My slides and/or the paper summarize the following copyright cases from Canada, the USA, UK and  Europe:

CANADA

Re: Sound v Motion Picture Theatre Association of Canada 2011 FCA 70

Reference re Broadcasting Act 2011 FCA 64

Crookes v. Newton 2011 SCC 47

France Animation v Robinson, 2011 QCCA 1361

Aga Khan v. Tajdin, 2011 FC 14

9077-6204 Québec inc. c. Blanchard 2011 QCCQ 205

Training and Management Pro-Health Inc. c. Sampietro 2011 QCCS 4256

Perfect 10, Inc. v. Google, Inc., 2011 FC 348

Harmony Consulting Ltd. v. G.A. Foss Transport Ltd., 2011 FC 340

Century 21 Canada Limited Partnership v. Rogers Communications Inc., 2011 BCSC 1196

Layette Miniôme inc. c. Jarrar 2011 QCCS 1743

Louis Vuitton Malletier S.A. v. Singga Enterprises (Canada) Inc., 2011 FC 776

1429539 Ontario Limited v. Café Mirage Inc., 2011 FC 1290

Suttie v. Canada (Attorney General), 2011 FC 119

SOCAN v v. IIC Enterprises Ltd. (Cheetah’s Nightclub), 2011 FC 1088

Robertson v. ProQuest Information and Learning LLC, 2011 ONSC 2629

R. c. Fiset 2011 QCCQ 1344

Reprographic Reproduction, 2011-2013 Interim Decision March 16, 2011

IPC Order MO-2635/June 30, 2011

R c. Gravel 2011 QCCQ 2517

Flow Films v. Global Wealth Trade Corp. [2011] O.J. No. 674

Setanta Sports Canada Limited v. 840341 Alberta Ltd. (Bres’in Taphouse) 2011 FC 709

Velsoft Training Materials Inc. v. Global Courseware Inc. 2011 NSSC 274

Fabrikant v. Swamy [2011] QJ No 2826

Statement of Royalties to be Collected for the Communication to the Public by Telecommunication, in Canada, of Musical Works and of Published Sound Recordings Embodying Musical Works and Performers’ Performances of Such Works (SOCAN and Re:Sound Tariffs 1.C (CBC – Radio 2006-2011) [2011] C.B.D. No. 3 (Copyright Board, July 8, 2011)

Statement of Royalties to be Collected for the Performance in Public or the Communication to the Public by Telecommunication in Canada, of Published Sound Recordings Embodying Musical Works and Performers’ Performances of Such Works (Re:Sound Tariff No. 6.A – Use of Recorded Music to Accompany Dance, 2008-2012) [2011] C.B.D. No. 4 (Copyright Board, July 15, 2011)

UNITED STATES

Agency France Presse v Morel, 769 F.Supp.2d 295 (S.D.N.Y. 2011)

Warner Bros. Entertainment Inc v WTV Systems, Inc. 2011 WL 4001121 (C.D.Cal. Aug, 1, 2011)

Flava Works, Inc, v Gunter dba myVidster, 2011 WL 1791557 (N.D.Ill.May 10, 2011)

Flava Works, Inc, v Gunter dba myVidster 2011 WL 3205399 (N.D.Ill. July 27, 2011)

Flava Works, Inc, v Gunter dba myVidster, 2011 WL 3876910 (N.D.Ill. Sep. 1, 2011)

Perfect 10, Inc v Megaupload Limited 2011 WL 3203117 (S.D.Cal., Jul. 27, 2011)

Disney Enterprises, Inc v Hotfile 798 F.Supp.2d 1303 (S.D. Flo. 2011)

UMG Recordings v Shelter Capital Partners LLC 101 U.S.P.Q.2d 1001 (9th. Cir. 2011)

Capitol Records, Inc. v. MP3tunes, LLC, 101 U.S.P.Q.2d 1093 (S.D.N.Y.2011)

Arista Records LLC v. MyxerInc., f/k/a Visible Technologies, Inc., Case No. CV 08-3935-GAF-JC (C.D. Cal. April 1, 2011)

The Authors Guild et al v. Google Inc.  770 F.Supp.2d 666 (S.D.N.Y. 2011)

Penguin Group (USA) Inc. v. American Buddha 16 N.Y.3d 295 (Ct.App.N.Y. 2011)

Kernal Records Oy v. Mosley,  794 F.Supp.2d 1355  (S.D.Fla. 2011)

Seng-Tiong Ho v. Taflove, 2011 WL 2175878 (7th.Cir, 2011)

Softech Worldwide LLC v. Internet Technology Broadcasting Corp. 761 F.Supp.2d 367 (E.D.Vir.2011)

Righthaven LLC v. Hoehn 792 F.Supp.2d 1138 (D.C.Nev.2011)

Capitol Records Inc v. Jammie Thomas-Rasset 2011 WL 3211362 (D.C.Minn.2011)

UK and COMMONWEALTH

Lucasfilm Ltd & Ors v Ainsworth & Anor [2011] UKSC 39 (27 July 2011)

Football Dataco Ltd & Ors v Sportradar GmbH & Anor [2011] EWCA Civ 330 (29 March 2011)

