This paper traces the emergence of a new res or object of protection within European trade mark law. Proprietary rights in trade marks have conventionally been premised upon the mark’s ability to communicate useful information; namely, indicating the commercial source of goods or services, also referred to as the essential function of a trade mark.

Granting exclusive rights to control the use of a mark preserves its ability to reliably signal origin. Contemporary EU trade mark law goes further and protects the more expansive brand dimension associated with a successful trade mark. The Court of Justice of the European Union (ECJ) has enabled this by recognising not only the origin indication function of marks, but also their advertising, investment and communication functions as well. The brand is a remarkably elusive and protean, yet undeniably valuable, intangible.

So what are the doctrinal tools and techniques available to courts, registrars and legal practitioners, enabling them to work with such elusive subject matter? What are the corresponding assumptions about brand creation and sustenance that reinforce these techniques? And can they be reconciled with recent conceptualisations of branding emerging from marketing and consumer studies research?

Since brand protection is a controversial development within European trade mark law, this paper unpacks the manner in which the brand is conceived of within European legal doctrine. The ECJ situates branding within a one-way broadcast model, while contemporary marketing research emphasises that brand formation is dialogic and iterative. The ECJ’s approach to brand propertization is therefore not only inaccurate in presuming single author brand creation, but also deeply troubling since it marginalizes consumer agency and reinforces the exploitation of their immaterial labour through the instrumentality of trade mark law.

Featured here is an abstract of a paper by Dr. Dev Gangjee. Dr. Gangjee lectures at the London School of Economics, with a primary research interest in intellectual property, including trademarks, geographical indications and domain names. He is also an IP Osgoode Research Affiliate and an Associate of the Oxford IP Research Centre. As an expert he has advised both governments and law firms in the area of trademark law. The full article can be found here.

Posted in European Union, Feature Post, IP, Trademarks
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During the celebration of World Intellectual Property Day on April 24, 2013, the US Committee on the Judiciary announced its intention to promote a comprehensive review of US copyright law in order to modernize copyright protection in the US.

This announcement comes at a time when copyright law is being challenged by the digital revolution. The current copyright regime does not provide legal certainty to controversial issues such as the digitization of and increased virtual access to books. (IPilogue posts about this topic can be found here and here.) There is also legal uncertainty as to who is liable for infringing content posted on public access networks, and for the storing and sharing of supposedly illegal content through mechanisms of cloud computing. The Megaupload saga is one prime example of a new technology that is testing the limits of copyright law (see here for IPilogue’s coverage of that story).

In light of the importance of the internet and these new challenges, the US Committee on the Judiciary is attempting to address the interests of various stakeholders by proposing solutions that will ensure effective protection and enforcement of copyright in the US. The US authorities, however, are not the only parties interested in modernizing the copyright system in their respective jurisdictions.

The adoption of the Intellectual Property Strategy in May 2011 (see “A Single Market for Intellectual Property Rights“) outlined the main objectives of the European Union with respect to Intellectual Property Law. The European Commission (EC) later announced in December 2012, within MEMO/12/950, its intention to proceed with modernizing copyright law in the digital economy. Through dialogue with various stakeholders and elaboration of market studies and legal drafts, the EC is hoping to achieve rapid progress in problematic fields such as: cross-border portability of content; user-generated content; data- and text-mining; private copying levies; access to audiovisual works; and cultural heritage. The Canadian legislative authorities have also attempted to find solutions to the new challenges to copyright law. The approval of Bill C-11 in June 2012 and its implementation are examples of steps being taken by the Canadian legislature to address these issues. (Further information on copyright reform in Canada can be found here.)

The announcement by the US Committee on the Judiciary, however, does not effectively clarify the extent to which the changes will affect the current copyright regime in the US.  In my view, by solely focusing on concerns about compensation for the use of protected works and the effectiveness of copyright enforcement, the Committee is neglecting review of the prevailing dogmatic standards for the protection of intellectual property.  By virtue of the advent of the digital economy and significant public interest, copyright law has experienced a transition, in which a reassessment of its justification and legitimacy is required. The social and economic functions of copyright – especially in view of the economic exploitation of rights by the music industry and by collective societies – should be discussed under a new lens. This would not only focus on the protection and enforcement of copyrights, but also on issues related to access to information, access to cultural elements, and the interests of creators and consumers alike.

In my opinion, if the review by the US Committee on the Judiciary does not take the above into account, it is unlikely that further legislative attempts will be justified and legitimized or provide legal certainty and solutions to the problems with the current system, and may in fact suffer the same fate as the SOPA and PIPA.  Effectively considering the point of view of all stakeholders is essential for the modernization and advancement of copyright law.

