Emerging and Ongoing

Canadian Copyright
Issues: Entertainment
Industries Summit
Barry B. Sookman
October 22, 2009
bsookman@mccarthy.ca

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Pre-amble
• to create clear, predictable and fair
rules to support creativity and
innovation;
• to address opportunities and
challenges that are global in scope
for the creation and use of works;
• to adopt coordinated approaches to
copyright protection based on
internationally recognized norms;
• to enhance copyright protection by
adopting the norms set out in the
WCT and WPPT;
• to provide rights holders with
recognition, remuneration and the
ability to assert their rights;
2
• to enhance users’ access to
copyright works or other
subject-matter;
• to enhance the protection of
copyright through the
recognition of technological
measures and other measures,
in a manner that promotes
culture and innovation,
competition and investment in
the Canadian economy; and
• to bolster Canada’s ability to
participate in a knowledge
economy driven by innovation
and network connectivity
fostered by encouraging the use
of digital technologies for
research and education.
 3
Implementation Objectives
• Copyright reform should not be regarded as a “zero
sum game”.
• The Bill should reflect the stated objectives.
• The new rights and exceptions should be clearly
drafted.
• Bill should follow international best practices. Is a
"made-in-Canada" approach appropriate and
consistent with the Government’s objectives?
 4

New Rights for Copyright Holders

WIPO IMPLEMENTATION
(making available, distribution right, TPMs)

Making Available Right
Objective: “New rights and
protections are required if
rights holders are to better
reach new markets, adapt
their business models and
combat infringement. The
government considers a
‘making available’ right and
legal protection for TMs
essential.” Government
Backgrounder
5
•The proposed amendments only
apply to sound recordings and
performer’s performances. It
does not apply to works. (s.
2.4(1)(a) not amended as in Bill
C-60.)
•Owners of sound recordings
must file a tariff to be eligible to
enforce the making available
right (s.67.1(4) and the
communication right is a right to
receive equitable remuneration.
Is this appropriate to address
online file sharing?
•Is overlapping rights
appropriate?
 6

Distribution Right
Objective: A "distribution right" •The Act is intended to be
would allow creators, and technologically neutral? Does the
performers and producers of amendment meet this test?
works, to control the distribution of
tangible copies of copyright works. •Should it include offers to
This right provides control over the
initial entry of the product into the distribute?
marketplace, such as in the first
sale of a book or CD. Government •Is the amendment consistent
Backgrounder with international standards?
Right applies to “a work that can
be put into circulation as a tangible
object, to sell or otherwise transfer
ownership of the tangible object,
as long as the ownership of that
tangible object has never
previously been transferred with
the authorization of the author in
or outside Canada”. s.3(j).
Circumvention of Technological 7

Measures
Objective: “In a digital environment, reproductions are
easily made and disseminated. Copyright regimes
must provide rights holders with the ability to seek
remuneration from uses of their works and to
authorize uses that serve their interests. TMs are a
mechanism to achieve this important copyright
objective. The bill would make it illegal to circumvent
or bypass technologies that control access to
protected material. It would also become illegal to
provide, market or import tools designed to enable
circumvention.”
Government Backgrounder
 8

Summary of TPM Provisions

Country Act of Act of Circumvention Circumvention Tools- Criminal Sanctions
Circumvention- Circumvention- Tools- Access Copyright Control
Access Control Copyright Control Control Technological
Technological Technological Technological Measure
Measure Measure Measure

United States Prohibited (§ 1201 Not prohibited (by Prohibited (§ 1201(a) Prohibited (§ 1201(b)) §1204
(a)(1)) DMCA) (2))

EU Copyright Prohibited (Art. 6(3); Prohibited (Art. 6(3); Prohibited (Art. 6(3); Prohibited (Art. 6(3), Remedies must be
Directive Art. 6(1)) Art. 6(1)) Art. 6(2)) Art. 6(2)) “effective,
proportionate and
dissuasive”. (Art.8)

Canada Prohibited Not Prohibited Prohibited Prohibited Criminal sanctions

• Bill C-61 brings Canada in line with the WIPO Treaties and our trading partners’ laws. Some
technical amendments needed.
 9

Accessorial and Joint

Liability
Accessorial and Joint Liability
“When a widely shared service or product is used
to commit infringement, it may be impossible to
enforce rights in the protected work effectively
against all direct infringers, the only practical
alternative being to go against the distributor of
the copying device for secondary liability on a
theory of contributory or vicarious infringement.”

