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COPYRIGHT - Licensing societies - Defences to infringement - Fair dealing

Tuesday, June 02, 2020 @ 9:23 AM  


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Appeal by York University from trial judgment allowing the respondent’s action for enforcement of an interim tariff and dismissing the appellant’s counterclaim for a declaration that all copying by the appellant which fell within the terms of the appellant’s Guidelines constituted fair dealing. When licence renewal negotiations between the appellant and the respondent Canadian Copyright Licensing Agency were languishing, the Copyright Board granted the respondent an interim tariff covering the copying of protected works in post-secondary educational institutions. The appellant briefly complied with the terms of the interim tariff but then introduced its Fair Guidelines for York Faculty and Staff. The Guidelines directed the appellant’s faculty and staff on how fair dealing under s. 29 of the Copyright Act applied to certain copying practices. The Guidelines specified that Short Excerpts, as defined in the Guidelines, could be copied for research, private study, criticism, review, news reporting, education, satire or parody. Acting pursuant to the Guidelines, the appellant’s faculty copied significant amounts of material for which the appellant paid no licence fees or royalties. The respondent then commenced the present action to enforce the interim tariff, seeking various remedies including royalties as provided in the tariff. The appellant counterclaimed, seeking a declaration that all copying which fell within the terms of the Guidelines constituted fair dealing pursuant to the Copyright Act. The court found that legislative history and statutory interpretation led to the conclusion that board tariffs were mandatory. The court reviewed the extensive evidence on the quantity and quality of copying which took place at the appellant pursuant to the Guidelines. The court found that the character of the dealing, the amount of the dealing, the nature of the work and the effect of the dealing tended to show the unfairness of the Guidelines, while the purpose of the dealing and the alternatives to the dealing tended to show their fairness. The appellant argued the court erred in concluding that copying which fell within its Guidelines was not fair dealing within the meaning of s. 29 of the Act. The appellant also argued that an interim tariff was not an approved tariff and was therefore unenforceable by action. It argued that even if the interim tariff was an approved tariff, it would only apply to those who chose to become licensees. The appellant argued the respondent could only sue to recover royalties in default of payment from users who chose to become licensees under an approved tariff.

HELD: Appeal allowed in part. The action was dismissed. The counterclaim was properly dismissed. The validity of the appellant’s Guidelines as a defence to the infringement action did not arise because the tariff was not mandatory, and the respondent could not maintain a copyright infringement action. A final tariff would not be enforceable against the appellant because tariffs did not bind non-licensees. If a final tariff would not be binding, the conclusion could not be different for an interim tariff. Acts of infringement did not turn infringers into licensees to make them liable for the payment of royalties. Infringers were subject to an action for infringement and liability for damages but only at the instance of the copyright owner, its assignee or exclusive licensee. The respondent admitted that, given its agreement with its members, it could not sue the appellant for infringement if some or all the copies made by the appellant were infringing copies. The counterclaim was properly dismissed. Given the relief which the appellant sought, it was incumbent on it to justify the Guidelines themselves to allow the court to declare that reproductions that fell within the Guidelines were fair dealing. It had, however, not done so. The appellant had not shown that the Federal Court erred in law in its understanding of the relevant factors or that it fell into palpable and overriding error in applying them to the facts.

Canadian Copyright Licensing Agency v. York University, [2020] F.C.J. No. 509, Federal Court of Appeal, J.D.D. Pelletier, Y. de Montigny and J.M. Woods JJ.A., April 22, 2020. Digest No. TLD-June12020004