It was inevitable. After all the lawsuits in the US (and some in the UK) pitting various copyright holders against AI development companies alleging the AI platforms were infringing copyright by reproducing and ingesting copyrighted materials without authorization to train their algorithms to produce outputs based on the ingested content–outputs that in some cases compete directly with the original work—AI scraping litigation has finally come to Canada. As reported by the CBC, CanLII (the Canadian Legal Information Institute), a non-profit established in 2001 by the Federation of Law Societies of Canada “to provide efficient and open online access to judicial decisions and legislative documents” is suing Caseway AI, a self described AI-driven legal research service, for copyright infringement and for violating CanLII’s Terms of Use through a massive downloading of 3.5 million files.
In its civil claim brought before the Supreme Court of British Columbia, CanLII alleges that the defendants, doing business as Caseway AI, violated its Terms of Use that prohibit bulk or systematic download of CanLII material and that in doing so, the defendants also engaged in copyright infringement by reproducing, publishing and creating a derivative work based on the copied works for the defendants own commercial purposes. There is no question that Caseway is providing legal material for commercial gain. Caseway’s services start at $49.99 a month , or $499.99 a year, and offer an AI driven service that “leverages advanced AI to find relevant case law in less than a minute… Designed with a user-friendly chatbot interface powered by proprietary technology, Caseway (is) a robust tool tailored specifically for the legal profession.” Caseway’s Terms of Service have all sorts of disclaimers, however.
In his defence, Caseway’s Canadian principal (and defendant) Alistair Vigier is reported to have said that “court documents are public record, not owned by any organization, including CanLII. Numerous other websites also make these decisions available.” It is true that court documents and decisions are public documents not subject to copyright protection. However, CanLII claims that its database contains more than just the court’s decisions. It says in its claim that it spends significant time to “review, analyze, curate, aggregate, catalogue, annotate, index and otherwise enhance the data” prior to publication. It is this creative effort that turns public documents into a copyright protected document (or so the argument goes). To use another copyright analogy, you cannot copyright a recipe (a “list of ingredients”) but we all know that cookbooks containing recipes are always copyrighted. This is because of the display and illustrations of the recipes, the layout, commentary and other editorial touches. Julia Child’s sole amandine recipe is not just any old recipe for fried sole. Is CanLII’s compilation of “judicial ingredients” protectable? We will have to wait to find out.
CanLII’s case is reminiscent of a similar case in the US, Thomson Reuters v Ross Intelligence. Thomson Reuters operates a subscription-based legal research service called Westlaw. One of Westlaw’s employees allegedly copied Westlaw content to enable Ross Intelligence to build a machine learning platform that competed with Westlaw. Part of Ross’ defence was that the judicial decisions themselves are public domain documents, so there could be no infringement. Westlaw maintained that its case head notes, summaries that described the cases, were copyrightable material. Ross also brought forward a fair use defence arguing transformation, i.e. they had produced something new and different that did not compete directly with Westlaw’s product. Here is a good summary of the case. The court determined that Ross had copied the headnotes but the copyrightability of Westlaw’s numbering system and headnotes needed to go to a jury to determine. While Ross’ anti-trust case against Westlaw has been dismissed, the copyright case is still pending.
Another case that has been cited as a possible precedent is the famous 2004 CCH Canadian Ltd v Law Society of Upper Canada case in which the Supreme Court of Canada ruled that copies of CCH materials made by the Law Society library for its members did not infringe CCH’s copyright because the library was exercising the fair dealing research exception on behalf of the individuals requesting the copies. I personally don’t see the relevance of this case (but I am not a lawyer) since the Great Library’s users were copying only relevant parts of certain documents, for a specified fair dealing purpose. In the CanLII case, Caseway has apparently inhaled the full collection of documents and is doing so for a commercial purpose, with the resultant product (although not identical to the original) competing with it. Moreover, since there is no text and data mining exception in Canadian law, the “transformation” defences available to US-based AI companies (i.e transforming the original materials to produce something different) are not applicable in Canada. This will be an interesting one for the lawyers.
What the case demonstrates is a crying need for some legislative guidance on the question of AI scraping of copyrighted materials in Canada. It may be that CanLII’s collection cannot be protected by copyright, which would provide Caseway a defence without settling the fundamental issue of whether it is a violation of the Copyright Act to do what Caseway did, assuming the material they used was protectable by copyright. A consultation exercise was launched by the government of Canada (through the Ministry of Innovation, Science and Economic Development, ISED) last October, closing in January with submissions posted in June. Since then, there has been silence on the part of the government. With Parliament at a standstill, and the current government hanging on to power by its fingernails, don’t expect clarity any time soon.
In July, the Canadian Internet Policy and Public Interest Clinic (CIPPIC) at the University of Ottawa filed an application in the Federal Court to expunge or amend a Canadian copyright registration that claimed an AI program, the RAGHAV AI Painting App, as co-author of a registered work. While the other co-author, an Indian IP lawyer by the name of Ankit Sahni is named as the respondent, the real defendant ought to be the Canadian Intellectual Property Office (CIPO), the organ within the Department of Industry (ISED) responsible for managing copyright registration. It is CIPO’s “rubber stamp, content-blind, absence of judgement” automated system of registration that has led to this situation, putting Canada in a significantly different place from that of the United States or many other countries when it comes to granting copyright protection to works produced by AI algorithms with no or little human intervention.
Last month I wrote a couple of blog posts on the issue of whether content produced with or by generative AI could or should qualify for copyright protection. I looked at the ongoing uphill struggle that two “creators”, Stephen Thaler and Jason Allen, have experienced with the US Copyright Office (USCO) in their attempts to get the USCO to register their works. Thaler claims his submitted work (“A Recent Entrance to Paradise”) was created exclusively by his AI algorithm (the “Creativity Machine”) and, accordingly, it should be recognized as the “author”. However, as the human behind the machine, having invested in creating it, the benefits of the registration should fall to him. He argues that the algorithm carried out the work at his behest, much like a work for hire. Allen, by contrast, claims that although his award-winning work (“Théâtre D’Opéra Spatial) was produced with AI assists, he was the creator through control and manipulation of the prompt process. In neither case has the USCO budged from its position that the works do not qualify for copyright protection on the basis they were not human-created. The same goes for the courts to which the USCO’s rejection has been appealed.
That is the current situation in the US; in Canada it is quite different. Works produced exclusively with AI have been accorded copyright registration, more than once. I have even done it myself! (See “Canadian Copyright Registration for my 100 Percent AI-Generated Work”).
Because Canadian copyright registration is automated and done through a website, an applicant must provide the author’s address, contact details and date of death, if deceased. To work around that, I clearly specified that the work was created entirely by two AI programs (DALL E-2 and CHAT-GPT) with virtually no exercise of “skill and judgement” on my part, this supposedly being the threshold in Canada for creative content that can be afforded copyright protection.
This is how my Canadian copyright certificate No. 1201819, issued April 11, 2023 (I should have tried to register it on April Fools Day), reads in terms of describing the registered work;
“SUNSET SERENITY, BEING AN IMAGE AND POEM ABOUT SUNSET AT AN ONTARIO LAKE CREATED ENTIRELY BY AI PROGRAMS DALL-E2 AND CHATGPT (POEM) ON THE BASIS OF PROMPTS DEMONSTRATING MINIMAL SKILL AND JUDGEMENT ON THE PART OF THE HUMAN AUTHOR CLAIMING COPYRIGHT”.
While this little exercise in inanity was fun, (and was done to expose the failings of the current system), I was not the first to register an AI created work in Canada. That honour, as far as I can tell, belongs to Sahni, the named respondent in the CIPPIC case who, in December 2021, managed to register the artistic work Suryast, listing the AI-powered RAGHAV painting app as co-author. That was a neat way of getting around the requirement to provide an address, contact details etc. Sahni could provide his contact details yet still claim the AI algorithm was an author, even if a co-author. Clever. What Sahni’s motivation was I cannot say, but apparently he has been active in registering the work in as many jurisdictions as he can, maybe to boost the marketability of RAHGHAV. CIPPIC claims he is seeking registration to force various countries to address the AI authorship issue. Canada must have been one of the easiest registrations he received. Now he is being called to account. The application brought by CIPPIC seeks a declaration either that there is no copyright in Sahni’s image, Suryast, or, alternatively, if there is copyright in Suryast, that the Respondent (Sahni) is it sole author. It also seeks an order to expunge the copyright certificate in question or to rectify it by deleting the painting app as a co-author.
