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The Challenge of the Unlocatable Copyright Owner – Checklists!

As this blog has documented on numerous occasions (first; second; third), Canada’s Copyright Act contains an “unlocatable owner” licensing mechanism (sometimes referred to as the “orphan works” mechanism), which enables prospective users of copyrighted works to apply to the Copyright Board for a license to make use of a work where the user has been unable to find the owner of the work in question. As set out in Section 77 of the Copyright Act (Canada), if the Copyright Board “is satisfied that the applicant has made reasonable efforts to locate the owner of the copyright and that the owner cannot be located”, the Board can issue a license.

We’ve previously discussed in detail (see here) some of the limitations of the unlocatable owner mechanism, but if someone did want to make use of it, one issue which historically has remained unclear is what constitutes the “reasonable efforts” required by the Act as a condition to issuance of a license. (To make things more confusing, the Board’s own brochure which provides guidance on how to make unlocatable owner applications states that the Board must conclude that an applicant has “done everything you could to find the copyright owner”, which seems like a much higher bar to clear than “reasonable efforts”.)

While we still don’t have much more clarity on the issue from the Canadian Copyright Board, the United Kingdom’s Intellectual Property Office (which operates a similar unlocatable owner mechanism) has published three different brochures and checklists which sets out that office’s views on what constitutes a “diligent search” for unlocatable copyright owners. There are brochures and checklists for each of three “groups” of copyrighted works:

The checklists, in particular, offer very detailed guidance about potential sources of information regarding copyright owners – as such, though these guides are published for a UK audience, they offer some good inspiration for anyone undertaking clearance activities for any kind of project, including film and TV projects which incorporate pre-existing works.

The Challenge of the Unlocatable Copyright Owner – Checklists!

#Monkey-Selfie

[We proudly offer a guest post co-authored [ha! you'll realize that was hilarious once you read through the post] by our esteemed colleagues Aaron M. Milrad (J.D., B.A., Counsel at Dentons Canada LLP), and Christian R. Orton (J.D., M.A., Associate at Dentons Canada LLP). This post reflects the intellectual curiosity of the authors and does not constitute legal advice.]

The monkey is back!

The dispute between Wikipedia and the British photographer David Slater recently reported in various news outlets is not new. It is actually the continuation of a dispute that began in July 2011 between the UK based Caters News Agency, who had hired Slater to do a nature shoot in Indonesia, and the blog Techdirt.

According to reports at that time, the monkey picked up Slater’s camera while unattended and snapped a number of images while it looked at its own image in the lens. Slater later discovered the images and submitted them to the Daily Mail to be published – giving credit to Caters.  Soon after, the question was raised whether Caters was capable of claiming copyright as Slater had reportedly acknowledged that he was not involved in creating the images. The photographs were reproduced on the Techdirt blog which commented on the issue. Caters subsequently requested that the blog remove them for violation of copyright.  It declined and the debate commenced.

Techdirt considered Caters’ capacity to claim copyright under the various copyright legislation of the U.S., U.K. and Indonesia arriving at the conclusion that regardless of the regime only a photograph created by a human is capable of receiving copyright. So what about in Canada?

Authorship

Copyright is accommodated in Canada through the Copyright Act, providing both economic rights to control the reproduction of a creative work and the profit generated from it, as well as ‘moral rights’ associated with the work. In order for something to have copyright protection it must: be original, correspond to one of the four prescribed categories of works (literary, dramatic, musical and artistic), and be created by an author. Usually, the author will be the first owner of the copyright, which can then be sold or licensed according to the author’s interests (except for the moral rights which cannot be sold but can be waived).

Authorship refers to the person responsible for original expression embodied in a work, and not necessarily the creator of it. It is recognized that in various media the creative force behind a work is not necessarily the person who writes, executes or fabricates it. An architect, for example, retains rights in a building despite the fact that an independent contractor built it. In complex creations such as films, there are various layers of authorship present. The director will generally have authorship of the film, but the set designer will retain authorship rights to the set and so on. Finally, in certain circumstances there can be multiple authors for a single work. In such a collaborative work, the creators will be co-authors provided that their contributions are not distinguishable and separable.

Though the Copyright Act does not provide a definition of ‘author’, it does state that an author must be a citizen or a person who is resident in a country that is part of the international regime of copyright protection. This implies that there can be no copyright without the author being human, and Canadian courts have agreed with this interpretation.