Pedro Henrique Dias Batista is an IPilogue Editor and a PhD student at Ludwig Maximilian University of Munich.

Posted in Announcements, Copyright, copyright reform, Internet, IP Reform, Jurisdiction, US
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There are just under two months left to submit your entry to our 5th annual Writing Challenge. The winner from each category will receive a prize of $1000 (CAD), publication on the IP Osgoode website, and consideration for publication in the Canadian Intellectual Property Review and/or the Intellectual Property Journal.  The deadline to submit is 5pm, Monday July 1, 2013. Submissions can be sent to iposgoode@osgoode.yorku.ca.

We are looking for thoughtful and well-researched papers on intellectual property and public policy scholarship to enhance our discussion. We encourage a broad range of perspectives and topics can be from within the various categories of intellectual property law including patents, trade-marks, industrial design and copyright.

There are three categories for entrants this year:

1. Law student category (LL.B, J.D., BCL, and LL.L students)
2. Graduate student category (LL.M, S.J.D. and PhD students)
3. Professional category (legal and business professionals who have been practicing 7 years or less, including patent agents and trade-mark agents)

We are pleased to announce that, new to this year’s challenge, the set topic for the professional category is a case note on an intellectual property related decision issued after January 1, 2012.

More details on Canada’s IP Writing Challenge are available at http://www.iposgoode.ca/writing-challenge/.

We look forward to reading your work!

Posted in Announcements, Feature Post, IP
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If at first you don’t succeed, Viacom, try try again?  On April 18, 2013, Judge Louise Stanton of the 2nd Circuit District Court effectively wrote the last chapter in the epic one billion dollar copyright battle between Viacom and YouTube.

In the case, the court disposed of the remaining issues left undecided from the April 5, 2012, New York Court of Appeal decision that had essentially dismissed most of Viacom’s case. Viacom had brought the appeal following a previous unfavorable 2nd Circuit decision, which was also decided by Judge Stanton (see here and here for our previous posts on this case).  Viacom had alleged that hundreds of thousands of unauthorized clips of its programming, such as SpongeBob SquarePants and The Daily Show, were readily accessible on YouTube, thereby infringing its copyright. In the most recent decision, the 2nd Circuit District Court considered: (1) Whether YouTube had knowledge of the infringing activity; (2) Whether YouTube was willfully blind to the infringing activity; (3) Whether YouTube had the “right and ability to control” the infringing activity; and (4) whether YouTube could claim protection under “safe harbor” pursuant to Section 512(c) of the Digital Millenium Copyright Act (“DMCA”).  In sum, Judge Stanton found no copyright infringement on the part of YouTube with regard to any of the remaining issues.

Issue 1: Did YouTube have knowledge or awareness of any specific infringement?

On this first issue, Viacom was challenged to bring forth evidence that YouTube had actual knowledge of the 63,060 infringing clips-in-suit. Put another way, Viacom had to demonstrate not only that YouTube had general knowledge of infringing activity on its website, but that YouTube knew exactly which clips were infringing Viacom’s copyright. On this point, Viacom conceded that it did not have evidence to support knowledge of specific infringement. Viacom argued, however, that this did not matter as the onus would be on the defendant to establish each element of its affirmative defence, including lack of knowledge or awareness, if it wished to apply the statutory “safe harbor” defence.  As such, Viacom reasoned, it would be unlikely that YouTube could demonstrate it had no knowledge or awareness whatsoever of infringement, given the high volume of copyright-infringing material uploaded daily onto YouTube.  On balance, the judge held that Viacom’s argument was “extravagant” and that per Congress, the DMCA was enacted specifically to protect service providers from the very burdensome task of monitoring for infringing material uploaded by users.  Judge Stanton held that it was both fair and reasonable, under the DMCA, to place the burden of identifying infringing material on the copyright owners and that Viacom failed in establishing specific infringement by YouTube.

Issue 2: Was YouTube willfully blind to specific infringements?

On this second issue, the court explained that the threshold for willful blindness depended on the particular law governing the factual situation. Specifically, for cases under the DMCA, the threshold for willful blindness and subsequent disqualification from “safe harbor” is blindness to “specific and identifiable instances of infringement”.  In the case at bar, the court did not find that Viacom provided specific locations of infringement, thus leaving YouTube to find the infringing clips on its own.  Under these circumstances, it could not be said that YouTube was willfully blind towards infringing activity, pursuant to the “safe harbor” provision of the DMCA. The holding on this issue is nicely summed up in a footnote of the decision: “Plaintiffs often suggest that YouTube can readily locate the infringements by using its own identification tools. [YouTube] has no duty to do so.”

