

! Moral rights are vested, in s. 14.1(1), in an “author of a work”.

" Therefore, not only limited to authors, but also to “works” which are defined in s. 2 of the Copyright Act.


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" Moral rights are therefore applicable only to subject matter to which s. 3 rights apply. " This in turn relates to “every original literary, dramatic, musical and artistic work” that qualifies for

protection under s. 5. " “Neighbouring rights” should not be protected by moral rights.

! More on parody on pp 396.


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PART II: TRADEMARK LAW

CHAPTER 11: A NOTE ON UNFAIR COMPETITION

Mogul Steamship Co. v. McGregor, Gow & Co.

! 1889 case that said there was no ability for the court to shoot down “unfair” activity: " Couldn’t draw a one between fair and unfair, reasonable and unreasonable.

Moorgate Tobacco Co. Ltd. v. Philip Morris Ltd.

! Three meanings of the term “unfair competition”: " A synonym for the tort of passing off, " A generic name covering a range of causes of action available to a trader against various behaviours

of competitors, " The name of a new general cause of action to protect against “unfair” activity of a competitor causing

damage.

International News Service v. Associated Press

! US SC protected the plaintiff’s exclusive right to report news of WWI to the American public. ! Without permission the defendant had presented info to its subscribers as news collected by its own

means when it had in fact been reported first by the plaintiff and copied by the defendant. ! Defendant’s behaviour was classified as an unauthorised interference with the plaintiff’s business

precisely at the point where profit was to be made.

! Trade-‐marks Act " s. 7 No person shall… (e) do any other act or adopt any other business practice contrary to honest

industrial or commercial usage in Canada. ! Above was found to be ultra vires of the federal government in MacDonald v. Vapour Canada Ltd. and

hasn’t been reinstated exactly. ! We are therefore left with the second meaning of unfair competition from Moorgate Tobacco Co.

Ltd. above.


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CHAPTER 12: PASSING OFF

INTRODUCTION

THE COMMON LAW TORT

Perry v. Truefitt

! First modern statement of the tort. ! A man is not to sell his own goods under the pretence that they are the goods of another man; he cannot

be permitted to practise such a deception, nor to use the means which contribute to that end. ! He cannot therefore be allowed to use names, marks, letters, or other indicia, by which he may induce

purchasers to believe that they goods which he is selling are the manufacture of another person. ! Though the word deception is used, the tort requires no mental element on the defendant’s part.

" May occur in innocence.

Walker v. Alley

! One of the earliest Canadian cases. ! Granted an injunction against the defendants use of a sign of a golden lion in front of his store. ! Not the exact same, but similar enough so as to cause confusion.

A.G. Spalding & Bros. v. A.W. Gamage Ltd.

! Basis of the tort is a false representation by the defendant, must be proved in each case as a fact that the false representation was made.

! Common case is where the representation is implied in the use or imitation of the mark, trade name, or get-‐up with which the goods of another are associated in the minds of the public, or of a particular class of the public.

! Tort is based firmly on misrepresentation by the defendant about what itself is providing to consumers. " Normally the defendant is passing off the plaintiff’s goods as its own. " In this case, defendant is passing off plaintiff’s shoddy goods as though they were the plaintiff’s

superior goods. ! Can come down to damage to goodwill.

" Hurt the business in lost sales, lost future sales, loss of reputation. ! Five Prong Test for Passing Off:

" 5 Characteristics which must be present in order to create a valid cause of action: # A misrepresentation # Made by a trader in the course of trade # To prospective customers of his or ultimate consumers of goods or services supplied by him # Which is calculated to injure the business or goodwill of another trader (in the sense that this is a

reasonably foreseeable consequence) # Which causes actual damage to a business or goodwill of the trader by whom the action is

brought or (in a quia timet action) will probably do so.


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Reckett & Colman Products Ltd. v. Borden Inc.

! Case of alleged source confusion by the defendant’s proposed use of a similar get-‐up for their product package.

! Three elements the plaintiff must prove in order to succeed: " Must establish a goodwill or reputation attached to the goods or services which he supplies in the

mind of the purchasing public by association with the “get-‐up” such that the “get-‐up” is recognised by the public as distinctive specifically to the plaintiff.

" Must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that foods or services are the plaintiff’s.

" Must demonstrate that he suffers or, in a quia timet action, that he is likely to suffer damage by reason of the erroneous belief engendered by the defendant’s misrepresentation that the source of the defendant’s goods or services is the same as the source of those offered by the plaintiff.

Cadbury Schweppes Pty. Ltd. v. Pub Squash Co. Pty. Ltd.

! Plaintiff had a line of drinks, defendant was imitative, and cut into sales, but at no time actually tried to pass off or misrepresent itself or its product.

THE STATUTORY TORT

! Relevant provisions: ! Trade-‐marks Act, s. 7 No person shall …

" (b) direct public attention to his wares, services or business in such a way as to cause or be likely to cause confusion in Canada at the time he commenced so to direct attention to them, between his wares, services or business and the wares, services or business of another;

" (c) pass off other wares or services as and for those ordered or requested. " (d) make use, in association with wares or services, of any description that is false in a material

respect and likely to mislead the public as to: # (i) the character, quality, quantity or composition, # (ii) the geographical origin, or # (iii) the mode of manufacture, production or performance of the wares or services.

Asbjorn Horgard A/S v. Gibbs/Nortac Industries Ltd.

