Court headnote

Massie & Renwick, Limited v. Underwriters' Survey Bureau Ltd. et al.
Collection
Supreme Court Judgments
Date
1940-01-19
Report
[1940] SCR 218
Judges
Duff, Lyman Poore; Rinfret, Thibaudeau; Davis, Henry Hague; Kerwin, Patrick; Hudson, Albert Blellock
On appeal from
Canada
Subjects
Intellectual property
Decision Content
Supreme Court of Canada
Massie & Renwick, Limited v. Underwriters' Survey Bureau Ltd. et al., [1940] S.C.R. 218
Date: 1940-01-19
Massie & Renwick Limited, (Defendant) Appellant
and
Underwriters' Survey Bureau, Limited, and Others (Plaintiffs) Respondents.
Present:—Duff C.J. and Rinfret, Davis, Kerwin and Hudson. JJ.
ON APPEAL FROM THE EXCHEQUER COURT OF CANADA
Copyright—Action for infringement of copyright and conversion of infringing copies—Copyright in fire insurance plans and rating schedules—Ownership of copyright—Period of limitation established by Copyright Act not a bar to relief where infringement is accomplished by fraudulent act of defendant—Criminal conspiracy—Disclosure of authorship of the works—Unpublished works—Author not identified—Copyright Act, R.S.C., 1927, c. 232.
The action is one for infringement of copyright, and conversion of infringing copies in. fire insurance plans and rating schedules. In 1883, the Canadian Fire Underwriters' Association, an unincorporated body, was formed by the association of a number of fire insurance companies carrying on business in Ontario and Quebec, all the members of that Association at the date of the action being added as plaintiffs to the Underwriters' Survey Bureau Limited, a Canadian corporation incorporated in 1917. Prior to 1901, the fire insurance business in Canada was carried on under the minimum tariff system of rating. In 1900, or shortly afterwards, the Association decided to adopt the system of "rating schedules" for all buildings in protected areas, with the exception of residential risks, which remained subject to the minimum tariff system. In this system, formula known as rating schedules, which are applied to individual buildings, must be arrived at and expressed with precision. These specific rates are recorded on cards or books, which are issued to members and members' agents only. From the beginning, 'the Rates Committees of the Association had charge of all matters connected with rates. According to the constitution of the Association of 1914, it was provided, inter alia, that all then existing members of the Association and companies there-after becoming members were binding themselves, by signing a copy of constitution and by-laws, to observe same; and that the member, who may withdraw, was bound to release, or "forfeit," " any right or claim to any portion of the property or assets of the Association" and return to it all card ratings and specific tariffs received from the Association, rating schedules and manuals not being placed in the hands of the agents but remaining in the hands of the officers of the Association. The affairs of the Association are administered by officers elected annually by the members, and the expenses are met by an annual assessment upon all the members proportioned in each case to the premium income of the member for the year. At the end of 1917, or the beginning of 1918, the Plans Department of the Association was taken over by the appellant, the Underwriters' Survey Bureau Ltd., a company incorporated for that purpose whose shares were held in trust for the members
of the Association and its directors were officers of the Association. The plan committee of the Association, constituted in 1917, was charged with the duty of transacting the common business in respect of plans and with conducting the business of the Bureau. Consider-able sums of money derived from the contributions of the members of the Association to the common fund were spent in obtaining the necessary information for constituting the rating schedules and other material and in the actual production of the material itself, which material was intended for the exclusive use of the members of the Association. As to the plans, those produced by the plan committee prior to the incorporation of the Bureau and those made afterwards by the Association up to the 1st January, 1924, were delivered to the Bureau with the intention that they should be the property of the Bureau, i.e., the legal ownership should be vested in the Bureau. There were also two classes of plans other than that made by the Bureau after the 1st of January, 1924: first, plans, the copyright to which were registered in the name of Charles Edward Goad, who died in 1910; and, second, plans, the copyright to which was registered in the name of Charles E. Goad Company; and the respondents claim title to these plans under assignment by the Toronto General Trusts Corporation, executors and trustees of the will of Charles Edward Goad, through the members of the firm Charles E. Goad Company and under a further assignment in 1931 from the Charles E. Goad Company to the Bureau. A large number of the Goad plans were partially or completely revised and reprinted by the salaried employees of the Survey Bureau, some prior to the assignment of the Goad copyrights in 1931 and some subsequent to that. The respondents alleged that the appellant, not a member of the Canadian Fire Underwriters' Association, authorized others to make copies or reproductions of the plans and rating schedules and converted such to its own use. The appellant denied respondents' title to copyright to the plans produced by C. E. Goad and claimed by respondents to have been acquired by assignment from the C. E. Goad Company in 1931. The appellant further pleaded that the acts of the respondents in withholding from the appellant and others. copies of the works in question constituted a combine and conspiracy within the meaning of the Combines Investigation Act, R.S.C., 1927, c. 36, and the Criminal Code, R.S.C., 1927, c. 36, s. 498; that the respondents acquiesced in the alleged infringement and conversion and are guilty of laches, and that the period of limitation applicable to such actions is a bar to relief.
Held that the appeal should be allowed in respect of the rating material brought into existence after the first of January, 1924, and in other respects dismissed[1].
The "rating material," designating what were known as rating schedules or manuals and rate books, minimum tariffs and specific ratings but excluding the plans, was the property of the members of the Association at the date when the Copyright Act of 1921 came into force on the 1st of January, 1924. These members were the owners, not only of the material itself, but of the common law, incorporeal, exclusive right of reproduction and became, by force of the statute (section 42 in the schedule), the owners of copyright in that material. Material of that character was subject-matter for copyright and, not being published, the exclusive right of multiplying copies of it, or of publishing it, was a right which the common law, prior to the statute of 1921, gave primarily to the authors of it. As to such material produced after the statute came into force, the respondents have not adduced sufficient evidence to establish a title to copyright in it. The members of the Association are all incorporated companies and they or any one of them cannot be an author within the meaning of the Copyright Act. Any one or all of them, that is to say, all the members of the Association at any given time, could be the owner or joint owners of copyright, but they could acquire copyright only in one of two ways,-either by assignment by some person having a title to the copyright or by one of the ways mentioned in. the proviso to section 12 of the Act. As to the ground that the present case comes within subsection (b), the respondents must, in order to succeed, show that the material in respect of which the question arises was made "in the course of his employment" by a person or persons "under a contract of service or apprenticeship " with the respondents or some of them, But from the evidence it must be inferred that this material was produced by employees in the course of their employment under a contract of service with the members of the Association for the time being. And there is no evidence as to the practice in relation to the contracts under which the employees of the Association were engaged or in relation to the terms of their engagement. It is not a mere abstract possibility, but a practical possibility, that for convenience some form of arrangement was resorted to by which there was no direct contractual bond between the members of the Association and the employees, or that in. any case the work was done by persons who were independent contractors. As to plans: The plans copyrighted by Charles Edward Goad in his lifetime and those copyrighted by the Charles Edward Goad Company passed to the Underwriters Survey Bureau Ltd. by the deeds of transfer and assignment produced at the trial. As to nine plans made by the plan department of the Association in 1911 and 1917, copyright was vested by force of the Copyright Act of 1921, s. 42, in the members of the Association at the date when the Act came into force, i.e., on the first of January, 1924.-Copyright in the revisions of the Goad plans vested in the Bureau in virtue of the fact that these revisions were executed by the salaried employees of the Bureau in exercise of their functions as such. As to plans and revisions of plans made by the Bureau after the statute of 1921 came into force on the 1st of January, 1924, these having been made by the salaried employees of the Bureau, the title vested in the Bureau in virtue of section 12 (b)-As regards the copyright in the plans produced by the Bureau, including the revisions of the Goad plans, section 20 (3) (b) (ii) applies. Prima facie the legend "Made in Canada by the Underwriters' Survey Bureau Ltd." implies proprietorship and such legend is found on these plans: the prima facie case has not been met.
