A Fair Deal for Canada on Fair Dealing

Kate Taylor - Globe and Mail

The recent sadly and badly misinformed “opinion” dated May 20, 2023 by veteran Globe and Mail cultural columnist Kate Taylor entitled “Copyright loophole for education should be plugged”  highlights the need for the educational sector to step up to the plate on fair dealing and copyright revision. Her “opinion”, which some might mistake for journalism given her 34 year tenure with the Globe and Mail (which regards itself as “Canada’s National Newspaper”), could have been written by lobbyists for Access Copyright and publisher interests, though it would lack her hallmark and that of the Globe and Mail.

This is not the first time she has blatantly opined for Access Copyright. Here she is in 2016 using her Globe and Mail podium, which does not even pretend to be an “opinion” piece as does the current effort.

• She doesn’t seem to understand that fair dealing rights are “users’ rights” that must be given a “large and liberal interpretation” and are “always available.” She needn’t take my word for this. Those statements come from the Chief Justice of Canada, Beverly McLachlin in the landmark 2004 CCH v. LSUC decision. Above all, fair dealing is not a “loophole”. Fair dealing rights are absolutely essential and integral to the concept of copyright in Canada and every other comparable jurisdiction.
• She doesn’t seem to know the difference in terminology between “fair dealing” (Canada) and “fair use” (USA).
• She is apparently unaware that the USA has provided more and more explicit rights to educators since 1976 than Canada has ever done, i.e. by hard wiring teaching (including multiple copies for classroom use), scholarship, or research” into its copyright law since 1976. See 17 USC 107. Nobody could credibly suggest that this is non-compliant with international treaties. It’s simply absurd to suggest that Canada is an “outlier” in this respect; if anything, our fair dealing users’ rights need to go even farther to catch up with the USA.
• She is apparently unaware that key Canadian SCC fair dealing decisions, including the landmark 2012 Alberta v. Access Copyright and the SOCAN v. Bell  iTunes preview cases, were decided on the pre-2012 law that goes back to 1921 before the word “education” was added to s. 29. 
• She is misleading readers by suggesting that the addition of the word “education” to s. 29 of the Copyright Act via the 2012 Copyright Modernization Act caused the decline in Access Copyright’s revenues. Indeed, the 2019 INDU Committee Report from Parliament confirms that:
• ... in Alberta (Education) v. Canadian Copyright Licensing Agency (Access Copyright),5 the SCC concluded that teachers could rely on the fair dealing exception when reproducing works for their students since these students were engaging in “private study.” The SCC reached this conclusion without relying on an explicit fair dealing exception for “education”—which, as noted above, has since been added to the Act.
• See also:

Prof. Ariel Katz’s 2018 testimony at the INDU hearings explaining that  correlation does not imply causation and outlining the many of the actual reasons for Access Copyright’s declining revenues
Prof. Ariel Katz’s 2014 blog about The Loss of Access Copyright Royalties and the Effect on Publishers: Sifting Fact from Fiction, which debunks the myths about the Oxford University Press “OUP”)decision close its Canadian K-12 division. Ms. Taylor in her current opinion to continues to attempt to refloat the OUP fiction

There have been no court cases since 2012 that have specifically considered the effect, if any, of the 2012 addition of the word “education” with respect to the fair dealing rights of educators, librarians, students and other essential “users” of the copyright system. In any event, the effect of the dealing on the market for the work being copied is one of the factors that courts would consider in determining fairness or lack thereof and, if Ms. Taylor is somehow correct in her assertion of causal connection, then copyright owners are already protected – so there’s another reason why there’s no loophole that needs to be fixed.

She is apparently unaware of the greatly increased spending since 2012 that bypasses Access Copyright not just because tariffs aren’t mandatory (as Ariel Katz and I have been preaching for a decade or so and the SCC agreed in 2021) but because Access Copyright’s “tariff” offers such poor value. Its repertoire is very limited – especially in the post-secondary educational (“PSE”) sector – and its terms of use are too limited to justify any more than a small fraction of their “approved” tariff, which is:

• $24.80 per FTE student, if the educational institution is a university.
• $9.54 per FTE student, if another educational institution (i.e. college)

The PSE sector is spending more money than ever though acquisitions, direct licensing, and dealing with the much more responsible and responsive American Copyright Clearance Center for transactional licences. Access Copyright is notoriously inefficient in its distribution, offers very limited “rights”, and its repertoire is focussed on Canadian literature – which is not a major component in the PSE sector. Most Canadian university or college grads will never need to read Margaret Atwood or Alice Munro. Maybe they should for their literary betterment. But such material is not part of the curriculum for engineers, doctors, lawyers, computer programmers, and the overwhelming majority of PSE students.