-U.S. Supreme Court, MGM Studios v. Grokster

Accessorial and Joint Liability
• A developed theory of joint or contributory liability
exists and has proven effective against Internet
piracy services in civil and common-law countries
such as the United States, France, Finland,
Sweden, Norway, Germany, Spain, the
Netherlands, Denmark, Australia, and South Korea.
• Australia copyright amendment to authorization
right has been successfully employed against piracy
threats. See Universal Music Australia Pty Ltd v
Sharman License Holdings Ltd [2005] FCA 1242
(5 September 2005) and Universal Music Pty Ltd. v
Cooper [2005] F.C.A. 972 (Aust. F.C.)
• Need for Canadian amendments?
 12

New Exceptions

EDUCATIONAL EXCEPTIONS
(Distance learning, Digital reproductions, PAM, ILL)
Works Available Through the 13

Internet (PAM)
Objective: “The bill contains several provisions
to address concerns from educators and
researchers about reasonable access by…
allowing schools to use publicly available
material that has been legitimately posted on
the Internet by rights holders without an
expectation of compensation.”
Government Backgrounder
Works Available Through the 14

Internet (PAM) (cont’d)

• It is not an infringement for anyone in •Is the exception
the educational process to do any of necessary?
the following acts for educational or •Should it be as broad as it
training purposes in respect of a work is e.g. applies to all works
that is available through the Internet: including books,
a) reproduce it; newspapers, databases,
music, movies, games,
b) communicate it to the public by computer programs,
telecommunication, if websites.
that public primarily consists of •Acts are not limited to any
students of the educational “fair” dealing.
institution or other persons acting
under its authority; or
c) perform it in public, if that public
primarily consists of students of
the educational institution or
other persons acting under its
authority. s.30.04(1)
 15
The Exception Does Not Apply

•If the work or Internet site is protected •What is a clearly visible

by an access control TPM (s.30.04(3)). notice?
•If a clearly visible notice — and not •Does the exception comply
merely the copyright symbol — prohibiting with Canada’s treaty
that act is posted at the Internet site commitments (e.g. Berne)?
where the work is posted or on the work
•What is the requisite amount
itself (s.30.04(4)).
of knowledge?
•If the educational institution knows or
•Extra-territorial implications?
should have known that the work was
made available through the Internet
without the consent of the copyright
owner (s.30.04(5))
•Attribution is required.
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New Exceptions

ISPS AND OTHER INTERNET

INTERMEDIARIES
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Exemption for ISPs as Intermediaries

Objective: “The government is of the view that those

who post infringing material should be liable for
copyright infringement and not those who enable
access to, and use of, the Internet. Thus, to the
extent that ISPs are only intermediaries that enable
or facilitate connectivity, the bill clarifies that they
are not liable. By providing this legal clarity for ISPs,
this approach will continue to encourage the growth
of Internet services in Canada”
Government FAQ
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According to IsoHunt
“…..proper and correct just because they want to sue us,
illustrates the importance of ISP safe harbor provisions in
the new bill C-61 for the survival of whole classes of
internet websites and search engines. “ Gary Fung,
Founder & CEO, isoHunt, www.isohunt.com

