Canada’s Copyright Act has been characterized as “a balance between promoting the public interest in the encouragement and dissemination of works of the arts and intellect and obtaining a just reward for the creator.” Indeed, decisions by the Supreme Court of Canada have indicated a move away from an “author-centric view which focused on the exclusive right of authors and copyright owners to control how their works were used in the marketplace” to a system where users’ rights are recognized as “an essential part of furthering the public interest objectives of the Copyright Act.”
There are generally two ways in which users’ rights are balanced with the proprietary rights of the creator. The first source of users’ rights stems from the judicial limitations placed on the degree of control creators have over “derivative works,” which are “separate copyrightable works from the original copyrightable works upon which they are based.”
Courts in Canada are prepared to allow users to make or exploit derivative works in order to prevent “excessive control by holders of copyrights” which would “unduly limit the ability of the public domain to incorporate and embellish creative innovation in the long-term interests of society as a whole.”
The second source of users’ rights stems from the principle of fair dealing, which “allows users to engage in some activities that might otherwise amount to copyright infringement.” While s. 3 of the Act provides the bundle of exclusive rights (or reproduction rights) to which a copyright owner is entitled, the fair dealing provisions within s. 29 provide exceptions to the general prohibition on reproduction, and can serve as a defense to an allegation of infringement.
A comparison of the Canadian concepts of fair dealing and “derivative works” with equivalent provisions of the U.S. Copyright Code will highlight the broad protection afforded to users of pre-existing works in Canada.
PART 1: Derivative Works in the U.S. and Canada
“Derivative works” under U.S. copyright law
The U.S. Copyright Code provides a formal definition of “derivative works,” which reads:
A “derivative work” is a work based upon one or more pre-existing works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship, is a “derivative work.”
In addition, s. 106(2) of the U.S. Copyright Code confers upon copyright holders the “exclusive right” to “prepare derivative works based upon the copyrighted work.”
“Derivative works” under Canadian copyright law
The Copyright Act does not contain a definition of derivative works. Instead, the Act enumerates a list of derivative works that may be produced exclusively by the original owner. S. 3(1) of the Act grants the owner of original work the right:
To publish any translation of the work;
To convert a dramatic work into a novel or other non-dramatic work;
In the case of a novel or other non-dramatic work, to convert it into a dramatic work;
In the case of an artistic work, to convert it into a dramatic work, by way of performance in public or otherwise;
In the case of any literary, dramatic or musical work, to make a sound recording or cinematographic film of the work;
In the case of any literary dramatic, musical, or artistic work, to reproduce, adapt and publicly present the work as a cinematographic work; and
In the case of a work in the form of a tangible object, to sell or otherwise transfer ownership of that object for the first time.
Infringing derivative works
The production of any of the above works without the consent of the owner is deemed to be an infringement of the creator’s copyright pursuant to s. 17(1) of the Copyright Act. However, without an express definition of “derivative work” under the Act, “the degree of protection given to an infringing derivative work is unclear.”
At present, the leading decision on the scope of protection afforded to derivative works is Théberge v. Galerie d’Art du Petit Champlain inc., wherein the Supreme Court of Canada (“SCC”) confirmed that s. 3(1) of the Copyright Act does “confer on artists and authors the exclusive right to control the preparation of derivative works,” but this control is limited to circumstances where there has been a “multiplication” (or reproduction) of the work.
Permitted derivative works
If a derivative work does not fall under one of the enumerated works noted above, the creator may be granted a separate copyright over the derivative work if it qualifies as a “literary, dramatic, musical or artistic work,” and meets the test of originality.
With respect to the first requirement, the words “literary,” “dramatic,” “musical,” and “artistic” are all defined in the Copyright Act and include within their definitions various derivative works. For instance, the definition of “artistic work” includes photographs and engravings, the definition of “dramatic work” includes cinematographic works, and musical works include sound recordings of such works.
The originality of a derivative work is measured by the author’s independent input into the existing work. Although “a mere copyist has no right to obtain a copyright in his work,” a work which his substantially derived from pre-existing material will be entitled to copyright if sufficient time, effort, labour and skill have been bestowed on it.
The application of this test of originality to derivative works varies with the nature of the work. For some derivative works, it will be a question of degree whether their production involved sufficient time, skill and energy. For example, courts have held that the determination of whether a new arrangement or adaption of an existing musical composition will be assessed on a case by case basis.
In other cases, the effort involved in transferring the underlying work to a different medium will by definition satisfy the statutory criterion of originality. For example, a translation of literary works, or an engraver’s tracing of an existing drawing are always considered the products of sufficient time, effort and skill, and therefore original literary works.
In the case of photographs of other artistic works, the Copyright Act deems the owner of the derivative work to be owner of the negative of the photo, rather than the person who takes the photograph. This suggests that the Act protects the technical skill associated with photography, rather than the artistic endeavour. It is therefore likely that all photographs will be protected as original works, “save perhaps a photograph replicating an existing photograph.”
