File No. 33,888

IN THE SUPREME COURT OF CANADA

(ON APPEAL FROM THE FEDERAL COURT OF APPEAL)

BETWEEN:

THE PROVINCE OF ALBERTA AS REPRESENTED BY THE MINISTER OF

EDUCATION AND OTHERS* Appellants

(Applicants on Judicial Review) - and -

THE CANADIAN COPYRIGHT LICENSING AGENCY

Operating as "ACCESS COPYRIGHT" Respondent

(Respondents on Judicial Review)

- and -

THE CENTRE FOR INNOVATION LAW AND POLICY (“CILP”)

FACULTY OF LAW UNIVERSITY OF TORONTO

Proposed Intervener

______________________________________________________________________________

MEMORANDUM OF ARGUMENT OF THE PROPOSED INTERVENER THE CENTRE FOR INNOVATION LAW AND POLICY (“CILP”)

Faculty of Law University of Toronto

MOTION TO EXTEND THE TIME TO FILE FOR

LEAVE TO INTERVENE AND FOR

LEAVE TO INERVENE Pursuant to Rules 6, 47 and 55 of the Rules of the Supreme Court of Canada

______________________________________________________________________________

* The Province of British Columbia as represented by the Minister of Education; The Province

of Manitoba as represented by the Minister of Education, Citizenship and Youth; The Province

of New Brunswick as represented by the. Minister of Education; The Province of Newfoundland

and Labrador as represented by the Minister of Education; The Northwest Territories as

represented by the Minister of Education, Culture and Employment; The Province of Nova

Scotia as represented by the Minister of Education; The Territory of Nunavut as represented by

the Minister of Education; The Province of Ontario as represented by the Minister of Education; The Province of Prince Edward Island as represented by the Minister of Education; The

Province of Saskatchewan, as represented by the Minister of Education The Yukon Territory as

represented by the Minister of Education; The Airy and Sabine District School Area Board; The Algoma District School Board; The Algonquin and Lakeshore Catholic District School

Board; The Asquith-Garvey District School Area Board; The Atikokan Roman Catholic Separate

School Board; The Avon Maitland District School Beard; The Bloorview MacMillan School

Authority; The Bluewater District School Board; The Brant Haldimand Norfolk Catholic District

School Board; The Bruce-Grey Catholic District School Board; The Campbell Children's School

Authority; The Caramat District School Area Board; The Catholic District School Board of

Eastern Ontario; The Collins District School Area Board; The Connell and Ponsford District

School Area Board; The Conseil des écoles catholiques du Centre-Est de l'Ontario; The Conseil

des écoles publiques de l'Est de l'Ontario; The Conseil des écoles separees catholiques de

Dubreuilville; The Conseil des écoles separees catholiques de Foleyet; The Conseil scolaire de

district catholiques Centre-Sud; The Conseil scolaire de district catholique de l'Estontarien; The

Conseil scolaire de district catholique des Aurores bon~ales; The ConseiI scolaire de district

catholique des Grandes Rivieres; The Conseil scolaire de district catholique du Nouvel-Ontario;

The Conseil scolaire de district catholique Franco-Nord; The Conseil scolaire de district des

écoles catholiques de Sud-Ouest; The Conseil scolaire de district du Centre Sud-Ouest; The

Conseil scolaire de district du Grand Nord de l'Ontario; The Conseil scolaire de district du Nord-

Est de l'Ontario; The District School Board of Niagara; The District School Board Ontario North

East; The Dufferin-Peel Catholic District School Board; The Durham Catholic District School

Board; The Durham District School Board; The Foleyet District School Area Board; The Gogama District School Area Board; The Gogama Roman Catholic Separate School Board;

The Grand Erie District School Board; The Greater Essex County District School Board; The

Halton Catholic District School Board; The Halton District School Board; The Hamilton-

Wentworth Catholic District School Board; The Hamilton-Wentworth District School Board;

The Hastings & Prince Edward District School Board; The Hornepayne Roman Catholic

Separate School Board; The Huron Perth Catholic District School Board; The Huron-Superior

Catholic District School Board; The James Bay Lowlands Secondary School Board; The

Kawartha Pine Ridge District School Board; The Keewatin-Patricia District School Board; The Kenora Catholic District School Board; The Lakehead District School Board; The Lambton

Kent District School Board; The Limestone District School Board; The Missarenda District

School Area Board; The Moose Factory Island District School Area Board; The Moosonee

District School Area Board; The Moosonee Roman Catholic Separate School Board; The

Murchison and Lyell District School Area Board; The Nakina District School Area Board; The Near North District School Board; The Niagara Catholic District School Board; The Niagara Peninsula Children's Centre School Authority; The Nipissing-Parry Sound Catholic

District School Board; The Northeastern Catholic District School Board; The Northern District

School Area Board; The Northwest Catholic District School Board; The Ottawa Children's

Treatment Centre School Authority; The Ottawa Carleton Catholic District School Board; The

Ottawa~Carleton District School Board; The Parry Sound Roman Catholic Separate School

Board; The Peel District School Board; The Peterborough Victoria Northumberland and

Clarington Catholic District School Board; The Rainbow District School Board; The Rainy River

District School Board; The Red Lake Area Combined Roman Catholic Separate School Board;

The Renfrew County Catholic District School Board; The Renfrew County District School

Board; The Simcoe County District School Board; The Simcoe Muskoka Catholic District

School Board; The St Clair Catholic District School Board; The Sudbury Catholic District

School Board; The Superior North Catholic District School Board; The Superior-Greenstone

District School Board; The Thames Valley District School Board; The Thunder Bay Catholic

District School Board; The Toronto Catholic District School Board; The Toronto District School

Board; The Trillium Lakelands District School Board; The Upper Canada District School Board;

The Upper Grand District School Board; The Upsala District School Area Board; The Waterloo

Catholic District School Board; The Waterloo Region District School Board; The Wellington

Catholic District School Board; The Windsor~Essex Catholic District School Board; The York

Catholic District School Board; and The York Region District School Board.

Original To:

The Registrar Supreme Court of Canada

Wellington St.,

Ottawa, Canada

And to:

Ogilvy, Renault S.E.N.C.R.L., s.r.l. Suite 2500 1 Place Ville Marie Montréal, Quebec H3B 1R1 Telephone: 514-847-4747 Fax: 514-286-5474 Solicitors for the Respondent c/o Sally Gomery Norton Rose OR LLP 1500-45 O'Connor Street Ottawa, Ontario K1P 1A4 Telephone: (613) 780-8604 FAX: (613) 230-5459 E-mail: sally.gomery@nortonrose.com

J. Aidan O'Neill, Fasken, Martineau LLP Suite 1300 55 Metcalfe Street Ottawa, ON K1P 6L5 613-236-3882 613-230-6423 (fax) Solicitors for the Applicants, and on behalf of Ms. Wanda Noel, co-counsel for the Appellants

And Courtesy Copies To Other Proposed Interveners:

ASSOCIATION OF UNIVERSITIES AND COLLEGES OF CANADA (AUCC) and

ASSOCIATION OF CANADIAN COMMUNITY COLLEGES (ACCC)

c/o

Marcus Klee

Glen A. Bloom

Patricia Wilson Solicitors for the Moving Parties, AUCC and ACCC

Osler Hoskin & Harcourt LLP

340 Albert Street, Suite 1900 Ottawa, ON KIR 7Y6

Tel: (613) 235-7234

Fax: (613) 235-2867 Email: mklee@osler.com

Tel: (613) 787-1009 Fax: (613) 235-2867

Email: pwilson@osler.com

THE CANADIAN ASSOCIATION OF UNIVERSITY TEACHERS AND THE

CANADIAN FEDERATION OF STUDENTS

Torys LLP

79 Wellington St. W., Suite 3000 Box 270, TD Centre

Toronto, Ontario

M5K 1 N2 Canada

Fax: 416.865.7380

Wendy Matheson Tel: 416.865.8133

Email: wmatheson@torys.com

Andrew Bernstein Tel: 416.865.7678

EmaiI: abernstein@torys.com

c/o

Osler Hoskin & Harcourt LLP Suite 1900

3"40 Albert Street Ottawa ON KIR 7Y6 Fax: 613.235.2867

Patricia Wilson 613.787.1009

Email: pwilson@osIer.com

Agent for the Moving Party, Canadian Association of University Teachers and Canadian

Federation of Students

CANADIAN AUTHORS ASSOCIATION et al,

Hebb & Sheffer (in association) Barristers & Solicitors

l535A Queen Street West Toronto, ON M6R lA7

Marian Hebb LSUC#: 17788D Warren Sheffer LSUC#: 46093F Tel: 416-556-8187

Fax: 866-400-3215

Stockwoods LLP

77 King Street West, Suite 4130 Toronto, ON M5K IHI

Brendan van Niejenhuis LSUC#: 46752J Tel: 416-593-7200

Fax: 416-593-9345

Solicitors for the Applicants

Michael Sobkin Barrister & Solicitor

90 Boulevard de Lucerne Gatineau, Quebec

J9H 7K8

Tel: 819-778-7794 Fax: 819-778-1740

E-mail: msobkin@sympatico.ca

Agent for the Applicants

Canadian Publishes’ Council et al

McCarthy Tétrault LLP

Suite 5300, Toronto-Dominion Bank Tower Toronto, ON M5K 1£6

Barry B. Sookman Steven G. Mason Daniel G.C. Glover

Tel: (416) 601-7949 Fax: (416) 868w0673

E-mail: bsookman@mccarthy.ca

Solicitors for the Proposed Interveners Canadian Publishers' Council,

the Association of Canadian Publishers,

and the Canadian Educational Resources Council

c/o Cavanagh Williams Conway Baxter LLP Suite 401, 1111 Prince of Wales Drive Ottawa, ON

K2C 31'2

Colin S. Baxter Tel: (613) 780-2011 Fax: (613) 569-8668

Ottawa Agent for the Proposed Interveners

CMRRA-SODRAC INC.

