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CBA suggests copyright law amendments

Finding the sweet spot on the spectrum of rights.

Copyright symbol

It’s not every day rock royalty appears before an audience of Canadian Members of Parliament but that was indeed singer-songwriter Bryan Adams testifying in September before a House of Commons committee.

With the government looking at making changes to the Copyright Act, Adams made the trek to Ottawa to propose an amendment that would help Canadian composers and authors regain control of their work after selling it to a company. “Under the current copyright law, authors and composers who transfer or assign their copyrights by contract must wait 25 years after death to get them back,” Adams told the committee. “My proposal is that we change one word in the Copyright Act, in subsection 14(1), from 25 years after ‘death’ to 25 years after ‘assignment.’ It’s one word. That’s all we need to do.”

Adams is just one of many interested parties appearing before government following last December’s launch of the statutory five-year review of the Act. Government statistics show copyright is “a major driver of the Canadian economy,” with copyright-based industries contributing an estimated $50 billion to the economy and accounting for 483,000 jobs in 2015.

With numbers like those, it’s no surprise that the consultation on proposed amendments to the Act received dozens of submissions from stakeholders with a wide range of perspectives, including creators, broadcasters, educators, libraries and publishers.

“Copyright is central to the growth of creativity and the promotion of commercial activity,” said Toronto anti-counterfeiting lawyer Georgina Danzig of Kestenberg Siegal Lipkus LLP. “The goal of the legislation is to find the sweet spot on the spectrum of rights—the proper balance between granting exclusive rights to creators and access to users.

“Creators are typically inclined to more enhanced, protective measures and users to a more liberal, less restrictive access and use methodology. Depending on your placement within the spectrum, you may be advocating for different levels of protection, access, use and enforcement,” added Danzig, who chairs the CBA’s Anti-Counterfeiting and Trade Offences Committee and serves on the National Intellectual Property Law Section’s executive committee. “What we are proposing, after having lived with the regime for some time, is that we think it could be done in a better way.”

The creators versus users debate has “very deep pockets generally on both sides,” said Steve Seiferling of Seiferling Law in Saskatoon, chair of the CBA’s Copyright Committee and immediate past chair of the National IP Section. Seiferling was to present a submission before the Industry Committee on behalf of the CBA’s Intellectual Property Section in December. Since the CBA’s mandate is to deal with issues of importance to lawyers and their practices, he said they agreed to narrow their submission to “put forward a unified position that really related to the practice of law relating to copyright.”

The first of five issues raised by the CBA is the suggestion to review Canada’s current notice-and-notice system and consider implementing a notice-and-takedown system. Under the current system, an internet service provider passes on a notice received from a copyright owner to the person who the copyright owner is claiming infringes on their copyright. If a copyright user is in another country but its owner is Canadian-based, there’s “virtually zero enforceability if they refuse to take something down,” said Seiferling. The copyright owner must go to court to have the material taken down, but Canada has limited judicial resources to deal with these matters.

Many other jurisdictions, including the U.S., use the notice-and-takedown system, in which online hosts remove content that is alleged to be illegal and “the person who has posted it has the opportunity to come back to you and say no, I believe this is fair dealing or no, I should be authorized to repost this,” Seiferling said.

Regarding the issue of security interests in copyright, there is no requirement to register it with the Canadian Intellectual Property Office but the CBA’s submission says “it is worth considering whether a right to register a personal property security interest against a copyright should be included in the Act.” Seiferling said the proposal is to simply record it in case the copyright is transferred in order to make it simpler when it comes to searches.

The CBA IP section also advocates simplifying procedures for dealing with uncontested counterfeit goods at the border. The current mechanism offers the opportunity to register intellectual property rights with the Canada Border Services Agency but if the importer doesn’t agree that the goods are counterfeit, “within a period of 10 days, you have to go to court to get an order,” said Seiferling. “There’s no other way to deal with it.”

Since the vast majority of importers are likely knowingly importing counterfeit goods, “they’re definitely not going to respond within 10 days,” he added. “Even if you’re able to track them, there is rarely, if ever, an admission that these goods are counterfeit.” Without a simpler mechanism of dealing with counterfeit goods at the border than going to court, judicial resources end up being used. There is no simplified method of dealing with actual counterfeit goods “and it’s costing legal clients a bunch of money.”

According to the CBA’s submission, the boundary between copyright and industrial design is unclear for artistic works. The IP section advocates reviewing the statutory interface between them, as well as approaches in other jurisdictions, and consider a more balanced solution: “Although possibly beyond the scope of this review, consider the option of making an unregistered design right available in Canada.”

The final CBA recommendation is to adopt a resale right for visual artists, which exists in more than 90 countries. This applies to artistic works that are sold or resold through a recognized gallery or auction house. The resale right would pay the original artist or copyright holder a 5 percent royalty while copyright subsists, allowing artists and their heirs to obtain some limited royalties, even after the first sale.

Seiferling doubts the government will make changes to the Copyright Act before the next election but any changes “will likely have some impact on law practice, whether you practise on the creator’s side, the user’s side or both sides.”

The submissions help to “focus our legislators on some shortcomings and propose alternatives for improvement, by listening to the diverse community of interested participants, which should lead to greater clarity, that translates into greater certainty, and that benefits us all,” said Danzig.