Théberge v. Galerie d’Art du Petit Champlain inc.

Supreme Court of Canada

CITATION: Théberge v. Galerie d’Art du Petit Champlain inc., [2002] 2 S.C.R. 336, 2002 SCC 34
DATE: October 11, 2001
DOCKET: 27872

Galerie d’Art du Petit Champlain inc., Galerie d’Art Yves Laroche inc., Éditions Multi-Graph ltée, Galerie d’Art Laroche, Denis inc. and Serge Rosa
Claude Théberge

McLachlin C.J. and L’Heureux-Dubé, Gonthier, Iacobucci, Major, Binnie and LeBel JJ.

Binnie J.

Dissent: paras. 81 – 181
Gonthier J.

Show Headnote

The judgment of McLachlin C.J. and Iacobucci, Major and Binnie JJ. was delivered by Binnie J.

We are required in this appeal to determine the extent to which an artist, utilizing the statutory rights and remedies provided by the Copyright Act, R.S.C. 1985, c. C-42, can control the eventual use or display of an authorized reproduction of his or her work in the hands of a third party purchaser.

Claude Théberge, a well-established Canadian painter with an international reputation, seeks to stop the appellants, who amongst other things produce poster art, from transferring authorized reproductions of his artistic works from a paper substrate (or support) to a canvas substrate for purposes of resale. In my opinion, for the reasons which follow, the appellants did not thereby “copy” the respondent’s artistic works. They purchased lawfully reproduced posters of his paintings and used a chemical process that allowed them to lift the ink layer from the paper (leaving it blank) and to display it on canvas. They were within their rights to do so as owners of the physical posters (which lawfully incorporated the copyrighted expression). At the end of the day, no new reproductions of the respondent’s works were brought into existence. Nor, in my view, was there production (or reproduction) of a new artistic work “in any material form” within the meaning of s. 3(1) of the Copyright Act. What began as a poster, authorized by the respondent, remained a poster.

Nevertheless, on August 19, 1999, the respondent arranged to have the bailiff seize canvas-backed reproductions from the appellants without ever satisfying a judge that the appellants had violated the Copyright Act. Although seizure before judgment is designed purely as a conservation measure divorced from the merits of the case, the appellants claim that the seizure of their inventory caused them a significant loss, both in sales and reputation. The respondent has not proceeded with his action on the merits since the date of the seizure two and a half years ago.

I find myself in respectful disagreement with the conclusion of my colleague Gonthier J. In my view, the seizure was not authorized by the Copyright Act. The pre-judgment seizure provisions of art. 734 of the Quebec Code of Civil Procedure, R.S.Q., c. C-25, were thus not an available remedy. The seizure was therefore wrongful. I would allow the appeal.

I. The Nature of Copyright

Copyright in this country is a creature of statute and the rights and remedies it provides are exhaustive: Compo Co. v. Blue Crest Music Inc., [1980] 1 S.C.R. 357, at p. 373; R. v. Stewart, [1988] 1 S.C.R. 963; Bishop v. Stevens, [1990] 2 S.C.R. 467, at p. 477.

This is not to say that Canadian copyright law lives in splendid isolation from the rest of the world. Canada has adhered to the Berne Convention for the Protection of Literary and Artistic Works (1886) and subsequent revisions and additions, and other international treaties on the subject including the Universal Copyright Convention (1952), Can. T.S. 1962 No. 13. In light of the globalization of the so-called “cultural industries”, it is desirable, within the limits permitted by our own legislation, to harmonize our interpretation of copyright protection with other like-minded jurisdictions. That being said, there are some continuing conceptual differences between the droit d’auteur of the continental civiliste tradition and the English copyright tradition, and these differences seem to lie at the root of the misunderstanding which gave rise to the present appeal.

I acknowledge, at the outset, that there is a significant difference in appearance between a paper-backed poster and a canvas-backed poster. The question is whether for present purposes creating this difference by mechanical transfer from one substrate or backing to another violates the Act. The respondent must find authority for the seizure in the Code of Civil Procedure read in light of the Copyright Act. If he cannot find authority in the legislation, then it does not exist and the seizure was wrongful.

II. The Respondent’s Copyright

The respondent easily meets the first hurdle, which is to satisfy the statutory requirements for a copyright. There is no doubt that his talent is embodied in artistic works of great originality. These works were protected by copyright from the moment of their expression, without any requirement of registration or other formality on his part. The protection extends not only to the original painting (“artistic work”) but also to subsequent copies which embody the work. The respondent is thus entitled to the full measure of protection the Act allows. The question, however, is whether he went too far in obtaining a seizure before judgment of works which he, necessarily viewing the matter in his own interest, found to be infringing.

In my view, with respect, my colleague Gonthier J. gives too little scope to the property rights of the purchaser who owns the poster, i.e., the physical object incorporating the copyrighted expression, and excessive rights to the artist who authorized the printing and sale of the poster purchased.

