Teresa Scassa - Blog

A recent US copyright law decision addresses one aspect of the question of how copyright law applies to documents that are submitted as part of public processes – in this case, court proceedings. These issues have cropped up in Canada in a couple of fairly recent instances. For example, there is an ongoing class action lawsuit launched by lawyers in private practice who object to the defendant’s inclusion of court documents authored by lawyers into their commercial products without consent or compensation. Another Canadian court refused to certify a class action law suit on behalf of land surveyors who objected to the inclusion of their land surveys into an electronic land registry database without licence or compensation. Although the class was not certified, the court did offer some interesting views regarding ownership of copyright in the documents.

The US decision, Unclaimed Property Recovery Service Inc. v. Kaplan comes from the Court of Appeals, Second Circuit. In this case, the plaintiffs had previously been involved with a class action law suit, for which they had prepared the first class action complaint and compiled the accompanying exhibits. Kaplan was the attorney representing the class. He signed and filed the documents on behalf of the class. When the complaint was dismissed as being outside the prescribed delays, he filed an appeal. Before the appeal was decided, Kaplan and the plaintiffs had a falling out. The plaintiffs retained new lawyers; Kaplan continued on as attorney of record for the class action law suit.

The appeal proceeded and was eventually successful, and leave was granted to file an amended complaint, which was done. The amended complaint was based upon the first complaint and its accompanying documents, and indeed “[s]ignificant portions of the Second Complaint and Second Exhibits were identical to portions of the First Complaint and First Exhibits.” Meanwhile, the plaintiffs registered copyrights in these documents and proceeded to sue Kaplan for having infringed their copyrights in the complaint and exhibits. They sought both an injunction and damages. The district court dismissed the plaintiffs’ action and it proceed on to the Court of Appeals, which unanimously dismissed the appeal.

The Court of Appeals found that when a person who holds copyright in litigation documents authorizes a party to the litigation to make use of the documents, “such an authorization necessarily conveys, not only to the authorized party but to all present and future attorneys and to the court, an irrevocable authorization to use the document in the litigation thereafter.” The Court noted that any other outcome would jeopardize the litigation system. It noted that “[t]he courts could not thoroughly and fairly adjudicate a matter if suddenly in the midst of litigation the parties lost the right to give the court copies of documents already used in the litigation that support their arguments.” It went on to find that the copyright holder who authorizes a party to use documents in litigation must know that as a consequence these documents may be reproduced and distributed for purposes related to that litigation. The Court added that in this context, “[t]he needs of the courts prevail over the copyright holder’s selfish interests, and the authorization becomes irrevocable as to the participants in the litigation for the purposes of the litigation.” The authorization would extend to incorporating all or part of the documents into an amended complaint, as happened in this case.

The Court also noted that to allow the interests of a copyright holder to trump those of parties to the litigation could lead to serious ethical consequences. For example, an attorney who drafts legal pleadings for a client could not invoke her copyright in these pleadings to limit their use without breaching her ethical obligations to that client. A lawyer should also not be able to use his copyright in documents to thwart a client’s attempt to change attorneys. Finally, the court noted that to accept the plaintiff’s arguments would hamper the authority of courts to manage their own affairs: a court order requiring parties to amend their pleadings should not run up against copyright claims in those pleadings.

The decision seems eminently sensible, but it does not resolve some of the other copyright issues that swirl around documents submitted as part of legal processes. For example, it does not address the issue raised in Waldman v. Thomson Reuters Corporation, which turns on whether copyright in documents that are part of a public court record can be asserted against a publisher that seeks to commercialize these documents – albeit in works aimed at assisting lawyers in their practice. The Second Circuit Appeals Court was careful to emphasize that their decision reached only to the particular facts of the case before them – the issue was whether copyright law could be used to prevent the class action plaintiffs from making use of documents which they had previously been authorized to use. The court noted: “We do not decide whether a party who is authorized to file a legal pleading in one case is also authorized to file it in others cases. We do not decide whether the parties to the litigation may use the pleading for other purposes unrelated to the litigation.” And, of course, they do not decide whether those pleadings, as part of the public record, can be used by others for their own purposes.

A recent decision of the Ontario Supreme Court offers a relatively rare glimpse into how copyright laws are applied to artistic works in Canada.

The plaintiff in this case, visual artist Malcolm Rains, painted a series of oil paintings over a period of 22 years. He calls this series the “Classical Series” and it currently comprises over 200 paintings. Each of these paintings is a still life of a sheet of crumpled paper against a particular background. The defendant is visual artist Lucian Bogdan Molea. In 2000, Molea began painting still lifes of crumpled paper. Rains brought suit against Molea, arguing that he had infringed his copyright in individual canvases, as well as in his series as a compilation.

