Month: June 2022

Site blocking—aka disabling access to copyright infringing websites and services—continues to gain wider acceptance as a useful tool in the fight against online content piracy. Several recent developments provide a good indication of the increasing acceptance of site blocking orders as a tool to dissuade users from accessing copyright infringing online streaming content. The first is a ruling in early May by the District Court for the Southern District of New York that a issued site blocking order applicable to “all US ISPs”, requiring them to block access to three pirate streaming services that were infringing the copyright of several Israeli film and TV distribution services in the United States (The order was subsequently withdrawn at the request of the plaintiff but nonetheless marks a first in the US). A second is the issuance of the first dynamic site blocking injunction in Canada. And finally, there is the inclusion of measures referencing site blocking in the impending Australia-UK Free Trade Agreement, currently pending ratification, a first for a trade agreement.

The injunctions issued by the New York District court are unremarkable, except for the fact that the orders were applied to all ISPs operating in the United States. As reported by Torrent Freak, despite the failure to pass the Stop Online Piracy Act (SOPA) a decade ago, “a US court has demonstrated that the ability to block sites has been available all along”. The plaintiffs, three Israeli based companies affiliated with cinema investor Moshe Edery, sought statutory damages for copyright infringement and an injunction to prevent future infringement. The targets of the action, Israel-tv.com, Israel.tv and Sdarot.tv, did not contest the proceedings, as is normal in most streaming piracy cases. Torrent Freak reports that the court issued injunction enjoined the defendants from infringing the plaintiffs’ rights, including by streaming, distributing, or otherwise making any of their copyrighted works available to the public. They were also banned from operating their websites from existing domains or any other they might use in the future. But in what is a break-through the court also ordered that;

“all ISPs…and any other ISPs providing services in the United States shall block access to the Website at any domain address known today (including but not limited to those set forth in Exhibit A hereto) or to be used in the future by the Defendants (“Newly-Detected Websites”) by any technological means available on the ISPs’ systems.”

The ruling provided not only for permanent injunctions compelling all US based ISPs to implement site blocking on the three named services, but it also included a “dynamic” element whereby the order applied to any new websites used by the defendants to evade the order.

Injunctive relief in the form of site blocking has been available in the US through the DMCA’s Section 512 (j) for a number of years in cases of copyright infringement but has been seldom used. SOPA, (and its Senate equivalent, the Protect IP Act—PIPA) if passed, would have permitted rights-holders to seek an injunction requiring ISPs to block the domain names of foreign infringing sites. The legislation was attacked by groups, many of them misinformed and egged on by the tech sector, claiming that site blocking legislation would amount to censorship, would make the internet unworkable, and would be in violation of the free speech First Amendment of the US Constitution. The fact that a number of countries, led by Australia and the UK but including over 40 other states, have successfully implemented site blocking measures, has led for renewed calls in the US for a review of SOPA.  Now a US District court has simply exercised its inherent jurisdiction to provide injunctive relief while targeting the order to all ISPs across the US. One wonders why it didn’t happen before. Perhaps no plaintiffs ever sought such an order. Given the precedent, one would expect that one or more ISPs would appeal the ruling. No ISP has done so but there has been legal pushback from Cloudflare and Google allowing big-tech friendly groups like the EFF (Electronic Frontier Foundation) and the CCIA (Computer and Communications Industry Association) to request permission to file amicus briefs opposing the order.

A similar scenario took place in Canada. When the Federal Court issued its first site blocking order back in 2019 (unopposed by any the major ISPs), a small wholesale-based provider, TekSavvy, stepped forward to carry the burden of the appeal, allowing the “usual suspects” such as Silicon Valley-funded groups like the Samuelson-Glushko Canadian Internet Policy & Public Interest Clinic (CIPPIC) at the University of Ottawa, to pile in with intervenor briefs.  It was not clear to me initially why TekSavvy decided to appeal or who funded it, but in the end they lost. (Andy Kaplan-Myrth, TekSavvy’s VP for Regulatory Affairs, subsequently contacted me to clarify that the appeal was self-funded by the company on the basis that they disagree with site blocking in principle, given their role as an ISP). The appeal was dismissed last year by the Federal Court of Appeal. Subsequently several broadcasters of live hockey, a big attraction for Canadians, applied for the country’s first dynamic site blocking injunctions to protect their hockey broadcast rights. Dynamic injunctions have been successfully used in Britain to interrupt pirate feeds of English Premier League football (soccer) broadcasts. In May, the Federal Court granted Canada’s first dynamic blocking order (an order permitting the listing of blocked sites to be updated without needing to go back to the court for additional orders when pirate operators take actions to bypass the blocks). The order, requested by Rogers Media and other companies, is a major breakthrough for Canada.