10 More specifically, I think that if modification of these posters were to give rise to any legitimate objection on the part of the artist, it must be as a result of violation of his “moral” right to the integrity of his work. In that regard, however, my colleague Gonthier J. and I are in agreement that seizure before trial is not a remedy available in an action based on the alleged breach of the artist’s “moral” right in a work.

III. The Content of the Respondent’s Rights Under the Copyright Act

11 The Act provides the respondent with both economic and “moral” rights to his work. The distinction between the two types of rights and their respective statutory remedies is crucial.

12 Generally speaking, Canadian copyright law has traditionally been more concerned with economic than moral rights. Our original Act, which came into force in 1924, substantially tracked the English Copyright Act, 1911 (U.K.), 1 & 2 Geo. 5, c. 46. 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. It was the respondent’s economic rights in enumerated works that were the subject-matter of an assignment to two poster manufacturers, Éditions Galerie L’Imagerie É.G.I. Ltée (“É.G.I.”) by contract dated October 29, 1996, and New York Graphic Society, Ltd. by contract dated February 3, 1997.

13 We are told that all of the reproductions at issue here were printed by É.G.I., art. 19 of whose contract with the respondent provided that:

14 The appellants were not party to this contract, but I agree with my colleague Gonthier J. that its terms may nevertheless be relevant in determining to what extent the respondent assigned away his economic rights under the Copyright Act, and to what extent he still holds them. É.G.I., it is noted, is not a party to this proceeding. The only economic rights the respondent can assert under the Act are those rights that he has retained. Accepting, as I do, my colleague’s interpretation of the É.G.I. contract to the effect that the respondent (rather than É.G.I.) retained the right to bring this action, the respondent must still establish a breach by the appellants of s. 3(1) of the Act.

15 Moral rights, by contrast, descend from the civil law tradition. They adopt a more elevated and less dollars and cents view of the relationship between an artist and his or her work. They treat the artist’s ?uvre as an extension of his or her personality, possessing a dignity which is deserving of protection. They focus on the artist’s right (which by s. 14.1(2) is not assignable, though it may be waived) to protect throughout the duration of the economic rights (even where these have been assigned elsewhere) both the integrity of the work and his or her authorship of it (or anonymity, as the author wishes).

16 The civiliste tradition surfaced at an early date in this Court in Morang and Co. v. LeSueur (1911), 45 S.C.R. 95, where Fitzpatrick C.J. approached the interpretation of a contract between a publisher and the author of an unpublished work on William Lyon Mackenzie with the civil law notions of “droit moral” in mind, at pp. 97-98:

17 The important feature of moral rights in the present statute is that the integrity of the work is infringed only if the work is modified to the prejudice of the honour or reputation of the author (s. 28.2(1)). Given the importance of this condition in construing the scheme of the Act as a whole, I set out the relevant provisions:

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; or

      (b)  used in association with a product, service, cause or institution.

28.2 (1) Il n’y a violation du droit à l’intégrité que si l’?uvre est, d’une manière préjudiciable à l’honneur ou à la réputation de l’auteur, déformée, mutilée ou autrement modifiée, ou utilisée en liaison avec un produit, une cause, un service ou une institution.

  (2) 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.

  (2) Toute déformation, mutilation ou autre modification d’une peinture, d’une sculpture ou d’une gravure est réputée préjudiciable au sens du paragraphe (1).

  (3) For the purposes of this section,

      (a)  a change in the location of a work, the physical means by which a work is exposed or the physical structure containing a work, or

      (b)  steps taken in good faith to restore or preserve the work

  shall not, by that act alone, constitute a distortion, mutilation or other modification of the work.

  (3) Pour l’application du présent article, ne constitue pas nécessairement une déformation, mutilation ou autre modification de l’?uvre un changement de lieu, du cadre de son exposition ou de la structure qui la contient ou toute mesure de restauration ou de conservation prise de bonne foi. [Emphasis added.]

  Thus, in Snow v. The Eaton Centre Ltd. (1982), 70 C.P.R. (2d) 105 (Ont. H.C.), a sculptor successfully objected to the Eaton Centre festooning with Christmas ribbons his creation of a flight of 60 Canada geese that are forever poised to land inside the south entrance of a downtown shopping mall in Toronto. The artist’s counsel said, at p. 106, that his client:

18 Thus, even though the flying geese had been sold and paid for, the artist was able to reach across the ownership divide to take action against a successor owner not for infringing his economic rights but for violating his moral rights, i.e., for perpetrating what both he and the judge regarded as an attack on the artistic integrity of the descending flock.

19 The evidence here suggests that, at least in some instances, the respondent’s name was deleted and was no longer on the posters when they were offered for resale. The respondent could have asserted a moral right to be publicly identified with his artistic work in this respect.

IV. The Respondent’s Complaint

20 The respondent made it clear in his evidence that his real complaint is more properly characterized as the alleged infringement of his “moral” rights and its potential impact on the market for his works.


