Wednesday, November 28, 2012

SOCAN's Position at the Copyright Board on SCC ESAC Judgment and Making Available Right



From:                     "Estabrooks, Matthew"
To:                            XXXXXXXXXXXXXXXXXX
CC:                          , "Watt, Lynne" ...
Date:                       28/11/2012 11:30 am
Subject:                  Making Available Right

Dear Counsel/Tariff 22 Objectors,
  
We are writing in connection with the recent coming into force of
several sections of Bill C‑11 (Copyright Modernization Act) on November
7, 2012.  Among those sections is the new section 2.4(1.1), which reads
as follows:

 2.4(1.1)  For the purposes of this Act, communication of a work or other
subject‑matter to the public by telecommunication includes making it
available to the public by telecommunication in a way that allows a
member of the public to have access to it from a place and at a time
individually chosen by that member of the public.
  
It is SOCAN's position that the new making available right ("MAR")
renders moot and inapplicable the recent conclusion reached by the
Supreme Court of Canada in ESA v. SOCAN, 2012 SCC 34, (and the Rogers
companion case) that the Act's section 3(1)(f) communication right does
not apply to downloads of musical works.  SOCAN's position is that, as a
result of new section 2.4(1.1), users of music on the Internet are
liable to pay communication right royalties to SOCAN when they post
musical works on their Internet servers in a way that allows access to
them by their end‑user customers, irrespective of whether the musical
works are subsequently transmitted to end‑users by way of downloads,
streams or at all.
  
We are aware that a number of objectors take a different position and
the legal implications of the new MAR will therefore have to be
determined by the Board.  The issue has already been put "on the table"
as part of upcoming proceedings for the determination of SOCAN Tariff
22.A for Online Music Services.  However, the issue is not limited to
Tariff 22.A uses and may be relevant to Objectors to the other
components of Tariff 22 as well.  For that reason, we suggest that the
Tariff 22.A procedure on this legal issue be expanded to include all
participants who may have an interest in its determination.  Our
understanding is that a number of Objectors would be amenable to
proceeding in that manner.
  
In SOCAN's view, this is a pure legal issue that can and should be
determined by the Board without the need of interrogatories and/or the
presentation of new evidence, with the following steps:
 
No later than Friday, December 21:        Filing of Legal Brief by SOCAN
 
No later than Friday, February 1:            Filing of Legal Briefs by
Objectors
 
No later than Friday, February 15:           Filing of Reply by SOCAN

 Date to be determined for oral arguments, if deemed necessary.
 
We look forward  to hearing your response to SOCAN's proposal as soon as
possible.
 
Matthew Estabrooks
Associate
T 613‑786‑0211
matthew.estabrooks@gowlings.com

 ________________________________

Gowling Lafleur Henderson LLP
Lawyers * Patent and Trade‑mark Agents
160 Elgin Street, Suite 2600
Ottawa, Ontario
K1P 1C3 Canada
T 613‑233‑1781  F 613‑563‑9869
gowlings.com

                                



Tuesday, November 27, 2012

Teva Responds to Pfizer Motion to SCC to Amend or Re-hear

File:Viagra in Pack.jpg 
(Wikimedia)

I wrote recently about Pfizer's unusual  motion to the Supreme Court of Canada to amend its judgment or to re-hear the Viagra patent case regarding the Court's declaration that the '446 patent is void in rem. Pfizer's material can be found on my earlier posting here.

TEVA filed its response on November 26, 2012 which is available here.

The Canadian Generic Pharmaceutical Association (CGPA) response is here.

HPK

Monday, November 26, 2012

WORKING COMMITTEE ON THE OPERATIONS, PROCEDURES AND PROCESSES OF THE COPYRIGHT BOARD

As sent by the Copyright Board earlier today:
*****************************

 From: Claude.Majeau@cb-cda.gc.ca [mailto:Claude.Majeau@cb-cda.gc.ca]
Sent: November-26-12 3:51 PM
To: XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
Cc: Mario.Bouchard@cb-cda.gc.ca; Gilles.McDougall@cb-cda.gc.ca
Subject: WORKING COMMITTEE / COMITÉ DE TRAVAIL (Copyright Board / Commission du droit d'auteur)


WORKING COMMITTEE ON THE OPERATIONS, PROCEDURES AND PROCESSES OF THE COPYRIGHT BOARD

Having met with all of you in Ottawa, Toronto and Montreal to discuss issues of interest to the Board and its clients, I have now asked the Board’s General Counsel,
Mario Bouchard, to lead and facilitate a committee whose mandate is described below.

