Nichols v. Universal Pictures Corp, (2d Cir. 1930), CB II page 102
Facts:
Ptf authored play. Dft produced movie which ptf alleges was taken from play.
Both the play and the movie are about the relationship btwn a Jewish and an Irish family [primarily the fathers and their children].
Issue: Copyright infringement?
Held: No.
Ratio:
Dft’s play is too unlike the ptf’s to be an infringement
Copyright is not limited literally to the text [= literal appropriation is not the test – minor variations isn’t a defense]
When plagiarist takes out a block [e.g. a scene] – issue is whether the part taken is ‘substantial’
When plagiarist takes an abstract of the whole, the decision is more troublesome.
Upon any work, and especially upon a play, a great number of patterns of increasing generality will fit equally well, as more and more of the incident is left out….there is a point in this series of abstractions where they are no longer protected, since otherwise the playwright could prevent the use of his ‘ideas,’ to which, apart from their expression his property is never extended. Line between ideas and expression: nobody has ever been able to fix that boundary, and nobody ever can.
Plays at bar – both as to incident (plot) and character, the dft took no more than the law allowed. Though the ptf discovered the popularity of a certain theme, that theme was too generalized an abstraction from what she wrote. It was only a part of her ideas. Characters – dft and ptf’s Jewish man and Irish man are very different.
A comedy based upon conflicts between Irish and Jews, into which the marriage of their children enters, is no more susceptible of copyright than the outline of Romeo and Juliet.
We assume that ptf’s play is altogether original…but her copyright did not cover everything that might be drawn from her play; its content went to some extent into the public domain. We have to decide how much, and while we are as aware as any one that the line, wherever it is drawn, will seem arbitrary, that is no excuse for not drawing it.
POINT: Famous “abstractions” test is used. Upon any work, patterns of increasing generality can be superimposed. Mere abstractions or generalities are ideas, and will not be protected by copyright. The line btwn these ideas and the more specific expression in which they are embodied is difficult to draw.
A work in its entirety may be original, but the CR in that work will not protect everything that can be drawn from it – some will be left in the public domain.
Drassinower, “A Rights-Based View of the Idea/Expression Dichotomy…”
Drassinower, “A Rights-Based View of the Idea/Expression Dichotomy in Copyright Law”, CB II p. 106
Introduces two competing views of CR: natural rights vs. instrumentalist; i.e. CR law as vindication of the author’s natural right to the products of her labour vs. CR law as statutory instrument designed to balance incentives necessary for the author’s productivity with the public interest in access to and dissemination of her products. Author’s legal entitlement is but a function of the public interest. Latter view dominant in North America.
Formulates a rights-based account of the idea/expression dichotomy in order to show that a rights-based justification is consistent with an account of the public domain (there is widespread assumption that they are incompatible)
Draws distinction btwn external and internal (or inherent) modes of limiting the author’s right. Seeks to establish that rights-based account generates inherent or internal limits on author’s right (though not incompatible with external limits).
He summarizes his general view at p. 18 (114 CB): The law of CR formulates the acquisition of the author’s right in terms of the author’s labour. Doctrine of originality – author’s labour of origination is a pre-req of CR protection. While author acquires CR in and through labour, the law of CR does NOT formulate either the subject matter or the scope of the author’s right in terms of the category of labour. The idea/expression dichotomy is the paradigmatic example of the basic and fundamental proposition that law of CR does not protect the author’s labour per se. All that is copyrightable originates in the author’s labour but not everything originating in the author’s labour is subject to CR protection. Idea/expression dichotomy differentiates the domain of the author’s CR (expression) out of the author’s labour (idea and expression). WHY? B/c of equality of the parties to a copyright action as authors. While the ptf’s authorship is recognized in the requirement that the dft not copy her expression, the possibility of the defendant’s authorship is preserved and recognized in the free availability of the ideas expressed.
Copyright of ideas amounts to denial of dft’s authorship. Dfts unauthorized copying of ptf’s expression amounts to denial of ptf’s authorship. The public domain is the domain of the dft’s authorship. To recognize the public domain is to recognize the dft’s dignity as an author. Public domain is not externally imposed, but rather is constitutive of authorial right. Rights based view justifies the public domain on the basis that it is essential to the equality of authors.
POINT: A rights-based view of copyright (i.e. CR as vindication of the author’s natural right to the products of her labour) is consistent with an account of the public domain, and thus the idea-expression dichotomy which functions to preserve that domain. The domain of an author’s CR is inherently limited by the rights of other authors to engage in their craft. Cannot create w/o public domain therefore w/o a public domain, authors’ rights would be undermined.
