II. Copyright
Anthony Rosborough and Lucie Guibault
A. Introduction
Copyright protects literary, dramatic, musical, artistic, and scientific works. Among the countless works protected by copyright law, one can think of the Beatles songs, the Star Wars movies, the Harry Potter book series, Microsoft Office Suite, World of Warcraft game, or Google Maps. But copyright does not protect only commercially successful works. Whether published or unpublished, popular or unpopular, beautiful or ugly, copyright protection arises as soon as an original work is created. Copyright is the sole right of the owner to authorize or prohibit the use of their works, save for the exceptions permitted by law.
While the first copyright law was adopted in England at the beginning of the 18th century, most modern copyright acts in the world were enacted around the turn of the 20th century. The protection granted remained relatively unchanged for decades, until technological developments (most notably computers and the internet) and international harmonization efforts required legislative amendments to be made. The cumulative result is a complex set of rules through which protection extends to a wider range of subject matter, with respect to broader exclusive rights, for a longer period of time. Among the new categories of subject matter covered by the Copyright Act, are performers’ performances, sound recordings and broadcast signals; the ensuing rights on these types of subject matter are known as ‘related’ or ‘neighbouring’ rights. It is important to note at the outset that no person is entitled to copyright otherwise than under and in accordance with the Canadian Copyright Act, as it is interpreted by the courts.
This chapter provides a comprehensive overview of Canada’s copyright regime. Following a discussion on the justifications, history, international and national development in this introductory section, the chapter describes in detail the various components of the copyright protection, e.g. the concept of protectable subject matter, making the distinction between works of authorship and other subject matter (B.), the requirements for protection (C.), the concepts of authorship and ownership (D.), economic rights (E.), moral rights (F.), fair dealing and other exceptions (G.), and technological protection measures and rights management information (H.). The last section (I.) shortly discusses the role and functioning of collective rights management organizations, as well as that of the Copyright Board of Canada.
1. Copyright Theory
Why does copyright law exist at all? Theorists and policy makers have pondered on this question in myriad ways, finding influence from numerous theories and philosophical traditions. In surveying the theories and justifications presented in the General Introduction to this book, consider the following two examples of human creativity and expression in weighing the purpose and merits of the copyright system:
Example 1: “Who’s Afraid of Red, Yellow and Blue?”, Barnett Newman (1967)
Between 1966 and 1970, abstract artist Barnett Newman painted four large paintings using large rectangular sections of red, yellow and blue. The paintings were created without an intended goal or end result. The only objective on the part of Newman was for the result to be asymmetrical. The pieces in this series are held in separate collections, including the Stedelijk Museum in Amsterdam.
The above image is of the first of Newman’s works in this series, “Who’s Afraid of Red, Yellow and Blue I”.
Who’s Afraid of Red, Yellow and Blue is widely recognised as a pivotal piece of abstract art. Some art historians have remarked that the work constitutes a comment on prior abstract paintings that was highly critical of the movement’s predecessors. One artistic aim thought to be touted by Newman at the time of the work’s creation was to confront viewers with a bold arrangement of colour in way that embodies power and security. This was understood as a departure from prior abstract artists who utilised much more subdued colours and shapes in their works.
According to Wikimedia Commons, this image is now part of the public domain. However, see below the section on the idea/expression dichotomy for an explanation of why this may not be the case.
Despite these rather sophisticated observations of art historians and commentators, one can question the degree to which the protection of such works is consistent with the purposes and objectives of copyright protection. After all, their authors utilise relatively common elements of simple colours and shapes. Yet, despite the potential contention that this work may lack originality, it is protected by copyright as an artistic work. It is worth contrasting this dynamic with the following example below.
Example 2: Sand Mandala
In the Tibetan Buddhist tradition, monks ritualistically create a type of painting made from coloured sand. Mandalas are incredibly time intensive projects with a spiritual significance, featuring highly detailed patterns. Often mandalas can take multiple individuals several weeks to complete. The sand is applied using myriad small tools to achieve the desired patterns.
Ritualistically, mandalas are dismantled and destroyed after their completion. The destruction of mandalas is intended to symbolise the Buddhist doctrinal belief in the transitory nature of material life. Upon dismantling the mandalas, the sand is collected in jars which are wrapped in silk, transported to a body of water, and released back into nature. The release and redistribution of the sand from the mandala is intended to symbolise the temporary nature of life and the world.
Despite the significant degree of time, effort, creativity, and the cultural and religious importance of mandalas to those who create them, they are not protected by copyright. Photographs taken of mandalas or other forms of media which permanently fix the mandala in some tangible form will attract copyright protection, however, the transitory nature of these art pieces preclude copyright protection. In the section on fixation in copyright law, the reasons for why mandalas are generally not protected by copyright is further elaborated upon.
The differential treatment given to Who’s Afraid of Red, Yellow and Blue and sand mandalas by the copyright system may seem arbitrary, and to some readers, unfair. Why is it that seemingly simple arrangement of colours can attract protection while an incredibly labour-intensive, culturally significant, and creative exercise would not?
The answer to this question is found in both the theoretical justifications for copyright (see the General Introduction chapter for a further discussion of these theories) as well as its objectives. These two aspects of copyright are not entirely distinct. The theoretical lens through which we view the purpose of the copyright system informs its priorities, scope and limitations.
II. The Objectives of Canadian Copyright Law
One might find it surprising that the Act contains no explicit mention of the purposes or objectives of Canadian copyright law. To a large extent, this task has been left to the courts over the past several decades. Beyond relatively vague references to the importance of “protecting authors”, Canadian copyright policy had been left without clear direction until the so-called “trilogy” of Supreme Court of Canada cases decided between 2002 and 2004.
The three cases described in textboxes below illustrate the point repeatedly made by the Supreme Court that the Copyright Act seeks to establish a balance between promoting the public interest in the encouragement and dissemination of works of the arts and intellect and obtaining a just reward for the creator. Copyright protection should be such that it prevents someone other than the creator from appropriating whatever benefits may be generated through the exploitation of the rights on the work. On the other hand, the system must also enable public access to and dissemination of artistic and intellectual works, which enrich society and often provide users with the tools and inspiration to generate works of their own.
The first of the trilogy cases is
[30] The Copyright Act is usually presented as a balance between promoting the public interest in the encouragement and dissemination of works of the arts and intellect and obtaining a just reward for the creator (or, more accurately, to prevent someone other than the creator from appropriating whatever benefits may be generated)…
[31] The proper balance among these and other public policy objectives lies not only in recognizing the creator’s rights but in giving due weight to their limited nature. In crassly economic terms it would be as inefficient to overcompensate artists and authors for the right of reproduction as it would be self-defeating to undercompensate them. Once an authorized copy of a work is sold to a member of the public, it is generally for the purchaser, not the author, to determine what happens to it.
[32] Excessive control by holders of copyrights and other forms of intellectual property may unduly limit the ability of the public domain to incorporate and embellish creative innovation in the long-term interests of society as a whole, or create practical obstacles to proper utilization. This is reflected in the exceptions to copyright infringement enumerated in ss. 29 to 32.2, which seek to protect the public domain in traditional ways such as fair dealing for the purpose of criticism or review and to add new protections to reflect new technology, such as limited computer program reproduction and “ephemeral recordings” in connection with live performances.
From these few paragraphs, we detect a clear utilitarian underpinning to Canadian copyright law. On the one hand, the regime must strive to incentivise creativity and protect the works of those who choose to create. Incentives and rewards complement one another. On the other hand, these rights must be limited; it would be unfair that the author receive more than their just reward or necessary incentive. The enrichment of the public domain requires that copyright not be used to hinder future creative innovation and the long-term interests of society. The limit set in the Théberge case consisted in the Court’s refusal to find infringement of the reproduction right where no new copy of the work had been made. Reaching a different conclusion would have been for the Court the equivalent of over-compensating the author for their creative activity.
CCH Canadian Ltd. v Law Society of Upper Canada, 2004 SCC 13
The second of the trilogy cases was CCH. This is one of the most widely-cited cases in Canadian copyright law. Students will undoubtedly become familiar with it for its articulation of the fair dealing framework in significant detail. The case involved facts familiar to many law students. The Great Library as Osgoode Hall in Toronto offered a request-based photocopy service where library visitors could obtain copies of various legal materials. In relying on their copyright, the publisher CCH launched an action against the Law Society of Upper Canada for infringement. The dispute eventually made its way to the Supreme Court of Canada.
The SCC’s decision is noteworthy for many different reasons. When it comes to the purposes and objectives of Canadian copyright law, the Court continued down the path laid by
[23] As mentioned, in Théberge,this Court stated that the purpose of copyright law was to balance the public interest in promoting the encouragement and dissemination of works of the arts and intellect and obtaining a just reward for the creator. When courts adopt a standard of originality requiring only that something be more than a mere copy or that someone simply show industriousness to ground copyright in a work, they tip the scale in favour of the author’s or creator’s rights, at the loss of society’s interest in maintaining a robust public domain that could help foster future creative innovation. By way of contrast, when an author must exercise skill and judgment to ground originality in a work, there is a safeguard against the author being overcompensated for his or her work. This helps ensure that there is room for the public domain to flourish as others are able to produce new works by building on the ideas and information contained in the works of others. [emphasis added; sources omitted]
[24] Requiring that an original work be the product of an exercise of skill and judgment is a workable yet fair standard. The “sweat of the brow” approach to originality is too low a standard. It shifts the balance of copyright protection too far in favour of the owner’s rights, and fails to allow copyright to protect the public’s interest in maximizing the production and dissemination of intellectual works. On the other hand, the creativity standard of originality is too high. A creativity standard implies that something must be novel or non-obvious — concepts more properly associated with patent law than copyright law. By way of contrast, a standard requiring the exercise of skill and judgment in the production of a work avoids these difficulties and provides a workable and appropriate standard for copyright protection that is consistent with the policy objectives of the Copyright Act.
(…)
[48] Before reviewing the scope of the fair dealing exception under the Copyright Act, it is important to clarify some general considerations about exceptions to copyright infringement. Procedurally, a defendant is required to prove that his or her dealing with a work has been fair; however, the fair dealing exception is perhaps more properly understood as an integral part of the Copyright Act than simply a defence. Any act falling within the fair dealing exception will not be an infringement of copyright. The fair dealing exception, like other exceptions in the Copyright Act, is a user’s right. In order to maintain the proper balance between the rights of a copyright owner and users’ interests, it must not be interpreted restrictively. As Professor Vaver, supra, has explained, at p. 171: “User rights are not just loopholes. Both owner rights and user rights should therefore be given the fair and balanced reading that befits remedial legislation.”
Reiterating the need to reach a balance between the public interest in promoting the encouragement and dissemination of works of the arts and intellect and obtaining a just reward for the creator, the Court discussed two of the essential components of the balance’s equation: the concept of originality and the fair dealing defence.
With respect to the first component, the Court was careful, when determining the standard of protection, not to allow rights owners to claim protection over non-original subject matter, as this would have a detrimental effect on future creators. With respect to the second component, the Court in CCH made a very bold and consequential statement that echoed far beyond the Canadian boundaries: nowhere else in the world has a court ever made a comparable declaration calling exceptions in the Copyright Act to be a user’s right. The importance of this statement cannot be overestimated: declaring exceptions to be users’ rights implies that these rights are not subservient to the copyright owners’ rights and that both rights (the owner’s and the user’s) must be analysed on equal footing. Only then can the copyright regime’s balance between disseminating works and obtaining a just reward for the creator be truly achieved.
Canadian Ass’n of Internet Providers v. Society of Composers, Authors and Music Publishers of Canada, 2004 SCC 45
The final case of the Trilogy is SOCAN v CAIP. At issue in this case was the liability of internet service providers (“ISPs”) for storing copyright protected materials on their servers. On a technical level, when users share or distribute infringing copies of copyright works online, ISPs incidentally store and provide access to these materials on their servers. This fact was the basis for a dispute launched by SOCAN, alleging that ISPs should pay royalties to SOCAN’s members for these reproductions.
The primary focus of the dispute was the “intermediary exception” at section 2.4(1)(b) of the Act which shields ISPs in these types of circumstances. This exception was intended to apply to intermediaries like ISPs who merely relay protected materials rather than store them on their own servers. This prompted the Supreme Court of Canada to both interpret the intermediary exception as well as comment more broadly on the purposes and objectives of Canadian copyright law.
In its decision, the Court found that the caching of the protected copies did not change the nature of the exception. ISPs were to be shielded for liability and not considered parties to infringing communications held on their networks. What is important for better understanding the purposes and objectives of Canadian copyright law is why the Court took this approach. Writing for the Court, Justice Binnie made it clear that this reasoning was based largely in an economic analysis:
“[92] Section 2.4(1)(b) of the Copyright Act provides that participants in a telecommunication who only provide “the means of telecommunication necessary” are deemed not to be communicators. The provision is not a loophole but is an important element of the balance struck by the statutory copyright scheme… In this context, the word “necessary” is satisfied if the means are reasonably useful and proper to achieve the benefits of enhanced economy and efficiency. The “means” include all software connection equipment, connectivity services, hosting and other facilities and services without which such communication would not occur. So long as an Internet intermediary does not itself engage in acts that relate to the content of the communication, but confines itself to providing “a conduit” for information communicated by others, then it will fall within s. 2.4(1)(b). The attributes of such a “conduit” include a lack of actual knowledge of the infringing contents, and the impracticality (both technical and economic) of monitoring the vast amount of material moving through the Internet…”
By interpreting the exception in the context of economy and efficiency, the Court clarified an important aspect about Canadian copyright law. In the end, the law is not there to protect authors or copyright owners at all costs. The law is there, largely to incentivise creation for the public benefit. Protection is part of that larger objective, but it is far from the primary or overarching purpose of the law.
The Trilogy of cases, with CCH as the beacon, has long stood as a key source of determining the purposes and objectives of Canadian copyright law. The Supreme Court does not hesitate to reiterate these principles whenever the occasion arises, such as in Keatley Surveying Ltd v Teranet .
Keatley Surveying Ltd v Teranet Inc., 2019 SCC 43
The Province of Ontario operates a land registry which offers survey plans for access and download. The registry is operated by Teranet Inc. Keatley Surveying is a surveying company that sought to bring a class action against Teranet for reproducing survey plans in the registry. The common issue between the parties was whether the survey plans were protected by Crown copyright under section 12 of the Act.
The dispute served as an opportunity for the Supreme Court of Canada to provide an update on the purposes and objectives of Canadian copyright law. Justice Abella, writing for the majority, writes:
[44] This Court’s post-Théberge jurisprudence has sought to calibrate the appropriate balance between creators’ rights and users’ rights. This balance infused the Court’s treatment of fair dealing in CCH, for example, where McLachlin C.J. noted that “the fair dealing exception is perhaps more properly understood as an integral part of the Copyright Act than simply a defence . . . . The fair dealing exception, like other exceptions in the Copyright Act, is a user’s right”…
[45] In Society of Composers, Authors and Music Publishers of Canada v. Bell Canada, 2012 SCC 36, [2012] 2 S.C.R. 326(SOCAN), and Alberta (Education) v. Canadian Copyright Licensing Agency (Access Copyright), 2012 SCC 37, [2012] 2 S.C.R. 345, the Court confirmed that fair dealing — and users’ rights — are to be given a large and liberal interpretation. In SOCAN, the Court emphasized the vital role played by users’ rights in promoting the public interest. The ability to access and use “works” within the meaning of the Copyright Act, are “central to developing a robustly cultured and intellectual public domain”…
[46] Fair dealing is, of course, only one component of Canada’s copyright law. It is, however, an emblematic one as it presents a clear snapshot of the general approach to copyright law in Canada — an approach which balances the rights of creators of works and their users…
Justice Abella’s summary of the law’s development is telling. It shows that since the early intimations of the balance to be struck in Canadian copyright law from the trilogy cases, a complementary framework of rights and principles has developed. These are user rights. This is a recognition that a robust public domain does not happen by accident. It requires careful nourishing and protection from the law, and this too is part of the purposes and objectives of Canadian copyright law.
III. History and International Harmonisation of Copyright
a. History
As alluded to above, Canadian copyright law derives primarily from English copyright law, which in turn owes its development to the introduction of the printing press to England in the late 15th century. With the increase in the use of printing presses, authorities in the United Kingdom sought to control the publication of books by granting printers a near monopoly on publishing in England. This was one of the earliest examples of technological advancement resulting in the progressive development of copyright laws. It led to the UK Licensing Act of 1662. It did not aim to protect publishers, let alone authors, but rather to ensure a certain government censorship over the publications in circulation. The Licensing Act established a register of licensed books to be administered by the Stationers’ Company, a type of guild, which consisted of a group of printers with the authority to censor publications. The 1662 Act expired in 1695, leading to a relaxation of government censorship, and in 1710 Parliament enacted the Statute of Anne to address the concerns of English booksellers and printers. By moving beyond mere censorship and into a regime of property rights, the Statute of Anne is widely credited for being the earliest iteration of modern copyright legislation.
The Statute of Anne established the longstanding copyright principles of authors’ ownership of copyright and a fixed term of protection of copyrighted works. It provided for a fourteen-year term of protection, and renewable for fourteen more if the author was alive upon expiration of the initial term. By imposing these measures, the Statute of Anne prevented a monopoly on the part of the booksellers. In limiting the term of copyright, the Statute also created a “public domain” for literature. The Statute also ensured that once a published work was purchased, the copyright owner no longer had control over its use or sale to a third party. This latter tenet of copyright policy would later become known as the principle of “exhaustion”.
As foundational as the Statute of Anne was for the overall development of copyright law, some key dimensions of modern copyright laws had not yet coalesced. While the Statute did provide for an author’s copyright, the benefit of this right was minimal because in order to be paid for a work, an author had to first assign it to a bookseller or publisher. As such, the first iteration of copyright law envisioned by the Statute of Anne placed publishers in an influential and essential position in the overall framework of rights. To use an analogy to real property law, the rights envisioned by the Statute of Anne were occasioned by significant restraints on alienation.
b. International Harmonisation
Despite the existence of numerous multilateral and bilateral agreements affecting the development of copyright around the world, the implementation and enforcement of copyright protection remains a matter of national jurisdiction. As a corollary, no creative or artistic work is capable of automatic “international protection”. Rather, copyright must be asserted by the rights holder in each relevant jurisdiction.
Nevertheless, international instruments have played a significant role in shaping standards of protection and the extent of rights under the copyright umbrella. Further, reforms to national legislation in Canada and in other countries have been influenced strongly by these developments at the international level. To better understand the relationship between international agreements and Canadian copyright law, key international instruments and their context are presented below:
Berne Convention for the Protection of Literary and Artistic Works (1886)
The Berne Convention was the first (and remains the most influential) multilateral agreement addressing copyright. As early as 1886, states such as Belgium, France, Germany, Great Britain, Italy, Spain, Switzerland agreed to a comprehensive framework which set basic standards of protection for copyright. The impetus for such an effort for copyright has much to do with history and trade at the time. This was an era marked by fierce nationalism and, among other things, the production and trade of translated books. To the dismay of many authors and publishers, translated books were often sold in foreign jurisdictions in the absence of any royalties or copyright. It was in this context that states got together to establish reciprocal protections and minimum standards of copyright protection.
The Berne Convention establishes the “Berne Union” of states, which agreed to collectively enact copyright laws that would ensure uniform and minimum standards of protection among its members. The main tenets established by the Berne Convention in this respect are threefold: The first is to establish a minimum term of protection for works, measured by the life of the (longest living) author (in case of joint authorship), plus fifty years after their death [Article 7]. The second is the prohibition on formal requirements for the recognition or exercise of copyrights [Article 5(2)]. In this sense, authors need not take any formal steps to receive copyright protection, such as registration or notification to allege ownership. Rather, copyright automatically vests upon creation of the work. The third is the principle of national treatment, whereby nationals of a Berne Union country receive in any other country of the Union the same protection as the nationals of those other jurisdictions are granted [Article 5(1)]. This ensures that infringements taking place in states other than the home jurisdiction of the copyright owner could be actionable and enforced in the state where the infringement takes place.
In addition to these three basic pillars of international copyright, the Berne Convention of 1971 foresees in a number of exceptions to copyright. The limitations listed are the result of serious compromise on the part of national delegations – between those that wished to extend user privileges and those that wished to keep them to a strict minimum – reached over a number of diplomatic conferences and revision exercises. Consequently, all but one limitation set out in the text of the Berne Convention are optional: except for the right to make quotations, countries of the Union are free to decide whether or not to implement them into their national legislation. One of the most important provisions introduced in the Convention during the Stockholm Revision Conference of 1967 is article 9(2), which establishes a “three-step-test” for the imposition of limitations on the reproduction right. According to this test, limitations must be confined to special cases, they must not conflict with normal exploitation of the protected subject-matter nor must they unreasonably prejudice the legitimate interests of the author.
Over many decades, the Berne Union has expanded far beyond the original handful of states to now include 178 members, consisting of the vast majority of states in the world. Reservations over its moral rights provisions and other issues prevented some countries, like the United States, from joining the Berne Union until long after it had been originally adopted, but as will be discussed in the context of TRIPS, most of these concerns have been alleviated. The Berne Convention has undergone amendments in the many years following its initial adoption, but it nevertheless remains the central authority for copyright protection at the international level.
The Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations, signed in Rome in 1961, was the first international legal instrument to recognize a minimum standard of protection for these categories of rights owners, namely performers, producers of phonograms and broadcasting organizations. However, the protection granted under this Convention is subsidiary to the protection of copyright in literary and artistic works. Consequently, no provision of this Convention may be interpreted as prejudicing such protection. The Rome Convention, like the Berne Convention, is based on the principle of national treatment.
Due to the position at the time that the rights of performers, phonogram producers and broadcasting organizations were subsidiary to the authors’ copyright, the rights recognized in this instrument are weaker than those laid down in the Berne Convention. In particular, performers pulled the short straw: they were only given the ‘possibility of preventing’ certain acts, which is certainly different to, and lesser than, the absolute ‘right to authorize or prohibit’ granted to phonogram producers and broadcasters. This made some jurists opine that the Rome Convention only grants performers’ a legal position, not a right. On the other hand, the Rome Convention was essential in ensuring performers and phonogram producers a right of equitable remuneration every time a phonogram published for commercial purposes, or a reproduction thereof, is used directly for broadcasting or for any communication to the public. This form of remuneration still accounts for a significant portion of the performers and sound recording producers income today.
Agreement on Trade-Related Aspects of Intellectual Property Rights (1994)
The Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS”) was established through the Uruguay Round of the General Agreement on Tariffs and Trade (“GATT”). The GATT is administered by the World Trade Organization. TRIPS addresses not only copyright, but all intellectual property rights. In relation to copyright, it does not replace the Berne Convention, but rather sits on top of it by requiring compliance with most of its substantive provisions (Articles 1-21). To alleviate the opposition to moral rights protection from the Untied States and other countries, TRIPS excludes the moral rights protection in the Berne Convention (Article 6bis) from its scope of application. TRIPS also requires the implementation of the Rome Convention of 1961.
The reason that TRIPS came about was primarily to address gaps in intellectual property enforcement as between states. While Berne required states to implement minimum standards of protection and offer protections to foreign nationals, it did not create a system of international enforcement per se. By relying on diplomacy and institutions of public international law alone to ensure compliance, the enforcement framework put in place by Berne required more effective “teeth”. States approached the solution to this problem initially by proposing a new framework administered by WIPO, but this eventually shifted to a system under the GATT framework and the international trade system. The thought behind this was that by treating intellectual property protections as the subject of international trade negotiations, states could then ensure that consistent levels of protection would be provided by WTO members.
In addition to affirming the protections from Berne (with the exception of moral rights protections), some of the key contributions from TRIPS are the following:
Most-Favoured Nation – [Article 7(8)] – The most-favoured nation principle is a cornerstone of bilateral trade and investment, and is prominent in the WTO system. In essence, the principle holds that any benefit or favourable treatment offered by one state to another must be offered to every other state. In this sense, the most-favoured nation principle precludes the existence of “special deals” or exceptions among WTO member states with respect to benefits that are offered to each other.
Idea/Expression Dichotomy – [Article 9(2)] – TRIPS codified the idea/expression dichotomy, whereby copyright applies to expressions but not ideas, procedures, methods of operation or mathematical concepts “as such”. This was left somewhat ambiguous in the Berne Convention, which did not directly address the extent to which ideas or processes could be protected. The Idea/Expression Dichotomy is further discussed in relation to the Subject Matter of Copyright.
Formal Protection for Computer Programs – [Article 10] – TRIPS also clarified that computer programs should be protected as literary works under the Berne Convention. This ensured that computer programs would be protected relatively equally among all WTO members and reflected the protection and enforcement concerns of the software industry.
With respect to copyright and related rights, the TRIPS Agreement introduced no new limitation, other than expanding the ‘three-step-test’ to all rights contained in the Berne Convention and to the rights contained in the TRIPS Agreement itself, such as the rental right.
Overall, TRIPS is the most significant intellectual property agreement because its ratification is required for membership in the WTO. The breadth of its membership based upon this requirement, coupled with its enforcement mechanism, renders it the most important multilateral agreement affecting copyright and intellectual property.
WIPO Copyright Treaty / WIPO Performances and Phonograms Treaty (1996)
In response to technological advancement in the 1980s and 1990s (largely digital technologies) the WIPO conducted negotiations among member states for the development of two new treaties, the World Copyright Treaty (“WCT”) and the WIPO Performances and Phonograms Treaty (the “WPPT”). These two treaties were negotiated and established jointly, and are often referred to as the WIPO “Internet Treaties”. The period in which these treaties came about was marked by a sudden realisation that the duplication and distribution of copyright-protected materials could be carried out by consumers at low cost. This decentralisation of the power of reproduction and distribution in the digital environment necessitated a revaluation of copyright protection globally.
The WCT reaffirmed the need to protect computer programs as literary works, along with databases as original selection and arrangement of information. The WCT’s most notable provision deals with the extra-layer of legal protection for technological protection measures (“TPMs”) and rights management information, the former of which are sometimes referred to as “digital locks”. Cumulatively, the overall objective of the WCT was to address the shortfall in copyright protection as it related to the newly (and quickly) evolving digital sphere. In some respects, these protections have remained impactful and significant. Having said that, the fact that the WCT predates the internet quickly rendered it wanting of further protections from the perspective of many rights holders.
Parallel to the WCT, the WPPT brought the protection afforded to the performer’s and sound recording producers‘ – “neighbouring” or “related” rights, into the internet age. The WPPT sought to create uniform protections for these types of rights to ensure their continued protection in the digital environment. It contains similar provisions to the WCT pertaining to the extra-layer of legal protection for technological protection measures (“TPMs”) and rights management information.
As was the case with the WTO/TRIPS Agreement, delegations to the WIPO Diplomatic Conference in December 1996 were unable to reach a consensus on the inclusion of any limitation on copyright and related rights, other than the so-called ‘three-step-test’. Article 10 of the WCT and Article 16 of the WPPT not only confirm the application of this test in the area of copyright – making it applicable to all authors’ rights and not only to the reproduction right – but extend it also to the area of neighbouring rights. The three-step test serves as a general restriction to all exemptions presently found, or to be introduced, in the national copyright and neighbouring rights laws. Even if an exemption falls within one of the enumerated categories of permitted exceptions, it is for the national legislatures (and, eventually, the courts) to determine on a case-by-case basis whether the general criteria of the three-step test are met.
The Marrakesh Treaty establishes a system of exceptions aimed at facilitating the production and most of all, the cross-border exchanges, of accessible formats and editions of copyright-protected works for persons with visual impairments. The scope of the Treaty is therefore rather limited as it applies only to published and printed works, but it nevertheless clarifies and expands upon the conventional exceptions and limitations to copyright. In order to come into force, the Marrakesh Treaty required that twenty states send their instrument of ratification. Canada was the 20th state to do just that in June of 2016. In accordance with the Marrakesh Treaty, Canada made the necessary changes to its already longstanding exceptions to the benefit of persons with “perceptual disabilities”, so as to allow persons with print disability to access published works in accessible formats outside of Canada.
Regional and Bilateral Free Trade Agreements (“FTAs”)
Similar to TRIPS, Canada is a party to the NAFTA, CETA, CUSMA and CPTPP agreements that primarily deal with investment and trade, but that also include provisions governing IP. The primary purpose of these agreements is to encourage more investment and trade among the member countries by eliminating barriers on the trade of goods and services. These agreements have been developed with an eye to ensuring greater transparency, predictability, and protection for investors. Such treaties and agreements inevitably also ensure that parties who seek the benefits of beneficial trade deals adhere to standards of IP protection agreed to by all parties.
c. Canadian Legislative History
The early development of the Canadian copyright framework is described in the General Introduction. The chapter stopped at the 1924 Copyright Act mentioning that the numerous amendments brought to the Act in the subsequent decades were altogether not terribly significant. It was not until 1985, through larger legal and policy reform efforts in relation to the Charter, that Canada began to take a serious look at reforming its copyright system. By 1988, significant changes were implemented to the Copyright Act.
