Poppy Time Again: Watch Out for Infringers!

Credit: Royal Canadian Legion

For the past couple of years at this time, as Remembrance Day (November 11) approaches, I have posted a blog on the copyright and trademark implications of the commemorative red poppies that become so ubiquitous on people’s lapels at this time of year, at least in certain countries. In both Britain and Canada, the main veterans’ organizations (Royal British Legion and Royal Canadian Legion) hold the trademark on poppies when used for commemorative purposes (and associated with the phrase “Lest We Forget”). They use the sale of poppy-themed products, and replications of the poppies themselves, as a fund-raising vehicle, with the funds earmarked for veterans’ welfare. They have also copyrighted a number of designs incorporating the poppies that are used on various products.

This year marks the centennial of using the poppy to raise funds for veterans needs while being a mark of remembrance for those who gave their lives in the First World War. In Canada, the poppy was adopted by the Great War Veterans Association (which later became the Legion) in July 1921, persuaded by Anna Guérin. After getting the poppy officially adopted in Canada, Mme. Guérin sailed for Britain to meet with the British Legion, which officially adopted the poppy in September of that year.

Despite the longstanding use of the red poppy by veterans’ organizations, others do not seem to be dissuaded by the Legion’s ownership of the poppy-related IP (intellectual property), nor are they influenced by the fact that the proceeds of sales go to benefit veterans. The internet is rife with all kinds of Remembrance Day poppy-themed products that have no relation to the Legion, with Amazon, Facebook, Shopify and Redbubble being among the main platforms that promote the infringing products. Search “Remembrance Day Products” on Amazon.ca and the first thing that pops up is an ad for a brooch featuring red poppies with the banner “Lest We Forget” superimposed across it, offered by an outfit called “Bling Stars”. Does Amazon care about the Legion’s IP or its mandate? Clearly not.

The problem has existed for several years, and while the Legion tries to go after transgressors, it does not really have the resources to do so. When it does, it goes after suppliers, not users, so you can be assured that if you show up to a cenotaph on November 11 wearing a non-Legion poppy facsimile, you won’t be slapped with a lawsuit. Still, it is discouraging that some suppliers take advantage of the commercial opportunity to flog poppy-related products without any regard for the Legion or the veterans that benefit from the sales of the products.

Interestingly, some of these “unauthorized” designs could well qualify for copyright protection, if they are original, (e.g. posters, or designs used on clothing such as scarves), yet they would at the same time be infringing the Legion’s trademark by incorporating the poppy in the design. The fact that a work can be copyrighted while simultaneously infringing another party’s trademark is not far-fetched. This can occur in photography, when a copyrighted photograph infringes another party’s copyright (such as a photo of a copyrighted painting) or trademark (photo of a trademarked logo), especially if the photograph is used commercially.

When it comes to infringement some people don’t give a damn, but others care and try to avoid it. I was approached by a small company in Indiana that makes decorated mailbox door covers, magnets, decals etc. Patriotic things for rural folks, like the American flag rippling in the breeze, and logos of college football teams. The company had decided to expand to Canada and market mailbox doors with the Canadian flag—and one with poppies! This company was diligent and respectful, wanting to do the right thing the right way. They ensured that their design of the Canadian flag was approved by the Department of Canadian Heritage and submitted their poppy design to the Royal Canadian Legion for feedback. They got approval of their design from Heritage, but the Legion turned them down flat. They were not interested in reworking the designs to make them acceptable (although a bouquet of flowers with a few red poppies in it would be unlikely to be a violation of the trademark, which is restricted to poppies used for commemorative purposes). Perhaps the problem was that this small company had not offered to license the design but were simply seeking the Legion’s approval. In any event, having read one of my blog postings on poppies and the Legion, they asked my advice.

I am certainly not qualified to provide any legal advice in this matter, and I was quick to tell them so. However, I did note that the Legion was zealous in protecting its IP and I could not rule out that they might decide to bring a trademark infringement case. I pointed out that Canadians are attracted to other things besides poppies—like maple leaves. Why not market a design with colourful, autumn maple leaves? The company thanked me for my views, noting that many other designs are popular with Canadians. I am not sure if that means they decided not to proceed with the poppy mailboxes—but I hope so.

I don’t have much else to add to previous blogs about the trademark and copyright issues related to Remembrance Day but do want to take this occasion to urge you to respect the IP of those who hold it if purchasing November 11 memorabilia. The Royal Canadian Legion’s trademark on the poppy was conferred by an Act of Parliament in 1948 as a gesture of appreciation for the sacrifice of veterans. That’s worth remembering.

And for those who missed it the first time around, below is my 2019 blog post outlining how the poppy came to be the symbol of remembrance, plus some of the controversies that have arisen from its use in this connection.

© Hugh Stephens 2021. All Rights Reserved

Remembrance Day Poppies and Intellectual Property Controversies

At the 11th hour of the 11th day of the 11th month in 1918, the guns on the western front in Europe fell silent. An armistice was declared. Germany didn’t formally surrender although it soon collapsed and the 1919 Treaty of Versailles treated it as a defeated country (with the results twenty years later that we all know about). Thus Armistice Day, now known as Remembrance Day in many countries including Canada, the UK and Australia, and Veteran’s Day in the US, was born. And for that reason, I am posting this blog on November 11.

Today, in particular in Canada and the UK, Remembrance Day is marked by the wearing of poppies. They spring up on the lapels of TV news broadcasters, politicians, and members of the public like mushrooms in autumn. In the US, although they are not so ubiquitous as north of the border or in Britain, they are more typically worn on Memorial Day, which is in May, and in Australia and New Zealand I am told that poppies generally blossom around Anzac Day, April 25. (When I was in Sydney last November 11, I spotted just one red poppy, an admittedly unscientific although first-hand survey). It is probably fairly well known (although with today’s young people it is probably wrong to make assumptions) that the wearing of the poppy is a memorial to the sacrifices made by those who fought and died, initially in WW1 for the Allied cause. Poppies grew prolifically in the killing fields of Flanders in Belgium, and still cover the countryside today. The poppies were made famous by the poem “In Flanders Fields” written by Canadian military doctor John McCrae in 1915 after seeing poppies on the battlefield after the loss of his friend in the second battle of Ypres.

It was an American teacher, Moina Michael, who campaigned to make the poppy the international symbol for remembrance of Allied war veterans, and to use their sale for veteran’s welfare. (Another prominent campaigner was Anna Guérin, who took inspiration from Ms. Michael and actively promoted adoption of the poppy). Between 1920 and 1922 the poppy was adopted by veterans’ organizations in the US, Britain, Canada, Australia and New Zealand. In Britain an organization known as the “Poppy Factory”, which still exists today, was set up to manufacture the paper poppies for sale for the support of veterans causes. That leads us into the main point of this blog, the intellectual property (IP) controversies that have arisen around the sale of the poppies. Since Remembrance Day is upon us, I feel compelled to explore whether there is a copyright angle to the wearing of poppies. And surprise! There is.

It’s a bit tenuous, mind you, although there is definitely an intellectual property angle as to who gets to produce and sell poppies. However, it is more of a trademark than a copyright issue but, hey, why quibble? It’s all IP. There have been controversies in both Britain and Canada involving production and sale of the little red flower. In both countries (and possibly elsewhere) the poppy is trademarked, by the Royal Canadian Legion (RCL) and the Royal British Legion (RBL), respectively, both respected veterans organizations. The Royal Canadian Legion’s website notes that the trademark was conferred by Act of Parliament in 1948, and is limited to the use of the poppy in remembrance;

The Canadian trademark for the Poppy includes both the Legion’s Poppy logo, as well as the Poppy symbol, as it relates to Remembrance. The trademark does not apply to the use of the actual Poppy flower, unless that usage is misrepresented as the Legion’s Poppy by associating it with remembrance or the raising of monies for a purpose other than the Poppy Campaign.”

However, the trademark extends to any colour or configuration of the poppy when used as a symbol of remembrance. This is increasingly relevant as various groups make their own versions available, from a white poppy symbolizing peace (some would say pacifism) to a rainbow-hued LBGTQ poppy that has caused some controversy.

Whether either of the Legions would take legal action against someone for producing and selling poppies of a colour other than red is an interesting question, but last year in Britain a seller at an outdoors market pleaded guilty to selling red poppies that had no association with the RBL. In Canada a group of knitters who were knitting poppies for the price of a donation, which they say they intended to give to the RCL, were reminded that they were violating the Legion’s IP. In addition to its statement of trademark, the RCL has a very clear copyright warning on its website;

“The material on this site is covered by the provisions of the Copyright Act, by Canadian laws, policies, regulations and international agreements. Reproduction of materials on this site, in whole or in part, for the purposes of commercial redistribution is prohibited except with written permission from The Royal Canadian Legion…”

And what are the materials marketed on the site? Just about anything that you can stick a poppy symbol on—playing cards, bags, baseball caps, pins, brooches, watches, T-shirts, magnets, umbrellas, scarves, toques, mittens, stuffed animals, even cellphone cases. You get the idea. And then there are digital versions of the poppy that you can purchase and use to embellish your Facebook page. All the proceeds go to the Legion and then on to its veterans’ welfare programs (although the Legion is not a registered charity). Nevertheless, the Legion IP monopoly on the poppy symbol (when used in connection with remembrance) has not been without its critics. Sean Brelyea, a former air-force officer and frequent commentator on veteran’s affairs, has argued that the Legion should no longer have exclusive control of the poppy symbol since it is not the only veterans’ organization in the country and, indeed, as the numbers of their veteran members has dwindled over the years owing to “natural attrition”, many of the Legion’s members have no association with veterans at all. Brelyea suggests that the Legion should licence use of the poppy symbol to other veterans’ organizations, with a concomitant sharing of the proceeds. I am sure that the RCL would argue that it alone is best placed to protect the meaning of the symbol and to ensure that poppies are effectively distributed so as to bring maximum returns. Last year (2018) over $16 million was raised.

Well, who knew that the innocuous looking poppy on people’s lapels on Remembrance Day carried such weighty IP concerns on its shoulders? When you drop your donation into the collection box, and pin your poppy on your jacket or shirt, remember…even the humble poppy can be controversial when it comes to trademark and copyright issues.