Twentieth Century Fox Film Corp & Ors v British Telecommunications Plc [2011] EWHC 1981 (Ch) (28 July 2011)

ITV Broadcasting Ltd & Ors v TV Catchup Ltd [2011] EWHC 1874 (Pat) (18 July 2011)

The Newspaper Licensing Agency Ltd & Ors. v Meltwater Holding BV & Ors [2011] EWCA Civ 890 (27 July 2011)

Roadshow Films Pty Ltd. v  iiNet Limited, [2011] FCAFC 23 (decision of High Court pending)

Super Cassettes Industries v. MySpace Inc. High Court of Delhi, judgment pronounced on 29/07/2011

Dynamic Supplies Pty Limited v. Tonnex International 2011 FCA 362  (Federal Court of Australia)

Media CAT v. Adams 2011 EWPCC 6  and 2011 EWPCC 10  (Patents County Court)

Football Dataco Ltd  v. Yahoo! UK Limited 2011 EWCA Civ 330 (UK Court of Appeal)

Forensic Telecommunications Services Ltd v Chief Constable of West Yorkshire 2011 EWHC 2892 (Ch)

R (on the application of British Telecommunications plc and another) v. The Secretary of State for Business, Innovation and Skills 2011 EWHC 1021 (Admin)

EU (other than UK)

La société Des Auteurs des Arts Visuels et de L’image Fixe Visual Auteurs (SAIF) v. Google France  S.A.R.L. and Google Inc., Paris Court of Appeal, Jan. 26, 2011

Google v Copiepresse et al, Brussels Court of Appeal (9th Chamber) May 5, 2011

Premier League Football (ECJ Case C-403/08),  4 October 2011

Scarlet Extended SA v SABAM, (ECJ Case C-70/10) 24 November, 2011

Stichting de Thuiskopie v Opus (ECJ Case C-462/09) 16 June 2011

The slides can be seen below:

“Counterfeit and pirated goods are an increasingly global problem that requires a globally coordinated solution,” said Minister Fast. “We all have an interest in combatting counterfeiting and piracy because these activities cost billions of dollars each year in revenue and trade losses, which translates into higher prices, lost income and lost jobs for people employed in a range of industries—from film and pharmaceuticals to electronics. Counterfeit goods also pose a real threat to the health and safety of people because the producers of goods such as drugs and auto parts evade the rigorous rules, standards and guidelines that are in place to protect consumers.”

ACTA will establish new international standards for enforcing intellectual property rights. It will cover three areas: improving international cooperation, establishing best practices for enforcement and providing a more effective legal framework to address the problem of counterfeiting and piracy. It will also give innovators, artists and entrepreneurs enhanced measures to ensure their creations and associated rights are protected. Alongside Canada, Australia, Japan, Morocco, New Zealand, the Republic of Korea, Singapore and the United States also signed the agreement, which was negotiated by 38 parties in total.

Following the signature of ACTA, the Government of Canada will develop and introduce the necessary legislation to implement the agreement. The government has already taken steps to enforce and defend intellectual property rights and help balance the needs of creators and users by reintroducing its Copyright Modernization Act (Bill C-11) in Parliament on September 29. The bill informed and guided Canada’s approach to the ACTA negotiations.

“The signing of this historic international agreement and our government’s reintroduction of copyright legislation demonstrates Canada’s commitment to combatting counterfeit and pirated goods, and protecting innovation- and knowledge-based prosperity, which are key to Canada’s future economic success,” said Minister Fast.

A backgrounder on ACTA can be found here. A summary of the agreement which I prepared when the text of ACTA was agreed to can be found here.

Signing ACTA is a step towards meeting the significant counterfeiting problems identified by the RCMP in A National Intellectual Property Crime Threat Assessment, 2005 to 2008. The porous nature of our borders and the need to upgrade our border controls to world standards to reduce counterfeiting and piracy in Canada has been noted by two parliamentary committees, three Canadian trade associations, and our major trading partners. Parliamentary Standing Committee on Public Safety and National Security, Parliamentary Standing Committee on Industry, Science and Technology, Ontario Chamber of commerce, Canadian Chamber of Commerce, U.S. Trade Representative,  U.S. Congressional Anti-Piracy Caucus, European Union, and Canadian Anti-Counterfeiting Network (CACN).

The report recognized that “The key technology for IP infringement is the internet. Its increasing importance as a medium for infringing copyright and selling fakes raises concerns across all parties. The web is a global marketplace for those wishing to engage in IP crime, just as it is for legitimate traders, and it is often hard for consumers to tell the two apart. It has triggered notable changes in how goods are transported and sold to consumers and presents new challenges for enforcement officers as traders can sell to UK based consumers from across the globe.”

The UK Government expressed its commitment to tackling both piracy (criminal infringement of copyright) and counterfeiting (willful infringement of trade marks). The objectives are to: reinforce the attractiveness of the UK as a place to do business by protecting legitimate marketplaces and providing a strong platform for business growth; make the UK unattractive to criminals seeking to engage in IP crime; and protect consumers from the considerable harms posed by dangerous and untested fakes and by wider criminality. To do this the UK aims to prevent and deter criminality; disrupt trade in fake and pirated goods, online and offline, at various stages of the supply chain; and reduce incentives for IP crime, for example by confiscating criminals’ assets.

