II. Not All Copying Is Actionable

Originality is a fundamental condition of copyright protection.Footnote ¹⁶ It summons the law of copyright into operation. There is no such thing as copyright in the absence of originality.Footnote ¹⁷ Because it presides over the formation of the right, originality also, and therefore, demarcates its limits. The prohibition on copying that the right affirms is thus not a general prohibition on copying but a specific prohibition on copying the copyright holder's originality. Where a defendant can show that what she copied does not meet the originality threshold, she need not allege that she did not copy. On the contrary, she may calmly admit the copying while sustaining the allegation that what was copied is not copyright subject matter. We may say that subject matter problems are prior to infringement problems. There can be no copyright infringement where no copyright subject matter obtains. From the very outset, that is, originality operates as a distinction between lawful and wrongful copying. Only copying of originality is wrongful. From a copyright perspective, all other copying is lawful.

The idea/expression dichotomy elaborates the distinction further.Footnote ¹⁸ It is a dichotomy of protection: expression but not idea is copyright subject matter. Copying an author's ideas, even if original, is not actionable. If originality provides that only copying of originality is actionable, the idea/expression dichotomy provides that not originality generally, but only original expression specifically, is actionable. Once again, only copying of expression is wrongful. From the standpoint of copyright law, all other copying is lawful.

The doctrine of merger, too, fits comfortably in this series. Merger provides that, where an idea can be expressed in only one or a limited number of ways, no copyright over the expression itself obtains. Idea and expression are said to be merged. The defendant may copy not only idea but also expression freely. Merger is often viewed as a corollary of the idea/expression dichotomy, providing that, given the merger of idea and expression, granting a monopoly in the expression is tantamount to granting a monopoly in the idea, contrary to the free availability of ideas affirmed in the idea/expression dichotomy. Just as there is no copyright in idea, so there is no copyright in merged expression. Merger may also be viewed as a corollary of originality doctrine, providing that the inseparability of idea and expression reveals that the transition from idea to expression, from expressed content to form of expression, is not an instance of specifically authorial expressive choices, but rather of some sort of mechanical unfolding of necessary prerequisites, distinct from those flowing from authorial choice, already contained in the idea itself. On this view, the producer of merged expression is not an author in the requisite sense, and therefore merged expression is not truly original expression. Whether we construe merger as a corollary of the idea/expression dichotomy or, alternatively, of originality doctrine, the point remains that a finding of merger is a finding that no protectable copyright subject matter obtains. The sphere of merger is thus a sphere of lawful as distinct from wrongful copying.

Fair dealing sustains and deepens the series further. It denotes situations in which unauthorised copying of original expression itself is not actionable. For example, a defendant's unauthorised copying for the purpose of criticism or review, where the copying is reasonably necessary for that purpose, is not subject to liability. The defendant is within her user rights. It would be a serious mistake, however, to think of fair dealing as an exception to a general prohibition on copying. Fair dealing is lawful copying under the rubric of rights of use held by persons other than the copyright holder. It is not excused infringement but absence of infringement. It tells us not that liability may be waived when extraneous considerations are operative but rather that copyright is not an absolute right inclusive of any and all uses of copyright subject matter. To put it otherwise, the purview of a copyright holder's exclusive rights is confined to certain uses of her work not falling within the rubric of rights of use held by others. Thus, while originality, idea/expression and merger teach that not copying per se but only copying of original expression is actionable, fair dealing emphasises that, far from instituting a general prohibition on copying, copyright affirms circumstances in which original expression is to be freely copied. The principle of balance neither does nor can mean that user rights come to impinge on limitless rights of exclusive use. That would be to conceive lawful copying as a merely epiphenomenal superimposition of secondary claims over an otherwise intact and pristine author-centric structure. As the SCC warned in CCH, we must guard against confusing the fact that, procedurally, user rights arise as a defence to copyright infringement with the quite different proposition that, substantively, user rights are anything less than integral to the copyright system as such.Footnote ¹⁹ Copyright is not prima facie absolute but ab initio constituted as a relation between authors and users.

This brief sketch of salient copyright doctrine permits us to observe that the pervasive proposition that not all copying is copyright infringement arises in two senses, one in respect to copyright subject matter and the other in respect to copyright scope.

As we noted at the outset, only copying of copyright subject matter is actionable. All other copying is lawful. But we can now add that this is less an instance of user rights than an offshoot of the demarcation of the boundaries of copyright law accomplished through the category of subject matter. The free availability of mousetraps or of phone directories, like that of ideas or of merged expression, indicates not rights of use in respect of copyright subject matter but the absence of copyright subject matter to begin with. When I copy your mousetrap or adopt your ideas, I do not rely on copyright user rights to sustain the legitimacy of my acts, any more than you reach for the Copyright Act to vindicate your rights when I fail to live up to an actionable promise, when I refuse to deliver the chattel of which I am in possession as your bailee, or when I negligently damage your property. From this point of view, the threshold function of originality doctrine is none other than to make the determination that absence of copyright subject matter spells absence of the applicability of copyright legislation, not only of author rights but also of user rights. Copying a mousetrap engages neither copyright nor, therefore, user rights.

User rights can and do arise, under the rubric of scope, once the originality threshold has been crossed. At this point, the proposition that not all copying is actionable specifies not the inapplicability of copyright legislation but the limits of the zone of exclusivity held by the copyright holder. These limits are but the corollary (or, more precisely, the mirror image) of rights of use in respect of copyright subject matter held by others; that is, user rights properly so-called. Copying falling outside the purview of the copyright holder's exclusive right of reproduction, for example, does not give rise to liability. This is a matter of scope, and not subject matter, because it involves non-actionable copying of copyright subject matter. The inquiry addresses not the question whether copyright subject matter obtains but rather the limits (or scope) of the right held in respect of that subject matter. Insubstantial copying may be regarded as an obvious example of a scope limitation and, of course, fair dealing is the paradigmatic instance of non-infringing unauthorised copying of copyright subject matter. Whereas subject matter determinations specify the limits of copyright, scope determinations specify limits in copyright. User rights pertain to the latter, not the former.

