Federal Partners in Technology Transfer – Presentation at the Current Practices and Issues in Managing and Exploiting Intellectual Property, Wednesday May 30th, 2001 Aylmer, Quebec
The advent of the Internet and the sums of money at stake have increased the general level of awareness to an area that was once the exclusive preserve of musicians and artists.
Now, when one uses the expression, “content is king”, one implicitly refers to the rights of ownership associated with the reproduction, transmission, or modification of an artistic, literary (including software), dramatic or musical work.
In the government arena, two topics come to mind, 1) the impact of the Internet on copyright and government practices; and 2) the management of copyright with respect to information technology issues, principally software.
1. The Impact of the Internet on Copyright and Government Practices.
1.1 Communication over the Internet
The recent decision, Tariff 22, of the Copyright Board with respect to the collective society representing composers, authors and music publishers in Tariff 22 (1999) 1 C.P.R. 417 represents a reach from the old economy into the new.
Tariff 22 is of importance because it sets out and defines the parameters of how and whether a work transmitted over the Internet constitutes communication to the public by telecommunication within the scope of Paragraph 3(1) (f) of the Copyright Act, and thus determines what constitutes an infringing act under the law.
Tariff 22 sets down several principles, which would affect the manner in which for instance, government departments employ Internet technologies in the modification, reproduction and transmission of copyrighted works. The principles include:
a) a work is communicated over the Internet when a server containing the work responds to a request to access the work from a browser;
b) such a communication (i.e infringement) occurs when the work is transmitted and not when the user actually displays it;
c) a person who makes a work available on the Internet, is the person who communicates;
d) a communication is deemed to occur in Canada if the content originates from a source computer located in Canada;
e) a person that provides an embedded hyperlink on their site to third party’s implicitly authorizes the use and communication of the third party’s site (implied licence).
The impact of these rules is essentially that the act of sending copyrighted work without prior authorization or clearance on government servers constitutes copyright infringement. While there is debate with respect to the implied licence rule and no clear case law, it is our view that the act of posting a work on the Internet constitutes an invitation for anyone on the Internet to access and view the work at any time.
1.2 Meta-tags
While Canadian courts have not directly ruled on whether meta-tags can be the subject of copyright, in British Columbia Automobile Assn. v. Office and Professional Employees’ International Union, Local 378, (2001) 85 B.C.L.R. (3d) 302 (B.C.S.C), the Court did not rule out the possibility. In order to be entitled to copyright protection, a work must be original. In this connection the word “original” does not mean that the work must be the expression of original or inventive thought. The originality, which is required, relates to the expression of the thought. There is however, no implied licence to distribute modify or reproduce the work. Given the above, it would appear that like any other literary expression, meta-tags are subject to copyright.
2. Crown Copyright Ownership in Public/Private Joint Ventures Computer Software
Increasingly technology development and transfers involve computer software or the joint collaboration between the government and the private sector. Computer software can represent an array and layer of rights that is easily overlooked in such transactions.
2.1 Joint Ownership
While it is relatively simple to stipulate contractually that there is joint ownership in the developed software, a problem that will often arise is the identification of the authors of the program. For assignment purposes, it is imperative that a list of the names of the developers who made significant and original contributions to the creation of the software be established with the relevant dates.
2.2 Source Codes
Where a government employee creates software within the scope of his/her employment, the Crown may not have copyright in and to the source code, if the source code relates to a utilitarian function such as menu structures, program architecture and commands. While the Crown may have made contributions to the creation of software; only the whole program may be protectable as an intellectual property right and belong to the owner of the program. Section 64.1 of the Copyright Act provides that the following act, among others, does not constitute an act of infringement of the copyright or moral rights in a work:
Applying to a useful article features that are dictated solely by a utilitarian function of the article.
Therefore copyright cannot subsist “in any arrangement, system, scheme, method for doing a particular thing, procedure, process, concept, principle, or discovery, but only in an author’s original expression of them”. However, a particular expression of a mathematical algorithm or other procedure for solving a problem or accomplishing some end in the form of sets of instructions or statements may be protected by copyright, the mathematical algorithm or other procedure itself such as the menu structures, program architecture and commands as such cannot be protected by copyright.
However, a computer user interface, for instance may represent products of computer programs rather than the programs themselves and are subject to copyright, see Delrina Corp. v. Triolet Systems Inc. (1993) 47 C.P.R. (3d) 1.
2.3 Scientific Inventions
Most mechanical and process patents have drawings, which would be subject to copyright protection. However, once the patent protection is no longer available to the owner of the patent, the subject of the patent is no longer capable of copyright protection, see Rucker Co. v. Gavel’s Vulcanizing Ltd. (1985), 7 C.P.R. (3d) 294 (F.C.T.D.).
2.4 Moral Rights
Moral rights can be defined as the right of the author of the work to the integrity of his/her work and to be or not be associated with the work.
In Kerr v. The Queen (1982) 66 C.P.R. (2d) 165, the plaintiff created a cartoon character for the Government of Canada. The contract recognized that the copyright in the artistic work in the cartoon belonged to the plaintiff. The defendant paid the plaintiff for the use of the character during the term of the agreement. However, the plaintiff sued on the basis that there was a violation of his copyright and that there was an implied term that if the defendant required any further artwork, the parties would enter into a new contract or obtain his permission before awarding the contract to another.
The Government defendant was able to prevail in its defense against the allegation of copyright infringement and violation of moral rights because the contract provided that the defendant could change, alter or modify the cartoon even though there was no explicit waiver of the plaintiff’s moral rights in and to the work. Specifically, on the moral rights issue, to succeed, the plaintiff was required to establish that the alleged infringements vulgarized the plaintiff’s work in such a manner as to prejudice his honour or reputation. The plaintiff could provide no such evidence. (see also Pesterfield v. Denham [1919] F.S.R. 168 (Plymouth County Court).
Therefore, if, for instance a programmer/graphic artist created a graphical user interface for a government website and another programmer/graphical artist is hired to modify it, one must be careful as to the nature of the changes implemented, if the written contract is silent on the issues of modifications and waiver of moral rights.