natpo supplementary memorandum of fact and law (np response to inte

8/13/2019 NatPo Supplementary Memorandum of Fact and Law (NP Response to Inte

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Court File No. A-394-12 and A-395-12

FEDERAL COURT OF APPEAL

B E T W E E N:

RICHARD WARMAN and NATIONAL POST COMPANY Appellants

- and -

MARK FOURNIER and CONSTANCE FOURNIERRespondents

- and -

THE COMPUTER AND COMMUNICATIONS INDUSTRY ASSOCIATION

Intervener - and -

SAMUELSON-GLUSHKO CANADIAN INTERNET POLICY AND PUBLIC INTEREST CLINIC

Intervener

SUPPLEMENTARY MEMORANDUM OF FACT AND LAW OFTHE APPELLANT, NATIONAL POST COMPANY

(RESPONSE TO THE INTERVENERS, THE COMPUTER AND COMMUNICATIONSINDUSTRY ASSOCIATION (CCIA) AND THE SAMUELSON-GLUSHKO

CANADIAN INTERNET POLICY AND PUBLIC INTEREST CLINIC (CIPPIC))

CASSELS BROCK & BLACKWELL LLP2100 Scotia Plaza40 King Street WestToronto, ON M5H 3C2

Casey M. Chisick LSUC #: 46572RTel: 416.869.5403Fax: [email protected]

Jason Beitchman LSUC #: 56477OTel: 416.860.2988Fax: 647.259.7993 [email protected]

Solicitors for the Appellant,National Post Company


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TO: BRAZEAU SELLER LLPBarristers and Solicitors55 Metcalfe StreetSuite 750Ottawa ON K1P 6L5

James KatzTel: 613.237.4000 ext. 267Fax: 613.237.4001

Solicitors for the Appellant,Richard Warman

AND TO: MARK FOURNIER2000 Unity RoadElginburg ON K0H 1N0

Tel: 613.929.9265Fax: 609.379.8793

Respondent

AND TO: CONSTANCE FOURNIER2000 Unity RoadElginburg ON K0H 1N0

Tel: 613.929.9265Fax: 609.379.8793

Respondent

AND TO: FASKEN MARTINEAU DUMOULIN LLP55 Metcalfe St., Suite 1300Ottawa, ON K1P 6L5

Gerald (Jay) Kerr-Wilson Ariel ThomasTel: 613.236.3882Fax: 613.230.6423

Solicitors for the Intervener,Computer and Communications Industry Association


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AND TO: SAMUELSON-GLUSHKO CANADIANINTERNET POLICY AND PUBLIC INTERESTCLINIC (CIPPIC)University of Ottawa, Faculty of Law57 Louis Pasteur St., Ottawa ON

David Fewer Tamir IsraelTel: 613.562.5800, ext. 2558Fax: 613.562.5417

Solicitors for the Intervener,CIPPIC


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Court File No. A-394-12 and A-395-12


B E T W E E N:


- and -


- and -

THE COMPUTER AND COMMUNICATIONS INDUSTRY ASSOCIATION

Intervener - and -

SAMUELSON-GLUSHKO CANADIAN INTERNET POLICY AND PUBLIC INTEREST CLINIC

Intervener

TABLE OF CONTENTS

Page No.

THE NATIONAL POST APPELLANTS RESPONSE TO THE INTERVENERS.................. 1

1. T HIRD P ARTY LIABILITY ISSUES ARE IRRELEVANT ............................................................. 1

2. S UBSTANTIAL REPRODUCTION ....................................................................................... 2

2.1 Little Disagreement on the Test for Substantial Reproduction ............................... 2

2.2 Protection for Titles is Expressly Contemplated by the Copyright Act....................6

2.3 Incorrect Application of the Adverse Effect Factor................................................ 9


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3. P RECONDITION TO F AIR DEALING : THE S OURCE OF THE WORK W AS , Q UITE S IMPLY ,NOT MENTIONED BY THE RESPONDENTS ........................................................................ 9

4. T HE P URPOSE OF REPRODUCING THE K AY WORK WAS NOT FOR NEWS REPORTING ......... 13

4.1 CCIA Misstates the Evidence in the Record ........................................................ 13

4.2 CCIA Misstates the Issue in this Case ................................................................. 13

4.3 It is Not for the CCIA to Argue the Purpose of the Dealing was Criticism.............16

5. T HE CCIA M ISCHARACTERIZES THE F AIRNESS F ACTORS ............................................... 16

6. INFRINGEMENT E ACH D AY THE WORK IS P OSTED .......................................................... 20

7. O RDER S OUGHT ........................................................................................................ 20


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THE NATIONAL POST APPELLANTS RESPONSE TO THE INTERVENERS

1. Third Party Liability Issues are Irrelevant

1. CIPPIC argues that the National Post seeks to impose liability on the respondents

for the independent acts of third party users and that, absent specific knowledge of the

infringing act or reproduction, an online platform cannot be held to have either committed

or authorized that act.

