Canadian Copyright Law Q&A – Part 3

This is the last in a series of Q&A posts with Graham Reynolds, a Canadian copyright scholar from Schulich School of Law at Dalhousie University in Halifax, Nova Scotia, Canada. The Q&A focuses on Bill C-11, which went into effect near the end of 2012 and made some significant changes to Canada’s Copyright Act, some of which influence the way fanworks are treated under Canadian law. The first post, in which Graham answered questions about the general contours of the law and about the law of “fair dealing”, is available here. The second post, in which Graham answered questions about the probable effect of the law on fanfiction, fanart, and fanvids, is available here.

Today, Graham addresses Canadian “moral rights,” trade-mark rights, and rights of personality; and what the new law means for fanwork creators outside of Canada. Graham explains that creators of noncommercial fanworks may face challenges under Canada’s moral rights law, which encompasses rights to integrity and attribution. Creators of non-commercial fanworks are less likely to face problems from Canadian trade-mark laws, but the answer regarding rights of personality is more complicated. Graham also explains that the law may have some impact on fans who are located outside Canada, because the law applies to some Internet activities.

As before, these answers aren’t legal advice, and if you need specific legal advice Graham (and we) advise you to consult with a lawyer and/or send a query to the OTW Legal Committee.

7. Now that this law has taken effect, what should non-commercial fanwork creators in Canada know about “moral rights”?

“Moral rights” are protected in Canada under the Copyright Act (see, in particular, ss. 14.1, 14.2, 17.1, 17.2, 28.1, 28.2). Bill C-11 expanded moral rights protection under the Copyright Act by granting performers moral rights in their performances. Moral rights in Canada cannot be assigned (ss. 14.1(2), 17.1(2)). They last for the same term as the period of copyright in the relevant copyrighted expression (ss. 14.2(1), 17.2(1)) (generally the life of the author plus fifty years for works, and fifty years for performers’ performances).

Two primary moral rights are protected under the Copyright Act: the right of integrity (s. 28.2) and the right of attribution (ss. 14.1, 17.1). The right of integrity bars the distortion, mutilation, or modification of a work, or the use of a work in association with a product, service, cause, or institution, when that use or distortion would harm the creator’s honour or reputation. The right of attribution concerns the right of a creator to be associated with his or her work.

Section 28.2 of the Copyright Act sets out the circumstances in which the right of integrity will be infringed:

28.2 (1) 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.

(2) In the case of a painting, sculpture or engraving, the prejudice referred to in subsection (1) shall be deemed to have occurred as a result of any distortion, mutilation or other modification of the work.

(3) 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.

Thus, fanworks that distort, mutilate, or otherwise modify a work or performance, or fanworks that associate works or performances with products, services, causes, or institutions, may run afoul of Canada’s moral rights laws if they harm the author’s or performer’s honour or reputation. Canadian courts have indicated that the test for whether a distortion, mutilation, or modification is prejudicial to the author or performer’s honour or reputation is subjective-objective (see, for instance, Prise de Parole Inc. v. Guérin, Éditeur Ltée, (1995) 66 C.P.R. (3d) 257). That is to say, the author or performer has to believe that the distortion, etc. is prejudicial to their honour or reputation. This subjective belief must be supported by objective criteria.

The moral right of attribution gives authors and performers the right, “where [or if it is] reasonable in the circumstances, to be associated with the work [or with the performance] as its author [or as its performer] by name or under a pseudonym and the right to remain anonymous” (ss. 14.1(1) and 17.1(1), combined).

8. Now that this law has taken effect, do non-commercial fanwork creators have to think about non-copyright doctrines like trade-mark law and misappropriation of personality?

Canadian courts have interpreted the Trade-marks Act, R.S.C., 1985, c. T-13 as indicating that in order to infringe a trade-mark under ss. 19, 20, and 22 of the Act, there must be an “element of commercial use” (see, for instance, British Columbia Automobile Assn. v. Office and Professional Employees’ International Union, Local 378, 2001 BCSC 156, at para. 152). On the basis of these decisions, it would appear that the creation of non-commercial fanwork would not infringe these sections of the Trade-marks Act (although questions could be raised as to what constitutes “commercial use”).

