CCH Canadian Ltd. v. Law Society of Upper Canada

CCH Canadian Ltd. v. Law Society of Upper Canada
Collection
Supreme Court Judgments
Date
2004-03-04
Neutral citation
2004 SCC 13
Report
[2004] 1 SCR 339
Case number
29320
Judges
McLachlin, Beverley; Iacobucci, Frank; Major, John C.; Bastarache, Michel; Binnie, William Ian Corneil; Arbour, Louise; LeBel, Louis; Deschamps, Marie; Fish, Morris J.
On appeal from
Federal Court of Appeal
Subjects
Intellectual property
Notes
SCC Case Information: 29320
Decision Content
CCH Canadian Ltd. v. Law Society of Upper Canada, [2004] 1 S.C.R. 339, 2004 SCC 13
Law Society of Upper Canada Appellant/Respondent on cross-appeal
v.
CCH Canadian Limited Respondent/Appellant on cross-appeal
and between
Law Society of Upper Canada Appellant/Respondent on cross-appeal
v.
Thomson Canada Limited c.o.b. as Carswell
Thomson Professional Publishing Respondent/Appellant on cross-appeal
and between
Law Society of Upper Canada Appellant/Respondent on cross-appeal
v.
Canada Law Book Inc. Respondent/Appellant on cross-appeal
and
Federation of Law Societies of Canada, Canadian
Publishers’ Council and Association of Canadian
Publishers, Société québécoise de gestion
collective des droits de reproduction (COPIBEC) and
Canadian Copyright Licensing Agency (Access Copyright) Interveners
Indexed as: CCH Canadian Ltd. v. Law Society of Upper Canada
Neutral citation: 2004 SCC 13.
File No.: 29320.
2003: November 10; 2004: March 4.
Present: McLachlin C.J. and Iacobucci, Major, Bastarache, Binnie, Arbour, LeBel, Deschamps and Fish JJ.
on appeal from the federal court of appeal
Copyright — Infringement — Photocopying — Fax transmissions — Law Society providing custom photocopy service and maintaining self-service photocopiers in library for use by patrons — Legal publishers bringing copyright infringement actions against Law Society — Whether publishers’ headnotes, case summary, topical index and compilation of reported judicial decisions “original” works covered by copyright — If so, whether Law Society breached publishers’ copyright — Whether Law Society’s fax transmissions of publishers’ works constitute communications “to the public” — Copyright Act, R.S.C. 1985, c. C-42, s. 3(1) (f).
Copyright — Infringement — Exception — Fair dealings — Law Society providing custom photocopy service and maintaining self-service photocopiers in library for use by patrons — Legal publishers bringing copyright infringement actions against Law Society — Whether Law Society’s dealings with publishers’ works “fair dealings” — Copyright Act, R.S.C. 1985, c. C-42, s. 29 .
Copyright — Works in which copyright may subsist — Meaning of “original” work — Whether headnotes, case summary, topical index and compilation of reported judicial decisions “original” works covered by copyright — Copyright Act, R.S.C. 1985, c. C-42, s. 2 “every original literary, dramatic, musical and artistic work”.
The appellant Law Society maintains and operates the Great Library at Osgoode Hall in Toronto, a reference and research library with one of the largest collections of legal materials in Canada. The Great Library provides a request-based photocopy service for Law Society members, the judiciary and other authorized researchers. Under this “custom photocopy service”, legal materials are reproduced by Great Library staff and delivered in person, by mail or by facsimile transmission to requesters. The Law Society also maintains self-service photocopiers in the Great Library for use by its patrons. In 1993, the respondent publishers commenced copyright infringement actions against the Law Society, seeking a declaration of subsistence and ownership of copyright in specific works and a declaration that the Law Society had infringed copyright when the Great Library reproduced a copy of each of the works. The publishers also sought a permanent injunction prohibiting the Law Society from reproducing these works as well as any other works that they published. The Law Society denied liability and counterclaimed for a declaration that copyright is not infringed when a single copy of a reported decision, case summary, statute, regulation or a limited selection of text from a treatise is made by the Great Library staff, or one of its patrons on a self-service copier, for the purpose of research. The Federal Court, Trial Division allowed the publishers’ action in part, finding that the Law Society had infringed copyright in certain works; it dismissed the Law Society’s counterclaim. The Federal Court of Appeal allowed the publishers’ appeal in part, holding that all of the works were original and therefore covered by copyright. It dismissed the Law Society’s cross-appeal.
