CCH Canadian
Ltd. v. Law Society of Upper Canada, [2004] 1 S.C.R. 339, 2004 SCC 13
Law Society of Upper Canada Appellant/Respondent
on cross-appeal
v.
CCH Canadian Limited Respondent/Appellant
on cross-appeal
and between
Law Society of Upper Canada Appellant/Respondent
on cross-appeal
v.
Thomson
Canada Limited c.o.b. as Carswell
Thomson Professional Publishing Respondent/Appellant
on cross-appeal
and between
Law Society of Upper Canada Appellant/Respondent
on cross-appeal
v.
Canada Law Book Inc. Respondent/Appellant
on cross-appeal
and
Federation
of Law Societies of Canada, Canadian
Publishers’
Council and Association of Canadian
Publishers,
Société québécoise de gestion
collective
des droits de reproduction (COPIBEC) and
Canadian Copyright Licensing Agency (Access Copyright) Interveners
Indexed as: CCH Canadian Ltd. v. Law Society of Upper Canada
Neutral citation: 2004 SCC 13.
File No.: 29320.
2003: November 10; 2004: March 4.
Present: McLachlin C.J. and Iacobucci, Major, Bastarache, Binnie,
Arbour, LeBel, Deschamps and Fish JJ.
on appeal from the federal court of appeal
Copyright — Infringement — Photocopying — Fax transmissions — Law
Society providing custom photocopy service and maintaining self-service
photocopiers in library for use by patrons — Legal publishers bringing
copyright infringement actions against Law Society — Whether publishers’
headnotes, case summary, topical index and compilation of reported judicial
decisions “original” works covered by copyright — If so, whether Law Society
breached publishers’ copyright — Whether Law Society’s fax transmissions of
publishers’ works constitute communications “to the public” — Copyright Act,
R.S.C. 1985, c. C-42, s. 3(1) (f).
Copyright — Infringement — Exception — Fair dealings — Law Society
providing custom photocopy service and maintaining self-service photocopiers in
library for use by patrons — Legal publishers bringing copyright infringement
actions against Law Society — Whether Law Society’s dealings with publishers’
works “fair dealings” — Copyright Act, R.S.C. 1985, c. C-42, s. 29 .
Copyright — Works in which copyright may subsist — Meaning of
“original” work — Whether headnotes, case summary, topical index and
compilation of reported judicial decisions “original” works covered by
copyright — Copyright Act, R.S.C. 1985, c. C-42, s. 2 “every original
literary, dramatic, musical and artistic work”.
The appellant Law Society maintains and operates the Great Library at
Osgoode Hall in Toronto, a reference and research library with one of the
largest collections of legal materials in Canada. The Great Library provides a
request-based photocopy service for Law Society members, the judiciary and
other authorized researchers. Under this “custom photocopy service”, legal
materials are reproduced by Great Library staff and delivered in person, by
mail or by facsimile transmission to requesters. The Law Society also
maintains self-service photocopiers in the Great Library for use by its
patrons. In 1993, the respondent publishers commenced copyright infringement
actions against the Law Society, seeking a declaration of subsistence and
ownership of copyright in specific works and a declaration that the Law Society
had infringed copyright when the Great Library reproduced a copy of each of the
works. The publishers also sought a permanent injunction prohibiting the Law
Society from reproducing these works as well as any other works that they
published. The Law Society denied liability and counterclaimed for a
declaration that copyright is not infringed when a single copy of a reported
decision, case summary, statute, regulation or a limited selection of text from
a treatise is made by the Great Library staff, or one of its patrons on a
self-service copier, for the purpose of research. The Federal Court, Trial
Division allowed the publishers’ action in part, finding that the Law Society
had infringed copyright in certain works; it dismissed the Law Society’s
counterclaim. The Federal Court of Appeal allowed the publishers’ appeal in
part, holding that all of the works were original and therefore covered by
copyright. It dismissed the Law Society’s cross-appeal.
Held: The appeal should be allowed and the cross-appeal
dismissed. The Law Society does not infringe copyright when a single copy of a
reported decision, case summary, statute, regulation or limited selection of
text from a treatise is made by the Great Library in accordance with its access
policy. Moreover, the Law Society does not authorize copyright infringement by
maintaining a photocopier in the Great Library and posting a notice warning
that it will not be responsible for any copies made in infringement of
copyright.
The headnotes, case summary, topical index and compilation of reported
judicial decisions are all original works in which copyright subsists. An
“original” work under the Copyright Act is one that originates from an
author and is not copied from another work. In addition, an original work must
be the product of an author’s exercise of skill and judgment. The exercise of
skill and judgment required to produce the work must not be so trivial that it
could be characterized as a purely mechanical exercise. While creative works
will by definition be “original” and covered by copyright, creativity is not
required to make a work “original”. This conclusion is supported by the plain
meaning of “original”, the history of copyright law, recent jurisprudence, the
purpose of the Copyright Act and the fact that this constitutes a
workable yet fair standard. While the reported judicial decisions, when
properly understood as a compilation of the headnote and the accompanying edited
judicial reasons, are “original” works covered by copyright, the judicial
reasons in and of themselves, without the headnotes, are not original works in
which the publishers could claim copyright.
Under s. 29 of the Copyright Act , fair dealing for the
purpose of research or private study does not infringe copyright. “Research”
must be given a large and liberal interpretation in order to ensure that users’
rights are not unduly constrained, and is not limited to non-commercial or
private contexts. Lawyers carrying on the business of law for profit are
conducting research within the meaning of s. 29 . The following factors
help determine whether a dealing is fair: the purpose of the dealing, the
character of the dealing, the amount of the dealing, the nature of the work,
available alternatives to the dealing, and the effect of the dealing on the
work. Here, the Law Society’s dealings with the publishers’ works through its
custom photocopy service were research-based and fair. The access policy
places appropriate limits on the type of copying that the Law Society will do.
If a request does not appear to be for the purpose of research, criticism,
review or private study, the copy will not be made. If a question arises as to
whether the stated purpose is legitimate, the reference librarian will review
the matter. The access policy limits the amount of work that will be copied,
and the reference librarian reviews requests that exceed what might typically
be considered reasonable and has the right to refuse to fulfill a request.
The Law Society did not authorize copyright infringement by providing
self‑service photocopiers for use by its patrons in the Great Library.
While authorization can be inferred from acts that are less than direct and
positive, a person does not authorize infringement by authorizing the mere use
of equipment that could be used to infringe copyright. Courts should
presume that a person who authorizes an activity does so only so far as it is
in accordance with the law. This presumption may be rebutted if it is shown
that a certain relationship or degree of control existed between the alleged
authorizer and the persons who committed the copyright infringement. Here,
there was no evidence that the copiers had been used in a manner that was not
consistent with copyright law. Moreover, the Law Society’s posting of a notice
warning that it will not be responsible for any copies made in infringement of
copyright does not constitute an express acknowledgement that the copiers will
be used in an illegal manner. Finally, even if there were evidence of the
copiers having been used to infringe copyright, the Law Society lacks
sufficient control over the Great Library’s patrons to permit the conclusion
that it sanctioned, approved or countenanced the infringement.
There was no secondary infringement by the Law Society. The Law
Society’s fax transmissions of copies of the respondent publishers’ works to
lawyers in Ontario were not communications to the public. While a series of
repeated fax transmissions of the same work to numerous different recipients
might constitute communication to the public in infringement of copyright,
there was no evidence of this type of transmission having occurred in this
case. Nor did the Law Society infringe copyright by selling copies of the
publishers’ works. Absent primary infringement, there can be no secondary
infringement. Finally, while it is not necessary to decide the point, the
Great Library qualifies for the library exemption.
Cases Cited
Applied: Muzak Corp. v. Composers, Authors and Publishers
Association of Canada, Ltd., [1953] 2 S.C.R. 182; De Tervagne
v. Belœil (Town), [1993] 3 F.C. 227; not followed: Moorhouse
v. University of New South Wales, [1976] R.P.C. 151; referred to: Moreau
v. St. Vincent, [1950] Ex. C.R. 198; Goldner v. Canadian Broadcasting
Corp. (1972), 7 C.P.R. (2d) 158; Grignon v. Roussel (1991), 38
C.P.R. (3d) 4; Théberge v. Galerie d’Art du Petit Champlain inc., [2002]
2 S.C.R. 336, 2002 SCC 34; Bishop v. Stevens, [1990]
2 S.C.R. 467; Compo Co. v. Blue Crest Music Inc., [1980]
1 S.C.R. 357; Bell ExpressVu Limited Partnership v. Rex,
[2002] 2 S.C.R. 559, 2002 SCC 42; University of London
Press, Ltd. v. University Tutorial Press, Ltd., [1916] 2 Ch. 601;
U & R Tax Services Ltd. v. H & R Block Canada Inc. (1995),
62 C.P.R. (3d) 257; Feist Publications Inc. v. Rural
Telephone Service Co., 499 U.S. 340 (1991); Tele-Direct
(Publications) Inc. v. American Business Information, Inc., [1998] 2 F.C.
22; Édutile Inc. v. Automobile Protection Assn., [2000]
4 F.C. 195; Slumber-Magic Adjustable Bed Co. v. Sleep-King
Adjustable Bed Co. (1984), 3 C.P.R. (3d) 81; Ladbroke (Football) Ltd. v.