One of the significant focuses of the report was on the use of technology to make counterfeits harder to make and easier to detect. The report suggested that technological protection systems could be used to make it harder to copy products and easier to spot fakes.

There may be scope for greater progress. Technology is constantly evolving – with new and more cost effective track and trace technologies, the capacity to check the legitimacy of alcohol using a mobile SIM card or to offer an online service which lets consumers check the legitimacy of retailers. Opportunities may emerge to improve the systems used by rights holders, retailers and to involve consumers more in their use.

Another significant focus involved obtaining improved cooperation from intermediaries such as domain name registries and providers of online services such as marketplaces/ trading platforms, advertising and card payment facilities. Their potential role was described as follows:

Other businesses such as market operators, shipping and courier companies and those who support the infrastructure of the world wide web (like Nominet) and deliver e-services like auction sites and online storage facilities are relevant to IP crime issues. We must make new efforts to bring these parties into effective dialogue…

Improved coordination, including bringing new partners such as Nominet and payment services firms into dialogue on tackling IP crime and better collaborative working on investigations and intelligence flows, both in the UK and internationally. This includes building awareness among partners about which other bodies are involved in tackling IP crime and what is being done…

Providers of online services such as marketplaces/ trading platforms, advertising and card payment facilities have a role in tackling IP crime by reducing the ability of criminals to profit from their crimes…

The report noted that the UK Metropolitan Police’s e-crime Unit are already working with “Nominet and others to remove infringing sites at the domain name level, while the City of London Police have been engaged with rights holders and card payment companies to disrupt sites run by criminals.”

The UK Intellectual Property Office (IPO) is planning to develop an action plan for tackling counterfeiting and criminal piracy online to identify the key threats and bring new industry and enforcement partners into mainstream dialogue with government partners. “This will include work on websites that are predominantly used for digital piracy, sales via auction sites and pop up websites of pirate and counterfeit goods, and the challenges posed by the increased use of small parcels bought online from overseas to import infringing goods.”

The UK’s approaches to combating IP crime are worthy of study here in Canada. According to a recent report published by the RCMP IP crime is a serious problem in Canada. According to the report, the total retail value of seizures reported by the RCMP alone, from 2005 to 2008, was estimated at more than $63.6 million, highlighting that IP crime is a profitable line of business.

Canada has some civil causes of action that can be used against counterfeiters as the recent case Louis Vuitton Malletier S.A. v. Singga Enterprises (Canada) Inc., 2011 FC 776 demonstrates. But, the cases under existing laws are expensive to bring, take a long time to get to court and the awarded damages are frequently uncollectable.

Canadian copyright and trade-mark laws have been criticized by domestic stakeholders and majors trading partners for failing to address IP crime. Among the major criticisms is our failure to upgrade our border controls to world standards. This has been noted by a Parliamentary Standing Committee on Public Safety and National Security, a Parliamentary Standing Committee on Industry, Science and Technology, the Ontario Chamber of Commerce, the Canadian Chamber of Commerce, the U.S. Trade Representative, the U.S. Congressional Anti-Piracy Caucus, the European Union, and the Canadian Anti-Counterfeiting Network (CACN).

Following extensive research and analysis, the USTR again listed Canada on its Priority Watch List along with Algeria, Argentina, Canada, China, India, Israel, Indonesia, Pakistan, Russia, Thailand, and Venezuela.

The report noted that “Piracy over the Internet is a significant concern with respect to a number of trading partners, including Brazil, Canada, China, India, Italy, Russia, Spain, and Ukraine.” It also stated the following:

The United States continues to urge Canada to implement its previous commitments to improve its legal framework for IPR protection and enforcement.  Unfortunately, Canadian efforts in 2010 to enact long-awaited copyright legislation were unsuccessful.  The United States encourages Canada to make the enactment of copyright legislation that addresses the challenges of piracy over the Internet, including by fully implementing the WIPO Internet Treaties, a priority for its new government. The United States encourages Canada to provide for deterrent-level sentences to be imposed for IPR violations, as well as to strengthen enforcement efforts, including at the border. Canada should provide its Customs officials with ex officio authority to effectively stop the transit of counterfeit and pirated products through its territory.  U.S. stakeholders have also expressed strong concerns about Canada’s administrative process for reviewing the regulatory approval of pharmaceutical  products, as well as limitations in Canada’s  trademark regime.  The United States appreciates the high level of cooperation between the Canadian and U.S. Governments, and looks forward to continuing engagement on these important  issues.

Key US copyright holders have made statements endorsing the report.

