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Sabrina Macklai is an IPilogue Senior Editor and a 2L JD Candidate at the University of Toronto Faculty of Law.

On July 30, the Supreme Court of Canada released their much-anticipated judgement in [91��ɫ]. The unanimous decision, written by Justice Abella, endorses several past Supreme Court judgements including and . Perhaps one of the most important copyright decisions since the 2012 ‘’ cases, 91��ɫ reflects the Supreme Court’s intention to develop Canadian copyright law in a way that maintains a balance between users’ and creators’ rights.

Background

Historically, Canadian educational institutions negotiated licence agreements with copyright collectives Access Copyright and Copibec to fulfill their copying needs within the collectives’ repertoires. In 2010, Access Copyright sought the Copyright Board’s approval for a new proposed tariff for post-secondary education institutions of a flat fee of $45 per full-time university student and $35 per full-time college student per year. This was a drastic increase from the fees stipulated in the 1994 to 2010 licence agreement between Access Copyright and post-secondary institutions. On December 23, 2010, the Copyright Board granted Access Copyright an interim tariff at the rate of $3.38 per full-time student and $0.10 per page for course packs, receiving . In anticipation of the upcoming academic session in July of 2011, 91��ɫ chose to “opt out” of Access Copyright’s licensing agreement and rely on alternative means, particularly the “educational purpose” under the , to continue reproducing copyrighted works for their students. Like with most educational and library institutions, 91��ɫ published internal “Fair Dealing Guidelines” that interpret section 29 to help 91��ɫ faculty and staff comply with the law. Access Copyright subsequently sued for copyright infringement. 91��ɫ then counterclaimed and sought a declaration that its Fair Dealing Guidelines complied with section 29 of the Act.

In 2017, ruled in favour of Access Copyright in all regards, claiming that the interim tariff is mandatory and that 91��ɫ’s Fair Dealing Guidelines and its actual practices are not fair under section 29. In 2020, the reversed the lower court’s decision on the tariff issue, finding that tariffs set by the Copyright Board are only applicable to those voluntarily under a licence with Access Copyright and therefore not mandatory. However, on the fair dealing issue, the Federal Court of Appeal found that the lower court did not make any “palpable and overriding errors” in conducting their fair dealing analysis. 

Issues at Appeal

The Supreme Court appeal considered two issues: 1) is the tariff mandatory? and 2) if the tariff is mandatory, are 91��ɫ’s Fair Dealing Guidelines “fair” such that their activities may be covered by section 29 fair dealing?

Access Copyright’s Non-Mandatory Interim Tariff

The Supreme Court upheld the Federal Court of Appeal’s reasoning on the tariffs issue, agreeing that the interim tariff is not mandatory and thus not enforceable against 91��ɫ. They affirmed that users are free to pursue alternative methods to lawfully copy works, such as acquiring transactional or site licences or relying on section 29 fair dealing. In their reasons, they drew heavily upon arguments made by Professor Ariel Katz at the University of Toronto Faculty of Law, who asserted that where a user makes an unauthorized use, the appropriate remedy is an action for infringement—one that Access Copyright lacks standing to initiate.

Considering the Ultimate User in Fair Dealing Analyses

Although the Court deemed it inappropriate to rule on fair dealing, given that this is not a copyright infringement suit, Justice Abella nonetheless provided helpful obiter on fair dealing in Canada. Namely, she clarified that the reasoning of both the Federal Court and Federal Court of Appeal on the fair dealing issue is not endorsed. Both lower courts erred in their evaluation of the purpose of the work, by only considering the institutional perspective. As Justice Abella discussed in multiple past decisions, including Alberta, the end-user perspective must also be considered when assessing the fairness of a dealing. In this case, but for the students, there would be no copying. Therefore, the judgement must consider the students’ perspective. The institutional purpose is not completely irrelevant, but it must be interpreted in light of the end-user. Here, Justice Abella found that educational institutions have no “ulterior or commercial purpose” when copying for their students’ benefit under fair dealing, even if the institutions benefit financially by saving funds. As the first discussion of the educational purpose of fair dealing since it was introduced during the , the Supreme Court clarifies that the appropriate way to assess an educational institution’s fair dealing practices is to determine whether those practices facilitate their students’ educational purposes in a fair manner, maintaining the balance between users’ and creators’ rights.

91��ɫ adds to a growing list of copyright jurisprudence by the Supreme Court, many of which were spearheaded by the . This latest decision delivers several wins to the users’ rights community, particularly through confirming that users always have the choice to rely on section 29 fair dealing when working with copyright-protected materials. Educators and librarians across the country can breathe a sigh of relief that they may continue to lawfully offer their services, many of which rely on fair dealing, to the benefit of their students and patrons.

