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Professor David Vaver is a Member of IP Osgoode’s Advisory Board and a Professor of Intellectual Property Law at Osgoode Hall Law School.

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Professor Pina D’Agostino is the Founder and Director of IP Osgoode and a Professor of Intellectual Property Law at Osgoode Hall Law School.

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In the recent copyright infringement case of , the plaintiffs — the heirs of the late Thomas P. Kelley who authored The Black Donnellys (1954) and Vengeance of The Black Donnellys (1962) — sued as owners of the works’ copyrights because of a special provision in the . of the Act returns any copyrights that an author assigned during his lifetime to the author’s estate 25 years after his death. Justice McHaffie referred at para. 14 of his judgment to the plaintiffs’ having acquired their rights “by operation of [that section] known as the ‘Dickens’ provision.”

This is not the first time that section 14 has been referred to as “the Dickens provision.” Over 20 years ago, in , Justice Wilson wrote that “[t]his complex statutory framework of reversionary copyright was originally created in England to relieve against hardship suffered by the impoverished families of deceased authors; it is known colloquially as the ‘Dickens’ provision.” Some American and Canadian writings since then have also referred to section 14 that way. The story seems to be that the original reversionary provision in the Copyright Act 1911 (U.K.) (the “1911 Act”), which made its way into the copyright law of Canada and other British dominions and territories shortly afterwards, was enacted following public outrage that the publishers of Charles Dickens’ books were making money off them while the many members of the late author’s family remained destitute.

If true, this would be a good — indeed almost Dickensian — story. It however seems hard to see how the 1911 provision would have helped Dickens’ family. The 1911 Act extended the term of existing copyrights and applied reversion to existing assignments; but all of Dickens’ copyrights had expired by then and the Act did not revive them.

We are curious to know more about this origin story. For one thing, the UK parliamentary debates preceding the UK’s 1911 Act do not appear to mention it; nor do any of the British textbooks on copyright of the period; nor do members of the English copyright bar we have approached know anything about it. Admittedly, the UK repealed reversion in 1956 for future works, but it continued to apply it to then existing assignments, as those familiar with the Redwood litigation from the 1970s will be aware: see e.g., Chappell & Co Ltd v Redwood Music Ltd [1981] RPC 337 (HL) and the parallel proceedings in Redwood Music Ltd v Bourne Estate (1995) 63 CPR (3d) 380 (Ont SC), affd (1999) 84 CPR (3d) 414 (Ont CA).

Can any IPilogue reader shed light on whether section 14 truly deserves the name of “the Dickens provision”? Does the nomenclature rest on fact or folklore?

Please reply in the comment section below or directly to dvaver@osgoode.yorku.ca or gdagostino@osgoode.yorku.ca. Any insight gratefully received.

The post What the Dickens? Fact or Folklore? appeared first on IPOsgoode.

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Shawn Dhue is an IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.

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The (“Winkler”) decision evokes the image at the beginning of a movie that states “Based on a true story….” Directors tend to state this at the beginning of a film to authenticate it. However, it is hard to imagine a director ever regretting this statement after the movie’s release. The late , one of Canada’s most famous true crime authors, perhaps would have felt some regret after the outcome of Winkler.

In Winkler, the Federal Court of Canada looked at the infamous of Lacun, Ontario. The eight-membered family is known for winning “.” Or did they win? Was it eight on eighteen? Did they ever actually fight? Justice McHaffie decided that none of the answers to those questions matter. The Court reaffirmed the almost century-old principle that copyright protection does not apply to facts (), but with a twist. Justice McHaffie stated: “an author who publishes what is said to be a nonfiction historical account cannot later claim the account is actually fictional to avoid the principle that there is no copyright in facts” [emphasis added].

In 2004, Nate Hendley and James Lorimer & Company Ltd, the defendants, released . The book recounted the history of the Donnelly family and the defendants admitted to having used Kelley’s books, and , as supporting sources. However, the plaintiffs, John Winkler and the estate of Theresia Winkler by her estate trustee, John Winkler, claimed that the books were very much fiction or mistaken. They believe then that the books are copyright-protected material. The plaintiffs' expert evidence states that The Black Donnellys is actually “” and mistaken.

The allows someone to protect works of nonfiction or fiction by way of copyright: “copyright protection does not extend to ‘facts or ideas’ but to the original ‘expression of ideas’” (; ; ). Nevertheless, the crucial point of Winkler is not the fact (pun not intended) that the books were fiction, but that Kelly classified his books as works of historical nonfiction. In other words, a person cannot claim what they are saying is factual and later retract their claim to reap the benefits of copyright.

This decision protects individuals from being misled by effective marketing. Nevertheless, Justice McHaffie also rooted his judgment in the longstanding public interest policy of the non-protection of facts. Canadian researcher and law professor, , turns to Justice Orde in to explain this notion. Scassa states that facts and information put forth as the truth should be available to the public to be “tested, challenged, verified, or disproved”. This notion is worth promoting, as society needs to test facts and information to progress and evolve.

While this may be new ground in Canada, the UK decision of concluded similarly to the Federal Court’s decision in Winkler and also reflected Scassa’s notion. In this case, the defendant’s fiction novel substantially copied the plaintiff’s work of historical non-fiction. In his decision, Brightman J stated:

“The author of a historical work must, I think, have attributed to him an intention that the information thereby imparted may be used by the reader, because knowledge would become sterile if it could not be applied. Therefore, it seems to me to be reasonable to suppose that the law of copyright will allow a wider use to be made of a historical work than a novel so that knowledge can be built upon knowledge” [emphasis added].

However, the judge ruled against the defendant, as the infringement was flagrant and exceptional. The defendant admitted to at least fifty instances of deliberately copying the language used and historical characters and significant events. .

The Winkler decision comes out at a time when society is dealing with what one would call “.” The Court made a critical decision to warn writers and artists alike that the law will not allow the industry to profit from false information passed off as facts. The decision comes at a time in history when anyone, including politicians and spokespeople can disseminate information on topics such as human rights, COVID-19, and other vital discussions. As of now, the plaintiffs have not indicated any plan to appeal the decision in Winkler. What is clear is that the courts will try to protect the public from the spread of fake news.

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