Théberge v. Galerie d’Art du Petit Champlain inc., [2002] 2 S.C.R. 336, 2002 SCC 34

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 Appellants

Claude Théberge Respondent

Indexed as: Théberge v. Galerie d’Art du Petit Champlain inc.

Neutral citation: 2002 SCC 34.

File No.: 27872.

2001: October 11; 2002: March 28.

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

on appeal from the court of appeal for quebec

Copyright – Infringement – Civil remedies – Ownership of copies – Definition of copyright – Art galleries transferring authorized reproductions of painter’s works from paper‑backed posters to canvas for purposes of resale – Whether galleries “copied” artist’s works – Whether new artistic work was produced “in any material form” within meaning of s. 3(1) of Copyright Act – Whether painter’s copyright infringed – Whether seizure before judgment justified – Copyright Act, R.S.C. 1985, c. C‑42, ss. 3, 38(1).

Civil procedure – Provisional remedies – Seizure before judgment – Art galleries transferring authorized reproductions of painter’s works from paper‑backed posters to canvas for purposes of resale – Painter having canvas‑backed reproductions seized – Whether painter’s copyright infringed – Whether seizure before judgment justified – Code of Civil Procedure, R.S.Q., c. C‑25, art. 734 – Copyright Act, R.S.C. 1985, c. C‑42, s. 38(1).

The respondent, a painter who enjoys a well‑established international reputation, assigned by contract the right to publish reproductions, cards and other stationery products representing certain of his works to a publisher. The appellant art galleries purchased cards, photolithographs and posters embodying various of the artist’s works from the publisher, and then transferred the image to canvas. The process in issue here involves lifting the ink that was used in printing a paper poster and transferring it onto a canvas. Since this process leaves the poster blank, there is no increase in the total number of reproductions. The respondent applied for an injunction, accounting, and damages against the appellants in the Quebec Superior Court. He also obtained a writ of seizure before judgment, under art. 735 of the Code of Civil Procedure (“C.C.P.”), with respect to all of the canvas‑backed reproductions embodying his works, claiming to have a deemed right of ownership in those items under s. 38(1) of the Copyright Act. Section 38(1) provides that the owner of the copyright in a work may recover possession of all infringing copies of that work. “Infringing”, in relation to a work, is defined in s. 2 of the Copyright Act as “any copy, including any colourable imitation, made or dealt with in contravention of this Act”. The appellants applied to have the seizure quashed. The Superior Court concluded that transferring an authorized paper reproduction onto canvas did not amount to infringement within the meaning of the Copyright Act, and ordered that the seizure be quashed. The Court of Appeal, finding that there had been infringement, set aside that decision and upheld the seizure before judgment with respect to the canvas‑backed reproductions.

Held (L’Heureux‑Dubé, Gonthier and LeBel JJ. dissenting): The appeal should be allowed. The order of the motions judge setting aside the seizure and ordering that the seized goods be returned to the appellants should be restored.

Per McLachlin C.J. and Iacobucci, Major and Binnie JJ.: The Copyright Act provides the respondent with both economic and moral rights to his work. The economic rights are based on a conception of artistic and literary works essentially as articles of commerce. Such rights can be assigned and the respondent can only assert under the Act the economic rights he has retained. Moral rights, which are not assignable, treat the œuvre as an extension of the artist’s personality, possessing a dignity which is deserving of protection. The integrity of the work is infringed only if the work is modified to the prejudice of the honour or reputation of the author. Moral rights act as a continuing restraint on what purchasers 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.

In this case, the respondent is asserting a moral right in the guise of an economic right, and the attempt should be rejected. The appellants purchased lawfully reproduced posters of the respondent’s 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. There was no production (or reproduction) of a new artistic work “or any substantial part thereof in any material form” within the meaning of s. 3(1) of the Copyright Act.

The image “fixed” in ink on the posters was not reproduced. It was transferred from one display to another. An expansive reading of the economic rights whereby 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 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.

The historical scope of the notion of “reproduction” under the Copyright Act should be kept in mind. “Reproduction” has usually been defined as the act of producing additional or new copies of the work in any material form. While the Act recognizes that technologies have evolved by which expression could be reproduced in new ways, 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 takes place.

The separate structures in the Act to cover economic rights and moral rights show that a clear distinction and separation was intended. In terms of remedies, Parliament intended modification without reproduction to be dealt with under the provisions dealing with moral rights rather than economic rights. A contrary view would allow an artist who objected to a “modification” of an authorized reproduction to sidestep the important requirement of showing prejudice to honour or reputation in order to establish an infringement of moral rights.

Since the respondent has not brought himself within s. 38 of the Copyright Act, he had no authority to obtain a seizure of the appellants’ copies under art. 734 C.C.P. The respondent’s real complaint is more properly characterized as the alleged infringement of his “moral” rights and its potential impact on the market for his works. An art. 734 seizure before judgment is not available to an artist or author who relies on the alleged infringement of a moral right. The evaluation of a potential breach of moral rights calls for the exercise of a good deal of judgment. 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”. 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. 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.

Per L’Heureux‑Dubé, Gonthier and LeBel JJ. (dissenting): The Copyright Act provides protection for both copyright and the author’s moral rights. Copyright protects against the unlawful appropriation and distribution of creative expression. It is a patrimonial right that may be assigned. The subject‑matter of copyright is a right in the work and not a personal right. The key factor is the work, including its material support, and not the idea expressed by the work. Moral rights are concerned primarily with protecting the integrity and paternity of the work, which is then regarded as an extension of the author’s personality. These are extra‑patrimonial rights, which, by definition, are not assignable. The concepts of moral rights are inapplicable to the facts of this case.

In this case the appellants unlawfully reproduced the respondent’s works in a material form in breach of s. 3(1) of the Copyright Act. In order for a work to be reproduced, there is no requirement to establish that there has been an increase in the total number of copies of the work. Parliament did not protect the right only to reproduce the work as a whole but also to reproduce a substantial part of the work. It is therefore necessary to consider not only the quantitative aspect, but also the qualitative aspect. A restrictive analysis based solely on multiplication of the work could not provide the work with the necessary protection and would ignore the concept of “substantial part thereof”, which is protected by s. 3(1).

The concept of “work” refers to any materialized and original form of expression. Fixation of the work in a medium is a condition sine qua non of the production of a work. Therefore, “producing” a work refers to the initial materialization and “reproducing” it refers to any subsequent material fixation that is modelled (in the causal sense) on its first fixation. Fixation of the work in a new medium is therefore the fundamental element of the act of “reproduc[ing] . . . in any material form whatever” what already existed in a first, original material form. That type of conduct amounts to plagiarism and constitutes an infringement of copyright under s. 3(1).

It is important to distinguish between the medium, which is protected by s. 3(1) and is inextricably connected to the work, and the concept of “structure” in s. 28.2(3) of the Copyright Act. A change to the medium is prohibited by s. 3(1), while a change to a physical structure containing the work will be prohibited by s. 28.2(3) if the author establishes that the new physical structure causes prejudice to the integrity of his or her work.

The Copyright Act provides that a copyright owner may dispose of his or her right, either wholly or partially, retaining the residue of the sole reproduction rights that were not assigned. The respondent had given his publishers very detailed authorization for the reproduction of his works. The contract between the respondent and his publishers must be interpreted in accordance with the general requirements of arts. 1425 to 1432 C.C.Q. The respondent never intended to assign in full his right to reproduce the works in question in any material form whatever. The contractual provisions, when construed as a whole, show that the right conferred is limited solely to reproduction on paper products, thereby excluding reproduction in any other material form, including affixing an image representing the respondent’s work onto a canvas. The use of the expression “other stationery products” implies that the products that are expressly authorized are also stationery products. The fact that the product may be framed, laminated or combined with other products also suggests that the product is in fact a stationery product, as the authorized medium is not physically altered and is still paper. The rights assigned by contract certainly do not include the ability to alter the authorized product by changing its medium.

By expressly confining the rights that were assigned to producing reproductions of his works on paper, the respondent therefore retained all his rights to produce reproductions on any other medium whatsoever. By transferring posters of the respondent’s works onto canvas, the appellants did in fact reproduce the respondent’s works or a substantial part thereof in any material form whatever, contrary to s. 3(1). The fact that the respondent did not consent means that his copyright was infringed. The appellants had therefore engaged in infringement and the respondent was entitled to seize the canvas‑backed reproductions under art. 734(1) C.C.P. and s. 38(1) of the Copyright Act.

Cases Cited

By Binnie J.

Distinguished: Apple Computer, Inc. v. Mackintosh Computers Ltd., 1986 6820 (FC), [1987] 1 F.C. 173, aff’d 1987 9003 (FCA), [1988] 1 F.C. 673, aff’d 1990 119 (SCC), [1990] 2 S.C.R. 209; approved: Snow v. The Eaton Centre Ltd. (1982), 1982 5652 (ON SC), 70 C.P.R. (2d) 105; Fetherling v. Boughner (1978), 1978 4102 (ON SC), 40 C.P.R. (2d) 253; No Fear, Inc. v. Almo‑Dante Mfg. (Canada) Ltd. (1997), 1997 5433 (FC), 76 C.P.R. (3d) 414; referred to: Compo Co. v. Blue Crest Music Inc., 1979 6 (SCC), [1980] 1 S.C.R. 357; R. v. Stewart, 1988 86 (SCC), [1988] 1 S.C.R. 963; Bishop v. Stevens, 1990 75 (SCC), [1990] 2 S.C.R. 467; Morang and Co. v. LeSueur (1911), 1911 10 (SCC), 45 S.C.R. 95; Millar v. Taylor (1769), 4 Burr. 2303, 98 E.R. 201; Underwriters’ Survey Bureau Ltd. v. Massie & Renwick Ltd., 1936 515 (CA EXC), [1937] Ex. C.R. 15, rev’d 1940 1 (SCC), [1940] S.C.R. 218; Tom Hopkins International, Inc. v. Wall & Redekop Realty Ltd. (1984), 1984 519 (BC SC), 1 C.P.R. (3d) 348; Walter v. Lane, [1900] A.C. 539; Compagnie Générale des Établissements Michelin–Michelin & Cie v. National Automobile, Aerospace, Transportation and General Workers Union of Canada (CAW‑Canada), 1996 11755 (FC), [1997] 2 F.C. 306; Mirage Editions, Inc. v. Albuquerque A.R.T. Co., 856 F.2d 1341 (1988); Crim., 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; Hovener/Poortvliet, HR January 19, 1979, NJ 412; Frost v. Olive Series Publishing Co. (1908), 24 T.L.R. 649; C. M. Paula Co. v. Logan, 355 F.Supp. 189 (1973); Peker v. Masters Collection, 96 F.Supp.2d 216 (2000); Lee v. A.R.T. Co., 125 F.3d 580 (1997); King Features Syndicate, Inc. v. O. and M. Kleeman, Ltd., [1941] A.C. 417; Thériault v. Succession de Rémi Thériault, [1977] C.S. 1120.

