CCH Canadian Ltd. et al. v. Law Society of Upper Canada, (2002) 289 N.R. 1 (FCA)

• Judge: Linden, Rothstein and Sharlow, JJ.A.
• Court: Federal Court of Appeal (Canada)
• Case Date: May 14, 2002
• Jurisdiction: Canada (Federal)
• Citations: (2002), 289 N.R. 1 (FCA)

CCH Cdn. Ltd. v. LSUC (2002), 289 N.R. 1 (FCA)

MLB headnote and full text

Temp. Cite: [2002] N.R. TBEd. MY.051

CCH Canadian Limited (appellant/plaintiff) v. The Law Society of Upper Canada (respondent/defendant)

(A-806-99)

Thomson Canada Limited c.o.b. as Carswell Thomson Professional Publishing (appellant/plaintiff) v. The Law Society of Upper Canada (respondent/defendant)

(A-807-99)

Canada Law Book Inc. (appellant/plaintiff) v. The Law Society of Upper Canada (respondent/defendant)

(A-808-99)

Indexed As: CCH Canadian Ltd. et al. v. Law Society of Upper Canada

Federal Court of Appeal

Linden, Rothstein and Sharlow, JJ.A.

May 14, 2002.

Summary:

The Law Society of Upper Canada's Great Library at Osgoode Hall in Toronto offered a custom photocopy service (for a fee) and provided free-standing photocopiers for unrestricted use by library patrons (also for a fee). The photocopying services were operated in accordance with the Law Society's Access to the Law Policy. The plaintiffs, Canadian pub­lishers of law text­books, law reports and other legal publi­cations, com­menced actions against the Law Society, alleging copyright infringement and seeking declara­tory and injunctive relief respecting the Law Society's copying and faxing activities. In particular, the pub­lishers claimed subsistence and ownership of copy­right in (a) three reported judi­cial deci­sions; (b) three headnotes to those re­ported judicial deci­sions, (c) the annotated Martin's Ontario Criminal Practice 1999; (d) a par­ticular case summary (i.e., a summary in the All Canada Weekly Sum­maries); (e) a topi­cal index; and (f) portions of a textbook or a monograph in a textbook. The Law Society, counter­claimed, seeking declar­ations regard­ing its copying activities.

The Federal Court of Canada, Trial Divi­sion, in a decision reported 169 F.T.R. 1, held that copyright, other than any copyright held by the Crown or a judge, did not subsist in the three reported judi­cial decisions, the headnotes, the case sum­mary or the topical index. The court declared, however, that copyright subsisted in the annotated Criminal Practice and in portions of the text­book. The court declared that the Law Society infringed the publishers' copy­right in photocopying sub­stantial portions of the textbooks in issue and by distributing the copies by hand, facsimile, mail or courier. The court declined to grant any generalized declaratory or injunctive relief respecting the Law Society's custom photocopy service. The plaintiff publishers appealed and the Law Society cross-appealed.

The Federal Court of Appeal allowed the publishers' appeal in part. The court held that copy­right sub­sisted in the three report­ed judicial decisions accompanied by their headnotes, the headnotes themselves, the case summary, the topical index and in a mono­graph in a text­book. The court stated further that "although the question does not arise in this particular case, there is some doubt whether, without the headnote, a publisher could support a claim for copy­right protection in judicial reasons alone, which seem to be merely copied and edited". The court held that the Law Society infringed copyright in the works that were reproduced, but declined to grant broader declaratory relief or a per­manent injunction. The court dismissed the Law Society's cross-appeal, stating that the Law Society was not entitled to a declaration that it had not infringed the publishers' copyright in the works in issue in this case. The court stated that "it is not possible to conclude on the basis of the evidence in this case that the current prac­tices of the Law Society do not or will not infringe copyright". The court stated that it hoped, through its reasons, to have pro­vided the parties with sufficient guidance to enable them to negoti­ate a just compro­mise among themselves.

Copyright - Topic 1

General - The Federal Court of Appeal stated that "copyright law is statutory law, based upon the Copyright Act, R.S.C., 1985, c. C-42, and its relevant amendments ... However, case law, both domestic and foreign, guides this Court's interpretation of the Act. This Court might be guided by British jurisprudence, since Canadian copy­right law was historically based upon, and still closely resembles British law ... On the other hand, the Supreme Court of Canada has indicated that American juris­prudence must be carefully scrutinized, because there are important differences between Canadian and American copyright policy and legislation ... Canadian courts must always be careful not to upset the balance of rights as it exists under the Canadian Act." - See paragraph 22.

Copyright - Topic 1003

Works subject to copyright - Literary works (incl. compilations) - Three law book publishers claimed copyright in three reported judicial decisions accompanied by headnotes, the headnotes themselves, a particular case summary (i.e., a summary in the All Canada Weekly Summaries), a topical index which appeared as an appen­dix to the book "Canada GST Cases, [1997] G.S.T.C.", and to a monograph in a textbook - The Federal Court of Appeal held that copyright subsisted in these works - See paragraphs 60 to 84 and 188 to 229 - The court stated however that "although the question does not arise in this particu­lar case, there is some doubt whether, without the headnote, a publisher could support a claim for copyright protec­tion in judicial reasons alone, which seem to be merely copied and edited." - See paragraph 78.

Copyright - Topic 1003

Works subject to copyright - Literary works (incl. compilations) - The Federal Court of Appeal stated that "... the classic Anglo-Canadian precondition to copyright is that a work must be independently pro­duced and not copied from another person. Where a work, such as a compilation, is produced by selecting and arranging exist­ing material originality can be established if the new work is more than simply a rearranged copy of existing materials. Producing a work that is not, in essence, a copy of existing material will require effort that is most often referred to as skill, judgment or labour." - See paragraph 36.

Copyright - Topic 1003

Works subject to copyright - Literary works (incl. compilations) - Three law book publishers claimed copyright in three reported judicial decisions and the headnotes, in a particular case summary and in a topical index - The trial judge decided that copyright did not subsist in these items because they were not "orig­inal" where the "whole process" involved lacked the "imagination" or "creative spark" essential to a finding of originality -The Federal Court of Appeal held that the trial judge was mistaken in finding that imagination or creative spark was essential to a finding of originality - Rather, the court stated that the Act contained no express requirement of "creative spark or imagination" - The only prerequisite to protection was that the work be "original" (Copyright Act, s. 5) - The court then discussed the meaning of "original" and, in particular, what constituted originality in regard to compilations - See paragraphs 24 to 59.

