Intervener factum Access Copyright and Copibec, CCH case Supreme Court of Canada

8/2/2019 Intervener factum Access Copyright and Copibec, CCH case Supreme Court of Canada

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BETWEEN:

AND:

Court File No, 29320

IN THE SUPREME COURT OF CANADA(ON APPEAL FROM THE FEDERAL COURT OF APPEAL)

THE LAW SOCIETY OF UPPER CANADAAppellant/Respondent on cross-appeal(Respondent)

CCH CANADIAN LIMITEDRespondent/~ p p e l l a n t on cross-appeal

(Appellant)AND BETWEEN:

AND:

THE LAW SOCIETY OF UPPER CANADAAppellant/Respondent on cross-appeal

(Respom?cnt)

THOMSON CANADA LIMITED c.o.b. asCARSWELL THOMSON PROFESSIONAL PUBLISHINGRespondent/ Appellant on cross-appeal

(Appellant)AND BETWEEN:

AND:

THE LAW SOCIETY OF UPPER CANADAAppellant/Respondent on cross-appeal

(Respondent)

CANADA LAW BOOK INC.Respondent/Appellant on cross-appeal

(Appellant)

FILED

(YI )


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CONTENTS

PART 1- FACTS ...........................................................................................1PART 11- QUESTIONS IN ISSUE ..................................................................................1PART Ill ARGUMENT ................................................................................................... 21- The l:m Society Authorized Infringement b) Providing Free-standing Photocopiers in theGreat L.ibrary .............................. ................................ ............................... ............................... ............................... ... 2

A. The Fcdcml Court of Appeal Decision with rt.!spcct to the meaning of the words "to authorize" isin accordance with previous authoritil.!s on t h < ~ t question.............. . ..................................... ............. 2

i) The meaning of"to authorizt;"........................ ............... . ..................................... ............. 2ii) T h ~ constituent clements of an nuthorization" ........................................................................................ 3::::;. To control the usc of the means to infringe .................... ................................. ................................. .......... 3::::;. To "sanction, approve or countenance'" the infringement .................... ............................... ........................ 4

B. The Federal Court of Appeal Decision with respect to the meaning of he words to authorize" isin accordance with the jurisprudence emanating from countries that have a legal tradition similar toCanada's .................................................................................................................................................................... 7C. The Federal Court of Appeal correctly applied the law respecting the concept of"to authorize" tothe facts of the present case .................................................................................................................................... 10

i) The Law Society controlled the entire environment for infringing .......................................................... 10ii ) The Law Society "sanctioned, approved or countenanced" the use of the free-standingphotocopiers to make illegal reproductions of works protected by copyright .................................................... IIiii) The Law Society did not take reasonable or effective precaution against infringement ofcopyright ............................................................................................................................................................ II

D. Section 30.3 of he Act would not have been enacted in 1997 if the availability of free-standingphotocopiers in a library could in no event give rise to the library's liability for copyright infringement .............. l2


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II The Oblalnlng of Pholocopy Licences from CollccUc Soclclles Conlllulcs an AllerJoalhclolnfrlngementnnd Should be Considered In :on) Anol)sis of lhe f:oir J>eallng J>efen


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PART 1- FACTSI. The Interveners La Societe! quc!bc!coisc de gcstion collective des droits de reproduction("Coplbcc") aud The Canadian Copyright Licensing Agency, fonnerly known as CANCOPY("Access Copyright") have taken cognizance of the factual representations made by the LawSociety of Upper Canada (the "Law Society") as well as of those made by CCH CanadianLimited, Thomson Canada Limited c.o.b. as Carswell Thomson Professional Publishing andCanada Law Book Inc. (the "Publishers"). The Interveners have no personal knowledge of mostof the facts at issue in this case and will rely on the facts as set out in paragraphs 1 through 17 ofthe Federal Court ofAppeal Decision appealed from, and the conclusions reached by the FederalCourt ofAppeal.

CCH Canadian Ltd. v. Law Society of Upper Canada, [2002] 4 F.C. 214 (F.C.A.)(hereinafter the "Federal Court of Appeal Decision")PART I I - QUESTIONS IN ISSUE

2. Copibec and Access Copyright do not intend to address all the questions raised by theLaw Society in its factum. Their intervention addresses solely the third question (authorization)and the fifth question (fair dealing).3. With regard to the third question, Copibec's and Access Copyright's position is that theFederal Court of Appeal did not err in concluding that the Law Society had "authorized" thereproduction of copyright materials by providing free-standing photocopiers in the Great Library.4. With regard to the fifth question, Copibec and Access Copyright submit that the FederalCourt of Appeal's analysis of fair dealing correctly considered whether alternatives toinfringement were available. Copibec and Access Copyright further submit that the obtaining ofphotocopy licences constitutes an alternative to infringement, and therefore should be consideredin any analysis of the defence of"fair dealing".

