Access Copyright v York University – School’s Out! No mandatory tariff; no declaratory relief of fair dealing; and “public access to and dissemination” of works is a primary goal of copyright in Canada.
August 3, 2021
By Scott MacKendrick, François Larose and Tamara Céline Winegust
The much-anticipated decision in York University v Canadian Copyright Licensing Agency (Access Copyright), 2021 SCC 32 has been released. The decision considered two issues: (1) whether the tariff set by the Copyright Board could be enforced against York University—if York is compelled to be a licencee; and (2) whether to grant a declaration that copies made under York’s fair dealing guidelines fall within the “Fair Dealing” provisions of the Copyright Act—and thus, can be made without permission from (or payment to) the rights holder. Justice Abella, on behalf of a unanimous court—and in one of her final decisions as a Supreme Court Justice—has answered “no” to both questions. No—a tariff set by the Copyright Board is not mandatory. No—the Court is not going to declare York University’s “Fair Dealing Guidelines” permit all dealings made under it.
The decision is relatively short. The bulk of the decision considers the enforceability of a tariff against York University, requested by Access Copyright and set by the Copyright Board of Canada. The remaining third is devoted to addressing the issue of the University’s “Fair Dealing Guidelines”, and an analysis of fair dealing for the purposes of “education”.
However brief, the decision powerfully reiterates the Court’s view on the nature of copyright and the appropriate balance between protecting the interests of owners and the public. In the Court’s view, copyright law has public interest goals: full stop. The “public benefits of our system of copyright are much more than a ‘fortunate by-product of private entitlement’”:
[I]ncreasing public access to and dissemination of artistic and intellectual works, which enrich society and often provide users with the tools and inspiration to generate works of their own, is a primary goal of copyright. “Excessive control by holders of copyrights and other forms of intellectual property may unduly limit the ability of the public domain to incorporate and embellish creative innovation in the long-term interests of society as a whole” (Théberge v. Galerie d’Art du Petit Champlain inc.,  2 S.C.R. 336, at para. 32, per Binnie J.).
Moreover, while the Copyright Act establishes a tariff setting regime for collective societies, the existence of those societies themselves is not guaranteed—users remain free to choose how, and if, they obtain authorization to use a work:
A collective society’s market power and effectiveness at achieving its goals is not guaranteed by the Copyright Act … If a collective society does not have a large enough repertoire or other sources emerge to provide better value, users … might prefer to ‘negotiate with the right-holders directly, or through other intermediaries’”
In York University, Justice Abella has penned a decision that, despite her retirement from the bench this summer, has all but assured that her impact on copyright law in Canada will be felt for years to come.
Access Copyright represents writers, artists, and publishers that own a copyright in Canada. Prior to 2011, York University had been paying fees to Access Copyright for the right to copy from works in Access Copyright’s repertoire. Access Copyright sought Copyright Board approval for an interim tariff. As of the beginning of the academic year in 2011, York took the position that the interim tariff was not enforceable, or mandatory, and opted out of the tariff.
York chose to operate without an Access Copyright licence, and instead implemented its own “Fair Dealing Guidelines”. York’s decision to opt out of the tariff prompted Access Copyright to bring an action to enforce the interim tariff, and York then counterclaimed, seeking a declaration that any copies made in compliance with its Guidelines constitute fair dealing.
The case was bifurcated at the Federal Court. Phase 1 included all issues relating to whether the interim tariff was enforceable against York; whether York was responsible for the copying activities of five professors; and York’s counterclaim seeking the declaration relating to its “Fair Dealing Guidelines”. Any consideration of the amount of unauthorized copying and York’s quantum of liability under the tariff, if necessary, would be done in Phase 2.
At the Federal Court, Justice Phelan found (1) the interim tariff was enforceable against York; and (2) neither York’s Fair Dealing Guidelines nor its actual practices constituted fair dealing (2017 FC 669,  2 F.C.R. 43). (see our discussion Federal Court Finds University’s Fair Dealing Guidelines Are Not So Fair. When is Fair Foul, and Foul Fair?).
