The DEPA : A Good Beginning, but with a Blind Spot re Intellectual Property (Let’s Take a “DEPA Dive”)

Among the plethora of plurilateral trade agreements covering the Asia Pacific region and beyond—the Comprehensive and Progressive Trans-Pacific Partnership (CPTPP), the Regional Comprehensive Economic Partnership (RCEP), and the Pacific Alliance—there is yet another— one you may not have heard of. The DEPA. (Digital Economy Partnership Agreement). What is the DEPA, and who is in it? And how does it relate to those interested or invested in copyright and intellectual property issues? Let’s take a “DEPA dive” (groan) and find out.

DEPA’s current membership includes just Chile, Singapore and New Zealand, the founding members. These are the same three countries that came together to create the forerunner to the Trans-Pacific Partnership (TPP), now the CPTPP. It came into force on January 7, 2021. South Korea, Canada and China have indicated interest in joining and in May of this year, Canada formally requested to become a DEPA Party, following public consultations in the spring of 2021. There were calls from think-tanks for Canada to take the initiative to join the Agreement, an application now in process . There have also been calls in the United States for the US to join DEPA.

DEPA is not the sole “digital only” trade agreement in existence; Singapore has signed digital agreements with several countries and the US and Japan reached a Digital Trade Agreement (DTA) in 2019. Much of what is in the DEPA, and the US-Japan DTA, is based on the ecommerce and digital trade chapters of the CPTPP but it goes further in some areas, and not as far in others. Notably, the DEPA departs from the standard text of most trade agreements, and from the US-Japan DTA, when it comes to intellectual property, a potential problem for content industries.

There are some important elements to the DEPA, outlined in detail by two researchers at Canada’s Centre for International Governance Innovation (CIGI), Dan Cuiriak and Robert Fay. The agreement is different from most traditional trade agreements in that it does not include a long list of items on which tariffs will be reduced or removed. It is a sectoral agreement including just 16 “modules” (chapters) and 4 annexes. It is designed to be a framework that can be built on and added to.  It covers a range of digital issues, from paperless trading, electronic invoicing, and electronic payments to treatment of digital products (where it entrenches the WTO moratorium on customs duties on electronic transmissions and content transmitted electronically) and provides for the non-discriminatory treatment of digital products, with a specific exception for “broadcasting”. There are also other general exceptions such as national security, public health and safety. It provides for privacy of personal information, cross-border data flows and agreement not to require data localization as a condition of doing business. In addition, the agreement has provisions for cybersecurity cooperation, building consumer trust (controlling unsolicited electronic messages directed at consumers) and protecting consumers from fraudulent activities. It ventures into new ground in terms of outlining principles for cooperation in emerging trends and technologies, identifying fintech, and artificial intelligence (AI) in particular as areas for further work and collaboration. The digital economy’s impact on competition policy and government procurement is also recognized, but in all these emerging areas, there are no binding commitments, simply “best efforts” language to promote cooperation.

Intellectual Property

Where the DEPA falls short, and takes an odd diversion, is in the area of intellectual property. First, unlike most digital trade chapters in broader agreements and the US-Japan sectoral DTA, there is no mention of prohibiting the forced disclosure of source code as a condition for the import, distribution, sale, or use of software, or of products containing software, a key IP issue. In Module 9 (Innovation and the Digital Economy), there a provision, Article 9.3, titled Public Domain;

”1. The Parties recognise the importance of a rich and accessible public domain.

2. The Parties also acknowledge the importance of informational materials, such as publicly accessible databases of registered intellectual property rights that assist in the identification of subject matter that has fallen into the public domain.”

While the objectives of this module “affirm the importance of technological innovation, creativity, and the transfer and dissemination of technology, being for the mutual advantage of producers and users of knowledge, as a means to achieve social and economic welfare” (emphasis added), the text of the Agreement focuses on only one element of intellectual property, the existence of the public domain once IP rights are exhausted.

Is the public domain under threat? Not to my knowledge. While the public domain is important, so too is protection for rights-holders, but you would not know it given the language of the DEPA. Access to data for development of AI is a key component of innovation but that doesn’t mean that the rights of those holding the data are to be trampled and ignored. Proprietary data is not “free for the taking” in the name of the development of AI.

Another problem arises from this Public Domain Article. The wording in Article 9.3.2 stresses the importance of publicly accessible databases to assist in identification of subject matter that is in the public domain. However, at least with respect to copyright, to my knowledge no such databases exist, at, or if they exist, they exist in a very incomplete form. A cardinal principle of the Berne Convention is that copyright is established, if all conditions are met, without any registration formalities. For copyright, Article 9.3.2 makes no sense. The intent of the Article seems to be to stand IP protection on its head and focus instead on what is not protected. (However, perhaps the intent is to suggest that only public domain materials should be used to feed the need for “open data” for the purposes of innovation?)

This article is drawn from the original text of the TPP (Article 18.15), which was I suppose inserted to “balance” the rest of the IP chapter, but standing alone as it does in the DEPA, it seems to stick out like a sore thumb.

Platform Responsibility

While protection of intellectual property, or lack of it, is a failing of the DEPA, even the US-Japan DTA gives short shrift to IP concerns, other than inclusion of commitments not to force disclosure of source codes, and exclusion of IP rights from the infamous “interactive computer services” provision, language that is also incorporated into the USMCA with Canada and Mexico. This “interactive computer services” provision, Article 18.2 of the US-Japan DTA, is based on Section 230 of the 1996 US Communications Decency Act, the legislation that has been used by internet platforms to avoid any civil liability for material distributed by them on their platforms, unless they have directly created it. It has been misused by the platforms, enabling them to evade any responsibility for content moderation, notwithstanding clear precedents that exist in the offline world. Silicon Valley has tried (unsuccessfully to this point) to export this legislation through trade agreements signed by the US.

It was a controversial provision when pushed by the US government in the NAFTA renegotiation. Congress finally objected at the last minute but by then, the deal was virtually done with the concrete hardening fast. As a result, the Section 230-like provision stayed in the USMCA (as Article 19.17) although Canada managed to negotiate a qualification to the commitment that an “interactive computer service” not be considered as an “information content provider”. The qualification, contained in a footnote to the Agreement, allows existing Canadian law and precedent to continue to apply and confirms that no change is required to Canadian law. In effect, this avoided the worst-case scenario of having a Section 230-type obligation crammed down Canada’s throat.

The Japanese were equally alert to the dangers of adopting Section 230-like obligations, which would have given platforms in Japan a free ride with respect to responsibility for the material they carry, distribute and monetize. Japan included the same caveat with respect to the application of existing Japanese law (Footnote 15) but went a step further and signed a side letter with the US. This side letter renders the commitment meaningless but such a provision should not have been included in a trade agreement in the first place.

Other topical digital issues in the DEPA relate to online safety and measures to implement cultural policies in the digital environment. The online safety module is weak, noting that Parties recognize the importance of taking a multi-stakeholder approach to addressing online safety and security issues, but requiring no more than efforts (“shall endeavour”) to cooperate to advance collaborative solutions.

Culture and the Arts in the Digital Environment

With respect to cultural carve outs, broadcasting is exempted from the commitments on non-discriminatory treatment of digital products, but no definition of broadcasting is provided. Canada is currently in the process of enacting legislation (Bill C-11, the Online Streaming Act) that will define online streaming services as broadcasting, an action that could be an issue during DEPA accession negotiations. When negotiating trade commitments, Canada also likes to seek a general “cultural exemption” as it did in the original Canada-US FTA, replicated in the NAFTA and its successor, USMCA/CUSMA. (The exemption of cultural industries from the disciplines of the USMCA/CUSMA is, however, subject to the right of the other Parties to take retaliatory measures of equivalent effect). In both its trade agreement with the EU and in the TPP (and its successor, the CPTPP) Canada was unable to achieve an overriding cultural carve out and instead took chapter-by-chapter exceptions. The DEPA contains a general exception for measures affecting culture, subject to the proviso that they do not constitute disguised restrictions on trade; (Article 15.1.4)

subject to the requirement that such measures are not applied in a manner which would constitute a means of arbitrary or unjustifiable discrimination between the Parties where like conditions prevail, or a disguised restriction on trade, nothing in this Agreement shall be construed to prevent the adoption or enforcement by a Party of measures necessary to protect national treasures or specific sites of historical or archaeological value, or to support creative arts of national value.”(emphasis added)

“Creative arts of national value” are defined as;

the performing arts – including theatre, dance and music – visual arts and craft, literature, film and video, language arts, creative online content, indigenous traditional practice and contemporary cultural expression, and digital interactive media and hybrid art work, including those that use new technologies to transcend discrete art form divisions. The term encompasses those activities involved in the presentation, execution and interpretation of the arts; and the study and technical development of these art forms and activities.” (Footnote 21)

That is a broad exemption that would probably not rule out enactment of legislation like the Online Streaming Act, although whether the measures proposed by the legislation fall under the rubric of “support” (for creative arts) or “discrimination” (between the Parties) would keep trade lawyers busy. A Canadian cultural advocacy group, the Coalition for the Diversity of Cultural Expression (CDCE), submitted a brief to the DEPA consultation that, among other things, criticized the DEPA’s cultural exception clause as inadequate from a Canadian perspective.

Interestingly, having submitted its bid to join the DEPA in May of this year, several months later (July 15, 2022) the Canadian government launched public consultations on a model digital trade agreement. It seems to me it would have been more logical to take this step prior to throwing Canada’s hat into the DEPA ring rather than after, but given that the DEPA is subject to change and can be amended as new Parties join, it will still be useful to obtain input to help develop negotiating objectives.

The CDCE once again provided input, recommending not only that a model digital trade agreement contain a broad cultural exemption clause but also that;

any Canadian model digital trade agreement…not create barriers to the implementation of digital rights management tools, or technological protection measures, that could block the free flow of digital products to protect copyright”,

and that;

Canada should not make commitments under any Canadian model digital trade agreement that could adversely affect the remuneration of copyright holders”.

