(Sandra Richmond is a member of the KNOWlaw group of the Toronto law firm McMillan Binch. This article was prepared with the assistance of McShane Devlin Jones.)

It might be cynical to think that large commercial interests were the driving force behind recent changes in American copyright law, but it’s certainly true that Canada’s copyright protection now appears to be out of step with many other countries.

With the 1998 amendments to its copyright legislation, the u.s. extended the term of copyright protection by an additional 20 years. Generally, copyright works are now protected for a term equal to the author’s lifetime plus 70 years. Works ‘made for hire’ now have protection (often called the ‘corporate copyright’) for 95 years from the date of publication or 120 years from the date of creation.

In one leap, these amendments gave copyright holders in the u.s. among the longest copyright terms in the world. The u.s. matched the 70-year term that Europe has, and provides an even longer corporate copyright term (95 or 120 years) in some circumstances.

By contrast, Canada (along with several other countries, including Japan) has a basic term of copyright protection equal to an author’s lifetime plus 50 years. In Canada at least, the term of copyright in certain types of works, such as motion pictures, is less clear. The term is still based on the lifetime of the author, but it has never been decided who the author – and first copyright owner – is. It could be one or more of the producer, director, editor and writer, or the production company.

And there’s no indication that Canadian laws will be changed any time soon to match the American amendments.

Why have a shorter or longer term?

The term of copyright protection is meant to balance the interests of creators with the interests of society. A longer period of protection presumably provides incentive for people to create works because there will be a longer period of commercial exploitation for the authors and their heirs.

A shorter copyright term means that works will enter the public domain sooner, allowing people other than the copyright holder (for example, film and television producers) to use them to create other new works and to exploit them without having to obtain permission.

Disney and Gershwin

While two of the stated goals of the American amendments were to foster more creativity and to harmonize with European law, those benefiting most immediately from the 20-year boost in protection seem to be the current copyright holders whose terms were about to expire.

Several large entertainment companies were acutely aware of the looming expiration of their own copyrights and actively lobbied American lawmakers to pass the amendments. Notable potential victims included Mickey Mouse (copyrighted in 1928 as Steamboat Willie), who was due to move into the public domain in 2004, and George Gershwin’s Rhapsody in Blue, due in the public domain at the beginning of this year.

Both Disney and the Gershwin Family Trust had considerable interest in the issue. Last year (according to its annual report), Disney had combined revenue of more than $9 billion from its theme parks and resorts division and its consumer products division, both of which are heavily dependent on copyrighted characters like Mickey Mouse. And American Airlines reportedly paid an estimated $500,000 to make Gershwin’s Rhapsody In Blue its theme song.

Exploiting popular copyright material can be lucrative – the Rogers and Hammerstein Organization purportedly earns $10 million annually in licensing and royalty fees.

On the other hand, large-scale users of public domain works, like schools, choirs and non-profit organizations (not to mention film and television producers – including Disney), will now have to wait another 20 years to use material that would otherwise soon have come into the public domain.

(One source estimates that schools in the u.s. will have to spend $345 million over the next 20 years if they want to use materials that they would have been able to use for free if the law had not been changed.)

Different protection

But if copyright terms vary in different countries, how can a producer or writer tell when a work goes into the public domain? And where?

It seems that a work can be in the public domain in one country and protected by copyright in another. Theoretically, then, Mickey Mouse will be in the public domain in Canada in 2004. So could a Canadian producer use Mickey Mouse in a Canadian production?

While that may be an infringement of copyright in the u.s., it likely would not be an infringement in Canada. Nor would it breach Canada’s commitments under international copyright treaties.

Canada’s Copyright Act gives to citizens and residents of treaty countries (including corporations with headquarters in treaty countries) only the same copyright protection that it extends to their Canadian counterparts.

Under the various international conventions and agreements to which Canada is a party, Canada is bound only to guarantee a minimum term of protection to copyright works. This means that for works that would not otherwise be subject to our Copyright Act, Canada has to guarantee a minimum term of protection spanning the author’s lifetime plus 50 years or a minimum of 50 years for collective or corporate works.

So it appears that our Canadian producer might be able to use Mickey in Canada without infringing the American copyright. Officials at Canadian Heritage’s Copyright Policy branch, which is responsible for monitoring developments in the area of copyright, admit that it would be possible to exploit – in Canada – Mickey and other figures and properties that fall into the Canadian public domain in the next several years.

In real life, however, any producer should think twice about doing this. If the property is that valuable, the copyright holder will have a significant interest in protecting it. An American copyright holder might try to obtain an injunction or other relief under American law against a Canadian ‘infringer’ and attempt to have that judgment enforced in Canada.

And with properties like Mickey Mouse, there will likely be other protections in place – like numerous trademark registrations – that may be used to stop ‘infringing’ activity.

Also, in practical terms, using material that’s in the public domain in Canada but not in other countries may leave you with a pretty limited market. If the production appears on Canadian television that is broadcast or spills across the border or if it’s uploaded on a Canadian Internet server to which Americans have access, the American copyright holder could argue that even if copyright in Canada is not being infringed, it is being infringed in the u.s.

Although not yet in force, the World Intellectual Property Organization Copyright Treaty might eventually prohibit using technological means in Canada as a launching pad for otherwise copyright-infringing products to American markets on the basis that the producer would be doing indirectly what it cannot do directly in the u.s.

While it should be fairly easy to identify and avoid prominent materials like Mickey Mouse, it’s important to be careful about relying on any material being in the public domain as long as there are different terms of copyright in the producer’s country, the author’s country and the countries in which the production will be exploited.

Finding out too late that the title song of your film, or the novel on which your series is based, is only in the public domain in Canada and means you might not be able to distribute your production anywhere else without obtaining permission could be a nasty surprise.

This is not a new problem for Canadian producers, but the change in the copyright term of one of the largest markets for Canadian productions is a significant consideration. And while the constitutionality of some of the American amendments is being challenged, so far that challenge has been unsuccessful. *

(This article contains general comments only. It is not intended to be exhaustive and should not be considered as advice on any particular situation.)