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PART Ill- ARGUMENTThe Law Society Authorized Infringement by Providing Free-standingPhotc.copiers in the Great Library

5. Subsection 27(1) of the Copyright Act (the "Act") provides that "[i]t is an infringement of

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copyright for any person to do, without the consent of the owner of the copyright, anything that Iby this Act only the owner of the copyright has the right to do". The exclusive rights of thecopyright owner are enumerated at subsection 3(I) of the Act and include the sole right "to Iproduce or reproduce" a work or any substantial part thereof. They also include the sole right "toauthorize" any of the acts which are reserved to the copyright owner. The right to authorize acts Iwhich are reserved to the copyright owner is distinct from the right to perform these acts.

o Copyright Act, R.S.C. 1985, c. C-42, s. 3(1) and 27(1) John S. McKEOWN, Fox Canadian Law of Copyright and Industrial Designs, 3' ' ed.(Toronto: Carswell, 2000) at 5096. In the present case, the Federal Court of Appeal found that the Law Society, by providingfree-standing photocopiers in the Great Library, infringed the Publishers' exclusive right toauthorize reproductions of their works (Federal Court of Appeal Decision at para. 113, perLinden J.A. and at para. 266, per Rothstein J A.).7. Copibec and Access Copyright submit that the Federal Court ofAppeal's interpretation ofthe words "to authorize" in subsection 3( I) of the Act is correct.A. The Federal Court of Appeal Decision with respect to the meaning of the words "toauthorize" is in accordance with previous authorities on that questioni) The meaning of "to authorize"8. The jurisprudence is to the effect that the expression "to authorize" at subsection 3(1) ofthe Act has the ordinary meaning of "to sanction, approve or countenance".

Amstrad Consumer Electronics PLC v. British Phonographic Industry Limited, [1986] F.S.R.159 at 207 (C.A.)0 Ash v. Hutchinson & Co. (Publishers), Ltd. (1936]2 All E.R. 1496 at 1500 (C.A.) Muzak Corp. v. CAPAC, (1953]2 S.C.R. 182 at 193 (hereinafter"Musak")

9. In Muzak, supra, it was decided that in order to "authorize" within the meaning of theAct, a person must "sanction, approve or countenance" more than the mere use of a device that

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3might p o s ~ i b l y be u:;cd to infringe copyright. To conclude othcrwbc would be "as if a personwho lets a gun to a n o l h ~ r is to be charged with "authorizing" hunting without a game licence".This Honourable Court thereby recognized that the person who authorizes the use of a device ispresumed to authorize only those uses which arc legal.

Mu:ak, .mpra at 189 (per Rand J.) P.O. HITCHCOCK, "Home Copying and Authorization" (1983), 67 C.P.R. (2d) 17 at 2931 JohnS. McKEOWN, supra at 511

I0. On the other hand, a person need not go so far as to grant or purport to grant the right toperform the reserved act. All that is required is that the "alleged authorizer" "sanction, approveor countenance" the actual performance of the reserved act.

Muzak, supra at 193 (per Kellock J.) P.D. HITCHCOCK, supra at 3031 John S. McKEOWN, supra at 511

ii) The constituent elements of an "authorization"=:> To control the use of he means to infringe

I I. The Privy Council's decision in Vigneux v. Canadian Performing Right Society Ltd. hasbeen cited by this Court as the authority for the proposition that a certain degree of control overthe use of the potentially infringing device is required in order for a court to conclude that therehas been an "authorization" within the meaning of subsection 3(1) of the Act. In Vigneux, thePrivy Council refused to find the owners of a gramophone leased to a restaurant keeper liable forhaving illegally authorized the public performance of a work, since "[t]hey had no control overthe use of the machine; they had no voice as to whether at any particular time it was to beavailable to the restaurant customers or not".

Vigneux v. Canadian Performing Right Society Ltd, [1945] 2 D.L.R. 1 at I I (P.C.)(hereinafter ..Vigneux") Muzak, supra at 190-191 (per Kellock J.) John S. McKEOWN, Fox Canadian Law of Copyright and Industrial Designs, 3, . ed.(Toronto: Carswell, 2000) at 5tl

12. The requirement that there be control over the use of a device that could be used toinfringe is consistent with the notion that "[a] person cannot be said to authorize an infringementof copyright unless he bas some power to prevent it".

Amstrad Consumer Electronics PLC v. British Phonographic Industry Limited, sup;a at 217

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"sanctioned, approved or coumenanccd" the performance of an act that subsection 3( I) reservesto the copyright owner.

Apple Computer Inc. v. Macklmosh Computer.r Ltd . [ 1988] I F.C. 673 at 697 (F.C.A.), afl'd[1990] 2 R.C.S. 209 Moorhou.re, supra at 158 (per Gibbs J.) and 165 (per Jacobs J.) Performing Right Society Ltd v. Ciryl Theatrical Syndicate Ltd. (1924), I K.B. I at 9 (C.A.) Sunny HANDA, Copyright Law In Canada (Toronro: Butterworths, 2002) at 209 P.D. HITCHCOCK, supra at 35-36

18. Moreover. ' knowledge of the performance of a specific act of infringement is notnecessary for f.udmg "authorization". Indeed, "[w]here a general permission or invitation may beimplied, it is clearly unnecessary that the authorizing party have knowledge that a particular actcomprised in the copyright will be done". [Fmphasis added] Therefore, where that generalpermission or invitation to infringe may be implied from the alleged authorizer's behaviour, thegeneral presumption that a person who authorizes an activity does so only for legal activitiesmay be rebutted.

