Tuesday, May 30, 2017

The Canadian Nintendo Circumvention Decision – Should it be given “high precedential value”?

The Federal Court of Canada on March 1, 2017 rendered a lengthy judgment in favour of Nintendo dealing with copyright infringement and circumvention. It is the first significant reported superior court decision on the 2012 anti-circumvention measures in Canada’s Copyright Act.  The Court expressed explicit awareness of the potentially “high precedential value of the expected outcome” of this case. However, due to certain unusual aspects of how this case unfolded, jurists, academics, and future litigants might question the precedential value of the decision.

Here, in the Court’s words, is the explanation of how and why this judgment was rendered:
[11] As to the nature of the decision to be rendered in conclusion of the litigation, Counsel for the Applicant stated the Applicant’s interest in developing the law with respect to TPMs, their circumvention, statutory damages, and enforcement measures to the benefit of the industry concerned in Canada and globally. Given the high precedential value of this expected outcome, at my request, Counsel for the Applicant agreed to supply a final consolidated written argument stating the terms that the Applicant would prefer to be the substance of the final determination of the litigation, to be served and filed on Counsel for the corporate Respondent to allow a potential reply.
[12] The argument was prepared, served, and filed, and by letter dated December 19, 2016, Counsel for the corporate Respondent replied “kindly be advised that the Respondent will not be filing additional representations…”.
[13] In the result, to fairly and appropriately acknowledge the precise, clear, well supported, and effectively uncontested final argument prepared by Counsel for the Applicant, with which I fully agree, I find that the Applicant is entitled to have the final argument, as stated below, as my reasons for decision in the present litigation.
(highlight and emphasis added)

Here is some further context and analysis.

In the instant Nintendo decision, the Court awarded against the corporate defendant:
a. $11,700,000 in statutory damages pursuant to s. 38.1 of the
Copyright Act in respect of circumvention of technological
protection measures;
b. $60,000 in statutory damages pursuant to s. 38.1 of the Copyright Act in respect of copyright infringement of the Header Data works;
c. $1,000,000 in punitive damages
… [interest award]
f. costs, assessed under Column V of Tariff B to the Federal Courts Rules.

After the individual Respondent agreed to a consent judgment against him for $70,000, the case was “effectively uncontested”, as the Court noted. This was an “application” and not an “action”, which means that evidence can only be put in by affidavit and there are no “live” witnesses.   The Respondents had filed written representations before the commencement the hearing but provided no evidence and did not cross-examine any of Nintendo’s witnesses on their affidavits.

The Court requested and received further written final supplemental written submissions before the conclusion of the hearing.  The respondents did not, although entitled, reply. Indeed, the Respondent’s counsel did not appear for the final oral argument.

The Court proceeded on this basis to render a judgment in which all but the introductory 14 paragraphs of this 181 paragraph 51-page judgment are a virtually verbatim reproduction of Nintendo’s final supplemental written submissions. Paragraphs 14 and thereafter until the conclusion of the judgment track paragraphs 14 and thereafter of Nintendo’s supplemental written submissions.

There is nothing necessarily improper about a judge copying material from a party’s memorandum. The learned and very experienced trial judge provided acknowledgement of his request for the supplemental written submissions and how they were used. That satisfies a requirement that has been dealt with by the Federal Court of Appeal in Apotex Inc. v. Janssen-Ortho Inc., 2009 FCA 212 (CanLII), where the need for explicit “acknowledgment” of the adoption of a party’s written submissions was addressed. For those further interested in jurisprudence on what the Supreme Court of Canada recently referred to as “the long tradition of judicial copying”, see  Cojocaru v. British Columbia Women’s Hospital and Health Centre, [2013] 2 SCR 357, 2013 SCC 30.

The real issue here is that the judgment makes some sweeping pronouncements and awards an enormous amount of very likely uncollectable damages based upon “effectively uncontested” arguments and unchallenged evidence that, in the result, leaves the Court with something not much different than a default proceeding. This left the Court without the benefit of full submissions and argumentation on some of the key issues and relevant case law. That is not the way the adversarial process normally works when we depend on it to generate binding precedents. In this case, we now have a judgment that, with respect, may be wrong in certain important aspects because the Court did not have the benefit of opposing arguments.

Nintendo’s argument, as adopted into the decision resulted in an enormous – by Canadian standards – unprecedented award of statutory damages in respect of circumvention of TPM measures. It is based upon the Court’s conclusion that Nintendo is entitled to the maximum level of $20,000 of statutory damages are due “for each of the 585 Nintendo Games to which the Respondent’s circumvention devices provide unauthorized access” (para 141 if Judgement). (emphasis added).

However, it is very doubtful that Nintendo was entitled to damages for “each” of these 585 works when there was no evidence that any of them were actually illegally copied by anyone. Moreover, it appears that the Court was not provided with arguably very relevant case law that might have at least resulted in an award of a nominal fraction the maximum statutory damages of $20,000 per work. One can only begin to imagine the absurd result if such an approach to damages were used, for example, against a researcher (e.g. a university professor or student) who somehow gains unauthorized access to a newspaper website or other research database, perhaps reads a single article, is found to have “circumvented” a TPM, and is then held liable for $20,000 for each the tens or hundreds of thousands of individual articles that were never downloaded or even read on the website.

