Journal of Intellectual Property Law and Practice Advance Access published May 13, 2009

Journal of Intellectual Property Law & Practice, 2009

Practice Point

Parody as fair dealing in Canada: a guide for lawyers and judges

Emir Aly Crowne Mohammed^*

The objective

On 24 November 2008, the Supreme Court of British Columbia struck out the defences of parody and freedom of expression, inter alia, from the defendant's amended statement of defence, in an action for passing off, injurious falsehood, copyright, and trade mark infringement arising from a fake, parodied edition of the Vancouver Sun newspaper.¹ This edition was intended to demonstrate the 'strong pro-Israel bias'² in the Vancouver Sun (and other newspapers owned by Canwest Mediaworks Publications Inc.). Of particular interest to the aims of this article was Master Donaldson's fleeting consideration of freedom of expression and parody as defences to copyright infringement. Master Donaldson cited the decision in Cie générale des établissements Michelin—Michelin & Cie v National Automobile, Aerospace, Transportation and General Workers Union of Canada (CAW—Canada)³ as denying both freedom of expression⁴ and parody⁵ as applicable in copyright infringement matters.

This paper seeks to provide a guide to lawyers (and judges) in crafting a defence of parody. The comparative aspects of the parody defence have been omitted on the basis that Canadian law already provides for such a defence.⁶ The author relies on recent Charter⁷ jurisprudence,⁸ and the Supreme Court of Canada's decision in CCH Canadian Ltd v Law Society of Upper Canada,⁹ to demonstrate that the narrow decision in Michelin can no longer be relied upon as 'good law'. Simply put, copyright law in Canada now recognizes a defence of parody.¹⁰

Parody as a form of fair dealing

In CCH, the Supreme Court of Canada gave detailed consideration to the fair dealing provisions of Canada's Copyright Act,¹¹ which provide:

Chief Justice McLachlin stated that the fair dealing provisions under the Act, research, private study, criticism, review, or news reporting,

should not be given a restrictive interpretation or this could result in the undue restriction of users' rights… courts should attempt to make an objective assessment of the user/defendant's real purpose or motive in using the copyrighted work.¹³

Drawing upon Lord Denning's criteria in Hubbard v Vosper,¹⁴ Chief Justice McLachlin stated that the following factors provide a useful analytical framework for determining whether the use of a work is fair: (i) the purpose of the dealing, (ii) the character of the dealing, (iii) the amount of the dealing, (iv) alternatives to the dealing, (v) the nature of the work, and (vi) the effect of the dealing on the work.

Before considering whether the use of a copyright work is 'fair', the work must fit into one or more of the fair dealing categories of research, private study, criticism, review, or news reporting. Parody can be defined as

a writing in which the language and style of an author or work is closely imitated for comic effect or in ridicule often with certain peculiarities greatly heightened or exaggerated… [or] a literary style characterized by the reproduction of stylistic peculiarities of an author or work for comic effect or in ridicule.¹⁵

The central feature of any parody is the use of humour or ridicule to point out some particular feature or 'peculiarity' of the original work.

A parody, whether for humour or ridicule, is therefore inherently critical in nature. If so, it is clearly a form of 'criticism' under the Act¹⁶ if one accepts that there is no parody that does not (implicitly or explicitly) criticize the underlying work, or some feature(s) of it. If the fair dealing provisions of the Act are to be given a liberal interpretation,¹⁷ as the Chief Justice in CCH suggests, a parody must be seen as a form of criticism. This analysis is buttressed by the application of the Charter. In Hill v Church of Scientology of Toronto,¹⁸ the Supreme Court of Canada stated:

Section 2 (b) of the Charter provides a constitutionally guaranteed right of freedom of thought, belief, opinion, and expression. Accordingly application of this Charter value (to private litigants), and the ratio in CCH concerning the broad, liberal interpretation of the fair dealing provisions of the Act, must be 'read into' the common law to provide a defence of parody against allegations of copyright infringement. A parody embodies the very values that the Charter seeks to enshrine: namely freedom of thought, belief, opinion, and expression. And since all parodies, by necessity, must make use of the underlying work(s) they seek to parody,²⁰ it is imperative that the common law be interpreted to recognize the balance, and public interest, that the Act seeks to promote.²¹