In short, the elementary proposition that not all copying is actionable or, to put it otherwise, that only wrongful copying is actionable, is already an affirmation of user rights. To say “wrongful copying” is already to say that the wrong is not in copying as such but in the determination of whether it falls within the exclusive prerogative granted to the copyright holder. The mere physical act of copying copyright subject matter does not per se give rise to liability. Any other construal is inconsistent with the view that there is such a thing as user rights, that is, unauthorised lawful copying of copyright subject matter. It can certainly come as no surprise that an actionable copy is not a physical but a juridical determination.

III. The Work in Any Material Form

Section 3(1) of the Copyright Act 1985 defines the meaning of copyright. The section clearly distinguishes between a “work” and its “material form”. It provides that “copyright, in relation to a work, means the sole right to … reproduce the work … in any material form whatever”. The language parallels that of section 17(2) of the United Kingdom Copyright, Designs and Patents Act 1988: “Copying in relation to a literary, dramatic, musical or artistic work means reproducing the work in any material form.” It can be traced back to section 1(2) of the United Kingdom Copyright Act 1911: “‘copyright’ means the sole right to … reproduce the work … in any material form whatsoever.” Remarkably, the distinction between work and material form remains largely undeveloped in both copyright jurisprudence and copyright scholarship. This is astonishing.

It is astonishing for several reasons. First, the distinction plainly leaps out of the very surface of the provision that defines the meaning of a core right, the right of reproduction, that the statute affirms. No account of the import of the provision can possibly stand in the absence of an understanding of the distinction between a work and its material form.

Second, because the distinction is part and parcel of the definition of copyright, it must be understood as pervading the Copyright Act 1985 as a whole. To be sure, the distinction facially pertains to the right of reproduction, neither the right of public performance or communication to the public, nor that of first publication, but all three aspects of copyright as a whole are defined in a single provision, suggesting that assuming the independence or autonomy of each of its three core constitutive rights is by no means a self-evident approach.Footnote ²⁰ Far more plausible is the view that the distinction between the work and its material form is rather a dimension of the increasing specification in modern copyright law of copyright subject matter (that is, the work) as original expression distinguished and notionally distinguishable from the varied substrata or media (whether material or otherwise) in which it may appear. In short, the distinction is as involved in the finding that a broadcast is the same as a live performance, as in the finding that an aquatint is the same as a digital photograph. With this in mind, we might venture that, because the conceptual nature of each core constitutive aspect of copyright implicates that of the others, the distinction or a variant thereof might be posited as in principle immanent in the statute.

Third, the phrase “material form” has played a central role in recent SCC copyright jurisprudence. The phrase is said to be the statutory anchor of the principle of technological neutrality, a principle affirmed as indispensable to our understanding of the conflicted relation between copyright law and the digital environment.Footnote ²¹ This is admittedly somewhat surprising, not least because public performance or communication to the public, saliently implicated in digitisation, does not self-evidently require material form. Perhaps the SCC's recurrent stance is but its way to work through a latent intuition that the distinction between the work and its material form in respect of the right of reproduction is but an instance of a generalisable and progressive specification of the radically expressive nature of copyright subject matter in modern copyright law. Whichever the case, it remains surprising that when accorded the task of anchoring the principle of technological neutrality, the phrase is nevertheless routinely used without sufficiently significant reference to the distinction between the work and its material form in which the phrase appears and from which it derives its meaning. It is as if we have rushed headlong to resolve an urgent predicament without discussing a fundamental distinction that leaps out of the text of the statute intended to guide us.

The first observation to make about section 3(1) is that it defines copyright “in relation to a work”. This is plain enough. It reminds us that copyright is not a right at large but a right in relation to specific subject matter. The subject matter of the right is addressed in section 5(1) of the Act: “[C]opyright shall subsist … in every original literary, dramatic, musical and artistic work.” This, too, is plain enough. It reminds us that originality is the sine qua non of protection in modern copyright. It is less frequently noted that nothing in section 5(1) remotely suggests that the material form of a work is copyright subject matter. The phrase “material form” does not appear in the provision. Moreover, because section 3(1) defines copyright “in relation to a work”, there is no possible interpretation of the phrase “material form” in section (3)1 that can conclude that the material form of a work is copyright subject matter. It is true, of course, that section 3(1) captures the work in any material form. But the point is precisely that section 3(1) captures the work in any material form, not the material form as such of the work. Similarly, section 3(2) of the United Kingdom Copyright, Designs and Patents Act 1988 provides that “[c]opyright does not subsist in a literary, dramatic or musical work unless and until it is recorded, in writing or otherwise”, such that the recording is a prerequisite for copyright subsistence but not for the existence of the subject matter protected.Footnote ²² In a word, materiality per se is not copyright subject matter.

It simply cannot be the case that conceived as a physical object or chattel – to use the language of property law – the material form of the work is copyright subject matter. Assume, for example, that you write a poem using my ink and paper. You hold the copyright in the poem. I hold the property right in my chattels. If I reproduce your poem, I infringe your copyright. Your copyright claim succeeds. It is not a defence for me to say that your poem is written with my ink on my paper. My property does not entitle me to your copyright.Footnote ²³ My ownership of the material form of the work does not grant me any right to the work as copyright subject matter; that is, to the work as a work. By the same token, if you refuse to hand me back my ink and paper, you infringe my property right. My claim in detinue succeeds. Your copyright in the poem does not entitle you to my property. You do not get to keep my ink and paper just because you have used them to write your poem. Your copyright is the sole right to reproduce your work – that is, your poem as original expression – in any material form. But it is not a right over the material form as such, considered in its bare proprietary materiality. It is the work defined as original expression, not its material form, that is copyright subject matter. The significance of the material form of a work is radically derivative. It is strictly as the materialisation of the work, but not in its own right, that the material form has copyright significance. By the same token, it is strictly the work as a work, and not as material form, that attracts copyright protection.

A brief excursus into the fixation requirement, albeit not a universal feature of copyright law,Footnote ²⁴ can nonetheless serve to formulate the point more precisely. Fixation provides that “for copyright to subsist in a ‘work’ it must be expressed to some extent at least in some material form, capable of identification and having more or less permanent endurance”.Footnote ²⁵ Copyright subsists in a work that, as such, must meet the originality threshold. That is, copyright subsists in original expression. For this original expression to attract copyright protection it must be fixed in material form. But the material form in which the work is fixed is not copyright subject matter. Fixation is a condition precedent of protection. It is not an aspect of the protected subject matter. Originality and fixation are both threshold categories, guarding the entrance to copyright territory, but not in the same sense. Originality tells us that a poem, not a phone directory or a mousetrap, attracts copyright. Fixation tells us that the poem will not be protected unless it is written. Originality constitutes what copyright protects. Fixation provides that such protection will not arise in the absence of material form.