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Written by, Sabrina Macklai, IPilogue Senior Editor and J.D. student at the University of Toronto Faculty of Law (Class of 2023).

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Bill C-11, or the , was brought into force in November 2012. It introduced a number of changes to Canada’s , including the expansion of the fair dealing exception to cover use for education purposes. In addition to this change, Bill C-11 introduced a new treatment for technological protection measures (TPMs) or digital locks.

TPMs are digital rights management tools that control access and restrict the use of copyright-protected digital material. These tools include access control measures, such as passwords, paywalls, registration keys, and encryption software, which restrict access to a work. They also include copy control measures, such as read-only works, download blocking, and copy blocking, which restrict what can be done with a work.[1]

In order to meet Canada’s international obligations as a signatory to the , Bill C-11 included an amendment which prohibits the circumvention of TPMs installed on a work such as a performer’s performance fixed in a sound recording, even if the work was obtained legally. This was done after immense pressure from the United States to include these anti-circumvention rules, even though about this legal reform.

Bill C-11 legally permits circumventing a TPM in only a few narrow circumstances. These include exceptions for law enforcement, reverse engineering for software compatibility, encryption research, and computer security; these situations do not apply to regular archival uses. As follows, intended end-uses that would otherwise fall under fair dealings exceptions may be restricted due to prohibition of TPM circumvention.

Archives should be granted an exception to the prohibition of circumventing TPMs. As critics of the reformed Copyright Act believe, the anti-circumvention aspect of the current legislation severely hinders users’ rights and thus goes against the intention of the Canadian Copyright Act to balance copyright holder and users’ statutory rights.[2] If all creations were protected with TPMs, as is possible, user rights essentially become irrelevant.

As Jean Dryden, an expert in archives, , “archives should be allowed to acquire and apply tools to remove such measures, so they can fulfil their public interest mission.” Archives need to examine the material to see if the content fits within their collection and doing so may require circumvention of TPMs. In order to preserve materials, the circumvention of TPMs may be necessary, especially when preserving audiovisual content that is in older, perhaps obsolete format.

This becomes further complicated when TPMs exist on works with expired copyright protections. In such cases, works which technically are within the public domain and therefore ought to be freely available for use and engagement are rendered inaccessible due to the presence of a (legally) unbreakable TPM.

There has been much debate on how to approach the legality of circumventing TPMs. that the most obvious solution would be amending section 41 of Bill C-11 to add “for any infringing use” to the current definition of the term “circumvent”. By including this phrase, users’ rights are protected, and copyright owners are still protected from their content being used by commercial entities without their permission. However, this lends itself to further grey area as “infringing use” is ambiguous.

Instead, archival institutions should be granted exceptions to circumvent TPMs, comparable to those granted to law enforcement and national security activities. Other jurisdictions have adopted similar solutions. For example, New Zealand’s grants “qualified persons”, such as librarians and archivists, the ability to circumvent a TPM on behalf of a user who wishes to carry out a permitted act. Furthermore, New Zealand’s Copyright Act makes it explicitly clear to copyright holders that issuing a TPM does “not prevent or restrict the exercise of a permitted act.” By making this clear, New Zealand ensures that TPMs may still be used to prevent copyright infringement, but do not overly restrict user rights.

Unfortunately, the prohibition of TPM circumvention in Canada does not end with Bill C-11. The Trans-Pacific Partnership (TPP) brought upon new intellectual property policies in 2016. Amongst these copyright reforms, the TPP requires Canada to make further changes to their digital lock rules to align more closely with the WIPO+ model. This model removes the ability to restore the flexibility found in the WIPO Internet treatises, essentially locking these new digital lock rules in Canadian law. According to , a distinguished Canadian law professor in internet law, this will involve the addition of new criminal provisions regarding rights management information and may also make digital lock exceptions even more restrictive than they already are.

[1] Carys J Craig, “Digital locks and the fate of fair dealing in Canada: In pursuit of prescriptive parallelism” (2010) 13:4 The Journal of World Intellectual Property 503.

[2] Andrea Kampen, “Copyright Issues in Archives” (2016) 12 Dalhousie Journal of Interdisciplinary Management 1.

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The Internet Archive, which has been around since 1996, is a dedicated to building a library of internet sites and cultural artifacts in digital form. Their website, Open Library, claims to be digitizing from all around the world. You may be wondering, how does this effect copyright holders? Well, they from rights holders before adding books to their digital archives.

