Intellectual Property – Law is Cool The law school blog and podcast from Canada Wed, 30 Sep 2015 13:10:01 +0000 en-US hourly 1 1338880 What, What, In the Butt? Wed, 28 Dec 2011 17:47:23 +0000
Yes, this video is actually being litigated on copyright infringement grounds. Summary from Electronic Frontier Foundation,

South Park aired the “What What” parody in a 2008 episode critiquing the popularity of absurd online videos. Two years later, copyright owner Brownmark Films sued Viacom and Comedy Central, accusing South Park of infringement. A federal judge dismissed the case, calling it a clear fair use. Brownmark appealed to the 7th U.S Circuit Court of Appeals, claiming that fair use cannot be decided on a motion to dismiss, no matter how obvious. In an amicus brief filed Monday, EFF argued that Brownmark is asking for a standard that would chill free speech and encourage frivolous litigation.

Amicus brief below:

What What in the Butt

Facebook ‘Friend Poaching’ Mon, 21 Mar 2011 22:43:00 +0000

When was the last time you sent a friend request on Facebook? When was the last time you got sued for it? Complexions v Complexions Day Spa & Facebook, is, according to Santa Clara Internet Law professor Eric Goldman, the first case to involve Facebook ‘friend poaching‘.

The case is currently in front of the New York Northern District Court, and involves two spas doing business under similar trade names, and Facebook. The plaintiff spa notified Facebook of a trademark infringement, which prompted Facebook to remove the page. For this action, the  plaintiff is seeking damages in lost sales and marketing potential.

The plaintiff is further claiming that the defendant spa knowingly ‘friended’ it’s customers to the defendant spa’s own Facebook page, creating an unfair advantage for the defendant spa. For this, the plaintiff is seeking injunctive relief and monetary damages.

The case is yet to be decided, and according to Goldman, it’s likely to be the first of many such cases. Among the keen to see how this case unfolds is American University blogger, Dana Nicoletti, who notes that “it will be extremely interesting to see how the Northern District of New York treats these contentions, and how other businesses react to a decision.” Whatever the decision,  businesses will have to think twice the next time they so much as log onto Facebook.

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Access Copyright: Outrageous and Unnecessary Wed, 09 Feb 2011 00:35:14 +0000 As a UWO student (and at many other Canadian universities,) you automatically pay an annual fee to an organization called Access Copyright. An item is included in your student activity fee, and it used to be $3.38 per student per year, plus an amount based on the number of photocopies made at library photocopy machines. However, when the licence agreement expired last year, Access Copyright did not seek to renegotiate with UWO. Instead, it applied to the Copyright Board for a massive restructuring of the agreement. If the Board approves the request, Access Copyright would receive $45 per student per year. With 30,000 full-time students, this amounts to $1.35 million annually. But that’s not all. Access Copyright would also have the right to surveillance: Section 14 (4) of the proposed licence agreement states that:

The Educational Institution shall give Access Copyright, on reasonable notice, right of access through-out the Educational Institution’s premises in order to organize and carry out an audit, including full access to the Secure Network and all Course Collections.

This would include access to university email accounts.

There are a number of problems with the Access Copyright regime. First of all, every university student is presumed to be infringing copyright and this seems very unlikely given the Fair Dealing rights in the Canadian Copyright Act that expressly permit the copying of non-substantial portions of a work for the purpose of private study. As well, the university is presumed to be responsible for the presumed copyright infringement by students. This is contrary to the Supreme Court of Canada’s decision in CCH Canadian Limited v. Law Society of Upper Canada, [2004] 1 S.C.R. 339.CCD, which held that a library is NOT responsible for copyright infringement merely by providing access to photocopiers.

What is more troubling, though, is that by paying Access Copyright, our fair dealing rights become meaningless.