If, having written your poem using my ink and paper, you hand my property back to me when I request it, and, in a capricious exercise of my property rights, I tear up the material form of your work into several hundred unrecognisable pieces, I neither infringe your copyright nor extinguish it. Once your copyright has come into existence, it will subsist for a specified period. It will have a limited duration. If, before its expiry, I write your poem down from memory on another piece of paper, I reproduce your work in violation of your subsisting copyright. If I recite your poem at a public function, I perform the work in public in violation of your subsisting copyright. If I make copies available to the public before you do, I publish or distribute your work in violation of your subsisting copyright. While copyright will not arise unless the work is fixed in material form, copyright subsists in relation to a work and in relation to nothing but a work. The doctrine of fixation thus confirms the fundamental distinction, itself flowing from the doctrine of originality, between a work and its material form. Precisely because fixation in material form is a condition precedent of protection, and not the subject matter protected, fixation confirms that copyright subject matter is through and through original expression and nothing but original expression, regardless of the form or medium (whether material or otherwise) in which that original expression happens to appear in any given instance.

It is worth emphasising that the point here is not only that the material form of the work is not copyright subject matter but also, and by the same token, that it cannot be. Viewed as a work of authorship, a sculpture neither is nor can be the stone that houses it. Of course, there is no such thing as a sculptural work of authorship in the absence of (say) stone, but it does not follow either that the work of authorship is the stone, or even that the work of authorship is inseparable from the stone. Copyright subject matter is and must be other than its material form. This is in fact a logical condition of the possibility of copying. The proposition that a work can be copied, that is, that it can be multiplied, presupposes the work as a general category capable of existing in and through particular instantiations. It follows that to equate the work with its instantiation is to lose the possibility of copying. There is no such thing as copyright nominalism. In the absence of the (posited) juridical reality of the work as a general category, there is no such thing as copying. Thus, for example, if Duchamp were to say that the Fountain is nothing but its material form, he would be wrong, and copying his work would still amount to copyright infringement even if Duchamp, in the name of art, would opt not to sue.

Because the material form of the work is not copyright subject matter, it cannot be within the scope, for example, of the right of reproduction. In other words, the distinction between a work and its material form suggests the inference that unauthorised use of the material form of a work, when in the absence of unauthorised use of the work as a work, does not and cannot attract liability. To be sure, at least at first sight, the inference, even if logically sound, cannot help but appear at best peculiar, at worse entirely vacuous or unintelligible. Thinking through the possibility of reproducing the material form of a work, but not the work as such, seems futile. In what sense, after all, could it possibly be the case that copying the material form of the work does not eo ipso amount to copying the work?

The operations of digital technology in fact routinely instantiate that possibility. In SOCAN v Canadian Association of Internet Providers (hereafter, SOCAN),Footnote ²⁶ for example, the SCC considered whether caching – involving copying necessary to the efficient operation of the Internet – gives rise to liability.Footnote ²⁷ SOCAN addressed, inter alia, the copyright liability under the right of communication to the public by telecommunication of an Internet Service Provider (ISP) in its role as intermediary between content providers and end users. In response to the allegation, the Canadian Association of Internet Providers (CAIP) raised section 2.4(1)(b) of the Copyright Act 1985, which provides that

That is, CAIP asserted the role of an ISP as a mere conduit. The Federal Court of Appeal (FCA) found that cache copying falls outside the scope of section 2.4(1), on the grounds that Internet communication would still be practicable, even if less efficient, in the absence of caching, such that caching is not “necessary” in the relevant sense. The SCC reversed the FCA on this point. It interpreted section 2.4(1)(b) as evidence of the legislature's intent to secure the efficient operation of the Internet, finding that, as necessary to the efficiency of Internet communication, cache copying does fall within the meaning of the provision.Footnote ²⁸ The SCC held that caching is “dictated by the need to deliver faster and more economic service, and should not, when undertaken only for such technical reasons, attract copyright liability.”Footnote ²⁹ Caching amounts to a technique involving copying but not to actionable copying per se.Footnote ³⁰

I want to draw three related observations from the decision that will permit us to develop the application of the distinction between a work and its material form to the digital context and to the elaboration of the principle of technological neutrality. First, the SCC underlined that the section 2.4(1)(b) did not exempt an ISP from liability. That is, the provision states not that the activities of an ISP as an intermediary fall under an exception to infringement but rather that no infringement takes place ab initio.Footnote ³¹ The point is not that caching is lawful because it is an act of reproduction attracting no liability under the right of communication to the public by telecommunication. Rather, the point is that, albeit an instance of copying, caching fails to attract liability because it is a merely technical process. Just as the ISP is, in respect of the right of communication to the public, nothing but a mere conduit attracting no liability, so is caching, in respect of the right of reproduction, nothing but a mere technical process attracting no liability. The lawfulness of caching is not a legislative undoing of otherwise wrongful copying: “[s]ection 2.4(1)(b) is not a loophole but an important element of the balance struck by the statutory copyright scheme.”Footnote ³² Following CCH, then, SOCAN confirms the elementary proposition that there is such a thing as unauthorised non-infringing use of copyright subject matter: not all copying is actionable.

Second, and more significantly, SOCAN brings into sharp relief a fundamental peculiarity of digital technology when examined from a copyright perspective. We might say that caching fails to attract liability because it involves uses of copyright subject matter for merely technical purposes independent of its expressive significance. Keeping the copyright balance in mind, we might be tempted to add that caching is a user right attendant on the scope of the relevant copyright. But while helpful as far as it goes, that formulation is inaccurate. More than that, it misses the point altogether. The SCC expressly tells us that caching is in fact not an instance of subject matter use. Caching fails to attract liability not because it amounts to a use falling within the rubric of user rights, but because it is not a use at all: “[t]his appeal is only tangentially related to holding ‘the balance’ between creators and users. Section 2.4(1)(b) indicates that in Parliament's view, Internet intermediaries are not ‘users’ at all, at least for the purposes of the Copyright Act.”Footnote ³³ An ISP does not communicate because it is a mere conduit, and it does not reproduce because it merely operates with technically required cache copies innocent of expressive significance. SOCAN is thus not about limited scope but about want of subject matter. It is not about permitted use of copyright subject matter but about absence of use of copyright subject matter as such.