Key Modernising Changes to the Copyright Act as part of the 1988 reforms:
- definition and protection of “computer programs”;
- enhanced moral rights protections;
- the creation of the Copyright Board;
- increased criminal sanctions for infringement;
- an exhibition right for artistic works;
- measures to strengthen the collective administration of copyright;
- the abolition of compulsory licences for the recording of musical works (i.e., forced licensing upon payment of a fee);
- procedures for licensing works of unknown authorship.
The 1988 reform significantly expanded Canada’s copyright protection. Where the former framework addressed only a narrow class of works, the broadening of the types of works for protection, mechanisms for enforcement and collective administration facilitated new business models and markets for a variety of works.
First phase of reform
In January 1989, following the signing of the Canada-U.S. Free Trade Agreement, the Copyright Act was amended to require Canadian cable and satellite companies to pay for the re-transmission of works included in distant broadcast signals. The amendments also expanded the concept of “communication to the public” from broadcasting to include all forms of telecommunication. Further on this trajectory, the 1993 the passage of Bill C-88 further amended the Canadian Copyright Act with the objectives of: (1) redefining “musical work” to clarify that the Copyright Act covered both graphic and acoustic representations of music; and (2) to ensure that all transmitters–whether broadcasters, specialty or pay services, or cable systems–were liable for royalties.
Concurrent with these developments, the North American Free Trade Agreement (“NAFTA”) was signed in 1992 and on January 1, 1994, the Canadian government’s North American Free Trade Implementation Act came into force. The Implementation Act amended the Copyright Act to introduce a rental right for sound recordings and computer programs (a rental right permits copyright owners to authorize or prohibit the rental of their works). It also increased protection against the importation of infringing works (e.g. literary, musical, or dramatic works).
The influence of free trade agreements on copyright law in the early 1990s was not confined to the North American context. Accordingly, amendments in the World Trade Organization Agreement Implementation Act, which came into force on January 1, 1996, extended the copyright protection afforded by the Copyright Act to all World Trade Organization (WTO) countries. It also gave performers protection against bootleg audio recordings (an unauthorized recording of a live event) and unauthorized live transmissions of their performances.
Second phase of reform
In 1997, the Act was significantly amended through Bill-C32 and this period marked the second phase of major reforms. Many of the changes to the Act at this time were indicative of a media paradigm in which some of the most lucrative works were being sold on cassette tapes and CDs. In this vein, Bill C-32 introduced significant changes to the Act by expanding protections for musical works to include a rental right of the physical media on which the musical work is stored (i.e., a CD) and the introduction of a levy on the sale of blank tapes.
Bill C-32 also abolished the (then) longstanding principle of perpetual copyright in unpublished works in favour a reformed framework which included term limits and conditions for posthumous works. It also introduced compulsory royalties for performers and makers of sound recordings (i.e., studio musicians and recording engineers). Under the revised framework, these contributors were to be remunerated equitably upon the public performance or communication to the public of the sound recording. With respect to remedies and enforcement, the bill also introduced the statutory damages regime, and a number of new (but limited) exceptions to infringement.
Third phase of reform
The third phase of Canada’s copyright reform process is marked by a shift to the digital realm and the communication of works over the internet. Through a series of changes over nearly 10 years, the government introduced a number of changes to “modernize” the copyright system. In March of 2005 the Ministers of Industry and Canadian Heritage, on behalf of the Government of Canada, responded to the Interim Report on Copyright Reform by releasing a Government Statement on Proposals for Copyright Reform outlining the proposals for a new Bill to amend the Act. This was the beginning of a long journey toward reforms.
These efforts toward reform saw a number of successive bills dying on the order paper as the result of elections and parliamentary prorogation. This turned the larger efforts toward reforming copyright for the digital environment an even lengthier project. Finally, after a number of stalled attempts toward reform, the Government of Canada introduced and considered Bill C-11 in 2010-2011 (known as the Copyright Modernization Act). Bill C-11 passed the requisite House of Commons readings and received Royal Assent on June 29, 2012. Most of the provisions of Bill C-11 were brought into force on November 7, 2012. One of the major changes that came through these reforms was the protection for technological protection measures (“TPMs”), in ss. 41.1 and following of the Copyright Act, e.g. one of the amendments necessary to ensure that Canada meets its obligations under the WCT and WPPT.
B. Protectable Subject Matter
Mere information, facts, ideas and data fall outside the scope of copyright protection. Indeed, it is one of copyright law’s most basic tenets that only those forms of expression that meet the requirements for protection are eligible for copyright protection. Ideas are not protected, but original expressions of ideas are. In this sense, one could argue that the free flow of information is the rule, and copyright protection is the exception. Before analysing the requirements for protection in section C., this section explains what is protectable subject matter under the Copyright Act, opening with a few words on the idea/expression dichotomy, before examining how the Copyright Act and the relevant case law define a ‘work of authorship’ (governed by Part I of the Act) or determine what qualifies as ‘other subject matter’ (governed by Part II of the Act).
Note that while it is conceptually important to understand the distinction between an idea and a form of expression, and to consider what types of subject matter are covered by the Act, this is not an exercise in which courts willingly engage. Too often the issue of the protectable subject matter is subsumed in the discussion of whether the ‘work’ meets the requirement for protection. It appears easier, and many times sufficient, to enquire if a work is original, rather than to first qualify the object of dispute from the lens of the protectable subject matter. This approach is not pure; it risks confusing key concepts, potentially leading to untenable outcomes. The consequence of overlooking this step may skew the copyright balance more to one side, most often to the rights owners’ side. For, an original idea is still just an idea and should not be protected, even if it is original.
I. Idea/Expression Dichotomy
Suppose you wanted to assert copyright in the following:
“[(23 – 14) + 43] x 2 = 104”
Would you be successful? The answer is no. This is because one of the cornerstones of copyright protection is that it does not extend to facts, ideas, schemes or methods. It is only when these concepts are arranged or expressed in a manner that is original that they can be protected. While it may be argued that the equation above is arranged in a way that is original (e.g., placement on the page, font, indenting/formatting), this argument is not likely to succeed.
The larger point is that ideas cannot be protected by copyright, only original expressions of them can be. Facts, methods or schemes belong in the public domain, because they do not originate from any author. They must remain in the public domain because they are the building blocks to further creation. Rather than query the extent to which a work is original, the idea/expression dichotomy delineates which things become “works” in the first place. The idea/expression dichotomy is not necessarily as binary as its name would suggest. Indeed, processes, methods, formulae and systems can be protected by copyright when they are expressed or designed in a manner that is original, as we shall see below.
Though the idea/expression dichotomy is a longstanding pillar of copyright law, it does not often form the basis for many copyright disputes. Nevertheless, in the 2013 decision of Nautical Data International Inc v C-Map USA Inc., the Federal Court of Appeal commented on the nature of the principle. Consider the case below:
Nautical Data International Inc v C-Map USA Inc., 2013 FCA 63
The Canadian Hydrographic Service (“CHS”) is part of the Department of Fisheries & Oceans Canada. It collects, assesses and publishes data in relation to Canada’s oceans and waterways, including marine charts, safety notices to mariners, tidal heights, currents and other navigational information. Traditionally, CHS has been the sole distributor of paper marine charts for navigational use. Since the advent of digital technology, CHS’ data has become increasingly attractive for third party software developers and manufacturers to use in their proprietary digital navigational equipment.
Nautical Data International (“NDI”) entered into an agreement with CHS for licensing is raw data to produce its own electronic charts. NDI then created electronic charts that were licenced to its end-users. Likewise, C-Map USA Inc. (“C-Map”) was also in the business of creating proprietary electronic marine charts for use in its navigational equipment. C-Map used the same raw data from CHS to produce its electronic charts, but without a licence. NDI brought an infringement claim against C-Map for its use of CHS’ data, but C-Map contended that NDI had no standing to enforce copyright in the data because it was not the exclusive licensee. At trial, the Federal Court found that NDI did not have standing to bring the claim. It found that though the licence allowed NDI to make use of data, it was not an exclusive licence and there is no copyright in information per se. Further, the inconsistency in the licence agreement between NDI and CHS left ambiguities regarding whether NDI had obtained the exclusive right to make digital copies of nautical maps or merely to use the information provided by CHS to create its own digital charts. Overall, the Federal Court found that there was no issue for trial and granted summary judgment to C-Map.
The proceeding made its way to the Federal Court of Appeal where the summary judgment was appealed by NDI. The essence of the dispute came down to whether the raw charting data provided by CHS could be the subject of copyright and therefore whether there was a serious issue to be tried.
At paragraph 14, Nadon and Sharlow J.J.A. write:
[14] NDI’s statements of claim allege that the Crown “owns” the CHS Data. That allegation presents the same ambiguity. If it is intended to mean that data can be owned in the same way as property can owned, then there is some question as to whether it is correct as a matter of law. Generally speaking, data — mere information — cannot be “owned” as though it were property. It can be kept confidential by its creator or the person who is in possession of it, and a legal obligation can be imposed on others by contract or by legislation to keep the information confidential. However, there is no principle of property law that would preclude anyone from making use of information displayed in a publicly available paper nautical chart, even if the information originated with the Crown or is maintained by the Crown.[Bolding added for emphasis]
Despite the Federal Court of Appeal’s clarification that mere information cannot be owned, it found that the trial judge should not have granted summary judgment on the basis that there were ambiguities left by the licence agreement. The Federal Court of Appeal held that there were open questions as to whether NDI was granted a licence only to use the information to make its digital charts or whether it was also granted the exclusive licence to make digital copies of nautical maps. As the maps themselves could be the subject of protection (where as the raw data could not) the determination of this question is crucial for resolving the matter. On this basis, the summary judgment motion was dismissed.
(Canada’s Copyright Act includes a regime for “Crown copyright”. This is discussed below).
Another case on point is the recent decision in Winkler v. Hendley, 2021 FC 498, in which the Federal Court discussed the difference between the depiction of nonfictional events and their use in an original publication.
Winkler v. Hendley, 2021 FC 498
[1] In the early morning of August 24, 1875, eight members of the notorious Donnelly family of Lucan, Ontario, armed with nothing more than clubs, won a pitched street battle against eighteen townspeople intent on revenge. Or did they? This and similar questions arise in this copyright infringement action because the plaintiffs assert the battle was the fictional creation of Thomas P. Kelley in his 1954 book The Black Donnellys. They claim Nate Hendley’s 2004 book The Black Donnellys: The Outrageous Tale of Canada’s Deadliest Feud infringes copyright in The Black Donnellys and its sequel, Vengeance of The Black Donnellys, including by copying Mr. Kelley’s fictional events, his creative embellishments of historical events, and his cinematic story-telling style.
[2] Mr. Hendley and his publisher, James Lorimer & Company Ltd, admit Mr. Hendley used Mr. Kelley’s books, among other sources, in doing research for his own book. But they argue Mr. Hendley’s book is an original literary work not copied from Mr. Kelley’s books or any other source. They also say Mr. Kelley’s The Black Donnellys is factual and argue that having represented it as a work of historical nonfiction, Mr. Kelley and his successors cannot now claim copyright in the persons and events described.
[3] I conclude there has been no copyright infringement.
[4] I agree with the defendants that an author who publishes what is said to be a nonfiction historical account cannot later claim the account is actually fictional to avoid the principle that there is no copyright in facts. Having presented the Donnellys’ street battle and other facts and events as a true historical account based on “unimpeachable sources,”
Mr. Kelley could not later assert that he was not to be taken at his word. His successors in title are in no better position and similarly cannot argue the facts were actually fictions and therefore subject to copyright protection.
(…)
[54] Copyright subsists whether an original literary work is one of fiction or nonfiction. The Copyright Act makes no distinction between the two. That said, copyright protection does not extend to facts or ideas
but to the original expression of ideas
. This does not mean that literary works on historical or factual subjects are less worthy of copyright protection. It simply means that copyright subsists in the particular means, method, and manner
in which those facts are presented in the work, rather than in the underlying facts themselves. This originality may include the structure, tone, theme, atmosphere and dialogue
used in presenting the facts.
Depending on the circumstances of each case, distinguishing a non-protectable idea, fact or data from an original expression of ideas can be relatively easy or very difficult. Nevertheless, the determination is essential in order to preserve the balance of interest in promoting the encouragement and dissemination of works of the arts and intellect and granting a just reward to the creator: over-protection would not only risk stifling further creativity, but it would also constitute an unjust reward to the creator.
II. Works of Authorship (Part I of the Act)
Despite the fact that neither ideas, facts, data or miscellaneous information receives protection, copyright law covers a vast array of different forms of expression. The types of “objects” that can be subject to copyright protection are wide ranging and subject to only a few limitations. Copyright protects “works” defined in general terms in section 5(1) of the Act, which states:
You may ask why the Act distinguishes between these types of works if ultimately these distinctions are not determinative of whether copyright can subsist in these creations. The answer to this question is found partly in the fact that the Act treats works differently due to market differences and attaches different rights to distinct categories of works. In other words, distinct business models have coalesced around the creation, production and exploitation of works based on their type. As we will see, the Act addresses this (partly) by offering protections, exceptions and limitations that are not always entirely uniform. Though it does not close the door on copyright protection for types of works that do not fit within these categories (e.g., video games), the need to tailor protections to specific markets and business models requires some level of legislative distinction. Therefore, the “types” of works under the Act, are sufficient conditions for copyright protection, but not necessary ones.
Literary Works
For the most part, the notion of literary works under copyright should be fairly intuitive. They are written works, whether in electronic or physical form. Literary works include not only substantial works of literature such as novels, books or articles, but also smaller written pieces such as emails, letters, pamphlets, poetry, forms, conference proceedings and databases.
literary work includes tables, computer programs, and compilations of literary works;
Literary works also include less obvious subject-matter. Most particularly, computer programs and software code are protected as literary works. In the 1980s and early 1990s, the prospect of protecting software as literary works under copyright law was not universally supported among the members of the Berne Union. The disagreement on this point stemmed largely from the fact that object code (the series of 0s and 1s) as opposed to the source code (the algorithm written in computer language) is primarily utilitarian in nature, and that the programs themselves are not sufficiently fixed to warrant protection. The 1994 TRIPS Agreement, together with the 1996 WIPO Copyright Treaty, ended this debate by requiring formal protection for computer programs as literary works. Despite the harmonisation of this protection among WIPO members, debates at the policy and academic level surrounding the efficacy of copyright protection for software and its implications continue to this day.
Dramatic Works
Like many aspects of the Act, the notion of a “dramatic work” is a term of art. It is not necessarily confined to those types of works which would be orchestrated as part of a High School Drama class. Rather, it includes a broad range of works which contain a scenic arrangement or an acting component, such as plays, operas and musicals (but not the music), screenplays, scripts, choreographic notation, choreographic shows and a cinematographic work. The Act defines a dramatic work as including:
(b) any cinematographic work, and
(c) any compilation of dramatic works;”
In addition, the Act defines a “choreographic work” as including:
Case Study: Alfonso Ribeiro v Take-Two Interactive Software Inc, et al., [2019]
The Fortnite “Fresh Dance” as captured within the video game in 2019.
Actor Alfonso Ribeiro is famous for playing the character “Carleton” on the 1990s television show The Fresh Prince of Bel-Air. On the show, character Carleton became recognisable for his arm-swinging dance and penchant for Tom Jones. Ribeiro created the dance himself, crediting influences from Eddie Murphy’s “White Man Dance”, and Courteney Cox’s dancing in Bruce Springsteen’s “Dancing in the Dark” music video. Since its advent on the Fresh Prince of Bel-Air, the Carleton Dance has become recognisable to many who grew up watching sitcoms in the 1990s.
Fortnite, a popular online video game released in 2017 by Epic Games, is a cooperative survival-shooter game. Players can play within a defined team, or individually. Fortnite allows players to purchase customisations for their characters that change their appearance in the game. Some of these customisations include the ability for players to direct their characters to perform brief dance sequences or gestures within the game so as to convey emotion. These character customisations or “in-game purchases” are extremely lucrative for video game developers and have the potential to generate substantial revenues.
One of the brief Fortnite dance sequences enabled by Epic Games, titled “Fresh Dance”, was modelled very closely on Ribeiro’s Carleton Dance. Seeing this, Ribeiro sought to register his copyright in the dance called ‘the Carleton’ with the U.S. Copyright Office. Ribeiro also launched a suit against Epic Games as well as the makers of NBA2K26 for similar use of the dance for copyright infringement. This required the U.S. Copyright Office to conduct a review of the Carleton Dance to determine whether it constitute a “choreographic work”. After a lengthy review, it concluded that the Carleton Dance was not choreography, but in fact a “simple dance routine”. The U.S. Copyright Office commented with the following:
“The dancer sways their hips as they step from side to side, while swinging their arms in an exaggerated manner… In the second dance step, the dancer takes two steps to each side while opening and closing their legs and their arms in unison. In the final step, the dancer’s feet are still and they lower one hand from above their head to the middle of their chest while fluttering their fingers. The combination of these three dance steps in a simple routine that is not registrable as a choreographic work.”
Though Ribeiro’s copyright claim is rooted in United States law, the question it raises in relation to the protection of choreographic works is worth considering. In light of the paucity of case law in Canada on the interpretation of choreographic works, the case Pastor (c.o.b. Cuban Dance Entertainment (Caricas Cubanas)) v Chen [2002] BCJ No 1123 stands out. The British Columbia Provincial Court accepted that mere “moves” and “dance styles” (when containing sufficient elements of originality) can be properly covered by copyright. Nevertheless, we are left without a clear delineation between the notion of a simple routine and a choreographic work and Ribeiro’s case in the United States provides us with a factual scenario that poses questions for the law in Canada as well.
Artistic Works
Whereas each type of “work” under the Act may considered to be artistic in a literal sense, the notion of an “Artistic work” under copyright law is more conceptual than literal. Artistic works include creations, such as paintings, drawings, photographs and art prints. Perhaps less obvious things included under Artistic works are maps, plans, stage and costume designs and websites.
When discussing the notion of an “Artistic work”, it is important to emphasise that such works do not require an subjective analysis of artistic merit or quality. More accurately, whether a work is considered an Artistic work within the meaning of the Act will be assessed with reference to the creator’s intentions and the result of the finished work. For example in Evans and Hong v Upward Construction, 2017 BCPC 247, the British Columbia Provincial Court was tasked with deciding over copyright in a home renovation design and whether it could be considered an “Artistic work”. In addressing the issue of whether aesthetic quality must be assessed in order to rise to the level of an artistic work, the Court wrote at paragraph 14 that “…[n]o minimal degree of creativity is required for work to be original, nor does it need to display particular artistic quality. It is enough that it is a product of the author’s or designer’s skill and judgment”. The overall point is that the notion of an “Artistic work” does not augment the basic assessment for copyright originality — a non-trivial exercise of skill and judgment is all that is required.
Musical Works
The Act defines a musical work as:
III. Other subject matter (Part II of the Act)
Performer’s Performance
Singers, musicians, actors, comedians all qualify as performers under the Copyright Act. As in the case of works of authorship, the Act defines what the object of protection is, e.g. a performer’s performance, rather than the person benefiting from the protection:
performer’s performance means any of the following when done by a performer;
(a) a performance of an artistic work, dramatic work or musical work, whether or not the work was previously fixed in any material form, and whether or not the work’s term of copyright protection under this Act has expired,
(b) a recitation or reading of a literary work, whether or not the work’s term of copyright protection under this Act has expired, or
(c) an improvisation of a dramatic work, musical work or literary work, whether or not the improvised work is based on a pre-existing work;
FWS Joint Sports Claimants v. Canada (Copyright Board), 1991 CanLII 8292 (FCA)
Key to the notion of a “sound recording” is the notion of a “maker”, which the Act defines as:
The Act further clarifies these “arrangements” at section 2.11, which provides:
The Act does not require that these sounds be musical or have any specific meaning: any type of sound could form the basis for this right. They can be things such as soundscapes, sound effects, nature recordings, sampling compilations, audio books, narrations, audio language lessons, and similar recordings. There is no other requirement for protection of sound recordings under the Act than the mere act of creating an actual recording.
The ‘arrangements’ referred to in section 2.11 usually refer to producers and those who provide contractual or financial assistance in order to bring the recording about. By ‘arrangements’ the above definition is not referring to the concept of a musical arrangement or composition, but rather the agreements, contracts or other circumstances that bring about the recording of the sounds. Given the ubiquity of audio recording equipment on personal electronic devices, it is equally possible that a “maker” could be a person with a smartphone audio recorder (depending on the circumstances). In this vein, the maker of a sound recording is not necessarily the author in the same way that a painter is the author of an artistic work. The role of a maker of a sound recording is conceptually different in that he or she need not necessarily create the sound being recorded.
Observe that soundtracks of cinematographic works, where they accompany the cinematographic works, are excluded from the definition of sound recording. The rationale is that ownership and exercise of rights on soundtracks must follow the main work, e.g. the cinematographic work. Only where the music is released as a separate sound recording, independent from the cinematographic work, will it benefit from protection as a sound recording as illustrated in the Re:Sound v Motion Picture Theatre Associations of Canada case.
Re:Sound v. Motion Picture Theatre Associations of Canada, 2012 SCC 38
[1] This appeal concerns the interpretation of the definition of “sound recording” in s. 2 of the Copyright Act, R.S.C. 1985, c. C-42 (“Act”), and specifically, the interpretation of the undefined term “soundtrack” used in that definition. The Act provides that performers and makers of sound recordings are entitled to remuneration for the performance in public or the communication to the public by telecommunication of their published sound recordings, except for retransmissions. Ultimately, the question this Court must answer is whether the broadcasting of sound recordings incorporated into the soundtrack of a cinematographic work can be subject to a tariff under the Act or whether such broadcasts are excluded by virtue of the definition of “sound recording” in s. 2.
[2] The appellant, Re:Sound, argues that the word “soundtrack” as used in s. 2 refers only to the aggregate of sounds accompanying a cinematographic work and not to the soundtrack’s constituent parts. In its view, since pre-existing sound recordings incorporated into a soundtrack are constituent parts of the soundtrack and not the aggregate of sounds accompanying the work, they do not fall within the scope of the word “soundtrack” as used in s. 2.
[3] For the reasons that follow, the appeal must be dismissed. A proper application of the principles of statutory interpretation leads to the conclusion that the appellant’s argument is untenable.
(…)
[35] According to s. 2, a “sound recording” is a recording consisting of sounds, “but excludes any soundtrack of a cinematographic work where it accompanies the cinematographic work”. Therefore, a “soundtrack” is a “sound recording” except where it accompanies the motion picture. Otherwise, the exclusion would be superfluous.
[36] When it accompanies the motion picture, therefore, the recording of sounds that constitutes a soundtrack does not fall within the definition of “sound recording” and does not trigger the application of s. 19. A pre-existing sound recording is made up of recorded sounds. The Act does not specify that a pre-existing recording of “sounds” that accompanies a motion picture cannot be a “soundtrack” within the meaning of s. 2. In my view, a pre-existing sound recording cannot be excluded from the meaning of “soundtrack” unless Parliament expressed an intention to do so in the Act. It could have done this by, for example, excluding only “the aggregate of sounds in a soundtrack”.
(…)
[39] … the word “accompanies” qualifies a soundtrack on a CD for remuneration under s. 19, whereas such a soundtrack would not otherwise attract remuneration under that section. It is difficult to imagine that the comment regarding “a soundtrack that is now available on a CD” might concern a CD containing “the entire collection of sounds accompanying the movie as a whole”, which is the interpretation of “soundtrack” the appellant urges this Court to adopt. If the appellant’s interpretation is correct, the CD in question would have to include not only the pre-existing recordings, but also all the dialogue, sound effects, ambient music and noises in the motion picture. It could not contain only the pre-existing sound recordings used in the movie.
Communication Signal
The broadcaster is presumed to be the first owner of the copyright in its communication signals and this right crystallises upon the first broadcast of the signal [see section 24(c)]. This definition clearly excludes those who provide unlawful broadcasting or retransmit communication signals broadcast by others. These exclusions are intended to ensure that so-called “pirate” broadcasters cannot avail themselves of protection in their own communication signals. The definition of broadcaster expressly excludes undertakings that engage in the ‘retransmission of signals’, such as cable or satellite distributors, for the very good reason that these entities do not broadcast signals. There is therefore no communication signal to protect.
C. Requirements for Protection
As the last section demonstrates, a vast array of forms of expression are susceptible to benefit from copyright protection as works of authorship, but only if they meet the statutory requirements, discussed in this section. Not all expressions are copyrightable: they need to show a sufficient degree of originality (I.), be fixed on a tangible medium (II.) and originate from a Treaty Country (III.). Note that performer’s performances, sound recordings and communication signals need not be original or meet any other threshold of creativity in order to receive protection under Part II of the Act. Moreover, performer’s performances benefit from protection even if they are not fixed, as further explained in part E.II below. However, as discussed in section C.III. below, the points of attachment for the grant of related rights differ significantly from those of works of authorship.
I. Originality
Perhaps the most significant factor in determining the existence of copyright protection is the extent to which the work is original. Indeed, this is the cornerstone of copyright law and acts as the gatekeeper of what gets protected and what does not. The requirement of originality is mentioned in three subsections of the Copyright Act, namely in sections 2 and 5(1).
every original literary, dramatic, musical and artistic work includes every original production in the literary, scientific or artistic domain, whatever may be the mode or form of its expression, such as compilations, books, pamphlets and other writings, lectures, dramatic or dramatico-musical works, musical works, translations, illustrations, sketches and plastic works relative to geography, topography, architecture or science;
work includes the title thereof when such title is original and distinctive;
Conditions for subsistence of copyright
5 (1) Subject to this Act, copyright shall subsist in Canada, for the term hereinafter mentioned, in every original literary, dramatic, musical and artistic work if any one of the following conditions is met:
Originality is a term of art. It does not mean that the work must be completely and absolutely distinguishable from other works, nor does it require that the work be ‘novel’ in the same sense as patent law. Rather, copyright originality refers to the extent to which the work is the product of the author’s individual personality, judgment and efforts.
No international agreement defines the concept of originality. The precise legal standard for originality therefore varies across jurisdictions internationally and some distinctions can be drawn between civil law and common law systems. Broadly speaking, civil law systems in continental Europe have adopted an approach more consistent with the personality theory, wherein originality is assessed primarily with reference to an extension of the author’s personality. In the Anglo-American common law tradition, the trend has been to weigh the extent to which the author expended effort or labour in creating the work. This bifurcation of priorities evokes slightly different assessments in value when it comes to how works, or the products of creative effort, should be regarded within the copyright system. This also means that a work may be deemed sufficiently original to deserve protection in one country, but not in another. In countries like France and Germany, the threshold for originality is higher than in Canada, which means that obtaining protection in Canada is easier than in those countries.
The earliest iterations of Canada’s approach to originality mirrored almost exactly the United Kingdom’s assessment of the author’s “skill, judgment and labour”. While this doctrine remains influential, courts in Canada have since expanded upon the broader purposes of copyright, which have in turn influenced the assessment of originality more broadly.
CCH Canadian Ltd. v Law Society of Upper Canada [2004] 1 SCR 339
McLachlin C.J., set out the test for originality in Canadian copyright law:
[16] …For a work to be “original” within the meaning of the Copyright Act, it must be more than a mere copy of another work. At the same time, it need not be creative, in the sense of being novel or unique. What is required to attract copyright protection in the expression of an idea is an exercise of skill and judgment. By skill, I mean the use of one’s knowledge, developed aptitude or practised ability in producing the work. By judgment, I mean the use of one’s capacity for discernment or ability to form an opinion or evaluation by comparing different possible options in producing the work. This exercise of skill and judgment will necessarily involve intellectual effort. The exercise of skill and judgment required to produce the work must not be so trivial that it could be characterized as a purely mechanical exercise. For example, any skill and judgment that might be involved in simply changing the font of a work to produce “another” work would be too trivial to merit copyright protection as an “original” work.
[25] … I conclude that an “original” work under the Copyright Act is one that originates from an author and is not copied from another work. That alone, however, is not sufficient to find that something is original. In addition, an original work must be the product of an author’s exercise of skill and judgment. The exercise of skill and judgment required to produce the work must not be so trivial that it could be characterized as a purely mechanical exercise. While creative works will be definition be “original” and covered by copyright, creativity is not required to make a work “original”. [Emphasis added]
The test for originality as set out in CCH remains the standard test for originality under Canadian copyright law. The notion of a work being the product of an author’s “exercise of skill and judgement” is helpful, but it raises a number of questions as to what types of exercises could be included under this umbrella. Again, the test for copyright originality is not whether the work is novel or inventive, but rather whether the work is the original expression of its author (originating from the author and no one else). To this end, it is not fatal to copyright’s subsistence in a work that is largely derivative of other works, or uses common techniques. The assessment is much more focused on the manner in which the particular work came about. So long as sufficient labour and skill was expended by the author to bring about the work through an exercise which is ‘more than trivial’, even largely derivative works can be the subject of protection.
