@MincovLaw
MincovLaw
AndreiMincovThéberge v. Galerie d’Art du Petit Champlain inc.
Supreme Court of Canada
DOCKET: 27872
The judgment of McLachlin C.J. and Iacobucci, Major and Binnie JJ. was delivered by Binnie J.
1 We are required in this appeal to determine the extent to which an artist, utilizing the statutory rights and remedies provided by the Copyright Act, R.S.C. 1985, c. C-42, can control the eventual use or display of an authorized reproduction of his or her work in the hands of a third party purchaser.
2 Claude Théberge, a well-established Canadian painter with an international reputation, seeks to stop the appellants, who amongst other things produce poster art, from transferring authorized reproductions of his artistic works from a paper substrate (or support) to a canvas substrate for purposes of resale. In my opinion, for the reasons which follow, the appellants did not thereby “copy” the respondent’s artistic works. They purchased lawfully reproduced posters of his paintings and used a chemical process that allowed them to lift the ink layer from the paper (leaving it blank) and to display it on canvas. They were within their rights to do so as owners of the physical posters (which lawfully incorporated the copyrighted expression). At the end of the day, no new reproductions of the respondent’s works were brought into existence. Nor, in my view, was there production (or reproduction) of a new artistic work “in any material form” within the meaning of s. 3(1) of the Copyright Act. What began as a poster, authorized by the respondent, remained a poster.
3 Nevertheless, on August 19, 1999, the respondent arranged to have the bailiff seize canvas-backed reproductions from the appellants without ever satisfying a judge that the appellants had violated the Copyright Act. Although seizure before judgment is designed purely as a conservation measure divorced from the merits of the case, the appellants claim that the seizure of their inventory caused them a significant loss, both in sales and reputation. The respondent has not proceeded with his action on the merits since the date of the seizure two and a half years ago.
4 I find myself in respectful disagreement with the conclusion of my colleague Gonthier J. In my view, the seizure was not authorized by the Copyright Act. The pre-judgment seizure provisions of art. 734 of the Quebec Code of Civil Procedure, R.S.Q., c. C-25, were thus not an available remedy. The seizure was therefore wrongful. I would allow the appeal.
I. The Nature of Copyright
5 Copyright in this country is a creature of statute and the rights and remedies it provides are exhaustive: Compo Co. v. Blue Crest Music Inc., [1980] 1 S.C.R. 357, at p. 373; R. v. Stewart, [1988] 1 S.C.R. 963; Bishop v. Stevens, [1990] 2 S.C.R. 467, at p. 477.
6 This is not to say that Canadian copyright law lives in splendid isolation from the rest of the world. Canada has adhered to the Berne Convention for the Protection of Literary and Artistic Works (1886) and subsequent revisions and additions, and other international treaties on the subject including the Universal Copyright Convention (1952), Can. T.S. 1962 No. 13. In light of the globalization of the so-called “cultural industries”, it is desirable, within the limits permitted by our own legislation, to harmonize our interpretation of copyright protection with other like-minded jurisdictions. That being said, there are some continuing conceptual differences between the droit d’auteur of the continental civiliste tradition and the English copyright tradition, and these differences seem to lie at the root of the misunderstanding which gave rise to the present appeal.
7 I acknowledge, at the outset, that there is a significant difference in appearance between a paper-backed poster and a canvas-backed poster. The question is whether for present purposes creating this difference by mechanical transfer from one substrate or backing to another violates the Act. The respondent must find authority for the seizure in the Code of Civil Procedure read in light of the Copyright Act. If he cannot find authority in the legislation, then it does not exist and the seizure was wrongful.
II. The Respondent’s Copyright
8 The respondent easily meets the first hurdle, which is to satisfy the statutory requirements for a copyright. There is no doubt that his talent is embodied in artistic works of great originality. These works were protected by copyright from the moment of their expression, without any requirement of registration or other formality on his part. The protection extends not only to the original painting (“artistic work”) but also to subsequent copies which embody the work. The respondent is thus entitled to the full measure of protection the Act allows. The question, however, is whether he went too far in obtaining a seizure before judgment of works which he, necessarily viewing the matter in his own interest, found to be infringing.
9 In my view, with respect, my colleague Gonthier J. gives too little scope to the property rights of the purchaser who owns the poster, i.e., the physical object incorporating the copyrighted expression, and excessive rights to the artist who authorized the printing and sale of the poster purchased.
10 More specifically, I think that if modification of these posters were to give rise to any legitimate objection on the part of the artist, it must be as a result of violation of his “moral” right to the integrity of his work. In that regard, however, my colleague Gonthier J. and I are in agreement that seizure before trial is not a remedy available in an action based on the alleged breach of the artist’s “moral” right in a work.
III. The Content of the Respondent’s Rights Under the Copyright Act
11 The Act provides the respondent with both economic and “moral” rights to his work. The distinction between the two types of rights and their respective statutory remedies is crucial.
12 Generally speaking, Canadian copyright law has traditionally been more concerned with economic than moral rights. Our original Act, which came into force in 1924, substantially tracked the English Copyright Act, 1911 (U.K.), 1 & 2 Geo. 5, c. 46. The principal economic benefit to the artist or author was (and is) the “sole right to produce or reproduce the work or any substantial part thereof in any material form whatever” (s. 3(1)) for his or her life plus fifty years (s. 6). The economic rights are based on a conception of artistic and literary works essentially as articles of commerce. (Indeed, the initial Copyright Act, 1709 (U.K.), 8 Ann., c. 21, was passed to assuage the concerns of printers, not authors.) Consistently with this view, such rights can be bought and sold either wholly or partially, and either generally or subject to territorial limitations, and either for the whole term of the copyright or for any part thereof (s. 13(4)). The owner of the copyright, thus, can be, but need not be, the author of the work. It was the respondent’s economic rights in enumerated works that were the subject-matter of an assignment to two poster manufacturers, Éditions Galerie L’Imagerie É.G.I. Ltée (“É.G.I.”) by contract dated October 29, 1996, and New York Graphic Society, Ltd. by contract dated February 3, 1997.
13 We are told that all of the reproductions at issue here were printed by É.G.I., art. 19 of whose contract with the respondent provided that:
[translation] 19- Free use of the product.