Rosen, “Reconsidering the Idea/Expression Dichotomy”
Rosen, “Reconsidering the Idea/Expression Dichotomy”, CB II p. 116
Idea/expression dichotomy is central to CR law but is very unclear
Nature of the distinction, not just the location of the line between them, is highly obscure. Unclear what constitutes an idea or an expression and also, how we distinguish between them.
What is purpose of CR law? strike balance btwn ensuring that creators are justly rewarded, and encouraging progress of arts for benefit of public. American approach more strongly utilitarian – the “reward” is only a means to promote creativity; not a justification in and of itself. Purpose of the idea/expression dichotomy is to advance the purpose of copyright by promoting this balance – by drawing line btwn ideas and expression, we establish a private domain (reward for authors) and a public domain (from which others can draw to create new works = progress)
Rosen canvasses case law to identify the various meanings which have been attributed to idea/expression dichotomy. He discards three of them b/c they do not advance the purpose of CR: style/content; fixed ideas/unfixed ideas, ideas/language.
General vs. Specific ideas: this last meaning effectively serves the purpose that idea/expression dichotomy is supposed to promote.
Appears in Nichols as the “abstractions test”: there is an indefinitely large range of possible ideas of ever increasing specificity which can be overlaid upon a work. At some point in this range, idea is distinguishable from expression.
This test suggests that there is no “dichotomy” at all; rather there is a continuum leading from most general idea to most specific. The court draws the line wherever it chooses, and presumably at the place it decides is the most conducive to promoting the purposes of copyright law. There is no objectively identifiable line btwn idea and expression; it is arbitrary and conventional but as a result can be used as means to accomplish the “balancing act” (rewards vs. progress).
As a guide to courts/commentators draw the “line” where it is most convenient and in such a way as to promote purposes of copyright law:
encourage free-flow of ideas for the benefit of the public;
ensure sufficient incentives for continued creativity.
These aims can be accomplished by distinguishing btwn “ideas” and their “expression” on the basis of whether an idea is:
Very general; susceptible to further dvlpt in ways that are likely to be of benefit to the public such that should remain in public domain. [Very specific idea – more likely it is nearing the point at which creative potential is exhausted; therefore won’t be of much good in the public domain]
Already highly developed likely that significant amount of effort went into defining and developing the idea therefore should reward the author. This will also provide incentives for further creativity b/c authors know that they will be rewarded with property right where they expend much effort to develop and refine an idea.
Rosen also comments briefly on the merger doctrine (if there is only one or a handful of ways to express an idea, the idea and expression merge and there will be no CR). Merger doctrine ignores the fact that there are many ideas (on continuum of generality) underlying a work. Merger doctrine supports whichever conclusion a judge wishes to endorse, b/c he can choose the “idea” which is most specific, thus limiting the possible ways of expressing the idea.
Feist Publications v. Rural Telephone Services
Feist Publications v. Rural Telephone Services (1991) U.S.S.C., CB II p. 32 Facts:
Ptf Rural provides telephone service to communities in Kansas. It is required by state regulations to publish white pages and yellow pages phone directories.
Dft Feist is a publishing co. that specializes in area-wide phone directories. Feist obtained most of the listings for its directory by approaching each of the phone companies operating in NW Kansas and offering to pay for right to use listings. Rural refused to license its listings to Feist. Feist then used them w/o Rural’s permission.
Rural sued for CR infringement.
Issue: Did Feist infringe Rural’s CR in the phone book? [What is the standard for originality]
Held: No. Standard for creativity is minimal creative effort; for directories –
Ratio:
Facts are not copyrightable but compilations may be
Basis of this distinction is requirement of originality
Sina qua non of copyright is originality – a work will only qualify for CR protection if it is original to the author. Originality is a constitutional requirement which has its roots in the notion of authorship and writings [before “original authorship” was made explicit in the Copyright Act]
Standard of originality: a work must be original to the author (i.e. independently created by him and not copied), and must possess at least a minimal degree of creativity, some creative spark “no matter how crude, humble or obvious it might be”. Originality does not signify novelty.
Copyright will only extend to those components of a work that are original to the author.
Facts are not copyrightable b/c they do not originate from the author [SH: what about ideas?]
Requirement of originality mandates the distinction btwn fact (idea?) and expression – no one may claim originality as to facts b/c facts do not owe their origin to an act of authorship. Facts are discovered from the world, not created by the author.
Requirement of originality and distinction btwn idea/expression which flows from it is tied to the primary objective of CR
May seem unfair not to protect series of facts which a person/co. has gone to great effort and expense to compile (reaping and sowing argument). But the primary objective of CR is not to reward the labour of authors but rather “to promote the Progress of Science and useful Arts.” To this end, CR assures authors the right to their original expression but encourages others to build freely upon the ideas and information conveyed by the work.