Despite the Supreme Court’s attempts in CCH to -ensure that originality is assessed primarily on an objective basis–looking to the circumstances under which a work comes about–there is nevertheless a lingering question regarding the extent to which courts should weigh the aesthetic or artistic value of works. Though the exercise of skill and judgment can be regarded in many respects as factual, it can indeed be strongly influenced by which types of skill, and which sort of judgment, is exercised by the author in creating the work. These considerations become more present when the work at issue possesses utilitarian aspects. See the below case study for a further discussion of this issue:
Case Study: DRG Inc v Datafile Ltd. [1988] 2 FC 243
Datafile Ltd. sought to register coloured labels for paper filing systems under the Copyright Act. These labels were designed to be attached to file folders to make it easier to find them and to identify misfiling. The colour sequence generally followed the spectrum sequence of the rainbow, but with alternating light and dark tones of the colours used. It took Datafile Ltd. some time to arrive upon its choice of colour sequencing, as it required some repetition to ensure that all letters of the alphabet could be included. DRG Inc. objected to this registration on the basis that these coloured labels are not the proper subject of copyright because they are not an “artistic work” within the meaning of the Act, and that the work is not sufficiently original because it is primarily a functional work.
The Federal Court held that the notion of an “artistic work” as defined by the Act at section 2 does not require an assessment of artisticness in a qualitative or subjective sense. Rather, the notion of an “artistic work” under the Act is merely to delineate certain types of works (e.g., sculptures, paintings, and similar creations) from other types of works (e.g., sound recordings, cinematography).
On the issue of originality, the Federal Court addressed arguments put forward by DRG Inc. Namely, it was argued that the coloured filing system was really a culmination of previous filing system elements and therefore could not be original. The Court rejected this notion of originality in relation to copyright. It clarified that while such an assessment may be relevant in the context of patents, copyright originality is distinct from patent inventiveness. The Court found that the work originated from the author and that the additions and improvements upon prior works were substantial. For the Court, this finding was sufficient to ground originality in the work.
Colour-coded paper filing systems may seem antiquated today, but their advent allowed for increases in efficiency and ease in document management.
The Court expressed the view that it should not wade into assessments of aesthetic quality or value in determining when works are original. Do you agree with this position? The Court also took the view that Datafile’s cumulation of prior filing system techniques, when combined with its own colour spectrum layout, was a substantial addition or alteration of prior works. This was also sufficient to find originality in the colour-coded filing system. Do you agree with this approach? Do you feel that factual context here may have influenced the Court’s assessment of originality? Do you think that the Court would have taken the same approach had the subject of the dispute been something more traditionally ‘artistic’ than a filing system? Why or why not?
Referring back to Barnett Newman’s Who’s Afraid of Red, Yellow and Blue discussed in the opening paragraph of this chapter, does the painting in your opinion meet the threshold of skill and judgment under the Canadian Copyright Act?
II. Fixation
For copyright protection to subsist a work must meet the requirement of fixation. In essence, this means that the work must be fixed in some tangible medium that can be perceived by the senses on a semi-permanent medium. This requirement may explain why the sand mandalas described in the opening paragraphs of this chapter may not benefit from copyright protection: unless the mandalas are captured by photography, broadcast, or film, or any other semi-permanent form of fixation, they will not attract protection. The problem of fixation rarely arises in case law, but the requirement ensures that there is an actual object of protection to refer to whenever rights need to be enforced.
In the case of a painting, this means that the paint must have been applied to the canvas (or similar material), and in the case of a novel, that the words and text have been written down (whether on paper or electronically). The nature of fixation as a requirement for copyright protection seems intuitive, but as will be shown, it produces different effects when analysed in relation to various types of works.
Canadian Admiral Corp Ltd. v Rediffusion, Inc., [1954] Ex CR 382
In Canadian Admiral Corp. Ltd. v Rediffusion Inc.., the plaintiff obtained the exclusive right to broadcast the Alouettes’ football games during the 1952 season and to televise films of the games played by the team while away from Montreal. The defendant, Rediffusion Inc., was able to tap into the broadcast signals used by Canadian Admiral Corp with the use of an antenna. It then broadcasted to its subscribers several of the Alouettes games. Canadian Admiral Corp brought an action for copyright infringement, alleging that copyright subsisted in the radio-frequency signal used to create its broadcasts.
In essence, the dispute came down to whether copyright could subsist in a broadcast signal itself before being fixed, as Rediffusion was capturing the ‘raw’ signal rather than reproducing the actual broadcast that was assembled and arranged by Canadian Admiral Corp. Broadcast of the the Montreal Alouettes Football Club’s games led to a dispute as to the exclusive right to reproduce a live cable signal.
Photograph by Ashton Clark. Image provided by user @official_jeww
Cameron J., writing for the Exchequer Court, held that copyright subsists only in ‘works’ which are expressed to some extent in a material form. The exact language used by Cameron J. at paragraph 28 of the Court’s decision has been repeated throughout subsequent jurisprudence:
“I have given careful consideration to the terms of the Copyright Act and more particularly to the provisions of s. 2 and 3, and the conclusion seems inescapable – at least to me – that for copyright to subsist in a “work” it must be expressed to some extent at least in some material form, capable of identification and having a more or less permanent endurance. All the works included in the definitions of “artistic work” and “literary work” (s. 2(b) and (n)) have a material existence; “musical works” by s. 2 (p) must be printed, reduced to writing or otherwise graphically produced or reproduced. Likewise, in regard to “dramatic works” there is the requirement which I have noted, namely, that the scenic arrangements or acting form must be fixed in writing or otherwise. “Cinematographic production” which are also dramatic works are obviously “fixed otherwise”, since, as will be noted later, they involve making of films.” [Emphasis added]
In the end, the Court found that there was no infringement of copyright, despite the clear ‘piratical’ nature of Rediffusion’s actions.
Note that this case took place long before the introduction of related rights in the Canadian Copyright Act.
The Federal Court has since clarified the meaning of ‘material form’ as defined by Canadian Admiral Corp to mean merely something that is ‘palpable, perceptible or tangible’. There has also been subsequent debate in the jurisprudence regarding whether the standard used for assessing ‘material form’ should be weighed differently when determining copyright subsistence as opposed to copyright infringement. Leaving that debate aside for now, the larger concept of fixation should be clear to you. In some regards, fixation relates to the idea/expression dichotomy. When a work is not yet fixed (and therefore not yet a ‘work’ within the meaning of the Act) it is more aptly understood as an idea rather than an expression. Do you find this concept to be intuitive and satisfactory? Consider the following example:
Chapman Kelley v Chicago Park District, No. 08-3701 (7th Cir 2011)
Copyright Fixation
Elaborate garden arrangements and designs can require extensive planning, creativity and execution, yet the degree to which they are “fixed” is the subject of debate.
During the 1980s, artist Chapman Kelley designed a 1.5 acre wildflower garden in the Northeast Corner of Grant Park in Chicago, Illinois. Much of Kelley’s prior work consisted of paintings, but he had designed several wildflower installations throughout the United States as well. Nearly twenty years later, in 2004, the city of Chicago’s Park District uprooted most of Kelley’s designed garden and made significant changes to his design. In Kelley’s opinion, it was unrecognisable. Kelley’s original design was based off of one of Kelley’s paintings, which showed two large ovals outlined in gravel walking paths, each of which had over sixty varieties of flowers native to the region. The gardens were designed to be self sustaining without watering or fertilisation. The City of Chicago’s redesign truncated the garden to two small rectangular gardens which were surrounded by hedges, grass and rose bushes. Image obtained through an Unsplash Licence from www.unsplash.com. Photograph by Lina Angelov. Image provided by user @linataly1
Kelley launched a suit against the Park District (in part) for breach of his rights under the United States’ Visual Artists’ Rights Act. (The nature of this legislation in the United States will be described in more detail in the section relating to Moral Rights. In any event). Part of the dispute came down to whether copyright could subsist in Kelley’s ‘living landscape art’. The U.S. Court of Appeals for the 7th Circuit found that Kelley’s living garden was not ‘fixed’ in the copyright sense. What was particularly problematic for the court was the fact that the majority of the garden consisted of living elements that continued to evolve and were ‘inherently changeable’. Determining the precise moment of fixation was also difficult for the court, as the very nature of Kelley’s design was for the garden to develop and change over time. Exactly when the garden crystallised in its final ‘form’ was difficult for the court to determine and contributed to its finding that the work lacked sufficient fixation to attract protection.
Though the Kelley case originates from the United States and its Visual Artists’ Rights Act, it is nevertheless instructive of the fixation requirement’s barrier to protection for certain types of works. Namely, the subject matter of the underling copyrighted work can be easier or more difficult depending on the type of work. Another example of an artistic work which may find barriers to protection on account of fixation is cuisine. While recipes themselves often fail to be protected on account of the idea/expression dichotomy, the arrangement or style of presentation of a particular dish can also evade copyright protection on account of a lack of fixation.
III. Points of Attachment
Clearly, works created by authors residing in Canada receive protection under the Canadian Copyright Act. But how is protection arranged in relation to works created by foreign authors? As explained in section A. of this chapter, the Berne Convention establishes that protection in the country of origin of the work is governed by domestic law. According to the principle of national treatment, however, if the author is not a national of the country of origin of the work for which protection is granted under the Convention, they shall enjoy in that country the same rights as the national authors of the country where protection is sought. In other words, a British author will enjoy in Canada the same level of protection as Canadian authors, since both Great Britain and Canada are members of the Berne Union. The extent of protection, as well as the means of redress afforded to the author to protect their rights, is governed exclusively by the laws of the country where protection is claimed. Every international treaty in the field of copyright adopted since the Berne Convention, like the TRIPS, WCT & WPPT, rely on the principle of national treatment.
In order to implement this principle in the Canadian legal order, the Copyright Act must determine when copyright subsists in Canada and when a foreign work can benefit from the application of the national treatment principle. The criteria are known as ‘points of attachment’. This is the purpose of s.5(1) CA. It states that in the case of any work, whether published or unpublished, including a cinematographic work, copyright subsists in Canada if the author was, at the date of the making of the work, a citizen or subject of, or a person ordinarily resident in, a treaty country. If a cinematographic work, whether published or unpublished, is made by a corporation, copyright will subsist in Canada if the corporation had its headquarters in a treaty country. In the case of a published work, including a cinematographic work, copyright will subsist in Canada if the first publication in such a quantity as to satisfy the reasonable demands of the public, having regard to the nature of the work, occurred in a treaty country. The first publication of a published work is deemed to have occurred in a treaty country notwithstanding that it in fact occurred previously elsewhere, if the interval between those two publications did not exceed thirty days.
Treaty country in the context of works of authorship means a Berne Convention country, Universal Copyright Convention country, WIPO Copyright Treaty country or World Trade Organisation Member. In other words, only a very small number of works would not qualify as having been made or published in a treaty country. As the case below shows, in disputes involving the copyright protection of works created by foreign authors, a court will always touch upon the points of attachment.
Trimble Solutions Corporation v. Quantum Dynamics Inc., 2021 FC 6
[1] Trimble Solutions Corporation (Trimble) is a Finnish company that sells a number of technology solutions. One of its leading software offerings is Tekla Structures, a program for three-dimensional modelling and design of complex structures used in the construction industry. Trimble has registered copyright in Canada for various versions of this software.
(…)
[6] As is customary in the software business, Trimble provides its customers with new versions (or “releases”
) of its Tekla Structures software on a regular basis, as well as regular intermediary updates (or “sub-releases”
) between its main releases. Version 20.0 of Tekla Structures and its associated documentation was released to the public in March 2014. Trimble released Version 20.1 (a sub-release of Version 20.0) in 2014 and then released Version 21.0 of the software in March 2015. Both the main releases (Version 20.0 and Version 21.0) and the sub-release (Version 20.1) involve changes to the software code as well as updates to the associated documentation for each version. All of these were authored by a team of Trimble employees located mainly in Finland, with one member located in Great Britain.
[7] Trimble has registered Canadian copyright for Version 20.0 (Canadian Registration No. 1154535), as well as for Version 21.0 (Canadian Registration No. 1154540). It does not register copyright on each sub-release because they are modifications and improvements built entirely on the base code and documentation for the previous release. Therefore, Trimble considers the pre-existing registration of Version 20.0 to cover its respective sub-releases, including Version 20.1 in issue here.
(…)
[41] They say that in addition to the registered copyright in their main releases, their sub-release, Tekla Structures Version 20.1 software and related materials, qualifies for copyright protection as original literary works pursuant to the Copyright Act, RSC 1985, c C-42 [Act]. Version 20.1 contains various new features, updates, modifications and additions that build on the code and documentation for Version 20.0, which has been registered for copyright protection in Canada.
[42] The Plaintiffs submit that the Act defines “literary work” to include computer programs and this has been found to include both source code and object code, as explained in Matrox Electronic Systems Ltd v Gaudreau, [1993] RJQ 2449, [1993] QJ No 1228 (QL) (Qc Sup Ct):
With respect to computer software, the keystone to programming is the algorithm which is transformed by a programmer into computer language. The program is first “translated” into a source code and then (in order for the computer to function) the source code is “translated” into object code (a machine readable language). The source code and the object code both embody a set of instructions or statements in a computer. The jurisprudence is consistent in identifying source codes and object codes as being ideas expressed (on disk or in a chip) in a particular form and, therefore, protectable under copyright. [Footnotes omitted].
[43] The Plaintiffs argue that in this case Version 20.1 of the Tekla Structures software meets this definition, and that it meets the definition of originality set out in the jurisprudence (see CCH Canadian Ltd v Law Society of Upper Canada, 2004 SCC 13 at paras 16, 25 [CCH]).
[44] Trimble asserts that its copyright in Version 20.1 subsists because that version of the software was developed and written by the same authors who developed Version 20.0. These authors are all employees of Trimble located in Finland and the United Kingdom, which are Berne Convention countries (subsection 5(1) of the Act; see also section 2 of the Act). Trimble submits that it owns copyright in the program developed by its employees, pursuant to subsection 13(3) of the Act.
[45] The Plaintiffs assert that these elements are sufficient to establish that Trimble’s copyright subsists in Version 20.1 of the Tekla Structures program.
[46] I agree. The evidence establishes that Trimble owns the copyright in Version 20.1 of the Tekla Structures program and that its copyright subsists and is enforceable.
[47] The evidence shows that Version 20.1 is an original work that is the product of skill and judgment (CCH at para 25), and that it fits within the definition of “literary work” set out in the Act.
The principle of national treatment also applies in relation to ‘other subject matter’, e.g. in relation to performer’s performances, sound recordings and broadcast signals. However, the situation is less straightforward for these categories of rights owners than for authors of works, because Canada ratified two international conventions that have similar but not identical coverage, the Rome Convention and the WPPT. For one thing, the WPPT does not cover broadcast signals, contrary to the Rome Convention. Moreover, the rights granted under the WPPT are much broader than under the Rome Convention. Finally, the number of countries that have ratified the WPPT (111) is larger than those that have ratified the Rome Convention (96). Canada can only grant national treatment to parties of the nationals of countries that have ratified the same convention. This explains the two-tiered approach in the definition of ‘treaty country’ for the purposes of related rights owners. The rights granted under s. 15(1) are conferred on Canadians and nationals of a Rome Convention country, while the rights granted under s. 15(1.1) are conferred on Canadians and nationals of a WPPT country. The same two-tiered system of points of attachment applies to sound recordings, pursuant to ss. 18(1) and 18(2) versus ss.18(1.1) and 18(2.2) CA. The protection granted in relation to broadcast signals is conferred on members of the Rome Convention and the TRIPS Agreement in accordance with s.21 CA. Also worth pointing out is s.22 of the Act which allows the Minister to grant protection to performers, makers of sound recordings and broadcasters from non-Rome or WPPT countries on the basis of reciprocity. This means that protection is granted in Canada to foreign (non-Rome or WPPT) performers, makers of sound recordings and broadcasting organizations only to the extent that the country from which they originate grants protection to Canadian performers, makers of sound recordings and broadcasting organizations on their soil. Recognition by the Minister is done via the Certification of Countries Granting Equal Copyright Protection Notice. The list contains the names of twenty-two countries.
D. Authorship/ Ownership/ Duration/ Registration
Authorship is a key component of the copyright system. It is both a crucial component of the copyright regime in Canada’s Act as well as a vehicle used to fulfil certain policy objectives. As will be demonstrated in the following section, authorship in a work can in certain circumstances be distinguished from copyright ownership. This distinction is important, because despite whoever comes to own the copyright in a work through subsequent assignment, one key aspect of the copyright protection is determined by the person of the author: the duration of protection. Despite this important role played by authorship, neither ‘author’ nor ‘authorship’ is defined in the Act. In this vein, the following sections attempt to articulate the nature, limits and policy objectives of the ‘authorship’ construct.
1. Creator Doctrine
Despite the absence of a definition of ‘author’ in the Copyright Act, it is generally admitted that an author is the person or persons who give a work’s ideas their original form or expression. Section 13(1) of the Act states that the author of a work shall be the first owner of the copyright therein, unless ownership is displaced either by employment (see below) or agreement. This rule is known as the ‘creator doctrine’. The author of a novel or poem is the person who writes the work. Likewise, the author of a musical composition is the composer, and the author of a painting is the person who paints it. To allocate the copyright initially to these instrumental people in bringing the work into existence is likely morally and economically intuitive to many people.
Subs.13(1) of the Act makes a clear distinction between the concept of ‘author’ and that of ‘owner’. The wording of the provision denotes that the ownership of copyright pertains to the abstract work, not on its physical embodiment. This distinction is a universally accepted concept in copyright law, which in some countries is indicated through the double latin expression ‘corpus misticum‘ (abstract work) vs ‘corpus mechanicum‘ (physical work). In other words, the ownership is in the ‘corpus misticum‘ (i.e. the novel, musical composition or feature film), and not in the ‘corpus mechanicum‘ in which the work is embedded (i.e. the tangible book, CD or DVD). In the case of a painting, the copyright owner need not own the actual physical painting in order to assert copyright in it. The copyright, therefore, is something distinct from the physical thing in which the work is fixed.
Subs.13(1) is complemented by subs. 13(4)-(7) on the transfer of rights (see below) and subs. 14(1) of the Act. This provision is meant to empower the heirs of single authors to regain control over the rights after the expiration of twenty-five years after the author’s death. Through a reversion of rights, it is thought that the heirs will be in a position to better exploit the work. Although well-intended, this provision has hardly been exercised in more than a handful of cases and has therefore remained, over the years, little more than a dead letter [see: Winkler v. Roy, 2002 FCT 950; andAnne of Green Gables Licensing Authority Inc. v. Avonlea Traditions Inc., 2000 CanLII 22663 (ON SC) at para. 70 and ff.]
Limitation where author is first owner of copyright
14 (1) Where the author of a work is the first owner of the copyright therein, no assignment of the copyright and no grant of any interest therein, made by him, otherwise than by will, after June 4, 1921, is operative to vest in the assignee or grantee any rights with respect to the copyright in the work beyond the expiration of twenty-five years from the death of the author, and the reversionary interest in the copyright expectant on the termination of that period shall, on the death of the author, notwithstanding any agreement to the contrary, devolve on his legal representatives as part of the estate of the author, and any agreement entered into by the author as to the disposition of such reversionary interest is void.
Joint authorship
The determination of who qualifies as author is more difficult in the case of more complex works created by multiple authors. Where two or more authors work collaboratively in the preparation of a work, this results in a work of ‘joint authorship’. The Act defines a “work of joint authorship” as follows:
collective work means
(a) an encyclopaedia, dictionary, year book or similar work,
(b) a newspaper, review, magazine or similar periodical, and
(c) any work written in distinct parts by different authors, or in which works or parts of works of different authors are incorporated…
In Robertson v Thompson Corp (see below), each daily edition of the newspaper was treated as a “collective work” in that it included contributions from a number of different journalists. Each of these stories or editorial pieces were independent works, but together formed a collective discernible work capable of protection. In this regard, a collective work is distinguishable from a work of joint authorship in that a collective work contains independently identifiable works. For collective works, it must be the case that the constituent works are distinct from one another – precisely the opposite requirement from works of joint authorship.
It is important to briefly note the distinctions between a collective work and a “compilation”. The latter is defined separately under the Act as:
compilation means
(a) a work resulting from the selection or arrangement of literary, dramatic, musical or artistic works or of parts thereof, or
(b) a work resulting from the selection or arrangement of data.
Compilations
2.1 (1) A compilation containing two or more of the categories of literary, dramatic, musical or artistic works shall be deemed to be a compilation of the category making up the most substantial part of the compilation.
(2) The mere fact that a work is included in a compilation does not increase, decrease or otherwise affect the protection conferred by this Act in respect of the copyright in the work or the moral rights in respect of the work.
“[37] Similarly, the Publishers have a copyright in their newspapers, each an original collection of different components reflecting the exercise of skill and judgment. Section 2 of the Copyright Act, as noted above, defines a compilation as an original work that is created as a result of selection or arrangement. This same conception of originality underlies the inclusion of the newspapers in the definition of collective work. We note that the use of the disjunctive “or” in s. 2 is significant. The Copyright Act does not require originality in both the selection and arrangement”.
maker means
(a) in relation to a cinematographic work, the person by whom the arrangements necessary for the making of the work are undertaken, (…)
Conditions for subsistence of copyright
5 (1) Subject to this Act, copyright shall subsist in Canada, for the term hereinafter mentioned, in every original literary, dramatic, musical and artistic work if any one of the following conditions is met:
(a) in the case of any work, whether published or unpublished, including a cinematographic work, the author was, at the date of the making of the work, a citizen or subject of, or a person ordinarily resident in, a treaty country;
(b) in the case of a cinematographic work, whether published or unpublished, the maker, at the date of the making of the cinematographic work,
(i) if a corporation, had its headquarters in a treaty country, or
(ii) if a natural person, was a citizen or subject of, or a person ordinarily resident in, a treaty country; or
(c) in the case of a published work, including a cinematographic work,
(i) in relation to subparagraph 2.2(1)(a)(i), the first publication in such a quantity as to satisfy the reasonable demands of the public, having regard to the nature of the work, occurred in a treaty country, or
(ii) in relation to subparagraph 2.2(1)(a)(ii) or (iii), the first publication occurred in a treaty country.
David Vaver explains that the notion of ‘maker of a cinematographic work’ was introduced in the Act to allow Canada to comply with Article 4 of the Berne Convention (e.g. “[t]he protection of this Convention shall apply, even if the conditions of Article 3 are not fulfilled, to: (a) authors of cinematographic works the maker of which has his headquarters or habitual residence in one of the countries of the Union“) and ensure that films are protected in Canada even where none of the authors is a Berne Union national or resident, no matter who owns the work’s copyright. This international obligation is fulfilled through the combination of the definition of ‘maker’ in s.2 and subs.5(1)(b)(i) of the Act.
Authorship is distinct from ownership. The Act identifies when a cinematographic work is eligible for protection, e.g. when the author is a resident or citizen of a treaty country or the maker has its headquarters in a treaty country. Section 5(1) of the Act does not create a presumption of ownership or a transfer of rights to the maker or anyone else. This section does not address the issue of ownership in any way. As Vaver notes, s.34.1(2)(c) reinforces this position by providing that “if, on a cinematographic work, a name purporting to be that of the maker of the cinematographic work appears in the usual manner, the person so named shall, unless the contrary is proved, be presumed to be the maker of the cinematographic work” . This last provision focuses on the identity of the maker, not on the ‘copyright owner’.
Consequently, the ownership of rights in a cinematographic work follows the creator doctrine, unless the presumption of s.13(3) of the Act applies, e.g. where the rights in works created during the course of employment are deemed to be long to the employer.
2. Works created during the course of employment
Consistent with most other countries that follow the Anglo-American copyright tradition, Canada has an exception to the creator doctrine in the case of works created “in the course of employment”. Other jurisdictions refer to this exception as “works for hire” or “employee created works”, but all follow the same general approach. The basis for the attribution of the initial ownership of rights to the employer is that since the latter assumes the major financial, organizational, and associative risks involved in the creation, production and distribution of the work, they should have full control, including with respect to third parties, over the exploitation of that work. In these circumstances, the author receives compensation for their intellectual creation not in the form of an exclusive economic right in the work – which is presumed transferred to the employer, but in the form of a salary or any other form of agreed remuneration.
The key provision on this point is found at section 13(3) of the Act. That provision states:
Work made in the course of employment
(3) Where the author of a work was in the employment of some other person under a contract of service or apprenticeship and the work was made in the course of his employment by that person, the person by whom the author was employed shall, in the absence of any agreement to the contrary, be the first owner of the copyright, but where the work is an article or other contribution to a newspaper, magazine or similar periodical, there shall, in the absence of any agreement to the contrary, be deemed to be reserved to the author a right to restrain the publication of the work, otherwise than as part of a newspaper, magazine or similar periodical.
An employee will more readily use the tools or equipment made available by the employer than an independent contractor. There is no indication of a relation of employment, however, if the author buys or rents their own equipment and assumes all incidental expenses; if the author does not work under the direction or control of another person, but remains at all times free to use their creative flair and to decide, at their discretion, how to create; if the author incurs both the risks of loss or chances for profit without the possibility to receive financial support from or the obligation to share profits with the other party; and if the author’s work is distinct and separated from the activities of the other party.
Robertson v Thompson Corp, 2006 SCC 43
In 1995, Robertson wrote a number of articles for The Globe and Mail newspaper. Some years later, The Globe and Mail included these articles in online databases and on CD-ROMs. The online databases allowed users to search through and read individual articles, whereas the CD-ROM required users to find articles located within each edition of the entire newspaper. Robertson retained the right to restrict further publication of her articles in accordance with section 13(3) of the Act, and brought a claim against The Globe and Mail (along with other journalists). The primary issue before the Court was whether either the online databases or CD-ROMs infringed the residual rights of Robertson and other journalists.
Interestingly, the Court drew a distinction between the republication of the articles as part of a searchable database and the digitisation of entire newspaper editions onto a CD-ROM. For the Court, key was the articles’ relationship to the rest of the content in the newspaper in which they originally appeared. At paragraph 41, the majority writes:
“…But it does not follow that the articles of the newspaper can be decontextualized to the point that they are no longer presented in a manner that maintains their intimate connection with the rest of that newspaper…These products are more akin to databases of individual articles rather than reproductions of the Globe. Thus, in our view, the originality of the freelance articles is reproduced; the originality of the newspapers is not.”
Therefore, the online database which allows the user to search for individual articles is a reproduction of the original articles and contrary to section 13(3), while the inclusion of entire editions of the newspaper onto a CD-ROM is not. This is because the reproduction of the entire newspaper is not a reproduction or republication of the original articles per se.
The result is that performers do not fall subject to the same “works creating during the course of employment” rule found in section 13(3). And from a certain perspective, this is understandable. Performers execute works of authorship and are very often connected to the copyright owners through some sort of contractual arrangement. If the Act created a presumption where those rights are presumptively held by the employer, it would largely defeat the purpose of providing these contributors to works with economic rights. This reality is reflected to some degree in section 16 of the Act, which relates to performers:
The larger point is that related rights are intended to provide performers with specific and targeted economic value that can be exchanged and negotiated. While not stipulated explicitly in the Act, they are an important and noteworthy exception to the general “works created during the course of employment” rule found in section 13(3). The law makes an exception in the case of cinematographic works:
17(1) Where the performer authorizes the embodiment of the performer’s performance in a cinematographic work, the performer may no longer exercise, in relation to the performance where embodied in that cinematographic work, the copyright referred to in subsection 15(1).
(2) Where there is an agreement governing the embodiment referred to in subsection (1) and that agreement provides for a right to remuneration for the reproduction, performance in public or communication to the public by telecommunication of the cinematographic work, the performer may enforce that right against
(a) the other party to the agreement or, if that party assigns the agreement, the assignee, and
(b) any other person who
(i) owns the copyright in the cinematographic work governing the reproduction of the cinematographic work, its performance in public or its communication to the public by telecommunication, and
(ii) reproduces the cinematographic work, performs it in public or communicates it to the public by telecommunication,
and persons referred to in paragraphs (a) and (b) are jointly and severally liable to the performer in respect of the remuneration relating to that copyright.
Whereas the performers engaged in the production of a cinematographic work may or may not qualify as employees, the law removes the possibility to exercise the rights on the performance in a film, as soon as the performers have acquiesced to the inclusion of their contribution into the film. While this makes sense from an economic point of view, the language of s.17(1) of the Act is not clear, especially as it relates to the nature of the legal relationship between the performer and the producer of the cinematographic work. Does the law operate a transfer of rights? To whom? What if there is no agreement, such as mentioned in s.17(2), does it mean that the performer is owed no remuneration at all for the reproduction, performance in public or communication to the public by telecommunication of the cinematographic work? Does this construction leave performers at the mercy of film producers for any type of remuneration?