! Upheld the validity of s. 7(b), parliament has chosen to protect the goodwill associated with trademarks. ! Rounds out the statutory scheme of protection of all trade marks, the civil remedy which it provides in

conjunction with s. 53 has a rational functional connection to the kind of trade marks scheme Parliament envisaged, in which even unregistered trade marks would be protected from harmful misrepresentations.


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ELEMENTS OF PASSING OFF: REPUTATION

PROTECTABLE GOODWILL

SHARED GOODWILL

Erven Warnink

! Plaintiff was one of a number of traders dealing in advocaat in the UK. ! Defendant’s version, also called advocaat, was not made according to the true recipe.

" Made with wine not spirits. ! Judge held that defendant couldn’t use the name because it wasn’t by definition advocaat.

" This misrepresentation would harm the goodwill of any trader dealing in the true substance by directing custom.

! Confusion was not between different sources for the same wares, but between the different types of wares called, inaccurately, by the same name.

! Known as “extended passing off”.

Institut National des Appellations d’Origine des Vins et Eaux-‐de-‐Vie et al. v. Andres Wines Ltd. et al.

! Plaintiff is a national organisation established by French law. ! Duty is to regulate the areas and conditions of production and sale of wines and spirits bearing controlled

appellations of origin. ! Defendants are companies duly incorporated in Canada selling wines under various names, some of

which include the word “champagne”, in particular “Canadian Champagne”. ! Facts:

" Not all producers in the champagne region are allowed to use the name, but those who are permitted share equally in the benefits derived from the good will.

! Canadian law allows the use of the word champagne as long as there is no misrepresentation to the public.

Dairy Bureau of Canada v. Annable Foods Ltd.

! Defendant had marketed a drink that replicated whole milk, but with less fat. ! Contained fresh milk and skin milk powder and was homogenized. ! Marketed as Homolite 1% low fat drink, as it couldn’t be called milk. ! Tried to sue for the use of the term “homo”. ! Not a name of a product, but a process, could be used for other products like peanut butter, etc. ! Plaintiffs found to not have a case for likely confusion, given the efforts the defendant made to

differentiates its product in the marketplace.


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FOREIGN GOODWILL

COMMON LAW

Orkin Exterminating Co. Inc. v. Pestco Co. of Canada Ltd. et al.

! Orkin was well-‐known and established company in the US, no business in Canada. ! Pestco used Orkin’s name in telephone directories, and would say they were Orkin when they showed up

to work but did business under the name Pestco. ! Held that it was passing off.

" Goodwill is basically reputation -‐ if you have reputation, you have goodwill, regardless of whether there is a business presence there.

" Generally where there is such confusion (in defendant’s jurisdiction), there is goodwill. " Defendant had knowingly misrepresented itself, presume confusion.

! Was there actual damage? " Loss of control of exploitation rights, there was clear evidence that Orkin intended to commence

business in ON, although intent was not an absolute element.

STATUTE

Enterprise Rent-‐A-‐Car Co. v. Singer

! American plaintiff that had operated in the US for a long period of time. ! Defendant, upon hearing of plaintiff’s intention to enter into Canadian market, changed name to

Enterprise from Discount. ! Orkin was heavily relied on. ! Many Canadians that had used Enterprise in the US, had a 1-‐800 number that Canadians could use. ! No finding of advertising “spillover” from the US to Canada. ! Defendant argued that to use s. 7(b), must show that the trade mark was known in Canada under s. 5. ! Court found that no compliance with s. 5 required when s. 7(b) is in action as in Asbjorn. ! Ruling was affirmed, found that s. 7(b) requires nothing different than the common law as regards

foreign reputation.

NON-‐COMMERCIAL GOODWILL

Polsinelli v. Marzilli

! Trudeau liberal case -‐ Liberal party seeks injection against candidate who is not affiliated with the party and promotes himself to be a Trudeau Liberal.

! The injunction was denied, passing off does not extend to matters other than commercial trade or property. " Additionally, the court was reluctant to inject itself into the election process.

! Doesn’t work in purely personal matters. " Du Boulay v. Du Boulay -‐ can’t prevent someone from assuming a family name. " Day v. Brownrigg -‐ can’t prevent someone from calling their house the same name.


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INDICIA

GENERAL PROOF OF DISTINCTIVENESS

Oxford Pendaflex Canada Ltd. v. Korr Marketing Ltd.

! General proof of distinctiveness ! Defendant copied same tray as plaintiff, using lighter material.

" Plaintiff alleges passing off. " Whether the shape of an item (desk tray) indicated a “single source”, i.e. that it was distinctive. " Court held that the shape of the tray was not unique enough to show a single source, it was simply a

tray in the shape of a tray that every supplier had. " Held, essential to “distinctiveness” is that the product acquired a secondary meaning; none of the

suppliers had made any of the trays distinctive.

Ray Plastics Ltd. et al. v. Dustbane Products Ltd.

! Plaintiff manufacturer of “Snow Trooper” snowbrush/ice scraper/squeegee all-‐in-‐one. ! Appearance was uncommon and enjoyed very successful sales. ! Defendant produced one that was nearly identical. ! “Element of reputation” … whether get-‐up or distinguishing guise has a secondary meaning. ! “As to distinctiveness, the rules is that the more distinctive a product, the more easy one can establish

reputation.” " Snow Trooper was very distinctive, lots of sales and advertising.

! Court found intentional copying. ! When something is intentionally copied, there is a presumption that the product has a secondary

meaning, i.e. a reputation.

Robinson v. Bogle -‐ the Belleville College Case

! Defendant used the name of plaintiff that was colloquially used but not its official name. ! Held that public use of a name has never been held to attach the designation to the business.