“isoHunt is a search engine of BitTorrent sites, and our

sister sites are indices of direct user contributed .torrent
links.” Gary Fung, IsoHunt.com forums, September 8,
2008
The Network Services Exception (s. 31.1(1))
According to the Government, this
provision is intended to provide
protection for ISPs who act only as
intermediaries with a safe harbour to
the extent that they enable Internet
connectivity or facilitate
communication between users. See
Government FAQs, Q14, June 12,
2008; Backgrounder Reforming the
Copyright Act June 12, 2008
Bill C-61 s.31.1(1): “A person who,
in providing services related to the
operation of the Internet or another
digital network, provides any means
for the telecommunication or the
reproduction of a work or other
subject-matter through the Internet
or that other network does not,
solely by reason of providing those
means, infringe copyright in that
work or other subject-matter.”
•The proposed exception is not limited to ISPs or to the
activities of enabling or facilitating connectivity to the
Internet.
•There is also nothing in the Section that limits it ambit to
true “conduit” intermediaries whose role is merely to transmit
data on behalf of third persons without knowledge or control
over what is transmitted.
•It would apply to any person who provides “services related
to the operation of the Internet or another digital network”
and who “provides any means for the telecommunication or
the reproduction of a work or other subject-matter through
the Internet”.
•A person that supplies one or more components of a file
share service such as an operator of a BitTorrent site could
arguably claim immunity under the currently worded network
services exception.
The Hosting Services Exception (s. 31.1(4))
According to the Government, this provision is
intended to provide an exception from
infringement for ISPs that host websites for
subscribers. See Government of Canada Fact
Sheet Internet Service Providers: Copyright
Liability (June 2008).
(4) Subject to subsection (5), a person who, for
the purpose of allowing the telecommunication of
a work or other subject-matter through the
Internet or another digital network, provides
digital memory in which another person stores
the work or other subject-matter does not, by
virtue of that act alone, infringe copyright in the
work or other subject-matter.
(5) Subsection (4) does not apply in respect of a
work or other subject-matter if the person
providing the digital memory knows of a decision
of a court of competent jurisdiction to the effect
that the person who has stored the work or other
subject-matter in the digital memory infringes
copyright by making the copy of the work or
other subject-matter that is stored or by the way
in which he or she uses the work or other
subject-matter.
•The proposed exception is not limited to
ISPs or to Internet intermediaries that host
websites at the request of subscribers.
•The exception applies to any person who
provides other entities with digital memory
for the purpose “of allowing the
telecommunication of a work or other
subject-matter through the Internet or
another digital network.”
•The exception could immunize any entity
that makes available any type of networked
connected server or online site (a digital
memory) for third parties to store and make
available infringing files for file sharing
purposes, e.g. Usenet, Bulletin Boards,
Websites, UGC sites.
•The exception applies even if the host has
actual knowledge of infringement, unless
there is a court order.
The Information Location Tool Exception(s.
41.27(1))
According to the Government, this provision is
intended to clarify that information location tools,
such as search engines (Google, Yahoo, etc.)
would not be liable to pay damages for
reproductions made in the course of providing
such tools, unless they ignore a notice requesting
the removal of alleged infringing material.
Government FAQs, Q14, June 12, 2008;
Backgrounder Reforming the Copyright Act June
12, 2008
41.27(1) In any proceedings for infringement of
copyright, the owner of the copyright in a work
or other subject-matter is not entitled, against a
provider of an information location tool who
makes a reproduction of the work or other
subject-matter or communicates that
reproduction to the public by telecommunication,
to any remedy other than an injunction.
(3) In this section, “information location tool”
means any tool that makes it possible to locate
information that is available through the Internet
or another digital network.
(2) Subsection (1) applies only if the provider, in
respect of the work or other subject-matter,
(a) makes and caches the reproduction in an
automated manner for the purpose of providing the
information location tool;
(b) communicates that reproduction to the public by
telecommunication for the purpose of providing the
information that has been located by the
information location tool;
(c) does not modify the reproduction;
(d) complies with any conditions relating to the
making or caching of reproductions of the work or
other subject-matter, or to the communication of
the reproduction to the public by
telecommunication, that were established by
whoever made the work or other subject-matter
available through the Internet or another digital
network and that lend themselves to automated
reading and execution;
(e) does not interfere with the lawful use of
technology to obtain data on the use of the work or
other subject-matter; and
(f) has not received a notice of claimed
infringement relating to the work or other subject-
matter that complies with subsection 41.25(2).
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The Information Location Tool Exception (s. 41.27(1))

• The proposed exception would apply to any entity “that makes it possible to
locate information that is available through the Internet or another digital
network.”
• The exception would permit caching, making of reproductions, and
communications to the public with virtually no restrictions to the fairness or
incidental nature of such activities.
• Simply being a provider of some searching or indexing capability would enable
that person to create a database of copyrighted materials and transmit them
to the public.
• As drafted, the exception could be used as a safe harbour for pirate services
that are currently the subject of litigation by content owners around the world.
The exception could apply to p2p file-sharing services, BitTorrent sites and
software providers that enable individuals to locate and obtain copies of
infringing files.
• It would also enable website operators to automatically make and cache copies
of third party content, provide an indexing and search capability to locate
desired files, and to transmit those files to members of the public.
• The exception is not limited to innocent intermediaries.
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New Exceptions

CHANGES TO STATUTORY
DAMAGES
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Statutory Damage Limits

• A defendant who is an individual is liable • Very close to
for statutory damages of $500 in respect compulsory
of all the defendant’s infringements that license in effect?
were done for the defendant’s private
purposes and that are involved in the • Could it impact
proceedings. s.38.1(1.1). damages
available against
• If a copyright owner has made an election individuals?
in respect of such a defendant, no other
copyright owner may elect statutory
damages in respect of that defendant for
the defendant’s infringements that were
done for the defendant’s private purposes
before the institution of the proceedings in
which the election was made.
 Emerging and Ongoing
Canadian Copyright
Issues: Entertainment
Industries Summit
Barry B. Sookman
October 22, 2009
bsookman@mccarthy.ca

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