Canada: The Federal Court Of Canada Puts The "Fair" In The Copyright Act's "Fair Dealing" Exceptions In Canadian Copyright Licensing Agency v. York University

Last Updated: July 18 2017
Article by Donna MacEwen

On July 12, 2017, the Federal Court of Canada made it clear that there are but two ways to avoid a tariff set by the Copyright Board of Canada Board under Canada's Copyright Act: by obtaining permission to copy, or by falling within an exemption under the Act. And what's "fair" in the context of the "fair dealing" exception under the Act isn't determined solely from the copier's perspective – even when that copier is a post-secondary educational institution.

As a result of the Court's decision in Canadian Copyright Licensing Agency v. York University, all educational institutions, whether they've adopted the Association of Universities and Colleges Canada (AUCC) (now Universities Canada) Fair Dealing Guidelines, have their own, or have none at all, are well-advised to revisit them and their copying activities generally. And the Court's decision isn't limited to those seeking to rely on the Act's fair dealing exemption for the purposes of research, private study, education, parody or satire; the fair dealing test the Court set out also applies to the Act's fair dealing exemptions for the purposes of criticism, review and news reporting, so those relying on either of these exemptions should similarly revisit their guidelines, policies and practices.

  • Write down the what – and the why. Organizations seeking to rely on a fair dealing exemption under the Act should put their limits or thresholds into writing. And they should also be prepared to set out not just what those limits are, but also to explain exactly why the particular thresholds are "fair" – preferably also in writing.
  • Substance and form. In setting fair dealing limits or thresholds, test the quantitative "thresholds" in a qualitative manner. For example, a quantitative threshold of 10% of a book or articles in a journal, etc. (the threshold in York's Guidelines) might seem, on its face, "fair", apparently prohibiting the copying of an entire work. But when put into practice, that same threshold could yield a result that is qualitatively unfair – practically permitting the complete copying of a work that forms 10% or less of a larger work, such as an anthology.
  • Actions speak louder than words. It's critical that those relying on any fair dealing thresholds do more than just set the limits (ideally in writing): it must take steps to actively police and enforce it, and document those activities so it can prove it did so should it ever need to do so.

In Canadian Copyright Licensing Agency v. York University, The Canadian Copyright Licensing Agency (Access Copyright, an organization that collects and distributes royalty fees on behalf of writers and publishers) sued York University (a member of Universities Canada, formerly AUCC) to enforce its royalty fees under an Interim Tariff the Copyright Board of Canada issued respecting York employees' copying activities for a specified period between 2011 and 2013. York, however, claimed its copying fell within the Act's exception for "fair dealing" for research, educational and private study purposes, and therefore the fees weren't payable. York had Fair Dealing Guidelines, based on the AUCC's Fair Dealing Guidelines. Among other things, the Guidelines set a "threshold" of 10% of a book or articles in a journal, with no explanation; York also didn't enforce the Guidelines. The Federal Court, in a lengthy decision that underscores the highly fact-specific nature of this issue, confirmed the determining whether a dealing is "fair" within the meaning of the Act's exceptions is a two-part test, as set out in the Canada's leading decision on "fair dealing" (the Supreme Court of Canada's 2004 decision in CCH Canadian Ltd. v Law Society of Upper Canada) – but decided that in this case, York didn't pass it:

The Act authorizes the purpose. First, the dealing must fall within one of the Act's three "fair dealing" exceptions: dealing for the purposes of research, private study, education, parody or satire; dealing for the purposes of criticism or review; and dealing for the purposes of news reporting. In this case, York's dealing with copyrighted material easily falls within the authorized purpose of research, private study or education.

