Republican Party Issues and Takes Down a Copyright Study Document

This blog studiously avoid partisan politics, which is normally fairly easy to do since IP law normally has not been a particularly partisan issue. However, there are signs that political parties may be taking on this issue in a political way.

The role of the purpose built Pirate Party in Europe is well known. It now has several MEPs and it played a major role in the defeat of ACTA in the EU.

The US Republican party has just issued – but within 24 hours retracted – a policy study document entitled Three Myths about Copyright Law and Where to Start to Fix it that reflects a clearly laissez-faire and even libertarian viewpoint, as one might expect from some policy thinkers in the conservative camp. For example:

Copyright violates nearly every tenet of laissez faire capitalism.  Under the current system of copyright, producers of content are entitled to a guaranteed, government instituted, government subsidized content-monopoly.

However, it appears that lobbyists lost no time in convincing the GOP to retract this document and do a "take down". Because of this instant volte face, it is now virtually certain that this discussion document will receive far more attention than it ever would have if it had been left alone to serve its purpose – which was that of discussion – along with many other documents at Republican Study Committee website.

HPK

PS - just over three years ago I had a very civilized debate with Richard Owens at a Canadian Constitution Foundation conference.  Without getting political myself, I tried to look at copyright issues through the CCF lens, i.e. how a "libertarian" might think about these issues. Here's my blog about it, which contains a video of the presentations of both Richard and I.

It's clear that conservative and, especially libertarian and "freedom" oriented conservatives are finally starting to question copyright law as a contradiction, when taken too far, of their core values.

Canada Set to Endorse the Concept of a WIPO Treaty for the Blind

 

 All rights reserved by World Intellectual Property Organization (WIPO)

During a meeting with stakeholders convened by Industry Canada on November 16, 2012 concerning the forthcoming Standing Committee on Copyright and Related Rights (SCCR/25) meeting in Geneva November 19 to 23, 2012,  participants received some welcome news.

In response to a specific question that I asked, it was confirmed that Canada will endorse the concept that there should be a treaty for the visually impaired, i.e. the “blind”. A treaty, of course, will in principle be more effective amongst those countries that ratify or accede to it than a "soft law" declaration or other type of document that could be little more than a politically correct gesture. The USA has been ambivalent and has vacillated on this issue. The EU has opposed a treaty. Naturally, Canada’s ultimate support will depend on the content of a treaty – but the important breakthrough is that Canada will endorse the goal of getting one.

This is also, hopefully, a sign that Canada will begin to reclaim its profile, independence and influence in WIPO, all of which has been in decline for many years and for many reasons. Canada needs to be a credible player in all international fora dealing with IP, and WIPO is the oldest, largest and most specialized. Canada may have less economic and political clout on the international stage than the USA, EU, and certain other countries. But Canada is still a G8 country and one that can make a very constructive contribution both in its own interest and for the general betterment of many around the world, including the blind, those who are in developing countries, and those who are in countries that might wish to reclaim their IP sovereignty. There are other signs elsewhere that Canada is beginning to participate more actively on the international stage, where it was once a very influential honest broker with positive results for itself and the rest of the world.

Canada has much to be proud of by way of example. In 2012 alone, Canada has seen new copyright legislation (Bill C-11)  that has some excellent and exemplary aspects and the magnificent landmark "pentalogy" from the Supreme Court of Canada. There is immense interest in these developments in other countries. Naturally, the Canadian delegation should proudly put these developments on the record at WIPO, which will help the cause of better legislation and jurisprudence elsewhere. We shall look forward to seeing appropriate reference and explanation of these milestones reflected in the Report from the WIPO meeting in due course.

And hopefully, by standing up and being counted in plenary meetings as well as in the corridors, Canada will help move the USA, EU and other power players to do the right thing for the blind.

It is intolerable that efforts are being made by some content owners, collectives and even countries, in this digital age, to hinder rather than to promote, the wonderful new possibilities of access to knowledge and culture. The blind have to struggle and invariably do so with great dignity to do so many things that sighted persons take for granted. The world should do its best to enable and empower them with new technology and helpful legal regimes.