This is one area where the DEPA falls short and is one of its biggest failings. The drafters of the Agreement seem to have had a deliberate aversion to including any reference to “intellectual property”[i] in the text. In fact, they seem to have gone out of their way to avoid any recognition of the importance of IP–thus, the “standalone” article on the importance of the public domain–reflecting a bias seemingly and incorrectly seeing IP and copyright as antithetical to digital innovation.

Will the US Join DEPA?

It is unlikely that the US will join DEPA as it has already floated ideas for its own Indo-Pacific Digital Agreement as part of its proposed Indo-Pacific Economic Framework (IPEF). Since Canada is not included in the US definition of Indo-Pacific that may explain in part why Canada has stepped up its interest in DEPA. It is likely that a US-led digital initiative will put greater emphasis on IP rights within a digital environment and avoid the public domain focussed language of the DEPA. The Indo-Pacific Digital Agreement (if it ever gets off the ground) and the DEPA could even merge one day. One thing is certain; digital trade is here to stay, and it is important to forge international understandings governing this trade. The DEPA offers one path forward, albeit a path that could do more to respect IP rights. Just the same, it is a modest but useful beginning.

© Hugh Stephens 2022. All Rights Reserved.

[i] The only reference I could find to “intellectual property” in the entire agreement was with respect to Article 3.3.(1) relating to Non-Discriminatory Treatment of Digital Products. Article 3.3 (2) says,
Paragraph 1 shall not apply to the extent of any inconsistency with a Party’s rights and obligations concerning intellectual property contained in another international agreement a Party is party to.”

Will the “Artists’ Resale Right” Come to Canada and the US?


Well over half the world (more than 90 countries from Algeria to Venezuela, with all of the members of EU, Britain, Australia, Mexico and many African countries included) have an Artists’ Resale Right (ARR) in their copyright law, but not North America north of the Rio Grande—except for California. North of Mexico, the ARR does not exist except for a 1970s era California law that has been ruled unconstitutional because it infringes on the US federal government’s right to regulate copyright. But that may be changing, at least in Canada and possibly in the US.

The Artists Resale Right is a provision whereby visual artists (e.g. painters, sculptors) are paid a “royalty” each time one of their works is resold. Usually, a minimum or floor price is established before the ARR kicks in, and the sale has to be public, i.e. through a dealer or gallery. When authors sell a book, they get ongoing royalties from sales of the book as well as–in some countries (Canada is an example)–an income stream based on the number of times a work is borrowed from a library (the Public Lending Right). They do not, however, get any revenue from resales of their books, once read and thus “used”. But then a used book when resold tends to lose value. Visual art is often different. Like authors, songwriters and musicians also earn royalties, but this occurs when their work is played or performed. A popular work keeps on giving, except for visual artists unless they live in a country with an ARR regime.

Stories abound of artists who sold early works for a pittance, only to see them rise in value as they changed hands, with profits going exclusively to owners or galleries but not the artist. As recounted by the Center for Art Law in the US, in 1973 prominent art collector Robert Scull sold a Robert Rauschenberg artwork, “Thaw”, at auction for $85,000, at almost ninety five times more than his original purchase price. Scull had purchased the work from dealer Leo Castelli about fifteen years earlier for only $900. Rauschenberg confronted Scull, accusing him of unfairly profiting from the artist’s work. That notorious confrontation provided impetus for the introduction of an ARR in the US at the time, but it failed to gain traction in Congress, despite legislation being introduced in the late 1970s and again in the mid-1980s. The opposition of the art dealers lobby was a prime factor in blocking the initiative.

In Canada, as I recounted in an earlier blog post on the Artist Resale Rights issue, the noted Inuit artist Ashevak Kenojuak sold her famous print, Enchanted Owl, for just $24 in 1960. That’s all that she or her estate ever received for the original work, even though original prints have subsequently sold for over $200,000 (although she may have earned royalties on further reproductions of the work in the form of low-cost prints). The institution of an Artist Resale Right would help redress that situation. Just as in the US, the Art Dealers Association of Canada is opposed, arguing that an ARR would create a bureaucratic nightmare, particularly for small galleries. However, I would contend that if it has been possible to establish a royalty system for the playing of licensed music even in small establishments, in malls, elevators and elsewhere, it should not be beyond the wit of mankind to be able to collect royalties on sales of physical art. The music royalty system works because of the existence of copyright collectives whose prime function is to collect royalties and distribute them, taking a percentage for themselves to cover operating expenses. In Canada, the collective CARFAC (Canadian Artists Representation) and its Quebec counterpart RAAV (Regroupement des artistes en arts visuels du Québec) are ready and willing to step in to fill the role of collection and administration.

The dealers have a number of arguments up their sleeves to oppose the institution of an ARR. They argue that an ARR will increase costs to purchasers and thus depress art sales. The resale fee, like the dealer’s commission, is either paid by the seller or shared between the seller and the dealer. In either case, such an arrangement normally results in increased prices that are recovered in the end from the purchaser. The increase in prices resulting from the addition of a five percent royalty, according to this line of argument, will hurt emerging artists selling their works for the first time (because their work will be more difficult to sell) while the ARR will primarily reward established and wealthier artists. Or so the argument goes. This argument that resale right royalties will go mainly to well established artists who are already wealthy was picked up by cultural columnist Kate Taylor in a recent report in the Globe and Mail.

If dealers are so concerned to keep prices low, they could of course reduce their own commissions, but there is no reason for them to do so. In fact, increasing the value of art is what the business is all about. It is hard to take seriously the argument that the addition of a small royalty–some royalties, like those in France are capped, so that works selling for millions of Euros still bring only a relatively modest return to the artist—will undermine the market. In fact, many aficionados and collectors might welcome the knowledge that some small part of the price will actually flow back to the artist or their estate. While it may be true that most art does not have much of a resale value, keeping a low threshold for triggering the royalty will help address this. It has been suggested that the cut off in Canada be $1000, which, admittedly, will bring a return of only $50 to the artist—but it will establish the principle. Setting the threshold higher would eliminate micro-transactions but would then capture a smaller portion of resales. It’s a bit of a balancing act.

Countering the dealers’ economic arguments is the moral argument of fair return to the creator of the work. A resale right provides a form of ongoing return to visual artists (who retain the copyright to their works even if the physical copy is sold) similar in principle to the royalties to authors, songwriters and musicians. And there is also a cultural equity factor to consider. In Canada, much of the sculptural work sold in galleries is of native origin, especially Inuit. A regular revenue stream, even a modest one, would be welcome in northern communities and would provide a way of helping even out the disparities and profit-taking enjoyed by southern collectors and galleries. The same principle applies to African art, which in part explains why a large number of African countries have adopted an ARR. By applying it in their countries, their artists get the reciprocal benefit of collecting resale royalties when their works are sold in galleries in Europe. It helps a bit in levelling the playing field.

The ARR may even feature in the upcoming UK-Canada Trade Agreement, which is being negotiated to replace the trade regime previously existing between Britain and Canada when the UK was part of the EU. British artists are keen to expand the reciprocal nature of their resale regime; Canadian artists would welcome a commitment by Canada to establish an ARR which would give them access to the same privileges in Britain (as well as resale royalties when their works are sold in Canada).

If Canada moves in this direction, and the Trudeau government has given strong signals that it will do so[i] although exactly when is still not clear, then US artists will have one more reason to resurrect the issue in the United States. If Europe can do it, if Britain, Australia and Canada can do it, if over 90 countries can recognize the work of their artists by building in this economic incentive to help support the arts, then why not the United States? US exceptionalism is one thing; fairness to artists is another. If the ARR comes to Canada—and it already exists in Mexico—then the only “Amigo” in North America not playing the game may eventually decide to come on board.

© Hugh Stephens, 2022. All Rights Reserved.

[i] The December 2021 Mandate Letter for the Minister for Innovation, Science and Industry, who holds lead legal responsibility for amending the Copyright Act, included the following instruction; “Work with the Minister of Canadian Heritage to amend the Copyright Act to further protect artists, creators and copyright holders, including to allow resale rights for artists.”

Canada’s Online News Act: Parliamentary Hearings Continue (My Testimony)


The Standing Committee on Canadian Heritage began hearings late last month to review draft legislation (Bill C-18: The Online News Act) that will follow Australia’s example, with some minor tweaks, to require large digital intermediaries (think Google and Facebook for starters) to negotiate financial compensation with news content providers for the platform’s use of news content to attract users, and thus increase their ad revenues. Among the first witnesses was Prof. Rod Sims, former Chair of the Australian Competition and Consumer Commission (ACCC). Sims was the architect of Australia’s successful News Media Bargaining Code. That Code, when enacted into legislation, allowed collective bargaining on the part of media organizations and required “final offer” arbitration between the parties (Australian news media entities and the designated digital platforms) if deals could not be reached voluntarily. In the end, the arbitration provisions of the Code were not invoked as the platforms instead chose to reach “voluntary” agreements with content providers. In his testimony, Sims stressed the benefit that these arrangements had brought to Australian media, both large players and small outlets, including country weeklies, in terms of additional revenues that have translated into increased employment opportunities for journalists.

While Google and Facebook eventually acceded to the Australian legislation after initially threatening to shut down Search in Australia (Google) or to remove all Australian news content from its platform (Facebook)–a clumsy move that seriously backfired, as I wrote about here—they continue to fight the Canadian legislation by deploying many of the same arguments as were trotted out in Australia. As part of this campaign, an influential tech industry association in Washington, DC, one in which both Google and Facebook play lead roles (the Communications & Computer Industry Association, or CCIA), recently published a paper claiming that C-18 would violate Canada’s trade agreement obligations under the USMCA/CUSMA and the Berne Convention. (See my post of last week challenging these arguments). Others have taken aim at the fact that C-18 has a broad definition of what constitutes “making available” when it comes to news content. “Making available” is the action of the platforms that becomes subject to negotiation with the news media outlets if they facilitate access to content from Canadian news providers. While hyperlinks are not mentioned in the legislation, neither are they excluded and it is apparent that links, headlines and snippets will be covered. In his testimony to the Committee, Michael Geist of the University of Ottawa, a notable C-18 opponent, claimed that inclusion of linking would run counter to Supreme Court jurisprudence on fair dealing, in addition to myriad other criticisms including echoing the CCIA’s questionable interpretation of Canada’s trade obligations as well as questioning the constitutionality of the legislation. These arguments are getting little traction.

