Mark Towle is the owner of which produces unlicensed replicas of the Batmobiles from the 1966 TV series and 1989 movie. Towle made two claims in defense to the copyright action: first, the Batmobiles appearing in the 1966 TV series and 1989 film were not entitled to copyright protection; and, second, DC Comics did not own the copyright to the Batmobile that appeared��in the show and movie.

Judge Ikuta, who wrote the opinion, stated��that the Batmobile contains consistent, identifiable character traits worthy of copyright protection, similar to that of a sentient character. She also found that DC Comics never surrendered their underlying rights when licensing derivative works of the Batmobile. Although a fair judgment may have been reached in this specific situation, Towle's application to other cases offers a low threshold for sufficient character delineation and may result in copyright protection where none is warranted.

Is the Batmobile entitled to Copyright Protection?

In order to attract copyright protection, a character must be “”��and contain��consistent and recognizable characteristics. DC Comics must show that the Batmobile is sufficiently delineated to be recognizable whenever and wherever it appears. Relying on the��2008 decision in��, the court distinguished physical appearance from attributes and traits. Towle correctly pointed out that there are several physical differences between the 1966 Batmobile, 1989 Batmobile, and the iterations in the comic books, positing that these differences are enough to declare the car insufficiently delineated.�� However, the court rejected this line of argument, and stated that it is enough that the Batmobile always maintains consistent attributes and traits, including��interactive features, bat-like design, and high-tech weaponry that help��Batman fight crime.

The court used spurious examples from other films to show how consistent traits are sufficient for this stage of the test. Judge Ikuta, for example, stated that “Godzilla is always a prehistoric, fire-breathing, gigantic dinosaur alive in the modern world”. However, the two most recent Godzilla films have shown this to be untrue. ��is a member of a species of massive, prehistoric amphibious reptile that feeds off radiation. Technically, Godzilla does not breathe fire, but atomic breath, gained from exposure to the atomic bomb that mutated him.�� is a mutated lizard, specifically a marine iguana.

Similarly, Halicki decided that “Eleanor”, a car that appeared in both the and of Gone is 60 Seconds, is��entitled to copyright protection. The court ruled it warranted protection after considering Eleanor’s persistent attributes like the��name--“Eleanor”--and its difficulty to steal. The court was silent on��the distinct variation in colour and model of the car between films.

Another example drawn on by the decision-makers in Towle was the 2011 case of , where the Eighth Circuit stated that “the presence of distinctive qualities apart from visual appearance can diminish or even negate the need for consistent visual appearance [emphasis added].” The character��must be sufficiently delineated to be recognizable . It would be interesting to see how the Court would have ruled if Towle had copied the Batmobile (referred to as the ) in the recent Dark Knight Trilogy. Here, the "bat-like design" emphasized by the court as a delineating attribute of the Batmobile is absent. The Tumbler looks more like a cross between a Lamborghini and tank than the "bat-like" vehicle depicted in the DC comics. The Tumbler is recognizable as the Batmobile solely because Batman is driving it. It is true that the Batmobile consistently��contains high-tech weaponry and helps fight crime, but so do James Bond’s cars. This would suggest that the "Batmobile" name in combination with its innate characteristics plays an important role in its delineation; however, this is not explicitly stated in the judgment.

It is unclear how many attributes or traits, and in what combination, suffice to justify protection. This stage of the test relies heavily on the intuition of the judiciary to set a threshold, resulting in uncertainty as to what constitutes sufficient delineation.

Does DC Comics own the Copyright to the Batmobile appearing in the 1966 TV series and 1989 movie?

After the Court established the copyrightability of the��Batmobile as a��character, it turned its collective mind to whether Towle’s replicas infringed DC’s copyright. Towle claimed that the Batmobile appearing in the 1966 TV series and 1989 movie productions are not what is depicted in DC’s comic books. In the 1990 case��, the court��stated that when the owner of a copyright protected work authorizes a third party to prepare a derivative work, the owner of the underlying copyright retains copyright in that derivative work with respect to all elements that the derivative creator relied upon. The derivative creator holds a copyright in non-trivial contributions to the original work. This makes the absence of a comparison between DC's underlying work and Towle's replicas very troubling. Towle willingly admitted to copying the derivatives; but, it is not the derivative producers that are claiming copyright infringement, it is DC Comics. Therefore, Towle's replicas should be compared to the elements of the underlying DC comics which were relied upon by the derivative creators.

Final Thoughts

Although the derivative Batmobiles copied by Towles are not the spitting images of those found in the DC comics, they were not distinct enough to deny DC ownership of the underlying work. However, it's doubtful whether the decision will consistently��lead to just results��when applied to future cases. The decision admirably attempted to clarify the��copyrightability of characters. But the court��missed the mark on��a robust definition of “sufficiently delineated”. The examples provided within the judgment suggest that the court is putting too much emphasis on consistent underlying traits and not enough on physical similarity when it comes to determining if objects are characters worthy of copyright protection. When objects are permitted to change in physical appearance but maintain copyright protection because they have consistent traits, protection is essentially being afforded to the "name" of the object and not the object itself. I think it is very likely that this application will lead to protection for characters, specifically objects, that are not sufficiently delineated to warrant copyright protection. On a positive note, the decision is clear in that non-sentient characters, even ones that do not communicate are copyrightable.

I would love to hear your thoughts on this decision. Do you share my concerns?

Justin Philpott is an IPilogue Editor and a JD candidate at Osgoode Hall Law School.

The post Batmobile Declared a Character Deserving of Copyright Protection, Finally Invincible appeared first on IPOsgoode.

After two exciting and lively debates on the principle of technological neutrality (see Sebastian Beck-Watt’s coverage ) and reproduction rights (see Paul Blizzard’s coverage ), IP Osgoode’s Unpack��SODRAC symposium turned to a new panel to ‘unpack’ the paragraphs of [SODRAC] concerning the mandatory (or not) nature of tariffs set by the Copyright Board.