The product is offered for sale without restriction as to use, i.e. it may be framed, laminated or combined with other products and such uses shall not be considered to have generated products or sub-products other than those provided for in this contract.
14 The appellants were not party to this contract, but I agree with my colleague Gonthier J. that its terms may nevertheless be relevant in determining to what extent the respondent assigned away his economic rights under the Copyright Act, and to what extent he still holds them. É.G.I., it is noted, is not a party to this proceeding. The only economic rights the respondent can assert under the Act are those rights that he has retained. Accepting, as I do, my colleague’s interpretation of the É.G.I. contract to the effect that the respondent (rather than É.G.I.) retained the right to bring this action, the respondent must still establish a breach by the appellants of s. 3(1) of the Act.
15 Moral rights, by contrast, descend from the civil law tradition. They adopt a more elevated and less dollars and cents view of the relationship between an artist and his or her work. They treat the artist’s ?uvre as an extension of his or her personality, possessing a dignity which is deserving of protection. They focus on the artist’s right (which by s. 14.1(2) is not assignable, though it may be waived) to protect throughout the duration of the economic rights (even where these have been assigned elsewhere) both the integrity of the work and his or her authorship of it (or anonymity, as the author wishes).
16 The civiliste tradition surfaced at an early date in this Court in Morang and Co. v. LeSueur (1911), 45 S.C.R. 95, where Fitzpatrick C.J. approached the interpretation of a contract between a publisher and the author of an unpublished work on William Lyon Mackenzie with the civil law notions of “droit moral” in mind, at pp. 97-98:
I cannot agree that the sale of the manuscript of a book is subject to the same rules as the sale of any other article of commerce, e.g., paper, grain or lumber. The vendor of such things loses all dominion over them when once the contract is executed and the purchaser may deal with the thing which he has purchased as he chooses. It is his to keep, to alienate or to destroy. But …[a]fter the author has parted with his pecuniary interest in the manuscript, he retains a species of personal or moral right in the product of his brain.
17 The important feature of moral rights in the present statute is that the integrity of the work is infringed only if the work is modified to the prejudice of the honour or reputation of the author (s. 28.2(1)). Given the importance of this condition in construing the scheme of the Act as a whole, I set out the relevant provisions:
|
28.2 (1) The author’s right to the integrity of a work is infringed only if the work is, to the prejudice of the honour or reputation of the author, (a) distorted, mutilated or otherwise modified; or (b) used in association with a product, service, cause or institution. |
28.2 (1) Il n’y a violation du droit à l’intégrité que si l’?uvre est, d’une manière préjudiciable à l’honneur ou à la réputation de l’auteur, déformée, mutilée ou autrement modifiée, ou utilisée en liaison avec un produit, une cause, un service ou une institution. |
|
(2) In the case of a painting, sculpture or engraving, the prejudice referred to in subsection (1) shall be deemed to have occurred as a result of any distortion, mutilation or other modification of the work. |
(2) Toute déformation, mutilation ou autre modification d’une peinture, d’une sculpture ou d’une gravure est réputée préjudiciable au sens du paragraphe (1). |
|
(3) For the purposes of this section, (a) a change in the location of a work, the physical means by which a work is exposed or the physical structure containing a work, or (b) steps taken in good faith to restore or preserve the work shall not, by that act alone, constitute a distortion, mutilation or other modification of the work. |
(3) Pour l’application du présent article, ne constitue pas nécessairement une déformation, mutilation ou autre modification de l’?uvre un changement de lieu, du cadre de son exposition ou de la structure qui la contient ou toute mesure de restauration ou de conservation prise de bonne foi. [Emphasis added.] |
Thus, in Snow v. The Eaton Centre Ltd. (1982), 70 C.P.R. (2d) 105 (Ont. H.C.), a sculptor successfully objected to the Eaton Centre festooning with Christmas ribbons his creation of a flight of 60 Canada geese that are forever poised to land inside the south entrance of a downtown shopping mall in Toronto. The artist’s counsel said, at p. 106, that his client:
…[was] adamant in his belief that his naturalistic composition has been made to look ridiculous by the addition of ribbons and suggests [that] it is not unlike dangling earrings from the Venus de Milo.
18 Thus, even though the flying geese had been sold and paid for, the artist was able to reach across the ownership divide to take action against a successor owner not for infringing his economic rights but for violating his moral rights, i.e., for perpetrating what both he and the judge regarded as an attack on the artistic integrity of the descending flock.
19 The evidence here suggests that, at least in some instances, the respondent’s name was deleted and was no longer on the posters when they were offered for resale. The respondent could have asserted a moral right to be publicly identified with his artistic work in this respect.
IV. The Respondent’s Complaint
20 The respondent made it clear in his evidence that his real complaint is more properly characterized as the alleged infringement of his “moral” rights and its potential impact on the market for his works.
[translation]
Q. Is it not true, Mr. Théberge, that your position is that the canvas-backed reproductions that are now being made of your works are unlawful because you do not authorize them and especially because you are not paid a royalty for each reproduction that is made?
A. I would never want a penny for those works. Do you know why? Shall I tell you why?
Q. Tell me why.
A. Because, first and foremost, it is once again a dilution of my work; it is an abusive commercialization of my work, without authorization; it is a manipulation of the work because, in many cases, my signature does not appear on the reproduction; it is an anonymization, if I can use that word without being scholarly. There is no Théberge on my work, it is not signed. Turn it around and there is nothing on the back. Where does it come from, who sells it? Not a word. These things are all over the place. And, furthermore, the final argument, Mr. Charia, is that clients and friends of mine call me, they won’t accept it anymore and they are asking me whether I am a party to the distribution of these things.
Q. So, is it ….
A. Being a party to the distribution of these things means that they assume that I hatched a plot in which I am a participant. I’m getting money, royalties or …that I make money off of it -- “otherwise, it’s just not possible. How can you allow such a thing, Mr. Théberge?” So there are clients who have originals, who have paid eight thousand dollars ($8,000), nine thousand dollars ($9,000) that they find reproduced on canvas all over, in slightly smaller or medium sizes, or depending on the size, and for forty dollars ($40), sixty dollars ($60), eighty dollars ($80) or one hundred and twenty dollars ($120)…. Me, Claude Théberge, the artist, I have nothing whatsoever to do with it, and want to put a stop to it. It’s just unreal. And especially, if I accepted money for that manoeuvre, I wouldn’t dare look myself in the mirror, Sir.