Most of the discussion has been about the definition of eligible news businesses and whether really small media outlets can qualify to take part in collective bargaining with the platforms. Along with several other witnesses, I was invited to appear before the Committee on September 27. I focussed my comments on three areas where the legislation has been attacked by its critics, arguing that these criticisms are inaccurate and off base.

A copy of my opening statement to the Committee (with minor additions—like others, I had only five minutes) follows:

”Good Morning. I would like to thank the Committee for giving me the opportunity to present my views on this important issue. I am speaking today in an individual capacity.

In my comments I will be speaking in support of this Bill. In doing so, I would like to address three criticisms that have been brought against it.

One is that the measures proposed by C-18 to stem the decline in journalism are taking aim at the wrong target, the large digital intermediaries, on the grounds that they do not benefit financially from including news content on their platforms, and even if they do, they are already voluntarily providing some financial support to some media.

The second is that the ambit of the Bill is too broad because its definition of “making available” includes some content that would normally be considered fair dealing under the Copyright Act, such as links, headlines and snippets.

The third is that, if implemented in its current form, C-18 would violate Canada’s international trade obligations under the Berne Convention and the Canada-US-Mexico Agreement (CUSMA). I believe all of these criticisms are inaccurate.

I write a weekly blog on international copyright issues and have noted that a number of governments, in the face of fierce opposition from the platforms, have had to resort to legislation in order to level the playing field between news media publishers and the large digital intermediaries.

In 2014 both Germany and Spain passed laws requiring Google to pay news producers for use of their content. Google’s response in Spain was simply to close down Google News, its news aggregation platform, and in Germany to delist any publishers who refused to give Google access to their content without payment. The EU tackled this issue through creation of a limited 2 year press publishers right. Google and Facebook have since come to the table and struck deals with publishers for access to news. France has been particularly successful in this regard.

We know that when Australia decided to “bell this cat”, Google and Facebook mounted a vigorous lobbying campaign and threatened to pull out of Australia. Google also tried unsuccessfully to get the US government to take up its case. In the face of the legislation, however, they backed down and managed to conclude revenue sharing agreements with most Australian media outlets.

In the United States, Congress is currently debating the bipartisan Journalism Competition and Preservation Act (JCPA) which seeks to do much of what C-18 is aiming to accomplish.

I mention these examples to underline that C-18’s objective of helping to preserve a viable professional journalism sector by requiring negotiations for compensation for use of news content by the largest digital intermediaries is not unique; in fact, it is very much in the mainstream of activity taking place in a number of western democracies.

Another criticism of C-18 is that its definition of “making available” is too broad because it includes some actions, such as linking to content, or featuring headlines or snippets, that are normally considered fair dealing under the Copyright Act. There are well established legal precedents in Canada and elsewhere that under most circumstances (but not all) hyperlinking to content is not a violation of copyright. C-18 address this in Section 24, “For greater certainty, limitations and exceptions to copyright under the Copyright Act do not limit the scope of the bargaining process”. (The preceding sentence was not included in my remarks owing to time limitations). It has also been argued that posting hyperlinks provides a benefit to news outlets. Indeed, news outlets do derive a certain benefit from the referral–just as the platforms derive benefit from using news content to attract more users, and thus sell more ads. Under C-18, the balance of respective benefit will be worked out in negotiations between the parties.

While posting hyperlinks, headlines or snippets does not normally constitute a copyright infringement, by the same token C-18 does not deny digital platforms their fair dealing rights. Put another way, their rights under the Copyright Act are not diminished or changed by C-18. However, it will be a violation of the Act if they do not bargain in good faith with respect to making content available. Use of fair dealing exceptions is not a licence to ignore other laws, whether it be the Online News Act, defamation laws or any other legislation. As for the argument that this will interfere with the posting of links by users, such as members of this Committee, that is false. The requirement to bargain over the use of links is restricted in the Bill solely to digital news intermediaries, with a very precise definition.

Likewise, the criticisms that C-18 will violate Canada’s international trade obligations, including the Berne Convention and CUSMA, leading to potential trade retaliation from the United States, do not stand up to scrutiny.

The legislation is drafted in such a way that it does not target US companies, but rather companies with certain market characteristics of size and dominance. Likewise, it does not seek to protect Canadian digital intermediaries that compete directly with Google or Facebook. In addition, the section on non-discrimination does not impose any “must carry” requirements that could violate CUSMA. In the case of Berne, which contains a “right to quotation” under Section 10(1);

 “It shall be permissible to make quotations from a work which has already been lawfully made available to the public, provided that their making is compatible with fair practice, and their extent does not exceed that justified for the purpose, including quotations from newspaper articles and periodicals in the form of press summaries”,

there is nothing in C-18 that derogates from the quotation right. However, use of quotations from news content providers could be a factor in the bargaining process. (The wording of Section 10(1) was not included in my remarks).

Quite apart from not having a strong legal argument to challenge the Bill under either CUSMA or Berne, it is highly unlikely that any government, including the US government, would take up a trade challenge either under CUSMA or the WTO. A key factor is the reality that even within the US high tech sector, not to mention other corporate sectors in the United States, there is no unanimity of views on legislation like C-18. In the case of Australia, when Google threatened to pull its search engine from the country, Microsoft stepped in offering to fill the gap, stating at the same time that it was ready to comply with the new Australian code. In the face of such divided corporate interests and views, it is most unlikely that the US government would be interested in pursuing a controversial trade challenge, one that would in any case be on shaky grounds.

(The reasons why the US government would be most unlikely to take up a trade challenge were not included in my introductory remarks owing to time limitations)

I will end my comments here and look forward to any questions. Thank you.”

There will likely be further hearings later this month to hear from Google and Meta.

© Hugh Stephens, 2022. All Rights Reserved.

Bill C-18, the Online News Act: Does it Violate Canada’s Trade Agreement Obligations?


As Bill C-18 continues its deliberate journey down the Canadian Parliamentary legislative track on its way toward enactment, the Bill’s prime targets (Alphabet, in the form of Google Search and Meta in the form of Facebook) continue to deploy the full force of their lobbying efforts to derail the legislation. Their most recent effort is a White Paper released earlier this month by Washington DC-based tech industry lobby group, the Computer & Communications Industry Association (CCIA). In a valiant but scarcely credible effort the CCIA attempts to argue that if enacted, C-18 would violate Canada’s international trade obligations, specifically commitments it made in the recently updated NAFTA accord (USCMA/CUSMA) and those required by virtue of its membership in the international copyright treaty, the Berne Convention.

In the process, the paper rolls out a number of other arguments against the legislation, such as claiming that it will benefit only a “select few large and powerful media companies” and will “do little or nothing to support sustainable or quality journalism in Canada”, while claiming that it will promote disinformation and content from untrusted third parties. The paper’s authors even claim that any payment from the digital intermediaries, who have scooped up the lion’s share of ad revenues (largely through leveraging content produced by others, usually without any payment), will “jeopardize the long-term viability of the (media) sector”. How will this happen? I guess it is supposed to make them fat and lazy. I will give the authors an “A” for creativity in terms of the range of objections they manage to roll out, but an “F” for making a convincing argument.

What readers should know is that the legislation is currently targeted primarily at two major US-based internet platforms, “digital news intermediaries” in the words of the legislation, just as Australia’s recent legislation to enact a News Media Bargaining Code aimed at the same two companies (Google and Facebook). However, they are not named in the Bill which, if passed, will apply to a;

“…digital news intermediary if, having regard to the following factors, there is a significant bargaining power imbalance between its operator and news businesses: (a) the size of the intermediary or the operator; (b) whether the market for the intermediary gives the operator a strategic advantage over news businesses; and (c) whether the intermediary occupies a prominent market position.”

Intermediaries have to self-designate, and the definition is generic, but it is clear who we are talking about. The CCIA paper goes to great lengths to quote Canadian politicians to show that Google and Facebook are the main targets although there are also references to “GAFAM”. (Google, Apple, Facebook, Amazon, Microsoft). If the shoe fits, wear it. No one has ever denied where the problem lies. And yes, they happen to be all US companies—for the moment.

The CCIA paper argues that if Alphabet and Meta are the only companies captured by the legislation, this amounts to a denial of national treatment (treating entities of your trading partners in an equivalent manner to domestic entities) and would be a USMCA/CUSMA treaty violation. But is this true? Hardly. Unless a measure is proven to be a disguised barrier to trade, as long as it applies to all companies, domestic or foreign, it will be difficult to substantiate a national treatment violation even if at the moment it affects only certain companies because of their size, market dominance or some other reason. Just because the affected companies happen to be headquartered in the US, it does not follow that this is an action targeted exclusively at US or foreign companies. For example, given the growing use of its platform for news distribution, it is possible that a platform like TikTok could fall within the ambit of the legislation.

C-18 is no more a violation of the national treatment principle than the EU’s Digital Markets Act (DMA), which targets the anti-competitive behaviour of “internet gatekeepers”, who happen to be prominently represented among the GAFAM US-based companies. The US government has not objected to the DMA on national treatment grounds (although Silicon Valley certainly has). Such criticisms as there are accuse the EU of targeting US “gatekeeper” companies in order to protect competing European companies. In the case of Canada, there is no suggestion that any provision of C-18 is designed to offer trade protection to Canadian companies competing with the “digital news intermediaries”. In short, charges that C-18 violates Canada’s national treatment obligations are a red herring.

Just as the Bill contains a definition for digital intermediaries that are subject to the legislation, so too it defines an “eligible news business”. An eligible business, one that can enter bargaining with the platforms for compensation for use of Canadian news content, is any entity producing news content that receives the journalism tax credit or which has a minimum of two journalists in Canada and operates and edits material in Canada. That hardly limits the benefit to “large and powerful media companies”. The CCIA paper goes on to argue that the definition of an eligible news business will make it difficult for Canada to avoid a charge of unjustified discrimination against US media organizations. This argument must truly be galling to US news producers, none of whom belong to the CCIA and most of whom are engaged in trying to bring about the same legislation in the US as Canada is proposing.

