Posted by Ben Wong ● Partner: Paul Kallenbach
In the recent decision of Warman v Fournier [2012] FC 803, the Federal Court of Canada considered alleged copyright infringement for linking and posting content online. The decision has implications for user generated content on forums, blogs, social media and similar platforms.
The facts
The applicants alleged that Fournier, the operator of a website, http://www.freedominion.com/ (Free Dominion), infringed their copyright in three works. Free Dominion is an online political news website that can be accessed by members of the public to discuss political issues. The alleged infringements relate to an article known as the 'Kay Work' and a photograph known as the 'Barrera Work'. Sections of the Kay Work were posted on the Free Dominion website. The photograph was not posted on the website, but rather, a hyperlink to the photograph appeared on the website.
Substantial part of the Kay Work?
In relation to the Kay Work, the Court was concerned with whether Free Dominion reproduced a 'substantial part' of the work.
Section 3(1) of the Canadian Copyright Act, RSC, 1985 provides that a copyright owner has the exclusive right to reproduce any 'substantial part' of the work. Assessing whether a substantial part was taken involves a qualitative, rather than a quantitative analysis. The Court held that, quantitatively, the reproduction consisted of less than half of the work. Qualitatively, the court concluded that the original expression of the author was not reproduced. Free Dominion did not 'use' the subject-matter of the work in a similar fashion to the applicant. Instead the reproduction was used as a basis for a highly critical article about the applicant. The Court also found that the excerpts were not taken in order for Free Dominion to save time and effort. Instead, the purpose was for users to refer to the facts in the excerpts and to discuss them in the forum.
Copyright laws in Canada and Australia both provide for the exclusive right for the copyright owner to reproduce any 'substantial part' of a work. For the purposes of infringement, the courts in both jurisdictions consider that the assessment of 'substantial part' involves a qualitative, rather than a quantitative analysis. Under Canadian law, the qualitative analysis involves looking at whether the infringer took the proper subject matter of the work, and used it in the same or similar fashion as the copyright author. Hence, this is a question of whether the subject matter (which could be characterised as an idea) is expressed in a similar way to the copyrighted work.
By contrast, in Australia, the 'substantial part' analysis revolves around identifying the quality of the particular form of original expression of the taken part. This primarily involves assessing the originality of the copyrighted work. In EMI Songs Australia Pty Ltd v Larrikin Music Publishing Pty Ltd (2011) 191 FCR 444, the Australian Federal Court's decision of infringement by Men at Work, rested on the originality of the copyright work, the Australia folk song 'Kookaburra'. The Federal Court found that the famous Kookaburra riff, which was reproduced in Men at Work's song 'Down Under', was original enough to constitute a substantial part of the folk song.
Under Australian law, the degree of skill and labour in producing the work may be relevant, but the real question is whether it is directed to the originality of the particular form of expression. The Australian Copyright Act protects the expression of ideas, not the exercise of skill and labour alone. According to the High Court in IceTV Pty Ltd v Nine Network Australia Pty Ltd (2009) 239 CLR 458 (IceTV), the 'more simple or lacking in substantial originality the copyright work, the greater the degree of taking will be needed before the substantial part test is satisfied'.
The Free Dominion case also shows that Canadian law emphasises the motive of the alleged infringer, in particular, whether the infringer intentionally appropriated the copyright owner's work to save time and effort ('animo furandi'). Australian law also looks to whether this particular motive is present. The High Court in IceTV noted that if the purposes of the copyright owner and alleged infringer are different, then it is less likely that a substantial part of the copyrighted work is taken.
Fair dealing defence
The Canadian Court also concluded that even if there were an infringement of the Kay Work, Free Dominion's reproduction constituted fair dealing for the purposes of news reporting under the Copyright Act. The Court held that the amount of dealing was limited, as the reproduction only constituted facts with no commentary from the original author. Moreover, the Court found the effect of the dealing was not adverse to the copyright owner, as Free Dominion was not competing with the applicant's use of the Kay Work and it did not seek to publish it.
The fair dealing defence to infringement for the purposes of news reporting is available under Australian law. Australian courts have held that fairness should be judged objectively, and that the dealing must be fair and genuine for the relevant purpose. The Canadian and English courts recognise that fair dealing is not a situation whereby the infringer advances their own competing commercial purposes at the expense of the copyright owner. In contrast, Australian courts have yet to accept this interpretation of fair dealing.
The news reporting exception also requires the alleged infringer to provide sufficient acknowledgement of the work. An acknowledgment requirement similarly applies under Canadian law, with the Court in the Free Dominion case finding that the website had mentioned the source and author, therefore satisfying the requirements for the defence.
Infringing copyright through hyperlinks?
The Candian Court dismissed the claim in relation to the Barrera Work. It found that as the photograph was posted on a website accessible to the public, the applicant had authorised the communication of the photograph.
The Canadian decision shows that providing hyperlinks to copyright materials may not constitute unauthorised communication (and thus infringement). However, the significant point was that the copyrighted material was made freely available to the public on the internet by the owner of the photograph.
The Australian courts have not considered an analogous case in relation to the copyright owner making their material publicly available on the internet.
Rather, in Cooper v Universal Music Australia Pty Ltd (2006) 156 FCR 380, the Federal Court considered the status of unauthorised hyperlinks. The Court in Cooper considered unauthorised copying of sound recordings (colloquially characterised as 'illegal downloads'), and more specifically, a website run by Mr Cooper that contained many hundreds of hyperlinks to mp3 (music) files stored on remote websites. Once clicked, the relevant mp3 file was transmitted to the user's computer. In contrast to the facts in Warman, these mp3 files were not made publicly available by the copyright owners, nor did the owners authorise anyone to make those files available on the internet. The Court found that Mr Cooper had infringed the record companies’ copyright by authorising internet users to copy sound recordings, and by authorising remote websites to communicate those sound recordings to the public.