The reasoning with respect to the physical configuration of the Applicant’s game cards as an effective TPM for controlling access to the Nintendo Games is seriously worrisome. Does this mean that an arbitrary un-patentable design for a cable connector or any other physical interface involved in a so-called proprietary system can become a TPM for Copyright Act purposes? This could have immensely anti-competitive implications, for example with respect to the market for ear buds or selfie sticks or another smart phone accessories.

In my respectful view, given the “effectively uncontested” nature of this proceeding and the novel and important issues that were raised, the learned Judge could or should have merely entered a non-precedential decision with a minimal recitation of the “effectively unopposed” factual outline, just as he did for the individual respondent.  That would serve a deterrent effect – just as the consent order for an enormous judgment against Gary Fung and iSoHunt has no doubt done to some extent – but not result in any legal precedent and particularly not an arguably incorrect legal precedent. Such a non-precedential decision would have consistent with Chief Justice Crampton’s recent NOTICE TO THE PARTIES AND THE PROFESSION PUBLICATION OF DECISIONS OF PRECEDENTIAL VALUE June 19, 2015, which allows for:
Non-Precedential Decisions
Final decisions that are considered by the presiding judicial officer not to have precedential value are normally issued in the form of a “Judgment”, without detailed reasons. These decisions will not be given a neutral citation number and will not appear on the Court’s website. Interlocutory decisions that are considered not to have precedential value are normally issued as an “Order,” again without detailed reasons, in which case they are not given neutral citation numbers and are not posted on the Court’s website. This category typically includes “speaking orders” or “endorsement”-style decisions, including judgments rendered orally in open court and reduced to writing thereafter.
Interestingly, the same learned Judge in 2013 awarded an eye-catching sum of $10.5 million of statutory damages in a default judgment in Twentieth Century Fox v. Hernandez. This was, quite properly, an unreported case. Nonetheless, it got some attention in the media and blogosphere. Here is Prof. Scassa’s comment and here is a link to a privately posted copy of the judgment as provided by Prof. Scassa. Once again, although the Nintendo case was not technically a default situation, it was quite close to it for practical purposes. It might have been better if the learned judge had used a similar approach here to send a message without necessarily setting an arguably binding and arguably substantively incorrect precedent.  This would have received lots of attention but not resulted in potential questions as to the very precedential value or weight of the decision.
On the one hand, one can be sympathetic to Nintendo wanting a precedential judgment in this proceeding, given the resources it applied to the case and the issues at stake. To Nintendo’s credit, this was not a “default” proceeding – although it effectively comes quite close. It does not, however, necessarily follow that this decision should be given “high precedential value”.
On the other hand, one must be wary of the potential that powerful parties can effectively write their own judgments by suing much weaker parties who don’t simply default but cannot begin to fully fight back. One thoughtful commentary on this case comes from Ariel Thomas at Fasken’s, who at least poses the questions of “Can a party write its own judgment?” and “Is this the first of several judgments to come that is actually written by one of the parties?”.
Most of the comments to date have uncritically suggested the precedential importance of this case without digging deeper into the circumstances behind it.
Michael Geist was perhaps first out of the gate to point out how sweeping the decision is, although he does not question its precedential value.  John McKeown, another respected commentator, has written about the decision but questions it only to the extent of noting that “the amount of statutory damages ordered to be paid may also be a function of the fact that the case was in effect uncontested”. There have been a number of other commentaries, and ALAI has even scheduled an event on April 30, 2017 about this case.
In the end, the process in this case did not provide the trial judge with the benefit of a balanced adversarial exploration of the critical issues before him. A full hearing is crucial to the fundamental principle of stare decisis. The Nintendo decision raises some interesting questions in this respect and should not, as a result, be given “high precedential value”.

Monday, May 01, 2017

Canada Won the Eli Lilly NAFTA ISDS Battle Bigly but Who Will Win the War?


As everyone knows by now, Canada supposedly “won” the Eli Lilly NAFTA case. Prof. Richard Gold suggested in a tweet that there is an analogy here to Vimy Ridge, which was recently and rightly on the mind of all thinking and caring Canadians.

Indeed, just like Vimy, the Eli Lilly win was costly, important and empowering. But just as WWI, which was supposed to be “the war to end all wars” went on for a long time afterwards and WWII soon followed, the Eli Lilly case was only a battleground victory and not the end of the Investor State Dispute Resolution (“ISDS”) wars.

Moreover, unlike Vimy, it may not have been necessary or even desirable for Canada to risk this Eli Lilly ISDS battle. However, we did and we “won”. Let Canada celebrate this success but it is much too early to declare victory in the ISDS wars. It may even be the case that this was a “Pyrrhic Victory”, as the influential scholar Robert Howse suggests and I discuss below.

Now that NAFTA is apparently about to be renegotiated in a very uncertain and unstable political and trade climate, it is important that Canada learn whatever lessons is can from this saga.


It will be recalled that on May 13, 2013, a panel of the Supreme Court of Canada (“SCC”) with presiding Justice Marshall Rothstein (now retired) held an extraordinarily  rare and very patient oral hearing on whether Eli Lilly should be allowed leave to appeal in a case involving the “promise doctrine”. On May 16, 2013, the Court declined the leave application, as usual without reasons. Here is the webcast of that hearing.

Undaunted by the SCC’s leave refusal, which would absolutely have been the end of the litigation for any Canadian party, Eli Lilly and Company (“Eli Lilly”), an American “foreign investor” and the parent company of Canadian Eli Lilly  decided to launch a NAFTA challenge, which it commenced on September 12, 2013 under the ultra-controversial Investor State Dispute Settlement (“ISDS”) provisions of Chapter 11 of NAFTA. This ISDS mechanism has been used – and sometimes abused – to permit foreign investors to challenge domestic state actions that constitute illegal expropriation, denial of justice, or denial of “fair and equitable treatment”.  

