Copyright process a complex action

For the London Free Press – February 24, 2014

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In December 2013, the Supreme Court of Canada confirmed that copyright applies to protect how an idea was expressed in a story, but not the idea behind the story.

The case of Cinar v. Robinson dealt with an author’s claim that a Cinar television show was so similar to an idea he pitched to them previously that it breached his copyright. The court agreed.

Claude Robinson “spent years developing an educational children’s television show, The Adventures of Robinson Curiosity (… Robinson) drew his inspiration (for this project) from Daniel Defoe’s novel Robinson Crusoe, as well as from his own life experiences.”

During the mid-1980s, Robinson and his company, Les Productions Nilem Inc., pitched the idea of his television show to Cinar Corporation.

Several years later, Robinson happened to watch a television show entitled Robinson Sucroe, a show that appeared to copy several aspects of his creation The Adventures of Robinson Curiosity — the show he had pitched years earlier to Cinar.

Upon further investigation, Robinson “discovered that several parties who had been given access to his Curiosity project . . . were also involved in the production of” the show that actually made it to television.

Robinson launched a copyright infringement case against the individuals behind the production of the show that made it to television.

The court had to determine what constituted part of the public domain, versus the property of an individual that attracts copyright protection. Both shows were, after all, modelled after the novel Robinson Crusoe. The Supreme Court agreed with the trial judge decision that there was an infringement by Cinar and other related parties upon Robinson’s work.

This decision was based on the similarity of the distinct visual appearance and personalities of the characters. Their appearance and personalities were the product of Robinson’s skill and judgment. The court also felt that particular visual elements of the island were conceived by Robinson and copied by Cinar.

The test to determine if copyright has been breached is whether the defendant copied a substantial amount of the author’s work. The Supreme Court stated that “a qualitative and holistic approach must be adopted (in determining whether someone’s idea was stolen). In order to determine whether a substantial part of Robinson’s work was copied, the features that were copied by Cinar appellants must be considered cumulatively, in the context of Robinson’s work taken as a whole.”

In other words, the test for infringement (at least for written works) is not to tear the work apart and compare only the original elements.

The court awarded damages, punitive damages and costs totalling more than $2 million. But given the complexity and time involved in seeing this copyright action through to the Supreme Court of Canada, it has been suggested that Robinson is still behind financially.


Have you ever suffered from Formitis?

Today’s Slaw post:

Formitis [form – eye – tis] To cling blindly and unwaveringly to a document while ignoring reality.

OK – I made that up – but lawyers and clients often get frustrated when the other party to a document steadfastly refuses to change something that makes no sense.  It may be presented as a standard form they can’t change, or that their corporate policy dictates that form be used, or they may be reluctant to get legal or senior business advice.  On the other hand, the person resisting the change may just be lazy and not want to deal with it.

I’m talking about substantive terms that clearly don’t belong in the context of the actual business arrangement.  For example, a US buyer who refuses to remove a clause requiring a Canadian manufacturer to comply with US labour and environmental laws.

Forms and standard contracts are great tools – but don’t be a slave to them.

Anti-spam bill impact will be immense

For the London Free Press – February 10, 2014

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The Canadian anti-spam act comes into force July 1, 2014. If you think it won’t affect your business or not for profit because you don’t send mass e-mails trying to sell random products, you would be wrong.

It defines spam — the act calls it commercial electronic messages — so broadly that it will affect how most organizations communicate. The definition goes far beyond what the average person would consider spam. It then layers on a series of complex exceptions and implied consents that allows commercial electronic messages to be sent in certain circumstances.

Volume is irrelevant. One e-mail sent to one person can be spam, and subject the sender to a fine of up to $10 million. Starting in 2017, remedies will include a private right of action (the right of recipients to sue the sender) that allows for the payment of statutory damages. In other words, there will be no need to prove actual damages were suffered from receiving the message.

Depending on the nature of the message and the relationship between the sender and recipient, some commercial electronic messages can be sent without any conditions, some require an unsubscribe mechanism, and some can’t be sent at all.

Unfortunately the act’s biggest impact will be the compliance headache it will cause the average business or not for profit.

In the short term, we can expect to receive a deluge of e-mails requesting that we consent to receive e-mails from various entities for various things. In many instances recipients may be confused or perhaps ignore those requests, based on the thought that they are already getting the messages or have already consented.

Recipients may not understand that subtle differences in how consent is requested, granted or tracked.

Some things worth noting include:

  • Directors and officers can be personally liable if they participate in or acquiesce to violations under the act.
  • Charities benefit from some additional exemptions, but the act still applies to many things most charities do.
  • Commercial electronic messages are defined broadly to include more than e-mail — such as certain social media messaging tools.
  • The onus of proof is on the sender, meaning that the sender must track and document compliance on an individual recipient basis in order to defend itself from alleged violations of the act.
  • Consents to receive commercial electronic messages must be obtained in specific ways and by disclosing specific information.
  • Consents one already has that are sufficient for privacy legislation may or may not be grandfathered, as valid consents depending on the circumstances.
  • the act includes a three-year grace period for consents — but only in certain defined situations.
  • Sending an e-mail to request consent is itself considered spam.