21 Apart from the complaint of non-attribution (which is a moral rights issue), it seems the respondent as an artist simply wishes to stop the appellants from catering to the market for canvas-backed reproductions that apparently exists. To do so, however, he must as a litigant demonstrate a statutory right that overrides what the owners of the authorized poster could otherwise do with their tangible property.

22 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 rights.

23 To the extent the respondent is suggesting that observers cannot tell the difference between the original painting and a poster reproduction on a canvas substrate, I think he perhaps does them all a disservice. In any event, he has enabled the appellants to do what they are doing by authorizing the creation of up to 10,000 paper-backed posters, some of which they have duly purchased on the open market.

V. Expansion of the Economic Right

24 My colleague, Gonthier J., proposes that we should treat the movement of the same physical layer of inks around different substrates as a violation of the respondent’s s. 3(1) right “to produce or reproduce the work …in any material form whatever”. More specifically, he identifies “fixation” as an act of reproduction, and therefore fixation of the ink layer to a new substrate as an infringement of copyright, at para. 147:

25 Fixation” has a relatively well settled but rather different connotation in copyright law. It distinguishes works capable of being copyrighted from general ideas that are the common intellectual “property” of everyone:

26 My colleague proposes that the idea of “fixation” be carried forward into the physical composition of the work embodying the copyrighted expression, so that substitution of one backing for another constitutes a new “reproduction” that infringes the copyright holder’s rights even if the result is not prejudicial to his reputation.

27 On this view, 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 my colleague’s approach, if done to a single copy by the individual appellant to hang in his own living-room.

28 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.

29 I will address these issues in the following order:

A. The Present Balance Between the Economic Interest of the Copyright Holder and the Proprietary Interest of the Purchasing Public Would be Significantly Altered to the Public’s Detriment

30 The Copyright Act is usually presented as a balance between promoting the public interest in the encouragement and dissemination of works of the arts and intellect and obtaining a just reward for the creator (or, more accurately, to prevent someone other than the creator from appropriating whatever benefits may be generated). The elements of this balance are discussed in more detail by J. S. McKeown, Fox Canadian Law of Copyright and Industrial Designs (3rd ed. 2000), at p. 3. See also D. Vaver, Intellectual Property Law: Copyright, Patents, Trade-marks (1997), at p. 22. This is not new. As early as 1769 it was said by an English judge:

31 The proper balance among these and other public policy objectives lies not only in recognizing the creator’s rights but in giving due weight to their limited nature. In crassly economic terms it would be as inefficient to overcompensate artists and authors for the right of reproduction as it would be self-defeating to undercompensate them. Once an authorized copy of a work is sold to a member of the public, it is generally for the purchaser, not the author, to determine what happens to it.

32 Excessive control by holders of copyrights and other forms of intellectual property may unduly limit the ability of the public domain to incorporate and embellish creative innovation in the long-term interests of society as a whole, or create practical obstacles to proper utilization. This is reflected in the exceptions to copyright infringement enumerated in ss. 29 to 32.2, which seek to protect the public domain in traditional ways such as fair dealing for the purpose of criticism or review and to add new protections to reflect new technology, such as limited computer program reproduction and “ephemeral recordings” in connection with live performances.

33 This case demonstrates the basic economic conflict between the holder of the intellectual property in a work and the owner of the tangible property that embodies the copyrighted expressions.

34 To illustrate the level of intrusiveness that would result from my colleague’s interpretation, it is useful to describe in greater detail the process applied by the appellants.

35 The appellants purchased on the open market a quantity of posters of the respondent’s artistic works. They subjected these posters to a technique which involved spreading a special resin or laminating liquid across the face of a poster. The resin is designed to bond with the surface inks. After the applied coating is dried (or cured), the coated poster is submerged in a bath of solvent which loosens the paper substrate but leaves intact the fixed ink/resin layer, thus allowing the latter to be peeled off the former. The rear of the ink/resin layer is then coated with a suitable adhesive resin and transferred to a canvas substrate, which is then smoothed and finished.

36 It is not suggested that “reproduction” occurred when the resin was spread on the poster. This is part of the laminating process envisaged by the É.G.I. contract, and the respondent does not regard it as objectionable.

37 Did “reproduction” occur when the paper backing was peeled away? If the resulting film of inks had then been framed and suspended in front of a window like a piece of Tiffany glass, I would think the respondent could not complain. A purchaser has the right to cut up a poster into strips or divide it as he or she wishes. Division cannot logically be characterized as reproduction.

