The Indigo Kills Kids Site Blocking Injunction Case – Update

 

vs.

The interim (temporary short duration) wide ranging site blocking injunction obtained by Indigo Books from Justice Fuhrer of the Federal Court has now been extended to two years following an unopposed hearing on October 22, 2024. This proceeding has been unopposed by any actual defendant and the ISPs have appeared and taken no position. (Nice work if you can get it 😉)  Bell did not even bother to appear.

I recently blogged about the interim injunction decision dated September 17, 2024, which has been reported. For whatever reason, the interlocutory decision dated October 23, 2024 which was rendered right after the one sided follow up hearing, has not been reported.  But here at the two unreported substantive decisions and orders from October 23, 2024, which I have obtained from the Court:

·       ·  Order and Reasons

·  Order

The reasons for the interlocutory decision are based on what appears, with respect, to be a problematic conflation of trademark law with copyright law, and some very dubious precedent. Where a dispute is really about a trademark, copyright law should not be contorted and muddled with trademark law in order to bring about a result that trademark law should not provide.

So sayeth the Supreme Court of Canada in the landmark decision Euro-Excellence Inc. v. Kraft Canada Inc., 2007 SCC 37 (CanLII), [2007] 3 SCR 20, <https://canlii.ca/t/1s72h>. See para. 65 and note how Kraft unsuccessfully used a “copyright action as an “interesting strategy in an effort to thwart Euro-Excellence’s distribution of” the chocolate bars” in order to get around the inevitable failure of trademarks law to address the issue. Kraft tried but utterly failed to rely on copyright in the small “bear” logo that adorns Toblerone chocolate bars. I recall Justice Binnie at the hearing asking whether anyone would buy a Toblerone chocolate bar in order to frame the wrapper and throw away the chocolate, or words to that effect. I made the prevailing arguments in this case at the SCC on behalf of the Retail Council of Canada.

Now, Indigo Books is using the artifice of apparently minimal copyright entitlement in a logo to bring about a result that would not be available under trademarks law. But nobody was there to argue to the contrary.

While there may be little or no credible sympathy for the absent defendants in this case, their absence means that potentially very important legal arguments were not addressed.  For example, the Plaintiff successfully invoked the wrongly decided (IMHO) United Airlines, Inc. v. Cooperstock, 2017 FC 616 (CanLII), [2018] 1 FCR 188, <https://canlii.ca/t/h4jzk> decision. That was a case in which Dr. Cooperstock was self-represented at trial and which likely would have been successfully appealed. However the appeal, which was in the hands of a major law firm, was suddenly discontinued just four days before the hearing under circumstances that I have refrained from mentioning.

Maybe it’s just as well that the interlocutory Indigo Kids  decision is not formally reported. Given that it was unopposed, and that the reasons are respectfully, IMHO, flawed, it is not, with respect, a helpful or persuasive addition to Canadian IP jurisprudence.

Curiously, there’s also a letter request from Indigo’s very experienced lawyer to block from the record the telephone numbers of the counsel involved. This is very unusual. Anybody can google a lawyer’s phone number and work address in a second or two – so what’s the point?

HPK

AI Litigation for the Canadian Nation

(from Kubrick’s visionary 1968 film, 2001: A Space Odyssey. AI is NOT a new concept.)

 There is a massive lawsuit underway against a number of companies comprising “OpenAI” (i.e. ChatGPT) for “misappropriation” of major Canadian news media material. It also alleges breach of ss. 3, 27 and 41 of the Copyright Act with apparently very few material facts or particulars about how these provisions were breached. “Misappropriation” is not a concept recognized by Canadian copyright law, as I explain below. Section 3 of the Copyright Act is the centrepiece of Canada’s complex copyright legislation and contains many separate and distinct provisions, none of which are identified in the Statement of Claim. It also alleges prohibited TPM circumvention, breaching terms of use, and unjust enrichment.

Michael Geist was quick off the mark with a useful analysis of some of the many difficulties that the plaintiffs face in this lawsuit, its international context, and his prediction that this is mainly about getting a settlement and a licensing deal. He followed up with a podcast with Prof. Robert Diab from Thompson Rivers University, who has also written about this case.

Actually, the case for the plaintiffs could be even weaker and more problematic than Michael or Prof. Diab suggest.

The Plaintiffs are “Canada’s leading media companies and news publishers (collectively, the “News Media Companies”)” including CBC and Canadian Press.

It was brought by the same very respected law firm that vigorously defended the concept of fair dealing in the Supreme Court of Canada in the York University case on behalf of Prof. Ariel Katz, as an intervener. Here’s the law firm’s press release.