Held: The appeal should be allowed and the cross-appeal dismissed. The Law Society does not infringe copyright when a single copy of a reported decision, case summary, statute, regulation or limited selection of text from a treatise is made by the Great Library in accordance with its access policy. Moreover, the Law Society does not authorize copyright infringement by maintaining a photocopier in the Great Library and posting a notice warning that it will not be responsible for any copies made in infringement of copyright.
The headnotes, case summary, topical index and compilation of reported judicial decisions are all original works in which copyright subsists. An “original” work under the Copyright Act is one that originates from an author and is not copied from another work. In addition, an original work must be the product of an author’s exercise of skill and judgment. The exercise of skill and judgment required to produce the work must not be so trivial that it could be characterized as a purely mechanical exercise. While creative works will by definition be “original” and covered by copyright, creativity is not required to make a work “original”. This conclusion is supported by the plain meaning of “original”, the history of copyright law, recent jurisprudence, the purpose of the Copyright Act and the fact that this constitutes a workable yet fair standard. While the reported judicial decisions, when properly understood as a compilation of the headnote and the accompanying edited judicial reasons, are “original” works covered by copyright, the judicial reasons in and of themselves, without the headnotes, are not original works in which the publishers could claim copyright.
Under s. 29 of the Copyright Act , fair dealing for the purpose of research or private study does not infringe copyright. “Research” must be given a large and liberal interpretation in order to ensure that users’ rights are not unduly constrained, and is not limited to non-commercial or private contexts. Lawyers carrying on the business of law for profit are conducting research within the meaning of s. 29 . The following factors help determine whether a dealing is fair: the purpose of the dealing, the character of the dealing, the amount of the dealing, the nature of the work, available alternatives to the dealing, and the effect of the dealing on the work. Here, the Law Society’s dealings with the publishers’ works through its custom photocopy service were research-based and fair. The access policy places appropriate limits on the type of copying that the Law Society will do. If a request does not appear to be for the purpose of research, criticism, review or private study, the copy will not be made. If a question arises as to whether the stated purpose is legitimate, the reference librarian will review the matter. The access policy limits the amount of work that will be copied, and the reference librarian reviews requests that exceed what might typically be considered reasonable and has the right to refuse to fulfill a request.
The Law Society did not authorize copyright infringement by providing self‑service photocopiers for use by its patrons in the Great Library. While authorization can be inferred from acts that are less than direct and positive, a person does not authorize infringement by authorizing the mere use of equipment that could be used to infringe copyright. Courts should presume that a person who authorizes an activity does so only so far as it is in accordance with the law. This presumption may be rebutted if it is shown that a certain relationship or degree of control existed between the alleged authorizer and the persons who committed the copyright infringement. Here, there was no evidence that the copiers had been used in a manner that was not consistent with copyright law. Moreover, the Law Society’s posting of a notice warning that it will not be responsible for any copies made in infringement of copyright does not constitute an express acknowledgement that the copiers will be used in an illegal manner. Finally, even if there were evidence of the copiers having been used to infringe copyright, the Law Society lacks sufficient control over the Great Library’s patrons to permit the conclusion that it sanctioned, approved or countenanced the infringement.
There was no secondary infringement by the Law Society. The Law Society’s fax transmissions of copies of the respondent publishers’ works to lawyers in Ontario were not communications to the public. While a series of repeated fax transmissions of the same work to numerous different recipients might constitute communication to the public in infringement of copyright, there was no evidence of this type of transmission having occurred in this case. Nor did the Law Society infringe copyright by selling copies of the publishers’ works. Absent primary infringement, there can be no secondary infringement. Finally, while it is not necessary to decide the point, the Great Library qualifies for the library exemption.
