Defences in Canadian copyright law

The Canadian Copyright Act provides a monopoly right to the owners of the copyrighted work. This implies no person can use the work without authorization or consent from the copyright owner. But some provisions in the Act defend the uses of copyrighted work without the prior permission. These are certain exceptions in the Act which will not regard a work as infringed.

Quasi-Defences

Quasi-defence is generally looked upon in an action for copyright infringement. Such a defence is raised by the defendants by making following arguments:

1. No copyright in the work created.

2. No copyright in the copied element.

3. No substantial part was taken.

4. Plaintiff is not the true owner of the copyrighted work.

5. Substantial similarity and access to the original work shown, that the work was not copied.^[1]

Other Defences

Another set of defences are available for pleading to the defendants, in case where some features of copyrighted work exists, but does not constitute infringement for some other reason. These defences include the following:

1. Public interest

2. Copyright misuse

3. Fair dealing

4. Charter defence (Charter of rights and freedom)

5. Other statutory exceptions (section 29.4-32.2 of Copyright Act.)^[2]

Public Interest

At common law, copyright may be overridden for public interest reasons.^[3] There is no explicit provision in the copyright statute about "Public Interest" as a defence to copyright infringement. However it has been used as a defence in very rare circumstances.

In the case of Lion Laboratories v. Evans [1984] W.L.R 539 (C.A.),^[4] the copyrighted information about malfunctioning breathalyser machines was reproduced. Such reproduction was held to be justified, despite the nature of material, being confidential and protected by copyright. Court agreed to the defence of public interest, raised by defendants on ground of investigations made regarding the accuracy of the equipment to avoid incorrect readings when used by the police on motorist.

In the other leading matter of Beloff v. Pressdram and another’s ^[5] [1973] 1 All ER 241, defence of public interest has been interwoven with fair dealing. Court observed fair dealing as a statutory defence limited to infringement of copyright. On the other hand, public interest acts as a defence outside, and independent of statutes, which is based on principles of common law.

Lord Denning observed that, the defence of public interest is limited to disclosure of national security, breach of laws, or other such endangering matters. In other words, public interest does not extend beyond misdeeds of a serious nature and importance of the country. Such a defence has been used in cases where exposing a gross misdeed was only possible through reproduction of a document which inculpated the wrongdoer.^[6]

In this case, Foot, the defendant contributed a number of articles in Private Eye magazine attacking a prominent member of government. Plaintiff wrote memorandum to the editor of Observer newspaper with copies to other members of the editorial staff. In the memorandum, she stated that she would write a report, investigating Private Eye’s allegations against the politician, and put it into the wider context of his political personality and morality. Subsequently the article was published and it accused Private Eye of smearing and fabrication. Private Eye published the article in reply, and it contained verbatim memorandum of plaintiff. The plaintiff brought an action against defendants for copyright infringement in the memorandum. The defendant pleaded for the defence of public interest.

The issue raised in the case was whether the defendants established the defence of public interest in the publication or not? The court ruled that it is not enough that the public benefit from reading the memorandum. The publication did not disclose any iniquity or misdeed. Therefore, it follows that the defence of public interest is not recognizable here and hence fails.^[7]

Copyright Misuse

It is an equitable defence against infringement of copyright. This defence can be pleaded in order to avoid infringement liability. Under this defence, defendant may claim that, the copyright holder was engaged in some abusive or unlawful activities, in exploiting or enforcing the copyright and thus does not come to the court with clean hands. Therefore, in such cases, plaintiff is not entitled to any relief.

United States have drawn defence of copyright misuse from precedents, the older doctrine of "patent misuse", and derives it from more general doctrine of unclean hands. The doctrine prevents copyright owner from engaging in any restrictive practices that may be contrary to public policy of copyright law. Further, this doctrine prohibits a party from claiming remedy (like injunction) against another, when party has itself performed some misdeeds or acted improperly, such as shown anti-competitive behaviour or overbroad infringement claims.^[8]

Defence of copyright misuse is not recognised as a statutory right in federal Copyright Act, but has been implemented in many federal cases laws. This can be exemplified by the case of Lasercomb America, Inc. v. Reynolds 911 F .2d 970 (4TH Cir. 1990). In this case, court observed copyright misuse, where the software copyright holder used license agreement which barred licensees from applying their ideas from their software to write its own software.

However Canadian laws also did not explicitly recognise this defence in the statutes neither applied it in any case law, but have considered the defence. (See example of Euro excellence Inc. v. Kraft Canada Para: 97-98)^[9]

Fair Dealing

In the common law countries, fair dealing is used as an exemption tool against the copyrighted work of the author. It is a catalogue of different defences, against an action for infringement of an exclusive right of copyright. The fair dealing clause^[10] of Canadian Copyright Act, allows users to perform on the copyrighted work of the owner, in case of research, private study, criticism, review or news reporting. With respect to these exceptions, user must credit the name of author or performer.

