Intellectual property law is good. Excess in intellectual property law is not. This blog is about excess in Canadian & international copyright, trademarks, patent & related law. I have practiced IP law with prestigious firms & successfully acted for interveners in several Supreme Court cases. I've also been in government & academe. My views are purely personal. Nothing on this blog should be taken as legal advice.
Access Copyright (“AC”) and York University
have both filed applications for leave to appeal in the Supreme Court of Canada
(“SCC”) following the decision of the Federal
Court of Appeal (“FCA”) in York
University v. The Canadian Copyright Licensing Agency (Access Copyright), 2020
FCA 77 (CanLII), <http://canlii.ca/t/j6lsb>,(the
“FCA decision”) which I have discussed at length here.
comment only in a very cursory way at this point. I and others will no doubt
have much to say in the future – either in the SCC on behalf of interveners or
in blogs, articles, etc. – or both. I have written frequently on my blog about
this case and related issues in the past and addressed the main issue in the
SCC in CBC v. SODRAC in the SCC – see below.
of course, seeking to get leave to appeal the ruling that its Copyright Board
tariffs are not mandatory. It states, very astonishingly, in is Notice of Application
case provides the Court with its first opportunity to consider
regimes under the
Copyright Act. The key question is whether tariffs approved by the
Copyright Board are enforceable against infringers who do not wish to pay them.
The Federal Court of Appeal held that they are not.
(highlight and emphasis added)
“first opportunity” comment, of course, is simply wrong – to put it very politely.
Justice Pelletier devoted the better part of 73 pages and 206 paragraphs in the FCA
decision totally vindicating the proposition that final – and obviously interim
– Copyright Board tariffs are not mandatory. His opinion cited and derives from
Prof. Ariel Katz’s landmark Spectre I paper that shows how the conclusion that tariffs are
not mandatory traces back to Vigneux v. Canadian Performing Right Society Ltd., 1943 CanLII 38 (SCC),  SCR 348,
<http://canlii.ca/t/fslvq> and legislation tracing from 1936. Moreover,
the FCA decision explicitly relies not only on the 1943 SCC decision in Vigneux,
but to two other SCC decisions, namely Maple Leaf Broadcasting v. Composers,
Authors and Publishers Association of Canada Ltd., 1954 CanLII 62 (SCC),
 SCR 624, <http://canlii.ca/t/22x4f> and, of course, of Canadian
Broadcasting Corp. v. SODRAC 2003 Inc., 2015 SCC 57 (CanLII),  3 SCR
615, <http://canlii.ca/t/gm8b0>. See
FCA decision, paras. 54, 72 and 73.
memorandum does at least mention the Vigneux decision. However, it obviously and blithely ignores the
controlling SCC case of Canadian
Broadcasting Corp. v. SODRAC 2003 Inc., 2015 SCC 57 (CanLII),  3 SCR
615, <http://canlii.ca/t/gm8b0>, from less than five years ago in which the SCC
explained in a dozen paragraphs (paras. 101-113) why Copyright Board tariffs are not mandatory,
as argued in that case by me on behalf of Prof. Ariel Katz and Prof. David
Lametti, as he then was. Reference to that totally controlling SCC decision is,
incongruously, nowhere to be found in AC’s material. This decision was, of course,
relied on and followed in the FCA decision.
resist recalling froman earlier blog of mine in 2012 the following passage about ignoring relevant and dispositive precedents in an appellate court:
any event, Prof. Katz mentioned the recentdecision of Judge Richard Posner -
remarkably colourful even by this remarkable judge’s standards - concerning the
risk of ignoring relevant and dispositive precedents. Here’s the relevant
passage – with the illustrations included by Judge Posner himself:
there is apparently dispositive precedent, an appellant may urge
its overruling or distinguishing or reserve a challenge
to it for a petition for certiorari but may not
simply ignore it …
ostrich is a noble animal, but not a proper model for an appellate advocate.
