Federal Court Of Appeal Interprets The Scope Of Defence Against Moral Rights Infringement Under Section 64(2) Of The Copyright Act

On March 27, 2024, the Federal Court of Appeal (the FCA) released its decision in French v Royal Canadian Legion (Dominion Command), 2024 FCA 63, that clarifies the scope of application of Subsection 64(2) of the Copyright Act which provides a defence against copyright and moral rights infringement in a design applied to a useful article produced in a quantity of more than 50. 

The underlying case concerned an action for copyright and moral rights infringement with respect to the “Poppy Dalmatian Puppy” (the Poppy Puppy), a plush toy modelled after a Dalmatian dog whose spots appear as poppies, created by Leonard French (the Appellant). The Appellant alleged, among other things, that the Royal Canadian Legion (the Respondent) breached his moral rights by claiming to be the developer of Poppy Puppy in the Respondent’s catalogue promoting the toy. The lower court dismissed the action (2023 FC 749, as previously reported in the E-TIPS® Newsletter here), finding that the Poppy Puppy was a useful article produced in a quantity of more than 50 and that any acts by the Respondent that might have constituted infringement were shielded under Subsection 64(2).

The issue on appeal was whether the lower court erred in finding that the Respondent’s activities fell within Subsection 64(2) of the Copyright Act to avoid a finding of infringement of moral rights.

The Appellant argued that: (i) Subsection 64(2) is not applicable to the Respondent’s impugned act of making a false statement that they developed the Poppy Puppy in the Respondent’s catalogue; (ii) the lower court failed to recognize that the Poppy Puppy is an artistic work used as a graphic representation applied to the face of an article in accordance with Subsection 64(3)(a) of the Copyright Act, thus falling outside the application of Subsection 64(2); and (iii) the lower court erroneously read Subsection 64(2) to include any potential infringement of moral rights. 

In rejecting the Appellant’s arguments, the FCA found that the lower court made no reviewable error in dismissing the Appellant’s claim of moral rights infringement. The FCA noted that the limits of the defence against moral rights infringement are found under Subsection 14.1(1) of the Copyright Act which defines the author’s rights with respect to authorship “in connection with an act mentioned in Section 3” of the Copyright Act (i.e. rights in connection with copyright, including the sole right to produce, reproduce, perform and publish the work). Accordingly, if there is no act in connection with copyright, there is no infringement of moral rights. 

The FCA concluded that if the Respondent’s false statement of authorship was associated with a reproduction of the Poppy Puppy, Subsection 64(2) would excuse the infringement of the Appellant’s moral rights. On the other hand, if there was no reproduction of the Poppy Puppy associated with the Respondent’s false statement, there would be no infringement of the Appellant’s moral rights in the first place. In either case, the Respondent is not liable for infringement of the Appellant’s moral rights.

Summary by: Anna Troshchynsky