Wednesday, April 22, 2020

Access Copyright v York University: York Wins re "Mandatory Tariff" and Loses re Fair Dealing Guidelines

Very big news today from Federal Court of Appeal:

  • Victory on "mandatory tariff" issue for York
  • Loss for York on fair dealing guidelines.
Here's the formal judgment:

Here's the Reasons:

Analysis to follow. 

Very likely both sides will try to get leave to appeal in Supreme Court of Canada.


Tuesday, April 14, 2020


This seems like such a long time ago - but it was on February 26. 2020 in Edmonton. We were hoping to have heard from the Federal Court of Appeal by then on the Access Copyright v. York U. case, but that did happen and still hasn't happened.

February 26, 2020
(some of this material has appeared before on my blog and/or in presentations elsewhere)
(views are personal and not necessarily those of my firm or clients and are not legal advice)

Sunday, March 01, 2020

Simple Solutions Simply Don’t Suffice to Solve the Slew of Song Infringement Substantial Similarity Suits

(Rogers & Hammerstein - "Do-Re-Mi")

Damien Riehl and Noah Rubin have released this interesting TEDx talk entitled “Copyrighting all the melodies to avoid accidental infringement”. It has gotten lots of attention.

Their well-meaning but unconvincing concept is to algorithmically generate every possible melody contained within an octave with no chromatic notes and create a huge database and dedicate it to the public domain.

At the risk of oversimplifying their research and conclusion, this concept frankly seems even more simplistic than the apparently nonsensical "expert" opinions behind some bad court decisions. There are 12 - NOT just 8 - notes in a scale and often more than one octave + rhythm and harmony involved - not to mention the "independent creation" doctrine. They say they are working on including all 12 notes in the scale.

Obviously, songwriters are not likely to succeed in defending an infringement lawsuit simply because a tune may turn out to be found in their limited data base that is substantially similar to the plaintiff’s tune and the allegedly infringing tune. Copyright law doesn’t work that way.

Here are some well known examples that fall outside the simplistic Riehl/Rubin TEDx talk concept:
Indeed, many great tunes contain "accidentals" and may modulate quickly and span octaves.

Sorry for the OK Boomer examples that date back even earlier than my Juilliard School days - but today's so-called tunes are - to the extent that they even include so-called melody - so simple minded that it's no wonder that so many seem the same.

Once upon a time, music really did consist of melody, harmony and rhythm.  It has often been said that Mozart's genius was to start with something apparently very simple and diatonic and to then throw in some chromatic complexity and turn it into extreme genius...

A great example is Mozart - Piano Concerto kv467 no21 (Alfred Brendel) - 2nd movement (aka the "Elivra Madigan" concerto)

This not only contains some delicious chromaticism but also goes beyond the octave range.

Sometimes some things are just not so simple.


PS - an internationally respected and tenured musicologist friend of mine has pointed out there is more than just the B flat chromaticism in "Do-re-mi":

Monday, February 17, 2020

The Copyright Board’s Access Copyright Post Secondary Decision: The Incorrect Correction

(Federal Court of Appeal)

In the very fraught file concerning Access Copyright’s quest for a post-secondary tariff, the Copyright Board issued a decision on December 6, 2019 and certified a tariff dated December 7, 2019. The tariff application was almost a decade old. It had been almost 4 years since an effectively uncontested hearing had taken place in January of 2016. As I’ve indicated, the timing was nothing if not interesting and, for whatever reasons, there has been no attempt at judicial review. That may be in part because the Board explicitly took no position on whether the tariff is “mandatory” and that question, as everyone knows, is pending in the Federal Court of Appeal and may be headed once again to the Supreme Court of Canada, which will presumably, if necessary, confirm that it said what it meant and meant what it said in 2015 about tariffs not being mandatory for users in the CBC v SODRAC case argued  by yours truly on behalf of Prof. Katz and Prof. David Lametti as he then was, and his CIPP institute at McGill.

The Board’s certified tariff dated December 7, 2019 contained a serious arithmetical error that would have doubled the tariff, which the Board corrected on December 28, 2019.

However, the Board’s decision of December 6, 2019 contained other errors that the Board has attempted to correct by means of an email – NOT a formal notice – on Wednesday, February 12, 2020. Essentially:
  1. The Board mistakenly referred to the Federal Court rather than the Federal Court of Appeal. This is very embarrassing for whoever drafted the decision and whoever was responsible for proof-reading it. The Board has a very large staff considering its very limited caseload. This staff includes five lawyers and an articling student. It has been about three decades since the Federal Court, in contrast to the Federal Court of Appeal, has been involved in any review of Copyright Board matters. Even first year law students quickly learn the difference between the Federal Court and the Federal Court of Appeal. Surely everyone at the Board knows the difference. That makes it even more astonishing that this error wasn’t caught.
  2. More seriously, the Board had erroneously referred in its December 6, 2019 decision to a non-existent attempt by Prof. Ariel Katz to ask the Federal Court of Appeal to review the Board’s refusal of his request for a reference to the Federal Court of Appeal on a question of law. That was not only false and misleading. It cast Prof. Katz in a less than flattering light and showed the Board’s lack of familiarity with an important milestone in this long and still very much unresolved file.
  3. The Board has confessed to the first error – but notably ignores the second and far more serious one in its emailed notice.