Moorhouse, supra at 165 (per Jacobs J.) P.D. HITCHCOCK, supra P.t 32, 35-36

19. One of the factors the courts take into account in determining if a person has "authorized"copyright infringement is whether or not that person is interested in the operation of theinfringing device. Thus, the Supreme Court of Victoria in Winstone distinguished the Vigneuxcase on the ground that the owner of a gramophone used in the unauthorized public performanceof musical works was to receive a share of the profits rather than a fixed weekly rental like inVigneux. It follows that where the alleged authorizer had an interest in the operation of theinfringing device, a court will more easily come to the conclusion that the alleged authorizer has"sanctioned, approved or countenanced" the infringement.

Wins/one, supra at 353w354 Vigneux, supra at 12 Muzak, supra at 189 (per Rand J.)

20. Another relevant factor in the determination of whether or not the alleged authorizer has"sanctioned, approved or countenanced" the infringement is whether that person knew or hadreason to suspect that infringement was likely to occur. This may be inferred when the allegedauthorizer has provided both the instrument to infringe and the work protected by copyright.Hence, a library, which makes available to the public both the copyright material and the

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photocopier with which copies of that material can be made, will be presumed to have knownthat it was likely that the users of the library might usc the photocopiers to reproduce substantialpans ofmaterial prote,tcd by copyright, contrary to copyright law.

Moorhouse, .wpra at 159 (per Gibbs J.)21. Once it is established that the alleged authorizer knew or should have known that themeans by which an infringement of copyright may be committed were likely to be used for thatpurpose, the alleged authorizer's indifference to this possibility might lead to an inference thatthe infringing act has been authorized.

Moorhouse, supra at 165 (per Jacobs J.) Performing Right Society Ltd. v. Ciry/ Theatrical Syndicate Ltd., supra at 9

22. If indifference is a relevant factor in the determination of whether or not an"authorization" has been granted, it follows that the alleged authorizer has the duty, in order toe s c ~ . p e liability, to attempt to limit the use of the devices under its control to non-infringingactivities. An omission to take "reasonable or effective precautions against an infringement ofcopyright" is a relevant factor in the determination of the "authorization".

M e . ' ' ~ r . supra at 50 I Moorhouse, supra at 161-162 (per Gibbs J.)

23. No jurisprudential examples of what constitutes a "reasonable or effective precautionagainst an infringement of copyright" are yet available. However, the Moorhouse case containsexamples of measures which were judged not to be reasonable or effective. In that case,involving similar facts to those of the present case, the Coun concluded that the various"measures" taken by the library, including the posting of notices referring to the Copyright Act1968, were insufficient. According to the Coun, the reference to a piece of legislation that isdifficult to understand for the layman rendered the notice useless in practice. The Coun alsonoted that there was no evidence that the library's "copyright policy" had ever been activelyenforced.

Moorhouse, supra at 160-161 (per Gibbs J.)24. It follows from Moorhouse that a person who "sanctions, approves or countenances" theuse by another of a device under the first person's control must qualifY the invitation to use asone limited to activities that do not violate copyright law. This qualification must be precise,

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efficient and aimed at a reasonable person (and not only at jurists capable of interpretingcopyright law). Moreover, the policy must be enforced in order to be considered sufficient25. The relevant factors to be taken into consideration in determining whether or not a personhas "authorized" acts of copyright infringement arc described by Gibbs J. in Moorhouse:

A person who had under its control the means by which an infringement of copyright may becommitted ... and who makes it available to other persons, knowing. or having reasons tosuspect, that it is likely tc be used for the purpose of committing an infringement, and omittingto take reasonable steos to limit its use to legitimate purposes, would authorize any infringementthat resulted from its use. [Emphasis added]o Moorhouse, supra at 158-159 (per Gibbs J.)

26. It is submitted t h ~ . t the Federal Court of Appeal, in its determination of whether the LawSociety conducted itself in a manner from which an "authorization" may be inferred, correctlyapplied all the relevant factors and legal precedents on this question. The Federal Court ofAppeal took into account namely: that the Law Society provided both the photocopier allowingfor copyright infringement and the works protected by copyright; that it had sufficient reason tosuspect that the photocopiers would be used to infringe copyright but was indifferent to thispossibility; and that the Law Society omitted to take "reasonable or effective precaution againstan infringement of copyright".

o Federal Court of Appeal Decision paras. 109-111 (per Linden J.A.) and 258, 261, 265-266(per Rothstein J.A.)B. The Federal Court of Appeal Decision with respect to the meaning of the words "toauthorize" is in accordance with the jurisprudence emanating from countries thathave a legal tradition similar to Canada's27. The Law Society argues that the Federal Court of Appeal erred in applying Australianlaw to the facts before i t In particular, the Law Society contends that the ruling in Moorhouse,supra, is inconsistent with Canadian law (Appellant's factum, paras. 92 and 96). Copibec andAccess Copyright submit that these arguments should be rejected. Canadian courts are allowedto consider foreign sources in interpreting Canadian statutes, "either to see how the sameinterpretative problem was resolved in other jurisdictions or to use it to directly justifY themeaning adopted by an analogy or a contrario argument".

e P.-A. COTE, The Interpretation ofLegislation in Canada, 3' ' ed. (Toronto: Carswell, 2002)at 552

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28. Like in Canadian copyright law, the " a u t h o r i ~ ; u i o n ' ' of any act comprised in the copyrightis reserved to the copyright owner in both U.K. and Australian copyright law. The U.K.Copyright. Designs and Patents Act 1988 provides at subsection 16(2) that copyright in a work isinfringed "bv a person who without the licence of the copyright owner does, or authoriz.esanother to do, any of the acts restricted by the copyright". Similarly, the Australian CopyrightAct /968 provides at subsection 36(1) that the copyright in a work is infringed by a person who,without the authorization of the owner of the copyright "does in Australia, or authorizes thedoing in Australia of, any act comprised in the copyright".