(Not that ostriches really bury their heads in the sand when threatened; don’t
be fooled by the picture below.) The “ostrich-like tactic of pretending that
potentially dispositive authority against a litigant’s contention does not
exist is as unprofessional as it is pointless.” Mannheim Video, Inc. v. County
of Cook, 884 F.2d 1043, 1047 (7th Cir. 1989), quoting Hill v. Norfolk
& Western Ry., 814 F.2d 1192, 1198 (7th Cir. 1987).6 Nos. 11-1665, 08-2792
material deals with the fair dealing aspects of the FCA decision:
Issue 1: When determining whether copying in the educational
context constitutes “fair
dealing” under the Copyright Act, should the
analysis be conducted from the perspective
of the ultimate users (students), or from the perspective of
the educational institution they
Issue 2: When determining whether copying in the educational
context constitutes “fair
the Copyright Act, the analysis should
refrain from conflating factors.
Issue 3: For institutional fair dealing guidelines to be
“fair” for purposes of the Copyright Act, is there an
obligation for the institution to implement safeguards to ensure compliance
with the guidelines themselves?
More than a year after the Copyright
Board announced with great fanfare that it would launch a Twitter account and received
an additional $1,000,000 in its budget, the account has now launched on June
12. 2020. Here it is. @COP_eng . In its
first ten days, it has so far 14 followers – two of whom are me and Prof. Ariel
Katz @Relkatz and at least two of whom are Copyright Board staff.
Its only announcement to date is that
the Board has now issued “Guidelines for economic evidence submitted to the Copyright
Board of Canada”. Indeed, this is the only evident sign on the
Board’s website of any activity by the Board in 2020 other than the Twitter
account launch, and the usual COVID notice. It would seem rather difficult to see where any of the
million dollars has been spent. The “revamped” website has not been launched. None
of the three dozen or so presumably routine but possibly interesting notices
and rulings that have apparently been issued in 2020 have yet been posted
online. Back on November 28, 2019,
I reported that the Board has spent $757,548.50 on website stuff since April 1,
2018. No progress is evidence. If anything, the website has become even less
useful – for example by eliminating the names and contact information for all
its professional staff other than its Secretary General.
Also, it’s a mystery as to who, if
anyone, is currently the Chair of the Copyright Board. As of now, according to
the Governor in Council appointments website, the position seems to be vacant.
The appointment of Justice Robert Blair expired on May 27, 2020 and there is no
indication at this time that his appointment has been renewed or that he has
been replaced. He is still shown on the Board’s website, but the Board’s
website seems to have been largely untouched for several months despite the
massive amounts of money spent on it. The Governor in Council website is likely
In any event, there are some good common-sense
points in these new Guidelines. Economic
evidence can be useful in rate setting. That goes without saying.
The most recent Access Copyright post-secondary
tariff decision in which the Board improvidently adopted the so-called “freely negotiated”
AUCC model license and Access Copyright’s “Premium” licence as valid proxies after
nearly 10 years of mostly unopposed proceedings is absolutely NOT such an
example. TheBoard’s reasoning is very
unconvincing. The Board regarded institutions that did not sign on to the AUCC
Model licence or Access Copyright’s Premium license as having “left the
market”. That, of course, is absurd.
Those institutions were spending millions clearing their copyright needs in
other ways, such as expensive site licences and reliance on several Supreme
Court of Canada fair dealing decisions. On January 22, 2020, I commented on the timing of the
Board’s decision that was almost a decade in the making and extremely
retroactive – and that for one reason or another nobody could be bothered to even
attempt to seek judicial review. And that was three months before the
landmark ruling in Access Copyright v. York that Access Copyright’s tariffs
Moreover, a perennial problem is that
many Copyright Board cases – especially those involving new or “inaugural”
tariffs – start out with no “evidence”
as such and are merely based on guesswork and may not get much better as time
goes by. Readers may recall that that, in 2002, the Canadian music industry was
seeking a “tax” (as it was commonly called) of $21 per GB on the memory in iPods
and other devices. If that had somehow been approved and had remained in place,
that “tax” on an 8 Terabyte external hard drive that now sells for about $200
would be $168,000.00 – and that is not a misprint. The point is that the music
industry was simply pulling a number out of the air with absolutely no evidence
or rationale to back it up. It was not much better when Access Copyright started
out by demanding $45 per FTE student – with no apparent basis for that number –
in its proposed post-secondary tariff.