Fair dealing, as incorporated in section 29 of Canadian Copyright Act, is independent from other defences or specific exemptions. It is a general defence upon which a defendant can always rely, regardless of whether the infringing activity is or not covered by a specific exemption. It has not been defined in the Canadian copyright act, and thus does not provide a general, open-ended defence for any dealing of a copyrighted work, which can be regarded as fair. Further, court will not apply the fair dealing exemption, if the purpose of the dealing is not one that is expressly mentioned in the Act.^[11]

Provision of fair dealing does not call for consent or authorization from copyright owner of a work, but it requires passing three hurdles by defendant in order to claim his work under fair dealing. First is to list the purpose of the work as provided in the Act. Second, the dealing must be fair, and finally, sufficient acknowledgment must have been given to the work of the other person. Failure to follow these steps, cause the defence to fail.^[12]

In the matter of CCH Canadian Ltd. V. Law Society of Upper Canada, ^[13] Supreme Court of Canada explained the requirements to be followed by defendants in using a copyrighted work. Court held that the section 29 of Copyright Act which deals with fair dealing provision, as well as related exceptions, is a user’s right. In order to maintain the proper balance between the rights of copyright owners and user’s interest, it must not be interpreted strictly.^[14] As there is no definition for fair dealing, court enumerated six factors that provide a useful analytical framework to govern determination of fairness in future cases. (1), the purpose of the dealing, (2), the character of the dealing (3), the amount of the dealing, (4) alternatives to the dealing (5), nature of the work and (6) effect of the dealing on the work.^[15]

Fair dealing is distinguished from fair use. The latter expression is broader in scope, and is found under section 107 of United States Copyright Act, 1976. Under United States law, the purposes listed in the provisions are not exhaustive and failure to acknowledge source is not a bar to the defence. On the other hand, Canadian provision of fair dealing, differs in some aspect from United States, but shares its approach with the United Kingdom. Although the criteria of fairness are quite similar in nature with that of Canadian law, therefore should be use with caution.^[16] Thus in comparison to the United States provision of fair use, fair dealing of Canadian Copyright Act, is construed very narrowly.

CCH Canadian Limited v. The Law Society of Upper Canada has potentially changed the view of fair dealing dramatically. Although the post-CCH jurisprudence is not very promising, there is the potential for development in the law on fair dealing. After CCH, some elements of fair dealing are broader than are the elements of fair use in the United States.^[17]

In Hubbard v Vosper,^[18] [1972] 2 Q.B. 84, Lord Denning M.R. made the following observations regarding the fair dealing defence:

1. "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 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 unfair. 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."

2. "A literary work consists, not only of the literary style, but also of the thoughts underlying it, as expressed in the words. Under the defence of "fair dealing" both can be criticized."

3. "Although a literary work may not be published to the world at large, it may, however, be circulated to such a wide circle that it is "fair dealing" to criticize it publicly in a newspaper or elsewhere"

The matter of Allen v. Toronto Star brought a new and more liberal approach to fair dealing.

The Toronto Star newspaper published an article about Sheila Copps, a prominent MP, being a candidate for the national leadership of her political party. The Star article reproduced a copy of a cover of Saturday Night magazine which included a photograph of Sheila Copps on a motorcycle. Allen holds copyright in the photograph and alleges copyright infringement. The Toronto Star argues the reproduction constituted fair dealing as a "newspaper summary.

It was held that "the defence of fair dealing applies in the circumstances of this case."

Segdwick J provided following reasons:

The test for fair dealing is essentially purposive. It is not simply a mechanical test of measurement of the extent of copying involved.

The following factors indicate that the purpose of the reproduction was to aid in the presentation of a news story and not to gain an unfair commercial or competitive advantage over Allen or Saturday Night: "The cover was related to the current news, the leadership aspiration of Ms. Copps. The change in her image was the thrust of the article... The cover was not reproduced in colour as was the original. The cover was reproduced in reduced form. The news story and accompanying photos received no special prominence in the newspaper. They appeared on an inside page of an inside section." Thus, the reproduction was in aid of the presentation of a news story rather than to gain unfair commercial or comparative advantage over Allen or Saturday Night.^[19]

Bearing in mind the nature and purpose of the use of the photograph to illustrate a current news story, the defence of fair dealing applies.^[20]

Charter Defence: (Charter of Rights and Freedom)

Freedom of expression is claimed as a right of an individual, and as a defence under section 2 (b) of the Charter, in cases, where defendant is engaged in infringing copyrighted activity. It is argued that limiting the use of copyrighted material is unconstitutional, not that the copyright scheme as a whole is unconstitutional.

As the defence of copyright misuse has not been recognised by Canadian courts in cases, similarly they have not yet definitely rejected or accepted the charter defence. In the case of Queen v. Lorimer , Federal Court of Appeal rejected the charter defence, but left the possibility of it succeeding in future. Trial Division considered this defence in Cie Générale des Établissements Michelin-Michelin & Cie v. C.A.W.-Canada, but held that the Charter did not confer the right to use private property to express oneself. Thus, the defendants' freedom of expression had not been infringed.^[21]

Other Statutory Defences (Section 29.4-32.2)

Canadian Copyright Act contains a specific exception for Educational Institutions under section 29.4. However, introduction of Bill C-32, will propose some changes to the current provision.

