Judgments

[2000] 2 F.C. 451

T-1618-93

CCH Canadian Limited (Plaintiff)

v.

The Law Society of Upper Canada (Defendant)

T-1619-93

Thomson Canada Limited c.o.b. as Carswell Thomson Professional Publishing (Plaintiff)

v.

The Law Society of Upper Canada (Defendant)

T-1620-93

Canada Law Book Inc. (Plaintiff)

v.

The Law Society of Upper Canada (Defendant)

Indexed as: CCH Canadian Ltd. v. Law Society of Upper Canada (T.D.)*

Trial Division, Gibson J.—Toronto, November 23, 1998; Ottawa, November 9, 1999.

Copyright — Infringement — Law publishers suing Law Society of Upper Canada regarding custom photocopy service, self-service photocopiers provided to members of Ontario Bar, judiciary — Plaintiffs claiming copyright in reported judicial decisions, headnotes, case summaries, topical index, legal textbooks — Defendant allegedly infringing copyright by photocopying, distributing materials — Copyright subsisting in every original literary work, subject to Copyright Act — Case law on “originality” for copyright reviewed — Commercial law publishers having no copyright in reported judicial decision including headnotes, other value added features as lacking in “imagination”, “creative spark” — Plaintiffs owner of copyright, where copyright found to exist, in certain of works at issue — Copying from textbooks “substantial” — Copying of works affecting prejudicially copyright owner under Copyright Act, s. 27(2)(b) — Transmission of copies by facsimile communication of literary work by telecommunication — Not telecommunication “to the public” under Act, s. 3(1)(f) — Defendant’s arguments in respect of works for which copyright held to exist ill-founded.

Barristers and Solicitors — Governing body — Commercial law publishers claiming infringement of copyright in legal materials photocopied, sold by Law Society of Upper Canada through Osgoode Hall’s Great Library to members of Ontario Bar, judiciary — Court rejecting argument defendant’s role in administration of justice such as to override plaintiffs’ copyright interests — Cases about payment of licence fee, not access to law.

These actions for copyright infringement were brought against the Law Society of Upper Canada by three Canadian law publishers. The facts of the case and the arguments of counsel are set out in the second Editor’s note. Four main issues were raised herein: (1) the subsistence of copyright, (2) the ownership of copyright, (3) the infringement of copyright and (4) the defences to the actions.

Held, the actions should be allowed in part.

(1) Copyright is statutory law. The Copyright Act should be interpreted in light of its object and purpose which is to benefit authors. In doing so, however, it is capable of having a substantially broader-based public benefit through the encouragement of disclosure of works for the advancement of learning or, as in this case, the wider dissemination of law. Copyright subsists in every original literary work, subject to the terms of the Copyright Act. Particular emphasis should be placed on the word “original” which is an integral element of the definition “every original literary, dramatic, musical and artistic work” in section 2 of the Act. One of the purposes of the copyright legislation, historically, has been “to protect and reward the intellectual effort of the author in the work”. While not defined in the Act, the word “author” conveys a sense of creativity and ingenuity. In respect of compilations of data, it was said that the originality requisite to copyright is a matter of degree depending on the amount of skill, judgment or labour that has been involved. The same could be said with respect to a claim of copyright in edited reasons for judgment, both alone and in conjunction with “enhancements” such as a unique style of cause, catchlines, running heads, headnotes, lists of cases and other authorities cited and parallel citations. Copyright, other than any copyright owned by the Crown or a judge, is not capable of subsisting in a reported judicial decision (with headnote, running heads and other matter added by a publisher) published in a volume containing other reported judicial decisions. The whole process, particularly those elements involving skill and judgment, lacked the “imagination” or “creative spark” that are now essential to a finding of originality. Editorially enhanced judicial decisions should be measured by a standard of intellect and creativity in determining whether they give rise to copyright. The case reports at issue lack the “original expression” and fail to constitute the “intellectual creations” contemplated by Article 2 of the Berne Convention, 1971. Likewise, copyright, other than any copyright owned by the Crown or a judge, is not capable of subsisting in a headnote (with catchwords, statement of the case and conclusion) in a reported judicial decision, or in a case summary (comprised of a citation together with a brief synopsis of a judicial decision) or in a topical case index. However, on the evidence before the Court, the annotated statutory instrument containing commentary, citations and summaries of relevant case law, that is Martin’s Ontario Criminal Practice 1999, and the textbooks or monographs on legal issues, that are Economic Negligence and Forensic Evidence in Canada, reflect the degree of originality, creativity and ingenuity appropriate to the existence of copyright.

(2) As a general rule, the author of a work is the first owner of copyright and no assignment of copyright is valid unless it is in writing and signed by the copyright owner or his duly authorized agent. The Copyright Act provides for one general exception: if the author created the work during the course of his employment, the employer is the first owner of copyright. According to the evidence, editorial enhancements to the reported judicial decisions in issue, other than headnotes and catchlines, were authored by employees of the plaintiffs who “made the work” in the course of their employment. Copies of certificates of registration of copyright were also in evidence before the Court, each indicating that one or another of the plaintiffs was the owner of the copyright. Section 53 of the Act provides that a certificate of registration of copyright in a work is prima facie evidence that copyright subsists and that the registrant is the owner of the copyright. The alleged infringements of copyright herein predated the dates of registration. Where copyright other than Crown copyright or copyright in a judge was found to exist in the works at issue, the relevant plaintiff was the owner of the copyright based on the certificates of copyright and evidence of assignments before the Court. Where such copyright was incorrectly found not to exist, the relevant plaintiff was the owner of the copyright based on the totality of the evidence before the Court.

(3) Under subsection 3(1) of the Copyright Act, “copyright” in the case of literary works such as those in issue includes the sole right to communicate the work to the public by telecommunication. Thus, the limits of the “sole rights” of the owner of copyright in such works are defined by that which constitutes “infringement” of those rights. The evidence demonstrated that there was a substantial copying of the case reports and headnotes of Myer v. Bright, R. v. CIP Inc., and Hewes v. Etobicoke. The same applies with respect to the copying of the case summary of Confederation Life v. Shepherd and the topical index of the [1997] G.S.T. cases. What constitutes a “substantial part” is a question of fact and the courts have placed more emphasis upon the quality of what was taken from the original work than on the quantity. The evidence established that the copying from the textbooks Forensic Evidence in Canada and Economic Negligence was “substantial”. The copies of works in issue that were made in the course of the custom photocopy service were not “sold”. The copying of those works and the distribution of the photocopies to the requesters constituted a distribution and was “to such an extent as to affect prejudicially the owner of the copyright” within the meaning of paragraph 27(2)(b) of the Act. Storage of copies in the memory of a facsimile machine for subsequent distribution constituted possession for the purpose of sale or distribution. Transmission of copies by facsimile constituted communication of a literary work by telecommunication. However, the telecommunications herein were not telecommunications “to the public” within the meaning of paragraph 3(1)(f) of the Act.

(4) The first defence relied on by counsel for defendant was the overriding public interest and public policy. The role of the defendant and of its Great Library in the administration of justice is not such as to entitle it to override any copyright interests that the plaintiffs have or might have in the works at issue. The public interest in the due administration of justice and the ensuring of unrestricted access to the law would not be significantly impaired were plaintiff’s copyright interests to be recognized. These actions were not about access to the law, rather they were about the payment of a licence fee. There was no evidence that licences to carry on the custom photocopy service would not be granted or that the licence fees demanded would be so prohibitive as to impinge on the public interest or be contrary to public policy. Second, the defendant submitted that the plaintiffs had no standing to bring these actions because they were not the owners of copyright in the works in issue. If the plaintiffs were owners of copyright in all the works in issue, they are the owners thereof to the extent that the copyright derives from the work of their employees and, to the extent that it does not, by reason of assignments of copyright in evidence before the Court. Third, the defendant invoked the argument of fair dealing. Under sections 29 and 29.1 of the Copyright Act, fair dealing for the purpose of research, private study, criticism or review does not infringe copyright. The copying by the defendant in the course of its custom photocopy service was done in response to requests received, directly or indirectly, from defendant’s members; it was not done for the defendant’s own use in research, private study, criticism or review, and therefore not for a purpose within the ambit of fair dealing. The fair dealing exception should be strictly construed. This conclusion is consistent with the “library exception” amendment to the fair dealing sections recently adopted by Parliament and now proclaimed in force. The nature of the “library exception” issue, the nature of the response to that issue by Parliament and the extent of the public debate engendered by the amendments favour an interpretation of the “fair dealing” exception that does not encompass the activities of the custom photocopy service of the Great Library at issue. Fourth, counsel for the defendant submitted that the Court should exercise its discretion to refuse the plaintiffs’ request for a permanent injunction on the basis of equitable defences and considerations militating against granting the relief. To the extent that copyright in the works at issue was found to subsist in the plaintiffs or any of them and that such copyright has been infringed by the defendant, there was, on the evidence, no equitable basis upon which to conclude that a permanent injunction should not be granted. No bar existed, on equitable grounds or on the basis of an implied licence, to the granting of a permanent injunction. Although, counsel for defendant sought to invoke the Charter, or its principles, to convince the Court not to grant permanent injunction restraining defendant from conducting its custom photocopy service, to entertain those submissions would not, in the context of this case, constitute an appropriate use of judicial resources.

STATUTES AND REGULATIONS JUDICIALLY CONSIDERED

Canadian Charter of Rights and Freedoms, being Part I of the Constitution Act, 1982, Schedule B, Canada Act 1982, 1982, c. 11 (U.K.) [R.S.C., 1985, Appendix II, No. 44], ss. 2(b), 7, 15.

Berne Convention for the Protection of Literary and Artistic Works (Paris Act of July 2, 1971 as amended September 28, 1979) (with Annex), [1998] Can. T.S. No. 18, Art. 2(3).