The astonishing and arguably outrageous aspect of the Eli Lilly challenge was that it was frontally challenging a decision of Canada’s highest court. That is something that no Canadian litigant could possibly do – or would even think about. The only recourse to a Canadian litigant that has been to the SCC and has lost or been denied leave to appeal is to seek legislative change, which will rarely follow. That is the basis of the rule of law, the independence of the judiciary, and the sovereignty of this country.

Eli Lilly was not challenging the conformity of the Canadian patent statute with international law. If there were something substantively wrong with Canada’s Patent Act that makes it non-compliant with international law, it could have been challenged in a state to state procedure in the WTO. But that was not and is not the case. Likewise, the Patent Cooperation Treaty has a state to state dispute settlement provision involving recourse at the International Court of Justice.

So, Eli Lilly instead basically sought to have a NAFTA panel of three arbitrators overrule the SCC, which presumably saw no need to hear a case that challenged a long, evolutionary and clear line of Canadian case law. Oh, and by the way, Eli Lilly was now seeking damages in the amount of $500,000,000. A victory for Eli Lilly would not only have been very expensive for Canadian taxpayers. It would have set the stage for many further challenges to Canada’s judicial and political sovereignty and exponentially increased the danger of regulatory and legislative chill.

Here is the “Final Award” released March 16, 2017. Here is the ICSID Archive of all the background material.

Some Perceptions about the Award

Michael Geist, who is not shy when it comes to critical comment on Canadian policy, quickly opined  that:
The Tribunal decision represents an enormous win for the Canadian government and for the supremacy of Canadian law and the judicial system more broadly. The real fears that dispute settlement could be used to override Supreme Court of Canada decisions lies at the heart of concern with ISDS provisions that have found their way into trade agreements such as CETA and the TPP. (highlight added)

Richard Gold, a very independent and highly respected Canadian academic at McGill who is Canada’s leading patent law professor and scholar, has just published an encouraging op-ed in the Globe and Mail an April 6, 2017 in which he concludes:
The win over Eli Lilly only opens the door of possibility. It provides us freedom to do what we need to do to have a sustainable innovation policy and bring wealth and wellbeing to Canadians. Now, we face the hard part: What we do with that freedom.

Nathaniel Lipkus has stated in Policy Options on April 7, 2017 that:
The good news is that we no longer need to worry that trade tribunals will become supranational courts of appeal over domestic property law disputes.

As will be seen below, Robert Howse is more pessimistic and I tend to agree with him.

Why I am Less Enthusiastic

In my respectful view, Canada gambled and won an important victory in an arguably avoidable and unnecessary battle in this instance, but it is far from clear that that the ISDS wars are over. Canadian political and judicial sovereignty remain seriously at risk.

In the ISDS proceeding, Canada chose to acknowledge that “a State is responsible in international law for the conduct of its organs, including the judiciary”. (paras 175 and 186) and argued that “the only substantive obligation under NAFTA Chapter Eleven with respect to judicial measures is to ensure that the investments of an investor from another NAFTA Party are not denied justice. As Claimant has not claimed a denial of justice, the Tribunal need make no further inquiries.” (footnotes omitted, para 186). 

Basically, this means that unless there is proof of corruption or bias or other extremely serious denial of justice, the decisions of the judiciary should not be reviewable under ISDS. Since one cannot even imagine that there would be such a denial of justice in Canada and it was not alleged, that should have been the end of the matter.

However, Canada did not raise this as a preliminary jurisdictional challenge. As I have previously noted and questioned, Canada chose not to have this challenge dismissed initially on purely jurisdictional grounds, namely that the NAFTA ISDS mechanism does not permit a foreign investor to bypass or appeal from domestic courts – except in the obviously inapplicable circumstance in Canada of denial of natural justice such as a result of corruption or bias. One would have thought that there was little risk in such a challenge and that it had a good chance of success – and it turns out that that one would probably have been right. Australia resisted an ISDS challenge of its tobacco plain packaging by Phillip Morris on technical jurisdictional grounds and prevailed. Would a normal defendant refrain from relying on a jurisdictional defence - such as being dragged into the wrong court or a limitation period – in order to take the high road and have a civilized debate on the merits?

Canada argued that

“…that domestic courts are to be afforded substantial deference, and that NAFTA tribunals cannot “second-guess the reasoned decisions of the highest courts of a State”. Respondent relies upon the finding of the Mondev tribunal that even if a domestic court were to elaborate a new interpretation of the law, as Claimant alleges in this case, this is not unexpected in a common law jurisdiction. In the absence of a denial of justice, there would be no violation of Article 1105.” (footnotes omitted) (para 198) (highlight added)

With respect, this is much too polite. “Deference” is a concept that applies when higher courts review findings of fact, discretionary rulings, etc. of lower courts or tribunals. The concept of “deference” implicitly, if not explicitly, concedes that there is jurisdiction but that the higher court will defer to the lower in certain respects. There should be absolutely no jurisdiction for a NAFTA tribunal to review domestic Canadian courts absent evidence of denial of justice. This should not be about deference. It’s about simple and total lack of jurisdiction in the absence of a “denial of justice”.