Given the complexity of the Canadian anti-spam act and the consequences for non-compliance, businesses and not for profits can’t afford to ignore this. Legal help is available to assist. More information on the act can be found on the author’s blog by searching for “anti-spam” at


Some CASL Clarification

Todays Slaw post.

CRTC and Industry Canada representatives provided some insight into their thoughts on CASL (the new anti-spam law that kicks in July 1) in an IT-Can forum on Monday.

To come under the complex CASL rules, the email must be a “commercial electronic message” or CEM.  It does not take much to cross that threshold.  An example of a law firm emailing details about a new court decision was discussed.  If a pure case summary was part of or attached to an email (eg The Supreme Court of Canada today released a decision that decided…), and the email had a standard footer that includes a logo and link to the law firm’s web site, then the wording of the act is broad enough that the mere link makes it a CEM.

The regulator’s view was that while technically you could interpret that as a CEM under CASL because of the link, they would not consider that of a commercial nature. But all it takes to turn that into a CEM is any hint of a promotion of the law firm’s services, such as a sentence that says “We can help…”

In practice, mass emailings may be the easiest type to deal with, as CRM and mailing tools are available to manage the process and track permissions.

The daily emails that employees of organizations send will be more difficult to deal with.  Knowing the difference between sending an email that is OK to send because it is not a CEM or is a routine customer interaction, one that requires some sort of consent and an unsubscribe mechanism, and one that you simply can’t send at all, will not be easy for the average person doing their jobs.

Social Media in the Workplace

This article originally appeared in the December 2013 edition of the HRPA London and District Digest. (See page 10 of this pdf copy.)

Social media sites such as Twitter, Facebook, LinkedIn and Pinterest – to name a few – permeate our lives. As we spend a majority of our day at the workplace, most of us can’t help but use social media sites while at work.

The rise in social media’s prevalence brings opportunities and challenges for employers and employees alike. Despite the doom and gloom we often hear, social media should not be shunned or feared. A happy medium can be reached.

There are two fundamental issues for social media in the workplace. The first is how to use it to effectively promote business. The second is how to discourage employees from spending excessive amounts of time on their own social media, and from saying things that don’t sit well with employers.

We are still feeling our way around what control and recourse an employer actually has over employee social media use, especially when it is on the employee’s account, and on the employee’s time. Internet tools and social media increasingly blur how one’s personal and work life overlap.

Employers struggle with the extent to which they may be prejudiced by what employees say on social media.

Should employers just ignore things they don’t like? What legal rights do employers have over actions employees consider personal? Employers should be careful not to push back too hard, because situations can play out badly for the employer in the court of public opinion.

An outright ban of social media use in the workplace is not the answer. Depending on the nature of the business, it may be beneficial to allow employees to use it. And an employer’s attempts to ban it or control access from company systems will make employees simply pull out their phones.

The better approach is to put guide-lines in place and educate employees on acceptable behaviour. This is not to say that employee use of social media carries no risk. It is not unusual for people to say things on social media that they would never do in a letter or email.

For example, a 2009 survey of United States employees indicated that 74 per cent agreed that it would be easy to damage an employer’s reputation via social media. Despite this, 27 per cent of those employees said they do not consider the ethical consequences of posting comments, photos or videos; 37 per cent rarely or never consider what their boss would think; and 34 per cent rarely or never consider what their customers would think. 15 per cent agreed that if their employer did something they did not agree with they would comment about it online.


  • violation of workplace harassment laws and policies,
  • messages inconsistent with the employer’s corporate image,
  • inappropriate use of employer resources,
  • defamation,
  • copyright violations,
  • privacy breaches, and
  • security breaches.

While one can argue that existing rules and common sense should be sufficient to cover an employee’s use of blogs and social media, it doesn’t seem to work that way in practice. After all, people sometimes tend to use new tools without a lot of thought about what they are doing, or whether they are doing something that they shouldn’t do.

Many employers have implemented social media policies for their employees. In essence, a social media policy describes acceptable behaviour. It will remind employees what is appropriate, and what is not. The goal is to foster safer behaviour, and to set a standard against which behaviour can be judged

A social media policy can stand on its own, or be incorporated into a wider, technology-use policy that covers the appropriate use of technology in general.

If you are not sure where to start, or what issues should be addressed, visit This online service (created by the author and rTraction) allows you to answer questions based on your situation and generates a draft policy customized to your business.

Sochi Olympics – Social Media for Personal Use Only

Today’s Slaw post:

The limitations and restrictions regarding social media use during the 2014 Winter Olympics Games continue to be controversial.  While the International Olympic Committee (“IOC”) has eased up on their social media restrictions over the years, the IOC guidelines are fairly similar to the guidelines provided for the London 2012 Olympic Games.