U.K. Copyright, Designs and Patents Act /988 (c. 48), s.I6(2) Australian Copyright Act/968 (Cth), s. 36(1)

29. The Law Society submits that "Australian courts interpret "authorization" more broadly[than Canadian and U.K courts]". It refers to the decision of this Court in Muzak, supra, to theeffect that "a provider of equipment that can be used lawfully does not purport to "authorize" anunlawful use of the equipment" (Appellant's factum, para. 91, reference omitted). The LawSociety also argues that the following statement of Australian law was rejected by the House ofLords in C.B.S. Songs, supra at 493 as being "stated much too widely":

A person may be said to authorize another to commit an .afringement if the one has some fonnof control over the other at the time of infringement or, if he has no such control, is responsiblefor placing in the other's hands materials which, by their nature, are almost inevitably to be usedfor the purpose of an infringement.

Appellant's factum, para. 92, citing RCA Corp. v. John Fairfox, Sons Ltd., (1982] R.P.C. 91at 100 (S.C.N.S.W.)30. However, the decision under appeal does not imply that the aforesaid definition of "toauthorize" should be applied in Canada. Rather, the Federal Court of Appeal acknowledged thatboth Vigneux and Muzak held that merely supplying the means to infringe will not constitute an"authorization" (Federal Court of Appeal Decision, paras. 104-108, per Linden J.A. and paras.262-264, per Rothstein J.A.). The Federal Court of Appeal, considered the leading Canadiancases on the question of "authorization" and correctly distinguished them on the facts (FederalCourt of Appeal Decision, para. I 09, per Linden J.A., and paras. 264-265, per Rothstein J.A.).Moreover, as noted by the Respondents, the House of Lords in C.B.S. Songs, supra, "rejectedonly the latter of the two alternatives as being too widely stated" (Respondents' factum, para.56). In that case, the Honse ofLords refused to conclude that Amstrad, by merely selling double-

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9tape recorders, had "authori7.cd" the making of illegal copies of records. II found that Amstradhad no conlrol over the usc made of the recorders once sold, thus reiterating that the element ofcontrol over the use of the infringing device is determinative.

C. B.S. Songs, supra at 493-49431. In any event, the ruling in Moorhouse is nut inconsistent with this Court's decision inMuzak, contrary to the Law Society's contentions. In Muzak, the Court did not exclude thepossibility that a person, by his conduct, could lose the benefit of the legal presumption that heonly authorizes legal activities:

There is not a syllable in the material to suggest that Muzak has made itself a party in interest tothe performance either by warranting the right to perform without fee or by anything in tilenature of a partnership or similar business relation.

Muzak, supra at 189 (per Rand J.)32. It is submitted, as was suggeted by P D. Hitchcock in its analysis of the Muzak case, thatthe judges in Muzak did not limit the type of conduct or relationships that could be consideredsufficient to rebut the presumption of a "legal-use-only" authorization to the existence of a"partnership or similar business relation". The requirement of control over the use of theinfringing instrument not being present in the case before them, the judges in Muzak did not haveto expand on the issue of what type of behaviour on the part of the alleged authorizer should orshould not amount to a finding of "authorization".

P.D. HITCHCOCK, supra at 34-35 John S. McKEOWN, Fox - Canadian Law of Copyright and Industrial Designs, 3"' ed.(Toronto: Carswell, 2000) at 511

33. In Moorhouse, the High Court ofAustralia identified a type of conduct which should leada court to rebut the general presumption of a "legal-use-only" authorization. In that case, theCourt noted the installation of free-standing photocopiers in a library full of material protectedby copyright, the library's apparent indifference to the commission of copyright infringementdespite the ample reasons to suspect that the photocopiers would be used for illegal purposes,and the library's omission to take reasonable precaution to limit the use of the photocopiers tolegitimate purposes. In assessing whether the general presumption of a "legal-use-only"authorization should be rebutted in the present case, the Federal Court ofAppeal correctly foundguidance in the reasoning of the Australian court, which was faced with very similar facts.

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34. It should afro be nolcd lhar 13rirish aulhors have expressed lhc opinilln !hal "( .. ) UKclluns would reach a similar concf usion 10 rhal in Moorhouse".

o Sir Hugh LADDIE el al .. The Modem Law of Copyright and De.rlgn.l, 3'' ed. (London:Bunerworths, 2000) al I59235. II is therefore submitted that the criteria set out in Moorhouse are not inconsistent withCanadian law respecting "authorization". Consequently, the Federal Coun of Appeal did not errin considering Moorhouse and in coming to the conclusion that the Law Society had"authorized" the infringement of the Publisher's copyright.C. The Federal Court of Appeal correctly applied the law respecting the concept of "toauthorize" to the facts of the present casei) The Law Society controlled the entire environment for infringing36. It is not disputed that the Law Society installed free-standing photocopiers in the GreatLibrary and that patrons of the Library had unrestricted access to those machines to make copiesof the works contained in the Library, including the Publishers' material. Without the LawSociety's intervention, patrons of the Great Library would have had no means of making illegalreproductions ofworks contained in the Library.