38 My colleague, Gonthier J., takes the position that if the image were transferred from one piece of paper to a different piece of paper with no other “change”, there is a new “fixation” and that would be “reproduction”. But in what way has the legitimate economic interest of the copyright holder been infringed? The process began with a single poster and ended with a single poster. The image “fixed” in ink is the subject-matter of the intellectual property and it was not reproduced. It was transferred from one display to another. It is difficult to envisage any intellectual content let alone intellectual property embodied in the piece of blank paper peeled away, or in the piece of blank paper substituted for it. When Raphaël’s Madonna di Foligno was lifted for preservation purposes from its original canvas in 1799 under the direction of the chemist Berthollet and fixed to a new canvas, the resulting work was considered to be no less an original Raphaël. Similarly, when the frescoes of Pompeii were restored by replacement of the underlying plaster, the result was not classified as a “reproduction”, even though the old plaster was a constituent physical element of the original frescoes. If a comparable copyright situation arose, I do not think the artist would (or should) have a veto over a purchaser’s attempt to preserve the asset. These examples may be more spectacular than the humble swap of substrates of a paper poster, but the principle is the same and applies equally to authorized copies as well as to the original artistic work. In neither case is there reproduction within the meaning of the Act.

39 The Quebec Court of Appeal adopted a more restricted view than does my colleague, suggesting that the violation of economic rights lay not simply in “fixation” but in moving the ink film from a paper substrate to a substrate of a more costly material, namely canvas ([2000] Q.J. No. 412 (QL), at paras. 18-23). (This was thought to place the respondent’s work for resale in a different market niche, as discussed below.) This too, in my view, goes too far. If the “new” substrate material were made of a smooth sheet of vellum (calf) or papyrus, the result would have the identical appearance to the original paper. How has the copyright holder’s interest in the “intellectual” property been harmed by such a change in the material composition of the backing? Does the mischief only emerge in appearances, i.e., if the new piece of paper has a textured finish, or is pebbled to look like canvas? No one would deny the world of difference between the original artistic work and a mechanically produced copy, but we are talking here about moving the same physical layer of inks around different blank substrates.

40 To allow artists to regulate what can or cannot be done with posters in this way would have the public searching for elusive distinctions. There would be no even reasonably “bright line” between infringing and non-infringing conduct, a deficiency that would be particularly mischievous when dealing with pre-judgment seizure at the instance of a plaintiff without judicial supervision.

41 I do not foreclose the possibility that a change of substrate could, as part of a more extensive set of changes, amount to reproduction in a new form (perhaps, for example, if the respondent’s work were incorporated by the ink transfer method into some other artist’s original work) but the present case does not rise to that level.

B. The Proposed Test Would Depart from the General Principle that Breach of Copyright Requires Copying

42 The historical scope of the notion of “reproduction” under the Copyright Act should be kept in mind. As one would expect from the very word “copyright”, “reproduction” is usually defined as the act of producing additional or new copies of the work in any material form. Multiplication of the copies would be a necessary consequence of this physical concept of “reproduction”. In Massie & Renwick, Ltd. v. Underwriters’ Survey Bureau, Ltd., [1940] S.C.R. 218, at p. 227, Duff C.J. viewed copyright law as essentially about protecting the right to multiply copies of a work:

  See also Tom Hopkins International, Inc. v. Wall & Redekop Realty Ltd. (1984), 1 C.P.R. (3d) 348 (B.C.S.C.). In Underwriters’ Survey Bureau Ltd. v. Massie & Renwick Ltd., [1937] Ex. C.R. 15, Maclean J., for the Exchequer Court, defined copyright as (at p. 20):

43 More pertinent still is the Ontario case of Fetherling v. Boughner (1978), 40 C.P.R. (2d) 253 (Ont. H.C.), relied on by the motions judge in this case, which dealt with a similar fact situation. Southey J. concluded in his oral judgment, at p. 256:

  See also to the same effect: No Fear, Inc. v. Almo-Dante Mfg. (Canada) Ltd. (1997), 76 C.P.R. (3d) 414 (F.C.T.D.).

44 A similar understanding of “reproduction” is reflected in decisions under the English Act on which s. 3(1) of our Act is based, i.e., the physical making of something which did not exist before (Laddie et al., supra, at p. 614). As stated by the Earl of Halsbury in Walter v. Lane, [1900] A.C. 539 (H.L.), at p. 545:

45 My colleague takes the view (at para. 139) that reproduction does not necessarily imply multiplication of the thing reproduced. In this connection, he refers to Apple Computer, Inc. v. Mackintosh Computers Ltd., [1987] 1 F.C. 173, 10 C.P.R. (3d) 1 (T.D.), aff’d [1988] 1 F.C. 673 (C.A.), aff’d [1990] 2 S.C.R. 209. In that case, however, multiplication was admitted ([1988] 1 F.C. 673, at p. 697). The issue was not the meaning of reproduction but whether a computer silicon chip could be the subject-matter of copyright protection. The computer program at issue was multiplied when reproduced in the form of a ROM chip. When the process was complete, the original written text of the program still existed, as did the subsequent renditions of it in code within the plaintiff’s systems as well as the new reproduction etched in the memory cells of the defendant’s chip (pp. 11-12 C.P.R.). In Apple Computer the copyright issue was whether literal multiplication might nevertheless not constitute a “reproduction” for purposes of the Copyright Act. The facts here pose the opposite question, namely whether there is “reproduction” without multiplication.

