Healing Fair Dealing? A Comparative
Copyright Analysis of Canadas Fair
Dealing to U.K. Fair Dealing
and U.S. Fair Use
Giuseppina DAgostino*
Given the owner-centred nature of current copyright regimes, many
commentators are calling for greater consideration of user rights and, more
particularly, the development of fair dealing, a legal doctrine that allows for
certain uses of copyrighted material without permission of the copyright
owner. Fair dealing in Canada has been criticized as weak and overly
restrictive, applying only to works used for a closed list of purposes. The
Supreme Court of Canadas 2004 decision in CCH Canadian Ltd. v. Law
Society of Upper Canada (CCH), which elevated fair dealing from a set of
exceptions to a user right, has strengthened fair dealing but has also created
uncertainty about its scope.
To arrive at a better understanding of Canadas current fair dealing
framework, the author presents a historical analysis of Canadian fair
dealing and compares Canadas regime with those of the United Kingdom
and the United States. Despite CCHs liberalizing effect, the doctrine
remains somewhat restrictive, but it also has features that render it more
capable than its U.S. and U.K. equivalents of attaining the balance of
interests that copyright regimes seek. U.K. fair dealing lags behind Canada:
certain criteria have emerged from the case law consonant to Canadas pre-
CCH framework and in many ways there is now a hierarchy of factors with
market considerations at the fore. The concept of U.S. fair use, which
theoretically allows any type of use to be fair and merely provides factors
to assist courts in their decision-making, presents a more effective option,
though it too has weaknesses and cannot simply be transplanted into
another jurisdiction. Canada should rather seek to build on the distinctive
features of its fair dealing regime, such as its policy preoccupations that
avoid championing owners rights, and factors for determining fair dealing
that are more flexible than those in U.S. fair use. In doing so, the author
cautions against eclipsing creators (who are seldom owners) and whose
treatment may have become more ambiguous after CCH. The author
suggests several ways of improving fair dealing. These solutions are not
limited to legal reforms, but also involve grassroots approaches. Copyright
best practices developed by users themselves are particularly promising,
having already contributed to findings of fairness in CCH and other cases.
Vu la nature des rgimes actuels de droit dauteur, centrs sur les
intrts des propritaires, plusieurs auteurs rclament une meilleure prise en
considration des droits des utilisateurs, plus particulirement un
dveloppement approfondi du principe dutilisation quitable, qui permet
certaines utilisations des uvres protges sans la permission du titulaire
du droit dauteur. Lutilisation quitable au Canada a dj t critique
comme tant faible et trop restrictive, sappliquant seulement du matriel
utilis certaines fins prcises. La Cour suprme du Canada, avec sa
dcision de 2004 dans CCH Canadian Ltd. c. Law Society of Upper
Canada (CCH), qui a lev lutilisation quitable dune srie dexceptions
un droit des utilisateurs, a renforc lutilisation quitable mais a aussi
cr de lincertitude quand sa porte.
Afin darriver une meilleure comprhension du rgime actuel
dutilisation quitable au Canada, lauteure prsente une analyse historique
du principe et compare le rgime canadien ceux du Royaume-Uni et des
tats-Unis. Malgr leffet libralisateur de CCH, le principe reste restrictif,
bien quil possde aussi des caractristiques qui le rendent mieux quip
atteindre lquilibre des intrts que poursuit tout rgime de droit dauteur.
Lutilisation quitable au Royaume-Uni tire de larrire par rapport la
situation au Canada : certains critres issus de la jurisprudence sont
semblables ceux du rgime canadien davant CCH et il y a maintenant
une hirarchie de facteurs qui favorisent les considrations du march. Le
concept amricain de fair use, qui permet thoriquement nimporte
quelle type dutilisation et ne fournit que des facteurs pour assister les
tribunaux dans leurs dcisions, prsente une option plus efficace, mais qui a
aussi quelques faiblesses et qui ne peut simplement tre transplante au
sein dune autre juridiction. Le Canada devrait plutt tenter de btir sur les
caractristiques distinctes du rgime actuel dutilisation quitable, comme
certaines proccupations qui vitent de promouvoir de faon excessive les
droits des propritaires, et sur des facteurs qui sont plus flexibles que ceux
en vigueur aux tats-Unis. Lauteure est prudente par sa volont de ne pas
clipser les crateurs, qui ne sont que parfois les propritaires de leurs
oeuvres et dont le traitement est devenu plus confus aprs CCH. Lauteure
suggre plusieurs faons damliorer le rgime. Ces solutions ne se limitent
pas des rformes juridiques, mais comprennent aussi des approches
populaires, cest–dire des best practices dveloppes par les usagers
eux-mmes et qui sont particulirement prometteuses, ayant dj contribu
dterminer quune utilisation est quitable dans CCH et plusieurs autres
arrts.
* Assistant Professor, Osgoode Hall Law School, York University, D.Phil. (Oxford). Member of the
Bar of Ontario. This article is based on a study I conducted for Canadian Heritage, Copyright Policy
Branch, entitled Fair Dealing After CCH. I am most grateful to the team at DGCT for engaging in this
critical topic. My thanks also go to David Vaver, Mario Bouchard, Warren Sheffer and Cory Schneider
for comments on an earlier version of this article, to Essien Udokang, Lauren Lodenquai, and
Sanjukta Tole for helpful research, and to the editors at the McGill Law Journal for their outstanding
work. Comments are welcome at gdagostino@osgoode.yorku.ca.
Giuseppina DAgostino 2008
To be cited as: (2008) 53 McGill L.J. 309
Mode de rfrence : (2008) 53 R.D. McGill 309
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Introduction
I. Fair Dealing in Canada
A. Legislative Context
B. Analyzing CCH
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a. Purpose (and Commercial Nature) of the Dealing
b. The Character of the Dealing
c. The Amount of the Dealing
d. Alternatives to the Dealing
e. Nature of the Work
f. Effect of the Dealing on the Work
2. CCH Observations: User-centric Approach
a. Defence to User Right
b. Expanded Purposes
c. Exceptions and Fair Dealing
d. Constructing Fair DealingInfringement, Burden
of Proof, Agency, and Institutional Practices
e. Cautionary Note on CCH User-centric Policy
3. State of Judicial Play Before CCH
a. Restrictive Interpretation
b. Liberal Interpretation
c. Motive
d. Policy
4. Post-CCH: Have Courts and Tribunals Taken CCHs Lead?
a. Copyright Board Decisions
b. Note on the Educational Context
II. Fair Dealing in the United Kingdom
A. What Have the Courts Said on the Enumerated Purposes?
1. Research or Private Study
2. Criticism or Review
3. Current Events Reporting
B. The Dealing Must be Fair
C. Hierarchy of Factors
III. Fair Use in the United States
A. U.S. Legislation
1. Four Fair Use Factors
a. The Purpose and Character of the Use, Including
Whether Such Use Is of a Commercial Nature or
Is for Non-Profit Educational Purposes
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G. DAGOSTINO HEALING FAIR DEALING?
b. The Nature of the Copyrighted Work
c. The Amount and Substantiality of the Portion Used
in Relation to the Copyrighted Work as a Whole
d. The Effect of the Use upon the Potential Market for
or Value of the Copyrighted Work
2. Other Fair Use Factors
a. Monopolistic and Competitive Practices (and
Necessity)
Industry Practices and Institutional Policies
b.
Fair Use is Ill
a. Limits of TEACH Act
b. Reasons for Optimism: Best Practices
3.
IV. Comparative Assessment
A. Hierarchy of Factors, Not Number of Factors
1. Purpose (and Commercial Nature) of the Dealing
2. Nature of the Work
B. Other Factors and Best Practices
Conclusions
A. Do Nothing?
B. Legislate CCH Factors?
C. Cherry-pick Other Laws?
D. Fair Dealing Best Practices?
E. Clarify Copyright Act? Clarify Policy Objectives?
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Introduction
The copyright doctrine of fair dealing could have made its first statutory
appearance as early as 1842. It was 1842 when a fair dealing facsimile was
introduced for debate in Parliament in the United Kingdom. If passed, clause 15 of
the bill to amend the then-existing Copyright Act would have been the United
Kingdoms first fair dealing provision allow[ing] extracts [of copyrighted works] for
purposes of criticism, judgement, or argument.1 However, this provision was
eventually deleted before the bill arrived to the House of Lords because it was
thought to impede the general diffusion of literature2 and to be entirely
inconsistent with the public interest.3 Todays view is much different: fair dealing is
said to advance the general diffusion of literature and promote the public interest.4
This marked shift in thinking about copyright and the importance of fair dealing
is understandable. Over the course of the years, there has been an expanse in
copyright protection. Copyright owners have demanded more and more rights. Many
scholars have tracked this expanse, pointing to more works subject to copyright
protection (and subject to different types of intellectual property laws), longer terms
of protection, and more grounds of (criminal) liability.5 The law has not been the sole
culprit: courts and invariably owners themselves through private ordering have
1 (1842) 62 Hansards Parliamentary Debates (3rd) 890 at 890 [Debate 1842] (debated during a
House Committee meeting on 20 April 1842, prior to the reporting stage of the bill). The bill received
royal assent on 1 July 1842 and passed the Copyright Act, 1842 ((U.K.), 5 & 6 Vict., c. 45), amending
the predecessor Copyright Act, 1814 ((U.K.), 54 Geo. III, c. 156). For an excellent resource on
primary historical copyright material, see Primary Sources on Copyright, 14501900, online:
Copyright History
2 Debate 1842, ibid. at 892 (Bowring). In justification of the provision, Lord Mahon, a Member of
Parliament, explained that it was necessary to adopt some measure for the prevention of the artifices
which are constantly resorted to in order to profit by extracts from popular works (ibid. at 891).
Curtailing piracy and allowing the author to have a remedy were advanced as reasons for enacting the
provision.
3 Ibid. at 891 (Agliongy). This deletion should not suggest that the United Kingdoms historical
copyright treatment was against the public interest. For more critical accounts of copyright history, see
Ronan Deazley, Rethinking Copyright: History, Theory, Language (Cheltenham, U.K.: Edward Elgar,
2006).
4 The importance of fair dealing was acknowledged in CCH Canadian Ltd. v. Law Society of Upper
Canada (2004 SCC 13, [2004] 1 S.C.R. 339, 236 D.L.R. (4th) 395 [CCH]). A growing corpus of
academics link fair dealing to the promotion of the public interest. See e.g. Carys J. Craig, The
Changing Face of Fair Dealing in Canadian Copyright Law in Michael Geist, ed., In the Public
Interest: The Future of Canadian Copyright Law (Toronto: Irwin Law, 2005) 437 [Craig, Changing
Face].
5 See e.g. David Vaver, Copyright and the Internet: From Owner Rights and User Duties to User
Rights and Owner Duties? (2007) Case W. Res. L. Rev. 1 [forthcoming, on file with author].
313
G. DAGOSTINO HEALING FAIR DEALING?
2008]
fuelled this expansion.6 Also, authors, the supposed initial owners of copyright, have
been a functional and rhetorical stand-in for owners since typically they have
assigned the bulk of their rights.7 These developments are among those that have led
some to call this expansion in copyright the second enclosure movement8 or others
to observe that we live in an infringement nation.9 As a result, largely facilitated by
todays technological ease to network and communicate, there has been a push back
by increasingly vocal user groups demanding rights.10 In Canada, this push has
been manifested on many levels, but perhaps most forcefully against government,
which has received calls for fair copyright reform.11 With regard to reform, the
focus has naturally fallen on the doctrine of fair dealingwithin certain limits, what a
user can do with a substantial part of a copyrighted work without permission of the
owner.12 So while copyright grants exploitation rights to owners of original works
and, therefore, grounds to sue based on copyright infringement, fair copyright
proponents argue that such rights should be balanced against user rights, and that fair
dealing is the answer.13 Indeed, the fair dealing doctrine is a key part of the social
bargain at the heart of copyright law, in which as a society we concede certain limited
individual property rights to ensure the benefits of creativity to a living culture … and
is [now] more important today than ever before.14 Canadas fair dealing doctrine,
6 See e.g. Eldred v. Ashcroft, 537 U.S. 186 (2003) (discussing the constitutionality of the Copyright
Term Extension Act, Pub. L. No. 105-298, 112 Stat. 2827 (1998)); Daniel J. Gervais, Use of
Copyright Content on the Internet: Considerations on Excludability and Collective Licensing in
Geist, supra note 4, 517 at 537 (on the invasion of the private sphere).
7 See Giuseppina DAgostino, Canadas Robertson Ruling: Any Practical Significance for
Copyright Treatment of Freelance Authors? [2007] Eur. I.P. Rev. 66 [DAgostino, Robertson
Ruling]; Giuseppina DAgostino, Freelance Authors for Free: Globalisation of Publishing,
Convergence of Copyright Contracts and Divergence of Judicial Reasoning in Fiona Macmillan, ed.,
New Directions in Copyright Law (Cheltenham, U.K.: Edward Elgar, 2005) 166 [DAgostino,
Freelance Authors]; Giuseppina DAgostino, Copyright Treatment of Freelance Work in the Digital
Era (2002) 19 Santa Clara Computer & High Tech. L.J. 37 [DAgostino, Copyright Treatment].
8 James Boyle, The Second Enclosure Movement and the Construction of the Public Domain
(2003) 66 Law & Contemp. Probs. 33.
9 John Tehranian, Infringement Nation: Copyright Reform and the Law/Norm Gap [2007] Utah L.
Rev. 537.
Facebook
Copyright for Canada]).
10 For a Canadian example, see Fair Copyright for Canada groups currently springing up on
[Fair
(online: Facebook
11 Ibid.
12 In Canada, s. 3 of the Copyright Act sets out the bundle of economic rights (e.g., reproduction
rights) to which a copyright owner is entitled, s. 27 delineates infringement, and s. 29 fair dealing
(R.S.C. 1985, c. C-42 [CCA]).
13 Fair Copyright for Canada, supra note 10.
14 Association of Independent Video and Filmmakers (ANF) et al., Documentary Filmmakers
Statement of Best Practices in Fair Use (18 November 2005) at 1-2, online: Center for Social Media
refer to U.S. fair use but the same comments certainly hold true for fair dealing. See Craig, Changing
Face, supra note 4.
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along with that of other former U.K. colonies, has been seen as the weak imperial
import, and not up for the job.15 Fair dealing, as found in the United Kingdoms
existing copyright framework, has been widely characterized as restrictive, featuring
an exhaustive list of defined exceptions.16 Its U.S. cousin, fair use, has been seen
(mainly by non-U.S. scholars) as a more robust vehicle for users.17 In contrast to the
Canadian provision, which has traditionally only applied to a work used for one of a
closed list of enumerated purposes, fair use allows any use of a work to be fair
pursuant to a set of factors that aid in the decision-making process.
The envy for common law copyright reformers thus has been the U.S. fair use
provision, the fairest of them all.18 Mainly concerned with fair dealing in the United
Kingdom, Robert Burrell has ably canvassed the fair dealingfair use commentary.
Drawing from his work, onlookers to U.S. fair use can be placed into three main
camps: (1) those who would like to see fair use introduced and replace fair dealing,
(2) those who see its benefits but do not go as far as calling for its introduction, and
(3) those who are more cautious in embracing fair use and point to some drawbacks
in doing so.19
My company would be best suited in the second and third camps, since fair dealing
countries might do well to become less entranced with copying U.S. fair use. As I will
show, while it presents benefits, fair use is no panacea and, as Wendy Gordon has
suggested, is actually ill.20 The title itself of a stimulating conference, Fair Use:
Incredibly Shrinking or Extraordinarily Expanding?,21 held at Columbia Law School on
8 February 2008, captures the fair use chaos. At the conference, leading world experts
advanced their own diverging views on fair use and varying hopes for fair use reform.22
15 Canadas fair dealing provision, s. 29 of the CCA (supra note 12), followed the U.K. Copyright
Act, 1911 (supra note 34). See text accompanying notes 33-35. Until recently, Israel was among the
last to follow the 1911 imperial model. On 19 November 2007, Israel passed the Israel Copyright Act
2007, of which s. 19 is a model of U.S. fair use. See Arial Katz, What Can Canada Learn from Israel
about Copyright Reform? (8 December 2007), online: University of Toronto Faculty of Law Faculty
Blog
16 See Sing., (2004) 78 Hansard Parliamentary Debates 10 (Jayakumar) [Debate 2004] (S. Jayakumar,
Deputy Prime Minister and Minister for Law, describing on 16 November 2004 the need to move away
from Singapores fair dealing provision based on the U.K. model as it has proven restrictive).
17 Ibid. See also Craig, Changing Face, supra note 4.
18 David Nimmer, Fairest of Them All and Other Fairy Tales of Fair Use (2003) 66 Law &
Contemp. Probs. 263.
903 at 912.
19 Robert Burrell, Reining in Copyright Law: Is Fair Use the Answer? [2001] I.P.Q. 361 at 363.
20 Wendy J. Gordon, Keynote: Fair Use: Threat or Threatened (200405) 55 Case W. Res. L. Rev.
21 (Kernochan Center for Law, Media & The Arts and The Columbia Journal of Law & The Arts,
Columbia Law School, New York, 8 February 2008) [Columbia Law School conference]
[unpublished, proceedings on file with author].
22 Paul Goldstein, Anthony Reese, Jane Ginsburg, Laura Heymann, Rebecca Tushnet, Randal
Picker, Barton Beebe, Jessica Litman and Tim Wu are among the presenters who advanced distinct
views on fair use reform (ibid.). Unfortunately no comparative looks were cast.
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My aim will be to focus on Canada and comparatively study its fair dealing
landscape past and present, something only sparsely done.23 Canada presents a
fascinating window into fair dealing especially in light of recent judicial
developments.
