Friday, April 11, 2014

The Access Copyright Post-Secondary Tariff Hearing – The Copyright Board is Between a Rock and a Hard Place

Wikimedia Commons: Odysseus's boat passing between the six-headed monster Scylia and the whirlpool Charybdis

On January 17, 2014, the Board ruled  that it “postpones sine die the hearing in this matter. After having received and analysed all answers from Access, and replies from Mr. Maguire, the Board will either decide when to reschedule the hearing or proceed on paper.”

Since December, I have, for various reasons, not posted everything about this uniquely problematic hearing. However, AC’s submissions dated March 28, 2014 in respect of the “answers” sought by the Board call out for public attention and are available here.

At the risk of oversimplification, a quick glance at these “answers” indicates that AC has provided 40 pages of detailed submissions that essentially urge the Board, inter alia, to:  

Much more could and should be said to answer these 40 pages of submissions, but it won’t be said by the “now absent” objectors as AC calls them.

It is, of course, astonishing that the “now-absent” objectors are indeed absent for reasons that have not been publicly explained. They have spent almost three million dollars that we know about to mid-2012 only to abandon their members midway through this historic hearing and, even worse still, to withdraw their objections with no apparent concession on the part of AC. Indeed, the model licenses that they had earlier agreed upon have been widely disavowed by their members.

It is to be noted that CMEC has not even raised the issue of “mandatory tariff” in its statement of case in the imminent K-12 hearing at the Board. Moreover, as I said back in October, 2013, “York appears to have effectively conceded that the inevitable final tariff, when certified by the Copyright Board, will be “mandatory””.

This leaves the Board between a rock and a hard place, with nobody present to serve as an adversary in a hearing that was supposed to have sophisticated adversaries in a process that is designed to be adversarial. Should it refuse to certify any tariff on the basis of lack of sufficient evidence, for example as to AC’s actual repertoire? Can it proceed to devise a scheme, perhaps based upon optional transactional licensing or some other truly non-mandatory scheme that is entirely different than one suggested by any of the parties, in this case the only remaining party? Are the Board’s efforts to get more answers from AC and its apparent willingness to allow in more evidence long after the due date for AC’s statement of case and to allow last minute supplementary evidence and revision of AC’s statement of case intended to serve the public interest? Or will these developments serve, or at least be seen to serve, as a lifeline to AC in a case where it might have been argued that, in certain fundamental respects, AC has not even made a case?

Related and other potentially very significant issues were dealt with very squarely in the immensely important recent decision by the now retired Justice John Evans, the “dean” of Canadian administrative law, in the Re:Sound decision from the Federal Court of Appeal. See Re: Sound v. Fitness Industry Council of Canada, 2014 FCA 48. And then there is the evolving question in Canadian law about how “inquisitorial” the Board can really get with AC in questioning AC’s witnesses if there is an oral hearing.

The public interest is significantly imperilled in this situation. It is not the Board’s fault that the two main associations have walked away and left their members exposed, unrepresented, and  at great risk. That said, the Board has a role and responsibility to adequately consider the public interest. If the Board does something that AC thinks is reviewable, AC will no doubt seek judicial review and still has considerable resources to do so. Indeed, it is dedicating more and more of its vanishing revenue to lobbying and litigation.  Who would oppose it? Apparently not AUCC or ACCC. However, if the Board does something that is legally wrong or unreasonable in the view of the many various elements of the public that will inevitably be directly affected, what legal and practical recourse will they have now that this has become a virtually default proceeding? This is an unprecedented and seriously troubling situation.  

The main question that Board needs to answer very soon is whether, if it concludes that AC is entitled to any tariff, there should be an oral hearing or whether the hearing should "proceed on paper".

An oral hearing would provide at least some measure of transparency. It would provide the Board with an opportunity to publicly question AC’s witnesses to the extent that the Board believes it can and should do so, and to the extent of the Board’s resources, given that the Board does not seem to be contemplating the involvement of an amicus curiae. It would give the public the opportunity to attend and some basis to provide informed written comments, pursuant to the Board’s usual Directive on Procedure, especially if the Board were to promptly post a transcript of the hearing and set a deadline that would allow for meaningfully sufficient time for such comments.  

