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The Copyright Pentalogy

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Michael Geist

The Scope of Copyright

14. Acknowledging Copyright’s Illegitimate Offspring: User-Generated Content and Canadian Copyright Law

Teresa Scassa

Texte intégral

I gratefully acknowledge the support of the Social Sciences and Humanities Research Council of Canada. I appreciate as well the helpful comments of the anonymous peer reviewers. My thanks as well to Charles Sanders for his careful reading and thoughtful comments on a draft of this chapter.

  • 2 Bill C-11, An Act to amend the Copyright Act, 1st Sess, 41st Parl, 2011. At the time of writing, t (...)

1Bill C-112 provides for a new exception to infringement for user-generated content (UGC), along with new grounds for fair dealing. These provisions, combined with a strong and clear message from the Supreme Court of Canada’s pentalogy of copyright cases regarding users’ rights and the copyright balance, signal a new paradigm for copyright law in Canada—one that tolerates a much greater level of interaction with copyright-protected works. This chapter considers the shape Parliament has given to the UGC exception and examines its place within the scheme of the Copyright Act, particularly in light of recent Supreme Court of Canada jurisprudence. The chapter begins with a discussion of the definition of UGC, followed by an analysis of the statutory exception. It next considers the relationship between the UGC exception and the fair dealing exception. Although opponents might characterize both the UGC exception and expanded fair dealing as unjustifiable encroachments upon the rights of copyright owners, this chapter argues that these exceptions reflect the shifting realities of cultural production and dissemination.

1. Defining User-Generated Content

  • 3 Note that the OECD has used the term “user-created content” or “UCC” to describe the same phenomen (...)
  • 4 Daniel J Gervais, “The Tangled Web of UGC: Making Copyright Sense of User-Generated Content” (2009 (...)
  • 5 Gervais, supra note 4 at 842. Note that the UGC provision in Bill C-11, supra note 2, is not limit (...)
  • 6 Debora Halbert, “Mass Culture and the Culture of the Masses: A Manifest for User-Generated Rights” (...)

2User-generated content, or UGC,3 is a term that has been used to describe a fairly wide range of Internet-based activity from blogging to file-sharing.4 Gervais, admitting the difficulty of defining a term that covers such a broad range of conduct, has characterized it as “content that is created in whole or in part using tools specific to the online environment and/or disseminated using such tools.”5 Halbert defines it not so much in terms of what it is, but in terms of who makes it, writing that UGC is “used to describe activities engaged in by those typically seen not as cultural producers but cultural consumers.”6

  • 7 See e.g. Yochai Benkler, The Wealth of Networks: How Social Production Transforms Markets and Free (...)
  • 8 For example, in Rogers Communications Inc. v Society of Composers, Authors and Music Publishers of (...)

3Although these characterizations emphasize different features of UGC, together they highlight the profound transformations wrought by the digital information context. On the one hand, digital technologies empower users of digital works to interact in new ways with copyright-protected content; at the same time, the proliferation of new and modified content from non-professional sources has undermined the traditional content intermediaries, creating a radically transformed context for the dissemination of information and cultural content.7 It is precisely this new paradigm that underpins the recent Supreme Court of Canada copyright jurisprudence.8

  • 9 Samuel E Trosow et al, “Mobilizing User-Generated Content for Canada’s Digital Advantage” (1 Decem (...)
  • 10 In the context of Volunteered Geographic Information (VGI), a subset of UGC, see, for example: Chr (...)
  • 11 Gervais, supra note 4.
  • 12 This type of content could include reviews of products or services, blog postings and photographs (...)
  • 13 This would be new content created through the modification of existing works.
  • 14 Note that others have argued as well that user-copied content takes on a new significance in certa (...)
  • 15 Society of Composers, Authors and Music Publishers of Canada v Bell Canada, 2012 SCC 36 at para 34 (...)

4The expansive definitions of UGC have led to further attempts to categorize UGC for the purposes of legal analysis. Trosow et al9 offer a taxonomy for UGC that features three broad categories: creative content, small-scale tools (such as apps) and collaborative projects (such as wikis). In this taxonomy, the focus is on function, and it is certainly worth reflecting upon the broad range of purposes served by UGC. UGC may be innovative, creative or informative. Indeed, in fields of activity where UGC has had an impact on knowledge generation and dissemination, the focus of inquiry has been on the substantive issues around the quality and reliability of the new content, rather than on issues of copyright.10 Copyright lawyers employ a different taxonomy. Gervais offers a taxonomy based on the nature of the content in relation to copyright principles. He would divide UGC into three broad categories11: content authored by users,12 content derived by users13 and content copied by users.14 This taxonomy emphasizes the different ways in which individuals now engage with digital works and digital modes of dissemination. The focus on the characterization of the user’s activity, as opposed to, for example, the form of the work, is echoed as well in the Supreme Court of Canada’s emphasis in SOCAN v Bell Canada [Bell] on the importance of the perspective of “the ultimate users” and their purposes in relation to the works at issue.15

5The UGC exception in Bill C-11 is oriented only toward the second category in Gervais’ taxonomy: content that is created by users and that incorporates, to a greater or lesser extent, copyright works by others. It is therefore this category of UGC that will be the focus of this chapter. Because this chapter is about intellectual property law, it is the copyright lawyers’ taxonomy that is adopted. Nevertheless, it is important to note that UGC in its many forms is already becoming accepted in different fields of activity as a source of information and creativity, and inquiries in these fields have moved ahead to issues of how best to use, integrate and derive benefit from these new modes of knowledge creation.

2. UGC in Context

  • 16 See e.g. Ian Chuang, “Be Wary of Adding Your Own Soundtrack: Lenz v Universal and How the Fair Use (...)
  • 17 Banks & Humphreys argue that this new environment is profoundly transformative of traditional econ (...)

6The phenomenon of user-generated content is linked to the widespread digitization of works, the more recent broad accessibility of the software tools required to modify, mix and mash up digital content, and the availability of Internet platforms on which such UGC may be widely shared and disseminated.16 Yet while it is true that it is this digital perfect storm that has driven UGC onto the legislative agenda in Canada, UGC has its pre-digital antecedents. Fan fiction, parodies, satires and other forms of UGC have been around far longer than the Internet and digitization. What has changed is the ease with which users may now interact with content, the facility with which such content can reach global audiences, and the fact that users can create and disseminate their content without the participation of traditional cultural industry gatekeepers. In this respect, UGC is part of a much broader social transformation. The technological revolution that has facilitated the creation of UGC has achieved a more fundamental shift as well. Globally, and across a wide range of sectors and industries, digitization and the Web 2.0 environment have led to dramatically new ways in which individuals choose to receive and share information, communicate with one another, and participate actively in the generation of knowledge, information and creative content. It is not the activity of “users” generating new content from existing works that is novel; rather, it is the social, political and economic consequences of such activity on a massive scale that are fundamentally new.17

  • 18 The term “YouTube exception” became common in the Blogosphere. See e.g. Bob Tarantino, “User-Gener (...)
  • 19 Bill C-32, An Act to Amend the Copyright Act, 3d Sess, 40th Parl, 2010 (first reading 2 June 2010) (...)
  • 20 This was the factual context for the high-profile US case of Lenz v Universal Music Corp., 572 F S (...)
  • 21 For a discussion of music mashups and copyright law, see Graham Reynolds, “A Stroke of Genius or C (...)
  • 22 See generally Christina J Hayes, “Changing the Rules of the Game: How Video Game Publishers Are Em (...)
  • 23 See generally Aaron Schwabach, Fan Fiction and Copyright: Outsider Works and Intellectual Property (...)
  • 24 See e.g. Reina Y Arakji & Karl R Lang, “Digital Consumer Networks and Producer-Consumer Collaborat (...)