The Internet Archive is technically considered a library, and they use a technology called ‘’ (“CDL”) to simulate how traditional libraries loan out books. Ultimately, they believe their archiving is exempt from copyright infringement - but this is an extremely grey area in the law. Traditional libraries are allowed to loan out printed books they own because no copy is created in the process (as well, of the U.S. Copyright Act gives exceptions to libraries and archives to reproduce works in certain circumstances). CDL works as follows: the library digitizes a legally acquired print version of a book, then they only allow a limited number of users to access the book at any given time - this simulates people renting a book from a library and returning it. You can imagine that many authors and copyright holders are not excited about this process.

Last year, The Writers Union of Canada, along with 36 other creator groups, wrote an to the Internet Archive explaining how their conduct is illegal. They purport that any number of copies can be made when you have access to the book online, and they showcase this in the attached to their appeal letter. Truthfully, no one knows if what the Internet Archive does is illegal because it hasn’t been litigated. In the appeal letter, the writers argue that one reason for this is that no singular author has the time or money to litigate such a big case.

That may soon change with the announcement of the National Emergency Library, which no longer limits the number of users who can access a book at the same time. This new change, which is only available until June 30, 2020 (or until the National Emergency is over), contradicts the whole principle of CDL, which is meant to simulate lending physical copies. Furthermore, the Internet Archive made this decision , without contacting any rights holders who may be affected by this decision.

If you’re an author, content creator, or website owner, I encourage you to check out to see if your book, works, or website has been archived. Currently there is no sure fire way to get your content removed, but their website explains a method to to remove your content. That being said, I suspect we will be seeing litigation about the legality of internet archiving in the future.

Written by Luca Vaez Tehrani, IP Innovation Clinic Senior Fellow and JD Candidate at Osgoode Hall Law School

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The court found that the scanning of over 20 million books and the provision of free snippets of the digitized copies over the Internet falls within the fair use exception provided in . This decision, which the , signals the court's endorsement of Google's practices, and is a further indication of American courts' favourable view toward the role of the Internet and digital distribution.

The Google Library Project

In 2004, Google announced a program called the , a part of its digital books project which involved a collaboration with a number of public libraries and prominent American universities in an effort to digitize the institutions' significant holdings. The project involved the use of optical character recognition, a technology that generates machine-readable electronic copies of the physical books.

Physical copies of books are scanned and placed in an index, which allows users to perform full-text searches in order to identify works relevant to their interests. After performing a search, a reader can access up to three “snippets” of text from a work containing the search terms. These snippets can change depending on the search terms, meaning it is possible (although impractical) to access an entire text by performing a large number of different searches.

A consortium of participating universities, involved in what is known as the (HDL), were also provided with digital copies of their scanned works, and access to a full-text searchable database. The individual universities can download full copies of works contained in their collections, but can gain only limited access to works contained in the collections of other institutions.

Google and the affiliated universities sought no permission from rights-holders before beginning the project. As a result of these activities, the Authors Guild of America and several publishers initiated separate class actions against both Google and the HDL universities.

In 2012, that the activities of universities and libraries involved in the HDL fell within the doctrine of fair use, and therefore the reproductions for use in databases and site-specific digital access to library holdings were not infringements of any rights held by the plaintiffs. This decision by the Authors Guild, and the judgement has not yet been released.

The Google case, however, continued. The commercial status of Google coupled with its decision to make the snippets widely available to the public made its claim of fair use less likely to succeed.

Class Action Litigation as an Alternative to Blanket Licensing

The American copyright system, administered by collective societies such a the , operates under a permission-based licensing process. This contrasts with the practice in Canada, which depends on blanket licensing agreements with collective societies such as , where fees are collected first, and then royalties are distributed among members of the collective according to subsequent audits of practices which fall within the terms of a licence or tariff.

In 2008, Google and the Authors Guild entered into an . This agreement was was in a decision also authored by Judge Chin, then of the District Court of NY on the grounds that it was not fair, adequate and reasonable. Through this class action settlement, Google attempted to lower the transactional costs attributed to permissions-based licensing and to avoid liability for its digitization of orphan works (works for which the author cannot be located, and therefore for which no permission can be obtained). While Google would be able to continue its digitization project, the Authors Guild would receive royalties over both works in its own repertoire and those works for which no author could be located.

