Andrew Tolomizenko is corporate counsel for a large

production company and provides legal services to outside clients in the television commercial and film industries.

What do you do when the owner of a building demands money because his/her building was captured in the background of your spot? Politely advise him/her that the law allows you to film architectural works provided that you do not affect prejudicially the owner of the work.

Unfortunately, when the building owner threatens to seek an injunction against your client from airing your spot, it may be wiser to pay the building owner some compensation instead of enforcing your rights. Better still, and as is the standard practice in the industry, obtain the building owner’s consent prior to filming his/her building and the issue will never come up.

Section 2 of the Canadian Copyright Act defines an architectural work as ‘any building or structure or any model of a building or structure’. Thus, there is no distinction between commercial buildings and residential buildings. Architectural works are considered ‘artistic works’ and, therefore, are afforded copyright protection. This includes the right to prevent reproductions of the work in any material (fixed) form, which includes film. However, not every architectural work is copyrightable.

Before any work can attract copyright protection it must satisfy the originality requirement. This requirement has been interpreted to mean that the work must originate from the author’s own skill, labor, and experience. So, in the case of a simple block building, designed in the shape of a box, there will be no copyright protection since there is no originality in that design.

Having said all this, our legislature was smart enough to realize that making it illegal to photograph every copyrightable architectural work in Canada would be impossible to enforce. Not to mention how disappointed tourists would be when they find out that their pictures of the CN Tower and SkyDome are illegal. And so, subsection 32.2 (1) (b) of the Copyright Act was enacted. That subsection states that, ‘It is not an infringement of copyright for any person to reproduce in a…photograph or cinematographic work…an architectural work…’

This right to reproduce should be read together with subsection 27 (2), which states that it is an infringement of copyright for any person to distribute a copy of the work to such an extent as to affect prejudicially the owner of the copyright. This is often not the architect, but the owner of the building. Unfortunately, there is very little case law that assists in defining when an owner of the copyright has been affected prejudicially.

One of the few cases addressing this issue is a 1981 Federal Court decision known as Therrien v. Schola Inc. In that case, a photograph of Therrien’s sculpture in Schola’s advertising brochure identified the sculpture as ‘intermediate’. This was found to be humiliating to Therrien and, therefore, it affected him prejudicially. There is no case law on the application of this section to an architectural work. Consequently, it may be that section 32.2 (1) (b) is a complete defence to claims of copyright infringement for filming an architectural work; however, I would advise production companies to exercise some discretion in this area. For example, it might not be prudent to film a commercial for exercise equipment in front of a large hamburger chain’s headquarters.

Outside of the Copyright Act, there is the Industrial Design Act and the Trade Marks Act to consider. The Industrial Design Act is intended to protect articles of manufacture; however, the definition of ‘design’ in the Industrial Design Act is sufficiently broad that it may include an architectural work. Further, industrial designs are protected under the Copyright Act (section 64 (1)). Accordingly, a creative argument, and a potential loophole, would be for a building owner to claim the building is an industrial design. If this argument is accepted, then the section 32.2 (1) (b) exclusion will not apply and the building owner can claim protection under the Copyright Act from any reproductions of the work in any material form. This scenario is unlikely since it would effectively defeat the intentions of the legislature in enacting section 32.2 (1) (b).

With respect to trademarks, a drawing of a building may be incorporated into someone’s trademark, however, the building itself is not registrable as a trademark. Notwithstanding, production companies and directors should be aware of trademarks and trade names attached to buildings, which cannot be filmed and aired without the trademark’s or trade name’s owner’s permission.

Finally, there are a number of U.S. decisions and a couple of Canadian decisions where the owners of buildings have argued that the filming or photographing of their buildings is an invasion of privacy or trespass to property. In all these decisions the courts of both countries have consistently held that it is not an invasion of privacy or trespass to property to film or photograph buildings that are situated in public places.

So, the next time your production encounters a disgruntled building owner demanding compensation for filming of his/her building, politely advise them that he/she is not legally entitled to any compensation (unless your spot has affected him/her prejudicially), and then negotiate a way to appease the building owner before he/she contacts the client.