Many registered trade-marks, however, are also protected by copyright. Unlike Canadian trade-mark law, the fact that a use of a copyrighted work is non-commercial is not, in itself, a defence to copyright infringement in Canada.

Canadian courts have articulated a common law tort of misappropriation of personality. The case that has discussed this tort in the most depth is Gould Estate v. Stoddart Publishing Co. (1996), 30 O.R. (3d) 520 (Ontario Court of Justice, Lederman J.) (Gould affirmed on other grounds by the Court of Appeal for Ontario ((1998), 39 O.R. (3d) 545); application for leave to appeal to the SCC dismissed ((1998) S.C.C.A. No. 373)).

In Gould, Lederman J. discussed the need to “[place] limits on the tort of appropriation of personality” due, in part, to freedom of expression considerations (para. 18). Lederman J. stated that:

“In the end then, and perhaps at the risk of oversimplifying, it seems that the courts have drawn a ‘sales vs. subject’ distinction. Sales constitute commercial exploitation and invoke the tort of appropriation of personality. The identity of the celebrity is merely being used in some fashion. The activity cannot be said to be about the celebrity. This is in contrast to situations in which the celebrity is the actual subject of the work or enterprise, with biographies perhaps being the clearest example. These activities would not be within the ambit of the tort. To take a more concrete example, in endorsement situations, posters and board games, the essence of the activity is not the celebrity. It is the use of some attributes of the celebrity for another purpose. Biographies, other books, plays, and satirical skits are by their nature different. The subject of the activity is the celebrity and the work is an attempt to provide some insights about that celebrity.”

Given this statement, there is a strong likelihood that non-commercial fanwork creators seeking to include (or feature) celebrities in their works would be seen by a Canadian court as falling on the “subject” side of the sales vs. subject distinction described by Lederman J.

However, several Canadian provinces (British Columbia, Saskatchewan, Manitoba, and Newfoundland and Labrador) have passed privacy acts that provide varying degrees of protection for personality rights. Québec also provides protection for personality rights through the Civil Code of Québec. Creators of non-commercial fanwork seeking to include or feature individuals, living or dead, in their works may wish to consult these acts.

9. What does this law mean for people who live outside of Canada?

Copyright laws are national in scope (although their development and interpretation may be informed by international treaties and legislation and case law from other jurisdictions). Canada’s Copyright Act governs copyright-related matters in Canada. As a result, it has a particular relevance to people who live inside Canada (and who engage on a regular basis with copyrighted works).

For people that live outside of Canada, however, the Canadian Copyright Act is still relevant in several ways. For instance, works created in countries other than Canada are protected by copyright in Canada provided certain conditions are satisfied (see Copyright Act, s. 5). Individuals who create fanwork in countries other than Canada may want to consult the Canadian Copyright Act to find out the scope of their rights in Canada.

Another instance where Canadian copyright laws may be relevant for individuals who live outside of Canada relates to online communications. In Society of Composers, Authors and Music Publishers of Canada v. Canadian Assn. of Internet Providers, 2004 SCC 45, Binnie J., writing for the majority of the SCC, stated that the Copyright Act applies to international Internet transmissions provided that there is a “real and substantial connection to Canada” (60). Binnie J. states that:

61 In terms of the Internet, relevant connecting factors would include the situs of the content provider, the host server, the intermediaries and the end user. The weight to be given to any particular factor will vary with the circumstances and the nature of the dispute.

63 Generally speaking, this Court has recognized, as a sufficient “connection” for taking jurisdiction, situations where Canada is the country of transmission (Libman, supra) or the country of reception (Liberty Net, supra). This jurisdictional posture is consistent with international copyright practice.

It is therefore possible (although perhaps unlikely) that an individual living outside of Canada could be sued in Canada for copyright infringement (based on Canada’s Copyright Act) with respect to acts committed outside of Canada.

We hope you’ve enjoyed this foray into Canadian law. For the text of the new law, see Bill C-11. For the full text of the Copyright Act, as amended, see the Canadian Copyright Act. If you find yourself in need of fanwork-related legal advice, feel free to contact the OTW Legal Committee.