7The creation of UGC is sometimes characterized as economically neutral, culturally trivial and mildly parasitic activity. For example, the term “YouTube exception”18 was coined to refer to the UGC exception in Bill C-11 and its predecessor, Bill C-32.19 This term suggests that the paradigmatic activity contemplated by the exception is something like that of an individual who creates a home video using copyright-protected music as a background, and then posts it to YouTube.20 Seen from this angle, UGC is amateur in nature and carries little significance except within a circle of family and friends. Yet it would be a mistake to dismiss UGC so quickly. As discussed earlier, the label UGC is broad enough to capture a much wider diversity of activity. Fan fiction, mashups,21 video game modifications,22 and parodic and satirical uses of works can also be UGC. Many of these works reach a wide audience, and some may take on real cultural significance. Even if individual contributions are not specifically significant, fan interaction with ‘mainstream’ works marks an important cultural phenomenon.23 As some video game producers have learned, consumer interaction with their products is a trend better embraced than ignored or suppressed.24

  • 25 For a discussion of some of the copyright battles in this area see Teresa Scassa, “Copyright Refor (...)
  • 26 Such uses are generally permitted under open licences, but presumably even unlicensed data sets or (...)
  • 27 At the federal level in Canada, the government’s commitment to open data is resulting in an increa (...)

8UGC also includes the very broad range of works contemplated by the open data movement. Individuals may take copyright-protected compilations of government data and use them to create “apps” (such as those for users of public transit systems, for example).25 Some data sets are geospatial data that can be used to create complex information maps, often layering other content (including other government data sets) onto the map.26 This type of activity is now being actively encouraged by governments seeking to promote economic development and stimulate innovation.27 UGC in these contexts can be innovative, useful, critical or analytical. It can make a significant economic or social contribution and may play a role in political discourse by increasing transparency or critical engagement with political and social issues. In this context, UGC cannot easily be dismissed as economically neutral, culturally trivial or mildly parasitic. UGC may play an undeniable, if not fully fathomed, role in cultural, social and political discourse.

  • 28 Open Source licences that have been approved by OpenSource.org can be found at <http://opensource.org/licenses/index.html>.
  • 29 See Creative Commons <http://www.creativecommons.org>.
  • 30 See e.g. Open Data Commons <http://opendatacommons.org/>. Note that in addition to Open Data Commons, which offers template ope</http> (...)

9It is worth noting that the open licensing phenomenon—the making available of all manner of copyright-protected works under open licences—is a kind of private response to copyright restrictions that shares some of the goals of the UGC exception. Movements such as Open Source,28 Creative Commons29 and now Open Data30 create the licensing tools that allow copyright owners to share their works and to allow them to be used, modified and adapted with relatively few restrictions. The creation of UGC has for some time now been actively encouraged by the open licensing movement, and has perhaps contributed to the blurring of lines between works that can be engaged with in transformative ways and those that cannot. Canada’s UGC exception carves out a space for the creation and dissemination of UGC in contexts where rights holders have not made their works available for the creation of derivative works through open licensing.

3. The UGC Exception and the Purpose of the Copyright Act

  • 31 Théberge v Galerie d’Art du Petit Champlain inc., 2002 SCC 34 at para 30, [2002] 2 SCR 336 <http://www.canlii.org/en/ca/scc/doc/2002/2002scc34/2002scc34.html> [ (...)
  • 32 CCH Canadian Ltd. v Law Society of Upper Canada, 2004 SCC 13 at para 12, [2004] 1 SCR 339 <http://www.canlii.org/en/ca/scc/doc/2004/2004scc13/2004scc13.html> [ (...)
  • 33 Bell, supra note 15 at para 11.

10The Supreme Court of Canada in Théberge described copyright law 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”.31 In CCH, the Court characterized statutory exceptions to infringement as “users’ rights”,32 thus placing them on a par with the rights of copyright owners, in terms of achieving the purposes of the legislation. More recently, in Bell, the Court stated that: “users’ rights are an essential part of furthering the public interest objectives of the Copyright Act.”33 As an exception to infringement, therefore, the UGC exception is part of the legislative balance aimed at achieving the public policy objectives underlying copyright law.

  • 34 Ibid at para 10.

11User-generated content, as characterized in Bill C-11, serves both of the twin public policy goals of creation and dissemination of works. Of course, UGC implicates at least two different creators—one of the source work and the other of the UGC. The balance between these creators is such that it is the creator of the source work who may profit economically from their work; the creator of the UGC may use the modified source work and may disseminate it, but only non-commercially, and only so long as there is no adverse impact on the source work. At the same time, the UGC exception facilitates the broad dissemination, not just of the modified source work, but of new content. In Bell, the Supreme Court of Canada emphasized the importance of dissemination to the copyright balance, noting: “the dissemination of artistic works is central to developing a robustly cultured and intellectual public domain.”34

4. The Statutory Exception

  • 35 The UGC exception reads:
    29.21 (1) It is not an infringement of copyright for an individual to use (...)

12Bill C-11’s UGC exception35 is for non-commercial user-generated content. By characterizing it in this way, Parliament recognizes that UGC may have commercial and non-commercial objectives; the exception is only available for UGC that is used for “non-commercial” purposes.

13The following discussion of the statutory exception for UGC is structured around key features of UGC. These are the “user”, the source work, the new work, and the uses to which the new work may be put.

  • 36 See e.g. Allen v Toronto Star Newspaper Ltd (1997), 36 OR (3d) 201, 78 CPR (3d) 115 (Gen Div).
  • 37 Alberta (Education) v Canadian Copyright Licensing Agency (Access Copyright), 2012 SCC 37, [2012] (...)
  • 38 Bell, supra note 15.

14a. The “user”: It is clear from the exception that the party who creates UGC must be an individual. The exception is not available to corporate entities. This is in contrast to the fair dealing exceptions in the statute. The exception for fair dealing for the purpose of the communication of news, for example, is clearly available to corporate news outlets.36 In both Alberta (Education)37 and Bell,38 the Supreme Court of Canada also dealt with corporate entities that claimed fair dealing by proxy; in these cases, the corporate defendants were permitted to assert the fair dealing rights of ultimate users of works (students and consumers of music services, respectively).

  • 39 This is the case, for example, with Google’s YouTube or with Facebook.