In the case of the New York site blocking injunction, there was a strange development in which the plaintiffs, having secured the order, subsequently requested that it be suspended. The motivation is unclear. Did someone lobby the plaintiffs (United King Film Distribution, DBS Satellite Services, and Hot Communications) to withdraw the order, fearing that an appeal against the injunction might be dismissed? Were the plaintiffs given some sort of assurances that the pirate feeds would be “dealt with” by ISPs without the need for a court order? Or maybe some content interests were concerned that the appeal would be upheld and set a negative precedent for future site blocking orders in the US? The plaintiffs might have been persuaded that they could achieve their ends through other means, such as working with domain name registrars. Who knows? It is very strange. And now there is an appeal of the order, even though suspended, although not from an ISP but from intermediaries (Cloudflare and Google). Had the order been upheld and implemented, the US would have joined the growing international consensus allowing selective use of site blocking, adjudicated by courts or administrative tribunals, as an important tool in fighting growing online streaming piracy. Even if this order is not reinstated, it will likely encourage others in the US to seek site blocking injunctions in future as a remedy against online piracy. That is no doubt why EFF and CCIA are seeking to intervene.

Moving on to yet another major development on site blocking, for the first time a site blocking commitment will be included in a bilateral trade agreement, giving it the force of international law. Once again, the sharp eyes of the writers at Torrent Freak highlighted the inclusion of Article 15.89 in the Australia-UK Trade Agreement, signed in December 2021. It is currently undergoing the ratification process in both countries. The Agreement is part of the post-Brexit push by the UK government to secure overseas markets for UK goods and services by reaching trade agreements with its major trading partners. Other examples are Britain’s application to join the Comprehensive and Progressive Trans-Pacific Partnership (CPTPP), a UK-New Zealand Trade Agreement and a Trade Continuity Agreement (TCA) with Canada to replace disciplines covering trade with Britain when it was part of the EU. In March of this year Canada and the UK formally launched negotiations toward a new bilateral agreement that both sides hope will be concluded within a year to replace the transitional TCA.

In the case of the UK-Australia Agreement, the Intellectual Property chapter included the following measures under Article 15.89;

“Blocking Orders

1. Each Party shall provide that its civil judicial authorities have the authority to grant an injunction against an ISP within its territory, ordering the ISP to take action to block access to a specific online location, in cases where:

(a) that online location is located outside the territory of that Party; and (b) the services of the ISP are used by a third party to infringe copyright or related rights in the territory of that Party.

2. For greater certainty, nothing in this Article precludes a Party from providing that its judicial authorities may grant an injunction to take action to block access to online locations used to infringe intellectual property rights in circumstances other than those specified in paragraph 1.”

Both countries already routinely use site blocking orders at the request of rights-holders to discourage users from accessing infringing content from offshore streaming sites but the inclusion of this measure in a bilateral trade agreement is a first, encouraged by the UK-based Alliance for Intellectual Property. In a submission to the UK government as part of consultations leading to the Australia-UK Agreement, the Alliance proposed inclusion of site blocking along with several other copyright-related measures. Since both countries have a well-established track record of successfully implementing site blocking injunctive orders, the trade agreement commitment creates no new legal requirements. However, it is significant from the perspective of raising the profile and international acceptability of site-blocking as an anti-piracy measure.

Would such a measure be included within a future Canada-UK agreement for example? It is possible since the courts of both countries have already issued site blocking orders. However, the UK-New Zealand Trade Agreement, concluded just a couple of months after the UK-Australia Agreement, contains no such measure. This may be explained by the lack of any legal precedent at the moment for the issuance of site blocking orders in New Zealand. Would a future UK-US Agreement (if one is ever negotiated) contain such a measure? Again, it is possible depending on the degree to which acceptance of site blocking takes hold in the United States. The New York District Court ruling discussed above may the first concrete sign of broader acceptance of site blocking as a remedy in the US, although a couple of years ago the US Copyright Office studied the issue, without coming to a definitive conclusion. Instead, it basically recommended “more study”.

Nonetheless, there is clearly progress on the site-blocking front, both through the Canadian and US courts and via the medium of trade negotiations. I am convinced that in the end, it will become an uncontroversial measure that will help—but by no means fully resolve—the ongoing challenge of combatting content piracy in the digital age.

© Hugh Stephens, 2022. All Rights Reserved.

This blog post has been updated in the 4th paragraph (related to Canada) to include feedback from TekSavvy as to their motivations for appealing the GoldTV Federal Court ruling, and the source of funding for that appeal.

“Feds to modernize definition of a Canadian film and TV program” screamed the headline. The Canadian Press story, repeated in newspapers across the country early last month, was based on comments by Canadian Heritage Minister Pablo Rodriquez who declared that as part of the process of enacting Bill C-11, now known as the Online Streaming Act, he wants to modernize the definition of Canadian content and is “open to all kinds of suggestions and ideas.” If this is really true, he will get an earful. The Canadian Content rules (Cancon for short) are one of the most complicated and convoluted aspects of Canada’s broadcasting and audio-visual policy, with multiple stakeholders engaged, many of whom have divergent, or at least not fully aligned, interests. It is a policy that is difficult enough to explain, let alone to find the secret formula to untie the Gordian knot that Cancon has become. But first, let me attempt to explain the policy.

