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To Waive or Not to Waive Moral Rights

A creator of an original work acquires the right to protect the integrity of the work as well as the right to be associated with it either by name or pseudonym or to remain anonymous.  These rights are considered “moral rights” of the creator.  Moral rights cannot be transferred, whether by licence or assignment, even on the sale of the copyright of a work.  They are personal to the creator and live with the creator until they eventually pass on to the beneficiary of the creator’s moral rights upon the creator’s death, and subsequently pass to that beneficiary’s beneficiary of the creator’s moral rights, and so on.  After death, a creator’s moral rights continue to exist and may be exercised by those beneficiaries of the creator’s moral rights for 70 years after the end of the calendar year of the creator’s passing.  There are, however, situations in which moral rights may not be exercised. According to Canada’s Copyright Act, moral rights may be “waived” in whole or in part by either the creator of the work or a beneficiary of the creator’s moral rights.     

What is a waiver and how is it granted?

A waiver is a renunciation or a surrender of a right, privilege or claim.  When a creator waives their moral rights, they can do so in writing, or orally or impliedly in some instances, given the nature of the work.  A waiver need not be for all moral rights with respect to a work.  For example, the creator may waive their right to have their name associated with the work for a particular purpose or project while still maintaining their right to ensure the integrity of the work – at least to the extent that there is, in the language of the Copyright Act, no prejudice to their honour or reputation.  The waiver itself should be in writing for certainty, but need not be complicated. It could simply be stated that the creator waives their moral rights in the work “in favour of” a named person or organization for a purpose or project.  However, a creator should always be cautious when deciding whether to waive moral rights as once they grant such a waiver, they cannot unilaterally reassert those particular waived moral rights.

Why is a waiver of moral rights important to your employer or purchaser of your work?

As mentioned, moral rights in a work cannot be transferred, even by sale of a work or if created by an employed creator. For example, in an instance where you sell your painting and copyright to your painting, the purchaser of your painting may “own” your painting but, if you did not waive your moral rights in the painting, you still hold moral rights in it. Similarly,  in another instance, if you upload a photograph you’ve taken for your employer to your employer’s website as part of your duties as an employee but without waiving your moral rights in the photograph, you still hold moral rights in the photograph.  As moral rights restrict how a purchaser or an employer may wish to use a work that they own, it is common commercial practice for creators to be asked to waive their moral rights in their work so it can be changed without their permission.  Depending upon the circumstances, you may be able to negotiate a higher price for your work in exchange for waiving your moral rights in it.   You may also be able to negotiate something less than a complete waiver.  For example, in a written agreement you might allow changes to be made to your work but retain the right to be credited as the creator or a co-creator or you might decide to remove your credit or negotiate the right to keep the right to do so subsequently.

This article is informational and not intended as a substitute for legal advice.

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Assignment vs. Licensing Copyright

If you have a copyright in your work, that right exists separate and apart from the physical work itself. In other words, if you were to give your manuscript or your published work in book form to someone, that act of giving the work in a physical form does not transfer your copyright interest in it. To do so, you would need to either “assign” copyright or exclusively “license” it to that person  – if by an exclusive licence, you would retain ownership but not control. Canada’s Copyright Act states that an assignment or licence granting a copyright interest in your work, either in whole or in part (e.g., the right to publish in book form), generally needs to be in writing in order for it to be valid. Further, that written assignment or exclusive licence must be either signed by you as the owner of copyright or by someone authorized to sign on your behalf.  A non-exclusive licence may be oral or implied but, for certainty, should be in writing.

The difference between assignment and licensing can be illustrated by an example of someone looking for a home. The person could choose to purchase a house and acquire all the rights and obligations as related to house ownership or could lease a house for a certain period of time to be returned to the owner once the lease term expires. If you were to assign all of your copyright to someone, that transaction is analogous to the above example of purchasing a house. An assignment of all of your copyright in a work transfers your copyright interest to another person completely so that you no longer have any present or future ownership interest in it (other than a possible contingent interest of your estate to revert copyright 25 years after your death). That person has the right then to enforce the copyright against anyone who may infringe it, including you. By contrast, since copyright is a bundle of rights, a licence is similar to the lease example above in that the person to whom you granted the licence has your permission for a specified period of time to use your work in certain ways which might otherwise constitute an infringement of your rights. Such grant of a licence does not change your ownership in the copyright of the work – unlike an assignment of specified rights of copyright, which would transfer ownership of part of your copyright. Granting an exclusive licence precludes you from using the rights you have licensed, but if you grant a non-exclusive licence you retain the right to use any right you have licensed and may also license others to use it.