Glenn A. Bloom, Casey Chisick, Gilles Daigle, Mark Hayes, David Kent, Jay Kerr-Wilson, Colette Matteau and Marek Nitoslawski have accepted the Board’s invitation to participate in the committee. The committee may ask the views of others in the course of its deliberations.

I have asked the committee to prepare its terms of reference, including mandate, structure and operations. I expect that the committee will wish to focus generally on (a) proposing possible changes to procedures and processes that may lead to Board proceedings being more efficient and, possibly, less costly, (b) considering improvements to other aspects of Board processes and operations that may enhance the quality of the Board’s services to collectives, copyright users and the public in general, and (c) identifying other issues where improvements may be required and which may be addressed as time and resources allow. As part of this exercice, the committee might also wish to identify more specific recommendations, on a small number of issues, and that can be addressed relatively easily, in the hope of delivering significant improvements fairly rapidly.

I know you will join me in thanking in advance the members of the committee for their contribution.

-----------------------------------

COMITÉ DE TRAVAIL SUR LES OPÉRATIONS, LA PROCÉDURE ET LES PROCESSUS DE LA COMMISSION DU DROIT D’AUTEUR

Vous ayant tous rencontré à Ottawa, Toronto et Montréal afin de discuter de questions intéressant la Commission et sa clientèle, j’ai maintenant demandé à l’avocat général de la Commission,
Mario Bouchard, d’agir à titre de leader et de facilitateur d’un comité dont le mandat est décrit plus bas.

Glenn A. Bloom, Casey Chisick, Gilles Daigle, Mark Hayes, David Kent, Jay Kerr-Wilson, Colette Matteau et Marek Nitoslawski ont accepté l’invitation de la Commission de participer au comité, qui pourra demander le point de vue d’autres personnes dans le cadre de ses travaux.

J’ai demandé au comité d’établir son cadre de référence, y compris son mandat, sa structure et son fonctionnement. Je m’attends à ce que ses efforts visent généralement (a) à proposer des changements de procédure et de processus pouvant permettre aux affaires devant la Commission de se dérouler de façon plus efficiente et, possiblement, moins coûteuse, (b) à envisager des améliorations à d’autres aspects du fonctionnement de la Commission, lui permettant de livrer des services de meilleure qualité aux sociétés de gestion, aux utilisateurs du droit d’auteur et au public en général, et (c) à identifier d’autres aspects susceptibles d’amélioration et dont on pourrait traiter en fonction des disponibilités en temps et en ressources. Dans le cadre de cet exercice, le comité voudra peut-être également préparer des recommandations précises visant un petit nombre de questions relativement facile à aborder, afin de permettre des améliorations significatives de façon assez rapide.

Je sais que vous vous joindrez à moi pour remercier à l’avance les membres du comité pour leur contribution.
 Claude Majeau
Vice-Chairman & CEO / Vice-président et premier dirigeant
Copyright Board of Canada
Commission du droit d'auteur du Canada
56 Sparks - Suite/Bureau 800
Ottawa ON  K1A 0C9
Tel: 613-952-8625

Thursday, November 22, 2012

Competition for Viagra on the Rise

It didn't take long after the SCC's decision of November 8, 2012  for the generic drug companies to get their Notices of Compliance for SILDENAFIL CITRATE  to compete with Pfizer's popular brand name drug VIAGRA.

Here's the current list of approved manufacturers:

  1. APO-SILDENAFIL
    Manufacturer: APOTEX INCORPORATED
    NOC Date: 2012-11-16
    Medicinal Ingredients: SILDENAFIL CITRATE
    DIN: Not Applicable
  2. PMS-SILDENAFIL
    Manufacturer: PHARMASCIENCE INC
    NOC Date: 2012-11-13
    Medicinal Ingredients: SILDENAFIL CITRATE
    DIN: 02371626, 02371634, 02371642
  3. DOM-SILDENAFIL
    Manufacturer: DOMINION PHARMACAL
    NOC Date: 2012-11-13
    Medicinal Ingredients: SILDENAFIL CITRATE
    DIN: 02389592, 02389606, 02389614
  4. APO-SILDENAFIL
    Manufacturer: APOTEX INCORPORATED
    NOC Date: 2012-11-09
    Medicinal Ingredients: SILDENAFIL CITRATE
    DIN: 02248201, 02248202, 02248203
  5. RAN-SILDENAFIL
    Manufacturer: RANBAXY PHARMACEUTICALS CANADA INC
    NOC Date: 2012-11-09
    Medicinal Ingredients: SILDENAFIL CITRATE
    DIN: 02383101, 02383128, 02383136
  6. MINT-SILDENAFIL
    Manufacturer: MINT PHARMACEUTICALS INC
    NOC Date: 2012-11-08
    Medicinal Ingredients: SILDENAFIL CITRATE
    DIN: 02393069, 02393077, 02393085
  7. MYL-SILDENAFIL
    Manufacturer: MYLAN PHARMACEUTICALS ULC
    NOC Date: 2012-11-08
    Medicinal Ingredients: SILDENAFIL CITRATE
    DIN: 02392577, 02392585, 02392593
  8. NOVO-SILDENAFIL
    Manufacturer: NOVOPHARM LIMITED
    NOC Date: 2012-11-08
    Medicinal Ingredients: SILDENAFIL CITRATE
    DIN: 02308738, 02308746, 02308754
  9. CO SILDENAFIL
    Manufacturer: COBALT PHARMACEUTICALS COMPANY
    NOC Date: 2012-11-08
    Medicinal Ingredients: SILDENAFIL CITRATE
    DIN: 02372053, 02372061, 02372088
  10. RATIO-SILDENAFIL
    Manufacturer: TEVA CANADA LIMITED
    NOC Date: 2012-11-08
    Medicinal Ingredients: SILDENAFIL CITRATE
    DIN: 02319640, 02319659, 02319667
  11. SANDOZ SILDENAFIL
    Manufacturer: SANDOZ CANADA INCORPORATED
    NOC Date: 2012-11-08
    Medicinal Ingredients: SILDENAFIL CITRATE
    DIN: 02318806, 02318814, 02318822
  12. PMS-SILDENAFIL
    Manufacturer: PHARMASCIENCE INC
    NOC Date: 2012-11-08
    Medicinal Ingredients: SILDENAFIL CITRATE
    DIN: 02317559, 02317575, 02317583
  13. MYLAN-SILDENAFIL
    Manufacturer: MYLAN PHARMACEUTICALS ULC
    NOC Date: 2012-11-08
    Medicinal Ingredients: SILDENAFIL CITRATE
    DIN: 02365375, 02365391, 02365405
  14. GD-SILDENAFIL R
    Manufacturer: GENMED A DIVISION OF PFIZER CANADA INC
    NOC Date: 2012-09-06
    Medicinal Ingredients: SILDENAFIL CITRATE
    DIN: 02392682
  15. REVATIO
    Manufacturer: PFIZER CANADA INC
    NOC Date: 2010-09-16
    Medicinal Ingredients: SILDENAFIL CITRATE
    DIN: Not Applicable
  16. RATIO-SILDENAFIL R
    Manufacturer: RATIOPHARM INC
    NOC Date: 2010-06-08
    Medicinal Ingredients: SILDENAFIL CITRATE
    DIN: 02319500
  17. REVATIO
    Manufacturer: PFIZER CANADA INC
    NOC Date: 2010-01-14
    Medicinal Ingredients: SILDENAFIL CITRATE
    DIN: 02341611
  18. GD-SILDENAFIL
    Manufacturer: GENMED, A DIVISION OF PFIZER CANADA INC.
    NOC Date: 2007-02-16
    Medicinal Ingredients: SILDENAFIL CITRATE
    DIN: 02291991, 02292009, 02292017
  19. REVATIO
    Manufacturer: PFIZER CANADA INC.
    NOC Date: 2006-05-26
    Medicinal Ingredients: SILDENAFIL CITRATE
    DIN: 02279401
  20. VIAGRA
    Manufacturer: PFIZER CANADA INC.
    NOC Date: 2006-03-10
    Medicinal Ingredients: SILDENAFIL CITRATE
    DIN: Not Applicable
  21. VIAGRA
    Manufacturer: PFIZER CANADA INC.
    NOC Date: 2004-03-08
    Medicinal Ingredients: SILDENAFIL CITRATE
    DIN: Not Applicable
  22. VIAGRA
    Manufacturer: PFIZER CANADA INC.
    NOC Date: 1999-03-08
    Medicinal Ingredients: SILDENAFIL CITRATE
    DIN: 02239766, 02239767, 02239768                     

Sunday, November 18, 2012

A Cautionary Tale of Costly Copyright Litigation Consequences: How to Win a Little and Lose a Lot

I blogged a few months ago about a case in which a former New Yorker named Catherine Leuthold sued the CBC for copyright infringement over the “honest mistake” (as the Court called it) of the unauthorized reuse of 18 seconds worth of a few of her still photographs in a documentary about 9/11. She tried to get $21,554,954.25 plus a portion of the CBC’s revenues. This astounding sum was based upon a theory, inasmuch as I can understand it, that each of the CBC’s 800 or so participating affiliated stations and Broadcasting Distribution Undertakings [BDUs] gave rise to a separate act of infringement. Not surprisingly, the Court did not agree. She was awarded $19,200 ((six times $3,200) on the basis as found by the Court that “Miss Leuthold could have negotiated a higher license fee than the initial $2,500.00 in view of the repeated usage.”