William Hill (Football) Ltd., [1964] 1 All E.R. 465; Composers, Authors
and Publishers Association of Canada Ltd. v. CTV Television Network Ltd.,
[1968] S.C.R. 676; CBS Inc. v. Ames Records & Tapes Ltd., [1981]
2 All E.R. 812; Hubbard v. Vosper, [1972] 1 All
E.R. 1023; Associated Newspapers Group plc v. News Group Newspapers
Ltd., [1986] R.P.C. 515; Sillitoe v. McGraw-Hill Book Co. (U.K.),
[1983] F.S.R. 545; Beloff v. Pressdram Ltd., [1973] 1 All E.R. 241; Pro
Sieben Media AG v. Carlton UK Television Ltd., [1999] F.S.R. 610.
Statutes and
Regulations Cited
Berne Convention for the Protection of Literary and Artistic Works
(1886).
Copyright Act, R.S.C. 1985, c. C-42,
ss. 2 “computer program” [am. c. 10 (4th Supp.), s. 1(3) ],
“dramatic work” [am. 1993, c. 44, s. 53(2)], “every original
literary, dramatic, musical and artistic work” [idem], “library, archive
or museum” [ad. 1997, c. 24, s. 1(5)], “work”, 2.1 [ad. 1993,
c. 44, s. 54], Part I, 3(1) [am. 1988, c. 65, s. 62; am. 1993,
c. 44, s. 55; am. 1997, c. 24, s. 3], 5(1) [repl. 1994, c. 47, s. 57(1);
am. 1997, c. 24, s. 5], Part III, 27 [repl. 1997, c. 24,
s. 15], 29 [idem, s. 18(1)], 29.1, 29.2, 30, 30.2 [ad. idem],
Part IV, 34(1) [repl. idem, s. 20(1)].
Authors Cited
Concise Oxford Dictionary of Current English, 7th ed. Oxford:
Oxford University Press, 1982, “original”.
Craig, Carys J. “Locke, Labour and Limiting the Author’s
Right: A Warning against a Lockean Approach to Copyright Law” (2002), 28 Queen’s
L.J. 1.
Driedger, Elmer A. Construction of Statutes,
2nd ed. Toronto: Butterworths, 1983.
Gervais, Daniel J. “Feist Goes Global: A Comparative
Analysis of the Notion of Originality in Copyright Law” (2002), 49 J.
Copyright Soc’y U.S.A. 949.
Handa, Sunny. Copyright Law in Canada. Markham, Ont.:
Butterworths, 2002.
Hitchcock, P. D. “Home Copying and Authorization” (1983),
67 C.P.R. (2d) 17.
Kierans, Patrick E., and Rowena Borenstein. “Injunctions —
Interlocutory and Permanent”. In Ronald E. Dimock, ed., Intellectual
Property Disputes: Resolutions & Remedies, vol. 2. Toronto:
Thomson/Carswell, 2002, 15-1.
Litman, Jessica. “The Public Domain” (1990), 39 Emory L.J.
965.
McKeown, John S. Fox Canadian Law of Copyright and
Industrial Designs, 4th ed. Toronto: Thomson/Carswell, 2003 (loose-leaf).
New Shorter Oxford English Dictionary on Historical Principles,
vol. 1. Oxford: Clarendon Press, 1993, “countenance”.
Ricketson, Sam. The Berne Convention for the Protection of
Literary and Artistic Works: 1886-1986. London: Kluwer, 1987.
Vaver, David. Copyright Law. Toronto:
Irwin Law, 2000.
APPEAL and CROSS-APPEAL from a judgment of the Federal Court of Appeal,
[2002] 4 F.C. 213, 212 D.L.R. (4th) 385, 289 N.R. 1, 18 C.P.R. (4th) 161,
[2002] F.C.J. No. 690 (QL), 2002 FCA 187, reversing in part a judgment of
the Trial Division, [2000] 2 F.C. 451, 169 F.T.R. 1, 179 D.L.R. (4th) 609,
2 C.P.R. (4th) 129, 72 C.R.R. (2d) 139, [1999] F.C.J. No. 1647 (QL).
Appeal allowed and cross-appeal dismissed.
R. Scott Joliffe, L. A. Kelly Gill
and Kevin J. Sartorio, for the appellant/respondent on
cross-appeal.
Roger T. Hughes, Q.C., and Glen A. Bloom,
for the respondents/appellants on cross-appeal.
Kevin L. LaRoche, for the intervener the Federation of
Law Societies of Canada.
Thomas G. Heintzman, Q.C., and Barry B. Sookman,
for the interveners the Canadian Publishers’ Council and the Association of
Canadian Publishers.
Claude Brunet, Benoît Clermont and Madeleine Lamothe-Samson,
for the interveners Société québécoise de gestion collective des droits de
reproduction (COPIBEC) and the Canadian Copyright Licensing Agency (Access
Copyright).
The judgment of the Court was delivered by
The Chief Justice —
I. Introduction — The Issues To Be Determined
1
The appellant, the Law Society of Upper Canada, is a statutory
non-profit corporation that has regulated the legal profession in Ontario since
1822. Since 1845, the Law Society has maintained and operated the Great
Library at Osgoode Hall in Toronto, a reference and research library with one
of the largest collections of legal materials in Canada. The Great Library
provides a request-based photocopy service (the “custom photocopy service”) for
Law Society members, the judiciary and other authorized researchers. Under the
custom photocopy service, legal materials are reproduced by Great Library staff
and delivered in person, by mail or by facsimile transmission to requesters.
The Law Society also maintains self-service photocopiers in the Great Library for
use by its patrons.
2
The respondents, CCH Canadian Ltd., Thomson Canada Ltd. and Canada Law
Book Inc., publish law reports and other legal materials. In 1993, the
respondent publishers commenced copyright infringement actions against the Law
Society, seeking a declaration of subsistence and ownership of copyright in
eleven specific works and a declaration that the Law Society had infringed
copyright when the Great Library reproduced a copy of each of the works. The
publishers also sought a permanent injunction prohibiting the Law Society from
reproducing these eleven works as well as any other works that they published.
3
The Law Society denied liability and counterclaimed for a declaration
that copyright is not infringed when a single copy of a reported decision, case
summary, statute, regulation or a limited selection of text from a treatise is
made by the Great Library staff or one of its patrons on a self-service
photocopier for the purpose of research.
4
The key question that must be answered in this appeal is whether the Law
Society has breached copyright by either (1) providing the custom photocopy
service in which single copies of the publishers’ works are reproduced and sent
to patrons upon their request or by (2) maintaining self-service photocopiers
and copies of the publishers’ works in the Great Library for use by its
patrons. To answer this question, the Court must address the following
sub-issues:
(1) Are the publishers’ materials “original works” protected by
copyright?
(2) Did the Great Library authorize copyright infringement by
maintaining self-service photocopiers and copies of the publishers’ works for
its patrons’ use?
(3) Were the Law Society’s dealings with the publishers’ works “fair
dealing[s]” under s. 29 of the Copyright Act, R.S.C. 1985, c. C-42 , as
amended?
(4) Did Canada Law Book consent to have its works reproduced by the Great
Library?
5
The publishers have filed a cross-appeal in which they submit that, in
addition to infringing copyright by reproducing copies of their works, the Law
Society infringed copyright both by faxing and by selling copies of the
publishers’ copyrighted works through its custom photocopy service. The
publishers also contend that the Great Library does not qualify for the library
exemption under the Copyright Act and, finally, that they are entitled
to an injunction to the extent that the Law Society has been found to infringe
any one or more of their copyrighted works. The four sub-issues that the Court
must address on this cross-appeal are:
(1) Did the Law Society’s fax transmissions of the publishers’ works
constitute communications “to the public” within s. 3(1) (f) of the Copyright
Act so as to constitute copyright infringement?
(2) Did the Law Society infringe copyright by selling copies of the
publishers’ works contrary to s. 27(2) of the Copyright Act ?
(3) Does the Law Society qualify for an exemption as a “library, archive
or museum” under ss. 2 and 30.2(1) of the Copyright Act ?
(4) To the extent that the Law Society has been found to infringe any one
or more of the publishers’ copyrighted works, are the publishers entitled to a
permanent injunction under s. 34(1) of the Copyright Act ?
6
With respect to the main appeal, I conclude that the Law Society did not
infringe copyright by providing single copies of the respondent publishers’
works to its members through the custom photocopy service. Although the works
in question were “original” and thus covered by copyright, the Law Society’s
dealings with the works were for the purpose of research and were fair dealings
within s. 29 of the Copyright Act . I also find that the Law Society did
not authorize infringement by maintaining self-service photocopiers in the
Great Library for use by its patrons. I would therefore allow the appeal.
7
On the cross-appeal, I conclude that there was no secondary infringement
by the Law Society; the fax transmissions were not communications to the public
and the Law Society did not sell copies of the publishers’ works. In light of
my finding on appeal that the Law Society’s dealings with the publishers’ works
were fair, it is not necessary to decide whether the Great Library qualifies
for the library exemption. This said, I would conclude that the Great Library
does indeed qualify for this exemption. Finally, in light of my conclusion that
there has been no copyright infringement, it is not necessary to issue an
injunction in this case. I would dismiss the cross-appeal.
