Canadian Copyright Institute

The Canadian Copyright Institute is pleased to introduce the inaugural issue of Copyright Notice in electronic form. This marks a “new beginning” for the Institute. By moving to electronic format, we hope not only to provide timely news, discussion and opinion, but also to do so in a form that makes it easy for our corporate members and affiliates to share the newsletter among interested persons within their organizations.

Supreme Court of Canada to consider scope of “fair dealing” in appeal by Law Society of Upper Canada

In what will undoubtedly be a landmark case, the Supreme Court of Canada has granted the Law Society of Upper Canada leave to appeal a Federal Court of Appeal decision that found the Law Society liable for copyright infringement in its operation of the photocopying service of the Great Library of Osgoode Hall. This service, which is still in operation, delivers, upon request and for a fee, fax and print photocopies of published judicial decisions and other legal materials to judges, lawyers and law firms. The Law Society, unhappy with the appeal decision, is looking to have it overturned. Given the points of law at issue, the outcome will have implications for the entire creator community.

What are these issues? They are: first, what constitutes “originality” sufficient in a work to give rise to copyright protection, and second, just how broad is the defence of “fair dealing”?

This proceeding relates to an action started in 1993 by CCH, Carswell, and Canada Law Book against the Law Society of Upper Canada. These publishers asserted that their copyright in legal headnotes, case summaries, reported judgments, monographs, topographical indexes, annotated statutes and treatises had been infringed by the Great Library’s custom photocopy service. Also targeted by the legal publishers was the Great Library’s provision of free-standing photocopiers for unrestricted copying.

In his 1999 trial decision, Mr. Justice Gibson held that headnotes, summaries and editorial enhancements included in reported court judgments were not sufficiently original to give rise to copyright protection. Citing the earlier Tele-Direct case, he asserted that originality required “imagination or creative spark”. On appeal, the Federal Court overturned this aspect of the decision, holding instead that determination of whether a work is original must focus on whether the work originates from the author, is not copied from another, is a work of expression, rather than merely ideas or facts, and whether some degree of intellectual effort was expended in its creation. The degree of skill, judgment and labour required to meet this standard of originality can vary, it held, with the circumstances. This represented a return to more traditional Anglo-Canadian legal analysis of the issue.

As for the fair dealing defence set out in the Copyright Act – allowing use without the permission of the copyright owner of a work for the purpose of research or private study -- the trial judge said it was unavailable to the Law Society. The Law Society’s photocopying service is utilized primarily for commercial law firms, he found, rather than for the Law Society’s own research or private study. The trial judge felt that the exemption should be strictly construed.

The appellate judges took the contrary view on point, saying that strict construction is contrary to “the mandate of copyright law to harmonize owners’ rights with legitimate public interests” and that “User rights are not just loopholes.” (Vaver, Copyright Law p. 171).

The Court of Appeal found that under the fair dealing provisions of the Copyright Act, the Law Society could copy any work for a patron without infringing copyright if that patron could do so personally. This did not assist the Law Society on the particular facts of the case, however, because the court held that fair dealing on the part of a patron could not be established merely by reference to the Great Library’s “Access to Law Policy” unrelated to the facts in any individual case, as the Law Society had tried to do. The appeal court also rejected the legal publishers’ argument that “research” in the context of “fair dealing”, should be understood as limited to non-commercial or private research. Commercial research, it held, is just as valid a purpose for this exemption as private research and private study.

The Court of Appeal reasoned that whether the purpose of copying fits within the fair dealing exception is the first of a two-stage inquiry. The second question is: is the copying fair?

Several criteria were set out as relevant in the determination of “fairness.” These criteria are:

· Whether the copies made were single copies made for a single requester as opposed to copies made for general publication or distribution.

· The quantity and quality of material copied from each work. (Quality tends to be the dominant consideration. A topical index may only represent 10% of a work but reproducing it in its entirety would be “unfair”. )

· The nature of the work copied. (It was agreed that access to legal materials is in the public interest, but continuing to provide reasonable incentive to creators to produce such works is also in the public interest. Therefore, the fact of access being in the public interest does not automatically make the copying “fair dealing.”)

· The effect of the copying, i.e., the degree to which the market for the reproduced work has been diminished.

Regarding the provision of free-standing photocopiers, the appellate court reversed the trial level, holding that the Great Library infringed copyright by implicitly “authorizing” patrons to copy the publishers’ works on freestanding photocopiers in the library. The Great Library did not demonstrate that it had established appropriate procedures to ensure compliance -- the posted notice was deemed to merely highlight the Law Society’s indifference, a “see no evil, hear no evil” attitude. Nor had it entered into a licensing arrangement with a collective society, a mechanism suggested in the Copyright Act.

The Law Society is taking issue with each of these findings before the Supreme Court. What that court decides respecting the concept of “originality” will have a decisive impact on such matters as the protection of compilations and databases, and a decision as to the scope of “fair dealing” will affect every owner of copyright.