Instead, Canada chose to take an arguably and unnecessarily dangerous high road and to let this line of argument blend in with the enormously complicated and expensive resolution on the merits.  Not only was this risky because Canada might have lost on the merits and lost half a billion US dollars and set a dreadful precedent. It dignified what should have been a clearly inapplicable process required spending about $CDN 6.5 million of taxpayers’ money – most of which was the time of civil service lawyers calculated at well below private sector rates. Of this amount.  Canada spent almost US $1.4 million on an outside law firm and several experts, including professors making six figure amounts. Canada will only be reimbursed for 75% of its costs of legal representation and assistance – in the amount of CAD $4,448,625.32. There is no explicit explanation for this shortfall of almost $CDN 2 million – despite Canada’s overall success and very discounted rates for its public servants’ time.

Canada predictably won on the “merits” of this dispute. This was hardly surprising. Canada’s case law on the promise doctrine and utility has evolved rationally and coherently over many years and through numerous Federal Court, Federal Court of Appeal and Supreme Court cases since the SCC Consolboard decision of 1981.

The Tribunal stated:

423. Furthermore, the Tribunal finds that Respondent has asserted a legitimate public policy justification for the promise doctrine. In particular, Respondent has explained that enforcing promises contained in the disclosure helps ensure that “the public receives its end of the patent bargain” (particularly but not solely in connection with “new use” and “selection” patents) and that it “encourages accuracy while discouraging overstatement in patent disclosures”. The Tribunal need not opine on whether the promise doctrine is the only, or the best, means of achieving these objectives. The relevant point is that, in the Tribunal’s view, the promise doctrine is rationally connected to these legitimate policy goals. [footnote omitted]

By way of conclusion, the Tribunal stated that:

442. For the above reasons, the Tribunal holds that even if it were to accept Claimant’s position regarding the legal standards applicable to its allegations of arbitrariness and
discrimination, Claimant has failed to establish the factual premise on which its allegations of arbitrariness and discrimination are based. The Tribunal has already concluded that there was no fundamental or dramatic change in Canadian patent law. In the circumstances presented in these proceedings, the evolution of the Canadian legal framework relating to Claimant’s patents cannot sustain a claim of arbitrariness or discrimination going to a violation of NAFTA Articles 1105(1) or 1110(1).
(highlight added)

What did Canada achieve with this arguably needless roll of the dice? Here’s my summary, which is explained a bit more below:

  •    Canada spent about $6.5 million on this case but only recovered about $4.5 million in costs
  •   The Tribunal ruled that “It is not the task of a NAFTA Chapter Eleven tribunal to review the findings of national courts and considerable deference is to be accorded to the conduct and decisions of such courts.” The door is still open to challenges of Canadian judicial decisions “in very exceptional circumstances, in which there is clear evidence of egregious and shocking conduct” (para. 224)
  • It is still open to challenge Canadian judicial decisions, since the Tribunal ruled that in each case, it “will be a matter for careful assessment in any given case, subject to the controlling appreciation that a NAFTA Chapter Eleven tribunal is not an appellate tier with a mandate to review the decisions of the national judiciary.”
  • The Tribunal stated that the Tribunal it was “unwilling to shut the door to the possibility that judicial conduct characterized other than as a denial of justice may engage a respondent’s obligations under NAFTA Article 1105.” (para 223) (highlight added)
  • A “fundamental or dramatic change” in Canadian IP law as determined by the Canadian courts may still open the door to another challenge. Guess what? There is sometimes “fundamental or dramatic change” in legislation or judicial interpretation.  That should not be any basis for an ISDS challenge. That’s why we have legislatures and an exemplary judicial system by any measure.

What Could be Next?

Accordingly, I believe that there could be news ISDS challenges that may slip through the door that the Tribunal is “unwilling to shut” based on these exceptions. Canada may be forced to defend these challenges at huge cost and risk. For example, there is a well-financed lobby of copyright content owners who believe that Canada has lost its way on copyright fair dealing, and who tried unsuccessfully to roll back the CCH v. LSUC decision. While their time may have run out on that and the 2012 amendments, they may be waiting for the next opportunity. We have also seen some blatant and histrionic attacks in recent years on the Copyright Board, including the “renegade” comment from former head of the Canadian Association of Broadcasters in 2005 and the shameful attempt by Music Canada in 2015 to lobby the new Chair, telling him in an astroturf campaign that:

This [Re:Sound Tariff 8] decision discards years of agreements freely negotiated between digital music service providers and the music industry and sends a message to the world that it does not value music as a profession.  This is inconsistent with Canadian values. 

These rates were unprecedented globally – they are one of the world’s worst royalty rates for non-interactive and semi-interactive music streaming.

That Copyright Board decision is now the subject of judicial review in the Federal Court of Appeal. Interestingly, this seemingly straightforward case has been pending after the hearing in February of 2016 for more than 14 months which is very unusual for a Court that normally hands down decisions in a few weeks or six months at the most. If this case turns out badly for the American record industry as represented by Music Canada, and the SCC either refuses leave to appeal or rejects an appeal, don’t be surprised if there is a NAFTA challenge – assuming we still have an NAFTA with ISDS provisions.

Or consider this overheated language from the usually more analytical Richard Owens in a posting last year based upon his op-ed of July 26, 2016 in the National Post concerning a study he did for the MacDonald Laurier Institute (“MLI”):

“Although the Alberta Education case is one of the most egregious examples, it is not in that case alone that the SCC has taken IP jurisprudence down a crooked path.”
(highlight added)

It’s an interesting coincidence that he uses the word “egregious”, which is the same word used by the NAFTA Tribunal to justify its refusal to “shut the door” to review of decisions of the SCC. What can be said about the “crooked path” comment, other than it is more or less contemporaneous with the “crooked Hillary” rhetoric was head before last year’s American election?

