Fair Dealing and the University of Toronto

The University of Toronto has sued a tutoring company, Easy Group Inc., for copyright infringement. Here is the U of T announcement dated May 11, 2022.

Since there is growing interest in this case, I have obtained the pleadings and post them here:

•   Statement of Claim dated May 9, 2022
•   Statement of Defence and Counterclaim dated June 24, 2022
•  Amended Statement of Defence and Counterclaim dated August 18, 2022
•  Reply and Statement of Defence to Counterclaim dated September 9, 2022

I make no comment on this case at this time, other than that it is clear from the pleadings that fair dealing could be a very major issue.

Speaking of fair dealing, U of T has recently revised its 2012 Fair Dealing Guidelines. Here’s the announcement from October 21, 2022 with links.

Unlike the 2012 Guidelines, I had no involvement in the 2022 revision. Other than that, I make no comment at this time on the 2022 U of T revised Fair Dealing Guidelines.

HPK

Access Copyright Proposed Tariffs: Is the Copyright Board Turning Over New Leaves?

On March 6, 2019 the Copyright Board appears to have turned over one new leaf by asking for comments more than three years after the close of the hearing from “affected persons” on the “feasibility and clarity of the terms of the tariff” with respect to Access Copyright’s proposed tariffs for the Post-Secondary Educational (“PSE”) Institutions.  I reported on this here. Those entitled to comment potentially included lots of people and institutions that may have withdrawn from this nearly nine-year-old saga or may even have never engaged. In the past, the Board has limited acceptance of comments to a short window following the close of the oral hearing.

The invitation resulted in 11 submissions, which have conveniently been made available here from the Board itself – a helpful and timely development and another new leaf in itself. (Publishing filed court and tribunal public documents is a crucial component of access to justice). From the users’ point of view, these submissions feature a comforting degree of consistency and, at the same time, a considerable degree of independent analysis and approach.

There are some common themes throughout most of these submissions. These are as follows:

1.     The tariffs should not be mandatory and should expressly so state. As clearly stated by CARL, for example (to which I was pleased to provide a helping hand):

Our first comment is that there should be text at the outset of both drafts indicating that use of the tariff is voluntary. This flows from the decision of the Supreme Court of Canada in Canadian Broadcasting Corp. v. SODRAC 2003 Inc. The proposed tariffs should therefore clearly state that, while Access Copyright cannot demand higher royalties or more onerous terms and conditions than those approved by the Board, the duty to pay such royalties and comply with the related terms and conditions will only apply to users who have paid or have offered to pay the royalties under such a tariff. (Footnote omitted)

2.     A number of the submissions pointed out the practical and even the legal difficulties with a retroactive tariff that reaches back almost a decade. How are institutions supposed to reconstruct records of what material they used so long ago? How are institutions supposed to known what was in Access Copyright’s repertoire at the time? Even now, that repertoire database, if it even exists, is not available to users. Some institutions pointed explicitly to the potential invalidity of retroactive tariffs in light of the venerable 1954  Maple Leaf Broadcasting v. Composers, Authors and Publishers Association of Canada Ltd., [1954] SCR 624 (“Maple Leaf”)  decision from the Supreme Court of Canada (“SCC”). That decision was concerned with a tariff on radio stations that was retroactive by less than three months and the SCC – with some rather explicit reluctance – permitted it as a “practical necessity” but stated clearly that it was the "implied duty" of the Board to proceed with "all possible expedition" in cases where tariffs may have a retroactive effect. In the recent CBC v. SODRAC 2015 SCC 57 case in the SCC, I cited this same Maple Leaf case in the factum prepared along with Prof. Ariel Katz and Prof. David Lametti (as he then was). There was considerable interest during the oral argument in the retroactivity issue and the SCC commented on it very explicitly in this unusual footnote – which may be seen as a warning signal to collectives and an invitation to users seeking judicial review of retroactive tariffs:

[2] During the hearing before this Court, counsel for the interveners the Centre for Intellectual Property Policy and Ariel Katz briefly raised concerns regarding the Board’s power to issue retroactively binding decisions in general. That issue was not squarely before this Court in this case, and I do not purport to decide broader questions concerning the legitimacy of or limits on the Board’s power to issue retroactive decisions here.