46 My colleague also cites Compagnie Générale des Établissements Michelin--Michelin & Cie v. National Automobile, Aerospace, Transportation and General Workers Union of Canada (CAW-Canada), [1997] 2 F.C. 306 (T.D.). In that case, the defendant union, in an organized campaign against Michelin, reproduced in its leaflets Michelin’s “fanciful happy marshmallow-like” man shown stomping on the head of a worker. The union denied substantial reproduction of Michelin’s copyrighted figure because of minor differences in the rendition (“qualitative” differences). The defence was rejected. There was, accordingly, reproduction, but there was also multiplication of the copyrighted image in each of the union’s leaflets.

47 This is not to say that the Act recognizes only literal physical, mechanical reproduction. The legal concept has broadened over time to recognize what might be called metaphorical copying (transformation to another medium, e.g. books to films). It is recognized that technologies have evolved by which expression could be reproduced in ways undreamt of in earlier periods, such as evanescent and “virtual” copies in electronic formats. Transformation of an artistic work from two dimensions to three dimensions, or vice versa, will infringe copyright even though the physical reproduction of the original expression of that work has not been mechanically copied. Equally, translations or transformations into another medium may be infringements of economic rights. Nevertheless, the important evolution of legal concepts in the field of copyright is not engaged by the facts here. This is a case of literal physical, mechanical transfer in which no multiplication (metaphorical or otherwise) takes place.

48 It is of interest that our courts have not given an independent meaning to “produce” as distinguished from “reproduce” in s. 3(1) of the Act. Nor have the courts done so under the English Act. In fact, in that country, the word “produce” was thought to be of such little consequence that it was eliminated from the Act by amendment in 1956 (H. G. Richard and L. Carrière, eds., Canadian Copyright Act Annotated (loose-leaf), vol. 1, at p. 3-7). See also C. Brunet, “Copyright: The Economic Rights”, in G. F. Henderson, ed., Copyright and Confidential Information Law of Canada (1994), 129, at pp. 136-37, and McKeown, supra, at p. 421.

49 The U.S. legislation expressly incorporates a definition of “derivative work”, as happens for example when a cartoon character is turned into a puppet, or a tragic novel is turned into a musical comedy. In such circumstances there is, in a sense, a “production” rather than a reproduction. However, the examples of what might be called derivative works listed in s. 3(1)(a) to (e) of our Act are consistent with the notion of reproduction because they all imply the creation of new copies or manifestations of the work. In the application of the ink transfer method, however, there is no derivation, reproduction or production of a new and original work which incorporates the respondent’s artistic work.

50 Even if one were to consider substitution of a new substrate to be a “fixation”, the fact remains that the original poster lives on in the “re-fixated” poster. There is no multiplication and fixation alone is not an infringement of the original work.

C. There Was No Reproduction “in Substantial Part”

51 My colleague relies (at para. 142) on the respondent’s exclusive right under s. 3(1) to produce or reproduce his work “or any substantial part thereof in any material form whatever”. Under this provision, an infringer does not escape liability by reproducing a substantial part of the artistic work as opposed to the whole of it. An individual who copies a novel does not avoid the penalties set out for infringement simply by changing a few words and, likewise, an individual cannot copy with impunity simply by changing the medium. A playwright would be liable if he or she put on the stage a substantial part (but not the whole) of a copyrighted novel. There would clearly be reproduction of that part, i.e., the part of the novel in which intellectual property subsists. After the production, the novel would still exist intact, as would the new play. Here the layer of inks, in which resides the artistic content, rests intact and there is no such multiplication of a “substantial part” of the poster.

52 If the respondent’s attempt to extend the concept of reproduction “in substantial part” to situations where there is no multiplication were correct, one would expect to find decided cases in support of his thesis but none have been brought to our attention.

D. The Quebec Court of Appeal Test of “Unanticipated Market” Similarly Exceeds Statutory Copyright Limits

53 The Quebec Court of Appeal ([2000] Q.J. No. 412 (QL)) proposed a form of market analysis to restrain modification of poster reproductions. Michaud C.J.Q. stated, at paras. 21-23:

54 The respondent, as stated, says that money is not the issue. If it were, he could presumably amend his contract with É.G.I. to permit them to sell reproductions on canvas. Equally, he could theoretically have insisted that É.G.I. obtain agreement from its customers not to engage in the ink transfer process, and so on down the line of vendors and purchasers, thereby dealing with the issue of control through a chain of contracts. Indeed, É.G.I. did print such a prohibition on some of the posters, but if any contract resulted, it was not between the appellants and the respondent, and É.G.I. has not come before the court to complain.

