Please do not quote from this paper without first obtaining written permission from the author. It is © 2000 by Jonathan H. Davidson.

"The dogmas of the quiet past are inadequate to the stormy present. . .
We must disenthrall ourselves. . ." [1]

Introduction

            Aside from the purely technical considerations, one of the biggest hurdles in creating digital libraries is copyright law[2].  To date, all of the major digital library collections are of material that is in the public domain and thus not protected by copyright law[3]. The purpose of this paper, therefore, is to examine the state of copyright law in Canada and the United States and show how it can be used to help or impede the creation of digital library collections.

            It is first necessary to clearly define what the term “digital library” means. One definition holds that:

the Digital Library is the collection of services and the collection of information objects that support users in dealing with information objects and the organization and presentation of those objects available directly or indirectly via electronic/digital means[4].

This extremely broad definition further provides that “the types of information objects vary from traditional ‘documents’ through to live objects (e.g. sensor readings) or dynamic query results” and “although the objects themselves may not be available directly over the network, the objects must be represented electronically in some manner through, e.g. metadata or catalogs”[5].

By this definition, then, a library’s OPAC would be considered a digital library because it provides access to books in the collection, even though they themselves are not available online. There are obviously no copyright issues in making a library’s catalogue available online. For purposes of this paper, therefore, a digital library will be considered to be a collection of “documents” actually made available to users in electronic form[6]. One author correctly points out that digital libraries may

exist only virtually -- that is, the library does not exist "in real life." For example, a virtual library can consist of material from a variety of separate libraries that are organized in a virtual space using computers and computer networks[7].

Indeed, one of the major strengths of digital libraries is the ability to bring disparate materials together for purposes of comparative analysis and study. Individual items can be understood better in their proper context.

            The law has not kept pace with the rapid changes in technology; copyright issues in the digital environment are still very much in a state of flux. There is also a conflict of fundamental values: "While the broad thrust of digital technology is toward enhanced access, diminished costs, and more versatile capabilities, it is far less clear that copyright law will likewise encourage wider use"[8]. Similarly, while librarians want to make information as widely available as possible for free, authors generally want to maximize their revenue from the work.

            Historically, purpose of Copyright law has been to provide motivation for authors by protecting them “from easy copying of their works by people who had made no investment in it”[9]. Formerly, making copies of a work required the investment substantial amounts of time and money. As technology has evolved to make the creation of copies faster, easier, and cheaper, the period of copyright protection has likewise been extended[10].

Canada

            At the present time, Canadian Copyright law makes not special provisions for electronic media such as the Internet. Therefore, it is necessary to first examine the state of the law as it applies to more traditional media[11].

Copyright has been defined as “the sole right to produce or reproduce the work… in any material form whatever… or, if the work is unpublished, to publish the work or any substantial part thereof”[12]. The owner of the work is effectively given a limited monopoly to control what is done with it. In other words, if something is protected by copyright, libraries cannot legally make it available to the public in any form, other than the original publication.

In Canada, this protection continues for published works for “the life of the author, the remainder of the calendar year in which the author dies, and a period of fifty years following the end of that calendar year”[13]. Therefore any reproduction of published material (including making it available on the web) is an infringement of the Copyright Act and the library could possibly be sued by the creator (or the person or corporate body that holds the rights). The situation with unpublished works is different. According to the general rule, “unpublished works… are protected in perpetuity, or until published or performed in public”[14]. This has important implications for a library or other institution that wishes to make a collection of unpublished, manuscript material available online.

            While neither Parliament nor the Courts have explicitly extended Canadian copyright law to cover the Internet, there is little question that it does apply to the online world:

While it is arguable that a great deal of Internet traffic, such as e-mail and "chat," is not protected by copyright, there is much on the Internet that consists of original, creative or artistic work, and so falls under the copyright aegis[15].

Courts in the United States, in contrast, have extended the scope of American intellectual property law to web sites physically located abroad. In Playboy Enterprises v. Chuckleberry Publishing[16], the United States (Federal) District Court granted an injunction, preventing the defendant from allowing access to his web site by people residing in the United States[17]. This was a precedent-setting decision because the web site was actually situated in Italy and therefore it was not under the jurisdiction of American courts.

            There are a number of ways that a library can acquire the rights to make a work available in digital format. The first, obviously, is for the institution to limit itself to public domain materials (i.e. those things which were never copyrighted originally or for which the period of copyright protection has expired). The main disadvantage of this approach is that it is limited to works of primarily historical interest. With unpublished materials (such as manuscript collections), it is possible that the library may have acquired the right to reproduce them at the time they were donated, in accordance with s. 30.21(3)(a) of the Copyright Act. This would have to be specified in the original donor agreement.