By Gonthier J. (dissenting)

Fetherling v. Boughner (1978), 1978 4102 (ON SC), 40 C.P.R. (2d) 253; Tri‑Tex Co. v. Gideon, 1999 13314 (QC CA), [1999] R.J.Q. 2324; 2946‑1993 Québec inc. v. Sysbyte Telecom inc., 2001 24976 (QC CS), J.E. 2001‑1143; Stopponi v. Bélanger, 1988 293 (QC CA), [1988] R.D.J. 33; Molloy v. Bouchard, [1990] R.J.Q. 1941; Compo Co. v. Blue Crest Music Inc., 1979 6 (SCC), [1980] 1 S.C.R. 357; Bishop v. Stevens, 1990 75 (SCC), [1990] 2 S.C.R. 467; Rizzo & Rizzo Shoes Ltd. (Re), 1998 837 (SCC), [1998] 1 S.C.R. 27; Cartwright v. Wharton (1912), 1912 1145 (ON SC), 25 O.L.R. 357; Stevenson v. Crook, 1938 239 (CA EXC), [1938] Ex. C.R. 299; L. B. (Plastics) Ltd. v. Swish Products Ltd., [1979] R.P.C. 551; Apple Computer, Inc. v. Mackintosh Computers Ltd., 1986 6820 (FC), [1987] 1 F.C. 173, aff’d 1987 9003 (FCA), [1988] 1 F.C. 673, aff’d 1990 119 (SCC), [1990] 2 S.C.R. 209; Compagnie Générale des Établissements Michelin -‑ Michelin & Cie v. National Automobile, Aerospace, Transportation and General Workers Union of Canada (CAW‑Canada), 1996 11755 (FC), [1997] 2 F.C. 306; Ladbroke (Football) Ltd. v. William Hill (Football) Ltd., [1964] 1 W.L.R. 273; King Features Syndicate Inc. v. O. and M. Kleemann, Ltd., [1940] 2 All E.R. 355.

Statutes and Regulations Cited

Act to amend the Copyright Act and to amend other Acts in consequence thereof, L.R.C. 1985, c. 10 (4th Supp.) [formerly S.C. 1988, c. 15].

Berne Convention for the Protection of Literary and Artistic Works (1886).

Canada Copyright Act, 1875 (U.K.), 38 & 39 Vict., c. 53.

Civil Code of Quebec, S.Q. 1991, c. 64, arts. 1425‑1432.

Code of Civil Procedure, R.S.Q., c. C‑25, arts. 26, 511, 734, 735, 738.

Copyright Act, R.S.C. 1985, c. C-42 [am. 1997, c. 24], ss. 2 “copyright”, “infringing”, 3(1), 6, 13(1), (4), 14.1 [ad. c. 10 (4th Supp.), s. 4], 14.2 [idem], 15(1), 27(1), 28.1 [idem, s. 6], 28.2 [idem], 29 - 32.2, 34(1), (2), 38.

Revised Berne Convention, art. 1.

United States Code, Title 17, s. 101.

Universal Copyright Convention (1952), Can. T.S. 1962 No. 13.

Authors Cited

Belleau, Charles. “Des mesures provisionnelles”, dans Denis Ferland et Benoît Emery, dir., Précis de procédure civile du Québec, vol. 2, 3e éd. Cowansville, Qué.: Y. Blais, 1997, 301.

Boncompain, Jacques. Le droit d’auteur au Canada: Étude critique. Montréal: Cercle du Livre de France, 1971.

Braithwaite, William J. “Derivative Works in Canadian Copyright Law” (1982), 20 Osgoode Hall L.J. 191.

Brunet, Claude. “Copyright: The Economic Rights”, in Gordon F. Henderson, ed., Copyright and Confidential Information Law of Canada. Scarborough, Ont.: Carswell, 1994, 129.

Canadian Oxford Dictionary. Edited by Katherine Barber. Toronto: Oxford University Press, 1998, “reproduce”.

Carrière, Laurent. “Voies et recours civils en matière de violation de droits d’auteur au Canada”, dans Service de la formation permanente, Barreau du Québec, Développements récents en droit de la propriété intellectuelle. Cowansville, Qué.: Y. Blais, 2001, 395.

Cohen, Amy B. “When Does a Work Infringe the Derivative Works Right of a Copyright Owner?” (1999), 17 Cardozo Arts & Ent. L.J. 623.

Colas, Émile. “Le droit moral de l’artiste sur son œuvre” (1981), 59 Can. Bar Rev. 521.

Gendreau, Ysolde. “Moral Rights”, in Gordon F. Henderson, ed., Copyright and Confidential Information Law of Canada. Scarborough, Ont.: Carswell, 1994, 161.

Goudreau, Mistrale. “Le droit moral de l’auteur au Canada” (1994), 25 R.G.D. 403.

Herman, Jonathan. “Moral Rights and Canadian Copyright Reform: The Impact on Motion Picture Creators” (1989‑1990), 20 R.D.U.S. 407.

Howell, Robert G., Linda Vincent, and Michael D. Manson. Intellectual Property Law: Cases and Materials. Toronto: Emond Montgomery, 1999.

Laddie, Hugh, et al. The Modern Law of Copyright and Designs, vol. 1, 3rd ed. London: Butterworths, 2000.

Lucas, A., et H.‑J. Lucas. Traité de la propriété littéraire & artistique. Paris: Litec, 1994.

McKeown, John S. Fox Canadian Law of Copyright and Industrial Designs, 3rd ed. Scarborough, Ont.: Carswell, 2000.

Moyse, Pierre‑Emmanuel. “La nature du droit d’auteur: droit de propriété ou monopole?” (1998), 43 McGill L.J. 507.

Pollaud‑Dulian, Frédéric. Le droit de destination: le sort des exemplaires en droit d’auteur. Paris: Librairie générale de droit et de jurisprudence, 1989.

Richard, Hugues G., and L. Carrière et al., eds. Canadian Copyright Act Annotated, vol. 1. Scarborough, Ont.: Carswell, 1993 (loose-leaf updated 2001, release 4).

Stewart, Stephen M. International Copyright and Neighbouring Rights, 2nd ed. Toronto: Butterworths, 1989.

Strowel, Alain. Droit d’auteur et copyright: Divergences et convergences: Étude de droit comparé. Paris: Librairie générale de droit et de jurisprudence, 1993.

Tamaro, Normand. Le droit d’auteur: Fondements et principes. Montréal: Presses de l’Université de Montréal, 1994.

Vaver, David. Intellectual Property Law: Copyright, Patents, Trade‑marks. Concord, Ont.: Irwin Law, 1997.

APPEAL from a judgment of the Quebec Court of Appeal (2000), 2000 5336 (QC CA), 9 C.P.R. (4th) 259, J.E. 2000‑531, [2000] Q.J. No. 412 (QL), setting aside a judgment of the Superior Court, J.E. 99‑1991, [1999] Q.J. No. 4472 (QL). Appeal allowed, L’Heureux‑Dubé, Gonthier and LeBel JJ. dissenting.

Marzia Frascadore, for the appellants Galerie d’Art Yves Laroche inc. and Éditions Multi‑Graph ltée.

Vincent Chiara, for the appellants Galerie d’Art du Petit Champlain inc., Galerie d’Art Laroche, Denis inc. and Serge Rosa.

Louis Linteau, for the respondent.

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

[1] 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.

[2] 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.

[3] 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.

[4] 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

[5] 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., 1979 6 (SCC), [1980] 1 S.C.R. 357, at p. 373; R. v. Stewart, 1988 86 (SCC), [1988] 1 S.C.R. 963; Bishop v. Stevens, 1990 75 (SCC), [1990] 2 S.C.R. 467, at p. 477.

[6] 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.

[7] 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

[8] 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.

[9] 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:

[translation] 19- Free use of the product.

The product is offered for sale without restriction as to use, i.e. it may be framed, laminated or combined with other products and such uses shall not be considered to have generated products or sub-products other than those provided for in this contract.

[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 œuvre 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), 1911 10 (SCC), 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:

I cannot agree that the sale of the manuscript of a book is subject to the same rules as the sale of any other article of commerce, e.g., paper, grain or lumber. The vendor of such things loses all dominion over them when once the contract is executed and the purchaser may deal with the thing which he has purchased as he chooses. It is his to keep, to alienate or to destroy. But . . . [a]fter the author has parted with his pecuniary interest in the manuscript, he retains a species of personal or moral right in the product of his brain.

[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.

(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.

(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.

28.2 (1) Il n’y a violation du droit à l’intégrité que si l’œuvre 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) 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) Pour l’application du présent article, ne constitue pas nécessairement une déformation, mutilation ou autre modification de l’œuvre 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), 1982 5652 (ON SC), 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:

. . . [was] adamant in his belief that his naturalistic composition has been made to look ridiculous by the addition of ribbons and suggests [that] it is not unlike dangling earrings from the Venus de Milo.

