Judgments

2002 FCA 187

A-806-99 ( T-1618-93 )

CCH Canadian Limited (Appellant) (Plaintiff)

v.

The Law Society of Upper Canada (Respondent) (Defendant)

A-807-99 ( T-1619-93 )

Thomson Canada Limited c.o.b. as Carswell Thomson Professional Publishing (Appellant) (Plaintiff)

v.

The Law Society of Upper Canada (Respondent) (Defendant)

A-808-99 ( T-1620-93 )

Canada Law Book Inc. (Appellant) (Plaintiff)

v.

The Law Society of Upper Canada (Respondent) (Defendant)

Indexed as: CCH Canadian Ltd. v. Law Society of Upper Canada (C.A.)

Court of Appeal, Linden, Rothstein and Sharlow, JJ.A. --Toronto, October 23, 24, 25, 2001; Ottawa, May 14, 2002.

Copyright -- Infringement -- Appeal from trial judgment holding copyright not subsisting in appellant Publishers' reported judicial decisions, headnotes, case summary, topical index; cross-appeal from rejection of public policy, equitable defences -- Law Society of Upper Canada (L.S.U.C.) operating Great Library at Osgoode Hall in Toronto -- Upon request of library users, photocopying legal materials forwarding them by mail, facsimile, or holding them for pick-up -- Also providing free-standing photocopiers in library, posting warnings certain copying may be infringement of copyright law, disclaiming responsibility -- Appeal allowed in part; cross-appeal dismissed -- Per Linden J.A. (Sharlow J.A. concurring): (1) Whether copyright subsists -- Copyright Act, s. 5 providing copyright subsisting in every original literary work -- Meaning of "original" -- Tele-Direct (Publications) Inc. v. American Business Information Inc. not altering classic Anglo-Canadian test of originality: work, independently created by author, displaying at least minimal degree of skill, judgment, labour in overall selection or arrangement -- F.C.T.D. Judge mistakenly adopted American threshold for copyright protection, containing requirements for both originality and creativity, in light of fundamental differences in copyright concepts -- Work must be more than mere copy to be original -- Defining "work" -- S. 3(1) stating copyright in relation to work meaning sole right to produce, reproduce work, or " substantial part" thereof, including communication "to the public" by telecommunication, and to authorize such acts -- Legal materials at issue capable of existing outside of context in which published; copyright subsisting therein -- (2) Whether infringement -- S. 27(1) describing infringement as doing, without consent, anything only copyright owner having right to do -- S. 3(1) basis for allegations of infringement -- (a) Reproductions herein of entire works, therefore prima facie infringement -- (b) Communication must be targeted at aggregation of individuals, i.e. more than single person, but not necessarily public at large -- Whether recipients of communication constituting public only answered on case-by-case basis -- Insufficient evidence to determine forwarding copies by fax "communication to the public by telecommunication" (s. 3(1)(f) -- (c) L.S.U.C. implicitly authorized illegitimate use of photocopiers by providing copiers, vast collection of Publishers' works in single environment it controls -- Not exercising control to prevent infringement, thereby infringing Publishers' right to authorize reproductions -- Insufficient evidence to conclude whether fair dealing applied to particular allegations of infringement analysis -- As to secondary infringement, majority disagreeing with Rothstein J.A., Trial Judge on sale issue -- Profit not necessary component of sale -- Not clear L.S.U.C. selling copies -- Secondary infringement not strict liability provision -- Belief copies would not infringe must be honest, reasonable -- (3) Fair dealing exemptions -- S. 29 providing fair dealing for purpose of research, private study not infringing copyright -- (a) Scope of allowable purpose -- Qualification of "study", but not "research" indicating Parliament intending to permit all fair research -- Library copies works to assist researchers -- Adopts their purpose -- (b) Recent amendments to Act exempting libraries, museums, archives from infringement where doing anything on behalf of person that person may do personally -- Great Library within definition of "library, archive or museum" -- (c) Assessment of fairness -- Influencing factors identified, considered but assessment fact-specific -- (d) L.S.U.C.'s "Access to Law" policy -- That copies made pursuant to policy insufficient to establish fair dealing -- (e) Maintaining free-standing copiers prima facie infringement of right to authorize reproduction -- Library cannot rely on s. 30.3(1) exemption as not meeting conditions in s. 30.3(2) -- Constitutional, public policy, equitable defences rejected -- (4) Relief -- Permanent injunction denied because could not determine fair dealing exemptions universally applying in future -- Declaration granted copyright subsisting in materials, L.S.U.C. infringed copyright in works reproduced -- Per Rothstein J.A. (concurring in result) -- Analytical approach to issues of originality, infringement differed -- (1) Whether work original guided by principles: focus on expression, not ideas, facts; work must originate from author, not be copied; some intellectual effort required, but will vary with circumstances -- Headnote, summary, reported judicial decisions requiring intellectual effort, original, entitled to copyright protection -- (2) Reproduction in entirety of reported judicial decisions, headnote, case summary, monograph, prima facie infringed Publishers' exclusive right to reproduce works -- Although topical index comparatively small part of book, so qualitatively integral that copying it in entirety constituting reproduction of substantial part of original book -- Therefore, prima facie infringement -- As "public" in s. 3(1)(f) meaning more than one recipient, transmission by facsimile to single recipient not infringement -- Provision of photocopiers in environment full of copyrighted works without taking steps to prevent reproduction thereof implied authorization of infringing reproduction -- Three elements required to prove secondary infringement: (1) work product of primary infringement; (2) knowledge copy product of primary infringement; (3) sale or distribution established -- First element established as already found primary infringement -- Where primary, alleged secondary infringer same person, that person having knowledge of facts giving rise to primary infringement -- Existence of sale not predicated on profit, but transfer of property, payment of consideration -- Both present in transactions between L.S.U.C., patrons -- Publishers prejudiced -- Prima facie secondary infringement established -- (3) Impossible to apply legal principles relating to fair dealing in absence of factual underpinning -- Library exemption applied -- (4) Declaration copyright subsists, infringement.

Barristers and Solicitors -- Governing body -- Law Society of Upper Canada (L.S.U.C.) sued by three of major law publishers for copyright infringement -- Photocopying of published legal works at Great Library in Osgoode Hall -- Photocopying service provided in accordance with L.S.U.C.'s "Access to the Law" policy -- Free-standing photocopiers also available to library users -- L.S.U.C. had reason to suspect not all patrons using free-standing photocopiers for non-infringing purposes -- Not enough for it to post notices disclaiming liability -- Reliance on its "Access to the Law" policy insufficient to absolve L.S.U.C. from liability -- Maintaining free-standing photocopiers prima facie infringement of Publishers' right to authorize reproduction of their works -- Court also rejecting L.S.U.C.'s other defences: public policy, equity, access to justice -- Enforcement of copyright law not inconsistent with public interest in due administration of justice, rule of law -- Necessity for fairly recognizing law Publishers' rights as incentives to continuation of law publishing.

Constitutional Law -- Fundamental Principles -- Appellants alleging Law Society of Upper Canada (L.S.U.C.) infringing copyright in legal materials they publish by providing custom photocopy service, free-standing photocopiers in Great Library at Osgoode Hall -- L.S.U.C. raised constitutional, equitable defences -- Public interest in due administration of justice, maintenance of rule of law, enhancement of basic constitutional values through relatively equal, unrestricted access to law not significantly impaired through recognition, enforcement of copyright -- Values implicitly considered in balancing Publishers' rights with public interest -- Constitutional conclusions should not be made in factual vacuum.

Crown -- Prerogatives -- Appellants alleging Law Society of Upper Canada (L.S.U.C.) infringing copyright in legal materials they publish by providing custom photocopy service, free-standing photocopiers in Great Library at Osgoode Hall -- L.S.U.C. arguing exclusive right to publish decisions of Ontario courts by virtue of Crown prerogative -- Submitting publishers cannot allege infringement of any work incorporating those decisions -- L.S.U.C. not proving, on balance of probabilities, existence, ownership of copyright in underlying decisions or right to exclude others from publishing these reported decisions.

This was an appeal from the trial judgment holding that copyright did not subsist in the appellants' reported judicial decisions, headnotes, case summary and topical index, and a cross-appeal from the rejection of public policy and equitable defences. The appellants publish legal materials. The respondent is a non-profit corporation that governs the legal profession in Ontario. As part of its mandate, it operates the Great Library at Osgoode Hall in Toronto. Upon request from users, the Law Society will photocopy legal materials from the Great Library's collection. Library users can pick up photocopies or have them forwarded by mail or facsimile. The photocopying service is carried out in accordance with the Law Society's "Access to the Law Policy", which states that single copies will be provided for specific purposes, including research, review, private study and criticism as well as use in court, tribunal and government proceedings. It also provides free-standing photocopiers in the Great Library, which are operated by patrons using coins or pre-paid cards. The Law Society does not monitor the use of these photocopiers, but posted notices above the photocopiers warning that certain copying may be an infringement of copyright law and disclaiming responsibility for infringing copies made by the users of the photocopiers. The Publishers asserted that copyright subsists in their material, and that the Law Society infringes those copyrights through its custom photocopying service and by making free-standing copiers available in the Great Library. The Law Society denied all liability.

The issues were: (1) whether copyright subsists in the Publishers' works; (2) if so, whether there was infringement; (3) if so, whether the fair dealing exemption under the Copyright Act applies to exempt the Law Society from liability for infringement; and (4) what form of relief is appropriate.

Held, the appeal should be allowed in part and the cross-appeal dismissed.

Per Linden J.A. (Sharlow J.A. concurring): (1) Copyright Act, section 5 provides that copyright subsists in every original literary work. In Tele-Direct (Publications) Inc. v. American Business Information Inc., [1998] 2 F.C. 22 (C.A.) the classic Anglo-Canadian test of originality was described as a work that was independently created by the author and which displays at least a minimal degree of skill, judgment and labour in its overall selection or arrangement. This Court also suggested that "skill, judgment or labour" was intended to be used in the conjunctive sense. Tele-Direct was not intended to alter Anglo-Canadian case law with respect to the interpretation of originality. On the other hand, the American threshold for copyright protection, which Gibson J. mistakenly adopted, does contain requirements of both originality and creativity. United States court decisions must be scrutinized very carefully because of some fundamental differences in copyright concepts. The Trial Judge failed to conduct any substantive analysis of the American standard of originality. Therefore, by holding "imagination" or "creative spark" was essential to "originality" he inadvertently entangled the American standard with the Canadian touchstone of originality. There is no universal requirement of "creative spark" or "imagination" in Anglo-Canadian copyright law. Clearly, the crucial requirement for a finding of originality is that the work be more than a mere copy.

The next question was whether the Publishers' materials are, in fact, original works. As a preliminary matter, the Publishers submitted certificates of registration for some of their materials, including separate certificates for headnotes and edited judicial reasons, nearly all of which were obtained within the few months preceding the trial of this matter. That the certificates were obtained only in contemplation of litigation diminished their persuasiveness. Therefore, although the certificates may support a finding that copyright subsists in the Publishers' works (subsection 53(2)), they were not particularly compelling.

Subsection 3(1) states that "copyright" in relation to a work, means the sole right to produce or reproduce the work or a "substantial part thereof". Every work can be fragmented into its constituent parts. At some level of deconstruction, however, the material ceases to be a work and is, instead, a part of another work. Without this distinction, the phrase "a substantial part thereof" would be meaningless, since a plaintiff could always assert that reproduction was of an entire "work". One must decide whether the material in question is capable of existing outside of the context in which it is published, communicated, displayed, performed or otherwise disseminated. If a production is distinctive and reasonably able to stand alone, then it may be deemed a work in itself rather than a part of another work. However, if a production is dependent upon surrounding materials such that it is rendered meaningless or its utility largely disappears when taken apart from the context in which it is disseminated, then that component will instead be merely a part of a work.

(a) The reported judicial decisions, which include the headnotes, are capable of standing apart from the volumes or series in which they appear. Originality stemmed in part from the Publishers' selection and arrangement of the elements of each reported judicial decision. Unlike routine compilations of data, these reported decisions display some indicia of their authors' style or manner of expression. Judicial notice was taken of the fact that, in the past, headnotes appearing in Canadian series of law reports have been prepared by some of the greatest legal minds in our country. Such distinguished scholars would not likely have devoted their time and effort to mundane copying. The independently composed features are more than simply copies of the reasons for judgment. It is not relevant that the ideas expressed in these elements of the reported judicial decisions may not be original, as copyright law is concerned only with the originality of an expression, not ideas. The Publishers do not monopolize information in that they can preclude others from independently producing similar materials; they merely acquire the right to preclude others from copying their works. Copyright subsists in each of these reported decisions. (b) The headnotes are capable of standing apart from the judicial reasons that they accompany. They are original and qualified for independent copyright protection. Indeed, the headnotes are essential to establishing originality in the reported judicial decisions as a whole. (c) The case summary is equally meaningful with or without the published book in which it appears. Although the information contained therein was derived from the case that it summarized, that information could have been expressed in any number of ways. This condensation of judicial reasons required significant skill and judgment. It was sufficiently original to be protected under section 5. (d) The topical index appears as an appendix to a book, although it could have appeared independently. It was intended to enable the reader to decide whether it is necessary to consult the full reported judicial decision which may also be consulted elsewhere than in the book. The topical index is original. By selecting which cases to include, independently composing extremely brief summaries of the decisions, and arranging and cross-referencing the topics, the Publishers demonstrated that the topical index was an original work. (e) The monograph is a work independent from the book in which it appears. Although the book may be considered to be compilation or collective work, the right to copyright protection for contribution to the larger work is not diminished. The definition of "collective work" suggests that copyright may subsist in the "works of different authors" that are incorporated therein. The monograph is a distinctive work, and is original.

(2) Subsection 27(1) provides that it is infringement of copyright to do, without the owner's consent, anything that only the copyright owner has the right to do. Subsection 3(1) defines "copyright" in relation to a work as meaning the sole right to produce or reproduce the work or any substantial part thereof, including communication of a literary work to the public by telecommunication (paragraph 3(1)(f)) and to authorize such acts. "Secondary infringement" is described in subsection 27(2). It occurs if a person, who may or may not have personally done any of the things listed in subsection 3(1), deals in certain ways with an infringing copy that the person knew or should have known infringed copyright. (a) A photocopy constitutes a reproduction. To photocopy an entire work is to "reproduce the work". One who reproduces an entire work will, therefore be prima facie liable for copyright infringement. The specific reproductions at issue were of entire works. In some circumstances, a small number of very important pages may be substantial, whereas other times, a larger number of unimportant pages may be insubstantial. It is not possible to specify a percentage that delineates the substantial from the insubstantial. Such a determination can only be made in the context of a particular reproduction. (b) To be "to the public" a communication must be targeted at an aggregation of individuals, which is more than a single person but not necessarily the whole public at large. A series of sequential transmissions may infringe the right to communicate to the public, but the question of whether a group of recipients is sufficiently large to constitute the public can only be answered on a case-by-case basis, and there was insufficient evidence before the Court to make such a determination. The Publishers' works are not communicated by the Law Society if it must take steps to facilitate the communication before anyone can receive those works and it retains the practical ability to consider each request individually and either accept or decline it. (c) In order to "authorize" an act that only the copyright owner has the right to do, one must do more than merely provide the means with which to carry out the protected act. Although a person can initially presume that the protected act is carried out in accordance with the law, where the evidence suggests otherwise, such an assumption is unreasonable. The Law Society had sufficient reason to suspect that not all patrons were using the free-standing photocopiers for legitimate purposes. It implicitly authorized such acts by providing both readily available photocopiers and a vast collection of the Publishers' works together in an environment that it controls. Rather than attempting to exercise such control to prevent copyright infringement, the Law Society merely posted notices indicating that it was not responsible, thereby implicitly sanctioning, approving and countenancing its patrons' reproductions. Therefore, the Law Society infringed the Publishers' right to authorize reproductions of their works.

The Trial Judge held that the Law Society did not sell, but did distribute copies of the Publishers' works. The Law Society argued that it could not be held liable for secondary infringement because it had a reasonable belief that copies made through its custom photocopying service would not infringe copyright. This argument raised two concerns: whether the fair dealing provisions apply, so that copies made through the Law Society's custom photocopying service would not infringe the Publishers' copyrights and there could be no secondary infringement; and whether a reasonable, but mistaken belief that the copies do not infringe copyright is sufficient to deny liability for secondary infringement. There was insufficient evidence to make a definitive conclusion about whether the fair dealing exemptions applied to any particular allegation of infringement. Thus, it was impossible to properly assess the Law Society's liability for secondary infringement. The analysis of the sale issue undertaken by Rothstein J.A. and the Trial Judge could not be agreed with. Profit is not a necessary component of a sale. Nevertheless, it was not clear that the Law Society was "selling" copies of the Publishers' works. In addition, the Act suggests that secondary infringement is not a strict liability provision. Since fault is necessary, a finding of infringement would typically require that a belief be honest and reasonable. This would lessen any concern that a secondary infringer could avoid liability by simply relying upon his or her own subjective belief.

(3) Section 29 provides that fair dealing for the purpose of research or private study does not infringe copyright. The Trial Judge erred in holding that exceptions to infringement should be "strictly construed". Courts should employ the usual modern rules of purposive construction in the context. (a) The first task was to define the scope of each allowable purpose. The categories of allowable purpose under the Act are closed. Qualification of "study" but not "research" indicates Parliament intended to permit all fair research, whether in a private setting or not. Therefore, research for a commercial purpose, including legal research carried out for profit by entities such as law firms, is not automatically excluded from this exemption. Non-private study is not an allowable purpose. The Library copies works to assist users of the library in conducting research. It adopted that purpose as its own. Notwithstanding that the Law Society did not personally undertake research or private study, it shares the purposes of individual patrons of the Great Library. (b) Recent amendments to the Act, expressly exempting libraries, archives and museums from infringement where they do anything on behalf of a person that the person may do personally, are consistent with the conclusion that, in considering the fair dealing exemption in the context of copies made by a library, archive or museum, the relevant purpose is that of the patron. Although the library exemptions came into force after the original hearings herein, they were considered in order to give guidance for the future. The Great Library is within the definition of a "library, archive or museum". Therefore, if a patron could make a copy of the Publishers' works for himself as fair dealing for an allowable purpose, the Law Society does not infringe copyright if it makes the copy on behalf of the requester. (c) If the purpose is allowable, the fairness of the dealing may be investigated. Fairness depends upon the context and facts of each particular case. There are a number of identifiable factors that might influence an assessment of fairness, none of which is conclusive or binding. They are: the purpose of the dealing, the nature of the dealing, the amount of the dealing, alternatives to the dealing, the nature of the work in question, and the effect of the dealing on that work. (d) The Law Society seeks a declaration that fulfilling requests in accordance with its "Access to the Law" policy constitutes fair dealing. It is impossible to generalize with respect to the Law Society's dealings because of the variability of the purposes of the patrons of the Great Library, and because one cannot categorically characterize all of the patrons dealings as fair. Determining fairness is complex and fact-specific. The Law Society must establish, on a balance of probabilities, its vicarious reliance upon a patron's fair dealing exemption each time an infringement is alleged. Therefore, good faith reliance on the Law Society's "Access to the Law" policy is insufficient to absolve the Law Society of all potential liability. If the Law Society strictly adheres to its policy, there will likely be only rare occasions where a request for an objectionable purpose would be filled. (e) Maintaining free-standing photocopiers is prima facie infringement of the Publishers' right to authorize reproduction of their works. Subsection 30.3(1) exempts libraries from copyright infringement provided that the conditions in subsection 30.3(2) are met. Since there was no evidence that the requirements listed in subsection 30.3(2) were met, the Law Society could not rely on this exemption.

Alternatively, the Law Society argued that it should not be held liable based on various public policy, equitable and constitutional defences, eg. rule of law, equality, access to justice. The public interest in the due administration of justice, the maintenance of the rule of law and the enhancement of basic constitutional values through relatively equal, unrestricted access to the law would not be significantly impaired through recognition and enforcement of any copyright that the plaintiffs might have in the works in issue. The Law Society might fulfill its mandate of providing access to justice by photocopying only the reasons for judgment, which might constitute only an insubstantial part of some reported judicial decisions. Moreover, the values advocated by the Law Society were considered in balancing the Publishers' rights with the public interest. The Publishers' rights must also be fairly recognized in order to guarantee incentives to continue to provide original legal publications, in furtherance of the values the Law Society describes. Further explicit consideration of these issues was not warranted, since constitutional conclusions should not be made in a factual vacuum.

The Law Society argued that it had the exclusive right to publish judicial decisions of the Ontario courts by virtue of the delegation of the Crown prerogative. The Law Society had, however, failed to prove, on a balance of probabilities, the existence or ownership of copyright in the underlying decisions, or the right to exclude others from publishing these reported judicial decisions.

(4) This was not an appropriate case to grant a permanent injunction. Due to the variability of the purposes and fairness the Law Society's dealing on behalf of patrons of the Great Library, it could not be universally determined whether or not the fair dealing exemptions will apply to the Law Society in the future. The Publishers were entitled to a declaration that copyright subsists in their materials, and that the Law Society had infringed copyright in the works that were reproduced. The Law Society was not entitled to a declaration that it had not infringed the Publishers' copyright in the works in issue. It was not possible to conclude on the basis of the evidence that the current practices of the Law Society do not or will not infringe copyright. That fair dealing might apply in an overwhelming number of cases does not establish that every patron's dealing is fair.

Per Rothstein J.A: (1) For the purposes of this case, it could be said that the determination of whether a work is original will be guided by the following principles: (1) the focus is on expression and not ideas or facts; (2) the work must originate from the author and not be copied; (3) some intellectual effort is required, but the necessary degree of intellectual effort will vary with the circumstances.

The headnotes copy the ideas of the judicial reasons, but not the form. Their preparation involves extensive skill, judgment and labour, which was sufficient to establish originality. The case summary, which has the same attributes as the headnotes, is also original. The Trial Judge found extensive skill, judgment and labour in relation to the reported judicial decisions. Therefore, they necessarily evidenced sufficient intellectual effort to be original. Accordingly, the Publishers should be entitled to copyright in the headnotes, case summary and reported judicial decisions. The Publishers could not acquire an independent copyright in the edited judicial reasons alone. Granting a copyright in the reported judicial decisions as a whole will not prejudice the public policy objective of ensuring free public access to judicial reasons.

(2) A photocopy is a reproduction. Since the Law Society reproduced in their entirety the reported judicial decisions, the headnotes, the case summary and the monograph, it prima facie infringed the Publishers' exclusive right to reproduce those works. The topical index could not be characterized as a work, since there was some doubt as to whether it was complete and usable on its own. Although the topical index forms only a comparatively small quantitative portion of the book, it is so qualitatively integral to that work that copying it in its entirety constitutes reproduction of a substantial part of the [1997] G.S.T.C. book, which was original. Consequently, the Law Society prima facie infringed the Publisher's exclusive right to reproduce a substantial part of that book.

The words "to the public" must limit the otherwise unlimited scope of paragraph 3(1)(f). The only conclusion was that "to the public" limits the type of recipient of a communication, and possibly has a bearing on the number of recipients. Paragraph 3(1)(f) was enacted by the Canada-United States Free Trade Agreement Implementation Act, subsection 62(1) to implement a specific provision of the Free Trade Agreement. They should be interpreted consistently, thus suggesting that "public" in paragraph 3(1)(f) means more than a single recipient of a telecommunication. The Law Society's communications of the case summary and the monograph to single patrons were not captured by paragraph 3(1)(f). The Law Society did not infringe the Publishers' exclusive right under paragraph 3(1)(f) to communicate their works to the public by telecommunication.

It was inferred that patrons of the free-standing photocopiers had similar interests to patrons of the custom photocopy service and therefore that they also access the Publisher's materials. The action of placing photocopiers in an environment full of copyrighted works is bound to result in infringing reproduction of the Publishers' materials. The failure to provide a more explicit warning against reproducing copyrighted materials and the failure to take any other steps demonstrated indifference, in light of which, the Law Society impliedly authorized the infringing reproduction activities of its patrons. Therefore, the Law Society prima facie infringed the Publishers' exclusive right under subsection 3(1) to authorize any productions or reproductions of their works. This does not mean that mere control over the means to infringe will automatically constitute authorization of such infringement. It is necessary in each case to also establish express or implied acts of omission or commission that amount to grants or purported grants of the right to infringe.

The Trial Judge erred in his analysis of secondary infringement, particularly regarding whether the Law Society "sold" infringing copies. Three elements must be established to prove secondary infringement: (1) the work that is dealt with must be the product of primary infringement i.e. it must be an infringing copy in the first place; (2) the alleged secondary infringer must know that the copy in question is the product of primary infringement; and (3) the secondary dealing must be established, i.e. sale or distribution. The first element was established in that the copies that may be the subject of secondary infringement have already been found to be the product of primary infringement. The Law Society was the party responsible for primary infringement. For purposes of secondary infringement, where the primary and alleged secondary infringer are the same person, that person will have had knowledge of the facts giving rise to the primary infringement because it was that person who was engaged in the primary infringement. Because the relevant knowledge under secondary infringement is knowledge of the facts, the Law Society's good faith belief in how the law would be applied to the facts of this case is irrelevant. In any event, the Law Society must have known that the availability of the fair dealing exemption would be contentious. The lack of knowledge defence did not avail to the benefit of the Law Society, and the Law Society had the requisite knowledge for secondary infringement. The existence of a "sale" is not predicated on the earning of a profit. In general, the key elements of a sale are the transfer of property and the payment of some form of consideration. These elements are present in the transactions between the Law Society and its patrons. The primary object of the transaction was the transfer of the property in the reproduced work by the Library to the patron. The actions of the custom photocopy operation amount to engaging in the "sale" of infringing copies. The Publishers were prejudicially affected by the distribution. Prima facie secondary infringement was established.

(3) The absence of a factual underpinning made application of legal principles relating to fair dealing impossible. However, there was sufficient evidence upon which to decide that the library exemption applied to the Great Library.

(4) A declaration that copyright subsists in the reported judicial decisions, headnotes, case summary, monograph, and the [1997] G.S.T.C. book and that the Law Society had infringed the Publishers' copyright therein should be granted. An injunction should not be granted. The cross-appeal should be dismissed.

statutes and regulations judicially

considered

Berne Convention for the Protection of Literary and Artistic Works (Paris Act of July 2, 1971 as amended September 28, 1979) (with Annex), [1998] Can. T.S. No. 18, Art. 2.

Canada-United States Free Trade Agreement Implementation Act, S.C. 1988, c. 65.

Canadian Charter of Rights and Freedoms, being Part I of the Constitution Act, 1982, Schedule B, Canada Act 1982, 1982, c. 11 (U.K.) [R.S.C., 1985, Appendix II, No. 44].

Copyright Act 1968, No. 63, 1968 (Aust.).

Copyrights Act, 17 U.S.C. § 107 (1994).

