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:

The slides include a summary of the following cases and statutory materials:

Privacy:

Cite Cards Canada Inc. v. Pleasance, 2011 ONCA 3

Leon’s Furniture Limited v. Alberta (Information and Privacy Commissioner), 2011 ABCA 94

State Farm Mutual Automobile Insurance Company v. Privacy Commissioner of Canada, 2010 FC 736

Nammo v. TransUnion of Canada Inc., 2010 FC 1284

Randall v. Nubodys Fitness Centres, 2010 FC 681

Stevens v. SNF Maritime Metal Inc., 2010 FC 1137

Vancouver (City) v Ward, 2010 SCC 27

Hannaford Bros. Co. Customer Data Security Breach Litigation 4 A.3d 492 (Sup, Ct. Me. 2010)

Paul v Providence Health System 240 P.3d 1110 (2010)

Doe 1 v. AOL LLC 719 F.Supp.2d 1102 (N.D.Cal. 2010)

LaCourt v. Specific Media, Inc. 2011 WL 1661532 (C.D.Cal. Apr. 28, 2011)

Claridge v. RockYou, Inc.  2011 WL 1361588 (N.D.cal. Apr. 11, 2011)

Jones v. Tsige, 2011 ONSC 1475

CTB v. News Group Newspapers Ltd & Anor [2011] EWHC 1326 (QB)

City of Ontario, Cal. v. Quon, 130 S. Ct. 2619

R. v. Cole, 2011 ONCA 218

U.S. v. Warshak 631 F.3d 266 (6th Cir. 2010)

FCC v. AT&T INC., 562 US__ (2011)

Holmes v. Petrovich Development Co. 191 Cal. App. 4th 1047

Bigstone v. St. Pierre, 2011 SKCA 34

Mosley v. UK (EU Ct. Human Rights) (10 May 2011)

Sparks v. Dubé, 2011 NBQB 40

Warman v. Wilkins-Fournier, 2011 ONSC 3023

Contracts and Electronic Agreements:

Seidel v. TELUS Communications Inc., 2011 SCC 15

AT&T Mobility LLC v. Conception, 2011 WL 1561956 (U.S. Sup. Ct. 2011)

Evans v. Linden Research, Inc., 2011 WL 339212 (E.D.Pa. 2011)

St-Arnaud v. Facebook Inc., 2011 QCCS 1506

Grosvenor v. Qwest Communications Intern., Inc., 2010 WL 3906253 (D. Colo. 2010)

Hoffman v. Supplements Togo Management, LLC, 2011 WL 1885675 (N.J.Super.A.D. 2011)

Roling v. E*Trade Securities, LLC, 756 F. Supp. 2d 1179 (N.D. Cal. 2010)

Patco Const. Co., Inc. v. People’s United Bank, 2011 WL 2174507 (D.Me. May 27, 2011)

Harold H. Huggins Realty, Inc. v. FNC, Inc., 575 F.Supp. 2d 696, 708 (D.Md. 2008) 

U.S. v. Nosal 2011 WL 1585600 (9th. Cir. Apr 28, 2011)

United Stats v. Rodriguez, 628 F. 3d 1258, (11th Cir. 2010)

Facebook, Inc. v. Power Ventures, Inc. 2010 WL 3291750 (N.D.cal.2010)

Naldi v. Grunberg, 908 N.Y.S.2d 639 (N.Y.A.D. 2010)

Golden Ocean Group Ltd. v Salgaocar Mining Industries PVT Ltd. & Anor [2011] EWHC 56 (Comm) (21 January 2011) 

Barwick v. Government Employee Ins. Co., Inc. 2011 Ark. 128 (Sup. Ct. Ark. 2011)

Distinct Fortune Ltd. v. Hyndland Investment Co. Ltd. [2010] HKEC 2013

Yazdani v. Canada (Citizenship and Immigration), 2010 FC 885

Contract and License Issues:

De Beers UK Ltd. v. Atos Origin It Services UK Ltd. [2010] EWHC 3276 (16 December 2010) 

Vernor v. Autodesk, Inc. 621 F.3d 1102 (9th Cir. 2010)

MDY Industries, LLC v Blizzard Entertainment, Inc. 2010 WL 5141269 (9th.Cir. 2010)

London Borough of Southwark v. IBM UK Ltd. [2011] EWHC 549 (17 March 2011) 

Agence France Presse v. Morel, 2011 WL 147718 (S.D.N.Y.2011)

Baidu, Inc. v. Register.com, Inc., 2010 WL 2900313 (S.D.N.Y.2010)

Facebook, Inc. v. Pacific NorthWest Software, Inc., 2011 WL 1843509 (9th Cir. 2011)

Patents and Trade-marks

Amazon.com, Inc. v. Attonrey General of Canada, 2010 FC 1011

Microsoft Crop. V I4I Limited Partnership 564 U.S. __ (2011)

Global-Tech Appliances, Inc. v. SEB S.A., 563 U.S. __ (2011)

Board of Trustees of Leland Stanford Junior University v. Roche Molecular Systems, Inc., 563 U.S. ___(2011)

Rosetta Stone Ltd. v. Google Inc., 730 F. Supp. 2d 531 (E.D. Vir. 2010)