Justice Chiappetta began her analysis by considering whether copyright subsisted in the individual canvasses painted by Rains and in the series. She found that the plaintiff’s canvasses met the standard of originality set out by the Supreme Court of Canada, notwithstanding the fact that the he “employed commonplace tropes used by painters for centuries”. The paintings emanated from Rains and were not copies of other works; they also reflected an exercise in skill and judgment that was more than trivial. She rejected the argument that the paintings amounted to an unprotectable merger of idea and expression. Justice Chiappetta noted that the idea was to paint a still life of a crumpled piece of paper; the expression of the idea was found in each individual painting. Recognizing copyright in the paintings did not give Rains a monopoly over the idea.

Although she found that each painting was protected by copyright, Justice Chiappetta reached a different conclusion with respect to the series. It was argued that the series was itself a distinct work, namely, a compilation. To be protected, a compilation must be an original expression that reflects an exercise of skill and judgment. In the case of the series of paintings, there was a concept, and a progression of canvases, but there was not the exercise of skill and judgment necessary to create a compilation. She explained: “There is no originality in the label itself, there is no skilful organizational aspect of the Classical Series that warrants protection for the series as a whole.” (at para 17) The paintings were not specifically selected and/or arranged as part of a collection; rather, the series was an open-ended and evolving category of works. Justice Chiappetta also rejected arguments that the series should be considered a compilation because it evokes a common feeling or “gestalt”. She stated: “it would be unwise to extend copyright protection to the visual perception of an artistic work, which is intangible and subjective.” (at para 22).

Having determined that copyright subsisted in the plaintiff’s individual paintings, Justice Chiappetta next considered whether Molea’s works infringed upon those copyrights. At the outset she dismissed any similarities between the works that were due to “common, long-established artistic techniques”. She also found that these similarities represented “a substantial part of the respective works.” (at para 30) She noted that painting crumpled paper “has been employed as a model since the French Academy was founded in 1664”. (at para 35) Painting it on a flat surface had similarly been around for at least 200 years. She also noted that the choice of certain colours for backgrounds also reflected long established practices. However, Justice Chiappetta was careful to clarify that she was not imposing a “novelty” standard for the protection of artworks under copyright law; rather, an artist: “cannot establish infringement by relying on his use of the noted unoriginal, commonplace, historical painting techniques. This would be akin to Shakespeare relying on his use of iambic pentameter in his writing or Drake relying on his use of 16 bars to a verse in his music.” (at para 40). In other words, the scope of protection available to copyright works must not be so broad as to give rightsholders a monopoly over techniques or practices. Ultimately she found that there were sufficient dissimilarities between the works to conclude that Rains’ canvasses were not the result of copyright infringement, but were original works in their own right.

In rejecting arguments that the defendant’s works might be mistaken for those of the plaintiff, Justice Chiappetta also made an important distinction between a confusion analysis and the analysis required for copyright infringement. A confusion analysis is more common in trademark law, where the question is whether the defendant’s trademark creates confusion in with that used by the plaintiff. Since a trademark is meant to serve as an indicator of source; misrepresenting one’s products or services as those of another is at the heart of trademark infringement. In the copyright context, however, it is not enough to argue that the work of one person is evocative of the work of another, absent proof of infringement. In the words of Justice Chiappetta: “it would be unwise to establish confusion as the test for colourable imitation of an artistic work. This test by its very nature lends itself to the subjective nuances of comparison [. . . ]”. (at para 44) “Confusion” in the context of art might be the result of the use of fairly similar techniques or methods. Further, copyright law allows for independent creation – the creation of even identical works can be tolerated so long as one was not the result of copying of the other.

Justice Chiappetta’s findings on the issue of access are also interesting. Because independent creation is always a theoretically possible explanation of substantially similar works, there must be some evidence that the defendant had access to the works that he or she allegedly copied. In this case, it was clear that Molea had previously seen a number of canvasses in Rains’ series. However, Justice Chiappetta found that this general access to a broad spectrum of work by Rains was not sufficient. Rather, it was necessary to show specific access to those particular works which were allegedly copied. She also refused to presume access on the basis that Molea had only commenced painting canvasses featuring crumpled paper after his move to Canada, when he would first have been exposed to the works of Rains. She found that Molea had provided a logical explanation for the evolution of his work over time.

This case is interesting in its application of copyright principles to the visual arts in a context where it is necessary to separate both concept and techniques and methods from the work itself. A finding of infringement in a case such as this would make it difficult for anyone to paint a crumpled piece of paper without fear of a finding of copyright infringement.