HPK

Rogers et al to Copyright Board Too re Ringtones: We Want Our Money Back

Yesterday, I blogged about the lawsuit started by Rogers et al against SOCAN in the Federal Court to get their ringtones money back. It turns out that there’s been an ongoing parallel proceeding underway at the Copyright Board.

Here is the Rogers et al  Application dated August 1, 2012 to the Board to Vary the Board’s August 18, 2006 and June 29, 2012 Ringtones decisions.

Here is the Board’s Order dated August 10, 2012.

Here’s is SOCAN’s Response dated September 10, 2012

There are too many other documents to post at this time and the above documents present the flavour of the proceedings.

A number of important issues are raised such as the Board’s jurisdiction, res judicata, the impact of the new “making available” right, etc.

It remains to be seen how and when each of these two proceedings (the Court and the Board) will play out, and how and when they may impact on each other and what may happen later on in the Federal Court of Appeal.

With $15 million on the table, one can expect that this may take some time to determine. 

HPK

Updated - Pfizer Seeks Amendment or Re-hearing of Supreme Court of Canada's Viagra Judgment

In the Teva v. Pfizer (“Viagra”) case, the Supreme Court of Canada on November 8, 2012 rendered a 7/0 judgment  that concluded as follows:

H. Remedy

[81] I have reached the conclusion that Patent ’446 does not comply with s. 27(3) of the Act. What is the appropriate remedy?

[82] The remedy for inadequate disclosure was stated by this Court in Pioneer Hi-Bred:

Canadian courts have stated in a number of cases the test to be applied in determining whether disclosure is complete. The applicant must disclose everything that is essential for the invention to function properly. To be complete, it must meet two conditions: it must describe the invention and define the way it is produced or built [citation omitted]. The applicant must define the nature of the invention and describe how it is put into operation. A failure to meet the first condition would invalidate the application for ambiguity, while a failure to meet the second invalidates it for insufficiency. The description must be such as to enable a person skilled in the art or the field of the invention to produce it using only the instructions contained in the disclosure . . . . [Emphasis added; citation omitted; pp. 1637-38.]

[83] In the case at bar, Patent ’446 is insufficient, because a skilled reader having only the specification would not be able to put the invention into operation. Therefore, Patent ’446 is invalid.

[84] Although s. 27 does not specify a remedy for insufficient disclosure, the logical consequence of a failure to properly disclose the invention and how it works would be to deem the patent in question invalid. This flows from the quid pro quo principle underpinning the Act. If there is no quid — proper disclosure — then there can be no quo — exclusive monopoly rights.

[85] Pfizer, however, appears to argue that the patent cannot be deemed invalid, because Teva did not argue that s. 53 applies (R.F., at para. 82). Section 53 specifically states that a patent will be void if

any material allegation in the petition of the applicant in respect of the patent is untrue, or if the specification and drawings contain more or less than is necessary for obtaining the end for which they purport to be made, and the omission or addition is wilfully made for the purpose of misleading.

[86] Pfizer submits that Teva’s argument about “concealment” of the useful compound in the patent is a thinly veiled accusation of fraud, but that Teva has never alleged that Patent ’446 contravenes s. 53 (R.F., at para. 79). Further, Pfizer states that, “s. 27(3) . . . [was never] intended to address an allegation of deliberate deception” (R.F., at para. 80).

[87] There is a very simple response to Pfizer’s submissions on this point. Even if s. 53 was not raised and its requirements were not met, this does not mean that the disclosure was adequate for the purposes of s. 27(3). These provisions can be independent of each other, as is the case here. Although wilful intent to mislead has not been alleged or proven in this case, insufficient disclosure has been alleged and I have found that it has been made out. Therefore, in light of the remedy adopted in Pioneer Hi-Bred, Patent ’446 is invalid.