This mega action was brought in the Superior Court of Ontario, perhaps because the Federal Court might conceivably have been dismissive of a lawsuit predicated primarily on “misappropriation”, which is a tort and a particularly vague one – and NOT a cause of action pursuant to the Copyright Act (see below). Indeed, the Federal Court conceivably might summarily toss any litigation focussed on “misappropriation”. BTW, the Ontario Court of Appeal successfully disentangled the muddling of misappropriation of personality and copyright in the ill-fated Glenn Gould case back in 1998. See Gould Estate v. Stoddart Publishing Co. Ltd., 1998 CanLII 5513 (ON CA), <https://canlii.ca/t/6gw8>

It will be interesting to see who ends up representing  the defendants here – and how the proceedings unfold.  Based on the copyright claims alone, this case could conceivably get bogged down at the outset and, if it ever does get going, for years to come, and perhaps never achieve a positive adjudicated outcome or even a satisfactory settlement from the plaintiffs’ point of view.

It will be interesting to see how the apparent lack of specificity, material facts, and particulars in the pleading and other issues could play out in procedural wrangles that could drag on with motions and discovery for a very long time. Even if the copyright causes of action survive, it is easy to predict that defences could potentially include the concepts of fair dealing, implied right, and simply non-infringement. Once again, as I’ve said, “misappropriation” is not something recognized by Canadian copyright law.

“Misappropriation” is a tort concept – i.e. judge-made common law that establishes liability for such things as negligence, product liability, taking of personality rights, etc. I shall never forget the great Prof. Harry Glasbeek’s impassioned lesson in 1^st year law school at Osgoode about how a Scottish woman was able to successfully sue after finding a dead decomposed snail in a bottle of ginger beer that she had partially consumed. See  Donoghue v Stevenson. That was a landmark of judge made tort law from the English House of Lords in 1932.

Some tort law finds its way into statute. Much of it does not. Canada’s Copyright Act explicitly excludes tort concepts. Copyright lawyers are – or ought to be - aware of the 1979 SCC decision that prominently mentioned the then very young and now the late Hon. Roger Hughes, namely Compo Co. Ltd. v. Blue Crest Music et al., 1979 CanLII 6 (SCC), [1980] 1 SCR 357, <https://canlii.ca/t/1mjth> wherein the great Justice Estey stated:

Mr. Hughes for the respondent in answer to a question from the Bench put it very well when he said that copyright law is neither tort law nor property law in classifi­cation, but is statutory law. It neither cuts across existing rights in property or conduct nor falls between rights and obligations heretofore existing in the common law. Copyright legislation simply creates rights and obligations upon the terms and in the circumstances set out in the statute. This creature of statute has been known to the law of England at least since the days of Queen Anne when the first copyright statute was passed. It does not assist the interpretive analysis to import tort concepts. The legislation speaks for itself and the actions of the appellant must be measured accord­ing to the terms of the statute.

(highlight, emphasis & underline added)

Needless to say, there is also the very important and venerable s. 89 of the Copyright Act:

No copyright, etc., except by statute

89 No person is entitled to copyright otherwise than under and in accordance with this Act or any other Act of Parliament, but nothing in this section shall be construed as abrogating any right or jurisdiction in respect of a breach of trust or confidence.

1997, c. 24, s. 50 (highlight, emphasis & underline added)

See  Reference re Broadcasting Regulatory Policy CRTC 2010-167 and Broadcasting Order CRTC 2010-168, 2012 SCC 68 (CanLII), [2012] 3 SCR 489, <https://canlii.ca/t/fv76k> paras. 81, 82.

The quantum of damages sought is beyond huge – potentially statutory damages of $20,000 for each of the “hundreds of thousands, if not millions, of Owned Works across the Websites” allegedly infringed. Theoretically, that’s in the Billions. Naturally, mega injunctive relief is also sought.

Here is Section 3 of the Copyright Act. Which of these provisions are implicated here and how? The Statement of Claim – in all of its 84 pages – does not tell us:

Copyright in works

3 (1) For the purposes of this Act, copyright, in relation to a work, means the sole right to produce or reproduce the work or any substantial part thereof in any material form whatever, to perform the work or any substantial part thereof in public or, if the work is unpublished, to publish the work or any substantial part thereof, and includes the sole right

(a) to produce, reproduce, perform or publish any translation of the work,

(b) in the case of a dramatic work, to convert it into a novel or other non-dramatic work,

(c) in the case of a novel or other non-dramatic work, or of an artistic work, to convert it into a dramatic work, by way of performance in public or otherwise,

(d) in the case of a literary, dramatic or musical work, to make any sound recording, cinematograph film or other contrivance by means of which the work may be mechanically reproduced or performed,

(e) in the case of any literary, dramatic, musical or artistic work, to reproduce, adapt and publicly present the work as a cinematographic work,

(f) in the case of any literary, dramatic, musical or artistic work, to communicate the work to the public by telecommunication,

(g) to present at a public exhibition, for a purpose other than sale or hire, an artistic work created after June 7, 1988, other than a map, chart or plan,

(h) in the case of a computer program that can be reproduced in the ordinary course of its use, other than by a reproduction during its execution in conjunction with a machine, device or computer, to rent out the computer program,

(i) in the case of a musical work, to rent out a sound recording in which the work is embodied, and

(j) in the case of a work that is in the form of a tangible object, to sell or otherwise transfer ownership of the tangible object, as long as that ownership has never previously been transferred in or outside Canada with the authorization of the copyright owner,

and to authorize any such acts.