Camera-Monkey

As the law appears to only contemplate human authors, it follows that an animal cannot be an author. It also follows that a work created by an animal cannot receive copyright protection unless it can be argued that the work is really created by a human, such as the animal’s owner. The photography of Cooper ‘the-photographer-cat,’ whose pictures became an online sensation a few years ago for their unique depictions of feline encounters, illustrate this point of law. In fact Cooper was neither selecting the images or operating the camera. His owners had fastened a camera to Cooper’s collar and arranged for the camera to record a new image at two minute intervals as Cooper wandered randomly through his environment.

The final consideration in establishing if there can be copyright in animal created images is whether there was sufficient originality involved in their creation. The Act does not define what constitutes ‘originality’ so the task fell to the Supreme Court of Canada, which determined that originality must comprise of the exercise of skill and judgment that is not so mechanical as to be trivial.  In the context of photography this has been interpreted as considering the personal efforts of the photographer with regard to the choice, layout and posture of the subject, and the selection of camera angle and lighting.

If a picture taken of a passing scene with a cell-phone camera is worthy of copyright, certainly the images produced as a result of the unique camera configuration devised by the owner of Cooper the-photographer-cat would equally well be worthy of copyright.  But how is copyright to be assigned in the case of the curious macaque monkey? A copyright decision would probably be dependent on consideration of the actual events prior to the monkey operating the camera. Two scenarios are plausible. If Slater had set the camera up on a tripod and deliberately selected the camera angle before the monkey began playing with it and pressed the button, it might be argued that Slater was the author by devising a situation where a work would be created and that the images were sufficiently original as a result. However, if the camera was merely laid down for a few minutes before the monkey’s curiosity led it to pick up the camera and accidentally take the images as a result of playing with the camera, it would be difficult to argue either that Slater was the author or that the images possess sufficient originality. In the second scenario the image would presumably be without copyright.

Animal Auteur

The question remains; what decision is to be made when there is a convincing argument that the human is not the author? Animal art is not a new phenomenon, and has had a market at least since the late-1950s when a chimpanzee named Congo was encouraged by zoologist and anthropologist, Desmond Morris, to paint. Congo went on to create more than 400 drawings and paintings demonstrating an exceptional degree of creative independence—he was very much in control of his work and would only stop working when he was satisfied that it was complete.  Congo’s creations were by no means value-less artworks. In fact, in 2005 three of Congo’s paintings sold for £14,400 through a reputable British auction house. This was a price considered to be nearly 20 times their estimated value. As an interesting aside; on that same day works by Andy Warhol and Renoir attracted so little interest that they were withdrawn from the auction.

Another example is the work of Tillamook Cheddar, a Jack Russell terrier residing in Brooklyn, New York, who has gained considerable notoriety as an abstract expressionist.  As one of the more successful animal artists in the world, her work has been shown in more than fifteen solo exhibits, and her pieces have sold for hundreds, sometimes thousands of dollars to collectors across America and Europe.

In other contexts, animal art has been used to raise money for charitable causes. A prominent example of this is the Asian Elephant Art & Conservation Project conceived of by conceptual artists, Komar and Melamid.  Started in 1998 at the Thai Elephant Conservation Center in Lampang, Thailand, this is a non-profit organization that trains elephants to make marketable paintings, the profits of which are used for various habitat conservation and animal awareness projects. Not all elephants are successful artists, and after a week of training only those with aptitude are encouraged to continue.

Evidently, the animal art market is not economically insignificant. Animal works are sold by the same business models as artworks created by humans, and appear to increase and decrease in value in response to market demand in a similar way. However, because they are not created by human authors, they are not protected by copyright legislation. Instead, the sellers or ultimate owners of the artworks tend to employ contracts to impose specific restrictions on the use and reproduction of the artwork that are congruous to copyright protection. However, any violation of the agreement would not be subject to the remedies offered by the Copyright Act, and would have to be resolved as any other contract would—potentially a more expensive and time consuming process.

In light of the apparent economic impact of animal art, the question might be asked whether copyright law should be expanded to include works created by animal authors, and if so how?

Intelligent Agents

Part of the requirement for originality discussed by the Supreme Court is that the exercise of skill and judgment must not be so trivial that it could be characterized as a purely mechanical exercise. It must necessarily involve intellectual effort, where the policy behind copyright protection is to protect the unique expression of an idea in producing an original work.  The question then arises whether animals are capable of having ideas and their creations are expressions of those ideas, or whether they are simply behaving as trained?