[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.

[translation]

Q. Is it not true, Mr. Théberge, that your position is that the canvas-backed reproductions that are now being made of your works are unlawful because you do not authorize them and especially because you are not paid a royalty for each reproduction that is made?

A. I would never want a penny for those works. Do you know why? Shall I tell you why?

Q. Tell me why.

A. Because, first and foremost, it is once again a dilution of my work; it is an abusive commercialization of my work, without authorization; it is a manipulation of the work because, in many cases, my signature does not appear on the reproduction; it is an anonymization, if I can use that word without being scholarly. There is no Théberge on my work, it is not signed. Turn it around and there is nothing on the back. Where does it come from, who sells it? Not a word. These things are all over the place. And, furthermore, the final argument, Mr. Charia, is that clients and friends of mine call me, they won’t accept it anymore and they are asking me whether I am a party to the distribution of these things.

Q. So, is it . . . .

A. Being a party to the distribution of these things means that they assume that I hatched a plot in which I am a participant. I’m getting money, royalties or . . . that I make money off of it -- “otherwise, it’s just not possible. How can you allow such a thing, Mr. Théberge?” So there are clients who have originals, who have paid eight thousand dollars ($8,000), nine thousand dollars ($9,000) that they find reproduced on canvas all over, in slightly smaller or medium sizes, or depending on the size, and for forty dollars ($40), sixty dollars ($60), eighty dollars ($80) or one hundred and twenty dollars ($120). . . . Me, Claude Théberge, the artist, I have nothing whatsoever to do with it, and want to put a stop to it. It’s just unreal. And especially, if I accepted money for that manoeuvre, I wouldn’t dare look myself in the mirror, Sir.

Q. So, this morning, it is your testimony, Mr. Théberge, that it is not a question of money . . . .

A. Absolutely not.

[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:

Fixation of the work in a new medium is therefore the fundamental element of the act of “reproduc(ing) . . . in any material form whatever”. . . . Reproducing a work therefore consists mainly of the subsequent non-original material fixation of a first original material fixation. [Emphasis in original.]

[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:

Thus a copyright springs into existence as soon as the work is written down or otherwise recorded in some reasonably permanent form (“fixated”).

(H. Laddie et al., The Modern Law of Copyright and Designs (3rd ed. 2000), vol. 1, at para. 1.2)

[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:

(i) 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;

(ii) the proposed test would depart from the general principle that breach of copyright requires copying;

(iii) there was no reproduction “in substantial part”;

(iv) the Quebec Court of Appeal test of “unanticipated market” similarly exceeds statutory copyright limits;

(v) the proposed test would undermine the distinction between moral rights and economic rights contrary to legislative intent;

(vi) a “droit de destination” would be introduced into our law without any basis in the Copyright Act;

(vii) the proposed test would conflict with precedent from other comparable jurisdictions;

(viii) The U.S. concept of a “recast, transformed, or adapted” derivative work would be introduced into our law without any legislative basis.

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:

It is wise in any state, to encourage letters, and the painful researches of learned men. The easiest and most equal way of doing it, is, by securing to them the property of their own works. . . .

He who engages in a laborious work, (such, for instance, as Johnson’s Dictionary,) which may employ his whole life, will do it with more spirit, if, besides his own glory, he thinks it may be a provision for his family.

(Millar v. Taylor (1769), 4 Burr. 2303, 98 E.R. 201, per Willes J., at p. 218)

[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 5336 (QC CA), [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 1 (SCC), [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:

I think there can be no doubt that material of that character was subject matter for copyright and, not being published, the exclusive right of multiplying copies of it, or of publishing it, was a right which the common law, prior to the statute of 1921, gave primarily to the authors of it. [Emphasis added.]

See also Tom Hopkins International, Inc. v. Wall & Redekop Realty Ltd. (1984), 1984 519 (BC SC), 1 C.P.R. (3d) 348 (B.C.S.C.). In Underwriters’ Survey Bureau Ltd. v. Massie & Renwick Ltd., 1936 515 (CA EXC), [1937] Ex. C.R. 15, Maclean J., for the Exchequer Court, defined copyright as (at p. 20):

. . . the right to multiply copies of a published work, or the right to make the work public and still retain the beneficial interest therein. [Emphasis added.]

[43] More pertinent still is the Ontario case of Fetherling v. Boughner (1978), 1978 4102 (ON SC), 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:

The second question is whether the transfer process constitutes copying. My conclusion, after listening to the argument of counsel, but without hearing any evidence, is that such process does not constitute copying, because it involves the transfer physically of the picture on the copy of The Canadian from which the defendant’s product is made. After such transfer there was no picture on the page of The Canadian. I am satisfied that the defendant would have been entitled to purchase a copy of The Canadian; cut out one of the strip photographs; paste it on a piece of paper; put a border around it; frame it; and sell it, without infringing copyright, just as she would have been entitled to sell the issue of The Canadian itself and just as any person, who purchases the work of an artist, is entitled to resell that work, or a piece of it. In my view that is essentially what was done by the defendant in this case.

See also to the same effect: No Fear, Inc. v. Almo-Dante Mfg. (Canada) Ltd. (1997), 1997 5433 (FC), 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:

The law which I think restrains it is to be found in the Copyright Act, and that Act confers what it calls copyright -- which means the right to multiply copies -- which it confers on the author of books first published in this country. [Emphasis added.]

[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., 1986 6820 (FC), [1987] 1 F.C. 173, 10 C.P.R. (3d) 1 (T.D.), aff’d 1987 9003 (FCA), [1988] 1 F.C. 673 (C.A.), aff’d 1990 119 (SCC), [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), 1996 11755 (FC), [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 5336 (QC CA), [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:

[translation] When we take a reproduction on paper and transfer it onto canvas, it is perhaps not an infringement of the right of the person who is authorized to reproduce the painting on paper (since there is no multiplication of the paper reproduction), but it is an infringement of one of the rights of the artist who painted it.

The value of a paper reproduction is no different whether the reproduction is framed or “laminated”. The purchaser of a paper reproduction that is framed or “laminated” pays for the value of the paper reproduction and the cost of framing or “lamination”.

On the other hand, the record shows that a canvas made from a paper reproduction allows the vendor to charge an amount that consists of more than the value of the paper reproduction and the cost of the canvas transfer process.

[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:

Unfortunately, the present text of the Copyright Act does little to help the promotion of the fusion of moral rights with the economic prerogatives of the law, since there is no comprehensive definition of copyright that embodies both. Section 3 of the Act, which is drafted as a definition of copyright, only refers to the economic dimension of copyright. Moral rights are defined and circumscribed in entirely distinct sections. This absence of cohesion leads to the separate mention of “copyright” and “moral rights” whenever Parliament wants to refer to both aspects of copyright law and to the near duplication of the provision on remedies for moral rights infringements.

(Y. Gendreau, “Moral Rights”, in G. F. Henderson, ed., Copyright and Confidential Information Law of Canada (1994), 161, at p. 171)

(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:

[translation] The expressions “droit d’auteur” and “copyright” speak volumes in themselves. It has been pointed out that the distinction between the copyright tradition and the “droit d’auteur” tradition is based on a question of terminology: where the followers of the first tradition, the British and their spiritual heirs, talk about “copyright” to refer to a right that derives from the existence of a “copy,” an object in itself, the followers of the second tradition talk about “author’s right” (droit d’auteur) to refer to a right that stems from intellectual effort or activity brought to bear by an author, a creator. This is the fundamental difference: on the one hand, a right that is conceived of by reference to the author, the creative person, and, on the other, by reference to the copy of the work, the product of the creative activity that is protected against copying.

(A. Strowel, Droit d’auteur et copyright: Divergences et convergences: Étude de droit comparé (1993), at pp. 19-20)

[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 also Crim., 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):

[T]he process . . . involves the use of acrylic resin, emulsions, or similar compounds which act as a transfer medium to strip the printed indicia from the original surface on which it is printed, whereupon the image carrying film is applied to another article, such as the plaster base of a wall plaque. In effect, a decal picture is created.

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

The process utilized by defendant that is now in question results in the use of the original image on a ceramic plaque; such process is not a “reproduction or duplication”.

The Court believes that plaintiff’s characterization of the print thus used as a decal is appropriate. Each ceramic plaque sold by defendant with a Paula print affixed thereto requires the purchase and use of an individual piece of artwork marketed by the plaintiff. For example, should defendant desire to make one hundred ceramic plaques using the identical Paula print, defendant would be required to purchase one hundred separate Paula prints. The Court finds that the process here in question does not constitute copying.

[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:

A “derivative work” is a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship, is a “derivative work”. [Emphasis added.]

[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:

. . . United States court decisions, even where the factual situations are similar, must be scrutinized very carefully because of some fundamental differences in copyright concepts which have been adopted in the legislation of that country.

[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:

[translation] It is moreover settled law that seizure before judgment is a draconian procedure and is an exception to the ordinary rules of law, and that a person who uses that procedure must comply strictly with the rules set out in the Code of Civil Procedure.

[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.

English version of the reasons of L’Heureux-Dubé, Gonthier and LeBel JJ. delivered by

Gonthier J. (dissenting) --

I. Introduction

[81] The issue in this case involves the validity of a seizure before judgment under s. 38(1) of the Copyright Act, R.S.C. 1985, c. C‑42 (“C.A.”), and art. 734(1) of the Quebec Code of Civil Procedure, R.S.Q., c. C‑25 (“C.C.P.”). The only matter before this Court is the seizure of the canvas‑backed reproductions of the paper posters that embody the respondent artist’s works. In order to dispose of that question, however, we must first determine whether the process of transferring a poster onto canvas can give rise to an infringement of the exclusive rights conferred by the C.A. and thereby constitute a form of copyright infringement.

II. Facts

[82] The new process in issue here involves lifting only the ink that was used in printing a paper poster and transferring it onto a canvas. This process eliminates any trace of what was previously printed on the poster, leaving it blank. There is therefore no increase in the total number of reproductions.

