Cindy, Incidentally – The “Incidental Inclusion” Exception in Canadian Copyright Law

Bob Tarantino is a lawyer in the Entertainment Law Group of Heenan Blaikie LLP. He holds graduate degrees in law from Osgoode Hall Law School and the University of Oxford.

A filmmaker films an individual walking down a city street, past a convenience store.  The camera captures, among others, two things: an advertisement consisting of the familiar, stylized Coca-Cola symbol hanging in the window, and the faint, but audible, strains of a popular song drifting from inside the store as an unseen customer opens the door.  Concerned, the filmmaker speaks with an entertainment lawyer and asks whether there’s anything to worry about.  From such a simple fact scenario rises one of the more vexing questions in Canadian intellectual property law.

The lawyer should identify three potential issues: (a) the copyright-driven needs to obtain licenses for (i) the reproduction of the song (a synchronization license would be needed from the music publisher(s) which owns copyright in the composition, and a master use license would be needed from the owner, likely a record company, of the copyright in the sound recording) and (ii) reproduction of the artistic “work” which comprises the Coca-Cola symbol, and (b) the trade-mark related rights in that same symbol.

But surely, the filmmaker might respond, something is amiss.  I didn’t intend to incorporate those items into the shot, it was happenstance – and anyways, the symbol appears in the background, for less than five seconds on-screen, and you can just barely make out the chorus of the song.

Unless the lawyer can provide the answer of “don’t worry about it”, the filmmaker faces increased costs (to say nothing of the costs involved in consulting the lawyer in the first place), since the options are to: (i) re-shoot the scene; (ii) digitally alter the film and its soundtrack so that the symbol is rendered unrecognizable and the song is not audible; or (iii) approach the owners of the rights in the items and request permission to use them in the film, a prospect which may take more time than the filmmaker has available or require the payment of a license fee in exchange for permission.

Is it possible for the lawyer to get to a “don’t worry about it” answer under Canadian copyright law?  A traditional response would likely have been “no” – while there might be a strong argument for saying that the trade-mark rights in the ad are not infringed by the depiction in the film (on the basis that the depiction does not constitute a “use” pursuant to Section 19 of the Trade-marks Act), and perhaps a plausible argument that a snippet of a song does not constitute copying of “a substantial part” of a work (for purposes of Section 3 of the Copyright Act), it is difficult, if not impossible, to make any similar arguments in respect of the copyright in the symbol. 

The difficulty is compounded by the fact that the matter is not merely a legal question, but interfaces with issues of insurance coverage: distributors will require any film intended for commercial release to be covered by “errors and omissions insurance”  – and the position of E&O insurer’s counsel has generally been viewed as requiring clearance, adopting a strict line with respect to high-profile marks and the use of songs.  In short, if you want to use a copyrighted work, get clearance for it.  Any potential uncertainty in the legal conclusion is modulated by the inherently risk-averse nature of insurance providers, who are eager to avoid even the possibility of an adverse claim.

However, there is a dissenting view, one which is increasingly being vocalized, that there is a provision which enables the “don’t worry about it” conclusion: Section 30.7 of the Copyright Act, referred to as the “incidental use” or “incidental inclusion” provision.  The statute provides as follows:

It is not an infringement of copyright to incidentally and not deliberately

(a) include a work or other subject-matter in another work or other subject-matter; or

(b) do any act in relation to a work or other subject-matter that is incidentally and not deliberately included in another work or other subject-matter.

At first glance, Section 30.7 is drafted in a manner which bears the indicia of many of the exceptions to copyright infringement: it is not only slightly confusing (clause (b) is meant to ensure that not only is the “initial” incidental inclusion shielded from a claim of infringement, but so is a reproduction of the work into which the incidental inclusion was inserted), it is drafted as a narrow exception of which it appears quite difficult to avail oneself.  The section deems inclusion of a work (such as a composition) or other subject-matter (such as a sound recording) in another work (such as a film) to be non-infringing if and only if the inclusion is done both “incidentally” and “not deliberately”.  Neither term is defined and the section appears not to have been the subject of express judicial consideration. 

It remains somewhat unclear what the purpose of the section is and how a defendant could avail themselves of its protection.  Normand Tamaro’s commentary on the section in his 2010 Annotated Copyright Act is essentially a series of puzzled rhetorical questions (“What will be considered both incidental and not deliberate?”).  David Vaver’s comment on the section (Vaver, Copyright Law (2000) at 180), though initially positive, concludes that the threshold requirements “narrow the scope of exemption so much that its practical utility seems doubtful”.  Tony Duarte comments that the wording of the section “greatly restricts the circumstances in which … [it] may be relied upon” (Duarte, Canadian Film & Television Business & Legal Practice, 2:20.80(f)).  In the context of commercial filmmaking (as opposed to news coverage, which may involve much shorter timeframes from “shooting” to broadcasting), it becomes difficult to envision when an inclusion will not be “deliberate”, since all footage will have been carefully considered and weighed against alternative scenes or takes.  Virtually every scene could be re-shot from another angle to exclude works which are present “in the background” – how then could virtually any inclusion in a commercial film not be considered “deliberate”? 

Despite the limitations of the wording of the statute, some commentators are becoming increasingly confident in asserting that the incidental inclusion exception has more potential value than is generally appreciated.  Howard Knopf, in The Copyright Clearance Culture and Canadian Documentaries – A White Paper On Behalf of the Documentary Organisation of Canada (2006) describes Section 30.7 as “very useful” for documentarians, and encourages filmmakers and their advisers to familiarize themselves with it.  At a February 18, 2009 panel discussion at the University of Ottawa featuring legal academics (promo here; audio here; video here – see the 1:00:00 mark), a number of panelists offered an enthusiastic and expansive interpretation of the availability of the clause.

As noted above, no Canadian court has considered Section 30.7.  Guidance from other jurisdictions is limited.  The comparable Australian provision (Section 67 of the Copyright Act 1968) only requires that the inclusion be incidental, but its scope is limited to artistic works.  In the United Kingdom, Section 31 of the Copyright, Designs and Patents Act 1988 only requires incidental inclusion for most works, but also provides that a “deliberately copied” musical work cannot be sheltered under the provision.  In New Zealand, Section 41 of the Copyright Act, 1994 mimics the wording of the UK provision.  The United States has no statutory incidental inclusion defence, though defendants have tried to advance either de minimis or “fair use” defences, sometimes successfully (Amsinck v Columbia Pictures Industries Inc. (1994), 33 USPQ2d 1131 (SDNY); Jackson v Warner Bros. Inc. (1997), 44 USPQ2d 1603 (ED Michigan)) and sometimes not (Ringgold v Black Entertainment Television Inc. (1997), 44 USPQ2d 1001 (CA 2d Cir). 

Incidental inclusion, then, remains but a half-formed opportunity: there is debate over its scope and utility, which is doomed to inconclusiveness in the absence of a definitive judicial pronouncement to guide interpretation.  The environment is not promising for a case which determines the contours of the provision: film and television budgets are perpetually strapped, and neither producers nor their insurers are likely to have extra cash lying around for what might be a quixotic court battle.  It might fall, then, to industry associations to fund an initiative which addresses these unanswered questions.