The Federal Court recently held that in the absence of a written agreement, a copyright holder could grant implied consent to the use of their work when they allowed the work to be used for the purpose for which it was commissioned. This ruling may cause concern for authors who wish to retain control of their works but are employed through informal agreements.
In Pinto v Bronfman Jewish Education Centre, Yehuda Pinto sought damages for copyright infringement of materials he prepared during his 14-year period working with the Bronfman Jewish Educational Centre (BJEC) and the TaL AM curriculum.Pinto Began working as a freelancer for TaL AM in 1992. His work involved original compositions, arranging traditional songs, and various other aspects of the musical component of the Tal AM curriculum. Since there was no written contract, the court had to make a determination as to what agreement the parties reached at the time. BJEC always paid Pinto at an hourly rate and he never received any royalties for the use of his works, though he did once receive a bonus as a thank you for his contributions.
The relationship ended in 2006 when an employee of BJEC discovered hidden copyright annotations in Pinto’s invoices. The documents were submitted electronically and contained white text on a white background, claiming that copyright in the works would remain with Pinto. At that time, BJEC required that Pinto either sign a document stating that all of his compositions were the property of TaL AM or an acknowledgement that his services would be terminated.
At trial, both parties agreed that Pinto owned the Copyright to 58 of his original compositions pursuant to section 13(1) of the Copyright Act, which states that the author of a work is the first owner of copyright. His works were not owned by the employer BJEC, since he was a freelancer and he did not sign the agreement, opting instead to end the relationship. In other works such as the actual songs, the Court found BJEC and Pinto to be joint authors. BJEC was also held to be the author of the sound recordings, since they bore the associated financial risks. Finally, if Pinto consented to the use of the underlying works, BJEC held the copyright in the compilation of the curriculum.
Additionally, Pinto did not assign the copyright because such an assignment must be in writing, per section 13(4) of the Act, and once again there was never any written contract or an agreement between the parties. Therefore, the central question before the Court was whether Pinto consented to the use of his works as a part of the contract for his services. The Court held that Pinto granted an implied licence to use his works and the actions of the defendants were within the scope of the licence. The action was dismissed.
According to Harmony Consulting Ltd v GA Foss Transport Ltd, the burden of proof of lack of consent is on the party seeking to establish infringement. In its analysis, the Court stated that the testimony given did indeed establish that Pinto granted consent to use his work. He knew that his work was commissioned for Tal AM, and during the proceedings he acknowledged that he permitted BJEC to use his music for the TaL AM curriculum. Pinto’s request for a written contract was not evidence of a lack consent. Pinto had argued that his repeated requests for a written contract to protect his “rights” established that he did not grant a licence. The Court reasoned that the fact that he continued to work with BJEC after they refused his requests meant that he impliedly consented to the terms as presented by the defendants.
In Netupsky v Dominion Bridge Co, the Supreme Court held that when a work is created at the request of a purchaser, the Court can find an implied licence to use the work for the purpose for which it was created. Therefore, through the continued relationship, Pinto implied consent to the use of the works in the TaL AM curriculum. The Court further held that there were no limitations put on the consent. No restrictions were communicated by Pinto, nor were they reasonably contemplated by the parties at the time.
Lessons for the Future
The lesson from this case is to make sure everything in writing. The relationship could have been preserved had the parties’ expectations been made clear from the start through a negotiation of rights and remuneration. Moreover, BJEC could have negotiated ownership of the works from the beginning as part of the contract for services. Alternately, if Pinto had held firm in his request for a written agreement, perhaps he would not have granted an implied licence. If he stopped working for BJEC immediately after the refusal he could argue that there was no implied consent to BJEC’s terms. This ruling is a reminder to authors that even though they can retain copyright in their works, they may lose some degree of control over their use if they grant implied licences by continuing a “for service” relationship. The importance of this reminder is amplified in this context because in copyright, it’s all about control.
Allison McLean is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.