Indeed the very protections offered by the Copyright Act cast doubt on whether animals could ever be capable of authorship. If an animal were to be an author within the scope of the Copyright Act and become the first owner of its work, then how would it enforce its rights to exclusive reproduction in the face of infringement when it cannot gain standing as a competent plaintiff in court? Furthermore, unlike the economic benefits associated with copyright, moral rights are attributed to the intrinsic expression of the copyrighted work to protect its integrity and are inalienable from the author. How would an animal express moral indignation at its work being trivialized or mutilated or reproduced without proper attribution? Finally, what would the effect be on the various rights that accompany copyright known as ‘related rights’? Would circus animals, race horses and show dogs be granted corresponding performers rights?

The idea of making the animal a bearer of copyrights would appear to be a counterproductive exercise that would pose the threat of opening a Pandora’s box of legal inconsistencies. However, while statutory reform for the sake of animal rights may strike some as bananas, the suggestion of expanding copyright protection to works created by non-human actors has received attention with regard to robots, referred to as ‘intelligent agents’, that employ artificial intelligence to create work products. An example of this might be an online news aggregation software that learns, adapts and develops as it acquires more information producing unique and truly original works. While this technology is in its infancy, it is expected to grow into a lucrative industry, and the desire to exploit the commercial value of the works created through copyright is significant.

Various solutions have been advanced that would allow for copyright to fall to the right place but nothing has been done yet to change the law accordingly. Indeed considering that the last reforms to the Copyright Act were surrounded by controversy, it may be a while before the federal government is willing to venture down that road again. Perhaps when the economic impact of intelligent agent technology is sufficient to warrant further revisions to copyright law, it may be possible to advocate for the extension of copyright protection to animal created works. But, for now, any discussion of the animal auteur is strictly for the birds.

#Monkey-Selfie

Insensitive – Copyright Implications of Jann Arden’s Stand

Twitter began to light up on August 7, 2014 when Canadian singer/songwriter Jann Arden (@jannarden) began to object, via a series of tweets, to the practice of Calgary radio station 90.3 AMP of playing shortened versions of songs. From a CBC news story on the matter, the station “essentially slashes Top 40 songs in half so the station can run 24 songs an hour instead of 12″; evidently 90.3 AMP is drawing on the work of Sparknet Communications, which provides “Quickhitz™ remixes”. Arden’s objections eventually culminated in her call to boycott the station for “butchering” and “disrespecting” artists and their work.

Arden’s tweets were sometimes profane and often humorous – here’s one that we’re comfortable reproducing on a suitable-for-families blog and which pithily summarizes her concerns with the practice:

For the record, I know of no such art gallery.

The initial reaction of experienced entertainment lawyers to the story should have been: How can I make money off of this? Just kidding! No, the reaction of experienced entertainment lawyers to the story should have been: figuring out the legal implications of what’s going on here is going to be complicated. For this post, rather than get too far down any convenient rabbit holes, we’re going to limit ourselves to considering whether Ms Arden might be able to assert a legal claim on the basis that shortening her songs constitutes an infringement of her moral rights in the musical compositions she has written.

(Throughout this discussion it needs to be kept in mind that there are (at least) two separate copyrighted works at play here when we’re talking about a “song” being shortened and broadcast: the musical composition and the recording of that musical composition. We’re going to focus in this post only on the musical composition aspect, and ignore moral rights relating to the performance as well as copyright considerations relating to the sound recording.)

At first it might seem obvious that Arden could assert a moral rights-based claim against the station. As Section 28.2 of the Copyright Act provides,

The author’s or performer’s right to the integrity of a work or performer’s performance is infringed … if the work or the performance is, to the prejudice of its author’s or performer’s honour or reputation … distorted, mutilated or otherwise modified

We can see two different elements are required for an infringement of a songwriter’s right to the integrity of their composition: there must have occurred (1) a distortion, mutilation or modification of the work which (2) has a prejudicial effect on the author’s honour or reputation. Shortening a song clearly counts as a “modification” of a work – but how would we determine whether it had a “prejudicial effect” on the songwriter’s honour or reputation? It’s a bit hard to say: of the limited number of moral rights cases which Canadian courts have considered, some (such as Snow v Eaton Centre (1982), 70 CPR (2d) 105, wherein sculptor Michael Snow successfully claimed infringement of his moral rights when the managers of the shopping mall in which his sculptures of ducks in flight were festooned with red ribbons to mark the Christmas season) indicate that the artist’s own views are to be given considerable weight so long as they were “reasonably arrived at”; others (e.g., Prise de Parole Inc v Guerin, Editeur Ltee (1995), 66 CPR (3d) 257) indicate that an aggrieved composer needs to provide objective, expert evidence which corroborates the prejudicial effect. In either case, it probably wouldn’t be too terribly difficult to get Ms Arden to testify that she feels that her reputation has been besmirched or to find multiple experts who could testify that shortening a song could result in reputational damage.