©Hugh Stephens

Local Content Production and Sensible Regulation: New Studies Demonstrate the Close Relationship

Credit: IIC

The Institute for International Communications (IIC) annual meeting held recently in the UK (London, October 5-7) featured, among other topics, a “streaming video roundtable”, an informative discussion of the issues surrounding growth of the VOD sector in the current regulatory climate. I was fortunate enough to be able to be in the audience (virtually) for that panel. It featured a regulator, an academic researcher and two representatives from the content industry. Informed by a number of market studies recently conducted by the research firm Frontier Economics, the panel explored the economic drivers of local content production and the relationship between production, and government regulation of the video streaming sector. The studies document that sensible regulation can make a difference. Policies that promote inward investment and allow the creative juices of AV producers to flow provide a range of benefits to consumers, local economies and culture, domestic production facilities and artistic output. Heavy-handed regulation and imposition of legacy conditions on new streaming services is counter-productive in terms of achieving growth in local content production from streaming services. Read the full article here (Local Content Production and Sensible Regulation: New Studies Demonstrate the Close Relationship).

© Hugh Stephens, 2021

Paying for Use of News Content? The US Launches Study on Free-Riding by News Aggregators

A couple of weeks ago I put up a blog posting looking at the history of copyright and news content over the past two hundred years or more. It discussed the longstanding question of who “owns” the news, and who should be compensated when news content is copied. This issue is not new but has become very topical in recent months and years because of the use of snippets of news content by digital platforms to attract and retain users on their services. In most instances the snippets (which encourage users to click on links) were not authorized or licensed. Given the parlous state of the print media, with advertising revenue streams drying up as ad dollars gravitate to digital platforms (the same platforms that are, in effect, monetizing the content produced by others), pressure has mounted from news publishers for governments to “do something” about the problem.

Various solutions have been proposed. The European solution has been to create an additional “neighbouring right” to give news content producers a supplementary, limited duration (two years from date of publication) right to license their material. France has been the most aggressive EU state in implementing the new provision, and just this past week it was announced that Facebook has reached agreement with a group of national and regional French newspapers to pay for content shared by Facebook users.  Australia played a game of chicken with Google and Facebook until both platforms blinked and suddenly found the means to reach licensing agreements with major Australian news publishers. Australia used the lever of competition law to bring the two gigantic digital platforms to heel. (For more details, see here and here).

In Canada, the newly-elected Liberal minority government proclaimed in its platform that within 100 days (of Parliament being recalled) it would introduce legislation that would “require digital platforms that generate revenue from the publication of news content to share a portion of their revenues with Canadian news outlets”. Across the Atlantic, the British government has recently (April 2021) established a Digital Markets Unit (DMU) within its Competition and Markets Authority. The DMU was tasked by the UK’s Digital Secretary to consider a possible code to govern the relationship between platforms and content providers, such as news publishers, although the impetus for the introduction of regulation in Britain is less than elsewhere, having been forestalled by pre-emptive actions taken by both Google and Facebook. The internet giants, seeing the writing on the wall, moved to head off a regulatory approach by reaching agreements with British publishers for payment for content in late 2020.

Until recently, the world’s largest media market globally, the United States, has been relatively unengaged in this process although legislation has been (re) introduced into Congress to provide US news providers with an exemption from anti-trust laws for a limited time so that they can negotiate collectively with digital platforms like Google and Facebook without running afoul of anti-competition laws. Known as the Journalism Competition and Preservation Act, it has bipartisan support, having being introduced by U.S. Senators Amy Klobuchar (D-MN) and John Kennedy (R-LA) and Representatives David Cicilline (D-RI) and Ken Buck (R-NY). That legislation has received two readings and been referred to the Senate Judicial Committee.

The process in the US has now taken a step further with the announcement on October 12 by the US Copyright Office (USCO) that it will be undertaking a “Study on Ancillary Copyright Protection for Publishers”.

The USCO, in its introduction, states that:

“At the request of Congress, the Copyright Office is undertaking a public study to evaluate the effectiveness of current copyright protections for publishers in the United States, with a focus on press publishers.”

Noting that the EU has brought in a neighbouring (or ancillary) right for news publishers, the announcement goes on to say that, “The Office will consider whether or not similar protections are warranted in the United States, as well as the potential scope, source, and appropriate beneficiaries of any such protections.”

A Federal Register notice seeks public input on a number of questions, and the Office will hold a public roundtable in early December.

The Congressional request came from Senators Thom Tillis (R-NC), Chris Coons (D-DE), John Cornyn (R-TX), Mazie Hirono (D-HI), Patrick Leahy (D-VT), and Amy Klobuchar (D-MN) who sent a letter to Register of Copyrights, Shira Perlmutter, requesting the Copyright Office study the viability of adding ancillary protections to U.S. copyright law that would require platform aggregators to pay publishers for excerpts of content they provide for others to view. The request was one of several copyright-related studies initiated by Congress over the past summer. In examining the ancillary copyright issue, the USCO states that it will consider;

“… the potential scope, source, and appropriate beneficiaries of any such protections. The Office will also consider how potential ancillary copyright protections might interact with current copyright law, looking at issues including the underlying rights of writers, photographers, and other authors; existing rights of publishers; and exceptions and limitations such as fair use.

Additionally, the Office will examine whether any hypothetical new protections might apply to publishing sectors other than news, the potential impact of such protections on users including news aggregators, and the interaction between ancillary copyright and the United States’ international treaty obligations.”

That’s a lot to take on.

The Federal Register notice provides the rationale for the study; the decline of the traditional news publishing business. Over the past decade employment in newspaper newsrooms has dropped by 40 percent and one in five newspapers in the US has closed. Meanwhile online news aggregators have grown exponentially to the point where they are now the preferred or initial source of news for a majority of digital news consumers. Noting that there already exist certain copyright protections for news publishers, such as copyright in the print edition as a whole or the website containing individual news articles, as well as individual journalistic works if written by staff writers or if rights have been assigned, the notice also notes the limitations on copyright, such as content that cannot be copyrighted (facts) as well as fair use.

There is already a form of additional protection for publishers that was frequently applied in the past in the US. This is the so-called “hot news” doctrine that emerged from the 1918 US Supreme Court case, International News Service v Associated Press (the INS case). The additional protections have some of the characteristics of ancillary copyright. To quote from the recent work, “Who Owns the New: A History of Copyright” (Will Slauter, Stanford University Press, 2019, p. 227);

In INS, the court recognized…a ‘quasi-property’ in news that was entirely independent of copyright…(I)t could be enforced only against business competitors, not against members of the public. Although readers were free to discuss and share news, press agencies were not allowed to reproduce news gathered by a competitor until its ‘commercial value’ had passed”. This established the tort of misappropriation that became known as the “hot news doctrine”. In Slauter’s words, it protects organizations that collect time sensitive information from free riding by competitors. Why not use it to protect news sources from appropriation of their property by news aggregators? It’s not that simple.

This is the USCO’s take on INS (as outlined in the Federal Register notice);   

“Because International News Service was based on no-longer extant federal common law and pre-dated the 1976 Copyright Act and modern First Amendment jurisprudence, this tort’s continued viability is unclear… even if a hot news misappropriation claim could be brought against a news aggregator, it would face a significant hurdle in avoiding preemption by the Copyright Act”.

The notice then examines various models that are being implemented or studied in other jurisdictions with particular reference to the EU and Australian models. Coming to the point of the study, it requests input and comments on three issues;

“(i) The effectiveness of current protections for press publishers under U.S. law;

(ii) whether additional protections for press publishers are desirable and, if so, what the scope of any such protections should be; and

(iii) how any new protections for press publishers in the United States would relate to existing rights, exceptions and limitations, and international treaty obligations.”

Comments are due by November 26.

I am sure there will be plenty of response from various stakeholders, from news publishers to internet platforms. Hopefully the USCO study will bring the US more into alignment with what is happening elsewhere in the world with regard to “encouraging” digital news aggregators to find ways to compensate news producers for the content that they, the platforms, use to attract and retain users.

Given the increasing momentum that the study and public hearings will give to news publishers in their quest for compensation from aggregators for the use of their product, it is possible that just the process alone will be enough to bring publishers and aggregators together to strike deals. However, until the Journalism Competition and Preservation Act passes Congress and becomes law, content producers will be disadvantaged since they will not be able to negotiate with the large and powerful platforms as a collectivity owing to anti-trust laws. They run the risk of being “picked off” by individual deals offered by the aggregators, on their terms. It is time to pass that legislation.

Now that the process of reviewing the terms of copyright to deal with the uncompensated and unlicensed use of news content by internet aggregators is underway, you can expect this issue to move more to the front-burner in the US, as it has in several other countries. Whatever mechanism the US eventually chooses, it seems inevitable (to me) that some form of revenue-sharing through licensing of content by the aggregators from news content providers will be the end result. After all, if Google and Facebook can come to an arrangement with Rupert Murdoch in Australia, or with French publishers, or north of the border with a number of Canadian publishers, why not in their home market?

Of course, the precedent-setting nature of the payment agreements in Australia and France helps explain why the two platforms engaged in such protracted trench warfare with the governments and courts in those countries, fighting for every inch of territory. But in the end, it was self-defeating, and they waved the white flag. So, while I believe there will inevitably be a similar outcome in the US, just how, when and on what terms are still the big questions. The just-launched US Copyright Office study on ancillary copyright–and the public input and roundtable that will be part of it—are important parts of the process that will help shape the outcome. We should follow it closely.

© Hugh Stephens, 2021. All Rights Reserved.

Dealing with Historical Figures Who Fall Out of Favour:  Don’t Attack the Artwork

“Where James Cook Once Stood” Credit: Author

These days it is not uncommon to see red paint splashed on the statue of some controversial historical figure, or even to have the statue defaced, vandalized or perhaps torn down from its pedestal. It has happened to  Christopher Columbus, Winston Churchill, Robert E. Lee, and Queen Victoria, to name just a few recent targets. Other statues of people who are not such household names have also been targeted. In Britain, the statue of Edward Colston, a 17th century slave trader, was chucked into the River Avon. In the Washington, DC, the statue of Albert Pike, a Confederate officer and prominent Freemason, was torn down (Pike’s was the only statue to a Confederate officer in the US capital). One expects to see statues topple when political regimes change. Many of us will recall the fall from grace (and from his plinth) of Saddam Hussein when Iraq was liberated (briefly). Colonial figures are routinely replaced upon independence (you won’t find any statues of Cecil Rhodes in today’s South Africa, although surprisingly one endured on the campus of the University of Cape Town until 2015).

There is much debate about the rights and wrongs of defacing or toppling statues, especially when resulting from the unsanctioned actions of just a few individuals and not as the result of wider public consultation. A case can be made for removal or re-interpretation of monuments to figures from the past whose historical record may be not without blemish. A statue could be removed to a more suitable place, (like a museum), or have additional explanatory text added to contextualize it with respect to contemporary values. One aspect of the debate that seems to have been completely overlooked, however, is any consideration for the rights of the artist who created the statue in the first place. No-one would be prepared to allow protestors to throw red paint at or slash a portrait of a controversial historical figure in an art gallery. Why is it okay then to vandalize another form of art?