The former “sweat of the brow” or “industriousness” doctrine is inconsistent with this objective b/c resulted in extension of CR protection to facts and ideas [SH: thus stripping the public domain and hindering progress]
Factual compilation will not be protectable by CR unless the facts are selected, coordinated or arranged in such a way as to render the work as a whole original
Tripartite structure of a protectable compilation: (1) collection and assembly of pre-existing material, facts or data; (2) selection, coordination or arrangement of those materials; and (3) the creation, by virtue of the particular selection, coordination or arrangement of an “original” work of authorship.
Selection and arrangement of facts need not be novel but must be made independently (w/o copying) and display some minimal level of creativity.
Application of law to Facts
To establish infringement, must show (1) ownership of valid CR; (2) copying of constituent elements of the work that are original
(1) is not at issue here
(2) Feist did not copy anything that was “original” to Rural. (a) The data in the book doesn’t owe its origin to Rural. (b) The facts in the compilation were not selected, coordinated or arranged in an original way. While facts need not be presented in an innovative and surprising way, arrangement cannot be so mechanical or routine as to require no creativity whatsoever. Arrangement was alphabetically by surname – the end product is a garden-variety white pages directory, devoid of even the slightest trace of creativity. Alpha arrangement is not only unoriginal, it is practically inevitable. Moreover, Rural did not truly “select” the names to be published – regulations required them to publish all names.
Tele-Direct v. American Business Information
Tele-Direct (Publications) v. American Business Information, [1998] F.C.A., CB II p. 43 Facts:
Aplt claims CR in respect of the organization of the subscriber information received in a disorganized state from Bell Canada and in respect of the collection of additional data such as fax numbers, trade-marks and number of years in operation which the aplt itself obtains from Bell’s customers.
1993 Amendments to the Copyright Act (pursuant to NAFTA) modified “works” to include compilations [and compilations of data more specifically]
Def’n of “compilation” must be interpreted in relation to the context in which it was introduced [Berne Convention, NAFTA]
Such interpretation suggests that compilations of data are to be measured by standards of intellect and creativity. The selection or arrangement of data only results in a protected compilation if the end result qualifies as an original intellectual creation.
Correct approach to decision as to whether CR subsists (i.e. whether original) – look at whole, not at fragments
Courts should not determine whether copied fragments are original but rather should decide whether work as a whole is original and then inquire whether the part taken by the dft is substantial. Whether or not the fragment taken is original may go to substantiality [recall that whether substantial part depends much more on quality than on quantity of what was taken]
This case is unusual in that the “whole” work at issue is actually a fragment of a larger work [i.e. only work at issue is compilation of in-column listings]
The test of originality
For a compilation of data to be original, it must be a work that was independently created by the author and which displays at least a minimal degree of skill, judgment and labour in its overall selection or arrangement. The threshold is low, but it does exist.
It is doubtful that considerable LABOUR combined with a negligible degree of skill and judgment will be sufficient in most situations to make a compilation of data original. [i.e. reject sweat of brow doctrine]
This test is linked to the objective of CR law: IP law must strike a balance btwn protecting the new products of inventive labour and allowing these to be freely available so as to form the basis for future progress
The compilation of in-column listings is of such an obvious and commonplace character as to be unworthy of CR protection. Certain compilations of routine data are so mechanical as to be devoid of a creative element.
Notes (SH):
Note that trial judge suggests that weight can be given to American decisions given the context in which “compilations” was added to the Cdn Copyright Act. Later in the judgment, she refers to a quote from Feist and writes “these words, in my view, could have been said in a Cdn context”. However, her test does not explicitly make reference to an element of minimal creativity or “creative spark” as per Feist.
CCH v. Law Society of Upper Canada (S.C.C.)
CCH Canadian Ltd. v. Law Society of Upper Canada, [2004] S.C.C., loose-leaf Facts:
CCH produces legal materials. Law Society operates Great Hall Library at Osgoode. Upon request from lawyers, etc. Law Society will photocopy and fax or send legal materials from the collection (“custom photocopy service”. Law society also provides free-standing photocopiers in the library.
CCH asserts that copyright subsists in their material [headnotes, case summaries, judicial decisions, consolidated topical index] and that Law Society infringes those rights through its custom photocopying service and by making free-standing photocopiers available in the Library.
Issues:
Are the publishers’ materials “original works” protected by CR?
Did the Library authorize infringement by maintaining self-service photocopiers?
Were the Law Society’s dealings with the works “fair dealing[s]” under S. 29 CA?
Did Law Society’s fax transmissions constitute “communications to the public” w/in s. 3(1)(f) CA?