Q. So, this morning, it is your testimony, Mr. Théberge, that it is not a question of money ….
A. Absolutely not.
21 Apart from the complaint of non-attribution (which is a moral rights issue), it seems the respondent as an artist simply wishes to stop the appellants from catering to the market for canvas-backed reproductions that apparently exists. To do so, however, he must as a litigant demonstrate a statutory right that overrides what the owners of the authorized poster could otherwise do with their tangible property.
22 Moral rights act as a continuing restraint on what purchasers such as the appellants can do with a work once it passes from the author, but respect must be given to the limitations that are an essential part of the moral rights created by Parliament. Economic rights should not be read so broadly that they cover the same ground as the moral rights, making inoperative the limits Parliament has imposed on moral rights.
23 To the extent the respondent is suggesting that observers cannot tell the difference between the original painting and a poster reproduction on a canvas substrate, I think he perhaps does them all a disservice. In any event, he has enabled the appellants to do what they are doing by authorizing the creation of up to 10,000 paper-backed posters, some of which they have duly purchased on the open market.
V. Expansion of the Economic Right
24 My colleague, Gonthier J., proposes that we should treat the movement of the same physical layer of inks around different substrates as a violation of the respondent’s s. 3(1) right “to produce or reproduce the work …in any material form whatever”. More specifically, he identifies “fixation” as an act of reproduction, and therefore fixation of the ink layer to a new substrate as an infringement of copyright, at para. 147:
Fixation of the work in a new medium is therefore the fundamental element of the act of “reproduc(ing) …in any material form whatever”…. Reproducing a work therefore consists mainly of the subsequent non-original material fixation of a first original material fixation. [Emphasis in original.]
25 “Fixation” has a relatively well settled but rather different connotation in copyright law. It distinguishes works capable of being copyrighted from general ideas that are the common intellectual “property” of everyone:
Thus a copyright springs into existence as soon as the work is written down or otherwise recorded in some reasonably permanent form (“fixated”).
(H. Laddie et al., The Modern Law of Copyright and Designs (3rd ed. 2000), vol. 1, at para. 1.2)
26 My colleague proposes that the idea of “fixation” be carried forward into the physical composition of the work embodying the copyrighted expression, so that substitution of one backing for another constitutes a new “reproduction” that infringes the copyright holder’s rights even if the result is not prejudicial to his reputation.
27 On this view, it does not matter that the appellants were multiple offenders at “ink transfers” or that they were commercial entities participating in the resale market. The copyright infringement occurred at the moment of “reproduction” in each instance, and would have been similarly objectionable, according to my colleague’s approach, if done to a single copy by the individual appellant to hang in his own living-room.
28 In my view, with respect, this expansive reading of the s. 3(1) economic rights tilts the balance too far in favour of the copyright holder and insufficiently recognizes the proprietary rights of the appellants in the physical posters which they purchased. Adoption of this expanded interpretation would introduce the civiliste conception of “droit de destination” into our law without any basis in the Copyright Act itself, and blur the distinction between economic and moral rights imposed by Parliament.
29 I will address these issues in the following order:
(i) the present balance between the economic interest of the copyright holder and the proprietary interest of the purchasing public would be significantly altered to the public’s detriment;
(ii) the proposed test would depart from the general principle that breach of copyright requires copying;
(iii) there was no reproduction “in substantial part”;
(iv) the Quebec Court of Appeal test of “unanticipated market” similarly exceeds statutory copyright limits;
(v) the proposed test would undermine the distinction between moral rights and economic rights contrary to legislative intent;
(vi) a “droit de destination” would be introduced into our law without any basis in the Copyright Act;
(vii) the proposed test would conflict with precedent from other comparable jurisdictions;
(viii) The U.S. concept of a “recast, transformed, or adapted” derivative work would be introduced into our law without any legislative basis.
A. The Present Balance Between the Economic Interest of the Copyright Holder and the Proprietary Interest of the Purchasing Public Would be Significantly Altered to the Public’s Detriment
30 The Copyright Act is usually presented as 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 (or, more accurately, to prevent someone other than the creator from appropriating whatever benefits may be generated). The elements of this balance are discussed in more detail by J. S. McKeown, Fox Canadian Law of Copyright and Industrial Designs (3rd ed. 2000), at p. 3. See also D. Vaver, Intellectual Property Law: Copyright, Patents, Trade-marks (1997), at p. 22. This is not new. As early as 1769 it was said by an English judge:
It is wise in any state, to encourage letters, and the painful researches of learned men. The easiest and most equal way of doing it, is, by securing to them the property of their own works….
He who engages in a laborious work, (such, for instance, as Johnson’s Dictionary,) which may employ his whole life, will do it with more spirit, if, besides his own glory, he thinks it may be a provision for his family.
(Millar v. Taylor (1769), 4 Burr. 2303, 98 E.R. 201, per Willes J., at p. 218)
31 The proper balance among these and other public policy objectives lies not only in recognizing the creator’s rights but in giving due weight to their limited nature. In crassly economic terms it would be as inefficient to overcompensate artists and authors for the right of reproduction as it would be self-defeating to undercompensate them. Once an authorized copy of a work is sold to a member of the public, it is generally for the purchaser, not the author, to determine what happens to it.
32 Excessive control by holders of copyrights and other forms of intellectual property may unduly limit the ability of the public domain to incorporate and embellish creative innovation in the long-term interests of society as a whole, or create practical obstacles to proper utilization. This is reflected in the exceptions to copyright infringement enumerated in ss. 29 to 32.2, which seek to protect the public domain in traditional ways such as fair dealing for the purpose of criticism or review and to add new protections to reflect new technology, such as limited computer program reproduction and “ephemeral recordings” in connection with live performances.
33 This case demonstrates the basic economic conflict between the holder of the intellectual property in a work and the owner of the tangible property that embodies the copyrighted expressions.
