The Copyright Needle in the Budget Haystack (And Why Requiring Registration for Copyright Extension is a Really Bad Idea)

There it was! The copyright needle in the budget haystack. As plain as day–buried on p. 274 of Canadian Finance Minister Chrystia Freeland’s 280 page 2022 budget under “Other Legislative Measures” along with a grab-bag of about 40 other measures.  These ranged from legislation to enable Canada’s participation in the Lunar Gateway, to Criminal Code amendments to ban the communication of statements, other than in private conversation, that willfully promote antisemitism by condoning, denying or downplaying the Holocaust, to dealing with clean drinking water and better infrastructure for First Nations communities by repealing the Safe Drinking Water for First Nations Act (?), and so on. Almost four dozen unrelated ornaments hung on the budget Christmas tree. Item number 5 was labelled “Amendments to the Copyright Act”.

Why would an amendment to the Copyright Act be buried in the budget (along with the other assorted seemingly random legislative measures)? Because it’s a convenient way to pass legislation, that’s why. You scoop up all the legislative loose ends and you append them to the budget bill, and if the budget passes, and it will, the other attached pieces of legislation pass as well. Given that the Liberal government is in a minority situation, yet has just signed a “confidence and supply agreement” with the opposition New Democratic Party (NDP) by which the New Democrats will support the government in confidence votes for the next three years provided that the Liberals add some social programs advocated for by the NDP, like a dental plan and a pharmacare plan, to their “to do” list, then bundling loose ends and even some potentially controversial legislative items into a budget bill is a good way of ensuring that these legislative amendments become law with as little fuss and scrutiny as possible.

This is also a well-known tactic in the US Congress where unrelated pieces of legislation get attached to “must-pass” money bills on a regular basis. That is how the CASE Act, a worthy piece of legislation that had been blocked by just one Senator, was passed, as I wrote last year (“Making Sausage: How the CASE Act Finally Became Law”). That legislation created a Copyright Claims Board within the US Copyright Office, a sort of “small claims court” for copyright infringements. The CASE Act will help small creators bring infringement claims without having to resort to expensive litigation but had been blocked by Sen. Rod Wyden of Oregon. However, it was added to the 5,593 page, $1.4 trillion Consolidated Appropriations Bill, 2021 that funded the COVID relief program and kept the US government functioning. When that Bill finally passed the US Congress, so did the CASE Act, and it is now part of the law of the land. So good things can happen from using this procedure. Sometimes you just “gotta do what you gotta do”.

But back to the Canadian budget, introduced on April 7. With regard to amendments to the Copyright Act that are to be incorporated into the Budget Implementation Bill when it is introduced, (probably in May), the budget document had this to say;

In Budget 2022, the government proposes to introduce amendments to the Copyright Act to extend the general term of copyright protection from 50 to 70 years after the life of the author as agreed under the Canada-United States-Mexico Agreement.

The government is committed to ensuring that the Copyright Act protects all creators and copyright holders. As such, the government will also work to ensure a sustainable educational publishing industry, including fair remuneration for creators and copyright holders, as well as a modern and innovative marketplace that can efficiently serve copyright users.”

Let’s unpack the first part of this statement. There are two elements–what has to happen, and what some anti-copyright elements hope will happen. Extending the term of copyright protection is required to implement Canadian commitments made during the renegotiation of NAFTA, culminating in the NAFTA 2.0 agreement, known as the USMCA (or CUSMA in Canada). While it is a given that this will happen, it is still not completely clear as to how it will be implemented. According to Article 20.89.4 (c) of the USMCA/CUSMA, Canada has 2.5 years from the date of entry into force of the USMCA/CUSMA, which was July 1, 2020, to implement the provision. In other words, it needs to be enacted into legislation by the end of 2022.

Some opponents of term extension, notably University of Ottawa law professor and prolific blogger Michael Geist, have argued that even though Canada has a legal obligation to extend its copyright term, it can do so by instituting a registration requirement for rights-holders if they want to benefit from the added period of protection. In effect this proposal, which was picked up by one of two Parliamentary committees that reviewed the Copyright Act back in 2019, would impose an additional registration process (copyright renewal) on a rights-holder as a condition for gaining access to the additional 20 years of protection. It would put in place a gateway, a hurdle, an additional bureaucratic barrier if you will, as part of Canada’s implementation of its commitment. The objective is to make it more difficult for rights-holders in Canada to access the same degree of protection enjoyed by rights-holders in similar circumstances in the US, EU, UK, Australia, Japan and many other countries. In other words, for those who oppose extending Canada’s copyright term, they grudgingly concede that extension will happen but their intent seems to be to make it as difficult as possible for rights-holders to take advantage of it.

Imposing a copyright renewal registration requirement is an exceedingly bad idea, and one that was not endorsed by the other Parliamentary Committee (the Heritage Committee) that also undertook copyright review. It would impose an additional and unnecessary burden on rights-holders to be able to access the full term of protection they are entitled to for their works but worse, it would create uncertainty and cause confusion for users who would find it difficult, costly and time-consuming to verify whether or not a work fell under the “life plus 50” (life of the author plus 50 years) or the new “life plus 70” term. There is plenty of evidence to demonstrate the downsides of a copyright renewal scheme, using the example of what happened in the United States.

For many years, determining whether or not a work was still protected by copyright in the US was an unnecessarily complex and difficult task owing to the existence of a renewal requirement in US law. And for older works it remains complicated. Under the 1909 US Copyright Act, works copyrighted in the United States prior to January 1, 1978, were originally subject to two consecutive copyright terms, each of 28 years duration. The first term was granted upon registration of copyright, but the second term required an additional registration and renewal after the expiration of the first 28 year term. After the Act was modified in 1976, the second renewal period was upped to 47 years, for a total term of protection of 75 years, assuming renewal was applied for.

A problem was that many rights-holders neglected to renew their copyright. (Anti copyright advocates would no doubt say this was a good thing, but it complicated matters for users who found it difficult to determine if a work was in the public domain or still protected). Failure to renew applied not just to authors of books, but also to rights-holders for movies and other creative works. There are examples of where some of the rights in a movie were renewed, e.g. the screenplay, whereas other elements were not, leading to more confusion. Apart from the injustice occurring from an inadvertent oversight in complying with a somewhat arcane law that deprived a rights-holder (which could be the estate or heirs of the original author) of the economic benefits of copyright, users found it difficult to determine whether a work was still covered. To know for certain whether a work had been renewed, and therefore was still protected by copyright, a user has to search the Catalogue of Copyright Entries maintained by the US Copyright Office.

A good example of the problems caused by imposition of a copyright renewal requirement is illustrated by the FAQ answers provided by this online library website in the US in response to the question, “How can I tell whether a copyright was renewed?”;

One easy way to check, sometimes, is just to see if there was any edition published more than 28 years after the original edition, and see if there’s a renewal notice in that newer edition. This doesn’t always work– a lot of books simply don’t get reprinted– but if there is such an edition, it can be an easy check to make.

Another way that doesn’t involve an exhaustive copyright record search is to write to the author, or their agent or estate, or to the last publisher of the book, and see if they can tell you whether the book’s copyright was renewed…It’s also possible to do a search yourself of the copyright records. For 1978 onward, they’re online at the Copyright Office…

Copyright records prior to 1978 can also be found in print and microform at the Library of Congress, and at other major libraries around the country, including many Federal Depository Libraries…Since a copyright renewal has to be sometime in the 28th year, you’d look for renewals in the records for the original copyright date plus 27 years and the original date plus 28 years. So if the copyright was originally 1941, you’d look at the volumes for 1968 and 1969 to see if there was a renewal…

You can also arrange for the Copyright Office to do the search for you. There’s a form you can fill out and send to them, and they’ll eventually let you know if they find any renewal records, and if so, what they say. This has gotten rather expensive as of late; as of October 2019, the fees amount to $200 per hour (with a 2-hour minimum) for them to search their files for you…”

Simple, eh? This costly and unnecessary step, requiring an additional bureaucracy, is what will happen if Canada unwisely adopts a copyright renewal requirement as part of the process of extending its copyright term. No other country, to my knowledge, has ever imposed such a barrier when it extended its term of protection. (More than 80 countries worldwide have “life plus 70” as their term, another good reason for Canada to join the majority of its trading partners and harmonize its copyright term with theirs, benefiting Canadian creators in the process). As for the US, given the problems presented by copyright renewal, it abolished this system in 1992 when it passed the Copyright Amendments Act, making renewal automatic. The renewal system was messy and complicated as you can see by this US Copyright Office interpretive bulletin. Today in the United States, (indeed for all works created since 1978) the situation is much more straightforward for new works. Authors get a period of protection of “life plus 70” with no renewal or registration requirement. It is beyond comprehension that Canada would want to go backward and institute a renewal requirement.

A further barrier to making the full term of “life plus 70” conditional on a renewal registration is Canada’s membership in the Berne Convention, the international copyright convention to which almost all countries belong. Berne requires a minimum copyright term of life plus 50 years (with no registration requirement) but allows members to apply a longer term if they wish. Members applying a longer term may offer that longer term to rights-holders in all Berne Convention countries or they may limit the benefits of the longer term to nationals only of those countries that offer a reciprocal term of protection. For this reason, Canadian rights-holders will gain the benefit of an extra period of protection in the EU once Canada extends its term and brings it into alignment with the period of protection granted in EU member states.

If Canada instituted a renewal registration requirement to gain access to the additional twenty years of protection, this would almost certainly be a violation of the Berne Convention principle that protection must not be conditional upon compliance with any formality, i.e. the Berne cardinal principle of “automatic” protection. (No-one knows for sure if it would be a Berne violation because no state has ever been dumb enough to shoot itself in the foot by imposing one). However, it has been argued by those opposed to extending the term of protection that since Berne only requires a protection period of “life plus 50”, a registration requirement for the additional period would not be inconsistent with the Convention. The only close parallel we have suggests that this is not true.

Based on the precedent of what happened when the US finally joined Berne in 1989, it is possible that Canada could technically require Canadian rights-holders to register for the additional period but would still have to extend the benefit of the full “life plus 70” term to rights-holders from other Berne Convention countries without requiring them to register, even as it subjects Canadians to this restrictive measure. This is what happened when the United States joined Berne. For many years, the US maintained a copyright registration system that was incompatible with Berne’s principles, which was one of the reasons it declined to join the Convention. When the US finally decided it needed to join Berne, it was required to abolish its compulsory registration requirement used to establish copyright but nonetheless retained voluntary registration in cases where rights-holders wished to bring infringement cases. However, because of Berne, the US could not apply this additional registration requirement to non-US rights holders. This has resulted in the rather bizarre situation where a US rights-holder has to register copyright in order to bring an infringement action in the US but a non-US rights-holder is exempted from doing so. In this instance, foreigners get “better than national treatment” in the United States. Were Canada to impose registration requirements, it would be disadvantaging Canadian rights-holders compared to non-Canadians.

Dr. Geist ignores all the drawbacks and pitfalls of a renewal registration regime and instead repeats a number of tired and in some cases debunked arguments about term extension imposing a “hidden tax on consumers”. It is no more a tax than an environmental recycling fee is a tax. There are probably some instances where consumers are required to pay more for a book that is protected by copyright than one in the public domain, although the evidence of this is inconclusive. Public domain works are often no cheaper than works still under copyright. Just as there are valid reasons why consumers pay more for products that come in recyclable containers, so too there may be valid reasons why a book under copyright carries a higher retail price than a public domain work. One of these may be royalties paid to the author. Pirated movies and streaming services also offer lower costs to consumers than legitimate services; it doesn’t follow that we should compare prices for pirate services with those in which distributors license content legally. I don’t have the time and space in this blog post to deal with all the misleading claims about the supposed costs of term extension, but I covered many of them in this earlier posting, “Copyright Term Extension in Canada: Facts versus “Fake News”.