Did Law Society infringe by selling copies of the publisher’s works contrary to s. 27(2)?
Does Law Society qualify for an exemption as a “library…” under s. 30.2(1) CA.
Lametti cites the context in which the justice situates the decision – balancing.
CR protects the expression of ideas, and not the ideas themselves, even if they are original.
Test for originality
S. 5 CA – CR subsists in every “original…work” – originality requirement applies to the expressive element of the work and not the idea. Two competing views on meaning of original “sweat of brow”/industriousness [originates and is more than a mere copy] – premised on Lockian theory of just deserts vs. creative spark (Feist, Tele-Direct).
The correct position falls between these extremes. Work is original where it originates from the author, is not a mere copy, and is the product of the exercise of skill and judgment that is not trivial (i.e. not a purely mechanical exercise). Need not be novel or unique. [Not creativity, but some intellectual effort]. Skill = use of one’s knowledge, developed aptitude or practiced ability in producing the work. Judgment = 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 standard is based on a number of factors:
Plain meaning of “original” suggests at least some intellectual effort
History of CR: idea of “intellectual creation” is central to the Berne Convention which served as precursor to CA
Recent Jurisprudence: court in Feist recognized that “sweat of the brow” doctrine eschewed the most fundamental axiom of CR law – no one may CR facts or ideas. Extends CR too far
Purpose of the CR Act: A “sweat of the brow” standard tips the scale in favour of the author’s rights, at the loss of society’s interest in maintaining a robust public domain that could help foster future creative innovation. Requirement of skill and judgment prevents overcompensation of author
Workable, yet fair standard: creativity standard is too high; implies that something must be novel or non-obvious, the patent law standard.
Court applies standard to headnotes, case summary, topical index and reported judicial decisions – all demonstrate exercise of skill and judgment (e.g. in choosing which portions to extract, which decisions belong in index, etc.). Judicial decisions themselves are not original works however; the minor changes and additions made are too trivial to warrant CR protection.
Authorization – the self service photocopiers
s. 27(1) – infringement of CR to do anything that Act only allows owners to do (including authorizing the exercise of his or her own rights). No infringement where authorize a person to do something that wouldn’t constitute CR infringement.
“Authorize” – give approval to, sanction, permit, favour, encourage. Person doesn’t authorize infringement by authorizing the mere use of equipment that could be used to infringe CR. Presumption – person who authorizes activity does so only so far as it is in accordance with the law. Presumption may be rebutted if it is shown that certain relationship or degree of control existed btwn the alleged authorizer and the persons committing the infringement.
Law society did not authorize infringement: (1) no evidence that photocopiers were used to infringe; (2) posting of notice (i.e. we are not responsible for CR infringement) doesn’t rebut the presumption; (3) law society lacks sufficient control to permit conclusion that it approved the infringement.
The Law Society and Fair Dealing
Fair dealing exemptions generally: fair dealing is more than a defense; it is a user’s right. Dealing was fair under s. 29 where (1) dealing was for purpose of research or prvt study and (2) dealing was fair
Research: must be given large and liberal interpretation; not limited to commercial or private contexts; lawyers carrying on business of law for profit are conducting research w/in meaning of s. 29.
Fair:
Purpose of the dealing: will be fair if it is for allowable purpose under CA. Generally less fair if for commercial purposes.
Amount of dealing: consider amount of dealing and importance of work allegedly infringed; fair amt may depend on purpose – copy entire article for study or research but not appropriate to include a full work in a critique.
Alternatives to the dealing: was the dealing reasonably necessary to achieve the ultimate purpose?
Nature of the Work: dealing more fair if work not published (b/c leads to wider dissemination of work); less fair if work confidential
Effect of dealing on the work: is reproduced work likely to compete with the market of the original work.
Law society need not show that every patron uses the material in a fair dealing manner; can rely on its general practice to establish fair dealing as “dealing” connotes a practice or a system, and not individual acts. In this case, photocopying case is not research in and of itself, but is necessary and integral part of the research process. Dealings were also fair (upon consideration of above factors). [Note that the Court relied a lot on the Library’s Access to the law policy, pursuant to which librarians were very careful to review the purposes of each request to ensure they were for purposes of research. Court also focused on the importance of access to legal documents – in the public interest – as well as the fact that many lawyers outside TO had no alternative source for legal reserach].
Fax transmissions were not communications to the public
Point to point fax is not communication to public. Series of repeated transmissions to numerous recipients might be.
Secondary infringement (by selling copy of work one knows or ought to know infringes copyright) requires primary infringement which was not shown.
CCH Canadian v. Law Society of Upper Canada (Fed. C.A.)