" ie not grounds for distinctiveness.

SECONDARY MEANING

DESCRIPTIVENESS

Reddaway (Frank) & Co., Ltd. v. George Banham & Co., Ltd. -‐ (the Camel Hair case)

! The descriptive term “came hair belting” became, over time, to be understood by the public as goods manufactured by the plaintiff.

! “Camel hair belting” gained a secondary meaning that the goods originated with the plaintiff alone. ! A descriptive word can be distinctive because it shows origin.


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GENERICNESS

Grand Hotel Company of Caledonia Springs, Ltd. v. Wilson

! Caledonia Springs Water -‐ bottled water, another supplier comes to nearby springs and also sells Caledonia Spring Water.

! Held that it was okay so long as there is no link with first supplier -‐ can distinguish products through drawings and other indicia.

GET-‐UP – PACKAGING, PREMISES

Reckitt & Colman Products Ltd. v. Borden Inc.

! HoL moves away from 5 part test. ! Jif lemon shaped container containing lemon juice; defendant puts out similar product in lemon shaped

container. ! Held the lemon shows origin, it has a secondary meaning , like in the camel hair belting case, that the

goods originate solely with the plaintiff manufacturer. ! The lemon-‐shaped containers indicate not just lemon juice, but Jif lemon juice. ! The labels on the neck of the bottle and the insignia were not enough to distinguish the two products

because “the essence of the action for passing off is a deceit practiced upon the public and it can be no answer, in a case where it is demonstrable that the public has been or will be deceived, that they would not have been if they had been more careful, more literate or more perspicacious.” " The public is essentially buying it from a shelf, and they will look at the plastic lemon shape and not

the small label.

GET-‐UP -‐ WARES

Eli Lilly and Co. v. Novopharm Ltd.

! Contra to Ciba-‐Giegy ! Survey evidence did not support “claim of association between the capsule colours being the same and

capsule source being the same, very little evidence of an association between Prozac name and the actual colours of the Prozac capsule, and very little evidence of an association between the capsule colours green and pale yellow and the Prozac name.”

! The defendant chose to use the same capsule colours as the plaintiffs, and they do so for a marketing reason but that reason is to identify the medicine as one that is therapeutically equivalent to the defendant’s product, not to represent to the public that their products are the plaintiffs. " Misrepresentation can exist without an intention to misrepresent. " However, as noted above in this case not only was there no intention to misrepresent, but the capsule

appearance does not in fact play such a role. ! Plaintiffs did not prove that the capsule appearance was a distinguishing feature of its product. ! Also likelihood of confusion? No evidence of actual confusion.

" Patients generally don’t care what brand they use. " They know that generics are used, and can easily find out according to label on vail if they are

concerned.


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RANGE OF INDICIA

VERBAL

! Words may be generic or descriptive, but if secondary meaning is found in the words, they are protectable, albeit weakly.

! Coined words or arbitrary choices result in strong marks. ! Examples:

" Office Cleaning Services Ltd. v. Westminster Office Cleaning Association was not actionable. " Personal names can be: J&A McMillan Ltd. v. McMillan Press Ltd. " Assumed names as well: Landa v. Greenberg, where “Aunt Naomi” was protected as a name for a kids’

column. " Stag names too: Hines v. Winnick where “Dr. Crock and His Crackpots” was protectable. " Letters or numbers: HQ Networks Systems Inc. v. HQ Office Supplies Warehouse Inc.

# Joseph v. Lee “501 Video” protected against “501 Arcade”. # Pizza Pizza Ltd. v. 528635 Ontario Inc. where 1111 was part of a delivery phone number.

VISUAL

! All manner of get-‐up may acquire secondary meaning: " labels, devices, pictures, premises, shapes of wares, and so on. " Colour combinations may have trademark status, as in Visa International Service Association v. Visa

Motel Corp. # Visa credit financing colours were found to have trademark status.

" Doubtful one colour could qualify for trademark protection because of the “exhaustion of colours” theory in Dumont Vins & Spritueux Inc. v. Celliers du Monde Inc.

FICTIONAL CHARACTER

! These are more conceptual marks. ! Shaw Brothers (Hong Kong) Ltd. v. Golden Harvest (HK) Ltd. producer of a martial arts film series had a

specific character, defendant tried to feature the same character with name, accoutrements, costume and distinctive sounds.

LOSS OF REPUTATION

ABANDONMENT

Ad-‐Lib Club Limited v. Granville

" Plaintiff sought interlocutory injunction against the defendant for allegedly passing off its discotheque night club.

" If defendant was able to open club with that name, good will from previous club would be gone for good.

" No other reason to pick that name, no evidence filed. " Injunction granted.


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BECOMING GENERIC


! Lawsuit over the use of the word “champagne”. ! Defendants claim that over the years the word has become generic. ! Companies from Champagne have had a part in diluting the word, marketing Brazilian and Argentinean

wines as champagne in those countries. ! Champagne in the dictionary is frequently referred to as “effervescent wine”, sometimes from

Champagne or elsewhere. ! Court, however, says that despite the considerable onslaught, the word has resisted the pull and in their

opinion, it has not yet fallen into complete generic use. " Now has a secondary meaning, has become “semi-‐generic."

ELEMENTS OF PASSING OFF: MISREPRESENTATION

PROOF OF MISREPRESENTATION

FACTORS


! The elements of the common law tort of passing off are” " Reputation or goodwill in the product " A misrepresentation leading to or capable of leading to deception " That such misrepresentation is likely to lead to damage to that goodwill or reputation.