Third, it may well be possible to read section 2.4(1)(b) as a sui generis provision specifically and exclusively attendant on Internet intermediaries, as the result, so to speak, of particularly successful lobbying and/or of a legislature markedly attuned to the exigencies of the Internet. That is the sense in which, at least in part, Binnie J. in SOCAN appears to have deployed the provision when he emphasises the public interest in permitting an ISP to operate without the threat of copyright infringement.Footnote ³⁴ But even a narrow reading of the provision could not fail to observe that, doctrinally grasped, its effect is that, as an instance of copying not involving copyright subject matter, caching is not a use because it does not fall within the meaning of sections 3(1) and 5(1) of the Copyright Act 1985. It does not fall within section 5(1) because it amounts merely to use of technically required likenesses or semblances, but not of copyright subject matter in its actionable significance as original expression. Caching is not a use of an author's originality. It does not fall within section 3(1) because the right affirmed in that section has no application whatsoever in the absence of (any use of) copyright subject matter. The merely physical (or digital) act of copying is not juridically cognisable for the purposes of the Copyright Act 1985. In short, formulated in section 3(1) terms, caching fails to attract liability because it amounts to a use of the material form of the work but not of the work as a work.

On this view, the analysis of section 2.4(1)(b) in SOCAN makes clear, through the caching example, that the digital context renders the elementary distinction between the work and its material form in section 3(1) particularly visible. Unsurprisingly, the distinction is also helpful in other contexts. Before proceeding to develop its import through further examples, it will be helpful to assess, even if briefly, its relation to the current state of copyright law and caching in Canada and the European Union.

Developments in Canadian copyright law after SOCAN at once support and challenge the foregoing gloss of the import of the distinction between the work and its material form in section 3(1). Added to the Copyright Act 1985 in 2012, eight years after SOCAN, section 31.1(2) provides that caching a work or other subject matter by an ISP “to make the telecommunication more efficient does not, by virtue of that act alone, infringe copyright in the work or other subject matter”. Caching is not copyright significant ab initio. Section 31.1(2) thus supports the view that caching is lawful as merely technical use implicating the work's material form but not the work as such.

At the same time, however, section 31.1(3) imposes conditions on the application of section 31.1(2), inter alia that any “directions” relating to the caching of the work specified by whoever made the work available for telecommunication through the Internet are “read and executed”. These “directions” must be “specified in a manner consistent with industry practice” and “lend themselves to automated reading and execution”. In other words, caching is unlawful when suitably specified directions prohibiting it obtain. These imposed conditions suggest that the lawfulness of caching is premised not on the non-actionable nature of caching as non-expressive use but on the absence of directions prohibiting it. Caching is lawful not because it is merely technical use of a work's material form but because it is deemed to be authorised unless directions to the contrary are properly specified.

The situation is by no means unambiguous. The Canadian ISP caching regime grants a copyright holder some sort of cognisable copyright interest, albeit a notably curtailed and weakened one, in the work's material form even if used technically and not expressively. Another way to say this is to observe that sections 31.1(2) and (3) grant an ISP a kind of statutory licence revocable at will, through directions properly specified, by the person making the work available for telecommunication.

The implications of the Canadian ISP caching regime for the characterisation of the definition of the right of reproduction more generally are unclear. On the one hand, we may surmise that the lawfulness of caching appears as an exception to the right of reproduction widely conceived as inclusive even of non-expressive use of the work's material form. Because it suggests a statutorily excused wrong rather than the absence of wrong ab initio, this view runs counter to the overall constitutive grammar of balance and user rights well-entrenched in Canadian copyright jurisprudence. On the other hand, we may essay the view that the revocability of the lawfulness of caching at the copyright holder's behest is itself an exception to caching as an otherwise non-actionable merely technical use of a work's material form. This view is suggested by section 30.71 of the Copyright Act 1985, also added in 2012, providing that

Section 30.71 thus suggests the view that the privilege of revoking the lawfulness of caching through specified directions is not generally operative but particular to the ISP caching regime.

We need not resolve these ambiguities to observe that their very presence insinuates that sections 31.1(2) and (3) of the ISP regime are not eo ipso unequivocally aligned with the momentous finding in SOCAN, rooted in section 2.4(1)(b), that for copyright purposes an ISP is not a user “at all”.Footnote ³⁵ It remains the case, however, that the position adopted in SOCAN affirms the constitutive definition of copyright subject matter as radically expressive in sections 3(1) and 5(1) of the Copyright Act 1985. Boldly put, this means that the 2012 ISP caching amendment falls short of the expressive core of copyright law.

The position in the European Union is less ambiguous. Article 2 of the Information Society DirectiveFootnote ³⁶ affirms the exclusive right of authors in respect of their works “to authorise or prohibit direct or indirect, temporary or permanent reproduction by any means and in any form, in whole or in part”. Conceived as an instance of temporary reproduction, caching thus falls plainly and squarely within the ambit of the right. Of course, Article 5(1) of the Directive exempts temporary acts of reproduction caught in Article 2, provided those acts are “transient or incidental [and] an integral and essential part of a technological process” whose sole purpose is to enable either “(a) transmission … by an intermediary” or “(b) a lawful use”, neither of which may have “independent economic significance”. In that context, it can come as no surprise that scholars in Europe have repeatedly pointed out, persuasively in my view, that the definition of the right of reproduction as inclusive of caching (and other merely technical non-expressive acts) is inconsistent with the fundamental purposes of copyright law generally and with core operations of the digital environment particularly.Footnote ³⁷

In Canada, the more extensive development of the grammar of balance and user rights adumbrates, even if by no means unambiguously, possibilities intimating a redefinition of the right of reproduction in the direction of copyright subject matter as radically expressive. This direction is exemplified in the treatment of caching in SOCAN, rendering visible the import of the distinction between the work and its material form for the analysis of the principle of technological neutrality and thus of the encounter between copyright and the digital environment more generally.Footnote ³⁸ But the distinction is helpful in other contexts and in fact predates digitisation. We would not have expected otherwise from the proposition that the distinction affirms the radically expressive core of copyright subject matter as such.

