Meera Nair

two histories

In Posts on May 19, 2020 at 7:14 am

Last week, the two co-existing histories of Canada’s system of copyright, however contradictory, were on full display. A twitter discussion that began with moral rights, culminated with Carys Craig, Heather Martin, Bob Tarantino, and I, emphasizing how challenging it is to engage in creative endeavor which incorporates a prior work (even in the realm of parody). Bryan Frye was duly sympathetic:

But then on Friday, under the aegis of the Program in Information Justice and Intellectual Property, a Canada-U.S. panel discussed at length how an Open Educational Resource (OER) created in one country, could be relied on as legitimate in the other country. (Said another way, OERs, like essential goods and services, can cross the Canada/U.S. border.) Carys, Lucie Guibault, and Ariel Katz deftly illustrated the strength of fair dealing in the realms of research, private study, and education. This despite the recent FCA decision relating to York University’s application of fair dealing in 2011.

One aspect that went unremarked was that Canadian development of fair dealing differs from that of American fair use. While both rely on a fairness analysis, Canada has managed to avoid some challenges experienced by the United States. Two critical aspects have been held at bay:

1. An undue regard for licensing.

“The availability of a license is not relevant to deciding whether a dealing has been fair (CCH v. LSUC, 2004, para. 70).” Sixteen years may have left Canadians complacent with those words crafted by former Chief Justice Beverley Mclachlin, words which were supported with unanimity by the Supreme Court. That said, complacency should not eliminate appreciation for our Court’s foresight.

No explanation, no citation, was ever given for that piece of wisdom. But it is hard to believe that McLachlin and her clerks were unaware that fair use had fallen off the rails in the later twentieth century in the United States. Fair use was frequently portrayed as only a response to market failure, notably in circumstances pertaining to research and education. The prevailing view was that if a work could have been licensed, it should have been licensed, and therefore unauthorized use could not be fair use. Such circularity in arguments left fair use almost inert, leading to Lawrence Lessig’s dispirited remark that fair use simply enabled one to hire a lawyer.

(The late Lyman Ray Patterson wrote extensively about this period of American history wrought as it was through Princeton University Press v. Michigan Document Services Inc. (1994) and American Geophysical Union v. Texaco Inc. (1996). I provide some details here, and my thoughts on efforts by the Second Circuit to rehabilitate fair use are here.)

Under McLachlin’s watch, Canada was spared that growing pain of fair use.

2. Dependence on Transformation

Elevating fair use out of the pit it had fallen into required years of work. A good portion of heavy lifting was carried by U.S. Judge Pierre Laval. In 1990, he proposed the element of “transformative” as a governing principle to distinguish fair use from infringement:

The use must be productive and must employ the quoted matter in a different manner or for a different purpose from the original. Transformative uses may include criticizing the quoted work, exposing the character of the original author, proving a fact, or summarizing an idea argued in the original in order to defend or rebut it. They also may include parody, symbolism, aesthetic declarations, and innumerable other uses.

But Canada is not dependent on invocation of “transformative.” It has not entered our vocabulary, nor should it.

Two of the three Canadian Supreme Court cases where fair dealing prevailed (in research and education) were instances where professionally published works were used for the same purposes, the same settings, for which the works were created. Academic/research works were copied for research needs, and, copies of educational content were provided to students as part of classroom learning.

Against this history, it is not only unnecessary but also ill-advised to invoke “transformative” in Canada. To academic administrators anxious to keep their institutions safe, or, in the hands of professional Canadian lobbyists, the plain-English connotation of “transformation” leads to an expectation that a new work must be created. Which then becomes an argument to discourage unauthorized uses, however fair they might be, by students and researchers. 

During Friday’s discussion, the Canadian panelists reminded us that our Supreme Court stated that legitimacy of fair dealing does not require further creativity (SOCAN v. Bell (2012) para 21.)  In fact, the Court expressly rebutted SOCAN’s efforts to bring the word “transformative” into discussion (paras 23-24).

PIJIP will post the video; keep an eye on their YouTube channel. The discussion at the end offers detailed explanation with respect to incorporating various types and portions of protected works into OERs.