We are paying even though there is probably not much substantial copying taking place, and if this becomes the norm, fair dealing rights could be removed from the Copyright Act for the simple reason that no one behaves as if there is such a thing. Access Copyright denies flatly that they want to charge for non-substantial copying, but this does not square with the section 3 of the proposed licence agreement:

3. Subject to compliance with each of the conditions in Sections 4 and 5, this tariff entitles an Authorized Person for Authorized Purposes only, to
(a) make a Copy of up to ten per cent (10%) of a Repertoire Work;
(b) make a Copy of up to twenty per cent (20%) of a Repertoire Work only as part of a Course Collection; or
(c) make a Copy of a Repertoire Work that is

(i) an entire newspaper or periodical article or page,
(ii) a single short story, play, poem, essay or article,
(iii) an entire entry from an encyclopaedia, annotated bibliography, dictionary or similar reference work,
(iv) an entire reproduction of an artistic work (including a drawing, painting, print, photograph and    reproduction of a work of sculpture, an architectural work of art and a work of artistic craftsmanship), and
(v) one chapter, provided it is no more than twenty per cent (20%) of a book.

How else can this provision be interpreted? The university would be paying for permission to make non-substantial copies which are permitted without payment under the Copyright Act. We would be paying for our Fair Dealing rights.

Another problem is the bully-factor. This organization is not negotiating in good faith with the University, but threatening law suits instead and negotiating via an application to the Copyright Board – a rather passive-aggressive manoeuvre. By paying this organization, we are enabling it with massive financial resources and providing an enormous financial incentive to ‘discover’ new ways to ‘extort’ funds from university students … and the justifications can be based upon the results of spying on our email accounts.

The Access Copyright regimes treats scholarly works as if they were pop-songs broadcasted on the radio for a big fat profit when in fact University libraries are expensive, profitless resources for private study. The vast majority of scholarly works in these libraries are written by university professors and graduate students who aren’t looking for royalties. The main policy reason behind Fair Dealing rights is to prevent copyright law from inhibiting the intellectual development and sharing of knowledge within our society. The entire Access Copyright regime is an effort to push back against this reasoning. It is a kind of intellectual enclosure movement.

The University of Western is committed to this regime going forward. It proactively collected $15 per student last September on the assumption that the Copyright Board would ordain a fee of something less than $45 per student but substantially more than the $3.38 under the expired agreement. By doing so, UWO demonstrated its willingness to accept the surveillance, and the presumption of copyright infringement and the presumption of legal responsibility for the infringement.

The university has a choice. The licence agreement is optional and UWO can walk away from it. It would make much more sense to charge students a modest fee which would go to the libraries to implement procedures and negotiate licence agreements with publishers to ensure that students have the resources they need without exposing the University to the risk of law suits. If CCH has any force, Access Copyright is on very shaky legal ground. Quite simply, we don’t need Access Copyright.

NOTE: Access Copyright is trying to force all universities to sign on. Get informed & get involved. Join the FaceBook group ‘Fair Copyright Western

For more information:

What legal scholars are saying:

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Online Retailer Amazon Scores Victory in Canadian Patent Case Tue, 19 Oct 2010 12:15:22 +0000 What had become a court case that took over ten years to resolve ended Oct 14 with the online giant emerging victorious. In 1998, Amazon filed to patent its one-click shopping method, which enables users to shop online quickly and efficiently by saving customers’ personal information such that they don’t have to re-enter it in subsequent purchases.

While the online retailer successfully patented one-click shopping in the United States, it encountered opposition in Canada. Canada’s Commissioner of Patents denied the patent application on the grounds that a business method could not be patented under Canadian law.

Amazon subsequently appealed the commissioner’s decision in a federal court. According to a recent article, Justice Michael Phelan ruled that business methods could indeed be considered patentable material under certain circumstances. The commissioner justified her initial decision to deny the patent application by invoking the patent guideline that requires the invention or technology to be “the change of character or condition in a physical object.” Phelan noted that the commissioner had inordinately emphasized the “physical” component in her decision to deny the application, arguing that what makes an invention patent-eligible above al is its innovative practical applications and commercial usefulness.

Phelan moreover castigated the commissioner for deferring to U.K and European patent law, which, he asserted is based on exclusions whereas Canadian, Australian, and American patent law primarily hinges its patent regulations on the definition of invention.

While it is as yet unclear how Phelan’s decision might affect innovation and litigation in Canada in the future, it is possible and expected that the commissioner will file to appeal the decision. A Toronto Sun article reported on the story, quoting University of Ottawa law professor Michael Gist, who stated, “There are those that want to see that happen, who argue it can be helpful from an innovation perspective. There are many others who disagree. What they see is abuses of the patent system in the U.S.”