34 To illustrate the level of intrusiveness that would result from my colleague’s interpretation, it is useful to describe in greater detail the process applied by the appellants.
35 The appellants purchased on the open market a quantity of posters of the respondent’s artistic works. They subjected these posters to a technique which involved spreading a special resin or laminating liquid across the face of a poster. The resin is designed to bond with the surface inks. After the applied coating is dried (or cured), the coated poster is submerged in a bath of solvent which loosens the paper substrate but leaves intact the fixed ink/resin layer, thus allowing the latter to be peeled off the former. The rear of the ink/resin layer is then coated with a suitable adhesive resin and transferred to a canvas substrate, which is then smoothed and finished.
36 It is not suggested that “reproduction” occurred when the resin was spread on the poster. This is part of the laminating process envisaged by the É.G.I. contract, and the respondent does not regard it as objectionable.
37 Did “reproduction” occur when the paper backing was peeled away? If the resulting film of inks had then been framed and suspended in front of a window like a piece of Tiffany glass, I would think the respondent could not complain. A purchaser has the right to cut up a poster into strips or divide it as he or she wishes. Division cannot logically be characterized as reproduction.
38 My colleague, Gonthier J., takes the position that if the image were transferred from one piece of paper to a different piece of paper with no other “change”, there is a new “fixation” and that would be “reproduction”. But in what way has the legitimate economic interest of the copyright holder been infringed? The process began with a single poster and ended with a single poster. The image “fixed” in ink is the subject-matter of the intellectual property and it was not reproduced. It was transferred from one display to another. It is difficult to envisage any intellectual content let alone intellectual property embodied in the piece of blank paper peeled away, or in the piece of blank paper substituted for it. When Raphaël’s Madonna di Foligno was lifted for preservation purposes from its original canvas in 1799 under the direction of the chemist Berthollet and fixed to a new canvas, the resulting work was considered to be no less an original Raphaël. Similarly, when the frescoes of Pompeii were restored by replacement of the underlying plaster, the result was not classified as a “reproduction”, even though the old plaster was a constituent physical element of the original frescoes. If a comparable copyright situation arose, I do not think the artist would (or should) have a veto over a purchaser’s attempt to preserve the asset. These examples may be more spectacular than the humble swap of substrates of a paper poster, but the principle is the same and applies equally to authorized copies as well as to the original artistic work. In neither case is there reproduction within the meaning of the Act.
39 The Quebec Court of Appeal adopted a more restricted view than does my colleague, suggesting that the violation of economic rights lay not simply in “fixation” but in moving the ink film from a paper substrate to a substrate of a more costly material, namely canvas ([2000] Q.J. No. 412 (QL), at paras. 18-23). (This was thought to place the respondent’s work for resale in a different market niche, as discussed below.) This too, in my view, goes too far. If the “new” substrate material were made of a smooth sheet of vellum (calf) or papyrus, the result would have the identical appearance to the original paper. How has the copyright holder’s interest in the “intellectual” property been harmed by such a change in the material composition of the backing? Does the mischief only emerge in appearances, i.e., if the new piece of paper has a textured finish, or is pebbled to look like canvas? No one would deny the world of difference between the original artistic work and a mechanically produced copy, but we are talking here about moving the same physical layer of inks around different blank substrates.
40 To allow artists to regulate what can or cannot be done with posters in this way would have the public searching for elusive distinctions. There would be no even reasonably “bright line” between infringing and non-infringing conduct, a deficiency that would be particularly mischievous when dealing with pre-judgment seizure at the instance of a plaintiff without judicial supervision.
41 I do not foreclose the possibility that a change of substrate could, as part of a more extensive set of changes, amount to reproduction in a new form (perhaps, for example, if the respondent’s work were incorporated by the ink transfer method into some other artist’s original work) but the present case does not rise to that level.
B. The Proposed Test Would Depart from the General Principle that Breach of Copyright Requires Copying
42 The historical scope of the notion of “reproduction” under the Copyright Act should be kept in mind. As one would expect from the very word “copyright”, “reproduction” is usually defined as the act of producing additional or new copies of the work in any material form. Multiplication of the copies would be a necessary consequence of this physical concept of “reproduction”. In Massie & Renwick, Ltd. v. Underwriters’ Survey Bureau, Ltd., [1940] S.C.R. 218, at p. 227, Duff C.J. viewed copyright law as essentially about protecting the right to multiply copies of a work:
I think there can be no doubt that material of that character was subject matter for copyright and, not being published, the exclusive right of multiplying copies of it, or of publishing it, was a right which the common law, prior to the statute of 1921, gave primarily to the authors of it. [Emphasis added.]
See also Tom Hopkins International, Inc. v. Wall & Redekop Realty Ltd. (1984), 1 C.P.R. (3d) 348 (B.C.S.C.). In Underwriters’ Survey Bureau Ltd. v. Massie & Renwick Ltd., [1937] Ex. C.R. 15, Maclean J., for the Exchequer Court, defined copyright as (at p. 20):
…the right to multiply copies of a published work, or the right to make the work public and still retain the beneficial interest therein. [Emphasis added.]
43 More pertinent still is the Ontario case of Fetherling v. Boughner (1978), 40 C.P.R. (2d) 253 (Ont. H.C.), relied on by the motions judge in this case, which dealt with a similar fact situation. Southey J. concluded in his oral judgment, at p. 256:
The second question is whether the transfer process constitutes copying. My conclusion, after listening to the argument of counsel, but without hearing any evidence, is that such process does not constitute copying, because it involves the transfer physically of the picture on the copy of The Canadian from which the defendant’s product is made. After such transfer there was no picture on the page of The Canadian. I am satisfied that the defendant would have been entitled to purchase a copy of The Canadian; cut out one of the strip photographs; paste it on a piece of paper; put a border around it; frame it; and sell it, without infringing copyright, just as she would have been entitled to sell the issue of The Canadian itself and just as any person, who purchases the work of an artist, is entitled to resell that work, or a piece of it. In my view that is essentially what was done by the defendant in this case.
See also to the same effect: No Fear, Inc. v. Almo-Dante Mfg. (Canada) Ltd. (1997), 76 C.P.R. (3d) 414 (F.C.T.D.).
