Principles of Copyright Law – Cases and Materials

NOTE: The same test was applied in Canada for compilations, to reach a

similar result: Tele-Direct (Publications) Inc. v. American Business

Information, Inc. [1998] 2 F.C. 22 (Canada: Federal Court of Appeal).

However, unlike the U.S., the standard of “creativity” required for compilations

has not yet automatically been applied to other categories in Canada:

Hager v. ECW Press Ltd, (1998) 85 C.P.R. (3d) 289 (Canada: Federal Court,

Trial Division)

JUSTICE REED:

The requirement that a work be “original” has been a statutory requirement in Canada since 1924

when the Copyright Act, 1921 ... came into force. That Act was largely copied from the United

Kingdom Copyright Act, 1911. I am not persuaded that the Federal Court of Appeal intended a

significant departure from the pre-existing law. ...

One reason for being cautious about not over-extending the Tele-Directdecision is that it deals

with an entirely different type of work from those in issue in this case [i.e., non-fiction books

about current celebrities – Ed.]. It deals with a compilation of data (a sub-compilation of the

yellow pages of a telephone directory). The appropriate test to be applied when copyright is

claimed for works that consist of compilations of data has been a difficult area. This is because

such works are not likely to exhibit, on their face, indicia of the author’s personal style or manner

of expression.

6. WORKS THAT VIOLATE PUBLIC ORDER

Article 17 of the Berne Convention provides that Berne’s provisions do not

affect members’ rights

to control, or to prohibit, by legislation or regulation, the circulation,

presentation, or exhibition of any work or production in regard to

which the competent authority may find it necessary to exercise that

right.

This provision does not appear to modify what works must be granted

copyright under Berne, Articles 2 and 2bis. Nevertheless, Article 17 allows

governments to take steps to prevent the circulation or exhibition of works that

are considered, for example, offensive to national standards of public policy or

morality.

Whether Article 17 allows courts to refuse to enforce copyrights for reasons of

public policy, morality or illegality, or whether courts may exercise such powers

under national law without offending the Berne Convention, is not entirely clear.

EXAMPLE 1:

Suppose that an author produces a work in breach of an obligation of secrecy
that he owes his employer. The employer may be able to get an injunction to
stop publication of the work if he finds out early enough; if he does not and the
work is widely published, a court may refuse an injunction because there is no
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I. COPYRIGHT: CASES AND MATERIALS