BTW, there are also allegations of TPM infringement, breach of contract, and unjust enrichment.

The TPM issue could also be interesting because TPMs are also involved in the Blacklock’s litigation, which is presently in the Federal Court of Appeal and is likely to be finally resolved long before this AI litigation even gets fully off the ground, if ever.

Here’s the Plaintiffs’ law firm’s press release. Here’s some coverage in the NY Times.

There is also a recent lawsuit in BC based by Canlii against Clearway et al. Canlii is the very important free database of Canadian legal decisions. Here’s the Statement of Claim filed in the Supreme Court of British Columbia on November 4, 2024, also from a major law firm.  This also involves AI and the Statement of Claim alleges misappropriation, misuse, conversion, and unjust enrichment. Again, one can expect procedural issues that could last for years to come.

Stay tuned for future developments on these lawsuits. But don’t expect anything conclusive any time soon.

AI is a huge growth industry, for better or worse, and affects virtually every sector. And it is now the centrepiece of lots of litigation in Canada and elsewhere. This is inevitable given the nature of the legal profession. The lawsuits will presumably unfold with much deliberation and will hopefully be well argued by all concerned. This is probably better than some hasty and panicked legislation prompted by political opportunism that could conceivably result in bad cures for misdiagnosed problems.

HPK

Blacklock’s Bombastic Appeal Memorandum

Blacklock’s has filed its Memorandum in its appeal from Justice Roy’s decision earlier this year that meticulously ruled against it holding that :

1. It is hereby declared that, having purchased the only type of subscription

available, which was allowing the acquisition of the password needed to access

articles produced by Blacklock’s Reporter, Parks Canada’s use of the password in

the circumstances of this case constitutes fair dealing under section 29 of the

Copyright Act.

2. It is hereby declared that the licit acquisition and use of a password, if it is

otherwise a technological protection measure, does not constitute the

circumvention of the technological protection measures of the Copyright Act.

3. There is no order as to costs.

(highlight added)

Blacklock’s unusually begins its memorandum with bombastic, histrionic, fulsome, fulminating,  and patently problematic language untethered to the record and unusual (to put it very mildly) in my experience in the Federal Court of Appeal, especially over the signature of experienced counsel:

A Case of David vs Goliath

1.Before addressing the substance of the appeal, this case warrants a brief explanation of the circumstances that form the backdrop of this proceeding. Over the years, the Attorney General of Canada’s (“AGC”) long-standing strategy has been to characterize the Appellant, 1395804 ONTARIO LTD.’s (“Blacklock’s”) (and Mr. Korski) as a vexatious litigant and a copyright troll, with the intention of deflecting the narrative away from the numerous government departments that have knowingly or carelessly violated Blacklock’s copyright and technological protection measure (“TPM”). While at the hearing the Trial Judge was adamant that no credence was to be given to the allegations of copyright trolling, it is clear from the Judgment that the Trial Judge’s perception of Blacklock’s was polluted. Throughout the Judgment, Parks Canada is unduly painted as righteous,1 and Blacklock’s is unnecessarily and inordinately tarred and feathered, including the Trial Judge, without cause, impetuously accusing Mr. Korski (Blacklock’s) of fabricating or tampering with evidence. This is a classic case of David vs Goliath, and despite the evidence and law favouring Blacklock’s, Blacklock’s has been pummeled by years of litigation, and unfair treatment, all because Blacklock’s engages in investigative journalism that that exposes cases of waste and/or mismanagement in government departments..

1 The Trial Judge uses words such as “legitimate”; “valid”; “good faith” in describing Parks Canada, see paragraph 101 of the Judgment as an example (AB Tab 2, p 62).

(highlight, bold, & underline added) 

I will refrain from commenting further on Blacklock’s Memorandum until I see  the Memoranda of the Attorney General (AG) and, presumably, the intervener CIPPIC. BTW, the AG has consented to CIPPIC’s proposed intervention and Blacklock’s has indicated that that it will not oppose CIPPIC’s intervention.

Notably, and despite all the whining, there are no other potential interveners in sight. As I’ve suggested, Justice Roy’s decision is actually good news for major media outlets that have sophisticated websites and password mechanisms.  Here’s my blog from September 4, 2024. As I said then:

So – let us hope that Alexander Gay’s successor in this file in the appeal process does just as vigorous and competent a job as Mr. Gay and, if anything, has fewer restrictions on his brief. And let’s hope that James Plotkin will be there for CIPPIC with as much scope or even more to act as an essential intervener.

