The Copyright Pentalogy: How the Supreme Court of Canada Shook Up Fair Dealing

On Friday October 4 2013 , the University of Ottawa hosted the launch event of the new book The Copyright Pentalogy: How the Supreme Court of Canada Shook the Foundations of Canadian Copyright Law. The book, edited by Michael Geist, features chapters written by a number of prominent intellectual property law professors, including IP Osgoode’s Professor Giuseppina D’Agostino and Professor Carys Craig.

The afternoon event was structured into three panel discussions — titled “Copyright Scope and Management,” “Fair Dealing,” and “Technological and Copyright Neutrality” — in which authors featured in the new book provided short presentations summarizing their findings and analysis on some aspect of the Copyright Pentalogy – the series of five copyright decisions released in the summer of 2012 by the Supreme Court of Canada. The panels then proceeded to take questions from the audience.

While all three panels were informative and interesting, with Access Copyright’s recent legal action against York University, fair dealing has resurged as a hot topic in Canada. The “Fair Dealing” panel, led by Michael Geist with Ariel Katz and Samuel E. Trosow, provided insight into how courts will likely treat fair dealing in future and how educational institutions may react to the decision. Before I discuss the panel’s treatment, a background overview of fair dealing in Canadian copyright law may be useful.

 

A Short History of Nearly Everything About Canadian Fair Dealing

The law of fair dealing (sections 29, 29.1, and 29.2 of the Copyright Act) was clarified by the SCC in CCH Canadian v LSUC, [2004] 1 SCR 339, 2004 SCC 13. There the Supreme Court described fair dealing as a user right – “more properly understood as an integral part of the Copyright Act than simply a defence” (2004 SCC 13, para 48). The Court also laid down a non-exhaustive list of six factors that need to be evaluated to determine if a dealing was fair. This evaluation of fairness is part of a two-part test, the first being whether the dealing is for one of the allowable purposes listed in the Act (more on this later).

Questions relating to fair dealing appeared twice at the SCC in the 2012 Pentalogy, in Alberta (Education) v Access Copyright, [2012] 2 SCR 345, 2012 SCC 37 (Access Copyright) and SOCAN v Bell, [2012] 2 SCR 326, 2012 SCC 36 (Bell) IPilogue coverage can be found here and here.

In Access Copyright, the Court found in favour of the Alberta Education Board, saying that classroom copies made by teachers of excerpts from copyright protected material could be considered fair dealing for the allowable purposes of “research or private study”, broadly construed.  The court also determined that a teacher’s purpose for copying could not be separated meaningfully from the purposes of the teacher’s students. The teacher and her employer could therefore benefit as facilitating the fair dealing purpose of the students since it is the end user’s purpose that is relevant on the question of fairness.

In Bell, the SCC determined that providing 30- to 90-second previews of songs for customers via streaming was not an infringement of copyright and so not subject to a SOCAN royalty tariff. The Court stated that these previews could be considered as “research” on whether or not to purchase the whole song and, being fair in relation to that purpose, passed the second part of the CCH Canada test.

Both decisions have caused a number of IP lawyers to modify their previous conception of fair dealing in Canadian law.

 

Fair Use 2.0: The Rebirth of Fair Dealing in Canada: Ariel Katz’s Presentation

Has the shift in fair dealing as a result of the SCC’s decisions in the Copyright Pentalogy been a move into uncharted territory, or are we merely back on the course we were always meant to be on? Katz reiterated this point throughout his presentation. While fair use in the US – the closely related cousin of fair dealing in Canada – provides an illustrative list of purposes by using the words “such as” before them in the U.S. legislation, section 29 of the Canadian Act lacks this wording. Most lawyers therefore believe that the list of activities in Canada is exhaustive rather than illustrative, on the expressio unius est exclusio alterius principle (“the express mention of one thing excludes all others”).

Katz posits that such a reading insufficiently considers the legislative history of fair dealing, once a judge-made principle of equity in UK common law that was later enacted into the Copyright Act 1911 (UK) and carried forward into the Copyright Act 1924 (Can.). Lawyers involved in the drafting process at the time had strangely little to say about whether the enactment was intended to limit the scope of fair dealing in practice as previously understood.  From a policy perspective, did or does it make sense to exclude certain areas of use categorically from this user right? Yet with the addition of the categories of parody and satire by the Copyright Modernization Act 2012,  Canadian law will likely continue its restrictive approach, at apparent odds with the original intent of the 1911 and 1924 legislation.

 

Fairness Found: How Canada Quietly Shifted from Fair Dealing to Fair Use – Michael Geist’s Presentation

Michael Geists’s presentation following Katz’s was aimed at showing that the restrictive approach to fair dealing would not apply in practice in the future since, after the Pentalogy, Canadians are living in a U.S.-style “fair use” world in all but name.