[83] The appellants Galerie d’Art Yves Laroche inc., Galerie d’Art du Petit Champlain inc., Galerie d’Art Laroche, Denis inc. and Serge Rosa each operate an art gallery, while the appellant Éditions Multi‑Graph ltée runs a publishing firm. The respondent, Claude Théberge, is a painter who enjoys a well‑established reputation in Canada, the United States and Europe. Under s. 13(1) C.A., he was the first owner of the copyright in his works.

[84] The respondent had nonetheless contractually authorized the reproduction of some of his works, being careful to define the exact scope and type of reproductions authorized. As a representative contract, the parties introduced in evidence a written agreement dated October 29, 1996, in which the respondent assigned the right to publish 10,000 reproductions, 100,000 cards and other stationery products representing the work Célébration to Éditions Galerie L’Imagerie É.G.I. Ltée (“É.G.I.”). Under the heading [translation] “Product(s)”, the contract provides as follows: [translation] “Reproduction 50 x 60cm ‑ 19.7 x 23.6. ‑ No. 6304 and/or cards and/or stationery”. Then, under the heading [translation] “Printing(s)” it specifies “Maximum ten thousand (10,000) reproductions and/or one hundred thousand (100,000) cards and/or stationery as advised”. And under the heading [translation] “Compensation”, it stipulates that [translation] “the publisher will give the artist, free of charge, twenty‑five (25) reproductions and/or one hundred (100) cards as artist’s proofs”.

[85] Moreover, art. 9 of the contract, entitled [translation] “Other stationery products”, stipulates:

[translation] The publisher is authorized to produce other stationery products (e.g., calendars, agendas, address books, writing paper, wrapping paper, gift boxes, etc.) if it informs the artist of the quantities published and sales generated, and if it pays him royalties equivalent to the royalties agreed to herein.

[86] Article 19, entitled [translation] “Free use of the product”, stipulates:

[translation] The product is offered for sale without restriction as to use, i.e. it may be framed, laminated or combined with other products and such uses shall not be considered to have generated products or sub‑products other than those provided for in this contract.

[87] The appellant art galleries had all purchased cards, photolithographs and posters embodying various of the artist’s works, and then transferred the image to canvas using the process described earlier. Although the possibility that there were other suppliers was mentioned, it seems that the stationery products that were transferred onto canvas by that process were purchased mainly from É.G.I.

[88] Given this situation, the respondent applied for an injunction, accounting, and damages in the Quebec Superior Court. He also obtained a writ of seizure before judgment under art. 735 C.C.P. As well, he applied for seizure of, inter alia, all of the canvas‑backed reproductions embodying his works, claiming to have a deemed right of ownership in those items under s. 38 C.A. The appellants applied to have the seizure quashed under art. 738 C.C.P. The validity of the seizure before judgment of the canvas‑backed reproductions is the only matter before this Court.

III. Relevant Statutory Provisions

[89] Code of Civil Procedure, R.S.Q., c. C‑25

The plaintiff may also seize before judgment:

(1) the movable property which he has a right to revendicate;

(5) the movable property which a provision of law permits him to seize in order to assure the exercise of his rights upon it.

. . .

“infringing” means

(a) in relation to a work in which copyright subsists, any copy, including any colourable imitation, made or dealt with in contravention of this Act,

The definition includes a copy that is imported in the circumstances set out in paragraph 27(2)(e) and section 27.1 but does not otherwise include a copy made with the consent of the owner of the copyright in the country where the copy was made;

“copyright” means the rights described in

(a) section 3, in the case of a work,

(1) For the purposes of this Act, “copyright”, in relation to a work, means the sole right to produce or reproduce the work or any substantial part thereof in any material form whatever, to perform the work or any substantial part thereof in public or, if the work is unpublished, to publish the work or any substantial part thereof . . .
(1) Subject to this Act, the author of a work shall be the first owner of the copyright therein.

(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.

14.1 (1) The author of a work has, subject to section 28.2, the right to the integrity of the work and, in connection with an act mentioned in section 3, the right, where reasonable in the circumstances, to be associated with the work as its author by name or under a pseudonym and the right to remain anonymous.

(2) Moral rights may not be assigned but may be waived in whole or in part.

(3) An assignment of copyright in a work does not by that act alone constitute a waiver of any moral rights.

(4) Where a waiver of any moral right is made in favour of an owner or a licensee of copyright, it may be invoked by any person authorized by the owner or licensee to use the work, unless there is an indication to the contrary in the waiver.

14.2 (1) Moral rights in respect of a work subsist for the same term as the copyright in the work.

(2) The moral rights in respect of a work pass, on the death of its author, to

(a) the person to whom those rights are specifically bequeathed;

(b) where there is no specific bequest of those moral rights and the author dies testate in respect of the copyright in the work, the person to whom that copyright is bequeathed; or

(c) where there is no person described in paragraph (a) or (b), the person entitled to any other property in respect of which the author dies intestate.

(1) It is an infringement of copyright for any person to do, without the consent of the owner of the copyright, anything that by this Act only the owner of the copyright has the right to do.

28.1 Any act or omission that is contrary to any of the moral rights of the author of a work is, in the absence of consent by the author, an infringement of the moral rights.

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.

(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.

(1) Where copyright has been infringed, the owner of the copyright is, subject to this Act, entitled to all remedies by way of injunction, damages, accounts, delivery up and otherwise that are or may be conferred by law for the infringement of a right.

(2) In any proceedings for an infringement of a moral right of an author, the court may grant to the author or to the person who holds the moral rights by virtue of subsection 14.2(2) or (3), as the case may be, all remedies by way of injunction, damages, accounts, delivery up and otherwise that are or may be conferred by law for the infringement of a right.

(1) Subject to subsection (2), the owner of the copyright in a work or other subject‑matter may

(a) recover possession of all infringing copies of that work or other subject‑matter, and of all plates used or intended to be used for the production of infringing copies, and

(b) take proceedings for seizure of those copies or plates before judgment if, under the law of Canada or of the province in which those proceedings are taken, a person is entitled to take such proceedings,

as if those copies or plates were the property of the copyright owner.

(Emphasis added.)

IV. Judgments Below

A. Quebec Superior Court

[90] Bélanger J. concluded that transferring an authorized paper reproduction onto canvas did not amount to infringement within the meaning of the C.A.: [1999] Q.J. No. 4472 (QL).

[91] He relied first on art. 19 of the representative contract, which stipulates: [translation] “[t]he product is offered for sale without restriction as to use, i.e. it may be framed, laminated or combined with other products and such uses shall not be considered to have generated products or sub‑products other than those provided for in this contract” (emphasis added). Thus, he apparently interpreted that clause as conferring broad authority to alter the substrate or medium of the work.

[92] Bélanger J. relied heavily on the reasoning of Southey J. in Fetherling v. Boughner (1978), 1978 4102 (ON SC), 40 C.P.R. (2d) 253 (Ont. H.C.). He also observed that the process of transferring onto canvas [translation] “does not in any way constitute new, unauthorized copies of the work” (para. 6), since the image is physically transferred from the paper onto the canvas. Bélanger J. added that the cards in the possession of the appellant Serge Rosa had all been purchased from the authorized publisher, É.G.I.

[93] Bélanger J. therefore concluded that the respondent could not benefit from the presumption of ownership created by s. 38(1) C.A. He ordered that the seizure be quashed.

B. Quebec Court of Appeal

[94] Since this was an interlocutory proceeding, the respondent had to bring a motion for leave to appeal under arts. 26 and 511 C.C.P. Nuss J.A., sitting as a single judge, allowed the motion but [translation] “only as it relates to the quashing of the seizure and the release ordered with respect to goods that are reproductions on canvas” (emphasis added). The issue in the Court of Appeal was therefore substantially narrower. This Court may not dispose of any issue that was not before the Court of Appeal.

[95] The three judges agreed that the respondent’s appeal should be allowed: 2000 5336 (QC CA), [2000] Q.J. No. 412 (QL). Michaud C.J.Q. and Delisle J.A. wrote separate reasons, however, each emphasizing different aspects. Beauregard J.A. concurred in their analysis.

[96] Michaud C.J.Q. first stated that the publishing contracts showed that the respondent had consented only to paper‑backed reproductions and not canvas‑backed reproductions. He also distinguished laminating, framing or mounting a paper‑backed reproduction onto another substrate from transferring a paper‑backed reproduction onto canvas. While the basic nature of a paper‑backed reproduction remains the same when it is glued, framed or laminated, transferring a reproduction onto canvas changes its nature. Furthermore, the value of a paper‑backed reproduction that is framed or laminated is equal to the sum of the value of the poster and the cost of the process, while transferring a reproduction onto canvas allows a vendor to charge more than the sum of the costs.

[97] Michaud C.J.Q. therefore concluded that the original painting had indeed been reproduced, even though the technique used for doing it consisted in transferring a paper‑backed reproduction onto canvas. In addition, the rights of the artist had in fact been infringed even though the rights of the authorized publishers might not have been.

[98] Delisle J.A, reviewed a number of relevant sections of the C.A. He first considered the definition of “infringing” in s. 2, that is any copy of a work made or dealt with in contravention of that Act. Then he referred to the sole right to “produce or reproduce . . . in any material form whatsoever” in s. 3(1). He then cited the description in s. 27 of what constitutes an infringement of copyright: “for any person to do, without the consent of the owner of the copyright, anything that by this Act only the owner of the copyright has the right to do”. He then interpreted those provisions and concluded that the canvas‑backed reproductions in question, which had been made without the consent of the respondent, constituted a reproduction of his works in a different form, and was therefore infringement.

[99] The Court of Appeal accordingly allowed the appeal and upheld the seizure before judgment with respect to the canvas‑backed reproductions.