Cases Cited
Applied: Muzak Corp. v. Composers, Authors and Publishers Association of Canada, Ltd., [1953] 2 S.C.R. 182; De Tervagne v. Belœil (Town), [1993] 3 F.C. 227; not followed: Moorhouse v. University of New South Wales, [1976] R.P.C. 151; referred to: Moreau v. St. Vincent, [1950] Ex. C.R. 198; Goldner v. Canadian Broadcasting Corp. (1972), 7 C.P.R. (2d) 158; Grignon v. Roussel (1991), 38 C.P.R. (3d) 4; Théberge v. Galerie d’Art du Petit Champlain inc., [2002] 2 S.C.R. 336, 2002 SCC 34; Bishop v. Stevens, [1990] 2 S.C.R. 467; Compo Co. v. Blue Crest Music Inc., [1980] 1 S.C.R. 357; Bell ExpressVu Limited Partnership v. Rex, [2002] 2 S.C.R. 559, 2002 SCC 42; University of London Press, Ltd. v. University Tutorial Press, Ltd., [1916] 2 Ch. 601; U & R Tax Services Ltd. v. H & R Block Canada Inc. (1995), 62 C.P.R. (3d) 257; Feist Publications Inc. v. Rural Telephone Service Co., 499 U.S. 340 (1991); Tele-Direct (Publications) Inc. v. American Business Information, Inc., [1998] 2 F.C. 22; Édutile Inc. v. Automobile Protection Assn., [2000] 4 F.C. 195; Slumber-Magic Adjustable Bed Co. v. Sleep-King Adjustable Bed Co. (1984), 3 C.P.R. (3d) 81; Ladbroke (Football) Ltd. v. William Hill (Football) Ltd., [1964] 1 All E.R. 465; Composers, Authors and Publishers Association of Canada Ltd. v. CTV Television Network Ltd., [1968] S.C.R. 676; CBS Inc. v. Ames Records & Tapes Ltd., [1981] 2 All E.R. 812; Hubbard v. Vosper, [1972] 1 All E.R. 1023; Associated Newspapers Group plc v. News Group Newspapers Ltd., [1986] R.P.C. 515; Sillitoe v. McGraw-Hill Book Co. (U.K.), [1983] F.S.R. 545; Beloff v. Pressdram Ltd., [1973] 1 All E.R. 241; Pro Sieben Media AG v. Carlton UK Television Ltd., [1999] F.S.R. 610.
Statutes and Regulations Cited
Berne Convention for the Protection of Literary and Artistic Works (1886).
Copyright Act, R.S.C. 1985, c. C-42, ss. 2 “computer program” [am. c. 10 (4th Supp.), s. 1(3) ], “dramatic work” [am. 1993, c. 44, s. 53(2)], “every original literary, dramatic, musical and artistic work” [idem], “library, archive or museum” [ad. 1997, c. 24, s. 1(5)], “work”, 2.1 [ad. 1993, c. 44, s. 54], Part I, 3(1) [am. 1988, c. 65, s. 62; am. 1993, c. 44, s. 55; am. 1997, c. 24, s. 3], 5(1) [repl. 1994, c. 47, s. 57(1); am. 1997, c. 24, s. 5], Part III, 27 [repl. 1997, c. 24, s. 15], 29 [idem, s. 18(1)], 29.1, 29.2, 30, 30.2 [ad. idem], Part IV, 34(1) [repl. idem, s. 20(1)].
Authors Cited
Concise Oxford Dictionary of Current English, 7th ed. Oxford: Oxford University Press, 1982, “original”.
Craig, Carys J. “Locke, Labour and Limiting the Author’s Right: A Warning against a Lockean Approach to Copyright Law” (2002), 28 Queen’s L.J. 1.
Driedger, Elmer A. Construction of Statutes, 2nd ed. Toronto: Butterworths, 1983.
Gervais, Daniel J. “Feist Goes Global: A Comparative Analysis of the Notion of Originality in Copyright Law” (2002), 49 J. Copyright Soc’y U.S.A. 949.
Handa, Sunny. Copyright Law in Canada. Markham, Ont.: Butterworths, 2002.
Hitchcock, P. D. “Home Copying and Authorization” (1983), 67 C.P.R. (2d) 17.
Kierans, Patrick E., and Rowena Borenstein. “Injunctions — Interlocutory and Permanent”. In Ronald E. Dimock, ed., Intellectual Property Disputes: Resolutions & Remedies, vol. 2. Toronto: Thomson/Carswell, 2002, 15-1.
Litman, Jessica. “The Public Domain” (1990), 39 Emory L.J. 965.
McKeown, John S. Fox Canadian Law of Copyright and Industrial Designs, 4th ed. Toronto: Thomson/Carswell, 2003 (loose-leaf).
New Shorter Oxford English Dictionary on Historical Principles, vol. 1. Oxford: Clarendon Press, 1993, “countenance”.
Ricketson, Sam. The Berne Convention for the Protection of Literary and Artistic Works: 1886-1986. London: Kluwer, 1987.
Vaver, David. Copyright Law. Toronto: Irwin Law, 2000.