Jurin v Google Inc., 2011 WL 572300 (E.D.Cal.2011)

Private Career Training Institutions Agency v. Vancouver Career College (Burnaby) Inc., 2010 BCSC 765 

Network Automation Inc. v Advanced Systems Concepts Inc, 638 F.3d 1137 (9th.Cir.2011)

Microsoft Corp. v. Shah, 2011 WL 108954 (W.D.Wash. 2011)

Masterpiece Inc. v. Alavida Lifestyles Inc., 2011 SCC 27

Copyright:

Sirius Canada Inc. v. CMRRA/SODRAC, 2010 FCA 348

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

Telstra Corporation Limited v. Phone Directories Company Pty Ltd. [2010] FCAFC 149 (15 December 2010)

Acohs Pty Ltd. v. Ucorp Pty Ltd. [2010] FCA 577 (10 June 2010)

Roadshow Films Pty Ltd. v  iiNet Limited, [2011] FCAFC 23

REFERENCE for a preliminary ruling from the Nejvyšší správní soud (Czech Republic) ECJ 22 December, 2010

SAS Institute Inc. v. World Programming Ltd. [2010] EWHC 1829 (Ch) (23 July 2010) 

SAS Institute Inc v World Programming Ltd [2010] EWHC 3012 (Ch) (22 November 2010) 

The Newspaper Licensing Agency Ltd. v. Meltwater Holding BV [2010] EWHC 3099 (Ch) (26 November 2010) 

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

Media C.A.T. Ltd. v. A [2010] EWPCC 17 (01 December 2010) 

The Authors Guild et al v. Google Inc.  2011 WL 986049 (S.D.N.Y. 2011)

US v. ASCAP, 2010 WL 3749292 (2nd. Cir. Sept. 28, 2010)

Kernal Records Oy v. Mosley,  2011 WL 2223422 (S.D.Fla. Jun. 7, 2011)

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

The legislation creates significant vicarious and accessorial liability for companies and for their officers and directors with the potential for administrative penalties of up to $10 million and damages awards which can reach $1 million per day or per breach.

Accordingly, you will want to learn about this new legislation and how to comply with its many provisions. To help you do so, I am posting slides prepared by Lorne Salzman and I for the  IT Can Roundtable presentation we gave earlier today on the impacts of Bill C-28.

Sookman Salzman ITCAN Spam Slides

My slides summarize the following copyright cases from Canada, Australia, UK, Ireland, Singapore, Europe and the USA:

Canada

Alberta (Education) v Access Copyright 2010 FCA 198

Bell Canada v SOCAN (Tariff 22) 2010 FCA 220

Canadian Private Copying Collective v. J & E Media Inc., 2010 FC 102

Cheung v. Target Event Production Ltd., 2010 FCA 255

Commercial Radio Stations Tariff, [2010] C.B.D. No. 4

Copying for Private Use (Re: Private Copying 2010), Decision of the Board November 2, 2010

CRTC (Re: Broadcasting Act Reference), 2010 FCA 178

Entertainment Software Association v CMRRA/SODRAC, 2010 FCA 221

Entral Group International Inc. v. MCUE Enterprises Corp. (Di Da Di Karaoke Company), 2010 FC 606

Microsoft Corp. V 9038-3746 Quebec Inc. 2010 FCA 151

Nicholas v. Environmental Systems (International) Limited, 2010 FC 741

Philip Morris Products S.A. v. Malboro Canada Limited, 2010 FC 1099

R. v. Hirani , 2010 BCPC 205

RecordTV Pte Ltd v MediaCorp TV Singapore Pte Ltd [2010] SGCA 43

Sirius Canada Inc. v CMRRA/SODRAC, 2010 FCA 348

Sixty Spa c. 3127885 Canada Inc., 2010 QCCS 2754

SOCAN (Tariff 22G) v Bell Canada 2010 FCA 139

SOCAN v. Bell Canada, 2010 FCA 123

Vinod Chopra Films Private Limited v. John Doe, 2010 FC 387

Wira v. Jubilee Enterprises Ltd., 2010 SKQB 320

 Australia

 Acohs Pty Ltd v Ucorp Pty Ltd [2010] FCA 577 (10 June 2010)

Fairfax  Media Publications Pty Ltd v Reed International Books Australia Pty Ltd [2010] FCA 984 (7 September 2010)

Larrikin Music Publishing Pty Ltd v EMI Songs Australia Pty Limited [2010] FCA 29 (4 February 2010)

Primary Health  Care Limited v Commissioner of  Taxation  [2010] FCA 419 (4 May 2010)

Telstra Corporation Limited v. Phone Directories Company Pty Ltd. [2010] FCAFC  149  (15 December 2010)

Europe

FTD B.V. v Eyeworks Film & TV Drama BV, Court of Appeal of the Hague, 15 November, 2010

PADAWAN SL v Sociedad General de Autores y Editores (SGAE) (Case C-467/08) 21 October, 2010

REFERENCE for a preliminary ruling from the Nejvyšší správní soud (Czech Republic) ECJ 22 December, 2010

The Pirate Bay Appeal, SVEA Court of Appeal, 26 November, 2010

 UK, Ireland, Singapore

 Crosstown Music Company 1, LLC v Rive Droite Music Ltd [2010] EWCA Civ 1222 (02 November 2010)