It should be noted that while you can give away your work in a physical form, provide a written assignment granting either ownership of all or certain rights in your copyright, or grant an exclusive or non-exclusive licence for all or certain rights in your copyright to someone else, you still retain moral rights in your work unless you “waive” them. Moral rights include the right to receive credit for creating the work as well as some rights with respect to its integrity. The only way for you to give up your moral rights is to waive them. Such waiver may be restricted to specified moral rights and may only be in favour of, or benefit, certain persons. It need not be in writing though that’s best for certainty – it may be provided orally or occasionally even impliedly, given the nature of your work. It is not usually necessary, and often not desirable, to waive your moral rights simply because you sell or license your copyright.  

This article is informational and not intended as a substitute for legal advice. 

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Copyright protects the original expression of ideas in copyright works – not ideas on their own.  Thoughts cannot be protected except when in a fixed form, e.g., prose, poetry or a song on paper, in a sound recording or on any other medium, or even just saved on a disc or computer drive. It is the entirety of that original expression that is protected as a work or part of a work, not just a bar within a musical composition or a phrase in an article. To be original, it does not need to be unique or novel. The author of the work needs to have exercised their skill and judgment when creating it. The level of skill and judgment to create an original work is not high – merely a level of intellectual effort that cannot be so trivial so as to just insignificantly change someone else’s existing work.

Works that meet the conditions of expression, fixation and originality to qualify for copyright protection are categorized by Canada’s Copyright Act into the following types:

• literary work includes any work that is expressed in writing, e.g., works of fiction and non-fiction, articles, poems and plays (also computer programs and tables), or a compilation of literary works.  
• dramatic work includes the scenic arrangement or acting form of any work for performance, which is fixed in writing or otherwise but does not need words, including any piece for recitation, choreographic work, mime and cinematographic work (e.g., a television show or motion picture), or a compilation of dramatic works.  
• musical work means any work of music or musical composition, with or without musical notation and with or without lyrics or other words, or a compilation of musical works. 
• artistic work “includes paintings, drawings, maps, charts, plans, photographs, engravings, sculptures, works of artistic craftsmanship, architectural works, or a compilation of artistic works.”  

In addition to the full range of copyright rights for the customary “works” described above, some copyright rights are also now recognized for sound recordings, communication signals (e.g., broadcasts) and performer’s performances.  The newer special copyrights in these three categories are sometimes called “neighbouring rights” to distinguish them from works. 

An artistic work does not need to fall into one of the above-listed examples in the definition of artistic work quoted above from the Copyright Act to receive copyright protection. It may be analogous or comparable to any of those examples or, in any case, protected   if the creator’s intent is to create a work to appeal to artistic sensibilities. Copyright protection does not generally extend to include designs of useful articles or things made by hand, tool or machine. If the design is for an article that is reproduced more than 50 times, such as a kettle, the design does not have copyright protection as an artistic work, subject to some exceptions, for example, a shaped dish with an original photograph applied to its surface.  Embodied designs instead may receive protection under Canada’s Industrial Design Act, which has its own regulations and rules. 

How your work is classified may impact the type of rights you have when exercising your copyright in it.  For example, if you have a copyright in a musical work, you have the right to rent out a sound recording of it. If you are uncertain what rights you may have, you should consult a legal professional or an organization representing professional creators.

This article is informational and not intended as a substitute for legal advice.   

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The Origin of “C.R.E.A.T.I.N.G.”

The word checklist “C.R.E.A.T.I.N.G.” spontaneously sprang from a preparatory conference call prior to a seminar about licensing entitled “Playing Nice in the Sandbox”, held at the Duke of York Pub in Toronto several years ago. The event was an ALAS legal educational seminar about licensing that featured myself speaking about music licensing, Marian Hebb speaking about licensing in the book publishing field, Tony Duarte discussing licensing in relation to film law and Emmanuel Evdemon speaking about licensing in relation to video games.

