An article written by Shantelle LaFayette, Lawyer, Norton Rose Fulbright
Bianca Pietracupa, Lawyer, Trademark Agent, Norton Rose Fulbright

The ability to conceive something original or unusual is the engine that drives creative industries. However, when it comes time to implement these new creative ideas, what steps should innovators take to ensure they are not infringing intellectual property rights? This can be of particular concern in artistic industries. It is therefore important for innovators to understand the nature and scope of copyright protection and how to avoid common pitfalls.

Copyright arises from creating an original literary, dramatic, musical or artistic work stemming from the exercise of the author’s talent and judgment. It confers upon the owner the legal right to reproduce and commercialize an original work, in whole or in part. These rights are set out in the Canadian Copyright Act (the “Act”), a federal statute. The Act also provides for certain rights that are applied to creative subject-matter not connected with the work’s actual author. These rights, known as “neighbouring rights,” include a performers’ performance of a work, sound recordings of a work and broadcast communication signals.

Copyright protection extends to a work that is expressed in some material form having more or less permanent endurance. The practical effect of this requirement is that copyrights are limited to the expression of ideas in a fixed manner (text, recording, drawing), rather than to the ideas themselves. Therefore, many different works can be created based on the same central idea; however, each fixed and original work would benefit from its own distinct copyright protection. Unlike other forms of intellectual property, the work is protected by copyright the moment it is fixed in material form. Registering a copyright is therefore unnecessary; however it can provide some benefits in the event of a legal dispute and could also make it easier for those seeking permission to use a copyrighted work.

When can copyright-protected work be used legally?

The best way of ensuring you are using a copyrighted work legally is to obtain the explicit permission or consent of the author or copyright owner. With the exception of the moral rights of authors, which are non-transferable and can only be waived by the author, the copyright owner can assign their rights or grant a license to use their rights to another person.

To obtain consent, it is necessary to identify the copyright owner. As a general rule, copyright is typically granted to the author of a work. However, the copyright of a work created by an author during the course of his or her employment belongs to the employer unless otherwise stipulated. For the author to lose the ownership of the copyright to his or her employer, there needs to have been a clear “employee – employer” relationship. Authors who create their work while working as a consultant or subcontractor will typically be deemed the copyright owner.

Another avenue to explore is to verify if your use of a copyrighted work falls under one of the many exceptions provided for in the Act that limit the instances where copyright owners can require payment in exchange for using their copyright-protected work in recognition that certain uses of copyright-protected works are beneficial for society.

Fair dealing (also known as fair use) is one such exception, where copyrighted works can be used without first obtaining permission from the copyright owner. In this sense, fair dealing is a defense against claims of copyright infringement. However, not all use is considered fair. There is no fixed test to determine whether use of a copyrighted work constitutes fair dealing. The Supreme Court of Canada has articulated six non-exhaustive factors that can be considered when trying to determine if the dealing is fair.

  1. The Purpose of the Dealing
    The law limits fair dealing to use of a copyrighted work for purposes of research, private study, education, parody, satire, criticism, review and news reporting‒ the underlying rational being that the public benefits from these activities and such benefits should not be restricted by copyright. Some examples of fair dealing can include writing a review of a novel, showing a short clip of a musical performance for purposes of critique, quoting from an article in a news report, and copying a short poem for use by a teacher in a lesson.
    There are some formalities that must be adhered to when replying on a fair dealing defense. Use for the purpose of criticism, review or news reporting must indicate the source of the copyrighted work and the name of the author, performer, maker of the sound recording or broadcaster, as the case may be.
  2. The Character of the Dealing
    This factor deals with how the works were dealt with. If one copy of the work is used for a specific purpose, this will more likely be considered fair rather than if many copies of the works are being distributed on a large scale.
  3. The Amount of the Dealing
    The quantity of the work copied is a factor to be considered in determining whether the use is fair. However, this factor depends on the nature of the work. For some works, it may be possible to deal fairly with a whole work, such as copying a short poem for use by a teacher as discussed above. Criticism or review of certain works, such as photographs or paintings, may be difficult to do without copying the whole work. Therefore, the purpose must also be considered when evaluating the amount of the dealing.
  4. Alternatives to the Dealing
    The existence of alternatives to utilizing the copyrighted work will affect a determination of fairness, such as the existence of a non-copyrighted equivalent of the work that could have been used instead of the copyrighted work. For example, using royalty-free music in a lesson on musical style may be equally effective to using a copyrighted pop song.
  5. The Nature of the Work
    The nature of the work considers qualities of the work such as whether it was previously published or whether it was confidential. The Supreme Court notes that if a work has not been published, the dealing may be more fair in that its reproduction with acknowledgement could lead to a wider public dissemination of the work, one of the goals of copyright law.
  6. Effect of the Dealing on the Work
    Lastly, the effect of the dealing on the work is another factor to be considered. If copying the work will affect the copyright owner’s ability to commercialize his or her work, this will tip the scale toward a finding that the dealing was unfair.

Different weight may be awarded to these factors depending on the factual context of the use of copyrighted works. In some contexts, there may be other factors than those listed above that may be considered. Ultimately, what is fair will depend on the particular circumstances of each case and a balancing of the interests of the copier and the author or copyright owner.

If you find yourself facing copyright infringement allegations, or if you want to ensure your use of a copyrighted work falls into one of the exceptions provided by the Act, a qualified intellectual property lawyer can help you bridge the gap from creation to commercialization of your intellectual property.