chapter 1: introduction - uvic lss · web viewcomposers, authors and publishers assoc. of canada...

LAW 347 | Intellectual Property

Outline | 2015-2016

TABLE OF CONTENTSCHAPTER 1: Introduction........................................................................................................................ 8INTRODUCTION........................................................................................................................................... 8

Summary of the Copyright Act........................................................................................................ 9International Treaties............................................................................................................................. 9Underlying Theory.................................................................................................................................. 10Boundaries of Copyright...................................................................................................................... 10Related Statute........................................................................................................................................ 11CHAPTER 2: Basic Elements of Copyright Law....................................................................12Qualifying for Copyright (Overview)..............................................................................................12

Mascot International v. Harman Investments Ltd. (FCTD 1993).............................................12Publication................................................................................................................................................. 13

Oscar Trade Mark (UK 1980)...............................................................................................................13Infabrics Ltd. v. Jaytex Ltd. (UK 1981)..............................................................................................14Robert D. Sutherland Architects Ltd. v. Montykola Investments Inc. (1995)......................14

Corporeal and Incorporeal.................................................................................................................. 15re Dickens; Dickens v. Hawksley (UK 1935)...................................................................................15

Fixation........................................................................................................................................................ 15Canadian Admiral Corporation Ltd. v. Rediffusion, Inc. (ExCt 1954).....................................15Gould Estate v. Stoddart Publishing Co. Ltd. (OGD 1996).........................................................16"A Charter of Rights for Creators" re issue of Fixation...............................................................17

Originality/Expression/Idea................................................................................................................ 17University of London Press, Ltd. v. University Tutorial Press, Ltd. (UK 1916)....................17Fletcher v. Polka Dot Fabrics Ltd. (O(ther) G(overnment) D(epartment) 1993)................17Boutin v. Bilodeau (QCA 1992)...........................................................................................................18Baker v. Selden (US 1880)...................................................................................................................19CCH Canadian Ltd. v. Butterworths Canada Ltd. (2004)...........................................................19

CHAPTER 3: Literary Works................................................................................................................20General Meaning..................................................................................................................................... 20

University of London Press Ltd. v. University Tutorial Press, Ltd. (UK 1916).....................20Hollinrake v. Truswell (UK 1894)........................................................................................................20The Bulman Group Ltd. v. Alpha One-Write Systems BC Ltd. (FCA 1981)...........................21Exxon Corporation v. Exxon Insurance Consultants International Ltd. (UK 1982)............21British Columbia v. Mihaljevic (BCSC 1989)...................................................................................22Via Rail Canada Inc. v. Location Via-Route Inc. (QCA 1992)....................................................22

Titles............................................................................................................................................................. 23McIndoo v. Musson Book Co. (OCA 1915).......................................................................................23Francis, Day & Hunter Ltd. v. Twentieth Century Fox Corp. Ltd. (PC 1939).......................23Canadian Olympic Association v. Konica Canada Inc. (FCA 1991).........................................24

Translations............................................................................................................................................... 24Unauthorised Translation................................................................................................................ 24Originality of Translations............................................................................................................... 25

Apple Computer Inc. v. Mackintosh Computers Ltd. (SCC 1990)............................................25Prism Hospital Software Inc. v. Hospital Medical Records Institute.......................................25

Intellectual Property

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

Apple Computer, Inc. v. Mackintosh Computers Ltd. (SCC 1990)..........................................26"Non-literal Copying”........................................................................................................................ 27

Three Broad Approaches:............................................................................................................ 27(1) Look and Feel (Subjective) Approach vs Expert (Objective) Approach............................27Broderbund Software Inc. v. Unison World, Inc. (US 1986)......................................................27

(2) Abstraction-Filtration-Comparison Approach............................................................................28Computer Assoc. Int’l, Inc. v. Altai, Inc. (US 1992)..........................................................................28Delrina Corp. (Carolian Systems) v. Triolet Systems Inc. (OGD 1993).................................31Prism Hospital Software Inc. v. Hospital Medical Records Institute (BCSC 1994).............31Robinson v Films Cinar Inc (SCC 2013)............................................................................................32

(3) Method or System of Operation Approach.................................................................................32CHAPTER 4: Dramatic Works.............................................................................................................33General Meaning..................................................................................................................................... 33Combination of Incidents/Originality/Fixation...........................................................................33

Hutton v. CBC (AQB 1989)........................................................................................................................33Kantel v. Frank E. Grant, Nisbet & Auld Ltd. (ExCt 1993)..........................................................34Green v. Broadcasting Corporation of New Zealand (NZ 1989)..............................................35

Sports Events............................................................................................................................................ 35FWS Joint Sports Claimants v. Copyright Board (FCA 1992).....................................................35National Basketball Association v. Motorola, Inc. (US 1997)....................................................36Canadian Admiral Corporation, Ltd. v. Rediffusion, Inc. (ExCt 1954)....................................36

Cinematographic Works....................................................................................................................... 37CHAPTER 5: Musical Works................................................................................................................ 38Amendments to Statutory Definitions...........................................................................................38

Composers, Authors and Publishers Assoc. of Canada Ltd. v. CTV Television Network Limited (SCC 1968).................................................................................................................................38

Songs............................................................................................................................................................ 39History of Parody.....................................................................................................................................39ATV Music Publishing of Canada, Ltd. v. Rogers Radio Broadcasting Ltd. (OGD 1982). .40

Arrangements........................................................................................................................................... 40Wood v. Boosey (UK 1868)...................................................................................................................40

Establishing Copyright/Proving Infringement............................................................................41Grignon v. Roussel (FCTD 1991)........................................................................................................41Drynan v. Rostad (OSC 1994).............................................................................................................42

CHAPTER 6: Artistic Works................................................................................................................. 44Selected Definitions (s 2).................................................................................................................... 44Meaning of Artistic................................................................................................................................. 44

George Hensher Limited v. Restawile Upholstery (Lancs) Limited (UK 1975)...................44Artistic-ness? [requirement option 1 when dealing with artistic crafsmanship work + no plans available]................................................................................................................. 45

DRG Inc. v. Datafile (FCTD 1987).......................................................................................................45Lifestyle Homes Ltd. v. Randall Homes Ltd. (MCA 1991)..........................................................46

Artistic Craftsmanship...................................................................................................................... 46George Hensher Limited v. Restawile Upholstery (Lancs) Limited (UK 1975)...................47


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Architectural Works............................................................................................................................ 47Hay and Hay Construction v. Sloan...................................................................................................47

Other Specified or Numerated Categories...............................................................................48Netupsky v. Dominion Bridge Co. Ltd. (BCCA 1969)...................................................................48

Plans - Copying in Any Other Material Form (3d 2D) [requirement option 2 when dealing with artistic crafsmanship work]........................................................................49

Preston v. 20th Century Fox Canada Limited (FCA 1994).........................................................49LB (Plastics) Limited v. Swish Products Limited (UK 1977).......................................................49Bayliner Marine Corporation v. Doral Boats Ltd. (FCTD 1985)................................................50British Leyland (UK 1986).....................................................................................................................50

Exceptions to Infringement (s 64 and 64.1)...............................................................................51Kenrick & Co. v. Lawrence & Co. (UK 1890)...................................................................................52Cuisenaire v. South West Imports Ltd. (ExCt 1968)....................................................................52Bayliner Marine Corporation v. Doral Boats. Ltd..........................................................................52Magasins Greenberg Ltee v. Import-Export Rene Derhy (FCTD 1995).................................53

CHAPTER 7: Compilations and Databases..............................................................................54CHAPTER 8: Economic Rights, Infringement and Defences......................................54Introduction: The Scope of Economic Rights..............................................................................54

Works Under s. 5: Literary, Dramatic, Musical, and Artistic...........................................54Subject Matter Protected by Neighbouring Rights (Other Subject-Matter)............54

Performer’s Performances.......................................................................................................... 54Sound Recording Makers............................................................................................................. 55Broadcaster’s Communication Signals..................................................................................55

Rental Rights......................................................................................................................................... 55Notes......................................................................................................................................................... 55

Reproduction............................................................................................................................................. 55Nichols v. Universal Pictures Corporation.......................................................................................56Preston v. 20th Century Fox Limited................................................................................................56Hanfstaengl v. Empire Palace.............................................................................................................56Roger v. Koons..........................................................................................................................................57

Substantiality........................................................................................................................................ 57Quantitatively Substantial.......................................................................................................... 57

Hawkes & Son (London) Ltd. v. Paramount Film Service, Ltd..................................................57Qualitatively Substantial.............................................................................................................. 58

Breen v. Hancock House Publishers Ltd..........................................................................................58Hutton v. Canadian Broadcasting Corporation..............................................................................58Prism Hospital Software v. Hospital Medical Records Institute...............................................58

Performance in Public........................................................................................................................... 59Performance.......................................................................................................................................... 59

Canadian Cable Television Association v. Copyright Board (Canada)..................................59“In Public”.............................................................................................................................................. 59

Jennings v. Stephens..............................................................................................................................59Francis, Day & Hunter Ltd. v. Twentieth Century Fox Corp. Ltd.............................................60Canadian Admiral Corporation, Ltd. v. Rediffusion, Inc.............................................................60Canadian Cable Television Association v. Copyright Board (Canada)..................................60

Authorisation............................................................................................................................................ 60


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University of New South Wales v. Moorhouse...............................................................................60CBS Songs Ltd. v. Amstrad Consumer Electronics Plc................................................................61Muzak Corporation v. Composers, Authors & Publishers Association of Canada Ltd......61de Tervagne v. Beloeil...........................................................................................................................61

Specific or Enumerated Rights.......................................................................................................... 62Communication to the Public by Telecommunication.........................................................62Presentation at a Public Exhibition.............................................................................................63

From Gutenberg to Telidon: A White Paper on Copyright, Proposals for the Revision of the Canadian Copyright Act................................................................................63A Charter of Rights for Creators: Report of the Sub-Committee on the Revision of Copyright........................................................................................................................................ 63

Infringement.............................................................................................................................................. 63Parallel Importation of Books........................................................................................................ 64Infringement Generally..................................................................................................................... 64

Primary Infringement.................................................................................................................... 64Secondary Infringement............................................................................................................... 64

Exceptions, Defences, and Fair Dealing.......................................................................................65Sony Corp. v. Universal City Studios, Inc........................................................................................65

Making One Entire Copy................................................................................................................... 65Copying Unpublished Works.......................................................................................................... 65

Allen v. Toronto Star Newspaper Ltd................................................................................................65Television New Zealand v. Newsmonitor Services.......................................................................66MCA Canada Ltd. v. Gillberry & Hawke Advertising Agency Ltd.............................................66

CHAPTER 9: Moral Rights.....................................................................................................................67Snow v. The Eaton Centre Ltd............................................................................................................67Prise de parole Inc. v. Guérin, éditeur Ltée....................................................................................67John Maryon International Ltd. v. New Brunswick Telephone Co. Ltd. (plaintiff)..............68

CHAPTER 11: A Note on Unfair Competition.........................................................................70Mogul Steamship Co. v. McGregor, Gow & Co..............................................................................70Moorgate Tobacco Co. Ltd. v. Philip Morris Ltd.............................................................................70International News Service v. Associated Press...........................................................................70

CHAPTER 12: Passing Off..................................................................................................................... 71Introduction............................................................................................................................................... 71

The Common Law Tort....................................................................................................................... 71Perry v. Truefitt........................................................................................................................................71Walker v. Alley..........................................................................................................................................71A.G. Spalding & Bros. v. A.W. Gamage Ltd....................................................................................71Reckett & Colman Products Ltd. v. Borden Inc.............................................................................71Cadbury Schweppes Pty. Ltd. v. Pub Squash Co. Pty. Ltd.........................................................72

The Statutory Tort.............................................................................................................................. 72Asbjorn Horgard A/S v. Gibbs/Nortac Industries Ltd...................................................................72

Elements of Passing Off: Reputation.............................................................................................72Protectable Goodwill.......................................................................................................................... 72

Shared Goodwill............................................................................................................................... 72Erven Warnink..........................................................................................................................................72


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Institut National des Appellations d’Origine des Vins et Eaux-de-Vie et al. v. Andres Wines Ltd. et al........................................................................................................................................73Dairy Bureau of Canada v. Annable Foods Ltd.............................................................................73

Foreign Goodwill.............................................................................................................................. 73Common Law...............................................................................................................................................73Orkin Exterminating Co. Inc. v. Pestco Co. of Canada Ltd. et al.............................................73

Statute...........................................................................................................................................................74Enterprise Rent-A-Car Co. v. Singer..................................................................................................74

Non-Commercial Goodwill............................................................................................................ 74Polsinelli v. Marzilli..................................................................................................................................74

Indicia....................................................................................................................................................... 74General Proof of Distinctiveness..............................................................................................74

Oxford Pendaflex Canada Ltd. v. Korr Marketing Ltd.................................................................74Ray Plastics Ltd. et al. v. Dustbane Products Ltd.........................................................................74Robinson v. Bogle - the Belleville College Case............................................................................75

Secondary Meaning........................................................................................................................ 75Descriptiveness..........................................................................................................................................75Reddaway (Frank) & Co., Ltd. v. George Banham & Co., Ltd. - (the Camel Hair case)...75

Genericness.................................................................................................................................................75Grand Hotel Company of Caledonia Springs, Ltd. v. Wilson.....................................................75

Get-Up – Packaging, Premises...............................................................................................................75Reckitt & Colman Products Ltd. v. Borden Inc..............................................................................75

Get-Up - Wares...........................................................................................................................................76Eli Lilly and Co. v. Novopharm Ltd.....................................................................................................76

Range of Indicia................................................................................................................................... 76Verbal.................................................................................................................................................... 76Visual..................................................................................................................................................... 76Fictional Character.......................................................................................................................... 77

Loss of Reputation.............................................................................................................................. 77Abandonment.................................................................................................................................... 77

Ad-Lib Club Limited v. Granville.........................................................................................................77Becoming Generic............................................................................................................................ 77

Institut National des Appellations d’Origine des Vins et Eaux-de-Vie et al. v. Andres Wines Ltd. et al........................................................................................................................................77

Elements of Passing Off: Misrepresentation..............................................................................78Proof of Misrepresentation............................................................................................................. 78

Factors.................................................................................................................................................. 78Institut National des Appellations d’Origine des Vins et Eaux-de-Vie et al. v. Andres Wines Ltd. et al........................................................................................................................................78

Common Field of Activity............................................................................................................. 78McCulloch v. Lewis A. May (Produce Distributors) Ltd...............................................................78Krouse v. Chrysler Canada Ltd...........................................................................................................78Young v. Scot Young Ltd.......................................................................................................................78

The Test Person................................................................................................................................ 79Ciba-Geigy Canada Ltd. v. Apotex Inc. & Ciba-Geigy Canada Ltd. v. Novopharm Ltd... .79Mr. Submarine Ltd. v. Emma Foods Ltd...........................................................................................79


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Types of Misrepresentation............................................................................................................ 80Source or Quality............................................................................................................................. 80

Consumers Distributing Co. v. Seiko Time Canada Ltd..............................................................80Disney Case...............................................................................................................................................80

Elements of Passing Off: Damage...................................................................................................80Generally................................................................................................................................................. 80Heads of Damage................................................................................................................................ 81

Direct Loss of Trade....................................................................................................................... 81Damage to Repute........................................................................................................................... 81Harmful Association....................................................................................................................... 81

Annabel’s (Berkely Square) Ltd. v. Schock.....................................................................................81Loss of Licensing or Franchising Opportunity....................................................................81

House of Faces Inc. v. Leblanc............................................................................................................81Inability to Expand.......................................................................................................................... 81

Dilution..................................................................................................................................................... 81Harrods Ltd. v. Harrodian School Ltd...............................................................................................81

Defences...................................................................................................................................................... 82Unclean Hands...................................................................................................................................... 82

Brewster Transport Company, Ltd. v. Rocky Mountain Tours and Transport Company, Ltd.................................................................................................................................................................82

Use of One’s Own Name................................................................................................................... 82The Hurlburt Company v. The Hurlburt Shoe Company.............................................................82Biba Group Ltd. v. Biba Boutique.......................................................................................................82Mario’s Spaghetti House & Pizzeria Ltd. v. Italian Village Ltd.................................................83

“Honestly Using”............................................................................................................................. 83Hunt’s Ltd. v. Hunt..................................................................................................................................83

Concurrent or Prior Use.................................................................................................................... 83J. & A. McMillan Ltd. v. McMillan Press Ltd......................................................................................83Fraser Taxi Ltd. v. Reid..........................................................................................................................83

Disclaimers............................................................................................................................................. 83Associated Newspapers Group v. Insert Media Ltd.....................................................................83Home Shoppe Ltd. v. National Development Ltd.........................................................................84

CHAPTER 13: Registered Trademarks........................................................................................85Introduction............................................................................................................................................... 85

Development......................................................................................................................................... 85Definition of Trademark................................................................................................................... 85

Playboy Enterprises Inc. v. Germain.................................................................................................85Central Concepts................................................................................................................................. 85

Use.......................................................................................................................................................... 85Confusion............................................................................................................................................. 85Distinctiveness.................................................................................................................................. 86

Assignment and Licensing of Trademarks...............................................................................86Unfair Competition and Prohibited Marks...............................................................................86Protected Geographical Indications...........................................................................................87The Registration Process................................................................................................................. 87

Registrability............................................................................................................................................. 87


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Ordinary Trademarks......................................................................................................................... 87Barriers to Registration................................................................................................................ 87a) Names or Surnames............................................................................................................................87Standard Oil Co. v. Registrar of Trade Marks.................................................................................87

b) Descriptiveness.....................................................................................................................................88Drackett Co. of Canada Ltd. v. American Home Products Corp..............................................88Home Juice Co. v. Orange Maison Ltée............................................................................................88

c) Genericness............................................................................................................................................88Wool Bureau of Canada Ltd. v. Bruck Mills Ltd.............................................................................88Brûlerie Des Monts Inc. v. 3002462 Canada Inc...........................................................................88

d) Confusion with Registered Trademarks........................................................................................88United Artists Corp. v. Pink Panther Beauty Corp........................................................................89Mattel, Inc. v. 3894207 Canada, Inc.................................................................................................89Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée..................................................................89

s. 22 - alternative remedy to confusion.............................................................................................89Exceptions........................................................................................................................................... 90a) Acquired Distinctiveness....................................................................................................................90b) Marks Registered Abroad: s. 14.......................................................................................................90c) Associated Marks: s. 15......................................................................................................................90d) Disclaimer: s. 35...................................................................................................................................90Canadian Jewish Review Ltd. v. Registrar of Trade Marks........................................................90Cooper v. Mark’s Work Wearhouse Ltd............................................................................................91

Distinguishing Guise: s. 13............................................................................................................. 91Dominion Lock Co. Ltd. and Independent Lock Co. v. Schlage Lock Co...............................91

Certification Marks: s. 23................................................................................................................. 91


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PART I: COPYRIGHT LAW

CHAPTER 1: INTRODUCTION

INTRODUCTION

Copyright Act, RSC 1985, c. C-42 o “ … copyright shall subsist in Canada, for the term hereinafter mentioned, in every

original literary, dramatic, musical and artistic work …” (s. 5). These are works.o "other subject-matter”

Undefined terminology used in the act (s. 2.2(3)). Is used as a catch-all when certain works do not cleanly fit into LDMA, but should have copyright, or have allegedly been infringed upon.

Specific copyright is given to: performers' performances (s. 15 and 26) sound recordings (s. 18) broadcasters' communication signals (s. 21)

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

o Moral rights (s. 14.1, 14.2, 28.1, 28.2) apply to "works", but not "other subject-matter".

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

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

work is part of the personality of the author and remains linked to him"o Therefore it is a natural and therefore individual right and can only originate in an

individual and not in a company or corporation".o Copyright lacks this recognition of the close personal link with the author and the

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

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

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

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

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

nature of "other subject matter". Even a cinematographic work (under dramatic work) that does not feature "an

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


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

o Moral rights, or droit moral (significant part of droit d'auteur) have also been adopted in many jurisdictions, (including Canada since 1931), but applies only to "works". See s. 14.1(1) which establishes moral rights for "the author of a work". An author

cannot assign or alienate moral rights, at least inter vivos. Testamentary and intestate succession is provided for in s. 14.2(2).