2. However, in making this argument, the intervener appears to have overlooked the

facts of this case. The excerpt of the Kay Work was posted, and therefore reproduced, by

the respondents directly, not by a third party. 1 The excerpt appears in a quotation block in

the posting on the Free Dominion website, along with an editors note. The National Post

understands that Mr. and Ms. Fournier are the moderators and editors of the Free

Dominion website and were the editors who made the note. Therefore, as the

respondents themselves posted the excerpt of the Kay Work, the issue is one of direct

liability for infringement, and not of third party liability.

3. With respect to the full-text reproduction, the respondents did have specific

knowledge of the full-text reproduction effective the day the Kay Work was first posted,

within hours of its having been posted on their website. 2 Despite this specific knowledge

1 Reasons for Judgment and Judgment of The Honourable Mr. Justice Rennie, dated June 21, 2012 (theJudgment ) at para. 7, Appeal Book, Vol. 1, Tab 3; see also the transcript of the Hearing before Rennie J., Appeal Book, Vol. 4, Tab 14, pp. 1478-1479 (By Ms. Fournier: you can see the exact quote that was inthe statement of claim, and that is the exact quote that was put in place of the full article. This was o u r attempt to immediately limit the amount of dealing in order to deal fairly with the work. [Emphasis added])2 Warman Affidavit, Exhibit E, Appeal Book, Vol. 1, Tab 7E, p. 119, and see Appendix A to the NationalPost Memorandum of Fact and Law dated March 8, 2013. In a post on 02/18/08 at 8:27 pm, the respondentMark Fournier posted the comment Its gone! This comment presumably refers to the fact that the NationalPost removed the Kay Work from its website.


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of an infringing act, the respondents did nothing to remedy the unlawful conduct, thereby,

at a minimum, authorizing the infringement.

4. In light of these facts, the bulk of CIPPICs argument in relation to third party

liability is irrelevant and it need not be addressed further.

2. Substantial Reproduction

2.1 Little Disagreement on the Test for Substantial Reproduction

5. At paragraphs 17 to 30 of its factum, CIPPIC seeks to establish the uncontroversial

principle that the correct approach to determining whether a work has been infringed is

first to determine whether the plaintiffs' work as a whole is original and protected by

copyright, and then to inquire whether the part taken by the defendant is substantial. 3

The National Post agrees with this proposition, which is amply supported by Canadian

authority.

6. However, at the same time, CIPPIC has argued that, if substantial reproduction

were to include excerpts that were not independently original, it would expand copyright

control to excessive lengths. 4 This is contrary to the principle set out above and suggests

that the reproduced excerpts themselves have to be independently original in order for

the reproduction to be substantial.

7. There can be no question that the Kay Work is an original work. The question, as

discussed in paragraphs 48 to 50 and 57 to 65 of the National Posts factum, is whether

3 France Animation s.a. c. Robinson , 2011 QCCA 1361 [France Animation] at para. 45, citing Tele Direct (Publications) Inc. v. American Business Information, Inc. [1998] 2 F.C. 22 (FCA) [Tele-Direct] andLadbroke (Football) Ltd. v. William Hill (Football) Ltd. , [1964] 1 All ER 465 [Ladbroke].4 CIPPIC Factum at para. 19.


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the reproduced excerpts relay the essence, the principal features, or the distinct traits

of the original work, and whether they have a sufficiently objective similarity to that work.

8. In that regard, the issue in this appeal is whether, having failed to undertake that

analysis, the Application Judge committed a reviewable error. The National Post submits

again that, on a correct analysis, there can be no doubt that the reproduced excerpts

constitute a substantial part of the Kay Work.

9. Ultimately, despite its assertion that the National Post overstates or seeks to

expand the test for substantial reproduction, CIPPIC appears largely to agree with the

National Posts approach to assessing whether a substantial part of a work has been

reproduced.

