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Not My Anne – Possible Perils of Book Cover Designs

Last week we got to enjoy watching a bit of a kerfuffle develop after Canadian news outlets trumpeted the availability on Amazon.com of a print-on-demand edition of the first three “Anne of Green Gables” books which featured a “racy” cover – from CBC Books:

The red-headed, freckled, stick thin loveable Anne Shirley dreamed up by Lucy Maud Montgomery first for Anne of Green Gables and then a number of sequels has turned into a busty, blonde haired beauty. A new cover of the trilogy boxed set shows Anne’s makeover from homely orphan to beauty queen.

“There isn’t one element of that picture from the arm position, to the hair, to the face, to the shirt, to the body that says Anne of Green Gables in any way,” Beth Cavert of the Lucy Maud Montgomery Literary Society told CBC’s As it Happens.

Various expressions of outrage were duly echoed in newspaper, television and online platforms: the cover image was so incongruous with the textual description of Anne and with previous depictions that many fans considered the new imagery an affront. Because Lucy Maud Montgomery, the author of the books, passed away in 1942, copyright in the books has expired and the books entered the public domain in 1993 – allowing anyone to create and sell books containing the series’ texts, and to put essentially any cover image they like on those books. (I’m going to ignore the various unique rights that are enjoyed by various parties in connection with the Anne of Gables books – interested readers may want to consult Andrea Slane’s “Guarding a Cultural Icon: Concurrent Intellectual Property Regimes and the Perpetual Protection of Anne of Green Gables in Canada”.)

But let’s imagine for a moment that Lucy Maud Montgomery was still alive or that the books were otherwise still protected by copyright (i.e., imagine LMM had passed away within the last fifty years) – can an author object to a publisher’s choice of cover art? Could a cover be so bad, so inconsistent with the author’s vision for the book, that it actually gives rise to a right of action on the part of the author?

Potentially. There are two conceivable routes to such a claim: breach of contract or infringement of moral rights. An author’s publishing agreement may be negotiated to include some kind of approval right on the part of the author over the cover art. Actual rights of approval are relatively rare, and largely a function of the negotiating leverage which the author brings to the table (i.e., popular authors are more likely to obtain this kind of concession from their publisher); more common is the right of “consultation”, a more ambiguous “right” which boils down to “we’ll talk to you about the cover, but we retain final decision-making authority”. Where an author enjoys an approval right and their publisher publishes a book with a cover that the author did not approve, the author would be able to bring a claim for contractual breach. While damages might be difficult to prove, the author could seek an injunction prohibiting the publisher from printing or selling editions of the book with the impugned cover, which would have the effect of removing the cover from circulation and (hopefully) causing the publisher to re-issue the book with a new cover.

But that only works where the author has the requisite contractual relationship with the book publisher. What if the book publishing contract does not give the author approval rights over the cover, or what if, worse, someone who has no contractual relationship with the author whatsoever prints a bootleg version of the book with an atrocious cover? A cover could conceivably be so atrocious that it infringes the author’s moral rights. The Copyright Act (Canada) accords authors certain moral rights (see Sections 14.1, 14.2, 28.1 and 28.2), among them the “right of integrity”, which is described in the following terms:

28.2(1) The author’s right to the integrity of a work is infringed only if the work is, to the prejudice of the honour or reputation of the author, (a) distorted, mutilated or otherwise modified….

(Unlike other creative industries such as film and TV production, book publishing contracts do not usually include a waiver of moral rights.) Moral rights last for as long as copyright does – so even after an author dies, their estate (or other heirs) will be able to enforce the author’s moral rights for a period of fifty years from the year of death. In trying to determine whether a (really) bad cover could constitute an infringement of moral rights, two questions would need to be answered: first, is a bad cover slapped onto a novel a distortion/mutilation/modification “of the work”? Second, how do we determine if the distortion/mutilation/modification has prejudiced the honour or reputation of the author?