As for this appeal, I remind readers once again that I’m retired and not practicing law and that nothing on this blog is legal advice. That said, my personal opinion about this appeal is that Blacklock’s should be careful what it wishes for. A loss in the Federal Court of Appeal could be costly financially and substantively, and I would be very surprised if the SCC were to grant leave to appeal in this case.

 HPK

The Indigo Site Blocking Injunction Case

 

VS.

  Indigo is seeking a site blocking injunction against pro-Palestinian interests over the use of a TM IndigoKillsKids. See Indigo Books & Music Inc. v. John Doe 1 (Indigo Kills Kids), 2024 FC 1465 (CanLII), <https://canlii.ca/t/k73h2>

The preliminary interim injunction may erroneously muddle TM law with some  doubtful Canadian copyright law. As most students learn on Day One of law school or very soon thereafter, “hard cases make bad law”.

While there may be little sympathy for the defendants here, whoever they may be, quaere if the Court should be used to fabricate a remedy arguably not found in Canadian IP law? Moreover, Indigo might wish to be mindful of the proverbial Streisand Effect phenomenon.

This case is on a warp speed docket with the interlocutory injunction hearing returnable Oct. 22, 2024. There is a huge motion record. Any potential interveners may wish to move ASAP. https://www.ippractice.ca/file-browser/?fileno=t-2304-24

HPK

Fictional, Fulsome, and/or False Fulminations Of And About Blacklock’s

Blacklock’s has announced that it will appeal Justice Roy’s decision of May 31, 2024 in 1395804 Ontario Ltd. (Blacklock's Reporter) v. Canada (Attorney General), 2024 FC 829 (CanLII), <https://canlii.ca/t/k4zfr>. See my recent blog about this here. Here is Blacklock’s Notice of Appeal dated August 30, 2024.

This was a very lucid decision about the licit use of a password by a government employee who was just doing her job. The decision carefully balanced the provisions of the Copyright Act dealing with technological protection measures and fair dealing. It must be remembered at all times that, according to no less than the Supreme Court of Canada:

• Fair dealing is a user’s right
• It must be given a large and liberal interpretation
• It is always available

See the Supreme Court of Canada (“SCC”) decision in CCH Canadian Ltd. v. Law Society of Upper Canada, 2004 SCC 13 (CanLII), [2004] 1 SCR 339, <https://canlii.ca/t/1glp0>, which is the Magna Carta of Canadian copyright law.

Apart from the sometimes fictional, fulsome, and even  false fulminations of Blacklock’s and/or its very few supporters, the decision is not controversial and is certainly not “riddled with flaws”. The following respected law firms  and a noted professor have written about it responsibly and  usefully;

• Bereskin & Parr
• Fasken
• Lenzner Slaght
• Markwell Law
• Oyen Wiggs
• Michael Geist

On the other hand, we have seen Barry Sookman’s blog that is riddled with controversial comments and Lorne Gunter’s so called journalism that is unprofessional, unreliable, indefensible, and unworthy even of the  Toronto Sun. We have recently seen Blacklock’s itself has published false information, such as stating that comments by Messrs. Gay and Plotkin (who both were counsel in the Federal Court) were deleted from LinkedIn.

Blacklock’s lost the case in large part because it failed to provide adequate evidence about TPMs generally and its own site in particular and failed to show how Parks Canada allegedly broke the law in the course of its “licit” acquisition of a password and its exercise of its fair dealing rights. The judgment demonstrated how very unsophisticated Blacklock’s website and password mechanism was at the material time. (It still is.)

Copyright owners enjoy certain rights under s. 3 of the Copyright Act. These rights do NOT include:

• The right to read
• The right to link to copyrighted material
• The right to trump users’ fair dealing rights.

For example, the well respected and very opinionated maximalist copyright lawyer Barry Sookman says on the “Terms” provisions for his blog that:

Copies of blog posts may be used for educational instruction and for research, private study, and other educational purposes, as long as the dealings are fair. However, no communications to the public or making available to the public, syndication, republication, or commercial use is permitted without the express written permission of the author of the post. (highlight added)

Barry cannot stop me or anyone else from posting a link to his blog about the Blacklock’s case or from quoting some or even all of it, if appropriate, for fair dealing purposes, if such quotation meets the six factor test set forth by the SCC in the CCH decision. Such an attempt to stop such exercise of user’s rights could be a copyright “make my day” moment  😉

As for the Blacklock’s appeal:

