The Supreme Court of Canada recently released judgment on a copyright case that may have introduced a new test for copyright infringement in Canada. Arguably, the majority decision also heralds an increased level of recognition of the property rights of purchasers of copyrighted material.
In Théberge v. Galerie d’Art du Petit Champlain inc. ("Théberge"), the issue revolved around an interlocutory order granted to the respondent Théberge for the seizure before judgment of certain canvas-backed reproductions embodying his works. Théberge is a painter of international stature, who assigned to a publisher the right to publish reproductions of certain of his works.
The appellants were a number of art galleries, that purchased cards, photolithographs and posters from the publisher and subsequently transferred the images contained thereon to canvas, using a transfer process that lifted the ink from the original document and transferred it to a canvas, leaving the original document blank.
Displeased with this action, Théberge applied for an injunction, accounting and damages against the appellants in the Quebec Superior Court. The artist also sought and obtained, on an interlocutory basis, a writ of seizure before judgment.
Under the Act, "infringing", in relation to a work, is defined as "any copy, including any colourable copy, made or dealt with in contravention of this Act". Generally, the copyright owner has the right "to produce or reproduce the work … in any material form whatever".
The appellants applied to quash the seizure. Concluding that transferring an authorized paper reproduction onto canvas did not amount to infringement within the meaning of the Act, the Superior Court granted the appellants’ request. However, on appeal to the Quebec Court of Appeal, the seizure was restored with regard to the canvas-backed reproductions.
The Supreme Court of Canada, in a 4-3 decision, again quashed the seizure. Mr. Justice Binnie, speaking for the majority, characterized Théberge’s claim of infringement as a colourable attempt to appropriate the Act’s economic remedies in order to extend his moral rights, which are given a circumscribed scope under the Act.
Going to the merits of the case, Mr. Justice Binnie concluded that the concept of "reproduction" is usually defined as the act of producing additional or new copies of the work in any material form. There must be multiplication of the copies to have reproduction. In the ink transfer method, there is no multiplication of copies as the paper poster from which the ink is taken is left blank. Nevertheless, His Lordship took pains not to foreclose the possibility that a change of substrate might amount to reproduction, if part of a more extensive set of changes.
Under this definition, there was no reproduction by the appellants, thus there was no infringement, and consequently, no basis upon which to deem the canvas-backed reproductions to be the property of the respondent pursuant to s. 38(1) of the Act.
In dissent, Gonthier J. concluded that the respondent had expressly confined the assigned rights to producing reproductions of his works on paper, and thus retained all rights to produce reproductions in any other medium whatsoever. Accordingly, in transferring authorized reproductions of his works onto canvas, the appellants "produce[d] or reproduce[d] [these] work[s] or any substantial part thereof in any material form whatever", contrary to s. 3(1) of the Act.
In summary, the test for copyright infringement in Canada now appears to incorporate a requirement that the works be multiplied in number. It will be interesting to see how the Courts grapple with this new requirement.
Steven B. Garland is a partner & Dennis S.K. Leung is an associate with Smart & Biggar / Fetherstonhaugh in Ottawa.
Smart & Biggar is Canada’s largest firm practising exclusively in intellectual property and technology law. With offices in Ottawa, Toronto, Montreal, Vancouver and Edmonton, we offer a full range of intellectual property and technology law services. Related to Fetherstonhaugh through common partners, offices and personnel, we have a national and international reputation for the quality of our work and the calibre of our professionals.
The content of this article does not constitute legal advice and should not be relied on in that way. Specific advice should be sought about your specific circumstances.
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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