CARL also mentioned the Board’s own 2008 decision in SOCAN 22.B to 22.G Tariffs wherein the Board found that it would be “highly disruptive, and therefore ipso facto unfair”  to certify a tariff that, among other considerations, was for a period (1996 to 2006) that is long past.“ This decision was upheld by the Federal Court of Appeal in Society of Composers, Authors and Music Publishers of Canada v. Bell Canada, 2010 FCA 139 at paras. 20 and 26, a case which I argued. I’ve discussed the Maple Leaf case before.

Clearly, the Board has not proceeded “with all possible expedition” in this nine-year-old proceeding and it would seem inconceivable that there could be any reasonable basis to justify a nine-year retroactive tariff as a “practical necessity”. The University of Toronto has wisely submitted that “The effect of the extreme delay in the present case raises a series of issues that merit full, transparent and detailed review, with input from any affected party, before a final decision regarding the tariffs is made.”  In light of the case law, any retroactivity in this instance may be vulnerable.

There are a number of possible twists and turns ahead on both the “mandatory” and “retroactive” issues. We should get some guidance on the “mandatory” issue in the next weeks or months from the Federal Court of Appeal in the appeal of the York University case, where the issue loomed large, although it was not addressed as fully as it would have been if my client CARL had been allowed to intervene. In any event, this “mandatory” issue may very likely end up in the SCC, unless Parliament clarifies the law as enunciated by the SCC as I have suggested to the INDU Committee.

3.     A number of institutions also raised other important points, such as:

a.      The need for Access Copyright to make its repertoire database accessible online;

b.     The need to point out that fair dealing may permit copying in excess of any bright line set out in the tariff language;

c.      The possible inclusion of a transactional license mechanism;

d.     The overbroad definition of “copy” which goes beyond the legislation, for example by including linking or display; and,

e.      The overreaching and intrusive records and reporting provisions.

Overall, these 11 submissions raise some existentially important points in the terms of the “feasibility” of these tariffs. If the Board intends to approve a tariff that can survive judicial review and/or be enforceable, it may need to turn over even more new leaves, as it were. Maybe that will involve rediscovering the Maple Leaf, as in the landmark 1954 SCC Maple Leaf decision. And following the 2015 SCC decision in CBC v. SODRAC – which would indicate that, if a tariff provided pursuant the voluntary “arbitration” regime is not mandatory, then a fortiori, the use of the general regime cannot result in a tariff that is mandatory as against unwilling institutional users who clear their copyright obligations more efficiently in other ways. How can it be that such an institution, which may have inadvertently made even only a single copy of single work in Access Copyright’s repertoire in manner that might amount to technical infringement, be liable for millions of dollars for maybe tens of thousands of FTEs for the term of the tariff?  And here’s another potentially crucial issue.  If the current proposed tariffs start to involve constitutional issues, as the redoubtable Prof. Katz suggests in his submission, –  given that education is a provincial power – we could see some interesting arguments about a concept  much beloved by the SCC known as the “living tree”.

Enough arborist allusions. No doubt because spring is so late this year. Can’t wait for it and all the little maple saplings in my back yard…

And at the risk of reopening Canada’s national anthem debate, I include a wonderful rendition of “The Maple Leaf Forever More” by the legendary and world-renowned Canadian tenor Edward Johnson (1878 – 1959) – who became the manager of the Metropolitan Opera in New York and whose name is on the Faculty of Music building at U of T, where I played at the opening ceremony and spent many years.

HPK

Copyright Conference at U of T on October 2, 2015 – Will Include One Hour Presentation by the Honourable Ian Binnie

This looks like it will be a very interesting and potentially very important copyright conference at U of T on October 2, 2015.

The star of the event will no doubt be the Honourable Ian Binnie,C.C., Q.C, a retired Supreme Court of Canada justice whose decision in Théberge v. Galerie d’Art du Petit Champlain inc., [2002] 2 S.C.R. 336, 2002 SCC 34 arguably kicked off and set the tone for the modern era of IP jurisprudence in Canada. It will be recalled that he famously opined in that case that:

The proper balance among these and other public policy objectives lies not only in recognizing the creator’s rights but in giving due weight to their limited nature.  In crassly economic terms it would be as inefficient to overcompensate artists and authors for the right of reproduction as it would be self-defeating to undercompensate them.  Once an authorized copy of a work is sold to a member of the public, it is generally for the purchaser, not the author, to determine what happens to it. 

