Court Declares It “Patently Clear”: No Fair Dealing If Technological Circumvention Results in Illegal Access
December 21, 2015
By Jill Jarvis-Tonus and Tamara Céline Winegust
The Ontario Small Claims Court has rendered a decision involving an important recent addition to the Copyright Act, 1985 RSC, c C-42, namely technological protection measures (“TPM”s). The Court held circumvention of TPMs is a matter of strict liability, stating the case law makes it “patently clear” that “fair dealing” claims are unavailable if the underlying material was not legally obtained.
In 1395804 Ontario Limited (Blacklock’s Reporter) v. Canadian Vintners Association, 2015 CanLII 65885, the Defendants, the Canadian Vintners Association (an association representing Canadian wine producers) and its President and CEO, were found liable for copyright infringement and ordered to pay over $13,000 in damages (including $2,000 in punitive damages) for accessing and copying an article from an electronic newsletter published by the Plaintiff, Blacklock’s Reporter, that was protected behind a subscriber paywall. The Defendants obtained the copy by having an outside contact, who did subscribe to the Plaintiff’s publication, cut and paste a copy of the article and send it to the Defendants. The Defendants claimed they required the copy to consider whether the article, which contained statements about them, was truthful. They took the position that while they were not subscribers, the article was lawfully accessed by a subscriber, and that, in any event, the Defendants’ use amounted to fair dealing.
Deputy Judge Gilbert rejected the Defendants’ arguments. In terms of the circumvention of the Plaintiff’s paywall, the judge found the association “embarked on a course of conduct explicitly designed and coupled with the intent of obtaining an article which was not available openly, transparently, and without taking steps otherwise open only to subscribers” and “took steps which they knew or ought to have known were contrary to the process required by the paywall”. This, the judge held, was exactly the kind of behaviour the TPM prohibitions of the Copyright Act were designed to prohibit:
52. Applying the law to the foregoing findings of fact relating to the basic question as to whether the Defendants have breached the Plaintiff’s copyright, section 41. 1 (1) is clear and applicable. You are prohibited from circumventing a technological protection which uses an effective technology to control access to a work. What the Defendants did is just that. They knew there was limited access to the full article. They knew that access was subscription based only and that subscriptions cost money. They knew that there was a technological barrier to that access. They knew that unless they paid they could not get it. They knew and chose another way around it. Having breached that prohibition, they have obtained copyrighted material belonging to the Plaintiff illegally.
The judge also rejected outright the Defendant’s “fair dealing” claim, and held that since the copy of the article was not legally obtained (i.e., the Defendants had to circumvent a paywall to access it), the “fair dealing” provisions were not available:
54. Having reviewed the case law authorities cited to me and considering the scheme and policy objectives of the Act and most importantly section 41.1 (1) thereof, it is patently clear that unless you have obtained the material legally, you cannot avail yourself of the defence of fair dealing for the purpose of education, criticism or review. The facts in CCH and the law cited therein make it perfectly clear that you must first obtain the material legally and with colour of right [our emphasis].
Interestingly, the judge also rejected that the Defendants’ purpose for accessing the article was for research and private study since “they did not carry through with that purpose once they received the article … it cannot be said that the purpose here was genuine given the fact that nothing come of the research (obtaining the full article) once obtained”. His main objection was that after reviewing the article for inaccuracies, the Defendants did not complaint to the Plaintiff for corrections.
The decision is interesting for several reasons. First, it gives the TPM sections of the Copyright Act a broad meaning. The prohibition at s. 41(1) of the Act extends to “circumvention” of a TPM. Section 41 of the Act defines “circumvention” as “to descramble a scrambled work or decrypt an encrypted work or to otherwise avoid, bypass, remove, deactivate or impair the technological protection measure”. The reasoning in Canadian Vintners Association suggests that the definition of “circumvention” (presumably because the word “bypass” is included in the definition) not only captures those that directly attempt to “circumvent” a TPM, but also third parties who “bypass” a TPM by obtaining a copy from one with legal access to the work.
Another noteworthy aspect is the intersection of the TPM provisions with “fair dealing”, which the Supreme Court has consistently stated is a positive “user’s right”. When the TPM provisions were introduced under the 2012 Copyright Modernization Act, many argued that Parliament was effectively eliminating the “safety valve” of fair dealing since mere access to works for even lawful purposes was actionable where the works were subject to a TPM. TPMs are over and above copyright protection, being their own unique and separate prohibitions, and it would appear from this case that these prohibitions cannot be overridden by fair dealing. The judge’s reasons in this case suggest circumvention is a matter of strict liability, such that fair dealing could not apply to any access or use resulting from the circumvention of a TPM, no matter how “fair”.
A final interesting aspect was the judge’s holding regarding the “purposes” of the dealing. He concluded the Defendants’ dealing could not fit the allowable purposes of research or private study since the Defendants did not “carry through” with any action once the article was reviewed (i.e., they did not raise a complaint over inaccuracies). On this point, his reasoning seems overly restrictive, since obtaining and reviewing the article, in itself, should suffice as private study or research. The Supreme Court of Canada has on multiple occasions discussed the meaning of “research” and “private study”, for example, holding in 2012 that “research” is a broad concept that does not require “something” be produced as a result of such an activity for that activity to qualify as an allowable purpose under section 29 of the Act:
Limiting research to creative purposes would also run counter to the ordinary meaning of “research”, which can include many activities that do not demand the establishment of new facts or conclusions. It can be piecemeal, informal, exploratory, or confirmatory. It can in fact be undertaken for no purpose except personal interest. It is true that research can be for the purpose of reaching new conclusions, but this should be seen as only one, not the primary component of the definitional framework (see Society of Composers, Authors and Music Publishers of Canada v. Bell Canada, 2012 SCC 36 at para 22).
Applying this logic, it should be immaterial that the Defendants did nothing further with their findings after studying the article. That they did not complain to the Plaintiff about inaccuracies doesn’t necessarily mean they were being disingenuous in saying they intended to study or research the article. There are no doubt many instances where a reader accesses a work for research or private study, then ultimately dismisses the work as irrelevant upon review and does not use it for any further purpose; yet, the purpose of the access and use remains research.
The TPM provisions of the Copyright Act are controversial, and the decision in Canadian Vintners Association is unlikely to make them less so. The decision does represent, however, one of the first times these TPM provisions have been applied, particularly in concert with fair dealing claims. That said, as a decision of a Small Claims Court, it will hopefully undergo scrutiny by a higher court in the future. As more copyright owners publish their content through exclusively digital channels and look to TPMs to control access to their work, developments in this particular area of copyright law will be of increasing importance.
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