Issue 3: Did YouTube have the “right and ability to control infringing activity” per § 512(c)(1)(B) of the DMCA?

On this third issue, the court defines the ability to “control infringing material” as requiring “’something more’ than just the ordinary power over what appears on the provider’s website.”  As such, the fact that a provider may be able to remove or block access to material posted is not sufficient to meet the threshold of control set out in § 512(c)(1)(B) of the DMCA. The governing principle on the “right and ability to control infringing activity” is set out as follows: “Clear knowledge of the prevalence of infringing activity, and welcoming it, does not itself forfeit “safe harbor”. To forfeit that, the provider must influence or participate in the infringement.”  Under this governing principle, the court held that YouTube did not meet the threshold for “influence” or “participation,” in contrast to Perfect v Cybernet – the only case to date in which a service provider was held to have met the required “something more” by strictly controlling user experience on its website and refusing access to users who failed to comply with its instructions.

Issue 4: Did YouTube syndicate the clips-in-suit to a third party, and if so, did such syndication occur “by reason of the storage at the direction of the user” within the meaning of § 512(c)(1) of the DMCA, so that YouTube may claim safe harbor?

On this fourth and last issue, the court quotes YouTube’s brief in reasoning that “syndication agreements merely give users alternate ways to view videos that users have stored on YouTube’s system.”  As such, the court held that syndication merely provides access to material uploaded by users and does not imply that YouTube manually selected the infringing materials delivered over mobile and other systems, thus allowing the service provider to claim protection of “safe harbor”.

Conclusion

Does the DMCA tend to favour the service provider over the copyright holder?  In my opinion, this most recent decision reflects a broader, ongoing struggle to protect the commercial value of artistic production while allowing service providers like YouTube a certain amount of lee-way to develop their platforms for users. Enacted in 1998 under the Clinton Administration, the DMCA was drafted to comply with the World Intellectual Property Organization (WIPO) Copyright Treaty and the WIPO Performances and Phonograms Treaty.  The “safe harbors” provision is, arguably, one of the more controversial aspects of the DMCA.  On the one hand, as outlined in the discussion in Viacom v Youtube, it allows for service providers to develop their platforms for third-party users without the overhanging risk of copyright liability.  In this manner, user-generated content is given the space to flourish, hosted by various online platforms.  However, the “safe harbors” provision can also place a tremendous burden on copyright holders to monitor these service providers for potential infringement of their intellectual property.  Short of having round-the-clock staff monitor sites such as YouTube, it is likely that copyright infringement would occur on a regular basis.  Perhaps it is too early to take a side, but as it now stands, under the DMCA, copyright holders must do much of the legwork in protecting their creative productions.

Recent amendments to the Copyright Act under Bill C-11: The Copyright Modernization Act (“CMA“) have propelled Canadian IP legislation into the twenty-first century, as the last modification occurred in 1997.  Some would argue that the “enabler provisions” of the amended legislation, along with increased tightening of the digital locks provisions, could potentially have led to a different outcome for Viacom, had it been a Canadian case.  Under the CMA, the service provider is liable for copyright infringement merely if it “enables” copyright infringement, which is a less onerous burden to meet for the copyright holder than that of “specific knowledge” of copyright infringement under the DMCA.  On the other hand, the “enabler provision” under the CMA is being applauded for encouraging innovation in digital products from the copyright holder’s perspective.  Barry Sookman argues that these new amendments, which are in line with WIPO Treaties standards, will allow Canada to become a bigger player in the twenty-first century by expanding legal protection for developers and copyright holders.  Looking forward, as the digital and legal-scapes develop and expand, the Canadian Federal Court may find a homegrown Viacom v Youtube on its docket soon rather than later.

Ying Cheng is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

Posted in Blogs, Copyright, copyright reform, Infringement, IP, IP Reform, Jurisdiction, Ownership, US
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In the summer of 2012, the Supreme Court of Canada issued a series of rulings in five major copyright cases (referred to as the “copyright pentalogy”). A new book has just been released that examines the possible long-term impact of these decisions.

The Copyright Pentalogy rocked the foundations of Canada’s media industries, and will have wide reaching repercussions for Canadian copyright law. The book, entitled “The Copyright Pentalogy: How the Supreme Court of Canada Shook the Foundations of Canadian Copyright Law” is the first comprehensive scholarly analysis of the pentalogy. The text covers a range of topics, including the standard of review in the courts, the implications and evolution of fair dealing, technological neutrality, the scope of copyright and copyright collective management.