Judge Phelan’s full decision on the case can be found here in PDF format.


This guest post is contributed by Olivia Coleman, who writes on the topics of online colleges and universities.  She welcomes your comments at her email Id: olivia.coleman33

Prisoner’s copyright Wed, 01 Sep 2010 03:38:18 +0000 Inmate rights are a lost cause for an average politician. If anything, legislators are more likely to push for harsher sentences, more hurdles to parole, and less money for rehabilitation. Of course, history knows prisoners who survived jail through spirituality or by creating works of arts. But one Canadian court case shows that the state may deprive prisoners even of their rights to intellectual property created in the slammer.

John Hawley was sentenced to ten years in prison for armed robberies committed in his mid-twenties. After he was released on parole, John started a “successful commercial art and design studio in Toronto” (Hawley v. Canada, [1990] F.C.J. No. 337). When he served a part of his sentence in Frontenac Institution, a minimum security prison, he created a large painting entitled “Mount Whymper.” This work of art became the subject of a lawsuit he brought against the federal government claiming copyright in “Mount Whymper.”

The Federal Court denied his claim. It found that John was an employee of the Crown at all material times. The judge looked at some of the traditional factors showing supervision and control of John’s work by the prison authorities. He found that John had a work supervisor and that he painted as part of his prison employment. Section 13(3) of the Copyright Act is unambiguous in denying an otherwise strong protection of the creator in cases of works produced in the course of employment. The employer is the IP owner, period.

But was John really a federal employee? According to the court, if you’re in prison, you are, at least for the purposes of IP ownership. It ultimately doesn’t matter that your employment is forced and that your spare time is artificially limited and controlled. To quote the judge: “Frontenac Institution policies, as found in similar institutions, provide only circumscribed conditions under which an inmate can profit or gain from his own labours exerted during leisure hours.” It looks like the flip side of prison rehabilitation is coerced federal employment and consequent government ownership of any works of art created by the inmate.

Oscar Wilde wrote De Profundis in gaol. Aleksandr Solzhenitsyn composed poems in the Gulag. If they did it in Canadian correctional institutions, would our federal government claim copyright in their works too?

Pulat Yunusov

(Post sponsored by AdviceScene)

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Call for Participation: Cyber-Surveillance in Everyday Life: An international workshop Wed, 25 Aug 2010 23:24:00 +0000 Call for Participation

Cyber-Surveillance in Everyday Life: An international workshop

May 12-15, 2011, University of Toronto, Canada

Digitally mediated surveillance (DMS) is an increasingly prevalent, but still largely invisible, aspect of daily life. As we work, play and negotiate public and private spaces, on-line and off, we produce a growing stream of personal digital data of interest to unseen others. CCTV cameras hosted by private and public actors survey and record our movements in public space, as well as in the workplace. Corporate interests track our behaviour as we navigate both social and transactional cyberspaces, data mining our digital doubles and packaging users as commodities for sale to the highest bidder. Governments continue to collect personal information on-line with unclear guidelines for retention and use, while law enforcement increasingly use internet technology to monitor not only criminals but activists and political dissidents as well, with worrisome implications for democracy.

This international workshop brings together researchers, advocates, activists and artists working on the many aspects of cyber-surveillance, particularly as it pervades and mediates social life. This workshop will appeal to those interested in the surveillance aspects of topics such as the following, especially as they raise broader themes and issues that characterize the cyber-surveillance terrain more widely:

  • social networking (practices & platforms)
  • search engines
  • behavioural advertising/targeted marketing
  • monitoring and analysis techniques (facial recognition, RFID, video analytics, data mining)
  • Internet surveillance (deep packet inspection, backbone intercepts)
  • resistance (actors, practices, technologies)

A central concern is to better understand DMS practices, making them more publicly visible and democratically accountable. To do so, we must comprehend what constitutes DMS, delineating parameters for research and analysis. We must further explore the way citizens and consumers experience, engage with and respond to digitally mediated surveillance. Finally, we must develop alliances, responses and counterstrategies to deal with the ongoing creep of digitally mediated surveillance in everyday life.

