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:

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:

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.

8                                   Copyright law in Canada protects a wide range of works including every original  literary, dramatic, musical and artistic work, computer programs, translations and compilations of works: see ss. 5, 2 and 2.1 of the Copyright Act.  Copyright law protects the expression of ideas in these works; it does not protect ideas in and of themselves.  Thorson P. explained it thus in Moreau v. St. Vincent, 1950 CanLII 248 (CA EXC), [1950] Ex. C.R. 198, at p. 203:

9                                   In Canada, copyright is a creature of statute and the rights and remedies provided by the Copyright Act are exhaustive:  see Théberge v. Galerie d’Art du Petit Champlain inc., [2002] 2 S.C.R. 336, 2002 SCC 34, at para. 5; Bishop v. Stevens, 1990 CanLII 75 (SCC), [1990] 2 S.C.R. 467, at p. 477; Compo Co. v. Blue Crest Music Inc., 1979 CanLII 6 (SCC), [1980] 1 S.C.R. 357, at p. 373.  In interpreting the scope of the Copyright Act’s rights and remedies, courts should apply the modern approach to statutory interpretation whereby “the words of an Act are to be read in their entire context and in their grammatical and ordinary sense harmoniously with the scheme of the Act, the object of the Act, and the intention of Parliament”:   Bell ExpressVu Limited Partnership v. Rex, [2002] 2 S.C.R. 559, 2002 SCC 42, at para. 26, citing E. A. Driedger, Construction of Statutes (2nd ed. 1983), at p. 87.

10                              Binnie J. recently explained in Théberge, supra, at paras. 30-31, that the Copyright Act has dual objectives:

11                              Canada’s Copyright Act sets out the rights and obligations of both copyright owners and users.  Part I of the Act specifies the scope of a creator’s copyright and moral rights in works. For example, s. 3 of the Act specifies that only copyright owners have the right to copy or to authorize the copying of their works:

12                              Part III of the Copyright Act deals with the infringement of copyright and exceptions to infringement.  Section 27(1) states generally that “[i]t is an infringement of copyright for any person to do, without the consent of the owner of the copyright, anything that by this Act only the owner of the copyright has the right to do.”  More specific examples of how copyright is infringed are set out in s. 27(2) of the Act.  The exceptions to copyright infringement, perhaps more properly understood as users’ rights, are set out in ss. 29 and 30 of the Act.  The fair dealing exceptions to copyright are set out in ss. 29 to 29.2.  In general terms, those who deal fairly with a work for the purpose of research, private study, criticism, review or news reporting, do not infringe copyright.  Educational institutions, libraries, archives and museums are specifically exempted from copyright infringement in certain circumstances: see ss. 29.4 to 30 (educational institutions), and ss. 30.1 to 30.5.  Part IV of the Copyright Act specifies the remedies that may be awarded in cases where copyright has been infringed.  Copyright owners may be entitled to any number of different remedies such as damages and injunctions, among others.

13                              This case requires this Court to interpret the scope of both owners’ and users’ rights under the Copyright Act, including what qualifies for copyright protection, what is required to find that the copyright has been infringed through authorization and the fair dealing exceptions under the Act.

14                              Section 5 of the Copyright Act states that, in Canada, copyright shall subsist “in every original literary, dramatic, musical and artistic work” (emphasis added).  Although originality sets the boundaries of copyright law, it is not defined in the Copyright Act.  Section 2 of the Copyright Act defines “every original literary . . . work” as including “every original production in the literary . . . domain, whatever may be the mode or form of its expression”.  Since copyright protects only the expression or form of ideas, “the originality requirement must apply to the expressive element of the work and not the idea”:  S. Handa, Copyright Law in Canada (2002), at p. 209.