3. Crown copyright
Like many commonwealth countries, Canada’s Act has a distinct set of rules for works created by or on behalf of the Crown (i.e., government). These rules act as a general exception to the term limit as set out in section 6. The framework for Crown copyright is found at section 12 of the Act, which states:
Where copyright belongs to Her Majesty
12 Without prejudice to any rights or privileges of the Crown, where any work is, or has been, prepared or published by or under the direction or control over Her Majesty or any government department, the copyright in the work shall, subject to any agreement with the author, belong to Her Majesty and in that case shall continue for the remainder of the calendar year of the first publication of the work and for a period of fifty years following the end of that calendar year.
The rationale for Crown copyright is based upon a number of policy goals. The first of which is to ensure accuracy and integrity of government publications by limiting who may reproduce them. Secondly, the Crown has the ability to provide publications at a lower cost than private publishers. In this vein, it can be argued that Crown copyright ensures supervision and control in the publication of government information and that this in the public interest.
One point of controversy when it comes to Crown copyright, however, is the first bit of language in section 12, which states “[w]ithout prejudice to any rights or privileges of the Crown”. This is often referred to as the “royal prerogative”, which is a perpetual property right originally found in the United Kingdom’s 1911 Copyright Act. This initial caveat to section 12 renders the Crown copyright framework ambiguous given that the latter half of section 12 provides for a defined term of 50 years. Historically, the royal prerogative only applied certain types of acts, including printing – but importantly, there is no determinate list of acts which set limits on the scope of this prerogative. The cumulative effect in practice is that it is extremely difficult to determine which acts of printing and reproduction are exercised by the Crown in accordance with the royal prerogative versus merely ‘prepared by or under the direction of the Crown’ in accordance with section 12.
Numerous aspects of Canada’s Crown copyright regime have invited criticism in recent years. The first is that as we move into the digital era, the premises upon which Crown copyright sits are called into question. Namely, the need to ensure authenticity and supervision of reproducing government documents is not aided by an exclusive rights regime. As almost all public legal materials and government documents are produced in electronic format, there is little utility (or practical capability) to restrict who may engage in the reproduction of these materials. Secondly, the existence of the Crown copyright regime may have the deleterious effect of censorship by creating a disincentive to use and reproduce government works. From a utilitarian perspective, this is antithetical to one of the key objectives of the copyright system.
Professor Elizabeth Judge (University of Ottawa, Common Law) has written extensively on the subject of Crown copyright and has put forward a series of proposals to reform Canada’s framework. Judge authored a chapter titled, “Crown Copyright and Copyright Reform in Canada” in In The Public Interest: The Future of Canadian Copyright Law (2005), in which she recommended the following:
(a) narrowing the scope of Crown copyright to apply to specific types of works;
(b) exempting public legal materials from protection;
(c) eliminating the reference to the royal prerogative, or including an exhaustive list of acts through which this prerogative is exercised;
(d) imposing upon governments a positive obligation to publish such materials in a publicly accessible format so as to ensure access.
What do you think of Canada’s Crown copyright regime? Do you agree with Professor Judge that it should be reformed? In the most recent Statutory Review of the Copyright Act (June 2019), the Standing Committee on Industry, Science and Technology noted that the Crown copyright regime serves two distinct functions:
(1) to assert ownership over works prepared by or for Canadian governments; and
(2) to allow Canadian governments to disseminate works that they do not own for policy reasons (i.e., through partnerships with private entities).
While the Committee acknowledged the importance of (2), it largely rejected the notion that asserting ownership of copyright in works prepared by or for governments was necessary or desirable. The Committee reported that “[e]xercising copyright over governmental publications created in the public interest should be the exception rather than the rule.”
Do you agree with the Committee’s position on this? Can you envision circumstances in which it would be desirable for Canadian governments to assert copyright and restrict reproduction of works which they prepared or had prepared by others?
Keatley Surveying v Teranet Inc, 2019 SCC 43
Ontario’s electronic land registration system provides information about who owns (or has rights) to various parcels of land throughout the province. It is a database not only of documents authorising conveyances and transfer of property, but also maps and survey plans. This electronic land registration system is operated by a private company, Teranet. It contracted with surveyors to build a database of survey plans throughout Ontario. Through Teranet’s contract with the province of Ontario, Teranet agreed that all documents submitted to the electronic land registration system become property of the Crown.
Image obtained through an Unsplash Licence from www.unsplash.com. Photograph by Scott Blake. Image provided by user @sunburned_surveyor
One of the surveyors that Teranet contracted with to provide survey plans was Keatley Surveying. It brought a class action against Teranet on behalf of all land surveyors who have provided plans of survey to Teranet to be included in the provincial electronic database. It alleged that the individual surveyors (including Keatley Surveying) retained copyright in their plans of survey. It took the position that the Crown should only be able to claim copyright in works that it prepared itself or where it specifically directed or ordered another to do so. Conversely, Teranet argued that the Crown retains copyright in everything it publishes – regardless of the degree to which it prepared or had the plans of survey prepared.
At issue, therefore, was the degree to which direction or control is necessary on behalf of governments over the creation of works in order to ground an assertion of Crown copyright. A secondary concern was the meaning of a “government work”.
The dispute made its way to the Supreme Court of Canada, where it was decided that the province of Ontario possessed Crown copyright in the plans of survey. It found that there was sufficient direction and control over the creation of the database and collection of the materials that were included in it. In looking to whether the survey plans were “government works”, the Court assessed this on the basis of whether the Crown has an important interest in ensuring accuracy and integrity. In the case of land surveys, the Court found that this had been made out.
The Supreme Court of Canada’s decision in Keatley Surveying v Teranet affirmed that Crown copyright is still alive and well in Canada, but with some caveats on its potential to be abused. In particular, Abella J., writing for the majority at paragraph 54 clarified:
[54] But Crown copyright cannot be so expansive in scope that it allows for the routine expropriation of creators’ copyright in their works. As was noted in Théberge, the other half of the Copyright Act’s balance is “obtaining a just reward for the creator”. There is also a danger of Crown copyright undermining the very purpose it was meant to serve if interpreted too expansively. Sweeping classes of works into the scope of Crown copyright, when such rights were heretofore unacknowledged as being subject to copyright at all, risks impeding the public interest in accessing these works and could compromise the existence of a robust public domain (see e.g. Barry Torno, Crown Copyright in Canada: A Legacy of Confusion (1981), at Summary). Put differently, the Crown’s public interest in ensuring the accuracy and integrity of government documents cannot lead to such an expansive Crown copyright regime that the public interest in accessing information is harmed.
Overall, the Court emphasised the public interest dimensions of Crown copyright, but largely left the doctrine of Crown copyright in tact. What seemed to be determinative for the finding that the surveys consistuted government works was that:
[82] …[T]he Crown decided to create a single, authoritative registry. These are precisely the types of works over which Crown copyright should subsist – those over which it is necessary for the Crown to guarantee authenticity, accuracy and integrity of the public interest.
* * *
Whereas ss.13(1)-(3) of the Act establish the rules of ownership, subs.13(4)-(7) confirms the divisibility of the bundle of rights, as well as the complete transferability of the rights. In the case of an assignment, the Act requires that the assignment be laid down in writing. Licenses do not require a written act to be held valid.
Assignments and licences
(4) The owner of the copyright in any work may assign the right, either wholly or partially, and either generally or subject to limitations relating to territory, medium or sector of the market or other limitations relating to the scope of the assignment, and either for the whole term of the copyright or for any other part thereof, and may grant any interest in the right by licence, but no assignment or grant is valid unless it is in writing signed by the owner of the right in respect of which the assignment or grant is made, or by the owner’s duly authorized agent.
Ownership in case of partial assignment
(5) Where, under any partial assignment of copyright, the assignee becomes entitled to any right comprised in copyright, the assignee, with respect to the rights so assigned, and the assignor, with respect to the rights not assigned, shall be treated for the purposes of this Act as the owner of the copyright, and this Act has effect accordingly.
Assignment of right of action
(6) For greater certainty, it is deemed always to have been the law that a right of action for infringement of copyright may be assigned in association with the assignment of the copyright or the grant of an interest in the copyright by licence.
Exclusive licence
(7) For greater certainty, it is deemed always to have been the law that a grant of an exclusive licence in a copyright constitutes the grant of an interest in the copyright by licence.
4. Term of copyright protection
Copyright is a time-limited monopoly over the use of protected works. Once copyright protection expires on a work and other subject matter, it can be used without any restriction. For works of authorship (Part I.), the duration is measured in relation to the life of the [longest living] author[s]. In cases where the identity of the author is unknown, the copyright duration is determined by reference to the date of publication of the work. For other subject matter (Part II.), the determination of the duration of protection follows a staggered approach as explained below.
Until very recently, the duration of copyright protection in Canada followed the Berne Convention standard of the author’s lifetime plus 50 years after their death. As a result of the Canada-United States-Mexico Agreement (“CUSMA”) signed in November 2018, Canada must amend the Copyright Act by extending the minimum general copyright term to life of the author plus 70 years after their death. Canada was the only one of the three countries party to the Agreement who must amend its Copyright Act to comply with this obligation, since the two other parties already recognised a longer term of protection. This brings Canada’s term of protection in line with approximately 80 countries who have moved to a term of life-plus 70 years or longer, including key trading partners such as the United States (U.S.), Mexico, the European Union (EU), the United Kingdom, Australia, Japan, and South Korea. The process has not been without controversy, however. Organisations representing stakeholders in the music and entertainment industries have been generally supportive of this extension, while user rights groups and academic commentators have been overwhelmingly critical, particularly because of the reduced access to works. Extending the term of protection by twenty years means in practice that no work will enter the public domain in Canada before January 1st, 2043. Worth noting is that, according to the Canadian Copyright Act, authors who are nationals of any country, other than a country that is a party to the Canada–United States–Mexico Agreement, that grants a shorter term of protection are not entitled to claim a longer term of protection in Canada.
In view of the ongoing debate, Canada chose to follow what it called a ‘cautious approach’ to the implementation of the term extension obligations. It modified the Act in two stages: first, through Bill C-4, An Act to Implement the Agreement Between Canada, the United States of America and the United Mexican States, which received royal assent on March 13, 2020; and second, through Bill C-19 Budget Implementation Act 2022, which received royal assent on June 23, 2022.
The first set of immediate legislative modifications (Bill C-4) extended the term of copyright by twenty years with respect to less controversial matters, including anonymous and pseudonymous works for single authored works (s.6.1) and for joint authorship (s.6.2); with respect to non-dramatic cinematographic works (s.11.1); and with respect to performances and sound recordings (s.23). The second set of legislative modifications (Bill C-19) addressed the general rule of s. 6, as well as posthumous works under s. 7 CA. As a general rule, the term for which copyright now subsists is the life of the author, the remainder of the calendar year in which the author dies, and a period of 70 years following the end of that calendar year.
With respect to anonymous and pseudonymous works, where the identity of the author of a work is unknown, copyright in the work shall subsist until the end of 75 years following the end of the calendar year in which the work is made. However, if the work is published before the copyright expires, the copyright continues until the earlier of the end of 75 years following the end of the calendar year in which the first publication occurs and 100 years following the end of the calendar year in which the work was made. Of course, if the author becomes known before the expiration of the term, the general rule will apply.
Note that the protection in a communication signal has remained unchanged and subsists until the end of 50 years after the end of the calendar year in which the communication signal is broadcast.
S.2.2(1) specifies that for the purposes of the Act, publication means in relation to sound recordings, making copies of a sound recording available to the public, but does not include the performance in public, or the communication to the public by telecommunication, of a literary, dramatic, musical or artistic work or a sound recording. The Act does not define what a ‘first fixation’ entails. From the definition of ‘maker of a sound recording’ in s.2.11 CA, e.g. the person by whom the arrangements necessary for the first fixation of the sounds are undertaken (‘include arrangements for entering into contracts with performers, financial arrangements and technical arrangements required for the first fixation of the sounds for a sound recording‘), we can infer that a first fixation would necessitate some financial and technical arrangements. Whether just any recording would meet this low threshold is unclear.
Example: Calculating the term of protection for performances and sound recordings
Take, for example, Avril Lavigne’s live performance of her ‘Bite Me Canada Tour 2022’, in Moncton on June 1, 2022. The performance she gave that evening is protected for a term of 50 years, ending on January 1st, 2073. If, before January 1st, 2073, the performance is fixed in a sound recording, the term of protection – for both Avril Lavigne and the maker of the sound recording – lasts for 70 years from the first fixation of the performance on a sound recording. Finally, if this sound recording is published before the expiration of the 70 years from first fixation, it will remain protected for the shorter period between 75 years from publication or 100 years from the first fixation.
Admittedly Avril Lavigne’s performance on June 1, 2022 may not have been recorded. Perhaps one of the concert evenings in her ‘Bite Me Canada Tour 2022’ was for the production of a ‘live in concert recording’, or she might make a studio recording of the same performance. This ‘first fixation’ would gain an extra 70 years, which would gain an additional term of protection as soon as it would be published.
While the following scenario is highly unlikely, if the studio recording of the ‘Bite Me Canada Tour 2022’ performance took place only in December 2072 (one month before the expiration of the protection on the performance) and the copies thereof made available to the public only in June 2141 (a few months before the expiration of the protection on the first fixation), the maximum term of protection for this sound recording would last until 2172, which is 100 years from the first fixation (rather than an end date in 2216 which would be the 75 years from publication). In other words, Avril Lavigne’s performance on June 1, 2022 has the theoretical potential of being protected for another 150 years, depending on the chain of events.
With respect to non-dramatic cinematographic works, s.11.1 of the Act provides for a two-tiered term calculation, similar to that of sound recordings. Protection shall subsist until the end of 70 years following the end of the calendar year in which the cinematographic work or the compilation is made. However, if the cinematographic work or the compilation is published before the copyright expires, the copyright continues until the earlier of the end of 75 years following the end of the calendar year in which the first publication occurs and 100 years following the end of the calendar year in which the cinematographic work or the compilation was made.
5. Copyright Registration
The reader will recall that copyright protection is conferred automatically on the author, by the simple act of creating an original work, or other subject matter. Pursuant to the Berne Convention, neither the existence or the exercise of copyright are to be subject to any formalities, such as registration. Where a registration system exists, it should be entirely optional. Registration has obvious benefits. As s.53 CA indicates, a certificate of registration is evidence that the copyright subsists and that the person registered is the owner of the copyright, just like a certificate of registration of an assignment of copyright or a license interest is evidence that the right recorded on the certificate has been assigned or licensed and that the assignee or licensee registered is the owner of that right or holder of that interest.
In other words, registration alleviates much of the evidential burden in proving entitlement to copyright. It also signals the author or owner’s intention to seek protection.
54 (1) The Minister shall cause to be kept at the Copyright Office a register to be called the Register of Copyrights in which may be entered
(a) the names or titles of works and of other subject-matter in which copyright subsists;
(b) the names and addresses of authors, performers, makers of sound recordings, broadcasters, owners of copyright, assignees of copyright, and persons to whom an interest in copyright has been granted by licence;
Pursuant to s.54 CA, voluntary registration is open not only in relation to works of authorship, but also in relation to other subject matter in which copyright subsists. Registration is also open for assignments of rights and exclusive licences.
In many cases, claimants seek enforcement of their copyright in the absence of registration. While allowing unregistered copyright holders to enforce their rights significantly broadens who may seek the benefits of protection, it makes the evidentiary burden of proving copyright subsistence, ownership and entitlement more onerous. For this, there are a few things that an owner of unregistered copyright will need to demonstrate in order to be successful on an infringement claim:
(a) Copyright subsistence. In the absence of a certificate of registration, the claimant will need to establish that copyright protection subsists in the object of the claim, e.g. the work or other subject matter, meets the statutory requirements for protection;
(b) Authorship. It may be necessary for a claimant seeking enforcement of certain rights to show that they are the author of the work. Where the economic rights have been licensed or assigned to another party, the question of authorship may not be particularly relevant. In the case of enforcing moral rights, however, the question of authorship will be very relevant. Otherwise, if an issue upon a claim for infringement relates to whether the term of copyright has expired in the work, authorship may be relevant for measuring the appropriate length of that term. In practical terms, authorship can be evidenced through a variety of means, including affidavit evidence and witness testimony. In some instances, the question of authorship may be not simple. Where multiple people brought a work into existence and their relationship during that process was not made clear, there may be contentions that the work is actually one of joint authorship or that it is a collective work.
(c) Ownership. In most cases, it will be necessary for the claimant to demonstrate that they own the copyright or related right at issue. Where the copyright has not been licensed or assigned, this may flow naturally from the claimant also being the author. In other cases, the claimant may need to evidence licensing or assignment agreements to demonstrate that they have acquired the rights to seek enforcement of infringing activity. The question of ownership can become less than straightforward when distinct economic rights have been licensed and assigned to multiple parties, leaving the question of who may enforce those rights somewhat ambiguous.
(d) Authorization. The claimant will also need to demonstrate that the activity in question rises to the level of infringement. This will require basing the claim upon one of the exclusive rights of the copyright owner and some evidence that the defendant’s activity falls within these acts in the absence of authorization. Relevant to this question may be whether the allegedly infringing activity involved a “substantial part” or whether an existing agreement between the parties had impliedly authorized or permitted the activity in question.
This last point takes us to the next section of this chapter where we explore the various economic rights conferred by law.
E. Economic Rights
In general terms, the rights conferred under the copyright regime can be distinguished between economic and moral rights. Economic rights are those that more closely resemble traditional conceptions of property in that they can be bought, sold, licensed, assigned and subject to various limitations. The economic rights under copyright are principally and primarily directed at promoting the owner’s economic interest. By contrast, moral rights are predicated on the notion that creative works are also an extension of the artist’s personality and that the preservation or protection of the work itself is needed to protect the dignity interests of the creator. Stemming initially from the civil law tradition, moral rights play a less prominent role in Canadian copyright law than in other jurisdictions, but their underlying rationale has a played a role in shaping the overall purpose and objectives of the Canadian framework. Their existence within copyright law is indicative of its parallel concern with non-economic aspects which are derived from natural rights principles.
Like many property rights, copyright constitutes a bundle of rights that can apply differently to specific classes of works and subject matter. The bundle shows significant differences whether the rights are conferred in relation to works of authorship (Part I of the Act) or other subject matter, notably the performers’ performances, sound recordings, communication signals (Part II of the Act). In the following pages, we present the most important rights granted by the Copyright Act to the two main categories of rights owners.
1. Rights in Relation to Works of Authorship (Part I of the Act)
All rights granted in relation to works of authorship are set out in s.3(1) of the Act. The introductory paragraph of s. 3(1) contains general rights, namely reproduction, performance and publication, followed by a list of specific rights in ss.3(1)(a) to (j). In its entirety, s. 3(1) states:
3 (1) For the purposes of this Act, copyright, in relation to a work, means the sole right to produce or reproduce the work or any substantial part thereof in any material form whatever, to perform the work or any substantial part thereof in public or, if the work is unpublished, to publish the work or any substantial part thereof, and includes the sole right
(a) to produce, reproduce, perform or publish any translation of the work,
(b) in the case of a dramatic work, to convert it into a novel or other non-dramatic work,
(c) in the case of a novel or other non-dramatic work, or of an artistic work, to convert it into a dramatic work, by way of performance in public or otherwise,
(d) in the case of a literary, dramatic or musical work, to make any sound recording, cinematograph film or other contrivance by means of which the work may be mechanically reproduced or performed,
(e) in the case of any literary, dramatic, musical or artistic work, to reproduce, adapt and publicly present the work as a cinematographic work,
(f) in the case of any literary, dramatic, musical or artistic work, to communicate the work to the public by telecommunication,
(g) to present at a public exhibition, for a purpose other than sale or hire, an artistic work created after June 7, 1988, other than a map, chart or plan,
(h) in the case of a computer program that can be reproduced in the ordinary course of its use, other than by a reproduction during its execution in conjunction with a machine, device or computer, to rent out the computer program,
(i) in the case of a musical work, to rent out a sound recording in which the work is embodied, and
(j) in the case of a work that is in the form of a tangible object, to sell or otherwise transfer ownership of the tangible object, as long as that ownership has never previously been transferred in or outside Canada with the authorization of the copyright owner,
and to authorize any such acts.
The relationship between the rights set out in the introductory paragraph and the subsequent subparagraphs was examined by the Supreme Court in Entertainment Software Association v SOCAN, 2012 SCC 34, [ESA] (discussed in greater detail below, under ‘right of communication to the public by telecommunication) and later discussed by Prof Elizabeth Judge in her contribution ‘Righting a Right: Entertainment Software Association v SOCAN and the Exclusive Rights of Copyright for Works‘, In: The Copyright Pentalogy: How the Supreme Court of Canada Shook the Foundations of Canadian Copyright Law, University of Ottawa Press 2013, pp. 403-429.
The question put to the Court in ESA was whether the exclusive rights of copyright are exhaustively defined by the rights set out in the introductory paragraph of section 3(1)—namely, reproduction, performance and publication—implying that rights listed in ss.3(1)(a)-(i) are merely illustrative of those general rights? Or whether all the rights set out in section 3(1) are separate and distinct? In a five to four decision, the majority of the Court concluded that the rights set out in the introductory paragraph are exhaustive, meaning that the rights listed in the following subsections are merely illustrations. The consequence of the majority decision is that a right listed in ss.3(1)(a)-(i) cannot apply simultaneously, for the same act of exploitation, with another right that is part of the same category of general rights in the introductory paragraph. As Prof Judge observes:
‘The nature of the disagreement in the closely split Supreme Court arguably goes to the most central principle of copyright law: the nature of the exclusive rights of copyright, which defines how many rights an owner has, how many rights an owner can simultaneously assert, and when the exercise of a right pre-empts other rights’.
She adds later on:
‘The conflict between the majority’s and dissent’s approaches to interpreting section 3 may be attributed in great part to the ambiguity of a statutory definition that employs both “means” and “includes”, a conjunction that “inevitably raises a doubt as to interpretation.” The majority and the dissent agree that the issue turns on statutory interpretation, but part ways on the preferred interpretation’.
Not only is the majority decision of the Supreme Court in the ESA case difficult to reconcile with the interpretation commonly given to the provisions of the Berne Convention, the TRIPS Agreement and comparable legislation from Commonwealth countries, which all support the view that the listed rights are independent. But it also creates tensions with the later introduced provisions of the Copyright Modernization Act of 2012, namely s.3(1)(j) – right of distribution, as well as s.2.4(1.1) – right of making available to the public.
Another way of solving the problem could perhaps have been to rephrase the issue at hand in ESA – e.g. which exclusive rights of the author are engaged by the act of downloading video games with embedded music from the internet? and consider it from the perspective of the goals pursued by the copyright regime. Rather than asking whether all the rights are independent from one another, a better question could have been to ask how the objectives of the copyright regime are best served in this particular case? Where lies, in this case, the balance between encouraging creation and disseminating works of authorship? From the perspective of the rights owner, does the payment of a royalty for the act of reproduction represent a fair remuneration for the specific act of exploitation? From the perspective of the user, does the download of music embedded in a video game entail its communication to the public by telecommunication?
The pages below go on with an analysis of the right of reproduction, the right of public performance, the right of communication to the public by telecommunication, the right of distribution and the right to authorize all of these acts.
Right of Reproduction
The right of reproduction speaks to the heart of what copyright is all about – making copies. The right to restrict others from making copies of works is one of the most basic exclusive rights through which authors and their assignees generate revenue from the exploitation of their works. Ironically, perhaps because this right is so essential, it only made its way into Article 9 of the Berne Convention in the Act of 1967. Before then, Contracting Parties had not seen the need to incorporate it in the text of the Convention. It is only with the advent of the photocopying machine and the tape recorder that the urgency arose to expressly couch this right within the scope of the Convention’s minimum standard of protection.
The right of reproduction is contained in the introductory paragraph of section 3(1) of the Act; it states:
3(1) For the purposes of this Act, copyright, in relation to a work, means the sole right to produce or reproduce the work or any substantial part thereof in any material form whatever…
In essence, the right of reproduction foresees that only the copyright owner may make any reproductions or copies of the work. One example of an act that would be considered a “reproduction” is (for example) printing or photocopying a textbook. This is sometimes referred to as “mechanical reproduction”. But this is not the only type of reproduction. Production of a similar work may also constitute reproduction if, for example, a person were to watch a film and then write a book with the same plot and characters. Therefore, the concept of reproduction is quite broad in that it refers to any means of replicating an original work, even if the result is not identical to the original. Importantly, it is not necessary that the entire work be copied in order to constitute a reproduction. The language in section 3(1) which refers to “any substantial part thereof” clarifies that it is not only entire works that form the subject of the reproduction right, but any substantial part of them.
The broad scope of the right of reproduction is also apparent from the words ‘in any material form whatever…’ Indeed, the right of reproduction covers any act of reproduction whether on paper, in the memory of a computer, on CD or DVD, on the internet, or in the cloud. In practice, the right of reproduction lies at the basis of numerous modes of exploitation enumerated in publishing agreements, for which royalties are to be paid to the author. Think of the right to print a book in hardcopy, paperback, as a serial, or as an e-book. The general reproduction right also underpins the publisher’s obligation to pay royalties for translations, TV or film adaptations of a book etc. – as further specified in ss.3(1)(a), (b) and (c) of the Act.
To demonstrate an infringement of the reproduction right, copyright owners ordinarily have to demonstrate that the following facts are made out:
Factual Copying – There must be an objective similarity between the infringing work and the copyright (original) work, or there must be a substantial part of the original work included in the infringing work. This requires an assessment into both the quantity and quality of what was taken from the original work. In order to be considered “substantial”, courts will ordinarily look to the degree to which the parts taken represent the author’s skill and judgment (i.e., originality).
Causal Relationship – The original work must be the source for the infringement. In other words, if two identical works are created independently, there will be no finding of infringement. As you will see, this stands in contrast from Patent law, where independent creation is no excuse to a finding of infringement. It is important to note that the causal relationship does not create a type of mens rea for infringement. An infringement of the reproduction right is measured on a strict liability basis, but there must be nevertheless some factual evidence to support the notion that the allegedly infringing work was created with reference or influence from the original.
Théberge v Galerie d’Art du Petit Champlain Inc, 2002 SCC 34
Artist and painter Claude Théberge brought a claim against the Galerie d’Art du Petit Champlain after he found that they purchased and sold printed posters of his work. The art gallery transferred the images found on the posters from paper to canvas using a process that lifted the ink from the printed posters and placing it upon blank canvas. By removing the ink from the “original” poster, it left the poster blank. Importantly, this process did not involve creating multiples or duplicates but rather moved the printed work onto a new medium.
The primary issue before the courts was whether this process constituted “reproduction” within the meaning of the Act. In the lower courts, Théberge obtained an injunction to stop the transfers and to seize existing canvases on the basis that they infringed his exclusive right of reproduction. Finding its way all the way to the Supreme Court of Canada, the case served as an opportunity to clarify the boundaries and purpose of the right of reproduction. Writing for the majority, Justice Binnie articulated the following main takeaways:
(1) “Reproduction” requires more than a mechanical transfer of an image from one medium to another, in the absence of multiplication (paragraph 47)
(2) To make a finding of reproduction in the absence of multiplication is to effectively adopt the US doctrine of “derivative works”, which is not part of the Canadian Copyright Act (paragraph 47)
(3) Fixation of a work in a new medium alone does not constitute “reproduction” (paragraph 50)
(4) To treat the mechanical transfer of an image from paper to canvas is to blur the distinction between economic and moral rights, contrary to the structure of the Act.
Overall, Théberge provided an opportunity for the Supreme Court of Canada to clarify many ambiguities latent in Canadian copyright law. You will see many references to it throughout subsequent jurisprudence and commentary. For the purposes of the reproduction right, however, it clarified principally one thing – reproduction requires multiplication.
Do you agree with the Court’s approach that the reproduction right requires some multiplication of the original work? In 2015, the European Court of Justice assessed a case with almost identical facts to Théberge, but came to an opposite conclusion. Namely, in Art & Allposters International BV v Stichting Pictoright, C-419/13, the ECJ found that the alteration of the medium, regardless of the fact that there was no multiplication, was sufficient to find a ‘new reproduction’. The Art & Allposters case must be distinguished from Théberge, because it focused largely on the distribution right (as opposed to reproduction). Nevertheless, it poses deeper questions about the multiplication requirement for the reproduction right.
The rights laid down in the introductory paragraph of s.3(1), including the right of reproduction and public performance, apply not only to the entirety of the work, but also to “any substantial part thereof“. The requirement of substantiality means that not all unauthorized uses or reproductions will necessarily rise to the level of infringement. This is an important limitation on the right and ability for authors and their assignees to restrict uses of their works which touch upon their exclusive rights. This is especially in the case of modern media creation which involves sampling, mixing and referencing other works in small amounts. Unfortunately, the Act does not define “substantial part” and has instead left this task to the courts.