The fresh panel was asked to tackle the issue of whether the majority decision of SODRAC dispelled the notion—coined by Ariel Katz as the “”—that once the Copyright Board approves a tariff, any unauthorized use of a work triggers legal obligations to pay the royalties specified in the tariff and comply with the terms and conditions. The majority judgment’s alleged ‘debunking’ is found in paragraphs [101]-[13]. At paragraph [107] Justice Rothstein (for the majority) wrote: “In the absence of clear authority that this is Parliament’s intent, the burdens of a license should not be imposed on a user who does not consent to be bound by its terms” and, at [112] he concluded “that the statutory licensing scheme does not contemplate that licences fixed by the Board pursuant to [of the Copyright Act (the “Act”)] should have a mandatory binding effect against users [emphasis added].”

This issue was posed to the panel—comprised of Katz ( Intellectual Property Professor), Mario Bouchard (former General Counsel, ), Adriane Porcin ( Copyright Professor), Bobby Glushko (Head of the at University of Toronto), and Howard Knopf (Copyright Lawyer and )—in the form of the following questions: what are the potential implications for collective management organizations (CMOs), copyright users, and the copyright board?; and, more specifically (a major point of contention) does the reasoning of paragraphs [112]-[113] extend to other tariffs approved by the Copyright Board, and if so, does this “debunk” the so-called “mandatory tariff” theory?

Ariel Katz – The spectre is dismissed

Katz promptly asserted that Copyright Board issued tariffs are not mandatory. He focused on the language of of the Act, stating that even though a literal reading of s 68.2(1) appears to grant CMOs a right to collect royalties, it does not grant such a right. The provision reads:

68.2 (1) Without prejudice to any other remedies available to it, a collective society may, for the period specified in its approved tariff, collect the royalties specified in the tariff and, in default of their payment, recover them in a court of competent jurisdiction.

Katz examined the key phrase “default of their payment”, and reasoned that a collective may only collect royalties if the user owes a payment. Logically, Katz argued, if the user does not owe any payment they cannot be in default. As a result, a CMO’s right to collect only extends to a licensee, and not a user who falls outside the definition of the type of users to which the tariff applies.

Katz then argued that the holding was applicable to of the Act, since it is indistinct from s 70.2. He focused on the plain meaning of the word “tariff” and stated that if parliament wanted it to be mandatory, they would have called it a “Levy”.

As a joint intervener in the case with the Centre for Intellectual Property Policy, more of Katz’ argument can be found in his .

Mario Bouchard – Copyright Board-issued tariffs are mandatory

Bouchard followed Katz and began with a criticism of the way the issue was framed for the panel. He was concerned by the classification of s 70.2 licenses as tariffs. Bouchard dispelled this notion by explaining that s 70.2 licenses are not tariffs, they are regulations.

Turning to SODRAC, Bouchard argued in favour of the mandatory tariff theory. He reasoned that the SODRAC decision misapplied, misapprehended, and ignored copyright principles, principles of statutory interpretation, judicial precedents, legislative history, and the way foreign copyright values approach the regulation of collective societies. Concerning copyright principles, Bouchard stated that—well established by the —where permission is required, it is for the user to ask permission from the copyright owners, not the other way around. Asking rhetorically “are we to embrace Google’s approach to copyright: use first, ask forgiveness later”, he conceded that it may be an appealing instrumentalist approach, but Berne still legally controls.

Adriane Porcin – Do users need CMOs in a transactional world?

Porcin followed Bouchard and took a different approach to the issue, seeking not to conclude what the majority decision means. Rather, she examined the context in which the decision was made and inquired into the purpose of the tariff regime, mandatory or not. After detailing the “one size fits all” approach tariffs impose on users, she opined on the purpose of s 70.2 and CMOs in a transactional world where organizations (like CBC) are free to negotiate licensing terms with or without the assistance of the Copyright Board as arbitrator.

She presented four points on this topic: [1] different copyright collectives have different types of relationships with their members, depending on the nature of the work and industry in which the tariff functions, and so the ability to maneuver around s 70.2 depends on the rights granted to each CMO; [2] because some CMOs’ license valuations have disconnected from the utility of those licenses to the users, intervention of the Copyright Board is essential to ensure that users are not subjected to the CMO’s own price setting; [3] the Copyright Board is in a better position than CMOs to assess the fair market price, but the timing of valuations is an issue in fulfilling their role as market surrogate; and [4] CMOs’ evolving governance structures may alleviate the issue. On the last point, Porcin used Access Copyright as an example of a CMO that evolved by shrinking their number of directors and recruiting them based on their industry knowledge and skills. She explained this may be an encouraging step toward reducing the disconnected valuations between CMOs and users).

Bobby Glushko – The lack of clarity about tariffs is not user-friendly

Glushko—Head of Scholarly Communications and Copyright at University of Toronto—brought a unique user’s viewpoint to the panel. Glushko, whose role is to help his institution identify, evaluate and mitigate risk, focused on the uncertainty of this area of copyright law. He explained that in his case, the uncertainty over whether tariffs are mandatory or not—combined with the uncertain potential outcome of valuations involved in those tariff hearings—made his job particularly difficult.

Glushko further explained how the Principle of Technological Neutrality, in light of the SODRAC decision, only exacerbates the uncertainty in his position. It remained unclear what activities constitute copying, whether they are compensable, and what the value of those copies may be.

Howard Knopf – If you don’t like the bridge toll you can swim across

Knopf closed the panel and described why CMOs might see the SODRAC decision as bad for business: it expressed a clear message that, for users, tariffs are not mandatory. Knopf detailed the historical nature of a tariff, proffering an analogy to the old train tariffs from Toronto to Ottawa to regulate train companies, and suggesting that these were only mandatory it you took that particular train—you could ride a bus, plane, bike or hitchhike if they were cheaper, faster or better means to travel. His argument was that the SODRAC decision gives users leeway to choose “alternate means of transportation” by clearing rights for works they want to use through different mechanisms without running afoul of the Act. Bouchard spoke up in disagreement with this analogy, clarifying that users are free to use alternate repertoire (reinforcing the mandatory tariff theory).

Knopf conceded an earlier argument by Bouchard—that tariffs are in fact regulations—but tempered the concession by adding that parliament is capable of adding explicit provisions to make such tariffs mandatory. In the absence of such language, tariffs as regulations still need not be mandatory.