Consider, for example, a patent specification containing diagrams disclosing the invention it claims. Assume that the diagrams are subject to copyright as artistic works, and that, because the invention is a reproduction of those diagrams in three-dimensional form, the manufacture of the invention in accordance with the disclosure in the specification infringes the copyright in the diagrams. Were that the case, it would follow inevitably that both during and after the expiration of the patent, the construction of the invention would attract copyright liability as a reproduction of the artistic work “in any material form”. Even if we ignore the concurrent action of copyright and patent during the period of patent duration, the copyright in the artistic work would have the effect of extending the patentee's monopoly over the invention beyond that period, contrary to the operations of the patent system.Footnote ³⁹ The difficulty admits of four possible solutions.

The first would involve ignoring the difficulty altogether. More precisely, it would involve resisting the issue of concurrent or extended protection as a difficulty to begin with. After all, nothing in either the copyright statute or the patent statute provides that the inclusion of a work of authorship in a patent specification invalidates an otherwise valid copyright. Thus, so the argument would go, until and unless the legislature provides that the three-dimensional reproduction of a two-dimensional artistic work included in a patent specification is not copyright infringement, the copyright must be held to subsist.

The second approach would involve the proposition that the inclusion of an otherwise copyrightable diagram in a patent specification amounts to an implicit abandonment of the copyright therein.Footnote ⁴⁰ The scope of this deemed abandonment, or abandonment by law, as we might say, need extend no more than what is necessary to render the remaining copyright in the diagram consistent with the patent system. That is, the patentee would be deemed to abandon the copyright only to the extent that subsistence of the copyright would prolong the patentee's monopoly over the invention beyond the statutorily granted duration of the patent. Assertions of the copyright that do not have that effect (say, for example, the reproduction of the diagram as an ornamental poster) would remain within the exclusive purview of the copyright holder. But again, nothing in either the copyright statute or the patent statute clearly provides for deemed abandonment. To be sure, one might say that the patent bargain means precisely that the patentee receives the patent in exchange for the subsequent public availability of the invention, but this means nothing more than that the patentee cannot rely on the patent once the patent expires. The patent statute provides that the patent expires, but it certainly does not provide that any associated copyright (or, for that matter, any other rights) do so as well. Thus, for example, in Kirkbi AG v Ritvik Holdings Inc.,Footnote ⁴¹ the SCC found that, upon the expiry of the patent, a former patentee could not seek to prolong the expired monopoly on the invention by asserting trade mark rights over the shape of the product as an indicator of source. But the SCC grounded its holding not on the basis of the patent statute but on the basis that the law of trade marks precludes trade mark rights over functional aspects of the product. In other words, it was the trade mark doctrine of functionality, not any construal of the patent bargain, that precluded the assertion of trade mark rights subsequent to the expiry of the patent.Footnote ⁴²

The Kirkbi case thus suggests, mutatis mutandis, investigation of a copyright analogue to the trade mark doctrine of functionality. That is indeed the third approach to the problem before us. On this third approach, the copyright doctrine of merger would come to our aid. The view would be that, to the extent that the diagram in the specification amounts to sufficient disclosure under the law of patent, the diagram must be merged with the idea expressed, that is, with the invention it describes and claims. The finding of merger would thus operate as a finding that no copyright obtains in the diagram, in a manner analogous to the doctrine of functionality in the law of trade marks. There is no requirement in the law of patent, however, that a specification diagram be merged in the copyright sense with the invention it describes and claims. On the contrary, to the extent that the specification claims a monopoly beyond the particular embodiment of the invention it describes, merger is far from being a requirement, or even aspiration, of the sufficiency of the specification. The appeal to the merger doctrine to avoid the intrusion of copyright law into the operations of the patent system would thus be effective only in situations in which the diagram in the specification, considered in its putative significance as a work of authorship, happens to be an instance of merger. It as if only specifications drafted too narrowly, as it were with insufficient guile, would be caught.

The fourth approach to the issue strikes me as the most serviceable, far more economic or worthy of Occam than any of the other three. This is the approach embedded in the distinction in section 3(1) between a work and its material form. Manufacturing an invention described in a work of artistic authorship is a reproduction of the material form of the work but not of the work as a work. It is therefore non-actionable. It is not a use of the work in its expressive significance, its only and sole copyright significance. It is no more an infringement of the copyright in the artistic work than the making of a pie following the text of its recipe is an infringement of the copyright in the literary work.Footnote ⁴³ It is not more a use at all than caching is a use in SOCAN.

This fourth approach is superior to the first in that it finds at the core of the statutory text, in the provisions defining the nature of the right and its subject matter, the distinction the first approach declares absent. Sections 3(1) and 5(1) provide that copyright protects original expression, and nothing other than original expression, such that use of the work as a work in its only copyright-relevant expressive significance, but not use of the material form of the work in some technical or extra-expressive sense, attracts liability. Thus, in order to preclude copyright liability attaching to manufacturing an invention, this fourth approach need not wait for the legislature to say what it has already said. Along similar lines, the fourth approach is superior to the second approach because there is no need to imply an abandonment of a copyright over the material form a work which never in fact existed or could have, pursuant to sections 3(1) and 5(1), ever existed. Finally, the fourth approach is superior to the third in that it does not premise the preclusion of copyright liability on the contingency that the merger doctrine is applicable. That is, it posits freedom from copyright liability, regardless of merger, as the absence of any cognisable use of copyright subject matter. In short, the fourth approach captures and sets forth as a general copyright principle affirmed in the statute the intuition embedded in the particular example of the artistic work in a patent specification.Footnote ⁴⁴

In its conflicted decision in British Leyland Motor Corporation Ltd. v Armstrong Patents Co. Ltd. (hereafter, British Leyland),Footnote ⁴⁵ the House of Lords found that unauthorised manufacture of an automobile exhaust pipe infringed the copyright in the drawings illustrating the product. The defendant's exhaust pipe was held to be an actionable three-dimensional reproduction of the plaintiff's two-dimensional drawing.