APPEAL and CROSS-APPEAL from a judgment of the Federal Court of Appeal, [2002] 4 F.C. 213, 212 D.L.R. (4th) 385, 289 N.R. 1, 18 C.P.R. (4th) 161, [2002] F.C.J. No. 690 (QL), 2002 FCA 187, reversing in part a judgment of the Trial Division, [2000] 2 F.C. 451, 169 F.T.R. 1, 179 D.L.R. (4th) 609, 2 C.P.R. (4th) 129, 72 C.R.R. (2d) 139, [1999] F.C.J. No. 1647 (QL). Appeal allowed and cross-appeal dismissed.
R. Scott Joliffe, L. A. Kelly Gill and Kevin J. Sartorio, for the appellant/respondent on cross-appeal.
Roger T. Hughes, Q.C., and Glen A. Bloom, for the respondents/appellants on cross-appeal.
Kevin L. LaRoche, for the intervener the Federation of Law Societies of Canada.
Thomas G. Heintzman, Q.C., and Barry B. Sookman, for the interveners the Canadian Publishers’ Council and the Association of Canadian Publishers.
Claude Brunet, Benoît Clermont and Madeleine Lamothe-Samson, for the interveners Société québécoise de gestion collective des droits de reproduction (COPIBEC) and the Canadian Copyright Licensing Agency (Access Copyright).
The judgment of the Court was delivered by
The Chief Justice —
I. Introduction — The Issues To Be Determined
1 The appellant, the Law Society of Upper Canada, is a statutory non-profit corporation that has regulated the legal profession in Ontario since 1822. Since 1845, the Law Society has maintained and operated the Great Library at Osgoode Hall in Toronto, a reference and research library with one of the largest collections of legal materials in Canada. The Great Library provides a request-based photocopy service (the “custom photocopy service”) for Law Society members, the judiciary and other authorized researchers. Under the custom photocopy service, legal materials are reproduced by Great Library staff and delivered in person, by mail or by facsimile transmission to requesters. The Law Society also maintains self-service photocopiers in the Great Library for use by its patrons.
2 The respondents, CCH Canadian Ltd., Thomson Canada Ltd. and Canada Law Book Inc., publish law reports and other legal materials. In 1993, the respondent publishers commenced copyright infringement actions against the Law Society, seeking a declaration of subsistence and ownership of copyright in eleven specific works and a declaration that the Law Society had infringed copyright when the Great Library reproduced a copy of each of the works. The publishers also sought a permanent injunction prohibiting the Law Society from reproducing these eleven works as well as any other works that they published.
3 The Law Society denied liability and counterclaimed for a declaration that copyright is not infringed when a single copy of a reported decision, case summary, statute, regulation or a limited selection of text from a treatise is made by the Great Library staff or one of its patrons on a self-service photocopier for the purpose of research.
4 The key question that must be answered in this appeal is whether the Law Society has breached copyright by either (1) providing the custom photocopy service in which single copies of the publishers’ works are reproduced and sent to patrons upon their request or by (2) maintaining self-service photocopiers and copies of the publishers’ works in the Great Library for use by its patrons. To answer this question, the Court must address the following sub-issues:
(1) Are the publishers’ materials “original works” protected by copyright?
(2) Did the Great Library authorize copyright infringement by maintaining self-service photocopiers and copies of the publishers’ works for its patrons’ use?
(3) Were the Law Society’s dealings with the publishers’ works “fair dealing[s]” under s. 29 of the Copyright Act, R.S.C. 1985, c. C-42 , as amended?
(4) Did Canada Law Book consent to have its works reproduced by the Great Library?
5 The publishers have filed a cross-appeal in which they submit that, in addition to infringing copyright by reproducing copies of their works, the Law Society infringed copyright both by faxing and by selling copies of the publishers’ copyrighted works through its custom photocopy service. The publishers also contend that the Great Library does not qualify for the library exemption under the Copyright Act and, finally, that they are entitled to an injunction to the extent that the Law Society has been found to infringe any one or more of their copyrighted works. The four sub-issues that the Court must address on this cross-appeal are:
(1) Did the Law Society’s fax transmissions of the publishers’ works constitute communications “to the public” within s. 3(1) (f) of the Copyright Act so as to constitute copyright infringement?
(2) Did the Law Society infringe copyright by selling copies of the publishers’ works contrary to s. 27(2) of the Copyright Act ?
(3) Does the Law Society qualify for an exemption as a “library, archive or museum” under ss. 2 and 30.2(1) of the Copyright Act ?
