Copyright Law Update

OUCEL – Summer Institute 2017
The York University Case
August 17, 2017
University of Ottawa

HOWARD P. KNOPF
Counsel
MACERA & JARZYNA, LLP
OTTAWA, CANADA

(some of this material has appeared before on my blog and/or in presentations elsewhere)
(views are personal and not necessarily those of my firm or clients and are not legal advice)
What I will cover
• What is Fair Dealing?
• Three Supreme Court of Canada cases on Fair
Dealing
• Supreme Court of Canada on Mandatory
Tariffs
• Copyright Board re Access Copyright’s Post
Secondary Tariff
• How the Universities and Colleges Reacted
• The Access Copyright v. York University
Litigation
The SCC Fair Dealing Trilogy
• CCH Canadian Ltd. v. Law Society of Upper
Canada, [2004] 1 SCR 339, 2004 SCC 13
• Society of Composers, Authors and Music
Publishers of Canada v. Bell Canada, [2012] 2
SCR 326, 2012 SCC 36
• Alberta (Education) v. Canadian Copyright
Licensing Agency (Access Copyright), [2012] 2
SCR 345, 2012 SCC 37
CCH Takeaways
• 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.
• 56 It may be possible to deal fairly with a whole work. [e.g. “an entire academic
article]
• 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.
• 70 The availability of a licence is not relevant to deciding whether a dealing has
been fair.
CCH – the Six Factors
1. The purpose of the dealing,
2. The character of the dealing,
3. The amount of the dealing,
4. The nature of the work,
5. Available alternatives to the dealing and
6. 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.”
SOCAN v Bell Takeaways
[22] Limiting research to creative purposes
would also run counter to the ordinary meaning of
“research”, which can include many activities that
do not demand the establishment of new facts or
conclusions. It can be piecemeal, informal,
exploratory, or confirmatory. It can in fact be
undertaken for no purpose except personal
interest. It is true that research can be for the
purpose of reaching new conclusions, but this
should be seen as only one, not the primary
component of the definitional framework.
Alberta v. Access Copyright Takeaways
[25] Similarly, photocopies made by a teacher and provided to primary and
secondary school students are an essential element in the research and
private study undertaken by those students. The fact that some copies were
provided on request and others were not, did not change the significance of
those copies for students engaged in research and private study.
[26] Nor, with respect, do I accept the statement made by the Board and
endorsed by the Federal Court of Appeal, relying on University of London
Press, that the photocopies made by teachers were made for an unfair
purpose — “non-private study” — since they were used by students as a group
in class, and not “privately”. As discussed above, the holding was simply that
the publisher could not hide behind the students’ research or private study
purposes to disguise a separate unfair purpose — in that case, a commercial
one. The court did not hold that students in a classroom setting could never
be said to be engaged in “private study”.
[27] With respect, the word “private” in “private study” should not be
understood as requiring users to view copyrighted works in splendid
isolation. Studying and learning are essentially personal endeavours, whether
they are engaged in with others or in solitude. By focusing on the geography
of classroom instruction rather than on the concept of studying, the Board
again artificially separated the teachers’ instruction from the students’
studying.
Canadian Broadcasting Corp. v.
SODRAC
• Canadian Broadcasting Corp. v. SODRAC 2003 Inc. 2015 SCC 57
(November 26, 2015) See my blog.
• Rothstein, J. re “mandatory” issue:

(112) I conclude that the statutory licensing scheme does not
contemplate that licences fixed by the Board pursuant to s. 70.2 should
have a mandatory binding effect against users.

(113) I find that licences fixed by the Board do not have mandatory
binding force over a user; the Board has the statutory authority to fix
the terms of licences pursuant to s. 70.2, but a user retains the ability
to decide whether to become a licensee and operate pursuant to that
licence, or to decline.

• Why does this apply “a fortiori” re the Copyright Board?