! As said in Spalding & Bros. v. Gamage Ltd. " The basis of a passing off action being a false representation by the defendant, it must be proved in

each case as a fact that the false representation was made. The more common case is, where the representation is implied in the use of a mark, trade name, or get-‐up. In such cases the point to be decided is whether the defendant’s use of such mark, name or get-‐up is calculated to deceive.

! Person buying “Spanish Champagne” would not think it was a wine produced in France, but what he may very well think is that he is buying the genuine article, real Champagne. " This is the sort of deception the judge had in mind in the British Sherry case.

! Detailed consideration left the court to conclude that Canadian champagne was a distinct Canadian product not likely to be confused with French champagne.

! “Canadian” was in same size, etc., as “Champagne”, marketed in different areas of the stores, listed differently on menus, etc.

COMMON FIELD OF ACTIVITY

McCulloch v. Lewis A. May (Produce Distributors) Ltd.

! Plaintiff was a popular radio broadcaster of a children’s show.


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" Also made recordings, public appearances, and wrote children’s books, all under the pseudonym “Uncle Mac”.

! Defendant started selling “Uncle Mac’s Puffed Wheat”, breakfast cereal aimed at the children’s market with references on the packages to characteristics of “Uncle Mac”.

! Passing-‐off case failed.

Krouse v. Chrysler Canada Ltd.

! Plaintiff was professional football player, sued Chrysler because they had used a recognizable photo of him on its advertising device, “the Spotter”.

! No one would have thought he made it. ! Wasn’t in competition with anything the plaintiff would have been selling.

Young v. Scot Young Ltd.

! “Passing off is limited to the case of competition and this is not such a case.” ! Plaintiff was a well-‐known writer/broadcaster in Toronto and the defendant was a window-‐cleaning

service.

! Statute ! s. 7(b) of the Trade-‐marks Act does not require the plaintiff and defendant to be involved in a common

commercial field. ! Factor of importance, but no rule that passing off demands a common field of activity. ! Krouse and Young both dealt with personality, or publicity rights of celebrities. ! Now covered under legislation and the development of the tort of appropriation of personality.

THE TEST PERSON

Ciba-‐Geigy Canada Ltd. v. Apotex Inc. & Ciba-‐Geigy Canada Ltd. v. Novopharm Ltd.

! Case involves determining, in the context of a passing-‐off action, who the customers of pharmaceutical laboratories manufacturing prescription drugs. " Do those customers consist only of physicians, dentist and pharmacists or are the patients to whom

the drugs are dispensed also included? ! “The person chiefly concerned is the competitor affected by the unfair act”, frequently in fact the

first party affected by the practice or aware of it. " However, “it should never be overlooked that unfair competition cases are affected with a public

interest.” " So that “the purchasing public may to be enticed into buying A’s product when it wants B’s product.” " “The power of the court in such cases is exercised, not only to do individual justice, but to safeguard

the interests of the public.” ! “Who is to be confused?”

" Court first mentions the ordinary customer: “you must deal with the ordinary man and woman who would take ordinary care in purchasing what goods they require and, if desiring a particular brand, would take ordinary precautions too see that they get it.”

" “Ordinary precautions” will depend on the product they are buying -‐ more careful for luxury product than for a super market product.


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" Court doesn’t like Lord Diplock’s “ultimate consumer” in Erven Warnink as confusion must be avoided in the minds of all customers, direct or indirect.

" Says it is the public that needs to be confused: a manufacturer that wishes to succeed in a passing off action must usually show that its product has acquired a secondary meaning with its customers, the public, and that the competing product is likely to create a risk of confusion in the public mind.”

" At end of judgment, court says well-‐established rule that the final consumer of a product must be taken into account in determining whether the tort of passing off has been committed.

! Links patient’s right to choose what brand of drug they take as a reason to include them as the “who is to be confused”. " To exclude them “from the passing off action on the pretext that they have no choice as to the

product is quite wrong.

Mr. Submarine Ltd. v. Emma Foods Ltd.

! The standard of confusion: “not that a person fully familiar with the detailed operations of the plaintiff and therefore capable of at once distinguishing those of the defendant from those of the plaintiff but rather that of a person who has a vague recollection of understanding of the business product of the plaintiff.”

TYPES OF MISREPRESENTATION

SOURCE OR QUALITY

Consumers Distributing Co. v. Seiko Time Canada Ltd.

! Whether a Seiko watch had an international warranty and sold by authorised distributor. ! Once parallel importer made a statement that it was not an authorized distributor and thus had no

warranty, and that you are not getting any more than just a watch. ! Courts said once that disclaimer was made, there was no confusion because purchase knew that was all

they were getting. ! Use of disclaimer can negate misrepresentation. ! It still may be a taking, but passing off does not depend on misappropriation.

Disney Case

! “Fantasyland” in West Edmonton Mall held to be passing off. ! Confusion? Yes, even with very low confusion of ~5%. ! Court said there was confusion by utilizing as a measure of confusion (content of confusion) that the

public thought Disney had “authorised or consented” to the name use; note this deviates from the stricter standard in Mr. Submarine, where the object or contact of confusion being that of ownership (i.e. source) of the product or business.

! Seems to move close to appropriation/taking. ! Damage question -‐ no actual damages but court said unjust enrichment in finding passing off. ! Also loss of control over the mark/indicia in defendant’s jurisdiction as a head of damage (see Orkin). ! Goodwill -‐ no business activity required, may only be extra-‐territorial reputation. ! Presume confusion if goodwill (reputation) and misrepresentation are established. ! Very close to misappropriation.


