•tSC
Date: 20000510
Docket: A-806-99 (T-1618-93)
BETWEEN:
CCH CANADIAN LIMITED
Appellant (Plaintiff)
-andTHE LAW SOCIETY OF UPPER CANADA
Respondent (Defendant)
Docket No. A-807-99 (T-1619-93)
THOMSON CANADA LIMITED c.o.b. as CARSWELL THOMSON PROFESSIONAL PUBLISHING
Appellant (Plaintiff)
- and -
THE LAW SOCIETY OF UPPER CANADA
Respondent (Defendant)
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Docket No. A-808-99 (T-1620-93)
CANADA LAW BOOK INC.
Appellant (Plaintiff)
- and - THE LAW SOCIETY OF UPPER CANADA
Respondent (Defendant)
REASONS FOR ORDER
SHARLOW J.A.
[1] The Canadian Copyright Licensing Agency ("Cancopy") seeks leave to intervene in these appeals. The three appellants (the "Publishers") consent to the intervention. The respondent, the Law Society of Upper Canada ("LSUC"), opposes it. I have concluded, for the reasons below, that the application for intervention should be dismissed with costs.
[2] The Publishers produce case reports, legal textbooks and other legal references. They maintain that copyright subsists in those publications, that they own the copyright, and that LSUC has breached their copyright through the operation of its custom photocopying service at the Great Library at Osgoode Hall in Toronto and through the provision of free standing
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photocopy machines at the Great Library. These services are provided to lawyers who are members of LSUC, and to the judiciary.
[3] In 1993, each of the Publishers sued LSUC seeking relief for the alleged breaches of copyright. LSUC defended the claims and asserted a counterclaim for a number of declarations, including a declaration that it is not infringing any copyright of the Publishers, and that its conduct and services constitute fair dealing under sections 29 or 29.1 of the Copyright Act, R.S.C. 1985, c. C-42, and do not involve copying a substantial part of any work belonging to the Publishers. LSUC also argues that it is exempt from copyright infringement as a matter of public policy. LSUC based its counterclaim on a number of constitutional and other legal principles.
[4] The three cases were heard together by Mr. Justice Gibson. His decision is now reported at (1999), 169 F.T.R. 1, (1999), 179 D.L.R. (4th) 609, (1999), 2 C.P.R. (4th) 129. He concluded that the Publishers have copyright in their textbooks and other legal references and that their copyright was infringed by LSUC when it made and distributed photocopies of excerpts of those works. However, he found that the Publishers have no copyright in their case reports. He declined to grant an injunction against LSUC in favour of the Publishers.
[5] Mr. Justice Gibson also refused LSUC's counterclaim. He said this at paragraph 202 of his reasons:
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[para202] The declaration sought by the defendant is a paradigm of overreaching, particularly in the light of the "library exception" to the Copyright Act adopted by Parliament, only recently in force, and not argued in any substantive way before this Court. No declaration will issue in favour of the defendant.
[6] Appeals and cross-appeals have been filed in all three cases. They will be heard together
pursuant to an order for consolidation.
[7] Cancopy is a collective society that represents more than 4500 authors and publishers and 31 organizations representing authors and publishers. LSUC says that the Publishers in this case are members of Cancopy. Cancopy acts on behalf of its members in various ways. For example, it enters into agreements on behalf of copyright owners for the collection of royalties payable
with respect to reprographic reproduction rights, and distributes the royalties to the copyright owners. Cancopy claims to administer a repertoire of more than 1.7 million copyright works. It also claims to have entered into agreements with the federal government and several provincial governments, as well as public schools, public libraries, universities, commercial copying shops, and other large organizations. Cancopy asserts that, as a result of being a party to a number of international agreements with analogous organizations in other countries, it has a role in enforcing Canada's international agreements relating to copyright protection. It appears that there was evidence at trial that Cancopy had offered an agreement to LSUC, but its offer was not accepted.
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[8] LSUC has commenced an action in the Ontario Superior Court, naming Cancopy and the Publishers as defendants, to seek a declaration that is similar to the declaration sought in this case by counterclaim. It appears that the Ontario action was started before LSUC asserted its counterclaim in this case, and LSUC joined its claim to this case as a result of an agreement by all parties to avoid unnecessary duplication. The Ontario action has been stayed by consent. I assume that stay will remain in effect until the disposition of these appeals.
[9] The issues on which Cancopy wishes to make submissions on this appeal may be paraphrased as follows:
a) whether LSUC is entitled to rely upon the exception of fair dealing under s. 29 or 29.1 of the Copyright Act or the library exception;
b) whether the library exception is a valid ground for refusing LSUC's claim for declaratory relief,
c) whether LSUC is exempt from copyright infringement as a matter of public policy and overriding public interest;
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d) whether LSUC's claim for declaratory relief is aided by one or more constitution principles, including the rule of law and sections 2(d), 7 and 15 of the Canadian Charter of Rights and Freedoms.
[10] Sections 29 and 29.1 of the Copyright Act, the "fair dealing exceptions", read as follows:
29. Fair dealing for the purpose of research or 29. L'utilisation équitable d'une oeuvre ou de private study does not infringe copyright. tout autre objet du droit d'auteur aux fins d'étude privée ou de recherche ne constitue pas unie violation du droit d'auteur.
