A Leading Canadian IP Case: Authorizing Copyright Infringement and Fair Dealing

CCH Canadian Ltd. v Law Society of Upper Canada, 2004 SCC 13 The Great Library at Osgoode Hall in Toronto has been operated and maintained by the Law Society of Upper Canada (Law Society) since 1845. For more than 150 years, the library has been used by lawyers to research the law on behalf of their clients. Twenty years ago, the library itself became the subject of a precedent-setting copyright case. The Great Library provided two services for the reproduction of legal materials. One of these services was a request-based photocopy service (custom photocopy service), by which Great Library staff delivered the materials in person, by mail or by facsimile to a requester. The second service was the provision of self-service photocopiers in the Great Library. In 1993, publishers of legal materials sued the Law Society for copyright infringement for reproducing their copyrighted works through these two services. The Law Society, in turn, sought a declaration that it did not infringe the publishers’ copyrights. With this factual situation, the Supreme Court of Canada (SCC) in CCH Canadian Ltd. v Law Society of Upper Canada, addressed two important copyright questions. The first was whether, by offering the self-service photocopiers, the Law Society was liable for “authorizing” patrons of the Great Library to copy works in breach of the Copyright Act. The second was whether the Law Society’s custom photocopy service could be considered “fair dealing” under section 29 of the Copyright Act. If so, the Law Society would not be liable for copyright infringement for copying works to provide this service. The SCC found in favour of the Law Society, concluding that neither of the Law Society services amounted to copyright infringement. Regarding the self-service photocopiers, the SCC held that the Law Society’s mere provision of photocopiers did not constitute authorization to use the photocopiers to infringe copyright. Merely authorizing the use of equipment that could be used to infringe copyright did not amount to authorizing infringement. In this case, there was no evidence that the photocopiers had been used in an infringing manner. Further, the warning posted near the copiers stating that the Law Society would not be responsible for any infringing copies was not deemed to be an acknowledgement that the copiers would be used for infringement. Finally, the court decided that even if there had been evidence that the copiers were used to infringe copyright, this did not lead to the conclusion that the Law Society authorized the infringement, since it did not have sufficient control over the library’s patrons. The custom photocopy service was found to fall within the fair dealing exception, which is a user’s right and should be considered an integral part of the Copyright Act rather than merely a defence. To establish fair dealing, a defendant must show that the dealing was for the purpose of research or private study and that it was fair. The SCC determined that “research” must be given a “large and liberal interpretation in order to ensure that users’ rights are not unduly constrained”, and was not restricted to non-commercial or private contexts. In this case, research for the purpose of practising law was considered to be within the meaning of “research” as used in section 29 of the Copyright Act. The SCC agreed with six factors set out by the Federal Court of Appeal to determine whether the dealing was fair: (1) the purpose of the dealing; (2) the nature of the dealing; (3) the amount of the dealing; (4) alternatives to the dealing; (5) the nature of the work in question; and (6) the effect of the dealing on the commercial market for that work. Applying those factors to the case, the SCC determined that the Law Society’s dealings with the publishers’ works were fair. Michael Erdle comments on the importance of the case:

“Fair dealing” has been part of Canadian copyright law for a long time, but until the decision of the Supreme Court in CCH Canadian Ltd v Law Society of Upper Canada there was considerable uncertainty about what exactly fair dealing meant. There was an understanding that it was different from “fair use” in the United States, but was it the same as “fair dealing” in the UK or Australia? The Supreme Court clarified, first, that the references to “research” and “private study” should be read broadly and included professional or business research such as a lawyer’s. And the Court endorsed six specific factors to determine what kind and amount of copying is “fair”. In 2012, as part of a major update of the Copyright Act, Parliament made amendments to state explicitly that it is not an infringement for a library to do anything on behalf of a person that the person could do himself or herself under the fair dealing provisions. The case also opened discussion of many other aspects of copying by libraries and other institutions in the digital age.

Summary by: Cheryl Cheung