44 A similar understanding of “reproduction” is reflected in decisions under the English Act on which s. 3(1) of our Act is based, i.e., the physical making of something which did not exist before (Laddie et al., supra, at p. 614). As stated by the Earl of Halsbury in Walter v. Lane, [1900] A.C. 539 (H.L.), at p. 545:
The law which I think restrains it is to be found in the Copyright Act, and that Act confers what it calls copyright -- which means the right to multiply copies -- which it confers on the author of books first published in this country. [Emphasis added.]
45 My colleague takes the view (at para. 139) that reproduction does not necessarily imply multiplication of the thing reproduced. In this connection, he refers to Apple Computer, Inc. v. Mackintosh Computers Ltd., [1987] 1 F.C. 173, 10 C.P.R. (3d) 1 (T.D.), aff’d [1988] 1 F.C. 673 (C.A.), aff’d [1990] 2 S.C.R. 209. In that case, however, multiplication was admitted ([1988] 1 F.C. 673, at p. 697). The issue was not the meaning of reproduction but whether a computer silicon chip could be the subject-matter of copyright protection. The computer program at issue was multiplied when reproduced in the form of a ROM chip. When the process was complete, the original written text of the program still existed, as did the subsequent renditions of it in code within the plaintiff’s systems as well as the new reproduction etched in the memory cells of the defendant’s chip (pp. 11-12 C.P.R.). In Apple Computer the copyright issue was whether literal multiplication might nevertheless not constitute a “reproduction” for purposes of the Copyright Act. The facts here pose the opposite question, namely whether there is “reproduction” without multiplication.
46 My colleague also cites Compagnie Générale des Établissements Michelin--Michelin & Cie v. National Automobile, Aerospace, Transportation and General Workers Union of Canada (CAW-Canada), [1997] 2 F.C. 306 (T.D.). In that case, the defendant union, in an organized campaign against Michelin, reproduced in its leaflets Michelin’s “fanciful happy marshmallow-like” man shown stomping on the head of a worker. The union denied substantial reproduction of Michelin’s copyrighted figure because of minor differences in the rendition (“qualitative” differences). The defence was rejected. There was, accordingly, reproduction, but there was also multiplication of the copyrighted image in each of the union’s leaflets.
47 This is not to say that the Act recognizes only literal physical, mechanical reproduction. The legal concept has broadened over time to recognize what might be called metaphorical copying (transformation to another medium, e.g. books to films). It is recognized that technologies have evolved by which expression could be reproduced in ways undreamt of in earlier periods, such as evanescent and “virtual” copies in electronic formats. Transformation of an artistic work from two dimensions to three dimensions, or vice versa, will infringe copyright even though the physical reproduction of the original expression of that work has not been mechanically copied. Equally, translations or transformations into another medium may be infringements of economic rights. Nevertheless, the important evolution of legal concepts in the field of copyright is not engaged by the facts here. This is a case of literal physical, mechanical transfer in which no multiplication (metaphorical or otherwise) takes place.
48 It is of interest that our courts have not given an independent meaning to “produce” as distinguished from “reproduce” in s. 3(1) of the Act. Nor have the courts done so under the English Act. In fact, in that country, the word “produce” was thought to be of such little consequence that it was eliminated from the Act by amendment in 1956 (H. G. Richard and L. Carrière, eds., Canadian Copyright Act Annotated (loose-leaf), vol. 1, at p. 3-7). See also C. Brunet, “Copyright: The Economic Rights”, in G. F. Henderson, ed., Copyright and Confidential Information Law of Canada (1994), 129, at pp. 136-37, and McKeown, supra, at p. 421.
49 The U.S. legislation expressly incorporates a definition of “derivative work”, as happens for example when a cartoon character is turned into a puppet, or a tragic novel is turned into a musical comedy. In such circumstances there is, in a sense, a “production” rather than a reproduction. However, the examples of what might be called derivative works listed in s. 3(1)(a) to (e) of our Act are consistent with the notion of reproduction because they all imply the creation of new copies or manifestations of the work. In the application of the ink transfer method, however, there is no derivation, reproduction or production of a new and original work which incorporates the respondent’s artistic work.
50 Even if one were to consider substitution of a new substrate to be a “fixation”, the fact remains that the original poster lives on in the “re-fixated” poster. There is no multiplication and fixation alone is not an infringement of the original work.
C. There Was No Reproduction “in Substantial Part”
51 My colleague relies (at para. 142) on the respondent’s exclusive right under s. 3(1) to produce or reproduce his work “or any substantial part thereof in any material form whatever”. Under this provision, an infringer does not escape liability by reproducing a substantial part of the artistic work as opposed to the whole of it. An individual who copies a novel does not avoid the penalties set out for infringement simply by changing a few words and, likewise, an individual cannot copy with impunity simply by changing the medium. A playwright would be liable if he or she put on the stage a substantial part (but not the whole) of a copyrighted novel. There would clearly be reproduction of that part, i.e., the part of the novel in which intellectual property subsists. After the production, the novel would still exist intact, as would the new play. Here the layer of inks, in which resides the artistic content, rests intact and there is no such multiplication of a “substantial part” of the poster.
52 If the respondent’s attempt to extend the concept of reproduction “in substantial part” to situations where there is no multiplication were correct, one would expect to find decided cases in support of his thesis but none have been brought to our attention.
D. The Quebec Court of Appeal Test of “Unanticipated Market” Similarly Exceeds Statutory Copyright Limits
53 The Quebec Court of Appeal ([2000] Q.J. No. 412 (QL)) proposed a form of market analysis to restrain modification of poster reproductions. Michaud C.J.Q. stated, at paras. 21-23:
[translation] When we take a reproduction on paper and transfer it onto canvas, it is perhaps not an infringement of the right of the person who is authorized to reproduce the painting on paper (since there is no multiplication of the paper reproduction), but it is an infringement of one of the rights of the artist who painted it.
The value of a paper reproduction is no different whether the reproduction is framed or “laminated”. The purchaser of a paper reproduction that is framed or “laminated” pays for the value of the paper reproduction and the cost of framing or “lamination”.