15                              There are competing views on the meaning of “original” in copyright law.  Some courts have found that a work that originates from an author and is more than a mere copy of a work is sufficient to ground copyright.  See, for example, 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 (F.C.T.D.).  This approach is consistent with the “sweat of the brow” or “industriousness” standard of originality, which is premised on a natural rights or Lockean theory of “just desserts”, namely that an author deserves to have his or her efforts in producing a work rewarded.  Other courts have required that a work must be creative to be “original” and thus protected by copyright.  See, for example, Feist Publications Inc. v. Rural Telephone Service Co., 499 U.S. 340 (1991); Tele-Direct (Publications) Inc. v. American Business Information, Inc., 1997 CanLII 6378 (FCA), [1998] 2 F.C. 22 (C.A.). This approach is also consistent with a natural rights theory of property law; however it is less absolute in that only those works that are the product of creativity will be rewarded with copyright protection.  It has been suggested that the “creativity” approach to originality helps ensure that copyright protection only extends to the expression of ideas as opposed to the underlying ideas or facts.  See Feist, supra, at p. 353.

16                              I conclude that the correct position falls between these extremes.  For a work to be “original” within the meaning of the Copyright Act, it must be more than a mere copy of another work.  At the same time, it need not be creative, in the sense of being novel or unique.  What is required to attract copyright protection in the expression of an idea is an exercise of skill and judgment.  By skill, I mean the use of one’s knowledge, developed aptitude or practised ability in producing the work.  By judgment, I mean the use of one’s capacity for discernment or ability to form an opinion or evaluation by comparing different possible options in producing the work. This exercise of skill and judgment will necessarily involve intellectual effort. 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.  For example, any skill and judgment that might be involved in simply changing the font of a work to produce “another” work would be too trivial to merit copyright protection as an “original” work.

17                              In reaching this conclusion, I have had regard to: (1) the plain meaning of “original”; (2) the history of copyright law; (3) recent jurisprudence; (4) the purpose of the Copyright Act; and (5) that this constitutes a workable yet fair standard.

18                              The plain meaning of the word “original” suggests at least some intellectual effort, as is necessarily involved in the exercise of skill and judgment. The Concise Oxford Dictionary (7th ed. 1982), at p. 720, defines “original” as follows:

19                              The idea of “intellectual creation” was implicit in the notion of literary or artistic work under the Berne Convention for the Protection of Literary and Artistic Works (1886), to which Canada adhered in 1923, and which served as the precursor to Canada’s first Copyright Act, adopted in 1924. See S. Ricketson, The Berne Convention for the Protection of Literary and Artistic Works: 1886-1986 (1987), at p. 900.  Professor Ricketson has indicated that in adopting a sweat of the brow or industriousness approach to deciding what is original, common law countries such as England have “depart[ed] from the spirit, if not the letter, of the [Berne] Convention” since works that have taken time, labour or money to produce but are not truly artistic or literary intellectual creations are accorded copyright protection: Ricketson, supra, at p. 901. 

20                              In the international context, France and other continental civilian jurisdictions require more than mere industriousness to find that a work is original.  “Under the French law, originality means both the intellectual contribution of the author and the novel nature of the work as compared with existing works”: Handa, supra, at p. 211.  This understanding of originality is reinforced by the expression “le droit d’auteur” — literally the “author’s right” —  the term used in the French title of the Copyright Act.  The author must contribute something intellectual to the work, namely skill and judgment, if it is to be considered original.

21                              Although many Canadian courts have adopted a rather low standard of originality, i.e., that of industriousness, more recently, some courts have begun to question whether this standard is appropriate.  For example, the Federal Court of Appeal in Tele-Direct, supra, held, at para. 29, that those cases which had adopted the sweat of the brow approach to originality should not be interpreted as concluding that labour, in and of itself, could ground a finding of originality.  As Décary J.A. explained: “If they did, I suggest that their approach was wrong and is irreconcilable with the standards of intellect and creativity that were expressly set out in NAFTA and endorsed in the 1993 amendments to the Copyright Act and that were already recognized in Anglo-Canadian law.”  See also Édutile Inc. v. Automobile Protection Assn., 2000 CanLII 17129 (FCA), [2000] 4 F.C. 195 (C.A.), at para. 8, adopting this passage. 