Copyright Act, R.S.C., 1985, c. C-42, s. 2 "compilation" (as enacted by S.C. 1993, c. 44, s. 53), "collective work", "every original, literary, dramatic, musical and artistic work" (as am. idem), "library, archive or museum" (as enacted by S.C. 1997, c. 24, s. 1), "musical work" (as am. by S.C. 1993, c. 44, s. 53), "telecommunication" (as enacted by S.C. 1988, c. 65, s. 61), 2.1(2) (as enacted by S.C. 1993, c. 44, s. 54), 2.4(1)(a) (as enacted by S.C. 1997, c. 24, s. 2), 3(1) (as am. by S.C. 1988, c. 65, s. 62; 1993, c. 44, s. 55; 1997, c. 24, s. 3), 5 (as am. by S.C. 1994, c. 47, s. 57), 27(1) (as am. by S.C. 1997, c. 24, s. 15), (2) (as am. idem), (4), 29 (as am. idem, s. 18), 29.1 (as enacted idem), 29.2 (as enacted idem), 29.3 (as enacted idem), 30.2 (as enacted idem), 30.3 (as enacted idem), 53(2) (as am. idem, s. 30).

Free Trade Agreement between Canada and the United States of America, S.C. 1988, c. 55, Schedule--Part A, Art. 2006.

North American Free Trade Agreement Between the Government of Canada, the Government of the United Mexican States and the Government of the United States of America, December 17, 1992, [1994] Can. T.S. No. 2, Art. 1705.

North American Free Trade Agreement Implementation Act, S.C. 1993, c. 44.

Reproduction of Federal Law Order, SI/97-5.

U.S. Constitution, Art. 1, § 8, cl. 8.

cases judicially considered

applied:

Sayre and Others v. Moore (1785), 102 E.R. 139; Bishop v. Stevens, [1990] 2 S.C.R. 467; (1990), 72 D.L.R. (4th) 97; 31 C.P.R. (3d) 394; 111 N.R. 376; U & R Tax Services Ltd. v. H & R Block Canada Inc. (1995), 62 C.P.R. (3d) 257; 97 F.T.R. 259 (F.C.T.D.); Hager v. ECW Press Ltd., [1999] 2 F.C. 287; (1998), 85 C.P.R. (3d) 289 (T.D.); Édutile Inc. v. Automobile Protection Assn., [2000] 4 F.C. 195; (2000), 188 D.L.R. (4th) 132; 6 C.P.R. (4th) 211; 255 N.R. 47 (C.A.); revg (1997), 81 C.P.R. (3d) 338; 143 F.T.R. 210 (F.C.T.D.); leave to appeal to S.C.C. refused, [2001] 1 S.C.R. vi; Hubbard v. Vosper, [1972] 2 Q.B. 84 (C.A.); Matthewson v. Stockdale (1806), 33 E.R. 103 (Ch. D.); National Corn Growers Assn. v. Canada (Import Tribunal), [1990] 2 S.C.R. 1324; (1990), 74 D.L.R. (4th) 449; 45 Admin. L.R. 161; 114 N.R. 81.

distinguished:

Tele-Direct (Publications) Inc. v. American Business Information, Inc., [1998] 2 F.C. 22; (1997), 154 D.L.R. (4th) 328; 37 B.L.R. (2d) 101; 76 C.P.R. (3d) 296; 221 N.R. 113 (C.A.); Tele-Direct (Publications) Inc. v. American Business Information Inc. (1996), 27 B.L.R. (2d) 1; 113 F.T.R. 123 (F.C.T.D.); Vigneux et al. v. Canadian Performing Right Society Ltd., [1945] 2 D.L.R. 1; (1945), 4 C.P.R. 65 (P.C.); revg [1943] S.C.R. 348; [1943] 3 D.L.R. 369; Muzak Corp. v. Composers, Authors, etc., [1953] 2 S.C.R. 182; (1953), 19 C.P.R. 1; Falcon v. Famous Players Film Co., [1926] 2 K.B. 474 (C.A.); De Tervagne v. Beloeil (Town), [1993] 3 F.C. 227; (1993), 50 C.P.R. (3d) 419; 65 F.T.R. 247 (T.D.); CBS Songs Ltd v Amstrad Consumer Electronics plc, [1988] 2 All ER 484 (H.L.); Sillitoe and Others v. McGraw-Hill Book Co. (U.K.) Ltd., [1983] F.S.R. 545 (Ch. D.); De Garis v. Neville Jeffress Pidler Pty. Ltd. (1990), 37 F.C.R. 99 (F.C. Aust.); Longman Group Ltd. v. Carrington Technical Institute Board of Governors, [1991] 2 NZLR 574 (H.C.); SOCAN Statement of Royalties, Public Performance of Musical Works 1996, 1997, 1998 (Tariff 22, Internet) (Re) (1999), 1 C.P.R. (4th) 417 (Copyright Board).

considered:

Apple Computer, Inc. v. Mackintosh Computers Ltd., [1987] 1 F.C. 173; (1986), 28 D.L.R. (4th) 178; 8 C.I.P.R. 153; 10 C.P.R. (3d) 1; 3 F.T.R. 118 (T.D.); affd [1988] 1 F.C. 673; (1987), 44 D.L.R. (4th) 74; 16 C.I.P.R. 15; 18 C.P.R. (3d) 129; 81 N.R. 3 (C.A.); affd Apple Computer, Inc. v. Mackintosh Computers Ltd.; Apple Computer, Inc. v. 115778 Canada Inc., [1990] 2 S.C.R. 209; (1990), 71 D.L.R. (4th) 95; 30 C.P.R. (3d) 257; 110 N.R. 66; Matthew Bender & Co., Inc. v. West Pub. Co., 158 F.3d 674 (2nd Cir. 1998); University of London Press v. University Tutorial Press, [1916] 2 Ch. 601; Interlego A.G. v. Tyco Industries Inc., [1989] A.C. 217 (P.C.); Ladbroke (Football), Ltd. v. William Hill (Football)Ltd., [1964] 1 All E.R. 465 (H.L.); Slumber-Magic Adjustable Bed Co. v. Sleep-King Adjustable Bed Co., [1985] 1 W.W.R. 112; (1984), 3 C.P.R. (3d) 81 (B.C.S.C.); Harper & Row, Publishers, Inc. v. Nation Enterprises, 471 U.S. 539 (1985); Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340 (1991); Walter v. Lane, [1900] A.C. 539 (H.L.); Moorhouse v. University of New South Wales, [1976] R.P.C. 151 (Aust. H.C.); Compagnie Générale des Établissements Michelin - Michelin & Cie v. National Automobile, Aerospace, Transportation and General Workers Union of Canada (CAW-Canada), [1997] 2 F.C. 306; (1996), 71 C.P.R. (3d) 348; 124 F.T.R. 192 (T.D.); Allen v. Toronto Star Newspapers Ltd. (1997), 36 O.R. (3d) 201; 152 D.L.R. (4th) 518; 78 C.P.R. (3d) 115; 105 O.A.C. 191 (Gen. Div.); CBS Inc. v. Ames Records & Tapes Ltd., [1981] 2 W.L.R. 973 (Ch. D.); de Montigny v. Cousineau, [1950] S.C.R. 297; (1950), 12 C.P.R. 45; Clark, Irwin & Co. Ltd. v. C. Cole & Co. Ltd. (1960), 33 C.P.R. 173 (Ont. H.C.); Telstra Corporation Ltd. v. Australasian Performing Right Association Ltd. (1997), 146 ALR 649 (Aust. H.C.).

referred to:

Compo Company Ltd. v. Blue Crest Music Inc. et al., [1980] 1 S.C.R. 357; (1979), 105 D.L.R. (3d) 249; 45 C.P.R. (2d) 1; 29 N.R. 296; Théberge v. Galerie d'Art du Petit Champlain inc. (2002), 210 D.L.R. (4th) 385; 23 B.L.R. (3d) 1; 17 C.P.R. (4th) 161; 285 N.R. 267 (S.C.C.); Cramp (G.A.) & Sons, Ltd. v. Frank Smythson, Ltd., [1944] 2 All E.R. 92 (H.L.); Macmillan and Co., Limited v. Cooper (1923), 40 T.L.R. 186 (P.C.); Langlois v. Vincent (1874), 18 L.C. Jur. 160 (Que. S.C.); Canadian Admiral Corpn. Ltd. v. Rediffusion Inc., [1954] Ex. C.R. 382; (1954), 20 C.P.R. 75; Kilvington Bros. Ltd. v. Goldberg et al. (1957), 8 D.L.R. (2d) 768; 28 C.P.R. 13; 16 Fox Pat. C. 164 (Ont. H.C.); Horn Abbot Ltd. v. W.B. Coulter Sales Ltd. (1984), 1 C.I.P.R. 97; 77 C.P.R. (2d) 145 (F.C.T.D.); Lifestyle Homes Ltd. v. Randall Homes Ltd. (1991), 70 Man. R. (2d) 124; 44 C.L.R. 113; 34 C.P.R. (3d) 505 (C.A.); Trade-Mark Cases, 100 U.S. 82 (1879); Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53 (1884); Bleistein v. Donaldson Lithographing Company, 188 U.S. 239 (1903); Circle Film Enterprises Inc. v. Canadian Broadcasting Corporation, [1959] S.C.R. 602; (1959), 20 D.L.R. (2d) 211; 31 C.P.R. 57; Prism Hospital Software v. Hospital Medical Records Institute, [1994] 10 W.W.R. 305; (1994), 97 B.C.L.R. (2d) 201; 57 C.P.R. (3d) 129 (B.C.S.C.); Canadian Cable Television Assn. v. Canada (Copyright Board), [1993] 2 F.C. 138; (1993), 46 C.P.R. (3d) 359; 151 N.R. 59 (C.A.); affg (1991), 34 C.P.R. (3d) 521 (F.C.T.D.); CTV Television Network Ltd. v. Canada (Copyright Board), [1993] 2 F.C. 115; (1993), 99 D.L.R. (4th) 216; 46 C.P.R. (3d) 343; 149 N.R. 363 (C.A.); Television New Zealand Ltd. v. Newsmonitor Services Ltd., [1994] 2 NZLR 91 (H.C.); Pro Sieben Media AG v. Carlton UK Television Ltd., [1999] 1 W.L.R. 605 (C.A.); Hyde Park Residence Ltd. v. Yelland, [2000] 3 W.L.R. 215 (C.A.); Campbell v. Acuff-Rose Music, 114 S. Ct. 1164 (1994); Benner v. Canada (Secretary of State), [1997] 1 S.C.R. 358; (1997), 143 D.L.R. (4th) 577; 42 C.R.R. (2d) 1; 37 Imm. L.R. (2d) 195; 208 N.R. 81; Hy and Zel's Inc. v. Ontario (Attorney General); Paul Magder Furs Ltd. v. Ontario (Attorney General), [1993] 3 S.C.R. 675; (1993), 107 D.L.R. (4th) 634; 18 C.R.R. (2d) 99; 160 N.R. 161; 67 O.A.C. 81; MacKay v. Manitoba, [1989] 2 S.C.R. 357; [1989] 6 W.W.R. 351; (1989), 61 Man. R. (2d) 270; Schachter v. Canada, [1992] 2 S.C.R. 679; (1992), 93 D.L.R. (4th) 1; 92 CLLC 14,036; 10 C.R.R. (2d) 1; 139 N.R. 1; Redwood Music Ltd. v. Chappell & Co. Ltd., [1982] R.P.C. 109 (Q.B.); Deeks v. Wells, [1931] O.R. 818; [1931] 4 D.L.R. 533 (App. Div.); affd [1933] 1 D.L.R. 353 (P.C.); Zamacoïs v. Douville et al., [1944] Ex. C.R. 208 (Fr.); (1943), 3 Fox Pat. C. 44 (Eng.); Kelly v. Morris (1866), 1 L.R. Eq. 697; Morris v. Ashbee (1868), 7 L.R. Eq. 34; Morris v. Wright (1870), 5 L.R. Ch. App. 279; Telstra Corporation Ltd v Desktop Marketing Systems Pty Ltd (2001), 181 ALR 134 (Aust. F.C.); Warwick Film Productions Ltd. v. Eisinger, [1969] 1 Ch. 508; Rank Film Production Ltd. v. Dodds (1983), 2 I.P.R. 113 (N.S.W.S.C.); RCA Corporation v. John Fairfax & Sons Ltd., [1982] R.P.C. 91 (N.S.W.S.C.); Van Dusen v. Kritz, [1936] 2 K.B. 176.

authors cited

Black's Law Dictionary, 6th ed. St. Paul, Minn.: West Publishing Co., 1990, "public".

Black's Law Dictionary, 7th ed. St. Paul, Minn.: West Group, 1999, "sale".

Boyarski, J. R. "The Heist of Feist: Protections for Collections of Information and the Possible Federalization of `Hot News'" (1999), 21 Cardozo L. Rev. 871.

Canada. Minutes of Proceedings and Evidence of the Legislative Committee on Bill C-115, An Act to implement the North American Free Trade Agreement (5 November 1993).

Fridman, G. H. L. Sale of Goods in Canada, 4th ed. Toronto: Carswell, 1995.

Ginsburg, J. C. "No `Sweat'? Copyright and Other Protection of Works of Information After Feist v. Rural Telephone" (1999), 92 Colum. L.R. 338.

Gorman, R. A. "The Feist Case: Reflections on a Pathbreaking Copyright Decision" (1992), 18 Rutgers Computer & Tech. L.J. 731.

House of Commons Debates (31 March 1993).

House of Commons Debates (27 May 1993).

Laddie, Sir Hugh et al. The Modern Law of Copyright and Designs, 3rd ed. London: Butterworths, 2000.

Litman, J. "After Feist" (1992), 17 U. Dayton L. Rev. 607.

McDonald, J. P. "The Search for Certainty" (1992), 17 U. Dayton L. Rev. 331.

McKeown, John S. Fox Canadian Law of Copyright and Industrial Designs, 3rd ed. Scarborough, Ont.: Carswell, 2000.

Shorter Oxford English Dictionary on Historical Principles, 3rd ed. Oxford: Clarendon Press, 1988, "part".

Siebrasse, N. "Copyright in Facts and Information: Feist Publications is Not, and Should Not Be, the Law in Canada" (1994), 11 C.I.P.R. 191.

Sullivan, Ruth. Driedger on the Construction of Statutes, 3rd ed. Toronto: Butterworths, 1994.

Torno, Barry. Fair Dealing: The Need for Conceptual Clarity on the Road to Copyright Revision. Ottawa: Consumer and Corporate Affairs Canada, 1981.

Vaver, D. Copyright Law. Toronto: Irwin Law, 2000.

VerSteeg, R. "Sparks in the Tinderbox: Feist, `Creativity' and the Legislative History of the 1976 Copyright Act" (1995), 56 U. Pitt. L.R. 549.

World Intellectual Property Organization. Guide to the Berne Convention for the Protection of Literary and Artistic Works (Paris Act, 1971). Geneva: W.I.P.O., 1978.

Yen, A. C. "The Legacy of Feist: Consequences of the Weak Connection Between Copyright and the Economics of Public Goods" (1991), 52 Ohio St. L.J. 1343.

York, E. R. "Warren Publishing Inc. v. Microdos Data Corp.: Continuing the Stable Uncertainty in Factual Compilations" (1999), 74 Notre Dame L. Rev. 565.

APPEAL from the trial judgment holding that copyright did not subsist in the reported judicial decisions, headnotes, case summary and topical index, and a cross-appeal from the rejection of public policy and equitable defences (CCH Canadian Ltd. v. Law Society of Upper Canada, [2000] 2 F.C. 451; (1999), 179 D.L.R. (4th) 609; 2 C.P.R. (4th) 129 (T.D.)). Appeal allowed in part and cross-appeal dismissed.

appearances:

Roger T. Hughes, Q.C., Elizabeth Valentina, Glen A. Bloom and David S. Morritt for appellants.

R. Scott Jolliffe, Andrew Kelly Gill, Kevin J. Sartorio and Navin Katyal for respondent.

solicitors of record:

Sim, Hughes, Ashton & McKay LLP, Toronto, for appellants.

Gowling Lafleur Henderson LLP, Toronto, for respondent.

The following are the reasons for judgment rendered in English by

Linden J.A.:

I. INTRODUCTION

[1]CCH Canadian Ltd., Thomson Canada Ltd. (which carries on business as Carswell Thomson Professional Publishing) and Canada Law Book Inc. (hereinafter the Publishers) produce legal materials. The Law Society of Upper Canada (hereinafter the Law Society) is a statutory, non-profit corporation that governs the legal profession in the province of Ontario. As part of its mandate to serve and assist its members and other researchers, the Law Society operates the Great Library at Osgoode Hall in Toronto. The Great Library has one of the largest collections of legal materials in Canada.

[2]Upon request from lawyers, articling students, the judiciary or other authorized researchers the Law Society will photocopy legal materials from the Great Library's collection. Library users can pick up photocopies or have them forwarded by mail or facsimile. The photocopying service is intended to be carried out in accordance with the Law Society's "Access to the Law Policy", which states:

Access to the Law Policy*

The Law Society of Upper Canada, with the assistance of the resources of the Great Library, supports the administration of justice and the rule of law in the Province of Ontario. The Great Library's comprehensive catalogue of primary and secondary legal sources, in print and electronic media, is open to lawyers, articling students, the judiciary and other authorized researchers. Single copies of library materials, required for the purposes of research, review, private study and criticism, as well as use in court, tribunal and government proceedings, may be provided to users of the Great Library.

This service supports users of the Great Library who require access to legal materials while respecting the copyright of the publishers of such materials, in keeping with the fair dealing provisions in Section 27 of the Canadian Copyright Act.

Guidelines to Access

1.     The Access to the Law service provides single copies for specific purposes, identified in advance to library staff.

2.     The specific purposes are research, review, private study and criticism, as well as use in court, tribunal and government proceedings. Any doubt concerning the legitimacy of the request for these purposes will be referred to the Reference Librarian.

3.     The individual must identify him/herself and the purpose at the time of making the request. A request form will be completed by library staff, based on information provided by the requesting party.

*This Policy Statement reflects the policy followed by the Great Library for the past many years and is not regarded as being a change in the Law Society's approach to this matter.

4.     As to the amount of copying, discretion must be used. No copies will be made for any purpose other than that specifically set out on the request form. Ordinarily, requests for a copy of one case, one article or one statutory reference will be satisfied as a matter of routine. Requests for substantial copying from secondary sources (e.g. in excess of 5% of the volume or more than two citations from one volume) will be referred to the Reference Librarian and may ultimately be refused.

5.     This service is provided on a not for profit basis. The fee charged for this service is intended to cover the costs of the Law Society.

Jan. 28, 1996

[3]When the policy was put into writing in 1996 it was not intended to depart from the existing policy, although it did alter monitoring and compliance practices somewhat. The Law Society asserts that its guidelines are now strictly enforced.

[4]The Law Society also provides free-standing photocopiers in the Great Library, which are operated by patrons using coins or pre-paid cards. The Law Society does not monitor the use of these photocopiers, however, the following notice appears above each machine:

The copyright law of Canada governs the making of photocopies or other reproductions of copyright material. Certain copying may be an infringement of the copyright law. This library is not responsible for infringing copies made by users of these machines.

[5]The Publishers were aware of the Great Library's custom photocopying service but did not object to it until 1993 when, after delivering a cease-and-desist letter, they commenced this litigation. In essence, the Publishers assert that copyright subsists in their material, and that the Law Society infringes those copyrights through its custom photocopying service and by making free-standing copiers available in the Great Library. Notably however, the Publishers allow reproductions by certain persons for limited purposes. For example, they expressly grant a licence to lawyers to make copies to submit in judicial proceedings, to judges to use in judicial proceedings and to anyone to use in parliamentary proceedings. The Law Society denies all liability.

[6]Where it is necessary to do so, I will refer to the facts of this case in more detail below. In addition, the Trial Judge's thorough reasons include a statement of facts as agreed by the parties at trial (see CCH Canadian Ltd. v. Law Society of Upper Canada, [2000] 2 F.C. 451 (abridged version).

II. THE ISSUES

A. Subsistence of Copyright

[7]At trial, the Publishers submitted 11 specific items in which they assert copyright subsists. This case deals with copyright subsistence in only those specific materials. However, I recognize that this case will guide the results in similar cases, and I have approached the issues with that in mind.

[8]First, the Publishers assert copyright in following three reported judicial decisions:

a. Meyer v. Bright (1992), as published in 94 D.L.R. (4th) 648 by Canada Law Book,

b. R. v. CIP Inc. (1992), as published in 71 C.C.C. (3d) 129 by Canada Law Book and

c. Hewes v. Etobicoke (1993), as published in CLLC ¶ 14,042 by CCH Canadian Ltd.

[9]Each reported judicial decision contains reasons for judgment, which are written by a judge or judges but edited by the Publishers to conform with their preferred style. Each of these reported judicial decisions also includes material composed by the Publishers, including a summary of the facts, reasons and conclusions contained in the judicial reasons, point-form "catchlines" that highlight topics and issues considered in the case, a "statement of case" that very briefly states the issue or issues addressed by the court and an indexing case title that succinctly states the parties involved. In addition, the reported judicial decisions contain information about the judicial reasons, such as the date of the judgment, the court and panel that decided the case; counsel for each party; lists of cases, statutes and rules and regulations referred to; parallel citations; and other notes regarding the decision or the status of any appeals. Several reported judicial decisions are typically compiled into published volumes, which themselves are usually parts of a series of reported judicial decisions. However, neither volumes nor series of reported judicial decisions are at issue in this case. The Trial Judge found that copyright does not subsist in any of these reported judicial decisions, and the Publishers appeal from that finding.

[10]Second, the Publishers assert copyright in three headnotes, which accompany but are submitted as independent of the reported judicial decisions of:

a. Meyer v. Bright (1992), as published in 94 D.L.R. (4th) 648 by Canada Law Book,

b. R. v. CIP Inc. (1992), as published in 71 C.C.C. (3d) 129 by Canada Law Book and

c. Hewes v. Etobicoke (1993), as published in CLLC ¶ 14,042 by CCH Canadian Ltd.

[11]It is difficult for me to ascertain precisely what the Publishers mean when they use the term "headnote". At times, they use the term to connote only a summary of the facts, reasons and conclusions from a case. Generally, however, the Publishers indicate that a headnote also includes "catchlines" and a "statement of case". The latter use suggests that a headnote is everything in a reported judicial decision other than the edited judicial reasons, such as the summary, catchlines, statement of case, indexing title and other information about the reasons for judgment. That is how I have considered these headnotes. According to the Trial Judge, copyright does not subsist in any of the headnotes. The Publishers appeal from that conclusion. The Law Society does not submit that copyright can never subsist in any headnote, but asserts that copyright does not subsist in these particular headnotes.

[12]Third, the Publishers assert copyright in the case summary of Confederation Life v. Shepherd (1992), as published in 37 A.C.W.S. (3d) 141 by Canada Law Book. The case summary is a concise, point-form summary of the facts, reasons and conclusions of the case upon which it is based. The Trial Judge found that no copyright subsists in the case summary, and the Publishers take issue with that finding.

[13]Fourth, the Publishers assert copyright in the consolidated topical index that appears in Canada GST Cases, [1997] G.S.T.C., as published by Carswell Thomson Professional Publishing. The topical index lists and cross-references topics with extremely brief summaries of the issues or conclusions in cases relevant to the goods and services tax (GST). The Trial Judge denied copyright protection for the topical index to [1997] G.S.T.C., and the Publishers appeal from that conclusion.

[14]The Publishers also assert copyright in the annotated statute, E. L. Greenspan and M. Rosenberg, Martin's Ontario Criminal Practice 1999 (Aurora: Canada Law Book, 1998), the textbook, B. Feldthusen, Economic Negligence: The Recovery of Pure Economic Loss, 2nd ed. (Toronto: Carswell, 1989), and the monograph by S. L. Kogon, "Dental Evidence", as it appears as chapter 13 in G. M. Chayko, E. D. Gulliver and D. V. Macdougall, Forensic Evidence in Canada (Aurora: Canada Law Book, 1991). The Trial Judge found that copyright does subsist in the annotated statute, textbook and monograph. These conclusions have not been appealed, however, the Law Society objects to the characterization of the monograph as a "work" in itself, separate from the book in which it appears.

[15]Thus, this Court must decide whether the Trial Judge erred in concluding that copyright does not subsist in the reported judicial decisions, the headnotes, the case summary and the topical index. If copyright does subsist in these works, there is no dispute with the Trial Judge's finding that such copyright would be owned by the Publisher of each respective work.

B. Infringement of Copyright

[16]The Publishers allege that, through its custom photocopying service, the Law Society infringes their exclusive right to reproduce and communicate their works to the public by telecommunication. The Publishers also allege that by providing free-standing photocopiers the Law Society infringes their exclusive right to authorize others to reproduce their works. Finally, the Publishers allege that the Law Society is liable for selling, distributing and possessing infringing copies of their works.

[17]The Trial Judge found that the Law Society did infringe the Publishers' copyrights in the works in which copyright subsists by reproducing those works. The Law Society's primary objection in this regard relates to the characterization of the "works" in question, which necessarily affects the issue of substantiality. This Court must, therefore, define the Publishers' works, so as to decide whether any reproductions were substantial. The Trial Judge also held that the Law Society did not communicate works to the public by telecommunication via fax transmissions. The Publishers appeal from this conclusion. The Trial Judge held that the Law Society did not sell, but did knowingly distribute and possess infringing copies of the Publishers' works. The Publishers object to the Trial Judge's finding that the Law Society did not sell any works. The Law Society, on the other hand, argues the Trial Judge failed to properly consider the knowledge requirement and asserts that a reasonable, good faith belief that the copies it distributed and possessed did not infringe copyright is sufficient to avoid liability for those activities. Alternatively, the Law Society objects to the Trial Judge's finding that it distributed works so as to affect prejudicially the owners of the copyright. Neither party has taken serious issue with the conclusion that the Law Society did possess copies of the Publishers' works.

C. Exemptions From Infringement

[18]The Law Society submits that their activities fall within the fair dealing exemptions, and therefore, it does not infringe any copyrights that may subsist in the Publishers' works. The Publishers disagree. The Trial Judge did not deal with this issue substantively, since he concluded that the Law Society's dealing was not personally for an allowable purpose. The Law Society appeals from this finding, and this Court must, therefore, consider the issue.

[19]The Law Society also submits that various public policy and equitable defences should prevent the Publishers' action from succeeding. The Trial Judge rejected all of the Law Society's arguments in this regard, and the Law Society appeals from those conclusions.

D. Remedies

[20]The Publishers and the Law Society seek a number of remedies. The Publishers seek a permanent injunction as well as general declarations that are intended to establish that copyright subsists in their materials, and that the Law Society infringes those copyrights by offering its custom photocopying service and self-service photocopiers in accordance with its current practices. The Society seeks a number of declarations that are intended to establish the contrary.

[21]The Trial Judge made a limited declaration that copyright subsists in some of the Publishers' works, but did not make any generalized declaration, nor did he grant a permanent injunction. The Trial Judge also did not make any declaration as requested by the Law Society. Both the Publishers' and the Law Society have objected to the relief granted by the Trial Judge, and this Court must, therefore, resolve this issue.