15Although the UGC exception is designed for individual users, it would appear to extend an indirect protection to those who disseminate UGC. A creator of UGC is expressly permitted to authorize an intermediary to disseminate it. Presumably, then, the disseminator may rely upon this authorization, if, in keeping with the recent Supreme Court of Canada jurisprudence, the “non-commercial” status of UGC is assessed from the point of view of the user and not the disseminator. This will be so even if the disseminator is a major corporation with a business model that profits directly from the supply of UGC to a broader audience.39 Thus, so long as the creator of UGC makes a non-commercial use of it, it does not appear to matter that the disseminator is a for-profit company.

  • 40 Scafadi offers numerous examples of cultural appropriation: Susan Scafadi, Who Owns Culture? Appro (...)

16The UGC exception in Bill C-11 touches only a subset of UGC, and characterizes the “user” in UGC as one who makes use of the copyright-protected works of others. This is not without its own difficulties. In the first place, it perpetuates the myth that the regular “creator” does not borrow from or use the works of others. They may not do so quite so explicitly, but the contemporary creative context is rife with examples of appropriation both from the public domain and from copyright-protected works.40 Further, by emphasizing the “use” of the works of others, it constructs UGC as a more parasitic activity than perhaps it deserves to be. Some UGC may be highly creative, innovative and transformative.

  • 41 See e.g. Trosow et al, supra note 9 at 10; Chuang, supra note 16 at 167; Gervais, supra note 4 at (...)
  • 42 Hetcher, supra note 4 at 871, emphasizes the amateur status of the “user” in UGC.
  • 43 Banks & Humphreys, supra note 17 argue that user-generated content (what they refer to as consumer (...)
  • 44 See, for example, the collection of essays on the concept of authorship in Martha Woodmansee & Pet (...)
  • 45 Boon argues that mimesis is at the heart of culture. See: Marcus Boon, In Praise of Copying (Cambr (...)

17Indeed, broad taxonomies of UGC include user-authored works,41 which suggests that the “user” is not necessarily a user of the works of others, but rather is one who takes advantage of the available technology to create and disseminate their work. In this sense, the only distinction between “users” and regular creators is their nonprofessional status.42 There is perhaps something quite significant in the characterization of non-professional creators of works as “users”, especially since the term implies at worst a certain parasitism, and at best a role as primarily a consumer of the works of others. If indeed the paradigm for content creation is changing, as many have observed that it is,43 the user/creator or user/rights holder distinctions should also start to crumble (or be more forcefully deconstructed). The myth of the author as originator has been thoroughly debunked;44 culture is built upon the work of others.45

18The word “user” in UGC also emphasizes that the creator of the generated content is not aligned with the traditional content industries. Thus, instead of works generated by professional artists/creators via traditional modes of content dissemination (such as the music, film or publishing industries), much UGC is created by non-professional content creators, often ordinary individuals in their own homes. Of course, this does not mean that the “user” in UGC is unskilled or is lacking in professional qualifications. These so-called users may be computer software engineers, geographers or other professionals who create or generate UGC for their own private purposes in their spare time. They may also be amateur musicians, filmmakers, artists or writers who enjoy engaging with, remixing or mashing up other content to create their own works. In the case of wiki-type works that combine original, user-created content with existing platforms, software or copyright-protected content, it becomes more difficult to think of the “users” in UGC as users at all; their role is much more directly one of content generation.

  • 46 Of course, the creator of UGC may also draw upon content in the public domain, but does not need a (...)

19It is worth noting that the UGC exception in Bill C-11 requires that the generated content be works in which copyright subsists.46 This draws a line under the fact that the works themselves must have the degree of authorial effort and originality required for such protection. Perhaps the term “user”, then, is an abbreviated description of the creators’ place on a spectrum of creative activity; it reflects the degree to which they have incorporated the copyright-protected work of others into their original creations. On such a spectrum they might find themselves between the passive consumer on one end and the mythical creator from whole cultural cloth on the other. Yet the space they occupy is also shared with editors of anthologies, creators of other compilations, translators, adapters of books to movies, music arrangers, and so on. Within this space, the term “user” accurately describes all of these creators. In this respect, the differences between the UGC creator and the other creators is that the works they draw upon are still protected by copyright, they lack the economic ability to acquire the rights to the work or to license their adaptation, and/or their immediate expressive goals are served by a non-commercial dissemination of their work.

20A final comment about the term “user” in UGC and the reference to the user as an “individual” relates to the fact that there is a well-established and growing trend toward collaborative co-creation in the digital environment. Most would characterize wikis and other crowd-sourced projects as UGC. Nevertheless, the UGC exception seems wedded to the conventional notion of the individual author. It remains to be seen how the UGC exception will apply to collaborative co-creation that incorporates the copyright protected works of others.

  • 47 For a discussion of this phenomenon, see Teresa Scassa, “Legal Issues with Volunteered Geographic (...)
  • 48 Copyright in a compilation of facts lies only in the original selection or arrangement of the fact (...)

21b. The source work: The UGC exception is triggered when a work in which copyright subsists is used to create a new work. Obviously, such an exception would not be required in order to make use of a work in the public domain, or one that is not sufficiently original to give rise to copyright. This might raise interesting questions, particularly in an age where many users mash up data sets or integrate data that they have obtained elsewhere into maps or other information-based works.47 In such cases, it may be unclear whether the compilation of data relied upon by the user is one which has a sufficient degree of originality for copyright to subsist, or whether enough of the original selection or arrangement has been taken to constitute substantial taking in the first place.48 In other words, it may not be clear whether what has been created by the user is UGC, or whether it is a fresh work using public domain materials. For uses that otherwise fit within the UGC exception, this issue may be moot; however, it may become live if the user’s use of the work has a commercial dimension or if it could be argued to have a “substantial adverse effect” on the party who claims rights in the data set.

22The work that is used by the user must be one that has been either published or made available to the public. Thus, the UGC exception would not be available to one who incorporates private letters, unpublished journal entries, or other such works into their work. The work must also be one that the individual “had reasonable grounds to believe” was not infringing copyright.

  • 49 Bill C-11, supra note 2, s 29.21(1)(b).

23The UGC exception also creates an attribution requirement, although it is not particularly strong. The source of a work and other information about the author, performer and so on must be mentioned if “it is reasonable in the circumstances to do so”.49 Given the broad range of UGC, and its extremely amateur nature on one end of the spectrum, it is not clear what criteria will be used to determine in which circumstances it is reasonable to require attribution.

  • 50 Wong notes that the low threshold for originality means that much UGC will itself be work in which (...)
  • 51 CCH, supra note 32 at para 16.
  • 52 Note that the new exception for private copies in Bill C-11, supra note 2, s 29.22 would not permi (...)

24c. The new work: The work that is created as a result of the use of previously existing copyright-protected material must be one in which copyright subsists.50 This would mean that it must meet the requirements for copyrightability. The most important of these requirements in this context is originality. The requirement that a new work be created removes from the scope of the exception “works” that are either mere copies of existing works or that are barely modified copies. The user’s contribution to the new work must represent a sufficient exercise of “skill and judgment”.51 Since skill and judgment may be present in the creation of a compilation (an original selection or arrangement of materials), it does raise the question of whether an anthology of some kind might be considered a new work in which copyright subsists. In other words, one might wonder whether the UGC exception might finally legitimize the “mix tape”; a user’s compilation of songs appropriate to a particular occasion.52 The exception speaks only of using “an existing work” in the singular, but there is no clear reason why UGC should become illegitimate if more than one work was used in the creation of a new work.

