Fair Dealing in Canada

1 Legislative Context

In Canada, the doctrine of fair dealing is statutorily entrenched in the CCA. Since its inception, fair dealing has been twice amended.1 Section 29 provides:

"Research or Private Study" (Section 29)
Fair dealing for the purpose of research or private study does not infringe copyright.

"Criticism or Review" (Section 29.1)
Fair dealing for the purpose of criticism or review does not infringe copyright if the following are mentioned:

  1. the source; and
  2. if given in the source, the name of the
    author, in the case of a work,
    performer, in the case of a performer's performance,
    maker, in the case of a sound recording, or
    broadcaster, in the case of a communication signal.

"News Reporting" (Section 29.2)
Fair dealing for the purpose of news reporting does not infringe copyright if the following are mentioned:

  1. the source; and
  2. if given in the source, the name of the author, in the case of a work,
    1. performer, in the case of a performer's performance,
    2. maker, in the case of a sound recording, or
    3. broadcaster, in the case of a communication signal.

Traditionally, scholars, practitioners and the courts have construed fair dealing as a defence to copyright infringement. To make out a defence, the defendant had to prove that: (1) the action fit within one of the enumerated purposes (eg research or private study, research or criticism and news reporting) (2) the action was fair and (3) in the case of the last two categories, there was acknowledgment of the source. Typically, the enumerated grounds were interpreted as exhaustive as any purpose not falling strictly within an enumerated ground infringed.2 However, as shown below, this may no longer be the case post CCH.

The CCA also contains specific exceptions for educational institutions and libraries, archives, and museums (commonly referred to as LAMs) and photocopying in LAMs, archives, ephemeral recordings and person's with disabilities.3 These exceptions are meant to be TRIPs compliant, as limitations and exceptions confined to "certain special cases which do not conflict with a normal exploitation of the work and do not unreasonably prejudice the legitimate interests of the right holder."4 Of note is that a court may rely on public interest grounds for allowing an otherwise infringing activity, but this common law power has been rarely exercised in Canada or in the UK, where it was invented.5

2 Analyzing CCH

(a) CCH Canadian Ltd v Law Society of Upper Canada

In CCH, a unanimous Supreme Court ruled that the Law Society of Upper Canada did not infringe copyright as its Great Library request-based reproduction services fell squarely within the allowances of the fair dealing doctrine. At issue were the single copies of reported decisions, case summaries, statutes, regulations and text selections reproduced pursuant to the Great Library Access Policy.6 According to the court, section 29 of the CCA, alongside the other exceptions, "must not be interpreted restrictively."7 The enumerated purposes should be accorded "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.8 In this case, lawyers carrying on the business of law for profit were held to be conducting non-infringing research.

The court explained that to prove that a dealing was fair pursuant to CCA s 29, the defendant Law Society had the onus to prove (1) that the dealing was for the purpose of either research or private study and (2) that it was fair. Up to this point, the issues presented are consistent with those of a traditional fair dealing test in Canada and the UK.

As the court begins its analysis of the fair dealing doctrine–and drawing from UK and US approaches–it endorses certain factors which may be more or less relevant in future fair dealing cases. It also acknowledges that there may be other unnamed factors that could be used to assess the fairness of a dealing. Significantly, the court collapses an evaluation of whether the use could be construed as "research or private study" into the second analytical stage–whether the dealing was fair. In doing so, the first "hurdle" becomes one of the factors that is more or less relevant. In this way, the court softens the need to adhere to the traditional strictures of proving fair dealing and puts into practice its assertion that the enumerated purposes require a liberal interpretation.

Below follows the court's six factors as construed and applied in the context of the case.


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(1) Purpose (and commercial nature) of the dealing

The court asserts that this first criterion "should not be given restrictive interpretation or this could result in undue restriction of users' rights."9 Courts should adopt an objective test to assess the users' real purpose or motive in using the copyrighted work. The Great Library's Access Policy states that its patrons making a request must delineate a legitimate purpose of use and where any ambiguity arises, the matter is referred to the Reference Librarian. For the court, this policy provided reasonable safeguards that the materials were being used for the purpose of research and private study.

The commercial nature of the dealing is an important consideration–research done for commercial purposes may not be as fair as research done for research purposes. However, the court emphasizes that research is "not limited to non-commercial or private contexts."10 While the court does not clearly state that commercial research is fair dealing, it states that it certainly can be.