I. Other Submissions

[88] Pfizer and the intervener Canada’s Research-Based Pharmaceutical Companies argue that Teva’s submissions are incompatible with Canada’s international obligations, and more specifically with the Patent Cooperation Treaty, Can. T.S. 1990 No. 22, incorporated into Canadian law by the Intellectual Property Improvement Act, S.C. 1993, c. 15, s. 29(1). The essence of this argument is that Teva is advocating for an enhanced disclosure requirement which, Pfizer and the intervener says, is contrary to Canada’s obligations under the Treaty.

[89] There is no need to address this argument at length. Since, as I have already explained, this is not a case about sound prediction, the Court does not need to consider whether a claim of utility that is based on sound prediction would impose an “enhanced” disclosure obligation on the patentee or whether such an “enhanced” disclosure obligation — if one existed — would be contrary to the Treaty. Neither the parties nor the interveners argue that the disclosure requirements of s. 27(3) violate any international obligations. The only issue in this case is whether the disclosure requirements set out in s. 27 of the Act were met. This argument must therefore fail.

[90] Finally, I will note that the delay of 13 years between the filing of the patent and Teva’s challenge is inconsequential. As Nadon J.A. found in the reasons of the Federal Court of Appeal in this case, the relevant question is whether the disclosure was sufficient as of the date of filing. Consequently, the passage of time does not bar Teva’s challenge.

V. Conclusion

[91] I would therefore allow the appeal with costs and hold that Patent 2,163,446 is void.

Pfizer has filed a motion seeking to amend the judgment, or alternatively for a re-hearing by the Supreme Court of Canada on the basis, inter alia, that:

This Court accidentally granted a remedy in this appeal that exceeds its jurisdiction. In holding that Pfizer’s 446 Patent was invalid and void, this Court overlooked the legislative context in which the proceeding was brought, and that this Court did not have jurisdiction to issue a judgment invalidating Pfizer’s 446 Patent or declaring it void.

The Supreme Court Rules do provide for the possibility of amending a judgment or a re-hearing. I am unaware of any IP decision where there has been a re-hearing pursuant to Rule 76.  According to Henry Brown’s authoritative text on Supreme Court of Canada Practice, “Motions to amend under rule 81 may only be made to correct minor technical slips or errors in the judgment or pronouncement”.

Here is Pfizer’s Notice of Motion and Factum in support of the motion.

HPK 

PS - in  a dramatic but predictable development, Justice Zinn in the Federal Court has just followed the SCC's ruling on the invalidity of the patent and went on to hold that:

[32] I reject the submission of Pfizer that the question of the sufficiency of disclosure in Teva was a mixed question of fact and law. I agree with Apotex that in Teva the sufficiency of the disclosure of the ‘446 Patent turned on three questions of law: (1) the determination of the invention or inventive concept of the patent, (2) the construction of the ‘446 Patent, and (3)
whether the ‘446 Patent, properly construed, permitted the person of skill in the art “to make the same successful use of the invention as the inventor could at the time of his application.”[33] The determinations made by the Supreme Court on those three questions of law are binding on this Court. Its finding that Pfizer, in failing to disclose which of the many compounds named in the ‘446 Patent was effective in treating erectile dysfunction, had not properly or sufficiently disclosed its invention, is a finding that this Court must respect and follow. As a consequence, when, as here, the action seeks a declaration of the invalidity of the ‘446 Patent for insufficient disclosure, there can be no genuine issue for trial because no result is possible other than a finding that the ‘446 Patent is invalid. Accordingly, Apotex is entitled to summary judgment. 

 HT to Alan Macek - whose excellent blog IPPractice is a must.

Rogers, Bell, Telus & Quebecor to SOCAN: We Want Our Ringtones Money Back

Rogers, Telus, Bell and Quebecor have started what will surely be a very interesting lawsuit in the Federal Court seeking the return of $15 million dollars paid to SOCAN since 2006 on account of the certified Ringtones Tariff that was upheld by the Federal Court of Appeal.

However, the Supreme Court of Canada ruled on July 12, 2012  in the ESAC v. SOCAN case that the delivery of  a file over the internet in the case of a downloaded video game did not constitute “communication” of that file and that the Copyright Board was wrong to establish a layered tariff scheme that required multiple payments for the same transaction and was inconsistent with the principle of technological neutrality and the goal of efficiency that the collective system is intended to promote.