Copyright Act, R.S.C., 1985, c. C-42, ss. 2 “every original literary, dramatic, musical and artistic work” (as am. by S.C. 1993, c. 44, s. 53), “library, archive or museum” (as enacted by S.C. 1997, c. 24, s. 1), “literary work” (as am. by S.C. 1993, c. 44, s. 53), “work”, 3(1) (as am. idem , s. 55; 1997, c. 24, s. 3), 13(1), (3), (4) (as am. idem, s. 10), 27(1) (as am. idem, s. 15), (2) (as am. idem), 29 (as am. idem, s. 18), 29.1 (as enacted idem), 30.1 (as enacted idem, s. 18), 30.2 (as enacted idem), 30.21 (as enacted idem), 30.3 (as enacted idem), 36(1) (as am. idem, s. 20), (2) (as am. idem).

Exceptions for Educational Institutions, Libraries, Archives and Museums Regulations, SOR/99-325.

North American Free Trade Agreement Between the Government of Canada, the Government of the United Mexican States and the Government of the United States of America, [1994] Can. T.S. No. 2, Art. 1705.

Reproduction of Federal Law Order, SI/97-5.

CASES JUDICIALLY CONSIDERED

APPLIED:

Compo Company Ltd. v. Blue Crest Music Inc. et al., [1980] 1 S.C.R. 357; (1979), 105 D.L.R. (3d) 249; 45 C.P.R. (2d) 1; 29 N.R. 296; Bishop v. Stevens, [1990] 2 S.C.R. 467; (1990), 72 D.L.R. (4th) 97; 31 C.P.R. (3d) 394; 111 N.R. 376; Tele-Direct (Publications) Inc. v. American Business Information, Inc., [1998] 2 F.C. 22 (1997), 154 D.L.R. (4th) 328; 37 B.L.R. (2d) 101; 76 C.P.R. (3d) 296; 221 N.R. 113 (C.A.); Slumber-Magic Adjustable Bed Co. v. Sleep-King Adjustable Bed Co., [1985] 1 W.W.R. 112; (1984), 3 C.P.R. (3d) 81 (B.C.S.C.); Matthew Bender & Co., Inc. v. West Pub. Co., 158 F.3d 674 (2nd Cir. 1998); U & R Tax Services Ltd. v. H & R Block Canada Inc. (1995), 62 C.P.R. (3d) 257; 97 F.T.R. 259 (F.C.T.D.); Sillitoe and Others v. McGraw-Hill Book Co. (U.K.) Ltd., [1983] F.S.R. 545 (Ch.); Hy and Zel’s Inc. v. Ontario (Attorney General); Paul Magder Furs Ltd. v. Ontario (Attorney General), [1993] 3 S.C.R. 675; (1993), 107 D.L.R. (4th) 634; 18 C.R.R. (2d) 99; 160 N.R. 161; 67 O.A.C. 81.

CONSIDERED:

Apple Computer, Inc. v. Mackintosh Computers Ltd., [1987] 1 F.C. 173 (1986), 28 D.L.R. (4th) 178; 8 C.I.P.R. 153; 10 C.P.R. (3d) 1; 3 F.T.R. 118 (T.D.); affd [1988] 1 F.C. 673 (1987), 44 D.L.R. (4th) 74; 16 C.I.P.R. 15; 18 C.P.R. (3d) 129; 81 N.R. 3 (C.A.); affd Apple Computer, Inc. v. Mackintosh Computers Ltd.; Apple Computer, Inc. v. 115778 Canada Inc., [1990] 2 S.C.R. 209; (1990), 71 D.L.R. (4th) 95; 30 C.P.R. (3d) 257; 110 N.R. 66; University of London Press v. University Tutorial Press, [1916] 2 Ch. 601; Interlego A.G. v. Tyco Industries Inc., [1989] A.C. 217 (P.C.); Édition Hurtubise H M H Ltée c. Collège d’enseignement général et professionnel André-Laurendeau, [1989] R.J.Q. 1003 (C.S.); Hager v. ECW Press Ltd., [1999] 2 F.C. 287 (1998), 85 C.P.R. (3d) 289 (T.D.); Circle Film Enterprises Inc. v. Canadian Broadcasting Corporation, [1959] S.C.R. 602; (1959), 20 D.L.R. (2d) 211; 31 C.P.R. 57; Bishop v. Stevens, [1985] 1 F.C. 755(abridged); (1985), 4 C.P.R. (3d) 349 (T.D.); affd sub nom. Tele-Metropole Inc. v. Bishop et al. (1987), 18 C.P.R. (3d) 257; 80 N.R. 302 (F.C.A.); CTV Television Network Ltd. v. Canada (Copyright Board), [1993] 2 F.C. 115 (1993), 99 D.L.R. (4th) 216; 46 C.P.R. (3d) 343; 149 N.R. 363 (C.A.); Telstra Corporation Ltd v Australasian Performing Right Association Ltd. (1997), 146 ALR 649 (C.A.).

REFERRED TO:

Macmillan and Co., Limited v. Cooper (1923), 40 T.L.R. 186 (P.C.); Prism Hospital Software v. Hospital Medical Records Institute, [1994] 10 W.W.R. 305; (1994), 97 B.C.L.R. (2d) 201; 57 C.P.R. (3d) 129 (B.C. S.C.); Gould Estate v. Stoddart Publishing Co. (1998), 39 O.R. (3d) 545; 161 D.L.R. (4th) 321; 43 C.C.L.T. (2d) 1; 80 C.P.R. (3d) 161; 114 O.A.C. 178 (C.A.); Blacklock (H.) & Co. v. Pearson (C. Arthur), Ld., [1915] 2 Ch. 376; Pasickniak v. Dojacek, [1928] 2 D.L.R. 545 (Man. C.A.); Allen v. Toronto Star Newspapers Ltd. (1997), 36 O.R. (3d) 201; 152 D.L.R. (4th) 518; 78 C.P.R. (3d) 115; 105 O.A.C. 191 (Div. Ct.); Warwick Film Productions, Ltd. v. Eisinger, [1967] 3 All E.R. 367 (Ch.); Édutile Inc. v. Automobile Protection Assn. (1997), 81 C.P.R. (3d) 338 (F.C.T.D.); Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 111 S. Ct. 1282 (1991); Ital-Press Ltd. v. Sicoli et al. (1999), 86 C.P.R. (3d) 129 (F.C.T.D.); British Columbia Jockey Club et al. v. Standen (1985), 22 D.L.R. (4th) 467; [1985] 6 W.W.R. 683; 66 B.C.L.R. 245; 8 C.P.R. (3d) 283 (B.C. C.A.); Graves v. Pocket Publications, Limited (1938), 54 T.L.R. 952 (Ch. Div.); De Garis v Neville Jeffress Pidler Pty Ltd (1990), 95 ALR 625 (Aust. F.C.); Longman Group Ltd v Carrington Technical Institute Board of Governors, [1991] 2 NZLR 574 (H.C.); Canadian Council of Churches v. Canada (Minister of Employment and Immigration), [1992] 1 S.C.R. 236; (1992), 88 D.L.R. (4th) 193; 2 Admin. L.R. (2d) 229; 5 C.P.C. (3d) 20; 8 C.R.R. (2d) 145; 16 Imm. L.R. (2d) 161; 132 N.R. 241.

AUTHORS CITED

Copinger, Walter Arthur. The Law of Copyright in Works of Literature, Art, Architecture, Photography, Music and the Drama: including Chapters on Mechanical, Contrivances and Cinematographs, 5th ed. by J. M. Easton. London: Stevens and Haynes, 1915.

Copinger and Skone James on Copyright, 13th ed. by E. P. Skone James et al. London: Sweet & Maxwell, 1991.

Copinger and Skone James on Copyright, 14th ed. by K. Garnett et al. London: Sweet & Maxwell, 1999.

Vaver, David “Abridgements and Abstracts: Copyright Implication”, [1995] E.I.P.R. 225.

Vaver, David “Copyright in Legal Documents” (1993), 31 Osgoode Hall L.J. 661.

ACTIONS for copyright infringement in which the plaintiffs alleged that portions of primary and secondary legal materials published by them are photocopied by the defendant at its Great Library in Osgoode Hall and sold to members of the Ontario Bar and the judiciary. Actions allowed in part.

APPEARANCES:

Ronald E. Dimock, Glen A. Bloom and Cedric G. Lam for plaintiffs.

R. Scott Jolliffe, Andrew Kelly Gill and Michael R. Hilliard for defendant.

SOLICITORS OF RECORD:

Dimock Stratton Clarizio, Toronto, for plaintiffs.

Gowling, Strathy & Henderson, Toronto, for defendant.

EDITOR’S NOTE

The Editor, as authorized by Federal Court Act, subsection 58(2), has decided that the 164-page reasons for judgment handed down by Gibson J. herein should be published in the official reports as abridged. This is a decision of great importance to the Canadian law of copyright, the legal profession and law publishers. Omitted are the initial 86 pages which set out the facts and the arguments of counsel. His Lordship’s analysis and conclusions are published in full text while the following matters are omitted: reliefs, postscript, costs, Schedule “A” (certain sections of the Copyright Act) and Schedule “B” (provisions of the Act not yet in force when these actions were argued). Editor’s notes have been prepared in respect of the omitted portions.

The following are the reasons for judgment rendered in English by

Gibson J.:

Editor’s note (replacing paragraphs 1-114)

Actions for copyright infringement were launched against the Law Society of Upper Canada by three of Canada’s four major law publishers: CCH Canadian Limited, Carswell Thomson Professional Publishing and Canada Law Book Inc. The fourth, Butterworths, which edits the Ontario Reports for the Law Society, did not sue. The conduct complained of was that portions of primary and secondary legal materials published by plaintiffs and in the holdings of the defendant at its Great Library in Osgoode Hall are photocopied and sold to members of the profession. The Law Society provides both a custom photocopy service and self-service photocopiers. The three actions were heard at the same time based on evidence as to the practices of Canada Law Book. Counsel filed a lengthy Agreed Statement of Facts. Defendant has a statutory obligation to disseminate the judicial decisions of the Ontario courts. The Great Library serves members of the Ontario Bar and the judiciary. In earlier times, lawyers had to bring into the courtroom all of the volumes to be relied upon. But since the early 1980s the practice has been to provide judges with photocopies. About 75% of the photocopies made by defendant are of individual reported cases. About 19% of the items requested and filled by the Great Library was contained in plaintiffs’ publications.