If the Board’s Guidelines succeed in
injecting some rigor into the front end of these proceedings, much time and
expense could be saved. However, it’s ironic that for an organization
presumably now very acutely aware of the meaning of the word “mandatory”, these
Guidelines are explicitly “not mandatory”. Indeed, more may be needed in the
form of explicit regulations that require something analogous to a “pleading”
or “statement of claim” where “a concise statement of the material facts” to be
relied upon are set out at the outset. See Federal Courts Rules Rule 174.
The additional clarity on the Guidelines
is helpful in some respects. However, the several references to “intervals” and
“interval methodology” inject what many will perceive as unfamiliar terminology.
This may cause some confusion. Whether this is new terminology for old economic
or statistical methods or indeed actually some kind of new “methodology” may
I don’t know whether the Board looked
at the Competition Tribunal, which is a
far more productive organization with a now much smaller budget than the Board
and a far greater case load that often involves very complex and important matters
involving vast amounts of money. Here are the rules that govern
the use of evidence and expert evidence in that tribunal. Of particular
interest is Rule 80 that provides:
80(1) The Tribunal may, at any time, by order appoint one or
more independent experts to inquire into and report on any question of fact or
opinion relevant to an issue in a proceeding.
The Copyright Board Guidelines do not
address the elephant in the room here, which is the use and sometimes the
apparent misuse of so-called expert evidence that can happen at the Board.
Although the Board has more leeway than a normal court when it comes to such
things, there are certain basic laws of gravity that apply. These are set out
in a famous Supreme Court of Canada case, namely R. v. Mohan, 1994 CanLII 80 (SCC),  2 SCR 9, <http://canlii.ca/t/1frt1>. The application of Mohan in the context of admirative tribunals
has recently been recently exhaustively considered by the Competition Tribunal
– once again the most useful comparative model for the Copyright Board. See The
Commissioner of Competition v Vancouver Airport Authority, 2019 CACT 6
(CanLII), <http://canlii.ca/t/j36c1>, which deals at length with such issues as the
necessity, reliability and independence of the “expert” evidence, as well as
the perennial issue of “hearsay” evidence.
paradox at the Board is that, even with the relaxed rules of evidence compared
to a normal court that it is allowed (with
the approval of the FCA per Pelletier, J.A. in Canadian Recording Industry
Association v. Society of Composers, Authors and Music Publishers of Canada,
2010 FCA 322 (CanLII), <http://canlii.ca/t/2dsw7>, things take exponentially longer and incur
exponentially higher costs that one would normally see in a normal court.
Notwithstanding the above and the
slight signs of progress, I feelcompelled to reiterate my concern that I voiced a year or so ago, about
the supposedly “new” concepts of “public interest”, “willing buyer”, and “willing
seller” which are referred to in the
Guidelines and which some parties with too much resources may exploit to wear
down parties with too little resources. The Board’s Guidelines do little to allay
my concerns. This is what I said about this over about a year ago:
[the Vice Chair of the Copyright Board, who is not a lawyer]
spent a lot of time pointing out that, as of April 1, 2019 the new “public
interest” requirement for tariffs came into effect. Here is the provision:
Board shall fix royalty and levy rates and any related terms and conditions
under this Act that are fair and equitable, in consideration of
would have been agreed upon between a willing buyer and a willing seller acting
in a competitive market with all relevant information, at arm’s length and free
of external constraints;
regulation made under subsection 66.91(1); and
other criterion that the Board considers appropriate.