10. CIPPIC agrees with the National Post that whether a reproduction is quantitatively

substantial involves an assessment of the quality of what was taken 5 and that a

proportionately small amount of copying might be deemed substantial if it includes the

essence of the work. 6

11. CIPPIC also agrees that, qualitatively, in determining whether a reproduction

constitutes a substantial part, the court is to consider whether the essence of a work is

appropriated. 7

12. However, CIPPIC mischaracterizes the National Posts argument in a number of

important respects. For example, contrary to paragraph 16 of the CIPPIC factum, the

5 National Post Factum, dated March 8, 2013, paras. 50, 53; CIPPIC Factum paras. 14, 15.6 National Post Factum, para. 54, 56; CIPPIC Factum, para. 14.7 National Post Factum, para. 48, 57, 58; CIPPIC Factum, paras. 14, 17, 21.


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National Post does not argue that reproducing any elements of a work constitutes an

impermissible amount of copying. Rather, the National Post respectfully submits that it

was an error by the Application Judge to enter into a simple calculation of percentages or

proportions to determine whether there was a quantitatively substantial reproduction.

13. Further, despite arguing that the National Post has overstated the proper

approach to be taken and introduced new criteria into the substantial reproduction test,

CIPPIC does not (nor could it) distinguish any of the authorities the National Post has

offered to this Court.

14. The National Post has clearly set out its position on the test for substantial

reproduction in paragraphs 48 to 50 of its factum, relying on principles derived from

well-established Canadian case law to demonstrate that, when determining whether a

reproduction constitutes a substantial part of a work, the Court is to consider the distinct

traits of the original work, whether there is sufficient objective similarity between the

reproduction and the original work, and whether the essence or principal features of a

work are appropriated. 8

15. It is misleading for CIPPIC to suggest that the National Post is attempting either to

reduce the test for substantial reproduction to an assessment of originality, or to argue

that any appropriation of skill and judgment amounts to substantial reproduction.

Rather, the National Post has argued that, even if a relatively small amount of a work is

reproduced, the reproduction may amount to infringement if, qualitatively, it constitutes an

appropriation of the skill and time and talent of the creator that reproduces the distinct

8 National Post Factum at para. 48.


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traits of the original, such that the essence and the principal features of the work are

reproduced. 9 That is consistent with the standard articulated in the relevant case law and

is precisely what occurred in this case.

16. In that regard, the National Post relies on the following authorities, among others:

(a) The plaintiffs copyright may have been infringed despite the fact that only avery small part of the work has been reproduced, if that reproductionconstituted an appropriation by the author of the skill and time and talent of the plaintiff ( Breen v. Hancock House );10 and

(b) an infringing copy is assessed first by its similarities ... even if there are

numerous differences in the rest of the copy. Overall the similarities make itpossible to determine whether a substantial part of a work has beenborrowed ( France Animation v. Robinson ).11

17. Further propositions advanced by CIPPIC are either uncontroversial or irrelevant.

For example, Professor Vavers proposition that two or three seconds from a

three-minute recording is a mere particle and so should be outside the copyright

owners control 12 adds no value to this appeal, in which far more than a mere particle is

at issue.

18. Similarly, the proposition that generic words from a catering menu or a single

sentence from a book are not substantial parts of those works is irrelevant for the

purposes of this appeal, in which multiple paragraphs of an original work by an eminent

9 National Post factum, paras. 55 to 57.10 Breen v Hancock House Publishers Ltd. (1985), 6 CIPR 129 [Breen v Hancock]; see the CIPPIC Factumat para. 18, challenging paragraphs 56 and 61 of the National Post factum. Those paragraphs of theNational Post factum cite to the authorities of Breen v. Hancock and France Animation .11 France Animation at para. 61.12 CIPPIC Factum at para. 19.


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journalist are at issue. 13 Discussions of reproduction in relation to compilations are

similarly irrelevant, in which the work at issue is a discrete newspaper article. 14

19. Finally, there is no merit to CIPPICs contention that the assessment of factors

including identifiability, similarity, and distinctive traits are not relevant for the

purpose of establishing whether a reproduction is substantial. All of these concepts,

which are derived from established Canadian copyright jurisprudence, are consistent

with, and provide meaning to, the notion of reproducing the essence of a work. 15 CIPPIC

further errs by suggesting that the essence of a critical article must include some of that

criticism. 16 There is no such standard at law.

20. CIPPIC also distorts the National Posts argument by suggesting that the appellant

seeks to confer copyright protection to high-level ideas and purposes. 17 Rather, what

the National Post argues in paragraph 58 of its factum is that the excerpts posted on the

respondents website reproduced the essence and principal features of the Kay Work.

2.2 Protection for Titles is Expressly Contemplated by the Copyr igh t Ac t

21. At paragraphs 9 through 11 of its factum, CIPPIC attempts to minimize the

importance of reproducing the headline of the Kay Work along with the excerpted portions

from the body of the article.