55 The position taken by the Quebec Court of Appeal, nevertheless, echoes the debate in some U.S. courts about the proper allocation of compensation where a new way has been found to exploit the work in a market or market niche perhaps not anticipated by the creator of the underlying work, who thus may not have captured the highest price to be charged for the sale or use of that underlying work: see Mirage Editions, Inc. v. Albuquerque A.R.T. Co., 856 F.2d 1341 (9th Cir. 1988); A. B. Cohen, “When Does a Work Infringe the Derivative Works Right of a Copyright Owner?” (1999), 17 Cardozo Arts & Ent. L.J. 623, at p. 654.

56 I shall refer below to the U.S. concept of a “derivative work”, but for the moment it is sufficient to say that by 1996 and 1997 when É.G.I. and New York Graphic Society, Ltd. contracts were entered into, the “ink transfer process” was well established in the poster art industry. The respondent’s position is that he does not want to enter that market, not that it was unknown or unforeseen. The question he poses in this case is whether his economic rights under the Copyright Act permit him to prevent others from entering that market using existing (and paid for) copies of his work.

E.  The Proposed Test Would Undermine the Distinction Between Moral Rights and Economic Rights Contrary to Legislative Intent

57 As previously noted, s. 28.2(1) of the Act provides that even a purchaser of the tangible object may not “distor[t], mutilat[e] or otherwise modif[y]” (emphasis added) the work “to the prejudice of the honour or reputation of the author”. It seems clear, at least by negative implication, that a modification of a work by the purchaser which does not “prejudice …the honour or reputation of the author” was intended by Parliament to be within the purchaser’s rights.

58 In addition, as a secondary point, s. 28.2(3) of the Act provides that a change in “the physical … structure containing a work …shall not, by that act alone, constitute a distortion, mutilation or other modification of the work”. To the extent a change in substrate can be said to change the “physical structure” containing the respondent’s work, it does not “by that act alone” amount to a violation of a moral right either.

59 The separate structures in the Act to cover economic rights on the one hand and moral rights on the other show that a clear distinction and separation was intended. Professor Ysolde Gendreau is one of those who have drawn attention to this rather rigid compartmentalisation:

  (See also R. G. Howell, L. Vincent and M. D. Manson, Intellectual Property Law: Cases and Materials (1999), at p. 383.) This is not to say that moral rights do not have an economic dimension (e.g., there may be an economic aspect to being able to control the personality-invested “moral” rights of integrity and attribution) or to deny that there is a moral rights aspect to copyright (e.g., a critic may reproduce parts of the text of a book when reviewing it, but it will be considered a breach of the author’s economic rights unless his or her authorship is attributed). However, in terms of remedies, the distinction in the Act between the two sets of rights is clear.

60 My view is that Parliament intended modification without reproduction to be dealt with under the provisions dealing with moral rights rather than economic rights. To adopt a contrary view, i.e., to treat the modification of the substrate here as the violation of an economic right, would allow copyright holders other than the artist to complain about modification (despite the non-assignability of moral rights). It would allow an artist who objected to a “modification” of an authorized reproduction both to sidestep the independent evaluation of a judge in unleashing a pre-judgment seizure in Quebec, and to sidestep at a trial anywhere in Canada the important requirement of showing prejudice to honour or reputation in order to establish an infringement of moral rights.

61 Could the economic rights of the sculptor of the descending geese at the Eaton Centre be said to be infringed (quite apart from his moral rights) because the seasonal “combination” of geese plus Christmas ribbons could be considered a “reproduction”? The be-ribboned flock incorporated the original artistic work in more than “substantial part”, no doubt, but there was no “reproduction” in any legal sense, any more than there was “reproduction” when the appellants in this case contributed blank canvas to the “combination” of ink layer and canvas. The sculptor rightly invoked his moral rights against the Eaton Centre, not economic rights.

F. A “Droit de Destination” Would Be Introduced into our Law Without any Basis in the Copyright Act

62 It is not altogether helpful that in the French and English versions of the Act the terms “copyright” and “droit d’auteur” are treated as equivalent. While the notion of “copyright” has historically been associated with economic rights in common law jurisdictions, the term “droit d’auteur” is the venerable French term that embraces a bundle of rights which include elements of both economic rights and moral rights. As Professor Strowel observes:

63 Under the civiliste tradition, and particularly in France, the right of reproduction was interpreted to include not only the right to make new copies of the work (reproduction stricto sensu) but also what is called by French jurists the “right of destination” (droit de destination). The right of destination gives the author or artist the right to control to a considerable extent the use that is made of authorized copies of his or her work: see generally A. Lucas and H.-J. Lucas, Traité de la propriété littéraire & artistique (1994), at p. 235; F. Pollaud-Dulian, Le droit de destination: le sort des exemplaires en droit d’auteur (1989). See alsoCrim., January 28, 1888, Bull. crim., No. 46, p. 68; Crim., December 2, 1964, Bull. crim., No. 320, p. 672; Crim., October 20, 1977, Bull. crim., No. 315, p. 801; Civ. 1st, May 5, 1976, Bull. civ., No. 161, p. 128; Paris, March 18, 1987, D. 1988.Somm.209, note Colombet; Civ. 1st, April 19, 1988, Bull. civ., No. 112, p. 76; Paris, April 27, 1945, Gaz. Pal. 1945.1.192.

