CCH Canadian Ltd. v. Law Society of Upper Canada

CCH Canadian Ltd. v. Law Society of Upper Canada
Court (s) Database
Federal Court of Appeal Decisions
Date
2002-05-14
Neutral citation
2002 FCA 187
File numbers
A-806-99
Notes
Reported Decision
Decision Content
Federal Court Reports CCH Canadian Ltd. v. Law Society of Upper Canada (C.A.) [2002] 4 F.C. 213
Date: 20020514
Dockets: A-806-99
A-807-99
A-808-99
Neutral citation: 2002 FCA 187
CORAM: LINDEN J.A.
ROTHSTEIN J.A.
SHARLOW J.A.
A-806-99
(T-1618-93)
BETWEEN:
CCH CANADIAN LIMITED
Appellant
(Plaintiff)
and
THE LAW SOCIETY OF UPPER CANADA
Respondent
(Defendant)
A-807-99
(T-1619-93)
BETWEEN:
THOMSON CANADA LIMITED c.o.b. as
CARSWELL THOMSON PROFESSIONAL PUBLISHING
Appellant
(Plaintiff)
- and -
THE LAW SOCIETY OF UPPER CANADA
Respondent
(Defendant)
A-808-99
(T-1620-93)
BETWEEN:
CANADA LAW BOOK INC.
Appellant
(Plaintiff)
- and -
THE LAW SOCIETY OF UPPER CANADA
Respondent
(Defendant)
Heard at Toronto, Ontario, on Tuesday, Wednesday and Thursday, October 23, 24 and 25, 2001
Judgment delivered at Ottawa, Ontario, on Tuesday, May 14, 2002
REASONS FOR JUDGMENT BY: LINDEN J.A.
CONCURRED IN BY: SHARLOW J.A.
CONCURRING REASONS BY: ROTHSTEIN J.A.
Date: 20020514
Dockets: A-806-99
A-807-99
A-808-99
Neutral citation: 2002 FCA 187
CORAM: LINDEN J.A.
ROTHSTEIN J.A.
SHARLOW J.A.
A-806-99
(T-1618-93)
BETWEEN:
CCH CANADIAN LIMITED
Appellant
(Plaintiff)
and
THE LAW SOCIETY OF UPPER CANADA
Respondent
(Defendant)
A-807-99
(T-1619-93)
BETWEEN:
THOMSON CANADA LIMITED c.o.b. as
CARSWELL THOMSON PROFESSIONAL PUBLISHING
Appellant
(Plaintiff)
and
THE LAW SOCIETY OF UPPER CANADA
Respondent
(Defendant)
A-808-99
(T-1620-93)
BETWEEN:
CANADA LAW BOOK INC.
Appellant
(Plaintiff)
and
THE LAW SOCIETY OF UPPER CANADA
Respondent
(Defendant)
REASONS FOR JUDGMENT
LINDEN J.A.
I. INTRODUCTION
[1] CCH Canadian Ltd., Thomson Canada Ltd. (which carries on business as Carswell Thomson Professional Publishing) and Canada Law Book Inc. (hereinafter "the Publishers") produce legal materials. The Law Society of Upper Canada (hereinafter "the Law Society") is a statutory, non-profit corporation that governs the legal profession in the province of Ontario. As part of its mandate to serve and assist its members and other researchers, the Law Society operates the Great Library at Osgoode Hall in Toronto. The Great Library has one of the largest collections of legal materials in Canada.
[2] Upon request from lawyers, articling students, the judiciary or other authorized researchers the Law Society will photocopy legal materials from the Great Library's collection. Library users can pick up photocopies or have them forwarded by mail or facsimile. The photocopying service is intended to be carried out in accordance with the Law Society's "Access to the Law Policy", which states:
Access to the Law Policy*
The Law Society of Upper Canada, with the assistance of the resources of the Great Library, supports the administration of justice and the rule of law in the Province of Ontario. The Great Library's comprehensive catalogue of primary and secondary legal sources, in print and electronic media, is open to lawyers, articling students, the judiciary and other authorized researchers. Single copies of library materials, required for the purposes of research, review, private study and criticism, as well as use in court, tribunal and government proceedings, may be provided to users of the Great Library.
This service supports users of the Great Library who require access to legal materials while respecting the copyright of the publishers of such materials, in keeping with the fair dealing provisions in Section 27 of the Canadian Copyright Act.
Guidelines to Access
1. The Access to the Law service provides single copies for specific purposes, identified in advance to library staff.
2. The specific purposes are research, review, private study and criticism, as well as use in court, tribunal and government proceedings. Any doubt concerning the legitimacy of the request for these purposes will be referred to the Reference Librarian.
3. The individual must identify him/herself and the purpose at the time of making the request. A request form will be completed by library staff, based on information provided by the requesting party.
4. As to the amount of copying, discretion must be used. No copies will be made for any purpose other than that specifically set out on the request form. Ordinarily, requests for a copy of one case, one article or one statutory reference will be satisfied as a matter of routine. Requests for substantial copying from secondary sources (e.g. in excess of 5% of the volume or more than two citations from one volume) will be referred to the Reference Librarian and may ultimately be refused.
5. This service is provided on a not for profit basis. The fee charged for this service is intended to cover the costs of the Law Society.
*This Policy Statement reflects the policy followed by the Great Library for the past many years and is not regarded as being a change in the Law Society's approach to this matter.
Jan. 28, 1996
[3] When the Policy was put into writing in 1996 it was not intended to depart from the existing policy, although it did alter monitoring and compliance practices somewhat. The Law Society asserts that its guidelines are now strictly enforced.
[4] The Law Society also provides free-standing photocopiers in the Great Library, which are operated by patrons using coins or pre-paid cards. The Law Society does not monitor the use of these photocopiers, however, the following notice appears above each machine:
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.
[5] The Publishers were aware of the Great Library's custom photocopying service but did not object to it until 1993 when, after delivering a cease and desist letter, they commenced this litigation. In essence, the Publishers assert that copyright subsists in their material, and that the Law Society infringes those copyrights through its custom photocopying service and by making free-standing copiers available in the Great Library. Notably however, the Publishers allow reproductions by certain persons for limited purposes. For example, they expressly grant a license to lawyers to make copies to submit in judicial proceedings, to judges to use in judicial proceedings and to anyone to use in parliamentary proceedings. The Law Society denies all liability.
[6] Where it is necessary to do so, I will refer to the facts of this case in more detail below. In addition, the Trial Judge's thorough reasons include a statement of facts as agreed by the parties at trial (see CCH Canadian Ltd. v. Law Society of Upper Canada, [2000] 2 F.C. 451 (abridged version), 169 F.T.R. 1, 179 D.L.R. (4th) 609, 2 C.P.R. (4th) 129, [1999] F.C.J. No. 1647 (QL)).
II. THE ISSUES
A. Subsistence of Copyright
[7] At trial, the Publishers submitted eleven specific items in which they assert copyright subsists. This case deals with copyright subsistence in only those specific materials. However, I recognize that this case will guide the results in similar cases, and I have approached the issues with that in mind.
[8] First, the Publishers assert copyright in following three reported judicial decisions:
a. Meyer v. Bright (1992), as published in 94 D.L.R. (4th) 648 by Canada Law Book,
b. R. v. CIP Inc. (1992), as published in 71 C.C.C. (3d) 129 by Canada Law Book and
c. Hewes v. Etobicoke (1993), as published in C.L.L.C. ¶ 14,042 by CCH Canadian Ltd..