Canada’s development of exceptions towards building the infrastructure of a knowledge-based economy – education and research – is robust. But it remains under-developed when it comes to actually protecting creative activity. While, as Bob notes, the recent Wiseau decision “confirms that documentary films qualify as criticism, review and news reporting under the Copyright Act’s allowable fair dealing purposes,” other forms of creativity are still without shelter under the Copyright Act. Because, as I have written earlier, sometimes art is just art.

Canada has covered a good deal of ground in attaining a flexible exception under the Copyright Act; it is gratifying that last year’s report from the Standing Committee on Industry, Science and Technology explicitly calls for an illustrative set of purposes under fair dealing (see recommendation 18).  But, we’re not there yet. As Bob also said last week, “We’re working on it.”


York; some initial thoughts

In Posts on May 6, 2020 at 8:05 am

On 22 April 2020, the Federal Court of Appeal released its decision concerning the dispute between York University and Access Copyright. Two issues were probed by the Court: (i) Were tariffs mandatory? and (ii) Were York’s fair dealing guidelines essentially fair? The outcome resembles a draw, with the university prevailing on the first point (tariffs are not mandatory), and Access Copyright emerging victorious on the second as the Court of Appeals could not provide a stamp of approval to York’s guidelines.

The decision has generated much commentary from advocates of both sides of this debate (i.e., Michael Geist, The Writers’ Union of Canada, Lisa Di Valentino, The Association of Canadian Publishers, Adrian Sheppard, Access Copyright). A potential next step is an appeal to the Supreme Court of Canada; Michal Jaworski and David Bowden of Clark Wilson have written, “Given the interests at stake on both sides, there is a reasonably high likelihood that one or both parties will be seriously exploring leave to appeal (or cross-appeal) to the Supreme Court of Canada.”

Writing for the Court, Justice Pelletier tended to the tariff issue first. After detailing the events which led to the appeal, he writes: “In my view these textual arguments are best dealt with in the legislative context in which they arose (para 47).” Distilling the appeal to a central question—whether the relationship between a user and copyright-owner changes with the involvement of the Copyright Board—Pelletier further writes, “This is a question with a long history, which is best understood through the laborious process of a step by step historical review (para 56).”

Integral to Pelletier’s analysis is a Supreme Court case, Vigneux v. Canadian Performing Right Society Ltd., [1943]. At that time, then-Chief Justice Duff had traced historical details relating to the development of collective licensing in Canada:

… the legislature evidently became aware of the necessity of regulating the exercise of the power acquired by such societies (I shall refer to them as dealers in performing rights) to control the public performance of such musical and dramatico-musical works. […]  … it is evident that the legislature realized in 1931 that this business in which the dealers were engaged is a business affected with a public interest (para 57).

Pelletier continues: “It can thus be seen that the mischief which Parliament sought to correct was the quasi-monopoly which performing rights societies had achieved by acquiring performing rights from the original owners of the copyright (para 58).” He describes in detail the criteria Parliament stipulated as necessary conditions to be met by the performing rights societies (including “mandatory filing of a statement of the works in a society’s repertoire”.)

As befitting a commitment to historical exploration, multiple Canadian copyright statutes are examined in order to trace the evolution (or not) of relevant provisions regarding collective licensing. A systematic unearthing of facts leads to a decisive conclusion: “A final tariff would not be enforceable against York because tariffs do not bind non-licensees. If a final tariff would not be binding, the conclusion can hardly be different for an interim tariff (para 204).”

But when reading the examination of the second issue, the analysis of fair dealing, I could not help but be struck by the difference in the judicial treatment of the two sections. The absence of historical reflection with respect to fair dealing in Canada left an aura of mystery—as if the decision had been crafted by two different parties.