SUMMARY OF THE COPYRIGHT ACT

Works (Literary, Dramatic, Musical, Artistic) are given copyright protection and full moral rights s 14.1 for the life of author plus 50 years (s. 6)

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

INTERNATIONAL TREATIES

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

Berne Principleso Universal protection throughout member countries by either being a national or

having a habitual residence in a member country, or by causing the work to be first published in a union country.

o "National Treatment" whereby nationals of a country of the union shall enjoy in other countries of the union the same rights that copyright law provides to that country's own nationals, as well as the rights specially granted by the Berne Convention.

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

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

Universal Copyright Convention States can retain specified formalities as prerequisites for gaining copyright

protection. States can retain a term of protection defined by reference to a term of years

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

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


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Copyright Act today uses the s. 5 expression "treaty country" with regard to international

protection and in s. 2 defined treaty country as a "Berne Convention country, UCC country, or WTO member"o Key requirements of the WTO concerning IP as set out in the TRIPs agreement:

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

Producers of Phonograms and Broadcasting Organizations, adopted at Rome on October 26, 1961.

WTO Agreement: The agreement establishing the WTO (namely, the Agreement Establishing the WTO drawn at Marrakech on April 1, 1994)

World Intellectual Property Organisation (WIPO)o Two treaties adopted in diplomatic conference:

WIPO Copyright Treaty WIPO Performers and Phonograms Treaty

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

UNDERLYING THEORY

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

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

Leading theory on copyright today is pragmatic school:o CR should be determined by statute + the interests of those involved (emphasis on

public interest)o Pragmatic analysis of these interests leads one to express the rights granted in terms

of exclusive rights of authors.o Concern with the underlying social philosophy of copyright law is unwarranted unless

different theories lead to different conclusions. The US is more based on a social contract theory. Article 1 §8 if the Constitution

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

BOUNDARIES OF COPYRIGHT

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

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

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

the public domain.


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

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

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

o Examples: Square: Concepts that can only be expressed in a certain number of ways Spreadsheets: More complicated but still routine, a form with spaces for name,

address, phone, etc Compilations of facts: information or data, presented in a routine (e.g.

alphabetical) Non-distinctive routine instructions: such as "follow the clinic procedure for

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

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

RELATED STATUTE

Federal jurisdiction granting CR granted through:o Constitution Act:

s. 91(2) – Trade and Commerce (federal) s. 91(22) - Patents of Invention and Discovery (federal) s. 91(27) – Criminal Law (federal) s. 92(13) – Property & Civil Rights (provincial) s. 132 – Treaty Implementation powers (federal)

o Criminal Code s. 406-414 – Forgery of Trade-marks and Trade Descriptions


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CHAPTER 2: BASIC ELEMENTS OF COPYRIGHT LAW

QUALIFYING FOR COPYRIGHT (OVERVIEW)

To qualify for copyright under the Copyright Act, RSC 1985, c. C-42 to apply, you must:

1. Be a citizen, subject, or ordinarily resident person in Canada (/treaty country) (s. 5(1)(a))

In the case of cinematographic work: (s. 5(1)(b)) If a corporation created it, they must be headquartered in

Canada (/treaty country) at time of making If a natural person created it, be a citizen, subject or ordinarily

resident2. Have the work first published in Canada (/treaty country) or published there

within 30 days from publication in non-treaty country (s. 5(1.1)) in relation to subparagraph 2.2(1)(a)(i) (“publication is making copies

of the work available to the public”), the first publication in such quantity as to satisfy the reasonable demands of the public, having regard to the nature of the work, occurred in a treaty country, or (s. 5(1)(c)(i))

In relation to subparagraph 2.2(1)(a)(ii) or (iii) (“publication is construction of an architectural work, or incorporation of the artistic work into the architectural work”), the first publication occurred in a treaty country(s. 5(1)(c)(ii)).

Historyo Prior to amendments to the Copyright Act effective from January 1, 1994, Canada

may not have been in compliance with the Berne and Universal Copyright Conventions.

o The requirements of the Berne and UCC oblige Canada to go further than the present law, in order to protect works of creators of convention countries regardless of the country of first publication of the work and works of non-convention nationals first published in a convention country. In addition, equity dictates that all works created while an author was domiciled or resident in Canada should receive protection.

o In addition to statutory backing, the common law states that: for copyright subsists in a work created by a citizen of a foreign country (per the Berne convention), the author must be a citizen of that foreign country and published the work in that foreign country (Milliken)

Explanationo s. 5 of the Copyright Act, prior to January 1, 1994, required in the case of a published

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

of Berne Convention countries outside of the commonwealth.o The Berne Convention 1928 covers citizens or residents of Berne Convention

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


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Mascot International v. Harman Investments Ltd. (FCTD 1993)

Facts: o Plaintiffs allege copyright infringement on "ornamental items each of which features

an animal or insect made of gold plated metal and crystal"o Plaintiffs provided copies of the certificates of copyright registration.

Defendants said that didn't show that they were first published in a convention country

Issue: o Did the plaintiff have to prove that their work was published in a treaty/convention

country? Held:

o No Ratio:

o There is a presumption that copyright requirements of s. 5 are met unless proved otherwise. s. 5 requirements: (1) an author is a citizen, (2) the work was published

o This ratio is statutorily backed up by s. 34.1(1)(a)-(b)

PUBLICATION

Statutory Provisionso s. 3(1) provides as an economic right of copyright the right "to publish the work or

any substantial part thereof"o s. 2.2(1) defines publication:

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

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

telecommunication, of a literary, dramatic, musical or artistic work or a sound recording, or

the exhibition in public of an artistic work.

Oscar Trade Mark (UK 1980)

Facts: o Application was made for registration as a trademark the word "Oscar" adjacent to a

silhouette of an Oscar statuette, for radio, television and recording apparatus and record players, tape recorders and cassettes.

o Registration was opposed by the Academy of Motion Picture Arts and Sciences, who claimed that they had a copyright in the Oscar statuette as an artistic work

Issue: o Had the Academy of Motion Picture Arts and Science published the statuettes, thus

giving them copyright protection of them?


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Held:

o Issuing statuettes to only a small limited and controlled group was not considered “publication”.

Reasons: o The statuettes were not issued to the public, and the issuance was limited and

controlled. Ratio:

o To publish is to make available “to the public” This is now statutorily backed by s. 2.2(1)

o The size/selectiveness of the group may be a determination of whether the group is “public”

Infabrics Ltd. v. Jaytex Ltd. (UK 1981)

Facts: o Plaintiff’s alleged infringement of copyright by "publication" of a fabric design for use

in manufacturing shirts.o Plaintiffs had previously published the design.o The defendant had used the design for the manufacture of shirts in Hong Kong for

shipment to the UK.o Defendant submitted that in copyright law, publication meant making available to the

public copies of a work previously unpublished. Issue:

o Was the sale in the UK of the shirts of the design constituted a "publication" of copyright?

Held: o The defendant’s manufacturing and shipment for sale in the UK constituted a

publication which made copies to the public, infringing upon the plaintiff’s published work.

Reasons: o "The acts of importation and sale constituted infringement by publishing”, referred to

s. 3(1) exclusively, stating that the publication was enough to constitute infringement, regardless of whether it was to the public. This was overturned later, where it was ruled that "publication" meant making available copies to the public as per s. 2.2(1).

Ratio: o A “publication” makes the work available to the public, even if the work was already

previously available to the public. o Appearance of compromise between s. 3(1) (simply need to prove there was a

“publication”), and s. 2.2(1) (there needs to be a publication to the public), with weight given to the aspect of public.

Robert D. Sutherland Architects Ltd. v. Montykola Investments Inc. (1995)

Facts: o Plaintiff had authored a development plan for a residential development. They

"formed part of the town's resolution" in building new part of town.


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o The plan fell through. A different developer purchased the land at a higher price. Copies of the development plan appeared "anonymously" at public registrar,

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

Issue: o Did the defendant owners of the land infringe on the copyright of the plaintiff’s plan

by attaching Held:

o The defendant infringed on the copyright of the plaintiff’s plan by attaching the plans to a contract in a public registrar

Reasons: o The fact that the plan was not used in the actual construction is relevant to the

question of damages, but does not take away from the fact of use.o It wasn't the construction of the buildings that breached the copyright; it was the use

of the plans in the development agreement. Obiter:

o The plans fell under the definition of artistic work.o The Sutherland plan was designed specifically for the lot of land in question,

therefore unique.o The copyright was restricted to the plan itself, and not a development agreement

with the town. Only Sutherland had the right to reproduce the plan

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

Ratio: o The act of “making public” is enough to amount to publication. o Publication has a low threshold and is not restricted by a concept of

“public” being of a sufficient quantity.

CORPOREAL AND INCORPOREAL

re Dickens; Dickens v. Hawksley (UK 1935)

Facts :o Novelist Charles Dickens died in 1870, gave all his private papers to his sister-in-law,

Hogarth.o Residuary estate, including his copyrights, was given to trustees for the benefit of

residual legatees, Hogarth and Forster.o Property included an unpublished manuscript, entitled variously as "The New

Testament" among other titles. Written for the instruction of his children and not intended to be published. Determined to be amongst Dickens' "private papers" and to have passed to

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

Hogarth and Forster.


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

Issue o Was there copyright infringement?

Held: o Copyright was infringed.

Reasons: o Copyright in an unpublished work was an incorporeal right of property, which

subsisted independently of the actual manuscript. Just because it was held by the trustee, did not mean the trustee had copyright/moral right.

Ratio: o Copyright is incorporeal. Transferring the physical work does not necessarily transfer

the copyright nor moral right.

FIXATION

Canadian Admiral Corporation Ltd. v. Rediffusion, Inc. (ExCt 1954)

Ratio: o For copyright to exist in a "work" it must be expressed to some extent at least in

some material form, capable of identification and having a more or less permanent endurance (interpreted from s. 2 and 3) All the works included in the definitions of "artistic work" and "literary work" must

be printed, reduced to writing or otherwise graphically produced or reproduced. Likewise, in regard to "dramatic works" there is the requirement that the scenic

arrangements or acting form must be fixed in writing or otherwise. Cinematographic productions, which are also dramatic works, are obviously

"fixers otherwise" since they involved the making of films.

Gould Estate v. Stoddart Publishing Co. Ltd. (OGD 1996)

Facts: o Gould, a young concert pianist, was interviewed for an article by Carroll.o Talked on a variety of occasions and in numerous venues. o Over this time, Carroll took approximately 400 photos of Gould, copious notes, and

some tape-recordings of their conversations. Some of these photos, notes, etc, were used in the article.

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

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

Issue: o Did Gould (and now his estate) have copyright in the oral conversations, which

occurred between himself and Carroll and form the essence of the text in the book in question?

Held:


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o Gould did not have copyright over the spontaneously made oral conversation Reasons:

o s. 2 discusses lectures, further defined as including "address, speech and sermon".o For copyright to subsist in a work, it must be expressed in material form and having a

more or less permanent endurance (Canadian Admiral Cord v. Rediffusion).o A person's oral statements in a speech, interview or conversation are not recognized

in that form as literary creations and do not attract copyright protection (Walter v. Lane). The person who makes notes or report of the speech is the author of the report

and obtains copyright in the report.o In Canada it relies often on the concept of fixation and who has affixed the "work".

In the US, fixation is the subject of a statutory definition: …sufficiently permanent or stable to permit it to be perceived, reproduced, or

otherwise communicated for a period of more than transitory duration. A work consisting of sounds, images, or both, that are being transmitted, is "fixed for purposes of this title if a fixation of the work is being made simultaneously with its transmission".

o Counter-arguments/exceptions: Exception for a scribe, merely writing an article from dictation (Walter v. Lane) Excerpt from Falwell v. Penthouse sayings that Falwell's claim of copyright

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

Ratio: o Spontaneous speeches are not copyrightable, but the one who affixes the speech

gains copyright

"A Charter of Rights for Creators" re issue of Fixation

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

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

Suggestion was that it should take into account all forms of material media, even those that do not exist at present—Consider how information is kept and the internet.

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

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

ORIGINALITY/EXPRESSION/IDEA

University of London Press, Ltd. v. University Tutorial Press, Ltd. (UK 1916)

Facts:


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o Defendant used the plaintiff’s “same old math problems” from exams to create a published document which included the math questions and some criticisms on the manner in which the papers had been set.

Issue : o Was the published document, within the meaning of the Act, original literary works?

Held: o The published document was an original literary work.

Reasons: o The work only needed to be an original expression of thought—not necessarily

inventive. Therefore, could use the same math questions. o Doesn't require knowledge that is unique to only the authoro Does require that some creative input, skill, labour and judgement

Time expended can't be the test, or else a poem written quickly wouldn't be able to get copyright.

o Must originate from the author, not copied from another source. Obiter:

o In the judge's view, literary work covers work which is expressed in print or writing, irrespective of the question whether the quality or the style is high (literary works defined in s. 2)

Ratio: o A work may be copyrightable if it originates from an author who has

exercised some form of skill and judgement of the material, regardless of how unoriginal the material being worked upon is.

o Without the skill and judgement, it may be simply and idea/fact, not an expression.

Fletcher v. Polka Dot Fabrics Ltd. (O(ther) G(overnment) D(epartment) 1993)

Facts: o Plaintiff made patterned diaper. Defendant made a patterned diaper, not

the same, but similar to the plaintiff’s. Plaintiff claimed infringement on her patterned diapers.

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

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

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

believed her pattern to have been copied and brought proceedings for infringement of her copyright.

Issue: o Had the defendant infringed upon the copyright of the patterned diaper?

Held: o There was a copyright infringement on the patterned diaper.

Reasons:


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o Copyright protected the expression of ideas (the patterned diaper), not the ideas themselves (designed diapers)

o Plaintiff's work is both literary and artistic, and has material form.o The Snappy Nappy was the result of the plaintiff's personal labour.

Ratio: o An idea is not copyrightable, only the expression of the idea.

Boutin v. Bilodeau (QCA 1992)

Facts: o The respondent created scratch lottery tickets and had copyright for the

literary work. Plaintiff entered the market with similar scratchcards. Proceedings commenced.

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

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

o In Oct 1984 the respondent obtained copyright of these tickets registered as a literary work.

o In 1986 Boutin decided to go into that same market and created lottery tickets as well. Once informed, the respondents reacted strongly, asking Boutin’s clients not to

use him. Initial ruling found the appellants liable for infringement.

Issue: o Did the Defendant’s lottery tickets infringe on the Plaintiff’s copyright?

Held: o QCA: There was no copyright infringement. The idea was the same, but there was a

different expression.o SCC: Non-literal copyright infringement because it was lacking in sufficient objective

originality. Reasons:

o For liability to exist, not enough that Boutin borrowed an idea. It has to be shown that the infringing work copies the original such that anyone who sees it is given the same idea as that given by the original (King Features Syndicate Inc. v. Lechter)

o Access: In this case, condition is undoubtedly met.o Sufficient objective similarity:

Same number of squares, placed in an identical way. Words on the two tickets are very similar. Looking at the originals, different size, construction, colour, and general

appearance are different. Ratio:

o To determine whether there is a copying, determine whether there was:1. Access: There needs to be a link between the copy and the original so that it may

be established that the original was the source of the copy2. Similarity/Substantial copying: There must be a sufficient objective similarity

between the original and the copy to be considered a reproduction or adaptation. It does not need to be perfectly identical.


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And idea is not copyrightable, only the expression.

Baker v. Selden (US 1880)

Facts: o Selden obtained the copyright of several books, published the “new bookkeeping

system”. Defendant also claimed copyright in the bookkeeping system described in the book.

o Plaintiff brought action against the defendant for an alleged infringement of his bookkeeping system.

Issue: o Did the defendant have copyright over the books? o Was there a copyright over the bookkeeping system?

Held: o There was copyright in the books. o There was no copyright in the bookkeeping system. The defendant could not infringe

upon the plaintiff Reasons:

o The bookkeeping system did not meet the threshold of expression. They were only forms. Would have been better suited getting a patent over the system.

Ratio: o There is no copyright over forms. They are a merged concept of idea and expression.

CCH Canadian Ltd. v. Butterworths Canada Ltd. (2004)

o Facts: The plaintiff and the defendant corporations carried on business in Canada as

publishers of business and legal texts. Their works had the titles, “The Access Letter” and “Access to Canadian Income Tax”

o Issue: Was the title original, and thus copyrightable?

o Held: Yes. There was a sufficient amount of skill and judgement.

o Reasons: Skill and judgement are more in between sweat of the brow and creativity and

novelty. Skill: the use of one’s knowledge, developed aptitude or practiced ability in

producing the work. Judgement: the use of one’s capacity for discernment or ability to form an

opinion or evaluation by comparing different possible options in producing the work.

Reluctant to use creativity as a basis for originality. Would allow argument that novelty originality

Sweat of the brow would ineffective when applied to compilations.o Ratio :

In assessing originality, novelty has no place in copyright.


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CHAPTER 3: LITERARY WORKS

s. 2 - “every original literary, dramatic, musical and artistic work”

“every original literary, dramatic, musical and artistic work” includes every original production in the literary, scientific or artistic domain, whatever may be the mode or form of its expression, such as compilations, books, pamphlets and other writings, lectures, dramatic or dramatico-musical works, musical works, translations, illustrations, sketches and plastic works relative to geography, topography, architecture or science;

GENERAL MEANING

s 2 of the Copyright Act defines literary work to include:o tables, computer programs, and compilations of literary works

University of London Press Ltd. v. University Tutorial Press, Ltd. (UK 1916)

Held: o The published math book, despite using the plaintiff’s same math questions, was a

literary work. Reasons:

o "The word 'literary' seems to be used in a sense somewhat similar to the use of the word 'literature' in political or electioneering literature and refers to written or printed matter."

o "Papers set by examiners are, in my opinion, literary work, within the meaning of the present Act”

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

Ratio: o Any written or printed matter is a “literary work”. You do not need to consider

whether it is “true literature”.

Hollinrake v. Truswell (UK 1894)

Facts: o Plaintiff claimed copyright protection in a "sleeve-chart" designed to be used in

dressmaking. A piece of cardboard curved to resemble parts of an arm and depicted phrases

and measurement scales to be followed when using the chart. Had certain descriptive words, and measurement labels.

Issue: o Was the sleeve-chart a literary work?

Held: Reasons:


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o "Literary work is intended to afford either info and instruction or pleasure in the form of literary enjoyment." The sleeve-chart did not fulfill any of these purposes. Sleeve gives us no information or instruction, doesn't add to the stock of human

knowledge and doesn't give any instruction. Doesn't afford any pleasure or enjoyment

o Proceedings at time were under Literary Copyright Act in the UK, at the time they would have been "literary work" in Canada, until Copyright Amendment Act 1988 and would now be known as an artistic work.

o Said it is a mechanical contrivance, appliance or tool.o Should have been a patent for an invention.

Ratio: o Literary work must offer information or instruction (informative value), or pleasure in

the form of literary enjoyment (aesthetic value)

The Bulman Group Ltd. v. Alpha One-Write Systems BC Ltd. (FCA 1981)

Facts: o Plaintiffs claimed copyright in seven business forms constituting an overall

accounting system that avoided the necessity of repeating entries in subsequent accounting documentation.

Issue: o Could the business forms be copyrighted?

Held: o Trial: Business forms were copyrightable o Appeal: The business documents were not a literary work within the meaning of the

Copyright Act and therefore were not copyrightable. Reasons:

o Trial Judge: Found sufficient originality skill and labour required to render the work in issue

capable of being copyrighted. Settled law that the literary merit of a work need not be high and indeed might be

minimal or non-existent, especially in the case of a compilation.o Appeal: Despite originality, skill and labour, did not have sufficient aesthetic or

informative value Ratio:

o The informative value provided by a literary work must have some function of assisting, guiding, or pointing the way to some end

Exxon Corporation v. Exxon Insurance Consultants International Ltd. (UK 1982)

Facts: o Plaintiff had invented the name Exxon.