[9] Each reported judicial decision contains reasons for judgment, which are written by a judge or judges but edited by the Publishers to conform with their preferred style. Each of these reported judicial decisions also includes material composed by the Publishers, including a summary of the facts, reasons and conclusions contained in the judicial reasons, point-form "catchlines" that highlight topics and issues considered in the case, a "statement of case" that very briefly states the issue or issues addressed by the Court and an indexing case title that succinctly states the parties involved. In addition, the reported judicial decisions contain information about the judicial reasons, such as the date of the judgment, the Court and panel that decided the case; counsel for each party; lists of cases, statutes and rules and regulations referred to; parallel citations; and other notes regarding the decision or the status of any appeals. Several reported judicial decisions are typically compiled into published volumes, which themselves are usually parts of a series of reported judicial decisions. However, neither volumes nor series of reported judicial decisions are at issue in this case. The Trial Judge found that copyright does not subsist in any of these reported judicial decisions, and the Publishers appeal from that finding.
[10] Second, the Publishers assert copyright in three headnotes, which accompany but are submitted as independent of the reported judicial decisions of:
a. Meyer v. Bright (1992), as published in 94 D.L.R. (4th) 648 by Canada Law Book,
b. R. v. CIP Inc. (1992), as published in 71 C.C.C. (3d) 129 by Canada Law Book and
c. Hewes v. Etobicoke (1993), as published in C.L.L.C. ¶ 14,042 by CCH Canadian Ltd..
[11] It is difficult for me to ascertain precisely what the Publishers mean when they use the term "headnote". At times, they use the term to connote only a summary of the facts, reasons and conclusions from a case. Generally, however, the Publishers indicate that a headnote also includes "catchlines" and a "statement of case". The latter use suggests that a headnote is everything in a reported judicial decision other than the edited judicial reasons, such as the summary, catchlines, statement of case, indexing title and other information about the reasons for judgment. That is how I have considered these headnotes. According to the Trial Judge, copyright does not subsist in any of the headnotes. The Publishers appeal from that conclusion. The Law Society does not submit that copyright can never subsist in any headnote, but asserts that copyright does not subsist in these particular headnotes.
[12] Third, the Publishers assert copyright in the case summary of Confederation Life v. Shepherd (1992), as published in 37 A.C.W.S. (3d) 141 by Canada Law Book. The case summary is a concise, point-form summary of the facts, reasons and conclusions of the case upon which it is based. The Trial Judge found that no copyright subsists in the case summary, and the Publishers take issue with that finding.
[13] Fourth, the Publishers assert copyright in the consolidated topical index that appears in Canada GST Cases, [1997] G.S.T.C., as published by Carswell Thomson Professional Publishing. The topical index lists and cross-references topics with extremely brief summaries of the issues or conclusions in cases relevant to the goods and services tax (GST). The Trial Judge denied copyright protection for the topical index to [1997] G.S.T.C., and the Publishers appeal from that conclusion.
[14] The Publishers also assert copyright in the annotated statute, E.L. Greenspan & M. Rosenberg, Martin's Ontario Criminal Practice 1999 (Aurora: Canada Law Book, 1998), the textbook, B. Feldthusen, Economic Negligence: The Recovery of Pure Economic Loss, 2nd ed. (Toronto: Carswell, 1989), and the monograph by S.L. Kogon, "Dental Evidence", as it appears as chapter 13 in G.M. Chayko, E.D. Gulliver & D.V. Macdougall, Forensic Evidence in Canada (Aurora: Canada Law Book, 1991). The Trial Judge found that copyright does subsist in the annotated statute, textbook and monograph. These conclusions have not been appealed, however, the Law Society objects to the characterization of the monograph as a "work" in itself, separate from the book in which it appears.
[15] Thus, this Court must decide whether the Trial Judge erred in concluding that copyright does not subsist in the reported judicial decisions, the headnotes, the case summary and the topical index. If copyright does subsist in these works, there is no dispute with the Trial Judge's finding that such copyright would be owned by the Publisher of each respective work.
B. Infringement of Copyright
[16] The Publishers allege that, through its custom photocopying service, the Law Society infringes their exclusive right to reproduce and communicate their works to the public by telecommunication. The Publishers also allege that by providing free-standing photocopiers the Law Society infringes their exclusive right to authorize others to reproduce their works. Finally, the Publishers allege that the Law Society is liable for selling, distributing and possessing infringing copies of their works.
[17] The Trial Judge found that the Law Society did infringe the Publishers' copyrights in the works in which copyright subsists by reproducing those works. The Law Society's primary objection in this regard relates to the characterization of the "works" in question, which necessarily affects the issue of substantiality. This Court must, therefore, define the Publishers' works, so as to decide whether any reproductions were substantial. The Trial Judge also held that the Law Society did not communicate works to the public by telecommunication via fax transmissions. The Publishers appeal from this conclusion. The Trial Judge held that the Law Society did not sell, but did knowingly distribute and possess infringing copies of the Publishers' works. The Publishers object to the Trial Judge's finding that the Law Society did not sell any works. The Law Society, on the other hand, argues the Trial Judge failed to properly consider the knowledge requirement and asserts that a reasonable, good faith belief that the copies it distributed and possessed did not infringe copyright is sufficient to avoid liability for those activities. Alternatively, the Law Society objects the Trial Judge's finding that it distributed works so as to affect prejudicially the owners of the copyright. Neither party has taken serious issue with the conclusion that the Law Society did possess copies of the Publishers' works.
C. Exemptions From Infringement
[18] The Law Society submits that their activities fall within the fair dealing exemptions, and therefore, it does not infringe any copyrights that may subsist in the Publishers' works. The Publishers disagree. The Trial Judge did not deal with this issue substantively, since he concluded that the Law Society's dealing was not personally for an allowable purpose. The Law Society appeals from this finding, and this Court must, therefore, consider the issue.
[19] The Law Society also submits that various public policy and equitable defences should prevent the Publishers' action from succeeding. The Trial Judge rejected all of the Law Society's arguments in this regard, and the Law Society appeals from those conclusions.
D. Remedies
[20] The Publishers and the Law Society seek a number of remedies. The Publishers seek a permanent injunction as well as general declarations that are intended to establish that copyright subsists in their materials, and that the Law Society infringes those copyrights by offering its custom photocopying service and self-service photocopiers in accordance with its current practices. The Society seeks a number of declarations that are intended to establish the contrary.
[21] The Trial Judge made a limited declaration that copyright subsists in some of the Publishers' works, but did not make any generalized declaration, nor did he grant a permanent injunction. The Trial Judge also did not make any declaration as requested by the Law Society. Both the Publishers' and the Law Society have objected to the relief granted by the Trial Judge, and this Court must, therefore, resolve this issue.
III. ANALYSIS
[22] Copyright law is statutory law, based upon the Copyright Act, R.S.C., 1985, c. C-42, and its relevant amendments ( the "Act") (see Compo Co. Ltd. v. Blue Crest Music Inc., [1980] 1 S.C.R. 357 at 372-3 ("Compo")). However, case law, both domestic and foreign, guides this Court's interpretation of the Act. This Court might be guided by British jurisprudence, since Canadian copyright law was historically based upon, and still closely resembles British law (see J.S. McKeown, Fox, Canadian Law of Copyright and Industrial Designs, 3rd ed. (Scarborough: Carswell, 2000) at 38-39 ("Fox"). On the other hand, the Supreme Court of Canada has indicated that American jurisprudence must be carefully scrutinized, because there are important differences between Canadian and American copyright policy and legislation (Compo, supra at 367). Canadian courts must always be careful not to upset the balance of rights as it exists under the Canadian Act.