Once parody is accepted as a form of fair dealing (ie 'the purpose of the dealing'), we must then engage the remainder of the analytical framework provided by Hubbard.²² In assessing the character of the dealing, one should remember that the purpose of parody is to provide a criticism, through humour or ridicule, of a particular work. Thus, all parodies will utilize the underlying work, and be critical of it (criticism by its very nature will usually be 'at odds' with the copyright owner). In CCH, Chief Justice McLachlin noted that 'custom or practice in a particular trade or industry'²³ may be relevant in assessing whether the character of the dealing was fair. Parodies that arise in the context of unionized labour disputes can usually be seen as 'fair' since unionized labour disputes are invariably tense and heated affairs. Unionized work environments serve to balance the usual inequities of most employment relationships and parodies within this context incentivize management to 'play fair' and negotiate in good faith. Other parodies that seek to provide political or social commentary should usually be 'fair' where there is a significant power imbalance between the 'parod-er' and the 'parod-ee'. In Canwest, the plaintiffs (the 'parod-ee') are media monopolists who implicitly tout the freedom of expression and the availability of information in their daily business lives. The defendant (the 'parod-er') in Canwest used that very media machinery to promote a countervailing view, seeking to reveal the hidden bias and agenda on the part of the plaintiff. It simply chose the medium of parody to express this form of criticism. A well-executed parody will often enjoy a wider audience, greater publicity, and more longevity than 'ordinary' criticism. The societal importance of this should not be underestimated in assessing a parody's fairness.

A parody will always have to borrow a certain amount of material from the underlying work(s). The amount of such dealing will always vary on the facts

A parody will always have to borrow a certain amount of material from the underlying work(s). The amount of such dealing will always vary on the facts. Courts should be guided by the reason(s) for the amount taken. Has the parody borrowed a reasonable amount of underlying material to give effect to the parody? In other words, there is a reasonable spectrum of copyright material that can be borrowed to make a parody effective. If the bounds of this spectrum have not been exceeded, the amount of the dealing is fair (as per Hubbard, and Chief Justice McLachlin, the amount of the dealing does not determine fairness, being just one factor to be weighed. I would suggest that the weight placed on the amount taken should be given a lower weighting than the character of the dealing, freedom of expression, and the public interest).

Another factor to assess is whether there are other means of achieving the same result without infringing, or utilizing, the underlying copyright work.

For example, if a criticism would be equally effective if it did not actually reproduce the copyrighted work it was criticizing, this may weigh against a finding of fairness.²⁴

The crux of the Chief Justice's example hinges on the phrase 'equally effective'. The nature of parody ensures that the tools of humour or ridicule are used to add a sharp 'sting' to the criticism. As noted earlier, humour and ridicule may enable the parody to reach a wider audience while a 'plain' criticism, couched in the tempered language familiar to academics and editors, will not be as effective as a well-executed parody (especially in relation to political affairs, social commentary, or labour disputes).

The nature of the work will rarely be a factor in assessing the fairness of a parody, since most works which are the subject of a parody are already public. Almost all parodies implicitly rely on the fact that the material being parodied is either a matter of public interest, or something that the public is interested in. Further, a parody will never compete with the underlying copyright work and therefore will not have a competitive effect on that underlying work. Of course, a parody may affect the revenues generated from the underlying copyright work, but this is balance that the fair dealing provisions (and section 2 (b) of the Charter) were intended to provide for.