Cinar Corporation v Robinson, 2013 SCC 73
The Cinar case is a classic factual scenario where a proposed idea for a television show is initially rejected and later followed up on without the involvement of the person who originally proposed the concept. Unfortunately for many creators, we often see infringement claims in copyright law which involve a scenario like this.
Claude Robinson had spent several years developing an educational television show for children called “The Adventures of Robinson Curiosity” which was loosely based upon the original novel Robinson Crusoe written by Daniel Defoe. Beginning in 1985, Claude Robinson and his company spent years proposing the project for production with various companies, including the Cinar Corporation. During these discussions, Cinar gave copies of Claude Robinson’s concept for the show to Christophe Izard, a French animator and television show creator for children. Claude Robinson’s discussions and negotiations ultimately were not successful and the project was put on hold.
Nearly a decade later, Claude Robinson saw a new television show, “Robinson Sucroë” which he regarded as a blatant copy of his proposal for “The Adventures of Robinson Curiosity”. He later found that Cinar and Izard had been involved in producing Robinson Sucroë. Accordingly, he commenced an action against Izard and Cinar for infringement of his copyright. This led to an analysis at the Supreme Court of Canada as to whether the components used by Cinar and Izard were “substantial parts” of his work.
The Supreme Court of Canada’s unanimous decision sought to clarify how we approach the substantiality analysis. Chief Justice McLachlin writes at paragraphs 26-28:
[26] A substantial part of a work is a flexible notion. It is a matter of fact and degree. “Whether a part is substantial must be decided by its quality rather than its quantity”: Ladbroke (Football), Ltd. v. William Hill (Football), Ltd., [1964] 1 All E.R. 465 (H.L.), at p. 481, per Lord Pearce. What constitutes a substantial part is determined in relation to the originality of the work that warrants the protection of the Copyright Act. As a general proposition, a substantial part of a work is a part of the work that represents a substantial portion of the author’s skill and judgment expressed therein.
[27] A substantial part of a work is not limited to the words on the page or the brushstrokes on the canvas. The Act protects authors against both literal and non-literal copying, so long as the copied material forms a substantial part of the infringed work. As the House of Lords put it,
the “part” which is regarded as substantial can be a feature or combination of features of the work, abstracted from it rather than forming a discrete part. . . . [T]he original elements in the plot of a play or novel may be a substantial part, so that copyright may be infringed by a work which does not reproduce a single sentence of the original.
(Designers Guild Ltd. v. Russell Williams (Textiles) Ltd., [2001] 1 All E.R. 700, at p. 706, per Lord Hoffmann; see also Nichols v. Universal Pictures Corporation, 45 F.2d 119 (2d Cir. 1930), per Learned Hand J.)
[28] The need to strike an appropriate balance between giving protection to the skill and judgment exercised by authors in the expression of their ideas, on the one hand, and leaving ideas and elements from the public domain free for all to draw upon, on the other, forms the background against which the arguments of the parties must be considered.
Based on this reasoning, the Supreme Court of Canada found that Cinar had infringed Claude Robinson’s copyright. This finding was reached despite contentions from Cinar that the portions taken from Robinson’s concept were merely numerous insubstantial parts. The decision turned on this contextual approach to substantiality which assessed Claude Robinson’s skill and judgement in a holistic sense.
The result is that the question of substantiality is not quantitative or mechanical. It relates to the subjective considerations regarding the work itself, and in particular, the extent to which the portions of the work that are used are reflecting of the author’s unique contributions or skill and judgement. This is understandable, because it would otherwise be arbitrary to set quantitative limits on substantiality. This is particularly true where the portion of a work used without authorization is small, but they are nevertheless the defining and most original aspect of the work.
On the other hand, this qualitative approach leaves the question of when infringement has occurred sometimes difficult to determine. Similar to the fair dealing analysis, the qualitative approach to substantiality requires both copyright owners and users of insubstantial parts of protected works to engage in a contextual and case-by-case analysis. This qualitative approach is therefore what gives copyright lawyers reason to often answer infringement questions from their clients with, “it depends”.
In many cases, infringement is relatively easy to demonstrate. In the case of online file sharing and distribution of entire copyright works, there is no need to engage in a contextual substantiality analysis. The above makes clear, however, that not all cases of infringement will be this simple to determine. The process of creation often involves inspiration and reuse of existing works. Therefore, the question of infringement (much like the fair dealing analysis) involves a deeper inquiry into the nature of what is being used without authorization from the copyright owner.
Right of Public Performance
The right of public performance is distinct from the right of reproduction: rather than aiming at the creation of a “copy”, the right covers acts directed at exposing the work to the public. The Act defines “performance” as:
The right to perform historically presupposed a live audience that would be present at the site where the performance took place. With the evolution of technology, the right of public performance encompasses performances done ‘in public’, e.g. in the presence of an actual public, but also performances brought ‘to the public’ through any means of communication. In the former context, the right of public performance underlies the authors’ and their assignees’ right to receive royalties for works performed during any kind of live event, like a concert, a play, a festival, in restaurants and discotheques etc. In the latter context, the right of public performance underlies the payment of royalties for the communication to the public on radio and television, over the internet, etc.
Right of Communication to the Public by Telecommunication
Contrary to a performance in public, an act of communication to the public presupposes that the performance does not take place in front of a public, but rather is transmitted to a distant public. With the advent of radio broadcasting, a debate emerged about how this new technology should be treated under copyright law; the debate arose once again in relation to Internet technologies.
The right of communication to the public by telecommunication is found in section 3(1)(f) of the Act. Before the enactment of the Canada-United States Free Trade Agreement Implementation Act, Canadian courts had held that ‘radio communication’ under the former s.3(1)(f) was limited to Hertzian radio waves and did not extend to communication by co-axial cables. The Free Trade Agreement, in the aftermath of the Canadian Admiral Corp v Rediffusion case, required Canada to compensate copyright owners for the retransmission of television signals that were retransmitted via cable networks. The amendments were therefore designed to ensure that cable companies, and not just radio broadcasters, would also be captured under s. 3(1)(f). By substituting the word ‘telecommunication’ in 1988, Parliament did not intend to change the fundamental nature of the communication right, which had for over 50 years been concerned with performance-based activities. Instead, Parliament only changed the means of transmitting a communication. The word ‘communicate’ itself was never altered.
While the right of communication to the public by telecommunication was since 1988 thought to be broad enough and technologically neutral enough to cover instances of communication to the public on the internet, Canada clarified the matter anyway upon implementing Article 8 of the WIPO Copyright Treaty. Section 2.4(1.1) was added to the Act through the Copyright Modernization Act of 2012:
The relationship between this interpretation provision and s.3(1)(f), as well as the types of acts covered by both provisions are discussed below in the context of the Entertainment Software Association v SOCAN case of 2012 and 2022.
Section 3(1.1) of the Act also specifies that a work that is communicated in the manner described in paragraph (1)(f) is fixed even if it is fixed simultaneously with its communication. This provision overrules the position of the court in Canadian Admiral Corp. The court held that broadcasting per se does not “fix” a work in a tangible medium that is capable of protection. Section 3(1.1) states otherwise and therefore, as long as it the signal is recorded at the same time as it is communicated by telecommunication, that is sufficient to consider the telecommunication “fixed”.
Canadian Admiral Corp v Rediffusion Inc, [1954] 20 CPR
In the 1950s, Canadian Admiral Corp acquired the exclusive right to broadcast or “telecast” the games of the Montreal Alouettes. Canadian Admiral then reached an agreement with the CBC to broadcast those games on television. Given the technology at the time, this required CBC to use a production van parked outside of the sports venue to direct cameras inside of the venue and interpret the signal from the cameras. Rediffusion was able to intercept this signal and redirect or “rediffuse” it to its subscribers who had boxes in their homes that could receive this signal. It also screened the telecast in its sales office.
For the court, the issue was whether Rediffusion infringed the public performance rights of Canadian Admiral Corp as the exclusive rightsholder. This required an inquiry into the nature and meaning of “public performance”.
On the issue of performance, the court found that it was clear that this telecast signal was indeed a performance. It caused the work to be represented acoustically and visually and therefore met this test. The larger inquiry was on the meaning of “public”. For this, the court was unequivocal in that the determination of “public” requires an inquiry into the “character of the audience”. The court found that a performance is “public” where it can be heard by members of the public as opposed to members of a domestic or quasi-domestic group. In sharing the telecast to private homes through its subscription service, the court found that Rediffusion’s performance of the telecast was not necessarily “public”, though its display of it in its public sales office was. This distinction is important and shows that despite there being a large number of cumulative “private” performances in these homes, they do not amount to a “public” performance. With the public sales office being frequented potentially by anyone, the court did find that this display constituted a public performance.
‘Public’
Much of the jurisprudence that has focused on the right of communication to the public by telecommunication has focused on what exactly is meant by “public”, and what is meant by “communicate” and “telecommunication”. Not surprisingly, given technological advances over the past few decades, these analyses have required frequent revisiting that has not always been entirely clear or linear.
One key distinction between the performance right and the right of communication to the public by telecommunication is their respective conceptualizations of ‘public’. Somewhat confusingly, the ‘public’ envisioned by each right is not quite the same thing. As it relates to the public performance right, Canadian Admiral Corp shows us that ‘public’ relates to a physical public – that is, an audience that can physically be exposed to the work or performance through direct perceptual means (e.g., auditory, visual). Remember that in that decision, the display of the telecast sports game in the public sales office on televisions is what amounted to a ‘public performance’ rather than the signal sent to private homes.
The communication to the public by telecommunication addresses a conceptually different ‘public’, primarily because that public is ‘remote’ from the person making the performance. Rather than an actual or physical public display of a performance, the communication to the public by telecommunication looks to a theoretical public. The Act provides further clarity that individuals in separate apartments, hotel rooms or similar places are indeed part of the “public” in relation to the communication to the public by telecommunication. Notably, section 2.4(1)(a) provides:
“For the purposes of communication to the public by telecommunication,
(a) persons who occupy apartments, hotel rooms or dwelling units situated in the same building are part of the public, and a communication intended to be received exclusively by such persons is a communication to the public…”
The legal question in such cases invariably coalesces around which types of performances can be considered to be ‘public’. The general approach of the courts has been to focus on the potential audience rather than the actual audience. In determining which performances are ‘public’, therefore, the correct approach is to consider the scope and breadth of who might be able to freely witness or engage in the performance, even if it does not seem to be a necessarily public place. ‘Public’ can include individualised streaming in relatively private places such as hotel rooms and apartment buildings.
The distinction between a public and private performance as articulated in Canadian Admiral Corp is sometimes difficult to discern in practice. Student societies frequently screen films or documentaries to raise awareness about legal, moral or community issues. In such cases, determining whether these groups are “public” can be tricky. Consider the following case study:
Case Study: Student Screenings of Films
In early 2019, the Environmental Law Students’ Society (“ELSS”) at Schulich sought to screen a documentary film entitled Freigtened: The Real Price of Shipping. It focuses on the human and environmental impacts of the way much of the world’s goods and commodities are transported.
The ELSS sent out an email to its members in late January 2019 encouraging all interested students to attend the screening in Room W104 on February 20, 2019. On the evening of the screening, a student member of the ELSS obtained access to a streaming version of the film through his Netflix account and connected to the A/V system in room W104 through an HDMI cable. Due to inclement winter weather, only 5 students attended the event to watch the film, each of whom are executive members of the ELSS.
Has the ELSS infringed the documentary copyright owner’s public performance rights?
‘Telecommunication’
The use of the word ‘telecommunication’ is meant to be technology neutral. The Act defines it as:
Transmissions covered by the term include things like broadcasting television or radio, as well as transmission of data or signals over the internet. It is a fairly broad and comprehensive concept and is extremely relevant to copyright in modern times. Many works today are not ‘copied’ or duplicated in a traditional sense, but shared through streams or other means that do not require that distinct copies be made. In purely economic terms, it could be argued that communication to the public by telecommunication forms the core of modern copyright.
SOCAN v Canadian Association of Internet Providers, 2004 SCC 45
SOCAN (collecting society) sought to collect royalties for works communicated over the internet. The Association of Internet Services Providers (“CAIP”) argued that they should be exempt from liability because they are merely intermediaries. They do not actually communicate the works being shared online. Nevertheless, internet service providers store cached files on their own servers so that users can more quickly access materials on the internet. This volumes of content often include works under SOCAN’s purview. This practice of cache-ing works brought into question whether internet service providers were ‘communicating’ the materials over the internet. The court, the issue boiled down to how ‘communicate’ should be interpreted in relation to hosting content on the internet.
The Supreme Court of Canada found that hosting content online indeed constitutes ‘telecommunication’ within the meaning of the Act. It found that copyrighted content sent within and receive from outside of Canada are both actionable infringements of the C2P right, so long as there is a ‘real and substantial connection’ to Canada.
The courts have taken a broad approach to what constitutes ‘telecommunication’ and this includes sharing or hosting something on the internet. Overall, internet service providers are able to avail themselves of safeguard against being held liable for storing or caching infringing materials under certain conditions. Though the Supreme Court of Canada in SOCAN v CAIP found that cached content constitutes ‘telecommunication’, there is nevertheless an exception for intermediaries now at section 2.4(1)(b) of the Act. This provision states:
Effectively, section 2.4(1)(b) tells us that intermediaries are not liable for merely providing the means of communication. Nevertheless, the distinction that gave rise to the litigation in SOCAN v CAIP was the degree to which cached content, in addition to merely providing the means of communication, could rise to the level of ‘telecommunication’. Therefore, while internet service providers do not carry liability for the content that is communicated through their networks or systems, they may be liable for storing or caching content so as to make it easier for its users to obtain. This depends on a number of factors in relation to how and what is being cached.
The ESA Cases
In 2012 and 2022, the Supreme Court addressed the nature of acts of exploitation of works on the internet in two related cases. Both cases concerned the internet download of video games incorporating musical works. In 2012, the Supreme Court was asked to consider whether such download constitutes a single act of reproduction or of communication to the public by telecommunication, or both. A decade later, the Supreme Court was asked to decide whether the right of communication to the public encompassed the right of making available to the public. In other words, must a license be obtained only with respect one right or two rights, giving rise to separate royalty payments? How do the two rights relate to each other? As explained below, in both decisions the Court concluded that only one license fee was owed to the rights owner.
Case # 1: ESA v SOCAN, 2012 SCC 34
Abella J.
[1] In the video game publishing industry, the royalties for the reproduction of any musical works which are incorporated into the games are currently negotiated before the games are packaged for public sale. Once these rights have been negotiated, the owner of the copyright in the musical work has no further rights when the game is sold. The question in this appeal is whether the rights are nonetheless revived when the work is sold over the Internet instead of in a store. In our view, it makes little sense to distinguish between the two methods of selling the same work.
[2] The Copyright Board concluded that video games containing a musical work, the royalties to which have already been negotiated with the copyright owner, were nonetheless subject to a new fee when sold over the Internet ((2007), 61 C.P.R. (4th) 353). Its decision was upheld by the Federal Court of Appeal (2010 FCA 221, 406 N.R. 288). In our respectful view, the Board’s decision misconstrues the provisions at issue in the Copyright Act, R.S.C. 1985, c. C-42, ignoring decades of legislative history, and violates the principle of technological neutrality, which requires that the Act apply equally notwithstanding the technological diversity of different forms of media.
(…)
[37] Even though Bishop interpreted the pre-1988 version of the Copyright Act (before the “telecommunication” amendment [and before the ‘ephemeral recording exception’ amendment in s.30.8 CA]), the distinction between performance-based and reproduction-based rights established in s. 3(1) is evidenced in the provisions of the current Act. For example, in s. 2.2(1), the term “publication” includes “making copies”, but expressly excludes “the performance in public, or the communication to the public by telecommunication” of a work. Similarly, the educational institutions exception in s. 29.4(2) refers to the right to “reproduce” and the right to “communicate by telecommunication to the public” as distinct rights. The same is true of s. 15(1), which categorizes neighbouring rights under the Act into two categories: the right to “communicate” and “perform” a performance, and the right to “reproduce” a fixation of the performance.
[38] The distinction between performance and communication rights on the one hand and reproduction rights on the other is also evident in the collective administration of copyright tariffs under the Copyright Act. In 1993, SOCAN — a performing rights society — was put in charge of administering the communication right in s. 3(1)(f) in relation to musical works. These provisions are contained in a section of the Act entitled “Collective Administration of Performing Rights and of Communication Rights”: ss. 67 to 68.2 (S.C. 1997, c. 24, s. 45). Even the Copyright Board itself categorizes its decisions relating to musical works into two categories: “Public Performance of Music” and “Reproduction of Musical Works”: http://www.cb-cda.gc.ca/decisions/index-e.html.
[39] Therefore, the term “communicate” in s. 3(1)(f), which has historically been linked to the right to perform, should not be transformed by the use of the word “telecommunication” in a way that would capture activities akin to reproduction. Such transformation would result in abandoning the traditional distinction in the Act between performance-based rights and rights of reproduction. There is no evidence either in 1988 or in subsequent amendments to the Act that Parliament intended such abandonment.
[40] SOCAN submits that the distinction between reproduction and performance rights in Bishop actually supports its view that downloading a musical work over the Internet can attract two tariffs. Since reproduction and performance-based rights are two separate, independent rights, copyright owners should be entitled to a separate fee under each right. This is based on the Court’s reliance in Bishop, at p. 477, on a quote from Ash v. Hutchinson & Co. (Publishers), Ltd., [1936] 2 All E.R. 1496 (C.A.), at p. 1507, per Greene L.J.:
Under the Copyright Act, 1911 [on which the Canadian Act was based], . . . the rights of the owner of copyright are set out. A number of acts are specified, the sole right to do which is conferred on the owner of the copyright. The right to do each of these acts is, in my judgment, a separate statutory right, and anyone who without the consent of the owner of the copyright does any of these acts commits a tort; if he does two of them, he commits two torts, and so on. [Emphasis added.]
[41] In our view, the Court in Bishop merely used this quote to emphasize that the rights enumerated in s. 3(1) are distinct. Bishop does not stand for the proposition that a single activity (i.e., a download) can violate two separate rights at the same time. This is clear from the quote in Ash v. Hutchinson, which refers to “two acts”. In Bishop, for example, there were two activities: 1) the making of an ephemeral copy of the musical work in order to effect a broadcast, and 2) the actual broadcast of the work itself. In this case, however, there is only one activity at issue: downloading a copy of a video game containing musical works.
[42] Nor is the communication right in s. 3(1)(f) a sui generis right in addition to the general rights described in s. 3(1). The introductory paragraph defines what constitutes “copyright”. It states that copyright “means” the sole right to produce or reproduce a work in any material form, to perform a work in public, or to publish an unpublished work. This definition of “copyright” is exhaustive, as the term “means” confines its scope. The paragraph concludes by stating that copyright “includes” several other rights, set out in subsections (a) through (i). As a result, the rights in the introductory paragraph provide the basic structure of copyright. The enumerated rights listed in the subsequent subparagraphs are simply illustrative: Sunny Handa, Copyright Law in Canada (2002), at p. 195; see also Apple Computer Inc. v. Mackintosh Computers Ltd., 1986 CanLII 6820 (FC), [1987] 1 F.C. 173 (T.D.), at p. 197. The rental rights in s. 3(1)(i) referred to by Justice Rothstein, for example, can fit comfortably into the general category of reproduction rights.
[43] In our view, therefore, the Board’s conclusion that the Internet delivery of a permanent copy of a video game containing musical works amounted to a “communication” under s. 3(1)(f) should be set aside.
SOCAN filed for the Copyright Board’s approval of a tariff for the download and streaming of music in video games. The main question at issue was whether s.2.4(1.1) creates an independent right, for which a tariff can be levied, or if the right of making available is included in the right of communication to the public by telecommunication. Like in the previous case, the Copyright Board’s decision was subject to judicial review, all the way up to the Supreme Court.
Case # 2: SOCAN v. ESA, 2022 SCC 30
Rowe J.
[1] Does the Copyright Act require that users pay two royalties to access works online, even though accessing the same work offline requires paying only one royalty?
[2] The answer to this question depends on the correct interpretation of s. 2.4(1.1) of the Copyright Act. Section 2.4 (1.1) modifies the definition of s. 3(1)(f) by holding a work is communicated to the public as soon as it is made available in a way “that allows a member of the public to have access to it from a place and at a time individually chosen by that member of the public”. The Copyright Board of Canada concluded that s. 2.4(1.1) deems the act of making works available to be a separately protected and compensable activity. In practical terms, this meant that users needed to pay two royalties to access works online — a royalty for “making works available” and an additional royalty when the work was actually downloaded or streamed. The Board reasoned that this was the only interpretation that would fulfill Canada’s obligations under art. 8 of the 1996 WIPO Copyright Treaty, Can. T.S. 2014 No. 20, which requires that member countries give authors the exclusive right to control the act of making works available.
(…)
[50] The Board concluded that s. 2.4(1.1) deems making a work available to be a “communication” under s. 3(1)(f), regardless of whether any subsequent transmission occurs and regardless of whether a subsequent transmission is a download or a stream. Therefore, the Board reasoned, as soon as a work is made available online, s. 3(1)(f) is triggered and a royalty is payable. If the work is later downloaded or streamed, another royalty is payable. This interpretation means that distributing works online requires paying two royalties — one when the work is made available and another when the work is downloaded or streamed.
[51] I am not persuaded that this is the proper reading of s. 2.4(1.1). While this interpretation is one means to fulfill Canada’s obligations under art. 8, it is inconsistent with the text, structure and purpose of the Copyright Act. Further, art. 8 does not require this interpretation. If s. 2.4(1.1) is read as clarifying two things — (1) that s. 3(1)(f) applies to on-demand streams and (2) a work is performed as soon as it is made available for streaming — then Canada would also fulfill its obligations under art. 8. Either interpretation would fulfill Canada’s obligations under art. 8, but the latter interpretation is more consistent with the text, structure and purpose of the Copyright Act. For that reason, it is the latter interpretation, not the one adopted by the Board, that should be given effect.
[52] My analysis in this section will proceed in five parts. I will explain why the Board’s interpretation (1) is inconsistent with s. 2.4(1.1)’s text and structure; (2) undermines the purpose of the Copyright Act; and (3) is not required by art. 8. I will then (4) offer my own interpretation of s. 2.4(1.1) and (5) explain why this interpretation allows Canada to fulfill its obligations under art. 8 through a combination of the performance, reproduction, and authorization rights in s. 3(1).
(1) Text and Structure
[53] To understand the text of s. 2.4(1.1), one must understand the basic scheme of the Copyright Act.
[54] The opening paragraph of s. 3(1) of the Copyright Act exhaustively sets out three copyright interests that authors have in their works: the right to (1) produce or reproduce a work in any material form; (2) perform a work in public; or (3) publish an unpublished work. Section 3(1)(a) to (j) is “illustrative” of these three broad copyrights: ESA, at para. 42. For example, s. 3(1)(f), which gives authors the right to “communicate the work to the public by telecommunication”, illustrates an activity that falls within the broader right to perform a work in public. It is not a standalone or sui generis copyright in addition to the general rights described in s. 3(1): ESA, at paras. 25-27 and 42.
[55] The rights enumerated in s. 3(1) are distinct. A single activity can only engage one of the three copyright interests. When a song is downloaded, for example, only the author’s reproduction right is engaged. Similarly, when a work is streamed, only the author’s performance right is engaged: ESA, at para. 41. Authors are entitled to royalties for use of their works when an activity engages one of the copyright interests in s. 3(1).
[56] To determine which copyright interest is engaged by an activity, one must examine what that activity does to the copyrighted work. A performance is impermanent — “[w]hen it is over, only the memory remains”: Bishop v. Stevens, 1990 CanLII 75 (SCC), [1990] 2 S.C.R. 467, at p. 479. Performances also allow authors to retain more control over their works than reproductions, as performed works can be withdrawn from the user after the performance is over. Accordingly, when an activity allows a user to experience a work for a limited period of time, the author’s performance right is engaged. A reproduction, by contrast, gives a user a durable copy of a work. Authors lose significantly more control over their works when they are reproduced. Once reproduced, authors cannot limit when, how, or the number of times a user experiences the work. Accordingly, activities that give users a durable copy of a work engage the author’s reproduction right.
[57] An activity that does not engage one of the three copyright interests in s. 3(1) or the author’s moral rights is not a protected or compensable activity under the Copyright Act. In Théberge, for example, this Court held that authors could not prevent users from re-fixing their works on other canvasses because that activity did not engage the author’s reproduction, performance, or first publication rights. Even though altering the work in this manner was undoubtedly an “activity” in a physical sense, it was not a protected or compensable activity because there is no right of “fixation” in s. 3(1) of the Act.
[58] The Board’s interpretation of s. 2.4(1.1) is inconsistent with the text of s. 2.4(1.1) and the scheme of the Copyright Act. In ESA and Rogers, this Court explained that, since downloads and streams were single protected activities, authors could charge one royalty when users access works as downloads or streams — a reproduction royalty for downloads or a performance royalty for streams. The Board’s interpretation is entirely inconsistent with the holdings in ESA and Rogers. It would allow authors to charge two royalties for a single protected activity. If a work is downloaded, a user would pay (1) a performance royalty for making the work available and (2) a reproduction royalty for the download. If a work is streamed, a user would pay two performance royalties: (1) a performance royalty for making the work available and (2) another performance royalty for the stream.
[59] There is nothing in the text of s. 2.4(1.1) to indicate that this was Parliament’s intent. Section 2.4(1.1) is located in the “Interpretation” Division of the Act. It modifies the scope of an author’s performance right by modifying the definition of s. 3(1)(f). Since a download is a single protected activity that never engages s. 3(1)(f), I fail to see how modifying the definition of s. 3(1)(f) transforms downloads into two separately compensable activities. Similarly, I do not see how s. 2.4(1.1) transforms a single activity like streaming into two separately compensable performances. While I accept that the act of ‘making a work available’ is a separate physical activity from the act of a user downloading or streaming a work, it does not follow that it is a separately compensable activity. Had Parliament intended to treat the act of making available as a new separately compensable activity, the way to do so would have been to add “making available” as a fourth copyright interest in the opening paragraph of s. 3(1), rather than as a modification to the scope of s. 3(1)(f).
[60] I do not accept SOCAN’s argument that this case is similar to CBC. In CBC, this Court found that the CBC had to pay separate reproduction royalties each time it made synchronization and broadcast incidental copies of a work. Two reproduction royalties were appropriate in that case because there were two protected activities in issue: (1) synchronization copying and (2) broadcast incidental copying. Since each activity created a separate durable copy of the work, each activity was protected and engaged the author’s reproduction interest: Théberge. But in this case, like in ESA and Rogers, there is only one protected activity in issue: either a download or a stream.
[61] For these reasons, I find no textual support for the Board’s interpretation of s. 2.4(1.1).
(2) Purpose of the Copyright Act
[62] The Board’s interpretation of s. 2.4(1.1) also undermines the purpose of the Copyright Act because it violates the principle of technological neutrality.
[63] The principle of technological neutrality holds that, absent parliamentary intent to the contrary, the Copyright Act should not be interpreted in a way that either favours or discriminates against any form of technology. Distributing functionally equivalent works through old or new technology should engage the same copyright interests. For example, purchasing an album online should engage the same copyright interests, and attract the same quantum of royalties, as purchasing an album in a bricks-and-mortar store since these methods of purchasing the copyrighted works are functionally equivalent. What matters is what the user receives, not how the user receives. In its summary to the CMA, which precedes the preamble, Parliament signalled its support for technological neutrality, by stating that the amendments were intended to “ensure that [the Copyright Act] remains technologically neutral”.
[64] The Board’s interpretation of s. 2.4(1.1) violates the principle of technological neutrality because it requires that users pay additional royalties to access works online. To illustrate, consider a retailer that allows customers to purchase a digital or physical copy of an album. Regardless of whether the work is sold digitally or physically, the author’s reproduction interest in s. 3(1) is engaged because the user receives a durable copy of the work. The author is therefore entitled to a reproduction royalty. But under the Board’s interpretation of s. 2.4(1.1), purchasing the album online would entitle the author to an additional royalty — a performance royalty for making the work available for online purchase. Similarly, streaming the album online would require paying a “making available performance” royalty and a “streaming performance” royalty. But playing that same album on the radio would only require paying one performance royalty. Requiring that users pay additional royalties based solely on the mode of the work’s distribution violates the principle of technological neutrality.
[67] Copyright law does not exist solely for the benefit of authors. Its overarching purpose is to balance users’ and authors’ rights. It does this by securing just rewards for authors while facilitating “public access to and dissemination of artistic and intellectual works, which enrich society and often provide users with the tools and inspiration to generate works of their own”
[69] Like fair dealing and the idea/expression dichotomy, the principle of technological neutrality is a tool for balancing users’ and authors’ rights. It ensures that authors retain the same rights over their works regardless of the technological means used to distribute those works. If the Copyright Act entitles authors to receive a certain royalty when their work is reproduced or performed offline, technological neutrality preserves an author’s right to receive that same royalty when their work is reproduced or performed online. As a corollary, it also protects users by preventing authors from extracting more royalties merely because their work is reproduced or performed online. (…)
[70] With this context in mind, I am not persuaded that, in adopting s. 2.4(1.1), Parliament intended to derogate from the principle of technological neutrality. The principle of technological neutrality is designed to operate precisely in situations like the present case, where a novel technology emerges that has no clear traditional equivalent. In those circumstances, courts must look at what that new technology does to the substance of the work by examining which, if any, of the copyright interests in s. 3(1) are engaged by this new method of distributing a work. If that new technology gives users durable copies of a work, the author’s reproduction right is engaged. If the new technology gives users impermanent access to the work, the author’s performance right is engaged. What matters is what the user receives, not how the user receives it.