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ELEMENTS OF PASSING OFF: DAMAGE

GENERALLY

! Clear that actual damage need not have been suffered before the plaintiff may sue; rather, it is the likelihood of damage resulting from the defendant’s misrepresentation that supports the action.

! Proof of damage is always part of the plaintiff’s legal onus, the evidentiary burden may quickly move tot he defendant.

! From The Noshery: “probability of damage may also be taken as equivalent in these cases to probability of deception.”

! If the public is probably being deceived then there is probably damage, even though no actual damage can be proven.

! In practical terms, proof of likelihood of damage is helped by proof of actual confusion or by proof of the defendant’s intention to pass off, although neither is conclusive.

HEADS OF DAMAGE

DIRECT LOSS OF TRADE

! Most commonly argued sort of damage; because of the defendant’s misrepresentation, consumers do not deal with the plaintiff as they otherwise would.

DAMAGE TO REPUTE

! Likely where the product or service that the defendant provides is inferior to the plaintiff’s product or service.

! Consumers will be unlikely to deal further with the plaintiff or to recommend the plaintiff to others.

HARMFUL ASSOCIATION

! Plaintiff and defendant not in competition with one another, the misrepresentation may be that there is some commercial association between them.

! If defendant’s business is carried on poorly, or is a type of business disdained by the plaintiff or held in low regard by the public, there may be a loss to the plaintiff’s good name.

Annabel’s (Berkely Square) Ltd. v. Schock

! Defendant ran an escort service under the name Annabel’s, found that the mere association of the two businesses was found to be damaging to the plaintiff.

LOSS OF LICENSING OR FRANCHISING OPPORTUNITY

! Not harmful because of the defendant’s disreputable conduct or business buy may have a negative impact on the plaintiff’s aspirations.


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House of Faces Inc. v. Leblanc

! Court found passing off where the defendant copied almost exactly the plaintiff’s cosmetic products, name, get-‐up, and method of doing business.

! Defendant’s business would be an impediment for the plaintiff in arranging new shopping mall leases.

INABILITY TO EXPAND

! While the plaintiff and defendant are not direct competitors, the plaintiff can argue that they may be precluded from entering the marketplace in the area of the defendant’s activity.

! This may be the geographic area, as in Orkin, or the type of business where that is not common to the parties.

DILUTION

Harrods Ltd. v. Harrodian School Ltd.

! Harrods was a famous department store. ! Judge explains that just because an act would be an infringement under the Trademarks Act if the mark

were registered, this did not mean that there had been passing off. " “It is well settled that (unless registered as a trademark) no one has a monopoly in his brand name or

get-‐up, however familiar these may be.” " It is the goodwill that is important.

! “Harrodian” does not mean Harrod’s, as a Churchillian speech is not one of Churchill’s speeches. ! Couldn’t establish any real likelihood of confusion or damage to their goodwill.

DEFENCES

UNCLEAN HANDS

Brewster Transport Company, Ltd. v. Rocky Mountain Tours and Transport Company, Ltd.

! Both the plaintiff and defendant had headquarters in Banff, AB. ! Plaintiff alleged that it had been carrying on the business of motor passenger transportation under the

name of Royal Blue Line in AB. ! Defendant started up business in AB, had been doing business under that same name elsewhere for a

number of years. ! SCC refused injunction.

" Plaintiffs did not come to the court with clean hands, and it did not matter that the defendants, as an American company, might not originally have had a cause of action against the plaintiffs' own imitation.

" This case out to be of general application in passing-‐off cases where a claimant with reputation fails solely on the technical ground that he has no relevant goodwill.

USE OF ONE’S OWN NAME

! It is a defence to passing off that the defendant is merely using his or her own name.


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! The theory is that the law should not interfere with a person’s natural right to own-‐name trading, even at the cost of inevitable confusion.

! There are, however, many qualifications to this proposition that the defence may be doubted to exist at all -‐ very narrow.

The Hurlburt Company v. The Hurlburt Shoe Company

! “The law is quite clear that no man can acquire a monopoly of his own surname in such a way as to prevent another person of the same name honestly using that name in connection with his goods or his business.”

Biba Group Ltd. v. Biba Boutique

! Defendant claimed to have used her nickname for her business. ! Court said whatever the rights may be in respect of the use of a surname, it does not appear that those

authorities go to the question of the use of a first name, let alone a nickname.

Mario’s Spaghetti House & Pizzeria Ltd. v. Italian Village Ltd.

! Interlocutory injunction against the defendant’s use of “Mario Place” for a nearby restaurant, even though the proprietor was the Mario of the plaintiff’s Mario’s restaurant, who had sold out three months earlier to set up on his own.

“HONESTLY USING”

! In this one aspect, the intention of the defendant is crucial. ! If the court discerns a strategy to cause deception, the own-‐name defence fails.

Hunt’s Ltd. v. Hunt

! The defendant, a brother of the plaintiff’s founder, was judged to be clearly mala fide in entering the same business using the same name in the same script and advertising as “Hunt’s new store”.

CONCURRENT OR PRIOR USE

J. & A. McMillan Ltd. v. McMillan Press Ltd.

! Plaintiff was incorporated with the same name, business was office supplies and printing services. ! Later, defendant was incorporated, and the printing aspect was sold to it. ! Occupied same building, no separation between them. ! Later, plaintiff moved across street, old sign was still left up, and new sign across the street was put up. ! New printing company leased the spot in original building, then eventually left.

