“Obituary piracy” and what it could mean for archival institutions

Earlier this month, a court in Canada delivered a judgment against the operators of a website – Afterlife Network Inc. - which publishes and profits from publishing obituaries and photographs. The Court found that the Defendant’s act of posting the obituaries and photographs authored by the Applicant and other persons, amounted to copyright infringement.

The Court ordered the defendant to desist from further acts of infringement and awarded statutory ($10million) and aggravated damages ($10million) to the Applicant.

Thomson vs Afterlife Network Inc.
The Applicant, Dawn Thomson instituted the action in a representative capacity on behalf of herself and other persons (“Applicants”) who authored respective obituaries and photographs posted by the Defendant on its website without authorisation. The Applicants also sought damages for the alleged infringement of their moral rights in the obituaries and photographs.

Memories...

On the claim for copyright infringement, the Court first determined that the obituaries and photographs satisfied the requirements of originality in that the Applicants, respectively personally authored and chose the obituaries and photographs “using their own skill and judgment, choosing their own words to convey the appropriate message about the life of the deceased person and their funeral arrangements”. Paragraph 34. The Defendant, having posted the obituaries and photographs without authorisation, infringed the copyright of the Applicants.

On the claim for infringement of moral rights, the Court held that moral rights infringement has both a subjective and objective element and that both elements must be present for a claim to succeed. Paragraph 41. While the subjective element requires the author’s own subjective evidence as to how his/her honour or reputation has been affected, the objective element requires “an objective evaluation” based on “public or expert opinion”. Paragraph 43.

The court found that the Applicants satisfied the subjective element by showing that amongst other concerns, they “were mortified that others would think that they were profiting from their bereavement”. Paragraph 46. However, they failed to satisfy the objective element as there was no public opinion or expert evidence provided nor was there any authority that suggests the Court could make such determination of prejudice to honour or reputation without objective evidence. Paragraph 47.

On the claim for a (wide) injunction, the court held that the Applicants needed to show that, besides the works which formed the subject matter of the suit in the first place, the Applicants needed to show that they had other works which the Defendant may likely infringe on. The Applicants only had specific obituaries and photographs in which they own copyright and so the court refused the claim for a wide injunction but granted an injunction to restrain the Defendant from further infringing on the Applicants’ specific works. Paragraphs 49 and 50.

Comment
This case reminds one of some of the arguments put forward to support the establishment of limitation and exceptions for digitisation of archival materials. There are suggestions that most copyright objections to digitisation of copyright-protected archival materials do not stem from copyright perspectives. Instead, possible copyright owners decline consent on grounds privacy and/or require further information on the context of the digitisation project.

Archival materials in that sense are “personal” and “family” documents much like the obituaries and related photographs in the present case. In these circumstances, is the archival institution likely to face copyright infringement suits? What is the likelihood of success or failure of such suits? [In the light of damages of $20million, these are real questions].

Let’s take a look at South Africa.

Depending on the jurisdiction, the originality threshold can be quite low. In Moneyweb (Pty) Limited v Media 24 Limited and Another, the High Court of South Africa held that 4 of the contested news articles did not enjoy copyright protection because those articles failed the originality test. In applying the originality test, the court considered whether the articles were verbatim report of the interview transcripts on which they were based and concluded that it was not evident how much of the article was the writer’s own work or a repetition of what the writer heard. Paragraphs 25, 28, 34 and 39. Based on that test, it is likely that South African courts may find obituaries sufficiently original if the words are the author’s own words. By extension, copyright infringement may be an additional/alternative route (to privacy laws, for instance) to stop “offending” digitisation projects.

Following from this, a copyright infringement claim may succeed in stopping an archival institution from including specific works within a planned digitisation project. But it may not succeed to stop the digitisation project entirely. In the present case, the Canadian court granted injunction to restrain further use of the applicant’s work but not for the other works on the defendant’s website.

For archival institutions, the context of digitisation will heighten or reduce the risk of copyright infringement claim. In the Thomson case, the Applicants were not averse to the obituaries being published. They had in fact sent the obituaries and photographs to the respective funeral homes that handled the burial of their loved ones. What they found reprehensible was the defendant’s actions and how it portrayed them. Where an archival institution’s digitisation project is perceived as having the appropriate context, the risk of copyright infringement claim is likely to be low.

The amount of damages awarded in the present case - $20million - strengthens the argument that archival institutions could face significant damages if they handle archival materials in a manner that is reprehensible to their patrons. The Canadian court did not consider whether the defendant’s use of the obituaries and photographs was fair dealing. It may be assumed that the court considered fair dealing a defence stricto sensu and as such expected that it must be raised by the defendant before it may be considered. The present case was undefended, and the Applicants proved their case on a balance of probabilities. See paragraph 31. However, the Applicants produced evidence to show that the defendant had claimed copyright in the obituaries and photographs they shared and sold other products together with the obituaries. See paragraphs 5 and 62. The court’s consideration and acceptance of this evidence may be construed as an indirect way of considering the fair dealing defence.

South Africa presently has a closed list of activities (research or private study, criticism or review, reporting current events) permissible as “fair dealing” for literary and musical works. See section 12(1) of the Copyright Act. In Moneyweb (Pty) Limited v Media 24 Limited and Another, the defendant (Media 24) raised the fair dealing defence. The South African Court felt it necessary to first consider whether the defendant’s use of Moneyweb’s articles was fair dealing. The outcome of the fair dealing consideration would determine the necessity or otherwise of going into the question of whether the copying was substantial as to be infringing. In the court’s words “it would be fruitless then to engage in a determination as to whether there has been substantial reproduction of an article covered by section 12(8)(a) of the Act”. See paragraph 55 of the judgment in Money web. By extension, the fair dealing defence would only be available to archival institutions if their activities fall within the closed list.

However, if the Copyright Amendment Bill becomes law (or at least the portion proposing an expanded fair use defence), archival institutions may be in a better position. This is especially so where profit-making may not be the goal. The proposed fair use defence (Section 12A) may avail archival institutions which act in the appropriate context – no profit-making, nature of the use, preservation of and access to the collections of libraries, archives and museums; research purposes, etc.

Time will tell.