By now, we have all seen the photograph of Bernie Sanders sitting on a chair during the Biden inauguration. Not only did this photograph go viral, but it became a prolific meme template. Bernie isn’t the first to get this treatment. Numerous individuals have become the focus of a meme template. If you ask us, it already feels like decades since the “Bad Luck Brian” image macro was first published, not eight years.
It’s safe to say, that the age of internet humor has posed some interesting questions to the legal profession. Today, despite the fact that no one asked us to, the team at Durand Lawyers has decided to delve into a copyright perspective on meme templates in the vein of “Bernie Sanders Wearing Mittens Sitting in a Chair”.
Indeed, despite the joy we derive from re-posting memes in the spur of the moment, many images which form the basis of these memes are taken from copyrighted works. Here are a few questions to keep in mind when thinking about our favorite memes:
1. Do we know the identity of the photographer, the artist, or of the author?
2. Are we allowed to use and display the image or photograph without having obtained the author, artist or photographer’s prior consent?
3. Does the use of the photograph constitute a form of infringement (or unauthorized use)?
An analysis of these questions relies on our deconstructing a meme into at least two distinct parts. The subject matter used in the meme template (the “underlying content”), and the meme itself.
What’s in a name?
The first question is sometimes the easiest to answer. In the case of the Bernie meme, the photographer is Mr. Brendan Smialowski, an award-winning photographer based in Washington, D.C.. While the identity of the artist or photographer may be an afterthought to some, when underlying content is used in a meme template, copyright law still applies.
Copyright protection in Canada has historically relied on the concept of authorship, or colloquially, who took the picture? Memes, by their nature, often originate from anonymous sources on the internet, and are then reproduced en masse once they go viral. While anonymous and pseudonymous works are also protected within the Canadian Copyright Act, a meme may be based on the work of an identifiable author who wishes to protect their work. More likely, especially when the underlying content is taken from popular media, is that the copyright has been assigned or licensed to a third-party.
The Buzzkill Moment
Even if an image or photograph goes viral, it does not necessarily mean you can use it without having obtained prior consent from the author or the owner of the work itself (e.g., an agency, or copyright management organization). For the purpose of the following analysis, let’s take a hypothetical case in which a photographer’s image is modified and made available as a template online, to be superimposed into memes reproduced on the internet. Copyright law in Canada asks us to consider the following:
Originality: Does copyright subsist in the work, either the underlying content or the meme itself? While originality may be easier to demonstrate when thinking of professional photography, would a meme which blurs the line between original expression and idea satisfy the legal test set forth in CCH Canadian Ltd. v. Law Society of Upper Canada with respect to originality and a display of “skill and judgement”? Copyright law in Canada protects original expression, not an idea in and of itself, and some memes are best described as an idea which emerges from collaboration on the internet. Sometimes, it is the evocation of a well-known meme, distilled to its individual characteristics, which constitutes meta humour. Fundamentally, we must wonder how a template, which is recreated and shaped by so many on the internet, can still be attributable to the originality of a few. While the base images used in a meme template are often in and of themselves taken from an original work, fixed in time, their subsequent modification by the internet challenge the notion of originality in copyright law.
Ownership: Does the photographer own the copyright in the photograph, did they assign it or license it to someone else? Did the photographer take the picture while under employment, or was it a “work for hire” (a U.S. concept)? So many questions! In Canada, that may affect the ownership of the work itself a priori. While the author may choose to let the internet consume and shape their work, a particular photograph may have been assigned or exclusively licensed to another person or company who may feel less charitable. The famous example from the past was the dispute between the owners of a site, Get Digital, and an image hosting website who owned the rights to the picture underlying the "Socially Awkward Penguin" meme (as you can see, we at Durand Lawyers take our banner images very seriously).
Cross-territoriality: How are the above questions shaped by the internet? Copyright registration in Canada is not required per se in order for copyright to “exist” in relation to a work, as Canada, like other nations, has decided to adhere to a series of bilateral and international instruments, including, for example: the Berne Convention for the Protection of Literary and Artistic Works. Through such instruments, signatories have agreed to certain principles enshrined in their respective national intellectual property laws. One of these is the principle of “national treatment”, described recently at article 20.8 of the CUSMA as requiring that Canada, Mexico, and the United States:
“accord to nationals of [another signatory state] treatment no less favorable than it accords to its own nationals with regard to the protection of intellectual property rights”.
So, while copyright protection is jurisdictional, international conventions have sought to create a degree of reciprocity with respect to the protections afforded to works not created in Canada. Other mechanisms, such as the Canadian “notice and notice” regime, and the “notice and take down” regime prescribed in the United States Digital Millennium Copyright Act (DMCA) have sought to provide a balance between the rights of the copyright owners, intermediaries such as internet service providers, and internet users.
The Deal with Fair Dealing
While it should come as no surprise that copyright subsists in underlying content, we’d like to delve a bit deeper into how memes as a construct fall within the current Canadian legislative scheme. How does the Canadian fair dealing doctrine, and the structure of copyright infringement actions, act against or in the interest of memes? The basis of a copyright infringement action, the exclusive rights of the author with respect to the underlying work, inform the rights of an author whose work has been used as a meme template. Section 3(1) of the Copyright Act grants the sole right to “…produce or reproduce the work or any substantial part thereof in any material form whatever…”. This is an important distinction, and a cornerstone of Canadian copyright law which seeks to restrict claims of infringement. Returning to the underlying requirement for originality, the Supreme Court of Canada has defined a “substantial part” as meaning a “substantial portion of the author’s skill and judgement expressed therein”. This analysis, an assessment of substantiality, is done on a case-by-case basis to inform liability. Memes could, in theory, contain a substantial part of a copyrighted work, rather than a few stills from a television series, and the author may choose to enforce their rights in said underlying content.