As noted in the , over 500 submissions were filed by interested third parties in response to the settlement, most objecting the to arrangement. Judge Chin noted the inadequacy of class notice and representation and antitrust concerns. Amazon and Microsoft, Google's main competitors, arguing that the settlement infringed constitutional authority over copyright law, and that the agreement concerning orphan works resulted in an involuntary transfer of copyright in violation of US copyright law. In addition, were the settlement allowed to proceed, Microsoft and Amazon would have had to obtain permission from their main competitor in order to publish a significant number of unclaimed works.

With the settlement rejected and an application to the Second Circuit for certiorari of the class certification , the case proceeded on a consideration of the merits of Google's fair use defence.

Fair Use – The Benefits of Google's Project

The trial was a major success for Google, as the court rendered summary judgement in its favour on the grounds that all of Google's activities fell within the fair use exception contained at .

The court found that the Library Project provided numerous and significant benefits. Among the benefits mentioned by the court were:

• the increased efficiency in scholarly research;
• the promotion of a type of research known as data mining or text mining, in which large amounts of textual data is analyzed in order to draw conclusions about “word frequencies, syntactic patterns, and thematic markers”;
• the increased access the project provided to under-served communities, including people with visual impairments;
• the preservation and promotion of old and out-of-print books; and
• the promotion and resulting benefit to authors and publishers, as page containing the snippet included links to sellers of the book and libraries which contain the book in their collection.

Fair use, like , is an equitable doctrine designed to promote the development of arts and sciences. As a result, the substantial benefits provided by the project significantly influenced the finding of fair use.

Fair Use - Analysis on the Facts

The court found that Google's use of the protected works is highly transformative. Transformation, a concept not recognized under Canadian law, is a significant element of consideration under the US doctrine of fair use (although not “absolutely necessary”, according to a by the US Supreme Court on fair use).

The transformative character of the Google Library Project significantly militated towards a finding of fair use. In considering the purpose and character of the use, the first statutorily mandated consideration under the fair use analysis, the court found that Google Books does not “supersede or supplant” books because it is “not a tool to be used to read books.” The transformative character of the use acts as a counterweight to the commercial character of Google's operations – a factor that can tilt the balance against fair use.

The nature of the works in question also militated in favour of fair use. Unlike in Canada, US copyright law recognizes that it is in respect of fictional works in comparison with works of non-fiction. The vast majority of books digitized in the course of the Library Project were non-fiction. In another stark contrast to Canadian law, the fact that the books were published also weighed in favour of fair use. Unpublished works lead to a narrower scope of fair use in the American approach. In , the SCC recognized that the unpublished status of works can render a dealing more fair, thus increasing the scope of the doctrine where works are not publicly available.

The amount of the work copied was the sole factor which weighed against a finding of fair use. Google digitized entire works as part of its Library Project although, crucially, the amount of text accessible to a user in response to a search was limited to snippets of text, rather than complete access to the full text.

The effect of the use on the potential for the market also weighed in favour of fair use. The court found that, far from undermining the market for works, the Library Project enhanced sales of books by bringing rare or obscure titles to the attention of readers. Snippets of text were accompanied by links to libraries or websites where authorized copies of the works could be obtained by readers who wished to continue their research. While the analysis of this factor figures more prominently in US jurisprudence than in Canada, the reasoning in the decision resembles that in , a recent SCC decision in which the Court found that the provision of short excerpts from songs as part of a preview function on an online marketplace constituted fair dealing for the purposes of research. In SOCAN, the Court found that the dealing promoted, rather than undermined, the market for the sound recordings (for the IPilogue's coverage of the decision, click ).

While US fair use differs in many significant respects from Canadian fair dealing, the case is highly significant for Canadian copyright practice. Like many of the decisions rendered by the SCC in 2012's copyright Pentology, the American court's stance is pro-technology, favouring new forms of digital distribution over traditional approaches to rights-management which favour owners and authors. Many other aspects of Google's project would also help a such a project qualify for fair dealing in Canada, notably the manner in which the project increases the dissemination of rare texts, promotes the sale of protected works, and limits the amount of a book available to users. Nevertheless, as fair dealing - like fair use - is heavily dependent on the specific facts of a case, it remains hard to accurately predict how a similar case would fare in Canada.

David Bowden is an IPilogue Editor and a JD candidate at Osgoode Hall Law School.

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A copyright infringement by multiple authors’ groups – including two Canadian ones – against Google and several universities for their book scanning and digital distribution has been��.

Federal Justice Hon. Harold Baer Jr. drew from the of , as well as the (ADA) in his decision. The defendants convincingly argued that Hathitrust appropriately disseminates materials for educational and social good purposes, in particular by greatly increasing reading material accessibility for people living with visual impairments.