Conclusion

In light of the disagreement between the panelists on whether the mandatory tariff ‘Spectre’ had been debunked, the panel illuminated the difficulty presented by Glushko: ��If we cannot agree on the very nature of tariffs, it makes it difficult for both users and CMOs alike to predict the implications of �����ٸ鴡��’s decision. And, with CMOs acting as representation for authors (and owners), and users often being authors themselves, it is hard to find where the SODRAC majority decision falls with regard to the Act’s role as balancer of the public interest and obtaining a just reward for the creator. Does it tilt in favour of the public interest, giving more transactional freedom to users and authors, and accordingly encourage dissemination of new works? Or, does it inject more uncertainty and place greater barriers to the just reward of creators? One thing is certain: the issue made for a fascinating and passionate panel.

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Over the course of three days in early February 2016, IP Osgoode played host to the , a multidisciplinary and international event that resulted in a memorable proposal for an “Orphan Hunter.” While that may sound more like a discarded Stephen King draft than a solution to an important copyright issue, it is indicative of the creative and innovative thinking that drove the event.

I was lucky enough to have the opportunity to participate in the Hackathon, along with a number of other Osgoode students. Hosted by and the Copyright and International Trade Policy Branch of the Department of , the event brought together stakeholders from various fields and institutions, including: libraries, archives, and museums, the , the United Kingdom’s , and students from Osgoode Hall Law School and the . Our “Design Hosts” were IP Osgoode Founder & Director, Professor and Margaret Hagan of .

The event sought to take a approach to addressing the issue of works with unlocatable copyright owners (“orphan works”), which can currently be licensed to users by the Copyright Board of Canada, per section 77 of the . As such, much of the time was spent broken out into groups - made up of participants from various disciplines – which focused their attention on a hypothetical but specific user. The approach was something very unlike my usual experiences with law school and the law in general. Creativity was central to the process, and the legal perspective was only one among many to be considered.

The Process: Some Pretty Messy Creativity

My experience in my working group (one of half a dozen groups) really showcased for me the design-forward approach and its potential benefits in problem solving. Working with people from different stakeholder groups really makes you feel like a “beginner,” forcing you to consider their needs and concerns, which often place legal consideration well below others. Moreover, the focus on “failing quickly” kept us from getting bogged down in debates about why a solution would not work and instead encouraged brainstorming, creativity, and testing. While it was still frustrating to hear testers’ problems with a given prototype – usually barely cobbled together in time for the next “session” – you knew quickly if something worked or not, giving you a chance to leave it behind or fix it before having invested precious time and resources. It is easy to see why this approach has become popular in other disciplines (our computer engineer told me that Hackathons are regular occurrences in that sphere): solutions are responsive to the diversity of stakeholder needs and wants, it is easier to stray from traditional approaches, and little initial investment is required before an idea has been tested for feasibility.

The event also incorporated a group of very talented computer engineers from Lassonde. They were able to create highly successful mock-ups and prototypes that demonstrated the various group’s ideas, ranging from policy to practical applications. Our own group’s engineer was able to put together a visually striking and impressively functional website in mere hours. That process was impressive, and more importantly, I think, demonstrated the importance of technology and user-friendliness going forward in the legal realm. We have the technology and the people to do it; the legal profession and the justice system just need to embrace it.

The Results: One Question, Lots of Answers

The whole process was informed by presentations from representatives of the UK IPO and the United States Copyright Office (who joined us via Skype), giving us two very different models from which to draw inspiration. The UK launched an in October 2014, inspired by the pre-existing Canadian regime. While their system remains in beta, it allows for on-line applications for licenses for the use of orphan works (including for commercial purposes) for licensing fees set in advance. The Canadian approach predates this, and relies on the discretion of the Copyright Board to deal with applications for licensing (the applications must show that reasonable effort was made to locate the work’s copyright owner and that the owner is unlocatable). Neither the Canadian nor the UK system has been much used; while neither denies many licenses, few are applied for and fewer are issued.

It is easy to see why orphan works licensing requires modernization – the systems that exist are little used, and as my group-mates who work in the libraries, archives, and museums field noted, they are forced to sit on hundreds of thousands, if not millions, of works whose authors are unlocatable. While the Hackathon may not have produced a game-changing breakthrough, which is not what it was designed to do in the first place, it did produce a number of diverse and creative proposals to deal with some of the issues surrounding orphan works, which reflects the value and potential of the design process.

From insurance schemes (“F’It”) to search tools (“Annie”) to identifying marks (“OWL”), and of course the winning “Orphan Hunter” bounty concept, participants approached the theme of the event with enthusiasm, creativity, and a willingness to move beyond traditional models. I was lucky to have had the opportunity to take part and I am genuinely hopeful that the success of such events will encourage similar approaches within the law school and in the broader legal realm.

Sebastian Beck-Watt is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

The post Thinking Outside the (Legal) Box: IP Osgoode’s Orphan Works Licensing Portal Hackathon appeared first on IPOsgoode.

The event, held at the��Rosewater Supper Club, brought together academics, intellectual property lawyers, and industry professionals for dinner and discourse.��IP Osgoode's own moderated two��speakers: (partner of Borden Ladner Gervais LLP) and Richard Pfohl (General Counsel, , ).��The frank discussion comprehensively explored the major themes and driving factors of the background cases, along with��the merits of the arguments of every party and intervenor in CBC. Tackling��the vagueness of the principle of technological neutrality — as it was described��several times throughout the evening, a "ghost" of the SCC's��own making — was a recurring motif.

Professor D'Agostino

Professor D'Agostino's opening remarks laid out��the background of technological neutrality (humourously confessing��it has��become a favoured��subject for��her��law school exam questions). She identified��the definition of��the principle as set out by the SCC in ESA:��"different forms of media should be treated the same for copyright purposes, regardless of their level of technological sophistication." She succinctly outlined the��major��critical theme about the principle which��would punctuate��the rest of the evening: there is significant disagreement about what��the principle means and how it should apply.

Professor D'Agostino emphasized��to the room that��the principle was not new, having��existed��in other jurisdictions since 2001, including the US in��.��There, it was known��as the principle of media neutrality. (Tasini��was referred to and followed by the SCC in��.)