[73] Since there is no persuasive basis for concluding that Parliament intended to derogate from the principle of technological neutrality, s. 2.4(1.1) should be interpreted in a way that is technologically neutral: reproducing or performing a work online or offline should engage the same copyright interests and require the same royalties.
(3) Section 2.4(1.1)’s Statutory Context: Article 8 [WCT]
[74] The Board did not err when it concluded that art. 8 requires that member countries give authors the right to control the act of making works available, in addition to any download or stream that might later occur. Authors should have recourse against individuals who upload their works online in a way that makes them available for downloading or streaming, even if the work is never actually downloaded or streamed.
[75] But I part company with the Board in its conclusion that this obligation requires imposing additional royalties on downloaded or streamed content. The WIPO Copyright Treaty does not demand that member countries create a new compensable “making available right” to satisfy art. 8. Member countries simply need to ensure that authors can control the physical act of making their works available. This control can be provided through any combination of rights. Accordingly, while I agree that the act of “making a work available” is a separate physical activity from a download or stream, I disagree with the view that the act of “making a work available” gives rise to distinct communications to the public (i.e., distinct performances). The making available of a stream and a stream are both protected as a single communication to the public, while the making available of a download is protected as an authorization to reproduce, and the download is protected as a reproduction.
[77] Article 8 has two goals: (1) clarify that on-demand transmissions are captured by the right to communicate works to the public; and (2) ensure that authors can control the act of making their works available online.
[88] To recap, art. 8 obliges member countries to do two things: (1) protect on˗demand transmissions and (2) give authors the right to control when and how their work is made available for downloading or streaming. It does not, however, tell member countries how to give effect to these obligations. To accommodate different legal traditions and different drafting techniques among member countries, the WIPO Copyright Treaty adopted an “umbrella solution”: each state could decide how to fulfill its art. 8 obligations. Member countries could provide for art. 8 protections through “an explicit making available right or provide effective coverage of the right through a combination of pre˗existing rights”.
[
90] In sum, the umbrella solution gave “relative freedom [to] national legislators in choosing the right of distribution, the right of communication to the public, the combination of these rights, or a new right, to fulfil obligations under Article 8”. Accordingly, provided that the Copyright Act gives effect to art. 8’s goals through any combination of rights, Canada will be in compliance with its obligations under art. 8.
[99] Section 2.4(1.1) ensures that on-demand streams receive similar treatment. Section 2.4(1.1) makes it clear that a work is performed as soon as it is made available to the public for on-demand streaming because, at that point, users are given the opportunity to temporarily experience the work. Once a work is made available for on-demand streaming, all users have to do is tune in to the stream to experience the work. This is the digital equivalent of flipping to a 24/7 television channel that is continuously playing — that is performing — a particular work.
[100] This interpretation does not require treating the act of making the work available as a separate performance from the work’s subsequent transmission as a stream. The work is performed as soon as it is made available for on-demand streaming. At this point, a royalty is payable. If a user later experiences this performance by streaming the work, they are experiencing an already ongoing performance, not starting a new one. No separate royalty is payable at that point. The “act of ‘communication to the public’ in the form of ‘making available’ is completed by merely making a work available for on˗demand transmission. If then the work is actually transmitted in that way, it does not mean that two acts are carried out: ‘making available’ and ‘communication to the public’. The entire act thus carried out will be regarded as communication to the public”. In other words, the making available of a stream and a stream by a user are both protected as a single performance — a single communication to the public.
[101] With this interpretation in mind, I conclude that the Copyright Act gives effect to Canada’s obligations under art. 8 through a combination of the performance, reproduction, and authorization rights in s. 3(1) [see ‘Right of Authorization’ below].
In both ESA decisions, the Supreme Court reiterated the two fundamental principles that underly the Canadian copyright regime: 1) that copyright law’s purpose is to balance users’ and authors’ rights; and 2) that copyright law must comply with the principle of ‘technological neutrality’. The provisions of the of the Act must be interpreted to give effect to these principles. Any interpretation that would allow rights owners to obtain double royalties on a single act of a user would contravene the balance principle, while any interpretation that would make a distinction between the offline and online mode of delivery of a work would impinge on the technological neutrality principle.
Right of Distribution
Section 3(1)(j) gives the copyright owner the exclusive right to decide whether to put physical copies of a work on the market. Publishing contracts in Canada have undoubtedly provided for the distribution of tangible works for quite a long time. Nevertheless, the right of distribution was finally recognised in the Copyright Act only through the Copyright Modernization Act of 2012.
“….copyright, in relation to a work…includes the sole right….
[…]
(j) in the case of a work that is in the form of a tangible object, to sell or otherwise transfer ownership of the tangible object, as long as that ownership has never previously been transferred in or outside Canada with the authorization of the copyright owner.”
The right applies only with respect to tangible objects, like books, CDs, or DVDs; this means that works that are merely performed or communicated to the public by telecommunication do not fall within the scope of this provision; likewise, works that are solely available in digital form, such as e-books or mp3 songs, probably do not qualify as ‘tangible’, although this would need confirmation by the courts;
The right gets triggered through the sale or other transfer of ownership of the tangible object; this means that the rental (see ss. 3(1)(h) and (i)) of a computer program, sound recording or any other work would not give rise to the application of the right of distribution; a donation or a gift, on the other hand, would;
The right no longer applies after the first sale in Canada or anywhere else in the world with the consent of the rights owner; this means that, pursuant to this right, rights owners can receive royalties on the sale of books, CDs or DVDs in Canada; however, once a physical copy of the work is sold in Canada or anywhere in the world, the rights owner may not oppose the further sale of that copy.
The last element of the distribution right is known as the ‘first sale doctrine’ or ‘exhaustion doctrine’. The 2012 amendment clarifies that Canada applies an international exhaustion, e.g. the sale of a tangible copy in Canada or in any other country suffices to exhaust the right in Canada. As a result, a rights owner is not legally entitled able to stop the importation into Canada of tangible copies lawfully marketed in the United States, the UK, France or on any foreign territory. Consumers benefit from an international exhaustion, because they get better prices from lawfully imported cheaper products. The application of this doctrine is at the root of any ‘used’ book or CD store.
Right of Authorization
The right of authorization is rarely described as a distinct right under the Act, but rather an extension of the explicit set of rights that are enumerated in the Act. The statutory basis for this right is found in the text of section 3(1) itself.
This last part of the provision “to authorize any such acts” effectively creates for an additional right that sets on top of the others. This bit of language affirms that only the copyright owner can authorize others to engage in the activities enumerated in section 3. While not an entirely distinct right in an economic sense, the right of authorization relates closely to the concept of indirect infringement. The Supreme Court of Canada commented on the nature and scope of the right of authorization in CCH v Law Society of Upper Canada, described further below:
CCH Canadian Ltd. v Law Society of Upper Canada, 2004 SCC 13
CCH is one of the leading cases on Canadian copyright law. It has been widely cited as one of the Supreme Court of Canada’s most extensive decisions addressing the purpose and role of copyright law.
The dispute arose from the Law Society of Upper Canada’s self-service photocopy machines in the Great Library at Osgoode Hall. The Library also made photocopies of CCH’s law reports for library members upon request. These actions brought about a claim for infringement on behalf of CCH.
Photograph of the Great Library as Osgoode Hall by Mike Nowak, licensed under CC-BY-SA 4.0.
[38] “Authorize” means to “sanction, approve and countenance”: Muzak Corp. v. Composers, Authors and Publishers Association of Canada, Ltd., 1953 CanLII 47 (SCC), [1953] 2 S.C.R. 182, at p. 193; De Tervagne v. Belœil (Town), 1993 CanLII 2960 (FC), [1993] 3 F.C. 227 (T.D.). Countenance in the context of authorizing copyright infringement must be understood in its strongest dictionary meaning, namely, “[g]ive approval to; sanction, permit; favour, encourage”: see The New Shorter Oxford English Dictionary (1993), vol. 1, at p. 526. Authorization is a question of fact that depends on the circumstances of each particular case and can be inferred from acts that are less than direct and positive, including a sufficient degree of indifference: CBS Inc. v. Ames Records & Tapes Ltd., [1981] 2 All E.R. 812 (Ch. D.), at pp. 823-24. However, a person does not authorize infringement by authorizing the mere use of equipment that could be used to infringe copyright. Courts should presume that a person who authorizes an activity does so only so far as it is in accordance with the law: Muzak, supra. This presumption may be rebutted if it is shown that a certain relationship or degree of control existed between the alleged authorizer and the persons who committed the copyright infringement
Among many issues for consideration, the Supreme Court of Canada opined on the extent to which the Law Society of Upper Canada authorized copyright infringement by offering the photocopy machines. In finding that this did not amount to authorization, the Supreme Court of Canada held that authorization requires more than merely offering services or technology that may have a “dual use” (i.e., both potentially infringing uses and non-infringing uses). The Court also held that a person who authorises activities should be presumed to do so only to the extent that the law allows.
The Court in CCH added a policy-driven caveat to the notion of “authorization”. It must be more than merely providing the means for infringement and instead have some degree or participation, collusion or knowledge. Nevertheless, it is not entirely clear whether it is necessary for actual infringement to take place in order for the right of authorization to be infringed. Overall, the right of authorization provides right holders with the right to authorize others to carry out the economic rights listed in section 3. Through the exercise of this authorization right, rightsholders can take advantage of many aspects of copyright protection.
SOCAN v. ESA, 2022 SCC 30
[See above for the first part of the decision]
[101] With this interpretation in mind, I conclude that the Copyright Act gives effect to Canada’s obligations under art. 8 [WCT] through a combination of the performance, reproduction, and authorization rights in s. 3(1).
[102] If works are streamed or made available for streaming, the author’s performance right as illustrated by s. 3(1)(f) is engaged. A user cannot stream a work or make a work available for on-demand streaming without engaging the author’s performance right in s. 3(1).
[103] However, since downloads do not engage s. 3(1)(f) or the author’s performance rights, the Copyright Act protects downloads through a different set of rights: the reproduction and authorization rights. If a work is downloaded, the author’s reproduction right is engaged; if the work is made available for downloading, the author’s right to authorize reproductions is engaged. To understand this point, it is necessary to understand the right to authorize reproductions or performances of a work in s. 3(1).
[104] “It is an infringement of copyright for any person to do, without the consent of the copyright owner, anything that by this Act only the owner of the copyright has the right to do”: s. 27(1). This includes the right to “authorize” a reproduction or performance: s. 3(1). To “authorize” means to sanction, approve and countenance. Whether a reproduction or performance has been authorized is a question of fact and can be “inferred from acts that are less than direct and positive, including a sufficient degree of indifference”.
[105] Authorization is a distinct right granted to copyright owners. A user who unlawfully authorizes a reproduction or a performance of a work may be held liable for infringement of that right, regardless of whether the work is ultimately reproduced or performed.
[106] If an individual makes a work available for downloading, that person implicitly authorizes the work’s reproduction. As the Copyright Board recognized in SOCAN Statement of Royalties, Public Performance of Musical Works 1996, 1997, 1998 (Tariff 22, Internet) (Re) (1999), 1 C.P.R. (4th) 417,
“[a]uthorization” constitutes a separate protected use under the Act. To authorize is to sanction, approve and countenance. The person who makes a musical work available on an Internet-accessible site authorizes its communication. The work is posted for the sole purpose of being communicated and with full knowledge and intention that such a communication would occur. The person who makes the work available does more than merely provide the means to communicate the work; he/she either controls or purports to control the right to communicate it.
. . .
Moreover, it is the act of posting that constitutes authorization. By doing so, a person invites anyone with Internet access to have the work communicated to them. [Footnotes omitted; pp. 455-57.]
[107] While the above passage refers to communications, the Board’s comments are similarly applicable to reproductions. If a person makes a work available for downloading without authorization, that person infringes the copyright owner’s right to authorize reproductions. That is so regardless of whether the works are ultimately downloaded.
[108] Together, the performance, reproduction, and authorization rights in s. 3(1) of the Copyright Act give effect to Canada’s obligations under art. 8 and they do so in a technologically neutral manner. If a work is streamed or made available for on˗demand streaming, the author’s performance right is engaged. If a work is downloaded, the author’s reproduction right is engaged. If a work is made available for downloading, the author’s right to authorize reproductions is engaged. There are no gaps in protection.
2. Rights in Relation to Other Subject Matter (Part II of the Act)
As mentioned in section B. of this chapter, the existence of related rights (e.g., performer’s performances, sound recordings and communications signals) is dependent on the existence of a work of authorship that is capable of independent protection. The subordinate character of related rights is a remnant of the Rome Convention, and is nowhere more evident than in s.90 of the Copyright Act, which states that ‘no provision of this Act relating to copyright in performer’s performances, sound recordings or communication signals, or the right of performers or makers to remuneration shall be construed as prejudicing any rights conferred by Part I or, in and of itself, as prejudicing the amount of royalties that the Copyright Board may fix in respect of those rights.’ In the case of a sound recording of a musical performance, it is important to distinguish between the rights held by the maker of a sound recording, and the rights held by the musicians and/or performers, apart from the rights of the author(s) of the musical work. All (layers of) rights can potentially subsist on one object simultaneously, and be owned by different persons, unless these rights are transferred to one person or entity.
Performer’s Performances
The notion that performers should have some protection over recordings of their performances dates back to when technologically first allowed them to be recorded. As mentioned, this protection is distinct from the copyright protection in the work being performed, but rather in the performance as its own subject matter. In other words, the work being performed could have entered the public domain or not be capable of protection (e.g., not fixed) and the performer’s performance rights are nevertheless still valid. The mechanics of protection for performer’s performances are set out in greater detail at sections 15(1) – (4) of the Act. Generally speaking however, performers’ rights under Part II of the Act are couched in much narrower terms than the rights conferred in relation to works of authorship.
One of the most essential rights granted to performers is to prohibit the unauthorized making, performing and communicating in public of bootleg copies of their performances, even if the performances are not fixed on a tangible medium. This explains the longstanding practice at concerts and other live events of prohibiting any audio or video recording of the performance taking place.
Performers also have the right to make reproductions of the fixation of their performances. Note the difference in language between s.3(1) introductory paragraph and s.15(1)(b): the latter provision only covers the exact copy of the fixation of the performance. It does not extend to the reproduction of a substantial part of the performance in any manner or form whatsoever, contrary to what authors of works enjoy. In other words, the performer cannot stop anyone from making an imitation of their performance or any other adaptation of the performance.
| Rights | Canadian performer/ performance in Canada | Rome country performer/ performance in Rome country | WPPT country performer/ performance in WPPT country |
| Communicate to the public unfixed performance (s.15(1)(a)(i) / s.15(1.1)(a)i)) | √ | √ | √ |
| Publicly perform unfixed performance (s.15(1)(a)(ii)) / s.15(1.1)(a)ii) | √ | √ | √ |
| Fix unfixed performance (s.15(1)(a)(iii) / s.15(1.1)(a)iii) | √ | √ | √ |
| Reproduce any unauthorized fixation (s.15(1)(b)(i) | √ | √ | |
| Reproduce fixation for other purpose (s.15(1)(b)(ii)) | √ | √ | |
| Reproduce fixation outside of exception (s.15(1)(b)(iii)) | √ | √ | |
| Rent a performance/ sound recording (s.15(1)(c)) / s.15(1.1.)(c)) | √ | √ | √ |
| Authorize above acts | √ | √ | |
| Fix performance in sound recording (s.15(1.1)(b) | √ | √ | |
| Make available sound recording on-demand (s.15(1.1)(d)) | √ | √ | |
| Distribute sound recording (s.15(1.1)(e)) | √ | √ |
With the advent of broadband internet, the rental right is no longer a significant source of income for anyone. The market for CD and DVD rentals has collapsed in favour of online streaming services. However, the right of equitable remuneration granted under s.19 still represents interesting income for performers and makers of sound recordings. Section 19 states that ‘if a sound recording has been published, the performer and maker are entitled, subject to subsection 20(1), to be paid equitable remuneration for its performance in public or its communication to the public by telecommunication, except for a communication in the circumstances referred to in paragraph 15(1.1)(d) or 18(1.1)(a) and any retransmission.’ Accordingly, neither the performer nor the maker of a sound recording can stop the public performance or communication to the public of a published sound recording. However, any time that a music CD is played in a restaurant or on the radio, for example, a royalty is paid to the performer and maker of the sound recording. For the purpose of providing the remuneration, a person who performs a published sound recording in public or communicates it to the public by telecommunication is liable to pay royalties,
(a) in the case of a sound recording of a musical work, to the collective society authorized under Part VII.1 to collect them; or
(b) in the case of a sound recording of a literary work or dramatic work, to either the maker of the sound recording or the performer.
The performer(s) and maker(s) of the sound recording are, by law, entitled to fifty percent of the royalties paid pursuant to s.19.
By contrast, both the performer and the maker of a sound recording have the exclusive right to authorize or prohibit the online making available of the sound recording. Whether remuneration must be paid for the communication to the public by telecommunication on the internet boils down in practice to the question of whether the communication is interactive, e.g. whether it a member of the public to have access to it from a place and at a time individually chosen by that member of the public, or not. If the communication is interactive, it falls under the exclusive right; if it is not, it falls under the remuneration right. As illustration, think of the distinction between Spotify (interactive) and RadioPlayer (not interactive).
Sound Recordings
Similarly to performer’s performances, the makers of sound recordings receive protection over their recordings. Once fixed, makers of sound recordings have copyright in the sound recording itself (independently from any copyright in the music or work being recorded). The Act defines this at section 18(1), where it states:
…the maker of a sound recording has a copyright in the sound recording, consisting of the sole right to do the following in relation to the sound recording or any substantial part thereof:
(a) to publish it for the first time;
(b) to reproduce it in any material form, and
(c) to rent it out.
Communication Signals/Broadcast
In addition to performers and makers of sound recordings, broadcasters may receive protection for the ‘communication signals’ that form the basis of their broadcasts. This is the result of Canada’s implementation of the Rome Convention. It is worth reminding the reader that the WPPT does not cover broadcasting organizations. The rights enjoyed by broadcasting organizations are those listed in s.21(1) of the Act:
21(1) Subject to subsection (2), a broadcaster has a copyright in the communication signals that it broadcasts, consisting of the sole right to do the following in relation to the communication signal or any substantial part thereof:
(a) to fix it,
(b) to reproduce any fixation of it that was made without the broadcaster’s consent,
(c) to authorize another broadcaster to retransmit it to the public simultaneously with its broadcast, and
(d) in the case of a television communication signal, to perform it in a place open to the public on payment of an entrance fee,
and to authorize any act described in paragraph (a), (b) or (d).
F. Moral Rights
The Act grants authors and performers with moral rights – a set of rights that stand separately from the economic rights of copyright. Moral rights creates a type of dignity interest in how the work is used, treated or portrayed. Moral rights are less concerned with rewarding labour, and are more concerned with protecting a type of bond between the artist and their creations. Some jurisdictions in Europe have very robust moral rights regimes with a number of distinct protections for authors. Canada’s framework furthers the Anglo-American copyright tradition which places economic rights at the centre. Nevertheless, Canada conforms to the Berne Convention minimum standards by offering protections for two main rights: (1) the right of attribution, and (2) the right of integrity.
At Article 6bis, the Berne Convention requires:
Before delving into the mechanics of these two rights under Canadian copyright law, a few aspects of moral rights protection more generally are worth noting. The first is that moral rights subsist independently from the ownership of the work itself. Therefore, in the case of a unique painting (for example), it does not matter that the work has been purchased from the artist and subject to a change in ownership. The moral rights protections to the work will subsist regardless. Secondly, the duration of moral rights protections last for as long as the copyright in the work or performance. Upon the death of the author or performer, the moral rights may either pass to the author or performer’s heirs, or form the subject of a specific bequest in a will or other testamentary document. But it is important to note that the moral rights cannot outlive the copyright term in the work. Thirdly, though moral rights belong exclusively to the author or performer, they cannot be assigned to any one else during the author or performer’s lifetime. In this vein, they are distinctly “non-economic”. They can, however, be waived in whole or in part where a contract or license explicitly refers to the waiver of moral rights.
The right of attribution and the right of integrity are both addressed in section 14.1 of the Act, which states:
As a result of the implementation of the WPPT, a performer of a live aural performance or a performance fixed in a sound recording has, subject to subsection 28.2(1), the right to the integrity of the performance, and — in connection with an act mentioned in subsection 15(1.1) or one for which the performer has a right to remuneration under section 19 — the right, if it is reasonable in the circumstances, to be associated with the performance as its performer by name or under a pseudonym and the right to remain anonymous.
1. Right of Attribution
Sometimes referred to as the “right of paternity”, the right of attribution refers to the author’s right to be associated with the work as author by name, pseudonym or to remain anonymous. Therefore, unless waived, an artist will always retain the right to choose how they would like to be associated with their work (if at all).
It should be noted that section 14.1 of the Act leaves a caveat. The right of attribution is enforceable where the right to be associated with a work is “reasonable in the circumstances”. Effectively, this means that the omission of the author’s name or pseudonym alone is not sufficient to find an infringement of moral rights. The author must also prove that it is reasonable for he or she to be associated with the work in those circumstances. Though this standard has not be the subject of much litigation in Canada, one can imagine circumstances where it would not be reasonable to expect attribution. Namely, where the type of work or manner in which it is displayed or perceived does not easily allow for attribution to take place. Overall, the right of attribution lacks guidance as to when (as a matter of fact) the standard of “being associated with the work” is met. It is therefore conceivable that in cases where the author is associated with the work in an implied manner (e.g., with some pictorial representation of the author or his or her name), such disputes could arise.
2. Right of Integrity
The right of integrity is the more well-known subject of Canadian moral rights. The right refers to the author’s right to the “integrity of the work”. The integrity right is only infringed if the work is “distorted, mutilated or otherwise modified, used in association with a product, service, cause or institution” in manner that is “to the prejudice of the honour or reputation of the author.
Snow v Eaton Centre Ltd, [1982] 70 CPR (2d) 105
Artist Michael Snow was commissioned by the Eaton Centre in Toronto to create a sculptural work of flying geese that would be hung from the shopping mall’s arched glass ceiling. The work, titled “Flight Stop” was completed over several years and eventually hung from the ceiling. During one Christmas holiday, the Eaton Centre placed red ribbons around the necks of the geese. Feeling as though the work had been prejudiced, Michael Snow alleged that the ribbons made his work look ridiculous and were prejudicial to his honor and reputation as an artist.
Photograph by Anthony Rosborough (2019), licensed under CC-BY-SA 4.0
Snow brought a claim alleging that the red ribbons around the necks of the geese infringed upon his right of integrity under the Act. He analogised the red ribbons to “dangling earrings from the Venus de Milo”. Snow’s opinion on this point was supported by testimony from a number of other well-respected artists. Writing for the court, Justice O’Brien found that the ribbons do distort or modify Snow’s sculptural work. It was further found that Snow’s contention that the distortion of the work was prejudicial to his honour and reputation was “reasonable in the circumstances”.
The decision in Snow v Eaton has been cited very frequently for a number of reasons. One of which is that it is one of the few decisions in Canada addressing moral rights. However, Snow v Eaton has been the subject of much discussion and debate also because of the rather difficult exercise of determining when a “distortion or mutilation” occurs, and when it rises to the level of prejudicing the artist’s honour and reputation. Though indicative of at least the type of acts that may constitute this treatment of works, the reasoning left behind from Snow v Eaton is in some respects problematic.
The Act provides at section 28.2 that:
The author’s or performer’s right to the integrity of a work or performer’s performance is infringed only if the work or the performance is, to the prejudice of its author’s or performer’s honour or reputation,
(a) distorted, mutilated or otherwise modified; or
(b) used in association with a product, service, cause or institution.
[Bolding added for emphasis]
Therefore, in order to fun afoul of the right of integrity, a distortion or mutilation of a work must be also to the prejudice of the author’s honour or reputation. It then becomes necessary to determine which acts are distortions or mutilations within the meaning of the Act. What Snow v Eaton tells us is that an act becomes a “distortion, mutilation or modification” through prejudice to the artist’s honour or reputation. The logic, therefore, is circular.
The uncertainty created by this framework is aided somewhat by section 28.3 of the Act. That provision states:
…For the purposes of this section,
(a) a change in the location of a work, the physical means by which a work is exposed or the physical structure containing a work, or
(b) steps taken in good faith to restore or preserve the work
shall not, by that act alone, constitute a distortion, mutilation or other modification of the work.
Therefore, in determining which acts constitute “distortion, mutilation or modification”, we know that merely a change in location or acts of preservation do not rise to this level. Nevertheless, the question as to what “prejudicial to the author’s honour and reputation” means is still largely undefined. These three interpreting provisions in section 28 lead to few answers on this subject.
Case law in more recent years has also provided some help in resolving this problem:
Afterlife operates a database of online obituaries. Thomson wrote an obituary for her late father which was included in Afterlife’s database and used in one of Afterlife’s advertisements to market their service online. Thomson (among a class of litigants) brought an action against Afterlife claiming that (among other things) Afterlife infringed her moral rights in the obituary because it suggested that she was profiting from her father’s death based on its use to solicit visitors to the website. This claim necessitated that the Federal Court once again delve into the issue of how “prejudice to honour and reputation” should be assessed in the context of section 28.2.
The Federal Court initially distinguished the case from Snow v Eaton on the basis that it dealt with the issue of section 28.2(1)(a) [distortion, mutilation or modification]. The dispute in Thomon v Afterlife Network was concerned with section 28.2(1)(b) [used in association with a product, service, cause or institution]. Nevertheless, both infringements of the right of integrity require an inquiry into the question of “prejudice to honour and reputation”.
Writing for the Federal Court, Justice Kane held that section 28.2 of the Act requires both a subjective and objective determination. Prejudice to honour and reputation requires an objective evaluation in the form of expert opinion as to when certain types of distortion, mutilation or association with products and services may prejudice an author’s honour or reputation. In other words, the question is not purely subjective.
For Thomson and members of her class action, the evidence they provided described their own view of the impact on their honour and reputation, including their dignity, but they did not provide any objective evidence. On this basis, Justice Kane found that the moral rights infringement claim failed.
What do you think of the Federal Court’s invocation of an objective test for determining prejudice to honour and reputation? Since the decision in Thomson v Afterlife Network, commentators have noted that the requirement of objective evidence pushes the right of integrity more in line with the common law tort of defamation. This tort includes an objective assessment of whether a communication “tends to lower the esteem of the subject in the minds of ordinary members of the public”. Do you think that the right of integrity should include a similar inquiry? Why or why not?
G. Infringement and liability
Before considering liability, it is important to remember that liability cannot be determined unless there is an infringing act. Without a finding of infringement tied to a statutory violation under sec. 3, 15, 18 or 21 of the Copyright Act, there can be no liability and therefore by extension no remedies granted to the IP holder. Only once you connect the actions of an allegedly infringing party to an infringing act can you then determine liability for that specific act of infringement whether it be copying, communication to the public by telecommunication, distribution etc. of the protected work in question.
1. Direct liability
Section 3 of the Copyright Act provides that the copyright owner has the sole right to reproduce “the work or any substantial part thereof”. A substantial part of a work is a flexible notion. It is a matter of fact and degree. What constitutes a substantial part is determined in relation to the originality of the work that warrants the protection of the Copyright Act. As a general proposition, a substantial part of a work is a part of the work that represents a substantial portion of the author’s skill and judgment expressed therein. In Cinar v Robinson, the Supreme Court reminded that what constitutes a substantial part is determined in relation to the originality of the work that warrants the protection of the Copyright Act. As a general proposition, a substantial part of a work is a part of the work that represents a substantial portion of the author’s skill and judgment expressed therein. Canadian courts have generally adopted a qualitative and holistic approach to assessing substantiality.
2. Secondary Liability Contrasted from Direct Liability
Under Canada’s copyright law, a single party can be held directly liable for infringement and other contributing parties can be found secondarily liable if their omissions or actions are responsible in some way for the act of infringement.
Under s.27(1) of the Copyright Act, general (or direct) infringement is defined as the act of doing, without the consent of the copyright owner, anything that this act states only the copyright owner has the right to do so. This would include the economic rights of reproduction, distribution, communication to the public by telecommunication, public performance, authorization, translation, and adaptation. Secondary infringement is directly below under s.27(2) and states a person is guilty of secondary infringement if they are; a) selling or renting out the work, b) distributing the work to such an extent it prejudicially affects the owner of the copyrighted work, or by way of trade distribute, expose, offer for sale/rental, or exhibit the work in public. You would also be secondarily liable if you process the work or import it into Canada for the purpose of doing any act under s.27(2)(a-c). There can only be secondary infringement if there has first been direct infringement.
