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Toronto Copyright Lawyer, Gil Zvulony, recently spoke to Pat Bolland of Sun News about DC Entertainment’s refusal to allow the Superman logo to be displayed on a memorial statute of Jeffrey Baldwin.   Gil was critical of the decision to refuse and questioned the legal validity of preventing such usage.

(UPDATE: June 10, 2014 – DC Entertainment has changed its position and will now allow the Superman logo to be used on the Jeffrey Baldwin statue.)

By إبن البيطار (Own work) [GFDL (http://www.gnu.org/copyleft/fdl.html) or CC BY-SA 3.0 (http://creativecommons.org/licenses/by-sa/3.0)], via Wikimedia Commons
The streaming application Popcorn Time uses bit torrent technology in an extremely user-friendly manner to stream pirated movies.

The streaming application Popcorn Time uses bit torrent technology in an extremely user-friendly manner to stream pirated movies.

Gil-ZvulonyToronto Copyright Lawyer, Gil Zvulony recently spoke to Dan Misener of CBC Radio (listen to the podcast) on the legality of the movie streaming application, “Popcorn Time”.  Popcorn Time has been dubbed the “Netflix for Pirates” because of it’s very simple and user-friendly interface.

Gil Zvulony’s legal opinion was that the application likely runs afoul of the Copyright Act, RSC 1985, c C-42 because it is an “enabler” of copyright infringement.  The specific section in the Copyright Act reads as follows:

Infringement — provision of services

(2.3) It is an infringement of copyright for a person, by means of the Internet or another digital network, to provide a service primarily for the purpose of enabling acts of copyright infringement if an actual infringement of copyright occurs by means of the Internet or another digital network as a result of the use of that service.

Factors

(2.4) In determining whether a person has infringed copyright under subsection (2.3), the court may consider

(a) whether the person expressly or implicitly marketed or promoted the service as one that could be used to enable acts of copyright infringement;

(b) whether the person had knowledge that the service was used to enable a significant number of acts of copyright infringement;

(c) whether the service has significant uses other than to enable acts of copyright infringement;

(d) the person’s ability, as part of providing the service, to limit acts of copyright infringement, and any action taken by the person to do so;

(e) any benefits the person received as a result of enabling the acts of copyright infringement; and

(f) the economic viability of the provision of the service if it were not used to enable acts of copyright infringement.

Gil and Dan also discussed potential liability of users of the software. Specifically reference was made to a recent decision by the Federal Court and amendments to the Copyright Act regarding statutory damages that made it uneconomical in most cases, to pursue individual downloaders.

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Salé v. Barr

Between
Jamie Salé and David Pelletier, plaintiff
(defendants by counterclaim), and
Stephen Barr, also known as Steve Barr, Barr
Photography Inc., Stephen Barr carrying on business
as National Professional Photography and Stephen
Barr carrying on business as Barr Photography,
defendants (plaintiffs by counterclaim)
[2003] A.J. No. 595
Action No. 0303 02295
Alberta Court of Queen’s Bench
Judicial District of Edmonton
Lee J.
Heard: April 16, 2003.
Judgment: May 9, 2003.
Filed: May 12, 2003.
(33 paras.)
REASONS FOR JUDGMENT

 

LEE J.:–

BACKGROUND

1     The Plaintiffs/Applicants, Jamie Salé and David Pelletier (the “Applicants”) are well-known professional figure skaters. While performing at their Golden Homecoming Celebration at Edmonton on March 12, 2002, the Defendant/ Respondent, Stephen Barr, (the “Respondent”) took photographs of the Applicants.

2     At issue in this application is whether the Applicants are entitled to interim injunctive relief preventing one, some or all of the Respondents from reproducing and distributing photographs of the Applicants taken by the Respondent.

3     The Respondent reproduced at least two of the photographs he took and subsequently distributed them to others without permission from the Applicants.

4     Framed copies of at least two of the photographs taken and reproduced have been seen for sale in galleries in Alberta, have been sold at auction, have been seen on display at a Greyhound Bus Depot, sold at fund raisers and displayed at other commercial establishments.

5     The Applicants have commenced civil proceedings in this Court alleging that the Respondents have appropriated the personalities of the Applicants and have committed the tort of passing off.

6     The Respondent’s have filed a Statement of Defence and Counterclaim, and they have filed two Affidavits in opposition to the motion, one from Stephen Barr, and another from Blaine Lefebvre. The Lefebvre Affidavit reads as follows:-

      • 1.
        I am an officer of The Youth Project (AIM) Edmonton and as such have personal knowledge of the facts and matters deposed to herein.
      • 2.
        I have read the Affidavits of the Plaintiffs in this action and there are some events and situations that the Plaintiffs in this action are unaware of, that will change and or have an effect on the view that the Plaintiffs have of the Defendants in this action and I believe may change the outcome or end result of this claim.
      • 3.
        Stephen Barr showed me the photographs that he had taken, as a freelance photographer, of Jamie Salé and David Pelletier at their celebration in March, 2002, at skyreach centre. He showed me a very nice single shot of them, from this event.
      • 4.
        Steve suggested that we, as a charity, arrange to have the prints signed by Jamie Salé and David Pelletier and get their permission to use them for a fundraiser for our project. Through our involvement in unihockey we met a skater by the name of Jamie Bohlmer, who said that he knew Jamie and David and that he could get the prints autographed for charity and we proceeded to make the arrangements.
      • 5.
        In the past we have obtained autographs in this fashion on many occasions, where we knew someone that were friends with the athletes and would get them signed for us. This has been a practice for many years and they were always verbal agreements.
      • 6.
        We dropped the prints off at Jamie’s house, we asked him to get permission, for us to use the prints, as a fundraiser and to get approval to do a numbered addition of the prints for the benefit of our charity and other charities.
      • 7.
        Jamie Bohlmer called us later and said we could pick up the prints, they had been signed and we could use them for a fundraiser. These prints were of Jamie and David in a finish position, just the two of them.
      • 8.
        We arranged to pick up the prints and reaffirmed that we could do a numbered addition and that it was authorized by Jamie and David, and Jamie Bohlmer confirmed to us that it was OK.
      • 9.
        We then delivered the signed prints back to Steve Barr and he proceeded to produce the prints for us and other charities to use as a fundraiser.
      • 10.
        In our opinion, the prints belonged to Steve Barr (he was the freelance photographer or artist) and no one else had the right to produce the prints.
      • 11.
        At this point we believed that we had full authorization from both artists to use the prints as a fundraiser for our project.
      • 12.
        Later on I received a letter from Jamie and David’s manager Dr. Robert Steadward saying that they did not approve of the distribution of the print of Jamie and David in a collage’ print with the Russian skaters from the same event at skyreach centre.
      • 13.
        We were not involved in the production of this particular print, could not give any details or info on this print and I sent a letter back to Jamie and David’s manager.
      • 14.
        In my letter back to their manager I agreed not to market this print and declared that we had not marketed or sold any of these prints and would not do so in the future. We did not market or sell any of these prints and I stated so in my letter.
      • 15.
        However we were still using the print that we had arranged to be signed, as a fundraiser for our charity project. This was the single shot of Jamie and David in a finish position.
      • 16.
        We as The Youth Project are very disturbed about this whole situation and we hope that this Affidavit will help to shed some light on our involvement and we hope that all parties in this claim will be reasonable and an acceptable solution could be reached and this situation could be resolved in an expedient and proper manner.

ANALYSIS

7     An order in the nature of a mandamus or injunction may be granted or a receiver appointed by an interlocutory order of the Court in all cases in which it appears to the Court to be just or convenient that the order should be made, and the order may be made either unconditionally or on any terms and conditions that the Court thinks just pursuant to the Judicature Act, R.S.A. 2000, c.J-2, s. 13(2).

8     A writ of injunction shall not be issued but an injunction may be granted by judgment or order and the judgment or order has the same effect as a writ of injunction formerly had under Alberta Rule of Court 440.

9     The law with respect to interim injunctions is well settled.

10     In 2000, the Supreme Court of Canada confirmed the tripartite test to be the law in Harper v. Canada (Attorney General) [2000] 2 S.C.R. 764 in paragraph 4 by stating:-

      • 4.
        In considering whether an injunction should be granted, and by extension whether an injunction should be stayed pending appeal, the Court considers: (i) whether there is a serious issue to be tried; (ii) whether absent an injunction there will be irreparable harm to the individual seeking the injunction and (iii) the balance of (in)convenience.