In its 2004 decision in CCH Canadian Ltd. v. Law Society of Upper Canada, the
Supreme Court of Canada determined that, for the first time in its history, Canadian
law must recognize a user right to carry on exceptions generally, and fair dealing in
particular.24 Whereas the notion of exceptions to copyright infringement had in the
past been largely premised on a narrow interpretation of its scope, the Court has now
raised it to the level of a general principle. It is thus important in the ongoing project
of copyright-policy reform to probe the meaning of this ruling, since it will affect
potential policy work on exceptions, particularly the conception and application of
the notion of fair dealing.
Understanding Canadas fair dealing framework offers an important contribution
to not only its domestic policies, but wider fair dealingfair use policy development,
debates, and practice. I will observe that because of CCH, the Canadian common law
factors relating to fair use are more flexible than those entrenched in the United
States. In the United Kingdom, certain criteria have emerged from the case law that
are consonant with Canadas pre-CCH framework, and in many ways there is now a
hierarchy of factors, with market considerations at the fore. The real differences,
however, between Canada and its U.K. and U.S. counterparts ultimately lie in the
policy preoccupations of their respective courts, with Canadas top court alone
concerned with championing user rights above all other rights, or at the very least
with not championing owners rights above all others.
In the spirit of working toward attaining copyright balancewhere the interests
of users, creators, owners and the general public are consideredsome potential
solutions will be advanced. The main focus of this article is the applicable legislation
and jurisprudence, although as will become apparent the solutions do (and should)
also lie outside (and are complementary to) the realm of the law and the courts. While
doing nothing does not seem to be the appropriate response, legal intervention may
not be warranted either. Rather than, or at the very least together with, reforming the
law, establishing fair dealing best practices is most promising. The affected parties in
specific industries together can develop guidelines to help the courts make decisions
on fair dealing that are both clearer and fairer. As will become obvious from the
jurisprudential merry-go-round in each of the examined jurisdictions, in which some
factors count more than others (some are stampeding factors, for example), no fair
usefair dealing framework is perfect, and a courts decision will be influenced by its
23 A significant exception is my colleague, Carys Jane Craig, whose work I refer to frequently
throughout this paper and to whom I am very grateful for sharing her thesis. See Carys Jane Craig,
Fair Dealing and the Purposes of Copyright Protection (LL.M. Thesis, Queens University, 2000)
[unpublished] [Craig, Fair Dealing].
24 Supra note 4.
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understanding of copyright laws objectives, especially in light of evolving user
practices. U.S. initiatives in this area can serve as fruitful sources of inspiration for
Canadian fair dealing reform and CCH sanctions the development of such a
grassroots approach. For the Supreme Court of Canada, user-generated policies and
practices comporting with fair dealing continue to be important determinants to
assessing fairness.
This article will proceed in four parts. Part I will examine the significance of
CCH in rooting a user right in Canada. At this early juncture, it is useful to step back
and revisit pre-CCH cases, which are often seen as user unfriendly, and then gaze
forward into the post-CCH jurisprudential scene. After setting out the Canadian fair
dealing legislative and jurisprudential landscape, the article will begin to explore this
legal backdrop in other jurisdictions. U.K. fair dealing and U.S. fair use will be
respectively examined in Parts II and III. In discussing U.S. fair use, particular
attention will be paid to the flurry of criticism against it, with specific reference to the
educational sector. Part IV will then compare the three jurisdictions and the article
will conclude with some suggestions for reform.
While this article investigates the legislative and jurisprudential landscape of fair
dealing, it recognizes that other matters, such as the role of contract and technology,
may also affect fair dealingfair use. As I have argued elsewhere, the role of contract
in copyright law cannot be underestimated.25 For instance, contract often trumps
copyright, leaving freelance authors with fewer rights (and compensation).26 On the
other hand, fairer contracts may actually enhance the operation of copyright law to
favour authors. Similarly, contract law can both promote and undermine the interests
of users, and any party in the copyright system for that matter. If the objective of
copyright law is presumably to balance the interests among the various copyright
stakeholders in the public interest, then it is thus important to assess how the role of
contract is embedded in the CCA, and how it is deployed in practice to promote and
temper the desired objectives of copyright law.
The relationship between technology and fair dealingfair use is equally material.
Like contract, technology can undermine and promote the various copyright
stakeholder interests. The link between technology and fair dealingfair use and other
exceptions has been specifically examined in the United States, and the findings are
negative.27 The CCA needs to be mindful of this dynamic. While each of these matters
is critical and will be raised in this article where relevant, a fuller analysis of the roles
of technology and contract is left for another time and place. Meriting further scrutiny
are the recent Bill C-61 amendments unsuccessfully introduced in the Parliament of
25 See supra note 7.
26 Ibid. Where freelance authors may end up with no rights if it is found that they impliedly licensed
their electronic rights found to be infringing in Robertson v. Thomson Corp. (2001), 15 C.P.R. (4th)
147, 109 A.C.W.S. (3d) 137 (Ont. Sup. Ct.), (2004), 72 O.R. (3rd) 481, 243 D.L.R. (4th) 257 (C.A.),
2006 SCC 43, [2006] 2 S.C.R. 363, 274 D.L.R. (4th) 138.
27 See Parts III.A.2 and III.A.3.
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G. DAGOSTINO HEALING FAIR DEALING?
2008]
Canada, in which contract and technological protection measures often trumped (and
undermined) fair dealing and the proposed exceptions.28 Equally important and
beyond the scope of this analysis are the actual practices of stakeholders, including
the trend toward embracing technology and promoting the goals of easy and open
access. The software open-access movement and Creative Commons licensing are
some models complementing certain ethics of fair dealing.29
Last, because this article is limited to the domestic and comparative aspects of
fair dealing, it cannot assess the international dimensions of the issue, though other
scholars have begun to do so.30 CCH is unlikely to be a cause for concern since it
probably does not violate the three-step test of the Berne Convention for the
Protection of Literary and Artistic Works.31 Should the courts apply CCH
expansively, this may trigger international scrutiny of the legislation, but to date,
there have been no such conflicts. On the contrary, Bernt Hugenholtz and Ruth
Okediji have justified the need to establish an international instrument on limitations
and exceptions to copyright, congruent with the existing international framework.32
I. Fair Dealing in Canada
A. Legislative Context
Before analyzing the jurisprudence starting from CCH, it is useful to outline
briefly the Canadian legislative fair dealing context. In Canada, the doctrine of fair
dealing is statutorily entrenched in the CCA. It was first introduced in 192133 as a
mere duplication of section 2(1)(i) of the U.K. Copyright Act, 1911, providing that
copyright would not be infringed by [a]ny fair dealing with any work for the
28 Bill C-61, An Act to Amend the Copyright Act, 2d Sess., 39th Parl., 2008, cl. 31 (entitled
Technological Measures and Rights Management Information). Bill C-61 died on the order paper on
5 September 2008, when Parliament was dissolved due to an election call by Prime Minister Stephen
Harper. For commentary on Bill C-61, see Giuseppina DAgostino, Not all sides represented in
debate on copyright bill Toronto Star (19 June 2008) AA8. For a map of the flurry of commentary,
see Michael Geist, Mapping C-61 Media Coverage (24 June 2008), online: Michael Geist
29 See Creative Commons, About, online: Creative Commons
Faculty Research (2006) 85 Neb. L. Rev. 351.
30 See e.g. Daniel Gervais, The Purpose of Copyright Law in Canada (2005) 2 University of
Ottawa Law and Technology Journal 315.
31 9 September 1886, 828 U.N.T.S. 221, 168 Can. T.S. 1962 No. 13, art. 9(2) [Berne Convention].
32 P. Bernt Hugenholtz and Ruth L. Okediji, Conceiving an International Instrument on Limitations
and Exceptions to Copyright, sponsored by Open Society Institute (OSI), Final Report (6 March
2008).
33 Copyright Act, S.C. 1921, c. 24, s. 16(1)(i).
MCGILL LAW JOURNAL / REVUE DE DROIT DE MCGILL
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purposes of private study, research, criticism, review or newspaper summary.34 Since
1921, fair dealing has twice been amended.35 The amendments distinguished between
the treatment of the purposes of research and private study on the one hand, and
criticism, review and news reporting on the other. For the latter, there were for the
first time conditions relating to acknowledgement of the source. Section 29 of the
CCA now states:
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(i) author, in the case of a work,
(ii) performer, in the case of a performers performance,
(iii) maker, in the case of a sound recording, or
(iv) broadcaster, in the case of a communication signal.
(a) the source; and
(b) if given in the source, the name of the
29. Fair dealing for the purpose of research or private study does not infringe
copyright.
29.1 Fair dealing for the purpose of criticism or review does not infringe
copyright if the following are mentioned:
29.2 Fair dealing for the purpose of news reporting does not infringe copyright
if the following are mentioned:
(a) the source; and
(b) if given in the source, the name of the
(i) author, in the case of a work,
(ii) performer, in the case of a performers performance,
(iii) maker, in the case of a sound recording, or
(iv) broadcaster, in the case of a communication signal.
Traditionally, scholars, practitioners, and the courts construed fair dealing as a
defence to copyright infringement. The defendant had to prove that (1) the action
supposedly infringing copyright fit within one of the enumerated purposes (i.e.,
34 (U.K.), 1 & 2 Geo. V, c. 46, s. 2(1)(i). Analyzing the history of this provision, see Burrell, supra
note 19 at 368.
35 North American Free Trade Agreement Implementation Act, S.C. 1993, c. 44, s. 64(1), entered
into force 1 January 1994 as CCA, supra note 12, s. 27(2)(a); An Act to Amend the Copyright Act, S.C.
1997, c. 24, s. 18, entered into force 1 September 1997 as CCA, ibid., s. 29.2 (being the current
provision). For a discussion of the logic behind these amendments, which added a new burden on the
defendant user, see Hugues G. Richard, Fair dealing: Criticism, Review and Newspaper Summaries
(1994), online: Leger Robic Richard
319
G. DAGOSTINO HEALING FAIR DEALING?
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research or private study, criticism or review, and news reporting), (2) the action was
fair, and (3) in the case of the last two categories, there was acknowledgement of the
source. Typically, the enumerated grounds were interpreted as exhaustive, since any
purpose not falling strictly within an enumerated ground was considered an
infringement.36 However, as shown below, this may no longer be the case post-CCH.
The CCA also contains specific exceptions for educational institutions and
libraries, archives, and museums (commonly referred to as LAMs), as well as for
copying works deposited in archives and reproducing copyrighted works for persons
with disabilities.37 These exceptions are meant to be compliant with the Agreement on
Trade-Related Aspects of Intellectual Property Rights,38 which confines such
exceptions to certain special cases which do not conflict with a normal exploitation
of the work and do not unreasonably prejudice the legitimate interests of the right
holder.39 Of note is that a court may rely on public-interest grounds for allowing an
otherwise infringing activity, but this common law power has been rarely exercised in
Canada or in the United Kingdom, where it was invented.40
B. Analyzing CCH
1. CCH Canadian Ltd. v. Law Society of Upper Canada
In CCH, a unanimous Supreme Court of Canada ruled that the Law Society of
Upper Canada did not infringe copyright because its Great Library request-based
reproduction services fell squarely within the allowances of the fair dealing doctrine.
At issue were the single copies of reported decisions, case summaries, statutes,
regulations and text selections reproduced pursuant to the Great Library Access
Policy.41 The Great Library provided lawyers and other authorized persons with
copies of such works to assist them with advising clients, giving opinions, preparing
legal documents and arguing cases. According to the Court, section 29 of the CCA,
36 See e.g. Compagnie gnrale des tablissements MichelinMichelin & Cie v. National
Automobile, Aerospace, Transportation and General Workers Union of Canada (CAW-Canada)
(1996), [1997] 2 F.C. 306, 124 F.T.R. 192 (F.C.T.D.) [Michelin] (denying parody).
37 Supra note 12, ss. 29.4-30.4, 32.
38 Being Annex 1C to The Final Act and Agreement Establishing the World Trade Organization, 15
December 1993, 33 I.L.M. 81.
39 Ibid., art. 13. This provision incorporates art. 9(2) of the Berne Convention, which provides for
the so-called three-step test (supra note 31).
40 See David Vaver, Canadas Intellectual Property Framework: A Comparative Overview (2004)
17 I.P.J. 125 at 149 [Vaver, Canadas IP Framework]. The defence only gained judicial notice once
in Canada in R. v. James Lorimer & Co., in relation to Crown copyright, and was ultimately not
successful ([1984] 1 F.C. 1065, 77 C.P.R. (2d) 262 (C.A.)).
41 While the issue of authorization of copyright infringement is also material, it will not be
addressed.
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alongside the other exceptions, must not be interpreted restrictively.42 Research
should be accorded a large and liberal interpretation in order to ensure that users
rights are not unduly constrained and are not limited to non-commercial or private
contexts.43 In this case, lawyers carrying on the business of law for profit were held
to be conducting noninfringing research.
The Court explained that to prove a dealing was fair pursuant to section 29 of the
CCA, the defendant Law Society had the onus to prove that the dealing was (1) for
the purpose of either research or private study and (2) fair. These considerations are
consistent with those of a traditional fair dealing test in Canada and the United
Kingdom.
As the Court began its analysis of the fair dealing doctrinein which it drew
from U.K. and U.S. approachesit endorsed certain factors that may be more or less
relevant in future fair dealing cases. It also acknowledged that other unnamed factors
could be used to assess the fairness of a dealing. The Court articulated and applied six
factors in deciding the case: the purpose (and commercial nature) of the dealing, the
character of the dealing, the amount of the dealing, alternatives to the dealing, the
nature of the work, and the effect of the dealing on the work.
a. Purpose (and Commercial Nature) of the Dealing
As with the interpretation of enumerated grounds the Court asserted that this first
criterion should not be given a restrictive interpretation or this could result in the
undue restriction of users rights.44 Courts should adopt an objective test to assess the
users real purpose or motive in using the copyrighted work. The Great Library
Access Policy provided that patrons making a request must delineate an enumerated
purpose for use, and where any ambiguity arises, that the matter be referred to the
Reference Librarian. Significantly, the Great Librarys prudent practices were
instrumental in persuading the Court to weigh heavily in favour of the purpose factor.
As seen below, user practices continue to be important determinants to assessing
fairness. The Court concluded that the policy provided reasonable safeguards that the
materials were being used for the purpose of research and private study.
The commercial nature of the dealing is an important consideration: research
done for commercial purposes may not be as fair as research done for research
purposes.45 However, as noted, the Court emphasized that research is not limited to
non-commercial or private contexts.46 While the Court did not clearly state that
commercial research is fair dealing, it stated that it certainly can be.
42 Supra note 4 at para. 48.
43 Ibid. at para. 51.
44 Ibid. at para. 54.
45 Ibid. at para. 54.
46 Ibid. at para. 51.
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G. DAGOSTINO HEALING FAIR DEALING?
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b. The Character of the Dealing
Here the focus was on how the works were dealt with; for instance, multiple
copies that are widely distributed can be unfair. The Law Societys dealing was
considered fair: only single copies were made available to individual members of the
legal profession.47 Further, the Court stated that if the copy is destroyed after use, this
may favour a finding of fairness. Also, the Court suggested that custom or practice in
the industry can be used to assess fairness.48 Here, the Courts reliance on custom
indicates its willingness to consider the practices of the specific user communities. It
is unclear whose perspective in the industry should be valued. Relying on custom can
be dangerous since custom is often unilateral and often set by the party with the
greater bargaining power.49 Arguably, should the perspective of the educators or
students be considered, there could be fair dealing. Alternatively, if the perspective of
the right holder is valued, custom could work against users. As the Court did not
expressly apply custom, it will be challenging to anticipate its applicability to future
cases. Courts, of course, can (and should) rely on the existing body of case law in
copyright and contract law to assess custom.50 The custom is implied by the custom
of a locality or by the usage of a particular trade and must be strictly proved.51
c. The Amount of the Dealing
This factor seems to have been a weaker consideration. The logic is plain: the
larger the taking, the less fair the dealing. But of course, in several circumstances, as
in the case of photographs, it may be impossible to deal fairly with the work without
copying the entire work. The Court noted that for the purpose of research or private
study, it may be essential to copy an entire academic article or an entire judicial
decision.52 This wholesale inclusion would not likely be available for the purposes of
criticism or review in the case of literature. Research and private study are thus
accorded wider scope under the Courts reading of fair dealing. On the amount of the
dealing, the Court relied on the Great Librarys Access Policy in determining that the
institution would exercise discretion to ensure fair dealing.53 On most occasions, only
one judgment was copied and a request for more than 5 per cent of a work of
47 Ibid. at para. 67.
48 Ibid. at para. 55.
49 See e.g. DAgostino, Robertson Ruling, supra note 7 (discussing the case of freelance
journalists and their publishers in Canada where publishers relied on their custom to justify digital
reproduction of the authors works without their permission or due payment).
50 See Giuseppina DAgostino, En attendant Robertson: Dfinir la possession du droit dauteur sur
les uvres des pigistes dans les nouveaux mdias (2006) 18 C.P.I. 163 [DAgostino, En attendant
Robertson].
51 Jack Beatson, Ansons Law of Contract, 25th ed. (Oxford: Oxford University Press, 2002) at 151.
This high standard requires that the custom be (1) notorious, (2) as certain as the written contract,
and (3) reasonable (ibid.).
52 CCH, supra note 4 at para. 56.
53 Ibid. at para. 68.
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secondary materials could be refused.54 There was no evidence that the Great Library
received and supplied multiple copy requests. Once again, user practices informed the
Courts reasoning.