Casey M. Chisick

(416) 869-5403

Timothy Pinos

(416) 869-5784

Jason Beitchman

(416) 860-2988

Cassels Brock & Blackwell LLP

Scotia Plaza, Suite 2100

40 King Street West

Toronto, ON M5H 3C2

Telephone: (416) 869-5300

Facsimile: (416) 644-9326

c/o Ottawa Agent:

Eugene Meehan Q.C.

Jeffrey Beedell

McMillan LLP

50 O’Connor Street

Suite 300

Ottawa, Ontario,K1P 6L2

Telephone: (613) 232-7171

Facsimile: (613) 231-3191

Agent for the Proposed Intervener

CMRRA-SODRAC Inc.

Samuelson-Glushko Canadian Internet Policy & Public Interest Clinic (CIPPIC),

University of Ottawa, Faculty of Law

57 Louis Pasteur St.

Ottawa, Ontario K1N 6N5

c/o David Fewer

Telephone: (613)562-5800 (ext.2558)

Fax: (613)562-5417

E-mail: dfewer@uottawa.ca

I. FACTS

A. Overview

1. This is a motion by the Centre for Innovation Law and Policy at the Faculty of Law,

University of Toronto ("CILP"):

a. to extend the time, pursuant to Rule 6 of the Rules of the Supreme of Canada, for

CILP to file serve and file a motion for leave to intervene in this appeal; and,

b. for leave to intervene in this appeal and to file a factum not to exceed 20 pages

and to present oral argument at the hearing of the appeal not to exceed 15

minutes.

2. As is further explained below, the extension of time is sought mainly on the basis that

CILP had assumed that the proposed academic interveners would address all the essential aspects

of “fair dealing”, and would present the various public interest perspectives from within the

academic and user community that are necessary to assist this Court in this extremely important

appeal. However, having now examined the leave to intervene motion records, CILP has

reluctantly concluded that the materials fail to raise certain essential arguments that should be

before this Court, and raise other arguments and issues that are unnecessary. CILP has moved as

quickly as it could under all the circumstances to bring this motion.

3. If permitted to intervene, CILP would endeavour to assist this Court by ensuring that all

necessary public interest arguments are made from both the perspective of actual researchers,

teachers, scholars and students in the university community and users’ generally who are not

otherwise adequately represented before this court. That said, although CILP is an internationally

recognized research institute within the University of Toronto Faculty of Law, it does not

necessarily represent or speak for or represent the University of Toronto or any of CILP’s

sponsors in any way. The history and experience of CILP are set forth in detail in Prof. Katz’s

affidavit. Katz.

Katz Affidavit, paras. 11 – 19.

4. The view of Prof. Katz and CILP on the importance and context of this appeal are set

forth in his affidavit. Put simply, he believes that this “is clearly the most important copyright

case for research, education and learning to ever face this Court, or any other highest court of

any comparable jurisdiction.”

Katz Affidavit, paras. 7-10, 22.

B. Why Permission Is Being Sought For An Extension Of Time To File This

Motion To Intervene

5. Prof. Katz explains frankly why this motion to intervene is being filed after the deadline

of September 12, 2011 and why an extension of time is being sought. This is because:

a. The three proposed interveners that were expected to be generally supportive of

the Applicants (the “proposed academic interveners”) are the Canadian

Association of University Teachers (“CAUT”) together with the Canadian

Federation of Students (“CFS”), the Samuelson-Glushko Canadian Internet Policy

& Public Interest Clinic (“CIPPIC”), and the Association of Universities and

Colleges of Canada (“AUCC”) together with the Association of Community

Colleges of Canada (“ACCC”). CILP had reason to believe that these proposed

academic interveners would supplement the Applicants’ submissions with further

crucial submissions based upon public interest concerns arising more generally

and in the post-secondary education level in particular. In the view of Prof. Katz,

the Appellants’ and proposed academic interveners’ submissions taken together

fail to raise certain crucial public interest arguments with respect to fair dealing

that are essential to assist this Court in this case.

b. CILP’s examination of the material filed by the proposed interveners on

September 12, 2011, which lead it to the reluctant conclusion that the proposed

interveners failed to make certain crucial points, and also raised some unnecessary

and potentially time-consuming and distracting points, as further explained below;

c. CILP, while anticipating the need for a possible intervention by it, was given

reason to believe that AUCC, in particular, would adequately represent the

interests of the university community;

d. CILP, unlike the other proposed academic interveners, does not have a structure

or resources normally devoted to court intervention; and,

e. Court interventions on behalf of research centres at the University of Toronto

Faculty of Law are undertaken with the requisite combination of caution and

collegiality, and require a process of appropriate “peer review” in order to verify

the need for such intervention and to review the submissions. Accordingly, in this

instance, CILP went through an extensive review process (established ad hoc

under the circumstances) involving other Faculty members. All of this this has

been very helpful but has taken some time, including extensive volunteer time by

colleagues on the weekend of September 17th

and 18th

, 2011.

Katz Affidavit, paras. 20 – 32.

6. These missing aspects from other submissions include:

a. Whether the activities found by the Court below not to be fair dealing, i.e. the

making of copies other than at the request of a student, or when a student is

instructed to read the material, or for "instruction" are not and should not ipso

facto be excluded from fair dealing for any of the specifically listed purposes in

ss. 29 and 29.1 of the Copyright Act, or that, in the alternative, the mention of

particular purposes in ss. 29 and 29.1 of the Copyright Act does not necessarily

preclude recognition of other types of fair dealing in light of the historic

development of fair dealing and the role of the judiciary in its evolution;

b. Whether the meaning and scope of the terms ‘research’, ‘private’ and ‘study’, as

well as ‘criticism’ and ‘review’, which were codified a century ago in the

landmark UK Copyright Act, 1911 and are still at the heart of the Canadian

legislation, must be interpreted flexibly as technology, education and

communication evolve, and specifically what this means in 2011 and beyond for

such essential activities as ‘criticism’, and whether ‘private study’ is now limited

to ‘study by oneself’;

c. Whether in determining fairness, it may be necessary to consider the purpose of

both the provider of copies and the user, and not simply one or the other; and,

d. Whether it is unnecessary to give any consideration in this appeal to the

provisions of international treaties or the Charter of Rights and Freedoms.

C. More about CILP and its Perspective

7. CILP's mandate and its record of activity since its inception focus on research, teaching,

and academic outreach activity (through conferences, workshops, etc.) - all of which are aspects

of what can considered to be "education", "teaching" and "learning". These are concepts that

overlap and rapidly evolving in the digital and Internet age, and are at the heart of this appeal.

Katz Affidavit, paras. 7, 12.

8. CILP hosted a conference in 2010 with international faculty on the Google Book Search

Project and the litigation surrounding it, in which fair use and fair dealing were central concerns.

Katz Affidavit, para. 15.

9. CILP is very concerned from a practical standpoint that that the decision of the Copyright

Board, as upheld by the Federal Court of Appeal, will prejudice its own ability to conduct and

foster its research and to engage in its overall scholarly and educational mandate. Moreover,

unless overturned, it will quickly result in increased costs and less access to essential material, as

well as extremely intrusive and onerous reporting requirements. Moreover, many academic

authors associated with CILP have a very different perspective from that of other authors and

publishers and the proposed academic interveners. While CILP believes that the issues in this

appeal are very important in the K-12 milieu, they are especially important in the university

context where research and particularly directed research become more and more important.

Katz Affidavit, paras. 6, 7, 33 - 35, 37, 37 -38.

10. It is not enough for this Court to be told that “research” should not be construed

narrowly, should be given a “large and liberal” or “robust” interpretation. These points are

obvious and were well established and clearly articulated by this Court's landmark decision in

CCH v. LSUC Canadian Ltd. v. Law Society of Upper Canada, [2004] 1 S.C.R. 339, 2004 SCC

13 (“CCH v. LSUC”) seven years ago.

Katz Affidavit, para. 32

CCH v. LSUC Canadian Ltd. v. Law Society of Upper Canada, [2004] 1 S.C.R.

339, 2004 SCC 13, para. 51, Tab 5C.

11. It is also unnecessary to consider arguments based upon the Charter or Charter values, as

the intervener CIPPIC proposes. The point that the Copyright Act should be interpreted

consistently with the Charter is obvious. CILP will argue that academic freedom and guarantees

for unhindered learning have been part and parcel of copyright law from its inception and that

any correct interpretation of the fair dealing provisions of the Copyright Act will take these goals

and freedom into account, without the need to consider the Charter.

Katz affidavit, paras. 26, 32.