11     Based upon the affidavit evidence before the Court there are serious questions to be tried. The Applicants have adduced sufficient law and evidence to demonstrate a strong case against the Respondents, even though the threshold test is something beyond vexatious or frivolous.

12     This case involves issues involving the right to privacy and every person’s right to control their social and economic right and interests. There is also enough evidence of irreparable harm in this case. The Court cannot put a price on one’s reputation, and damages are potentially inadequate compensation in a case like this.

13     The Applicants do not want to run the risk of being associated with any of the Respondents, or any of the photographs they have unilaterally chosen to put in the market place. The Respondents have wrongfully usurped the Applicants’ right to control and market their own images.

14     The irreparable harm is not only in the form of lost commercial profit, it is the loss of control over one’s image and the loss of control over whom or what that image is associated with.

15     The Affidavit evidence supports the contention that the Respondent is using his photographs of the Applicants to promote his own reputation, profile and economic interests. He does that by placing his signature and seal on photographs also bearing the signatures of the Applicants.

16     The Applicants apparently do not like the images, especially the large framed photograph of the Applicants in their “finish position”. Related to irreparable harm is the balance of inconvenience. The Respondents have not put forward admissible evidence of any harm or damages that will be suffered if the injunction is granted. If the Respondent’s Affidavit evidence is taken at face value, he is not selling the photographs for profit.

17     On the other hand, the Applicants have provided evidence of a market strategy that will be impaired every time one of their fans and potential customers purchase or receive one of the products distributed by the Respondent. Few of these potential customers will purchase a second product from the Applicants after they have purchased a first from the Respondent at discount prices.

18     The Applicants have also provided numerous affidavits which state or strongly suggest that the Respondents are in the practice of “appropriating” and “passing off” photographs of well-known local athletes for personal financial gain.

19     An early example of the cause of action of appropriation of personality being applied successfully comes from the Ontario County Court decision in Racine v. C.J.R.C. Radio Capitale Ltee 17 O.R. (2d) 370. The Plaintiffs successfully sued for damages for appropriation of personality by the Defendant. As part of its analysis, the Court referred to a learned text writer as follows:-

    • “In Fleming, Law of Torts, at p. 530, it is asserted that “reputation has long been regarded as a right of property’ so as to support injunctions restraining libel or slander even when the victim’s economic interests are not affected and it would require little ingenuity to apply the same formula to offensive appropriation of such other personal attributes as name likeness and life history”.
    • In the present case we are dealing with the name and personality of a person who claimed to be professional athlete.”

20     In paragraph 19 of the Ontario Court of Justice decision in Horton v. Tim Donut Ltd. [1997] O.J. No. 390 the Court summarized as follows:-

    • Thus, the gravamen of the tort is the usurpation of the Plaintiff’s right to control and market his own image. Implicit in this is the protected right of the celebrity to profit from the use of his or her personality and to decide how that profit is to be earned.

21     In Corlett-Lockyer v. Stephens, [1996] B.C.J. No. 857 [Prov. Ct.] the Plaintiff sued for damages for unauthorized use of photographs. The Defendant used the Plaintiff’s pictures in newspaper advertisements for its body piercing and after care business. The Defendant applied to have the case dismissed on the basis that only the Supreme Court of British Columbia had jurisdiction to deal with the case because of the Privacy Act of British Columbia. The Provincial Court decided it had jurisdiction and, in paragraph 8, said:-

    • The law of torts is an emerging one and in my view it would be open to a trial judge to find that there is a cause of action in tort at common law based on the right to privacy.

22     The Applicants have provided the Court with a 1998 Supreme Court of Canada decision in Aubry v. Éditions Vice-Versa, [1998] 1 S.C.R. 591. The case is instructive for its recognition and analysis of the mutual rights and obligations sought to be balanced and protected by the common law and privacy legislation. The appeal concerned the scope of the right to one’s image as an element of the more general right to privacy, and it involved a balancing of the right to privacy and freedom of expression. The issue involved publication of a photograph taken without permission which, by analogy, the Applicants draw a parallel to the Respondents distributing photographs of the Applicants without permission.

23     In the dissenting opinion, C.J. Lamer said, in paragraph 23:-

    • In the abstract, to appropriate another person’s image without his or her consent to include it in a publication constitutes a fault.

24     In the majority reasons at paragraph 63, the Supreme Court of Canada said:

    • An artist’s right to publish his or her work cannot include the right to infringe, without any justification, a fundamental right of the subject whose image appears in the work. While the artist’s right must be taken into consideration, so must the rights of the photograph’s subject. If it is accepted that publishing the artist’s work is an exercise of freedom of expression, the respondent’s right not to consent must also be taken into consideration.

25     Professor Klar summarizes the cause of action of “passing off” as follows:-

    • The developing tort of appropriation of personality is supported in part by the law of passing off. Where the wrong of using the Plaintiff’s name or identity without consent is characterized as misrepresentation rather than misappropriation, the wrong may be actionable under the principles of passing off as they are currently developing.

26     In many cases, the passing off cause of action is alleged in relation to competitors engaged in a common field of business or activity where one competitor is alleged to have named, packaged or described its product or business in a manner likely to lead the public to believe it’s the other competitor’s product or business. However, Courts have recognized that the tort is broader than that.

27     In National Hockey League et al v. Pepsi-Cola Canada Ltd. (1992), 42 C.P.R. (3d) 390, the British Columbia Supreme Court said on page 9:-

    • The second, and nowadays perhaps more common type of passing off, is where it is alleged that a Defendant has promoted his product or business in such a way as to create the false impression that his product or business is in some way approved, authorized or endorsed by the Plaintiff or that there is some business connection between the Defendant and the Plaintiff. By these means a Defendant may hope to “cash in” on the goodwill of the Plaintiff.

28     In 1992 the Supreme Court of Canada decided Ciba-Geigy Canada Ltd. v. Apotex Inc. [1992] 3 S.C.R. 120 a case involving the tort of passing off. Some relevant passages from the unanimous decision include:-

      • 33.
        The three necessary components of a passing-off action are thus: the existence of goodwill, deception of the public due to a misrepresentation and actual or potential damage to the plaintiff.
      • 39.
        It is clear that however one looks at the passing-off action, its purpose is to protect all persons affected by the product.
      • 43.
        There is also the concept of ownership, protected by the passing-off action in relation to goodwill, a term which must be understood in a very broad sense, taking in not only people who are customers but also the reputation and drawing power of a given business in its market.
      • 46.
        The purpose of the passing-off action is thus also to prevent unfair competition. One does not have to be a fanatical moralist to understand how appropriating another person’s work, as that is certainly what is involved, is a breach of good faith.
      • 47.
        Finally, another more apparent, more palpable aspect, a consequence of the preceding one, must also be mentioned. The “pirated” manufacturer is very likely to experience a reduction in sales volume and therefore in his turnover because of the breaking up of his market. When such a situation occurs in the ordinary course of business between rival manufacturers that is what one might call one of the rules of the game, but when the rivalry involves the use of dishonest practices, the law must intervene.
      • 54.
        The look, the appearance, the get-up of a product play a crucial role in the purchase process since they are the chief means at the manufacturer’s disposal to attract customers. The importance of visual impact is well known: what appeals to the eye is crucial.
      • 59.
        Outside the field of pharmaceutical products, the courts and authors have unquestionably recognized that the consumer, or the person who might be called the ordinary customer – the last link in the chain – is also part of the “clientele” in whose minds any confusion must be avoided.
      • 62.
        There is no question that confusion, which is the essence of the tort of passing-off, must be avoided in the minds of all customers, whether direct – here one thinks of the retailers – or indirect – in that case the consumers. Proof of reputation or secondary meaning and of misrepresentation has never been limited by the courts to direct customers of the person claiming a right.
      • 65.
        …The passing-off action is entirely consistent with the plethora of present-day protectionist provisions, even though it existed long before they did!