II. Analysis on Appeal
8
Copyright law in Canada protects a wide range of works including every
original literary, dramatic, musical and artistic work, computer programs,
translations and compilations of works: see ss. 5 , 2 and 2.1 of the Copyright
Act . Copyright law protects the expression of ideas in these works; it
does not protect ideas in and of themselves. Thorson P. explained it thus in Moreau
v. St. Vincent, [1950] Ex. C.R. 198, at p. 203:
It is, I think, an elementary principle of copyright law that an author
has no copyright in ideas but only in his expression of them. The law of
copyright does not give him any monopoly in the use of the ideas with which he
deals or any property in them, even if they are original. His copyright is confined
to the literary work in which he has expressed them. The ideas are public
property, the literary work is his own.
It flows from
the fact that copyright only protects the expression of ideas that a work must
also be in a fixed material form to attract copyright protection: see s. 2
definitions of “dramatic work” and “computer program” and, more generally, Goldner
v. Canadian Broadcasting Corp. (1972), 7 C.P.R. (2d) 158 (F.C.T.D.),
at p. 162; Grignon v. Roussel (1991), 38 C.P.R. (3d) 4 (F.C.T.D.), at p.
7.
9
In Canada, copyright is a creature of statute and the rights and
remedies provided by the Copyright Act are exhaustive: see Théberge
v. Galerie d’Art du Petit Champlain inc., [2002] 2 S.C.R. 336, 2002 SCC 34,
at para. 5; Bishop v. Stevens, [1990] 2 S.C.R. 467, at p. 477; Compo
Co. v. Blue Crest Music Inc., [1980] 1 S.C.R. 357, at p. 373. In
interpreting the scope of the Copyright Act ’s rights and remedies,
courts should apply the modern approach to statutory interpretation whereby
“the words of an Act are to be read in their entire context and in their
grammatical and ordinary sense harmoniously with the scheme of the Act, the
object of the Act, and the intention of Parliament”: Bell ExpressVu
Limited Partnership v. Rex, [2002] 2 S.C.R. 559, 2002 SCC 42, at para. 26,
citing E. A. Driedger, Construction of Statutes (2nd ed. 1983), at p.
87.
10
Binnie J. recently explained in Théberge, supra, at paras.
30-31, that the Copyright Act has dual objectives:
The Copyright Act is usually presented as a balance between
promoting the public interest in the encouragement and dissemination of works
of the arts and intellect and obtaining a just reward for the creator . . . .
The proper balance among these and other public
policy objectives lies not only in recognizing the creator’s rights but in
giving due weight to their limited nature.
In interpreting
the Copyright Act , courts should strive to maintain an appropriate
balance between these two goals.
11
Canada’s Copyright Act sets out the rights and obligations of
both copyright owners and users. Part I of the Act specifies the scope of a
creator’s copyright and moral rights in works. For example, s. 3 of the Act
specifies that only copyright owners have the right to copy or to authorize the
copying of their works:
3. (1) For the purposes of this Act, “copyright”, in relation
to a work, means the sole right to produce or reproduce the work or any
substantial part thereof in any material form whatever, to perform the work or
any substantial part thereof in public or, if the work is unpublished, to
publish the work or any substantial part thereof . . . .
. . .
and to authorize any such acts.
12
Part III of the Copyright Act deals with the infringement of
copyright and exceptions to infringement. Section 27(1) states generally that
“[i]t is an infringement of copyright for any person to do, without the consent
of the owner of the copyright, anything that by this Act only the owner of the
copyright has the right to do.” More specific examples of how copyright is
infringed are set out in s. 27(2) of the Act. The exceptions to copyright
infringement, perhaps more properly understood as users’ rights, are set out in
ss. 29 and 30 of the Act. The fair dealing exceptions to copyright are set out
in ss. 29 to 29.2 . In general terms, those who deal fairly with a work for the
purpose of research, private study, criticism, review or news reporting, do not
infringe copyright. Educational institutions, libraries, archives and museums
are specifically exempted from copyright infringement in certain circumstances:
see ss. 29.4 to 30 (educational institutions), and ss. 30.1 to 30.5 . Part IV
of the Copyright Act specifies the remedies that may be awarded in cases
where copyright has been infringed. Copyright owners may be entitled to any
number of different remedies such as damages and injunctions, among others.
13
This case requires this Court to interpret the scope of both owners’ and
users’ rights under the Copyright Act , including what qualifies for
copyright protection, what is required to find that the copyright has been
infringed through authorization and the fair dealing exceptions under the Act.
(1) Are the Publishers’ Materials “Original
Works” Covered by Copyright?
(a) The Law
14
Section 5 of the Copyright Act states that, in Canada, copyright
shall subsist “in every original literary, dramatic, musical and
artistic work” (emphasis added). Although originality sets the boundaries of
copyright law, it is not defined in the Copyright Act . Section 2 of the
Copyright Act defines “every original literary . . . work” as
including “every original production in the literary . . . domain, whatever may
be the mode or form of its expression”. Since copyright protects only the
expression or form of ideas, “the originality requirement must apply to the
expressive element of the work and not the idea”: S. Handa, Copyright Law
in Canada (2002), at p. 209.
15
There are competing views on the meaning of “original” in copyright
law. Some courts have found that a work that originates from an author and is
more than a mere copy of a work is sufficient to ground copyright. See, for
example, University of London Press, Ltd. v. University Tutorial
Press, Ltd., [1916] 2 Ch. 601; U & R Tax Services Ltd. v. H
& R Block Canada Inc. (1995), 62 C.P.R. (3d) 257 (F.C.T.D.). This
approach is consistent with the “sweat of the brow” or “industriousness”
standard of originality, which is premised on a natural rights or Lockean
theory of “just desserts”, namely that an author deserves to have his or her
efforts in producing a work rewarded. Other courts have required that a work
must be creative to be “original” and thus protected by copyright. See, for
example, Feist Publications Inc. v. Rural Telephone Service Co., 499
U.S. 340 (1991); Tele-Direct (Publications) Inc. v. American Business
Information, Inc., [1998] 2 F.C. 22 (C.A.). This approach is also
consistent with a natural rights theory of property law; however it is less
absolute in that only those works that are the product of creativity will be
rewarded with copyright protection. It has been suggested that the
“creativity” approach to originality helps ensure that copyright protection
only extends to the expression of ideas as opposed to the underlying ideas or
facts. See Feist, supra, at p. 353.
16
I conclude that the correct position falls between these extremes. For
a work to be “original” within the meaning of the Copyright Act , it
must be more than a mere copy of another work. At the same time, it need not
be creative, in the sense of being novel or unique. What is required to attract
copyright protection in the expression of an idea is an exercise of skill and
judgment. By skill, I mean the use of one’s knowledge, developed aptitude or
practised ability in producing the work. By judgment, I mean the use of one’s
capacity for discernment or ability to form an opinion or evaluation by
comparing different possible options in producing the work. This exercise of
skill and judgment will necessarily involve intellectual effort. The exercise
of skill and judgment required to produce the work must not be so trivial that
it could be characterized as a purely mechanical exercise. For example, any
skill and judgment that might be involved in simply changing the font of a work
to produce “another” work would be too trivial to merit copyright protection as
an “original” work.
17
In reaching this conclusion, I have had regard to: (1) the plain meaning
of “original”; (2) the history of copyright law; (3) recent jurisprudence; (4)
the purpose of the Copyright Act ; and (5) that this constitutes a workable
yet fair standard.
(i) The Plain Meaning of “Original”
18
The plain meaning of the word “original” suggests at least some
intellectual effort, as is necessarily involved in the exercise of skill and
judgment. The Concise Oxford Dictionary (7th ed. 1982), at p. 720,
defines “original” as follows:
1. a. existing from the first, primitive, innate, initial,
earliest; . . . 2. that has served as pattern, of which copy or
translation has been made, not derivative or dependant, first-hand, not
imitative, novel in character or style, inventive, creative, thinking or acting
for oneself.
“Original”’s
plain meaning implies not just that something is not a copy. It includes, if
not creativity per se, at least some sort of intellectual effort. As
Professor Gervais has noted, “[w]hen used to mean simply that the work must
originate from the author, originality is eviscerated of its core meaning. It
becomes a synonym of ‘originated,’ and fails to reflect the ordinary sense of
the word”: D. J. Gervais, “Feist Goes Global: A Comparative Analysis of
the Notion of Originality in Copyright Law” (2002), 49 J. Copyright
Soc’y U.S.A. 949, at p. 961.
(ii) History of Copyright
19
The idea of “intellectual creation” was implicit in the notion of
literary or artistic work under the Berne Convention for the
Protection of Literary and Artistic Works (1886), to which Canada
adhered in 1923, and which served as the precursor to Canada’s first Copyright
Act , adopted in 1924. See S. Ricketson, The Berne Convention for the
Protection of Literary and Artistic Works: 1886-1986 (1987), at
p. 900. Professor Ricketson has indicated that in adopting a sweat of the
brow or industriousness approach to deciding what is original, common law
countries such as England have “depart[ed] from the spirit, if not the letter,
of the [Berne] Convention” since works that have taken time, labour or money to
produce but are not truly artistic or literary intellectual creations are
accorded copyright protection: Ricketson, supra, at p. 901.