Access Copyright persists in attempting to collect revenues based upon repertoire for which it has NO rights. It once was able to get educational institutions to hold their noses on its dubious and now defunct “indemnity” scheme, which may have appeared to offer some practical value to some institutions. I’ve written a lot about this in the past, including this from 2009.

I have often suggested that Access Copyright could serve a useful purpose if it offered decent value to license its actual repertoire based upon useful terms and conditions at a reasonable price. But that price would presumably be a fraction – perhaps 10% - of what it currently sees itself entitled.

BTW, Access Copyright’s website is deceptively out of date regarding the PSE tariff case law, where it stops in 2017.

Ms. Taylor concludes her perfect puff piece for Access Copyright by saying “The legalized robbery of Canadian authors by the education sector is an international embarrassment and a national shame.” (emphasis and highlight added) Frankly, the national shame is that Canada’s national newspaper would publish something this misinformed, outrageous, and imbalanced that might get mistaken, due to its provenance and the Globe and Mail’s status, for credible journalism or analysis. BTW, I posted several timely tweets about this “opinion” and compiled  them for the comments section for the Globe and Mail, which has apparently decided not to publish my comment  in the “comments” feature following her opinion.

All that said, Ms. Taylor’s analytically and factually challenged “opinion” should at least be useful as a wakeup call for the educational sector – which frankly has not stepped up to the plate with sufficient vigor and confidence since its great victory in the SCC in the 2021 Access Copyright case, for which Ariel Katz laid the legal foundation and influentially intervened and I made the prevailing arguments on behalf of the intervener Canadian Association of Research Libraries (“CARL”).

The good copyright news overall now is that we recently passed Passover this year without the feared fatal budget announcement regarding fair dealing or mandatory tariffs that this Government might have hidden away in Federal Budget. That’s the good news.

The bad news is that this doesn’t mean these dangers have passed, as Ms. Taylor’s opinion piece blatantly demonstrates. Although the Hon. Pablo Rodriguez has his hands full with his incredibly misguided legislation in the form of Bills C-11 (now passed)  and C-18 (the “link tax” bill), that doesn’t mean that he or his enabling officials have forgotten about copyright and the shrill and misinformed voices from Quebec (of which he is Trudeau’s “Lieutenant”) and Bay Street.

Wiser ministers know that copyright revision – other than very careful incremental changes – is not a hill to die on in Canada. Fortunately, there are two other ministers who will hopefully bring some essential legal and policy wisdom to the table, should this become necessary.  The Hon. F-P Champagne, the ISED minister, is actually the minister with historically primary responsibility for copyright. The Minister of Justice – the Hon. David Lametti – who is mentioned by name by Ms. Taylor – may also play a role. He was a leading copyright law professor at the McGill Faculty of Law for about 15 years before he ran for office. His department is responsible for ensuring the constitutionality of any legislation and is responsible for the review and drafting of legislation for the government. He was my client and appeared with me in his capacity as law professor and head of the Centre for Intellectual Property Policy at McGill in another important SCC case that helped to pave the way to the definitive 2021 SCC York ruling that Access Copyright tariffs aren’t mandatory. See Canadian Broadcasting Corp. v. SODRAC 2003 Inc., 2015 SCC 57 (CanLII), [2015] 3 SCR 615.

In the lull before the possible copyright storm, the best thing that the user community can do would be to follow the suggestion of Justice Abella in her last and crowning SCC decision of her illustrious career, namely to “actualize” their fair dealing rights as she puts it in the 2021 Access Copyright v. York University decision from the SCC.

As I’ve said before:

The victories of the PSE (post secondary education) sector are in peril – not only because of AC and its collaborators but because of sometimes unwise strategies in the PSE sector itself. Recall this important analysis by Prof. Ariel Katz following York’s defeat at the trial level in 2017: Access Copyright v. York University: An Anatomy of a Predictable But Avoidable Loss. The fact that the AC litigation against York was not struck down early on and had to go the SCC and that York chose to bet the farm on a bad set of fair dealing guidelines and risk a severe smack down overall on fair dealing does not bode well for the future unless basic lessons have been learned – which is hopefully happening but is not yet evident. York very nearly lost that litigation. Fortunately, my brave client the Canadian Association of Research Libraries (“CARL”) and Prof. Ariel Katz were very instrumental in saving York from this fate – though it’s far from clear that all those responsible for York’s strategy actually appreciate our work.