In claiming that the legislation is a violation of national treatment, the CCIA makes the laughable comparison with the maple syrup industry, where Canada apparently has a 66% percent market share in the US. (Canada exports 85% of global production). Apart from the fact that there are over 8000 businesses producing maple syrup in Canada spread over 5 provinces (although the large majority are in Quebec, where the climate is most conducive), it is hard to equate the $300 million in Canadian maple syrup exports to the US to the role that Google and Facebook play in the Canadian digital ecosystem. There is no one, giant maple producer that controls 95% of the market in the way that Google dominates online search, or which controls 80% of digital advertising revenues as Google and Facebook do. But this is not the only flaw in reasoning in the paper.

It claims, incorrectly, that C-18 “in essence” imposes a must-carry obligation on US digital news intermediaries with respect to Canadian news content because of the non-discrimination provisions of the legislation. This is way off base and just plain wrong. While it is likely true that to operate successfully in Canada, Google and Facebook need to reference and link to Canadian news media content in order to appeal to Canadian consumers, they are not obliged to do so by the legislation. However, if the platforms opt to “make available” Canadian news content, then they will be subject to the Act and be required to enter compulsory bargaining with news providers, subject to final, binding arbitration if negotiations fail, as was the case in Australia. (If they voluntary reach agreement with news providers, the compulsory bargaining and arbitration provisions will not apply, again, as per the Australian example).

C-18 (Section 51) imposes a non-discrimination requirement on any internet intermediary that makes Canadian news content available in order to ensure that platforms cannot demote or promote certain content over others for their favoured or disfavoured partners, particularly during the negotiation phase. But Section 51 does not require them to make Canadian content available, as the CCIA paper claims, and the law does not prescribe any form of mandatory carriage. The CCIA paper also states incorrectly that if a digital intermediary decided not to make available any Canadian news content, this would prevent it from displaying non-Canadian sources such as the New York Times or the South China Morning Post. This is a fanciful re-interpretation of the Bill. To reiterate, the non-discrimination provision does not require that Canadian news content be made available; however, if it made available then it must be done in a non-discriminatory manner. Distribution of non-Canadian content is not subject to this provision. The wording is Section 51 is clear. The non-discriminatory provisions apply only to “news content that is produced primarily for the Canadian news marketplace by a news outlet operated by an eligible news business”. An “eligible news business” must be based in Canada.

While there is no legal requirement to carry (make available) Canadian news content, nor is there any provision that prevents the distribution of non-Canadian news content in Canada, the market reality is that if Google and Facebook are to be successful in the Canadian market of 38 million people, they will have to make Canadian news content available to their users, as they have been doing. They produce not one column inch of content yet benefit from the readership that this content attracts through domination of digital ad markets. It is this anomaly that the legislation is designed to correct.

Because the CCIA paper has chosen to mischaracterize the bill, its arguments that C-18 violates Canada’s trade obligations under the USMCA/CUSMA and Berne do not stand up to scrutiny. First, as noted above, simply because a measure at the present time may capture a couple of US companies even though broadly targeted, this does not mean the action is a violation of national treatment. The argument that the non-discrimination provisions are, in effect, a “must-carry” requirements for Canadian news content are also inaccurate, negating the argument that this is a violation of the investment chapter of the USMCA that prohibits the imposition of “performance requirements” on investments from a NAFTA country. Even if the above arguments were valid, which they are not, Canada could still invoke discriminatory measures under the cultural exception provision of the CUSMA, Article 32.6, because publication of newspapers, periodicals and magazines is defined as a cultural industry. The cultural exemption clause allows Canada to take measures to protect or promote a cultural industry even if to do so would infringe a USMCA/CUSMA obligation. However, invoking 32.6 would invite retaliation of equivalent commercial effect, and there is no need to do so because C-18 is not in violation of the USMCA.

Another argument trotted out by the CCIA is that C-18 will lead to a breach of Canada’s obligations under the Berne Convention (incorporated into the WTO) because, under Berne, there is a “right to quotation”. The paper also claims that the bill undermines longstanding legal principles related to limitations and exceptions to copyright protection. In Canada, these largely fall under the fair dealing provisions of the Copyright Act; in the US they fall under the somewhat broader “fair use” provisions. In fact, C-18 makes no changes to the Copyright Act, and designated internet intermediaries could still exercise a right to quotation under fair dealing if, for example, they produced content that required use of quotations. Fair dealing and other user rights under the Act are unaffected. However, fair dealing cannot be invoked by the designated platforms to avoid their obligation to enter bargaining with news providers, which is a measure designed to redress a market imbalance rather than adjudicate copyright issues. Put another way, the exercise of fair dealing under the Copyright Act does not provide immunity from the need to comply with other legislation, whether it be the Online News Act or some other legal requirement.

The relevant part of the draft legislation dealing with this issue (Section 24) states that “For greater certainty, limitations and exceptions to copyright under the Copyright Act do not limit the scope of the bargaining process.” As I recently discussed (here and here), while the term “making available” covers linking, which is generally not a violation of copyright (except in certain, well-defined circumstances) and is thus a permitted activity under the Copyright Act, it is also subject to the bargaining framework when employed by designated digital intermediaries—and only the designated digital intermediaries, not other users.

While all these nuances could, potentially, be argued before a WTO or NAFTA panel (except that the US has frozen the WTO process by blocking appointments to the WTO’s appellate body), this raises the more fundamental question as to whether the US Government would be willing to take up cudgels on behalf of Google and Facebook. (A company cannot bring a trade dispute case itself; it has to be done by a government). Neither corporation is exactly in good odour in Washington these days and some of the actions the CCIA objects to are in fact already underway in the US. While the CCIA paper argues against C-18 because it will allow the Canadian media to bargain collectively, (becoming a “cartel” in the CCIA’s words), legislation that would provide exactly the same exemption from anti-trust provisions is currently before the US Congress. (The Journalism Competition Preservation Act-JCPA). It is also worth recalling that the US Government represents US interests broadly. Among those interests are the US journalism industry (which would like to see legislation similar to C-18 in the US) and other companies within the tech sector that are competitors of Google and Facebook. Let’s recall that when Google threatened to pull out of Australia, removing its search function because of impending Australian legislation very similar to C-18, Microsoft stepped in and offered to fill the void, at the same time indicating it would be happy to comply with the Australian law. (Google’s Tussle Over Payment for News Content in Australia: Microsoft Scrambles the Cards–With Positive Implications for Canada and Others) When there are disparate US interests and different voices–equally influential–to consider, don’t expect the US Government to rush to become advocates for Google and Facebook. While the CCIA took up their case, I note that both companies are members of the organization. Microsoft does not appear to be a member.

So, what then are we to make of all this? Simply put, the CCIA paper is a valiant but unconvincing lobbying effort. It tries to invoke scare tactics and threaten US retribution under the USMCA/CUSMA, but it’s a paper tiger. Its arguments are unconvincing and tendentious, and the likelihood of the US Government actually bringing a CUSMA case if C-18 becomes law are somewhere between very slight to zero. And if they did, the case would almost certainly fail.

Australia and France have already brought the big internet platforms to heel when it comes to working out equitable income sharing arrangements with news media. Canada will undoubtedly succeed in doing the same. The US will likely be next in line even though the CCIA will deploy its considerable lobbying heft to oppose action at home as it is doing in Canada.

© Hugh Stephens 2022. All Rights Reserved.

Stopping the Trade in Fake Indigenous Art: Following in the Footsteps of Lucinda Turner

Artist: Ed Simeon (1976); Credit: Simon Fraser University

The lamented passing of artist and activist Lucinda Turner in Vancouver in early July reminded many of the struggle she engaged in to protect Pacific Northwest Coast Indigenous artforms from counterfeiting and copyright infringement. Turner, a non-Indigenous artist who worked for many years with Nisga’a master sculptor and carver Norman Tait, took up the cause of fighting to protect Indigenous, especially Pacific Northwest, art from blatant copying, plagiarism, counterfeiting and passing off after Tait’s death in 2016. Many of the unauthorized reproductions are produced in Asia, with large numbers of the carvings coming from Indonesia, being executed in teak or other wood not native to the Northwest Coast. Others are copies made closer to home, usually by non-native artists.

To combat the trade in fakes, Turner started the Facebook group Fraudulent Native Art Exposed (FNAE), in which she catalogued literally thousands of knock offs of native art. The site includes a registry of authentic native artists as well as a model DMCA takedown letter. (For those not familiar, the DMCA is US legislation that allows those whose copyright has been infringed to submit letters to internet platforms in the US requiring them to remove infringing materials from their site). Today, the group continues as a discussion forum. The topics are interesting, ranging from outing of retail outlets selling fake Northwest Coast art to discussions around cultural appropriation and who can claim native ancestry.

In 2019 Turner stepped up her campaign, drafting an open letter to the Canadian government. In it she called for introduction of legislation and policies to uphold and protect Indigenous intellectual property and copyright through stricter laws and enforcement. Specifically she put forth five recommendations;

  1. Clearer identification to make it easier for a buyer to determine if a work is authentic or not. Institute for Northwest Coast Indigenous artists a system similar to the Canadian “Igloo Tag Trademark” or Alaskan “Silver Hand” that protects Inuit and Alaska Native artists from fraud, cultural appropriation, and theft, by distinguishing authentic Inuit and Alaska Native works from those using Arctic imagery;
  • The introduction of an Indigenous Artists Registry using blockchain technology to enable a direct link to an artist’s portfolio and biography, providing artists with a place to document designs, control ownership, establish provenance, and track works as they are sold;
  • Criminalize and enforce laws against fraudulent acts of purporting to donate proceeds or parts of proceeds to Indigenous communities or associations (fundraising for Indigenous causes using Indigenous images without authorization);
  • Encourage the sale of Indigenous art by eliminating Federal and Provincial sales taxes on these items while retaining (or even increasing) taxes on “Native-Inspired” pieces;
  • Distribution of information pamphlets on where and how to buy authentic Indigenous art in places such as high-traffic tourist areas to help teach consumers how to identify authentic art, and what questions to ask such as: where the product was created, the artist’s name and First Nation affiliation, and whether or not the artist receives royalties from the sale.