I had come up with a made-up word that served as a checklist that used almost the same letters that now form the acronym CREATING. At the time, the word was a little jumbled and garbled, probably something closer to G.-R.-E.-A.-A.-T.-T.-I.-N.-C. I shared it with the other panelists. Tony asked what I meant. I said it was a word that I made up that signifies and outlines key points that should be considered before entering into a licence agreement. It was coined by me to serve as a short checklist.

Marian then responded by saying “Oh, you mean “C.-R.-E.-A.-T.-I.-N.-G.”. All four of us agreed. That’s how G.-R.-E.-A.-A.-T.-T.-I.-N.-C. became the word checklist C.R.E.A.T.I.N.G. and acronym CREATING.*

What does “C.R.E.A.T.I.N.G.” mean in relation to creators’ rights agreements?

1) The letter C stands for compensation for a grant of rights, which is usually a licence but may be an outright sale. (See paragraph 12 below on grant of rights.) Under a creator’s rights agreement with a producer, developer or publisher, this can be anything from nominal consideration of a dollar, credit or, more typically, monetary compensation in the form of a flat fee, a royalty percentage or share of net or gross receipts, or a combination of some or all of these forms of compensation, in return for the right to use or “exploit” the rights that are licensed or purchased. Further fees may be paid for repeat uses (see end of paragraph 4 below on residuals) and royalty percentages may escalate based on the number of sales.

2) The letter C also stands for copyright in a work or performance and for credit or attribution to an author or performer. It’s usually best for the creator to keep their copyright and to have a copyright notice in their own name on a publication or a production as well as a credit as author or performer, since giving up copyright takes away the creator’s right to authorize or, except as may be specified in a rights agreement, to control further uses of their work. But, even if a creator grants all of their rights of copyright to another person, likely to be a producer, developer or publisher, the creator retains “moral rights”, which include attribution rights. Waiving moral rights may deprive the creator of their right to a credit unless specifically provided for in the rights agreement. So a creator should always carefully consider any request either to transfer their copyright or to waive their moral rights.

3) The letter R stands for reserved rights. Often some rights in a work or performance are retained or “reserved” by the creator. For example, a literary agent will almost always reserve a book author’s translation, film, dramatization and interactive digital property rights in a novel or other work. An author representing themself to a book publisher should do so too in appropriate circumstances and reserve all rights not specifically granted to the publisher. A composer may reserve all rights to their music other than the right intended for immediate use by the licensee or purchaser. For example, licensing a piece of music for use in a single documentary film would not entitle the licensee to use the music in a video game, a web series or traditional television series.

4) The letter R also stands for reversion rights, sometimes referred to as revocation rights. Typical grounds for a creator wanting to revoke or revert rights and terminate an agreement entirely include failure to publish or produce a work, non-payment of an advance against royalties or of earned royalties, failure to provide an accounting, failure to allow an audit or failure to meet some other very important term of the agreement. Whether a reason for revoking or reverting all or certain rights in an agreement is sufficient is often disputed, especially if not actually specified in the agreement. For example, a rights agreement, whether a licence or sale of rights, may say that the author is entitled to revert film rights if a film production has not been completed within a specified number of years following the producer’s acquisition of the film rights to the author’s novel. Or, a book or video game publishing licence may say that the author may revert all rights to a work if it is not published within a specified time following the agreed publication date, or may revert all translation or version rights to their work, or perhaps just rights for a particular language or version, if not translated or versioned and published within a specified number of years of first publication of the work in English (for example, a Japanese translation or console version of a game based on their novel if no such translation or version of the game is published within, say, three years of first English-language publication) or, similarly, a licence may say that the author is entitled to revert all publication rights for any territory where copies of their work have not been released or distributed after a specified time. Failure to make payments is frequently specified as a circumstance permitting a creator to revoke or revert all rights and terminate the agreement – but likely to be included only if requested by the creator! Before entering a rights agreement, a creator should give careful consideration to specifying circumstances in which they might wish to revoke or revert certain rights or to terminate the agreement and reclaim all rights.

And the letter R may stand for residuals – a term that should not be forgotten if a creator is entitled to further payments as compensation for repeat performances or other uses.