The first question is actually a little more tricky to answer than you might think. Confronted with a claim from a disgruntled author, I’d be inclined to at least try to argue that a bad cover has not affected “the work” at all: the author’s “work” is the manuscript they turned in – and the publisher might argue that they haven’t touched the manuscript – instead, they’ve just wrapped something around it. That argument might be a little too cute for some judges: arguably wrapping something around a work constitutes a “modification” just as much as would scrawling graffiti “on top” of a painting or sculpture.

The second question, regarding how “prejudice” is measured, poses more profound difficulties. The author’s own views about their honour or reputation having been prejudiced will not suffice: there must in addition be some kind of “objective” support for the author’s views, though the precise nature of that objective evidence is the subject of conflicting guidance in the sparse Canadian caselaw on point. In Snow v Eaton Centre Ltd. (1982), 70 CPR (2d) 105 (Ont HCJ) (where the author’s moral rights infringement claim succeeded, despite the defendants offering expert evidence that no prejudice had been suffered), the court indicated that the author’s own views regarding prejudice were to be given considerable weight so long as the author’s views were “reasonably arrived at”. Subsequent cases (including Prise de Parole Inc. v. Guerin, Editeur Ltee, [1995] FCJ No 1583 (FCTD), aff’d, [1996] FCJ No 1427 (FCA)) indicate that the author is, in order to succeed in their claim, required to demonstrate “an objective evaluation of the prejudice based on public or expert opinion”.


Not My Anne – Possible Perils of Book Cover Designs

Canadian Copyright: Moral Rights and Criminal Charges

In the autumn of 2012, Vladimir Umanets was charged and convicted of defacing a Mark Rothko painting at the Tate Modern gallery in London, England.  As described in this CBC story, and this International Business Times story, Umanets stepped over a barrier and scrawled the words “Vladimir Umanets 12 a potential piece of yellowism” with black marker in a corner of the canvas of the Rothko work entitled “Black on Maroon”.  The damage to the canvas, while isolated in terms of its scope (photographs indicate that the “signature” occupies the bottom-right corner of the painting), was apparently significant: news reports indicate that repair of the painting would take more than a year and cost hundreds of thousands of pounds.  After being convicted of “criminal damage”, Umanets was sentenced to two years imprisonment. Setting aside criminal charges arising under the Criminal Code, what sorts of copyright liability might someone who defaced a painting be subject to in Canada?

The initial, and obvious, concern would be some kind of moral rights infringement.  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 only 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 an author’s (meaning a “creator”, in our case, a painter) right to integrity: 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.

Well.  What might that mean?  As David Vaver, in a rather prescient little passage from the second edition (published in 2011) of his Intellectual Property tome, notes:

“The scrawler of graffiti on a public sculpture may, on one view, be infringing the sculptor’s moral rights. On another view, he may be exercising, however crudely, rights of free speech and comment.”

(Indeed, our man Vladimir, in explaining his defacing of “Black on Maroon”, called attention to his own “yellowism” philosophy and said he marked the painting in order to “draw attention to what was going on in contemporary art” (those are the reporter’s words, not Vladimir’s).)

So how does one tell if a particular distortion/mutilation/modification of a work has a prejudicial effect on the author’s honour or reputation?  Helpfully, for certain types of works, the required prejudice is deemed to have occurred, pursuant to Section 28.2(2) of the Act:

In the case of a painting, sculpture or engraving, the prejudice referred to in subsection (1) shall be deemed to have occurred as a result of any distortion, mutilation or other modification of the work.

In other words, for paintings, sculptures and engravings, the distortion/mutilation/modification itself constitutes the infringement of moral rights, without the need for the artist to prove that the action has had a prejudicial effect on his or her honour or reputation. (Vaver calls the operation of Section 28.2(2) a “rebuttable presumption”, but I’m not sure how he reads that into the legislation.)

