Law Times • December 3, 2012
Page 13
BRIEF: INTELLECTUAL PROPERTY LAW
Rothstein warns against double-dipping
BY MICHAEL McKIERNAN
Law Times
W
hen it comes to
copyright
law,
double-dipping
doesn't bode well
with judges, according to Supreme Court Justice Marshall
Rothstein.
If an interpretation of the copyright statute involves seeking fees
multiple times for the same product, judges will "stride mightily" to
side against it, said Rothstein, who
was part of the decisions in five
key cases released by the top court
in July. He made the comments to
an audience of students and law
professors at Osgoode Hall Law
School on Nov. 27.
At a talk hosted by Osgoode's
intellectual property law and
technology program, Rothstein
reflected on the deliberations that
led to the rulings that set the tone
for what does and doesn't count as
fair dealing and communication
to the public.
In Entertainment Software
Association v. Society of Composers, Authors, and Music Publishers of Canada, the court ruled
the association couldn't charge
Internet service providers to
copy a song as well as for each
download consumers make.
In effect, downloading a song
isn't any different than buying it in
store, the court ruled.
"Judges don't like doubledipping," Rothstein told the audience. "And if they think someone
is double-dipping, they'll go into
contortions to preclude it."
But the Supreme Court judges
agreed unanimously that Internet
service providers should be subject to tariffs for streaming videos
online since that constitutes communication to the public.
"If you look at it from the recipient's point or position, you would
say he or she was receiving an individual transmission, not one to
the public," Rothstein said.
"But if you looked at it from
the sender's position, you might
conclude the opposite because the
sender is issuing or intending to issue public transmission."
In Rogers Communications
Inc. v. Society of Composers, Authors, and Music Publishers of
Canada, the court also found
that on-demand services are
a communication to the public. Rogers had argued it could
provide pay-per-view services
without a copyright tariff.
But the majority and dissent
differed on the definition of the
word "communication" when it
came to downloading, said Rothstein, who was part of the majority.
For the majority, the word
meant something performed in
real time. And because a consumer can't see or hear a song before
the download is complete, it didn't
necessarily constitute communication to the public.
But the dissent found "there
was nothing in the definition of
the word 'communicate' to imply
the transmitted material must
be seen or heard immediately,"
Rothstein said.
The two sides varied in what
they believed should be the focus,
he noted, adding that the dissent
wanted a strict interpretation of
the statute whereas for the majority "it was technological neutrality
and double-dipping that were the
prime reasons for their decision."
The court's ruling means the association can't seek compensation
for video games, electronic books,
and other products containing
copyrighted musical works.
Although the dissent also believed the rules should be consistent across all technological platforms, those judges argued that
wasn't central to the statute.
But Rothstein begs to differ.
Parliament adopted the use of
the word "telecommunication" in
s. 3(1)(f) of the statute "to cover
all modern technology even if
Parliament couldn't foresee what
it would be in the future," he said.
"The term technological neutrality does not appear in the bill
itself, but there is no doubt that
there is an intention that this be
the objective of that act."
Judges don't know what "telecommunication" would mean in
the future either, said Rothstein.
"We may be Supreme Court
judges but we're not prescient
or clairvoyant. So we don't necessarily know the fallout of our
decisions," he said.
The July rulings also expanded
what fair dealing means for copyright law. When determining
whether an exchange is fair dealing, the statute looks at a number
of factors: the purpose, character,
nature, and effect of the dealing as
well as the alternatives to it.
Research, an activity considered as part of fair dealing, is at
the core of the argument in Society of Composers, Authors, and
Music Publishers of Canada v. Bell
Canada, the court ruled. The association had asked for compensation when viewers preview a
song, but the court decided music previews are research. It's unlikely free previews will devalue
the songs, Justice Rosalie Abella
wrote in the ruling.
"Because of their short duration and degraded quality, it can
hardly be said that previews are in
competition with downloads of
the work itself," she wrote.
"And since the effect of previews is to increase the sale and
therefore dissemination of copyrighted musical works thereby
generating remuneration to
their creators, it cannot be said
that they have a negative impact
on the work."
In a decision considered a huge
victory for the academic community, the court also questioned
how the purpose test applies in
fair dealing when it comes to
making photocopies of textbooks
in schools. In Province of Alberta
v. Canadian Copyright Licensing
Agency, photocopying parts of
textbooks in schools was at issue.
Rothstein said the majority believed that if research and private
study are fair dealing, it shouldn't
matter where those activities take
place because "the focus should be
on the study, not the geography."
The court sent the photocopying issue back to the Copyright
Board of Canada for further review. Within two months, the
board wrote to the Supreme
Court with what Rothstein said
was a "terse judgment."
"The decision of the Supreme
Court is clear and leaves no room
for reinterpretation," the board
told the Supreme Court.
Even though it went along with
the Supreme Court's decision, the
board likely felt the court was stepping on its toes, Rothstein said.
"I think the board considers
the Supreme Court's findings to
be too intrusive of what would be
matters of discretion normally left
to the board."
LT
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