Fair Minded: Federal Court of Canada Continues to Expand Scope of Fair Dealing
May 18, 2021
A recent decision of the Federal Court of Canada considered the scope of fair dealing in respect of the use of a copyrighted work in relation to criticism.
The proceeding involved allegations of unauthorized use by the Conservative Party of Canada and its agents (the “CPC”) of clips from the Canadian Broadcasting Corporation/Société Radio-Canada’s (the “CBC”) programming. Specifically, the CPC published advertisements as part its political campaign for the 2019 Federal Election that criticized the Prime Minister of Canada and his government and challenged the government’s handling of several issues.
The advertisements were published on CPC’s Facebook and YouTube pages, as well as on its website. The CPC also posted, through its Twitter account, 4 video clips from CBC’s broadcast of the 2019 Federal Election leaders’ debate.
All the clips were removed in the weeks leading up to the election. Despite the removal, the CBC commenced an application alleging that the clips were a substantial part of copyrighted works owned by the CBC and that the use of the clips was copyright infringement.
The Court had no trouble finding that the clips were works in which CBC owned copyright. The Court also concluded that the CPC had taken a substantial part of the works. The key question for the Court to decide was whether the taking was “fair dealing” under the Copyright Act.
What is Fair Dealing?
In Canada, the principle of fair dealing is set out in the Copyright Act (Canada). Fair dealing essentially allows the use of material from a copyright-protected work without permission when certain conditions are met. The concept is similar to, but arguably more limited than, the concept of “fair use” under US copyright law.
An assessment of fair dealing requires a two-stage analysis: first, whether the intended use qualifies for one of the permitted purposes set out in the Copyright Act, and second, whether the use itself meets the fairness criteria.
With respect to the first stage, the Copyright Act enumerates specific limited purposes that qualify as fair dealing namely, research, private study, education, parody, satire, criticism, review, and news reporting.
Once a court is satisfied that the purpose of the use of the copyrighted work falls within one of those categories, it then assesses whether the dealing was “fair”. In order to ensure the copying is fair, the court will generally consider the following six factors:
- The purpose of the dealing – Here the court assesses the use to which the copyrighted work was put. In many ways, this overlaps with the first step of considering whether the use was for a permitted purpose.
- The character of the dealing – This factor focuses on the distribution and number of copies produced. A single copy tends to be fairer than multiple copies.
- The amount of the dealing – Here the court must assess the proportion of the excerpt used in relation to the whole of the work. Both the amount of the dealing and importance of the work allegedly infringed should be considered in assessing fairness.
- Alternatives to the dealing – Was a “non-copyrighted equivalent of the work” available?
- The nature of the work – The nature of the copyrighted work, and the extent to which it has already been disseminated, is another factor to consider. For example, was the work confidential or was it publicly disseminated?
- Effect of the dealing on the work – Will copying the work affect the market for the original work or otherwise adversely impact the copyright owner?
The Supreme Court of Canada has characterized fair dealing as a “user’s right” and has cautioned that, in order to maintain the proper balance between the rights of a copyright owner and the user’s interests, fair dealing must not be interpreted restrictively.
The CPC’s Use was Fair Dealing
With respect to permitted purposes, the CPC argued four purposes: criticism and review, satire and education. However, in the Court’s view, only criticism was seriously at issue.
CBC argued a narrow, technical approach to criticism. Specifically, CBC argued that criticism should be narrowly construed to relate only to criticism of the copyrighted work itself, for example quoting or excerpting a work in a review or criticism, such as a book or movie review. Traditionally, this was seen as the proper domain for criticism.
However, there is nothing in the Copyright Act which restricts criticism in such a way. Further, the Court noted that, at minimum, criticism should not be limited to the work itself, but also the ideas, thoughts, and other content expressed by the work.
The Court concluded that criticism was embedded in the works that the CPC used, specifically it was media coverage critical of the Prime Minister’s record.
Having concluded that the use by CPC was for an allowable purpose, the Court then considered whether the dealing itself was fair. After weighing all six factors, the Court concluded that the CPC’s use was, on the facts of the case, fair.
Continued a Trend of Expansion
This case continues a trend of expanding the scope of the permitted purposes for fair dealing set out in the Copyright Act.
For example, in Alberta (Education) v Canadian Copyright Licensing Agency (Access Copyright), 2012 SCC 37, the Supreme Court addressed the use of fair dealing within education, arriving at several conclusions that expanded the breadth of education-related purposes, as well as how such uses should be analyzed within the six-factor test. For example, the Court assessed the scope of the “private study” purpose, arriving at a broad definition that rejected both spatial limitations and the requirement for isolation, concluding that “private” did not mean in isolation and could include group study.
The scope of the research purpose was also given a liberal interpretation in Society of Composers, Authors and Music Publishers of Canada v Bell Canada et al., 2012 SCC 36. There, the Supreme Court of Canada concluded that song previews on services where consumers can purchase music downloads qualified as research for fair dealing purposes. In that case, the Court affirmed that the fair dealing provision must not be interpreted restrictively.
The effect of these Supreme Court decisions, together with this decision, is that the permitted purposes provision will be very easy to meet. However, the six-factor analysis set out above will still need to be considered and addressed in any consideration of whether a particular use of a work is fair dealing.
In a recent decision arising from an appeal of a decision of the Trademarks Opposition Board, the Federal Court commented on when a retailer can establish use of a trademark on goods when the retailer is not the “source” of the goods. Specifically, if a retailer simply affixes its own trademark to goods manufactured by a third party, does that constitute use of the retailer’s trademark in association with those goods.
Interlocutory injunctions in Canadian trademark cases are rare. The decision at first instance to grant a motion for an interlocutory injunction in a dispute related to the “Bombay Frankie” trademark therefore made headlines, at least in trademark circles, for two reasons. First, the fact that the injunction had been granted was in itself noteworthy. Second, many in the intellectual property bar were of the view that the decision misapplied certain fundamental principles of trademark law and therefore introduced uncertainty into the law.
Canada continues to make news (the wrong kind) when it comes to the slow pace of its examination of trademark applications. Despite repeated promises by the Canadian Intellectual Property Office (“CIPO”) to speed things up, the problem is only getting worse. However, there are some promising signs.