Meera Nair

“the hill to die on”

In Case Reviews, Posts on November 3, 2019 at 8:05 pm

In March of this year, Howard Knopf informed readers of a pending Supreme Court hearing: that of a private company claiming copyright infringement at the hands of a public-service provider in Ontario. The works of contention were land surveys, which are essential documents in terms of establishing boundaries to parcels of land and the rights thereto.

Until the later twentieth century, surveyors would deposit land surveys with the provincial land registry. Individuals could request copies, conditional on payment of a fee. Monies collected remained with the province; surveyors received no further compensation. That system had not attracted any displeasure; however, after the registry was digitized in the 1980s and its services outsourced to a private corporation (Teranet), which had the responsibility for scanning/uploading the surveys into a digital repository and providing copies to the public. Again, receiving a copy required payment of a statutorily prescribed fee. (Generally speaking, Teranet’s operations are shaped by agreements with the province.) Yet surveyors filed a class action lawsuit (led by Keatley Surveying Ltd.) claiming copyright infringement. They lost in the lower courts, but were given leave to appeal to the Supreme Court.

Knopf wrote: “Teranet, which is resisting the payment of additional fees to surveyors beyond that which they were paid originally for doing the survey – has never disputed the notion that copyright subsists in land surveys. Indeed, the two actual parties (Keatley and Teranet) agreed for purposes of this litigation that copyright so subsists, although this crucial issue is far from clear and certainly not obvious.”

In late September, the Supreme Court of Canada issued its decision in Keatley Surveying Ltd. v. Teranet Inc. bringing to an end the surveyors’ twelve-year odyssey to hold Teranet liable for copyright infringement. With unanimity the Supreme Court Justices declared that the land surveys had passed into the realm of Crown copyright, and thus by virtue of the arrangements made between Teranet and the Province of Ontario, no infringement by Teranet had occurred.

Crown copyright is defined in Section 12 of the Copyright Act as:

Without prejudice to any rights or privileges of the Crown, where any work is, or has been, prepared or published by or under the direction or control of Her Majesty or any government department, the copyright in the work shall, subject to any agreement with the author, belong to Her Majesty … (emphasis mine).

But despite the unanimous outcome, opinion was divided among the seven justices. The majority opinion held by four justices, led by Justice Abella, focused on the degree to which the Crown provided direction or imposed control in the preparation or publication of the work. Whereas the minority contingent, comprising three justices, including Chief Justice Wagner, gave weight to the nature of the work produced, that it should serve a public purpose (as one would expect of a government work).

From the Majority: “Relevant indicia of governmental direction or control may include the presence of a statutory scheme transferring property rights in the works to the Crown; a statutory scheme which places strict controls on the form and content of the works; whether the Crown physically possesses the works; whether exclusive control is given to the government to modify the works; the opt‑in nature of the statutory scheme; and the necessity of the Crown making the works available to the public (para. 69).”

From the Minority: “Once a court is satisfied that a work was ‘prepared or published by or under the direction or control’ of the Crown, it must then consider whether, at the time of preparation or publication, the work is a ‘government work’. This entails examining the character and purpose of the work. The work will be a ‘government work’ where the work serves a public purpose and Crown copyright furthers the fulfillment of that purposes. These will be works in which the government has an important interest concerning their accuracy, integrity, and dissemination (para 127).”

This marked the first occasion where the matter of Crown copyright was discussed by the Supreme Court. The Justices were quite direct in suggesting that Parliament revisit the principles and statutory language of the nearly 100-year-old provision. A sentiment also noted in the INDU Report of the Copyright Review (2018-2019), “Several witnesses criticized section 12 of the Act and called for its reform. In fact, no witness supported its continuation, at least in its current form—a rare point of consensus.”

Since the Keatley decision was announced, numerous commentaries have been published. A complete list has been compiled by Amanda Wakaruk; a selection thereof is:

Also, in a podcast that lived up to its billing, Carys Craig detailed the case, and the shortcomings of the outcome in Crown Copyright is NOT Boring. Provided by Stereo Decisis, hosted by Robert Danay and Hilary Young, Craig shares Knopf’s concerns, that it is far from evident that land surveys are eligible for copyright protection.

In Craig’s words, “this is the hill to die on.” She emphasizes that copyright law does not protect ideas or information, and land surveys are an embodiment of information. To provide copyright in a land survey undermines a fundamental tenet of the system of copyright.

That the Court did not address this aspect is disappointing, but nonetheless is irresistible for comment.