22                              The United States Supreme Court explicitly rejected the “sweat of the brow” approach to originality in Feist, supra.  In so doing, O’Connor J. explained at p. 353 that, in her view, the “sweat of the brow” approach was not consistent with the underlying tenets of copyright law:

23                              As mentioned, in Théberge, supra, this Court stated that the purpose of copyright law was to balance the public interest in promoting the encouragement and dissemination of works of the arts and intellect and obtaining a just reward for the creator.  When courts adopt a standard of originality requiring only that something be more than a mere copy or that someone simply show industriousness to ground copyright in a work, they tip the scale in favour of the author’s or creator’s rights, at the loss of society’s interest in maintaining a robust public domain that could help foster future creative innovation.  See J. Litman, “The Public Domain” (1990), 39 Emory L.J. 965, at p. 969, and C. J. Craig, “Locke, Labour and Limiting the Author’s Right:  A Warning against a Lockean Approach to Copyright Law” (2002), 28 Queen’s L.J. 1.  By way of contrast, when an author must exercise skill and judgment to ground originality in a work, there is a safeguard against the author being overcompensated for his or her work.  This helps ensure that there is room for the public domain to flourish as others are able to produce new works by building on the ideas and information contained in the works of others.

24                              Requiring that an original work be the product of an exercise of skill and judgment is a workable yet fair standard.  The “sweat of the brow” approach to originality is too low a standard.  It shifts the balance of copyright protection too far in favour of the owner’s rights, and fails to allow copyright to protect the public’s interest in maximizing the production and dissemination of intellectual works.  On the other hand, the creativity standard of originality is too high.  A creativity standard implies that something must be novel or non-obvious — concepts more properly associated with patent law than copyright law.  By way of contrast, a standard requiring the exercise of skill and judgment in the production of a work avoids these difficulties and provides a workable and appropriate standard for copyright protection that is consistent with the policy objectives of the Copyright Act. 

25                              For these reasons, I conclude that an “original” work under the Copyright Act is one that originates from an author and is not copied from another work.  That alone, however, is not sufficient to find that something is original.  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”.

26                              At trial, the respondent publishers claimed copyright in eleven works: three reported judicial decisions; the three headnotes preceding these decisions; the annotated Martin’s Ontario Criminal Practice 1999; a case summary; a topical index; the textbook Economic Negligence (1989); and the monograph “Dental Evidence”, being chapter 13 in Forensic Evidence in Canada (1991).  Gibson J. held that the publishers’ works should be judged against a standard of intellect and creativity in order to determine if they were original.  Based on this standard of originality, the trial judge found that the publishers only had copyright in the annotated Criminal Practice, the textbook and the monograph.  He concluded that the remaining eight works were not original and, therefore, were not covered by copyright (1999 CanLII 7479 (FC), [2000] 2 F.C. 451).

27                              On appeal, the Law Society did not challenge the trial judge’s findings with respect to the three works in which he found copyright did exist, with the exception of questioning whether the monograph constituted a “work” within the meaning of the Copyright Act.  The Federal Court of Appeal adopted the “sweat of the brow” approach to originality and found that if a work was more than a mere copy, it would be original. On this basis, Linden J.A., writing for the majority, held that all of the remaining works were original and therefore covered by copyright (2002 FCA 187 (CanLII), [2002] 4 F.C. 213).  The Law Society appeals, contending that the headnotes, case summary, topical index and reported judicial decisions are not “original” within the meaning of the Copyright Act and, therefore, are not covered by copyright.

28                              As stated, in order to be original, a work must have originated from the author, not be copied, and must be the product of the exercise of skill and judgment that is more than trivial.  Applying this test, all of the works in question are original and therefore covered by copyright.

29                              The Federal Court of Appeal held that “headnotes”, defined as including the summary of the case, catchlines, statement of the case, case title and case information, are more than mere copies and hence “original” works in which copyright subsists.  It found that the headnotes are more than simply an abridged version of the reasons; they consist of independently composed features.  As Linden J.A. explained, at para. 73, the authors of the headnotes could have chosen to make the summaries “long or short, technical or simple, dull or dramatic, well written or confusing; the organization and presentation might have varied greatly”.

30                              Although headnotes are inspired in large part by the judgment which they summarize and refer to, they are clearly not an identical copy of the reasons.  The authors must select specific elements of the decision and can arrange them in numerous different ways.  Making these decisions requires the exercise of skill and judgment.  The authors must use their knowledge about the law and developed ability to determine legal ratios to produce the headnotes.  They must also use their capacity for discernment to decide which parts of the judgment warrant inclusion in the headnotes. This process is more than just a mechanical exercise.  Thus the headnotes constitute “original” works in which copyright subsists.