• The grounds of appeal as set forth in the Notice of Appeal dated August 30, 2024 are unusually fulsome and numerous
• The judgment is unusually long and meticulously crafted by a careful judge whose reasons are not easy to appeal successfully – as I know very well firsthand
• The more that Blacklock’s and its acolytes kvetch about this case, the more they are likely to invite unsympathetic interveners (Blacklock’s should learn to spell that term sooner or later. Spoiler alert: it is NOT “intervenor”)
• Blacklock’s has an unblemished lengthy litany of losses in the Federal Court going back to 2016 and it didn’t even try to appeal Justice Barnes devastating decision in the Department of Finance case 1395804 Ontario Ltd. v. Canada (Attorney General), 2016 FC 1255 (CanLII), [2017] 2 FCR 256, <https://canlii.ca/t/gvrbx>, apart from a notably unsuccessful https://excesscopyright.blogspot.com/2016/12/blacklocks-must-pay-65000-for.htmlattempt to appeal the costs order
• The established and reputable mainstream media are not likely to be onside with Blacklock’s. Such organizations have sophisticated websites that make password sharing difficult if not impossible and use paywalls carefully and strategically, realizing that some copying and sharing can actually be good for business. Some, such as the NY Times and Washington Post,  even encourage such password free content sharing of whole articles with “gift” copies of otherwise paywalled articles. I know this because I subscribe to both of these admirable sites
• It will be interesting to see if the library, educational, research, consulting, or other user-friendly sectors weigh in here as interveners in favour of upholding Justice Roy’s decision. 

Blacklock’s, true to form, has tried to attack its critics, such as myself. More seriously, it has tried to attack opposing counsel, such as Alexander Kaufman, counsel in the Finance case (he has since become an Ontario Superior Court Judge), Sarah Sherhols,  and more recently Alexander Gay who had carriage of this case for the Attorney General of Canada (“AGC”). Such attacks – including on Mr. Gay’s weight (See some Blacklock’s DMs below) - are unworthy of any so-called journalist in Canada, where Trump style tactics are not acceptable.

Alexander Gay was, but no longer is,  the AGC counsel in the Federal Court case that is now under appeal. He has since moved on to much bigger targets at the Competition Bureau. He did an outstanding job as AGC counsel, even though it was apparent that the Government had tied his hands to some extent and apparently forced him to pull his punches on some key TPM related arguments. This is what Government bureaucrats sometimes do in copyright files – especially those at Heritage Canada and its predecessor the Department of Communications where I have seen this first hand. This is unfortunate and short sighted – it’s best to let good lawyers be good lawyers and not limit their ammunition or strategy. Hopefully, the AGC will not attempt to tie the hands of Mr. Gay’s successor on the file. Any such attempt may well attract notice – from me and potentially others who care about justice, the rule of law, and good policy. If the bureaucrats don’t like the legislation, they should try convince their minister to attempt to amend it. That is how things are done – or should be done. BTW, previous ministers or wannabe ministers who have attempted to controversially amend the Copyright Act have found such attempts to be career limiting. Ask Sheila Copps or Sarmite Bulte. And taking stupid policy viewpoints at the behest of ingratiating lobbyists sometimes does not end well even for bureaucrats – and can indeed end very badly.

Fortunately in this case, CIPPIC stepped in to intervene and was ably represented by James Plotkin. Mr. Plotkin did his job in the true spirit of vigorous and uncompromised  advocacy and service to the courts in the great tradition of the late Gordon F. Henderson. Mr. Plotkin did so admirably and pro bono to the great credit of Gowlings. I knew Gordon quite well in his last years and I’m confident he would have been proud and is now smiling down on this file and James’ & Gowlings’ contribution.

So – let us hope that Alexander Gay’s successor in this file in the appeal process does just as vigorous and competent a job as Mr. Gay and, if anything, has fewer restrictions on his brief. And let’s hope that James Plotkin will be there for CIPPIC with as much scope or even more to act as an essential intervener.

As for this appeal, I remind readers once again that I’m retired and not practicing law and that nothing on this blog is legal advice. That said, my personal opinion about this appeal is that Blacklock’s should be careful what it wishes for. A loss in the Federal Court of Appeal could be costly financially and substantively, and I would be very surprised if the SCC were to grant leave to appeal in this case.

HPK

***

PS – FYI, here are just some of the many unsolicited DMs I have received from Blacklock’s over the last three years. I have not responded. (highlight added)

 

Hi Howard, only blocked you with comment to make sure those MPs, Senators and Leaders’ Offices who pay for our work and follow my personal twitter account are reminded there’s a serious problem in the Justice Dept that needs to be sorted out. It worked. So, thank you for the “black eye” description, its violent tone had the desired effect on legislators. In the meantime, there are still years ahead in this litigation. I realize age is a factor so I hope your health holds out. We are working this Labour Day. What would you expect? Tenacious like nobody you’ve ever met. — Holly Doan

Sep 6, 2021, 7:34 AM

 

Hey Howard, How are you and Chubby Sleeves @alexandermgay and @mgeist doing?? We fucking love this ruling. See the reaction? Could not have asked for more. Conservative MPs reaching out DM, what do we do with this??? Me, I say do whatever you like, but Blacklock’s work continues with even greater vigour. I love accountability journalism so much!