The introduction��concluded by accentuating��the principle's ambiguity��perceived��by the��Federal Court of Appeal in their decision: "...ESA, while restating the principle of technological neutrality in copyright law, provides no guidance as to how a court should apply that principle when faced with a copyright problem in which technological change is a material fact." Professor D'Agostino highlighted this flaw by citing Justice Rothstein's dissent in��ESA, where he suggested that "a principle should not override statutory rights in the Copyright Act."

Christina Pallotta

With the principle��described and defined, Pallotta launched into a detailed��overview of the background cases that led to its inception. She��began��with ��(a 1990 SCC decision case about incidental copies for a prerecording in a televised broadcast of a song) which affirmed��a��crucial��distinction between performances and recordings.��Bishop was quoted in��ESA and faced a similar quandary as��CBC: what is to be done when "the introduction of new technology present[s] a situation not contemplated by the drafters of the original Canadian Copyright Act"? The Court in Bishop��distinguished between recording and performing, but they also��underlined the��importance of��balancing needs of technology with��creators' rights.

Pallotta then outlined the driving factors behind the majority and dissenting opinions in��ESA. She noted��that the majority sought to balance the public interest and creator rights (as in��Bishop, and with more backing from��)��using predominantly��economic reasoning��to tip the scales. She��reinforced this methodology by referencing the majority's statement that "[t]he Internet is simply a technological taxi that delivers a durable copy of the same work to the end user."

Pallotta characterized the dissent as taking��a divergent��approach to the issue, with Parliamentary��intent superseding��economic reasoning. She first highlighted Rothstein J's dismissal of the majority's cab metaphor: "taxis need not give free rides." Rothstein J acknowledged the appeal of technologically neutral copyright law. However, Pallotta neatly summarized how his��reluctance to employ technological neutrality��follows a simple three-step argument: [1] copyright��is a creature of statute; [2] it is comprised of a bundle of independent statutory rights; and [3] courts must respect the language chosen by Parliament – not override it. Pallotta's unbiased juxtaposition of majority and dissent in ESA��made a strong case in favour of��applying Rothstein J's opinion.

Richard Pfohl

From there, Pfohl took over by leading the room through a history of CBC��v SODRAC.��He��started by outlining the Board's��, and followed with a concise��retelling of the FCA����under appeal (where they��admitted they did not know what to do with the principle in the first place due to the lack of guidance in ESA –��Pfohl called this a big "red flag"). He��finished by��dissecting every major��argument of the appellant, respondent, and nearly every intervenor in CBC��(, , ;��omitted were arguments from the��).��

After an exhaustive list��of CBC's objections to��SODRAC's incidental copy licencing (including:��“double-dipping”,��“royalty stacking”,��"triple-paying",��“gratuitous cost” and “chilling effect”), Pfohl explained how CBC wanted��the principle��to be applied, synthesizing from their : “broadcast-incidental copies do not engage the reproduction right”, the principle "creates implied license in �����ٸ鴡��’s synch license", and��“a technologically-neutral licence would attribute only nominal value to broadcast-incidental copies.”

SODRAC's ��to CBC's arguments��resembled Rothstein J's dissent in��ESA. Pfohl noted��how��SODRAC posited that there is in fact no layering or double-dipping (the acts in question in this case are not simultaneous, unlike in��ESA,��where a video game was��either downloaded or bought in person, but not both) and the court should not��upset Parliament’s balance: “neither the Board nor the Courts can 'balance' away a right that is provided by statute.”

As Pfohl moved through��the intervenors, it was clear they provided the Court with unique and compelling arguments. CMRRA on the importance of the fundamental divisibility of copyright (owners are entitled to divide and subdivide their exclusive rights) and��a consistent application of the which has always protected broadcast-incidental��copies. Music Canada��(a ��promoting this interests of numerous��companies engaged in all aspects of the recording��industry, and which Pfohl represents ) ��to reject Functional Equivalence as being inconsistent with the language, structure, and history of the Act.

CIPPIC's addressed a peripheral yet��pressing contemporary issue at stake in��CBC: what do we do with the practical reality that ephemeral copies are ubiquitous in digital technology (you likely��just made an ephemeral copy��of my blog post in your web cache – I'll take cash or cheque)?��CIPPIC suggests that��“fleeting, transient, impermanent” copies should not be protected, and those copies that are protected must be “durable”.

Regardless of how the��SCC��applies��statutory language to the facts and context of CBC's ephemeral copies, the threshold��issue raised by CIPPIC��appears more than��merely��trivial. The Court would be wise to address this concern irrespective of the ultimate holding of the case.

Conclusion

A brief round of comments followed, enthusiastically kicked off by counsel for CMRRA, Casey Chisick, who provided an astute��summation of the principle of technological neutrality. Chisick��analogized the criticism of the SCC majority's��ESA��principle as "wrestling with a ghost/monster of their own making, which creates an unpredictable situation."��Professor D'Agostino expanded on��this comment in her closing remarks, saying that this case has the opportunity to "play ghostbuster" as dissents can often become majorities.

Perhaps Rothstein J's dissent in ESA will provide a more consistent methodology for the Court to apply the Copyright Act, and a catalyst for Parliament to recognize the need to "future-proof" their legislation so technology does not��impede on creators' rights.

(The slides for the event may��be accessed .)

Jordan Fine is the IPilogue Content/Publication Editor��and a JD Candidate at Osgoode Hall Law School.

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As was discussed in the��IPilogue by Nicholas Arruda, Friday’s ruling stems from a�� ��filed by former UCLA basketball star Ed O’Bannon. O’Bannon and nineteen others sued the NCAA, claiming that the organization violated the ��because of its rules that prohibit student-athletes from receiving a share of the revenue earned by the NCAA and its schools from selling ��licenses to use the names, images, and likenesses of its athletes in footage like live game telecasts, commemorative DVDs, and video games. NCAA regulations only allow its players to receive money for attending school and through scholarships, arguing that their restrictions on compensation for student-athletes are necessary “to uphold its educational mission and to protect the popularity of collegiate sports.”