It surely suggests that the PSE sector needs to update fair dealing guidelines and to follow Justice Abella’s wise words in the York decision:

[106] At the end of the day, the question in a case involving a university’s fair dealing practices is whether those practices actualize the students’ right to receive course material for educational purposes in a fair manner, consistent with the underlying balance between users’ rights and creators’ rights in the Act. Since we are not deciding the merits of the fair dealing appeal brought by York, there is no reason to answer the question in this case.

(underline highlight & emphasis added)

This can only mean that the PSE sector needs to come up with viable fair dealing guidelines that are:

• Neither too permissive nor too defensive
• Sufficiently specific to be actually useful.
• Sufficiently to broad to enable adult responsibility by individual professors and library personnel without the need to seek legal advice or permission from so-called rights owners or their licensees (after all, that is what fair dealing is all about)
• Likely to stand up to scrutiny in the event of litigation.

As I’ve said before:

Perhaps York should have been rather more careful about what it wished for. Both the Federal Court and the FCA had to respond to the counterclaim, which they did as asked. I am on record from the beginning as having questioned not only the guidelines themselves, which emanate from AUCC (now UC) guidelines but York’s decision to needlessly, in my view, put them on trial. Essentially, I had suggested that York get a summary ruling on whether the tariff was mandatory – which should have been very easy at least after the 2015 SCC judgment – and not unnecessarily “bet the farm” on the controversial fair dealing guidelines. Here are some of my blogs in reverse chronological order.

The process of actualizing educators’ fair dealing rights, which includes updating fair dealing guidelines, is essential and may suffice to head off any improvident legislation, such as Ms. Taylor and her supporters would like to see. It is too important to be entrusted to any single organization. That said, it should not be unduly complicated, given the good beginning of the 2012 U of T guidelines with which I was closely involved. These could be satisfactorily updated relatively quickly by a very small number of experts. If different organizations separately develop new guidelines, then let the market decide which approach is better. This may prove more efficient than attempting to form a coalition that could result in delays and devolution to the lowest common denominator. Above all, the mistakes that almost resulted in defeat being snatched from the jaws of victory in the long saga of the York litigation as a result of problematic guidelines and litigation strategy must not be repeated.

The original 2012 U of T fair dealing guidelines were developed in a cooperative collaboration between usually contrasting viewpoints (Casey Chisick and I) under the wise leadership of the now retired and much missed U of T general counsel Steve Moate. I was pleased to have been part of this process. These were, IMHO, the best fair dealing guidelines to date and suggest a method and process of going forward. If Casey and I can agree on anything concerning copyright, chances are that it must be right!

U of T has recently controversially updated its fair dealing guidelines, supposedly in response to the 2021 York decision from the SCC. Here is the new version. I was NOT involved in this update because I was not invited. I and many others are very disappointed with these new guidelines which are a big step backwards and, in some respects, simply wrong and even harmful. I will not go into any detail now as to how they are less than helpful, other than to say this.

Overall, these revised 2022 (as slightly updated in early 2023) guidelines are a disappointing and, in several instances, questionable and even inaccurate revision and update. They are more restrictive for the PSE sector than the 2012 guidelines.

Overall, the guidelines have gone from a reasonably balanced “safe harbour” approach that  enabled and empowered fair dealing to a much more risk-averse restrictive approach that overly protects publishers and needlessly errs on the side of caution at the cost of good education, research, and private study. With three strong SCC fair dealing victories in the last decades and two recent strong SCC judgements that tariffs aren’t mandatory, why wouldn’t U of T offer more assertive and empowering guidelines for the benefit of teachers and, above all, students – in other words, the university community.

If the current government is unwise enough to follow the histrionic hyperbole of Access Copyright and powerful publishers as presented by Ms. Taylor, then the PSE sector must be ready to defend itself with a good offence. This might include:

• Clarifying that TPMs can be circumvented for fair dealing purposes
• Ensuring that users’ fair dealing rights cannot be overridden by contract or waiver
• Ensuring that if crown copyright is not abolished in its present form, then republication of any crown work that is not officially “secret” should be permitted as fair dealing. This would be almost as good as in the USA where the federal government has no copyright rights in its works
• Adding the two little words “such as” to the s. 29 fair dealing provision, consistent with American law.