The phone providers are asking for their money back, a declaration that the transmission of a ringtone is not a communication to the public by telecommunication, and, in the alternative, that Tariff 24 “constitutes a jurisdictional violation of and is ultra vires the Copyright Act.”

Here’s the Statement of Claim. Despite its brevity, it raises some very important issues and could have far reaching effects if the litigation is successful.

HPK

PS - The same reasoning regarding downloads of music files for songs and albums (though not streaming) was applied by the SCC in the Rogers v. SOCAN case also decided on July 12, 2012. I don't know what is happening with any money that may have been paid to SOCAN on account of this activity before July 12, 2012.

MicroSD Cards Exclusion Regulations Published in Canada Gazette Part II

The microSD exclusion regulations have been published today, November 7, 2012 in the Canada Gazette Part II.

Congratulations to my client, the Retail Council of Canada, who sought this regulation and stated in a press release:

We thank the federal government for acting so quickly to protect Canadians from an unreasonable tariff imposed on these cards" said Brisebois. "This action, which is consistent with the government's approach to the digital economy, will save Canadians money and protect consumers from paying a ridiculous tax.

Here's the regulation.

***

Registration

SOR/2012-226 October 18, 2012

COPYRIGHT ACT

MicroSD Cards Exclusion Regulations (Copyright Act)

P.C. 2012-1370 October 18, 2012

His Excellency the Governor General in Council, on the recommendation of the Minister of Industry, pursuant to sections 79 (see footnote a) and 87 (see footnote b) of the Copyright Act (see footnote c), makes the annexed MicroSD Cards Exclusion Regulations (Copyright Act).

MICROSD CARDS EXCLUSION REGULATIONS (COPYRIGHT ACT)

MICROSD CARDS

1. Memory cards in microSD form factor, including microSD, microSDHC and microSDXC cards, are excluded from the definition “audio recording medium” in section 79 of the Copyright Act.

COMING INTO FORCE

2. These Regulations come into force on the day on which they are registered.

REGULATORY IMPACT ANALYSIS STATEMENT

(This statement is not part of the Regulations.)

Background

The private copying regime (Part VIII of the Copyright Act, sections 79–88) is a legislative framework that aims to remunerate rights holders for the private copying of sound recordings by individuals onto a “blank audio recording medium.” This is accomplished by placing levies on blank audio recording media that are “ordinarily used by individual consumers” for the private copying of music.

The question of whether a medium is an eligible blank audio recording medium and the amount of the levy for the importation or manufacture of that medium are determined by the Copyright Board of Canada. However, any audio recording medium may be exempted from the private copying regime by regulation.

Issues and objectives

A proposal has been filed with the Copyright Board of Canada seeking a levy on microSD cards. Such a levy would increase the costs to manufacturers and importers of these cards, resulting in these costs indirectly being passed on to retailers and consumers.

As a result, the cost of all technologies that use or require microSD cards, such as smartphones, is likely to be affected, thereby negatively impacting e-commerce businesses and Canada’s participation in the digital economy.

The objectives of these Regulations are to

• support the Government of Canada’s commitment to promoting a digital economy that encourages the development and early adoption of new technologies; and
• avoid an additional cost on the manufacture or importation of microSD cards, which are commonly used in smartphones and other technologies that drive the digital economy.

Description

The MicroSD Cards Exclusion Regulations (Copyright Act) exclude microSD cards (the technical standards of which are set by the SD Association) from the definition of “audio recording medium” for the purposes of the private copying regime, meaning that no tariff can be certified for their importation or manufacture.

Consultation

On July 3, 2012, the Minister of Industry announced the Government’s intention to exempt microSD cards from the application of the private copying regime. The Retail Council of Canada (RCC) welcomed this announcement, while the Canadian Private Copying Collective (CPCC) criticized it. The positions of both organizations were known in advance of the July 3 announcement.

