Video Game Streamers: Free promotion, copyright infringement, or both?

Just before New Year, a controversial piece of US legislation tucked into a COVID-19 relief package had people who stream video gameplay online concerned that their livelihood was about to be criminalized. While a careful reading of the legislation reveals that the initial reaction was unwarranted and perhaps overblown, it does raise some interesting questions about the legal status of “streamers” and the interplay between game publishers and online video content creators.

Streamers use internet platforms such as Twitch and YouTube to broadcast videos of themselves to their fans and followers. Some of the most popular streamers will play videos games on camera during the streams. These gameplay videos are sometimes referred to a “Let’s Play” videos (as in, “Let’s Play Animal Crossing” or “Let’s Play Assassin’s Creed”). They earn revenue by offering subscriptions, accepting donations from fans, promoting products and services, and selling merchandise. The videos are live streamed so viewers can interact in real time with the streamer using a chat function. Many of the videos are also stored and can be viewed on-demand later.

Protection Lawful Streaming Act

The US legislation, which is known as the Protecting Lawful Streaming Act, was sponsored by Sen. Thom Tillis and was rolled into the $2 trillion COVID relief package. Tillis’ bill is intended to make the commercial streaming of infringing content a felony offense. It was aimed at streaming services that offer pirated movies and illegally broadcast live professional sporting events. Sen. Tills claims it is narrowly tailored to target criminal organizations and not to criminalize the activity of individual streamers.

While the legislation will not criminalize the practice of streaming videogame play online, it does highlight the tension between businesses who create video games and individuals who use those games on streaming platforms to earn revenue, often without the consent of the copyright owner. According to industry research an average “professional” streamer can make between $3,000 to $5,000 (US) a month playing 40 hours a week. This does not include advertising revenue, which can generate another $250 for every 100 subscribers, paid sponsorship deals or the sale of merchandise like t-shirts.

Canadian Law

Under Canadian copyright law, when a streamer plays a computer game online and transmits the video to the public (the audience), she is engaged in the communication of the game to the public by telecommunication, which is a form of public performance, one of the exclusive rights granted to copyright owners under section 3 of the Copyright Act.

Video games, like movies and television shows, are complex bundles of copyright-projected subject matter. The computer code and any text elements are literary works, the graphics are artistic works, the score is a series of musical works. Many games include voice-acting and those voice files are considered performers’ performances that are also protected by copyright. Copyright in these diverse elements is typically owned by the publishers which earn revenue from the sale of the game, monthly subscriptions, in-game transactions, or some combination of all these elements.

While the streamer is not transmitting a copy of the game code when she plays online for an audience, she is communicating the graphics, the text, the music, and the voice actors’ performances. If this is done without the consent of the copyright owner, it could give rise to a claim of copyright infringement with the potential for statutory damages.

If its infringing, why no litigation?

So, if streamers are engaged in widespread copyright infringement, why haven’t we seen the game industry unleash a wave of litigation to stop streaming like the music industry tried to do in the early days of Napster and other file-sharing platforms? There are two possible answers: the “legal” answer and the “business” answer.

We’ll get to the “legal” answer below, but the “business” answer arises from the symbiotic nature of the streamer/game publisher relationship. Successful streamers can attract hundreds of thousands or millions of fans and generate a lot of publicity and demand for the games they play online. For a smaller, indie developer without a large marketing and promotion budget, that kind of positive attention can turn a relatively unknown title into a viral sensation selling hundreds of thousands of copies. Rather than trying to discourage online gameplay, many developers nurture their relationship with the streaming community by giving them exclusive advance access to new releases, offering free copies of games for streamers to give away to fans, and even appearing on the stream to talk about the game.

However, not all game publishers benefit equally from having their titles streamed. Watching a streamer enjoy a challenging fighting or racing game likely has a positive impact on the sales of that title. However, the same might not be true of shorter, story-driven adventure games which can often share many attributes with movies. If a streamer plays through the full story online, the audience who watches the stream might not be as likely to purchase the game themselves once they know how the story ends, especially if the nature of the game is that each gameplay experience is the same or similar each time so there is limited replay value, or if an important part of the story is based on surprise or twist endings.