He retired from the Court in 2011.

There will be other notable speakers and three panels. One may anticipate some sparks flying, for example in the panels on Fair Dealing and its Application to Educational Institutions and Review of Copyright Board: Past Behaviours and Expectations for the Future. Yours truly will be on the latter panel.

The conference is very reasonably priced and space is very limited. I expect that this will be a “hot ticket” event and early registration is strongly encouraged.

BTW, there’s a reasonably good chance that we will have a decision by the time of the conference from the Supreme Court of Canada in the CBC v. SODRAC case, which could make the event even more interesting.

The program is below.

HPK

Networking Coffee	8:00 am – 8:30 am
The Honourable Ian Binnie	8:30 am – 9:30 am
Break	9:30 am – 9:45 am
Making Sense of Fair Dealing and its Application to Educational Institutions J. Aidan O’Neill, Erin Finlay, Ysolde Gendreau, & Inba Kehoe	9:45 am – 10:45 am
Coffee Break	10:45 am – 11:00 am
Copyright Futures Jean Dryden, Mistrale Goudreau, Martin Zeilinger, & Victoria Owen	11:00 am – 12:00 pm
Lunch	12:00 pm – 12:45 pm
Ariel Katz	12:45 pm – 1:45 pm
Coffee Break	1:45 pm – 2:00 pm
Review of Copyright Board: Past Behaviours and Expectations for the Future  Paul Halucha, Gilles Daigle, Howard Knopf, & Stephen Spong	2:00 pm – 3:00 pm
Break	3:00 pm – 3:15 pm
Casey Chisick	3:15pm – 4:15pm
Closing Remarks	4:15pm – 4:30pm
Networking Cocktail Reception: Thomas Fisher Rare Book Library	5:30 pm – 7:00 pm

University of Toronto’s Announcement re Non-renewal of Access Copyright License

Here’s U of T’s Press Release re today’s announcement that it will not renew its current license with Access Copyright.  I have added some highlight and a brief comment below.
************

Access Copyright Negotiations

PDAD&C#30, 2013-14

To:	PDAD&C
From:	Cheryl Regehr, Vice-President and Provost
Date:	December 11, 2013
Re:	Access Copyright Negotiations

---

PLEASE CIRCULATE WIDELY TO FACULTY MEMBERS AND STAFF

The University of Toronto announces that, despite good faith efforts by both parties, we have been unable to reach an agreement with Access Copyright for a renewal of the current License at a price that we believe fairly values the service that Access Copyright provides.

The University sought to obtain a License that reflected the significant evolution in copyright regulation that has occurred over the term of the current License, including the amendments to the Copyright Act in 2012, and the Supreme Court’s expansive approach to the user right of fair dealing in its 2012 decisions.  We also tried to obtain a royalty rate that took into account changing technology, increased availability of Open Access material, changing publishing practices, and changing user expectations.  

This outcome means that, in the year ahead, the University will be operating for the first time in many years without a License with Access Copyright.  The University, therefore, will continue to be diligent about compliance with copyright law, making proper use of other licenses, of fair dealing, and of other permissions.  We will continue to educate our faculty regarding copyright compliance, and will intensify efforts to make expert resources available through our Libraries to faculty so that they can make the widest possible range of excellent teaching and study materials available to their students in a manner that fully respects the law.  The University will also continue to monitor carefully Access Copyright’s litigation against York University and its application to the Copyright Board for a Tariff.

The University has indicated to Access Copyright that we will require an up-to-date list of copy shops that are licensed by Access Copyright for coursepack copying that will occur in 2014 and beyond.  We hope that Access Copyright will provide this information in the next few days.

The University of Toronto’s community consists of both users and creators of copyrighted material. The University remains committed to diligent compliance with the laws that address the rights of both.  In addition, the University spends over $27 million annually on Library acquisitions, including licensed material and electronic resources, and also supports scholarly publishing through the University of Toronto Press. 

*****

Brief comment – again, my own personally:

·          U of T is, once again, showing leadership on this issue. The license that is about to expire was controversial at the time it was announced – but was brilliantly strategic in its short duration and its expiry on December 31, 2013 unless renewed – which it won’t be.

