As of November 2012, Canada has a new Copyright Act that has been commonly identified as “user-focused.” This raises the question: What does the new Copyright Act mean for Canadian businesses? In this presentation, we discuss: -How the new act affects Canadian businesses, particularly innovative industries. -What has changed and what remains the same for commercial copyright owners. -What a business needs to know to protect its copyright and to keep from infringing the copyright of others.

1. Operating as a Canadian Business
Under the New “User-Focused”
Copyright Act
Karen Durell
MaRS Best Practices Series
April 16, 2013

3. Conversion from IDEA to
Intellecutal Property
1) Informal Knowledge 2) Formal Knowledge
Human Resources Codified Assets
Information
Knowledge of Contributors Designs
Products
3) Protected Knowledge
Intellectual Property
Patents
Trademarks
Copyright, etc.

4. Types of Intellectual Property
• Industrial Designs
• Knowledge
• Know-How
• Patents
• Copyright
• Integrated Circuit Topography
• Trade Secret
• Trade-marks
• Plant Breeder’s Rights

5. Each Intellectual Property Right is Distinct
“trade‑mark law should not be used to perpetuate
monopoly rights enjoyed under now‑expired patents”
Kirkbi AG v. Ritvik Holdings Inc., [2005] 3 S.C.R. 302

6. Patents

7. Industrial Design

8. Trade-marks & Branding
COKE ZERO
NIKE

9. Copyright
Protection for the expression of an idea

10. Copyright Protection
CORPORATIONS AND INTELLECTUAL ASSETS:
A CASE OF BEING BLINDED BY THE ECONOMIC VALUE
Karen Lynne Durell,
Faculty of Law, McGill University, Montreal
Death of a
August, 2004
A thesis submitted to McGill University in partial fulfilment of the requirements
of the degree of M.C.L. Salesman
- Software Code;
- Manuals;
- Drawings/Layouts;
- This Powerpoint Slide;
- Etc…….

11. Copyright Extended to…
Dramatic works
Photographs
Musical works Artistic works
Copyright Act ≠ “One-Size-Fits-All”
Literary works Sound recording
Performers` performances
Cinematrographic work

12. Does Copyright Exist?
Not solely a matter of establishing
“Originality”…
Copyright Test = Originality must exist, meaning:
• More than mere copy of another work
• Exercise of skill and judgement & Intellectual effort
– Chief Justice McLachlin in CCH Canadian Ltd. v. Law Society of Upper
Canada, 2004

13. Canadian Copyright Act
2005
Bill
C-­‐60
(Liberal
Minority
Gov’t)
2008
Bill
C-­‐61
(Conserva:ve
Minority
Gov’t)
2010
Bill
C-­‐32
(Conserva:ve
Minority
Gov’t)
2011
Bill
C-­‐11
(Conserva:ve
Gov’t)
-­‐ Iden:cal
to
Bill
C-­‐32
-­‐ Royal
Assent
on
June
29,
2012
-­‐ Parts
in
force
November
7,
2012
-­‐ Parts
s:ll
to
come
into
force

14. Artists blast record companies over lawsuits against downloaders
Joel Selvin, Neva Chonin, Chronicle Pop Music Critics
Published 4:00 am, Thursday, September 11, 2003
Artists’ lawsuit: major record labels are the real pirates
Between $50 million and $6 billion may be owed to musicians and
artists in …
by Jacqui Cheng - Dec 7 2009, 1:51pm EST, ArsTechnica
BALANCE?
On September 8, 2003, the recording industry sued
261 American music fans for sharing songs on peer-
to-peer (P2P) file sharing networks, kicking off an
1999: The Recording Industry Association unprecedented legal campaign against the people
of America sues Napster, the online, that should be the recording industry’s best
peer-to-peer file sharing service that’s customers: music fans
allowing millions of computer users to
score free, copyright music. The rules
are about to change.