29     In Walt Disney Productions v. Triple Five Corp. (1994), 113 D.L.R. (4th) 229 [Alta. C.A.], the Trial Judge granted a permanent injunction in a passing-off action preventing Triple Five Corporation from using the word “Fantasyland” as the name of its amusement park, which decision was upheld on appeal.

30     In Walt Disney Productions, both the Trial Judge and the Court of Appeal found that Triple Five’s use of the name “Fantasyland” constituted a misrepresentation that it had authorized from Disney to use the name and thus was somehow associated with Disney. Both Courts held that was sufficient misrepresentation to establish a passing off.

31     In paragraphs 48 and 49 of its decision, the Court of Appeal said:-

      • 48.
        The essence of a passing off action is the misrepresentation and the resultant confusion in the public mind which causes or is likely to cause damage to the property interest of the plaintiff. The foundation of such action is the existence of a property right in the goodwill and reputation associated with a trade name.
      • 49.
        …The law of passing off does not require proof of actual confusion which leads to specific pecuniary damages.

CONCLUSION

32     The Respondent Ken Barr in his Cross Motion asks that his name be removed from the claim. Firstly Ken Barr presents little, if any, admissible evidence in support of his Cross Motion and secondly there is specific evidence implicating him as a Defendant in this case. it would be inappropriate to allow him to be summarily removed at this time in this manner. Accordingly Mr. Barr’s Cross Motion is denied, and can be dealt with at trial.

33     I grant the applicants in this matter an interim injunction as follows:-

      • (a)
        That none of the Respondents directly or indirectly, make a copy of any negative or photographic, poster or print image any of them have or obtain of either or both of the Applicants.
      • (b)
        That the Respondents immediately refrain from directly or indirectly publishing, selling, distributing or giving up possession of any negative or photographic, poster or print image any of them have or obtain of either or both of the Applicants to any person, club, association, society or corporation for any reason.
      • (c)
        Both the Applicants and the Respondents have applied for costs of this Application. I award the Applicants $1,000.00 costs payable in any event of the cause, payable at the determination of this matter.
      • (d)
        In these circumstances, I will not require the Applicants to post any written undertaking to pay damages to the Respondents arising out of this interim injunction.

LEE J.

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Athans v. Canadian Adventure Camps Ltd. et al.
[1977] O.J. No. 2417
Ontario
High Court of Justice
Henry, J.
November 9, 1977.

L. T. Forbes, Q.C., for plaintiff.

M. O’Brien, for defendant, Canadian Adventure Camps Limited.

R. H. Parker, for defendant, Ideas Diversified Limited.

 

1     HENRY, J.:— The plaintiff is a professional athlete who has achieved the highest recognition for his prowess in water- skiing, both in Canada and internationally. He promotes his image, expertise, and personality commercially.

2     The defendant, Canadian Adventure Camps Limited (C.A.C.), operates a summer camp for children. In 1975, the camp opened for its first season on a commercial basis, featuring water- skiing as an important part of its programme. For promotional purposes, it published a brochure and an advertisement containing a graphic representation of a water-skier, which the plaintiff says is identifiable with him, and was used for commercial purposes without his consent. The drawings used in the brochure and the advertisement were based upon a photograph of the plaintiff in the act of water-skiing, and were made by the defendant, Ideas Diversified Limited (I.D.L.), which prepared the promotional material for C.A.C.

3     The plaintiff claims against both defendants damages for passing off and for wrongful appropriation of the plaintiff’s personality; and, in the alternative, compensation for use of his image and personality. The defendants say that prospective customers seeing the drawings could not recognize them as the plaintiff, and would not associate the plaintiff with the camp; that no passing off was intended or accomplished and that, in any event, the plaintiff has suffered no injury or damage as a result.

4     Each of the defendants says that, in the event of liability, the other is at fault, and claims contribution and indemnity against the other.

5     The plaintiff, George Athans, Jr., is a professional Canadian athlete of undoubted stature in the field of water-skiing. He was born in 1952 of parents eminent in aquatic sports. He started water-skiing at the age of four, and entered his first competition at the age of nine. He won the Canadian Water- Skiing Championship in 1965 at the age of 13 and, between 1965 and 1974, won the Canadian National Water-Skiing Championship 10 times, the over-all World Water-Skiing Championship twice in succession, held the world’s slalom record from 1969 to 1972, was twice Western Hemisphere Champion and Masters Champion. He twice won commercially-sponsored international championships in Canada (Benson & Hedges, Belvedere). He has also received athletic recognition by, among other things, being named to Canada’s Amateur Athletic Hall of Fame in 1971, Canadian Amateur Athlete of the Year in 1972 and 1973, and was named to Canada’s Sports Hall of Fame in 1975. He received the Order of Canada in 1973. This list is not exhaustive and these honours were all accorded to him before 1975 when the events with which we are concerned took place. By then he had won every event of international significance in water-skiing, other than in the Far East, and held 40 to 50 titles. He did not compete in 1975, owing to a knee injury.

6     After he won his first world title in 1971, Mr. Athans decided to promote and market himself commercially. He had a private company incorporated for the purpose of his business under federal law. He purchased a photograph taken by a professional photographer in San Francisco showing himself in the act of making a turn around a ball on a slalom course. This photograph (ex. 18) is an excellent dramatic black-and-white action shot of Mr. Athans, and is described in evidence not only as exhibiting perfect form, but also as characteristic of his personal style. One witness described it as the best-known water-skiing photograph in the world. Mr. Athans described it as his trademark. Since 1971, he has used it to promote himself commercially. It appears on his letterhead, on his business card, in his promotional packages, in magazines and other publications. In 1971, after winning his first world title, he received numerous offers from water-ski manufacturers to use his endorsement. He made a non-exclusive contract with Ski Gliders, who are Canadian manufacturers of water-skis and equipment, for the use of his name, photograph, and endorsement, for a period of five years. The catalogue of this manufacturer (ex. 9) contains the photograph I have mentioned, as well as other photographs of Mr. Athans. This firm also published a promotional poster which is essentially an 18” x 24” enlargement of the photograph with the name of George Athans prominently associated with the manufacturer (ex. 26). The same photograph was used to advertise the Benson & Hedges 100’s International — Canada’s first professional water-ski tournament organized by a tobacco manufacturer, which took place in Calgary, in August, 1973.

7     In 1972, Mr. Athans made a contract with Saucier Inc., a manufacturer of water-skis and equipment in the United States, to use their products in competition and to allow his name and photographs to be used for marketing them. His name and several photographs were used in the Saucier catalogue for 1974-75.

8     In addition to using the photograph (ex. 18) as such, Mr. Athans had prepared considerable promotional material containing representations of himself in action, by way of artistic illustrations and “high-contrast stat” reproductions of his photographs. Among these is a high-contrast stat of the photograph (ex. 18), which is displayed on the cover of Mr. Athans’ portfolio of promotional material. It appears also on a promotional poster (ex. 1) prepared for him. This representation, unlike an illustration, is prepared by a photographic process directly from the photograph itself, and gives the impression of an ink drawing or sketch that is unmistakably a form of reproduction of ex. 18 when the two are compared. The high-contrast stat of ex. 18 was used to advertise the Belvedere King-Size Professional Water-Ski Championship at Toronto in 1974.

9     Also prior to 1975, Mr. Athans had gained some exposure on national television in Canada, had undertaken a cross-Canada tour, speaking on sports, for the Minister of National Health and Welfare. He had written an article on the purchase of water-ski equipment in the Canadian Consumer, for June, 1973, in which the photograph ex. 18 was featured, and he subsequently co-authored a textbook on water-skiing. He was well-known, at the very least, in water-skiing circles and the associated media, and in sports circles generally. He was putting his exploits and personality to commercial advantage in the somewhat limited market related to water-skiing activities. Clearly, on the evidence, the photograph ex. 18 and the representations of that photograph in various artistic forms were identified by knowledgeable people with George Athans, the outstanding Canadian and international champion.