So, in the end, what is the government likely to do? Hopefully it will take the sensible option of extending Canada’s copyright term of protection in a simple, straightforward, and transparent way, avoiding the costly and unnecessary creation of a copyright renewal registration process. Given the signals that were sent during a consultation paper on the extension issue in February of 2021, it will provide some means to address the question of “orphan works” and “out of commerce” works that is of concern to the “LAM” (Libraries, Archives and Museums) sector, but will sensibly ignore the copyright minimalists campaign to complicate the copyright system for both rights-holders and users alike by adding a registration requirement. This common sense outcome would indeed make the search for that copyright needle worth the effort.  

© Hugh Stephens 2022. All Rights Reserved.

Flagging Copyright Concerns: Vexillologists Take Note

Credit: Author

People who are really into flags are known as vexillologists, a rather specialized field that studies the history, symbolism and usage of flags. If the papers offered at the periodic International Congress of Vexillology are any guide, then many things attract the attention of flag scholars, such as “The Flags of Bulgarian Municipalities”, “The Flags of Genghis Khan”, or “The History of the Flag of Gambia”, but copyright does not seem to be one of them. Yet copyright has a vexillological angle, one that just cost the Australian government over $20 million dollars. This was the sum paid to Aboriginal artist Harold Thomas to acquire the copyright to Mr. Thomas’ design for what has become known as the “Aboriginal Flag”.

Thomas designed the flag in 1970 and the black, red and gold flag was widely adopted by Aboriginal groups. In 1995 it was given “national flag” status by the Australian government, but Australia did not “own” the flag, at least not until now. Two years later, in 1997, an Australian court affirmed that Thomas was the copyright holder for the flag design. Thomas did not claim the copyright on the flag until after the Australian government had made it official under the Flags Act, and he was challenged by two other purported creators. However, the judgement was in his favour, and ever since there has been uncertainty over who can use it, and in what form. In 1998, after winning the judgement, Thomas granted a licence to a company called Flags 2000, giving that company the right to reproduce and manufacture the flag, and in November 2018 he licensed the design to a non-indigenous company, WAM Clothing.

That licence gave WAM the exclusive right to reproduce the flag design on clothing, and in physical and digital media. It had been traditional for major Australian rules and rugby league teams in Australia to feature the flag on football uniforms during events honoring Aboriginal athletes, but WAM issued cease and desist orders unless they received royalties, arousing considerable controversy. Non-profits who were selling tee-shirts with the flag on it were also sent letters demanding payment. WAM was made out to be the bad guys, but they were protecting the rights they had paid for. However, it didn’t help that WAM’s part-owner, a non-Aboriginal, had been fined $2.3 million for selling fake Aboriginal art through a previous company.

The fundamental problem was that it is highly unusual to have a flag that is regarded as a national symbol be subject to private copyright. A compulsory licence was proposed, and hearings were held. However, the Australian Senate concluded that government action to, in effect, confiscate Thomas’ copyright would result in perpetuating oppression and injustice against Aboriginal peoples.  The solution was to negotiate with Thomas to acquire the rights, including extinguishing rights sold to licensees such as WAM. Thomas will retain the moral rights.

As reported in Lexology, “As part of the deal, Flagworld will keep its exclusive licence to be able to manufacture Aboriginal flags for commercial use, however the government has confirmed that Flagworld would not stop people from making their own flags for personal use…The Government has confirmed that all future royalties the Commonwealth receives from Flagworld’s sale of the flag will be put towards the ongoing work of NAIDOC.” (National Aborigines and Islanders Day Observance Committee).

In addition to buying out the rights to the flag, the Australian government agreed to establish an annual $100,000 scholarship named for Thomas to help Indigenous students develop skills in leadership, and to create an online history and education portal for the flag. So, it seems, that problem has been solved for the people of Australia, and Harold Thomas will be a happy man. But Thomas’ flag is not the only Indigenous flag widely flown.

In North America the “Mohawk Warrior” flag has flown since the mid-1970s at various Indigenous-related events. The flag, designed by Indigenous artist Karoniaktajeh Louis Hall, was first hoisted when a group of Mohawks occupied land in the Adirondacks in New York State. It became widely known as a native symbol during the so-called “Oka Crisis”, a standoff between the Mohawk community of Kanesatake and Canadian police and troops in July of 1990. Since then it has been flown at many protest meetings and occupations involving different native groups (not just Mohawks), as well as at cultural gatherings and activities. If you want one of these flags they are available from Amazon, Flagmart, Etsy and so on. Or you can get the design on hoodies, tee-shirts or facemasks. The big difference between the Mohawk Warrior flag and Harold Thomas’ aboriginal design in Australia is that unlike the “official” aboriginal flag, the unofficial Mohawk flag is available for anyone to use through a Creative Commons “Attribution-Share Alike 3.0 Unported license.” That means any user is free to share, i.e. copy and redistribute the material in any medium or format and to adapt by remixing, transforming or building upon the material for any purpose, even commercially.”

When it comes to the use of official flags, copyright generally does not apply because of the age of the flag designs, putting them in the public domain. In the US, federal government works, including Old Glory, cannot be copyrighted. However, the flag may be protected by other means. For example, flags can be protected under Article 6ter of the Paris Convention for the Protection of Industrial Property of 1883 (1967 Stockholm Act). The purpose of this article is to prohibit the registration and use of trademarks that are identical or similar to notified official emblems. In Canada, the Canadian flag is also protected through trademark registration, prohibiting commercial use without permission.

In British Columbia, where I reside, there is a provincial flag adopted in 1960. According to the BC government’s website, the flag is protected by Crown copyright (although since Crown copyright in Canada only lasts for 50 years from the date of creation, it would seem that the copyright on the flag must have expired in 2010). The BC government makes digital artwork files available for download, but the user must not alter the aspect ratio of the flag, use part of the flag, or adjust the image in any way. And just in case you weren’t thinking, “The provincial flag should never be used as a tablecloth, carpet or seat cover, but instead be hung in a place of honour.” What about as a window covering, which I have seen many times in lieu of curtains? Maybe that is a “place of honour”?

And then there is the Vancouver Island flag, featured with some others in the image at the top of this blog post. I took the photo at a local marina. (It is the blue ensign, second from the right). This flag is a historical curiosity and depending on whether it is considered an official pennant or not, it could be long out of copyright protection or potentially still covered. In 1865, the British Admiralty authorized British colonies with naval assets to commission their own flags by superimposing (defacing, in vexillological terms) the seal of the colony on the fly leaf of the blue ensign. This was the pattern used for British colonial flags in many territories in Africa, the West Indies and the South Pacific and is still used for the state flags of the various Australian states. While in theory such a flag could have been produced for the Crown Colony of Vancouver Island, which was established in 1849, in August of 1866 Vancouver Island was merged with the Colony of British Columbia. A few years later, in 1871, the combined colony entered Canada as its sixth province. If such a flag had been produced for Vancouver Island in 1865-66, its Crown copyright would have long since expired. However, the flag flown today was conjured up by a local vexillologist, Michael Halleran, in 1988, based on the 19th century British Admiralty regulations. Halleran had it produced in a local flag shop, and it has become increasingly popular, as a novelty. While Halleran says he does not claim copyright in the flag, that does not necessarily mean the flag is in the public domain.

Flags have been used to make political statements throughout history, and the present is no exception. The “truckers’ convoy”, (I could call it a “freedom convoy” but that would be a misnomer, unless you define “freedom” to mean that I can do whatever I want whenever I want without any regard for the impact of my actions on others), which for three weeks from late January to mid-February occupied the streets of Ottawa right in front of the Parliament Buildings, adopted several flags to get its point across. Apart from Canadian flags festooned from every 18-wheeler and pick up truck (to demonstrate their “patriotism”, you see), this rag-tag bunch managed to round up Confederate flags, US Gadsden libertarian “Don’t Tread on Me” flags (with a Canadian variation, converting the snake into a Canada goose), a Nazi flag and even a revived version of the “patriote” flag from the 1837 rebellion in Lower Canada. All these flags carry hidden or not so hidden messages. It just goes to show that when a cause is flagging, flag your intentions with a new banner. (pardon the pun). Create a new flag (or revive an old one) for the vexillologists to discuss at their next international convention. If its original, your flag just might enjoy copyright protection. Unless of course it is the “Jolly Roger”. Imagine pirating a pirate flag!

© Hugh Stephens 2022, All Rights Reserved.

The Humanity of Copyright

Source: pixabay (modified)

Recently the US Copyright Office (USCO) reaffirmed its longstanding position that human authorship is a pre-condition for recognition of copyright, despite being pushed hard by a particular protagonist within the tech community to accept artificial intelligence (AI) in the form of a machine (NB his machine) or software as a creator with rights. Stephen Thaler, PhD (identified by some sources as Steven Thaler) is, according to this website, the CEO of Imagination Engines Incorporated. His LinkedIn profile says that he is “a pioneer in the area of artificial intelligence and the inventor of the Creativity Machine(R) Paradigm, US Patent 5,659,666 and its derivatives.” Apparently, this machine has been used “to design a wealth of commercially available products”. It must be quite a machine because apparently it also produces autonomous art. This art, a two-dimensional image entitled “A Recent Entrance to Paradise”, was the subject of the USCO Review Board’s recent decision, which ended a three-year struggle by Thaler to get his Creativity Machine recognized as the creator of the work.

According to the USCO, in 2018 Thaler sought to register the work, identifying the author as the “Creativity Machine”. Knowing the well-established position of the Copyright Office not to grant copyright to works created by non-human efforts, such as works created through AI, Thaler tried to invoke the process of recordation, whereby owners may transfer their copyrights to others, and have this transfer recorded by the Office. In this case, he claimed that the work “was autonomously created by a computer algorithm running on a machine” and he was seeking to register this computer-generated work as a “work for hire” to the owner of the Creativity Machine, himself. When Thaler’s application was refused, he appealed, arguing not only that the requirement for human authorship was unconstitutional but also that copyright law already allows non-humans (i.e. corporations) to be authors under the “work for hire” doctrine. Although his appeal was denied by the USCO he appealed yet again, this time to the Review Board. In refusing to revisit the Office’s decision to reject the application, the Review Board cited multiple precedents where human authorship was established as a prima facie requirement for copyright registration. As for the “work for hire” argument, it pointed out that a work for hire must be prepared by an “employee” or those who have contracted to produce a work for hire. In both cases a binding contract or agreement is required. A machine cannot enter into a contract, whereas a corporation (a legal entity) is able do so. Moreover, the work for hire doctrine only identifies the owner of the work, not whether it is protected by copyright. And since it was not created by a human, it cannot be subject to copyright. Case dismissed.

One can speculate as to why Thaler was so insistent on imbuing his Creativity Machine, for which he holds US Patent no. 5,659,666, with the attributes of authorship. Could it have something to do with raising the profile and marketability of this invention? You can imagine the coverage. “Art produced by AI Machine first to be awarded Copyright Protection.” Despite Thaler’s persistence, it ain’t gonna happen. Sorry Steven, or is it Stephen, but it was a valiant effort. You should have registered the copyright in Britain, where there is a provision for copyright protection for machine-generated works where no human author of the work is involved. (see below)

Blogger and copyright scholar Stephen Carlisle has speculated that one outcome of the doctrine that stipulates machines cannot be authors will be that humans will claim for themselves works that have been produced by machines. In other words, they will lie to gain the protection of copyright for works created autonomously by AI. It is worth noting that Thaler’s position was exactly the opposite. He went to great lengths to specify that the work for which he was seeking registration was the creation of his Creativity Machine, not him. The Review Board anticipated the argument that denying copyright protection for machine generated works will encourage dishonesty and inaccurate claims of authorship by noting the criminal penalties that exist for those knowingly making false representations, plus the fact that registration can be cancelled if invalidly filed. In Britain a similar concern has been raised since works produced by human authors get a longer term of protection than purely machine-generated works. Like the USCO, the British authority considers that legal provisions regarding fraudulent representations provide sufficient protection against such activities.