Three of the four majority judgments in British Leyland formulate the holding with remarkably unabashed and undisguised reluctance. In a brief judgment voicing “total agreement” with Lord Templeman's comprehensive judgment, for example, Lord Scarman exclaimed that the case “illustrates that more than redrafting with a view to clarification is needed: nothing less than an overhaul of some of the principles of the modern extended law is necessary”.Footnote ⁴⁶ Lord Scarman hoped that the review of the Copyright Act 1956 then in progress would “lead to legislation to bring the law back within the limits intended by Parliament”.Footnote ⁴⁷ He emphasised that the review should make explicit a “principle latent in our law” that the “manufacturer of an article such as a motor vehicle or other ‘consumer durable’ cannot by the exercise of copyright preclude the user of the article from access to a free market for spares necessary to maintain it in good working order”.Footnote ⁴⁸

Lord Templeman's judgment is equally unambiguous, albeit stated at an even higher level of generality: “I agree with the submissions made on behalf of [defendant] Armstrong that Parliament did not intend the protection afforded by copyright to a drawing should be capable of exploitation so as to prevent the reproduction of a functional object depicted in a drawing.” “But,” Lord Templeman added, “there is a good deal of legislative and judicial history to be considered.”Footnote ⁴⁹ In the result, given the reading of the right of reproduction as inclusive of the manufacture of an exhaust pipe, Lord Templeman invoked extra-copyright imperatives to avoid the defendant's liability: “In these circumstances, in my opinion, BL [British Leyland] are not entitled to assert the copyright in their drawing of an exhaust pipe in order to defeat the right of the purchaser to repair his car. The exploitation of copyright law for purposes which were not intended has gone far enough.”Footnote ⁵⁰

I wish to comment neither on the discomfort involved in an interpretation of the statutory text in a manner admittedly contrary to its apprehended purpose, nor on the viability of the ensuing invocation of extra-copyright imperatives to undo the result mandated thereby. It suffices to note that the House of Lords found itself awkwardly ensnared between a reading of the statute it disfavoured in principle and a no less cumbersome judicially created exception to that reading. The majority in British Leyland opted for the latter, while Lord Griffiths’ dissent essayed a mitigation of the former. My point is only that the fundamental principle required to transcend the impasse is perhaps not as “latent” as the House of Lords appears to have assumed. Copyright protects the form of expression as such, neither its material form nor the content expressed. One need not ascertain an Archimedean point to move the cosmos in order to observe that an exhaust pipe is not a use of a drawing as a work in its expressive significance. My view is that the House of Lords ought to have heeded its reluctance more assiduously. It was in the circumstances a sentiment as prosaically predictable as the exaggeration that copyright law protects automobile parts is decisively counterintuitive.

I have elsewhere described the fundamental principle at issue as “nonuse”, seeking to denote with that term the proposition that, unlike fair use, which involves use of copyright subject matter, and thus pertains to the limited scope of the right over that subject matter, nonuse involves use of the material form of the work but not of copyright subject matter as such.Footnote ⁵¹ I developed that proposition through an analysis of the classic Supreme Court of the United States (SCOTUS) decision in Baker v Selden (hereafter, Baker).Footnote ⁵² As we shall presently see, the principle is also operative in the classic English Court of Appeal decision in Hollinrake v Truswell (hereafter, Hollinrake).Footnote ⁵³

In Baker, the plaintiff devised a novel accounting system and explained it in a book. The book made use of accounting forms to explain and illustrate the system. The explanatory forms in the book were the very same forms required to operate the novel accounting system. The defendant copied the forms to operate and market the accounting system. The plaintiff sued for copyright infringement.

The SCOTUS held that no copyright liability attached to the defendant's copying of the accounting forms. It observed that the accounting forms appear in two different guises. On the one hand, the forms appear as aspects of the accounting system, and in that sense as tools. On the other, they appear as aspects of the book explaining the system, and in that sense as works. Distinguishing clearly between these guises is crucial to the resolution of the case. More precisely, the evident fact that identical patterns of ink on a page (“lines and figures”) appear in each of these guises is irrelevant to the fundamental distinction between the forms as tools and the forms as works.Footnote ⁵⁴ The SCOTUS held that the defendant's use of the tools as an aspect of the operation of the accounting system is not a use of the works as aspects of the explanation of the system. No copyright liability attaches to the defendant's copying of the forms as tools for accounting purposes, notwithstanding the fact that, had the defendant copied the forms as works for explanatory purposes, copyright liability would have indeed attached.Footnote ⁵⁵ In a word, the defendant copied the material form of the work but not the work as such.

The fundamental copyright principle informing Baker is clear and uncontroversial: a work of authorship describing an invention does not sustain a claim of exclusivity over the invention itself, any more than, more generally, the form of an author's expression can sustain a claim of exclusivity over the content expressed. Prima facie, this may seem to be an instance of the idea/expression dichotomy. Yet the way in which the SCOTUS deals with and overturns the lower Circuit Court's holding in favour of the plaintiff, however, is richly instructive in this respect. The SCOTUS points out that the “plausibility” of the plaintiff's submission in the eyes of the Circuit Court arises from a “confusion of ideas” resulting from the “peculiar nature” of the facts.Footnote ⁵⁶ The peculiarity is none other than the twofold guise in which the forms appear, on the one hand as works explanatory of the accounting method, on the other as tools part and parcel of the method itself. This peculiarity obscures the distinction between the plaintiff as author and the plaintiff as inventor, thus deceptively lending plausibility to the plaintiff's submission that his standing as author can somehow anchor a claim over the accounting system and/or its operation. The SCOTUS thus frames its judgment as an undoing of the confusion of ideas anchoring this overflow, so to speak, of the plaintiff's recognised authorship onto subject matter not recognised under copyright law.

Baker is not an idea/expression case; that is, it is not a case in which the defendant escapes liability because she adopted the plaintiff's idea but did not copy expression. On the contrary, there is no doubt that the defendant copied the plaintiff's forms. Nor is Baker a merger case; that is, it is not a case in which the defendant escapes liability because no copyright obtains. On the contrary, there is no doubt that the plaintiff authored a work, that the forms are subject to copyright as a substantial part of the work, and that, therefore, reproduction of the forms in a rival publication, for example, would infringe the copyright therein. The SCOTUS does not reverse the Circuit Court's judgment by simply asserting its opposite, thus denying in toto that copyright obtains.Footnote ⁵⁷ Rather, the SCOTUS affirms the copyright over the work but refuses its overflow onto the accounting system. The Circuit Court's error involved not the grant of the copyright but the confusion of protection of the forms as a work with protection of the forms as a tool. The Circuit Court got duped by the peculiarity of the facts of the case into granting protection over non-expressive use of the forms. The SCOTUS, by contrast, distinguished non-expressive use of the material form of the work from use of the work as a work. Simply put, the SCOTUS affirmed the uncontroversial and well-settled principle that copyright protects original expression and nothing but original expression. A work of authorship is a mode of conveying meaning, a form of expression. Duchamp's Fountain is certainly subject to copyright, but that gives him no monopoly over any kind of urinal. The expression as expression confers no right over the urinal as urinal. A urinal is not a work. Nothing in use of a urinal can plausibly engage fair dealing considerations.