Issue: o Could a single word be copyrighted as a literary work?

Held: o A single word is not a literary work that is copyrightable

Reasons:


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o Didn’t convey any informative value or aesthetic value. Simply served purpose of juxtaposing other English words.

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

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

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

Ratio: o A single word is not copyrightable as a literary work, and is more suited under

trademarks

British Columbia v. Mihaljevic (BCSC 1989)

Facts: o Plaintiff had registered trademark in “Expo ‘86” on Sep 1985o Defendant designed logo with the words Expo 86 on them on Aug 1985. Claimed that

he had copyright in the work prior to the province’s registration of the trademark Issue:

o Did the defendant design a logo that was a copyrightable literary work, allowing them to stop the plaintiff from using their mark?

Held: o The defendant’s logo was not copyrightable as a literary work.

Reasons: o Defendant has failed to establish a causal connection between the plaintiff's designs

and the copyrighted designs.o The common elements are Expo and Expo 86, though a prominent part of the

defendant's designs, these marks alone do not constitute a "substantial part" of the designs.

o None of the plaintiff's designs reproduce any of the defendant's graphic representations of the marks. For the defendant to succeed, would have to prove copyright in word Expo or

Expo 86. In order to gain exclusive use of a word or name, one must turn to the law of

trade marks. Ratio:

o When determining whether a piece is a literary work that may be copyrightable, consider whether the plaintiff seeks to protect the expression of words (Copyright, to prevent plagiarism), or simply the use of them (as Trademark does).

Via Rail Canada Inc. v. Location Via-Route Inc. (QCA 1992)

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

its corporate logo.


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o From May 87, the defendant used the design trademark VIA ROUTE for its business of automobile and truck rentals.

o The plaintiff claimed infringement of both its trademark and its copyright for Via Issue:

o Did the Plaintiff have a copyrightable literary work in the word “Via”? Held:

o Via was not copyrightable as a literary work. Reasons :

o Previously established that the copyright registration certificate covered an artistic work entitled "via" (the logo).

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

protected by the registration.o Copyright Act doesn't protect the idea itself but simply the expression of it.o Common word, in English and French.

Ratio: o The Copyright Act protects the expression of an idea (Via artwork), not the idea itself

(one word, “Via”)

TITLES

McIndoo v. Musson Book Co. (OCA 1915)

Facts: o Plaintiff published a book entitled the New Canadian Bird Book. o Defendant's book on the same subject was entitled the Canadian Bird Book.o Plaintiff's book was released in the market three or four months prior to the

defendant's book.o The plaintiff claimed breach of copyright in the title and passing off.

Issue: o Was the title of the book copyrightable as a literary work?

Held: o The title was not copyrightable

Reasons: o "There cannot in general be any copyright in the title or name of a book" (Dicks v.

Yates)o No right by reason of his copyright to prevent the publication and sale of the

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

o Titles are not copyrightable

Francis, Day & Hunter Ltd. v. Twentieth Century Fox Corp. Ltd. (PC 1939)

Facts: o One of the issues concerned whether there was copyright in the title of the plaintiff’s

song “The Man Who Broke the Bank at Monte Carlo”.o Defendants had produced a motion picture under that title.


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Issue:

o Was the title of the song copyrightable? Held

o No Reasons

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

entitled Adam as well. Part of the reason why, in general, a title is not by itself a proper subject-matter

of a copyright.o Further argued by the plaintiffs that s. 2 of the Canadian Act of 1921 (amended in

1931) extended work to include the title thereof when such title is original and distinctive. Didn’t think that for the purposes of this case the amendment had changed the

law.o Reasoned that the definition mean that the title of a work is to be deemed to be a

separate and independent “work”. Work is to include “the title thereof” - the title is treated as part of the work, so

long as it is original and distinctive. Ratio:

o A title cannot be considered a “substantial part” (ie. Similarly copied) of the work alone. The title can only be considered copyrightable as part of the larger work if it is distinctive.

Canadian Olympic Association v. Konica Canada Inc. (FCA 1991)

Facts: o Plaintiff held official marks in Olympic, Summer Olympics, Winter Olympics.o Guinness licensed to Konica Canada the exclusive right to public and distribute in

Canada a premium edition of the book of Olympic records. Issue:

o Was the “Olympic” title copyrightable? Held:

o No Reasons:

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

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

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


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o Registration of a copyright in a work cannot be used as a basis to restrain another from using the title as a trademark. (CCH Canadian Ltd. v. Butterworths Canada Ltd.) Therefore, the defendant’s copyright is not a bar to a passing-off action by the

plaintiff. Ratio:

o Different rights are conferred by copyright and trademark. One can potentially have both for one work.

TRANSLATIONS

In 1988, s.2 of the Copyright Act was amended to include “translations” in the definition “literary work”.

In 1994, this reference was deleted and reference to “translations” was inserted in the definition of the broader expression “every original literary, dramatic, music and artistic work” in s 2 of the Act.

Therefore, the concept of a translation can apply to all categories of works. Prior to 1988 translation was considered to be a work independent of the work from

which it was derived and therefore entitled to its own copyright.

UNAUTHORISED TRANSLATION

If a translation is made without the consent of the copyright owner of the original work it would be an infringement.o No copyright can subsist in an arrangement of a work made in infringement of the

copyright in the original work (Redwood Music Ltd. v. Chappell & Co. Ltd.) o Copyright should be denied for “fraudulent works” (Pasickniak v. Dojacek)o The definition of “fraudulent works” is left open. (Aldrich v. One Stop Video)

ORIGINALITY OF TRANSLATIONS

Translating from one national or ethnic language to another ordinarily meets the requirement of originality in copyright

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

Apple Computer Inc. v. Mackintosh Computers Ltd. (SCC 1990)

Facts: o Apple claimed copyright over their hexadecimal code when it was transposedo The defendants’ position is that there is no copyright protection given to the

hexadecimal form of the source code program because it is not a translation of that work but a different literary work.

Issue: o Was the code a copyrightable “translation”?

Held: o Trial Judge: Hexadecimal form of the program is the same literary work, and

therefore a translation.


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o Appeal: The translation had to be human languages for it to count as a translation between “languages”. The hexadecimal translation was only mechanical.

Reasons: o The hex code was not a translation of the original assembly code version, in terms of

the Copyright Act.o “express the sense of (word sentence, speech, book poem) in or into another

language, in or to another form of representation.” - Concise Oxford Dictionary Conversion from one code to another clearly falls within that dictionary definition.

o Conversion from assembly code to hex is called a “translation” by computer programmers not relevant.

Ratio: o “Translation” does not apply to the compilation of source code into machine code, as

that only requires mechanical transformation, no skill or judgement

Prism Hospital Software Inc. v. Hospital Medical Records Institute

Facts: o Plaintiff was providing the defendant with software program for maintaining and

operating a health care information database.o Difficulties arose between the parties, defendant engaged another supplier who

rewrote the plaintiff’s program in another source code language. Issues:

o Was the defendant’s rewriting a “translation” of the copyrighted work, thus infringing on the the work?

Held: o Yes, the rewritten code was a translation.

Reasons: o “Not dealing with the conversion of the plaintiff’s program into a machine language,

but into another “human” programming language”.o In this process there has been a “translation”: of the plaintiff’s software within the

meaning of 3(1)(a).o The Copyright Act does not define the concept “translation” except in s. 30.6(a) when

providing an exception to copyright infringement in specified circumstances of making a computer program compatible with a particular computer.

o Parliament says “translating” into another computer language, basically nullifies the FCoA from Apple Computer.

o Appeal court’s comment in Apple is incorrect. It does not need to be between two human languages.

Ratio: o A translation does not need to be between two human languages, but requires a level

of skill and judgement.


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COMPUTER PROGRAMS

"LITERAL COPYING”

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

manner, that is to be used directly or indirectly in a computer in order to bring about a specific result.

s 30.6 was added to provide exceptions/defences for reproductions of computer software programs. One may:o (a) Reproduce the copy by adapting, modifying/converting, or translating it to

another computer language if (i) it is essential to the compatibility of the computer program with a particular computer (ii) is solely for the person’s own use, and (iii) was destroyed immediately after the person ceased to be the owner of the copy + computer

o (b) reproduce for backup purposes if (a) the person proves the reproduction was destroyed after person ceased to be owner of the copy + computer

s.64(2): preserves copyright in computer programs even when incorporated into circuitry o Apple Computer and the legislative changes in the Copyright Act have ensured that

computer programs are protected as literary works, the scope of available protection is unresolved.

Amendment put beyond doubt that computer software programs were within the category of literary work and granted protection against at least literal copying of such programs.

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

utility, an instrumental role in accomplishing the world’s work.o Granting protection can have some of the consequences of patent protection in

limiting other people’s ability to perform a task in the most efficient manner.

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

Ratio: o Literal copying includes a duplication of a computer chip, as it is the machine code

equivalent of the software. However, this is still a contentious area, as the chip itself is simply plastic with electrical impulses. Issues raised in the appeal is whether a computer program originating in

copyrightable written form, continues to be protected by copyright when it is replicated in the circuitry of a silicon chip.

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

Held that it was infringement of a copyright.


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"NON-LITERAL COPYING”

Non-literal copying involves the “plot” of a work:o The structure, sequence or organization of a program, including screen and user

interactive displays and commands.

THREE BROAD APPROACHES:

(1) LOOK AND FEEL (SUBJECTIVE) APPROACH VS EXPERT (OBJECTIVE) APPROACH

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

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

Broderbund Software Inc. v. Unison World, Inc. (US 1986)

Facts: o Plaintiff had a computer program, “The Print Shop”, for creating customized greeting

cards, posters, signs and other items.o Defendant’s computer program for similar productions was called “The Printmaster”

Issue: o Was the concept of a customized print shop program a non-literal copy?

Held: o “The Printmaster” was not a non-literal copy of “The Print Shop”

Reasons: Objectively, on the extrinsic test, Experts said that Print Shop and Printmaster had

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

o Subjectively, in terms of the “total concept and feel” of the protected work, the ordinary observer could hardly avoid being struck by the eerie resemblance between the screens of the two programs.

Ratio: o Extrinsic test (Objective): the extrinsic test is aimed at determining whether there

exists a substantial similarity between the underlying ideas of the copyrighted and allegedly infringing works.

o Intrinsic test (Subjective): “Look and Feel” test/holistic approach. Finder of fact is to determine whether an ordinary reasonable person would find the expression of the subject works to be substantially similar.

(2) ABSTRACTION-FILTRATION-COMPARISON APPROACH

Computer Assoc. Int’l, Inc. v. Altai, Inc . (US 1992)

Facts: o Plaintiff had created an operating program known as ADAPTER.


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Translation or operating program that enabled an application program CA-SCHEDULER, also by the plaintiff, to function on different operating systems.

Used for DOS/VSE, MVS or CMS.o Defendant had its own computer scheduling program known as ZEKE.

Designed to be used with a VSE operating system. Defendant wished to have ZEKE function with an MVS operating system and

decided to rewrite for that purpose. Recruited an employee of Computer Assoc. to undertake this work. This employee was intimately knowledgeable of the plaintiff’s translation

program. Employee created the translation program using 30% of plaintiff’s program. Proceedings were brought, and program’s copied parts were re-written.

o Therefore, literal copying was removed, but plaintiff alleged non-literal copying. “remained substantially similar to the structure” and included “general flow

charts … the specific organization of inter-modular relationships, parameter lists and macros” etc.

Issue: o Did the defendant’s program non-literally copy the plaintiff’s?

Held: o The defendant’s program was NOT a non-literal copy

Reasons: o Ruling discussed the “form/idea” distinction and the decision from Whelan. First

introduction of AFC. o “the purpose or function of a utilitarian work would be the work’s idea and

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

means chosen is not necessary to the purpose.o A-F-C - a three-step procedure based on the abstractions test should be utilized

Cognizant of the fact that evolving technology may not allow for a literal application of the procedure outlined.

analyzes the programs in dispute from the perspective of separating protected “form” from unprotected “idea” in a more analytical manner and to determine: The portions of the plaintiff’s program that can be said to be covered by

copyright because it presents original “form or expression; and The extent to which these protected portions of the plaintiff’s program have

been reproduced in the defendant’s program and whether this extent meets the usual tests for infringement.

Substantial and actual proof of copying or proof of “access” together with substantial similarity of the works

Ratio: o AFC Test (idea introduced here, but articulated in Delrina and Prism). In

ascertaining substantial similarity under this approach, a court would first break down the allegedly infringed program into its constituent structural parts (rejection of look and feel test)

o Then, by examining each of these parts for such things as incorporated ideas, expression that is necessarily incidental to those ideas, and elements that are taken


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from the public domain, a court would then be able to sift out all non-protectable material.

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

elements of the programs at issue are substantially similar so as to warrant a finding of infringement.

o Step 1: Abstraction – Identify the copyrightable components of the program (the function(s)) The theoretical framework for analysing substantial similarity expounded by

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

mixture of numerous ideas and expressions”. Initially, in a manner that resembles reverse engineering on a theoretical plane, a

court should dissect the allegedly copied program’s structure and isolate each level of abstraction contained within it.

Begins with the code and ends with an articulation of the program’s ultimate function.

Along the way need to retrace and map out each of the designer’s steps. At the lower level, a program may be thought of in its entirety as a set of

individual instructions organized into a hierarchy of modules. At a higher level, instructions in the lowest-level may be replaced conceptually by

the functions of those modules. As you go higher, the lower levels are eventually left with nothing but

the ultimate function of the program.o Step 2: Filtration – Exclude all non-copyrightable elements (ex. Aspects re pure

efficiency) Once the program’s abstraction levels have been discovered, the substantial

similarity inquiry moves from the conceptual to the concrete. A successive filtering method can be used for separating protectable

expression from non-protectable material. This process entails examining the structural components at each level of

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

Each case requires its own fact specific investigation. By applying well developed doctrines of copyright law it may ultimately leave

behind a “core of protectable material”. Elements Dictated by Efficiency

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

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


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

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

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

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

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

fictional theme without employing certain stock or standard literary devices, such expression is not copyrightable. Hoehling v Universal City Studios - Infringement suit stemming from

several works on the Hindenberg disaster, similarities in representations of German life. Events dictated were indispensable in the treatment of German life, so no copyright protection.

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

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

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

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

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

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

modules would be an inherent part of any prompting program”. Must conclude that a court must also examine the structural content of an

allegedly infringed program for elements that might have been dictated by external factors.

Elements Taken from the Public Domain Related to scenes à faire, material found in the public domain cannot be

protected. Free for the taking an cannot be appropriated by a single author even though

it is included in a copyrighted work. Sheldon - We see no reason to make an exception to this rule for elements of

a computer program that have entered the public domain by virtue of freely accessible program exchanges and the like.


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o Step 3: Comparison – Compare copyrightable elements with alleged infringing work to determine infringement After a court has sifted out all elements of the allegedly infringed program which

are “ideas” or are dictated by efficiency or external factors, or public domain, there may remain a core of protectable expression. - Brown Bag Software

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

Policy Considerationso The line must be a pragmatic one, which keeps in consideration the preservation

of the balance between competition and protection.” (Apple) Some people, and Computer Assoc. argue against this approach stating it will

cause programmers to not invest time in new programs. Must consider advancing the public welfare through rewarding artistic

creativity in a manner that permits the free use and development of non-protectable ideas and processes.

Delrina Corp. (Carolian Systems) v. Triolet Systems Inc. (OGD 1993)

Facts: o Carolian Systems International Inc. subsequently merged into Delrina Corp. The

plaintiff had employed a highly qualified and experienced computer programmer to rewrite its program “Sysview”. Program provided a “performance” monitoring tool” for use with an HP computer. Delrina licensed the Sysview program to users of HP 3000 computers.

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

Issue: Was the defendant’s program an infringement on the plaintiffs? Held:

o Not satisfied that a substantial part of the Sysview interface is copyrightable. Sae doesn’t apply to the Sysview source code.

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

Reasons: o Much of the code is shared amongst the HP 3000 community, some calls out specific

variables, etc.o Some problems do not lend themselves to multiple solutions - but must be solved in

one or two ways.o Displays similar info with a similar layout

Ratio: o During the filtration stage, distinguish between the idea, and the

expression of that idea. No copyright in ideas or info, just the expression. (See Apple’s ratio for filtration)

o Subsists in original works.o If the expression does no more than embody laments of the idea that are functional

in the utilitarian sense the expression of the idea is not copyrightable.


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o Established the merger doctrine in Canadian copyright law.

Prism Hospital Software Inc. v. Hospital Medical Records Institute (BCSC 1994)

Ratio: o To be actionable the copying must be of the expression, if effect, the author’s original

or literary work, not the ideas, concepts or underlying facts. There is no “percentage” rule for copying (although a 10% guideline

exists) to be considered substantial.o Copyright protection is not afforded to collections of facts but rather to the original

component contributed by a particular author. Feist Publications Inc. v. Rural Telephone Service Co Inc.

Refused to extend copyright protection to a telephone directory. Mere fact that a work is copyrighted does not mean that every element of

work may be protected. No matter how original the format, the facts themselves do not become

original through association.o The applicability in Canada of American Law

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

where they touch on areas which have not yet been considered or on issues that are similar in US and Canadian legislation.

Robinson v Films Cinar Inc (SCC 2013)

Facts: o THE WORK AT ISSUE WAS NOT A COMPUTER PROGRAM, BUT A MOVIESCRIPT

CONVERTED INTO A SHOW.o Plaintiff had a proposal for a TV program and sought assistance from Cinar, to whom

he gave a copy of a manuscript. Cinar did not see the project through but several years later developed a very similar program.

o Plaintiff argued for look and feel approach. Defendant argued for a AFC approach Issue: Could the AFC approach be applied to works that were not computer programs

(literary work)? Held:

o The AFC approach could be applied to works other than computer programs. Defendant infringed on the plaintiff’s work.

Reasons: o Court acknowledge both literal and non-literal elements protected under copyright,

so long as the copied material forms a substantial part of the original work (non-literal may be worth considering).

o Plot here was a substantial part which requires the consideration of non-literal copying.

Ratio: o In considering non-literal copying, the approach taken (holistic/“look and feel”, or

segmented/AFC) depends on the kind of work/part of the work at issue.


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(3) METHOD OR SYSTEM OF OPERATION APPROACH

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

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

utility, an instrumental role in accomplishing the world’s work.o Granting protection can have some of the consequences of patent protection in

limiting other people’s ability to perform a task in the most efficient manner.o Ratio:

Methods of system of operation are utilitarian functions which are not copyrightable, affirms Apple. However, this is a contentious area.


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CHAPTER 4: DRAMATIC WORKS

GENERAL MEANING

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

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

any cinematographic work, and any compilation of dramatic works.

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

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

COMBINATION OF INCIDENTS/ORIGINALITY/FIXATION

Hutton v. CBC (AQB 1989)

Facts: o Plaintiff co-produced with the defendant, CBC, a television series known as Star

Chart.o Based on an earlier work of the plaintiff, known as Star Tracks.o Series Star Chart comprised 19 programs before the CBC cancelled the program, as it

was entitled to do in the contract.o Three years later the CBC produced a series called Good Rockin’ Tonite.o Hutton alleged CBC copied his concept and creative elements and breached his

copyright. Issue:

o Did the defendant’s dramatic work infringe upon the plaintiffs?o Was the defendant’s work a dramatic work.

Held: o No copyright infringement.o The defendant’s work was not a dramatic work.

Reasons: o Issue 1:

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

No equivalent in GRT to the SC story line. SC did not have much of a story, but only thing that lends dramatic incident to the programmes. GRT tells no story at all.

From Seltzer v. Sunbrock In order to infringe, under the Copyright Act the production on the stage must

obviously tell the same story as the copyrighted drama. If it tells another story or acts another sequence of events, it is outside the

protection afforded the registered work.


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Was SC truly a dramatic work and entitled as such to protection under the Act?—questionable if can be considered a dramatic work at all. There must be a story, a thread of consecutively related events, either

narrated or presented by dialogue or action or both to be a dramatic composition.