The question of whether a machine can actually create an original, copyrightable work without human intervention is controversial. For now, in most jurisdictions, there is still the presumption that despite the use of machine learning, software, and technology, there is still a human hand behind original works. For example, a couple of years ago a Chinese court addressed this issue, finding that an automated article written by a program called Dreamwriter, created by Tencent, which had been copied and published without permission by another Chinese company, Yinxun, was nevertheless subject to copyright protection because it met the originality test through the involvement of a creative group of editors. These people performed a number of functions to direct the program, such as arranging the data input and format, selecting templates for the structure of the article, and training the algorithm model. In other words, there was sufficient human authorship—and thus there was copyright, and infringement of copyright.

Nonetheless, at times it is a fine line when it comes to assessing how much human creativity has gone into a machine-enabled work. Carlisle provides the example of Dmitry Evgrafov, the writer of computer code for an app called “Endel”. Warner Music signed a deal to distribute 600 tracks created by Endel. What is significant is Evgrafov’s claim that the music was produced with a few clicks of a mouse, with minimal human involvement outside of chopping up the audio and mastering it for streaming. There are machines that allow people to compose music (even though these people don’t even have the ability to read or write music), by manipulating various musical elements, such as rhythm, harmonics, etc. to blend them into a “new” piece of music. How much human creativity is involved? Not much, so is the end product a creation of the software, or is it a human creation enabled by the software?

If AI is a current test case of human authorship, one cannot help but also reference the role of animals arising from the infamous Monkey Selfie case, about which I and others have written. (The Monkey Selfie Case: Applying the Common Sense Test”) and (“The Monkey Selfie Case: Will It Have Broader Repercussions for AI and Copyright?). In this case, the issue revolved around whether wildlife photographer David Slater was the author of the monkey’s selfie because he had not himself clicked the shutter, despite having artistically staged and made technically possible the taking of the photo. Although that was the question, the judge in California ended up ruling whether the copyright belonged to “Naruto”, the macaque that was the subject of the photo, rather than whether the work was Slater’s or in the public domain.

Naruto’s claim was a publicity stunt by PETA, the Society for the Ethical Treatment of Animals, but it ended up financially ruining Slater. Of course, Naruto’s claim (presented on behalf of the animal by PETA as a legal “next friend”) was dismissed, but there were some interesting moments. During the trial there were questions raised as to whether Naruto’s “children and grandchildren” could be handed the copyright, (and how they would be identified) were it to be awarded, and whether Naruto was obliged to send letters to the other monkeys in the group to let them know about the court case, since some of them had also been inadvertently included in photos snapped by Naruto. Just as with the Creativity Machine, it was apparent that a non-human could potentially create something that might qualify as a work, but that an inanimate creator could not exercise any of the other attributes necessary to establish copyright. If a reason is needed to deny copyright protection to works not produced by humans, this is a good one, but still does not finally decide the question as to whether, inevitably, there is always a human creator behind the non-human.

Think of elephants, those well trained, hard-working creatures that not only allow us to ride them (sometimes), but which have been harnessed for centuries for logging, waging war and other human-directed endeavours. Give an elephant a paint brush, a couple of buckets of paint, and a canvas and you might get something that is not worse than some other forms of modern art. If it qualified as an original work, I would award the copyright to the human who created the framework for all this to happen. It is no different than using other means to create art; automatic spray guns, nude bodies smeared in paint, and so on. In this case, the instrument just happens to be an elephant rather than a machine. But someone created the concept and made it happen. A human.

Those who argue that the definition of author or creator should be expanded beyond humans point to the lack of specificity in the laws of most countries when it comes to defining who is an author. The Berne Convention, the cornerstone of international copyright protection, is a case in point. First drafted in the 1880’s it protects “authors”, but nowhere does it define the term. Rather, it protects “every production in the literary, scientific and artistic domain, whatever the mode or form of its expression”. The drafters of the convention could not conceive of a literary, scientific or artistic work that was not the result of human endeavour. So, human creation is implicit. In US law, the Copyright Act protects “original works of authorship”, but without providing a definition of what an original work is. However, the USCO Review Board in Thaler’s case noted that “Courts interpreting the Copyright Act, including the Supreme Court, have uniformly limited copyright protection to creations of human authors”, and cited various references where courts have referred to authors as humans or “a man”, presumably in the sense of “mankind” rather than a gender-specific reference.

While it is generally accepted in most jurisdictions that human creation is an essential ingredient to claim copyright protection, there are some exceptions. Earlier I referred to the United Kingdom. Under the Copyright, Designs and Patents Act, 1988, there is a provision (Section 178) that states computer generated works are works “generated by computer in circumstances such that there is no human author of the work”(emphasis added). These works are currently provided with a more limited term of copyright protection (50 years from the date of creation) as opposed to the standard life plus 70 years provided to works made solely by human authors or authors assisted by AI. (The rights-holder for a fully computer-generated work is “the person by whom the arrangements necessary for the creation of the work are undertaken”, even though that person played no creative role.) The UK Intellectual Property Office (UKIPO) is currently reviewing provisions for protection of AI under the Act, with possible changes ranging from a requirement that human creativity must be involved in order to claim copyright protection, (in other words dropping machine-generated copyright entirely), to reducing the protection for computer-generated works to as little as five years, to retaining the status quo.

In re-examining whether computer-generated works should benefit from copyright protection, the UKIPO consultation paper has set out three considerations; the need to (1) encourage innovation in AI technology and promote its use for the public good; (2) preserve the central role of intellectual property in promoting human creativity and innovation (emphasis added); and (3) be based on the best available economic evidence. Arguments put forward for dropping machine-generated copyright include concerns that protecting computer-generated works may promote these works at the expense of human creations and devalue human creativity. (A machine can work 24/7; humans need to sleep and eat). Proponents for reducing the period of protection for computer-generated works argue there is no need to incentivize a computer to create works, yet protection imposes costs on third parties. Finally, those who support copyright for works produced exclusively with AI maintain that this provides additional economic incentive to invest in AI technology. The public consultation closed on January 7 of this year. No doubt we shall have to wait a while to see what proposals the Office brings forward.

As I wrote in an earlier blog (“AI, Ethics and Copyright”), one factor to consider with regard to the use of AI in creating works is ethical judgement, something only a human can provide;

Despite enablement by machines and the creation of “new” works using AI through compiling, synthesizing, modifying and re-arranging, at the end of the day there will always be a human creator behind the AI who will judge whether and when the AI work is complete. This person will ultimately take a position on any ethical questions that may arise and the output will be subject to human judgement in terms of choices, editing, finalization, and release.”

I believe that humanity and copyright must go hand in hand. The US Copyright Office apparently agrees although Stephen Thaler clearly does not. The Intellectual Property Office of the UK appears unsure.

What do you think?

© Hugh Stephens 2022. All Rights Reserved.

Requiring Digital Platforms to Pay for Using News Content: Canada Follows Australia’s Lead—But Not Precisely

Earlier this month I wrote about online safety legislation and noted how Canada is following Australia’s lead in developing a regime that would, among other things, create a Digital Safety Commissioner (called the eSafety Commissioner in Australia), as well as imposing requirements on internet platforms to monitor for, and expeditiously take down, certain types of harmful content. Australia’s updated legislation went into effect in January of this year while Canada is still in the public comment stage for its proposals. Another area where it seems that Canada intends to take a leaf out of Australia’s book is with regard to requiring large digital platforms to reach revenue sharing agreements with news content providers. The two countries share much in common, including the heritage of a Westminster-style government, but just the same there are some significant national differences, and these will likely be reflected in somewhat different versions of legislation in both cases, online safety and news revenue sharing.

Regarding the latter, Canadian Heritage Minister Pablo Rodriguez has said that legislation will be introduced “as soon as possible”. It was included as one of the primary “to do” tasks in his mandate letter when he was appointed minister in December of last year. The operative paragraph read;

Swiftly introduce legislation to require digital platforms that generate revenues from the publication of news content to share a portion of their revenues with Canadian news outlets to level the playing field between global platforms and Canadian outlets. This legislation should be modelled on the Australian approach and introduced in early 2022.”

Rodriguez has recently said that while the Canadian legislation will be modelled on the Australian version, it will differ in several ways. One change would be to delegate the power to decide which digital platforms will be required to negotiate with news content providers to an arms-length regulatory agency, rather than to a government minister. In Australia, although the News Media Bargaining Code was developed by the competition regulator, the Australian Competition and  Consumer Commission (ACCC), and the ACCC administers the code, the decision as to which online entities will be subject to it rests with the Australian Treasurer, equivalent to Canada’s Minister of Finance. Another agency, the Australian Communications and Media Authority (ACMA), is responsible for determining eligibility of news media businesses to participate in the code. During the lead up to passage of the Australian legislation, only two platforms (Google and Facebook) were named as potentially being subject to the Code, and both mounted strong campaigns to stop the legislation. See “Google’s Latest ‘Stoush’ with Australia” and “Facebook in Australia: READY, FIRE, AIM”.

In the end, both buckled and came to agreements with Australian publishers, large and small. As a result, the Treasurer did not proceed to designate any platforms under the legislation that brought in the Code, and thus, at the present time, the Code is not operative. However, it achieved its goal without having to be invoked. As the ACCC puts it, “While the Treasurer has not designated any digital platforms or services to date, the ACCC considers that existence of the code and the threat of designation is having the appropriate and hoped for impact”.

Rodriguez said that Canada may also require greater disclosure of deal terms, which in the Australian case are kept confidential. Some news outlets in Canada, especially the smaller ones, are in favour of market transparency while larger players generally are not. Already some outlets in Canada have reached agreements with Google to be part of Google’s News Showcase, but others are still holding out, hoping for a better offer. The legislation will apparently establish a regulator and impose arbitration if reasonable terms cannot be agreed upon between the designated platforms and news providers, which will also include electronic media (radio and TV). Rodriguez wants to avoid any impression that government will be involved in picking winners out of this process.

News Media Canada, the umbrella industry group for the news publishing industry, (self-proclaimed as “the voice of the print and digital media industry in Canada”) has been pushing hard for the legislation. Back in July of last year, it encouraged many of its members to publish a front-page ”open letter” to Prime Minister Justin Trudeau calling for immediate action. That didn’t happen as an election intervened, one in which Trudeau’s Liberal Party, which had hoped to convert its minority status to a majority government, instead came back into office with roughly the same seat count. It still forms a minority government and therefore has to rely on the support of at least one of the major opposition parties to pass legislation. In the case of the news media bill, the Liberals can likely count on support from both the mildly leftwing New Democrats, who will be happy to ensure that large digital platforms pay their “fair share”, and the Quebec based Bloc Quebecois, which will be happy to be seen to support francophone media.

While there are several major news publishers in Canada, such as Nordstar which controls the Toronto Star, PostMedia, which publishes the National Post and many regional papers, the Globe and Mail and Quebecor which publishes French language dailies like Le Journal de Montréal, there are none that are as powerful politically as the major Australian papers, especially the ones owned by Rupert Murdoch. Newspapers in Canada just don’t have the same political clout as those Down Under. At the same time, the challenge facing the Canadian news industry in terms of revenues lost to digital platforms is as acute as elsewhere. It is reported that the two dominant digital platforms (Google and Facebook) took 80 percent of the $10 billion in online advertising revenues in 2020, according to Minister Rodriguez.

Beyond commercial considerations, Rodriguez is also invoking as justification for the new legislation the need to maintain a professional, credible, non-partisan media as a means to combat “fake news”, a phenomenon that was apparent during the truckers’ protest occupation of downtown Ottawa in February. Those protests saw several attacks on media reporters as they were doing their job.

Whether Canada’s legislation, when introduced, will be as successful as that of Australia in pushing the platforms to come to the table with reasonable offers for their use of news content, remains to be seen. Rodriguez is touting the Canadian legislation as being more transparent with less political involvement than that of Australia, perhaps a second mover advantage. However, there is no question that the firm stance of the Australian government in standing up to Google and Facebook (now called Meta) has made the task of other governments, like Canada, considerably easier. The US is also studying the Australian model.