Copyright - Topic 1003

Works subject to copyright - Literary works (incl. compilations) - Article 1705 of the North American Free Trade Agree­ment (NAFTA) provided that with regard to copyright, each party would protect works covered by art. 2 of the Berne Con­vention, including in particular "compila­tions of data or other material ... which by reason of the selection or arrangement of their contents constitute intellectual cre­ations ..." - The Federal Court of Appeal stated that the mandate was to ensure that the signatories protected forms of expres­sion, such as compilations of literary works and of data, not to alter the standard upon which those forms were protected - There­fore, the copyright provisions in NAFTA were not intended to alter the standard of originality in Canadian copyright law - Neither NAFTA nor the Berne Convention imposed a higher standard of originality than was already present under Canadian law - See paragraphs 27 and 37 to 40.

Copyright - Topic 1003

Works subject to copyright - Literary works (incl. compilations) - Three law book publishers claimed copyright in three reported judicial decisions and the headnotes, in a particular case summary and in a topical index - The trial judge decided that copyright did not subsist in these items because they were not "orig­inal" where the "whole process" involved lacked the "imagination" or "creative spark" essential to a finding of originality -The Federal Court of Appeal held that the trial judge misinterpreted the Court of Appeal's earlier deci­sion in Tele-Direct v. Ameri­can Business Information Inc. where­in the court rejected Tele-Direct's claim that copyright subsisted in its sub-compila­tions of data in its Yel­low Pages Directory - The court stated rather that Tele-Direct was not intended to alter Anglo-Canadian jurispru­dence respecting the interpretation of orig­inality (i.e., Tele-Direct did not introduce any additional precondition to copyright protec­tion under Canadian law) -See paragraphs 27 and 44 to 47.

Copyright - Topic 1003

Works subject to copyright - Literary works (incl. compilations) - Three law book publishers claimed copyright in three reported judicial decisions and the headnotes, in a particular case summary and in a topical index - The trial judge decided that copyright did not subsist in these items because they were not "orig­inal" where the "whole process" involved lacked the "imagination" or "creative spark" essential to a finding of originality -The Federal Court of Appeal held that in reaching his decision, the trial judge mis­takenly adopted the American threshold for copyright protection - The court noted that there were significant differences between Anglo-Canadian copyright law and the American standard of originality that was applied in Matthew Bender v. West Pub­lishing Co. (1998, 2nd Circ.) - See para­graphs 27 and 48 to 52.

Copyright - Topic 1003

Works subject to copyright - Literary works (incl. compilations) - [See second Copyright - Topic 1034 ].

Copyright - Topic 1007

Works subject to copyright - Original works - [See first, second, third, fourth, fifth and sixth Copyright - Topic 1003 and second Copyright - Topic 1034 ].

Copyright - Topic 1034

Works subject to copyright - Particular works - Reported judicial decisions, headnotes, annotated statutory instruments, texts, etc. - [See first and third Copyright - Topic 1003 ].

Copyright - Topic 1034

Works subject to copyright - Particular works - Reported judicial decisions, headnotes, annotated statutory instruments, texts, etc. - Three law book publishers claimed copyright in three reported judicial decisions and their accompanying headnotes - The Federal Court of Appeal held that the skill, judgment and labour invested in these reported decisions and headnotes demonstrated that they were far more than mere copies and they were, therefore, original works in which copy­right subsisted - These reported judicial decisions were original notwithstanding that other publishers might have selected the same types of elements for other re­ported judicial decisions and arranged the elements of their compilations consistently - The court stated that two independently produced compilations that may appear similar may both be entitled to copyright protection - "The publishers do not monop­olize information in the sense that they can preclude others from independently pro­ducing similar materials; they merely acquire the right to preclude others from copying their works" - See paragraphs 67 to 73.

Copyright - Topic 1034

Works subject to copyright - Particular works - Reported judicial decisions, headnotes, annotated statutory instruments, texts, etc. - Three law book publishers claimed copyright in three reported judicial decisions and their accompanying headnotes - The Federal Court of Appeal, held that copyright sub­sisted in the works in issue - The court noted that unlike routine compila­tions of data, these reported judicial deci­sions displayed some indicia of their au­thors' style or manner of expres­sion - Linden, J.A., stated that "in particu­lar, the summaries of the facts, reasons and conclusions could have been long or short, technical or simple, dull or dramatic, well-written or confusing; the organization and presenta­tion might have varied greatly. I take judicial notice of the fact that in the past Canadian headnotes have been authored by some of the greatest legal minds in our country such as the late Chief Justice Bora Laskin, Dean Cecil A. Wright and other well-respected academics and practitioners including the witnesses pro­fessors Dunlop and Feldthusen. It is doubt­ful that such distinguished scholars would have devoted their time and effort to mun­dane copying. The independently com­posed features are obviously more than simply abridged copies of the reasons for judgment." - See paragraphs 72 and 73.

Copyright - Topic 1034

Works subject to copyright - Particular works - Reported judicial decisions, headnotes, annotated statutory instruments, texts, etc. - Three law book publishers claimed copyright in three reported judicial decisions and their accompanying headnotes - The Federal Court of Appeal held that the headnotes were original and qualified for independent copyright protec­tion under the Copyright Act - Linden, J.A., stated that "... the headnotes are essential to establishing originality in the reported judicial decision as a whole. Although the question does not arise in this particular case, there is some doubt whether, without the headnote, a publisher could support a claim for copy­right protec­tion in judicial reasons alone, which seem to be merely copied and edited." - See paragraphs 77 and 78.