These recommendations are a combination of legal action and raising consumer awareness through information and marketing. As in many things, price will usually be the first indicator of whether or not an article is genuine but is not always determinative, especially when well-executed knock-offs are marketed at similar prices to authentic works.

Despite Turner’s call to action, and despite recognition by two Parliamentary committees in 2019 (the Shifting Paradigms report of the Heritage Committee and the INDU Committee Report from the Committee on Industry, Science and Technology) of the need to take special measures to protect Indigenous art, almost nothing has been done to date. This is partly due to delays in revising the Copyright Act (required every five years, with the last revision being in 2012) because of the interruption of two elections (in 2019 and 2021), as well as the government’s focus on other priorities including combatting COVID.

The Minister for Canadian Heritage, the head of one of two government departments responsible for copyright, has been preoccupied with other legislation, such as the Online Streaming Act, Online News Act and legislation dealing with online harms. The lead department responsible, Innovation, Science and Economic Development, has had many other issues to deal with and copyright has been put on the back burner. That may be changing now the Trudeau government has secured a likely mandate to govern until 2025 through a confidence and supply agreement with the opposition New Democratic Party. There is now sufficient time to bring forth proposed changes, conduct public consultation and hopefully get changes through Parliament before another election intervenes and cuts short the legislative process.

With copyright review getting underway within the bureaucracy, calls for more action to stop the trade in fake Indigenous art are increasing. Among those leading the charge is Senator Patricia Bovey, independent Senator from Manitoba and the first and only art historian to sit in the Senate. She served as Director of the Winnipeg Art Gallery (1999-2004) and the Art Gallery of Greater Victoria (1980-1999), has been a professor of Art History, President of the Canadian Art Museum Directors Organization for three years and served on the Board of the National Gallery of Canada. It’s fair to say she knows her stuff, and that she is concerned. While an independent Senator can only do so much in terms of bringing forth legislation, she can encourage, prod and circulate ideas. Among these is the creation of a mechanism or fund to track down companies fabricating Indigenous works or failing to pay royalties. Another would be to strengthen Canada’s “soft border” against trade in fakes. Some of these measures could be addressed by the Copyright Act; others will require legislation in other areas.

As I have written elsewhere, “Can Copyright Law Protect Indigenous Culture? If Not, What is the Answer?”, copyright is not always a perfect fit when it comes to protecting Indigenous Cultural Expression (ICE) which may be more community than individually based and often relies more on stewardship than ownership. But there are still contemporary Indigenous artists who are facing direct consequences now from the growing trade in fakes, facilitated by sales through the internet. Action is needed. A key element is to be able to easily distinguish between real and fake Indigenous art. Lucinda Turner’s idea of making the genuine article free of sales tax would be one transparent way to indicate the difference, allowing law enforcement to take action against fraudulent efforts to pass off non-Indigenous works as genuine as doing so would be a violation of the tax code. Another suggestion is to bring in Canadian legislation that would mirror the US Indian Arts and Crafts Act of 1990 that prohibits the sale, or offer for sale, of any product that falsely suggests it is Indian produced, an Indian product, or the product of a particular Indian “tribe”. There are heavy penalties for violation of the law. In 2018 an owner of several Albuquerque, NM, jewellery stores was imprisoned and required to pay over $9000 in restitution for passing off Filipino-made jewellery as authentic Native American art.

However, the legislation is not necessarily a silver bullet. Apart from questions as to who qualifies as “Indian” under the Act (in the case of the US law it is a member of a federally or state recognized Indian tribe or an individual certified as an Indian artisan by a tribe), the law does not deal with “lookalike” art. As long as there is no false claim that the work is an Indian product, the law does not apply. In other words, non-Indian works taking inspiration from Indian designs, but not claiming to be Indian-made, are not targeted by the law. To close this loophole would be difficult because many non-Indigenous artists have drawn inspiration from native designs, eg. Hopi and Navaho geometric patterns. The most effective means may be to ask artists to be respectful of the cultural significance of works they are inspired by, but that still won’t stop mass marketing of cheap look-alikes for tourist consumption, such as totem poles, masks, jewellery, Inuit sculptures and so on.

If certain art forms are restricted to Indigenous practitioners in Canada, the question of who might qualify to produce them could be tricky since the term “Indigenous” includes members of First Nations reserves with status under the Indian Act, non-status people of Indigenous descent, Inuit and Metis, although “qualification” could no doubt be solved by some form of registry. There is also the question of regional origin within the Indigenous community. For example, should an Indigenous person from, say, the northern prairies be able to claim Indigenous status as a producer of Pacific Northwest Coast art?

But the most difficult question is how to handle clones of Indigenous art, such as elaborately and cheaply carved “copies” from places like Indonesia (where there are also master carvers very good at copying the work of others, in some cases commissioned by businesses in North America), and where there is technically no claim that the work is of Indigenous origin. While Indigenous artists in Canada would like to see those copies stopped at the border (training of border guards is another issue), as long as those “copies” are not exact replicas and not marketed as originals, it will be difficult to stop such trade. If fake art is being imported and passed off as the original, whether it is of Indigenous design or not, it should be stopped. However, if the works simply take inspiration from Indigenous, or non-Indigenous designs, as much as I sympathize with the artists of the original works, it is hard to design a law that will target the problem without causing some kind of collateral damage to trade. This is where a mark of authentication could come in handy. False labelling would be grounds for seizure of goods. Also, the threat of heavy fines and seizure of fake goods might provide some deterrence and ensure that imported artwork is clearly identified as such.

There is definitely a problem, although the solutions are not simple. While stopping or discouraging the trade in fakes is important, equally important is letting consumers know what is real and what is not. Price does not always provide the necessary distinction. The creation of an Indigenous Art Registry (that work has already begun) and the establishment of a mark of authenticity or a trademark would help consumers identify the provenance and bona fides of a product they want to buy. If I want to buy the real thing, I don’t mind paying a fair price for the genuine article but I really don’t want to pay a similar price for a knock off made elsewhere. That undermines the entire market.

It looks as if the work of Lucinda Turner will be carried forward by others, including Patricia Bovey. Some changes will likely be addressed through Copyright Act revisions. Others may come about as part of the ongoing Reconciliation efforts with Indigenous communities. Still others may come about as a result of tightening the border against the trade in fakes of all kinds. For example, the new NAFTA trade agreement (aka USMCA/CUSMA) requires that customs officials in Canada, Mexico and the US have “ex officio” powers to stop suspected counterfeit goods. “Ex-officio” means that customs officials can act on their own authority if they suspect that a shipment contains fakes, rather than having to wait for a rights-holder to bring a case. In other words, they can pro-actively interdict traffic in fakes rather than simply being reactive.

This is a complex file that involves Indigenous rights and culture, international trade, copyright and trademark, and consumer protection. This suggests that a coordinated approach across government is needed. Lucinda Turner was a leader in taking up this challenge. Others are following her example. I wish them success.

© Hugh Stephens, 2022. All Rights Reserved.

Copyright Protection for Transitory or Ephemeral Works: Going Beyond the Photographic Record

Last month, I discussed the ephemeral art of US sand sculptor Jim Denevan, noting that the simplest way for Denevan to protect his monumental sand designs (if he wished to), was by photographing them. That is what Denevan has done on occasion, through his son, drone photographer Brighton Denevan, who took the stunning photos of the work Denevan père executed at Chesterman Beach in Tofino, BC, earlier this year. That work was obliterated after 9 days when a king tide came in. But what if Denevan hadn’t photographed the work? Could it still have been protected by copyright given that it was “transitory” and not “fixed”?

Unlike in the US, UK copyright law does not explicitly require fixation or permanence for artistic works (as opposed to literary, dramatic, or musical works, where it is required). A recent case in the UK (Islestarr Holdings Ltd v Aldi Stores Ltd) illustrates the tricky role of fixation when deciding infringement. The case involved a design embossed into cosmetic make-up powder, which had been copied by the alleged infringer. Although the embossed powder compact design disappeared when used (i.e. it was transitory), the court nonetheless ruled that the product was sufficiently fixed even if not “permanent” because the embossed powder was based on a fixed design. As noted in the Kluwer Copyright Blog;

“The decision shows that with artistic copyright (in the UK) the emphasis is on the content conveyed by the work as opposed to the medium on which it is fixed.  Provided the design of the artistic work is recorded in some form, the physical manifestation of the design will, in principle, be entitled to artistic copyright regardless of its permanence.  In the Islestarr decision it was relatively straightforward to establish fixation from earlier design drawings…”,

Jim Denevan’s sand installation took place in Canada which also does not have an explicit requirement for fixation in its copyright law, (other than for content transmitted by telecommunications), unlike the US. However, according to Canadian case law, to be protected a work must be expressed to some extent in some material form, capable of identification and having a more or less permanent endurance. Perhaps the designs Denevan used to create his work were in a tangible form, allowing him to assert copyright based on the designs before they were carved into the sands of Chesterman Beach. But perhaps he simply had the design in his head and executed it without preparing a physical copy. In that case, it would seem that copyright would have to depend on an image (such as a photograph) of the non-permanent object if the work is to be protected.

The question of whether a design qualifies for protection regardless of the permanence of the expression of the design, as in the Islestarr case, is interesting to explore. In Denevan’s view, his instructions on how to assemble a work (such as his “Angle of Repose” sculpture at DesertX 2022), are protectable by copyright. In my discussion with him, he pointed out the case of the American conceptual artist Sol LeWitt. LeWitt was known for myriad variations in drawing lines onto walls. His creation was the set of instructions on how to execute the lines, although each artist—usually his assistants–following these instructions would produce something slightly different each time. In LeWitt’s thinking, the instructions were the copyrightable form; the actual physical manifestation was secondary.

