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COPYRIGHT - Licences - Licensing societies - Voluntary licences - Royalties - Collective societies

Friday, July 30, 2021 @ 3:03 PM  


Lexis Advance® Quicklaw®
Appeal by Access Copyright from the dismissal by the Federal Court of Appeal of its tariff enforcement action. Appeal by York University from the dismissal of its fair dealing counterclaim. Access was a collective society who licenced reproduction rights in published literary works on behalf of creators and publishers. From 1994 to 2010, the parties’ licence agreement permitted professors from York to make copies of public works in Access’s repertoire and set the applicable royalties. When renewal negotiations were unsuccessful, Access filed a proposed tariff with the Copyright Board for post-secondary institutions and requested certification of a tariff on an interim basis. York initially paid the interim tariff approved by the Board, which was based on the previous licence agreement royalty rates, but subsequently informed Access it would not continue as a licensee. Access commenced an action to enforce the interim tariff. York counterclaimed for a declaration that any copying conducted within its fair dealing guidelines was protected by fair dealing rights. The Federal Court found the interim tariff was enforceable against York and that neither its guidelines nor its actual practices constituted fair dealing. The Federal Court of Appeal allowed York’s appeal on the tariff enforcement action, finding the Board approved tariffs were voluntary for users, but dismissed its appeal on the fair dealing counterclaim.

HELD: Appeals dismissed. The tariff was not enforceable against York. Section 68.2(1) of the Copyright Act did not empower Access to enforce royalty payments set out in a Board approved tariff against a user who chose not to be bound by a licence on the approved terms. It did not provide a collective infringement remedy. The Copyright Act did not impose a mandatory duty to pay approved royalties to a collective society that operated a licensing scheme. Users were entitled to choose whether or not to accept a licence on Board-approved terms. The appropriate remedy for unauthorized use was an action for infringement. York’s request for declaratory relief was not entertained since, given the conclusion that the interim tariff was not mandatory and was unenforceable against York, there was no live dispute between the parties. The reasoning of the Federal Court and the Federal Court of Appeal on fair dealing was not endorsed, as both approached the analysis exclusively from an institutional perspective, ignoring the perspective of students, which tainted the analysis of several fairness factors.

York University v. Canadian Copyright Licensing Agency (Access Copyright), [2021] S.C.J. No. 32, Supreme Court of Canada, R. Wagner C.J., M.J. Moldaver, A. Karakatsanis, S. Côté, R. Brown, M. Rowe, S.L. Martin and N. Kasirer JJ., July 30, 2021. Digest No. TLD-July262021013-SCC