A Clatch Of Copyright Cases At The Supreme Court of Canada

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By Howard Knopf

A “clatch” is another word for “brood”, which is a not inappropriate word in the present circumstances – considering that Canada’s highest court will hear five (yes, five!) cases on December 6 and 7, 2011 that all emanate from Canada’s Copyright Board. These cases are on appeal from the Federal Court of Appeal, arising in turn from “judicial review” of five recent decisions from the Copyright Board. Judicial review, in this context, is essentially the same thing as an “appeal”.

It is believed that this is the only time that a highest level court in any Anglo-American jurisdiction has ever considered so many copyright cases in such a concentrated period of time. Two of the cases will be heard together, with the rest following consecutively. The Court’s draft schedule calls for 9 hours and 35 minutes of hearing in two days, which in itself is very unusual for this or any other comparable court. Normally, the Canadian Supreme Court hears only one case per day on hearing days and the time duration rarely exceeds three hours or so, even with interveners. Since the writer is involved as counsel in one of these cases, these comments will be very circumspect.

In a nutshell, two of the cases, which will be heard together, involve the meaning of “communication to the public by telecommunication” of musical works on the internet. One of these cases focuses on the meaning of “communication” and the other of the meaning of “public”. Two other cases involve “fair dealing”, the Canadian counterpart to what the Americans call “fair use”. One of these, in turn, involves online 30-second streamed music “previews” on commercial websites, such as iTunes, where music is sold on line. The other involves reprography in the non-commercial context of kindergarten to grade 12 education. The last case involves whether, in light of the fact that the definition of “sound recording” in the Copyright Act excludes soundtracks from movies and television shows, makers of sound recordings and performers are entitled to payment for performances in theatres and on television of a soundtrack of a cinematographic work. The Court’s own summaries of these cases are provided below.

Apart from the fact that all of these cases arise from decisions of Canada’s Copyright Board in respect of “tariff” hearings, there is no obvious common thread that would clearly indicate why the Supreme Court of Canada granted leave to appeal in these five instances and is hearing all five cases in two days. There has been some speculation that the Court may be concerned with “layering of rights” and/or “technological neutrality”; however, neither of these issues clearly arises in all of the five cases. Some have also speculated that a possible common thread involves the “sempiternal question of the applicable standard of review,” an ongoing issue in Canadian administrative law involving the appropriate nature of any “deference” that should be given by a reviewing court to an administrative tribunal. This seems to be a particularly vexing question in the context of cases from Canada’s Copyright Board, where the reviewing court – the Federal Court of Appeal – has arguably not been completely consistent in its approach.

Other issues that some are trying to put before the Court involve:

- Whether, and if so how, the “three-step test” in the Berne Convention should be read into Canadian law in the context of the two fair dealing cases noted above. The arguments are largely based upon the WTO Dispute Settlement Understanding panel report involving s. 110(5) of the U.S. Copyright Act, which provides a significant exemption for commercial retail establishments under 2,000 spare feet and food service or drinking establishments under 3,750 square feet from the requirement to pay for the public performance of music; and,

- The effect of the “freedom of expression” provision of Canada’s constitution on the interpretation of “fair dealing” in the Copyright Act.

In the entire past decade, the Supreme Court of Canada has heard five cases that focussed on substantive copyright law and two where copyright law was important but not the main issue. Previously, the Court heard only about one copyright case every decade on average. Accordingly, it will be very interesting to see not only how the Court rules in each of the cases, but what common thread or threads it may have had in mind in handling them all at once in this unique manner. In addition, Canada has, just last month, welcomed two new justices to the Court. One of the recently retired judges, Justice Ian Binnie, had taken a particularly active role in last decade in intellectual property matters at the Court both in terms of questions from the bench and writing opinions; however, he will not be present at these hearings.

Another interesting question on the minds of many is whether the fact that the Court is hearing these cases at this time will have any impact on the timing of the Bill C-11, the long awaited “Copyright Modernization Act”, which is still awaiting second reading in Canada’s House of Commons. The Court normally renders its decisions in about six or seven months on average after the hearing.

The Court’s hearings are expected to be webcast live and later archived. The link is here:
http://www.scc-csc.gc.ca/case-dossier/cms-sgd/webcasts-webdiffusions-eng.aspx?ya=2011&ses=01&sr=Search

Here are the Courts’ summaries, which, in the Court’s words “are prepared by the Office of the Registrar of the Supreme Court of Canada (Law Branch) for information purposes only.”

33921
Entertainment Software Association, et al. v. Society of Composers, Authors and Music Publishers of Canada
Intellectual Property – Copyright – Whether a download of a video game that includes music is a communication of that music to the public by telecommunication within the meaning of para. 3(1)(f) of the Copyright Act, R.S.C. 1985, c. C-42 – Whether standard of reasonableness or standard of correctness applies on judicial review of Copyright Board’s decision that a download of a video game that includes music is a communication of that music to the public by telecommunication.

The applicants represent publishers, developers and distributors of interactive entertainment software products (primarily video and computer games). Their members collectively generate approximately 90% of North American interactive software product sales. On-line downloads of games generate approximately 5% of sales of interactive entertainment software products. On October 18, 2007, the Copyright Board released a decision stating the royalties to be collected for the communication to the public by telecommunication, in Canada, of musical or dramatic-musical works for the years 1996 to 2006: SOCAN Tariff 22.A (Internet Online Music Services).