I remember visiting the Art Gallery of Ontario a few years ago when an installation by the Chinese artist Ai Weiwei, titled 90 Tons of Steel, was being set up. The work itself was a collection of straightened rebar taken from schools in Sichuan Province that had been destroyed by the 2008 earthquake. Ai had extracted the steel rods, straightened them, and then assembled them into a ripple pattern resembling a seismic wave. The work was a criticism of the Chinese government and local officials for allowing shoddy construction in schools, resulting in the deaths of many students. As the curator was assembling the work, which as I recall had just arrived from New York, I asked him how he could ensure the design was faithful to Ai’s conception. (Ai was not in Toronto; at the time he was under house arrest in China).

The curator said he was following Ai’s instructions but conceded that the layout in Toronto would inevitably differ in some respects—since the bars were not interlocked in any way– from the display in Indianapolis, or Boston, or wherever the exhibition was going next. Yet no-one would dispute that the work was Ai’s and that it was protected by copyright.  The work was clearly transitory or ephemeral since after its run in Toronto, it would be packed up and shipped to another art museum and be laid out again in a different setting. In effect it was Ai’s design as translated through his instructions that was the heart of the work, and which is presumably protected by copyright, rather than the physical expression of the work wherever it may appear. In similar fashion, recorded verbal instructions for assembly of an artwork could be argued to be protected by copyright even though the resulting work might not be fixed.

While it may seem a stretch to argue that a sand sculpture could be copyrighted if it was the expression of an original, recorded design, this happens in other art forms where an ephemeral or transitory expression can be protected by copyright if the instructions are fixed. Choreography is a good example. There is no question that dance choreography is protectable; there are numerous examples. The form of fixation can be a video recording or photograph, but it can also be through dance notation or textual descriptions. The actual performance, which could itself be protectable through the performers’ rights, is unlikely to be an exact replica of the dance each time it is performed, giving it a transitory nature. Yet it is protectable under copyright, as explained by this article in Dance Magazine.

So, while a photograph by the author (or, in the US, on behalf of the author as a work for hire) is a good way to ensure that a transitory work can be protected by copyright, it is not the only way to accomplish this.

© Hugh Stephens, 2022. All Rights Reserved.

Silicon Valley’s Unsuccessful Attempts to Export Section 230 through International Trade Agreements

Credit: Author

A couple of weeks ago I wrote about the Omegle case, a potentially ground-breaking suit in the US in which an internet platform, Omegle, was denied the use of the Section 230 liability immunity defence by a judge in Oregon. The case involved Omegle’s online meeting platform in which it randomly pairs strangers for dialogue—and often more. In this case it paired an 11 year old girl with a male sexual predator in his thirties. The resulting online abuse went on for several years. Section 230 is part of legislation passed in the US at the dawn of the internet age, the 1996 Communications Decency Act. Section 230 provides internet platforms with immunity from civil liability for user content posted on their services, regardless of whether the platforms are aware of illegal content or not and regardless of whether they exercise any content moderation.

Silicon Valley is a big fan of Section 230, arguing that without it we would not have the internet, or at least the internet would not have developed the way it has. (Some would say the way it has developed is a big part of the problem). Silicon Valley’s mouthpieces, like the Electronic Frontier Foundation (EFF) and academics like Eric Goldman, Professor of Law at Santa Clara University (in the heart of Silicon Valley), love it and promote it. Goldman thinks Canadians should adopt it and set out a five-point primer on why Canada should be so lucky to have Section 230 as part of its corpus of law. (See my response, here).  “Thank You Professor! “Explaining” Section 230 to Canadians”.

Fortunately, Canada has not adopted Section 230 despite the attempt by Silicon Valley and its acolytes to have the US Government negotiate a Section 230 commitment by Canada (and Mexico) in the recent update to NAFTA, aka the USMCA or CUSMA. While some Section 230-like language was included in the USMCA (Article 19.17) it was effectively nullified by a footnote in the Agreement that stated “For greater certainty, a Party may comply with this Article through its laws, regulations, or application of existing legal doctrines as applied through judicial decisions.” As a result, when the CUSMA omnibus legislation was introduced into Parliament to implement Canada’s obligations under the new NAFTA, there was no reference to any legislation required to implement Article 19.17. Why? Because none was required. Simply put, Section 230 does not exist in Canadian law despite whatever language may exist in USMCA/CUSMA because no legislation was passed to implement anything related to Article 19.17. This “primacy of Parliament” principle was recently confirmed by the Supreme Court of Canada (SCC) in an unrelated case, Society of Composers, Authors and Music Publishers of Canada v. Entertainment Software Association (SOCAN v ESA, 2022).

The issue in the SOCAN/ESA case involved whether the “making available” right, implemented into the Copyright Act in 2012 to ensure Canada’s adherence to the WIPO Internet Treaties (1996), was a new right or simply confirmation that it was already protected. The SCC found that Parliament did not create a new right, notwithstanding treaty language and obligations undertaken by Canada. Meera Nair, in her blog Fair Duty notes that “Canadians should savour a significant theme in this decision—that when examining the intersection of international agreements with domestic law, it is the will of Parliament that matters”. She goes on to quote from the Court’s decision;

“While a treaty can be highly relevant to statutory interpretation, it cannot overwhelm clear legislative intent. The court’s task is to interpret what the legislature (federally and provincially) has enacted and not subordinate this to what the federal executive has agreed to internationally. It is always the domestic statute that governs because “international law cannot be used to support an interpretation that is not permitted by the words of the statute” (para 48, citation omitted).”

Thus, regardless of the wording of Section 19.17 of the CUSMA/USMCA, Section 230 does not exist in Canadian law because no law implementing it has been enacted by Parliament.

A current case before the BC Supreme Court (Guistra v Twitter) further demonstrates this reality. Frank Guistra, a prominent businessman who has also engaged in considerable philanthropy, including with the Clinton Foundation, resides in both British Columbia (BC) and California and has businesses in both. He sued Twitter in BC for refusing to delete defamatory remarks posted by third parties on the platform associating him with the thoroughly discredited and bizarre conspiracy theory related to Clinton and pedophilia, often referred to as “Pizzagate”. Twitter tried to get the case in BC thrown out, arguing that it should be tried in California. The BC Court demurred for a number of reasons, among them the argument that if the case were tried in California, Guistra would have no cause of action because of Section 230. Prominent technology and copyright lawyer Barry Sookman has a full discussion of the case here.

Twitter appealed the BC Court’s decision regarding jurisdiction and lost. While there were several reasons why the British Columbia Supreme Court ruled it had jurisdiction, one of the reasons it gave for rejecting Twitter’s request to transfer the case to California was that this would deny Guistra the opportunity to clear his name–because the case would be summarily dismissed under Section 230. On the contrary, if he has that opportunity in BC it follows that the Section 230 remedy does not apply in Canada. Twitter could use Section 230 to have the case dismissed in a US jurisdiction; not so in Canada.

That will disappoint Eric Goldman, who has argued that Section 230 is the law in Canada (although he added the caveat, “but not really”) and his Canadian counterpart, Michael Geist of the University of Ottawa. During the USMCA/CUSMA negotiations, Prof. Geist suggested that Canada give the US a “win” on this point and signed on to a letter sent to US, Mexican and Canadian trade negotiators by a number of (mostly) US academics urging inclusion of a Section 230 commitment in the Agreement that would bind the Parties.

It is not only Canada that has been the target of the US tech industry’s efforts to lobby the US government to include Section 230 as a trade negotiating objective. The US-Japan Digital Trade Agreement, signed in October 2019  contains similar language (Article 18.2) to that contained in USMCA/CUSMA Article 19.17. However, like that Agreement it also included a “clarifying footnote”, an almost word for word rendition of the caveat Canada used to avoid implementing Section 230 into law. However Japan went one step further and insisted on a side letter to their agreement with the US that said, in part;

“The Parties recognize that there are differences between their respective legal systems governing the liability of interactive computer services suppliers….Moreover, based on a review of information on the operation of Japan’s legal system and discussion between the Parties, the Parties agree that Japan need not change its existing legal system, including laws, regulations, and judicial decisions, governing the liability of interactive computer services suppliers, to comply with Article 18.”

The Japanese want no part of Section 230 either!

Section 230 is also coming under increasing scrutiny in the US, both in Congress and through various reform proposals emanating from think-tanks and elsewhere. Silicon Valley continues to fight tooth and nail to preserve the virtual blanket exemption from civil liability that they were handed back in the infancy of the internet. The Omegle case is one more example of chipping away at the impunity with which platforms have (mis) used Section 230. While the case is not yet concluded, and it is possible that the judge’s decision to dismiss the Section 230 defence offered by Omegle will be reversed on appeal, it is nonetheless one more sign that the days of virtually unrestricted use of a civil liability shield by online interactive computer services (platforms) in the US are coming to an end.

If Section 230 (in its current iteration) is on life support at home in the US, it is not surprising that it is not being embraced by other countries, even though (up to now) US trade negotiators have continued trying to push it on their trading partners. It doesn’t belong in trade agreements, and to date the US Government has been unsuccessful in force feeding it to other countries, including close trading partners such as Canada and Japan. There is a growing awareness around the world that internet intermediaries can and should be held accountable for content on their platforms when they have knowledge of abuse and ignore it, or if the platform and its algorithms is designed to encourage or perpetuate abuse or illegal behaviour. Instead of trying to push Section 230 on to other countries, the US should be moving ahead with Section 230 reform domestically.

© Hugh Stephens 2022. All Rights Reserved.

The Omegle Case: Another Nail in the Coffin of Section 230

Source: (modified)

You may never have heard of Omegle–or perhaps you have. It is an online platform that allows people to meet and talk to total strangers online through video links. Participants are randomly paired but there is also a form of self-selection by indicating shared interests. Once people are paired, they can stay and chat or move to another partner. The site has a reputation for being raunchy, attracting those with a penchant for kinky behaviour (along with those who just want to chat with strangers about whatever) and, unfortunately, as a place where sex predators meet children online for “grooming”. The site has the standard disclaimers on its home page, but there is no age verification process and apparently very little content moderation.