Held, also, as to companies which had ceased to be members of the Association and were not parties plaintiffs at the commencement of the action, their interest in the copyrights was a bare legal interest since, on ceasing to be members of the Association, they ceased to have any beneficial interest in such copyrights and the plaintiffs, as part owners, were entitled to protect their rights by suing for an injunction and for damages. Lauri v. Renad ([1892] 3 Ch. 402); Cescinski v. Routledge ([1916] 2 K.B. 325) and Dent v. Turpin (2 J. & H. 139) ref.
Held, also, as to tangible chattels including infringing copies, companies on ceasing to be members ceased to have any joint or several right of possession in. any of the common property and the plaintiffs were, therefore, entitled 'to maintain trover or detinue in respect of such chattels.
Held, also, as to the question of the Statute of Limitations, that that was ample evidence in support of the conclusion of the trial judge that there had been fraudulent concealment within the meaning of the rule; with the consequence that the limitation period began to run only on the discovery of the fraud, or at the time when, with reasonable diligence, it would have been discovered. Therefore, the period of limitation established by the Copyright Act is not a bar to the relief claimed by the respondents.
Held, further, on the question of criminal conspiracy: if the plaintiffs in an action for the infringement of copyright are obliged, for the purpose of establishing the existence of, and their title to, the copy-right to rely upon an agreement and that agreement constitutes a criminal conspiracy, and their title rests upon such agreement and upon acts which are criminal acts by reason of their connection with such an. agreement, then it would be difficult, on general principles to understand how such an action could succeed; but, in the present case, the conclusion of the trial judge, negativing the existence in fact .of a criminal conspiracy is right.
Held, further, as to the appellant's contention that the authorship of the work cannot in. the case either of the plans or of the rating materials be ascertained; that, according to the provisions of section 20 (3) of the Copyright Act, the statute does not contemplate disclosure of authorship as a necessary condition of success in. an action for infringement; but the provisions of that section do not go as far as creating a presumption that the name of the Association on the rating material should be regarded as the name of the publisher. As already stated, all the members of the Association being bodies corporate, none of them could be an author within the contemplation of the statute; and it cannot be found as a fact that the name Canadian Fire Underwriters' Association in these manuals, rate-books and other rating material is a name which answers the description of the statute, namely, that " a name purporting to be that of the * * * proprietor of the work is printed thereon in the usual manner."
Held, also, that, in the case of unpublished works (where the proprietor is shewn to have acquired a common law right prior to the Copyright Act of 1921 by evidence establishing facts requiring an inference that the work was done for the plaintiff and that the intention of all parties concerned in the production of the work was that the common law right should vest in him) the statute plainly contemplates the protection of that right; and the only possible protection is the recognition of the substituted copyright given by the statute. It would be then merely a matter of evidence: the ownership of the common law right must rest upon established facts and these facts can be proved by inference as well as by direct evidence.
Held, further, as to the duration of the copyright where that comes in question, that, if the owner of it cannot identify the author, the duration of it must be restricted to the period of fifty years from the date when the copyright or common law right, as the case may be, came into existence.
Judgment of the Exchequer Court of Canada ([1938) Ex. CR. 103) varied.
APPEAL from the judgment of Maclean J., President of the Exchequer Court of Canada[2], maintaining with costs an action for infringement of copyright by the appellant against the respondents in respect of certain works known as fire insurance rating material and fire insurance plans.
The material facts of the case and the questions at issue are fully stated in the above head-note and in the judgment now reported.
W. N. Tilley K.C., O. M. Biggar K.C. and Christopher Robinson for the appellant.
J. A. Mann K.C., W. D. Herridge K.C. and A. M. Boulton for the respondents.
The judgment of the court was delivered by
THE CHIEF JUSTICE: In 1883 the Canadian Fire Underwriters' Association was formed by the association of a number of fire insurance companies carrying on business in Ontario and Quebec.
Prior to 1901, the fire insurance business in Canada was carried on under the minimum tariff system of rating. Territory in which the companies were carrying on business was divided into districts. For each district a minimum tariff of rates was drawn up in which the premiums for various defined classes of risks were quoted. These were placed in the hands of the agents and of the member companies.
In 1900, ,or shortly afterwards, the Association decided to adopt the system of " rating schedules " for all buildings in protected areas with the exception of residential risks, which remained subject to the minimum tariff system. In this system, formulae known as rating schedules, which are applied to individual buildings, must be arrived at and expressed with precision. Speaking generally, in large cities, and many lesser communities, a specific rate is separately worked out for each building and is tabulated in anticipation of applications for insurance in respect of that building.
These specific rates are recorded on cards, in the case of a large city, and in books in the case of smaller municipalities. The rate cards and books are issued to members and members' agents only. The specific rates are kept up to date by new cards or slips pasted in the rate books.
From the beginning, the Rates Committees of the Association had charge of all matters connected with rates.
The operation of the system of rating schedules is explained by the witness Dixon:
Q. Just explain to the court how towns, cities and villages became specifically rated?
A. We will take, say a town A.‑it does not matter whether we call it a village, town or city. They put in some fire protection‑it may be fire pumps and mains and hydrants, and provide a certain amount of hose‑a fire station, and some firemen. It may be a gravity or pumping system. They notify us that 'they have carried out these improvements and that they now have some protection.
The first thing we do is send down our water works inspector. He visits the place and checks over all the protection that is provided. He also checks over street widths and congestion, and construction conditions generally. He 'comes back to the office and writes a very elaborate report of that, so that we can tell exactly what that municipality has.
That report is sent to the municipality, by the way, said it has in it recommendations for further improvements and how to expand the system that they have.
His report comes, or it did, from the C.F.U.A. to the rates committee again, and they went over it very carefully and would decide that in view of the protection provided there we would effect a certain basic rate or key rate for the beginning of our schedule rating in that municipality. They would also say to the plans committee, "We desire to specifically rate town A. Kindly see to it that a plan of town A is made and working sheets sent to the C.F.U.A. as soon as possible."
We could not start in to make the inspection until that plan was made, because our whole schedule rating system depends upon our plans. We have in. that specific tariff our black numbers, and our numbers in the specific tariff must absolutely correspond to the numbers that the agent and the company have; otherwise they would not know what rate to apply. So that either Goad or ourselves or the Underwriters' Survey Bureau, as the ease may be‑depending upon the time that the work was done‑would send their surveyors to the municipality and build up a plan.
And while they were collating that to send out to the company members they would send us what we call a working sheet. That has just a cheaper binding on it, so that our inspectors can roll it under their arm and fold it up and take it to the municipality with them. And they go into each one of those risks, in the municipality. They go down one street and up the next, and make a report of every risk of a mercantile nature in that place. That survey consists of all the details of construction, occupancy, exposure and private protection that the assured may have. He may have extinguishers, fire pumps and hose, and so on, for all .of which he would be entitled to a credit off his rate.
They come back and they have a plan and spread it out in front of them, and they see on each one of these risks-each building is called a risk in the fire insurance business-they identify that survey with the marking on the plan. In other words, let us say it would be block 5, sheet 2, No. 62 Main Street, town A. And when a tariff goes out to the companies the agent writes in and says that
my assured, Number so and so, 62 Main Street, block 5, sheet 2, of the town of A, desires so much insurance on his household furniture,
or his barber shop stock, or whatever it is he wants to insure; and the company simply goes to work and takes their tariff, and looks up block 5, 62 Main Street, and there it is. And they see it is a candy store, let us say, so they know the occupancy must have changed. Then they take it up with the agent. But if it is a barbershop when the inspection is made and is still a barbershop, they know the rate that is to apply. So that the plan and the rate identify one another.