The report follows on the heels of last week’s submission by the International Intellectual Property Alliance (IIPA) to the USTR recommending that Canada be maintained on the Special 301 Priority Watch List in 2011. The IIPA submission extensively analyzed the piracy and counterfeiting problems in Canada. The rational for its recommendation was summarized as follows:

While we are encouraged by a few examples of improved enforcement responsiveness against physical piracy, overall the piracy picture in Canada is at least as bleak as it was a year ago, and it is cementing its reputation as a haven where technologically sophisticated international piracy organizations can operate with virtual impunity. To underscore U.S. insistence that Canada finally take concrete action to address the serious piracy problem it has allowed to develop just across our border, and that it bring its outmoded laws up to contemporary international standards, IIPA recommends that Canada be maintained on the Priority Watch List in 2011.

Recent Canadian research highlights the adverse impacts and economic losses to the Canadian economy resulting from illicit online file sharing. A study released two weeks ago by Ipsos / Oxford Economics estimated that more than $1.8 billion and 12,600 full-time equivalent jobs were lost across the entire Canadian economy in 2009-10 as a result of movie piracy alone.

A study released earlier today by the Canadian Intellectual Property Council, an arm of the Canadian Chamber of Commerce, concluded that peer-to-peer file sharing of music has a strong negative effect on legitimate music purchases in Canada. The study, entitled The True Price of Peer to Peer File-Sharing, analyzed data which had been previously collected for an Industry Canada study. The analysis found that P2P downloads have strong negative effects on legitimate music purchases. The study found that 75% of P2P downloaders responded that if P2P files were not available they would have purchased music through CDs and pay sites (49%), through paid sites only (9%) or through CDs only (17%). Only 25% of people said they would not have bought the music they downloaded for free if it were not available on P2P networks for free. According to the study, “P2P network availability is reducing the music demand of 75% of music downloaders and that “for some categories of respondents the percentages were as high as 85%.”

The results indicated that removing P2P file-sharing, “for example through stronger copyright laws, would increase music purchasing, music industry sales, artist revenues and, by implication, increase industry employment , economic growth and government tax revenues.” Conversely, according to the finding the “results show that allowing P2P file-sharing through weak copyright law reduces music purchases, music industry sales, artist revenues, industry employment, GDP and government tax revenues.”

The report states that the value of counterfeit and pirated products in trade has increased by up to $160 billion (to $360 billion) between 2005 and 2008, an increase of around 22% per year. Were counterfeiting and piracy to continue to grow at a lower rate of 15% per year, according to the report, it would result in trade in counterfeit and pirated products worth up to $960 billion by 2015.

The report concluded that the global value of counterfeit and pirated products could be up to $1.77 trillion by 2015.

This report supports the findings of the RCMP published last September which found piracy and counterfeiting to be a major problem for Canadians.

It is widely accepted in the EU that “infringements of intellectual property rights cause widespread economic harm and that a “significant number of products infringing intellectual property rights now pose a real threat to consumer health and safety.” Further, the proper protection of intellectual property rights “is fundamental to stimulate innovation and culture in a competitive, wealth-generating, knowledge-based economy.”

The report found that the Directive had led to progress in combating intellectual property infringement by, among other things, creating high European legal standards to enforce different types of rights that are protected by independent legal regimes such as copyright, patents, trademarks and designs. However, it also found that despite an overall improvement of enforcement procedures, “the sheer volume and financial value of intellectual property rights infringements are alarming.” One reason given “is the unprecedented increase in opportunities to infringe intellectual property rights offered by the Internet.”

The Internet and digital technologies have added an extra, challenging dimension to enforcing intellectual property rights. On the one hand, the Internet has allowed creators, inventors and their commercial partners to find new ways to market their products. On the other hand, it has also opened the door to new forms of infringements, some of which have proved difficult to combat.

The multi-purpose nature of the Internet makes it easy to commit a wide variety of infringements of intellectual property rights. Goods infringing intellectual property rights are offered for sale on the Internet. Search engines often enable fraudsters to attract Internet users to their unlawful offers available for sale or download. File-sharing of copyright-protected content has become ubiquitous, partly because the development of legal offers of digital content has not been able to keep up with demand, especially on a cross-border basis, and has led many law-abiding citizens to commit massive infringements of copyright and related rights in the form of illegal up-loading and disseminating protected content. Many online sites are either hosting or facilitating the online distribution of protected works without the consent of the right holders. In this context, the limitations of the existing legal framework may need to be clearly assessed.

The EU Directive gives a broad interpretation to the concept of “intermediaries” to include all intermediaries “whose services are used by a third party to infringe an intellectual property right”. This means that intermediaries with no direct contractual relationship or connection with the infringer are subject to these measures provided for in the Directive.

Nevertheless, the report found that “uncertainties remain over intermediaries and the specific measures to which they are subject by contributing to or facilitating an infringement, regardless of their liability.” The report noted that “Internet platforms such as online market places or search engines can also play an important role in reducing the number of the infringements, in particular through preventive measures and ‘notice and take-down’ policies.”

Other EU Directives also employ a variety of means to incent or procure ISPs to cooperate with rights holders to reduce online infringement. For example, under the EU Directive on ecommerce (as in the USA, Australia and elsewhere), ISPs cannot obtain the benefit of safe harbors (exceptions from liability) when they provide hosting services, if they have actual or constructive knowledge that their systems are being used to facilitate infringement and they fail to remove or disable access to the infringing conduct. EU Member States must also under Article 8(3) of the EU Copyright Directive give their courts the power to grant injunctions against ISPs to enjoin the use of their systems by third parties who use them to infringe copyright. This jurisdiction has been used in countries such as Italy and Belgium to require ISPs to block foreign pirate sites such as The Pirate Bay.