(2) The character of the dealing

Here the focus is on how the works were dealt with, for instance multiple copies widely distributed can be unfair. In the Law Society's case this factor was met favourably: only single copies were made available to individual members of the legal profession.11 Further, if the copy is destroyed after it is used this may favour a finding of fairness. Courts can also consider the custom or practice in the industry to assess fairness. It is unclear whose perspective in the industry should be valued. Relying on custom can be dangerous since custom is often unilateral and often set by the party with the greater bargaining power.12 Arguably should the educators' or students' perspective be considered (who may be using works in an infringing fashion in certain circumstances) there could be fair dealing. Or alternatively, if the right holder's perspective is valued, custom could work against users. As the court did not expressly apply custom, it will be challenging to anticipate its applicability to future cases. Courts, of course, can (and should) rely on the existing body of caselaw in copyright and contract law to assess custom.13 The custom is implied by "the custom of a locality or by the usage of a particular trade" and "must be strictly proved."14

(3) The amount of the dealing

This factor seems to be a weaker consideration. The logic goes like this: the larger the taking the less the fair dealing. But of course, in several circumstances, as in the case of photographs it may be impossible to deal fairly with the work without copying the entire work. The court notes that for the purpose of research and private study it may be essential to copy an "entire academic article or an entire judicial decision."15 This wholesale inclusion would not likely be the case for the purposes of criticism or review in the case of literature. Research and private study is thus accorded wider scope under the court's reading of fair dealing. On the amount of the dealing, the court relied on the Great Library's Access Policy that it would exercise discretion to ensure fair dealing. In most occasions, only one judgment was copied and for secondary materials, when the requested amount was more than 5 per cent, a request could be refused. There was no evidence that the Great Library received and supplied multiple copy requests.

(4) Alternatives to the dealing

Here two criteria may lead a court against a fair finding where (a) there was a non-copyrighted work available as an alternative and (b) where the use of the copyrighted work was not reasonably necessary to achieve the "ultimate purpose."16 For instance, criticism could be equally effective by not actually reproducing the copyrighted work–this may weigh against fair dealing.17

In CCH, the court remarks that there were no alternatives to the Great Library's photocopying service as (1) twenty per cent of the Great Library patrons were outside Toronto and (2) researchers were not allowed to borrow materials from the Great Library, thus justifying the need for copying.18 Curiously, the court focuses more on the ease to access the works, than on the actual availability of non-copyrighted works.

The court posits that the availability of a licence is irrelevant to weighing whether there were alternatives to the dealing. Accordingly, only because a user failed to obtain a licence should not be interpreted as proof that the dealing was not fair. If this were the case, the owners' monopoly would be extended beyond the objective of balance in the CCA. As such, if a dealing clearly falls into fair dealing in the first place, that dealing should not be subject to a licence. This analysis seems consonant with several stakeholder positions within the educational community that there exists a clear for fear culture to obtain often unnecessary licences out of excessive caution.19


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(5) Nature of the work

According to the court if the work is unpublished, the dealing may be more fair "in that its reproduction with acknowledgement could lead to a wider public dissemination of the work."20 While the court remarks that this would serve one of the goals of copyright it is nonetheless a departure from previous Canadian caselaw. Equally, as noted below, this reasoning is contrary to the UK and US caselaw.21 The court suggests that protecting the author and furthering wide public dissemination are two conflicting objectives. One cannot further public dissemination if the priority is to protect (and presumably reward) the author. One factor that may soften this anti-author perspective is if the work in question were confidential in nature.22

The Great Library easily met this factor as the works in question were essential to legal research and were subject to its Access Policy stating that the patron's purpose to access the works must be for research, private study, criticism, review or use in legal proceedings.23

(6) Effect of the dealing on the work

If the work in question competes with the market of the original work it is less likely that the dealing will be found to be fair. In underscoring that the market factor "is neither the only factor nor the most important factor' the court seems to suggest that this factor is less important than the others. Interestingly, this "market substitute" factor seems to be more important in the UK.24

There was no evidence advanced to indicate that there was an effect on the publishers' market. Rather, the publishers continued to produce new reporter series and other legal publications during the period of the Great Library's request-based copying. The court acknowledges that while the Law Society has the evidentiary burden, "it lacked access to evidence about the effect of the dealing on the publishers' market."25 And so, this decision suggests that the onus may be reversed if the defendant cannot access market impact evidence. This seems fair as the publishers are often the more sophisticated parties in a better position to access such records, though potentially a tall order as it may involve crystal ball-gazing.26

(b) CCH Observations: User-centric approach

From the analysis of the six factors it seems clear that the courts' penchant is pro-user. As further detailed below, this can be seen in particular in the court's language, liberal interpretation of fair dealing, its elevated status of the doctrine as compared to other copyright exceptions, and its underlying policy preoccupations.

(1) Defence to user right

Even before CCH, depending on the speaker's perspective, various terms were used to denote fair dealing such as "exceptions" "exemptions" "defences" or "user rights".27 Still, whereas in previous cases and as featured in almost every textbook, fair dealing was conceived of as a defence, CCH construes it more as a "right" and an "integral" part of copyright law.28

(2) Expanded purposes

CCH advocates for a liberal approach to interpreting the purposes of the dealing as these "should not be given restrictive interpretation."29 In this sense, new purposes could be included under the enumerated grounds. Parody could be one of these. Significantly, the court considers the purposes of research under the first of six factors, "purposes (and commercial nature) of the dealing". The court thus seems to soften the rigidity of following the more traditional schematic approach (where it first assessed whether the use fell under the enumerated purpose and then examined fairness). Rather, the court collapses the first part of the "purposes" analysis into the second part–assessing fairness. As indicated below, here the court aligns itself with the more flexible US approach where there are no enumerated grounds, but an open list of purposes.