[23] Broadly speaking, the purposes of Canadian copyright law are to benefit authors by granting them a monopoly for a limited time, and to simultaneously encourage the disclosure of works for the benefit of society at large (see Apple Computer Inc. v. Mackintosh Computers Ltd., [1987] 1 F.C. 173 at 200 (abridged version) (F.C.T.D.), var'd [1988] 1 F.C. 673 (F.C.A.), aff'd [1990] 2 S.C.R. 209 (S.C.C.) ("Apple Computer"); see also Galerie d'Art du Petit Champlain Inc. v. Théberge, 2002 S.C.C. 34, at para. 30). Copyright law should recognize the value of disseminating works, in terms of advancing science and learning, enhancing commercial utility, stimulating entertainment and the arts and promoting other socially desirable ends. In order to realize these benefits, however, creators must be protected from the unauthorized exploitation of their works to guarantee sufficient incentives to produce new and original works. The person who sows must be allowed to reap what is sown, but the harvest must ensure that society is not denied some benefit from the crops. Perhaps Lord Mansfield best characterized the tension over two centuries ago when, in the case of Sayre v. Moore (1785), 102 E.R. 139, he stated:
... we must take care to guard against two extremes equally prejudicial; the one, that men of ability, who have employed their time for the service of our community, may not be deprived of their just merits, and the reward of their ingenuity and labour; the other, that the world may not be deprived of improvements, nor the progress of the arts be retarded.
The challenge facing this Court, and copyright law generally, is to find a fair and appropriate equilibrium that achieves both goals.
A. Does Copyright Subsist in the Publishers' Works?
1. The Standard of Originality
[24] Section 5 of the Act sets out the most important precondition for subsistence of copyright as follows:
5. (1) Subject to this Act, copyright shall subsist in Canada, for the term hereinafter mentioned, in every original literary, dramatic, musical and artistic work [emphasis added]
5. (1) Sous réserve des autres dispositions de la présente loi, le droit d'auteur existe au Canada, pendant la durée mentionnée ci-après, sur toute oeuvre littéraire, dramatique, musicale ou artistique originale [je souligne].
[25] The Trial Judge decided that the reported judicial decisions, headnotes, the case summary and the topical index were not "original". He stated (at para. 139, emphasis added, footnotes omitted):
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 now to 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 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. To revert, once again with some trepidation, to the words of Bender v. West which I am satisfied are equally apt under Canadian law to the facts of this matter ... ‘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'.
[26] The first issue now before this Court is whether "imagination or creative spark" is indeed "essential to a finding of originality", and whether the Publishers' materials should indeed be "measured by a standard of intellect and creativity in determining whether they give rise to copyright".
[27] In my view, the Trial Judge misinterpreted this Court's decision in Tele-Direct (Publications) Inc. v. American Business Information Inc., [1998] 2 F.C. 22 ("Tele-Direct"), and other jurisprudence as shifting the standard of originality away from the traditional Anglo-Canadian approach. Neither Article 2 of the Berne Convention for the Protection of Literary and Artistic Works, Paris Revision, 24 July 1971, 161 U.N.T.S. 18338 (the "Berne Convention"), nor Article 1705 of the North American Free Trade Agreement, 17 December 1992, Can T.S. 1994 No. 2 ("NAFTA"), require a more onerous standard for copyright protection than already contained in the Act. In addition, there are significant differences between Anglo-Canadian copyright law and the American standard of originality that was applied in Bender v. West, (1998), 158 F.3d 674 (2nd Cir.). Whether or not the Publishers' works are "original" depends upon the meaning of that term in its statutory context, as explained by existing Anglo-Canadian jurisprudential principles.
[28] As Chief Justice McLachlin (as she now is) stated in Bishop v. Stevens, [1990] 2 S.C.R. 467 at 477, the task is "first and foremost ... a matter of statutory interpretation". The Act contains no express requirement of creative spark or imagination; the only prerequisite to protection (relevant to this discussion) is that a work be original. In fact, the Act, which has been the sole source of copyright protection in Canada since its inception in 1921 (see Fox, supra at 34-56), contains no mention whatsoever of any requirement other than, or in addition to originality. The Supreme Court of Canada has refused to imply exemptions in addition to those Parliament expressly chose to include in the Act (see Bishop v. Stevens, supra at 480-1). Similarly, this Court should not erect barriers to copyright protection that Parliament itself has declined to construct. Therefore, this Court will not insert an additional requirement of creative spark or imagination into the Act, and instead will focus on the Act's only relevant prerequisite in this case, which is that the work be "original".
[29] Admittedly, it is difficult if not impossible to assess originality without some interpretative framework. Consequently, the proper interpretation of the word "original" has been the subject of much discussion within the case law.
[30] The British case of University of London Press, Ltd. v. University Tutorial Press, Ltd., [1916] 2 Ch. 601 ("University of London Press"), is perhaps one of the oldest and most frequently cited cases regarding originality in Anglo-Canadian copyright law. With respect to copyright in a professor's examination papers, that case established (at 608-9) that "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." Here, the word "original" was interpreted to mean independently created and not copied.
[31] British courts built on this foundation and embraced assorted incarnations of the phrases "skill, judgment or labour", "knowledge, labour, judgment or skill" and "skill, labour and capital" to aid in the application of the concept of originality. These phrases guided the determination of the fundamental question, which is whether the work is something new or simply a copy of another work. As Lord Oliver of Aylmerton explained in Interlego A.G. v. Tyco Industries Inc., [1989] 1 A.C. 217 (P.C.) ("Interlego"), great skill, judgment and labour is required to produce a good copy of a painting, but nobody could reasonably say that the second painting is original. He said (at 262-3, emphasis added): "[s]kill, judgment or labour merely in the process of copying cannot confer originality".
[32] The phrases mentioned above are often invoked in the context of compilations, which are a distinct type of work. No doubt this is because a compilation by definition might include some material that has been created by someone else. The underlying question in such a case is whether the compilation is original or merely a rearranged copy of existing works (see for example Ladbroke (Football) Ltd. v. William Hill (Football), Ltd., [1964] 1 All E.R. 465 (H.L.) ("Ladbroke"); Cramp & Sons, Ltd. v. Frank Smythson, Ltd., [1944] 2 All E.R. 92; and MacMillan & Co. Ltd. v. Cooper (1923), 51 Ind. App. L.R. 109 (P.C.)).
[33] Canadian courts have generally parallelled the British approach. The traditional Canadian standard has been summarized as follows:
The requirement of originality means that the product must originate from the author in the sense that it is the result of a substantial degree of skill, industry or experience employed by the author. ... The effective meaning of the requirement of originality is that the work must not be copied from another ... .
(seeFox, supra at 118, emphasis added, citing Laglois v. Vincent (1874), 2 Can. Com. R. 164 (Que. S.C.); Canadian Admiral Corp. Ltd. v. Rediffusion Inc. (1954), 20 C.P.R. 75 (Ex. Ct.) ("Canadian Admiral"); Kilvington Brothers Ltd. v. Goldberg (1957), 16 Fox Pat. C. 164 (Ont. H.C.); Horn Abbot Ltd. v. W.B. Coulter Sales Ltd. (1984), 1 C.I.P.R. 97 (F.C.T.D.); Lifestyle Homes Ltd. v. Randall Homes Ltd. (1991), 34 C.P.R. (3d) 505 (Man. C.A.)).
[34] Chief Justice McLachlin considered the originality requirement when she was a Trial Judge in British Columbia, and decided that copyright subsisted in the arrangement of an advertising brochure for adjustable beds. In Slumber-Magic Adjustable Bed Co. Ltd. v. Sleep-King Adjustable Bed Co. Ltd. (1984), 3 C.P.R. (3d) 81 at 84 (B.C.S.C.) ("Slumber-Magic"), she adopted the British jurisprudence regarding originality in compilations, commenting:
So long as work, taste and discretion have entered into the composition, that originality is established. In the case of a compilation, the originality requisite to copyright is a matter of degree depending on the amount of skill, judgment or labour that has been involved in making the compilation. ... [T]he court should canvas the degree of industry, skill or judgment which has gone into the over-all arrangement.
