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March 26, 2004 – Volume 2, Number 1 | |
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IP Report Online is a monthly publication providing our clients with a quick and up to date briefing on developments in the world of Intellectual Property. IP Report Online supplements our quarterly publication IP Report. For more information on any of the developments discussed, please contact us at ipreport@gowlings.com. We hope that you find both publications useful. |
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In this issue
COPYRIGHT DEVELOPMENTS DOMAIN NAME NEWS RUSSIA and CIS COUNTERFEITING DEVELOPMENTS BIOTECHNOLOGY COPYRIGHT DEVELOPMENTS“DELICIOUS” SETTLEMENT FOR ZAPPA FAMILY By Carina De Pellegrin Gowlings' lawyers, Jamie Mills, Carina De Pellegrin, George Hynna and Julie-Martine Loranger, successfully represented the family of late rock legend Frank Zappa in a copyright infringement and moral rights infringement case. In 1995, two years after Mr. Zappa's death and the same year that he was inducted into the Rock & Roll Hall of Fame, a fan in Gaspésie was stunned to hear one of Frank Zappa's songs in television advertisements promoting appliances. The song, entitled “Watermelon in Easter Hay,” is a distinctive guitar solo from the rock opera Joe's Garage and is one of Mr. Zappa's signature tunes. The fan dispatched a letter to the Zappa family informing them of the use of the work by the Québec furniture chain Ameublements Tanguay. The Zappa family commenced an action in the Federal Court of Canada seeking damages and profits for copyright infringement and moral right infringement. In January 2004, some nine years after the commercials first ran, the seven-day trial began in Québec City. The media took a keen interest in the proceedings, attended by Frank Zappa's widow Gail Zappa, and daughter Diva. The details of the case were widely reported nationally, thereby showing a strong interest in the issue of artists' rights. Following the first day of trial, which included opening statements and testimony of Gail Zappa, the case settled. As part of the settlement, Ameublements Tanguay admitted the infringement and issued a public apology. A consent judgment also issued declaring that the Defendant had infringed the copyright and moral rights in the song and the rock opera Joe's Garage. The case highlights the obligations of a company using musical and other works, to ensure that all rights are liberated, even if it hires outside agents to prepare its advertisements. Mrs. Zappa, who has been involved in numerous legal proceedings to safeguard the integrity of her husband's works, described the consent judgment as perhaps her most “delicious” to date. LAW SOCIETY WELCOMES SUPREME COURT OF CANADA LANDMARK COPYRIGHT DECISION By Kevin Sartorio In a unanimous decision written by the Chief Justice and rendered March 4, 2004, in the much-anticipated case of CCH Canadian Ltd. v. Law Society of Upper Canada, 2004 SCC 13, the Supreme Court of Canada has clearly indicated the proper balance between the rights of copyright owners and the rights of members of the public who require access to works for important purposes, such as research. In allowing the Law Society's appeal, while dismissing the legal publisher's cross-appeal and awarding the Law Society its costs throughout, the Supreme Court reached several important conclusions. Regarding the concept of “originality,” an original work under the Copyright Act is one that originates from the author and is not copied and that is also the product of an author's skill and judgment (not labour); “skill” meaning “the use of one's knowledge, developed aptitude or practiced ability in producing the work” and “judgment” meaning “the use of one's capacity for discernment or ability to form an opinion or evaluation by comparing different possible options in producing the work.” The exercise of skill and judgment must involve some intellectual effort and must not be so trivial that it could be characterized as a purely mechanical exercise. This approach was stated to be somewhere between the previously competing “sweat of the brow” standard and “creativity” standard. Applied to the main works in issue in the case (reported judicial decisions along with headnotes), the Court found that while the headnotes attracted copyright protection, the publication of merely an edited version of a judge's reasons for judgment did not. Accordingly, the reproduction by anyone of a judge's reasons for decision, as published, but without a headnote, cannot infringe copyright, presumably regardless of the purpose of the reproduction. The publication of such text is not capable of being considered an “original” work on its own in the hands of the publishers, or of contributing to the originality of the reported decision as a whole. Regarding the concept of “authorization,” the Law Society was found not to authorize any copyright infringements merely by placing photocopiers in its Great Library. It was entitled to presume that such machines were used lawfully, there being no evidence in the case to the contrary nor any reason to draw any inference to the contrary. The core focus of the Court's decision was the concept of “fair dealing” under S. 29 of the act. Fair dealing was given a greatly expanded and purposive interpretation. Simply put, fair dealing for the purpose of research or private study does not infringe copyright. “Research” must be given a large and liberal interpretation in order to ensure that users' rights are not unduly constrained. Fair dealing is not limited to non-commercial or private contexts. Lawyers carrying on the business of law for profit are conducting research within the meaning of fair dealing. The willingness of a copyright owner to offer a licence for the reproduction of its works is irrelevant to the concept of fair dealing. When the Law Society's Great Library provides photocopying services to its members and the judiciary, in accordance with its access policy, it does not infringe copyright. As such, its services were not enjoined and may continue in their present form without adjustment. This landmark decision