The book is edited by Prof. Michael Geist of the University of Ottawa and includes contributions from many of Canada’s leading copyright scholars, including IP Osgoode’s very own Prof. Giuseppina D’Agostino and Prof. Carys Craig. It is sure to be a must have resource for anyone interested in Canadian copyright law in the future.

Print copies are available from the University of Ottawa Press and an open access PDF version is available as a free download.

Posted in Announcements, Book Review, Canada, Copyright, Fair Dealing, Feature Post, IP, Music Industry, Music Industry, Supreme Court of Canada, Technology, Telecommunications
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This chapter closely scrutinizes the intellectual property developments during the Beijing Olympics to determine whether this important world event has provided the much-needed example to show that China could effectively address the counterfeiting problem when national interests are at stake.

As this chapter will show, the case of fake Beijing Olympics merchandise is rather curious. Even though there undeniably is a significant reduction of this merchandise in Beijing and other major cities during the Olympic Games, fake merchandise was widely present in other parts of the country. To a large extent, the presence of fake Olympic merchandise has shown that the challenge of confronting counterfeiting in China is more a reality than an excuse. It also provides an instructive example for understanding what the Chinese government can and cannot do in its effort to combat massive counterfeiting, the necessary complements for success, and the remaining challenges concerning efforts to protect trademark rights in such a large, complex, and highly populous country.

This chapter begins by describing the measures that the Chinese government and the Beijing municipality had taken in the run-up to the Beijing Olympics. It then explains why the case of fake Beijing Olympics merchandise provides an instructive example of the challenges to combating massive counterfeiting in China. In particular, this chapter explains the local protectionism problem, the need for both the government will and the people’s will, and the inevitable trade-offs concerning the use of enforcement resources. The chapter concludes with some lessons on the future protection of trademark rights in China.

Featured here is an abstract of a paper by Peter K. Yu, IP Osgoode Research Affiliate, Kern Family Chair in Intellectual Property Law and Founding Director of the Intellectual Property Law Center at Drake University Law School. Born and raised in Hong Kong, Professor Yu is a leading expert in international intellectual property and communications law. He also writes and lectures extensively on international trade, international and comparative law, and the transition of the legal systems in China and Hong Kong. The full article can be found here.

Posted in Feature Post, IP, Official Marks, Trademarks
Comments: 0

The re-posting of this analysis is part of a cross-posting collaboration with MediaLaws: Law and Policy of the Media in a Comparative Perspective.

On the 20^th of March this year, the United States District Court for the Southern District of New York, in the person of Judge Denise Cote, emitted a ruling fated to prompt lively debate and marked reactions. A closer look at the analysis conducted by the Judge will provide further insight into the reasons determining this outcome, which was largely focused on issues of law as the factual ground was almost totally undisputed.

The ruling concerned copyright law and, more specifically, the application of the doctrine of Fair Use, according to which certain uses of copyrighted work for certain purposes such as news reporting or criticism do not constitute an infringement of copyright, as clearly stated by §107 of the Copyright Act. As is well known, in order to fall within the scope of Fair Use, a given use of a copyrighted work must be assessed by four criteria  laid out in §107 of the US Copyright Act.

The plaintiff, Associated Press, which has been an important news cooperative operative in the United States since 1846, filed a motion for summary judgment claiming infringement of copyright against Meltwater US1 Inc., an online service company founded in Norway in 2001.

The latter, by means of its “Meltwater News” service, has been providing its subscribers with weekly reports containing excerpts of news articles, among which some taken verbatim from AP’s copyrighted articles.

Meltwater’s main defense consisted essentially in alleging that its activities were the same as the usual transformative use made by search engines, hence it accordingly stressed that they were to be considered as Fair Use. In this respect the Judge established that the defendant had failed to provide sufficient evidence that the activity it had been engaging in could be equated with that conducted by any known search engine, especially on the grounds of the “click-through” test, and thus it could not be included in what the Judge called “breathing space”, making reference to Fair Use.

In the Judge’s opinion, an accurate assessment of the four factors constituting Fair Use in light of the purpose of Copyright Law weighed heavily against Meltwater and thus the defendant was to be considered culpable of copyright infringement.

With specific regard to the first factor (Purpose and Character of the Use), Meltwater’s conduct was referred to as “free-riding”, clearly aimed at supplanting the service that AP and its licensees offer the public. The Court found no element in favor of a finding of transformative use as Meltwater had constantly engaged in verbatim reporting of key words and excerpts surrounding them, from AP.