There are many reasons, some better than others, for removing and replacing statues. What some call “cancel culture”, others consider the righting of historical wrongs. Often, the interpretation of the contributions or failings of an individual honoured by a statue is not consistent across various groups in contemporary society. Christopher Columbus is a good example. Hailed by many as the “discoverer” of the New World, his “discovery” ultimately led to tragic consequences for the “discoverees”, the collapse of the Mayan and Inca Empires, the ravages of European diseases and the resultant decimation of native populations, the seizure of indigenous lands in North and South America and so on. It is understandable that, from the perspective of current indigenous groups, Columbus’ arrival is not exactly a cause for celebration. Statues of Columbus are not a particularly happy reminder of the last 500 years of history. On the other hand, if Columbus had not sighted Watling Island in the Bahamas on October 12, 1492, would the course of history have changed much? After all, John Cabot reached Newfoundland just five years later and many other explorers followed. Given the advances in maritime navigation at the time, it is hard to believe that the New World would not have been “discovered” by some other European navigator shortly after if Columbus had not made his epic voyage. Still, Columbus has become the physical embodiment of discovery, for better or for worse.

If Columbus has become a polarizing figure and the incarnation of “blame” for the conquest of the Americas by Europeans, so too has another explorer, Captain James Cook,  become controversial. Cook was a remarkable seaman. Born in Yorkshire in 1728 in modest circumstances, Cook joined the merchant navy as teenager, working on coal ships on Britain’s east coast. He did not join the Royal Navy until he was 27, entering as an Able Seaman. He had a talent for cartography and surveying and much of his early career involved mapping the coast of Newfoundland and the St. Lawrence River during the siege of Quebec. He was about as far from the model of an aristocratic British naval officer as one could find. Subsequently he went on to circumnavigate the globe, explore the South Pacific, Hawai’i and the coast of Australia, circumnavigate New Zealand, and explore the west coast of North America as far as Alaska. He was, in short, an explorer extraordinaire.

Because of his exploits, a number of statues of Cook exist around the world. There are several statues in Australia, one in Christchurch, New Zealand and another in Gisborne, in Hawai’i, Alaska, Victoria, BC (where yours truly is based) and in the UK, in both London and his hometown of Whitby. The full list can be found here.  It is fair to say that many of them are controversial because of Cook’s legacy of contact with native peoples, although Cook was never involved in the slave trade. (Cook was killed in an altercation with native Hawai’ians on February 14, 1779). As an example of his mixed legacy, the Cook statue in Sydney, Australia was defaced. At the one in Whitby, England a local guard of volunteers was mounted after the statue was covered in graffiti and listed as a target by a website called “Topple the Racists”. It is worth noting that the website does not advocate vandalizing or tearing down statues on the list. Rather it suggests that “It’s up to local communities to decide what statues they want in their local areas. We hope the map aids these much-needed dialogues. Taking down a statue could also include moving it to a museum, for example.

The one in Gisborne, NZ, was defaced (“Black Lives Matter and so do Maori”) while the one on Victoria’s Inner Harbor was unceremoniously toppled and tossed into the drink by a group of demonstrators protesting Indian residential schools in Canada. Cook may have been a victim of circumstances as some of the crowd who had been protesting in front of the provincial legislature seemed determined to find a target for their wrath. At first they moved against a nearby statue of Queen Victoria but with police between them and the statue, they decided to target the Cook statue instead, pulling it down with ropes and throwing it into the harbour. Cook was defenceless. No-one stood up for him.

Not surprisingly, the toppling of the statue was not universally received with applause. Many citizens of Victoria objected to the decisions of a few as to what public art could be displayed, no matter how sympathetic they were to the underlying cause of the protest. Arguments can also be made that Cook was the wrong target. The historical record suggests that he both respected and was respected by the native leaders with whom he came into contact while exploring the west coast of what is now British Columbia. He certainly had nothing to do with Indian residential schools.

But I want to return to my point about the moral rights of the sculptor being completely ignored in the debate over the political correctness of attacking public works of art. The Cook statue in Victoria is a case in point. While there were many irate letters to the editor, as well as some supporting or at least professing to understand the reasons for the action, the rights of the sculptor were entirely missing from the debate. The statue torn down in Victoria was, in fact, a clone of the Cook statue in Whitby, England. Similar duplicates exist in Waimea, Hawai’i and Anchorage, Alaska. The one in Victoria was not even cast in bronze. It was a fiberglass copy of the original work created by noted Scottish sculptor John Tweed, known as the “British Rodin”. The copy itself was produced by Derek and Patricia Freeborn Ltd, a firm in Britain noted for making models and reproductions used in the film industry.

Tweed was a prolific sculptor who tended to produce stentorian images of military figures, standing tall and proud. He memorialized, among others, Sir Robert Clive, who was instrumental in establishing British rule in India and Lord Kitchener, the WW1 British Field Marshall, as well as James Cook and many, many others. Tweed died in 1933 so his work will be out of copyright, but what would he have said to see his creations treated as objects of scorn and derision?

There is a famous portrait of Cook displayed at the National Maritime Museum in Greenwich, painted in 1775 by Nathaniel Dance-Holland. It is the work on which most likenesses of Cook are based. No-one would think of defacing or damaging this work of art; why should a likeness of Cook—or any other historical figure– in another form be fair game for protestors?

Enough, I say. By all means protest, but do not destroy or damage works of art in the process. If protestors have no respect for the artist who created the work, at least think of the integrity of the art object.

Personally, I favour keeping our public art up to date, and reflective of contemporary society. That does not mean pulling down statues of people whose values are out of sync with today’s beliefs and mores, but instead either moving the work to a more appropriate location where it can be contextualized (such as a museum) or perhaps re-interpreting the person’s life and achievements with additional information. That also avoids desecration of someone’s creation and work, whether or not one agrees with or likes the subject.

Will Cook go back up to his plinth in Victoria harbour? At the moment, that is an open question.  Right now, it is a base without a statue, a piece of unfinished business that attracts more questions than answers. I would like to see James Cook’s likeness, modelled on Dance’s famous image, resume his stance overlooking Victoria harbour. Perhaps Cook could be accompanied by a statue of Maquinna, the chief of the Mowachaht people of Nootka Sound, the dynamic native leader with whom Cook met and negotiated on his arrival in 1778. Mind you, unlike Cook, Maquinna was a slave owner (see White Slaves of Maquinna: John R. Jewitt’s Narrative of Capture and Confinement at Nootka, written 1807, first published 1815). History is complex.

Sculptors are artists whose work is as entitled to respect as other forms of art, even if the object of that art falls out of favour. Of course, it is easier to remove a tyrant’s portrait than his statue, which I guess is why statues are chosen–for their permanency. Nonetheless, for those who wish to protest, do so in a way that respects the artist and encourages debate over interpretations of history, with appropriate actions to reflect new interpretations if they are widely shared. Unilaterally deciding to vandalize public art is inexcusable no matter who the target is.

© Hugh Stephens, 2021. All Rights Reserved. 

Do News Publishers “Own” the News? (And Should They be Compensated when Others use News Content they Publish?)

The issue of whether news publishers should receive compensation when their content is used by “others” (such as internet platforms, specifically Facebook and Google) has become a hot topic in a number of countries of late. It has arisen because of the near financial collapse of much of the print media, particularly newspapers and news magazines, as the bulk of advertising has gone online. The lion’s share of ad revenues now goes to the platforms that aggregate content rather than produce it themselves. Some shrug and say that just as Gutenberg’s printing press put scribes and illuminators of Bibles out of business, one cannot stop the march of technology. In their view, the old-fashioned news business will just have to adjust or go the way of the dodo.

Historical Challenges to News Publishing

It is a historical fact that news publishers have been challenged and required to adapt multiple times over the centuries as business practices and technology have evolved. Some fairly recent instances include the introduction of the telegraph, then radio and TV, and now the internet. Although in the past, publishers adapted and reached accommodations that enabled them to survive, one cannot help but wonder if this time they’ll be able to stay in business without legislation or regulation requiring compensation for use of their content. If we are no longer able to live in a world with a vibrant Fourth Estate as a result of the monopolization of advertising revenues by the major internet platforms, what will be the implications for our society and for democracy?

The Challenge Today: Different Responses in Different Countries

The issue has been hotly debated in Germany, Australia, France, Canada, the US and elsewhere, with different remedies coming forward. These range from the EU approach of granting the publishers a new “neighbouring right” over their content for a limited duration (two years from date of publication) to legislation in Australia that approaches the issue from the perspective of competition law, requiring specified quasi-monopoly platforms (Facebook, Google) to negotiate in good faith with publishers to pay for use of content, failing which government will arbitrate. The newly elected Trudeau government in Canada pledged in its party platform that it would “introduce legislation, within 100 days, that would require digital platforms that generate revenues from the publication of news content to share a portion of their revenues with Canadian news outlets”, based on the Australian model, while allowing publishers to work together to bargain collectively. To date, the results in various countries have been mixed. The question has also been raised (“Who Should Pay for the News?”) as to the impact the funding of news publications by internet platforms or government might have on journalistic integrity and editorial independence.

Google and Facebook have grudgingly come to the table and begun discussions with some publishers in some countries over payment for use of content. Threat of government action has been the catalyst to make these negotiations happen. While progress is being made in terms of indirectly flowing back to news publishers some of the advertising revenues that their content generates for the platforms by attracting and retaining users, this begs the question of what the news content providers are actually “selling”, and what they actually “own”. At the end of the day, who owns the news?

Who Actually “Owns” the News?

This is not a new issue; in fact it has been debated for centuries. A full and recent exposition of this question is found in the aptly named book, Who Owns the News? A History of Copyright”, by Professor Will Slauter (Stanford University Press, 2019). In his book, Slauter takes readers back to Tudor and Stuart England, when the rights to publish certain forms of news (prices of commodities, deaths, news from abroad) were granted as licensed monopolies. Not surprisingly, others not awarded the prized licences argued that they too should be able to report the news, given the public’s interest. By the 18th century in Britain, after the passage of the Statute of Anne in 1710, the battle over copyright and news was launched. The argument was made that those who had acquired the news through their own efforts and expense merited protection (a monopoly on the news they had so laboriously obtained) for a limited period of time to allow them to harvest the fruits of their labour. Their work was not original but deserved protection because of belief in the “sweat of the brow” doctrine. Copyright was one potential means to achieve this protection.

But there were many opposed to granting news monopolies, especially those who benefitted from the “free ride”. They argued that “news” is a public good, and the facts that constitute news cannot be protected. This reflects the legal position today; facts cannot be copyrighted. The 1886 Berne Convention, the first international copyright treaty, explicitly excluded “news of the day” from copyright protection, an exclusion maintained to this day in Berne’s revised 20th century text (although what constitutes “news” can be debated). However, back in the 18th century, the factual news of the day was not always readily available, and in many cases had to be obtained through considerable effort.