This has recently led to a discussion in the industry of whether streamers should pay for licenses from game publishers to use their titles online as a way to share the revenue earned by this ancillary activity. This suggestion is generally met with a strong negative reaction, usually on Twitter, from the streaming community who point out the enormous benefit to game publishers from the promotional effect of streaming and who wave the banner of “fair use” (or “fair dealing” for those of us in Canada).

It’s copyright, so it’s complicated

The application of copyright law to streaming is certainly not straightforward. In Canada, it is not an infringement of copyright to use a work in a way that is fair dealing for the purpose of research, private study, education, parody, satire, criticism or review. It is not enough that the use is for one of these purposes; the use also has to be “fair” which is a contextual fact-specific question. Courts have developed a fairness test that looks at certain factors to determine if a particular use is fair or not. These factors include the purpose of the dealing, the character of the dealing, the amount of the dealing, alternatives to the dealing, the nature of the work, and the effect of the dealing on the work.

Not all streaming is equal under a fair dealing analysis. A 30-minute stream of a sports game with commentary about the playability would likely be found to be fair dealing for the purpose of criticism or review. A four-hour stream of the full play-through of a story-driven adventure game which offers little commentary by the streamer and reveals the twist ending, and which is carried out for profit by a commercial streamer would be less likely to be considered fair by the Court. Most actual video game streaming falls somewhere in between these two examples.

Canada’s Copyright Act offers one more wrinkle to consider – the “user-generated content exception” found in section 29.21. Under this exception, it is not an infringement of copyright for an individual (the streamer) to use an existing work (the computer game) in the creation of a new work (the Let’s Play video) and for the individual (streamer) to authorize an intermediary (YouTube or Twitch) to disseminate it (transmit it online). However, for this exception to apply the use must be for a non-commercial purpose. This means amateur streamers might be able to rely on it, but people who earn their living from the activity cannot. The use cannot also have a “substantial adverse effect” on the exploitation of the existing work (the game). In other words, if your highly popular but unmonetized Let’s Play of a game has a harmful effect on the sale of the game, the exception would not apply. The most likely case of harming sales of a game would be by spoiling plot points or twist endings, but other possibilities could exist as well.

For the time being, it looks as if most of the gaming industry will continue to tolerate and even encourage the streaming community, while the discussion of whether licensing is appropriate will continue.

Cloud Contracts: The Impact of Common Terms of Service Provisions on Intellectual Property Rights

Many people have a great deal of digital content stored “in the cloud”, often through email, social media platforms, file storage and other related services. Whether it is the storage of user-created content, such as photos, videos or documents, or content that users pay to access, such as music and e-books, the use of such services is governed by the Terms of Service (“ToS”)[1] of the relevant company (“online service provider”).  

Despite the often monetary or emotional value of such user-created content, ToS tend to be contracts of adhesion; if a person wants to use an online service provider, they generally have no option but to agree to that online service provider’s ToS. As ToS are almost always unilaterally-generated contracts where the individual has no negotiating power vis-à-vis the online service provider, the reality is that most people usually accept ToS without actually reading them. As a result, many are unaware of how the ToS affect their rights to the accounts with these service providers and the content stored in association with them, or the rights their heirs might have in this regard after they die.[2] This is particularly the case for an individual’s copyright with respect to the content that they create through or store with the online service provider.

This post provides an overview of the findings of a study from the Cloud Legal Project at Queen Mary University of London (the “study”) on some of the most common ToS provisions across major online service providers,[3] specifically with respect to the copyright that users of such online service providers have in the content that they store and/or produce with such online service providers.

