Out of the Great White North: The Canadian Copyright Licensing Agency v. York University

 

At a time when Australia is discussing fair use and fair dealing in the context of education the Federal Court of Canada has handed down its first decision on the fair dealing exception for education.  It found that copying by York University under its university guidelines does not constitute fair dealing, and thus is an infringement of copyright.

 

The facts

The Canadian collecting society Access administers the reproduction rights of published literary works in Canada (with the exception of Quebec). It licenses the reproduction of published works to users, collects licence fees from those users, and distributes the royalties to creators and publishers.

York University is an Ontario university and the third largest university in Canada. University staff choose what material to use in their courses, and the materials are distributed to students either as physical “coursepacks” or digital files on the university learning management system.

All coursepacks at York University were ordered through the university Copyright Clearance Centre within the university’s printing unit. The physical coursepacks were printed internally using university printing services, and also externally at third-party print shops licensed by Access. However, a handful of staff had their coursepacks printed at a non-licensed print shop, the Keele Copy Centre. These staff assumed either that copyright had been “taken care of” either by York University or Keele Copy Centre, or that their copying was covered under fair dealing. This unauthorised copying was discovered by Access in January 2012. Access also noted that it had previously taken action against Keele Copy Centre for unauthorised copying in 2008.

York University had a licensing agreement with Access from 1994 to 2010, which provided for the payment of fees regarding the creation of coursepacks and similar reproductions. In March 2010, Access proposed a change in its tariff for the 2011-2013 period, however this tariff was not certified at the time that York University’s licensing agreement with Access expired in December 2010. After this expiration, York University continued to work under an interim tariff arrangement with Access for eight months, after which it notified Access of its unilateral decision to “opt out” of the licensing arrangement. At the same time, York University developed its own “Fair Dealing Guidelines” in order to shield itself from the consequences of copyright claims, and thus avoid the need for future tariff agreements with Access. Notably, just before the expiry of its Access agreement, York University informed its staff that after the expiry, copying of materials could still be done provided that there was a licence from the copyright owner, or the copying was done within its definition of “fair dealing” under the guidelines.

In 2012, the Canadian Copyright Act was amended to expand the exception regime to include a fair dealing for the purpose of education.

 

The dispute

The dispute between Access and York University centred on the unauthorised copying of material done by York teaching staff at the Keele Copy Centre, and enforcing the payment of the related tariffs. In filing its defence, York University also filed a counterclaim seeking a declaration that any reproductions made under its “Fair Dealing Guidelines” constituted a fair dealing for the purpose of education under section 29 of the Canadian Copyright Act.

 

The unauthorised copying at Keele Copy Centre

Access sought payment under the interim tariff for the period of 1 September 2011 to 31 December 2013 for the copying done by York University professors at the Keele Copy Centre. York University claimed that the interim tariff, being an interim tariff and not a certified tariff, was not mandatory or properly established. The Federal Court dismissed York University’s arguments on this point. In the alternative, York University also argued that there had been no breach of the interim tariff at the Keele Copy Centre, or if there was, York University was not responsible for those breaches.

The court found that the copying done at the Keele Copy Centre were clearly in breach of the obligations under the interim tariff. Furthermore, the court found that York University was vicariously liable for those breaches, as the copying was done by York University professors. Although York University had not specifically authorised the professors to make the unauthorised coursepacks at Keele Copy Centre, the professors were York University employees, making copies in the scope of their employment duties for the benefit of York University. As such, the copying done at the Keele Copy Centre was so closely connected to the professor’s employment as to render York University vicariously liable. Importantly, the court specifically noted that although York University acknowledged that its professors was outside its “Fair Dealing Guidelines”, York University did not take any significant disciplinary or remedial action against the professors.

 

The university “Fair Dealing Guidelines”

In filing its defence, York University specifically sought a declaration from the court that any copying done by its staff under its “Fair Dealing Guidelines” constituted a fair dealing under the Canadian Copyright Act. The court did not make this declaration.

As of 2012, the Canadian Copyright Act contains a specific fair dealing exception for the purpose of education. Like Australia’s fair dealing regime, the exception requires a two-part consideration of purpose and fairness.

The Canadian Federal Court in this case found that York University’s dealing with copyright material satisfied the first test in that its copying was done for an educational purpose. However, with regards to the second test of fairness, the court found that York University’s “Fair Dealing Guidelines” were not fair either in their terms or their application.

To assess whether or not a dealing is “fair”, the Canadian Copyright Act requires a number of factors to be considered. In finding that York University’s “Guidelines” were not fair, the court noted the following:

  • The character of the dealing: The copying done by York University was wide-ranging and in large volumes, which tends towards unfairness, particularly in light of York University’s lax approach to copyright compliance;
  • The amount of the dealing: That there was nothing fair about the amount of copying done by York University (aggregated at 17.6 million copies in 2013 under its “Guidelines”);
  • Alternatives to the dealing: York University did not actively consider using alternatives that already exist or are in development;
  • The nature of the copyright work: The “Guidelines” are not established to motivate the dissemination of works used by York University, which are works that required a high level of skill, creativity, judgment, and investment by authors and publishers seeking to make a living; and
  • The effect of the dealing: The effect of the dealing by York University under its “Guidelines” contributed to a decrease in the market for the works, and that copying done by York University under its “Fair Dealing Guidelines” competes in the market for original works, both in the short-term and long-term.

In addition to its consideration of the above factors to the “Guidelines”, the Federal Court of Canada took particular note of how York University made no real effort to review, audit, or enforce its own Guidelines. The court noted how the York University professors who operated outside the “Guidelines” by using the Keele Copy Centre were not held accountable for their actions, which in the court’s eyes were consistent with York University’s wilfully blind approach to copyright compliance, underscoring the unfairness of their use. Given the background of the increase in tariff fees, the court commented,

“It is evident that York created the Guidelines and operated under them primarily to obtain for free that which they had previously paid for. One may legitimately ask how such “works for free” could be fair if fairness encompasses more than one person’s unilateral benefit.”

 

Lessons

Although a Canadian case under the specifics of Canadian copyright law, this case is an important indication of how, even in a changing, increasingly digital environment, any use of copyright material still needs to be fair. Simply using copyright material for a specific purpose (eg., research or study, reporting the news, criticism or review) is not enough; if the use is without permission or payment, the impact on the copyright owner must be taken into account.

 

Comment

Given that the Productivity Commission in Australia has queried evidence about the impact of the extension of fair dealing to include education has had on Canadian publishing, it is important to note how Canadian Federal Court accepted Access’s evidence on market impact:

“While much of Access’s evidence of impacts on the market was general in nature, it establishes that the likelihood of negative impacts from York’s own Guidelines will be similar. This is sensible given the massive amounts of copying at issue, the history of payments to Access prior to York opting out of the Interim Tariff, and the size of York as the second largest university in Ontario.

Therefore, the Court concludes that the Guidelines have caused and will cause material negative impacts on the market for which Access would otherwise have been compensated for York’s copying.”

 

Decision available at: http://decisions.fct-cf.gc.ca/fc-cf/decisions/en/item/232727/index.do