On the other hand, the record shows that a canvas made from a paper reproduction allows the vendor to charge an amount that consists of more than the value of the paper reproduction and the cost of the canvas transfer process.
54 The respondent, as stated, says that money is not the issue. If it were, he could presumably amend his contract with É.G.I. to permit them to sell reproductions on canvas. Equally, he could theoretically have insisted that É.G.I. obtain agreement from its customers not to engage in the ink transfer process, and so on down the line of vendors and purchasers, thereby dealing with the issue of control through a chain of contracts. Indeed, É.G.I. did print such a prohibition on some of the posters, but if any contract resulted, it was not between the appellants and the respondent, and É.G.I. has not come before the court to complain.
55 The position taken by the Quebec Court of Appeal, nevertheless, echoes the debate in some U.S. courts about the proper allocation of compensation where a new way has been found to exploit the work in a market or market niche perhaps not anticipated by the creator of the underlying work, who thus may not have captured the highest price to be charged for the sale or use of that underlying work: see Mirage Editions, Inc. v. Albuquerque A.R.T. Co., 856 F.2d 1341 (9th Cir. 1988); A. B. Cohen, “When Does a Work Infringe the Derivative Works Right of a Copyright Owner?” (1999), 17 Cardozo Arts & Ent. L.J. 623, at p. 654.
56 I shall refer below to the U.S. concept of a “derivative work”, but for the moment it is sufficient to say that by 1996 and 1997 when É.G.I. and New York Graphic Society, Ltd. contracts were entered into, the “ink transfer process” was well established in the poster art industry. The respondent’s position is that he does not want to enter that market, not that it was unknown or unforeseen. The question he poses in this case is whether his economic rights under the Copyright Act permit him to prevent others from entering that market using existing (and paid for) copies of his work.
E. The Proposed Test Would Undermine the Distinction Between Moral Rights and Economic Rights Contrary to Legislative Intent
57 As previously noted, s. 28.2(1) of the Act provides that even a purchaser of the tangible object may not “distor[t], mutilat[e] or otherwise modif[y]” (emphasis added) the work “to the prejudice of the honour or reputation of the author”. It seems clear, at least by negative implication, that a modification of a work by the purchaser which does not “prejudice …the honour or reputation of the author” was intended by Parliament to be within the purchaser’s rights.
58 In addition, as a secondary point, s. 28.2(3) of the Act provides that a change in “the physical … structure containing a work …shall not, by that act alone, constitute a distortion, mutilation or other modification of the work”. To the extent a change in substrate can be said to change the “physical structure” containing the respondent’s work, it does not “by that act alone” amount to a violation of a moral right either.
59 The separate structures in the Act to cover economic rights on the one hand and moral rights on the other show that a clear distinction and separation was intended. Professor Ysolde Gendreau is one of those who have drawn attention to this rather rigid compartmentalisation:
Unfortunately, the present text of the Copyright Act does little to help the promotion of the fusion of moral rights with the economic prerogatives of the law, since there is no comprehensive definition of copyright that embodies both. Section 3 of the Act, which is drafted as a definition of copyright, only refers to the economic dimension of copyright. Moral rights are defined and circumscribed in entirely distinct sections. This absence of cohesion leads to the separate mention of “copyright” and “moral rights” whenever Parliament wants to refer to both aspects of copyright law and to the near duplication of the provision on remedies for moral rights infringements.
(Y. Gendreau, “Moral Rights”, in G. F. Henderson, ed., Copyright and Confidential Information Law of Canada (1994), 161, at p. 171)
(See also R. G. Howell, L. Vincent and M. D. Manson, Intellectual Property Law: Cases and Materials (1999), at p. 383.) This is not to say that moral rights do not have an economic dimension (e.g., there may be an economic aspect to being able to control the personality-invested “moral” rights of integrity and attribution) or to deny that there is a moral rights aspect to copyright (e.g., a critic may reproduce parts of the text of a book when reviewing it, but it will be considered a breach of the author’s economic rights unless his or her authorship is attributed). However, in terms of remedies, the distinction in the Act between the two sets of rights is clear.
60 My view is that Parliament intended modification without reproduction to be dealt with under the provisions dealing with moral rights rather than economic rights. To adopt a contrary view, i.e., to treat the modification of the substrate here as the violation of an economic right, would allow copyright holders other than the artist to complain about modification (despite the non-assignability of moral rights). It would allow an artist who objected to a “modification” of an authorized reproduction both to sidestep the independent evaluation of a judge in unleashing a pre-judgment seizure in Quebec, and to sidestep at a trial anywhere in Canada the important requirement of showing prejudice to honour or reputation in order to establish an infringement of moral rights.
61 Could the economic rights of the sculptor of the descending geese at the Eaton Centre be said to be infringed (quite apart from his moral rights) because the seasonal “combination” of geese plus Christmas ribbons could be considered a “reproduction”? The be-ribboned flock incorporated the original artistic work in more than “substantial part”, no doubt, but there was no “reproduction” in any legal sense, any more than there was “reproduction” when the appellants in this case contributed blank canvas to the “combination” of ink layer and canvas. The sculptor rightly invoked his moral rights against the Eaton Centre, not economic rights.
F. A “Droit de Destination” Would Be Introduced into our Law Without any Basis in the Copyright Act
62 It is not altogether helpful that in the French and English versions of the Act the terms “copyright” and “droit d’auteur” are treated as equivalent. While the notion of “copyright” has historically been associated with economic rights in common law jurisdictions, the term “droit d’auteur” is the venerable French term that embraces a bundle of rights which include elements of both economic rights and moral rights. As Professor Strowel observes:
[translation] The expressions “droit d’auteur” and “copyright” speak volumes in themselves. It has been pointed out that the distinction between the copyright tradition and the “droit d’auteur” tradition is based on a question of terminology: where the followers of the first tradition, the British and their spiritual heirs, talk about “copyright” to refer to a right that derives from the existence of a “copy,” an object in itself, the followers of the second tradition talk about “author’s right” (droit d’auteur) to refer to a right that stems from intellectual effort or activity brought to bear by an author, a creator. This is the fundamental difference: on the one hand, a right that is conceived of by reference to the author, the creative person, and, on the other, by reference to the copy of the work, the product of the creative activity that is protected against copying.