ToS Terms Relating to Copyright

According to the Canadian Intellectual Property Office:

A copyright is the sole right to produce or reproduce a work or a substantial part of it in any form. It includes the right to perform the work or any substantial part of it or, in the case of a lecture, to deliver it. If the work is unpublished, copyright includes the right to publish the work or any substantial part of it

Copyright can be created in many ways. A common example is someone taking a photograph with their smartphone. Once the person creates the photo, that person holds the copyright to the photo as an artistic work. Another example could be an .mp3 file that someone creates using audio recording and production software.

In the digital world, many people store the works that they create through cloud-based online service providers, including Facebook, Dropbox and Google Drive. In its analysis of the way the ToS of major online service providers address users’ intellectual property rights, the study distinguishes between a license of copyright, which grants a temporary right to produce or reproduce the work, and an assignment of a copyright, which is an actual transfer of the copyright such that its original owner no longer retains that copyright.

The study analyzed a total of 22 ToS for online service providers that allow users to upload files to their platforms. Some of the study’s most salient findings include:

  • only 10 of the 22 ToS explicitly acknowledged that the user retains their copyright in uploaded works;
  • however, none of the ToS indicated that the user assigns any copyright to the online service provider;
  • 19 of the 22 ToS explicitly provided that the user granted a license of the copyright in uploaded works to the online service provider; and
  • of the 19 ToS that provided such licenses, 16 allowed the online service provider to re-assign the license to a third party;

In addition, the study found that the various ToS took differing approaches to the terms of such licenses. Some granted an “irrevocable” or “perpetual” license to the online service provider, while others provided that the license is terminated when a user’s account is deleted.

Copyright Exclusivity

A question in this area remains: when a user grants licenses to their copyright through an online service provider’s ToS, do such terms encumber the copyright in a way where the user can no longer grant an exclusive right to that work? While many ToS seem to indicate that the user grants a “non-exclusive” license in this regard, the problem arises when the user hopes to grant exclusive licenses to third parties.

For example, if a food photographer has posted a photo on their Instagram page, and then looks to grant a meal delivery company an exclusive license to use that photo of their food, the photo on the Instagram page would, according to Instagram’s ToS, be licensed to Instagram such that it could “host, use, distribute, modify, run, copy, publicly perform or display, translate, and create derivative works” of the photo (subject to the photographer’s privacy settings).[4] This could impact the ability of the food photographer to offer an “exclusive” license to the photo, or, even worse, they could be violating the representations and warranties an existing “exclusive” license by virtue of the photo being on Instagram prior to such granting such license.

Although Instagram’s ToS state that such a “non-exclusive” license ends  when the user’s content is deleted from their systems (i.e. when the user deletes the content individually or deletes their account),[5] this is not the case for all online service provider’s ToS, as indicated above with “irrevocable” or “perpetual” licenses. Therefore, it is possible that certain content already hosted on certain websites may never be able to be exclusively licensable, unless the copyright owner chooses to dispute such an “irrevocable” or “perpetual” license. As we all know, such disputes might be costly to resolve (i.e. through a court).

In Regulating Content on Social Media, Corinne Tan argues that “the ‘ownership’ conferred on a user over his or her content under the ToS is not meaningful, as it does not mirror the exclusive rights to which a copyright holder is ordinarily entitled”.[6] After considering the above example, a user may want to consider the scope of the licenses they are granting to online service providers, both with respect to the duration of such license and the capabilities it grants to the licensor (although often such capabilities are limitless).

Other Issues with ToS

The topic of licenses in ToS highlights, as I suggested earlier in this post, another major issue with ToS: they are almost always unilaterally produced and non-negotiable. Furthermore, it is often the case where an online service provider amends its ToS, for example, to reflect developments in its business or the law. The study found that, rather than seeking the consent or agreement of users to such changes, online service providers’ standard practice is to simply notify users of material changes and effect them without consent. A user’s continued use of the service will then be inferred to constitute assent to the amended terms. 

This issue is particularly magnified when considering that in most instances there is a significant power disparity between an online service provider, often as a large corporation with its own legal team, and the user, often as an individual with little to no legal experience.