What about for other types of works?  The type of proof which an artist might be required to bring forward to prove prejudice is something of a moving target.  In the classic Canadian moral rights case of 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, the court indicated that the artist’s own views were to be given considerable weight so long as they were “reasonably arrived at”.  Subsequent cases (e.g., Prise de Parole Inc v Guerin, Editeur Ltee (1995), 66 CPR (3d) 257) have indicated a preference on the part of the courts for objective, expert evidence which corroborates the prejudicial effect.  (I should also note that the fact that the artist was, as in the case of Rothko, deceased, would not be a bar to a moral rights infringement claim: moral rights continue for the duration of copyright protection, so for a term of life of the author plus fifty years (Section 14.2(1) of the Copyright Act).)

It is also worth recalling, however, that the Copyright Act contains provisions which create criminal offences, and some of those can have relevance to unauthorized modifications of works.  Section 42 of the Copyright Act creates a set of criminal offences for what I’ll call “standard” infringement: things like importing and selling infringing copies of works.  Section 42(3.1) makes it a criminal offence to circumvent technological protection measures or offer services or devices which enable such circumvention.  Of interest for our purposes is Section 43 of the Copyright Act, which creates two different criminal offences:

  • unauthorized public performances for private profit of dramatic works, operatic works or musical compositions can lead to a fine not exceeding $250 and, in the case of a second or subsequent offence, either to that fine or to imprisonment for a term not exceeding two months or to both
  • any unauthorized changing or suppression of the title, or the name of the author, of any dramatic work, operatic work or musical composition in which copyright subsists in Canada, or any unauthorized change in the work or composition, in order that the work or composition may be performed in whole or in part in public for private profit, can lead to a fine not exceeding $500 and, in the case of a second or subsequent offence, either to that fine or to imprisonment for a term not exceeding four months or to both.

So certain types of modifications (i.e., changing the name of the author or “any unauthorized change”) to certain types of works (i.e., dramatic works (such as plays or screenplays), operatic works or musical compositions) can give rise to criminal liability.  Of course, Section 43 appears to have fallen into disuse – I haven’t been able to find any reported use of it since 1912 – but you never know what enterprising rights-owner (or their counsel) might decide to make use of.

Canadian Copyright: Moral Rights and Criminal Charges

Moral Rights Extended – But How Far?

Of the many provisions of the Copyright Modernization Act (Bill C-11) which came into force on November 7, 2012, few have received as little attention as new sections 17.1 and 17.2 of the Copyright Act, which extend “moral rights” to “performers”.  Indeed, most descriptions of the CMA (even the Library of Parliament’s Legislative Summary of Bill C-11), are relatively generic in their description of the change: “Clause 10 of the bill provides that a performer will enjoy moral rights in his or her performance for the same term as the copyright in that performance, as required by Article 5 of the [WIPO Performances and Phonograms Treaty]“.  I suspect that the extension of moral rights to “performers” has gone largely unremarked because the realities of commercial deal-making mean that, in practice, in most circumstances (particularly when dealing with commercial-level projects) the moral rights which are being granted to performers will be waived by means of written contracts (e.g., the performer playing an instrument on the recording of a musical composition will in all likelihood be required to waive their moral rights in the performer’s agreement which they are required to sign by the maker of the sound recording).  However, it should be noted that not all “performers” will be granted moral rights in their “performances” as a result of the CMA – instead, the extension of moral rights appears to apply only to a subset of performances.  Thus, as an analytical matter, before worrying about whether a performer has waived their moral rights, it will be necessary to determine whether they had any moral rights to begin with.

The extension of moral rights under the CMA applies only prospectively: performers will only have moral rights in respect of qualifying performances which take place on or after November 7, 2012.  The content of the moral rights accorded to performers in qualifying performances is the same as the moral rights which authors of works enjoy: the rights of attribution and integrity (as described in Section 28.2 of the Copyright Act); they can be waived but not assigned; they subsist for a term equivalent to that of the copyright in the performance (i.e., roughly fifty years from the date of the performance – but for the details see Section 23 of the Copyright Act); and they can be bequeathed by will or other operation of succession law.

