York University V The Canadian Copyright Licensing Agency (Access Copyright) (2020 FCA 77)

• Published date: 24 November 2020
• Subject Matter: Intellectual Property, Litigation, Mediation & Arbitration, Copyright, Trials & Appeals & Compensation
• Law Firm: Oyen Wiggs Green & Mutala LLP
• Author: James Nottingham and Dana L. Turner-Ryan

A recent decision from the Federal Court of Appeal addresses the extent of fair dealing as it relates to copyright, and whether tariffs set by copyright collectives are mandatory.

Background

York University (York) is a large university in Toronto. Access Copyright is a non-profit organization that represents a collection of copyright holders. In exchange for the payment of fees, Access Copyright grants licenses to businesses, universities, schools, and other groups to reproduce copyrighted works. These fees are then collected by Access Copyright and distributed to the copyright holders of the works.

Between 1994 and 2010, Access Copyright had a license agreement with York University under which professors at York were able to copy the works in Access Copyright's collection in exchange for royalty payments. This license agreement was set to expire at the end of 2010.

In light of uncertainty regarding renewal of the license agreement, Access Copyright applied to the Copyright Board for an interim tariff, which was approved on December 23^rd 2010.

York initially complied with this interim tariff, but in July 2011 gave notice to Access Copyright that it wished to opt out of the tariff for the upcoming school year, beginning on September 1^st 2011. Instead, York created its own fair dealing guidelines to assist members of the school in complying with s. 29 of the Copyright Act. Under the guidelines, only 'short excerpts' could be copied. Short excerpts were defined by the university as 10% or less of a work, or no more than set threshold amounts of a work (no more than an entire encyclopedia entry, no more than an entire newspaper article or page, etc.).¹

Access Copyright sued York, alleging that York had infringed copyright in works in its collection, and was therefore liable for the amounts due under the interim tariffs. York counterclaimed, seeking a declaration that all copying done pursuant to its guidelines represented fair dealing under s. 29 of the Copyright Act.

The Federal Court concluded that the tariffs imposed by Access Copyright were mandatory, and that York's guidelines did not constitute fair dealing (2017 FC 669). This decision is an appeal from the Federal Court's decision.

Fair Dealing

Fair dealing is an exception to copyright infringement, and is permitted by s. 29 of the Copyright Act, RSC 1985, c C-42, which reads:

Fair dealing for the purpose of research, private study, education, parody or satire does not infringe copyright.

What...