V. Issue

[100] In my opinion, there is only one real issue in this case: whether the canvas‑backed reproductions of the artist’s paintings constitute infringement within the meaning of the C.A. As I will explain in greater detail in the analysis, the validity of the seizure before judgment of the canvas‑backed reproductions depends entirely on the answer to that question. If we conclude that the canvas‑backed reproductions are infringing copies, the respondent is deemed to be the owner of the items under s. 38 C.A. The seizure would then be valid. If, however, we reach the contrary conclusion, the seizure must be set aside.

VI. Analysis

A. Seizure Before Judgment

(1) Interaction Between Article 734(1) C.C.P. and Section 38(1) C.A.

[101] Article 734(1) C.C.P. allows a plaintiff to seize before judgment the movable property which he has a right to revendicate. Section 38(1) C.A. provides that “the owner of the copyright in a work . . . may recover possession of all infringing copies of that work . . . and take proceedings for seizure of those copies . . . before judgment if, under the law of Canada or of the province in which those proceedings are taken, a person is entitled to take such proceedings, as if those copies . . . were the property of the copyright owner”.

[102] The fate of the revendication and seizure is therefore inextricably tied to the determination of the issue of infringement. If the canvas‑backed reproductions constitute infringing copies of the respondent’s works, the respondent is entitled to revendicate them under s. 38(1) C.A. That right of revendication will then serve as the basis for the right of seizure before judgment under art. 734(1) C.C.P. (see, for example, Tri‑Tex Co. v. Gideon, 1999 13314 (QC CA), [1999] R.J.Q. 2324 (C.A.); 2946‑1993 Québec inc. v. Sysbyte Telecom inc., Sup. Ct. Mtl. No. 2001 24976 (QC CS), 500‑05‑064484‑015, May 2, 2001, J.E. 2001‑1143).

[103] The determination of the infringement issue in this case is relevant in determining whether the affidavit in support of the application for a writ of seizure (art. 738 C.C.P.) was sufficient. This is a moot point having regard to the veracity of the relevant facts alleged in the affidavit. The appellants’ admissions relating to the transfer onto canvas of some paper‑backed reproductions of the respondent’s works have alone eliminated any uncertainty on that point.

[104] A decision with respect to the sufficiency of the affidavit in support of a seizure before judgment is not, strictly speaking, a decision on the merits of the case. The judge who analyses the issue of sufficiency must nonetheless examine the logical connection between the facts alleged and the right to seize before judgment (Stopponi v. Bélanger, 1988 293 (QC CA), [1988] R.D.J. 33 (C.A.), at p. 37).

[105] In this case, however, the question of the connection between the facts and the right to seize is completely indistinguishable from the question of the infringement of the respondent’s copyright. This is so by reason of s. 38(1) C.A., which states that “the owner of the copyright in a work . . . may recover possession of all infringing copies of that work . . . and take proceedings for seizure of those copies . . . before judgment if, under the law of Canada or of the province in which those proceedings are taken, a person is entitled to take such proceedings, as if those copies . . . were the property of the copyright owner” (emphasis added). “Infringing”, as defined by s. 2 C.A., requires an infringement of the copyright. In other words, in order to conclude that the process of transferring onto canvas gives rise to an act of infringement, it must first be established that it constitutes a copyright infringement.

[106] In short, in order for the facts in the affidavit to meet the sufficiency requirement in the C.C.P., they must establish that an infringement has occurred. The issues of sufficiency and copyright infringement therefore involve the same elements of fact and law. Since the relevant facts were admitted, the legal issue is all that remains to be decided. That issue is a narrow one, and calls for a determination of whether the process of transferring onto canvas amounts to infringement.

(2) Risk of Abuse

[107] Counsel for the appellants argued that we should apply the rigorous tests relating to recognition of the validity of seizures before judgment under art. 734 C.C.P. Those tests refer to, inter alia, the possibility of abuse and the devastating effects that such proceedings may have on the parties involved.

[108] While a seizure before judgment under art. 734 C.C.P. may be carried out without prior approval by a judge, it must also be noted that this is a conservatory measure the purpose of which is simply to [translation] “obtain possession of property that is in dispute . . . and place it under the authority of the court until it has determined the respective rights of the parties” (see C. Belleau, “Des mesures provisionnelles”, in D. Ferland and B. Emery, eds., Précis de procédure civile du Québec (3rd ed. 1997), vol. 2, 301, at p. 307; Molloy v. Bouchard, [1990] R.J.Q. 1941 (Sup. Ct.)). As was previously mentioned, seizure before judgment does not, strictly speaking, call for a determination of the merits of the case. That is in fact why the affidavit in support of the application for a writ need only set out sufficient supporting facts, and those facts must be accepted by the judge who hears the motion to quash under art. 738 C.C.P.

[109] Furthermore, the guarantees provided by the provisions of the C.C.P. limit the opportunities for abuse. First, art. 738 C.C.P. allows the defendant to apply, by motion, for the seizure to be quashed because of the insufficiency or the falsity of the affidavit on the strength of which the writ was issued. This means that if an affidavit is too brief or contains false allegations, the seizure will be quashed. Furthermore, under art. 738 C.C.P. when the affidavit is contested, the burden is on the seizing party to prove the allegations in the affidavit. As Professor Belleau observes, supra, at p. 303:

[translation] [T]he seizure before judgment may be quashed (arts. 737, 738), if requested by another party to the main action, or release may be granted (art. 739), but, as a rule, these circumstances will not affect the conduct of the action, which may continue until the final judgment is rendered or a settlement between the parties is signed.

[110] Furthermore, when the seizure takes place under art. 734(1) C.C.P., as in this case, the affidavit must establish, at the very least, a right to recover possession of the property in order to satisfy the requirement of sufficiency. There must be a sufficient logical connection between the facts alleged and the requirements for the revendication of the right. In this case, we would therefore have to set the seizure aside if the affidavit contained facts that did not logically support a finding of infringement. Although seizure before judgment is an exceptional proceeding, it is the appropriate vehicle in this case, as provided in s. 38(1) C.A. In a recent article, Laurent Carrière highlights the significance of s. 38(1) in the application of art. 734 C.C.P. (L. Carrière, “Voies et recours civils en matière de violation de droits d’auteur au Canada”, in Service de la formation permanente, Barreau du Québec, Développements récents en droit de la propriété intellectuelle (2001), 395, at pp. 469‑70):

[translation] Subsection 38(1) allows the copyright owner to claim possession of all infringing copies of a work, as the owner, and henceforth provides a statutory basis for proceedings to recover possession and seizure before judgment “if, under the law of Canada or of the province in which those proceedings are taken, a person is entitled to take such proceedings. . . .”

In Quebec, the proceedings will be instituted under art. 734(1) of the Code of Civil Procedure. . . . We would recall that under that article, the seizing party is not required to argue that his debt may be put in jeopardy. [Emphasis in original; citations omitted.]

It is therefore important to carry out a contextual analysis of the requirements that must be met in order for art. 734 C.C.P. to apply, from the standpoint of s. 38 C.A., while at the same time strictly complying with the rules laid down in the C.C.P. in respect of seizure before judgment.

[111] In the case of a seizure that was abusive or made in bad faith, the party from whom the seizure was made will retain the option of bringing an action in damages in accordance with the ordinary rules of civil liability.

B. Copyright

(1) Introduction

[112] Even though our legislation derives from the common law, it is important to recall the origin and significance of copyright. In 1777, P.‑A. Caron de Beaumarchais, who founded the Société des auteurs dramatiques, stated:

[translation] It is said in the theatre lobby that it is not noble for authors to write for the worthless pursuit of money, they who pride themselves on their claim to fame. Indeed, they are right, fame is appealing. But they forget that nature condemns us to dine 365 times in order to bask in glory merely for a year. For the authors, they are not defending a privilege, but the sacred right of all rights to retain ownership of their works. . . .

(Preface by M. Pagnol in J. Boncompain, Le droit d’auteur au Canada: Étude critique (1971), at p. 9)

[113] In Canada, it is settled law that the sole source of copyright is the C.A., which “simply creates rights and obligations upon the terms and in the circumstances set out in the statute”: Compo Co. v. Blue Crest Music Inc., 1979 6 (SCC), [1980] 1 S.C.R. 357, at p. 373, cited in Bishop v. Stevens, 1990 75 (SCC), [1990] 2 S.C.R. 467, at p. 477. Nonetheless, the Act is framed in somewhat general terms and must be applied in diverse and even unprecedented situations. As Normand Tamaro pointed out (Le droit d’auteur: Fondements et principes (1994), at p. 5):

[translation] In fact, although Canada’s Copyright Act was enacted in 1921, the manner in which it is interpreted is modern, and allows the development of new techniques and modern theories surrounding the creative act to be taken into consideration.

In the event of disagreement regarding the meaning of specific provisions, it will be up to the courts to interpret them, referring to the ordinary meaning of the words and the purpose and spirit of the Act (Rizzo & Rizzo Shoes Ltd. (Re), 1998 837 (SCC), [1998] 1 S.C.R. 27, at para. 21).

[114] In Canada, the first real Copyright Act was enacted in 1921 (S.C. 1921, c. 24) and came into force in 1924, although canvases were already protected by The Copyright Act of 1875, S.C. 1875, c. 88, an Act validated by the British Parliament by The Canada Copyright Act, 1875 (U.K.), 38 & 39 Vict., c. 53. (For an analysis of the sources of copyright in Canada, see P.‑E. Moyse, “La nature du droit d’auteur: droit de propriété ou monopole?” (1998), 43 McGill L.J. 507.) The Act of 1921 was designed to enable Canadian authors to benefit from the protection provided by the provisions of the Berne Convention, which was adopted in 1886 and ratified by Great Britain on behalf of Canada. The purpose of the Convention was to establish an international code and to create a Union of States “for the protection of the rights of authors in their literary and artistic works” (Revised Berne Convention, art. 1). Generally, copyright enables the owner to prevent the unauthorized plagiarism and distribution of an original work. It is therefore these acts themselves that are prohibited, without regard to their purpose, be it mercenary or otherwise. In some respects, copyright is also similar to a real right; inter alia, it is an exclusive right that can be set up against anyone. The intangible subject‑matter that it protects distinguishes it, however, from a right in a material thing. In short, given the sui generis nature of copyright, we must be circumspect in proposing any analogy to other rights.