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d. Alternatives to the Dealing
A court may decide against fair dealing where (1) a noncopyrighted work was
available as an alternative, and (2) the use of the copyrighted work was not
reasonably necessary to achieve the ultimate purpose.55 For instance, if a criticism
would be equally effective without reproducing the copyrighted work, this may weigh
against fair dealing.56
In CCH, the Court remarked that there were no alternatives to the Toronto-based
Great Librarys photocopying service because (1) 20 per cent of the Great Library
patrons were outside Toronto, and (2) researchers were not allowed to borrow
materials from the Great Library, thus justifying the need for copying.57 The Court
focused more on the ease of access to the works than on the actual availability of
noncopyrighted works.
The Court posited that the availability of a licence was irrelevant to whether there
were alternatives to the dealing. Accordingly, a users failure to obtain a licence
should not be interpreted as proof that the dealing was not fair. If this were the case,
the owners monopoly would be extended beyond the objective of balance in the
CCA. As such, if a dealing clearly falls into fair dealing in the first place, that dealing
should not be subject to a licence. This analysis seems consonant with several
stakeholder positions within the educational community that there exists a clear-for-
fear culture to obtain often unnecessary licences out of excessive caution.58
54 See ibid.
55 Ibid. at para. 57.
56 Compare Hyde Park Residence Ltd. v. Yelland, [2000] EWCA Civ 37, [2000] 3 W.L.R. 215 at
para. 40 [Hyde Park] (finding that the publication of photographs of Lady Diana was merely
gratuitous because describing any relevant portion of the photos would have sufficed).
57 CCH, supra note 4 at para. 69.
58 In Canada, see Copying Internet Resources in Education, online: Council of Ministers of
Education, Canada
Margaret Wilkinson, Filtering the Flow from the Fountains of Knowledge: Access and Copyright in
Education and Libraries in Geist, supra note 4, 331. In the United States, see William W. Fisher &
William McGeveran, The Digital Learning Challenge: Obstacles to Educational Uses of Copyrighted
Material in the Digital Age: A Foundational White Paper (10 August 2006), online: The Berkman
Center for Internet & Society
Process or Chilling Effects? Takedown Notices Under Section 512 of the Digital Millennium
Copyright Act (2006) 22 Santa Clara Computer & High Tech. L.J. 621.
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G. DAGOSTINO HEALING FAIR DEALING?
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e. Nature of the Work
According to the Court, if a work is unpublished, the dealing may be more fair
in that its reproduction with acknowledgement could lead to a wider public
dissemination of the work.59 While the Court remarked that this would serve one of
the goals of copyright, it is nonetheless a marked departure from previous Canadian
case law. Equally, as noted below, this reasoning is contrary to the U.K. and U.S. case
law.60 The Court suggested that protecting the author and furthering wide public
dissemination are two conflicting objectives. One cannot further public dissemination
if the priority is to protect (and presumably reward) the author. One factor that may
soften this anti-author perspective is if the work in question is confidential in nature.61
Still, the Courts disregard for a long line of precedent without explanation (or
acknowledgment) is problematic.
The Great Library easily satisfied this factor, as the works in question were
essential to legal research and were subject to its Access Policy, which stated that the
patrons purpose in accessing the works must be for research, private study, criticism,
review, or use in legal proceedings.62
f. Effect of the Dealing on the Work
If the work in question competes for the market of the original work, it is less
likely that the dealing will be found to be fair. In underscoring that the market factor
is neither the only factor nor the most important factor,63 the Court seemed to
suggest that this factor is less important than the others. Interestingly, this market-
substitute factor is more important in the United Kingdom.64
No evidence was advanced to indicate any effect on the publishers market.
Rather, the publishers continued to produce new reporter series and other legal
publications during the period of the Great Librarys request-based copying. The
Court acknowledged that while the Law Society had the evidentiary burden, it
lacked access to evidence about the effect of the dealing on the publishers
59 Supra note 4 at para. 58.
60 The U.S. courts went as far as developing a presumption against fair dealing for unpublished
works. See Harper & Row Publishers v. Nation Enterprises, 471 U.S. 539 at 546, 105 S. Ct. 2218
(1985) [Harper & Row cited to U.S.] (later overrode by Fair Use of Unpublished Works, Pub. L. No.
102-492, 106 Stat. 3145 (1992) (codified as amended at 17 U.S.C. 107 (1994)). In the United
Kingdom, see Hyde Park, supra note 56.
61 See e.g. Hyde Park, ibid. at para. 40. The court considered that the works were subject to an
agreement: I do not believe that a fair minded and honest person would pay for the dishonestly taken
driveway stills and publish them in a newspaper knowing that they had not been published or
circulated … (ibid.).
62 Supra note 4 at para. 71.
63 Ibid. at para. 59.
64 See e.g. Ashdown v. Telegraph Group Ltd., [2001] EWCA Civ 1142, [2002] Ch. 149 [Ashdown]
(where market substitute is the most important factor).
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markets.65 Thus, this decision suggests that the onus may be reversed if the
defendant cannot access market-impact evidence. This seems fair, as the publishers
are often the more sophisticated parties in a better position to access such records.
Such a reversal of onus, however, is potentially a tall order, as it may involve crystal-
ball gazing.66
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2. CCH Observations: User-centric Approach
The analysis of the six factors above reveals the Courts pro-user orientation. As
will be further detailed below, this orientation is apparent in the Courts language, its
liberal interpretation of fair dealing, its elevation of the doctrine as compared to other
copyright exceptions, and its underlying policy preoccupations.
a. Defence to User Right
Even before CCH, depending on the speakers perspective, various terms were
used to denote fair dealing, such as exceptions, exemptions, defences, or user
rights.67 Still, whereas previous cases and most textbooks conceived of fair dealing
as a defence, CCH construed it more as a right and an integral part of copyright
law.68
b. Expanded Purposes
CCH took a liberal approach to the enumerated purposes of the dealing, stating
that they should not be given restrictive interpretation.69 Hence, new purposes,
including parody, could be included under the CCAs enumerated grounds, especially
in light of the real purpose or motive in using the copyrighted work.70 Significantly,
the Courts liberal analysis of the first of the six factors, the purposes of the dealing,
was similar to its approach under the first part of the test, which determined whether
65 Supra note 4 at para. 72.
66 See infra note 225 and accompanying text.
67 Vaver, Canadas IP Framework, supra note 40 at 148-49; Parveen Esmail, CCH Canadian Ltd.
v. Law Society of Upper Canada: Case Comment on a Landmark Copyright Case, Case Comment,
(2005) 10 Appeal 13 at 19.
68 Supra note 4 at para. 48. For fair dealing as a defence pre-CCH, see Allen v. Toronto Star
Newspapers Ltd. (1997), 36 O.R. (3d) 201 at 208-09, 152 D.L.R. (4th) 518 (Div. Ct.) [Allen cited to
O.R.]; for fair dealing as an exception, see Boudreau v. Lin (1997), 150 D.L.R. (4th) 324 at 334, 75
C.P.R. (3d) 1 (Ont. Ct. J. (Gen. Div.)) [Boudreau cited to D.L.R.]. More recently, terms like
principle have also been used. See M. Bouchard, The Copyright Board: A Review of Some Recent
Issues and Future Challenges (Paper presented at The Law Society of Upper Canada Entertainment,
Advertising & Media Law Symposium, Toronto, 2728 April 2007) at 10 [unpublished].
69 CCH, ibid. at para. 54.
70 Ibid.
G. DAGOSTINO HEALING FAIR DEALING?
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the research purposes were fair.71 The Court thereby sought to align itself here with
the more flexible U.S. approach, described below, where there are no enumerated
grounds, but an open list of purposes.
While Crown copyright was not at issue in the decision, CCH clarified that entire
court decisions, typically under Crown copyright, can be copied fully and fairly.
Following the same logic, this may be the case with other government works, such as
statutes, reports, and press releases.
325
c. Exceptions and Fair Dealing
CCH favours parties relying on fair dealing over those who make use of other
exceptions.72 While counsels arguments at the onset of CCH in 1993 were in large
part conditioned by the lack of libraries, archives and museums or educational
institutions exceptions, the Court nonetheless emphasized that a user can always rely
on the fair dealing doctrine first: It is only if a library were unable to make out the
fair dealing exception under s. 29 that it would need to turn to s. 30.2 of the
Copyright Act to prove that it qualified for the library exemption.73 The Court
preferred the blessing of the fair dealing doctrine over reliance on specific exceptions.
This may be because fair dealing, as construed by the Court, now allows for a more
flexible framework. Irrespective, the Court made clear that all exceptions, like fair
dealing, are users rights.74
d. Constructing Fair DealingInfringement, Burden of Proof,
Agency, and User Practices
In a conventional copyright-infringement suit, the plaintiff has the burden of
proof to show infringement. The burden then shifts to the defendant to advance a
defence. The Court seemed to alter this progression in two ways. First, it skipped a
traditional analysis of infringement. The Courts discussion of infringement was
limited to authorization of infringement, a different analysis from the typical
substantial part doctrine. Having reasoned that there was no authorization, the
Court proceeded immediately into a fair dealing analysis by framing fair dealing as an
exception to copyright.75
Second, the Court stated it may shift the onus of proof in two ways: (1) the
defendant can rely on internal policy rather than individual practices, and (2) the
plaintiff may sometimes have to show that the defendants use negatively affected its
market. Regarding (1), to establish fair dealing, the defendant need not adduce
71 Ibid.
72 Ibid. at para. 49.
73 Ibid.
74 Ibid. at para. 48.
75 Ibid. at para. 51 ([t]he fair dealing exception under s. 29 … ).
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evidence that every use of the provided material was conducted fairly but can rely on
its own general practice.76 For instance, the Great Librarys internal Access Policy
to photocopy only for purposes of research, review, private study, and criticism, with
a corresponding gate-keeper role by the Reference Librarian for the copying of
substantial secondary sourceswas seen as sufficient to show that its own practices
were research-based and fair. It did not need to prove that each of its patrons dealt
fairly with the supplied materials.77 Here it is worth asking whether it is fair for
librarians to shoulder the burden of policing fair dealing. But what are the
alternatives? Establishing rigid rules (e.g., copy quotas through legislation), while
perhaps clearer to all parties, would be too restrictive and not entirely reflective of the
realities of user experiences. Imposing a copy quota is the approach taken in
Australia, where apparently no more than 10 per cent of a work can be copied.78 And
even in the undesirable quota scenario, librarians would still be in a policing role.
From the perspective of CCH, it is helpful to vest librariansoften those with the
most intimate insight into user practiceswith a gate-keeping role no matter the
approach, since it may allow them (and users) to better prove adherence to fair
dealing practices. Similarly, it is wise to consult librarians when formulating fair
dealing policies and when engaging in copyright debates generally since they are
often on the front lines of evolving user practices. The Court placed much weight on
such user practices throughout its reasoning, to the point that their proper adherence
became the most important (unwritten) factor in finding fairness.
Regarding (2), while the Law Society had the evidentiary burden, the Court held
that the plaintiff publishers, and not the defendant users, should make the case that
they were negatively affected because the Law Society was unable to access evidence
of the uses impact on the publishing market. The Court thus allowed the Law Society
to rely again on the Great Librarys general practice to establish fair dealing, rather
than having to adduce evidence. The Court embraced the concept of agency.79 As
illustrated in Society of Composers, Authors & Music Publishers of Canada v.
Canadian Association of Internet Providers (also known as the Tariff 22 decision),80
knowing of the potential of end user infringement will not, absent express knowledge
of end-user infringing activity, be seen as the intermediary authorizing end user
infringement.
76 Ibid. at para. 63.
77 Ibid. at paras. 61-65.
78 See Copyright Act 1968 (Cth.), ss. 10(2)-(2A).
79 See Wilkinson, supra note 58 at 346.
80 Society of Composers, Authors & Music Publishers of Canada v. Canadian Association of
Internet Providers, 2004 SCC 45, [2004] 2 S.C.R. 427 at paras. 126-28, 240 D.L.R. (4th) 1993 [Tariff
22].
2008]
G. DAGOSTINO HEALING FAIR DEALING?
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e. Cautionary Note on CCH User-centric Policy
Any analysis of the state of copyright post-CCH must take into account the
Supreme Court of Canadas understanding of Parliaments policy objectives. The
Court reaffirmed in CCH its previous ruling in Thberge that the CCA has supposedly
dual objectives: a balance between promoting the public interest in the
encouragement and dissemination of works of the arts and intellect and obtaining a
just reward for the creator … 81 The Court maintained that the judiciary should
strive to maintain an appropriate balance between these two goals.82 It suggested that
when copyright law promotes the encouragement and dissemination of works of the
arts and intellect, it serves the public interest. While the Court recognized that
rewarding the creator was an important part of Canadas dualistic copyright
objectives, it implied that such reward does not promote the public interest in the
same way as protecting user rights. For the Court, the chief method of promoting the
public interest was to protect user rights, or at the very least not champion owners
rights above others.
CCHs user-centric expression of balance and the objectives of copyright law is
further seen in its discussion of the doctrine of originality. The Court maintained that
when courts lower the standard of originality, the balance tips in favour of the
author/creator at the expense of a robust public domain to foster future creative
innovation.83 While this is plausible, more often than not, copyright assignments, and
therefore the role of contract law (where the owner steps into the creators shoes),
allow for this erosion. In other words, understanding the dynamic relationship
between creator and owner is also important when accounting for future innovation
and a robust public domain. But it is unclear from the Courts reasoning that it
appreciates fully the creatorowner distinction.
This perhaps ill-conceived copyright thinking is matched by equally ill-conceived
language. The Court juxtaposed the public and the creator in grounding its objectives,
but in framing the issues it stated: This case requires this Court to interpret the scope
of both owners and users rights under the Copyright Act … 84 While the Court noted
the creator in its discussion of balancing copyright objectives, the Court matter-of-
factly substituted the term owner in the framing of the issues. Creators and owners
are not the same category of stakeholders for the purposes of copyright.85 Their
interests are often conflicting. One cannot treat them as if they were synonyms, as the
Court and many commentators often do. Indeed, it is unhelpful when commentators
argue that CCH has shifted the focus of copyright law from the pro-author approach
81 Supra note 4 at para. 10, citing Thberge v. Galerie dArt du Petit Champlain, 2002 SCC 34,
[2002] 2 S.C.R. 336 at paras. 30-31, 210 D.L.R. (4th) 385.
82 CCH, ibid. at para. 10.
83 Ibid. at para. 24.
84 Ibid. at para. 13 [emphasis added].
85 See generally DAgostino, Robertson Ruling, supra note 7; DAgostino, Freelance Authors,
supra note 7; DAgostino, Copyright Treatment, supra note 7.
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that had dominated in the past to a balanced approach that weighs the rights of the
author against those of the user.86 This conflation leads commentators to state that
the law in Canada is now that the courts must balance the interests of the authors of
works against the public interest.87 Such remarks are unfortunate copyright parlance
in Canadian CCH commentary, and in copyright generally.88
So while it is laudable that the Court has finally championed user rights, which
were long forgotten by Canadian legislatures and the judiciary, where do creators fit
in CCH? While the policy for creators is not central to CCH (perhaps because the
case mainly deals with legal professionals as creators, not as musicians, freelance
authors, bloggers, or other stereotypical parties in copyright proceedings), this
oversight may limit future balanced rulings. Would the Court have reached a
similar ruling if other categories of creators were at issue? Robertson v. Thomson
Corp.,89 dealing with freelance authors, may decide such an issue, but the new trial is
yet to make its way to the courts.90 In CCH, legal professionals and lawyers were
creators whose works at issue were decided and shaped by judges and lawyers. The
ultimate goal sought by the Great Librarys copy practices was to ensure that legal
professionals in Ontario can access the materials necessary to conduct the research
required to carry on the practice of law.91 This practice saves the cost of additional
hotel bills and other travel expenses to non-Toronto lawyers and applies to self-
represented litigants as well.92 Had the Court ruled otherwise, Toronto lawyers may
have received an unfair advantage over other members of the profession. Also, it has
been argued that the cost of legal services would have increased for clients had the
publishers been successful (lawyers would have had to pay an additional sum for
copies and would have passed on the cost to their clients).93 Although the Court was
86 Esmail, supra note 67 at 14.
87 Ibid. at 23.
88 But see Michael Geist, Low-tech Case Has High-tech Impact The Toronto Star (22 March
2004) D1 (interpreting CCH as attempting to balance user rights against those of owners and creators).
89 2006 SCC 43, [2006] 2 S.C.R. 363, 274 O.L.R. (4th) 138 [Robertson].
90 In Robertson, the Court dismissed both Robertsons appeal of a decision rejecting her motion for
summary judgment and the class action as certified. A new four-week trial to commence on 29
September 2009 by Robertson against Thomson Corporation is expected to consider fair dealing,
namely, whether the defence of fair dealing applies to any of the infringing acts if there is no implied
licence (updated 31 July 2008).
91 CCH, supra note 4 at para. 64.
92 Esmail, supra note 67 at 23.
93 Law Society of Upper Canada, Notice to the Profession: Supreme Court of Canada Releases
CCH Canadian v. Law Society of Upper Canada Copyright Decision (16 March 2004). It seems that
law societies had nonetheless been in discussion with Access Copyright after the Federal Court
decision. The National Copyright Committee of the Federation of Law Societies of Canada
reaffirmed to CANCOPY [now Access Copyright] its willingness to continue discussions with
respect to possible blanket licenses for certain copying activities by members of the legal profession
(Federation of Law Societies of Canada Copyright Notice to the Profession Benchers Notes 5:3
(December 1999) 6 at 8, online: The Law Society of Newfoundland & Labrador
G. DAGOSTINO HEALING FAIR DEALING?
2008]
intimately familiar with the practices and repercussions of this case, these specific
factors are not easily applicable to other creative domains, where revenue from the
copyrighted work is often the creators sole source of income.94 Consequently, when
determining the fairness of the dealing in future uses, such concerns must be
observed.