Respondents' factum, para. I 6 Federal Court of Appeal Decision, para. 104 (per. Linden J.A.) and paras. 256-257 (perRothstein J.A.)

37. The Law Society controlled the photocopiers and the works susceptible of beingreproduced. Moreover, contrary to the supplier of the gramophone in Vigneux, supra, the LawSociety did more than merely provide the means with which to carry out the copyrightinfringement: it had control over the use of the machines; it had "a voice as to whether at anypanicular time [they were] to be available to the [patrons) or not".

Federal Court of Appeal Decision, para. 109 (per Linden J.A.) and para. 265 (per RothsteinJ.A.) Vigneux, supra at I I (a contrario)

38. Therefore, the Law Society controlled the entire environment in which infringement wassusceptible of taking place.

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ii) :rll..1aw Society " ~ a n c t i o n c d , approved or c o u n t c ; . u a n c ~ d " the u s ~ of the frees(andin&photocopier:; to make i l l c ~ . : a l reproductions of works protected hy copyrh,tht39. The Law Society, by making available, in an environment that it controlled, both themeans to infringe and the copyright protected works that patrons could be tempted to infringe,implicitly invited patrons to commit acts ofcopyright infringement:

To use a variation of the analogy of Rand. J. in Muzak, supra, it is as if the Law Society operatesa game park, and provides each of its invited guests with a loaded gun.o Federal Court of Appeal Decision, para. 109 (per Linden J.A.)

40. It is clear that the Law Society knew or had reason to suspect that infringement was likelyto occur. In fact, as noted by Linden J.A., there is evidence that the Law Society anticipated suchinfringing activities, since it posted notices, near the photocopiers, advising users that "certaincopying may be an infringement of copyright law".

o Federal Court of Appeal Decision, para. I ll (per Linden J.A.)41. The Law Society showed indifference to the possibility of copyright infringement.Indeed, rather than attempting to prevent infringements of copyright that it knew were likely tooccur, the Law Society merely posted, near the photocopiers, a notice indicating that it was notresponsible for such infringements. This indifference is so obvious that it amounts to a "sanction,approval or countenance" of such infringements.

Federal Court of Appeal Decision, para. 113 (per Linden J.A.) and para. 266 (per RothsteinJ.A.)42. It is further submitted that the Law Society was not only indifferent to the infringement,but that it had a monetary interest in the operation of the photocopiers. Indeed, part of the LawSociety's mission is to "provid[e] the community with access to its extraordinary collection oflegal resources" (Federal Court of Appeal Decision, para. I 62, per Linden J.A.). In order tofulfill this objective, the Law Society must ensure that a sufficient number of copies of theselegal resources are made available. By installing free-standing photocopiers in the Great Library,the Law Society avoids having to purchase multiple copies of the commercially available books.iii) The Law Society did not take reasonable or effective precaution against infringement ofcopyright43. The Law Society argues that the posting of a notice near the photocopiers was sufficientto warn its patrons that "the Law Society cannot legitimize illegitimate copying" (Appellant's

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factum, para. I 00). However, the wami11g cannot be considered a "reasonable or effectiveprecaution against an infringement of copyright". The waming was not precise, efficient andaimed at the average library user: it merely referred to the fact that copyright law governs themaking of photocopies, without any explanation of the content of the Act. The notice alsomentioned that "certain copying may be an infringement of copyright law", but it did not warnpatrons that they were forbidden to use the photocopiers for infringing purposes. Moreover, theLaw Society did not provide an example of what copyright infringement is, or is not, nor did itdirect patrons to a competent person who could assess whether or not copyright would beinfringed in a specific instance.44. As was recognized in Moorhouse, mere reference to a statute whose meaning is obscureto the average person "would not be an effective way of conveying to the users of the libraryadvice as to how they should act to obey the law of copyright". In fact, the wording of the noticeinstalled by the Law Society in the Great Library is even more obscure than the notice containedin the guide distributed to the patrons of the library in Moorhouse which was found to beinsufficient.

Federal Court of Appeal Decision, para. 4 Moorhouse, supra at 160 (per Gibbs J.)45. Moreover, the evidence is to the effect that the Law Society took no measures to enforceits notices. It cannot be said that the measure was efficient.

Federal Court ofAppeal Decision, para. 110 (per Linden J.A.)46. Therefore, the Federal Court of Appeal was correct in concluding that the "effort" takenby the Law Society to exercise its control or influence over the use of the photocopiers wasinsufficient to set aside a finding of "authorization".