His commentary for MLI, which is referred to in the above postings, reads more like a lobbying brief for the publishing industry than any kind of careful analysis. He states:

How Heritage responds to the pressing needs of the educational publishing industry, and the egregiously bad state of copyright law affecting it, will be a real measure of its efficacy. (highlight added)

Words can matter. I don’t know the circumstances of how or why Richard wrote the above stuff. But if this commentary does reflect the view of Canada’s educational publishers, many of whom have foreign parents, we may be facing a NAFTA challenge based upon what Mr. Owens and some of his colleagues may consider to be “egregious” future decisions of our Copyright Board and Courts. Mercifully, any NAFTA claims based upon the 2012 legislation or the 2012 SCC rulings are now time barred. But we are still awaiting first instance decisions on fair dealing from the Federal Court in the Access Copyright v. York University litigation and from the Copyright Board in the Access Copyright Post-Secondary tariff hearing.

I only hope we are not getting into “alternative fact” and “alternative” legal territory Such provocations on the part of various copyright stakeholders and intemperate and even histrionic commentary are potentially worrisome in view of the Tribunal’s refusal to “shut the door” on challenges to domestic courts if somebody thinks and can afford to assert that our courts or legislature has made fundamental or dramaticchange to Canadian IP law. Sometimes, such change is required.

Indeed, if and when Canada enacts plain packaging requirements for tobacco, that industry will no doubt deploy every legal tool available to fight back. A few – or even several - million dollars for an ISDS challenge is small pocket change for this industry. Any delay in such measures or any lessening of their efficacy resulting from the chill effect of an ISDS challenge is money well spent as far as big tobacco is concerned. It seems abundantly clear that big tobacco will challenge any Canadian effort to implement plain packaging.

It may be noted that Phillip Morris International reported net revenues of $US 74.953 billion and net earnings of $US 6.967 billion in its annual report for 2016, which is replete with references to “plain packaging” and notes that Canada is “considering adopting plain packaging legislation”.

The new cannabis legislation, Bill C-45, includes plain packaging,  trademark and copyright related provisions that may well generate litigation focusing on “expropriation” of trade-mark rights and freedom of expression. Who knows if there are foreign investors waiting in the wings ready to light up an ISDS challenge?

Can Canada Afford ISDS?

ISDS, of course, is one of the main contributing factors to the controversy over CETA, the BREXIT crisis and the demise of the TPP. Hopefully, in any NAFTA renegotiation, Canada will be able to either get rid of ISDS or put in safeguards to ensure that nothing like the Eli Lilly case can ever happen again.

It has never been clear why the Canada thought that ISDS in NAFTA was a good idea, and it has certainly not worked to Canada’s advantage. A study published by the CCPA in 2015 documented:

“…. the 77 known NAFTA investor-state dispute settlement (ISDS) claims up to January 1 2015. These include 35 against Canada, 20 against the U.S., and 22 against Mexico. Canada has paid out NAFTA damages totaling over $CAD172 million, while Mexico has paid damages of $US204 million. The U.S. has yet to lose a NAFTA chapter 11 case. All three governments have incurred tens of millions of dollars in legal costs to defend themselves against investor claims.”
            (highlight added)

For those cynical types who look to the “school of legal realism” now and then to explain things, it might be noted that ISDS cases can be very lucrative for those involved. The ISDS community is small and rather closed. It is a very lucrative niche for some retired judges, certain academics and practitioners who are arbitrators – and for the experts involved, especially if there is repeat business. This an area of practice that will not likely go gently into any good night. There may even be some who aspire get into this small ISDS circle and may be reluctant to criticize it, even though they know its shortcomings. 

Some Canadian experts made substantial six figure amounts in this case. A Canadian professor from UNB, who was an expert witness for Eli Lilly was paid US $213,692. A Toronto lawyer, who was an expert witness for the Canadian Government, was paid more than CDN $492,000 – far more even than any of the arbitrators. Much, if not all, of this “expert” testimony would have almost certainly been inadmissible in any domestic Canadian judicial proceedings insofar as it dealt with Canadian law. There were also expensive expert reports about foreign and treaty law. Foreign law is normally irrelevant and wouldn’t be considered by a Canadian court – unless there is a void of applicable Canadian jurisprudence or the Canadian statute is somehow ambiguous and requires reference to a treaty, which was not the case here.

The three arbitrators, none of whom were Canadian and all of whom are clearly very well qualified, made US $259,734.75, $114, 359.20 and $138,872.07. Ironically, several of the “experts” made more than two of arbitrators and one made more than the Chair of the Tribunal, who presumably held the pen in writing the judgment. NAFTA arbitrators get paid US $3,000 per day, which may not seem to be a lot per diem compared to some routine commercial arbitration cases – but these NAFTA cases take a lot of time and the community of arbitrators is said to be rather small.

Eli Lilly spent over $US 8,000,0000 for legal fees and disbursement – mostly to a US law firm and $US 1.3 million on experts, arbitration costs and fees. Their Canadian firm, Gowlings, was paid US $1,577,017.

More detail, including names and amounts, are set out near the end of the award.