Cancon regulations go back to the 1970s and are designed, in theory, to promote Canadian culture and identity through the production of more Canadian content, basically to help offset the cultural tsunami existing next door in the United States. They apply to audio-visual (AV) productions (movies and TV shows), as well as music, but I am restricting my comments here to Cancon regulations applicable to the AV sector. How do the Cancon regulations work, and do they in fact achieve their professed goal? Cancon requirements are implemented in two ways; by requiring that a certain percentage of content broadcast on television stations based in Canada meets minimum Canadian content quotas and by increasing production of Cancon by providing financial subsidies to productions that qualify as Canadian. Some of these funds come from mandatory contributions (a percentage of revenues) imposed on broadcasters and cable distributors by the Broadcasting Act as a condition of licence. The intent of C-11 is to extend the reach of the Broadcasting Act to encompass online streaming services, making them subject to oversight by the broadcast regulator, the CRTC. Among other things, the Bill would empower the CTRC to apply Cancon requirements or other “discoverability” obligations to online streamers, whether they are based in Canada or not. Europe has already taken similar measures. Thus, what qualifies as Cancon is a critical piece of the puzzle. 

Most Canadians would probably think the objective of the Cancon policy is to create more productions that tell Canadian stories–stories written by Canadian writers, stories set in Canada, stories featuring Canadian actors, stories that reflect Canadian realities, and so on. But they would be wrong, as is frequently pointed out by the media when running stories on Canadian content. The current poster child for this anomaly is the Disney animated feature Turning Red, set in Toronto, featuring the story of a young Chinese-Canadian girl growing up in the city, and starring Canadian actor Sandra Oh. It may look and feel Canadian, but it does not qualify as Cancon because it was made by Disney, a non-Canadian entity. Disney financed it and holds the copyright. Nor did the adaptation of Margaret Atwood’s Handmaid’s Tale (filmed in Cambridge, Ont.) or Amazon Prime’s recent series on the Toronto Maple Leafs qualify. This is because there are complex financial, management, creative and intellectual property formulas that govern what is considered Canadian content. On the other hand, some obscure co-production with another country that has no distinguishable Canadian features at all can qualify. The varying requirements to be Cancon-certified are overseen by three different organizations, the Canadian Audio-Visual Certification Office (CAVCO), a unit of the Department of Canadian Heritage, the broadcast regulator, the CRTC, and Telefilm Canada, a government corporation, which certifies treaty co-productions. There are common features but not all certification requirements are the same.

For CAVCO, there are four key elements that are taken into consideration; production control, copyright and distribution rights, creative positions and production spend. The producer must be the central decision maker and must be Canadian. With regard to the intellectual property, unless the film is a treaty co-production, the Canadian production company must be the copyright holder for all commercial exploitation purposes for a minimum of 25 years. As for distribution, the producer must control the initial licensing of all commercial rights and there must be an agreement with a Canadian distributor or a CRTC-licensed broadcaster to show the production in Canada within the first two years of release. Now we come to the creative positions and the (in)famous points test.

A production must achieve a minimum of 6 out of 10 points to be considered Canadian under both CAVCO and CRTC rules. Under this system, the writer gets 2 points; the director gets 2 points. Either the writer or the director must be Canadian. The highest and second highest paid performers each get 1 point and one of these two must be Canadian. For live action productions the other 4 points go to the Director of Photography, the Production Designer; the Music Composer and the Picture Editor. Those people born in Canada who have made it big in Hollywood, and who have retained Canadian citizenship, are invaluable for their points! Some sources of funding, like the Canada Media Fund, require a full 10 points out of 10. Finally, there is the production spend. Seventy-five percent or more of all cost for production services must be payable to Canadians and a similar percentage of all post-production costs must be incurred for services provided in Canada. If a production is CAVCO certified, it qualifies for Cancon tax credits (a straight financial subsidy).

CRTC certification is different and is not quite so stringent. It does not qualify a production for CAVCO Cancon tax credits but does provide access to less generous Production Services Tax Credits. Under CRTC certification a minimum of 6/10 points is required, the producer must be Canadian and 75% of the cost of production must be spent in Canada or on Canadian services. The CRTC also imposes Cancon quotas on Canadian broadcasters, a percentage of on-air time and a percentage of revenues dedicated to Canadian production.