Federal Court of Appeal Decision, para. II 0 (per Linden J .A.) and para. 266 (per RothsteinJ.A.)D. Section 30.3 of the Act would not have been enacted in 1997 if the availability offree-standing photocopiers in a library could in no event give rise to the library's

liability for copyright infringement47. The Copyright Act was amended in 1997 to introduce new provisions relating tophotocopiers installed in educational institutions, libraries, archives and museums. Theseprovisions provide for an exception to copyright infringement in certain circumstances:


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13JO.J (I ) An cduc:ational in!)lilulion or a Jil;rary. ardtive or mu!>cUm docs nor infringe copyrightwhere(a) a copy of a work is made U>inB a machine for the making. by rcprographic reproduclion, ofcopies of wurk& in princed fonn;(b) the machine is inSiallcd by or with the approval of1he educational inSiitution,library, archiveor museum on its premises for use by students, insrructors or staff at the educational inslitutionor by persons using the library, archive or museum; and(c) there is affixed h1 the prescribed manner and location a notice warning of infringement ofcopyright.(2) Subsection (I ) only applies if, in respect of a reprographic reproduction,(a) the educational institution, library, archive or museum has entered into an agreement with acollective society that is authorized by copyright owners to grant licences on their behalf;(h) the Board has, in accordance with section 70.2, fixed the royalties and related terms andcondition:; in respect of a licence;(c) a tariff has been approved in accordance with section 70.15; or(d) a collective society has filed a proposed tariff in accordance with section 70.13.[Emphasis added]

Copyright Act, subsections 30.3(1) and 30.3(2)Copibec and Access Copyright submit that the adoption of the aforesaid provision

indicates that the availability of photocopiers in a library can give rise to the library's liability forcopyright infringement by virtue of the notion of"authorization", and that the posting of a noticeis not sufficient to avoid liability. Indeed, it is trite law that the legislature "does not speak invain":

It is presumed that the legislature avoids superfluous or meaningless words, that it does notpointlessly repeat itself or speak in vain. Every word in a statute is presumed to make sense andto have a specific role to play in advancing the legislative purpose. Ruth SULLIVAN, Driedger on the Construction ofStatutes, 3'' ed. (Toronto: Butterworths,1994) at 159

49. The enactment of section 30.3 under the general heading of "Exceptions" is presumed tomean something and to serve a pwpose. If the presence of free-standing photocopiers in a librarycould not give rise to the library's liability for copyright infringement, section 30.3 would beuseless.

50. It is submitted that, absent section 30.3 of the Act, the installation of free-standingphotocopiers in a library for use by its patrons will give rise to the library's liability for copyrightinfringement.


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JJ.. Jhe Obtfiplpg of Pbotocou Ligase from Collesttye SocietigCopttltutg ap Altematiye to lgfrip2emept d Should be Copaldered Iaapy ApaiY'is of the Fair Dgi!Dg Defeaee

5I. Among the statutory defences to copyright infringement is "fair dealing'' for the purposesof research or private study, criticism or review, or news reporting. These defences are found atsections 29to 29.2 of the Act.

Copyright Act, ss. 29,29.1 and 29252. In considering the application of section 29 (fair dealing for the purpose of research orprivate study) to the Law Society's activities related to its custom photocopying service, theFederal Court of Appeal correctly acknowledged that the availability of alternatives to the"dealing" is a relevant factor in the determination of the "fairness" of such dealing (FederalCourt of Appeal Decision, at para. 156-157, per Linden J.A.). However, the Federal Court ofAppeal did not discuss whether the obtaining of a licence is a relevant alternative to that dealing.53. Copihec and Access Copyright submit that the Federal Court of Appeal was correct inholding that the availability of alternatives to copyright infringement was relevant to the questionof fairness of the dealing. Copihec and Access Copyright further submit that the obtaining oflicences from collective societies constitotes a valid alternative to infringement and should heconsidered in the determination of the fairness ofa particular dealing.54. The availability of copyright licences is interpreted against the alleged infringer in theU.S., where the "fair use" doctrine is generally interpreted in favour of the users of copyrightmaterial. Copibc


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Noh\ i l h ~ H m d i n g Ill\! prm isions of scc1ion') 106 < . ~ n d I06A. lhc fur U)( of a cop}riglncd work.Including such u ~ c k>y rL'production in copies or phonorccords or by any other means specifiedb)' thai section, 10r purposc5 such as criticism, comment. news reporting, leaching (includingmuhiplc copies for classroom usc), scholarship, or research. is not an infringement of copyrigtu.In determining whether the usc made of a work in any particular case i'i a f.air usc the factors cobe considered shall include-{ 1) ahe purpose and character of Ihe usc, including whether such usc is of a commercial nature oris for nonprofit educational purposes;(2) the nmurc of the copyriglued work;(3) the amount and substanriality of the portion used in relation to the copyrighted work as awhole: and(4) the effect of the use upon the potential market for or value of the copvrightcd \\ork. The factthat a work is unpublished shall not itself bar a finding of fnir usc if such finding is made uponconsideration of all the above factors. [Emphasis added]

U.S. Coppiglu Act, 17 U.S.C. 10756. Section 107 of t h ~ U.S. Copyrighl Acl codified the prior judicial doctrine of fair usewithout narrowing its scope in any way. The jurisprudence developed under this section, as wellas that developed before its enactment, is therefore relevant to the analysis of the broadlyencompassing fair u s ~ " doctrine.