12. CILP further believes that there is no need for this Court to consider international treaty

texts, much less WTO jurisprudence, as urged by proposed interveners in support of the

Respondent and by others in the SOCAN v. Bell “Previews” case (SCC No. 33,800, which is to

be heard the day before this appeal). There is no ambiguity involved in this case that might

require recourse to any treaty to resolve. In the context of this appeal, the “three-step test” and its

own inherent ambiguity, that some interveners urge should effectively be incorporated into

domestic copyright legislation is nothing more than a “red herring”. One plain fallacy of these

concerted arguments is that, if they were correct, then one would assume that the USA would

have long ago been adjudicated by the Dispute Settlement Body of the World Trade

Organization to be in flagrant violation of its international obligations with respect to §107 of its

Copyright Act, which, codified the fair use doctrine in 1976 and has explicitly permitted the

making of copies for the purpose of teaching, including multiple copies for classroom use.

However, no complaint has ever been filed against the USA in this respect. This line of argument

would be a lengthy and unnecessary distraction in what already promises to be a very crowded

two days of copyright appeals.

Katz affidavit, para. 26

United States Copyright Act, 17 USC §107, Tab 5B.

13. It is apparent from the material filed in the SOCAN Previews case, from the record below

and from the submissions of several proposed interveners in this appeal that there is a concerted

effort to effectively push back and undo the key findings in this Court’s landmark decision in

CCH v. LSUC. CILP strongly disagrees with this position. In CILP’s view, CCH v. LSUC

needs to be reaffirmed and enshrined by clarifying that many of the practices and activities that

are essential to the educational system in Canada, and particularly the post-secondary system, are

already included within the legislation and the CCH v. LSUC ruling.

Katz affidavit, para. 26, 31.

14. CILP’s submission embracing the flexibility and inclusiveness of the current statutory

provisions as confirmed by CCH v. LSUC would be confirmed by a historical and comparative

law analysis. For example, a leading American treatise author specifically and positively

mentions the CCH v. LSUC decision at some length as confirming his view that the Canadian

fair dealing law is the “kissing cousin” of American fair use law, based on their cognate common

law origins and shared philosophy. He specifically refers to the Chief Justice’s comments on

“users’ rights” and places her judgment in the continuity of the “early common-law judges who

created fair use”.

William F. Patry, 4 Patry on Copyright § 10:2. Tab 5D.

15. If CILP is granted leave to intervene, it will be able to assist this Court by providing the

benefit of its experience based upon:

a. A unique and different perspective from any of the parties and the other

proposed interveners by focussing on post-secondary and, in particular,

research, educational, and teaching concerns in the undergraduate, post-

graduate and professional contexts;

b. Its expertise in the historical and common law origins and comparative

law aspects of fair dealing, tracing back to the Statute of Anne 1710, 8

Anne c.21; long title An Act for the Encouragement of Learning, by

vesting the Copies of Printed Books in the Authors or purchasers of such

Copies, during the Times therein mentioned; and,

c. Its expertise and experience in issues relating to the Copyright Board, and

its experience to date with "fair dealing" and related issues.

Katz Affidavit, paras. 5, 6, 37, 38 et passim.

16. CILP, if permitted to intervene, would take positions that are supportive of the result

sought by the appellants but for additional and very different and distinct reasons. CILP would

provide this Court with an analysis that will help this Court not only to determine whether or not

the Board and the Court below should be overruled but also to provide as much guidance as may

be appropriate for the next phases of education, creativity, and innovation in the digital age.

Such guidance is important because CCH v. LSUC was the only fair dealing case ever heard by

this Court, and such cases are extremely rare in the highest courts of other Anglo-American

jurisdictions. CCH v. LSUC confirmed and explained the meaning of terminology that was

codified a century ago. There can be no doubt that technology, innovation and education evolve

at a pace far faster than that to which the Copyright Board, the Courts, and Parliament will be

able adapt. Canada needs further guidance that will stand the test of time on the meaning of the

current law on fair dealing for the years ahead, as copyright law moves into issues involving the

“cloud” and beyond. This case presents a potentially indispensable opportunity for this Court to

provide such guidance. Narrow, cramped and rigid interpretations of users’ rights are not

conducive to such an important achievement.

Katz Affidavit, para. 6, 10, 23, 17, 34 - 36.

17. CILP believes that, given the infrequency of highest court rulings on fair dealing or fair

use in this country and other Anglo-American jurisdictions, and the inherent difficulty of

legislating intellectual property laws that will address every issue that affects, or is affected by

technology, innovation and education, it is important that this Court provide guidance, to the

extent that is possible and appropriate, for the future.

Katz Affidavit, para. 8.

II. STATEMENT OF QUESTIONS IN ISSUE

18. Should CILP be permitted an extension of time pursuant to Rule 6 of the Supreme Court

of Canada Rules to bring this motion for leave to intervene in this Appeal?

19. If so, should CILP be granted leave to intervene in this appeal, and if so, on what terms?

III. ARGUMENT

20. Based upon the facts set forth above, CILP seeks this Court’s permission for an extension

of time in order to bring this motion for leave to intervene. CILP understands that such

extensions are rarely granted. However, CILP submits that it had reason to believe that its

intervention would not be necessary, but having determined otherwise after examining the

submissions of the proposed academic interveners, it has moved as expeditiously as it could

under the circumstances. CILP submits that it this extension of time will not prejudice or

inconvenience any party or other proposed intervener and may permit CILP to thereupon, if

granted leave, assist this Court with certain essential arguments that will not otherwise be made

and to avoid certain arguments that would be unnecessary and distracting. Given the context, the

circumstances, and the importance of this appeal, and the lack of necessary submissions before

this Court, CILP believes that this is an “extraordinary” situation warranting this Court’s

discretion to permit the extension.

Rules of the Supreme Court of Canada (SOR/2002-156), Rule 6, Tab 5A.

Katz Affidavit, para. 20, 43, 46.

21. In order to be granted leave to intervene, CILP must show this Court that it can provide

submissions that will be useful to the Court and different from those of the other parties.

Rules of the Supreme Court of Canada (SOR/2002-156), Rule 55, Tab 5A.

22. As outlined above, CILP would, if leave to intervene is granted, assist this Court by:

a. bringing to bear the perspective of an actual research institute at a research

university focussed on intellectual property itself and how it relates to

innovation and other objectives that lie at the heart of the Copyright Act;

b. making essential submissions that are different than those of the Appellant

or any of the other proposed academic interveners, including the academic

interveners, because it will address arguments relating to fair dealing that

neither the Appellants nor the proposed academic interveners have raised,

but which are essential for this Court’s consideration; and,

c. assisting this Court in demonstrating why certain potentially time

consuming arguments already raised by potential interveners are

unnecessary,

23. CILP's intervention would be in the public interest because it would be based upon a

point of view emanating from a recognized research institute devoted to intellectual property and

innovation issues at a major university. CILP is dedicated to serving the post-secondary

educational sector in particular and the Canadian public in general. CILP’s intervention would

also reflect the view of academics who engage in considerable publication but who choose not to

be affiliates of Access Copyright.

Katz Affidavit, paras. 30, 33, 37.

24. CILP would be affected and could indeed suffer prejudice if not granted leave to

intervene because an adverse ruling from this Court could directly impact on CILP’s core

activities by decreasing access to essential education and research material and driving up the

cost of what remains.

Katz Affidavit, paras. 6, 37

25. To summarize, if CILP is granted leave to intervene, it would make submissions on the

following aspects of fair dealing, which have not been and likely will not be raised by any other

party or proposed intervener:

a. That the activities found by the Court below not to be fair dealing, i.e. the making

of copies other than at the request of a student, or when a student is instructed to

read the material, or for "instruction" are not and should not ipso facto be

excluded from fair dealing for any of the specifically listed purposes in ss. 29 and

29.1 of the Copyright Act, or that, in the alternative, the mention of particular

purposes in ss. 29 and 29.1 of the Copyright Act does not necessarily preclude

recognition of other types of fair dealing in light of the historic development of

fair dealing and the role of the judiciary in its evolution;

b. That the meaning and scope of the terms ‘research’, ‘private’ and ‘study’, as well

as ‘criticism’ and ‘review’, which were codified a century ago in the landmark

UK Copyright Act, 1911 and are still at the heart of the Canadian legislation, must

be interpreted flexibly as technology, education and communication evolve, and

specifically what this means in 2011 and beyond for such essential activities as

‘criticism’, and whether ‘private study’ is now limited to ‘study by oneself’;

c. That in determining fairness, it may be necessary to consider the purpose of both

the provider of copies and the user, and not simply one or the other; and

d. That it is unnecessary to give any consideration in this appeal to the provisions of

international treaties or the Charter of Rights and Freedoms.

IV. COSTS

26. CILP undertakes not to seek any costs and asks that no costs be awarded against it.

V. ORDER SOUGHT

27. CILP seeks an order permitting an extension of time to file this leave to intervene motion

and, if so, to be permitted, to be granted leave to intervene in this appeal and to submit a factum

of not more than 20 pages and to present oral argument not to exceed 15 minutes.

ALL OF WHICH IS RESPECTFULLY SUBMITTED this 20TH

day of September, 2011.