Moreover the Judge considered the Meltwater News click through rate as not comparable with that of other search engines. More specifically, it clearly emerged from undisputed evidence that Meltwater subscribers very rarely accessed third-party websites (i.e. the original source of the information), thus making the argument by which the service in dispute could be equated with that offered by a search engine quite difficult to sustain. In fact, the very low click through rate only seemed to strengthen the Judge’s conviction that Meltwater was acting as a substitute service for AP or its licensees rather than encouraging its subscribers to access original articles.

Moreover, in the context of a comparison between Meltwater News and Google News Alerts, the Judge granted AP’s argument that Google’s excerpts do not usually include the lede and are also considerably shorter. This appeared to be a strong factor in the Judge’s final decision, especially in consideration of the fact that Meltwater failed to provide any sufficient element to demonstrate that its service could be equated with that of a search engine.

The conclusion concerning the first element of Fair Use made by the Court, whilst rejecting further arguments offered by Meltwater in relation to previous cases such as Perfect 10, Inc. v. Amazon.com [1] and Kelly v. Arriba Soft Corp [2], appears to be as follows: search engines usually engage in transformative uses of copyrighted works, however, since Meltwater failed to provide sufficient evidence that its use is similar to that of a search engine, since it is not transformative, its activity cannot fall under the scope of Fair Use. The first factor thus weighed strongly against Meltwater.

Such a finding is of great importance as it draws a clear line between what can be considered a transformative use and what cannot. The interpretation of the role of the lede and of the composition of the articles also played an important role in considering Meltwater’s use to be non-transformative. Although reporting of facts is not copyrightable, the way news is reported “may display originality” and therefore may be subject to protection under Copyright Law.

The Judge also made a short digression on the requisites for a finding of fair use in relation to the nature of the copyrighted work, recalling the necessity for a clear difference in treatment for fictional and factual copyrighted works and also concerning their published or unpublished status. Accordingly, this element was considered to be neutral as AP deals with news articles, which are much more subject to application of Fair Use than works of fiction.

It was in relation to the factor concerning the amount and substantiality of the copying that Meltwater’s defense strategy appeared to be totally deficient. In taking a closer look at the qualitative aspect of this element, it is important to highlight the conflicting interpretation of the role of the lede of the articles. According to AP, in fact it “is meant to convey the heart of the story”, with its crafting requiring a high degree of journalistic skill. Conversely, Meltwater News service, which, according to a Meltwater employee, was aimed at saving client time “so you don’t have to read the full article”, harnessed the lede as a teaser and not as a summary of the news.

From a merely quantitative point of view, although the court admitted that “no bright-line rule exists with respect to how much copying is too much”, recalling the Supreme Court’s outcome in Campbell v. Acuff-Rose [3] sufficed to consider the copied portions of the articles excessive.

Not only did the claims raised by AP result in being highly effective for their purpose, but Meltwater lacked appeal to the court, with all its arguments being rejected, particularly that stressing its equivalence to a search engine.

Lastly, there are the Court’s consideration of the effect of Meltwater News activities on AP’s market contained in the introduction to the final assessment on Fair Use. The impact on potential licensing revenues was found essential for the simple reason that the Court qualified Meltwater’s activity as non-transformative, thus acting on a market where the copyright holder was a player. Morever, Meltwater is considered to be not only a direct competitor of AP as its use of the work substitutes the latter’s products, but it also does not pay any licensing fee, thus obtaining an unfair commercial advantage.

The Court finally stated that Meltwater News, far from possibly being considered a search engine, is nothing but a news clipping service, gaining an unfair commercial advantage, whose business model is strictly based on non-transformative, systematic copying of other’s copyrighted expressions.

Meltwater also pointed out without any positive result that, similarly to the famous cases Field v. Google, Inc. [4] and Parker v. Yahoo! Inc. [5], it had an implied license to report the excerpts. Unfortunately for Meltwater, the factual background of the mentioned cases, unlike that of the case at issue, unequivocally demonstrated that the copyright owners were aware of the no-archive meta-tag and of the availability of the search engines to remove the content upon request.

It clearly appears that although Meltwater qualified itself as a search engine, its failure to demonstrate this and the use of its News clipping service by subscribers strongly persuaded the court that its main function was not that of a location tool. The verbatim copying of the lede and of considerable portions of articles, alongside a very low click-through rate strengthened such an interpretation, and also indicated the direction of possible future developments in the judicial interpretation of Fair Use.

