COPYRIGHT CORNER
LANDMARK CANADIAN LIBRARY COPYRIGHT CASE
August 2004
The traditional photocopy activities of the Law Society of Upper Canada were recently vindicated in an important copyright case. The Supreme Court of Canada unanimously held that the document delivery activities of the library through its custom photocopy service did not infringe publishers’ copyrights but were research based and fair.[1] This case most closely resembles the Williams and Wilkins decision in the United States from the early 1970s in which publishers sued the National Library of Medicine over similar activity.[2] The Canadian case is more far reaching and supportive of photocopying even to support the practice of law, which may be a commercial activity.
The Law Society is the self governing, nonprofit organization that regulates Ontario lawyers in the interest of the public. It offers services such as the Lawyer Referral Service and maintains a fund to help clients who have lost money because of a lawyer’s dishonesty. It promotes access to justice through two programs: Pro Bono Law Ontario and the Public Legal Education Task Force. The Law Society also has a Member’s Resource Centre that provides information to practicing attorneys. In many ways, it is similar to state bar associations in the United States.
The Law Society of Upper Canada’s Great Library (called Osgoode Hall) is an excellent library whose mission is: “ ... to meet the legal research and information needs of Law Society members by providing access to publications, documents and services necessary to the practice of law.” The library offers a variety of services to members including reference, electronic reference, access to electronic databases and legal research seminars. It has coin operated photocopier machines in the library and also offers the Custom Photocopy Service (CPS) to members and to law students. The CPS is a document delivery service that provides single copies of published materials at a cost of $.30 per page plus $15 handling fee for up to three items in a single request. For a higher fee, the service will also fax materials and provide rush service. The CPS is operated on a nonprofit basis and has been available to members since 1954.
The library has published guidelines relating to this service that detail the purpose, amount of copying, etc. For example, the purposes for which the CPS may be used are “research, review, private study, and criticism, as well as use in court, tribunal, and government proceedings.” Individuals must identify themselves and the purpose of their request at the time it is made. The guidelines further state that “As to the amount of copying, discretion must be used.” Copies of a single case, one article or statutory reference are generally provided without question, but “Requests for substantial copying from secondary sources, defined as in excess of five percent of the volume or more than two citations from one volume may be refused.” The Great Library believes that its photocopy services are essential since the huge bulk of the collection is non-circulating. The huge majority of its copying is Canadian court decisions.
In 1993, the Law Society was sued for copyright infringement by CCH Canadian Limited, Thomson Canada Limited (Carswell), and Canada Law Book Inc. The trial court held that the Law Society had infringed copyright in certain works.[3][4] The Federal Court of Appeal allowed the publishers' appeal in part and found that all of the works were original and therefore covered by copyright. Thus, the library infringed copyright when it reproduced this material for its users without a license. The Supreme Court reversed and ruled in the Law Society’s favor on March 4, 2004.
The library believed that the litigation revealed that publishers were doing more than attempting to halt its document delivery service. It believed that publishers wanted to require all lawyers and firms to pay license fees for copies of judicial decisions and limited extracts from secondary sources even when the lawyer’s purpose was research.[5]
The case has far-reaching impact in Canada and affects access to justice. The only way lawyers can provide excellent representation to their clients is to have access to court opinions and other materials which may not be available to them in their local areas. The Supreme Court affirmed that research, even that undertaken as a part of the for-profit practice of law, is nonetheless research to which fair dealing[6] may apply. “... [T]he custom copy service helps to ensure that legal professionals in Ontario can access the materials necessary to conduct the research required to carry out the practice of law.” The concept of research is not limited to private or nonprofit contexts but also includes research necessary to advise clients, prepare opinions, to argue cases and to prepare briefs or factums. The Court also recognized the Osgoode Hall’s mandate to providing the community with access to its large and important collection of legal materials. Moreover, a library, acting for a user may rely on fair dealing as a defense to copyright infringement, and neither the library nor the lawyer need seek a license to photocopy from publishers. The opinion also recognizes the Great Library’s good faith efforts to comply with copyright law and states that the library is not authorizes or encouraging copyright infringement by maintaining self service photocopiers and “posting a notice warning that it will not be responsible for any copies made in infringement of copyright.” Thus, the library cannot be held liable if a patron infringes copyright.[7]
The Court also focused on what a publishers’ copyright in a court opinion might include. A publisher may hold copyright in a headnote it produces and includes in a published volume of court opinions, but copyright does not extend to the court’s own words in the written opinion, even an edited version.[8] Thus, the headnotes should not be copied without a license to do so.
As important as this case is, it did not give lawyers a green light to copy any and everything in support of litigation or other legal work. To qualify as a “fair dealing” the copying must be for research and private study and only in circumstances that are “objectively fair.” For example, single copying of court opinions by a lawyer (or a library for a lawyer) may be fair dealing while multiple copies of the same case would not so qualify. Finally, lawyers should reproduce materials only to the extent necessary to complete the research they have undertaken.
Although this case applied only to photocopies of legal materials, other Canadian businesses may argue that their copying for research purposes falls under this decision. “By analogy, similar copying by most businesses (e.g., an analyst’s photocopying reports on a particular industry or technology in the course of research for his or her own report) is likely to be fair dealing,” at least within the copying limits imposed by the Osgoode Hall. Further, it could be argued that copying in forms other than photocopying is also covered.[9] The Law Society opinion is much more far reaching than any U.S. case decided to date. If it were a U.S. case, it would call into question the Texaco decision[10] relating to in-house photocopying in a for-profit company.
[1] See CCH Canadian Ltd. v. Law Society of Upper Canada, 236 D.L.R. (4th) 395 (S.C.C. Mar. 04, 2004). Also available at http://www.canlii.org/ca/cas/scc/2004/2004scc13.html.
[2] Williams & Wilkins Co. v. U.S. Court of Claims, 487 F.2d 1345 (1973), aff’d by 420 US 376 (1975).
[3] 2 F.C. 451 (Fed. T.D. Nov 09, 1999) and 184 D.L.R. (4th) 186 (Fed. T.D. Jan 21, 2000).
[4] 212 D.L.R. (4th) 385 (Fed. C.A. May 14, 2002).
[6] In Canada, the U.K. and other British Commonwealth countries, the law recognizes “fair dealing” instead of fair use. It is similar to fair use but not identical.
[7] This is also found in U.S. law. See 17 U.S.C. § 108(f)(1)-(2) (2000).
[8] This is similar to holdings in the United States, see Matthew Bender v. West Publishing Co., 158 F.3d 674 (2d Cir. 1998).
[9] See Business Research & Copyright Infringement, No. 2004-12T, March 12, 2004, available at http://www.torys.com.