329
3. State of Judicial Play Before CCH
Having canvassed Canadas current user-centric and more flexible fair dealing
framework, it is instructive to look back and assess how the existing framework
diverges from what Canada had prior to CCH. In doing so, CCHs advantages and
limitations may come into sharper focus. Before CCH, the judiciary varied in its
approach to fair dealing. Some courts were more restrictive and others more liberal in
their reasoning. Factors like the motive of the dealing were also more pronounced, as
were the policies of copyright toward non-users.
a. Restrictive Interpretation
Most commentators argue that courts pre-CCH had a restrictive interpretation of
fair dealing.95 Many contend that copyright law has been quite expansionist in
protecting the rights of owners and creators, an assertion to which the above
comments also apply as scholarship has often conflated the two parties even before
CCH.96
Perhaps most illustrative of this approach is MichelinMichelin & Cie v. CAW
Canada National Automobile, Aerospace, Transportation and General Workers
Union of Canada (CAW-Canada),97 in which the Michelin tire company sued a union
for copyright infringement arising from its use of the Michelin Man (Bibendum) logo
See The Law Society of Upper Canada, Access to the Law Policy and Guidelines, online: The Law
Society of Upper Canada
Policy].
94 See also William L. Hayhurst, The Canadian Supreme Court of Copyright: CCH Canadian Ltd.
v. Law Society of Upper Canada (2004) Can. Bus. L.J. 134 at 139 (being critical of CCH; arguing
that the courts reasoning with respect to originality applied to a rather select group and went
beyond what would have been expected for literary works). Agreeing with this position on the Courts
wider stance on originality, see Teresa Scassa, Recalibrating Copyright Law? A Comment on the
Supreme Court of Canadas Decision in CCH Canadian Limited et al. v. Law Society of Upper
Canada (2004) 3 C.J.L.T. 89 at 90.
95 Leslie Ellen Harris, Editorial, Copyright & New Media Law Newsletter 8:1 (2004).
96 DAgostino, Robertson Ruling, supra note 7 (arguing that in the context of mainstream
publishing copyright law increasingly favours right holders over authors). See also Carys J. Craig,
Locke, Labour and Limiting the Authors Right: A Warning Against a Lockean Approach to
Copyright Law (2002) 28 Queens L.J. 1; Abraham Drassinower, Taking User Rights Seriously in
Geist, supra note 4, 462; Samuel E. Trosow, The Illusive Search for Justificatory Theories:
Copyright, Commodification and Capital (2003) 16 Can. J.L. & Jur. 217.
97 Supra note 36.
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in leaflets distributed during a labour dispute. The defendants unsuccessfully argued
that their use of Bibendum was a parody and therefore an exception to copyright
infringement under fair dealing for purposes of criticism. In placing the burden of
proof squarely on the defendants, the court ruled that parody was not an exception to
infringement under the CCA or jurisprudence.98 More pointedly, parody was not
synonymous with criticism.99 The court adamantly refused to rely on U.S. case law
allowing parody under fair use.100 And even if the court had followed the U.S. case
law, fair dealing would still have failed since the other two requirements had not been
met: (1) the authors name and the source of the work went unmentioned, and (2)
there was no fair treatment.101 The court noted that exceptions should be strictly
interpreted and that fair dealing in particular has an exhaustive set of grounds under
the CCA.102 Accordingly, ruling otherwise would have created a new exception in the
statute. In this light, Michelin was extremely deferential to Parliament: If Parliament
had wanted to exempt parody as a new exception under the fair dealing provision, it
would have done so.103
This case represents a clear rejection of a U.S. fair use approach that was later
expressly endorsed in CCH. And more specifically, as later discussed, it would also
appear that under CCH the acknowledgment requirement would be construed
liberally and no longer present a hurdle. In light of CCH, Michelins restrictive
approach thus no longer seems to be good law.
b. Liberal Interpretation
Nonetheless, some pre-CCH jurisprudence followed a liberal interpretative
approach. In Allen v. Toronto Star Newspapers Ltd., a freelance photographer sued a
newspaper publisher for reproducing a magazine cover containing a photograph he
took on commission.104 While both sides gave conflicting testimony on industry
custom, the Ontario Court of Justice (General Division) ruled that the photographer
only held copyright in the photo, and not in the cover, which had been created by the
magazine.105 The magazine did not object to the reuse of its cover and, in any event,
the court found that the fair dealing defence relating to news reporting applied.
98 Ibid. at para. 60.
99 Ibid. at para. 61.
100 Ibid. at para. 63.
101 Pursuant to the CCA (supra note 12 and accompanying text). See also Michelin, supra note 36 at
para. 70 ([t]he substantial quantity of the original work used in the leaflets and posters also casts
doubt on the fairness of the defendants treatment).
102 Michelin, ibid. at para. 65, citing Bishop v. Stevens, [1990] 2 S.C.R. 467 at 483-84, 72 D.L.R.
(4th) 97, 31 C.P.R. (3d) 394.
103 Ibid. at para. 71.
104 Allen v. Toronto Star Newspapers Ltd. (1995), 26 O.R. (3d) 308, 129 D.L.R. (4th) 171 (Ct. J.
(Gen. Div.)).
105 Ibid.
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The Ontario Court of Justice (General Division) Divisional Court overturned the
trial decision, ruling that fair dealing does not apply to an entire copyrighted work.
The court held that determining whether an activity constitutes fair dealing is a
purposive exercise and not simply a mechanical test, such that the extent of the
copying is one important factor, but only one to be taken into account, along with
several others.106 While the court did not schematically assess a list of factors as in
CCH, it examined the nature and purpose of the use, which was found to include
reporting current news. Also, the court considered CCHs market-substitute criterion
but concluded that the photograph was not used to gain an unfair commercial or
competitive advantage over [the plaintiff] Allen or [the magazine] Saturday Night.107
Moreover, as in CCH, the court also allowed fair dealing within a commercial context
(in this case, involving a periodical publisher).
As in CCH, Allen adopted a liberal approach and made the following
assessments: (1) the purpose of relaying a current event was allowed in a commercial
context; (2) the nature of the work as an entire work, such as a photograph, was fair
dealing; and (3) the magazine did not seek to gain a commercial advantage over the
original work, and therefore, the market-substitute criterion was not satisfied.
The courts conclusion regarding the extent of the work that was copied differs
from the earlier decision in Zamacois v. Douville,108 in which the same court held that
the reproduction of an entire newspaper article was not fair dealing for purposes of
criticism. The defendants unsuccessfully argued that the article was (1) necessary
because another article published in the same edition criticized the work and (2) of
current interest on an economic or political topic. The court found that a person could
not reproduce an article in full for purposes of criticism without the authors
permission.109 But this decision has come under much criticism, and post-CCH, its
precedential value is weak.110
c. Motive
CCH did not apply motive, or at least bad motive, as a factor.111 In previous cases
such as Boudreau v. Lin,112 no fair dealing defence was recognized for private study
with regard to the substantial use of portions of a students work in a professors
106 Supra note 68 at 211, citing Williams & Wilkins Co. v. United States, 487 F.2d 1345 (Ct. Cl.
1974) [Williams & Wilkins].
107 Ibid. at 209.
108 [1944] Ex. C.R. 208, [1943] 2 D.L.R. 257 [Zamacois cited to D.L.R.].
109 Ibid.
110 Even before CCH, some have argued it was weak. See e.g. Michael F. Morgan, Trash Talking:
The Protection of Intellectual Property Rights in Computer Software (1994) 26 Ottawa L. Rev. 425
(arguing that the approach in Hubbard, infra note 176, seems preferable).
111 Supra note 4 at para. 54. The real purpose or motive was treated as a sub-factor though not
applied (ibid.).
112 Boudreau, supra note 68.
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paper. In Boudreau, the court zeroed in on the fraudulent nature of the dealing. The
defendant, a professor at the University of Ottawa, had actively deleted the
students name from the paper, replaced it with his own along with that of an
associate, presented the paper at a conference without credit, and sold copies of the
paper to other students.113 The professor made only minor changes to the paper: he
removed certain graphs and tables and replaced them with textual explanations, made
minor bibliographic changes, and changed the title.114 Weighing this ample
evidence, the court concluded that the this can hardly be classified as fair
dealing115 and mandated that the defence be restrictively interpreted.116 Even
though one of the courts policy objectives was to prevent the appropriation of the
authors labour, the professors bad-faith conduct, which blatantly breached
copyright, seemed to have weighed heavily against a finding in his favour.117 Besides
the noted evidence, the court did not form a favourable view of the professor, as he
included specific claims as to his contribution to the Boudreau paper in a letter of
application to the University for a promotion.118 It will be interesting to see the
extent to which future fair dealing cases account for bad faith. By contrast, in CCH,
the Great Librarys closely enforced Access Policy put the defendant in a positive
light. It does seem appropriate that courts closely read the evidence and assess the
good or bad faith conduct of the defendant. The very notion of fairness in fair dealing
is antithetical to underhanded behaviour. Fair dealing should not be used to shield
such conduct. At the same time, it is appropriate that good faith conduct, as is clear in
the Great Librarys prudent practices, should favour a finding of fair dealing or, at the
very least, militate against harsher damages.
d. Policy
While CCH featured a user-centric and policy-oriented court, previous cases were
still policy-oriented but perhaps more mindful of the creator. In Breen v. Hancock
House Publishers Ltd.,119 an author copied substantial portions of a thesis into a book
he later published. In denying fair dealing, the court found that while the book
enjoyed little commercial success, the defendant had appropriated the plaintiffs skill,
time, and talent.120 He had made liberal use of about twenty to thirty pages of the
113 Ibid. at 335-36.
114 Ibid.
115 Ibid.
116 Ibid.
117 [T]he University cannot stand idly by while its professors blatantly breach copyright laws
(ibid.). For an interesting discussion of the role of universities in regulating the activities of its
professors, especially vis–vis their students, see ibid.
118 Ibid. at 329. Also, in relation to the issue of authorship, the court found the professors evidence
unsatisfactory and his grasp of the papers concepts superficial at best (ibid. at 331).
119 (1985), 6 C.P.R. (3d) 433, 6 C.I.P.R. 129 (F.C.T.D.) [Breen cited to C.P.R.].
120 Ibid. at 436-37.
G. DAGOSTINO HEALING FAIR DEALING?
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thesis, a qualitatively substantial portion of the original authors work.121 An
interesting question here is how one could argue for the public interest in the
context of this case. Can this creator be distinguished from the authors in CCH who
created decisions and secondary materials? It is unclear whether, after CCH, the court
in Breen would have reached a similar result. CCH should not be read to sanction
what would arguably amount to unfair and unethical dealings.
333
4. Post-CCH: Have Courts and Tribunals Taken CCHs Lead?
While there has been no judicial decision on fair dealing since CCH, cases
addressing copyright issues generally have considered CCH, specifically the Supreme
Court of Canadas discussion of the doctrine of originality, authorization, and general
policy principles.122 In the Tariff 22 decision involving the Society of Composers,
Authors and Music Publishers of Canada (SOCAN) and internet-service providers,
the Court reaffirmed the need for a liberal interpretation that balances rights of
owners and limitations of those rights, as [u]ser rights are not just loopholes.123
The Copyright Board of Canada very recently applied CCH in Re Statement of
Royalties to be Collected by SOCAN for the Communication to the Public by
Telecommunication, in Canada, of Musical or Dramatico-Musical Works (Tariff
22.A)124 and in earlier decisions made obiter dicta statements on the potential
applicability of the fair dealing doctrine to licensing issues and the need for further
clarification.
a. Copyright Board Decisions
In Tariff 22A, which was released on 18 October 2007, one of the issues
considered was whether online services that offer previews of musical works for
sampling constituted fair dealing.125 The Board applied CCH and found that
streaming a musical preview with a view to deciding whether or not to purchase a
121 Curiously, the infringing author had assumed that academic work was in the public domain and
therefore not subject to copyright protection (ibid. at 435).
122 See e.g. R. v. Allen, 2006 ABPC 115, 399 A.R. 245 at para. 30, 57 C.P.R. (4th) 431 (on
originality); Columbia Pictures Industries v. Gaudreault, 2006 FCA 29, 50 C.P.R. (4th) 1 at para. 32;
Columbia Pictures Industries v. Frankl, 2004 FC 1454, 36 C.P.R. (4th) 342 at para. 26 (on
authorization). But to date no decision has applied the fair dealing doctrine.
123 CCH, supra note 4 at para. 48, quoting David Vaver, Copyright Law (Toronto: Irwin Law, 2000)
at 171; Tariff 22, supra note 80 at para. 88 (citing CCHs use of Vaver).
124 (2007), 61 C.P.R. (4th) 353 [Tariff 22A].
125 As a matter of interest, on an examination I administered for my Intellectual Property Law
course at Osgoode Hall Law School in 2007, I asked my class of 90 students whether the Board had
appropriately applied CCH; the class was almost equally divided on the Boards decision.
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download or CD constituted research, and that this dealing was fair for the
purposes of section 29 of the CCA.126
In assessing fairness, the Board applied CCHs six factors: (1) the purpose of
online streaming was for research as reasonable safeguards were in place to ensure
that users dealings were fair (e.g., music was streamed and of a lower quality so as
not to constitute a market substitute for the original); (2) the character of the dealing
was fair as it both constituted and facilitated the users listening to an excerpt of a
track to lead to an informed purchase; (3) the amount of the dealing of the streamed
work was modest; (4) there were no apparent alternatives to streaming; it was the
most practical, most economical, and safest way to ensure that users purchase the
desired music, and as in CCH, the availability of a licence was irrelevant; and last, (5)
and (6), the nature of the work and the effect of the dealing on the work were
considered in tandem.127 Here the Board noted that the purpose and actual use of the
services were to facilitate the purchase of CDs. Offering previews encouraged
purchases and in turn benefited copyright owners.
The Board added that users may not deal with the streamed works in a manner
comporting with fair dealing. In this case, as long as the providers of streaming
services could show that their own practices and policies were research-based and
fair, their position should not be compromised.128 In this decision the Board thus
embraced the liberal lead of CCH and systematically applied its six fair dealing
factors. Like CCH, the Board hinged its ruling on the defendants practices, as
reasonable safeguards were in place. This decision thus illustrates how developing
best practices comporting with fair dealing may help defendants avoid liability.
Significantly though, these best practices will only make a difference if future courts
endorse their use in the assessment of what is fair. And importantly, these best
practices must comport with fair dealing. In contrast to CCH, where the libraries
acted as a check to enforce the Great Librarys Access Policy, the same cannot be
said for Tariff 22A. The absence of such gate-keepers in Tariff 22A may call into
question the application of CCH. Here future cases may turn on what types of
reasonable safeguards or best practices are required to ensure fairness.
In earlier decisions such as Re Media Monitoring 2000-2005,129 the Board
considered tariffs filed by the Canadian Broadcasters Rights Agency for commercial
and noncommercial media monitors using its private broadcasters programs and
communication signals. While the Board did not determine the extent to which the
monitors use of the repertoire may constitute fair dealing, it nonetheless commented
on the potential applicability of the doctrine. It maintained that profit-driven research
may constitute fair dealing and that the person who facilitates another persons fair
126 Supra note 124.
127 Ibid. at 381-82.
128 Ibid., citing CCH, supra note 4 at para. 63.
129 (29 March 2005), Copyright Board Decision, online: Copyright Board of Canada
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dealing may be entitled to the same protection under the Act as the first person.130 It
also argued that some monitoring activity may constitute research or the facilitation
of research, some of which may in turn constitute fair dealing.131Accordingly,
[u]ntil subsequent judgments clarify the portent of the CCH decision, this leaves
open the possibility that certain activities of media monitors may not constitute
protected uses for which they would require a licence.132 Although Re Breakthrough
Films & Television133 was not a fair dealing case, the dissenting opinion did comment
on the scope of fair dealing. The Copyright Board of Canada found that a television
production company was justified in obtaining a retroactive licence for work it had
excerpted and that belonged to a copyright owner who could not be located. But the
dissent argued that a retroactive licence should not have been granted since there was
no copyright infringement. In clarifying the full basis of its policy considerations, the
dissent stated:
While the interests of copyright owners should be protected, so should those of
users, given the recent insistence of the Supreme Court of Canada in balancing
the rights of the former and those of the latter. The public interest in the
dissemination of works and subject-matters also should be given some
attention.134
Fostering balance in copyright, though, should not be at the expense of fostering
compliance with copyright rules, since such compliance has a direct impact on
licensing issues and ultimately on fair dealing. According to the Board, Users should
be encouraged to evolve toward practices where licences are sought before a work is
used. The Board should not condone industry practices that view licensing copyright
as an afterthought, thereby showing … disregard for the rights of copyright
owners.135 In other words, proper licensing is part of ensuring the copyright balance.