EMI Records & Ors v Eircom Ltd, [2010] IEHC 108

EMI Records (Ireland) Ltd v UPC Communications Ireland Ltd [2010] IEHC 377

Football Dataco Ltd v Brittens Pools Ltd, [2010] EWHC 841 (Ch) (23 April 2010)

Football Dataco Ltd v Sportradar GmbH, [2010] EWHC 2911 (Ch) (17 November 2010)

ITV Broadcasting Ltd v TV Catch Up Ltd [2010] EWHC 3063 (Ch) (25 November 2010)

Media C.A.T. Ltd. v A [2010] EWPCC 17 (01 December 2010)

RecordTV Pte Ltd v MediaCorp TV Singapore Pte Ltd [2010] SGCA 43

SAS Institute Inc v World Programming Ltd [2010] EWHC 1829 (Ch) (23 July 2010)

The Newspaper Licensing Agency Ltd v Meltwater Holding BV [2010] EWHC 3099 (Ch) (26 November 2010)

Twentieth Century Fox Film Corporation v. Newzbin Ltd., [2010] EWHC 601 (Ch) (29 March 2010)

 USA

 Arista Records, LLC v Lime Wire Group  2010 WL 1914816 (S.D.N.Y.2010)

Arista Records, LLC v. Doe 3, 604 F. 3d 110 (2nd.Cir.2010)

Baby Buddies, Inc. v. Toys ” R” Us, Inc., 2010 WL 2853720 (11th.Cir. July 22, 2010)

Benay v. Warner Bros. Entertainment, Inc., 607 F. 3d 620 (9th. Cir. 2010)

Columbia Pictures Industries Inc v Fung 2:06-cv-05578-SVW-JC (C.D. Cal. May 20, 2010)

Ho v. Taflove & Chang, 696 F. Supp. 2d 950 (N.D.Ill.2010)

Mattel, Inc. v. MGA Entertainment, Inc., 616 F. 3d 904 (9th.Cir.2010)

MDY Industries, LLC v Blizzard Entertainment, Inc. 2010 WL 5141269 (9th.Cir. Dec 14, 2010)

Sony Computer Entertainment America, Inc v Jaffe, 2010 WL 816651 (N.D.Cal, 2010)

US v. ASCAP 2010 WL 3749292 (2nd. Cir. Sept. 28, 2010)

Vernor v. AUTODESK, INC. 621 F.3d 1102 (9th.Cir. 2010)

Viacom Int’l Inc. v. YouTube, Inc., 718 F.Supp.2d 514 (S.D.N.Y. June 23, 2010)

The following additional cases are summarized in the conference paper:

 Canada

 Apple Canada Inc. c. St-Germain, 2010 QCCA 1376

Association des journalistes indépendants du Québec (AJIQ-CSN) c. Journal Voir, 2010 QCCS 1574

AstralMedia Radio Inc. v. Society of Composers, Authors and Music Publishers of Canada, 2010 FCA 16

Canadian Private Copying Collective v. Data Media Products Inc. 2009 FC 1277

Concept Developments Ltd. v. Webb, 2010 FC 1315

Constructions Première Classe inc. c. Gestion 117 inc. 2009 QCCS 6392

Constructions Première Classe inc. c. Beaulieu 2010 QCCQ 1710

Construction Denis Desjardins inc. c. Jeanson 2010 QCCA 1287

Interim Statement of Royalties to be Collected by Access Copyright for the Reprographic Reproduction, in Canada, of Works in its Repertoire (Post-Secondary Educational Institutions, 2001-2013), Copyright Board, December 23, 2010

Jam c. Éditions Trois-Pistoles, 2010 QCCQ 9886

Licence Application by the Ministère de L’Education, Du Loisir et du Sport Québec (MELS) for the use of the Soundtrack of a Video Recording of a Speech Delivered by Severn Cullis-Suzuki, Copyright Board, April 23, 2010

Neugebauer v. Labieniec, 2010 FCA 229

Nova Construction plus (Jean-Pierre Rioux) inc. c. Gagnon, 2010 QCCS 4463

Premium Sports Broadcasting Inc. v. 1682211 Ontario Inc. (Studio 10), 2010 FC 1267

Robertson v. Proquest Learning and Information LLC, [2010] O.J. No. 3261

Society of Composers, Authors and Music Publishers of Canada v. 564163 Ontario Ltd. (c.o.b. Studio 4 Tavern), 2010 FC 905

Society of Composers, Authors and Music Publishers of Canada v. Maple Leaf Sports and Entertainment, 2010 FC 731

Statement of Royalties to be Collected by SOCAN and NRCC in respect of Pay Audio Services for the Years 2007-2009, Copyright Board, January 15, 2010

Statement of Royalties to be Collected by CBRA for the Fixation and Reproduction of Works and Communication Signals, in Canada, by Commercial and Non-Commercial Media Monitors for the Years 2009 and 2010, Copyright Board, February 12, 2010

Statement of Royalties to be Collected by SOCAN, Re:Sound, CSI, AVLA/SOPROQ and ArtistI in respect of Commercial Radio Stations, Copyright Board, July 9, 2010

Warner Chappell Music France c. Beaulne, 2010 QCCS 2632

 UK

 Nintendo Company Ltd v. Playbles Ltd, [2010] F.S.R. 36 (July 20 and 28, 2010)

The slides can be seen below:
Sookman LSUC Copyright 2010 Slides

———————————————

Welcome. I hope everyone is having a good day so far. Michael Geist and I are going to talk about the legal protection of technological protection measures (TPMs).