U.S. District Judge Claudia Wilken did not agree with the NCAA, and at the end of her ninety-nine page ��she issued an injunction prohibiting the NCAA from continuing on in its ways. Taking effect at the start of the next Bowl Subdivision Football and Division I Basketball recruiting cycle, student-athletes will now receive a share of the revenue generated from the use of their likenesses. The funds will be held in a trust until the student leaves school or is no longer able to compete. The injunction allows the NCAA to set a cap on how much they give to its athletes, however it does “prohibit the NCAA from setting a cap of less than five thousand dollars (in 2014 dollars) for every year that the student-athlete remains academically eligible to compete.” Schools also have the option to offer a lower amount, but only if the schools do not illegally conspire with each other when setting the number.

Those on team NCAA are not exactly happy with the loss, and have already reportedly����an intention to appeal the decision. Those on the opposite side of the court to O’Bannon ��that paying players and moving away from amateurism (where “players participate for the love of the game”) would cause a drop in the number of college sport spectators and would create an imbalance among schools and conferences. NCAA witnesses further contended that the education athletes receive is in fact payment for their services.

Several players however testified that they viewed being an athlete and not a student as their main job while at college.�� According to O’Bannon testified: “I was an athlete masquerading as a student...I was there strictly to play basketball. I did basically the minimum to make sure I kept my eligibility academically so I could continue to play.” Co-lead counsel for the plaintiffs Bill Isaacson to the media that he was pleased with the verdict, calling it a “major step towards decency for college athletes.” Furthermore, Rutgers law professor Michael Carrier, who specializes in antitrust and IP law, reportedly the outcome may not actually be that scary since payouts may not be huge and will only come to the athlete after their career is over.�� In a statement to USA Today, Carrier does however ��that the decision��is a huge loss for the NCAA because their prized defences of amateurism and competitive balance ��are no longer persuasive in the face of an argument of fairness. As O’Bannon reportedly :��“It is only fair that your own name, image and likeness belong to you, regardless of your definition of amateurism. Judge Wilken’s ruling ensures that basic principle shall apply to all participants in college athletics.”

So what now? In a very opinionated about the decision��CBS Sports’ senior college football columnist Dennis Dodd said that “a seal has been broken. Players can be paid, and we can’t turn back from here.” And since the ruling is limited to male football and basketball players surely the cause will also be taken up by female athletes and those in other sports. The future implications of the decision, from its impact on the structure of American college sports, the potential influence it will have on athletes in other jurisdictions, and to the financial consequences for major sport colleges, speaks to just how important IP law issues are in all realms, whether it be business, sport, or education. The fact is, you have a right to you - it does not matter if you work in an office tower or run drills in a gym. Your name, image, and likeness are yours and, as confirmed by Justice Wilken, they are not for someone else to benefit from for free.

Jaimie Franks is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

The post N-C-Double Don’t: Student-Athletes’ Likenesses No Longer Free for Use appeared first on IPOsgoode.

The CBC/Radio-Canada and its precursor – the Canadian Radio Broadcasting Commission (CRBC), established by – have been a part of the country’s cultural sphere since the early 1930s. Throughout , the CBC/Radio-Canada has been envisioned as a means of protecting Canada’s cultural sovereignty, in the face of American content to the South, while helping to establish domestic, Canadian media industries.

It has been over twenty years since the CBC/Radio-Canada’s mandate was updated by Parliament. The most recent states that the CBC/Radio-Canada “should provide radio and television services incorporating a wide range of programming that informs, enlightens and entertains” (3(1)(l)) and “contribute to shared national consciousness and identity” (3(1)(m.vi). In the intervening years, the CBC/Radio-Canada has increasingly moved into digital and Internet-based spheres in order to reach Canadians via the media of their choice.

The contemporary media and cultural environments must be adapted to in order to reach and connect Canadians from coast to coast to coast. CBC/Radio-Canada President and CEO describes the current situation as . Mr. Lacroix envisions the future of the CBC/Radio-Canada as (p. 1). With some creative thinking, the digital environments that the “A Space for All of Us” strategy seeks to capitalize upon can help foster these ‘public spaces’ and contribute to the stewardship and production of pluralistic forms of Canadian cultural identity.

In a recent , Canadian ex-pat Cory Doctorow argues that the CBC/Radio-Canada should look to the British Broadcasting Corporation’s (BBC) short-lived as a means of opening up the Corporation’s archive of publicly funded cultural goods to the people of Canada so that they can combine and create from these public resources. For Doctorow, “there's nothing more ‘digital first’ than ensuring that the most common online activities – copying, sharing, and remixing – are built into the nation's digital heritage”. The that Doctorow describes has recently been given legal credence through the (2012).

The Copyright Modernization Act provides legal circumstances where the creation of��. In particular, the use of these materials must be solely non-commercial in purpose, the source of the materials must be attributed (where possible), is not derived from already infringing materials, and must not have a “substantial adverse effect, financial or otherwise” on the existing rights holder and/or the existing work.

As a new part of legislation, the specifics of the “Non-Commercial User-Generated Content” provision (29.21) – or the – have yet to be tried and defined via the courts. However, as the country’s public broadcaster, the CBC/Radio-Canada could be on the vanguard of this emerging cultural space by providing its archival materials to the public for their digital use and repurposing. Allowing Canadians to access and ‘remix’ publicly funded cultural resources in new and innovative ways could help create a CBC/Radio-Canada ‘space for all of us’ that reflects the dynamism of Canadian culture.

Of course, establishing such an archive is no small task and the CBC/Radio-Canada will need to exert human and financial resources to make this a reality. As Drs. , , and state in , cultural works often entail the use of overlapping works – such as the music contained in a soundtrack to a television program – that are protected and governed by embedded intellectual property rights (p. 31). The CBC/Radio-Canada will, therefore, need to ensure that the works available in its archives do not run afoul of the legal rights of other creators and contributors. These processes require technological and human infrastructure that may strain the Corporation’s already .

However, by more clearly linking and contributing to the daily and cultural lives of Canadians as a source of digital cultural resources, the CBC/Radio-Canada will have yet another means of defending its Parliamentary appropriation. As , Assistant Professor at the University of Windsor, argues in in Dynamic Fair Dealing, “the CBC[/RadioCanada] has an institutional history of taking risks, innovating, and connecting with Canadians in new ways. … given its mandate, funding source, and history, the CBC[/RadioCanada] is well equipped to set the bar for Canadian broadcasting” (p. 96).