Notwithstanding these laws, the report referred to the findings in the Staff Working Paper that accompanied the report indicating that the currently available legislative and non-legislative instruments were not powerful enough to combat online infringements of intellectual property rights effectively. The report stated that “Given intermediaries’ favourable position to contribute to the prevention and termination of online infringements, the Commission could explore how to involve them more closely.”

The report also considered whether there was a need to increase damages in IP infringement cases to ensure that they play a dissuasive role on infringements. The report observed that “Measures, procedures and remedies provided for by the Directive must be effective, proportionate and dissuasive. However, “present, damages awarded in intellectual property rights cases remain comparatively low.” The report explained that damages need to be high enough to really be dissuasive.

According to information received from rightholders, damages awards do not currently appear to effectively dissuade potential infringers from engaging in illegal activities. This is particularly so where damages awarded by the courts fail to match the level of profit made by the infringers.

The main aim of awarding damages is to place the rightholders in the same situation as they would have been in, in the  absence of the infringement. Nowadays, however, infringers’ profits (unjust enrichment) often appear to be substantially higher than the actual damage incurred by the rightholder. In such cases, it could be considered whether the courts should have the power to grant damages commensurate with the infringer’s unjust enrichment, even if they exceed the actual damage incurred by the rightholder.  Equally, there could be a case for making greater use of the possibility to award damages for other economic consequences and moral damages.

In cases where the infringer is a legal person and the rightholder fails to obtain damages because the infringer has no assets, has been liquidated or is in any other way insolvent, an assessment could be made as to whether the rightholder is able to claim damages from the company’s managing director(s) under national law, and if so under what conditions.

The report acknowledged that infringements of intellectual property rights taking place outside of the EU also constitute a major source of concern. The report stated that the Commission is addressing them in different ways, for instance by including ambitious chapters on intellectual property rights in bilateral trade agreements (such as CETA) and through participation in international initiatives such ACTA.

The EU report provides an interesting lens to compare the divergent approaches of Canada and the EU when it comes to intellectual property rights protection. For example, as noted above, the EU already has copyright laws that promote cooperation between ISPs and rights holders. This is achieved, inter alia, by conditioning ISP safe harbors on ISPs not having knowledge of infringement or taking down or disabling infringing content when knowledge of infringement becomes apparent and through measures like Article 8(3) of the EU Copyright Directive. Yet, the EU has recognized that effective measures will require even more active cooperation by ISPs.

By contrast, under Bill C-32, ISPs have almost no legal incentives to cooperate with rights holders. For example, the Bill does not condition the hosting safe harbor on ISPs taking steps to remove or disable access to infringing content even if infringement is apparent (except in the rare case where there is a take down order of a court). Moreover, there is nothing comparable to Article 8(3) of the Copyright Directive. There is only the relatively ineffective requirement to pass on notices of infringement under the notice and notice system.

The EU report also stresses the importance of damages to act as a deterrent against infringements. By contrast, Bill C-32 would make statutory damages unavailable against the most virulent pirates on the internet who are liable for enabling infringement. The Bill also could make statutory damages unavailable against pirate sites and services and other infringers which operate without motive of commercial gain.

An example of this are several widely disseminated blogs written by Prof. Geist purporting to compare “how badly” C-32 stacks up against US law on two key issues in the Bill, digital locks and fair dealing. On these issues he argues that “Canada is far more restrictive than the U.S.” However, in making his arguments, Prof. Geist makes numerous errors in comparing Bill C-32 and US law.

Here are some illustrations from his recent blogs, The U.S. DMCA vs. Bill C-32: Comparing the Digital Lock Exceptions, U.S. Developments Demonstrate Canada’s C-32 Digital Lock Rules More Restrictive Than DMCA,  Bill C-32: My perspective on the key Issues, and CRIA Goes To Washington:

Geist claim: “U.S. rules contain a mandatory review of anti-circumvention exceptions every three years, but Bill C-32 only contains a review of the entire law every five years with no specific examination of anti-circumvention rules or mechanisms for new exceptions.”

Response: Bill C-32 contains two clauses that allow for the creation of new exceptions at any time: (1) regulations can be made any time with broad flexible criteria to exclude new classes of TPMs; and (2) regulations can be enacted to exclude classes of TPMs if they unduly restrict competition. Moreover, the US DMCA has no mechanism such as is available under Article 6(4) of the EU Copyright Directive to require rights holders to take appropriate measures to ensure beneficiaries of an exception can avail themselves of it. However, C-32 permits the enactment of further regulations at any time to require rights holders to provide access to a work to enable individuals to avail themselves of the enumerated exceptions to the TPM provisions.

Geist claim: “U.S. rules now contain an exception for unlocking and jailbreaking a cellphone. Bill C-32 only covers unlocking.”