A Reward for “Breaking News”?

As an example, if Ruritania declares war on Grand Fenwick, that is a fact. But in earlier times, this fact only became known because a major paper, let’s call it the London Morning Standard, maintained a correspondent in the capital of one of those faraway places. That correspondent, on learning of the declaration of war, hired a coach and driver to take his dispatch to the nearest seaport, where it was entrusted to the captain of the fastest ship available. Upon arrival in England, the captain conveyed the news report to a despatch rider who rode post-haste to enable the Standard to break the news in its morning edition. The Standard had a scoop, but only for a few hours because when the evening and provincial papers came out, they simply rewrote or often simply copied the story from the Standard, sometimes with attribution, sometimes not. There is a vague analogy here to internet platforms profiting from the hard work of professional journalists and publishers without payment, while selling advertising against the “free” content.

One solution at the time might have involved extending copyright law to cover content in newspapers, although the Statute of Anne was conceived primarily for literary works. Despite action by some owners to gain copyright protection for newspaper or magazine content by entering editions at Stationer’s Hall (a requirement for copyright protection), most publishers freely reprinted content obtained from rival papers. The prevailing business practices did not support exclusivity. Almost all editors engaged in some form of copying (and took pride in their selection of what to copy).

Cut and Paste in the Newspaper Business

“Scissors and paste” remained a common practice in newspaper publishing in both Britain and the US through much of the 19th century, but lack of attribution was considered by many to be plagiarism. Some editors got revenge by baiting copyists with false news. Slauter (pp.111-112) cites one example where the Courier of New York, whose carefully acquired news reports of the Russian victory in the Polish-Russian War of 1831 had been copied without attribution, struck back by sending a bogus version of their morning edition to the offices of their competitors claiming that the previous day’s news was erroneous and that in fact the Polish people had emerged victorious. Several papers fell for the bait, stopped press and printed editions announcing the Polish victory. But the victory was pyrrhic; the Courier’s editors were denounced for printing false news! Or was it “fake news”? Despite this gamesmanship, there was little interest in trying to copyright news content. However, by the late 19th century, and the advent of the telegraph and press associations that led to pooling of content, attitudes began to change.

Changing Attitudes to Copying

Slauter recounts how by the early 20th century in Britain, a series of court rulings had confirmed that newspaper articles could be protected by copyright but, as is the case today, a distinction was made between the facts of news (not protected) and the expression of those facts (subject to copyright protection). Attempts to establish a special, limited duration (18-48 hours) copyright protection for news were not successful although a Bill to this effect passed the Lords in 1900 but was not adopted by the House of Commons. In the 1911 Imperial Copyright Act, fair dealing was introduced allowing portions of copyrighted works to be reproduced for purposes of research, criticism, review or “newspaper summary”. In the US, with the formation of press associations, the thrust was to protect “exclusivity” in news through competition law. The US Supreme Court ruled it was unfair competition to use the exclusive content (hot news) of another agency until such time as the exclusivity was no longer commercially exploitable.

The Challenge of Radio

The advent of radio brought another challenge, and a struggle over who could control the news. The situation played out in different ways in different countries. In Britain, the BBC was granted a government charter and a broadcast monopoly (which lasted until 1972 in radio) but initially its ability to cover news was heavily restricted. Its news coverage had to be drawn from wire service copy and no news broadcasts were permitted before 7 p.m. in order to avoid competing with the newspapers for subscribers. As a public funded government monopoly, it did not compete with newspapers for advertising.

In the US, broadcasting remained in private hands (as it was initially in Britain), and did seek advertising dollars. While some newspaper publishers acquired broadcast licences, others did not. This set the stage for competing views of whether radio should be allowed to broadcast news. Originally, many broadcasters simply read newspaper headlines on the air (and remember, facts are not protected by copyright). Many newspapers tried to restrict what material broadcasters could use, thus beginning the so-called “press-radio war” of the 1930s. The two major US radio networks at the time, NBC and CBS, initially agreed to restrict news broadcasts to two 5 minute broadcasts a day, one no earlier than 9:30 am (to protect the morning papers) and one no earlier than 9 pm (to protect the evening dailies). The brief broadcasts were to whet the appetite of listeners to go out and buy papers. The networks also agreed to give up their own news gathering operations and instead to receive copy from Associated Press. However, the agreement (Biltmore Agreement of 1933) lasted less than two years before it began to fall apart primarily because independent radio stations refused to play the game. They decided to broadcast news at the time and in the format that suited their listeners and advertisers. News is an elusive commodity to corral.

News Reporting involves Creativity, Skill and Judgement

While attempts to monopolize the news were unsuccessful because of the generic nature of factual information, there is no question that news reporting can be protected as intellectual property. It is the essence of the fact/expression dichotomy in copyright. An investigative news report, carefully researched and written, perhaps illustrated with exclusive photos, is certainly the expression of what that news item is about—and is protectable by copyright. When the CBC recently sued the Conservative Party of Canada for using CBC television clips of interviews with Liberal Party leader Justin Trudeau to create political attack ads, the Federal Court recognized the CBC’s ownership of the clips. As I noted in a recent blog on this subject, the Court found that the broadcast incorporated “the artistic design, production services (lighting, camera work, audio, etc.) and journalistic decisions (i.e. the flow of discussions and the election and posing of questions) which are the skill and judgment of the CBC and their employees”, making it a creative work subject to protection even though what Justin Trudeau had said was a matter of public record. The fact that it held the copyright on the broadcast material did not lead to a successful outcome for the CBC, however, because the judge ruled that the Conservative Party’s use of the clips fell under fair dealing. Nonetheless, the ownership of the news material was not in doubt.

Some Key Questions

This brings us back to the questions posed in the title of this blog posting. Do publishers “own” news content, and if so, what exactly do they own? Should internet platforms that “scrape” content from publishing sites (headlines and short excerpts) be required to compensate the creators of the content? These are not easy questions to answer.

While it is by now well established that publishers, broadcasters and journalists can exercise copyright over news reports that involve creative expression, the separation of facts from expression is not always straightforward. What about a news headline? Does it just convey the facts or is it, as Agence France Presse (AFP) contended in its 2005 suit against Google, a creative expression capturing qualitatively the most important aspects of a story, painstakingly created. (The case was settled out of court, leading to a licensing agreement for AFP content). If a piece of content is protected by copyright, does reproduction of a snippet constitute fair use or fair dealing, or does the publication of the snippet reveal the essence of the content and undermine the publisher’s economic rights? Is the best solution to empower publishers with the creation of a new neighbouring right, as has been done in the EU, or is the most effective solution the application of competition law to ensure that the market power and economic dominance of the major platforms is constrained? And what about that thorny question of journalistic independence? If a major publication is taking money from, say, Google, will this influence its coverage of Google when it comes to anti-competitive practices, for example?

What is the Way Forward?

Each country has to find its way forward in a way that is compatible with international legal frameworks (for copyright and competition law) and treaty obligations, and which takes account of political realities and domestic politics. But the trend is clear; either the platforms find a way to strike deals with news publishers or governments will make it happen, one way or the other. In the struggle of the news industry to survive, various remedies have been proposed. Requiring giant, dominant internet platforms that aggregate and display news content to reach licensing deals with content providers is an important part of the answer. It is part of the continuum of the history of news, and who “owns” it.

© Hugh Stephens 2021. All Rights Reserved.

Coincidentally, as I was posting this blog, the US Copyright Office announced a “a public study at the request of Congress to evaluate current copyright protections for publishers. Among other issues, the Office will consider the effectiveness of publishers’ existing rights in news content, including under the provisions of title 17 of the U.S. Code, as well as other federal and state laws; whether additional protections are desirable or appropriate; the possible scope of any such new protections, including how their beneficiaries could be defined; and how any such protections would interact with existing rights, exceptions and limitations, and international treaty obligations.” Public input is sought on a number of questions. Comments are due on or before November 26, 2021.

Thank You Professor! “Explaining” Section 230 to Canadians

Source: http://www.shutterstock.com (modified)

Unabashed booster of—and apologist for—Section 230 of the 1996 Communications Decency Act (CDA), Eric Goldman, recently published an encomiumto help Canadians understand a crucial US law that’s become a flashpoint for heated discussions” (according to the introduction to Goldman’s article distributed by the Santa Clara University School of Law). It was initially released through the Centre for International Governance Innovation (CIGI), a prominent Canadian think-tank at the University of Waterloo. Goldman is Associate Dean and Co-Director of the High Tech Law Institute at the university, which is located in the heart of Silicon Valley). Thanks to Goldman, we poor benighted Canadians can finally begin to fully comprehend how fortunate we are that the new NAFTA (USMCA, called CUSMA in Canada) requires each country—that is the US, Canada and Mexico—to maintain legal rules that, in Goldman’s words, “resemble Section 230”. That provision in CUSMA is Article 19.17. More on the CUSMA treaty language below. But first….

What is Section 230?

Section 230 of the CDA provides that internet intermediaries (internet platforms, websites, social media services) are not liable in civil law for content posted by users. The law was originally passed in order to provide platforms with the means to control illegal or harmful content. As I wrote in an earlier blog post (“Section 230 is Dangerous–Keep it Out of Trade Negotiations”), the problem arose because an online website, Prodigy (no longer in existence) was successfully sued because it had not moderated an online posting put up by a user that allegedly defamed the plaintiff. The court considered that because Prodigy had the ability to moderate the content and did so on occasion, (but not in this case), it was a “publisher” (like a newspaper) and was thus liable for defamation. On the other hand, other websites that made absolutely no attempt to moderate content on their platforms, whether the content was objectionable or not, were considered “distributors” and were off the hook. There was thus no incentive for online platforms to lift a finger to remove obscene, defamatory or content that would be objectionable to children, one of the early concerns about the spread of online content.

The solution was Section 230, which provided, in the words of (now Senator) Rod Wyden, one of its architects, both a sword and a shield. The sword was the ability to take down objectionable content; the shield was immunity from prosecution for doing so. However, over the years its intent has become badly distorted through a series of rulings by various US courts to the point where today the legislation is interpreted as a blanket exemption from responsibility for digital platforms for any content posted by users.

Abuses enabled by Section 230

The misapplication of Section 230 is largely responsible for a general lack of accountability on the part of internet intermediaries for any content that they host, distribute or enable, allowing them to refuse to take action against user-generated abuses. This has led to a litany of abuses without legal remedy against the platforms that turn a blind eye to, enable or even promote, harmful content such as sexual exploitation of children, illegal gambling, false and harmful information, revenge porn, hate speech and so on. It is so wide-sweeping that it has allowed services like AirBNB to thumb its nose at municipalities seeking to enforce bylaws against temporary rentals because the illegal listings were posted by users. (There are limited exceptions to platform immunity under Section 230, namely copyright infringement and, since passage of the SESTA/FOSTA legislation in 2018, sex trafficking, a carve out vigorously opposed by most of Silicon Valley).