His Lordship: But the rate is never put on the plan?
A. No, sir.
Q. That would be in the rate book?
A. Yes, sir.
Q. But there is a means of identifying all the particular properties on the plan?
A. Yes.
It will be convenient to use the term "rating material," which was employed on the argument, as designating what are known as rating schedules or manuals and rate books, minimum tariffs and specific ratings. Except in the case of minimum tariffs, plans are an essential part of the rating machinery but, for the purpose of convenient discussion, the term " rating material" will embrace the matters just mentioned and then only.
Before proceeding to consider the rights in controversy, it is convenient to explain the constitution of the Canadian Fire Underwriters' Association.
In the constitution of 1914 the names of the existing members of the Association are set out and it is prescribed, by one of its provisions, that all existing members of the Association and companies thereafter becoming members, shall sign a copy of the constitution and by-laws; and it is declared that by this signature a member binds itself to observe the constitution and by-laws.
The constitution also provides that a member may with-draw on giving notice to that effect but that such withdrawal shall not take effect or release the member from his agreement to observe the constitution and the by-laws until the expiration of three months from the date of the notice.
Upon withdrawal, the withdrawing member releases, or "forfeits," as the word is, " any right or claim to any portion of the property or assets of the Association," and returns to the Association of all card ratings and specific tariffs received by it from the Association. Rating schedules and manuals are not placed in the hands of the agents. They remain in the hands of the officers of the Association. Plans, as we shall see, are dealt with as the property of the Underwriters' Survey Bureau, an incorporated company, which performs the functions of the. plan department of the Association under the control and supervision of the Plan Committee.
The members of the Association meet annually, semi-annually and at special meetings called at the discretion of the president or the executive committee, or upon requisition by a specified proportion of members.
At annual meetings the members elect a president and two vice-presidents, one for each branch, Ontario and Quebec. They also name certain committees, including an executive committee, a plan committee and rates committees. The members of the executive committee are elected for two years and retire in rotation yearly.
This committee has a general authority to transact any business which the members of the Association can trans-act, excepting the amendment of the constitution and by-laws and the forfeiture of membership; and the constitution declares the intention that the committee shall dispose of all matters except those which the committee may consider it desirable to reserve for submission to the Association.
One of the secretaries is required to attend the meeting of the committee and keep the minutes which are printed and distributed to all the members of the Association.
The constitution formally declares that the members of the Association in general meeting are superior to all committees and constitute a final court of appeal.
The constitution also provides for the election by the members in general meeting of certain salaried officers, ‑a permanent chairman of the executive committee and two secretaries, one of whom has an office in Montreal and the other in Toronto, where the business of the respective branches (Quebec and Ontario) is transacted. One of these secretaries is named as treasurer.
The secretaries are "in their respective jurisdictions" the chief executive officers of the Association, have the general supervision of its work and of all its employees and are directly responsible for the management of their respective offices.
The current expenses of the Association are met by an annual assessment upon all the members proportioned in each case to the premium income of the member for the year. Interim assessments are made quarterly based upon the income of the previous year, an adjustment being made when the amount payable by each member has been accurately ascertained. Each member, in addition, pays for the revision of any rating material and for the revision of tariffs made for it at the cost of the labour involved.
The assessment is made under the authority of the members of the Association in general meeting by the treasurer and is paid to the treasurer who submits to the annual meeting a printed statement of the previous year's expenditure and its apportionment audited by a chartered accountant appointed by the Association. There is a bank account at each of the branches, Montreal and Toronto, and all monies received are deposited in that account and it is the duty of each of the secretaries to defray the expenses of his branch. It is the duty of the secretary, who is the treasurer, to transfer to the account of the other branch sufficient funds to enable this to be done. All payments are made by cheque on one of these accounts, signed by the president, or a vice-president, and the treasurer or the other secretary, according to the account upon which the cheque is drawn.
At the end of 1917, or the beginning of 1918, the Plans Department of the Association was taken over by a company incorporated for that purpose under the Dominion Companies Act, the Underwriters' Survey Bureau, Ltd., the shares being held in-trust for the members of the Association. The plan committee of the Association, which was constituted in December, 1917, under an amendment to the constitution, was charged with the duty of transacting the common business in respect of plans and with conducting the business of the Underwriters' Survey Bureau, Ltd. We shall have to discuss in greater detail the business of the Bureau later.
I put aside the consideration of the plans for a moment and discuss the rating material so-called.
Considerable sums of money derived from the contributions of the members of the Association to the common fund were spent in obtaining the necessary information for constituting the rating schedules and the other material mentioned and in the actual production of the material itself. This material was intended for the exclusive use of the members of the Association. There can be no doubt, I think, that, subject to the provisions of the constitution, the property in it was (as was all the common property) vested in such members for the time being. I think there can be no doubt that material of that character was subject matter for copyright and, not being published, the exclusive right of multiplying copies of it, or of publishing it, was a right which the common law, prior to the statute of 1921, gave primarily to the authors of it. The principle laid down by Lord Brougham in Jefferys v. Boosey[3] applies.
The right of the author before publication we *may take to be unquestioned, and we may even assume that it never was, when accurately defined, denied. He has the undisputed right to his manuscript; he may withhold, or he may communicate it, and, communicating, he may limit the number of persons to whom it is imparted, and impose such restrictions as he pleases upon their use of it. The fulfilment of the annexed conditions he may proceed to enforce, and for their breach he may claim compensation. I do not think section 22 of the statute of 1875, which relates only to printing and publishing, supersedes the common law right to prohibit other dealings with unpublished documents.
As regards the particular material with which we are concerned, that produced for the Association prior to the date when the Copyright Act of 1921 came into force, it was, as has been said, produced for the exclusive use of the members of the Association who considered it of fundamental importance that this right of exclusive user should be jealously guarded and, it must have been well understood that, not only the property in the material itself, but the ownership of the incorporeal right described by Lord Brougham should be vested exclusively in the members of the Association.
It is important to notice that at this moment we are considering only the common law right of the author, the author's employer and the author's assigns, to control the use of unpublished documents, the right so vividly described by Lord Brougham in the words just quoted.
It is the contention of the respondents that this right in respect of this rating material is vested, as to the legal property in it, in the members of the Association for the time being and it is said that, on the 1st of January, 1924, when the Copyright Act of 1921 came into force, the property, not only in the rating materials themselves as physical things was vested in the members of the Association at that moment, but also this incorporeal right in relation to these materials.
It is not necessary, I think, to go further back than the constitution of 1914 because, as we have seen, the members of the Association at that time contracted with one another in the terms of the constitution and by-laws, and the Association proceeded from that time on to work under that constitution and those by-laws as amended from time to time; the power to amend being vested by the constitution in the members of the Association in general meeting acting by a two-thirds majority.