While retroactive licences help foster certainty, respect for copyright, and
dissemination of published works, they deprive[] the copyright owner of the right to
choose between agreeing to a price and seeking compensation for the violation of
copyright that has already occurred.136 And so, with respect to fair dealing, the
Boards work may be affected directly:
… whole areas of what are now considered to be protected uses (e.g. media
monitoring) might suddenly join the realm of unprotected uses. This might have
to be factored into the setting of certain tariffs, which brings us back to the
130 Ibid. at 9.
131 Ibid. at 10.
132 Ibid. at 9.
133 2004-UO-TI-33 (10 May 2005), Copyright Board Decision, online: Copyright Board of Canada
134 Ibid. at 12 ×..
135 Ibid.
136 Ibid. at 20.
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already identified difficulties associated with applying concepts otherwise
suited to an ex post facto decision in the exercise of an ex ante jurisdiction.137
The decision of courts and industry to follow CCHs liberal interpretation of research,
which includes commercial purposes, may therefore have a direct effect on tariff-
setting.
b. Note on the Educational Context
Even before CCH, the Council of Ministers of Education (CMEC) proposed an
educational amendment to the CCA to permit the use of freely available internet
materials.138 While assessing this proposal is beyond the scope of this article, it is
unclear whether such a provision, on its own, would alter the current law or practices
with respect to the educational uses of materials. Although the proposed amendment
could generate goodwill among this group of stakeholders, in the longer term, many
more parties will need to come to a consensus on many more matters than the mere
use of internet materials. Moreover, some scholars argue that because of CCH, the
federal governments interventions with regard to course packs and the educational
use of materials for long-distance learning, as proposed in Bill C-60, may be at best
impractical and unnecessary, and at worst unenforceable.139 The same or worse
might be said about Bill C-61.140 As CCH stated, a LAM need not rely on its specific
exceptions but can rely on fair dealing. Significantly, however, fair dealing may not
excuse the mass distribution of materials.141 To date, these problems remain
unaddressed.
The existing copyright-governance mechanisms in the educational community do
not seem tenable. Among other things, academics, students, and other critics are
dissatisfied with the current licensing regime.142 Apparently, very little money reaches
professors or authors.143 Indeed, CanCopy, a Canadian-based copyright-management
company had more than $18 million in undistributed royalties, and no apparently
systematic way of determining to whom this money belongs.144 These types of issues
139 Wilkinson, supra note 58 at 360. Bill C-60 was introduced in the House of Commons on 20 June
2005 and died on the order paper on 28 November 2005 (An Act to Amend the Copyright Act, 1st
Sess., 38th Parl., 2005).
140 See Emily Davies, Bill C-61 Goes Beyond Downloading The Queens Journal 136:3 (29 July
2008), online: The Queens Journal
141 See Wilkinson, supra note 58 at 369.
142 See e.g. Howard Knopf, Copyright Collectivity in the Canadian Academic Community: An
Alternative to the Status Quo? (19992000) 14 I.P.J. 109.
143 See ibid. ([f]ew such authors are believed to earn more than $75 to $100 a year from
reprography royalties from CanCopy [now Access Copyright]).
137 Bouchard, supra note 68.
138 Copying Internet Resources, supra note 58; Bill C-61, supra note 28 (proposing cl. 30.04
which amends s. 18 of the CCA).
144 Ibid.
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will continue to grate on students and other members of the educational community,
from teachers and librarians to the administrators of copyright. While CCH has
liberalized greater uses of works comporting with fair dealing (e.g., for educational
purposes), agreement on any policy, law, or court decision must also be embraced
(and perhaps generated) at the grassroots level, by all parties that are directly affected.
In sum, Canadas fair dealing framework is much more flexible because of CCH.
But despite this, significant uncertainties remain, as in the educational community for
instance. It is also unclear how creators will fare and to what extent motive and the
nature of the work (whether published or not) will factor into future fair dealing
analysis. At this stage and before proceeding to a comparative analysis of the U.K.
fair dealing framework, it must be flagged that there exists a disconnect between user
practices and the legal initiatives proposed to regulate them. It is here that CCH might
provide the greatest contribution, as it promotes user-generated best practices
comporting with fair dealing. Here future courts would do well to endorse such best
practices to determine issues of fairness.
II. Fair Dealing in the United Kingdom
The U.K. doctrine of fair dealing that has developed in the countrys courts over
almost two centuries eventually made its first statutory appearance in the U.K.
Copyright Act, 1911.145 The Copyright Acts fair dealing provision has been the
subject of pronounced academic debate. Some scholars have argued that the U.K.
doctrine offers no principles or vision and that it contains too many obstacles
undermining its operation; its purposes are too rigid and have been interpreted
restrictively.146 Others maintain that U.K. courts have construed the specific
purposes liberally.147
Chapter III of the Copyright, Designs and Patents Act 1988148 is entitled Acts
Permitted in Relation to Copyright Works. Its fair dealing provisions in sections 29
to 30 stipulate enumerated purposes similar to those in Canadian law: (1) research or
private study, (2) criticism or review, and (3) reporting current events.149 As in
Canada, at least pre-CCH, the defendant must overcome three hurdles: (1) the dealing
145 Supra note 34.
146 Craig, Fair Dealing, supra note 23; Kevin Garnett et al., Copinger and Skone James on
Copyright, 15th ed. (London: Sweet & Maxwell, 2005) at 481.
147 Lionel Bently & Brad Sherman, Intellectual Property Law, 2d ed. (Oxford: Oxford University
Press, 2004) at 193.
148 (U.K.), 1988, c. 48 [CDPA].
149 Ibid. In addition, s. 31 of the CDPA permits certain instances of incidental inclusion of
copyrighted work; ss. 32-36 provide for permitted uses for the purposes of education; ss. 37-44
contain rules regarding libraries and archives; ss. 45-50 concern public administration; ss. 51-53 deal
with designs; ss. 54-55 deal with typefaces; s. 56 is about works in electronic form; ss. 57-75 contain
miscellaneous provisions; and s. 76 ensures the effectiveness of defences with respect to adaptations
(ibid.).
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must fall into an enumerated category, (2) the dealing must be fair (in accordance
with the common law criteria set out below), and (3) in the last two cases, there must
be sufficient acknowledgement.150
Against the conclusions of previous government studies, the recent Gowers
Review of Intellectual Property151 does not recommend that fair dealing be
amended.152 Rather, its recommendations follow the U.K. tradition of carving out
specific exceptions. Gowers recommends adding several new exceptions, including
parody and format shifting.153 These two exceptions appear not to have attracted any
controversy to date.154
The U.K.s enumerated purposes are said to be liberally construed.155 By adopting
an objective test, courts have made it reasonably easy to prove that a dealing fits in
one of these categories. Still, this liberal construction is not consistent with CCH,
which arguably has expanded the allowable purposes enough to render possible the
future inclusion of a parody right.
150 But for reporting current events by means of a sound recording, film, broadcast, or cable
program, acknowledgement is not required. See ibid., s. 30(3). The purported explanation for this
distinction is that acknowledgements would unduly clutter reporting by these forms of media. A
similar provision was contained in s. 6(3) of the Copyright Act, 1956 ((U.K.), 4 & 5 Eliz. II, c. 74, as
amended by Andrew Gowers with The Copyright and Related Rights Regulations 2003, S.I.
2003/2498, giving effect to EC, Directive 2001/29/EC of the European Parliament and of the Council
of 22 May 2001 on the harmonization of certain aspects of copyright and related rights in the
information society, [2001] O.J.L. 167, art. 5(3)(c) [Information Society Directive]).
151 U.K., HM Treasury, Gowers Review of Intellectual Property, December 2006 (London: Her
Majestys Stationery Office, 2006), online: HM Treasury
152 In December 2005, the Chancellor of the Exchequer asked Andrew Gowers to lead an
independent review; the one-year target was met and the U.K. Government accepted all of the
recommendations the day the review was tabled in Parliament. See ibid. Gowers goes against previous
reports, such as U.K., H.C., Report of the Committee to Consider the Law on Copyright and
Designs, Cmnd 6732 in Sessional Papers (197677) 1 ([t]he greater the number of special cases, the
greater the scope for uncertainty [regarding the applicability of the fair dealing defence] in relation to
cases not specifically dealt with at 175).
153 Gowers Review, ibid. at 6, recommendations 10b (format shifting), 12 (parody).
154 Interview of United Kingdom Patent Office (5 February 2007) [unpublished, transcript on file
with author].
155 See Bently & Sherman, supra note 147 at 193; Newspaper Licensing Agency Ltd. v. Marks &
Spencer Plc, [1999] R.P.C. 536, [1999] E.M.L.R. 369 (C.A.) [Marks & Spencer]; Pro Sieben Media
A.G. v. Carlton U.K. Television Ltd. (1998), [1999] 1 W.L.R. 605 (C.A.), Walker L.J. [Pro Sieben];
Ashdown, supra note 64 at para. 64.
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G. DAGOSTINO HEALING FAIR DEALING?
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A. What Have the Courts Said on the Enumerated Purposes?
1. Research or Private Study
U.K. courts have claimed that research and private study must be for a
noncommercial purpose.156 Nonetheless, some U.K. commentators argue that a
database used in market testing for a new drug or in a commercial training course
would constitute research or private study.157 However, it remains difficult to
determine what is meant by commercial. Article 42 of the Information Society
Directive mandates that one must look at the activity rather than the organisational
structure and the means of funding of the establishment … 158 One key factor seems
to be that research need not be private. Other important factors include the amount
taken, the availability of the work, and the effect on the market.159 It is possible for an
agent to photocopy works for third parties, but there are limitations if such copying
results in substantial dissemination of the material.160 Arguably, this is also the case in
Canada under CCH, which allowed copying subject to a fair dealing-compliant
access policy. Still, because of CCH, research and private study in Canada can
include commercial purposes.161
In the United Kingdom, the application of this purpose has been criticized
because it fails to reflect the importance of nontextual media, and applies in a limited
fashion to computer programs.162 This purpose also does not apply to broadcasts,
sound recordings, or film.163
2. Criticism or Review
For a dealing to fit into the category of criticism or review, the work must have
been previously available to the public, be a fair dealing, and have sufficient
acknowledgement of its source. In Sillitoe v. McGraw-Hill Book Company,164 no fair
dealing was found in the use of original summaries incorporated into issues of Coles
Notes. The court found that the authors of Coles Notes used very long extracts
without sufficient acknowledgement. Coles Notes inclusion of brief commentaries
under only some of the reproduced summaries was not sufficient to qualify as
156 See CDPA, supra note 148, s. 178 (definition omits direct or indirect commercial purpose).
157 Bently & Sherman, supra note 147 at 198.
158 Supra note 150, art. 42.
159 See Bently & Sherman, supra note 147 at 198.
160 See CDPA, supra note 148, s. 29(3)(b) (e.g., instructors could not make multiple copies of
articles for their students).
161 See CCH, supra note 4 at para. 51 ([l]awyers on the business of law for profit are conducting
research within the meaning of s. 29 of the Copyright Act).
162 See CDPA, supra note 148, s. 29(4).
163 See Pro Sieben, supra note 155.
164 [1983] Fleet Street Reports 545 (Ch.D).
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criticism or review. In Associated Newspapers Group v. News Group Ltd.,165 at issue
were letters between the Duke and Duchess of Windsor that were owned exclusively
by the Daily Mail but printed by a competing newspaper, The Sun. The defendants
motive had not been criticism or review, but to attract readers.166 In this case, the
death of the Duchess [did] not require the publication of the contents of the
letters.167 The Sun could simply have reported the event. As also seen below, implicit
in the decision-making is the commercial nature of the dealing: the courts were
conscious of the defendants profit motive in the gratuitous use of the work.
3. Current-Events Reporting
The purpose of current-events reporting has generally been construed as news
reporting, though a recent case, Pro Sieben Media AG v. Carlton U.K. Television
Ltd.,168 has given it a wider scope. Pro Sieben concerned the defendant U.K.
broadcasters use of a substantial part of a German broadcasters television
program. At issue was a thirty-second interview that Pro Sieben had purchased for its
exclusive use and over which the U.K. broadcaster claimed fair dealing for criticism
or review and reporting of current events. Against the first-instance ruling that the
acknowledgement displayed in the extracted interview was insufficient to satisfy the
acknowledgement requirement, and that its inclusion did not constitute criticism or
review or the reporting of a current event,169 the court found fair dealing. Lord Justice
Walker held that criticism or review and reporting current events are expressions of
wide and indefinite scope that should be interpreted liberally.170 Indeed, the
outcome of a multiple pregnancy, the subject of the interview, was a current event of
real interest to the public, and [t]he volume and intensity of media interest was
sufficient to bring the media coverage itself within the ambit of current events.171
The fact that a German television had paid 30,000 Pounds Sterling for an interview
was an event of limited and ephemeral interest, but … [still] a current event.172
165 [1986] R.P.C. 515.
166 Ibid. at 518.
167 Ibid. at 519.
168 Supra note 155 at 625. The fact that a German television station had paid 30,000 to interview a
woman expecting a multiple birth was an event of limited and ephemeral interest, but … [still] a
current event (ibid.).
169 If the purpose had been the reporting of current events by broadcast, s. 30(3) of the CDPA would
have applied such that a sufficient acknowledgement need not have accompanied the derivative work
(supra note 148).
170 Supra note 155 at 614. The court found that the purpose was to criticize chequebook journalism
in general and, more specifically, the treatment of the media interview (ibid.).
171 Ibid. at 619.
172 Ibid. at 619.
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Broadcasters have criticized Pro Sieben for potentially extending the already
wide applicability of the current-events purpose beyond the category of news,173 but
U.K. courts have not yet clarified the extent of its scope. The case illustrates how
difficult it is to define what constitutes current events and that a liberal
interpretation is certainly warranted. Rather than quibbling with the meaning of the
purpose, certain factors might provide more bright-line rules when determining fair
dealing. Besides the courts findings that the extract used was short, and that the
interviewees words were inaudible, the use of the extract did not in any realistic
sense represent unfair competition with Pro Siebens exploitation of the rights which
it had acquired.174 Pro Sieben shows how undesirable it is to dismiss the validity of a
fair dealing claim based on the enumerated purposes but must also be assessed more
holistically weighing fairness.175 From this perspective, it would be sound judicial
practice in the United Kingdom to follow the Canadian jurisprudential example and
interpret the purposes liberally so that fairness can also be considered.
B. The Dealing Must be Fair
Once a defendant proves that a work falls into an enumerated purpose, the
defendant must show that the dealing was fair. Hubbard v. Vosper176 sets out the main
test for fairness. For some scholars, Hubbard represents the first major judicial
attempt to define the concept of fairness with respect to the fair dealing provisions
contained, at that time, in section 6 of the 1956 Copyright Act.177 Cyril Vosper, a
former member of the Church of Scientology, wrote a book that relied extensively on
a book written by Lafayette Ronald Hubbard, the founder of the Church. At issue was
whether Vospers use infringed Hubbards copyright. In denying an application for an
injunction, Lord Denning stated that whether a dealing is fair is a matter of fact and
degree and all the circumstances of a particular case must be taken into account:178
173 See Verdict Causes Stir for Broadcasters: Roger Pearson Reports on Carlton and 20/20s Failure
to Credit Pro Sieben for Interview on Chequebook Journalism The Lawyer (2 February 1999) 22.
174 Supra note 155 at 618. The court also noted that the more derivative the work, the better to
justify a fair dealing defence. Also, the court found sufficient acknowledgement by the use of the logo
through which the German TV station was accustomed to identifying itself. The use of the correct
name was unlikely to have any particular meaning to the U.K. audience (ibid. at 625).
175 Craig remarks that the extract provided a useful commentary upon a matter of public concern
without effecting any notable damage upon the plaintiffs copyright or upon the wider incentive
system (Fair Dealing, supra note 23 at 59 ×.). In a footnote she states, At first
instance, Laddie J. noted that the infringing program, was not intended to compete with and thereby
devalue the interview Pro Sieben had obtained with Ms Allwood. (ibid., n. 70) Laddie J. also noted
that the programs editor sincerely thought that what she was doing was for the public good (ibid. at
61-62).
176 (1971), [1972] 1 All E.R. 1023, [1972] 2 W.L.R. 389 (C.A.) [Hubbard cited to All E.R.].
177 Craig, Fair Dealing, supra note 23 at 9.
178 Hubbard, supra note 176 at 1027.
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It is impossible to define what is fair dealing. It must be a question of degree.
You must consider first the number and extent of the quotations and extracts.
Are they altogether too many and too long to be fair? Then you must consider
the use made of them. If they are used as a basis for comment, criticism or
review, that may be a fair dealing. If they are used to convey the same
information as the author for a rival purpose, that may be unfair. Next, you
must consider the proportions. To take long extracts and attach short comments
may be fair. But, short extracts and long comments may be fair. Other
considerations may come to mind also. But, after all is said and done, it must be
a matter of impression.179
A court must therefore weigh the extent and proportion of the work used in relation to
the original work and uses made (e.g., for a rival purpose).180 An entire work may also
be subject to the fair dealing defence.181 Since the Human Rights Act 1998,182 courts
need to be flexible and considerations of public interest are paramount.183 While not
expressly delineated in the legislation, several factors emerge from the case law that
are, for the most part, consistent with the Canadian jurisprudence:184
1. Nature of the work: if the work is unpublished, this will weigh against the
defendant.185 Confidential works (e.g., private letters) will weigh more
against fair dealing than official reports of public importance.
2. How the work was obtained: if the work was leaked or stolen, its use is less
likely to be fair.186
3. Amount taken: while the least amount taken favours fair dealing, in some
cases it may be fair to reproduce an entire work (e.g. if the work is short, like
an epitaph).187
4. Uses made: the more transformative the use, the more it favours fair dealing.
Some have stated it pays to be long-winded: the more that has been added by
the user, the better).188
5. Commercial benefit: if the work is used for a commercial benefit, this will
weigh against the defendant; one cannot derive a commercial benefit in
research, unless there is some overriding element of public advantage.189
179 Ibid.
180 Craig highlights that, with respect to the relevance of a rival purpose, British Broadcasting
Corp. v. British Satellite Broadcasting Ltd. ((1991), [1991] 3 All E.R. 833, [1992] Ch. 141) held that
BSBs rivalry with the BBC did not necessarily take its actions outside the protection of the fair
dealing defence (Fair Dealing, supra note 23 at 51).