Jun 3, 2024, 6:14 PM

 

I wonder - do you know Howard - did DOJ think that winning the right to read while withholding license would starve Blacklock’s? If so, then nobody wins. We lean in harder, subscriptions continue, and independent accountability journalism wins. So much money wasted, and nothing changes, right? Then the Conservatives take power and ask Blacklock’s opinion on how to tighten fair dealing. Holly Doan and John Degen on speed dial. Congratulations freeloaders! Does Alex have a plan for his career before the government changes?

Jun 13, 2024, 11:16 PM

 

Loved your blog BTW. Might quote it in the future. Certainly will publish that chubby sleeves photo. It’s gold! Blacklock’s revenues up 14% over last June. Legal bills paid and ready for another great decade of accountability journalism! To be sure, it’ll be different under a new administration.

Jun 28, 2024, 1:38 PM

From September 4, 2024:

Sir John A loved to quote Mark Twain: “Never argue with someone who buys ink by the barrel.”

We have always appreciated your usefulness in passing on messages to the highly emotional Alex Gay. With thanks, 🙏🏻

We have always appreciated your usefulness in passing on messages to the highly emotional Alex Gay. With thanks, 🙏🏻

In fact, just remembering, Mr Gay admitted once in a CM conference to his emotional nature. That’s what Andrew Gibb was brought on. Very wise of DOJ to take Alex off the case, no?

You there, Howard? You’re so bold in blogs but never reply. Would love to chat. We’re in the Glebe, where are you?

…

So, coffee?

 ***

Update re Blacklock’s Lengthy Litany of Losses: What Lies Ahead Following Justice Roy’s Lucid Decision about Licit Behaviour

On June 3, 2024 Barry Sookman promised via a Tweet that he would provide  a blog about the Federal Court’s Blacklock’s Reporter (“BR”)  decision of May 31, 2024 – which he said was “riddled with flaws”. On August 7, 2024 he followed up with this fulsome blog of some 17 pages in small print PDF. Readers who are connoisseurs of English language ambiguities and legal scholarship may wish to refresh their legal  linguistic lexicon by reminding themselves of the various meanings of “fulsome” and considering which one or more apply in this case.

Barry and I have appeared on opposite sides of the aisle in the Supreme Court of Canada twice. I was on the prevailing side both times.

I have lost interest in any extra-judicial or unmoderated social media or blog debate with him, after our “kerfuffle” from a dozen years ago where I, Ariel Katz,  and Bill Patry confronted him and his colleague Daniel Glover about how they “misstated” the state of American fair use law to the Supreme Court of Canada in the 2012 Alberta case, in which Barry, Daniel, Ariel & I were all  involved. Thankfully the Court wisely paid no attention in its reasons to that aspect of their submission and their side lost. I might also mention some battling blogs and live conference exchanges that Barry and I had back in 2014 concerning the Copyright Board’s waste of resources over its “unlocatable” owner mandate. Frankly, I don’t wish to engage in any sequel to those episodes. Accordingly, my comments now will be short and, hopefully, far from fulsome in any sense.

Barry’s argument is, overall, arguably a “straw man” argument.  He says:

You might think after reading the decision that

•        it decided or correctly decided that: a person can buy a single subscription to a news service and rely on fair dealing to copy and distribute articles to any interested readers to avoid paying for a bulk or organizational license and paying the usual price;
•        an online subscription service which makes reasonable efforts to bring online license terms to the attention of subscribers (including sophisticated subscribers) cannot enforce those terms unless the specific license terms are brought to the subscribers’ attention during the contracting process; fair dealing is a defense to the violation of the Copyright Act’s prohibition on circumventing TPMs;
•        fair dealing trumps the Act’s anti-circumvention prohibition; and
•        a person who buys a subscription to a news service can copy and distribute copies of articles along with passwords to enable others to unlock the articles without any person being liable for violating the Act’s legal protection of TPMs.

But, that is NOT what Justice Roy ruled. Here are some of the key extracts of what Justice Roy actually said in his decision:

[119] As a result, the issue must be circumscribed to the limited evidence brought forward by the parties. Hence, it has been established to the Court’s satisfaction that Parks Canada purchased the only type of subscription made available by Blacklock’s Reporter. That subscription gave Parks Canada access to a password which was used to gain access to some articles published by BR which concerned Parks Canada’s mandate and operations. The evidence does not establish if the sharing required to conduct the research undertaken by Parks Canada in its monitoring of articles was done by sharing the password, sharing copies of articles through e-mails or in paper format. There appears, however, to be common ground that there was some sharing of the password. The Court is satisfied that the use made of the articles accessed through the validly obtained password constituted, on the facts in this record, fair dealing according to section 29 of the Act. Fundamentally, Parks Canada did not circumvent what is presented as an effective TPM. It used the password licitly obtained for the purpose for which it was created: gaining access to articles located on a website. Once the articles were obtained, they were used in a manner consistent with recognized fair dealing.