Copyright - Topic 1034

Works subject to copyright - Particular works - Reported judicial decisions, headnotes, annotated statutory instruments, texts, etc. - Three law book publishers claimed copyright in a particular case sum­mary (i.e., a summary in the All Canada Weekly Summaries) - The Federal Court of Appeal held that the case summary was sufficiently original to qualify for copy­right protection under the Copyright Act - Linden, J.A., stated that "although the information contained within this summary is necessarily derived from the case that it summarizes, that informa­tion could have been expressed in any number of ways, much like the indepen­dently composed features of the reported judicial decisions. This condensation of judicial reasons required significant skill and judgment in its composition and dis­cretion in its pre­sentation. Its concise style does not affect its originality. This is clear­ly more than simply an abridged copy of the reasons for judgment upon which it is based." - See paragraphs 79 and 80.

Copyright - Topic 1034

Works subject to copyright - Particular works - Reported judicial decisions, headnotes, annotated statutory instruments, texts, etc. - Three law book publishers claimed copyright in, inter alia, a topical index which appeared as an appendix to the book "Canada GST Cases, [1977] G.S.T.C." - The Federal Court of Appeal, held that the topical index was original - Linden, J.A., stated that the "... authors exhibited skill and judgment in selecting and arranging its elements. They selected cases that they judged to be binding or persuasive author­ity concerning the GST. Although the topical index is arranged alphabetically, there are significant cross-references to other headings within the index, and im­portant decisions were required as to where certain information ought to appear..." - See paragraph 82.

Copyright - Topic 1034

Works subject to copyright - Particular works - Reported judicial decisions, headnotes, annotated statutory instruments, texts, etc. - Three law book publishers claimed copyright in, inter alia, a topical index which appeared as an appendix to the book "Canada GST Cases, [1977] G.S.T.C." - The Federal Court of Appeal, held that the topical index was original - Linden, J.A., noted that "... the authors have added consider­able independently composed material to this compilation by incorporating their own summaries of relevant cases. That these sum­maries are extremely brief, usually only a few words, does not diminish the claim of originality, but rather enhances it. It is no easy task to summar­ize an entire decision into a single phrase, which might have been done in an infinite number of ways. By selecting which cases to include, indepen­dently composing ex­tremely brief sum­maries of the decisions, and arranging and cross-referencing the topics, the publishers have demonstrated that the topical index is an original work." - See paragraph 82.

Copyright - Topic 1034

Works subject to copyright - Particular works - Reported judicial decisions, headnotes, annotated statutory instruments, texts, etc. - Three law book publishers claimed copyright in, inter alia, a mono­graph in a textbook - The Federal Court of Appeal stated that "the monograph is a work independent from the book in which it appears. Although the book may be considered to be a compilation or a collec­tive work, as those terms are defined in the [Copyright] Act, Professor Kogan's [i.e., the author's] right to copyright protection for his contri­bution to the larger work is not diminished by that fact. Like s. 2.1(2), referred to above, the definition of a 'col­lective work' suggests that copyright may subsist in the 'works of different authors' that are incor­porated therein. I have no doubt that the monograph is a distinctive work. Once it is concluded that the mono­graph is a work on its own, no doubt remains that it is original." - See paragraph 83.

Copyright - Topic 1034

Works subject to copyright - Particular works - Reported judicial decisions, headnotes, annotated statutory instruments, texts, etc. - The Law Society of Upper Canada's Great Library at Osgoode Hall in Toronto offered a custom photocopy ser­vice (for a fee) - Three law book pub­lishers alleged copyright infringement - The Law Society argued that it had the exclusive right to publish judicial decisions of the Ontario courts, by virtue of the delegation of the Crown prerogative - The Law Society therefore submitted that the publishers could not allege infringement of any work that incorporated those deci­sions - The Federal Court of Appeal stated that judicial reasons are considered to be in the public domain - Under Anglo-Canadian law, an author's work may have copyright not­withstanding that it consists of material that is in the public domain or based upon exist­ing works in which copyright may subsist - See paragraph 174.

Copyright - Topic 4405

Infringement of copyright - Substantial similarity or substantial copying - [See second and third Copyright - Topic 4495 ].

Copyright - Topic 4490

Infringement of copyright - Acts constitut­ing an infringement - Authorization to exercise rights reserved solely for author - [See seventh Copyright - Topic 4495 and ninth Copyright - Topic 4645 ].

Copyright - Topic 4495

Infringement of copyright - Acts constitut­ing an infringement - Photocopying - The Law Society of Upper Canada's Great Library at Osgoode Hall in Toronto offered a custom photocopy service (for a fee) - Three law book publishers alleged copyright infringement respecting three judicial decisions accompanied by headnotes, the headnotes themselves, a case summary, topical index and a mono­graph in a textbook - The Federal Court of Appeal declared that copyright subsisted in the materials in issue and the Law Society infringed copyright in the works that were reproduced - The court however declined to issue broader declaratory relief or an interlocu­tory injunction - The court stated that it was not possible to conclude on the basis of the evidence in this case that the current practices of the Law Society did not or will not infringe copyright - The court expressed the hope that through its reasons for decision, the court provided the parties with sufficient guidance to enable them to negotiate a just compromise among them­selves - See paragraphs 85 to 179 and 229 to 303.

Copyright - Topic 4495

Infringement of copyright - Acts constitut­ing an infringement - Photocopying - The Law Society of Upper Canada's Great Library at Osgoode Hall in Toronto offered a custom photocopy service (for a fee) - Three law book publishers alleged copyright infringement - The publishers argued that the photocopying of judicial decisions, headnotes, a case summary, a topical index and a monograph in a text­book constituted reproduction of their works or substantial parts thereof - The Federal Court of Appeal discussed what constituted the reproduction of a substan­tial part of a work in this context - The court declined to specify a particular per­centage of a work that would delineate the substantial from the insubstantial - The court noted that in some circumstances a small number of very important pages may be substantial, whereas in other circum­stances, a larger number of unimportant pages may be insubstantial - Such a deter­mination would depend on the context - See paragraphs 91 to 97 and 234 to 240.