On appeal, the Federal Court of Appeal (“FCA”) reversed the Federal Court’s decision on the tariff enforcement. On behalf of the Court, Justice Pelletier found the Copyright Board’s approved tariffs were voluntary for users—if there was unauthorized use of a work by a non-licencee, the remedy was an infringement action. However, the FCA also held Access Copyright did not have standing to assert infringement because it was not the owner of the works at issue, and it lacked an exclusive licence from the owner. The FCA then went on to consider York’s appeal on the fair dealing counterclaim. It refused to issue the fair dealing declaration on the basis that York could not establish that all copying within its Guidelines was fair (2020 FCA 77, 174 C.P.R. (4th) 1). (see our discussion Federal Court of Appeal Finds That Tariffs Certified by the Copyright Board Are Not Mandatory, and Fair Dealing Guidelines Are Not a Shield)
The Supreme Court Decision
No Mandatory Tariff
The first issue considered by the Supreme Court was whether section 68.2(1) of the Copyright Act (as it then read) empowered Access Copyright to enforce royalty payments set by the Copyright Board in an approved tariff against a user who chooses not to be bound by a licence on the approved terms (i.e., if Access Copyright can force York to pay fees in accordance with a licence York did not agree to).
For the Court, the issue was one of statutory interpretation (of note, many of the provisions discussed by the Supreme Court relating to the Copyright Board, including section 68.2(1), were subject to amendments that came into force in March 2019, and are now no longer in the Act, or have been amended and incorporated into other sections). The Court considered the text, legislative context, purpose, history of, and jurisprudence surrounding the relevant provisions and the Copyright Board in general. They also considered the particular amendments to the Act in 1988 and 1997 that expanded the role of non-performance rights-based collective societies like Access Copyright.
Access Copyright argued the expanded role showed Parliament intended to protect copyright owners and make approved tariffs binding. The Supreme Court did not agree. While they acknowledged that the protection of creators was a significant reason for expanding the collective administration regime, and facilitated collective societies’ assertion of its market power, the continued existence of collective societies (or any particular collective society) is not statutorily guaranteed: “there is nothing in the Act designed to prop-up collectives that have become less valuable to users and/or rights holder.” Users are free to go elsewhere—including directly to the rights holder or other intermediaries with a larger repertoire or that can provide better value.
The Court referred to Justice Rothstein’s decision in Canadian Broadcasting Corp. v. SODRAC 2003 Inc.,  3 S.C.R. 615 as support for the proposition that the tariff/licensing scheme under the Act is permissive: the Board does not have power to force licensing terms on a user, and a user who does not accept a licence, but continues to use a work, would remain liable for infringement.
Having concluded that both the mandatory enforceability of a tariff against a non-licencee and the existence of collective societies were not guaranteed under the Copyright Act, the Court moved on to consider the purpose the Board’s tariff setting itself—which it held to be part of a legislative scheme “designed to control collective societies’ potentially unfair market power”. In the Court’s view, Access Copyright’s position that there was a “mandatory tariff” regime would “turn tariffs into a plainly anti‑competitive tool, boosting collective societies’ power to the detriment of users … The legal consequence [is] a user would be liable to pay royalties in full as soon as it became responsible for any infringing use of a work within a collective society’s repertoire.”
For the Court, Access Copyright’s grievance seemed not to arise from the voluntary nature of the tariff, but from its lacking a right to sue for infringement in respect of the rights it administers under the terms of its non-exclusive licence with its members. Justice Abella acknowledged it was open to Parliament to amend the Act to make collective infringement actions readily available; however, the existing relevant legislation did not permit Access Copyright to force York University to comply with the voluntary tariff set by the Board to which York chose not to be a party.