Notably, the now Chief Justice of Canada realized that the concept of originality was inherently broad and used a variety of terms to describe it, including work, taste, discretion, skill, judgment, industry and labour. She found these ideas helpful to assess originality, but did not suggest that one phrase or another was the exclusive test.
[35] The now Chief Justice of this Court, Richard J. (as he then was), stated in U & R Tax Services Ltd. v. H & R Block Canada Ltd. (1995), 62 C.P.R. (3d) 257 (F.C.T.D.) at 264 (footnote omitted):
Industriousness (‘sweat of the brow') as opposed to creativity is enough to give a work sufficient originality to make it copyrightable. The meaning of the word ‘original' was succinctly stated by Cameron J. in Canadian Admiral Corp. v. Rediffussion Inc.: ‘For a work to be ‘original' it must originate from the author; it must be the product of his labour and skill and must be the expression of his thought.'
Importantly, the sweat of the brow exerted by U & R Tax Services to create its tax form was directed at selecting the content from among earlier government forms, draft releases and other information and arranging the layout of the form, not at merely copying existing materials. As Lord Oliver noted, one who sweats to produce what is, in essence, a copy cannot be rewarded with copyright protection. Richard J. also did not suggest that "sweat of the brow" would make a work original if poured into merely copying another work. Rather, the phrase "sweat of the brow" referred to the effort required to distinguish an original work from a mere copy. Richard J. differentiated between "sweat of the brow" and "creativity" since, as will be discussed below, the latter term might connote novelty, a quality with which copyright law is not concerned.
[36] Thus, the classic Anglo-Canadian precondition to copyright is that a work must be independently produced and not copied from another person. Where a work, such as a compilation, is produced by selecting and arranging existing material originality can be established if the new work is more than simply a rearranged copy of existing materials. Producing a work that is not, in essence, a copy of existing material will require effort that is most often referred to as skill, judgment or labour. The Trial Judge in this case interpreted Tele-Direct as altering the classic Anglo-Canadian standard of originality and adding new requirements of "imagination" and "creative spark". In this, he was mistaken.
[37] The first point to note about Tele-Direct is that involved sub-compilations of routine data, whereas this case concerns materials that are considerably more complex. Tele-Direct sought copyright protection for subscriber information copied from Bell Canada, and additional data, such as fax numbers, trade-marks and number of years in operation, which it had compiled into a Yellow Pages directory. It was agreed that copyright subsisted in the directory as a whole, but the issue was whether copyright subsisted in the "in-column listings", which were referred to as "sub-compilations" of data. At trial, Madam Justice McGillis found that Tele-Direct exercised only a negligible amount of skill, judgment and labour in the compiling the sub-compilation and thus failed to establish the degree of originality required to warrant copyright protection. This Court upheld that conclusion.
[38] In Tele-Direct this Court considered whether NAFTA, supra, required some change in our understanding of copyright protection for compilations of data. To deal with that possibility, this Court set forth an extensive discussion of that agreement and its impact on compilations (at paras 14-15, footnotes omitted):
The definition of ‘compilation' must be interpreted in relation to the context in which it was introduced. Simply put, it was introduced as a result of the signature of [NAFTA] and with the specific purpose of implementing it. It is therefore but natural when attempting to interpret the new definition to seek guidance in the very words of the relevant provision of NAFTA which the amendment intends to implement. The applicable provision is Article 1705 which reads as follows:
Article 1705: Copyright
1. Each party shall protect the works covered by Article 2 of the Berne Convention, including any other works that embody original expression within the meaning of that Convention. In particular:
(a) all types of computer programs are literary works within the meaning of the Berne Convention and each Party shall protect them as such; and
(b) compilations of data or other material, whether in machine readable or other form, which by reason of the selection or arrangement of their contents constitute intellectual creations, shall be protected as such.
The protection a Party provides under subparagraph (b) shall not extend to the data or material itself, or prejudice any copyright subsisting in that data or material.
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 - as we shall see later - 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. ... I have come to the conclusion that the 1993 amendments did not alter the state of the law of copyright with respect to compilations of data. The amendments simply reinforce in clear terms what the state of the law was or ought to have been: the selection of arrangement of data only results in a protected compilation if the end result qualifies as an original intellectual creation.
[39] A close reading of this passage indicates that the Court's focus was on the addition of the definition of "compilation" to section 2 of the Act, particularly regarding compilations of data. This portion of the Court's reasons makes no mention whatsoever of the proper meaning of the word "original", which is contained in section 5 of the Act, and which this Court must now interpret.
[40] As the commentary surrounding the implementation of the NAFTA amendments demonstrates, the mandate was to ensure among signatories protection for forms of expression, such as compilations of literary works and of data, not to alter the standard upon which those forms are protected (see Canada, House of Commons Debates (31 March 1993); Canada, House of Commons Debates (27 May 1993); Canada, Legislative Committee on Bill C-115, An Act to Implement NAFTA, Minutes, Proceedings and Evidence of the Legislative Committee on Bill C-115, An Act to Implement NAFTA, (5 November 1993) and accompanying submissions; and Fox, supra at 44-46). Therefore, the copyright provisions in NAFTA were not intended to alter the standard of originality in Canadian copyright law. Neither NAFTA nor the Berne Convention, supra impose a higher standard of originality than was already present under Canadian law.
[41] As the Fox textbook, supra, points out, the World Intellectual Property Organization's Guide to the Berne Convention for the Protection of Literary and Artistic Works, 1971 (Geneva, W.I.P.O., 1978), states:
... the very concept of copyright from a philosophical, theoretical and pragmatic point of view differs [sic] from country to country, since each has its own legal framework influenced by social and economic factors. To define it in a manner binding on all member countries would be difficult, if not impossible.
This recognizes expressly that signatories to the Berne Convention may award copyright based upon standards unique to each country.
[42] Even if NAFTA and the Berne Convention were somehow intended to alter the prerequisites for copyright protection in member countries, those instruments would set minimum standards (see Fox, supra at 138). A more onerous standard of originality deprives owners of the copyright protection that the signatories to these agreements intended to guarantee. Their purpose is frustrated, rather than promoted by implying additional requirements of creativity, imagination or creative spark into the Act, as the Trial Judge did.
[43] Furthermore, neither Article 2 of the Berne Convention nor Article 1705 say anything about "creative spark" or "imagination". They merely require that member states recognize and protect compilations as "intellectual creations". To me, the use of the phrase "intellectual creation" does not necessarily mandate a test of originality involving "creative spark" or "imagination". Article 2 of the Berne Convention, and the definition of "every literary ... work" in section 2 of the Act, both use the word "production", spurning the notion that any creative spark is required. In fact, even if "intellectual creation" did imply a requirement of "creative spark", Parliament chose not to include those words in the definition of a "compilation" set out in section 2, or in any other section of the Act. Had Parliament intended to affect any change to the standard for copyright protection, it could have done so.
[44] Importantly, in Tele-Direct the classic Anglo-Canadian test of originality was described (at para. 28, emphasis added) as follows:
[F]or a compilation of data to be original, it must be a work that was independently created by the author and which displays at least a minimal degree of skill, judgment and labour in its overall selection or arrangement.
In my view, this is an admirable summary and an accurate representation of the Canadian standard, which did, in fact, resolve the matter. The Court merely affirmed (at para. 7) the factual finding of McGillis J. (the trial judge in that case) that Tele-Direct "exercised only a minimal degree of skill, judgement or labour in its overall arrangement which is insufficient to support a claim of originality in the compilation so as to warrant copyright protection."