The BBC did an investigative report on Omegle and came up with some disturbing findings. When it input a certain keyword reflecting its supposed interests, it was more frequently paired with people engaging in explicit activity. BBC didn’t reveal the keyword, which apparently has now been dropped from the service, but judging by the type of material the reporter was exposed to, my guess is that it may have started with a w and rhymed with banker. User beware.

Omegle has been in the news recently because one of its users, at the time (2014) an 11 year old girl, is suing the platform in a product liability case. She was randomly paired by Omegle with a man in his late thirties who went on to sexually abuse her online for several years. The perpetrator, a Canadian resident, has been convicted by a Canadian court in a criminal prosecution. However, the plaintiff alleges that Omegle is also responsible for the outcome, based on product liability arising from defects in design, defects in warning, negligence in design, negligence in warning and instruction, facilitation of sex trafficking, sex trafficking of children, human trafficking and negligent misrepresentation. That is quite a list.

Not surprisingly, Omegle trotted out (among others) the infamous Section 230 defence, arguing that it was not liable for user-generated content on its site. That defence was recently dismissed by a district court in Portland, OR. The ruling was based on the platform’s design rather than the content itself with the presiding judge writing that “Omegle could have satisfied its alleged obligation by designing its product differently—for example, by designing a product so that it did not match minors and adults.” The Section 230 immunity did not protect Omegle. That is good news for those concerned about Section 230 over-reach and the abuse of this provision by internet intermediaries.

Many readers will be familiar with the origins of Section 230 and its use over the years by internet platforms to shield themselves from any civil liability arising from content on their services, notwithstanding obvious abuses and the fact that many platforms encourage controversial and marginally legal (or in some cases blatantly illegal) content in order to attract viewers, and thus ad revenues. Tech companies love it and have defended it tooth and nail. It has been under close scrutiny in the US Congress from both Republicans and Democrats.

Republicans got engaged when Donald Trump threatened to revoke the legislation because Twitter had the temerity to fact-check some of his more outrageous tweets. There are many good reasons for revising Section 230 but this was not one of them. In 2018 sex trafficking was carved out of the legislation, removing the liability immunity for platforms that promoted sex trafficking and prostitution, largely because of the role that platforms like Backpage played in sexual exploitation of minors. That legislation, known as FOSTA/SESTA (Fight Online Sex Trafficking Act—the House version—and the Stop Enabling Sex Traffickers Act—the Senate version) has been controversial because it has seldom been used to prosecute offenders and has been criticized by sex workers as having removed a legitimate forum for communication. Nonetheless it has helped to stop online advertising related to child sex trafficking.

The Democrats, particularly in the person of Senator Ron Wyden (D-OR), one of the authors of Section 230 in the first place, are concerned that the balance in the legislation, which was supposed to be (as described by Wyden) both a sword and a shield, has become nothing more than a shield. The sword was supposed to have allowed the platforms to undertake necessary content moderation without being sued. Instead, it is the immunity provided from avoiding any content moderation that has come to prevail. In an interview back in 2018 with The Verge, Wyden said;

“…what was clear during the 2016 election and succeeding events surrounding Facebook, is that technology companies used one part of what we envisioned, the shield, but really sat on their hands with respect to the sword, and wouldn’t police their platforms….The industry better start using the sword, part of the two-part package, or else it isn’t going to be in their hands”.

So, in short, Section 230 is under attack from both sides although neither can decide exactly what action to take. In the current Congress about 20 bills have been introduced that would amend Section 230 in one way or another, although none seems to have enough impetus to pass. But the courts may be making more progress, at least if the Omegle decision stands. Denying platforms immunity when they ignore obvious abuses, or, in this case, design their platforms to facilitate abuses, is hopefully one more nail in the coffin of Section 230 as it exists today.

© Hugh Stephens, 2022. All Rights Reserved.

The Incoming Tide and its Relation to Copyright: Jim Denevan’s Ephemeral Creations

Credit: Brighton Denevan-Used with permission

“Time and tide wait for no man”, Geoffrey Chaucer is reputed to have said back in the 14th century (although versions of the saying predate Chaucer). King Canute proved the truth of this parable in his unsuccessful attempt to command the tide to recede. All he got was wet feet—although he apparently didn’t really believe he could stop the tide but rather was trying to demonstrate to his nobles the limited power of kings. In this, he evidently succeeded. The tide tables continue to be a welcome element of stability and predictability in an unstable and uncertain world. We rely on them to time boat launchings, decide when we should go fishing and, in the case of sand artist Jim Denevan, to know how much time he has left to work on his sand sculptures and when, precisely, his artistic creations will be inundated and obliterated for all time.

According to a CBC report on Denevan’s work at Tofino’s Chesterman Beach on the rugged west coast of Vancouver Island, he takes a philosophical approach to the immutable power of the tides, saying that it is a good life lesson because nothing is permanent. On July 9, at 9:30 p.m. the incoming tide washed out four months of planning and preparation and over a week of work, the designing, digging, etching and creation of an amazing geometric installation in the sand of Chesterman Beach. Chesterman was chosen because, unlike many beaches where the force of nature exerts its presence twice a day, this beach has a berm that is breached only when a king tide comes in. As it did on July 9.

Denevan has created sand installations in many locations, some on dry land, others on beaches. He has worked in various parts of the US (where there is sand, either beach or desert), Saudi Arabia, the UAE, Australia and Canada. His works are massive—and ephemeral by intent. The Tofino installation was of awe-inspiring scope, a full kilometer in length with a width of 200 metres, as you can see from the photos. Clearly a work of that scope requires some serious advance design work, not to mention a healthy dose of physical labour to dig and etch carefully, symmetrically and in straight lines. Under normal circumstances, a finished work of art like this would be protected by copyright, allowing Denevan to exert control over reproductions. But if you go to Chesterman Beach today you will find no trace of Denevan’s work. Nature has seen to that. Yet, because of the partnership with his son, drone photographer Brighton Denevan, Jim Denevan has a physical record of what he has produced, and through Brighton is able to protect reproductions of the work, and to monetize them if he wishes. That, however, is not his intent.

Denevan’s business model does not depend on licensing reproductions of his work; instead he accepts commissions to create them (although the Tofino work was a labour of love). As a result, he does not sell photos of his artwork (Brighton freely gave me permission to use the photo in this blog) if he controls the rights. When accepting a commission under US law he would normally be creating a “work for hire” where the commissioning entity owns the copyright, but Jim has been careful to keep the copyright and limit the use of the reproductions through contract. For example, his sand sculptures have been used in advertising (where he has permitted authorized limited time reproductions to be used on billboards or for video ads) or as ephemeral cultural manifestations, as in the case of his massive sand sculpture in Saudi Arabia (“Angle of Repose”) for the DesertX 2022, AIUla art exhibition. Actually, Denevan’s main line of business is the bespoke mass dining experience known as “Outstanding in the Field”, which he founded some 30 years ago. The commercial success of this endeavour allows him to explore his interest in ephemeral art and to undertake projects out of interest rather than financial return. Thus, Denevan’s only compensation for his Tofino project was seeing the work unfold, and then seeing it disappear under the incoming tide a few days later.

This brings me back to the question of whether ephemeral art can qualify for copyright protection. A photograph is the easiest way to convert an ephemeral work into something more concrete or “fixed”. The need for a physical manifestation of the work arises from the requirement for a copyrighted work to be “fixed” in some medium for it to qualify for protection, at least under US copyright law. Sand on a beach doesn’t appear to qualify under US law as a medium for fixation (although it might under British copyright law where the medium of fixation is less important, an issue I will explore in a future post). A photograph, however, does.

I wrote about the various dimensions of this issue a couple of years ago in a blog post, (“My Fixation with Fixation”). It is not only sand art creations that face this problem. It applies to any creative work that is transitory, such as ice sculptures, cake decorations, fireworks displays etc. Because copyright laws vary between countries, while generally following common principles, the fixation issue leaves plenty of room for discussion. The overarching international treaty that sets the principles and minimum standards for copyright protection for its members, the Berne Convention (to date, 181 members, just about every jurisdiction in the world), prescribes fixation but not its form. The Convention states (Article 2 (2)) that:

“it shall [ ] be a matter for legislation in the countries of the Union to prescribe that works in general or any specified categories of works shall not be protected unless they have been fixed in some material form.”

But the Convention leaves to each member state to decide the means of fixation. In the United States, to cite the US Copyright Office;

“To be copyrightable, a work of authorship must be “fixed in any tangible medium of expression, now known or later developed, from which [it] can be perceived, reproduced, or otherwise communicated, either directly or indirectly with the aid of a machine or device.” 17 U.S.C. § 102(a) “…and the work must be sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration.” 17 U.S.C. § 101 (definition of “fixed”).

The Office goes on to add that, “if the work or the medium of expression only exists for a transitory period of time, if the work or the medium is constantly changing, or if the medium does not allow the specific elements of the work to be perceived, reproduced, or otherwise communicated in a consistent and uniform manner”, it may not be protected.

But what is “transitory”? Denevan’s sculpture on Chesterman Beach lasted for 9 days as it evolved. Fixation does not mean permanence. After all, what is “permanent”? Ask Ozymandius. A wood carving, a sketch on paper, or a design on textiles may not be permanent given their inability to withstand the ravages of time, although the physical existence of the work might outlast the period of copyright protection.

Arguments can be made that even a transitory work can be protected if its design or instructions for creation are recorded. However, while we can consider the complexities of protecting a work that exists in fixed form only through the written or recorded instructions for its assembly or execution, the simplest and most straightforward solution to the conundrum as to whether a transitory work like Denevan’s is, or was, fixed, is to ensure that it is recorded after execution in an enduring, physical medium, of which photography is the most obvious.

Photography is a very suitable partner for Denevan’s art because, without the aid of the birds-eye perspective provided by Brighton Denevan’s drone photos, it would be impossible to truly appreciate the complexity and symmetry of the designs. You can observe them from ground level, or maybe even from an adjacent hill, but it takes the overhead shot to truly bring out the full dimensions of the work. The relationship between the sculpture itself and the overhead photo of it is symbiotic; you cannot really have one without the other. Thus, it is entirely appropriate that the copyright rests, in effect, with this father-son team even if they have no interest in exploiting it. Of course, there is nothing to stop a third party from flying a drone over the work and taking their own photos, establishing a separate copyrighted work. But, thanks to the tides, they would have limited time to do that.