31                              For substantially the same reasons as given for headnotes, the case summary is also covered by copyright.  A summary of judicial reasons is not simply a copy of the original reasons.  Even if the summary often contains the same language as the judicial reasons, the act of choosing which portions to extract and how to arrange them in the summary requires an exercise of skill and judgment.

32                              The topical index is part of the book Canada GST Cases (1997).  It provides a listing of cases with short headings to indicate the main topics covered by the decision and very brief summaries of the decisions.  The Federal Court of Appeal held that the index was original in that it required skill and effort to compile.  I agree.  The author of the index had to make an initial decision as to which cases were authorities on GST.  This alone is a decision that would require the exercise of skill and judgment.  The author also had to decide which headings to include and which cases should fall under which headings.  He or she had to distill the essence of the decisions down to a succinct one-phrase summary.  All of these tasks require skill and judgment that are sufficient to conclude that the topical index is an “original” work in which copyright subsists.

33                              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.  Copyright protects originality of form or expression.  A compilation takes existing material and casts it in a different form.  The arranger does not have copyright in the individual components.  However, the arranger may have copyright in the form represented by the compilation.  “It is not the several components that are the subject of the copyright, but the over-all arrangement of them which the plaintiff through his industry has produced”: Slumber-Magic Adjustable Bed Co. v. Sleep-King Adjustable Bed Co. (1984), 1984 CanLII 54 (BC SC), 3 C.P.R. (3d) 81 (B.C.S.C.), at p. 84; see also Ladbroke (Football) Ltd. v. William Hill (Football) Ltd., [1964] 1 All E.R. 465 (H.L.), at p. 469.

34                              The reported judicial decisions here at issue meet the test for originality.  The authors have arranged the case summary, catchlines, case title, case information (the headnotes) and the judicial reasons in a specific manner.  The arrangement of these different components requires the exercise of skill and judgment.  The compilation, viewed globally, attracts copyright protection.

35                              This said, the judicial reasons in and of themselves, without the headnotes, are not original works in which the publishers could claim copyright.  The changes made to judicial reasons are relatively trivial; the publishers add only basic factual information about the date of the judgment, the court and the panel hearing the case, counsel for each party, lists of cases, statutes and parallel citations.  The publishers also correct minor grammatical errors and spelling mistakes.  Any skill and judgment that might be involved in making these minor changes and additions to the judicial reasons are too trivial to warrant copyright protection.  The changes and additions are more properly characterized as a mere mechanical exercise.  As such, the reported reasons, when disentangled from the rest of the compilation — namely the headnote — are not covered by copyright.  It would not be copyright infringement for someone to reproduce only the judicial reasons.

36                              In summary, the headnotes, case summary, topical index and compilation of reported judicial decisions are all works that have originated from their authors and are not mere copies.  They are the product of the exercise of skill and judgment that is not trivial.  As such, they are all “original” works in which copyright subsists.  The appeal of these findings should be dismissed.

37                              Under s. 27(1) of the Copyright Act, it is an infringement of copyright for anyone to do anything that the Act only allows owners to do, including authorizing the exercise of his or her own rights.  It does not infringe copyright to authorize a person to do something that would not constitute copyright infringement.  See Composers, Authors and Publishers Association of Canada Ltd. v. CTV Television Network Ltd., 1968 CanLII 89 (SCC), [1968] S.C.R. 676, at p. 680.  The publishers argue that the Law Society is liable for breach of copyright under this section because it implicitly authorized patrons of the Great Library to copy works in breach of the Copyright Act.