Now, I think the only fair implication from the pro-visions of the constitution is that the legal title to the common property is vested in the members of the Association for the time being. The fluctuating body for which the name was a description in fact was not a entity known to the law and not capable of legal ownership of such property. There is no express provision for a board of trustees; and although the shares of the Survey Bureau are held by trustees for the Association, we have no information who these trustees are or how they are appointed.
The phrases used are "the property of the Association "and" the assets of the Association " and I think the reasonable meaning of these phrases is that which I have indicated. The treasurer and the secretary who is not the treasurer, as well, perhaps, as the president and vice-president who are authorized to sign cheques with one of the secretaries have, no doubt, a special property in the funds of the Association and that may be so also with regard to the executive committee which possesses almost unlimited powers of administration. But the general property of the common assets is, I think, in the members for the time being, subject, of course, to the provisions of the contract under which they are associated together.
Primarily, the incorporeal right we are considering is the right of the author and, while I do not suppose a corporation could be an author in the sense of the rule, still these incorporated companies, who were the members of the Association during the period with which we are concerned, could acquire title to the incorporeal right by assignment from the author and I think also through the authorship of an agent or servant or of an independent contractor, employed to produce a work in respect of which, in ordinary circumstances, the author would be invested with the right.
It is clearly settled now, by the authority of In re Dickens[4] that the author, in transferring the property in his manuscript, does not thereby necessarily assign the incorporeal right.
But I think, having regard to the considerations just mentioned, it is a legitimate inference that it was well understood by everybody that this rating material was produced for the exclusive use of the members of the Association and, consequently, that in the members of the Association vested the sole and exclusive right of multi-plying copies. The evidence does not disclose the practice of the Association in respect of the terms under which the persons, inspectors and others, were employed for the production of these materials. Under the constitution I have no doubt it was competent to the executive committee, if not to the secretaries, to authorize the employment of persons for such purposes under a contract which would be a contract of service between the members of the Association for the time being and an employee, or a contract of agency, or a contract under which the employee would be an independent contractor. Whether the executive committee could pledge the personal credit of the members of the Association is really immaterial. In practice such a question could hardly arise and, at all events, it is of no importance here.
These materials were produced and the cost of their production was paid for out of the common fund and whether the persons, who, if they had produced them for themselves, would have been the authors, were employees under a contract of service with the members for the time being, or agents under a contract of agency for the members for the time being, or engaged as independent con-tractors under a contract with the members for the time being, or whether the practice of the Association was to contract through one or more of its permanent officials, the treasurer for example, in such a manner as not to give rise to contractual relations with the members themselves, is really of no importance because, whatever was done, was done for the members and paid for with their money.
The materials themselves when produced and in the possession of their officers were in the possession of the members and any rights acquired by any permanent official as the result of work done under contracts with third persons, the fruits of such contracts, would be acquired for the members and would be the rights of the members. I think this results from an application of the reasoning of Maule J. in Sweet v. Benning[5] in his judgment at page 484 and arguendo at pp. 468 and 475, as well as from the reasoning of Lord Halsbury in Lawrence v. Aflalo[6] and the judgment of Bowen L.J. in Lamb v. Evans[7]. The immediate question under consideration in these cases was the application of section 18 of the Copyright Act of 1842, but the reasoning seems to me to be applicable to the common law right.
Mr. McGillivray, in his book published in 1902, on the Law of Copyright, at pp. 73 and 74, expresses the opinion where the author was a servant or agent the property in the work, as well as the copyright in it, under the statute of 1842, would vest in the employer ab initio independently of section 18 of that statute; and, in the case of an independent contractor, independently of the statute also, the copyright would not vest ab initio in the contractor but would pass to the employer upon the delivery of the work with the intention of conveying the right. I have no doubt that the delivery of completed materials by an independent contractor to an official of the Association for the Association as such or the completion of the work by a servant or agent and delivery into the custody of the proper official of the Association with the intention, express or implied from the circumstances, of transferring the common law incorporeal right, would have the effect of vesting this in the members. The official acquiring the incorporeal right could only hold it as agent and if there were a trust, he would be a bare trustee for the members of the Association for the time being. The entire beneficial property in the incorporeal right would, I think, in respect of such right, come within the schedule of section 42 under the statute of 1921.
This discussion will, probably, appear to be superfluous; but in my view it has a direct bearing upon a question that is one of the cardinal questions on the appeal to which we shall come to presently. Before leaving the subject, how ever, I think it is convenient at this point to make this observation. We have, as I have said, no evidence as to-the actual practice pursued in respect of contracts with the persons employed by the Association for the preparation .of these materials. Now, it is a fact that must be taken into account in endeavouring to consider these questions in a practical way that this Association was a body of fluctuating membership which could not, as such, be- a party to a contract of service or any other contract. Between 1914 and 1924, from seventy to eighty companies were added to the membership of the Association. The membership was more than doubled. It was, no doubt, open under the constitution, as already observed, to the executive committee to authorize the officials of the Association to enter into contracts with third persons to which the members of the Association for the time being would be contracting parties. This principle would be attended by the inconvenient necessity of having in the case of employees an assent to a change of parties whenever a change in membership of the Association took place. I do not think we are entitled to speculate upon the subject and I do not think on the evidence before us we can justly infer that this course was pursued in respect of contracts of employment, but, for the reasons just given, I think, as regards these incorporeal rights existing when the statute of 1921 came into force that is of no importance.
Such was the position when the statute of 1921 came into force on the 1st of January, 1924; the property in the rating material of the Association, as well as any incorporeal rights connected with it, were vested in the members of the Association at that time. It follows, by force of section 42 and the schedule thereto, that these members of the Association acquired copyright in this material under the statute.
After the Act came into force new rating material was produced by the Association and this material still remained unpublished. It was, I have no doubt, subject matter for copyright under the statute and one of the cardinal questions for determination is whether the plaintiffs, or some ,of them, acquired such copyright in this material in respect of the alleged infringement of which the action is brought.
The members of the Association are all incorporated companies and I am unable to convince myself that they or any one of them could be an author within the meaning of the Copyright Act. Any one or all of them, that is to say, all the members of the Association at any given time, could be the owner or joint owners of copyright, but they could acquire copyright, as far as I know, only in one of two ways,‑either by assignment by some person having a title to the copyright or by one of the ways mentioned in the proviso to section 12 which is in these words:
12. Subject to the provisions of this Act, the author of a work shall be the first owner of the copyright therein Provided that
(a) where, in the ease of an engraving, photograph, or portrait, the plate,or other original was ordered by some other person and was made for valuable consideration in pursuance of that order, then in the absence of any agreement to the .contrary, the person by whom such plate or other original was ordered shall be the first owner of the copyright; and
(b) where the author was in the employment of some other person under a contract of service or apprenticeship and the work was made in the course of his employment by that person, the person by whom the author was employed shall, in the absence of any agreement to the contrary, be the first owner of the copyright; but where the work is an article or other contribution to a newspaper, magazine, or similar periodical, there shall, in the ,absence of any agreement to the contrary, be deemed to be reserved to the author a ri

