The United States Court of Appeals for the Ninth Circuit recently affirmed a district court’s decision in favor of rapper Jay-Z, dismissing “moral rights” infringement claims brought by the heir to Egyptian composer Baligh Hamdy’s copyright in a 1957 arrangement of the song Khosara [1]. This decision has created global intrigue on what “moral rights” are and if and how they can be protected. This article considers moral rights in Canada, and concludes that a Canadian court might be more receptive to claims like those brought against Jay-Z in the United States.

What are Moral Rights in Canada?
Moral rights are provided for in Canada under sections 14.1(1) and 17.1(1) of the Copyright Act, which provides that the author of a work or a performer of an aural performance has the right to the integrity of the work and the right to be associated with the work as its author. Moral rights subsist for the same term as the copyright in the work [2], but cannot be assigned and belong to the author regardless of who actually owns the copyright [3]. Consequently, moral rights pass to the author’s heirs rather than the copyright owner upon the author’s death [4].

How are Moral Rights Infringed?
Moral rights are infringed by acts or omissions that are contrary to the author’s right to the integrity of the work or the author’s right to be associated with the work as its author [5]. The right to association with a work is subject to a reasonableness standard, while the right to the integrity of a work is infringed only if the work is used in association with a product, service, cause or institution, or modified in a way that prejudices the author’s honour or reputation [6]. For paintings, sculptures and engravings, any distortion, mutilation or modification is deemed to prejudice the author’s honor and reputation [7], and consequently to infringe the author’s moral rights. For other types of works, what constitutes a modification that prejudices an author’s honour or reputation is less clear.

The Canadian courts first examined this issue in Snow v Eaton Centre Ltd [8]. In this case, the Ontario courts found Toronto Eaton Centre liable for infringing the plaintiff’s moral rights by putting Christmas ribbons on the plaintiff’s sculpture and displaying the “modified” sculpture. Moral rights issues were more recently discussed by the Supreme Court of Canada (SCC) in Théberge v. Galerie d’Art du Petit Champlain Inc [9]. In this case, the plaintiff sought an injunction to prevent the defendant from infringing his copyright in a poster by lifting the ink that was used to print the poster and transferring it onto a canvas. The court considered the plaintiff’s attempt to “assert a moral right in the guise of an economic right” [10], and dismissed the plaintiff’s action since no substantial reproductions of the poster were made in the process. It is unclear how the SCC would have ruled had the plaintiff brought a claim for moral rights infringement rather than infringement of an economic right.

Notwithstanding that the claim was not successful in that case, moral rights are more generously provided for in the Canadian Copyright Act than under United States law. In addition to the right “to produce or reproduce the work or any substantial part thereof in any material form whatever, [and] to perform the work or any substantial part thereof in public” [11], Canadian authors, artists and musicians also have the right to preserve the integrity of their works. For musicians, this may mean that any unauthorized use of their musical works in association with a product, service, cause, or institution constitutes an infringement of their moral rights, and modifications of the work that are made to the prejudice of the honour or reputation of the author may also be an infringement of moral rights in Canada [12].

Conclusion
Unlike in the United States where only works of “visual art” are protected by moral rights (see 17 U.S.C. § 106A(a)), Canadian copyright laws do not impose such a limitation. In fact, Canadian copyright law expressly extends moral rights to performers of aural performances [13]. Hence, music and other forms of literary works are also protected by moral rights in Canada. The Canadian courts may not have been as dismissive about the plaintiff’s claims in the Jay-Z case had such an issue been brought up in Canada.

[1] Fahmy v. Jay Z, United States Court of Appeals, Ninth Circuit, No. 16-55213, 31 May 2018
[2] Section 14.2(1) and 17.2(1) of the Copyright Act
[3] Section 14.1(2) and 17.1(2) of the Copyright Act
[4] Section 14.2(2) and 17.2(2) of the Copyright Act
[5] Section 28.1 of the Copyright Act
[6] Section 28.2(1) of the Copyright Act
[7] Section 28.2(2) of the Copyright Act
[8] Snow v The Eaton Centre Ltd. (1982) 70 CPR (2d) 105
[9] Théberge v Galerie d’Art du Petit Champlain Inc [2002] 2 SCR 336, 2002 SCC 34
[10] Théberge v Galerie d’Art du Petit Champlain Inc [2002] 2 SCR 336, 2002 SCC 34 at para 74
[11] Section 3(1) of the Copyright Act
[12] Section 28.2(1) of the Copyright Act
[13] Section 17.1(1) of the Copyright Act

One of the first steps in starting a business is naming it. For many businesses this involves registering the business with local authorities and/or incorporating the business. Owners may elect to register their business name as a trademark for various reasons including protecting the name against 3rd party use and enhancing the assets of the business. However, some business names may be unregistrable as a trademark in Canada.

The nuances of trademark law were experienced first hand by the owner of a dental practice in Lum v. Dr. Coby Cragg Inc., 2015 FCA 293. Dr. Cragg operated a dental practice under the trade name “Ocean Park Dental Centre” for several decades. The practice was named after Ocean Park, the area of South Surrey in which the practice was located. In 2012, Dr. Cragg applied for a trademark registration for OCEAN PARK, associated with dental services. A registration for the mark issued on 28 November 2013.