The workshop adopts a novel structure, mainly comprising a series of themed panels organized to address compelling questions arising around digitally mediated surveillance that cut across the topics listed above. Some illustrative examples:

  1. We regularly hear about ‘cyber-surveillance’, ‘cyber-security’, and ‘cyber-threats’. What constitutes cyber-surveillance, and what are the empirical and theoretical difficulties in establishing a practical understanding of cyber-surveillance? Is the enterprise of developing a definition useful, or condemned to analytic confusion?
  2. What are the motives and strategies of key DMS actors (e.g. surveillance equipment/systems/ strategy/”solutions” providers; police/law enforcement/security agencies; data aggregation brokers; digital infrastructure providers); oversight/regulatory/data protection agencies; civil society organizations, and user/citizens?
  3. What are the relationships among key DMS actors (e.g. between social networking site providers)? Between marketers (e.g. Facebook and DoubleClick)? Between digital infrastructure providers and law enforcement (e.g. lawful access)?
  4. What business models are enterprises pursuing that promote DMS in a variety of areas, including social networking, location tracking, ID’d transactions etc. What can we expect of DMS in the coming years? What new risks and opportunities are likely?
  5. What do people know about the DMS practices and risks they are exposed to in everyday life? What are people’s attitudes to these practices and risks?
  6. What are the politics of DMS; who is active? What are their primary interests, what are the possible lines of contention and prospective alliances? What are the promising intervention points and alliances that can promote a more democratically accountable surveillance?
  7. What is the relationship between DMS and privacy? Are privacy policies legitimating DMS? Is a re-evaluation of traditional information privacy principles required in light of new and emergent online practices, such as social networking and others?
  8. Do deep packet inspection and other surveillance techniques and practices of internet service providers (ISP) threaten personal privacy?
  9. How do new technical configurations promote surveillance and challenge privacy? For example, do cloud computing applications pose a greater threat to personal privacy than the client/server model? How do mobile devices and geo-location promote surveillance of individuals?
  10. How do the multiple jurisdictions of internet data storage and exchange affect the application of national/international data protection laws?
  11. What is the role of advocacy/activist movements in challenging cyber-surveillance?

In conjunction with the workshop there will be a combination of public events on the theme of cyber-surveillance in everyday life:

  • poster session, for presenting and discussing provocative ideas and works in progress
  • public lecture or debate
  • art exhibition/installation(s)

We invite 500 word abstracts of research papers, position statements, short presentations, works in progress, posters, demonstrations, installations. Each abstract should:

  • address explicitly one or more “burning questions” related to digitally-mediated surveillance in everyday life, such as those mentioned above.
  • indicate the form of intended contribution (i.e. research paper, position statement, short presentation, work in progress, poster, demonstration, installation)

The workshop will consist of about 40 participants, at least half of whom will be presenters listed on the published program. Funds will be available to support the participation of representatives of civil society organizations.

Accepted research paper authors will be invited to submit a full paper (~6000 words) for presentation and discussion in a multi-party panel session. All accepted submissions will be posted publicly. A selection of papers will be invited for revision and academic publication in a special issue of an open-access, refereed journal such as Surveillance and Society.

In order to facilitate a more holistic conversation, one that reaches beyond academia, we also invite critical position statements, short presentations, works-in-progress, interactive demonstrations, and artistic interpretations of the meaning and import of cyber-surveillance in everyday life. These will be included in the panel sessions or grouped by theme in concurrent ‘birds-of-a-feather’ sessions designed to tease out, more interactively and informally, emergent questions, problems, ideas and future directions. This BoF track is meant to be flexible and contemporary, welcoming a variety of genres.

Instructions for making submissions will be available on the workshop website by Sept 1.

See also an accompanying Call for Annotated Bibliographies, aimed at providing background materials useful to workshop participants as well as more widely.



  • Oct. 1: Abstracts (500 words) for research papers, position statements, and other ‘birds-of-a-feather’ submissions
  • Nov. 15: Notification to authors of accepted research papers, position statements, etc. Abstracts posted to web.


  • Feb. 1: Abstracts (500 words) for posters
  • Mar. 1: Notification to authors of accepted posters.
  • Apr. 1: Full research papers (5-6000 words) due, and posted to web.
  • May 12-15 Workshop

Sponsored by: The New Transparency – Surveillance and Social Sorting.