M. NIMMER and D. NIMMER, Nimmer on Copyright (San Francisco: Matthew Bender,2003) at 13-149 and 13-150ii) U.S. doctrinal and jurisprudential authorities are to the effect that the availability of alicence should be considered in an analvsis of the fair use defence57. As seen above. one of the factors in the determination in the U.S. of whether the uscmade of a work is a fair usc is ''the effect of the use upon the potential market for or value of thecopyrighted work". Therefore, the greater the effect a specific use has upon the potential marketfor a work protected by copyright, the less "fair" the use will be, according to U.S. courts. TheSupreme Court of the United States in Harper & Row Publishers, Inc. v. Nation Enterprises hasdefined the applicable test for the determination of"fairness '' with respect to that factor:

More important, to negate fair use, one need only show that if the challenged use "shouldbecome widespread, it would adversely affect the potential market for the copyrighted work,.. Harper & Row Publishers, Inc. v. Nation E/1/erprises, 225 U.S.P.Q. 1073 at 1084 (S. Ct.1985) See also Ringgold v. Black E/1/ertainment Television l11c., 44 U.S.P.Q. 2d (BNA) 1001 at

1010(2dCir.l997) See also M. NIMMER and D. NIMMER, Nimmer on Copyright (San Francisco: MatthewBender, 2003) at 13-183 and cases cited therein

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58. It has b ~ c n r c c o g n i z ~ d in v:1rious Amcrkan c a s ~ s d ~ a l i n g with fair usc in the context ofreproductions of works using photocopiers that not only c o n v ~ n t i o n a l markets should beconsidered in determining if the a l l ~ g c d l y infringing activity would affect the potential marketfor the copyrighted work: "traditional. reasonable. or likely to be developed markets" are also tobe considered. Therefore, a court must not only consider the potential loss of sales of the workitself, but also the potential loss of licensing revenues.

o American Geoph)'Sical Union v. Texaco Inc., 35 U.S.P.Q. 2d (BNA) 1513 al 1526-t528 (2dCir. 1994 ). cerl. denied, 116 S. Ct. 592 {1995) (hereinafter" Texaco")o Basic Books. Inc. v. Kinko 's Graphics Corp., 758 F. Supp. 1522 at 1534 (S.D.N.Y. 1991)o Princeto/1 Unil. f're.u v. Uichiga11 Doc. Sens., 40 U.S.P.Q. 2d (BNA) 164 I at 1646 (61h Cir.1996). cat. deni!!d, 117 S. Ct. 1336 (1997)._(hcreinnHer''Princeton umlersi('Press")

59. It tollo1vs that even umkr the much broader U.S. "fair usc" doctrine, ''the existence of anestablished license fcc system is highly relevant" to the inquiry as to whether a defendant's useof a copyright protected work is "fair".

Texaco, supru at 1528 Princeton Unilersity Press. supra at 1646, footnote 4

60. Underlying this idea of an "established license fee system" is a principle consistent withthe fourth factor identified by the Federal Court of Appeal in the present case, and discussedbelow, namely the availability of "alternatives to the dealing":

[l]t is sensible that a particular unauthorised usc should be considered ''more fair" when there isno ready market or means to pay for the use, while such an unauthorized ' . ! ~ C :;hould beconsidered ''less fair'' when there is a ready market or means to pay for the use.

Texaco, supra at 152861. Following this logic, the U.S. Court of Appeal for the Second Circuit in Texaco expresslyconsidered the existence of collective societies similar to Copibec and Access Copyright as arelevant factor against a finding of"fair use":

Though the publishers still have not established a conventional market for the direct sale anddistribution of individual articles, they have created, primarily through the CCC [CopyrightClearance Center], a workable market (or institutional users to obtain licenses for the right toproduce their own copies of individual articles via photocopying.[ ... ](S]incc there currently exists a viable market for licensing these rights for individual journalarticles, it is appropriate that potential licensing revenues for photocopying be considered in afair use analysis.

Texaco, supra at 1527-1528

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62. It follows that the e.xistenec of collective societies offering licences by virtue of whichusers may P"Y for the r


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reproduce works protected by copyright. courts should acknowledge that the reproduction ofsuch works. ubsent 01 licence. will generally affect the potenti;tl market for tlwse works, and takethis factor into account in any analysis of whether a dealing is '"fair".68. Institutional users may currently obtain pl10tocopy licences in Canada. In fact, AccessCopyright has on several occasions offered licenses to the Law Society, thus providing it with areadily available alternative to copyright infringement (Respondents' factum, paras. 3, p. 9,under Factor #4).69. The Law Society argues that the availability of a licence should not be considered in thedetermination of the fairness of the dealing. since [a] copyright owner cannot unilaterallydetermine whether certain activities will no longer be considered fair simply by offering alicence for that activity' ' (Appellant's factum. para. 116. under Factor #4). However, the LawSociety's argument cannot stand if the availability of a licence is accepted as only one of manyfactors to be considered in the determination of "fairness. Moreover, in the determination ofwhether the dealing will have an effect on the "market'' for the work, only "traditional,reasonable or likely to be developed markets" are considered. Whether a market is "traditional,reasonable or likely to be developed'' is not a decision that is solely in the copyright owner'sdiscretion.

