Considering Canada’s Supreme Court Decisions in this week’s WIPO Proceedings

Considering Canada’s Supreme Court Decisions in this week’s WIPO Proceedings

As members of the international intellectual property community attend the 24th session of the Standing Committee on Copyright and Related Rights (SCCR), they are told to keep the spirit of Beijing alive, referring to the recently concluded Beijing Treaty on Audiovisual Performances. However, there is reason to keep another country’s spirit in mind as well. The Supreme Court of Canada recently handed down five critically important copyright judgments that may very well colour the proposals made by member states at the SCCR.

The Canadian Court emphasized two major principles of the Copyright Act in the rulings: first, to obtain a balance between promoting the public interest in the encouragement and dissemination of works and providing a just reward for creators and second, to maintain technological neutrality.

Two of the decisions pertained to fair dealing (the Canadian parallel to fair use) with the Court leaning toward a large and liberal interpretation consistent with landmark case CCH v. Law Society of Upper Canada, 2004 SCC 13. In Alberta (Education) v. Canadian Copyright Licensing Agency (Access Copyright), 2012 SCC 37, the Court held that photocopying performed by schoolteachers for the purpose of distribution to their students (but not at students request), constitutes fair dealing under “research or private study”. Canada also recently passed a new copyright bill (Bill C-11) that added “education” as an enumerated purpose qualifying for the fair dealing exemption.

(For more on the Access Copyright ruling, see Fairly Dealt: Strong Statement by the SCC in Alberta (Education) v. Access Copyright)

Editor’s note: The Supreme Court of Canada in Alberta (Education) v. Canadian Copyright Licensing Agency (Access Copyright), 2012 SCC 37 did not make a definitive ruling on the issue of fair dealing. Rather, the Court held that the Copyright Board’s finding of unfairness was based on a misapplication of the fairness factors enunciated in CCH Canadian Ltd. v. Law Society of Upper CanadaThe Court therefore remitted the case back to the Copyright Board for reconsideration as to whether photocopies made by teachers to distribute to students as part of class instruction at the primary and secondary level are subject to a tariff.   See Alberta (Education) v. Canadian Copyright Licensing Agency (Access Copyright), 2012 SCC 37 at paras. 37 – 38.

At the SCCR, the African Group submitted several draft proposals concerning copyright limitations and exceptions for educational and research purposes, including Article D, which sets out the following as an authorized action:

The use of works for educational purposes shall authorize individuals or institutes referred to in this Treaty to distribute a copy or copies of all or part of the work, including making available to pupils or students, the originals or copies thereof the work, or copies when these are necessary to illustrate the teaching.

Similarly, Brazil submitted that the following would not constitute violation of copyright:

The reproduction, translation and distribution of excerpts of existing works of any kind … as a pedagogical resource for the use of teachers with the purpose of illustration in the context of educational or research activities, to the extent necessary justified by the non-commercial purpose to be achieved, provided that the source, including the author’s name is indicated, unless this turns out to be impossible.

Paul Whitney, a Canadian librarian with twenty years experience in copyright issues and currently a board member of the International Federation of Library Associations, praised the Court’s decision. He observed that a teacher, like an internet service provider, serves as a conduit and thus, the analysis of whether an activity was done for research must be conducted from the end user’s perspective.

This reasoning was also seen in SOCAN v Bell, 2012 SCC 36, where the Court unanimously held that the use of short song previews constitutes research within the meaning under the fair dealing doctrine. Justice Abella, who delivered the judgment, upheld the Copyright Board’s decision to consider whether previews are for the purpose of “research” from the perspective of the consumer (i.e. the end user) and not the online music stores, and indirectly benefit from them (by increasing sales).

Like Access Copyright, the definition of “research” was interpreted broadly:

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.

(See SOCAN v Bell: A Victory for Fair Dealing, Consumers and Music Previews: Should Use of a Marketing Tool be Considered Fair Dealing for the Purpose of Research? for further comments on this case.)

The definition of “research” for the purposes of copyright limitations and exceptions for educational and research purposes has yet to appear at the SCCR, but any submission that is too broad or too narrow is bound to stir up controversy.

The remaining three Canadian decisions also involved musical works. In Re:Sound v Motion Picture Theatre Associations of Canada, 2012 SCC 38, the Court unanimously held that film soundtracks are excluded from the definition of “sound recording” when they accompany a cinematographic work.

In Rogers v SOCAN, 2012 SCC 35, the majority held that while a single transmission of a musical word over the internet does not constitute “communication to the public” within the meaning of the Act, the same cannot be said where there is a series of repeated transmissions of the same work to different recipients.

In Entertainment Software Association v. SOCAN, 2012 SCC 34, the majority rejected the Copyright Board’s conclusion that the internet delivery of a permanent copy of a video game containing musical works amounted to a “communication” under the Act. Justices Abella and Moldaver opined that the Board’s decision “violates the principle of technological neutrality, which requires that the Act apply equally notwithstanding the technological diversity of different forms of media.”

(see Re:Sound v. MPTAC: SCC Upholds Copyright Board’s Decision, Rogers v. SOCAN: The SCC Streamlines its Stance on On-Demand Streaming and ESAC v. SOCAN – Battle Lines Drawn in Copyright Pentalogy for more information on these cases.)

Technological neutrality is certainly on the minds of many member states at the SCCR. A proposal from Ecuador, Peru and Uruguay on copyright limitations and exceptions for educational and research purposes centres on the “[o]bligation to update and expand exceptions for educational purposes, in particular the digital environment.”

The Canadian decisions have been raised this week in the SCCR by South Africa and Nigeria, but the government of Canada has not yet spoken on the issue.


Nancy Situ is a JD Candidate at Osgoode Hall Law School. This article first appeared on Intellectual Property Watch and was written from Geneva where she is currently attending the 24th session of the Standing Committee on Copyright and Related Rights at WIPO Headquarters.