The Board has difficult decisions ahead to be made in this matter. Another factor may be that the term of its current Chairman expires imminently on May 13, 2014 at the end of his second term.

One wishes the Board well with what will no doubt be a difficult decision about how it will conclude this hearing and render its decision(s) in these exceptionally difficult circumstances.


Sunday, March 30, 2014

The End of the Great Canadian Trade-mark Hyphen – and other Consequential Changes

The hyphenated spelling of “trade-mark” had become something of an – ahem – trade-mark for Canada. It was a bold proclamation of independence and innovative thinking when Bob Kelly - an arcane and erudite veteran of the Department of Justice from a bygone era – came up with this bright idea. That hyphen was inserted in 1993 and served a useful purpose, since many people were confused between the American/WIPO spelling ("trademark") and the British spelling ("trade mark"), which the Brits still use.  After all, isn’t the purpose of trade-marks law to avoid confusion? Canada had earlier used the British spelling. So - we are now following the American lead...Hopefully, this capitulation will appease the Americans and they will back down on term extension, prevention of parallel imports, repealing fair dealing, jail terms for petty infringers, ACTA implementation, the TPP and other aggressive efforts. As if!

Seriously, the Government has introduced numerous changes to the venerable Trade-marks Act (enjoy the spelling while you can) – above and beyond removing the hyphen from "trade-mark". These numerous changes to the Trade-marks Act are hidden in plain sight in the omnibus budget implementation Bill C-31 and they can be found here.

Fortunately, Rob Kittredge has gone to the trouble of preparing both a consolidated and redlined version that can be found on his blog, here, along with a short discussion by him, including his thoughts on the process of including these changes in an omnibus budget bill. All Canadian IP practitioners owe Rob a big vote of thanks for making these changes transparent and doing this so quickly over the weekend.

In days to come, I may and others no doubt will discuss the changes and how the bill is likely to be handled – and whether committee hearings should be undertaken. Along with Bill C-8 - the anti-counterfeiting legislation that goes well beyond what is needed to address counterfeiting and which had only perfunctory committee hearings - we are about to see a massive revision of the one piece of Canadian IP law that arguably needs little or no revision and which has worked really well since 1954, when it was introduced after a model consultation process led by the late John Osborne, an eminent practitioner in his day. No - I don't remember this first hand. But I heard a lot about it from the late Gordon Henderson and Bill Hayhurst, who both thought very highly of the legislation and the way that it was developed. Unfortunately, the days when such a process would work effectively are probably gone forever, given the role of lobbyists and well-funded trade associations.


Friday, February 21, 2014

The ACP’s [Mis]Statement of Principles on Fair Dealing in Education

The Associations of Canadian Publisher’s (“ACP”) has worked hard and apparently spent lots of money over the years fighting against fair dealing. It has fought against fair dealing twice in the Supreme Court of Canada and lost both times. The ACP is also a very active lobbyist in Ottawa, as a search of the lobbyist registry readily shows, seeking on the one hand to get grants from the Government and on the other hand “lobbying to amend the Copyright Modernization Act…to limit fair dealing exemption for education”. That lobbying against fair dealing also didn’t work. Again, the ACP lost badly.

So, it seems that the ACP has reverted to more blunt tactics. It has recently been sending out this document dated December 2013 to post-secondary institutions entitled “STATEMENT OF PRINCIPLES ON FAIR DEALING IN EDUCATION”. It provides seven (7) principles of fair dealing that are at best misleading and are, at worst, clearly wrong.  The document might more accurately be entitled “[MIS]STATEMENT OF PRINCIPLES ON FAIR DEALING IN EDUCATION”.

Don’t just take my word for this. As everyone knows, there are have been three Supreme Court of Canada (“SCC”) decisions on fair dealing since 2004 and the word “education” is now included as one of the recognized general allowable purposes of fair dealing in the statute. Despite the monumental and concerted efforts of the ACP and their colleagues, the word “education” has not been defined or limited by Parliament.

