Copyright
Case Note: Barbara Hager v ECW Press Ltd. and
Others
John Lambert
3 Jan 2001
Last updated
24 March 2006
This case first
appeared on the Old Colony House website
One of the reasons why it has been argued (or at least hinted) in such cases as Hyde Park Residence Ltd. v Yelland [2000] EWCA Civ 37 and Pro Sieben AG v Carlton UK Television Ltd. [1999] 1 WLR 605 that the statutory exceptions in Chapter III of Part I of the Copyright, Designs and Patents Act 1988 are examples of a general "fair use" defence is that such a defence is provided by the United States Copyright Act 17 USC 107. The difference between "fair use" and "fair dealing" was pointed out by Reed J in Barbara Hager v ECW Press Ltd. and Others [1999] 2 FC. 287:
"The concept of 'fair dealing' in sections 29, 29.1 and 29.2 of the [Canadian] Copyright Act is quite different from that of 'fair use' in the United States. The most significant difference is that under Canadian copyright law the use of the copied material must come within one of the specific purposes identified in the statute: research or private study (section 29), criticism or review (section 29.1), or news reporting (section 29.2)."
That is exactly the same position as in England. The judge made those remarks in the context of submissions that Canada's accession to the North American Free Trade Agreement had approximated its copyright law to that of the United States, a proposition expressly rejected by the Canadian Court of Appeal in Tele-Direct (Publications) Inc. v. American Business Information, Inc.[1998] 2 FC 22 which was the very case upon which that submission had been based.
The Facts
The case before Reed J was an action by the author of a work on the
achievements of various Canadians of aboriginal origin. C had devoted a
chapter of her book to the well-known country singer, Shania Twain. Much
of that chapter contained material that the author had gathered by
shadowing the singer for half a day in Los Angeles. D2 obtained a copy
of C’s book and reproduced much of her material on Shania Twain,
including quotations from their interview with C, in his own book on the
singer which D1 published. DD' book did not compete directly with C's
but it forced her to change the focus and nature of a second book
specifically on Shania Twain that she had planned to write.
Defendants'
Submissions
TDD contended that D2 had not reproduced a substantial part of C's work
because most of the material that he had used consisted of quotations
from C's interview with Shania Twain the copyright of which belonged to
the singer rather than C. They referred to Richard J’s decision in U
& R Tax Services Ltd. v H & R Block Canada Inc. (1995) 62 CPR (3d)
257 (Federal Court, Trial Division), that the factors to be considered
when assessing whether there has been a substantial taking included:
(a) the quality and quantity of the
material taken;
(b) the extent to which the defendant's use adversely affects the
plaintiff's activities and diminished the value of the plaintiff's
copyright;
(c) whether the material taken is the proper subject-matter of a
copyright;
(d) whether the defendant intentionally appropriated the plaintiff's
work to save time and effort; and
(e) whether the material taken is used in the same or a similar fashion
as the plaintiff's.
Even though they amounted to about a third of C's chapter on Shania Twain, DD argued that the quotations were not a substantial part of her work. Alternatively, they contended that their reproduction fell within the fair dealing for research and criticism exceptions.
The Judgment
Reed J rejected both submissions. Copyright in an interview belongs to
the person who writes it down rather than the person who is being
interviewed. That point had been settled by the House of Lords in
Walter v Lane [1900] AC 539 and affirmed in Canada by the Ontario
Court of Appeal as recently as 1996 in
The Estate of Glenn Gould v Stoddart Publishing Co. Ltd.
161 DLR (4) 321 1998-05-06 C25822;C25823 Ontario CA. There was nothing
in the North American Free Trade Agreement that required Canada to adopt
the American position where the copyright in an interview could be
shared by the interviewer and his subject (Compendium II of Copyright
Office Practices). Neither of the fair dealing exceptions availed DD. It
was implicit from the absence of a requirement that the source of a
quotation be identified that the use contemplated by the private study
and research exception did not contemplate communication of the copied
material to the public. As for criticism and review, the use of the
quotations and paraphrases of C's work simply did not fall within that
exception.
Comment
The judgment also highlights a substantial difference between English
and Canadian copyright law in the assessment of damages. S. 35 (1) of
the Canadian Act as amended provides:
"Where a person infringes copyright, the person is liable to pay such damages to the owner of the copyright as the owner has suffered due to the infringement and, in addition to those damages, such part of the profits that the infringer has made from the infringement and that were not taken into account in calculating damages as the court considers just."
Reed J assessed that
C's loss due to the infringement at C$9,000 on the basis of a notional
licence fee for the right to reproduce her material and 10% of DD' net
profits (estimated at C$34,053) which came to a grand total of C$12,405.