The fundamental problem of course is not Sahni or his AI app, (although like me, he may have been mischievous) but rather the way in which copyright registration is offered and maintained in Canada. It was not always this way. Once upon a time, to register a work in Canada you were required to not only pay a registration fee, (which is still the case today) but submit three copies of the work, one for the Copyright Branch (which was part of the Department of Agriculture), one for the Canadian Parliamentary Library and one for the British Museum. Because of these depository requirements, today we have a record of many early copyrighted works in Canada, such as the famous early 20th Century Inuit photographs of Canada’s first professional female photographer, Geraldine Moodie, about whom I wrote a few years ago (“Geraldine Moodie and her Pioneering Photographs: A Piece of Canada’s Copyright History”).
When the first international copyright convention, the Berne Convention of 1886, was established among a limited number of countries, there was a push by authors to abolish the registration requirement because it was burdensome to have to register in all Berne countries. Initially, registration in the home country was supposed to provide protection in all member states of the Convention, but this proved difficult to put into practice. Consequently, in 1908 at the Berlin revision of the Convention, the following provision (which is today part of Article 5(2) was adopted, “The enjoyment and the exercise of these rights shall not be subject to any formality”. Canada was a member of Berne because Britain had acceded, but was nonetheless a reluctant conscript (even though then PM Sir John A. Macdonald had acquiesced to Canada’s inclusion). In 1921 Canada finally passed its own Copyright Act (coming into force in 1924, a century ago this year), and subsequently joined Berne in its own right in 1928. I suspect that registration as a requirement, along with depository and examination conditions, was dropped at that time. That is probably when the current (but non-automated) voluntary registration process was established.
Despite the abolition of a registration requirement by Berne Convention countries, Canada is not the only country that maintains one. In the US, which only joined Berne in 1989, both registration and renewal were required for a work to enjoy copyright protection. When the US joined Berne, it maintained the registration requirement for US citizens who wished to take legal action to enforce their copyright. This is allowed under Berne. As such, the US has maintained a robust registration system where a legal deposit of the work is required, registrations are examined and can be challenged or refused.
We know that is not the case in Canada, but Canada is not the only country to have a voluntary registration system. In a recent study by WIPO (World Intellectual Property Organization), some 95 countries were identified as having either a voluntary registration system, a recordation system (for transfer of copyrights) or a legal deposit requirement. What is notable, however, is that of all these countries, only three (Canada, Japan and Madagascar) do not require a deposit of the work seeking registration. Canada does review applications but only to ensure they meet all the formality requirements (name and address of the owner of the copyright; a declaration that the applicant is the author, owner of the copyright or an assignee; the category of the work; its title; name of the author and, if dead, the date of the author’s death, if known. For a published work, the date and place of first publication must be provided and, perhaps most important, payment of the prescribed fee). Nothing else. In fact, if Mr. Mickey Mouse, address Disneyland Way, filed a copyright application for a work and paid the required fee of $63, I am sure a Canadian copyright certificate would be issued. It used to come in the mail, printed on nice quality paper but, alas, in the interests of efficiency, it is now only available in PDF format on CIPO’s website. Print it yourself.
That is the current situation, but why has CIPPIC gone to the Federal Court to dispute the wording of Sahni’s copyright certificate, No. 1188619? While the Registrar of Copyrights can accept requests for correction of a copyright certificate (either because of an error in filing or because the Office itself made a mistake), it cannot by itself amend or remove a registered work from the Register. Instead, the Registrar needs the Federal Court to effect such action. Section 57 of the Copyright Act states, with respect to Rectification of Register by the Court;
(4) The Federal Court may, on application of the Registrar of Copyrights or of any interested person, order the rectification of the Register of Copyrights by (a) the making of any entry wrongly omitted to be made in the Register, (b) the expunging of any entry wrongly made in or remaining on the Register, or (c) the correction of any error or defect in the Register
However , while CIPPIC is seeking expungement of this particular copyright registration, it is the system it is really going after. This is clear from its memorial to the Court;
(23) “In automating its copyright registration process, CIPO is derogating from its obligations to administer copyright in a fair and balanced manner under the Copyright Act.” (24) “The consequence of this system is that content that does not merit copyright can…easily obtain the benefits of registration.” (25) “Copyright registrants obtain certain benefits under the Act – such as litigation presumptions – and users and defendants are correspondingly burdened. Once a “work” is registered, the Copyright Act…shifts certain presumptions such as subsistence and ownership….In this very case, as a result of CIPO’s oversight failures, the burden rests on CIPPIC to prove the image Suryast lacks originality and that an AI program cannot be an author.”
Moreover, CIPPIC notes that it brought this case to the attention of CIPO but it refused to correct the Copyright Register, instead encouraging CIPPIC to seek resolution in court. Assuming it is granted standing, CIPPIC may well prevail and have the Suryast registration amended or expunged. But will that really achieve its goals? If its goals are to get CIPO to stop “derogating from its obligations”, then simply cancelling or amending this one registration won’t do it. What is the solution?
One option would be to eliminate the voluntary registration requirement altogether, but is this the right course of action? The WIPO document referenced earlier points out some of the advantages of a voluntary registration system. It can ensure that information about authorship and copyright, including date of registration, become publicly available. This benefits not only authors and rightsholders, who can use the registration as a rebuttable presumption of copyright in court, as in Canada, but also provides information to the public to verify ownership claims and trace title. A voluntary system does not, however, provide a definitive list of what works are under copyright and which are not. Another factor is that an automated voluntary system, such as the one operated by CIPO, is not burdensome for registrants and presents no meaningful obstacle. The problem is that its barriers to registration are so low that it is easy to trick the system. Is a Canadian copyright certificate worth the paper it is printed on if there is no verification?
A second option is to improve the registration process to make it meaningful, but this will require resources. Current fees are low (but the US system which is much more robust has a similar fee structure). Nonetheless, to institute a USCO type system would require substantial additional resources that are unlikely to be forthcoming in the present fiscal environment. One would have to ask whether the extra cost could be justified. It’s a conundrum. Meanwhile, the government has circulated a paper on the issue of Copyright and AI and the Canadian cultural community has weighed in with its views. Prominent among these is the position that copyright protection should be accorded only to human-created works. (This is not currently specified in the Copyright Act).
CIPPIC’s court action puts the spotlight on the current copyright dilemma. The current system seems to be not fit-for-purpose, but an economically viable alternative is not immediately apparent. At the very least, Canada should amend the Copyright Act to prevent AI-created works from obtaining copyright registration.
It is so ludicrous it’s hard to believe the ads—real ads but using a fake news story to promote a fraudulent product–appeared in mainstream media in Canada and elsewhere. But it happened. The Canadian Press has an in depth report about the ads that appeared in digital editions of such publications as the Toronto Star and Edmonton Journal claiming that NDP Leader and Member of Parliament Jagmeet Singh had a “fatal accident” while on live TV, inadvertently revealing a secret way of earning revenue during an interview with CTV’s Vassy Kapelos. The “fatal accident” appears to be the revelation of the secret rather than Singh’s demise. He is very alive and kicking. The supposed “accident” was clickbait for a cryptocurrency scam, an easy way of earning money that Singh allegedly knew about but the “authorities”, such as the Bank of Canada, didn’t want the public to have access to. What sheer and utter nonsense.
The doctored image was a clear violation of the copyright of the original broadcast, owned by Bell Media’s CTV. However, it is hard to believe that CTV will bother going after anyone for copyright infringement, although perhaps the perpetrator (no doubt a shell company) could be tracked down through Google, which facilitated the ads. Google, of course, claims that it is not responsible even though the ads violated its policy against impersonation of public figures. And it seems no one at the reputable media outlets where these scams were featured under their byline bothers to check ads like this. It is only after the fact, when they are made to look foolish, that they act to have them removed. They just collect the money from an ad placement firm.