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

o Issue 2: Just because GRT had no elements that would qualify as a dramatic work, doesn’t

mean it couldn’t have infringed on SC. Originality re ideas

s 2 of the Act, it is the arrangement or acting form or the combination of incidents represented which give the work an original character and which are thereby afforded protection by the Act, not the idea behind the arrangement, form or incidents.

Distinction between idea and form of expression was considered in Kantel v. Frank E. Grant, Nisbet & Auld Ltd. Copyright Acts are not concerned with ideas or the originality of ideas - in

which there is no copyright: it is the language in which the idea is expressed which is the only thing protected, and it is that to which “original” in the Act relates.

“Music Central” constituted the “arrangement or acting form or the combination of incidents represented” this expression was what gave SC its original character.

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

Ratio: o When assessing an infringement upon dramatic works, the plot is a substantial

element that needs to be identified, assessed, and comparedo While there is a suggestion that only dramatic works can infringe upon other

dramatic works, as it stands, an infringement can occur from a work in any other material form in accordance with s. 3

Kantel v. Frank E. Grant, Nisbet & Auld Ltd. (ExCt 1993)

Facts: o Plaintiff was an author and producer of “Sunshine Club”. A radio-show for “good

children” Employed by the defendant to prepare a radio presentation, referred to as a

‘sketch’, involving a celebrity character, “Uncle Bob”. Dialogue was spontaneous.o The defendant subsequently cancelled the series, then later broadcasted a similar

sketch that was found to be an infringement of the plaintiff’s copyright as a dramatic work.

Issue:


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o Was the Sunshine Club radio show a dramatic work which had copyright?o Was the work infringed upon?

Held: o Was a dramatic worko Was infringed upon when the defendant broadcasted their similar sketch.

Reasons: o “From a perusal of decided cases wherein copyright in works has been upheld, I am

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

Obiter: o The radio show was a compilation of literary and dramatic work. o S. 2 - Compilation means:

(a) a work resulting from the selection or arrangements of literary, dramatic, musical or artistic works or of parts thereof, or

(b) a work resulting from the selection or arrangement of data. Ratio :

o A dramatic work is copyrightable if there are affixed elements (characters, plot structure), even if other elements are not necessarily affixed (spontaneous dialogue)

Green v. Broadcasting Corporation of New Zealand (NZ 1989)

Facts: o Appellant is a well-known personality in the entertainment world.o Author, presenter and compere of a talent show.o Broadcasting corporation of NZ did the same show, same name.

Held: o Unscripted talent show wasn’t affixed in a way that could make it a dramatic work.

Reasons: o The protection which copyright gives creates a monopoly and “there must be

certainty in the subject-matter of such monopoly in order to avoid injustice to the rest of the world”. - Tate v. Fullbrook

o spontaneous like oral speech in Gouldo In this case, the subject matter of copyright claimed for the dramatic format of the

show is conspicuously lacking in certainty. A dramatic woe must have sufficient unity to be capable of performance and that

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

Ratio : o A dramatic work must be affixed with sort of “format”/certainty

SPORTS EVENTS

FWS Joint Sports Claimants v. Copyright Board (FCA 1992)

Facts:


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o Canadian cable television companies paid fees for the retransmission of certain radio and television signals.

Issues: o Was the sports game copyrightable?

Held: o The board found that sports games per se were not the subject of copyright.

Reasons: o Playing of the game itself couldn’t be seen as copyrightable, due to its unscripted

nature - not choreographed.o The unpredictability in the playing of a football or hockey game is so pervasive,

despite the high degree of planning, that it cannot be said to be copyrightable.

National Basketball Association v. Motorola, Inc. (US 1997)

Facts: o Defendant manufactured and sold pager devices that displayed game info from the

plaintiff’s basketball games.o Plaintiff alleged a violation of state tort law for misappropriation of a business value

and federal law copyright infringement. Issue :

o Did the plaintiff have a copyrightable dramatic work that the defendant infringed upon?

Held: o No copyrightable work to infringe upon

Reasons: o Sports events are not authored in any common sense of the word.o Cannot copyright sports moves/plays without impairing the underlying competition in

the futureo In 1976 Congress extended copyright protection to the broadcast of games, due to

the camera work, etc. but not to the games themselves. Ratio:

o Because a copyright over sports would conflict with the nature of competition in sports, there is a policy reason from preventing copyright over sports (beyond the issue of choreography)

Canadian Admiral Corporation, Ltd. v. Rediffusion, Inc. (ExCt 1954)

Facts: o Plaintiff had the exclusive right to certain telecasts of games. o Defendant maintained an antenna in Montreal and would intercept the broadcasts

and further transmit them to units in the homes of their subscribers, etc.o Three cameras set up to record the game, and a producer picks which feed to use.

Issue: o Was the broadcast a copyrightable dramatic work?

Held: o Not a copyrightable dramatic work

Reasons:


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o No films were taken of the games, and when the telecasting was completed, there was no record of any sort remaining.

o s 2(g) defines dramatic work and one of the requirements is that the scene arrangement or acting form of the work is fixed in writing or otherwise. In “Law of Copyright” it is said that the making of a work is prima facie the

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

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

marked identity and a permanent endurance.o All of the works included in the definitions of artist work and literary work have a

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

o In this case, nothing fixed, nothing planned ahead of time. An ad-lib production. Ratio:

o A live TV broadcast is not affixed, and thus cannot be a copyrightable dramatic work.

CINEMATOGRAPHIC WORKS

Dramatic work includes a cinematographic work (s. 2) Pre-Jan 1, 1994 used to be that a cinematographic work was protected as a dramatic

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

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

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

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

term of protection: (a) for the remainder of the calendar year of the first publication of the

cinematographic work … and for a period of fifty years following the end of the calendar year; or

(b) if the cinematographic work or … is not published before the expiration of fifty years following the end of the calendar year of its making, for the remainder of that calendar year and for a period of fifty years following the end of that calendar year.

o Further change was to the definition:


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Before 1994: cinematographic includes any work produced by any process analogous to cinematography.

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

The expression cinematograph was replaced with cinematographic work by s 1(2) of the Copyright Amendment Act 1997, and the definition now reads “cinematographic work” includes any work expressed by any process analogous to cinematography, whether or not accompanied by a sound track.”

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

analogous to photography. In Canadian Admiral Cameron J considered whether the live telecast process

in that case could be protected as cinematography or photography - rejected any analogy. Said the process by which film is made is much different from how

photographs are taken (true in a physical sense, less true now with digital media though.

Could you say film was a series of photographs compiled into a compilation?

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


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CHAPTER 5: MUSICAL WORKS

AMENDMENTS TO STATUTORY DEFINITIONS

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

words, and includes any compilation thereof.o “every original literary, dramatic, musical and artistic work: includes every original

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

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

For amendments with effect from Aug 31, 1993 see the Copyright Amendment Act.o The narrow definition of musical works prior to Aug 31, 1993, presented a principal

limitation on the scope of protection for musical works - only the written score or music fixed in a written or graphic format could be protected. Music composed at a piano, and then recorded on an audio tape was not covered. Also meant that transmission was not covered, only the written work was.

For amendments with effect from Jan 1, 1994, see the NAFTA Implementation Act.

Composers, Authors and Publishers Assoc. of Canada Ltd. v. CTV Television Network Limited (SCC 1968)

Facts: o Plaintiff was a performing rights society representing owners of copyright in musical

works. o Percentage of the sale was to be paid as tariffs.

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

refused to obtain a licence and continued with existing practice.o Plaintiff sued for copyright infringement of seven named musical works.

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

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

Issue: Was the radio communication a copyright infringement on the musical work? Held:

o The affiliates had the right to transmit the works.o CAPAC’s contention cannot be supported either on the literal meaning of the statute

or on construction in the light of the intention revealed by the whole act, including the schedule.

Reasons: o Network enabled them to do so.


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o Can’t be a tort merely to authors or cause a person to do something that that person has a right to do.

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

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

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

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

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

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

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

Ratio: o There is a complex history to what is considered copyright infringement for musical

works. Historically was exclusive to the musical score. Now there is statutory legislation which states: Author has a right to communicate of the musical work to the public by

telecommunication (S. 3(1)(f)) Author has a right to rent out a sound recording in which the work is embodied (s.

3(1)(i)) Musical publication does not occur where:

The performance is in public, or by communication to the public by telecommunication (s 2.2(b)(i), s. 2.3)

The work is conveyed via public telecommunications in an apartment/hotel/dwelling unit (s 2.4(b))

Musical publication infringement occurs where a communication to the public is made by a person who is not a retransmitter and will make the network and broadcaster jointly and severally liable (s 2.4(c))

SONGS

History of Parody

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

respect to parody.


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o Context historically had focused on s. 29.1 of the Copyright Act which provided a statuary lien sing system enabling persons to make recordings of any musical, literary, or dramatic work if recordings had previously been made with the consent or acquiescence of the owner of the copyright in the work and prescribed notice was given and royalties, as stipulated in the Act, were paid.

o s 29.2 precluded any alterations in or omissions from the work in the licensed production. Being a single work, an alteration would occur in a parody, which would mean

there would be an infringement of the original work within s. 29 of the Act.o Today, parody does not infringe upon copyright and is of no relevance, but

a parody may constitute an infringement of the moral right to the integrity of the act.

o Further issues arise if one person writes the lyrics, the other the tune or music.

ATV Music Publishing of Canada, Ltd. v. Rogers Radio Broadcasting Ltd. (OGD 1982)

Facts: o Revolution/constitution songo Revolution was originally composed by Beatles.o Defendants recorded and broadcast a song, Constitution, with words written by the

defendant, and with the music of Revolution.o Defendants had sought and been refused permission to use the music of Revolution.o Motion for interlocutory relief.o Defendants submit that there are separate copyrights in the music and the words of

Revolution. Issue:

o Was the musical work jointly owned as one copyright, or two copyrights (lyrics and song)

Held :o The musical work was a “work of joint authorship” for which there would be one

copyright of which the plaintiff is the owner in Canada. Reasons:

o Ludlow Music Inc v. Canint Music Corp Ltd. et al. According to the ordinary use of words by ordinary people, a song is a musical

work and the words of a song (apart from tune) do not constitute a musical work. The tune of a song (considered apart from the words) is not a song.

o Thibault v. Turcot et al QCSC found that when two people collaborated, the one writing the music and the

other the libretto, the work is one complete unit for the purpose of copyright.o MCA Canada Ltd et al. v. Benwell et al.

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

Copyright claimed was in an oratorio comprised of 23 different songs connected by choral chants.


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Defendants had been licensed to perform the 23 individual songs, were to perform 15 of them in a different sequence, interspersed with other musical works.

Was that a performance of the oratorio?o In the Canadian act, as in the English act, it is recognized that a collective work may

have a copyright of its own.o Defendants admit that the music is the music to Revolution, written by the same

people that wrote the lyrics for Revolution. Both people wrote both, no evidence to contrary. Therefore, no evidence of separate copyright.

Ratio: o A song may have two separate copyrights in the music and in the lyrics. o A parody does not infringe on copyright

ARRANGEMENTS

Wood v. Boosey (UK 1868)

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

opera from orchestra to the pianoforte alone.o Copyright registration in the UK required the name of the author of the work, said

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

composition to what he has done.o Therefore, considered an original work.

Ratio: o A musical transposition from one instrument/style to another may be considered a

translation that is copyrightable, as it requires skill and judgement. o A musical translation can be considered a more difficult exercise than that of a

normal translation (Redwood Music Ltd v Chappell & Co Ltd)

ESTABLISHING COPYRIGHT/PROVING INFRINGEMENT

Grignon v. Roussel (FCTD 1991)

Facts: o According to the plaintiff, around August, 1986, he composed a musical work CN7.

Distributed to certain librettists and people in the artistic world in Montreal, hoping that a song would be eventually made from it.

o The next year a song came out with tune that was strikingly similar, but showed a different composer.

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


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Issue:

o Did the defendant’s work constitute a copyright infringement?o Can the defendant, whose work was registered after distribution of the work of the

defendant, who is also disputing its originality, benefit from the presumption created by s 53 and so more readily establish that he is the holder of a right? s 53(2) - A certificate of registration of copyright in a work is evidence that

copyright subsists in the work and that the person registered is the owner of the copyright.

Held: o Copyright infringemento no

Reasons: o Point is of some importance with respect to the burden of proof in establishing

copyright.o Some difficulty because it was registered after TLJ, to which the defendant claims

they wrote the music.o Registration has no effect on the actual existence of a copyright though, so doesn’t

really change the case. He had access to the plaintiff’s work before composing his own, and that a

substantial part of both works is very similar.o Plaintiff’s copyright

No real debate of the ownership of copyright to the plaintiff’s work.o Originality of work

Is the plaintiff’s work an original one? US precedents seem to indicate that a plaintiff in an action for copyright

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

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

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

sufficient objective similarity to that of the plaintiff to be the subject of an order by the court, and

2 - whether it can be shown that the plaintiff’s work was the basis for that of the defendant.

o Resemblance between the two works Is there such a striking resemblance between the two musical works that the

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

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

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

had copied between 5 and 32 measures (defendant v. plaintiff)


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“Question of infringement is not to be decided by note for note comparison, but whether the substance of the original work is taken or not. This falls to be determined by the ear as well as by the eye.”

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

Only one of five expert witnesses has extensive academic training in the classic sense. “same delivery and same hooks”

Expert says the result of analysis forced him to rule out chance from the hypothesis.

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

o Too difficult to imagine the similarities resulting due to coincidence. Ratio:

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

o The subjective is the more important aspect (Grignon)o s 34.1 says that if an action is brought by a plaintiff for infringement of his right, and

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

Drynan v. Rostad (OSC 1994)

Facts: o Wedding party song. Later a similar song came out.

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

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

the CBC. Plaintiff heard song in 1993, and now alleges that the defendant’s song was

strikingly similar to that of his own and an infringement of the copyright. Defendant said was composed independently, any similarities are purely

coincidental. Song was played at a family reunion, played numerous times, a performance

done by children. Defendant was retained to perform at the celebration under written contract.

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

Plaintiff went to defendant after song was performed, and defendant said “nice song”.

Defendant doesn’t recall that, or of hearing the song. Songs were very similar - expert evidence.


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

Some similarities were basically general knowledge. Not identical but strikingly similar.

Issue: o Was there copyright infringement in the musical work?

Held: Reasons:

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

reproduction of the plaintiff’s.o Strong evidence provided by the plaintiff, not so for the defendant.

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

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

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

in their musical effect. As a general rule, the larger the portion of music that is reasonably similar in both

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

Ratio: o Access to a work needs to be determined in copyright infringemento “Subconscious” copying exists, but generally not accepted as an argument


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CHAPTER 6: ARTISTIC WORKS

SELECTED DEFINITIONS (S 2)

Artistic Worko Includes paintings, drawings, maps, charts, plans, photographs, engravings,

sculptures, works of artistic craftsmanship, architectural works, and compilations of artistic works.

Architectural Worko Means any building or structure or any model of a building or structure.

Engravingso Include etchings, lithographs, woodcuts, prints and other similar works, not being

photographs. Photograph

o Includes photo-lithograph and any work expressed by any process analogous to photography.

o After January 1, 1994, photograph included any work expressed by any process analogous to photography rather than produced.

Sculptureo Incudes a cast or model.

MEANING OF ARTISTIC

Has not been authoritatively defined.

George Hensher Limited v. Restawile Upholstery (Lancs) Limited (UK 1975)

Facts: o Only the issue of whether it is artistic is at issue in this brief.o Expert witness, independent of the plaintiff, though he didn’t like the chairs, said

they had appeal to the public and were a good commercial design. A distinctive individuality. Individual characteristics which distinguish it from a mere utilitarian work of

craftsmanship. Held:

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

o House of Lords dismissed the plaintiff’s appeal. Found that the common meaning of the word artistic did not allow it to be used as a description for the craftsmanship involved in the production of the chair.

Reasons: o In the present case the evidence fell short of establishing that the knock-up qualified

to be characterised as a work of artistic craftsmanship.


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o In deciding whether a work is one of artistic workmanship I consider that the work must be viewed and judged in a detached and objective way. Shouldn’t be left to judges to assess artistic merit. Lord Reid: Should be an intention to have aesthetic appeal. Is it admired/valued

by a substantial part of the public for its appearance? (consensus) By common usage it is proper for a person to say that in his opinion a thing

has an artistic character if he gets pleasure or satisfaction or it may be uplift from contemplating it. Great differences of opinion on what is art.

Lord Morris: Focused on the word “craftsmanship”. This craftsmanship must be artistic. More than transient or incomplete. Requires more than originality. It is a question of fact. Not enough that some section of the public considers it to be artistic (consensus + originality + intent of fact) Must have craftsmanship, but must have the added character of being artistic. Shall come into existence as the product of an author who is consciously

concerned to produce a work of art. Can have artistic craftsmanship without actually being considered a work of

art. Lord Simon: Looked at artistic and craftsmanship together. Looked to the

arts/crafts movement. Not concerned simply with fine art, but with art that has some commercial/industrial connection. We need to look at people who create works of craftsmanship. Craftsmanship means there was pride of workmanship and a rejection of shoddy projects. (intent) Given the craftsmanship, it is the presence of such aim and impact - “the

intent of the creator and its result” … which will determine that the work is one of artistic craftsmanship.

Statutory phrase is not “artistic work of craftsmanship” it’s “work of artistic craftsmanship”.

Says no to an object being artistic if it gives visual pleasure - e.g. a pretty girl or a landscape.

Looking nice appears to me to fall considerably short of having artistic appeal. No evidence that anyone felt or thought that the furniture was artistic in

the sense which I have tried to explain. Ratio:

o A qualitative analysis is necessary to identify something as “art”. There is no set definition. Options to consider include ordinary meaning, intent and consensus. (art + craftsmanship)

ARTISTIC-NESS? [REQUIREMENT OPTION 1 WHEN DEALING WITH ARTISTIC CRAFSMANSHIP WORK + NO PLANS AVAILABLE]

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

as requiring a qualitative feature.


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o The remaining specific categories in the definition of artistic work, essentially paintings, drawings, maps, charts, plans, photographs, engravings, sculptures - authorities would suggest that no qualitative measure of artistic-ness is required.

o Artistic works in general, or the residual content of the definition beyond the specified categories.

DRG Inc. v. Datafile (FCTD 1987)

Facts: o Application brought to expunge the respondent’s registration of copyright as artistic

works in two subjects comprising colour-coded file labels as follows: A series of colour coded numeric labels composing the numbers 0-9 A series of colour coded numeric labels comprising the letters of the alphabet

from A-Z Issue:

o Did the work need “artistic-ness” to be considered copyrightable? Held:

o The overall work did.o The “engraving” aspect did not

Reasons: o The design was not a proper subject matter for copyright because it

Lacked the characteristics of an artistic work Was essentially a functional tool - Not the system that is being protected, just the

specific design of it. Was an engravings, a part of which was copyrightable, but on a whole, the design

was noto The graphic designs could have, but the work was not sufficiently original because it

did not constitute a substantial modification of the pre-existing art (colours followed the rainbow; sequenced twice for alphabet, light then dark, etc.)

Ratio: o Criteria:

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

the thing for its appearance and get intellectual or emotional pleasure from it?

o Engravings are copyrightable as a residual category of works. Artistic-ness is not required.

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

Lifestyle Homes Ltd. v. Randall Homes Ltd. (MCA 1991)

Ratio: o To be entitled to the protection envisaged by the Act, two things are

required: An original expression of thought


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

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

An attempt to convey “beauty”. To interpret the Act properly, the tribunal should not attempt to exercise a

personal aesthetic judgment to consider the intent of the creator and its result.

o Copyright is different than patents and industrial designs.

ARTISTIC CRAFTSMANSHIP

Requires an element of artistic-ness, or a qualitative factor, in order to gain copyright protection.