The relief sought by plaintiffs, as revised at the opening of argument, was declarations that copyright subsists and was owned by plaintiffs in certain reported judicial decisions and the headnotes thereto as well as in certain case summaries, a topical index and legal textbooks and that defendant had infringed copyright by photocopying and distributing these materials. A permanent injunction was also sought.

While numerous issues were identified by counsel for the parties, the essential issue was as to whether copyright was capable of subsisting in the value added features (such as captions, headnotes, running heads, lists of cases and statutes judicially considered) contained in the published law report of a judicial decision. A further question was as to who is the author of a reported judicial decision and of the headnotes in the law report. Among the defences raised was that a “substantial part” of plaintiffs’ works had not been taken (Copyright Act), subsection 3(1)). Other defences put forward included that of “overriding public interest” (given defendant’s peculiar position) and “fair dealing” (Copyright Act, sections 29 and 29.1). Finally, defendant relied upon “numerous equitable defences” and certain provisions in the Canadian Charter of Rights and Freedoms.

The evidence put before the Trial Division Judge included a position paper prepared by the defendant in 1992 wherein it was acknowledged that “… to the extent that any commercial service adds value to the judgment issued by the courts, such as that by publishing a selection of judgments and adding headnotes and other editorial enhancements, that material is protected by a separate copyright in favour of the commercial entity”. Testimony for plaintiffs dealt extensively with the editorial process of case selection, editing and publication. Emphasis was placed upon headnote preparation. Expert testimony was heard on the question whether defendant’s custom photocopy service was a profit centre or a cost recovery operation.

In arguing for the subsistence of copyright, plaintiffs’ counsel pointed to the evidence that the editor-in-chief of a law report series may select as few as 500 cases out of as many as 10,000 judgments received over the course of a year. Raw judgments chosen for reporting undergo extensive copyediting by the publisher’s staff while a legal editor (external to the publisher in the case of private sector law reports series) is charged with creating a headnote, catchlines, lists of cases judicially noted, a statement of proceedings and a conclusion. It was urged that copyright exists in the many added value features found in a reported case. Indeed, it was plaintiffs’ submission that a judicial decision as published in a law report and the reasons for judgment as issued by a court were two different works. It was pointed out to His Lordship that defendant itself claims copyright in its series the Ontario Reports. Plaintiffs submitted that a headnote is a literary work protected by copyright since it is not merely a precis of the reasons for judgment and its creation requires skill and knowledge. The same could be said for legal textbooks which are scholarly works, often prepared by eminent law professors, requiring substantial time and research. Counsel for plaintiffs made reference to minutes of a 1960 meeting of defendant’s Library Committee expressing concern at the risk of exposure to litigation in that “photo copying of copyrighted material is a technical breach of copyright law …”.

Defendant suggested that the special status of the Law Society and its Great Library had to be kept in mind in deciding this case. The Law Society was not a business enterprise but operated in the public interest. Since its concern is the administration of justice and the rule of law, it was seeking, by way of counterclaim, a declaration that would afford guidance on legal issues “yet to receive any judicial determination in Canada”. It was urged that defendant played a special role in a system based on stare decisis and its actions were not to be judged in the context of litigation between commercial parties. It was explained that defendant did not contest plaintiffs’ ownership of copyright in entire volumes and series of law reports but urged that the issue here was the copying of an individual decision and small portions of legal texts. This was said to be in the public interest and to advance the cause of justice and the rule of law. It was argued that copyright in reasons for judgment rests in the Crown as a Crown prerogative and that the waiver of copyright in the Reproduction of Federal Law Order applied only to the Supreme Court of Canada, the Federal Court and the Tax Court. Plaintiffs’ reports were mere “derivative works” derived from pre-existing works that are protected by copyright. The version of court decisions published by plaintiffs failed to exhibit the minimal degree of skill, judgment and labour that would give rise to a separate copyright. It was acknowledged that some headnotes could be sufficiently original to qualify for copyright protection but that matter would have to be decided on a case by case basis. Defence counsel referred to the tests set out in David Vaver’s text Intellectual Property Law for determining what constitutes the taking of a “substantial part” of a work.

In support of its public interest defence, the Law Society cited the judgment of Griffiths L.J. in Lion Laboratories Ltd. v. Evans et al., [1985] 1 Q.B. 526 (C.A.): “I am quite satisfied that the defence of public interest … extends to breach of copyright … “. It was submitted that the copying herein was of such important interest to the public as to outweigh plaintiffs’ interest. The public interest at issue was equal, unrestricted access to the law and this would be threatened if plaintiffs had monopoly rights in the individual reports of cases in their law reports series.

Other defences argued included: lack of standing to sue, fair dealing, estoppel, laches, acquiescence, failure of plaintiffs to come before the Court with “clean hands”, implied licence and Charter principles (in that the recognition of plaintiffs’ claim to monopoly rights in legal resources would contravene the rule of law imperative of unhindered access to justice).

Plaintiffs, in reply, submitted that these cases were about the payment of a licence fee and not about access to the law. Nor was the Great Library operated for use by the public; it is maintained for the benefit of the defendant’s members. As far as “fair dealing” was concerned, plaintiffs contended that the sheer volume of materials copied by defendant’s custom photocopy service was such as to exclude the defence of “fair dealing”.

* * *

ANALYSIS AND CONCLUSIONS

(1)       Subsistence of copyright

[115]   Copyright is statutory law. In Compo Company Ltd. v. Blue Crest Music Inc. et al.,[1] Mr. Justice Estey wrote for the Supreme Court [at pages 372-373]:

… copyright law is neither tort law nor property law in classification, but is statutory law. It neither cuts across existing rights in property or conduct nor falls between rights and obligations heretofore existing in the common law. Copyright legislation simply creates rights and obligations upon the terms and in the circumstances set out in the statute. This creature of statute has been known to the law of England at least since the days of Queen Anne when the first copyright statute was passed. It does not assist the interpretative analysis to import tort concepts. The legislation speaks for itself and the actions of the appellant must be measured according to the terms of the statute.

[116]   The object and purpose of the Copyright Act [R.S.C., 1985, c. C-42] is to benefit authors, albeit that in benefiting authors, it is capable of having a substantially broader-based public benefit through the encouragement of disclosure of works for the advancement of learning or, as in this case, the wider dissemination of law. In Bishop v. Stevens,[2] Madam Justice McLachlin, for the Supreme Court, wrote:

As noted by Maugham J., in Performing Right Society, Ltd. v. Hammond’s Bradford Brewery Co. [1934] 1 Ch. 121, at p. 127, “the Copyright Act, 1911, was passed with a single object, namely, the benefit of authors of all kinds, whether the works were literary, dramatic or musical”: See also Article 1 of the Revised Berne Convention ….

[117]   Madam Justice Reed of this Court wrote in Apple Computer, Inc. v. Mackintosh Computers Ltd.:[3]

… the purpose of the Copyright Act is and always has been to grant a monopoly. No distinction is made therein as to the purpose of the work created—for entertainment, instruction or other purposes. The legislation historically, in my view had two purposes: to encourage disclosure of works for the “advancement of learning”, and to protect and reward the intellectual effort of the author (for a limited period of time) in the work.

[118]   The Federal Court of Appeal has recently held that the Copyright Act should be interpreted in light of its object and purpose.[4]

[119]   Copyright is said to comprise a “bundle” of incorporeal or intangible economic rights of authors of works and certain “neighbouring” rights of performers, makers of sound recordings and broadcasters.[5]

[120]   As indicated in an earlier quotation from the reasons of Mr. Justice Estey in Compo Company Ltd. v. Blue Crest Music Inc. et al.,[6] copyright law, a “creature of statute”, has been known to the law of England at least since the days of Queen Anne and many of the principles underlying even the current United Kingdom statute remain applicable in Canada. Thus, United Kingdom case law and that of other nations whose copyright laws are derived from the United Kingdom tradition can generally be relied on with impunity. By contrast, copyright legislation of the United States has developed through a different tradition and therefore American case law must be carefully scrutinized. Once again, in Compo Company Ltd. v. Blue Crest Music Inc. et al., Mr. Justice Estey wrote at pages 366-367:

The United States Copyright Act, both in its present and earlier forms, has, of course, many similarities to the Canadian Act, as well as to the pre-existing Imperial Copyright Act. However, United States Court decisions, even where the factual situations are similar, must be scrutinized very carefully because of some fundamental differences in copyright concepts which have been adopted in the legislation of that country.

That this caveat may recently have been diluted by legislative change, as commented on by the Federal Court of Appeal in Tele-Direct,[7] will be discussed later in these reasons.

[121]   Copyright subsists in every original literary work, subject to the terms of the Copyright Act.[8] For the purposes of this action, I place particular emphasis on the word “original” in the foregoing statement of general principle, a word that is an integral element of the definition “every original literary, dramatic, musical and artistic work” in section 2 of the Copyright Act. In Apple Computer, Inc. v. Mackintosh Computers Ltd.,[9] Mr. Justice Hugessen then of the Federal Court of Appeal, wrote [at page 693]:

The sole distinguishing characteristic of a literary work is not its quality as literature or art but simply that it be in print or writing.

[122]   The Berne Convention, 1971[10] provides that alterations to literary works are to be protected as original works. Article 2(3) provides:

Article 2

…

(3) Translations, adaptations, arrangements of music and other alterations of the literary or artistic work shall be protected as original works without prejudice to the copyright in the original works.