Despite all the disinformation and denial from the ACP and others, the law of fair dealing in Canada is actually now remarkably straightforward due to Parliament and the acclaimed jurisprudence of the SCC. However, it’s taking a long time for this clarity to sink in, at least in ACP circles.

Parliament has said – and this is the now law, like it or not:

29. Fair dealing for the purpose of research, private study, education, parody or satire does not infringe copyright. (Emphasis added)

There were many ingenious and some rather disingenuous attempts to limit or qualify the addition of the word “education” in 2012 when the fair dealing amendment was being debated in Parliament – but the attempts failed. The legislative history will confirm that those opposed to the word “education” feared its very broad coverage. They now need to live with consequences of these dire predictions and they may be haunted by their own words in any litigation attempting to limit the meaning of the word “education”. As I always say to copyright maximalists, “be careful what you wish for”. And the addition of the word “education” was passed and given Royal Assent even BEFORE the SCC ruled in the K-12 case and the iTunes previews case. 

And, the SCC made it clear in the CCH case in 2004 that that, once the use is determined to be for a legitimate “purpose”, such as “of research, private study, education”, then there are six factors to consider to see if it is really “fair”.  These are:
60 To conclude, the purpose of the dealing, the character of the dealing, the amount of the dealing, the nature of the work, available alternatives to the dealing and the effect of the dealing on the work are all factors that could help determine whether or not a dealing is fair. These factors may be more or less relevant to assessing the fairness of a dealing depending on the factual context of the allegedly infringing dealing. In some contexts, there may be factors other than those listed here that may help a court decide whether the dealing was fair.

It should be noted that:
-          No single factor has priority
-          Not all factors need be satisfied
-          There may be additional relevant factors
-          These factors closely resemble the American four factors, which are: (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.

So – with all this in mind, let’s look at the ACP’s astonishing misstatements about Canadian copyright law. What ACP says is in Blue. My comments follow in Red.

1. Quantitative limits on fair dealing are not at the heart of defining what is fair. In the absence of a permission negotiated with copyright owners or their representatives, an arbitrary amount becomes a guideline for unfair copying: regardless of the purpose or impact of copying, the analysis starts and ends with calculating a quantity. That is not fair.

HPK: This is seriously misleading. Fair dealing – by definition – does not require “a permission negotiated with copyright owners or their representatives”.  There is nothing wrong with “guidelines” that suggest quantitative norms in line with “best practices” in Canada and comparable jurisdictions and which indicate, as in the case of the U of T fair dealing guidelines, that the application of these suggestions (e.g. “up to 10% of a copyright-protected work (including a literary work, musical score, sound recording, and an audiovisual work)” may “vary depending on the exact nature of the work being used, and of the use itself, all in the context of consideration and application of the fair dealing factors”. Quantitative guidelines are useful so that users can enjoy their rights without having to “negotiate” every use. There will be cases where these guideline suggestions are too high – or too low. Training, experience and good faith will prevail. The existence of good fair dealing policy guidelines is a key element in any institution’s copyright approach. Indeed the Law Society’s “Access Policy” was repeatedly mentioned by the SCC in the CCH decision, and was instrumental in the LSUC’s successful defence.

2. “Textbook-like collections” are created by instructors during their course planning and are most often presented as course outlines. For any resource that appears as required material on an instructor’s course outline, copyright owners should be paid. Although the copying of short excerpts to complement core resources may be fair, fair dealing is not intended to enable the assembly of textbook-like collections, whether digitally or on paper. That is not fair.

HPK: This is wrong. The SCC has explicitly ruled that the fact that a teacher takes the initiative to tell a student what to be read does NOT ipso fact preclude that material from being “fair dealing”. When it is fair dealing, the user does NOT need permission and the copyright owner does NOT get paid. That’s the whole point about fair dealing.

3. Fair dealing is intended to facilitate transformative uses of copied material, such as new research, criticism, and satire. When copying is simply duplication for distribution, it is not fair dealing.

HPK:  This is wrong. The term “transformative” use can be found in American case law, but is only one of many potentially relevant aspects. It is NOT an essential requirement of American fair use, much less Canadian fair dealing. Copying that is “simply duplication for distribution” may very well be fair dealing, if it is for one of the recognized purposes and meets the SCC’s factors.

