When I first learned about intellectual property I was immediately drawn to copyrights and the way in which the regime interacted with the arts. In learning about the field, I erroneously believed that only issues of infringement ever mattered in the practical sense. It was only after exploring the wonderfully technical – and not at all intuitive – concept of Technological Protection Measures, or TPMs, that I was really able to see that there is much more to copyright than meets the eye.
At a high level, a TPM can be thought of as a digital lock, as a means to control access or use of a copyrighted work, typically in the digital medium. Codified in Canadian law and located in the Copyright Act under section 41.1, there is a prohibition on the circumvention of “effective” TPMs, where a copyright holder may be entitled to remedies if the TPM is circumvented. What really sold me on TPMs was a conversation I had with a colleague on the Nintendo of America Inc v King et al federal court decision in Canada. Here, the federal court reasoned that the “physical shape and configuration” of the cartridges and game slots were enough to be considered an “effective lock” against circumvention. While the case is essentially undefended, personally I find that the argument of the shape of the cartridge being “effective” against circumvention is not the most persuasive, as replicating the shape of a cartridge is not onerous and could be done at a low cost, mitigating effectiveness. However, the issue of piracy in the gaming industry is prevalent and tackling it through TPMs may be a reliable course of action, as these kinds of physical cartridges can house hundreds, if not thousands, of games subject to copyright protection.
TPM regimes are not exclusive to Canada, as many countries such as the USA, Switzerland, India, New Zealand, and Australia, all have some form of TPM circumvention protection in their laws as a result of being signatories to articles 11 of the WIPO Copyright Treaty and 18 of the WIPO Performances and Phonograms Treaty. These member countries found that TPMs were necessary to address the proliferation of illegal copying in the digital medium (at 32). Looking more to our neighbours in the south, and the way in which TPMs exemptions have been created, I feel as though the balance of rights has been generally skewed away from copyright users to copyright holders, as noted by multiple user rights groups in the US based on their comments regarding proposed TPM exemptions (at 189).
While I do believe that TPMs serve a real purpose as a means to protect legitimate copyright holders, TPM circumvention liability in the Copyright Act can occur regardless of whether the circumvention is for infringing and non-infringing acts. Saying this, I believe that one of the core issues in the current state of the law is that circumventing a TPM to perform non-infringing maintenance or repair is a prohibited act, as is getting third-party assistance to do so. Even if a party were legally allowed to repair, diagnose or repair a lawfully acquired system by themselves, if for whatever reason they are not able to do so, they would not be able to seek out third-party expert assistance in order to help circumvent the lock. In order to address these issues, there would be a need to be legislative changes, or regulatory changes through the use of section 41.21(1) of the Copyright Act, which allows the Governor in Council to create additional exceptions where TPMs would not be infringed.
Concerns of international treaties would also need to be taken into account, as one only has to look to article 20.66 of CUSMA and see the new difficulty in creating new exemptions for TPM circumvention liability. Delving into Article 20.66, under Sub H, in order to create an additional exemption, you have to show that there is an adverse impact demonstrated by evidence, meaning that this is contingent on how strong the evidence would be. Additionally, while this is more of a political concern, there needs to be an appetite for TPM reform in the policy sector, and that if stakeholder pressure does not bring this issue to the table, the incentive for policy analysts to take the time and meaningfully engage with the issue would be slight.
All in all, although I agree with the general notion that TPMs help ensure that copyright users and rights holders interests are balanced, the current way that non-infringing acts and third-party assistance are dealt with in the Copyright Act is at odds with Canadian values. While there are some obstacles in allowing lawfully entitled owners – and third-party experts – of TPM protected systems to be allowed to circumvent for the purposes of repairing, diagnostics, and interoperability, it is possible to do so while also keeping Canada in line with its obligations under international obligations, namely WCT, WPPT, and CUSMA.
Written by Daniel Bartolomucci, JD Candidate 2021, submitted as part of course requirements for the 2020/2021 IP Law & Technology Intensive Program at Osgoode Hall Law School.