It used to be that if an ad appeared in a major daily newspaper, there was some expectation of a degree of truth in advertising and an assumption that the paper would not allow itself to be a platform for fraudulent promotions. No more is this true, it seems. It’s all pretty distressing. It is also a wonder that such ads work, pulling in gullible people. If they didn’t work, the promoters would not be wasting their money promoting these scams.
Somewhere in the multilayered bureaucracy that comprises Canada, there must be some entity with the authority to try to stop this. The Canadian Anti-Fraud Centre, a body established in 1993 by the RCMP, OPP and Competition Bureau with a mandate to assist “Police of Jurisdiction” with enforcement and prevention efforts, would seem to be the place to start. But who are the Police of Jurisdiction for an online ad campaign that appeared in papers across the country and well as in UK and US outlets? The short answer is “nobody”. This is just one of thousands of such scams. Maybe the best the Anti-Fraud Centre can do is to raise awareness of such activities among the public. So, while it is a violation of copyright law, and no doubt fraud, there are other violations of the law—such as a hijacking of Singh’s image and personality–although in Canada the remedies are not easy to use.
In Canada, there is no general “right of publicity” or “personality right” that protects a person’s image, voice, etc, as exists in some US states. However, according to this law firm website there are publicity rights arising from provincial privacy legislation, in BC, Manitoba, Newfoundland and Saskatchewan, and elsewhere a common law civil remedy available on a limited basis. In common law there is a “common law tort of ‘wrongful appropriation of personality’, sometimes referred to as ‘misappropriation of personality’, being the unauthorised commercial exploitation of a person’s name, image, voice or likeness.” The right is enforced through civil litigation so Mr. Singh would have to bring suit against the shady operators of the crypto scam. That is not going to happen.
There is draft federal legislation in the US that, if passed, would deal with situations like this (should they occur in the United States). The NO-FAKES (Nurture Originals, Foster Art, and Keep Entertainment Safe) Act, 2024, is a bipartisan bill introduced into the US Senate in July of this year, after an earlier discussion draft was floated in 2023. If adopted, it would prevent the “production of a digital replica without consent of the applicable individual or rights holder” through civil law action unless part of a news, public affairs, sports broadcast, documentary, or biographical work. It includes exceptions for parodies, satire, and criticism (which are fair dealing exceptions in Canada and considered fair use in the US). In particular it is designed to protect both entertainment figures and political personalities from having their likenesses either manipulated (so that Taylor Swift didn’t really endorse Donald Trump) or used to endorse products or ideas they don’t support. A companion bill was introduced into the House of Representatives with bipartisan support shortly after. The bills were widely supported by major entertainment companies and unions (SAG-AFTRA) but also AI companies such as OpenAI. Apart from providing a civil remedy, it will require platforms to take down offending images upon notice with financial penalties if they do not comply.
According to one of the Members of Congress who introduced it, the NO FAKES Act will:
Recognize that every individual has a federal intellectual property right to their own voice and likeness—including an extension of that right for the families of individuals after they pass away;
Empower individuals to take action against bad actors who knowingly create, post, or profit from unauthorized digital copies of them;
Protect responsible media platforms from liability if they take down offending materials when they discover them;
Ensure innovation and free speech are protected; and
Provide a nationwide solution to a patchwork of state laws and regulations by January 2, 2025.
Many US states have versions of a right of personality law. If passed, the NO FAKES Act will pre-empt any relevant state legislation, unless in force prior to January 2, 2025. The proposed federal legislation creates the new national publicity right as an intellectual property right, which gives it an exemption from the notorious Section 230 immunity in US law that allows platforms to ignore virtually any requirement to regulate content posted on their platforms by users. The application of the Act to the platforms (i.e. a take-down requirement), including potential removal of the Section 230 immunity for hosting digital fakes (when the platform has knowledge, usually through a takedown notice) has brought out the usual Silicon Valley suspects (EFF, Public Knowledge, CCIA etc.) to oppose the legislation. They argue that it impinges on free speech, is too blunt a weapon, and so on. In my view, a major reason for their opposition is that it would require the big internet platforms to actually take some responsibility for the content they profit from disseminating.
The ridiculous Singh “newscast ad” highlights a significant loophole in Canadian law. It is much more than a copyright violation. Even though it would be difficult to track down the perpetrators, why aren’t there stronger legal penalties for such actions, as well as liability for failing to assume responsibility for hosting obvious and known fakes? Why isn’t there an obligation on platforms and media to remove fake content that hijacks the personality of a well-known person? The US is trying to grapple with the problem, although whether the NO FAKES Act will be enacted during the current lame duck session of Congress is doubtful given Silicon Valley’s mobilization against it, plus all the other pressing business that Congress will have to deal with (like funding the government) in the few weeks that remain.
Misappropriation of the image and voice of well-known personalities, and a proliferation of AI generated fakes, can be increasingly expected to flood the internet for both political and commercial gain, sometimes even with subversive intent. The ludicrous nature of the Jagmeet Singh ads attracted immediate attention but next time, the fake content could be more insidious and less easy to spot. With the advent of a US President who is willing to say and do just about anything, how will we know what is fake and what is real? Maybe the NO FAKES Act will eventually pass in the US, and maybe Canada needs something similar.
The new, improved and “unlosable” Canadian poppy (Photo:author)
I am preparing for our annual Remembrance Day ceremony on November 11 at the Community and Fire Hall in our little community of Willis Point, some 20 kilometres north of Victoria, BC. The Volunteer Fire Department will control traffic on the road by the flagpole, and a local resident, who is a naval officer at the Base will, in his full-dress uniform, lay the wreath. There will be the usual reading from “In Flanders Fields”, the Last Post will be played, and after the solemn ceremony we will all repair into the Hall for coffee and hot chocolate (and sometimes something a bit stronger) and view a local resident’s military memorabilia. It will likely be raining. Everyone will be wearing a poppy.
If anything, this year it seems the poppy stands are more ubiquitous than ever, many beside cash counters in grocery and drug stores and in coffee shops, but some at the entrance to stores staffed by friendly Legionnaires. The Royal Canadian Legion is doing a good job of getting out the message. And every politician at every level of government will be sporting a poppy at all their public and media appearances. It seems to be the one thing that unites the country—and Lord knows we need more unifying symbols and behaviour.
Last year I commented on the uncanny ability of the poppy you have just bought to fall off your lapel in the parking lot while you walk to your car, necessitating buying another the next time you go shopping. The alternative is to walk in shame past the smiling Legionnaire by the door with his or her tray of fresh, new, pin-on poppies. I lamented there was no way to better secure them other than by a flimsy pin, but to my surprise, this year my Legionnaire offered me a choice of the standard “fall off” variety or one secured by a clip on the back. The black centre of the poppy has a pin that pierces your jacket and fits securely into the clamp. It is clearly Legion-approved. A long-overdue innovation. I will probably still buy more than one because I will forget to wear the jacket that has the poppy on it, and am unable to pass by those veterans at the door without the protection of my poppy. But it’s all in a good cause.
I notice there’s a lot of interest at this time of the year in a couple of the blog posts I wrote previously on the history of the poppy as a commemorative symbol, at the same time pointing out some of the intellectual property issues arising from its role as a registered trademark of both the Royal Canadian Legion and Royal British Legion. Despite the trademark protection for commemorative poppies in Canada and Britain, not to mention copyright protection of the designs of various products displayed on their websites, unauthorized versions proliferate at this time of year, marketed through online platforms. Veteran’s welfare organizations have to work just as hard as other rights-holders to protect their IP; the internet offers all sorts of creative new outlets for unauthorized commercial exploitation. Amazon has knock offs but also the real thing, as the Legion has done a deal with the web retail giant to sell Legion poppy products, apparently with some considerable success So if you are going to buy a poppy this year, buy it from your friendly local Legion representative or at least from the Legion’s website, the Poppy Store in Canada and the Poppy Shop in Britain–or even through Amazon. It’s probably too late this year anyway, bur remember for next year.