38                              “Authorize” means to “sanction, approve and countenance”:  Muzak Corp. v. Composers, Authors and Publishers Association of Canada, Ltd., 1953 CanLII 47 (SCC), [1953] 2 S.C.R. 182, at p. 193; De Tervagne v. Belœil (Town), 1993 CanLII 2960 (FC), [1993] 3 F.C. 227 (T.D.). Countenance in the context of authorizing copyright infringement must be understood in its strongest dictionary meaning, namely, “[g]ive approval to; sanction, permit; favour, encourage”:  see The New Shorter Oxford English Dictionary (1993), vol. 1, at p. 526.  Authorization is a question of fact that depends on the circumstances of each particular case and can be inferred from acts that are less than direct and positive, including a sufficient degree of indifference:  CBS Inc. v. Ames Records & Tapes Ltd., [1981] 2 All E.R. 812 (Ch. D.), at pp. 823-24.  However, 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:  Muzak, supra.  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:  Muzak, supra; De Tervagne, supra; see also J. S. McKeown, Fox Canadian Law of Copyright and Industrial Designs (4th ed. (loose-leaf)), at p. 21-104, and P. D. Hitchcock, “Home Copying and Authorization” (1983), 67 C.P.R. (2d) 17, at pp. 29-33.

39                              For several decades, the Law Society has maintained self-service photocopiers for the use of its patrons in the Great Library.  The patrons’ use of the machines is not monitored directly.  Since the mid-1980s, the Law Society has posted the following notice above each machine:

40                              The trial judge declined to deal with this issue, in part because of the limited nature of the evidence on this question.  The Federal Court of Appeal, relying in part on the Australian High Court decision in Moorhouse v. University of New South Wales, [1976] R.P.C. 151, concluded that the Law Society implicitly sanctioned, approved or countenanced copyright infringement of the publishers’ works by failing to control copying and instead merely posting a notice indicating that the Law Society was not responsible for infringing copies made by the machine’s users.

41                              With respect, I do not agree that this amounted to authorizing breach of copyright.  Moorhouse, supra, is inconsistent with previous Canadian and British approaches to this issue.  See D. Vaver, Copyright Law (2000), at p. 27, and McKeown, supra, at p. 21-108.  In my view, the Moorhouse approach to authorization shifts the balance in copyright too far in favour of the owner’s rights and unnecessarily interferes with the proper use of copyrighted works for the good of society as a whole.

42                              Applying the criteria from Muzak, supra, and De Tervagne, supra, I conclude that the Law Society’s mere provision of photocopiers for the use of its patrons did not constitute authorization to use the photocopiers to breach copyright law.

43                              First, there was no evidence that the photocopiers had been used in a manner that was not consistent with copyright law.  As noted, a person does not authorize copyright infringement by authorizing the mere use of equipment (such as photocopiers) that could be used to infringe copyright.  In fact, courts should presume that a person who authorizes an activity does so only so far as it is in accordance with the law.  Although the Court of Appeal assumed that the photocopiers were being used to infringe copyright, I think it is equally plausible that the patrons using the machines were doing so in a lawful manner. 

44                              Second, the Court of Appeal erred in finding that the Law Society’s posting of the notice constitutes an express acknowledgement that the photocopiers will be used in an illegal manner.  The Law Society’s posting of the notice over the photocopiers does not rebut the presumption that a person authorizes an activity only so far as it is in accordance with the law.  Given that the Law Society is responsible for regulating the legal profession in Ontario, it is more logical to conclude that the notice was posted for the purpose of reminding the Great Library’s patrons that copyright law governs the making of photocopies in the library.

45                              Finally, even if there were evidence of the photocopiers 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.  The Law Society and Great Library patrons are not in a master-servant or employer-employee relationship such that the Law Society can be said to exercise control over the patrons who might commit infringement: see, for example, De Tervagne, supra.  Nor does the Law Society exercise control over which works the patrons choose to copy, the patron’s purposes for copying or the photocopiers themselves.

46                              In summary, I conclude that evidence does not establish that the Law Society authorized copyright infringement by providing self-service photocopiers and copies of the respondent publishers’ works for use by its patrons in the Great Library. I would allow this ground of appeal.

47                              The Great Library provides a custom photocopy service.  Upon receiving a request from a lawyer, law student, member of the judiciary or authorized researcher, the Great Library staff photocopies extracts from legal material within its collection and sends it to the requester.  The question is whether this service falls within the fair dealing defence under s. 29 of the Copyright Act which provides: “Fair dealing for the purpose of research or private study does not infringe copyright.”

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:

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.

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.

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.

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. 

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.

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.

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.