[45] This Court in Tele-Direct also suggested that the phrase "skill, judgment or labour" was intended to be used in the conjunctive, rather than disjunctive sense. The Court observed (at para. 29) that "[i]t 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." Notably, this observation resembles Lord Oliver's sentiments in Interlego, supra, where he concluded that labour merely in the process of copying is insufficient to establish originality. I also do not think that labour alone will usually suffice to demonstrate originality, since an investment of labour alone is often indicative of slavish copying. If one employs labour alone without any degree of skill or judgment the result will typically be, in essence, a mere copy and will be unoriginal for that reason.
[46] In Hager v. ECW Press Ltd. (1998), 85 C.P.R. (3d) 289 (F.C.T.D.) ("Hager"), Madam Justice Reed observed that Tele-Direct was not intended to alter Anglo-Canadian jurisprudence with respect to the interpretation of originality, and I endorse her comments (at 307-8, emphasis added):
[A]s I understand the argument, it is that the Tele-Direct decision has turned Canadian copyright law, at least insofar 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 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.
[47] After Tele-Direct, this Court also decided the case of Édutile Inc. v. Automobile Protection Association (A.P.A.) (2000), 6 C.P.R. (4th) 211 (F.C.A.), rev'g 81 C.P.R. (3d) 338 (F.C.T.D.), leave to appeal to S.C.C. refused [2000] C.S.C.R. No. 302 ("Édutile"). The reasons quoted the passages from Tele-Direct regarding the impact of NAFTA on compilations of data. However, the issue was resolved (at para. 14) using the traditional test of originality, as articulated and relied on in Tele-Direct to the effect that "[s]uch a work was independently created by the author and displayed at least a minimal degree of skill, judgment and labour in its overall selection or arrangement." The fact that Édutile was ultimately decided on the basis of the classic Anglo-Canadian interpretation of originality further demonstrates that Tele-Direct did not introduce an additional precondition to copyright protection under Canadian law.
[48] On the other hand, the American threshold for copyright protection, which the Trial Judge mistakenly adopted, does contain requirements of both originality and creativity. According to the United States Supreme Court in Harper & Row, Publishers, Inc. v. Nation Enterprises, 471 U.S. 539 (1985) at 547-9, a work "must be original to the author". The United States Supreme Court has also interpreted Article I, § 8, cl. 8 of the U.S. Constitution as requiring "independent creation plus a modicum of creativity" (see Feist Publications Inc. v. Rural Telephone Service Co., 499 U.S. 340 (1991) ("Feist"), citing The Trade-Mark Cases, 100 U.S. 82 (1879); Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53 (1884)). In Feist the U.S. Supreme Court stated (at 345) that "original, as the term is used in copyright means only that the work was independently created by the author (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity."
[49] Matthew Bender v. West Publishing Co., supra, expanded on the American standard in the context of legal publications. The following passages were among those cited by the Trial Judge:
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.
...
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.
[50] The dramatic statement that concludes this passage is somewhat facile. It ignores the possibility that truth can always be expressed in a creative, and certainly in an original way. Often, creativity and truth are allies in the task of expressing facts, history, news and the even the law. The creative may illuminate the true, it may explain the true and it may certainly adorn the true, all of which situations may give rise to copyright in original expression.
[51] Interestingly, there is substantial controversy over whether or not the U.S. Supreme Court in Feist correctly affirmed the American requirement of creativity, as it merely accepted the American common-law standard without exploring the consequences of the codification of the originality requirement (see R. VerSteeg, "Sparks in the Tinderbox: Fiest, "Creativity," and the Legislative History of the 1976 Copyright Act" (1995) 56 U. Pitt. L.R. 549). Commentators have alerted us to the potential implications of the U.S. Supreme Court's decision in Feist (see for example J.R. Boyarski, "The Heist of Feist: Protections for Collections of Information and the Possible Federalization of ‘Hot News'" (1999), 21 Cardozo Law Review 871; J.C. Ginsburg, "No ‘Sweat'? Copyright and Other Protection of Works of Information After Feist v. Rural Telephone" (1992), 92 Colum. L. Rev. 338; R.A. Gorman, "the Feist case: Reflections on a Pathbreaking Copyright Decision" (1992), 18 Rutgers Computer & Tech. L.J. 731; J. Litman, "After Feist" (1992) 17 U. Dayton L. Rev. 607; J.P. McDonald, "The Search for Certainty" (1992) 17 U. Dayton L. Rev. 331; N. Siebrasse, "Copyright in Facts and Information: Feist Publications is Not, and Should Not Be, the Law in Canada", (1994) 11 C.I.P.R. 191; and A.C. Yen, "The Legacy of Feist: Consequences of the Weak Connection Between Copyright and the Economics of Public Goods" (1991), 52 Ohio St. L.J. 1343). In addition, I note that there have been efforts in the United States to repeal the effect of the U.S. Supreme Court's decision (see the Collections of Information Antipiracy Act, 106 H.R. 354).
[52] As noted above, the Supreme Court of Canada has warned that "United States Court decisions ... must be scrutinized very carefully because of some fundamental differences in copyright concepts ..." (Compo, supra at 367). The wisdom in that advice is well demonstrated in this case, where the American principle sought to be imported is based upon an unstable foundation that has not yet been tested thoroughly. Although the Trial Judge prefaced his remarks with a disclaimer that he proceeded with some trepidation, he failed to conduct any substantive analysis of the American standard of originality. Therefore, he inadvertently entangled the standard set out in Feist and applied in Bender v. West with the Canadian touchstone of originality. As discussed above, there is no universal requirement of "creative spark" or "imagination" in Anglo-Canadian copyright law.
Summary of the Meaning of "Original"
[53] It is widely accepted that an "original" work must be independently produced and not copied. In attempts to further explain this cornerstone of copyright law, different judges and commentators have described the word "original" with a host of words and phrases mentioned above, including various combinations of the terms "labour", "judgment", "skill", "work", "industry", "effort", "taste" or "discretion" (see for example Ladbroke Football, supra and Slumber-Magic, supra). To me, these are all possible ingredients in the recipe for originality, which may be altered to suit the flavour of the work at issue. Each term may help to determine whether a work is, in fact, original, but it is mistake to treat any of these words as if they were statutory requirements. These are not, in themselves, prerequisites to copyright protection, but rather evidence of the sole prerequisite, originality. To determine whether or not the materials in issue are "original" works, a principled and reasoned approach based upon evidence is required, not reliance on a particular word or phrase that merely seeks to explain the concept of originality.
[54] Moreover, I am not convinced that a substantial difference exists between an interpretation of originality that requires intellectual effort, whether described as skill, judgment and/or labour or creativity, and an interpretation that merely requires independent production. As discussed above, any skill, judgment and/or labour must be directed at an exercise other than mere copying for the result to be an original work (see Interlego, supra at 262-3; Tele-Direct, supra at para. 29). Clearly, therefore, the crucial requirement for a finding of originality is that the work be more than a mere copy. The vast majority of works that are not mere copies will normally require the investment of some intellectual effort, whatever that may be labelled. Works that are entirely devoid of such effort are, almost inevitably, simply copies of existing material.
[55] I acknowledge that it is more difficult to apply the standard of originality to some types of works, such as compilations, than to traditional forms of expression, such as novels, sculptures or plays. The further one gets away from traditional literary works, the less obvious it becomes that a work has not been copied. Compilations of data, for instance, typically do not display an author's uniquely identifiable flare, nor "exhibit, on their face, indicia of the author's personal style or manner of expression" (Hager, supra at 308). This makes it difficult to establish whether compilations are original or are merely copies. In addition, some compilations may be comprised of elements that are copied from other works or parts of works in which copyright may or may not otherwise subsist. Because the selection and arrangement of the underlying elements, not the elements themselves, must be original, a compiler must demonstrate something more than merely copying those elements into a new work before the Act will award copyright protection. However, Anglo-Canadian copyright law does not require "creativity" to establish that such a work is not a mere copy.