CCH Canadian v. Law Society of Upper Canada, [2002] Fed C.A., CB II page 52 Facts
CCH produces legal materials. Law Society operates Great Hall Library at Osgoode. Upon request from lawyers, etc. Law Society will photocopy and fax or send legal materials from the collection. Law society also provides free-standing photocopiers in the library.
CCH asserts that copyright subsists in their material [headnotes, case summaries, judicial decisions, consolidated topical index] and that Law Society infringes those rights through its custom photocopying service and by making free-standing photocopiers available in the Library.
Issues:
Does copyright subsist in the Publisher’s works?
Did the law society infringe copyright in the Publishers’ works?
Do any exemptions or defences apply to the law society [fair dealing, allowable purposes, fairness, library exemptions]
Purpose of Cdn copyright law – to benefit authors by granting them a monopoly for a ltd time, and at same time to encourage the disclosure of works for the benefit of society at large. i.e. dissemination of works + guarantee sufficient incentives to produce new and original works. [Reaping and sowing: “person who sows must be allowed to reap what is sown, but the harvest must ensure that society is not denied some benefit from the crops]
Does copyright subsist in the publishers’ works?
Standard of Originality
S. 5(1) CA sets out precondition for subsistence of CR work must be original.
Trial judge said that “imagination or creative spark” was necessary to finding of originality. This court rejects that holding.
Classic Anglo-Canadian precondition to CR: work must be independently produced and not copied. Production of such a work will require effort that it is often referred to as skill, judgment or labour [other possible “ingredients” of originality offered by courts ‘work’, ‘industry’, ‘effort’, ‘taste’, ‘discretion’. No requirement of “imagination and creative spark”. Trial judge mistakenly adopted this American threshold for CR protection [Feist, Bender]. [**Note that court here cites a number of articles which speak to possible (negative) implications of Feist decision and notes that there have been efforts in the U.S. to repeal the effect of it].
Applying std. of originality to compilations: selection and arrangements of underlying elements, but not the elements themselves, must be original.
Note that originality standard is low and doesn’t take into consideration the quality, style, novelty, imagination, ingenuity, beauty, brilliance, etc. of the work.
Why does court reject a higher “imagination”/”creativity” standard? Impossible to define objectively and coherently – will result in substantial uncertainty and will jeapordize public benefit that results from production of new works. What about fears of overprotection? CR monopolies better controlled through legislative avenues than through imposition of subjective judicial standard of “creative spark” or “imagination”. Also – low threshold for originality is counter-balanced by fair interpretation of user rights [fair dealing]
The Publishers’ works
Court must first decide whether the “works” at issue are independent works or parts of other works [i.e. necessitating a substantiality analysis]. Test:if production is distinctive and reasonably able to stand alone – it is a work. If production is dependent upon surrounding materials such that meaning/utility largely disappears when taken apart from context in which it is disseminated – part of work.
Reported Judicial Decisions
Literary independent works [useful in and of themselves].
Arrangement of decision and selection of which pieces of information to include [i.e. indexing, running heads, other enhancements and lists of additional data] are original [skill, judgment and labour have been invested]. No evidence that info/data/arrangement/etc. was consequence of necessity.
While CR may subsist in original compilation of unoriginal material [such as this], easier to demonstrate originality in compilation that includes substantial independently composed features. This work does have such features [case summaries and catchlines]
Headnotes
Independent works b/c capable of standing apart from judicial reasons they accompany – useful w/ or w/o full reasons for judgment.. Original work – thus qualifies for independent copyright protection.
Case Summary
Topical Index
Monograph
[Court decides that latter three are original independent works]
[SH: one relevant Q Could this information have been expressed in other ways? If yes, then original expression]
Did Law Society Infringe CR in the Publishers’ Works?
S. 27(1) CA: infringement for any person to do, w/o consent of CR owner, anything that only CR owner has the right to do.
S. 3(1) CA: CR = sole right to reproduce the work or any substantial part thereof; sole right to communicate the work to the public by telecommunication; sole right to authorize any such acts.
S. 27(2) CA Secondary Infringement: infringement for any person to sell or rent, distribute, possess for purpose of selling, renting or distributing a copy of a work that the person knows or should have known infringes CR.
Reproduction of a work or a substantial part thereof
Photocopy constitutes a reproduction
Work vs. substantial part thereof: this determination is not purely quantitative. Small # of very impt pages may be substantial while larger # of unimportant pages may be insubstantial. E.g. brief headnote may be substantial while entire set of [edited] reasons may not be.