According to CCH v Law Society of Upper Canada, three elements are required to prove a claim for secondary infringement for copyright under s.27(2). First, the copy of the work must be the product of primary infringement. Secondly, the second infringer must have known or ought to have known that they were dealing with a product of infringement. And finally, the secondary dealing must have been established meaning there must have been a sale of the infringing product. In CHH there was no finding of secondary infringement because there was no preliminary finding of direct infringement, therefore failing the first of the three required elements.
To undergo one of these activities under this section would make you directly liable to an act of infringement. Contributory liability for trademarks is a common and judicially created doctrine in US trademark law, whereas in Canada it is almost entirely absent. There is little to no case law referencing indirect liability in Canadian case law.
3. Intermediary Liability
As one could guess from their name, intermediaries are entities that provide intermediary services that could potentially be held secondarily liable for intellectual property infringement as a result of their acts or omissions during their business practices. In relation to intellectual property issues today, intermediaries are businesses that operate online. WIPO recognises that internet intermediaries are key players in the delivery of online content. “They host, locate and search for content and facilitate its distribution. Their increasing influence in recent years, as well as their evolving role has led to a debate regarding their liability in relation to online copyright infringement.”
There are several trade agreements between Canada and other countries that outwardly address the role of intermediaries and their potential for secondary IP infringement. One of which is the Canada and European Union Comprehensive Economic and Trade Agreement (CETA) is a bilateral investment treaty signed by Canada and the European Union in 2016. It governs the movement of services and goods between Canada and the EU, with provisions relating to intermediaries and their liabilities in relation to intellectual property under Article 20.11. Under this article, both Canada and the EU must provide limitations or exceptions to secondary liability placed on intermediaries for infringing acts occurring on their online platforms and businesses.
The Copyright Act specifically has been updated to meet these CETA requirements under s.31.1 stating “[a] person who, in providing services related to the operation of the Internet or another digital network, provides any means for the telecommunication or the reproduction of a work or other subject-matter through the Internet or that other network does not, solely by reason of providing those means, infringe copyright in that work or other subject-matter.” An exception to this provision is found under s.2.4(3) which states, “[a] work is not communicated in the manner described in paragraph (1)(c) or 3(1)(f) where a signal carrying the work is retransmitted to a person who is a retransmitter within the meaning of subsection 31(1)”.
There is also the US-Mexico-Canada Agreement (USMCA) that was ratified by each participating country in 2018 and went into effect on July 1, 2020, includes some strong protections for online tech platforms, affecting how Canada deals with intermediary liability for online companies such as Facebook, Youtube, Google, etc. Article 19.17 of the USMCA states you cannot “…treat a supplier or user of an interactive computer service as an information content provider in determining liability for harms related to information stored, processed, transmitted, distributed, or made available by the service, except to the extent the supplier or user has, in whole or in part, created, or developed the information.”
Put more simply, no party is allowed to hold an internet intermediary liable for the content that a user posts on their platform. To avoid an influx of lawsuits prior to this distinction, online platforms had to either heavily moderate all content on their platforms or opt to not moderate at all. The USMCA clarification that online companies are not the communicators of user-generated content on their platforms allows them to moderate with more flexibility without the looming fear of lawsuits.
4. Safe Harbours and the Role of Intermediaries in the Digital Environment
The key issue surrounding the determination of the scope of enforcement for intermediary liability lies in the recognition that a balance must exist between effective enforcement of intellectual property rights to the benefit of the rights holder and the interests of the intermediaries to support a free and accessible Internet. An efficient intellectual property regime will have both of these issues in mind whenever determining the extent to which an intermediary will be found liable for secondary infringement. Therefore, several countries have developed laws that set out conditions to allow intermediaries to be exempt from secondary infringement originally caused by their users, referred to as safe harbour laws.
The preconditions for a finding of infringement for provision of services under s.27(2.3) of the Copyright Act would apply to intermediaries. This states “[i]t is an infringement of copyright for a person, by means of the Internet or another digital network, to provide a service primarily for the purpose of enabling acts of copyright infringement if an actual infringement of copyright occurs by means of the Internet or another digital network as a result of the use of that service.” The factors for a finding under this provision are listed in s.27(2.4) and include:
-
(a) whether the person expressly or implicitly marketed or promoted the service as one that could be used to enable acts of copyright infringement;
- (b) whether the person had knowledge that the service was used to enable a significant number of acts of copyright infringement;
- (c) whether the service has significant uses other than to enable acts of copyright infringement;
- (d) the person’s ability, as part of providing the service, to limit acts of copyright infringement, and any action was taken by the person to do so;
- (e) any benefits the person received as a result of enabling the acts of copyright infringement; and
- (f) the economic viability of the provision of the service if it were not used to enable acts of copyright infringement.
Safe harbour laws will vary from country to country, with different conditions that warrant protection for intermediary action. While some might require intermediaries to comply with requirements to remove content as soon as a complaint is filed with their business, others only require the removal of infringing material once the court has confirmed the validity of the claim by the rights holder.
These differing policy models require that online businesses in multiple jurisdictions be aware of various different requirements under each country’s intellectual property regime in which they conduct business. To not follow the policy model of the country in which an intermediary does business means they can be found secondarily liable for material hosted, sent, sold, etc. by their users on their websites. Some countries don’t have any safe harbour protections for intermediaries in their IP regime at all.
Two of the most well known safe harbour policies include the notice-and-notice and the notice-and-takedown policy. The notice-and-notice regime is laid out in the Canadian Copyright Act, while the notice-and-takedown regime is found in the United States and European Union law in the governance of limited liability.
Canada’s Copyright Act was amended in 2012 via the Copyright Modernization Act (CMA) to address issues of liability arising for intermediaries as a result of the prevalence of the Internet. The CMA adopted the notice-and-notice procedure for copyright infringement cases occurring on intermediary platforms, as opposed to the already existing notice-and-takedown procedures popularized by the United States IP regime.
Both notice-and-notice and notice-and-takedown procedures begin with an intermediary receiving a notice of claimed infringement on their platform from the copyright holder, however, they differ in the requirements to how the intermediary must respond to that notice. Upon receiving a notice of alleged infringement from a rights holder in Canada, intermediaries must forward the notice to the alleged infringer as provided by s.41.26(1)(a)) of the CMA. They are required to actually remove the content from their services in a notice-and-notice procedure.
S.41.25 of the CMA lays out the requirements the copyright holder must follow when sending the notice to the intermediary, including specifying the work to which the claimed infringement relates, the electronic location to which it relates, and the infringement itself that is claimed. If these requirements are not met, the intermediary does not have to forward the notice to the alleged infringer. S.41.26(1)(b)) then requires the intermediary to retain the records that would allow the identification of the alleged infringer for a period between 6 months to a year from the start date of the reception of the notice by the alleged infringer. After the allotted time period, the intermediary no longer has to retain identifying information.
If an intermediary fails to follow the notice-and-notice requirements laid out in CMA at any point of the procedure, the rights owner is entitled to statutory damages between $5000-$10,000 CAD as per s.41.26(3).
Notice-and-takedown procedures are similar to notice-and-notice procedures, as both begin with a notice from the rights holder being sent to an intermediary indicating the possibility of infringing content existing on their online platform. However, they differ in that notice-and-takedown procedures require an intermediary to immediately remove the allegedly infringing material following the notice.
Businesses run under both the notice-and-notice and notice-and-takedown procedures have independently developed systems and practices to further limit infringing actions from occurring on their platforms. IP protection programs that seek to aid rights holders with tools to find infringing material include:
- Google Search Trusted Copyright Removal Program – tools that allow IP holders with a successful track record of accurate takedowns to submit huge amounts of links with potentially infringing content to be delisted in bulk. As of 2017, 178 TCRP partners submitted the vast majority of removal notices on Google.
- eBay Verified Rights Owner Program, allows IP holders to submit reports on listings that may infringe on their rights.
- Facebook Rights Manager – tools for publishers and creators on Facebook to maintain copyright control over their videos.
- Facebook Commerce & Ads IP Tool – allows brands to search Facebook Marketplace and sale group posts to find infringing content more easily.
- YouTube Content ID – allows copyright holders to identify and manage their content on YouTube, to qualify you must own exclusive rights to a substantial body of original material that is frequently uploaded by the YouTube creator community.
H. Fair Dealing & Exceptions
Though copyright law is concerned primarily with the grant of certain monopoly rights over the use of works, these rights are almost never absolute. As was previously discussed in the introductory paragraph of this chapter, one of copyright’s objectives is to further the use and dissemination of artistic and literary works. This benefits everybody. To achieve these objectives, it is necessary for the copyright system to include a release valve that permits use of works protected by copyright under specific circumstances. Canada’s approach to addressing lawful uses of protected works is bifurcated between the “Fair Dealing” framework and other specific statutory exceptions. The following sections address this framework, which is found in Part III of the Act. Note that Part III applies to the rights granted under both Part I and Part II of the Act.
1. Fair Dealing
Fair dealing is broader than merely a statutory defence to copyright infringement. It is an essential component of the balance between the rights of owners and users. In the widely-cited CCH decision, the Supreme Court of Canada described Fair Dealing as a “user’s right” and on this basis, much commentary and speculation has taken place regarding the extent to which the fair dealing of works can be regarded as a positive right. The operative provision addressing Fair Dealing is found at section 29 of the Act, which states:
Before delving into the mechanics of the fair dealing framework, a few aspects of this provision should be addressed. Firstly, Canada’s fair dealing framework is often understood as analogous or interchangeable with the United States’ doctrine of “Fair use”. This is not the case. Students of copyright should understand the clear difference between these frameworks that are evident from a reading of section 29 above. Namely, section 29 provides an exhaustive list of “purposes” for which a dealing could be considered fair. Though the Supreme Court of Canada has called for a liberal interpretation of these purposes, they are nevertheless treated as categories under which a specific dealing must fit to some degree.
These enumerated purposes are research, private study, education, parody or satire. This stands in contrast to the US’ fair use framework, which provides a non-exhaustive list of potentially fair uses. Secondly, the contextual factors used under the United States system to assess whether a use is fair apply to every type of use. In contrast, Canada’s Act provides for a more detailed framework for assessing whether a dealing in relation to each of the enumerated purposes is “fair”. Therefore, while the policy objectives of Canada’s fair dealing and the United States’ fair use may share some common ground, the mechanics of how these two approaches play out in practice is quite different.
Canada’s framework also uses the peculiar term “dealing” rather than “use”. This distinction is important, as it addresses the unique objectives of the fair dealing system in contrast to the United States’ fair use framework. Arguably, the term “use” carries normative implications in the sense that the work must be used in a way that is productive or socially beneficial. This complies most closely with the tradition of Utilitarianism in the United States. “Use” also connotes individual or specific acts as the focus of the framework, whereas “dealing” is capable of extending to processes, systems and practices that are put in place by institutions. These processes, systems and practices are included in the focus of the fair dealing framework, which places both institutions and individuals within its scope. Overall, these systems need not necessarily put the work to “use” in order to avail themselves of the framework.
CCH Canadian Ltd. v Law Society of Upper Canada, 2004 SCC 13
The Supreme Court of Canada in CCH opined extensively on the purpose and objective’s of Canada’s fair dealing framework. At paragraphs 48-49 of the Court’s written decision, C.J. McLachlin writes:
[48] Before reviewing the scope of the fair dealing exception under the Copyright Act, it is important to clarify some general considerations about exceptions to copyright infringement. Procedurally, a defendant is required to prove that his or her dealing with a work has been fair; however, the fair dealing exception is perhaps more properly understood as an integral part of the Copyright Act than simply a defence. Any act falling within the fair dealing exception will not be an infringement of copyright. The fair dealing exception, like other exceptions in the Copyright Act, is a user’s right. In order to maintain the proper balance between the rights of a copyright owner and users’ interests, it must not be interpreted restrictively. As Professor Vaver, supra, has explained, at p. 171: “User rights are not just loopholes. Both owner rights and user rights should therefore be given the fair and balanced reading that befits remedial legislation.”
[49] As an integral part of the scheme of copyright law, the s. 29 fair dealing exception is always available. Simply put, a library can always attempt to prove that its dealings with a copyrighted work are fair under s. 29 of the Copyright Act…
This “large and liberal interpretation” is key to understanding the Canadian approach to fair dealing. It is more than a complimentary feature of the Act, but rather an essential component of the overall copyright system. In taking all of the above into consideration, there are two main components to assessing whether fair dealing applies to a specific case:
(1) Whether the dealing conforms with one of the enumerated purposes in section 29; and
(2) Whether the dealing was “fair”.
The enumerated “purposes” in the Act are addressed below:
29 Fair dealing for the purpose of research, private study, education, parody or satire does not infringe copyright.
As opposed to the other sections addressing the enumerated purposes of fair dealing, section 29 does not include any caveats. It states clearly that fair dealing for any one (or more) of these enumerated purposes will not infringe copyright.
“Research” is understood broadly and liberally, and includes commercial, for-profit or private research. It can include numerous activities that do not ordinarily fall within conventional conceptions of ‘research’, including informal or exploratory work or to ensure authenticity of information.
In Society of Composers, Authors and Music Publishers of Canada (SOCAN) v Bell Canada, 2012 SCC 36 at issue was online music services that provide consumers with a free 30-90 second preview of songs before purchase. The previews are streamed online and no copies are created on the user’s computer or device. SOCAN sought tariffs from the Copyright Board for the communication of these song excerpts. The Copyright Board determined that the previews do not attract tariffs because they constitute fair dealing for the purpose of “research”. The dispute over the meaning of “research” made its way to the Supreme Court of Canada. The SCC held that “research” (like all aspects of the fair dealing framework) should be given a “large and liberal interpretation”. It found that research is not limited to only creative purposes, but ostensibly any activity that is simply for “personal interest”. This interpretation of the “research” purpose of the fair dealing framework suggests that the concept of research under fair dealing is quite broad.
Therefore, law students who engage in fair dealing for the purposes of their education will fall within one of the enumerated purposes under the Act. It does not matter that this education may take place collectively or collaboratively.
In a unanimous decision in York University v. Canadian Copyright Licensing Agency (Access Copyright) 2021 SCC 32, the Supreme Court reiterated that “[a]t the end of the day, the question in a case involving a university’s fair dealing practices is whether those practices actualize the students’ right to receive course material for educational purposes in a fair manner, consistent with the underlying balance between users’ rights and creators’ rights in the Act”.
“Parody” and “Satire” are relatively new additions to the enumerated purposes under the fair dealing framework. These came through the Copyright Modernization Act in 2012. Accordingly, it has received fairly little judicial comment. In 2017, however, the Federal Court addressed the notion of “parody”:
The defendant, Cooperstock, operated a website with the URL www.untied.com which hosted consumer criticisms and complaints about the plaintiff airline’s services and operations (United Airlines).
In 2011, Cooperstock revamped the website to look similarly to the plaintiff airline’s website. Evidence from several witnesses was such that significant confusion between the plaintiff’s website and the defendant’s website had been caused by the website design. While the majority of the dispute centered around the Trade Marks Act and depreciation of the plaintiff’s goodwill, the Federal Court opined on the notion of “parody” within the fair dealing framework. Writing for the Court, M.L. Phelan J. writes:
[110] …[The Copyright Act] is silent as to the content, meaning, or scope of “parody”. Therefore, the words of the legislation must be “read in their entire context and in their grammatical and ordinary sense harmoniously within the scheme of the Act, the object of the Act, and the intention of Parliament”…
[…]
[119] …Parody should be understood as having two basic elements: the evocation of an existing work while exhibiting noticeable differences and the expression of mockery or humour. I would also note that the fair dealing exception for the purpose of parody in s 29 of the Copyright Act does not require a user to identify the source of the work being parodied. In addition, in my view, parody does not require that the expression of mockery or humour to be directed at the exact thing being parodied. It is possible, for example, for a parody to evoke a work such as a logo while expressing mockery of the source company, or to evoke a well-known song while expressing mockery of another entity entirely.
[120] In my view, UNTIED.com falls within the definition of parody described above: it evokes existing works (the United Website, the United Logo, and the Globe Design) while showing some differences (such as content and disclaimers), and it expresses mockery (and criticism) of the Plaintiff. Therefore, the first stage of the CCH test has been met in this case.
The Court went on to assess whether Cooperstock’s dealing was nevertheless “fair”; the second branch of the fair dealing test. On this branch of the test, the Federal Court found that the defendant’s fair dealing claim failed. In particular, the Court found that it was not necessary for the defendant to have copied the plaintiff airline’s website so closely if the purpose was to achieve the effect of parody. Though the defendant was not able to avail himself of fair dealing overall, the Court’s interpretation of “parody” is instructive.
[This case is further discussed in Chapter VI. Trademarks and Passing Off]
In reaching its conclusion on the meaning of “parody” within the meaning of the Act, the Federal Court in United Airlines v Cooperstock looked to the ordinary dictionary meaning of the term. It also took guidance from the European Court of Justice and case law interpreting the parody exception under the EU’s Copyright Directive. Therefore, while “satire” has not been interpreted to the same extent that “parody” has, one could expect a court to take a similar approach.
What do you think of the Federal Court’s view that parody requires both the evocation of an existing work and the expression of mockery or humour? Do you think that this is a satisfactory conceptualisation of parody?
s.29.1 Fair dealing for the purpose of criticism or review does not infringe copyright if the following are mentioned:
(a) the source; and
(b) if given in the source, the name of the
(i) author, in the case of a work,
(ii) performer, in the case of a performer’s performance,
(iii) maker, in the case of a sound recording, or
(iv) broadcaster, in the case of a communication signal.
In Wiseau Studio, LLC et al v Harper et al, 2020 ONSC 2504, at issue was the creation of a documentary film called Room Full of Spoons. The film’s main focus was examine the cult following behind a released film, The Room, which received such poor critical reviews that it obtained a type of “so bad it’s good” fame. Room Full of Spoons used many scenes from The Room, along with photographs from behind the scenes footage, but no licence agreement was ever reached with the copyright holder, Wiseau, of The Room. The documentary, Room Full of Spoons, was eventually screened at film festivals in North America and Europe and received positive reviews.
Wiseau later sought an injunction to prevent further screenings of Room Full of Spoons on the basis that it infringed copyright in the Room, including Wiseau’s moral rights. Wiseau felt strongly that Room Full of Spoons was an attack on his character and essentially defamatory. The Ontario Supreme Court, among other inquiries, assessed the degree to which the documentary could be said to be “criticism or review” of The Room.
One of the hurdles in conceptualising the documentary as criticism or review was the fact that it was largely seen as a type of exposé rather than an exploratory or investigative work. The Court found that the fact that the documentary does not evoke respect for Wiseau does not undermine the allegation that it is a work of criticism or review. The Court cited an older UK decision (Court of Appeal), Time Warner Entertainments Co LP v Channel Four Television Plc, [1994] EMLR 1, where Henry LJ commented on the nature of “criticism” under UK fair dealing:
“…’Fair dealing’ in its statutory context refers to the true purpose (that is, the good faith, the intention and the genuineness) of the critical work – is the programme incorporating the infringing material a genuine piece of criticism or review, or is it something else, such as an attempt to dress up the infringement of another’s copyright in the guise of criticism, and so profit unfairly from another’s work?”
Accordingly, the Ontario Supreme Court found that the documentary had at its genuine purpose, review, criticism and news reporting. The Court was not persuaded by the Plaintiff’s contention that the negative portrayal of him negated the defendants’ claim that their purpose was indeed “criticism or review”.
The Court’s decision in Wiseau Studio sheds light on the potential for subjective considerations to make their way into which purposes are “criticism or review” from those that are quasi-defamatory or accusatory. Clearly the Court was not persuaded by the Plaintiff’s sentiments about his character being under attack in the documentary. Do you think that these types of considerations should play a role in determining the fair dealing purposes? Why or why not? What do you think the line should be (if any) between “criticism or review” and character assassination? Should the later be protected by fair dealing?
Your answer to these questions may be informed by subsequent comments from the courts on the nature of “criticism” under fair dealing. The relationship between “criticism or review” and character assassination was addressed again by the Federal Court in Canadian Broadcasting Corporation v Conservative Party of Canada, 2021 FC 425:
Canadian Broadcasting Corporation v Conservative Party of Canada, 2021 FC 245
During the 2019 Federal election, the Conservative Party of Canada (“CPC”) produced advertisements that were critical of Prime Minister Justin Trudeau and the Liberal Party of Canada. These advertisements, sometimes referred to as “attack ads” sampled numerous short clips from news and other television programs, some of which were produced by the CBC. In response, the CBC commenced an infringement action against the CPC.
In its defence, the CPC asserted that its use of portions of CBC programs were merely insubstantial parts, and if they did amount to substantial parts, were allowable on the basis of fair dealing. The CPC asserted numerous allowable purposes under the fair dealing framework, including criticism. On this point, the CBC’s contention was that “criticism” under fair dealing required that the use of the work be limited to criticisms of the work itself (in this case, the news or other television programs).
Pointing to a broad and liberal interpretation for the enumerated fair dealing purposes, the Federal Court disagreed. It found that the CPC’s use of the clips, while substantial parts, were nevertheless valid uses on the basis of criticism. Justice Phelan writes for the Court:
[79] In summary, Canadian jurisprudence has established that it is not merely the text or composition of a work that may be the object of criticism but also the idea set out in the work and the social or moral implications of those ideas (see Hager). As held in the UK, a party is entitled to criticize not only the literary style, but also the doctrine or philosophy as expounded in the work. Criticism, satire and review are intellectual challenges to particular thoughts, words and actions.
[80] Section 29.1’s reference to criticism must be read in context of review, parody or satire where fair dealing allows for the challenge to content not just format of the expression. It would be artificial to limit criticisms to the expression of how the work was produced but preclude showing the ideas or actions being challenged.
[81] Criticism is embedded in the CBC Works that the Respondents used. For example, the Advertisement juxtaposed a short clip of the Prime Minister asking the viewer to “look at what we’ve done”
with the news clip that invited unfavourable conclusion about his performance and the mistakes he supposedly made.
The Federal Court made clear that “criticism” within the fair dealing framework is not to be limited to uses which criticise the production or formal aspects of the work itself, but can also include uses which criticise the ideas or topics expressed in it.
Does the Federal Court’s analysis in CBC v CPC (above) change your answers to the questions below Wiseau Studio? Do you think that fair dealing should protect and enable personal criticisms or attacks? Why or why not? Intertwined with this question are aspects of defamation law and freedom of expression. To what extent do you think that these external principles should play a role in the fair dealing analysis?
29.2 Fair dealing for the purpose of news reporting does not infringe copyright if the following are mentioned:
(a) the source; and
(b) if given in the source, the name of the
(i) author, in the case of a work,
(ii) performer, in the case of a performer’s performance,
(iii) maker, in the case of a sound recording, or
(iv) broadcaster, in the case of a communication signal.
In recent decades, the distinction between “news reporting” and other types of expression has become less clear. Undoubtedly this is as the result of the digital environment, content sharing platforms and social media. Exactly when a dealing may be said to be for the purpose of “news reporting” as opposed to some other similar purpose requires further examination. Unfortunately, we are without much input from the courts as to the boundaries and confines of “news reporting” as it relates to fair dealing. Even further still, the “large and liberal interpretation” required for the fair dealing purposes as articulated by the Supreme Court of Canada in CCH implies that such a purpose could ostensibly include less authoritative sources of “news”, including social media or personal blogs. At least one relatively recent case suggests that this would be the case:
Richard Warman held copyright in three works: a speech opposing neo-Nazism, a co-authored article that appeared in the National Post newspaper and a photograph of himself. Each of the three works were reproduced to some degree on a website called “Free Dominion”, including portions of the co-authored National Post article. This website was described by the respondents as an “online political news discussion forum which is accessible to any member of the public and which is used for discussing political issues from a conservative viewpoint.” The viewpoint of Free Dominion appeared to differ significantly from the viewpoint of the applicant, Richard Warman.
Warman brought a claim against Free Dominion before the Federal Court alleging copyright infringement in all three works.
In relation to the National Post newspaper article co-authored by Warman, the Court assessed the degree to which its reproduction could constitute fair dealing under section 29.2 of the Act. Though the Court found some potential issues with the manner in which the article was reproduced, it articulated no difficulty in finding that the purpose of the reproduction was “News Reporting”. Writing for the Court at paragraphs 31, Rennie J writes:
[31] The SCC stated in CCH, at paragraph 51, that the fair dealing purposes (in that case, research) “must be given a large and liberal interpretation in order to ensure that users’ rights are not unduly considered.” Applying this large and liberal interpretation to news reporting, I find that the respondents’ dealing in respect of the Kay Work falls within this purpose. They posted the excerpts of the Kay Work on Free Dominion to promulgate the facts recounted in that article. Thus, the first criterion for fair dealing is met. The news reporting exception also requires that the source and author be mentioned, which is also satisfied in this case.
[Bolding added for emphasis]
The Court’s reasoning therefore is demonstrative of the fact that the “large and liberal interpretation” mandated by the Supreme Court of Canada in CCH may extend the types of publications or sources which can avail themselves of the “News Reporting” exception.
Do you agree that the concept of “News reporting” should be given a large and liberal interpretation? Why or why not? With an increasingly blurred distinction between news and opinion and the fragmentation of authoritative sources for news reporting, do you foresee any potentially negative consequences for taking this approach? Remember that the fair dealing framework is a core part of the copyright system in ensuring users rights. Arguably, fair dealing for the purpose of news reporting serves an important public interest objective. By expanding the notion of news reporting to blogs, opinion forums and other websites, is this public interest objective being met? Why or why not?
(1) Whether the dealing conforms with one of the enumerated purposes in section 29; and
(2) Whether the dealing was “fair”.
This second step – whether the dealing was “fair” – is the more complex portion of the inquiry. The Supreme Court of Canada in CCH surveyed a number of prior cases in establishing six factors for determining whether a dealing is fair. They are:
Secondly, the six factors were again revisited by the Federal Court in the context of York University’s fair dealing guidelines in Canadian Copyright Licensing Agency v York University, 2017 FC 669. The dispute centred around copying activities and fair dealing policies put in place by York University library. The Canadian Copyright Licensing Agency (“Access Copyright”) sought to enforce a Tariff issued by the Copyright Board of Canada in respect of these copying activities.
In its decision, the Court acknowledged the overlap between the six fairness factors and the first branch of the fair dealing test. Nevertheless, the Federal Court held that the six contextual factors ought to be considered from the user’s perspective, whereas the initial inquiry as to the “purpose” of the dealing assesses the degree to which the dealing factually conforms with the statutory purposes. On this point, Phelan J., writing for the Court at paragraph 264 opines:
For the Federal Court, a significant factor for examining the “purpose of the dealing” as part of the six contextual factors was the lack of safeguards or standards. The Court viewed this second “purpose of the dealing” in the fair dealing test as being more akin to the “goal of the dealing” than the purpose of the dealing. Viewed in this way, the Court took issue with what it viewed as York University’s cavalier approach to its fair dealing guidelines. At paragraphs 270-272, Phelan J writes:
[270] Under the “goal of the dealing”, the focus is on considering the fairness of the goal for which the permitted activity (e.g., research, education) took place. In this context, the question is the fairness of the goal of allowing students to access required course materials for education. Considered in isolation, this would tend toward fairness (although if considered in tandem with access to alternatives, its character may actually change to less fair). Of course, cost saving could be a goal of this activity as well, but as fair dealing embeds the ability of the user to access the content without compensating the creator that feature would be present in all fair dealing situations.
[…]
[272] It is evident that York created the Guidelines and operated under them primarily to obtain for free that which they had previously paid for. One may legitimately ask how such “works for free” could be fair if fairness encompasses more than one person’s unilateral benefit.
[273] The goal of the dealing was multifaceted. Education was a principal goal, specifically education for end user. But the goal of the dealing was also, from York’s perspective, to keep enrollment up by keeping student costs down and to use whatever savings there may be in other parts of the university’s operation.
It is worth noting that the litigation in Access Copyright v York has continued beyond this 2017 decision of the Federal Court. The extent to which York’s guidelines were consistent with fair dealing and the validity of the tariffs was the subject of continued debate in the 2020 decision of the Federal Court of Appeal. In reviewing Phelan J’s decision from 2017, the Federal Court of Appeal found no reason to overturn its findings on fair dealing. Having said that, as of June 2020, both Access Copyright and York University have filed applications for leave to appeal to the Supreme Court of Canada. Much of the dispute on appeal centred around the validity of the Copyright Board’s tariff. The Supreme Court affirmed the Federal Court of Appeal decision in York University v. Canadian Copyright Licensing Agency (Access Copyright), 2021 SCC 32. On the issue of fair dealing, the Court simply stated that ‘[102] contrary to the Federal Court of Appeal’s view, in the educational context it is not only the institutional perspective that matters. When teaching staff at a university make copies for their students’ education, they are not “hid[ing] behind the shield of the user’s allowable purpose in order to engage in a separate purpose that tends to make the dealing unfair”.’