4. Fair dealing is intended to enable situational uses of copyright-protected material, in support of free expression, expanded discourse, and creativity. Fair dealing is spontaneous—not planned, organized, coordinated for maximum value gained, or designed specifically to avoid payment. If copying is not spontaneous, it is not fair dealing.

HPK: This is wrong. Most fair dealing will involve careful analysis as to whether the dealing meets the requirements of the statute and the SCC factors. That is why all educational institutions are disseminating guidelines and educating their communities. Would intelligent copyright owners want it any other way? The use of fair dealing to minimize costs and maximize quality of education and research is the fundamental part of the foundation of copyright law and is the reason why the SCC tells us that is a “users’ right” that must be given a “large and liberal” interpretation.

5. Fair dealing depends on copying from a legal source. Copying from an illegally acquired original is not fair dealing.

HPK:  There’s no basis for this statement as such a general and categorical proposition. It’s conceivable that “copying from an illegally acquired original” might be an additional factor above and beyond the SCC’s six factors in some hypothetical instance in determining whether the copied material involved fair dealing – but equally conceivable that it may not be.

6. Fair dealing is not intended to exclude paying for the work of authors and all those involved in the original publishing of the material when those doing the copying are being paid for their work, or when students are being charged for the materials. That is not fair.

HPK: This is wrong and very seriously misleading. The SCC clearly ruled in the CCH decision that lawyers have the right to engage in fair dealing for the purpose of research. Lawyers normally get paid for their work. Professors and teachers also get paid for their work. And it’s OK to charge students for materials incorporating copying that is fair dealing, as long as it’s on a not-for-profit cost recovery basis.

7. Fair dealing is not intended to cause damage to the markets for works, along with the livelihoods of authors and publishers, and their ability to create new works. Depending on the work, such damage can occur at any level of copying, but damage is very likely when large amounts of a work are copied, or when multiple copies are made. If copying damages the market for a work, it is not fair dealing.

HPK: This is very seriously misleading. There is nothing in Canadian law that prevents the making of multiple copies, if such copying meets the requirements of the statute and the SCC fair dealing factors. Even If there are thousands of students in a MOOC, the provision of material to each and every one can be fair dealing, if the purpose is for education or another allowable purpose and the SCC’s factor test is satisfied.


Those in the educational community should ignore the ACP misstatements – or perhaps use them as a teaching tool about how NOT to inform the Canadian public accurately about copyright law.

Those in the educational community should acquaint themselves with good fair dealing guidelines that apply in their context. While the basic underlying principles are the same for everyone, there may be some differences between certain types of institutions and situations. K-12 is obviously not quite the same environment as and advanced research university – though there is more in common than not when it comes to fair dealing. Overall, I am partial to the U of T fair dealing guidelines, which are nuanced, sophisticated and yet very clear and logical. I should reiterate, as I have previously disclosed, that I had some involvement in their creation.

The final paragraph of the ACP document is particularly ironic:

As long-term, effective partners in education, Canadian-owned higher-education publishers are open to discussion and negotiation on the limits of fair dealing. We propose that copyright users adopt policies based in the principles we outline here, an approach that recognizes that authors, publishers, professors, learners, universities, colleges and schools are partners, not adversaries, in education.

One may well ask how parallel efforts in seeking a mandatory tariff, suing a major university, and disseminating wrong and misleading statements of principle are likely to promote a relationship of “partners, not adversaries, in education”.


Friday, February 14, 2014

Warman and National Post Drop Appeals - Good News for Canadian Copyright Law

Just in time for  for Valentine's Day, though they probably didn't intend it that way, the National Post and Richard Warman have discontinued their appeals from the decision from Justice Rennie. These were to have been heard on February 19, 2014 here in Ottawa. This is a very pleasant surprise and lets Justice Rennie's decision stand. It will be interesting to see what happens with costs, since this went down to the wire. Such a last minute discontinuance of an appeal is very unusual. Here's what was at issue in the appeal:
  • what is substantial?
  • how does fair dealing apply in the context of news reporting, blogs, and critical comment?
  • when the limitation period begins to run for material posted online?, and
  • whether there can be copyright in a headline?
Here's what I've said about this in the past, which has resulted in some very capable interveners and counsel weighing in on this. The outcome is anticlimactic but very satisfactory in the sense that a good trial decision now stands as good law.