[56] Even where "creativity" has been employed as a label for the intangible effort required to distinguish an original work from a mere copy, courts have emphasized that the standard is extremely low. British, Canadian and American jurisprudence has firmly established that copyright law is unlike patent law in that novelty or non-obviousness are not required, and that courts must not subjectively judge the quality or merit of an author's work (see Fox, supra at 112-14). In Apple Computer, supra (F.C.A.), Hugessen J.A. stated that the sole distinguishing characteristic of literary work is that it be print or writing. In Ladbroke, supra, the court noted that aesthetic quality or virtue is not required for copyright protection. In University of London Press, supra, it was said that copyright could subsist "... irrespective of the question whether the quality or style is high"(supra, at 608). The House of Lords held in Walter v. Lane, [1900] A.C. 539 at 549 that copyright could subsist in a book whether it was "wise or foolish, accurate or inaccurate, of literary merit or of no merit whatever", and (at 558) that a work "devoid of the faintest spark of literary or other merit" may have a copyright, "worthless and insignificant as it would be". American law also warns against judges constituting themselves judges of worth (see U.S. House Report No. 1476 (1976), 94th Cong., 2d Sess. 51; and Bleistein v. Donaldson Lithographing Co. (1903), 188 U.S. 239 (per Justice Holmes at 251)).
[57] To ignore this basic axiom is to intrude on the domain of critics and become appraisers of merit instead of arbiters of originality. It is not necessary for a copyright work to evince qualities of novelty, ingenuity, innovation, genius, merit, virtue, beauty, brilliance, imagination, creative spark and other such attributes, for copyright law is not necessarily concerned with them. Of course, most, if not all "creative" and "imaginative" works would be original, but not all original works must be "creative" or "imaginative"; those attributes, though praiseworthy, are not mandatory characteristics of every original work.
[58] Moreover, the lack of objectivity implicit in a requirement of "creativity" makes a coherent application of such a standard impossible (see D. Vaver, Copyright Law, (Toronto: Irwin Law, 2000) at 61-3, VerSteeg, supra at 562-565; Yen, supra at 1345-1346; and E.R. York, "Warren Publishing Inc. v. Microdos Data Corp.: Continuing the Stable Uncertainty in Factual Compilations" (1999) 74 Notre Dame Law Review 565). Inevitably, judges will be forced to create their own definitions of creativity, resulting in substantial uncertainty and further jeopardizing the public benefit that accrues from the production of new and original works. The fact that an objective and coherent definition of "creative" is elusive at best and that "creativity" can sometimes connote qualities that are not required of an "original" work makes it preferable to avoid such unpredictable labels when assessing originality.
[59] Admittedly, the public interest in the dissemination of works may be a policy reason to impose a high standard of "creativity" as a prerequisite to copyright protection. There is also the concern that overprotection of certain works will thwart social and scientific progress by precluding persons from building upon earlier works. However, I would suggest that copyright monopolies are better controlled through the avenues that Parliament has established than through the imposition of an arbitrary and subjective standard of "creative spark" or "imagination". As will be discussed below, a fair interpretation of user rights can counteract the apparent imbalance potentially generated by a low threshold (see Vaver, Copyright Law, supra at 169-70). For example, the fair dealing provisions of the Act provide a mechanisms whereby user rights are better considered.
2. The Publisher's Works
[60] Having dismissed the notion that imagination or creative spark is essential to a finding of originality, I must now determine whether the Publishers' materials are, in fact, original works.
[61] As a preliminary matter, the Law Society submits that the reported judicial decisions of Meyer v. Bright (1992), R. v. CIP Inc. (1992) and Hewes v. Etobicoke (1993) are merely parts of the volumes or series of reported judicial decisions in which they appear. Likewise, the Law Society asserts that the headnotes that accompany the reported judicial decisions are not works, but merely parts of other works and that the monograph is merely part of a book.
[62] As a starting point, I note that the Publishers have submitted certificates of registration for some of their materials, including separate certificates for headnotes and edited judicial reasons. Subsection 53(2) of the Act states:
(2) A certificate of registration of copyright is evidence that the copyright subsists and that the person registered is the owner of the copyright.
(2) Le certificat d'enregistrement du droit d'auteur constitue la preuve de l'existence du droit d'auteur et du fait que la personne figurant à l'enregistrement en est le titulaire.
[63] Generally, the weight to be afforded to these certificates should not be minimized by the fact that the Copyright Office assumes no responsibility for the truth of the facts contained in the application and conducts no examination (see Circle Film Enterprises Inc. v. Canadian Broadcasting Corp. (1959), 31 C.P.R. 57 at 61 (S.C.C.)). However, the Trial Judge pointed out that nearly all of the registrations were obtained within the few months preceding the trial of this matter. To me, the fact that these certificates were obtained seemingly only in contemplation of litigation diminishes their persuasiveness. Therefore, although these certificates may support a finding that copyright subsists in the Publishers' works as described on the certificates, I do not find them particularly compelling.
[64] I recognize that subsection 3(1) of the Act contemplates a "substantial part" of a work, and therefore, some materials may be parts of works as opposed to works in themselves, and that this has the potential to cause problems when one reproduces materials that might be both works in themselves as well as parts of larger works. Every work can be fragmented into its constituent parts, whether those be chapters, paragraphs or words in a novel, movements, bars or notes in a symphony or acts, scenes or lines in a play. At some level of deconstruction, however, the material ceases to become a work and is, instead, a part of another work. Without this distinction, the phrase "a substantial part thereof" would be meaningless, since a plaintiff could always assert that any reproduction by a defendant was of an entire "work" as characterized by the copyright owner. Neither the Act nor case law provide much guidance to resolve this dilemma.
[65] The Law Society suggests that the primary consideration in defining the "work" in question ought to be the actual published form, since that affects a person's perception of the scope of his or her permitted dealings with the work. However, there are many different types of works that rarely appear independently. For example, a short poem will seldom be published alone. Instead, a short poem will typically appear within another work, such as a magazine or newspaper perhaps, or in a compilation of poems, or it might be broadcast or read aloud to an audience. That poem is no more or no less a "work" depending upon the manner in which it is presented. The Law Society alternatively refers to whether the work is intended to exist as an independently publishable work. However, such a test also relies too heavily on the actual or intended published form of the material in question, and is impracticable where a work might appear alone and/or together with other works.
[66] Rather, one must decide whether the material in question is capable of existing outside of the context in which it is published, communicated, displayed, performed or otherwise disseminated. If a production is distinctive and reasonably able to stand alone, then it may be deemed a work in itself rather than a part of another work. However, if a production is dependent upon surrounding materials such that it is rendered meaningless or its utility largely disappears when taken apart from the context in which it is disseminated, then that component will instead be merely a part of a work.
a. The Reported Judicial Decisions
[67] The reported judicial decisions of Meyer v. Bright (1992), R. v. CIP Inc. (1992) and Hewes v. Etobicoke (1993), including the headnotes that accompany those decisions are certainly capable of standing apart from the volumes or series in which they appear. These reported judicial decisions are clearly not dependent upon other materials contained in a published volume or series of other reported judicial decisions. I suspect that multiple reported judicial decisions are published in volumes or series mainly for practical purposes of convenience, accessibility and marketability. Therefore, much like a poem in an anthology of poems, the fact that these reported judicial decisions are typically published together with other reported judicial decisions does not prejudice their protection under copyright law. In fact, subsection 2.1(2) of the Act is clear that "the mere fact that a work is included in a compilation does not increase, decrease or otherwise affect the protection conferred by this Act in respect of copyright in the work ...".