Response: Under the recent Rulemaking by the Librarian of Congress, a new limited exception was recently established under the DMCA to cover jailbraking cell phones. The exception permits “Computer programs that enable wireless telephone handsets to execute software applications, where circumvention is accomplished for the sole purpose of enabling interoperability of such applications, when they have been lawfully obtained, with computer programs on the telephone handset.” Bill C-32 has a generally applicable exception for interoperability of computer programs that would enable circumvention of TPMs for jailbreaking applications that includes but is not limited to cell phones. Bill C-32 also contains a generally applicable exception to permit reverse engineering of computer programs that might be needed to develop applications that can work with jailbroken phones. US law does not have a comparable exception. Reverse engineering a computer program for interoperability purposes can be a fair use in the US in certain circumstances. It would also be a fair dealing for research purposes in Canada where permitted in the US.

Geist claim:  “U.S. rules contain an exception for e-books designed to facilitate access for the sight impaired. The Canadian rules do not contain a similar exception.”

Response: Under the recent Rulemaking, a new limited exception was recently established under the DMCA. It is restricted to “Literary works distributed in ebook format when all existing ebook editions of the work (including digital text editions made available by authorized entities) contain access controls that prevent the enabling either of the book’s read-aloud function or of screen readers that render the text into a specialized format.” Bill C-32 contains a much broader generally applicable exception that applies to TPMs that protect all works and subject matter to enable the content to be made perceptible to the person with the perceptual disability. It is not limited to any specific formats or type of perceptual disability.

Geist claim: “… the new YouTube exception in the Canadian bill – trumpted as progressive – is still subject to digital locks, while the U.S. has specific exception for it”.

Response:  Neither the US nor any other country I am aware of has anything similar to the proposed UGC (YouTube) copyright exception that is in C-32. The new proposed UGC exception would expressly exempt copying and other uses of content (such as movies, music, books, computer programs, games, art, architectural and engineering drawings, databases, websites and corporate logos) to create new works (including derivative works) and permit them to be disseminated over networks including the Internet. Since the US has no exception that permits this, it goes without saying that there is no exception for circumventing TPMs to enable individuals to engage in these types of activities.

Geist claim: “U.S. rules contain an exception for everyone to circumvent DVD protection to gather a short clip to create non-commercial videos. Canadian rules include an exception for non-commercial videos, but do not exempt circumvention.”

Response: The US exception for circumventing a TPM to create a non-commercial video, which came into force only after C-32 was tabled in the recent Rulemaking, is much more limited than described by Prof. Geist. The exception for non-commercial videos applies only to (1) motion pictures on DVDs that are lawfully made and acquired, (2) that are protected by the Content Scrambling System (CSS), (3) when the circumvention is accomplished solely in order to accomplish the incorporation of short portions of motion pictures into new works, (4) the purpose must be for criticism or comment, and (5)  the person engaging in the circumvention must believe and have reasonable grounds for believing that circumvention is necessary to fulfill the purpose of the use. As drafted, the Canadian UGC copyright exception applies even if an individual circumvents a TPM to create the UGC work. Bill C-32 does not prohibit individuals from circumventing copy control TPMs in order to create UGC works, only access control TPMs. So if an individual has purchased, licensed, or otherwise lawfully obtained access to original content, the individual can hack a TPM that would prevent copying in order to create a UGC work.

Geist claim: The “digital lock rules effectively trump virtually all other rights in the bill (particularly fair dealing and the new consumer exceptions) and extend far beyond what is required to comply with the WIPO Internet treaties.”

Response: The TPM provisions in the Bill, like those in the DMCA, do not prohibit circumventing copy control TPMs for fair dealing purposes. Prof. Geist’s analysis of what is required to comply with the WIPO Treaties has been utterly rebuffed by the former Assistant Director General of WIPO here, here and here.

Geist claim: “U.S. law contains a flexible fair use provision that covers everything from recording television shows to making backup copies. Bill C-32 contains a series of new fair dealing exceptions that are collectively still more restrictive than the U.S. fair use”.

Response: Bill C-32 would introduce three new fair dealing exceptions, parody, satire and education. The Bill would also create numerous new exceptions covering a myriad of activities engaged in by individuals, researchers, businesses and educational institutions including copying for format shifting purposes, time shifting, making back-ups, creating and disseminating UGC works, reverse engineering computer programs, encryption research, security testing, technical processes, and copying practically any content that is publically available over the Internet for educational purposes. These latter exceptions are not bounded or restricted in any ways that require them to be subject to any “fairness” analysis. However, all US activities that are exempted under fair use are, by definition, required to be fair. So, it is by no means accurate to assert that the Canadian Act with these new exceptions would collectively be more restrictive than US fair use.

Geist claim: “The DMCA prohibits only forms of access that would violate or impinge on the protections that the Copyright Act otherwise affords copyright owners.” This is far less restrictive than Bill C-32.”

Response: Prof. Geist refers to a single US case involving MGE UPS Systems and GE for this unqualified assertion. As I previously pointed out, MGE v GE-what did the 5th Circuit decide about the scope of the DMCA TPM provisions and was it right?, Prof. Geist’s conclusions about this case are neither accurate nor complete. The case does not support the categorical statement that in the US “The DMCA prohibits only forms of access that would violate or impinge on the protections that the Copyright Act otherwise affords copyright owners”.

