Law Times

Law Times • February 1, 2016 Page 9 www.lawtimesnews.com Ruling creates a 'bizarre scenario,' says lawyer BY MICHAEL McKIERNAN For Law Times A f lawed Small Claims Court decision vindi- cates critics who said digital lock amend- ments to the Copyright Act en- acted in 2012 were too broad, ac- cording to a Toronto intellectual property lawyer. In 13595804 Ontario Limit- ed (Blacklock's Reporter) v. Ca- nadian Vintners Association, an Ottawa deputy judge ruled that the fair dealing exception to copyright infringement was not available to the winemakers' group because it had violated the new technological protection measure provisions of the Copy- right Act when bypassing the online publication's subscriber paywall to access a news article. "It creates a bizarre scenario where a copyright owner could prevent any fair dealing of their work from occurring simply by setting up a restrictive paywall, which undermines the funda- mental concept of copyright law in Canada," says John Simpson, the founder of intellectual property and new media law firm Shift Law. The 2012 amendments pro- hibit circumvention of "any ef- fective technology, device or component" that controls access to a copyrighted work, and were introduced to bring Canada into compliance with the World In- tellectual Property Organization Copyright Treaty. Although a group of then-opposition Lib- eral Members of Parliament sup- ported a move to preserve the fair dealing defence by explicitly allowing circumvention of TPMs for lawful purposes, their pro- posal was rejected at the commit- tee stage of the legislative process. "There was an argument that it should be left to the courts to get it right," Simpson says. "Now the first one to have a chance is a Small Claims Court judge who probably doesn't have much ex- perience dealing with copyright matters, and is encountering some pretty poorly drafted leg- islation, and you have a perfect storm for getting it wrong." The dispute has its roots in a December 2013 appearance by Dan Paszkowski, the president and CEO of the CVA, before a House of Commons committee. A subsequent story by Black- lock's Reporter, a subscription- only news publication focused on the workings of Parliament, quoted Paszkowski, and he re- ceived a short preview of the ar- ticle by e-mail. According to Deputy Judge Lyon Gilbert's Oct. 16 decision, Paszkowski was concerned by what he saw as inaccuracies in the preview, but he was unable to view the full story since it was be- hind the Blacklock's paywall. He had previously decided against purchasing a subscription, so he asked another friend in the drinks industry who subscribed to send him a copy of the article. When Paszkowski called the web site's publisher to discuss the story, she asked him how he had managed to view the article, and within days Paszkowski had re- ceived a letter alleging a breach of Blacklock's copyright, as well as an invoice for $314 plus HST. That represented the price of two one-time subscriptions to the ser- vice, since the president had ad- mitted sharing the full story with another colleague at the CVA. When Paszkowski refused to pay, Blacklock's sued in Small Claims Court, and won a dam- ages award worth $11,500, the price of an annual institutional membership with Blacklock's, plus $2,000 in punitive damages. In his decision, Deputy Judge Gilbert concluded Paszkowski's actions had violated the TPM provisions in s. 41.1 (1) of the Copyright Act. "Section 41. 1 (1) is clear and applicable. You are prohibited from circumventing a techno- logical protection which uses an effective technology to control access to a work. What the Defen- dants did is just that. They knew there was limited access to the full article. They knew that access was subscription based only and that subscriptions cost money. They knew that there was a tech- nological barrier to that access. They knew that unless they paid they could not get it. They knew and chose another way around it. Having breached that prohibi- tion, they have obtained copy- righted material belonging to the Plaintiff illegally," Gilbert wrote. He also dismissed the defen- dants' claim of fair dealing, stat- ing that case law on the subject made it "patently clear that unless you have obtained the material le- gally, you cannot avail yourself of the defence of fair dealing for the purpose of education, criticism or review." In any case, he said a fair dealing claim based on the pur- pose of research would not stand up "given the fact nothing came of the research . . . once obtained." Punitive damages were war- ranted, Gilbert wrote, because of the CVA's "attitude trivializing the value of the Plaintiff 's work and its efforts at protecting its copyrighted material; the man- ner in which the copyright was illegally obtained; asserting that the purpose in obtaining the ma- terial was for educational and re- search purposes when ultimately neither was engaged in; refusing to reveal the source of the mate- rial until ordered to do so and involving a third party exposing it to an action for infringement." Bill Northcote, a partner with Shibley Righton LLP, says the de- cision raises questions about tech- nological neutrality because simi- lar facts in the analogue world would yield a different result. "If I buy a newspaper, and you ask to see an article about you in it, there is no copyright infringe- ment there in the traditional analysis," he says. Northcote says he was also troubled by the suggestion in Gil- bert's judgment that something must come of research or private study in order for that fair dealing purpose to be considered genuine. "There are all kinds of good tactical reasons why you may decide to do nothing with your research, rather than getting into an argument with a publisher," he says. In any case, Northcote says Paszkowski's call to the Black- lock's publisher to discuss the sto- ry could be regarded as the sort of action Gilbert found lacking, adding that the punitive damages award "seems excessive." Jill Tonus, the head of the new media and copyright practice group at Bereskin and Parr LLP, says she is not sure copying and pasting an article is the sort of circumvention legislators had in mind when they enacted the TPM provisions. After the CVA announced it would not appeal the judgment, she says it's "a bit frustrating" that a higher court won't get to weigh in on the issues raised in more detail. "I think it would have been more surprising if this decision had been by a Federal Court judge," says Tonus, who works out of the firm's Toronto of- fice. "We don't have a lot of case law on this fairly new and fairly complex legislation, and there are a lot of very interesting is- sues of copyright that a lot of us are wondering about since these new sections came in, so it would be nice to have a good, detailed, and thorough decision to discuss how it's being applied." LT FOCUS Right-sized Thinking® Pallett Valo LLP Proudly Announces New Advisor - Client Relations New Partners Andy Balaura Partner Employment & Labour 905.273.3022 Ext. 225 abalaura@pallettvalo.com Nash Lakha Advisor - Client Relations • 905.273.3022 Ext. 400 Nash will assist the firm's lawyers to better understand their clients' needs and expectations so that they can deliver a higher level of client service, as well as more effective business solutions. Joe Conte Partner Business Law 905.273.3022 Ext. 217 jconte@pallettvalo.com Maria Ruberto Partner Construction 905.273.3022 Ext. 206 mruberto@pallettvalo.com Your Authority For: Business Law • Commercial Litigation • Commercial Real Estate Construction • Insolvency & Corporate Restructuring Employment & Labour • Wills, Estates & Trusts Untitled-1 1 2016-01-26 3:25 PM John Simpson says the ruling in a recent Small Clams Court case highlights drafting problems in the Copyright Act.

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