CCH Canadian Ltd. v. Law Society of Upper Canada

A closer look at SCC decision on law publisher copyright

In 1993, three Canadian legal publishers initiated legal proceedings against the Law Society of Upper Canada asserting that the not-for-profit photocopy service of the Law Society's Great Library infringed their copyright. The case moved through the Federal Court to the Supreme Court of Canada, with the Federation of Law Societies intervening in support of the Law Society of Upper Canada.

On March 4, 2004 the Supreme Court of Canada delivered its reasons for judgment in CCH Canadian Ltd. v. Law Society of Upper Canada 2004 SCC 13. The Law Society of Upper Canada was successful on its appeal,while the publishers were unsuccessful in their cross-appeal.

The Supreme Court held that the Law Society of Upper Canada's Great Library did not infringe the copyright of the law publishers in making single photocopies of legal material, including copies of case reports and excerpts from legal texts, for lawyers doing legal research or in providing self-service photocopiers for use in the Great Library. Noting that s. 29 of the Copyright Act allows for "fair dealing" in copyrighted material for the purpose of research or private study, the Court reviewed the factors in assessing what constitutes fair dealing and gave a liberal interpretation to "research." Research is not limited to non-commercial or private contexts and encompasses legal research by a lawyer in the practice of law.

The Law Society of Upper Canada published the following notice to Ontario lawyers in the March 26, 2004 Ontario Reports and March-April Ontario Lawyers Gazette, also available on the Society's website at www.lsuc.on.ca. The article, which summarizes key points in the judgment and offers advice through a series of questions and answers, has been reprinted at the request of the Law Society of BC Libraries Task Force and with permission of the Law Society of Upper Canada. It has been modified only as necessary for clarity, in particular to flag references that are specific to Ontario.

The Supreme Court of Canada recently held the Law Society of Upper Canada (LSUC) does not infringe copyright when a single copy of a reported decision, case summary, statute, regulation or limited selection of text from a treatise is made by the Great Library in accordance with its access policy.

The Supreme Court also found that research undertaken as part of the commercial practice of law is in fact "research," and is therefore able to be protected under the Copyright Act.

The decision ended a lawsuit originally launched in 1993 by three legal publishers - CCH Canadian, Carswell and Canada Law Book - against the Law Society of Upper Canada. The publishers unsuccessfully attempted to enjoin photocopying services the Great Library has offered since 1954. The Great Library provides single copies of extracts from its collection of legal resources to lawyers, students and judges for the purposes of research and submission to court.

The Supreme Court unanimously delivered a strong message regarding key arguments made by the Law Society in the case, holding that:

  • reproduction by lawyers of single copies of case reports, including headnotes, along with other legal materials as part of their research during the commercial practice of law constitutes fair "research," which is protected by the provisions of the Copyright Act;
  • even if copyright resides in the publishers' case headnotes appearing in published reported decisions, the publishers do not hold a copyright over the accompanying judge's decision itself. As a result, the publishers' copyright cannot be infringed when anyone photocopies the portion of a reported decision that is the judge's decision, even if done for a purpose other than research, so long as the headnote is not copied as well;
  • LSUC's not-for-profit and request-based photocopy service is an example of "fair dealing" that is protected under the Copyright Act;
  • LSUC is entitled to assume that free-standing photocopiers in the Great Library will be used in compliance with the Copyright Act, and is therefore entitled to maintain those copiers in the Library.

Among its far-reaching implications, the decision guarantees access to the law for local law libraries, lawyers and their clients. It means that the Great Library - and by extension, the profession - does not have to pay legal publishers a licensing fee for copying legal materials, provided the copying is limited and for legitimate research purposes.

Law libraries

The decision means that the provision of self-service photocopiers on the Great Library's premises will not amount to an infringement of copyright by the library when patrons use the machines, even if an abuse by a library patron happens to occur.

The court found that the Law Society's photocopying guidelines and policies, when followed, constituted fair dealing. As a result, it is recommended that law libraries consider adopting adequate controls on photocopying to ensure that they comply with the guidance provided by the court in this decision.

The decision means counsel can continue to do most, if not all, of their day-to-day legal research activities, including the making of reproductions of materials needed for submission to court, without the need to obtain a reproduction license.

The Supreme Court of Canada agreed with the Federal Court of Appeal's statement that "research for the purpose of advising clients, giving opinions, arguing cases, preparing briefs and factums is nonetheless research."

 
The BCCLS copyright policy

As part of its research and reference services, the BC Courthouse Library Society may provide users with single copies of legal information materials that are required for the purpose of research, review, private study or criticism, as well as for use in legal or governmental proceedings. Compliance with the Copyright Act is the responsibility of each user of the Society's libraries and services, including the use of self-service photocopiers and printers at courthouse libraries throughout BC.

The service is provided on a not-for-profit basis, and the fee charged is intended to recover some of the costs associated with the provision of the service. The copy service is provided primarily in Vancouver, and all service forms require that clients acknowledge the proper use of the materials requested for copying.

Lawyers can also continue to make fair use of the LSUC's photocopying services. To ensure their photocopying activities fit within the Supreme Court's "fair dealing" requirement, lawyers should:

  • continue to reproduce only single copies of the legal resources they require;
  • refrain from producing and distributing multiple copies of any work, as this might be considered unfair (this restriction may not apply to copies required for use in court);
  • reproduce materials only to the extent required in order to finish the research they are undertaking;
  • consult copyright counsel if a photocopy is required for a reason that does not fall squarely within the scope of research activities enunciated by the Supreme Court, or if it is to be copied in quantities or circumstances where the fairness of the dealing may be questioned.