What is interesting about the extension of moral rights under the CMA is that it does not apply to all “performances” (I am ignoring for these purposes the various “technical” requirements for copyright subsistence in performances which are set out in Sections 15-23 of the Copyright Act, such as those relating to where the performance took place).  Recall that the term “performance” is a defined term under the Copyright Act (the definition is set out in Section 2), and it means

“any acoustic or visual representation of a work, performer’s performance, sound recording or communication signal, including a representation made by means of any mechanical instrument, radio receiving set or television receiving set”

It is also worth recalling that the phrase “performer’s performance” is also defined (again in Section 2), as follows:

“performer’s performance” means any of the following when done by a performer:

(a) a performance of an artistic work, dramatic work or musical work, whether or not the work was previously fixed in any material form, and whether or not the work’s term of copyright protection under this Act has expired,

(b) a recitation or reading of a literary work, whether or not the work’s term of copyright protection under this Act has expired, or

(c) an improvisation of a dramatic work, musical work or literary work, whether or not the improvised work is based on a pre-existing work;

It is critical to note for these purposes that both of the defined terms encompass an enormous range of activity – while it seems that for many people the archetypal performer’s performance is (as used in the example above) a musician performing a musical work, the defined terms encompass activities such as singing, speaking, dancing and miming.

The extension of moral rights in the CMA applies only to a certain subset of performer’s performances – as indicated by Section 17.1 of the Copyright Act moral rights are accorded only to performers who perform:

“a live aural performance or a performance fixed in a sound recording”

That language (taken, it should be noted, almost verbatim from Article 5 of the WPPT) is clearly premised on the “colloquial” nature of “performer’s performances” I noted above: it applies only to performances which result in an aural event occurring (aural: of or relating to the ear or to the sense of hearing) – and so performers of non-aural performances (such as dancers) do not enjoy moral rights in their performances, even post-CMA.

This is, admittedly, an observation of rather narrow application.  But on such “trivialities” are lawyer’s insurance premiums founded.  Many descriptions of the “extension” of moral rights to “performer’s performances” (including those which have been made by this writer and on this blog) have glossed over the fact that not all performers now enjoy moral rights in their performances – instead, reflecting a structural bias in favour of protecting sound recordings and the various components thereof, only performers whose performances create an acoustic result are treated akin to authors of works and therefore enjoy moral rights in their performances.

Moral Rights Extended – But How Far?

Liner Notes in a Digital Age – Moral Rights Implications?

As reported by AP/CP/CBC (Liner notes for the digital age), the Recording Academy (the nice folks who stage the Grammys) have announced a new initiative: called the “Give Fans the Credit” campaign, the campaign seeks to “enhance fans’ discovery of new music by ensuring all music creators are credited for their work on digitally released recordings”; as the Academy’s press release goes on to state,

Songwriters, non-featured performers, producers and engineers make significant contributions to recordings, but as liner notes are becoming less common, these creators rarely receive credit on digital music devices. Currently, the only credits consumers are generally able to see are the song title, album, and artist; but music fans should have access to additional information: the songwriter who composed the work, the producers and engineers who shaped the sound, and the musicians who brought the song to life.

While this is primarily a US initiative, it’s worth thinking about the potential moral rights implications of the proposed changes.  As I noted in an earlier article, in Canadian copyright law, the term “moral rights” is rooted in Section 14.1 of the Copyright Act and encompasses the following prerogatives: the right to the integrity of the work (which subsumes (a) the right to prevent a work from being distorted, mutilated or modified, and (b) the right to control use of a work in association with a product, service, cause or institution; in both cases, the impugned activity must prejudice the
author’s honour or reputation); and the right of attribution (i.e., the right, “where reasonable in the circumstances” to be “associated with” a work as the author thereof, either under one’s own name or under a pseudonym, or to remain anonymous).  It is the latter right of attribution which is of concern for the moment.

