Friday, March 13, 2015

Update on Canadian Copyright Board Matters: What is Happening and Not Happening

Supreme Court of Canada

There’s a lot going on – or not going on – concerning the Copyright Board.

The Board has promptly posted all the responses to its Working Group Committee Report. I won’t begin to analyze them, other than to say that there was a surprising amount of agreement amongst a number of normally strange bedfellows (including Music Canada, Access Copyright, major broadcasters and yours truly) that the recommendations might actually make proceedings even longer and more expensive at the Board.

Simon Doyle has written a timely piece in the Globe and Mail – unfortunately it’s heavily pay-walled – about the slowness of the Government to appoint a new Board chairperson. He mentions some – though not all – of the names that are being talked about in various circles. He describes some of the apparently intense lobbying that is taking place. He also quotes me as follows:
“There’s no apparent reason why it now often takes the board four years to get to a hearing and two years or more to render a decision,” Howard Knopf, a copyright lawyer in Ottawa with Macera & Jarzyna LLP, said by email.

Mr. Knopf said the Copyright Board has oversight of about $500-million a year “of collective copyright activity in Canada. Also, the board’s processes have generated a lot of money over the years for certain lawyers, consultants and perennial ‘expert’ witnesses.”

Mr. Knopf said the government can implement regulations that could address the steps, stages and timelines of a hearing, the interrogatory process, the qualification of experts, and timelines for the rendering of a decision after a hearing.

Meanwhile, back in the Courts, on Monday morning, March 16, 2015 the Supreme Court of Canada will hear the CBC v SODRAC appeal, which involves yet another judicial review of a Copyright Board decision. This will be  the 17th case involving important consideration of the Copyright Act that this Court will have heard  beginning with the 2002 case of Théberge v Galerie d’Art du Petit Champlain inc. Seven of these have arisen from judicial review of Copyright Board decisions.  Five others were infringement casesPrior to 2002, the last important copyright case from the Court was Bishop v. Stevens, [1990] 2 S.C.R. 467, which will be referred to very often on Monday.

CBC v SODRAC will focus mainly on technological neutrality. I should disclose my involvement as counsel for the Centre for Intellectual Property Policy at McGill and Prof. Ariel Katz. They have been given leave to intervene on what they call the “mandatory tariff” theory. Their position is that it:
…lacks any basis in law: standard principles of statutory interpretation contradict it; the case law debunks it; and the legislative history discredits it. In addition to absurd results that contradict fundamental tenets of the rule of law, the “mandatory tariff” theory threatens to upset the balance in Canadian copyright law. It would overly compensate owners, contrary to this Court’s holding in Théberge, and it could gut fair dealing and others users’ rights, contrary to what this Court cautioned against in CCH.

The webcast will be delayed because SODRAC has filed some material that it regards as confidential. The music industry will present two joint interventions, and CIPPIC will also appear. All the factums can be found here.

Those who want to watch this live in real time will have to attend at the Court. Proceedings start at 9:30 AM.


Friday, March 06, 2015

Tuesday, February 10, 2015

The Copyright Board Working Group Report dated February 4, 2015

1566 The Wedding Dance by Pieter Brueghel the Elder
(Music at weddings in Canada is subject to Copyright Board tariffs, which are doubled when there is dancing)

On February 4, 2015 the Copyright Board released by email distribution to stakeholders a discussion paper on the OPERATIONS, PROCEDURES AND PROCESSES OF THE COPYRIGHT BOARD. It was prepared by a working group consisting of eight lawyers identified below, all of whom have had some significant experience before the Copyright Board and the Courts, together with Mario Bouchard, the former General Counsel of the Board.

I have extracted the recommendations of the working group below for the convenience of readers. To understand, the full context, the entire document can be viewed here.

I have also included the comments from two members of the working group found at the end of the Report that are apparently in the nature of a dissenting opinion.

The covering letter from the Board’s Vice-Chair and CEO, Claude Majeau can be seen here. This letter, and the underlying document, were apparently sent to about 100 of the "usual suspects"  consisting of Board  "stakeholders" who have somehow been involved as counsel or in house  representatives of parties that have had business before the Board in recent times.