Copyright - Topic 4495

Infringement of copyright - Acts constitut­ing an infringement - Photocopying - The Law Society of Upper Canada's Great Library at Osgoode Hall in Toronto offered a custom photocopy service (for a fee) - Three law book publishers argued that the photocopying of judicial decisions and headnotes constituted reproduction of their works or substantial parts thereof - The Federal Court of Appeal noted that the specific reproductions at issue were of entire works - However, Linden, J.A., stated that "I suspect that if the Law Society reproduced only a headnote rather than an entire reported judicial decision, such reproduction would be of a substan­tial part of a work ... I also suspect that if the Law Society reproduced only the edited reasons for judgment from a report­ed judicial decision, such reproduction may not be of a substantial part of a work ... Qualitatively, the publishers invest an insubstantial amount of effort into edited reasons for judgment, as compared to headnotes. Thus, a headnote, which may be relatively brief compared to an entire reported judicial decision, may constitute a substantial part, whereas edited judicial reasons, which may be considerably longer than a headnote, may be an insubstantial part." - See paragraph 95.

Copyright - Topic 4495

Infringement of copyright - Acts constitut­ing an infringement - Photocopying - The Law Society of Upper Canada's Great Library at Osgoode Hall in Toronto offered a custom photocopy service (for a fee), including a facsimile service - Three law book publishers alleged copyright infringement, arguing that facsimile trans­missions by the Law Society of their works by facsimile constituted communi­ca­tion "to the public" by telecommunica­tion contrary to the publishers' exclusive rights under s. 3(1)(f) of the Copyright Act - The Law Society argued that the trans­mission of one work to one recipient was not a communication "to the public" - The Fed­eral Court of Appeal held that a single telecommunication emanating from a single point and intended to be received at a single point was typically not a com­munication to the public - Rather, to be "to the public" a communication must be targeted at an aggregation of individuals, which is more than a single person but not necessarily the whole public at large - See paragraphs 98 to 100 and 241 to 255.

Copyright - Topic 4495

Infringement of copyright - Acts constitut­ing an infringement - Photocopying - The Law Society of Upper Canada's Great Library at Osgoode Hall in Toronto offered a custom photocopy service (for a fee), including a facsimile service - Three law book publishers alleged copyright infringement, arguing that facsimile trans­missions by the Law Society of their works constituted communica­tion "to the public" by telecommunication contrary to the publishers' exclusive rights under s. 3(1)(f) of the Copyright Act - In particular, the publishers argued that a series of trans­missions to single recipients constituted communication to the public - The Fed­eral Court of Appeal accepted that a series of sequential transmissions may infringe the right to communicate to the public - How­ever, the court stated that the question of whether a group of recipients was suffi­ciently large to constitute "the public" could only be answered on a case by case basis, and there was insufficient evidence in this case for the court to make such a determination - See paragraph 101.

Copyright - Topic 4495

Infringement of copyright - Acts constitut­ing an infringement - Photocopying - The Law Society of Upper Canada's Great Library at Osgoode Hall in Toronto offered a custom photocopy service (for a fee), including a facsimile service - Three law book publishers alleged copyright infringement, arguing that the Law Society infringed their right to communicate their works to the public contrary to s. 3(1)(f) of the Copyright Act merely by making such works available through its photocopying service - The Federal Court of Appeal held that there was no merit in this submission - Merely evincing a willingness to accept requests by patrons of the Great Library for copies of the publishers' works was not an infringement of the publishers' right to communicate their works to the public - See paragraph 102.

Copyright - Topic 4495

Infringement of copyright - Acts constitut­ing an infringement - Photocopying - The Law Society of Upper Canada's Great Library at Osgoode Hall in Toronto had free-standing photocopiers for patrons to copy library materials for a fee - The Law Society posted a notice that it was not responsible for infringing copies made by users of the photocopiers - Three book publishers alleged copyright infringement, arguing that the Law Society authorized reproductions of their works by maintain­ing free-standing photocopiers - The Feder­al Court of Appeal agreed that the Law Society infringed the publishers' right to authorize reproduction of their works - The Law Society implicitly authorized such acts by providing both readily available photocopiers and a vast collection of the publishers' works together - Rather than attempting to control copyright infringe­ment, the Law Society merely posted a notice indicating that it was not respon­sible, thereby implicitly sanctioning, ap­proving and countenancing its patrons' reproductions - In this case, there was clearly sufficient evidence to alert the Law Society, and in fact, it acknowledged that the photocopiers might be used illegit­imately - See paragraphs 103 to 114.

Copyright - Topic 4645

Defences - Fair dealing - The Federal Court of Appeal rejected the notion that exceptions to copyright infringement, such as the fair dealing provisions, ought to be narrowly or strictly construed - The court stated that there was no basis in law or in policy for such an approach - An overly restrictive interpretation of the exemptions contained in the Copyright Act would be inconsistent with the mandate of copyright law to harmonize owners' rights with legitimate public interests - Instead, courts should employ the usual modern rules of purpos­ive construction in the context - "Simply put, any act falling within the fair dealing exemptions is not an infringement of copy­right." - See paragraph 126.

Copyright - Topic 4645

Defences - Fair dealing - Section 29 of the Copyright Act provided that "fair dealing for the purpose of research or private study does not infringe copyright" - The Federal Court of Appeal interpreted s. 29 - The court stated that "research" in s. 29 was not modified whereas "study" was required to be "private" - Parliament's decision to expressly qualify "study" but not "research" indicated an intention to permit all fair research, whether in a private setting or not - Therefore research for a commercial purpose, including legal research carried out for profit by entities such as law firms, was not automatically excluded from this exemption - See paragraphs 127 to 129.

Copyright - Topic 4645

Defences - Fair dealing - The Law Society of Upper Canada's Great Library at Osgoode Hall in Toronto offered a custom photocopy service (for a fee) - Three law book publishers alleged copyright infringe­ment - The Law Society raised the defence of fair dealing under s. 29 of the Copyright Act - Section 29 provided that "fair deal­ing for the purpose of research or private study does not infringe copyright" - The publishers argued that one could deal fairly only for one's own purposes - The Federal Court of Appeal held that in considering the fair dealing exemption in the context of copies made by a library, archive or museum, the relevant purpose was that of the patron - Therefore, notwithstanding that the Law Society did not personally undertake research or private study, the Law Society shared the purposes of indi­vidual library patrons - The court noted, however, that this finding alone did not amount to an exemption from infringe­ment, but merely crossed the threshold of fair dealing - The Court still had to assess whether the dealings were fair - See para­graphs 127 to 134.