If you are not aware of the history of the poppy campaign and the challenges it has faced from unauthorized competition, here is my original Remembrance Day blog post in 2019, with a few updates.
Remembrance Day Poppies and Intellectual Property Controversies
At the 11th hour of the 11th day of the 11th month in 1918, the guns on the western front in Europe fell silent. An armistice was declared. Germany didn’t formally surrender although it soon collapsed, and the 1919 Treaty of Versailles treated it as a defeated country (with the results twenty years later that we all know about). Thus Armistice Day, now known as Remembrance Day in many countries including Canada, the UK and Australia, and Veteran’s Day in the US, was born.
Today, in particular in Canada and the UK, Remembrance Day is marked by the wearing of poppies. They spring up on the lapels of TV news broadcasters, politicians, and members of the public like mushrooms in autumn. In the US, although they are not so ubiquitous as north of the border or in Britain, they are more typically worn on Memorial Day, which is in May, and in Australia and New Zealand I am told that poppies generally blossom around Anzac Day, April 25. It is probably fairly well known (although with today’s young people it is perhaps wrong to make assumptions) that the wearing of the poppy is a memorial to the sacrifices made by those who fought and died, initially in WW1 for the Allied cause, today more generally extended as a memorial to all those who perished in wars. Poppies grew prolifically in the killing fields of Flanders in Belgium, and still cover the countryside today. The poppies were made famous by the poem “In Flanders Fields” written by Canadian military doctor John McCrae in 1915 after seeing poppies on the battlefield after the loss of his friend in the second battle of Ypres.
It was an American teacher, Moina Michael, who campaigned to make the poppy the international symbol for remembrance of Allied war veterans, and to use their sale for veteran’s welfare. (Another prominent campaigner was Anna Guérin, who took inspiration from Ms. Michael and actively promoted adoption of the poppy). Between 1920 and 1922 the poppy was adopted by veterans’ organizations in the US, Britain, Canada, Australia and New Zealand. In Britain an organization known as the “Poppy Factory”, which still exists today, was set up to manufacture the paper poppies for sale for the support of veterans causes. That leads us to the main point of this blog, the intellectual property (IP) controversies that have arisen around the sale of poppies and poppy-related memorabilia.
There is an important intellectual property angle as to who gets to produce and sell poppies, although it is more of a trademark than a copyright issue. There have been controversies in both Britain and Canada involving production and sale of the little red flower. In both countries (and possibly elsewhere) the poppy is trademarked, by the Royal Canadian Legion (RCL) and the Royal British Legion (RBL), respectively, both respected veterans organizations. The Royal Canadian Legion’s website notes that the trademark was conferred by Act of Parliament in 1948, and is limited to the use of the poppy in remembrance;
“The Canadian trademark for the Poppy includes both the Legion’s Poppy logo, as well as the Poppy symbol, as it relates to Remembrance. The trademark does not apply to the use of the actual Poppy flower, unless that usage is misrepresented as the Legion’s Poppy by associating it with remembrance or the raising of monies for a purpose other than the Poppy Campaign.”
However, the trademark extends to any colour or configuration of the poppy when used as a symbol of remembrance. This is increasingly relevant as various groups make their own versions available, from a white poppy symbolizing peace (some would say pacifism) to a rainbow-hued LBGTQ poppy that has caused some controversy.
Whether either of the Legions would take legal action against someone for producing and selling poppies of a colour other than red is an interesting question, but a few years ago in Britain a seller at an outdoor market pleaded guilty to selling red poppies that had no association with the RBL. In Canada a group of knitters who were knitting poppies for the price of a donation, which they say they intended to give to the RCL, were reminded that they were violating the Legion’s IP. In addition to its statement of trademark, the RCL has a very clear copyright warning on its website;
“The material on this site is covered by the provisions of the Copyright Act, by Canadian laws, policies, regulations and international agreements. Reproduction of materials on this site, in whole or in part, for the purposes of commercial redistribution is prohibited except with written permission from The Royal Canadian Legion…”
And what materials are marketed on the site? Just about anything that you can stick a poppy symbol on—playing cards, bags, baseball caps, pins, brooches, watches, T-shirts, magnets, umbrellas, scarves, toques, mittens, stuffed animals, even cellphone cases. You get the idea. And then there are digital versions of the poppy that you can purchase and use to embellish your Facebook page. All the proceeds go to the Legion and then on to its veterans’ welfare programs (although the Legion is not a registered charity).
Well, who knew that the innocuous looking poppy on people’s lapels on Remembrance Day carried such weighty IP concerns on its shoulders? When you drop your donation into the collection box, and pin your poppy on your jacket or shirt, remember…even the humble poppy can be controversial when it comes to trademark and copyright issues.
Tempus fugit. Time flies, as we all know. It’s hard for me to believe that it was over 5 years ago that I wrote a couple of blogs on obituary piracy; (The Deadliest Aspects of Copyright and Obituary Piracy Punished: Has Infringement No Bounds?) Those blogs were about an outfit in Canada that styled itself Afterlife. Afterlife’s business model was to post obituaries on their site they had harvested from newspapers and funeral home websites in order to sell virtual candles, flowers and other forms of remembrance for the departed. Not surprisingly, families of those so featured objected since they had not authorized Afterlife to publish, let alone monetize, their personal tributes to their deceased family members. A class action lawsuit was launched, alleging copyright infringement since an obituary, a creative work embodying original expression, can be protected by copyright. It is the story of a person’s life, often written by a close relative or in some cases in advance by the deceased person themself. In the Afterlife case, the Federal Court of Canada awarded damages of $20 million and issued an injunction preventing Afterlife from continuing to publish.
In this case copyright infringement was the legal tool used to stop Afterlife’s activities. While the court case succeeded in getting Afterlife to stop what the judge called “obituary piracy”, those running the business simply changed tactics. They declared bankruptcy (no doubt to thwart any collection of damages) and opened a new site called Everhere. Everhere avoided copyright infringement by highlighting a death, but then linking to the obituary posted elsewhere without copying or reproducing it. Among other things, it became a specialized ad-supported obituary search engine. I lost sight of Everhere and its somewhat sleazy business model until unauthorized obituaries again hit the headlines in a recent story published by the Canadian Press.
This time the company is known as Echovita. At least some of the same people involved with Afterlife are apparently running Echovita, according to the Canadian Press report. Apart from the fact that families are upset that the passing of a loved one is being monetized by an unknown third party on its website, often to the surprise of friends and relatives who may have searched for the obituary on a search engine and not realized that the Echovita obituary is an unauthorized version, it appears that not infrequently mistakes are made. This is because in order to avoid its previous problems with copyright infringement, Echovita is doing quick rewrites of material it has skimmed from the internet. No doubt it is paying various freelancers by the piece to produce obituaries from so-called “tombstone data” (the basic facts of a person’s life), and the mass production of large numbers of these each day naturally leads to mistakes being made. The author of the Echovita obit doesn’t know the deceased from Adam. They don’t know if he or she had two or ten grandchildren, or none and, to be blunt, they don’t care. The obituary is just another commodity they are producing. They could just as easily be writing about soap flakes or breakfast cereal. In defending itself against accusations that it made mistakes in some obituaries, Echovita is reported as saying it regrets that it made a “human error” when taking the “basic facts” from an obituary posted on the internet, while noting that it was legal to do so.
Going to the Echovita site is instructive. Obituaries are not restricted to Canada. People using the website have the option of purchasing virtual candles that will “burn” for various periods from a week to a year, depending on payment and preference. The virtual candle will “burn” on the site of the barebones obit published by Echovita. You can also plant a tree or order flowers in remembrance. And there are ads for various things, such as Ancestry.com. It makes my skin crawl.