[123]   Against the foregoing general background, counsel for the plaintiffs urged that copyright is capable of subsisting in Canada in the following classes of literary works:

- textbooks; [11]

- abridgments; [12]

- headnotes and other abstracts;[13]

- captions, to which “catchlines” are urged on behalf of the plaintiffs to be analogous;[14]

- indexes and, by analogy, it is urged, classification systems;[15]

- translations; [16]

- editions of literary works as separate works;[17]

- layout and type sizes, styles and positioning;[18]

- the edited text of a literary work;[19] and

- compilations primarily of literary works.[20]

[124]   I turn to the issue of “originality” which is at the heart of copyright. As Madam Justice McLachlin wrote in Slumber-Magic in the quotation that appears in note 20:

The basis of copyright is the originality of the work in question. So long as work, taste and discretion have entered into the composition, that originality is established.

Thus, at least at the time Madam Justice McLachlin, then of the British Columbia Supreme Court, was writing originality did not require that the work be an expression of original or inventive thought. However, at least in respect of compilations, Madam Justice McLachlin went on to note, “the originality requisite to copyright is a matter of degree depending on the amount of skill, judgment or [and] labour that has been involved”. In University of London Press v. University Tutorial Press,[21] Mr. Justice Peterson wrote, at pages 608-609:

The word “original” does not in this connection mean that the work must be the expression of original or inventive thought. Copyright Acts are not concerned with the originality of ideas, but with the expression of thought, and, in the case of “literary work”, with the expression of thought in print or writing. The originality which is required relates to the expression of the thought. But the Act does not require that the expression must be in an original or novel form, but that the work must not be copied from another work—that it should originate from the author.

[125]   Professor David Vaver wrote in “Copyright in Legal Documents”:[22]

Quantitative and qualitative tests for originality are notoriously unpredictable and to avoid them wherever possible is a good idea. As a legal technique, it might be better instead to accept all legal documents a person produces, without slavishly copying a prior form, as original to that person. Judges could then concentrate more on the real questions at stake: not how high the copyright threshold should be, but rather when, by whom, and how far copyright should be asserted.

[126]   In Interlego A.G. v. Tyco Industries Inc.,[23] Lord Oliver of Aylmerton wrote:

Originality in the context of literary copyright has been said in several well known cases to depend upon the degree of skill, labour and judgment involved in preparing a compilation …. Similarly in the speeches of Lord Reid and Lord Hodson … it is stressed that the amount of skill, judgment or labour is likely to be decisive in the case of compilations. To apply that, however, as a universal test of originality in all copyright cases is not only unwarranted by the context in which the observations were made but palpably erroneous. Take the simplest case of artistic copyright, a painting or a photograph. It takes great skill, judgment and labour to produce a good copy by painting or to produce an enlarged photograph from a positive print, but no one would reasonably contend that the copy painting or enlargement was an “original” artistic work in which the copier is entitled to claim copyright. Skill, labour or judgment merely in the process of copying cannot confer originality. [Citations omitted.]

[127]   I detect a difference of view between the words of Lord Oliver of Aylmerton just quoted and the advice of Professor Vaver to accept all legal documents a person produces, without slavishly copying a prior form, as original and to then concentrate, not on how high the copyright threshold should be, but rather when, by whom, and how far copyright should be asserted. That being said, I recognize that Lord Oliver uses an example of what Professor Vaver would most likely describe as “slavish copying”, while Professor Vaver’s advice is related to circumstances where there has not been a “slavish copying”. Neither Lord Oliver nor Professor Vaver provide much guidance as to how far one should go in following their reasoning where the copying is somewhat less than “slavish”.

[128]   Not surprisingly, counsel for the defendant urged that the proximity to “slavish copying” exhibited in the evidence before the Court, at least in respect of reasons for judgment, is very close. Furthermore, in the face of the alleged existence of Crown copyright, counsel for the defendant urged that the plaintiffs own no copyright in individual case reports, including enhancements that they publish, and notwithstanding the Reproduction of Federal Law Order [SI/97-5] that is reproduced in paragraph 35 [omitted] of the agreed statement of facts that appears earlier in these reasons. Counsel for the defendant urged that the individual case reports published by the plaintiffs are “derivative works”, that is to say, they are works substantially derived from pre-existing works that are protected by copyright such that no copyright exists in the “derivative works” themselves. It seems to me that this is simply a different way of urging that the plaintiffs’ published reasons for judgment simply lack originality.

[129]   Certainly there is no evidence before the Court that the plaintiffs have been authorized, formally or informally, by anyone claiming copyright in reasons for judicial decisions, to reproduce those decisions with or without modification. The Reproduction of Federal Law Order does not explicitly assert copyright although it could be argued that an assertion of copyright is implicit in it. The directive issued by the Management Board Secretariat of the Ontario Cabinet, which is cited in footnote 5 [omitted] to these reasons, indicates that the Queen’s Printer for Ontario claims copyright in Ontario judicial decisions. Apparently the Queen’s Printer for Ontario requires that a copyright acknowledgement be published in republications of Ontario legal materials. But none of the foregoing is determinative on the issue of Crown copyright.

[130]   I am satisfied that, for the purposes of this action, I am not required to reach a determination on the question of Crown copyright in reasons for decision from Ontario courts.

[131]   In Tele-Direct (Publications) Inc. v. American Business Information, Inc.,[24] Mr. Justice Décary, by reference to the 1993 amendments to the Copyright Act [S.C. 1993, c. 44] and to Article 1705 of the NAFTA Agreement [North American Free Trade Agreement Between the Government of Canada, the Government of the United Mexican States and the Government of the United States of America, [1994] Can T.S. No. 2]] to which the 1993 amendments were related, wrote at pages 31-32:

Clearly, what the parties to the Agreement wanted to protect were compilations of data that “embody original expression within the meaning of [the Berne] Convention” and that constitute “intellectual creations”. The use of these last two words is most revealing: compilations of data are to be measured by standards of intellect and creativity. As these standards were already present in Anglo-Canadian jurisprudence” … I can only assume that the Canadian government in signing the Agreement and the Canadian Parliament in adopting the 1993 amendments to the Copyright Act expected the Court to follow the “creativity” school of cases rather than the “industrious collection” school. [Emphasis added; citations omitted.]

Mr. Justice Décary continued at page 37:

It is doubtful that considerable labour combined with a negligible degree of skill and judgment will be sufficient in most situations to make a compilation of data original. One should always keep in mind that one of the purposes of the copyright legislation, historically, has been “to protect and reward the intellectual effort of the author (for a limited period of time) in the work” (my emphasis). The use of the word “copyright” in the English version of the Act has obscured the fact that what the Act fundamentally seeks to protect is “le droit d’auteur”. While not defined in the Act, the word “author” conveys a sense of creativity and ingenuity. [Citations omitted.]

While Justice Décary was dealing with the issue of copyright in a compilation in the Tele-Direct case, I am satisfied that much the same could be said with equal force in respect of a claim of copyright in edited reasons for judgment, both alone and in conjunction with “enhancements” such as a unique style of cause, catchlines, running heads, headnotes, lists of cases and other authorities cited and parallel citations.

[132]   In Édutile Inc. v. Automobile Protection Assn.,[25] Mr. Justice Dubé, on the question of originality and again in the context of a compilation, cited [at page 343] Édition Hurtubise H M H Ltée c. Collège d’enseignement général et professionnel André-Laurendeau[26] where Mr. Justice Tessier [at page 1010], in translation, wrote:

What are the tests for determining whether a work is original? Quite obviously, it must above all else be the result of a creative effort and must not be a copy. The creative aspect requires a certain personal effort on the author’s part together with knowledge, skill, time, reflection, judgment and imagination. The author must expend his or her intellectual energy to the extent required by the nature and anticipated content of the work. [Emphasis added.]

This expansion of the traditional criteria of judgment, skill and labour, is, in my view, an admirable expression of the creativity aspect inherent in the concept of originality.

[133]   Finally, and with some trepidation given the concerns earlier acknowledged in these reasons regarding reliance on American jurisprudence in the field of copyright law, I wish to turn to Matthew Bender & Co., Inc. v. West Pub. Co.[27] where the subject matter was similar to that now before this Court. West, like the plaintiffs, is a law publisher. Circuit Judge Jacobs wrote [at pages 681-683, 688]:

According to West, the required originality and creativity inhere in four elements of the case reports that HyperLaw intends to copy:

(i)   the arrangement of information specifying the parties, court, and date of decision;

(ii)  the selection and arrangement of the attorney information;

(iii) the arrangement of information related to subsequent procedural developments such as amendments and denials of rehearing; and

(iv) the selection of parallel and alternative citations.

Each element either adds or rearranges preexisting facts, in themselves unprotectable, and so West is not entitled to protection for these elements of its case reports unless it demonstrates creativity in the selection or arrangement of those facts ….

…

The creative spark is missing where: (i) industry conventions or other external factors so dictate selection that any person composing a compilation of the type at issue would necessarily select the same categories of information, … or (ii) the author made obvious, garden-variety, or routine selections, …

Thus, when it comes to the selection or arrangement of information, creativity inheres in making non-obvious choices from among more than a few options. … However, selection from among two or three options, or of options that have been selected countless times before and have become typical, is insufficient. Protection of such choices would enable a copyright holder to monopolize widely-used expression and upset the balance of copyright law.

In sum, creativity in selection and arrangement therefore is a function of (i) the total number of options available, (ii) external factors that limit the viability of certain options and render others non-creative, and (iii) prior uses that render certain selections “garden variety” ….

…

West’s editorial work entails considerable scholarly labor and care, and is of distinct usefulness to legal practitioners. Unfortunately for West, however, creativity in the task of creating a useful case report can only proceed in a narrow groove. Doubtless, that is because for West or any other editor of judicial opinions for legal research, faithfulness to the public-domain original is the dominant editorial value, so that the creative is the enemy of the true.