181 See Hubbard, supra note 176 at 1031 (Megaw L.J. stating this in the context of a parish
magazine reproducing a twenty-word epitaph).
182 (U.K.), 1998, c. 42.
183 See Ashdown, supra note 64 at para. 71.
184 See especially Bently & Sherman, supra note 147 at 192-206.
185 See e.g. Hyde Park, supra note 56 (dealing with current events).
186 See Beloff v. Pressdram Ltd. (1972), [1973] 1 All E.R. 241 at 264 (Ch.).
187 Hubbard, supra note 176 at 1031.
188 David Vaver, Copyright, vol. 2 (1998) at 522 [unpublished, archived at Osgoode Hall Law
School Library].
2008]
G. DAGOSTINO HEALING FAIR DEALING?
343
6. Motives for the dealing: the courts employ an objective standard190 and
consider if the motive is malevolent or altruistic.191
7. Consequences of the dealing: this factor concerns the impact of the dealing
on the market of the original work, especially where parties are in
competition; if a new work acts as a substitute for the original, this weighs
against fair dealing.192
8. Purpose achieved by different means: were alternatives to the dealing
available? Courts have found no fair dealing where the written word would
have been just as effective as actual pictures that constituted the copyrighted
works.193
C. Hierarchy of Factors
While an open list of criteria appears to be emerging, a recent case has suggested
that there is a hierarchy of criteria. In Ashdown v. Telegraph Group Ltd.,194 a U.K.
daily newspaper unsuccessfully claimed fair dealing in its publication of confidential
political material concerning the pending formation of a new U.K. government.
Although the Court of Appeal of England and Wales acknowledged Pro Siebens
liberal interpretation of current events195 by drawing from the work of Hugh
Laddie, Peter Prescott & Mary Vitoria,196 the court laid out a hierarchy of factors for
determining fair dealing, in the following order:
(1) whether there was a market substitute to the dealing (if so, fair dealing will
most certainly fail),
(2) whether the work was published or previously exposed to the public (if not,
fair dealing will fail, especially if the work was obtained by breach of
confidence or some other underhanded way; here, motive is relevant),
(3) the extent of the work taken (though a substantial part of the entire work
may be allowed). 197
The court found that the copied extract enhanced the commercial value of the
newspaper, increasing its readership loyalty. And while some of the matters covered
189 See Marks & Spencer, supra note 155.
190 Hyde Park, supra note 56 at para. 36.
191 Pro Sieben, supra note 155 at 614.
192 See Hubbard, supra note 176.
193 See Hyde Park, supra note 56.
194 Supra note 64. A public interest defence and freedom of expression claim were also advanced.
195 Although the issues identified by The Sunday Telegraph may not themselves be events, the
existence of those issues may help to demonstrate the continuing public interest in a meeting two
years earlier. However, it might impinge upon the way in which the public would vote at the next
general election. See ibid. at para. 64.
196 The Modern Law of Copyright and Designs, 3d ed. (London: Butterworths, 2000) at 20.16.
197 Supra note 64 at paras. 70-77.
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in the extract had been previously disclosed in a radio interview, the extract was
obtained in breach of confidence.198
So although the court stated that where freedom of expression is at issue courts
may need to place less weight on this hierarchy of factors and more on other factors,
such as the political importance of the contents of the work,199 copyright won out in
the end: We do not consider it arguable that article 10 [of the Human Rights Act
1998] requires that the Telegraph Group should be able to profit from this use of Mr
Ashdowns copyright without paying compensation.200 In other words, market
impact (which is mindful of remunerating the author) may trump freedom-of-
expression claims and appears to be the most important consideration.
Market impact is the most important factor in the United Kingdom, but it is less
important in post-CCH Canada. In the United Kingdom, market impact requires the
court to be vigilant regarding the authors right to remuneration. The published or
unpublished nature of the work may yield opposite results: in Canada the use of
unpublished works tends toward a finding of fairness, whereas in the United
Kingdom the use of unpublished works is not fair. The extent of the work taken is
treated similarly in Canada and in the United Kingdom, in that it is not a factor of
paramount importance. The public interest is critical in both jurisdictions, but it is
interpreted as a user right in Canada and as a human right in the United Kingdom.
While embracing CCHs liberal reasoning is advisable, Canadian courts and policy-
makers should be mindful of the U.K. courts careful recognition of competing
interests, for instance, as seen with the long-standing treatment of unpublished works.
A common ground with CCH can be found in the European Unions treatment of
commercial purpose where the nature of the activity, and not the organization, is
important. Ultimately, however, in both jurisdictions uncertainty still festers because
decisions are case by case and left to the courts; as such, better solutions are
necessary where clarification through litigation is a last resort.
III. Fair Use in the United States
A. U.S. Legislation
Against Canadas and the U.K.s fair dealing, U.S. fair use has been championed
as the most flexible and ideal model for copyright law. In the United States section
107 of the U.S. Copyright Code201 entrenches the jurisprudence accumulated up until
the 1976 revision and provides that the fair use of a copyrighted work for purposes
such as criticism, comment, news reporting, teaching (including multiple copies for
198 Ibid. at paras. 72-76.
199 Ibid. at para. 71.
200 Ibid. at para. 82.
201 17 U.S.C. 107 (2000).
G. DAGOSTINO HEALING FAIR DEALING?
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classroom use), scholarship, or research does not infringe copyright.202 The United
States offers an open list of permissible purposes (as opposed to the Canadian and
U.K. statutes), and the case law has generally seen similar uses exonerated under fair
use. The decision of whether a particular use is fair mandates the consideration of
four statutorily entrenched factors: the purpose and character of the work, its nature,
the substantiality of the use, and its effect on the potential market for or value of the
copyright.
345
1. Four Fair Use Factors
a. The Purpose and Character of the Use, Including Whether
Such Use Is of a Commercial Nature or Is for Non-Profit
Educational Purposes
The purpose and character of the use considers whether the use is commercial or
should be deemed transformative. More recently, good faith has been noted as a
subfactor.203 Commercial use is but one factor and, against a flurry of case law, is no
longer presumptive. In Sony Corp. of America v. Universal City Studios,204 a case
concerning the use of the Betamax videotape recorder for private time shifting of
television programs, the Supreme Court of the United States examined whether the
user stood to gain from the use of copyrighted work, not whether the user had actual
motive for monetary gain. In this case, time shifting was found to be a
noncommercial use. The courts obiter dictum statement that every commercial use
of copyrighted material is presumptively … unfair205 was later embraced by
subsequent courts seeking a bright-line rule to interpret fair use cases, but was
ultimately rejected in Campbell v. Acuff-Rose Music.206
Acuff-Rose, also known as the Pretty Woman case, concerned the parodic use
of Roy Orbinsons song Pretty Woman by the rap group 2 Live Crew. Overruling
the trial court, the United States Court of Appeals for the Sixth Circuit relied on the
Sony presumption and found that fair use did not exonerate the rap group.207
However, the Supreme Court of the United States later overturned this decision,
stating that the commercial nature of a work should not be dispositive. Rather,
parody, like any other use, has to work its way through the relevant factors, and be
judged case by case, in light of the ends of the copyright law.208 Relying on a
202 Ibid., s. 107.
203 Compare Sony Corp. of America v. Universal City Studios, 464 U.S. 417, 104 S. Ct. 774 (1984)
[Sony cited to U.S.] (in which motive was not a factor).
204 Ibid.
205 Ibid. at 451.
206 510 U.S. 569, 114 S. Ct. 1164 (1994) [Acuff-Rose cited to U.S.].
207 Campbell v. Acuff-Rose Music, 972 F.2d 1429 (6th Cir. 1992).
208 Supra note 206 at 581.
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presumption that commercial use is unfair would have distorted fair use and would
have been suggestive of a [U.S.] judicial tendency to establish bright-line rules,
evolved from in-built biases or assumptions … 209 Today, in the United States, the
defendants commercial use does not create a presumption against fair use, but it
does tend to weigh in favour of the plaintiff.210 Fair dealing pursuant to CCH can
thus be more flexible than U.S. fair use, as the commercial nature of the use can be
one consideration among others and is not a mandatory factor.
In Rogers v. Koons,211 the defendant, Koons, sculpted a String of Puppies to
parody the plaintiffs photograph of eight puppies, which had enjoyed wide
commercial success. In directing the construction of the sculpture, Koons used an
enlarged photocopy of the puppies. The court rejected the parody argument because
Koons could have expressed the parody without directly copying Rogers work.
Koons work was not commenting directly on the work itself, but rather on a general
idea, so there was no need to copy. Also, the court determined that there was bad
faith on the part of Koons and that the copying was for profit-making motives.212
Basic Books v. Kinkos Graphics Corp.213 is the U.S. course packs case. The
United States Court for the Southern District of New York ruled that uses of
copyrighted material for educational purposes by a commercial enterprise were not
determined to be fair use. The four factors were analyzed. The copying was
nontransformative and on a commercial scale. While it remained unclear how much
profit Kinko made, the court found it important that Kinko had the intention of
making profits. And so, its motives were only purportedly altruistic.214 This case
can be contrasted with Williams & Wilkins, where a government department copied
articles from medical journals and disseminated them to researchers and personnel
who requested them. The court found that the purposes of study and research were
acceptable here, as these were socially useful objectives … [T]his is not true of
photocopy shops, which reproduce for profit.215 Further, government libraries had
established fair use guidelines and did not charge a fee.
209 Craig, Fair Dealing, supra note 23 at 128.
210 See ibid. at 125. This was the real intention of the court: to set up a balancing of the fair use
factors (ibid.).
211 960 F.2d 301 (2d Cir. 1992) [Rogers].
212 Ibid. at 309-10.
213 758 F. Supp. 1522 at 1531 (S.D.N.Y. 1991) [Basic Books] ([t]he effort utilized in this case was
questionable at best and the level of judgment practically non-existent).
214 Ibid. at 1532 ([t]he … insistence that theirs are educational concerns and not profitmaking ones
boggles the mind).
215 Ibid. at 1536, quoting Melville B. Nimmer & David Nimmer, Nimmer on Copyright (New York:
Matthew Bender, 1985present), para. 13.05[E] at 13-93, 13-94, n. 69. Contra American Geophysical
Union v. Texaco, 37 F.3d 881, 63 U.S.L.W. 2295 (2d Cir. 1994) (involving a class action by 82
scientific publishers against Texaco for copying its works to which it subscribed without paying
royalties).
G. DAGOSTINO HEALING FAIR DEALING?
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A Canadian court post-CCH could make similar decisions on allowing parody
and educational uses of works by government departments. It should similarly rule
against a Kinko-type operation, lacking set practices comporting with fair dealing. In
the United Kingdom, parody would be prohibited outright and thus from this
perspective remains restrictive.
347
b. The Nature of the Copyrighted Work
For this factor, courts consider whether the work is factual or fictional and
whether it is published or unpublished. If there is substantial creativity, this tends to
favour the owner.
Harper & Row Publishers v. Nation Enterprises216 seemed to have created a
presumption against fair use for unpublished works. The presumption was followed
by lower courts until the United States Congress responded to the publishing
industrys concerns and overruled it.217 In Harper & Row, The Nation, a news
magazine, published unauthorized quotations from former U.S. President Gerald
Fords unpublished memoirs. The Supreme Court of the United States analyzed the
four factors and denied fair dealing. Specifically, the court reasoned that the author
has the right to control the first appearance of the work as part of the right of first
publication, which encompasses the choice of whether to publish at all, as well as
when, where, and in what form.218 In this case, the court found that Fords memoirs
were subject to a confidentiality agreement and that any article produced from it
would need approval. Further, The Nations clandestine publication afforded no …
opportunity for [the authors] creative or quality control and contained a number of
inaccuracies.219 The court found that the unauthorized quotations focus[ed] on the
most expressive elements of the work, exceed[ing] that necessary to disseminate the
facts.220 By comparison, in Basic Books, while the court did not find fair dealing, it
noted that because the nature of the works was educational, this factor weighed in
favour of the user.221 The United States and United Kingdom seem consistent in their
interpretation of this factor, as opposed to Canada, which favours users who
disseminate unpublished works.
c. The Amount and Substantiality of the Portion Used in
Relation to the Copyrighted Work as a Whole
This factor operates on a sliding scale: the more a dealing goes beyond a de
minimis use, the more likely it goes against fair use. Courts still focus on what and not
216 Supra note 60 at 546.
217 Fair Use of Unpublished Works, supra note 60.
218 Harper & Row, supra note 60 at 562.
219 Ibid. at 564.
220 Ibid.
221 Basic Books, supra note 213 at 1533.
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how much is usedquality over quantity of the taking is critical. In Basic Books,
entire chapters were copied and meant to stand alone; therefore, the use negated both
quantitative and qualitative considerations. In Harper & Row the court focused on
quantity and quality: though insubstantial, the extracts were the heart of the
book.222 In Acuff-Rose, 2 Live Crew departed from the heart and produced
distinctive lyrics. However, when courts find the character of the use to be
appropriate, entire works may be fair use. On the whole, as in Canada and the United
Kingdom, this factor appears to be the least significant in the United States.
d. The Effect of the Use upon the Potential Market for or Value
of the Copyrighted Work
Harper & Row signalled this last factor as the single most important one,
especially if the use of the copyrighted work becomes widespread and undermines the
authors potential market (since for the court the purpose of copyright is also to
provide an incentive to authors).223 Some lower courts have followed this dictum.224
Still, it is difficult for courts to anticipate the curtailment of the potential market as it
can be like gazing in a crystal ball.225
In Basic Books, the purchase of the course packs was found to undermine the
need to purchase full texts. The court also held that such purchase would impact out-
of-print books whose licence fees constituted a significant source of income.226 By
contrast, it is unlikely that a parody would act as a market substitute for the original,
since parody and the original serve different market functions.227 But in Rogers, there
222 Harper & Row, supra note 60 at 565, quoting 557 F. Supp. 1062 at 1072 (S.D.N.Y. 1983). Acuff-
Rose found the parody factor unhelpful because the parody necessarily must go to the originals
heart since the heart of the song is what was conjured up for the purpose of parody (supra note
206). Examples of conjuring the heart include using the first line of the originals lyrics and
characteristic opening bass riff (ibid. at 586-89).
223 More important, to negate fair use one need only show that if the challenged use should
become widespread, it would adversely affect the potential market for the copyrighted work
(Harper & Row, supra note 60 at 568, quoting Sony, supra note 203 at 451 [emphasis in original]).
Isolated instances of minor infringements … become in the aggregate a major inroad on copyright
that must be prevented (Harper & Row, ibid. at 569, quoting U.S., S. Rep. No. 94-473 (1974) at 65).
224 See e.g. Arica Institute v. Palmer, 970 F.2d 1067 at 1078 (2d Cir. 1992); Los Angeles News
Service v. Tullo, 973 F.2d 791 at 798 (9th Cir. 1992); Cable/Home Communication Corp. v. Network
Productions, 902 F.2d 829 at 845, 59 U.S.L.W. 2026 (11th Cir. 1990).
225 See Nunez v. Caribbean Intern News Corp., 235 F.3d 18 (1st Cir. 2000) [Nunez] (determining
that reprinting photographs was fair). However, it is clear that bootlegged CDs or software is unfair.
See United States v. Slater, 348 F.3d 666 at 669 (7th Cir. 2003) (finding that there was no abuse of
discretion in refusing to instruct on fair use in a criminal trial concerning unauthorized distribution of
software).
226 Basic Books, supra note 213 at 1534.
227 See Sony, supra note 203 at 451. See generally Harper & Row, supra note 60 at 590-94.
349
G. DAGOSTINO HEALING FAIR DEALING?
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was a presumption that the sculpture would harm the plaintiffs future market.228 And
on an earlier motion for summary judgment in Acuff-Rose, the absence of evidence of
the effect of the parody on the nonparody market (i.e., Orbisons market) caused the
defendant to lose the case.229 Market substitution is therefore a very important factor
in the United States, and the most important factor in the United Kingdom, but it is
less important in Canada, where, according to CCH, the plaintiff bears the onus of
proving market substitution.
Irrespective of the United States statutory entrenchment of the four factors, it is
still very difficult to recognize fair use and assess which, if any, factor is
determinative in such identification. In other words, all four U.S. statutory criteria
must be considered in each case. As Acuff-Rose held, there are no bright lines, few
presumptions, and there must be a sensitive balancing of interests. Some argue that
these criteria may enhance predictability but have reduced the flexibility available to
U.S. courts;230 others contend that conventional wisdom on fair use has been wrong,
as there are certain stampeding factors that matter more than others;231 still others
maintain that there is no predictability and that it is difficult to articulate what fair use
is, but that there is flexibility with regard to emerging technologies.232 Ultimately, not
all factors have to be fair for the end use to be fair; similarly, some factors can be fair,
but the end result may be unfair use.
2. Other Fair Use Factors
In Basic Books, the Supreme Court of the United States considered two other
factors beside the four enumerated ones:
a. Monopolistic and Competitive Practices (and Necessity)
The defendant Kinko created a new nationwide business allied to the
publishing industry by usurping the plaintiffs copyrights and profits.233 Kinko had
two hundred stores across the country, and it was difficult for the plaintiff to
challenge the defendant. Kinko asserted that the plaintiffs misused their copyrights
228 Rogers, supra note 211 at 312 (raising the example of a movie adaptation of a book impacting
the potential market for the books adaptation rights).