the imposition of explicit criteria re “competitive market” and “public
interest” cause more mischief, costs and need for protracted and expensive
evidence from so-called experts? The Board has purported to be concerned with
the public interest all along – so do we really need to etch this into stone,
whatever it may mean? Even John Degen agreed with me that this was cause for
concern – thought for difference reasons. But the fact that Mr. Degen and I
agreed on something should tell you something.
these concepts – the “public interest” and “competitive market” –
are new. They are embedded in existing jurisprudence, especially that of the
“public interest”. That the Board should now consider that it suddenly has an
obligation to decide cases “in the public interest” is astonishing. What else
has it and its predecessor been doing for more than 80 years? Is the Board
unaware of Supreme Court of Canada jurisprudence going back almost 8 decades?
While some consultants are doubtless salivating at the prospect of providing
lucrative so-called “expert” evidence on these issues that will result in
protracted and much more expensive hearings, this should not be necessary if
the Board simply follows longstanding case law and takes responsibility for deciding
the ultimate legal questions itself rather than relying upon so-called experts,
who are often repeat performers and rarely truly independent when it comes to
Copyright Board proceedings.
Blair himself made a half dozen references to the “public interest” in
his published remarks from over a year ago. Why this is suddenly
now an apparent new mandate for the Board is astonishing and should be very
puzzling to those who know Canadian copyright jurisprudence.
suppose that Bill C-86 actually did somehow enact something new (likely
unlikely) in this respect and could be invoked to call for a new approach. It
would be nice if this supposedly new “public interest” provision would be
invoked to enable the Board to retain truly neutral and credible advice in the
person of amicus curiae or “assessors” in appropriate circumstances
but there was no suggestion to that effect. Moreover, when the Board is
indecisive even about deciding such a basic issues as whether a person engaged
in case management should be on the presiding panel (which should be avoided at
all costs, as is the case in the Federal Court as every experienced Federal
Court lawyer knows well), it’s hard to imagine how the Board would be thinking
about bringing in the concept of amicus curiae or “assessors” – which
would be admittedly unusual but arguably within the realm of the possible and
advisable. Besides, if the thought were ever to occur to the Board, it would no
doubt want a very large budget increase to look into this and to fund such
activity. Anyway, it’s probably a non-starter of a suggestion, since there are
very few if any people in Canada who are sufficiently expert lawyers or
economists to fulfill this role and who would not already have too much baggage
to carry and still be perceived as credible to all concerned.
So, I expect
that my fear – shared by others – that this gratuitous
statutory references to the “public interest” and a “competitive
market” will become an
excuse for even longer delays appears to be coming true. I hope that I am
wrong. However, given the Board’s propensity for making very simple things very
complicated (e.g. “ordinarily used”, “making available”, etc.), I cannot be
has now released two important companion judgments regarding the Copyright
Board’s 2017 tariff decision that involved the so-called “making available
right”. Both judgments were penned by Stratas, J.A.
first FCA decision is Entertainment Software Assoc. v. Society Composers, 2020 FCA 100 (CanLII), <http://canlii.ca/t/j82gg> – the
“making available judgment” – which quashed the Copyright Board’s 2017 decision
that there is a new and separate
“making available right” (“MAR”) that can be monetized as such as a tariff (the
“Board MAR decision”)
second FCA decision is CMRRA-SODRAC Inc. v. Apple Canada Inc., 2020 FCA 101 (CanLII), <http://canlii.ca/t/j82gf>, which upheld that Board’s related 2017
decision that ‘evidence
before it was inadequate to warrant the setting of tariff for “making available" (the “Board rate
first issue regarding the making available right, the FCA quashed the Board’s
decision in a judgment that is perhaps the most blunt, scolding, scathing,
sweeping, and almost even sarcastic appellate rebuke that I have ever seen of
any tribunal and certainly of the Copyright Board – with one possible other
contender mentioned below, with an interesting common denominator. We see use
of such language as “unacceptable”, “skewed”, “fatal loss of confidence…”,
“misapprehension”, and repeated use of
the word “misuse[s]”.
the result is anything but surprising, the frankness of the language from this
normally very staid and rhetorically restrained Court is indeed very notable
and remarkable and should be taken very seriously not only by today’s Copyright
Board (which is composed of different members than those who wrote the 2017
decision) but by those bureaucrats and Ministers who enable and fund it.