The link to the ruling: http://www.nysd.uscourts.gov/cases/show.php?db=special&id=2

Notes:

[1] 508 F.3d 1146 (9th Cir. 2007)

[2] 336 F.3d 811(CA9 2003)

[3] 510 U.S. 569, 114 S. Ct. 1164, 127 L. Ed. 2d 500 (1994)

[4] 412 F.Supp. 2d 1106 (D. Nev. 2006)

[5] 2008 WL 4410095 (E.D. Pa. Sept. 25, 2008)

Posted in Copyright, Fair Dealing, Feature Post, Infringement, IP, Jurisdiction, MediaLaws, US
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Our myriad of online accounts for social media and other cloud services will all persist after our deaths. Until recently, not much thought was given to managing these digital assets after we pass.

Estate planning is something most people generally think about as little as possible. Physical assets are often unbequeathed, and sometimes require complex and extensive litigation to determine who inherits what. Many of us plan even less for what will happen to our digital assets. Some commentators have suggested dealing with digital inheritance simply by providing login information to executors. However this may run afoul of many end user agreements and terms of use, which prohibit sharing of login information. Many other people will make no estate plans at all, leaving these accounts to go dark, or require legal action by survivors for access. Some technology companies, however, are now developing services and policies to deal with this very issue.

Service Provider Policies

In early April, Google launched a service to help users decide what will happen to their digital assets when they die. Named the “Inactive Account Manager,” the service allows users to name a beneficiary for their accounts, or have their account data deleted. The service is triggered upon an account becoming inactive for a period of time defined by the user, who will also receive a notification before the period lapses. The announcement on Google’s policy blog suggests the purpose is to plan for one’s “digital afterlife,” and to protect the privacy and security of a user’s information when they die. This follows the implementation of similar policies by both Twitter and Facebook.

Twitter and Facebook’s systems operate through the reporting of deceased users. Facebook allows for memorialization or removal of a deceased individual’s account, while Twitter deactivates these accounts.  Neither service allows for the accounts to be passed on to surviving friends or family; this is where Google’s service stands out. Unlike Facebook and Twitter, Google implicitly acknowledges the value in these digital assets, and provides for the ability to transfer those assets of value to others. This new feature covers accounts for Google’s social media services like Google+ Profiles, Picasa Albums and YouTube, and can also apply to Google Drive cloud storage and Gmail email accounts.

Discussion

From a broader perspective, this move by Google suggests that many online accounts are not merely for users to consume services, but these accounts develop into actual assets unto themselves. As these various online assets continue to be developed and increase in value, ownership and division of these assets may present serious legal questions. As Google’s new service is enabling the inheritance of digital assets (thereby implicitly recognizing the value in them), a number of questions are raised about novel forms of property and what is included in the bundle of rights associated with them. There has been much discussion about who owns the data created in online services, but what about access to those accounts? Are social media accounts property? If so, who owns access to them? Are the accounts or access to them alienable, and if so in what circumstances? What about extending recognition of these accounts or access to them as property to other areas of law? If these digital assets represent significant value, could they also be subject to matrimonial property division, or other claims of unjust enrichment? These will all be questions that are likely to be answered in the coming years.

Some commentators have suggested that legislatures need to lead the way, develop laws governing inheritance of digital assets, and provisions to avoid executors from committing crimes by using log-in credentials left to them.  This issue, however, has yet to receive much attention in Canada, and it seems that politicians have not yet been urged to address it. Only time will tell if governments will step in to legislate inheritance of digital assets as they have done with physical assets, or if they will leave it to a patchwork of inconsistent policies enacted on the whim of individual service providers.

Alex Buonassisi is an IPilogue Editor and a JD Candidate at Thompson Rivers University.

Posted in Cloud Services, Internet, IP, Ownership, Privacy, Social Media
Comments: 0

TorrentFreak has reported that the first episode of HBO’s Game of Thrones season three broke historic download records, with more than a million as of April 1st, 2013. Canada ranked fourth internationally in terms of the highest number of TorrentFreak S3E1 downloads, representing 7.4% of total downloads at the time of reporting.

For a comprehensive, entertaining, pun-filled and generally geek-tastic video primer on the two sides to the Game of Thrones piracy debate, please see this Idea Channel video by Mike Rugnetta.