Perhaps that is the beauty of an ephemeral production; the sculpture can be created, photographed and then erased (by nature), never to be subject to further exact replication. A true one-off. Even if the design could be replicated exactly, the medium (Chesterman Beach) will have changed somewhat owing to wave action, light, storms and so on. That also makes the photos truly unique. No-one can go back and produce a facsimile because all they will see is empty sand. The sculpture existed for a moment in time and was captured in that instant by the eye of the camera. Unlike a photo of the Golden Gate Bridge, or the Tower of Pisa, or whatever permanent art-work you can name, it can never be recreated precisely again. I think that’s pretty cool.

© Hugh Stephens, 2022. All Rights Reserved.

Copyright’s International Conventions: The Importance of Membership Part II (The Rome Convention)

Credit: WIPO

Last month I wrote about the importance of international copyright treaties, using US accession to the Berne Convention as an example. United States accession was strongly supported by US copyright industries and has brought the US many benefits. But if acceding to an international copyright convention has its rewards, absence can bring costs. A recent case in Sweden highlights the importance of expanding the international network of agreements to ensure protection of non-nationals.

Back in March of this year two men who had been convicted in a Swedish court, sentenced to prison and fined $21 million for engaging in widespread broadcast piracy through operating the streaming service Advanced TV Network (ATN), were released on appeal. They were accused of pirating and redistributing signals from Qatar’s beIN Sports (a network widely pirated in Saudi Arabia and elsewhere, which I wrote about here and here). Why were they released? While ATN may have distributed beIN sports broadcasts in Sweden without permission, according to the appeals court the copyright on the broadcasts from the Qatari company could not be enforced because Qatar was not a member of the Rome Convention at the time of the offences.

The Rome Convention, aka the Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organisations, was signed in 1961 and came into effect in 1964. As stated by the World Intellectual Property Organization (WIPO) which, along with the International Labour Organization and UNESCO is responsible for administering the treaty, it “secures protection in performances for performers, in phonograms for producers of phonograms (sound recordings) and in broadcasts for broadcasting organizations”. With respect to broadcasting, broadcasting organizations in member states have the right, among other things, to authorize or prohibit the rebroadcasting of their broadcasts and the communication to the public of their broadcasts if such communication is made in places accessible to the public through payment of an entrance fee. In other words, broadcasts of professional sports matches.

The Convention today has 96 member states, a significant number although representing only about half the number that are members of Berne. Those 96 countries include Qatar (with effect from September 23, 2017). It acceded about a year after the offences for which the owner of ATN and his son were originally sentenced–a year too late it seems, from the perspective of beIN Sports. But better late than never, as the saying goes. However, while Qatar has now acceded to the Rome Convention, the United States has not. Why has the US not acceded, and is this a problem for US rights-holders?

In my blog posting last month, I discussed why the US was reluctant to join the oldest and most important of international copyright conventions, the Berne Convention. It eventually did so in 1989, 103 years after Berne was originally established. The US was a holdout for many years because US law was not consistent with some of the provisions of the Convention. In the case of the Rome Convention, as with Berne, there was (and is) a problem with the incompatibility of some aspects of US law, making it difficult for the US to accept the terms (and the benefits) of the Convention.

US law does not provide full protection for “neighbouring rights” (AKA “related rights”), the right to publicly perform or broadcast a sound recording, one of the categories of rights covered by the treaty. When a work is broadcast, royalties are paid to “authors”, in this case songwriters and music publishers. In Rome Convention countries, royalties are also paid to the artist(s) and recording studio or record label, as related or neighbouring rights. But not in the United States.  US broadcasters are exempt from paying performers and labels when sound recordings are played on terrestrial (AM/FM) radio or on TV. (Digital transmissions are not exempt). Many attempts have been made over the years to correct this situation, the most recent of which is the American Music Fairness Act, introduced in 2021, which I wrote about here. The legislation is opposed by the terrestrial broadcasters, who have considerable political clout in Congress. But as noted copyright scholar Daniel J. Gervais has commented, with respect to the Rome Convention;

Failure of the United States to adhere has cost US performers and industry tens of millions of dollars in remuneration paid for the broadcasting of sound recordings that are not paid to United States rights holders because the Rome Convention and TRIPS (the intellectual property measures in the World Trade Organization treaty) allow reciprocity in this regard as opposed to the usual standard of nondiscrimination against foreign nationals known as national treatment. To obtain the remuneration from Rome Convention members, the United States would have to ratify the Convention and establish a remuneration for the broadcasting of sound recordings

If US artists and labels have been deprived of royalty revenues overseas, the US broadcast exemption has also cost recording artists from other countries significant amounts of potential revenue in the United States.

Failing passage of legislation to remedy the anomaly of non-payment of royalties for related rights over radio and TV, the US music industry can attempt to have the United States negotiate “national treatment” clauses in bilateral or regional trade agreements, as it did in the recent update of NAFTA (the USMCA). In this case Canada, which (with limited exceptions) does have a radio royalty performance right, agreed to grant US performers “national treatment”, which means that US performers and recording studios can collect royalties for the playing of their sound recordings over terrestrial radio in Canada even though neither Canadian nor American performers currently enjoy that right in the United States.

If the US has not ratified the Rome Convention, how do US artists, record labels (producers of “phonograms”) and broadcasters protect their IP rights abroad? Well, first of all, through the negotiation of “national treatment” provisions whereby US entities are accorded the standard of copyright protection granted by the host country, as occurred with Canada and Mexico in the case of the USMCA/CUSMA, when the host country’s standard of protection exceeds that of the US. Secondly, by acceding to other international agreements that are similar or almost equivalent to the Rome Convention in some of their provisions. For example, the US, acceded to the Phonograms Convention of 1971. That protected the record labels from unauthorized duplication of their recordings. The Convention provides protection to the “producer of phonograms who is a national of another Contracting State against the making of duplicates without that producer’s consent…”. Then, in 2002, the US ratified the 1996 WIPO Performance and Phonograms Treaty (WPPT). This provided additional protection to recording studios and performers (although the US had to take a reservation because of its non-recognition of performing rights for terrestrial radio, allowing other countries to deny payment of royalties to US performing artists) and provided US performers with a moral right, at least for countries that are members of the Treaty.

But what neither of these treaties did was to protect broadcasts, which was one of the areas covered by the Rome Convention, (Some protection was provided to broadcasters in the TRIPS Agreement, part of the World Trade Organization treaty).

For a number of years, WIPO has been trying to negotiate a new international broadcast treaty, so far unsuccessfully. As WIPO explains it;

“International rules to protect television broadcasts from piracy have not been updated since the 1961 Rome treaty, drafted at a time when cable was in its infancy and the Internet not even invented. Now that perfect digital copies of television programmes can be made and transmitted with a few mouse clicks, signal theft has become a big commercial headache for broadcasting organizations around the world.”

It would be fair to say that a broadcast treaty is controversial. The outstanding issues include the scope of coverage, (would it cover internet transmissions?), how signals should be protected, (the extent to which technological protection and encryption methods should be allowed), and what additional rights should be given to broadcasters. As explained by WIPO;

“Under the Rome Convention, broadcasters have exclusive rights for 20 years to authorize rebroadcasting, “fixation” (recording), reproduction and communication to the public of their broadcasts. Most broadcasters want the new treaty to extend and update those rights for the new technologies, especially to prevent unauthorized retransmission of their programmes over the Internet.”

Critics argue that additional protection for broadcasts would hinder access to copyrighted material by requiring an additional level of permission from the broadcaster in addition to the copyright owner, such as the producer of the material. There is also debate about how long protection should last, the 20 years of the Rome Convention or longer. For all these reasons, progress on finalizing the Treaty has been slow.

In the meantime, US broadcast networks distributing their programs abroad cannot invoke the protection of the Rome Convention. I know nothing about Swedish law, but if the recent Swedish beIN Sports case is anything to go by, and if beIN Sports could not pursue broadcast pirates in Sweden because its home country of Qatar had not acceded to the Rome Convention at the time of the proven criminal activity, then US networks must be equally vulnerable. And unlike beIN Sports (since Qatar has now acceded to Rome), US broadcasters remain vulnerable to this day. That can’t be good news for US sports franchises like Formula One, the NBA, or UFC if they distribute their content through US based sports networks, like ESPN International or Fox Sports International. International copyright conventions count. They are there for a reason-to establish standards of international protection and to plug holes in the system.

But while the US eventually accepted the need to join Berne, there appears to be little or no chance that it will eventually ratify the Rome Convention. At the time “Rome” was drafted, sixty years ago, there were issues with US law that prevented ratification. Subsequently the performers and phonograms issues were largely resolved through accession to more modern treaties. As for US broadcasters, they appear to have no interest in pushing for ratification of the Rome Convention but are instead more interested in the future possibility of a new International Broadcasting Treaty.

In the case of Berne, the US eventually saw the need to accede and the political will was mustered to pass implementing legislation, which required some changes to US law. In the case of the Rome Convention, the US has been able to manage without joining for over half a century through various work-arounds and is unlikely to make the effort now. Potentially though, some US broadcast interests operating abroad could suffer the consequences of this decision, as was the case with beIN Sports in the case of Qatar’s non-membership at the time the principals of ATN were convicted of piracy.

Whether to invest the political capital in making the changes needed to permit accession to a given treaty is always a political calculation that governments need to make. The benefits must be balanced against any downsides, while domestic political interests and lobbies have to be taken into consideration. As I noted last week, when the pain is worth the gain, it happens. For the US, joining the 1961 Rome Convention may not be in the cards, but until an international broadcast treaty is achieved, sports networks based in Qatar (or any of the other 95 Rome Convention countries) would seem to have a greater degree of protection against theft of their signals abroad than those networks based in the US. That’s the trade-off.

© Hugh Stephens 2022. All Rights Reserved.

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