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(3) Expanded works

CCH clarifies that entire court decisions, typically under Crown copyright, can be copied fully and fairly. Following this logic, this may be the case with other government works, such as statutes, reports, and press releases.

(4) Exceptions and fair dealing

CCH favours parties relying on fair dealing over other exceptions.30 While counsel's arguments at the onset of CCH in 1993 were in large part conditioned by the lack of the existing "libraries, archives, museums" or "educational institutions" exceptions, the Supreme Court nonetheless emphasized that an applicable user can always rely on the fair dealing doctrine first:31 "It is IF when 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."32 The court prefers the blessing of the fair dealing doctrine over reliance on specific exceptions. This may be because, fair dealing, as construed by the court, now allows for a more flexible framework.

(5) Constructing fair dealing–infringement, burden of proof and agency

In a traditional copyright infringement suit, the plaintiff has the burden of proof to show infringement. The burden then shifts on the defendant to advance a defence. The court seems to alter this progression in two ways: (1) it skips over a traditional analysis of infringement and (2) it may shift the onus of proof on the plaintiff for disproving fair dealing.

First, its discussion of infringement is limited to authorization of infringement which is a different analysis than the typical "substantial part doctrine" to infringement. Rather, having reasoned that there is no authorization, the court proceeds immediately into a fair dealing analysis by framing fair dealing as an exception to copyright.33 Second, the court may shift the onus of proof in two ways, as it reasons that: (a) To establish fair dealing, the defendant need not adduce evidence that every use of the provided material was conducted fairly but can rely on its own general practice.34 For instance, in the case of the Great Library, its internal Access Policy–to photocopy only for purposes of research, review, private study and criticism with a corresponding gate-keeper role by the Reference Librarian for the copying of substantial secondary sources–was seen as sufficient to show that its own practices were research-based and fair and it need not have proven that each of its patrons dealt fairly with the supplied materials.35 It is worth asking whether it is fair for librarians to shoulder the burden to police fair dealing. On the other hand, following rigid rules (eg establishing copy quotas through legislation) while perhaps clearer to all parties, would be too restrictive and not entirely reflective of the realities and goals of user experiences. Indeed, imposing a copy quota is the approach taken in Australia where apparently no more than ten percent of a work can be copied.36 Also vesting librarians with this gate-keeping role may allow them to better prove fair dealing.

And (b) While the Law Society has the evidentiary burden, because it could not access market impact evidence on the publishing market, the court holds it more appropriate for the plaintiff publishers and not the defendant users to make the case that they were negatively affected. The court thus allows the Law Society the right to rely on the Great Library's general practice to establish fair dealing, rather than having to adduce evidence. The court embraces the concept of agency.37 As illustrated in Tariff 22,38 knowing of the potential of end user infringement, will not absent express knowledge of end user infringing activity be seen as the intermediary authorizing end user infringement.


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(6) Cautionary note on CCH user-centric policy

Any analysis of the state of copyright post-CCH, must be rooted in an understanding of what the Supreme Court understands to be Parliament's policy objectives. The Supreme Court of Canada reaffirms its previous ruling in Théberge that the CCA has supposedly dual objectives: "…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…"39 The court maintains that the judiciary "should strive to maintain an appropriate balance between these two goals."40 The court suggests that when copyright law promotes the encouragement and dissemination of works of the arts and intellect this is in the public interest. For the court, the chief method of attaining this is to protect user rights. Rewarding the "creator" is an important part of Canada's so-called dualistic copyright objectives but presumably not as in the public interest.

CCH's skewed expression of balance and the objectives of copyright law is seen further in its discussion of the doctrine of originality. The court maintains that when courts lower the standard of originality, the balance tips more in favour of the author/creator at the loss of a robust public domain to foster future creative innovation.41 While this may certainly be plausible, more often than not, copyright assignments and therefore the role of contract law (where the owner steps into the creator's shoes) allows for this erosion. In other words, understanding the dynamic relationship between author and owner is also important when accounting for future innovation and a robust public domain.