The Cultural Buzz Argument

The dominant pro-piracy narrative has focused around the concept of “cultural buzz” and the promotional value of piracy and its residual impact on sales. David Petrarca – the director of HBO’s Game of Thrones – recently had this to say of the illegal downloads:

“No, it’s great. It really helps the show’s cultural buzz, and it does not impact the bottom line because HBO has more than enough money to keep making the show… this makes HBO the center of a cultural conversation about illegal downloading, about streaming content, about the production of content and distribution of content, which is probably somewhere they really want to be.”

Even HBO’s programming president Michael Lombardo echoed these positive sentiments about privacy,

“I probably shouldn’t be saying this, but it is a compliment of sorts… The demand is there. And it certainly didn’t negatively impact the DVD sales. [Piracy is] something that comes along with having a wildly successful show on a subscription network.”

 

The Moral and Legal Retort

But not everyone is happy about this historic record. Anti-piracy advocates fall into two camps: those that believe piracy is wrong and those that remind piracy is illegal. The distinction is subtle, and there is some overlap, but the latter argument seems far more prevalent in online discourse.  Blogger John Birmingham politely points out to pro-torrenters that they’ve got their understanding of criminal law wrong.

“Specifically, there was one argument that kept coming up again and again. That unauthorised downloading is not theft; at worst it’s a copyright violation, which somehow sounds less serious. Almost admirable and kinda Robin Hoody in fact… And sure, in a strict literalist interpretation of most statutes in the various jurisdictions which take seriously the protection of intellectual (as opposed to ‘real’) property, theft and copyright infringement are treated separately. But both are usually defined under criminal law, and both are punishable with fines and jail terms.”

The more moral argument is furthered by Game of Thrones actor Nikolaj Coster-Waldau,

“What you hope is that even though people watch it online, they will still buy the DVD. You can always hope…At the end of the day it’s stealing. I know it doesn’t feel like it but it is and it’s not right.”

 

Analysis

Market failure is being touted as a justification for the piracy; delays in the availability of HBO shows around the world have been argued to lead to fans downloading out of necessity. This doesn’t necessarily explain why the US was the country responsible for the highest percent of illegal TorrentFreak Game of Thrones S3E1 downloads. HBO is a born-and-bred US channel that is more accessible domestically than anywhere. So it seems that the math to this argument doesn’t add up. Moreover, I’m unclear why market failures would justify breaking the law. If the capitalist claim were that piracy effectively hurts Hollywood enough to be an appropriate bottom line motivation, then I believe we’d see some kind of adjustment in content distribution on the part of HBO. That doesn’t seem to be happening in any short order.

And even if it did, it likely wouldn’t matter. Laws don’t serve at the pleasure of the market; the market serves at the pleasure of the rule of law. Citizens who have problems with anti-piracy law should be voting with a ballot, not a cursor. From this paradigm, illegal downloads starts to look a lot more about laziness than consumer rights. Finally, these statistics are shaky ground for the foundation of any debate. There’s a definite English bias – 4 of the top 5 countries on the list are English-speaking and it’s an English-speaking show. Sure Game of Thrones could be the most downloaded show of all time. Or it could be the most downloaded English show of all time.

In honesty, I don’t know what the most popular shows are in India and China. But if they’re not English and BitTorrent has an English show bias, then the data set starts to look particularly weak. And in addition to factoring in language, a truly fair comparison would weight downloads by country population and broadband internet penetration.

In conclusion, excitement about Game of Thrones piracy is noble fantasy.

Denise Brunsdon is an IPilogue Editor and a JD/MBA Candidate at Western University.

Posted in Broadcasting Regulatory Policy, Canada, Commercialization, Copyright, copyright reform, Digital Downloads, Infringement, Internet, Internet Sharing, IP, IP Reform, Jurisdiction, Open-Source, Ownership, Regulatory Policy, UK, Uncategorized, US
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The world of copyright law is constantly evolving and adapting to changes and innovations.  No case better captures this ongoing evolution than the recent American decision of WNET, THIRTEEN, FOX TELEVISION STATIONS, INC. v. AEREO, INC.

The case involved a copyright dispute between a number of television networks and the provider of a new television viewing service AEREO.  AEREO was held not to have interfered with any rights of the television networks through their unique service, described as an amalgamation of services each of which the court did not find contravened any rights.

The service AEREO offers is quite unique. It first uses antenna boards to pick up broadcast signals in the New York area. A customer can then select to either “watch” or “record” a broadcast program. In either case, AEREO – upon request – will record a unique copy of the broadcast program, either to be buffered and immediately transmitted to the customer over the internet (or mobile device), or stored as a copy for later viewing. AEREO argued therefore that their service (for which they charge a monthly fee) could be described as a consumer owning a combination of a TV antenna, a DVR, and a slingbox.