The section 29.1 fair dealing provisions also require that the source be mentioned. In Michelin, it was unsuccessfully argued that Parliament had chosen the word 'mentioned' as opposed to something more affirmative, like 'cited', to indicate that the source need not be explicitly stated insofar as it conjured the original work in one's mind.²⁵ However, the Court's rejection of this argument ignores the subtle drafting of the Act. According to Webster's Third New International Dictionary, 'mention' 'indicates a calling attention to, usu. by name where possible, sometimes by a brief, cursory or incidental reference'.²⁶ The Shorter Oxford English Dictionary on Historical Principles goes further, stating that 'mention' is the 'action or an act of referring to, remarking on, or introducing the name of a person or thing, now spec. incidentally, as not being essential to the context'.²⁷ Both dictionaries place emphasis on referring to something using few words, or incidentally. This being so, an effective parody will satisfy section 29.1 of the Act by implicitly conjuring the underlying work being parodied in a manner somewhat akin to an allegation of confusion in a claim for passing off or trademark infringement. Indeed, within this context, most actions for copyright infringement are accompanied by a claim for passing off or trade mark infringement (eg Michelin and Canwest). Such claims invariably rely upon concepts like confusion, association, and 'conjuring up'. It would be difficult for the plaintiff to argue that the parody does not 'conjure up' the source with respect to the fair dealing defence, while arguing the complete opposite with respect to the claim in passing off or trademark infringement. Further, future parodies could simply indicate that this is a parody of 'X', thereby explicitly satisfying 29.1 of the Act (although this explicit labelling would be rather artificial, and ignores the sharp, derisive, and critical nature of parodies).

Parody and moral rights

A plain reading of CCH, together with the undeniable Charter values of freedom of thought, belief, opinion, and expression lead to the palpable existence of parody as a form of fair dealing. Lower courts should not feel constrained by Michelin, which can no longer survive in light of the clear and unanimous guidance provided by the Supreme Court in CCH.

There is one nagging issue that remains: the moral rights infringements associated with parodies. The fair dealing provisions of the Act state that 'fair dealing… does not infringe copyright [for research, private study, criticism, review or news reporting]'²⁸; however, copyright and moral rights are two distinct concepts under the Act. Even though one may have a defence under fair dealing for parodies, liability may still arise under the moral rights provisions (since the fair dealing exceptions do not apply to moral rights).

The moral rights provisions under the Act provide that:

One who parodies a copyright work may risk infringing the moral rights associated with the work. The underlying moral rights may be infringed either through distortion, mutilation, or modification; or by using the work in association with some cause (as in Canwest) or institution (like the Union in Michelin).

Most employers require their employees to sign a blanket waiver of their moral rights, thereby foreclosing this avenue of litigation. Perhaps a more nuanced approach to moral rights waivers should be considered, one which takes full use of the Act's provision. Section 14.1 (2) states that '[m]oral rights may not be assigned but may be waived in whole or in part'.³⁰ Employees could be required to waive their moral rights as against their employers, but not against third parties. This protects the employer's interests, while permitting the employee to join any litigation against third parties for copyright infringement.³¹

doi:10.1093/jiplp/jpp070

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^* Assistant Professor, Faculty of Law, University of Windsor; BA, LLB, LLM, PhD (candidate). This paper is dedicated to my colleagues Professor Emily Carasco and Professor David Tanovich, as well as Mr Haran Aruliah (class of 2008), for their unwavering support and encouragement. And, to my Uncle Faiz, in loving memory. (Return to Text).

¹ Canwest v Horizon, 2008 BCSC 1609. An appeal was filed on 5 December 2008 (http://seriouslyfreespeech.files.wordpress.com/2008/03/filed-notice-of-appeal-december-5-2008.pdf). (Return to Text).

² ibid, at para 7. (Return to Text).

³ [1996] FCJ No. 1685 ['Michelin']. A case which featured the National Automobile, Aerospace, Transportation, and General Workers Union of Canada's attempt to unionize Michelin's tyre plants in Canada. As part of this campaign, inter alia, the union distributed flyers which famously depicted the marshmallow-like 'Michelin man' (or Bibendum) with a leg raised above an unsuspecting worker, seemingly ready to crush that employee. (Return to Text).