Anyway, thank you to @ThatKateTaylor this unintentional call to arms to all those who care about a fair deal for fair dealing and other essential aspects of copyright in Canada.

HPK

IP Judges in the Federal Court: Chamber, Echo Chamber and/or Star Chamber?

 Chief Justice Crampton of the Federal Court has recently on March 2, 2023 formally announced the creation of three “chambers” in the Federal Court, namely:

• Intellectual Property and Competition Chambers
• Maritime and Admiralty Chambers
• Class Actions Chambers

 The Court’s Notice states that:

The Registry categorizes and codes all proceedings. This and other case information is considered by the Judicial Administrator when assigning judges to a case. It is therefore not necessary for parties to make a formal request for a matter to be assigned to a judge from the relevant Chamber. For assignments to the Intellectual Property and Competition Chambers, the Judicial Administrator will also consider sub-specialties related to practice areas particular to IP (e.g., copyright, trade-marks, patents and competition).

Assignment of matters to IP Chambers is automatic.

It is not necessary for parties to make a formal request for a matter to be assigned to a judge from the relevant Chamber. The Federal Court Registry categorizes and codes all proceedings, which is considered by the Judicial Administrator when assigning judges to a case.

(highlight added)

The list for the main category of IP & Competition is as follows, as provided by the Court:

• Chief Justice Crampton
• Associate Chief Justice Gagné
• Justice O’Reilly
• Justice Zinn
• Justice Manson
• Justice Roy
• Justice McVeigh
• Justice St-Louis
• Justice Brown
• Justice Fothergill
• Justice Gascon
• Justice Southcott
• Justice McDonald
• Justice Lafrenière
• Justice Pentney
• Justice Grammond
• Justice Walker
• Justice McHaffie
• Justice Fuhrer
• Justice Pallotta
• Justice Little
• Justice Furlanetto
• Justice Aylen
• Justice Tsimberis

This list comprises 24 of the 41 current judges of the Federal Court. Only about seven of the judges on this list had any significant experience in IP law prior to their appointment.

 In recent years, we have seen the cohort of judges with some previous IP litigation experience rise from none to one or two and now to at least seven or eight out of 41. Three of the nine Associate Judges (formerly called Prothonotaries) have a significant background in IP. Overall, this may seem like a good thing – and in many ways it is.

 Predictably, at least one  active plaintiff side litigator firm sees this a positive move that will be “An improvement to IP enforcement in Canada”. However, some cautionary notes should be considered. Some of the best IP judgements over the years have come from judges with a more generalist background who had not previously practiced in IP before being appointed. More about this below…

An ongoing and not unrelated concern on my part and that of some other thoughtful colleagues is with respect to judgments rendered in default proceedings. There is a risk above all that any judge – even one with previous IP experience – may not be sufficiently briefed in a default proceeding in which the adversarial process does  not unfold as it should. Judgments in such cases should rarely if ever be given “neutral citations” and thereby presumptive precedential status. There could be a risk that the “chamber” concept may increase the possibility of judges following their own default judgments or those of their colleagues when such judgments should have little or no precedential value. The American courts have long had a tradition of treating default judgements and some other decisions unworthy of precedential status as “unpublished” judgements that bind only the parties but nobody else and are NOT to be cited as precedents. One hopes that the chamber approach does not exacerbate the problematic potential of default judgments being given neutral and, hence, potentially precedential status. I’ve written about the problem with default judgements getting neural citations before.

 The increasing use of Anton Piller orders (which by definition result from ex parte proceedings and can potentially lead to incarceration for contempt)  - and Norwich Orders exposing the private information of hundreds of people at a time (which are rarely any longer adequately opposed) are particularly fraught with precedential peril and should not be issued on a routine basis and require a very broad understanding of fundamental legal principles. Hopefully, the chamber approach will not lessen the need for all due care and attention to these types of proceedings.