Court headnote

Massie & Renwick, Limited v. Underwriters' Survey Bureau Ltd. et al. Collection Supreme Court Judgments Date 1940-01-19 Report [1940] SCR 218 Judges Duff, Lyman Poore; Rinfret, Thibaudeau; Davis, Henry Hague; Kerwin, Patrick; Hudson, Albert Blellock On appeal from Canada Subjects Intellectual property Decision Content Supreme Court of Canada Massie & Renwick, Limited v. Underwriters' Survey Bureau Ltd. et al., [1940] S.C.R. 218 Date: 1940-01-19 Massie & Renwick Limited, (Defendant) Appellant and Underwriters' Survey Bureau, Limited, and Others (Plaintiffs) Respondents. Present:—Duff C.J. and Rinfret, Davis, Kerwin and Hudson. JJ. ON APPEAL FROM THE EXCHEQUER COURT OF CANADA Copyright—Action for infringement of copyright and conversion of infringing copies—Copyright in fire insurance plans and rating schedules—Ownership of copyright—Period of limitation established by Copyright Act not a bar to relief where infringement is accomplished by fraudulent act of defendant—Criminal conspiracy—Disclosure of authorship of the works—Unpublished works—Author not identified—Copyright Act, R.S.C., 1927, c. 232. The action is one for infringement of copyright, and conversion of infringing copies in. fire insurance plans and rating schedules. In 1883, the Canadian Fire Underwriters' Association, an unincorporated body, was formed by the association of a number of fire insurance companies carrying on business in Ontario and Quebec, all the members of that Association at the date of the action being added as plaintiffs to the Underwriters' Survey Bureau Limited, a Canadian corporation incorporated in 1917. Prior to 1901, the fire insurance business in Canada was carried on under the minimum tariff system of rating. In 1900, or shortly afterwards, the Association decided to adopt the system of "rating schedules" for all buildings in protected areas, with the exception of residential risks, which remained subject to the minimum tariff system. In this system, formula known as rating schedules, which are applied to individual buildings, must be arrived at and expressed with precision. These specific rates are recorded on cards or books, which are issued to members and members' agents only. From the beginning, 'the Rates Committees of the Association had charge of all matters connected with rates. According to the constitution of the Association of 1914, it was provided, inter alia, that all then existing members of the Association and companies there-after becoming members were binding themselves, by signing a copy of constitution and by-laws, to observe same; and that the member, who may withdraw, was bound to release, or "forfeit," " any right or claim to any portion of the property or assets of the Association" and return to it all card ratings and specific tariffs received from the Association, rating schedules and manuals not being placed in the hands of the agents but remaining in the hands of the officers of the Association. The affairs of the Association are administered by officers elected annually by the members, and the expenses are met by an annual assessment upon all the members proportioned in each case to the premium income of the member for the year. At the end of 1917, or the beginning of 1918, the Plans Department of the Association was taken over by the appellant, the Underwriters' Survey Bureau Ltd., a company incorporated for that purpose whose shares were held in trust for the members of the Association and its directors were officers of the Association. The plan committee of the Association, constituted in 1917, was charged with the duty of transacting the common business in respect of plans and with conducting the business of the Bureau. Consider-able sums of money derived from the contributions of the members of the Association to the common fund were spent in obtaining the necessary information for constituting the rating schedules and other material and in the actual production of the material itself, which material was intended for the exclusive use of the members of the Association. As to the plans, those produced by the plan committee prior to the incorporation of the Bureau and those made afterwards by the Association up to the 1st January, 1924, were delivered to the Bureau with the intention that they should be the property of the Bureau, i.e., the legal ownership should be vested in the Bureau. There were also two classes of plans other than that made by the Bureau after the 1st of January, 1924: first, plans, the copyright to which were registered in the name of Charles Edward Goad, who died in 1910; and, second, plans, the copyright to which was registered in the name of Charles E. Goad Company; and the respondents claim title to these plans under assignment by the Toronto General Trusts Corporation, executors and trustees of the will of Charles Edward Goad, through the members of the firm Charles E. Goad Company and under a further assignment in 1931 from the Charles E. Goad Company to the Bureau. A large number of the Goad plans were partially or completely revised and reprinted by the salaried employees of the Survey Bureau, some prior to the assignment of the Goad copyrights in 1931 and some subsequent to that. The respondents alleged that the appellant, not a member of the Canadian Fire Underwriters' Association, authorized others to make copies or reproductions of the plans and rating schedules and converted such to its own use. The appellant denied respondents' title to copyright to the plans produced by C. E. Goad and claimed by respondents to have been acquired by assignment from the C. E. Goad Company in 1931. The appellant further pleaded that the acts of the respondents in withholding from the appellant and others. copies of the works in question constituted a combine and conspiracy within the meaning of the Combines Investigation Act, R.S.C., 1927, c. 36, and the Criminal Code, R.S.C., 1927, c. 36, s. 498; that the respondents acquiesced in the alleged infringement and conversion and are guilty of laches, and that the period of limitation applicable to such actions is a bar to relief. Held that the appeal should be allowed in respect of the rating material brought into existence after the first of January, 1924, and in other respects dismissed[1]. The "rating material," designating what were known as rating schedules or manuals and rate books, minimum tariffs and specific ratings but excluding the plans, was the property of the members of the Association at the date when the Copyright Act of 1921 came into force on the 1st of January, 1924. These members were the owners, not only of the material itself, but of the common law, incorporeal, exclusive right of reproduction and became, by force of the statute (section 42 in the schedule), the owners of copyright in that material. Material of that character was subject-matter for copyright and, not being published, the exclusive right of multiplying copies of it, or of publishing it, was a right which the common law, prior to the statute of 1921, gave primarily to the authors of it. As to such material produced after the statute came into force, the respondents have not adduced sufficient evidence to establish a title to copyright in it. The members of the Association are all incorporated companies and they or any one of them cannot be an author within the meaning of the Copyright Act. Any one or all of them, that is to say, all the members of the Association at any given time, could be the owner or joint owners of copyright, but they could acquire copyright only in one of two ways,-either by assignment by some person having a title to the copyright or by one of the ways mentioned in. the proviso to section 12 of the Act. As to the ground that the present case comes within subsection (b), the respondents must, in order to succeed, show that the material in respect of which the question arises was made "in the course of his employment" by a person or persons "under a contract of service or apprenticeship " with the respondents or some of them, But from the evidence it must be inferred that this material was produced by employees in the course of their employment under a contract of service with the members of the Association for the time being. And there is no evidence as to the practice in relation to the contracts under which the employees of the Association were engaged or in relation to the terms of their engagement. It is not a mere abstract possibility, but a practical possibility, that for convenience some form of arrangement was resorted to by which there was no direct contractual bond between the members of the Association and the employees, or that in. any case the work was done by persons who were independent contractors. As to plans: The plans copyrighted by Charles Edward Goad in his lifetime and those copyrighted by the Charles Edward Goad Company passed to the Underwriters Survey Bureau Ltd. by the deeds of transfer and assignment produced at the trial. As to nine plans made by the plan department of the Association in 1911 and 1917, copyright was vested by force of the Copyright Act of 1921, s. 42, in the members of the Association at the date when the Act came into force, i.e., on the first of January, 1924.