If the question –are land surveys eligible for copyright protection– had been raised, presumably, the Court would have started from first principles.

In Canada, copyright ensues when one creates an original work (expression) of a literary, dramatic, artistic or musical nature. While “artistic works” are defined as including “paintings, drawings, maps, charts, plans…,” not all such items are protected. The pivotal requirement is that the creation be “original.”

In 2004, in CCH, the Supreme Court famously declared that originality requires an exercise of skill and judgment that is more than trivial. Shortly thereafter, Teresa Scassa* reminded us that the Court’s words should not be read in isolation but along with the Court’s accompanying language about the importance of having a robust public domain. To do otherwise, runs the risk of extending protection to “original facts,” which Scassa defines as “facts that owe their existence to the exercise of intellectual effort.”

Looking back in more detail to the Court’s ruminations on originality in 2004:

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 (para 16).

At that time, the Court was addressing a personal question: did copyright exist in the writings of a judicial decision itself? In answering the question, the Court sought a workable standard, one that fell between the endpoint possibilities of the “sweat of the brow” (on which industriousness is the principle concern) and “creativity.”  Interestingly though, the Court did not give equal attention to defining what creativity is, but, as shown above, was content to focus on what creativity is not—that it need not be “novel or unique.”

However, in the situation at hand, one must ask: what if the intellectual effort is one where novelty should be actively discouraged?

Arguably, a land survey should not be an invitation to novelty—its sole purpose is to establish facts. A land survey is created by data and mathematical/scientific operations. If two independent surveys were commissioned for the same purpose, one would expect that the outcomes would be at least similar, if not identical. And while similarity in two independent, creative works does not deny two separate claims of copyright,** it does not follow that two similar displays of independent skill and judgement must each be granted copyright.

It is at least an article of faith that facts are not protected by copyright. The rationale being, as Scassa writes, “either because they are not considered to be the product of someone’s authorial effort, or because some efforts are made for the common good and not for reward through copyright monopolies.” She provides a compelling rationale regarding the importance in distinguishing between the skill and judgment that gives rise to facts and that which gives rise to a copyright-protected work.

It may be that the difference between these two categories rests on a more precise definition of “creativity,” which I suspect no court will welcome having to define.

But it would have been satisfying to see our highest court give it a try.

* Teresa Scassa, “Original Facts: Skill, Judgement and the Public Domain” (2006) 51 McGill L.J. 253.  For more, “Copyright Reform and Fact-Based Works”, in M. Geist, ed. From “Radical Extremism” to “Balanced Copyright”: Canadian Copyright and the Digital Agenda, (Irwin Law, 2010), 571-597.

** While Sheldon et al. v. Metro-Goldwyn Pictures Corp. et al (1936) is a case from American jurisprudence, Judge Learned Hand’s ruminations on independent but identical creation of an Ode to a Grecian Urn comes to mind.

a miscast legacy

In Posts on September 3, 2019 at 8:35 pm

At the Copyright Review (2017-2018), one element of consensus among copyright owners and users alike was that students are certainly entitled to practice and benefit from fair dealing. With a new school year underway, I hope that educational administrators remember this and give students sufficient breathing space in connection to their learning.

Yet, it seems that anxiety still stalks authority when leaving students unattended with fair dealing. Uses of imagery seem especially fraught with tension. As imagery cannot be measured by any standard yardstick, its use immediately becomes suspect. Whereas the only distinction is that – to be fair – most, if not all, images have to be presented in their entirety to be useful. This does not mean, nor was it intended to mean, that the use is automatically excluded from fair dealing.

Despite the now well-entrenched CCH (2004) model of analysis guiding fair dealing—the critical elements being that we look at each situation comprehensively, and, that the use must serve the purpose for which it was chosen—use of imagery seems to provoke a combination of tension and amnesia. This may be due to a miscast legacy dating to fair dealing’s first experience in a Canadian courtroom: Zamacois v. Douville and Marchand (1943).

At issue was the reproduction of an article written by Miguel Zamacois, a citizen of France, which had been published in a French journal (Candide) and reprinted in a Quebec newspaper (Le Bien Public) together with a commentary by a local writer. A representative of a society of French writers claimed infringement on Zamacois’ behalf.