International Program Committee: Jeffrey Chester (Center for Digital Democracy), Roger Clarke (Australian Privacy Foundation), Gus Hosein (Privacy International, London School of Economics), Helen Nissenbaum (New York University), Charles Raab (University of Edinburgh) and Priscilla Regan (George Mason University)

Organizing Committee: Colin Bennett, Andrew Clement, Kate Milberry & Chris Parsons.

Implications of Social Media in IP Law Tue, 20 Jul 2010 16:10:12 +0000 Recent presentation by Blaine Bettinger of Bond, Schoeneck & King, PLLC

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The stakes of copyright reform Thu, 17 Jun 2010 18:50:59 +0000 Not many government bills cause so much debate as C-32—the legislation to amend Canada’s Copyright Act—introduced on June 2, 2010. One of C-32’s most contentious innovations is a complete ban on bypassing digital locks on electronic content. James Moore, a federal Minister, said that C-32 offered “a common-sense balance between the interests of consumers and the rights of the creative community.” But his opponents believe Moore’s “common sense” will empower copyright holders and take away traditional rights of consumers.

C-32 is not the first attempt to revise Canada’s Copyright Act. The most recent reform effort began during the previous federal government in 2005. C-32 predecessors, Bills C-60 and C-61, died as a result of a collapsed government and a dissolved parliament. Many opposed the reforms, and Michael Geist, a University of Ottawa law professor, became an intellectual leader of the protest movement.

The government has said the current law is outdated. One letter sent to constituents mentioned that “Canada has been placed on piracy watch lists and our intellectual property protections are compared with those of countries like China, Russia and Dubai.” The government justified the reform by the need to comply with international treaties that it signed on behalf of Canada. There are also allegations that the Canadian government acted under pressure from the US government and the copyright lobby.

This reform will decide issues that ultimately concern everyone. Copyright is an exclusive right to copy or distribute a work. The flip side of someone’s copyright is everyone’s duty to respect it by not copying or distributing the copyright holder’s work without permission. Pretty much any original product of human expression is a work protected by copyright, including movies, music, books, and even your emails.

Copyright’s prohibition on copying would be draconian if some exceptions didn’t exist. Traditionally, “fair dealing” is one. The law has entitled us to copy parts of someone’s work for criticism, review, study, or similar activities. Just like copyright is a right of content owners against content consumers, fair dealing is a right of consumers against owners. Quoting from books, showing films clips, playing song excerpts, photocopying a few pages from a journal are essential to the development of arts and science and to our self-reflection as a society. If we can’t copy anything, we can’t spread information, and curbing the flow of information with constant payments to copyright holders will curb ideas and free expression. Fair dealing is important, and it is our right.

Copyright owners’ or their partners use technological protection measures (TPMs) to limit our right to fair dealing. They can encrypt their content so we can’t copy it. Most DVD films are an example. Owners can use proprietary formats that only sanctioned technology can access. Amazon does it with its e-books, which only Amazon Kindle can open. Hardware makers can restrict their devices to accept only permitted content. Apple screens each and every iPhone application before allowing it into its App Store.

You would expect the law to protect our traditional rights to fair dealing in those cases. And in some countries, to take the example of mobile phone locks, the law regulates or prohibits this practice. But in most countries, including Canada, the law doesn’t stop copyright owners or their partners from locking content or devices up. Such locks would make the right to fair dealing meaningless if circumvention technologies didn’t exist. They allow consumers to bypass digital locks on electronic content.

The big deal about C-32 is that it bans circumvention under penalty of fines or jail. Not only does C-32 ignore TMPs’ gutting of fair dealing rights, but it also punishes those using circumvention for fair dealing. C-32 turns consumers’ fair dealing rights into privileges granted at copyright owners’ discretion. If owners choose to unlock their content, fair dealing is possible. If they use TPMs, it’s not. If C-32 is passed, the independent statutory right to fair dealing will cease to exist.

Some people use circumvention to make illegal copies of movies, music, software, etc. But to choke a long-established right because the entertainment industry loses profits is an overkill. Go after illegal distributors, strengthen enforcement of existing laws but don’t give the copyright lobby powers to regulate fair dealing. Do we as a society want to give so much control over information flow, and by extension essentially over thought and expression, to an industry group?