(4) To the extent that the Law Society has been found to infringe any one or more of the publishers’ copyrighted works, are the publishers entitled to a permanent injunction under s. 34(1) of the Copyright Act ?
6 With respect to the main appeal, I conclude that the Law Society did not infringe copyright by providing single copies of the respondent publishers’ works to its members through the custom photocopy service. Although the works in question were “original” and thus covered by copyright, the Law Society’s dealings with the works were for the purpose of research and were fair dealings within s. 29 of the Copyright Act . I also find that the Law Society did not authorize infringement by maintaining self-service photocopiers in the Great Library for use by its patrons. I would therefore allow the appeal.
7 On the cross-appeal, I conclude that there was no secondary infringement by the Law Society; the fax transmissions were not communications to the public and the Law Society did not sell copies of the publishers’ works. In light of my finding on appeal that the Law Society’s dealings with the publishers’ works were fair, it is not necessary to decide whether the Great Library qualifies for the library exemption. This said, I would conclude that the Great Library does indeed qualify for this exemption. Finally, in light of my conclusion that there has been no copyright infringement, it is not necessary to issue an injunction in this case. I would dismiss the cross-appeal.
II. Analysis on Appeal
8 Copyright law in Canada protects a wide range of works including every original literary, dramatic, musical and artistic work, computer programs, translations and compilations of works: see ss. 5 , 2 and 2.1 of the Copyright Act . Copyright law protects the expression of ideas in these works; it does not protect ideas in and of themselves. Thorson P. explained it thus in Moreau v. St. Vincent, [1950] Ex. C.R. 198, at p. 203:
It is, I think, an elementary principle of copyright law that an author has no copyright in ideas but only in his expression of them. The law of copyright does not give him any monopoly in the use of the ideas with which he deals or any property in them, even if they are original. His copyright is confined to the literary work in which he has expressed them. The ideas are public property, the literary work is his own.
It flows from the fact that copyright only protects the expression of ideas that a work must also be in a fixed material form to attract copyright protection: see s. 2 definitions of “dramatic work” and “computer program” and, more generally, Goldner v. Canadian Broadcasting Corp. (1972), 7 C.P.R. (2d) 158 (F.C.T.D.), at p. 162; Grignon v. Roussel (1991), 38 C.P.R. (3d) 4 (F.C.T.D.), at p. 7.
9 In Canada, copyright is a creature of statute and the rights and remedies provided by the Copyright Act are exhaustive: see Théberge v. Galerie d’Art du Petit Champlain inc., [2002] 2 S.C.R. 336, 2002 SCC 34, at para. 5; Bishop v. Stevens, [1990] 2 S.C.R. 467, at p. 477; Compo Co. v. Blue Crest Music Inc., [1980] 1 S.C.R. 357, at p. 373. In interpreting the scope of the Copyright Act ’s rights and remedies, courts should apply the modern approach to statutory interpretation whereby “the words of an Act are to be read in their entire context and in their grammatical and ordinary sense harmoniously with the scheme of the Act, the object of the Act, and the intention of Parliament”: Bell ExpressVu Limited Partnership v. Rex, [2002] 2 S.C.R. 559, 2002 SCC 42, at para. 26, citing E. A. Driedger, Construction of Statutes (2nd ed. 1983), at p. 87.
10 Binnie J. recently explained in Théberge, supra, at paras. 30-31, that the Copyright Act has dual objectives:
The Copyright Act is usually presented as a balance between promoting the public interest in the encouragement and dissemination of works of the arts and intellect and obtaining a just reward for the creator . . . .
The proper balance among these and other public policy objectives lies not only in recognizing the creator’s rights but in giving due weight to their limited nature.
In interpreting the Copyright Act , courts should strive to maintain an appropriate balance between these two goals.
11 Canada’s Copyright Act sets out the rights and obligations of both copyright owners and users. Part I of the Act specifies the scope of a creator’s copyright and moral rights in works. For example, s. 3 of the Act specifies that only copyright owners have the right to copy or to authorize the copying of their works:
3. (1) For the purposes of this Act, “copyright”, in relation to a work, means the sole right to produce or reproduce the work or any substantial part thereof in any material form whatever, to perform the work or any substantial part thereof in public or, if the work is unpublished, to publish the work or any substantial part thereof . . . .
. . .
and to authorize any such acts.
