Jason S.T. Kotler is a lawyer at the Toronto law firm of McMillan Binch and a member of the firm’s KNOWlaw Group. This article was prepared with the assistance of Kate Krestow and Andrea Long.

It’s remarkably rare for the Supreme Court of Canada to hear a copyright case – it’s been 12 years since the last one.

Yet in this increasingly digital world, copyright, and who’s entitled to control it, has never been a more critical issue. So any guidance coming from our highest court needs to be heeded.

Ironically, the issue before the Supreme Court in Theberge v. Galerie d’Art du Petit Chaplain Inc. revolved around copyright pertaining to the static beaux arts – paintings and lithography reproductions – neither being digital by their very nature.

Shifting the balance in Canadian copyright law?

Traditionally, Canada’s copyright law tended to favor the creator or owner of a copyrighted work over the ‘users’ of a work, but this decision makes it clear that a balance must be struck.

The inherent struggle in granting copyright (and a monopoly right in a work) is trying to maintain a fine balance between the rights of the copyright owners/creators and those of the public and society at large. Some are seeing this decision as a swing of the pendulum more in favor of the public’s rights over a creator’s rights.

The facts of the case

This case was brought before the court because an internationally known Quebec painter, Claude Theberge, assigned to a publisher the rights to the sale of paper reproductions of his paintings. Some galleries subsequently purchased posters from the publisher and transferred the images to canvas for resale at a much higher price than the original posters were being sold for.

The transfer process used by the galleries literally lifted the physical ink off each poster using chemical resins and applied the image intact to the canvases, leaving the original poster paper blank. The evidence also suggested that, at least in some instances, the artist’s name was deleted and was no longer on the canvas versions of the posters when they were offered for resale.

Theberge was outraged and sued, requesting an injunction and arguing that he did not assign to the publisher the right to make reproductions in any other media.

Initially, he was successful in attaining an injunction to stop the process and, with court approval, seized the works transferred to canvas. The seizures were obtained on an interlocutory basis – without a trial having taken place. The galleries appealed and, in a closely split decision, a divided 4:3 Supreme Court held that the seizures were without merit.

Why the creator lost

After a long and detailed analysis of copyright law, the majority of the court found that because the technique used to transfer the images did not create new or multiple copies, technically speaking, a ‘reproduction’ had not taken place. According to the Copyright Act, there can be no infringement without there first being a reproduction of the original work.

Artist vs. public rights

While the reasoning behind the court’s actual decision is important to anyone who deals with copyright, the most influential aspect of the Theberge case may ultimately be the philosophy towards the control of copyright displayed by the majority of the court.

Justice Binnie, speaking for the majority, stated that the ‘proper balance among…public policy objectives lies not only in recognizing the creator’s rights but in giving due weight to their limited nature….Once an authorized copy of a work is sold to a member of the public, it is generally for the purchaser, not the author, to determine what happens to it.’

The basis for the court’s reasoning was that the over-emphasis of the rights of copyright owners would damage creative innovation and damage long-term societal interests.

In language that is music to the ears of users of copyright, Justice Binnie stated: ‘excessive control by holders of copyrights and other forms of intellectual property may unduly limit the ability of the public domain to incorporate and embellish creative innovation in the long-term interests of society as a whole, or create practical obstacles to proper utilization.’

Moral vs. economic rights

The case is also important for the court’s views on moral rights.

The majority decision of the court drew a very clear distinction between moral and economic rights of creators. Economic rights are based on copyrighted works being articles of commerce whose dividends reward the owner, and the author can only demand that these rights be protected if the author has not assigned them to someone else.

Moral rights, on the other hand, belong solely to the artist and are infringed whenever the work is modified to the prejudice of the creator or if the artist is not given due credit. Moral rights protect the reputation of the artist and are regarded as an extension of the artist and his or her artwork. Moral rights can constrain users from changing or tampering with a work in a way that harms the reputation of the work’s author, and from removing the author’s credit.

Canadian copyright law has traditionally been more concerned with economic rights rather than moral rights, and there has been very little guidance from any Canadian courts on moral rights issues.

In this case, it was the majority’s view that Theberge’s real complaint was more properly characterized as an alleged infringement of his ‘moral rights.’

The court held that the evaluation of whether a modification of a work is to ‘the prejudice of the honor or reputation of the author’ calls for the exercise of a good deal of judgement, and refused to uphold the seizure that had been obtained without the benefit of a full trial.

While the court left it open for a trial court to make a final determination of the moral rights infringement issue in the Theberge case, it would seem that obtaining a seizure before a full trial in future moral rights cases may now be much more difficult.

Worthy of further consideration

The specific fact scenario of the Theberge case is unlikely to crop up again in future court cases.

But the philosophy displayed by the Supreme Court in the Theberge case undoubtedly will be cited whenever anyone needs the court they’re facing to tip the balance of competing copyright interests away from the author and in favor of the user.

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

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