Pulat Yunusov

(Post sponsored by AdviceScene)

Copyright reform in Canada: Op-Ed Fri, 11 Jun 2010 22:02:36 +0000 Industry Minister Tony Clement knows only one way to write copyright laws for the country: heavyhandedly … Read the entire June 11th commentary at the Vancouver Sun

The problem with electronic books Tue, 04 May 2010 18:55:32 +0000 I love my Kindle. I love this thin, light tablet that I can read both at the desk and in bed. I love the ease of getting new books, and I love when the fresh issue of The New Yorker downloads itself. I have read more books in the last year because of the Kindle, but I also paid more for books that I otherwise would have borrowed from the library. On the balance, I think ebooks are great and the way of the future, but we must watch out for some problems with those ebooks that use closed, proprietary formats.

Regardless of format, ebooks have some compelling advantages over traditional printed books. First, ebooks can last infinitely. With printed books, it is entirely conceivable that a rare, out-of-print edition will simply disappear because its physical form is weak and vulnerable to wear and destruction. Ebooks are easy to back up. The cost of making each additional copy is practically zero. Ebooks after all are computer files like Word documents or JPEG images. That’s why ebooks are also enormously portable. A thousand-volume paper-based library is to a thousand ebooks as an elephant is to a pet lizard. The publishing costs are also much lower for new books because authors create them in an electronic form, and there is no need to typeset them or to buy thousands of pounds of paper to print them. There is also no need for expensive brick-and-mortar stores with a large sales staff. Ebooks are sold or given away for free online. This is especially handy if a single corporation dominates your country’s printed book market. In fact, anyone can publish an ebook online potentially reaching millions at a relatively miniscule cost. Finally, think of all the trees ebooks save.

But there are serious problems with ebooks, mostly when they come in closed, proprietary formats. A closed format means that its owner (e.g. a book distributor like Amazon) controls what you can do with the book. The proprietary format owner can hide the details of how the format works making it more difficult to build alternative ebook readers. For example, opening Word documents with non-Microsoft software is not as perfect as opening them with Microsoft Word. But most text editors are equally good at manipulating plain text or HTML files, which are open formats. The ebook format owner can enforce its control with the law (e.g. patents) or technology (e.g. encryption). In some jurisdictions, it is also unlawful to circumvent encryption of proprietary-format media. Amazon protects many of the books it sells with such technology also known as Digital Rights Management (DRM).

Because many ebooks have closed formats, publishers appear to license books to readers rather than sell them. It’s easier to control use of a licensed electronic product than of printed, physical books. We can’t easily share proprietary-format, protected ebooks. You can’t just email an ebook you bought from Amazon to your friend. Amazon locks each protected book to the Kindle of the person who bought it. Your friend can’t read your ebook on his or her Kindle. It’s also harder to overcome regional restrictions. Before, if a publisher sold a book only in the US, you could still bring it to Canada. Now, publishers can make it harder through DRM. Publishers can also use DRM to control libraries or to exclude them from certain books completely assuming some books are available only in electronic format. You can’t easily photocopy a page from an ebook if it’s in a closed format. Of course, if it uses an open format and it’s not DRM-protected, you can copy any text from the book anywhere and any number of times taking full advantage of its electronic nature. In some cases, if the book is in a proprietary format, the publisher or distributor can even delete your book remotely. The closed format and the need to protect digital content also strips most buyers of their anonymity. You cannot buy a book online anonymously. Usually, the book distributor has a record of every book you purchase. This could chill freedom of thought in a future where all ebooks are in a closed format because people would hesitate to buy books seen as dangerous to their reputation.

Finally, closed formats live only as long as their corporate owners. As I was enjoying The Black Swan on my Kindle last night, I wondered what would happen to my copy if Amazon were to go under. The reading device would eventually break down, and its battery would stop functioning even sooner. I would still be able to read the book with Kindle software on my Mac, but if Amazon disappeared, its software would eventually stop working on future computers. At the end, I would be left with a useless file that no one can read.  It’s not a huge loss for a $10 book, but what if I invested $10,000 in proprietary-format ebooks? What if some books are available only electronically and only through a single distributor in the future? Is it so far-fetched? Or is it far-fetched that a large bookseller could vanish one day? With closed, proprietary ebook formats, we could end up with a single point of failure in not so distant future endangering our investment in books and our literary heritage.

Pulat Yunusov

(Post sponsored by AdviceScene)

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