I am going to explain how the TPM provisions in Bill C-32 work and highlight some of the areas where there has been confusion in interpreting them. I will also address some of the proposals being made for amending C-32 as it relates to TPMs. In particular, I will provide my views on the merits of Michael’s two main proposals for amending the Bill’s TPM provisions.

Michael says the Bill should only prohibit circumventing TPMs when the purpose is for infringement. He also says a person should be able to hack a TPM to make private copies and that rights holders should not be compensated for such copying such as through a private copying levy. I do not agree with his proposals and will tell you why.

It is interesting that I am speaking before Michael today. I will be anticipating some of the things he might say based on his blogs and our recent appearance before the legislative committee reviewing Bill C-32 on December 1, 2010. If I get Michael’s positions wrong, I am sure he will tell us.

Frequently asked questions about legal protection for TPMs

The topics I will canvass are set out in my slides in more detail. They are organized by a series of questions that people who are involved in the debate about TPMs need to consider. They are:

• Whether Bill C-32 properly implements the WIPO Treaties consistent with the practices of our trading partners.
• Whether the Bill permits copying for fair dealing, educational, and other purposes.
• Whether the circumvention exceptions in the Bill are flexible enough to deal with unforeseen or unintended consequences.
• Whether Canada can properly implement the WIPO Treaties by limiting the prohibition on circumvention to an infringing purpose.
• Whether other jurisdictions limit protection of TPMs to circumvention for an infringing purpose.
• Whether circumvention of TPMs for the purposes of format shifting, time shifting, and making back-up copies for private purposes (private copying) ought to be permitted. Related to this question is the notion of “user rights”; what that term means; whether “user rights” trump authors’ rights; and whether “user rights” should trump legal protection for TPMs.
• Given that one of the goals behind the Bill is to follow international standards, whether other jurisdictions permit exceptions for private copying to trump TPMs.
• Whether an exception for private copying that permits circumvention of TPMs for such purpose would comply with the Berne Three Step Test?
• Do the WIPO Treaties which Canada is committed to ratifying permit circumventing TPMs for private copying?
• My last topic is whether Michael’s two proposals for amending the TPM provisions in Bill C-32 have any precedents internationally. Michael points to Bill C-60, New Zealand and Switzerland as precedents. But are they really precedents we can or should follow? They are not and I will tell you why.

Does C-32 properly implement the WIPO Treaties?

Let me begin with the question as to whether Bill C-32 properly implements the WIPO Treaties. If you look at my slides you will see a quote from the WIPO Guide which sets out what the treaties require. WIPO itself says that to implement the treaties a contracting party must put in place several measures. The first are measures that prohibit acts of circumvention including prohibiting acts of access control circumvention. The second are measures that prohibit providing circumvention services and trafficking in circumvention tools.

Bill C-32 meets these requirements. The Bill has a definition of “technological protection measure”. It describes two types of TPMs.  Paragraph (a) defines access control TPMs; paragraph (b) defines copy control TPMs.  There is a definition of “circumvent”.  The actual prohibition against circumvention which is in Section 41.1(1) only apply to access control TPMs within the meaning of paragraph (a). There is no general prohibition against circumventing copy control TPMs. The provisions dealing with trafficking in circumvention tools or offering services to circumvent apply to both access control and copy control measures.

Does C-32 have exceptions that permit circumvention of TPMs and is there a flexible means of adding to them if needed?

The Bill has a number of exceptions, some of which are misunderstood or have been inaccurately described. There are, for example, exceptions for law enforcement, interoperability, encryption research, personal information and network security testing. There are also exceptions that permit trafficking in tools and providing circumvention services to facilitate the exercise of these exceptions.

Michael has said there are no exceptions for the blind. He is wrong. There is one that permits circumvention by or for persons with perceptual disabilities such as the blind. He also says that the exception for the blind does not include an exception that permits providing circumvention tools or services to enable people to circumvent TPMs for the blind. This too is wrong. Section 41.16(2) has an exception for this.

Michael also says there is no exception that permits jail breaking phones to use them on other networks. That is dealt with in radio apparatus exception. He also says there is no ability to jail brake a smartphone for the purpose of application interoperability. That also is wrong. To the extent a person needs to circumvent a TPM to make an application work with a phone’s operating system e.g., Apple’s iPhone OS, that is permissible under the general exception that enables people to circumvent TPMs for interoperability purposes.

If you compare the circumvention prohibitions in Bill C-32 with what exists internationally, you will see that they are less protective of TPMs than in the EU under the Copyright Directive. That directive requires Member States to prohibit the circumvention of access and copy control TPMs. Bill C-32 only prohibits circumvention of access control TPMs. Under C-32 it is permissible to circumvent a copy control TPM for a fair dealing or other purpose including education. Statements made by Michael to the effect that the TPM provisions in C-32 are more strict than in the U.S or that they completely trump fair dealing and education are not, therefore, true.