229 See Acuff-Rose, supra note 206.
230 See e.g. Carlos M. Correa, Fair Use in the Digital Era (Paper presented at Infoethics 2000:
Ethical, Legal and Societal Challenges of Cyberspace, Paris, 1315 November 2000) at 5, online:
UNESCO
Correa cites Justice Hand, who claims that the fair use doctrine has been the most troublesome in the
whole law of copyright (Dellar v. Samuel Goldwin Inc., 104 F.2d 661 (2d Cir. 1939), n. 9).
231 See e.g. Barton Beebe, An Empirical Study of U.S. Copyright Fair Use Opinions, 19782005
(2007) U. Penn. L. Rev. 549 at 589.
232 See Nimmer, supra note 18 at 263 (suggesting that courts first decide on the outcome, whether
the use is fair or not, and then use the factors to justify this outcome).
233 Supra note 213 at 1534.
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and monopolized the industry in an effort to thwart the copying market and restrain
competition.234 Although Kinko advanced anecdotal evidence that there were
unreasonable delays, undue response times, and high costs in obtaining copyrighted
materials for the courses, the court found no clear evidence of such problems.
Importantly, the court implied that had there been such evidence, this would have
weighed in favour of fair use. The court seemed to leave this door open for future
cases. That is, fair use may be found if the defendant is able to show that the plaintiff
engaged in monopolistic practices. In CCH, this factor was considered, though the
plaintiff had the burden of proof and failed to meet it. Put differently, if the plaintiff
engages in monopolistic practices, the defendant may rely on fair use by reason of
necessity.235 In Basic Books, the court observed that the defendant had not advanced
evidence that an instructor would be disabled without the use of the course packs,
thereby blocking the educational process and making the copyright in the academic
materials a necessity to infringe.236 It will be challenging for a defendant such as
Kinko to advance fair use by necessity without facing conflict-of-interest issues.
Competition law and not copyright law might best be able to address such monopoly
issues.
b.
Industry Practices and Institutional Policies
While the Classroom Guidelines did not apply to Kinko as it was a for-profit
corporation, with profit-making intent, the court noted that the defendant would have
nonetheless violated the Guidelines prohibiting the use of anthologies.237 These
Guidelines, created for the educational community, were the product of negotiations
among key stakeholders in the community, and were necessitated by the widespread
availability of reprographic technology which eliminated much of the copyright
owners control over the reproduction of his work.238 The court considered Williams
& Wilkins, where the library copying was subject to institutional policies within fair
use and did not involve the payment of a fee.239 The libraries had also established
rules regarding the frequency of and page limits for copying.240 Following
institutional policies within fair dealing was also very important in CCH, where the
Supreme Court of Canada relied heavily on the Great Librarys Access Policy for a
234 Ibid. at 1538.
235 Ibid. at 1535.
236 Ibid.
237 Ibid.; U.S., H.R., Agreement on Guidelines for Classroom Copying in Not-For-Profit
Educational Institutions (H.R. Rep. No. 1476, 94th Congr., 2d Sess. 68) (Washington, D.C.: United
States Government Printing Office, 1976) [Classroom Copying Guidelines].
238 Basic Books, ibid. at 1535. The key stakeholders were the Ad Hoc Committee of Educational
Institutions and Organizations of Copyright Law Revision, the Authors League of America Inc., and
the Association of American Publishers (ibid.).
239 Ibid. at 1536; Williams & Wilkins, supra note 106.
240 Ibid.
G. DAGOSTINO HEALING FAIR DEALING?
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finding of fairness.241 Thus, if the defendant can show adherence to policies within
fair use, this factor will very likely weigh strongly in his or her favour. Significantly
though, the defendants purpose must be seen as not-for-profit.242 In Canada, the
defendants purpose may be commercial, allowing the defendant greater flexibility,
though increasing ambiguity for all parties.
351
3. Fair Use is Ill
Before proceeding to outline some comparative threads among the three
jurisdictions, some remarks must be made on the burgeoning body of scholarship,
studies, and reports criticizing U.S. fair use. Fair use is said to be ill, though hardly
dead yet.243 Peter Jaszi argues that claims of U.S. fair use superiority are often
misguided, and many others have called on the United States Congress to clarify fair
use.244 Many solutions have been proposed,245 but to date Congress has resisted
changing fair use. The courts have also failed to simplify fair use despite attempts to
establish bright-line presumptions that (1) commercial uses are unfair,246 (2) the
plaintiffs unpublished works should be favoured,247 and, more recently, (3) works
must be transformative to constitute fair use.248 Moreover, it is increasingly expensive
to mount litigation to clarify the scope of use, and some users may be risk-averse to
begin with. According to the American Intellectual Property Law Association, the
average cost of defending a copyright case is just under one million U.S. dollars.249
Although fair uses attention to context is laudable, it is so case-specific that it
offers precious little … to artists, educators, journalists, Internet speakers, and
241 Supra note 4.
242 Classroom and library copying are viewed more sympathetically since they generally involve
no commercial exploitation and … [have] socially useful objectives. … This is not true of photocopy
shops, which reproduce for profit (Classroom Copying Guidelines, supra note 237 at 1536).
243 Gordon, supra note 20 at 912 (arguing that overbroad contract rules and the DMCA, infra note
253, are the true threats to fair use).
244 Peter Jaszi, Public Interest Exceptions in Copyright [unpublished, on file with McGill Law
Journal]; Michael Carroll, Fixing Fair Use (2007) 85 N.C.L. Rev. 1087.
245 Carroll describes some proposals at n. 37 (ibid.). Jessica Litman proposes an unfair competition
standard for infringement (Digital Copyright (Amherst, N.Y.: Prometheus Books, 2001) at 166-86).
Michael Madison thinks that fair use should be rewritten with more flexibility so that social practices
that can benefit from fair use inform the analysis (Rewriting Fair Use and the Future of Copyright
Reform (2005) 23 Cardozo Arts & Ent. L.J. 391).
246 Sony, supra note 203.
247 Fair Use of Unpublished Works, supra note 60 ([t]he fact that a work is unpublished shall not
itself bar a finding of fair use). See also Gordon, supra note 20 at 910.
248 Acuff-Rose, supra note 206 at 579, seconding Sony, supra note 203. But see recent cases such as
Nunez, exonerating nontransformative or exact copies of works (supra note 225).
249 Fisher & McGeveran, White Paper, supra note 58 at 57.
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other[s] who want to use the copyrighted work.250 Googles digitization project of
large library collections is a recent sign that in the digital age, issues of fair use have
become more urgent.251
Jennifer Urban and Laura Quilter document the culture of anxiety that now exists
as right holders aggressively attempt to thwart potential fair uses of works.252 In
heeding private cease-and-desist letters, online service providers frequently cull user
materials in order to earn a place in the safe harbour zone.253 And because the
material is removed privately, no court examines the validity of a takedown before it
occurs. Further, a report from the Brennan Center for Justice, Will Fair Use
Survive?, also places the blame on narrow industry fair use guidelines and an
overzealous clearance culture.254 More recently, William W. Fisher and William
McGeverans White Paper focuses specifically on the educational sector, calling for
clearer fair use rules. The study reveals that the current trend among educators is to
clear for fear and unnecessarily license multiple copies of works for classroom use, a
type of use typically allowed by statute.255 Doing so out of excessive caution when
fair use would otherwise apply is harmful.256 The White Paper also documents
extensively the burdensome and uneven licensing systems and arrangements to be
found within schools.257 This critical scholarship shows what could be a flexible fair
250 Carroll, supra note 244. See also Nimmer, supra note 18 at 280 (had Congress legislated a
dartboard rather than the particular four fair use factors … it appears that the upshot would be the
same).
251 See e.g. Class Action Complaint, Authors Guild v. Google (20 September 2005) (S.D.N.Y.),
online: FindLaw
252 Supra note 58 at 626 (merely providing a link to content on another website may not be fair use).
253 Digital Millennium Copyright Act of 1998, Pub. L. No. 105-304, 512, 112 Stat. 2860, codified
as amended at 17 U.S.C. 107 (2000) [DMCA] (providing safe harbour from copyright
infringement).
254 Marjorie Heins & Tricia Beckles, Will Fair Use Survive?: Free Expression in the Age of
Copyright Control: A Public Policy Report (16 November 2005) at ii, online: Brennan Center for
Justice
255 Fisher & McGeveran, White Paper, supra note 58 at 85-86. See also ibid. at 45, citing The
Berkman Center for Internet & Society, Digital Learning Legal Background Paper: The TEACH Act:
The Impact of Copyright and Compromise on Digital Distance Education at 9, n. 21 [unpublished]
[Digital Learning Legal Background Paper], citing Darcy W. Hardy & Georgia Harper, Comments of
the University of Texas System
at 5, online: United States Copyright Office
the university seeks
licences for all copyrighted material, for lack of confidence in protections provided by fair use).
Compare Edward F. Brooks, Comments of the University of North Carolina at Chapel Hill (5
February 1999) at 5, online: United States Copyright Office
fair use doctrine for one-time or first uses of copyrighted material).
that
256 Fisher & McGeveran, White Paper, ibid. at 78.
257 Ibid. at 76ff.
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G. DAGOSTINO HEALING FAIR DEALING?
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use framework undermined by private ordering and other laws (and cases about these
laws).
What is more, there is a clear and negative interface between digital-rights
management (DRM) technologies and fair use.258 For instance, smaller schools (such
as elementary and secondary schools) in the United States that lack resources (and
possibly skills) are precluded from licensing works if they do not comply with DRM
requirements imposed by right holders.259 The implications are that content otherwise
available is used less, and that schools with fewer resources are prohibited from
accessing the available content. And while educators are generally averse to
technological-protection measures, they may use them nonetheless to ensure the
integrity of their works and attribution of their efforts, and to enforce how their works
may be used. Also, educational institutions themselves, concerned with a return on
investment, endorse DRM systems.260 As such, commercial-right holders are not the
only parties responsible for limiting access to digital works.
The White Paper concludes that [t]he courts interpretation of the [DMCAs]
anti-circumvention and anti-trafficking provisions to exclude fair use and other
copyright exemptions as defences to actions under the DMCA stripped educational
users of their shield against copyright infringement liability … 261
a. Limits of TEACH Act
in
light of
to update educational-use exemptions
The Technology, Education, and Copyright Harmonization Act of 2001,262 which
promised
technological
developments, has not delivered. The TEACH Act was the product of compromise
within the stakeholder community and the result of a full study conducted by
Congress in 1998.263 The legislation (1) expanded the types of content that could be
used, (2) allowed the digitization and short-term retention of content, and (3)
eliminated a provision in the U.S. copyright legislation that required students to be
physically on location.
Nonetheless, many strictures make the TEACH Act unworkable, unreliable, and
ultimately of little value. While it deals with online learning, it is very specific on
258 See e.g. Stephen E. Blythe, The U.S. Digital Millennium Copyright Act and the E.U. Copyright
Directive: Comparative Impact on Fair Use Rights (2006) 8 Tulane Journal of Technology and
Intellectual Property 111 at 129.
259 Fisher & McGeveran, White Paper, supra note 58 at 71.
260 Ibid. at 73.
261 Ibid.
262 U.S., Bill S. 487, Technology, Education, and Copyright Harmonization Act of 2001, 107th
Cong., 2001 [TEACH Act].
263 Digital Learning Legal Background Paper, supra note 255.
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what may be used without first obtaining permission.264 An educational institution
must also be accredited and not for profit in order to benefit. As the White Paper
notes, the user must employ technological protection measures (which can be costly),
and the actual use of technological protection measures may eviscerate the TEACH
Act all together.265 [T]he TEACH Act failed to create the safe harbor it promised,
effectively leaving educational users of digital content without legal recourse to make
use of such works.266 The White Paper recommends its revision.267
As the TEACH Act has failed to meet its objectives, fair use therefore seems to be
the vehicle of choice in the distance-learning environment.268 Though, as explored,
relying on fair use comes with some drawbacks since ambiguity for all stakeholders
remains both a blessing and a limitation. Moreover, as noted earlier, fair use must also
be seen within a wider backdrop, including the operation of laws like the DMCA and
the courts interpretation of these laws.
b. Reasons for Optimism: Best Practices
The Fisher & McGoverans White Paper notes two grounds for optimism. First, it
expects that educational uses under the fair use doctrine will be permissible.269
Second, there are very few decisions that apply fair use against, or even to,
educational defendants who made educational use of their content. The only cases on
fair use in the educational context are those that involve commercial course pack
publishers, not teachers making nonprofit educational uses of content.270 A high-
profile case where New York University was the defendant was settled in 1983 before
any decision was reached.271 The White Paper posits that [t]his near-total absence of
lawsuits against educators may suggest rightsholders have tacitly accepted that the
appropriate construction of the fair-use doctrine leaves significant room for
educational uses of content, or that they fear a negative public reaction if they sue
educators.272 Indeed, some universities encourage professors to rely on the fair use
doctrine for one-time or first uses of copyrighted material.273 But the cases provide
limited comfort, and the vast majority of users (including teachers, librarians,
264 See Robin Fry, Copyright Issues in E-learning Copyright & New Media Law Newsletter 8:2
(2004). See also The TEACH Tool Kit, online: North Carolina State University Libraries
265 Ibid. at 48.
266 Ibid. at 73.
267 Ibid. at 96-97.
268 See The TEACH Tool Kit, supra note 264.
269 Supra note 58 at 52.
270 Ibid. at 52-53.
271 Ibid. at 53.
272 Ibid.
273 See e.g. Comments of University of North Carolina at Chapel Hill, supra note 255 at 5.
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G. DAGOSTINO HEALING FAIR DEALING?
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lawyers, and educational administrators) are fearful and anxious about whether their
uses of content are acceptable.274
Some of these stakeholders are trying to clarify the scope of fair use through self-
help. In particular, university and industry groups have established institutional best
practices. The most successful and comprehensive initiative is a recent one from the
documentary filmmakers industry. Diverse stakeholders, from creators to producers
to insurers, have developed a statement on Best Practices in Fair Use.275 This 2005
document has been well received and there is evidence that other industries are
following suit.276 Such initiatives are promising because clarification, understanding,
and respect for copyright use, creation, and dissemination are best developed at the
grassroots level. Parties directly involved in the industry are presumably more
knowledgeable and thus in a better position to formulate best practices. As in the
filmmakers case, the insurers involved in this consensus building can then
confidently sign off and enable a greater variety of works for the public.277 These
best practices can thus benefit many industry stakeholders and be used as interpretive
aids by judges for the benefit of the public.
While specific industries have been successful in this kind of project, attempts in
the United States to agree on industry-wide guidelines for fair use have failed. The
most prominent example was the Conference on Fair Use (CONFU), which met
regularly throughout the 1990s.278 The failure of this ambitious attempt at a blanket
274 Fisher & McGeveran, White Paper, supra note 24 at 53. Though a recent dispute where Oxford
University Press, Cambridge University Press and Sage Publications are alleging copyright
infringement against Georgia State University for the online distribution of course materials will be
interesting to monitor, as Georgia State University is also claiming fair use in defence. See Andrea L.
Foster, In Lawsuit, University Asserts that Downloading Copyrighted Text is Fair Use The
Chronicle of Higher Education (27 June 2008), online: The Chronicle of Higher Education
275 Documentary Filmmakers Statement of Best Practices in Fair Use, supra note 14 at 9-10.
276 See e.g. University Agenda for Fair Use (Working Group at the UniversityKnowledge Beyond
Authority Internet & Society Conference, Harvard University, Cambridge, Mass., 1 June 2007),
online: Internet & Society Conference 2007
277 Wanderlust, released 12 July 2006, is one such successful documentary. See Lewis Hyde,
Reclaiming Fair Use for Scholars and Teachers (Presentation at the Berkman Luncheon Series,
Berkman Center for Internet & Society, Harvard University, Cambridge, Mass., 9 February 2008)
online: Harvard Law School
278 See Bruce A. Lehman, The Conference on Fair Use: Final Report to the Commissioner on the
Conclusion of the Conference on Fair Use (November 1998), online: United States Patent and
Trademark Office
the International Federation of Library Associations and Institutions has also looked at the issue. See
generally International Federation of Library Associations and Institutions, Statements, online:
International Federation of Library Associations and Institutions
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approach suggests the necessity of tailor-made and culturally specific solutions to
conflicts over the scope of fair use.
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IV. Comparative Assessment
While Canada and the United Kingdom appear to have a rigid fair dealing
framework, and the United States appears to have a more flexible structure in fair use,
the legal outcomes in the three jurisdictions have been for the most part similar. 279
David Vaver argues that even before CCH, Canadian courts applied similar criteria,
the only difference being that fair use may have applied to any situation, not merely
an enumerated one.280 Today, unlike in the United Kingdom, Canadas enumerated
grounds are no longer rigid. CCH has expanded Canadas grounds and purposes,
since these should not be given a restrictive interpretation. With respect to the criteria
used to determine fair use or fair dealing, while the United States has a statutorily
entrenched four-factor approach (with some other factors that have been considered,
such as monopolistic practices and institutional policies), the court in CCH considered
six factors, with these serving as a future guiding framework. It is expected that other
unnamed factors may be considered in future cases. In other words, the Canadian
factors can now be seen as more flexible than those in the United States. For the
United Kingdom, criteria have emerged from the case law that are consonant with
Canadas pre-CCH framework, and in many ways there is now a hierarchy.
A. Hierarchy of Factors, Not Number of Factors
In comparing the three jurisdictions, each of the respective courts are more or less
open to consider the same types of factors. What distinguishes them is each courts
weight placed on these factors and, consequently, its policy perspective. By
interpreting certain factors to be more determinative than others, each court
undertakes a hierarchy of factors approach. Absent clearer guidelines, and to better
anticipate how a fair dealingfair use case might be resolved it is useful to
understand what weight each court places on certain factors. In this light, it helps to
compare the CCH factors to those considered in the United States and the United
Kingdom in an effort to determine which factor(s) top the hierarchy.