33922
Rogers Communications Inc., et al. v. Society of Composers, Authors and Music Publishers of Canada
Intellectual Property – Copyright – Courts – Jurisdiction – Statutory Interpretation – Communication of a work to the public by telecommunication – Meaning of “copyright” in s. 3 of Copyright Act, R.S.C. 1985, c. C-42 – Interpretation of s. 3(1)(f) – Jurisdiction to interpret s. 3 – Test for when right to communicate a work to the public by telecommunication is engaged – Standard of review of interpretation of s. 3 – Balance between court’s supervisory powers and legislative supremacy – Scope of the supervisory role of the courts – Consistency in meaning given to exclusive rights granted by s. 3.

The applicants are internet service providers that provide consumers with the means to access the websites of online music service providers from which the consumers can download music files or streams to their computers or mobile devices. On October 18, 2007, the Copyright Board released a decision stating the royalties to be collected for the communication to the public by telecommunication of musical or dramatic-musical works for the years 1996 to 2006.

33800
Society of Composers, Authors and Music Publishers of Canada, et al. v. Bell Canada, et al.

(COURT FILE CONTAINS INFORMATION THAT IS NOT AVAILABLE FOR INSPECTION BY THE PUBLIC)

Intellectual Property – Copyright – Whether providing previews consisting of excerpts of works is fair dealing for the purpose of research that does not infringe copyright.

Some commercial internet sites that sell downloads of works allow users to preview the works. A preview typically consists of an extract taken from the work, for example a 30-second extract of a musical track, streamed online and accessible to consumers. On October 18, 2007, the Copyright Board of Canada released a decision stating the royalties to be collected for the communication to the public by telecommunication, in Canada, of musical or dramatic-musical works. In part, the decision addresses previews.

33888
Province of Alberta as represented by the Minister of Education;, et al. v. Canadian Copyright Licensing Agency Operating as “Access Copyright”
Intellectual property — Copyright — Fair dealing — Copyright Board approving tariff that included as remunerable use the photocopying of excerpts primarily from textbooks for use in classroom instruction for students in kindergarten to grade 12 — Whether such copying constitutes fair dealing — Whether the Federal Court of Appeal erred in upholding the Board’s finding that it is the copier’s purpose, and not the user’s purpose, that is the relevant consideration for fair dealing — Whether the Federal Court of Appeal erred in upholding the Board’s decision to look at copying in aggregate, and not individually, in determining fairness — Whether the Federal Court of Appeal erred by not applying the “not restrictive” interpretation that fair dealing warrants under the decision of this Court in CCH v. Law Society of Upper Canada, [2004] 1 S.C.R. 339 — Whether the Federal Court of Appeal erred in applying the standard of reasonableness, and not correctness, in its judicial review — Is there an inconsistency between the Federal Court of Appeal decision in the present case and in Society of Composers, Authors and Music Publishers of Canada v. Bell Canada, 2010 FCA 123, [2010] F.C.J. No. 570 — Sections 29, 29.1 and 29.4 of the Copyright Act, R.S.C. 1985, c. C 42 (the “Act”).

At the respondent’s request, the Copyright Board of Canada certified a tariff that applied to the reproduction of literary, dramatic and artistic works included in books, newspapers and magazines for use in primary and secondary level educational institutions in Canada, outside Quebec. The Board determined that royalties were payable with respect to some of the photocopies made in schools because they did not constitute fair dealing or come under the exception under s. 29.4 of the Act. The applicants applied for judicial review of the Board’s decision. The main issues became whether: i) “multiple copies made for the use of the person making the copies and single or multiple copies made for third parties without their request for the purpose of private study and/or research and/or criticism and/or review” (“category 4 copies”) constituted fair dealing under sections 29 and 29.1 of the Act; and ii) whether the copying was exempt under s. 29.4 of the Act as a “work or other subject matter as required for a test or examination” where the work is not “commercially available in a medium that is appropriate for the purpose”.

The Federal Court of Appeal upheld the Board’s ruling that the category 4 copies were unfair dealing. This was a question of fact for which there had been no reviewable error. However, the appellate court allowed the application for judicial review on the basis that the Board had failed to address an important part of the test under s. 29.4 of the Act.

34210
Re:Sound v. Motion Picture Theatre Associations of Canada, et al.
Intellectual property – Copyright – Legislation – Interpretation – Whether recording artists and record companies, as performers and makers of music, are entitled to equitable remuneration under s. 19 of the Copyright Act, R.S.C. 1985, c. C-42, when their music is played in movies and on television – Whether the definition of “sound recording” in s. 2 of the Copyright Act precludes equitable remuneration under s. 19 for pre-recorded music forming part of a soundtrack.

Re:Sound is a collective society authorized by the Copyright Board of Canada to collect equitable remuneration for the performance in public or communication to the public by telecommunication of published sound recordings of musical works. Its predecessor filed two proposed tariffs for public performance of published sound recordings, and that relate to the use of such sound recordings in movies shown in movie theatres and to the use of the sound recordings in television broadcasts. The respondents objected to the proposed tariffs on the ground that the definition of “sound recording” in the Copyright Act excludes soundtracks from movies and television shows and sought a determination of the following preliminary issue:

Is anyone entitled to equitable remuneration pursuant to section 19 of the Copyright Act, R.C.S. 1985, c. C-42, when a published sound recording is part of the soundtrack that accompanies a motion picture that is performed in public or a television program that is communicated to the public by telecommunication?

The Board answered in the negative and refused to certify the tariffs. The Federal Court of Appeal, on judicial review, upheld the decision.

Howard Knopf is Counsel at Macera and Jarzyna, LLP in Ottawa, Canada

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