(So no apparent extra control over social media as compared to prior Olympics – unlike allegations that participants and athletes will face the most invasive and massive surveillance ever, including monitoring of all communications, and allegations that it is the most corrupt Olympics in history. )

Take a look at the IOC guidelines for participants.

The IOC states that it: “Actively encourages and supports athletes and other accredited persons at the Olympic Games to take part in social media and to post, blog and tweet their experiences.”

At first glance the IOC, and in turn the Canadian Olympic Committee which follows the IOC guidelines, support the use of social media.  However the guidelines state that neither an athlete nor an accredited person can act as a journalist during the games, unless they are at games as an official journalist.

The guidelines make it clear that they cannot make any commercial use of social media, images or video taken at the games.

Nor can they use professional equipment to record images or video, which includes a ban on the use of tripods and monopods.  While they are allowed to post photographs they take at Olympic venues on social media, any video must be for personal use only and is not to be posted on social media.

Even accredited print journalists are prohibited from using professional video equipment and posting video.

Spectators are subject to similar restrictions as athletes.  The 23 page Ticketing Terms and Conditions (pdf) state:

Still images taken by spectator may be shared privately and are exclusively for personal, non-commercial purposes. Video recording can be made only with the use of domestic handheld cameras.  Images, videos and sound recordings of the Games taken by a spectator cannot be used for any purpose other than for private, personal, archival, non-commercial purposes i.e the Spectator may not license, broadcast or publish video and/or sound recordings, including on social networking websites and the internet more generally, and may not exploit images, video and/or sound recordings for commercial purposes under any circumstances, whether on the internet or otherwise, or make them available to third parties.

The hype of the Olympic Games, these limitations, and the controversy surrounding social media use in the past (two athletes were expelled from the 2012 London Games for social media faux pas) will no doubt add to various controversial aspects of the games this February.

Deloitte 2014 TMT predictions

Today’s Slaw post:

Deloitte publishes TMT (Technology, Media and Telecommunication) trend predictions each year.  Deloitte’s Duncan Stewart does a series of public presentations on the predictions, which is worth seeing if you have the opportunity. The entire list is interesting, but here are some that might be relevant to lawyers.

Consumers will spend more than $3 billion on wearable computing, including smart glasses, watches, wristbands, and clothing.  Wearables will become more popular as the tech improves, designs improve, and prices come down.

MOOCS (Massive Open Online Courses) will be up 100% over 2012.  The growth may not be as big as some media hype, but in the long term will grow enormously.  Will legal education be provided this way, or is the market too small and the players too conservative?

Phablets (smartphones with screens of 5″ or more) are here to stay.  These hybrids between smartphones and tablets will be 25% of the global market, though only 15-20% in Canada.

Social Media – the same thing only different

Todays Slaw post:

Two articles I noticed this morning emphasize that while social media can bring its own set of legal issues, sometimes its use can have the same consequences as any other form of publication.

The first is a CBC news report that a man has been charged with criminal harassment for his tweets.  He was charged a couple of years ago for derogatory and threatening messages.  The case is now at trial.

The second is a post at about a decision regarding an employment non-competition clause.  It was alleged that the defendant had contacted customers in violation of confidentiality obligations.  The court found no liability in this instance, and mentioned in passing that “the information was all publicly available and obtained from such sources as social media websites.”  One question that raises surrounds LinkedIn connections and facebook friends.  If the employee in question, or indeed other employees, have people who work at their employer’s customers as connections, does that take away from any otherwise confidential aspect of the employer’s customer list?

CASL (Anti-Spam Act) and Charities

CASL (the anti-spam act) will apply to charities when it comes into force on July 1, 2014. The good news for charities is that the recently published Industry Canada regulations say that electronic messages are not spam if they are:

sent by or on behalf of a registered charity as defined in subsection 248(1) of the Income Tax Act and the message has as its primary purpose raising funds for the charity

That means that if a charity sends an email asking for a donation, it is not spam. But the Act does apply to emails a charity might send where that is not the “primary purpose”. The Act applies to any electronic message a charity sends that “is of a commercial character”, which means that one of its purposes is to “encourage participation in a commercial activity”.  That includes the promotion of or offer to sell a product or service. For example, a charity that is in the arts that sends an email promoting an upcoming exhibit, play or concert would have to comply with the Act. It is unclear at this time the extent to which “primary purpose raising funds for the charity” saves emails from being of a commercial character.  A request for a pure donation would.  Soliciting attendance at a paid fundraising event may or may not.  Hopefully we will get some guidance on this from the CRTC. The grandfathering and transitional provisions will apply to charities similar to anyone else.  Charities do however benefit from some additional definitions of implied consent by virtue of the definition of “existing non-business relationship” which includes

  • anyone who has donated within the past 2 years; or
  • volunteers who performed work or attended a meeting within the last 2 years.

The bottom line is that any charity that sends emails or other electronic messages that are of a commercial character for any reason other than a primary purpose of raising funds must comply with the Act just like any other business. For more detail about CASL see my previous blog posts, particularly the 5 part article series.