29.1 Fair dealing for the purpose of criticism or 29.1 L'utilisation équitable d'une oeuvre ou de
review does not infringe copyright if the tout autre objet du droit d'auteur aux fns de following are mentioned: critique ou de compte rendu ne constitue pas une violation du droit d'auteur à la condition que soient mentionnés:
(a) the source; and a) d'une part, la source;
(b) if given in the source, the name of the b) d'autre part, si ces renseignements figurent dans la source,
(i) author, in the case of a work [...]. (i) dans le cas d'une oeuvre, le nom de l'auteur [...].
[11] The library exception is found in sections 30.1 to 30.2 of the Copyright Act, enacted by S.C. 1997, c. 24, s. 18, which came into force on September 1, 1999 (SI/99-86) after the end of the trial but before judgment was rendered.
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[12] Several parts of the library exception may be relevant to this case. For example, subsection 30.2(1) says that 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. Subsection 30.3(1) says that an educational institution or library, archive or museum does not infringe copyright by providing photocopying facilities, as long as certain conditions are met. One condition requires arrangements to have been made for the payment of royalties. One possibility is an agreement with a collective society, such as Cancopy, that is authorized by copyright owners to grant licences on their behalf.
[13] The questions to be asked in determining whether a party should be permitted to intervene were stated by Mr. Justice Rouleau in Rothmans, Benson & Hedges Inc. v. Canada, [1990] 1 F. C. 74. His summary of the applicable principles was approved on appeal, [1990] 1 F.C. 90. For present purposes I consider it necessary to refer to only two factors. One is whether Cancopy will be directly affected by the outcome. The other is whether the merits of the case can be fairly determined without the participation of Cancopy.
[14] In the arguments submitted in support of its application to intervene in the appeal, Cancopy says that it has a direct interest in the outcome of this case because of its status in the Ontario proceedings. LSUC disputes this assertion. It says that no relief is being sought against Cancopy in the Ontario proceedings. LSUC submits that the interest of Cancopy is limited to its interest as the agent of the Publishers with respect to the collection of royalties. 1 agree with
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LSUC that Cancopy's status in the Ontario litigation is not sufficient to justify its intervention in these appeals.
[15] However, Cancopy also claims an interest in the decision of this Court with respect to the public interest defence, the library exceptions and other issues. Cancopy says that this Court's decision on those issues could adversely affect Cancopy's existing and future licensing arrangements, and thus the economic returns to the copyright owners that Cancopy represents. It suggests that other self-governing professions established to serve the public interest may assert similar defences, which will also affect Cancopy's agreements and the copyright owners. It also argues that it has special expertise that would be of assistance to the Court in dealing with these issues.
[16] I agree with the submission of LSUC that Cancopy's interest in the issues referred to
above is nothing more than a jurisprudential interest. It is no different than the interest of anyone
who has or may have a copyright in a work, or who acts on their behalf to protect their interests.
LSUC cites the decision of this Court in Tioxide Canada Inc. v. Canada, [1994] F.C.J. No. 634
(QL) and The Queen v. Bolton, [1976] 1 F.C. 252. In Bolton, Jacket C.J. said (at page 253):
In our view, no matter how widely one interprets the Court's power to permit persons to be heard, it does not extend to permitting a person to be heard merely because he has an interest in another controversy where the same question of law will or may arise as that which will or may arise in the controversy that is before the Court.
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[17] I have no doubt that LSUC's assertion of defences based on fair dealing, public interest, public policy and constitutional principles will be explored in the appeal, and that the Publishers are fully capable of addressing them in an effective manner. I am not persuaded that Cancopy is in a position to make any submissions that cannot be made with equal effect by the Publishers, or that Cancopy has a perspective on the issues that is so different from that of the Publishers that the Court will derive any assistance from its participation.
[18] For these reasons, the application for intervention will be dismissed with costs.
Karen R. Sharlow
J.A.
FEDERAL COURT OF APPEAL
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: A-806-99 A-807-99 A-808-99
APPEAL FROM THE JUDGMENT OF THE TRIAL DIVISION OF THE FEDERAL COURT OF CANADA, DELIVERED NOVEMBER 9, 1999 DOCKET: T-1618-93
STYLE OF CAUSE: CCH Canadian Limited v. The Law Society of Upper Canada
Thomson Canada Limited v. The Law Society of Upper Canada
Canada Law Book Inc. v. The Law Society of Upper Canada
DATE OF ORDER: Wednesday, May 10, 2000
REASONS FOR ORDER PURSUANT TO RULE 369
SHARLOW, J.A.
COUNSELS ON RECORD:
Mr. Roger T. Hugues Toronto, Ontario
Mr. A. Kelly Gill Toronto, Ontario
FOR THE APPELLANT
FOR THE RESPONDENT
SOLICITORS OF RECORD:
Sim, Hugues, Ahston & McKay Barristers & Solicitors
Gowling, Strathy & Henderson Barristers & Solicitors
FOR THE APPELLANT
FOR THE RESPONDENT