20
In the international context, France and other continental civilian
jurisdictions require more than mere industriousness to find that a work is
original. “Under the French law, originality means both the intellectual
contribution of the author and the novel nature of the work as compared with
existing works”: Handa, supra, at p. 211. This understanding of
originality is reinforced by the expression “le droit d’auteur” —
literally the “author’s right” — the term used in the French title of
the Copyright Act . The author must contribute something intellectual to
the work, namely skill and judgment, if it is to be considered original.
(iii) Recent Jurisprudence
21
Although many Canadian courts have adopted a rather low standard of
originality, i.e., that of industriousness, more recently, some courts
have begun to question whether this standard is appropriate. For example, the
Federal Court of Appeal in Tele-Direct, supra, held, at
para. 29, that those cases which had adopted the sweat of the brow approach to
originality should not be interpreted as concluding that labour, in and of
itself, could ground a finding of originality. As Décary J.A. explained: “If
they did, I suggest that their approach was wrong and is irreconcilable with
the standards of intellect and creativity that were expressly set out in NAFTA
and endorsed in the 1993 amendments to the Copyright Act and that were
already recognized in Anglo-Canadian law.” See also Édutile Inc. v.
Automobile Protection Assn., [2000] 4 F.C. 195 (C.A.), at para. 8, adopting
this passage.
22
The United States Supreme Court explicitly rejected the “sweat of the
brow” approach to originality in Feist, supra. In so doing,
O’Connor J. explained at p. 353 that, in her view, the “sweat of the brow”
approach was not consistent with the underlying tenets of copyright law:
The “sweat of the brow” doctrine had numerous flaws,
the most glaring being that it extended copyright protection in a compilation
beyond selection and arrangement — the compiler’s original contributions — to
the facts themselves. Under the doctrine, the only defense to infringement was
independent creation. A subsequent compiler was “not entitled to take one word
of information previously published,” but rather had to “independently wor(k)
out the matter for himself, so as to arrive at the same result from the same
common sources of information.” . . . “Sweat of the brow” courts thereby eschewed
the most fundamental axiom of copyright law — that no one may copyright facts
or ideas.
As this Court
recognized in Compo, supra, at p. 367, U.S. copyright cases may
not be easily transferable to Canada given the key differences in the copyright
concepts in Canadian and American copyright legislation. This said, in Canada,
as in the United States, copyright protection does not extend to facts or ideas
but is limited to the expression of ideas. As such, O’Connor J.’s concerns
about the “sweat of the brow” doctrine’s improper extension of copyright over
facts also resonate in Canada. I would not, however, go as far as O’Connor J.
in requiring that a work possess a minimal degree of creativity to be
considered original. See Feist, supra, at pp. 345 and 358.
(iv) Purpose of the Copyright Act
23
As mentioned, in Théberge, supra, this Court stated that
the purpose of copyright law was to balance the public interest in promoting
the encouragement and dissemination of works of the arts and intellect and
obtaining a just reward for the creator. When courts adopt a standard of
originality requiring only that something be more than a mere copy or that
someone simply show industriousness to ground copyright in a work, they tip the
scale in favour of the author’s or creator’s rights, at the loss of society’s
interest in maintaining a robust public domain that could help foster future
creative innovation. See J. Litman, “The Public Domain” (1990), 39 Emory
L.J. 965, at p. 969, and C. J. Craig, “Locke, Labour and Limiting the
Author’s Right: A Warning against a Lockean Approach to Copyright Law” (2002),
28 Queen’s L.J. 1. By way of contrast, when an author must
exercise skill and judgment to ground originality in a work, there is a
safeguard against the author being overcompensated for his or her work. This
helps ensure that there is room for the public domain to flourish as others are
able to produce new works by building on the ideas and information contained in
the works of others.
(v) Workable, Yet Fair Standard
24
Requiring that an original work be the product of an exercise of skill
and judgment is a workable yet fair standard. The “sweat of the brow” approach
to originality is too low a standard. It shifts the balance of copyright
protection too far in favour of the owner’s rights, and fails to allow
copyright to protect the public’s interest in maximizing the production and
dissemination of intellectual works. On the other hand, the creativity
standard of originality is too high. A creativity standard implies that
something must be novel or non-obvious — concepts more properly associated with
patent law than copyright law. By way of contrast, a standard requiring the
exercise of skill and judgment in the production of a work avoids these
difficulties and provides a workable and appropriate standard for copyright
protection that is consistent with the policy objectives of the Copyright
Act .
(vi) Conclusion
25
For these reasons, I conclude that an “original” work under the Copyright
Act is one that originates from an author and is not copied from another
work. That alone, however, is not sufficient to find that something is original.
In addition, an original work must be the product of an author’s exercise of
skill and judgment. The exercise of skill and judgment required to produce the
work must not be so trivial that it could be characterized as a purely
mechanical exercise. While creative works will by definition be “original” and
covered by copyright, creativity is not required to make a work “original”.
(b) Application of the Law to These Facts
26
At trial, the respondent publishers claimed copyright in eleven works:
three reported judicial decisions; the three headnotes preceding these
decisions; the annotated Martin’s Ontario Criminal Practice 1999; a case
summary; a topical index; the textbook Economic Negligence (1989); and
the monograph “Dental Evidence”, being chapter 13 in Forensic Evidence in
Canada (1991). Gibson J. held that the publishers’ works should be judged
against a standard of intellect and creativity in order to determine if they
were original. Based on this standard of originality, the trial judge found
that the publishers only had copyright in the annotated Criminal Practice,
the textbook and the monograph. He concluded that the remaining eight works
were not original and, therefore, were not covered by copyright ([2000] 2 F.C.
451).
27
On appeal, the Law Society did not challenge the trial judge’s findings
with respect to the three works in which he found copyright did exist, with the
exception of questioning whether the monograph constituted a “work” within the
meaning of the Copyright Act . The Federal Court of Appeal adopted the
“sweat of the brow” approach to originality and found that if a work was more
than a mere copy, it would be original. On this basis, Linden J.A., writing for
the majority, held that all of the remaining works were original and therefore
covered by copyright ([2002] 4 F.C. 213). The Law Society appeals, contending
that the headnotes, case summary, topical index and reported judicial decisions
are not “original” within the meaning of the Copyright Act and,
therefore, are not covered by copyright.
28
As stated, in order to be original, a work must have originated from the
author, not be copied, and must be the product of the exercise of skill and
judgment that is more than trivial. Applying this test, all of the works in question
are original and therefore covered by copyright.
(i) Headnotes
29
The Federal Court of Appeal held that “headnotes”, defined as including
the summary of the case, catchlines, statement of the case, case title and case
information, are more than mere copies and hence “original” works in which
copyright subsists. It found that the headnotes are more than simply an abridged
version of the reasons; they consist of independently composed features. As
Linden J.A. explained, at para. 73, the authors of the headnotes could have
chosen to make the summaries “long or short, technical or simple, dull or
dramatic, well written or confusing; the organization and presentation might
have varied greatly”.
30
Although headnotes are inspired in large part by the judgment which they
summarize and refer to, they are clearly not an identical copy of the reasons.
The authors must select specific elements of the decision and can arrange them
in numerous different ways. Making these decisions requires the exercise of
skill and judgment. The authors must use their knowledge about the law and
developed ability to determine legal ratios to produce the headnotes.
They must also use their capacity for discernment to decide which parts of the
judgment warrant inclusion in the headnotes. This process is more than just a
mechanical exercise. Thus the headnotes constitute “original” works in which copyright
subsists.
(ii) Case Summary
31
For substantially the same reasons as given for headnotes, the case
summary is also covered by copyright. A summary of judicial reasons is not
simply a copy of the original reasons. Even if the summary often contains the
same language as the judicial reasons, the act of choosing which portions to
extract and how to arrange them in the summary requires an exercise of skill
and judgment.
(iii) Topical Index
32
The topical index is part of the book Canada GST Cases (1997).
It provides a listing of cases with short headings to indicate the main topics
covered by the decision and very brief summaries of the decisions. The Federal
Court of Appeal held that the index was original in that it required skill and
effort to compile. I agree. The author of the index had to make an initial
decision as to which cases were authorities on GST. This alone is a decision
that would require the exercise of skill and judgment. The author also had to
decide which headings to include and which cases should fall under which
headings. He or she had to distill the essence of the decisions down to a
succinct one-phrase summary. All of these tasks require skill and judgment
that are sufficient to conclude that the topical index is an “original” work in
which copyright subsists.
(iv) Reported Judicial Decisions
33
The reported judicial decisions, when properly understood as a compilation
of the headnote and the accompanying edited judicial reasons, are
“original” works covered by copyright. Copyright protects originality of form
or expression. A compilation takes existing material and casts it in a
different form. The arranger does not have copyright in the individual
components. However, the arranger may have copyright in the form represented
by the compilation. “It is not the several components that are the subject of
the copyright, but the over-all arrangement of them which the plaintiff through
his industry has produced”: Slumber-Magic Adjustable Bed Co. v. Sleep-King
Adjustable Bed Co. (1984), 3 C.P.R. (3d) 81 (B.C.S.C.), at p. 84; see also Ladbroke
(Football) Ltd. v. William Hill (Football) Ltd., [1964] 1 All E.R.