This perhaps ill-conceived copyright policy is matched by equally ill-conceived language. The court juxtaposes the public v. the creator in grounding its objectives, but in framing the issues it states: "this case requires this Court to interpret the scope of both owners' and users' right under the Copyright Act…" 42 While the court notes the "creator" in its discussion of balancing copyright objectives, the court matter-of-factly replaces her with the term "owner" in the framing of the issues. Creators and owners are not the same category of stakeholders for the purposes of copyright.43 Their interests are often conflicting. One cannot easily replace them as if they were synonyms as the court and many commentators often do. Indeed, it is not entirely helpful when commentators argue that CCH has "shifted the focus of copyright law from the pro-author approach that had dominated in the past to a balanced approach that weighs the rights of the author against those of the user."44 And that as a result, "the law in Canada is now that the courts must balance the interests of the authors of works against the public interest."45 This is unfortunate copyright parlance in Canadian CCH commentary, and copyright generally.46

So while finally laudable that the court champions user rights, long forgotten by Canadian legislatures and the judiciary, where do creators fit in CCH? While the policy for creators is not central to CCH (perhaps because for the most part the case deals with judges as creators, not the (stereo)typical category of creators like musicians, freelance authors, bloggers and so on), this oversight may limit future "balanced" rulings. Would the court have reached a similar ruling if other categories of creators were at issue? Robertson v Thomson Corp, dealing with freelance authors, may decide such an issue, but the new trial is yet to make its way in the courts.47 In CCH, judges and lawyers were creators whose works at issue were decided and shaped by judges and lawyers. The ultimate goal sought by the Great Library's copy practices was to "help ensure that legal professional in Ontario can access the materials necessary to conduct the research required to carry on the practice of law."48 This practice saves the cost of additional hotel bills and other travel expenses to non-Toronto lawyers and applies to self-represented litigants as well.49 Had the court ruled otherwise, Toronto lawyers may have received an unfair advantage over other members of the profession. Also, it has been argued that the cost of legal services would have increased for clients had the publishers been successful (lawyers would have had to pay extra for copies and would pass on the cost to its clients).50 As a result, the Supreme Court was intimately familiar with the practices and repercussions of deciding otherwise. Still, these context-specific factors are not easily applicable to other creative domains, where reaping from the copyrighted work is often the sole source of income for other kinds of creators.


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3 State of Judicial Play before CCH

Before CCH, the judiciary varied in its approach to fair dealing. Some courts were more restrictive and others more liberal in their reasoning. Factors like the motive of the dealing were also more pronounced, as were the policies of copyright towards non-users.

(a) Restrictive Interpretation

Most commentators argue that pre-CCH there was a restrictive interpretation of fair dealing.51 Many contend that copyright law has been quite expansionist in protecting owner's/creator's rights (here the same noted comments apply as scholarship has often conflated the two parties long before CCH).52

Perhaps most illustrative of this approach is the Michelin v CAW Canada case.53 In Michelin, the tire company sued a union for infringement for its use of the Michelin man logo (the Bibendum) in union leaflets distributed during a labour dispute.
The defendants unsuccessfully argued that the use of the Bibendum was a parody and therefore an exception to copyright infringement under fair dealing for the purposes of criticism. In placing the burden of proof squarely with the defendants, the court ruled that parody was not an exception to infringement within the CCA or within the jurisprudence.54 More pointedly, parody was not synonymous with criticism.55 The court was adamant not to rely on US caselaw where parody could exist under fair use.56 And even if the court were to have followed the US courts, fair dealing would still have failed since the other two requirements had not been met, namely (1) the author's name or the source of the work were unmentioned and (2) there was no fair treatment.57 The court noted that exceptions should be strictly interpreted and that fair dealing in particular lists an exhaustive set of grounds.58 Accordingly, ruling otherwise would create a new exception in the statute. In this light, Michelin was extremely deferential to Parliament: "If Parliament had wanted to exempt parody as a new exception under fair dealing it would have done so."59

This case represents a clear shunning of following a US fair use approach which was later expressly adopted in CCH. Against CCH, Michelin, promoting a restrictive approach, no longer seems to be good law.

(b) Liberal interpretation

But before CCH, there were also markings of a liberal interpretative approach. In Allen v Toronto Star Newspapers Ltd 60 a freelance photographer sued a newspaper publisher for copyright infringement for reproducing a magazine cover which contained a photo he took on commission. While the testimony from both sides on custom of the industry resulted in divided views, the court ultimately ruled that the photographer only held copyright in the photo and not in the cover which was created by the magazine.61 The magazine did not object to reuse of its cover and, in any event, the court found the fair dealing defence for the purposes of news reporting applied.

The court overturned the trial decision ruling that fair dealing did not apply to an entire copyrighted work. The court held that fair dealing is "purposive" and not simply a mechanical test. In citing a US decision, "the extent of the copying is one important factor, but only one to be taken into account, along with several others."62 While the court did not schematically assess a list of factors as in CCH, it examined the nature and purpose of the use which was found to include current news. Also, the court considered the "market substitute" criterion noted in CCH, in that the use of the photo was "not to gain an unfair commercial advantage over [the plaintiff] Allen or [the magazine] Saturday Night."63 Moreover, as in CCH, fair dealing was also allowed within a commercial context of a periodical publisher, The Toronto Star Newspaper Ltd.