[115] Moreover, the purpose of copyright is not to protect the ideas or opinions expressed by the creator, but rather the various means and forms by which those ideas are communicated (J. S. McKeown, Fox Canadian Law of Copyright and Industrial Designs (3rd ed. 2000), at p. 60; Cartwright v. Wharton (1912), 1912 1145 (ON SC), 25 O.L.R. 357 (H.C.); Stevenson v. Crook, 1938 239 (CA EXC), [1938] Ex. C.R. 299, at p. 307; L. B. (Plastics) Ltd. v. Swish Products Ltd., [1979] R.P.C. 551 (H.L.)). In other words, it is the formal expression of those ideas or opinions that is protected by copyright.

[116] Moreover, it is important to recall that Canadian copyright law derives from multiple sources and draws on both common law tradition and continental civil law concepts. As Moyse observes, supra, at p. 562:

[translation] What the term “copy‑right” very certainly reveals is the actual function of copyright. It is an exclusive right and, as it applies to the part that relates to the commercial exploitation of the work, a true monopoly on reproduction. . . . Canadian law inherited that aspect while remaining receptive to the French doctrines, particularly because of Quebec’s influence. This does great credit to our law since the Canadian Parliament is more inclined than any other legislature to stay attuned to external developments in order to mould its own rules.

. . . Thus, in Canadian statutes, the intention is to establish both a right that is centered on the person of the author, this being derived from the civil structures of the right of ownership, and a definitely dynamic right centered on its economic function, which reflects the theories underlying the concept of monopoly.

Canadian statutes must therefore be interpreted in light of their historical context, domestic case law and legislative developments, and international conventions.

(2) Infringement: The Rights At Issue

(a) Copyright and Moral Rights

[117] The C.A. provides protection for both copyright, defined by s. 3(1), and the author’s moral rights, in particular in ss. 14.1 and 14.2. While the intended purposes of those rights overlap in some respects, they are nonetheless completely different legal instruments in terms of both their definition and their scope.

[118] Copyright protects against the unlawful appropriation and distribution of creative expression. With respect to a work, that right includes the right: (i) “to produce or reproduce the work or any substantial part thereof in any material form whatever”, (ii) “to perform the work or any substantial part thereof in public”, and (iii) “to publish the work or any substantial part thereof”, as well as a series of other rights derived from those fundamental rights (s. 3(1) C.A.). Copyright is a patrimonial right that may be assigned, as provided in s. 13(4) C.A.

[119] J. Herman, in “Moral Rights and Canadian Copyright Reform: The Impact on Motion Picture Creators” (1989‑1990), 20 R.D.U.S. 407, at p. 411, analyses and defines the purpose of the concept of copyright and its relationship with society as follows:

The relationship between the artist and society may be characterized in straightforward economic terms: society places demands on its members to share with it the fruits of their intellectual labour. Artists supply those demands; however, if society recognizes an artist’s right of ownership of his intellectual work, he may set conditions and exact a price for the society’s consumption of it. Copyright confers in the creator a monopoly to exploit his work in public for his own economic self‑interest.

[120] Moral rights, inspired by the continental civil law concept of droit d’auteur, are concerned primarily with protecting the integrity and paternity of the work (s. 14.1(1) C.A.), which is then regarded as an extension of the author’s personality. These are extra‑patrimonial rights, which, by definition, are not assignable (s. 14.1(2) C.A.). (For an analysis on the scope and application of moral rights in Canada, see: É. Colas, “Le droit moral de l’artiste sur son œuvre” (1981), 59 Can. Bar Rev. 521; M. Goudreau, “Le droit moral de l’auteur au Canada” (1994), 25 R.G.D. 403.)

[121] Furthermore, my colleague, Binnie J., suggests that this case arises out of the conceptual differences between “the droit d’auteur of the continental civiliste tradition and the English copyright tradition” (para. 6). I cannot subscribe to that view. The disposition of this case is determined solely by the aspects that derive from the English concept of copyright. The concepts of moral rights, as I will explain later, are inapplicable to the facts of this case.

[122] In other words, the subject‑matter of copyright, unlike moral rights, is a right in the work and not a personal right. As Stephen Stewart accurately observed in his text entitled International Copyright and Neighbouring Rights (2nd ed. 1989), the key factor is the work, including its material support, and not the idea expressed by the work (at pp. 7‑8):

It is simply the right to prevent the copying of physical material and its object is to protect the owner of the copyright against any reproduction or use of that material which he has not authorised. Copyright, in its essence is a negative concept. It is the right to prevent people from dealing with something that is yours and has been improperly taken by someone else. It focuses on the material support rather than on the creation. Copyright, as the word suggests, was in its origin a right to prevent copying, that is reproduction. [Emphasis added.]

[123] Furthermore, in Apple Computer, Inc. v. Mackintosh Computers Ltd., 1986 6820 (FC), [1987] 1 F.C. 173 (T.D.), at p. 200, Reed J. accurately stated the purpose of the C.A.:

[T]he purpose of the Copyright Act is and always has been to grant a monopoly. No distinction is made therein as to the purpose of the work created – for entertainment, instruction or other purposes. The legislation historically, in my view had two purposes: to encourage disclosure of works for the “advancement of learning”, and to protect and reward the intellectual effort of the author (for a limited period of time) in the work.

In light of those observations, if we are to determine whether infringement has occurred, we must examine the concept of reproduction.

(b) Copy Made in Contravention of this Act

[124] Section 38(1) C.A. provides:

(1) Subject to subsection (2), the owner of the copyright in a work or other subject‑matter may

(a) recover possession of all infringing copies of that work or other subject‑matter, and of all plates used or intended to be used for the production of infringing copies, and

as if those copies or plates were the property of the copyright owner. [Emphasis added.]

[125] A seizure under s. 38(1) C.A. therefore requires that there be infringing copies of works or of any other subject‑matter of copyright. As I explained earlier, the outcome of this case depends entirely on the determination of the question of infringement.

[126] Section 2 C.A. defines “infringing” as:

(a) in relation to a work in which copyright subsists, any copy, including any colourable imitation, made or dealt with in contravention of this Act,

(b) in relation to a performer’s performance in respect of which copyright subsists, any fixation or copy of a fixation of it made or dealt with in contravention of this Act,

(c) in relation to a sound recording in respect of which copyright subsists, any copy of it made or dealt with in contravention of this Act, or

(d) in relation to a communication signal in respect of which copyright subsists, any fixation or copy of a fixation of it made or dealt with in contravention of this Act. [Emphasis added.]

[127] The expression “or other subject‑matter” in s. 38(1) C.A. refers to the concepts of performance, sound recording and communication signal referred to in paras. (b), (c) and (d) of the definition of “infringing” (McKeown, supra, at p. 667). It also appears from the wording of the various paragraphs that make up that definition that in order for a copy to be infringing, it must have an unlawful aspect.

[128] “Infringing”, in relation to a work in which copyright subsists, is defined in s. 2 C.A. as “any copy, including any colourable imitation, made or dealt with in contravention of this Act”. Infringement can therefore arise from two distinct sources: (i) a copy made in contravention of the C.A. or (ii) a copy dealt with in contravention of that Act.

[129] In the case of a copy made in contravention of the Act, it is the act of copying itself that is unlawful. What that element of the definition is referring to is copies of works made in contravention of s. 3(1) C.A., which prohibits the production or reproduction of a work in any material form whatever.

[130] In the case of a copy dealt with in contravention of the Act, the copy itself was not necessarily an infringement of the C.A. Rather, it was dealt with in contravention of that Act. We might then ask whether the expression “copy . . . dealt with in contravention of this Act” requires the commission of acts that are contrary to s. 3(1) C.A. (s. 27 C.A.), or whether it can refer to a copy that resulted solely in an infringement of the author’s moral rights (s. 28.1 C.A.).

[131] The respondent maintains that a copy that infringes moral rights results in infringement, while the appellants maintain that only an infringement of the copyright under s. 3 C.A. (the right to produce, reproduce, perform or publish) can do that. With all due respect, I am of the view that an appropriate interpretation of the Act leads to the conclusion that a mere infringement of moral rights cannot constitute infringement. An infringement of the copyright defined in s. 3 C.A. is required.

[132] First, infringement of a work, in its most common sense, is synonymous with plagiarism or unlawful appropriation. Generally speaking, we consider that infringing therefore requires copying or unlawful appropriation regardless of any other concurrent wrongful act (for example, an infringement of moral rights). In my view, it is that definition that has been adopted in the Act.

[133] Section 38(1) C.A. provides that the owner of the copyright may recover possession of all infringing copies of that work or other subject‑matter. This means that the right to recover possession of infringing copies is given to the owner of the copyright and not to the author himself or herself. The owner of the copyright and the author may be one and the same person or two different persons. In the latter case, it would be illogical for a copyright owner other than the author himself or herself to be entitled to recover possession of copies of a work the reproduction of which was an infringement only of the author’s moral rights. Although, as I observed earlier, those rights attach solely to the person of the author and may not be assigned, the expanded interpretation of the expression “copy . . . dealt with in contravention of [the] Act” proposed by the respondent would lead to just that outcome.

[134] Furthermore, the definition of infringement cited refers to “a work in which copyright subsists”. It also seems that only where there is an infringement of copyright will the measures described in s. 38(1) C.A. be justified. Therefore, in the case of a work, a “copy . . . dealt with in contravention of [the] Act” refers only to a copy dealt with in contravention of s. 3(1) C.A. The statutory history of the provisions in question confirms that conclusion: the provisions relating to moral rights were added in 1988 (R.S.C. 1985, c. 10 (4th Supp.), formerly S.C. 1988, c. 15), while the meaning of s. 38(1) C.A. and of the definition of “infringing” have always been the same, for all practical purposes, since the Act was enacted in 1921.