Both of these
decisions comment at length about the possible implications of the Supreme
Court of Canada (“SCC”) decision in Vavilov for the Copyright Board.
I’ll leave that mostly for another day. However, it should be noted that that
the Board’s “correctness” niche carved out by the Supreme Court of Canada (“SCC”)
pre-Vavilov wherein some issues arise both in tariff hearings and in
infringement proceedings in the superior Courts may one day now be revisited as
to whether this is still “good law”. In any event, those comments of Stratas, J.A.
were obiter dicta. The FCA reviewed both decisions on the lenient and
more deferential standard of “reasonableness” ((i.e. not “egregious or
irrational” – Board Rate decision, para. 6). The Board won the battle on rate setting but lost the war
on statutory interpretation and its “misuse” (paras. 76, 77 and 93) of international law and its “misunderstanding
of the relationship between Canadian domestic law and international law.”
The FCA upheld
the Board on the rate setting issue, affirming the Board’s “relatively unconstrained”
power to set rates and indicating that “in setting rates, the Board has
just about the widest discretion known to law” (para 12 of the rate decision).
That is not particularly remarkable or surprising – since the real raison d'êtreof the Board has historically been and mainly
should be about rate setting and number crunching which requires sometimes lots
of evidence and which justifies some time and effort – though not the 7 – 9+
years that seems now to have become the new normal for any contested file – or in
the case of the Access Copyright post-secondary tariff – even an effectively uncontested one. Don’t get me started
again on the extreme retroactivity of Board tariffs – something about which the SCC has explicitly
Board has been ill-equipped to deal with any serious legal issues that entail
jurisdictional or other essentially legal matters . Unlike the Competition
Tribunal, where “questions of law shall be determined only by the judicial
members sitting in those proceedings”, the Board has never had such a requirement and can sit even in the absence of its Chair,
who is required to be sitting or retired judge. That said, there has never been a Chair of the
Board who hit the ground running with copyright law expertise. Even the most recent
Board Chair – Justice Robert Blair – who as of today appears either to have retired
or hasn’t yet been reappointed following the expiration of his first term on May
27, 2020 – has explicitly commented in 2018 on Board expertise in his only
published remarks to date that such expertise is more likely to
come from the Federal Courtsand that the Board, at that time, didn’t even
have a member with economic expertise:
The Chair must
be a sitting or retired superior court judge (where very little intellectual
property work, much less copyright work, is done), and to date has not come
from the Federal Court system where they actually know something about those
subjects! In addition, none of the present members is an economist.
rate, I can and probably need do little more at this time than excerpt (with
highlight, emphasis and some brief comment added) some of the more interesting and
trenchant excerpts from Stratas, J.A.’s decision in the FCA’s making available judgement:
 After SOCAN had filed its proposed tariffs,
the Copyright Act was amended: Copyright Modernization Act, S.C. 2012, c. 20. A
new subsection, subsection 2.4(1.1), sometimes called the “making available
provision”, was added to the Copyright Act. It reads as follows:
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.
This raised the question whether the mere making available of a work on a
server for the purpose of later streaming or download by the public was an
event for which a tariff was payable.
 A few days after the addition
of subsection 2.4(1.1) to the Act, the Supreme Court released an important
decision that interpreted the phrase “communicate
the work to the public by telecommunication”: Entertainment Software Association v.
Society of Composers, Authors and Music Publishers of Canada, 2012
SCC 34,  2 S.C.R. 231. It held that the transmission over the Internet
of a musical work that results in a download of that work is not a
communication by telecommunication: see also Rogers Communications
Inc. v. Society of Composers, Authors and Music Publishers of Canada, 2012
SCC 35,  2 S.C.R. 283 at
para. 2. Following that decision, SOCAN could not
collect royalties for such downloads.