" Defendant then bought it out, changed the sign to say “McMillan” with “McMillan Press Ltd.” in small letters underneath.

! There was substantial, actual, confusion, but passing-‐off failed. ! “McMillan” was as much a part of the defendant’s goodwill as the plaintiff’s.


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Fraser Taxi Ltd. v. Reid

! Plaintiff sought an injunction against the defendant’s use of the name. ! Defendant had used the name, but as a sham, to obtain a second phone line when that was difficult to do. ! Although he may have operated with the name in some regard, it was done illegally. ! Permanent injunction was granted.

DISCLAIMERS

! If a defendant disclaims any tie to the plaintiff’s goods, services, or business, it could be said that this is a factor in assessing likelihood of confusion.

Associated Newspapers Group v. Insert Media Ltd.

! Defendant proposed a scheme whereby it would arrange for news agents to insert advertising material concerning the defendant’s clients into various newspapers without the authority or consent of those newspapers.

! Defendant was prepared to include disclaimer on the inserts. ! The disclaimer was held to be inappropriate because it was unlikely to come to the notice of customers,

but likely to add to the confusion if it did.

Home Shoppe Ltd. v. National Development Ltd.

! Held that there was no likelihood of confusion between the plaintiff’s Gut Buster and the defendant’s Gut Trimmer.

! Both were sold through television promotion, but there were obvious differences in the way in which they were demonstrated and a remarkable difference in price.

! Clear indications of source appeared in the commercials of both products. ! Court also found a sufficient notice by the defendant in the TV advertisements disclaiming any identity

with the plaintiff or its product.


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CHAPTER 13: REGISTERED TRADEMARKS

INTRODUCTION

DEVELOPMENT

! The tort of passing off, which represents the common law of trademarks, is troubled by some inefficiencies.

! The legislation is not a replacement for common law rights, but exists as an alternative regime.

DEFINITION OF TRADEMARK

! Act defines trademark as: a) a mark that is used by a person for the purpose of distinguishing or so as to distinguish wares or

services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others,

b) a certification mark, c) a distinguishing guise, or d) a proposed trade-‐mark

! Visual perceptibility seems to be key as in ICBC v. Registrar of Trade Marks " In obiter, stated that a mark is not defined in the act, but that in common parlance however a mark is

a device, stamp, label, brand, inscription, a written character or the like.

Playboy Enterprises Inc. v. Germain

! Stated that a mark must be something that can be represented visually … that can be seen.

CENTRAL CONCEPTS

! The regime of registered trademarks is built o the law of unregistered trademarks, or passing off, and shares certain notions with it: use, confusion, and distinctiveness.

USE

! s. 4 is a crucial part of the Act and is set out for reference. " 4(1) Trademark is deemed to be used in association with wares if it is marked on the wares

themselves, or the package in which they’re sold. " 4(2) Deemed to be used in association with services if it is use or displayed in the performance or

advertising of those services. " 4(3) A mark that is marked in Canada on wares or on the packages in which they are contained is,

when the wares are exported from Canada, deemed to be used in Canada in association with those wares.

CONFUSION

! In passing off, the concept of confusion governs liability.


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! Misrepresentation that is likely to cause confusion of a relevant sort must be proved. ! Confusing is defined in s. 2 when the term, as applied, is a use that “would cause confusion in the manner

and circumstances described in s. 6”. ! s. 6 says that if the use of a mark causes confusion with another in the same area, or would be likely to,

even if they aren’t of the same class.

DISTINCTIVENESS

! The very essence of trademarks, registered or not, for acquisition and maintenance of rights. ! May be earned though the use in the marketplace, or it could be inherent. ! A trademark that does not distinguish, or is not adapted to distinguish, or is not used for the purpose of

distinguishing, or has lost its distinctiveness is not a trademark.

ASSIGNMENT AND LICENSING OF TRADEMARKS

! At common law, ownership of a mark could not be transferred apart from the goodwill with which it was associated.

! Trademarks themselves were not regarded as property. " In the 1952-‐53 revision of the act, s. 48 was introduced to change that.

# Whether registered or not, is transferable either with or without the goodwill of the business. ! System was eased with 1993 revision, s. 50.

" Makes the licensing of use of a trademark much easier, ownership stays with the holder of the trademark.

UNFAIR COMPETITION AND PROHIBITED MARKS

! Trade Marks Act started out as Unfair Competition Act of 1932 due to Canada’s international duties as a member of the Paris Union.

! Unfair Competition: s. 7 " 7(a) -‐ injurious falsehood " 7(b) and (c) -‐ deal with tort of passing off " 7(d) -‐ deals with false or misleading descriptions likely to deceive the public

! Prohibited Marks: s. 9 " Precludes someone from capitalizing on any well-‐known respected public symbol and adopting it for

his or her own wares or services. " Absolutely prohibited

# s 9(1) contains a long list of matters that may not be adopted in connection with a business and also prohibits adoption of marks so nearly resembling them as to be mistaken for them, like national flags, coats of arms, Red Cross, etc., portrait or signature of a living individual or one dead less than thirty years, etc.

" Conditionally prohibited # Not absolute but depends on whether they have been the subject of public notice given by the

registrar of trademarks. • Arms, crest or flag of Canada, a province, or municipal corporation.

! Further Prohibitions: ss. 10 and 11


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" Also prohibited are marks described in s. 10 that “by ordinary and bona fide commercial usage, become recognised in Canada as designating the kind, quality, quantity, destination, value, place of origin or date of production of any wares or services.”

