Law Times

Page 9 Law Times • September 23, 2013 Focus On Intellectual Property/Trademark Law Copyright changes Universities slow to use new fair-dealing rights BY CHARLOTTE SANTRY Law Times C opyright lawyers are questioning why Canadian universities seem afraid to use the fairdealing rights handed to them in a string of landmark rulings. Universities' "overly conservative" approach could be restricting the ability of professors and students to make copies of works for teaching purposes, the lawyers fear. The Supreme Court of Canada confirmed in its group of copyright decisions last year that fair dealing is a user's right given a more liberal interpretation. One of the five decisions, Alberta (Education) v. Canadian Copyright Licensing Agency (Access Copyright), specifically dealt with using copies for the purposes of teaching. In another helpful development for universities, Bill C-11, which took effect later in 2012, added "education" as an acceptable fair-dealing use. But recent events suggest universities are still wary of copying works that might fall under the fair-dealing rule. "There's a big chill on Canadian university campuses," says Howard Knopf, counsel at Macera & Jarzyna LLP. "Professors and librarians and students are afraid, in some cases, to do what they need to do in terms of instructing and teaching." He highlights the Association of Universities and Colleges of Canada's updated guidelines on fair dealing. The guidelines say it's OK to copy a "short excerpt" of a protected work and refer to an excerpt as being "up to 10 per cent of a copyright-protected work." Knopf questions how it's possible for music teachers to teach a three-minute song if they can only play an 18-second excerpt for students. In the 2004 case of CCH Canadian Ltd. v. Law Society of Upper Canada, the Supreme Court suggested it may be OK to copy entire works under fair dealing depending on a range of factors. Ariel Katz, associate professor at the University of Toronto's Faculty of Law, says when people look at the case law, the association's guidelines are "overly conservative" and make "unnecessary concessions." "We have a message from the court and Parliament that says 'go ahead,' but I don't think these [association] guidelines appreciate that," he says. The university sector as a 'Professors and librarians and students are afraid, in some cases, to do what they need to do in terms of instructing and teaching,' says Howard Knopf. whole is failing to exploit the fact that "fair dealing is now broader in scope than fair use," according to a September 2013 paper written by University of Western Ontario doctoral student Lisa Di Valentino. Di Valentino concludes: "Colleges and universities in Canada may now confidently develop copyright policies that reflect the rights of users, but educational administrators and associations in Canada are lagging behind their American counterparts in leveraging this opportunity." Any risk aversion on the part of universities could be down to the long-running dispute involving Access Copyright, a body that collects licence fees on behalf of publishers it represents. Access Copyright provoked the ire of universities by changing its terms of service and increasing its fees to $45 per student annually. When universities complained, the Copyright Board imposed an interim tariff, equal to the original rate, that had previously led to average charges of $18.64 per student. The association embarked on an intense round of negotiations only to withdraw from the process last April. A group of universities, including York University, independently took a stand against the tariff. Some announced that, as they were already paying licence fees directly to publishers, they no longer required a third party. In April, Access Copyright brought a lawsuit against York for reproducing works without paying the interim tariff. York filed its statement of defence and counterclaim with the Federal Court on Sept. 5, 2013. The university, represented by Osler Hoskin & Harcourt LLP, argues there's no basis in the Copyright Act for an interim tariff and denies it's infringing copyright. The statement says: "York is already paying significant amounts each year to publishers, and obtains copyright clearances when needed." In its view, "This action is essentially an attempt by Access Copyright to require York, or students enrolled at York, to pay . . . more than once for the same copies." But Knopf calls York's filed statement "anti-climatic" because, he argues, it focuses on the legality of the interim tariff instead of questioning whether www.lawtimesnews.com Untitled-1 1 there needs to be any levy at all. He believes the university could have applied for a motion to strike out the action or pushed for summary judgment. Access Copyright was unable to launch an infringement action as it's neither a user nor a licensee of copyright. However, the York lawsuit risks "morphing into an infringement action," says Knopf. Katz echoes this notion. He says Access Copyright now stands to win "much more than they ever could have got if they were suing for copyright infringement." Some fear that if the York action turns into a trial of the fair-dealing guidelines, it will weaken some of the wins of the past decade. In the meantime, some universities have produced their own fair-dealing guidelines that appear to take a more expansive view of users' rights than the association's approach sets out. One of the more assertive institutions on fair dealing, the University of Toronto, has drawn up its own policy that states: "In some limited circumstances, such as with a photograph or drawing, an entire work may be copied." But would universities in general be more bullish about their fair-dealing rights if they had greater inhouse copyright expertise? The University of British Columbia's counsel, Hubert Lai, has a background in intellectual property. Lai took an early stand against Access Copyright's demands and the university has even opened its own copyright office. Katz highlights the approach taken in Israel where forums of non-legal university staff meet regularly to discuss whether guidelines are working. "That's a much better approach than outsourcing it to a law firm," he says. LT 13-09-17 8:23 AM

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