In the determination of whether the AEREO service violated any of the rights of the networks, Justice Droney, writing for the majority, focused on the similarity between AEREO’s system and other services that have been litigated on. Being a decision from the same court and concerning a nearly identical service, the court particularly relied upon the case of Cablevision. Cablevision used a device called an RS-DVR to make individual copies of broadcasts for customers upon request.  In the same way as with AEREO’s system, these copies were only reproduced for the customers who actually ordered them. The Court of Appeal was clear that this service did not infringe any networks’ reproduction, public performance or transmission rights. Faced with that decision, the networks decided to give up its claim that AEREO’s making of copies was infringement, but they maintained that the service still infringed both their rights related to public performance and transmission.

The following are the four main points on which Justice Droney based the decision of Aereo upon:

1. If an individual transmission is “capable of being received by the public” the transmission is a public performance; if the potential audience of the transmission is only one subscriber, the transmission is usually not a public performance.
2. Private transmissions (not capable of being received by the public) should not be aggregated. It is therefore irrelevant to the “Transmit Clause” analysis whether the public is capable of receiving the same underlying work or original performance of the work by means of many transmissions.
3. There is an exception to this no-aggregation rule when private transmissions are generated from the same copy of the work. In such cases, these private transmissions should be aggregated, and if these aggregated transmissions from a single copy enable the public to view that copy, the transmissions are public performances.
4. Any factor that limits the potential audience of a transmission is relevant to the Transmit Clause analysis.

The AEREO set-up was found not to be a public performance, mainly because it failed to fall within the exception to an “aggregate transmission” in the same way that a cable transmission does.

From the foundational principle of stare decisis, the decision in AEREO can be viewed as only an extension of the same legal principles which were discussed in Cablevision. In my opinion, Justice Droney’s analysis was somewhat flawed when he engaged in a comparison of a cable transmission to AEREO’s system. With former case law against them, the networks had argued that AEREO’s system should nonetheless be considered a public broadcast because of its similarity to cable transmissions, which were specifically legislated against in 1976. In Justice Droney’s discussion of this argument, he did make an analysis of legislative intent behind the Transmit clause, but only briefly.  He also stated clearly that the AEREO system is similar in many ways to a cable transmission system, but failed to explain why the legislature would not have considered the AEREO system infringement, if they had been aware of it.  In my opinion (and likely in the opinion of the networks), it is clear that cable broadcasts were specifically addressed in the 1976 Copyright amendments due to the potentially massive financial impact they would have on the networks, and therefore, it is strange that a similar system wouldn’t be considered infringing.

Naturally, there is always the argument that the decision is correct because the AEREO service is simply an amalgamation of devices that a private consumer can secure for themselves.  The significant difference, from my perspective, is that it may not be considered infringement because it would be private consumers gaining benefits from the combined use of these devices; that is simply not the same situation as with the AEREO service, which is offered on an ongoing basis and for a fee.

The networks may have actually been better served in this decision if they had advanced a reproduction rights claim.  Although apparently settled by the Cablevision decision, continuing to press the issue would force the court to do a “Fair Use” analysis, since copying is arguably being done. In that analysis a series of market factors would have been considered and the court may have ruled in favour of the networks without needing to overrule Cablevision. Since those arguments were not presented and the court found that there was no public performance, there waso need to consider “Fair Use” factors as a part of the legal analysis.

Therefore we are left with a decision that it technically in keeping with the law, but seems inconsistent with the policy which underlies that law. Copyright law has always been a balance between protecting rights and increasing public access. That is the reason why the test for “Fair Use” in American Copyright law specifically considers market impact of a particular use. In my opinion, the courts are making a clear statement with decisions like these.  That statement is “If you can find a find a loophole in copyright law, you can exploit it”. While it may be acceptable to accept that mentality in a tax law context, it is not appropriate in a system like copyright which is based on a balance between the rights of individuals.

It is my sincere hope that the court wants to use this decision to prompt action from the legislature to specifically address this case as they did in 1976 in reaction to cable television. It is because of decisions like these that we get statements like the one from FOX COO Chase Carey talking about the possibility of turning FOX into a pay channel which is no longer broadcast. In my view, this is a different scenario, on a fundamental level, than a single person buying an antenna or a DVR.  AEREO is a transmission business – just like the cable television industry – and their operation will have a significant financial impact network television.

Adam Stevenson is an IPilogue Editor and a JD Candidate at Western University.

Posted in Copyright, Digital Downloads, Infringement, IP, Jurisdiction, MediaLaws, Ownership, US
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