But there’s a complicating factor here: it’s quite possible that Arden has waived her moral rights in a manner on which 90.3 AMP could rely. To understand why that might be the case it is important to remember that Arden likely does not own all of the copyright in the compositions she has written. That’s because at least some of the copyright in the compositions and almost certainly all of the administration rights in the compositions have been assigned to a music publisher. In the publishing agreements that she signed with her music publisher, Arden would likely have been obliged to waive her moral rights – not only in favour of the publisher, but in favour of any licensee or assignee of the music publisher’s rights. And on that basis, 90.3 AMP might be able to raise a defence: they might be able to argue that they obtained a license (whether written or implied by a course of conduct) from the music publisher to reproduce, modify and otherwise make use of the composition, and that they enjoy the benefit of the waiver of moral rights which Arden signed in favour of the publisher. Without knowing the actual arrangements in place between the broadcaster and the publisher, it’s hard to say anything definitive – we would certainly welcome further insights in the comments from anyone familiar with the situation.

One other possible target of a claim might be Sparknet Communications itself (i.e., the folks who actually do the editing of the songs) – it’s not clear what arrangements, if any, they have in place with the music publishers who own and administer the songs which are being edited.

The Twitter storm over 90.3 AMP appears to have subsided over the last couple of days – whether this ends up being merely an insensitive (see what I did there?) breach of etiquette or the basis for a claim, whether on moral rights or other copyright grounds, remains to be seen.

Insensitive – Copyright Implications of Jann Arden’s Stand

Tariffpalooza 2014

Summer 2014. The living is easy; the Copyright Board is certifying tariffs at a furious pace.

As we noted back in May 2014 (Towards Certainty on Webcasting – Re:Sound Tariff 8 Certified), the Board certified Re:Sound Tariff 8, applicable to non-interactive and semi-interactive webcasters (although not immediately apparent from the wording of the tariff, the tariff is intended to apply to audio services such as Pandora and Songza). Re:Sound’s Tariff 8 is already the subject of an application for judicial review and has been the impetus for an ongoing public debate about the appropriateness of the license fees set by the Copyright Board (see Music Canada (including the press release linked at the bottom of that page) and Michael Geist for opposing views of the issue).

On July 26, 2014 the Board certified SOCAN Tariff 4 (Board decision; Tariff), which covers venues hosting live musical performances (including, helpfully, lip synching and miming). For further details regarding licenses for public performance of music at “live events”, see this post from March 2013.

Most momentous, though, was the certification by the Board on July 19 of SOCAN Tariffs 22.D.1 and 22.D.2 (Board decision; Tariffs) – these apply, respectively, to “online audiovisual services” and “user-generated content”, meaning they apply to the biggest of the big fish of the online world: YouTube, Apple, Netflix, Facebook, Yahoo! and internet service providers such as Rogers, Bell and Shaw. Barry Sookman and James Plotkin have both offered insightful posts about the newly-certified tariffs.

Herewith, an attempt to summarize how new SOCAN Tariff 22.D.1 (Online Audiovisual Services) works:

Revenue Source Year Royalty Notes
Per-program fees to end-users 2007-2010 1.7% minimum of $0.013 per program communicated
2011-2013 1.9% as above
Subscriptions to end-users 2007-2010 1.7% where free trial offered, min. monthly fee of $0.068 per free trial subscriber
2011-2013 1.9% where free trial offered, min. monthly fee of $0.075 per free trial subscriber
“Internet-related revenues” (see tariff for definition) 2007-2010 1.7% x A x B x (1-C) A = internet-related revenues
B = (i) the ratio of audiovisual page impressions to all page impressions, if available, and (ii) if not, 0.95 for a music video service, and 0.75 for any other service
C =(i) 0 for a Canadian service, and (ii) for any other service, the ratio of non-Canadian page impressions to all page impressions, if that ratio is available, and 0.9 if not
2011-2013 1.9% x A x B x (1-C) as above
If revenues are obtained from all three sources, the service must pay royalties in accordance with each formula, but when calculating “internet-related revenues”, can exclude fees charged to end-users in the first two formulas and related page impressions. A service with no revenues is obliged to pay $15.00 per year.

It should also be noted that the tariff imposes significant reporting obligations on those liable to pay royalties pursuant to the tariff.

