The Law & Technology Institute Dalhousie Law School

Dalhousie University The Law & Technology Institute Dalhousie Law School: The Influence of American Law on Canadian Copyright Law Affecting Technology Wednesday, October 15, 2003 Barry Sookman, Partner, McCarthy Tétrault Chair, Internet and Electronic Commerce Law Group (Toronto) [email protected] (416) 601-7949 www.mccarthy.ca Dalhousie University Need to Scrutinize U.S. Cases ¾ “As Estey J. noted in Compo Co., supra, at p. 367: ¾ ...United States court decisions, even where the factual situations are similar, must be scrutinized very carefully because of some fundamental differences in copyright concepts which have been adopted in the legislation of that country.” ¾ “I should note that while there is no explicit and independent concept of ‘derivative work’ in our Act … To the extent, however, that the respondent seeks to enlarge the protection of s. 3(1) by reading in the general words ‘recast, transformed or adapted’ as a free-standing source of entitlement, his remedy lies in Parliament, not the courts.” Théberge v. Galerie d’ Art du Petit Champlain Inc. (2002) 17 C.P.R. (4th) 161 (S.C.C.) 2 McCarthy Tétrault LLP Dalhousie University Need to Scrutinize U.S. Cases “’While the American case is most fascinating from both a cultural and legal perspective, I have not found it to be persuasive authority in the context of Canada's particular copyright regime. Chief Justice Laskin in Morgentaler v. The Queen, [1976] 1 S.C.R. 616, held at page 629 that a Court should be prudent in applying American precedents to the Canadian context and should take into consideration the particular rules of each system of law: … ‘they do not carry any authority beyond persuasiveness according to their relevance in the light of context, with due regard to the obvious differences that exist… American decisions are only persuasive to the extent that the laws in both jurisdictions are similar . .’” Cie générale des éstablissements Michelin-Michelin & Cie v. C.A.W-Canada. (1996), 71 C.P.R. (3d) 348 (Fed. T.D.) (emphasis added) 3 McCarthy Tétrault LLP Dalhousie University Refusal to Apply U.S. Cases “For their part, American precedents are numerous. However, the important distinctions that exist between American and Canadian copyright law on issues such as distribution rights and contributory infringement, coupled with the detailed statutory provisions that now address the liability of ISPs mean that American cases are of little relevance in determining the application of Canadian legal principles in these matters.” Public Performance of Musical Works 1996, 1997, 1998 (1999), 1 C.P.R. (4th) 417 (Copyright Board) (Tariff 22 Case) 4 McCarthy Tétrault LLP Dalhousie University U.S. Cases Must Not Upset Copyright Balance “However, case law, both domestic and foreign, guides this Court's interpretation of the Act . This Court might be guided by British jurisprudence, since Canadian copyright law was historically based upon, and still closely resembles British law… On the other hand, the Supreme Court of Canada has indicated that American jurisprudence must be carefully scrutinized, because there are important differences between Canadian and American copyright policy and legislation (Compo , supra at 367). Canadian courts must always be careful not to upset the balance of rights as it exists under the Canadian Act .” CCH Canadian Ltd. v. Law Society of Upper Canada (2002) 18 C.P.R. (4th) 161 (Fed. C.A.) (emphasis added) 5 McCarthy Tétrault LLP Dalhousie University U.S. Cases Have Been Influential ¾ “American copyright law is quite similar to Canadian law, and reference to American jurisprudence in this area is helpful.” Matrox Electronic Systems Ltd. v. Gaudreau, [1993] R.J.Q. 2449 (Que. S.C.) ¾ “In the United States both the size of the computer industry and the extent of litigation have generated a considerable number of decisions involving the application of copyright law in computer cases. These decisions are not binding on courts in Canada but they are entitled to both consideration and respect where they touch on areas which have not been considered or on issues that are similar in both American and Canadian legislation.” Prism Hospital Software Inc. v. Hospital Medical Records Institute (1994), 57 C.P.R. (3d) 129 (B.C.S.C.) 6 McCarthy Tétrault LLP Dalhousie University Effect of International Treaties “This is not to say that Canadian copyright law lives in splendid isolation from the rest of the world. Canada has adhered to the Berne Convention for the Protection of Literary and Artistic Works (1886) and subsequent revisions and additions, and other international treaties on the subject including the Universal Copyright Convention (1952). In light of the globalization of the