The RCC is an association that represents retail merchants. It previously joined other business associations in a letter sent to the ministers of Industry and Canadian Heritage requesting that the Government exempt electronic memory cards from the private copying levy. The letter was co-signed by the Canadian Chamber of Commerce, the Canadian Federation of Independent Business, Canadian Wireless Telecommunications, Electro-Federation Canada, Hewlett-Packard (Canada) Co., Intel Corporation, the Information Technology Association of Canada, LG Electronics Canada, Inc., Microsoft Canada Inc., Nokia Products Limited, Panasonic Canada Inc., Research in Motion, SanDisk Corporation, SaskTel, Telus Communications Company, and ZTE Canada.

The CPCC is a non-profit organization that administers and collects the private copying levies and distributes the money to rights holders. The CPCC previously sent a letter to the ministers of Industry and Canadian Heritage objecting to any potential regulation to exempt microSD cards from the private copying regime.

No further consultations were undertaken.

“One-for-One” Rule

The “One-for-One” Rule does not apply to this proposal, as there is no change in administrative costs to business.

Small business lens

The small business lens does not apply to this proposal, as there are no costs to small businesses.

Rationale

Digital technologies are ubiquitous and are increasingly being integrated into our economy and society. These technologies enable businesses to be innovative and productive, help governments to provide services, and allow citizens to interact and to transmit and share information and knowledge. As a component in some of these technologies, microSD cards play a role in the devices that drive the digital economy.

An increase in the cost of digital technologies acts as a barrier to access and full participation in the digital economy, as higher costs may discourage the adoption of new technologies by businesses and consumers. These Regulations seek to promote the digital economy by ensuring that no new costs will be added to microSD cards and to associated digital technologies that use these cards, such as smartphones. In so doing, these Regulations will also prevent the added cost of a levy from ultimately being passed on to retailers and consumers.

These Regulations only seek to exempt a narrow subset of audio recording media. It will be open to the Copyright Board of Canada to consider future proposals on new forms of blank audio recording media, in addition to previously approved media, such as blank CDs.

There are no expected costs to the public, industry or copyright owners since the Regulations seek to maintain the current no-levy status of microSD cards.

Contacts

Anne-Marie Monteith
Director
Copyright and Trade-mark Policy Directorate
Industry Canada
235 Queen Street
Ottawa, Ontario
K1A 0H5
Telephone: 613-952-2527
Fax: 613-941-8151

Lara Taylor
Acting Director
Policy and Legislation
Copyright and International Trade Policy Branch
Canadian Heritage
25 Eddy Street
Gatineau, Quebec
K1A 0M5
Telephone: 819-934-8963
Fax: 819-953-6720

Footnote a
 S.C. 2001, c. 27, s. 240

Footnote b
 S.C. 1997, c. 24, s. 50

Footnote c
 R.S., c. C-42

Apple's in a Pickle at UK Court of Appeal for Unappetizing Apology - Does It Need an "Appology APP"?

                            

(Apple and Pickle from Wikimedia)

Apple's apology is not appetizing to the UK Court of Appeal. Indeed, Apple is in predictable trouble at and with the UK Court of Appeal – which is not a good place or way to be in trouble.  In fact, one might even say that Apple is in something of a pickle at the the Court of Appeal.

There are lots of accounts of this. As usual for anything even remotely “English”, among the best are those of the IPKat and The Register.

We look forward to the written ruling but the Court has found that Apple’s required apology that it published was inaccurate and unsatisfactory.  Indeed, it may have crossed some minds as to whether  Apple has been on the verge of being in contempt of court. 

As reported by the latter, Apple was ordered to post a proper and accurate apology in compliance with the previous rather clear order. Apple protested that it would need 14 days to modify its website. As The Register reported:

Judge Jacob said:

I’m at a loss that a company such as Apple would do this. That is a plain breach of the order.

This time the judges also specified font size 11 for the website announcement.

Apple protested that it wanted 14 days to make the changes. Bloomberg reports that Judge Jacob kicked the suggestion out of the courtroom.

