Notes on Canadian intellectual property law
Generally, ownership of copyright to a work is given to the author of the work, provided that it meets all the other prerequisites for copyright protection. An important exception to this rule is where works are produced during the course of employment or by commission (also known in the US as the “works made for hire”). Ownership of copyright, like other property rights, may be transferred, assigned, and licensed.
The Copyright Act1 provides the basis of ownership under s. 13:
13. (1) Subject to this Act, the author of a work shall be the first owner of the copyright therein.
(2) [Repealed, 2012, c. 20, s. 7] 2
Work made in the course of employment
(3) Where the author of a work was in the employment of some other person under a contract of service or apprenticeship and the work was made in the course of his employment by that person, the person by whom the author was employed shall, in the absence of any agreement to the contrary, be the first owner of the copyright, but where the work is an article or other contribution to a newspaper, magazine or similar periodical, there shall, in the absence of any agreement to the contrary, be deemed to be reserved to the author a right to restrain the publication of the work, otherwise than as part of a newspaper, magazine or similar periodical.
The Act also explicitly provides that such ownership rights may be assigned and licensed:
Assignments and licences
(4) The owner of the copyright in any work may assign the right, either wholly or partially, and either generally or subject to limitations relating to territory, medium or sector of the market or other limitations relating to the scope of the assignment, and either for the whole term of the copyright or for any other part thereof, and may grant any interest in the right by licence, but no assignment or grant is valid unless it is in writing signed by the owner of the right in respect of which the assignment or grant is made, or by the owner’s duly authorized agent.
Since copyright vests in the author of the work by default (presumably once the work has be fixed in material form), it is important to determine who the author was in order to establish a proper chain-of-title.
For example, in Gould Estate v Stoddart Publishing Co Ltd,3 the issue of authorship arose in the context of a dispute over ownership of interview notes. The estate of Glenn Gould, who was the subject of a series of interviews by Jock Carroll, sued for copyright infringement due to the publication of Carroll's book containing notes and narratives based on these interviews. The Ontario Court of Appeal held that the interviewer was the author of the notes and therefore owner of the copyright:
[…] It is evident from this record that Gould did not have a copyright with respect to his oral utterances or in the “transcriptions” of them, to use the appellants' phrase. To the contrary, Carroll as the author of the text and captions in the book was the owner of the copyright in the very written material the appellants are attempting to suppress.
Once it is established that Carroll owned the unrestricted copyright in the photographs and the written material in the book, there is nothing else to decide. […] Carroll created the portraits that are the artistic subject matter of the book in question and he was the author of the captions and text that supported and explained them. […] Accordingly, it was Carroll, and Carroll alone who was the owner of all relevant copyright and he was the only person entitled to publish the book sought to be suppressed.4
The Gould case was broadly consistent with existing Anglo-Canadian jurisprudence. In a 1937 case before the Chancery Division, Donoghue v Allied Newspapers Ltd,5 the Court held that the mere supply of information and underlying facts for a newspaper article does not grant any copyright ownership to the provider of information or subject of the interview, even though the information supplied has inherent value. Since the words in the article themselves are the reporter's own, he is the author and therefore the owner of its copyright. Drawing a distinction between idea and expression, the Court also noted that fixation is the moment at which copyright begins:
[T]hat in which the copyright exists is the particular form of language by which is conveyed the information which is to be conveyed. If the idea, however brilliant and however clever it may be, is nothing more than an idea, and is not put into any form of words, or any form of expression such as a picture or a play, then there is no such thing as copyright at all. It is not until it is (if I may put it in that way) reduced into writing, or into some tangible form, that you get any right to copyright at all, and the copyright exists in the particular form of language in which, or, in the case of a picture, in the particular form of the picture by which, the information or the idea is conveyed to those who are intended to read it or to look at it.6
As s. 13(4) of the Copyright Act makes clear, copyright can be transferred, assigned, or licenced, in whole or in part by the owner. This is based on the conception of copyright as an “economic right”. As the Supreme Court described in Théberge v Galerie d’Art du Petit Champlain inc:7
Generally speaking, Canadian copyright law has traditionally been more concerned with economic than moral rights. […] The principal economic benefit to the artist or author was (and is) the “sole right to produce or reproduce the work or any substantial part thereof in any material form whatever” (s. 3(1)) for his or her life plus fifty years (s. 6). The economic rights are based on a conception of artistic and literary works essentially as articles of commerce. (Indeed, the initial Copyright Act, 1709 (U.K.), 8 Ann., c. 21, was passed to assuage the concerns of printers, not authors.) Consistently with this view, such rights can be bought and sold either wholly or partially, and either generally or subject to territorial limitations, and either for the whole term of the copyright or for any part thereof (s. 13(4)). The owner of the copyright, thus, can be, but need not be, the author of the work. […]
Ownership of the various rights within the “bundle of rights” is an important consideration. For example, in Robertson v Thomson Corp,8 the defendant newspaper owned the rights to publish articles written by freelance authors in the newspaper, but not the right to publish the articles individually. Thus, when the defendant reproduced the individual articles in an electronic database, they infringed the copyright of the authors.
Whether a licensee is an “exclusive” licensee may also be important for standing, as exclusive licensees have standing to sue all others, including the owner/licensor, for infringement, while a “sole” or “non-exclusive” licensee may not have such rights.9