⁴  Michelin at para 79. (Return to Text).

⁵  Michelin at para 63. (Return to Text).

⁶ For a comparative history and discussion of fair dealing and fair use see G D'Agostino, 'Healing Fair Dealing? A Comparative Copyright Analysis of Canada's Fair Dealing to U.K. Fair Dealing and U.S. Fair Use' (2008) 53 R.D. McGill 309363. (Return to Text).

⁷ Canadian Charter of Rights and Freedoms, Part I of the Constitution Act 1982, being Schedule B to the Canada Act 1982 (UK) c 11. (Return to Text).

⁸ For an early discussion on the relation between the Charter and copyright law, see D Fewer, 'Constitutionalizing Copyright: Freedom of Expression and the Limits of Copyright in Canada' (1997) 55 U.T. Fac. L. Rev. 175. More recently, see C Craig, 'Putting the Community in Communication: Dissolving Conflict between Freedom of Expression and Copyright' (Winter, 2006) 56 Univ. of Toronto L.J. 75. (Return to Text).

⁹ 2004 SCC 13. (Return to Text).

¹⁰ It is arguable that the defence of parody may have always existed in Canada; this point is academic in light of the unanimous ruling of the Supreme Court of Canada in CCH. (Return to Text).

¹¹ R.S.C. 1985, c C-4. (Return to Text).

¹² ibid. (Return to Text).

¹³ CCH at para 54. (Return to Text).

¹⁴ [1972] 2 QB 84. (Return to Text).

¹⁵ Webster's Third New International Dictionary, Unabridged (Merriam-Webster, Massachusetts, 2002). See also the Cambridge Advanced Learner's Dictionary which defines a parody as 'writing, music, art, speech, etc. which intentionally copies the style of someone famous or copies a particular situation, making the features or qualities of the original more noticeable in a way that is humorous' (ibid, at http://dictionary.cambridge.org/). (Return to Text).

¹⁶ It is unlikely that a parody could be viewed as a form of 'review' under the fair dealing provisions, due its humorous or derisive nature. The public might fail to glean the parody's 'review' function. (Return to Text).

¹⁷ Despite such liberal interpretation, I would suggest that even though a considerable amount of research may be extended in creating an effective parody, it would be difficult to view the parody itself as a form of 'research' (however loosely construed) under the Act. (Return to Text).

¹⁸ [1995] 2 SCR 1130. (Return to Text).

¹⁹ ibid (underlining in original, other emphasis added). (Return to Text).

²⁰ In Canada, the television programme 'This Hour Has 22 Minutes' produced by the Canadian Broadcast Corporation, is a self-described 'satire, ambush, sketch comedy and parody' on current items of political and newsworthy interest. The programme is loosely designed to resemble a newscast, presumably to avail itself of the fair dealing provisions relating to news reporting. (Return to Text).

²¹ In The´berge v Galerie d'Art du Petit Champlain inc., 2002 SCC 34, the Supreme Court of Canada noted:

²² Although each case turns on its own facts, some general remarks can be made about each factor. (Return to Text).

²³ CCH at para 55. (Return to Text).

²⁴ CCH at para 57. (Return to Text).

²⁵ Michelin at paras 69, 70, and 71. (Return to Text).

²⁶ ibid (Merriam-Webster, Massachusetts, 2002). See also the Cambridge Advanced Learner's Dictionary which states that mention means 'to speak about something briefly, giving little detail or using few words' (ibid at http://dictionary.cambridge.org/). (Return to Text).

²⁷ Shorter Oxford English Dictionary on Historical Principles (Oxford, OUP, 5th edn, 2002). (Return to Text).

²⁸ ibid, at ss 29, 29.1, and 29.2 (emphasis added). (Return to Text).

²⁹ ibid. (Return to Text).

³⁰ ibid (emphasis added). (Return to Text).

³¹ The expense of legal counsel could be met by the employer in this scenario as part of the company's overall litigation strategy. (Return to Text).