ARTICLE
15 April 2024

"Poppy Puppy" Appeal Dismissed – Where Useful Articles Are Involved, The "Right To Attribution" May Not Be

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Bereskin & Parr LLP

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Bereskin & Parr LLP is a leading Canadian full service intellectual property law firm serving clients across all industries around the world. The firm services clients in every aspect of patent, trademark and copyright law, IP litigation and Regulatory, Advertising & Marketing.
The Canadian Copyright Act, R.S.C. 1985, c. C-42 provides authors with two types of moral rights: integrity and attribution (the right to be associated with the work or to remain anonymous).
Canada Intellectual Property
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The Canadian Copyright Act, R.S.C. 1985, c. C-42 provides authors with two types of moral rights: integrity and attribution (the right to be associated with the work or to remain anonymous). However, where the claimed infringement relates to a useful article, the Federal Court of Appeal's recent decision in French v. The Royal Canadian Legion (Dominion Command), 2024 FCA 63, suggests that the interplay of sections 64(2) of the Copyright Act—which excuses infringement in useful articles produced in a quantity of more than 50 in certain circumstances—and section 14.1(1)—which establishes moral rights—may, in effect, preclude a claimant from asserting infringement in their moral right of association in such useful articles. In finding for the Respondent, the Royal Canadian Legion, the Federal Court of Appeal concluded that if the useful article at issue was reproduced, section 64(2)(d) functioned to excuse the infringement of the moral rights; alternatively, if there was no reproduction, there was no infringement of the moral rights of attribution in the first place.

Both moral rights and section 64 of the Copyright Act are seldom before the courts. In French, the Federal Court of Appeal recognized that "there is little jurisprudence concerning section 64(2) and nothing directly on the point in dispute in this appeal". The decision provides useful guidance on the meaning and effect of section 64(2). However, it also raises questions about potential gaps in protections for commercially successful artists under the Copyright Act where the moral right to attribution is involved.

Background

Section 64(2) deems there to be no copyright or moral rights infringement where a useful article is produced in a quantity of more than 50 and the defending party has reproduced the design of the article (by making it or making a drawing or other reproduction), or has done with that article, drawing or reproduction, anything that that the copyright owner has the sole right to do with the copyright-protected design or artistic work. Section 14.1(1) predicates the moral right to attribution on "an act mentioned in section 3"—i.e., rights of reproduction, performance, or publication. The appeal in French focused on the intersection of moral rights and the scope of section 64(2) of the Copyright Act.

In the underlying action, the Plaintiff, Mr. French, claimed both copyright and moral rights infringements in respect of a plush toy called the "Poppy Puppy" that he designed and created, and which was marketed and sold by the Defendants, the Royal Canadian Legion. The dispute centered around the Legion's catalogue, which, from 2004 onward, advertised the toy as "developed by the Legion" without reference to Mr. French. It was unclear on the record whether the Defendant actually produced any new copies of the Poppy Puppy after 2004 or was simply continuing to sell the 150,000 toys originally obtained from Mr. French in 2003. In any event, the lower Court found that the Poppy Puppy was a useful article produced in a quantity of more than 50 and was not a representation of a real or fictitious being applied to an article as a feature of shape, configuration, pattern, or ornament (but rather was the useful article itself, a "toy"). Consequently, any actions relating to its reproduction fell within the ambit of section 64(2) and were thus deemed to not infringe. The lower Court also found that the limitation period expired for the copyright claim and it was thus statute-barred (although the conduct giving rise to the moral rights claim was considered "ongoing" and thus the moral rights claim was not statute-barred) A brief summary of the lower Court's decision was included in our article 2023 Year in Review: Canadian Copyright.

Mr. French did not appeal the Court's dismissal of the copyright infringement claim.

The Appellate Decision

The appeal was limited to the issue of moral rights infringement (the Appellate Court dismissed an argument that the design at issue was not the Poppy Puppy, but rather the pattern of poppies applied to it, which, if accepted, would have moved the Legion's activities outside section 64(2), in part because the argument was not raised in the court below). Justice Locke, writing for a unanimous three-judge panel, considered the scope of section 64(2) as it applied to moral rights infringements.