-Copyright in the revisions of the Goad plans vested in the Bureau in virtue of the fact that these revisions were executed by the salaried employees of the Bureau in exercise of their functions as such. As to plans and revisions of plans made by the Bureau after the statute of 1921 came into force on the 1st of January, 1924, these having been made by the salaried employees of the Bureau, the title vested in the Bureau in virtue of section 12 (b)-As regards the copyright in the plans produced by the Bureau, including the revisions of the Goad plans, section 20 (3) (b) (ii) applies. Prima facie the legend "Made in Canada by the Underwriters' Survey Bureau Ltd." implies proprietorship and such legend is found on these plans: the prima facie case has not been met. Held, also, as to companies which had ceased to be members of the Association and were not parties plaintiffs at the commencement of the action, their interest in the copyrights was a bare legal interest since, on ceasing to be members of the Association, they ceased to have any beneficial interest in such copyrights and the plaintiffs, as part owners, were entitled to protect their rights by suing for an injunction and for damages. Lauri v. Renad ([1892] 3 Ch. 402); Cescinski v. Routledge ([1916] 2 K.B. 325) and Dent v. Turpin (2 J. & H. 139) ref. Held, also, as to tangible chattels including infringing copies, companies on ceasing to be members ceased to have any joint or several right of possession in. any of the common property and the plaintiffs were, therefore, entitled 'to maintain trover or detinue in respect of such chattels. Held, also, as to the question of the Statute of Limitations, that that was ample evidence in support of the conclusion of the trial judge that there had been fraudulent concealment within the meaning of the rule; with the consequence that the limitation period began to run only on the discovery of the fraud, or at the time when, with reasonable diligence, it would have been discovered. Therefore, the period of limitation established by the Copyright Act is not a bar to the relief claimed by the respondents. Held, further, on the question of criminal conspiracy: if the plaintiffs in an action for the infringement of copyright are obliged, for the purpose of establishing the existence of, and their title to, the copy-right to rely upon an agreement and that agreement constitutes a criminal conspiracy, and their title rests upon such agreement and upon acts which are criminal acts by reason of their connection with such an. agreement, then it would be difficult, on general principles to understand how such an action could succeed; but, in the present case, the conclusion of the trial judge, negativing the existence in fact .of a criminal conspiracy is right. Held, further, as to the appellant's contention that the authorship of the work cannot in. the case either of the plans or of the rating materials be ascertained; that, according to the provisions of section 20 (3) of the Copyright Act, the statute does not contemplate disclosure of authorship as a necessary condition of success in. an action for infringement; but the provisions of that section do not go as far as creating a presumption that the name of the Association on the rating material should be regarded as the name of the publisher. As already stated, all the members of the Association being bodies corporate, none of them could be an author within the contemplation of the statute; and it cannot be found as a fact that the name Canadian Fire Underwriters' Association in these manuals, rate-books and other rating material is a name which answers the description of the statute, namely, that " a name purporting to be that of the * * * proprietor of the work is printed thereon in the usual manner." Held, also, that, in the case of unpublished works (where the proprietor is shewn to have acquired a common law right prior to the Copyright Act of 1921 by evidence establishing facts requiring an inference that the work was done for the plaintiff and that the intention of all parties concerned in the production of the work was that the common law right should vest in him) the statute plainly contemplates the protection of that right; and the only possible protection is the recognition of the substituted copyright given by the statute. It would be then merely a matter of evidence: the ownership of the common law right must rest upon established facts and these facts can be proved by inference as well as by direct evidence. Held, further, as to the duration of the copyright where that comes in question, that, if the owner of it cannot identify the author, the duration of it must be restricted to the period of fifty years from the date when the copyright or common law right, as the case may be, came into existence. Judgment of the Exchequer Court of Canada ([1938) Ex. CR. 103) varied. APPEAL from the judgment of Maclean J., President of the Exchequer Court of Canada[2], maintaining with costs an action for infringement of copyright by the appellant against the respondents in respect of certain works known as fire insurance rating material and fire insurance plans. The material facts of the case and the questions at issue are fully stated in the above head-note and in the judgment now reported. W. N. Tilley K.C., O. M. Biggar K.C. and Christopher Robinson for the appellant. J. A. Mann K.C., W. D. Herridge K.C. and A. M. Boulton for the respondents. The judgment of the court was delivered by THE CHIEF JUSTICE: In 1883 the Canadian Fire Underwriters' Association was formed by the association of a number of fire insurance companies carrying on business in Ontario and Quebec. Prior to 1901, the fire insurance business in Canada was carried on under the minimum tariff system of rating. Territory in which the companies were carrying on business was divided into districts. For each district a minimum tariff of rates was drawn up in which the premiums for various defined classes of risks were quoted. These were placed in the hands of the agents and of the member companies. In 1900, ,or shortly afterwards, the Association decided to adopt the system of " rating schedules " for all buildings in protected areas with the exception of residential risks, which remained subject to the minimum tariff system. In this system, formulae known as rating schedules, which are applied to individual buildings, must be arrived at and expressed with precision. Speaking generally, in large cities, and many lesser communities, a specific rate is separately worked out for each building and is tabulated in anticipation of applications for insurance in respect of that building. These specific rates are recorded on cards, in the case of a large city, and in books in the case of smaller municipalities. The rate cards and books are issued to members and members' agents only. The specific rates are kept up to date by new cards or slips pasted in the rate books. From the beginning, the Rates Committees of the Association had charge of all matters connected with rates. The operation of the system of rating schedules is explained by the witness Dixon: Q. Just explain to the court how towns, cities and villages became specifically rated? A. We will take, say a town A.‑it does not matter whether we call it a village, town or city. They put in some fire protection‑it may be fire pumps and mains and hydrants, and provide a certain amount of hose‑a fire station, and some firemen. It may be a gravity or pumping system. They notify us that 'they have carried out these improvements and that they now have some protection. The first thing we do is send down our water works inspector. He visits the place and checks over all the protection that is provided. He also checks over street widths and congestion, and construction conditions generally. He 'comes back to the office and writes a very elaborate report of that, so that we can tell exactly what that municipality has. That report is sent to the municipality, by the way, said it has in it recommendations for further improvements and how to expand the system that they have. His report comes, or it did, from the C.F.U.A. to the rates committee again, and they went over it very carefully and would decide that in view of the protection provided there we would effect a certain basic rate or key rate for the beginning of our schedule rating in that municipality. They would also say to the plans committee, "We desire to specifically rate town A. Kindly see to it that a plan of town A is made and working sheets sent to the C.F.U.A. as soon as possible." We could not start in to make the inspection until that plan was made, because our whole schedule rating system depends upon our plans. We have in. that specific tariff our black numbers, and our numbers in the specific tariff must absolutely correspond to the numbers that the agent and the company have; otherwise they would not know what rate to apply. So that either Goad or ourselves or the Underwriters' Survey Bureau, as the ease may be‑depending upon the time that the work was done‑would send their surveyors to the municipality and build up a plan. And while they were collating that to send out to the company members they would send us what we call a working sheet. That has just a cheaper binding on it, so that our inspectors can roll it under their arm and fold it up and take it to the municipality with them. And they go into each one of those risks, in the municipality. They go down one street and up the next, and make a report of every risk of a mercantile nature in that place. That survey consists of all the details of construction, occupancy, exposure and private protection that the assured may have. He may have extinguishers, fire pumps and hose, and so on, for all .of which he would be entitled to a credit off his rate. They come back and they have a plan and spread it out in front of them, and they see on each one of these risks-each building is called a risk in the fire insurance business-they identify that survey with the marking on the plan. In other words, let us say it would be block 5, sheet 2, No. 62 Main Street, town A. And when a tariff goes out to the companies the agent writes in and says that my assured, Number so and so, 62 Main Street, block 5, sheet 2, of the town of A, desires so much insurance on his household furniture, or his barber shop stock, or whatever it is he wants to insure; and the company simply goes to work and takes their tariff, and looks up block 5, 62 Main Street, and there it is. And they see it is a candy store, let us say, so they know the occupancy must have changed. Then they take it up with the agent. But if it is a barbershop when the inspection is made and is still a barbershop, they know the rate that is to apply. So that the plan and the rate identify one another. His Lordship: But the