These errors involve none other than Prof. Katz, who provides full details of all of this on his blog entitled Oops, the Board did it again, and again, and again,  along with details of the more serious substantive error of the Board in completely ignoring in its decision the important evidence that Prof. Katz had duly provided to the Board on the crucial issue of Access Copyright’s repertoire – and notable lack thereof.

The Copyright Board apparently doesn’t even deem it necessary to indicate that the decision has now been corrected and revised. To date, there has to date been no official “Notice” on the Board’s website. The failure of the Board to deal adequately with these errors has now resulted in the existence and likely persistence of two “official” versions of this decision, one of which contains on its face a rather significant error that the Board has not even acknowledged and apparently doesn’t wish to acknowledge.


Monday, February 10, 2020

Two New Mass Copyright Lawsuits – Rambo: Last Blood & Angel Has Fallen

Here two more mass copyright lawsuits involving films in Canada:
Both actions are from the usual law firm – Aird and Berlis, LLP.

Presumably, “Norwich Orders” will be sought in both cases for the internet service providers (“ISPs”) to disclose the actual names and addresses behind the IP addresses.

It will be interesting to see if any of the ISPs will step up to the plate to determine if the Norwich Orders are indeed justified and, if appropriate, to stand up for the privacy interests and rights of their subscribers.


Thursday, February 06, 2020

Update on Allarco Litigation – Allarco’s Potential Exit Costs in the Federal Court

As I wrote earlier on January 29, 2020,  Allarco is liable to pay costs arising from its discontinuance of its “unusual” (as I described it) Federal Court action. Moreover, Allarco is liable to pay costs of the lengthy motion hearing of January 23, 2020 supported by a reportedly very large amount of documentation in which is sought unsuccessfully to punt on the Federal Court costs issue and kick it over to Alberta or, alternatively. to adjourn or stay the costs matter and a “laundry list” of other requests for relief. As the Case Management Judge Furlanetto noted in an unusually blunt order dated January 27, 2020:

The evidence that the Plaintiff filed on the adjournment motion was lengthy and included five affidavits, including two from experts, the vast majority of which was not relevant to the requested adjournment and related to issues involving the merits of the proceeding. None of the affidavits were previously filed in the proceeding, although one asserted it was in support of a motion for interlocutory injunction, which had never been brought in the proceeding and was not pending before the Court.

As I noted, Allarco has discontinued its Federal Court action and started a new one – including an application for an interlocutory injunction – in the Alberta Court of Queen’s Bench. This is presumably because the Alberta court in theory has a wider jurisdiction to rule on some of the more unusual claims being advanced, such as conspiracy, intentional interference, etc.

Pursuant to the Order of the Case Management Judge, the “4Stores” retailers (as they are being called), have submitted material on February 3, 2020 to substantiate their costs demands. Here is my summary of the bottom line of the amounts they are seeking:
Allarco adjournment etc. motion heard January 23, 2020 – costs sought by 4Stores:                       $74,123.70
Costs following discontinuance sought by 4Stores: 
Total Costs sought by 4Stores in Federal Court as of February 3, 2020:

Allarco will have until February 13, 2020 to respond and the 4Stores will have until February 18, 2020 to reply.  The Court indicated that “The Defendants’ motion for costs shall thereafter be dealt with based on the written record filed. Should the parties be of the view that additional oral submissions are needed, such request shall be dealt with through case management.”

This is an unusually large amount of costs being sought upon discontinuance at such an early stage of litigation in the Federal Court. That said, this is very “unusual” litigation and the proceedings to date have been very unusual. All the parties are sophisticated, and all the counsel are experienced. So, this is bound to be interesting and potentially important.

I’ll update as soon as I have further useful information.


PS - May 14, 2020

Here's the Federal Court Docket entry  from May 13, 2020.

Order dated 13-MAY-2020 rendered by Angela Furlanetto, Prothonotary Matter considered without personal appearance The Court's decision is with regard to Motion Doc. No. 19 Result: 1) Defendant Staples Canada awarded costs of $19,700.28; 2) defendant Best Buy Canada awarded costs of $19,978.50; 3)defendant Canada COmputers awarded costs of $2,066.93; 4) defendant London Drugs awarded costs of $17,671.16; 5) Costs shall be paid by plaintiff within 60 days of end of suspension period under 29-APR-2020 Practice Direction (re: Covid-19). Filed on 13-MAY-2020 copies sent to parties entered in J. & O. Book, volume 1453 page(s) 386 - 402 Interlocutory Decision

That's a total of $59,416.87‬ - much less than the total amount sought. I am trying to determine whether there's still more to come and to obtain any written reasons that the Court may have provided. This is not easy at this time due to COVID.

PPS - May 20, 2020

Here's the Court's Order of May 13, 2020 regarding costs. 