The platforms have smelled the coffee and are finding ways to strike deals with news providers, in order to keep governments out of their hair. For that, Canada—and the people of Canada– owe the Australian government a debt of gratitude.

© Hugh Stephens 2022. All Rights Reserved.

Russia’s Invasion of Ukraine: It’s Also a Culture and Content War

Source: Wikimedia commons

As you, dear reader, will know, this is a blog focused on copyright and content related issues, rather than politics, although at times there is an inevitable political spillover when dealing, for example, with the copyright dimensions of trade agreements, given that many such agreements are driven as much by political objectives as economic considerations. Given current political circumstances, and the horrific images we see daily as a result of Russia’s appalling and brutal invasion of Ukraine, I have decided to dedicate this week’s blog post to the people of Ukraine and their brave and tragic defence of their homeland. Since so much has already been written about what is happening there, and why, I will try to look at the issue from a slightly different perspective-its cultural and content implications, for Ukraine, for Russia, and for the rest of us.

When it comes to IP protection, and respect for copyright, neither Russia nor Ukraine are exactly paragons of virtue. In the most recent edition of its global IP index, the Global Innovation Policy Center (GIPC) of the US Chamber of Commerce, ranks Russia and Ukraine as numbers 32 and 41, respectively, out of 55 countries. The index measures IP performance across a range of categories, including patents, copyrights, trademarks, design rights, trade secrets, commercialization of IP assets, enforcement, systemic efficiency, and ratification of major international treaties. In the specific area of copyright, there are seven indicators, copyright term of protection, legal measures providing exclusive rights to prevent infringement, injunctive-style relief, frameworks that promote cooperative action against online piracy, scope of limitations and exceptions, existence of technological protection measures and policies requiring that software used by government be licensed. Out of a possible copyright score of 7, Russia clicks in at 2.74 and Ukraine at 1.83. In the category of licensed software, both get a big fat zero. This makes the threat by Russia to legalize software piracy (by creating a compulsory licensing mechanism for software, databases, and technology from companies based in countries that have imposed sanctions on  Russia) somewhat less threatening since software piracy is in excess of 90% anyway.  

The weak IP track records of both countries is perhaps not surprising given the history of Ukraine as a country that has struggled to establish itself as an independent entity with a free market economy after emerging from the collapse of the Soviet Union. It is perhaps less understandable in the case of Russia but even here we have a country that has struggled with the legacy of a past dominated by central planning where IP was a commodity that could be expropriated by the state or stolen for national purposes. War will not improve this situation.

Although western countries have imposed financial sanctions affecting banks and credit card companies, there have also been numerous voluntary actions taken by western companies in non-financial sectors. So far, among tech and software companies, Microsoft, Apple, Dell, Samsung, Adobe, Cisco, IBM and Intel, have announced they will be stopping sales to Russia. Netflix has announced that it is pulling out. The company had refused to carry Russian news channels on its local-language service, despite a new law requiring it to do so, and has suspended all projects and content acquisitions in Russia. Sony, Warner Bros, and Disney have announced a pause on new film releases. Facebook has barred Russian state media from running ads, as has Google, which has also removed Youtube channels associated with state-controlled Russian media.

When it comes to using the media and content platforms to get the message out regarding what is really happening in Ukraine, Volodymyr Zelenskyy is running rings around Vladimir Putin. Zelenskyy has won the admiration of the world for his valiant personal stand, and ringing, heartfelt appeals for help. Dressed in fatigues and with the daily strain showing clearly on his stubbled face, the comparison with the clinical, almost chilling demeanor of Putin, perched at the far end of a marble table 35 feet from whoever he is speaking to, could not be more stark. Putin has blocked western media and social media and cracked down on any domestic coverage that does not fit his narrative of “liberation”. (It seems he is following the adage of “we had to destroy it to liberate it”). In response, the news broadcaster RT (formerly Russia Today) has been removed from TV screens in Europe, the UK, North America and Australia. From both a tech and content perspective, Russia has been put on the blacklist. Will this mean that Russian authorities will now roll back their recently strengthened enforcement of copyright laws which, according to the 2022 GIPC report, has resulted in “a decrease in online infringement”? Probably.

Culture is another important element of the current crisis; specifically whether Ukraine as a nation has a culture that is distinct from that of Russia. It is an inconvenient fact for Mr. Putin that Ukraine not only has a vigorous, distinct culture, but that Ukrainians are determined to defend and preserve it. Russia, of course, has its own rich cultural heritage—think Dostoevsky to Solzhenitsyn—and there is no doubt that Ukraine and Russia share a number of common Slavic cultural roots, but it is also a fact that Ukraine has its own rich literary and artistic history.

With the invasion of Ukraine, its museums have been scrambling to rescue invaluable cultural artifacts. Museums have been shelled, some destroyed. As some have commented, the destruction of these artifacts amounts to a form of cultural cleansing. Jeremy Maron, curator of genocide at the Canadian Museum of Human Rights is quoted by the Globe and Mail as saying;

“Putin views Ukraine not as an independent nation, but as a part of Russia that was stolen from Russian control. In his perspective, it seems like there is no such thing as Ukrainian culture, so the cultural artifacts are fake evidence of the fake Ukrainian culture.”

UNESCO has expressed its deep concern over the damage to cultural sites. There are seven UNESCO cultural sites in Ukraine including the 11th century St. Sophia Cathedral, that has been instrumental, according to UNESCO, in “the spread of Orthodox thought and the Orthodox faith in the Russian world from the 17th to the 19th century.” It is now under threat from Russian artillery shells and missiles. The Russians are shelling part of their own shared heritage.

Where this will end, (at least at time of writing), is frustratingly unclear. Ukrainians are both resisting and fleeing the carnage, especially women and children, leaving their men behind to fight. Russia’s ultimate end game is not yet clear, although the outcome for the people and culture of the Ukraine does not look positive. Many will flee, some no doubt to Canada and the US, which already host the second and third largest Ukrainian diasporas globally, 1.4 million and 1 million, respectively. (Russia is home to the largest number). Even if Russia installs some sort of puppet regime in Kyiv or attempts to reincorporate Ukraine into Russia, a Ukrainian identity and culture will survive and endure as it has for hundreds of years. And the message of what is really happening in Ukraine will reach the Russian people. Today, no one can block content forever.

Ultimately, Mr. Putin will fail. The Russian army cannot eliminate the soul of a people. At the moment, we are all Ukrainian.

© Hugh Stephens, 2022. All Rights Reserved.

Grappling with Online Safety Legislation: How to Hold the Platforms Accountable

When it comes to online safety—or its flip side, online harms—many countries are grappling with the problem. What is the role of government in establishing guidelines and regulations for the protection of citizens, particularly vulnerable segments of the population, from a range of harms perpetrated by anti-social and even criminal elements via the internet? What is the role of “internet intermediaries”, the internet distribution and social media platforms that the perpetrators use to attack their victims? Are the platforms simply innocent third parties whose services have been hijacked, like phone lines being used by fraudsters to scam victims, or do they play a more active role? Should they be expected to be as much a part of the solution as part of the problem? And if they are to be expected to play a role in controlling harmful content, what is that role and how should they be encouraged (or compelled) to go about it? And, for that matter, what exactly is “harmful content”?

These are among the many questions being examined in various jurisdictions; in the UK through its draft online safety legislation, in the US, where the focus has been on amending the notorious Section 230 legislation that has been interpreted by the courts to shield the platforms from responsibility for harmful content they distribute, and in Canada. Australia has already enacted legislation. All are approaching a similar problem but in different ways, although there are some common themes. Let’s look at both the Australian and Canadian approach and see what lessons they may hold.

The Australian legislation, known as the Online Safety Act, was passed in mid-2021 and came into effect in January of this year. Australia was the first country to establish an eSafety Commissioner in 2015. Initially the remit of this office was limited to online safety for children but in 2017 the mandate of the Office was expanded to cover all Australian citizens. With the implementation of the Online Safety Bill, the Commissioner’s role will expand. The Commissioner has an education, research, investigatory and a limited quasi-enforcement role. (i.e. it can issue blocking requests and blocking orders). The new Act updates and consolidates earlier legislation dealing with cyberbullying of children and, in the words of the Australian government;

“…retains and replicates certain provisions in the Enhancing Online Safety Act 2015, including the non-consensual sharing of intimate images scheme; specifies basic online safety expectations; establishes an online content scheme for the removal of certain material; creates a complaints-based removal notice scheme for cyber-abuse being perpetrated against an Australian adult; broadens the cyber-bullying scheme to capture harms occurring on services other than social media; reduces the timeframe for service providers to respond to a removal notice from the eSafety Commissioner; brings providers of app distribution services and internet search engine services into the remit of the new online content scheme; and establishes a power for the eSafety Commissioner to request or require internet service providers to disable access to material depicting, promoting, inciting or instructing in abhorrent violent conduct for time-limited periods in crisis situations.

That is a lot of power, and it would seem similar to what the Canadian government is trying to achieve with its “online harms legislation”. However, even though the proposed online harms definitions in Canada are much more tightly constrained than under the Australian legislation or the draft Online Safety Bill being examined in the UK, there has been a lot of push-back from various groups. In 2021 the Department of Canadian Heritage issued a discussion paper laying out a proposed approach to address harmful online content, inviting public comment. And feedback they got.

As is the case with Australia, the proposed legislation would establish an office to oversee the legislation, called a “Digital Safety Commissioner”. In Canada, the Commissioner’s responsibilities would focus primarily on administration and enforcement, including the power to receive complaints, conduct inspections for compliance, issue public reports and compliance orders, recommend administrative penalties up to $10 million dollars, refer offences for non-compliance to prosecutors with fines reaching up to $25 million, and, in exceptional circumstances, apply to the Federal Court to seek an order requiring Telecommunications Service Providers to implement blocking or filtering in cases involving child sexual exploitation and/or terrorist content. This targeted use of site-blocking, which I wrote about earlier (Site-blocking for “Online Harms” is Coming to Canada), would be used as a last resort and applied to offshore sites beyond the reach of Canadian courts. The Commissioner’s Office would be backstopped by a Digital Recourse Council (the title is self-explanatory) and both the Commissioner and Recourse Council would have the benefit of an industry Advisory Board. Legislation would be restricted to the following five categories of “harms”, all of which fall under the criminal code; (1) terrorist content; (2) content that incites violence; (3) hate speech; (4) non-consensual sharing of intimate images; and (5) child sexual exploitation content.

Not covered are a range of harmful but possibly legal activities and content, such as cyberbullying, defamation, online harassment, disinformation, false advertising and so on, the so-called “awful but lawful” content. Notably, the proposed UK legislation would cover such content, at least insofar as dominant platforms are concerned.

Despite its relatively narrow focus, and the fact it would establish an independent regulator subject to a Recourse Council, the proposed Canadian legislation has been heavily criticized by civil liberties and “internet freedom” groups. Some have objected to the requirement for platforms to inform law enforcement of illegal activities, claiming this would amount to unauthorized surveillance, although the criminal reporting requirement would be limited to cases involving “serious imminent harm” or threats to national security. I find it hard to imagine that any responsible business would deliberately turn a blind eye to such information and the legislation would give them needed legal cover to act. Indeed, it would require them to do so.

Other critics complained that the requirement for platforms to monitor for harmful content on their services and take it down within 24 hours of being flagged would result in censorship, especially given that automated screening mechanisms would likely be used, possibly resulting in “false positives” and overzealous screening. With regard to the proposed remedy of site blocking for offshore sites distributing material that is sexually exploitive of children or which promotes terrorism, critics complained this would violate net neutrality. This is the usual canard trotted out when there is any suggestion that some reasonable controls should be placed on content on the internet, even if illegal and subject to court review. But net neutrality has nothing to do with permitting illegal content to remain online in defiance of court orders.