Copyright - Topic 4645

Defences - Fair dealing - The Law Society of Upper Canada's Great Library at Osgoode Hall in Toronto offered a custom photocopy service (for a fee) - Three law book publishers alleged copyright infringe­ment - The Federal Court of Appeal held that the Great Library fell within the defi­nition of "library, archive or museum" under the recent amendments to the Copy­right Act (ss. 2, 29.3, 30.2(1)) - The Great Library was not an entity "established or conducted for profit" nor was it adminis­tered or directly or indirectly controlled by a body that was established or conducted for profit (i.e., the Law Society) - The Great Library's custom photocopying service was not operated for profit - The Law Society's collection of materials in the Great Library was open to the public or to researchers - See paragraphs 135 to 143.

Copyright - Topic 4645

Defences - Fair dealing - The Law Society of Upper Canada's Great Library at Osgoode Hall in Toronto offered a custom photocopy service (for a fee) - Three law book publishers alleged copyright infringe­ment - The Federal Court of Appeal stated that "... if a patron of the Great Library could make for him or herself a copy of the publishers' works as fair dealing for an allowable purpose, the Law Society does not infringe copyright if it makes the copy on behalf of a requester. Whether the Law Society shares the purpose of its patrons, or claims the statutory exemption in sub­section 30.2(1) [i.e., the library exemp­tion], the result is the same. The Law Society, in operating the Great Library, does not infringe the publishers' copyrights by doing anything on behalf of a person that the person may do personally under the fair dealing exemptions. In essence, the Law Society can vicariously claim an individual end user's fair dealing exemp­tion, and to step into the shoes of its patron." - See paragraph 143.

Copyright - Topic 4645

Defences - Fair dealing - The Law Society of Upper Canada's Great Library at Osgoode Hall in Toronto offered a custom photocopy service (for a fee) - Three law book publishers alleged copyright infringe­ment - The Law Society raised the defence of fair dealing under the Copyright Act - The Federal Court of Appeal stated that "necessarily, fairness depends upon the context and facts of each particular case, and for that reason, 'fair' is not defined in the Act" - The court stated that an assess­ment of fairness was not simply a subjec­tive exercise and that there were a number of identifiable factors that might influence one's conclusion - The court discussed the following factors: (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 that work - See paragraphs 144 to 160.

Copyright - Topic 4645

Defences - Fair dealing - The Law Society of Upper Canada's Great Library at Osgoode Hall in Toronto offered a custom photocopy service (for a fee) in accordance with the Law Society's "Access To The Law Policy" - Three law book publishers alleged copyright infringement - The Law Society sought a "ubiquitous declaration" that fulfilling requests for single copies of reported judgments, etc., for the purpose of research, in accordance with its Access to the Law Policy, constituted fair dealing - The Federal Court of Appeal stated that the court could not legitimize its entire photocopying operation with a blanket statement - Not only was it impossible to generalize with respect the Law Society's dealings because of the variability of the purposes of the patrons of the Great Library, but likewise, one could not cat­egorically characterize all of the patrons' dealings as fair - Thus the policy was insufficient to categorically establish fair dealing with respect to every single request - See para­graphs 161 to 167.

Copyright - Topic 4645

Defences - Fair dealing - The Law Society of Upper Canada's Great Library at Osgoode Hall in Toronto offered a custom photocopy service (for a fee) in accordance with the Society's "Access To The Law Policy" - Three law book publishers alleged copyright infringement - The Law Society raised the defence of fair dealing - The publishers suggested that one of the factors that made the Law Society's cus­tom photocopying operation unfair was the volume of copying - The Federal Court of Appeal noted that the Law Society was not relying on its own fair dealing exemption, but upon the exemptions of its patrons - The court noted further that the Law Society could claim different patrons' fair dealing exemptions an infinite number of times, since it would be contrary to the purpose of the library exemptions to limit the number of times a library, archive or museum could copy a work on behalf of different persons - "In fact, the library exemptions are intended to allow such institutions to disseminate works to a large number of different persons, on the condi­tion that each dealing is fair" - See para­graph 167.

Copyright - Topic 4645

Defences - Fair dealing - The Law Society of Upper Canada's Great Library at Osgoode Hall in Toronto had free-standing photocopiers for patrons to copy library materials for a fee - Three book publishers alleged copyright infringement - The Fed­eral Court of Appeal held that this activ­ity was a prima facie infringement of the publishers' right to authorize persons to produce or reproduce the publishers' works under s. 3(1) of the Copyright Act - The court noted, however, that s. 30.3 of the Act allowed certain institutions to maintain free-standing photocopiers and set out criteria whereby those institutions could avoid liability for authorizing reproductions - Here, the Law Society could not rely on this exemption to avoid liability for infringement of the publishers' authoriza­tion right because there was no evidence that the Law Society had entered into an agreement with any collective or that any of the other requirements listed in s. 30.3(2) had been met - See paragraphs 168 and 169.

Copyright - Topic 4649

Defences - Educational institutions, libraries, archives and museums - [See third, fourth, fifth, eighth and ninth Copy­right Topic 4645 ].

Copyright - Topic 4650

Defences - Public interest - The Law Society of Upper Canada's Great Library at Osgoode Hall in Toronto offered a custom photocopy service (for a fee) - Three law book publishers alleged copy­right infringement - The Law Society argued that Constitutional and Charter values, such as the rule of law, equality, and access to justice, justified its photo­copying service - The Federal Court of Appeal stated that it did not believe that "'the public interest in the due administra­tion of justice, the maintenance of the rule of law and the enhancement of basic con­stitutional values through relatively equal, unrestricted assess to the law would be significantly impaired through recognition and enforcement of any copyright interests that the plaintiffs might have in the works in issue'" - Linden, J.A., stated that "in par­ticular, one of the ways that the Law Society might fulfil its mandate of provid­ing access to justice is by photocopying only the reasons for judgment, which I have suggested might constitute only an insubstantial part of some reported judicial decisions." - See paragraph 170.