The proprietors of Le Bien Public, Raymond Douville and Clement Marchand, based their arguments principally on: (i) Zamacois’ ineligibility as a plaintiff; (ii) Zamacois’ creation pertained to matters of a political nature (WWII) and thus was not a literary work; (iii) provisions within the Berne Convention that favoured unauthorized reproduction of political or economic news; and (iv) the terms of a prior contractual arrangement with the French society (since lapsed). Invoking fair dealing was a measure of last resort. But when making the case for fair dealing, Douville and Marchand also drew particular attention to the fact that reprinting the article had not enhanced the paper’s commercial position.

The rationale of Douville and Marchand might have been deemed immaterial to the court’s eventual decision that infringement had been found and fair dealing had been denied. Indeed, a summary of the case issued later by Carswell, expresses bemusement as to why “the learned judge” had devoted such effort to exploring all aspects of the defendants’ arguments, as “the Convention has no statutory effect in Canada. The rights of authors are protected by the terms of the Copyright Act and that Act allows no reproduction of such articles without the consent of the author, except for the minor right of quotation on the basis of ‘fair dealing.’”

Such a statement baldly misrepresented fair dealing’s scope. Moreover, Carswell’s writer missed the critical point—a question of fair dealing is necessarily a contextual matter. Facts, and the circumstances in which they are imbedded, matter. Predating CCH by 61 years, Justice Angers gave Canadians an exemplar to follow in the years to come—a contextual analysis. He began from where one would expect, with reference to English authority, Copinger on the Law of Copyright (7th edition):  “It may be fair dealing to take a substantial part [of a work].” But noting that the article in question was of French provenance, he took care to also explore literary criticism and newspaper practices in that nation’s tradition. The depth and breadth of Anger’s exploration illuminates that matters of infringement generally pertained to commercial reproduction, that good faith was relevant, and that each situation is distinctive and must be assessed according to its own context.

In this case, Angers denied the claim of fair dealing, not because it was a copy of an entire article, but because it did not satisfy conditions under which an entire article could have been reproduced. He was precise in the language of his exploration and conclusion:

Yet Angers’ painstaking exploration of the applicability of fair dealing was quickly lost. The following year, in The Canadian Law of Copyright (1st ed.) by Harold Fox, the case is reduced to citations for isolated pronouncements such as, “Obviously quotation of a work in its entirety is not fair dealing.”

Fox’s language is disappointing; he expanded the object under consideration, arguably a literary article of a political bent, to the general terminology of “work.” Which entails all literary, dramatic, artistic and musical expressions. Moreover, his lack of precision as to the setting undermined the potential for fair dealing in categories other than literary criticism. In the years that followed, Zamacois v. Douville became synonymous with the general statement that fair dealing could not apply if the entirety of a work was reproduced.

The fullest extent of misunderstanding was on display in 1997 when, during an appeal concerning fair dealing with respect to imagery in an article published by the Toronto Star, the trio of judges then comprising the Ontario Court of Appeals said:

We were referred to the case of Zamacoïs v. Douville (1943)…  To the extent that this decision is considered an authority for the proposition that reproduction of an entire newspaper article or, in this case, a photograph of a magazine cover can never be considered a fair dealing with the article (or magazine cover) for purposes of news summary or reporting, we respectfully disagree.

Interpretation had moved from stretching the truth to jettisoning it entirely. There is no logical basis to equate a literary essay to a newspaper summary. That alone should have curtailed any blanket statements of what Zamacois v. Douville did or did not represent. Nor is a newspaper summary equal to an image. That a picture is worth a thousand words can only ever be an idiom, not a statement of fact. The only direct influence Angers’ work could have exerted on the Toronto Star appeal was the method of evaluation—a contextual analysis. (Which, fortunately, the Ontario Court of Appeals engaged in, but without citation to Angers.)

Reviewing the Toronto Star’s successful appeal, David Allesbrook wrote: “The ‘fair dealing’ exception will now achieve more prominence. The courts will be asked to consider the circumstances of the copying more forgivingly than they have in the past. It will be interesting to see how forgiving they will turn out to be.”

The irony is that, in 1943, Angers had done precisely that. By consideration of circumstances, he found merit in the good faith approach of Douville and Marchand, and refused to issue any injunction with respect to future operations of Le Bien Public. Angers also noted that there had been no particular financial gains through the unauthorized reproduction and so reserved any decision regarding costs to be awarded: “The plaintiff has proven neither loss of profits nor damages and I doubt if he might succeed in proving either.” And, with an appreciation for posterity, Angers refused to order the surrender of remaining copies of the reprinted essay, as the only remaining copies of that issue of Le Bien Public were intended for the paper’s archive.

