Do Licence Agreements Trump Users’ Rights?

I’ve just posted a new working paper on SSRN: “Conflict between Contract Law and Copyright Law in Canada: Do Licence Agreements Trump Users’ Rights?” It’s available for download at The paper was written under the supervision of Prof. Samuel Trosow, and portions of it were presented at the Ontario Library Association Super Conference on January 31, 2014.


I argue in this paper that it is not a settled issue in Canadian law that copyright exceptions provided in the Canadian Copyright Act can be trumped by contractual agreement, and that a strong argument can be made that they cannot. I first frame the issue by discussing the increasing use of digital rather than print materials in academic libraries, and the potential conflict between subscription agreements and the Copyright Act. I then address three approaches (jurisdictional, purposive, and statutory right) that can be taken to determine whether contractual terms are preempted by statutory provisions, and conclude that, in Canada, copyright exceptions are statutory rights that cannot be removed by contract. Finally, I briefly discuss technological protection measures and argue that their recent inclusion in the Copyright Act does not necessarily indicate legislative support for private ordering.

Why academic librarians must be alert and open access publishers must be self-boosters

The University of Western Ontario Journal of Legal Studies (a.k.a. the Western Journal of Legal Studies) is an open access law review launched in 2012. All UWOJLS articles are available for anyone to view, download, or print, no subscription necessary. Copyright in the individual articles belongs to the respective authors.

Its full text is indexed in HeinOnline. The advantage of this relationship with HeinOnline is mainly one of exposure; HO is a highly-subscribed database, and when new journals are added, subscribing institutions may be notified to update their catalogues. A relatively new journal such as the UWOJLS, which is run by students and publishes in a field that some say is over-saturated, will often struggle to be noticed.

The disadvantage? Sometimes the only exposure a journal gets is through its association with proprietary databases such as HeinOnline. This means that a library’s catalogue entry will direct readers only to the proprietary database. The terms of the database publisher’s licence may limit certain uses of the journal articles in the database, such as inclusion in course packs or electronic learning management systems. (These uses may well fall under the scope of fair dealing, but a discussion of conflicts between contract and users’ rights in copyright will have to wait for another day.)

See, for example, the UWOJLS record in Simon Fraser University library’s electronic journal list: The record indicates, correctly, that the HeinOnline subscription licence does not allow articles to be used in e-reserves or course packs. What the record does not indicate, however, is that the University of Western Ontario Journal of Legal Studies is a fully open access publication whereby such uses are permissible.** Instructors considering UWOJLS articles for use in their courses may decide against it on the basis of these purported restrictions. Ironically, this would result in a net reduction in exposure.

(**Update: Simon Fraser University has updated the entry to include the UWOJLS. Thank you to Sandra Wong for bringing it to my attention.)

The moral of the story? Collections and licensing librarians must be alert to the possibility that a journal appearing in a proprietary electronic database may in fact allow for uses not permitted by the database’s subscription licence. It’s crucial to check every time, particularly in the case of new or more recently-launched journals that are more likely to be open access. Indicate that the journal is open access and provide the link in the catalogue record.

Publishers of open access journals, for their part, need to put the word out and not rely on commercial publishers to do the work for them. Exposure can be had by way of open access journal lists such as the Directory of Open Access Journals and SHERPA/RoMEO, through blog posts and social media, or via announcements on library-related listservs. To paraphrase a classic thought experiment: If a journal is open access but nobody knows that it’s open access, does it make an impact?