10     In 1974, the defendant, C.A.C., was preparing to launch a boys’ camp which was to open in the summer of 1975, featuring water-skiing as a major programme. Mr. Connett, the president of the company, had little knowledge of water-skiing, and sought the advice of Mr. Sokolowski, the executive director of the Ontario Water-Skiing Association, which is the Ontario regional body of the Canadian Water-Ski Association, who, himself, is a water-skier of note. Mr. Sokolowski was fully familiar with Mr. Athans and his record of achievements as a water-skier. His organization publishes a magazine called the Ontario Water-Skier. Through Mr. Sokolowski, Mr. Connett learned of Mr. Athans’ association with water-skiing and, in the fall of 1974, he conceived the idea of having Mr. Athans associated with the camp’s programme. He made an agreement with the defendant, I.D.L., in January, 1975, as experts in marketing and promotion, who had been recommended to him, to do the promotional work for the camp. Connett then arranged a meeting with Mr. Athans in January of 1975, at which representatives of I.D.L. and C.A.C. were present, to discuss the possibility of Mr. Athans’ commercial participation in the camp’s programme. The proposal was that Mr. Athans would assist in selecting and setting up the water-ski equipment for the camp, would take charge of the water-ski programme and instruction, and would lend his name, image, and endorsement to the project during the summer of 1975. Mr. Athans was to consider the proposal and, in the meantime, Mr. Connett wrote him that the promotional material which was in preparation would be held up pending his decision. In the result, Mr. Athans declined to become involved with the camp for that season, because he could not commit himself to the required time during July and August, when he planned to enter further competitions. He was not prepared to lend his name to such a project without being personally present, as he considered it unfair to himself and to the public to be an absentee endorser of an active programme. Mr. Connett agreed not to use Athans’ name for that season, and the matter was amicably deferred for further discussion as to his possible participation in future seasons.

11     In the meantime, the defendant, I.D.L., in consultation with C.A.C., had the promotional material for the camp on the drawing-board, and publication was becoming urgent. The promotional plan was to publish an advertisement in the Ontario Water-Skier, and to prepare and publish a brochure to attract customers to the camp, in which the programme and facilities would be described. Mr. Steventon of I.D.L., who was responsible for the art-work, examined material relating to water-skiing that he received from Mr. Connett of C.A.C., and also canvassed his own sources. No one in I.D.L. or C.A.C. was knowledgeable about water-skiing, but Mr. Steventon and Mr. McCullough, the president of I.D.L., and Mr. Connett had met Mr. Athans at the meeting in January. Mr. Steventon looked for a good action picture to depict the sport of water-skiing, and selected the photograph of George Athans from the Sea-Gliders Catalogue (ex. 9), which is the “trademark” photograph (ex. 18). From this he made a line drawing which he described as a stylization of a water-skier in action. By stylization, I understood him to mean that the drawing was not intended to be more than an impression of the action and surroundings depicted, and was not intended to represent a particular person or occasion. Nevertheless, on an objective view of the drawing, even allowing for artists’ licence and the impressionistic technique, there is a striking similarity between the drawings and Mr. Athans’ “trademark” photograph, and its various derivatives, that I have mentioned.

12     On February 17, 1975, Mr. Connett approved the art-work, and the drawing was incorporated into the cover of the camp brochure; a similar, although not identical, drawing was prepared for insertion as a centre-fold in the March – April issue of the Ontario Water-Skier, in conjunction with the advertisement for the camp.

13     Mr. Connett had some previous knowledge of promotional work, and when he saw the drawing presented to him by I.D.L., he asked the source and discovered the photograph of Mr. Athans in the Sea-Gliders Catalogue, from which it was derived. He inquired whether this presented a problem (by which I understood him to mean whether a release from Mr. Athans was necessary) and was told that there was no problem as the drawing was stylized; he, therefore, approved the artwork and I.D.L. produced and distributed the brochure.

14     The drawing to be used for the advertisement was another version of the drawing presented to Connett by I.D.L. and, as I understand the evidence, was not seen by him before it was printed in the Ontario Water-Skier. It was taken to Mr. Sokolowski for insertion in the next issue of the Ontario Water-Skier. Mr. Sokolowski thought that Mr. McCullough, the president of I.D.L., took it to him, but the evidence is not clear as to whether he was the person who did so. Mr. Sokolowski at once recognized the stylization as a likeness of George Athans, and asked if his permission had been obtained. He was told by the caller that it was not Mr. Athans, but was some American skier. He accepted this, and the drawing was incorporated into the centre-fold of the issue of March – April, 1975. That issue also carried an advertisement on the inside cover featuring Mr. Athans in person, in connection with a sale of water-ski equipment by a Toronto retailer; and in the same issue appeared an advertisement for a “George Athans Crest”, a form of badge, bearing the image of Mr. Athans based on the “trademark” photo, ex. 18.

15     Mr. Connett sent a copy of the camp brochure to Mr. Athans by way of keeping him informed as to the progress of the camp venture. Mr. Athans replied, questioning the authority to use the drawing. Mr. Connett admitted that the drawing was a representation of Mr. Athans, and apologized to him, stating that it was not their intention to cause him damage or concern. The matter was then referred to solicitors.

16     I now recapitulate my findings of fact on the evidence. Prior to the publication of the camp brochure and the advertisement in the Ontario Water-Skier, George Athans had achieved national and international fame as a champion water-skier. He was given outstanding recognition in Government and sports circles for his prowess. He had received considerable public exposure in the media and in public appearances, as well as in competition. He had exploited his achievements and personality commercially and, for this purpose, actively promoted himself. One important means of marketing his personality was the use of a distinctive and characteristic photograph that he had purchased, together with derivative representations of that photograph, which portrayed him in a pose and setting that was identifiable with him personally. This, and other images and material descriptive of him was used by businesses with whom he associated himself for reward. The photograph and its derivatives constituted his “trademark”, and this action shot or pose, notwithstanding that other photographs of other skiers depicted similar poses, had become particularly associated with Mr. Athans among the cognoscenti. Mr. Connett, as I infer, was aware of this, as he had been given a copy of Mr. Athans’ promotional poster, ex. 1, and had also seen it in Mr. Sokolowski’s office. The drawings prepared by I.D.L. were admittedly derived from the photograph of Mr. Athans, ex. 18, and, as I find, were, in all the circumstances, a graphic representation of him, identifiable by members of the public, albeit a limited group who are knowledgeable about the sport of water-skiing and competitors in that field. At the time of publication of the advertisement and the brochure, Messrs. Connett, McCullough, and Steventon knew, or ought to have known, that the drawings were a graphic representation of George Athans, although they considered them to be stylizations, knew of the possible need to get his consent to their use, and consciously rejected it; they also knew that Mr. Athans was in the business of marketing his personality commercially through the photograph, at least. The brochure and the advertisement containing the graphic representations of Mr. Athans were, in fact, published for the commercial advantage of C.A.C., without the consent of Mr. Athans, and I.D.L. was a party to this.

17     The following further findings of fact are relevant to the issues I have to decide. The advertisement in the Ontario Water-Skier containing the image of George Athans, did not appear in any subsequent publication. The brochure containing the image of George Athans was used in connection with the camp’s operation for the 1975 season only, and was not subsequently used. The evidence, as a whole, satisfies me that the two defendants did not intend improperly to use the image of Mr. Athans as such for the purposes of their promotion. I accept Mr. Connett’s explanation that there was no intention to injure or cause concern to Mr. Athans, and I accept the explanation of the witnesses, McCullough and Steventon, that their intention was to produce a stylized, or abstract, drawing, of an interesting and attractive kind, depicting the sport of water-skiing without intending it to be a representation of any particular person. In this respect, their intention was innocent, but their judgment was faulty and misinformed.

18     I also find, on the evidence, that the sport of water-skiing, as it is competitively and professionally conducted, is characterized by limited public knowledge and support. It is not, for example, in the same class as professional football, hockey, tennis, or golf. While there is no reliable evidence as to the extent of publicity given to this sport and its personalities, I can infer that competitively and professionally it has limited public appeal. While several witnesses testified on behalf of the plaintiff that they could unmistakably recognize the drawings in the advertisement and the brochure as depicting George Athans, those witnesses had a particular detailed familarity with the field and cannot, on the evidence, be identified with any major segment of the public. On the evidence, I cannot find that more than a relatively small number of very well-informed people would be likely to recognize the drawings as representations of Mr. Athans, without the addition of his name, to identify them. Apart from the drawings, there was no mention of Mr. Athans in either the advertisement or the brochure.