[120] In fairness, BR was essentially reacting to the arguments put forth by CIPPIC. It remains, however, that its counter arguments were suffused with various concepts that were not defined or do not find support in our law. Thus, repeatedly BR referred to a “paywall” being circumvented. The paywall is equated with a TPM that is circumvented because the paywall is meant to “prevent access without an authorized username and a password” (Blacklock’s Reporter’s response to CIPPIC memorandum of fact and law, para 31; see also para 42). First, “paywall” is not defined. Second, it would appear doubtful that a paywall is strictly speaking a TPM, as stated at paragraph 31. That conflates the means and the end. Rather the TPM used is the means to the end, which may be a so-called “paywall” or something else. It is the technology, device or component created that results in a paywall. In other words, the TPM exists for a purpose, but it is only the means to satisfy a purpose that may be a paywall. It is the means that is not to be circumvented whether that be technology, device or component. Barnes J in the Department of Finance case said that “(t)he suggestion that Blacklock’s business model cannot survive in the face of the minor and discrete use that took place here is essentially an admission that the market places little value on Blacklock’s work-product … It also goes without saying that whatever business model Blacklock’s employs it is always subject to the fair dealing rights of third parties” (para 45). I certainly share that view. A paywall may be the result of some technology, device or component, but it is not the technology, device or component. The paywall is not the TPM. It protects against unauthorized intrusions and is part of a business model. That protection is not jeopardized by Parks Canada purchasing a subscription for the purpose of research constituting fair dealing. In the case at bar, there is no circumvention of a TPM simply because the password was not circumvented: it was properly obtained and used for a legitimate purpose.

[125] CIPPIC’s submissions were more fulsome. Fundamentally, it argues that the TPM provisions do not apply to restrain fair dealing; using a validly obtained password to access content is not circumvention. I agree. I would add nonetheless that how the password was obtained is significant as this may prevent a user from invoking the fair dealing provisions of the Act. Obtaining content by descrambling a signal or decrypting a communication may render invoking fair dealing very difficult to establish successfully. It is telling in my view that s 41.11(1) of the Act provides for an explicit exception for law enforcement and national security against liability for circumvention. But this is not the case before this Court. Our case is much more straightforward in my estimation and it is limited to a very narrow scenario.

JUDGMENT in T-1862-15

THIS COURT’S JUDGMENT is the following:

1.     It is hereby declared that, having purchased the only type of subscription available, which was allowing the acquisition of the password needed to access articles produced by Blacklock’s Reporter, Parks Canada’s use of the password in the circumstances of this case constitutes fair dealing under section 29 of the Copyright Act.

2.     It is hereby declared that the licit acquisition and use of a password, if it is otherwise a technological protection measure, does not constitute the circumvention of the technological protection measures of the Copyright Act.

3.     There is no order as to costs.

(highlight and emphasis added)

BTW, BR got a big break with the costs order, based upon the Attorney General of Canada’s (“AGC’s”) lack of success on the relatively minor and non-essential issue of “rectification”, which was a small part of the case. When BR lost the earlier Finance case before Justice Barnes, it got nailed for costs of $65,000 in the Federal Court and $3,500 in the Federal Court of Appeal.

BTW, Barry refers several times to the 2016 decision of Justice Barnes in the Department of Finance case which Barry says was “wrongly decided” but which was NOT appealed – other than the very unsuccessful appeal on costs.  Barry also refers several times to BR’s one tiny victory – namely the Small Claims Court “Vintners” decision. But, as any law student should know, small claims court decisions have ZERO precedential value in the Federal Court. Barry also refers to the notorious Nintendo decision, which was cut and pasted from the Plaintiff’s memorandum when the law firm representing the Defendant (the same one now acting for Blacklock’s) settled the case and did not, although entitled, reply and make final written submissions. Indeed, the Respondent’s counsel did not appear for the final oral argument.

Followers of Federal Court decisions will know that Justice Roy is very thorough, very decisive, and very solid in his rulings. Believe me, I know – having been counsel on the losing end of one of them. This one took him almost a year – which means he was exceptionally careful and deliberate. If any of it can be accurately characterized as “obiter dicta”,  so be it. Carefully crafted obiter dicta can be very instructive to careful and conscientious counsel and their clients and should not be ignored, especially in important and closely watched cases.

Anyway, I have blogged fulsomely about BR over the years. But don’t take only my word about the latest decision in its litany of losses. Here are some other takes from notable sources about Justice Roy’s BR ruling:

•        Bereskin & Parr
•        Fasken
•        Lenzner Slaght
•        Markwell Law
•        Hugh Stephens
•        Michael Geist

What lies ahead? BTW, Justice Roy refers many times to the lack of adequate evidence from BR about the technological aspects of its case re TPMs. Needless to say, it is far too late in the day to fill that gap.