Imagery has as much claim to fair dealing as any other type of work. In a world where information increasingly relies on, and circulates in, visual elements, imagery plays an important part in social, historical, scientific, economic and artistic endeavors. To limit students’ capacity to work with imagery limits the development of their understanding and expertise, thereby limiting the very goal of the system of copyright itself—to advance intellectual activity.

ten years on

In Posts on July 30, 2019 at 8:12 pm

Ten years have passed now since Fair Duty came into existence. In July 2009, having recently completed my doctorate, the title to my dissertation served as inspiration for the name of my blog. (Had I known then that this venture in writing would continue beyond a decade, I might have named it something else.) My dissertation had involved examining university policies with respect to application of fair dealing in the hands of graduate students, doctoral candidates in particular. That project had been prompted by my own earlier experiences.

Just prior to the unveiling of CCH Canadian v. Law Society of Upper Canada —a unanimous decision by the Supreme Court of Canada, affirming fair dealing in the realm of research—I was at the post-defense, deposit-the-thesis, stage of my MA and thus jumping through the requisite copyright-hoops. After reading CCH, and looking forward with the naiveté of a doctoral student, I assumed the end of institutional limitations on students-and-fair dealing was nigh. Yet during my data gathering of 2007, 2008 (and confirmed again in 2009), it was evident that policies concerning use of copyright-protected material by graduate students still reflected a pre-CCH attitude.

Any disappointment with my own community was mitigated by the one inescapable challenge that faced institutions and students alike: meeting the copyright stipulations of Library and Archives Canada (LAC). Before digital distribution became the norm, that venerable institution offered greater exposure and enjoyment of graduate students’ works, through the medium of microform. At that time, the condition for inclusion with LAC was to abide by stringent rules with respect to use of third-party work in theses and dissertations. Even in 2009, CCH’s promise was not enough to overcome fair dealing’s ill-fated twentieth century history. (More on that another day.)

(Fortunately, LAC’s conditions now reflect an awareness that fair dealing is relevant to graduate students’ work; although LAC does so without actually using the words “fair dealing.”)

Ten years ago, I came to the conclusion that, whether driven by caution or misunderstanding, or both, Canadian institutions regarded fair dealing as lawful in the hands of a student, up to the point of depositing a thesis or dissertation in the institution’s library. But thereafter, with the added exposure through LAC and potential for further distribution, institutions appeared to believe that fair dealing no longer applied.

Today, despite favorable (almost coaxing) judicial and statutory developments of fair dealing, perhaps because deposit now means in a publicly available institutional repository, I wonder if caution might still be narrowing institutional positions on fair dealing, when exercised towards the creation of a thesis or dissertation by graduate students.

If apprehension still exists, David Vaver beckons. He has spoken to these issues for over 20 years. Apart from numerous journal articles, he has also written three books: Intellectual Property Law: Copyright, Patents, Trade-marks, (1997), Copyright Law (2000), and Intellectual Property LawCopyright, Patents, Trade-marks (2nd ed. 2011).

Before even touching fair dealing, Vaver would remind us all to begin from first principles—what is copyright?

Section 3.1 of the Copyright Act states: “For the purposes of this Act, copyright, in relation to a work, means the sole right to produce or reproduce the work or any substantial part thereof in any material form whatever … .”

If a reproduction is insubstantial then copyright does not arise. And if one needs more than the inherent logic of that conclusion, in CCH the Supreme Court of Canada indicated, that where “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 (para. 56).”

Beginning then from the question of substantiality, and drawing from all three of Vaver’s books:

One should first screen out what cannot in law be a substantial part. ‘Part’ means ‘portion’ not ‘particle.’ A copyright owner cannot therefore control every particle of her work, any little piece the taking of which cannot affect the value of her work as a whole. Copying ten such particles is as inoffensive as copying one.

The lesson here is to curtail any temptation to measure the aggregate of uses from a single third-party source.

Vaver, of course, acknowledges that quantity alone does not determine substantiality; quality is a consideration. As he wrote in various ways, is the taking of something distinctive from a third-party work? Is it something into which the author expended “skill, effort or ingenuity.” Is it the heart of the work? In the context of academic research, it may be that the answer is “Yes.” When developing one’s own ideas, we are looking for portions of other works that exemplify either their merits or shortcomings. This is how we form the basis of our own analyses and from there derive new conclusions.

And that is precisely why we have fair dealing. To encourage research (and other activities beneficial to the public interest) that relies on reproduction of substantial parts of other works.

