By A. Kelly Gill , gillk@gowlings.com
Published 1/1/00
For Your Attention
In a lengthy decision released November 9, 1999, Justice Gibson of the Trial Division of the Federal Court of Canada refused to enjoin the Law Society of Upper Canada from operating its custom copy service. The action, brought in 1993 by three of the four main publishers of legal material in Canada, sought to prohibit the Law Society from providing single copies of primary and secondary sources of published legal material to members of the legal profession for research, private study and use in court on allegations that the Law Society’s actions constituted copyright infringement. One of the primary reasons given in the decision for not enjoining the Law Society appears to be that copyright was held not to subsist in the reported judicial decisions put in issue by the plaintiff publishers.
Since the mid-1950s, the Great Library (the central repository for legal material in the province of Ontario) has maintained a photocopier on its premises and permitted copies to be made of legal material in the library, or has made such copies for requesters for a cost-recovery fee. Seventy-five percent of the material copied consists of reported judicial decisions, with the remainder being statutory material and articles. A small proportion of the copied materials are portions of texts. In the 1990s, approximately 19 percent of the material copied was items published by the three plaintiff publishers.
Given that the bulk of the Great Library’s service relates to the photocopying of reported judicial decisions, a key issue in the decision was the subsistence of copyright in the headnotes and other publisher enhancements to judicial decisions by the publishers. The publishers submitted to the Court three representative examples of reported judicial decisions, one example of a case summary and an example of a topical index. The Court found the materials submitted by the publishers to be lacking sufficient originality to establish copyright in the work. As noted by Mr. Justice Gibson:
While the evidence before the Court demonstrates, beyond doubt, that the preparation of the reported judicial decisions, including the headnotes, catchlines, parallel citations, running heads and other matter added by the publisher, in respect of the three decisions in question, involved extensive labour, skill and judgment, I am satisfied that the whole process, particularly those elements involving skill and judgment, lacked the "imagination" or "creative spark" that I determine to now be essential to a finding of originality.
Of the thousands of alleged infringing copies reviewed by the publishers, only two large excerpts from legal texts were found to have infringed rights as alleged by the publishers. As for these two excerpts, the Law Society librarian had admitted at trial that too much text had been photocopied and had taken steps to see that it did not happen again. The Court ultimately concluded that the extent of the infringement was insufficient to justify the exercise of its discretion to grant an injunction against the custom photocopy services of the Law Society.
The publishers have appealed the decision to the Federal Court of Appeal.
The Law Society of Upper Canada was represented by Gowlings lawyers R. Scott Jolliffe, Kelly Gill and Michael Hilliard.
Kelly Gill is a Partner in the Toronto Gowlings office. He can be reached by e-mail at gillk@gowlings.com.
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