25The potential that compilations might constitute UGC for the purposes of this exception is of real significance. To return to the mix tape, neither the private copying exception for musical works in sections 79 and 80 of the Copyright Act, nor the new exception for private purposes in section 29.22, would permit the sharing of any work copied under their terms. Yet a compilation that qualifies as UGC can explicitly be shared. While placing a compilation of music online might not meet the other requirements of the UGC exception, sharing copies with friends and family might not amount to a substantial enough adverse effect on the work to disqualify it from the exception.

  • 53 An article by Steven Hetcher raises the interesting question of what happens when the fine print o (...)
  • 54 It is likely, in fact, that the unauthorized amateur translator would qualify for this exception: (...)

26d. The use to which it may be put: The UGC exception allows the user/creator to “use” their newly created work, or to authorize a member of their household to do so. “Use” is defined in this provision as the exercise of any of the rights of a copyright holder, except the right to authorize “anything”.53 The difference between a “regular” rights holder and the creator of UGC is that, in the case of UGC, the work also happens to implicate the rights of another copyright holder. Canadian copyright law already contemplates layered copyrights; for example, the translator is the author of a translation, and presumably the first owner of copyright therein, even though he or she may not be the author of the copyright-protected work that has been translated.54 The creator of UGC is in an analogous position to the author of an unauthorized translation; they may not commercially exploit their work. However, thanks to the exception, they have a broad licence to use or disseminate it in non-commercial ways.

27In addition to their general right to “use” the new work (which would appear to include performing it in public, communicating it to the public by telecommunication and reproducing it), the creator of UGC may also authorize an intermediary to disseminate it. This would cover the posting of the work to social media sites, such as YouTube or Facebook. Thus the exception carves out a broad space for the use and dissemination of UGC. However, paragraphs 29.21(1)(a) and (d) do place potentially significant limits on any such uses. According to paragraph 29.21(1)(a), the use or dissemination must be done solely for non-commercial purposes. These would be the user’s non-commercial purposes. As noted earlier, it seems to be accepted that the disseminator may be involved in a commercial enterprise wherein it provides UGC and other content for a profit. This is interesting; as others have suggested, it means that major corporations such as Facebook and Google may profit from the vast and enthusiastic audience for UGC, while the creators of such content may not derive rents for their creative output. This generates an interesting dynamic and one that is sure to displease the owners of copyright in the source works. The fact that someone is commercially exploiting, at least indirectly, their creative output, without any obligation to provide some form of remuneration, no doubt strikes a nerve. From the perspective of the disseminator, the aggregation of free content supports a commercial enterprise based largely upon advertising revenues. The user, in exchange for their content, receives no payment, but rather an unprecedented vehicle of dissemination with global reach and opportunities to gain profile, to develop or enhance reputation, and even to move at some point toward professional status.

28These latter intangible benefits of UGC raise the further question of what “non-commercial” really means. It is clear from the business world that “free” does not necessarily mean non-commercial. Free content may be a means of self-promotion, or it may build or enhance reputation with a view to professional or other advancement. In some cases, the fame or notoriety that leads to commercial benefits may be entirely unanticipated, but may nevertheless flow from the dissemination of UGC.

  • 55 Though note the complexities and cost of licensing may simply render this impossible. See e.g. Rey (...)

29It is the creator of the source work who seems to be excluded from the possibility of direct benefit. Normally, any exploitation of an author’s work would have to be negotiated with the copyright holder. To return to our unauthorized translation, the translator who sought to publish her translation would have to seek the copyright owner’s permission, and this permission could be withheld if the copyright owner were not satisfied with the quality of the translation or if they had already made arrangements for an authorized translation to be made. The UGC exception limits the control of the author of the source work over its non-commercial use or dissemination. Nevertheless, the owner of the original still has important economic rights that he or she is entitled to exercise. Creators of UGC who seek to exploit their work commercially still have the option of negotiating these rights,55 and the copyright holder may agree to or decline to license the work.

  • 56 For example, in the US case Rogers v Koons, 960 F (2d) 301 (1992), a case that involved the adapta (...)
  • 57 In eBay, Inc. v MercExchange L.L.C., 547 US 388, 126 S Ct 1837 (2006) the US Supreme Court establi (...)

30It would be interesting to consider what the consequences might be for a user who chooses to commercially exploit her UGC without negotiating such rights, and who is sued for copyright infringement as a result. While the owner of copyright in the source work might seek an injunction to prevent the exploitation, injunctions are discretionary remedies. An accounting of profits might distinguish between those profits that were due to the use of the plaintiff’s work and those that were the result of the plaintiff’s own contributions.56 In other words, it is not a given that a court would entirely suppress the dissemination of a transformative work, or that it would reduce a defendant’s profits to zero.57 The contemporary approach of the Supreme Court of Canada to copyright issues and “users’ rights” reflects a copyright balance that places some limits on copyright owners’ rights in the interest of the generation of new works and their broad dissemination. Such an approach might lead to some novel approaches to remedies in such cases.

  • 58 Trosow et al, supra note 9 at 39. Note that uncertainty as to the scope of the fair dealing except (...)
  • 59 Bill C-11, supra note 2, s 29.21(1)(d).

31Paragraph 29.21(1)(d) presents the most significant limitation on UGC. Its significance lies in its open-ended and thus unpredictable nature. Exceptions to infringement that have such an open-ended character tend to be problematic because the user of the work can only really know if her use is legitimate after costly litigation.58 In this case, the use and/or dissemination of UGC is legitimate only if it “does not have a substantial adverse effect, financial or otherwise, on the exploitation or potential exploitation of the existing work…”.59 A non-commercial use might not have a substantial financial effect on the work it has transformed, but the use of the language “or otherwise” to qualify the effect leaves open a potentially broad range of impacts that might be taken into account. A rights holder might argue that the use diminishes the cultural impact or significance of the work by trivializing it, or perhaps it tarnishes the reputation of the work as, for example, where fan fiction strays into the pornographic. The alleged adverse effect (financial or otherwise) may be with respect not just to the current work but also the potential exploitation of the existing work. Thus, for example, it might be possible for a rights holder to argue that there is a market for the licensing of transformative or derivative works that is being undermined by, for example, fan fiction.

  • 60 See Reynolds, supra note 21 at 665-66. Writing prior to the Bill C-11 amendments, Reynolds argues (...)

32The rather open-ended nature of this limitation on the UGC exception makes the scope of the exception considerably more uncertain. It will likely also have the effect of limiting UGC that is on the more creative and transformative end of the spectrum. Home videos that incorporate music as a background are much less likely to be problematic than fan fiction that takes on a life of its own, even if it is non-commercial. It is not clear whether a more robust UGC exception was an option; it is remarkable enough that such an exception made it into the Bill. It is also possible to argue that the current formulation reaches an acceptable balance; if a transformative use is likely to have a substantial impact on the original work, perhaps it is a use for which a licence should be negotiated between the parties. This may certainly be the case where the adverse impact is merely financial. More problematic, however, would be situations where the rights holder objects to the “adverse effect” caused by UGC that expresses a different morality or politics than the original.60

  • 61 The moral rights provisions are found in the Copyright Act, RSC 1985, c C-42, ss 14.1, 14.2, 28.1 (...)
  • 62 Reynolds, supra note 21 at 666.