As in CCH, Allen adopted a liberal approach and weighed the following factors: (1) the purpose of relaying a current event was allowed in a commercial context (2) the nature of work as an entire work such as a photograph was fair dealing and (3) the market substitute factor allowed the court to consider that the magazine did not seek to gain a commercial advantage over the market for the original work.

Notably, regarding the extent of the work copied, in an earlier decision Zamacois, anentire newspaper article was reproduced and this was not fair dealing for purposes of criticism.64 The defendants unsuccessfully argued that, (1) the article was necessary since another article published in the same edition criticized the work and (2) the copied article was of current interest of an economic or political topic. For the court, one could not reproduce an article in full without the author's permission of the work which he criticizes.65 But this decision has come under much criticism and as a result of CCH its precedential value is weak.66


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(c) Motive

CCH did not apply motive, at least bad motive.67 In previous cases, such as in Boudreau v Lin, there was no fair dealing for private study found in a professor's paper containing substantial copied portions of a student's work.68 The court zeroed in on the fraudulent nature of the dealing. The professor had deleted the student's name from the paper, presented it at a conference without credit and also sold copies of it to other students.69 From this perspective, even though one of the court's policy objectives was to prevent the appropriation of the author's labour, the bad faith conduct where the professor "blatantly" breached copyright seems to have weighed heavily in finding otherwise.70 It will be interesting to see the extent to which future fair dealing cases account for bad faith. By contrast in CCH, the Great Library's closely enforced Access Policy put the defendant in a favourable light.

(d) Policy

While CCH featured a user-centric policy oriented court, previous cases were perhaps more mindful of the creator. In Breen v Hancock House Publishers Ltd 71 an author copied substantial portions of a thesis into a book which he later published. In denying fair dealing, the court found that while the book enjoyed little commercial success, the defendant had appropriated the plaintiff's skill, time and talent.72 He had made liberal use of about 20 to 30 pages of the thesis which comprised a qualitative substantial portion of the author's work.73 An interesting question here is how can one argue otherwise for the "public interest" in the context of this case? Can this creator be distinguished from the authors in CCH who created decisions and secondary materials? It is unclear whether following CCH, Breen would have had a similar result. Against the past, post-CCH now users stand in a better position in proving fair dealing.

4 Post-CCH: Have Courts post CCH taken its Lead?

While there has been no copyright case on fair dealing post-CCH, cases addressing copyright issues generally have considered CCH, namely concerning the doctrine of originality, authorization, and general policy principles.74

In the "Tariff 22" decision involving retransmission rights, the Supreme Court reaffirmed the need for a liberal interpretation in balancing rights of owners and the limitations of those rights as they are not just "loopholes."75 Thus far the Copyright Board of Canada has in obiter made some remarks on the potential applicability of the fair dealing doctrine to licensing issues and the need for further clarification.

(a) Copyright Board Decisions

In Re Media Monitoring, the Board considered tariffs filed by the Canadian Broadcasters Rights Agency (CBRA) for commercial and non-commercial media monitors using its private broadcasters' programs and communication signals. While the Board did not determine the extent, if any, to which the monitors' use of the repertoire may constitute fair dealing, it nonetheless commented on the potential applicability of the doctrine. It maintained that "profit-driven research may constitute fair dealing" and "that the person who facilitates another person's fair dealing may be entitled to the same protection under the Act as the first person."76 And that applied to this case, it could perhaps be argued "that some monitoring activity may constitute research or the facilitation of research, some of which may in turn constitute fair dealing."77Accordingly,

Until subsequent judgments clarify the portent of the CCH decision, this leaves open the possibility that certain activities of media monitors may not constitute protected uses for which they would require a licence.78

In Re Breakthrough Films & Television while not a fair dealing case, the dissenting opinion in the Copyright Board pronounced itself on its scope.79 The Board found that a television production company was justified to obtain a retroactive licence to work belonging to an unlocatable copyright owner it had excerpted. But for the dissent a retroactive licence should not have been granted since there was no copyright infringement. In clarifying the full basis of its policy considerations, the dissent stated:

While the interests of copyright owners should be protected, so should those of users, given the recent insistence of the Supreme Court of Canada in balancing the rights of the former and those of the latter. The public interest in the dissemination of works and subject-matters also should be given some attention.80

However, fostering balance in copyright should not be at the expense of fostering compliance with copyright rules since this has a direct impact on licensing issues and ultimately on fair dealing. For the Board, "[u]sers should be encouraged to evolve towards practices where licences are sought before a work is used. The Board should not condone industry practices that view licensing copyright as an afterthought, thereby showing disregard for the rights of copyright owners."81 In other words, proper licensing is part of the copyright balance.