Board took what should have been a very simple exercise in statutory
interpretation and spun it into a lengthy apparently multimillion-dollar orgy of
legal and international “expert” fees and
evidence about the 1996 WIPO treaties. Here
is the Board’s 2017 decision – released about five years after this matter
first arose and after more than three years of deliberation.
Board did not need all this evidence. The legal issue about whether the 2012 legislation
created a new distinct right that could be monetized into a tariff was quite
simple not only in hindsight – but at the time, as some including Prof. Katz
pointed out. If the Board was worried that this was over its head, or in any
case, it could have and maybe should have dealt with this issue very simply by
seeking a reference to the FCA – a procedure suggested by Prof. Katz in the
Access Copyright tariff – but rejected with apparent
hostility by the Board. Or, it could have simply ruled quickly by itself and let
the parties bring judicial review proceedings.
 As will be made clear from the reasons that
follow, subsection 2.4(1.1) of the Act deems the act of placing a work or other
subject-matter on a server of a telecommunication network in a way that a
request from a member of the public triggers the transmission of that work or
subject-matter, including in the form of a stream or download, whether or not
such a request ever takes place, to be a communication to the public by
decision set a royalty for the making available of works to the public by
of the making available of works 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 only came into force on
November 7, 2012. Furthermore, there was insufficient usable evidence adduced
by the Parties for the Board to be able to price the act of making available
distinct from other acts of communication by telecommunication, or how to
adjust the price for communication by telecommunication to account for its
broadening in scope. However, this does not mean that the Board cannot do so in
Back to the FCA:
did the Board explicitly say that it
had a desired result in mind and that it was going to interpret
subsection 2.4(1.1) in a manner to get that result. But looking at the reasons
as a whole, whether it intended to do so or not, that is exactly what the Board did: it skewed its analysis in favour of one
Two general features of unacceptabilityare evident in the Board’s reasons:
Unacceptable legislative interpretation.
The Board did set out the accepted method of interpreting legislation and the
need to look at the text, context and purpose of legislation: at para. 95. But
the analysis that follows leaves out important elements, particularly
contextual elements such as the Supreme Court’s decision in Entertainment
Software Association. And, along the way, the Board made some leaps of reasoning that cannot be justified.
These fundamental defects result in a fatal loss of confidence in the Board’s
interpretation of subsection 2.4(1.1).
Misapprehension of the
interrelationship between international law and domestic law. One
element of the legislative purpose and context behind subsection 2.4(1.1),
indeed an important element, is article 8 of the Treaty. But the Board went
beyond seeing it as just an element: it developed its own robust view of
article 8, offering nothing in support, and forced subsection 2.4(1.1), a
provision in domestic legislation, to fit its view, calling subsection 2.4(1.1)
a “deeming provision”. In so doing, the Board acted contrary to binding jurisprudence that limits the
ways in which international law can influence the interpretation of domestic
Just because Canadian domestic legislation is
enacted against the backdrop of a treaty that Canada has signed and just
because the preamble to legislation, as here, suggests that it is aimed at
implementing a treaty, it cannot be assumed that Parliament has adopted the
treaty wholesale, no more and no less. Parliament, in fact, may have whittled
down the provisions of the treaty or may have extended them. Indeed, it may
have done something completely different.
The Board’s decision and many of the submissions supporting
it suffer from a misunderstanding of the relationship between
Canadian domestic law and international law.
 When developing a
legal argument, some members of the legal academy, the Bar, administrative
decision-makers and the judiciary invoke international law—or sometimes just the vibe of it—because they see it as always
relevant, persuasive and binding. Others see it as a make-weight, hoping to
sway the impressionable with its grand provenance and sometimes broad acceptance.