In 2014, Dr. Cragg brought an action for trademark infringement in the Supreme Court of British Columbia against Dr. Lum, who operated a dental practice nearby under the trade name “Ocean Park Village Dental” and, later, “Village Dental in Ocean Park”. In response, Dr. Lum brought his own action in Federal Court to have Dr. Cragg’s trademark registration declared invalid and struck from the Register of Trademarks.  Dr. Lum’s Federal Court action was ultimately successful following an appeal to the Federal Court of Appeal, and the OCEAN PARK trademark registration was declared invalid for being clearly descriptive of the place of origin of the owner’s services, contrary to section 12(1)(b) of the Trade-Marks Act.

Since Ocean Park is clearly a geographic location and the services are provided within that geographic location, the Federal Court held that Dr. Cragg would only be entitled to register the mark OCEAN PARK if the mark had acquired distinctiveness as of the date of filing the application. By “distinctiveness” it is meant that the mark needed to have developed a degree of recognisability in the eyes of the relevant public separate from its character as an indicator of geographic origin. However, upon review of the evidence the court determined that the mark had never acquired the necessary distinctiveness.

The OCEAN PARK case provides a cautionary tale for business owners who are considering or may already have a business name or trade name that includes the geographic location of their business. While it is possible that such a business name or trade name could develop the necessary distinctive character to be registrable as a trademark, it may take years of extensive use and promotion to develop this distinctive character.

Unfortunately, this situation may appear confusing to those who have reviewed the government of British Columbia’s webpages on registering business names. On one of these pages is a description of rules for business names and a formula for how to select a name that might be approved. The formula recommends developing a name combining a distinctive element, a descriptive element, and the necessary corporate designation.

The webpage suggests that for a distinctive element an applicant can use a coined word, a geographical location, or a personal name. For those business owners who continue on to use their registered corporate name as their trade name, this may create a trap whereby they are unable to register their business name as a trademark. Prospective business owners should take care to understand that while a geographical location may be a distinctive element for the purposes of incorporating a business, it may not be distinctive for the purposes of trademark registration.

by John H. Lambert

 

Resolving legal disputes through litigation can be costly and time consuming. A typical lawsuit generally requires filing a claim and a reply, discovery of both parties, and finally a trial.

In an effort to increase access to justice by reducing the cost and complexity of litigation, the BC provincial court has implemented two alternative litigation processes:

(i) the Small Claims Court; and
(ii) the BC Civil Resolution Tribunal.

These alternative processes may provide simplified and less costly options for individuals looking to resolve intellectual property disputes.

BC Provincial Small Claims Court

The BC Provincial Small Claims Court provides a simplified, litigant friendly court process for resolving disputes under $35,000. The Small Claims Court may hear issues involving:

• debt or damages;
• recovery of personal property or opposing claims to personal property; and
• performance of agreements about personal property or services.

The jurisdiction of the Small Claims Court includes issues related to copyright and breach of contract, including breach of confidentiality. The Small Claims Court may also have circumscribed jurisdiction over claims relating to patents and industrial designs, but is expressly excluded from hearing matters related to trademarks and cannot grant injunctions.

Resolving a matter through litigation in Small Claims Court is simplified over BC Supreme Court, primarily due to the streamlined discovery and trial processes. BC Supreme Court requires that both parties disclose to each other any documents in their possession or control which may be potentially relevant to any matters at issue. BC Supreme Court also permits by right each party to examine one individual from the other party for a full day, and additional individuals and/or for additional time by order or consent of the parties.

Small Claims Court has no default requirement for the parties to disclose documents to each other. Furthermore, there is no right in Small Claims Court to examine the other party. This truncated discovery process simplifies and streamlines the proceeding, saving costs. However, the risk with the streamlined discovery process is that a party may not have all the facts available to them, either to prove their case, or to disprove another party’s.

BC Civil Resolution Tribunal

The BC Civil Resolution Tribunal (BC CRT) is an online tribunal for resolving disputes under $5,000 or involving strata property. The BC CRT is directed to self-represented parties, and aims to resolve disputes faster and with less expense than a traditional court proceeding. As a part of the BC Provincial Small Claims Court, the BC CRT may only hear intellectual property issues related to copyright or breach of contract (e.g. confidentiality agreements). The BC CRT further simplifies the processes over the Small Claims Court by replacing an in-person trial with online submissions and a decision by the BC CRT. While the BC CRT has only been operating since 2017, there has been at least one reported decision involving copyright (see Pereira v. Hirsch Creek Golf and Winter Club et al, 2018 BCCRT 136).

Choosing a Venue

Whether the BC CRT, the Small Claims Court, or the BC Supreme Court is the best venue for your claim will depend on:

• the nature of the claim;
• the value of the claim; and
• whether you prefer a robust or a simplified discovery and trial.

The decision of whether or not to file a claim, and where to file it, is a complex and important decision, which is best made with the assistance of an experienced lawyer.