465 (H.L.), at p. 469.
34
The reported judicial decisions here at issue meet the test for originality.
The authors have arranged the case summary, catchlines, case title, case
information (the headnotes) and the judicial reasons in a specific manner. The
arrangement of these different components requires the exercise of skill and
judgment. The compilation, viewed globally, attracts copyright protection.
35
This said, the judicial reasons in and of themselves, without the
headnotes, are not original works in which the publishers could claim
copyright. The changes made to judicial reasons are relatively trivial; the
publishers add only basic factual information about the date of the judgment,
the court and the panel hearing the case, counsel for each party, lists of
cases, statutes and parallel citations. The publishers also correct minor
grammatical errors and spelling mistakes. Any skill and judgment that might be
involved in making these minor changes and additions to the judicial reasons
are too trivial to warrant copyright protection. The changes and additions are
more properly characterized as a mere mechanical exercise. As such, the
reported reasons, when disentangled from the rest of the compilation — namely
the headnote — are not covered by copyright. It would not be copyright
infringement for someone to reproduce only the judicial reasons.
36
In summary, the headnotes, case summary, topical index and compilation
of reported judicial decisions are all works that have originated from their
authors and are not mere copies. They are the product of the exercise of skill
and judgment that is not trivial. As such, they are all “original” works in
which copyright subsists. The appeal of these findings should be dismissed.
(2) Authorization:
The Self-Service Photocopiers
(a) The Law
37
Under s. 27(1) of the Copyright Act , it is an infringement of
copyright for anyone to do anything that the Act only allows owners to do,
including authorizing the exercise of his or her own rights. It does not
infringe copyright to authorize a person to do something that would not constitute
copyright infringement. See Composers, Authors and Publishers Association
of Canada Ltd. v. CTV Television Network Ltd., [1968] S.C.R. 676, at p.
680. The publishers argue that the Law Society is liable for breach of
copyright under this section because it implicitly authorized patrons of the
Great Library to copy works in breach of the Copyright Act .
38
“Authorize” means to “sanction, approve and countenance”: Muzak
Corp. v. Composers, Authors and Publishers Association of Canada, Ltd., [1953]
2 S.C.R. 182, at p. 193; De Tervagne v. Belœil (Town), [1993] 3 F.C. 227
(T.D.). Countenance in the context of authorizing copyright infringement must
be understood in its strongest dictionary meaning, namely, “[g]ive approval to;
sanction, permit; favour, encourage”: see The New Shorter Oxford English
Dictionary (1993), vol. 1, at p. 526. Authorization is a question of fact
that depends on the circumstances of each particular case and can be inferred
from acts that are less than direct and positive, including a sufficient degree
of indifference: CBS Inc. v. Ames Records & Tapes Ltd., [1981] 2
All E.R. 812 (Ch. D.), at pp. 823-24. However, a person does not authorize
infringement by authorizing the mere use of equipment that could be used to
infringe copyright. Courts should presume that a person who authorizes
an activity does so only so far as it is in accordance with the law: Muzak,
supra. This presumption may be rebutted if it is shown that a certain
relationship or degree of control existed between the alleged authorizer and
the persons who committed the copyright infringement: Muzak, supra;
De Tervagne, supra; see also J. S. McKeown, Fox Canadian Law
of Copyright and Industrial Designs (4th ed. (loose-leaf)), at p. 21-104,
and P. D. Hitchcock, “Home Copying and Authorization” (1983), 67 C.P.R. (2d)
17, at pp. 29-33.
(b) Application of the Law to These Facts
39
For several decades, the Law Society has maintained self-service
photocopiers for the use of its patrons in the Great Library. The patrons’ use
of the machines is not monitored directly. Since the mid-1980s, the Law
Society has posted the following notice above each machine:
The copyright law of Canada governs the making of photocopies or other
reproductions of copyright material. Certain copying may be an infringement of
the copyright law. This library is not responsible for infringing copies made
by the users of these machines.
At trial, the
Law Society applied for a declaration that it did not authorize copyright
infringement by providing self-service photocopiers for patrons of the Great
Library. No evidence was tendered that the photocopiers had been used in an
infringing manner.
40
The trial judge declined to deal with this issue, in part because of the
limited nature of the evidence on this question. The Federal Court of Appeal,
relying in part on the Australian High Court decision in Moorhouse v.
University of New South Wales, [1976] R.P.C. 151, concluded that the Law
Society implicitly sanctioned, approved or countenanced copyright infringement
of the publishers’ works by failing to control copying and instead merely
posting a notice indicating that the Law Society was not responsible for
infringing copies made by the machine’s users.
41
With respect, I do not agree that this amounted to authorizing breach of
copyright. Moorhouse, supra, is inconsistent with previous
Canadian and British approaches to this issue. See D. Vaver, Copyright Law (2000),
at p. 27, and McKeown, supra, at p. 21-108. In my view, the Moorhouse
approach to authorization shifts the balance in copyright too far in favour of
the owner’s rights and unnecessarily interferes with the proper use of
copyrighted works for the good of society as a whole.
42
Applying the criteria from Muzak, supra, and De
Tervagne, supra, I conclude that the Law Society’s mere provision of
photocopiers for the use of its patrons did not constitute authorization to use
the photocopiers to breach copyright law.
43
First, there was no evidence that the photocopiers had been used in a
manner that was not consistent with copyright law. As noted, a person does not
authorize copyright infringement by authorizing the mere use of equipment (such
as photocopiers) that could be used to infringe copyright. In fact, courts
should presume that a person who authorizes an activity does so only so far as
it is in accordance with the law. Although the Court of Appeal assumed that
the photocopiers were being used to infringe copyright, I think it is equally
plausible that the patrons using the machines were doing so in a lawful
manner.
44
Second, the Court of Appeal erred in finding that the Law Society’s
posting of the notice constitutes an express acknowledgement that the
photocopiers will be used in an illegal manner. The Law Society’s posting of
the notice over the photocopiers does not rebut the presumption that a person
authorizes an activity only so far as it is in accordance with the law. Given
that the Law Society is responsible for regulating the legal profession in
Ontario, it is more logical to conclude that the notice was posted for the
purpose of reminding the Great Library’s patrons that copyright law governs the
making of photocopies in the library.
45
Finally, even if there were evidence of the photocopiers having been
used to infringe copyright, the Law Society lacks sufficient control over the
Great Library’s patrons to permit the conclusion that it sanctioned, approved
or countenanced the infringement. The Law Society and Great Library patrons
are not in a master-servant or employer-employee relationship such that the Law
Society can be said to exercise control over the patrons who might commit
infringement: see, for example, De Tervagne, supra. Nor does the
Law Society exercise control over which works the patrons choose to copy, the
patron’s purposes for copying or the photocopiers themselves.
46
In summary, I conclude that evidence does not establish that the Law
Society authorized copyright infringement by providing self-service
photocopiers and copies of the respondent publishers’ works for use by its
patrons in the Great Library. I would allow this ground of appeal.
(3) The Law Society and Fair Dealing
47
The Great Library provides a custom photocopy service. Upon
receiving a request from a lawyer, law student, member of the judiciary or
authorized researcher, the Great Library staff photocopies extracts from legal
material within its collection and sends it to the requester. The question is
whether this service falls within the fair dealing defence under s. 29 of the Copyright
Act which provides: “Fair dealing for the purpose of research or private
study does not infringe copyright.”
(a) The Law
48
Before reviewing the scope of the fair dealing exception under the Copyright
Act , it is important to clarify some general considerations about
exceptions to copyright infringement. Procedurally, a defendant is required to
prove that his or her dealing with a work has been fair; however, the fair
dealing exception is perhaps more properly understood as an integral part of
the Copyright Act than simply a defence. Any act falling within the fair
dealing exception will not be an infringement of copyright. The fair dealing
exception, like other exceptions in the Copyright Act , is a user’s
right. In order to maintain the proper balance between the rights of a
copyright owner and users’ interests, it must not be interpreted
restrictively. As Professor Vaver, supra, has explained, at p. 171:
“User rights are not just loopholes. Both owner rights and user rights should
therefore be given the fair and balanced reading that befits remedial
legislation.”
49
As an integral part of the scheme of copyright law, the s. 29 fair
dealing exception is always available. Simply put, a library can always
attempt to prove that its dealings with a copyrighted work are fair under s. 29
of the Copyright Act . It is only if a library were unable to make out
the fair dealing exception under s. 29 that it would need to turn to s. 30.2 of
the Copyright Act to prove that it qualified for the library exemption.
50
In order to show that a dealing was fair under s. 29 of the Copyright
Act , a defendant must prove: (1) that the dealing was for the purpose of
either research or private study and (2) that it was fair.
51
The fair dealing exception under s. 29 is open to those who can show
that their dealings with a copyrighted work were for the purpose of research or
private study. “Research” must be given a large and liberal interpretation in
order to ensure that users’ rights are not unduly constrained. I agree with
the Court of Appeal that research is not limited to non-commercial or private
contexts. The Court of Appeal correctly noted, at para. 128, that “[r]esearch
for the purpose of advising clients, giving opinions, arguing cases, preparing
briefs and factums is nonetheless research.” Lawyers carrying on the business
of law for profit are conducting research within the meaning of s. 29 of the Copyright
Act .