5) The letter E stands for exclusive. Exclusivity means that the creator cannot license elsewhere the same rights that they have already granted under another rights agreement. Not all agreements are granted on an exclusive basis. Many are non-exclusive licences. For example, use of pre-existing master sound recordings and pre-existing music used in synchronization with visual images in film and television productions are typically non-exclusive. So are licences to quote excerpts from a book in other publications. If non-exclusive, the same rights can be granted to many licensees. On the other hand, for example, a choir or a football club will likely require exclusive use of a song composed for it, or an advertiser may request exclusive use of a few bars from pre-existing music or even of an entire work for advertising a particular product or class of products. However, for example, a car manufacturer may just want to be the only car manufacturer permitted to use a song, but is unconcerned if the song is used in a film. Whether a grant is exclusive or non-exclusive is a key consideration when a creator is looking at entering a licence agreement and usually greatly affects the amount of compensation to the creator.

6) The letter A stands for accounting. Since the compensation set out in many rights agreements is based on a royalty or share of net or gross receipts, the accounting clause is very important. It typically specifies what and when accounting statements are to be provided to the creator by the producer, publisher or other distributor, including how royalties or receipts are calculated, what period of time is covered, when payment will be made, and other relevant details.

7) The letter A also stands for audit. An audit refers to the right of the creator granting rights and receiving royalties or other payments to verify the accounting statements provided by the licensee or the purchaser by an inspection or examination of its relevant books and records, usually by a professional accountant and subject to other conditions. The cost of the audit is often contingent upon whether or not an error in accounting is discovered during the audit. This is another very important term of a rights agreement. (Typically, the matters in this paragraph 7 and in paragraph 6 above appear in the same clause of a licence or purchase agreement, but they are conceptually different.)

8) The letter T stands for the term of a licence or any other rights agreement including an option to purchase certain rights. The word “term” in this context is the duration of the rights agreement, typically lasting for a specified number of years, but sometimes as long as the rights are being used by a licensee or for the duration of copyright, and so an agreement may outlive the author of a work. The length of the term, like many of the other points highlighted in this checklist, is often negotiable.

9) The letter T also stands for territory, meaning the country or area where the licence is applicable and the licensed rights may be used. For example, a licence for publication of a work or for a performance could be on a Canada-only basis, for North America or for the entire world, or even the universe, depending on its type and scope.

10) The letter I stands for irrevocable. Some rights agreements, whether a licence or outright sale of rights, are entered into on an irrevocable basis, meaning the grantor of the rights cannot revoke or take them back. For example, master use licences for master sound recordings and synchronization licences for music in a film are customarily granted on an irrevocable basis, and that is a fundamental condition of such agreements. If a grant of rights is described as “irrevocable”, it may be appropriate for the agreement to also specify that the creator is entitled to sue for damages for breach of the terms of the agreement. Also, even a grant of rights described as “irrevocable” may be subject to “revocation” and may be reverted by the creator in specified circumstances, for example, failure to produce or publish a work. (See paragraph 4 above on reversion rights.)

11) The letter N stands for net. A creator should always view the word “net” in a rights agreement with intense scrutiny! Net of what? Sometimes a producer, publisher, or distributor is permitted to deduct so many expenses from its gross revenues that there is very little if anything left on which to base the creator’s royalty or share of profits.

12) The letter G is last, but is certainly not the least letter in the word checklist C.R.E.A.T.I.N.G. It stands for the grant of rights, which should be very carefully scrutinized by a creator. A grant may authorize anything from a narrow temporary non-exclusive use to a very broad long-term or permanent exclusive use. Under a licence, which is more akin to a rental than a sale of rights, the creator always retains a right to their property (though unable to exercise any right of copyright in it until expiry or other termination of an exclusive licence of all rights). An outright sale or other complete transfer of rights is often referred to as an “assignment” of rights. From a creator’s perspective, licensing is usually preferable to an assignment, and most rights agreements can be drafted as licences. A grant of rights can include a great many things including, broadly, the form, technology, manner of use, purpose, media and languages for which rights are granted and may be used. A grant of rights may capture future technology or formats for use of the rights granted, or attempt to capture rights unknown or even unimagined at the time of the agreement. The grant of rights can also specify restrictions on the grant. For example, if the grant is for the use of music in a film, is it restricted to use in that film only? Can the music be used in the trailers and advertising, marketing, or other promotional material for the film? Can that music be used in a sequel to the film or a video game based on the film? Can it be licensed by the creator to a different producer or publisher for a video game related or unrelated to the film? Such questions and many more are key issues that are part of negotiations regarding the scope of grants of rights in licences and other rights agreements.