 The late, great, leader of the IP bar and one of the best all-around Canadian barristers of all time  was Gordon F. Henderson, author of the Henderson Report entitled “Intellectual Property: Litigation, Legislation, and  Education” published in 1991 (Cat. No, 43-25\1991E, ISBN 0-662-19084-X,  CCAC No. 00114 91-08) and, sadly, not available online – though hopefully it will be  one day sooner rather than later. I worked very closely with him on that project when I was in government, but it was his distinguished decades of experience that informed the main recommendations. He commented that:

 On balance, I do not think that we need to seek out specialized practitioners to constitute an intellectual property “panel” as such on the Federal Court. However, consideration should be given to the appointment of some practitioners experienced in intellectual property matters. It would not be expected that they would hear all or only intellectual property cases. This would be a solution with no significant downside. It would not require any legislation to implement, although it would require considerable consultation with the Canadian Bar Association, the Patent and Trademark Institute of Canada, and other interested parties in the ever more democratic process of judicial appointments. Those responsible for recruiting should consider no only the practicing Bar but the specialized cadres of government, industry and academia. (highlight added) 

 He cautioned against a specialized court and recommended that:

 Judges should be appointed to the Federal Court with specialized background in intellectual property law, although they should not be assigned exclusively to this area. Recruitment should consider not only private practitioners but government, industry and academia. (highlight added)

A potential danger of having too many IP judges from the private sector is, frankly, that they may tend to come from plaintiff side practices. Some IP firms have very pronounced points of view. Although a judge can leave their practices and any  conflicts behind, can they always leave their sometimes strong points of view behind?

 Copyright, in particular, has become highly polarized - not unlike labour law- where firms tend to pick one side or another. When a firm acts for a major copyright user organization on the one hand and a major copyright collective on the other hand – even where there is no direct conflict of interest – the issue of a business or philosophical conflict may at least appear to arise and some may question whether the public interest is being compromised. Waivers may not solve all the potential concerns. Indeed, certain major media companies are now simultaneously major players as ISPs, copyright owners, and copyright users in various proceedings in various fora. They presumably are doing the best for their shareholders. As for the public interest, maybe not so much. Patent practice tends also to be rather polarized overall – especially in pharmaceutical litigation – though this generality may be evolving. Trademarks law is relatively less prone to polarization.

In any event, most of the money in IP practice is on the plaintiffs’ side – in other words, in enforcement on behalf of rights owners.

 Another phenomenon is that even some IP practitioners tend to think that expertise in one of the three main areas – namely copyright, patent, and trademarks – translates to insight and expertise in the other areas. However, that is very often not the case and is an increasingly problematic proposition as these practices become more like specialized silos. Mindful of the dangers of analogies, one might ask whether a great NFL football player – but someone who can’t even skate – could suddenly be on an NHL hockey team? I would much rather take my chances with a wise generalist judge than a judge who is a former patent lawyer who mistakenly thinks they understand copyright law or vice versa. There are many IP lawyers who lack reliable expertise in all three areas. A little knowledge can be a very dangerous thing.

 Some of the best jurisprudence in IP law has come from judges who had little or no background in IP. Former CJ Beverly McLachlin  -  who penned the landmark “magna carta” Canadian copyright case in CCH Canadian Ltd. v. Law Society of Upper Canada, 2004 SCC 13 (CanLII), [2004] 1 SCR 339 did have some related background in her early career having written a book on architecture and penned an important copyright trial judgement  in Slumber-Magic Adjustable Bed Co. Ltd. v. Sleep-King Adjustable Bed Co. Ltd. et al., 1984 CanLII 54 (BC SC).  

 Other important appellate jurisprudence has come in recent times, for example, from Justices Abella, Bastarache, Rothstein, Rowe, Nadon, and Stratas  - none of whom had a background as IP litigators. Another, of course, is Justice Binnie – a great all-around barrister who was appointed straight to the SCC. He did have some important experience as a litigator in some IP cases. And there have been many excellent IP trial judgments from generalist trial judges in the Federal Court over the years, as well as from judges from the Superior Courts of the provinces.

 While one has high hopes for this “chamber” development, let us not have excessive expectations. We certainly hope that the IP chamber doesn’t somehow become an echo chamber or even a star chamber. We watch with cautious optimism.

 HPK

Indigenous Painting and the Law in Canada

There has been much attention lately to Indigenous painting and law, particularly coyright and criminal law, in Canada.