52
The Copyright Act does not define what will be “fair”; whether
something is fair is a question of fact and depends on the facts of each case.
See McKeown, supra, at p. 23-6. Lord Denning explained this
eloquently in Hubbard v. Vosper, [1972] 1 All E.R. 1023 (C.A.),
at p. 1027:
It is impossible to define what is ‘fair dealing’. It
must be a question of degree. You must consider first the number and extent of
the quotations and extracts. Are they altogether too many and too long to be
fair? Then you must consider the use made of them. If they are used as a
basis for comment, criticism or review, that may be a fair dealing. If they
are used to convey the same information as the author, for a rival purpose,
that may be unfair. Next, you must consider the proportions. To take long
extracts and attach short comments may be unfair. But, short extracts and long
comments may be fair. Other considerations may come to mind also. But, after
all is said and done, it must be a matter of impression. As with fair comment
in the law of libel, so with fair dealing in the law of copyright. The
tribunal of fact must decide.
53
At the Court of Appeal, Linden J.A. acknowledged that there was no set
test for fairness, but outlined a series of factors that could be considered to
help assess whether a dealing is fair. Drawing on the decision in Hubbard,
supra, as well as the doctrine of fair use in the United States, he
proposed that the following factors be considered in assessing whether a
dealing was fair: (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.
Although these considerations will not all arise in every case of fair dealing,
this list of factors provides a useful analytical framework to govern
determinations of fairness in future cases.
(i) The Purpose of the Dealing
54
In Canada, the purpose of the dealing will be fair if it is for one of
the allowable purposes under the Copyright Act , namely research, private
study, criticism, review or news reporting: see ss. 29 , 29.1 and 29.2 of the Copyright
Act . As discussed, these allowable purposes should not be given a
restrictive interpretation or this could result in the undue restriction of
users’ rights. This said, courts should attempt to make an objective assessment
of the user/defendant’s real purpose or motive in using the copyrighted work.
See McKeown, supra, at p. 23-6. See also Associated Newspapers Group
plc v. News Group Newspapers Ltd., [1986] R.P.C. 515 (Ch. D.).
Moreover, as the Court of Appeal explained, some dealings, even if for an
allowable purpose, may be more or less fair than others; research done for
commercial purposes may not be as fair as research done for charitable
purposes.
(ii) The Character of the Dealing
55
In assessing the character of a dealing, courts must examine how the
works were dealt with. If multiple copies of works are being widely
distributed, this will tend to be unfair. If, however, a single copy of a work
is used for a specific legitimate purpose, then it may be easier to conclude
that it was a fair dealing. If the copy of the work is destroyed after it is
used for its specific intended purpose, this may also favour a finding of
fairness. It may be relevant to consider the custom or practice in a particular
trade or industry to determine whether or not the character of the dealing is
fair. For example, in Sillitoe v. McGraw-Hill Book Co. (U.K.), [1983]
F.S.R. 545 (Ch. D.), the importers and distributors of “study notes” that
incorporated large passages from published works attempted to claim that the
copies were fair dealings because they were for the purpose of criticism. The
court reviewed the ways in which copied works were customarily dealt with in
literary criticism textbooks to help it conclude that the study notes were not
fair dealings for the purpose of criticism.
(iii) The Amount of the Dealing
56
Both the amount of the dealing and importance of the work allegedly
infringed should be considered in assessing fairness. If the amount taken from
a work is trivial, the fair dealing analysis need not be undertaken at all
because the court will have concluded that there was no copyright
infringement. As the passage from Hubbard indicates, the quantity of
the work taken will not be determinative of fairness, but it can help in the
determination. It may be possible to deal fairly with a whole work. As Vaver
points out, there might be no other way to criticize or review certain types of
works such as photographs: see Vaver, supra, at p. 191. The amount
taken may also be more or less fair depending on the purpose. For example, for
the purpose of research or private study, it may be essential to copy an entire
academic article or an entire judicial decision. However, if a work of
literature is copied for the purpose of criticism, it will not likely be fair
to include a full copy of the work in the critique.
(iv) Alternatives to the Dealing
57
Alternatives to dealing with the infringed work may affect the
determination of fairness. If there is a non-copyrighted equivalent of the
work that could have been used instead of the copyrighted work, this should be
considered by the court. I agree with the Court of Appeal that it will also be
useful for courts to attempt to determine whether the dealing was reasonably
necessary to achieve the ultimate purpose. For example, if a criticism would
be equally effective if it did not actually reproduce the copyrighted work it
was criticizing, this may weigh against a finding of fairness.
(v) The Nature of the Work
58
The nature of the work in question should also be considered by courts
assessing whether a dealing is fair. Although certainly not determinative, if
a work has not been published, the dealing may be more fair in that its
reproduction with acknowledgement could lead to a wider public dissemination of
the work — one of the goals of copyright law. If, however, the work in
question was confidential, this may tip the scales towards finding that the
dealing was unfair. See Beloff v. Pressdram Ltd., [1973] 1 All E.R. 241
(Ch. D.), at p. 264.
(vi) Effect of the Dealing on the Work
59
Finally, the effect of the dealing on the work is another factor
warranting consideration when courts are determining whether a dealing is
fair. If the reproduced work is likely to compete with the market of the
original work, this may suggest that the dealing is not fair. Although the
effect of the dealing on the market of the copyright owner is an important
factor, it is neither the only factor nor the most important factor that a
court must consider in deciding if the dealing is fair. See, for example, Pro
Sieben Media AG v. Carlton UK Television Ltd., [1999] F.S.R. 610
(C.A.), per Robert Walker L.J.
60
To conclude, the purpose of the dealing, the character of the dealing,
the amount of the dealing, the nature of the work, available alternatives to
the dealing and the effect of the dealing on the work are all factors that
could help determine whether or not a dealing is fair. These factors may be
more or less relevant to assessing the fairness of a dealing depending on the
factual context of the allegedly infringing dealing. In some contexts, there
may be factors other than those listed here that may help a court decide
whether the dealing was fair.
(b) Application of the Law to These Facts
61
In 1996, the Law Society implemented an “Access to the Law Policy”
(“Access Policy”) which governs the Great Library’s custom photocopy service
and sets limits on the types of requests that will be honoured:
Access to the Law
Policy
The Law
Society of Upper Canada, with the assistance of the resources of the Great
Library, supports the administration of justice and the rule of law in the
Province of Ontario. The Great Library’s comprehensive catalogue of primary
and secondary legal sources, in print and electronic media, is open to lawyers,
articling students, the judiciary and other authorized researchers. Single
copies of library materials, required for the purposes of research, review,
private study and criticism, as well as use in court, tribunal and government
proceedings, may be provided to users of the Great Library.
This service
supports users of the Great Library who require access to legal materials while
respecting the copyright of the publishers of such materials, in keeping with
the fair dealing provisions in Section 27 of the Canadian Copyright Act.
Guidelines
to Access
1. The Access to the Law service provides single copies
for specific purposes, identified in advance to library staff.
2. The specific purposes are research, review, private study and
criticism, as well as use in court, tribunal and government proceedings. Any
doubt concerning the legitimacy of the request for these purposes will be
referred to the Reference Librarian.
3. The individual must identify him/herself and the purpose at
the time of making the request. A request form will be completed by library
staff, based on information provided by the requesting party.
4. As to the amount of copying, discretion must be used. No
copies will be made for any purpose other than that specifically set out on the
request form. Ordinarily, requests for a copy of one case, one article or one
statutory reference will be satisfied as a matter of routine. Requests for
substantial copying from secondary sources (e.g. in excess of 5% of the volume
or more than two citations from one volume) will be referred to the Reference
Librarian and may ultimately be refused.
5. This service is provided on a not for profit
basis. The fee charged for this service is intended to cover the costs of the
Law Society.
When the Access
Policy was introduced, the Law Society specified that it reflected the policy
that the Great Library had been following in the past; it did not change the
Law Society’s approach to its custom photocopy service.
62
At trial, the Law Society claimed that its custom photocopy service does
not infringe copyright because it is a fair dealing within the meaning of s. 29
of the Copyright Act . The trial judge held that the fair dealing
exception should be strictly construed. He concluded that copying for the
custom photocopy service was not for the purpose of either research or study
and therefore was not within the ambit of fair dealing. The Court of Appeal
rejected the argument that the fair dealing exception should be interpreted
restrictively. The majority held that the Law Society could rely on the
purposes of its patrons to prove that its dealings were fair. The Court of
Appeal concluded, however, that there was not sufficient evidence to determine
whether or not the dealings were fair and, consequently, that the fair dealing
exception had not been proven.
63
This raises a preliminary question: is it incumbent on the Law Society
to adduce evidence that every patron uses the material provided for in a fair
dealing manner or can the Law Society rely on its general practice to establish
fair dealing? I conclude that the latter suffices. Section 29 of the Copyright
Act states that “[f]air dealing for the purpose of research or private
study does not infringe copyright.” The language is general. “Dealing”
connotes not individual acts, but a practice or system. This comports with the
purpose of the fair dealing exception, which is to ensure that users are not
unduly restricted in their ability to use and disseminate copyrighted works.