Michael has also challenged the processes in the Bill to establish new exceptions to address unintended consequences and new technologies. He claims the Bill is inflexible in this respect. However, if you look at the Bill you will see that the government has the power to enact regulations in three categories of situations to deal with unintended consequences and new technologies.

Under  S.41.21(1) there is a power to make regulations in the event TPMs are used to restrict competition in the aftermarket sector. This power was intended to deal with the few cases in the U.S. where entities tried, unsuccessfully, to use TPMs to stop competition in interoperable products such as garage door openers and printer cartridges.

The Governor in Council also has a broad power to make regulations to deal with other situations in Section 41.21(2) having regard to specific open ended criteria set out in the subsection. Subsection (i), takes into account a situation where a TPM could adversely affect the use a person may make of a work. This is very broad factor and would cover regional coding and other potential impediments to the use of a work. Subsection (iii) takes into account a situation where a TPM could adversely affect fair dealings for criticism, review, news reporting, commentary, parody, satire, teaching, scholarship or research. Accordingly, if TPMs hamper fair dealings including a dealing for educational purposes, a regulation could address the problem. Subsection (v) takes into account a situation in which a work is not commercially available in a form that is appropriate for educational uses. Last, the subsection requires taking into account any other relevant factor.

Section 41.21(2)(b) also gives the government the power by regulation to require the owner of a copyright to provide access to people who are entitled to the benefit of an exception, where for some reason the copyright owner is not making it possible to exercise the exception.

As my slides show, these processes provide mechanisms to address unintended consequences and new technologies in a broader and more flexible way than what exists internationally. For example, the U.S. has only one process to expand the scope of the exceptions. It is one that Michael has criticised. The U.S. has a tri-annual review process before the U.S. Copyright Office to exclude classes of works for certain purposes. The Canadian regulation power is broader. It applies at any time and is not subject to the same standard of proof. In the EU under Article 6(4) the EU Copyright Directive, Member States have to take appropriate measures, in the absence of voluntary agreements with rights holders, to make the exercise of certain exceptions possible.

Can a prohibition on circumvention that is limited to an infringing purpose comply with the WIPO Treaties?

I would like now to turn to the question of whether the WIPO Treaties can be implemented by limiting protection to circumvention for the purposes of infringement. I raise this because Michael has said on numerous occasions, most recently before the legislative committee examining Bill C-32, that Canada can implement protection for TPMs in this way and comply with the minimum requirements of the WIPO Treaties.

There has been an exchange of views across the Atlantic between Michael and Dr. Ficsor concerning the minimum requirements of the WIPO Treaties. Last December Dr. Ficsor published several papers in which he disagreed with Michael’s views about the WIPO Treaties. After C-32 was tabled Michael published a paper in a book edited by him, which I am sure he will show you as he did to the legislative committee. In the paper Michael took issue with Dr. Ficsor’s views about the WIPO Treaties. Dr. Ficsor read the paper and wrote a major rebuttal to Michael’s paper which he published on IP Osgoode’s blog. He thoroughly and meticulously examined every argument and conclusion that Michael made and found them wanting.

Dr. Ficsor agrees that there is certain flexibility as to how the treaties can be implemented. But he disagrees with Michael’s opinion that the treaties mean “whatever you want them to mean”.  Dr. Ficsor provides a detailed analysis of what the treaties do require. He shows that the treaties cannot be properly implemented by linking the prohibition against circumvention to an infringing purpose, as Michael contends. I recommend you read Dr. Ficsor’s paper.

Dr. Ficsor knows something about the WIPO Treaties. He was the Assistant Deputy General of WIPO at the time the WIPO Treaties were negotiated. There is probably no one who knows more about the requirements of the WIPO Treaties than he does.

Do other countries link circumvention of TPMs to an infringing purpose?

No, our trading partners do not prohibit circumventing TPMs only if the purpose of the circumvention is for an infringing purpose. There would be no point to such limited protection and it could hardly be argued that such protection provides “adequate legal protection” for TPMs, as the WIPO Treaties require.

Michael points to Bill C-60, New Zealand, and Switzerland as precedents for limiting protection for TPMs to circumvention for the purposes of infringement. He repeated that claim again before the legislative committee. Let us look at these supposed precedents.

At the time Bill C-60 was being considered, there were many people who believed that its TPM provisions would not have complied with the WIPO Treaties. An example, is Glen Bloom who expressed this view in a paper referred to in my slides. Mr. Bloom is the Chair of the IPIC Copyright Technical Committee. In this capacity he recently testified before the legislative committee about Bill C-32. He knows his copyright. Mr. Bloom states in his paper, quoted in my slides, that Bill C-60’s TPM provisions would not have met Canada’s obligations under the WIPO Treaties.

Michael also relies on New Zealand as a precedent. New Zealand permits circumvention of TPMs unless it is for an infringing purpose. Michael says that shows that the treaties can be implemented in this way. But, New Zealand has not ratified the WIPO Treaties and is hardly a country that can evidence what the treaties require.