61                              In 1996, the Law Society implemented an “Access to the Law Policy” (“Access Policy”) which governs the Great Library’s custom photocopy service and sets limits on the types of requests that will be honoured:

62                              At trial, the Law Society claimed that its custom photocopy service does not infringe copyright because it is a fair dealing within the meaning of s. 29 of the Copyright Act. The trial judge held that the fair dealing exception should be strictly construed.  He concluded that copying for the custom photocopy service was not for the purpose of either research or study and therefore was not within the ambit of fair dealing.  The Court of Appeal rejected the argument that the fair dealing exception should be interpreted restrictively.  The majority held that the Law Society could rely on the purposes of its patrons to prove that its dealings were fair.  The Court of Appeal concluded, however, that there was not sufficient evidence to determine whether or not the dealings were fair and, consequently, that the fair dealing exception had not been proven.

63                              This raises a preliminary question:  is it incumbent on the Law Society to adduce evidence that every patron uses the material provided for in a fair dealing manner or can the Law Society rely on its general practice to establish fair dealing?  I conclude that the latter suffices. Section 29 of the Copyright Act states that “[f]air dealing for the purpose of research or private study does not infringe copyright.”  The language is general.  “Dealing” connotes not individual acts, but a practice or system.  This comports with the purpose of the fair dealing exception, which is to ensure that users are not unduly restricted in their ability to use and disseminate copyrighted works. Persons or institutions relying on the s. 29 fair dealing exception need only prove that their own dealings with copyrighted works were for the purpose of research or private study and were fair.  They may do this either by showing that their own practices and policies were research-based and fair, or by showing that all individual dealings with the materials were in fact research-based and fair.

64                              The Law Society’s custom photocopying service is provided for the purpose of research, review and private study.  The Law Society’s Access Policy states that “[s]ingle copies of library materials, required for the purposes of research, review, private study and criticism . . . may be provided to users of the Great Library.”  When the Great Library staff make copies of the requested cases, statutes, excerpts from legal texts and legal commentary, they do so for the purpose of research.  Although the retrieval and photocopying of legal works are not research in and of themselves, they are necessary conditions of research and thus part of the research process.  The reproduction of legal works is for the purpose of research in that it is an essential element of the legal research process. There is no other purpose for the copying; the Law Society does not profit from this service.  Put simply, its custom photocopy service helps to ensure that legal professionals in Ontario can access the materials necessary to conduct the research required to carry on the practice of law.  In sum, the Law Society’s custom photocopy service is an integral part of the legal research process, an allowable purpose under s. 29 of the Copyright Act. 

65                              The evidence also establishes that the dealings were fair, having regard to the factors discussed earlier.

66                              The Access Policy and its safeguards weigh in favour of finding that the dealings were fair.  It specifies that individuals requesting copies must identify the purpose of the request for these requests to be honoured, and provides that concerns that a request is not for one of the legitimate purposes under the fair dealing exceptions in the Copyright Act are referred to the Reference Librarian. This policy provides reasonable safeguards that the materials are being used for the purpose of research and private study.

67                              The character of the Law Society’s dealings with the publishers’ works also supports a finding of fairness.  Under the Access Policy, the Law Society provides single copies of works for the specific purposes allowed under the Copyright Act.  There is no evidence that the Law Society was disseminating multiple copies of works to multiple members of the legal profession.  Copying a work for the purpose of research on a specific legal topic is generally a fair dealing.

68                              The Access Policy indicates that the Great Library will exercise its discretion to ensure that the amount of the dealing with copyrighted works will be reasonable.  The Access Policy states that the Great Library will typically honour requests for a copy of one case, one article or one statutory reference.  It further stipulates that the Reference Librarian will review requests for a copy of more than five percent of a secondary source and that, ultimately, such requests may be refused.  This suggests that the Law Society’s dealings with the publishers’ works are fair.  Although the dealings might not be fair if a specific patron of the Great Library submitted numerous requests for multiple reported judicial decisions from the same reported series over a short period of time, there is no evidence that this has occurred.

69                              It is not apparent that there are alternatives to the custom photocopy service employed by the Great Library.  As the Court of Appeal points out, the patrons of the custom photocopying service cannot reasonably be expected to always conduct their research on-site at the Great Library.  Twenty percent of the requesters live outside the Toronto area; it would be burdensome to expect them to travel to the city each time they wanted to track down a specific legal source.  Moreover, because of the heavy demand for the legal collection at the Great Library, researchers are not allowed to borrow materials from the library.  If researchers could not request copies of the work or make copies of the works themselves, they would be required to do all of their research and note-taking in the Great Library, something which does not seem reasonable given the volume of research that can often be required on complex legal matters. 