so-called ‘cultural industries’, it is desirable, within the limits permitted by our own legislation, to harmonize our interpretation of copyright protection with other like-minded jurisdictions.” Théberge v. Galerie d’ Art du Petit Champlain Inc. (2002) 17 C.P.R. (4th) 161 (S.C.C.) 7 McCarthy Tétrault LLP Dalhousie University Effect of International Treaties “Another impact of the 1993 amendments may well be that more assistance can henceforth be sought from authoritative decisions of the United States courts when interpreting these very provisions that were amended or added in the Copyright Act in order to implement NAFTA. I do not wish to be interpreted as saying that Canadian courts, when interpreting these provisions, should move away from following the Anglo-Canadian trend. I am only suggesting that where feasible without departing from fundamental principles, Canadian courts should not hesitate to adopt an interpretation that satisfies both the Anglo-Canadian standards and the American standards where, as here, it appears that the wording of Article 1705 of NAFTA and, by extension, of the added definition of ‘compilation’ in the Canadian Copyright Act, tracks to a certain extent the wording of the definition of ‘compilation’ found in the United States Copyrights Act.” Tele-Direct (Publications) Inc. v. American Business Information, Inc., (1997), 76 C.P.R. (3d) 296 (Fed. C.A.) 8 McCarthy Tétrault LLP Dalhousie University Effect of International Treaties ¾ “I refer also to the World Trade Organization (“WTO”) Agreement on Trade Related Aspects of Intellectual Property Rights (“TRIPS”) which was incorporated into Canadian law by S.C. 1994, c. 47, s. 8. It provides in Art. 9.2 that “[c]opyright protection shall extend to expressions and not to ideas, procedures, methods of operation or mathematical concepts as such.” (Emphasis added.) I refer to the emphasized words as showing what, authoritatively, falls outside the scope of protectable expression.” Delrina Corp. v. Triolet Systems Inc. (2002) 58 O.R. (3d) 339 (C.A.) ¾ Will cases interpreting Section 1.02(b) of U.S. Act be persuasive? 9 McCarthy Tétrault LLP Dalhousie University Principles of Statutory Construction ¾ “The words of the Act are to be read in their entire context and in their grammatical and ordinary sense harmoniously with the scheme of the Act, the object of the Act, and the intention of Parliament.” Bell ExpressView Limited Partnership v. Rex 2002 S.C.C. 42 (emphasis added) ¾ The courts views of the “object of the Act” and “the intention of Parliament” can be critical to construing copyright legislation. 10 McCarthy Tétrault LLP Dalhousie University Purpose of Copyright - U.S. “Congress shall have Power . To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries” Art. I, 8, cl. 8. U.S. Constitution 11 McCarthy Tétrault LLP Dalhousie University Purpose of Copyright - U.S. “…we have described the Copyright Clause as both a ‘grant of power and a limitation,’ … and have said that [t]he primary objective of copyright is [t]o promote the Progress of Science. The ‘constitutional command,’ we have recognized, is that Congress, to the extent it enacts copyright laws at all, create a ‘system’ that ‘promote[s] the Progress of Science.’” Eldred v Ashcroft 537 U.S. (2003) 12 McCarthy Tétrault LLP Dalhousie University Purpose of Copyright – U.S. ¾ “The limited scope of the copyright holder's statutory monopoly . reflects a balance of competing claims upon the public interest: creative work is to be encouraged and rewarded, but private motivation must ultimately serve the cause of promoting broad public availability of literature, music, and the other arts. The immediate effect of our copyright law is to secure a fair return for an ‘author's’ creative labor. But the ultimate aim is, by this incentive, to stimulate artistic creativity for the general public good.” Twentieth Century Music Corp. v. Aiken, 422 U.S. 15, 156 (1975). ¾ ‘The primary objective of copyright is not to reward the labor of authors, but ‘[t]o promote the Progress of Science and useful Arts.’ To this end, copyright assures authors the right to their original expression, but encourages others to build freely upon the ideas and information conveyed by a work.” Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340, 349-350 (1991) 13 McCarthy Tétrault LLP Dalhousie University Purpose of Copyright – U.S. “The limited scope of the copyright holder's statutory monopoly, like the limited copyright duration required by the Constitution, reflects a balance of competing claims upon the public interest: Creative work is to be encouraged and rewarded, but private motivation must ultimately serve the cause of promoting broad public

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