Written by Dominique T. Hussey, L.E. Trent Horne and Jeilah Y. Chan
The fair dealing user right, as an exception to copyright infringement, has its limits. The fact that a use falls within an enumerated purpose under the Copyright Act is no guarantee of immunity from infringement. To avoid liability, internal photocopying policies should be reviewed for compliance, refined, and consistently enforced.
Access Copyright ("Access") is known as a “collective society”. Its mandate under the Copyright Act is to license the right to reproduce written works and collect royalties on behalf of authors and publishers. The Copyright Board issued an interim tariff establishing the applicable royalties. York is the third largest university in Canada. As is typical of universities, York sells textbooks and coursepacks to students. Coursepacks are compilations of materials used for teaching, and contain written works for which copyright is licensed to York.
Generally, the York coursepacks were produced internally by the university printing services and externally at third-party print shops, licensed by Access. Some instructors had their materials printed at unlicensed print shops—without sanction by York. York also used a software platform that allowed instructors to organize course materials and make them available to students electronically. York did not monitor, enforce or otherwise address compliance with copyright laws or its own copying policies, including its fair dealing guidelines. In 2011, York opted out of the Copyright Board's interim tariff, asserting that an interim tariff was not enforceable and that York was exempt from paying royalties because of "fair dealing".
Access sued to enforce the Copyright Board's interim tariff against York. York responded with a counterclaim asking for a declaration that its guidelines for reproduction of copyrighted works constituted fair dealing.
Access prevailed: The Federal Court found the Copyright Board's interim tariff to be mandatory and enforceable against York and York's fair-dealing counterclaim failed.
As the Supreme Court of Canada determined in CCH, "fair dealing" is a positive user right, not merely a defence to infringement. However, the burden of establishing fair dealing rests with the party asserting the right. That party must prove:
- the use falls within an authorized purpose (e.g., education); and
- the dealing is fair—as determined with reference to six non-exhaustive factors: the purpose of the dealing, the character of the dealing, the amount of the dealing/copying, alternatives to the dealing, the nature of the work, and the effect of the dealing on the work.
York’s downfall was the second step of the analysis, and, in particular, the "amount of the dealing" factor. Qualitatively, the York guidelines arbitrarily determined which formats did and did not warrant production. Quantitatively, the York guidelines in some circumstances allowed for copying the core and the whole of the author’s work. The Court found none of this to be fair.
The remaining fair-dealing factors were also unhelpful to York. York could not prove that there were no alternatives to its dealings. Cheaper access was not a determinative factor. The effect of the dealing on the market, while analytically complex, ultimately favoured Access. The Court found it enough for Access to prove that the market for the works (and physical copying thereof) had decreased because of York’s guidelines. It was also sufficient for Access to establish that copying under the guidelines was likely to compete in the market for the original works. Finally, the Court found that York’s failure to monitor and enforce under the guidelines reinforced the unfairness of York's dealings.
Stay tuned in the event of an appeal.
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