Tech platforms love Section 230, as do those who use the content to abuse others, promote illegal activities or spread conspiracy theories. Responsible content producers would like to see some accountability on the part of the platforms. Governments too are grappling with the issue of how to prevent the internet from becoming a law-free zone and to hold businesses that profit from user-generated content to account for the content they distribute and promote.

Because of the many abuses, Section 230 has come under increasing scrutiny in the US. Ironically, when it came under attack by the Trump Administration, it was not because of lack of content moderation by the platforms, but rather because they had—finally and under extreme provocation owing to the proclivity of Trump and his supporters to stretch the truth—exercised some control over the content propagated through their services. This infuriated Trump supporters who accused the platforms of political bias and threatened to bring changes to Section 230. As I commented at the time, (“Reforming Section 230 is the Right Idea—But Not When Done in the Wrong Way for the Wrong Reasons”),

Trump has decided to use Section 230 in order to take personal revenge on Twitter, not to reform it or to address the fundamental issues inherent in the abuse of its immunity provisions by internet intermediaries who have used it to avoid taking down clearly harmful content. By making this allegedly about “silencing conservative voices”, Trump has in effect hijacked the issue of Section 230 reform.”

Of course it didn’t happen, and for several months now we have all been spared the daily torrent of personal, misspelled, vindictive and inaccurate tweets from the former president. For now, Section 230 in the US remains unchanged.

Goldman’s “Five Things to Know”

However, Goldman and his Canadian fellow-cyberlibertarians such as Michael Geist at the University of Ottawa are big fans of Section 230. During the CUSMA negotiations, Geist joined with a number of American academics to write a letter to the chief trade negotiators of the three countries urging the inclusion of a Section 230 provision in the Agreement. He also publicly urged Canadian negotiators to cave in and give the US “a win” on this point. For Goldman and Geist and others of their ilk, Section 230 is the foundation of the internet, enabling free speech, competition, innovation, democracy and more. In his panegyric to Section 230, written for Canadians, Goldman cited “Five Things to know about Section 230”. These are;

  1. Internet Exceptionalism and Section 230
  2. Section 230 Enhances the First Amendment
  3. Section 230 Enhances Competition
  4. Section 230 is the Law in Canada (But Not Really)
  5. Gutting Section 230 Won’t Make the Internet Better.

Let’s examine these assertions and deconstruct the arguments just a bit.

Internet Exceptionalism

With regard to internet exceptionalism, Goldman argues that although the internet is treated differently from and more favourably than other media, Congress got it right when it passed Section 230. He is happy to see the laws governing libel, defamation, hate speech and the other checks and balances that society has imposed on those who are granted the privilege to publish and disseminate information suspended when it comes to the internet. It all seems to hearken back to John Perry Barlow’s 1996 “Declaration of the Independence of Cyberspace”, the mantra of the Electronic Freedom Foundation, a collection of bilious assertions that the internet is beyond the regulations of governments and not subject to national laws.

The First Amendment

Does Section 230 enhance the First Amendment, the “free speech” provision in the Constitution of the United States? First, we have to ask, “does the First Amendment put any limits on free speech?”  The answer is, “of course it does.” The First Amendment does not protect a number of forms of speech, such as obscenity, defamation, perjury, blackmail, incitement to unlawful action, and true threats. The courts have an important role in enforcing these reasonable limitations, but according to Goldman, Section 230 contains “important procedural advantages” that allow courts to dismiss lawsuits over third party lawsuits quickly and relatively cheaply. Put another way, Section 230 hobbles the courts from exercising their responsibility to ensure that free speech is exercised in a way that does not harm others.

Section 230 and Internet Competition

Does Section 230 enhance competition? In Goldman’s upside-down world it does because it keeps the door open to new entrants who don’t have to worry about investing resources in anything as wasteful as content moderation. And we have the proof that this policy increases competition, right? I mean, look at the robust competition that Facebook and Google have to deal with. Or did I miss something?

Is Section 230 the Law in Canada?

According to Goldman, Section 230 is sort of the law in Canada. This is because the new NAFTA (which I will call USMCA/CUSMA hereafter) contains Article 19.17 that says, in part;

“…no Party shall adopt or maintain measures that treat a supplier or user of an interactive computer service as an information content provider in determining liability for harms related to information stored, processed, transmitted, distributed, or made available by the service, except to the extent the supplier or user has, in whole or in part, created, or developed the information”.

According to Goldman, “when Canada ratified CUSMA it committed to providing Section 230-like immunity against internet service liability for third party content”.

However, in USMCA/CUSMA there is an important footnote that reads;

a Party may comply with this Article (19.17) through its laws, regulations or application of existing legal doctrines as applied through judicial decisions”.

In other words, Canadian case law will continue to apply and there is no explicit requirement to create safe harbours in Canada for interactive service providers under this provision. I discussed this in detail at the time in a blog posting labelled “Did Canada get “Section 230” Shoved Down its Throat in the USMCA?”

Goldman argues that Section 230 is the law in Canada but, with respect, that is a highly debatable claim. It’s a brave move for a non-legal practitioner to challenge a Dean of Law at a prominent university on a point of law but even little ol’me knows that a law is not a law unless it has been enacted into legislation. In Canada that is done by an Act of Parliament. True, Canada ratified the USMCA/CUSMA and, as part of the process of so doing, introduced a package of legislative amendments (Canada–United States–Mexico Agreement Implementation Act) to effect changes to various Canadian laws as required by the CUSMA treaty. For example, as part of this legislative package, there were amendments to a variety of statutes ranging from the Fertilizers Act to the Copyright Act and Special Import Measures Act to the Customs Tariff.  But were there any legislative amendments related to Article 19.17 of CUSMA? There were not. There is no new law in Canada establishing Section 230-like immunities for internet platforms—thankfully.  Secondary liability continues to apply in Canada as I discussed in greater detail in here (Will Article 19.17 of the USMCA/CUSMA Influence Canadian Court Proceedings? (The Long—or Short?—Arm of Section 230).

Canada’s “commitment” in the CUSMA was carefully worded, preserving maximum flexibility for Canadian legislators and legal practitioners. I like to think that this was not an accident but by design and is a credit to the Canadian negotiating team who resisted misplaced US demands to “sign on” to Section 230.

Will Changing (“Gutting”) Section 230 Improve the internet?

Goldman argues that removing the dangerous parts of Section 230 will not improve the internet. In his view, since people have been nasty to each other for centuries, changing Section 230 to put the onus on the platforms that disseminate this personal bile won’t change anything. Yet because of the ugly side of society, we have laws to restrain this kind of behaviour in the offline world. We have laws to protect innocent victims. We impose reasonable restraints on unfettered freedom of expression and dissemination of libellous, defamatory and obscene materials everywhere—except on the internet. Goldman would like to keep it that way. He states that “Section 230 reform will accelerate the end of the Web 2.0 era”. This, apparently, will lead to a predomination of “privileged voices” and will exclude “niche non-majoritarian interests” (like those people who spread misinformation, conspiracy theories and indulge in vile personal attacks). So, yes, Professor, changing Section 230 will improve discourse on the internet.

Section 230 in the US

Apart from the attacks on Section 230 by Donald Trump and his acolytes (because the platforms finally exercised a modicum of content moderation), there have been wide criticisms of this legislation because of how it has enabled online abuse. In fact, it almost didn’t make it into the USMCA, since Nancy Pelosi and the Democrats finally woke up to what they were supporting. Pelosi tried to get the Trump Administration to drop Article 19.17 as part of the last-minute deal-making with Congress to get approval of the Agreement, but it was too late in the process. However, the Democrats did succeed in getting a statement from the hi-tech industry acknowledging that inclusion of Article 19.17 did not prevent the US from amending Section 230 in future. Advocates of Section 230 were hoping that its inclusion in the USMCA meant that it would be “baked in” forever and could not be touched by Congress. Given the tepid support in Congress for Section 230, Goldman is right to conclude that even if Canada did not abide by Article 19.17 by passing future legislation that negated it, the US would be most unlikely to object. In fact, he admitted as much in a podcast with Michael Geist that I wrote about earlier this year when he said, with respect to Congressional intentions to modify Section 230 despite Article 19.17 of the USMCA;

“Congress will absolutely blast forward with efforts to tinker with Section 230 even if that would also contravene the USMCA…I don’t know who really plans to abide by it, and if no-one plans to abide by it, I don’t understand what the point was”.

The Future of Section 230

How true. So why the primer on Section 230 just for Canadians? It is not part of the corpus of Canadian law, it is an outdated provision that is in serious need of revision in its homeland, the US, and it is not going to constrain the Canadian government from holding internet platforms responsible for online harms that they distribute if they fail to takedown such material when notified. Eric Goldman, Michael Geist and their friends in the Electronic Frontier Foundation (EFF) can continue to beat the Section 230 drum, but that drumbeat is sounding increasingly hollow, in Canada as in the US. Let Section 230 stay where it is in Canada, effectively buried.

© Hugh Stephens, 2021. All Rights Reserved.

Canada’s Pointless Pandemic Election and its Implications for Copyright, Content Industries and Digital Platforms

Credit: Elections Canada

For those of my readers outside Canada who may not have noticed, Canada has just held a general election. If many outside Canada were not following this election, many Canadians were also not focused on it. Voter turnout on election day, September 20, was just over 58 percent, close to an all-time low. The fact that the election was held in the middle of a surging fourth wave of the COVID pandemic was no doubt a factor. Another may have been the lack of any burning issues to get out the vote. In fact, Prime Minister Justin Trudeau was hard pressed to explain why he had triggered the election in the first place. The real reason, as everyone knew, was to try to convert a wave of good polling news into a majority government. Going into the election, Trudeau’s Liberal Party was 15 seats short of achieving a majority, (although on the last election day in 2019 it was just 13 seats short of the required 170, with 157 seats). Today it is 12 seats short of a majority, with 158, having gained all of one seat in the 2021 campaign over the total it achieved in the last election. The main opposition party, the Conservatives, lost 2 seats for a total of 119, and the two smaller parties that will hold the balance of power, the separatist Bloc Quebecois and the social democratic New Democrats had minor gains of 2 and 1 seat respectively. As a ploy to gain a majority, Trudeau’s election call was a massive miscalculation as his polling numbers dissipated during the campaign. By election day, the status quo was looking like a good outcome for the Liberals. Trudeau will now need to continue to govern with the support of at least one other party, depending on the issue of the day. The new-yet-old configuration of government in Ottawa will have implications for many stakeholders, including copyright interests and content industries, as well as those closely linked with content distribution such as the digital and high-tech industries.