[68] These reported judicial decisions are literary works, or perhaps more particularly, compilations, since they are works "resulting from the selection or arrangement of literary ... works or parts thereof ... or of data" (section 2 of the Act). The Publishers have compiled literary works or parts thereof, data about those works and their own independently created features. Thus, this Court must consider whether or not the selection or arrangement of the elements of these reported judicial decisions is sufficient to distinguish them from mere copies of the underlying works or parts thereof.
[69] The Law Society submits that the Publishers have not demonstrated originality in the edited texts, the indexing, the running heads, other enhancements and lists of additional data. This approach is incorrect. One cannot isolate each element of the compilation and assess whether each fragment is original, but must look at the work in its entirety (see Ladbroke, supra at 276-77; Slumber-Magic, supra at 84; and Prism Hospital Software v. Hospital Medical Records Institute (1994), 57 C.P.R. (3d) 129 (B.C.S.C.)).
[70] The Trial Judge found (at para. 139) "beyond a doubt, that the preparation of these reported judicial decisions ... involved extensive labour, skill and judgment". In my opinion, the skill, judgment and labour invested in these reported judicial decisions demonstrates that they are far more than mere copies and they are, therefore, original works in which copyright subsists.
[71] Originality stems, in part, from the Publishers' selection of the elements of each reported judicial decision. The Publishers might have chosen to include any of a variety of different categories of data regarding a particular set of reasons. Although some of the Publishers' selections may also be made by other publishers, the selections are not all dictated by necessity, and there is no evidence to indicate that these particular selections have merely been copied from other sources. Furthermore, each Publisher might arrange the elements in any number of ways, depending upon their unique goals, style or preference. These reported judicial decisions are original notwithstanding that the respective Publishers may have selected the same types of elements for other reported judicial decisions and each Publisher arranges the elements of their compilations consistently. The Act does not require that a work be in a novel form.
[72] Most importantly each Publisher has incorporated independently composed features, such as the summary of the facts, reasons and conclusions and the catchlines. To me, these elements put the matter beyond doubt, and by adding independently composed features to the compilation, each Publisher has significantly strengthened its claim of originality in the overall work. Although copyright may subsist in an original compilation of unoriginal material, it is generally far easier to demonstrate originality in a compilation that includes substantial independently composed features. That is, unlike routine compilations of data, these reported judicial decisions do display some indicia of their authors' style or manner of expression.
[73] In particular, the summaries of the facts, reasons and conclusions could have been long or short, technical or simple, dull or dramatic, well-written or confusing; the organization and presentation might have varied greatly. I take judicial notice of the fact that in the past Canadian headnotes have been authored by some of the greatest legal minds in our country such as the late Chief Justice Bora Laskin, Dean Cecil A. Wright and other well-respected academics and practitioners including the witnesses professors Dunlop and Feldthusen. It is doubtful that such distinguished scholars would have devoted their time and effort to mundane copying. The independently composed features are obviously more than simply abridged copies of the reasons for judgment.
[74] The Trial Judge correctly noted that the value of these features resides in their faithfulness to the reasons for judgment. However, it is not relevant that the ideas expressed in these elements of the reported judicial decisions may not be original, as copyright law is only concerned only with the originality of an expression, not ideas. In University of London Press, Mr. Justice Peterson wrote:
The word "original" does not in this connection mean that 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 in print or writing. The originality which is required relates to the expression of the thought.
[75] Naturally, if a Publisher has chosen to include, for example, a list of cases cited in the reasons, then all cases cited will inevitably be listed. Therefore, two independently produced compilations that may appear similar in some ways are both entitled to copyright protection. In this respect, the U.S. 2nd Circuit Court of Appeals' apprehension that to grant copyright protection to common selections would enable a copyright holder to monopolize widely-used expression was misguided (see Bender v. West, supra). The Publishers do not monopolize information in the sense that they can preclude others from independently producing similar materials; they merely acquire the right to preclude others from copying their works.
[76] In sum, I am satisfied that copyright subsists in each of these reported judicial decisions.
b. The Headnotes
[77] The headnotes that the Publishers have submitted to this Court are, in my opinion, capable of standing apart from the judicial reasons they accompany. These headnotes are useful with or without full reasons for judgment. Although reasons for judgment are certainly required for a full and thorough understanding of judicial decisions and provide context for the accompanying headnotes, the value of headnotes is not dependant upon judicial reasons. In essence, the headnote summarizes reasons for judgment so that a reader can decide whether or not it is necessary to actually consult those reasons. Just as it is irrelevant that reported judicial decisions typically appear within volumes or series, it is not important that headnotes typically accompany reported judicial decisions. In fact, summaries, abstracts or abridgements occasionally appear separately from judicial reasons, for example in publications such as the All Canada Weekly Summaries, which is discussed below in the context of the case summary.
[78] For the reasons discussed above, I have no doubt that these headnotes are original and qualify for independent copyright protection under the Act. Indeed, I would repeat that, in my mind, the headnotes are essential to establishing originality in the reported judicial decision as a whole. Although the question does not arise in this particular case, there is some doubt whether, without the headnote, a Publisher could support a claim for copyright protection in judicial reasons alone, which seem to be merely copied and edited.
c. The Case Summary
[79] The case summary of Confederation Life v. Shepherd (1992) appears in volume 37 of the series A.C.W.S. (3d). Like the reported judicial decisions, however, this case summary is equally meaningful with or without the published book in which it appears. Thus, it is a work rather than a part of a work. The only remaining question is whether it is original.
[80] Although the information contained within this summary is necessarily derived from the case that it summarizes, that information could have been expressed in any number of ways, much like the independently composed features of the reported judicial decisions. This condensation of judicial reasons required significant skill and judgment in its composition and discretion in its presentation. Its concise style does not affect its originality. This is clearly more than simply an abridged copy of the reasons for judgment upon which it is based. In my view, this particular work is, therefore, sufficiently original to be protected under section 5 of the Act.
d. The Topical Index
[81] The topical index appears as an appendix to the book, Canada GST Cases, [1997] G.S.T.C., although it could have appeared independently of that book. No doubt the headnotes and reasons contained in the reporter as published are necessary for a full understanding of the cases therein. However, the topical index can fulfill a useful purpose apart from that context. The index is not intended to fully enlighten its reader as to the facts, reasons and conclusions in a particular decision. It is intended merely to enable the reader to decide whether it is necessary to consult the full reported judicial decision, which may be published elsewhere in addition to [1997] G.S.T.C.. If the reader is interested, he/she will consult the full text, but if not, the topical index has fulfilled its purpose independently of the book in which it appears.
[82] I have also concluded that the topical index is original. Its authors exhibited skill and judgment in selecting and arranging its elements. They selected cases that they judged to be binding or persuasive authority concerning the GST. Although the topical index is arranged alphabetically, there are significant cross-references to other headings within the index, and important decisions were required as to where certain information ought to appear. Moreover, the authors have added considerable independently composed material to this compilation by incorporating their own summaries relevant cases. That these summaries are extremely brief, usually only a few words, does not diminish the claim of originality, but rather enhances it. It is no easy task to summarize an entire decision into a single phrase, which might have be done in an infinite number of ways. By selecting which cases to include, independently composing extremely brief summaries of the decisions, and arranging and cross-referencing the topics, the Publishers have demonstrated that the topical index is an original work.
e. The Monograph
[83] The monograph is a work independent from the book in which it appears. Although the book may be considered to be a compilation or a collective work, as those terms are defined in the Act, Professor Kogan's right to copyright protection for his contribution to the larger work is not diminished by that fact. Like subsection 2.1(2), referred to above, the definition of a "collective work" suggests that copyright may subsist in the "works of different authors" that are incorporated therein. I have no doubt that the monograph is a distinctive work. Once it is concluded that the Monograph is a work on its own, no doubt remains that it is original. The Trial Judge's conclusion in this regard was correct.
f. The Annotated Statute and the Textbook
[84] As mentioned earlier in these reasons, the trial judge declared that copyright subsists in the annotated statute and the textbook. The Law Society does not appeal from these findings, since the Trial Judge's conclusions regarding these works are obviously correct.
