CanCopy approaching B.C. law firms to seek photocopy licenses
July 15, 1999
The Law Society has learned that the Canadian Copyright Licensing Agency (CanCopy) has recently contacted a number of B.C. law firms in an effort to have them sign photocopying licence agreements. CanCopy represents the major Canadian legal publishers and, on their behalf, is seeking to recover fees for copying their publications.
While each law firm should seek its own advice and make its own decisions with respect to its obligations under copyright law, some background on the CanCopy licence may be useful.
The National Copyright Committee of the Federation of Law Societies of Canada has monitored legal copyright issues for several years and has lobbied the federal government to clarify the Copyright Act and to make any changes needed for unrestricted access to legal materials.
At present, copyright issues are the subject of litigation between the Law Society of Upper Canada and the legal publishers in Federal Court. In the view of the National Copyright Committee, CanCopy should await the outcome of this litigation before finalizing its photocopy licence and before approaching law firms. The Copyright Committee hopes the Federal Court decision will provide guidance to law societies, libraries and lawyers in understanding the scope of copyright in legal materials, the application of various exemptions in the Copyright Act and what copying activities, if any, should be covered by a licence from CanCopy.
The Copyright Committee previously held discussions with CanCopy about their photocopy licence, but did not reach any agreement. In addition to the lack of clarity over what copying is legally compensable, the Committee has concerns over whether the royalty rate proposed by CanCopy is appropriate. The Committee is also of the view that photocopying licence agreements between U.S. legal publishers and certain large American law firms — which CanCopy refers to in its correspondence — have limited value as a precedent in the Canadian context.
A summary of comments by the Copyright Committee on Cancopy’s proposed licence agreement is set out below. Further background and updates are available on the Federation website at www.flsc.ca/English/copyrightupdate.htm. For more information, please contact Charlotte Ensminger, Staff Lawyer, Law Society of B.C. (tel: (604) 605-5313; email: firstname.lastname@example.org) or Diane Bourque, Executive Director, Federation of Law Societies of Canada (tel. (514) 875-6351; email: email@example.com).
Extract from the january-February, 1999 Benchers' Bulletin:
From the Federation of Law Societies of Canada (National Copyright Committee)
Federation gives update on CanCopy's proposed licence agreement
The Canadian Copyright Licensing Agency (CanCopy), which represents the major Canadian legal publishers, recently advertised to law firms the availability of photocopy licensing agreements.
As noted on several earlier occasions, the National Copyright Committee of the Federation of Law Societies of Canada has expressed the view that there are important public policy and legal questions concerning copyright in legal materials. Some of these questions are now the subject of a trial that began in the Federal Court on November 23, 1998 between the Law Society of Upper Canada and the legal publishers.
The National Copyright Committee says it hopes a decision from the Federal Court in that case will provide guidance to law societies, libraries and lawyers in understanding the scope of copyright in legal materials, the application of various exemptions in the Copyright Act, and what copying activities, if any, should be covered by a licence from CanCopy.
For that reason, the Committee has expressed the view that it is preferable for CanCopy to await the outcome of the trial before finalizing an agreement and approaching the legal profession. It appears, however, that CanCopy views the issues in the litigation as too narrow to provide guidance to the profession.
The National Copyright Committee has commented on the current form of the CanCopy licence agreement, as follows:
- The Committee understands that the royalty rates set out in the agreement were decided by CanCopy based on information from licensing schemes in other contexts and other countries, notably the United Kingdom. The Committee recognizes the difficulty in establishing an appropriate royalty rate without undertaking a comprehensive survey of the Canadian legal profession. At the same time, an empirical basis for the royalty rates proposed by CanCopy has not been established in the Canadian legal context. For this reason, the Committee believes it would be preferable to await the outcome of the current trial for a clearer understanding of what copying activities should be properly covered by the licence, and thereby to assess the value of such copying.
- While the Committee is pleased that the licence agreement provides for no increases in the royalties to be paid to CanCopy for two years, there are no limits on increases in royalty rates after that time, and there is no clear basis for determining how adjustments would be made in subsequent years (e.g., to take into account any decline in copying of legal materials). The licence agreement states that it does not apply to copying permitted under the Copyright Act; however, the agreement provides little guidance to indicate when copying of any legal materials may be permitted (e.g., because they are not subject to the publishers’ copyright, because copyright has expired or because copying may be covered by an exemption in the Copyright Act). Again, the Committee would prefer to await the outcome of the litigation so that members of the profession might have a better understanding of their rights in this area.
- To the extent that the legal publishers already acknowledge copying materials such as reported judicial decisions for use in judicial and other proceedings is not compensable, the Committee understands that the licence agreement will not apply to this activity.
- The profession should be aware that the licence agreement does not permit the conversion of works from printed form into electronic media (except for the making of a temporary digital copy solely to make a single print copy). The agreement also does not permit the copying of any work from CD-ROM or other digital media into printed form.
- The profession should also note that there are prohibitions in the licence agreement against any "off-premises" copying (except for materials owned by the firm) and the obligations to insert a notice on the first page of any copy that is made under the agreement.
- The agreement limits the amount of copying. When a firm requires copies beyond those limits, it will be necessary to obtain specific permission from the rights holders.
- Law firms should review carefully the provisions of the CanCopy licence agreement relating to record-keeping and rights of inspection granted to CanCopy. (Under the form of agreement currently proposed, a firm is not required to provide any information or make available its records in such a way as to violate any obligation of confidentiality to clients or solicitor-client privilege.)
The National Copyright Committee encourages any law firm that is requested to sign a licence agreement with CanCopy to seek its own advice in responding to the request.
Firms should be aware of provisions of the Copyright Amendment Act passed in 1997 and expected to be proclaimed shortly. These include provisions that permit a party in an infringement proceeding to claim statutory damages without the need to show the actual damages suffered due to the infringement.