While retroactive licences help foster certainty, respect for copyright and dissemination of published works, they may deprive owners from "the right to choose between agreeing to a price and seeking compensation for the violation of copyright that has already occurred."82

And so, with respect to fair dealing the Board's work may be affected directly:

… whole areas of what are now considered to be protected uses (eg media monitoring) might suddenly join the realm of unprotected uses. This might have to be factored into the setting of certain tariffs, which brings us back to the already identified difficulties associated with applying concepts otherwise suited to an ex post facto decision in the exercise of an ex ante jurisdiction.83

Thus as courts and, importantly, industry practices follow the liberal interpretation of research in CCH to include commercial purposes this may have a direct effect on tariff-setting.


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(b) Note on the Educational Context

Even before CCH, the Council of Ministers of Education (CMEC) proposed an educational amendment to the CCA to permit the use of freely available internet materials.84 While beyond the scope of this study to assess this proposal, it is unclear that this provision on its own will alter the current law or practices with respect to the educational uses of materials. Although perhaps useful to generate good will among this set of particular stakeholders, for the long term, many more parties will need to come to a consensus on many more matters than the mere use of internet materials. Moreover, some scholars argue that because of CCH, the federal government's interventions on educational use of materials for long distance learning and coursepacks, as proposed in Bill C-60, may be "at best impractical and unnecessary, and at worst unenforceable".85 As CCH espoused, a LAM need not rely on its specific exceptions but can rely on fair dealing. Significantly, however, fair dealing may not excuse mass distribution of materials.86 To date, these problems remain unaddressed.

The existing governance mechanisms in the educational community do not seem tenable. For example, academics, students and other critics are dissatisfied with the current licensing regime.87 Very little money flows back to the professor/author.88 Consider that the then CanCopy "had more than $18 million in undistributed royalties, and no apparently systematic way of determining to whom this money belongs."89 These types of issues will continue to grate on students and other members of the educational community alike from teachers and librarians to the administrators of copyright. While CCH has liberalized greater uses of works comporting with fair dealing (eg for educational purposes), understanding and agreeing on any policy, law or court decision, must also be embraced (and perhaps generated) at the grass-roots level, by the all of the parties (in discord and accord) that are directly affected.


Notes

  • 1 North American Free Trade Agreement Implementation Act SC 1993 c 44 s 64(1) in force January 1, 1994, as ss 27(2) (a.1); then by an Act to amend the Copyright Act SC 1997 c 24 s 18, in force September 1, 1997, as s 29.2 (which remains the current provision of the Act)

  • 2 Michelin v CAW Canada [1997] 2 FC 306 denying parody.

  • 3 CCA (n 3) ss 29.4 – 30.4.

  • 4 The Agreement on Trade Related Aspects of Intellectual Property Rights, Including Trade in Counterfeit Goods (15 Apr 1994) Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, Legal Instruments–Results of the Uruguay Round vols 31-33 ILM 1197 ("TRIPS") art 13 incorporating art 9(2) of the Berne Convention for the Protection of Literary and Artistic works (9 Sept 1886) 168 Consol TS 1853 (the so-called "three-step test).

  • 5 D Vaver "Canada's Intellectual Property Framework: A Comparative Overview" (2004) 17 IPJ 125, 149; the defence only gained judicial notice once in Canada in R v James Lorimer & Co [1984] 1 FC 1065 (CA) in relation to Crown copyright, but was not ultimately applied.

  • 6 While the issue of authorization of copyright infringement was also material for the purposes of this paper, this issue will not be addressed.

  • 7 CCH (n 1) [48].

  • 8 ibid [51].

  • 9 ibid [54].

  • 10 ibid [51].

  • 11 ibid [67].

  • 12 As seen in the case of freelance journalists and their publishers in Canada where publishers relied on their "custom" to justify digital reproduction of the authors' works without the authors' permission or due payment; see G D'Agostino (2007) (n 3).

  • 13 G D'Agostino "Anticipating Robertson: Defining Copyright Ownership of Freelance works in New Media" (18)(1) Cahiers de Propriété Intellectuelle 2006 tr « En attendant Robertson : Définir la possession du droit d'auteur sur les œuvres des pigistes dans les nouveaux médias» 166.

  • 14 This high standard requires that the custom is (1) notorious, (2) as certain as a written contract, and (3) reasonable: Beatson Anson's Law of Contract (28th edn OUP Oxford 2002) 151.

  • 15 CCH (n 1) [56].

  • 16 ibid.

  • 17 A comparative instance of this is in Hyde Park Residence Ltd v Yelland and others [2001] Ch 143 (CA) ("Hyde Park") [40] where publishing photographs of Lady Diana was merely gratuitous; having described any relevant portion of the photos would have sufficed and did not require reproduction.

  • 18 CCH (n 1) [69].