_____________________ Howard P. Knopf Macera & Jarzyna, LLP 1200 - 427 Laurier Ave. W., Ottawa, Canada K1R 7Y2 Phone: 613-238-8173 Fax: 613-235-2508

Counsel for CILP

VI. PART VI - TABLE OF AUTHORITIES

Statutory Instruments

1. Rules of the Supreme Court of Canada (SOR/2002-156), Rules 6, 47, and 55. Tab

5A.

2. United States Copyright Act, 17 USC §107, Tab 5B.

Case Law

3. CCH v. LSUC Canadian Ltd. v. Law Society of Upper Canada, [2004] 1 S.C.R.

339, 2004 SCC 13, Tab 5C.

Academic Authorities

4. William F. Patry, 4 Patry on Copyright, § 10:2, Thomson Reuters, 2011. Tab 5D.

VII. AUTHORITIES

1. Rules of the Supreme Court of Canada (SOR/2002-156), Rules 6, 47, and 55.

*************************************

EXTENSION OR ABRIDGMENT

6. (1) The Court, a judge or unless these Rules provide

otherwise, the Registrar may, on motion or on their

own initiative, extend or abridge a period provided for

by these Rules.

(2) The affidavit in support of a motion for an extension

or abridgement of time shall set out the reason for

the delay or urgency, as the case may be.

PROROGATION OU ABRÉGEMENT

6. (1) La Cour, un juge ou, sauf disposition contraire

des présentes règles, le registraire peut, sur requête ou de

sa propre initiative, proroger ou abréger tout délai fixé

par les présentes règles.

(2) L’affidavit à l’appui de la requête en prorogation

ou en abrégement doit exposer les motifs du retard ou de

l’urgence, selon le cas.

*************************

47. (1) Unless otherwise provided in these Rules, all motions shall be made before a judge or the

Registrar and consist of the following documents, in the following order:

(a) a notice of motion in accordance with Form 47;

(b) any affidavit necessary to substantiate any fact that is not a matter of record in the Court;

(c) if considered necessary by the applicant, a memorandum of argument in accordance with

paragraph 25(1)(f), with any modifications that the circumstances require;

(d) the documents that the applicant intends to rely on, in chronological order, in accordance

with subrule 25(3); and

(e) a draft of the order sought, including costs.

(1.1) An originating motion shall include, after the notice of motion,

(a) a certificate in Form 25B that states

(i) whether there is a sealing or confidentiality order in effect in the file from a lower court or the

Court and whether any document filed includes information that is subject to a sealing or

confidentiality order or that is classified as confidential by legislation,

(ii) whether there is, pursuant to an order or legislation, a ban on the publication of evidence or

the names or identity of a party or witness and whether any document filed includes information

that is subject to that ban, and

(iii) whether there is, pursuant to legislation, information that is subject to limitations on public

access and whether any document filed includes information that is subject to those limitations;

(b) a copy of any order referred to in subparagraph (a)(i) and (ii) or of the provision of the

applicable legislation mentioned in subparagraphs (a)(i) to (iii); and

(c) if a judge’s previous involvement or connection with the case may result in it being

inappropriate for that judge to take part in the adjudication on the proceedings in the Court, a

certificate in Form 25C setting out the issues.

(2) Parts I to V of the memorandum of argument shall not exceed 10 pages.

(3) There shall be no oral argument on the motion unless a judge or the Registrar otherwise

orders.

SOR/2006-203, s. 22;

SOR/2011-74, s. 25.

47. (1) Sauf disposition contraire des présentes règles, toute requête est présentée à un juge ou au

registraire et comporte dans l’ordre suivant :

a) un avis de requête conforme au formulaire 47;

b) tout affidavit nécessaire pour attester un fait dont la preuve n’est pas au dossier de la Cour;

c) si le requérant le considère nécessaire, un mémoire conforme à l’alinéa 25(1)f), avec les

adaptations nécessaires;

d) les documents que compte invoquer le requérant, par ordre chronologique, compte tenu du

paragraphe 25(3);

e) une ébauche de l’ordonnance demandée, notamment quant aux dépens.

(1.1) La requête introductive d’instance comporte, à la suite de l’avis de requête :

a) une attestation conforme au formulaire 25B indiquant :

(i) si une ordonnance de mise sous scellés ou de confidentialité rendue par un tribunal d’instance

inférieure ou par la Cour est en vigueur dans le dossier et si un document déposé contient des

renseignements qui sont, soit visés par une ordonnance de mise sous scellés ou de confidentialité,

soit classés comme confidentiels aux termes de dispositions législatives,

(ii) s’il existe, en vertu d’une ordonnance ou d’une disposition législative, une obligation de non-

publication de la preuve ou du nom ou de l’identité d’une partie ou d’un témoin et si un

document déposé contient des renseignements visés par cette obligation,

(iii) s’il existe, en vertu d’une disposition législative, une restriction qui limite l’accès du public à

certains renseignements et si un document déposé contient des renseignements visés par cette

restriction;

b) une copie de toute ordonnance visée aux sous-alinéas a)(i) et (ii) ou des dispositions

législatives applicables visées aux sous-alinéas a)(i) à (iii);

c) dans le cas où il pourrait ne pas être indiqué que le juge prenne part à la décision de la Cour en

raison de sa participation antérieure à l’affaire ou de l’existence d’un lien entre lui et celle-ci, une

attestation conforme au formulaire 25C énonçant les questions soulevées.

(2) Les parties I à V du mémoire de la requête comptent au plus dix pages.

(3) Sauf ordonnance contraire d’un juge ou du registraire, aucune plaidoirie orale n’est présentée

à l’égard de la requête.

DORS/2006-203, art. 22;

DORS/2011-74, art. 25.

***********************

55. Any person interested in an application for leave to appeal, an appeal or a reference may

make a motion for intervention to a judge.

55. Toute personne ayant un intérêt dans une demande d’autorisation d’appel, un appel ou un

renvoi peut, par requête à un juge, demander l’autorisation d’intervenir.

*************************

2. United States Copyright Act, 17 USC §107

in that work.

A. § 107. Limitations on exclusive rights: Fair use40

Notwithstanding the provisions of sections 106 and 106A, the fair use of a copyrighted work,

including such use by reproduction in copies or phonorecords or by any other means specified by

that section, for purposes such as criticism, comment, news reporting, teaching (including

multiple copies for classroom use), scholarship, or research, is not an infringement of copyright.

In determining whether the use made of a work in any particular case is a fair use the factors to

be considered shall include —

(1) the purpose and character of the use, including whether such use is of a commercial nature or

is for nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a

whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work.

The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is

made upon consideration of all the above factors.

40

The Visual Artists Rights Act of 1990 amended section 107 by adding the reference to section

106A. Pub. L. No. 101-650, 104 Stat. 5089, 5132. In 1992, section 107 was also amended to add

the last sentence. Pub. L. No. 102-492, 106 Stat. 3145.

3. CCH v. LSUC Canadian Ltd. v. Law Society of Upper Canada, [2004] 1 S.C.R.

339, 2004 SCC 13

Source: http://scc.lexum.org/en/2004/2004scc13/2004scc13.html

CCH Canadian Ltd. v. Law Society of Upper Canada, [2004] 1 S.C.R. 339, 2004 SCC 13

Law Society of Upper Canada Appellant/Respondent on cross-appeal

v.

CCH Canadian Limited Respondent/Appellant on cross-appeal

and between

Law Society of Upper Canada Appellant/Respondent on cross-appeal

v.

Thomson Canada Limited c.o.b. as Carswell

Thomson Professional Publishing Respondent/Appellant on cross-appeal

and between

Law Society of Upper Canada Appellant/Respondent on cross-appeal

v.

Canada Law Book Inc. Respondent/Appellant on cross-appeal

and

Federation of Law Societies of Canada, Canadian

Publishers’ Council and Association of Canadian

Publishers, Société québécoise de gestion

collective des droits de reproduction (COPIBEC) and

Canadian Copyright Licensing Agency (Access Copyright) Interveners

Indexed as: CCH Canadian Ltd. v. Law Society of Upper Canada

Neutral citation: 2004 SCC 13.

File No.: 29320.

2003: November 10; 2004: March 4.

Present: McLachlin C.J. and Iacobucci, Major, Bastarache, Binnie, Arbour, LeBel, Deschamps

and Fish JJ.

on appeal from the federal court of appeal

Copyright — Infringement — Photocopying — Fax transmissions — Law Society providing

custom photocopy service and maintaining self-service photocopiers in library for use by patrons

— Legal publishers bringing copyright infringement actions against Law Society — Whether

publishers’ headnotes, case summary, topical index and compilation of reported judicial

decisions “original” works covered by copyright — If so, whether Law Society breached

publishers’ copyright — Whether Law Society’s fax transmissions of publishers’ works

constitute communications “to the public” — Copyright Act, R.S.C. 1985, c. C-42, s. 3(1)(f).

Copyright — Infringement — Exception — Fair dealings — Law Society providing custom

photocopy service and maintaining self-service photocopiers in library for use by patrons —

Legal publishers bringing copyright infringement actions against Law Society — Whether Law

Society’s dealings with publishers’ works “fair dealings” — Copyright Act, R.S.C. 1985, c. C-

42, s. 29.