When Justin Trudeau secured the Governor-General’s consent to dissolve Parliament and trigger the election back in mid-August, all legislation that was in process died on the order paper. Among these were bills to amend the Broadcasting Act to give the broadcast regulator, the CRTC, authority over streaming services and legislation to hold internet platforms responsible for certain types of harmful content disseminated on their services if not removed expeditiously when notified by the authorities. Other initiatives of the previous Trudeau government, such as promised legislation to require digital platforms to pay content providers for the use of news clips, a review of the Copyright Act to address such issues as the role of Artificial Intelligence in copyright and the impact on copyright of the Internet of Things, as well as outstanding commitments under the new NAFTA (USMCA, called CUSMA in Canada) to extend Canada’s term of copyright protection by an additional twenty years, will need to be introduced into Parliament. The Liberal Party platform states that a re-elected Trudeau government will introduce legislation within 100 days to “require digital platforms that generate revenue from the publication of news content to share a portion of their revenues with Canadian news outlets”.

In addition, there are other pressing issues affecting copyright that the “new” Liberal government needs to address, such as dealing with the fallout from the Supreme Court’s recent decision declaring that “mandatory” tariffs for reproducing published materials, even though certified by the Copyright Board of Canada, are only optional for users such as post-secondary educational institutions. This decision has effectively gutted Canada’s collective rights management system. There is also a need to clarify and narrow the expansive fair dealing rules for educational use that have resulted in a precipitous decline in Canadian educational publishing. Finally, there are the specific commitments in the Liberal Party platform, such as the news content issue mentioned above, and a promise to “protect Canadian artists, creators and copyright holders by making changes to the Copyright Act including amending the Act to allow resale rights for artists”.

The Artist Resale Rights (ARR) issue is an example where Canada is out of step with most countries (the US is in the same position) by not enabling artists to recoup a small portion of the selling price of their work when it is re-sold commercially. I documented in a recent blog post some of the inequities that arise when works of art that were originally purchased for a pittance from struggling artists are re-sold for many times the original value years later, yet not a penny goes back to the artist. If the Liberals follow through on this promise, it would seem that these inequities will soon be a thing of the past. As for what other “changes to the Copyright Act” the Liberals have in mind is anybody’s guess. They may address fair dealing and collective licensing, or they may not. The wording gives them lots of wiggle-room.

None of these issues got much or any airtime during the recent election, despite references in the party platforms. The election was instead focused on the handling of COVID, vaccination passports, economic recovery, the environment, gun control, the reason for the election in the first place and, as always, personalities. At one point, I responded to a solicitation from the CBC on issues that citizens could ask the party leaders during the one English-language broadcast debate that was held. I dutifully suggested a couple of copyright questions. To no-one’s surprise, I was not invited to put my questions to the party leaders, and no-one else did either. Copyright is seldom a front-burner issue for most citizens, although it can have a significant impact on a range of issues from economic development to innovation and artistic creativity to cultural expression. About the only time copyright got any news coverage during the campaign was when Warner Media filed a copyright takedown notice with Twitter in the US requiring the removal of a tasteless and risible Conservative Party attack ad against Justin Trudeau that infringed on Warner’s copyright in the 1971 film Willy Wonka and the Chocolate Factory. You can read more about that social media “own goal” here.

Just as the Liberal Party platform made passing reference to copyright, the Conservative platform–which of course will not be implemented since the Conservatives will remain in opposition–contained one notable reference. The platform states that;

Canada’s Conservatives will….recognize and correct the adverse economic impact for creators and publishers from the uncompensated use of their works in a manner consistent with the unanimous recommendations of the Heritage Committee of the House of Commons Report in 2019

For the record, those recommendations from the Heritage Committee report Shifting Paradigms were as follows;

“Recommendation 18

That the Government of Canada amend the (Copyright) Act to clarify that fair dealing should not apply to educational institutions when the work is commercially available


Recommendation 19

That the Government of Canada promote a return to licensing through collective societies”

This comes back to the ongoing dispute between the copyright collective Access Copyright and York University where York finally prevailed at the Supreme Court in arguing that they were not required to pay the certified “mandatory” tariff for reproducing materials in Access Copyright’s repertoire. (For the background to this long-running dispute, see here, here, here and here). While York won the point on whether the tariffs were mandatory or not, the issue of whether the university’s use of published materials represented by Access Copyright constituted fair dealing under the education exception was not decided. However, the language used by Justice Abella in delivering the Supreme Court’s decision strongly suggests that if an infringement case were brought, the universities could argue that even though they reproduced and distributed entire works without payment of licensing fees, they were simply assisting students to exercise their individual user rights. Enactment of Recommendation 18 of the Heritage Committee report would deal with this anomaly.

Whether the Trudeau government will be prepared to act on this recommendation remains to be seen. The Liberal platform makes no specific reference to this issue–which has resulted in significant declines in revenues to publishers and authors and has led to a hollowing out of the Canadian educational publishing sector–although in true Liberal fashion it undertakes to throw more money at the problem (“$43 million per year to support Canadian authors and publishers”).  At least if the Liberals do decide to tackle the thorny issue of educational copying, they will know that they should have support from the official opposition.

How successful they will be in pushing forward on their copyright and content agenda under a second minority government remains to be seen. The draft legislation to subject streaming services to the Broadcasting Act ran into a buzz-saw of opposition in Committee from the Conservatives, although it eventually passed the House of Commons only to die in the Senate when the election was called. The main issue was whether requiring platforms to apply algorithms promoting Canadian content to user-generated content was an infringement of free expression, although valid questions could also be asked as to whether streaming services lend themselves to oversight in the same way as the highly regulated world of broadcasting. That legislation passed the House with the assistance of the Bloc Quebecois, which—as the self-appointed defenders of Quebec culture—are generally pro-creator and pro-copyright. However, it was held up in the Senate and did not become law the last time around.

There is an ambitious content and copyright-related agenda that the “new” government will inherit and have to deal with. In executing on plans and promises, the Liberals will have to get the support of one or more of the smaller parties just as they have been doing since 2019. The parliamentary process had been working relatively well, but it required time, patience and sometimes compromise. A Parliamentary majority is a much more pleasant way to govern. But that didn’t happen, so we will have to see how many of the Trudeau government’s stated objectives get translated into law this time around.

© Hugh Stephens 2021. All Rights Reserved.

Michelle’s Country Music Murals: An Update

Source: author photo (c) Michelle Loughery

Some readers may recall two blogposts (Mural, Mural on the Wall and Were They Commissioned, One and All?) that I wrote a couple of years ago about muralist Michelle Loughery and her copyright dispute with the Merritt Walk of Stars Society. The disagreement was over who held the copyright to a series of murals that she and a team of volunteers, local artists, and at-risk youth had painted on the walls of various businesses in the small town of Merritt in the interior of BC, about 3 hours’ drive east of Vancouver. Michelle was the artist who designed, directed, and executed the work, in the process training a group of indigenous youth in life and employment skills. The project was funded through government job skills training grants. The youth and various program staff, including Loughery, were paid from these funds. However, what started out as a great community project became enmeshed in a bitter and (it seems to me) unnecessary and avoidable copyright dispute. The controversy arose because of the desire of the Society to value the murals as part of a process of getting additional grants. Sadly, the dispute has not been resolved and continues to bedevil the economic recovery efforts of the community.

This past summer Merritt was surrounded by out-of-control forest fires and an evacuation alert was issued, although not executed, but a couple of small towns not far away burnt to the ground. The fires, combined with the economic impact of COVID, severely damaged one of the town’s main industries, tourism. Tourism was behind the idea of proclaiming Merritt to be the “Country Music Capital of Canada” in the first place. The idea grew out of the Merritt Mountain Music Festival which took place for a few years from the early 2000s to around 2010. One year it attracted almost 150,000 attendees to a town of just 7,000, so you can imagine the strain it put on resources to provide logistical and security support for that number of people over just a few days in the summer.

Source: author photo (c) Michelle Loughery

Some people I talked to were glad to see the festival fold because of the security and health issues it brought with it, although it also created some financial benefits for the town. In any event, building off the publicity generated by the festival, a number of people in Merritt came up with the idea of the Walk of Stars, where handprints of some of the entertainers performing at the Festival were displayed at different locations in town. At around the same time, Loughery was invited to Merritt to manage a project to paint murals of country music stars on the walls of various buildings in the community, with the locations provided by local merchants. She had just completed a similar project in a neighbouring town (Vernon, BC). Loughery painted the murals while the youth involved were given job, life skills and trades training on the various projects, including construction, mural training, scaffold building, façade painting, fence building, landscaping, cultural training, and job experiences in local businesses. I have talked to several people who were involved in the project either through volunteering or working with the youth participants. They were enthusiastic about the benefits it had brought both them and the community.  

Alongside the murals, a country music museum was established, called the Canadian Country Music Hall of Fame, displaying memorabilia from various stars. The name was licensed from the Canadian Country Music Association in Toronto. Tied together with the Walk of Stars, the murals, a restarted music festival on a smaller scale and the museum, Merritt had built itself a unique tourist attraction to add to the fishing and camping activities in the region. Everything went well for a while but started to go south, as I wrote in earlier blogs, when issues arose over who owned the copyright in the murals. 

The Walk of Stars Society claimed that Loughery had been “commissioned” to do the work and thus the copyright in the murals resided with them. At the time the murals were painted, copyright law in Canada provided that a person or entity who commissioned an “engraving, photograph or portrait” owned the copyright, absent an agreement to the contrary with the artist. (This default to the commissioning party was removed in the Copyright Act revisions of 2012 but the murals were painted before that). Loughery’s position is that she was not commissioned to produce the works, but rather was a partner in the project, assisting with fund-raising efforts (although she does not deny that she received compensation for her work) and, further, it was agreed that she would retain copyright. The issue has not gone to court but the fallout from it continues. 

Source: author photo (c) Michelle Loughery

The latest manifestation relates to efforts to reboot the economy, post-COVID (when will that be?), through a series of linked murals along various highways in the province. There is a precedent for this; the Route 66 Mural Art project in the US. Loughery was involved in this project some years ago through the National Route 66 association. She consulted for the town of Cuba, Missouri, one of the towns on Route 66. Various spin-offs have been floated over the years, one of them using murals to tie together the various towns through which Route 99 passes in California, Oregon, Washington, and British Columbia.