In Canada this continues to await determination by the SCC. In DRG Inc. v. Datafile:

o Artistic-ness is necessary for subject matter within the category of artistic craftsmanship but:

o expressly forebears from stating whether that must be determined by the courts for works of craftsmanship and architecture

o Notes, that the text of the Canadian Copyright Act mirrors that of the 1911 Act of the UK, where jurisprudence has seemed to indicate that such is required.

o notes the Canadian decision of Hay & Hay Construction Co. v. Sloan to have accepted this, but to have struggled to find an appropriate test and

o comments that even if works of craftsmanship and architecture must be measured against some test of artistic-ness, as set out in the Hensher, Merlet or Hay cases) it would not apply to artistic works outside of craftsmanship or architecture.

George Hensher Limited v. Restawile Upholstery (Lancs) Limited (UK 1975)

Ratio: o Focus now is on the meaning to be given to the expression “craftsmanship” in the

specified or enumerated category of “artistic craftsmanship”.o Must be manifest that to qualify as a work of artistic craftsmanship a work

must at least be a work of craftsmanship, but it must not only be that, it must have the added character of being artistic.

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

work of art? More pertinent to ask, is this the work of one who was in this respect an artist-

craftsman? The artistic merit would then be irrelevant.

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


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ARCHITECTURAL WORKS

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

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

Hay and Hay Construction v. Sloan

Facts: o Plaintiff had designed Belaire, a residential house on a lot the corporate plaintiff

was to sell.o Rather conventional disposition of the available space but used to the best

advantage by making an otherwise undistinguished ground plan into a split level house.

o Exterior had an attractive cottage-roof and a very attractive disposition of windows, doors, and treatment of exterior building material.

o Defendant tried to get permission to copy Belaire on a different lot, permission was refused, but bought the other lot anyway and put up a house almost exactly the same as Belaire.

o Minor changes were made to Belaire, and those were done to the defendant’s house too during construction.

o Defendant said that for such a small house, must use materials and design in a certain way, therefore no copyright was possible.

Issue: o Was the house a copyrightable artistic work, or utilitarian architecture?

Held: o Belaire was found to have artistic character and design within the meaning of

the Copyright Act - artistic work. Reasons

o Belaire was quite different from anything an expert witness, land surveyor, had seen before. Many distinctive features. 6 architects would have all made a different-looking front facade.

o None of the design elements were novel, but altogether it was enough. Ratio:

o Architectural works are copyrightable regardless of size/type.

OTHER SPECIFIED OR NUMERATED CATEGORIES

Definition of photographo January 1994 NAFTA, any work expressed by any process analogous to photography

(therefore including digital photography). Engravings

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


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

painting be required to ensure copyright?

Netupsky v. Dominion Bridge Co. Ltd. (BCCA 1969)

Facts: o Pre-1998 case illustrates how a three-dimensional building construction can

constitute a copyright infringement by reference. Not to architectural work, but to categories of drawings and plans. At the time, plans were protected as a literary work.

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

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

Issue: o Was the plaintiff’s architecture plans a copyrightable artistic work that was infringed

upon? Held:

o At trial : no infringement was found because the artistic character or shape remained the same. Only the method of construction used to bring about the same shape has been

changed and that, in any event, the contract entered into by the plaintiffs impliedly allowed such changes.

o At appeal: plaintiffs’ plans to have been substantially reproduced in later drawings or plans made by the defendant. Infringement.

Reasons: o the court considered whether there was a copyright and infringement therefore, not

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

o An architect obtains art in his plans as literary works in view of the fact that literary works are defined as including plans, and in his sketches and drawings as artistic works in view of the fact that artistic works are defined as including drawings.

Ratio: o Architect plans are protected as literary works (“plans”) as well as artistic

works (“drawings”). o Copyright subsists not in the building itself, but in the artistic character or

design thereof.

PLANS - COPYING IN ANY OTHER MATERIAL FORM (3D 2D) [REQUIREMENT OPTION 2 WHEN DEALING WITH ARTISTIC CRAFSMANSHIP WORK]

Preston v. 20th Century Fox Canada Limited (FCA 1994)

Facts: o Plaintiff combined ownership and infringement of his literary copyright in a

manuscript entitled Space Pets and a character in that script described as an Ewok.


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o Name Ewok is never said in the film, but 40 times in the script, and in the credits. Issue: Was the plaintiff’s Ewok character copyrightable? Held: Not copyrightable. Reasons:

o Plaintiff’s characters were not widely known, not many had heard of them, or read the script.

o Clearly it was Star Wars that made the Ewoks famous. Characters in works can have copyright protection once they meet the criteria

from Preston. Ratio

o Character must be sufficiently clearly delineated in the work subject to copyright that it become widely known and recognised to be given copyright

o A 3D reproduction of a 2D (literary work) description of a character may be considered a reproduction constituting infringement

LB (Plastics) Limited v. Swish Products Limited (UK 1977)

Facts: o Plaintiffs manufactured sets of plastic drawers for the furniture industry.

Drawers were in component parts for assembly by the buyer.o Defendants made similar sets, and there was evidence that they had some desire to

establish interchangeability between its own and those of the plaintiffs.o The plaintiffs had made the 3d drawers and component parts first, then made the

drawings. No evidence that the defendants had seen the drawings, only the 3D set when

made his work Three dimensional copy of a three dimensional product, thereby constitution an

infringement of the two-dimensional drawing of that product? Issue:

o Could the drawings could be said to be original? Copyright in a copy?o Did the defendant’s plastic drawers infringe on the drawer plans?

Held: o Even if the 3D models had been made first, and then drawings, J is of opinion they

would qualify as original works.o The defendant’s drawers did not infringe on the plaintiff’s drawer plans.

Reasons: o Issue 1:

Absurd that by making a drawing a man should get protection extending for his life plus 50 years, whereas under a registered design or patent he can only get 15 or 16 years.

o Issue 2: Copyright isn’t effective against anyone who produces something independently

(access issue) It is only effective to stop third parties from helping themselves to too liberal a

portion of another man’s skill and labour for their own exploitation. Has not been proven that the defendants copied a drawer made in

accordance with the relevant drawing.


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Ratio:

o A 3D object produced from a 2D plan constitutes copyright infringement via reproduction.

o Copyright exclusivity can be far more readily established in the 3D products themselves if there is a drawing (compare facts in Hensher)

Bayliner Marine Corporation v. Doral Boats Ltd. (FCTD 1985)

Facts: o Plaintiff manufactured boats.o Claimed copyright infringement against the defendant for manufacturing

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

Issue: o Did the defendant’s 3D reproduction via the plaintiff’s boat constitute an

infringement of the 2D plans? Held:

o Infringed on the plaintiff’s copyright over the plans Reasons:

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

Ratio :o A 3D reproduction copying the authorized 3D version of a 2D plan constitutes an

infringement on the 2D plano An authorized 3D version of a 2D plan constitutes access to the 2D plan when

determining infringement

British Leyland (UK 1986)

Facts: o Drawings of automotive spare parts o Plaintiff claimed infringement when defendant reverse engineered the part and

created his own. Issue:

o Infringement? Held:

o infringed by the reverse engineering. ** BUT NOTE STRONG DISSENT Reasons:

o Majority follows LP Plastics and finds copyright in design drawings of automotive spare parts

o BUT noted that automobile owners had a right to keep their cars in good repair, and they were entitled to a free market in spare parts as a result. Government never intended to have copyright law prevent the reproduction of a

functional object depicted in a drawing.


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“Reproducing in s 3(5) should not be given the extended meaning of indirect copying in cases which the mechanical drawing or blueprint is of a purely functional object.

“You may prolong the life of a licensed article but you must not make a new one under the cover of repair"

Ratio :o There is an exception to copyrighting the design of spare parts in the interest of

public policy and free marketsSpiro-Flex Industries Ltd. v. Progressive Sealing Inc. (BCSC 1986)

Facts: o Nothing in the speeches in British Leyland that would diminish the force of King

Features as an authority upon which to rely in this case as in Bayliner. Ratio:

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

EXCEPTIONS TO INFRINGEMENT (S 64 AND 64.1)

S 64(1) definitions:o Article

means anything that is made by hand, tool or machineo Design

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

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

articleo Utilitarian function

in respect of an article, means a function other than merely serving as a substrate or carrier for artistic or literary matter

s 64(2) Where copyright subsists in an element applied to a utilitarian work, there is no infringement when that work has been:o (a) reproduced in a quantity of more than 50 o (b) where the article is a plate, engraving or cast and used for more than 50 copies

S 64(3) The exception of 64(2) does not apply to:o (a) graphic or photographic representations on the face of a work/article (Magasin ;

Fletcher - design on nappies)o (b) a trademark applied to that work/article o (c) material that has a woven or knitted pattern for apparelo (d) Architectural work that is a building, or a model of a buildingo (e) A representation of a real or ficticous being, events or places, applied to that

work/article o (f) articles sold as a set, unless that set has been made 50+ timeso (g) such other work/articles prescribed by regulation

s 64.1 - The following do not constitute infringement


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o (a) applying to your work, something that has a pure utilitarian functiono (b) making a reproduction in any material form of something that has a pure

utilitarian functiono (c) doing anything the author has a right to do under copyright, if the author has

made a work that’s purpose is purely utilitariano (d) Aspects of architectural manufacturing/construction where the sole function is

utilitarian S 32.2(1)(b)(ii) limited copyright protection of public places. No infringement where 2D

art is made of public place

Kenrick & Co. v. Lawrence & Co. (UK 1890)

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

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

Ratio :o Drawings receive a copyright, but the degree of copyright protection varies with the

character of the drawing. There are only so many ways to draw a pencil See s. 64.1 re exception against infringement for utilitarian works

Cuisenaire v. South West Imports Ltd. (ExCt 1968)

Facts: o Plaintiff created rods of different sizes and colours for the purpose of teaching

arithmetic to children. Claimed protection as original productions in the scientific field under the general

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

Issue: artistic work? Held : No Reasons:

o The rods are physically littler more than tools or counters to be used for a particular purpose.

o Never intended primarily as an article regarded as artistic or beautiful in itself even if the artistic requirements requires here are not too great.

o Originality in size, shape, selection and arrangement. It is, however, the artistic work itself which is entitled to protection and not the

idea behind it.o Plaintiff’s rods may have a certain attraction to children, but that would be a very

secondary purpose.


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Ratio:

o Work that has a utilitarian purpose is not copyrightable. See s. 64.1 re exception against infringement for utilitarian works

Bayliner Marine Corporation v. Doral Boats. Ltd

Ratio: o Act doesn’t apply to designs capable of being registered under the

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

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

o Could parliament have intended for someone to gain 10 years’ protection after registering under IDA, but 50 years if they forget and have protection under copyright? No.

Magasins Greenberg Ltee v. Import-Export Rene Derhy (FCTD 1995)

Ratio: o s 64(2) is only a defence which may be raised in a copyright infringement

proceeding. Section does not deny copyright. It only sets limitation on the protection

conferred by the copyright without thereby denying the existence of that copyright.

o The holder of the copyright to this design must have authorised, first, reproduction of the applied design in an article reproduced in a quantity of more than fifty, or second, in the case of a plate, engraving or cast, the design, again with the authorisation of the holder of the copyright., must be used for producing more than fifty useful articles.


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CHAPTER 7: COMPILATIONS AND DATABASES

See syllabus.

CHAPTER 8: ECONOMIC RIGHTS, INFRINGEMENT AND DEFENCES

INTRODUCTION: THE SCOPE OF ECONOMIC RIGHTS

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

These categories receive the rights provided for under s. 3 and involve the sole right to:o produce or reproduce the work or any substantial part thereof in any material form

whatevero perform the work or any substantial part thereof in publico publish the work or any substantial part thereofo engage in any of the enumerated rights set out in ss. 3(1)(a) to (i); ando authorize any of the above acts

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

PERFORMER’S PERFORMANCES

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

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

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

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

(b) if it is fixed, (i) to reproduce any fiction that was made without the performer’s

authorisation (ii) where the performer authorized a fixation, to reproduce any reproduction

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

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

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


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s. 2 “performer’s performance” means any of the following when done by a performer:

o (a) a performance of an artistic work, dramatic work or musical work, whether or not the work was previously fixed in any material form, and whether or not the work’s term of copyright protection under this Act has expired,

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

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

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

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

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

SOUND RECORDING MAKERS

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

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

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

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

BROADCASTER’S COMMUNICATION SIGNALS

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

RENTAL RIGHTS

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

Rental under s. 2.5 of the Copyright Act.

NOTES

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

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


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REPRODUCTION

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

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

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

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

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

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

Nichols v. Universal Pictures Corporation

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

children enters, is no more susceptible of copyright than the outline of Romeo and Juliet.”

Expert evidence was said to not be needed. Found in the defendant’s favour. Character protection, again from Nimmer.

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

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

Preston v. 20th Century Fox Limited

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

of his Space Pets manuscript. Copyright in the Ewok character was discussed at the trial division.

o Claim was dismissed. Generally no copyright in a mere name.

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

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

o In words of Learned Hand J, the less developed the character, the less they can be copyrighted.

Characteristics set out in the script do not delineate the character of the Ewok sufficiently distinctly to warrant recognition as a character subject to copyright.


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o Not sufficiently different from other characters in the same movie, name not really mentioned in actual script, only popular due to Star Wars anyway.

Hanfstaengl v. Empire Palace

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

such.o Backgrounds were painted on canvas.

Copyright includes exclusive right to copy, engrave, reproduce, and multiply… by any means and by any size … could that include the exhibition of living figures?o Doubt it.o Dicks v. Brooks

Madame Tussaud case, allows the wax sculptures as they don’t compete with the originals in any way (the paintings or photos on which they were based).

Doesn’t seem like the original legislative intent was to cover this, would be a stretch, so no.

Roger v. Koons

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

Defendant made sculptures of the puppies. Sculpture was clearly to be based exactly off of the photo. Had the appellant simply used the idea, would not have been copying.

o But, copied expression exactly. Held that there was infringement, trial judgement was correct.

SUBSTANTIALITY

In determining what is substantial copying, two primary criteria are utilized.o Quantityo Quality

Qualitative factors are more significant. Relative effort between the parties in preparing their respective works The economic impact on the plaintiff’s market Other factors re: some notion of unfair competition

o Inquiry as to substantiality within broader considerations of: Whether there has been an infringement through the similarity or striking

similarity of the respective works to a substantial extent, or whether there is substantial similarity between copyrightable elements in the respective works

Whether a fair amount has been taken in a manner of the fair dealing defence.o “If the quantity taken be neither substantial nor material, if, as has been expressed

by some judges, a “fair use” only be made of the publication, no wrong is done and no action can be brought"


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QUANTITATIVELY SUBSTANTIAL

Hawkes & Son (London) Ltd. v. Paramount Film Service, Ltd.

Plaintiffs owned a copyright in a song “Colonel Bogey”. Defendants filmed an event were the song was played, film had some of the music in it. Trial J

o No substantial part of the work has been reproduced.o What has been used is fair dealing.o Impossible for there to be substantial injury from it.o Defendants didn’t have knowledge the work had been infringed.

LJo Though not prolonged, clearly a substantial, vital, and essential part which was

reproduced.o Despite not really causing any damage, and the fact this will hamper news films, has

infringed.

QUALITATIVELY SUBSTANTIAL

Illustrated best with musical works involving a portion that is highly appealing and often repeated, the “hook”.

Breen v. Hancock House Publishers Ltd.

Plaintiff completed a doctoral thesis in ’72 on the Canadian West and the Ranching Frontier.

Defendant prepared a manuscript in the 70s on Ranching. Defendant was working on own manuscript, at recommendation of others looked at the

plaintiff’s.o Late for deadline, made liberal use of the plaintiff’s work.

Plaintiff went to update own work, read defendant’s, found substantial copying. Quantitatively small, but seemed to be more than fair dealing. Only conjecturally damaging. Sale of second book was disappointing. Even in the absence of monetary loss, or of accountable profits, the finding of

infringement might nevertheless entitle a successful plaintiff to exemplary or punitive damages.

Publisher was unaware, so sufficient to limit to permanent injunction. Though a scholarly work might have limited commercial value, it is nonetheless entitled

to the full protection of copyright. It is his work, his labour an chis talent which have produced it.

o Plaintiff succeeded in proving this point.

Hutton v. Canadian Broadcasting Corporation

Facts were done before, two TV shows, Star Chart and Good Rockin’ Tonite. Appreciable similarity between the words of the two productions, at least between the

words of SC and the first 125 programmes of GRT. Same author for those, same host.


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Common stock elements like teases, bumpers, montages, etc. were common to the trade. Some similarities were inevitable due to the author’s personal writing style and the

clichés of the business. Trial J: Deal with similar subject matter, but no substantial similarity in the presentation

of it, due to the dramatic incidents of SC, which give it its original character, are altogether lacking in GRT.

Appeal: Different premises, different structure, based on similar things (show from the 50s). When both shows are viewed as a whole, there is no substantial similarity in the mode of expression.

Prism Hospital Software v. Hospital Medical Records Institute

Two computer programs, facts given earlier. Had access to the source code, had other program installed on computer while doing the

other version. Evidence of actual copying. Defendants tried to hide their activities. No literal copying, more of a translation. Actual copying has been demonstrated, access to the source code has been

demonstrated, and the programs are substantially similar on the positive evidence available.

Bad copying, but still copying. Copying goes beyond a reproduction explainable by reference to the specifications for

data collection laid down.o Program is more similar to other one, doesn’t align with specific requirements of

HMRI.

PERFORMANCE IN PUBLIC

Expressed in s. 3(1) of the Copyright Act as the sole right “to perform the work or any substantial part thereof in public”.

PERFORMANCE

s. 2 of the Copyright Act, “performance” means any acoustic or visual representation of a work, performer’s performance, sound recording or communication signal, including a representation made by means of any mechanical instrument, radio receiving set or television receiving set.o WTO Agreement Implementation Act 1994o NAFTA Implementation Act 1993o Copyright Amendment Act 1993

Canadian Cable Television Association v. Copyright Board (Canada)

Immediately prior to this case the definition read at the end: “any mechanical instrument or by radio communication”.


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Primarily concerned with s. 3(1)(f), the right to communicate a work to the public by

telecommunication” and whether this includes the performance of musical works in transmissions to cable subscribers.

At this time, the expression musical works was still defined as the written score. Musical work means any combination of melody and harmony, or either of them, printed,

reduced to writing or otherwise graphically produced or reproduced. Issue required the court to consider the meaning of performance and the meaning of

public.o The court found the communication to be a performance and to be in public.

Definition includes any acoustic representation. “Includes” is generally not limitative, and not apt in this context to limit Parliament’s

intention to cover all kinds of acoustic representations.

“IN PUBLIC”

Jennings v. Stephens

Dramatic society gave an unlicensed performance of a dramatic work at a meeting of a women’s institute.

Meeting took place in the village hall, no admission paid, but yearly fee to be included in the institute.

No persons, aside from members, were allowed to be present at the meetings because the institute considered that the presence of non-members would change it from private to “public”.

Owner of copyright has the sole right to do which is by the Act conferred on the owner of the copyright.

The expression “in public” must be considered in relation to the owner of the copyright. If the audience considered in relation to the owner of the copyright may properly be

described as the owner’s “public” then it would be infringement for anyone aside from the copyright holder to perform.

Regardless of the fact that the performers were a part of the same institute as the viewers, not the same as presenting a play in front of family members.o They are members of the institute for things such as this.o Compare it to taking a lecture from a speaker, and performing without his

permission.

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

Plaintiff held the copyright to a song composed in 1892 TMWBTBAC, same titled movie came out in Canada in 1935.o Entirely different plot.

Cannot be an infringement of performing right in musical composition unless there has been a public performance of the musical composition by the defendant.

To say that the mere showing of the title of the song on the screen was a public performance of a musical composition is abhorrent to common sense.

Musical composition is performed by audible reproduction, by the voice or by musical instruments or by mechanical methods of reproduction.


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

Facts: o Plaintiff had the exclusive right to certain telecasts of games. o Defendant maintained an antenna in Montreal and would intercept the broadcasts

and further transmit them to units in the homes of their subscribers, etc. The character of the individual audiences remains exactly the same, each is private and

domestic. Plaintiff wanted as many people as possible to see the telecast, so their goal hasn’t really

been hurt by the defendant.o The advertisements and everything were rediffused as a whole.