From a legal perspective (at least with regard to copyright infringement), Echovita’s claim that what they are doing is legal appears to be correct. Facts and ideas cannot be protected, only the expression of an idea based on those facts or ideas. The same is as true for obituaries as it is with news. While the New York Times can copyright its reporting of, say, the war in Gaza, anyone can report on what is happening in Gaza. No news outlet has a monopoly on the news although they can protect their expression of the news, an issue I examined in this blog a couple of years ago, (Do News Publishers “Own” the News? (And Should They be Compensated when Others use News Content they Publish?). Distasteful as it seems, there is no law that I am aware of that stops Echovita or anyone else from taking basic data (facts) from a published obituary (name, date of death, place of service, etc) and rewriting and publishing it. Using it for commercial purposes might be something else. I wonder if the terms of service of a funeral home website might limit the lifting and reusing of this information for commercial purposes, but I will leave that idea for the lawyers to ponder.
According to the Canadian Press article, the president of the Funeral Services Association of Canada is lobbying the federal government to strengthen privacy legislation to deal with the republication of obituary details, but has had little response. I am no expert on privacy legislation, but I know it is a minefield where the need for personal privacy must be balanced against freedom of expression. In the meantime, the best solution the Funeral Association can offer is to contact sites like Echovita and ask that an unauthorized obituary be taken down, although they would have no incentive or legal obligation to comply.
Dealing with obituary piracy, whether officially copyright infringing or not, is a difficult issue. Undertaking reform will not be simple. Pardon the pun.
It is a foggy Friday when a report out of the US heaps praise on Canada for anything in the area of intellectual property. But surprise, it just happened! Canadians are more used to being chastised (often with good reason, I hasten to add) by US industry groups such as the International Intellectual Property Alliance (IIPA), or in the annual “Special 301” report issued by the Office of the US Trade Representative (USTR) which is compiled from complaints brought forward from various US industry groups. This year’s Section 301 report once again placed Canada on USTR’s “Watch List”. According to USTR, the Watch List is used to designate US trading partners that “merit bilateral attention to address underlying IP problems“. A perennial favourite on the Watch List, this year Canada joins 19 other countries including such IP powerhouses as Turkmenistan, Algeria, Belarus and Bulgaria (the only EU member state on the list). Is this an objective assessment? Maybe, maybe not.
It’s not that the US itself is purer than the driven snow (the snow no doubt being part of the “cold air from Canada” that features regularly on US weather reports) when it comes to IP protection. It’s just that USTR does not report on the US’s own transgressions, as it has no mandate to do so. I gave it a helping hand a few months ago when I filed my own Watch List recommendation, (The USTR Watch List Designation You Will Never See), which “playfully” (as one of my readers commented), put the US on the list for a range of copyright lapses. Among the most serious was a complete absence of any workable mechanism to block or disable offshore pirate content websites. I pointed out that the US is the largest market for pirated content globally, with 13.5 billion visits to pirate sites annually according to Variety, yet is one of the few not to have a system to disable distribution of pirated content from offshore, often known by the shorthand term “site blocking”.
I personally don’t like the term “site blocking” as it implies some form of government censorship. It should more accurately be called “disabling access to offshore pirate websites” but that is too much of a mouthful, so we will have to go with the shorthand version. Site blocking, which is practiced in more than 50 countries, including Canada, (but not the US) is normally instituted after a judicial or administrative process, requiring substantial justification, whereby content owners seek remedies against offshore websites (which are located in jurisdictions beyond the reach of domestic law) that distribute pirated content and undermine licensed distribution. The remedies normally involve injunctions requiring domestic internet providers to block identified pirate sites. It was pioneered by the UK and Australia, where it has been overwhelmingly successful in curtailing distribution of pirated content and encouraging uptake of legitimate, licensed alternatives.
In Canada, application for a blocking order is made to the Federal Court by content owners (such as Rogers or Bell Media), often to cover streaming of high-profile sports games. Owners of the sites to be blocked can appear and argue against the order, but being offshore pirate sites, none do. Once issued, ISPs (internet service providers), who are the actual targets of the orders, are obliged to disable/block the pirated content stream so that viewers cannot receive it. Originally some ISPs, notably TekSavvy, opposed the orders although the major ISPs, some of which are owned by the owners or licensees of the sports content, went along without a fuss. TekSavvy’s objections were dismissed, as I wrote about here (Appeal Against Canada’s First Successful Pirate Site-Blocking Order is Dismissed: Good News for Copyright Protection in Canada), and the process has become more or less routine.
Recently the regime in Canada has been strengthened by the granting of dynamic injunctions. Dynamic injunctions allow flexibility, targeting the content rather than a specific Internet address, thus allowing the blocking order to shift to whatever address the pirated feed is coming from. It is a common tactic of pirate sites to shift IP address regularly as one means of evading the court authorized blocking order. Dynamic injunctions help to counter this tactic.
If site blocking is such an essential tool in the anti-piracy toolbox, then why doesn’t it exist in the US, a country with a huge economic stake in the production and distribution of legitimate content, and unfortunately a market where piracy is as common or more common than in many other countries? US stakeholders tried, unsuccessfully, to secure passage of site blocking legislation more than a decade ago, with the introduction of the Stop Online Piracy Act (SOPA) into Congress in 2011. While widely supported by content industries and many members of Congress, it became the target of attack by cyber-libertarians stoked up by Silicon Valley. In an attention catching gimmick, Wikipedia and Reddit blacked out for a day, January 18, 2012, in protest. The legislation went into the “too difficult” basket and has never been revived.
The specious argument was put forward that SOPA would “break the internet” and interfere with the free flow of information. That was ridiculous then, and it is ridiculous now, as the successful establishment of site blocking in over 50 countries globally, including well established democracies such as the UK, France, Spain, Germany, Netherlands, the Nordic countries, India, Australia—and Canada—clearly shows. That point, along with data demonstrating the proven efficacy of site blocking, is among the key themes of a new study just published in the US by the Digital Citizens Alliance (DCA), commissioned from research firm IP House.
The DCA is a “consumer-focused group whose mission is to raise awareness among the public and policymakers about how to make the Internet safer”. Its latest report, “Overseas and Out of Reach: International Video Piracy and US Options to Combat It”,not only debunks the “break the internet” nonsense, but goes on to discuss the economic damage caused by pirate operations to legitimate business and government revenues. It also puts the spotlight on how piracy feeds revenue to organized crime, outlines the risk to consumers of clandestine installation of malware, explains how site blocking works, and documents the effectiveness of site blocking (as one essential tool among others) in combatting video streaming and Video-on-Demand piracy services. The unspoken bottom line message is that Congress should start looking seriously at reviving site blocking legislation.
To quote from the report’s introduction;
“The United States faces a problem. Overseas criminals targeting Americans often live in countries that won’t prosecute them or lack adequate legal tools to do so – leaving them beyond the reach of U.S. law enforcement and secure in the notion they won’t face any consequences for their illegal activity. One example: Overseas operators of illegal piracy websites and apps make $2.3 billion a year – while also using that stolen content to bait Internet users so they can infect devices with malware or steal credit card information.
One solution adopted by Canada, the United Kingdom, and Australia and over 50 other countries: if they can’t reach the overseas criminals targeting their citizens to deter them, then they block the websites of those criminals so they can’t reach their citizens.”
So there you have it. Canada is cited as an exemplar in this regard. What a refreshing change. Let’s hope the study gets the attention it deserves in the US and in Congress because combatting piracy is something that is in everyone’s interest, from law enforcement to film and TV production to consumers.
Let’s be clear. Damage to US film and TV production hurts Canada, given the almost $8 billion that was invested in such production in Canada in 2023 by foreign, mostly US, producers. While the majority of it was foreign location and service (FLS) filming, it also included $1 billion in financing for Canadian owned content production. Canada may have managed to establish a workable site-blocking regime, using the courts, but there is still much more that needs to be done in Canada and elsewhere to combat the threat of online content piracy. The Overseas and Out of Reach study is a valuable contribution to this debate.
It has been reported in the media that the “principal architect” of the Norval Morrisseau art fraud, one David Voss, has been sentenced to five years in jail for his role in this widespread and long-running criminal enterprise. Co-conspirator Gary Lamont is also serving 5 years. Six others, including some of those involved in producing and distributing the fakes, have also been charged. Hopefully this will bring closure to this high-profile art scandal, but a lot of damage has been done to Morrisseau, his legacy and to Indigenous art in general, as well as to collectors and the art market for Indigenous works.