In a bill tabled May 8, the Government set out the terms of a merger of the National Library and the National Archives. This initiative was announced earlier in the speech from the Throne. As part of this bill, the legal deposit required now of books will be extended to electronic publications. The bill will also grant the merged entity the right to "harvest the web" from time to time; that is, to take a “snapshot” of what is on the web at a particular time for archiving purposes. This has copyright implications, and will therefore, require an amendment to the Copyright Act.

Bill to include the "Lucy Maud Montgomery" amendment to the transitional provisions for the term of copyright protection of unpublished works

This amendment of the transitional provisions of section 7, incorporated into the Copyright Act in the 1997 revisions, is expected to reflect the industry consensus set out in Wanda Noel's Final Report of the working group on the issue. Noel's report was released by Industry Canada and Canadian Heritage on February 24, 2003. The working group whose decisions it recorded was composed of archivists and The Writers Union of Canada, who got together to work out solutions to some of the perceived inequities of the provisions as originally passed. Noel's admirably short report can be found at http://strategis.ic.gc.ca/epic/internet/incrp-prda.nsf/vwGeneratedInterE/rp01107e.html

Place of Publication of web article is where it is downloaded High Court of Australia finds

U.S.-based publisher Dow Jones & Co. finds itself the subject of a defamation action brought by mining magnate Joseph Gutnick after a decision of the Australian High Court on December 8, 2002 found that an Australian court was the proper place to bring the libel action. Gutnick is claiming damages from an article published in the October 2000 edition of Barron's magazine, a high-circulation weekly published both in magazine form and electronically on the Internet. The article, entitled Unholy Gains and posted in the Barron's Online section of the Wall Street Journal, asserted that Gutnick engaged in money laundering and tax evasion.

The Dow Jones servers are based in New Jersey, and the publisher, supported by many of the world's largest media conglomerates and publishers -- AOL Time Warner, Associated Press, Reuters, Bloomberg LP and Yahoo! Inc. -- argued that the courts of New Jersey were the proper legal forum in which to bring the action. Gutnick countered successfully that he had the right to sue where the alleged libel was viewed. The matter turned on the question of where “publication” occurred. The highest court in Australia found that publication takes place on the Internet where material is downloaded not, as Dow Jones argued, the country in which the posting server is located.

The libel laws in the Australian state of Victoria, whose courts are to hear the libel action, are much tougher than those of New Jersey.

This decision, if followed by courts in other countries, would have far-reaching ramifications for global publishing, which may have to meet the requirements of the strictest libel jurisdictions worldwide rather than take refuge under the laws of the single jurisdiction in which the server is located.

Council of Ministers of Education Copyright Consortium (CMEC) proposal for a new exception in favour of educational uses of “publicly available” materials on the Internet

In response to a proposal first made in 2001 by CMEC, the Departments of Industry and Heritage have been facilitating meetings between the educational sector and rights holders. The focus of the meetings has been a recommendation from CMEC that a new exception be added to the Copyright Act to permit an educational institution, or a person acting under its authority (that is, teachers and students), to make multiple computer copies, or to perform before students and teachers and/or to communicate by telecommunication to or from a place where a person is participating in an educational program, any material that has been made “publicly available” on a communication network.

The proposed definition of “publicly available” has been severely criticized by the rights holder community in several meetings held since December 2002, as extending far beyond those materials which one might reasonably infer were intended by the rights holder to be available for such uses. CMEC defines the term “publicly available”, in effect, as a work posted to the Internet with the consent of the copyright owner without expectation of payment and without any technological protection measures (TPM), such as passwords or encryption. As a practical matter, the “bright line” defining availability under this definition becomes the presence or absence of TPM.

A Working Group, comprising both rights holders and users, struck in February 2003 has now met three times to address the issues arising from this proposal, and rights holders are currently submitting an alternate proposal involving collective licensing to facilitate educational use of materials found online. A final report of the Working Group is expected after the final meeting to be held in June.

At the CCI AGM in late March, members of the Institute were treated to an intriguing presentation by Professor Jonathan Putnam of the University of Toronto's Centre for Innovation Law and Policy. Putnam presented a potential model for differential pricing in the on-line exploitation of copyright properties that could result in better revenue from exploitation. This would be done by determining what any given individual might be willing to pay for an item, and pricing to that individual rather than to a set price. It was sobering -- to the writer, anyway -- to learn how readily available personal consumer information is in online sales. Food for thought.

Grace Westcott to address American Library Association

CCI's executive secretary, Grace Westcott, will be addressing the American Library Association's Annual conference in Toronto on June 21. The subject is "Crossing New Borders: Globalization and Copyright.” The panelists will consider the effect of international instruments such as NAFTA and GATS/WTO on copyright and freedom of information. Look for highlights in the next issue of Copyright Notice.