64 The “droit de destination” applies in other civiliste jurisdictions. Thus in Hovener/Poortvliet, HR January 19, 1979, NJ 412, brought to our attention by counsel for the respondent, the Netherlands Supreme Court found a violation of the droit d’auteur where a purchaser of an authorized art calendar cut out the pictures, stuck them to coasters, and resold them. This was regarded by the court as an altogether new and different “publication”. In Frost v. Olive Series Publishing Co. (1908), 24 T.L.R. 649 (Ch. Div.), by contrast, the English court did not regard as an infringement the cutting out of pictures from books, pasting them on cards, and reselling. “[The recirculation of] objects already in existence is not reproduction in a material form”: Laddie et al., supra, at p. 614.

65 It seems to me that the respondent is pursuing a form of “droit de destination” in this case. But, under our Copyright Act, the “right of destination” as such does not exist. Generally, the copyright holder does not by virtue of his or her economic rights retain any control over the subsequent uses made of authorized copies of his work by third party purchasers. Where in specified situations the Act gives the copyright holder some power to control or benefit from subsequent uses of authorized copies of his work, the relevant provisions are narrowly framed to apply only to very specific forms of reproduction, as in the case of sound recordings (s. 15(1)) or computer programs (s. 3(1)(h)). If a general right to control subsequent usage existed, it would not have been necessary to make specific provision in these cases.

G.  The Proposed Test Would Conflict with Precedent from Other Comparable Jurisdictions

66 Reference has already been made to the English “note card” case, Frost, supra. Comparable issues relating to the production or reproduction for the purposes of copyright law have also arisen in the United States, including cases of techniques similar to the ink transfer process used by the appellants in the present appeal. For example, in C. M. Paula Co. v. Logan, 355 F.Supp. 189 (N.D. Tex. 1973), the allegations of copyright infringement were directed at the defendant’s transferral of various copyrighted designs from Paula Company greeting cards and note pads to ceramic plaques produced and sold by the defendant. The Paula Company described as follows the process employed by the defendant (at p. 190):

67 The United States District Court concluded that there was no violation of the plaintiff’s copyright (at p. 191):

68 Reference should also be made in this connection to Peker v. Masters Collection, 96 F.Supp.2d 216 (2000), where the New York District Court ruled that the mere transfer of the ink from one support to another represents only a re-displaying of the poster image -- similar to framing or lamination -- that does not amount to “reproduction” of the work. However, in that case, once mounted, the defendant employed specially trained “artists” to apply oil paint in brushstrokes to the image, attempting to match the colour and style of the original painting. The court held that this additional copying amounted to an unauthorized reproduction of the original work. (There was no attempt in our case to replicate brushstrokes.)

69 The “ink transfer” method appears not to have stirred much comment in other common law jurisdictions, including Australia and New Zealand.

H. The U.S. Concept of a “Recast, Transformed, or Adapted” Derivative Work Would Be Introduced into our Law Without any Legislative Basis

70 Of relevance to the present discussion is the fact that the United States legislation, apart from entitling the copyright holder to control the “reproduction” of his work, allows the copyright holder the right to authorize (or prohibit) the creation of “derivative works”. The concept is formally defined in s. 101 of the United States Code, Title 17, as follows:

71 The concept of a derivative work is found in the Berne Convention, and in the copyright legislation of the United States, England, Australia, New Zealand and Canada. All these provisions reflect a common progression in copyright legislation from a narrow protection against mere literal physical copying to a broader view which allows the copyright owner control over some changes of medium and adaptations of the original work. While the idea of “derivative works” therefore has parallels in other jurisdictions, including Canada, the American statutory language is particularly expansive, including in particular the words “any other form in which a work may be recast, transformed, or adapted”, that have no precise counterpart in Canadian legislation.

72 The poster art industry in the United States has been actively litigating the broad statutory “derivative works” provision against owners of the material objects that embody the copyrighted work. In Mirage Editions, supra, for example, the copyrighted image was applied to a ceramic tile. The 9th Circuit Court of Appeals ruled that the ceramic was an infringing “new” derivative work, a conclusion expressly rejected by the 7th Circuit Court of Appeals in Lee v. A.R.T. Co., 125 F.3d 580 (1997), which concluded that the fixation did not infringe the copyright. Easterbrook J., for the 7th Circuit, reasoned that “[a]n alteration that includes (or consumes) a complete copy of the original lacks economic significance” (p. 581). He further found that there was no distinction between framing works of art, an acceptable practice under copyright law, and more permanent methods of display, such as re-fixing the art work on tile. The 9th Circuit has taken a different view: see Mirage Editions, supra. These cases and their progeny typically turn on conflicting interpretations of the words “recast, transformed, or adapted” in the U.S. statutory definition, but even under that more expansive U.S. definition of “derivative works” the 7th Circuit concluded that permanently mounting the artwork on tile did not “recast, transform, or adapt” the work. If these words appeared in our Act, there would presumably be a similar battle of statutory construction here, with the respondent saying the work was “recast, transformed, or adapted”, and the appellants denying that characterization, but the conflict between the scope of the copyright holders’ economic rights to control the end uses of his work and the purchasers’ rights as owners of the material object is the same. In the absence of the “recast, transformed, or adapted” language (or equivalent) in our Act, however, the respondent is unable to rely on it as an additional basis of copyright liability. As Estey J. noted in Compo, supra, at p. 367:

73 I should note that while there is no explicit and independent concept of “derivative work” in our Act, the words “produce or reproduce the work …in any material form whatever” in s. 3(1) confers on artists and authors the exclusive right to control the preparation of derivative works such as the union leaflet incorporating and multiplying the Michelin man in the Michelin case, supra. See generally, McKeown, supra, at p. 64. In King Features Syndicate, Inc. v. O. and M. Kleeman, Ltd., [1941] A.C. 417 (H.L.), under a provision in the English Act similar to s. 3(1) of our Act, the plaintiff’s copyright in the cartoon character “Popeye the Sailor” was held to be infringed by an unauthorized doll, i.e., the two dimensional character was reproduced without authorization in a new three-dimensional form. See also W. J. Braithwaite, “Derivative Works in Canadian Copyright Law” (1982), 20 Osgoode Hall L.J. 191, at p. 203. To the extent, however, that the respondent seeks to enlarge the protection of s. 3(1) by reading in the general words “recast, transformed, or adapted” as a free-standing source of entitlement, his remedy lies in Parliament, not the courts.

VI. Conclusion with Respect to the Substantive Issue

74 My conclusion is that in this case the respondent is asserting a moral right in the guise of an economic right, and the attempt should be rejected.

75 If the respondent’s argument were correct in principle, of course, the absence of authority would not prevent his success. It is in the nature of the subject that intellectual property concepts have to evolve to deal with new and unexpected developments in human creativity. The problem here is that the respondent’s submission ignores the balance of rights and interests that lie at the basis of copyright law.

VII. Conclusion With Respect to the Procedural Issue

76 I agree with Gonthier J. that an art. 734 seizure before judgment is not available to an artist or author who relies on the alleged infringement of a moral right.

77 Article 734 of the Quebec Code of Civil Procedure is a [translation] “draconian procedure” as Gonthier J. himself noted 25 years ago while sitting as a trial judge in Thériault v. Succession de Rémi Thériault, [1977] C.S. 1120, at p. 1121:

78 I think Parliament had good reason not to authorize seizure before judgment without judicial order where the only sustainable allegation of infringement relates to moral rights. As discussed earlier, moral rights are hedged about with the concept of reasonableness. The evaluation of a potential breach calls for the exercise of a good deal of judgment, e.g., an artist or author has the moral right to be associated with his or her work “where reasonable” (s. 14.1(1)). A distortion, mutilation or modification of a work is only actionable if it is to “the prejudice of the honour or reputation of the author” (s. 28.2(1)). The artist or writer should not become the judge in his own cause on such matters and it is therefore entirely understandable that Parliament should insist on prior judicial review before any seizure takes place based on an assertion of violation of moral rights.

79 I conclude therefore that at this stage of the interlocutory proceedings, the respondent has not brought himself within s. 38 of the Copyright Act and therefore had no authority to obtain a seizure of the appellants’ copies under art. 734 of the Quebec Code of Civil Procedure. Whether a fuller record adduced at trial will demonstrate a breach of economic rights or moral rights will be for the trial judge to determine. At this stage, we need to decide only that the interlocutory record did not justify the seizure before judgment.

VIII. Disposition

80 The appeal should be allowed. I would vacate the order of the Quebec Court of Appeal and restore the order of the motions judge setting aside the seizure and ordering that the seized goods be returned to the appellants. As this is an interlocutory proceeding, the costs both here and in the courts below should be to the appellants in the cause, i.e., the appellants will be entitled to their costs of these interlocutory proceedings only if they ultimately succeed in the action on the merits.

Show Dissent by Gonthier J.

Appeal allowed with costs in the cause, L’Heureux-Dubé, Gonthier and LeBel JJ. dissenting.

Solicitors for the appellants Galerie d’Art Yves Laroche inc. and Éditions Multi-Graph ltée: Gowling Lafleur Henderson, Montréal.

Solicitors for the appellants Galerie d’Art du Petit Champlain inc., Galerie d’Art Laroche, Denis inc. and Serge Rosa: Chiara & Associés, Montréal.

Solicitors for the respondent: Laurin, Lamarre, Linteau & Montcalm, Montréal.

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