Copyright - Topic 4656

Defences - Delay, acquiescence, etc. - The Law Society of Upper Canada's Great Library at Osgoode Hall in Toronto offered a custom photocopy service (for a fee) - Three law book publishers alleged copyright infringement - The Law Society argued that it had an implied license to make copies over the years, and that the publishers were estopped from now claim­ing infringement because of their long­standing acquiescence to the photocopying service - The Federal Court of Appeal, per Linden, J.A., stated that "like the trial judge, I believe that there is no basis in equity or otherwise to prevent the pub­lishers from revoking an implied license, even if one did exist. They are entitled to assert their legal rights. The cease and desist letter of March 29, 1993 certainly indicates the publishers' intention to do just that." - The court also rejected the Law Society's argu­ments that the publish­ers' action should be defeated by delay, laches or acquiescence - See paragraphs 172 to 173.

Courts - Topic 102

Stare decisis - Authority of judicial deci­sions - English, American and foreign authorities - English decisions - [See Copyright - Topic 1 ].

Courts - Topic 103

Stare decisis - Authority of judicial deci­sions - English, American and foreign authorities - American decisions - [See Copyright - Topic 1 ].

Words and Phrases

Library, archive or museum - The Feder­al Court of Appeal discussed the meaning of this phrase as used in s. 2 of the Copy­right Act, R.S.C. 1985, c. C-42 - See paragraphs 136 to 143.

Words and Phrases

Original - The Federal Court of Appeal discussed the meaning of the word "orig­inal" as it was used in s. 5 of the Copy­right Act, R.S.C. 1985, c. C-42 - See paragraphs 22 to 59.

Words and Phrases

Research or private study - The Federal Court of Appeal discussed the meaning of this phrase as it was used in s. 29 of the Copy­right Act, R.S.C. 1985, c. C-42 - See paragraphs 126 to 129.

Words and Phrases

To the public - The Federal Court of Appeal discussed the meaning of the phrase "to the public" as used in s. 3(1)(f) of the Copyright Act, R.S.C. 1985, c. C-42 - See paragraphs 98 to 100 and 241 to 255.

Cases Noticed:

Blue Crest Music Inc. et al. v. Compo Co. Ltd., [1980] 1 S.C.R. 357; 29 N.R. 296, refd to. [paras. 22, 188].

Apple Computer Inc. et al. v. Mackintosh Computers Ltd., [1987] 1 F.C. 173; 3 F.T.R. 118 (T.D.), affd. [1988] 1 F.C. 673; 81 N.R. 3 (F.C.A.), affd. [1990] 2 S.C.R. 209; 110 N.R. 66, refd to. [paras. 23, 261].

Galerie d'Art du Petit Champlain Inc. v. Théberge (2002), 285 N.R. 267 (S.C.C.), refd to. [para. 23].

Sayre v. Moore (1785), 102 E.R. 139, refd to. [para. 23].

Tele-Direct (Publications) Inc. v. Ameri­can Business Information Inc., [1998] 2 F.C. 22; 221 N.R. 113 (F.C.A.), refd to. [paras. 27, 217].

Matthew Bender & Co. v. West Publishing Co. (1998), 158 F.3d 674 (2nd Cir.), refd to. [para. 27].

Bishop v. Télé-Métropole Inc., [1990] 2 S.C.R. 467; 111 N.R. 376, refd to. [paras. 28, 188].

Bishop v. Stevens - see Bishop v. Télé-Métropole Inc.

University of London Press Ltd. v. Univer­sity Tutorial Press Ltd., [1916] 2 Ch. 601, refd to. [paras. 30, 211].

Interlego A.G. v. Tyco Industries Inc., [1989] 1 A.C. 217 (P.C.), refd to. [para. 31].

Ladbroke (Football) Ltd. v. William Hill (Football) Ltd., [1964] 1 All E.R. 465 (H.L.), refd to. [paras. 32, 214].

Cramp & Sons Ltd. v. Smythson (Frank) Ltd., [1944] 2 All E.R. 92, refd to. [paras. 32, 214].

MacMillan & Co. v. Cooper (1923), 51 Ind. App. L.R. 109 (P.C.), refd to. [para. 32].

Laglois v. Vincent (1874), 2 Can. Com. R. 164 (Que. S.C.), refd to. [para. 33].

Canadian Admiral Corp. v. Rediffusion Inc. (1954), 20 C.P.R. 75 (Ex. Ct.), refd to. [paras. 33, 211].

Kilvington Brothers Ltd. v. Goldberg (1957), 16 Fox Pat. C. 164 (Ont. H.C.), refd to. [para. 33].

Horn Abbot Ltd. v. Coulter (W.B.) Sales Ltd. (1984), 1 C.I.P.R. 97 (F.C.T.D.), refd to. [para. 33].

Lifestyle Homes Ltd. v. Randall Homes Ltd. (1991), 70 Man.R.(2d) 124; 34 C.P.R.(3d) 505 (C.A.), refd to. [para. 33].

Slumber-Magic Adjustable Bed Co. v. Sleep-King Adjustable Bed Co. (1984), 3 C.P.R.(3d) 81 (B.C.S.C.), refd to. [paras. 34, 214].

U&R Tax Services Ltd. v. H&R Block Canada Ltd. (1995), 97 F.T.R. 259; 62 C.P.R.(3d) 257 (T.D.), refd to. [paras. 35, 215].

Hager v. ECW Press Ltd. (1998), 158 F.T.R. 44; 85 C.P.R.(3d) 289 (T.D.), refd to. [para. 46].

Édutile Inc. v. Automobile Protection Association (2000), 255 N.R. 147; 6 C.P.R.(4th) 211 (F.C.A.), reving (1997), 143 F.T.R. 210; 81 C.P.R.(3d) 338 (T.D.), leave to appeal refused (2001), 267 N.R. 197 (S.C.C.), refd to. [para. 47].

Harper & Row Publishers, Inc. v. Nation Enterprises (1985), 471 U.S. 539 (U.S.S.C.), refd to. [para. 48].

Feist Publications Inc. v. Rural Telephone Service Co. (1991), 499 U.S. 340 (U.S.S.C.), refd to. [paras. 48, 217].

Trade Mark Cases, The (1879), 100 U.S. 82, refd to. [para. 48].