For some critics, any regulation of the internet is too much. Nonetheless, as is the case with any government regulatory intervention, it is important to get the balance right between necessary oversight and restraint, and the lightest regulatory touch needed to preserve individual freedoms. The consultation process allowed for that input and the results were published in February in a government document titled, “What We Heard”. Somewhat unusually, submissions were not made public, apparently out of concern that some groups would not want their experience with harmful content shared publicly, although other groups released their submissions for public consumption. Instead, the government summarized input from the 422 unique submissions using opaque language such as “some stakeholders”, “multiple respondents”, “a few respondents”, “certain respondents”, “a select few”, and “a majority of respondents” etc. We are left to guess at who said what. It is hard to summarize the input on the multiple elements of the proposal, but one phrase perhaps best encapsulates the feedback received; “Regarding the substance of the proposal, although multiple individuals and organizations welcomed the Government’s initiative, only a small number of submissions from those stakeholders were supportive, or mostly supportive, of the framework as a whole.”

This suggests that there will be a return to the drawing board and perhaps more consultations, but it is clear that the government intends to proceed in establishing measures to help ensure online safety. For one thing, it is in the mandate letter of the responsible minister. This is buttressed by the line in “What We Heard” noting that;

 “Almost all respondents commented that Government regulation has a role to play in addressing online harms and in ensuring the safety of Canadians online.

A digital safety regulator will be part of the solution.

The introduction of the regulatory bodies was broadly supported, as many respondents thought the new regulators seemed fit for purpose.”

Reading through the comments on the various elements of the proposal, it is evident that comments were all over the map, no doubt reflecting the background of various intervenors from individuals (350), civil society (39), industry (19) and academics (13). Then there were roughly 9000 “click and submit” interventions organized by cyberlibertarian lobby groups like Open Media. Many of the submissions contradicted each other. And of course, even counting in the Open Media claque, this is hardly a representative sample of what 36 million Canadians think, and the government knows this. While I can’t prove it, I am willing to bet that most Canadians are fed up with toxic, dangerous, and predatory content on the internet and want the platforms to take some responsibility for what they allow to be distributed. They also think there is a role for government to play in ensuring that the platforms, who until now have managed to duck accountability for content that they permit, sometimes promote, and often indirectly profit from, are held to account. (The UK is proposing an interesting accountability feature; a “designated executive” who will be personally held to account for a new criminal offence of failing to deal with “repeated and systemic failings that result in a significant risk of serious harm to users.”)

Canadians are not the only ones concerned. Online safety is a hot button issue in many democracies. While Australia is leading the way, the UK and Canada are moving ahead at their own pace and the US is addressing (slowly) Section 230 and kid’s online safety. The children’s safety issue even rated mention in the U.S. State of the Union address delivered by President Biden on March 1. It’s important to get the balance right, but equally important not to let the platforms off the hook. With great power (and great profits) comes great responsibility.

© Hugh Stephens 2022. All Rights Reserved.

What Happens when Fair Dealing is not “Fair”?

Credit: author

February 21-25 is Fair Use/Fair Dealing week, so proclaimed by a number of participating organizations in the US and Canada and organized by the Association of Research Libraries under the umbrella of fairuseweek.org. As in past years, there will be a series of online events extolling the virtues of fair use and fair dealing. Fair dealing and fair use are firmly embedded as part of the copyright ecosystem and have been for many years, although the interpretation of what constitutes “fairness” is far from static.

This is the definition of fair use and fair dealing from fairuseweek.org’s website;

Fair use and fair dealing are essential limitations and exceptions to copyright, allowing the use of copyrighted materials without permission from the copyright holder under certain circumstances.”

Fair enough. The term “under certain circumstances” says it all. This is the very crux of the issue when determining whether or not a use, without the permission of the rights-holder, is fair. Courts are periodically called on to determine what is fair and what is not. In the case of fair dealing in Canada, there are a number of “exceptions” or “allowable purposes” where permission is not required. These are research, private study, education, parody, satire, criticism, review, and news reporting. But not just any permissionless use that falls into these categories is necessarily “fair”. Other factors figure into a fairness evaluation, including the amount of the work copied, the use to which the copies are to be put, the nature of the work, the alternatives available, and the impact of the dealing on the work, i.e. whether the copying might have a detrimental effect on potential sales of the originals. These must be weighed to determine if a use not authorized by the rights-holder is legal (fair).

From the above criteria, which are drawn from the six factors to be considered when adjudicating fair dealing outlined by the Supreme Court of Canada in the CCH v Law Society copyright case in 2004, (which in turn resemble the four fair use factors used by US courts), you might conclude that an unauthorized use that (a) involved extensive or even total copying of a work that had been (b) produced explicitly for a particular educational market, like a work used for instruction in a university course, and which, as a result of the copying, (c) had suffered heavy damage to its sales potential even though (d) the work, as a readily available commercial alternative, could be easily purchased or licensed, would not meet the bar for fair dealing, even though it fell within a specified exception such as education. If this is your view, you will be at odds with most if not all of the folks from the Association of Research Libraries who are bringing you fair dealing week in Canada.

Even though this hypothetical work may have been copied, chapter by chapter, in its entirety by different professors for different courses, and even though the sale of copies of this specialized work to students by the university effectively demolishes any commercial market for the work, Universities Canada has declared this to be fair dealing in their view. As a result, most of its members, notoriously including York University, have decided to avoid any payment to rights-holders, refusing to obtain a licence from Access Copyright, the collective that represents authors and publishers, or in many cases to license the works directly from rightsholders. This has resulted in a long-running lawsuit that has pitted Access Copyright against York. While parts of this lawsuit were decided by the Supreme Court of Canada in July of last year, the fair dealing issue remains unclear. 

If it’s all a bit arcane to the casual reader, I will try to summarize. Universities and school boards, prior to 2011-12, used to obtain a licence from Access Copyright (AC) allowing them to copy materials in AC’s repertoire (i.e. AC had signed an agreement with the copyright owner, either an author or publisher, allowing it to license the works of the rights-holder and collect royalties on their behalf. These works then went into AC’s “repertoire”). The cost of the licence was based on estimates of the amount of copying occurring during instruction over a given period of time. The licence did not allow for unlimited copying, only copying within specified limits, such as up to ten percent of a work, one chapter in a book, one article in a magazine etc. Copying beyond those limits required further permissions. The licence was based on a per capita cost per student. At one time the fee per university student per year was $26. It is considerably less now due to market pressure to reduce licence fees as a result of the expansion of fair dealing to encompass education.

Under this licensing system, if AC and the users could not agree on a royalty fee, the issue was punted to the Copyright Board of Canada to set a “tariff”. The Board held hearings to determine a fair and equitable royalty rate for post-secondary copying covered under the tariff. Once the Board approved the tariff, it was accepted that it was applicable to all those who used material held in AC’s repertoire unless they had reached their own licensing agreement with the copyright collective. This was the situation that prevailed until about ten years ago. Then it all began to unravel.

In 2012 the Supreme Court of Canada, in a case known as Alberta (Education) v. Canadian Copyright Licensing Agency (Access Copyright),ruled that the allowable purposes of “research and private study” should be given a “large and liberal interpretation” in the context of practices prevailing at the time (i.e. teachers copying materials for classroom instruction). In effect, this meant that if a teacher copied short excerpts of materials for use in classroom instruction to supplement the primary textbook, this was an allowable fair dealing because the teacher was exercising, on behalf of students, their “research and private study” rights. That same year the Copyright Modernization Act was passed adding “education” to allowable purposes under fair dealing . As a result of that legislation, Universities Canada backed out of an agreement on a new model licence with AC that would have resolved the issue of institutional copying and updated copyright guidelines for the digital age. The stage was set for a lawsuit to try to settle the issue. When York University refused to pay the interim tariff established by the Copyright Board, AC sued. York’s position was that it had no obligation to pay because its use was either covered by fair dealing, as exemplified by its Fair Dealing Guidelines applicable to students and faculty, or was already licensed.

Round One went to AC in 2017. The Federal Court ruled that York was obliged to pay the “mandatory tariff”, and that York’s use was unfair. It is worth quoting some excerpts from the judgement regarding York’s supposed fair dealing;

(Para 14) “York`s own Fair Dealing Guidelines (Guidelines) are not fair in either their terms or their application”

(Para 20) “The fact that the Guidelines could allow for copying of up to 100% of the work of a particular author, so long as the copying was divided up between courses, indicates that the Guidelines are arbitrary and are not soundly based in principle”

(Para 25) “It is almost axiomatic that allowing universities to copy for free that which they previously paid for would have a direct and adverse effect on writers and publishers”

(Paras 28 and 245) “The complete abrogation of any meaningful effort to ensure compliance with the Guidelines—as if the Guidelines put copyright compliance on autopilot—underscores the unfairness…York`s approach to these copyright infringing actions is consistent with its wilfully blind approach to ensuring compliance with copyright obligations, whether under the Interim Tariff or under the Fair Dealing Guidelines”

(Para 272) “It is evident that York created the Guidelines and operated under them primarily to obtain for free that which they had previously paid for”

(Para 353) “the Guidelines have caused and will cause material negative impacts on the market for which Access would otherwise have been compensated for York’s copying”.

That is all very clear. York’s dealing was not fair. York appealed but this time based its arguments on challenging the mandatory nature of the Copyright Board’s tariff (interim or not). This time they were more successful. The Federal Court of Appeal (FCA) ruled that, based on historical precedent and close reading of the 1988 and 1997 legislation, the tariff was not mandatory when applied to a user even if the user was continuing to make use of works covered by the tariff. This somewhat bizarre and unexpected interpretation undermined the basis of collective licensing in Canada and was appealed by AC to the Supreme Court of Canada (SCC). While negating the mandatory nature of the tariff, the FCA nonetheless upheld the Federal Court’s decision on the fair dealing issue. While the FCA confirmed that York’s copying guidelines were not fair, AC was left with no recourse since it does not have the requisite rights to maintain a copyright infringement lawsuit. While AC collects royalties for rights-holders, it is not a rights-holder itself. Therefore, if a fair dealing case is to come to trial, it has to be launched by a rights-holder. This means that individual rights-holders are required to bring suit for individual infractions against multiple universities, an impossible and nonsensical situation considering the requirements for documentation, which is why collective licensing was established in the first place.

With the Federal Court of Appeal having blown a hole in the fabric of collective licensing by ruling that mandatory tariffs were not binding insofar as users were concerned, the damage was compounded by the Supreme Court when it upheld the FCA’s decision on the (non) mandatory nature of tariffs. With respect to fair dealing, the Supreme Court did not issue a ruling, considering the question moot since York had no obligation to pay the tariff established by the Copyright Board. But the SCC did not stop there. After dismissing AC’s appeal on the mandatory tariff question, Mme. Justice Abella, in delivering the decision, editorialized on the lower court’s earlier ruling regarding York’s Guidelines. While declining to endorse York’s request to declare that its Guidelines were fair, writing for the Court, she noted;

(Para 87) “this should not be construed as endorsing the reasoning of the Federal Court and Federal Court of Appeal on the fair dealing issue. There are some significant jurisprudential problems with those aspects of their judgments that warrant comment.”

Although the SCC refused to issue a Declaratory Statement legitimizing the Guidelines, and although she recognized that the SCC was not retrying the fair dealing aspects of the case, Justice Abella then proceeded to cast doubt on the original fair dealing decision against York. She commented that the Federal Court had looked at infringement only from the institution’s perspective and had failed to take into account the user’s right of individual students. This commentary, known in legal circles as obiter dicta, is not binding on future courts but is potentially damaging if and when a fair dealing case is brought by a rights-holder against York or any other educational institution. This will cast yet more doubt on what is–and is not–a fair dealing when it comes to educational copying.

There is no question that the current very broad interpretation of fair dealing in Canada has caused immense damage to the Canadian publishing industry and has lined the pockets of educational institutions at the expense of authors and creators. Instead of spending hundreds of thousands of dollars fighting the representative of authors and publishers in court, and spending millions more to hire additional staff to screen and vet copyright compliance, York and other universities in English Canada could have simply acquired a licence from Access Copyright, as the universities in Quebec have done with respect to AC’s Quebec counterpart, Copibec. The current tariff set by the Copyright Board is $14.31 per student or less than .0004% of the average annual cost per student, amounting to less than four cents a day per student.