12 Part III of the Copyright Act deals with the infringement of copyright and exceptions to infringement. Section 27(1) states generally that “[i]t 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.” More specific examples of how copyright is infringed are set out in s. 27(2) of the Act. The exceptions to copyright infringement, perhaps more properly understood as users’ rights, are set out in ss. 29 and 30 of the Act. The fair dealing exceptions to copyright are set out in ss. 29 to 29.2 . In general terms, those who deal fairly with a work for the purpose of research, private study, criticism, review or news reporting, do not infringe copyright. Educational institutions, libraries, archives and museums are specifically exempted from copyright infringement in certain circumstances: see ss. 29.4 to 30 (educational institutions), and ss. 30.1 to 30.5 . Part IV of the Copyright Act specifies the remedies that may be awarded in cases where copyright has been infringed. Copyright owners may be entitled to any number of different remedies such as damages and injunctions, among others.
13 This case requires this Court to interpret the scope of both owners’ and users’ rights under the Copyright Act , including what qualifies for copyright protection, what is required to find that the copyright has been infringed through authorization and the fair dealing exceptions under the Act.
(1) Are the Publishers’ Materials “Original Works” Covered by Copyright?
(a) The Law
14 Section 5 of the Copyright Act states that, in Canada, copyright shall subsist “in every original literary, dramatic, musical and artistic work” (emphasis added). Although originality sets the boundaries of copyright law, it is not defined in the Copyright Act . Section 2 of the Copyright Act defines “every original literary . . . work” as including “every original production in the literary . . . domain, whatever may be the mode or form of its expression”. Since copyright protects only the expression or form of ideas, “the originality requirement must apply to the expressive element of the work and not the idea”: S. Handa, Copyright Law in Canada (2002), at p. 209.
15 There are competing views on the meaning of “original” in copyright law. Some courts have found that a work that originates from an author and is more than a mere copy of a work is sufficient to ground copyright. See, for example, University of London Press, Ltd. v. University Tutorial Press, Ltd., [1916] 2 Ch. 601; U & R Tax Services Ltd. v. H & R Block Canada Inc. (1995), 62 C.P.R. (3d) 257 (F.C.T.D.). This approach is consistent with the “sweat of the brow” or “industriousness” standard of originality, which is premised on a natural rights or Lockean theory of “just desserts”, namely that an author deserves to have his or her efforts in producing a work rewarded. Other courts have required that a work must be creative to be “original” and thus protected by copyright. See, for example, Feist Publications Inc. v. Rural Telephone Service Co., 499 U.S. 340 (1991); Tele-Direct (Publications) Inc. v. American Business Information, Inc., [1998] 2 F.C. 22 (C.A.). This approach is also consistent with a natural rights theory of property law; however it is less absolute in that only those works that are the product of creativity will be rewarded with copyright protection. It has been suggested that the “creativity” approach to originality helps ensure that copyright protection only extends to the expression of ideas as opposed to the underlying ideas or facts. See Feist, supra, at p. 353.
16 I conclude that the correct position falls between these extremes. For a work to be “original” within the meaning of the Copyright Act , it must be more than a mere copy of another work. At the same time, it need not be creative, in the sense of being novel or unique. What is required to attract copyright protection in the expression of an idea is an exercise of skill and judgment. By skill, I mean the use of one’s knowledge, developed aptitude or practised ability in producing the work. By judgment, I mean the use of one’s capacity for discernment or ability to form an opinion or evaluation by comparing different possible options in producing the work. This exercise of skill and judgment will necessarily involve intellectual effort. The exercise of skill and judgment required to produce the work must not be so trivial that it could be characterized as a purely mechanical exercise. For example, any skill and judgment that might be involved in simply changing the font of a work to produce “another” work would be too trivial to merit copyright protection as an “original” work.
17 In reaching this conclusion, I have had regard to: (1) the plain meaning of “original”; (2) the history of copyright law; (3) recent jurisprudence; (4) the purpose of the Copyright Act ; and (5) that this constitutes a workable yet fair standard.
(i) The Plain Meaning of “Original”
18 The plain meaning of the word “original” suggests at least some intellectual effort, as is necessarily involved in the exercise of skill and judgment. The Concise Oxford Dictionary (7th ed. 1982), at p. 720, defines “original” as follows:
1. a. existing from the first, primitive, innate, initial, earliest; . . . 2. that has served as pattern, of which copy or translation has been made, not derivative or dependant, first-hand, not imitative, novel in character or style, inventive, creative, thinking or acting for oneself.