  • 19 In Canada, see CMEC "Copyright in Education" http://cmec.ca/copyright/copyInternet.en.stm (last visited June 29, 2007); M Wilkinson "Filtering the Flow from the Fountains of Knowledge" Ch 12 in M Geist (ed) In the Public Interest (Irwin Law Toronto 2005) 331. In the US: W Fisher et al "The Digital Learning Challenge: Obstacles to Educational Uses of Copyrighted Material in the Digital Age – A Foundational White Paper" Harvard Law School Research Publication No 2006-09 (Berkman Center for Internet and Society) http://cyber.law.harvard.edu/media/files/copyrightandeducation.html (visited 29 June 2007) ("White Paper"); J Urban and L Quilter "Efficient Process or ‘Chilling Effects?' Takedown Notices Under Section 512 of the DMCA" http://static.chillingeffects.org/Urban-Quilter-512-summary.pdf (visited 29 June 2007) ("Chilling Effects").

  • 20 CCH (n. 1) [58].

  • 21 In US they went as far as developing a presumption against fair dealing for unpublished works see Harper & Row Publishers, Inc v Nation Enterprises 471 US 539 (SCt 1985) 546; later overruled in Fair Use of Unpublished Works Publ No 102-492 (1992) 102d Cong 2d Sess, 106 Sat 3145 codified at 17 USC  107; in UK, see Hyde Park (n 22) and text to n 125.

  • 22 In Hyde Park (n 22)[40] the court considered that the works were subject to an agreement: "I do not believe that a fair minded and honest person would pay for the dishonestly taken driveway stills and publish them in a newspaper knowing that they had not been published or circulated…"

  • 23 CCH (n 1) [71].

  • 24 eg in Ashdown v Telegraph Group Ltd [2001] EWCA Civ 1142 (CA)[106] it is the most important factor.

  • 25 CCH (n 1) [72].

  • 26 See infra n 163.

  • 27 Vaver (n 6) 148-49; P Esmail "CCH Canadian Ltd v Law Society of Upper Canada Case Comment on a Landmark Copyright Case" (2005) 10 Appeal 13-24 [17].

  • 28 For fair dealing as a defence pre CCH: see Allen v Toronto Star Newspapers Ltd (1997) 152 DLR (4th) 518 [34]; for fair dealing as an exception: Boudreau v Lin 150 DLR (4th) 324 (OCJ) Metivier J [48]; More recently, terms like "principle" have also been used: M Bouchard "The Copyright Board: A Review of Some Recent Issues and Future Challenges" (The Law Society of Upper Canada Entertainment, Advertising & Media Law Symposium held in Toronto on April 27-28, 2007).

  • 29 CCH (n 1) [54].

  • 30 ibid. [49] "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".

  • 31 ibid.

  • 32 CCH (n 1) [49].

  • 33 ibid [51] "The fair dealing exception under s. 29…"

  • 34 ibid [63].

  • 35 Access Policy detailed at ibid [65].

  • 36 Exposure Draft Part 4 of the Copyright Amendment Bill 2006: Exceptions and other Digital Agenda Review Measures (October 2006). http://www.copyright.org.au/pdf/acc/Submissions/x0605.pdf(visited 29 June 2007)14; but see K Weatherall commentary that the Draft is crafted in such a bad way that it is unclear as to what it actually does: http://weatherall.blogspot.com/2006/10/on-copyright-amendment-bill-and-ipods.html (visited 29 June 2007).

  • 37 Consistent with Wilkinson's analysis (n 24) 346.

  • 38 SOCAN v CAIP 2004 SCC 45 [88] also known as Tariff 22 decision ("Tariff 22").

  • 39 CCH [10] citing Théberge v Galerie d'Art due Petit Champlain Inc [2002] 2 SCR 336 at [30- 31]

  • 40 CCH [10].

  • 41 CCH (n 1) [24].

  • 42 ibid [13] [emphasis added].

  • 43 As repeatedly argued in each of the noted publications at G D'Agostino (n 3).

  • 44 Esmail (n 32) [3].

  • 45 ibid [31].

  • 46 But see M Geist "Strongest pro-user rights decisions in the world" Law Bytes Toronto Star (22 March 2004) available at www.michaelgeist.ca where he interprets CCH as attempting to balance user rights against those of owners and creators.

  • 47 Updated as at 9 July 2007; see infra n 52.

  • 48 CCH (n 1) [63].

  • 49 Esmail (n )[28].

  • 50 Law Society of Upper Canada "Notice to the Profession: Supreme Court of Canada Releases CCH Canadian v Law Society of Upper Canada Copyright Decision." Though it seems that law societies were in discussion with Access Copyright nonetheless. The Copyright Committee of the Federation reaffirmed to CanCopy (now Access Copyright) its willingness to continue discussions with respect to possible blanket licenses for certain copying activities by members of the legal profession:  Law Society of Saskatchewan "Copyright Notice to member of the Canadian Legal Profession form the National Copyright Committee of the Federal of Law Societies of Canada" (14 Dec 1999). http://www.lawsociety.sk.ca/newlook/News/lawsuit3.htm (29 June 2007); access policies remain the same: http://library.lsuc.on.ca/GL/services_access.htm

  • 51 LE Harris "Editorial" (2004) Copyright and New Media Law Newsletter.