19     I turn now to a consideration of the claim for passing off. Essentially, the action of passing off constitutes the sale of goods or the carrying on of a business under a name, mark, or description in such a manner as to mislead the public into believing that the merchandise or the business is that of another person. The law is designed to protect traders against a form of unfair competition, which consists of acquiring for oneself by means of false or misleading devices the benefit of the reputation already achieved by a rival trader. Typically, the defendant seeks to acquire this benefit by passing off his goods as the goods of the plaintiff.

20     In McCulloch v. Lewis A. May (Produce Distributors), Ltd., [1947] 2 All E.R. 845, Wynn-Parry, J., described the action as follows, at p. 849:

    •   It is of the essence of an action for passing off to show, first, that there has been an invasion by the defendant of a proprietary right of the plaintiff, in respect of which the plaintiff is entitled to protection, and, secondly, that such invasion has resulted in damage or that it creates a real and tangible risk that damage will ensue. It is with the first part of that proposition that I am immediately concerned. It is established beyond argument that under the law of England a man is not entitled to exclusive proprietary rights in a fancy name in vacuo. His right to protection in an action for passing off must depend on his showing that he enjoys a reputation in that name in respect of some profession or business that he carries on or in respect of some goods which he sells. Further, he must show that the acts of the defendant of which he complains have interfered or are calculated to interfere with the conduct of his profession, business or selling goods, in the sense that those acts of the defendant have led or are calculated to lead the public to confuse the profession, business or goods of the plaintiff with the profession, business or goods of the defendant. The element of confusion is essential, but the element of confusion necessitates comparison.

21     And at p. 851, he continues:

    •   I have listened with care to all the cases that have been cited, and on analysis I am satisfied that there is discoverable in all those in which the court has intervened the factor that there was a common field of activity in which, however remotely, both the plaintiff and the defendant were engaged and that it was the presence of that factor that grounded the jurisdiction of the court.

22     In The Clock Ltd. v. The Clock House Hotel, Ltd. (1936), 33 R.P.C. 269, Romer, L.J., in the Court of Appeal, stated the principle as follows:

    • There is really no dispute and can be no dispute as to the principle of law involved in this case. The principle is this, that no man is entitled to carry on his business in such a way or by such a name as to lead to the belief that he is carrying on the business of another man or to lead to the belief that the business which he is carrying on has any connection with the business carried on by another man.

23     In my opinion, the plaintiff has not made a case for passing off, for the simple reason that, on the evidence as a whole, I am not able to find that the use of the line drawings in the advertisement and the brochure were, on the balance of probability, likely to give rise to confusion between the plaintiff’s business and that of the defendant, C.A.C. The problem for the plaintiff lies not with the “common field” element because the plaintiff and the defendant are both to greater or lesser degree engaged in the business of exploiting the sport of water-skiing commercially. The decisive point, however, is that, as I hold, it is improbable that the relevant segments of the public who would read the advertisement and the brochure would associate the business of C.A.C. with the athlete, George Athans. As I have said, there is no evidence that any but the most knowledgeable persons concerned in the sport of water-skiing would identify the drawings with Mr. Athans. It is obvious that the brochure and advertisement are designed to attract customers who wish to send their children to a summer camp where water-skiing is featured in the programme. There is no evidence, and experience suggests it is unlikely, that that segment of the public would be particularly knowledgeable about the sport of water-skiing, or would identify the drawings with Mr. Athans. It is not sufficient that persons having expert knowledge of the field would identify him and would connect him with the defendant’s camp:

    • see Singer Manufacturing Co. v. Loog (1882), 8 App. Cas. 15 at p. 18. There is nothing in the explanatory material, either in the advertisement or the brochure, that either names or otherwise identifies Mr. Athans with the programme. Any confusion between Mr. Athans’ business and that of the defendant, C.A.C., or any misconception that Mr. Athans was endorsing the camp programme, would depend solely upon the prospective customer recognizing the stylized drawings as those of Mr. Athans. In my opinion, this is not only improbable, but is unlikely. I, therefore, hold that the plaintiff has not made out a case in the tort of passing off. I add that, had I found that the plaintiff should succeed on this head of claim, I would have awarded nominal damages only as, in my opinion, substantial damages have not been proved.

24     I turn now to the second head of claim, namely, wrongful appropriation of the plaintiff’s personality. I say at once that, on the basis of recent authority, it is clear that Mr. Athans has a proprietary right in the exclusive marketing for gain of his personality, image and name, and that the law entitles him to protect that right, if it is invaded: see Krouse v. Chrysler Canada Ltd. et al. (1973), 1. O.R. (2d) 225, 40 D.L.R. (3d) 15, 13 C.P.R. (2d) 28. If a case for wrongful invasion of this right is made out, then the plaintiff is entitled, in appropriate circumstances, to an injunction and to damages, if proved. It is only in recent years that the concept of appropriation of personality has moved from its place in the tort of defamation, as exemplified by Tolley v. J. S. Fry and Sons, Ltd., [1931] A.C. 333, to a more broadly based common law tort. In Krouse v. Chrysler Canada Ltd. the Ontario Court of Appeal considered a situation where an automobile manufacturer distributed for purposes of advertising its products, a device known as a spotter, which was a type of entertaining device associated with the sport of football. On this device was printed a colour photograph of several football players in action, depicting dramatically a moment in time in the course of a football game. Prominent in this photograph was the rear view of the plaintiff, who was at that time a well-known football player, whose number on the back of his sweater, also well-known, and identified with him, was clearly displayed. The Court rejected the plaintiff’s claim for passing off, on the grounds that the buying public would not buy the products of the automobile manufacturer on the assumption that they had been designed or manufactured by the plaintiff, or that the spotter had been designed and produced by him, or was produced by the manufacturer to be passed off on the public in competition with a similar product marketed by the plaintiff.

25     The Court then directed itself to the claim for appropriation of the plaintiff’s personality and, after considering the authorities, made the following pronouncement, per Estey, J.A., p. 238 O.R., p. 28 D.L.R.:

    •   I, therefore, conclude from the foregoing examination of the authorities in the several fields of tort related to the allegations made herein that the common law does contemplate a concept in the law of tort which may be broadly classified as an appropriation of one’s personality. Assuming the existence of such a wrong in our law, it remains to be determined whether the respondent has established that the appellants have committed such a wrong and have thereby damaged the respondent.

26     In the result, the Court of Appeal held, reversing the trial Judge [[1972] 2 O.R. 133, 25 D.L.R. (3d) 49, 5 C.P.R. (2d) 30], that a case was not made out by the plaintiff (respondent) on the factual ground that it was the game of professional football that had been incorporated in the advertising device known as the spotter, and not the personality of the respondent, who was but one of many individual participants in the game. In reaching this conclusion, the Court held that there was no suggestion that the plaintiff brought the spotter into being nor was in any way concerned in its production, and that the appellants (defendants) sought to gain a trade advantage by associating themselves with the popular game of football and, not with any particular team or participant, with the objective of attracting the attention of football followers to their automobiles. In the result, the appeal was allowed and the action dismissed.