[134]   I am satisfied that the last quoted paragraph is particularly apt on much of the evidence before me.

[135]   A further cautionary note: in at least three places in the Matthew Bender decision from which the foregoing quotation is taken, reliance is placed on Feist Publications, Inc. v. Rural Telephone Service Co., Inc.[28] In Hager v. ECW Press Ltd.,[29] Madam Justice Reed notes:

Interestingly, there is now a Bill before the United States Congress … to overrule the decision of the United States Supreme Court in Feist … , a decision in that country that had a result similar to Tele-Direct in this. There is debate among both United States and Canadian authors as to whether the Feist decision is limited to database type cases or will have wider ramifications. [Citations omitted.]

[136]   Madam Justice Reed in Hager also casts doubt on the impact of the Tele-Direct decision on the elements of creativity and originality. Madam Justice Reed writes at pages 310-311:

Counsel argues that even if the words of an interviewee were previously copyrightable by the interviewer, as set out in the Express Newspapers and Gould Estate cases, the recent decision of the Federal Court of Appeal in Tele-Direct has overruled that jurisprudence. As noted above, it is argued that the elements of creativity and originality that are now required for copyright protection cannot exist in the quoted words of another. In addition, as I understand the argument, it is that the Tele-Direct decision has turned Canadian copyright law, at least in so far as it is relevant for present purposes, from its previous alignment with the law of the United Kingdom towards an alignment with that of the United States.

I do not interpret the Tele-Direct decision as having such a broad effect. In both the United States and Canada, jurisprudence has defined the requirement that copyright be granted in an “original” work, as meaning that the work originate from the author and that it not be copied from another. In the United States this was initially the result of case law; the statutory requirement of “originality” was only added in 1976. The requirement that a work be “original” has been a statutory requirement in Canada since 1924 when the Copyright Act … enacted in 1921 came into force. That Act was largely copied from the United Kingdom Copyright Act, 1911. I am not persuaded that the Federal Court of Appeal intended a significant departure from the pre-existing law. In the absence of an express decision from the Court of Appeal to the contrary, I think the law as set out in Express Newspapers and Gould Estate is still the law.

One reason for being cautious about not over-extending the Tele-Direct decision is that it deals with an entirely different type of work from those in issue in this case. It deals with a compilation of data …. The appropriate test to be applied when copyright is claimed for works that consist of compilations of data has been a difficult area. This is because such works are not likely to exhibit, on their face, indicia of the author’s personal style or manner of expression. [Citations omitted.]

[137]   I am satisfied that the types of works here at issue, particularly edited and enhanced versions of reasons for judgment, are more akin to the works at issue in Tele-Direct than they are to those at issue before Madam Justice Reed in Hager. That being said, they are not as akin to the works at issue in Tele-Direct as were the works that were before me in Ital-Press Ltd. v. Sicoli et al.[30] where I adopted an interpretation of “originality” closer to that preferred by Madam Justice Reed in Hager. I rely entirely upon the evidence before me and on the extensive and sophisticated nature of the argument before me, both in writing and orally, in this matter, in adopting for the purpose of this matter a broader interpretation of “originality” than I did in Ital-Press.

[138]   Against the foregoing, and taking into account all of the evidence before the Court in this matter, I reach the following conclusions regarding the subsistence of copyright based on the statement of issues that appears earlier in these reasons. I will repeat the relevant elements of the issue statement here for ease of reference:

Is copyright, other than any copyright owned by the Crown or a judge, capable of subsisting in whole or in part in any of the following publications which involve additions to statutory instruments and judicial decisions:

(a)  a reported judicial decision (with headnote, running heads and other matter added by a publisher) published in a volume containing other reported judicial decisions,

e.g. Meyer v. Bright (1992) published in 94 D.L.R. (4th) 648;

R. v. CIP Inc. (1992) published in 71 C.C.C. (3d) 129;

Hewes v. Etobicoke (1993) published in 93 C.L.L.C. § 14,042;

[139]   To the extent that the question relates to the three decisions cited, not merely as examples but as the subject-matter of the question, my answer is “no”. While the evidence before the Court demonstrates, beyond a doubt, that the preparation of the reported judicial decisions, including the headnote, catchlines, parallel citations, running heads and other matter added by the publisher, in respect of the three decisions in question, involved extensive labour, skill and judgment, I am satisfied that the whole process, particularly those elements involving skill and judgment, lacked the “imagination” or “creative spark” that I determine to now be essential to a finding of originality. I am satisfied that editorially enhanced judicial decisions should be measured by a standard of intellect and creativity in determining whether they give rise to copyright, in the same way as compilations of data might be said to be measured following the decision of the Federal Court of Appeal in Tele-Direct . Article 2 of the Berne Convention, 1971, I am satisfied, clearly reaches to the form of alterations of literary works represented by the case reports here at issue, but those case reports simply lack the “original expression” and fail to constitute the “intellectual creations” contemplated by that Article and, more particularly, Article 1705 of NAFTA as reproduced in the Tele-Direct decision [at page 31]. To revert, once again with some trepidation, to the words of Matthew Bender [at page 688] which I am satisfied are equally apt under Canadian law to the facts of this matter:

West’s editorial work entails considerable scholarly labor and care, and is of distinct usefulness to legal practitioners. Unfortunately for West, however, creativity in the task of creating a useful case report can only proceed in a narrow groove. Doubtless, that is because for West or any other editor of judicial opinions for legal research, faithfulness to the public-domain original is the dominant editorial value, so that creativity is the enemy of the true.[31] [Emphasis added.]

[140]   Here, whether or not the reasons for judgment in issue can be descried as opinions for legal research, faithfulness to the original, whether or not in the public domain, is the dominant editorial value and thus, the creative “is the enemy of the true”.

Is copyright, other than any copyright owned by the Crown or a judge, capable of subsisting in whole or in part in any of the following publications which involve additions to statutory instruments and judicial decisions:

…

(b)  a headnote (with catchwords, statement of the case and conclusion) in a reported judicial decision,

e.g. the headnote in the reported judicial decision Meyer v. Bright (1992) published in 94 D.L.R. (4th) 648;

the headnote in the reported judicial decision R. v. CIP Inc. (1992) published in 71 C.C.C. (3d) 129;

the headnote in the reported judicial decision Hewes v. Etobicoke (1993) published in 93 C.L.L.C. § 14,402;

[141]   Once again, subject to the limitations expressed in my answer to the first issue question, my conclusion is “no” and I reach that conclusion for the same reasons I reached a negative answer in respect of the reported judicial decisions of the same three cases.

Is copyright, other than any copyright owned by the Crown or a judge, capable of subsisting in whole or in part in any of the following publications which involve additions to statutory instruments and judicial decisions:

…

(d)  a case summary (comprised of a citation together with a brief synopsis of a judicial decision),

e.g. Confederation Life v. Shepherd (1992) published in 37 A.C.W.S. (3d) 141;

(e)  a topical case index,

e.g. [1997] G.S.T.C., Topical Index; and

[142]   Once again, subject to the limitations expressed in my answer to the first issue question, my conclusion is “no” and I reach that conclusion for the same reasons I reached a negative answer in respect of the reported judicial decisions referred to in the first issue question.

Is copyright, other than any copyright owned by the Crown or a judge, capable of subsisting in whole or in part in any of the following publications which involve additions to statutory instruments and judicial decisions:

…

(c)  an annotated statutory instrument (containing commentary, citations and summaries of relevant case law),

e.g. Martin’s Ontario Criminal Practice 1999;

…

(f)   a textbook or monograph on legal issues,

e.g. Economic Negligence;

Forensic Evidence in Canada.

[143]   I reach an opposite conclusion with respect to the annotated statutory instrument containing commentary, citations and summaries of relevant case law, that is Martin’s Ontario Criminal Practice 1999, and with respect to the textbooks or monographs of legal issues, that are Economic Negligence and Forensic Evidence in Canada. I am satisfied on the evidence before me that these publications reflect the degree of originality, creativity and ingenuity appropriate to the existence of copyright.

[144]   I decline any invitation to generalize on the basis of the foregoing answers and conclusions.

[145]   While the foregoing answers and conclusions are determinative in respect of many of the remaining issues as they relate to a number of the works in issue, I will nonetheless deal with each of the remaining issues on the assumption of the subsistence of copyright, other than copyright owned by the Crown or a judge, in the works in issue.

(2)       Ownership of Copyright

[146]   It was not in dispute before me that, as a general rule, the author of a work is the first owner of copyright and no assignment of copyright is valid unless it is in writing and signed by the copyright owner or his duly authorized agent.[32] The Copyright Act provides for one general exception: if the author created the work during the course of his or her employment, the employer is the first owner of copyright.[33] The evidence before the Court clearly establishes that editorial enhancements to the reported judicial decisions in issue, other than headnotes and catchlines, were authored by employees of the plaintiffs who “made the work” in the course of their employment.

[147]   The testimony of Ms. Geralyn Christmas was to the effect that the plaintiffs obtain assignments of copyright from the editors who write headnotes and catchlines and that standard contractual arrangements between the plaintiffs and authors involved an assignment of copyright with rare exceptions, wherein “gentlemen’s agreements” are relied upon. No “gentlemen’s agreement” arrangement was here relied on. A number of written assignments of copyright and confirmations of assignments of copyright with respect to works at issue were in evidence before me.[34] Similarly, copies of certificates of registration of copyright entitled:

“Edited Text of Judicial Decision of Myer v. Bright as reported in 94 D.L.R. (4th) 648”; “Headnote of Myer v. Bright as reported in 94 D.L.R. (4th) 648”; “Edited Text of Judicial Decision of R v. CIP Inc. as reported in 71 C.C.C. (3d) 129”; “Headnote of R v. CIP Inc. as reported in 71 C.C.C. (3d) 129”; “Compilation of the reported judicial decisions in Volume 94 of the Dominion Law Reports, Fourth Edition”; “Civil Law Classification Scheme”; “Compilation of reported judicial decisions in Volume 24 of the Canadian Labour Law Cases cited as 93 C.L.L.C.”; “Case Summary Confederation Life v. Shepherd as reported in 37 A.C.W.S. (3d) 141”; “Economic Negligence, The Recovery of Pure Economic Loss, (Second Edition)”; “Chapter 13 of “Forensic Evidence in Canada”; “Martin’s Ontario Criminal Practice 1999”; and “Topical Index of Canada GST Cases (1997 bound)”

were also in evidence before me,[35] each indicating that one or another of the plaintiffs is the owner of copyright. Interestingly enough, except with respect to the certificate for “Civil Law Classification Scheme”, all registrations were obtained within the few months preceding the trial of this matter.