For example:

Re Noval Morrisseau

Re Autumn Smith:

The left painting is Autumn Smith's interpretation of her being given a traditional name by her grandmother, and was published to Instagram March 29, 2019. The painting on the right is from Tyler Rushnell and was published on Instagram Nov. 9, 2021. (Submitted by Autumn Smith) 

https://www.cbc.ca/news/indigenous/artist-accused-plagiarism-1.6796703

It is important to understand what copyright law does and does not do. Facts and details matter.

There’s no copyright in:

• Ideas as such
• Styles as such
• Symbols including birds, animals, plants, etc. as such

For example, merely copying or imitation of an idea or style is not, by itself copyright infringement. If Monet’s work were not in the public domain, I could still paint my own version of a pond with lilies, as a long as I don’t copy one of his paintings. I might even get away with copying one of his lilies, if it was one small and insubstantial part of a much larger canvas with dozens or hundreds of water lilies and I paint my own version of a lily pond.

Van Gogh – who is regarded as almost as a deity when it comes to paintings of sunflowers – greatly admired the younger Monet’s sunflower painting – even though it superficially seems rather similar. Nobody owns the idea of sunflowers in a vase.

            Van Gogh                                              Monet

This history of all graphic arts, literature, drama, and music has been predicated on imitation and evolution.

The Indigenous community in Canada has some fundamentally different concepts than “Western” property concepts as embodied in common law based copyright law. For example, in Western copyright law, there is no communal ownership. Copyright initially vests in the creator – or the creator's employer in some circumstances - and is limited in time – now 70 years after the artist’s death.

For Canadian copyright law to apply to Indigenous art, as with any art, certain basic facts must be proven. Any party suing for copyright infringement must show that the work is:

• “Original” (which may not be obvious in some cases);
• That the plaintiff is the copyright owner or the assignee (or at least the exclusive licensee of the owner, in which case the owner must included the litigation); and,
• That the work as a whole or at least a sufficiently “substantial part thereof” has been copied or otherwise dealt with contrary to the Copyright Act.

Imitation or even appropriation of a style may not suffice to establish copyright infringement. If I can master my painterly skills to paint pictures in the recognizable style of a well known artist, without copying any of their works or any substantial portion thereof, that alone is likely not copyright infringement.

If, however, I put the famous artist’s name on it, or hold it out as being an authentic Morrisseau or whoever, it may well constitute actionable civil passing off and/or even serious Criminal Code offences.

Changes of colour or the inclusion or elimination of small details in a “copy” of an original work may not suffice to avoid copyright infringement – though watch to see if the Supreme Court of the USA lets the Andy Warhol Estate off the hook for doing little or nothing more than that. What happens in the USA does not always stay in the USA.

Indigenous artists are no better or worse off than other creators when it comes to the cost of litigation. Lawsuits can be expensive, if done properly. But cost recovery is getting better and damage awards are getting higher. And injunctions can be very powerful – and result in jail time for those who disobey them.

In any case, I have always thought that Indigenous artists should take better advantage of the certification mark provisions of Canada’s Trademarks Act, so as to provide a “seal of approval”, as it were, as to the indigeneity of the artist  and the authenticity of his or her works. There is little indication that this mechanism has been used to adequate advantage – or indeed to any significant extent. Such a collective might even be able to help out with the costs of funding litigation when appropriate.

There is much discussion about a “resale” right that might benefit Indigenous artists. Such a right is unlikely to be established in the USA, with whom we have a very open border, in the foreseeable future. It might greatly affect and even disrupt the art market in Canada. And it would only be of any benefit to living artists who are sufficiently successful such that their works significantly appreciate in value while they are still alive. Otherwise, it could become another vehicle for collectives, estates, and lawyers.

HPK

Copyright Board Rules of Practice and Procedure: Plus Ça Change, Plus C'est La Même Chose?

After years of concern about extraordinary delays and other problems that led a Senate Committee to label the Copyright Board back in 2016 as “dated, dysfunctional and in dire need of reform”, the Board has finally come up with some supposedly new “Copyright Board Rules of Practice and Procedure: SOR/2023-24”

The only thing that is reasonably clear from this very prolonged, non-transparent, and no doubt very expensive exercise and the resulting new document is that the Board is trying to justify yet another budget increase of as much as a million dollars a year.

The costs of the Rules are expected to be less than $1 million annually. While parties will be required to provide information earlier on in proceedings, the amount or type of information required from parties will be the same as under the current Model Directive. (highlight and emphasis added)

It bears repetition that the Board has held only one actual hearing in more than five years and that almost all of its decisions for a very long time have been unimportant and mostly unopposed. Indeed, several proposed tariffs have been withdrawn by collectives.