from the Supreme Court of Canada will impact domestic and international copyright law for decades to come. The Law Society's counsel were R. Scott Jolliffe, A. Kelly Gill and Kevin Sartorio, all of Gowlings. ACCESS COPYRIGHT SEEKS TO SHUT DOWN E-BAY AUCTION OF PIRATED CANADIAN BOOKS By Aaron Schwartz Legal action has been commenced against the alleged seller of pirated copies of Canadian books on the e-Bay auction site. Access Copyright, the Canadian copyright licensing agency, representing more than 5,000 Canadian writers, photographers and illustrators and 500 publishers, is seeking to shut down the online auctioning of hundreds of titles compiled on CD—mostly exam preparation materials, study guides and software manuals. The estimated retail value of the pirated works is more than $300K. Earlier this year, Access Copyright shut down the unauthorized copying activities of U Compute, a Montreal-based copy shop near Concordia University, and conducted the largest seizure of pirated textbooks in Canadian history, worth an estimated $250K in lost revenue to booksellers, publishers and authors. DOMAIN NAME NEWSMTV.CA ORDERED TRANSFERREDBy Eric Macramalla In a domain name complaint filed pursuant to CIRA's Dispute Resolution Policy, which addresses instances of bad faith registration in the dot-ca space, a three-member panel unanimously ordered the transfer of the domain name mtv.ca to the complainant trade mark owner, Viacom International Inc. The three-member panel held that the registrant engaged in a pattern of registering domain names containing third-party marks to which it had no entitlement, including the domain name muchmusic.ca. Reinforcing a finding of bad faith registration was the fact that mtv.ca had remained inactive for over two years. Further, the panel did not accept the registrant's position that “MTV” was intended for the purpose of operating “MT Vacations,” and that “MT Vacations" stood for “Melanie and Todd's Vacations.” The panel concluded that the registrant's attempt to legitimize the registration by alleging that it was a play on words was “nonsensical.” Gowlings acted on behalf of the complainant in this case. ITV TECHNOLOGIES By Marie-Hélène Rochefort In ITV Technologies, Inc. (“Technologies”) v. WIC Television Ltd. (“WIC”), 2003 FC 1056, the Federal Court reached a decision in a domain name case by applying principles well established in trade mark law. Technologies brought an action against WIC for the expungement of WIC's trade marks that included the initials ITV. WIC then proceeded to counterclaim for passing off, trade mark infringement and depreciation of the goodwill in its registered trade marks. The Court dismissed both the action and the counterclaim. WIC was in the television broadcasting business in Edmonton and used the domain name itv.ca. Technologies operated an Internet-based business where it archived video footages and transmitted video and audio from live events over the Internet using the domain name itv.net. WIC was of the opinion that Technologies did not have the right to operate a Web site using the domain name itv.net. The Court applied the following test: was ITV within the common knowledge of Canadians? Technologies argued that ITV was well known to those in the broadcasting business. The Court was unable to accept Technologies' position. On the other hand, the Court could not invalidate WIC's trade marks. Since other businesses used ITV on their Web sites, WIC was not entitled to a monopoly for all ITV domain names. Moreover, the Court distinguished the two parties by stating that Technologies was not a broadcaster but a Web caster. The Federal Court reiterated that the registration of trade marks does not provide an automatic and exclusive right to use a trade mark in a domain name. Given the above and even though the Court did not invalidate WIC's trade marks, the Court did conclude that WIC's trade marks were weak and that Technologies could keep itv.net as its domain name. RUSSIA and CISADVERTISING LAW AMENDMENT IN UKRAINEBy Pavel Arievich As a result of intense lobbying of Ukrainian and international companies and associations, on February 3, 2004, the Verkhovna Rada (parliament) of Ukraine passed, in the second reading, an amendment to the Law of Ukraine “On Advertising.” One of the provisions of the law, which took effect in September 2003, earlier caused major concern within the international business community. The adopted version of the law (Article 6) required, among other things, the “duplication” of foreign language trade marks into Ukrainian in all advertising in Ukraine. The Article also restricted Ukrainian entities from quoting their trade marks in advertising in any language other than Ukrainian. The amended Article 6 now reads that usage of language in advertising is conducted according to the Law of Ukraine “On Languages,” and that “marks for goods and services are used in advertising in that form, which is legally protected in Ukraine according to the current law, in particular Article 6 quinquies of the Paris Convention for the Protection of Industrial Property.” COUNTERFEITING DEVELOPMENTSCSA INTERNATIONAL/GOWLINGS ANTI-COUNTERFEITING ALLIANCEBy Peter Choe Gowlings National Managing Partner Scott Jolliffe is pleased to announce actions taken by CSA International/Gowlings Anti-Counterfeiting Alliance to curb the growing national and international problem of trade in counterfeit CSA-marked products. The alliance is a co-operative effort between Gowlings Partner David Aylen and CSA Group V.P., General Counsel & Corporate Secretary R.J. Falconi. The alliance is co-chaired by Gowlings Partner Norm Inkster and R.J. Falconi. BIOTECHNOLOGYCOURSESGowlings is to partner with the Biotechnology Human Resource Council to deliver training on intellectual property protection for the biotechnology sector across Canada, in a series of two-day courses, including:
For further information on the course, its syllabus and how to register, please visit www.bhrc.ca/gowlings or contact Paul Fortin (paulf@bhrc.ca), 613-235-1402, Ext. 618, or contact Jane Clark at Gowlings (jane.clark@gowlings.com), 613-786-0187. |
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