Copyright — Works in which copyright may subsist — Meaning of “original” work — Whether

headnotes, case summary, topical index and compilation of reported judicial decisions “original”

works covered by copyright — Copyright Act, R.S.C. 1985, c. C-42, s. 2 “every original literary,

dramatic, musical and artistic work”.

The appellant Law Society maintains and operates the Great Library at Osgoode Hall in Toronto,

a reference and research library with one of the largest collections of legal materials in Canada.

The Great Library provides a request-based photocopy service for Law Society members, the

judiciary and other authorized researchers. Under this “custom photocopy service”, legal

materials are reproduced by Great Library staff and delivered in person, by mail or by facsimile

transmission to requesters. The Law Society also maintains self-service photocopiers in the

Great Library for use by its patrons. In 1993, the respondent publishers commenced copyright

infringement actions against the Law Society, seeking a declaration of subsistence and

ownership of copyright in specific works and a declaration that the Law Society had infringed

copyright when the Great Library reproduced a copy of each of the works. The publishers also

sought a permanent injunction prohibiting the Law Society from reproducing these works as well

as any other works that they published. The Law Society denied liability and counterclaimed for

a declaration that copyright is not infringed when a single copy of a reported decision, case

summary, statute, regulation or a limited selection of text from a treatise is made by the Great

Library staff, or one of its patrons on a self-service copier, for the purpose of research. The

Federal Court, Trial Division allowed the publishers’ action in part, finding that the Law Society

had infringed copyright in certain works; it dismissed the Law Society’s counterclaim. The

Federal Court of Appeal allowed the publishers’ appeal in part, holding that all of the works

were original and therefore covered by copyright. It dismissed the Law Society’s cross-appeal.

Held: The appeal should be allowed and the cross-appeal dismissed. The Law Society does not

infringe copyright when a single copy of a reported decision, case summary, statute, regulation

or limited selection of text from a treatise is made by the Great Library in accordance with its

access policy. Moreover, the Law Society does not authorize copyright infringement by

maintaining a photocopier in the Great Library and posting a notice warning that it will not be

responsible for any copies made in infringement of copyright.

The headnotes, case summary, topical index and compilation of reported judicial decisions are

all original works in which copyright subsists. An “original” work under the Copyright Act is

one that originates from an author and is not copied from another work. In addition, an original

work must be the product of an author’s exercise of skill and judgment. The exercise of skill and

judgment required to produce the work must not be so trivial that it could be characterized as a

purely mechanical exercise. While creative works will by definition be “original” and covered

by copyright, creativity is not required to make a work “original”. This conclusion is supported

by the plain meaning of “original”, the history of copyright law, recent jurisprudence, the

purpose of the Copyright Act and the fact that this constitutes a workable yet fair standard.

While the reported judicial decisions, when properly understood as a compilation of the headnote

and the accompanying edited judicial reasons, are “original” works covered by copyright, the

judicial reasons in and of themselves, without the headnotes, are not original works in which the

publishers could claim copyright.

Under s. 29 of the Copyright Act, fair dealing for the purpose of research or private study does

not infringe copyright. “Research” must be given a large and liberal interpretation in order to

ensure that users’ rights are not unduly constrained, and is not limited to non-commercial or

private contexts. Lawyers carrying on the business of law for profit are conducting research

within the meaning of s. 29. The following factors help determine whether a dealing is fair: the

purpose of the dealing, the character of the dealing, the amount of the dealing, the nature of the

work, available alternatives to the dealing, and the effect of the dealing on the work. Here, the

Law Society’s dealings with the publishers’ works through its custom photocopy service were

research-based and fair. The access policy places appropriate limits on the type of copying that

the Law Society will do. If a request does not appear to be for the purpose of research, criticism,

review or private study, the copy will not be made. If a question arises as to whether the stated

purpose is legitimate, the reference librarian will review the matter. The access policy limits the

amount of work that will be copied, and the reference librarian reviews requests that exceed what

might typically be considered reasonable and has the right to refuse to fulfill a request.

The Law Society did not authorize copyright infringement by providing self service photocopiers

for use by its patrons in the Great Library. While authorization can be inferred from acts that are

less than direct and positive, a person does not authorize infringement by authorizing the mere

use of equipment that could be used to infringe copyright. Courts should presume that a person

who authorizes an activity does so only so far as it is in accordance with the law. This

presumption may be rebutted if it is shown that a certain relationship or degree of control existed

between the alleged authorizer and the persons who committed the copyright infringement.

Here, there was no evidence that the copiers had been used in a manner that was not consistent

with copyright law. Moreover, the Law Society’s posting of a notice warning that it will not be

responsible for any copies made in infringement of copyright does not constitute an express

acknowledgement that the copiers will be used in an illegal manner. Finally, even if there were

evidence of the copiers having been used to infringe copyright, the Law Society lacks sufficient

control over the Great Library’s patrons to permit the conclusion that it sanctioned, approved or

countenanced the infringement.

There was no secondary infringement by the Law Society. The Law Society’s fax transmissions

of copies of the respondent publishers’ works to lawyers in Ontario were not communications to

the public. While a series of repeated fax transmissions of the same work to numerous different

recipients might constitute communication to the public in infringement of copyright, there was

no evidence of this type of transmission having occurred in this case. Nor did the Law Society

infringe copyright by selling copies of the publishers’ works. Absent primary infringement,

there can be no secondary infringement. Finally, while it is not necessary to decide the point, the

Great Library qualifies for the library exemption.

Cases Cited

Applied: Muzak Corp. v. Composers, Authors and Publishers Association of Canada, Ltd.,

[1953] 2 S.C.R. 182; De Tervagne v. Belœil (Town), [1993] 3 F.C. 227; not followed:

Moorhouse v. University of New South Wales, [1976] R.P.C. 151; referred to: Moreau v. St.

Vincent, [1950] Ex. C.R. 198; Goldner v. Canadian Broadcasting Corp. (1972), 7 C.P.R. (2d)

158; Grignon v. Roussel (1991), 38 C.P.R. (3d) 4; Théberge v. Galerie d’Art du Petit Champlain

inc., [2002] 2 S.C.R. 336, 2002 SCC 34; Bishop v. Stevens, [1990] 2 S.C.R. 467; Compo Co. v.

Blue Crest Music Inc., [1980] 1 S.C.R. 357; Bell ExpressVu Limited Partnership v. Rex, [2002]

2 S.C.R. 559, 2002 SCC 42; University of London Press, Ltd. v. University Tutorial Press, Ltd.,

[1916] 2 Ch. 601; U & R Tax Services Ltd. v. H & R Block Canada Inc. (1995), 62 C.P.R. (3d)

257; Feist Publications Inc. v. Rural Telephone Service Co., 499 U.S. 340 (1991); Tele-Direct

(Publications) Inc. v. American Business Information, Inc., [1998] 2 F.C. 22; Édutile Inc. v.

Automobile Protection Assn., [2000] 4 F.C. 195; Slumber-Magic Adjustable Bed Co. v. Sleep-

King Adjustable Bed Co. (1984), 3 C.P.R. (3d) 81; Ladbroke (Football) Ltd. v. William Hill

(Football) Ltd., [1964] 1 All E.R. 465; Composers, Authors and Publishers Association of

Canada Ltd. v. CTV Television Network Ltd., [1968] S.C.R. 676; CBS Inc. v. Ames Records &

Tapes Ltd., [1981] 2 All E.R. 812; Hubbard v. Vosper, [1972] 1 All E.R. 1023; Associated

Newspapers Group plc v. News Group Newspapers Ltd., [1986] R.P.C. 515; Sillitoe v. McGraw-

Hill Book Co. (U.K.), [1983] F.S.R. 545; Beloff v. Pressdram Ltd., [1973] 1 All E.R. 241; Pro

Sieben Media AG v. Carlton UK Television Ltd., [1999] F.S.R. 610.

Statutes and Regulations Cited

Berne Convention for the Protection of Literary and Artistic Works (1886).

Copyright Act, R.S.C. 1985, c. C-42, ss. 2 “computer program” [am. c. 10 (4th Supp.), s. 1(3)],

“dramatic work” [am. 1993, c. 44, s. 53(2)], “every original literary, dramatic, musical and

artistic work” [idem], “library, archive or museum” [ad. 1997, c. 24, s. 1(5)], “work”, 2.1 [ad.

1993, c. 44, s. 54], Part I, 3(1) [am. 1988, c. 65, s. 62; am. 1993, c. 44, s. 55; am. 1997, c. 24, s.

3], 5(1) [repl. 1994, c. 47, s. 57(1); am. 1997, c. 24, s. 5], Part III, 27 [repl. 1997, c. 24, s. 15], 29

[idem, s. 18(1)], 29.1, 29.2, 30, 30.2 [ad. idem], Part IV, 34(1) [repl. idem, s. 20(1)].

Authors Cited

Concise Oxford Dictionary of Current English, 7th ed. Oxford: Oxford University Press, 1982,

“original”.

Craig, Carys J. “Locke, Labour and Limiting the Author’s Right: A Warning against a Lockean

Approach to Copyright Law” (2002), 28 Queen’s L.J. 1.

Driedger, Elmer A. Construction of Statutes, 2nd ed. Toronto: Butterworths, 1983.