Geist claim: “Canada is not breaking any international treaties” with respect to copyright.

Response:  Canada signed the WIPO Treaties in 1997 committing this country to implement them, but hasn’t done so. Canada is the only G7 country to have failed to modernize its copyright laws to address the copyright issues associated with the Internet. Canada also lags behind all other G7 countries and international standards in failing to upgrade its laws to target counterfeiting and piracy. This was highlighted in a report just released by the RCMP.

Geist claim: “Bill C-32 adopts the successful notice-and-notice approach that has been used in Canada on an informal basis for many years.”

Response: As I have previously pointed out, Prof. Geist’s assertion that notice and notice works is without foundation. We have had a de facto notice and notice system in Canada for many years and there is no evidence that it changes people’s behavior to stop illicit file sharing and purchase creative products from legitimate services. As I also pointed out elsewhere, research by our trading partners shows that while a simple notice may have a temporary effect in reducing online file sharing, only notices that have a threat of some sanction operate as an effective deterrent.

In his latest blog Prof. Geist argues that “Canada needs to reform its laws based facts”.  I agree with this assertion. It is high time the debate about copyright in Canada was based less on hype and misinformation and more on facts.

• Traditionally viewed as being victimless, Intellectual Property (IP) crime has become a source of health and safety concern in Canada. Health, safety, and economic damages from the consumption and usage of counterfeit goods are being reported on an international scale. Victims of IP crime include, among others, people suffering from life threatening diseases who unknowingly use counterfeit medicines containing little or too many active ingredients, or toxins.
• There has been a tangible economic impact not only in terms of lost government revenue, but also on legitimate retailers having to deal with the loss in revenue to online file sharing and the availability of cheaper counterfeit products on Internet websites. Some legitimate retailers have reported difficulty in competing with vendors selling counterfeit goods at unfairly low prices, some having had to lay off staff in order to remain in operation. In more extreme cases, some have had to shut down their business.
• Loss of economic integrity is a threat posed by IP crime to Canadians and the international community. In a knowledge-based economy such as Canada’s, innovation is a key driver of economic growth, productivity and competitiveness. The creative industry has been estimated to encompass 7.4 percent of Canada’s Gross Domestic Product (GDP), and employs more than one million Canadians. The protection of Canadians’ IP Rights (IPR) is therefore vital to support innovation, creativity, and, consequently, to ensure Canada’s long-term economic prosperity.
• The depressed economy and the availability of such goods may play a role in the increasing demand for counterfeit and pirated products.
• Counterfeiting and piracy techniques have become more sophisticated rendering detection more difficult than ever.
• Counterfeiters utilize a variety of methods to evade detection at Canada’s international borders.
• IP Criminals make up an eclectic demographic ranging from organized crime groups, to small-scale retailers who sell small quantities of IP-infringing goods to supplement their income.
• In Canada, the fact that IP crime is difficult to detect, that limited enforcement resources are dedicated to it, and that sentences are not sufficiently significant to deter all serve to generate an attractive criminal undertaking, especially when compared to other crimes such as drug trafficking.
• Given criminals’ increasing awareness of the benefits of counterfeiting, more individuals, criminal networks, and organized crime groups are expected to include IP crimes in their portfolios. Furthermore, given the increasing availability of technology, counterfeiting techniques are expected to improve, rendering detection more difficult than ever.
• Although the RCMP investigated nearly 1,500 cases of IP crime between 2005 and 2008, these numbers are believed to be a fraction of the true IP crime situation in Canada.
• The total retail value of seizures reported by the RCMP alone, from 2005 to 2008, is estimated at more than 63.6 million CAD, highlighting that IP crime is a profitable line of business.
• China (including Hong Kong) is the most common source/transit country for counterfeit goods imported into Canada.
• Canada has been identified as a source of pirated DVD and CD media, primarily for domestic consumption. However, some investigations have revealed Canada as a source country for pirated media found online, as well as a transit country for various IP-infringing goods.
• Current Canadian copyright and trade-mark laws have been criticized by domestic stakeholders and majors trading partners for failing to address IP crime. This criticism stems from the fact that Canada has not implemented an “ex officio” border regime that would enable customs officers to target and detain suspected counterfeit and pirated goods, that Canada has not remedied the perceived ineffectiveness of trademark offences in the Criminal Code, and that Canada has not implemented the World Intellectual Property Organization (WIPO) Copyright Treaty (WCT).
• The notion that current legislative provisions do little to deter IP crime in Canada is generally felt by both private industry and law enforcement. Even after a successful prosecution, penalties imposed are typically mild and reflect, for the accused, the cost of doing business rather than serving as a deterrent. Judges are still faced with sentencing difficulties as there is no precedent, at this time, for imposing stiff penalties.
• International trade has systematically increased the movement and distribution of goods. As a result, border services worldwide, which are the first line of defense in identifying and preventing illicit goods from entering the country, are burdened with increases in transnational shipments.