“Original”’s plain meaning implies not just that something is not a copy. It includes, if not creativity per se, at least some sort of intellectual effort. As Professor Gervais has noted, “[w]hen used to mean simply that the work must originate from the author, originality is eviscerated of its core meaning. It becomes a synonym of ‘originated,’ and fails to reflect the ordinary sense of the word”: D. J. Gervais, “Feist Goes Global: A Comparative Analysis of the Notion of Originality in Copyright Law” (2002), 49 J. Copyright Soc’y U.S.A. 949, at p. 961.
(ii) History of Copyright
19 The idea of “intellectual creation” was implicit in the notion of literary or artistic work under the Berne Convention for the Protection of Literary and Artistic Works (1886), to which Canada adhered in 1923, and which served as the precursor to Canada’s first Copyright Act , adopted in 1924. See S. Ricketson, The Berne Convention for the Protection of Literary and Artistic Works: 1886-1986 (1987), at p. 900. Professor Ricketson has indicated that in adopting a sweat of the brow or industriousness approach to deciding what is original, common law countries such as England have “depart[ed] from the spirit, if not the letter, of the [Berne] Convention” since works that have taken time, labour or money to produce but are not truly artistic or literary intellectual creations are accorded copyright protection: Ricketson, supra, at p. 901.
20 In the international context, France and other continental civilian jurisdictions require more than mere industriousness to find that a work is original. “Under the French law, originality means both the intellectual contribution of the author and the novel nature of the work as compared with existing works”: Handa, supra, at p. 211. This understanding of originality is reinforced by the expression “le droit d’auteur” — literally the “author’s right” — the term used in the French title of the Copyright Act . The author must contribute something intellectual to the work, namely skill and judgment, if it is to be considered original.
(iii) Recent Jurisprudence
21 Although many Canadian courts have adopted a rather low standard of originality, i.e., that of industriousness, more recently, some courts have begun to question whether this standard is appropriate. For example, the Federal Court of Appeal in Tele-Direct, supra, held, at para. 29, that those cases which had adopted the sweat of the brow approach to originality should not be interpreted as concluding that labour, in and of itself, could ground a finding of originality. As Décary J.A. explained: “If they did, I suggest that their approach was wrong and is irreconcilable with the standards of intellect and creativity that were expressly set out in NAFTA and endorsed in the 1993 amendments to the Copyright Act and that were already recognized in Anglo-Canadian law.” See also Édutile Inc. v. Automobile Protection Assn., [2000] 4 F.C. 195 (C.A.), at para. 8, adopting this passage.
22 The United States Supreme Court explicitly rejected the “sweat of the brow” approach to originality in Feist, supra. In so doing, O’Connor J. explained at p. 353 that, in her view, the “sweat of the brow” approach was not consistent with the underlying tenets of copyright law:
The “sweat of the brow” doctrine had numerous flaws, the most glaring being that it extended copyright protection in a compilation beyond selection and arrangement — the compiler’s original contributions — to the facts themselves. Under the doctrine, the only defense to infringement was independent creation. A subsequent compiler was “not entitled to take one word of information previously published,” but rather had to “independently wor(k) out the matter for himself, so as to arrive at the same result from the same common sources of information.” . . . “Sweat of the brow” courts thereby eschewed the most fundamental axiom of copyright law — that no one may copyright facts or ideas.
As this Court recognized in Compo, supra, at p. 367, U.S. copyright cases may not be easily transferable to Canada given the key differences in the copyright concepts in Canadian and American copyright legislation. This said, in Canada, as in the United States, copyright protection does not extend to facts or ideas but is limited to the expression of ideas. As such, O’Connor J.’s concerns about the “sweat of the brow” doctrine’s improper extension of copyright over facts also resonate in Canada. I would not, however, go as far as O’Connor J. in requiring that a work possess a minimal degree of creativity to be considered original. See Feist, supra, at pp. 345 and 358.