The right of attribution is qualified by the phrase “where reasonable in the circumstances” – and the precise content of what that constitutes has, because of the paucity of Canadian caselaw on the matter, never been terribly clear. The case of Dolmage v Erskine, 2003 CanLII 8350 (ON SC), one of the few Canadian cases to give extended consideration to the matter, provides a little bit of guidance.  It appears that “reasonable in the circumstances” is informed by two different considerations: practical limitations imposed by physical space (for example, it would likely be impratical to list directly on the face of a CD all of the composers of all of the songs contained on the average album) and industry practices and conventions.  So, for example, as David Vaver observed in his Copyright Law text (see page 161 of the 2000 edition), the fact that radio announcers almost never identify the composers (as distinct from the performers) of the songs they play is almost certainly not a violation of the moral rights of the composer(s), because, given time limitations and past practices of the radio industry, it would not be “reasonable in the circumstances” to require every composer to be mentioned for every song which was played.

But it should also be noted that those limitations are plastic – and even moreso in a digital environment where the notion of a “limitation of space” becomes somewhat fluid.  It’s not obviously outrageous to assert that a failure to include composer credits in the information about a song on an online music service constitutes an infringement of the moral rights of the composer – it’s not clear that there’s a practical restriction on doing so (do the extra letters eat up too much digital storage space?), and the apparent industry convention of not providing such credits may be about to change as a result of the Recording Academy’s campaign.  And because Bill C-11 (The Copyright Modernization Act) extends moral rights to certain performers (i.e., those performing on sound recordings), once the relevant provisions are proclaimed into force the universe of potential moral rights claimants who will need to be taken into account will be significantly expanded.


Liner Notes in a Digital Age – Moral Rights Implications?

Rush and Rush: Using Music in Political Activities (Redux)

News reports that Rush (the band) have demanded that Rush (the Limbaugh) desist from using the band’s music in his radio broadcasts have re-raised an issue we have considered here at the Signal on few different occasions.  The story appears to have been broken by US blogger Bob Cesca (EXCLUSIVE: Rush Pulls Music from Limbaugh Show) and Cesca also provides a copy of the “cease and desist” letter sent by Rush’s management company to The Rush Limbaugh Show.  According to Cesca, The Rush Limbaugh Show had used various Rush songs as “bumpers out of … commercial breaks” and a Rush song had been playing while Limbaugh had made various controversial statements about a woman named Sandra Fluke.

The relevant portions of the letter read as follows:

… Rush Limbaugh, Premiere Radio Networks and The Rush Limbaugh Show have been using Rush’s recorded music as part of what is essentially a political broadcast.

The use of Rush’s music in this way is an infringement of Rush’s copyrights and trademarks. The public performance of Rush’s music is not licensed for political purposes and any such use is in breach of public performance licenses and constitutes copyright infringement. There are civil and criminal remedies for copyright infringement, including statutory damages and fines.
(see sections 501-513 of Title 17 of the United States Code http://www.copyright.gov/title17/92chap5.html)

In addition, the use of Rush’s music in this manner implies an endorsement of the views expressed and products advertised on the show, and is in breach of not only copyright and trademark rights, but also, of section 51 of the New York Civil Rights Law (excerpt attached).

Long-time readers of this blog will recall that Rush has appeared here before in somewhat similar circumstances: nearly two years ago Rush demanded that US politician Rand Paul stop using their music at public appearances and stop quoting lyrics in speeches (see: Signal coverage from June 2010; Ben Sheffner’s discussion of the matter; and the May 2010 cease and desist letter).

So – can Rush (the band) prevent Rush (the Limbaugh) (or any other radio show) from using its music on a radio broadcast?  (I’m going to focus on the copyright issues here, since those are of broader application, rather than the New York State-specific right of publicity claims or the trade-mark claims.)

As discussed in our earlier post (Canadian Copyright and Campaigns – Moral Rights Edition) the band might have an easier time of things trying to stop a Canadian political radio show from using their music: in Canada they (i.e., the composers of the songs in question) could try to assert their moral rights in the songs, found in Sections 14.1 and 28.2 of the Copyright Act (Canada).  Such a claim would involve arguing that Limbaugh’s use of their compositions constitutes “use in association with a product, service, cause or institution” which “prejudices” their honour or reputation”.  They might face some hurdles in demonstrating the first part of that formulation: it’s not immediately clear that what Limbaugh does on his radio show constitutes a “cause”, though one could make a relatively cogent argument that it falls within the borders of “product” or “service”.  However, Limbaugh’s show is produced and broadcast in the US, where moral rights do not apply to musical compositions.