The and the were the two Canadian plaintiff organizations, losing alongside the Authors Guild of America and others.

The backstory
The HathiTrust Digital Library is a database of reading material, much of which is provided the . The purpose of Google’s Library Project is, by Silicon Public writer Lisa Jackson, “to scan and publish all the books in the world.” HathiTrust already contains 10M books, 73 percent of which are copyrighted material.

This victory for Google follows on the heels of a recent copyright concession. In this , Google and the (AAP) announced a settlement in their marathon copyright dispute, which started in 2005. The suit was filed by the APP on behalf of members McGraw-Hill, Pearson Education, the Penguin Group, John Wiley & Sons, and Simon& Schuster. The APP gave Google the right to scan and sell e-books on the online store Google Play for an undisclosed amount of money.

The judgment
At issue was scanning for the purpose of indexing. The judge found that scanning is “transformative”, which is a fair use justification to sidestep normal copyright regulation. Historically for commentary, criticism or parody, but the definition is expanding in the digital day and age.

The judge, however, wrote that the “most important” transformative purpose of the scans was the “unprecedented ability of print-disabled individuals to have an equal opportunity to compete with their sighted peers” as argued by the defendants and the , which provided an opposition brief in the case. Judge Baer,

“The totality of the fair-use factors suggest that copyright law’s “goal of promoting the Progress of Science . . . would be better served by allowing the use than by preventing it.” Bill Graham, 448 F.3d at 608 (quotation marks omitted). The enhanced search capabilities that reveal no in-copyright material, the protection of Defendants’ fragile books, and, perhaps most importantly, the unprecedented ability of print-disabled individuals to have an equal opportunity to compete with their sighted peers in the ways imagined by the ADA protect the copies made by Defendants as fair use to the extent that Plaintiffs have established a prima facie case of infringement. In addition to the briefs submitted by the parties, the two memoranda filed by amici further confirm that the underlying rationale of copyright law is enhanced by the HDL.”

The orphans
Orphaned works remain in question. With a little over a quarter of works in HathiTrust having no copyright or known copyright, there is confusion about how best to proceed. Google proposed that it scan the orphaned works, place up to 20 percent of the text in search results, sell the works, and then set aside the collected sales revenue until the author comes forward. The New 91��ɫ Federal Court that proposal last year. U.S. District Judge Denny Chin felt that the plan as outlined in the Amended Settlement Agreement (ASA) not only����took too many liberties with the works, but also posed anti-trust concerns.

The ASA would give Google a de facto monopoly over unclaimed works. Only Google has engaged in the copying of books en masse without copyright permission…Google's ability to deny competitors the ability to search orphan books would further entrench Google's market power in the online search market.

Judge Baer did not rule on the orphan works question because the suit argued against the legality of the – a University of Michigan Library-led project to identify books whose copyright holders cannot be identified or contacted – which has not formally launched its efforts. The Orphan Works Project states on their website in an update from this past July that “There are no plans to provide access to these works.”

The new status quo
To recap the current parameters, there are some clear checks and balances to fair use in practice. One might say that neither side of this copyright debate is happy. And perhaps that’s how it should be. To wit:

• When people search the HathiTrust database to search a word in a copyrighted book, only the page numbers and number of mentions in the book are provided. The full text of the book is not available for fully abled individuals who do not have rights holder’s permissions.
• Full text will be made available for people who have rights holder’s permissions as well as for people with certified print disabilities. In the case of those with print disabilities, the work will be provided in an auditory version.

The response
The general public response has been largely positive, though there is a sample bias because so many internet commentators tend to the pro-digital-proliferation side of these types of debates. While many members of the copyright, legal or library community wrote supporting the decision; others, such as blogger Matthew Sag, have overstated the victory.

“The decision is a landmark win for the HathiTrust, the University defendants, people with print-disabilities, Google, the Digital Humanities and, I would argue, for humanity in general,” said Sag.

Authors are not, however, without their advocates. The concern that too much fair use hurts copyright holders who rely on copyright purchase for income was best summed up by Publisher’s Weekly reader George Payerle, who , “It’s clear that authors are expected to subsist on electrons.”

The big question
One major issue that remains under-addressed is data access. Google through HathiTrust is collecting large amounts of data about the who, what, where and when of book searching.

Word on the street is that Amazon has been less than generous about sharing its intel with publishers, so it’s possible that a part of the Google-AAP settlement includes terms of data sharing.

Certainly author groups should benefit from this same access to data, even as piecemeal compensation for their lack of legal copyright at the hands of fair use.

Denise Brunsdon is a JD/MBA candidate at Western University.

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