Loughery has been promoting a revival of the idea through Art Route Blue, a concept funded by Destination BC, the provincial tourism promotion body. The goal is to get regional tourism associations to work together to apply for provincial grants to develop a linked art route in the province. However, uncertainty over who owns the copyright to the murals in Merritt (and thus the ability to reproduce them in promotional material) is becoming an impediment to moving forward. The role of Loughery and her “Art Route Blue” in moving the project forward appears to be another potential issue, but this all seems to go back to the original dispute over copyright ownership. Loughery sees the artist as central to the project. Without art there is no art route; without the artist there is no art. Many elements have to come together to make this work, but success is likely to come only through a cooperative partnership among all the players. The solution should be straightforward in my view; recognize the rights of the artist and negotiate a reasonable licensing arrangement that would clarify the ownership question and make the controversy go away. I am not privy to any discussions on this—none appear to be happening at the moment—but the dispute appears to be more about recognition and role than money, although clearly there are financial aspects to the art route project.

It may also be necessary to get the permission of the some of the stars in the murals, or their estates, for use of the murals. While there is no “personality right” (publicity right) in Canada as there is in some US states, as explained in this posting on the legal blog Lexology; there are potential concerns.

In Canada, rights of publicity are protected by the common law tort of ‘wrongful appropriation of personality’, sometimes referred to as ‘misappropriation of personality’, being the unauthorised commercial exploitation of a person’s name, image, voice or likeness. To be actionable, the use must clearly identify the person before any wrong will be attributed.”

Source: author photo (c) Michelle Loughery

Some of the artists granted permission for their likenesses to be reproduced in the murals to promote the youth project, but not necessarily in promotional material for other purposes.

Meanwhile, the agreement between the Merritt Country Music Hall of Fame and the  Canadian Country Music Association has expired, and will not be renewed. The facility in Merritt will continue to operate under the new name of the Canadian Country Music Hall of Honour. It is not clear to me why this happened—presumably the licensing fee for the name and affiliation. When I visited Merritt recently, the Hall of Honour was advertised as being open, but was not. COVID was perhaps a factor.

Despite COVID, and the fires, I am sure the town will bounce back, and tourism will continue to be an important part of the economic recovery story. The idea of leveraging off the country music festival is a good one. The assets are still there. The Walk of Stars handprints are well maintained, and the murals are generally in good shape (Loughery has returned from time to time to touch them up), although a major misunderstanding occurred when the owner of one of the buildings (the Desert Inn) on which an Elvis mural had been painted by Loughery—with permission from Elvis Presley Enterprises—decided to paint over half the work. Perhaps the new owners, who had changed the motif of the facility to Indian, complete with an Indian restaurant (Mughal Gardens), decided that Presley and pappadums don’t mix.

I hope that the ongoing controversy over copyright in the murals can be resolved amicably. If you are in a small rowboat in high seas, it is important to pull the oars in one direction. Settle the issue and pull together, and maybe the murals will become part of a wider art route project that will boost tourism in the region while providing some income and recognition for the artists who create the works. That would be the best update of all.

© Hugh Stephens 2021. All Rights Reserved.

Some Reflections on What Can—and Cannot—Be Protected by Copyright

Source: Author

My wife was flexing her wrist, extending her forefinger and manipulating her thumb, following the instructions on the sheet in front of her that the physiotherapist had provided. She (my wife that is) had broken her wrist a few weeks earlier, in an unfortunate fall. With neither of us having ever broken a bone before, it brought home the reality of how challenging recovery from even a relatively minor break can be. Once the operation has taken place, and later when the cast is removed, you start to think you are out of the woods. But then the hard work—the regular and constant physiotherapy and exercise to restore use of the limb—begins. In this instance therapy consisted of ultrasound, massage and personal exercise and manipulation at home, following a set of illustrations and exercises she was given at the clinic.

Having a sharp eye for all things related to copyright, I immediately spotted the “©Island Hand Therapy Clinic 2010” on the instruction sheet. There is nothing protectable about the bone or ligament structure in a person’s wrist any more than the knowledge of how to restore movement and circulation to a limb. So how could this set of instructions outlining and illustrating a sequence of exercises be subject to copyright protection?

This example is a good illustration of the distinction in copyright law between an “idea” and the “expression of an idea”, with the former not subject to copyright while the latter could qualify. The instructions, illustrations and sequence of these specific exercises had all been developed by this clinic for the exclusive benefit of its clients and are the clinic’s particular expression of the idea of wrist manipulation to regain movement. They form part of its intellectual property and are a benefit provided to clients who pay to use the services of the clinic. The exercises needed to regain movement in a limb cannot be copyrighted but the explanations and illustrations, when put together, form an expression of the idea.

Assertion of copyright is simple and straightforward (one of the major advantages of this form of intellectual property, compared to the more costly and legalistic processes required to register a trademark or secure a patent, for example). The ubiquitous © sign is not even required, although to affix it is a good idea as this is a conscious assertion of copyright. In Canada, a copyright can be registered for a modest fee, but it is not necessary to do so. In the US, a copyright does not have to be registered with the US Copyright Office, but registration is necessary if a legal case is to be brought against an alleged infringer.

Although in most countries a work does not have to be registered to be eligible for copyright protection, some form of “fixation” is required for it to constitute a copyrightable work. (A musical score, a photograph, a printed facsimile, for example). Fixation can be difficult to determine at times, as I discussed in an earlier blog post “My Fixation with Fixation”. Recently a Chinese court has extended the concept of fixation even further, ruling that the arrangement of a water fountain display to music can be protected by copyright, notwithstanding the reality that no two performances could be identical (owing to factors such as weather and light). The court dealt with the issue of fixation by virtue of the fact that the water and music show were replicable because of the design of the devices governing the directions and timing of the spray, and the programming of the music.

Most copyrighted works are not infringed, and most minor infringement seems to go unchallenged. It depends on the circumstances. It would be unlikely that the hand clinic would take any action against a patient who unthinkingly shared her physio exercises with a friend who was also having wrist problems. But they might object if another clinic appropriated, copied and distributed the exercises to their own patients. That little © at the bottom of the page is a good reminder and an insurance policy.

The distinction between an idea and its expression is a concept that I explored in an earlier blog “Copyright on the Rocks”.It is something that jurists have grappled with over many years as interpretations of what is subject to copyright evolved. Today, it is widely accepted that a procedure, process, system, method of operation, concept, principle, or discovery (to quote the US Copyright Act) are not subject to copyright, nor are facts, but that wasn’t always the case. 

In the 19th century, some newspapers in England pushed to assert copyright over the news that they generated, arguing that the considerable effort and expense they went to in collecting the news entitled them to protection against copying, at least for a specified period of time. For example, if TheTimes (of London) paid a correspondent to report on events abroad (a war for example), and then invested in the costs of transmission (by telegraph) of the latest news, why should rival newspapers be simply allowed to “cut and paste” the news that the Times had generated? Widespread copying of the news in the morning papers by the evening papers, and literally “cutting and pasting” columns of material into subsequent editions, was a common practice in the early days of journalism (and widely accepted).

In a famous case in the 1890’s known as Walter v Steinkopff (documented in Prof. Will Slauter’s book, “Who Owns the News: A History of Copyright), The Times sued another journal, the St. James Gazette, for copyright infringement for reprinting both part of a story by Rudyard Kipling and several news paragraphs. The Gazette admitted infringement with respect to the literary excerpts, but the case turned on the news paragraphs. The Times had taken the necessary steps to ensure payment to the journalist and had arranged assignment of the reporter’s copyright to the newspaper. The case was heard by Sir Ford North who ruled that even if cutting and pasting was a common practice in the British newspaper business at the time, the Times had not expressly consented to it. Moreover, the Times had complied with the legal provisions regarding establishment of copyright. However, North pressed the plaintiffs as to what exactly they thought copyright should protect. To quote from Slauter (p.175);

If The Times published a telegram announcing the death of a foreign leader, would other papers be prohibited from publishing the same news unless they obtained their own telegram? After some back and forth, counsel for The Times was willing to concede that other papers could not copy The Times’s report verbatim but that they could restate the facts.”

North summarized by noting that there is no copyright in news, but there is or may be copyright in the particular forms of language or modes of expression by which information is conveyed. In other words, facts (news) by themselves cannot be copyrighted, although the form of news articles may be subject to copyright protection. The same issue was settled in the US in a precedent setting case in 1921. (Chicago Record-Herald Co. v Tribune Ass’n)

And then there is the “merger doctrine” to consider. This occurs when there are only limited ways to express an idea, where the expression merges with the idea itself and is therefore not protected. The most recent example of what was probably a merger doctrine case, although it was not decided as such, was the US Supreme Court decision on Google v Oracle. Google had copied Oracle’s Java APIs (application programming interface) or source code (aka “declaring code”), without payment or permission, in order to facilitate programmers writing programs for the Android platform, which uses Java code. Google argued that the APIs, which provide a kind of underlying framework for writing computer code, (a so-called “building block”) were not copyrightable as they were basic utilitarian functions. Initially the court agreed but this ruling was overturned on appeal. The case was further appealed to the US Supreme Court where Google also argued that even if the APIs were subject to copyright, there was no infringement because Google’s use was fair based primarily on the fact that its subsequent use of the APIs led to new works and was thus transformative. (This is a gross oversimplification of the case but outlines the basic elements. A more detailed explanation can be found here).

In the end, the Supreme Court did not rule on whether the APIs were subject to copyright protection—which was the essence of the case. Instead, it focused on the fair use argument, and concluded that Google’s use was fair. This is a controversial finding as it potentially opens the door to other arguments that an unauthorized use of a copyrighted work that leads to a transformative product or service is legal under the US fair use doctrine. The Supreme Court tried to ring-fence its decision by stating that its ruling applied only narrowly to “declaring” computer code, but others have already been quick to try to jump on this bandwagon. Ultimately, the real question in Google v Oracle was whether the underlying code—which some have compared to a QWERTY keyboard—was copyrightable because of the limited ways in which computer code can be written.

This landmark case is a long way from my wife’s wrist exercise instructions, which shows how quickly one can go down the rabbit hole when discussing copyright issues. However, the principle of what can be copyrighted, and what cannot—based on the distinction between ideas and facts on the one hand, and the original expression of ideas and facts on the other—is a fundamental if sometimes blurred principle.

I am not sure whether I have made the distinction any clearer or simply blurred it more. But if you are in any doubt, please note the © symbol below. After all it is fixed (you’re reading it); it is my expression of the idea of what is and is not subject to copyright and it is original. Who else in history has connected Google v Oracle with Walter v Steinkopff (1892) with a Chinese court’s copyright finding on a water fountain display with my wife’s hand clinic physiotherapy instructions? It qualifies for the big ©! And I’m pretty confident that no-one is going to challenge my assertion of copyright.

© Hugh Stephens 2021. All Rights Reserved.

John Degen’s Twitter Broadside on the Access Copyright v York University Copyright Case: Right Message; Wrong Target?