• Transportation analogy…
Access Copyright v. York U.
• Access Copyright v. York U. Final three days of
argument re Phase I took place on June 22-24,
2016 in Ottawa. Decision released July 12, 2017.
• Main issues include:
– Is the interim tariff on which this litigation is based
“mandatory”?
– Are York U’s fair dealing guidelines sustainable?
• Note that York argued only on the narrow basis
that an “interim” tariff cannot be mandatory. Told
that Court that it needn’t rule on “final” tariffs.
• Some possible scenarios
• Appeals and interventions?
What the Court Ordered
JUDGMENT
FOR THE REASONS issued this day, IT IS ORDERED AND ADJUDGED that:
1. The Plaintiff is entitled to a declaration that the Defendant, York University, either
directly or vicariously, from September 1, 2011 to at least December 31, 2013, reproduced
and authorized the reproduction of copyright protected works, in whole or in substantial
part, the reproduction and authorized reproduction of which obliges the Defendant to pay
royalties to the Plaintiff under the Access Copyright Interim Post-Secondary Education
Institutions Tariff 2011-2013 [the Approved Tariff].
2. The Defendant shall pay the royalties specified in the Approved Tariff for the periods
specified therein.
3. The Plaintiff may apply for an injunction prohibiting the Defendant from reproducing or
authorizing reproduction of all copyright protected works falling within the Approved
Tariff and offering such reproduction for sale, rent or distribution until all amounts of
royalties plus interest are paid.
4. The Defendant shall pay pre-judgment and post-judgment interest on all royalty amounts
that are due in accordance with the Federal Courts Act, RSC 1985, c F-7.
5. The Plaintiff is entitled to costs to be determined at a later date.
6. The Defendant’s counterclaim and claim for declaratory relief is dismissed.
7. The Court shall remain seized of this matter to address issues arising from this Judgment
and Reasons including but not limited to the calculation of amounts which are due or may
become due.
“Michael L. Phelan”
Judge
(emphasis added)
The Mandatory Tariff Issue
• What is a tariff?
• The transportation analogy
• Mandatory for Access Copyright but not for
users
• Why did York U not fully and forcefully make
this point?
• See Prof. Katz’ blog for possible explanations
and questions that must be asked
Access Copyright @ Copyright Board –
Post-Secondary Tariff
• Access Copyright Board – Post-Secondary Tariff – Copyright Board –
Hearing took place January 2016. Decision is pending. This is the
mega tariff hearing that AUCC and ACCC withdrew from, leaving the
matter unopposed for practical purposes.
• “They have spent almost three million dollars that we know about
to mid-2012 only to abandon their members midway through this
historic hearing and, even worse still, to withdraw their objections
with no apparent concession on the part of AC. Indeed, the model
licenses that they had earlier agreed upon have been widely
disavowed by their members. “
• Still no decision from Copyright Board 1.5 years after “hearing” and
seven years after case began for 2011-2018
• See my blog here. And here.
• New proposed Tariff filed for 2018-2020
• Deadline for objection is July 19, 2017
Problems with Universities Canada
Guidelines
• Criticism of Universities Canada approach to
Fair Dealing
• Overall Guidelines
• “Application Documents”
Universities Canada Fair Dealing Policy
for Universities
Guidelines
1. Teachers, instructors, professors and staff members in non-profit universities may communicate and reproduce, in paper or
electronic form, short excerpts from a copyright-protected work for the purposes of research, private study, criticism, review,
news reporting, education, satire or parody.
2. Copying or communicating short excerpts from a copyright-protected work under this Fair Dealing Policy for the purpose of
news reporting, criticism or review must mention the source and, if given in the source, the name of the author or creator of the
work.
3. A copy of a short excerpt from a copyright-protected work may be provided or communicated to each student enrolled in a
class or course:
(a) as a class handout
(b) as a posting to a learning or course management system that is password protected or otherwise restricted to students of the
university
(c) as part of a course pack
4. A short excerpt means:
(a) up to 10% of a copyright-protected work (including a literary work, musical score, sound recording, and an audiovisual work)
(b) one chapter from a book
(c) a single article from a periodical
(d) an entire artistic work (including a painting, print, photograph, diagram, drawing, map, chart, and plan) from a copyright-
protected work containing other artistic works
(e) an entire newspaper article or page
(f) an entire single poem or musical score from a copyright-protected work containing other poems or musical scores
(g) an entire entry from an encyclopedia, annotated bibliography, dictionary or similar reference work
provided that in each case, no more of the work is copied than is required in order to achieve the allowable purpose.
5. Copying or communicating multiple short excerpts from the same copyright-protected work, with the intention of copying or
communicating substantially the entire work, is prohibited.
6. Copying or communicating that exceeds the limits in this Fair Dealing Policy may be referred to a supervisor or other person
designated by the university for evaluation. An evaluation of whether the proposed copying or communication is permitted under
fair dealing will be made based on all relevant circumstances.
7. Any fee charged by the university for communicating or copying a short excerpt from a copyright-protected work must be
intended to cover only the costs of the university, including overhead costs.
Better Guidelines
• U of T, or UBC or Western just to take some
examples.
• Moreover, the U of T fair dealing guidelines
provide a useful “Step-by-Step Approach to
Determining if the Copying or other Dealing is
Permitted” and permits a degree of flexibility as
to what constitutes a “short excerpt”. The UBC
document includes a useful flow chart. No such
clear and helpful guidance is found in these AUCC
documents, despite their great overall length.
• See my blog here.
Conclusion
• The AC v York U case potentially can cause
chaos on Canadian campuses unless reversed
on appeal
• Interventions may be necessary to assist the
Federal Court Appeal by ensuring that all
essential arguments are made fully and
forcefully
Questions?