We shall get some clue on August 19, 2024 when BR will “provide the Court with a status update regarding a possible appeal of the said Judgment, as well as any discontinuances to be filed." Just why BR agreed to do this by August 19, 2024 is unclear, since its deadline to actually file a Notice of Appeal from Justice Roy’s judgment isn’t until September 3, 2024 by my calculation.

FWIW, I would frankly be surprised, but not shocked, if BR actually does appeal. As I have  said, it refrained from appealing the substantive aspect of Justice Barnes very important decision and instead only appealed – and very unsuccessfully – the costs order.

An unsuccessful trip to the Federal Court of Appeal (“FCA”) could be very costly in terms of  legal costs to BR’s lawyer and to a lesser extent to the AGC.

Above all, an unsuccessful appeal would reinforce Justice Roy’s decision, which nobody, as far as I know, except Blacklock’s and Barry have suggested is wrong in any reviewable way. It must be remembered that, in any appeal here, fact finding will be reviewed only for “palpable and overriding errors” and extricable or self standing rulings on the law will be reviewed for correctness. See Housen v. Nickolaisen 2002 SCC 33. Obiter dicta is not reviewable. If BR decides to appeal to the FCA and loses, it’s very hard to conceive of why the Supreme Court of Canada would grant leave to appeal in this case. And if it gets that far and the Supreme Court actually does take the case, there’s an old adage about “be careful what you wish for…”

In any event, stay tuned. We may know more after August 19, 2024.

HPK

PS: August 22, 2024 

Blacklock's counsel advised the Court on August 13, 2024 that:

In accordance with the Direction of the Court dated July 29, 2024, Blacklock’s can advise that it will be filing an appeal of the May 31, 2024 Judgment of the Honourable Justice Roy in the Parks Canada action (T-1862-15). As such, Blacklock’s position is it is pre-mature to file any discontinuances at this time. 

This appears to have been posted only on August 19, 2024. 

Potential interveners, as well as several government departments and agencies that have related matters pending, may be interested. The deadline for Blacklock's to file its Notice of Appeal appears to be September 3, 2024.

Blacklock’s Botched Blaming & Begging

Blacklock’s Holly Doan has posted a rather hysterical, histrionic, inaccurate, and misleading post that, among other things, misrepresents Prof. Michael Geist’s blog. This Blacklock’s bravura is telling – if for no other reason than its failing to suggest ANY credible ground of appeal of this heavily fact-based and legally solid decision. Once again, here’s the judgment:

1395804 Ontario Ltd. (Blacklock's Reporter) v. Canada (Attorney General), 2024 FC 829 (CanLII), <https://canlii.ca/t/k4zfr>

Not to be outdone, Ms. Doan’s husband, Tom Korski, appears in a sadly softball podcast interview.

Blacklock’s has kindly provided both of these for public consumption without a paywall:

https://www.blacklocks.ca/this-will-be-law-september-1/#cdnpoli

https://x.com/mindingottawa/status/1801211869656449445

Both of them misstate the careful findings of fact and law by Justice Roy, whose exemplary judgment deals with the use of “licitly” acquired passwords and fair dealing.

Those entities with competently designed websites with “effective” TPMs who understand basic copyright law have nothing to fear from this judgment. Indeed, they should welcome it because it reminds everyone that illicit hacking of a password or content sharing that is not fair dealing can lead to big trouble. The manner in which the work is obtained will go to the fair dealing analysis, but does not necessarily preclude fair dealing.

After all these years and its long litany of litigation losses, Blacklock’s still offers only an individual membership level online. Indeed, its botched business model seems to be that of selling single subscriptions to government departments, posting “inaccurate, deceptive or inflammatory articles”, and then using ATIPs to identify and pursue what it considers to be illegal sharing of passwords and/or content.

If Blacklock’s wants to fundraise off a devastating loss (which is a Donald Trump trick), then Blacklock’s should not mislead potential sympathizers, if there are any. This is clearly unlikely to attract small donors who might otherwise contribute to save endangered elephants or support other meritorious causes. The big players may predictably conclude that any appeal would likely fail and thus simply reinforce Justice Roy’s decision, which in any event is actually helpful to them. Moreover, the SCC is very unlikely to take this case if leave is somehow sought because the SCC doesn’t review fact finding or rewrite statutes. In this case, the statute is what it is and what it has been for the last 12 years re TPMs and the last 100+ years re fair dealing – including several notable decisions since the landmark 2004 CCH decision. Moreover, Blacklock’s Hail Mary fantasy of a legislative fix is extremely unlikely to happen. Both Liberal and Conservative governments have known for decades that controversial copyright revision is not a hill to die on and can indeed be fatal to the careers of whichever politicians lead the charge.

It should be said that the Department of Justice ought to be very pleased with the result of this litigation and the work done by Alexander Gay, General Counsel. Likewise, CIPPIC and Gowlings with respect to its partner James Plotkin’s exemplary intervention.

BTW, where’s @bsookman’s belated Blacklock’s blog?

HPK