The costs of the many Canadian public service lawyers in the Trade Law Bureau who worked on this case were hourly billed at “hourly rates that are substantially lower than those charged in the private sector.” (FN 622 of award).

It may be noted that Eli Lilly USA reported revenue of US $21.2 billion and net income of US $2.7 billion for 2016 and did not even mention the NAFTA case in its 2016 annual report.

So, this is where we appear to stand:

This decision may not stop the next pharma, tobacco, copyright or whatever other ill-considered case from proceeding – at great cost and risk to Canada and pocket change costs to the claimants, who may predictably lose but foment sufficient expense, consternation, controversy and regulatory chill in the meantime to justify the relatively costs in terms of their rent driven revenues. Delay and indecision by Government can be very profitable for certain industries. Do not count on any ISDS tribunal readily declining jurisdiction.

I take some comfort that my general views are backed up by Professor Robert Howse, a distinguished Canadian academic now at NYU who has the best take yet in his piece called “Eli Lilly v Canada: A Pyrrhic Victory Against Big Pharma”
So, what is the real message of the Eli Lilly tribunal? They are not coming out and saying it, but, by implication, they encouraging future regulatory takings claims by implication that the concept of "expropriation" under NAFTA might well apply to require a host state compensate an investor even for jurisprudential shifts in the approach of a country's highest courts to that country's law (including its constitution), if that shift can be characterized as dramatic, radical, or fundamental. It is a matter of the Eli Lilly legal team simply not doing a good enough job proving that the jurisprudential developments in question were dramatic.

When high courts reconsider well established judicial doctrines in the face of social, economic, environmental or other forms of rapid change we experience in the world today they must now beware that any basic or fundamental reorientation of their jurisprudence could force the government of that state to pay out millions or billions to foreign corporations in the guise of an "expropriation" having occurred. Regulatory chill from ISDS is bad enough; but when it comes in a form that makes a nation's highest court choose between its duty as a guardian of the state's legal system (including the revision or reversal of important rulings for compelling reasons) and incurring the state's liability to foreign corporations, the attack is not only on domestic policy space as such but also on the judiciary as the guardian of the law.

Now Back to the Supreme Court of Canada

Of course, all eyes now shift back to the SCC, where the AstraZeneca case was heard on November 8, 2017, with materials available here.  The webcast of that hearing is available here.  It is well worth watching and seeing so many SCC judges so engaged in the intricacies of patent law and asking so many questions. Highest courts are normally very reluctant to get involved in patent cases, which usually turn more on evidence and fact finding than major legal issues.

I posted at length about this case the day before the hearing – and the NAFTA “rogue elephant lurking nearby and possibly even in in the room that I expect will remain almost completely silent and will likely be carefully ignored.”

One never knows exactly why the SCC decides to hear a case or not. As we all know, it decided early in 2013 not to hear about the “promise doctrine” in the Eli Lilly case. It will be recalled that the Eli Lilly NAFTA challenge was commenced on September 12, 2013. Not long thereafter, leave to appeal in was granted in the Sanofi case on January 30, 2014, where the “promise doctrine” was in issue. The Court was all dressed up and ready to go on the actual hearing on November 4, 2014– but the case was dramatically and very unusually settled literally on the eve of the hearing, which may have left the justices and interveners somewhat frustrated. I wrote about this at the time.

In the AstraZeneca case, the Appellant, AstraZeneca made the Court aware on the record in the leave to appeal material and its factum of the Eli Lilly NAFTA challenge. Whether this challenge played any role in the Court’s decision to hear the case is something we may never know. However, it is interesting that the Court has agreed twice since the initial refusal to grant leave in the Eli Lilly case to hear about the “promise doctrine”. Both of these leaves were granted after the Eli Lilly NAFTA challenge was launched.

If the SCC had any intention of ruling in advance of the NAFTA tribunal, it is now, of course, too late. A strong ruling either way might have been of interest to the NAFTA tribunal, which might have had to hear further submissions. But that has not happened.

Indeed, counsel for the respondent in the AstraZeneca case on March 22, 2017 has made the Court aware of the Eli Lilly NAFTA ruling as a “supplementary authority”.  There has apparently been no response. My guess is that the Court will not react to the NAFTA ruling one way or the other, unless by way of obiter dicta, which could be very interesting. The whole point is that Canada’s SCC should have the final word on the application and interpretation of Canadian law and a NAFTA Tribunal has no jurisdictional basis to “second-guess” the decision of any Canadian court, much less the SCC (other than in a “denial of justice” case, which is unthinkable in Canada). So, the SCC has no compelling reason to be interested in anything coming from a NAFTA tribunal.

That said, it would now be ironic if the SCC were to undo a long line of Canadian case law on the “promise doctrine” and to effectively, in its forthcoming AstraZeneca ruling, vindicate Eli Lilly’s position in its unsuccessful NAFTA case and the appeal it declined to hear in 2013.  Tempting as it may be, I will refrain from predicting the outcome. As Yogi Berra said, “It's tough to make predictions, especially about the future'”.  In this instance, one might say that it’s especially tough to make a “sound prediction.”


Blacklock’s Back in Court on May 2, 2017 – How Long will this Litany of Litigation Last?

On Tuesday, May 2, 2017, the Blacklock’s case is back in Court at 9:30 AM in Room 702 at 90 Sparks St. in Ottawa for a case management hearing, where lengthy motion, cross motion and response records and oral submissions will be considered by Prothonotary Tabib. There will likely be a host of counsel representing Blacklock’s and many of the 11 Government of Canada departments and agencies that Blacklock’s has sued. Canadian taxpayers are no doubt going to pay a lot to monitor and participate, even passively, in this “litany of litigation” even while the Attorney General of Canada (“AGC”) takes the lead for the Government. The departments and agencies that have retained counsel other than the AGC are generally using large law firms.

