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Case Comment: Copibec v. Université Laval

Published on January 26, 2018

On February 8, in the Société québécoise de gestion collective des droits de reproduction (Copibec) v. Université Laval case[1](hereafter “Copibec v. Université Laval”), Québec’s Court of Appeal authorized the Société québécoise de gestion collective des droits de reproduction (“Copibec”) to undertake a class action lawsuit against Université Laval for violating copyright and moral rights. Copibec claims atotal amount of$4,081,830,subject to re-evaluation.

This case is a rare[2] instance in existing case law. It involves an application for leave to file a class action lawsuit, founded on allegations of copyright violation and, more particularly, on violation of the authors’ moral rights. As outlined below, the case-by-case application of several key copyright violation concepts had been interpreted at trial to be not easily reconcilable with the common nature that at least one of the questions asked must have in the context of a class action lawsuit. This judgment therefore seems to confirm that there is some possibility for copyright holders to use this type of solution, at least at the authorization stage.

The Context

This case falls in line with a series of decisions made by the Supreme Court of Canada in 2012, which we now refer to by the name of the copyright “Pentalogy”. The Pentalogy shed light on the concept of fair use of a work by others. The exception found in sections 29-29.2 of the Copyright Act confirms that these sections must not be interpreted restrictively, and that these exceptions indeed constitute user rights, as opposed to a simple method of technical defense when faced with accusations of copyright violation[3]. In November 2012, Parliament also made important changes to the Copyright Act. These changes relate to this concept of fair use of a work, or of any other object protected under copyright.

Context: Copibec is a nonprofit, private law, legal entity acting as a copyright licensing body in accordance with the Copyright Act. Of particular note in this case is that Copibec itself is not a copyright owner; rather, it acts as a representative of copyright owners and publishers who license certain rights that are Copibec’s mission to manage. Copibec gives third parties, such as universities, for example, usage sub-licenses to these rights on a global basis, particularly for reproduction purposes, all for compensation. Importantly Copibec is not involved in managing the moral rights associated with works because these are non-transferable.

For many years, Université Laval had operated under a global usage license with Copibec, but after the events of 2012 mentioned above, more precisely as of March 10, 2014, it chose not to renew its license with Copibec, instead issuing a policy in favor of its students and its faculty for the purpose of favoring fair use of course material taken from works protected by copyright law,[4] and adopting a rule to facilitate access to protected works that foresee, among other things, the establishment of a copyright bureau.

However, Copibec considered Université Laval’s subsequent use of works to constitute a violation of copyright protection under the Copyright Act, and even qualified their operation a an: “institutional system of copyright violation.”[5]

It is in this context that Copibac requested an authorization to file a class action lawsuit against Université Laval on behalf of copyright holders. This request was at first rejected by the Supreme Court at the trial level for the following reasons, among others: (i) even if the questions raised by Copibec were answered in the affirmative, the parties would not have significantly advanced the litigation; (ii) the equitable nature of the use conducted by Université Laval cannot be subject to collective analysis (criteria in paragraph (1) of section 575 of the Code of Civil Procedure of Québec); and (iii) Copibec does not have the motivation required to undertake this class action lawsuit.

Decision on Appeal

The Court of Appeals ruled unanimously in a judgment written by Judge Guy Gagnon allowing the appeal in part. In summary, the Court concluded that the trial judge had demanded too high of a burden of proof given the guidelines provided by case law.[6]

Judge Gagnon noted that the standard for establishing the existence of a common issue in a class action is not very high, and that the presence of “only one issue, that is the identical, similar or related, is sufficient to give authorization; provided that the issue’s importance is likely to significantly influence the fate of the class action”. In fact, according to the Court, it was incorrect for the trial judge i to consider the exception of fair use that Université Laval promoted in its evaluation of the common issues raised.

With respect to the complaints relating to moral rights, the Court concluded that this class action did not preclude non-proprietary complaints, and that since the main issue regarding copyright violation was accepted by the Court, this was sufficient to accept the related issue of moral rights at the authorization stage.[7]

Regarding Copibec’s legal motivation to act, the Court of Appeal concluded that even if Copibec is not a copyright owner, according to the Copyright Act, its licensing body status and its role as an administrator of a license-granting system ensures that it has enough motivation to represent these group members and their property rights. As far as moral rights are concerned, the status of the authors, publishers, and other class action representatives appointed by Copibec is sufficient since all of them allege having had their moral rights violated. Therefore, it was not necessary to settle this issue, because, according to the Court, was theoretical in this particular case.[8]

For these reasons, the Court of Appeal allowed the appeal on this point and authorized Copibec to pursue its class action lawsuit against l’Université Laval.

