Copyright Year In Review 2020

• Published date: 05 February 2021
• Subject Matter: Corporate/Commercial Law, Intellectual Property, Contracts and Commercial Law, Copyright
• Law Firm: Gowling WLG
• Author: Mr Harvey Lim and Matthew Cook (Articling Student)

This article highlights noteworthy developments in Canadian copyright law for 2020 including key court decisions and legislative changes.

Case law updates

Enforceability of Tariffs

York University v The Canadian Copyright Licensing Agency ("Access Copyright"), 2020 FCA 77

In a sea changing decision affecting the copyright licensing regime, the Federal Court of Appeal ruled that Copyright Board approved tariffs are not mandatory and do not bind non-licencees.

York University ("York") and Access Copyright had a licence agreement permitting York professors to copy portions of textbooks and other works from Access Copyright's repertoire. Uncertain if the licence agreement would renew before its expiry, Access Copyright, to ensure continued remuneration, applied for and was granted an interim tariff ("Interim Tariff") to cover the copying of protected works by postsecondary educational institutions for the years 2011-2013. York "opted out" of the Interim Tariff, instead deciding to rely on its "Fair Dealing Guidelines for York Faculty and Staff" (the "Guidelines") in order to avoid any claims of copyright infringement.

Access Copyright brought a claim for enforcement of the Interim Tariff against York. In response, York filed a counterclaim seeking a declaration that any reproductions made in compliance with its Guidelines constitute fair dealing.

The case centered on the two related issues: 1) is the Interim Tariff mandatory and enforceable against York, and 2) do reproductions made in accordance with the Guidelines constitute fair dealing.

At trial, the Federal Court answered the first question in the affirmative and the second question in the negative.

On appeal, Justice Pelletier performed a detailed historical analysis of tariff legislation and jurisprudence which led to his finding that "the collective society/tariff regime is a means of regulating licensing schemes which, by definition, are consensual".¹ Justice Pelletier determined that a tariff is only binding on those parties who accept the terms of the licence that the tariff sets out. For this reason, the Court concluded that the Interim Tariff is not enforceable against York.

However, York could still be liable for infringement for using copyright-protected works without a licence. An infringement action may be brought by the copyright owner, its assignee, or an exclusive licensee. In this case, since Access Copyright's agreement with its members did not amount to an exclusive licence or an assignment, Access Copyright itself did not have standing to bring an infringement action against York. Only Access Copyright's members could sue York for infringement. This suggests that under different circumstances where the collective society acts as the assignee or the exclusive licensee for its members, the collective society may have standing to sue.

Next, the Court of Appeal went on to decide whether the Guidelines came within the fair dealing exception for infringement. Following a review of the lower court's fair dealing analysis, Justice Pelletier concluded that York had failed to prove that the Federal Court erred in law.

Not surprisingly, both parties appealed this decision to the Supreme Court of Canada which has granted the leave applications. The saga is set to continue in 2021 - stay tuned.

Tariffs under the "Making Available Provision"

Entertainment Software Association v SOCAN, 2020 FCA 100

The Federal Court of Appeal considered the interpretation of subsection 2.4(1.1) of the Copyright Act which is also referred to as the "making available provision" ("MAP"). The provision reads as follows²:

For the purposes of this Act, communication of a work or other subject-matter to the public by telecommunication includes making it available to the public by telecommunication in a way that allows a member of the public to have access to it from a place and at a time individually chosen by that member of the public.

Parliament enacted the MAP as part of the Copyright Modernization Act, which was intended in part to implement the WIPO Copyright Treaty,³ Article 8 of which obligates Parties to implement a right of making-available.

Before the Copyright Board, SOCAN argued for an interpretation of subsection 2.4(1.1) that expanded the right of communication to include the act of making a work available on a server regardless of whether that work is later streamed or downloaded by end-users. The Board accepted this interpretation.

The practical implications of the Board's determination meant that the act of putting a copyright-protected work on the Internet creates two distinct protected events. First, the bare act of making the work available to the public is a communication to the public by...