Burrow-Giles Lithographic Co. v. Sarony (1884), 111 U.S. 53, refd to. [para. 48].

Walter v. Lane, [1900] A.C. 539 (H.L.), refd to. [para. 56].

Bleistein v. Donaldson Lithographing Co. (1903), 188 U.S. 239, refd to. [para. 56].

Prism Hospital Software v. Hospital Medi­cal Records Institute (1994), 57 C.P.R.(3d) 129 (B.C.S.C.), refd to. [paras. 69, 211].

Circle Film Enterprises Inc. v. Canadian Broadcasting Corp. (1959), 31 C.P.R. 57 (S.C.C.), refd to. [para. 63].

Canadian Cable Television Association v. Copyright Board (Can.), [1993] 2 F.C. 138; 151 N.R. 59; 46 C.P.R.(3d) 359 (F.C.A.), affing. (1991), 34 C.P.R.(3d) 521 (T.D.), refd to. [paras. 99, 233].

CTV Television Network Ltd. v. Copyright Board (Can.) et al., [1993] 2 F.C. 115; 149 N.R. 363 (F.C.A.), refd to. [paras. 99, 233].

Telstra Corporation Ltd. v. Australasian Performing Rights Association Ltd. (1997), 38 I.P.R. 294; 191 C.L.R. 140 (Aust. H.C.), refd to. [paras. 99, 233].

Vigneux et al. v. Canadian Performing Rights Society Ltd., [1945] 2 D.L.R. 1 (P.C.), reving. [1943] 3 D.L.R. 369 (S.C.C.), dist. [paras. 104, 262].

Muzak Corp. v. Composer, Authors & Publishers Association of Canada Ltd., [1953] 2 S.C.R. 182, dist. [paras. 105, 262].

Falcon v. Famous Players Film Co., [1926] 2 K.B. 474 (C.A.), refd to. [para. 106].

de Tervagne v. Beloeil (Town) (1993), 65 F.T.R. 247; 50 C.P.R.(3d) 419 (T.D.), dist. [para. 107].

C.B.S. Songs Ltd. v. Amstrad Consumer Electronics PLC, [1988] 2 All E.R. 484; 98 N.R. 382, dist. [paras. 108, 260].

Moorhouse v. University of New South Wales, [1976] R.P.C. 151, refd to. [paras. 114, 258]

Television New Zealand v. Newsmonitor Services Ltd. (1993), 27 I.P.R. 441 (N.Z.H.C.), refd to. [para. 128].

Sillitoe et al. v. McGraw-Hill Book Com­pany (U.K.) Ltd., [1983] F.S.R. 545 (Ch. D.), dist. [paras. 131, 279].

De Garis v. Neville Jeffress Pidler Pty Ltd. (1990), 95 A.L.R. 625 (Aust. Fed. Ct. Gen. Div.), dist. [para. 131].

Longman Group Ltd. v. Carrington Tech­nical Institute Board of Governors, [1991] 2 N.Z.L.R. 574, dist. [para. 131].

Hubbard v. Vosper, [1972] 2 Q.B. 84, refd to. [para. 144].

Compagnie Générale des Etablissements Michelin-Michelin & Cie v. National Automobile, Aerospace Transportation and General Workers Union of Canada (C.A.W. - Canada) (1996), 124 F.T.R. 192; 71 C.P.R.(3d) 348 (T.D.), refd to. [para. 144].

Allen v. Toronto Star Newspapers Ltd. (1997), 78 C.P.R.(3d) 115 (Ont. Gen. Div.), refd to. [para. 146].

Pro Sieben Media AG v. Carlton UK Television Ltd., [1999] F.S.R. 610 (C.A.), refd to. [para. 146].

Hyde Park Residence Ltd. v. Yelland, [2000] E.W.J. 514 (C.A.), refd to. [para. 146].

Luther R. Campbell a.k.a. Luke Skywalker v. Acuff-Rose Music Inc. (1994), 114 S. Ct. 1164, refd to. [para. 160].

Benner v. Canada (Secretary of State), [1997] 1 S.C.R. 358; 208 N.R. 81, refd to. [para. 171].

Magder (Paul) Furs Ltd. et al. v. Ontario (Attorney General), [1993] 3 S.C.R. 675; 160 N.R. 161; 67 O.A.C. 81, refd to. [para. 171].

Hy and Zel's Inc. v. Ontario (Attorney General) - see Magder (Paul) Furs Ltd. et al. v. Ontario (Attorney General).

MacKay et al. v. Manitoba, [1989] 2 S.C.R. 357; 99 N.R. 116; 61 Man.R.(2d) 270, refd to. [para. 171].

Schachter v. Canada, [1992] 2 S.C.R. 679; 139 N.R. 1, refd to. [para. 171].

Redwood Music Ltd. v. Chappel & Co. Ltd., [1982] R.P.C. 109 (Eng. Q.B.), refd to. [para. 174].

Matthewson v. Stockdale (1806), 12 Ves. 270 (Ch. D.), refd to. [para. 212].

Deeks v. Wells, [1931] O.R. 818 (H.C.), affd. [1931] 4 D.L.R. 533 (Ont C.A.), affd. [1933] 1 D.L.R. 353 (Ont. P.C.), refd to. [para. 212].

Zamacoïs v. Douville (1943), 3 Fox Pat. Cases 44 (Exch. Ct.), refd to. [para. 212].

Kelly v. Morris (1866), 1 Eq. 697, refd to. [para. 215].

Mor­ris v. Ashbee (1868), 7 Eq. 34, refd to. [para. 215].

Morris v. Wright (1870), 5 Ch. App. 279, refd to. [para. 215].

Telstra Corp. v. Desktop Marketing Sys­tems (2001), 51 I.P.R. 257 (Aust. F.C.), refd to. [para. 215].

Warwick Film Productions Ltd. v. Eisinger et al., [1969] 1 Ch. 508, refd to. [para. 229].

Rank Film Production Ltd. v. Dodds, [1983] 2 I.P.R. 113 (N.S.W.S.C.), refd to. [para. 233].

SOCAN Statement of Royalties (Tariff 22, Internet), Re (1999), 1 C.P.R.(4th) 417 (Copyright Bd.), refd to. [para. 233].