It will be recalled that Blacklock’s badly lost its first test case against Finance Canada in a judgment dated November 10, 2016 that was not appealed. Then, on December 21, 2017 Justice Barnes awarded the Government $65,000 in costs, which was conceivably much less than might have awarded in all the circumstances. Blacklock’s has appealed this award, even though appeals of cost awards are very rarely successful.  In his reasons for the costs award, the learned Judge’ commented that:
[7] …I also reject the Plaintiff's argument that this case raised "strong public interest considerations". Rather, this case was about the Plaintiff's attempt to recover disproportionate damages without any apparent consideration to the legal merits of the claim or to the costs that it imposed on the taxpayers of Canada.
[8] Any reporter with the barest understanding of copyright law could not have reasonably concluded that the Department's limited use of the subject news articles represented a copyright infringement. Indeed, the fair dealing protection afforded by section 29 of the Copyright Act, RSC, 1985, c C-42, is so obviously applicable to the acknowledged facts of this case that the litigation should never have been commenced let alone carried to trial.
(highlight and emphasis added)

This could suggest that future losses by Blacklock’s could result in even higher costs awards against it.

In a nutshell, Blacklock’s wants to go forward with one particular case against the Attorney General of Canada (“AGC”), namely that against Health Canada and one against one of the non-AG Government of Canada agencies, i.e. Bank of Canada, Canadian Transportation Agency of the Library of Parliament. It’s rather unusual for a plaintiff to file and then seek to stay almost all of its own cases – but virtually everything about this litigation has been unusual. Here are Part 1, Part 2 and Part 3 of Blacklock’s Motion Record dated March 21, 2017.

The Government and the other agencies and departments want to ahead with one of the actions on a summary judgment basis because it is said to be indistinguishable on the facts from the previous Finance case, which Blacklock’s lost badly and did not appeal. More interestingly, The Government Respondents want to get a preliminary determination on two threshold questions which potentially affect and, indeed, could effectively bring to an end all the cases, namely:
  •            Whether Blacklock’s even has standing to sue, in light of chain of title and retroactive assignment issues involving the articles alleged to have been infringed
  •       Whether Blacklock’s’ can expect to recover sufficient actual or statutory minimum damages, should it so elect, in an amount sufficient to justify any of this “litany of litigation”.  As I have previously pointed out, there is a limit of $5,000 on statutory minimum damages where the activity is for “non-commercial purposes”. I have also previously mentioned the cautionary tale of Catherine Leuthold, who had hoped to collect $22 million from the CBC, but recovered only $19,200 and was ordered to pay about $80,000 in costs.

Here is the Cross Motion Record of the AGC dated April 4, 2017. Finally, here is Blacklock’s Response to the AGC’s Cross Motion dated April 18, 2018.

An interesting sidebar has begun to emerge prominently from this mass of material and concerns two individuals, namely Nick Fillmore and Mark Taliano. I have previously posted the pleadings in Blacklock’s Ontario Superior Court case against them. See the Statement of Claim against Fillmore and Taliano here  and the Statement of Defence here. The AGC included in its Motion Record dated April 4, 2017 a short Affidavit from Mr. Nick Fillmore (highlight added) in which he explains why he and Mr. Taliano, as individuals, agreed on December 16, 2016 to pay Blacklock’s a total of $21,750 within 60 days. He also noted that they had incurred legal and mediation fees of about $8,000.

This was apparently included and referred to by the AGC to make the point, inter alia, that “The Court has found that Blacklock’s claims disproportionate damages, and that other institutions have settled for business reasons”. The AGC notes  that “a community organization made up of volunteer retirees  was forced to settle because its members could not afford to pay the substantial legal fees required to defend themselves against Blacklock’s” and suggests that that the Court should “strive for proportional procedures that will achieve a just result”.

Interestingly, about a week after the AGC’s motion record was served, Blacklock’s published on April 11, 2017 one of its few unlocked articles entitled $22K Copyright Settlement By Canadian Facebook Bloggers. It begins by stating that:
A bootleg news aggregator has settled a $21,750 copyright claim after republishing articles on a Facebook blog, the largest known settlement of its kind in Canada. The defendants’ lawyer was Professor David Fewer, director of the University of Ottawa’s Canadian Internet Policy & Public Interest Clinic. [CIPPIC]
Blacklock’s Reporter in 2015 sued the blog operators for $20,000 as well as punitive damages and costs for republishing dozens of password-protected articles. In an unusual settlement, the aggregator One Big Campaign paid $21,750, volunteered a public apology and waived all confidentiality of settlement terms.

Actually, as I noted earlier  when first mentioning this particular lawsuit, Mr. Fewer was acting “not in his capacity as Director of CIPPIC, but rather in his personal capacity”. Blacklock’s also labels Mr. Fewer as “a copyright adviser to the Department of Justice”, which I understand not to be the case.  