The dealing must be "fair". Second, the dealing must be "fair". The Act doesn't define the word "fair", so what's "fair" is a question of fact, depending on the particular circumstances of each case and requiring a balancing of interests – those of the copier and those of the author and/or publisher – assessed by reference to six non-exhaustive factors:

  • The purpose of the dealing. The court will assess why the dealing is being done. In this case, this factor replicates the inquiry in the first step of the test: York's dealing with copyrighted material falls within an authorized purpose. However, it could entail a different inquiry; for example, in CCH Canadian Ltd. v Law Society of Upper Canada, the Law Society's purpose was educational, even though it's not an educational institution.
  • The character of the dealing. The court will consider how the work was dealt with, the number of copies made, and the extent of dissemination; the industry custom or practice might also be relevant. But "character" and "amount" are different: character involves the aggregate total number of pages copied; amount involves the proportion between the excerpted copy and the entire work. In this case, this factor is more meaningful when considered with the others, but the broad and large volume of the copying – based on the big picture number of copies rather than the per student exposure York argued for – tended toward unfairness.
  • The amount of copying. This factor focuses on the proportion between the excerpted copy and the entire work: how much of a work was copied and, in this case, whether the Guidelines' 10% "threshold" (10% of a book or articles in a journal, etc.) is fair both quantitatively and qualitatively. It's neither. Quantitatively, the Guidelines set fixed and arbitrary copying limits without explaining what makes them fair, and practically allows for copying of 100% of an author's work, if it's divided between courses or depending on the publication format. For example, if a story were copied as one story it would be copyright protected; if copied from a book containing a collection of works, it's not. These are indicators the Guidelines are arbitrary. Qualitatively, the parts copied can be the core of (and up to 100% of) the work, also without explaining why that's fair.
  • Alternatives to the dealing. This factor assesses whether and what alternatives to copying to which the copier has access. The Court was clear that the justification of cheaper access isn't determinative: it's always better for users to get for free that which they have had to pay for in the past. In this case, York didn't prove there are no alternatives to its dealing: its dealing includes copying entire required course readings (called "coursepacks") without compensating the author or publisher, simply because it could be done digitally.
  • Effect of the dealing. This factor examines the impact of the dealing on the writers, publishers and broader market. The Court noted the effect of the dealing on the market is, in this case, complicated, particularly in light of increased digitalization, peer-to-peer sharing, and use of databases and programs to distribute materials to students. The Court acknowledged the impossibility of isolating and individually weighing its contribution to market impacts, but ultimately concluded that allowing universities to freely copy material for which they used to pay directly and adversely affects writers and publishers.
  • The nature of the work. Though not a determinative factor, this examines whether the work of such a nature that its reproduction would lead to a wider public dissemination of the work, one goal of copyright law. In this case, this factor leans to unfairness because of how the nature of the works is treated and the way the Guidelines are applied: the works are published original works created with skill and judgment, typically requiring research, judgment, expertise and merit, created and published by people who, mostly, earn their income from writing and publishing. There was no evidence the Guidelines were meant to motivate, nor needed to assist in, dissemination.

No enforcement. In this case, the Court also placed considerable weight on an additional factor: York's failure to make any meaningful effort to ensure compliance with the Guidelines.

What's academic freedom got to do with it. Nothing; the Court flatly rejected York's evidence that compliance with copyright laws infringes professors' academic freedom.

How this case is different from the CCH case. The Court applied the same test as did the Supreme Court of Canada in CCH Canadian Ltd. v Law Society of Upper Canada, but the outcome is different because the facts are different, emphasizing the fact-specific nature of the test. There, CCH sued the Law Society alleging the copying activities of its "Great Library" without payment of royalties infringed the Copyright Act. But there, the Supreme Court of Canada decided the Law Society's dealings did fall within the fair dealing exemption for the purposes of research, private study, education, parody or satire for reasons including the control the Great Library exerted over the dealings by way of strict policies that were enforced, that single copies were made, and the absence of adverse impact on publishers.

The Final Tally. The Court confirmed, with little trouble, that the Tariff is mandatory and enforceable against York, even though "Interim" – and Access Copyright is entitled to payment from York of the royalties it claimed in its lawsuit for copying between 2011 and 2013. The Court also retained jurisdiction to settle the calculation of amounts owing, if necessary.

To Appeal or Not to Appeal. York University has the right to appeal this decision, and gets the benefit of the "Summer Break": if it's going to appeal, it has 30 days to do so – not counting the months of July and August. In the meantime, copiers will have to decide whether to act now, or to wait and see, bearing in mind that there could be a financial cost to its decision.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.