Emily Prieur is an IPilogue Writer and a 3L JD Candidate at Queen’s University Faculty of Law.
Background
In July 2021, the Government of Canada launched a consultation requesting stakeholder submissions on Artificial Intelligence (“AI”) and the Internet of Things (“IoT”). In response, thirteen Canadian Intellectual Property scholars and professors from law schools across Canada penned their suggestions to protect the interests of Canadians. In Part 1, I summarized some of the key concerns of the scholars concerning AI. In this submission, I focus on their recommendations regarding the IoT.
In the IoT consultation submission, the scholars emphasized that the government must balance the rights and interests embedded in the Copyright system with the broader framework of the Constitution. Additionally, the submission noted the importance of modernizing the current Copyright Act with an eye to larger trends and anti-competitive practices within the marketplace.
Technological Protection Measures
The scholars acknowledged the careful balance between the strong promotion of Technological Protection Measures (“TPMs”) with the financial incentives that come with extracting personal data (noting e-commerce as an example). TPMs, defined in s. 41 of the Copyright Act, are technologies, devices, or components that either control or restrict access to copyright-protected materials . In 1395804 Ontario Limited (Blacklock’s Reporter) v Canadian Vintners Association (CVA), a small claims court in Ontario was tasked with deciding whether forwarding an email and receiving a forwarded email, including copy and pasted material constitutes Copyright infringement. Prominent legal scholars, including Teresa Scassa (who contributed to the Government call for consultation), were puzzled by the court’s reluctance to engage in an analysis of anti-circumvention provisions within the Copyright Act.
The scholars explained that strong TPM brings accelerated market dominance as well as a lack of transparency.
Technological Protection Measures and the Copyright Act
The group examined the current Copyright framework within its broader context and considered the extraction of big data, anti-competitive practices, and heavy reliance on non-negotiated standard terms.
The scope and effect of TPMs
Canada’s decision to include TPMs in the 2012 legislative reform, was contentious. The debate stemmed from Canada’s choice to refer to TPMs more broadly as “access controls”. The scholars explained that rather than using copyright tools to restrict acts “in respect of works”, the current model gave rise to “access rights”, which they argue could have harmful effects on IoT devices. The concern results from the notion that by restricting access to copyright works, TPMs can transform what was formerly Copyright protection into control over tangible property. In short, by changing the scope, the corollary effect becomes control of personal property through the Copyright Act.
Strict Copyright Legislation Could Impact Repair of Electronic Devices
The scholars referenced the Apple v Australia scandal of 2018, where the Australian Consumer and Competition Commission launched an investigation into Apple after misleading the Australian public. Following the investigation, the Australian Government fined Apple a total of $9 million. The issue emerged from Error (Error 53), which caused the home buttons on iPhone 6 phones to malfunction. During the Australian investigation, Apple admitted to misleading consumers to believe that third parties were unable to fix Error 53. This demonstrates the ability of TPMs to prevent the repair of technological devices such as iPhones.
Another example involves the comically damaged McDonald’s ice cream machines. The ice cream machines need intricate technology to function, especially the self-cleaning technology used to eliminate bacteria. The scholars note that by inhibiting the ability to provide diagnostic information to fix these complicated machines, third-party companies like Kytch have difficulty discerning the root issue.
Nintendo v King
The scholars also turned to Nintendo v King, a significant decision that explored anticircumvention provisions under the Copyright Act. The case involved Nintendo as the Appellant, attempting to protect Copyrighted video games on three popular video game consoles (the Nintendo DS, Nintendo 3DS, and Nintendo Wii). The respondent was Go Cyber Shopping, which sold and installed circumvention devices that essentially copied Nintendo game cards. In so doing, consumers were able to play hundreds of illegally downloaded video games without purchasing the real games from Nintendo. The court rejected the argument presented by Go Cyber Shopping, which was that they were replicating the games rather than circumventing TPMs. The court also inferred a defense of interoperability: Go Cyber Shopping devices contained “homebrew software”, that Nintendo did not hold in copyright. The court rejected this argument. Nintendo received $12 million in damages.
The scholars found Nintendo v King instructive and concluded that the legislature should turn their minds to enforcing TPMs more strictly. Additionally, the scholars pointed out the current failings of the interoperability defense, as it fails to accommodate “broader modalities” of innovation. Statutory reform is required to narrow any future judicial interpretation.
Final Recommendations
The scholars concluded their submissions with one key recommendation and five alternative recommendations.
The preeminent recommendation was to narrow the scope of TPM prohibitions under the Copyright Act. In narrowing the scope of TPM, users engaging in non-copyright infringing activities could do so lawfully. This recommendation suggested including a non-exhaustive list of purposes to “provide greater legal certainty”.
The alternative recommendations included calls for the government to introduce exceptions within the Copyright Act that encourage follow-on innovation and an exception excluding TPM provisions from the right to repair.
Additionally, the scholars suggested creating a provision that mirrors the current laws prohibiting “contracting out” of exceptions to copyright infringement. No person would be permitted to opt-out of exceptions to TPM prohibition through contract.
Their final suggestion was for the Governor in Council to exercise their regulatory powers under the Copyright Act to introduce an exception to the application of TPMs in situations where they “unduly restrict competition in the aftermarket sector in which the technological protection measure is used”. The scholars note that France has implemented a similar system through its Code de la Propriete.
Editor’s Note: Following the completion of this submission, but prior IPilogue publication, the Canadian Government published the submissions from the 13 Intellectual Property Scholars.
