Supreme Court Decision on Copyright in Photocopied Law Library Materials

In a decision released March 4, 2004, the Supreme Court of Canada has further clarified the issue of copyright infringement and photocopying. In CCH Canadian Ltd. v. Law Society of Upper Canada, [2004] SCC 13, the issues revolved around whether a custom photocopying service provided by the Law Society’s "Great Library" mainly of case reports constituted a copyright infringement. In addition, the question of whether providing a photocopier in a library constituted authorizing infringement was addressed, as was the issue of whether lawyers copying case reports qualified under the exemption under the Copyright Act relating to fair dealing for the purposes of research and study. The results of this decision will have broad-reaching application for two reasons. First, the decision means that legal research undertaken in the practice of law is research and study, and therefore an allowable exception to copyright infringement. Second, the decision means that simply providing photocopiers for the use of patrons does not mean that libraries are necessarily authorizing infringement.

The case began in 1993, when CCH, a publisher of law reports and other legal materials, filed an action in copyright infringement, asking for a declaration that the Law Society had infringed CCH’s copyrights when it reproduced copies of the works in question. The Law Society had denied liability and had counterclaimed asking for a declaration that the reproduction of a single copy of a reported decision, case summary, statute, regulation or limited selections of text from a treatise, either by a staff member or a library patron, was not an infringement of CCH’s copyright.

The practice that CCH was attempting to stop was the library’s custom photocopying service, which provided single copies of materials for member of the Law Society at cost upon request. All such requests were cleared through the librarian, the process in place to ensure that the copies made were for the purpose of research or study. In addition, CCH was seeking a pronouncement that the library was authorizing infringement, an activity contrary to s. s.27 (1) of the Copyright Act, by providing a self-service photocopier to patrons who wished to do their own photocopying.

The trial judge did not deal with the photocopier issue, probably because no evidence was tendered by CCH to show the copiers were actually being used for infringing activities. The Federal Court of Appeal however, had decided that providing photocopiers was an authorization of infringement, and that notices posted advising that copying may infringe copyright was an acknowledgement that the photocopiers would be used in an illegal manner.

With respect to the issue of fair dealing, the Law Society had claimed the advantage of s. 29 of the Act, namely that individual copies made for practitioners were made for the purpose of research and study, and so were exempt under the fair-dealing exemption. At trial it was held that copying under the custom copying service was not for the purpose of research or study ad therefore not fair dealing as defined in the Act. The Court of Appeal concluded on this issue that there was not sufficient evidence to determine whether the dealings were fair, and as a result the fair-dealing exception had not been proven.

There fore the issues before the Supreme Court were:

• Is research done by legal practitioners research and study within the meaning of the Copyright Act?

• Is a custom service providing single copies of published materials to legal practitioners an infringement of copyright?

• Is the provision of self-service photocopiers an authorization of copyright infringement?

The Supreme Court, in considering these issues came to the following conclusions:

• Single copies of works made by library staff were not an infringement;

• Lawyers are conducting research within the meaning of the Act when making copies of case reports; and

• Providing photocopiers in the library were not an authorization of infringement of copyright.

In deciding that copies made by library staff were not infringing, the Court accepted the Law Society’s argument that the service was provided to those members who would find it difficult if not impossible to come to the library to do their own copying. Key in the Court’s finding though, was the conclusion that legal research performed to carry the practice of law qualifies as research or study, and is therefore constitutes fair dealing. This overturned the Court of Appeal’s decision that legal research wasn’t research or study as defined in the Act.

The Court’s decision is also significant in the fact that the Court further defined what the requirements are for copyright to subsist in a work. McLachlin, C.J. rejected creativity as a requirement, stating rather that copyright subsists when an exercise of skill and judgment is applied to express and idea. This position is consistent with earlier decisions that simple compilations are not protected by copyright, nor are the facts or ideas that underlie the expression.

With regard to case reports, the Court held that while the head notes and summaries are protected by copyright, the decisions themselves are not. This is an interesting position, as it would appear to conflict with the general notion that judicial decisions are the subject of Crown copyright. The Court also held that legal research falls under the exemption in the Copyright Act dealing with copying for the purpose of research and study. Therefore, lawyers may copy case reports for the purposes of legal research without infringing the copyright.

What will be of interest to libraries though is that part of the decision that dealt with the issue of whether providing access to a photocopier constitutes an authorization of infringement, an act prohibited under copyright law. The Federal Court of Appeal had previously determined that signs warning that copying may constitute copyright infringement, were a tacit acknowledgment that the self-service photocopiers provided by the library for its patrons were being used for illegal purposes. According to the Court of Appeal, the library was authorizing infringement, an activity prohibited under the Act.

However, in the absence of evidence demonstrating that the photocopiers were being used for infringing activities, the Supreme Court was unwilling to make the Law Society of Upper Canada library responsible for infringing acts that may or may not have been occurring. The Court viewed the signs as reminders to members of the legal profession of something they already knew, namely that copyright infringement is against the law. In coming to its conclusion, the Court determined that the library does not have enough control over its patrons to be said to have "sanctioned, approved or countenanced" any infringing acts, even if they were occurring. As the Court put it, "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." Based on the Court’s ruling here, the same could probably be said for all libraries in Canada. Consequently, the Court’s decision in this case are significant for libraries, which were previously placed in the position of having to perform the role of "copyright police." This decision should put the onus for that function back where it belongs, on the owners themselves.

Top of page     |    Print this page