Still others see it as a supply of preferred values and ideological standards,
handy ammunition to fire in support of a cause. In a courtroom ruled by
doctrine, these are misuses of international law.
 Too often these days, we see
International law enters legal debates before
courts and administrative decision-makers only in specific, defined ways that
are consistent with settled doctrine and our constitutional framework: Gitxaala
Nation v. Canada, 2015 FCA 73.
 In this case, in essence, the
Board went to article 8 of the Treaty, asserted its view of that article’s
meaning without any supporting reasoning, and then made subsection 2.4(1.1)
conform to its view. This is not a legally acceptable methodology. This is a
misuse of international law. The Board exalted international law over domestic law. In
so doing, it violated the constraints imposed by binding case law and
 Overall, for
the foregoing reasons, there is no basis for the Board’s interpretation of subsection
2.4(1.1). It cannot stand.
Déjà vu all over again?
Retired Justice William Vancise was the
Chair of the Copyright Board from 2004 to 2014 and was the presiding member for
the decisions in question that were rendered in 2017, more than three years
after his retirement from the Board on May 13, 2014.The
Board is very unusual in allowing this kind of long delay without a cut off
date. The legislation does not preclude it and the Board clearly permits and
indeed seems to encourage it. The norm in the judicial system for a retired judge
to deliver a judgment after retirement is six months.
The current situation is not the first
time where the Board has apparently started out with a “desired result’’ and then tries to
go about justifying it. One can look at the earlier ill-fated attempt to impose
a “iPod tax” on devices when the FCA had said only three years or so earlier
that it couldn’t do so on the memory embedded in such devices. The same Chairman
Vancise was publicly perturbed about his rebuff from the FCA (Apple Canada
Inc. v. Canadian Private Copying Collective, 2008 FCA 9 (CanLII), <http://canlii.ca/t/1vcx1>and openly criticized it and its Justice Marc Noël
(who was appointed Chief Justice of the Federal Court of Appeal, October 9,
2014) by name in what many might regard as an inappropriate speech delivered for
a still active Chair of the Copyright Board in 2009 that he gave on August 11,
2009 shortly after he was reappointed for a second five year term in May of 2009.
Chairman Vancise had some trenchant comments
about the SCC and the FCA. On the latter, he was particularly upset about its “six turgid paragraphs”
that overturned his attempt to impose a “tax” on iPods on other similar devices
that had been clearly rejected just a few years earlier:
The Supreme Court is not the only court attempting
to fill perceived gaps in the Copyright Act. The Federal Court of Appeal has
attempted on at least two occasions to reconcile the wording of the Act with
the contemporary reality (means of consuming protected works or objects of
In 2004, the Court ruled the Board was wrong to conclude that the permanently
embedded or non-removable memory, incorporated into a digital audio recorder or
the device itself, was “an audio recording medium ordinarily used by
individuals to copy music”.
In 2007, CPCC tried again and the Board was asked to determine whether the
recorder itself was a recording medium as defined in the Act. It said yes in a
long and well reasoned decision. The Federal Court of Appeal, once again on
judicial review, overturned the Board. This time, the Court in six turgid
paragraphs found its decision of 2004 dealt with the matter and was binding on
the Board. I still wonder how the Federal Court of Appeal came to that
conclusion when the question of whether the device itself was subject to a levy
had not even been an issue in the previous decision and the comments of Noel
J.A. were obiter and contained in what can only be called a “throw away line.”
A throw away line that has had extreme consequences, not the least of which is
at least 10's of millions of dollars in royalties that have not been paid to
authors, composers and performers and threatens to destroy the private copy
disclosure - I argued successfully against the Board’s rulings on behalf of the
Retail Council of Canada in both of these instances at the FCA).
William Vancise rendered his last Board decision only on January 18, 2018 – almost four years after his
What Does This All Mean?