13 CIPPIC Factum at para. 29.14 CIPPIC Factum at paras. 20, 22.15 CIPPIC Factum at para. 27, attempting to distinguish the authorities of Atomic Energy of Canada Limited v. AERVA NP Canada Ltd , 2009 FC 980 [Atomic Energy], Prism Hospital Software Inc. v. Hospital Medical Records Institute (1994), 97 BCLR (2d) 201 [Prism Hospital], and U&R Tax Services Ltd. v. H&R Block Canada Inc. , [1995] FCJ No. 962 [U&R Tax Services].16 CIPPIC Factum at para. 30.17 CIPPIC Factum at para. 28.


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22. However, as CIPPIC admits, the Copyright Act is clear that copyright protection

extends to the title of that work where such title is original and distinctive. The National

Post notes that CIPPIC has taken no position on whether the headline of the Kay Work is

original and distinctive. Instead, it has limited its argument to generalized submissions

that copyright in titles are afforded limited protection at best, relying on the case of

Francis, Day & Hunter ,18 a 1939 decision of the Privy Council, on appeal from the Ontario

Court of Appeal, which concerned a song titled The Man Who Broke the Bank at Monte

Carlo.

23. That case is of limited assistance in this appeal. Francis Day concerned an action

by the owner of copyright in a song, who alleged that a film with the same title infringed

copyright. The Privy Council, finding that the title of the song alone was not sufficiently

substantial to justify copyright protection, made a point of noting the pronounced

differences between the two works that were allegedly in conflict: to an unprejudiced

observer no two things could appear more dissimilar than this song and this elaborate

motion picture, except for the bare fact that each bears the title The Man Who Broke the

Bank at Monte Carlo. 19

24. Moreover, while CIPPIC claims erroneously and without reference to authority

that an original string of words, indicative of skill and judgment, can be freely reproduced,

it adds that this is so unless it is reproduced alongside a substantial part of the original

work. 20 That qualification encapsulates precisely the facts of this appeal.

18 Francis, Day & Hunter Ltd. v. Twentieth Century Fox Corp. Ltd. , [1939] 4 All ER 192 [Francis Day].19 Francis Day at 355.20 CIPPIC Factum at para. 23.


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25. In this appeal, more than just the headline was copied. The headline reproduced

was part of the same work as the other material copied and appeared with that other

material both as originally published in the National Post and as later reproduced, without

licence or permission, on the respondents website. In this case, the headline, in and of

itself, conveys the message and meaning of the entire work and is thus original and

distinctive. The phrase Richard Warmans Phony-Racism Industry encapsulates

specific, original, and distinct expression that relays the purpose and substance of the

article that follows. It is difficult to fathom a title that is more original or more distinctive.

26. CIPPIC relies on another international decision that is of limited value in this

appeal. The Australian Fairfax 21 case considered whether specific headlines were

substantial parts of works by themselves, not in combination with additional portions of

the works that they accompanied. This appeal is not about headlines alone; it is about

assessing whether the reproduction of multiple paragraphs of an original work, including

its headline, constitutes the reproduction of a substantial part of that work. The Fairfax

case, therefore, can be of little assistance to this Court.

27. CIPPIC attempts to argue, again relying on Francis Day , that titles ought to be

given minimal protection in any event . However, the reproduction of a newspaper

headline in combination with portions of the article that it accompanies is different from

the reproduction of the title of a song, or the title of a film, or the title of a sculpture, without

more, for use in a completely different artistic form. The headline of the Kay Work is part

of the narrative continuum of that work; it is an essential and integral feature of the

newspaper article, not a minimal part.

21 Fairfax Media Publications v. Reed International Books Australia , 2010 FCA 984 (Aust. FCA) [Fairfax].


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2.3 Incorrect Application of the Adverse Effect Factor

28. CIPPIC incorrectly states that a given reproduction is less likely to be substantial

if it is unlikely to conflict with the legitimate economic or commercial interests of the rights

holder. 22 This misapplies the principle on which CIPPIC apparently seeks to rely.

29. A finding that a use adversely affects a rights holders activities might support a

finding that a reproduction is of a substantial part of a work. 23 However, the reverse is not

true: a finding that a use does not adversely affect a rightsholders activities does not

establish that there is no substantial reproduction. Further, CIPPIC cites no authority for

the proposition that a finding that there is no adverse affect on a work should be a factor

weighed against a finding of substantial reproduction.