Somewhat insulated from the commercial pressures facing Canada’s private broadcasters, the CBC/Radio-Canada has the ability to be creative and innovative as the Corporation works to fulfill its mandate. Opening up the public broadcaster’s archive to Canadians as a source of cultural resources may be challenging. However, the opportunities to further contribute to the country’s cultural heritage and facilitate a dynamic cultural future for Canadians, as well as the Corporation itself, is a space that the CBC/Radio-Canada should work to create.

Joseph F. Turcotte is an IPilogue Editor, a PhD Candidate and SSHRC Doctoral Fellow in the Communication & Culture Program (Politics & Policy) at �첥��Ƶ, and a Nathanson Graduate Fellow at the Jack & Mae Nathanson Centre on Transnational Human Rights, Crime and Security at Osgoode Hall Law School.

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The Background to the Battle

According to the , Frank Petrella co-wrote a screenplay about boxer Jake LaMotta in 1963. When Frank Petrella passed away, renewal rights reverted to his heirs. Consequently, his daughter Paula renewed the copyright in 1991. However, LaMotta’s life had been put on film in 1980 in Martin Scorsese's Oscar-winning movie . In 1998 Petrella advised MGM that Raging Bull infringed her copyright, but did not sue until January 6, 2009. MGM argued in response that the equitable doctrine of laches��prevented Petrella from seeing through her lawsuit as her 18 year delay in filing the claim was unreasonable and prejudicial. The District Court and Ninth Circuit Court of Appeals agreed with MGM, but as we see here, the Supreme Court did not.

The Majority’s Strike

Justice Ginsburg delivered the of the Court, noting that of the Copyright Act provides that “[n]o civil action shall be maintained under the [Act] unless it is commenced within three years after the claim accrued.” The Court found that the equitable defence of laches could not be invoked to preclude an action brought within a federally prescribed limitation period. Therefore, since Petrella was not seeking relief for conduct that occurred outside the limitation period, and was only addressing acts of infringement occurring on or after January 6, 2009, the lower courts’ decisions to bar her suit on the basis of laches were overturned. Justice Ginsburg did, however, acknowledge that the doctrine and a plaintiff's delay in filing suit could still play a role in regards to equitable relief and when considering what an appropriate remedy may be.

The most powerful blow to the entertainment industry however was Justice Ginsburg’s ��that Petrella’s decision to hold off on suing MGM until the film made money was not a wrongdoing.�� Justice Ginsburg argued that “there is nothing untoward about waiting to see whether an infringer's exploitation undercuts the value of the copyrighted work, has no effect on the original work, or even complements it.” According to Justice Ginsburg, the limitation period allows a copyright owner to “defer suit until she can estimate whether litigation is worth the candle.” Essentially, knowing that your copyright has been infringed but waiting to see if the infringing work is profitable is not a reason to be barred from pursuing a claim - no matter how many years ago the infringement occurred.

The Dissenters Enter the Ring

For the ��judges, Justice Ginsburg’s decision “disables federal courts” from dealing with the unfairness that can arise in the “unjust hardship” created on a party by another that “unreasonably delays [filing] a suit.” Such hardships could include situations where a claim is made for a film released so far in the past that witnesses and evidence that could be crucial to a defendant’s ability to prove their case are no longer around.

In my opinion, the dissent's discussion of section , which is recognized by the majority as a tool to ensure fairness in awarding damages, was very convincing. ��§504(b) only allows a plaintiff to recover profits attributed to the infringement in question, and only those profits less “deductible expenses incurred in generating those profits.” However, the dissent rightly notes that fairness is not guaranteed. A plaintiff’s purposeful delay could mean that by the time a claim is filed the defendant may have recovered the majority of his or her expenses. Thus, a defendant that has devoted years to producing a work can lose their future profit stream to the plaintiff who waited in the shadows for the work to move out of the red, the plaintiff who will make more now than they would have had royalties and a licence been negotiated at the onset.

The Aftermath

Petrella is not just a bold statement about the doctrine of laches, but also greatly impacts the entertainment industry as it functions today. Movie studios, for example, will always be wondering if the film they put out twenty years ago may be subject to a lawsuit tomorrow. This may not be a bad thing however. According to lawyer :��“Now [studios] are going to have to be more vigilant, search their titles more, communicate more with copyright holders.” Copyright holders in turn will have to be more aware of the practices of studios, looking out for revivals of past forgotten works. The expectation for both sides of the copyright battle to do their due diligence in the creation of future works is in my opinion a happy consequence.

It is not yet clear how the decision may impact pending copyright infringement concerns for works already in existence. Commentators have discussed what the ruling might mean for the current infringement claim against�� Led Zepplin relating to their song��“”, and whether Stan Lee Media Inc. may be able to assert ownership over ��- a claim that has been dismissed in the past as “time-barred”. Lawyer believes that, “We can expect a flood of new lawsuits based on purported infringement of films, television programs, music and other copyrighted materials that were created decades ago but are still exploited today.” A statement all so true in this era of revivals and re-releases (exactly how many Spidermans have there been?)

Concluding Thoughts

I think it is a positive consequence of the ruling that both large studios and individual creators alike will now have an increased level of accountability when it comes to being aware of each other’s actions when releasing new works. ��However, with no way to shut out old claims, organizations may find themselves digging through files in an attic in order to defend against lawsuits for works possibly released before the company’s lawyers were born. In a way, there will be no sense of finality or completeness in the entertainment industry if creative works are forever vulnerable to lawsuit. What’s immortalized through film or script or song will essentially also live forever in the eyes of the law.

Jaimie Franks is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

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True, Canada's recently enacted exception for 'Non-commercial User-Generated Content' ( Copyright Act) allows dissemination of derivative works yet admonishes that:

[T]he use of, or the authorization to disseminate, the new work or other subject-matter is done solely for non-commercial purposes.

However, as Teresa Scassa notes in her chapter “” in , section 29.21(1)(a) does not stop disseminators from capitalizing on the creative output by fans.