B. Did the Law Society Infringe Copyright in the Publishers' Works?
[85] Given that copyright subsists in each of the Publishers' works, and no issues arise regarding ownership, this Court must decide whether those copyrights have been infringed by the Law Society. Even if the Publishers' prove that the Law Society did things that only the Publishers have the right to do, the Act's fair dealing exemptions, or other defences, may apply. However, before addressing exemptions and defences, I must determine whether the Law Society is, prima facie, liable for infringement of the Publishers' copyrights. That is, I must decide whether the Law Society would be liable for copyright infringement if the fair dealing exemptions do not apply.
[86] The specific allegations of infringement in this case resulted from requests to the Law Society for copies of the material referred to above. The requests were made by lawyers acting on behalf of the Publishers, and therefore, it could be argued that the Publishers impliedly authorized the making of those copies. Also, it would seem that when the copies were requested, the staff at the Great Library were not informed that the copies were intended to be used as evidence in an infringement action against the Law Society. However, this case from the outset was intended to challenge the normal practice of the Great Library with respect to copying legal material, and the arguments of counsel focus on the issues arising from that practice. It has not been suggested that the Great Library, in responding to the requests for the material in issue in this case, departed from its usual activities. Thus, I will consider the Publishers allegations of infringement in the context of the Law Society's normal practices.
[87] The Act sets out two types of infringement relevant to the Law Society's normal practices. Subsection 27(1) describes "infringement generally" as doing any act that only the copyright owner has the right to do:
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.
27. (1) Constitue une violation du droit d'auteur l'accomplissement, sans le consentement du titulaire de ce droit, d'un acte qu'en vertu de la présente loi seul ce titulaire a la faculté d'accomplir.
[88] Thus, it is an infringement of copyright to do any of the things listed in subsection 3(1), which sets out the relevant exclusive rights of copyright owners as follows:
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, ... and includes the sole right
...
(f) in the case of any literary, dramatic, musical or artistic work, to communicate the work to the public by telecommunication,
...
and to authorize any such acts.
3. (1) Le droit d'auteur sur l'oeuvre comporte le droit exclusif de produire ou reproduire la totalité ou une partie importante de l'oeuvre, sous une forme matérielle quelconque ... ce droit comporte, en outre, le droit exclusif_:
...
f) de communiquer au public, par télécommunication, une oeuvre littéraire, dramatique, musicale ou artistique;
...
Est inclus dans la présente définition le droit exclusif d'autoriser ces actes.
[89] "Secondary infringement" may occur if a person, who may or may not have personally done any of the things listed in subsection 3(1), deals in certain ways with an infringing copy that the person knew or should have known infringed copyright. Subsection 27(2) describes secondary infringement as follows:
(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)
...
a copy of a work ... that the person knows or should have known infringes copyright ...
(2) Constitue une violation du droit d'auteur l'accomplissement de tout acte ci-après ... alors que la personne qui accomplit l'acte sait ou devrait savoir que la production de l'exemplaire constitue une violation de ce droit:
a) la vente ou la location;
b) la mise en circulation de façon à porter préjudice au titulaire du droit d'auteur;
...
d) la possession en vue de l'un ou l'autre des actes visés aux alinéas a) à c)
...
[90] Thus, for example, if a person makes a reproduction of a work in which copyright subsists, that person would be liable for copyright infringement under subsection 27(1) as having done something that only the copyright owner has the exclusive right to do. If that person, or another person, subsequently sells that reproduction, knowing that copyright subsists in the work reproduced and that the reproduction infringes such copyright, he or she will incur liability under subsection 27(2). I will deal with each type of infringement in turn.
1. Infringement Generally
[91] As mentioned above, subsection 27(1) describes infringement generally as doing anything that only the copyright owner has the right to do. The Publishers allege that the Law Society's general practice of photocopying legal materials as part of its custom photocopying service in accordance with the Access to the Law Policy constitutes reproduction of their works or substantial parts thereof. Moreover, the Publishers allege that the transmission by the Law Society of their works by facsimile constitutes communication to the public by telecommunication. The Publishers have submitted specific examples of reproductions and facsimile transmissions by the Law Society as illustrative of its general practice. Although I will refer to the Publishers' works as examples, it seems to me that the Publishers' allegations of infringement are primarily targeted at the Law Society's normal practices.
a. Reproduction of a Work or a Substantial Part Thereof
[92] Subsection 3(1) grants the copyright holder the exclusive right to "reproduce the work or any substantial part thereof". There is no dispute that a photocopy constitutes a reproduction. To photocopy an entire work is to "reproduce the work", as described in subsection 3(1). One who reproduces an entire work will, therefore, be prima facie liable for copyright infringement. The phrase, "any substantial part thereof" is only relevant if less than an entire work has been produced or reproduced.
[93] Given my earlier conclusions regarding the subsistence of copyright in the reported judicial decisions, the headnotes, the case summary, the topical index, the monograph, there are no specific examples before this Court of reproductions of less than entire works. The fact that, for example, the monograph amounts only to 4.5% of the pages in the book in which it appears is not relevant, nor is the fact that the reported judicial decision of Meyer v. Bright is one of 62 decisions reported in 94 D.L.R. (4th).
[94] Notably, the Law Society publishes the following notice in its own publication, the Ontario Reports:
Copies of individual decisions appearing in this report may be made for the purposes of research, private study, review, criticism, or use in court, tribunal and government proceedings.
The fact that the Law Society feels the need to grant permission to copy individual decisions implies that it believes such activity might otherwise constitute infringement. If a copy of an individual decision was a reproduction of anything less than an entire work or a substantial part of a work, anyone could make copies of them for any purpose at all, and no permission would be needed. Therefore, the Law Society's argument that a copy of a single Reported Judicial Decision is not of a substantial part of a work contradicts its own notice in the Ontario Reports.
[95] Although the specific reproductions at issue before this Court were of entire works, I suspect that if the Law Society reproduced only a headnote rather than an entire reported judicial decision, such reproduction would be of a substantial part of a work. An investigation into substantiality is not a purely quantitative exercise (see Édutile, supra at para. 22; Ladbroke, supra at 469, 473; and Vaver, Copyright Law, supra at 145). Clearly, an overwhelming proportion of the skill, judgment and labour invested in compiling reported judicial decisions is directed at creating the headnotes. For that reason, I also suspect that if the Law Society reproduced only the edited reasons for judgment from a reported judicial decision, such reproduction may not be of a substantial part of a work. Although the reasons for judgment are certainly significant and indeed form the basis of the reported judicial decision, the Publishers have invested relatively little effort in distinguishing that portion of their work from a mere copy of the underlying judicial reasons. Qualitatively, the Publishers invest an insubstantial amount of effort into edited reasons for judgment, as compared to headnotes. Thus, a headnote, which may be relatively brief compared to an entire reported judicial decision, may constitute a substantial part, whereas edited judicial reasons, which may be considerably longer than a headnote, may be an insubstantial part.
[96] Similarly, if I am mistaken that the topical index to [1997] G.S.T.C., for example, is an independent work, then I would suggest it is nevertheless a substantial part of the reporter in which it appears. Whether the index is protected as a work itself, or as a substantial part of a larger work, the result is the same. Its author has invested substantial skill, judgment and labour in its composition, and that effor