Then there is Telefilm Canada, the agency that administers the co-production agreements that Canada has with more than sixty countries, but, significantly, not the United States. The US does not need co-production agreements. It has Hollywood. Depending on the amount of financing from each of the co-production partners, the copyright ownership, per country budget spend, split of creative and key crew roles, the production activity allocation and the distribution rights are roughly divided according to the respective share of financing from each partner. To the uninitiated Cancon is, (as Winston Churchill famously said when referring to Russia prior to WW2), “a riddle, wrapped in a mystery, inside an enigma”. As I have noted above, qualifying as Cancon is important for two key reasons; to meet regulatory requirements (spending and airtime quotas) for broadcasters–and potentially for online streaming services if the Online Streaming Act passes in its current iteration–and to be able to access financial subsidies, aka tax credits.

That is what Cancon is.[i] What it clearly is not, is a system designed to encourage the telling of Canadian stories or stories by Canadian authors through film and television. The fact that Atwood’s Handmaid’s Tale, Life of Pi written by Canadian author Yann Martel and The English Patient written by Michael Ondaatje did not qualify as Cancon demonstrates this, although there is nothing particularly Canadian about any of these stories. The fact that the films were made without any need for CAVCO tax credits perhaps illustrates that good stories will get made, regardless of the nationality of the author.

So what is a Canadian story? According to retired media executive Richard Stursburg in his recent book The Tangled Garden (A Canadian Cultural Manifesto for the Digital Age), productions funded with Canadian money should look Canadian. He laments the fact that many Canadian productions are “Americanized” to make them more attractive to US audiences, and thus more commercially valuable. The cops don’t look like Mounties, the cityscapes look like any random North American city with all distinguishing Canadian features excluded, even the accents are the same. Contrast this to British productions that are clearly British. There is no mistaking Line of Duty for FBI. I guess part of Canada’s problem is that so much of it looks like parts of the US. And except for the Newfies, it is pretty hard to distinguish a Canadian accent from a middle-of-the-road US accent. The Brits have no such problem. (By the way, have you noticed how villains almost always talk with a British accent—at least Canadians don’t have that cross to bear!)

But does a production have to look Canadian to be Canadian? Not all productions lend themselves to portraying Canada. What about Sci-fi? Do the aliens have to end every second sentence with, eh? And then there are the kids shows. Kids really don’t care much about the national origins, accents or behaviour of the animated characters they are watching, as long as they are entertained. Look at the success of Peppa Pig in North America, plummy British accents and all. And Bugs Bunny’s Brooklyn/Flatbush accent has gone around the woild. Then there is Caillou, the misbehaving little boy that many parents apparently blame for their own kids temper tantrums. Caillou is one of Canada’s contributions to the world of children’s cartoon characters, for better or for worse. His two authors, Christine L’Heureux and Hélène Desputeaux, have spent most of the past two decades legally scratching each other’s eyes out over ownership of the character’s copyright, as I noted in a blog post about a year ago. (“Caillou: Did the Little Boy’s Bad Temper Spill Over to the Copyright Squabble between his two “Mothers”?) The kid’s bad behaviour is apparently contagious.

However, let’s get back to defining Canadian content. One idea is to provide tax credit incentives to shows that look more Canadian or tell Canadian stories, regardless of the source of the money. That is what is done in Britain where there is a broader definition of what is British. There has to be a minimum amount of production done in Britain, as in Canada, but the “Britishness” of stories is a positive factor, and foreign financing is not a disqualifying factor. Thus, the Harry Potter films, made by Warner Bros. qualify. And why not? What is more British than Hogwarts?

This is part of the dilemma that Minister Rodriguez is facing. How to define Cancon, and how to support Canadian producers, while encouraging foreign producers to undertake more production of Canadian stories. It is worth noting that Cancon aside, foreign filmmakers have made Canada one of the prime locations for movie production outside the US, bringing plenty of good jobs to the industry. There is lots of “Foreign Location Shooting” (FLS) taking place in Canada that benefits from Canadian provincial tax credits, but which makes no pretence of representing Canada or Canadian stories in any way. FLS does not seek to access Cancon subsidies. Foreign, mostly US, studios film in Canada because Canada offers tax incentives, skilled crews, good locations and lower costs while being close to US centres. They churn out product for the US market using US stars and Canadian crews. The recent Nordicity study shows that almost twice as much is spent in Canada on FLS than on Cancon productions. This FLS production is good news for those Canadians engaged in the film and TV industry, but apart from building and maintaining production capacity, does nothing to promote Canadian content.

Netflix, for example, is one of the largest producers of content in Canada through its FLS productions but no matter how Canadian it makes its stories, under the present rules its product will not qualify as Cancon because the producer (Netflix) is not Canadian, and the copyright is not held by a Canadian. If the CRTC imposes a “compulsory contribution” of a percentage of revenues generated in Canada on streaming services, the foreign streamers will be helping to finance Cancon production with no guarantee of getting distribution rights, while still possibly having to meet some kind of Cancon quotas (which are more difficult to implement with regard to on-demand streaming services as opposed to linear broadcasters). They could, of course, seek to license productions from the Canadian producers, who are eager to tap into the resources of the big streamers to help finance their own productions. But again, depending on what definition of Cancon emerges from this process, the end result may not look or feel any more Canadian than any other production. As for the Canadian public, a recent poll from Nanos Research indicates that two-thirds of Canadians support or somewhat support foreign streaming services financially supporting the creation of Canadian content in the same way that Canadian broadcasters do. That’s assuming that the Canadian public actually understands how Cancon works and what Cancon is.