III. ANALYSIS

[22]Copyright law is statutory law, based upon the Copyright Act, R.S.C., 1985, c. C-42, and its relevant amendments (the Act) (see Compo Company Ltd. v. Blue Crest Music Inc. et al., [1980] 1 S.C.R. 357, at pages 372-373 (Compo)). However, case law, both domestic and foreign, guides this Court's interpretation of the Act. This Court might be guided by British jurisprudence, since Canadian copyright law was historically based upon, and still closely resembles British law (see J. S. McKeown, Fox Canadian Law of Copyright and Industrial Designs, 3rd ed. (Scarborough: Carswell, 2000), at pages 38-39 (Fox). On the other hand, the Supreme Court of Canada has indicated that American jurisprudence must be carefully scrutinized, because there are important differences between Canadian and American copyright policy and legislation (Compo, supra, at page 367). Canadian courts must always be careful not to upset the balance of rights as it exists under the Canadian Act.

[23]Broadly speaking, the purposes of Canadian copyright law are to benefit authors by granting them a monopoly for a limited time, and to simultaneously encourage the disclosure of works for the benefit of society at large (see Apple Computer, Inc. v. Mackintosh Computers Ltd., [1987] 1 F.C. 173 (T.D.), at page 200 (abridged version), vard [1988] 1 F.C. 673 (C.A.), affd [1990] 2 S.C.R. 209 (Apple Computer); see also Théberge v. Galerie d'Art du Petit Champlain inc. (2002), 210 D.L.R. (4th) 385 (S.C.C.), at paragraph 30). Copyright law should recognize the value of disseminating works, in terms of advancing science and learning, enhancing commercial utility, stimulating entertainment and the arts and promoting other socially desirable ends. In order to realize these benefits, however, creators must be protected from the unauthorized exploitation of their works to guarantee sufficient incentives to produce new and original works. The person who sows must be allowed to reap what is sown, but the harvest must ensure that society is not denied some benefit from the crops. Perhaps Lord Mansfield best characterized the tension over two centuries ago when, in the case of Sayre and Others v. Moore (1785), 102 E.R. 139, he stated [at page 140]:

. . . we must take care to guard against two extremes equally prejudicial; the one, that men of ability, who have employed their time for the service of our community, may not be deprived of their just merits, and the reward of their ingenuity and labour; the other, that the world may not be deprived of improvements, nor the progress of the arts be retarded.

The challenge facing this Court, and copyright law generally, is to find a fair and appropriate equilibrium that achieves both goals.

A. Does Copyright Subsist in the Publishers' Works?

1. The Standard of Originality

[24]Section 5 [as am. by S.C. 1994, c. 47, s. 57] of the Act sets out the most important precondition for subsistence of copyright as follows:

5. (1) Subject to this Act, copyright shall subsist in Canada, for the term hereinafter mentioned, in every original literary, dramatic, musical and artistic work. . . . [Emphasis added.]

[25]The Trial Judge decided that the reported judicial decisions, headnotes, the case summary and the topical index were not "original". He stated (at paragraph 139, emphasis added, footnotes omitted):

While the evidence before the Court demonstrates, beyond a doubt, that the preparation of the reported judicial decisions, including the headnote, catchlines, parallel citations, running heads and other matter added by the publisher, in respect of the three decisions in question, involved extensive labour, skill and judgment, I am satisfied that the whole process, particularly those elements involving skill and judgment, lacked the "imagination" or "creative spark" that I determine to now be essential to a finding of originality. I am satisfied that editorially enhanced judicial decisions should be measured by a standard of intellect and creativity in determining whether they give rise to copyright, in the same way compilations of data might be said to be measured following the decision of the Federal Court of Appeal in Tele-Direct. Article 2 of the Berne Convention, 1971, I am satisfied, clearly reaches to the form of alterations of literary works represented by the case reports here at issue, but those case reports simply lack the "original expression" and fail to constitute the "intellectual creations" contemplated by that Article and, more particularly, Article 1705 of NAFTA as reproduced in the Tele-Direct decision. To revert, once again with some trepidation, to the words of Matthew Bender which I am satisfied are equally apt under Canadian law to the facts of this matter:

for West or any other editor of judicial opinions for legal research, faithfulness to the public-domain original is the dominant editorial value, so that creativity is the enemy of the true.

[26]The first issue now before this Court is whether "imagination or creative spark" is indeed "essential to a finding of originality", and whether the Publishers' materials should indeed be "measured by a standard of intellect and creativity in determining whether they give rise to copyright".

[27]In my view, the Trial Judge misinterpreted this Court's decision in Tele-Direct (Publications) Inc. v. American Business Information, Inc., [1998] 2 F.C. 22 (C.A.) (Tele-Direct), and other jurisprudence as shifting the standard of originality away from the traditional Anglo-Canadian approach. Neither Article 2 of the Berne Convention for the Protection of Literary and Artistic Works (Paris Act of, July 2, 1971 as amended September 28, 1979) (with Annex), [1998] Can. T.S. No. 18 (the Berne Convention), nor Article 1705 of the North American Free Trade Agreement Between the Government of Canada, the Government of the United Mexican States and the Government of the United States of America, December 17, 1992, [1994] Can T.S. No. 2 (NAFTA), require a more onerous standard for copyright protection than already contained in the Act. In addition, there are significant differences between Anglo-Canadian copyright law and the American standard of originality that was applied in Matthew Bender & Co., Inc. v. West Pub. Co., 158 F.3d 674 (2nd Cir. 1998). Whether or not the Publishers' works are "original" depends upon the meaning of that term in its statutory context, as explained by existing Anglo-Canadian jurisprudential principles.

[28]As Chief Justice McLachlin (as she now is) stated in Bishop v. Stevens, [1990] 2 S.C.R. 467, at page 477, the task is "[f]irst and foremost . . . a matter of statutory interpretation". The Act contains no express requirement of creative spark or imagination; the only prerequisite to protection (relevant to this discussion) is that a work be original. In fact, the Act, which has been the sole source of copyright protection in Canada since its inception in 1921 (see Fox, supra, at pages 34-56), contains no mention whatsoever of any requirement other than, or in addition to originality. The Supreme Court of Canada has refused to imply exemptions in addition to those Parliament expressly chose to include in the Act (see Bishop v. Stevens, supra, at pages 480-481). Similarly, this Court should not erect barriers to copyright protection that Parliament itself has declined to construct. Therefore, this Court will not insert an additional requirement of creative spark or imagination into the Act, and instead will focus on the Act's only relevant prerequisite in this case, which is that the work be "original".

[29]Admittedly, it is difficult if not impossible to assess originality without some interpretative framework. Consequently, the proper interpretation of the word "original" has been the subject of much discussion within the case law.

[30]The British case of University of London Press v. University Tutorial Press, [1916] 2 Ch. 601 (University of London Press), is perhaps one of the oldest and most frequently cited cases regarding originality in Anglo-Canadian copyright law. With respect to copyright in a professor's examination papers, that case established (at pages 608-609) that "the Act does not require that the expression must be in an original or novel form, but that the work must not be copied from another work -- that it should originate from the author." Here, the word "original" was interpreted to mean independently created and not copied.

[31]British courts built on this foundation and embraced assorted incarnations of the phrases "skill, judgment or labour", "knowledge, labour, judgment or skill" and "skill, labour and capital" to aid in the application of the concept of originality. These phrases guided the determination of the fundamental question, which is whether the work is something new or simply a copy of another work. As Lord Oliver of Aylmerton explained in Interlego A.G. v. Tyco Industries Inc., [1989] A.C. 217 (P.C.) (Interlego), great skill, judgment and labour is required to produce a good copy of a painting, but nobody could reasonably say that the second painting is original. He said (at pages 262-263, emphasis added): "[s]kill, judgment or labour merely in the process of copying cannot confer originality".

[32]The phrases mentioned above are often invoked in the context of compilations, which are a distinct type of work. No doubt this is because a compilation by definition might include some material that has been created by someone else. The underlying question in such a case is whether the compilation is original or merely a rearranged copy of existing works (see for example Ladbroke (Football), Ltd. v. William Hill (Football) Ltd., [1964] 1 All E.R. 465 (H.L.) (Ladbroke); Cramp (G.A.) & Sons, Ltd. v. Frank Smythson, Ltd., [1944] 2 All E.R. 92 (H.L.); and Macmillan and Co., Limited v. Cooper (1923), 40 T.L.R. 186 (P.C.)).

[33]Canadian courts have generally parallelled the British approach. The traditional Canadian standard has been summarized as follows:

The requirement of originality means that the product must originate from the author in the sense that it is the result of a substantial degree of skill, industry or experience employed by the author. . . . The effective meaning of the requirement of originality is that the work must not be copied from another . . . .

(see Fox, supra, at page 118, emphasis added, citing Langlois v. Vincent (1874), 18 L.C. Jur. 160 (Que. S.C.); Canadian Admiral Corpn. Ltd. v. Rediffusion Inc., [1954] Ex C.R. 382 (Canadian Admiral); Kilvington Bros. Ltd. v. Goldberg et al. (1957), 8 D.L.R. (2d) 768 (Ont. H.C.); Horn Abbot Ltd. v. W.B. Coulter Sales Ltd. (1984), 1 C.I.P.R. 97 (F.C.T.D.); Lifestyle Homes Ltd. v. Randall Homes Ltd. (1991), 70 Man. R. (2d) 124 (C.A.)).

[34]Chief Justice McLachlin considered the originality requirement when she was a Trial Judge in British Columbia, and decided that copyright subsisted in the arrangement of an advertising brochure for adjustable beds. In Slumber-Magic Adjustable Bed Co. v. Sleep-King Adjustable Bed Co., [1985] 1 W.W.R. 112 (B.C.S.C.), at page 115 (Slumber-Magic), she adopted the British jurisprudence regarding originality in compilations, commenting:

So long as work, taste and discretion have entered into the composition, that originality is established. In the case of a compilation, the originality requisite to copyright is a matter of degree depending on the amount of skill, judgment or labour that has been involved in making the compilation. . . . [T]he court should canvas the degree of industry, skill or judgment which has gone into the over-all arrangement.

Notably, the now Chief Justice of Canada realized that the concept of originality was inherently broad and used a variety of terms to describe it, including work, taste, discretion, skill, judgment, industry and labour. She found these ideas helpful to assess originality, but did not suggest that one phrase or another was the exclusive test.

[35]The now Chief Justice of this Court, Richard J., stated in U & R Tax Services Ltd. v. H & R Block Canada Ltd. (1995), 62 C.P.R. (3d) 257 (F.C.T.D.), at page 264 (footnote omitted):

Industriousness ("sweat of the brow") as opposed to creativity is enough to give a work sufficient originality to make it copyrightable. The meaning of the word "original" was succinctly stated by Cameron J. in Canadian Admiral Corp. v. Rediffussion Inc. . . .: "For a work to be `original' it must originate from the author; it must be the product of his labour and skill and must be the expression of his thoughts."

Importantly, the sweat of the brow exerted by U & R Tax Services to create its tax form was directed at selecting the content from among earlier government forms, draft releases and other information and arranging the layout of the form, not at merely copying existing materials. As Lord Oliver noted, one who sweats to produce what is, in essence, a copy cannot be rewarded with copyright protection. Richard J. also did not suggest that "sweat of the brow" would make a work original if poured into merely copying another work. Rather, the phrase "sweat of the brow" referred to the effort required to distinguish an original work from a mere copy. Richard J. differentiated between "sweat of the brow" and "creativity" since, as will be discussed below, the latter term might connote novelty, a quality with which copyright law is not concerned.

[36]Thus, the classic Anglo-Canadian precondition to copyright is that a work must be independently produced and not copied from another person. Where a work, such as a compilation, is produced by selecting and arranging existing material originality can be established if the new work is more than simply a rearranged copy of existing materials. Producing a work that is not, in essence, a copy of existing material will require effort that is most often referred to as skill, judgment or labour. The Trial Judge in this case interpreted Tele-Direct as altering the classic Anglo-Canadian standard of originality and adding new requirements of "imagination" and "creative spark". In this, he was mistaken.

[37]The first point to note about Tele-Direct is that it involved sub-compilations of routine data, whereas this case concerns materials that are considerably more complex. Tele-Direct sought copyright protection for subscriber information copied from Bell Canada, and additional data, such as fax numbers, trade-marks and number of years in operation, which it had compiled into a Yellow Pages directory. It was agreed that copyright subsisted in the directory as a whole, but the issue was whether copyright subsisted in the "in-column listings", which were referred to as "sub-compilations" of data. At trial, Madam Justice McGillis found that Tele-Direct exercised only a negligible amount of skill, judgment and labour in compiling the sub-compilation and thus failed to establish the degree of originality required to warrant copyright protection. This Court upheld that conclusion.

[38]In Tele-Direct this Court considered whether NAFTA, supra, required some change in our understanding of copyright protection for compilations of data. To deal with that possibility, this Court set forth an extensive discussion of that agreement and its impact on compilations (at paragraphs 14-15, 17, footnotes omitted):

The definition of "compilation" must be interpreted in relation to the context in which it was introduced. Simply put, it was introduced as a result of the signature of . . . [NAFTA] and with the specific purpose of implementing it. It is therefore but natural when attempting to interpret the new definition to seek guidance in the very words of the relevant provision of NAFTA which the amendment intends to implement. The applicable provision is Article 1705 which reads as follows:

Article 1705: Copyright

1. Each party shall protect the works covered by Article 2 of the Berne Convention, including any other works that embody original expression within the meaning of that Convention. In particular:

(a) all types of computer programs are literary works within the meaning of the Berne Convention and each Party shall protect them as such; and

(b) compilations of data or other material, whether in machine readable or other form, which by reason of the selection or arrangement of their contents constitute intellectual creations, shall be protected as such.

The protection a Party provides under subparagraph (b) shall not extend to the data or material itself, or prejudice any copyright subsisting in that data or material.

Clearly, what the parties to the Agreement wanted to protect were compilations of data that "embody original expression within the meaning of the Berne Convention" and that constitute "intellectual creations". The use of these last two words is most revealing: compilations of data are to be measured by standards of intellect and creativity. As these standards were already present in Anglo-Canadian jurisprudence -- as we shall see later -- I can only assume that the Canadian government in signing the Agreement and the Canadian Parliament in adopting the 1993 amendments to the Copyright Act expected the Court to follow the "creativity" school of cases rather than the "industrious collection" school.

. . .

. . . I have come to the conclusion that the 1993 amendments did not alter the state of the law of copyright with respect to compilations of data. The amendments simply reinforce in clear terms what the state of the law was or ought to have been: the selection of arrangement of data only results in a protected compilation if the end result qualifies as an original intellectual creation.

[39]A close reading of this passage indicates that the Court's focus was on the addition of the definition of "compilation" to section 2 [as enacted by S.C. 1993, c. 44, s. 53] of the Act, particularly regarding compilations of data. This portion of the Court's reasons makes no mention whatsoever of the proper meaning of the word "original", which is contained in section 5 of the Act, and which this Court must now interpret.

[40]As the commentary surrounding the implementation of the NAFTA amendments demonstrates, the mandate was to ensure among signatories protection for forms of expression, such as compilations of literary works and of data, not to alter the standard upon which those forms are protected (see Canada, House of Commons Debates (31 March 1993); Canada, House of Commons Debates (27 May 1993); Canada, Legislative Committee on Bill C-115, An Act to Implement NAFTA, Minutes of Proceedings and Evidence of the Legislative Committee on Bill C-115, An Act to implement the North American Free Trade Agreement (5 November 1993) and accompanying submissions; and Fox, supra, at pages 44-46). Therefore, the copyright provisions in NAFTA were not intended to alter the standard of originality in Canadian copyright law. Neither NAFTA nor the Berne Convention, supra, impose a higher standard of originality than was already present under Canadian law.

[41]As the Fox textbook, supra, points out, the World Intellectual Property Organization's Guide to the Berne Convention for the Protection of Literary and Artistic Works (Paris Act, 1971), (Geneva, W.I.P.O., 1978), states:

. . . the very concept of copyright from a philosophical, theoretical and pragmatic point of view differs [sic] from country to country, since each has its own legal framework influenced by social and economic factors. To define it in a manner binding on all member countries would be difficult, if not impossible.

This recognizes expressly that signatories to the Berne Convention may award copyright based upon standards unique to each country.

[42]Even if NAFTA and the Berne Convention were somehow intended to alter the prerequisites for copyright protection in member countries, those instruments would set minimum standards (see Fox, supra, at page 138). A more onerous standard of originality deprives owners of the copyright protection that the signatories to these agreements intended to guarantee. Their purpose is frustrated, rather than promoted by implying additional requirements of creativity, imagination or creative spark into the Act, as the Trial Judge did.

[43]Furthermore, neither Article 2 of the Berne Convention nor Article 1705 say anything about "creative spark" or "imagination". They merely require that member states recognize and protect compilations as "intellectual creations". To me, the use of the phrase "intellectual creation" does not necessarily mandate a test of originality involving "creative spark" or "imagination". Article 2 of the Berne Convention, and the definition of "every original literary, dramatic musical and artistic work" in section 2 [as am. by S.C. 1993, c. 44, s. 53] of the Act, both use the word "production", spurning the notion that any creative spark is required. In fact, even if "intellectual creation" did imply a requirement of "creative spark", Parliament chose not to include those words in the definition of a "compilation" set out in section 2, or in any other section of the Act. Had Parliament intended to affect any change to the standard for copyright protection, it could have done so.

[44]Importantly, in Tele-Direct the classic Anglo-Canadian test of originality was described (at paragraph 28, emphasis added) as follows:

. . .for a compilation of data to be original, it must be a work that was independently created by the author and which displays at least a minimal degree of skill, judgment and labour in its overall selection or arrangement.

In my view, this is an admirable summary and an accurate representation of the Canadian standard, which did, in fact, resolve the matter. The Court merely affirmed (at paragraph 7) the factual finding of McGillis J. (the Trial Judge in that case) [(1996), 27 B.L.R. (2d) 1, at page 26] that Tele-Direct "exercised only a minimal degree of skill, judgment or labour in its overall arrangement which is insufficient to support a claim of originality in the compilation so as to warrant copyright protection."

[45]This Court in Tele-Direct also suggested that the phrase "skill, judgment or labour" was intended to be used in the conjunctive, rather than disjunctive sense. The Court observed (at paragraph 29) that "[i]t is doubtful that considerable labour combined with a negligible degree of skill and judgment will be sufficient in most situations to make a compilation of data original." Notably, this observation resembles Lord Oliver of Aylmerton's sentiments in Interlego, supra, where he concluded that labour merely in the process of copying is insufficient to establish originality. I also do not think that labour alone will usually suffice to demonstrate originality, since an investment of labour alone is often indicative of slavish copying. If one employs labour alone without any degree of skill or judgment the result will typically be, in essence, a mere copy and will be unoriginal for that reason.

[46]In Hager v. ECW Press Ltd., [1999] 2 F.C. 287 (T.D.) (Hager), Madam Justice Reed observed that Tele-Direct was not intended to alter Anglo-Canadian jurisprudence with respect to the interpretation of originality, and I endorse her comments (at paragraphs 40-41, emphasis added):

. . . as I understand the argument, it is that the Tele-Direct decision has turned Canadian copyright law, at least in so far as it is relevant for present purposes, from its previous alignment with the law of the United Kingdom towards an alignment with that of the United States.

I do not interpret the Tele-Direct decision as having such a broad effect. In both United States and Canada, jurisprudence has defined the requirement that copyright be granted in an "original" work, as meaning that the work originate from the author and that it not be copied from another. In the United States this was initially the result of case law; the statutory requirement of "originality" was only added in 1976. The requirement that a work be "original" has been a statutory requirement in Canada since 1924 when the Copyright Act, 1921 . . . enacted in 1921 came into force. That Act was largely copied from the United Kingdom Copyright Act, 1911. I am not persuaded that the Federal Court of Appeal intended a significant departure from the pre-existing law.

[47]After Tele-Direct, this Court also decided the case of Édutile Inc. v. Automobile Protection Assn., [2000] 4 F.C. 195 (C.A.), revg (1997), 81 C.P.R. (3d) 338 (F.C.T.D.), leave to appeal to S.C.C. refused, [2001] 1 S.C.R. vi (Édutile). The reasons quoted the passages from Tele-Direct regarding the impact of NAFTA on compilations of data. However, the issue was resolved (at paragraph 14) using the traditional test of originality, as articulated and relied on in Tele-Direct to the effect that such "a work was independently created by the author and displayed at least a minimal degree of skill, judgment and labour in its overall selection or arrangement." The fact that Édutile was ultimately decided on the basis of the classic Anglo-Canadian interpretation of originality further demonstrates that Tele-Direct did not introduce an additional precondition to copyright protection under Canadian law.

[48]On the other hand, the American threshold for copyright protection, which the Trial Judge mistakenly adopted, does contain requirements of both originality and creativity. According to the United States Supreme Court in Harper & Row, Publishers, Inc. v. Nation Enterprises, 471 U.S. 539 (1985), at pages 547-549, a work "must be original to the author". The United States Supreme Court has also interpreted Article I, § 8, cl. 8 of the U.S. Constitution as requiring "independent creation plus a modicum of creativity" (see Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340 (1991) (Feist), citing Trade-Mark Cases, 100 U.S. 82 (1879); Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53 (1884)). In Feist the U.S. Supreme Court stated (at page 345) that "[o]riginal, as the term is used in copyright means only that the work was independently created by the author (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity."

[49]Matthew Bender & Co., Inc. v. West Pub. Co., supra, [at pages 682 and 688] expanded on the American standard in the context of legal publications. The following passages were among those cited by the Trial Judge [at paragraph 133]:

The creative spark is missing where: (i) industry conventions or other external factors so dictate selection that any person composing a compilation of the type at issue would necessarily select the same categories of information, . . . or (ii) the author made obvious, garden-variety, or routine selections, . . .

Thus, when it comes to the selection or arrangement of information, creativity inheres in making non-obvious choices from among more than a few options. . . . However, selection from among two or three options, or of options that have been selected countless times before and have become typical, is insufficient. Protection of such choices would enable a copyright holder to monopolize widely-used expression and upset the balance of copyright law.

. . .

West's editorial work entails considerable scholarly labor and care, and is of distinct usefulness to legal practitioners. Unfortunately for West, however, creativity in the task of creating a useful case report can only proceed in a narrow groove. Doubtless, that is because for West or any other editor of judicial opinions for legal research, faithfulness to the public-domain original is the dominant editorial value, so that the creative is the enemy of the true.

[50]The dramatic statement that concludes this passage is somewhat facile. It ignores the possibility that truth can always be expressed in a creative, and certainly in an original way. Often, creativity and truth are allies in the task of expressing facts, history, news and the even the law. The creative may illuminate the true, it may explain the true and it may certainly adorn the true, all of which situations may give rise to copyright in original expression.

[51]Interestingly, there is substantial controversy over whether or not the U.S. Supreme Court in Feist correctly affirmed the American requirement of creativity, as it merely accepted the American common-law standard without exploring the consequences of the codification of the originality requirement (see R. VerSteeg, "Sparks in the Tinderbox: Feist, `Creativity,' and the Legislative History of the 1976 Copyright Act" (1995), 56 U. Pitt. L.R. 549). Commentators have alerted us to the potential implications of the U.S. Supreme Court's decision in Feist (see for example J. R. Boyarski, "The Heist of Feist: Protections for Collections of Information and the Possible Federalization of `Hot News'" (1999), 21 Cardozo L. Rev. 871; J. C. Ginsburg, "No `Sweat'? Copyright and Other Protection of Works of Information After Feist v. Rural Telephone" (1992), 92 Colum. L. Rev. 338; R. A. Gorman, "The Feist Case: Reflections on a Pathbreaking Copyright Decision" (1992), 18 Rutgers Computer & Tech. L.J. 731; J. Litman, "After Feist" (1992) 17 U. Dayton L. Rev. 607; J. P. McDonald, "The Search for Certainty" (1992) 17 U. Dayton L. Rev. 331; N. Siebrasse, "Copyright in Facts and Information: Feist Publications is Not, and Should Not Be, the Law in Canada" (1994), 11 C.I.P.R. 191; and A. C. Yen, "The Legacy of Feist: Consequences of the Weak Connection Between Copyright and the Economics of Public Goods" (1991), 52 Ohio St. L.J. 1343). In addition, I note that there have been efforts in the United States to repeal the effect of the U.S. Supreme Court's decision (see the Collections of Information Antipiracy Act, Bill No. H.R. 354, 106th Congress, Introduced on January 19, 1999).

[52]As noted above, the Supreme Court of Canada has warned that "United States court decisions . . . must be scrutinized very carefully because of some fundamental differences in copyright concepts" (Compo, supra, at page 367). The wisdom in that advice is well demonstrated in this case, where the American principle sought to be imported is based upon an unstable foundation that has not yet been tested thoroughly. Although the Trial Judge prefaced his remarks with a disclaimer that he proceeded with some trepidation, he failed to conduct any substantive analysis of the American standard of originality. Therefore, he inadvertently entangled the standard set out in Feist and applied in Matthew Bender with the Canadian touchstone of originality. As discussed above, there is no universal requirement of "creative spark" or "imagination" in Anglo-Canadian copyright law.

Summary of the Meaning of "Original"

[53]It is widely accepted that an "original" work must be independently produced and not copied. In attempts to further explain this cornerstone of copyright law, different judges and commentators have described the word "original" with a host of words and phrases mentioned above, including various combinations of the terms "labour", "judgment", "skill", "work", "industry", "effort", "taste" or "discretion" (see for example Ladbroke Football, supra and Slumber-Magic, supra). To me, these are all possible ingredients in the recipe for originality, which may be altered to suit the flavour of the work at issue. Each term may help to determine whether a work is, in fact, original, but it is a mistake to treat any of these words as if they were statutory requirements. These are not, in themselves, prerequisites to copyright protection, but rather evidence of the sole prerequisite, originality. To determine whether or not the materials in issue are "original" works, a principled and reasoned approach based upon evidence is required, not reliance on a particular word or phrase that merely seeks to explain the concept of originality.

[54]Moreover, I am not convinced that a substantial difference exists between an interpretation of originality that requires intellectual effort, whether described as skill, judgment and/or labour or creativity, and an interpretation that merely requires independent production. As discussed above, any skill, judgment and/or labour must be directed at an exercise other than mere copying for the result to be an original work (see Interlego, supra, at pages 262-263; Tele-Direct, supra, at paragraph 29). Clearly, therefore, the crucial requirement for a finding of originality is that the work be more than a mere copy. The vast majority of works that are not mere copies will normally require the investment of some intellectual effort, whatever that may be labelled. Works that are entirely devoid of such effort are, almost inevitably, simply copies of existing material.

[55]I acknowledge that it is more difficult to apply the standard of originality to some types of works, such as compilations, than to traditional forms of expression, such as novels, sculptures or plays. The further one gets away from traditional literary works, the less obvious it becomes that a work has not been copied. Compilations of data, for instance, typically do not display an author's uniquely identifiable flare, nor "exhibit, on their face, indicia of the author's personal style or manner of expression" (Hager, supra, at paragraph 42). This makes it difficult to establish whether compilations are original or are merely copies. In addition, some compilations may be comprised of elements that are copied from other works or parts of works in which copyright may or may not otherwise subsist. Because the selection and arrangement of the underlying elements, not the elements themselves, must be original, a compiler must demonstrate something more than merely copying those elements into a new work before the Act will award copyright protection. However, Anglo-Canadian copyright law does not require "creativity" to establish that such a work is not a mere copy.