The Supreme Court’s approach of giving a large and liberal interpretations to the categories enumerated in the fair dealing sections of the Canadian Act means that the first part of the fair dealing test – whether the dealing is within the scope of the legislation or not – presents a very low legal hurdle to overcome. Most of the legwork will take place in the second part of the CCH Canada test through a consideration of the six “fairness” factors. The shift has occurred because: (1) the list of enumerated fair dealing purposes has grown with the 2012 amendments to the Copyright Act in 2012, and most activity should fit into one of the categories, broadly defined; (2) the Court in Bell confirmed CCH’s  generous interpretation of the fair dealing purposes, so that most of the “analytical heavy-hitting” should occur when determining whether or not the dealing was fair; and (3) the Court has focused on the end user’s purpose, making it increasingly easier for the Courts to find that third party activities directed to that purpose equally qualified as fair dealings.

On this view, the concept of user rights has clearly expanded and the question arises how creators view this recalibration of the copyright balance.

 

Fair Dealing Practices in the Post-Secondary Eduction Sector after the Pentalogy – Samuel E. Trosow’s Presentation

Trosow’s presentation was direct and to the point: now that the Courts have confirmed fair dealing rights, universities need to stop contracting out of the rights the legal system has granted them. According to Trosow, in 2010 (6 years after the decision in CCH), post-secondary schools were still not factoring fair dealing into their copyright licensing strategies. In 2013, after the Pentalogy, there seem to be few reasons for these institutions to hesitate. Trosow argued that licence agreements with Access Copyright should be terminated at the first available opportunity and that institutions should further develop their copyright practice guidelines to take advantage of their fair dealing rights.

 

Even with the SCC’s recent reinforcement of user rights in Access Copyright and Bell, post-secondary institutions seem wary of cancelling their licensing agreements with Access Copyright. Trosow stated that the main reasons for this behavior were: (1) institutional risk aversion, (2) overreaching by copyright owners and copyright collectives, and (3) general copyright literacy. Institutions need to make an effort to educate themselves and their staff on how to use materials appropriately to stay within their fair dealing rights . Practices should be developed in an open manner and should act as flexible and useful guidelines rather than rigid workplace rules. For Access Copyright licensing to continue, the collective will need to provide greater value to the institutions beyond what fair dealing provides them.

 

Reflections

Although perhaps difficult to implement at a book launch, there seemed little discussion on the possible ramifications of the aggressive expansion of fair dealing as a user right. Even in the question periods that followed each panel, only a few individuals raised arguments on the side of collectives and creators.


The Access Copyright case undoubtedly represented a massive defeat for copyright collectives – organizations that exist to ensure that creators are paid fairly for the use of their works. If courts continue to interpret fair dealing as broadly as they have in recent years, creators may continue to see their piece of the pie shrink ever further. Whether this is or is not a good result, it is necessary for all angles of the problem to be considered if the proper balance in copyright law as described by the Court in Théberge v Galerie d’Art du Petit Champlain Inc, [2002] 2 SCR 336, 2002 SCC 34 is to be maintained.

Copyright collectives meanwhile have cause to be worried with what these Supreme Court decisions mean for their future and the creators they represent.  The foundations of copyright law were not the only thing shaken after the Pentalogy decisions were released in 2012.

Adam Del Gobbo is the Content/Publication Editor of the IPilogue and a JD Candidate at Osgoode Hall Law School.

2 Comments
  1. Hi Adam,
    Thanks for a nice summary of my presentation. If I may, I’d like to make two clarifications.
    One, regarding the point: “Lawyers involved in the drafting process at the time had strangely little to say about whether the enactment was intended to limit the scope of fair dealing in practice as previously understood.” That’t correct, but I also mentioned that this point, in itself, strongly suggests that the 1911 codification was not meant to alter the law and limit the scope of fair dealing. But even more importantly, the few lawyers that did comment on the intended effect of the enactment at the time did not believe that it had any restrictive effect.
    My second comment concerns the point that “with the addition of the categories of parody and satire by the Copyright Modernization Act 2012, Canadian law will likely continue its restrictive approach, at apparent odds with the original intent of the 1911 and 1924 legislation”. I don’t recall making this observation. While it’s quite plausible that with the addition of three additional explicitly-mentioned purposes, and following the Court’s ruling in Bell, courts will never have to face the question of whether the list purposes is exhaustive or not, it is also quite plausible that this expansion will give courts greater confidence to walk the extra mile (or maybe inch) and recognize that there is no point in insisting that the list is exhaustive, when it was not meat to be, and when there are strong policy reasons for holding that it’s not.

  2. Thank you for the clarifications Mr. Katz. With regards to your second comment, my statement was intended to be a personal observation as opposed to a reflection of your conclusion and for that I apologize!

    I agree that the expansion might have this effect on the courts, I only wish the legislation reflected the important policy reasons outlined in your presentation and the approach the SCC has recently taken with respect to fair dealing. Clearer drafting language would promote greater clarity in the marketplace – something that parties on both sides of the fair dealing fence would appreciate.

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