What will the solution be? Does Cancon have to be recognizably Canadian? To promote Cancon, does the content have to be produced by Canadians and the copyright held by Canadians? Is the goal to promote jobs and grow the industry or to promote content that strengthens Canadian identity? Is it possible to do all of the above? I don’t have the answers. Minds greater than mine have laboured over this question for years and many recommendations have been brought forth. If the legislation passes, (and I assume it will after review in the Senate now that it has been voted out of Committee in the Commons), it will still take some time for the definition of Cancon to become clear as the Bill requires the CRTC to come up with a definition, after public hearings. However, the CRTC will also be required to take into account guidance provided to it by government which includes, among other things, an obligation to consider copyright ownership and distribution control by Canadians. It is going to be a long process.

It is easy to throw stones at the present system because it is open to question as to whether it has achieved its desired policy goals, although what those policy goals actually are is part of the question. One thing is certain; change is coming. Whether Rodriguez will be able to thread the needle to satisfy Canadian cultural nationalists, the Canadian film industry, the film industry in Canada (not the same thing) as well as the foreign studios and streamers remains to be seen. Cancon is not going to go away. Whether it can be adapted to the realities of the digital age is another question.

© Hugh Stephens, 2022. All Rights Reserved.

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[i] My thanks go to Peter Grant for providing background materials, including a presentation by Doug Barrett and Erin Finlay prepared for a DM@X workshop in March of this year. (Digital Media at the Crossroads)

Sometimes copyright issues are essentially black or white. There was obvious infringement. It was done for commercial gain. It was bad; it shouldn’t have happened. Period. Often, however, things are not so clear and there are various shades of grey involved. This is one of those cases. I will let you be the judge since this is unlikely to go to court, except perhaps the court of public opinion.

While grey may be one colour to describe this case, in actual fact the most appropriate colour is orange. That is the colour that was selected as part of a campaign to bring to public attention the legacy and shameful history of Canada’s Indian residential schools, marked by National Truth and Reconciliation Day (a new public holiday beginning in 2021 on September 30 of each year). The slogan “Every Child Matters” was added in memory of the tens of thousands of children who were sent to these schools, especially the not inconsiderable number who died, often from epidemics that swept the schools owing to poor food and unsanitary conditions. The symbol of a handprint, often in orange, or white or black on orange, has come to be accepted as a symbol of the lost children. Suspected unmarked graves have been located at many residential schools adding to the poignancy of the slogan.

It is in this context that our copyright case arises. Michelle Stoney is a well-known and respected Gitxsan artist from Hazelton, in northern British Columbia (BC). She is a graduate of the Emily Carr University of Art and Design in Vancouver. In 2019 she won the Crabtree McLennan Emerging Artist Award awarded by the BC Achievement Foundation. She sells her artwork, which is based on traditional Gitxsan designs, through her website, via Etsy, and other online outlets. One of her more prominent works is a human hand in the form of a Gitxsan design (the image at the top of this blog post, on the right). That is the background on Michelle.

Now, like a novelist starting a different thread in a story, a thread that will eventually join the others as the story reaches its climax, I am going to change gears, and talk about lacrosse. Lacrosse is North America’s oldest sport. A form of outdoor lacrosse was played by native tribes in contests that sometimes lasted for days in the St. Lawrence Valley as early as the 1600s, when Europeans first wrote about it, but it probably pre-dates European contact. In the 1860s the rules of field lacrosse were codified, and it became known as Canada’s national game. This was an unofficial designation as it competed for this title with ice hockey. (In the 1990s the Canadian Parliament adopted a motion naming lacrosse as Canada’s official “summer game” and ice hockey as its “winter game”.) Many of the players then and today came from the indigenous (First Nations) community. In the 1930s box lacrosse was developed as a sport that could be played in unused hockey arenas during the summer, and box lacrosse is the one form of the game that has enjoyed commercial success as a professional sport. In the 1990s the National Lacrosse League (NLL) was established in the US. Today, it is based in Philadelphia and has 14 teams. Nine of these are in the US and five in Canada. The vast majority of the players are Canadian, many of them from First Nations.  In short, there is a strong connection between the sport and First Nations communities.