Here's the Notices of Discontinuance.


PS - here are the substantive memoranda filed by the parties and the interveners:

Saturday, February 08, 2014

Performing Music for Torture at Guantanamo - What are the Copyright Issues?

(sculpture of José Antonio Elvira in Guantánamo, a city in southeast Cuba. Wikimedia)

The issues of music as torture is once again back in the news, since a Canadian band named Skinny Puppy reportedly sent an invoice to the US Government for $666,000 for the alleged use of their "industrial dance" music without permission for this purpose

Having been among the first - maybe even the first - to write about this issue from a copyright standopint back in 2008, before President Obama got elected and promised to close down Guantanamo, I got called by the Voice of Russia - formerly Radio Moscow - to be interviewed on this subject. How could I resist this interview, on the eve of #Sochi2014?

Seriously, I agreed to do this interview on the copyright aspects of music as torture because "black humour" is an important component of informed discussion about serious issues. I take no position on the underlying very serious political, diplomatic, military, counter-trerrorism, human rights, etc. issues involved - which are, to say the least, very complex and very serious. I'm just a Canadian copyright lawyer.

Of all of the issues involved with GITMO, copyright is undoubtedly the most trivial - but it's rather interesting, ironic and would make for a fantastic law school exam question or moot.

Anyway, here's the Voice of Russia article, with a link to a voice interview with your's truly.


Wednesday, February 05, 2014

Access Copyright Proposed Governance Changes

As a member of Access Copyright, I am posting AC's latest email missive to the membership. My comments may or may not follow. In the meantime, reader's comments are welcome.


Dear Affiliate,

Access Copyright's Board of Directors wishes to notify you of proposed changes to AC's governance structure and a potential vote on the changes at the April 2014 AGM.

Access Copyright's traditional licensing is facing considerable challenges, particularly in the education sector. At a membership summit last spring representatives of our creator and publisher communities gathered to consider the future of Access Copyright and to begin the process of re-shaping the organization to meet these challenges.

In the past year the Board has endorsed a transformation agenda and much progress has been made. Access Copyright will continue to advocate on behalf of the copyright of creators and publishers, however, as a renewed organization, we must also re-dedicate ourselves to the service of content users. Our continued service to creators and publishers likely depends on our ability to develop new ideas and customer-facing digital services-specifically, content clearance and access tools integrated across digital platforms.  

In addition to the work on business strategy and communications, the Board is seeking to support the transformation agenda with a revised Governance structure.  

The proposed changes originated from the work of a Governance Advisory Group. The six-person Advisory Group included creator and publisher representatives with experience in organizational governance. The group reported to the Board of Directors and its mandate was to assess the current governance structure and recommend changes or enhancements that could support the strategic vision. 

The Advisory Group completed its work last August and made recommendations to the Board in September. And, after much reflection and minor amendments, the Board approved substantially similar recommendations in December, for the consideration by the membership.

At the heart of the proposed changes is the establishment of a member-driven Nominating Committee to enable the targeted recruitment of the most appropriate skills and expertise-while, of course, maintaining the essential character that defines Access Copyright.  

We believe a smaller, competency-based structure will be more agile, cost-effective and conducive to the task at hand; however we also recognize that this is a significant change and want to ensure our affiliates are well informed prior to the vote taking place.  

Please see the attached backgrounder for a more detailed overview of the proposed changes. If there is sufficient support to proceed, the proposal will be voted on by the member organizations at the 2014 AGM scheduled for April 25, 2014. Affiliates with questions or concerns about these changes are encouraged to contact their respective member organization. [sic - note that the final words "member organization" appeared in the e-mail as a non-functional link - HPK]

Nancy Gerrish  James Romanow
Nancy Gerrish             James Romanow
Co-Chair                     Co-Chair