(iv) Purpose of the Copyright Act
23 As mentioned, in Théberge, supra, this Court stated that the purpose of copyright law was to balance the public interest in promoting the encouragement and dissemination of works of the arts and intellect and obtaining a just reward for the creator. When courts adopt a standard of originality requiring only that something be more than a mere copy or that someone simply show industriousness to ground copyright in a work, they tip the scale in favour of the author’s or creator’s rights, at the loss of society’s interest in maintaining a robust public domain that could help foster future creative innovation. See J. Litman, “The Public Domain” (1990), 39 Emory L.J. 965, at p. 969, and C. J. Craig, “Locke, Labour and Limiting the Author’s Right: A Warning against a Lockean Approach to Copyright Law” (2002), 28 Queen’s L.J. 1. By way of contrast, when an author must exercise skill and judgment to ground originality in a work, there is a safeguard against the author being overcompensated for his or her work. This helps ensure that there is room for the public domain to flourish as others are able to produce new works by building on the ideas and information contained in the works of others.
(v) Workable, Yet Fair Standard
24 Requiring that an original work be the product of an exercise of skill and judgment is a workable yet fair standard. The “sweat of the brow” approach to originality is too low a standard. It shifts the balance of copyright protection too far in favour of the owner’s rights, and fails to allow copyright to protect the public’s interest in maximizing the production and dissemination of intellectual works. On the other hand, the creativity standard of originality is too high. A creativity standard implies that something must be novel or non-obvious — concepts more properly associated with patent law than copyright law. By way of contrast, a standard requiring the exercise of skill and judgment in the production of a work avoids these difficulties and provides a workable and appropriate standard for copyright protection that is consistent with the policy objectives of the Copyright Act .
(vi) Conclusion
25 For these reasons, I conclude that an “original” work under the Copyright Act is one that originates from an author and is not copied from another work. That alone, however, is not sufficient to find that something is original. In addition, an original work must be the product of an author’s exercise of skill and judgment. The exercise of skill and judgment required to produce the work must not be so trivial that it could be characterized as a purely mechanical exercise. While creative works will by definition be “original” and covered by copyright, creativity is not required to make a work “original”.
(b) Application of the Law to These Facts
26 At trial, the respondent publishers claimed copyright in eleven works: three reported judicial decisions; the three headnotes preceding these decisions; the annotated Martin’s Ontario Criminal Practice 1999; a case summary; a topical index; the textbook Economic Negligence (1989); and the monograph “Dental Evidence”, being chapter 13 in Forensic Evidence in Canada (1991). Gibson J. held that the publishers’ works should be judged against a standard of intellect and creativity in order to determine if they were original. Based on this standard of originality, the trial judge found that the publishers only had copyright in the annotated Criminal Practice, the textbook and the monograph. He concluded that the remaining eight works were not original and, therefore, were not covered by copyright ([2000] 2 F.C. 451).
27 On appeal, the Law Society did not challenge the trial judge’s findings with respect to the three works in which he found copyright did exist, with the exception of questioning whether the monograph constituted a “work” within the meaning of the Copyright Act . The Federal Court of Appeal adopted the “sweat of the brow” approach to originality and found that if a work was more than a mere copy, it would be original. On this basis, Linden J.A., writing for the majority, held that all of the remaining works were original and therefore covered by copyright ([2002] 4 F.C. 213). The Law Society appeals, contending that the headnotes, case summary, topical index and reported judicial decisions are not “original” within the meaning of the Copyright Act and, therefore, are not covered by copyright.
28 As stated, in order to be original, a work must have originated from the author, not be copied, and must be the product of the exercise of skill and judgment that is more than trivial. Applying this test, all of the works in question are original and therefore covered by copyright.
(i) Headnotes
29 The Federal Court of Appeal held that “headnotes”, defined as including the summary of the case, catchlines, statement of the case, case title and case information, are more than mere copies and hence “original” works in which copyright subsists. It found that the headnotes are more than simply an abridged version of the reasons; they consist of independently composed features. As Linden J.A. explained, at para. 73, the authors of the headnotes could have chosen to make the summaries “long or short, technical or simple, dull or dramatic, well written or confusing; the organization and presentation might have varied greatly”.
30 Although headnotes are inspired in large part by the judgment which they summarize and refer to, they are clearly not an identical copy of the reasons. The authors must select specific elements of the decision and can arrange them in numerous different ways. Making these decisions requires the exercise of skill and judgment. The authors must use their knowledge about the law and developed ability to determine legal ratios to produce the headnotes. They must also use their capacity for discernment to decide which parts of the judgment warrant inclusion in the headnotes. This process is more than just a mechanical exercise. Thus the headnotes constitute “original” works in which copyright subsists.
(ii) Case Summary
31 For substantially the same reasons as given for headnotes, the case summary is also covered by copyright. A summary of judicial reasons is not simply a copy of the original reasons. Even if the summary often contains the same language as the judicial reasons,