[56]Even where "creativity" has been employed as a label for the intangible effort required to distinguish an original work from a mere copy, courts have emphasized that the standard is extremely low. British, Canadian and American jurisprudence has firmly established that copyright law is unlike patent law in that novelty or non-obviousness are not required, and that courts must not subjectively judge the quality or merit of an author's work (see Fox, supra, at pages 112-114). In Apple Computer, supra, Hugessen J.A. stated that the sole distinguishing characteristic of literary work is that it be print or writing. In Ladbroke, supra, the Court noted that aesthetic quality or virtue is not required for copyright protection. In University of London Press, supra, it was said that copyright could subsist "irrespective of the question whether the quality or style is high" (supra, at page 608). The House of Lords held in Walter v. Lane, [1900] A.C. 539, at page 549 that copyright could subsist in a book whether it was "wise or foolish, accurate or inaccurate, of literary merit or of no merit whatever", and (at page 558) that a work "devoid of the faintest spark of literary or other merit" may have a copyright, "worthless and insignificant as it would be". American law also warns against judges constituting themselves judges of worth (see U.S. House Report No. 1476 (1976), 94th Cong., 2d Sess. 51; and Bleistein v. Donaldson Lithographing Company, 188 U.S. 239 (1903) (per Justice Holmes, at page 251)).

[57]To ignore this basic axiom is to intrude on the domain of critics and become appraisers of merit instead of arbiters of originality. It is not necessary for a copyright work to evince qualities of novelty, ingenuity, innovation, genius, merit, virtue, beauty, brilliance, imagination, creative spark and other such attributes, for copyright law is not necessarily concerned with them. Of course, most, if not all "creative" and "imaginative" works would be original, but not all original works must be "creative" or "imaginative"; those attributes, though praiseworthy, are not mandatory characteristics of every original work.

[58]Moreover, the lack of objectivity implicit in a requirement of "creativity" makes a coherent application of such a standard impossible (see D. Vaver, Copyright Law (Toronto: Irwin Law, 2000), at pages 61-63, VerSteeg, supra, at pages 562-565; Yen, supra, at pages 1345-1346; and E. R. York, "Warren Publishing Inc. v. Microdos Data Corp.: Continuing the Stable Uncertainty in Factual Compilations" (1999), 74 Notre Dame L. R. 565). Inevitably, judges will be forced to create their own definitions of creativity, resulting in substantial uncertainty and further jeopardizing the public benefit that accrues from the production of new and original works. The fact that an objective and coherent definition of "creative" is elusive at best and that "creativity" can sometimes connote qualities that are not required of an "original" work makes it preferable to avoid such unpredictable labels when assessing originality.

[59]Admittedly, the public interest in the dissemination of works may be a policy reason to impose a high standard of "creativity" as a prerequisite to copyright protection. There is also the concern that overprotection of certain works will thwart social and scientific progress by precluding persons from building upon earlier works. However, I would suggest that copyright monopolies are better controlled through the avenues that Parliament has established than through the imposition of an arbitrary and subjective standard of "creative spark" or "imagination". As will be discussed below, a fair interpretation of user rights can counteract the apparent imbalance potentially generated by a low threshold (see Vaver, Copyright Law, supra, at pages 169-170). For example, the fair dealing provisions of the Act provide a mechanisms whereby user rights are better considered.

2. The Publisher's Works

[60]Having dismissed the notion that imagination or creative spark is essential to a finding of originality, I must now determine whether the Publishers' materials are, in fact, original works.

[61]As a preliminary matter, the Law Society submits that the reported judicial decisions of Meyer v. Bright (1992); R. v. CIP Inc. (1992) and Hewes v. Etobicoke (1993) are merely parts of the volumes or series of reported judicial decisions in which they appear. Likewise, the Law Society asserts that the headnotes that accompany the reported judicial decisions are not works, but merely parts of other works and that the monograph is merely part of a book.

[62]As a starting point, I note that the publishers have submitted certificates of registration for some of their materials, including separate certificates for headnotes and edited judicial reasons. Subsection 53(2) [as am. by S.C. 1997, c. 24, s. 30] of the Act states:

53. . . .

(2) A certificate of registration of copyright is evidence that the copyright subsists and that the person registered is the owner of the copyright.

[63]Generally, the weight to be afforded to these certificates should not be minimized by the fact that the Copyright Office assumes no responsibility for the truth of the facts contained in the application and conducts no examination (see Circle Film Enterprises Inc. v. Canadian Broadcasting Corporation, [1959] S.C.R. 602, at pages 606-607). However, the Trial Judge pointed out that nearly all of the registrations were obtained within the few months preceding the trial of this matter. To me, the fact that these certificates were obtained seemingly only in contemplation of litigation diminishes their persuasiveness. Therefore, although these certificates may support a finding that copyright subsists in the Publishers' works as described on the certificates, I do not find them particularly compelling.

[64]I recognize that subsection 3(1) [as am. by S.C. 1988, c. 65, s. 62; 1993, c. 44, s. 55; 1997, c. 24, s. 3] of the Act contemplates a "substantial part" of a work, and therefore, some materials may be parts of works as opposed to works in themselves, and that this has the potential to cause problems when one reproduces materials that might be both works in themselves as well as parts of larger works. Every work can be fragmented into its constituent parts, whether those be chapters, paragraphs or words in a novel, movements, bars or notes in a symphony or acts, scenes or lines in a play. At some level of deconstruction, however, the material ceases to become a work and is, instead, a part of another work. Without this distinction, the phrase "a substantial part thereof" would be meaningless, since a plaintiff could always assert that any reproduction by a defendant was of an entire "work" as characterized by the copyright owner. Neither the Act nor case law provide much guidance to resolve this dilemma.

[65]The Law Society suggests that the primary consideration in defining the "work" in question ought to be the actual published form, since that affects a person's perception of the scope of his or her permitted dealings with the work. However, there are many different types of works that rarely appear independently. For example, a short poem will seldom be published alone. Instead, a short poem will typically appear within another work, such as a magazine or newspaper perhaps, or in a compilation of poems, or it might be broadcast or read aloud to an audience. That poem is no more or no less a "work" depending upon the manner in which it is presented. The Law Society alternatively refers to whether the work is intended to exist as an independently publishable work. However, such a test also relies too heavily on the actual or intended published form of the material in question, and is impracticable where a work might appear alone and/or together with other works.

[66]Rather, one must decide whether the material in question is capable of existing outside of the context in which it is published, communicated, displayed, performed or otherwise disseminated. If a production is distinctive and reasonably able to stand alone, then it may be deemed a work in itself rather than a part of another work. However, if a production is dependent upon surrounding materials such that it is rendered meaningless or its utility largely disappears when taken apart from the context in which it is disseminated, then that component will instead be merely a part of a work.

a. The Reported Judicial Decisions

[67]The reported judicial decisions of Meyer v. Bright (1992); R. v. CIP Inc. (1992) and Hewes v. Etobicoke (1993), including the headnotes that accompany those decisions are certainly capable of standing apart from the volumes or series in which they appear. These reported judicial decisions are clearly not dependent upon other materials contained in a published volume or series of other reported judicial decisions. I suspect that multiple reported judicial decisions are published in volumes or series mainly for practical purposes of convenience, accessibility and marketability. Therefore, much like a poem in an anthology of poems, the fact that these reported judicial decisions are typically published together with other reported judicial decisions does not prejudice their protection under copyright law. In fact, subsection 2.1(2) [as enacted by S.C. 1993, c. 44, s. 54] of the Act is clear that "[t]he mere fact that a work is included in a compilation does not increase, decrease or otherwise affect the protection conferred by this Act in respect of copyright in the work".

[68]These reported judicial decisions are literary works, or perhaps more particularly, compilations, since they are works "resulting from the selection or arrangement of literary . . . works or parts thereof, . . . or . . . of data" (section 2 of the Act). The Publishers have compiled literary works or parts thereof, data about those works and their own independently created features. Thus, this Court must consider whether or not the selection or arrangement of the elements of these reported judicial decisions is sufficient to distinguish them from mere copies of the underlying works or parts thereof.

[69]The Law Society submits that the Publishers have not demonstrated originality in the edited texts, the indexing, the running heads, other enhancements and lists of additional data. This approach is incorrect. One cannot isolate each element of the compilation and assess whether each fragment is original, but must look at the work in its entirety (see Ladbroke, supra, at pages 276-277; Slumber-Magic, supra, at page 115; and Prism Hospital Software v. Hospital Medical Records Institute, [1994] 10 W.W.R. 305 (B.C.S.C.)).

[70]The Trial Judge found (at paragraph 139) "beyond a doubt, that the preparation of the reported judicial decisions . . . involved extensive labour, skill and judgment". In my opinion, the skill, judgment and labour invested in these reported judicial decisions demonstrates that they are far more than mere copies and they are, therefore, original works in which copyright subsists.

[71]Originality stems, in part, from the Publishers' selection of the elements of each reported judicial decision. The Publishers might have chosen to include any of a variety of different categories of data regarding a particular set of reasons. Although some of the publishers' selections may also be made by other publishers, the selections are not all dictated by necessity, and there is no evidence to indicate that these particular selections have merely been copied from other sources. Furthermore, each Publisher might arrange the elements in any number of ways, depending upon their unique goals, style or preference. These reported judicial decisions are original notwithstanding that the respective Publishers may have selected the same types of elements for other reported judicial decisions and each Publisher arranges the elements of their compilations consistently. The Act does not require that a work be in a novel form.

[72]Most importantly each Publisher has incorporated independently composed features, such as the summary of the facts, reasons and conclusions and the catchlines. To me, these elements put the matter beyond doubt, and by adding independently composed features to the compilation, each Publisher has significantly strengthened its claim of originality in the overall work. Although copyright may subsist in an original compilation of unoriginal material, it is generally far easier to demonstrate originality in a compilation that includes substantial independently composed features. That is, unlike routine compilations of data, these reported judicial decisions do display some indicia of their authors' style or manner of expression.

[73]In particular, the summaries of the facts, reasons and conclusions could have been long or short, technical or simple, dull or dramatic, well written or confusing; the organization and presentation might have varied greatly. I take judicial notice of the fact that in the past Canadian headnotes have been authored by some of the greatest legal minds in our country such as the late Chief Justice Bora Laskin, Dean Cecil A. Wright and other well-respected academics and practitioners including the witnesses professors Dunlop and Feldthusen. It is doubtful that such distinguished scholars would have devoted their time and effort to mundane copying. The independently composed features are obviously more than simply abridged copies of the reasons for judgment.

[74]The Trial Judge correctly noted that the value of these features resides in their faithfulness to the reasons for judgment. However, it is not relevant that the ideas expressed in these elements of the reported judicial decisions may not be original, as copyright law is concerned only with the originality of an expression, not ideas. In University of London Press, Mr. Justice Peterson wrote [at page 608]:

The word "original" does not in this connection mean that work must be the expression of original or inventive thought. Copyright Acts are not concerned with the originality of ideas, but with the expression of thought in print or writing. The originality which is required relates to the expression of the thought.

[75]Naturally, if a publisher has chosen to include, for example, a list of cases cited in the reasons, then all cases cited will inevitably be listed. Therefore, two independently produced compilations that may appear similar in some ways are both entitled to copyright protection. In this respect, the U.S. 2nd Circuit Court of Appeals' apprehension that to grant copyright protection to common selections would enable a copyright holder to monopolize widely-used expression was misguided (see Matthew Bender, supra). The publishers do not monopolize information in the sense that they can preclude others from independently producing similar materials; they merely acquire the right to preclude others from copying their works.

[76]In sum, I am satisfied that copyright subsists in each of these reported judicial decisions.

b. The Headnotes

[77]The headnotes that the Publishers have submitted to this Court are, in my opinion, capable of standing apart from the judicial reasons they accompany. These headnotes are useful with or without full reasons for judgment. Although reasons for judgment are certainly required for a full and thorough understanding of judicial decisions and provide context for the accompanying headnotes, the value of headnotes is not dependent upon judicial reasons. In essence, the headnote summarizes reasons for judgment so that a reader can decide whether or not it is necessary to actually consult those reasons. Just as it is irrelevant that reported judicial decisions typically appear within volumes or series, it is not important that headnotes typically accompany reported judicial decisions. In fact, summaries, abstracts or abridgements occasionally appear separately from judicial reasons, for example in publications such as the All Canada Weekly Summaries, which is discussed below in the context of the case summary.

[78]For the reasons discussed above, I have no doubt that these headnotes are original and qualify for independent copyright protection under the Act. Indeed, I would repeat that, in my mind, the headnotes are essential to establishing originality in the reported judicial decision as a whole. Although the question does not arise in this particular case, there is some doubt whether, without the headnote, a publisher could support a claim for copyright protection in judicial reasons alone, which seem to be merely copied and edited.

c. The Case Summary

[79]The case summary of Confederation Life v. Shepherd (1992) appears in Volume 37 of the series A.C.W.S. (3d). Like the reported judicial decisions, however, this case summary is equally meaningful with or without the published book in which it appears. Thus, it is a work rather than a part of a work. The only remaining question is whether it is original.

[80]Although the information contained within this summary is necessarily derived from the case that it summarizes, that information could have been expressed in any number of ways, much like the independently composed features of the reported judicial decisions. This condensation of judicial reasons required significant skill and judgment in its composition and discretion in its presentation. Its concise style does not affect its originality. This is clearly more than simply an abridged copy of the reasons for judgment upon which it is based. In my view, this particular work is, therefore, sufficiently original to be protected under section 5 of the Act.

d. The Topical Index

[81]The topical index appears as an appendix to the book, Canada GST Cases, [1997] G.S.T.C., although it could have appeared independently of that book. No doubt the headnotes and reasons contained in the reporter as published are necessary for a full understanding of the cases therein. However, the topical index can fulfill a useful purpose apart from that context. The index is not intended to fully enlighten its reader as to the facts, reasons and conclusions in a particular decision. It is intended merely to enable the reader to decide whether it is necessary to consult the full reported judicial decision, which may be published elsewhere in addition to [1997] G.S.T.C. If the reader is interested, he/she will consult the full text, but if not, the topical index has fulfilled its purpose independently of the book in which it appears.

[82]I have also concluded that the topical index is original. Its authors exhibited skill and judgment in selecting and arranging its elements. They selected cases that they judged to be binding or persuasive authority concerning the GST. Although the topical index is arranged alphabetically, there are significant cross-references to other headings within the index, and important decisions were required as to where certain information ought to appear. Moreover, the authors have added considerable independently composed material to this compilation by incorporating their own summaries of relevant cases. That these summaries are extremely brief, usually only a few words, does not diminish the claim of originality, but rather enhances it. It is no easy task to summarize an entire decision into a single phrase, which might be done in an infinite number of ways. By selecting which cases to include, independently composing extremely brief summaries of the decisions, and arranging and cross-referencing the topics, the publishers have demonstrated that the topical index is an original work.

e. The Monograph

[83]The monograph is a work independent from the book in which it appears. Although the book may be considered to be a compilation or a collective work, as those terms are defined in the Act, Professor Kogan's right to copyright protection for his contribution to the larger work is not diminished by that fact. Like subsection 2.1(2), referred to above, the definition of a "collective work" suggests that copyright may subsist in the "works of different authors" that are incorporated therein. I have no doubt that the monograph is a distinctive work. Once it is concluded that the monograph is a work on its own, no doubt remains that it is original. The Trial Judge's conclusion in this regard was correct.

f. The Annotated Statute and the Textbook

[84]As mentioned earlier in these reasons, the Trial Judge declared that copyright subsists in the annotated statute and the textbook. The Law Society does not appeal from these findings, since the Trial Judge's conclusions regarding these works are obviously correct.

B. Did the Law Society Infringe Copyright in the publishers' Works?

[85]Given that copyright subsists in each of the publishers' works, and no issues arise regarding ownership, this Court must decide whether those copyrights have been infringed by the Law Society. Even if the publishers' prove that the Law Society did things that only the publishers have the right to do, the Act's fair dealing exemptions, or other defences, may apply. However, before addressing exemptions and defences, I must determine whether the Law Society is, prima facie, liable for infringement of the publishers' copyrights. That is, I must decide whether the Law Society would be liable for copyright infringement if the fair dealing exemptions do not apply.

[86]The specific allegations of infringement in this case resulted from requests to the Law Society for copies of the material referred to above. The requests were made by lawyers acting on behalf of the Publishers, and therefore, it could be argued that the Publishers impliedly authorized the making of those copies. Also, it would seem that when the copies were requested, the staff at the Great Library were not informed that the copies were intended to be used as evidence in an infringement action against the Law Society. However, this case from the outset was intended to challenge the normal practice of the Great Library with respect to copying legal material, and the arguments of counsel focus on the issues arising from that practice. It has not been suggested that the Great Library, in responding to the requests for the material in issue in this case, departed from its usual activities. Thus, I will consider the Publishers allegations of infringement in the context of the Law Society's normal practices.

[87]The Act sets out two types of infringement relevant to the Law Society's normal practices. Subsection 27(1) [as am. by S.C. 1997, c. 24, s. 15] describes "infringement generally" as doing any act that only the copyright owner has the right to do:

27. (1) It is an infringement of copyright for any person to do, without the consent of the owner of the copyright, anything that by this Act only the owner of the copyright has the right to do.

[88]Thus, it is an infringement of copyright to do any of the things listed in subsection 3(1), which sets out the relevant exclusive rights of copyright owners as follows:

3. (1) For the purposes of this Act, "copyright", in relation to a work, means the sole right to produce or reproduce the work or any substantial part thereof in any material form whatever, . . . and includes the sole right

. . .

(f) in the case of any literary, dramatic, musical or artistic work, to communicate the work to the public by telecommunication,

. . .

and to authorize any such acts.

[89]"Secondary infringement" may occur if a person, who may or may not have personally done any of the things listed in subsection 3(1), deals in certain ways with an infringing copy that the person knew or should have known infringed copyright. Subsection 27(2) [as am. by S.C. 1997, c. 24, s. 15] describes secondary infringement as follows:

27. (1). . .

(2) It is an infringement of copyright for any person to

(a) sell or rent out,

(b) distribute to such an extent as to affect prejudicially the owner of the copyright,

. . .

(d) possess for the purpose of doing anything referred to in paragraphs (a) to (c)

. . .

a copy of a work . . . that the person knows or should have known infringes copyright . . . .

1. Infringement Generally

[91]As mentioned above, subsection 27(1) describes infringement generally as doing anything that only the copyright owner has the right to do. The Publishers allege that the Law Society's general practice of photocopying legal materials as part of its custom photocopying service in accordance with the "Access to the Law Policy" constitutes reproduction of their works or substantial parts thereof. Moreover, the Publishers allege that the transmission by the Law Society of their works by facsimile constitutes communication to the public by telecommunication. The Publishers have submitted specific examples of reproductions and facsimile transmissions by the Law Society as illustrative of its general practice. Although I will refer to the Publishers' works as examples, it seems to me that the Publishers' allegations of infringement are primarily targeted at the Law Society's normal practices.

a. Reproduction of a Work or a Substantial Part Thereof

[92]Subsection 3(1) grants the copyright holder the exclusive right to "reproduce the work or any substantial part thereof". There is no dispute that a photocopy constitutes a reproduction. To photocopy an entire work is to "reproduce the work", as described in subsection 3(1). One who reproduces an entire work will, therefore, be prima facie liable for copyright infringement. The phrase, "any substantial part thereof" is only relevant if less than an entire work has been produced or reproduced.

[93]Given my earlier conclusions regarding the subsistence of copyright in the reported judicial decisions, the headnotes, the case summary, the topical index, the monograph, there are no specific examples before this Court of reproductions of less than entire works. The fact that, for example, the monograph amounts only to 4.5% of the pages in the book in which it appears is not relevant, nor is the fact that the reported judicial decision of Meyer v. Bright is one of 62 decisions reported in 94 D.L.R. (4th).

[94]Notably, the Law Society publishes the following notice in its own publication, the Ontario Reports:

Copies of individual decisions appearing in this Report may be made for the purposes of research, private study, review, criticism or use in court, tribunal and government proceedings.

The fact that the Law Society feels the need to grant permission to copy individual decisions implies that it believes such activity might otherwise constitute infringement. If a copy of an individual decision was a reproduction of anything less than an entire work or a substantial part of a work, anyone could make copies of them for any purpose at all, and no permission would be needed. Therefore, the Law Society's argument that a copy of a single reported judicial decision is not of a substantial part of a work contradicts its own notice in the Ontario Reports.

[95]Although the specific reproductions at issue before this Court were of entire works, I suspect that if the Law Society reproduced only a headnote rather than an entire reported judicial decision, such reproduction would be of a substantial part of a work. An investigation into substantiality is not a purely quantitative exercise (see Édutile, supra, at paragraph 22; Ladbroke, supra, at pages 469, 473; and Vaver, Copyright Law, supra, at page 145). Clearly, an overwhelming proportion of the skill, judgment and labour invested in compiling reported judicial decisions is directed at creating the headnotes. For that reason, I also suspect that if the Law Society reproduced only the edited reasons for judgment from a reported judicial decision, such reproduction may not be of a substantial part of a work. Although the reasons for judgment are certainly significant and indeed form the basis of the reported judicial decision, the Publishers have invested relatively little effort in distinguishing that portion of their work from a mere copy of the underlying judicial reasons. Qualitatively, the Publishers invest an insubstantial amount of effort into edited reasons for judgment, as compared to headnotes. Thus, a headnote, which may be relatively brief compared to an entire reported judicial decision, may constitute a substantial part, whereas edited judicial reasons, which may be considerably longer than a headnote, may be an insubstantial part.

[96]Similarly, if I am mistaken that the topical index to [1997] G.S.T.C., for example, is an independent work, then I would suggest it is nevertheless a substantial part of the reporter in which it appears. Whether the index is protected as a work itself, or as a substantial part of a larger work, the result is the same. Its author has invested substantial skill, judgment and labour in its composition, and that effort ought to be protected by copyright law.

[97]In general, however, I decline to specify a particular percentage of a work that delineates the substantial from the insubstantial, as the Law Society has attempted to do in its "Access to the Law Policy". In some circumstances, a small number of very important pages may be substantial, whereas other times, a larger number of unimportant pages may be insubstantial. Such a determination can only be made in the context of a particular reproduction.

b. Communication to the Public by Telecommunication

[98]The Law Society admits that it will, upon request in accordance with its "Access to the Law Policy", transmit facsimiles of works contained in the Great Library to individual recipients. The Publishers allege that the Law Society thereby infringes their exclusive right, under paragraph 3(1)(f) of the Act, to communicate those works to the public by telecommunication. The Law Society does not dispute that the definition of "telecommunication" in section 2 [as enacted by S.C. 1988, c. 65, s. 61] of the Act includes a facsimile transmission, nor does it deny that a facsimile transmission is a communication. However, the Law Society argues that the transmission of one work to one recipient is not a communication "to the public".

[99]Although two decisions of this Court have interpreted the current version of paragraph 3(1)(f), the reasons in those cases only discussed the communication right briefly, since the definition of a "musical work" [as am. by S.C. 1993, c. 44, s. 53] resolved the issues (see Canadian Cable Television Assn. v. Canada (Copyright Board), [1993] 2 F.C. 138 (C.A.), affg (1991), 34 C.P.R. (3d) 521 (F.C.T.D.), (CCTA) and CTV Television Network Ltd. v. Canada (Copyright Board), [1993] 2 F.C. 115 (C.A.), (CTV 1993)). Both CCTA and CTV 1993 dealt largely with the right to perform a work in public, and mentioned only that the phrase "to the public" is broader than "in public" (CTV 1993, at page 131; CCTA, pages 148-149; see also Telstra Corporation Ltd. v. Australasian Performing Right Association Ltd. (1997), 146 ALR 649 (Aust. H.C.)). The Trial Judge accepted this proposition (at paragraphs 165-167), however, the phrase "in public" is not at issue in this case. The fact that a communication made "in public" is likely also a communication made "to the public" is not determinative of the whether the Law Society communicates to the public.

[100]The Trial Judge held (at paragraph 167) that a single telecommunication emanating from a single point and intended to be received at a single point is typically not a communication to the public. I agree. In my view, the ordinary meaning of the phrase "to the public" indicates that a communication must be aimed or targeted toward "people in general" or "the community" (see the New Oxford Dictionary of English, s.v. "public" (Oxford: Clarendon Press, 1998). Article 1721(2) of NAFTA, supra, which is not binding on this Court but is nevertheless helpful since "public" is not otherwise defined, states that the public includes "any aggregation of individuals intended to be the object of, and capable of perceiving communications". A communication that is targeted only at a segment of the public, may however, also be a communication to the public. Paragraph 2.4(1)(a) (as enacted by S.C. 1997, c. 24, s. 2), which was added to the Act to overrule the conclusion in Canadian Admiral, supra (see Fox, supra, at page 498), clarifies that a communication may be to the public if it is "intended to be received by" a "part of the public", specifically persons who occupy apartments, hotel rooms, or dwelling units in the same building. Thus, to be "to the public" a communication must be targeted at an aggregation of individuals, which is more than a single person but not necessarily the whole public at large.

[101]The Publishers suggest that the Trial Judge erred in failing to hold that a series of transmissions to single recipients constitutes communication to the public. The Publishers are mistaken. In fact, the Trial Judge did not decide that a series of communications could never infringe the right to communicate to the public. However, the Publishers have not submitted any evidence of transmissions of their original works to more than a single recipient; hence, the Trial Judge had no basis to consider the potential implications of such a communication. I accept that a series of sequential transmissions may infringe the right to communicate to the public. However, the question of whether a group of recipients is sufficiently large to constitute "the public" can only be answered on a case-by-case basis, and there is insufficient evidence before this Court to make such a determination.

[102]The Publishers further suggest that the Law Society has infringed their right to communicate their works to the public merely by making such works available through its photocopying service. There is no merit in this submission. Merely evincing a willingness to accept requests by patrons of the Great Library for copies of the Publishers' works is not an infringement of the Publishers' right to communicate their works to the public. Leaving aside the question of whether patrons of the Great Library are "part of the public", the publishers' works are not communicated by the Law Society if it must take steps to facilitate the communication before anyone can receive those works and it retains the practical ability to consider each request individually and either accept or decline it.

c. Authorization

[103]The Law Society maintains free-standing photocopiers in the Great Library, to which patrons have unrestricted access to make copies for a fee. In response to the Law Society's claim that making free-standing photocopiers available does not infringe any of the Publishers' copyrights, the Publishers argue, to the contrary, that the Law Society implicitly authorizes patrons to "produce or reproduce" their works. That is, the Publishers allege that the Law Society authorizes reproductions of their works, not through the custom photocopying service, but by maintaining free-standing photocopiers. Although there is no evidence of specific reproductions made using the self-service photocopiers, there is no dispute the machines are used to reproduce works in the Great Library, including the Publishers' works.