33This raises, of course, the issue of the relationship of the moral rights provisions to the UGC exception. The exception provides that UGC is not an infringement of copyright, within its specified boundaries. If moral rights provisions continue to apply, then an author might well object to UGC on the basis that it violates her moral rights. Thus it might be argued that the UGC is a modification or mutilation of her work to the prejudice of her honour or reputation.61 Indeed, even non-commercial UGC may reach a very broad audience, a fact that might magnify any such reputational harm. In some circumstances, the copyright owner might also argue that their modified work is used in support of a cause or institution that impacts negatively on the honour or reputation of the author.62 The applicability of moral rights would supplement the limitation in paragraph 29.21(1)(d). While that paragraph limits uses that have an adverse effect on the source work, moral rights would constrain those uses having an adverse effect on the author’s reputation.

5. UGC and Fair Dealing

  • 63 Bill C-11, supra note 2, s 29.
  • 64 Bell, supra note 15 at paras 11, 27, citing CCH, supra note 32 at para 48.
  • 65 Bell, supra note 15 at para 41.

34Bill C-11 expands the categories for fair dealing in a way that makes the intersection of the UGC exception and fair dealing more likely. Once confined to research, private study, criticism, comment and news reporting, Bill C-11 adds “education” and “parody and satire” to the acceptable bases for fair dealing.63 These changes come at a time when the Supreme Court of Canada has sent a strong message about the broad and liberal interpretation owed to the fair dealing exceptions. In both Alberta (Education) and Bell, the Supreme Court of Canada confirmed that fair dealing must not be interpreted restrictively,64 and that it is a user’s right.65

  • 66 Reynolds, supra note 21 at 664, argues that many music mashups could be justified as “fair” dealin (...)
  • 67 The potentially broad scope for considering various types of online content to be journalism is di (...)
  • 68 Alberta (Education), supra note 37. The majority of the Court stated that “the word ‘private’ in ‘ (...)
  • 69 CCH, supra note 32 at para 49.

35Not all UGC will fit within the fair dealing exceptions, although much UGC may well do so.66 For example, UGC that is parodic or satirical in nature may also qualify as fair dealing. Similarly, there is a great deal of UGC that may fit within a broadly interpreted exception for “news reporting” or for “criticism or comment”.67 Other UGC might be characterized as being for the very broad purposes of “education”. Indeed, given the Supreme Court of Canada’s expansive interpretation of “private study” in Alberta (Education),68 it should be expected that the exception for education will cover a very broad range of activity. The question then becomes whether a creator of UGC must rely upon the UGC exception or may also rely upon fair dealing to justify their use of the work. In CCH, the Supreme Court of Canada ruled that the fair dealing exception was always available to users of works, notwithstanding any other exceptions that might be found in the Act and that might be specifically tailored to the type of user making use of the work.69 Presumably, then, the fair dealing exception is also available to the creator of UGC.

  • 70 Ibid at para 53, aff’g CCH Canadian Ltd. v Law Society of Upper Canada, 2002 FCA 187 at paras 150, (...)

36The fair dealing exception may be broader than the UGC exception in some respects. If the defendant’s dealing with the work falls into one of the categories of permitted uses, a court must then consider whether her dealing with the work was “fair”. Fairness is evaluated according to a series of criteria that explore the nature, extent and impact of the dealing in relation to the work. In CCH, the Chief Justice stated that: “[t]he following factors [must] be considered in assessing whether a dealing was fair: (1) the purpose of the dealing; (2) the character of the dealing; (3) the amount of the dealing; (4) alternatives to the dealing; (5) the nature of the work; and (6) the effect of the dealing on the work.”70

  • 71 CCH, supra note 32 at para 51; Alberta (Education), supra note 37 at para 19.
  • 72 510 US 569 (1994) <http://www.law.cornell.edu/supct/html/92-1292.ZS.html>.

37According to the Supreme Court of Canada, the commercial/noncommercial nature of the dealing is a relevant factor for consideration, but dealing with a work for commercial purposes is not necessarily unfair.71 Thus, UGC that is created or disseminated in a commercial context may not qualify for the UGC exception, but may nevertheless constitute fair dealing. This might be particularly important, for example, in the case of parodic or satirical works. A satirical song might receive radio airplay or be sold through online distribution channels. In the case of Campbell v Acuff-Rose,72 the US Supreme Court accepted that the defendants’ parody of a Roy Orbison song constituted fair use, notwithstanding the fact that it was commercially distributed.

  • 73 Century 21 Canada Limited Partnership v Rogers Communications Inc, 2011 BCSC 1196, 338 DLR (4th) 3 (...)

38On the flip side, the UGC exception might operate to exempt from copyright infringement some works that would otherwise not meet the fair dealing test established by the Supreme Court of Canada. One of the factors for consideration in the fair dealing analysis is the nature of the dealing. Under this factor, one can consider the manner in which the work was reproduced or distributed. It might well be that in many circumstances, the dissemination of the defendant’s modified work online would mitigate against a finding of fair dealing.73 In the UGC exception, however, it is expressly contemplated that non-commercial UGC may be disseminated in online fora. Of course, the Internet-based dissemination of a work would be only one of the factors for the Court to balance in a fair dealing analysis. Now that the UGC exception has been added to the Act, a court might well draw from this the proposition that the online non-commercial distribution of a transformative dealing with a work is presumptively fair.

Conclusion

39This chapter has offered an interpretation of the scope of the UGC exception in light of the recent copyright jurisprudence of the Supreme Court of Canada, and in the context of other principles of Canadian copyright law. The UGC exception is a concession to the dramatically changing environment for both the creation and dissemination of works, and attempts to balance competing rights. Although it may dismay rights holders, the UGC horse has long since left the proverbial stable. We have sufficient copyright law for the industrial age; it is time now to grapple with law for the digital age. The UGC exception may have its weaknesses and may provoke some unintended consequences; nevertheless, it serves as an overt acknowledgement that the game has changed—and with it, so must the rules.

Notes

2 Bill C-11, An Act to amend the Copyright Act, 1st Sess, 41st Parl, 2011. At the time of writing, the Bill has been passed into law, but its coming into effect has yet to be proclaimed. This is a matter of some concern. It is possible that ongoing industry opposition to provisions such as the UGC exception and expanded fair dealing is delaying and may derail the coming into effect of these amendments. They cannot, however, derail the fundamental transformations that have made addressing UGC and its relationship to copyright law essential.

3 Note that the OECD has used the term “user-created content” or “UCC” to describe the same phenomenon. See: OECD Directorate for Science, Technology and Industry, Committee for Information, Computer, and Communications Policy, “Participative Web: User-Created Content” (12 April 2007) <http://www.oecd.org/internet/interneteconomy/38393115.pdf>.