Communication to the public be telecommunication
Single communication emanating from single point and intended to be received at a single point is typically not a communication to the public. To be to the public – must be aimed or targeted to an aggregation of individuals [more than a single person but not necessarily the whole public at large]
Dft’s acts in this case [i.e. faxing requests, merely making the works available through the photo-copying service] did not constitute communication to the public
Authorization
General rule: in order to authorize an act that only the CR owner has the right to do, one must do more than merely provide the means with which to carry out the protected act. Dft must sanction, approve or countenance the actual act. Ultimately a test of CONTROL.
This case: LS implicitly sanctions, approves or countenances its patrons to “produce or reproduce” materials in the Library by providing photocopiers and a vast collection of ptf’s works together in an environment they control. LS acknowledges that photocopiers may be used illegitimately but has taken no steps to monitor, police, dissuade patrons from copying
Secondary Infringement
Q of liability for secondary infringement is impossible to decide. Judge refuses to decide on knowledge requirement [i.e. whether a reasonable but mistaken belief that the copies do not infringe copyright (e.g. reasonable belief that fair dealing exemptions apply) is sufficient to deny liability for secondary infringement].
Fair Dealing
Prima facie infringement [i.e. above] but no liability if fair dealing pursuant to S. 29 CA. [SH: court is confused whether fair dealing = no infringement or defense but says finally that “any act falling within the fair dealing exemptions is not an infringement of copyright.”]
Allowable purposes
Research or private study (S. 29 CA) [others not relevant here – criticism, review and news reporting]. Research cannot be commercial (for profit). Study must be private [e.g. prof cannot copy for distribution to class]
Categories of allowable purposes closed [unlike USA]. Once determine allowable purpose – must look at fairness of dealing
Can Library be exempted for fair dealing of its patrons? YES 2 possible ways: (1) Library’s only aim and design is to assist library users with research – can thus be said to have adopted that purpose as their own; (2) Library exemptions in S. 30.2(1).
Fairness
How to determine whether dealing is FAIR? Court adopts non-exhaustive list from American copyright statute. Emphasize that elements of fairness are malleable – must be tailored to facts and contacts. None is conclusive; may be ad. factors
Purpose of the Dealing – in Canada, list of allowable purposes is closed. W/in allowable purposes may be varying degree of fairness [e.g. philanthropic research vs. commercial research]
Character of the Dealing – e.g. more fair to copy one work for single requester than entire works for widespread telecommunication
Amount of the Dealing – must be substantial part of work in order to be prima facie infringement BUT one may fairly deal with a substantial part of a work w/o infringing copyright [e.g. look at number and types of requests made by patrons]. QUANTITATIVE AND QUALITATIVE.
Alternatives to the Dealing – consider whether material is reasonably available elsewhere or whether the publishers have an effective monopoly.
Nature of the Work – in the public interest? [e.g. news, legal publications]
Effect of the Dealing on the Work – significant/important factor. Consider the degree to which the market for the reproduced work has been diminished. [Were copies incorporated into a competing work for e.g.?]
Access to the Law Policy
Court cannot conclude that all of the Library’s activities fall under fair dealing exemption, even though it is clear that Library is acting in GF. Even if most requesters are dealing fairly with requested material, may be some who misrepresent the purpose of the request, falsely indicating that it is for an allowable purpose.
Relief: no permanent injunction granted. Only declaration that CR subsists in Publishers’ materials at issue and that Law Society has infringed CR in the works that were reproduced. Due to variability of purposes and fairness of Law Society’s dealing, cannot universally determine whether or not the fair dealing exemptions will apply to the Law Society in the future.
[Rothstein, J.A., on the issue of Secondary Infringement]:
Notes:
Theberge v. Galerie d’Art du Petit Champlain
Theberge v. Galerie d’Art du Petit Champlain, [2002] S.C.C., CB I page 304 Facts:
Aplts purchased Theberge painting. Theberge authorized aplt to reproduce the work, and K stipulated maximum # of reproductions for certain purposes [cards, stationary, posters, etc.]
Aplt transferred some of these authorized reproductions from paper substrate [i.e. the poster] to a canvas substrate for purposes of resale. Canvas version sold at significantly higher price than did poster.
Rspdt arranged to have the bailiff seize canvas-backed reproductions from the aplts without ever satisfying a judge that the aplts had violated the Copyright Act.
Issue:Did the aplts, by transferring the work from paper to canvas, “copy” the respondent’s works? [Extent to which an artist, utilizing the rights and remedies provided by the CA Act, can control the eventual use or display of an authorized reproduction of his or her own work in the hands of a third party purchaser].
Held: No. Appeal allowed.