The letters C.-R.-E.-A.-T.-I.-N.-G. have proven to be a very useful mini-checklist that I have used when teaching and working with creators and that any creator can use when considering the basics of what should be included when negotiating and entering into a licence or other agreement granting rights. The word checklist C.R.E.A.T.I.N.G. or acronym CREATING is easily remembered and can be applied to any licence or other rights agreement. It often is relevant and valuable when analyzing and negotiating the terms of almost any such agreement. It should be noted that terms, for example, “net receipts”, “net revenue”, “net profits” or “reversion” or “termination” rights, amongst the many terms used frequently in rights agreements, may be defined specifically in a particular agreement, though sometimes buried in a long paragraph or in a schedule to the agreement. All definitions should be reviewed carefully as they can substantially affect the interpretation of the agreement and the extent of the rights granted in the agreement. And, however clearly this article may explain the concepts represented by the letters forming this acronym, it is not, nor is it intended to be, an exhaustive discussion of all points that a creator needs to consider before signing a rights agreement. Ideally, in any given specific legal situation, legal advice should be obtained from a lawyer who practises law in the field in which the creator works.

Copyright © Paul Sanderson 2020

Paul Sanderson thanks Emmanuel Evdemon, Tony Duarte, Ken Thompson and Marian Hebb for their contributions and suggestions to this article and to Marian for her editorial assistance.

* Marian also coined both the names ALAS, which is a short form and acronym for Artists’ Legal Advice Services, operating since 1986 in Toronto and providing legal information, education and summary legal advice to all artists of all disciplines on a pro bono basis, and ALAC, which is a short form and acronym for Artists and Lawyers for the Advancement of Creativity, the federally incorporated not-for-profit corporation which co-ordinates ALAS.

ARTISTS’ LEGAL ADVICE SERVICES invites creators to use the acronym CREATING
as a reminder that the letters C.-R.-E.-A.-T.-I.-N.-G. form a useful checklist:

C stands for copyright, compensation and credit
R for reserved rights, revoke and revert – and missing a residual will hurt!
E is for exclusive, but non-exclusive is swell
A for accounting, and audit as well
T is for term, and territory too
I for irrevocable – do be careful of that!
N is for net, which could be a bad trap! 
G is for the grant of rights, don’t forget – since this checklist has no point without it!

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IP rights are protected by laws enacted so that creators can benefit when they choose to share their creations with the public. Laws protecting IP incentivize the creation of new, original, and useful works/inventions, which will benefit society as well as their creators. In general, IP rights allow creators to authorize the use of and benefit from their creations for a certain timeframe, after which the general public may use a creation without restrictions from the owner of the IP. However, IP rights in a creation are not always owned by the creator (for example, if the creator has sold their IP rights to someone else or created their work in the course of their employment).

It is also important to keep in mind that each country has its own IP laws, and so the IP rights that a creator may own can vary in each country. In order to understand what IP rights may apply, please keep in mind which country’s (or countries’) laws may apply. The ALAS Legal Database provides summary information about the laws of the province of Ontario in Canada, and may not include all of the information you require.

Below are a few of the different types of IP rights available to different types of creators. For more information, please see more detailed articles on each type of IP in the ALAS Legal Database:

Copyright
Certain types of creative expressions (known as ‘works’) may be eligible for copyright protection. The owners of copyright in a work are exclusively entitled to use that work (such as to publish, modify, or distribute the work), and it may be an infringement of copyright for someone else to use the work without permission. Copyright protection generally lasts for the lifetime of the author, and then for a further period that varies by country (in Canada, 70 years from the end of the year of the author’s death).

Trademarks
The providers of goods and services (such as companies or retailers) may use certain indicators to distinguish their goods or services from those of other businesses. These source indicators are known as trademarks, and can come in a variety of forms such as business names, logos, slogans, or packaging. If two businesses or proprietors offer the same types of goods and/or services using confusingly similar trademarks then this could be an infringement and/or passing-off (i.e. one business pretending to be another to fool customers).