4 Daniel J Gervais, “The Tangled Web of UGC: Making Copyright Sense of User-Generated Content” (2009) 11 Vand J Ent & Tech L 841 at 842 <www.jetlaw.org/wp-content/journal-pdfs/Gervais.pdf>. See also Steven Hetcher, “User-Generated Content and the Future of Copyright: Part One – Investiture of Ownership” (2007-08) 10 Vand J Ent & Tech L 863.

5 Gervais, supra note 4 at 842. Note that the UGC provision in Bill C-11, supra note 2, is not limited to digital works and digital dissemination. Hetcher, supra note 4 at 873, also argues that digitization is a key element of UGC.

6 Debora Halbert, “Mass Culture and the Culture of the Masses: A Manifest for User-Generated Rights” (2009) 11 Vand J Ent & Tech L 921 at 924 <www.jetlaw.org/wp-content/journal-pdfs/Halbert.pdf>.

7 See e.g. Yochai Benkler, The Wealth of Networks: How Social Production Transforms Markets and Freedom (New Haven: Yale University Press, 2006) <http://www.benkler.org/Benkler_Wealth_Of_Networks.pdf>; Cass R Sunstein, Infotopia: How Many Minds Produce Knowledge (Oxford: Oxford University Press, 2006); Mary WS Wong, “‘Transformative’ User-Generated Content in Copyright Law: Infringing Derivative Works or Fair Use?” (2009) 11 Vand J Ent & Tech L 1076 at 1077.

8 For example, in Rogers Communications Inc. v Society of Composers, Authors and Music Publishers of Canada, 2012 SCC 35 at para 30, [2012] 2 SCR 283 <http://www.canlii.org/en/ca/scc/doc/2012/2012scc35/2012scc35.html> [Rogers], the Court emphasizes the need to look beyond the “technicalities of the alleged infringer’s chosen method of operation”, and to focus on the substance rather than the form of online activities.

9 Samuel E Trosow et al, “Mobilizing User-Generated Content for Canada’s Digital Advantage” (1 December 2010) <http://ir.lib.uwo.ca/fimspub/21/>.

10 In the context of Volunteered Geographic Information (VGI), a subset of UGC, see, for example: Christopher C Miller, “A beast in the field: The Google Maps mashup as GIS/2” (2006) 41:3 Cartographica 187 <http://utpjournals.metapress.com/content/j0l053012262n779/fulltext.pdf>; Michael F Goodchild, “Citizens as sensors: The world of volunteered geography” (2007) 69:4 GeoJournal 211; Sarah Elwood, “Volunteered Geographic Information: Key Questions, Concepts and Methods to Guide Emerging Research and Practice” (2008) 72 GeoJournal 133.

11 Gervais, supra note 4.

12 This type of content could include reviews of products or services, blog postings and photographs uploaded to social networking sites. (See e.g. Len Glickman and Jessica Fingerhut, “User-Generated Content: Recent Developments in Canada and the U.S.” (2011-12) 12:6 IECLC 49 at 49).

13 This would be new content created through the modification of existing works.

14 Note that others have argued as well that user-copied content takes on a new significance in certain contexts, and can thus also pose challenges for copyright law and policy. For example, the copying of copyright-protected content for viral dissemination on the Internet may be a way in which important ideas are shared more broadly than the copyright owner might wish (see e.g. Halbert, supra note 6 at 937-38). Such issues are interesting and important, but are beyond the immediate scope of this chapter.

15 Society of Composers, Authors and Music Publishers of Canada v Bell Canada, 2012 SCC 36 at para 34, [2012] 2 SCR 326 <http://scc.lexum.org/decisia-scc-csc/scc-csc/scc-csc/en/item/9996/index.do> [Bell].

16 See e.g. Ian Chuang, “Be Wary of Adding Your Own Soundtrack: Lenz v Universal and How the Fair Use Policy Should be Applied to User Generated Content” (2008-09) 29 Loy LA Ent L Rev 163 at 167-68; Halbert, supra note 6 at 926. Hetcher, supra note 4 at 866, refers to major UGC disseminators as “mega sites”.

17 Banks & Humphreys argue that this new environment is profoundly transformative of traditional economic relations: John Banks & Sal Humphreys, “The Labour of User Co-Creators: Emergent Social Network Markets?” (2008) 14 Convergence 401 at 402-03. See also Benkler, supra note 7.

18 The term “YouTube exception” became common in the Blogosphere. See e.g. Bob Tarantino, “User-Generated Content: Liabilities and Prospects – Threedux”, Entertainment and Media Law website (4 June 2012) <http://www.entertainmentmedialawsignal.com/2012/06/articles/copyright/usergeneratedcontent-liabilities-and-prospects-threedux>; Barry Sookman, “Separating Facts from Hype about C-32”, Barry Sookman website (27 September 2010) <http://www.barrysookman.com/2010/09/27/separating-facts-from-hype-about-c-32/>. See also Daniel Gervais, “User-Generated Content and Music File-Sharing: A Look at Some of the More Interesting Aspects of Bill C-32” in Michael Geist, ed, From “Radical Extremism” to “Balanced Copyright”: Canadian Copyright Digital Agenda (Toronto: Irwin Law, 2010) 447 at 448.

19 Bill C-32, An Act to Amend the Copyright Act, 3d Sess, 40th Parl, 2010 (first reading 2 June 2010) <http://www.parl.gc.ca/HousePublications/Publication.aspx?Docid=4580265>.

20 This was the factual context for the high-profile US case of Lenz v Universal Music Corp., 572 F Supp (2d) 1150 at 1151 (ND Cal 2008). The plaintiff Stephanie Lenz successfully sued the defendant copyright owner after it demanded that YouTube take down a very short video she had posted which featured her toddler dancing to a song by the artist Prince. The Court ruled that the defendant should have considered the doctrine of fair use prior to sending a takedown notice.

21 For a discussion of music mashups and copyright law, see Graham Reynolds, “A Stroke of Genius or Copyright Infringement? Mashups and Copyright in Canada” (2009) 6:3 SCRIPTed 639.

22 See generally Christina J Hayes, “Changing the Rules of the Game: How Video Game Publishers Are Embracing User-Generated Derivative Works” (2008) 21 Harv JL & Tech 567. Note that some video game makers expressly license their works for use in derivative works under specified conditions. This practice of licensing works for the making of derivative works is growing. Such licences take precedence over the basic UGC exception in the legislation. In the same vein, it should be noted that digital works made available under licence may specifically preclude their modification or use in the creation of derivative content.

23 See generally Aaron Schwabach, Fan Fiction and Copyright: Outsider Works and Intellectual Property Protection (Burlington, VT: Ashgate, 2011); Karen Hellekson & Kristina Busse, Fan Fiction and Fan Communities in the Age of the Internet: New Essays (Jefferson, NC: McFarland, 2006).

24 See e.g. Reina Y Arakji & Karl R Lang, “Digital Consumer Networks and Producer-Consumer Collaboration: Innovation and Product Development in the Video Game Industry” (2007) 24:2 Journal of Management Information Systems 195; Hector Postigo, “Video Game Appropriation Through Modifications: Attitudes Concerning Intellectual Property Among Modders and Fans” (2008) 14:1 Convergence 59.