It’s interesting that Fillmore and Taliano were not represented by CIPPIC itself, and therefore had to pay Mr. Fewer’s legal bill. Mr. Fillmore states in his affidavit that “we feared that, even if we won, our expenses might run as high as $40,000 or $50,000”. This suggests that they were expecting a very much higher legal bill at the end of the day, even if they won. Presumably, if CIPPIC had represented them, they would not have had to pay their own legal costs. CIPPIC’s mission is stated to be:
CIPPIC has a dual mission:
·         to fill voids in public policy debates on technology law issues, ensure balance in policy and law-making processes, and provide legal assistance to under-represented organizations and individuals on matters involving the intersection of law and technology; and
·         to provide a high quality and rewarding clinical legal education experience to students of law.
(highlight added)

Inexplicably, Blacklock’s seems to focus attention in its article on Mr. Fewer, and even includes an enlarged picture of his signature at the top of the article.

Blacklock’s also suggests that Fillmore and Taliano “rejected a $5,000 settlement offer from Blacklock’s”, which is apparently contradicted by Mr. Fillmore’s affidavit – upon which Blacklock’s has chosen not to cross-examine. Indeed, Mr. Filmore swears that he and Mr. Taliano offered to pay $5,000, which Blacklock’s “declined”. Blacklock’s makes a number of other contentious assertions in the article, and fails to note that its assertions have not been tested in Court. In its response dated April 18, 2017, Blacklock’s is attempting to put a lot of additional evidence concerning Messrs. Fillmore and Taliano on the record through an assistant’s affidavit, and, as noted, has chosen not to cross-examine Mr. Fillmore.

Without in any way commenting on the substance of the Fillmore and Taliano settlement, there are some aspects to this situation that would clearly seem to invite interest. In any event, the AGC and Blacklock’s have both pushed this issue into the limelight.

The amount of the settlement, $21,750, is more than the amount sought in the lawsuit, which in the case was $20,000 (forget about the demand for “punitive” damages). We do not necessarily know all that happened in this case. The Ontario Superior Court, unlike the Federal Court, does not provide an online docket, which usually gives some idea of what it happening in a case. I have asked Mr. Fewer to call me about this case, but he has not done so. In any event, he would presumably by constrained to some extent by solicitor-client privilege.

The settlement comes after Blacklock’s resounding loss in the Federal Court on November 10, 2016 and after the appeal period had passed. Not only was there a very favourable and detailed ruling in place from a very experienced Judge. The Government had left a legacy of applicable case law and material on the public record that was available to any other litigants.

Settlements of litigation are usually confidential. However, in this instance, it appears that Fillmore and Taliano felt compelled to not only let Blacklock’s exploit their unhappy result in public but, indeed, to agree to publicly apologize. Their Facebook page now appears to be dead in the water. On December 20, 2016, the Facebook page “Campaign to Build One Big Campaign’ posted an apology and a notice that “This site is now closed”. Ironically, the “unusually trenchant costs award” against Blacklock’s in Federal Court came out the very next day.

I have no idea what the merits or lack thereof of the lawsuit against Fillmore and Taliano may have been and will not speculate because nothing has been proven in Court. Second-guessing in this case about the lawsuit or the settlement could be inappropriate and inaccurate, and I am not doing so.  Messrs. Fillmore and Taliano had experienced counsel. However, it is worth recalling that, if the activity involved was for “non-commercial purposes”, the maximum amount of statutory minimum damages would arguably have been $5,000 – unless Blacklock’s could have somehow proven more in actual damages, which would have been extremely unlikely. Nonetheless, according to Fillmore’s affidavit which has not been cross-examined upon, he and Taliano – for whatever reason – felt “seriously intimidated” and settled for more than four times this amount.

What is interesting about this Fillmore and Taliano sidebar is the apparently disproportionate and defensive attention given to it by Blacklock’s. Perhaps more will become apparent on May 2, 2017.

Overall, this case has elicited much attention. On the one hand, Blacklock’s is arguably attempting overall to build a business model based, in effect, on a legally non-existent ability to control the “right to read” and to make this a test case for the future of journalism, even though Blacklock’s cannot readily be compared to the Globe and Mail, the Toronto Star, the New York Times of The Economist or any other readily apparent established and successful journalism model. Perhaps its closet analog is the Hill Times, which is a very successful Ottawa family owned publication with a much friendlier business model that has operated with great success for almost three decades.  A much-valued feature of its business model includes the ability to buy a single story issue in electronic form for $5.00. This is in sharp contrast to Blacklock’s business model. To the best of my knowledge, the Hill Times has never sued anyone. Indeed, the Hill Times business model seem to depend on quality, value and the very considerable goodwill of its customers, which would seem to be very similar to the same Ottawa government and NGO base that Blacklock’s is so busy suing.

Justice Barnes’ stern words in his costs award should be recalled:
[9]    I am also troubled by Plaintiff’s attempt to claim an excessive amount of damages beginning with its demand for compensation completely divorced from the Department’s limited use of the two articles. In no circumstances would Blacklock’s losses have exceeded the cost of individual subscriptions by the six officials who read the articles; yet Blacklock’s demanded a license fee equivalent to its bulk subscription rate of over $17,000.00.  This practice appears to be consistent with Blacklock’s usual approach which is to hunt down, by Access to Information requests, alleged infringers and then demand compensation based on an unwarranted and self-serving assertion of indiscriminate and wide-spread infringement. The record discloses that in several instances government departments acquiesced for business reasons and paid the full amounts demanded. In this instance the Department appropriately took a hard line and succeeded in its defence.
(highlight added)


PS - May 2, 2017

Case management conference adjourned to May 12, 2017. Court looking for solution on consent in #Blacklock’s unique "litany of litigation".