Performances in the homes and apartments of the subscribers of the defendant company were not performances “in public”.

Much different in the defendant’s showroom, where they would also show the footage.o Showroom was there to demonstrate and sell its services, open to the public.o Nothing of a domestic or quasi-domestic nature and constituted a performance in

public.

Canadian Cable Television Association v. Copyright Board (Canada)

Already found to be a performance, now considering if it is in public. “Performance is no less in public because the listeners are unable to communicate with

one another or are not assembled within an enclosure or gathered together in some open stadium or park etc”o Also not private just because people are in the privacy of their homes when viewing.

AUTHORISATION

s. 3(1) concludes with the right of the copyright owner to authorize any of the preceding rights in s. 3(1).

University of New South Wales v. Moorhouse

Plaintiff and respondent, Moorhouse, was the author and art owner of ashore stories in magazines and later in a book.o Granted the second plaintiff the right to print, publish and sell the book in Australia.

Defendant and appellate had made 2 photocopies of about 10 pages of a book. Deals with fair dealing under s 40 and reasonable portion under s 49. Seemed as though the university may have authorized the use of the photocopiers for

illegal means, however a copy of the act was available and there was a notice on the photocopier.

Found that the university fig not give adequate notice on the machines for the purpose of informing users that the machines were not to bemused in a manner that would constitute an infringement of copyright.

Copies were infringing.


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CBS Songs Ltd. v. Amstrad Consumer Electronics Plc.

Plaintiffs suing the defendant for making recording equipment that would allow members of the public to copy records in which copyright subsists and that the defendant must not advertise their equipment in such a way so as to encourage copying.

Pirates don’t use the type of technology that the defendant is selling. Defendant’s machine was advertised to be able to copy cassettes, did have an asterisk

saying that copying of some material would need permission under the Copyright Act. BPI submitted that defendant authorised infringement, and would be a joint infringer

together with anyone who uses a machine for the purpose of making an infringing copy. No manufacturer or machine confers on the purchaser authority to copy unlawfully. By selling the recorder it may facilitate copying, but does not authorise it. Already said it shouldn’t be used illegally, but did advertise aspects which could be

intriguing for illegal purpose (double-tape, twice the speed).o If they didn’t advertise this, other manufacturers would.

Defendant conferred the power to copy, but did not grant or purport to grant the right to copy.

Joint infringes are two or more persons who act in concert with one another pursuant to a common design in the infringement.

Muzak Corporation v. Composers, Authors & Publishers Association of Canada Ltd.

Respondent has the sole right to perform the works in Canada.o Alleges infringement on the part of the appellant because, it claims, the appellant

has authorized the performance of the musical works under the contract with the defendant broadcasting company.

No infringement found. CAPAC was the owner of the sole right to perform certain musical works in public

throughout Canada. CAPAC submitted that Muzak had authorised the performance of the works by leasing

records containing the musical works in question to the Canadian ABC franchise (broadcasting corp.).

These recordist contained the musical pieces in question, which recordings were subsequently broadcast in public by ABC.

SCC rejected the authorisation connection. Mere fact of supplying the means which permitted a person to commit an infringement

did not amount to authorisation.

de Tervagne v. Beloeil

Plaintiff was an author of a dramatic work, lived in Paris. Defendant was a town in QC.

o Town owned a cultural centre that performed dramatic works. Second defendant was a non-profit that rented the cultural centre. Proceedings had been brought against the producer, but his company went bankrupt. Plaintiff found out about the play, tried to negotiate terms with the producer, but they

were not complied with.


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Plaintiffs asserted that the defendant had authorised the play to go on. Authorise to mean “sanction, approve and countenance”. Atkin LJ “authorise means to grant or report to grant to a third person the right to do the

act complained of, whether the intention is that the grantee shall do the act on his own account, or only on account of the grantor”

A defendant who simply supplies the means which make the infringement possible cannot be held liable for authorizing the infringement if he had no control offer the means in question.

A lot to do with the element of control. Held that the defendants have no liability.

o Did not authorise the performances of the play.o The producer alone had control over the choice of play.

Situations that might constitute an infringement by authorisation can include the following:o Situations similar to contributory infringement in the US.

Concurrent rather than joint tortfeasors. The acts of the tortfeasors are several or independent, but both cause the

damage. There must be some link, such as the ability to control the use of copyrighted

works by others. Knowledge of the infringement occurring as a result of the aid provided.

No need for the authoriser to benefit from the infringement.o Situations where the authoriser can be said to sanction, approve, and countenance

the infringement by granting or purporting to grant to a third person the right to do the act complained of. Essence of this test is that the authorisation can come only from somebody

having or purporting to have authority to give the authorisation. This test precludes any authorisation by merely assisting, encouraging, or

facilitating.o Situations in between the above two.o Merely providing the means of infringement is not in itself sufficient to constitute

“authorisation”. A seller can presumptively assume that lawful use will be made of any

equipment.

SPECIFIC OR ENUMERATED RIGHTS

Paragraphs (a) to (i) of s. 3(1) are listed.

COMMUNICATION TO THE PUBLIC BY TELECOMMUNICATION

Bunch of random stuff. Does caching by the ISP amount to reproduction, or is it merely a necessary part of the

means of telecommunication.o Necessary part of the means of telecommunication (so long as that is what is

happening)


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PRESENTATION AT A PUBLIC EXHIBITION

s. 3(1)(g) provides for the presentation at a public exhibition, for a purpose other than sale or hire, of an artistic work created after June 7, 1988 as stipulated in Copyright Amendment Act.o Arose due to the provision of the right to perform a work or any substantial part

thereof in public was not applicable to static artistic works.

FROM GUTENBERG TO TELIDON: A WHITE PAPER ON COPYRIGHT, PROPOSALS FOR THE REVISION OF THE CANADIAN COPYRIGHT ACT

Droit de suite. There is none in the present Act.o This right would enable the creator of an original artistic work to share in the

proceeds of its resale.o In this manner an artist and even possibly his heirs, could claim a share of increases

in the value of a work of art as it was resold. In the relatively few jurisdictions that do grant the right, it applies oily to works

sold by public sales or auctions.o Many practical and legal difficulties, and the ease of evading the right there remains

the difficulty of ensuring that the right would dapple only to Canadian creators. If Canada were to have one, it would benefit foreign artists’ work in Canada, but

not to Canadians whose work was sold overseas. Exhibition right for artistic works

o Such a right would enable artist to control the public exhibition of their work.o This would control the public presentation of their art even after it was sold.

A CHARTER OF RIGHTS FOR CREATORS: REPORT OF THE SUB-COMMITTEE ON THE REVISION OF COPYRIGHT

Creators of artistic works have long maintained that compared to creators of other types of works, they are short-changed by the present Act.o No royalties, etc.

Would have to be restored only by recognizing the unique uses made of an artistic work and by providing exclusive rights to these under the Copyright Act.

Recommendation is that the revised law should recognize a right to exhibit the original of an artistic work in public. o This right should also extend to artistic works which are part of a limited edition.

Droit de suiteo The biggest set back would deb that it would have to be extended to non-Canadian

artists, and could displace the art to neighbouring jurisdictions where the right doesn’t exist.

o Recommendation is that droit de suite not be introduced in the new act.

INFRINGEMENT

Provided in s. 22 and 27.1 of the Copyright Act, as inserted by s. 15 of the Copyright Amendment Act 1997.


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PARALLEL IMPORTATION OF BOOKS

s. 27.1 deals specifically with the parallel importation of books. The copy of the book is obtained lawfully in the extraterritorial jurisdiction. Policy objective of this section is to protect the Canadian copyright owner of any book by

preventing the importation of the book from an extraterritorial source. It reflects trade protection of the publishing industry in Canada.

o Primary infringement is the act of importation.o Secondary is by dealing with a book that is imported contrary to this section.o s. 44.2 enables the owner of the copyright/licensee/distributor to invoke the remedial

provisions of s. 44.1(3).o s. 45 has the exceptions, including the importation of 2 copies for the use of the

importer only.

INFRINGEMENT GENERALLY

PRIMARY INFRINGEMENT

s. 27(1) stipulates primary infringement:o An infringement of copyright for any person to do, without the consent of the owner

of the copyright, anything that by this Act only the owner of the copyright has the right to do.

Two aspects to take note of:o One of the most conceptually difficult elements in establishing infringement by

reproduction is that of “access”. Must be established to provide the causative link in the copying of the plaintiff’s

work, as opposed to the position that the defendant’s work constitutes an independent creation.

If access can be established by direct evidence, no difficulty. If only circumstantial, or ‘implied’, inquiry must necessarily involve how far

account should be taken of, or what weight ought to be given to, a comparison of the respective works and the factors of striking or substantial similarity in itself.

o An emphasis on identifying and protecting only copyrightable material, especially in cases of non-literal copying. Isolating the protectable form of expression, figuring out what the author actually

created, and evaluating whether or not infringement has occurred by applying the tests for infringement to a comparison.

SECONDARY INFRINGEMENT

Stipulated in s. 27(2) concerns “dealing” in various ways with an infringing copy of a subject matter protected by copyright.

Infringement of copyright for any person to o a - sell or rent out, o b - distribute to such an extent as to affect prejudicially the owner of the copyright, o c - by way of trade distribute, expose or offer for sale or rental, or exhibit in public,o d - possess for the purpose of doing anything referred to in paras a to c, or


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o e - import into Canada for the purpose of doing anything referred to in paras a to c.

EXCEPTIONS, DEFENCES, AND FAIR DEALING

Exceptions to infringement are set out in ss. 29 to 32.2.o Substantially expanded by the Copyright Amendment Act 1997, ss . 18 and 19.o The general defence of fair dealing stayed the same, but greatly expanded for

educational institutions, libraries, museums and archives. Fairly restrictive in Canada, must fall into specified category:

o Research, private study, criticism or review, or news reporting. Much more judicial discretion in the US.

Sony Corp. v. Universal City Studios, Inc.

Respondents owned copyright in various broadcast television programs. Petitioners made VCRs. Even unauthorised uses of a copyrighted work are not necessarily infringing.

o An unlicensed use of the copyright is not an infringement unless it conflicts with one of the specific exclusive rights conferred by the copyright statute.

Time-shifting for private home use must be characterised as a non-commercial, non-profit activity.

Plaintiffs admitted that no actual harm to their copyrights has occurred to date. No infringement found. Dissent argues that when a scholar is refused the ability of fair use, the whole public

loses, while if an individual at home is denied, they are the only loser.

MAKING ONE ENTIRE COPY

Making a whole copy can never qualify as a “fair” amount. s. 30(2) allows libraries, archives, or museums to make a single copy for a library user

for the purpose of research or private study.o For some reason wasn’t amended to allow that user to make his or her own copy.

COPYING UNPUBLISHED WORKS

Any usage by reproduction, public performance, or otherwise under s. 3 of an unpublished work has never been held to qualify as fair.o Many sources agree with this.

There is no statutory limitation to this effect because s. 29 has not expressly limited the scope of fair dealing to only published works.

The reproduction of anything that is unpublished could have the effect of it, or a portion of it, being published.o A separate economic right under s. 3.o From Gutenberg to Telidon thought it prudent that fair use doctrine apply to all

copyright subject matter that has generally been made available to the public, regardless of whether it has been published in the traditional sense.


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Allen v. Toronto Star Newspaper Ltd.

Plaintiff was a freelance photographer. Engaged by a nation-wide magazine to do a cover photo. The defendant, 5 years later, used the photo in their newspaper. The magazine had no issue with the photo being used. The defendant had put the older photo aside a new one to show the change she had

undergone. The nature and purpose of the use by the defendant was to illustrate a current news

story, therefore the defence of fair dealing was allowed.

Television New Zealand v. Newsmonitor Services

Plaintiff telecasts news and current events. Defendant monitored these broadcasts for its clients, providing to them a transcript of

any broadcast in which they were interested. To do so, the defendant videotaped all telecasts of the plaintiff that the defendant

considered might be needed.o If they were not needed, they were then deleted.

Plaintiff doesn’t want to put them out of business, just wants to get royalties. News monitoring service is parasitic, doesn’t do any of its own work. Defendant needed to record whole programme to effect its work, no other way of doing

so. Found that all the takings are so substantial with regard to the program they came from

couldn’t be fair dealing.o What the defendant was doing wasn’t research or private study, at least not for itself.o “Research means searching into a matter or subject or the investigation or close

study of it including written materials or those captured in electronic form.”o “Private study connotes a form of study which is personal to the person undertaking

it.”

MCA Canada Ltd. v. Gillberry & Hawke Advertising Agency Ltd.

Action for damages for infringement of copyright in a musical work. The defendant commissioned a parody of the words of the musical work “Downtown”

using the same tune. Person who made the parody looked into finding who held the copyright.

o Knew that it existed. Defendant song author knew the head of MCA Canada, could have asked him. Found that it was more than fair dealing, needed to be licensed for parody. Damages were assessed at what it would have cost to license properly.


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CHAPTER 9: MORAL RIGHTS

Introduction Even after the transfer of the copyright, the author shall have the right to claim

authorship of the work, as well as the right to object to any distortion, mutilation, or other modification of the work which would be prejudicial to his honour or reputation.

The determination of the conditions under which these rights shall be exercised is reserved for the national legislation of the countries of the Union.

The means of redress for safeguarding these rights shall be regulated by the legislation of the country where protection is claimed.

s 14.1 and s 28. 1 deal with moral rights. s. 34(2) deals with remedies.

Snow v. The Eaton Centre Ltd.

Application relies solely on s. 12(7) of the Copyright Act. Allows the author the right to restrain any distortion, mutilation, or other modification

of his work that would be prejudicial to his honour or reputation. Defendant attached ribbons to the necks of the 60 geese forming a sculpture known as

Flight Stop. Done without the knowledge or permission of the plaintiff.

Plaintiff is an artist of international reputation. Defendants say the case doesn’t fall under s. 12(7), and if it does, it’s unconstitutional. “Prejudicial to honour or reputation” is subjective, involves a judgment on the part of the

author so long as it is reasonably arrived at. Says the addition of the ribbons make it look ridiculous.

Plaintiff only wants for the ribbons to be removed. Held that the ribbons did distort or modify the plaintiff’s work. Were to be removed.

Prise de parole Inc. v. Guérin, éditeur Ltée.

Defendant published a collection for schools containing a number of stories, including an extract from a work, which was protected and duly registered original work within the meaning of the Copyright Act.

The author of the work had assigned the exclusive right to print and publish it and to negotiate his copyright to the plaintiff.

Already clear that the defendant had infringed the copyright of the work. Sales were good for the market in which it was sold, mainly grade 9 and 10, until the

extract was published in the defendant’s collection. Collection was targeted to Grade 8. About a third was reproduced word for word. Author said that it was so clumsily adapted (missing key parts), that he would have

rather his name not be associated with it at all. Under s 14.1 the author has, subject to s. 28.2 the right to the integrity of his work -

moral rights. Rights may not be assigned, but can be waived. This has not been done.

s. 28.2(1) does not require the plaintiff to prove prejudice to his honour or reputation, must be proved that the work was distorted, mutilated, or otherwise modified.


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Allows for the use of the author’s opinion in assessing whether an infringement is prejudicial.

This case differs from Snow v. The Eaton Centre Ltd. in that the judge believes, in the assessment of the distortion, there is a requirement of an objective evaluation of the prejudice based on public or expert opinion. In this case, the evidence certainly shows that the author felt frustrated by the

publication of a shortened version of his work. Clearly demonstrated that the work was distorted, mutilated or otherwise modified. Author’s reputation is established. Didn’t think that the amount of lectures he was asked to give had been affected by

the altered work. Admitted that he hadn’t been ridiculed, or had any complaints expressed to him by

his colleagues or newspapers. Found that although the work clearly has been distorted, has not been shown that it was

modified to the prejudice of his honour or reputation. Some considerations on page 291 of the Course Pack.

John Maryon International Ltd. v. New Brunswick Telephone Co. Ltd. (plaintiff)

Plaintiff had engaged the defendant to construct a new tower in downtown Moncton. Engineering design work was done by a defendant as well. President of both companies was the same man. Dispute ensued as to the quality of the tower’s construction. Plaintiff issued proceedings against the defendants claiming breach of contract and

negligence in order to recover expenditures for repairs it had made. Various counterclaims were made by the defendants, including infringement of

copyright. The plaintiff placed a girdle around the tower for the purpose of repairing it. This was alleged to constitute an interference with the structural design of rate tower

as an “architectural work of art”. At both trial and appeal the defendant was not found to be the author of the

structural design. Sufficient to dispose of the claim, but the CoA discussed the relationship between

copyright and implied terms of any contract that may limit copyright, as well as a claim to an infringement of moral rights (the right of integrity) that the defendant made.

Laforest said even if the defendant was the author of the design, don’t think he could recover. SCC looked to the Netupsky v. Dominion Bridge Co. Ltd. case where changes to a

contract had been contemplated by the parties but the contractor refused to make them. Second contractor made the changes, in doing so the court found they could use

the plans in which the original contractor held the copyright. Defendant knew the structure was intended as a communications tower. Had to be safe, and be perceived to be safe by the public. Public safety had to be ensured without arousing public concern.


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NB Tel considered making repairs inside the tower, but didn’t want to risk interfering with the communications facilities.

Tried to bring in s. 20 which would give a right to damages for copyright infringement.

Looks to European law which indicates the necessary distinction that must be made in the treatment of works where the function of which is utilitarian as well as artistic.

There’s a balance, utilitarian function is first here, takes precedent. Counterclaim dismissed.

Moral rights are vested, in s. 14.1(1), in an “author of a work”. Therefore, not only limited to authors, but also to “works” which are defined in s. 2 of

the Copyright Act. Moral rights are therefore applicable only to subject matter to which s. 3 rights apply. This in turn relates to “every original literary, dramatic, musical and artistic work”

that qualifies for protection under s. 5. “Neighbouring rights” should not be protected by moral rights.

More on parody on pp 396.


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PART II: TRADEMARK LAW

CHAPTER 11: A NOTE ON UNFAIR COMPETITION

Mogul Steamship Co. v. McGregor, Gow & Co.

1889 case that said there was no ability for the court to shoot down “unfair” activity: Couldn’t draw a one between fair and unfair, reasonable and unreasonable.

Moorgate Tobacco Co. Ltd. v. Philip Morris Ltd.

Three meanings of the term “unfair competition”: A synonym for the tort of passing off, A generic name covering a range of causes of action available to a trader against

various behaviours of competitors, The name of a new general cause of action to protect against “unfair” activity of a

competitor causing damage.

International News Service v. Associated Press

US SC protected the plaintiff’s exclusive right to report news of WWI to the American public.

Without permission the defendant had presented info to its subscribers as news collected by its own means when it had in fact been reported first by the plaintiff and copied by the defendant.

Defendant’s behaviour was classified as an unauthorised interference with the plaintiff’s business precisely at the point where profit was to be made.

Trade-marks Act s. 7 No person shall… (e) do any other act or adopt any other business practice

contrary to honest industrial or commercial usage in Canada. Above was found to be ultra vires of the federal government in MacDonald v. Vapour

Canada Ltd. and hasn’t been reinstated exactly. We are therefore left with the second meaning of unfair competition from Moorgate

Tobacco Co. Ltd. above.


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CHAPTER 12: PASSING OFF (USE GOOGLE DOC)

INTRODUCTION

THE COMMON LAW TORT

Perry v. Truefitt

First modern statement of the tort. A man is not to sell his own goods under the pretence that they are the goods of another

man; he cannot be permitted to practise such a deception, nor to use the means which contribute to that end.

He cannot therefore be allowed to use names, marks, letters, or other indicia, by which he may induce purchasers to believe that they goods which he is selling are the manufacture of another person.

Though the word deception is used, the tort requires no mental element on the defendant’s part.o May occur in innocence.

Walker v. Alley

One of the earliest Canadian cases. Granted an injunction against the defendants use of a sign of a golden lion in front of his

store. Not the exact same, but similar enough so as to cause confusion.

A.G. Spalding & Bros. v. A.W. Gamage Ltd.

Basis of the tort is a false representation by the defendant, must be proved in each case as a fact that the false representation was made.