25 For a discussion of some of the copyright battles in this area see Teresa Scassa, “Copyright Reform and Fact-Based Works” in Michael Geist, ed, From “Radical Extremism” to “Balanced Copyright”: Canadian Copyright Digital Agenda (Toronto: Irwin Law, 2010) 571 at 586-88 <http://www.irwinlaw.com/pages/contentcommons/copyright-reform-and-fact-based-works---teresa-scassa>.

26 Such uses are generally permitted under open licences, but presumably even unlicensed data sets or government works could become part of UGC.

27 At the federal level in Canada, the government’s commitment to open data is resulting in an increase in the number of data sets being made available to the public under open licences. See: Government of Canada, Open Data <http://www.data.gc.ca/default.asp?lang=En&n=F9B7A1E3-1>. Similar open data portals have been created by the BC government (British Columbia Government, DataBC <http://www.data.gov.bc.ca/>), as well as by municipal governments. See City of Toronto, Toronto.ca/open <http://www1.toronto.ca/wps/portal/open_data/open_data_home?vgnextoid=b3886aa8cc819210VgnVCM10000067d60f89RCRD>.

28 Open Source licences that have been approved by OpenSource.org can be found at <http://opensource.org/licenses/index.html>.

29 See Creative Commons <http://www.creativecommons.org>.

30 See e.g. Open Data Commons <http://opendatacommons.org/>. Note that in addition to Open Data Commons, which offers template open data licences, a number of governments have developed their own open data licences. In Canada, see B.C. Government Open Data Licence <http://www.data.gov.bc.ca/dbc/admin/terms.page>; Open Data Canada, Licence Agreement <http://www.data.gc.ca/default.asp?lang=En&n=46D15882-1>.

31 Théberge v Galerie d’Art du Petit Champlain inc., 2002 SCC 34 at para 30, [2002] 2 SCR 336 <http://www.canlii.org/en/ca/scc/doc/2002/2002scc34/2002scc34.html> [Théberge].

32 CCH Canadian Ltd. v Law Society of Upper Canada, 2004 SCC 13 at para 12, [2004] 1 SCR 339 <http://www.canlii.org/en/ca/scc/doc/2004/2004scc13/2004scc13.html> [CCH].

33 Bell, supra note 15 at para 11.

34 Ibid at para 10.

35 The UGC exception reads:
29.21 (1) It is not an infringement of copyright for an individual to use an existing work or other subject-matter or copy of one, which has been published or otherwise made available to the public, in the creation of a new work or other subject-matter in which copyright subsists and for the individual—or, with the individual’s authorization, a member of their household—to use the new work or other subject-matter or to authorize an intermediary to disseminate it, if
(a) the use of, or the authorization to disseminate, the new work or other subject-matter is done solely for non-commercial purposes;
(b) the source—and, if given in the source, the name of the author, performer, maker or broadcaster—of the existing work or other subject-matter or copy of it are mentioned, if it is reasonable in the circumstances to do so;
(c) the individual had reasonable grounds to believe that the existing work or other subject-matter or copy of it, as the case may be, was not infringing copyright; and
(d) the use of, or the authorization to disseminate, the new work or other subject-matter does not have a substantial adverse effect, financial or otherwise, on the exploitation or potential exploitation of the existing work or other subject-matter—or copy of it—or on an existing or potential market for it, including that the new work or other subject-matter is not a substitute for the existing one.
(2) The following definitions apply in subsection (1).
“intermediary” means a person or entity who regularly provides space or means for works or other subject-matter to be enjoyed by the public.
“use” means to do anything that by this Act the owner of the copyright has the sole right to do, other than the right to authorize anything.

36 See e.g. Allen v Toronto Star Newspaper Ltd (1997), 36 OR (3d) 201, 78 CPR (3d) 115 (Gen Div).

37 Alberta (Education) v Canadian Copyright Licensing Agency (Access Copyright), 2012 SCC 37, [2012] 2 SCR 345 <http://www.canlii.org/en/ca/sccdoc/2012/2012scc37/2012scc37.html> [Alberta (Education)].

38 Bell, supra note 15.

39 This is the case, for example, with Google’s YouTube or with Facebook.

40 Scafadi offers numerous examples of cultural appropriation: Susan Scafadi, Who Owns Culture? Appropriation and Authenticity in American Law (Piscataway, NJ: Rutgers University Press, 2005) at 9-11. Kembrew McLeod offers a detailed discussion of cultural creation through appropriation and to the large-scale resistance to such practices by copyright holders. See Kembrew McLeod, Freedom of Expression: Overzealous Copyright Bozos and other Enemies of Creativity (New York: Doubleday, 2005) <ir.uiowa.edu/cgi/viewcontent.cgi?article=1008&context=commstud_pubs>.

41 See e.g. Trosow et al, supra note 9 at 10; Chuang, supra note 16 at 167; Gervais, supra note 4 at 842.

42 Hetcher, supra note 4 at 871, emphasizes the amateur status of the “user” in UGC.

43 Banks & Humphreys, supra note 17 argue that user-generated content (what they refer to as consumer co-creation) is having a transformative effect on the economy and on business relationships. Certainly, the sudden push toward open government data in Canada and other comparable nations is rooted in a belief that such a move will stimulate innovation and knowledge creation, not just by established industry players, but by a much broader range of actors.

44 See, for example, the collection of essays on the concept of authorship in Martha Woodmansee & Peter Jaszi, eds, The Construction of Authorship: Textual Appropriation in Law and Literature (Durham, NC: Duke University Press, 2006).

45 Boon argues that mimesis is at the heart of culture. See: Marcus Boon, In Praise of Copying (Cambridge, MA: Harvard University Press, 2010) <www.hup.harvard.edu/features/boon/In-Praise-of-Copying-by-Marcus-Boon-HUP-free-full-text.pdf>.

46 Of course, the creator of UGC may also draw upon content in the public domain, but does not need a copyright infringement exception to do so.

47 For a discussion of this phenomenon, see Teresa Scassa, “Legal Issues with Volunteered Geographic Information”, Canadian Geographer (September 2012), DOI: 10.1111/j.1541-0064.2012.00444.x <http://onlinelibrary.wiley.com/doi/10.1111/j.1541-0064.2012.00444.x/pdf>.

48 Copyright in a compilation of facts lies only in the original selection or arrangement of the facts; the facts themselves are in the public domain. See: Tele-Direct (Publications) Inc. v American Business Information Inc. (1996), 74 CPR (3d) 72 (FCTD) <http://www.canlii.org/en/ca/fca/doc/1997/1997canlii6378/1997canlii6378.html>, aff’d [1998] 2 FC 22, (1997), 76 CPR (3d) 296 (FCA) at 304, leave to appeal to SCC refused, [1998] 1 SCR xv. See also Scassa, supra note 25.

49 Bill C-11, supra note 2, s 29.21(1)(b).

50 Wong notes that the low threshold for originality means that much UGC will itself be work in which copyright subsists, which in turn imposes a further layer of copyright protection. This may be antithetical to a broader culture of sharing. See Wong, supra note 7 at 1091.