Source: http://www.shutterstock.com

John Degen is Executive Director of the Writers’ Union of Canada. I don’t know Mr. Degen nor have I ever met him but I do know that he is a passionate defender of the interests of authors, as well as being a successful published novelist and poet himself. Recently Mr. Degen published a very long, almost “stream of consciousness” Twitter broadside, commenting on the recent decision of the Supreme Court of Canada (SCC) on the Access Copyright v York University cross-appeal. It was visceral, raw, personal, bitter (although leavened with some humour)….and fully understandable. While I take issue with certain aspects of what Mr. Degen said, especially his attacks on the credibility of the Court, one has to look at the context. His comments reflect a deep frustration with the system, born of a sense of betrayal. I think he reflects the views of many writers. However, both the problem and the solution lie not with the Supreme Court, but with the Parliament of Canada.

Before I get to Mr. Degen’s long Twitter post, a bit of background is necessary for the non-cognoscenti amongst you. The Supreme Court’s decision, outlined in all its legal intricacies by lawyer Barry Sookman (“Certified Tariffs not Mandatory Says SCC in York v Access Copyright”), has undermined the collective licencing system that has prevailed in Canada for the past quarter century by upholding the Federal Court of Appeal’s (FCA) earlier decision that “mandatory” tariffs (royalty fees) for reproducing copyrighted materials, certified by the Copyright Board of Canada after extensive hearings, are not mandatory with respect to users. According to the FCA’s ruling, mandatory tariffs apply only to providers of copyrighted content and require them to provide access to the material covered by the tariff at a rate set by the Copyright Board. As I commented at the time When is a ‘Mandatory Copyright Tariff’ Mandatory Only if you Opt-in?”, the FCA’s ruling demolished a major pillar of the collective licensing system in Canada. That decision has now been upheld by the highest court in the land.

To add insult to injury, while dismissing the appeal by the Canadian Copyright Licensing Agency (Access Copyright) against the FCA’s decision on mandatory tariffs, the Supreme Court then opined (negatively) on the FCA’s finding that York University’s Fair Dealing Guidelines were not fair and had facilitated infringement. At the same time, however, the SCC declined to reverse the FCA’s decision by declaring the Guidelines fair. York had argued fair dealing as a defence against Access Copyright’s initial infringement lawsuit and had offered its Fair Dealing Guidelines as proof. York had cross-appealed to the SCC the FCA’s decision that found the Guidelines to be unfair. Whether the Guidelines are fair or not remains undecided and may have to be further tested though litigation.

The reason given by the Supreme Court for declining to rule on whether York’s Guidelines were fair in the context of fair dealing was essentially technical, namely that since the tariff to be paid for copying was optional rather than mandatory, there was no longer a valid dispute between the university and Access Copyright. This flows from the fact that the collective is not a rights-holder, but rather a collective established to collect licensing fees and thus, according to the Court, it has no status to represent rights-holders in an infringement action. The structure of collective licensing in Canada is largely based on a system whereby rights-holders (e.g. publishers and authors) come together to form an organization that has two basic functions; (1) to facilitate the licensing of content by users and (2) to collect and distribute licensing fees to rights-holders. This avoids the necessity of users having to track down hundreds of individual rights-holders to clear (i.e. license) material and is a cost-effective means for authors to collect and receive revenues for uses of their work. In most instances, certainly in the case of Access Copyright, the collective society does not itself hold any rights but rather represents rights-holders.

This structure served both users and rights-holders well until recent years when some users, particularly post-secondary educational institutions of which York became the poster-child, decided they would no longer seek licences from Access Copyright. Instead, they chose to rely on fair dealing exceptions in the Act (education was added as an exception in Copyright Act revisions in 2012 although the decision to refuse to obtain licences preceded this change). In other cases, the universities undertook direct negotiations with some individual rights-holders. This refusal to obtain an Access Copyright licence came at a heavy financial cost to the institutions in the form of additional staff time and legal fees, as I noted in a recent blog (“Throwing Good Money After Bad: How Canadian Universities Wasted Millions by Not Securing a Copyright Licence”). It would have been so much simpler, and avoided so much litigation, to have simply obtained a licence, paying authors a reasonable sum for use of their work.

For many years tariffs (an annual cost per student—generally around $15 per student per year) were set by the Copyright Board if agreement could not be reached between the collective and users (educational institutions). The expectation and understanding was that if a university accessed material in the collective’s repertoire after the Copyright Board  had fixed a tariff, the institution would be subject to that tariff unless fair dealing could be established. For reasons related primarily to shortcomings in the language of Copyright Act amendments enacted in the 1980s and late 1990s, the SCC has now determined that the mandatory nature of the Copyright Board tariffs was not established in law. Instead, the Court reverted back to a 1930s interpretation whereby the mandatory nature of the tariff fell on the collective rather than the user. That is to say, if a user offers to acquire a licence, it is mandatory on the collective to issue it at the rate determined by the Copyright Board. That may be what the jurisprudence and the language of the law suggests; whether such an interpretation is just or even sensible is another question entirely. Jurisprudence and justice are not always the same. That is why it is incumbent on Parliament to fix what the SCC has broken; the collective licensing system for copyrighted materials in Canada.

What does Mr. Degen have to say about all of this? I called his thirty-one tweet posting over 3 days a “broadside” which seemed to be the best and most balanced description although it had some of the characteristics of a “rant”, in the sense that he “spoke at length in an impassioned way” (one definition I found). But rant can also have a negative connotation so I didn’t call it a “rant”. I thought about “diatribe” (“a forceful and bitter attack”), but this also has pejorative air to it. It had elements of a “harangue”, implying strong feelings, but still a bit negative. In a sense it had elements of all these descriptions, but this is not surprising given deep frustration with a system that seems to be stacked against creators. So let’s call it a “broadside”.

Degen aimed his guns squarely at the Court’s credibility, arguing that the decision damaged its reputation and “sorely tested” his trust in the Canadian justice system. Degen is bothered by the fact that the Court reached its decision in record time (40 days—“perhaps the speediest SCC decision on record”) and the fact that it was written by retiring Justice Rosalie Abella, whose husband is a former professor at York. While not endorsing the suggestion that she should have recused herself, he repeats it. While he does not say there is a conflict of interest, he emphasizes that one has to avoid the appearance of a conflict. He mentions that the Court did not rehearse much of the testimony filed by groups supporting Access Copyright and describes the decision as having been made on a “technicality” and being “unbalanced”. He even notes hearing that some unnamed legal professionals have described the decision (off the record) as “embarrassing” and “ridiculous”. That’s a lot of criticism to throw at the Court. But let’s not forget the inconvenient fact that Justice Abella’s decision and analysis was joined by the other eight Supreme Court justices. It was a unanimous decision. The reality is that the Court cannot create the law; it can only interpret what legislation says and if mandatory tariffs on users do not fall within the four corners of the law, the Court cannot stretch the law’s footprint.

Mr. Degen is also upset with the academy, particularly with University of Ottawa professor Michael Geist, a longtime copyright skeptic. Degen points out the discrepancy between Geist’s rising salary (yes, it has increased over 15 years, which is not surprising) and the economic plight of authors. He hints that the alacrity with which Geist tweeted out and commented on the SCC decision may have been due to inside knowledge regarding its content. But Geist is a prolific if annoying commentator and watches this stuff like a hawk. It doesn’t surprise me that he focused on putting his spin on the interpretation of the decision as quickly as possible, with an initial tweet just 3 minutes after the decision was released followed by others shortly after. Other members of the academy, such as Ariel Katz of the University of Toronto Faculty of Law are largely responsible for the Supreme Court’s finding on mandatory tariffs. Katz researched the issue extensively, and published articles critical of York’s legal defence team when they initially did not adopt his arguments. Katz’s work was referenced by the SCC in reaching its decision. Law professors in ivory towers have the time to research this sort of thing which involved parsing legislation going back to the 1930s. But hey, why shoot the messengers? If the law is deficient, don’t blame those who interpret it. Fix the law.

To resolve issues where there is an anomaly between the letter of the law and legislative intent, action by the legislative arm is the bottom line. In the Allen v Cooper copyright infringement case in the US, the Supreme Court of the United States (SCOTUS) openly invited Congress to correct legislative deficiencies that allow US state governments to thumb their nose at copyright law and to copy with impunity. The SCOTUS ruled 9-0 that 1990s Congressional legislation failed to override US state sovereign immunity with respect to copyright infringements, but noted that this conclusion;

“need not prevent Congress from passing a valid copyright abrogation law in the future. In doing so, Congress would presumably approach the issue differently than when it passed the (original legislation)….Congress likely did not appreciate the importance of linking the scope of its abrogation to the redress or prevention of unconstitutional injuries—and of creating a legislative record to back up that connection. But going forward, Congress will know those rules. And under them, if it detects violations of due process, then it may enact a proportionate response. That kind of tailored statute can effectively stop States from behaving as copyright pirates. “

It was a clear road map for legislative action to remedy what the Court could not do because its hands were tied by the wording of the law. The need for Congress to take action has been reinforced by a study from the US Copyright Office (USCO) that held public hearings and examined the extent of state infringement and abuse of copyright. It’s report, just released, concluded that “infringement by state entities is an issue worthy of congressional action”. It would be nice to see USCO’s Canadian counterpart, the Canadian Intellectual Property Office (CIPO), take such a independent view on the mandatory tariff issue but the USCO, as an entity of the Library of Congress, has far more independence than CIPO.

In any event, similar to the comments of the US Supreme Court with regard to the role of the legislative branch, the SCC noted (at para 76) that “It is of course open to Parliament to amend the Copyright Act if and when it sees fit to make collective infringement actions more readily available. But under the existing relevant legislation in this appeal, an approved tariff is not binding against a user who does not accept a licence.”

This is, in fact, where John Degen ends up his Twitterspiel. “Parliament cannot let this profoundly damaging Supreme Court ruling be the last word”, he concludes. I agree. Focus on the legislative solution.

The message I am trying to convey (with no disrespect to Mr. Degen) is that one has to be very careful in casting doubt on the credibility of the Supreme Court no matter how disappointed one is at the outcome of a case. After all, the day will inevitably come when the SCC makes a ruling on some issue that favours creators and rights-holders, and in that instance it will be seen as all-wise and all-knowing. So let’s give the SCC the benefit of the doubt and accept that it has interpreted the law as it exists. The ball is now back in Parliament’s court and if the government of the day (we will know who that will be on or shortly after September 20, given the current general election) wants to maintain the proven system of collective licensing for the benefit of both users and rights-holders, it is going to have to introduce legislative amendments to address the Supreme Court’s legally-correct but socially and economically unjust decision.

© Hugh Stephens, 2021. All Rights Reserved.

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