No Declaration of Fair Dealing
The Court also addressed York’s counterclaim for a Declaration that “any reproductions made that fall within the guidelines set out in York’s ‘Fair Dealing Guidelines for York Faculty and Staff (11/13/12)’ . . . constitute fair dealing”. Both the Federal Court and FCA denied the Declaration, finding the Guidelines were not fair. The Supreme Court agreed that no Declaration was warranted—but this was because it was inappropriate to entertain the request for one in the first place. The present case did not meet the threshold requirements for when declaratory relief may be granted because there was no “genuine dispute between the proper parties” about the Guidelines: there was no infringement action, Access Copyright had no standing to claim infringement, and the copyright owners who would have such standing were not party to the litigation.
Importantly, Justice Abella was clear to point out that the Supreme Court’s agreement with the lower courts on this issue was not tantamount to an endorsement of their reasoning. Rather, in the Court’s view, the decisions of the Federal Court and FCA had “significant jurisprudential problems” that warranted comment.
The comments made by Justice Abella provide a concise summary of the Supreme Court’s approach to copyright law, and in particular to fair dealing, over the last two decades. At its core, the comments emphasize that the Court’s modern approach to fair dealing as reflecting its “more general ‘move away from an earlier, author-centric view which focused on the exclusive right of authors and copyright owners to control how their works were used in the marketplace’”, towards one that achieves “the proper balance between protection and access in the Act”.
For the Court, the correct approach to fair dealing requires one to “first understand the copyright balance”—one that “ensures that creators’ rights are recognized, but authorial control is not privileged over the public interest”. In the context of fair dealing, and other exceptions to copyright, the Court’s approach is based in “fairness” and recognizes that limits to private rights in copyright are essential to ensure that the copyright system does not defeat its own end.
Justice Abella then considered what a proper approach to the Guidelines under “fair dealing” could look like in the university context. In general, a fair dealing assessment involves two steps. At the first step, the court will assess whether the dealing is for an allowable purpose enumerated in section 29 of the Act. If it is, the second step of the analysis requires a multi-factored consideration of whether, on balance, the dealing was “fair”. The Court very easily found the dealings under the Guidelines were for the allowable purpose of education—it was common ground that York’s teachers made copies for their students. The conceptual heavy-hitting took place at the second step.
In the Court’s view, the lower court improperly approached the fairness analysis by focusing only on the activities of the institution; the perspective of the students who actually use the copied materials should have also been taken into account. In that sense, both lower courts erred in an almost identical fashion to that of the Copyright Board in an earlier decision (Alberta (Education) v. Access Copyright, 2012 SCC 37). While the earlier decision arose prior to “education” being added to the Act as an allowable fair dealing purpose and was argued on the basis of different allowable purposes (namely research and private study), the Court found the principles remained the same: that the Court should look to the purpose of the dealing from the perspective of the “ultimate user”, as well as any intermediaries facilitating that ultimate use.
Here, that “ultimate use” was the education of a university’s students—and any resulting financial benefit to York from avoiding payment to Access Copyright would have been put towards the University’s core objective of education. Moreover, because fair dealing is a user’s right, the Court cautioned that the amount of the dealing should be assessed based on individual uses, not the aggregate result. The Court observed that large-scale organized dealings are not inherently unfair, and while the aggregate result of the copying can be relevant, it needs to be carefully applied in the university context. Otherwise, dealings by larger universities on behalf of their students could lead to findings of unfairness compared to smaller universities, simply because there is more copying:
At the end of the day, the question in a case involving a university’s fair dealing practices is whether those practices actualize the students’ right to receive course material for educational purposes in a fair manner, consistent with the underlying balance between users’ rights and creators’ rights in the Act. Since we are not deciding the merits of the fair dealing appeal brought by York, there is no reason to answer the question in this case.
The York University decision will no doubt have a significant impact on the development of copyright law in Canada. It affirms user rights to choose how to deal with copyright works, and likewise, recognizes that both collective societies and rights holders themselves have a role to play in licensing arrangements with users. With respect to fair dealing, while the decision may not provide a definitive pronouncement on the feasibility of institutional Fair Dealing Guidelines, it nevertheless provides some guidance as to how a court should approach the defensibility of such policies in future copyright infringement cases.
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