Is there some other basis on which Rush could be asserting their infringement of copyright claim?  The letter from Rush’s lawyer states “public performance of Rush’s music is not licensed for political purposes and any such use is in breach of public performance licenses”.  Radio stations in the US obtain public performance licenses for compositions from ASCAP, BMI and SESAC.  To the best of my knowledge, none of their standard licenses (ASCAP;BMI; SESAC) include any carve-out for “political” uses.  Nor does the standard SOCAN license (on the basis that Rush is Canadian, I’m guessing that their public performance rights are granted to SOCAN, which in turn has an affiliation agreement with each of the US performing rights organizations (PROs), and Rush will have chosen to affiliate with one of them – based on Ben Sheffner’s blog, at least some of their compositions are licensed via SESAC).  It’s possible, though it would be to my knowledge a unique situation, that Rush has somehow carved out “political” uses from its grant of rights to SOCAN (and therefore the US PRO).

We should also be sure to draw a distinction between the terms of a “music publishing” agreement (which composers enter into with a music publisher such as EMI Music Publishing or Warner/Chappell) and an agreement with a PRO.  While music publishing agreements regularly contain a carve-out requiring the composer’s express permission for certain types of licenses, such as licenses for political activities, certain types of merchandise (e.g., firearms, alcohol, hygiene products, etc.), as mentioned above, it is almost unheard of for a grant of rights to a PRO to contain any similar sort of restriction.  Radio stations generally don’t obtain licenses from music publishers, they obtain licenses from PROs.

Based on the foregoing, the best copyright-based argument that Rush could make to prevent the use of its songs by Rush Limbaugh must originate somewhere other than in a violation of the PRO performing licenses.

Here’s a possible way for a band like Rush to frame their argument: while a public performance license might confer the right on a radio station to publicly perform compositions, they can’t function to confer a right on a producer to “synch” or otherwise use a composition in connection with a production created by someone who does not have a public performance license.  While a radio station’s in-house production team might be able to “shelter” under the public performance license obtained by the station, an independently-produced show, such as Limbaugh’s, argubaly needs a separate set of licenses (from the owners of the publishing rights in the composition and possibly the rights in the sound recording) in order to clear the rights in the show they produce which they then “deliver” to the radio station for broadcast.  It’s possible that The Rush Limbaugh Show might have its own ASCAP, BMI and SESAC licenses which it has obtained.  There’s also the possibility that Limbaugh relies on a “fair use” argument if the excerpts of music which he uses are sufficiently short.  But for music which is prominently featured in the broadcast, in the absence of TRLS having its own licenses in place, there may be a plausible claim of copyright infringement to be made.  Such an argument would be much stronger in a case where a radio production company produces a recorded show which it then provides to broadcasters for transmission – it might be a little tougher to make that argument where a show is broadcast live (as the Limbaugh show appears to be).

The foregoing argument is, of course, speculative – no court that I’m aware of, whether in Canada or the US, has considered a similar argument.  The consensus among US attorneys appears to be that an artist cannot legally prevent a radio show from using music if that show (or the station on which it is broadcast) has obtained the necessary PRO license (see, from Rolling Stone magazine, Can Rush, Peter Gabriel Legally Order Limbaugh to Cease Using Their Songs?).  That doesn’t mean, however, that an artist has no ability to prevent the usage: public declarations of disapproval can serve as moral suasion, inciting (or “shaming”) the makers of a radio show to drop the songs in question.  Depending on how the music is used in a particular show (e.g., if it is used as a theme song for a show, or is constantly played on the show to the extent that it becomes “identified” with the show in some manner) there might be some kind of trade-mark or right of publicity claim which could be advanced (which would be somewhat similar to the Canadian “moral rights” claim).  And claims backed by assertions of legal rights might persuade the recipient to stop the usage simply because they don’t have the time, energy or money to contest the legal claim.

Rush and Rush: Using Music in Political Activities (Redux)