[104]Courts have consistently held that in order to authorize an act that only the copyright owner has the right to do, one must do more than merely provide the means with which to carry out the protected act. In Vigneux et al. v. Canadian Performing Right Society Ltd., [1945] 2 D.L.R. 1 (P.C.), revg [1943] S.C.R. 348 (Vigneux), the Privy Council held that the supplier of a juke box did not authorize public performances of musical works, since "[t]hey had no control over the use of the machine; they had no voice as to whether at any particular time it was to be available to the restaurant customers or not" (at page 11).

[105]The Supreme Court of Canada considered the right to authorize in Muzak Corp. v. Composers, Authors, etc., [1953] 2 S.C.R. 182 (Muzak). The Court found that Muzak, an American company that merely leased a library of electrical transcriptions containing musical works to a Canadian franchise, did not authorize any public performance. According to Rand J., merely leasing a device that may be used to perform musical works did not constitute authorization, since there was nothing "to suggest that Muzak has made itself a party in interest to the performance either by warranting the right to perform without fee or by anything in the nature of a partnership or similar business relation" (at page 189). Rand J. remarked that one who merely lends a gun to another cannot be said to authorize that person to hunt without a licence.

[106]In Muzak, Kellock J. distinguished the British case of Falcon v. Famous Players Film Co., [1926] 2 K.B. 474 (C.A.), on the grounds that, in Falcon, the defendant expressly purported to grant the right to exhibit a film, whereas in Muzak, there was insufficient evidence to suggest that Muzak gave such authorization. He then held (at page 193) that "[u]nless what is done by a defendant is to sanction, approve or countenance actual performance, it cannot be said, in [his] opinion, that it has `authorized' performance."

[107]In De Tervagne v. Beloeil (Town), [1993] 3 F.C. 227 (T.D.), at pages 235-248 (De Tervagne), the Trial Division of this Court relied largely on Muzak to conclude (at pages 243-244) that merely owning or arranging for the rental of a hall in which a play was performed did not constitute authorization of that performance. Neither the owner of the hall in which a play was performed, nor the non-profit corporation that rented the hall authorized a performance of a certain play because they "exercised no control over the producer of the play" (at page 248).

[108]Similarly, the House of Lords refused to find a seller of dual cassette recorders liable for authorizing reproductions, since the seller had "no control over the use of their models once they are sold" (see CBS Songs Ltd v Amstrad Consumer Electronics plc, [1988] 2 All ER 484 (H.L.), at pages 492-494).

[109]However, this case is distinguishable from those described above, since in those cases, the defendants merely supplied the means necessary to infringe copyright. The Law Society does much more than merely supply a device that may be used to "produce or reproduce" the Publishers' works, unlike for example, manufacturers, distributors or retailers of photocopiers. Although the Law Society does not expressly purport to grant its patrons the right to make reproductions, no other inference can reasonably be drawn from the Law Society's provision of and control over its free-standing photocopiers, which are readily available to patrons of the Great Library, which is full of materials like the Publishers' works. It is clear, therefore, that the Law Society implicitly sanctions, approves or countenances its patrons to "produce or reproduce" the materials in the Great Library. To use a variation of the analogy of Rand. J. in Muzak, supra, it is as if the Law Society operates a game park, and provides each of its invited guests with a loaded gun. The Law Society is more akin to the restauranteur in Vigneux, on whose premises the juke box was located, than to the distributor. In De Tervagne, one who not only arranged the performance of a play, but also provided the script, would almost surely have been be said to authorize its performance. Similarly, I doubt that the House of Lords would absolve the seller of dual cassette recorders of liability, had they facilitated copying of music provided by them on their premises.

[110]The only effort by the Law Society to exercise its control or influence over the use of the photocopiers has been merely to post a notice that it "is not responsible for infringing copies made by the users of these machines." The Law Society has taken no additional steps to monitor, to police or to otherwise dissuade its patrons from infringing copyright or to ensure that its photocopiers are used legitimately. This stance, which might be described as, "see no evil, hear no evil", is insufficient to demonstrate that it does not authorize patrons to "produce or reproduce" the Publishers' works.

[111]The Law Society argues that it is entitled to presume that the free-standing photocopiers will be used lawfully. Although it may be true that a person can initially presume that the protected act is carried out in accordance with the law, where the evidence suggests otherwise, such an assumption is unreasonable. In this case the evidence clearly shows that the Law Society has sufficient reason to suspect that not all patrons will use the free-standing photocopiers for legitimate purposes. Although the publishers have not referred to specific occasions of illegitimate uses, the Law Society admittedly anticipates such activity. In fact, its notice expressly acknowledges that "certain copying may be an infringement of copyright law". This is distinct from the situation in Muzak where, since all other customers obtained their own licences, it was reasonable to presume that the particular Canadian franchise would do the same. Similarly, in De Tervagne, there was no evidence whatsoever to suggest that the hall was to be used for an illegitimate purpose.

[112]Patrons of the Great Library may indeed use the free-standing photocopiers for lawful purposes, for example to make copies of non-copyright material or to reproduce copyright material as permitted by the fair dealing exemptions of the Act. If copyright does not subsist in the reproduced material, then no exclusive authorization right exists and authorizing a reproduction of that material is, therefore, not an infringement of copyright. If, however, copyright does subsist in the copied work, then authorization constitutes a distinct right granted to the copyright owner and the Law Society may be held liable for infringement of that right, regardless of whether or not the patron ultimately infringes the separate right to reproduce the copied work. Importantly, section 30.3 [as enacted by S.C. 1997, c. 24, s. 18] of the Act, which will be discussed below, establishes a mechanism whereby the Law Society can avoid liability for offering free-standing photocopiers if it meets certain criteria.

[113]In sum, it is clear that patrons of the Great Library will "produce or reproduce" the Publishers' works. The Law Society implicitly "authorize[s] any such acts" by providing both readily available photocopiers and a vast collection of the Publishers' works together in an environment that they control. Rather than attempting to exercise such control to prevent copyright infringement, the Law Society merely posted a notice indicating that it was not responsible, thereby implicitly sanctioning, approving and countenancing its patrons' reproductions. In this case, there is clearly sufficient evidence to alert the Law Society, and in fact, it acknowledges that the photocopiers may be used illegitimately. Therefore, the Law Society infringes the Publishers' right to authorize reproductions of their works.

[114]I am comforted that the same result has been reached by the Australian High Court in Moorhouse v. University of New South Wales, [1976] R.P.C. 151 where a university library made free-standing photocopiers available to its patrons. The Court noted that the university knew or had reason to suspect that the photocopiers were likely to be used for purposes of committing an infringement. It is also expected that "UK courts would reach a similar conclusion" with respect to self-service photocopiers (see Sir Hugh Laddie et al., The Modern Law of Copyright and Designs, 3rd ed. (London: Butterworths, 2000), at page 1592).

2. Secondary Infringement

[115]As mentioned, subsection 27(2) of the Act makes it an infringement of copyright for a person to deal in certain ways with copies of works that infringe copyright and that the person knows or should know infringes copyright. The Trial Judge held that the Law Society did not sell, but did distribute copies of the publishers' works. First, the Law Society submits that the Trial Judge erred in failing to consider the knowledge requirement of subsection 27(2). More particularly, the Law Society argues that it cannot be held liable for secondary infringement because it had a reasonable belief that copies made through its custom photocopying service would not infringe copyright. This argument raises two concerns.

[116]First, as will be discussed below, the Act declares that fair dealing with the Publishers' works is not an infringement of copyright (see section 29 [as am. by S.C. 1997, c. 24, s. 18]). Thus, if the fair dealing provisions apply and copies made through the Law Society's custom photocopying service, therefore, do not infringe the Publishers' copyrights, then there can be no secondary infringement. That is, the Law Society cannot be held liable for selling, distributing or possessing infringing copies of the Publishers' works if the reproductions themselves do not infringe copyright.

[117]Second, even if the fair dealing exemptions do not apply, then the Law Society argues that a reasonable belief that the exemptions did apply is sufficient to avoid liability for secondary infringement. That is, the Law Society submits that it did not know and ought not to have known that the copies were infringing, since it reasonably believed that the fair dealing provisions applied. Hence, the question is whether a reasonable but mistaken belief that the copies do not infringe copyright is sufficient to deny liability for secondary infringement.

[118]As will be discussed below, there is insufficient evidence before this Court for me to make a definitive conclusion about whether or not the fair dealing exemptions apply to any particular allegations of infringement in this case. It is also impossible for me to universally declare that all copies provided through the Law Society's custom photocopying service do or do not infringe copyright due to the fair dealing exemptions. Without the ability to decide whether or not particular copies made by the Law Society do indeed infringe the Publishers' copyrights in specific works, it is impossible for me to properly assess the Law Society's liability for secondary infringement.

[119]Justice Rothstein also recognizes that no primary infringement, and consequently no secondary infringement, can occur if the fair dealing exemption applies. However, he goes on to analyse secondary infringement, notwithstanding that, in his opinion, it is impossible to say whether or not the fair dealing exemption applies. In my view, such analysis is unnecessary and, therefore, this Court should not deal with these complex issues of secondary infringement, such as whether or not a reasonable but mistaken belief that the fair dealing exemption applies is sufficient to avoid liability for secondary infringement, or whether or not there was a sale of the Publishers' works. I would prefer not to decide whether the Trial Judge erred in law in failing to consider the knowledge requirement, or in his conclusions regarding the sale, distribution and possession by the Law Society of the Publishers' works. Unlike the Law Society's cross-appeal regarding the fairness of its "Access to the Law Policy", these issues are not central to the resolution of this case.

[120]However, because Justice Rothstein has chosen to undertake an analysis of some of these issues, it is incumbent on me to indicate that I disagree with his analysis of the sale issue, as well as with that of the Trial Judge. In my view, the presence of profit is not a necessary component of a sale, and the Trial Judge was mistaken to conclude otherwise. Nevertheless, I am not convinced that the Law Society is "selling" copies of the Publishers' works. While I agree with Justice Rothstein that this is not a research service, I think it is a photocopying service that generally enables patrons to avoid the inconvenience of physically travelling to the Great Library to personally obtain legal materials.

[121]In addition, although I neither agree nor disagree with Justice Rothstein's lengthy discussion regarding the knowledge requirement, I do note that the Act suggests that, unlike "infringement generally" under subsection 27(1), secondary infringement under subsection 27(2) is not a strict liability provision. Since fault is necessary, a finding of infringement would typically require not only that a belief be honest, but that it also be reasonable. To me, this would lessen any concern that a secondary infringer could avoid liability by simply relying upon his or her own subjective belief.

C. Do Any Exemptions or Defences Apply to the Law Society?

[122]Having established that the Law Society's custom photocopying service prima facie infringes the Publishers' exclusive right to reproduce their works, it is necessary for me to consider whether any exemptions or defences apply to the Law Society. The Law Society's primary argument is that it is not liable for copyright infringement by virtue of the fair dealing provisions in the Act. Alternatively, the Law Society argues that it ought not be held liable due to various public policy, equitable and Constitutional defences. I will deal with these arguments in turn.

1. Fair Dealing

[123]The fair dealing analysis in this case is complicated by the fact that, unknown to it at the time, the Law Society dealt with the Publishers' works, on behalf of the Publishers' counsel, for the purpose of researching the Publishers' litigation against the Law Society. Thus, it is arguable that the reproductions by the Law Society of the Publishers' eleven specific works were implicitly authorized and, therefore, made fairly. However, little or no evidence or written or oral argument was directed at this problem or the fairness of any particular dealings. Rather, like the allegations of infringement, arguments were directed at the implications of the Law Society's activities under its "Access to the Law Policy" generally, not at specific actions or events. Because a full assessment of fair dealing can only be made in a fact-specific context, I cannot make any definitive pronouncement on the fairness in this case of the dealings by the Law Society with the Publishers' eleven specific works. However, since this is the central issue in the Law Society's cross-appeal and the Law Society relied so heavily on this defence and its "Access to the Law Policy", this Court must consider the fair dealing exemption and the applicable principles in order to help resolve the dispute between these parties.

[124]Section 29 of the Act (renumbered but otherwise unchanged pursuant to S.C. 1997, c. 24, subsection 18(1)) is one of the provisions that grants user rights:

29. Fair dealing for the purpose of research or private study does not infringe copyright.

[125]Additional exemptions with respect to purposes of criticism, review, and news reporting are listed under sections 29.1 [as enacted by S.C. 1997, c. 24, s. 18] and 29.2 [as enacted idem]. However, I will not deal with these provisions in detail, since the Law Society has placed little emphasis on their application to the normal activities related to its custom photocopying service.

[126]The Publishers' first argument is that the Act's exemptions, such as the fair dealing provisions, ought to be narrowly construed. It is true that the Supreme Court of Canada has indicated that courts ought not imply exceptions in addition to those expressly included in the Act by Parliament (see Bishop v. Stevens, supra, at pages 480-481). However, this does not mean that we must narrowly interpret the exemptions that Parliament has established. The Trial Judge erred in law when he stated that exceptions to infringement must be "strictly construed" (at paragraph 175). There is no basis in law or in policy for such an approach. An overly restrictive interpretation of the exemptions contained in the Act would be inconsistent with the mandate of copyright law to harmonize owners' rights with legitimate public interests (see Vaver, Copyright Law, supra, at pages 170-171). Instead, courts should employ the usual modern rules of purposive construction in the context (see R. Sullivan, Driedger on the Construction of Statutes, 3rd ed. (Toronto: Butterworths, 1994) at page 131). As Professor Vaver has pointed out, "User rights are not just loopholes. Both owner rights and user rights should therefore be given [a] fair and balanced reading" (see Copyright Law, supra, at page 171). Simply put, any act falling within the fair dealing exemptions is not an infringement of copyright.

a. Allowable Purposes

[127]The first task is to define the scope of each allowable purpose under section 29 in order to determine whether the Law Society's activities might fall within that scope. Importantly, the categories of allowable purposes under our Act are closed, unlike under the American doctrine of fair use (see 17 U.S.C. § 107 (1994)). If the purpose of the dealing is not one that is expressly mentioned in the Act, this Court is powerless to apply the fair dealing exemptions. If the purpose of a dealing is an allowable purpose, this Court may then embark upon a separate, but related investigation as to the fairness of that dealing.

[128]With respect to the purposes listed in section 29, "research" is not modified whereas "study" is required to be "private". Parliament's decision to expressly qualify "study" but not "research" indicates an intention to permit all fair research, whether in a private setting or not (see Vaver, Copyright Law, supra, at pages 195-196; Television New Zealand Ltd. v. Newsmonitor Services Ltd., [1994] 2 NZLR 91 (H.C.)). Therefore, I do not agree with the Publishers' submission that research can never take place where a work is dealt with in a non-private context. Similarly, I do not agree with the Publishers that commercial research cannot be an allowable purpose. "Research" is not qualified in the Act, therefore, research for a commercial purpose, including legal research carried out for profit by entities such as law firms, is not automatically excluded from this exemption. Research for the purpose of advising clients, giving opinions, arguing cases, preparing briefs and factums is nonetheless research. Of course, if a copy is made for non-private or commercial research purposes, such a fact may affect the fairness of the dealing.

[129]Section 29 qualifies "study", however, with the adjective "private". Therefore, non-private study is not an allowable purpose (see Vaver, Copyright Law, supra, at pages 195-196). British courts have held that use in an educational institution was not for the purpose of private study (see University of London Press, supra). Thus, for example, if a law professor requests a copy of a work for the purpose of distributing it among his or her students, such a request would not be for the purpose of private study. If, on the other hand, an articling student requests a copy of a work for his or her own learning, that request could be for the purpose of private study.

[130]The Publishers submit that one may deal fairly only for one's own purposes (see Vaver, Copyright Law, at page 193). The Law Society suggests that the statutory language speaks to the broader purpose of the dealing, and is not concerned with who actually carries out the allowable purpose. The Trial Judge held that the Law Society's copying service was not for a purpose within the ambit of fair dealing, notwithstanding that the ultimate use of the works might have been (at paragraph 175). He narrowly defined the Law Society's purpose as facilitating research, rather than research per se. Since there is little or no Canadian jurisprudence directly addressing this issue, I will examine the approach of foreign jurisdictions.

[131]In the British case of Sillitoe and Others v. McGraw-Hill Book Co. (U.K.) Ltd., [1983] F.S.R. 545 (Ch. D.), the importer and distributor of study aids was not permitted to escape liability using the defence that the ultimate use of the infringing works was for students' private study or research. Similarly, the Court in University of London Press, supra interpreted private study as not including educational purposes, and therefore did not allow professors to claim an exemption based upon their students' purposes. In De Garis v. Neville Jeffress Pidler Pty. Ltd. (1990), 37 F.C.R. 99, the General Division of the Federal Court of Australia decided to extend the principle in Sillitoe to a situation where a commercial enterprise actively monitored certain subjects in the news and provided clients with photocopies of related media articles. Also, a New Zealand court, in Longman Group Ltd. v. Carrington Technical Institute Board of Governors, [1991] 2 NZLR 574 (H.C.), stated in obiter that, if required to decide the issue, it would ave relied upon earlier British decisions and agreed that the use for research or private study must be that of the compiler.

[132]The Law Society is correct that these cases are all distinguishable on the facts. The Law Society has no purpose for copying the Publishers' works other than to fulfill the purpose of requesters. It does not perform this task for its own economic benefit, but as a service to researchers and studiers. Its only aim and design is to assist users of the Great Library in conducting research or private study, and it can, therefore, be said to have adopted that purpose as its own. The entities in the cases mentioned above had ulterior motives and simply tried to adopt customers' or students' purposes as their own in order to escape liability. Moreover, the otherwise infringing activity is carried out by the Law Society only in response to a patron's request. But for the end user's request, the Law Society would not carry out any of these allegedly infringing activities. In the foreign cases mentioned above, the otherwise infringing activity was initiated by the alleged infringer, rather than the end user.

[133]Barry Torno, in Fair Dealing: The Need for Conceptual Clarity on the Road to Copyright Revision, Ottawa: Consumer and Corporate Affairs Canada, 1981, at page 45, has suggested that it is appropriate to consider:

the party who initiates the duplication for the purpose of private study or research and not the agent who carries out the act of duplication. . . . If the use is "fair", it is not unreasonable to suppose that the means by which the single copy required is produced for the particular purpose and person concerned may be irrelevant.

[134]Therefore, notwithstanding that the Law Society did not personally undertake research or private study, I am convinced that the Law Society shares the purposes of individual patrons of the Great Library. However, this finding alone does not amount to an exemption from infringement, but merely crosses the threshold of fair dealing. This Court must still assess whether the dealings were fair.

b. The Library Exemptions

[135]Before assessing the fairness of the dealings related to the Law Society's custom photocopying service, I would point out that recent amendments to the Act are consistent with my conclusion that, in considering the fair dealing exemption in the context of copies made by a library, archive or museum, the relevant purpose is that of the patron. Parliament has expressly enacted exemptions for libraries, archives and museums to give such entities "latitude to carry out their vital service of making knowledge and data easily accessible to Canadians." (see Vaver, Copyright Law, at page 201; S.C. 1997, c. 24, section 18). The provision most relevant to the circumstances of this case is subsection 30.2(1) [as enacted by S.C. 1997, c. 24, s. 18] of the Act, which states:

30.2 (1) It is not an infringement of copyright for a library, archive or museum or a person acting under its authority to do anything on behalf of any person that the person may do personally under section 29 or 29.1.

[136]Since the library exemptions came into force after the original hearings in this case, the Trial Judge did not consider their application in detail. However, the parties now seek guidance for the future, not remedies for past conduct. Therefore, I will consider the law as it now is, and therefore, first decide whether the Law Society's Great Library qualifies as a "library, archive or museum".

[137]Section 2 defines a "library, archive or museum" [as enacted by S.C. 1997, c. 24, s. 1] as follows:

2. . . .

"library, archive or museum" means

(a) an institution, whether or not incorporated, that is not established or conducted for profit or that does not form a part of, or is not administered or directly or indirectly controlled by, a body that is established or conducted for profit, in which is held and maintained a collection of documents and other materials that is open to the public or to researchers, or

(b) any other non-profit institution prescribed by regulation;

[138]This definition establishes two criteria. First, the entity cannot be "established or conducted for profit", or cannot be "part of" or "administered or directly or indirectly controlled by, a body that is established or conducted for profit". Second, the entity's collection of material must be open "to the public or to researchers".

[139]With respect to the first of these requirements, the Law Society's Great Library is not an entity "established or conducted for profit", just as it is not "part of" a body established or conducted for profit. The parties have accepted (in paragraph 14 of their agreed statement of facts, reproduced in the Trial Judge's reasons) that the Law Society is "a statutory, non-profit corporation".

[140]I have also concluded that the Law Society's Great Library is not administered or directly or indirectly controlled by a body that is established or conducted for profit. The Law Society is administered and controlled by Benchers. The Benchers consist of elected representatives, lay Benchers appointed by the Lieutenant Governor in Council, the Attorney General of Canada, the Attorney General of Ontario, the Solicitor General of Canada, former ministers of such positions and several ex officio representatives such as former treasurers and life Benchers. The fact that members of the Law Society, many but not all of whom practice law for profit, elect some of the Benchers is insufficient to support a finding of direct or indirect control of the Law Society, or more particularly the committee that oversees the Great Library, by a body established or conducted for profit.

[141]Because the Great Library's custom photocopying service is not operated for profit, the Law Society also satisfies the requirement in section 29.3 [as enacted by S.C. 1997, c. 24, s. 18], which states:

29.3 (1) No action referred to in section 29.4, 29.5, 30.2 or 30.21 may be carried out with motive of gain.

(2) An educational institution, library, archive or museum, or person acting under its authority does not have a motive of gain where it or the person acting under its authority, does anything referred to in section 29.4, 29.5, 30.2 or 30.21 and recovers no more than the costs, including overhead costs, associated with doing that act.

According to subsection 29.3(2), the Law Society does not operate the Great Library with motive of gain since the fee charged for the photocopying service is intended to recover no more than the associated costs. The Publishers' have not submitted any evidence that indicates the Law Society recovers more than its costs.

[142]Regarding the second requirement in the definition of "library, archive or museum", the Publishers contend that the Law Society's collection of materials in the Great Library is not open to the public or to researchers, since no open invitation to use the Library is extended to every member of the public. However, I am satisfied that the evidence shows that the Great Library is indeed open to the public or to researchers. The Law Society's "Access to the Law Policy" states that the Great Library is open to "lawyers, articling students, the judiciary and other authorized researchers". Furthermore, there is nothing preventing other members of the public from using the Great Library, if certain arrangements are made. Thus, the Law Society's Great Library falls within the definition of a "library, archive or museum".

[143]Therefore, if a patron of the Great Library could make for him or herself a copy of the Publishers' works as fair dealing for an allowable purpose, the Law Society does not infringe copyright if it makes the copy on behalf of a requester. Whether the Law Society shares the purpose of its patrons, or claims the statutory exemption in subsection 30.2(1), the result is the same. The Law Society, in operating the Great Library, does not infringe the Publishers' copyrights by doing anything on behalf of a person that the person may do personally under the fair dealing exemptions. In essence, the Law Society can vicariously claim an individual end user's fair dealing exemption, and to step into the shoes of its patron.

c. Fairness

[144]Necessarily, fairness depends upon the context and facts of each particular case, and for that reason, "fair" is not defined in the Act. In the case of Hubbard v. Vosper, [1972] 2 Q.B. 84 (C.A.), at page 94, Lord Denning recognized that "[i]t is impossible to define what is `fair dealing.' It must be a question of degree. . . . it must be a matter of impression." In Compagnie Générale des Établissements Michelin-- Michelin & Cie v. National Automobile, Aerospace, Transportation and General Workers Union of Canada (CAW-Canada), [1997] 2 F.C. 306 (T.D.) (Michelin), at page 357, the Trial Division of this Court accepted that the overall use of the copyright must be fair and the copyright must be treated in a good faith manner. Like Lord Denning, the Court admitted that it was "a question of impression" (at page 357). The Ontario Court (General Division) in Allen v. Toronto Star Newspapers Ltd. (1997), 36 O.R. (3d) 201, at page 209, viewed the test as "essentially purposive".

[145]Despite these remarks, an assessment of fairness is not simply a subjective exercise, and there are a number of identifiable factors that might influence one's conclusion. A list of these factors has not been compiled by a Canadian court, nor is one contained in the Act. As our Act does not describe any specific factors to consider, it is incumbent upon this Court to do so as best it can.

[146]In Hubbard v. Vosper, supra, Lord Denning described (at page 94) some of the factors that may be relevant to a determination of the fairness of dealing for the purposes of criticism and review. He analysed the number and extent of quotations, the purpose of the dealing, whether the use was for a rival purpose, and the proportions of the extracts compared to independent comments. Some of these factors have been subsequently accepted and explained by the Court of Appeal in England in cases such as Pro Sieben Media AG v. Carlton UK Television Ltd., [1999] 1 W.L.R. 605 (C.A.) (Pro Sieben), and Hyde Park Residence Ltd. v. Yelland, [2000] 3 W.L.R. 215 (C.A.). However, these considerations, which are related to fair dealing in the context of criticism or review or reporting current events, do not neatly apply in every situation. Nevertheless, they may provide guidance for this Court to explore the factors relevant to fair dealing under Canadian law.

[147]17 U.S.C. § 107, which outlines the doctrine of fair use in the United States, directs American courts to consider a non-exhaustive list of factors, including the purpose and character of the use, the nature of the copyrighted work, the amount and substantiality of the portion used in relation to the copyrighted work as a whole and the effect of the use upon the potential market for or value of the copyrighted work.

[148]I realize the differences in the American legislation as compared to our own Act. Generally, American law is more favourable to copyright users than is Canadian law. In particular, 17 U.S.C. § 107 leaves open the types of purposes that may constitute fair use, unlike our Act, which specifies allowable purposes (see Hager, supra, at paragraph 47; Michelin, supra, at page 351; and Vaver, Copyright Law, supra, at page 190). However, this fact alone does not mean that we cannot "find some assistance in examining the experience in the United States", as Estey J. suggested, and consider these factors in an analysis of fair dealing (see Compo, supra, at page 367). Importantly, the distinction between Canadian and American law regarding allowable purposes has limited bearing on a discussion of the factors that influence whether dealing is fair.

[149]I am further comforted by the fact that Professor Vaver has described (in Copyright Law, supra, at page 191) many similar factors and implied that they may be applicable to Canadian law:

Several factors have been used to determine whether a dealing is fair: the purpose and character of the dealing; the nature of the source work; what and how much has been dealt with; the effect of the dealing on the potential market for or value of the source work; whether the source work was available within a reasonable time at an ordinary commercial price; and any reasonable guidelines accepted by joint owner and user interests.