This decision comes only a few weeks
after another very important FCA copyright decision in the Access Copyright
v. York University case. I’ve written about
this recently at great length. That
was an appeal – in contrast to judicial review – of a decision from the Federal
Court. But lest we forget, that litigation was mainly about whether about
whether interim and indeed final approved tariffs from the Copyright Board are
“mandatory”. The FCA said very clearly that they are not. The Copyright Board
tried its best to suggest for the longest time that they were mandatory based
upon the absurd “one copy of one work” theory.
So, even if the Board has “just about
the widest discretion known to law” to set tariff rates, it appears that the
Board lacks the power to make the tariffs in question here and in the York case
mandatory – absent an unexpected surprise from the SCC or Parliament. And even
if the Board’s rate calculations can survive almost any judicial review, nobody
will pay any attention to its tariffs even if they are “reasonable” (in the
Vavilov sense) but unreasonable in common sense or dollars and cents to users
and not mandatory.
That should give the Board an incentive
to get things done promptly and satisfactorily from a users’ standpoint –
otherwise nobody will “take the train” with its approved
tariff (my analogy) if there are better and cheaper ways of getting there from
here without recourse to a tariffed means of transportation. Nobody will use
tariffs that are not attractive and not mandatory.Eventually, Parliament will figure this out
and the Board will have to be reinvented or eliminated.
Is the SCC On the Horizon?
Given the proximity in time of the
making available judgments to the Access
Copyright judgment – and the common thread of Copyright Board tariffs, will we see
the SCC once again take on more than one copyright case at once, as we saw in the 2012 great Canadian copyright “pentalogy”?
Perhaps now a “duet” of decisions?
The big difference between this and the
pentalogy situation is that four of the pentalogy cases involved some interesting,
urgent and close issues that called out for the Court’s attention, and which
were interrelated to some considerable extent – and the Board needed to be
corrected in some important respects and indeed was. One of the decisions, Re:Sound v. Motion Picture
Theatre Associations of Canada, 2012
SCC 38, was not close in any way and the mystery remains as to why
leave to appeal was even granted, since everyone including the Board but somehow
excluding Re:Sound and its counsel seemed to understand that the meaning of the
word “excludes” does not include “includes”.
In the current situation, the FCA’s
judgements on the mandatory tariff issue in the Access Copyright v. York
case and the making available judgment would both seem to be “bullet proof” lengthy
and detailed decisions by unanimous panels of the FCA and penned by very
experienced appellate justices. That doesn’t mean that leave won’t be sought,
given the amount of money potentially involved, or even granted in either case.
However, I will go on record to predict that
it is very unlikely that the FCA will be reversed by the SCC at the end of the
day in either of these cases.
The FCA has recently delivered two
stunning, highly documented, extremely lucid and ultra important judgments involving
Copyright Board tariffs that definitely teach and confirm some very essential lessons,
Tariffs such as those
sought by Access Copyright and SOCAN are not mandatory for users. This is based
upon nearly eight decades of SCC jurisprudence that in turn reaches back to at
The Copyright Board
has considerable scope to set rates – including a zero rate where there is
insufficient evidence to justify a tariff. But deference by the FCA won’t make
the tariffs acceptable to the public if the tariffs are not sensible and timely
The Copyright Board
needs to be mindful of basic principles of statutory interpretation, including the
basic and obvious axiom that international law must not be misused so as to misconstrue
As attractive as the exercise
may have been, and even by the generous standard of “reasonableness”, the Board
was very unreasonable in its venture into the “vibe” of international law.
Whatever happens – or more likely does
not happen – in the SCC, it is only a matter of time before Ministers focus on the
apparently total lack of tangible evidence of progress in Copyright Board
reform. The Board now has a lot more money, almost no visible sign of meaningful
activity, and no evidence of any plans that will significantly make a
difference. With due respect and tough love, I must reiterate that “revamping its website” and launching a Twitter
account won’t help in any significant way with the underlying issues and
problems. When Ministers get around to the Copyright Board,
which is bound to happen even if overall copyright reform bogs down as it
usually does, these recent decisions are bound to be on their minds.