Furthermore, according to the recent annual release by the International Federation of the Phonographic Industry (IFPI) of their , UGC fan music videos are generating more money for the copyright owning recording industry than official music videos.^[1] This can in part be explained by the increased interest in the works by growth of the fan base not as passive consumers but rather by actively engaging with the copyright protected works. Allowing the audience to feel as though they can contribute by participating in the creative process is a powerful tool that a few large industries have only recently caught on to. Moreover, the more popular a work (even a derivative one) becomes, either via pay-per-click or page views, the more income generating ad revenue is earned. More ads viewed equates to greater revenue for the advertisers and hence greater justification for those companies to want to continue to purchase more online ad space on the intermediary’s website. Some intermediaries that have become known for their vast dissemination of UGC works have established these profit sharing incentives regarding works that bring in a lot of internet traffic, especially for those that go viral.

According to the IFPI report “YouTube is the biggest single access point to music for consumers internationally, with one billion users worldwide”.^[2] On YouTube, Google searches for videos which incorporate copyright protected songs. They then inform the record companies of this video. But, rather than US takedown notices interfering with the rights of UGC creators, copyright owners of pre-existing works find that it is more advantageous and profitable to get a piece of the action by monetizing the work. The record companies, instead of trying to have the videos taken down, appear to be licensing the video and then making “ad dollars” from the number of views. It is from this process that record companies are making more money from the UGC than the official music record. In so doing, copyright owners likely do not feel as threatened by the popularization of any derivatives from their works while UGC creators are kept from contravening subsection 29.21(1)(a) of the Copyright Act or having to argue fair dealing/use.

There is a pragmatic realization that demonizing and increasing restrictiveness of copyright law against users who appropriate the works of others, be it solely for enjoyment of the work or to make use of it in a UGC context, ; less content gets distributed among the public (which has negative societal effects) and there is less respect for the legitimacy of copyright holders leading to even more appropriation which cannot realistically be stopped.

Furthermore, the popularity that comes from fandom and UGC communities also informs the larger consuming public of what original content is trending among fellow community members and can act as advertising for the copyright owner.

It appears that this symbiotic relationship between users who want to express themselves personally and the copyright owners (and intermediaries who stand to gain from providing a forum in which users may have access to the fresh or at least alternative perspectives that UGC has to offer) promotes the purported purpose of copyright - to incentivize creativity.

While this can be a positive business model, benefiting all parties concerned, I would like to note a concern which arises. The Copyright Act legislatively permits, as part of a recognized greater social good, UGC creators to appropriate and use works of others in whole or in part when making solely non-commercial derivative works. Although some may describe these UGC creators as “amateur” in a pejorative way, in many cases these amateurs, while consuming society’s cultural works, produce high quality mash-ups, remixes and a host of other derivative works, copyrightable in their own right but typically not greeted with the respectable title of “author”. However, when a UGC work is being uploaded, the uploader agrees to the non-negotiable click-wrap contract (which stipulates that unless they own all elements with the work being uploaded the uploader is not entitled to enable revenue-generating ads). Should this necessarily give the copyright owner of the existing work the right to muscle-in or impose their influence by obstructing the viewers’ ability to fully enjoy the presentation of the UGC work without attention-distracting ads in or around the work? Furthermore, if the UGC generates huge hits, benefiting the host site and advertisers, it raises the question as to whether the UGC creator should be expected to forego any such benefits in order to avoid the risk of liability. I realize that the current system is a licence-based economic model contractually formulated to support the dissemination of UGC derivative works which may otherwise be taken down, and thus is arguably still a better alternative. However, in utilizing this business model, there should still be respect of the UGC work and its author when placing any ads. The Online Etymology Dictionary defines “amateur” as:

1784, "one who has a taste for (something)," from French amateur "lover of," from Latin amatorem (nominative amator) "lover," agent noun from amatus, past participle of amare "to love". Meaning "dabbler" (as opposed to professional) is from 1786.

If we consider it from its origins, doing something for the love of doing it would be a seemingly appropriate context for the rationale of the UGC exception. On the other hand, would it be fair to deny amateur creators the ability to gain any profit from the skill and judgment of their original (albeit derivative) work while permitting others to free ride on the commercial value of their works? This goes to whether Parliament’s restrictively phrased ‘solely non-commercial’ is appropriate in light of the way users actually engage with works and whether an appropriate balance of interests is achieved.

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Procedural History

In May 2010, a collection of lawyers and law firms in Canada launched a class action suit against Thomson Reuters, alleging that the company’s Westlaw “Litigator” service directly infringed works in which the individual members owned copyright. The claim, led by representative plaintiff , alleged infringement in over 50,000 works available through the Litigator service, and sought general damages of $50 million, as well as $1 million in Punitive Damages (IPilogue’s coverage of the initial is available ).

In February 2012, for the proposed action under the , 1992, SO 1992, c C-6 (for IPilogue’s coverage of the certification, see ). In the decision granting certification, the Court noted certain public policy problems involved in granting copyright protection to the types of material included in Westlaw’s Litigator service. Citing IP Osgoode's , Judge Perell noted in paragraph 93 that recognition of copyright in such materials

would affect the ability of lawyers to serve other clients and would detract from the profession’s obligation to serve the public to the best of its ability, would promote needless variety when standardization and consistency in legal expression would be beneficial, and would monopolize legal services and suppress healthy competition.

However, as this was a certification proceeding, the Court declined to rule on the merits of the action and specifically made no finding on the existence or restriction of copyright protection in court documents.

The Proposed Settlement

Two years after certification, and four years after the action was commenced, the parties negotiated a settlement agreement. One major factor spurring settlement was , two of which (Society of Composers, Authors and Music Publishers of Canada v Bell Canada, and Alberta (Education) v Canadian Copyright Licensing Agency, ) dealt with the fair dealing��exception in a manner which had a direct impact on the litigation.

Counsel for the affected class saw these decisions as “substantially increase[ing] the litigation risk for the Class Members” [], as the decisions of the Supreme Court provided Thomson Reuters with a broader fair dealing defence, and clarified that the for-profit nature of its Litigator service was not an insurmountable barrier against pleading fair dealing under The negotiations which followed were, in the words of the Court, “adversarial, arm’s length, and intensive.” In the end, Thomson Reuters made no admission of liability, and continues to deny the validity of Waldman’s claim.

Nevertheless, the parties were able to come to a mutually agreeable conclusion. Thomson Reuters insisted on a licence as part of the settlement, to avoid any claims in the future. Counsel for the class members proposed that Thomson Reuters fund a cy-près trust in the amount of $350,000 in lieu of direct compensation for individual plaintiffs, as specific losses were impossible to calculate.