In general, where a derivate work has been produced in the same medium as the underlying work it will be a question of degree whether sufficient time, energy and skill have brought into existence an original work. If a derivative work is produced in a different medium, the effort involved in transferring will, in itself, likely constitute sufficient independent contribution to produce an original work.
In Théberge, the SCC “made it clear that the broader U.S. concept of authorizing or prohibiting the creation of ‘derivative works’ was not applicable under the Canadian Act.” Indeed, case law confirms that Canadian copyright owners are granted limited protection over derivations of their works relative to the protection offered under the American system.
As mentioned, in Canada a copyright holder is able to claim the exclusive right to produce a derivative work only where the later work “reproduces” the original work or a substantial part of it. In Théberge, the court defined a “reproduction” as “the act of producing additional or new copies of the work in any material form.”
This narrow definition has been interpreted to apply only to instances of “multiplication” of the work. Although the court included within the definition of “reproduction” both ‘metaphorical copying,’ which includes reproductions of works onto other mediums (i.e. books to films), and transformations of works from two dimensions to three dimensions, the court maintained that there must be some multiplication of the work that takes place, such that the use increases the number of copies of the work.
Furthermore, the court held that a mere modification of a work by the purchaser which does not “prejudice...the honour or reputation of the author” was intended by Parliament to be within the user’s right. Turning to the facts of the case, the court refused to deem the transmission of ink from posters onto canvass to be an illegal ‘reproduction,’ as the ink transfer method left the previous canvas blank. The court concluded that the image had not been physically duplicated, and therefore not “reproduced.”
The American conception of “derivative work,” by contrast, contains a broader basis upon which creators can assert their rights over derivations of their work, thereby limiting the rights of users to modify and appropriate copyrighted work. There are two bases to support this view.
First, as noted by the court in Théberge, the definition of “derivative works” embodied in the American statutory language includes the particular words “any other form in which a work may be recast, transformed, or adapted.” These expansive words have no “precise counterpart in Canadian legislation.”  As such, the court was unwilling to read into the Copyright Act the general words “recast, transformed, or adapted” as a free standing source of entitlement.
Second, the U.S. Copyright Code expressly incorporates a definition of “derivative works” that includes uses involving productions of new works in addition to forms involving reproductions. The definition includes reproductions in the form of “sound recordings, art reproductions and pictures” in addition to novel creations such as “editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship.”
In Canada, by contrast, “courts have not given independent meaning to “produce” as distinguished from reproduce in s. 3(1) of the act. Rather the enumerated examples listed in the s. 3(1) of the act are “consistent with the notion of reproduction because they all imply the creation of new copies or manifestations of the work.”
However, the passing of the Copyright Modernization Act (2012’s Bill C-11) has expanded the scope of fair dealing by adding education, parody and satire to the list of enumerated uses under s. 29. The added uses have enabled a broader range of activity to satisfy the first stage of the fair dealing analysis. This in turn has required courts to undertake the CCH fairness analysis for a broader range of activities, thereby bringing the Canadian doctrine closer to the American system.
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 Copyright Act, RSC 1985, c C-42. [Copyright Act].  Théberge v Galerie d’Art du Petit Champlain inc,  2002 SCC 34 at para 30 [Théberge].  Society of Composers, Authors and Music Publishers of Canada v Bell Canada, 2012 SCC 36 at para 9 [SOCAN].  McKeown, John S, Fox Canadian Law of Copyright and Industrial Designs, 4th ed (Toronto: Carswell, 2009) at §4:5.  Supra, note 2 at para 32.  Supra, note 3 at para 11.  Giuseppina D’Agostino, “Healing Fair Dealing? A Comparative Copyright Analysis of Canadian Fair Dealing to UK Fair Dealing and US Fair Use” (2008) 53 McGill LJ 309 at 318.  US Copyright Code, 17 USC (2000). [U.S. Copyright Code].  Ibid., at § 101.  Ibid., at § 106(2).  Supra, note 1 at § 3(1)(a).  Ibid., at § 3(1(b).  Supra, note 1 at § 3(1)(c).  Ibid., at § 3(1).  Ibid.  Ibid.  Ibid, at § 3(1)(j).  Supra, note 4 at § 4:6.  Supra, note 2 at para 73.  Braithwaite, William J, “Derivative Works in Canadian Copyright Law” (1982) 20 Osgoode Hall LJ 191 at 194.  Supra, note 1 at § 2.  Supra, note 4 at §4:5.  Supra, note 20 at 198.  Redwood Music Ltd v Chappell & Co Ltd , RPC 109.  Supra, note 20 at 196.  Ibid., at 197.  Ibid., at 198.  Ibid.  Ibid.  Ibid., at 200.  Supra, note 4 at § 4:6.  Supra, note 2 at para 42.  Supra, note 2 at para 42.  Ibid., at para 47.  Ibid., at para 57.  Ibid., at para 70.  Ibid., at para 71.  Ibid.  Ibid., at para 73.  Supra, note 8 at § 101.  Supra, note 2 at para 49.
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