Théberge Supreme Court case divides experts on digital copyright applicability

Internet and copyright law experts are divided on the effects of the recent Théberge v. Galerie d’Art du Petit Champlain Inc. decision by the Supreme Court of Canada on the digital copyright reform process now underway. While several prominent lawyers and creators are worried the decision will push legislators to draft copyright rules that favour users over creators, some observers say the court’s ruling can only be interpreted very narrowly, and is pertinent only to a particular set of circumstances unlikely to have much impact on broader digital issues. The case, an appeal of an earlier decision of the Court of Appeal of Quebec, centres on the efforts of internationally-known painter Claude Théberge to block an art gallery from selling unauthorized reproductions on canvas of paintings he’d granted permission to be sold as posters. At issue was whether the process used to make the canvas-based prints – lifting the ink intact from paper and transferring it to canvas, leaving the paper blank – constituted a reproduction over which he had control or not. Lawyers for the gallery had argued that since no more copies existed after the process than before, there was no multiplication and thus no unauthorized reproduction. The painter, however, saw things differently and claimed his copyright had been violated. During arguments, the gallery maintained that the painter should not have the right to seize copies of the canvas-backed prints since there was no unauthorized reproduction. In its 4-3 majority decision in favour of the gallery, the Supreme Court ruled that when there is no multiplication, there is no reproduction, and therefore no copyright violation – a ruling that has creator groups in Canada worried and user groups elated. Users applaud the court’s finding in favour of limitations on what artists can control after a work has been purchased, something experts say should be taken into account as the government ponders changes to the Copyright Act that would protect, for instance, the integrity of technological protection measures to put limits on the usage of sound or video files distributed online. In the majority decision, Supreme Court justice Ian Binnie writes: "Moral rights act as a continuing restraint on what purchasers such as the appellants can do with a work once it passes from the author, but respect must be given to the limitations that are an essential part of the moral rights created by Parliament. Economic rights should not be read so broadly that they cover the same ground as the moral rights, making inoperative the limits Parliament has imposed on moral right." He continues: "…it does not matter that the appellants were multiple offenders at ‘ink transfers’ or that they were commercial entities participating in the resale market. The copyright infringement occurred at the moment of ‘reproduction’ in each instance, and would have been similarly objectionable, according to if done to a single copy by the individual appellant to hang in his own living-room. "In my view, with respect, this expansive reading of the s. 3(1) economic rights tilts the balance too far in favour of the copyright holder and insufficiently recognizes the proprietary rights of the appellants in the physical posters which they purchased. Adoption of this expanded interpretation would introduce the civiliste conception of "droit de destination" into our law without any basis in the Copyright Act itself, and blur the distinction between economic and moral rights imposed by Parliament." At the recent Ottawa consultation on digital copyright reform (CNM, April 19/02), the Théberge case was much-talked-about, though in presentations to government officials, two very different views of the results were brought out. Michael Geist, an oft-quoted Internet law expert and professor at the University of Ottawa, told officials of the departments of Canadian Heritage and Industry Canada that the decision should be treated as an "unsolicited submission that came in past the due date." He said the ruling recognizes that proper balance in copyright lies not only in recognizing creators’ rights, but giving due weight to limitations. Excessive control by artists, he argued, would stifle innovation. While several sources indicate the decision might not be as far-reaching as that, Geist defends his view that the ruling should be taken into account as new copyright rules are drafted. " all depends on how you frame the debate," he tells Canadian NEW MEDIA. "I believe the debate over technological protection measures (TPM) is one of establishing an appropriate balance between the rights of creators and users. That is why so much discussion goes to whether TPMs are needed and, if so, how to craft appropriate exceptions to maintain the balance. The Théberge case contains the Supreme Court’s most explicit comment regarding this balance in expressing caution of providing too much protection to creators by noting that copyright is a limited right. "Prior to this case, there were some that would cite to Bishop vs. Stephens in noting that Canadian copyright law was just about the rights of creators. In light of this decision, that is clearly not the case and one would hope that any reforms to Canada’s copyright law framework would continue to respect the balance to which the Supreme Court itself has called attention." Others agree with Geist’s view of the decision’s importance, though not with his conclusion about how it should affect final copyright legislation to come. Joanne Daniel, in her capacity as a consultant to Quebec’s Union des Artistes, says comments such as Binnie’s in the majority decision go well beyond the scope of most salient points in the case. "If you extend the other points that the judges have discussed in the decision – these points are probably more marginal in terms of the decision – but they’re there, and some of those points are very scary," she tells CNM. " as if the statement would be a guiding principle for future decisions in that area. If you have been in the area of copyright as long as I have, you know that the balance is very hard to achieve because the rights-holders, and mostly the authors, don’t have any bargaining power. The balance is totally not on their side. It’s very scary to see the Supreme Court deal with these types of issues for the first time in a long, long time in a very detailed decision, and come up with that kind of statement. You wonder, what’s guiding them to those types of conclusions?" Daniel takes comfort, however, in the dissenting judgement written by Charles Gonthier, which states that reproduction, in this case, doesn’t necessarily involve the creation of more copies than existed before. Otherwise, Daniel says, it’s possible to conceive of a situation in which a user might make a copy of a music track, destroy the original, and no longer be bound by copyright law since the copy isn’t deemed a reproduction. However, other observers say the Théberge case will likely have little impact on how future legislation on copyright is drafted. Roger Hughes, a noted intellectual property expert at Sim, Hughes, Ashton & McKay, says the ruling is pertinent to too narrow a case to be interpreted broadly. "Théberge really does not impact on digital copyright or digital situations that may arise, for instance, out of (the U.S. Digital Millennium Copyright Act)," he says. "Théberge is more directed to what I would call fundamental copyright principles. It deals with, on the one hand, whether this simple transformation is an infringement, or do you need multiplication of it? Théberge, on a 4-3 split, held that you need multiplication. There may be some incidental wording in some of the judgements, but I think that you’re teasing out of it too much to try to make it digital." Jay Kerr-Wilson, counsel at the Canadian Cable Television Association, agrees with Hughes. "It just shows that the court will look at what we think to be established copyright concepts in a new light. But, in terms of trying to make a specific connection from what they said here to what might happen in digital copyright? People will probably try to use this by analogy to argue digital stuff, but it’s not a digital case. Canvas and paper isn’t bits and bytes."

Théberge Supreme Court case divides experts on digital copyright applicability

Broadcast | May 1, 2002

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