30. In any event, CIPPIC is incorrect to assert that the court considered the lack of

any potential conflict between the reproduction in question, and any legitimate economic

activity of the author. 24 To the contrary, the Application Judge found, and the National

Post agrees, that this factor is not directly relevant in this case to the question of

substantial reproduction. 25

3. Precondition to Fair Dealing: the Source of the Work Was, Quite Simply, NotMentioned by the Respondents

31. Just as CIPPIC mischaracterizes the National Posts argument in relation to what

constitutes a substantial part of a work and misapprehends the facts of this case, the

22 CIPPIC factum at para. 33.23 U&R Tax Services at para. 35.24 CIPPIC factum, para. 34.25 Judgment at para. 26.


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CCIA similarly misrepresents the National Posts position as regards the fair dealing

exception and misstates whether the facts of this case support such an exception.

32. Most significantly, the CCIA has failed to demonstrate that the requirement in

section 29.2(a) to name the source and author of a work when using that work for the

purpose of news reporting 26 was met in this case. Without complying with that

requirement, there can be no fair dealing in this case.

33. The requirement to mention the source and author of a work is a statutory

precondition to reliance on the fair dealing exception to copyright infringement in section

29.2 of the Copyright Act . No matter how often or how strenuously the respondents or the

interveners may insist that the source of the Kay Work was mentioned, it quite simply was

not.

34. It is notable that the CCIA does not address this issue until page 17 of its 20-page

factum. When it finally addresses this issue, it does so in only six paragraphs and cites no

case law in support of its argument. Presumably, the CCIA has avoided this issue

because its argument has no merit.

35. The CCIA baldly asserts that placing the word SOURCE at the end of the

reproduction of the Kay Work on the freedominion.com website was sufficient to meet the

statutory pre-conditions in the Copyright Act .27 That assertion is insufficient for several

reasons.

26 The same statutory precondition applies to fair dealing for the purpose of criticism or review; seeCopyright Act , s. 29.1(a).27 CCIA Factum at paras. 76 to 81.


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36. First, the citation to SOURCE appeared only in relation to the full-text

reproduction of the Kay Work. When that reproduction was replaced on the Free

Dominion website with the excerpted portion, there was no similar reference to

SOURCE, no suggestion of a hyperlink to the National Post website, and no attempt of

any kind to credit the National Post as the source. 28

37. Second, the CCIAs argument that the use of the word SOURCE and a purported

hyperlink to the National Post website meet the statutory precondition contradicts both

the plain words of the statutory requirement to mention the source of a work and the

common law interpretation of that requirement.

38. The requirement to mention the source of a work was directly addressed by the

Federal Court in the Michelin 29 case. In that decision, the Court noted that the

requirement to actively mention the source of a work is not to be lightly skipped over,

and mandates that a user must explici t ly give the source of the work reproduced if they

hope to qualify under the fair dealing exception:

The requirement to act ively ment ion the sour ce and author is there for a reason and not to be l ight ly skipped over. The need to require the source wasadded to amendments to the Copyright Act in North American Free Trade Agreement Implementation Act , S.C. 1993, c. 44, subsection 64(1). There is noCanadian case law on what "mention" means but I am in agreement with th e pla int i ff that i t i s more than a passive or impl ic i t acknowledgment in parody. According to the Concise Oxford Dictionary of Current English (8th ed. Oxford:Clarendon Press, 1990), ment ion means " to refer to br ief ly, to specify by name or to reveal or disclose" . When the plaintiff uses the "Bibendum", it givesMichelin as the source. The author or originator is not stated so at the very least the defendants have to expl ic i t ly giv e the source and not the author if they

28 Warman Affidavit, Exhibit G, Appeal Book, Vol. 1, Tab 7G, p. 138; see also Tab B to the National PostFactum, where the excerpt of the Kay Work as posted on the Free Dominion website is reproduced.29 Compagnie Generale des Establissements Michelin-Michelin & Cie v. National Automobile, Aerospace,Transportation and General Workers Union of Canada (CAW-Canada) , 1996 CanLii 3920 [Michelin]


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hope to qualify under the fair dealing exception in paragraph 27(2)(a.1) when theyuse the "Bibendum" design. This they have not done. [Emphasis added.]

39. The use of the word SOURCE underneath the full-text reproduction of the Kay

Work did not refer to, specify by name, or reveal or disclose the source of the Kay

Work. At most, it was a vague invitation to click on a hyperlink to a page that, if viewed,

might implicitly disclose that information.

40. Indeed, there is no evidence in the Record of this proceeding that the word

SOURCE was, in fact, a hyperlink to the National Post website. 30 Even if a hyperlink did

exist, at best using a hyperlink invites the reader to take an active step to discover thesource of the work. If the reader chooses not to take that step, he or she may never

become aware of the source.