This is where I bring the two strands of the story together. The CBC recently reported that Michelle Stoney had learned that the NLL had copied her Gitxsan hand design and was using it on orange tee-shirts that it was selling to raise funds for causes associated with those who attended former Indian residential schools. The NLL website promoted the tee-shirts as follows;

“Join the National Lacrosse League in raising awareness about Native American residential and boarding schools, which were created to isolate indigenous children from the influence of their culture in order to assimilate them. This Every Child Matters warm up shirt was designed by Dave Sowden, a Halifax Thunderbirds employee of Indigenous descent, and is a replica of the shirt worn by NLL players during week six of the 2021-22 season. Your purchase tells us that you support our NLL Unites initiative in support of the Every Child Matters movement and the NLL will donate directly to the Gord Downie & Chanie Wenjack Fund and the National Native American Boarding School Healing Coalition.” (the Gord Downie & Chanie Wenjack Fund aims to build cultural understanding and create a path toward reconciliation between Indigenous and non-Indigenous peoples.)

You couldn’t find a better cause. The initiative appears to have been started by the Halifax Thunderbirds NLL team. Its owner, Curt Styres, is the only owner in the league of native descent; the team’s captain, Cody Jamieson is likewise from a First Nations family. According to reporting in a Halifax university journal, the Thunderbirds’ involvement began with orange jerseys with stylized handprints on them. The handprints were provided by Donna Longboat, Jamieson’s grandmother and a residential school survivor and Vera Styres, Curt Styres’ mother, also a residential school survivor.

So how did we go from Donna Longboat’s and Vera Styres’ handprints to Michelle Stoney’s design? The path is not clear. According to the CBC report, Stoney’s original design was created for Orange Shirt Day on Sept. 30, 2020. It comprises mountains and trees to represent the Gitxsan Nation, the flowers to represent children, and the feathers to represent the children who were lost in residential schools. When Stoney saw the lacrosse adaptation on the Facebook page of the Vancouver Warriors lacrosse team, she says she immediately recognized her design. While a hand is a hand, the lacrosse version also features stylized fingers based on feathers, similar or identical to the feathered fingers on Stoney’s artwork. She says it appears that the designer of the NLL version “flipped” her work by tracing the hand and adding the words “Every Child Matters” to replace the mountains, trees and flowers on the palm of her piece. I am guessing that this is pretty easy to do with design software.

Stoney is not making this about financial compensation, although she earns her living through her art. Rather, she says she is okay with others using her creative works, such as the Indigenous feather design, as long as they seek her permission. It’s about moral rights. And she wants an apology. The Warriors removed the design from their webpage, and said they are investigating. I contacted the Thunderbirds for comment, but none was forthcoming.

This episode, which has all the hallmarks of unintended consequences, raises two issues; the appropriation of native designs for commercial purposes, about which I have written in the past, (“Copyright, Folklore and Traditional Native Culture”) and whether adapting the essential elements of a design into a new work is a fair dealing (or fair use in the United States), not constituting an infringement because a new work has been created. Michelle is not the only native artist to have had work copied without permission or compensation. Often overseas vendors simply pick up and copy what they perceive will be a popular design and then sell it on Etsy, Facebook or Amazon. Apart from blatant copyright infringement, there is the cultural appropriation aspect to consider. This latter issue raises many questions. Are only native artists allowed to create native designs? Who qualifies as an indigenous artist? Do you have to hold a status card or simply self-identify? It can get very messy and complicated very quickly. The main message, I think, is to show respect for the artist and their culture and don’t infringe.

Which brings me to the second point. Is the work produced by the Halifax Thunderbirds an infringement? It would take a court ruling to determine that, and that is not going to happen. However, there are a couple of factors to consider. A copy does not have to be an exact copy to be an infringement. There is currently a high-profile case wending its way through the US judicial process (Warhol v Goldsmith). In this case, in 1984 artist Andy Warhol was commissioned to create an image of the musician Prince. Warhol painted a series of silkscreen images on canvas, based on a photograph taken by professional photographer Lynn Goldsmith. (The likeness is almost identical). Upon publication of one of the portraits after Prince’s death in 2016, Goldsmith saw the work and threatened to sue for infringement. In response, the Warhol Foundation launched its own suit seeking a declaration of non-infringement. The Foundation won round one. Goldsmith appealed and won round two. Now it is going to the Supreme Court of the United States for adjudication.

How different does a derivative work have to be to avoid infringement? In the case of Warhol v Goldsmith, the case hinges on the US legal doctrine of “transformation”. Is the derivative work sufficiently different from the original? Has the original been transformed into something new? Although in the case of Canada, there is no transformation doctrine per se, a change of medium will be a factor in favour of non-infringement. In the “Every Child Matters” hand design case there is no change of medium. However, there is still another question as to whether the design produced by the Thunderbirds qualifies for separate copyright in its own right. It’s possible.