For lawyers' clients, the decision means the cost of their counsel carrying out required research should be maintained at current levels. Lawyers and firms will not need to incur additional costs related to copyright licences, and that means no additional costs for photocopying materials associated with legal research will be passed on to clients.

For more information, please visit the Law Society of Upper Canada's web site at www.lsuc.on.ca.

Questions and Answers

Question: What was the case about?

The LSUC Great Library at Osgoode Hall has offered a request-based, not-for-profit photocopying service to members, students, the judiciary and other authorized researchers since 1954. The principles governing the operation of this service are contained in a policy statement known as the Law Society's Access to the Law Policy.

Generally speaking, LSUC will provide single copies of reported judicial decisions, articles, and statutory references - or up to five per cent of the volume from a secondary resource - to lawyers who request them. Those who request the service must confirm in advance that the copies are required for the purpose of research or use in court.

In addition, for about the same period of time, the Law Society of Upper Canada has provided patrons of its Great Library with access to self-service photocopiers on the library's premises. The photocopiers enable patrons to make copies for research purposes.

LSUC believes both of these services are essential to providing members throughout Ontario with equal access to the Great Library's extensive collection of legal materials. Copying services are essential because the library's collection of materials is non-circulating and many members do not practise in the vicinity of the Great Library.

In 1993, LSUC was sued for copyright infringement by CCH Canadian Limited, Thomson Canada Limited (Carswell) and Canada Law Book Inc. The Supreme Court of Canada ultimately determined the case in the Law Society's favour on March 4, 2004, following a four-week trial in the Federal Court of Canada in 1998-99 and a four-day appeal to the Federal Court of Appeal, which was decided in 2002.

Question: Why did the Law Society of Upper Canada decide to defend these cases?

During the proceedings, it became apparent that the publishers were attempting to do more than enjoin LSUC's copying services. The publishers' ultimate goal was to require all lawyers and their firms to pay licence fees for copies of reported judicial decisions and limited extracts from texts and other materials, even when made for research purposes.

The Law Society of Upper Canada successfully argued that its photocopying services and the research activities of lawyers constitute fair dealing under the Copyright Act and do not infringe copyright.

Question: What did the Supreme Court decide?

The Court confirmed that the concept of "research" is not limited to non- commercial or private contexts. It affirmed that "research for the purpose of advising clients, giving opinions, arguing cases, preparing briefs and factums is nonetheless research ... Lawyers carrying on the business of law for profit are conducting research within the meaning of [fair dealing]."

The Court held that LSUC's custom copying service is provided for the purpose of research. In light of the controls put in place by the Law Society of Upper Canada under its Access to the Law Policy, LSUC's dealings are also fair in the circumstances.

The Court rejected the publishers' suggestion that, by merely providing library patrons with access to self-service photocopiers, the Great Library could be deemed to be authorizing copyright infringement. A library is entitled to presume that patrons who are provided with access to such machines are going to use them lawfully.

Finally, the Supreme Court decided that, while the publishers may own copyright in a headnote they write and publish, this copyright does not extend to cover their publication of an edited version of reasons for decision written by a judge. Accordingly, the Court's decision stands for the proposition that copyright cannot be infringed by the reproduction, for any purpose, of the reasons for decision portion of a published case report, when the accompanying headnote is not copied with it.

Question: What are the implications of this decision for law libraries?

The decision makes clear that, absent special relationships of employer-employee or master-servant, a library's provision of self-service photocopiers on the library's premises will not amount to an infringement of copyright by the library when those machines are used by patrons - even if an abuse by a library patron happens to occur.

The decision also finds that the photocopying guidelines and policies followed by the Law Society of Upper Canada constitute fair dealing. It is recommended that law libraries consider adopting adequate controls on photocopying to ensure that the libraries comply with the guidance provided by the Court in this decision.

Question: What are the implications for lawyers doing research?

The Supreme Court has clarified that most of the day-to-day dealings by lawyers with photocopies fall within the concept of "research" under the Copyright Act. The decision means lawyers may continue with most (if not all) of their personal research activities without the need to obtain a licence. They can also continue to make fair use of the LSUC photocopying services.

However, the Court's decision is not a blanket authorization for lawyers to copy works in any manner and for any purposes. In order to qualify as a "fair dealing," a work may only be copied for the purpose of "research or private study" and only in circumstances that are objectively "fair."

The following guidelines are suggested to help lawyers ensure that their dealings with photocopied resources continue to meet this "fairness" requirement:

  • Lawyers should continue to reproduce only single copies of the legal resources they require for research purposes. Lawyers should refrain from reproducing and distributing multiple copies of any work, as this might be considered unfair. This restriction may not apply to copies required for use in court.
  • Lawyers should reproduce materials only to the extent required to complete the research they are undertaking. The Supreme Court recognized that, in many cases, proper legal research may require an entire case, article or statutory reference to be reproduced.
  • If a photocopy is required for a reason that does not fall squarely within the scope of permitted research activities enunciated by the Supreme Court - or if copies are to be made in quantities or circumstances where the fairness of the dealing may be questioned - lawyers are advised to consult copyright counsel.

Question: What does this decision mean for lawyers' clients?

This decision should mean that counsel will still be able to undertake and perform all research necessary to guard and protect their clients' interests without fear of infringing copyright. Further, the cost for counsel to carry out these research activities should be maintained at current levels; lawyers and firms will not need to incur additional costs associated with copyright licences.