·          U of T has also clearly reminded everyone that that there are other pending fronts and fora involving AC and universities. One is at the Copyright Board, where U of T recently filed an important and notable comment supporting Prof. Prof. Katz’s request for a reference to the Federal Court of Appeal. Another is the York University litigation. The whole educational community should be watching these situations very closely.

HPK

Access Copyright's Press Release re: "Canada's Writers and Publishers Disappointed by U of T and Western's Non-Renewal of Licence"

I shall quote in its entirety Access Copyright's Press Release from just over an hour ago, with some highlighting:

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December 11, 2013 13:29 ET

Canada's Writers and Publishers Disappointed by U of T and Western's Non-Renewal of Licence

TORONTO, ONTARIO--(Marketwired - Dec. 11, 2013) - Thousands of Canadian creators and publishers learned today that despite efforts to negotiate new and reasonable rates, the University of Toronto and Western University will not renew their current licences with Access Copyright.

"We are extremely disappointed," said Roanie Levy, Executive Director of Access Copyright. "Access Copyright's licence has enabled faculty to create efficient resource packages in both paper and digital form that are tailored to both their needs and those of their students. Millions of pages are shared in this way every year. Roughly 80% of the content copied comes from books. It is unlikely that access to these titles is licensed by the university through library or institutional subscriptions."

Instead of paying royalties to creators and publishers it is expected that these institutions will now rely on fair dealing guidelines, which are untested by law and closely replicate the scope of coverage in the Access Copyright licence. These policies represent a self-interested interpretation of what some in the education sector would like the law to be. Clearly fair dealing requires clarification. Renewing licences is difficult without fair dealing guidelines that work for everybody - educators, students, creators and publishers.

A comprehensive licence from Access Copyright provides pre-authorized permission, freeing faculty to systematically select and share resources without concern for copyright infringement, while ensuring appropriate rewards for the creators and publishers whose works are used.

Despite the enormous volume of usage of content in the Access Copyright repertoire, today's news means that, as of January 1, 2014, University of Toronto and Western University will end more than 20 years of cooperation with Canada's writing and publishing community.

For faculty who are accustomed to operating under Access Copyright licences, the termination will be accompanied by disruption and uncertainty. Faculty may be asked to change the way they share materials, or to assume greater personal responsibility for copyright, or to select different types of materials.

"Nobody wins in this scenario," said Levy. "That's why Access Copyright will continue its work in pursuit of a sustainable interpretation of fair dealing that benefits all those who read, write, teach and learn. Copyright should work for everyone."

There is much at stake for the future of Canada's classrooms. Access Copyright believes in a strong and vibrant culture of writing, publishing, reading, teaching and learning in Canada and is exploring new ways to meet the needs of educators and students in this new digital learning environment.

Access Copyright is a collective voice of creators and publishers in Canada. A non-profit, national organization, we represent tens of thousands of Canadian creators and publishers, and their copyright-protected work. Through agreements with sister organizations around the world we also represent the works of hundreds of thousands of foreign creators and publishers.

CONTACT INFORMATION

·     For media inquiries please contact:
Robert Gilbert
416.868.1620 x283 or rgilbert@accesscopyright.ca

******

Some quick and personal comments that, as always, don’t necessarily reflect the views of any of my clients:

·        Re: ”It is unlikely that access to these titles is licensed by the university through library or institutional subscriptions”. 

In my view, it’s also essential to ask whether AC has an adequately documented and legally solid chain of title to a sufficiently substantial amount of the repertoire needed by Canadian universities in connection with their teaching and research activities in order to justify AC’s alleged entitlement to collect tens of millions of dollars a year from Canadian universities, backed up with a “mandatory” tariff.

·        

E       Re: “Instead of paying royalties to creators and publishers it is expected that these institutions will now rely on fair dealing guidelines, which are untested by law and closely replicate the scope of coverage in the Access Copyright licence.”  

In my view, after an unprecedented three major and consistent decisions by the Supreme Court of Canada on fair dealing in the short span of eight years, and the inclusion of the word “education” in s. 29  of the Copyright Act as an explicitly allowed fair dealing purpose, it can hardly be said that the law on fair dealing needs more “clarification” at this time. Just because certain parties remain in denial about this, it doesn’t follow that the whole post-secondary sector needs to wait for AC and a certain few others to get up to speed.

HPK