Different jurisdictions- same outcome?

November 13, 2007 by Detelina Lurie

  Advances in technology facilitating dissemination of digital files
inevitably poses challenges on enforcement of existing copyright laws.
Prince’s lawsuit, if filed, would be of significance in setting the
standard of care to which file-sharing providers (YouTube), indexing
services (The Pirate Bay) and online trade forums (EBay) should exercise
to prevent making copyright-infringing works available for download.
  In theory, preventing such providers from capitalizing on an artist’s
labour would be justifiable by the economic theory of law (also reflected
in Article 1, Section 8, Clause 8 of US Constitution) which empowers the
Congress to pass laws to promote “the progress of science and useful
  In practice, the US Copyright Act of 1976 and its amendments aim at
balancing the rights of the numerous stakeholders. The relevant provisions
of the Digital Millennium Copyright Act of October 1998, Section 512,
limits copyright infringement liability for internet service providers for
simply transmitting information over the Internet but requires them to
remove material that appears to constitute copyright infringement. US’s
obligations under a number of international treaties and conventions, to
my knowledge being the Berne Convention for the Protection of Literary and
Artistic Works, the WIPO Copyright Treaty (to which Canada is not a
subscriber), the Geneva Phonograms Convention, the Universal Copyright
Convention, and the WIPO Performances and Phonograms Treaty, should also
be respected.
  If a finding of infringement is made under Title 17 Section 501 of United
States Code, arguably the “fair use” exception codified in Section 107 of
the same would be raised as a defence. Arguably the first and fourth
conditions of this defence would not be satisfied by the defendant,
because there has been capitalization on the creator’s work for
“commercial” purposes and the effects “on the potential market for or
value of the copyrighted work” have been negative. YouTube and EBay
however could argue that they have removed infringing content from their
websites pursuant Section 512 of the Digital Millennium Copyright Act. The
main factor that will be considered, in my opinion, is what steps have the
defendants taken to prevent dissemination of copyright-infringing works.
The fact that filtering systems that prevent pirated clips from being
uploaded, as CNET News reports, have already been implemented by some of 
defendants’ competitors, and the defendants’ delayed implementation of
those and reliance on (YouTube) or neglect of (The Pirate Bay) take-down
notices would be, in my opinion, decisive when determining defendants’
liability in the US.
  Hypothetically, if such an action is brought up in our user-friendly
Canada and a finding of infringement under Section 27 of our Copyright Act
is made,  a slightly different defence would be raised. The concept of
fair dealing in Section 29 of CRA is similar to fair use in the US but The
Supreme Court of Canada has given it a broader interpretation in CCH
Canadian Ltd. v. Law Society of Upper Canada at paragraph 48: “…the fair
dealing exception….is a user’s right. In order to maintain the proper
balance between the rights of a copyright owner and users’ interests, it
must not be interpreted restrictively”. The Supreme Court comes up with
six factors, which could be briefly summarized as: the purpose and
commercial nature of the dealing, the character of the dealing, the amount
of the dealing, the availability of alternatives to the dealing, the
nature of the work, and the effects of the dealing on the work. In its
ruling that defendant as a provider of equipment did not amount to
authorization of copyright infringement, the court relies on the alleged
infringer’s access policy, takes into consideration the custom of the
industry, recognizes the big burden placed on the library as an agent to
act as a gatekeeper, and goes as far as require express knowledge of
infringing activities and not mere provision of means for infringement.
  It is my opinion that Canadian courts would distinguish a case in the
audio/video industry from CCH. The commercial nature of the dealing in the
this field substantially departs from the scholarly purposes in CCH; the
amount of the dealing online, sometimes measurable in hundreds of
thousands per work, is not comparable to photocopying; numerous
alternatives to the dealing are available such as purchasing a CD/DVD,
attending a concert, etc; finally, the artists would be deprived of profit
as the industry might not be willing to produce their works once they are
available for free in the public domain.
  I would conclude that such action would likely succeed both in the US and

  1. One Response to “Different jurisdictions- same outcome?”

  2. In her assessment of Prince’s lawsuit, the author misapplied the fair dealing defence discussed in CCH Canadian Ltd. v. Law Society of Upper Canada (CCH). The lawsuit targets distributors of multi-purpose tools used in copyright infringement. The main issue is whether these distributors are liable for infringement when their tools are used by others to abrogate copyright laws. Since there are no allegations of direct infringement by the distributors, the fair dealing defence discussed in CCH is not relevant in Prince’s lawsuit. In CCH, fair dealing was raised as a defence against charges that the defendant’s active duplication and distribution of copyright protected materials infringed copyright law. Unlike the defendant in CCH, these distributors do not own any copyright protected materials nor do they actively reproduce and distribute them.

    Instead, the author should have focused on the court’s analysis of the defendant’s liability when the photocopy machines provided by the defendant were used for copyright infringement by others. Like the photocopy machines, the tools in question can be used for both legitimate and illegal activities without active participation by the distributors. Given the court’s decision in CCH, should Prince initiate action in Canada, a finding of liability against the distributors would require proof that the distributors authorized or sanctioned the illegal activities. There is a presumption that the distributors of multi-purpose tools only authorized legitimate activities. The degree of control exercised by the distributors over the users of their tools will be crucial in rebutting the presumption and establishing liability.

    By kkoh on Nov 29, 2007

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