[135] Nevertheless, as I will explain later in the analysis, I am of the view that in this case the appellants unlawfully reproduced the respondent’s works in a material form in breach of s. 3(1) C.A. A more in‑depth analysis is therefore required in order to determine the scope of s. 3(1) C.A.

(c) Application of Section 3(1) C.A.

[136] Section 3(1) C.A. provides:

(1) For the purposes of this Act, “copyright”, in relation to a work, means the sole right to produce or reproduce the work or any substantial part thereof in any material form whatever, to perform the work or any substantial part thereof in public or, if the work is unpublished, to publish the work or any substantial part thereof . . . . [Emphasis added.]

[137] I find that there are three distinct concepts in this subsection, which are crucial in resolving this case. First, s. 3(1) confers the “sole right to produce or reproduce”; second, it protects the work in its entirety “or any substantial part thereof”; third, it specifies that the protection applies to the work “in any material form whatever”. Let us examine what these concepts mean.

(i) The Sole Right to Produce or Reproduce: Definition

[138] My colleague, Binnie J., accepts the appellants’ arguments and adopts a narrow interpretation of the concept of reproduction. Reproduction can only occur if there is multiplication. With respect, I do not agree with that interpretation. It is suggested that the verb “reproduce” implies an increase in the total number of copies. At first glance, that is not an interpretation that is readily supported by the ordinary meaning of that verb. I note that the Canadian Oxford Dictionary (1998) defines it as follows:

. . . 1. produce a copy or representation of 2. . . . cause to be seen or heard etc. again . . . 5. . . . give a specified quality or result when copied . . . . [Emphasis added.]

[139] It appears that the primary and essential meaning of the word “reproduce” as it appears in s. 3(1) C.A. is “produce a copy . . . of” or “cause to be seen . . . again” or “give a specified quality or result when copied”. Accordingly, in order for a work to be reproduced, there is no requirement whatsoever to establish that there has been an increase in the total number of copies of the work. The nature of the protection that copyright confers confirms that interpretation.

[140] As Reed J. stated in Apple Computer, supra, at p. 193, aff’d [1988] 1 F.C. 673 (C.A.), and by this Court, 1990 119 (SCC), [1990] 2 S.C.R. 209, which we would recall adopted the reasons of Reed J. in their entirety, the concept of reproduction must be interpreted broadly. The legislation is written in general terms so as to include new reproduction technologies:

[T]he opening words of subsection 1(2), now section 3 of the Act, were purposely drafted broadly enough to encompass new technologies which had not been thought of when the Act was drafted.

[141] The primary purpose of s. 3(1) C.A. is to enable the author to profit from his or her work. Despite the fact that the legislation was written early in the last century, Parliament’s use of general terms allows the C.A. to evolve and adapt to new social and technological circumstances.

(ii) Reproduction of a Substantial Part of the Work

[142] To grasp the essence of the concept of reproduction, the Act must be read bearing in mind that Parliament did not protect the right only to reproduce the work as a whole but also to reproduce a substantial part of the work. Parliament does not speak in vain, and if it specified in s. 3(1) that it is prohibited to reproduce not only a work in its entirety but also “any substantial part thereof”, we must therefore consider not only the quantitative aspect, but also the qualitative aspect. As Teitelbaum J. pointed out in Compagnie Générale des Établissements Michelin--Michelin & Cie v. National Automobile, Aerospace, Transportation and General Workers Union of Canada (CAW‑Canada), 1996 11755 (FC), [1997] 2 F.C. 306 (T.D.), at para. 50:

The term “substantial part” is not defined in the Copyright Act. Case law has held that the quality more than the simple quantity of the reproduction is key: Justice Richard in U & R Tax Services Ltd. v. H & R Block Canada Inc. (1995), 1995 19292 (FC), 62 C.P.R. (3d) 257 (F.C.T.D.), at pages 268‑269 stated that the reproduction of a substantial part is a question of fact in which the Court will consider whether the alleged infringer has taken the distinct traits of the original work. [Emphasis added.]

[143] An analysis of the qualitative aspect is therefore an essential element of the analysis under s. 3(1) C.A. If we consider only the quantitative aspect, any individual could in fact appropriate a substantial part of a work and reproduce it on a large scale, and claim that the work had not been multiplied and therefore the C.A. had been complied with. Such a restrictive interpretation would be contrary to the aim and purpose of the C.A. As Tamaro, supra, at p. 93, pointed out in his text on copyright:

[translation] The right to reproduce the work or a substantial part thereof means to recreate the work in a modified form. This brings us back to the concept of “substantial part of a work”, which implies that the right to reproduce a work includes the right to reproduce it in all its essential parts. [Emphasis added.]

[144] The narrow analysis, limited as it is to the quantitative aspect, is therefore not consistent with a teleological interpretation of the protection given to a substantial part of the work. The qualitative aspect of a work is protected by s. 3(1) C.A., and a restrictive analysis based solely on multiplication of the work could not provide the work with the necessary protection and would ignore the concept of “substantial part thereof”, which is protected by s. 3(1) C.A.

(iii) Reproduce in any Material Form Whatever

[145] In the view of Binnie J. “[t]he process began with a single poster and ended with a single poster” (para. 38). I do not agree with that view. The concept of “work” refers to any materialized and original form of expression (Tamaro, supra, at p. 84). The work is, so to speak, the physical outcome of the creative process. Fixation of the work in a medium is a condition sine qua non of the production of a work. Therefore, “producing” a work refers to the initial materialization and “reproducing” it refers to any subsequent material fixation that is modelled (in the causal sense) on its first fixation.

[146] “[R]eproduc[ing] [a] work . . . in any material form whatever” therefore simply means “rematerializing” what already existed in a first, original material form. A person who models a subsequent materialization on the original materialization therefore reproduces the work in a material form and has therefore produced the work a second time.

[147] Since material fixation is essential for the production of a work, it is also essential for reproduction of the work. Fixation of the work in a new medium is therefore the fundamental element of the act of “reproduc[ing] . . . in any material form whatever”. However, while the work is an original creation, the reproduction of the work is necessarily not. Reproducing a work therefore consists mainly of the subsequent non‑original material fixation of a first original material fixation. That type of conduct amounts to plagiarism and constitutes an infringement of the rights of the copyright owner under s. 3(1) C.A.

[148] It may be pointed out that the expressions “reproduce a work” and “reproduce a work in any material form” are pleonastic since in all cases, reproducing a work involves a new materialization derived from the original one. However, s. 3(1) does not say only “reproduce . . . in a material form”; rather, it says “reproduce [a] work . . . in any material form whatever” (emphasis added). That is an appropriate and carefully worded recognition that a work may be reproduced even if the new medium is different.

[149] Having regard to the foregoing, it is clear that multiplication of the number of copies of a work is not an essential element of the act of “reproduc[ing] . . . in any material form whatever”. It does not matter that the process which produces a new materialization eliminates another; all that matters is that a new act of fixation occurs. Therefore, what we must count in order to determine whether a work has been reproduced is not the total number of copies of the work in existence after the rematerialization, but the number of materializations that occurred over time.

[150] On that point, the analysis by Hugessen J.A. made in Apple Computer, Inc. v. Mackintosh Computer Ltd., 1987 9003 (FCA), [1988] 1 F.C. 673 (C.A.), at p. 694, of the concept of “in any material form whatever” is directly relevant to the disposition of this case:

We have already seen that the statute defines copyright as being, amongst other things, the sole right to produce or reproduce in any material form. It is, in my opinion, possible to read those words as including by necessary implication the sole right to produce the means of reproduction of the work or, to put the matter another way, the sole right to produce anything used or intended to be used to reproduce the work. When the opening words of subsection 3(1) are read in the context of the remainder of that subsection and of other sections of the Copyright Act, it is my view that such interpretation is not only possible but is required. [Emphasis added.]

[151] That is the only interpretation that is compatible with the three elements that we analysed in relation to s. 3(1) C.A. As Tamaro, supra, at p. 93, said:

[translation] If it were otherwise, anyone would be entitled to make a new material fixation of a work, in a modified form, or a fixation of the work on a different medium. That is no longer the case and the owner of the right to reproduce a work has the sole right to authorize an adaptation of the work; in that case, we refer, for example, to a derivative work, an adaptation or a reproduction that has been transformed.

[152] Furthermore, whether we are dealing with an unlawful reproduction is a question of fact that must be determined based on the facts in each case. In Ladbroke (Football) Ltd. v. William Hill (Football) Ltd., [1964] 1 W.L.R. 273 (H.L.), at p. 283, Lord Evershed pointed out:

[W]hat amounts in any case to substantial reproduction . . . cannot be defined in precise terms but must be a matter of fact and degree. It will, therefore, depend, not merely on the physical amount of the reproduction, but on the substantial significance of that which is taken. [Emphasis added.]

[153] It is useful to recall that a reproduction of an article derived from the work is also an unlawful reproduction. In King Features Syndicate Inc. v. O. and M. Kleemann, Ltd., [1940] 2 All E.R. 355 (Ch. Div.), at p. 359, Simonds J. said:

It must be immaterial whether the infringing article is derived directly or indirectly from the original work. The standard is objective. The question is whether or not the original work, or a substantial part thereof, has been reproduced. If it has been, then it is no answer to say that it has been copied from a work which was itself, whether licensed or unlicensed, a copy of the original. For this proposition there is ample authority . . . in Ex p. Beal . . . :

When the subject of a picture is copied, it is of no consequence whether that is done directly from the picture itself or through intervening copies . . .

This view of copyright law has never, I think, been doubted, and is plain common sense. [Citations omitted.]