The settlement also included mandatory copyright notices to users of the Litigator service about potential third-party copyright claims affecting the material accessible through Westlaw’s database. Class Members were permitted to opt out of the settlement, and Counsel for the plaintiffs secured $825,000 in legal fees as part of the settlement.

Fair and Reasonable: Objection to the Settlement and its Rejection by the Court

This proposed settlement was objected to by seven class members, all of whom are individual lawyers whose works appear on the Litigator service. Of these seven, five explicitly mention the disproportion between the amount awarded to the Class ($350,000) and the amount awarded to Class Counsel ($850,000).

Of the remaining two lawyers, one strongly objected to the notion that he retained any copyright in his court documents after they were filed, and objected to the suit on principle. Another objector claimed that no licence should be given to Thomson Reuters, as the settlement would therefore confer a direct benefit on the defendant (a licence) but only an indirect benefit on the plaintiffs (a fund for public interest litigation).

The Court agreed with the objecting Class Members, and rejected the settlement on the grounds that it was not fair, reasonable, and in the best interest of Class Members. In particular, Judge Perell emphasized that the paramount concern in approving a proposed class action settlement is access to justice. Moreover, the decision contains a consideration of what the phrase “access to justice” means in the context of class action settlement. In addition to substantive and procedural fairness, the Court held that a consideration of fairness in the context requires a court to consider:

circumstantial fairness, i.e., the fairness of the settlement to the parties and the class members in their particular circumstances, institutional fairness, and the fairness of the settlement from the perspective of a robust notion of access to justice that includes an outcome that objectively should satisfy the class members’ entitlement to justice for their grievances.��[]

In particular, “institutional fairness” prevents a Court from “rubber stamping” settlements, to avoid setting an example through which fatigue, incompetence, opportunism, or the business model of Class Counsel or representative plaintiffs will result in a settlement which restricts the legal options of individual Class Members.

In the current settlement, the Court found it was unable to approve the settlement both because the award to Class Counsel was larger than that to Class Members, and because the settlement effectively “expropriates the Class Members’ property rights in exchange for a charitable donation from Thomson” [].

Moving Forward – Class Actions and Copyright Infringement in Canada

The decision contains valuable insight into judicial approval of class action settlements involving copyright infringement in Canada. The idea of class certification in copyright infringement actions seems at first��glance to overcome some of the current barriers imposed on rights holders in asserting claims in the current legal climate – in particular the difficulty of proving individual damages, the restrictions on statutory damages imposed through recent legislative amendments, the limited means of some rights holders, and the relative power of organizations which distribute and communicate works to the public.

However, the decision in Waldman v Thomson Reuters shows that such actions have substantial public policy considerations involving access to justice. In particular, the decision shows that “access to justice” means something particular in the context of a settlement. The access to justice at issue is that afforded to members of the Class, not general projects – such as a fund for public interest litigation – which may provide access to justice for society writ large.

In addition to the concern about optics, the Court also addressed the ability of Class Members to “opt out” of the settlement agreement. ��Since classes are certified in part because individual members lack the resources to pursue claims individually, the Court saw the argument that the settlement was fair because individual members could opt out as “specious.” Class action infringement suits may offer Canadian rights holders a powerful option for protecting their intellectual property, but the Ontario Superior Court has made it clear that such options must be exercised with a real concern for the Class Members whose rights are being protected.

David Bowden is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School

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Leonard is a��photographer whose����is using an electron microscope to capture images of some of the smallest things imaginable, including cells, crystals, and tiny creatures. Stemtech is��a multi-level marketing organization with a����using adult stem cells.��The����by Leonard alleged that Stemtech initially approached him to licence one image for use in their publications, which Leonard agreed to, but that he was never fully paid for its use. Also, the agreement was for use only in their publications, and not on their website.

The����further alleged that Stemtech used two images entitled "Scanned Electron Microscopy of Human Bone Marrow Stem Cells Images" on their website, and made them available to their sales and distribution network for use on their websites as well. When Leonard discovered the use by Stemtech, he sent them a cease and desist letter.�� Stemtech took��down the images, but refused to compensate Leonard. As such, Leonard started the action against Stemtech for copyright infringement.

The main form of relief sought by Leonard was damages suffered by him, and an accounting of profits by Stemtech. Or in the alternative, statutory damages.

The case was heard by a jury, which returned a����in Leonard's��favour��on all counts. In addition to a finding of liability for direct infringement, the jury also found Stemtch vicariously and contributorily liable for the infringement of Leonard's copyrights in both works. In this case, Stemtech was found vicariously liable for the use of Leonard's images by the company's independent contractors. The jury found that Stemtech had the right or ability to stop or limit their infringement, but��failed��to do so, while also having a direct profit or financial interest in the independent distributor's infringement. Furthermore, the jury found Stemtech had knowledge its distributors were directly infringing the works and intentionally induced them to do so.

Apart from the facts, the most interesting aspect of this case was the massive award of $1.6 million to the photographer. Leonard pled for actual damages, which would have been a combination of damage suffered by him as well as an accounting of��profits��by Stemtech. Under , Leonard could have elected for statutory damages, but was not able to do so, as he had not registered his works at the time of infringement. ��extends copyright protection to unregistered works, but requires registration upon commencement of an infringement action.

Damages under Canadian Law

The Canadian����operates in very much the same way. Under��, an infringer of copyright is liable for damages suffered by the owner, in addition to an accounting of profits not otherwise accounted for. Similarly to��, Canadian law allows for the copyright holder to elect for statutory damages instead of real damages at any time in the proceedings under��. The range of statutory damages in Canada is between $500 and $20,000 for all infringements by a commercial infringer of a single work. Unlike America, statutory damages are available in Canada without registration, and starting an action for infringement does not require registration of a work.

Implications

Without details of how the jury calculated the amount, it is difficult to comment on its appropriateness. However, another recent American decision resulted in a����for copyright infringement of another photograph, this time under statutory damages. These decisions beg the question of whether we will see a trend in enforcing copyright of photographs and if we will be seeing them enter the Canadian courts.

Alex Buonassisi is an IPilogue Editor and a JD Candidate at the University of British Columbia.

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