Breakthrough decision invites spurious claims – and worse: Copyright Board members

Two of the Copyright Board of Canada’s five members have released their reasons for dissenting with the board’s 2005 decision to grant Breakthrough Entertainment’s use of excerpts from a book on World War Two. In their remarks, Justice William Vancise and Stephen Callary stated that Breakthrough’s use of roughly 325 words from Sgt. Charles Munro Johnson’s 1954 book "Action with the Seaforths" did not require a licence from the Copyright Board. "We find two reasons for which the application should be denied," the members said in their dissenting statement. "First, Breakthrough does not need a licence because what it did is not protected by copyright. Second, even if it did, Breakthrough’s application should be denied as a matter of discretion because it was made after Breakthrough used Mr. Johnson’s book." Toronto-based Breakthrough used the passage from Johnson’s book in its 2004 documentary series, For King and Country, with an actor reading the excerpt. The production firm said that it was unable to locate the owners of the copyright to Johnson’s book after a three-month search. While the board ultimately approved Breakthrough’s application in May 2005, the two dissenting members were critical of the decision and voiced several concerns about its bearing on future Copyright Board hearings. "The time and effort that went into this was presumably in order to bring some clarity to the rights clearance nightmare facing Canadian documentary film makers," says intellectual property lawyer Howard Knopf, of Ottawa intellectual property law firm Macera & Jarzyna/Moffat & Co. "But, I’m afraid that the result, the splits in the decision and the obiter dicta may detract from that necessary clarity." For its part, Breakthrough director of legal affairs Burt Gidaro says the firm was simply trying to ensure it covered all the bases. "We felt that this could have fallen under other copyright provisions – being fair use, fair dealing – but we decided to be prudent and get a licence for this stuff, because it’s difficult to know what a substantial portion is," he says. In what could have far-ranging implications for how producers obtain permission to use copyrighted material in future works, Vancise and Callary said that the practice of waiting for the final version of a production before seeking copyright clearances should be discouraged. "The only reason we can imagine for the tardiness of the application is that the applicant never intended to seek licences for works that were reproduced but did not make the final cut, possibly so as to avoid the time and expense involved in seeking authorizations that arguably have little if any commercial value," they said. "In our view, the board should not sanction practices that necessarily involve unauthorized uses for which no licence will ever be sought." "From a legal perspective, Breakthrough should have sought permission to reproduce every work it copied, including those that ended up on the cutting room floor," the members continued. "In practice, it is more probable that it sought licences only for those works that remained after the final editing process." However, Vancise and Callary also noted that Breakthrough began its search for the owners of the book’s copyright in August 2004, while the series started airing on the History Television specialty channel on November 10, 2004. While they didn’t issue an opinion as to whether or not Breakthrough’s efforts to locate the copyright holders were adequate and reasonable, Vancise and Callary did rebuke the firm for proceeding with production on For King and Country without ensuring it had obtained all the necessary clearances. "The applicant has not acted beyond reproach," the members’ statement reads. "The board should not condone industry practices that view licensing copyright as an afterthought, thereby showing a lack of disregard for the rights of copyright owners." They noted that Breakthrough’s application wasn’t received at the board until October 26, 2004, two weeks before For King and Country was scheduled to air on History Television. "Before the episode could be broadcast, scenes had to be recorded and put together and editing had to take place, leading to the creation in some useable form of a master of the relevant episode," Vancise and Callary observed. "The episode then had to be delivered to History TV so that it could prepare for the broadcast. Consequently, it is almost certain that a number of protected uses, such as the synchronization of the excerpts onto the master tape of the relevant episode, occurred before Breakthrough applied for a licence." More profoundly, Vancise and Callary stated that in giving its blessing to Breakthrough’s use of the excerpts from "Action with the Seaforths," the board may be opening the door for future requests to licence insubstantial portions of an original work, thus jeopardizing the delicate balance between a user’s rights and a copyright holder’s rights. "Copyright owners may use the fact that the board licenses insubstantial takings as argument to convince users that an otherwise trivial taking is somehow substantial," they said. "Users will apply for unnecessary licences....‘Just in case’ licensing already is common." The two members also cautioned against using the Copyright Board’s licensing regime as a readily accessible and relatively cheap safeguard against future copyright infringement lawsuits for all types of content. "A section 77 licence is not an insurance policy, a cheap way for users to manage the risk of a costly legal defence and statutory damages for infringement, or an easy way to deal with an afterthought resulting from incorrect assumptions about how easy or difficult finding a copyright owner will prove," Vancise and Callary said. "It is not a dog licence. Asking for permission after the fact should be seen as prima facie suspect….Industry practices, however ingrained, should be discouraged if they do not show respect for copyright, even denounced if they treat the rights of copyright owners casually." Gidaro says he’s somewhat surprised at the dissenting judges’ remarks, and says Breakthrough never intended the licence application to serve as a form of insurance. "With greatest deference to Justice Vancise and Callary, it just seems a little odd that we get sort of a slap on the wrist for attempting to be diligent. In this case we did it to be prudent, and we didn’t necessarily think that ultimately we would be subject to an infringement claim," he says. "The minority was right to be concerned with the practice of obtaining ‘just in case’ and retroactive licences, and the board effectively becoming an insurance agency," Knopf says. "But that may be an inevitable consequence of the pervasive and destructive clearance culture and an overly deferential ‘respect for copyright.’ And, the irony is that the overall effect of the combined effect of the majority and minority decisions is likely to precipitate precisely this result feared by the minority by encouraging increasing numbers of unnecessary clearance requests at an early stage of a project, ‘just in case’."

Breakthrough decision invites spurious claims – and worse: Copyright Board members

News | 03/24/2006 5:00 am EST

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