Ratio:
CR subsists in rspdt’s work [original artistic work]
If modification of posters is to give rise to any legitimate objection on the part of the artist, it must be as a result of the violation of his “moral rights” to the integrity of his work. CR Act provides rspdt with both economic and “moral” rights to his work. Cdn copyright law has traditionally been more concerned with economic than moral rights. Econ rights based on a conception of artistic and literary works as articles of commerce [thus, owner of CR need not be author of the work]. Moral rights descend from the civil law tradition and treat the artist’s work as an extension of his or her personality, possessing a dignity, which is deserving of protection. They are not assignable. CR Act [S. 28.2(1)] provides that integrity of the work is infringed only if the work is modified to the prejudice of the honour or reputation of the author.
Dissent proposes that transfer of ink from one substrate to another is a violation of the rspdt’s s. 3(1) [economic] right to “produce or reproduce the work…in any material form whatever”. Majority rejects this interpretation of the s. 3(1) economic rights, as it tilts the balance in favour of the CR holder and insufficiently recognizes the proprietary rights of the aplts in the physical posters which they purchased. Adoption of this expanded interpretation would introduce the civiliste conception of “droit de destination” into our law w/o any basis in the CA Act and blur the distinction btwn economic and moral rights imposed by Parliament.
Binnie addresses each of these issues in turn:
balance btwn econ interest of CR holder and proprietary interest of purchasing public would be altered to the public’s detriment
proposed test would depart from general principle that breach of CR requires copying
there was no reproduction “in substantial part”
…
proposed test would undermine the distinction btwn moral rights and economic rights contrary to legislative intent
droit de destination would be introduced into our law w/o any basis in the CR Act – droit de destination = right to control to a considerable extent the use that is made of authorized copies of his or her work.
Proposed test would conflict with precedent from other comparable jurisdictions
Notes
Rogers v. Koons
Rogers v. Koons, (2d Cir. 1992), CB II page 133
Facts:
Rogers took photograph of couple holding a litter of puppies. Notecard version of the picture was produced and sold.
Koons, a well-known sculptor, bought a “Puppies” note card, ripped off the copyright mark and instructed his artisans to make a wood sculpture of the image appearing thereon. The sculpture was created for an exhibition that Koons called the “Banality Show”
District court held that Koons copied “Puppies” and that this copying was not a fair use. [=Copyright infringement]
Issue: Did Koons copy “Puppies”? If yes, was the copying a “fair use”?
Held: Yes. No.
Ratio:
To establish CR infringement, ptf must show ownership of a copyright and that dft copied the protected material w/o authorization
Ownership of copyright: copyright protection only extends to those components of the work that are original to the creator. Necessary originality need only be modest. In this case, Rogers’ inventive efforts in posing the subjects, taking the picture and printing “Puppies” suffices to meet the original work of art criteria.
Unauthorized copying by Koons:
No reasonable juror could find that copying did not occur in this case – there is direct evidence of copying
Even if such direct evidence were not available, reasonable jurors would find that Koons’ work is substantially similar. Test for substantial similarity: doesn’t require literal identical copying of every detail ORDINARY OBSERVER TEST [whether an average lay observer would recognize the alleged copy as having been appropriated from the copyrighted work] must look at similarity of EXPRESSION of facts, ideas and concepts and not similarity of facts, ideas, concepts themselves.
Where substantial similarity is found, small changes here and there are unavailing.
The Fair Use Doctrine
Equitable doctrine which permits other people to use copyrighted material w/o the owner’s consent in a reasonable manner for certain purposes. How to determine whether a use is “fair”? non-exhaustive list of factors
Purpose and character of the use
Asks whether the original was copied in good faith to benefit the public or primarily for the commercial interests of the infringer.
Copies made for commercial or profit-making purposes are presumptively unfair. Crux of profit/non-profit distinction whether the user stands to profit from exploitation of the copyrighted material w/o paying the customary price.
Parody or satire as fair use: a comment or criticism of a work might be a fair use. Parody/satire = one artist, for comic effect or social commentary, closely imitates the style of another artist and in so doing creates a new art work that makes ridiculous the style and expression of the original. Parody entitles its creator under FUD to more extensive use of copied work than is ordinarily allowed under the substantial similarity test.
The copied work must be an object of the parody. The audience must be aware that underlying the parody, there is an original and separate expression, attributable to a different artist.
This case – Koons’ copying was in BF [he ripped off the copyright mark], was primarily done for profit-making motives, and did not constitute a parody of the original work [b/c sought to make general social commentary rather than call attention to the copied work]
Nature of the copyrighted work
Consider: whether original is factual or fictional [factual = scope of fair use is broader]; whether the original is creative, imaginative or represents an investment of time in anticipation of a financial return.
Amount and substantiality of work used
Similar to substantially similar inquiry – how much of the expression (as opposed to the factual content) has been copied?
SH: seems that acceptable degree of copying depends upon nature of the original and the copy. [e.g. Heightened tolerance under a parody defense].