41. The legal standard required the respondents to at the very least explicitly give

the source of the Kay Work. Instead, they provided, at best, a simple passive or implicit

acknowledgement, placing the onus on the reader to take further steps to discover the

source. Despite the CCIAs insistence to the contrary, that was not sufficient to meet the

very clear statutory requirement.

42. That requirement is hardly onerous. Rather, it is a reasonable and minimal

requirement on users of copyright works, intended to afford minimal protection to creators

and owners of copyright by ensuring that they are acknowledged and credited for their

labour.

30 In the Respondents Memorandum in this Appeal, at paras. 80-81, they baldly state that hyperlinksexisted to the National Post website. That alleged fact is not in evidence and was not before Justice Rennie.


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43. The National Post submits that meeting the statutory preconditions is a threshold

issue to the application of a fair dealing exception, whether for news reporting or for

criticism or review. If this Honourable Court determines that the statutory precondition

was not met, then it is respectfully submitted that it is not necessary to go on and

determine whether the use of the Kay Work was otherwise fair.

4. The Purpose of Reproducing the Kay Work was Not for News Reporting

4.1 CCIA Misstates the Evidence in the Record

44. In relation to the news reporting exception, the CCIA misrepresents and incorrectly

states the evidence in this case. It argues in paragraph 37 of its factum that there were

multiple news items being reported to freedominion.cas readers with the posting of the

excerpts of the Kay Work, and goes on to list the multiple news items purportedly

reported in the excerpt, including: (a) the fact that the article was published in the

National Post; (b) the fact that Richard Warman obtained an exclusive licence to the

work in order to restrain its publication; and (c) the fact that Mr. Warman sent a

cease-and- desist letter to the Respondents.

45. None of these facts are established by anything in the post on the Free Dominion

website. If these are the news items that were allegedly reported in the post containing

the excerpt of the Kay Work, as the CCIA claims, then indeed there was no news reported

at all.

4.2 CCIA Misstates the Issue in this Case

46. The CCIA has further misstated the issues in this case. Contrary to its argument,

there is no dispute here over whether fair dealing exceptions are to be given a large and


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liberal or generous interpretation. However, even on a large and liberal or generous

interpretation, the words of a statute must still be read in their ordinary and grammatical

sense and cannot be given meaning that those words cannot bear or given meaning that

would create an absurdity.

47. The CCIA suggests that the National Post incorrectly relies on paragraph 54 of

CCH to assess whether a dealing is for an enumerated purpose, instead arguing that this

passage from CCH concerns only whether the purpose of that dealing was fair. However,

the CCIA offers no alternate interpretation of how the purpose of a dealing should be

assessed. In any event, the CCIA is incorrect: paragraph 54 of CCH refers to and is

applicable to determine the purpose of a dealing for both the first and second step of the

fair dealing analysis. 31

48. The CCIA further mischaracterizes the National Posts argument by suggesting

that it argues that the party claiming fair dealing is required to adduce factual evidence of

its purpose in using the work. In fact, what the National Post argues is that to establish

the real purpose or motive and make an objective assessment of that motive requires

some basis in fact.

49. First, there is no doubt that the onus is on the person invoking fair dealing to

satisfy all aspects of the test, 32 and therefore any evidentiary burden that exists is on the

person invoking the exception. Further, in addition to this onus, the trier of fact must

31 CCH at 54: In Canada, the purpose of the dealing will be fair if it is for one of the allowable purposesunder the Copyright Act . As discussed, these allowable purposes should not be given a restrictiveinterpretation or this could result in the undue restriction of users rights. .32 Alberta (Education) v. Canadian Copyright Licensing Agency (Access Copyright) , 2012 SCC 37 at para.12 [Access Copyright].


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assess, on an objective standard, that a dealing was for an enumerated purpose. To

make a finding of fact on an objective standard, therefore, requires some factual

evidence, either directly or by inference, a point made in the case of Pfizer v. Apotex ,

which the CCIA dismisses without proposing an alternative authority:

[109] As stated by Justice Roger Hughes in Novopharm , above at paragraph57, the test is whether the document at issue is something which, on theevidence, was available to a person skilled in the art or could reasonably beassumed to have knowledge of as of [the priority date] (citation omitted). Thisis, therefore, an objective standard and requires some factual evidence, either direct or from which an inference may be drawn as to availability.