There is nothing “fair” about the actions taken by York or the other institutions that have refused to compensate authors and publishers for using their works by prying open the fair dealing exception to the fullest extent possible, aided and abetted to date by the Supreme Court of Canada. The universities should do the sensible (and “right”) thing and license the content they are using for instruction. With the Supreme Court having allowed the gutting of the Canadian educational publishing market, it is incumbent on Parliament to re-introduce some balance. It can do this, as recommended in 2019 by the Standing Committee on Canadian Heritage, by limiting the education fair dealing exception–when applied to educational institutions–to circumstances when the work is not commercially available. The Committee also recommended that the Government of Canada promote a return to licensing through collective societies. To do this, legislation will be required to fix the anomaly of mandatory tariffs that are mandatory only for one of the parties, (licensors), but not on users, thereby restoring the viability of collective licensing in the publishing sector in Canada.  That would bring some fairness to fair dealing in Canada and would be something to celebrate during fair dealing week next year.

© Hugh Stephens 2022, All Rights Reserved.

Copyrighting the Ogopogo: The © Story Behind the News Story

The headline in the local paper grabbed my attention. City of Vernon transfers copyright to legendary Ogopogo to B.C. Indigenous nations. It went on to say that “The legal rights to the legendary creature in a British Columbia lake have been transferred to an alliance of Indigenous nations who say the Ogopogo has always been part of their spiritual teachings.” Well, that’s probably as it should be, and is fully consistent with the spirit of reconciliation with First Nations that is epitomized by the establishment of a new public holiday in Canada, Reconciliation Day. (September 30). But hang on a minute. How could the City of Vernon (a community of about 40,000 located near the north end of Okanagan Lake) own the rights to a mythical lake monster? I mean, you can’t copyright the Ogopogo any more than you can copyright the Loch Ness Monster, the Sasquatch or the Yeti, the unicorn or any one of a host of other imaginary creatures. You can’t copyright an idea, only the expression of an idea.

No-one would be surprised to learn that imaginary creatures like Godzilla, The Hulk and Superman are protected by copyright and trademark registrations, since they were conjured out of thin air by their creators. (Japanese film producer Tomoyuki Tanaka in the case of Godzilla, writer Stan Lee and artist Jack Kirby in the Hulk’s case and Jerry Siegel and artist Joe Shuster for Superman). They didn’t “exist” (in peoples’ minds) until their creators put them in concrete form, through films, artwork, comic books etc. The copyright on the creation was then sold and commercialized.  But what about other imaginary or mythical creatures such as sea monsters, denizens of deep lakes and various bizarre and unproven forms of life otherwise known as cryptids, such as the Ogopogo, passed on by legend and oral tradition? Surely it would be impossible to copyright them—and by extension have the right to license the concept of the creature and in turn prevent others from using it without authorization.

While I could understand that Vernon wanted to give whatever IP (intellectual property) rights that it held in the Ogopogo to the Okanagan Nation Alliance–representing indigenous groups in the Okanagan region–as a gesture of reconciliation, the copyright nerd in me came out. I was itching to find out exactly what it was that the City had transferred. Perhaps it wasn’t a copyright after all, but a trademark registration that was transferred? In a CBC report published back in March when the story first broke, there is reference to transfer of both copyright–in the text–and trademark–in an embedded interview with Okanagan Indian Band Chief Byron Louis. Maybe the journalist mixed up the two, but a trademark registration on the Ogopogo appeared to be a logical conclusion. I began my search, and eventually, with the help of staff at the City of Vernon, Jadon Dick of the Okanagan Publishing House, and the Canadian Intellectual Property Office, I think I have solved the mystery. Read on.

The press reports covering the story reported that the copyright had originally been registered in 1953 by Arthur “Gil” Seabrook, a local broadcaster, as a promotion. I suspect he wanted to “one-up” the neighbouring City of Kelowna, located 50 kilometres to the south of Vernon, and lay claim in some way to the lake creature. Kelowna’s waterfront has, since 1960, sported a large concrete sculpture of the Ogopogo, and is a popular tourist attraction. Clearly Kelowna was not deterred by Seabrook’s supposed copyright on the mythical monster. It was reported that in 1956 Seabrook assigned his rights to the City of Vernon, substantiating the supposition that this was all about civic rivalry. Seabrook lived a long life and passed away in 2010 at the age of 97. His obituary, published in the Vernon News, says that;

At one point, as a marketing / promotion effort, he personally obtained the registered trade-mark for the word “Ogopogo” and an artistic rendering of the famed lake monster. This, much to the chagrin of Kelowna and other Okanagan cities. Eventually the rights to use “Ogopogo” were offered to the City of Vernon … where they basically remained dormant”. Ah, the smoking gun (or so I thought).

I decided to search the Canadian Trademark Database for information as to what was registered under Ogopogo. I found 17 entries for use of various forms of Ogopogo related to a range of product categories, from books to wine to chocolates, to suntan products, clothing, and soft drinks. There are also many other businesses in the region that use the name Ogopogo without registering it, e.g. Ogopogo Giftland, Ogopogo Lawn Sprinklers, the Ogopogo Motel, and so on.  Registered trademarks must be associated with a specific product category and must be renewed every ten years. Many of the registered marks had lapsed due to non-renewal, and none were in the name of the City of Vernon. I thought it unlikely that Vernon would have renewed their trademark registration—at a cost to the taxpayer of around $500 net of legal fees—every ten years, so perhaps it wasn’t a trademark registration after all. So, what was it? It was time to search the Copyright Database maintained by the Canadian Intellectual Property Office (CIPO).

I found 18 listings for registered copyrighted works related to the Ogopogo. They included books, posters, artwork, videos (in some cases, supposedly of the creature itself) and dramatic works. However, it is not compulsory to register a copyright. The mere act of creation and fixation (embodiment in concrete form, such as publication, a photograph, a painting etc.) is sufficient, so I have no doubt that there are many more works out there based on the Ogopogo that are subject to copyright protection that have not been registered. And then there is the fact that the online database only goes back to 1991. What about Gil Seabrook’s registration? What did he register? I asked the CIPO if they could confirm what was registered.

They responded, but not very helpfully.

“The Copyright Office does not conduct searches for clients. The Canadian Copyrights database will allow you to search all of the Canadian copyrights registered from October 1991 to present day, free of charge…Registrations prior to October 1, 1991 and dating back to 1841 cannot be searched online. They are stored in the public search room of the CIPO Client Service Centre. You may wish to visit the Client Service Centre or hire a freelance searcher to search on your behalf…You can also hire a registered trade-mark agent to conduct a search on your behalf. Open Monday to Friday (except statutory holidays) from 9:00 a.m. to 4:00 p.m. (Eastern Time) on appointment only.

It should also be noted that copies of the works themselves are not part of the records kept at the CIPO. The Copyright Register only contains information such as the names of the authors and owners, the titles and categories of works, registration dates and grants of interest.”

That’s great if you are a resident of Ottawa. Even then, if you found the 1953 registration, it still wouldn’t tell you what was registered.

Now remember that Gil Seabrook’s obituary had said that after he had transferred the “trademark” on Ogopogo to the City of Vernon, it had remained dormant. That is mostly, but not entirely, true, and this is why we are discussing this issue today. Back in 1984, a local author, Don Levers, was writing a children’s book called “Ogopogo-The Misunderstood Lake Monster”. It was self-published and sold over 25,000 copies. It seems that Mr. Levers had heard stories about the City of Vernon owning the copyright on Ogopogo, so he played safe and asked the City’s permission to publish his book. It was freely granted, subject to acknowledgement in the book. Fast forward to March, 2021 and Mr. Levers has decided to publish a sequel. Once again he, along with his publisher, Okanagan Publishing, approached Council for permission to use the word. Press reports stated he required Council’s permission “because the city has the copyright to the word Ogopogo”. Once again, Council agreed, provided that Levers acknowledged the City in a prominent and suitable location. He agreed to do so, but that is when the reconciliation issue came to the fore.

Vernon’s heretofore long-forgotten and dormant copyright ownership suddenly was put in the spotlight. Questions were raised about why the City held title to the name Ogopogo, when it was based on a native legend. After all, didn’t the Syilx First Nation really “own” Ogopogo? There were murmurings of “cultural appropriation”. The Guardian picked up the story, framing it as an indigenous nation trying to reclaim its culture. That is when Council voted to relinquish its copyright and assign it to the Okanagan Nation Alliance, which was happy to receive it. The Globe and Mail reported that “For $1, council voted to assign and transfer to the Okanagan Nation Alliance all copyright, title, interest and property including trademark rights arising from the commercial and non-commercial use of the Ogopogo name”.

Except that is not exactly what happened. The City of Vernon Council Minutes for October 12 make it clear that what Vernon transferred to the Okanagan Nation was;

“all copyright, title, interest, and property in the Work, (emphasis added) together with the right and title to any derivative works arising in any way from the Work, and any trademark rights arising from the commercial or non-commercial use of the foregoing copyrighted protected works or derivates thereof and any goodwill related thereto, without reservation or exclusion, together with all profit, benefit, and advantage that may arise from printing, reprinting, or selling said copyrights for the remaining term of the copyright”.

What was transferred were the rights to “the Work”, not the name Ogopogo. But what was the work? It was registered under Copyright #102327 on June 9, 1953, but we may never know what it actually was. The original copyright certificate, kindly provided by the City of Vernon (see below), simply says that Seabrook registered an “unpublished literary and artistic work entitled Ogopogo”. An unpublished work can be copyrighted as long as it is “fixed”, but since it was unpublished, it may no longer exist, and as CIPO made clear, when a work is registered no copies of the work itself are retained.  Certainly, the City of Vernon appears to have no idea of what the work contains nor, it appears, does anyone else. Seabrook is no longer around to ask.

I asked Jadon Dick, founder of Okanagan Publishing (Levers’ publisher) why he and Levers approached Vernon to clear the copyright when multiple books have been published about the Ogopogo without doing so. All that Vernon owned was copyright to an unpublished work. Mr. Dick replied that he had not known about Vernon’s copyright before speaking to Levers. His impression was that in the view of the CIPO, the name Ogopogo was not copyrighted (this is not surprising, since a name cannot be copyrighted) but since Levers had got Vernon’s approval the first time around, it seemed to make sense to ask for approval for the sequel. As publisher, he wanted to cover all the bases. He felt that if Vernon had some form of copyright, even though it was not enforcing it, it would be better to have permission before moving forward with the book, rather than have a controversy later which might negatively affect sales and marketing. This was “due diligence” at its best. It was only after they approached Vernon, and winkled out the old copyright document, (and got permission from the City to use the word Ogopogo, which technically they had no right to grant) that they realized the nature of the copyright and that no permission was in fact required. Nothing in Seabrook’s earlier unpublished work was used, and Dick has no idea what that work consists of. The copyright approval request could have become a non-issue but by this time, the reconciliation train had left the station.

Dick goes on to say that the Ogopogo copyright is more symbolic than anything else, and that despite all this, the gifting of the copyright to the Okanagan Nation Alliance is a symbol of giving back control of the Okanagan Lake Creature.

“Okanagan Publishing House is/was pleased to hear that the City of Vernon gave the Ogopogo copyright to the Okanagan Nation Alliance. We see it as a broader movement to give back control of the Okanagan Lake Creature and how we speak about the Nx̌ax̌aitkʷ/Ogopogo to the Indigenous people of this area. This is something that we seek to do in all of our publications.”

So that solves the mystery of the City of Vernon’s copyright. If Levers had not, in an excess of zeal in 1984, sought permission to use the name, the issue would not have come up in 2021. The whole question of cultural appropriation is seen very differently 35 years later. Although Vernon never had the copyright to the name Ogopogo, the assignment of the name makes a good hook for a story about reconciliation. The Okanagan Nation saw the City of Vernon’s actions as “respectful”, even if what they actually got, for $1, were the rights to an unpublished work. But more important, they got recognition of the fact that the lake creature is indelibly linked to their traditional culture, and an acceptance that they should have some say over it.