Analysis

Authorization: When it comes to class action lawsuits, the decision of Copibec v. Université Laval is fully in line with the Court of Appeal’s current tendency (see notably the decision in Sibiga[9]) with respect to the threshold that needs to be reached in order to authorize a party to undertake a class action lawsuit. In our opinion, what needs to be understood is that the threshold for authorization of a class action lawsuit, according to sections 574 and following of the Code of Civil Procedure of Québec, is very low, and unless the lawsuit is frivolous, it will be authorized to proceed.

Commonality of submitted issues in view of Waldman case[10]: In evaluating the common issues brought forward by Copibec, the Court of Appeal compared similar issues accepted by Justice Perell in the Waldman case and those that Copibec submitted to the Court as part of its proposed class action[11]. In Waldman, the common issues initially proposed by the claimant were as follows:

(a) Have the defendants’ activities infringed the rights of Class Members by dealing in the Works in a manner that only the author or owner had the right to do, including by way of any of:

(i) reproducing Works authored or owned by Class Members?

(i) reproducing Works authored or owned by Class Members?

(iii) making Works authored or owned by Class Members available to the public by way of telecommunication?

(iv) selling or renting copies of the Works authored or owned by Class Members?

(v) translating the Works?

(vi) authorizing its subscribers to infringe Class Members’ copyright?

(vii) holding itself out as the owner or author of the Works?

(viii) infringing the moral rights of the authors of the copyrighted documents?

(b) If so, which rights have been infringed.

(our underlining)

This initial wording was rejected because, among other reasons, it emphasized the concept of counterfeiting and sought to know if Thomson’s acts were carried out to infringe on the property and moral rights of the group’s members[12]. With this in mind, the judge released the following comments:

I agree with Thomson that infringement cannot be a common issue across the class because that would ignore that copyright and moral rights are ultimately individual issues of entitlement and that consent to copying may be an individual issue. In particular, the infringement of moral rights is an individual issue depending upon whether a particular author’s honour or reputation has been prejudiced by the use of particular court documents.[13]

(our underlining)

Finally, the following questions were accepted by Justice Perell:

« Did Thomson through its Litigator service reproduce, publish, telecommunicate to the public, sell, rent, translate, or hold itself out as the author or owner of court documents?

Did Thomson through its Litigator service authorize subscribers to reproduce, publish, telecommunicate to the public, sell, rent, translate, or hold themselves out as the author or owner of court documents »[14]

These were common issues according to the judge, because they sought to establish Thomson Reuters’ management in fact (i.e., the actions taken), and not the issue of determining whether Thomson Reuters’ acts had infringed on the group members’ copyright[15].

In Copibec v. Université Laval, the Court of Appeals affirmed, after analyzing the issues in Waldman, that “[t]his wording [that of the accepted Waldman questions] resembles that proposed by Copibec for its common issues”[16]. However, the questions proposed by Copibec were as follows:

 

(I) Did “Université Laval and members of its personnel, its representatives and its sub-contractors, in their teaching and research activities, infringe on group members’ property rights, according to article 3 of the Copyright Act

(a) by reproducing

(b) and sharing through telecommunication,

(c) including making publicly available through telecommunication

protected literary, dramatic and artistic works without permission from their copyright owners or their representatives?

 

(II) Did Université Laval and members of its personnel, its representatives and its sub-contractors, in their teaching and research activities infringe on the moral rights of group members who are authors, according to article 14.1 of the Copyright Act by,

(a) by reproducing,

(b) by sharing through telecommunication,

(c) including making publicly available through telecommunication

excerpts of protected literary, dramatic, artistic, and musical works without permission from the authors or their representatives?

 

(our underlining)

In light of the foregoing, we conclude that the issues raised by Copibec and accepted by the Court of Appeals are suitable for a class action and are closer, in our opinion, to the initial questions rejected by Justice Perell in Waldman than to the accepted questions in that same case.