Persons or institutions relying on the s. 29 fair dealing exception need only prove
that their own dealings with copyrighted works were for the purpose of research
or private study and were fair. They may do this either by showing that their
own practices and policies were research-based and fair, or by showing that all
individual dealings with the materials were in fact research-based and fair.
64
The Law Society’s custom photocopying service is provided for the
purpose of research, review and private study. The Law Society’s Access Policy
states that “[s]ingle copies of library materials, required for the purposes of
research, review, private study and criticism . . . may be provided to users of
the Great Library.” When the Great Library staff make copies of the requested
cases, statutes, excerpts from legal texts and legal commentary, they do so for
the purpose of research. Although the retrieval and photocopying of legal
works are not research in and of themselves, they are necessary conditions of
research and thus part of the research process. The reproduction of legal
works is for the purpose of research in that it is an essential element of the
legal research process. There is no other purpose for the copying; the Law
Society does not profit from this service. Put simply, its custom photocopy
service helps to ensure that legal professionals in Ontario can access the
materials necessary to conduct the research required to carry on the practice
of law. In sum, the Law Society’s custom photocopy service is an integral part
of the legal research process, an allowable purpose under s. 29 of the Copyright
Act .
65
The evidence also establishes that the dealings were fair, having regard
to the factors discussed earlier.
(i) Purpose of the Dealing
66
The Access Policy and its safeguards weigh in favour of finding that the
dealings were fair. It specifies that individuals requesting copies must
identify the purpose of the request for these requests to be honoured, and
provides that concerns that a request is not for one of the legitimate purposes
under the fair dealing exceptions in the Copyright Act are referred to
the Reference Librarian. This policy provides reasonable safeguards that the
materials are being used for the purpose of research and private study.
(ii) Character of the Dealing
67
The character of the Law Society’s dealings with the publishers’ works
also supports a finding of fairness. Under the Access Policy, the Law Society
provides single copies of works for the specific purposes allowed under the Copyright
Act . There is no evidence that the Law Society was disseminating multiple
copies of works to multiple members of the legal profession. Copying a work
for the purpose of research on a specific legal topic is generally a fair
dealing.
(iii) Amount of the Dealing
68
The Access Policy indicates that the Great Library will exercise its
discretion to ensure that the amount of the dealing with copyrighted works will
be reasonable. The Access Policy states that the Great Library will typically
honour requests for a copy of one case, one article or one statutory
reference. It further stipulates that the Reference Librarian will review
requests for a copy of more than five percent of a secondary source and that,
ultimately, such requests may be refused. This suggests that the Law Society’s
dealings with the publishers’ works are fair. Although the dealings might not
be fair if a specific patron of the Great Library submitted numerous requests
for multiple reported judicial decisions from the same reported series over a short
period of time, there is no evidence that this has occurred.
(iv) Alternatives to the Dealing
69
It is not apparent that there are alternatives to the custom photocopy
service employed by the Great Library. As the Court of Appeal points out, the
patrons of the custom photocopying service cannot reasonably be expected to
always conduct their research on-site at the Great Library. Twenty percent of
the requesters live outside the Toronto area; it would be burdensome to expect
them to travel to the city each time they wanted to track down a specific legal
source. Moreover, because of the heavy demand for the legal collection at the
Great Library, researchers are not allowed to borrow materials from the
library. If researchers could not request copies of the work or make copies of
the works themselves, they would be required to do all of their research and
note-taking in the Great Library, something which does not seem reasonable
given the volume of research that can often be required on complex legal matters.
70
The availability of a licence is not relevant to deciding whether a
dealing has been fair. As discussed, fair dealing is an integral part of the
scheme of copyright law in Canada. Any act falling within the fair dealing
exception will not infringe copyright. If a copyright owner were allowed to
license people to use its work and then point to a person’s decision not to
obtain a licence as proof that his or her dealings were not fair, this would
extend the scope of the owner’s monopoly over the use of his or her work in a
manner that would not be consistent with the Copyright Act ’s balance
between owner’s rights and user’s interests.
(v) Nature of the Work
71
I agree with the Court of Appeal that the nature of the works in
question — judicial decisions and other works essential to legal research —
suggests that the Law Society’s dealings were fair. As Linden J.A. explained,
at para. 159: “It is generally in the public interest that access to judicial
decisions and other legal resources not be unjustifiably restrained.”
Moreover, the Access Policy puts reasonable limits on the Great Library’s
photocopy service. It does not allow all legal works to be copied regardless
of the purpose to which they will be put. Requests for copies will be honoured
only if the user intends to use the works for the purpose of research, private
study, criticism, review or use in legal proceedings. This further supports a
finding that the dealings were fair.
(vi) Effect of the Dealing on the Work
72
Another consideration is that no evidence was tendered to show that the
market for the publishers’ works had decreased as a result of these copies
having been made. Although the burden of proving fair dealing lies with the
Law Society, it lacked access to evidence about the effect of the dealing on
the publishers’ markets. If there had been evidence that the publishers’
markets had been negatively affected by the Law Society’s custom photocopying
service, it would have been in the publishers’ interest to tender it at trial.
They did not do so. The only evidence of market impact is that the publishers
have continued to produce new reporter series and legal publications during the
period of the custom photocopy service’s operation.
(vii) Conclusion
73
The factors discussed, considered together, suggest that the Law
Society’s dealings with the publishers’ works through its custom photocopy
service were research-based and fair. The Access Policy places appropriate
limits on the type of copying that the Law Society will do. It states that not
all requests will be honoured. If a request does not appear to be for the
purpose of research, criticism, review or private study, the copy will not be
made. If a question arises as to whether the stated purpose is legitimate, the
Reference Librarian will review the matter. The Access Policy limits the
amount of work that will be copied, and the Reference Librarian reviews
requests that exceed what might typically be considered reasonable and has the
right to refuse to fulfill a request. On these facts, I conclude that the Law
Society’s dealings with the publishers’ works satisfy the fair dealing defence
and that the Law Society does not infringe copyright.
(4) Canada Law Book’s Consent
74
Under s. 27(1) of the Copyright Act , a person infringes copyright
if he or she does something that only the owner of the copyright has the right
to do without the owner’s consent. On appeal to this Court, the Law Society
submits that six of the items that the respondent publishers have claimed were
copied in infringement of copyright were copied at the request of Jean
Cummings, a lawyer who had been asked by Canada Law Book’s Vice-President to
obtain copies of these works from the Law Society. As such, the Law Society
contends that the copies were made with the consent of Canada Law Book and
therefore were not an infringement of copyright.
75
This issue was not really addressed in the courts below. In light of my
findings on the issue of fair dealing, it is not necessary to answer this
question to dispose of this appeal, and I decline to do so.
(5) Conclusion on Main Appeal
76
I would allow the appeal and issue a declaration that the Law Society
does not infringe copyright when a single copy of a reported decision, case
summary, statute, regulation or limited selection of text from a treatise is
made by the Great Library in accordance with its Access Policy. I would also
issue a declaration that the Law Society does not authorize copyright
infringement by maintaining a photocopier in the Great Library and posting a
notice warning that it will not be responsible for any copies made in
infringement of copyright.
III. Analysis on Cross-Appeal
(1) Are the Law Society’s Fax Transmissions
Communications to the Public?
77
At trial, the publishers argued that the Law Society’s fax transmissions
of copies of their works to lawyers in Ontario were communications “to the
public by telecommunication” and hence infringed s. 3(1) (f) of the Copyright
Act . The trial judge found that the fax transmissions were not
telecommunications to the public because they “emanated from a single point
and were each intended to be received at a single point” (para. 167). The
Court of Appeal agreed, although it allowed that a series of sequential
transmissions might constitute an infringement of an owner’s right to
communicate to the public.
78
I agree with these conclusions. The fax transmission of a single copy
to a single individual is not a communication to the public. This said, a
series of repeated fax transmissions of the same work to numerous different
recipients might constitute communication to the public in infringement of
copyright. However, there was no evidence of this type of transmission having
occurred in this case.
79
On the evidence in this case, the fax transmissions were not communications
to the public. I would dismiss this ground of cross-appeal.
(2) Did the Law Society Infringe Copyright
in the Publishers’ Works by Selling Copies to Section 27(2) of the Copyright
Act ?
80
Under s. 27(2)(a) of the Copyright Act , it is an
infringement of copyright to sell a copy of a work that the person knows or
should have known infringes copyright, a practice known as secondary
infringement. The majority at the Court of Appeal rejected the allegation of
secondary infringement on the ground that it was not established that the Law
Society knew or should have known it was dealing with infringing copies of the
publishers’ works. The publishers appeal this finding on cross-appeal.
81
At the Court of Appeal, Rothstein J.A., in his concurring judgment,
properly outlined the three elements that must be proven to ground a claim for
secondary infringement: (1) the copy must be the product of primary
infringement; (2) the secondary infringer must have known or should have known
that he or she is dealing with a product of infringement; and (3) the secondary
dealing must be established; that is, there must have been a sale.
82
In the main appeal, I have concluded that the Law Society did not infringe
copyright in reproducing the publishers’ works in response to requests under
its custom photocopy service. Absent primary infringement, there can be no
secondary infringement. I would dismiss this ground of cross-appeal.