50. This is hardly a novel assertion, but is one which the National Post submits is

rather trite. Therefore, not only did the respondents fail to meet their onus, but the

Application Judge also erred by failing to make an objective assessment, based on the

available facts, of the respondents purpose for using the work at issue.

51. Finally, relying on SOCAN v. Bell , the CCIA argues that users can have more than

one fair dealing purpose at the same time. This is contrary to the above-cited paragraph

54 of CCH , which instructs that courts are to identify the user/defendants real purpose

in using a copyrighted work, suggesting that there is one purpose that predominates over

others.

52. It is further unclear whether the CCIA makes this point in respect of the first step or

second step of the fairness analysis: the passage cited from SOCAN v Bell for the

proposition that an activity can be done for both a fair dealing purpose and non-fair

dealing purpose relates to the fairness of the dealing, not the identification of whether a

dealing is for an enumerated purpose.


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4.3 It is Not for the CCIA to Argue the Purpose of the Dealing was Criticism

53. The CCIA, in paragraphs 38 to 53 of its factum, argues that the use of the Kay

Work was fair dealing for the purposes of criticism. The National Post takes no position on

whether the dealing was for the purpose of criticism or review. The issue on this appeal is

that the dealing was not for the purpose of news reporting, and that the Application Judge

erred in concluding that it was. He never turned him mind to the question of whether the

dealing was for the purpose of criticism.

54. It is inappropriate for an intervener on appeal to raise a new argument and ask this

Honourable Court to make new factual findings on an issue not considered by the

Application Judge. Indeed, doing so is contrary to the Order of this Honourable Court

granting the CCIA leave to intervene, which provided that the interveners may address

only issues that have been raised by the parties. 33

55. If the Court agrees that the dealing was not for the purpose of news reporting, it

should allow the appeal. If it is concerned that there may be another issue in respect of

fair dealing, then it may remit the matter back to the Application Judge with appropriate

directions for redetermination on that issue, based on a proper factual record.

5. The CCIA Mischaracterizes the Fairness Factors

56. In addition to mischaracterizing the disputed issue in relation to whether the

dealing with the Kay Work was for an enumerated purpose, the CCIA further

mischaracterizes the National Posts argument as to whether the dealing with the Kay

33 Order of Sharlow J.A. dated June 11, 2013, at para. 1(d).


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Work was fair. Each of the fairness factors, and the CCIAs position in respect of them,

are dealt with below.

57. Purpose of the Dealing: The CCIAs only submission in relation to this factor is to

argue that there is a distinction between a real purpose and motive and a predominant

purpose. That is a distinction without a difference. Further the National Post submits that

the CCIAs own focus on the exception for criticism suggests that it agrees that the

respondents real purpose or motive was not for news reporting, and that the Application

Judge erred in determining that it was so. Accordingly, this factor ought not be weighed in

favour of a finding of fairness for the purpose of news reporting.

58. Character of the Dealing: The CCIA again mischaracterizes and misrepresents the

National Posts argument in this regard. In its factum, the National Post argued that, if

multiple copies of a work are widely distributed, this will tend to be unfair (per CCH ).

Citing the fact that the Application Judge considered this factor to support unfairness, 34

the National Post noted that there were 35,770 views of the reproduction of the Kay

Work, 35 which indeed supports a finding of unfairness. The National Post agrees with the

CCIA that the Copyright Act should be applied in a technologically neutral manner: by

way of example, the National Post submits that distributing 35,770 copies of an infringing

paperback book would similarly support a finding of unfairness.

59. Amount of the Dealing: The CCIA argues that the National Post has incorrectly

stated that this factor does not entail a qualitative analysis of the amount used. The

34 Judgment at para. 34.35 Transcript of the Cross-examination of Constance Fournier, dated December 8, 2011, Appeal Book, Vol.4, Tab 10, p. 1351, Qs. 82-84.


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National Post relies on the Access Copyright decision for the proposition that the amount

of the dealing examines the proportion between the excerpted copy and the entire work,

not the overall quantity of what is disseminated. 36 This is a quantitative analysis, not a

qualitative one, and the Application Judge erred by applying a qualitative analysis under

the amount of the dealing factor (which analysis was incorrect in any event). The

National Post notes that the CCIA proposes no alternative analysis of this factor and, in

any event, does not argue that the amount of the respondents dealing with the Kay Work

was fair.