Readers may wish to pay particular attention to an acknowledgement from Pelletier: “Both York and these interveners cite an article by Professor Ariel Katz, “Spectre: Canadian Copyright and the Mandatory Tariff – Part I”, (2015) 27 IPJ 151, that I found very useful in addressing the question of the enforceability of tariffs (para 32).” Such restraint is perhaps the norm among the judiciary; I hope it is not taken as disrespect to the FCA, if I point out that the laborious step by step historical review was wrought in large part by Ariel Katz. He explored every aspect related to Access Copyright’s claim that tariffs were mandatory; more specifically, he probed both caselaw and revisions of the Copyright Act, over the span of the twentieth century.

Ariel’s work is well worth reading in its entirety. He reminds us that Duff’s salient words reflected the sentiment of the Parker (Royal) Commission of 1935, “whose recommendations formed the basis for statutory amendments in 1936.” That in fact Parliament sought to address, as Ariel writes, “the mischief occurring as control over musical repertoire had become concentrated in one society’s hands, with no protection to the public interest. He quotes Judge Parker at length; abbreviated here:

… Competition no longer exists. A monopoly, or super-monopoly, has arisen. No one quarrels with the author, composer and publisher pooling their rights and placing them in a central bureau for the purpose of collecting a fair fee for the same and of preventing infringement thereof. It is an inevitable monopoly existing for the convenience of the owner and the user; but it should not be exercised arbitrarily and without restraint (180).

For readers interested in further details about the Parker Commission, Louis J. D’Alton’s MA Thesis, The Copyright Board and Tribunals Process: Users in the Balance (2016), adds to our understanding of present events. He emphasizes the dysfunction of the time; i.e., “Complaints about the [society’s] activities by music users had been raised in the Canadian House of Commons, where vivid debate characterized the [society] as ‘evil and that some form of control was needed to ‘put an end to price fixing and extortion (p.43).’” The Commission report itself is here.

From a close examination of Duff’s language, Ariel identifies the Canadian Parliament’s response as refining the process of collective licensing along two dimensions.

i. “regulating the exercise of power” by CMOs, i.e., the opposite of enhancing their power,

ii. [ensuring that] participation in a collective “qualified” copyright owners’ rights, i.e., the opposite of expanding them. Copyright holders’ discretion was replaced with “a statutory license vested in everybody who pays or tenders to the dealer [the CMO] fee, charge or royalty which has been fixed by the Copyright Appeal Board” …

As is evident from Ariel’s work, these axes remained consistent throughout subsequent evolution of the Copyright Act, to the conclusion that: “The ‘mandatory tariff’ theory is based on dubious legal foundations. Established case law debunks it, standard principles of statutory interpretation contradict it, and the legislative history discredits it (p.210).” A sentiment echoed by Pelletier: “While there have been modifications in the statutory language used between 1936 and 2012, the continous references to licensing schemes and the retention of the key elements of the 1936 Act leave little doubt that tariffs are not mandatory (para 202).”

It is regrettable that York and its legal team failed to make better use of Ariel’s work at the outset of this dispute.

Some commentary on the fair dealing aspect remains necessary — that will follow another day. For now, the dual personalities of the FCA decision is no longer so mysterious.


In Posts on March 3, 2020 at 8:17 pm

My last post focused on institutional rules surrounding the creation of a particular category of works: theses and dissertations created by Masters and Doctoral students. As I explained, the origins of the post date to 2008-2009 when I was working on my own dissertation.

At that time, I was dismayed by the propensity across Canada to limit or withhold fair dealing from students. As I sought explanations for those rules, a thesis coordinator informed me that it was for the students well-being. The institution sought to protect them from copyright infringement lawsuits. This reasoning left me perplexed; lawful uses should not need protection. However, the doorstep of a Ph.D. was no place to work that one out.

My subsequent exploration did not uncover any incident of a Canadian graduate student being taken to task in a courtroom for alleged infringement. What I found instead was Boudreau v. Lin (1997).

This case was covered in some detail between March and October 1997, by various newspapers in Canada (The Ottawa Citizen, The Vancouver Sun, and The Toronto Star) as well as by the Associated Press and The New York Times. Perhaps the most detailed coverage came from Allison Hanes writing for The Charlatan. Her article began with: “When Paul Boudreau teaches his lesson on the production of circuits in his micro-electronics course at Algonquin college this fall, his students can rest assured their instructor knows his material – he has spent the last six years proving it.”