There is nothing in the new procedures that warrants optimism that the Board will rise beyond its dysfunctional doldrums. Meanwhile, the Board will have 25 FTE employees and a net cost of operations before government funding and transfers $5,171,140 for 2022-2023.

I’ll discuss only four issues in these “new” Rules, namely

• Interrogatories
• Quorum
• Case Management
• Delays in Decisions

Interrogatories

The elephant in the room has always been and still remains the issue of interrogatories. Some collectives have used the interrogatory process to put forward irrelevant and arguably abusive questions to objectors that require the production of irrelevant and confidential financial information, etc. The results of overreach on the part of some collective and failure by the Board to control this process have ranged from time consuming fishing expeditions to try to build a case to the driving away of and withdrawal of well-meaning objectors as a result of oppressive and expensive financial and time costs, not to mention irrelevant disclosure of financial and other sensitive business information. Another tactic has been the demand for lengthy interrogatory answers from each member or too many members of associations representing a large membership. See my blog from 2011 about Access Copyright’s aggressive use of interrogatories that led to the withdrawal of all objectors even including major educational associations except from one lone individual whose reason for involvement was never clear.

The Board now explicitly gives itself the discretion to rule on the “scope”, etc. of interrogatories – which it has always had - but absolutely no indication of what type of information will be considered relevant and how it will refrain from making the problematic pro-collective rulings it has made in the past, e.g. as mentioned above:

Interrogatories

34 The Board or the case manager may make an order to permit interrogatories and to specify their number, type, scope and form, the time limits for their completion and the person to whom they may be addressed.

BTW, the Competition Tribunal has had “Rules” in place since 2008 that apparently work well – and are more like the time honoured processes in the Courts that require the exchange of Affidavits of Documents after adequate pleadings and subsequent discovery – rather than the endless and often abusive fishing expeditions enabled by the Copyright Board in the name of “interrogatories” that have driven worthy and well-intentioned objectors away, even long before it became clear that Copyright Board tariffs aren’t mandatory. Courts do not allow for preliminary and lengthy fishing expeditions by plaintiffs to determine the basis, if any, of their case. Courts do not allow plaintiffs to put the cart before the horse. Why would a rational objector spend a fortune engaging in interrogatories or fights about interrogatories and the other procedural uncertainties endemic at the Board to oppose a tariff that won’t even be mandatory at the end of the day?

Quorum:

There is a new and explicit provision re “Quorum”.

Quorum

10 In all proceedings before the Board, the quorum is one member.

I am not aware that anyone asked for this. In the past, this has been dealt with pursuant to s. 22 of the Interpretation Act, meaning that a quorum would be majority of appointed members.

It is bizarre that the Chair of the Board can now designate just one person to be a quorum. Even supposedly simple matters may become contentious and complicated for better or for worse – e.g. the Breaktrhrough Films “unlocatable” case – the decision for which seems to have disappeared from the Board’s expensive new website but can be found here thanks to Prof. Ariel Katz. Although it would seem inconceivable, this new Rule would allow only one member to decide such complex and economically significant matters such as the retransmission tariff, which is worth more than $100 million a year.

BTW, the Copyright Act provides that:

66 (1) There is established a Board to be known as the Copyright Board, consisting of not more than five members, including a Chair and a Vice-chair, to be appointed by the Governor in Council.

This suggests that there must be a least a Chair and a Vice-Chair. The question of whether or not there was a quorum very nearly became an issue in 2018.

Case Management

It's strange enough that, under the legislation and rules, a case manger could be merely an employee or outside consultant who could decide very significant procedural matters, presumably including such matters as rulings on interrogatories.

Case manager

66.504 (1) The Chair may assign a member, officer or employee of the Board or a person engaged under subsection 66.4(3) to act as a case manager of a matter before the Board.

Staff

66.4 ...

(3) The Board may engage on a temporary basis the services of persons having technical or specialized knowledge to advise and assist in the performance of its duties and the Board may, in accordance with Treasury Board directives, fix and pay the remuneration and expenses of those persons.

In the Federal Court and the Ontario Superior Court, case managers are Associate Judges and Masters respectively who invariably have been very experienced lawyers. Even if case management rulings can be entrusted to one person, that person should at least be a duly appointed member of the Board and one with adequate legal qualifications.