" s. 10.1 prohibits the adoption or use as a trademark, in association with another plant variety of the same species, of a denomination designating a plant variety under the Plant Breeders’ Rights Act.

PROTECTED GEOGRAPHICAL INDICATIONS

! s. 11.11 to 11.2 concern geographical indications for wines or spirits. ! Exceptions are made for some Canadian usages, customary names, and generic terms. ! Also a provision for amendment to and removal from the list.

THE REGISTRATION PROCESS

! Application to register a trademark is made tot he Registrar’s Office in the appropriate form under s. 30 and must include “a statement in ordinary commercial terms of the specific wares or services in association with which the mark has been or is proposed to be used.”

REGISTRABILITY

ORDINARY TRADEMARKS

BARRIERS TO REGISTRATION

! s. 12(1) Summary: a) word primarily merely a surname. (Standard Oil) b) written or phonetically descriptive or deceptively misdescriptive in English or French. (Orange

Maison) c) the name of any language of the wares or services in connection with which it is used or proposed to

be used d) “confusing" with a registered trademark. (s. 2 -‐ 6) e) prohibited mark under s. 9 or 10

A) NAMES OR SURNAMES

" s. 12(1) Subject to s. 13, a trade-‐mark is registrable if it is not # a word that is primarily merely the name or the surname of an individual who is living or has

died within the preceding 30 years.

Standard Oil Co. v. Registrar of Trade Marks

! FIOR (fluid iron ore reduction) ! A surname in telephone directories, but is it “primarily merely” a surname?

" No > therefore registrable. ! For purposes of the Trade Mark Act there are three classes of words:

" Dictionary words, names, invented words. ! “Merely” -‐ FIOR is not merely surname of living person because it has existence as an invented word.


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! “Primarily” -‐ a reasonable person in Canada in English or French would equally as likely identify FIOR as a brand or mark of some kind or a surname, so not primarily.

B) DESCRIPTIVENESS

! s. 12(1) " (b) whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive in

the English or French language of the character or quality of the wares or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin.

Drackett Co. of Canada Ltd. v. American Home Products Corp.

! s. 12(1)(b) -‐ Once-‐a-‐week to be used in association with a floor cleaner. ! Clear that there was no prior use so can’t be saved under s. 12(2). ! The test that a trademark is clearly descriptive is one of first impression.

" “clearly” in s. 12(1)(b) means “easy to understand, self-‐evident, plain”. " “character” means “feature, trait or characteristic of the product”. " ONCE-‐A-‐WEEK implies that the product is to be used weekly; it points to a “character” of the product. " Held to be not registrable.

Home Juice Co. v. Orange Maison Ltée

! s. 12(1)(b) “English or French” -‐ which dictionary to use? ! Only Canadian or elsewhere? ! Orange Maison had no French meaning in QC, but in French Dictionary in France it meant hoe made, good

quality orange juice. ! Held that you must consider international vocabulary, not just Canadian.

C) GENERICNESS

! 12(1) " (c) the name in any language of any of the wares or services in connection with which it is used or

proposed to be used.

Wool Bureau of Canada Ltd. v. Bruck Mills Ltd.

! WOLAINE was not the name in English or French, plaintiffs thought it sounded like woollen, word was actually a contraction of “wool” and “laine”, found that it was not the phonetic equivalent of the word “woollen”.

Brûlerie Des Monts Inc. v. 3002462 Canada Inc.

! Found that the phrase “La Brûlerie” (meaning the place where coffee is roasted) was declared invalid as unregistrable.

! In the dictionary, couldn’t take word from public domain for exclusive use.


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D) CONFUSION WITH REGISTERED TRADEMARKS

! 12(1) " (d) confusing with a registered trade-‐mark.

! Confusing defined in s. 6 ! Use defined in s. 4.

United Artists Corp. v. Pink Panther Beauty Corp.

! Opposition proceeding to proposed trademark. ! Confusing with a registered trademark, but fame is not in s. 6. ! Pink Panther beauty salon is defendant.

" Key factor is that they’re very different services/wares (movies v. beauty salon). ! The test is confusion, now how famous/established the trademark is.

" In this case, no confusion. ! Just because it is a famous mark, doesn’t mean there is a presumption of confusion.

" (Contra to Disney and Orkin in common law passing off). ! Issue was not how well known the mark was, but whether there was a likelihood of confusion in the mind

of the average consumer between the respondent’s mark and the appellant’s proposed mark with respect to the goods and services provided.

Mattel, Inc. v. 3894207 Canada, Inc.

! Opposition proceeding. ! Barbie doll v. Barbie Restaurant Services, no confusion found.

Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée

" Infringement claim, rather than opposition proceeding, so burden of proof lies with the holder of the registered trademark to prove likelihood of confusion.

" Different in the spelling (lack of a “c”) was not significant. " Even if you allowed broadening of usage of Clicquot to encompass fine products, you can’t say there

is going to be confusion with a mid-‐range supplier of apparel (confusion). " Says can’t look at s. 6, but maybe to s. 22 dilution.

S. 22 -‐ ALTERNATIVE REMEDY TO CONFUSION

! (s. 20 infringement -‐ confusion): dilution (or depreciation of goodwill). " (1) No person shall use a trade mark registered by another person in a manner that is likely to have

the effect of depreciating the value of the goodwill attaching thereto. " Steps:

# Use (s. 4) # Goodwill attached # Mental association between the mark and the use of by the defendant (like causation for

damage). # Likelihood of depreciation (damage).

" Depreciation can be tarnishment or blurring (death by 1000 cuts). " This test is just short of misappropriation.