70. In sum. the existence of collective societies offering photocopy licences is relevantbecause these collective societies I) provide a readily available alternative to the dealing (fourthfactor identified by the Federal Court of Appeal), and 2) have contributed to the creation of aviable market for licensing the right to reproduce literary works, a market which is susceptible ofbeing significantly affected by the dealing with the work (sixth factor identified by the FederalCourt of Appeal). Copibec and Access Copyright submit that this Court should make it clear thatthe availability of licences from collective societies should be considered in any analysis ofwhether a dealing is "fair".

PART IV- CONCLUSION AND ORDER SOUGHT71. Regardless of the outcome of the present appeal and cross-appeal, Copibec and AccessCopyright respectfully submit that this Honourable Court should declare that:

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a) the Federal Court of Appcnl's intcrprclntion of the words to authorize" insubsccti.m 3( I) of the Act. in the context of free-standing photocopiers in a libraryenvironment. is correct;

b) the availability of "alternatives to the dealing" is a relevant factor in thedetermination of the "fairness" of a dealing:

c) the obtaining of photocopy licences offered by collective societies constitutes analternative to infringement, and therefore should be considered in any analysis ofwhether a dealing is "fair.

Copibcc and Access Copyright respectfully request an order granting them leave topresent oral argument in this appeal.

ALL OF WHICH IS RESPECTFULLY SUBMITTEDDated at Montreal, this 8'" day of September. 2003

CLAUDE BRUNET

OGJLVY RENAULT S.E.N.C.1981 McGill College AvenueSuite 1100Montreal, Quebec H3A 3CJTelephone: (514) 847-4747Fax: (514) 286-5474CLAUDE BRUNETBENOiT CLERMONTMADELEINE LAMOTHE-SAMSONSolicitors for the Interveners La Societe guebecoise de gestioncollective des droits de reproduction


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I'ART V - AUTIIORITU.:Snw numhers refer to rite paragraphs ofthe f i ~ < t w / 1 . LEGISLATIONCopyright Act, R.S.C. 1985, c. C-42 .................................. . 5. 7-9, II, 16, 17,47-52,63,71Australian Copyright Act 1968 (Cth) ........................................................................... 23, 28U.K. Cop)'l'iglus, Designs and Patents Act 1988 (c. 48) .................................................. 28U.S. Cop)'l'ight Act, 17 U.S.C. I07 ..................................................................... 55. 56,63JURISPRUDENCEAmerican Geophysical L'nion v. Texaco Inc., 35 U.S.P.Q. (BNA)1513 (2d Cir. 1994), cert. denied. 116 S. Ct. 592 (1995) ........................................... 58-61Amstrad Consumer Electronhs PLC v. British Phonographic JmlusflyLimited, [1986] F.S.R. !59 (C.A.) ...........................................................................&, 12, 13Apple Complller Inc. v. Mackimosh Computers Ltd., (1988] I F.C. 673(F.C.A.), aff'd [1990]2 R.C.S. 209 ................................................................................... 17Ash v. Hutchinson & Co. (Publishers) Ltd.. [1936] 2 All E.R. 1496(C.A.) ................................................................................................................................... 8Basic Books. Inc. v. Kinko 's Graphics Cotp., 758 F. Supp. 1522(S.D.N.Y. 1991) ........... ........... ........... ........... ........... ........... ........... ........... ........... ........... ... 58C.B.S. Songs Ltd. v. Amstrad Consumer Electronics PLC, [1988] AllE.R. 484 (H.L.) ...................................................................................................... 13, 29, 30CCH Canadian Ltd. v. La\1' Society ofUpper Canada, [2002]4 F.C. 214(F.C.A.) ................................................................. !, 6, 30, 36, 37, 39-42,44-46,52,65,66Canadian Cable Television Assn. v. Canada (Copyright Board), [1993]2F.C. 138 (F.C.A.), leave to appeal to the Supreme Court of Canadarefused ................................................................................................................................ l4Compo Co. Ltd. v. Blue Crest Music Inc., [1980]1 S.C.R. 357 ....................................... 64Harper & Row Publishers. Inc. v. Nation Enterprises, 225 U.S.P.Q.1073 (S.Ct. 1985) ............ .............. .............. ............... .............. .............. .............. ............. .57Mel/or v. Australian Broctdcasting Commission, [1940] A.C. 491 (P .C.) ................... l4 , 22

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Service of a True Copy HereofAdmitted this 9'h day ofSeptember, 2003.For GOWLING LEFLEUR HENDERSON&ob'{?POttawa Agents for the Appellant/Respondent onCross-Appeal

Service of a True Copy HereofAdmitted this 91h day ofSeptember, 2003.

N LADNER GERVAIS LLP

Agent for the Intervener, the Federation ofLaw Societies of Canada

Service of a True Copy HereefAdmitted this 9111 day ofSeptember, 2003.F'}i0 SER, HOSKIN & HARCOURTL'.. ; - - L t . . ~ - v \ J t

Co-Counsel and Ottawa Agents for theRespondents/Appellants in Cross-appeal

Service of a True Copy HereofAdmitted this 91h day ofSeptember, 2003.For McCARTHY TETRAULT LLP

v,'t\\ \ ( n .,;.,.CAgents for the Interveners, The CanadianPublishers' Council and the Association ofCanadian Publishers

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Intervener factum Access Copyright and Copibec, CCH case Supreme Court of Canada

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