[150]Assessing these observations in combination with the American and British factors, I have compiled a list of factors that should influence the fairness of the Law Society's dealings with the Publishers' works on behalf of patrons of the Great Library. Importantly, the elements of fairness are malleable and must be tailored to each unique circumstance. None of the factors are conclusive or binding, and additional considerations may well apply uniquely in the Canadian context. However, the following factors are usually among the non-exhaustive list of considerations: (1) the purpose of the dealing; (2) the nature of the dealing; (3) the amount of the dealing; (4) alternatives to the dealing; (5) the nature of the work in question; and (6) the effect of the dealing on that work.

i. The Purpose of the Dealing

[151]The first factor to consider regarding fairness is the purpose of a dealing. This consideration may be less important in Canada than in the United States, since fair dealing, contrary to fair use, relates only to a closed set of purposes. Necessarily, under Canadian law, the purpose must be an allowable purpose, mentioned expressly in the Act. However, there may be varying degrees of fairness within allowable purposes. For example, philanthropic research is more likely to be fair than commercial research. Similarly, it might be unfair dealing to compile a library of copies of the Publishers' works regarding a general legal topic, although arguably such dealing is for the purpose of research. On the other hand, it might be fair dealing to make a copy of a work for the purpose of limited research regarding a specific legal topic.

ii. The Character of the Dealing

[152]The character of the dealing, that is the way or ways in which the allegedly infringed work was dealt with, may also be relevant to the fair dealing exemptions. The fact that reproduction of a single copy for a single requester, rather than general publication or widespread telecommunication for example, is the most significant activity typically carried out on behalf of patrons of the Great Library favours a finding of fairness. That is, it is more likely to be fair to deal with works privately than publicly.

iii. The Amount of the Dealing

[153]The American reference to "the amount and substantiality of the portion used in relation to the copyrighted work as a whole", and Lord Denning's mention in Hubbard v. Vosper [at page 94] of "the number and extent of the quotations and extracts" may be more applicable to cases of criticism and review, since those purposes implicitly suggest that existing works will be somehow incorporated into new works. Yet this factor may also be applicable with respect to other allowable purposes.

[154]Of course, one would not be required to analyse fair dealing if the portions taken from a work were not of sufficient quantity and quality to be considered substantial, for such dealing is not an infringement under Canadian law, regardless of section 29. For example, if a patron requested a part of a reported judicial decision that includes edited reasons for judgment, that may not constitute a substantial part of the work. If a patron requested only the headnote from a reported judicial decision, that would likely constitute a substantial part of the work. However, one may deal fairly with a substantial part of a work, or even with an entire work, without infringing copyright (see Vaver, Copyright Law, at pages 191-192).

[155]It is important to consider the number and types of requests made by a specific patron. It would be more unfair for one member of the Law Society or a single firm to frequently make requests for copies of a large number of works than to make only isolated requests for a copy of one work. To me, it would seem particularly unfair for one patron to request copies of multiple reported judicial decisions from the same series or volume over a short period of time; such a patron should be expected instead to purchase those works from the publishers.

iv. Alternatives to the Dealing

[156]Another important factor at this stage of our inquiry might be the availability of alternatives to the allegedly infringing dealing. The Publishers submit that it would be fair for patrons of the Great Library to achieve their purposes by buying the works they wish to copy. Alternatively, the Publishers argue that the Law Society should obtain a licence to carry out the custom photocopying service. In response, the Law Society argues that the availability of a licence should not be relevant to fair dealing, since activities that constitute fair dealing fall outside of the sphere of a copyright owner' rights. According to the Law Society, if fair dealing applies, then there is no infringement and no licence is required. An offer of a licence presupposes a copyright monopoly that can be licensed.

[157]This may be true with respect to the Law Society's custom photocopying service in general, however, the purpose of this discussion is to enable an analysis of the fairness of particular dealings by individual patrons of the Great Library. The fact that alternatives exist whereby patrons can otherwise obtain information contained in the Publishers' works cannot be ignored in an analysis of fairness. Broadly speaking, it is relevant to consider whether the material is reasonably available elsewhere, or whether the publishers have an effective monopoly. The more alternative sources there are for material, the less fair it may be to reproduce copyright material. Thus, it might be more fair to reproduce an obscure foreign decision that cannot reasonably be obtained elsewhere than it would be to copy a domestic decision that is reported in several different publications or readily available from a court.

[158]A related question is whether the dealing was reasonably necessary to achieve the ultimate purpose. For example, it would be unreasonable to expect all patrons to conduct their study or private research on the premises of the Great Library each time they wish to access the Publishers' works. This would be a heavy burden, especially for researchers outside of Toronto, who account for roughly 20% of the requests. Likewise, researchers are not permitted to remove materials contained in the Great Library's collection, due to the demand for works contained therein from other lawyers. Thus, the necessity of dealing with the Publishers' works by obtaining a copy thereof from the Great Library supports a finding of fairness, although such dealing may be less fair where it is reasonable for an individual to carry out his or her research without making a copy of the Publishers' work.

v. The Nature of the Work

[159]It is generally in the public interest that access to judicial decisions and other legal resources not be unjustifiably restrained. The Law Society provides a valuable service in facilitating access to important legal publications. The justice system requires that lawyers, students, professors and judges can utilize these necessary research tools. However, the fact that access to legal publications is in the public interest does not imply that copying such publications is always fair dealing. On the contrary, these legal works must be protected to ensure that their authors are not deprived of financial incentives to continue producing original legal works. Of course, herein lies the challenge of interpreting the fair dealing exemption. However, whether easy public access outweighs the need for incentives to ensure that such works continue to be produced can only be assessed in the context of more specific facts.

vi. The Effect of the Dealing on the Work

[160]The Publishers submit that the economic effect of the Law Society's dealing on the value of their works is a very important consideration. The United States Supreme Court has placed heavy emphasis on this factor (see Campbell v. Acuff-Rose Music, 114 S. Ct. 1164 (1994)). I also believe that this factor is significant, and am comforted that my British counterparts feel likewise. Lord Justice Robert Walker of the Court of Appeal stated, in Pro Sieben, supra, at page 613, that the "degree to which the challenged use competes with exploitation of copyright by the copyright owner is a very important consideration, but not the only consideration." For example, it may be unfair for a patron to request a copy of the Publishers' works to incorporate into his or her own competing work. Thus, the fairness of particular dealing might be influenced by the degree to which the market for the reproduced work has been diminished. That determination, however, depends largely on a finding of fact that I am unable to make here.

d. The "Access to the Law Policy"

[161]The Law Society seeks a ubiquitous declaration that fulfilling requests for single copies of reported judgments, statutes or regulations, or for limited selections of text from legal treatises, digests or other reviews of the law, for the purpose of research, in accordance with its "Access to the Law Policy", constitutes fair dealing. This Court, however, cannot legitimize its entire photocopying operation with a blanket statement. Not only is it impossible to generalize with respect the Law Society's dealings because of the variability of the purposes of the patrons of the Great Library, but likewise, one cannot categorically characterize all of the patrons' dealings as fair. Determining the fairness of a given dealing is enormously complex, and it must always be uniquely fact-specific. Just as the subsistence of copyright and allegations of infringement must be proven by copyright owners, the Law Society must establish, on a balance of probabilities, its vicarious reliance upon a patron's fair dealing exemption each time an infringement is alleged.

[162]The Law Society attempts to fulfill an honourable mandate of providing the community with access to its extraordinary collection of legal resources. Indeed, the Great Library serves an important purpose in disseminating the knowledge and wisdom contained within its archives. Although it has not always done so since the inception of its photocopying service in 1954, the Law Society has made efforts since 1996, through its "Access to the Law Policy", to ensure that its patrons' purposes were for research or private study, or other allowable purposes. There is no doubt that the Law Society generally acts in good faith and discourages abuses of its services.

[163]However, even though the Law Society's purposes may be selfless, this does not mean that the same can always be said of all patrons of the photocopying service. Between 1988 and 1997, the number of requests per year ranged from 3,146 to 4,477, and in each year the Law Society copied an average of about 100,000 pages of material. Assuming that a not insignificant portion of the Law Society's copying might amount to prima facie infringement, the volume of such copying prevents me from making the declaration sought by the Law Society. Due to the potential breadth and scope of dealings of patrons of the Great Library, I cannot make a universal assessment of the Law Society's claims of fair dealing.

[164]Although the Law Society may adopt the purposes of the Great Library's patrons as its own, those purposes might be different in each particular case. In a very large number of cases, a patron will request a work truly for research or private study. Other times, however, a patron might misrepresent the purpose of the request and falsely indicate that it is for an allowable purpose. This unpredictability is compounded by the Law Society's inability to effectively ensure that requesters are honest or accurate. Notwithstanding its efforts to comply with copyright law through warnings and its adherence to its "Access to the Law Policy", and that most requests will truly be for an allowable purpose, the Law Society cannot guarantee the legitimacy of the motives and dealings of its patrons in every case, nor can it ensure that its service will not be abused.

[165]Furthermore, even if the Law Society could somehow ensure that persons who request materials are forthright in disclosing the true purpose of a request, the Law Society cannot verify the fairness of its patrons' dealing. A large proportion of requests may be from patrons whose dealings are nothing but fair, but there may be some that are not. It is impossible for me to conclude that each of the dealings by patrons of the Great Library is always fair, since undeniably, each otherwise infringing activity will have to be considered in light of its own particular circumstances.

[166]Therefore, good faith reliance on its policy is insufficient to absolve the Law Society of all potential liability. The Publishers must recognize that if the Law Society strictly adheres to its policy and monitors requests, there will likely be only rare occasions where a request for an objectionable purpose would be filled. However, although the Policy is helpful to screen out potential requests that would not be for an allowable purpose or would not be fair, that only limits the Law Society's potential exposure to liability; it does not absolve it from all responsibility. The Policy is insufficient to categorically establish fair dealing with respect to every single request.

[167]The Publishers seem to suggest that one of the factors that makes the Law Society's custom photocopying operation unfair is the volume of copying. However, in order to avoid liability, the Law Society does not rely upon its own fair dealing exemption, but upon the exemptions of its patrons. Notably, the Law Society can claim different patrons' fair dealing exemptions an infinite number of times, since it would be contrary to the purpose of the library exemptions to limit the number of times a library, archive or museum may copy a work on behalf of different persons. In fact, the library exemptions are intended to allow such institutions to disseminate works to a large number of different persons, on the condition that each dealing is fair.

e. The Exemption for Free-Standing Photocopiers

[168]As discussed above, the Publishers have objected to the fact that the Law Society maintains free-standing photocopiers in the Great Library. This activity is a prima facie infringement of the Publishers' right to authorize persons to produce or reproduce the Publishers' works under subsection 3(1) of the Act. However, the Act allows certain institutions to maintain free-standing photocopiers and sets out criteria whereby those institutions can avoid liability for authorizing reproductions. Section 30.3 states:

30.3 (1) An educational institution or a library, archive or museum does not infringe copyright where

(a) a copy of a work is made using a machine for the making, by reprographic reproduction, of copies of works in printed form;

(b) the machine is installed by or with the approval of the educational institution, library, archive or museum on its premises for use by students, instructors or staff at the educational institution or by persons using the library, archive or museum; and

(c) there is affixed in the prescribed manner and location a notice warning of infringement of copyright.

(2) Subsection (1) only applies if, in respect of a reprographic reproduction,

(a) the educational institution, library, archive or museum has entered into an agreement with a collective society that is authorized by copyright owners to grant licences on their behalf;

(b) the Board has, in accordance with section 70.2, fixed the royalties and related terms and conditions in respect of a licence;

(c) a tariff has been approved in accordance with section 70.15; or

(d) a collective society has filed a proposed tariff in accordance with section 70.13.

[169]There is no evidence that the Law Society has entered into an agreement with any collective or that any of the other requirements listed in subsection 30.3(2) have been met. Hence, the Law Society cannot rely on this exemption to avoid liability for infringement of the Publishers' authorization right.

2. Constitutional, Public Policy and Equitable Defences

[170]The Law Society has raised several issues that were not expressly addressed elsewhere in these reasons. First, the Law Society's factum strongly encouraged this Court to take account of Constitutional and Charter [Canadian Charter of Rights and Freedoms, being Part I of the Constitution Act, 1982, Schedule B, Canada Act 1982, 1982, c. 11 (U.K.) [R.S.C., 1985, Appendix II, No. 44]] values, such as the rule of law, equality, and access to justice, to defend its photocopying service. Like the Trial Judge stated (at paragraph 168), I also do not believe:

. . .the public interest in the due administration of justice, the maintenance of the rule of law and the enhancement of basic constitutional values through relatively equal, unrestricted access to the law would be significantly impaired through recognition and enforcement of any copyright interests that the plaintiffs might have in the works in issue.

In particular, one of the ways that the Law Society might fulfill its mandate of providing access to justice is by photocopying only the reasons for judgment, which I have suggested might constitute only an insubstantial part of some reported judicial decisions.

[171]Moreover, broadly speaking, I have implicitly considered the values advocated by the Law Society in balancing of the Publishers' rights with the public interest. To me, the Publishers' rights must also be fairly recognized in order to guarantee incentives to continue to provide original legal publications, in furtherance of the values the Law Society describes. Further explicit considerations of these issues are not warranted here, since constitutional conclusions ought not be made in a factual vacuum, especially wherevalues are asserted on behalf of hypothetical third parties (see Benner v. Canada (Secretary of State), [1997] 1 S.C.R. 358, at page 397; Hy and Zel's Inc. v. Ontario (Attorney General); Paul Magder Furs Ltd. v. Ontario (Attorney General), [1993] 3 S.C.R. 675, at page 707; MacKay v. Manitoba, [1989] 2 S.C.R. 357, at pages 361-362, 366; and Schachter v. Canada, [1992] 2 S.C.R. 679).

[172]The Law Society also submits that it had an implied licence to make copies over the years, and that the Publishers are estopped from now claiming infringement because of their longstanding acquiescence to the photocopying service. Like the Trial Judge, I believe that there is no basis in equity or otherwise to prevent the Publishers from revoking an implied licence, even if one did exist. They are entitled to assert their legal rights. The cease-and-desist letter of March 29,1993 certainly indicates the Publishers' intention to do just that.

[173]I would also reject the Law Society's arguments that the Publishers' action should be defeated by delay, laches or acquiescence. There is no evidence that the Law Society has been prejudiced in any way by the fact that the Publishers have allowed the Law Society to carry out its photocopying service without formal objection in the past.

[174]Finally, the Law Society has argued that it has the exclusive right to publish judicial decisions of the Ontario courts, by virtue of the delegation of the Crown prerogative. They, therefore, submit that the Publishers cannot allege infringement of any work that incorporates those decisions. Judicial reasons are considered to be in the public domain (see Reproduction of Federal Law Order, Order in Council, P.C. 1995-1996, SI/97-5). Under Anglo-Canadian law, an author's work may have copyright notwithstanding that it consists of material that is in the public domain or based upon existing works in which copyright may subsist (Édutile, supra, at paragraph 22; and Redwood Music Ltd. v. Chappell & Co. Ltd., [1982] R.P.C. 109 (Q.B.) (dealing with copyright in a new arrangement of an existing musical work)). Of course, copyright in the underlying material is not prejudiced and a compiler might, therefore, be liable for infringement (see the Act, subsection 2.1(2); and Fox, supra, at pages 123-124). However, the Law Society has failed to prove, on a balance of probabilities, the existence or ownership of copyright in those underlying decisions, or the right to exclude others from publishing these reported judicial decisions. In fact, it seems to me to be contradictory for the Law Society to argue that the copyright cannot subsist in the Publishers' versions of those decisions, but that it can exclude others from producing or reproducing that same material.

D. Relief

[175]For all of the foregoing reasons, this appeal should be allowed in part. The Publishers have not sought damages but seek a number of declarations and a permanent injunction.

[176]This is not an appropriate case to grant a permanent injunction. It is impossible to say whether or not each and every one of the Publishers' works in the Great Library is an original literary, musical, artistic or dramatic work entitled to copyright protection under the Act. Moreover, it is impossible to generally deny the application of the fair dealing exemptions to the Law Society. Due to the variability of the purposes and fairness the Law Society's dealing on behalf of patrons of the Great Library, I cannot universally determine whether or not the fair dealing exemptions will apply to the Law Society in the future. Nor are the Publishers entitled to all of the declarations they seek. Most of them are unreasonably broad and are not supported by the evidence. However, the Publishers are entitled to a declaration that copyright subsists in their materials in issue before this Court, and that the Law Society has infringed copyright in the works that were reproduced.

[177]The cross-appeal of the Law Society must be dismissed. The Law Society is not entitled to a declaration that it has not infringed the Publishers' copyright in the works in issue in this case. It is not possible to conclude on the basis of the evidence in this case that the current practices of the Law Society do not or will not infringe copyright. The existence of the Law Society's "Access to the Law Policy", and the Law Society's adherence to its Policy, are not capable of categorically establishing an exemption to any prima facie infringements of the Publishers' copyrights that occur as a result of the Great Library's custom photocopying service. Similarly, the Law Society's failure to meet the requirements of the Act's exemption for liability from maintaining free-standing photocopiers prevents me from making a declaration as sought by the Law Society in that regard.

[178]I recognize that it may be burdensome for the Publishers to establish that all of their materials are original works. It may also be onerous to prove prima facie infringement every time a work is reproduced by the Law Society. Likewise, for the Law Society to prove a patron's legitimate purpose and fair dealing for each request will require considerable effort and cost on its part. That fair dealing might apply in an overwhelming number of cases does not establish that every patron's dealing is fair. Hopefully, through these reasons, I have provided the parties with sufficient guidance to enable them to negotiate a just compromise among themselves.

[179]The appeal, therefore, will be allowed in part and the cross-appeal dismissed. The issue of costs and the issue of the form of order are to be addressed in writing by the parties. If the parties agree, they must submit an order consented to as to form within 30 days of the date of these reasons. If the parties are unable to agree, the Publishers must serve and file submissions as to the form of order and costs within 40 days of the date of these reasons. The Law Society must serve and file its submissions as to the form and order and costs within 10 days of service of Publishers' material. The submissions must be limited to no more than 10 pages, double-spaced, with no more than 30 lines per page. The issuance of judgment will be deferred until an agreed form of order or submissions are received and considered.

Sharlow J.A.: I agree.

* * *

The following are the reasons for judgment rendered in English by

Rothstein J.A.:

INTRODUCTION

[180]I have had the opportunity of reading the reasons of my colleague Linden J.A. I am in agreement with his conclusions. However, my analytical approach to the issues of originality and infringement differ from my colleague's. Consequently, I have prepared these concurring reasons.

[181]CCH Canadian Ltd., Thomson Canada Ltd. (which carries on business as Carswell Thomson Professional Publishing) and Canada Law Book Inc. (the Publishers) publish legal materials. The Law Society of Upper Canada (the Law Society) operates the Great Library at Osgoode Hall in Toronto, which has one of the largest collections of legal publications in Canada.

[182]Over the years, the Law Society, upon request, has copied and forwarded legal materials from the Great Library's collection for a per-page fee intended to cover the associated costs. The Publishers did not previously object to the Law Society's copying activities, but in 1993, after delivering a cease-and-desist letter, they commenced this litigation. They assert that copyright subsists in their material, and that the Law Society's activities infringe their copyrights. The Law Society denies liability.

[183]The Publishers submitted 11 examples of their legal material at trial, in relation to which they asserted copyright infringement by the Law Society. The 11 examples are:

1. Three reported judicial decisions (the reported judicial decisions) of:

a. Meyer v. Bright (1992), as published in 94 D.L.R. (4th) 648 by Canada Law Book,

b. R. v. CIP Inc. (1992), as published in 71 C.C.C. (3d) 129 by Canada Law Book and

c. Hewes v. Etobicoke (1993), as published in CLLC ¶ 14,042 by CCH Canadian Ltd.

2. The three headnotes (the headnotes) in Meyer v. Bright, R. v. CIP, and Hewes v. Etobicoke, which, although included in the reported judicial decisions, are alleged to be stand-alone works subject to copyright.

3. One case summary of Confederation Life v. Shepherd (1992), as published in 37 A.C.W.S. (3d) 141 by Canada Law Book (the case summary).

4. One topical index, found at pages B1 - B13 of the [1997] G.S.T.C. book, as published by Carswell Thomson Professional Publishing (the topical index).

5. One annotated statute, E. L. Greenspan & M. Rosenberg, Martin's Ontario Criminal Practice 1999 (Aurora: Canada Law Book, 1998) (the annotated statute).

6. One textbook, B. Feldthusen, Economic Negligence: The Recovery of Pure Economic Loss, 2nd ed. (Toronto: Carswell, 1989) (the textbook).

7. One monograph by S. L. Kogon, "Dental Evidence" (the monograph), as it appears as chapter 13 in G. M. Chayko, E. D. Gulliver & D. V. Macdougall, Forensic Evidence in Canada (Aurora: Canada Law Book, 1991).

ISSUES AND ANALYSIS

[184]The threshold question is whether copyright subsists in the examples of the Publishers' material.

[185]If copyright subsists, the second issue is whether there has been prima facie infringement of the publishers' copyright by the Law Society.

[186]If there is prima facie infringement, the third issue is whether the fair dealing exemption under the Copyright Act applies to exempt the Law Society from liability for infringement.

[187]The fourth issue is what form of relief, if any, is appropriate.

DOES COPYRIGHT SUBSIST IN THE PUBLI-SHERS' LEGAL MATERIALS?

The requirement that the work be original

[188]Copyright law is purely statutory law, which simply creates rights and obligations upon the terms and in the circumstances set out in the Copyright Act, R.S.C., 1985, c. C-42, and its amendments (the Act). (See Bishop v. Stevens, [1990] 2 S.C.R. 467, at page 477, per McLachlin J. (as she then was) quoting Compo Co. Ltd. v. Blue Crest Music Inc. et al., [1980] 1 S.C.R. 357, at pages 372-373 per Estey J.)

[189]In order for copyright to subsist, the work in question must be original. Section 5 of the Copyright Act states:

5. (1) Subject to this Act, copyright shall subsist in Canada, for the term hereinafter mentioned, in every original literary, dramatic, musical and artistic work. . . . [Emphasis added.]

Are the Legal Materials a "Work"?

[190]Before considering whether the Publishers' legal materials are original, it is necessary to deal with a preliminary matter raised by the Law Society. The Law Society, relying on subsection 3(1) of the Copyright Act, submits that the headnotes, reported judicial decisions, case summary, topical index and monograph are not works and are, therefore, not entitled to copyright. Subsection 3(1) provides, in relevant part,

3. (1) For the purposes of this Act, "copyright", in relation to a work, means the sole right to produce or reproduce the work or any substantial part thereof in any material form whatever . . . .

[191]The Law Society says that subsection 3(1) distinguishes between "works" and "parts of works". For the phrase "any substantial part thereof" in subsection 3(1) to have any meaning, some reproduction by a person other than the copyright holder must be possible, i.e. of an insubstantial part. The Law Society, therefore, submits that some restrictions must exist on what copyright owners can claim as constituting a "work". If no restrictions exist then copyright holders will always claim that whatever was reproduced was the "work" and that 100% was therefore reproduced. This, in turn, leads to the phrase "any substantial part thereof" being rendered meaningless.

[192]Its position, therefore, is that the legal materials in question are mere parts of works and not works in themselves. Such a finding would open the door to the Law Society later being able to argue that its reproduction activities involved insubstantial parts of works and, consequently, did not infringe the copyright of the Publishers.

[193]The Law Society says that the "works" in question are correctly characterized as the volume in which a particular headnote, reported judicial decision or case summary appears, the [1997] G.S.T.C. book in which the topical index appears and the textbook which contains the Monograph.

[194]Subsection 3(1) refers to "work or any substantial part thereof". Therefore, at some level of disaggregation, material may not constitute a "work" but only an insubstantial "part thereof". The question is what test or criteria should be applied to material to determine if it is a "work" or mere "part thereof".

[195]The Law Society submits that the test for a work is first, the published form of what is used by persons making reproductions and, second, whether the material at issue was intended to exist as an independently publishable work. It then argues that the Publishers do not publish and sell individual headnotes, reported judicial decisions, case summaries, topical indexes or portions of textbooks. Rather, they publish and sell textbooks and series of reported judgments and case summaries. Therefore, the materials at issue here are parts of works only and not works.

[196]The Law Society's argument is based on the implicit assumption that anything less than the published form must be a part. However, this argument ignores the recognition in section 2 of the Copyright Act of "collective works" and "compilations":

2. . . .

"Collective work" means:

. . .

(c) any work written in distinct parts by different authors, or in which works or parts of works of different authors are incorporated.

"compilation" means:

(a) a work resulting from the selection or arrangement of literary, dramatic, musical or artistic works or of parts thereof, or

(b) a work resulting from the selection or arrangement of data.

[197]It is apparent from these definitions that a collective work may consist of works of different authors and that a compilation is a work that may result from the selection or arrangement of literary works. The collective works or the compilations may be the published forms. But components of the published forms may, according to these definitions, still be works. The Law Society's argument is, therefore, inconsistent with the words of the Act. Based on these definitions, the components of a published volume may themselves be works, even if they have not been individually published. For example, an otherwise unpublished poem contained in a published anthology of poems is still a work.

[198]However, I accept that some limitations must exist on the degree of disaggregation that is permissible when characterizing a work. It is, therefore, necessary to formulate an approach for deciding what is an acceptable degree of disaggregation and what is unacceptable. The definition of "every original literary, dramatic, musical and artistic work" in section 2 provides some guidance as to the approach Parliament intended the courts to take in construing whether materials constitute a work.

2. . . .

"every original literary, dramatic, musical and artistic work" includes every original production in the literary, scientific or artistic domain, whatever may be the mode or form of its expression, such as compilations, books, pamphlets and other writings, lectures, dramatic or dramatico-musical works, musical works, translations, illustrations, sketches and plastic works relative to geography, topography, architecture or science; [Emphasis added.]

By using the terms "includes" and "other writings", it is apparent that this definition is not intended to be exhaustive. The terms "work" or "production" as modified by the comprehensive "every" are expansive. It appears that Parliament intended that the term "work" be given wide scope. That is the approach I will use in conducting my analysis.

[199]By definition, a part is something less than a whole. The Shorter Oxford English Dictionary on Historical Principles (3rd ed.) defines "part" as:

1. That which with another or others makes up a whole; a certain amount, but not all, of any thing or number of things; a portion, division, section, element, constituent, piece.

Therefore, one attribute of a work which may be inferred from the Act's reference to parts of a work is that a work, at least generally, implies something that is whole or complete.

[200]I say "generally" because I do not wish to rule out the possibility that materials such as an unfinished manuscript may be a work. Perhaps substantial completeness might be a sufficient test. However, for the purposes of this case it is not necessary to go that far. In view of the wide scope which the Act intends with respect to the interpretation of the term "work", I do not think that additional tests or requirements for materials to qualify as works would be appropriate. As long as materials meet the completion test, they will qualify as works.

[201]Applying this principle to the Publishers' legal materials, I turn first to whether the headnotes may be correctly characterized as "works". I find that each headnote is complete in the sense that it provides a summary of the judicial reasons to which it relates and it does not depend on other parts of the volume in which it appears to serve this function. The headnotes are not dependent on the judicial reasons for meaning, although of course, the judicial reasons provide the full analysis. Therefore, because no further work is required for the headnotes to fulfill their function of informing readers of the salient elements of the judges' reasons I find they are complete, and that each therefore constitutes a "work".

[202]This reasoning is equally applicable to the case summary because the case summary has the same attributes and features as the headnotes.