27     The case at bar differs in that water-skiing is fundamentally a sport of individual participants. If the defendants, C.A.C., wished to derive commercial advantage by associating its activities with the sport of water-skiing, it would be natural and acceptable that it should adopt some device depicting an individual water-skier in action. But the defendants, out of, no doubt, a vast number of photographs of unknown water-skiers in action that must be available, chose the photograph of George Athans in a pose that was used and known as his “trademark” image, and deliberately incorporated a representation of it in the promotional material at a time when C.A.C., at least, knew that Mr. Athans would not be associated with the camp for the forthcoming season, and had undertaken not to use his name. Had the defendants identified the promotional drawings as representing George Athans, or incorporated in the printed copy language stating or implying that he was endorsing, sponsoring, or participating in the camp’s activities, I would unhesitatingly find that the defendants had appropriated his personality for commercial advantage. But, as I have said earlier, the drawings are the only aspect of the material that could form any supposed connection between Mr. Athans and the defendant’s camp. On a careful reading of the advertisement and brochure as a whole, I cannot detect that there is any possible suggestion, apart from the drawings themselves, that Mr. Athans is in any way associated with the camp. On the basis of the drawings alone, it is not only improbable, but is highly unlikely that potential customers of the camp would consider that George Athans, assuming they even knew who he was, had lent his personality to the camp, or had endorsed it, or was participating in its programme. It is inconceivable that a commercial venture such as the defendant seeking to launch itself as an unknown entrepreneur on the market, would have the endorsement or participation of a celebrity such as Mr. Athans without expressly highlighting that fact and trading upon it. While, in my opinion, it would not be necessary for the plaintiff to show that any person had been misled, it is significant to note that, according to the evidence of Mr. Connett, which I believe and accept, only 20 campers were attracted to the camp in 1975 (so that the operation was a loss in that year) and none of the campers either drew attention to the promotional material as representing Mr. Athans, or inquired if he would be present at the camp. Clearly, if I am to believe Mr. Athans’ assessment of his own commercial potential in marketing his personality, he was not a drawing card so far as this camp was concerned. In my opinion, the obvious inference is that the promotional material did not have the effect of establishing any connection in the minds of the relevant public between Mr. Athans and the camp. Moreover, I am unable to find that even those intimately knowledgeable about the sport of water-skiing would derive such an impression. According to the evidence, professional athletes generally find it to their disadvantage to sponsor an active programme such as a sport camp to which they lend their name, image, and personality, without personally attending to participate. To put it shortly, a professional athlete loses credibility and so does the enterprise sponsored if he is associated with the venture, but is not present to meet the public who are attracted to it. Knowledgeable people would be aware of this and, in the absence of some express or clearly implied indication in the promotional material that he was a sponsor or participant, would not, on the balance of probability, draw that conclusion. On the evidence as a whole, I find that the action of the defendants does not amount to a wrongful appropriation of Mr. Athans’ personality, as such. I further find, in case it should be necessary, that Mr. Athans has suffered no injury or damage (apart from what I shall say later) by the action of the defendants. An attempt was made to show, by way of evidence, that Mr. Athans’ image was likely to be tarnished commercially by his association with a venture that had no reputation and could, by conducting an amateurish programme, bring him into disrepute as a professional athlete and sponsor of other enterprises. This allegation was not supported by any firm evidence (although an attempt was made to lead hearsay, which I ignore). As far as the evidence goes, that allegation is both vague and speculative, and the plaintiff has not satisfied me that he has suffered any injury or damage even assuming that some vague connection could be made by members of the public between his personality and the defendant’s camp. The same may be said of the implication that emerges from Mr. Athans’ evidence that if he were to be regarded by knowledgeable people as an absentee endorser of the camp’s project, this would in some way bring him into disrepute. That proposition has not been established to my satisfaction on the evidence.

28     This, however, does not dispose of the matter. The defendants have used the image of George Athans for their commercial advantage. Although Mr. Steventon, the artist who created the drawings complained of, clearly stated that he created them from the original photograph, ex. 18, and did not make a copy of anything, the drawings bear such a striking resemblance to Mr. Athans’ promotional material in the form of the photograph and its various derivatives that I have described, as to lead to the inescapable inference that the defendant’s drawings were merely a further representation of Mr. Athans’ “trademark” pose. I find that I.D.L. has copied the photograph or one of its derivatives. On the one hand, this act may be regarded as an aspect of the emerging tort of appropriation of personality. On another view of the matter, it may be regarded as falling within the general field of infringement of unregistered trademarks or copyright; but as the action is not so framed, I set that aside. Mr. Athans had, as I find, adopted the photograph ex. 18 and the various representations of it, as his distinctive indicia. He used them as an essential component in the marketing of his personality, which he had an exclusive right to do. The commercial use of his representational image by the defendants without his consent constituted an invasion and pro tanto an impairment of his exclusive right to market his personality and this, in my opinion, constitutes an aspect of the tort of appropriation of personality. This conduct gives rise to an action sounding in tort that is separate and distinct from any action based on infringement of trademark or copyright, should that exist.

29     In using the drawings, the defendants were aware of their sources in ex. 18, its use by Mr. Athans commercially, its identification with him, and na*vely decided that they were not obliged to obtain his consent. They knew that the photograph was used as part of his business, and Mr. Connett knew that any arrangement for Mr. Athans’ participation or endorsement of the camp would call for compensation to Mr. Athans. The defendant, I.D.L., was aware that commercial negotiations were in progress with Mr. Athans. In the circumstances, the reproduction for commercial advantage of the photograph in the form which it took, was an invasion of Mr. Athans’ exclusive right to market his personality. For this he is entitled to compensation. No other injury having been proved, the measure of damages should be the amount he ought reasonably to have received in the market for permission to publish the drawings.

30     It is difficult to assess damages on this basis on the evidence. Mr. Athans had not previously been commercially associated with a camp or programme of this kind. His previous business had consisted of his competing professionally for prizes and retainers, while endorsing manufacturers’ products and acting as their technical advisors, and publishing a book and an article. He was not prepared to sponsor the defendant’s camp without personally participating in the programme, and he would not, therefore, have merely lent his image and name to it without more. His agent, Mr. Smith, indicated that for Mr. Athans’ participation in the programme, as contemplated, he would ask for a guarantee of $5,000 together with royalties based on a percentage of the gross receipts of the camp. This, of course, never materialized and cannot, in my opinion, provide the measure of damages here; moreover, what Mr. Smith might demand in negotiating on behalf of Mr. Athans is not the measure of what he would receive in the market or from the defendant after proper negotiation.

31     I do not recall any evidence as to what Mr. Athans had previously charged for the use of his photograph or its derivatives alone without its being identified clearly with him by the use of his name or in some other way. Moreover, the income that he has received has been for the purposes of endorsement of commercial enterprises and products and this is not of assistance because Mr. Athans has not endorsed the defendant’s camp, nor as I have held, does the use of his image in the form of the drawings constitute an endorsement or other association with the camp. If compensation is to be measured by some function of the gross revenue of the camp for 1975, that revenue was $5,559, as against expenses of $22,000, resulting in a substantial loss on the operations for that season. So far as the evidence shows, the advertisement and the brochure were primarily sent to the members of the Ontario Water-Skiing Association, which numbered something less than 2,500. It is probable that approximately that number of copies of the advertisement and brochure were distributed to the public.

32     If 10 per copy were allowed to Mr. Athans, this would amount to $500 for the copies of the drawings appearing in both publications. This figure approximates 10% of the gross receipts of the camp for 1975. I acknowledge that these are arbitrary amounts, but having regard to all the circumstances, I consider that it would be fair to Mr. Athans and to the defendants to award damages in the amount of $500.

33     There will, therefore, be judgment in favour of the plaintiff, as against both defendants, jointly and severally, for the amount of $500.

34     The defendant, C.A.C., brings third party proceedings for contribution and indemnity against the defendant, I.D.L., and I.D.L. claims contribution and indemnity over against C.A.C. Both defendants, as against each other, rely on the Negligence Act, R.S.O. 1970, c. 296. I find that Mr. Connett, in retaining I.D.L. in its capacity as a public relations firm, for the purpose of preparing the promotional material for the camp operation, did so in reliance upon the expertise of I.D.L. in the field of public relations. I.D.L. held itself out as having this expertise. Although Mr. Connett had some nodding acquaintance with commercial promotion in his former association with a tobacco company he, nevertheless, relied on I.D.L. for all aspects of the proposed promotion. He was told by Mr. McCullough that any releases required would be the responsibility of C.A.C.; but when, upon being presented with the art mechanicals incorporating both the copy and the artwork for the proposed brochure and advertisement, he inquired as to the source of the artwork, and discovered that it was the Athans photograph ex. 18, he was told that no release was necessary because it was a stylization. He relied upon this assertion made to him by Mr. McCullough. While I.D.L. is not competent, nor does it hold itself out as competent, to give legal advice, it is reasonable that Mr. McCullough should assume that I.D.L. was experienced in situations in which the question of obtaining a consent or a release for material to be published, and would, if necessary, obtain legal advice in the first instance. If this was not the pattern to be followed, it was incumbent upon I.D.L. to inform Mr. Connett that the legal position had not been submitted to solicitors, and to warn him that he should protect himself. Instead of doing this, Mr. McCullough advised him that there was no problem. In giving this advice, Mr. McCullough was negligent and, in my opinion, I.D.L. must bear the responsibility for that negligent statement: see Hedley Byrne & Co. Ltd. v. Heller & Partners Ltd., [1963] 2 All E.R. 575; and Allan v. Bushnell T.V. Co. Ltd.; Broadcast News Ltd., Third Party, [1969] 1 O.R. 107, 1 D.L.R. (3d) 534.