In trying to determine whether the Thunderbirds’ depiction of the hand design infringed Stoney’s copyright, we can turn to the Canadian Copyright Act. Section 3 (1) states that “copyright, in relation to a work, means the sole right to produce or reproduce the work or any substantial part thereof in any material form whatever…” (emphasis added). So, the work that Michelle Stoney created and any substantial part of it (substantiality is subjective and is normally decided on a case-by-case basis) belongs to her. On the other hand (and in copyright there is always an “other hand”), Section 32.2 (1) states;

“It is not an infringement of copyright (a) for an author of an artistic work who is not the owner of the copyright in the work to use any mould, cast, sketch, plan, model or study made by the author for the purpose of the work, if the author does not thereby repeat or imitate the main design of the work;”

Did the Thunderbirds’ author do more than simply imitate the main design of the work? If he did base his design on Michelle Stoney’s work, did he use a “substantial” part of it or was the use insubstantial? How much originality did the artist who created the lacrosse tee-shirt design put into it, and is that artist then also entitled to assert copyright for that work (Image above—left side)? According to Canadian jurisprudence, a “mere copyist” has no right to independent copyright but, according to this legal blog, “a work which has been substantively derived from pre-existing material will be entitled to copyright if sufficient time, effort, labour and skill have been bestowed”.

That is indeed the question. Learned copyright counsel, judges and law professors will all no doubt have opinions on this question. Since I am none of the above, I won’t hazard a guess. I will say that while it is clear that anyone can legally create a design based on a hand, or a design using a hand with feathers for fingers (since copyright protects only the expression of an idea, not the idea itself), to me the finger feather designs in the second work (created by the Thunderbird organization) look remarkably similar to Michelle Stoney’s design, right down to the smallest detail such as the shapes and regularity of the spaces separating the parts of each feather-finger. It is hard not to draw the conclusion that her design was the basis on which the second work was created. However, is the second work simply a partial copy or is it sufficiently original to be a work in its own right? You be the judge.

If there is a lesson here, it is that it’s always best to communicate with an “author” (which could be an artist, composer, writer) if you are going to adapt or borrow from their work. I understand that this is what finally happened, retrospectively. Curt Styres reached out to Michelle Stoney, apologized, and asked if she would design something for him in future.

At the end of the day both Michelle Stoney and Curt Styres had the same broad objectives in mind; to highlight the plight of survivors of Indian residential schools and to contribute to reconciliation as a way of moving forward. It is a shame that the dispute had to occur, but perhaps it is a “teachable moment” about how careful we all need to be with the images that are so ubiquitous and easy to access on the internet. It is all too easy to succumb to the temptation to do what is quick and easy. Respecting the original author/artist is a good lesson for all of us, and I am glad that this story had a happy ending.

© Hugh Stephens 2022. All Rights Reserved.

O Hypocrisy, know ye no bounds? That was the thought that flashed into my head when the University of Toronto (U of T) announced that it was suing Easy Group, a Toronto based tutorial service catering mainly to international students, for copyright infringement. According to a bulletin issued by the university, the institution–in concert with three of its professors (who actually hold the copyright on materials they have produced or compiled)–has filed a lawsuit against Easy Group (aka Easy EDU) alleging it routinely copies, without authorization, lecture slides, course syllabuses (or is it syllabi?), tests and exams and sells them in “course-packs” to students on its website in violation of the Copyright Act. Easy Group apparently also offers university course materials from classes given at other Canadian universities as well, including the University of Waterloo, York, McGill, UBC, and the University of Alberta. U of T is seeking damages and disgorgement of profits or statutory damages in lieu, as well as punitive and exemplary damages as a result of Easy Groups “wilful and malicious” disregard for the university’s and the professor’s exclusive economic and moral rights, return of the copyright infringing materials and a court-issued injunction to stop future infringement.

Both The Varsity and Globe and Mail have reported on the case, largely echoing the U of T statement. What neither mentioned was the irony, one might say hypocrisy, of a major Canadian post-secondary institution suing an educational tutorial service for copyright infringement when U of T, along with most other Canadian post-secondary institutions, have been using, without authorization, educational materials—books, articles, etc—for more than a decade based on the argument that use of such materials for educational purposes is an allowed fair dealing exception under the Copyright Act (subject to certain limitations). Education was added as an exception when the Copyright Act was “updated” in 2012. Most universities promptly used the exception as the pretext to cease licensing materials from Access Copyright, the collective representing writers and publishers in Canada. Until then, licensing had provided a means for universities to copy specified amounts of material held in Access Copyright’s repertoire, by paying a set amount per student per year. Where the amount could not be agreed by negotiation, the Copyright Board of Canada was called on to review evidence regarding the amount of copying taking place and set a tariff that would be applied to both the provider (Access Copyright) and the users (universities).

When York University objected to the tariff fixed by the Copyright Board of Canada and refused to pay it, the stage was set for years of expensive litigation. Access Copyright won round one at the Federal Court. York appealed and won a partial victory at the Federal Court of Appeal (FCA), although its claim of fair dealing was not upheld. The FCA ruled that the Copyright Board’s tariff was not binding on York. Both sides then appealed to the Supreme Court and last summer the Court upheld the FCA’s decision on the non-binding nature of the Copyright Board’s tariff, effectively gutting Canada’s collective licensing system. The legal process has taken almost a decade. Meanwhile Canada’s writers and educational publishing sector has been deprived of approximately $200 million in revenues, with the inevitable result that educational publishing in Canada is on life support. Have the “savings” been passed on to students? Dream on.