While the character, amount, and effect of the dealing, as well as alternatives to it
(CCH factors 2, 3, 4, 6), are similarly considered in each jurisdiction, the weight
courts ascribe to interpreting the purpose and nature of the work (CCH factors 1 and
5) is somewhat different.
279 Fair dealingfair use was used to exonerate newspapers for using third-party photographs to
illustrate a news story. See Allen, supra note 68; Nunez, supra note 225. But coursebook compilers
have been liable for reproducing journal articles and book chapters. See Basic Books, supra note 213;
Princeton University Press v. Michigan Document Services, 99 F.3d 1381, 65 U.S.L.W. 2324 (6th Cir.
1996).
280 Vaver, Canadas IP Framework, supra note 40 at 150.
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G. DAGOSTINO HEALING FAIR DEALING?
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1. Purpose (and Commercial Nature) of the Dealing
The purpose of the dealing (and its commercial nature) is the factor that seems to
be most undermined in CCH. Yet it is the most pronounced factor in the United
Kingdom, where it tops the hierarchy (indeed, commercial dealings are only allowed
in the case of review and criticism), and is one of four significant factors in the
United States.
2. Nature of the Work
Each jurisdiction considers the nature of the work, except that CCH curiously
came to a different conclusion about its effect: if a work is unpublished, it weighs in
favour of fair dealing. In the United Kingdom and the United States, if a work is
unpublished, it weighs against fair dealing. This interpretation indicates the Canadian
courts preference for users over protecting the interests of authors.
The role of other factors that were considered pre-CCH in Canada, and that are
currently key factors in the United States and United Kingdom, is questionable. For
instance, bad faith was not considered in CCH because there was none at issue. Still,
it was not expressly highlighted as a potential factor. This silence, however, does not
mean that bad faith cannot feature in future cases, as the Supreme Court of Canada
noted that the fair dealing factors were more or less six.
B. Other Factors and Best Practices
The real differences between Canada, the United Kingdom, and the United States
lie in the policy preoccupations held by their respective courts. In Canada, it is clear
that the shift is one championing the rights of users to balance copyright. However,
as was noted, it is unclear where the creators fit in this schema, and further, creators
are repeatedly conflated with right holders. This could not be further from the realities
of copyright practices. Perhaps in the United Kingdom, where commercial
exploitation is at the fore of judicial concern, one can argue that right-holder interests
are paramount. In the United States, the pendulum swings back and forth among the
various stakeholders. At bottom, it is difficult to regulate these policy preoccupations
with certainty. The most effective regulator may be the public climate (as has been the
case in Canada in advancing user rights) and corresponding best practices that need to
be articulated. As argued, CCH provides a great example of endorsing best practices
which were adopted at the institutional level. In this manner, CCH can sanction the
development and use of best practices to clarify uses both by a range of parties and
the courts themselves. Indeed, the ideal would be for industry-wide, or at the very
least, sector-specific guidelines, as with the Documentary Filmmakers Statement of
Best Practices in Fair Use. If judicially endorsed as in CCH, these guidelines would
prove invaluable to pre-empting litigation (and thereby avoiding access-to-justice
issues) and encouraging greater and trouble-free uses of copyrighted works.
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Conclusions
An obvious question at this late stage is whether Canadas fair dealing is ill.
While perhaps not ill, fair dealing in Canada may have the common cold, or may
have been ill and is now in convalescence. So while surgery may not be necessary,
some attention may be due. Because of CCH, Canada now has a flexible framework
where the enumerated purposes and factors can be various. And when compared to
the United Kingdom and the United States, Canadas regime is the most user-centred.
Still, widespread uncertainty remains for all parties across the jurisdictions. That
which constitutes fair dealing can still confound, and going to the courts for answers
is the least desirable option. Several potential remedies, discussed below, are
immediately apparent, while others, though not noted below, are (in the spirit of
CCH) also worth considering.
A. Do Nothing?
Doing nothing would involve waiting to see other court decisions apply CCH and
letting industry and the Canadian public muddle about trying to find their own way
through allowable uses. Sanctioning this copyright convalescence does not seem to
be an appropriate response. Indeed, legislative initiatives for other copyright matters
are currently under serious consideration (e.g., technological-protection measures,
which may affect fair dealing). Arguably, these initiatives will make copyright more
expansionist than it already is. Further, there remains a high degree of uncertainty in
the various copyright sectors, such as the educational sector. In the United States, the
uncertainty regarding the educational fair use sector recently led to the Copyright
Clearance Centers offer of blanket licences for academic institutions.281 However,
there are strong arguments to suggest that this may not be a suitable way forward.282
B. Legislate CCH Factors?
It has been suggested that Canadian government should intervene and legislate
the CCH factors. It is not clear how this would be done, since the Court was clear
about the lack of a precise number of factors. More importantly, why would this be
done? Canada now has a flexible framework for evaluating fair dealing on a case-by-
case basis that is firmly rooted in the idea that users have rights. This framework
seems fairly clear and will be applied and adapted to future cases, in the common law
281 Copyright Clearance Center, Copyright Clearance Center Announces Annual Copyright
License for Academia: Easy-to-Use Service Provides Pre-Approved Copyright Permissions (22 June
2007), online: Copyright Clearance Center
282 Such licences could undermine the very purpose of fair use by requiring licensing for materials
already freely available under statute. Poor institutions may also be disadvantaged. See James Boyle,
The Inefficiencies of Freedom Financial Times (1 July 2007), online: Financial Times
G. DAGOSTINO HEALING FAIR DEALING?
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way. The enumerated purposes for fair dealing can be interpreted in the same fashion.
CCH has set a strong precedent, and unless Parliament disagrees with any of its
pronouncements, it seems inopportune to intervene at this time. Legislating CCH may
invite even more confusion.
359
C. Cherry-pick Other Laws?
Some commentators suggest that Canada should adopt U.S. fair use. This would
entail cherry-picking the fair use provision from the corpus of U.S. copyright law.
There are problems with this approach. First, as noted in eminent U.S. studies, fair
use is ill and not a panacea for Canadian copyright woes.283 Because fair use is ill, it
has by necessity engendered many fix-it approaches, some by the courts themselves
attempting to impose bright-line rules (for example, presumptions about commercial
uses), and others by industry players attempting to institute best practices. Second,
cherry-picking a lawimporting a specific countrys law into another and
supplanting the existing law in this case (e.g., allowing section 107 of the U.S.
Copyright Code to replace section 29 of the CCA)likely also means taking from its
jurisprudence (and neglecting other constitutive factors, such as a constitution).
Would Canadian courts apply U.S. fair use cases? Would this application ignore the
fact that property is not constitutionally entrenched in Canada? Singapore has cherry-
picked U.S. fair use, though it is still called fair dealing, thereby showing a reluctance
to embrace fully fair use at the risk of causing undue confusion.284 One must be very
careful when importing legal devices from other jurisdictions.
In this context, it is also useful to consider whether fair dealing necessitates
clarification to encompass important (and new) uses. In the United Kingdom, Gowers
recommended that the government enact a new copyright exception for parody.
Before CCH, many scholars posited that parodies constitute infringement in Canada.
In light of CCHs liberal interpretation of the enumerated grounds, it may be argued
that criticism could now encompass parody. Michelin no longer seems to be good
law. Indeed, the protection of parody in the United States is not a foregone
conclusion: parody still requires analysis of each of the four factors as well as some
use of the target to be fair.285 Now this might also be the case in Canada, without the
necessity of legislative intervention. In Canada, the issue may turn on the sufficient-
acknowledgment requirement (not present for research or private study, nor required
in the United States). In the United Kingdom, where the same requirement exists,
courts have been flexible in overcoming this hurdle in the case of criticism, review
283 See Part III.A.3.
284 Copyright Act (Cap. 63, 2006 Rev. Ed. Sing.), s. 35(2); Debate 2004, supra note 16. For
commentary, see Ng-Loy Wee Loon, Law of Intellectual Property in Singapore (Sweet & Maxwell
Asia, 2008) at para. 11.3.16. I am most grateful to Peter Yu, Mary Wong and George Wei for their
insights in Singapore copyright law.
285 Dr. Seuss Enterprises, L.P. v. Penguin Books upheld a preliminary injunction, ruling against fair
use (109 F.3d 1394 (9th Cir. 1997)). See also Carroll, supra note 244.
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flexibility or,
reporting.286 This
indeed, dispensation with
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the
and news
acknowledgement requirement should be more warranted for parody. In parody, the
link between the original and the parodic twin is often obvious since the parody
must be able to conjure up at least enough of that original to make the object of its
critical wit recognizable.287
Similarly, time shifting that comports with fair dealing criteria could now be
allowed in Canada, as it has long been in the United States.288 In the United Kingdom,
Gowers is again recommending a copyright exception, but for format shifting.
Arguably, such practices are tolerated uses.289 Enacting new exceptions may be at
best unnecessary and at worst dangerous since they may serve to cut down the
rights of fair user [sic] previously enjoyed under the old law. 290 With respect to
Crown copyright, while not in dispute in the case, CCH clarifies that the copying of
judicial decisions is permissible, and it is likely that other government works used in
a similar fashion would be as well.291 Still, both Canada and the United Kingdom give
more work protection because of Crown copyright, which does not exist in the United
States. There are no plans in the United Kingdom to address this issue, but it may
require more consideration in both jurisdictions.
In the educational sector, clarification of law and practice is critical, even if
specific amendments to fair dealing (such as adding educational uses as an
enumerated ground) are unnecessary. One disadvantage of introducing a new law is
that it may take time before the fix that is sought is achieved; indeed, the fix may
never be achieved.292 New practices would test the limits of the new law through
litigation, thereby creating access-to-justice issues for disadvantaged parties. Thus, it
does not appear that clarity can be attained in the immediate future by cherry-picking
from U.S. law.
286 See e.g. Pro Sieben, supra note 155.
287 Acuff-Rose, supra note 206 at 573.
288 Bill C-61 proposes an exception in the CCA for both time-shifting (cl. 29.21 amending s. 17 of
the CCA) and format shifting (clause 29.23 amending s. 17 of the CCA) (supra note 28).
289 Tim Wu, Tolerated Use (May 2008), Columbia Law and Economics Working Paper No. 333,
online: SSRN
290 Burrell, supra note 19 at 369, citing J.M. Easton, The Law of Copyright in Works of Literature,
Art, Architecture, Photography, Music and Drama by the Late Walter Arthur Copinger (London:
Steven & Hayens, 1915) at 144 (referring to the pointlessness of enacting fair dealing under the
Copyright Act, 1911 since user rights were already enjoyed (and perhaps more so) before the new
law).
291 But see CCH, supra note 4 at paras. 71, 88 (suggesting that while decisions themselves are not
subject to copyright, decisions with headnotes and summaries are).
292 Here Bill C-61 proposed some complicated revisions for the educational community. See e.g.
supra note 28, clause 30 (amending s. 18 of the CCA).
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G. DAGOSTINO HEALING FAIR DEALING?
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D. Fair Dealing Best Practices?
Fair dealing best practices are the most promising alternative or complement to
legislative reform. The parties directly affected in a specific industry can together
develop these guidelines, which can ultimately bolster confidence in the use of
copyrighted materials and aid in fair dealing decision making in the courts. There
have already been successful guidelines or best practices generated in the United
States, where stakeholders with apparently disparate interests in the documentary-
film-making sector have devised fair use best practices. These guidelines can
materialize on at least three different levels: (1) ideally, industry-wide (e.g., across the
film industry), (2) sector-specific (e.g., documentary film makers), where both (1) and
(2) are developed by a range of stakeholders with diverse interests, and (3)
institutional-specific (e.g., the Great Library). The first is the most ambitious and as
noted, in the United States such efforts have failed. For the others, there have,
however, already been great successes. As noted earlier, stakeholders with apparently
disparate interests in the documentary-film-making sector have already devised fair
use best practices. This initiative has fostered wide-ranging collaboration among
various creative associations, academic institutions, and industry participants. Guided
by ethical principles and the experiences of the professionals that rely on fair use, the
goal is to make a statement to clarify the application of fair use, to help filmmakers
user it with confidence.293 Significantly, documentarians are themselves copyright
holders, whose businesses depend on the willingness of others to honor their claims
as copyright owners.294 In this way, such guidelines would not endorse abusive
application of fair use. In Canada, the Documentary Organization of Canada
proposed a similar initiative.295 Its goal to establish Canadian fair dealing guidelines
grew out of a recommendation from a white paper entitled The Copyright Clearance
Culture and Canadian Documentaries.296 This initiative, along with others, should be
mirrored across other sectors, and merits full stakeholder (including government)
support.297
293 Documentary Filmmakers Statement of Best Practices in Fair Use, supra note 14 at 1.
294 Ibid.
295 See Letter from Documentary Organization of Canada to the Minister of Industry and Minister
of Canadian Heritage (10 December 2008), online: Docorg
providing me with background material.
296 H. Knopf, The Copyright Clearance Culture and Canadian Documentaries (November 2006),
online: Docorg
297 See Artmob, online: Artmob
based at York University. Among its goals is to create user-generated guidelines comporting with fair
dealing based on uses of its digital archives: Our digital infrastructure will facilitate the collection of
both qualitative and quantitative data that will assist Canadian and International scholars and
policymakers in addressing the technological, pedagogical, social, cultural and legal questions that
publishing arts material in a publicly licensed open-source environment poses (ibid.).
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The interest to develop such best practices is also apparent internationally and
locally, though from a common set of stakeholder interests (e.g., within universities
and libraries in both Canada and the United States). In Canada, most educational
institutions have devised copyright policies to deal with the use of copyrighted
materials by their patrons. The Great Library in Toronto has one.298 Osgoode Hall
Law School and York University have also developed a policy.299 Concordia
University has a policy (which appends the Copyright Act) and has also struck
working groups to study these issues.300 Indeed, libraries continue to play an
important role in the negotiation, implementation, and management of licences. Staff
are asked regularly to enforce and interpret copyright issues for compliance.301 These
are promising starts, but more concerted industry efforts, like those spearheaded by
U.S. documentary filmmakers and, more recently, in Canada, can and should be
emulated.
More parties with conflicting interests within a set sector need to come together.
Such collaboration can help to clarify fair dealing uses for the creators, users, right
holders, and courts, who can then rely on these standards as soft law when
interpreting fair dealing cases. These initiatives should be encouraged to flourish and
should at least help foster communication and dialogue among different parties. The
benefits can be more far-reaching and consequential to future fair dealing and general
copyright practices. Of course, such practices truly help on the judicial front, once
courts have endorsed their use in the assessment of what is fair. Evidence of this
endorsement was seen in CCH and constituted one of the cases greatest
contributions. Since CCH favours institutional users that abide by their own access
policies comporting with fair dealing, a litigants case could be more persuasive if
such policies were consistent across the industry. Albeit a tall order to promote wider
collaboration, such is not implausible, especially given the persisting uncertainty.
Such self-help guidelines merit full backing and should be developed to ensure that
all parties are compliant with copyright and in healthy agreement.
E. Clarify Copyright Act? Clarify Policy Objectives?
Just as one cannot cherry-pick laws from other countries, it is difficult to cherry-
pick and solve problems within the Canadian copyright system. Fair dealing cannot
be addressed in a vacuum. Canada needs to stop and take stock. One must revisit the
entire CCA and study what its objectives are and where the balance is being struck.
298 Great Library Access Policy, supra note 93.
299 York University, Copyright, online: York University
300 Concordia University Secretariat, Policy on Copyright Compliance (28 February 2001),
online:
301 See Leslie Ellen Harris, Editorial, Copyright & New Media Law Newsletter 8:3 (2004). Of
course, staff also need to be trained to understand and enforce fair dealing.
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G. DAGOSTINO HEALING FAIR DEALING?
2008]
Are right holders the so-called winning parties? Whose interests is copyright law
meant to serve?
As noted throughout this article, the question remains: where is the author
creator? CCH does not appear to provide an answer, and the Copyright Board has
flagged this oversight. In the current Canadian judicial, public, and academic climate
on copyright, creators rights and droit dauteur seem to be terms of the past or
romanticized terms that are now confined to the civilian tradition and vanishing from
the Canadian common law tradition.302 Creators remain subject to industry power
imbalances, which are facilitated by the CCA (allowing freedom of contract and in
practice favouring right holders) and facilitated by the courts (undermining creators,
but championing another stakeholder previously ill-addressed, the users). Author-
centric provisions may thus be necessary (accounting for the role of contract and
moral rights) to balance liberalized fair dealing and potential future exceptions and
existing right-holder-centric provisions. In this context, as an example of eschewing a
fragmented fix-it approach, addressing the issue of the various types of damages
available and the requisite levels of proof are other important matters that need
consideration in light of the different types of infringement and infringers.
When all is said and done, if copyright balance is found, the next, equally
important, question is whether the CCA is clear enough to communicate this balance.
Are the CCAs objectives embraced by the practices of stakeholders and the courts?
One hindrance may be the lack of clarity in the CCA. Simplifying and clarifying the
CCA was flagged as a long-term priority in the governmental report on section 92 of
the CCA303 and should not to be forgotten in the short term.
302 This was not always the case (and should not be the case). See generally DAgostino, En
attendant Robertson, supra note 50. See also Marian Hebb & Warren Shaffer, Towards a Fair Deal
(Study prepared for the Creators Copyright Coalition and the Creators Rights Alliance/Alliance pour
les droits des crateurs, October 2006), online: Creators Copyright Coalition
303 Industry Canada, Supporting Culture and Innovation: Report on the Provisions and Operation of
the Copyright Act (Ottawa: Industry Canada, 2002) at 46.