In Hollinrake, the English Court of Appeal invokes Baker to address and reject a copyright claim over a sleeve chart used for measuring purposes in dressmaking, consisting of a piece of cardboard, curved so as to represent the parts of the arm above and below the elbow, on which were printed words, lines, figures and scales of inches and half-inches. To be sure, Hollinrake does not display the peculiarity distinctive of Baker, whereby the subject matter asserted exhibits twofold significance, on the one hand as a work and on the other as a tool. The plaintiff in Hollinrake does not claim copyright in an explanation of the measuring apparatus but rather in the apparatus itself as a “chart” falling within the meaning of copyright subject matter. The English Court of Appeal denies that the sleeve chart is a chart, or that the words, lines and figures printed on it are copyright subject matter. The words, lines and figures do not explain the measuring apparatus but are rather inseparable from it, both in the sense that the piece of curved cardboard would not be serviceable as a measuring apparatus without them, and also in the sense that the words, lines and figures convey anything intelligible only when printed on the cardboard and thus only as an integral part of the apparatus.Footnote ⁵⁸ We may say that it is as if the words, lines and figures were a lever on a machine.

Unlike Baker, then, there is no copyright of any kind in Hollinrake, and thus no need to affirm the copyright in an explanation while denying copyright in a use of aspects thereof as a tool. Nonetheless, Hollinrake affirms the central proposition that a work of authorship is a mode of conveying meaning, a form of expression.Footnote ⁵⁹ Thus, it follows that (a) a work of authorship describing an art confers no copyright on the art itself, and that, by way of corollary, (b) when, as in Baker, otherwise copyrightable aspects of a description are involved in the application of the art described, the copyright in the description as description remains operative while not overflowing onto the art itself.Footnote ⁶⁰ We may deduce that, had the plaintiff in Hollinrake held a copyright in a description that included verbatim the very words and figures on the sleeve chart, the defendant would have still escaped liability in that his duplication of the words and figures as aspects of the sleeve chart is not a reproduction of copyright subject matter. In a word, copyright subject matter is nothing but original expression as such.

Grasped in light of the concurrent action of sections 3(1) and 5(1) of the Canadian Copyright Act 1985, this means that copyright subsists in a work as a work but not in the non-expressive use of its material form. The critical importance of holding fast the distinction between a work and its material form in section 3(1) is that it reminds us of the elementary section 5(1) proposition that copyright subject matter is originality and that, therefore, non-expressive uses of the material form of the work, such as merely technical uses, are a fortiori not at all uses of copyright subject matter. Copyright law is always already technologically neutral because copyright law has nothing to do with techne. It is about saying, not doing – about conveying meaning, not achieving technical purposes.

In other words, technological neutrality is not a scope but a subject matter problem. It is less about preserving a balance between authors and users in respect of works of authorship in the digital environment than it is about determinations in respect of what gets on the copyright balance to begin with, whether in the digital or any other environment.Footnote ⁶¹ Technological neutrality is but a corollary of originality. It is not some kind of species of fair dealing any more than SOCAN is a case about user rights.Footnote ⁶² Just as subject matter determinations are conceptually prior to scope determinations, so is technological neutrality prior to balancing issues. Any other construal puts the scope cart before the subject matter horse.

IV. By Way of Conclusion

In SODRAC, the SCC dealt with broadcast-incidental copies; that is, copies technically necessary for, on the facts of the case, otherwise lawful (i.e. licensed) broadcasting of works of authorship. The tension between majority and dissenting judgments in the decision will serve to illustrate, by way of conclusion, the critical importance of grasping technological neutrality as a subject matter problem.

The SODRAC majority held that (1) technically necessary reproductions fall squarely and independently within the plain meaning of section 3(1)(d) as actionable reproductions, and that (2) the applicable plain meaning of section 3(1)(d) is upheld in Bishop v Stevens (hereafter, Bishop).Footnote ⁶³ In the result, broadcast-incidental copies attract liability additional to liability pursuant to broadcasting, notwithstanding their being technically incidental to the otherwise lawful act of broadcasting. Liability attendant on the right of communication does not obviate liability independently attendant on the right of reproduction.

To be sure, the broadcast-incidental reproductions in SODRAC are specifically pertinent to digitally driven copy-dependent improvements in broadcasting technology. Imposing liability for broadcast-incidental copies thus extends the reach of copyright law more deeply into the activity of broadcasting than was the case pre-digitally. The upshot is that, while substantively the same activity, digital broadcasting nonetheless generates liability not only as a compensable exercise of the right of communication but additionally, unlike pre-digital broadcasting, also as a compensable exercise of the right of reproduction. Digital broadcasting not only communicates but also reproduces. The SODRAC majority held that the principle of technological neutrality cannot override the plain meaning of the statute so as to preclude liability where it clearly arises. Even if merely incidental, a copy is a copy until and unless the legislature plainly says otherwise. In the view of the majority, the principle of technological neutrality as applied to the facts in SODRAC has a role not in liability determinations but in the valuation, in light of an appropriate distribution of costs and benefits consistent with the copyright author/user balance in the new technological environment, of the licenses required to render digital broadcasting lawful.Footnote ⁶⁴ The SODRAC majority thus relegates technological neutrality to the level of remedial determinations, distant from its import as a fundamental principle in liability determinations pertinent to the core of the encounter between copyright law and digital technology.