Michael also refers to Switzerland as a precedent because Switzerland links a prohibition on circumventing TPMs to an infringing purpose. But, Switzerland is a known case of a Contracting Party that simply did not do it right. Dr. Ficsor says, “it does happen time and again that certain Contracting Parties do not fulfil their treaty obligations. Switzerland is such a country.”  Of the 88 countries that have ratified the WCT and the 87 countries that have ratified the WPPT, Michael picks as a model a country that has failed to provide adequate legal protection against the circumvention of TPMs. He does not pick any of Canada’s major trading partners as examples for Canada to follow.

Moreover, although Michael refers to Switzerland as a model, he hasn’t, to my knowledge, pointed out that Switzerland has a private copying levy to compensate rights holders for unauthorized copying. Michael told the legislative committee last week that he does not support a levy to compensate authors for unauthorized copying. So even Switzerland is not a precedent for the overall form of implementation Michael proposes.

Should circumvention of TPMs for private copying be permitted?

I now want to address whether circumvention of TPMs should be permitted for private copying. Bill C-32 has exceptions for format shifting, time shifting and making backup copies. These exceptions only apply where TPMs are not hacked to do these acts.

In my view, the conditions against hacking TPMs in the new private copying exceptions are important. TPMs support new business models that would be undermined if people could hack TPMs to make private copies. The conditions are also important because Bill C-32 permits private copying without any compensation to rights holders. Removing these conditions would undermine legitimate markets for the legal sale of copyright content and further increase uncompensated copying.

Michael says we should drop these conditions. He says we should permit people to hack TPMs to copy for format shifting, time shifting and back-up copying purposes. But, doing so could undermine many current and future service offerings which depend on protecting copy and access control TPMs. These include subscription, rental, and rent to own services.** Examples of these services are music streaming subscription services such as Napster and Spotify; video streaming subscription services like Netflix; ad supported music; internet radio; certain digital downloads services, and digital movies rentals from Blockbuster. My slides depict how these and other models could be detrimentally affected by a legal right to hack a TPM for private copying purposes.

Here are just a couple of examples of the problems:

• On demand rent or buy models: If you rent, you pay (say) $3.99 and if you buy, you pay (say) $17.99. If a person could circumvent the TPM that protects the rent/buy model, wouldn’t some people just pay the rental fee and make permanent copies without paying for them?
• A music or movie subscription service that has copy controls that prevents copying: If a person could stream the sound recording or movie and legally circumvent the TPM to make a permanent copy, wouldn’t some people pay a monthly subscription fee and make permanent copies without paying for them?
• Music downloads like iTunes where you buy a song today for $0.99, its TPM free: A person could subscribe to a monthly subscription service and legally circumvent the copy control TPM that prevents copying to make permanent copies. Wouldn’t some people make permanent copies without paying for them?
• Software and gaming: A person could obtain a 5 day trial with an option to buy if the person likes the software or game. However, if a person can legally hack the TPM that limits access for the trial period and which prevents other copying, wouldn’t some people hack the TPM and avoid paying the purchase price to obtain permanent copies?

All of these things could be done without infringing copyright under Michael’s proposals.

Michael said to the legislative committee that private copying is a “user right”. He says if a user acquires content the user ought to have the right and does have the right to hack the TPM to make copies for format shifting and other purposes without the consent of the owner of the copyright – and without paying for the copies.

Michael is wrong that people have or should have a reasonable expectation that they can obtain content for free, or on a limited basis for some reduced consideration, hack the protections rights holders place on the content, and make copies or obtain access they had not bargained or paid for. If a person pays a rental fee, the person should not expect a right to obtain a permanent copy without paying for the permanent copy. If a person pays a monthly subscription fee for temporary access to content streams, the person cannot reasonably expect the right to make permanent copies without paying for them.

If C-32 is amended as proposed by Michael, once a person has legal access to a work, the person could legally hack the TPM protecting the work, legally make permanent copies, and effectively avoid paying for what is purchased. This is an unreasonable proposal. No person could reasonably ask for this broad right. It is unjustifiable and unsupportable. It would reduce investment in digital products and new distribution models. It would result in the loss of revenues and jobs in the digital sector. It would also substantially undermine the Government’s stated goal of enabling e-commerce in digital products in Canada.

Michael’s views about “user rights” confuses the rights a person has in the tangible thing her or she buys with the copyright in the thing. When you buy a song, you do not buy the label. When you buy a movie, you do not buy the studio. When you buy a video game or book, you are not buying the publisher. A person acquires a right to use an object he or she buys. But, the person does not acquire any legal right to make copies that have not been expressly or implicitly authorized by the copyright owner.

The metaphor of “user rights” expressed by the Supreme Court in the CCH case makes clear that copyright rights, and exceptions like fair dealing, are of paramount importance in construing the Copyright Act. But, as the Supreme Court made clear in CCH, fair dealing is only an affirmative defence to a claim of copyright infringement. It is not a concept that provides legal rights that can be asserted against copyright owners or be used to trump authors’ legal rights. “User rights” under copyright provide no basis for claiming that a person who rents copyright content such as a movie or game, or who merely subscribes to view it, has a right to hack a TPM in order to make permanent copies without authorization and payment.

A number of European decisions, in examining the legal inter-relationship between private copying and the use of TPMs, have similarly concluded that exceptions for private copying do not trump author’s rights in their works. In particular, in Europe there have been claims brought against copyright owners of content such as music and movies alleging they have a legal duty to remove TPMs to enable individuals to make private copies. These claims have been rejected in the cases referred to in my slides.