[148]   Section 53 of the Copyright Act provides that a certificate of registration of copyright in a work is prima facie evidence that copyright subsists and that the registrant is the owner of the copyright. In Circle Film Enterprises Inc. v. Canadian Broadcasting Corporation,[36] Mr. Justice Judson wrote at pages 606-607:

In a case where there is evidence to contradict the certificate [of copyright], then its weight may be affected, but in the absence of any such evidence, its weight is not to be minimized because no proof of title is required in the application for registration and because the Copyright Office assumes no responsibility for the truth of the facts asserted in the application and conducts no independent examination. A plaintiff who produces this certificate has adduced some evidence in support of his case, sufficient to compel the tribunal of fact to act in his favour in the absence of any evidence to contradict it.

As to belated registrations of copyright, Mr. Justice Strayer wrote in Bishop v. Stevens:[37]

Bishop’s assertion of copyright is, as noted, supported by a certificate of registration of the copyright dated August 19, 1982, well after the pre-recording incidents at Télé-Métropole. It appears to me that by virtue of s-s. 36(2) [now 53(2)] of the Copyright Act this certificate of registration is nevertheless evidence that the person registered is the owner of the copyright. It is also evidence of the particulars entered therein …. The date of registration is relevant only, it appears to me, for purposes of the application of s. 22 [now 39] of the Copyright Act which provides that where at the time of an alleged infringement the copyright was duly registered the defendant shall be deemed to have had reasonable ground for suspecting that copyright subsisted in the work.

In the circumstances of this matter, of course, the alleged infringements of copyright predated the dates of registration. That being said, as previously noted, the defendant was, at all times relevant to these actions, conscious of the potential infringement of copyright through the operation of the custom photocopy service.

[149]   Where I have found copyright other than Crown copyright or copyright in a judge to exist in the works in issue, I am satisfied that the relevant plaintiff is the owner of the copyright. I reach this conclusion primarily based on the certificates of copyright and evidence of assignments that are before the Court. Where I have found copyright other than copyright in the Crown or a judge not to exist, if I were found to be wrong in this, I would find the relevant plaintiff to be the owner of the copyright based on the totality of the evidence before the Court and, in particular, the testimony of Professor Dunlop and Ms. Geralyn Christmas and the exhibits comprising assignments of copyright, confirmations of assignments of copyright and registrations of copyright.

(3)       Infringement of copyright

[150]   For ease of reference, I repeat here the text of subsection 27(1) [as am. by S.C. 1997, c. 24, s. 15] and the relevant portions of subsection 27(2) [as am. idem] of the Copyright Act:

27. (1) It is an infringement of copyright for any person to do, without the consent of the owner of the copyright, anything that by this Act only the owner of the copyright has the right to do.

(2) It is an infringement of copyright for any person to

(a) sell or rent out,

(b) distribute to such an extent as to affect prejudicially the owner of the copyright;

…

(d) possess for the purpose of doing anything referred to in paragraphs (a) to (c), or

…

a copy of a work, … of a communication signal that the person knows or should have known infringes copyright; ….

[151]   By virtue of subsection 3(1) of the Copyright Act, “copyright” in relation to a work, means the sole right to produce or reproduce the work or any substantial part of the work, in any material form whatever and, in the case of literary works such as those here in issue, includes the sole right to communicate the work to the public by telecommunication. Thus, the limits of the “sole rights” of the owner of copyright in works such as those here in issue is defined by that which constitutes “infringement” of those sole rights.

[152]   With the exception of Martin’s Ontario Criminal Practice 1999, that the works in issue or parts thereof were copied and distributed is illustrated by the table set out in paragraph 50 [omitted] of these reasons. Only in the cases of the textbooks Forensic Evidence in Canada and Economic Negligence was the reproduction of less than 100% of the work in issue.

[153]   That there was a fee or charge levied for such reproduction and for delivery of the reproduced copy, and that in two cases the delivery was by “fax” or “telecommunication”, is illustrated by the table in paragraph 51 [omitted] of these reasons.

[154]   The issues for determination are, then, in relation to infringement, leaving aside for the moment the range of defences raised by the defendant and assuming ownership of copyright in the plaintiffs, whether, in respect of the textbooks Forensic Evidence in Canada and Economic Negligence, the reproduction was of “any substantial part thereof”, whether the reproduced material was “sold”, whether the distribution was to such an extent as to affect prejudicially the owner of the copyright, whether storage of copies in the memory of a facsimile machine constituted possession for the purpose of sale or distribution, and whether the distribution by facsimile was a communication of the work to the public. For the purposes of the discussion that follows, I assume ownership of copyright by the plaintiffs in the works in issue and that the defendant knew or should have known that its actions would infringe copyright if copyright subsisted.

[155]   The claim to copyright asserted by the plaintiffs in Myer v. Bright, R. v. CIP Inc., Hewes v. Etobicoke and in the headnotes to those case reports is in the case reports and headnotes themselves, and not in the case reports and headnotes as part of the volumes in which they were published or, even more broadly, in the series of volumes of which the volumes in which they were published formed a part. On the assumption that I have made for the purposes of this analysis, I am satisfied that the evidence before the Court demonstrates beyond doubt that there was a substantial copying. The same applies with respect to the copying of the case summary of Confederation Life v. Shepherd and the topical index of the [1997] G.S.T.C. cases.

[156]   As noted in the table reproduced in paragraph 50 [omitted] of these reasons, the copying from Forensic Evidence in Canada amounted to the copying of the whole of a 32-page monograph within a 713-page textbook, which amounted to 13 percent of the whole of the textbook. In the case of the textbook Economic Negligence, which is 306 pages in length, 69 pages were copied amounting to 93 percent of one chapter and 21 percent of the pages of the textbook.

[157]   In British Columbia Jockey Club et al. v. Standen,[38] Mr. Justice Macdonald quotes with approval the following statement of Simmonds J. from Graves v. Pocket Publications Limited:[39]

But it remains that it is always a question of fact whether a substantial part of this compilation made by the plaintiff at a great deal of cost and trouble to himself has been taken by the defendants for the purpose of their own magazine and incorporated in this article.

[158]   In Copinger and Skone James on Copyright,[40] the learned authors wrote at page 175 [paragraphs 8-26 and 8-27]:

It has repeatedly been held that “substantial” in this connection relates much more to the quality of what has been taken than to the quantity. The quality, or importance, of the part taken is frequently more significant than the proportion which the borrowed part bears to the whole work. Thus if so much is taken that the value of the original is sensibly diminished, or that the labours of the original author are substantially, and to an injurious extent, appropriated by another, that is sufficient, in law, to constitute a piracy pro tanto.

In deciding questions of this sort, regard must be had to the nature and objects of the selection made, the quantity and value of the materials used, and the degree to which the use may prejudice the sale, or diminish the profits, direct or indirect, or supersede the objects of the original work. It may be relevant to consider whether there has been an animus furandi on the part of the defendant in the sense of an intention on the part of the defendant to take for the purpose of saving himself labour. Many mixed ingredients enter into the consideration of such questions. In short, the question of substantiality is a matter of degree in each case and will be considered having regard to all the circumstances. Generally, it is not useful to refer to particular decisions as to the quantity taken. [Citations omitted.]

[159]   To the same effect, Mr. Justice Richard, as he then was, wrote in U& R Tax Services Ltd. v. H & R Block Canada Inc.:[41]

In this instance, the defendant has admitted to copying a portion of U & R’s form and the inquiry is therefore directed to whether the copying was “substantial” within the meaning given to that term by the courts: “[w]hat constitutes a `substantial part’ is a question of fact and, in this respect, the courts have given more emphasis on the quality of what was taken from the original work rather than the quantity”. (Hugues G. Richard, “Concept of Infringement in the Copyright Act” in G. F. Henderson, ed., Copyright and Confidential Information Law of Canada (Toronto: Carswell, 1994) 201 at p. 208.) Some of the matters that have been considered by courts in the past include:

(a)  the quality and quantity of the material taken;

(b)  the extent to which the defendant’s use adversely affects the plaintiff’s activities and diminishes the value of the plaintiff’s copyright;

(c)  whether the material taken is the proper subject-matter of a copyright;

(d)  whether the defendant intentionally appropriated the plaintiff’s work to save time and effort; and

(e)  whether the material taken is used in the same or similar fashion as the plaintiff’s.

[160]   Against the foregoing authorities, I am satisfied that the copying established in the evidence before me from the textbooks Forensic Evidence in Canada and Economic Negligence was “substantial”.

[161]   The expert evidence of Mr. Stephen Cole was the only evidence before the Court on the issue of profitability of the custom photocopy service. In summary, his brief conclusion was in the following terms:

The custom photocopying service provided by The Great Library has operated at a loss during each of the years ended December 31, 1993 to 1997. These losses have been conservatively computed ….

Despite the able cross-examination of Mr. Cole conducted on behalf of the plaintiffs, I am satisfied that the copies of works in issue that were made in the course of the custom photocopy service were not “sold”.