Wednesday, January 29, 2020

Update on Allarco’s “Unusual” Litigation

Here’s an update on the Allarco’s copyright + countless other alleged causes of action and claims against four of Canada’s most prestigious retailers and 50,000 John Doe Customers for selling unspecified devices from unspecified suppliers and somehow infringing copyright in unspecified works and trademark rights in unspecified trademarks, conspiracy, circumvention, stealing, intentional interference, etc., etc., etc…. Here’s my earlier post on how the retailers had predictably attacked Federal Court pleading. Here once again is the Federal Court docket.

Allarco (aka Super Channel) discontinued its lawsuit in the Federal Court on January 6, 2020. Meanwhile, Allarco had started a similar action in the Court of Queen’s Bench in Alberta on December 6, 2019. Here’s that newer Statement of Claim, which adds unspecified John Doe suppliers as defendants and seeks $50,000,000 in damages and has a few other differences from the Federal Court action.

Although this litigation was at an early stage in the Federal Court in terms of procedural steps, the retailers have clearly already been put to considerable trouble and expense and are understandably seeking substantial costs arising on a solicitor and client (i.e. substantial indemnity) basis arising upon the discontinuance. Motions and countermotions were heard on this on January 23, 2020 which resulted in this lengthy and unusually blunt order dated January 27, 2020 which suggests that the retailers will indeed be awarded substantial costs arising from the discontinued Federal Court action.

As the Court correctly noted:
Rule 402 expressly provides that the Defendants are entitled to their costs payable forthwith upon discontinuance. Pursuant to Rule 412 these costs may be assessed upon filing of the notice of discontinuance. The Plaintiff has not displaced this presumption.
Meanwhile, back in Alberta, Allarco had scheduled an injunction hearing on January 22, 2020 – the day before the long-scheduled January 23, 2020 Federal Court hearing mentioned above. That injunction hearing has now been adjourned to May 7 and 8, 2020 and a schedule has been set for cross examinations, etc.

It will be interesting to see what happens in the Alberta Court of Queen’s Bench. While the Alberta court in principle can cast a wider jurisdictional net than the Federal Court in terms of weird causes of action such as conspiracy, intentional interference with business, contractual and economics interests, relations, etc., that won’t make any difference if the underlying facts, particulars, and ultimately the evidence, if it gets that far,  are just not there.

Among the more inexplicable aspects of the first pleading was a reference to s. 420 of the Criminal Code – which refers to buying, receiving, or detaining …”any military stores that are owned by Her Majesty or for which the member, deserter or absentee without leave”. That is now gone from the new pleading. Some of the colourful language in the earlier pleading that reappears in the new one includes: 
59. The actions of the 4Stores constitute a public nuisance in that they encourage a culture of dishonesty and theft within the general public in Canada which is promoted by 4Stores. The 4Stores fashion and promote themselves as industry leaders and educators in the promotion, education, and guidance of Canadians in the electronic devices market while acting to the contrary.60. The actions and omissions of the 4Stores as pleaded herein are high handed and advertently misleading in the pursuit of profit and unreasonably interfere with the public's interest in questions of honesty, conscience and morality and preservation of Canadian Culture., including ethnic and indigenous Canadian culture. As such they merit the award of punitive damages or the maximum level of statutory damages prescribed in the Copyright Act.(highlight added)
I said in my earlier blog that “I can safely say that in nearly four decades of being an intellectual property lawyer, I have never seen a more unusual Statement of Claim.” That may have been an understatement. If anything, I would say that the new Statement of Claim with its addition of the “John Doe Suppliers” as defendants seems even more “unusual”.

Allarco is asking for “costs of this action on a solicitor and client basis, plus GST, or HST, including all disbursements and costs of tracking and communicating with Customers”. Of course, there’s an old adage about "Live by the sword, die by the sword". If this new litigation goes badly for Allarco and Allarco becomes liable for solicitor and client costs, it is not difficult to imagine such costs rather quickly amounting to six or even seven figures.

Meanwhile, let’s keep tabs on how much Allarco will be on the hook for costs to date in the Federal Court, including the costs of its apparently forceful and lengthy but predictably unsuccessful attempt to punt on the Federal Court costs issue and kick it over to Alberta or, alternatively. to adjourn or stay the costs matter and a “laundry list” of other requests for relief. As for Allarco’s motion of January 23, 2020, the Court ordered that “Costs of this motion are awarded to the Defendants in an amount to be fixed and payable forthwith with the remainder of the costs for the action.”

I’ll post more about the forthcoming injunction proceeding and/or other developments when I get copies of the basic publicly filed documents. It would hardly be surprising if the defendant retailers attack this highly “unusual” Alberta Statement of Claim for the similar reasons that they were poised to proceed with in the Federal Court. Indeed, it would be surprising if they do not do so.

It’s too early to speculate about what Allarco will attempt do and what the Court might let it do about the 50,000 John Doe Customers or the now added John Doe Suppliers and how their interests will be represented if things ever get anywhere near that far.