Would an exception for circumventing TPMs for private copying comply with the Three Step Test?

I now turn to the question of whether Canada could create an exception for private copying that permits circumvention of TPMs for such purposes and comply with our obligations under the Berne Convention and WTO TRIPS. These agreements, as you know, require that the Three Step Test be applied to copyright exceptions and limitations. The Three Step Test requires that an exception be a certain special case; that it not undermine the market or potential market for a work; and that it not unreasonably prejudice authors or copyright owners.

The interrelationship between private copying and protection for TPMs was considered by the French Supreme Court in the Mulholland case. A key question in the case was whether French copyright law could allow circumvention of a TPM for private copying. The French Supreme Court stated it could not. It held that a law that prevents rights holders from using TPMs on their products in the digital environment would violate the Three Step Test. Central to its decision was the concern that TPM-free products would promote unlicensed copying. That is a precedent of pretty high authority. The Paris Commercial Court in the Henry v. Warner Bros case expressed similar statements about the need for TPMs in the digital environment.

Would an exception for circumventing TPMs for private copying comply with the WIPO Treaties?

Another question is whether the WIPO Treaties can be complied with by permitting circumvention of TPMs for private copying? Dr. Ficsor also deals with this in his paper that is posted on IP Osgoode’s web site. He suggests that an adequate level of protection cannot take the form of allowing circumvention of TPMs so as to permit everyone to make private copies. The WIPO Treaties require an adequate level of protection. But, how can legal protection for TPMs be adequate if a right to circumvent TPMs for private copying would violate the Berne Three Step Test as the Mulholland case suggests?

Are there international precedents for an exception for private copying, that permits circumventing TPMs, where authors receive no compensation for the unauthorized copying?

I will now address the question of international practice and standards. In particular, I want to challenge Michael’s assertions that there are international precedents for what he proposes. I have already addressed whether there are international precedents for limiting the prohibition on circumventing TPMs to an infringing purpose. I now ask whether any of our trading partners that have private coping exceptions permit private copying to trump TPMs as is being proposed by Michael?

In the EU the answer is no. In the EU private copying is permitted only if it is subject to fair compensation. The scope of any private copying exception must be subject to the Berne Three Step Test. Moreover, Member States have no right to permit circumvention of TPMs to enable private copying. Member states may take measures to enable certain private copying where voluntary measures by rights holders are not in place. Importantly, however, even these measures do not apply to works that are available on demand through an online subscription basis. They essentially apply to CDs and other physical media.

As I already mentioned, Michael says we should look to Switzerland and New Zealand as examples. But neither of them are precedents for what is being proposed. New Zealand, to my knowledge, does not even have a broad exception for private copying. Switzerland permits circumvention of TPMs for private copying. It is a country, which as pointed out before, did not properly implement its treaty obligations. But, even putting that aside, Switzerland compensates its authors and other creators for private copying through a levy. So it is no precedent for Canada given the clear direction that the existing private copying levy on audio-recording media will not be expanded to digital audio recorders (DARs) like iPods and other devices.

Michael has not pointed to any other country that has broad rights of private copying such as those in Bill C-32, a right to hack TPMs for this purpose, and which does not provide authors and other rights holders with compensation for such copying. His proposals, essentially, ask Canadians to chart a new course in violation of our convention and treaty obligations in a way that, when properly understood by Canadians, would be viewed as unreasonable and unjustifiable, and which would seriously undermine the rights of authors and other creators and their ability to exploit and to be compensated for their creative endeavours.

Thank you.

* The talk was edited and augmented for this blog.

** I use the word “rent” in the colloquial sense. The format shift exception does not permit making a private copy where the source copy has been borrowed or rented.  It is unclear whether a download that may be viewed for a limited period is a  “rental” in the legal sense.

For convenience my slides are set out below.

Insight_Slides_on C-32 and TPMs

Sookman Osgoode C-32 Speech

Sookman ITCAN October 2010 Slides

The slides include a summary of the following cases and statutory references:

Tercon Contractors Ltd. v. British Columbia, 2010 SCC 4

Internet Broadcasting Corporation Ltd. v Mar LLC [2009] EWHC 844 (Ch)

Gammasonics Institute for Medical Research Pty Ltd v Comrad Medical Sysytems Pty Ltd [2010] NSWSC 267 (9 April 2010)

Kingsway Hall Hotel Ltd. v Red Sky IT (Hounslow) Ltd. [2010] EWHC 965

BSkyb Ltd v HP Enterprise Services UK Ltd [2010] EWHC 86 (TCC) (26 January 2010)

Griffin v. Dell Canada Inc., 2010 ONCA 29

Tracfone Wireless, Inc. v Anadisk LLC 2010 WL 565392 (S.D.Fla. Feb 18, 2010)

Defrontes v Dell Inc. 984 A.2d 1061 (Sup.Ct.RH.Isld.2009)

Major v McCallister (Miss.CT.App. Dec 23, 2009)

DC Laboratories, Inc. v. Hach Co., 2009 WL 2605270 (C.D.Ill.,Aug 25, 2009)

Hines v. Overstock.com, Inc. 668 F.Supp.2d 362 (E.D.N.Y. 2009)

Tradecomet.com LLC v Google, Inc. 2010 WL 779325 (S.D.N.Y. Mar. 5, 2010)

Scherillo v. Dun & Bradstreet, Inc. 684 F.Supp.2d 313 (E.D.N.Y.2010.)