In the past I have written about the challenges faced by Indigenous peoples and artists in protecting their works and cultural heritage (for example, here, here and here). Copyright provides an inadequate framework to protect works of collective traditional culture, an issue that the World Intellectual Property Organization (WIPO) is working hard to address. This year WIPO reached agreement on a new treaty covering genetic resources and associated traditional knowledge. Once ratified by 15 member states, the treaty will, according to WIPO, “establish in international law a new disclosure requirement for patent applicants whose inventions are based on genetic resources and/or associated traditional knowledge”. It’s a start but, to the disappointment of some, what it does not do is address the issue of “traditional cultural expression”. Earlier drafts of the treaty went beyond genetic resources to include means to protect and control traditional cultural practices and knowledge, such music, dance, art and handicrafts. This would have given Indigenous peoples the ability to preserve cultural integrity as well as rights of attribution. That apparently was a step too far, but if the treaty dealing with genetic resources enters into force, this could give impetus to further diplomatic work to develop a treaty covering traditional cultural expression.
Cultural appropriation and borderline copyright infringement is particularly prevalent when it comes to the visual arts. Indigenous artists, although entitled to copyright protection on their individual works, have nonetheless found lookalikes marketed as native works, although most such knock offs do not normally infringe copyright because they are not reproductions of the work of any individual artist. Rather, they are cheap copies of a genre. What is being infringed is a cultural tradition, and is a pervasive form of cultural appropriation. While knock-offs and lookalikes are one thing, out and out art fraud is even more outrageous. The most high profile example is the art fraud scandal involving the late Anishinaabe (Ojibwe) artist, Norval Morrisseau, who is the ultimate victim.
Morrisseau, who died in 2007, is best known as the founder of the Woodland school of art. A self-taught artist from northern Ontario, he went on to great heights artistically and to some lows personally, including struggles with alcoholism and addiction. Labelled by French modernist artist Marc Chagall as the “Picasso of the North’, Morrisseau was a prolific artist who at times is known to have sold some of his works for a pittance when financial need presented itself. This laid the foundations for an audacious and long-running scheme, dating back to the late 1990s, to produce fakes of Morrisseau’s works, some of which have been displayed in prominent galleries and which have sold for considerable sums. These are not clever forgeries of Morrisseau works, they are outright fakes, works that were never produced by him but which replicate his style and were amazingly “found”, stored in abandoned garages, barns and auction houses. The fraud continued after Morrisseau’s death, reaching an industrial-scale with fakes in the thousands flooding the art market. Writer Luc Rinaldi, writing in The Walrus has an excellent summary of Morrisseau’s background and the complicated and long running fraud investigation and trials.
The case itself is a cautionary tale for art collectors. For years, rumours had been whispered about Morrisseau fakes circulating in the art market. In 2012 a prominent musician but novice art collector, Kevin Hearn, learned he had been ripped off over a supposedly genuine Morrisseau work. It was not until he sued the seller, the Maslak McLeod Gallery in Toronto, for selling him the fake work along with providing a fraudulent certificate of provenance, that things really got serious. Hearn lost the first round when the judge declared he could not determine conclusively if the work in question, Spirit Energy of Mother Earth, was a fake although he accepted that fraudulent works were being produced on a large scale. Hearn appealed and this time was successful, winning a $60,000 judgment against the gallery which, according to press reports, has never been paid. No matter. For Hearn it was vindication.
At the time the trials were being held, filmmaker Jamie Kastner was making “There Are No Fakes”, a two hour documentary about the fraud, featuring some of those who actually painted the fakes, gallery owners (some of whom have lost their reputation; one has been charged as part of the fraud), art experts, lawyers from both sides, friends and associates of Morrisseau-the full panoply. The film also delved into the dark side of the fraud; the drug dealing and sexual abuse engaged in by one of the main organizers of the scheme. There are other backstories in the film as well, defamation suits and harassment. Some owners of what have turned out to be fakes were determined to deny the truth, either because they refused to believe they had been hoodwinked or to protect their investments. All in all, it is a pretty sordid tale.
What the film did, however, was to provide a road map for the police who, until this time, had turned a blind eye to this “white collar crime”. Spurred on by the film, the Thunder Bay Police Service along with the Ontario Provincial Police finally dedicated the resources necessary to go after the perpetrators, who had more or less been hiding in plain sight. For years the excuse in the art world was, “No one has ever proven in court that any of the works are fakes” (thus the name of the film). The end result, so far, is the conviction and jailing of the two main architects of the fraud, lesser penalties for others involved and pending trials for still others.
The eventual bringing to justice of the lead perpetrators involves more than just clamping down on white collar crime and bringing justice, of sorts, to collectors and art museums. It also finally tackles the issue of cultural appropriation. There is no doubt that Morrisseau’s work has been tainted and his legacy damaged. Not only that, the spirituality and personal expression that he incorporated in his work has been denigrated and reduced to lines on canvas devoid of any deeper meaning. As reported in The Art Newspaper, Kevin Hearn in his victim impact statement said of Voss, the convicted perpetrator, “His calculated fraud has not only stolen and utilised Norval’s identity as expressed in his work, Voss has also exploited the art world and Indigenous culture.”
It is difficult for Indigenous artists to protect their work and to earn a respectable living from it. Fighting an influx of fake native art cheaply fabricated in Asia is an ongoing problem, especially when the problem is more one of cultural appropriation than direct copyright infringement. In Canada, unlike the US, there is no legislation to prevent non-Indigenous works from being passed off as Indigenous created. But there is also copyright infringement where the work of native artists is hijacked and reproduced without permission or attribution, often in the form of paintings, artwork and clothing designs sold on the internet. And then there is outright fraud, as practiced in the Morrisseau case, where the integrity of the oeuvre is undermined by the proliferation of fakes.
Hopefully now that the fraud has been proven beyond any doubt, and a technical means established to differentiate the fakes from the real (the fraud became so widespread that the perpetrators resorted to a “paint-by-numbers” process, which can be identified through infrared technology), the genuine works of Morrisseau will speak for themselves even louder. After two decades of skullduggery, it took a high-profile civil trial and an award nominated documentary film for the wheels of justice to finally turn and bring closure to this sordid, complex and unhappy story.
The ongoing financial tug-of-war between large tech/social media platforms and news media outlets, with governments trying to play a mediator/arbitrator role, has taken another turn with the announcement that California has cut a deal with Google, similar in principle to the one reached in Canada at the end of last year. When Google was fighting being subjected to regulation in Canada under the Online News Act, Bill C-18, it was glancing over its shoulder at impending developments on its own home turf, California. The California Journalism Preservation Act would have instituted a regime similar to that originally proposed in both Australia and Canada by requiring Google to negotiate agreements with news content providers, compensating them for Google’s use of news content links.
The California bill is similar to draft US federal legislation introduced, but not adopted, in the 2022 session of the US Congress. That legislation would have given news media enterprises an exemption from anti-trust laws allowing them to negotiate jointly with the tech platforms while specifying requirements regarding the negotiations, including arbitration in certain circumstances. (That draft US federal legislation made it difficult for Google to enlist the support of the US Government in opposing similar legislation in Canada, as I wrote about here). Google didn’t like the draft legislation in the US one bit and employed various measures to try to stop it. In California it threatened to drop news from Search, (as it did in Canada) and, similar to its tactics in Canada, it trialed blocking links to news sites for some users.
As most readers will know, and as I have written about on several occasions, Google played hardball in Australiaand Canada, but in the end came to an accommodation of sorts. In Australia it reached unspecified content deals with the majority of Australian media players. In Canada, in return for avoiding designation under the Online News Act, Google agreed to contribute CAD $100 million (about US$75 million) annually to a journalism fund to support news media outlets, both print and broadcast. While the result was not what the government or the news media had originally expected, it was certainly better than nothing. It was not all “new money”, however, as Google had previously signed some voluntary content deals in a vain attempt to head off the legislation. This pre-existing funding will now be rolled into the $100 million fund. The voluntary deals will be wound up, thus putting an effective cap on Google’s contribution. Its tactics in Canada demonstrate that Google will do just about anything to avoid being made to share revenues for linking to the content of others, seeing this as an existential threat to its business and operating model. The same applies in California.