For now, suffice it to say that despite the repetition of the “purpose of the dealing” in the fair dealing analysis, there appears to be some distinction in the questions being asked. Namely, the “purpose of the dealing” within the six contextual factors asks less about whether the dealing complies with the enumerated statutory purposes, and more so the subjective goals, purpose or objectives of the dealing on behalf of the user(s).
(2) “Character of the dealing“
The character of the dealing addresses the circumstances and manner in which the dealing is carried out. For example, if a significant portion of a protected work is reproduced and then quickly destroyed (as is in the case of data mining or data analysis), the character of this sort of dealing may be more easily found to be fair than in cases where such portions are reproduced numerous times and retained indefinitely. The character of the dealing therefore refers to the technical, mechanical or logistical means in which the protected work (or substantial portions of it) are reproduced. The Supreme Court of Canada in CCH also proposed that courts turn to the “custom or practice in a particular trade or industry to determine whether or not the character of the dealing is fair” (paragraph 55).
The amount of the dealing addresses both the quantity and quality of what is reproduced as part of the dealing. In some instances, it may be that a dealing only reproduces small portions or excerpts of the protected work. In other cases, it may be that the entire work is reproduced. Recall that copyright protects entire works, and “substantial parts thereof”. It does not protect portions of works that are less than substantial. For this reason, it is possible that a dealing which reproduces only small portions of a work does not rise to the level of infringement at all, and therefore the fair dealing analysis is not necessary. In this vein, the amount of the dealing is to be assessed in the context of the other five factors. It can assist in determining the necessity and reasonableness of the amount that is reproduced as part of the dealing.
(4) “Alternatives to the dealing“
The alternatives to the dealing focuses on the degree to which it was necessary to reproduce parts of the protected work or otherwise engage in infringing activity. The Supreme Court of Canada’s commentary in CCH on this point (paragraph 57) is instructive:
Therefore, fair dealing is not intended to run roughshod over the exclusive rights provided by copyright. It is a not a carte blanche licence to reproduce or otherwise infringe works without some degree of reasonable necessity, and the “alternatives to the dealing” factor addresses this aspect.
The nature of the work refers to the degree to which the work was already widely available. In essence, courts will look to whether the work the dealing actually furthered wider dissemination of the work. If, for example, the work was already commercially available with relative ease, then this may impact the degree to which it is necessary to reproduce it in its entirety. By contrast, if the work is little known or not widely available through the mainstream modes of dissemination, then it could be the case that the dealing (assuming that the other factors are satisfied) furthers interest or demand in the protected work.
This approach was put forward by the Supreme Court of Canada in CCH. Though intuitive in many regards, it proposes that the degree to which works have already been widely disseminated will impact the fair dealing analysis. Curiously, the Supreme Court of Canada proposed that works which are widely available should negate a finding of fairness, and works which have not yet been distributed should support a finding of fairness.
While on a purely commercial basis this framework is intuitive, it could be argued that the presumption should be reversed. Many jurisdictions internationally include explicit support for a “right of first publication”. This is in essence a moral right which provides the author with the ultimate decision when to publish or distribute (if at all) their works. Though Canada’s Act does not contain an explicit provision endorsing the right of first publication, there is support for the idea that it this right is implied. Writing further on this point in relation to the “nature of the work” criterion, Professor Giuseppina D’Agonstino (York University) compares Canada’s peculiar approach to this criterion in contrast to the United States and the United Kingdom.
(6) “Effect of the dealing on the work“
The effect of the dealing on the work addresses the market aspects of the dealing. In particular, it assesses whether the dealing is likely to impact the demand for the protected work by offering others substantially the same thing in the absence of protection. The Supreme Court of Canada in CCH was clear when it held that this is “not the most important factor” in the fair dealing analysis. Nevertheless, it is taken into consideration in the context of the other factors.
Overall, it is worth repeating that the six contextual factors in the fair dealing analysis are to be assessed from the users’ perspective. None of them are determinative, though some weigh more heavily than others. In every case, the fair dealing analysis will be assessed in accordance with the necessary balance between the public interest in the ability to access and disseminate works and the copyright owner’s ability to protect and exploit their works.
2. Statutory Exceptions
Fair dealing is not the only statutory basis for excusing otherwise infringing conduct. The Act contains a number of other statutory exceptions for specific purposes. Each of these exceptions embody distinct policy objectives and respond to specific cultural and educational environments which allow for conduct that would be otherwise infringing copyright. The below sections address a selection of these statutory exceptions:
Educational Institutions
The Act provides a specific exception for “educational institutions” to carry out certain acts that would otherwise be infringing. This exception is in addition to the “educational” purpose under fair dealing. The Act defines “educational institution” as:
(a) a non-profit institution licensed or recognized by or under an Act of Parliament or the legislature of a province to provide pre-school, elementary, secondary or post-secondary education,
(b) a non-profit institution that is directed or controlled by a board of education regulated by or under an Act of the legislature of a province and that provides continuing, professional or vocational education or training,
(c) a department or agency of any order of government, or any non-profit body, that controls or supervises education or training referred to in paragraph (a) or (b), or
(d) any other non-profit institution prescribed by regulation…
(1) Education and Training
Reproduction “or any other necessary act” in order to display it for the purposes of education or training is lawful under the Act, so long as the work is not otherwise commercially available in a suitable format or medium. This includes, for example, the creation of digital copies of works for which the educational institution has a licence in paper format. In the context of legal education, this would allow a law school to digitize and disseminate to students online electronic copies of loose-leaf resources, provided of course that the school has a licence to make copies to begin with.
(2) Examinations
Educational institutions can also reproduce, translate, perform in public and communicate to the public by means of telecommunication a work as part of a test or examination. This purpose too includes the caveat that the work must be not be otherwise commercially available in a suitable format or medium.
(3) Performances Before Student Audiences
Live performances of works (e.g., dramatic works such as plays), sound recordings, cinematographic works or performer’s performances are permitted so long as the work itself is not an “infringing copy”. For example, a film screened before students for educational purposes cannot itself be an infringing copy. The performance or viewing of the work must be done before an audience primarily of students, teachers, instructors or others involved in delivering the curriculum of the educational institution.
Libraries, Archives and Museums
For similar policy reasons to the exceptions for educational institutions, libraries, archives and museums are exempt from copyright infringement for specific uses of works. This exceptions sit on top of the fair dealing framework which includes research, private study, criticism and review as one of the enumerated fair dealing purposes. The operative provision in the Act covering this exception is found at section 30.1, which states:
30.1(1) It is not an infringement of copyright for a library, archive or museum or a person acting under the authority of a library, archive or museum to make, for the maintenance or management of its permanent collection or the permanent collection of another library, archive or museum, a copy of a work or other subject-matter, whether published or unpublished, in its permanent collection
(a) if the original is rare or unpublished and is
(i) deteriorating, damaged or lost, or
(ii) at risk of deterioration or becoming damaged or lost;
(b) for the purposes of on-site consultation if the original cannot be viewed, handled or listened to because of its condition or because of the atmospheric conditions in which it must be kept;
(c) in an alternative format if the library, archive or museum or person acting under the authority of the library, archive or museum considers that the original is currently in a format that is obsolete or is becoming obsolete, or that the technology required to use the original is unavailable or becoming unavailable;
(d) for the purposes of internal record-keeping and cataloguing;
(e) for insurance purposes or police investigations; or
(f) if necessary for restoration.
Importantly, this exception does not apply where an appropriate copy is “commercially available” in a medium and of a quality that is suitable for maintaining and managing the library, archive or museum’s collection.
Non-Commercial User-generated Content
As part of the amendments to the Act which came into force in 2012, Canada added an exception for “non-commercial user-generated content” which allows individuals to “use” existing works in the creation of a new work. Canada became the first country in the world to include an exception of this sort. At section 29.21, the Act states:
Non-commercial user-generated content
29.21 (1) It is not an infringement of copyright for an individual to use an existing work or other subject-matter or copy of one, which has been published or otherwise made available to the public, in the creation of a new work or other subject-matter in which copyright subsists and for the individual — or, with the individual’s authorization, a member of their household — to use the new work or other subject-matter or to authorize an intermediary to disseminate it, if
(a) the use of, or the authorization to disseminate, the new work or other subject-matter is done solely for non-commercial purposes;
(b) the source — and, if given in the source, the name of the author, performer, maker or broadcaster — of the existing work or other subject-matter or copy of it are mentioned, if it is reasonable in the circumstances to do so;
(c) the individual had reasonable grounds to believe that the existing work or other subject-matter or copy of it, as the case may be, was not infringing copyright; and
(d) the use of, or the authorization to disseminate, the new work or other subject-matter does not have a substantial adverse effect, financial or otherwise, on the exploitation or potential exploitation of the existing work or other subject-matter — or copy of it — or on an existing or potential market for it, including that the new work or other subject-matter is not a substitute for the existing one.
Interestingly, the provision includes the peculiar term “use” to describe what may be done with the original work in compliance with the exception. The Act then defines “use” in this context as:
Therefore, the exceptions is quite broad and allows for a wide range of activity.
The user-generated content exception is sometimes referred to as the “mashup” exception, as it permits creators (mostly in the digital environment) to “sample” or reproduce portions of protected works in the creation of new works. The provision requires that these individuals must use these works for “non-commercial purposes” and attribute authorship or the origin of the source work. Users looking to take advantage of this section must also assure themselves that the source work itself is not an infringing work and that their use of the work will not adversely effect (in a broad sense) the original work.
While the policy reasoning behind the provision is straightforward, its practical application may not be. In particular, the notion of “non-commercial purposes” is particularly difficult to delineate in practice. The policy reasoning behind the exception is to address amateur creations online which do not adversely affect rightsholders’ interests. But to assume that amateur creation is also “non-commercial” is an oversimplification. Further still, it is quite difficult to determine when an activity online becomes “commercial” given the myriad ways in which revenues and profits can be garnered through distinct channels online (e.g., crowd funding, advertising revenues, cross promotion of other products or services). While some online services such as YouTube have clearly distinct modes of creation on the basis of which channels are “monetised” and which are not, this is not always true for online creation. In many cases, it can be exceptionally difficult to determine when a use of a work is done “commercially”. Overall, the provision has embedded within it a certain approach to commercial activity that does not fit well within the contemporary digital environment.
Perceptual Disabilities Exception
In some cases, it is necessary to reproduce or change the format of works so that people with disabilities or specific needs can access and make use of them. To address this, the Act also includes an exception to infringement for those with perceptual disabilities. It is primarily intended to assist those who require reproductions of works or conversion of existing works into alternative formats. The Act defines “perceptual disability” as:
…a disability that prevents or inhibits a person from reading or hearing a literary, musical, dramatic or artistic work in its original format, and includes such a disability resulting from
(a) severe or total impairment of sight or hearing or the inability to focus or move one’s eyes,
(b) the inability to hold or manipulate a book, or
(c) an impairment relating to comprehension…
The operative provision for the perceptual disabilities provision in the Act is found at section 32, which states (in part):
It is not an infringement of copyright for a person with a perceptual disability, for a person acting at the request of such a person or for a non-profit organization acting for the benefit of such a person to
(a) reproduce a literary, musical, artistic or dramatic work, other than a cinematographic work, in a format specially designed for persons with a perceptual disability;
(a.1) fix a performer’s performance of a literary, musical, artistic or dramatic work, other than a cinematographic work, in a format specially designed for persons with a perceptual disability;
(a.2) reproduce a sound recording, or a fixation of a performer’s performance referred to in paragraph (a.1), in a format specially designed for persons with a perceptual disability;
(b) translate, adapt or reproduce in sign language a literary or dramatic work, other than a cinematographic work, in a format specially designed for persons with a perceptual disability;
(b.1) provide a person with a perceptual disability with, or provide such a person with access to, a work or other subject-matter to which any of paragraphs (a) to (b) applies, in a format specially designed for persons with a perceptual disability, and do any other act that is necessary for that purpose; or
(c) perform in public a literary or dramatic work, other than a cinematographic work, in sign language, either live or in a format specially designed for persons with a perceptual disability.
In other words, the perceptual disability exception acts as a fairly complete and robust exception to the exclusive rights provided to rights owners under the Act. As is further discussed in the proceeding section on Technological Protection Measures, the perceptual disability framework also includes a series of exceptions allowing circumvention of TPMs to ensure that works are in the appropriate format for those with perceptual disabilities.
Canada’s perceptual disability framework, along with other provisions in the Act, operate harmoniously with Canada’s larger obligations under the Marrakesh Treaty. This included requirements for Canada to also implement changes which would allow cross-border exchange of accessible formats, as found at section 32.01 of the Act. It should be noted that while the perceptual disabilities framework under the Act provides a fairly comprehensive defence to the infringement of economic rights, it does not address moral rights. While there has been no case law in Canada which thoroughly interprets the provisions which comprise this exception, it is theoretically possible for an author to object to the conversion or adaptation of a work on the basis of their moral rights.
I. Technological Protection Measures & Rights Management Information
In addition to the economic and moral rights offered by copyright, the law has also come to recognise other types of protection to assist rights owners in curtailing infringement. The most prominent example of this protection are technological protection measures (“TPMs”). Sometimes referred to as “digital locks”, TPMs enable rightsowners to prohibit others from accessing, copying or decoding information relating to a device or piece of software.
An early example of a TPM would be the two holes on the top of an audio cassette tape that would prevent a user from recording over it or using it as essentially blank media. Modern TPMs often take the form of software restrictions that prohibit users from making use of technologies in ways that may infringe copyright. Reminiscent of this approach is the now obsolete notion of “jailbreaking” a smartphone to run non-proprietary software. These sorts of restrictions and the techniques used to bypass them all fall under the umbrella of TPMs and the notion of “circumventing” TPMs.
The Act’s protection for TPMs came about in 2012 as the result of the Copyright Modernization Act. These changes were in turn the result of both international developments as part of the 1996 WCT as well as growing trade-related pressure from the United States to adopt protections consistent with its own Digital Millennium Copyright Act. The introduction of these protections in Canada was met with considerable controversy at the time, including from academic commentators, lawmakers and the public. The primary focus of concern was that protection for TPMs was seen as independent from any underlying copyright in the work itself. This effectively created for a type of protection with stiff penalties that could potentially bear little relation to the entire statutory scheme under the Act. As will be seen, the protection for TPMs and the penalties for circumvention remain a point of considerable contention within copyright circles, and as an increasing number of products are being sold with integrated software protected by copyright, the implications of these protections are becoming more prominent.
Definition and Use Cases for TPMs
The Act provides for a very broad definition of what constitutes a TPM at section 41:
technological protection measure means any effective technology, device or component that, in the ordinary course of operation,
(a) controls access to a work, to a performer’s performance fixed in a sound recording or to a sound recording and whose use is authorized by the copyright owner, or
(b) restricts the doing – with respect to a work, to a performer’s performance fixed in a sound recording or to a sound recording – of any act referred to in section 3, 15 or 18 and any act for which remuneration is payable under section 19…
This very broad definition ostensibly includes a wide range of things that could be considered a TPM, including software encryption, authentication, digital watermarking, proprietary connectors and cables and special screws. The earliest iterations of TPMs in the WCT and at the international level were primarily centred around copy-control technologies, or those whose primary purpose was to inhibit copying works protected by copyright. However, defining TPMs principally as those restrictions or “measures” which “control access to a work”, broadens significantly the role and function that TPMs may have. For example, in some industrial machinery, replacement parts require “authentication” with a central computer in order to become operable. This may require access to system software or proprietary cables which are not widely accessible. Though these restrictions bear little relation to copying in any real sense, they may nevertheless be protected under this conception of an “access control”.
The broad definition of “circumvent” adds to the seemingly limitless subject matter that can fall under protection for TPMs. The Act defines “circumvent” (also at section 41) as:
circumvent means,
(a) in respect of a technological protection measure within the meaning of paragraph (a) of the definition technological protection measure, to descramble a scrambled work or decrypt an encrypted work or to otherwise avoid, bypass, remove, deactivate or impair the technological protection measure, unless it is done with the authority of the copyright owner; and
(b) in respect of a technological protection measure within the meaning of paragraph (b) of the definition technological protection measure, to avoid, bypass, remove, deactivate or impair the technological protection measure…
In other words, any activity that bypasses, circumvents or defeats a TPM constitutes “circumvention”.
There have been relatively few cases in Canada where these provisions have been interpreted and applied, except for the Federal Court’s 2017 decision in Nintendo v King:
A company called “Go Cyber Shopping” was a seller and installer of “mod chips”. These were essentially computer hardware chips that, once installed, allowed users to circumvent the technological protection measures on video game consoles. The mod chips installed by Go Cyber Shopping were desirable by consumers because they allowed them to install and play so-called “home brew” games (i.e., games that they made themselves) as well as play games that are not officially supported by Nintendo and other manufacturers. The mod chips could also allow users to play copies of games that infringe copyright. Importantly, the mod chips themselves did not produce reproductions of existing works or directly infringe upon the exclusive rights of game creators or manufacturers.
Nintendo brought a claim against Go Cyber Shopping for their infringement of the TPMs in the consoles. It alleged that the security features in the system’s firmware constituted technological protection. The crux of the dispute centred around the definition of “technological protection measure” in the Act, and particularly whether the firmware constituted an “effective” measure.
The Court found that the mod chips do not have to be necessarily related to copy protection to be “effective” measures. Justice Campbell, writing for the Court at paragraph 84 states:
[84] … [H]aving regard to Parliament’s express intent to give copyright owners the power to control access to works, the principle of technological neutrality, the scheme of the Act, and the plain meaning of the definitions for TPM and “circumvent”, it is clear that access control TPMS do not need to employ any barrier to copying in order to be “effective”.
The Court found that Go Cyber Shopping had unlawfully circumvented Nintendo’s TPMs and awarded a total of over $12-million in damages, including statutory and punitive damages. The decision represents a potentially heavy-handed approach to TPM circumvention under Canadian law and raised eyebrows as to the seriousness of circumvention in the absence of copying.
In the 2019 Statutory Review of the Copyright Act, the Standing Committee on Industry, Science and Technology commented on TPM protections by observing and recommending atthat:
The Committee recognizes that the effective use of TPMs remains important in at least some creative industries and that Canada has international obligations in the matter. However, it agrees that the circumvention of TPMs should be allowed for non-infringing purposes, especially given the fact that the Nintendo case provided such a broad interpretation of TPMs. In other words, while anti-circumvention rules should suppose the use of TPMs to enable the remuneration of rights-holders and prevent copyright infringement, they should generally not prevent someone from committing an act otherwise authorized by the Act. The committee therefore recommends:
Recommendation 19
That the Government of Canada examine measures to modernize copyright policy with digital technologies affecting Canadians and Canadian Institutions, including the relevance of technological protection measures within copyright law, notable to facilitate the maintenance, repair or adaptation of a lawfully-acquired device for non-infringing purposes.
“password”is and what it was in this case: thus, there was no expert evidence led by either party on what, in this case, constitutes the TPM. The Act requires that the TPM be
“effective”(in French,
“efficacement”). The absence of evidence may well be significant if the facts of this case require an understanding of what a
“password”is. What appears clear, however, is that there was no
“hacking”, whatever that may mean from a technical standpoint. In the context of this case, it is taken as meaning that the password was not discovered by force, whether that be by trial and error or otherwise.
“effective”; the qualifier does not apply only to the technology. If there were to be any ambiguity in the English version, the uncertainty is removed in the French version. (…) The English structure may leave the impression that only the technology must be effective as the qualifier
“effective”may be associated with technology only. Not so in the French version. The equivalent of “effective”(“efficacement”) is found in paragraphs (a) and (b) of the definition and it is made clear that it is the controlling of the access to a work or the restricting of the use with respect to a work that must be “effective” (“efficacement”), whether the measure is technology, device or component.”
2. Rights Management Information
Image by Michael Sauers (2007). Image obtained through Creative Commons Attribution-ShareAlike 4.0 Licence (CC-BY-SA 4.0).
In very general terms, rights management information (“RMI”) is information which identifies the author, performer, performance, producer as well as any information about the terms and conditions of use of the work. Common parlance used to describe RMI is metadata, and in the context of RMI, metadata is normally provided for distinct aspects of works:
(1) Descriptive Metadata
Descriptive metadata identifies the performer, author, producer or a particular copy of a recording. This metadata assists in enabling search functionality, recommendations and in the context of audio recordings (for example) may assist in providing recommendations to users or playlist creation.
(2) Ownership Metadata
Ownership metadata signifies the ownership structure of the various rights in a work or performance (e.g., copyright, performance right, broadcast rights, etc). This metadata assists in (for example) facilitating online sales and public performances.
(3) Permissions Metadata
Permissions metadata is data determining the terms of use of the work or performance. Permissions metadata is particularly important in the context of larger digital rights management (“DRM”) structures, where works or performances in the digital environment are only accessible upon the verification of the correct permissions. It should also be noted, however, that permissions metadata is not always restrictive in nature. Creative Commons, for example, utilises permissions metadata to facilitate precisely the opposite effect of restricted use and DRM.
The Act defines “rights management information” as:
…information that
(a) is attached to or embodied in a copy of a work, a performer’s performance fixed in a sound recording or a sound recording, or appears in connection with its communication to the public by telecommunication; and
(b) identifies or permits the identification of the work or its author, the performance or its performer, the sound recording or its maker or the holder of any rights in the work, the performance or the sound recording, or concerns the terms or conditions of the work’s, performance’s or sound recording’s use.
This is a quite broad definition of what RMI is, or could be. Ostensibly, RMI can extend to many different types of works and for many different purposes. To assist in better understanding it, below is an example of a practical application:
Example: Watermarked digital photograph in .jpeg format
Imagine a photograph of the Weldon Law building at the Schulich School of Law taken by a Halifax photographer on a scenic Winter morning. The photographer, Justine Hilfield, places a watermarked image on the bottom right hand corner of the photograph which shows her initials and personal logo. Justine’s image is captured in RAW format on her Canon EOS 70D camera and converted into a .jpeg image for sharing on the internet. The .jpeg file includes the date and time that the photograph was taken, the model of Justine’s Canon camera (EOS 70D), Justine’s name and the geo-location of where it was taken.
In other words, RMI is the information attached to the work which assists in tracking authorship, ownership and facilitating monetisation of the work. In the example above, Justine has a vested interest in ensuring that the RMI attached to her photograph remains in tact so that she can be properly attributed as its author and collect remuneration through royalties for its use. In more commercialised works, RMI may be interpreted by larger systems and databases for the purposes of monetisation. For this reason, the Act protects RMI and imposes a prohibition for removing or altering it. Notably at section 41.22, the Act states:
Therefore, section 41.22(1) makes it clear that removal of RMI is prohibited where doing so would clearly prejudice the rightsowners interests. The Act then grants copyright owners quite broad remedies to enforce protections for their RMI at section 41.22(2):
Therefore, TPMs and RMI share some similarities. They are aspects or components of works (or the manner in which they are distributed) which recieve standalone protection. Tampering or removing them can be subject to sanctions under the Act that are independent from the act of infringement. Both TPMs and RMI are generally regarded as tools for copyright owners to not only assist in the enforcement of infringement, but to ensure more direct control over remuneration and use by others.
J. Collective Administration of Rights
Role and Function of CMOs
As demonstrated in the above section on Economic Rights, the many rights included under the copyright umbrella can be complex and overlapping. For many creators, the management of these rights through individual contracts and licensing can be complex, time consuming and inefficiencies. In economic terms, we refer to these hurdles as “transaction costs”. Many authors, performers, producers and other creators choose to instead work with collective rights management organisations (“CMOs”) to facilitate rights clearance and remuneration with those who are interested in making use of their works. CMOs then are able to act as a single (or among only a few) points of contact with potential licensees of copyright works. By holding vast collections of works under their repertoire, CMOs negotiate on behalf of authors, artists and creators.
For the most part, CMOs are not-for-profit organisations that operate in both the public and private spheres. At the very general level, CMOs ordinarily focus on distinct economic rights under copyright (e.g., mechanical reproduction of music versus performance rights). There are also myriad approaches to how CMOs are governed and organised with respect to their relationship to artists. Some are purely voluntary and contractual as between artists and the CMOs, while others are statutory and mandatory in nature. Regardless of the terms under which they exist, CMOs play an incredibly significant role in the overall copyright system. They are key players in the negotiation and monetisation of various economic rights. In practical terms, much of what is capable of remuneration in creative industries is monetised through some sort of CMO structure.
2. Collective Rights Management Organisations
The story of collective administration of copyright in Canada begins in the early 20th century. Canada’s first domestic copyright legislation was the Copyright Act, 1921, S.C. 1921, c. 24, which followed the British Copyright Act, 1911 (U.K.), 1 & 2 Geo. 5, c. 46. The 1921 Act did not provide for the collective administration of copyright. The first regime regulating any form of collective society in Canada was created in the 1930s in response to the emergence of early performing rights societies, who had acquired control of the vast majority of popular musical and dramatico-musical compositions and were therefore able to exercise monopolistic power
CMOs are defined as “collective societies” under the Act at section 2, which provides:
collective society means a society, association or corporation that carries on the business of collective administration of copyright or of the remuneration right conferred by section 19 or 81 for the benefit of those who, by assignment, grant of licence, appointment of it as their agent or otherwise, authorize it to act on their behalf in relation to that collective administration, and
(a) operates a licensing scheme, applicable in relation to a repertoire of works, performer’s performances, sound recordings or communication signals of more than one author, performer, sound recording maker or broadcaster, pursuant to which the society, association or corporation sets out classes of uses that it agrees to authorize under this Act, and the royalties and terms and conditions on which it agrees to authorize those classes of uses, or
(b) carries on the business of collecting and distributing royalties or levies payable under this Act in relation to a repertoire of works, performer’s performances, sound recordings or communication signals of more than one author, performer, sound recording maker or broadcaster…
The distinction between mandatory and voluntary collective management under the Act can be sometimes unclear. In simple terms, sections 19 and 25 of the Act provide a right of remuneration for performers. Collective management of this right is not voluntary, and is administered in Canada by Re:Sound. All other remuneration rights are administered by CMOs voluntarily under the Act. Several copyright collecting societies administer the rights of collective copyright owners in Canada, particularly in relation to performance rights, reprography rights, and mechanical reproduction rights. Some examples of copyright collecting societies include the Canadian Screenwriters Collection Society (CSCS), Society of Composers, Authors and Music Publishers of Canada (SOCAN) and Access Copyright, the Canadian Copyright Licensing Agency. Collecting societies essentially act as umbrellas for groups of copyright holders with similar types of works within the same industry to administer, grant permission for the use, and set the conditions for the use of the rights of their protected member’s copyrights.
Copyright Board of Canada – Role and Function
The Copyright Board of Canada is a key player in the effective implementation of collective rights management. It is a statutory body which regulates the collective management of copyright. The gradual expansion of the collective administration regime over time has been to protect creators, who experienced difficulties asserting their rights amidst technological change. Creators were interested in acting collectively but were concerned that without regulation and protection from prosecution for conspiracy, new collective societies would run into competition law problems.
The Copyright Board was created in 1989 as a replacement to the 1935 Copyright Appeal Board. Amendments to the Copyright Act then significantly expanded the Board’s mandate and responsibilities in 1997 via Bill C-32. The Copyright Modernization Act (Bill C-11) in 2012 then added new rights and exceptions to the Copyright Board’s authority. The Copyright Board states its duties are, “to render fair, equitable and timely decisions that require dealing with increasingly complex legal and economic issues. Its decisions must be based on solid legal and economic principles, reflect a solid understanding of constantly evolving business models and technologies, and be fair and equitable to both copyright owners and users.” Decisions of the board are not appealable but are subject to judicial review.
The structure of the Board is addressed at sections 66 of the Act. It consists of five members who act in an adjudicative capacity.
In essence, the Board approves tariffs set by CMOs for the purpose of establishing royalties for the rights that the CMO administers. The Board also has the power to designate a CMO as the “sole collective society” authorized to collect all royalties for sound recordings of musical works. The Act also gives the Board the power to oversee and supervise licensing agreements between CMOs and end users.
The Board’s most recent tariff structure can be found on the Board’s website. This includes both the current “certified” tariffs and the proposed tariffs which will be implemented some time later. Upon review of these tariffs, you will notice that they are not up to date. The structure of the Board’s review process creates this shortcoming, and ostensibly the Board’s tariffs are perpetually “out of date”. This stands in contrast to other jurisdictions which ensure that tariffs reflect current rates. The result is that in Canada, many artists will not receive remuneration from their CMO until the tariffs are updated by the Board some years later. This constant need for reconciliation of the Board’s rates has deleterious effects on artists, who may as a result wait for years before royalty payments are made to them.