Gervais, Daniel J. “Feist Goes Global: A Comparative Analysis of the Notion of Originality in

Copyright Law” (2002), 49 J. Copyright Soc’y U.S.A. 949.

Handa, Sunny. Copyright Law in Canada. Markham, Ont.: Butterworths, 2002.

Hitchcock, P. D. “Home Copying and Authorization” (1983), 67 C.P.R. (2d) 17.

Kierans, Patrick E., and Rowena Borenstein. “Injunctions — Interlocutory and Permanent”. In

Ronald E. Dimock, ed., Intellectual Property Disputes: Resolutions & Remedies, vol. 2.

Toronto: Thomson/Carswell, 2002, 15-1.

Litman, Jessica. “The Public Domain” (1990), 39 Emory L.J. 965.

McKeown, John S. Fox Canadian Law of Copyright and Industrial Designs, 4th ed. Toronto:

Thomson/Carswell, 2003 (loose-leaf).

New Shorter Oxford English Dictionary on Historical Principles, vol. 1. Oxford: Clarendon

Press, 1993, “countenance”.

Ricketson, Sam. The Berne Convention for the Protection of Literary and Artistic Works: 1886-

1986. London: Kluwer, 1987.

Vaver, David. Copyright Law. Toronto: Irwin Law, 2000.

APPEAL and CROSS-APPEAL from a judgment of the Federal Court of Appeal, [2002] 4 F.C.

213, 212 D.L.R. (4th) 385, 289 N.R. 1, 18 C.P.R. (4th) 161, [2002] F.C.J. No. 690 (QL), 2002

FCA 187, reversing in part a judgment of the Trial Division, [2000] 2 F.C. 451, 169 F.T.R. 1,

179 D.L.R. (4th) 609, 2 C.P.R. (4th) 129, 72 C.R.R. (2d) 139, [1999] F.C.J. No. 1647 (QL).

Appeal allowed and cross-appeal dismissed.

R. Scott Joliffe, L. A. Kelly Gill and Kevin J. Sartorio, for the appellant/respondent on cross-

appeal.

Roger T. Hughes, Q.C., and Glen A. Bloom, for the respondents/appellants on cross-appeal.

Kevin L. LaRoche, for the intervener the Federation of Law Societies of Canada.

Thomas G. Heintzman, Q.C., and Barry B. Sookman, for the interveners the Canadian

Publishers’ Council and the Association of Canadian Publishers.

Claude Brunet, Benoît Clermont and Madeleine Lamothe-Samson, for the interveners Société

québécoise de gestion collective des droits de reproduction (COPIBEC) and the Canadian

Copyright Licensing Agency (Access Copyright).

The judgment of the Court was delivered by

THE CHIEF JUSTICE —

I. Introduction — The Issues To Be Determined

1 The appellant, the Law Society of Upper Canada, is a statutory non-profit

corporation that has regulated the legal profession in Ontario since 1822. Since 1845, the Law

Society has maintained and operated the Great Library at Osgoode Hall in Toronto, a reference

and research library with one of the largest collections of legal materials in Canada. The Great

Library provides a request-based photocopy service (the “custom photocopy service”) for Law

Society members, the judiciary and other authorized researchers. Under the custom photocopy

service, legal materials are reproduced by Great Library staff and delivered in person, by mail or

by facsimile transmission to requesters. The Law Society also maintains self-service

photocopiers in the Great Library for use by its patrons.

2 The respondents, CCH Canadian Ltd., Thomson Canada Ltd. and Canada

Law Book Inc., publish law reports and other legal materials. In 1993, the respondent publishers

commenced copyright infringement actions against the Law Society, seeking a declaration of

subsistence and ownership of copyright in eleven specific works and a declaration that the Law

Society had infringed copyright when the Great Library reproduced a copy of each of the works.

The publishers also sought a permanent injunction prohibiting the Law Society from reproducing

these eleven works as well as any other works that they published.

3 The Law Society denied liability and counterclaimed for a declaration

that copyright is not infringed when a single copy of a reported decision, case summary, statute,

regulation or a limited selection of text from a treatise is made by the Great Library staff or one

of its patrons on a self-service photocopier for the purpose of research.

4 The key question that must be answered in this appeal is whether the Law

Society has breached copyright by either (1) providing the custom photocopy service in which

single copies of the publishers’ works are reproduced and sent to patrons upon their request or by

(2) maintaining self-service photocopiers and copies of the publishers’ works in the Great

Library for use by its patrons. To answer this question, the Court must address the following

sub-issues:

(1) Are the publishers’ materials “original works” protected by copyright?

(2) Did the Great Library authorize copyright infringement by maintaining self-service

photocopiers and copies of the publishers’ works for its patrons’ use?

(3) Were the Law Society’s dealings with the publishers’ works “fair dealing[s]” under s. 29 of

the Copyright Act, R.S.C. 1985, c. C-42, as amended?

(4) Did Canada Law Book consent to have its works reproduced by the Great Library?

5 The publishers have filed a cross-appeal in which they submit that, in

addition to infringing copyright by reproducing copies of their works, the Law Society infringed

copyright both by faxing and by selling copies of the publishers’ copyrighted works through its

custom photocopy service. The publishers also contend that the Great Library does not qualify

for the library exemption under the Copyright Act and, finally, that they are entitled to an

injunction to the extent that the Law Society has been found to infringe any one or more of their

copyrighted works. The four sub-issues that the Court must address on this cross-appeal are:

(1) Did the Law Society’s fax transmissions of the publishers’ works constitute communications

“to the public” within s. 3(1)(f) of the Copyright Act so as to constitute copyright infringement?

(2) Did the Law Society infringe copyright by selling copies of the publishers’ works contrary to

s. 27(2) of the Copyright Act?

(3) Does the Law Society qualify for an exemption as a “library, archive or museum” under ss. 2

and 30.2(1) of the Copyright Act?

(4) To the extent that the Law Society has been found to infringe any one or more of the

publishers’ copyrighted works, are the publishers entitled to a permanent injunction under s.

34(1) of the Copyright Act?

6 With respect to the main appeal, I conclude that the Law Society did not

infringe copyright by providing single copies of the respondent publishers’ works to its members

through the custom photocopy service. Although the works in question were “original” and thus

covered by copyright, the Law Society’s dealings with the works were for the purpose of

research and were fair dealings within s. 29 of the Copyright Act. I also find that the Law

Society did not authorize infringement by maintaining self-service photocopiers in the Great

Library for use by its patrons. I would therefore allow the appeal.

7 On the cross-appeal, I conclude that there was no secondary infringement

by the Law Society; the fax transmissions were not communications to the public and the Law

Society did not sell copies of the publishers’ works. In light of my finding on appeal that the

Law Society’s dealings with the publishers’ works were fair, it is not necessary to decide

whether the Great Library qualifies for the library exemption. This said, I would conclude that

the Great Library does indeed qualify for this exemption. Finally, in light of my conclusion that

there has been no copyright infringement, it is not necessary to issue an injunction in this case. I

would dismiss the cross-appeal.

…

(a) The Law

48 Before reviewing the scope of the fair dealing exception under the

Copyright Act, it is important to clarify some general considerations about exceptions to

copyright infringement. Procedurally, a defendant is required to prove that his or her dealing

with a work has been fair; however, the fair dealing exception is perhaps more properly

understood as an integral part of the Copyright Act than simply a defence. Any act falling within

the fair dealing exception will not be an infringement of copyright. The fair dealing exception,

like other exceptions in the Copyright Act, is a user’s right. In order to maintain the proper

balance between the rights of a copyright owner and users’ interests, it must not be interpreted

restrictively. As Professor Vaver, supra, has explained, at p. 171: “User rights are not just

loopholes. Both owner rights and user rights should therefore be given the fair and balanced

reading that befits remedial legislation.”

49 As an integral part of the scheme of copyright law, the s. 29 fair dealing

exception is always available. Simply put, a library can always attempt to prove that its dealings

with a copyrighted work are fair under s. 29 of the Copyright Act. It is only if a library were

unable to make out the fair dealing exception under s. 29 that it would need to turn to s. 30.2 of

the Copyright Act to prove that it qualified for the library exemption.

50 In order to show that a dealing was fair under s. 29 of the Copyright Act, a

defendant must prove: (1) that the dealing was for the purpose of either research or private study

and (2) that it was fair.

51 The fair dealing exception under s. 29 is open to those who can show that

their dealings with a copyrighted work were for the purpose of research or private study.

“Research” must be given a large and liberal interpretation in order to ensure that users’ rights

are not unduly constrained. I agree with the Court of Appeal that research is not limited to non-

commercial or private contexts. The Court of Appeal correctly noted, at para. 128, that

“[r]esearch for the purpose of advising clients, giving opinions, arguing cases, preparing briefs

and factums is nonetheless research.” Lawyers carrying on the business of law for profit are

conducting research within the meaning of s. 29 of the Copyright Act.