In return for withdrawal of California’s original legislation—which would have subjected links to compensation—Google has agreed to ante up approximately US$55 million over 5 years to be put into a fund to be managed by the Graduate School of Journalism at the University of California, contingent on the California legislature also contributing $70 million to the fund over the same period of time. That outcome is by no means guaranteed as the funding must be approved by the state legislature each year. In addition, according to the New York Times, Google has undertaken to provide approximately $60 million over 5 years to an AI Innovation Accelerator Fund, plus maintaining its existing $10 million annual support payments for journalism. That is pretty small change for Google. California’s population, at roughly 39 million, is almost exactly the same as that of Canada although California’s GDP is roughly twice as large. Taking that into consideration, maybe Canada did not fare so badly in getting Google to contribute $100 million (CAD) annually.
While Google and the California legislators who brokered the deal were touting its benefits, it received a mixed reaction from some publishers and outright condemnation from unions representing journalists and staff working at news outlets, who called it a “shakedown”. Meanwhile, Meta (Facebook) appears to have walked away scot-free. Meta was one of the targets of the original California legislation, as it was in Australia and Canada. Meta has claimed it gets no value from news links and in Canada “complied” with the Online News Act by blocking news links, thus eliminating any obligation to pay for news content. The result has been perverse, with non-news outlets, like a garbage disposal company in Saskatchewan being allowed to post news to Facebook because technically it is not a news provider, while legitimate professional journalism outlets are blocked. While Meta initially reached some content deals in Australia after its blockage of news content blew up in its face, it is now busy terminating them as renewals come up. The Australian government will have to decide whether to bite its tongue and do nothing or call Meta’s bluff. If they do, there is every likelihood that Meta will block news for Australian users as it has done in Canada.
There are still voices in California calling for ways to “encourage” Meta to make a financial contribution to news media, and the Google offer is not a completely “done deal” although it has support from the Governor of the state. With the California domino having fallen, government attempts to bring Google to heel seem to have sputtered out, at least for now. The Journalism Competition and Preservation Act in the US Congress appears unlikely to go anywhere. The UK is still trying to figure out its approach, as MediaPolicy.ca reported last week. Google and Meta appear to have successfully stared down sovereign governments at the national and state level. While Meta appears to have completely closed its wallet, Google has negotiated payments it can live with as part of the cost of doing business. And given the scale of its business, the amounts it is throwing on the table are exactly that, a business cost that is a small price to pay for its dominant quasi-monopolistic grip on the online advertising market which, at its most basic level, is a vehicle to provide access to content generated by others.
Image: Shutterstock (with AI assist: Note AI misspelling)
The sad, slow decline of professional journalism continues. The most recent manifestation of this in Canada is the announcement that the Saltwire Group, publishers of The Chronicle Herald of Halifax and a number of other daily and weekly papers in Atlantic Canada, is on the ropes with $90 million in debt. The Chronicle Herald has been around for 150 years! Post Media has made a buyout offer of $1 million (less than the cost of the average home in Vancouver). This will keep some of the papers publishing, no doubt with significant staff cutbacks and, reportedly, ending of union contracts and termination of company pension plans. But there seems to be little choice; accept the nasty medicine or expire. Post Media will most likely keep a minimal local newsroom and fill the papers with repurposed content from its flagship daily National Post. Local news will suffer. This is a story that is being replicated all over North America.
Meanwhile small, local online news outlets have been hit by Facebook’s blackout of news for Canadian readers as a result of the passage of the Online News Act, Bill C-18. In the case of New Brunswick’s River Valley Sun, according to the CBC, the free-to-readers, ad-supported, all-digital Sun depended on Facebook to reach its audience as well as to obtain local news that could be added to the online journal. The owner is quoted as saying, “…we started basically from scratch, and because Facebook was free it was wonderful”.
That is the flip side of the narrative accusing Facebook of using uncompensated news content, developed at great expense by professional journalists working for media companies, to attract and hold users’ interest thus keeping them on Meta’s sites (Facebook, Instagram) longer to be able to expose them to more ads. Not so wonderful. That is what C-18 was supposed to rectify, along the lines of the News Media Bargaining Code instituted earlier in Australia, requiring the big social media platforms (in this case Google and Meta) to make a contribution to news gathering if they used news content. Failure to do so would result in compulsory and binding arbitration. While Google ducked and weaved, it eventually agreed to put $100 million into a pot to be doled out to various news organizations by the Canadian Journalism Collective as long as it was given an exemption from the legislation, whereas Meta went to the wall and took down news links rather than contribute. The River Valley Sun is collateral damage, although it could possibly tap into the Google funding if it employs any fulltime journalists (a minimum of two is required).
The Online News Act did result in bringing some additional funding to news outlets, large and small, somewhat along the lines of Australia’s initiative through its News Media Bargaining Code (which was not actually invoked because the two platforms ended up striking content deals with most Australian media). However, it is clear that Meta has had buyer’s remorse about its Australian deals because they are busy unwinding those commitments in Oz. It remains to be seen how Australia will deal with this. There have been some suggestions that the Australian government may be looking at options to force Meta to carry news, and then subject them to the Code. Will Meta get a pass—in which case Google could rightly ask why it should comply—or will news also end up being blocked on Facebook and Instagram for Australian users as well as Canadian?
If that happens, consumers will have to find other ways to get access to news that is normally shared on the Facebook platform. Going to the actual websites of news organizations is one good way to do this. What a novel idea! However, many younger consumers won’t do this; if news is on a social media feed, they might read it, but they will not proactively search for it. Facebook also remains an important go-to source for breaking local news related to weather and climate-change events such as flooding and fires. Hosts of Facebook pages distributing information on the local impact of natural disasters have had to resort to workarounds such as posting photos of news articles on Meta or copy-pasting articles into their Facebook page. (Ironically, such actions could possibly constitute violations of copyright whereas posting a link is not). But workarounds are not going to help news outlets like the River Valley Sun.
Perhaps the journal should take a leaf out of the book of Just Bins, a waste recycling firm in Regina, SK, a garbage collection company that seems to have picked up news distribution as a sideline, benefiting from the free online exposure. It does not distribute mainstream media; it creates its own news content that it features on its website, even employing its own drone footage. Because it is not a news site, it is not blocked by Facebook. It has edgily reported on traffic accidents, problems at City Hall, homelessness, and even suicides. In fact, it was voted best online news source in a recent poll taken for the annual “Best of Regina” awards. Not that it takes its journalism role all that seriously—and that is part of the problem—since fact-checking, journalistic ethics and balanced reporting seem to have been put out with the recycling bins. Just Bins has taken the old adage of “garbage in-garbage out” to new heights. This is yet another byproduct of the Facebook ban, a further kick in the shins for reputable journalism. If the River Valley Sun could just sell pizza on the side, maybe they could slip through the Facebook net and post online as Just Bins is doing.
Just Bins is not the only quasi-news source that has managed to squeeze through the Meta news blockage. This week Howard Law’s media blog MediaPolicy.ca reports on the Meta news ban (“The leaky Meta news ban is roiling Canadian journalism”) and highlights a study conducted by researchers at McGill University on the impact of the ban a year after it went into effect. The McGill study notes that many Canadians continue to use Meta as a source of “news” despite the ban. Three-quarters of the Canadian public is apparently unaware of the ban, yet Canadian news outlets have lost 85% of their engagement on Facebook and Instagram and almost one third of local news outlets are now inactive on social media. How this apparent contradiction is possible is explained in part by workarounds such as those referred to above, but also because Meta allows sites that declare themselves to be non-news outlets to continue to post content. Mediapolicy.ca discusses the case of Narcity.com, a “chain of local news and lifestyle websites” that has recently been reinstated on Meta. Narcity was denied government tax credits as a “Qualified Canadian Journalism Organization” (QCJO) because of insufficient first-hand reporting. With this rejection in hand, it then applied to Meta to be reinstated on its platform on the basis that if it didn’t qualify for QCJO credits, it must not be a news provider under the Online News Act, C-18. It’s a clever argument, one that possibly the River Valley Sun could take advantage of.