(A. Strowel, Droit d’auteur et copyright: Divergences et convergences: Étude de droit comparé (1993), at pp. 19-20)
63 Under the civiliste tradition, and particularly in France, the right of reproduction was interpreted to include not only the right to make new copies of the work (reproduction stricto sensu) but also what is called by French jurists the “right of destination” (droit de destination). The right of destination gives the author or artist the right to control to a considerable extent the use that is made of authorized copies of his or her work: see generally A. Lucas and H.-J. Lucas, Traité de la propriété littéraire & artistique (1994), at p. 235; F. Pollaud-Dulian, Le droit de destination: le sort des exemplaires en droit d’auteur (1989). See alsoCrim., January 28, 1888, Bull. crim., No. 46, p. 68; Crim., December 2, 1964, Bull. crim., No. 320, p. 672; Crim., October 20, 1977, Bull. crim., No. 315, p. 801; Civ. 1st, May 5, 1976, Bull. civ., No. 161, p. 128; Paris, March 18, 1987, D. 1988.Somm.209, note Colombet; Civ. 1st, April 19, 1988, Bull. civ., No. 112, p. 76; Paris, April 27, 1945, Gaz. Pal. 1945.1.192.
64 The “droit de destination” applies in other civiliste jurisdictions. Thus in Hovener/Poortvliet, HR January 19, 1979, NJ 412, brought to our attention by counsel for the respondent, the Netherlands Supreme Court found a violation of the droit d’auteur where a purchaser of an authorized art calendar cut out the pictures, stuck them to coasters, and resold them. This was regarded by the court as an altogether new and different “publication”. In Frost v. Olive Series Publishing Co. (1908), 24 T.L.R. 649 (Ch. Div.), by contrast, the English court did not regard as an infringement the cutting out of pictures from books, pasting them on cards, and reselling. “[The recirculation of] objects already in existence is not reproduction in a material form”: Laddie et al., supra, at p. 614.
65 It seems to me that the respondent is pursuing a form of “droit de destination” in this case. But, under our Copyright Act, the “right of destination” as such does not exist. Generally, the copyright holder does not by virtue of his or her economic rights retain any control over the subsequent uses made of authorized copies of his work by third party purchasers. Where in specified situations the Act gives the copyright holder some power to control or benefit from subsequent uses of authorized copies of his work, the relevant provisions are narrowly framed to apply only to very specific forms of reproduction, as in the case of sound recordings (s. 15(1)) or computer programs (s. 3(1)(h)). If a general right to control subsequent usage existed, it would not have been necessary to make specific provision in these cases.
G. The Proposed Test Would Conflict with Precedent from Other Comparable Jurisdictions
66 Reference has already been made to the English “note card” case, Frost, supra. Comparable issues relating to the production or reproduction for the purposes of copyright law have also arisen in the United States, including cases of techniques similar to the ink transfer process used by the appellants in the present appeal. For example, in C. M. Paula Co. v. Logan, 355 F.Supp. 189 (N.D. Tex. 1973), the allegations of copyright infringement were directed at the defendant’s transferral of various copyrighted designs from Paula Company greeting cards and note pads to ceramic plaques produced and sold by the defendant. The Paula Company described as follows the process employed by the defendant (at p. 190):
[T]|he process …involves the use of acrylic resin, emulsions, or similar compounds which act as a transfer medium to strip the printed indicia from the original surface on which it is printed, whereupon the image carrying film is applied to another article, such as the plaster base of a wall plaque. In effect, a decal picture is created.
67 The United States District Court concluded that there was no violation of the plaintiff’s copyright (at p. 191):
The process utilized by defendant that is now in question results in the use of the original image on a ceramic plaque; such process is not a “reproduction or duplication”.
The Court believes that plaintiff’s characterization of the print thus used as a decal is appropriate. Each ceramic plaque sold by defendant with a Paula print affixed thereto requires the purchase and use of an individual piece of artwork marketed by the plaintiff. For example, should defendant desire to make one hundred ceramic plaques using the identical Paula print, defendant would be required to purchase one hundred separate Paula prints. The Court finds that the process here in question does not constitute copying.
68 Reference should also be made in this connection to Peker v. Masters Collection, 96 F.Supp.2d 216 (2000), where the New York District Court ruled that the mere transfer of the ink from one support to another represents only a re-displaying of the poster image -- similar to framing or lamination -- that does not amount to “reproduction” of the work. However, in that case, once mounted, the defendant employed specially trained “artists” to apply oil paint in brushstrokes to the image, attempting to match the colour and style of the original painting. The court held that this additional copying amounted to an unauthorized reproduction of the original work. (There was no attempt in our case to replicate brushstrokes.)
69 The “ink transfer” method appears not to have stirred much comment in other common law jurisdictions, including Australia and New Zealand.
H. The U.S. Concept of a “Recast, Transformed, or Adapted” Derivative Work Would Be Introduced into our Law Without any Legislative Basis
70 Of relevance to the present discussion is the fact that the United States legislation, apart from entitling the copyright holder to control the “reproduction” of his work, allows the copyright holder the right to authorize (or prohibit) the creation of “derivative works”. The concept is formally defined in s. 101 of the United States Code, Title 17, as follows:
A “derivative work” is a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship, is a “derivative work”. [Emphasis added.]
71 The concept of a derivative work is found in the Berne Convention, and in the copyright legislation of the United States, England, Australia, New Zealand and Canada. All these provisions reflect a common progression in copyright legislation from a narrow protection against mere literal physical copying to a broader view which allows the copyright owner control over some changes of medium and adaptations of the original work. While the idea of “derivative works” therefore has parallels in other jurisdictions, including Canada, the American statutory language is particularly expansive, including in particular the words “any other form in which a work may be recast, transformed, or adapted”, that have no precise counterpart in Canadian legislation.