Tariff 22.D.2 (User-generated content) is, thankfully, much simpler to summarize:

Year Royalty Notes
2007-2010 1.7% of “relevant revenues” “relevant revenues” means all revenues generated by all visits to watch pages on a site by end users having Canadian IP addresses,
irrespective of whether the content that is subject to those visitscontains any musical works or other audio content or any musical works in the repertoire of SOCAN, including membership,
subscription and other access fees, advertising, product placement, promotion, sponsorship, net revenues from the sale of goods
or services and commissions on third-party transactions, but excluding:
(a) revenues generated from the transmission of pay content;
(b) revenues that are already included in calculating royalties
pursuant to another SOCAN tariff;
(c) revenues generated by an Internet-based activity that is subject to another SOCAN tariff;
(d) agency commissions;
(e) the fair market value of any advertising production services
provided by the user; and
(f) network usage and other connectivity access fees. A service with no relevant revenues is obliged to pay $15.00 per year.
2011-2013 1.9% of “relevant revenues” as above

Thus far, SOCAN Tariffs 22.D.1 and 22.D.2 appear not to have generated anywhere near the uproar that Re:Sound Tariff 8 has – but whether these tariffs will be the subject of judicial review remains to be seen. As with all matters relating to online uses of music in Canada, service providers are advised to consult with an expert.

Tariffpalooza 2014

You’re Getting Sued for What? An E&O Odyssey (Pt 13)

This post is part of an occasional series highlighting the type of risks which film and TV producers face and which are supposed to be covered by “errors and omissions” (E&O) insurance.  The series aims to demonstrate that what might seem to a producer to be unjustified paranoia on the part of their lawyer is, on the contrary, well-founded paranoia.  These posts will point to actual lawsuits which have been filed against producers and distributors for various alleged rights infringements (whether copyright, trade-mark, right of publicity, or otherwise) – and which inform the nit-picking approach taken by producer’s counsel.

(I should note for regular readers of the Signal that the fact that we have published three installments in the “You’re Getting Sued for What? An E&O Odyssey” series in the last twenty-four hours is purely coincidental. It’s not our fault that so many interesting lawsuits have been filed recently. We swear.)

As reported by the National Post, a Montreal-based artist is suing the producer and broadcaster of the television series 30 Vies – on the basis that footage of a graffiti tag on a building which is incorporated into the opening credits of the series constitutes copyright infringement. The lawsuit evidently seeks $45,000 in damages on the basis that the producer and broadcaster, without permission from the artist, “forged, modified, mutilated and broadcast the work” for commercial purposes. As reported by the Post, “an image in which the tag appears below the show’s spray-painted title was reproduced on promotional billboards for the show’s first and second seasons.”

Although it is not perfectly clear from the news report, it appears that the artist in question is asserting not just an infringement of his copyright, but also infringement of his “moral right” to be protected against use of a work “in association with” a product so as to prejudice the artist’s reputation.

The extent to which graffiti needs to be “cleared” (i.e., the subject of a license or digitally smudged so as to be unrecognizable) for use in film and TV projects is a recurring one for producer’s counsel and giving advice to clients requires some consideration of the specific graffiti. As noted in the news report about the 30 Vies suit, it can be difficult to film in urban environments without catching at least some graffiti on-screen. The mere fact that the original painting of the graffiti might have been illegal is not a defence to a claim for infringement – it is not a condition for copyright protection that a work be “legal” (though a judge might be convinced to award only nominal or very low damages for infringement).

A more productive line for defending a copyright claim might be to force the platintiff to demonstrate that they are in fact the author and owner of the “artistic work” they are claiming has been infringed. Depending on the nature of the graffiti in question, it might be plausible to argue that the “work” lacks the requisite “originality” to warrant copyright protection (the more the graffiti is a mere “tag”, the less likely it will be to have the necessary originality). The viability of the “incidental inclusion” defence is contested, particularly in the context of dramatic productions, so it’s an open question whether it could plausibly be argued (see this post for further discussion of “incidental inclusion”). Another possibilty is to argue that whatever the use, it is de minimis and therefore not properly the subject of a legal claim – regrettably, Canadian courts have been less than forthcoming on the viability of de minimis defences in copyright actions so, again, this would be a somewhat novel approach (see this post for some further general discussion of the de minimis defence).

Of course, in the E&O context, both producers and insurers generally want to avoid the filing of a claim in the first place, rather than trying to strategize about how to defend against one which has already been filed. When it comes to graffiti, the only sure-fire way to avoid an E&O concern is to either entirely avoid filming it or to have the production’s art department create their own “graffiti” – though whether either of those options is entirely palatable will be left to the producer and their creative vision.

You’re Getting Sued for What? An E&O Odyssey (Pt 13)