By contrast, Abella J.'s dissent formulates the view that the literal reading of section 3(1)d must yield to a purposive reading informed by the post-Bishop SCC enshrining of the fundamental principles of balance (in Théberge and CCH) and technological neutrality (in ESA) in Canadian copyright jurisprudence.Footnote ⁶⁵ Her basic point is that digital broadcasting does not cease to be broadcasting by virtue of being digital. Pursuant to the principle of technological neutrality, the functional equivalence of digital and predigital broadcasting means that broadcast-incidental copies involved in the former are not cognisable as compensable exercises of the right of reproduction. Broadcast-incidental copies cannot be subject to additional liability any more than, for example, increased efficiencies in the method of delivery of copies of works of authorship from one place to another can give rise to additional liability. Hiring a taxicab instead of walking to deliver otherwise lawful copies of works of authorship can have no copyright significance.Footnote ⁶⁶ Thus, even if it involves copying, broadcasting is broadcasting until and unless the legislature plainly says otherwise. By focussing on functional equivalence rather than juridically irrelevant technical distinctions, the principle of technological neutrality preserves the traditional copyright balance in the digital environment.

But Abella J. need not have yielded on the literal meaning of the statutory text. To concede the literal meaning of the statutory text is after all to concede the case. Vast oceans of balance and technological neutrality could not wash away that remarkable concession. Once adopted, the SODRAC majority's version of the literal meaning of the text casts Abella J.'s dissent as an undoing of a prima facie finding of liability to be dislodged by appeal to principles and imperatives external to the text. Abella J. invokes an interpretive structure to negate the gravitational weight of a literal meaning to which she herself accedes. Her judgment appears, on its own terms, less as an unfolding of the meaning of the statutory text than as an effort to deny its application. Bluntly put, Abella J. knows what the text means but now she must tell us why its meaning is not operative. She does not offer us a non-literal meaning. The procedure is unsurprisingly ill-fated. The hermeneutic paraphernalia cannot help but hover, at once wishfully and helplessly, over the encysted literality it seeks to dissolve yet has already granted.Footnote ⁶⁷ Rothstein J. can eclipse the enterprise in a single sentence: “There is nothing in the text, context or legislative history of these provisions (or s. 3(1)) that supports the view that the broadcasting process obviates the fact that broadcast-incidental copies are reproductions under the Copyright Act.”Footnote ⁶⁸

Far more expedient from Abella J.'s point of view – which I find far more persuasive than Rothstein J.'s – is the exegetical path signalled by the phrase “the work in any material form” in section 3(1) at the express core of the Copyright Act 1985. The phrase is the uncontested statutory anchor of the principle of technological neutrality. Noticed less often is that the phrase plainly imports a distinction between the work and its material form, and that, in light of the threshold category of originality in section 5(1), it defines copyright as a right in respect of original expression and nothing but original expression. The phrase warns us away from confusing originality, the subject matter of protection, with its fixation in material form, a condition precedent of protection. The work as a work and not its material form is copyright subject matter. A broadcast-incidental copy is not subject to liability because it is a tool, not a reproduction of original expression. It is a use of the material form but not of the work as a work. The copy-dependent digital environment is but an occasion to render this ever more explicit. Technological neutrality is not some kind of policy-driven interpretive principle seeking to preserve some would-be traditional balance, as Abella J. appears to insist. It is rather an elaboration of originality, thus falling squarely within the constellation of fundamental copyright doctrines comprised of originality, idea/expression dichotomy, merger, fair dealing and the distinction between a work and its material form embedded in fixation as a condition precedent of protection.

In my view, the interesting question in SODRAC is not juridical but historical. It is not how to extricate broadcast-incidental copies from the web of liability but how could we have possibly come to assume, when dealing with the plain meaning of a statute premised on works of authorship, that the subject matter of protection is anything other than what the statute says it is: original expression as such. My point is that a literal reading of the statutory text premised on the distinction between the work and its material form would have permitted a more fruitful analysis of the situation in SODRAC. The majority and dissenting judgments in SODRAC are both examples of a shared failure to grasp the significance of the distinction. In short, neither apprehends technological neutrality as a subject matter problem.

A reading of the statute focused on subject matter would have generated a view along the following lines. Section 3(1)(d) provides that copyright, in relation to a work, includes the sole right “in the case of a literary, dramatic or musical work, to make any sound recording, cinematograph film or other contrivance by means of which the work may be mechanically reproduced or performed”. The question in SODRAC is whether to “make” a broadcast-incidental copy is to make a “contrivance” within the meaning of section 3(1)(d). The mischief addressed is in the making of the contrivance, not in the subsequent performance of the work for which the contrivance “may” or may not be used. The phrase “by means of which the work may be mechanically reproduced or performed” describes a feature of the contrivance, the making of which is the mischief at issue. Thus, for example, making a recording of a musical work infringes section 3(1)(d), regardless of any subsequent use of the contrivance, say a compact disc (CD), for the purpose of performance.

Of course, that a contrivance is something by means of which a work may be performed is not enough to get at the meaning of section 3(1)(d). Otherwise, making a saxophone would meet the description. The meaning of “contrivance” in the 3(1)(d) is elucidated by reference to the instances provided, a “sound recording” and a “cinematograph film”. The making of a CD infringes section 3(1)(d) because, unlike a saxophone, it is a contrivance by means of which the work may be “mechanically” performed. The making of the CD is itself the complete infringement. The CD is a copy of the work. It is independently the wrongful reproduction, regardless of its use or lack thereof in a subsequent performance.

A broadcast-incidental copy, however, does not meet that description. It is not a contrivance by means of which the work “may” be mechanically performed. It is a contrivance by definition used in broadcasting. Being used is what it means for it to be broadcast-incidental. There is no such thing as an unused broadcast-incidental copy, the making of which is a completed act in its own terms. A broadcast-incidental copy is a tool involved in the process or machinery of broadcasting, independently of which it is unintelligible, entirely devoid of meaning, as are the lines and figures on the sleeve chart in Hollinrake, levers on a measuring instrument, not works of authorship or copies thereof. A broadcast-incidental copy is more akin to a key in a saxophone used to perform the work, or to the saxophone itself, than to a CD by means of which the work is mechanically performed. The broadcaster uses the broadcast-incidental copy to broadcast the work like the saxophonist uses her saxophone to perform it. Of course, the broadcast-incidental copy has the peculiarity of resembling a copy of the work, much like the accounting forms in Baker do, but this resemblance can no more give rise to liability under section (3)(1)(d) than can the making of a saxophone. A broadcast-incidental copy is a copy of the material form of the work but not of the work as a work. It is a non-expressive use, and thus not a use in relation to a work within the meaning of section 3(1). We need neither policy-driven imperatives, nor legislative amendments, when originality can do the work for us.