National Corn Growers' Association et al. v. Canadian Import Tribunal, [1990] 2 S.C.R. 1324; 114 N.R. 81, refd to. [para. 249].

RCA Corp. v. Fairfax (John) & Sons Ltd., [1982] R.P.C. 91 (Aust. H.C.), refd to. [para. 258].

C.B.S. Inc. v. Ames Records & Tapes Ltd., [1981] 2 W.L.R. 973 (Ch. D.), refd to. [para. 261].

de Montigny v. Cousineau, [1950] S.C.R. 297, refd to. [para. 276].

Clark, Irwin & Co. v. C. Cole & Co. (1960), 33 C.P.R. 173 (Ont. H.C.), refd to. [para. 278].

Van Dusen v. Kritz, [1936] 2 K.B. 176, refd to. [para. 278].

Statutes Noticed:

Berne Convention for the Protection of Literary and Artistic Works (Paris Revision, 24 July 1971), 161 U.N.T.S. 18338), art. 2 [para. 27].

Copyright Act, R.S.C. 1985, c. C-42, sect. 2 [paras. 137, 196]; sect. 3(1) [para. 190]; sect. 3(1)(f) [paras. 88, 233]; sect. 5(1) [paras. 24, 189]; sect. 27(1) [paras. 87, 232]; sect. 27(4) [para. 270]; sect. 29 [para. 124]; sect. 30.2(1) [para. 135]; sect. 30.3 [para. 168]; sect. 53(2) [para. 62].

NAFTA - see North American Free Trade Agreement.

North American Free Trade Agreement (17 December 1992), Can. T.S. 1004 No. 2, art. 1705 [para. 27]; art. 1721(2) [para. 100]; art. 2006 [para. 248].

Reproduction of Federal Law Order, Order in Council, P.C. 1995-1996, SI 97-5, generally [para. 174].

Authors and Works Noticed:

Boyarski, J.R., The Heist of Feist: Protections for Collections of Informa­tion and the Possible Federalization of "Hot News" (1999), 21 Cardozo Law Review 871, generally [para. 51].

Canada, Hansard, House of Commons Debates (31 March 1993), generally [para. 40].

Canada, Hansard, House of Commons Debates (27 May 1993), generally [para. 40].

Canada, Minutes, Proceedings and Evi­dence of the Legislative Committee on Bill C-115, An Act to Implement NAFTA (5 November 1993), generally [para. 40].

Driedger on the Construction of Statutes (3rd. 1994), pp. 131 [para. 126]; 459 et seq. [para. 249].

Fox, Canadian Law of Copyright and Industrial Designs (3rd Ed. 2000), pp. 38, 39 [para. 22]; 34 to 56 [para. 28]; 44 to 46 [para. 40]; 112 to 114 [para. 56]; 118 [para. 33]; 123, 124 [para. 174]; 138 [para. 42]; 495 [para. 248]; 498 [para. 100].

Fridman, Sale of Goods in Canada (4th Ed. 1995), p. 22 [para. 287].

Ginsburg, J.C., No "Sweat"? Copyright and Other Protection of Works of Informa­tion After Feist v. Rural Telephone (1992), 92 Colum. L. Rev. 338, gen­erally [para. 51].

Gorman, R.A., The Feist case: Reflections on a Pathbreaking Copyright Decision (1992), 18 Rutgers Computer & Tech. L.J. 731, generally [para. 51].

Litman, J., After Feist (1992) 17 U. Day­ton L. Rev. 607, generally [para. 51].

McDonald, J.P., The Search for Certainty (1992) 17 U. Dayton L. Rev. 331, gen­erally [para. 51].

Siebrasse, N., Copyright in Facts and Information: Feist Publications is Not, and Should Not Be, the Law in Canada, (1994) 11 C.I.P.R. 191, generally [para. 51].

Torno, Barry, Fair Dealing: The Need for Conceptual Clarity on the Road to Copy­right Revision, Ottawa: C.C.A.C. (1981), p. 45 [para. 133].

United States, House Report No. 1476 (1976), 94th Cong., 2d Sess. 51, gen­erally [para. 56].

Vaver, D., Copyright Law (2000), pp. 61 to 63 [para. 58]; 145 [para. 95]; 169, 170 [paras. 59, 126]; 171 [para. 126]; 193 [para. 130]; 190 [para. 148]; 191 [paras. 149, 154]; 192 [para. 154]; 193 [para. 130]; 195, 196 [paras. 128, 129]; 201 [para. 135].

VerSteeg, R., Sparks in the Tinderbox: Fiest, "Creativity," and the Legislative History of the 1976 Copyright Act (1995), 56 U. Pitt. L.R. 549, generally [para. 51].

World Intellectual Property Organization, Guide to the Berne Convention for the Protection of Literary and Artistic Works, 1971 (Geneva, W.I.P.O., 1978), generally [para. 41].

Yen, A.C., The Legacy of Feist: Conse­quences of the Weak Connection Between Copyright and the Economics of Public Goods (1991), 52 Ohio St. L.J. 1343, generally [para. 51]; pp. 1345, 1346 [para. 58].

York, E.R., Warren Publishing Inc. v. Microdos Data Corp.: Continuing the Stable Uncertainty in Factual Compila­tions (1999), 74 Notre Dame Law Review 565, generally [para. 58].

Counsel:

Roger T. Hughes, Q.C., Elizabeth Valen­tina, Glen A. Bloom and David Morritt, for the appellants;

Scott Joliffe, A. Kelly Gill, Kevin Sartorio and Navin Katyal, for the respondent.

Solicitors of Record:

Sim, Hughes, Ashton & McKay, Toronto, Ontario, for the appellants;

Gowling, Strathy & Henderson, Toronto, Ontario, for the respondents.

This appeal was heard on October 23, 24 and 25, 2001, before Linden, Rothstein and Sharlow, JJ.A., of the Federal Court of Appeal. The decision of the court was delivered on May 14, 2002, including the following opinions:

Linden, J.A. (Sharlow, J.A., concurring) - see paragraphs 1 to 179;

Rothstein, J.A., concurring reasons - see para­graphs 180 to 303.