Under the new Rules, the case manager can decide such weighty matters as:

• whether interrogatories should take place and their parameters as applicable;
•  documents to be filed with the Board before a hearing, including legal briefs and case records

All that said, it is hard to see how this sits with s. 66.5(2) of the Copyright Act, which requires that:

Decisions

(2) Matters before the Board shall be decided by a majority of the members of the Board and the presiding member shall have a second vote in the case of a tie. (highlight added)

Delays

What other court of tribunal allows a decision to be pending for several years AFTER the adjudicators have “retired” and are presumably being paid while thinking about the pending decision? Judges of the Federal Court and Federal Court of Appeal have eight weeks after retirement to render any pending decisions. Even Supreme Court of Canada justices have only six months after they retire to participate in decisions in cases on which they sat. The Canadian Judicial Council has specifically pronounced that “judges should render decisions within six months of hearing a case, except in very complex matters or where there are special circumstances.”

Even with the recently time limits regulations, the Board can still keep a tariff decision pending for a long time and postpone the date of a decision presumably for years under the rubric of  “exceptional circumstances”.

Someone with a lot of patience and $5.00, might think about doing an Access To Information and  Privacy (aka “ATIP”) request seeking documentation, including names of retired members and amounts paid for post-retirement consideration of decisions in matters of which they have “begun to consider” pursuant to the open-ended provision of s. 66.5(1). The provision reads as follows:

Concluding matters after membership expires

66.5 (1) A member of the Board whose term expires may conclude the matters that the member has begun to consider.

It would presumably be very easy for the Board to provide this information. The Board has very good records going back to its inception in 1989. However, one should not be surprised if the Board were to strongly resist such an ATIP request and even spend a lot of money on outside counsel in the process.

Concluding Comments

Currently, for the first time ever, neither the Vice Chair nor the Secretary General have any legal qualifications. The appointment of the current Vice Chair expires on September 30, 2023. Moreover, there is a notable absence of common law perspective at the Board – even more so than in the past.

On a positive note, it appears that there will NOT be a Copyright Board “Town Hall” this year under the auspices of the CBA at the annual CBA IP Day.  This should be a relief for those who felt obliged to observe this unproductive ritual over the last few years that resulted in essentially nothing other than management platitudes and promises. Here is the presentation of Presentation by Nathalie Théberge, Vice-chair and Chief Executive on Practical results of the Modernization of the Board from last year’s CBA Town Hall posted some time after the fact.

The viability of the Copyright Board in the future will depend on two seemingly simple elements:

1. Collectives must propose tariffs for approval that offers good value, terms and conditions that make them attractive for users, preferably without the need for interrogatories and hearings; and,
2. The Board must develop the expertise, efficiency, and determination to approve such tariff proposals, and, if appropriate, make them even better in a short period of time measured in weeks or months and not in years and not retroactively.

If the Board can manage to expeditiously approve truly fair and equitable tariffs that offer good value and convenience and, above all, provide necessary access to sufficient repertoire, then there is a strong likelihood that such “tariffs” will be utilized with enthusiasm.

However, one can confidently expect that certain collectives, especially any with extremely limited actual repertoire and a narrow view of what constitutes necessary “access”, are busy lobbying hard for legislation to make tariffs effectively mandatory – in spite of two clear Supreme Court of Canada decisions and case law going back decades. Such legislation would be a very unfortunate move on the part of the Government – and would likely give rise to prolonged litigation.

HPK

PS – beware the forthcoming Budget on March 28, 2023 and budget implementation legislation – where we have twice seen this Government break a major campaign promise about not burying bad and irrelevant things in omnibus budget bills.

So I asked ChatGPT "Who is Howard Knopf?"

 As of today:

 Who is Howard Knopf?

Howard Knopf is a Canadian lawyer who specializes in intellectual property law. He has been practicing law for over 40 years and is considered one of Canada's foremost experts in copyright law. Knopf has been involved in many high-profile copyright cases in Canada and is known for his outspoken and often controversial views on copyright policy. He has been an advocate for balanced copyright laws that respect the rights of creators while also promoting access to information and innovation. In addition to his legal practice, Knopf has also been a prolific writer on copyright issues, publishing numerous articles and commentaries on the topic.

BTW, ChatGPT often provides different and even inconsistent answers to the same question when asked again. But I'm happy with the above for now on a Friday. 😉

HPK