However, courts have specifically mentioned and recognized these issues. In Canada, there is at least some jurisprudence to suggest that certain clauses in ToS are unenforceable as a result. In Douez v. Facebook Inc.,[7] the Supreme Court of Canada (“SCC”) determined that a “forum selection” clause in a ToS was unenforceable. In Douez, the clause at issue was a provision in Facebook’s Terms of Use that stated that any disputes between it and a user were to be resolved under California law. The plaintiff in Douez sought to sue Facebook under British Columbia privacy legislation, and thus sought to set aside this clause. The SCC sided with the plaintiff, citing, among other reasons, the inequality and unfairness that inherently exist with ToS.

Concluding Thoughts

The findings of the study highlight some of the issues that ToS may create for users. With an increasing number of people and organizations now storing some of their most important things on the cloud, particularly as remote work arrangements due to the COVID-19 pandemic have quickly pushed many to “go paperless”, some may, for example, not feel comfortable with providing a “perpetual” copyright license to an online service provider. So, with respect to the storage of particularly valuable intellectual property with an online service provider, it would be important to review its ToS to ensure that they do not contain any undesirable clauses.

I would like to thank Yvonne Mazurak, Student-at-Law at Fasken, for helping me write this post.


[1] Also sometimes referred to as “Terms of Use”.

[2] I have written specifically on issues around digital assets and estate planning. For example, please see my three-part series on All About Estates regarding the challenges executors, trustees face in accessing the digital assets of the deceased, as well as another series of posts on this site discussing estate planning considerations for individuals with intellectual property. 

[3] Johan David Michels, Christopher Millar and Srishti Joshi, “Beyond the Clouds, Part 1: What Cloud Contracts Say about Who Owns and Can Access Your Content” (May 11, 2019). Queen Mary University of London, School of Law Legal Studies Research Paper No. 315/2019.

[4] Instagram, “Terms of Use”, online: Instagram (20 December 2020) <https://help.instagram.com/1215086795543252>.

[5] Ibid.

[6] Corinne Tan, “Application of the Terms of Service” in Corinne Tan, Regulating Content on Social Media (London: UCL Press, 2018) 98 at 120.

[7] 2017 SCC 33, [2017] 1 SCR 751.

The Federal Court of Appeal Upholds Finding that Trademark Use Can Be Established Without a Physical Presence in Canada.

With the rise of e-commerce, many non-Canadian businesses can now advertise their services to Canadians online without having any physical presence in Canada. If these businesses have Canadian registered trademarks associated with these services, there are however important considerations for businesses wanting to properly maintain their trademarks in Canada. Unlike other forms of intellectual property, an owner of a Canadian trademark must “use” their registered mark in Canadian commerce or it may lose the protections provided by the Trademarks Act. It goes without saying that without a physical presence in Canada, it could be challenging for foreign trademark owners to prove that they are meeting the “use” requirement. The WALDORF ASTORIA case provides helpful guidance for foreign trademark owners to mitigate the risk of compromising their intellectual property.  

Recently in Miller Thomson LLP v Hilton Worldwide Holding Inc., 2020 FCA 134[1], the Federal Court of Appeal confirmed that a non-Canadian business may be able to establish “use” of its mark in Canada in association with its services, despite not having a “bricks and mortar” presence in Canada. The mark at issue in this case was the WALDORF ASTORIA trademark, registered by Hilton Worldwide Holding LLP in Canada (“Hilton”) in association with “hotel services”. Despite having this mark registered in Canada, there was no hotel operating under that name in Canada.

This case was originally before the Canadian Registrar of Trademarks, where the Registrar found that the absence of a brick-and-mortar hotel in Canada was fatal and ordered the WALDORF ASTORIA registration be removed. The Registrar’s decision was subsequently appealed to the Federal Court. On appeal, the Federal Court set aside the decision of the Registrar and concluded that a “bricks and mortar” hotel was not necessary to establish “use”, so long as Canadians obtained some tangible, meaningful benefit from the services in Canada. The Federal Court had found that hotel services encompass more than the provision of a room and that the evidence advanced by Hilton had established that there were several benefits that were available to people in Canada, over and above their eventual enjoyment of their stay in a “bricks and mortar” hotel. Moreover, the evidence established that many people in Canada had already taken advantage of such benefits.