Fair Use of a Work: With respect to the fair use exception set out in sections 29-29.2 of the Copyright Act, both decisions reiterated that this concept is not simply a defense, but also a user right.[17] The question of copyright violation by the Université Laval and the concept of fair use are, in our opinion, intrinsically linked. Although we understand the arguments made by the Court of Appeals with respect to Copibec’s burden of proof at the authorization stage, these arguments are, in our opinion,a shortcut. They somewhat do not take into consideration the practical reality of the lawsuit, and the balance that the Copyright Act must create between copyright owners and society.  Concluding that a party has exercised fair use of a work does not discharge responsibility for copyright violation; it means there simply never was a violation. The Court of Appeals, having affirmed[18] that the question of fair use can be analyzed collectively for almost all of the acts for which Université Laval[19] stands accused through proof of its general practices, it will be very interesting to follow the evolution of this lawsuit and to note the results.

Moral Rights: Regarding moral rights attached to works, although these are not transferable according to article 14.2(2) Copyright Act, the Court felt that this did not prevent an author from entrusting a third party to obtain, on their behalf, fair compensation for infringement of these rights.[20] The question is here theoretical, but one may question Copibec’s legal motivation to act for the members of the group relative to their moral rights since these rights cannot be transferred. Copibec finds itself, therefore, walking in the shoes of a representative of moral rights owners in order to provide representation in front of the courts.

Conclusion

In summary, the Court of Appeals’ decision in Copibec v. Université Laval is only a preliminary step in the class action lawsuit to follow, but still invites institutions that rely on fair use of protected works made by others to exercise caution.

by Vincent Laforest-Lapointe and Noah Boudreau
Fasken Martineau DuMoulin LLP


[1] 2017 QCCA 199.

[2] But this is not the only one, refer particularly to Waldman v. Thomson Reuteurs Corporation, 2012 ONSC 1138, Association des journalistes indépendants du Québec (AJIQ-CSN) v. Journal Voir, 2010 QCCS 1574.

[3] Société québécoise de gestion collective des droits de reproduction (Copibec) v. Université Laval, 2016 QCCS 900, par. 38.

[4] Société québécoise de gestion collective des droits de reproduction (Copibec) v. Université Laval, 2017 QCCA 199, par. 22.

[5] Société québécoise de gestion collective des droits de reproduction (Copibec) v. Université Laval, 2016 QCCS 900, par. 5.

[6] Société québécoise de gestion collective des droits de reproduction (Copibec) v. Université Laval, 2017 QCCA 199, par. 42.

[7] Société québécoise de gestion collective des droits de reproduction (Copibec) v. Université Laval, 2017 QCCA 199, paras. 99-100.

[8] Société québécoise de gestion collective des droits de reproduction (Copibec) v. Université Laval, 2017 QCCA 199, par. 102-119.

[9] Sibiga v. Fido Solutions inc., 2016 QCCA 1299.

[10] Waldman v. Thomson Reuters Corporation, 2012 ONSC 1138.

[11] Société québécoise de gestion collective des droits de reproduction (Copibec) v. Université Laval, 2017 QCCA 199, par. 61.

[12] Waldman v. Thomson Reuters Corporation, 2012 ONSC 1138, par. 172.

[13] Waldman v. Thomson Reuters Corporation, 2012 ONSC 1138, par. 173.

[14] Waldman v. Thomson Reuters Corporation, 2012 ONSC 1138, par. 176.

[15] Waldman v. Thomson Reuters Corporation, 2012 ONSC 1138, par. 174.

[16] Société québécoise de gestion collective des droits de reproduction (Copibec) v. Université Laval, 2017 QCCA 199, par. 62

[17] Société québécoise de gestion collective des droits de reproduction (Copibec) v. Université Laval, 2016 QCCS 900, para. 95; Société québécoise de gestion collective des droits de reproduction (Copibec) v. Université Laval, 2017 QCCA 199, paras. 66-74.

[18] Especially following CCH Canadienne Ltée v. Barreau du Haut-Canada, 2004 CSC 13

[19] Société québécoise de gestion collective des droits de reproduction (Copibec) v. Université Laval, 2017 QCCA 199, paras. 89-95.

[20] Société québécoise de gestion collective des droits de reproduction (Copibec) v. Université Laval, 2016 QCCS 900 par. 95; Société québécoise de gestion collective des droits de reproduction (Copibec) v. Université Laval, 2017 QCCA, par 111.