However, I cannot resist adding one final, ironic point regarding the name Ogopogo. Although native groups had an oral tradition of a lake creature, it had an entirely different name. It was known as N’ha-a-itk and was probably never considered by the original peoples as an actual creature but rather the spirit of the lake, much as certain geographical features are imbued with spiritual meaning by Indigenous groups.

The name Ogopogo was actually conferred by tourism officials in the 1920s and drawn from an old  English music hall song (listen here), whose lyrics included;

“I’m looking for the Ogo-pogo, The funny little Ogo-pogo.

His mother was a polliwog, his father was a whale,

I’m going to put a little bit of salt on his tail.

I want to find the Ogo-pogo”  

That, at least, is the version published by the BBC

The N’ha-a-itk of the Syilix and the Ogopogo that was labelled by officials keen to promote tourism have become very different things, although springing originally from the same source. You can’t put that genie back in the bottle. For better or for worse, the well-known Ogopogo name and image will no doubt continue to adorn pop and wine bottles, boxes of chocolates, motels and RV parks, bed and breakfast establishments, a stucco and masonry business, a gymnasium, a moving and storage outfit—even an air cadet squadron, and will continue to feature in books, plays, and artwork.

If Vernon didn’t hold the copyright to the name Ogopogo, then the Okanagan Nation Alliance (ONA) doesn’t either despite the assignment of whatever rights Vernon had–or thought it had. People remain free to continue to express their own idea of what the Lake Okanagan water spirit is, what its characteristics are and to tell stories about it. And they can continue to copyright those artistic expressions and creations, but hopefully will do so in a way that is respectful of the creature’s cultural connotations.

At the end of the day, this story is not really about copyright. It is about reconciliation and respect. It was an appropriate decision for Vernon City Council to turn over its “rights” to the First Nations of the area. Vernon’s gesture of reconciliation—regardless of whether it actually involved transfer of copyright over the Ogopogo name or not—will remain a symbolic token of goodwill and a reaching out to First Nations groups that seems to have been well appreciated by the recipients.

© Hugh Stephens, 2022. All Rights Reserved.

Books, e-Books, Authors, Publishers and Libraries: A Complex Relationship

On January 1, 2022, a new law entered into force in the state of Maryland requiring that authors and publishers holding the rights to an e-book title must offer unlimited copies of that title to public libraries in the state at an undetermined “reasonable price” if and when the title is offered to individual consumers. This law puts Maryland’s heavy thumb on the scale of copyright, subjecting e-book rights-holders to a “compulsory licence” thus depriving them of the right to decide when, where and how to release works to which they hold the rights. The law is opposed by the American Association of Publishers (AAP), the Authors Guild and industry associations representing music publishers, newspaper publishers and the motion picture industry for fear that if compulsory licensing is accepted for e-books, their sectors could be next. It is supported by the Maryland Library Association among other groups advocating for the library community.

The AAP is seeking an injunction to stay implementation of the state legislation on the grounds that it usurps federal copyright law. Maryland claims jurisdiction on the grounds of contract law. A court hearing on the injunction was held earlier this week, on February 7. According to the judge hearing the case, the decision will come “soon” (likely one or two weeks). Maryland’s actions, which are being echoed by several other states including New York, Rhode Island, Illinois, Missouri and Massachusetts, have scrambled the complex (and mutually beneficial) relationship that has prevailed for many years between authors, publishers and libraries, this time with a particular focus on e-books. Let’s look briefly at the history of that relationship.

In the beginning there were manuscripts, those beautiful, hand-crafted documents laboriously produced by skilled craftsmen (yes, I think they were likely all men, probably with tonsures) in the Middle Ages. Then along came Mr. Gutenberg with his introduction to Europe of movable type. (Contrary to popular belief, Gutenberg did not invent type; that honour belongs to the Chinese who were printing, and even using movable type some 500 years before Gutenberg. What else did the Chinese invent? Why golf of course!). The Koreans and the Mongols also used movable type a couple of centuries before Gutenberg. However, it was Gutenberg who popularized the technology and his creation led to an explosion of printed works. This, in turn, led to various disputes over who had the right to print what. Various monopolies were awarded to various printers in various countries, but invariably someone who was not awarded a printing licence decided to do so anyway. Naturally this led to disputes, the passing of laws to regulate printing and finally, in 1710, what has become known as the first modern copyright law, the Statute of Anne in Britain which gave the reproduction right to authors rather than printers or publishers.

Since Gutenberg’s time there have been many advances in printing and publishing, but the principle of reproduction rights remained more or less the same, with the end product being a book in physical format. It may have been printed on vellum and bound in leather or printed on cheap paper with just a paper cover, but it was a work the purchaser could pick up and hold and put on their bookshelf. Or it could be purchased by a library and put on the shelf of a library for loan. And while the purchaser could not infringe copyright by reproducing the book, they owned it and were free to do with it what they wished-resell it, lend it to a friend, keep it, trash it—the choice was theirs, subject to parallel import regulations in some countries. (In the US, this is known as the ”first sale doctrine”.)

The connection between printed books and libraries is a long one. When the Statute of Anne was passed, one of the requirements for a work to enjoy copyright protection was that “nine copies of each book or books, upon the best paper” shall be delivered to the warehouse of the Company of Stationers for the use of the royal library and the libraries of the major universities in England and Scotland. This act of deposit is replicated today in the United States by the mandatory deposit requirements of the US Copyright Office. “This law requires that two copies of the best edition of every copyrightable work published in the United States be sent to the Copyright Office within three months of publication. Works deposited under this law are for the use of the Library of Congress.” Most countries where there is a significant publishing industry have similar requirements. In Canada, Canadian publishers are required to make two copies of books published in Canada available to the National Library under the Legal Deposit Program of the Library and Archives of Canada Act (2004).

If copyright, books, and libraries have a long and close connection, so too do authors, publishers, and librarians. Without authors and publishers, the raison d’être for libraries would disappear, even though today libraries have become much more than places for just the circulation of books. In addition to their collections of audio-visual materials, they are in many cases also quasi-community centres where clients access the internet (and through the internet reach government services and other sources of information), have their pre-schoolers entertained with story-time, as well as, in some cases, simply to gather to study, socialize or keep warm.

Most authors love libraries, understanding that they are essential tools in the promotion of literacy and love of books. There are exceptions, as I wrote about here (“Are Libraries the Enemy of Authors and Publishers?”). Canadian publisher Kenneth Whyte launched a diatribe against public libraries, accusing them of undercutting book sales by “pimping free entertainment to people who can afford it”. Whyte’s crusade fell flat and he was promptly disavowed by the mainstream publishing business. The Executive Director of the Association of Canadian Publishers wrote, “Canadian publishers recognize that libraries are an important part of the reading ecosystem and a primary channel for book discovery…Library sales are also an important part of the publishing business model”. It’s also worth noting that in Canada, Australia, New Zealand and the UK (but not in the US), in addition to earning royalties on sales of books to libraries, authors generate revenue when their books are loaned out by libraries through the “public lending right”.

While authors and publishers profess to love libraries, the reverse does not always seem to be true. Some librarians are in the forefront of attempts to weaken copyright laws, the framework that authors depend on to earn a living. I recently reported on the situation in New Zealand, (“Why is New Zealand’s National Library Declaring War on Authors”) where the National Library unilaterally decided to “donate” hundreds of thousands of books, including many under copyright, to the controversial Internet Archive (IA) in the US. (After a major hue and cry from New Zealand authors, the National Library finally backed down and cancelled the “donation”). The IA is the sponsor of the very contentious “Controlled Digital Lending” (CDL) concept. The way CDL works is the following. A library buys a book (or several copies of a book). Rather than lending the book, it scans it (digitally copies it). It then places the physical book, or books, in storage, and instead lends out the digital copy or copies. In this way, it is argued that CDL respects the established rules around library lending, i.e. a book cannot be loaned to a different client until it has been returned by the first borrower. In the case of digital copies, no further lending occurs until the original loan is over. In the case of a physical book, it would be returned to the library; with a digital work, the copy expires on the reading device.

There are two major problems with the CDL concept from the perspective of authors and publishers. The first is that in 2020 the Archive unilaterally decided to abrogate its own self-declared CDL rules and instead suspended the limitation on lending. It decided to loan out unlimited copies regardless of the number of original works in the library’s holdings. Using COVID-19 as the excuse, the Archive declared that it was establishing a “National Emergency Library”. After a brief moment when the media jumped in and applauded the initiative, suddenly most people realized that the organization was making fast and loose with other peoples’ property. Even if they had the right to lend digital copies under the CDL theory, which is far from a sure thing, suspending CDL to lend unlimited copies was a step too far. Even though the IA quickly backed down, its actions provoked a lawsuit from the publishing industry challenging not only the National Emergency Library but CDL itself. That case is still unresolved.

The second problem is that making a digital copy of a work conflicts with the exploitation of digital rights held by authors and publishers. A scanned copy of a physical work is different from a licensed digital edition of a work (an e-book), yet it can directly interfere with the market for the latter. The purchaser of a hard copy book does not acquire the digital rights by virtue of that purchase. E-books come with their own rights and licensing conditions, just as audio-books do. Even though the content may be the same, they are different products. Watching a film of an opera performed at La Scala and attending a performance at La Scala are two very different things, even though the two productions have the same music, same costumes and same libretto.

E-books have been developed and made available to the public—and to libraries—under specific licensing conditions.  E-books are popular with library clients because downloading a book is so much easier than making a trip to the library to get the book, and then another to return it, especially during the pandemic, and then maybe paying a fine because the book is late.  As a result, libraries have got into the e-book business in a big way, often licensing multiple copies of a work (under terms where they pay more per copy than an individual user would), and then lending out these e-copies to borrowers.

The terms for licensing to libraries usually differ from the terms offered to individuals. As I mentioned, the cost per copy is usually several times higher than an individual licence, and the licence may sunset and need to be renewed after a set period of time (e.g two years), or after the work has gone out on loan a specified number of times. In addition, some publishers of e-books have exercised their rights to limit the number of copies sold to a library, or to hold back licensing the book for a short period of time in order not to cannibalize the market for sales (licensing) to individual readers. This is similar in concept to the “windowing” strategy used by major film studios whereby the DVD or streaming release of a film is held back for several weeks while the film plays in cinemas.

Many libraries and librarians don’t like these licensing terms, and some are pushing to have e-books treated identically with hard copy books. In other words, from their perspective, you should be able to purchase an e-book rather than licence it, and once you have purchased it, the buyer—a library or anyone else—should be able to do anything they want with it other than copy it, just as with a hard-copy book.

This position fails to understand the difference between books and e-books, especially in the library context. E-books have eliminated all the “friction” that accompanies the act of borrowing a book from a library for the consumer such as physically visiting the library at least twice, and maybe paying a fine if overdue. Because a library cannot hold infinite numbers of copies, popular titles are often out on loan and readers need to reserve them. These “friction factors” offset the free cost of borrowing for readers and persuade many consumers that it would be better to buy the book and avoid the hassle. This was a trade-off that generally worked well for libraries, publishers, booksellers and the public. Moreover, a popular edition of a hardcopy book at a library will need to be replaced after a certain number of loans, usually around 50, because of wear and tear. However, with an e-edition all friction disappears, and the digital copy can be loaned indefinitely with no need for replacement, ever. That is why publishers have had to move to a licensing model for e-books. They are dealing with a different product requiring different management and marketing.

This reality has not deterred some in the library community from pushing to have e-books treated exactly the same as physical works. In the US a spate of legislative initiatives has been launched at the state level to, in effect, hijack the rights of e-book publishers and subject e-books to compulsory licensing for library use. As mentioned at the beginning of this blog post, draft legislation has come forward in New York, Maryland, Rhode Island, Massachusetts and elsewhere to require publishers to license e-books to libraries at “reasonable rates”, with rate-setting ultimately being determined by the courts if there is no agreement. New York’s legislation was vetoed by Governor Kathy Hochul on the grounds that it intruded into the domain of federal copyright law, but Maryland’s statute has been enacted. We will have to wait to see if the AAP’s legal challenge is upheld.  