This case – the photo was copied in toto, much more than would have been necessary even if the sculpture was a parody of the photo.
Effect of the use on the market value of the original
Central, most important fair-use factor
Must strike balance btwn benefit gained by copyright owner when copying is found an unfair use and benefit gained by public when use is held to be fair. Less adverse impact on owner = less public benefit need be shown to sustain non-commercial fair use. Where use is intended for commercial gain, some meaningful likelihood of future harm is presumed [as in this case – Koons produced sculpture as high-priced art].
Consider harm to market for original photograph and to market for derivative works here both will be harmed [another sculptor might not buy rights; “String of Puppies” notecards would prejudice market for sale of “Puppies” notecards].
Notes:
M. Spence, “Intellectual Property and the Problem of Parody”
Parodist is both creator and user. Good parody is both original and parasitic
What is parody? no stable understanding of the term exists, though Spence formulates a general def’n: imitation of a text for the purpose of commenting, usually humorously, upon either that text or something else.
Parodist may be at risk of liability under CR, moral rights, passing off, TMs, and design law
Copyright: only entitled to use idea of original work and cannot use substantial part of work itself. Fair dealing exemptions exist (for criticism and review) but “sufficient acknowledgement” is required (often a problem wrt parodies)
Moral rights: false attribution; derogatory treatment
Passing off: i.e. passing off the parody as a product of, or associated with, the creator of the parodied text (in this article, “text” includes images, symbols, etc.)
Trademarks: dilution doesn’t depend on proof of customer confusion.
Should parody be afforded special treatment under the law? If so, in what form? Spence outlines four arguments for privileging parody in law of IP. Rejects the first three and favours the fourth (free speech)
Parody as distinctive genre: justifies special treatment of parody per-se (i.e. rather than special treatment of broader category of which parody is a part). Rejects this argument b/c (1) no consensus as to what constitutes parody therefore how can we recognize it as a distinctive category?; (2) Unclear what makes parody so special (i.e. as opposed to other works which are based on uses of existing texts [such as adaptation of prose into dramatic form]
Parody as a problem of market failure: it is assumed that licensing will ensure the most efficient use of works; but creators may not license to parodists even though parody is a socially desirable use (won’t license b/c are concerned about reputation). This argument only works if we assume that purpose of CR law is to foster creation and dissemination of texts (and that more texts is always better) – this argument would not, for example, justify special treatment of parody under law of moral rights.
Parody as a problem of transformative use: Transformative use is one that constitutes creative work in its own right (SH: originality threshold!), notwithstanding its dependence on the protected text; a use that does not constitute a market substitute for the text. 2 arguments why shouldn’t constitute infringement: (1) allowing them furthers goal of production and dissemination of texts; (2) necessary for preservation of certain types of artistic discourse. Note that this underlies the fair use analysis in the U.S. – nature of work (transformative nature of work is important) and whether use gives rise to market harm are both important considerations. Spence rejects this argument at 606-607. Much of what underlies the argument is free speech.
Parody as a problem of free speech: Must law give special treatment to parody in order to protect the parodists right to free speech? Some argue that IP is not inconsistent with protection of free speech Effect of idea/expression dichotomy is to protect free speech (i.e. reserve a public domain); recognition of IP rights is necessary to give effect to free speech b/c creates conditions favourable to discourse. Spence, however, identifies two situations in which free speech and IP rights are not compatible:
Where necessary to draw on a text in order to comment on it
Where text protected by IP right has become shorthand for a range of meanings for which no adequate alternative means of expression exists (related to generics in TMs)
Parody provides good examples of the conflict that can arise between IP and free speech (i.e. such that finding parody to be an infringement = violating right to free speech). Target parodies exemplify conflict in a. above, while weapon parodies exemplify conflict in b.
Spence proposes that it is in b. that we must be more cautious about interfering with IP rights. IP rights are truly rights to prevent appropriation – use of work as in b. = appropriation of the type that IP law is designed to prevent. IP rights are not rights against unfair criticism – use as in a. = appropriation is merely ancillary. Also, prioritizing free speech in b. is a real threat to the autonomy of the creator and his free speech. Respect for the autonomy of the creator, and perhaps also respect for his right to freedom of speech, must give him some right to be identified with and even to control the use of his text as speech.
Some modest proposals for protecting parody: Spence makes three proposals, but rejects the first two:
Protect all parodies from liability as infringements (some countries do this)
General provisions which limit IP rights whenever they are incompatible with free speech – problem with this is that it is not always clear that rights in free speech should prevail.
Interpret the existing IP statutes as compatible with the right to free speech and keep that right in view when fashioning remedies.
