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 Whether published or unpublished, popular or unpopular, beautiful or ugly, copyright protection arises as soon as an original work is created.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 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.

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.

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.

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 . 

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.

Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations (1961)

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.

Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired or Otherwise Print Disabled (2013)

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.

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.

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:

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:

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).

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.

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:

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.

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:

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.

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.]

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:

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:

“[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”.

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:

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:

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?

* * *

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.

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.

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.

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:

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:

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.

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.

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 pubic 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”.

‘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.

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.

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.

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.

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:

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.

 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.

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:

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:

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.

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:

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:

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:

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

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)”.

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).

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.

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:

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).

(3) “Amount of the dealing“

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.

(5) “Nature of the work“

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:

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:

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:

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:

The operative provision for the perceptual disabilities provision in the Act is found at section 32, which states (in part):

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:

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:

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, but the Federal Court’s 2017 decision in Nintendo v King:

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:

2. Rights Management Information

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:

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:

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:

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. Examples of voluntary CMOs include SOCAN and Access Copyright.

Pursuant to s. 70.12, a collective society operating in the general regime may, “for the purpose of setting out by licence the royalties and terms and conditions relating to classes of uses”, either (a) file a proposed tariff with the Board or (b) enter into agreements with users. A collective society that chooses to file a proposed tariff does so under s. 70.13, which permits it to “file with the Board a proposed tariff . . . of royalties to be collected by the collective society for issuing licences”.

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 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.

When a collective society files a proposed tariff with the Board, s. 70.15(1) requires the Board to “certify the tariffs as approved, with such alterations to the royalties and to the terms and conditions related thereto as the Board considers necessary, having regard to any objections to the tariffs”. The Board’s power to modify and approve a collective society’s proposed tariff is one of three sources of the Board’s supervisory and price-setting authority over a collective society’s royalties in the general regime. The Board may also fix royalties when a collective society and individual user are unable to agree on terms and one party applies to the Board (ss. 70.2 to 70.4), or alter royalties if the parties make an agreement without Board intervention that is then filed with the Board (ss. 70.5 to 70.6).

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.