Second, the library could acquire a license from the creator that explicitly permits the redistribution of digital copies of the work[18]. The main disadvantage is that this approach does not solve the problem of old and out-of-print (but not yet out of copyright) works where it may be practically impossible to determine who holds the copyright. These are presumably the very same titles that libraries would be most interested in making available because of their rarity and/or deteriorating condition.

There is also the issue of the cost of obtaining such a license, especially where the library has already purchased the work in the original media format[19]. There are as yet few guidelines about the cost of licensing works for the Web, though one author suggests that educational institutions may not be charged as much as commercial enterprises[20].

            Finally, there are some provisions in the Canadian Copyright Act that at first glance may be construed as to allow for the development of digital library collections. The most important provision is the doctrine of fair dealing. It should be noted that the Canadian concept of fair dealing is not equivalent to the American idea of fair use, as the broader American provision "allows many more free uses of copyrighted material than fair dealing”[21]. Note also that fair dealing (or fair use) does not itself provide an independent right to copy something, rather it is a defense that can be raised if and when the copyright holder brings an action for infringement[22].

            Section 29 of the Copyright Act states that “Fair dealing for the purpose of research or private study does not infringe copyright”. Unfortunately, the legislation nowhere defines exactly what fair dealing means – nor does it specify exactly how much of a work may be copied under this provision. Several Court decisions have dealt with this problem. In a 1943 decision, the Exchequer Court of Canada held that reproducing a work in its entirety (even for the purpose of literary criticism) does not fall within the ambit of fair dealings[23]. Thus while digital libraries may be able to include excerpts from or parts of works still under copyright, the entire work itself could not be made available.

The Federal Court of Canada recently returned to this matter in CCH Canadian Ltd. v. Law Society of Upper Canada[24]. At issue was the policy of the Library of the Law Society of Upper Canada of providing on-demand of photocopies of legal materials for members of the Bar and Judiciary. Various legal publishers consequently sued the Law Society for copyright infringement. In ruling that there had been an infringement, Gibson J. held that: 

The copying by the defendant in the course of its custom photocopy service was not for a purpose within the ambit of fair dealing notwithstanding that the ultimate use by the requester of the photocopying might itself be within the ambit of fair dealing. […] I am satisfied that the fair dealing exception should be strictly construed[25].  

            By analogy, then, a library cannot distribute or make digital copies of a work publicly available even if these copies are to be used solely for the purpose of research or private study. The very act of making the copies is an infringement. Gibson J. explicitly rejected the Law Society’s argument that “if a dealing is fair and for the purposes of private study, the section applies whether the private study in mind is one's own or that of somebody else”[26].

            The only parts of the fair dealing provisions of the Copyright Act that actually consider digital copies are ss. 29.4(2)(b) and 30.2(5). Section 29.4(2)(b) provides that “It is not an infringement of copyright for an educational institution… [to] communicate by telecommunication to the public situated on the premises of the educational institution a work or other subject-matter as required for a test or examination” (emphasis added). This provision (implicitly) appears to allow the creation and distribution of digital copies but only for a very narrowly specified purpose[27]. Thus, by necessary implication, all other purposes are disallowed.

            Section 30.2(5) is even more clear about digital copies. This section provides a legal basis for interlibrary loan programs in that it allows a library, archive or museum to make a copy of an item in their collection for the personal use of a patron at another institution. The Act stipulates, however, that “the copy given to the patron must not [be] in digital form[28].

            Therefore, as it presently stands, the Copyright Act, does not have any provisions that will allow the creation of digital library collections of material that is currently protected by copyright. Those sections that do discuss digital copies make it clear that such an activity is not allowed.

            There is another section of the Copyright Act that may eventually allow the creation of digital copies. While this particular section has not been proclaimed in force (i.e. it is not yet law), the legislation provides that[29]:

It is not an infringement of copyright for a library, archive or museum … to make, for the maintenance or management of its permanent collection or the permanent collection of another library, archive or museum, a copy of a work or other subject-matter, whether published or unpublished, in its permanent collection

(a) if the original is rare or unpublished and is

(i) deteriorating, damaged or lost, or

(ii) at risk of deterioration or becoming damaged or lost;

            It is very probable that this section, once it is proclaimed into force, could be used to authorize the creation of digital copies. It is questionable, however, if this provision would allow the distribution of these copies, including their being made available as part of a digital library project. Similarly worded legislation in the United States has been held to provide that “libraries have the right… to create but not to distribute digital archival and replacement copies”[30].