[162]   As indicated above in the discussion of “substantial taking”, Mr. Justice Richard of this Court, as he then was, included the factor of prejudicial effect on the copyright owner of the copying in question. Treated as a separate factor, on the evidence before me, I am satisfied that the copying of the works in issue in the course of its custom photocopy service and the distribution of the photocopies to the requesters constituted a distribution and was “to such an extent as to affect prejudicially the owner of the copyright” within the meaning of paragraph 27(2)(b) of the Copyright Act.

[163]   I am satisfied that storage of copies in the memory of a facsimile machine for subsequent distribution, whether by transmission by facsimile or otherwise, constitutes possession for the purpose of sale or distribution. There was some evidence before the Court that such storage took place in the operation of the custom photocopy service with respect to some of the works in issue. This point was not extensively argued before me.

[164]   As indicated earlier in these reasons, copyright in a literary work includes the sole right to communicate the work to the public by telecommunication. It was not in dispute before me that transmission of copies by facsimile constituted communication of a literary work by telecommunication. What was in dispute was whether such communication was “to the public” within the meaning of paragraph 3(1)(f) of the Copyright Act.

[165]   In CTV Television Network Ltd. v. Canada (Copyright Board),[42] Létourneau J.A. for the Court [at page 131] accepted that the words “to the public” in the paragraph 3(1)(f) of the Copyright Act “are broader than ‘in public’”.

[166]   In Telstra Corporation Ltd. v. Australasian Performing Right Association Ltd,[43] Justices Dawson and Gaudron wrote at page 657 in the context of copyright:

If anything, the use of the words “to the public” conveys a broader concept than the use of the words “in public” since it makes clear that the place where the relevant communication occurs is irrelevant. That is to say, there can be a communication to individual members of the public in a private or domestic setting which is nevertheless a communication to the public.

[167]   Both of the foregoing authorities arise from factual situations where the person transmitting the telecommunication could reasonably be expected to have intended the communication to be received by multiple persons at diverse locations. They involved telecommunications directed to a relatively broad public, albeit not the public at large. They could be described to be telecommunications that were from a single point, intended as in the case for example of subscription or pay-per-view television, to be received and capable of being received at multiple points. That is not the situation before me. Here, the telecommunications, by facsimile, emanated from a single point and were each intended to be received at a single point. Indeed, as I understand the technology, each would only have been receivable at a single point barring a malfunction or some form of unanticipated interception. I am satisfied that the telecommunications here in question were not telecommunications “to the public”.

(4)       Defences

(i)         Overriding Public Interest and Public Policy

[168]   While the defendant is undoubtedly unique, at least in Ontario, both historically and in current practice, in its role in the administration of justice and in terms of the nature and contribution of its Great Library to the administration of justice, I am not satisfied that the role of the defendant, let alone of its Great Library, is such as to entitle it to override any copyright interests that the plaintiffs have or might have in the works in issue. Put another way, I am not satisfied that the public interest in the due administration of justice, the maintenance of the rule of law and the enhancement of basic constitutional values through relatively equal, unrestricted access to the law would be significantly impaired through recognition and enforcement of any copyright interests that the plaintiffs might have in the works in issue. Further, to find copyright in the plaintiffs in respect of reasons for judgment as published by them, particularly the reasons for judgment that are works here in issue, would not be tantamount to vesting in the plaintiffs an exclusive copyright in those reasons for judgment simply through enhancements of the reasons for judgment, whether by way of additions such as headnotes, catchlines and the like, or through editorial modifications, or both. Any copyright in the original reasons for judgment and in other enhanced versions of those reasons for judgment would not somehow be overridden or expunged through recognition of copyright rights of the plaintiffs.

[169]   In sum, I am in agreement with a conclusion contained in the plaintiffs’ reply memorandum of law, quoted earlier in these reasons, which I repeat here for ease of reference:

In essence, these actions are not about access to the law. The evidence shows that the members of the Defendant and others have ready access to law reports and other legal publications through numerous sources other than the Defendant. These sources include document delivery services that are licensed to reproduce reported judicial decisions and extracts of other legal materials published by the Plaintiffs.

In essence, these actions are about the payment of a license fee.

[170]   Assuming copyright in the plaintiffs in the works here in issue, there was absolutely no evidence before the Court to the effect, first, that licences to carry on the custom photocopy service would not be reasonably available to the defendant from the plaintiffs, and second, that licence fees in respect of any such licences would be so prohibitive as to impinge on the public interest or be contrary to public policy. Indeed, a mechanism exists to ensure that copyright licence fees are just and reasonable.

(ii)        No Standing

[171]   As indicated earlier in these reasons, the defendant submits that the plaintiffs have no standing to bring these actions because they are not the owners of copyright in the works in issue, either because they are not the authors or because they have not satisfactorily established that they have received assignments from the authors, and, not being the owners, they have failed to join the legal owners of copyright in the works in issue in these proceedings.[44]

[172]   I have commented on issues of existence of copyright and ownership earlier in these reasons. Very briefly, if the plaintiffs were owners of copyright in all the works in issue, they are the owners thereof to the extent that the copyright derives from the work of their employees and, to the extent that it does not, by reason of assignments of copyright in evidence before me, albeit that not all of the assignments might withstand minute examination and analysis, a process to which they were not subjected in argument before me.

(c)        Fair Dealing

[173]   For ease of reference, the relevant provisions of the Copyright Act in force at the time of the hearing before me are reproduced here [section 29 (as am. by S.C. 1997, c. 24, s. 18) and section 29.1 (as enacted idem)]:

29. Fair dealing for the purpose of research or private study does not infringe copyright.

29.1 Fair dealing for the purpose of criticism or review does not infringe copyright if the following are mentioned:

(a) the source; and

(b) if given in the source, the name of the

(i) author, in the case of a work,

The “library exception” [sections 30.1 to 30.3, as enacted by S.C. 1997, c. 24, s. 18], not in force at the time of the hearing before me but proclaimed in force September 1, 1999,[45] will be briefly commented on below.

[174]   The copying by the defendant in the course of its custom photocopy service was done in response to requests received, directly or indirectly, from members of the defendant; it was not done for the defendant’s own use in research, private study, criticism or review. Prior to 1996, the defendant neither asked for, nor maintained a record of, the use to which the requesters proposed to put the copies. Commencing in 1996, requesters were required to identify the use to which they proposed to put the copies from among a list of possible uses, all of which were within the scope of “fair dealing”. No alternative use, beyond the scope of “fair dealing”, was identified and a requester was provided no special opportunity to identify a use beyond the limits of “fair dealing”.

[175]   As noted earlier in these reasons, the Supreme Court of Canada has put beyond doubt the proposition that there is no requirement to show knowledge or mens rea to establish direct infringement of copyright; if the actions of the defendant are not themselves within the ambit of fair dealing, or if the actions of the requesters of copies from the custom photocopy service were not in fact within the ambit of fair dealing, then lack of knowledge on the part of the defendant of the ultimate use is not itself a defence.[46] In Sillitoe and Others v. McGraw-Hill Book Co. (U.K.) Ltd.,[47] Justice Mervyn Davies wrote:

The onus of showing that an exception applies is on the defendants. Mr. Jeffs contended that section 6(1) is widely drawn and not limited to the actual student, so that if a dealing is fair and for the purposes of private study the subsection applies whether the private study in mind is one’s own or that of somebody else. Here, he said, the dealing was for the purpose of private study by the examinees who would acquire the notes. I do not accept that argument. To my mind section 6(1) authorises what would otherwise be an infringement if one is engaged in private study or research. The authors of the Notes, when writing the Notes and thus “dealing” with the original work, were not engaged in private study or research.

I am satisfied that the same might be said on the facts of this matter. The copying by the defendant in the course of its custom photocopy service was not for a purpose within the ambit of fair dealing notwithstanding that the ultimate use by the requester of the photocopying might itself be within the ambit of fair dealing. The conclusion in Sillitoe quoted above has been followed in both Australia and New Zealand.[48] I am satisfied that the fair dealing exception should be strictly construed.

[176]   While counsel for the defendant urged that the Sillitoe decision can be distinguished on its facts and that neither the Sillitoe decision itself nor the Australian and New Zealand decisions adopting its reasoning have been applied in Canada and should not be applied in Canada as they are contrary to the plain meaning of the fair dealing provisions of the Copyright Act, I am satisfied that those decisions are apt to the facts of this matter which, I acknowledge, are not identical to those of the cited decisions. I am satisfied that my conclusion in this regard is consistent with the “library exception” amendment to the fair dealing sections recently adopted by Parliament and now proclaimed in force.

[177]   The “library exception” provisions of the Copyright Act are set out in Schedule B [omitted] to these reasons. They must be read together with the definition “library, archive or museum” [as enacted by S.C. 1997, c. 24, s. 1] in section 2 of the Act, which is set out in Schedule A [omitted] to these reasons. Whether or not those provisions would constitute a complete defence for the activities of the custom photocopy service here at issue was not argued before me, though it was alluded to, and is not for me to determine. Suffice it to say, the “library exception” provisions demonstrate that photocopy services operated by libraries such as the defendant’s Great Library at Osgoode Hall were a matter of public policy concern that warranted special attention by Parliament. Legislative proposals attracted broad public debate. Representations were made to parliamentary committees, and undoubtedly to others, on behalf of law publishers such as the plaintiffs and organizations such as the defendant. The resulting provisions of law could have been addressed to the issues before this Court. If they were not addressed to the issues before this Court, then that policy option was adopted with full knowledge of those issues. Suffice it further to say that the nature of the “library exception” issue, the nature of the response to that issue by Parliament and the extent of the public debate engendered by the amendments augurs in favour of an interpretation of the “fair dealing” exception in force at the time this case was argued that does not encompass the activities of the custom photocopy service of the Great Library here at issue.