“I would like to see the head of Apple make an affidavit setting out the technical difficulties which means Apple can’t put this on their site," Jacob said. “I just can’t believe the instructions you’ve been given. This is Apple. They cannot put something on their website?”
(emphasis added)

Perhaps, if Apple is so technologically challenged that it needs two weeks to modify its website, it should hire a teenager to write an “APPOLOGY APP”™, patent pending ;-) for the purpose of modifying its website to comply with Court orders.

HPK

Can the Catastrophic Copyright Fury in the Hebrides be Contained?

Detail from Debi Gliori's tale of the Tobermory Cat (Birlinn)/The Guardian

Here is a story in The Guardian  of cats, ideas, ideas about cats, Facebook, alleged theft, alleged plagiarism, alleged defamation, alleged cyber-bullying and - you name it. And lest I forget - above all - copyright. Maybe even cat copyright?

The story is set in the idyllic isle of Mull, Tobermory, Scotland....but is quickly spreading beyond that quaint enclave.

It seems that a whole bunch of people are quite angry with each other about who has the right to write about a well-known resident ginger tom cat.

Since all of this, being set in Scotland, is much closer to the home of the IPKat, I defer to Merpel and her companions for further expert analysis on their IPKat blog, which is the Catillac™ of IP blogs.

Perhaps my IPKat Kounterparts can scratch beneath the surface of this tale to look into such erudite areas (far beyond my expertise) as the procedural niceties of application of Scottish law to a dispute involving the UK Copyright Act and a potential host of other claims that would presumably involve Scottish law, which is primarily civil in nature. I note that the ever-prescient IPKat recently had a posting about Scottish court procedures and the Flying Scotsman here, which paves the way for the IPKat to pounce on this particular perturbation. No doubt, their perceptive analysis will catalyze a discussion of this important case that will propel it to the CJEU, where there is a severe lacuna of jurisprudence involving the intersection of Scottish law, felines, intellectual property, purrsonality rights, and assorted delicious delicts.

I particularly look forward to their view of whether there could be a fur dealing defence. This needs to be mulled over quite carefully.

And, as a Canadian commentator, I must note that there is a lovely place called Tobermory, Ontario. I wonder if there are any particularly interesting cats in Canada's Tobermory and whether writing about them might bring hisses from the Hebrides about appellations of origin. If appellations are to be included in CETA (the Canada-EU Trade Agreement), let us hope that there will be, for greater certainty, a cat carve-out. I’m not sure that Merpel will like the sound of that.

But, cats are like copyright in the sense of being very territorial. Let’s hope that Merpel doesn’t conspire to render her fellow felines in the former colonies fair game for fervent litigation. And, Merpel, being a European Community Cat, may want to lobby for a copyright term of nine lives + plus 70 years, subject to the rule of the shorter term, or shorter tail, or whatever. All of this is why we need to seal the fate of this issue in CETA and not have to quibble about it further.

And speaking of the delicate subject of seals, it should be clear that, when it comes to free trade negotiations, all’s fair in the fur trade and fair dealing. But let’s hope Canada doesn’t trade off the latter for the former, since that might lead to a furious backlash. Canadian law regarding fair dealing is pretty good these days. If the Europeans want to emulate it, let them do so mewtatis mewtandum.

HPK

C-11 Soon to be Proclaimed in Force

Canada is moving closer to the proclamation in force of its Copyright Modernization Act (Bill C-11). We may shortly (November 7, 2012?) see the official announcement in the Canada Gazette Part II of P.C. 2012-1392 as follows:

Sections 1, 2(2), 3, 4, 6 to 8, 9(1), 9(2), 10, 11(1), 11(3), 12(1), 12(3), 13, 15(1), 15(3), 15(5), 17 to 46, 47 (other than s. 41.25, 41.26, and 41.27(3) of the Copyright Act, as enacted by that section), 48, 49 and 51 to 62 of the Copyright Modernization Act, S.C. 2012, c. 20, are proclaimed into force on the day on which this Order is published in the Canada Gazette Part II (P.C. 2012-1392).