60. Alternatives to the Dealing: The CCIA asserts that it appears from the evidence

that the Respondents purpose in reproducing the relevant excerpts was so that readers

would be able to see the actual words that were published. 37 The CCIAs position is

contradicted by CCH , which held that if a criticism would be equally effective if it did not

actually reproduce the copyrighted work it was criticizing, this may weigh against a finding

of fairness. The Application Judge correctly found that the respondents could have

summarized the Kay Work rather than reproducing it. 38 There is no reason why, as an

alternative to reproducing the substantial excerpts from Kay Work, the respondents could

not have summarized the following facts:

(a) Mr. Kay had written an article critical or Mr. Warman, accusing Mr. Warmanof using a pseudonym to post a racist message;

(b) Mr. Kay argued that this radical anti-racism was horrible, shocking andmore harmful than racism itself; and

36 Access Copyright at para. 29 .37 CCIA Factum at para. 70.38 Judgment at para. 34 (there was arguably an alternative to the dealing, namely providing a summary of theKay Work instead of reproducing excerpts.).


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(c) Mr. Warman sued over the article claiming that it falsely accuses him of creating hate speech, fabricating racist conduct, and authoring andpublishing a racist message.

61. It is submitted that the reason the respondents did not summarize the Kay Work,

but instead copied excerpts of it verbatim, was to save time and effort and to benefit

from and trade on the unique and powerful rhetorical style and creativity of a professional

writer.

62. Nature of the Work and Effect of the Dealing: The CCIA is correct that the National

Post did not address either of these factors in its factum. The National Post did not do so

because, as CCH instructs, while the fairness factors may be useful and are factors

which could be considered, they will not arise in every case of fair dealing. The fairness

factors ought not be rigidly applied in governing determinations of fairness, and the

National Post submits that these two factors are of limited applicability to a determination

of whether the dealing at issue in this case was fair.

63. However, two further misstatements by the CCIA in relation to these two factors

should be addressed. First, in relation to the nature of the dealing, the CCIA suggests that

news articles have been traditionally considered to attract thinner copyright

protection. 39 This is a misstatement of the law: neither CCH nor Tele-Direct , the two

cases relied on by CCIA in support of this point, refers to thinner copyright protection for

any particular type of work, nor does either case deal with news articles.

64. Second, as regards the effect of the dealing, the CCIA argues that a link that

pointed directly to the original work was provided, thereby mitigating any adverse effect

39 CCIA Factum at para. 72, citing CCH and Tele-Direct .


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on the original work. As discussed above, this is an incorrect statement of fact: there was

no link to the National Post website in the posting of the excerpt of the Kay Work, and

therefore could be no mitigation of adverse effects.

6. Infringement Each Day the Work is Posted

65. The National Post maintains that the Kay Work was reproduced on the

respondents website each day from February 18, 2008 until April 18, 2010. The

reproduction was not removed or destroyed, and therefore it existed at all material times

and infringed the appellants copyright during that time.

66. In any event, the CCIA appears to have conceded that the Kay Work was

communicated to the public by telecommunication, another exclusive right under section

3(1) of the Copyright Act .40 Therefore, even if it was not a reproduction each day, the

continued posting of the Kay Work was nevertheless an infringing act that cannot be

saved by the fair dealing exception.

7. Order Sought

67. The appellant, National Post Company, maintains its request for the relief sought

in its Memorandum of Fact and Law, dated March 8, 2013.

ALL OF WHICH IS RESPECTFULLY SUBMITTED this 15 th day of August, 2013.

CASSELS BROCK & BLACKWELL LLPSolicitors for the Appellant,National Post Company

40 CCIA Factum at para. 84 (the fact that a user may cause the work to subsequently be communicated tothe users web browser, however, is independent of the posting.)


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Court File No.: A-394-12 and A-395-12


B E T W E E N :


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THE COMPUTER AND COMMUNICATIONS INDUSTRY ASSOCIATIONIntervener

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SAMUELSON-GLUSHKO CANADIAN INTERNET POLICY AND PUBLICINTEREST CLINIC

Intervener

SUPPLEMENTARY MEMORANDUM OF FACT AND LAW OFTHE APPELLANT, NATIONAL POST COMPANY

(Response to the Interveners, The Computer and CommunicationsIndustry Association (CCIA) and The Samuelson-Glushko

Canadian Internet Policy and Public Interest Clinic (CIPPIC))

(Filed this 15th day of August, 2013)

Cassels Brock & Blackwell LLP2100 Scotia Plaza

40 King Street WestToronto, ON M5H 3C2

Casey M. Chisick LSUC #: 46572RTel: 416.869.5403Fax: 416.644.9326

[email protected]

Jason Beitchman LSUC #: 56477OTel: 416.860.2988Fax: 647.259.7993

[email protected]

Solicitors for the Appellant,National Post Company

natpo supplementary memorandum of fact and law (np response to inte

Documents