[178]   I will return to the question of the “library exception”, albeit briefly, in the context of my analysis regarding the declaration sought by the defendants in relation to the operation of the free-standing photocopiers in the Great Library. Clearly, section 30.3 within the “library amendments” relates to this issue.

(iv)       Estoppel, Laches, Acquiescence, etc.

[179]   Once again assuming subsistence of copyright in the works in issue, ownership of copyright by the plaintiffs in those works and infringement of the plaintiffs’ copyrights by the defendant, none of which was admitted, the defendant submitted that, for a range of reasons related primarily to delay, both in bringing these actions and in prosecuting these actions, the Court’s discretion should not be exercised in favour of the plaintiffs. That the Court has a discretion as to whether or not to grant a permanent injunction was not in dispute. Also not seriously disputed was the assertion on behalf of the plaintiffs that these actions were commenced at or about the time when the technology relating to photocopying evolved to a point where the making of high quality photocopies in large numbers became both technically and economically practical with the result that the impact of the custom photocopy service on the business of the plaintiffs became a potential economic threat to the plaintiffs that warranted all of the implications for the plaintiffs in undertaking these actions.

[180]   To the extent that I have found copyright in the works in issue to subsist in the plaintiffs or any of them and that such copyright has been infringed by the defendant, I find no equitable basis on the totality of the evidence before the Court to conclude that a permanent injunction should not be granted. Similarly, to the same extent, I find no basis to conclude that an implied licence or licences existed that would justify the actions of the defendant in the conduct of its custom photocopy service. That is not to say that I conclude in favour of granting a permanent injunction to the plaintiffs. I will have more to say about that later in these reasons.

[181]   Similarly, if copyright were found to subsist in favour of the plaintiffs in a broader range of the works in issue and it were found that the defendant had breached such copyrights in the operation of its custom photocopy service, I would nonetheless conclude that no bar exists, on equitable grounds or on the basis of an implied licence, to the grant of a permanent injunction to the plaintiffs.

(5)       The Canadian Charter of Rights and Freedoms

[182]   As indicated earlier in these reasons, counsel for the defendant urged that this Court is obligated to apply Charter [Canadian Charter of Rights and Freedoms, being Part I of the Constitution Act, 1982, Schedule B, Canada Act 1982, 1982, c. 11 (U.K.) [R.S.C., 1985, Appendix II, No. 44]] principles and values in the exercise of its discretion in determining appropriate remedies in these actions. Counsel urged that “[t]he transcendent constitutional value at the heart of [these matters] is access to justice.” Counsel submitted that access to justice is delineated and promoted by the rule of law, together with paragraph 2(b) and sections 7 and 15 of the Charter as well as in the way in which the rights and freedoms expressed in that paragraph and those sections depend in turn on access to justice.

[183]   I am satisfied that the response to the position of the defendant in this regard, albeit that it was not extensively argued before me, lies in the standing, or rather the lack thereof, of the defendant to advance the Charter arguments made on its behalf. In Hy and Zel’s Inc. v. Ontario (Attorney General); Paul Magder Furs Ltd. v. Ontario (Attorney General),[49] Mr. Justice Major, for the majority, wrote at page 688:

A party’s ability to attack a legislation’s constitutional validity on Charter grounds is more difficult to establish in a civil suit than in a criminal prosecution. The appellants bear the burden to establish their standing to raise Charter issues.

I am satisfied that the same can be said where the attack is not upon the constitutional validity of legislation by reason of Charter grounds, but rather on the appropriateness of legislation and a course of action in support of rights conferred by that legislation to obtain a particular remedy such as a permanent injunction.

[184]   Mr. Justice Major continued at page 690:

Following this Court’s earlier decisions, in order that the Court may exercise its discretion to grant standing in a civil case, where, as in the present case, the party does not claim a breach of its own rights under the Charter but those of others, (1) there must be a serious issue as to the Act’s validity, (2) the appellants must be directly affected by the Act or have a genuine interest in its validity, and (3) there must be no other reasonable and effective way to bring the Act’s validity before the court.

[185]   Madam Justice L’Heureux-Dubé, writing in dissent on behalf of herself and Madam Justice McLachlin, wrote at pages 706-707:

The test for standing in cases which raise issues of public interest, crystallized in Borowski, was recently applied by this Court in Canadian Council of Churches v. Canada (Minister of Employment and Immigration), … in the context of an attempt to challenge legislation under the Charter. Cory J., speaking for the Court, elaborated on the diverse considerations which will affect the decision as to whether or not to grant standing. First, legislation should not be immunized from attack. Second, public interest standing is not required when, on the balance of probabilities, it can be shown that the measure will be subject to attack by a private litigant. Finally, as a consequence of the entrenchment of the Charter, the granting of standing remains discretionary, but discretion should be exercised in a liberal and generous manner. Standing was not granted in that case on the basis that there was another more effective means of addressing the issue. [Citation omitted.]

[186]   As can be seen from the foregoing quotations, the position on standing of the majority and the minority in Hy and Zel’s was largely congruent, albeit that in the circumstances of that case the issue was standing to attack the constitutional validity of legislation. The attack here is of a less tangible nature. Counsel for the defendant did not seek to impugn the Copyright Act or any provisions of it. Rather, as I understood his arguments, he sought to invoke the Charter, or its principles, to convince this Court not to grant a relief in the nature of a permanent injunction against the activities of the defendant in the conduct of its custom photocopy service.

[187]   As noted by Madam Justice L’Heureux-Dubé in the closing lines of the paragraph quoted above from her reasons in Hy and Zel’s, the granting of standing to make a Charter argument “remains discretionary”. Madame Justice L’Heureux-Dubé qualified the discretion by indicating that it should be exercised “in a liberal and generous manner”. She noted that in Canadian Council of Churches [Canadian Council of Churches v. Canada (Minister of Employment and Immigration), [1992] 1 S.C.R. 236], standing was not granted on the basis that there was another more effective means of addressing the issue.

[188]   I am satisfied that there is another more effective means of addressing the Charter issues raised on behalf of the defendant; that is to say, in the context of a proceeding where a litigant asserts infringement of his or her Charter rights or freedoms by virtue of:

— a failure for that litigant to have available to him or her effective representation by reason of the differential availability of library resources available to counsel throughout Ontario; and

— the inability of his or her counsel to overcome that differential availability through access to legal resources by means of the custom photocopy service of the defendant or an equivalent service of some other service provider.

Further, by reason of the conclusion that I propose to reach regarding issuance of a permanent injunction in favour of the plaintiffs for entirely separate reasons, I am satisfied that it simply would not constitute an effective and efficient use of judicial resources to entertain the defendant’s Charter submissions in the context of this matter, particularly in circumstances where the “library exception” added to the Copyright Act by Parliament was not before me.

(6)       Free-standing Photocopiers

[189]   As indicated earlier in these reasons, the defendant seeks a declaration that the self-copying service in its Great Library, which is facilitated by stand-alone copiers therein that are coin or prepaid-access-card operated, does not give rise to liability on behalf of the defendant for breach of the plaintiffs’ copyrights, if found to exist, if a person using the service infringes the copyright of a plaintiff without the authorization by the defendant of the infringement. Put another way, it was urged that simply making the free-standing copiers available for use, and which, it was urged, undoubtedly are most often used, for legitimate purposes, does not invoke liability of the defendant because the defendant does not “authorize” any act of infringement in which a user chooses to engage. Counsel urged the existence of a range of “legitimate” uses of the self-copying service, including for the copying of material in the public domain and uses that constitute “fair dealing”. The evidence before the Court established that the free-standing photocopiers stood in close proximity to a notice, quoted earlier in these reasons, but repeated here for ease of reference, to the following effect:

The copyright law of Canada governs the making of photocopies or other reproductions of copyright material. Certain copying may be an infringement of the copyright law. This library is not responsible for infringing copies made by users of these machines.

[190]   Counsel for the plaintiffs noted that the evidence before the Court discloses that the defendant does not monitor the use made by others of its free-standing copiers and therefore has no capacity to protect copyright holders from infringement of their rights where the infringement might be said to be “facilitated” by the provision of photocopying capacity by the defendant, in the premises of the defendant and in close proximity to copyrighted works and works in respect of which copyright, as here, could reasonably be claimed whether or not it exists.

[191]   Once again, as noted earlier in these reasons, the issues raised by the defendant’s request for a declaration are significantly impacted by the “library exception” to the Copyright Act enacted by Parliament and recently proclaimed. Further, the evidence before me with regard to actual use of the free-standing copiers in the Great Library was remarkably limited by comparison with the evidence before this Court relating to the custom photocopy service of the defendant.

[192]   Based upon the foregoing considerations, particularly those related to the “library exception” recently enacted and elaborated on above in relation to the defence of “fair dealing”, and on the conclusions that I have already reached in these reasons, I decline to consider this issue further.

* * *

Editor’s note (replacing paragraphs 193 to 209)

Under the heading —Reliefs—, Justice Gibson declared that copyright subsists only in the works: Martin’s Ontario Criminal Practice 1999, the textbook Economic Negligence and Chapter 13, —Dental Evidence—, in the textbook Forensic Evidence in Canada. A declaration issued that defendant had infringed copyright in copying and distributing a substantial portion of Economic Negligence and the —Dental Evidence— Chapter in Forensic Evidence in Canada. The greater part of plaintiffs’ claims having failed, no injunction was granted in respect of defendant’s custom photocopy service.

Defendant’s counterclaim, for a sweeping declaration that its conduct was lawful, that plaintiffs be condemned and prohibited from ever again asserting a monopoly in copyright, was denied as a paradigm of overreaching.

Under the heading —A Postscript—, Gibson J. referred to an article in The Lawyers Weekly about a recent case in which the publisher Wilson & Lafleur lost its bid to secure copies of judgments from SOQUIJ. His Lordship commented that the case referred to was inapplicable to that at bar but worth noting for its importance to copyright law in respect of judicial decisions.

A supplementary judgment as to costs will issue following receipt of written submissions.

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