51 CCH, supra note 32 at para 16.

52 Note that the new exception for private copies in Bill C-11, supra note 2, s 29.22 would not permit the creation of a mix tape that was created for the purpose of giving it to a friend or family member. However, if the mix tape is considered to be a compilation resulting from an exercise in skill and judgment, then presumably the creator of this recording could use and disseminate it.

53 An article by Steven Hetcher raises the interesting question of what happens when the fine print of the end user licence agreement with a major disseminator of UGC provides that the uploading of UGC gives the disseminator an exclusive licence to exploit the uploaded work in a variety of ways. These ways may include performing acts (such as reproducing the work) which under the terms of the UGC exception, the “user” is not permitted to authorize. See Steven Hetcher, “User-Generated Content and the Future of Copyright: Part Two – Agreements Between Users and Mega Sites” (2008) 24:4 Santa Clara Computer High Tech LJ 829 at 847 <http://digitalcommons.law.scu.edu/chtlj/vol24/iss4/3>.

54 It is likely, in fact, that the unauthorized amateur translator would qualify for this exception: a translation makes use of another original work in order to create a new work in which copyright subsists.

55 Though note the complexities and cost of licensing may simply render this impossible. See e.g. Reynolds, supra note 21 at 645-47.

56 For example, in the US case Rogers v Koons, 960 F (2d) 301 (1992), a case that involved the adaptation of the plaintiff’s photograph into large, parodic and more lucrative sculptures, the Court observed that it was open to a defendant to establish that a certain portion of the profits were due to their own efforts or notoriety, and that portion could be retained by the defendant. Similarly, in the accounting of profits in a patent law case that went to the Supreme Court of Canada, the Court indicated that only those profits that were due to the actual use of the properties of the plaintiff’s genetically modified seeds would be due to the plaintiffs. See: Monsanto Canada Inc. v Schmeiser, 2004 SCC 34, [2004] 1 SCR 902 <http://www.canlii.org/en/ca/scc/doc/2004/2004scc34/2004scc34.html>.

57 In eBay, Inc. v MercExchange L.L.C., 547 US 388, 126 S Ct 1837 (2006) the US Supreme Court established a new test for the issuance of a permanent injunction in patent cases. In Salinger v Colting, 607 F (3d) 68 at 79 (2d Cir 2010), the Court ruled that this test was also applicable in copyright infringement cases. The court stated: “at minimum, we must consider whether ‘irreparable injury is likely in the absence of an injunction,’ we must ‘balance the competing claims of injury,’ and we must ‘pay particular regard for the public consequences in employing the extraordinary remedy of injunction’.” While the test does not by any means rule out the remedy of a permanent injunction in the case of an infringing but transformative work, it does direct courts to consider a broad range of factors, including freedom of expression values and the public interest.

58 Trosow et al, supra note 9 at 39. Note that uncertainty as to the scope of the fair dealing exception “is a material barrier in the further use and production of UGC”. See also Chuang, supra note 16 at 166. Tushnet describes attempts to develop normative frameworks for UGC as a means of making more predictable the boundaries of legitimate and illegitimate uses of works in the U.S. fair use context. See Rebecca Tushnet, “User-Generated Discontent: Transformation in Practice” (2007-08) 31 Colum JL & Arts 497 <http://scholarship.law.georgetown.edu/fwps_papers/66>.

59 Bill C-11, supra note 2, s 29.21(1)(d).

60 See Reynolds, supra note 21 at 665-66. Writing prior to the Bill C-11 amendments, Reynolds argues that some mashups will violate the moral right of attribution. Interestingly enough, the UGC exception only requires attribution “if it is reasonable in the circumstances to do so” (Bill C-11, supra note 2, s 29.21(1) (b)). In discussing the use of both trademark law and copyright law to protect rights in intellectual property linked to Anne of Green Gables, Slane argues that “the heirs of L.M. Montgomery were entirely within their right to protect what they thought were the wishes of their ancestor by preserving the innocence associated with the novel’s Anne Shirley character in their licensing endeavours during the term of copyright.” More broadly, however, Slane is critical of the use of intellectual property to block the free public use of works in the public domain. Andrea Slane, “Guarding a Public Icon: Concurrent Intellectual Property Regimes and the Perpetual Protection of Anne of Green Gables in Canada” (2011) 56:4 McGill LJ 1011 at 1037 <lawjournal.mcgill.ca/documents//56/4/Slane.pdf>.

61 The moral rights provisions are found in the Copyright Act, RSC 1985, c C-42, ss 14.1, 14.2, 28.1 and 28.2 <http://laws.justice.gc.ca/en/C-42/>.

62 Reynolds, supra note 21 at 666.

63 Bill C-11, supra note 2, s 29.

64 Bell, supra note 15 at paras 11, 27, citing CCH, supra note 32 at para 48.

65 Bell, supra note 15 at para 41.

66 Reynolds, supra note 21 at 664, argues that many music mashups could be justified as “fair” dealing, but notes that the narrow purposes for fair dealing (as they stand prior to amendment by Bill C-11) may limit the ability to rely upon fair dealing.

67 The potentially broad scope for considering various types of online content to be journalism is discussed in the context of data protection laws in Teresa Scassa, “Journalistic Purposes and Private Sector Data Protection Legislation: Blogs, Tweets, and Information Maps” (2010) 35 Queen’s LJ 733.

68 Alberta (Education), supra note 37. The majority of the Court stated that “the word ‘private’ in ‘private study’ should not be understood as requiring users to view copyrighted works in splendid isolation. Studying and learning are essentially personal endeavours, whether they are engaged in with others or in solitude” (at para 27). The majority was critical of the approach of the Copyright Board, which focussed “on the geography of classroom instruction rather than on the concept of studying”.

69 CCH, supra note 32 at para 49.

70 Ibid at para 53, aff’g CCH Canadian Ltd. v Law Society of Upper Canada, 2002 FCA 187 at paras 150, 212, DLR (4th) 385, 18 CPR (4th) 161, 224 FTR 111 <http://www.canlii.org/en/ca/fca/doc/2002/2002fca187/2002fca187.html>. In identifying these factors, Linden J looked to the UK and US experiences. The reliance upon US law, particularly where the American fair use defence has always been considered much broader than fair dealing, is interesting and suggests perhaps the beginning of a more flexible approach to this defence.

71 CCH, supra note 32 at para 51; Alberta (Education), supra note 37 at para 19.

72 510 US 569 (1994) <http://www.law.cornell.edu/supct/html/92-1292.ZS.html>.

73 Century 21 Canada Limited Partnership v Rogers Communications Inc, 2011 BCSC 1196, 338 DLR (4th) 32 <http://www.canlii.org/en/bc/bcsc/doc/2011/2011bcsc1196/2011bcsc1196.html>.

Auteur

Canada Research Chair in Information Law at the University of Ottawa. She is author of the book Canadian Trademark Law (LexisNexis, 2010) and co-author of Electronic Commerce and Internet Law in Canada (CCH Canadian Ltd., 2012)

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