70                              The availability of a licence is not relevant to deciding whether a dealing has been fair.  As discussed, fair dealing is an integral part of the scheme of copyright law in Canada.  Any act falling within the fair dealing exception will not infringe copyright.  If a copyright owner were allowed to license people to use its work and then point to a person’s decision not to obtain a licence as proof that his or her dealings were not fair, this would extend the scope of the owner’s monopoly over the use of his or her work in a manner that would not be consistent with the Copyright Act’s balance between owner’s rights and user’s interests.

71                              I agree with the Court of Appeal that the nature of the works in question — judicial decisions and other works essential to legal research — suggests that the Law Society’s dealings were fair.  As Linden J.A. explained, at para. 159:   “It is generally in the public interest that access to judicial decisions and other legal resources not be unjustifiably restrained.”  Moreover, the Access Policy puts reasonable limits on the Great Library’s photocopy service.  It does not allow all legal works to be copied regardless of the purpose to which they will be put.  Requests for copies will be honoured only if the user intends to use the works for the purpose of research, private study, criticism, review or use in legal proceedings.  This further supports a finding that the dealings were fair.

72                              Another consideration is that no evidence was tendered to show that the market for the publishers’ works had decreased as a result of these copies having been made.  Although the burden of proving fair dealing lies with the Law Society, it lacked access to evidence about the effect of the dealing on the publishers’ markets.  If there had been evidence that the publishers’ markets had been negatively affected by the Law Society’s custom photocopying service, it would have been in the publishers’ interest to tender it at trial.  They did not do so.  The only evidence of market impact is that the publishers have continued to produce new reporter series and legal publications during the period of the custom photocopy service’s operation. 

73                              The factors discussed, considered together, suggest that 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.  It states that not all requests will be honoured.  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.  On these facts, I conclude that the Law Society’s dealings with the publishers’ works satisfy the fair dealing defence and that the Law Society does not infringe copyright.

74                              Under s. 27(1) of the Copyright Act, a person infringes copyright if he or she does something that only the owner of the copyright has the right to do without the owner’s consent.  On appeal to this Court, the Law Society submits that six of the items that the respondent publishers have claimed were copied in infringement of copyright were copied at the request of Jean Cummings, a lawyer who had been asked by Canada Law Book’s Vice-President to obtain copies of these works from the Law Society.  As such, the Law Society contends that the copies were made with the consent of Canada Law Book and therefore were not an infringement of copyright.

75                              This issue was not really addressed in the courts below.  In light of my findings on the issue of fair dealing, it is not necessary to answer this question to dispose of this appeal, and I decline to do so.

76                              I would allow the appeal and issue a declaration that 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.  I would also issue a declaration that 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.

77                              At trial, the publishers argued that the Law Society’s fax transmissions of copies of their works to lawyers in Ontario were communications “to the public by telecommunication” and hence infringed s. 3(1)(f) of the Copyright Act. The trial judge found that the fax transmissions were not telecommunications to the public because they  “emanated from a single point and were each intended to be received at a single point” (para. 167).  The Court of Appeal agreed, although it allowed that a series of sequential transmissions might constitute an infringement of an owner’s right to communicate to the public.

78                              I agree with these conclusions.  The fax transmission of a single copy to a single individual is not a communication to the public.  This said, a series of repeated fax transmissions of the same work to numerous different recipients might constitute communication to the public in infringement of copyright. However, there was no evidence of this type of transmission having occurred in this case. 

79                              On the evidence in this case, the fax transmissions were not communications to the public.  I would dismiss this ground of cross-appeal.

80                              Under s. 27(2)(a) of the Copyright Act, it is an infringement of copyright to sell a copy of a work that the person knows or should have known infringes copyright, a practice known as secondary infringement.  The majority at the Court of Appeal rejected the allegation of secondary infringement on the ground that it was not established that the Law Society knew or should have known it was dealing with infringing copies of the publishers’ works.  The publishers appeal this finding on cross-appeal.