This was not a case of “theft” or “piracy”. It was apparently nothing more than six inadvertent reuses beyond the original licensed use. She recovered less than 1/1,000 of what she sought. Her initial license fee for one use was $2,500.

…an American photographer named Catherine Leuthold sought $21,554,954.25 from the CBC and one of its employees personally for the mistaken re-uses of a few of her stills from 9/11.
At the end of the day, the Court quite predictably rejected her frankly astonishing suggestion that each transmission from each of the CBC’s hundreds of “distribution undertakings” warranted separate claims for damages, and awarded $3,200 for each of six unauthorized broadcasts, to which the CBC had admitted – i.e. $19,200. Even this amount was arguably generous under the circumstances and given the evidence.

The Court reduced Ms. Leuthold’s claim of $92,998 for her alleged entitlement to a share of Newsworld’s revenue to $168.74.

I also said:
The plaintiff was awarded about 0.0009 or less than one thousandth of what she was seeking. And she has yet to learn what the costs order will be. Her counsel apparently acknowledges … that costs could be awarded against her.

By seeking so much and recovering so little (and there were other unsuccessful claims for relief), the Plaintiff  was at very great risk for costs, if the CBC had availed itself of the benefit of the Federal Courts Rules by offering a timely and strategic settlement offer – which it turns out was exactly what happened. The case lasted for seven years and there was a six day trial and a very lengthy docket of motions, etc.

The costs issue has now come home to roost. In an order and reasons for order from Justice Scott dated October 29, 2012, the Court has predictably ruled under the Federal Courts Rules that Ms. Leuthold must pay CBC double the costs it would otherwise be entitled from August 9th, 2005. That was the date that the CBC served an offer to settle to the Plaintiff for an amount of USD $37 500 USD plus interest, which Ms. Leuthold rejected. The offer also included the costs of the action up to the date of the offer on a party and party basis.

Ms. Leuthold made some headway on this costs matter in a few respects. Most notably, the Court also allowed for a deduction on account of the “vexatious conduct of the defendant s during the discovery of [individual] defendant Jerry McIntosh”. But, but none of this is very significant in light of the foregoing ruling re double cost liability. The Court also added that she must pay for:
(a) the fees and disbursements of the experts heard at the hearing;
(b) all disbursements, including travel expenses for witnesses, photocopy fees, online research fees, transcript fees for examinations for discovery and the hearing, long distance fees, fax fees, postage and courier fees and other administrative fees;
(c) interest on fees and disbursements since June 14, 2012.

It goes without saying that she is also responsible for whatever she is obligated to pay to her own lawyer.

The Court notes that Ms. Leuthold’s taxable income in 2006 was $20,661 USD. The actual amount of costs assessed for the trial and proceedings leading up to it, which will then be doubled, has not yet been determined. However, it is safe to predict that it could be many, many times Ms. Leuthold’s taxable income for 2006.

An interesting aspect of all of this is that Ms. Leuthold reportedly lived in New York on 9/11 and is now reported to be living in Maine. Security for costs is normal when a plaintiff is ordinarily resident outside of Canada. A plaintiff can avoid such an order if impecuniosity can be demonstrated and the Court is of the opinion that the case has merit. Curiously, the CBC - which is subsidized by taxpayers to the tune of more than $1 billion per year - did not ask the Court for an order for security of costs. Interestingly, Ms. Leuthold also has another action pending in the Federal Court against CABLE TV CAMROSE INC. ET AL that has been stayed pending the outcome of the CBC action.

The security for costs mechanism exists for the obvious reason that it can become much more difficult for a Defendant that has been awarded costs to collect costs from a Plaintiff outside of Canada, even if the Plaintiff has the means to pay such costs. The prospect of an order for security for costs can sometimes serve as a very useful reality check for foreign plaintiffs who may not have a strong case and/or do not fully understand the Canadian litigation system. I have used it elsewhere to precisely such effect.

Ms. Leuthold is certainly persistent and determined. She is pursuing her appeal of the substantive decision. The appeal book consists of ten volumes. This will be a costly appeal. It remains to be seen if she will also try to appeal the costs award. Depending on the outcome of all of this, she potentially may be on the hook for a great deal more costs.

Unless there is a surprise ending, it may turn out that Ms. Leutholds’ costs in this case could easily run well into at least six figures, all in order to recover a little over $19,000 when she had been offered $37,500.

While this saga is clearly not yet over, it’s safe to say once again that copyright plaintiffs may wish to consider – as I’ve often said – the old adage of “be careful what you wish for”.

HPK