Boudreau v. Lin concerned the plagiarizing of a paper written by Paul Boudreau, an MBA student taking a directed studies course at the University of Ottawa, by his instructor Dr. Jimming Lin. As was revealed through the legal proceedings, Lin made some minor changes to Boudreau’s work, removed Boudreau’s name as author, added a co-author from another institution, presented the paper at a conference, included it among course materials sold to subsequent students, and listed Boudreau’s work as Lin’s own original research in his application for tenure.

Boudreau’s efforts to find justice within his own university were met with the barest minimum of response; the institution felt that Lin had made substantive contributions to the paper and had only erred in forgetting to include Boudreau as a co-author. The university counselled Lin “to be more prudent in the future (para 21).”

Relying solely on his own funds, Boudreau brought forward a legal challenge. At the end, Justice Monique Métivier did not mince words:

I find as a fact that the professor offered editorial suggestions, and, on a conceptual level, that he attempted to direct the student in his paper to a less technical and more management-oriented view, as befitted a course of study in the Masters of Business Administration program. But, it was clear from the evidence, the professor was neither the originator nor the developer of any substantive ideas or concepts. His contributions consisted of general comments that were directed to polishing the paper and were those which one expects from a professor who is editing and discussing a paper written by a student. None of the changes he proposed affected the substance of the paper (para 26).

Mr. Malouin (Dean of the Faculty of Business Administration) said it was not his mandate to determine if Professor Lin was truly a co-author but more to see if the student’s name had been left off. He concluded such omission was an honest mistake. On the other hand, he also said he had considered what was the relevant contribution of each, and had concluded that Professor Lin had input in the paper. He did not appear to have considered the details of the respective contribution which Professor Lin had provided in his application for a promotion or inquired into their veracity. The simplest inquiry would have revealed the misstatements. I find as a fact that the plaintiff Mr. Boudreau was the only author of the work in question. I have no difficulty in finding Professor Lin is not a co-author (emphasis mine, para 35.)

As was noted in several articles, Boudreau was able to pursue justice because he was gainfully employed, and that his career did not depend on approval or assistance from the professoriate. Most graduate students have neither the finances nor the independence necessary to claim their rights in a court of law.

These news stories, and the case itself, ought to have become compulsory reading for every university administrator and tenured, or tenure-track professor in Canada. Yet Boudreau v Lin seems to have made no appreciable impact on the postsecondary community. If anything, it seems to have contributed to a misrepresentation of fair dealing as, in his defense, Lin claimed fair dealing. (A claim that was soundly rejected.) Yet over time, Boudreau v. Lin was reduced to a bland statement that fair dealing was inapplicable if a work is distributed without authorization.

As I wrote in my dissertation then, “Given that the defendant had plagiarized another work, the rejection of fair dealing was fitting.” To put it plainly, fair dealing is not camouflage for an utter collapse of ethical conduct.

When I first read this case, I was shocked that a graduate student could be treated so badly by a professor. In the 12 years since, I’ve come to the realization that it happens more often than the academy wishes to let on. While the majority of the professoriate are good mentors, abuse of graduate students remains an ongoing problem. And those students are rightly concerned that speaking up will jeopardize their future prospects. As a consequence, the culprits are exposed only in whisper networks.

All this leaves me wondering whether, on the issue of copyright, graduate students have more to fear from within their institutions than from an external challenge. 

Well-intentioned as the motive to protect students from an irate copyright-owner might have been, denying fair dealing made little sense to me in 2008 and even less now. Such fear assumes that the owner would rush to serve said student with papers and then romp to victory in court. It is an extreme assessment of risk to say the least. And is not borne out by existing case law which favored fair dealing with third-party work used in the creation (and distribution) of a new work, one that is aimed at furthering discussion of issues at hand. A definition that aptly describes a thesis or dissertation.

Canadian universities may be interested in Allen v. Toronto Star (1997), Vancouver Aquarium v. Charbonneau (2017), and Wiseau v. Harper (2017); Canada is not lacking for good material relevant to this point.