In Copyright Law (2000), and again in his 2011 publication, Vaver specifically addressed the nexus of research, fair dealing, and graduate students’ works:

A doctoral thesis is clearly written for research purposes, even though copies are routinely deposited in the National Library and other public libraries and the thesis is destined for publication. Research is part of process that routinely involves dissemination of results and supporting evidence to facilitate further research, including open review, criticism and verification (emphasis mine).

It is worth remembering that Copyright Law lay at the heart of CCH. And Vaver’s 2011 book was also cited in SOCAN v. Bell (2012), another, unanimous, Supreme Court decision relevant to fair dealing in research.

More precisely, in SOCAN, the Supreme Court gave a resounding “Yes” to the question of whether music previews constituted fair dealing in the hands of consumers. That affirmation came by affording consumer-activity recourse to the word “research.” Readers may recall that the Court was asked to weigh in on the very nature of what “research” is:

 SOCAN offers the definition of “research” as being “the systematic investigation into and study of materials and sources in order to establish facts and reach new conclusions.” Moreover, SOCAN argues, the goal of the “research” must be for the purpose of making creative works, since only uses that contribute to the creative process are in the public interest (para. 20.)

The Supreme Court disagreed with SOCAN’s definition:

Limiting research to creative purposes would also run counter to the ordinary meaning of “research”, which can include many activities that do not demand the establishment of new facts or conclusions. It can be piecemeal, informal, exploratory, or confirmatory. It can in fact be undertaken for no purpose except personal interest. It is true that research can be for the purpose of reaching new conclusions, but this should be seen as only one, not the primary component of the definitional framework (para. 22.)

Good news as this was, it is worth noting that SOCAN’s desired (narrower) definition of research, “systematic investigation … study of materials… to establish facts and reach new conclusions,” very neatly encapsulates what graduate students do. Furthermore, through writing theses and dissertations, those same students are making creative works, and thus still meet SOCAN’s view that serving the public interest only occurs through creation of literary, dramatic, artistic and musical works. If one takes SOCAN’s opinion as representative of the preferred stance of copyright-owners, it is reassuring to see that graduate student work would have no difficulty in qualifying as “research” under those expectations.

But of course, settling the purpose of the use is only the first step of determining fair dealing.

In terms of the fairness analysis, SOCAN was not a particularly taxing occasion for the Court. With recourse to CCH and the earlier Copyright Board decision on this matter, the remainder of the analysis was dispatched with great efficiency (paras. 37-49). One element carries neatly into the topic at hand; it arose under the exploration of whether there are alternatives to consumers using previews when choosing music for purchase. The Court reminded us that: “A dealing may be less fair if there is a non-copyrighted equivalent of the work that could have been used, or if the dealing was not reasonably necessary to achieve the ultimate purpose (emphasis mine, para. 44).”

SOCAN had “argued that there were other methods available, like advertising, to help users identify potential music for purchase. Many of the service providers, for example, offered album artwork, textual descriptions, and user-generated album reviews (para. 45).” But the Court declined to accept that argument, concurring instead with the Copyright Board’s earlier assessment that “[l]istening to a preview probably is the most practical, most economical and safest way for users to ensure that they purchase what they wish (para. 46).”

This is the crux of the matter from where to consider whether inclusion of a work, or a portion thereof, is fair dealing. Herein is why a dealing will be “reasonably necessary.” Because the inclusion must be in aid of the purpose of the user. In this context, a research question must have been addressed. Therefore, inclusion of third-party work, must support the process of exploration necessary to meet this goal.

Crafting the work that conveys this scholarly journey, making those decisions about inclusion of other works, these are functions that invariably flow from engagement between student and supervisor; and later, with the examining committee. These senior members of the field will be looking for students’ own voices—their own expression of their own ideas—buttressed by other voices, but only as needed to confirm the student’s mastery or skill with the subject. An excessive quotation will be called out, as will gratuitous illustrations. The legitimacy of what was used and how much was used, depend on the subject and the particular method of exploration, and the guidance of experts in the field.

It is not the purview of copyright practitioners to assess the use of those other works; those decisions are the responsibility of qualified members within each discipline, under whose aegis the work is offered. Lest that should alarm the professoriate, their responsibility is discharged simply by remaining true to the principles of the vocation they have chosen.

By virtue of successful completion of a graduate degree, the most vital element of the fairness analysis—as to why specific uses of third-party works are necessary—will have been successfully navigated.