What has prompted this legislation now? Most publishers license digital editions to libraries at the same time that a work is released to the public, but there are exceptions. Amazon (not a member of the AAP, by the way) is one, but they are not the only publisher to express concern over the impact of widespread library e-lending on sales of e-books. Back in 2019, MacMillan’s CEO John Sargent expressed concern that “the very rapid increase in the reading of borrowed e-books decreases the perceived economic value of a book…causing book-buying customers to change habits“. According to Sargent, this was creating a problem across the publishing ecosystem. MacMillan’s proposed solution was to limit each library to one copy of an e-title for the first eight weeks of release before licensing additional copies to a library. This would not prevent borrowers from accessing the work, but most of them would likely have to wait in line for their turn, one of the prices to be paid for getting a newly-released work through a library. Of course, they had an alternative; they could go and directly “buy” their own digital copy right away. This strikes me as a not unreasonable compromise, but there was still a strong pushback from the library community. Then, in the early days of the COVID pandemic in March 2020, MacMillan suddenly reversed its policy. The plight of libraries that had to close their doors to the public and go online may have been a factor in MacMillan’s reconsideration.

This underlines the symbiotic relationship between authors, publishers, and libraries. For authors to be able to continue to create new works, they need a healthy publishing sector to get their works to the public, through booksellers and libraries. Libraries need a viable publishing sector to be able to provide their clients with new works. If publishers of e-books need to tweak or experiment with various market models in order to stay in business, that is their right and is subject to negotiation with their customers, including libraries. But what is happening in Maryland, and in other states where legislation is being developed to impose compulsory licences on publishers, is a concerted attempt to modify copyright law and strip rights-holders of their distribution rights through a back door mechanism. State legislation that impinges on US federal copyright legislation will undoubtedly be struck down by the courts. However, the protagonists are clearly hoping to build political momentum leading to eventual changes in copyright legislation at the federal level in the US Congress.

This is not just a US issue. International publishers are watching closely to see what happens, as there is potential for impact on titles published outside the United States. Moreover, the Berne Convention, to which the US has belonged since 1989, imposes certain minimum standards designed to protect rights-holders (the “Three Step Test”). Maryland’s legislation would nullify treaty commitments made by the United States Government.

The best solution, and hopefully one that will eventually be arrived at, is for publishers and libraries to work out their differences through licensing negotiations, instead of having libraries trying to tilt the playing field with legislation that abrogates elements of established copyright law. Throughout history copyright law has adapted to changing technology while managing to respect the rights of authors. The advent of the public library in the second half of the 19th century proved to a boon in the promotion of literacy, and the consumption of books. That is still the case, but all parts of the ecosystem need to survive. Licensing is a model that allows authors and publishers to survive in an increasingly digital world. Maintaining the role of libraries while ensuring that booksellers and publishers stay financially healthy is in everyone’s interest. Upsetting the apple cart to unfairly favour libraries over rights-holders is not. That is the current challenge presented by the Maryland legislation.

The complex relationship between authors, publishers, and libraries has worked well over the years, to the benefit of all. There is no reason why the advent of the e-book should undermine this working relationship so long as all parties approach the issue keeping the big picture in mind. All parts of the reading ecosystem need to survive. If authors, publishers and libraries work together, everyone will thrive. And the reading public will be the ultimate beneficiary.

© Hugh Stephens, 2022. All Rights Reserved.

Update: On February 17, the US District Court for Maryland granted a preliminary injunction suspending the Maryland’s e-book licensing law. The AAP statement on the court’s decision is here.

Site Blocking and the Rules of the (Internet) Road

Credit: Kristina Milbourn. Used with permission

I recently attended a very interesting conference originating from Toronto, called Digital Media at the Crossroads, aka DM@X, where discussion and presentations took place on a range of digital media issues in Canada and internationally. Many of the audience were digital media students studying for degrees in Communications. Among the issues discussed was “site blocking”, a widely used technique in many countries to disable access by consumers to offshore websites distributing illegal or infringing content. The presenter, Kristina Milbourn, is a senior lawyer at one of Canada’s large communications companies. What struck me in particular was her analogy to site blocking as being part of the necessary “rules of the road” for navigating the internet. I thought it was an insightful and creative way to present the issue. (See image above).

We often refer to the internet as a “highway”. All highways have rules to which its users are subject, for the common good. We all need to stay on our side of the road, signal when we are making turns or changing directions, obey traffic signs and signals and so on. There will always be a small minority who choose to ignore the rules, to the detriment of the rest of us, and for these people there are sanctions. To ensure that the laws that we all need are enforced, penalties are issued subject to a process where the accused has the opportunity to rebut the charges. The internet is not much different. Site blocking, and its cousin, dynamic blocking injunctions, fit into this framework.

Site blocking is gaining traction in Canada, with the initial site blocking injunction issued by the Federal Court in the GoldTV case having being upheld on appeal. While site blocking has proven to be effective in deterring consumers from accessing copyright infringing content in countries where it is routinely used, such as Australia and the UK, it is less effective in situations where blocking needs to occur in real time. (More on this below). Pirate content sites typically establish themselves in jurisdictions beyond the reach of domestic law precisely to make it difficult for content owners to have them taken down. Sometimes they are ad supported; in other cases they will actually sell “subscriptions” to consumers, offering content that they have not licensed for a price that legitimate competitors could not match. A recent report by AVIA, the Asia Visual Industry Association, noted that illicit streaming websites and apps generate an estimated US$1.34 billion in annual revenues through advertising. Access is provided to consumers through offshore websites, often enabled with codes that are provided to “subscribers”.

The most effective way to stop this practice is to disable consumer access by requiring online service providers (who are, admittedly, innocent third-party actors) to block content at their servers. In many countries, including Canada, this happens through a court order; in some others the order is issued by a regulatory agency. In both cases, there is an identified problem, an application, a review of the facts, and a hearing where evidence is presented, and an opportunity provided for the target website to rebut the claimed infringement. In almost all cases, the respondent (resident offshore) does not contest the application. Most ISPs have found that the process is not particularly onerous and almost all cooperate. It is not irrelevant that some of them are vertically integrated companies and have their own content assets to protect.

The blocking orders are granted to ensure the smooth functioning of the internet highway. They clarify that access to illegal content will not be tolerated, and they impose the necessary blocks to ensure that the rules are respected. These rules of the road are required to protect the integrity of the ecosystem that creates content for consumers. They even help protect the consumer from self-inflicted harm because many pirate websites are also known to spread malicious advertising, spyware and ransomware as part of their “unadvertised” offerings. Using the traffic analogy, these “static” blocking orders are similar to unqualified traffic rules. Stop. Do Not Enter. No Access. They are static in the sense that they target a specific site with a specific blocking order.

The problem with static blocking orders is that they take some time to obtain and can be circumvented by the pirates by moving to a new internet address. It then becomes a game of cat and mouse. While site blocking orders deter most casual users, really determined consumers of infringing content will search for, or wait to be informed of, the new IP address to get their “pirate fix”. This is particularly prevalent in piracy of sports broadcasts, where pirate providers will switch the source of their feed within the game, once blocking begins. The most effective remedy is to follow the path of the pirates and block the new sources in real time. The technical means are available to do this, but the Achilles heel is the need for court approval. It is no small task to document the case for a site blocking order. It must be precise, and the target must be clearly identified. But what happens when the target shifts? Clearly, in a situation of piracy of live sports events there is no time to go back to the court to ask that the order be amended. The answer is to request a dynamic site blocking injunction.

Dynamic injunctions target the content rather than a specific Internet address, thus allowing the blocking order to shift to whatever address the pirated feed is coming from. It has been successfully used in the UK where piracy of English Premier League soccer broadcasts is all too prevalent. In Canada, Bell Media, Rogers Communications and other broadcasters have applied for a dynamic site blocking order to protect their broadcast rights for National Hockey League (NHL) games. That application is still pending before the courts, with a ruling expected early this year. Coming back to our traffic analogy, whereas static site blocking orders require that data packets be blocked according to pre-determined, unqualified criteria, dynamic orders allow data packets to be blocked subject to conditional traffic rules, depending on the time of day and other factors. Instead of a “Stop” sign, it is more akin to a “No Parking between 7 am and 9 am” sign, or one that prevents a left turn between certain hours on certain days. Both have their utility, depending on the nature of the content to be targeted, just as both fixed and conditional traffic rules are necessary to allow us to use the roads safely.

Site blocking is not a new technique although it is relatively new to Canada. Its usefulness goes well beyond disabling access to copyright infringing content. If last year’s discussion is any guide, the new “Online Harms” legislation expected to be introduced shortly in Canada will include site blocking as one of the measures that can be employed to combat harmful and illegal online content, such as promotion of terrorism and sexual exploitation of minors. Some complain that any blocking of content online is a violation of net neutrality and plays into the hands of autocratic regimes by legitimizing blocking of content. Neither of these arguments is convincing, in my view.

Net neutrality is a principle in which online service providers, who perform a role similar to “common carriers”, should avoid discriminating against or favouring some content or communications over others, particularly with respect to content in which they have a commercial interest. It does not mean that they have an obligation to transmit illegal content any more than the telephone company is obligated to put through calls that a subscriber wants blocked. As for the argument “If we do it, this gives the Chinese licence to do it”, I would make two points. First, the Chinese don’t need any western examples to erect the “Great Firewall of China”. They are masters at it and have already done it. Second, any targeted blocking in western countries is governed by transparent rules overseen either by the courts or independent regulatory agencies, with all kinds of due process built into the system. The same is clearly not true in China or in other jurisdictions that unilaterally decide to block outside content. We need to deal with real problems present in our economies, and not worry unduly about the supposed precedential effect.

While site blocking is becoming a regularly used tool in many countries, surprisingly it is absent in the United States, largely as a result of the misinformed campaign back in 2012 to “Stop SOPA”. SOPA was a piece of draft US legislation (Stop Online Piracy Act) that opponents claimed would have allowed “Hollywood” to censor the internet. All sorts of dire predictions were circulated, including chilling user-generated content, overreach by law enforcement, the demise of e-commerce and technical infeasibility. It was even claimed that SOPA would “break the internet”! On January 18, 2012, a large number of websites, including Wikipedia and Google, went dark during “Blackout Day” to illustrate the purported threat. Legislation that had enjoyed widespread support from lawmakers suddenly became toxic. Members of Congress ran for cover. The legislation was dead and buried, never (so far) to return. The fact that site blocking has been implemented in over 35 countries around the world, and yet the internet is still working (the last time I checked), is proof of the wild-eyed hyperbole that was flung around by opponents of the legislation.

The absence in the US of the kind of rules of the road that have worked so well elsewhere has made it more difficult to combat piracy in the United States. According to a recent study by MUSO, reported in Dataprot, the US is the world’s biggest source of illegal online downloads, almost 28 billion, (followed by Brazil and India), many of them from offshore sites. Targetted, transparent, court-sanctioned site blocking would surely help tackle this widespread problem. A very recent study (January 26, 2022) by the Information Technology and Innovation Foundation (ITIF),  a Washington DC based non-partisan think-tank, has argued that A Decade After SOPA/PIPA, It’s Time to Revisit Website Blocking”. The ITIF study documents the success of site-blocking in combatting online piracy in numerous countries around the world, and concludes with a series of recommendations for US lawmakers.

Meanwhile, back in Canada, we’ll have to await the results of the court deliberations on the dynamic blocking orders for hockey games and should soon see what blocking mechanisms are included in the Online Harms legislation. New rules of the road.

Site blocking is helping to maintain good order on the roads and prevent the mass transport of illegal goods over the internet highway. Like the highway code, properly regulated site blocking is to everyone’s benefit (except the offshore pirates). But let’s not worry about that. After all, the rules were made to protect those who contribute to society, not those who rip it off.

© Hugh Stephens, 2022. All rights reserved.

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