52 The Copyright Act does not define what will be “fair”; whether something

is fair is a question of fact and depends on the facts of each case. See McKeown, supra, at p. 23-

6. Lord Denning explained this eloquently in Hubbard v. Vosper, [1972] 1 All E.R. 1023 (C.A.),

at p. 1027:

It is impossible to define what is ‘fair dealing’. It must be a question of degree. You must

consider first the number and extent of the quotations and extracts. Are they altogether too many

and too long to be fair? Then you must consider the use made of them. If they are used as a

basis for comment, criticism or review, that may be a fair dealing. If they are used to convey the

same information as the author, for a rival purpose, that may be unfair. Next, you must consider

the proportions. To take long extracts and attach short comments may be unfair. But, short

extracts and long comments may be fair. Other considerations may come to mind also. But, after

all is said and done, it must be a matter of impression. As with fair comment in the law of libel,

so with fair dealing in the law of copyright. The tribunal of fact must decide.

53 At the Court of Appeal, Linden J.A. acknowledged that there was no set test

for fairness, but outlined a series of factors that could be considered to help assess whether a

dealing is fair. Drawing on the decision in Hubbard, supra, as well as the doctrine of fair use in

the United States, he proposed that the following factors be considered in assessing whether a

dealing was fair: (1) the purpose of the dealing; (2) the character of the dealing; (3) the amount

of the dealing; (4) alternatives to the dealing; (5) the nature of the work; and (6) the effect of the

dealing on the work. Although these considerations will not all arise in every case of fair

dealing, this list of factors provides a useful analytical framework to govern determinations of

fairness in future cases.

(i) The Purpose of the Dealing

54 In Canada, the purpose of the dealing will be fair if it is for one of the

allowable purposes under the Copyright Act, namely research, private study, criticism, review or

news reporting: see ss. 29, 29.1 and 29.2 of the Copyright Act. As discussed, these allowable

purposes should not be given a restrictive interpretation or this could result in the undue

restriction of users’ rights. This said, courts should attempt to make an objective assessment of

the user/defendant’s real purpose or motive in using the copyrighted work. See McKeown, supra,

at p. 23-6. See also Associated Newspapers Group plc v. News Group Newspapers Ltd., [1986]

R.P.C. 515 (Ch. D.). Moreover, as the Court of Appeal explained, some dealings, even if for an

allowable purpose, may be more or less fair than others; research done for commercial purposes

may not be as fair as research done for charitable purposes.

(ii) The Character of the Dealing

55 In assessing the character of a dealing, courts must examine how the works

were dealt with. If multiple copies of works are being widely distributed, this will tend to be

unfair. If, however, a single copy of a work is used for a specific legitimate purpose, then it may

be easier to conclude that it was a fair dealing. If the copy of the work is destroyed after it is

used for its specific intended purpose, this may also favour a finding of fairness. It may be

relevant to consider the custom or practice in a particular trade or industry to determine whether

or not the character of the dealing is fair. For example, in Sillitoe v. McGraw-Hill Book Co.

(U.K.), [1983] F.S.R. 545 (Ch. D.), the importers and distributors of “study notes” that

incorporated large passages from published works attempted to claim that the copies were fair

dealings because they were for the purpose of criticism. The court reviewed the ways in which

copied works were customarily dealt with in literary criticism textbooks to help it conclude that

the study notes were not fair dealings for the purpose of criticism.

(iii) The Amount of the Dealing

56 Both the amount of the dealing and importance of the work allegedly

infringed should be considered in assessing fairness. If the amount taken from a work is trivial,

the fair dealing analysis need not be undertaken at all because the court will have concluded that

there was no copyright infringement. As the passage from Hubbard indicates, the quantity of the

work taken will not be determinative of fairness, but it can help in the determination. It may be

possible to deal fairly with a whole work. As Vaver points out, there might be no other way to

criticize or review certain types of works such as photographs: see Vaver, supra, at p. 191. The

amount taken may also be more or less fair depending on the purpose. For example, for the

purpose of research or private study, it may be essential to copy an entire academic article or an

entire judicial decision. However, if a work of literature is copied for the purpose of criticism, it

will not likely be fair to include a full copy of the work in the critique.

(iv) Alternatives to the Dealing

57 Alternatives to dealing with the infringed work may affect the

determination of fairness. If there is a non-copyrighted equivalent of the work that could have

been used instead of the copyrighted work, this should be considered by the court. I agree with

the Court of Appeal that it will also be useful for courts to attempt to determine whether the

dealing was reasonably necessary to achieve the ultimate purpose. For example, if a criticism

would be equally effective if it did not actually reproduce the copyrighted work it was criticizing,

this may weigh against a finding of fairness.

(v) The Nature of the Work

58 The nature of the work in question should also be considered by courts

assessing whether a dealing is fair. Although certainly not determinative, if a work has not been

published, the dealing may be more fair in that its reproduction with acknowledgement could

lead to a wider public dissemination of the work — one of the goals of copyright law. If,

however, the work in question was confidential, this may tip the scales towards finding that the

dealing was unfair. See Beloff v. Pressdram Ltd., [1973] 1 All E.R. 241 (Ch. D.), at p. 264.

(vi) Effect of the Dealing on the Work

59 Finally, the effect of the dealing on the work is another factor warranting

consideration when courts are determining whether a dealing is fair. If the reproduced work is

likely to compete with the market of the original work, this may suggest that the dealing is not

fair. Although the effect of the dealing on the market of the copyright owner is an important

factor, it is neither the only factor nor the most important factor that a court must consider in

deciding if the dealing is fair. See, for example, Pro Sieben Media AG v. Carlton UK Television

Ltd., [1999] F.S.R. 610 (C.A.), per Robert Walker L.J.

60 To conclude, the purpose of the dealing, the character of the dealing, the

amount of the dealing, the nature of the work, available alternatives to the dealing and the effect

of the dealing on the work are all factors that could help determine whether or not a dealing is

fair. These factors may be more or less relevant to assessing the fairness of a dealing depending

on the factual context of the allegedly infringing dealing. In some contexts, there may be factors

other than those listed here that may help a court decide whether the dealing was fair.

4. William F. Patry, 4 Patry on Copyright, § 10:2, Thomson Reuters, 2011.

Patry on Copyright

[highlight and emphasis added]

Database updated August 2011

William F. Patry

Chapter

10. The Fair Use Defense

II. Origins and Purpose of Fair Use

References

§ 10:2. Generally

West's Key Number Digest

West's Key Number Digest, Copyrights and Intellectual Property 53.2

Unlike Athena, the doctrine of fair use did not spring forth fully formed. Yet, while the scope of

its application and the contours of its features were filled in gradually, still the basic foundation

and rationale were established remarkably early. In the century from 1740 to 1839, English

judges developed a relatively coherent set of principles governing the unconsented-to use of a

first author's work by a subsequent author or critic. By 1841, U.S. Supreme Court Justice Joseph

Story, sitting as a circuit justice in Folsom v. Marsh,[1] was able to gather these principles

together into a formulation of fair use that served as the bedrock for future decision making and

legislation on the subject. So well did Justice Story synthesize the doctrine that later English

courts looked to his expression of the concept for guidance,[2] while Congress, in the 1976

Copyright Act, distilled his principles into the four fair use factors enumerated in Section 107.[3]

English judges were quite explicit in articulating their rationale for permitting the unconsented-to

use of one author's work by a subsequent author. That rationale, found initially in the “fair

abridgment” context,[4] was that the second author, through a good faith productive use of the

first author's work, had, in effect, created a new work that would itself benefit the public.[5]

Since the 1710 English Statute of Anne gave no guidance on the standards to be applied in

determining infringement, the English courts looked to the statute's purpose of encouraging

authors to “Compose and Write Useful Books.”[6] Fair use was believed to be necessary to

fulfill that purpose. English judges accordingly acted boldly to achieve that purpose. [6.10]

Operating under a similar lack of statutory guidance and a similar (but constitutional) goal of

promoting “the Progress of Science,” U.S. courts incorporated and further developed the fair use

doctrine to ensure that subsequent authors and the public may build upon the work of earlier

authors.[7]

Fair use recognizes that much intellectual activity is based upon the efforts of others, and

frequently involves referential activity.[8] As Professor Zechariah Chafee noted: “The world

goes ahead because each of us builds on the work of our predecessors. ‘A dwarf standing on the

shoulders of a giant can see farther than the giant himself.’ Progress would be stifled if the author

had a complete monopoly of everything in his book.”[9] Similarly, the Supreme Court observed

in Campbell v. Acuff-Rose Music, Inc.,[10] fair use “permits [and requires] courts to avoid rigid

application of the copyright statute, when, on occasion, it would stifle the very creativity which

that law is designed to foster.”[11] Fair use is designed to perform the vital constitutional goal of

ensuring that the balance between encouraging authors to create through the grant of a limited

monopoly and the need to permit reasonable, unconsented-to and uncompensated uses by second

authors and the public is not upset by overbroad assertion of rights.[12] Fair use should not, as

Judge Pierre Leval put it, “be considered a bizarre, occasionally tolerated departure from the

grand conception of the copyright monopoly. To the contrary, it is a necessary part of the overall

design.”[13]

Similarly, in CCH Canadian Ltd. v. Law Society of Upper Canada,[14] involving the Great

Library's fulfillment of request-based reproductions, the Canadian Supreme Court well-

articulated that exceptions to copyright (in its case fair dealing, a kissing cousin of fair use) are a

part of the system, not a derogation from it. In interpreting the Canadian fair dealing provision,

the Court wrote that they “must not be interpreted restrictively,” but rather accorded “large and

liberal interpretation” so that “users' rights” are not impeded.