  • 52 D'Agostino (n 3) arguing that in the context of mainstream publishing copyright law increasingly favours right holders over authors; see also CJ Craig "Locke, Labour and Limiting the Author's Right: A Warning against a Lockean Approach to Copyright Law" (2002) 28 Queen's LJ 1; A Drassinower "Taking User Rights Seriously" Ch 16 in M Geist (ed) In the Public Interest (Irwin Law Toronto 2005) 462 and S Trosow "The Illusive Search for Justificatory Theories: Copyright, Commodification and Capital" (2003) 16 Can JL & Jur 217-224.

  • 53 [1997] 2 FC 306 ("Michelin").

  • 54 ibid [60].

  • 55 ibid [61].

  • 56 ibid [63].

  • 57 Pursuant to then Copyright Act s 27(2)(a.1) court remarks this requirement made pursuant to the North American Free Trade Agreement Between the Government of Canada, the Government of Mexico and the Government of the United States, 17 December 1992 Can TS 1994 No 2, 32 ILM 289 (entered into force 1 January 1994)("NAFTA") s 64(1). "The substantial quantity of the original work used in the leaflets and posters also casts doubt on the fairness of the defendant's treatment." Michelin (n 58)[70].

  • 58 Michelin (n 58) [65]; also relied on Bishop v Stevens [1990] 2 SCR 467.

  • 59 Michelin (n 58) [71].

  • 60 Allen (n 33).

  • 61 ibid.

  • 62 Citing Williams & Wilkins Co v United States 417 US 907 (US Cl Ct 1974) ("Williams & Wilkins").

  • 63 Allen (n 33) [38].

  • 64 Zamacois v Douville (1943) 2 CPR 270 (Ex Ct)(Angers J) 302 [104] ("Zamacois").

  • 65 ibid.

  • 66 eg some argue its weakness even before CCH: MF Morgan "Trash Talking: The Protection of Intellectual Property Rights in Computer Software" (1994) 26 Ottawa LRev arguing that Hubbard's approach seems preferable.

  • 67 The "real purpose" or "motive" was treated as a sub-factor though not applied: CCH (n 1) [54]

  • 68 Boudreau (n 33).

  • 69 ibid [49]

  • 70 ibid [50-1] see for an interesting discussion of role of university to regulate activities of its professors especially vis-à-vis its students.

  • 71 Breen v Hancock House Publishers Ltd 6 CIPR 129 (Fed Ct) (Joyal J).

  • 72 ibid [20].

  • 73 Curiously, the infringing author had always assumed that academic work (eg like a thesis) was in the public domain and therefore not subject to copyright protection; ibid [10]

  • 74 eg R v Allen 2006 ABPC 115 (Alb PCt) [30] on originality; Columbia Pictures Industries v Gaudreault 2006 FCA 29 (Fed CA) [32] and Columbia Pictures Industries v Frankl 2004 FC 1454 (Fed Ct) [26] on authorization. But to date no decision has applied the fair dealing doctrine. While a trial date has yet to be set, a new suit by Robertson against Thomson Corp is expected to include fair dealing; namely whether the defence of fair dealing applies to any of the infringing acts if there is no implied licence (updated as at 9 July 2007).

  • 75 Tariff 22 [88] citing CCH (n 1) [48] which had quoted D Vaver Copyright Law (Irwin Law Toronto 2000) 171: "User rights are not just loopholes."

  • 76 Re Media Monitoring (Copyright Board, March 29, 2005) [28].

  • 77 ibid [29].

  • 78 ibid [28].

  • 79 Re Breakthrough Films & Television (Copyright Board, March 6, 2006).

  • 80 ibid [29].

  • 81 ibid [30].

  • 82 ibid [55] A copyright licence should not be treated as a "dog licence" ibid [56].

  • 83 Bouchard (n 33).

  • 84 see CMEC "Copyright in Education" http://cmec.ca/copyright/copyInternet.en.stm (last visited June 29, 2007).

  • 85 Wilkinson (n 24) 360. Bill C-60, An Act to Amend the Copyright Act, 1st Sess 38th Parl 2005 was introduced in the House of Commons on 20 June 2005 died on the Order of Paper on 28 November 2005.

  • 86 ibid 369.

  • 87 H Knopf "Copyright Collectivity in the Canadian Academic Community: An Alternative to the Status Quo?" (1999-2000) 14 IJP 109.

  • 88 "Few such authors are believed to earn more than $75 to $100 a Year from reprography royalties from CanCopy" Knopf  (n 92) (CanCopy is now Access Copyright).

  • 89 ibid.

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