The RCMP report re-enforces what many who have studied the problem have also concluded. Canada has a significant counterfeiting and piracy problem that is not adequately being addressed by our weak laws and enforcement practices. The porous nature of our borders and the need to upgrade our border controls to world standards to reduce counterfeiting and piracy in Canada has, for example, been noted by two parliamentary committees, three Canadian trade associations, and our major trading partners. Parliamentary Standing Committee on Public Safety and National Security, Parliamentary Standing Committee on Industry, Science and Technology, Ontario Chamber of commerce, Canadian Chamber of Commerce, U.S. Trade Representative,  U.S. Congressional Anti-Piracy Caucus, European Union, and Canadian Anti-Counterfeiting Network (CACN).

Bill C-32 does not specifically address many of the legal shortfalls in our copyright, trademark, criminal, and customs laws that are needed to alleviate the health and safety, economic and criminal problems associated with counterfeiting and piracy. The RCMP report is a further reminder that there is an issue of public importance that needs legislative and other solutions.

This posting is hardly worth responding to, except that some of his readers and syndicated readers might actually believe there is any merit in his claims.  The post is replete with bizarre assertions not backed up by any evidence or logic. set rhetoric to stun

Prof. Geist claims that Russian raids against NGOs “using the pre-text of intellectual property enforcement” “is surely connected to efforts by the U.S. government and copyright lobby groups to actively encourage Russia to increase its IP enforcement”?  What evidence does he rely on for this claim? None.

Prof. Geist relies simply on false logic. A government raids voices of opposition using the pretext of enforcing IP laws. Therefore, having effective  IP laws leads to these types of civil rights abuses. A logical conclusion? Of course not. A government not constrained by the rule of law and looking for a pretext to silence or deter opposition could use any pretext to seize property. Theft, tax evasion, bribing officials, securities violations and a myriad of other criminal offenses all come to mind as pretexts that have been used in the past to silence political opposition. Prof. Geist’s argument leads to the illogical conclusion that it would be dangerous and misguided for any countries with poor records of respecting civil rights and the rule of law to pass effective laws of any kind because they could potentially be abused, regardless of the overall social welfare associated with such laws. If the Russian government had seized the computers in issue based on a pretext that the computers were stolen, could anyone logically have concluded that general laws prohibiting theft had caused the abuses of civil liberties and that tough laws against theft are therfore dangerous and misguided?

Prof. Geist claims that “The US has regularly cited Russia in its Special 301 report, this year including it on the Priority Watch list.” He suggests this is connected to the Russian raids. But, what evidence does Prof. Geist rely on to connect that report to the Russian crackdown on dissidents? None.  

Prof. Geist claims that “The IIPA pushed the U.S. to target Russia, saying that is imperative that prosecutors bring more IPR cases.” Where does he connect the IIPA report to the crackdown on Russian dissidents? He doesn’t. It is also ludicrous to contend that a call for better enforcement of IP laws against piracy could be a reason for the Russian government to quell political dissent.

Prof. Geist also doesn’t mention that the IIPA pointed out that Russian criminal law had undergone several amendments in recent years, making the existing methodology prepared by the General Prosecutor’s Office outdated. The IIPA therefore recommended that the Ministry of the Interior, the General Prosecutor’s Office, and the Investigational Committee jointly prepare a new official uniform methodology.

Prof. Geist then turns to ACTA claiming that it “will provide Russia with a template to follow on IP enforcement” and will “export tougher enforcement measures …without including the exceptions, due process, and balancing provisions”.  However, in making these claims Prof. Geist inaccurately describes what is publically known about the draft treaty from recent leaks.

ACTA does not create any new IP rights (Art.1.3.2), nor remove any exceptions that may be available under copyright. Parties to ACTA must also ensure that enforcement procedures are “applied in such a manner as to…provide for safeguards against their abuse”. (Art 2.1) The draft Internet Chapter, for example, contains an express requirement that “Each Party’s enforcement procedures shall…  be implemented in a manner… consistent with each Party’s law, preserves principles relating to freedom of expression, fair process, and privacy [EU: , among other [US: fundamental] principles]”. (Art.4.2) Each party is also obligated to “endeavor to promote cooperative efforts within the business community to effectively address {US: copyright and related rights}{EU/J: intellectual property rights} infringement while preserving legitimate competition and consistent with each Party’s law, preserving principles relating to freedom of expression, fair process, and privacy, [EU: among other [US: fundamental] principles]”. (Art.4.3)

Prof. Geist’s claim is even more illogical when one considers the principles behind ACTA. ACTA is an attempt to codify best international practices related to the enforcement of IP including practices in Japan, the EU, Australia, and the US. If Prof. Geist’s thesis is correct, one would expect to find rampant civil liberties violations in these countries attributed to the enforcement of IP laws. Of course, Prof. Geist does not make this claim. Rather, his unsubstantiated claim is that these best practices when exported to other countries would have these effects.

Prof. Geist concludes his post with the assertion that the “recent Russian case highlights why” enforcement of tough IP laws and ACTA “is such a dangerous and misguided approach that is apt to cause more problems than it solves.” The recent Russian incident establishes nothing of the sort. set rhetoric to stun