As a first step, the Appellate Court looked to the wording of section 64(2) and considered the limits of the deemed non-infringement provided under that section. It found that while section 64(2) did have limits, the language of the section did not limit the scope of the deemed non-infringement to specific activities associated with the asserted copyrighted design as applied to the useful article as a feature of shape, configuration, pattern, or ornament. Nor did it require a reproduction of the article to be triggered. Justice Locke observed that such limitations could lead to absurd results, namely that a party who infringed both copyright (e.g., through a reproduction) and moral rights (e.g., through misattribution) could benefit from the deemed non-infringement under 64(2), but that a party that infringed only moral rights would fall outside the section and be liable for infringement. Consequently, the wording of section 64(2) on its own did not fully answer the question of that section's limits for the Appellate Court, and particularly, limits in respect of moral rights.

To understand the limits intended by Parliament to be placed on 64(2) as it relates to moral rights, Justice Locke examined section 14.1(1) of the Copyright Act, which establishes "moral rights" in a work. That section provides for two rights — integrity and association:

14.1 (1) The author of a work has, subject to section 28.2, the right to the integrity of the work and, in connection with an act mentioned in section 3, the right, where reasonable in the circumstances, to be associated with the work as its author by name or under a pseudonym and the right to remain anonymous.

As noted by Justice Locke, the moral right of association is linked to acts implicating the copyright in the work [i.e., the right cannot be engaged unless an impugned act resulting in the mis-association is one mentioned in section 3 (reproduction, publication, or performance)]. Justice Locke reasoned that the limited scope of the right of association contemplated in section 14.1(1) meant that if there was no reproduction (or other act that would engage a right under section 3 of the Act), then the Respondent's activities could not constitute moral rights infringement in respect of attribution, to begin with.

Accordingly, the Appellate Court concluded that whether or not there was a reproduction, the Legion's act of misattribution was not actionable—either there was no moral rights infringement because there was no reproduction (and thus the right under section 14.1(1) was not triggered), or, if the Respondent's false statement of authorship was associated with a reproduction of the Poppy Puppy, the moral rights infringement would have been excused as a deemed non-infringement under section 64(2).

Implications

Toy creators and designers of "useful articles" in particular should take note of the French decisions, as the Federal Court's finding that the Poppy Puppy had a "functional and practical use" and was "not a representation of a fictitious being applied to an article as a feature of shape, configuration, pattern or ornament" was left undisturbed by the Federal Court of Appeal.

More generally, the reasons in French suggest that where a legitimately obtained copy of a work is modified to remove the artist's name, or falsely attribute the work to someone else, the author may have no recourse vis-a-vis the moral right of attribution because there is no reproduction. Likewise, if the work is a useful object reproduced in a quantity that is more than 50, the artist may have no recourse in respect of unauthorized reproductions that fail to attribute the work to them (or misattribute it to a third party), because section 64(2) could operate to deem that reproduction a "non-infringement". Although attempting to avoid an absurd result, the Federal Court of Appeal's approach in French may well have created a situation where commercially successful artists are precluded from recourse in respect of their moral right of attribution when their work is a useful article produced in a quantity of more than 50. This is of particular concern in light of Justice Binnie's comments in Théberge v. Galerie d'Art du Petit Champlain inc., 2002 SCC 34, that "Parliament intended modification without reproduction to be dealt with under the provisions dealing with moral rights" (at para 60). It suggests that where misattribution (or removal of attribution) is at issue, an artist may need to now argue that such act engage the other moral right, that of integrity, as this right is not predicated on reproduction.

In any event, artists of designs applied to useful articles as a feature of shape, configuration, pattern, or ornament (or of artistic works from which useful articles are derived), including toys, would be well advised to consider all potential avenues under the Copyright Act and other heads of intellectual property, such as trademark rights, when seeking remedies from third parties that remove the artist's name from their work or misattribute authorship.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

ARTICLE
15 April 2024

"Poppy Puppy" Appeal Dismissed – Where Useful Articles Are Involved, The "Right To Attribution" May Not Be

Canada Intellectual Property

Contributor

Bereskin & Parr LLP is a leading Canadian full service intellectual property law firm serving clients across all industries around the world. The firm services clients in every aspect of patent, trademark and copyright law, IP litigation and Regulatory, Advertising & Marketing.
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