One can argue that Canada’s attempt to require Google and Meta to enter into good faith negotiations with news providers to license content was either a valiant and imaginative attempt to come to grips with the painful decline of journalism, riding to some extent on what at the time appeared to be the successful coattails of Australia’s initiative, or a colossal miscalculation and poor timing as the platforms decided to draw a line in the sand in case media interests in the US decided to follow suit. Google and Meta will do everything possible to avoid going down that road. If sending a signal to US media interests requires them to call the bluff of the Canadian government, they will do so.
In the end, the results are mixed. Legitimate media in Canada, big and small, will get some help from Google’s contribution, although the amount Google is providing through the Canadian Journalism Collective has to be offset against pre-existing voluntary agreements that both Google and Meta had with some journalistic outlets. The Meta subsidies are now gone, and the previous Google contributions have been folded into the $100 million that Google has agreed to put on the table. Meanwhile, in Regina, Just Bins has found the garbage loophole, serving up its version of trashy journalism and news on Meta, going where bona fide journalists cannot. Sad.
A couple of weeks ago I wrote about Copyright in Cottage Country, and how those wet afternoons are often occupied with cards or board games, like Scrabble, Clue or Cranium, all of which (the board games, that is) are copyrighted (and trademarked). What I neglected to mention is that, in addition to these well-known pastimes, during our recent stay at the cottage we also played several games of “Funopoly”. Now, I realize you may not have heard of this game, despite its uncanny resemblance to another much more famous, commercially available game that has been around for decades. I was introduced to it when I noticed a plain cardboard box lying on the dining table. “What’s that?”, I asked. “Oh, it’s a game I brought up to play at the cottage”, said my very creative 11 year old granddaughter, Stella. “I made it”.
Although Funopoly has a number of similarities with its famous counterpart, including the concept of buying property and paying “rent” if you land on a square, it is a different game. There are no houses or hotels to buy. You won’t find any Park Places or Boardwalks. Rather you might land on Shoppers’ Drug Mart, or Skyzone Trampolines or Canada’s Wonderland, all places in Toronto. The most expensive property on the Board, valued at something like $50, is the home of prominent rapper Drake, (actually valued at around $100 million) . But even though there are Canadian, British, Australian (and many other) geographically modified editions of Monopoly, this is not simply a Toronto version of that game. (The original US version was based on street names from Atlantic City, NJ. The British edition, also dating to the 1930s, used London street names. A Canadian edition debuted in the 1970s using street names drawn from cities across the country, from St. John’s, Nfld to Victoria, BC).
Funopoly doesn’t have street names. Another difference is the money, handmade and coloured $1 (green), $5 (blue) and $10 (purple) notes. There is a limited supply of each, and there seems to be equal numbers of each denomination. As in Monopoly, you get a reward (in this case, $1) for passing Go. But the properties are relatively expensive in proportion to the amount of money you have in hand. As a result, the first time we played I faced early bankruptcy as I had the misfortune to play last and landed on a couple of properties that had already been purchased. The “rent” was crushing and the paltry replenishment when my token (a coloured Qtip) passed Go didn’t cut it. Stella modified the game the next time we played, with players being rewarded with $10 when they passed Go. In this case, the bank soon went bankrupt as all the money was in the hands of the players. Funopoly is clearly a work in progress and is still being fine-tuned–but is a lot of fun. There are also no railroads or utilities, but there is a casino, a club and an ice cream truck. You seem to end up in jail on a regular basis, but get out just as quickly, something like the “catch and release” policies followed by Canadian courts for frequent offenders. Don’t look for Funopoly on Amazon. There is only one extant version in the whole wide world, and it is definitely not for sale. And I have had the privilege of playing it (and losing).
Knowing that I write a copyright blog, Stella asked if she could copyright Funopoly. I explained to her that if it is an original work in a concrete form (i.e. fixation), then copyright is automatically conferred. However, if she wanted a nice certificate to prove that it was copyrighted, that could be arranged. For $50, I could get her a vellum-like certificate from the Canadian Intellectual Property Office (CIPO) proclaiming her copyright in Funopoly. She would not even have to send in a photo of the game, because CIPO does not want or keep any copies of the works they are registering. (Many years ago, the Copyright Office required deposit of a copy of the work to be registered, but no longer). Nor does CIPO verify whether the work conflicts with another registered work. All they do is register a description of the work—and send you a nice certificate of copyright, as I demonstrated last year when I registered some AI created artwork and poetry, (Canadian Copyright Registration for my 100 Percent AI-Generated Work). Maybe we will register Funopoly. The certificate would be a nice birthday present for her.
Canadian copyright registration certificate or not, we must still ask the question as to whether this is an original work. Does it infringe on the copyrights or other forms of intellectual property (IP) protection of others? It turns out there has been a long history of IP disputes over Monopoly. The game was first published under the Monopoly name by Parker Bros in 1935 but there were earlier versions variously called “The Landlord’s Game”, “Finance”, or “Auction”. The game’s invention has been credited to Charles Darrow but there is strong evidence that rather than inventing the game, his genius was in marketing it, the original concept being created 30 years earlier by Lizzie Magie who had patented The Landlord’s Game in 1903. While the design and artwork (tokens, the board itself, other unique elements such as game-specific cards) around a board game can be protected by copyright, the actual rules of the game can be patented. And of course, the name (such as Monopoly or Scrabble) can be trademarked.
Each of these forms of IP protection has different characteristics. A patent has to be examined and accepted, and there is a limited period of protection, about two decades. Copyright is also time-limited, albeit of much longer duration. Trademark protection can be continuous, providing the mark stays in use and is renewed as required, normally every ten years. There was a notorious dispute in the 1980s over a game called “Anti-Monopoly”, that involved challenges to the trademark. In the end, Parker Bros. retained its trademark on Monopoly and acquired the trademark Anti-Monopoly, then proceeded to license it to the creator of the Anti-Monopoly game.
However, while many of the aspects of a board game can be protected by IP laws, some cannot. This is where the idea/expression dichotomy comes into play, meaning you cannot copyright an idea, only the expression of an idea. Thus, anyone can make a game that involves the buying and selling of properties and sending a person to jail for a variety of infractions. Anyone can make a game that involves moving a token around a board according to the role of a die or dice. But the rules of a game and its artwork and design can certainly be protected by both patent and copyright, and if a game that was sold commercially was substantially similar to a copyrighted work, with only a few details changed, that could be a factor in finding infringement.
Substantial similarity is another one of those complicated copyright issues. Simply put, you cannot simply change a few words in a published work, or presumably just a few features in a copyrighted game, and claim it is a new work. But substantial similarity is an elastic concept; even different judicial circuits in the US interpret it differently, according to this article from lawfirm DLA Piper. For my part, I am convinced that Funopoly is substantially different from Monopoly. What other game in the world uses a coloured Qtip as a token?
Nonetheless, as I am always quick to point out, I am not a lawyer and any interpretation of copyright laws that you find in this blog does not constitute legal advice. Instead, I try to go to reputable sources to buttress my opinions. I can find no better source than the American Bar Association, which outlined all you need to know when it comes to IP and board games. Will Hasbro, (now the owner of Monopoly) come after Stella to shut down Funopoly? Somehow, I doubt it. In fact, according to the ABA there are several “opoly” named games registered with the USPTO, a precedent that should help. In the meantime, we can pursue a Canadian copyright registration and obtain a pretty but not very useful certificate to hang on the wall.
Funopoly is not going to make Stella’s fortune. The real inventor of the property game concept, Lizzie Magie, got only $500 and no royalties in the mid-1930s when Parker Bros bought up rights to related games from her to protect its monopoly on Monopoly. Stella for her part won’t earn a cent from Funopoly, but that is not the point. Playing Funopoly with her on a rainy day at the cottage—even though I went bankrupt–was a priceless experience, and was the true reward.