LTVN Holdings LLC v. Odeh 2009 WL 3736526 (D.Md.2009)

Brodsky v. Match.com LLC  2009 WL 3490277 (S.D.N.Y. Oct. 28, 2009)

Miller v. Facebook, Inc., No. 09-02810 (N.D. Ga. Jan. 15, 2010)

National Auto Lenders, Inc. v. SysLOCATE, Inc. 2010 WL 527866 (S.D.Fla.Feb. 10, 2010)

Carimate v. Ginsglobal Index Funds 2009 WL 3233538 (C.D.Cal.Sept.30, 2009)

Thomas & Anor v BPE Solicitors (A Firm) [2010] EWHC 306 (Ch) (19 February 2010)

Grant v. Torstar Corp., 2009 SCC 61

Crookes v. Newton, 2009 BCCA 392, (leave to SCC granted)

Metropolitan International Schools Ltd. v Designtechnica Corp [2009] EWHC 1765 (QB) (16 July 2009)

R. v. Morelli, 2010 SCC 8

Review of the Internet traffic management practices of Internet service providers, Telecom Regulatory Policy CRTC 2009-657, Oct. 21, 2009)

Bill C-22 An Act respecting the mandatory reporting of Internet child pornography by persons who provide an Internet service

Notice Paper, May 25, 2010 – INTRODUCTION OF GOVERNMENT BILLS http://ow.ly/1OatI

Lucasfilm Ltd & Ors v Ainsworth & Anor [2009] EWCA Civ 1328 (16 December 2009)

Editions du Seuil v Google Inc, Tribunal de Grande Instance de Paris 3ème chambre, 2ème section Ruling of December 18, 2009

Columbia Pictures Industries Inc v Fung  2:06-cv-05578-SVW-JC (C.D. Cal. May 20, 2010)

Banyan Tree Holding (P) Limited v Reddy CS (OS) No. 894/2008 (H.C.Delhi. Nov. 23, 2009)

Sheppard & Anor, R v [2010] EWCA Crim 65 (29 January 2010)

PIPEDA Case Summary #2009-010 Report of Findings – Assistant Commissioner recommends Bell Canada inform customers about Deep Packet Inspection

Johnson et al. v. Microsoft Corp. (W.D. Wash., June 2009)

EMI Records & Ors -v- Eircom Ltd,  [2010] IEHC 108

PIPEDA Case Summary #2009-013 Publisher collected and used e-mail addresses for marketing without consent

R. v. Cuttell, 2009 ONCJ 471

Carter v. Connors, 2009 NBQB 317

Warman v. Fournier et al, 2010 ONSC 2126

Boring v Google Inc. 2010 WL 318281 (3rd.Cir.Jan 28, 2010)

PIPEDA Case Summary #2009-008 Report of Findings into the Complaint Filed by CIPPIC against Facebook Inc (July 22, 2009)

Poliquin v. Devon Canada Corporation, 2009 ABCA 216 (Alta.C.A.)

Bill S-4: An Act to amend the Criminal Code (identity theft and related misconduct) (in force Jan 8, 2010)

Bill C-28 Fighting Internet and Wireless Spam Act

BILL C-29 An Act to amend PIPEDA

SOCAN v. Bell Canada, 2010 FCA 123

Telstra Corporation Limited v. Phone Directories Company Pty Ltd. [2010] FCA 44 (8 February 2010)

RecordTV Pte Ltd v MediaCorp TV Singapore Pte Ltd [2009] SGHC 287

Roadshow Films Pty Ltd v  iiNet  Limited (No. 3) [2010] FCA 24 (4 February 2010)

Twentieth Century Fox Film Corporation v. Newzbin Ltd., [2010] EWHC 601 (Ch) (29 March 2010)

Arista Records LLC v Usenet.com Inc. 91 USPQ2d 1744 (S.D.N.Y.2009)

EMI Records & Ors -v- Eircom Ltd, [2010] IEHC 108

Columbia Pictures Industries Inc v Fung  2:06-cv-05578-SVW-JC (C.D. Cal. Dec. 21, 2009)

Arista Records, LLC v Lime Wire Group  2010 WL 1914816 (S.D.N.Y.2010)

Sony BMG  Music Entertainment v Tenenbaum, 2009 WL 4547019 (D.Mass. Dec 7, 2009).

Brein v Mininova. B.V., District Court of Utrecht, 26 August 2009

Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc. (N.D. Cal. March 19, 2010)

Autodesk, Inc v Dassault Systems Solidworks Corp. 2009 WL 5218009 (N.D.Cal. Dec. 31, 2009)

Tiffany (NJ) Inc. v eBay Inc. 600 F.3d 93 (2nd.Cir.2010)

Google France v Louis Vuitton Malletier, Official Journal of the European Union 22.5.2010

Silvaco Data Systems v. Intel Corp. 2010 WL 1713241 (Cal.App. 6 Dist.2010)

DOCS-#1270489-V10-Sookman TCLG 2010 Year in Review