Common case is where the representation is implied in the use or imitation of the mark, trade name, or get-up with which the goods of another are associated in the minds of the public, or of a particular class of the public.

Tort is based firmly on misrepresentation by the defendant about what itself is providing to consumers.o Normally the defendant is passing off the plaintiff’s goods as its own.o In this case, defendant is passing off plaintiff’s shoddy goods as though they were the

plaintiff’s superior goods. Can come down to damage to goodwill.

o Hurt the business in lost sales, lost future sales, loss of reputation. Five Prong Test for Passing Off:

o 5 Characteristics which must be present in order to create a valid cause of action: A misrepresentation Made by a trader in the course of trade To prospective customers of his or ultimate consumers of goods or services

supplied by him


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Which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence)

Which causes actual damage to a business or goodwill of the trader by whom the action is brought or (in a quia timet action) will probably do so.

Reckett & Colman Products Ltd. v. Borden Inc.

Case of alleged source confusion by the defendant’s proposed use of a similar get-up for their product package.

Three elements the plaintiff must prove in order to succeed:o Must establish a goodwill or reputation attached to the goods or services which he

supplies in the mind of the purchasing public by association with the “get-up” such that the “get-up” is recognised by the public as distinctive specifically to the plaintiff.

o Must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that foods or services are the plaintiff’s.

o Must demonstrate that he suffers or, in a quia timet action, that he is likely to suffer damage by reason of the erroneous belief engendered by the defendant’s misrepresentation that the source of the defendant’s goods or services is the same as the source of those offered by the plaintiff.

Cadbury Schweppes Pty. Ltd. v. Pub Squash Co. Pty. Ltd.

Plaintiff had a line of drinks, defendant was imitative, and cut into sales, but at no time actually tried to pass off or misrepresent itself or its product.

THE STATUTORY TORT

Relevant provisions: Trade-marks Act, s. 7 No person shall …

o (b) direct public attention to his wares, services or business in such a way as to cause or be likely to cause confusion in Canada at the time he commenced so to direct attention to them, between his wares, services or business and the wares, services or business of another;

o (c) pass off other wares or services as and for those ordered or requested.o (d) make use, in association with wares or services, of any description that is false in

a material respect and likely to mislead the public as to: (i) the character, quality, quantity or composition, (ii) the geographical origin, or (iii) the mode of manufacture, production or performance of the wares or

services.

Kirkbi AG and Lego Canada Inc v Ritvik Holdings Inc (Mega Blocks Inc.) 2005 SCC 65 Facts

o Lego patent on brick design expired and Megablocks started producing their own. Lego sued for trademark infringement.

Issue o Could the plaintiff register a trademark, thus preventing the defendant from

creating their blocks?


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Held o No, trademark was not granted

Reasons o applied the 3-prong test

did not meet first condition of action (that there was good-will in the distinctiveness of the product - ie. the process/techniques common to the trade) - would unreasonably limit the development of art or industry

o To allow a trademark would create a monopoly over “lego”-like products Ratio

o Trade-marks are meant to protect the get-up of a product, not to grant monopolies over the product (Oxford Penderflex)

o Negligence is not a defense to passing off (Seiko)o s 7(b) can stand alone as a statutory cause of action

Relationship between the Trademark Act, common law and the Code Civil du Québec.o s 91(22) - Patents ; s 91(23) - Copyright → trademarks not technically within

Parliament’s legislative authority.o Maybe regulation of trade and commerce? → s 91(2)

ELEMENTS OF PASSING OFF: REPUTATION

PROTECTABLE GOODWILL

SHARED GOODWILL

Erven Warnink

Plaintiff was one of a number of traders dealing in advocaat in the UK. Defendant’s version, also called advocaat, was not made according to the true recipe.

o Made with wine not spirits. Judge held that defendant couldn’t use the name because it wasn’t by definition

advocaat.o This misrepresentation would harm the goodwill of any trader dealing in the true

substance by directing custom. Confusion was not between different sources for the same wares, but between the

different types of wares called, inaccurately, by the same name. Known as “extended passing off”.

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

Plaintiff is a national organisation established by French law. Duty is to regulate the areas and conditions of production and sale of wines and spirits

bearing controlled appellations of origin. Defendants are companies duly incorporated in Canada selling wines under various

names, some of which include the word “champagne”, in particular “Canadian Champagne”.

Facts:


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o Not all producers in the champagne region are allowed to use the name, but those who are permitted share equally in the benefits derived from the good will.

Canadian law allows the use of the word champagne as long as there is no misrepresentation to the public.

Dairy Bureau of Canada v. Annable Foods Ltd.

Defendant had marketed a drink that replicated whole milk, but with less fat. Contained fresh milk and skin milk powder and was homogenized. Marketed as Homolite 1% low fat drink, as it couldn’t be called milk. Tried to sue for the use of the term “homo”. Not a name of a product, but a process, could be used for other products like peanut

butter, etc. Plaintiffs found to not have a case for likely confusion, given the efforts the defendant

made to differentiates its product in the marketplace.

FOREIGN GOODWILL

COMMON LAW

Orkin Exterminating Co. Inc. v. Pestco Co. of Canada Ltd. et al.

Orkin was well-known and established company in the US, no business in Canada. Pestco used Orkin’s name in telephone directories, and would say they were Orkin when

they showed up to work but did business under the name Pestco. Held that it was passing off.

o Goodwill is basically reputation - if you have reputation, you have goodwill, regardless of whether there is a business presence there.

o Generally where there is such confusion (in defendant’s jurisdiction), there is goodwill.

o Defendant had knowingly misrepresented itself, presume confusion. Was there actual damage?

o Loss of control of exploitation rights, there was clear evidence that Orkin intended to commence business in ON, although intent was not an absolute element.

STATUTE

Enterprise Rent-A-Car Co. v. Singer

American plaintiff that had operated in the US for a long period of time. Defendant, upon hearing of plaintiff’s intention to enter into Canadian market, changed

name to Enterprise from Discount. Orkin was heavily relied on. Many Canadians that had used Enterprise in the US, had a 1-800 number that Canadians

could use. No finding of advertising “spillover” from the US to Canada. Defendant argued that to use s. 7(b), must show that the trade mark was known in

Canada under s. 5.


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Court found that no compliance with s. 5 required when s. 7(b) is in action as in Asbjorn. Ruling was affirmed, found that s. 7(b) requires nothing different than the common law

as regards foreign reputation.

NON-COMMERCIAL GOODWILL

Polsinelli v. Marzilli

Trudeau liberal case - Liberal party seeks injection against candidate who is not affiliated with the party and promotes himself to be a Trudeau Liberal.

The injunction was denied, passing off does not extend to matters other than commercial trade or property.o Additionally, the court was reluctant to inject itself into the election process.

Doesn’t work in purely personal matters.o Du Boulay v. Du Boulay - can’t prevent someone from assuming a family name.o Day v. Brownrigg - can’t prevent someone from calling their house the same name.

INDICIA

GENERAL PROOF OF DISTINCTIVENESS

Oxford Pendaflex Canada Ltd. v. Korr Marketing Ltd.

General proof of distinctiveness Defendant copied same tray as plaintiff, using lighter material.

o Plaintiff alleges passing off.o Whether the shape of an item (desk tray) indicated a “single source”, i.e. that it was

distinctive.o Court held that the shape of the tray was not unique enough to show a single source,

it was simply a tray in the shape of a tray that every supplier had.o Held, essential to “distinctiveness” is that the product acquired a secondary

meaning; none of the suppliers had made any of the trays distinctive.

Ray Plastics Ltd. et al. v. Dustbane Products Ltd.

Plaintiff manufacturer of “Snow Trooper” snowbrush/ice scraper/squeegee all-in-one. Appearance was uncommon and enjoyed very successful sales. Defendant produced one that was nearly identical. “Element of reputation” … whether get-up or distinguishing guise has a secondary

meaning. “As to distinctiveness, the rules is that the more distinctive a product, the more easy one

can establish reputation.” o Snow Trooper was very distinctive, lots of sales and advertising.

Court found intentional copying. When something is intentionally copied, there is a presumption that the product has a

secondary meaning, i.e. a reputation.


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Robinson v. Bogle - the Belleville College Case

Defendant used the name of plaintiff that was colloquially used but not its official name. Held that public use of a name has never been held to attach the designation to the

business.o ie not grounds for distinctiveness.

SECONDARY MEANING

DESCRIPTIVENESS

Reddaway (Frank) & Co., Ltd. v. George Banham & Co., Ltd. - (the Camel Hair case)

The descriptive term “came hair belting” became, over time, to be understood by the public as goods manufactured by the plaintiff.

“Camel hair belting” gained a secondary meaning that the goods originated with the plaintiff alone.

A descriptive word can be distinctive because it shows origin.

GENERICNESS

Grand Hotel Company of Caledonia Springs, Ltd. v. Wilson

Caledonia Springs Water - bottled water, another supplier comes to nearby springs and also sells Caledonia Spring Water.

Held that it was okay so long as there is no link with first supplier - can distinguish products through drawings and other indicia.

GET-UP – PACKAGING, PREMISES

Reckitt & Colman Products Ltd. v. Borden Inc.

HoL moves away from 5 part test. Jif lemon shaped container containing lemon juice; defendant puts out similar product in

lemon shaped container. Held the lemon shows origin, it has a secondary meaning , like in the camel hair belting

case, that the goods originate solely with the plaintiff manufacturer. The lemon-shaped containers indicate not just lemon juice, but Jif lemon juice. The labels on the neck of the bottle and the insignia were not enough to distinguish the

two products because “the essence of the action for passing off is a deceit practiced upon the public and it can be no answer, in a case where it is demonstrable that the public has been or will be deceived, that they would not have been if they had been more careful, more literate or more perspicacious.” o The public is essentially buying it from a shelf, and they will look at the plastic lemon

shape and not the small label.


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GET-UP - WARES

Eli Lilly and Co. v. Novopharm Ltd.

Contra to Ciba-Giegy Survey evidence did not support “claim of association between the capsule colours being

the same and capsule source being the same, very little evidence of an association between Prozac name and the actual colours of the Prozac capsule, and very little evidence of an association between the capsule colours green and pale yellow and the Prozac name.”

The defendant chose to use the same capsule colours as the plaintiffs, and they do so for a marketing reason but that reason is to identify the medicine as one that is therapeutically equivalent to the defendant’s product, not to represent to the public that their products are the plaintiffs.o Misrepresentation can exist without an intention to misrepresent.o However, as noted above in this case not only was there no intention to

misrepresent, but the capsule appearance does not in fact play such a role. Plaintiffs did not prove that the capsule appearance was a distinguishing feature of its

product. Also likelihood of confusion? No evidence of actual confusion.

o Patients generally don’t care what brand they use.o They know that generics are used, and can easily find out according to label on vail if

they are concerned.

RANGE OF INDICIA

VERBAL

Words may be generic or descriptive, but if secondary meaning is found in the words, they are protectable, albeit weakly.

Coined words or arbitrary choices result in strong marks. Examples:

o Office Cleaning Services Ltd. v. Westminster Office Cleaning Association was not actionable.

o Personal names can be: J&A McMillan Ltd. v. McMillan Press Ltd.o Assumed names as well: Landa v. Greenberg, where “Aunt Naomi” was protected as

a name for a kids’ column.o Stag names too: Hines v. Winnick where “Dr. Crock and His Crackpots” was

protectable.o Letters or numbers: HQ Networks Systems Inc. v. HQ Office Supplies Warehouse Inc.

Joseph v. Lee “501 Video” protected against “501 Arcade”. Pizza Pizza Ltd. v. 528635 Ontario Inc. where 1111 was part of a delivery phone

number.


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VISUAL

All manner of get-up may acquire secondary meaning:o labels, devices, pictures, premises, shapes of wares, and so on.o Colour combinations may have trademark status, as in Visa International Service

Association v. Visa Motel Corp. Visa credit financing colours were found to have trademark status.

o Doubtful one colour could qualify for trademark protection because of the “exhaustion of colours” theory in Dumont Vins & Spritueux Inc. v. Celliers du Monde Inc.

FICTIONAL CHARACTER

These are more conceptual marks. Shaw Brothers (Hong Kong) Ltd. v. Golden Harvest (HK) Ltd. producer of a martial arts

film series had a specific character, defendant tried to feature the same character with name, accoutrements, costume and distinctive sounds.

LOSS OF REPUTATION

ABANDONMENT

Ad-Lib Club Limited v. Granville

o Plaintiff sought interlocutory injunction against the defendant for allegedly passing off its discotheque night club.

o If defendant was able to open club with that name, good will from previous club would be gone for good.

o No other reason to pick that name, no evidence filed.o Injunction granted.

BECOMING GENERIC


Lawsuit over the use of the word “champagne”. Defendants claim that over the years the word has become generic. Companies from Champagne have had a part in diluting the word, marketing Brazilian

and Argentinean wines as champagne in those countries. Champagne in the dictionary is frequently referred to as “effervescent wine”, sometimes

from Champagne or elsewhere. Court, however, says that despite the considerable onslaught, the word has resisted the

pull and in their opinion, it has not yet fallen into complete generic use.o Now has a secondary meaning, has become “semi-generic."


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ELEMENTS OF PASSING OFF: MISREPRESENTATION

PROOF OF MISREPRESENTATION

FACTORS


The elements of the common law tort of passing off are”o Reputation or goodwill in the producto A misrepresentation leading to or capable of leading to deceptiono That such misrepresentation is likely to lead to damage to that goodwill or

reputation. As said in Spalding & Bros. v. Gamage Ltd.

o The basis of a passing off action being a false representation by the defendant, it must be proved in each case as a fact that the false representation was made. The more common case is, where the representation is implied in the use of a mark, trade name, or get-up. In such cases the point to be decided is whether the defendant’s use of such mark, name or get-up is calculated to deceive.

Person buying “Spanish Champagne” would not think it was a wine produced in France, but what he may very well think is that he is buying the genuine article, real Champagne.o This is the sort of deception the judge had in mind in the British Sherry case.

Detailed consideration left the court to conclude that Canadian champagne was a distinct Canadian product not likely to be confused with French champagne.

“Canadian” was in same size, etc., as “Champagne”, marketed in different areas of the stores, listed differently on menus, etc.

COMMON FIELD OF ACTIVITY

McCulloch v. Lewis A. May (Produce Distributors) Ltd.

Plaintiff was a popular radio broadcaster of a children’s show.o Also made recordings, public appearances, and wrote children’s books, all under the

pseudonym “Uncle Mac”. Defendant started selling “Uncle Mac’s Puffed Wheat”, breakfast cereal aimed at the

children’s market with references on the packages to characteristics of “Uncle Mac”. Passing-off case failed.

Krouse v. Chrysler Canada Ltd.

Plaintiff was professional football player, sued Chrysler because they had used a recognizable photo of him on its advertising device, “the Spotter”.

No one would have thought he made it. Wasn’t in competition with anything the plaintiff would have been selling.


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Young v. Scot Young Ltd.

“Passing off is limited to the case of competition and this is not such a case.” Plaintiff was a well-known writer/broadcaster in Toronto and the defendant was a

window-cleaning service.

Statute s. 7(b) of the Trade-marks Act does not require the plaintiff and defendant to be involved

in a common commercial field. Factor of importance, but no rule that passing off demands a common field of activity. Krouse and Young both dealt with personality, or publicity rights of celebrities. Now covered under legislation and the development of the tort of appropriation of

personality.

THE TEST PERSON

Ciba-Geigy Canada Ltd. v. Apotex Inc. & Ciba-Geigy Canada Ltd. v. Novopharm Ltd.

Case involves determining, in the context of a passing-off action, who the customers of pharmaceutical laboratories manufacturing prescription drugs. o Do those customers consist only of physicians, dentist and pharmacists or are the

patients to whom the drugs are dispensed also included? “The person chiefly concerned is the competitor affected by the unfair act”,

frequently in fact the first party affected by the practice or aware of it.o However, “it should never be overlooked that unfair competition cases are affected

with a public interest.”o So that “the purchasing public may to be enticed into buying A’s product when it

wants B’s product.”o “The power of the court in such cases is exercised, not only to do individual justice,

but to safeguard the interests of the public.” “Who is to be confused?”

o Court first mentions the ordinary customer: “you must deal with the ordinary man and woman who would take ordinary care in purchasing what goods they require and, if desiring a particular brand, would take ordinary precautions too see that they get it.”

o “Ordinary precautions” will depend on the product they are buying - more careful for luxury product than for a super market product.

o Court doesn’t like Lord Diplock’s “ultimate consumer” in Erven Warnink as confusion must be avoided in the minds of all customers, direct or indirect.

o Says it is the public that needs to be confused: a manufacturer that wishes to succeed in a passing off action must usually show that its product has acquired a secondary meaning with its customers, the public, and that the competing product is likely to create a risk of confusion in the public mind.”

o At end of judgment, court says well-established rule that the final consumer of a product must be taken into account in determining whether the tort of passing off has been committed.


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Links patient’s right to choose what brand of drug they take as a reason to

include them as the “who is to be confused”.o To exclude them “from the passing off action on the pretext that they have no choice

as to the product is quite wrong.

Mr. Submarine Ltd. v. Emma Foods Ltd.

The standard of confusion: “not that a person fully familiar with the detailed operations of the plaintiff and therefore capable of at once distinguishing those of the defendant from those of the plaintiff but rather that of a person who has a vague recollection of understanding of the business product of the plaintiff.”

TYPES OF MISREPRESENTATION

SOURCE OR QUALITY

Consumers Distributing Co. v. Seiko Time Canada Ltd.

Whether a Seiko watch had an international warranty and sold by authorised distributor. Once parallel importer made a statement that it was not an authorized distributor and

thus had no warranty, and that you are not getting any more than just a watch. Courts said once that disclaimer was made, there was no confusion because purchase

knew that was all they were getting. Use of disclaimer can negate misrepresentation. It still may be a taking, but passing off does not depend on misappropriation.

Disney Case

“Fantasyland” in West Edmonton Mall held to be passing off. Confusion? Yes, even with very low confusion of ~5%. Court said there was confusion by utilizing as a measure of confusion (content of

confusion) that the public thought Disney had “authorised or consented” to the name use; note this deviates from the stricter standard in Mr. Submarine, where the object or contact of confusion being that of ownership (i.e. source) of the product or business.

Seems to move close to appropriation/taking. Damage question - no actual damages but court said unjust enrichment in finding

passing off. Also loss of control over the mark/indicia in defendant’s jurisdiction as a head of damage

(see Orkin). Goodwill - no business activity required, may only be extra-territorial reputation. Presume confusion if goodwill (reputation) and misrepresentation are established. Very close to misappropriation.


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ELEMENTS OF PASSING OFF: DAMAGE

GENERALLY

Clear that actual damage need not have been suffered before the plaintiff may sue; rather, it is the likelihood of damage resulting from the defendant’s misrepresentation that supports the action.

Proof of damage is always part of the plaintiff’s legal onus, the evidentiary burden may quickly move tot he defendant.

From The Noshery: “probability of damage may also be taken as equivalent in these cases to probability of deception.”

If the public is probably being deceived then there is probably damage, even though no actual damage can be proven.

In practical terms, proof of likelihood of damage is helped by proof of actual confusion or by proof of the defendant’s intention to pass off, although neither is conclusive.

HEADS OF DAMAGE

DIRECT LOSS OF TRADE

Most commonly argued sort of damage; because of the defendant’s misrepresentation, consumers do not deal with the plaintiff as they otherwise would.

DAMAGE TO REPUTE

Likely where the product or service that the defendant provides is inferior to the plaintiff’s product or service.

Consumers will be unlikely to deal further with the plaintiff or to recommend the plaintiff to others.

HARMFUL ASSOCIATION

Plaintiff and defendant not in competition with one another, the misrepresentation may be that there is some commercial association between them.

If defendant’s business is carried on poorly, or is a type of business disdained by the plaintiff or held in low regard by the public, there may be a loss to the plaintiff’s good name.

Annabel’s (Berkely Square) Ltd. v. Schock

Defendant ran an escort service under the name Annabel’s, found that the mere association of the two businesses was found to be damaging to the plaintiff.