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# No requirement to show that use of the marks in the same geographic area could cause confusion.

EXCEPTIONS

A) ACQUIRED DISTINCTIVENESS

! s. 12(2) the barriers to registration in ss. 12(1)(a) and (b) may be overcome by proving that the trademark “has been so used in Canada by the applicant or his predecessor in title as to have become distinctive at the date of filing an application for its registration.”

! s. 12(2) cannot be used to avoid any of the other prohibitions on registration in s. 12(1). ! s. 18(2) is a companion to s. 12(2).

" A ground of invalidity of registered trademarks is that they were not registrable at the date of registration, as provided in s. 18(1)(a).

" However, s. 18(2) states that if a trademark had, through use, “become distinctive at the date of registration”, its validity cannot be challenged simply because evidence of that earned distinctiveness had not been put before the decision maker prior to the grant of registration. # Therefore, acquired distinctiveness may be proved at the time of application if s. 12(1)(a) or (b)

is raised by the registrar or an opponent, or later, should the issues of validity depend on registrability.

" Home Juice case is an example of s. 18(2) rescuing a clearly descriptive trademark.

B) MARKS REGISTERED ABROAD: S. 14

! s. 14(1) provides that, notwithstanding s. 12, a mark is registrable in Canada if the applicant or predecessor in title had caused it to be duly registered in the applicant “country of origin”. " Can’t be confusing with a registered trademark, contrary to morality or public order, or deceptive to

the public, or prohibited by ss. 9 or 10. " Also can’t be, by s. 14(1)(b), be “without distinctive character, having reared to all the circumstances

of the case including the length of time during which it has been used in any country”.

C) ASSOCIATED MARKS: S. 15

" s. 15(1) Notwithstanding ss. 12 or 14, confusing trademarks are registrable if the applicant is the owner of all such trade-‐marks, which shall be known as associated trademarks.

D) DISCLAIMER: S. 35

! s. 35 states: " The Registrar may require an applicant for registration of a trademark to disclaim the right to the

excessive use apart from the trademark of such portion of the trademark as is not independently registrable, but the disclaimer does not prejudice or affect the applicant’s right then existing or thereafter arising in the disclaimed matter, nor does the disclaimer prejudice or affect the applicant’s right to registration on a subsequent application if the disclaimed matter has then become distinctive of the applicant’s wares or services.


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Canadian Jewish Review Ltd. v. Registrar of Trade Marks

! Application was for the mark THE CANADIAN JEWISH REVIEW. " Words were in a script form suggestive of Hebraic letterpress.

! Descriptive under s. 12(1)(b). ! All the words were disclaimed, nonetheless, the mark was refused. ! After a disclaimer, there must be something remaining that is capable of distinctiveness.

" The design portion was intrinsic to the words and could not be dissociated from them the design was merely an embellishment of the letters.

Cooper v. Mark’s Work Wearhouse Ltd.

! A disclaimer of the name DAN COOPER for clothing was a recognition of the barrier of s. 12(1)(a). ! There was separate design matter sufficient to allow the mark as a whole to be registered.

DISTINGUISHING GUISE: S. 13

! In s. 2, the definition of trademark includes “distinguishing guise” as a kind of trademark. " (a) a shaping of wares or their containers, or " (b) a mode of wrapping or pack again wares " the appearance of which is used by a person for the purpose of distinguishing or so as to distinguish

wares or services manufacturers, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others.

! Under s. 13, distinguishing guises have their own specific requirements for registrability: " 13(1) A distinguishing guise is registrable only if

# (a) it has been so used in Canada by the applicant or his predecessor in title as to have become distinctive at the date of filing an application for its registration; and

# (b) the exclusive use by the applicant of the distinguishing guise in association with the wares or services with which it has been used is not likely unreasonably to limit the development of any art or industry.

! The applicant must produce evidence to the registrar under s. 32(1) showing the extent and time of use in Canada, and by s. 32(2) the registrar must restrict the registration tot he wares or services and to the territorial area of Canada where distinctiveness has been demonstrated. " Cannot be based on proposed use.

Dominion Lock Co. Ltd. and Independent Lock Co. v. Schlage Lock Co.

! Two key companies, wares for one filed as “original keys for door locks”. ! After application was filed, ruled as distinguished guise under s. 2 (g) of the Act. ! Held that the trademark was not distinctive when it was filed, and it is not registrable for the further

reason that it does not meet the test of s. 13(1)(b). " Many key blanks had been sold to public in the same/similar shape. " Schlage argued that they were different, originals to the public and blanks to locksmiths, but that was

not a realistic distinction.

CERTIFICATION MARKS: S. 23

! Definition of trademark in s. 2 includes “certification mark” as a kind of trademark.


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" a mark that is used for the purpose of distinguishing or so as to distinguish wares or services that are of a defined standard with respect to # (a) the character or quality of the wares or services, # (b) the working conditions under which the wares have been produced or the services

performed, # (c) the class of persons by whom the wares have been produced or the services performed,

" from wares or services that are not of that defined standard. ! Under s. 23(1) a certification mark may be registered only by someone not engaged int eh actual

provision of the wares or services with which the mark is associated. " Under (2) the registered owner license others to use the mark if they meet the defined standard. " s. 30(f) the applicant for a certification mark must include in the application “particulars of the

defined standard” and a statement that the applicant is not engaged in the provision of the relevant wares or services.

! The owner of a certification mark may under s. 23(3) take action against unauthorised uses.

Documents

Bullock - LAW 347 - Reading Notes