Sections 2(1) and 5 of the Copyright Modernization Act, S.C. 2012, c. 20, are proclaimed into force on the later of the day on which this Order is published in the Canada Gazette, Part II, and the day on which the WIPO Copyright Treaty, adopted in Geneva on December 20, 1996 comes into force for Canada (P.C. 2012-1392).

Sections 9(3), 9(4), 11(2), 11(4), 11(5), 12(2), 14, 15(2), 15(4), 16 and 50 of the Copyright Modernization Act, S.C. 2012, c. 20, are proclaimed into force on the later of the day on which this Order is published in the Canada Gazette, Part II, and the day on which the WIPO Performances and Phonograms Treaty, adopted in Geneva on December 20, 1996, comes into force for Canada (P.C. 2012-1392).

H/T to Christina Winter, Copyright Officer, University of Regina who spotted this here and here.

PS  - here's a copy of the official document dated October 25, 2012 - P.C. 2012-1392

HPK

SONY On Trial in Mississippi for Woody Allen Flick Copying Two Sentences (Nine Words) Inaccurately and with Attribution

The latest arguably excessively aggressive copyright litigation in the USA involves the attributed quote – or actually the slight misquote – of a couple of brief sentences from the late William Faulkner's Requiem For A Nun in a movie by Woody Allen.

Mr. Faulkner wrote:

"The past is never dead. It's not even past."

Mr. Allen’s movie, Midnight In Paris, supposedly has the following as part of the dialogue:

"The past is not dead" Actually, it's not even past. You know who said that? Faulkner.”

It should go without saying that any Canadian or UK court would toss this as “insubstantial copying”, without the need to even look at fair dealing. It’s two short sentences, and nine words. Almost nobody would consider the quotation involved here to be “substantial” or more than “de minimis”, although it was astonishingly suggested in the K-12 case in the Supreme Court of Canada that copying more than one sentence is “substantial”. Fortunately, the Supreme Court of Canada completely ignored this submission.

However, that said, there is some arguably rogue and wrong but often cited appellate law in the USA (Bridgeport v. Dimension Films, 6^th Circuit, 2005) that even copying of just a millisecond of a song may be infringing. Well – one has to admit that this is, at least, a “bright line”, as that Court stated.

The Faulkner case is not in the 6^th Circuit. What is important to know about this lawsuit is that it was filed in the Federal District Court in Oxford, Mississippi – the home of town of William Faulkner. A jury trial has been demanded. Anyone wanting to read up on jury trials in Mississippi may wish to consult John Grisham’s non-authoritative but very provocative and best-selling fictional effort entitled “The Runaway Jury”.

BTW, William Faulkner died on July 6, 1962. His works will go into the public domain in Canada at the end of this year.

HPK

Will Copyright Law Trump Free Trade and Domestic Resale Rights? Kirtsaeng v. Wiley - US Supreme Court May Decide

(Counsel in black robes preparing for Supreme Court oral argument - with apologies to the IPKat)

All eyes will be on the United States Supreme Court (“SCOTUS”) on Monday, October 29, 2012 when it will hear oral argument in the immensely important case of  Kirtsaeng v. John Wiley & Sons, Inc. This involves parallel importation of text books into the United States that were legitimately manufactured abroad. The American copyrit owner, however, wanted to block them because they were being resold at lower prices than market would bear in the USA. If this fact situation sounds rather familiar to Canadians, it should. That was basically the issue in Euro-Excellence v. Kraft which was decided by the Supreme Court of Canada in 2007. That case involved chocolate bars and the frankly far-fetched argument that copyright in a small logo on the wrapping should suffice to prevent the parallel importation of these products. Our court split in interesting ways on that case, in which I made the prevailing argument on behalf of the Retail Council of Canada. Here’s a brief analysis that I did for the Law Society of Upper Canada the following year. Actually, tomorrow’s issue went to SCOTUS once before in 2010 in the Costco v. Omega case once before, but the Court split 4/4 on it. 