            Finally, a library could simply “take its chances” that legal action will not be brought and just make the material available. One Canadian institution has taken that approach. The British Columbia Law Institute does not maintain a digital library collection, per se, but it does have a comprehensive database of bibliographic citations to law reform materials on it website. It provides copies of requested documents, for a fee. The Institute’s Policy on Copying and Copyright on states, in part, that:

Rule 1: The portions of a publication that may be copied is not limited where:

         (a) The publication is out-of-print, or

         (b) The body that issued the publication has ceased operations.

        

     Rule 2: For the purposes of Rule 1

                     (a) A publication that is more than 3 years old and which was

                          created for consultation purposes, or

         (b) Any other publication that is more than 10 years old

               is deemed to be out-of-print[31].

This policy is justified on the basis that “these materials deserve wide dissemination and that it is in the general interest of the community of law reform bodies, worldwide, to facilitate this”[32]. It is not clear if this policy could withstand an action for copyright infringement, especially after the decision in CCH.

United States

            Like the equivalent sections of the Canadian Copyright Act, Title 17 of the United States Code makes almost no specific provisions for the Internet. In October, 1995, bills were introduced in both the House and Senate to amend the list of a copyright holder’s rights to add the exclusive right of electronic "transmission" to the list of copyright owner's right of distribution but this amendment was not passed[33]. The Digital Millennium Copyright Act of 1998 adds a few provisions to the Code that limit the liability of Internet Service Providers for copyright infringement with regard to caching files and users storage of copyrighted materials on their system[34].

The duration of copyright in the United States is longer than that of Canada and the rules are rather more complicated. Works published after January 1, 1978 are protected for the life of the author plus seventy years; works published earlier can be renewed for a total renewal of 95 years. Unpublished works are also protected for the life of the author plus seventy years or until a specified statutory end-date[35].

Basically, the very same provisions apply in the United States as in Canada with regard to the free use of public domain materials and the requirement of licensing material that is not otherwise freely available. The main differences are in the specific provisions about fair use and digital copies; these are unique to the American legislation.

As mentioned above, the American concept of fair use is much broader than its Canadian equivalent. This is especially true with regard to the exceptions for Libraries and Educational Institutions. The section of the US Federal Code is basically equivalent to s. 29 of the Canadian Copyright Act and provides that:

…The fair use of a copyrighted work… for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright[36].

Unlike the Canadian legislation, this section of the Code further provides four detailed criteria which can be used to determine “whether the use made of a work in any particular case is a fair use”. These criteria include:

1. The Purpose and character of the use, including whether such use is of a commercial nature or is for non-profit education.

2. The nature of the copyrighted work.

3. The amount and substantiality of the portion used in relation to the copyrighted work as a whole.

4. The effect of the use upon the potential market for, or value of, the copyrighted work[37].

As with the Canadian fair dealings doctrine, it appears that the fair use doctrine may not be applicable to unpublished (but still copyright) works[38]. Unfortunately, these provisions do not allow for the further distribution of the copies[39].

The next section of the Code creates specific exceptions for libraries and archives. It stipulates that “is not an infringement of copyright for a library or archives… to reproduce no more than one copy or phonorecord of a work… or to distribute such copy or phonorecord, under the conditions specified by this section”, as long as this copying is not done for commercial purposes and the collections are made available to the public or other interested parties[40].

While this section clearly allows the creation of copies, there is some debate in the Academic community as to whether or not this section will allow the distribution of those copies. One author comments that

Fair use is the doctrine that educational and library sysops use to justify adding sources to on-line collections. The institutions claim that the resources are being used for educational purposes and that the on-line access has not affected the potential market [for] or value of the work[41].

Unfortunately, the author neither further elaborates upon this point nor provides any references, so it is impossible to determine how widespread this practice is. A library must be authorized to distribute such a digital archival copy of a work but it is presently unclear if this section (108) may be relied upon to provide that authority[42].

>Conclusion

         In both Canada and the United States, copyright law does not facilitate the creation of digital library collections. While the broader fair use provisions of American law allow some scope for interpretation, the Canadian position is much more clear in its opposition to digital libraries.

         The copyright law of both countries suffers from the same inherent problem – it lags behind the current state of technology. Writing in 1995, an American Federal Court lamented that

[a]s with the development of other easy and accessible means of mechanical reproduction of documents, the invention and widespread availability of photocopying technology threatens to disrupt the delicate balances established by the Copyright Act[43].

The very same comments can be made about the Internet today.

            In sum, it is time for Parliament to overhaul the Copyright Act and finally bring it into the twenty-first century. As it presently stands, it is an impediment to the growth of Canadian content on the Internet – thus it stands in direct opposition to the Federal government’s stated goals and objectives[44]!

Notes

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Last Modified: November 16, 2004