[154] Therefore, contrary to what my colleague, Binnie J., says, at para. 65, I am of the view that based on s. 3(1) C.A., the analysis is the same whether the reproduction was made from an original work or a copy. In both cases, we must determine whether there has been a reproduction of the work or a substantial part of the work.

[155] It is also important to distinguish between the medium, which is protected by s. 3(1) C.A. and is inextricably connected to the work, and the concept of “structure” in s. 28.2(3) C.A. My colleague interprets the English version of s. 28.2(3)(a), which provides: “a change in . . . the physical structure containing a work . . . shall not, by that act alone, constitute . . . modification of the work”, and holds that a modification of the work is an infringement of an author’s moral rights rather than his or her economic rights (paras. 17 and 60). I cannot agree with that view. Such an interpretation would be contrary to the intent of Parliament. First, we need to compare the two versions of s. 28.2(3):

28.2 . . .

(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. [Emphasis added.]

[156] Two comments must be made. First, my colleague places the emphasis on the expression “shall not”. A comparative analysis shows that Parliament emphasizes, rather, “shall not, by that act alone”, which corresponds to “ne constitue pas nécessairement” in the French version. By using the negative, it allows authors to show that a change in structure can amount to a modification of the work and cause prejudice to the author’s honour or reputation, therefore infringing his or her moral rights.

[157] Second, my colleague seems to want to give the concept of “physical structure containing a work”, which Parliament rendered as “la structure qui . . . contient [l’œuvre]”, a meaning that cannot stand up to an analysis of the concept of “work” (œuvre in French). In my opinion, by referring to the concept of physical structure rather than medium (s. 3(1) C.A.), Parliament is making a vital distinction and is instead referring, in s. 28.2(3) C.A., to a physical structure that is superimposed onto the work. As Binnie J. pointed out in his analysis of copyright, copyright protects only works, not ideas. As I explained earlier, a work necessarily includes the medium. A change to the medium is prohibited by s. 3(1) C.A., while a change to a physical structure containing the work will be prohibited by s. 28.2(3) if the author establishes that the new physical structure causes prejudice to the integrity of his or her work.

[158] In determining the meaning of “reproduc[ing] . . . in any material form whatever”, it is completely irrelevant that the consequence of one materialization destroys another. Obviously, when a person reproduces a work and at the same time destroys a copy of it, we assume that the person derives some benefit from doing so. In this case, for example, the appellants sold the canvas‑backed reproductions of the respondent’s works at a much higher price than the paper‑backed reproductions. However, there would be unlawful reproduction even if the re‑materialization process resulted in an economic loss as a result of the destruction of another copy.

(3) Transfer to Canvas and Infringement

[159] We must now address the issue on which the entire case is predicated: whether transferring a poster representing a work onto canvas constitutes infringement. In order for infringement to have occurred, there must have been an infringement of the copyright conferred under s. 3(1) C.A. Section 27 C.A. defines such an infringement as “do[ing], without the consent of the owner of the copyright, anything that by this Act only the owner of the copyright has the right to do”. In short, in order for infringement to have occurred, a work must have been plagiarized or unlawfully appropriated. In the case of a painting, infringement will occur, inter alia, when the painting as a whole or any substantial part thereof is reproduced in any material form whatever, in the words of s. 3(1) C.A.

[160] The respondent had given his publishers, in particular É.G.I., very detailed authorization for the reproduction of his works. The evidence established that the posters that were transferred onto canvas by the appellants were all purchased from É.G.I.

[161] The appellants argued that transferring the paper‑backed reproductions of the respondent’s works onto canvas was not an infringement of the respondent’s copyright. They submitted, first, that the contract between the respondent and É.G.I. allowed the works to be reproduced in any material form whatsoever. Second, they argued that transferring posters onto canvas did not ultimately result in an increase in the total number of copies of the work, and accordingly, they had not reproduced the works, in any material form whatever, in breach of s. 3(1) C.A.: they had merely transferred the image represented from one medium to another, and this was not contrary to the Act.

[162] We must therefore first determine the scope of the reproduction rights that were granted, which will at the same time establish the scope of the rights that the respondent retained. That determination calls for a simultaneous examination of certain provisions of the Act and the terms of the contract between the respondent and É.G.I. We will then need to determine whether transferring an image from one medium to another amounts to “produc[ing] or reproduc[ing] the work or any substantial part thereof in any material form whatever” within the meaning of s. 3(1) C.A.

(4) Construction of the Contract

[163] Section 13(4) of the Act provides that the owner of the copyright may assign it, or grant any interest in it by licence:

. . .

A copyright owner may therefore dispose of his or her right, either wholly or partially, and either generally or subject to certain limitations, inter alia, with respect to the medium. However, he or she retains the residue of the sole reproduction rights that were not assigned.

[164] My colleague, Binnie J., relies on the testimony of the respondent Théberge to show that the nature of the copyright infringements was not economic, but moral, and that consequently s. 3(1) does not apply. The respondent’s testimony is, however, not relevant to the disposition of this case. The respondent is an artist; he is not a lawyer. He is not an expert in intellectual property. However, he signed a contract setting out the terms in which he authorized the reproduction of his works. The contract is unequivocal and has not been challenged. It is the contract, and not the respondent’s testimony, that must be analysed.

[165] In fact, that part of the respondent’s testimony also supports the finding that infringement had occurred, having regard to the concept of copyright under s. 3(1) C.A., since that definition hinges on the negative economic impact that the marketing of reproductions in breach of that right would have on the author’s original works. As McKeown, supra, stated, at pp. 426‑27:

In considering whether a substantial part has been taken, particular emphasis must be given to the fact that the defendant’s work competes with the plaintiff’s work, or may serve as a substitute for it, or will interfere with a work that the plaintiff may publish in the future.

[166] Prima facie, the question of the legal nature of the contract between the respondent and É.G.I. might generate some disagreement. We might well ask whether it comprised an assignment or a mere concession (or licence). In the first case, it would amount to the assignment of the sole right, which may be set up against everyone to produce and reproduce in any material form whatever, while in the second case, it would amount only to the grant of a personal “interest”, and the respondent would retain his right in full. The limitation on the number of paintings, in particular, suggests that this was a mere concession, or licence. In any event, I do not believe that this kind of characterization is necessary for the purposes of this case. We may conclude, simply by reviewing the contractual provisions with respect to the authorized medium, that the respondent never intended to assign in full his right to reproduce the works in question in any material form whatever. The only right that he assigned was the right to reproduce his works on paper, thereby excluding reproduction in any other material form.

[167] The contract must be interpreted in accordance with the general requirements of arts. 1425 to 1432 of the Civil Code of Québec, S.Q. 1991, c. 64 (“C.C.Q.”). The following articles are particularly relevant:

The common intention of the parties rather than adherence to the literal meaning of the words shall be sought in interpreting a contract.
In interpreting a contract, the nature of the contract, the circumstances in which it was formed, the interpretation which has already been given to it by the parties or which it may have received, and usage, are all taken into account.
Each clause of a contract is interpreted in light of the others so that each is given the meaning derived from the contract as a whole.
Words susceptible of two meanings shall be given the meaning that best conforms to the subject matter of the contract.
The clauses of a contract cover only what it appears that the parties intended to include, however general the terms used.

[168] The contract is called [translation] “Right To Publish and Distribute” and begins with the following statement:

[translation] The ARTIST hereby assigns to the PUBLISHER the RIGHT TO PUBLISH the PRODUCTS described from the WORK described herein, based on the authorized PRINTINGS and in consideration of the COMPENSATION and the TERMS hereinafter set out. [Emphasis added.]

This is therefore, prima facie, the grant of a right to publish certain products produced from the original work, not an unqualified right to distribute copies of that work in any material form whatever (art. 1431 C.C.Q.).

[169] The contractual provisions, when construed as a whole, show that the right conferred is limited solely to reproduction on paper products (posters, cards or other stationery products). No mention was made of the possibility of marketing products on any medium other than paper. The rights granted therefore do not include the right to affix an image representing the respondent’s work onto a canvas. Several elements of the contract support that conclusion.

[170] First, under the heading [translation] “Product(s)”, it states: [translation] “Reproduction 50 x 60cm ‑ 19.7 x 23.6. ‑ No. 6304 and/or cards and/or stationery” (emphasis added). Second, under the heading [translation] “Printing(s)”, it specifies [translation] “Maximum ten thousand (10,000) reproductions and/or one hundred thousand (100,000) cards and/or stationery as advised”. And third, under the heading [translation] “Compensation”, it stipulates that [translation] “the publisher will give the artist, free of charge, twenty‑five (25) reproductions and/or one hundred (100) cards

Théberge v. Galerie d’Art du Petit Champlain inc., [2002] 2 S.C.R. 336, 2002 SCC 34

I. The Nature of Copyright

II. The Respondent’s Copyright

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

IV. The Respondent’s Complaint

V. Expansion of the Economic Right

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

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

C. There Was No Reproduction “in Substantial Part”

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

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

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

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

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

VI. Conclusion with Respect to the Substantive Issue

VII. Conclusion With Respect to the Procedural Issue

VIII. Disposition

I. Introduction

II. Facts

III. Relevant Statutory Provisions

IV. Judgments Below

A. Quebec Superior Court

B. Quebec Court of Appeal

V. Issue

VI. Analysis

A. Seizure Before Judgment

(1) Interaction Between Article 734(1) C.C.P. and Section 38(1) C.A.

(2) Risk of Abuse

B. Copyright

(1) Introduction

(2) Infringement: The Rights At Issue

(a) Copyright and Moral Rights

(b) Copy Made in Contravention of this Act

(c) Application of Section 3(1) C.A.

(i) The Sole Right to Produce or Reproduce: Definition

(ii) Reproduction of a Substantial Part of the Work

(iii) Reproduce in any Material Form Whatever

(3) Transfer to Canvas and Infringement

(4) Construction of the Contract

Judges

Counsel

Parties

Areas of Law

Fact Patterns

Issues

Statutory Provisions 3

Legal Tests 1

Legislation 3