The American lawyers are busy sharpening the fine points of their submissions, which will, if things are normal, will likely be instantly deflected and perhaps shredded by the usually rather vigorous questions of the SCOTUS justices (other than one well known exception, who may perhaps break his seven year long record of silence during oral hearings, given his interest and evident insight into IP matters, which is shown in the very important 2005 eBay v. MercExchange decision which held that  injunctions do not automatically flow from a finding of infringement in patent cases).

The issue of the treatment of parallel imports under copyright law is one that the late, great Sir Hugh Laddie described as “one of the most difficult topics in copyright law.” It must always be remembered that “parallel importation” refers to the importation of completely legitimate goods through channels other than the one preferred by the local rights holder.

It should be noted that Canada has a special sui generis regime for books that allows for the blocking of parallel imports. This flows from well over a century of angst about cultural protectionism for Canadian publishers. While one can envisage such protectionism for cultural products such as books, where local industries may be imperiled, it is difficult to see why a similar doctrine should be used to control and prevent free trade in consumer or commercial goods. That said, there is also an argument that IP regimes that prevents international exhaustion and the application of the “first sale doctrine” permits the sale of products such as books and computer programs at lower prices in developing countries. The American statutory provisions are very different than those of Canada, and do not differentiate between books, chocolate bars or wrist watches.

This is a debate that will not end any time soon, and perhaps should be dealt with one day in a treaty – provided that there is any agreement at all on basic issues. One thing, however, is clear. To suggest that there can be truly “free trade” at the same time that copyright law can be used to prevent the parallel importation of chocolate bars, wrist watches and even text books is at best naïve and at worst, disingenuous and oxymoronic.

If SCOTUS reverses the decision below – which ruled in favour of blocking importation – there will likely be intense pressure on Congress to restore free trade for the USA. One of the most cogent arguments before the court is that any interpretation that blocks parallel importation of products made abroad is likely to encourage even more export of jobs and manufacturing overseas. Arguably, much more is at stake tomorrow even than the right of international "exhaustion". Many are arguing that, if SCOTUS upholds the Court below, everything from garage sales to library lending to private sale of used Toyotas could be affected and prevented by excessively aggressive copyright owners. 

Unlike Canada’s Supreme Court, there will not be a live video feed of Monday’s hearing. We will, however, see a transcript shortly after the hearing. A recording of the oral argument will be available in a few days.

There will be a very high powered post-mortem including counsel of record hosted by the very energetic and remarkable faculty at the Washington College of Law, at 3:30 PM on October 29, 2012, which I believe will be webcast live.

Note: This event has been cancelled due to Hurricane Sandy. Is this weather event an example of life imitating art with pathetic fallacy?

HPK


PS - Prof. Ariel Katz has an excellent blog about this case here.

PS - 

After a really fast read of the transcript, I think that the key moment may have been:

JUSTICE KENNEDY: But you have to look at those hypotheticals in order to decide this case.

MR. OLSON: Well, and that's --

JUSTICE KENNEDY: You're aware of the fact that if we write an opinion with the -- with the rule that you propose, that we should, as a matter of common sense, ask about the consequences of that rule. And that's what we are asking.

  

Seems at least six judges are really concerned about "the horribles" (i.e. re-selling used Toyotas and displaying Picassos,  lending library books etc.) and/or exporting jobs. EVen Ginsburg asked about exporting jobs.

There wasn't much discussion of any middle ground.

Olson's best answer to the "horribles" was that they haven't happened, that they are different cases and that there's always "fair use".

The latter point is frankly ridiculous in any situation that readily comes to mind no matter how much one might love fair use. And as to the former points, Supreme Courts exist to decide cases with broad implications as Olson obviously knows. I'm astonished that he tried to confine the implication of this case to these specific facts.

I detected some serious potential sympathy from at least Sotomayor, Kagan, Breyer, Kennedy, Rogers and Alito in the rough chronological order that I noted it.

One can never really read too much into Judges questions - but I'm going out on a limb to predict reversal.

And by at least 6-3.

And I've read some comments from pretty smart people on listserves and blogs who seem to think that the SCOTUS may indeed reverse....