81                              At the Court of Appeal, Rothstein J.A., in his concurring judgment, properly outlined the three elements that must be proven to ground a claim for secondary infringement: (1) the copy must be the product of primary infringement; (2) the secondary infringer must have known or should have known that he or she is dealing with a product of infringement; and (3) the secondary dealing must be established; that is, there must have been a sale.

82                              In the main appeal, I have concluded that the Law Society did not infringe copyright in reproducing the publishers’ works in response to requests under its custom photocopy service.  Absent primary infringement, there can be no secondary infringement.  I would dismiss this ground of cross-appeal.

83                              In 1999, amendments to the Copyright Act came into force allowing libraries, archives and museums to qualify for exemptions against copyright infringement: S.C. 1997, c. 24.  Under s. 30.2(1), a library or persons acting under its authority may do anything on behalf of any person that the person may do personally under the fair dealing exceptions to copyright infringement.  Section 2 of the Copyright Act defines “library, archive or museum”.  In order to qualify as a library, the Great Library: (1) must not be established or conducted for profit; (2) must not be administered or controlled by a body that is established or conducted for profit; and (3) must hold and maintain a collection of documents and other materials that is open to the public or to researchers.  The Court of Appeal found that the Great Library qualified for the library exemption.  The publishers appeal this finding on the ground that the Law Society, which controls the library, is indirectly controlled by the body of lawyers authorized to practise law in Ontario who conduct the business of law for profit.

84                              I concluded in the main appeal that the Law Society’s dealings with the publishers’ works were fair.  Thus, the Law Society need not rely on the library exemption.  However, were it necessary, it would be entitled to do so. The Great Library is not established or conducted for profit.  It is administered and controlled by the Benchers of the Law Society.  Although some of the Benchers, when acting in other capacities, practise law for profit, when they are acting as administrators of the Great Library, the Benchers are not acting as a body established or conducted for profit.  The Court of Appeal was correct in its conclusion on this point.  I would dismiss this ground of cross-appeal.

85                              Under s. 34(1) of the Copyright Act, the copyright owner is entitled to all remedies, including an injunction, for the infringement of copyright in his or her work.  An injunction is, in principle, an equitable remedy and, thus, it is within the Court’s discretion to decide whether or not to grant an injunction.  See P. E. Kierans and R. Borenstein, “Injunctions — Interlocutory and Permanent”, in R. E. Dimock, ed., Intellectual Property Disputes: Resolutions & Remedies (2002), vol. 2, 15-1, at p. 15-4.

86                              Given my finding on the main appeal that the Law Society did not infringe copyright in the publishers’ works, it is unnecessary to consider whether the Court of Appeal erred in choosing not to issue an injunction in this case.  I would dismiss this ground of appeal.

87                              In the result, I would dismiss the cross-appeal.

88                              On the main appeal, I conclude that the Law Society did not infringe copyright through its custom photocopy service when it provided single copies of the publishers’ works to its members.  The publishers’ headnotes, case summary, topical index and compilation of reported judicial decisions are all “original” works covered by copyright.  They originated from their authors, are not mere copies and are the product of the exercise of skill and judgment that is not trivial.  That said, the Great Library’s dealings with the works were for the purpose of research and were fair dealings within the meaning of s. 29 of the Copyright Act and thus did not constitute copyright infringement. I also conclude that the Law Society did not authorize copyright infringement by maintaining self-service photocopiers in the Great Library for use by its patrons.  I would therefore allow the appeal.

89                              My conclusions on the cross-appeal follow from those on the main appeal.  No secondary infringement of copyright by the Law Society is established.  The Law Society’s fax transmissions did not constitute communications to the public and it did not sell copies of the publishers’ works.  Were it necessary, I would conclude that the Great Library qualifies for a library exemption under the Copyright Act.  Finally, in light of my finding that there has been no copyright infringement in this case, an injunction should not be issued in this case.  I would dismiss the cross-appeal.

90                              In the result, the appeal is allowed and the cross-appeal dismissed.  I would issue a declaration that 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 to the Law Policy”.  I would also issue a declaration that 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.  Given the appellant’s success on the appeal and cross-appeal, it is entitled to costs throughout.