35     The defendant, Canadian Adventure Camps, as the plaintiff in the third party action, will have judgment against Ideas Diversified Limited, for contribution and indemnity in respect of the damages that I have awarded to the plaintiff.

36     The plaintiff also claims an injunction to restrain future use of Mr. Athans’ image. On the evidence, there is no reasonable apprehension that the defendants will do so and in the circumstances, this remedy is not appropriate.

37     It remains to dispose of the question of costs. Counsel have requested an opportunity to speak to the matter and may do so at a convenient time.

Judgment for plaintiff.

By 1RadicalOne (Own work) [Public domain], via Wikimedia Commons

By Shaya Silber

A common question in copyright law is how much reproduction or use of a work is considered copyright infringement? In the case of music, The Supreme Court of Canada  (SCC) recently shed some light on this question in SOCAN v. Bell Canada.

Many online music stores offer the opportunity for visitors to listen to a sample of a song before purchasing that song. The samples are typically around thirty seconds. In the past, the copyright owners of the music (either artists, record labels, or collectives who collect royalties on behalf of owners), demanded payment for the use of a song regardless of how much of a song was available for listening. The operators of these stores took the position that the availability of the thirty second sample fell within the “fair dealing” (not to be confused with the American “fair use” doctrine) provisions of the Copyright Act, and were therefore not subject to royalty payments.

The relevant section of the Copyright Act (as it was at the time of the case) read:

Research or private study

29. Fair dealing for the purpose of research or private study does not infringe copyright.

Criticism or review

29.1 Fair dealing for the purpose of criticism or review does not infringe copyright if the following are mentioned:

(a) the source; and
(b) if given in the source, the name of the(i) author, in the case of a work,
(ii) performer, in the case of a performer’s performance,
(iii) maker, in the case of a sound recording, or
(iv) broadcaster, in the case of a communication signal.

The task before the Supreme Court of Canada was to determine whether the music samples fall within the fair dealing provisions of the Copyright Act.

The Court set out a two step test to determine what constitutes fair dealing. First, the SCC asked whether the situation fell within the definition of “research” or “private study”. Second, the SCC asked whether the usage was “fair”.

SOCAN asked the SCC to define “research” in a narrow manner (for example, defining it narrowly would limit the situations that could be considered “research” to scientific research).  The SCC rejected this idea, and defined “research” in broader terms. The decision stated that these previews allowed visitors to conduct research to determine which music to buy. The sample allowed the purchaser to confirm the song that was about to be purchased.

In regards to determining whether the usage was “fair”, the SCC examined the six factors to be used in fair dealing assessments (the purpose, amount, character, alternatives, nature, and effect – click here for further information on “fair dealing”).  After examining these factors, the court confirmed that the usage did not have an adverse effect on the music that would justify a narrow interpretation of the fair dealing provisions.

The court ultimately applied a broader interpretation to “research” in the fair dealing provisions and therefore allowing thirty second previews of songs.

https://www.flickr.com/photos/azrainman/1003163361/in/photolist-2wDtw2-5xtiGh-7PBNhi-ayMkd1-9Yx1Jn-781dTA-nSvDgi-aBgfi7-5Us16p-ajfM3h-5weRaZ-oKikHS-qGs9UM-8RVeSN-bBi4mF-7rvhF-d8CnT5-5bprAc-5xtiH5-eNkwbA-qPKMFX-MAwA3-oDyutU-fMNjJ2-28caBX-nhZCGs-5G88VK-oq5qqD-6b3vUA-6aYkZp-nU82wz-hyHRSr-bQLeQ8-7PBNmR-9YzU1L-eew1QJ-5xoVf2-eevZ3y-bwKi8w-a2KGD4-eevZ7f-8rPKHx-68E4nZ-p5WsJk-oKid2u-m7gM9V-7PFM3J-6bNPGm-27djq-4xHtMJ

by Shaya Silber

Fair dealing has always been a hot topic in copyright law. The line of what is permissible and what is not permissible is unclear in many circumstances, making this an area of law that is constantly debated. One of the more contentious fair dealing provisions, is the right to use copyrighted works for the purpose of “research or private study.”  Ideally, copyright owners would like to be paid for every use of their works, and try to narrow the definition of what is considered research and private study. On the other hand, students, professors, and educational institutions would prefer a broader interpretation, thereby allowing broader use of copyrighted materials.

The Supreme Court of Canada (SCC) has settled some of this debate in Alberta (Minister of Education) v. Canadian Copyright Licensing Agency. The SCC was asked whether copying materials for classroom use was considered fair dealing. The SCC found that such use did fall within the definition of Fair Dealing in the Copyright Act and was therefore permissible.  However, the SCC did outline certain qualifiers, and offered some clarification into the “fair dealing”.

The SCC first asked two questions. The first question was whether the use fell into one of the categories of fair dealing (click here for a discussion on fair dealing). The second question asked whether the usage was fair.

In determining whether the usage was fair, the court examined a variety of factors, including:

  • The amount of the use: here the court examined the amount that was copied in comparison to the entire work; and
  • Alternatives to the use: the SCC found that requiring students to purchase an entire book would be impractical where only a small portion of it was required.

Another interesting part of the decision was the court’s examination of who used the work, rather than who did the copying.  For example, the SCC found that if a teacher makes copies of an article for his/her students, the teacher would not be infringing either. Requiring an entire classroom of students to individually make their own copies is simply not practical.

The Supreme Court clearly signaled its willingness to give the Fair Dealing provisions in the Copyright Act an expansive interpretation.

By No machine-readable author provided. Scindo assumed (based on copyright claims). [Public domain], via Wikimedia Commons

By Shaya Silber,

Copyright law protects the expression of ideas. The expression of the idea must be in a fixed form (i.e. it must have some permanency). For example, let’s say I have an idea to a story. I then tell my idea to a friend of mine, the idea would not be protected by copyright law because although I expressed my idea, it has no permanency.  It is not fixed.   Now, let’s say my friend goes and writes down the idea, technically my friend owns the copyright, because he/she was the first person to express the idea in a fixed form.

Section 1 of the Copyright Act automatically grants protection once a work is expressed in a fixed form. A “fixed form” can mean a variety of things. It can be handwritten, emailed, spoken into a voice recorder and so on.

There are no formal requirements to receive copyright protection. As long as the work is original and fixed it’s automatic. However, depending on what you are trying to protect, it may be advisable to take certain steps to protect your work. In the event that your ownership is ever challenged, it is better to have something concrete to rely on as proof. You may rely on the testimony of a witness who viewed the work at a certain point in time, but there are more reliable steps you may take.

Copyright Registration

There are many ways to do this. Here are a few examples. The first, and possibly the best method is registering your work with the Canadian Intellectual Property Office (CIPO).  Registration is not free, nor is it necessary in order to obtain copyright protection.  However, registering your work with CIPO creates a rebuttable presumption of copyright ownership – something the other methods lack.   This means that you are the presumed copyright owner. Anyone wishing to challenge your ownership, bares the burden of proof to demonstrate otherwise.

When registering, all you need to submit is the title of work, the type of work, and some other information depending on the nature of the work (date of first publication, location of first publication etc.).  This is an inexpensive process that one of our copyright lawyers can help you with.

Once you register, the Copyright Office will send you a certificate of registration and your name will be available in a publicly searchable database.

Mailing a Copy of the Work to Yourself

Another popular method is to mail a copy of the work to yourself and keeping the envelope sealed.  I do not know of any case where this method was actually held up in court.  It is not recommended that someone do this as their only method of proof.  This method could be used in conjunction with other methods.

Notarized Copies

You may also have the work notarized.  Each page of your work will be signed and stamped by a notary public, which demonstrates that a notary public has verified the existence of the work, and the time of verification.

 

Ontario High Court of Justice

O’Brien J.