[203]The reported judicial decisions consist of running heads, an indexed case name, catchlines, the headnote, authorities judicially noted, a statement of case, the names of counsel, the judicial reasons, including parallel citations, and a conclusion.

[204]The running heads are the references at the top of the pages to the volume and name of the case and page number. Among other things, they facilitate citing from the case in a factum or judgment. The indexed case name standardizes the court style of cause according to Canadian Legal Information Centre Standards for Case Identification. The catchlines are in bold type, and are very short statements prepared according to a general classification. In Meyer v. Bright, the catchlines starts with the general legal subjects ("insurance, damages"), then becomes more specific ("automobile insurance, no fault benefits" etc.), then move to the facts ("plaintiff suffering fractures affecting walking and weight-bearing") and conclude with a reference to statutes used in the decision. The catchlines precede the headnote which I have already described. The authorities judicially noted follow the headnote. The cases in the judge's reasons are listed and the publishers categorize them according to whether they have been applied, distinguished, considered or not followed. The statement of case is one sentence. In Meyer v. Bright, it states, "Action for damages for personal injuries arising out of a motor vehicle collision" and appears after the authorities judicially noted. Following the statement of case are the names of counsel, the judge's reasons and at the end, in italics, the disposition of the case, i.e. "Action dismissed".

[205]Each reported judicial decision enhances reference to the judge's reasons by incorporating features inserted for the efficiency of the reader. Each component pertains to the judge's reasons. It is not necessary for the reader to look at anything else to make use of the reported judicial decisions. I am satisfied that each reported judicial decision is a work.

[206]The monograph is, by definition, a separate treatise on a single subject. It is complete on its own because it does not depend on any other part of the textbook to give it meaning or coherence. It is, therefore, a work.

[207]Finally, with respect to the topical index, no more work is required for it to fulfill its function. However, the topical index refers to cases in the body of the [1997] G.S.T.C. book. In this context, the [1997] G.S.T.C. book is integral to the topical index. In this sense, it is a part of a work and not a work itself. However, it may still be a substantial part of the [1997] G.S.T.C. book. On the other hand, it may be that a reference in the topical index could lead a reader to a case at a source outside of the book. If so, the topical index might be considered to be complete and usable on its own and, therefore, might constitute a work. Because I have some doubt on this point, I prefer not to decide this question and to deal with the Law Society's alleged reproduction of the topical index in the substantial infringement portion of these reasons.

Are the Legal Materials Original?

[208]The Trial Judge found that the annotated statute, the textbook and the monograph were original. However, he decided that the reported judicial decisions, headnotes, the case summary and the topical index were not original. Although he found that the reported judicial decisions, headnotes, the case summary and the topical index involved "extensive skill, labour and judgment", the Trial Judge was of the opinion that, in addition, originality required intellect and creativity which he found were missing. At paragraph 139, he stated:

While the evidence before the Court demonstrates, beyond a doubt, that the preparation of the reported judicial decisions, including the headnote, catchlines, parallel citations, running heads and other matter added by the publisher, in respect of the three decisions in question, involved extensive labour, skill and judgment, I am satisfied that the whole process, particularly those elements involving skill and judgment, lacked the "imagination" or "creative spark" that I determine to now be essential to a finding of originality. I am satisfied that editorially enhanced judicial decisions should be measured by a standard of intellect and creativity in determining whether they give rise to copyright, in the same way as compilations of data might be said to be measured following the decision of the Federal Court of Appeal in Tele-Direct. Article 2 of the Berne Convention, 1971, I am satisfied, clearly reaches to the form of alterations of literary works represented by the case reports here at issue, but those case reports simply lack the "original expression" and fail to constitute the "intellectual creations" contemplated by that Article and, more particularly, Article 1705 of NAFTA as reproduced in the Tele-Direct decision. . . . To revert, once again with some trepidation, to the words of Matthew . . . Bender which I am satisfied are equally apt under Canadian law to the facts of this matter:

for West or any other editor of judicial opinions for legal research, faithfulness to the public-domain original is the dominant editorial value, so that creativity is the enemy of the true. [Emphasis added by Trial Judge.]

[209]I am of the opinion that Gibson J. was correct in holding that the annotated statute, the textbook and monograph were original. The Law Society does not dispute these findings and I need not dwell on them further. However, in my respectful view, Gibson J. erred in finding that the headnotes, the case summary and the reported judicial decisions were not original.

[210]I commence my analysis of originality by reference to the fundamental principles of originality.

[211]First, copyright law protects expressions of ideas, but not ideas themselves. In University of London Press v. University Tutorial Press, [1916] 2 Ch. 601, at page 608, Mr. Justice Peterson wrote:

The word "original" does not in this connection mean that the work must be the expression of original or inventive thought. Copyright Acts are not concerned with the originality of ideas, but with the expression of thought . . . in print or writing. The originality which is required relates to the expression of the thought.

(See also Canadian Admiral Corpn. Ltd. v. Rediffusion Inc., [1954] Ex. C.R. 382; and Prism Hospital Software v. Hospital Medical Records Institute, [1994] 10 W.W.R. 305 (B.C.S.C.)). When considering whether the legal materials in question are original, therefore, the focus is on originality of the expression of thought and not on originality of the thought itself.

[212]Second, there can be no copyright in facts. This point is well settled and was set out by Lord Erskine in Matthewson v. Stockdale (1806), 33 E.R. 103 (Ch. D.), at page 104:

All human events are equally open to all, who wish to add or improve the materials, already collected by others; making an original work. No man can monopolize such a subject.

See also Deeks v. Wells, [1931] O.R. 818 (App. Div.), at page 834 (affirmed [1933] 1 D.L.R. 353 (P.C.); and Zamacoïs v. Douville et al. (1943), 3 Fox Pat. C. 44 (Ex. Ct.), at page 66.

[213]Third, the work in question must originate from its author and not be copied. University of London Press, supra, established (at pages 608-609) that:

. . . the Act does not require that the expression must be in an original or novel form, but that the work must not be copied from another work -- that it should originate from the author.

[214]Fourth, something in addition to not being copied is required. What this additional requirement is has been the subject of some disagreement in the jurisprudence. One school of thought is that the monopoly which flows from a finding of copyright will only be justified if some intellectual effort is expended by the author. This line of authority uses terminology such as skill, judgment and/or labour. See for example Ladbroke (Football), Ltd. v. William Hill (Football) Ltd., [1964] 1 All E.R. 465 (H.L.); Cramp (G.A.) & Sons, Ltd. v. Frank Smythson, Ltd., [1944] 2 All E.R. 92 (H.L.) and Slumber-Magic Adjustable Bed Co. v. Sleep-King Adjustable Bed Co., [1985] 1 W.W.R. 112 (B.C.S.C.).

[215]The other school of thought is that, at least in respect of compilations, only time and/or expense is necessary. See for example the early white pages business directory cases of Kelly v. Morris (1866), 1 L.R. Eq. 697; Morris v. Ashbee (1868), 7 L.R. Eq. 34; and Morris v. Wright (1870), 5 L.R. Ch. App. 279. This jurisprudence is the basis of the "sweat of the brow" or "industrious collection" approach as discussed by Finkelstein J. at paragraph 50 et seq. of his detailed analysis of the two approaches in Telstra Corporation Ltd v Desktop Marketing Systems Pty Ltd (2001), 181 ALR 134 (Aust. F.C.). Industrious collection has also found favour in Canada, see for example U & R Tax Services Ltd. v. H & R Block Canada Inc. (1995), 62 C.P.R. (3d) 257 (F.C.T.D.).

[216]From my review of the jurisprudence, it appears that the intellectual effort standard has been applied to all types of literary works, while the industrious collection standard has generally been applied only to compilations of facts, such as white page directories, or other public domain material.

[217]In the 1997 decision of this Court in Tele-Direct (Publications) Inc. v. American Business Information, Inc., [1998] 2 F.C. 22, Décary J.A. rejected the industrious collection school of thought for compilations of data. He reached this conclusion based on Article 1705 of the NAFTA and consequential changes to the Canadian Copyright Act, including the introduction of the current "compilation" definition (pursuant to North American Free Trade Agreement Implementation Act, S.C. 1993, c. 44). As a result of these changes, and having regard to United States jurisprudence (see Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340 (1991)), Décary J.A. concluded that compilations of data required at least a minimal level of creativity to be original.

[218]Gibson J. appears to have read Tele-Direct, supra, as creating some new and higher standard of originality than the intellectual effort represented by terminology such as skill, judgment and labour. This higher standard appears to be represented in Gibson J.'s reasons by such terminology as "imagination", "creative spark" and "intellect and creativity". However, I read Tele-Direct, supra, as merely re-iterating the requirement that some intellectual effort will be necessary in order for a work to qualify as original. Indeed, a key passage of Décary J.A.'s reasons, at paragraph 28, confirms that skill, judgment and labour are the proper factors to consider:

. . . for a compilation of data to be original, it must be a work that was independently created by the author and which displays at least a minimal degree of skill, judgment and labour in its overall selection and arrangement. The threshold is low, but it does exist. [Emphasis added.]

Therefore, I do not think that Tele-Direct, supra, created a new or different standard of originality. The analysis still involves whether sufficient intellectual effort has been expended by the author.

[219]I recognize that Tele-Direct, supra, may be read to eliminate the industrious collection approach to originality that has sometimes been used for compilations. I also recognize that debate continues over whether industrious collection or creativity is the better approach for determining the originality of compilations (see the discussion of the competing views in Telstra, supra, at paragraph 43 et seq.). However, I am mindful of the words of Estey J. in Compo Company Ltd., supra, at page 372, not to decide copyright cases on broader grounds than necessary:

Courts in this technical field of copyright have found it prudent to make their judicial answers congruent with the legal issues raised in the proceeding at hand leaving, so far as possible, analogies, examples and hypothetical questions to another day.

Therefore, given that I am not here concerned with compilations, it is not necessary to enter the debate involving compilations. I am satisfied that originality outside of compilations has always required evidence of some level of intellectual effort and that, in that context, Tele-Direct, supra, is consistent with this position.

[220]How much intellectual effort is required will vary upon the circumstances of each case. In Telstra, supra, Finkelstein J. noted at paragraph 64:

The cases have not defined with any precision what amount of intellectual effort, labour etc, is required to justify copyright. "In every case it must depend largely on the special facts of that case, and must in each case be very much a question of degree"; Macmillan & Co Ltd v Cooper (1923), 40 TLR 186 at 190. What is not clear is whether the intellectual effort, labour, etc, must be more than negligible or whether it must be substantial; see Kalamazoo (Aust) Pty Ltd v Compact Business Systems Pty Ltd (1985), 84 FLR 101 at 120-1; 5 IPR 213 where the cases expressing the competing views are collected.

[221]In sum, for purposes of this case, in the context of the legal material at issue here, I think that whether a work is original will be guided by the following principles:

1. The focus is on expression and not ideas or facts.

2. The work must originate from the author and not be copied.

3. Some intellectual effort is required. The necessary degree of intellectual effort will vary with the circumstances.

[222]In applying these principles, I commence with the headnotes. Each headnote contains a summary of the facts, the disposition of the case and a summary of the judge's reasoning. While, of course, the ideas contained in the judicial reasons must be reflected in the headnotes, that does not mean the headnotes are copies of the judicial reasons. The headnotes copy the ideas of the judicial reasons. However, they do not copy the form. The headnotes express, in the words of their authors, the salient ideas in the judicial reasons, but that expression is not the same as the judicial reasons themselves. Indeed, the headnotes are a summary of what the author considers to be the critical factual findings, analysis and conclusions of the judge who wrote the reasons. The headnotes are intended to inform the reader, quickly and efficiently, whether the judicial reasons are relevant to the reader's purposes, so that if they are, the reasons may then be read. Otherwise, they need not be read. From the evidence of Dean Felthusen, it is apparent that writing the headnotes requires an understanding of the judicial reasons, an ability to separate the important from the unimportant, and the capacity to write a coherent, comprehensive but succinct summary.

[223]Gibson J. found that the headnotes involved extensive skill, judgment and labour and I agree with this conclusion. While the amount of intellectual effort may vary with the circumstances of each case, certainly a finding of extensive skill, judgment and labour will be sufficient to establish originality in any circumstances. Once Gibson J. found that the headnotes involved extensive skill, judgment and labour, he implicitly found sufficient intellectual effort for originality. In my respectful opinion, Gibson J. erred by purporting to establish a higher standard of "imagination", "creative spark" and "intellect and creativity" and by concluding that extensive skill, judgment and labour were insufficient to justify a finding of originality. Extensive skill, judgment and labour having been found to be present, there is sufficient intellectual effort for purposes of the originality test.

[224]It is not necessary to analyse the case summary in detail. The case summary has the same attributes as the headnotes. It is the work of the author, is not copied and requires the same type of intellectual effort as the headnotes. Therefore, it is also original.

[225]I turn to the reported judicial decisions. Gibson J. found extensive skill, judgment and labour in relation to the reported judicial decisions. As in the case of the headnotes and case summary, the reported judicial decisions therefore necessarily evidence sufficient intellectual effort to be original.

[226]Accordingly, the Publishers should be entitled to copyright in the headnotes, the case summary and the reported judicial decisions

[227]Although I have found that the reported judicial decisions are original, and that the Publishers are entitled to copyright in them, I am cognizant of the Law Society's argument that public policy requires that judicial reasons be publicly accessible. Indeed, the judicial reasons are obviously not original to the publishers and it may seem incongruous to allow copyright in the reported judicial decisions when such a copyright necessarily includes the judicial reasons.

[228]This incongruity may seem all the more striking given that the Publishers could not gain an independent copyright in the edited judicial reasons alone. The only possible independent copyright claim the Publishers could have to the judicial reasons would be based on the editing of the reasons. However, that editing is insufficient to transform the judicial reasons from a literary work original to the judge to a literary work original to the Publishers. Whatever skill, judgment or labour was devoted to editing the reasons, the form of expression of the reasons remains unchanged in any material way from the unedited version produced by the judge. The edited version is still a copy of the unedited version. For that reason, it is not original to the publishers and they would not be entitled to independent copyright in the judicial reasons.

[229]However, although I have found that the reported judicial decisions are original and subject to Publishers' copyright, in practice this will not grant a monopoly to the Publishers over the use of the judicial reasons alone. Where the author of a book excerpts portions of transcripts of evidence or quotes other authors to prove a proposition or to explain what he or she has written, it may well be that the author may gain copyright over the entire book, even though portions within the book are not original to the author. In such a case, although the author may have copyright over the whole book, it will not be infringement for someone to copy only non-original portions (see Warwick Film Productions Ltd. v. Eisinger, [1969] 1 Ch. 508, at pages 533-534). By this reasoning, even though the Publishers have copyright over each reported judicial decision, it would not be infringement for someone to copy only the judicial reasons. I am, therefore, satisfied that granting the Publishers copyright in the reported judicial decisions as a whole will not prejudice the public policy objective of ensuring free public access to judicial reasons.

DID THE LAW SOCIETY INFRINGE COPYRIGHT IN THE PUBLISHERS' WORKS?

[230]Given that copyright subsists in the reported judicial decisions, headnotes, case summary and monograph, and no issues arise regarding ownership of those copyrights, it is necessary to determine whether those copyrights have been prima facie infringed. I use the term "prima facie" infringement as it recognizes that the fair dealing exemption may ultimately exempt the Law Society from what would otherwise constitute infringement. Consequently, at this stage of the analysis I am determining whether, assuming no fair dealing exemption exists, the Law Society has infringed the Publishers' copyrights.

[231]The Act sets out two broad categories of infringement: primary infringement and secondary infringement. Primary infringement prohibits the doing of any act that the copyright owner has the exclusive right to do. Secondary infringement prohibits a person from dealing with material that the person knows is the product of primary infringement. For example, primary infringement occurs if a person reproduces a copyrighted work (unless justified under the Act), and secondary infringement occurs if that infringing reproduction is subsequently sold by a person who knew that the reproduction constituted primary infringement. Each of these two broad categories of infringement contain several relevant sub-categories. I first address the primary infringement categories.

Primary Infringement

[232]The evidence shows that in 1993 the Law Society photocopied the reported judicial decisions of Meyer v. Bright and R. v. CIP, as well as the headnotes of those cases, the case summary and the monograph. In addition, in 1998 the Law Society photocopied the topical index. Subsection 27(1) of the Act in force in 1993 describes primary infringement as the doing, without the consent of the owner of the copyright, of anything that only the owner has the right to do:

27. (1) Copyright in a work shall be deemed to be infringed by any person who, without the consent of the owner of the copyright, does anything that, by this Act, only the owner of the copyright has the right to do

Subsection 27(1), as amended by S.C. 1997, c. 24, s. 15 states:

27. (1) It is an infringement of copyright for any person to do, without the consent of the owner of the copyright, anything that by this Act only the owner of the copyright has the right to do.

The 1997 changes appear to be minor and I see no substantive differences for the purpose of this case between the two versions of subsection 27(1). The 1993 and 1998 allegations of primary infringement may therefore be considered together.

[233]The Publishers allege three types of primary infringement pursuant to subsection 27(1) and subsection 3(1) of the Act. The Publishers argue first that the Law Society reproduced the Publishers' works; second, that the Law Society communicated the Publishers' works to the public by telecommunication; and third that the Law Society authorized its patrons to make reproductions on free-standing photocopiers situated in the Great Library. The relevant portions of subsection 3(1) setting out the statutory basis of these allegations provide:

3. (1) For the purposes of this Act, "copyright", in relation to a work, means the sole right to produce or reproduce the work or any substantial part thereof in any material form whatever, . . . and includes the sole right

. . .

(f) in the case of any literary, dramatic, musical or artistic work, to communicate the work to the public by telecommunication,

. . .

and to authorize any such acts. [Emphasis added.]

Primary Infringement -- Reproduction

[234]The Publishers allege that the photocopying activities of the Law Society in 1993 and 1998 infringed their exclusive right, granted by subsection 3(1), to "produce or reproduce the work[s] or any substantial part thereof". There is no dispute that a photocopy constitutes a reproduction. The Law Society's sole defence with respect to this allegation is that its reproductions were merely of insubstantial parts of the Publishers' materials.

[235]Where an entire work has been copied, I need not consider the phrase "any substantial part thereof". As discussed above, the reported judicial decisions, the headnotes, the case summary and the monograph, although perhaps also parts of larger works, are original works in themselves. Since the Law Society has reproduced these works in their entirety, it has prima facie infringed the Publishers' exclusive right to reproduce those works.

[236]The issue of substantial copying only arises in relation to the topical index, which, earlier in these reasons, I declined to characterize as a work. Therefore, the question is whether the Law Society's reproduction of the topical index constituted reproduction of a substantial part of the [1997] G.S.T.C. book. The Law Society does not dispute that the [1997] G.S.T.C. book is an original work.

[237]What constitutes reproduction of a substantial part of a work does not depend on a purely quantitative analysis. Indeed, substantiality may be assessed from a quantitative and/or qualitative perspective. In U & R Tax Services Ltd. v. H & R Block Canada Inc., supra, Richard J. (as he then was) provides the following summary of the law on substantiality, at page 268:

. . .what constitutes a "substantial part" is a question of fact and, in this respect, the courts have given more emphasis on the quality of what was taken from the original work rather than the quantity. Some of the matters that have been considered by Courts in the past include:

(a) the quality and quantity of the material taken;

(b) the extent to which the defendant's use adversely affects the plaintiff's activities and diminishes the value of the plaintiff's copyright;

(c) whether the material taken is the proper subject-matter of a copyright;

(d) whether the defendant intentionally appropriated the plaintiff's work to save time and effort; and

(e) whether the material taken is used in the same or a similar fashion as the plaintiff's.

[238]Evidently, the topical index is quantitatively minor (13 pages out of approximately 500 pages). However, on a qualitative basis, the topical index is a substantial part of the [1997] G.S.T.C. Book. Indeed, the topical index is of a condensed nature that enables researchers to efficiently locate topics of interest without resorting to flipping through the [1997] G.S.T.C. book in the hope of discovering a case relevant to their research. Therefore, although the topical index forms only a comparatively small quantitative portion of the work in question, it is so qualitatively integral to that work that copying it in its entirety constitutes reproduction of a substantial part of the [1997] G.S.T.C. book. The Law Society did not dispute that the 1997 G.S.T.C. book was original. Consequently, the Law Society has prima facie infringed the Publishers' exclusive right to reproduce a substantial part of the [1997] G.S.T.C. book.

[239]With respect to the textbook, the Law Society has admitted that it infringed the Publishers' copyright in the textbook by reproduction.

[240]The Publishers do not allege that the annotated statute was reproduced. The agreed statement of facts makes no reference to the reproduction of the reported judicial decision of Hewes v. Etobicoke or the headnote of that case. Without evidence of reproduction by the Law Society there is no basis for a finding of infringement in relation to these works.

Primary Infringement - Communication to the Public by Telecommunication

[241]In 1993, the Law Society transmitted a facsimile of the case summary to a single recipient and a facsimile of the Monograph to a single recipient. The Publishers allege that the Law Society thereby infringed their exclusive right, under paragraph 3(1)(f) of the Act, to communicate those works to the public by telecommunication. The Law Society does not dispute that the definition of "telecommunication" in section 2 of the Act includes a facsimile transmission. However, the Law Society argues that the transmission of one work to a single recipient is not a communication "to the public". It is therefore necessary to interpret the phrase "to the public" within the meaning of paragraph 3(1)(f) of the Act.

[242]The Trial Judge held that a single telecommunication emanating from a single point and intended to be received at a single point is typically not a communication to the public (at paragraph 167). For this reason he found that the Law Society did not communicate the Publishers' works to the public by telecommunication. I reach the same result as Gibson J.

[243]Earlier versions of paragraph 3(1)(f) have been considered by Canadian courts, but these decisions are of little assistance because of significant amendments to this provision pursuant to S.C. 1988, c. 65, brought into force February 13, 1989, by SI/89-70. Prior to these amendments, the exclusive right set out in paragraph 3(1)(f) was to reproduce "in public" and was limited to communication by radio. The provision now applies to communications to the public by telecommunication. The few cases decided since 1989 only go so far as to conclude that "to the public" is a broader concept than the previous phrase "in public". See for example Canadian Cable Television Assn. v. Canada (Copyright Board), [1993] 2 F.C. 138 (C.A.), at pages 148-149; CTV Television Network Ltd. v. Canada (Copyright Board), [1993] 2 F.C. 115 (C.A.), at pages 131-132; and in Australia see Telstra Corporation Ltd v Australasian Performing Right Association Ltd (1997), 146 ALR 649 (H.C.), at pages 658-659. Thus, the jurisprudence both before and after 1989 is not materially helpful in interpreting the current meaning of "to the public" in paragraph 3(1)(f). In their factums, both sides have referred to the same jurisprudence to support contradictory interpretations of the term "to the public", i.e. Telstra Corporation Ltd v Australasian Performing Right Association, supra; Rank Film Production Ltd. v. Dodds (1983), 2 I.P.R. 113 (N.S.W.S.C.) and the Copyright Board's decision in SOCAN Statement of Royalties; Public Performance of Musical Works 1996, 1997, 1998 (Tariff 22, Internet) (Re) (1999), 1 C.P.R. (4th) 417.

[244]The ordinary meaning of the word "public" appears to be the community or people as an aggregate, or at least a particular section, group or portion of a community, and certainly is more than a single person. Black's Law Dictionary (6th ed.) provides the following definition:

n. The whole body politic, or the aggregate of the citizens of a state, nation, or municipality. The inhabitants of a state, county, or community. In one sense, everybody, and accordingly the body of the people at large; the community at large, without reference to the geographical limits of any corporation like a city, town, or county; the people. In another sense the word does not mean all the people, nor most of the people, nor very many of the people of a place, but so many of them as contradistinguishes them from a few. Accordingly, it has been defined or employed as meaning the inhabitants of a particular place; all the inhabitants of a particular place; the people of the neighbourhood. Also, a part of the inhabitants of a community.

Having regard only to the broad definition of the word "public", one might conclude that the term "to the public" would suggest that a communication must be aimed or targeted at more than one person.

[245]On the other hand, Australian jurisprudence suggests that in some circumstances, a single person might be the public for purposes of the Australian Copyright Act 1968, No. 63, 1968: see Telstra Corporation Ltd v Australasian Performing Right Association, supra, at pages 156-157.

[246]Because the term "to the public" is one that is capable of a variety of meanings, it is necessary, as is usually the case in interpreting ambiguous legislation, to have regard to the context to ascertain the intent of Parliament.

[247]Considering paragraph 3(1)(f), it is necessary to give meaning to the term "to the public". Paragraph 3(1)(f) would still be coherent without those words, i.e. "in the case of any literary, dramatic, musical or artistic work, to communicate the work by telecommunication". Without the words "to the public", paragraph 3(1)(f) would be unlimited, that is, it would apply to all communications whether to the public or not. This would include communications to the general public, smaller aggregations of individuals, and to individual recipients. If the words "to the public" are to be given meaning, they must be to limit the otherwise unlimited scope of paragraph 3(1)(f). Since location is no longer a consideration with the substitution of the term "to the public" for the prior term "in public", the only conclusion possible is that "to the public" limits the type of recipient of a communication. For example, recipients of telecommunications within a family of the sender would not be considered "public" and would be excluded from paragraph 3(1)(f). However, the limitation might also have a bearing on the number of recipients of a telecommunication.

[248]Paragraph 3(1)(f) was enacted by the Canada-United States Free Trade Agreement Implementation Act, S.C. 1988, c. 65, subsection 62(1). The relevant provision of the Free Trade Agreement implemented by subsection 62(1) was Article 2006 entitled "Retransmission Rights". See Fox Canadian Law of Copyright and Industrial Designs, (3rd ed., 2000) at page 495. Article 2006 is concerned with remunerating copyright holders for retransmission of their programs carried in distant signals intended for "free, over the air reception by the general public". Subsection (1) provides, in part:

Article 2006 . . .

1. Each Party's copyright law shall provide a copyright holder of the other Party with a right of equitable and non-discriminatory remuneration for any retransmission to the public of the copyright holder's program where the original transmission of the program is carried in distant signals intended for free, over the air reception by the general public.

[249]Certainly, paragraph 1 of Article 2006 is not aimed at telecommunication to a single recipient.

[250]Of course, Article 2006 is not determinative of the interpretation to be given to paragraph 3(1)(f). However, an international agreement may be examined to clarify uncertainty in domestic legislation which was enacted with a view to implementing Canada's obligations under the agreement. In National Corn Growers Assn. v. Canadian (Import Tribunal), [1990] 2 S.C.R. 1324, Gonthier J. stated at page 1371:

In interpreting legislation which has been enacted with a view towards implementing international obligations, as is the case here, it is reasonable for a tribunal to examine the domestic law in the context of the relevant agreement to clarify any uncertainty. Indeed where the task of the domestic law lends itself to it, one should also strive to expound an interpretation which is consonant with the relevant international obligations.

See also Sullivan, R., ed., in Driedger on the Construction of Statutes, 3rd ed. (Toronto: Butterworths, 1994), at page 459 et seq.