Industrial Designs
IP law can be used to protect certain types of non-utilitarian visual designs, such as plans for three-dimensional objects or functional two-dimensional graphics (e.g. an app user-interface). This area of law generally only protects the non-useful, ornamental elements of designs, and not their intended function. For example, it could be possible to protect a distinctive and visually appealing chair, but not the concept of a chair. INdustrial design protection can help people creating goods to protect the unique visual elements that make their goods aesthetically appealing.

Patents
Inventors can sometimes protect their concepts for new and unique ways of doing things (i.e. an invention). This protection allows them to prohibit others from using the invention for a certain period of time, giving the inventor an opportunity to profit from their idea. The requirements for an idea to be patentable vary from country to country, but generally the invention must be novel and not obvious, as well as useful.

Trade Secrets
IP rights generally do not protect information per se, and so trade secrets refers to a protection strategy for information that is important to a business (such as concepts, ideas, formulas, recipes). Because IP rights do not prevent others from using the information, the business that owns it must keep the information secret. This is often accomplished by only sharing the information with select individuals, and entering into non-disclosure agreements (NDAs) with those individuals to ensure that they keep the information to themselves.

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Collective administration can offer a number of advantages to both copyright owners and users. For copyright owners, the exploitation of copyright-protected works can be a full-time or arduous job, and so it can be extremely helpful to leave that task to a knowledgeable organization with relevant expertise. Collectives focus on licensing, and so they may have more expertise administering rights than the copyright owners themselves. For users, it is much more efficient to go to one place to obtain licenses for a large number of works rather than to go to each and every copyright owner to seek licensing.

Each collective operates differently, and so it is important to understand the different types of collective administration. Generally speaking, collectives tend to only administer the licensing of a single type of work (e.g. literary works or musical works) and one or small number of rights (e.g. the right to make copies or perform a work). Some collectives may take on ownership of the rights that they administer, while others only act as an agent to exercise rights on behalf of copyright owners.

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Additionally, an author who owns copyright in a work is free to sell their copyright to someone else. They may sell their 100% of their copyright ownership, or they may divide it and only sell a portion of the copyright ownership (e.g. sell only 50% of copyright in a work) or just some of the rights included in copyright (e.g. the right to distribute in Canada). Copyright is divisible and so there may be multiple owners of copyright in a work, and each of these owners would hold different or proportionate rights to control and exploit the work.

Similarly, a work may be authored by more than one person, and so there may be multiple co-authors of a single work. In that scenario, each co-author would own a portion of the copyright in the work. The co-authors may share equal portions of the copyright, or they may have privately agreed to different shares of rights, and they can even divide different elements of a work (e.g. two writers of a song could agree that one owns the lyrics and the other owns the music, but both jointly own the song).

Copyright is “divisible” in these kinds of ways.

It is important to keep the distinction between copyright ownership and authorship in mind. It is also important to remember that physical possession is not the same thing as copyright ownership. For example, if a painter sold their painting at auction then that would not necessarily transfer copyright in the work: the purchaser may own the painting itself, while the painter may still own the copyright (and would still hold moral rights as an author).

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In Canada, for a work to be protected by copyright, it must be an original expression that is the product of intellectual effort by an author, and it must be fixed in a material form. Copyright does not protect facts or ideas or unexpressed concepts. It is also important to keep in mind that the author of a work may not be the owner of copyright in that work (although the author may retain their moral rights).

The owners of copyright in a work are exclusively entitled to use that work in certain ways, including to control the publication, reproduction, communication, modification, or distribution of that work. If someone besides the copyright owner exercises any of these rights (without the owner’s authorization) then it may amount to an infringement of copyright in the work (subject to various exceptions to copyright, including fair dealing).

Generally speaking, copyright protection for a work generally lasts for the lifetime of the author, and then for a further period that varies by country. In Canada, copyright protection currently lasts for 70 years from the end of the year of the author’s death. There are certain other conditions for works prepared by joint authors, and for works by unknown authors.

The Canadian Intellectual Property Office has also published a helpful ‘Learn the Basics’ primer on Copyright, which can be found here.

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