15. Overriding Change in New Act
• Compliance with WIPO treaties (1996)
• Division between Commercial & Non-Commercial
Acts
“legitimizes activities that Canadians do every day. For example, it recognizes that
Canadians should not be liable for recording TV programs for later viewing, copying
music from CDs to MP3 players, or backing up data if they are doing so for their
private use and have not broken a digital lock.”
- Government of Canada
• Certainty for innovative companies necessary to:
“develop products and services that involve legitimate uses of copyright material”
- Government of Canada

16. Copyright Provides (Generally)
Copyright = sole right to produce or reproduce work;
perform work in public; to publish and rent work; to
prevent others from copying a work without
permission
Registration: not required (Virtually-international right)
Term = Life of the author plus 50 years (generally in
Canada); or
from first publication plus 50 years (e.g.,
cinematographic works, performer’s performance
fixed in a sound recording, communication signal…)
NOTE: Can file Copyright with the Canadian Copyright Office

17. International Copyright Example
HAPPY BIRTHDAY SONG & COPYRIGHT
• 1893: Tune written and composed by sisters Patty Hill & Milrded Hill
– “Good Morning to All” (published as kindergarten song)
• 1912: “Happy Birthday” lyrics first printed
• 1935: Registration of copyright for Happy Birthday song
• 1946: Patty Hill died (after Mildred Hill was already deceased)
Copyright Expiration
• 1996: Copyright expired in Canada
– (Canadian laws = Life of author + 50 years)
• 2016: Copyright will expire in Europe
– (EU laws = Life of author + 70 years)
• 2030: Copyright will expire in the U.S. – according to owner
– (U.S. copyright laws = Life of author + 70 years)

18. Who Owns Copyright?
First Owner is any of the following under the
Act:
– First sole creator/author (even photographers)
– Co-creation = joint ownership
– “Work for Hire”
NOTE: First Owner can be contractually
designated

19. A Copyright Owner Can…
License Copyright
– Authorization for a third party to use your copyright
Assign Copyright
– Transfer whole or partial rights to another owner
– Must be in writing and signed by the owner
NOTE: Can File an Assignment or License Agreement with the
Copyright Office
NOTE: To follow chain of title and understand rights of use must
know terms of any open source licensed content of software work
(maybe commercial use is probhibited)

20. Moral Rights
• New Act Extends Moral Rights to Performers’ Performances
“Moral rights, which are not assignable, treat the œuvre as an extension of the
artist’s personality, possessing a dignity which is deserving of protection.
The integrity of the work is infringed only if the work is modified to the
prejudice of the honour or reputation of the author. Moral rights act as a
continuing restraint on what purchasers can do with a work once it passes
from the author” = Distinct from economic rights
(Théberge v. Galerie d’Art du Petit Champlain inc., [2002] 2 S.C.R. 336)
NOTE: Include Waiver of Moral Rights in Contracts

21. Fair Dealing
• Fair Dealing (e.g., it is not an infringement to
use copyright for):
– Research, private study,
– Education, parody or satire (New)
– Criticism or review
– News reporting

22. Other New Non-Infringing Uses of Copyright
• Reproduction for private • Educational institution
purposes
• Back-up copies
• Reproduction for later
listening or viewing
• Non-commercial user
generated content
• Libraries, Archives,
Museums

23. Penalties for Infringement
• Commercial vs. Non-Commercial Damages
– Non-commercial infringer = may have statutory
damages limited to $100 - $5,000
– Commercial infringer = upto $20,000 per
infringement
NOTE: Reduced likelihood of infringement suit against
individuals
NOTE: Free access to a website is not necessarily indicative
of a non-commercial website

24. Digital Locks
• Technological Protection Measure = Digital Lock
– Breaking/circumvention allowed for:
• Encryption research, making computer programs interoperable, investigation related
to the enforcement of any Act of Parliament for national security, lack of a notice
indicating that use of a work will permit a third party to collect and communicate
personal information relating to a user, provide work to person with perceptual
disability, etc.
– Not infringement to merely possess tools or software capable of breaking or
circumventing digital locks
NOTE: Intended to improve ability of owner to control online use of
works

25. ISPs & Search Engines
Not an Infringement to Act as ISP or Search Engine
(Network Services Provision)
… Unless ISP or Digital Network Service is
Enabling Infringement
(Enabler Provision)

26. Rights Management Information
A person who removes or alters Rights Management
Information is infringing copyright
– Includes: works; performer’s performances fixed in sound
recordings; and sound recordings
– same remedies as are available for infringement

27. Still to come…
Notice-and-Notice Provisions
NOTE: No implementation of notice-and-takedown or
notice-and-termination provisions in Canada

28. Questions
Karen Durell
416.595.7913
kdurell@millerthomson.com