72 The poster art industry in the United States has been actively litigating the broad statutory “derivative works” provision against owners of the material objects that embody the copyrighted work. In Mirage Editions, supra, for example, the copyrighted image was applied to a ceramic tile. The 9th Circuit Court of Appeals ruled that the ceramic was an infringing “new” derivative work, a conclusion expressly rejected by the 7th Circuit Court of Appeals in Lee v. A.R.T. Co., 125 F.3d 580 (1997), which concluded that the fixation did not infringe the copyright. Easterbrook J., for the 7th Circuit, reasoned that “[a]n alteration that includes (or consumes) a complete copy of the original lacks economic significance” (p. 581). He further found that there was no distinction between framing works of art, an acceptable practice under copyright law, and more permanent methods of display, such as re-fixing the art work on tile. The 9th Circuit has taken a different view: see Mirage Editions, supra. These cases and their progeny typically turn on conflicting interpretations of the words “recast, transformed, or adapted” in the U.S. statutory definition, but even under that more expansive U.S. definition of “derivative works” the 7th Circuit concluded that permanently mounting the artwork on tile did not “recast, transform, or adapt” the work. If these words appeared in our Act, there would presumably be a similar battle of statutory construction here, with the respondent saying the work was “recast, transformed, or adapted”, and the appellants denying that characterization, but the conflict between the scope of the copyright holders’ economic rights to control the end uses of his work and the purchasers’ rights as owners of the material object is the same. In the absence of the “recast, transformed, or adapted” language (or equivalent) in our Act, however, the respondent is unable to rely on it as an additional basis of copyright liability. As Estey J. noted in Compo, supra, at p. 367:
…United States court decisions, even where the factual situations are similar, must be scrutinized very carefully because of some fundamental differences in copyright concepts which have been adopted in the legislation of that country.
73 I should note that while there is no explicit and independent concept of “derivative work” in our Act, the words “produce or reproduce the work …in any material form whatever” in s. 3(1) confers on artists and authors the exclusive right to control the preparation of derivative works such as the union leaflet incorporating and multiplying the Michelin man in the Michelin case, supra. See generally, McKeown, supra, at p. 64. In King Features Syndicate, Inc. v. O. and M. Kleeman, Ltd., [1941] A.C. 417 (H.L.), under a provision in the English Act similar to s. 3(1) of our Act, the plaintiff’s copyright in the cartoon character “Popeye the Sailor” was held to be infringed by an unauthorized doll, i.e., the two dimensional character was reproduced without authorization in a new three-dimensional form. See also W. J. Braithwaite, “Derivative Works in Canadian Copyright Law” (1982), 20 Osgoode Hall L.J. 191, at p. 203. To the extent, however, that the respondent seeks to enlarge the protection of s. 3(1) by reading in the general words “recast, transformed, or adapted” as a free-standing source of entitlement, his remedy lies in Parliament, not the courts.
VI. Conclusion with Respect to the Substantive Issue
74 My conclusion is that in this case the respondent is asserting a moral right in the guise of an economic right, and the attempt should be rejected.
75 If the respondent’s argument were correct in principle, of course, the absence of authority would not prevent his success. It is in the nature of the subject that intellectual property concepts have to evolve to deal with new and unexpected developments in human creativity. The problem here is that the respondent’s submission ignores the balance of rights and interests that lie at the basis of copyright law.
VII. Conclusion With Respect to the Procedural Issue
76 I agree with Gonthier J. that an art. 734 seizure before judgment is not available to an artist or author who relies on the alleged infringement of a moral right.
77 Article 734 of the Quebec Code of Civil Procedure is a [translation] “draconian procedure” as Gonthier J. himself noted 25 years ago while sitting as a trial judge in Thériault v. Succession de Rémi Thériault, [1977] C.S. 1120, at p. 1121:
[translation] It is moreover settled law that seizure before judgment is a draconian procedure and is an exception to the ordinary rules of law, and that a person who uses that procedure must comply strictly with the rules set out in the Code of Civil Procedure.
78 I think Parliament had good reason not to authorize seizure before judgment without judicial order where the only sustainable allegation of infringement relates to moral rights. As discussed earlier, moral rights are hedged about with the concept of reasonableness. The evaluation of a potential breach calls for the exercise of a good deal of judgment, e.g., an artist or author has the moral right to be associated with his or her work “where reasonable” (s. 14.1(1)). A distortion, mutilation or modification of a work is only actionable if it is to “the prejudice of the honour or reputation of the author” (s. 28.2(1)). The artist or writer should not become the judge in his own cause on such matters and it is therefore entirely understandable that Parliament should insist on prior judicial review before any seizure takes place based on an assertion of violation of moral rights.
79 I conclude therefore that at this stage of the interlocutory proceedings, the respondent has not brought himself within s. 38 of the Copyright Act and therefore had no authority to obtain a seizure of the appellants’ copies under art. 734 of the Quebec Code of Civil Procedure. Whether a fuller record adduced at trial will demonstrate a breach of economic rights or moral rights will be for the trial judge to determine. At this stage, we need to decide only that the interlocutory record did not justify the seizure before judgment.
VIII. Disposition
80 The appeal should be allowed. I would vacate the order of the Quebec Court of Appeal and restore the order of the motions judge setting aside the seizure and ordering that the seized goods be returned to the appellants. As this is an interlocutory proceeding, the costs both here and in the courts below should be to the appellants in the cause, i.e., the appellants will be entitled to their costs of these interlocutory proceedings only if they ultimately succeed in the action on the merits.
Appeal allowed with costs in the cause, L’Heureux-Dubé, Gonthier and LeBel JJ. dissenting.
Solicitors for the appellants Galerie d’Art Yves Laroche inc. and Éditions Multi-Graph ltée: Gowling Lafleur Henderson, Montréal.
Solicitors for the appellants Galerie d’Art du Petit Champlain inc., Galerie d’Art Laroche, Denis inc. and Serge Rosa: Chiara & Associés, Montréal.
Solicitors for the respondent: Laurin, Lamarre, Linteau & Montcalm, Montréal.
This page has been generated using Mincov Legal Markup Language (“MLML”). While every effort has been made to ensure accuracy and currency of this document, Mincov Law Corporation makes no warranty, representation or undertaking, expressed or implied, nor does it assume any liability, direct or indirect, or responsibility for the accuracy, currency, usefulness or continued availability of this document.The official version of this document is located at http://scc.lexum.org/en/2002/2002scc34/2002scc34.html.