The Federal Court of Appeal ultimately agreed with the lower court’s earlier determination, noting in its reasons that that trademark “use” requirements had to adapt to accord with 21st century commercial sales practices – i.e. sales and services in the Internet age.

The Federal Court of Appeal however cautioned that:

…bare assertions of use will not be enough, and the mere display of a mark on a website from outside of Canada will not suffice to establish use of the mark in this country in association with registered services. Moreover, the ability of individuals in Canada to passively view content on a foreign website will be insufficient to constitute use of a mark in this country. There must, at a minimum, be a sufficient degree of interactivity between trademark owner and Canadian consumer to amount to use of a mark in Canada in conjunction with services over the internet.

Based on the foregoing, it appears that for foreign trademark owners seeking trademark protection in Canada, it will be important to create a record supporting that the use of a trademark in Canada has been established. As noted by the Federal Court of Appeal, the determination as to whether a particular mark has been “used” in Canada in association with specified services is largely factual in nature. Trademark owners should appreciate that such cases will therefore most likely turn on the quality of the evidence.

The Federal Court of Appeal provided the following examples of evidence that may be persuasive in establishing the “use” of a mark in Canada as it relates to online services:

  • Website metrics demonstrating the number of times that a displaying mark has been accessed by people in Canada;
  • Evidence that the content offered by the website is stored on servers located in Canada;
  • Sales figures with respect to value of the registered services that have been provided to Canadian consumers over the internet; and  
  • Evidence that prices are listed in Canadian dollars.

Foreign trademark owners should consider these categories of evidence when designing websites to be accessed by Canadians in association with a specified service.


[1] https://decisions.fca-caf.gc.ca/fca-caf/decisions/en/item/484960/index.do

Mark D. Penner Recognized as IAM Global Leader for 2021

Fasken partner, Mark D. Penner, has been recognized in the first ever edition of the IAM Strategy 300 Global Leaders Guide. You can visit the website here to view this year’s edition.

The IAM Strategy 300 Global Leaders guide draws from the worlds of private practice, consulting and other service providers, with specialists from the major IP markets in the America’s, Europe and Asia. Together they boast a wide range of expertise in IP-intensive sectors such as high-tech and life sciences. Given the myriad strategic challenges that patent owners face throughout the world, this guide will quickly become a valuable resource for stakeholders across the IP community!

Mark’s practice focuses on all aspects of the acquisition, protection, enforcement and strategic use of a wide range of intellectual property assets in Canada and around the world.

Foreign Certificate of Registrations of Copyright may not suffice to prove ownership of copyright in Canada

Proving chain of title to a work is essential for any party wishing to assert copyright infringement. However, this is not always easy, given that the author of the work is not required to register its copyright to acquire the protection by copyright law, provided that the author is Canadian or a citizen of any of the signatory countries to the Berne Convention for the Protection of Literary and Artistic Works of September 9, 1886.[1] Further, in any civil proceeding in which a defendant puts in issue either the existence of copyright or the title of the plaintiff to it, the author shall be presumed to be the owner of the copyright unless the contrary is proven.[2] Given that copyright exists from the moment the original work is created and that the title of ownership may easily be passed around since its existence, it is important to keep a robust documentation of the chain of title of a work.

In the recent decision Lickerish, Ltd v Airg Inc,[3] a copyright infringement action regarding the unauthorized use of two photographs of a celebrity on the defendant’s website, the Federal Court found that the would-be plaintiff did not have standing to bring the copyright infringement action, given that it was unable to prove its ownership to the asserted copyright to the photographs. This is an interesting case because it speaks to (1) the insufficiency of uncertified foreign certificates of registration of copyright as evidence of ownership, and (2) the use of screen captures as evidence of copyright infringement.

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