LOSS OF LICENSING OR FRANCHISING OPPORTUNITY

Not harmful because of the defendant’s disreputable conduct or business buy may have a negative impact on the plaintiff’s aspirations.


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House of Faces Inc. v. Leblanc

Court found passing off where the defendant copied almost exactly the plaintiff’s cosmetic products, name, get-up, and method of doing business.

Defendant’s business would be an impediment for the plaintiff in arranging new shopping mall leases.

INABILITY TO EXPAND

While the plaintiff and defendant are not direct competitors, the plaintiff can argue that they may be precluded from entering the marketplace in the area of the defendant’s activity.

This may be the geographic area, as in Orkin, or the type of business where that is not common to the parties.

DILUTION

Harrods Ltd. v. Harrodian School Ltd.

Harrods was a famous department store. Judge explains that just because an act would be an infringement under the Trademarks

Act if the mark were registered, this did not mean that there had been passing off.o “It is well settled that (unless registered as a trademark) no one has a monopoly in

his brand name or get-up, however familiar these may be.”o It is the goodwill that is important.

“Harrodian” does not mean Harrod’s, as a Churchillian speech is not one of Churchill’s speeches.

Couldn’t establish any real likelihood of confusion or damage to their goodwill.

DEFENCES

UNCLEAN HANDS

Brewster Transport Company, Ltd. v. Rocky Mountain Tours and Transport Company, Ltd.

Both the plaintiff and defendant had headquarters in Banff, AB. Plaintiff alleged that it had been carrying on the business of motor passenger

transportation under the name of Royal Blue Line in AB. Defendant started up business in AB, had been doing business under that same name

elsewhere for a number of years. SCC refused injunction.

o Plaintiffs did not come to the court with clean hands, and it did not matter that the defendants, as an American company, might not originally have had a cause of action against the plaintiffs' own imitation.

o This case out to be of general application in passing-off cases where a claimant with reputation fails solely on the technical ground that he has no relevant goodwill.


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USE OF ONE’S OWN NAME

It is a defence to passing off that the defendant is merely using his or her own name. The theory is that the law should not interfere with a person’s natural right to own-name

trading, even at the cost of inevitable confusion. There are, however, many qualifications to this proposition that the defence may be

doubted to exist at all - very narrow.

The Hurlburt Company v. The Hurlburt Shoe Company

“The law is quite clear that no man can acquire a monopoly of his own surname in such a way as to prevent another person of the same name honestly using that name in connection with his goods or his business.”

Biba Group Ltd. v. Biba Boutique

Defendant claimed to have used her nickname for her business. Court said whatever the rights may be in respect of the use of a surname, it does not

appear that those authorities go to the question of the use of a first name, let alone a nickname.

Mario’s Spaghetti House & Pizzeria Ltd. v. Italian Village Ltd.

Interlocutory injunction against the defendant’s use of “Mario Place” for a nearby restaurant, even though the proprietor was the Mario of the plaintiff’s Mario’s restaurant, who had sold out three months earlier to set up on his own.

“HONESTLY USING”

In this one aspect, the intention of the defendant is crucial. If the court discerns a strategy to cause deception, the own-name defence fails.

Hunt’s Ltd. v. Hunt

The defendant, a brother of the plaintiff’s founder, was judged to be clearly mala fide in entering the same business using the same name in the same script and advertising as “Hunt’s new store”.

CONCURRENT OR PRIOR USE

J. & A. McMillan Ltd. v. McMillan Press Ltd.

Plaintiff was incorporated with the same name, business was office supplies and printing services.

Later, defendant was incorporated, and the printing aspect was sold to it. Occupied same building, no separation between them. Later, plaintiff moved across street, old sign was still left up, and new sign across the

street was put up. New printing company leased the spot in original building, then eventually left.


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o Defendant then bought it out, changed the sign to say “McMillan” with “McMillan Press Ltd.” in small letters underneath.

There was substantial, actual, confusion, but passing-off failed. “McMillan” was as much a part of the defendant’s goodwill as the plaintiff’s.

Fraser Taxi Ltd. v. Reid

Plaintiff sought an injunction against the defendant’s use of the name. Defendant had used the name, but as a sham, to obtain a second phone line when that

was difficult to do. Although he may have operated with the name in some regard, it was done illegally. Permanent injunction was granted.

DISCLAIMERS

If a defendant disclaims any tie to the plaintiff’s goods, services, or business, it could be said that this is a factor in assessing likelihood of confusion.

Associated Newspapers Group v. Insert Media Ltd.

Defendant proposed a scheme whereby it would arrange for news agents to insert advertising material concerning the defendant’s clients into various newspapers without the authority or consent of those newspapers.

Defendant was prepared to include disclaimer on the inserts. The disclaimer was held to be inappropriate because it was unlikely to come to the

notice of customers, but likely to add to the confusion if it did.

Home Shoppe Ltd. v. National Development Ltd.

Held that there was no likelihood of confusion between the plaintiff’s Gut Buster and the defendant’s Gut Trimmer.

Both were sold through television promotion, but there were obvious differences in the way in which they were demonstrated and a remarkable difference in price.

Clear indications of source appeared in the commercials of both products. Court also found a sufficient notice by the defendant in the TV advertisements

disclaiming any identity with the plaintiff or its product.


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CHAPTER 13: REGISTERED TRADEMARKS (USE GOOGLE DOC)

INTRODUCTION

DEVELOPMENT

The tort of passing off, which represents the common law of trademarks, is troubled by some inefficiencies.

The legislation is not a replacement for common law rights, but exists as an alternative regime.

DEFINITION OF TRADEMARK

Act defines trademark as:a) a mark that is used by a person for the purpose of distinguishing or so as to

distinguish wares or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others,

b) a certification mark,c) a distinguishing guise, ord) a proposed trade-mark

Visual perceptibility seems to be key as in ICBC v. Registrar of Trade Markso In obiter, stated that a mark is not defined in the act, but that in common parlance

however a mark is a device, stamp, label, brand, inscription, a written character or the like.

Playboy Enterprises Inc. v. Germain

Stated that a mark must be something that can be represented visually … that can be seen.

CENTRAL CONCEPTS

The regime of registered trademarks is built o the law of unregistered trademarks, or passing off, and shares certain notions with it: use, confusion, and distinctiveness.

USE

s. 4 is a crucial part of the Act and is set out for reference.o 4(1) Trademark is deemed to be used in association with wares if it is marked on the

wares themselves, or the package in which they’re sold.o 4(2) Deemed to be used in association with services if it is use or displayed in the

performance or advertising of those services.o 4(3) A mark that is marked in Canada on wares or on the packages in which they are

contained is, when the wares are exported from Canada, deemed to be used in Canada in association with those wares.


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CONFUSION

In passing off, the concept of confusion governs liability. Misrepresentation that is likely to cause confusion of a relevant sort must be proved. Confusing is defined in s. 2 when the term, as applied, is a use that “would cause

confusion in the manner and circumstances described in s. 6”. s. 6 says that if the use of a mark causes confusion with another in the same area, or

would be likely to, even if they aren’t of the same class.

DISTINCTIVENESS

The very essence of trademarks, registered or not, for acquisition and maintenance of rights.

May be earned though the use in the marketplace, or it could be inherent. A trademark that does not distinguish, or is not adapted to distinguish, or is not used for

the purpose of distinguishing, or has lost its distinctiveness is not a trademark.

ASSIGNMENT AND LICENSING OF TRADEMARKS

At common law, ownership of a mark could not be transferred apart from the goodwill with which it was associated.

Trademarks themselves were not regarded as property.o In the 1952-53 revision of the act, s. 48 was introduced to change that.

Whether registered or not, is transferable either with or without the goodwill of the business.

System was eased with 1993 revision, s. 50.o Makes the licensing of use of a trademark much easier, ownership stays with the

holder of the trademark.

UNFAIR COMPETITION AND PROHIBITED MARKS

Trade Marks Act started out as Unfair Competition Act of 1932 due to Canada’s international duties as a member of the Paris Union.

Unfair Competition: s. 7o 7(a) - injurious falsehoodo 7(b) and (c) - deal with tort of passing offo 7(d) - deals with false or misleading descriptions likely to deceive the public

Prohibited Marks: s. 9o Precludes someone from capitalizing on any well-known respected public symbol and

adopting it for his or her own wares or services.o Absolutely prohibited

s 9(1) contains a long list of matters that may not be adopted in connection with a business and also prohibits adoption of marks so nearly resembling them as to be mistaken for them, like national flags, coats of arms, Red Cross, etc., portrait or signature of a living individual or one dead less than thirty years, etc.

o Conditionally prohibited Not absolute but depends on whether they have been the subject of public notice

given by the registrar of trademarks.


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Arms, crest or flag of Canada, a province, or municipal corporation. Further Prohibitions: ss. 10 and 11

o Also prohibited are marks described in s. 10 that “by ordinary and bona fide commercial usage, become recognised in Canada as designating the kind, quality, quantity, destination, value, place of origin or date of production of any wares or services.”

o s. 10.1 prohibits the adoption or use as a trademark, in association with another plant variety of the same species, of a denomination designating a plant variety under the Plant Breeders’ Rights Act.

PROTECTED GEOGRAPHICAL INDICATIONS

s. 11.11 to 11.2 concern geographical indications for wines or spirits. Exceptions are made for some Canadian usages, customary names, and generic terms. Also a provision for amendment to and removal from the list.

THE REGISTRATION PROCESS

Application to register a trademark is made to the Registrar’s Office in the appropriate form under s. 30 and must include “a statement in ordinary commercial terms of the specific wares or services in association with which the mark has been or is proposed to be used.”

REGISTRABILITY

ORDINARY TRADEMARKS

BARRIERS TO REGISTRATION

s. 12(1) Summary:a) word primarily merely a surname. (Standard Oil)b) written or phonetically descriptive or deceptively misdescriptive in English or French.

(Orange Maison)c) the name of any language of the wares or services in connection with which it is used

or proposed to be usedd) “confusing" with a registered trademark. (s. 2 - 6)e) prohibited mark under s. 9 or 10

A) NAMES OR SURNAMES

o s. 12(1) Subject to s. 13, a trade-mark is registrable if it is not A word that is primarily merely the name or the surname of an individual who is

living or has died within the preceding 30 years.

Standard Oil Co. v. Registrar of Trade Marks Facts

o refused to trademark “FIOR” because of the proposed use in the application


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Issue o could the company register the trademark?

Held o Couldn’t trademark

Reasons o Since FIOR has no dictionary meaning, and is considered a surname in

Toronto, it is considered a surname and is objectionable to being trademarked according to s.12(1)(a)

Ratio

o You cannot trademark a word that is primarily “merely the name” (ie. just the name)

B) DESCRIPTIVENESS

s. 12(1)o (b) whether depicted, written or sounded, either clearly descriptive or deceptively

misdescriptive in the English or French language of the character or quality of the wares or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin.

Drackett Co. of Canada Ltd. v. American Home Products Corp. Facts

o floor cleaner with the phrase “ONCE-A-WEEK” Issue

o Was the phrase at issue registrable? Held

o The phrase was “deceptively misdescriptive” therefore the trademark was not registrable

Reasons o The phrase was inaccurate as required in s.12(1)(b)o Deceptiveness arose due to the multiple meanings arising from different

interpretations of this phrase. Ratio

o Test of first impression - s.12(1)(b) “Clearly” means easy to understand, self evident, and plain. If the mark does not fulfil this requirement, it is not registrable.

Home Juice Co. v. Orange Maison Ltée Facts:

o Home Juice wanted to register their mark. Held:

o Not registrable Reasons

o “Home Juice” was descriptive. o “Orange Maison” ← word “maison” means “homemade” -- Maison was not

registrable either Ratio:

o Meanings are not restricted to its Canadian use. Dictionary meanings in English and French from elsewhere in the world are relevant


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C) GENERICNESS

12(1)o (c) the name in any language of any of the wares or services in connection with

which it is used or proposed to be used.

Wool Bureau of Canada Ltd. v. Bruck Mills Ltd.

WOLAINE was not the name in English or French, plaintiffs thought it sounded like woollen, word was actually a contraction of “wool” and “laine”, found that it was not the phonetic equivalent of the word “woollen”.

Brûlerie Des Monts Inc. v. 3002462 Canada Inc.

Found that the phrase “La Brûlerie” (meaning the place where coffee is roasted) was declared invalid as unregistrable.

In the dictionary, couldn’t take word from public domain for exclusive use.

D) CONFUSION WITH REGISTERED TRADEMARKS

12(1)o (d) confusing with a registered trade-mark.

Confusing defined in s. 6 Use defined in s. 4.

United Artists Corp. v. Pink Panther Beauty Corp. Facts :

o Plaintiff owned PP movie and had trademarks registered in Canada (“THE PINK PANTHER”).

o Defendant was a beauty products company, and applied to have their trademark registered

Issues :o Can the famous trademark be protected given that there is no common field

of activity? Held:

o No confusion - Pink Panther Beauty could be registered DISSENT:

Dissenting judge asks why party would use that, knowing PP was already famous, it would naive to suppose otherwise than the party wanting to cash in.

They chose the PP mark to profit from the mark. Reap where not sown → unjust enrichment Misappropriation approach: you must be using this to cash in on

the reputation, there’s no other reason. The famous mark people would like the law to take a

misappropriation-style of approach. Injust enrichment → you are liable.

MAJORITY : The test is: is there confusion?

Reasons o Given the different fields of activity, could register


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o However, strong dissent, given that there was a suggestion that the defendant had the intent on cashing in on the Pink Panther movie’s fame (reaping where you don’t sow)

Ratio: o Fame is not the test/controlling factor to determine whether there is

confusion. o There has to be more than a “mere possibility” for confusion

“the test to be met is likelihood of confusion (not possibility of confusion) …. fame of the mark (does not) act as a marketing trump card.”

Mattel, Inc. v. 3894207 Canada, Inc.

Opposition proceeding. Barbie doll v. Barbie Restaurant Services, no confusion found.

Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée

o Infringement claim, rather than opposition proceeding, so burden of proof lies with the holder of the registered trademark to prove likelihood of confusion.

o Different in the spelling (lack of a “c”) was not significant.o Even if you allowed broadening of usage of Clicquot to encompass fine products, you

can’t say there is going to be confusion with a mid-range supplier of apparel (confusion).

o Says can’t look at s. 6, but maybe to s. 22 dilution.

S. 22 - ALTERNATIVE REMEDY TO CONFUSION

(s. 20 infringement - confusion): dilution (or depreciation of goodwill).o (1) No person shall use a trade mark registered by another person in a manner that is

likely to have the effect of depreciating the value of the goodwill attaching thereto.o Steps:

Use (s. 4) Goodwill attached Mental association between the mark and the use of by the defendant (like

causation for damage). Likelihood of depreciation (damage).

o Depreciation can be tarnishment or blurring (death by 1000 cuts).o This test is just short of misappropriation.

No requirement to show that use of the marks in the same geographic area could cause confusion.

EXCEPTIONS

A) ACQUIRED DISTINCTIVENESS

s. 12(2) the barriers to registration in ss. 12(1)(a) and (b) may be overcome by proving that the trademark “has been so used in Canada by the applicant or his predecessor in title as to have become distinctive at the date of filing an application for its registration.”


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s. 12(2) cannot be used to avoid any of the other prohibitions on registration in s. 12(1). s. 18(2) is a companion to s. 12(2).

o A ground of invalidity of registered trademarks is that they were not registrable at the date of registration, as provided in s. 18(1)(a).

o However, s. 18(2) states that if a trademark had, through use, “become distinctive at the date of registration”, its validity cannot be challenged simply because evidence of that earned distinctiveness had not been put before the decision maker prior to the grant of registration. Therefore, acquired distinctiveness may be proved at the time of application if s.

12(1)(a) or (b) is raised by the registrar or an opponent, or later, should the issues of validity depend on registrability.

o Home Juice case is an example of s. 18(2) rescuing a clearly descriptive trademark.

B) MARKS REGISTERED ABROAD: S. 14

s. 14(1) provides that, notwithstanding s. 12, a mark is registrable in Canada if the applicant or predecessor in title had caused it to be duly registered in the applicant “country of origin”.o Can’t be confusing with a registered trademark, contrary to morality or public order,

or deceptive to the public, or prohibited by ss. 9 or 10.o Also can’t be, by s. 14(1)(b), be “without distinctive character, having reared to all

the circumstances of the case including the length of time during which it has been used in any country”.

C) ASSOCIATED MARKS: S. 15

o s. 15(1) Notwithstanding ss. 12 or 14, confusing trademarks are registrable if the applicant is the owner of all such trade-marks, which shall be known as associated trademarks.

D) DISCLAIMER: S. 35

s. 35 states:o The Registrar may require an applicant for registration of a trademark to disclaim the

right to the excessive use apart from the trademark of such portion of the trademark as is not independently registrable, but the disclaimer does not prejudice or affect the applicant’s right then existing or thereafter arising in the disclaimed matter, nor does the disclaimer prejudice or affect the applicant’s right to registration on a subsequent application if the disclaimed matter has then become distinctive of the applicant’s wares or services.

Canadian Jewish Review Ltd. v. Registrar of Trade Marks

Application was for the mark THE CANADIAN JEWISH REVIEW.o Words were in a script form suggestive of Hebraic letterpress.

Descriptive under s. 12(1)(b). All the words were disclaimed, nonetheless, the mark was refused.


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After a disclaimer, there must be something remaining that is capable of distinctiveness.

o The design portion was intrinsic to the words and could not be dissociated from them the design was merely an embellishment of the letters.

Cooper v. Mark’s Work Wearhouse Ltd.

A disclaimer of the name DAN COOPER for clothing was a recognition of the barrier of s. 12(1)(a).

There was separate design matter sufficient to allow the mark as a whole to be registered.

DISTINGUISHING GUISE: S. 13

In s. 2, the definition of trademark includes “distinguishing guise” as a kind of trademark. o (a) a shaping of wares or their containers, oro (b) a mode of wrapping or pack again wareso the appearance of which is used by a person for the purpose of distinguishing or so

as to distinguish wares or services manufacturers, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others.

Under s. 13, distinguishing guises have their own specific requirements for registrability:o 13(1) A distinguishing guise is registrable only if

(a) it has been so used in Canada by the applicant or his predecessor in title as to have become distinctive at the date of filing an application for its registration; and

(b) the exclusive use by the applicant of the distinguishing guise in association with the wares or services with which it has been used is not likely unreasonably to limit the development of any art or industry.

The applicant must produce evidence to the registrar under s. 32(1) showing the extent and time of use in Canada, and by s. 32(2) the registrar must restrict the registration tot he wares or services and to the territorial area of Canada where distinctiveness has been demonstrated.o Cannot be based on proposed use.

Dominion Lock Co. Ltd. and Independent Lock Co. v. Schlage Lock Co.

Two key companies, wares for one filed as “original keys for door locks”. After application was filed, ruled as distinguished guise under s. 2 (g) of the Act. Held that the trademark was not distinctive when it was filed, and it is not registrable for

the further reason that it does not meet the test of s. 13(1)(b).o Many key blanks had been sold to public in the same/similar shape.o Schlage argued that they were different, originals to the public and blanks to

locksmiths, but that was not a realistic distinction.


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CERTIFICATION MARKS: S. 23

Definition of trademark in s. 2 includes “certification mark” as a kind of trademark.o a mark that is used for the purpose of distinguishing or so as to distinguish wares or

services that are of a defined standard with respect to (a) the character or quality of the wares or services, (b) the working conditions under which the wares have been produced or the

services performed, (c) the class of persons by whom the wares have been produced or the services

performed, o from wares or services that are not of that defined standard.

Under s. 23(1) a certification mark may be registered only by someone not engaged int eh actual provision of the wares or services with which the mark is associated.o Under (2) the registered owner license others to use the mark if they meet the

defined standard.o s. 30(f) the applicant for a certification mark must include in the application

“particulars of the defined standard” and a statement that the applicant is not engaged in the provision of the relevant wares or services.

The owner of a certification mark may under s. 23(3) take action against unauthorised uses.


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