Judgment: December 8, 1982

1 O’BRIEN J.:—The application in this motion relies solely on s. 12(7) of the Copyright Act, R.S.C. 1970, c. C-30, and in particular that part which gives the author the right to restrain any distortion, mutilation or other modification of his work that would be prejudicial to his honour or reputation.

2 The distortion or modification complained of is that of attaching ribbons to the necks of the 60 geese forming a sculpture known as “flight stop”, a work of the plaintiff sold to the defendants and paid for by them and a Wintario grant.

3 The geese were be-ribboned by the defendants without the knowledge or consent of the plaintiff. The plaintiff, an artist of international reputation takes the position that the work as presently displayed is prejudicial to his honour and reputation. Counsel advise there are no cases which interpret s. 12(7) of the Copyright Act.

4 The defendants argue that the plaintiff’s complaint is not one which comes within s. 12(7) but if it does, that section is unconstitutional. The Attorneys-General of Canada and Ontario have been notified of this application and hearing but are not intervening at this stage of the proceedings. The defendants further submit s. 12(7) should be looked at in a manner similar to a libel or slander action. I am not persuaded the section of the Act is unconstitutional. In my view the use of the word “independently” in s. 12(7) merely indicates the rights conferred by that section are in addition to the author’s right of copyright. I reject the argument that I interpret s. 12(7) as suggested, in my view, the section gives rights greater than those based on libel or slander.

5 It is conceded that the sculpture is a “work” within the meaning of the Copyright Act. I believe the words “prejudicial to his honour or reputation” in s. 12(7) involve a certain subjective element or judgment on the part of the author so long as it is reasonably arrived at.

6 The plaintiff is adamant in his belief that his naturalistic composition has been made to look ridiculous by the addition of ribbons and suggests it is not unlike dangling earrings from the Venus de Milo. While the matter is not undisputed, the plaintiff’s opinion is shared by a number of other well respected artists and people knowledgeable in his field.

7 The plaintiff does not seek to interfere with the Christmas advertising campaign of the defendants other that to have the ribbons removed from the necks of the geese.

8 I am satisfied the ribbons do distort or modify the plaintiff’s work and the plaintiff’s concern this will be prejudicial to his honour or reputation is reasonable under the circumstances.

9 Application granted. Ribbons to be removed by Monday, December 6, 1982 at 9 a.m. If the matter goes no further costs to the plaintiff in any event. If the matter proceeds, cost at discretion of trial judge.

By text modified from SOPA to COPY by Akaniji, copied from the work by user:Arch [CC BY-SA 3.0 (http://creativecommons.org/licenses/by-sa/3.0)], via Wikimedia Commons

by Shaya Silber

[please note that this article contains references to Bill C-11.  Bill C-11 is now a law that is full force and effect]

The role of Internet Service Providers (ISPs) in facilitating copyright infringement has been a controversial topic since the beginning of the world wide web.  The Canadian government is expected to amend the Copyright Act to address this issue.

C-11 (the proposed amendments to the Copyright Act) contains provisions that are aimed at curbing copyright infringement.  One of these measures is known as the Notice-and-Notice (N&N) provision. This modification to the Copyright Act (if it’s passed into law) provides the opportunity for a copyright holder to send a notice of copyright infringement to an ISP such as Bell or Rogers.  The ISP then forwards the notice to the user who is allegedly engaging in infringing activity. (The N&N is different from the current practice in the US under the Digital Millennium Copyright Act or DMCA).  The US currently has what’s known as Notice-and-Takedown (N&T). Essentially, once a copyright holder submits a notice of infringement and swears that they are the owner and that they are making the claim in good faith, the ISP is required to remove the content in order to avoid liability themselves.

The N&N must contain information such as the date and nature of the infringement. Furthermore, ISPs are required to keep a record of the notices that they have forwarded, as well as the identity of the infringing individual. The ISPs are required to keep a record of this information, in the event of future infringement proceedings. If the ISPs do not maintain such records, they may be liable to pay damages of up to $10,000.

However, many ISPs have been adhering to a sort of voluntary N&N regime for the last decade or so. There are questions about its efficacy. The data is not clear as to whether the individuals who are receiving the notices are actually discontinuing their illegal activities.  In addition, there are privacy concerns  about what type of information the ISPs are providing about their users in response to these requests.

An N&N regime is certainly less strict with respect to suspected copyright infringement than its American counterpart of N&T.  In the N&T, ISPs remove the content without investigating who actually owns the rights.  In the N&N model there is no obligation for an ISP.

 

 

http://pixabay.com/en/facebook-connection-social-network-76531/

By Shaya Silber and Gil Zvulony, Toronto Internet Lawyers

What are the rules of ownership for content that users upload on social media sites, such as Facebook and Twitter?

Once an idea is expressed in a fixed form, copyright ownership is immediately vested in that work. The copyright protection is granted under the Copyright Act, by default.  No registration is required (though copyright registration may be worthwhile in some circumstances).  Therefore, when you take a picture, record a song, write a note or produce any other kind of content, you are automatically granted copyright ownership in that work (assuming it has not already been created by someone else, in which case the person who expressed it first in a fixed form would be the copyright owner, unless done in the course of employment).

Many people don’t bother to read the terms and conditions when signing up for a social media site such as Facebook. The terms and conditions govern the legal relationship between you and the service provider.  Terms of Use agreements are legally binding.   In many instances, when you agree to the terms, you are granting broad permission to use your content. For example, when a photographer, whose photographs may be a valuable source of income, uploads the photographs onto Facebook, that person is actually granting permission for Facebook to use the photos in a relatively broad manner.

Let’s examine the legal terms and conditions on the popular site Facebook.  Facebook’s terms (Date of Last Revision: April 26, 2011) regarding the “Sharing” of your content states:

You own all of the content and information you post on Facebook [..]

Facebook is stating here that you retain the copyright ownership that you have in any material that you upload to Facebook.  This might lead some people to believe that they retain all their rights with respect to the content they upload.  That is not the case.  All this clause really says is that Facebook cannot stop you from using the content that you provide.

The permissions that you give Facebook are granted in the following clause:

For content that is covered by intellectual property rights, like photos and videos (“IP content”), you specifically give us the following permission, subject to your privacy and application settings: you grant us a non-exclusive, transferable, sub-licensable, royalty-free, worldwide license to use any IP content that you post on or in connection with Facebook (“IP License”).

This section outlines the permission that you give Facebook for your materials. You grant Facebook the “non-exclusive” right to use the material. This makes sense since you are retaining ownership over the content, Facebook’s rights to your content act in conjunction with your rights to the content, thus Facebook’s non-exclusivity.

What Facebook can do with your works is unclear. The Terms contain the word “use” which is very broad. “Use” can mean any number of things, such as selling your photographs, or publishing your status updates in a book or magazine.

Facebook’s Terms go on to say that you give Facebook the “transferable, sub-licensable, royalty-free, worldwide license to use any IP content that you post on […] Facebook.”

You grant Facebook the right to “transfer” and “sub-license” your content. Facebook’s right to “use” your content is a transferable right which Facebook can transfer to any party they wish. Not only can Facebook sell your photograph, they can sell the right to sell it.  In other words they can sell your photo to a stock photo agency who can then sell it to their customers.

Finally, the rights to your content that you grant Facebook are royalty-free. This means that Facebook can use all of your content for free. Facebook does not have any financial obligation to you.

All of the above permission that you grant Facebook lasts until you delete the content or close your account, “unless your content has been shared with others, and they have not deleted it.” Therefore, if you or a friend share content that you upload to Facebook, and you wish to subsequently delete your account, Facebook still retains the right to use that content as long as it still remains on an existing member’s profile.

Interestingly enough, Facebook’s Terms of Use do not have a waiver of Moral Rights/Author’s Rights clause.  This means that Facebook would be restricted in certain kinds of modifications of photographs and other content.  It also means that in most circumstances an author or photographer name could not be removed from a work.  See our article on Moral Rights/Author’s Rights to understand this right.

Common social networking contracts can be daunting and confusing.  Most people do not bother taking the time to review a website’s terms of use.   Fortunately, we can help.  If you have any questions regarding the terms of use for any online service that you use, please do not hesitate to contact us for some confidential legal advice.