rate is never put on the plan? A. No, sir. Q. That would be in the rate book? A. Yes, sir. Q. But there is a means of identifying all the particular properties on the plan? A. Yes. It will be convenient to use the term "rating material," which was employed on the argument, as designating what are known as rating schedules or manuals and rate books, minimum tariffs and specific ratings. Except in the case of minimum tariffs, plans are an essential part of the rating machinery but, for the purpose of convenient discussion, the term " rating material" will embrace the matters just mentioned and then only. Before proceeding to consider the rights in controversy, it is convenient to explain the constitution of the Canadian Fire Underwriters' Association. In the constitution of 1914 the names of the existing members of the Association are set out and it is prescribed, by one of its provisions, that all existing members of the Association and companies thereafter becoming members, shall sign a copy of the constitution and by-laws; and it is declared that by this signature a member binds itself to observe the constitution and by-laws. The constitution also provides that a member may with-draw on giving notice to that effect but that such withdrawal shall not take effect or release the member from his agreement to observe the constitution and the by-laws until the expiration of three months from the date of the notice. Upon withdrawal, the withdrawing member releases, or "forfeits," as the word is, " any right or claim to any portion of the property or assets of the Association," and returns to the Association of all card ratings and specific tariffs received by it from the Association. Rating schedules and manuals are not placed in the hands of the agents. They remain in the hands of the officers of the Association. Plans, as we shall see, are dealt with as the property of the Underwriters' Survey Bureau, an incorporated company, which performs the functions of the. plan department of the Association under the control and supervision of the Plan Committee. The members of the Association meet annually, semi-annually and at special meetings called at the discretion of the president or the executive committee, or upon requisition by a specified proportion of members. At annual meetings the members elect a president and two vice-presidents, one for each branch, Ontario and Quebec. They also name certain committees, including an executive committee, a plan committee and rates committees. The members of the executive committee are elected for two years and retire in rotation yearly. This committee has a general authority to transact any business which the members of the Association can trans-act, excepting the amendment of the constitution and by-laws and the forfeiture of membership; and the constitution declares the intention that the committee shall dispose of all matters except those which the committee may consider it desirable to reserve for submission to the Association. One of the secretaries is required to attend the meeting of the committee and keep the minutes which are printed and distributed to all the members of the Association. The constitution formally declares that the members of the Association in general meeting are superior to all committees and constitute a final court of appeal. The constitution also provides for the election by the members in general meeting of certain salaried officers, ‑a permanent chairman of the executive committee and two secretaries, one of whom has an office in Montreal and the other in Toronto, where the business of the respective branches (Quebec and Ontario) is transacted. One of these secretaries is named as treasurer. The secretaries are "in their respective jurisdictions" the chief executive officers of the Association, have the general supervision of its work and of all its employees and are directly responsible for the management of their respective offices. The current expenses of the Association are met by an annual assessment upon all the members proportioned in each case to the premium income of the member for the year. Interim assessments are made quarterly based upon the income of the previous year, an adjustment being made when the amount payable by each member has been accurately ascertained. Each member, in addition, pays for the revision of any rating material and for the revision of tariffs made for it at the cost of the labour involved. The assessment is made under the authority of the members of the Association in general meeting by the treasurer and is paid to the treasurer who submits to the annual meeting a printed statement of the previous year's expenditure and its apportionment audited by a chartered accountant appointed by the Association. There is a bank account at each of the branches, Montreal and Toronto, and all monies received are deposited in that account and it is the duty of each of the secretaries to defray the expenses of his branch. It is the duty of the secretary, who is the treasurer, to transfer to the account of the other branch sufficient funds to enable this to be done. All payments are made by cheque on one of these accounts, signed by the president, or a vice-president, and the treasurer or the other secretary, according to the account upon which the cheque is drawn. At the end of 1917, or the beginning of 1918, the Plans Department of the Association was taken over by a company incorporated for that purpose under the Dominion Companies Act, the Underwriters' Survey Bureau, Ltd., the shares being held in-trust for the members of the Association. The plan committee of the Association, which was constituted in December, 1917, under an amendment to the constitution, was charged with the duty of transacting the common business in respect of plans and with conducting the business of the Underwriters' Survey Bureau, Ltd. We shall have to discuss in greater detail the business of the Bureau later. I put aside the consideration of the plans for a moment and discuss the rating material so-called. Considerable sums of money derived from the contributions of the members of the Association to the common fund were spent in obtaining the necessary information for constituting the rating schedules and the other material mentioned and in the actual production of the material itself. This material was intended for the exclusive use of the members of the Association. There can be no doubt, I think, that, subject to the provisions of the constitution, the property in it was (as was all the common property) vested in such members for the time being. I think there can be no doubt that material of that character was subject matter for copyright and, not being published, the exclusive right of multiplying copies of it, or of publishing it, was a right which the common law, prior to the statute of 1921, gave primarily to the authors of it. The principle laid down by Lord Brougham in Jefferys v. Boosey[3] applies. The right of the author before publication we *may take to be unquestioned, and we may even assume that it never was, when accurately defined, denied. He has the undisputed right to his manuscript; he may withhold, or he may communicate it, and, communicating, he may limit the number of persons to whom it is imparted, and impose such restrictions as he pleases upon their use of it. The fulfilment of the annexed conditions he may proceed to enforce, and for their breach he may claim compensation. I do not think section 22 of the statute of 1875, which relates only to printing and publishing, supersedes the common law right to prohibit other dealings with unpublished documents. As regards the particular material with which we are concerned, that produced for the Association prior to the date when the Copyright Act of 1921 came into force, it was, as has been said, produced for the exclusive use of the members of the Association who considered it of fundamental importance that this right of exclusive user should be jealously guarded and, it must have been well understood that, not only the property in the material itself, but the ownership of the incorporeal right described by Lord Brougham should be vested exclusively in the members of the Association. It is important to notice that at this moment we are considering only the common law right of the author, the author's employer and the author's assigns, to control the use of unpublished documents, the right so vividly described by Lord Brougham in the words just quoted. It is the contention of the respondents that this right in respect of this rating material is vested, as to the legal property in it, in the members of the Association for the time being and it is said that, on the 1st of January, 1924, when the Copyright Act of 1921 came into force, the property, not only in the rating materials themselves as physical things was vested in the members of the Association at that moment, but also this incorporeal right in relation to these materials. It is not necessary, I think, to go further back than the constitution of 1914 because, as we have seen, the members of the Association at that time contracted with one another in the terms of the constitution and by-laws, and the Association proceeded from that time on to work under that constitution and those by-laws as amended from time to time; the power to amend being vested by the constitution in the members of the Association in general meeting acting by a two-thirds majority. Now, I think the only fair implication from the pro-visions of the constitution is that the legal title to the common property is vested in the members of the Association for the time being. The fluctuating body for which the name was a description in fact was not a entity known to the law and not capable of legal ownership of such property. There is no express provision for a board of trustees; and although the shares of the Survey Bureau are held by trustees for the Association, we have no information who these trustees are or how they are appointed. The phrases used are "the