(3) Does the Law Society’s Great Library
Qualify for an Exemption as a “Library, Archive or Museum” Under Sections 2 and
30.2(1) of the Copyright Act ?
83
In 1999, amendments to the Copyright Act came into force allowing
libraries, archives and museums to qualify for exemptions against copyright
infringement: S.C. 1997, c. 24. Under s. 30.2(1), a library or persons acting
under its authority may do anything on behalf of any person that the person may
do personally under the fair dealing exceptions to copyright infringement.
Section 2 of the Copyright Act defines “library, archive or museum”. In
order to qualify as a library, the Great Library: (1) must not be established
or conducted for profit; (2) must not be administered or controlled by a body
that is established or conducted for profit; and (3) must hold and maintain a
collection of documents and other materials that is open to the public or to
researchers. The Court of Appeal found that the Great Library qualified for
the library exemption. The publishers appeal this finding on the ground that
the Law Society, which controls the library, is indirectly controlled by the
body of lawyers authorized to practise law in Ontario who conduct the business
of law for profit.
84
I concluded in the main appeal that the Law Society’s dealings with the
publishers’ works were fair. Thus, the Law Society need not rely on the
library exemption. However, were it necessary, it would be entitled to do so.
The Great Library is not established or conducted for profit. It is
administered and controlled by the Benchers of the Law Society. Although some
of the Benchers, when acting in other capacities, practise law for profit, when
they are acting as administrators of the Great Library, the Benchers are not
acting as a body established or conducted for profit. The Court of Appeal was
correct in its conclusion on this point. I would dismiss this ground of
cross-appeal.
(4) Are the Publishers Entitled to a Permanent
Injunction Under Section 34(1) of the Copyright Act ?
85
Under s. 34(1) of the Copyright Act , the copyright owner
is entitled to all remedies, including an injunction, for the infringement of
copyright in his or her work. An injunction is, in principle, an equitable
remedy and, thus, it is within the Court’s discretion to decide whether or not
to grant an injunction. See P. E. Kierans and R. Borenstein, “Injunctions —
Interlocutory and Permanent”, in R. E. Dimock, ed., Intellectual Property
Disputes: Resolutions & Remedies (2002), vol. 2, 15-1, at p. 15-4.
86
Given my finding on the main appeal that the Law Society did not
infringe copyright in the publishers’ works, it is unnecessary to consider
whether the Court of Appeal erred in choosing not to issue an injunction in
this case. I would dismiss this ground of appeal.
(5) Conclusion on Cross-Appeal
87
In the result, I would dismiss the cross-appeal.
IV. Conclusion
88
On the main appeal, I conclude that the Law Society did not infringe
copyright through its custom photocopy service when it provided single copies
of the publishers’ works to its members. The publishers’ headnotes, case
summary, topical index and compilation of reported judicial decisions are all
“original” works covered by copyright. They originated from their authors, are
not mere copies and are the product of the exercise of skill and judgment that
is not trivial. That said, the Great Library’s dealings with the works were
for the purpose of research and were fair dealings within the meaning of s. 29
of the Copyright Act and thus did not constitute copyright infringement.
I also conclude that the Law Society did not authorize copyright infringement
by maintaining self-service photocopiers in the Great Library for use by its
patrons. I would therefore allow the appeal.
89
My conclusions on the cross-appeal follow from those on the main
appeal. No secondary infringement of copyright by the Law Society is established.
The Law Society’s fax transmissions did not constitute communications to the
public and it did not sell copies of the publishers’ works. Were it necessary,
I would conclude that the Great Library qualifies for a library exemption under
the Copyright Act . Finally, in light of my finding that there has been
no copyright infringement in this case, an injunction should not be issued in
this case. I would dismiss the cross-appeal.
90
In the result, the appeal is allowed and the cross-appeal dismissed. I
would issue a declaration that the Law Society does not infringe copyright when
a single copy of a reported decision, case summary, statute, regulation or
limited selection of text from a treatise is made by the Great Library in accordance
with its “Access to the Law Policy”. I would also issue a declaration that the
Law Society does not authorize copyright infringement by maintaining a
photocopier in the Great Library and posting a notice warning that it will not
be responsible for any copies made in infringement of copyright. Given the
appellant’s success on the appeal and cross-appeal, it is entitled to costs
throughout.
APPENDIX
Legislative
Provisions
Copyright Act,
R.S.C. 1985, c. C-42
2. . . .
“every original literary, dramatic, musical and artistic work”
includes every original production in the literary, scientific or artistic
domain, whatever may be the mode or form of its expression, such as
compilations, books, pamphlets and other writings, lectures, dramatic or
dramatico‑musical works, musical works, translations, illustrations,
sketches and plastic works relative to geography, topography, architecture or
science;
. . .
“library, archive or museum” means
(a) an
institution, whether or not incorporated, that is not established or conducted
for profit or that does not form a part of, or is not administered or directly
or indirectly controlled by, a body that is established or conducted for
profit, in which is held and maintained a collection of documents and other
materials that is open to the public or to researchers, or
(b)
any other non‑profit institution prescribed by regulation;
3. (1) For the purposes of this Act, “copyright”, in relation
to a work, means the sole right to produce or reproduce the work or any
substantial part thereof in any material form whatever, to perform the work or
any substantial part thereof in public or, if the work is unpublished, to
publish the work or any substantial part thereof, and includes the sole right
(a) to
produce, reproduce, perform or publish any translation of the work,
(b) in
the case of a dramatic work, to convert it into a novel or other non‑dramatic
work,
(c) in
the case of a novel or other non‑dramatic work, or of an artistic work,
to convert it into a dramatic work, by way of performance in public or
otherwise,
(d) in
the case of a literary, dramatic or musical work, to make any sound recording,
cinematograph film or other contrivance by means of which the work may be
mechanically reproduced or performed,
(e) in
the case of any literary, dramatic, musical or artistic work, to reproduce,
adapt and publicly present the work as a cinematographic work,
(f) in
the case of any literary, dramatic, musical or artistic work, to communicate
the work to the public by telecommunication,
(g) to
present at a public exhibition, for a purpose other than sale or hire, an
artistic work created after June 7, 1988, other than a map, chart or plan,
(h) in
the case of a computer program that can be reproduced in the ordinary course of
its use, other than by a reproduction during its execution in conjunction with
a machine, device or computer, to rent out the computer program, and
(i) in the
case of a musical work, to rent out a sound recording in which the work is
embodied,
and to
authorize any such acts.
5. (1) Subject to this Act, copyright shall subsist in Canada,
for the term hereinafter mentioned, in every original literary, dramatic,
musical and artistic work if any one of the following conditions is met: . . .
27. (1) It is an infringement of copyright for any person to
do, without the consent of the owner of the copyright, anything that by this
Act only the owner of the copyright has the right to do.
(2) It is an
infringement of copyright for any person to
(a)
sell or rent out,
(b)
distribute to such an extent as to affect prejudicially the owner of the
copyright,
(c) by
way of trade distribute, expose or offer for sale or rental, or exhibit in
public,
(d)
possess for the purpose of doing anything referred to in paragraphs (a)
to (c), or
(e)
import into Canada for the purpose of doing anything referred to in paragraphs
(a) to (c),
a copy of a
work, sound recording or fixation of a performer’s performance or of a
communication signal that the person knows or should have known infringes
copyright or would infringe copyright if it had been made in Canada by the
person who made it.
29. Fair dealing for the purpose of research or private study
does not infringe copyright.
29.1 Fair dealing for the purpose of criticism or review does
not infringe copyright if the following are mentioned:
(a) the
source; and
(b) if
given in the source, the name of the
(i) author,
in the case of a work,
(ii)
performer, in the case of a performer’s performance,
(iii) maker,
in the case of a sound recording, or
(iv)
broadcaster, in the case of a communication signal.
29.2 Fair dealing for the purpose of news reporting does not
infringe copyright if the following are mentioned:
(a) the
source; and
(b) if
given in the source, the name of the
(i) author,
in the case of a work,
(ii)
performer, in the case of a performer’s performance,
(iii) maker,
in the case of a sound recording, or
(iv)
broadcaster, in the case of a communication signal.
30.2 (1) It is not an infringement of copyright for a library,
archive or museum or a person acting under its authority to do anything on
behalf of any person that the person may do personally under section 29 or
29.1 .
34. (1) Where copyright has been infringed,
the owner of the copyright is, subject to this Act, entitled to all remedies by
way of injunction, damages, accounts, delivery up and otherwise that are or may
be conferred by law for the infringement of a right.
Appeal allowed with costs and cross-appeal dismissed with costs.
Solicitors for the appellant/respondent on cross-appeal: Gowling
Lafleur Henderson, Toronto.
Solicitors for the respondents/appellants on cross-appeal: Sim Hughes
Ashton & McKay, Toronto.
Solicitors for the intervener the Federation of Law Societies of
Canada: Borden Ladner Gervais, Ottawa.
Solicitors for the interveners the Canadian Publishers’ Council and
the Association of Canadian Publishers: McCarthy Tétrault, Toronto.
Solicitors for the interveners Société québécoise de gestion
collective des droits de reproduction (COPIBEC) and the Canadian Copyright
Licensing Agency (Access Copyright): Ogilvy Renault, Montréal.