Current provision of section 29.4 is as follows:

Reproduction for instruction:

"29.4 (1) It is not an infringement of copyright for an educational institution or a person acting under its authority (a) to make a manual reproduction of a work onto a dry-erase board, flip chart or other similar surface intended for displaying handwritten material, or

(b) to make a copy of a work to be used to project an image of that copy using an overhead projector or similar device for the purposes of education or training on the premises of an educational institution.

...

Where work commercially available

(3) Except in the case of manual reproduction, the exemption from copyright infringement provided by paragraph (1)(b) and subsection

(2) does not apply if the work or other subject-matter is commercially available in a medium that is appropriate for the purpose referred to in that paragraph or subsection, as the case may be."^[22]

Proposed provision under Bill-32: (proposed inserted provision initialized)

Reproduction for instruction

"29.4 (1) It is not an infringement of copyright for an educational institution or a person acting under its authority for the purposes of education or training on its premises to reproduce a work, or do any other necessary act, in order to display it.

...

Where work commercially available

(3) Except in the case of manual reproduction, the exemption from copyright infringement provided by subsections (1) and (2) does not apply if the work or other subject-matter is commercially available, within the meaning of paragraph (a) of the definition of "commercially available" in section 2, in a medium that is appropriate for the purpose referred to in those subsections."^[23]

Bill C-32 proposes expanding the fair dealing exception found at section 29 of the Copyright Act to include education, parody and satire. As well, Bill C-32 purposes amendments to the exceptions available to educational institutions, libraries, museums, archives and persons with a perpetual disability in order to facilitate the use of digital technologies and make provisions more technologically neutral.^[24]

It can be observed, that the new provision has a wider scope under subsection (1), than the earlier proviso. Also in subsection (3), the exemption does not apply where the work is commercially available. But its usefulness is debated, because the exclusion of commercially available materials still infringes copyrights.

References

1. Ariel Katz, Intellectual Property: Copyright, Trademark and Patent (LAW384H1F), Lecture notes, (Faculty of Law, University of Toronto, 2011)
2. Ariel Katz, Intellectual Property: Copyright, Trademark and Patent (LAW384H1F), Lecture notes, (Faculty of Law, University of Toronto, 2011)
3. David Vaver, Intellectual Property Law, 2nd Edition, Irwin Law: Toronto, 2011. See "Public Interest" at pg. 218-219.
4. "Copyright and Fair Dealing Guidelines for Filmmakers" (PDF).
5. Ariel Katz, Intellectual Property: Copyright, Trademark and Patent (LAW384H1F), Lecture notes, (Faculty of Law, University of Toronto, 2011)
6. Ariel Katz, Intellectual Property: Copyright, Trademark and Patent (LAW384H1F), Lecture notes, (Faculty of Law, University of Toronto, 2011)
7. Ariel Katz, Intellectual Property: Copyright, Trademark and Patent (LAW384H1F), Lecture notes, (Faculty of Law, University of Toronto, 2011)
8. "See Lava Records LLC v. Amurao, 2009 WL 3806366" (PDF).
9. Ariel Katz, Intellectual Property: Copyright, Trademark and Patent (LAW384H1F), Lecture notes, (Faculty of Law, University of Toronto, 2011)
10. "Copyright Act of Canada".
11. "CCH Canadian Limited v. Law Society of Upper Canada".
12. "Changing face of fair dealing in Canadian Copyright law" (PDF).
13. "CCH Canadian Limited v. Law Society of Upper Canada".
14. "CCH Canadian Limited v. Law Society of Upper Canada Para 48".
15. "CCH Canadian Limited v. Law Society of Upper Canada Para 53".
16. "Changing face of fair dealing in Canadian Copyright law" (PDF).
17. "Defences: Public Interest, Fair Use, Fair Dealing".
18. Hubbard v Vosper, [1972] 2 Q.B. 84
19. Allen v. Toronto Star (1997), 36 O.R. (3d) 201 (Ont. Gen. Div)
20. Allen v. Toronto Star (1997), 36 O.R. (3d) 201 (Ont. Gen. Div))
21. "Defences: Public Interest, Fair Use, Fair Dealing".
22. Ariel Katz, Intellectual Property: Copyright, Trademark and Patent (LAW384H1F), Statutory Supplement, See Pg, 40 (Faculty of Law, University of Toronto, 2011)
23. Ariel Katz, Intellectual Property: Copyright, Trademark and Patent (LAW384H1F), Statutory Supplement, See Pg, 40 (Faculty of Law, University of Toronto, 2011)
24. "Legislative Summary, Bill C-32, An Act to amend the Copyright Act." (PDF).