property of the Association "and" the assets of the Association " and I think the reasonable meaning of these phrases is that which I have indicated. The treasurer and the secretary who is not the treasurer, as well, perhaps, as the president and vice-president who are authorized to sign cheques with one of the secretaries have, no doubt, a special property in the funds of the Association and that may be so also with regard to the executive committee which possesses almost unlimited powers of administration. But the general property of the common assets is, I think, in the members for the time being, subject, of course, to the provisions of the contract under which they are associated together. Primarily, the incorporeal right we are considering is the right of the author and, while I do not suppose a corporation could be an author in the sense of the rule, still these incorporated companies, who were the members of the Association during the period with which we are concerned, could acquire title to the incorporeal right by assignment from the author and I think also through the authorship of an agent or servant or of an independent contractor, employed to produce a work in respect of which, in ordinary circumstances, the author would be invested with the right. It is clearly settled now, by the authority of In re Dickens[4] that the author, in transferring the property in his manuscript, does not thereby necessarily assign the incorporeal right. But I think, having regard to the considerations just mentioned, it is a legitimate inference that it was well understood by everybody that this rating material was produced for the exclusive use of the members of the Association and, consequently, that in the members of the Association vested the sole and exclusive right of multi-plying copies. The evidence does not disclose the practice of the Association in respect of the terms under which the persons, inspectors and others, were employed for the production of these materials. Under the constitution I have no doubt it was competent to the executive committee, if not to the secretaries, to authorize the employment of persons for such purposes under a contract which would be a contract of service between the members of the Association for the time being and an employee, or a contract of agency, or a contract under which the employee would be an independent contractor. Whether the executive committee could pledge the personal credit of the members of the Association is really immaterial. In practice such a question could hardly arise and, at all events, it is of no importance here. These materials were produced and the cost of their production was paid for out of the common fund and whether the persons, who, if they had produced them for themselves, would have been the authors, were employees under a contract of service with the members for the time being, or agents under a contract of agency for the members for the time being, or engaged as independent con-tractors under a contract with the members for the time being, or whether the practice of the Association was to contract through one or more of its permanent officials, the treasurer for example, in such a manner as not to give rise to contractual relations with the members themselves, is really of no importance because, whatever was done, was done for the members and paid for with their money. The materials themselves when produced and in the possession of their officers were in the possession of the members and any rights acquired by any permanent official as the result of work done under contracts with third persons, the fruits of such contracts, would be acquired for the members and would be the rights of the members. I think this results from an application of the reasoning of Maule J. in Sweet v. Benning[5] in his judgment at page 484 and arguendo at pp. 468 and 475, as well as from the reasoning of Lord Halsbury in Lawrence v. Aflalo[6] and the judgment of Bowen L.J. in Lamb v. Evans[7]. The immediate question under consideration in these cases was the application of section 18 of the Copyright Act of 1842, but the reasoning seems to me to be applicable to the common law right. Mr. McGillivray, in his book published in 1902, on the Law of Copyright, at pp. 73 and 74, expresses the opinion where the author was a servant or agent the property in the work, as well as the copyright in it, under the statute of 1842, would vest in the employer ab initio independently of section 18 of that statute; and, in the case of an independent contractor, independently of the statute also, the copyright would not vest ab initio in the contractor but would pass to the employer upon the delivery of the work with the intention of conveying the right. I have no doubt that the delivery of completed materials by an independent contractor to an official of the Association for the Association as such or the completion of the work by a servant or agent and delivery into the custody of the proper official of the Association with the intention, express or implied from the circumstances, of transferring the common law incorporeal right, would have the effect of vesting this in the members. The official acquiring the incorporeal right could only hold it as agent and if there were a trust, he would be a bare trustee for the members of the Association for the time being. The entire beneficial property in the incorporeal right would, I think, in respect of such right, come within the schedule of section 42 under the statute of 1921. This discussion will, probably, appear to be superfluous; but in my view it has a direct bearing upon a question that is one of the cardinal questions on the appeal to which we shall come to presently. Before leaving the subject, how ever, I think it is convenient at this point to make this observation. We have, as I have said, no evidence as to-the actual practice pursued in respect of contracts with the persons employed by the Association for the preparation .of these materials. Now, it is a fact that must be taken into account in endeavouring to consider these questions in a practical way that this Association was a body of fluctuating membership which could not, as such, be- a party to a contract of service or any other contract. Between 1914 and 1924, from seventy to eighty companies were added to the membership of the Association. The membership was more than doubled. It was, no doubt, open under the constitution, as already observed, to the executive committee to authorize the officials of the Association to enter into contracts with third persons to which the members of the Association for the time being would be contracting parties. This principle would be attended by the inconvenient necessity of having in the case of employees an assent to a change of parties whenever a change in membership of the Association took place. I do not think we are entitled to speculate upon the subject and I do not think on the evidence before us we can justly infer that this course was pursued in respect of contracts of employment, but, for the reasons just given, I think, as regards these incorporeal rights existing when the statute of 1921 came into force that is of no importance. Such was the position when the statute of 1921 came into force on the 1st of January, 1924; the property in the rating material of the Association, as well as any incorporeal rights connected with it, were vested in the members of the Association at that time. It follows, by force of section 42 and the schedule thereto, that these members of the Association acquired copyright in this material under the statute. After the Act came into force new rating material was produced by the Association and this material still remained unpublished. It was, I have no doubt, subject matter for copyright under the statute and one of the cardinal questions for determination is whether the plaintiffs, or some ,of them, acquired such copyright in this material in respect of the alleged infringement of which the action is brought. The members of the Association are all incorporated companies and I am unable to convince myself that they or any one of them could be an author within the meaning of the Copyright Act. Any one or all of them, that is to say, all the members of the Association at any given time, could be the owner or joint owners of copyright, but they could acquire copyright, as far as I know, only in one of two ways,‑either by assignment by some person having a title to the copyright or by one of the ways mentioned in the proviso to section 12 which is in these words: 12. Subject to the provisions of this Act, the author of a work shall be the first owner of the copyright therein Provided that (a) where, in the ease of an engraving, photograph, or portrait, the plate,or other original was ordered by some other person and was made for valuable consideration in pursuance of that order, then in the absence of any agreement to the .contrary, the person by whom such plate or other original was ordered shall be the first owner of the copyright; and (b) where the author was in the employment of some other person under a contract of service or apprenticeship and the work was made in the course of his employment by that person, the person by whom the author was employed shall, in the absence of any agreement to the contrary, be the first owner of the copyright; but where the work is an article or other contribution to a newspaper, magazine, or similar periodical, there shall, in the ,absence of any agreement to the contrary, be deemed to be reserved to the author a ri

Massie & Renwick, Limited v. Underwriters' Survey Bureau Ltd. et al.

Court headnote

Full judgment (source text)

R v Brown

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Massie & Renwick, Limited v. Underwriters' Survey Bureau Ltd. et al.

Court headnote

Full judgment (source text)

R v Brown

Related cases

R v Brown

R v Beaver

R v Sharma

R v Cody

Canada (Sécurité publique et Protection civile) c. Ewen

R v Hart

Exam & revision prep