The universities routinely help themselves, without authorization and without payment, to material published for the educational market to compile course-packs—which they sell to students—arguing that they are exercising on behalf of students their right to access materials under the rubric of fair dealing for private study and educational purposes. The fact that the universities and their professors claim to be exercising the right on behalf of individual students provides the pretext to copy large amounts of materials, well in excess of reasonable guidelines. While Access used to license one chapter in a book, or one article in a publication, now the universities have unilaterally decided that such use falls under fair dealing. Not only that, but different elements of a book or publication are often used by different teachers for different courses, with the result that the entire work, or most of it, is being exploited without any licence permitting the use. The fact that U of T is now suing an educational tutoring service, admittedly one that is operated for commercial gain, for doing essentially the same thing, is ironic. It is even possible that some of the course-packs that Easy Group is accused of infringing contain some content from Access Copyright’s repertoire that the universities have decided they can use without authorization.

One wonders whether Easy Group could make the argument that it was exercising the fair dealing rights of its clients, who are students, in much the same way that the university sector claims that it is using unlicensed materials for the benefit of students, not itself. That would probably be a stretch and we are not likely to find out whether such a defence would prevail, since a tutorial services, even one as apparently successful as Easy Group, is not likely to mount a court challenge in the same way that the educational sector engaged in a well-funded tooth and nail legal fight for over a decade with Canada’s writers and publishers. More likely is they will strike some kind of agreement with U of T to cease using these materials. If they do not defend the case, they risk a summary judgment and a finding of what could be crippling statutory damages.

Easy Group was founded in 2014 by U of T graduate Jacky Zhang. It’s self-proclaimed guiding principles are “integrity, inclusivity and innovation”. It offers five services; tutoring and cultural integration, career counselling, college counselling, student services (assistance with housing, transportation, visa applications, tax regulations etc.) and reference services for educational resources. It appears to cater largely to international students. According to its website, which is in English and Chinese, it has 300,000 clients and has offices in Canada and China. Its Canadian office is on Bloor Street adjacent to U of T’s main campus. In other words, it is not some shadowy web presence. It will have to deal with these accusations, which in the past it has apparently ignored. Its recalcitrance helps explain the reason for the university going to court.

I am not defending Easy Group’s practices, but one cannot help but wonder if the U of T administration feels even the least bit uncomfortable coming down hard on a student tutorial service for infringing its copyrights when it has been justifying its own unauthorized use of the copyright- protected works of others for the past decade by hiding behind the education fair dealing exception. U of T claims to be concerned about the potential impact on its students of using these unauthorized materials, even pointing to a student that was suspended for violation of the university’s academic integrity policies. But universities in Canada routinely serve up unauthorized copies of materials to their students in course-packs containing materials lifted from educational publications.

The objective of higher education is to help students learn and succeed in their studies. To do this we need professors who create compelling content and teach it well, we need institutions that provide the structure and framework to deliver that knowledge, and we need creators of knowledge—writers, publishers, researchers—to produce the teaching materials. In other words, we need to rely on the full ecosystem that disseminates and advances learning—damage one part and you damage it all. In its Statement of Claim, U of T makes reference to Easy Group’s “disregard for the intellectual property rights of others”, and the “serious and irreparable harm and damage” suffered by the university and its professors from these infringements. But surely what is sauce for the goose is sauce for the gander. When it came time to respect the intellectual property rights of writers and publishers, U of T and other universities, abetted by faulty legislation, have been more than willing to take a free ride on creators of educational content by invoking a flawed fair dealing exception that has driven a spike through the previously balanced copyright system. If any group has suffered “serious and irreparable harm and damage”, it is Canada’s writers and educational publishers. The smell of U of T’s hypocrisy permeates the air.

It is time for Parliament to rectify its error and close the education fair dealing loophole to restore some balance into the market for educational materials. The solution is quite straightforward; amend the Act so that educational fair dealing does not apply to educational institutions where a work is commercially available, as was recommended by the Standing Committee on Heritage in 2019. There were cryptic references in the recent Budget document to the effect that the government will work to ensure a “ensure a sustainable education publishing industry including fair remuneration for creators and copyright holders…” through the Copyright Act.

Maybe that means this major breach in the system will be closed by amending the Copyright Act. But when? In the meantime, the post-secondary educational sector is using that same law to defend its interests against alleged infringement. U of T no doubt does not see this as hypocrisy; why shouldn’t it defend its rights and the rights of its professors? But that decision would have been easier to understand if the university sector generally had not fought against writers and publishers—creators who share the same goals as they do—by refusing to license and pay for educational materials they use in the daily instruction of their student body.

© Hugh Stephens, 2022. All Rights Reserved