If it is true that a substantial part of a work has been used, how do the exceptions to copyright infringement apply to memes? The Canadian fair dealing doctrine permits the use of other people’s copyright protected work without permission or payment for listed purposes, including satire and parody, provided that accreditation is given to the author. Parody, was recently defined in United Airlines, Inc. v. Cooperstock as having two essential elements, namely (i) “the evocation of an existing work”, and (ii) “exhibiting noticeable differences and the expression of mockery or humour”.
Yet, even if one of the reasons for fair dealing is applicable, Canadian courts still ask: was the dealing fair? That is a very tricky question to answer and relies on an analysis of “(1) the purpose of the dealing; (2) the character of the dealing; (3) the amount of the dealing; (4) alternatives to the dealing; (5) the nature of the work; and (6) the effect of the dealing on the work”. Fairness, similarly to substantiality, is a question of fact which depends on the context of the infringement action.
Finally, in Canada, the Copyright Act affords protections to non-commercial user-generated content (UGC). This allows individuals to use an existing work or subject matter, or to copy one, which has been published or otherwise made available to the public, within the creation of a new work. This right to use the new work, or to authorize its dissemination by, for example, uploading it on YouTube® or on IMGUR®, is limited to conditions. The use of, or authorization to disseminate, must be done solely for non-commercial purposes, and must not have a substantial effect, financial or otherwise, on the exploitation of the existing work and/or its market. This protection acts in favour of content generated by amateur meme enthusiasts, however even well intentioned UGC may still have an effect on the market of an artist. Rights holders must therefore consider whether the effect of unauthorized use is, on the whole, detrimental to their work. After all, one may judge that the adverse effects of the meme's use of underlying content are outweighed by the exposure gained through its mass reproduction.
As is often the case in copyright law, there is a constant balance between the interests of the author, and those of content creators and the general public. While many legal scholars have argued for or against the protection of memes from copyright liability, our objective today was to expose the various elements at play behind an image which has gone viral and turned into a template from a copyright perspective.
If you are an artist, photographer, or rights holder, and you own the copyright to a work that has gone viral, realize that your rights are not invalidated by the internet! While permitting meme templates to emerge from your work can, and has, allowed for an enjoyable ecosystem of creativity, you may disagree with the publishing and distribution of your work on the internet. If that is the case, do not hesitate to contact our team.
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 Know Your Meme, “Bernie Sanders Wearing Mittens Sitting in a Chair”, Know your meme, online: https://knowyourmeme.com/memes/bernie-sanders-wearing-mittens-sitting-in-a-chair/
 CCH Canadian Ltd. v. Law Society of Upper Canada, 2004 SCC 13,  1 SCR 339, https://canlii.ca/t/1glp0, Lickerish, Ltd. v. Airg Inc., 2020 FC 1128, https://canlii.ca/t/jcf15; Rallysport Direct LLC v. 2424508 Ontario Ltd., 2019 FC 1524, https://canlii.ca/t/j5bq7; Trader v. CarGurus, 2017 ONSC 1841, https://canlii.ca/t/h32jb, Davydiuk v. Internet Archive Canada, 2016 FC 1313, https://canlii.ca/t/gw020.
 Rogers Communications Inc v Voltage Pictures, LLC,  SCJ No 38, 2018 SCC 38, 2018 CSC 38,  ACS no 38,  2 SCR 643,  2 RCS 643, 158 CPR (4th) 399, 295 ACWS (3d) 505, 425 DLR (4th) 22, 2018 CarswellNat 5120 at para 26; https://www.ic.gc.ca/eic/site/Oca-bc.nsf/eng/ca02920.html.
 Copyright Act, RSC, 1985, c. C-42, s 3(1).
 Cinar Corporation v. Robinson, 2013 SCC 73 at para 26.
 York University v. Copyright Licensing Agency, 2020 FCA 77, https://canlii.ca/t/j6lsb; Alberta (Education) v. Canadian Copyright Licensing Agency (Access Copyright),  2 S.C.R. 345, 2012 SCC 37, https://scc-csc.lexum.com/scc-csc/scc-csc/en/item/9997/index.do; Society of Composers, Authors and Music Publishers of Canada v. Bell Canada,  2 S.C.R. 326, 2012 SCC 36, https://scc-csc.lexum.com/scc-csc/scc-csc/en/item/9996/index.do; CCH Canadian Ltd. v. Law Society of Upper Canada,  1 S.C.R. 339, 2004 SCC 13 (see note 5); and Théberge v. Galerie d’Art du Petit Champlain inc.,  2 S.C.R. 336, 2002 SCC 34, available at: https://scc-csc.lexum.com/scc-csc/scc-csc/en/item/1973/index.do.
 United Airlines, Inc v Cooperstock,  1 FCR 188, 2017 FC 616,  1 RCF 188,  FCJ No 649,  ACF no 649 at para 119.
 CCH, supra note 3 at para 53.
 Society of Composers, Authors and Music Publishers of Canada v Bell Canada,  2 SCR 326, 2012 SCC 36,  2 RCS 326,  SCJ No 36,  ACS no 36 at para 32.
 Copyright Act, RSC, 1985, c. C-42, s 29.21(1).