[251]Paragraph 3(1)(f) does not use the term "general public" but rather only "public". Nonetheless, given that paragraph 3(1)(f) was enacted to implement a specific provision of the Free Trade Agreement, the two should be interpreted consistently. That would suggest that "public" in paragraph 3(1)(f) must mean more than a single recipient of a telecommunication.

[252]Having regard to the Free Trade Agreement, I conclude that "to the public" within the meaning of paragraph 3(1)(f) of the Copyright Act does not include telecommunications directed solely at a single recipient. As the evidence refers to only single communications to single points of any particular work, the Law Society's communications of the case summary and the monograph to single patrons are not captured by paragraph 3(1)(f).

[253]The Publishers also submit that the Trial Judge erred in failing to hold that a series of transmissions of the same work to multiple single recipients constitutes communication to the public. However, the Publishers have not submitted any evidence of a series of transmissions of a particular work to more than a single recipient; therefore, the Trial Judge had no evidence to consider the potential implications of a series of transmissions of the same work to multiple recipients. I am subject to the same restriction and decline to consider this argument.

[254]The Publishers submit as an alternative argument that the Law Society has communicated "to the public" merely by making such works available to the public through its custom photocopying operation. They cite SOCAN, supra, at pages 443-451, for the proposition that, at page 449:

. . . a work is communicated to the public even if it is transmitted only once, as long as it is made available on a site that is accessible to a segment of the public.

However, I do not find that the Law Society makes the Publishers' works available in the sense described in SOCAN, supra, because the Law Society retains control over whether to accept a request or not. This is distinguishable from the situation in SOCAN, supra, where communications over the internet were in issue, and where the communicator retained no ability to control or prevent public access to the communication in question. Therefore, SOCAN, supra, is not helpful and I do not agree with the Publishers' alternative argument on this point.

[255]For these reasons, I agree with the Trial Judge's conclusion that the Law Society did not infringe the Publishers' exclusive right under paragraph 3(1)(f) of the Act to communicate their works to the public by telecommunication.

Primary Infringement -- Authorization To Reproduce (Freestanding Photocopiers)

[256]The Law Society maintains free-standing photocopiers in the Great Library, to which patrons have unrestricted access to make copies for a per-page fee. The Publishers argue that, by providing the photocopiers, the Law Society authorizes patrons to "produce or reproduce" the Publishers' works contrary to the concluding words of subsection 3(1) of the Act, which grant the exclusive right to authorize reproduction to the copyright holder.

[257]Gibson J., at paragraph 191, declined to analyse the allegations of authorization because the evidence in relation to

. . . actual use of the free-standing copiers in the Great Library was remarkably limited by comparison with the evidence before this Court relating to the custom photocopy service of the defendant.

However, before this Court the parties appear to agree that the freestanding photocopiers were used to copy the Publishers' material. Therefore, for the purposes of the authorization analysis, patrons of the Great Library may be considered to have used the free-standing photocopiers in the Great Library to reproduce the Publishers' legal materials. I accept, for the purposes of this analysis, that copyright subsisted in such legal materials at the time the Law Society's patrons reproduced them on the free-standing photocopiers. It is, therefore, necessary to determine whether the Law Society "authorized" its patrons to reproduce the Publishers' legal materials within the meaning of subsection 3(1) of the Act.

[258]The Commonwealth jurisprudence on authorization bifurcates on the meaning of "authorize" for the purposes of copyright infringement. In Australia, the dominant view appears to be that a person who provides the mechanical means (like a photocopier) to facilitate an end-user's infringement may be liable for authorizing the end-user's infringement. This is particularly so where the provider of the mechanical means is aware that its equipment is in fact being used for infringing purposes and has the opportunity to prevent or control the end-user's infringing actions but fails to take reasonable steps to do so (see for example Moorhouse v. University of New South Wales, [1976] R.P.C. 151 (Aust. H.C.); and RCA Corporation v. John Fairfax & Sons Ltd., [1982] R.P.C. 91 (N.S.W.S.C.)).

[259]The Australian approach is of particular interest because the factual situation in Moorhouse, supra, was similar to the facts before this Court. In Moorhouse, supra, a university library provided free-standing photocopiers in the library to patrons and took no reasonable steps to control the use of such copiers. The Australian High Court concluded on these facts that the library authorized the infringing uses made by the patrons of the library photocopiers (at pages 158-160, per Gibbs J.).

[260]However, in the United Kingdom, if the defendant only provides means which might be used by an end-user to infringe this will not amount to authorization. Rather, as Lord Templeman stated in CBS Songs Ltd v Amstrad Consumer Electronics plc, [1988] 2 ALL ER 484 (H.L.), at page 493, authorization will only occur where the defendant grants or purports to grant to the end-user, either expressly or impliedly, the right to infringe:

. . . an authorisation means a grant or purported grant, which may be express or implied, of the right to do the act complained of. Amstrad conferred on the purchaser [of the infringing means] the power to copy but did not grant or purport to grant the right to copy. [Emphasis added.]

[261]What will constitute implied authorization depends on the facts of each case; however, in CBS Inc. v. Ames Records & Tapes Ltd., [1981] 2 W.L.R. 973 (Ch. D.), Whitford J. held at pages 987-988 that implied authorization may be found where:

. . .indifference, exhibited by acts of commission or omission, may reach a degree from which authorisation or permission may be inferred. It is a question of fact in each case what is the true inference to be drawn from the conduct of the person . . . .

This proposition was adopted with approval by Reed J. in Apple Computer, Inc. v. Mackintosh Computers Ltd., [1987] 1 F.C. 173 (T.D.), at page 208; affd [1988] 1 F.C. 673 (C.A.); affd [1990] 2 S.C.R. 209.

[262]The leading Canadian cases dealing with authorization are Vigneux et al. v. Canadian Performing Right Society Ltd., [1945] 2 D.L.R. 1 (P.C.); revg [1943] S.C.R. 348; and Muzak Corp. v. Composers, Authors, etc., [1953] 2 S.C.R. 182. Both cases establish that merely supplying the means to infringe will not constitute authorization of an end-user's subsequent infringing activities. For example, in Vigneux, supra, at page 11, Lord Russell of Killowen rejected the proposition that hiring a jukebox constituted authorization of subsequent infringing performances of the musical works in the jukebox, stating that the supplier of the jukebox:

. . . neither gave the public performance of "Star Dust", nor did they authorize it. They had no control over the use of the machine; they had no voice as to whether at any particular time it was to be available to the restaurant customers or not. The only part which they played in the matter was, in the ordinary course of their business, to hire out to Raes one of their machines and supply it with records, at a weekly rental of $10.

[263]In Muzak, supra, at page 189, Rand J. held that the franchisor of a mechanical device to perform copyrighted musical works did not authorize the franchisee's infringing performance merely by virtue of leasing the mechanical device:

There is not a syllable in the material to suggest that Muzak has made itself a party in interest to the performance either by warranting the right to perform without fee or by anything in the nature of a partnership or similar business relation. If by letting a device the owner is to be taken as engaging himself to its use in defiance of regulations, the very distinction between the right to make a record and the right to give a public performance by means of it which Mr. Manning made and the Act provides for, is wiped out. It would be as if a person who lets a gun to another is to be charged with "authorizing" hunting without a game license.

[264]I, therefore, take it as well-settled law in Canada that merely supplying mechanical means which are capable of being used in an infringing manner is not enough, in itself, to constitute authorization of such infringement. To the extent that the Law Society merely provided the mechanical means for end-users to infringe the Publishers' copyright, i.e. the photocopiers, the Law Society did not authorize such infringement. However, did the Law Society do anything more that demonstrates that it impliedly authorized its patrons to infringe the Publishers' copyright?

[265]In this case, the Law Society does more than merely provide photocopiers to its patrons. It also provides a large collection of the Publishers' works and these two elements are offered by the Law Society in a single environment. From the nature of the requests received by the custom photocopy operation, it is evident that patrons access the Publishers' materials. I infer that patrons of the free-standing photocopiers have similar interests and therefore that they will also access the Publishers' materials. Although I recognize that the Great Library contains non-copyrighted work, e.g. statutes, it is unrealistic to think that only this type of material is reproduced on the photocopiers. This is a case in which the action of placing photocopiers in an environment full of copyrighted works is bound to result in infringing reproduction of the Publishers' materials. In such a situation it is my view that the Law Society's indifference to this inevitable outcome amounts to authorization of the infringing reproduction engaged in by its patrons.

[266]The Law Society argues that it does not authorize its patrons to infringe the Publishers' copyright and points to the following notice, which is posted above the photocopiers, in support of this argument:

The Copyright law of Canada governs the making of the photocopies or other reproductions of copyright material. Certain copying may be an infringement of the copyright law. This library is not responsible for infringing copies made by the users of these machines.

However, in my view this notice merely highlights the indifference of the Law Society. The notice does not direct patrons to inquire into whether a particular work is copyrighted. Nor are patrons told that they are forbidden to use the photocopiers for infringing purposes. The notice makes reference to the possibility of infringement; however, if it is a warning against infringement, it is an extremely weak warning. The words "certain copying may be an infringement" without any further guidance as to the type of copying that would be infringing is as likely to encourage infringement as to discourage it. The failure to provide a more explicit warning against reproducing copyrighted materials and the failure to take any other steps demonstrates indifference. In light of this indifference, I find that the Law Society impliedly authorized the infringing reproduction activities of its patrons. Therefore, the Law Society prima facie infringed the Publishers' exclusive right under subsection 3(1) of the Act to authorize any productions or reproductions of their works.

[267]I emphasize that this conclusion should not be interpreted as standing for the proposition that mere control over the means to infringe will automatically constitute authorization of such infringement. It is necessary in each case to also establish express or implied acts of omission or commission that amount to grants or purported grants of the right to infringe. Here, the facts show that the means to infringe are provided in an environment containing copyrighted works and that, in such an environment, infringement is inevitable. The lack of effective warning notices and any effort to monitor use of the free-standing photocopiers demonstrate a degree of indifference that in my view amounts to implied authorization of the infringing activities engaged in by the Law Society's patrons.

Secondary Infringement

[268]Having found instances of primary infringement, I turn now to whether the Law Society's dealings with the products of such primary infringement also constitute secondary infringement. As primary infringement has already been found, I recognize that it is not strictly essential to determine whether the Law Society engaged in secondary infringement. However, in my respectful view, the Trial Judge erred in his analysis of secondary infringement, particularly regarding whether the Law Society "sold" infringing copies, and therefore, I think the issue should be addressed. There are facts in the record to enable a meaningful analysis respecting secondary infringement.

[269]As described above, the Law Society's custom photocopy operation reproduced and mailed the reported judicial decisions and headnotes of Meyer v. Bright and R. v. CIP to a patron in 1993. In the same year, the case summary and monograph were reproduced and faxed to another patron. In 1998, the topical index was reproduced and couriered to a patron. In each case the Law Society charged a fee.

[270]I have already determined that the Law Society's reproduction of these materials constitutes prima facie primary infringements of the Publishers' copyright. Under secondary infringement, the further question that arises is whether the Law Society sold or distributed the infringing reproductions. In 1993, the applicable provisions of the Act were found in subsection 27(4):

27. (1) . . .

(4) Copyright in a work shall be deemed to be infringed by any person who

(a) sells or lets for hire, or by way of trade exposes or offers for sale or hire,

(b) distributes either for the purposes of trade or to such an extent as to affect prejudicially the owner of the copyright,

(c) by way of trade exhibits in public, or

(d) imports for sale or hire into Canada

any work that to the knowledge of that person infringes copyright or would infringe copyright if it had been made in Canada. [Emphasis added.]

Subsection 27(4) was repealed and replaced by subsection 27(2) in 1997 (pursuant to S.C. 1997, c. 24, section 15) and currently states:

27. (1) . . .

(2) It is an infringement of copyright for any person to

(a) sell or rent out,

  (b) distribute to such an extent as to affect prejudicially the owner of the copyright,

(c) by way of trade distribute, expose or offer for sale or rental, or exhibit in public,

(d) possess for the purpose of doing anything referred to in paragraph (a) to (c), or

(e) import into Canada for the purpose of doing anything referred to in paragraphs (a) to (c),

a copy of a work, sound recording or fixation of a performer's performance or of a communication signal that the person knows or should have known infringes copyright or would infringe copyright if it had been made in Canada by the person who made it. [Emphasis added.]

[271]In this case, three elements must be established in order to prove secondary infringement. First, the work that is dealt with must be the product of primary infringement; that is, it must be an infringing copy in the first place. Second, the alleged secondary infringer must know that the copy that he or she is dealing with is the product of primary infringement. Third, the secondary dealing must be established, i.e. sale or distribution.

[272]I have already concluded that the reported judicial decisions, headnotes, monograph and case summary and topical index (i.e. a substantial portion of the [1997] G.S.T.C. book) were reproduced by the Law Society. Therefore, the copies that may be the subject of secondary infringement are the product of primary infringement. The first element to prove secondary infringement is, therefore, established.

Secondary Infringement -- The Knowledge Requirement

[273]The knowledge requirement, set out at the conclusion of subsections 27(4) of the pre-1997 Act and 27(2) of the current Act, applies to each type of secondary infringement and is, therefore, conveniently dealt with next. Simply put, the question is whether the Law Society knew that the works it was dealing with were the product of primary infringement of the Publishers' copyright. The Law Society asserts that it had a "good faith, reasonable belief that its actions did not infringe copyright". This belief was based on the Law Society's conclusion that no primary infringement occurred as the Law Society's actions were covered by the fair dealing exemption. The fair dealing exemption is not merely a defence that eliminates liability for infringement; rather, the exemption states that no infringement occurs where fair dealing applies (see paragraph 27(2)(a) of the Act in force in 1993; renumbered to section 29 but otherwise unchanged pursuant to S.C. 1997, c. 24, subsection 18(1)). Therefore, the Law Society argues that it could not have known of the primary infringement because it had a good faith belief that no such infringement existed due to the operation of the fair dealing exemption.

[274]I do not find this argument persuasive. The Law Society was the party responsible for primary infringement. It is not open to a primary infringer to invoke a lack of knowledge defence against a claim of secondary infringement.

[275]The knowledge requirement protects innocent sellers, distributors or importers who are not themselves copiers. In these circumstances, the innocent seller, distributor or importer will not know or have any reason to know that the works are the product of primary infringement. That absence of knowledge will be a valid defence against a claim of secondary infringement.

[276]However, where the seller, distributor or importer is also the primary infringer, the lack of knowledge defence cannot be invoked against a claim of secondary infringement. Primary infringement occurs simply by reproduction of copies of copyrighted works without the consent of the copyright holder. A primary infringer cannot claim that he had no knowledge that he was infringing copyright and that there was, therefore, no primary copyright infringement. In de Montigny v. Cousineau, [1950] S.C.R. 297, at page 302, Rinfret C.J.C. stated:

[translation] I can say right now that no one believes that the respondent acted in bad faith, but that is not the question. The Copyright Act considers publication of articles protected by this Act, without the author's permission or that of the holder of the copyright, a violation. And this Act must be applied even when publication is made in good faith. In this case, it must be said: "Dura lex sed lex".

[277]For purposes of secondary infringement, where the primary and alleged secondary infringer are the same person, that person will have had knowledge of the facts giving rise to the primary infringement because it was that person that was engaged in the primary infringement.

[278]The authorities indicate that the knowledge at issue under secondary infringement is knowledge of facts, not knowledge of law or how the law applies to the facts. In Clark, Irwin & Co. Ltd. v. C. Cole & Co. Ltd. (1960), 33 C.P.R. 173 (Ont. H.C.), Spence J. (as he then was) stated at page 181 (referring to dicta of Lord Goddard in Van Dusen v. Kritz, [1936] 2 K.B. 176):

It would seem apparent that Goddard J. was there concerned with whether the defendant had knowledge of the fact of the infringement and not any question as to whether he had knowledge of whether the action was an infringement in law.

In Apple Computer, Inc., supra, Reed J. stated at page 209, after citing a number of authorities in respect of the knowledge requirement:

Those cases conclude that "knowledge" in comparable contexts means notice of facts such as would suggest to a reasonable man that a breach of the copyright law was being committed -- "notice which would put a reasonable man on inquiry" (Albert case, supra, at pages 81-82).

[279]In Sillitoe and Others v. McGraw-Hill Book Co. (U.K.) Ltd., [1983] F.S.R. 545 (Ch. D.), the defendants were importers and distributors of "study notes". The study notes reproduced passages of literary works and it was alleged the publication of the study notes, as well as their importation and distribution in Australia constituted infringement of copyright. The action was pursued in the U.K., where the defendants argued that they relied, in good faith, on legal advice that publication of the study notes did not constitute copyright infringement and that, in any event, fair dealing would apply as an exemption to copyright infringement.

[280]Davies J. rejected these arguments. He found that the relevant knowledge was knowledge of the facts, not knowledge of the law. At page 557, he stated:

. . . it was to the defendants' knowledge that a printing in England would constitute an infringement. I say that because in my opinion the knowledge mentioned in section 5(2) and (3) is a knowledge of the facts. Once a plaintiff fixes a defendant with notice of the facts relied on as constituting an infringement, the defendant cannot contend that he is without "knowledge" within section 5(2) because he has in good faith a belief that in law no infringement is being committed. There is here no ignorance of the facts on which the defendants can rely. On the contrary, they well knew the facts, that is as to subsistence, ownership and the claim that there was a section 5(2) infringement. The defendants are in effect saying that if they are right in law, then there is no infringement and if they are wrong in law, there is no infringement either because they believed the law to be otherwise. What the defendants have done here, and knowing of the plaintiffs' complaints and the facts on which the complaints were based, was to take the risk of finding their legal advice wrong. If a person takes a deliberate risk as to whether what he is doing is wrong in law, I do not see that he can say later that he did not, at the time, know that what he was doing was wrong, if, in the event, his action is held to be wrong.

[281]Because the relevant knowledge is knowledge of the facts, the Law Society's good faith belief in how the law would be applied to the facts of this case is irrelevant for purposes of subsections 27(4) and 27(2).

[282]It seems to me that this conclusion is the only way in which the knowledge requirement can reasonably be interpreted. If an honest belief that the fair dealing exemption would apply were a valid defence to secondary infringement, it would undercut the analysis of the fair dealing exemption itself. In other words, a secondary infringer could simply avoid liability by an honest belief that its actions were fair dealing. The test would be whether the secondary infringer had that honest belief, and whether it was reasonably held, not whether its actions were or were not fair dealing. Nothing in the Copyright Act suggests an interpretation that would replace analysis of the fair dealing exemption on its merits with an assessment of whether the defendant had a reasonably held, honest belief that the exemption was applicable.

[283]In any event, the reasonableness of the Law Society's belief in the application of the fair dealing exemption, in this case, is troublesome. In Moorhouse, supra, the facts were very similar to the facts here. It is difficult to accept an argument of a good faith belief that there was no infringement on the basis of the fair dealing exemption in light of Moorhouse, supra, which rejected the fair dealing exemption. I do not say, at this point, that the fair dealing exemption may not be applicable on the facts of this case. However, the Law Society must be taken to know that the availability of the fair dealing exemption would be contentious. At best, all the Law Society could say, at the point it was dealing with copies of the Publishers' works, is that the application of the fair dealing exemption was unsettled. That is hardly a basis for a reasonably held, honest belief that the fair dealing exemption would apply.

[284]For these reasons, I am satisfied that the lack of knowledge defence does not avail to the benefit of the Law Society and that the Law Society had the requisite knowledge for secondary infringement.

Secondary Infringement -- Sale of Infringing Copies

[285]As noted above, the evidence demonstrates that the Law Society's custom photocopy operation provided copies of legal materials to patrons by fax, courier or mail and charged a fee intended to recover the costs of providing such materials. The Law Society submits that no "sale" occurred because the custom photocopy operation did not realize a profit from its transactions. At paragraph 161 of his reasons, the Trial Judge accepted this submission and found that no "sale" took place.

[286]The existence of a "sale" is not predicated on the earning of a profit. No authorities to the effect that a sale is predicated on the earning of a profit were cited. In general terms, the key elements of a sale are the transfer of property on the one hand and the payment of some form of consideration on the other. In Blacks Law Dictionary (7th ed.) "sale" is defined as:

n. 1. The transfer of property or title for a price. 2. The agreement by which such a transfer takes place. The four elements are (1) parties competent to contract, (2) mutual assent, (3) a thing capable of being transferred, and (4) a price in money paid or promised.

These elements are present in transactions between the Law Society and its patrons. I see no obvious reason to interpret a "sale" under copyright law as being different from the general meaning of that term.

[287]In the alternative, the Law Society submits that what the custom photocopy operation provided was predominantly a research service and that the Law Society sold research services rather than reproductions of the Publishers' works. In Sale of Goods in Canada, 4th ed. (Scarborough: Carswell, 1995), Fridman states, at page 22, that it is necessary to consider the primary object of a transaction to determine whether a sale is of services or of goods:

. . . if the primary object of the contract is the transference of property in something which was not originally the property of the "buyer", the contract will be one of sale of goods, but if the primary purpose of the parties is the performance of certain work, or the provision of services, incidentally to which property in goods is to pass from one party to the other, the contract will not be one of sale of goods.

[288]In my view, the argument that the primary object of the custom photocopy operation was to sell a service rather than goods is not supported by the facts. There is no evidence that, on a request for a copy of a work, the library staff undertook research. Rather, they received a request, located the relevant material and distributed it to the patron. The legal "research" was no more difficult than a shopkeeper locating a particular product in his inventory. Indeed, there is no evidence that the custom photocopy operation invoiced patrons for services if it was unable to fulfil a request for a copy of a work. Consequently, the primary object of what the patron was paying for was the transfer to the patron of a copy of the Publisher's work, not the service of locating that work.

[289]At paragraph 120 of his reasons, Linden J.A. suggests that the Law Society does not sell copies of the publishers' legal materials but rather, provides a service of convenience, allowing patrons to access legal material without having to physically travel to the Great Library. I agree that the actions of the custom photocopy operation include an element of convenience. However, in my view, the convenience factor is secondary to the primary object of the transaction, that is, the provision of copied material by the Great Library to its patrons. Indeed, the evidence shows that a patron who picks up photocopied material from the Great Library still pays a fee, despite the fact that he or she is inconvenienced by physically attending at the Great Library. Therefore, it is the transferring of the property in the reproduced work by the Library to the patron that is the primary object of the transaction. In my view, the actions of the custom photocopy operation amount to engaging in the "sale" of infringing copies.

Secondary Infringement -- Distribution of Infringing Copies

[290]The Publishers also allege that the Law Society distributed copies of infringing works to "such an extent as to affect prejudicially" the Publishers, contrary to paragraphs 27(4)(b) of the pre-1997 Act and 27(2)(b) of the current Act. The Law Society does not dispute that some distribution has occurred. The issue is whether this distribution was to "such an extent as to affect prejudicially" the Publishers. The Trial Judge found as a fact that the Publishers were prejudicially affected by the distribution in question. I see no overriding and palpable error in that finding and would not disturb it.

Infringement -- Conclusion

[291]In summary, I conclude that the Law Society knew that it was dealing with the products of primary infringement of the Publishers' copyright and that prima facie secondary infringement has been established with respect to the Law Society's actions in 1993 and 1998 of selling and distributing reproductions of such works.

FAIR DEALING

[292]I have read the analysis of Linden J.A. on fair dealing. I agree with him that there was no evidence or argument directed to the facts of any particular dealing.

[293]The absence of a factual underpinning makes application of legal principles relating to fair dealing impossible. The traditional role of the Court is to resolve disputes based on the evidence provided. By failing to provide such evidence, the parties have precluded the Court from performing this role.

[294]Having said this, there was sufficient evidence upon which to decide the question of whether the Law Society's Great Library is a library for the purposes of the library exemption under section 30.2 of the Copyright Act. I agree with Linden J.A. that the library exemption applies to the Great Library.

[295]In view of the application of the library exemption to the Law Society and that there are no facts pertaining to the dealings that took place before enactment of the library exemption, I would prefer not to express an opinion on the general issue of intermediaries, other than libraries, adopting the end-user's purpose when considering the fair dealing exemption.

[296]In all other respects, I am in agreement with the general approach to fair dealing set forth by Linden J.A. in his reasons.

CONSTITUTIONAL, PUBLIC POLICY AND EQUITABLE DEFENCES

[297]I am in agreement with Linden J.A.'s disposition of the Law Society's arguments respecting constitutional, public policy and equitable defences.

CONCLUSION

[298]    1. The reported judicial decisions, the headnotes, the case summary, the annotated statute, the textbook and the monograph constitute works for the purposes of copyright.

2. These legal materials are original within the meaning of the Copyright Act and copyright subsists in them.

3. The 1997 G.S.T.C. topical index is a substantial part of the 1997 G.S.T.C. book. The book is original and copyright subsists in it.

4. (a) The Law Society has prima facie engaged in primary infringement by reproducing the reported judicial decisions of Meyer v. Bright and R. v. C.I.P., the headnotes of Meyer v. Bright and R. v. C.I.P., the case summary, the monograph and a substantial part of the [1997] G.S.T.C. book.

(b) The Law Society has prima facie engaged in primary infringement by authorizing its patrons to reproduce the Publishers' copy-righted material on free-standing photopiers located in the Great Library.

(c) The Law Society has prima facie engaged in secondary infringement by selling and distributing, to the prejudice of the Publishers, the reported judicial decisions of Meyer v. Bright and R. v. C.I.P., the headnotes of Meyer v. Bright and R. v. C.I.P., the case summary, the monograph and a substantial portion of the [1997] G.S.T.C. book.

5. Without adducing evidence of facts relative to fair dealing in respect of the Publishers' copyrighted material, the Law Society has failed to rebut the finding of prima facie infringement.

6. The Law Society's arguments respecting constitutional, public policy and equitable defences are rejected.

7. As a result, the Publishers have succeeded in proving that the Law Society has infringed their copyrights in the legal materials in evidence before this Court.

RELIEF

[299]The Publishers do not seek damages. However, they do seek a declaration respecting the subsistence of copyright in the legal materials in evidence and declarations that the Law Society has infringed these copyrights. They also seek a permanent injunction restraining any unlicensed copying, facsimile transmission, sale, distribution or possession of the publishers' copyrighted works by the Law Society.

[300]I agree with Linden J.A. that the appeal should be allowed in part and that there should be a declaration that copyright subsists in the reported judicial decisions, headnotes, case summary, monograph and the [1997] G.S.T.C. book and that the Law Society has infringed the Publishers' copyright in the reported judicial decisions of Meyer v. Bright and R. v. C.I.P., the headnotes of Meyer v. Bright and R. v. C.I.P., the case summary, the monograph and the [1997] G.S.T.C. book.

[301]In all other respects, I would dismiss the appeal. In particular, I would not grant the injunction sought, because I cannot say, in the absence of evidence, that the Publishers' legal material not in evidence is subject to copyright and I am unable to predict if the fair dealing exemption will be found to apply in different factual circumstances.

[302]For the reasons given by Linden J.A. in relation to the access to law policy, and because I have found that the Law Society did engage in copyright infringement, I would dismiss the cross-appeal.

[303]I would reserve the matters of the form of order and costs to be dealt with as proposed by Linden J.A.