The concept of users' rights runs into the conventional wisdom that fair use and fair dealing are

affirmative defenses.[15] Section 107 is phrased as an affirmative defense; courts under the 1909

Act held fair use is an affirmative defense, and the Supreme Court twice held it is under the 1976

Act (Harper & Row; Campbell), but all this means is that an evidentiary burden has been

assigned to one party; that burden is slight, as it is for example in rebutting the presumption

provided to certificates of registration under Section 410(c). The more important point is how the

defense is evaluated once raised. Chief Justice MacLachlin put this point well in CCH:

Procedurally, a defendant is required to prove that his or her dealing with a work has been fair;

the fair dealing exception is perhaps more properly understood as an integral part of the

Copyright Act than simply a defence. Any act falling within the fair dealing defence will not be

an infringement of copyright. The fair dealing exception, like other exceptions in the Copyright

Act is a user's right. In order to maintain the proper balance between the rights of a copyright

owner and users' interests, it must not be interpreted restrictively. As Professor Vaver, has

explained, “User rights are not just loopholes, Both owners and user rights should therefore be

given the fair and balanced reading that befits remedial legislation.

What Judge Leval, Chief Judge MacLachlin, and the early common-law judges who created fair

use understood is that copyright is a system; it is not a thing, it is not a property right. Copyright

is a means to an end, the end being to encourage learning. All learning is a community

experience, and one that takes place over generations, over decades, over centuries. For any

system to function, it must take into account, in a meaningful, liberal way, the manner in which

humanity proceeds. In the case of copyright, this means that fair use must be viewed as an

integral part of the system, and not a begrudging exception to a Hobbesian state of nature where

ruthless enforcement of exclusive rights as private property is the ideal.

[FN1] 9 F. Cas. 342, No. 4901 (C.C.D. Mass. 1841).

[FN2] Scott v. Stanford, L.R. 3 Eq. 718, 722 (1867). Regrettably, the British abandoned fair use

in 1911 in favor of narrower, statutory “fair dealing” provisions. This step was criticized by the

great Mr. Justice Hugh Laddie in Copyright: Overstrength, Over-Regulated, Over-Rated, 18

E.I.P.R. 253, 258–259 (1996).

[FN3] See also Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 576, 114 S. Ct. 1164, 127 L.

Ed. 2d 500 (1994); Pierre Leval, Toward a Fair Use Standard, 103 Harv. L. Rev. 1105, 1110–

1112 (1990). See also Samuelson, Unbundling Fair Uses, 77 Fordham L. Rev. (forthcoming

2009).

[FN4] Gyles v. Wilcox, 2 Atk. 141 (1740). See also discussion of fair abridgment in Campbell,

510 U.S. at 576; Twin Peaks Productions, Inc. v. Publications Intern., Ltd., 996 F.2d 1366 (2d

Cir. 1993) (citing the author's fair use treatise). See also Vaver, Abridgements and Abstracts:

Copyright Implications 17 E.I.P.R. 225 (1995).

[FN5] Gyles, 2 Atk. 141. See also Cary v. Kearsley, 4 Esp. 168, 170–171 (1803).

[FN6] See § 1:6.

[FN6.10] See in particular Hawkesworth v. Newbery, Lofft 775, 775–776 (1774), which is a

description (by the reporter, Lofft) of an oral opinion:

The Lord Chancellor was of opinion that this abridgement of the work was not any violation of

the author's property whereon to ground an injunction.

That to constitute a true and proper abridgement of a work the whole must be preserved in its

sense: And then the act of abridgement is an act of understanding, employed in a carrying a large

work into a smaller corpus, and rendering it less expensive, and more convenient both to the time

and use of the reader. Which made an abridgement in the nature of a new and meritorious work.

That this had been done by Mr. Newbery, whose edition might be read in a fourth of the time,

and all the substance preserved, and conveyed in language as good or better than the original,

and in a more agreeable and useful manner. That [the Lord Chancellor] had consulted Mr. Justice

Blackstone whose knowledge and skill in the profession was universally known, and who as an

author had done honour to his country.

That they had spent some hours together, and were agreed that an abridgement, where the

understanding is employed in retrenching unnecessary and uninteresting circumstances, which

rather deaden the narration, is not an act of plagiarism upon the original work, nor against any

property of the author in it, but an allowable and meritorious work. And that this abridgement of

Mr. Newberry's falls within these reasons and descriptions.

[FN7] Campbell, 510 U.S. at 575 (quoting Stewart v. Abend, 495 U.S. 207, 236, 110 S. Ct. 1750,

109 L. Ed. 2d 184 (1990)).

[FN8] See Leval, 103 Harv. L. Rev. at 1108.

[FN9] The origins of the quoted passage, and its phrasing, have been the subject of much

scholarly interest, regardless of one's height. The most extensive look at the quote is by Robert

K. Merton in a 1965 book called, appropriately, “On the Shoulders of Giants.” A 1991 reprint,

called the “Post-Italianate Edition,” has a “Shandean Postscript” and a foreword by Umberto

Eco.

Many associate the saying with Isaac Newton: “If I have seen further it is by standing on ye

sholders of Giants.” Newton's remark first appeared in a February 5, 1676, letter to Robert

Hooke (1635–1703), and some have interpreted it as a sarcastic remark given Hooke's slight

build and a severely stooped nature. Hooke was not short, however, the two did apparently have

a falling out in 1672 over a presentation Newton made to the Royal Society showing that prisms

split white light rather than modifying it, which Hooke criticized. See

www.en.wikipedia.org/wiki/Robert_Hooke. Hooke was an astonishing polymath: a scientist,

inventor, and famous architect. See Robert Hooke and the English Renaissance (Chapman and

Kent eds. 2005); Chapman, England's Leonardo: Robert Hooke and the Seventeenth Century

Scientific Revolution (2004); Bennett et al., London's Leonardo: The Life of Robert Hooke

(2003). Both Newton and Hooke appear in Neal Stephenson's trilogy of novels The Baroque

Cycle (2003–2004).

Merton ascribes to Robert Burton's epic masterpiece The Anatomy of Melancholy the attribution

to Didacus Stella, but my edition of Burton (the 1977 Jackson edition) has Burton tracing it to

Plato's Banquet (p. 437 n.4). Wikipedia, though, has the most straightforward explanation:

The metaphor of dwarfs standing on the shoulders of giants (Latin: Pigmaei gigantum humeris

impositi plusquam ipsi gigantes vident) is first recorded in the 12th century, attributed to Bernard

of Chartres. It is often mistakenly attributed to Isaac Newton.

The attribution to Bernard is due to John of Salisbury, who writes in 1159 in his Metalogicon:

Bernard of Chartres used to say that we are like dwarfs on the shoulders of giants, so that we can

see more than they, and things at a greater distance, not by virtue of any sharpness of sight on

our part, or any physical distinction, but because we are carried high and raised up by their giant

size.

Didacus Stella took up the quote in the 16th century, and it became commonplace in the 17th

century.

Robert Burton (1577–1640) in The Anatomy of Melancholy (1621–51) quotes Didacus Stella:

I say with Didacus Stella, a dwarf standing on the shoulders of a giant may see farther than a

giant himself.

Later editors of Burton's misattributed the quote to Lucan. While Burton had, correctly, Didacus

Stella, in luc 10, tom. ii “Didacus on the Gospel of Luke, chapter 10; volume 2”, this became a

reference to Lucan's Pharsalia 2.10, where nothing of the kind is found.

Herbert, Jacula Prudentum, (1651):

A dwarf on a giant's shoulders sees farther of the two.

Isaac Newton famously remarked in a letter to Robert Hooke, dated 5 February 1676:

If I have seen a little further it is by standing on the shoulders of Giants.

The British Two Pound coin has the edge inscription STANDING ON THE SHOULDERS OF

GIANTS in commemoration of Newton.

Coleridge, The Friend (1828):

The dwarf sees farther than the giant, when he has the giant's shoulder to mount on

The 13th century stained glass of the south transept of the Chartres Cathedral may also be

influenced by the metaphor. The tall windows under the Rose Window show four major Old

Testament prophets Isaiah, Jeremiah, Ezekiel, and Daniel as gigantic figures, and the four New

Testament evangelists Matthew, Mark, Luke, and John as sitting on their shoulders. The

evangelists, though smaller, “see more” than the huge prophets (they saw the Messiah about

whom the prophets spoke).

The phrase also appears in the song “King of Birds” by the U.S. rock band R.E.M., which

includes the lyric, “standing on the shoulders of giants / leaves me cold.

Google Scholar has adopted “stand on the shoulders of giants” as its motto.

[FN10] 510 U.S. 569, 114 S. Ct. 1164, 127 L. Ed. 2d 500 (1994).

[FN11] 510 U.S. at 577, quoting Stewart 495 U.S. at 236.

[FN12] Eldred v. Ashcroft, 537 U.S. 186, 219–220, 123 S. Ct. 769, 154 L. Ed. 2d 683 (2003).

[FN13] Leval, 103 Harv. L. Rev. at 1110.

[FN14] [2004] 1 SCR 339.

[FN15] See infra § 10:9.

Westlaw. © 2011 Thomson Reuters. No Claim to Orig. U.S. Govt. Works.

PATRYCOPY § 10:2

END OF DOCUMENT