For reasons that are not apparent, there is no mention of this working group process or link to these documents on the Board’s website. That is why I am posting this information here. The Board has oversight over approximately $500 million per annum worth of collective administration of copyright in Canada. Countless Canadians are affected by the Board’s tariffs – whether the tariff concerns the cost of music for dancing at weddings or blank CDs or the materials used in education at various levels. The Copyright Board of Canada is by far the largest such specialized copyright tribunal anywhere in the world.

Many aspects of the Board’s procedures are now being questioned, since the proceedings routinely go on for six years or more, including waiting two years or more for a decision after a hearing. The resulting tariffs often have retroactive application that may come as a complete shock to those ultimately affected, including many small businesses, who may never even have heard of the Copyright Board. Afterwards, there is the now seemingly inevitable judicial review. Even collectives are increasingly concerned, since it is no longer the case that the high costs of Board applications can necessarily be recovered from the tariff itself. Last November 28, I have summarized some of the Recent and Current Developments at and Concerning the Copyright Board of Canada in a blog post here.

Meanwhile, the position of Chair of the Copyright Board remains vacant. The Vice-Chair is the only current full-time member. There is currently one part time member. 

The Board is calling for comments on the Working Group report by March 6, 2015 to be addressed to the Board’s Secretary-General by email at

February 11, 2105
PS - At some point today, February 11, 2015 the Board did post these documents on its website.



FEBRUARY 4, 2015


1. The Board, with the cooperation of collectives and users’ representatives, should develop and implement new ways of notifying current and potential users of the filing of proposed tariffs. Electronic notice should be favoured over other forms of communication; paper notification, including letters and newspaper notices, should be used exceptionally or not at all.

2. New forms of notification should be implemented progressively, on a “best efforts” basis, according to what is technically feasible, financially reasonable and legally permissible. More should be done as technology makes more direct, personal forms of notice easier and more cost effective.

3. Consideration should be given to a variety of options (posting notice of proposed tariffs on a collective’s website; notification by a collective to all known users; emailing by a trade association to its members) so as to select the form of communication which is most efficient for each user type in each situation. In this regard, the Board should attempt to identify trusted third parties through whom more loosely organized user groups could be notified that proposed tariffs have been filed.

4. The Board, with the cooperation of collectives and users’ representatives, should assess the limits, if any, that anti-spam or other similar legislation may impose on communicating electronically with users about a proposed tariff. These limits should be taken into consideration in selecting additional means of publicizing proposed tariffs.

5. The Board should consider installing an RSS or other form of feed or information syndication (e.g. a Twitter account) allowing anyone to request in advance to be notified of the filing of proposed tariffs; collectives should be asked to consider doing the same or posting on their web sites links to the Board’s own notices in this regard.

6. A collective should be required to provide, with the proposed tariff, information about the content of a tariff of first impression and of the nature, purpose and ambit of any proposed material change to an existing tariff. Some of the information could be published with the proposed tariff in the Canada Gazette; all of the information should be posted on the Board’s web site. This requirement should be enforced through “soft” compliance measures.

7. Information provided with the proposed tariff should not bind the collective. The time at which a collective commits to a course of action should remain when it files its statement of case.

8. Subject to the considerations raised in Part II-A above, collectives should be asked to notify existing users when a collective asks for significant changes to an existing tariff. Any such notice should also indicate how a user may object to the tariff

9. Objectors should be required to state in their objection the reasons therefor, either in their notice of objection or as soon as possible thereafter. They could be encouraged to suggest, to the extent possible, alternatives to the terms they find objectionable. This requirement should be enforced through “soft” compliance measures.

10. Reasons provided pursuant to Recommendation 9 should not be binding on the objector. The time at which an objector commits to a course of action should remain when it files its statement of case.

11. A collective should be asked to provide as detailed a reply as possible to the objections it receives, on the same “without prejudice” basis as in Part II-B above. The same or similar “soft” measures outlined in Part II-B above should be used to enforce compliance with this requirement.

12. As a rule, and subject to any requirement of the Privacy Act, all information filed with the Board pursuant to Parts II-B to D above should be supplied to all participants.

13. All information filed with the Board pursuant to Parts II-B to D above by anyone other than individuals acting on their own behalf also should be posted on the Internet.

14. The Board should identify the ways in which it can deal with privacy issues before making available to the public, on the Internet or otherwise, objections filed by individuals acting on their own behalf, with a view to providing the widest possible public access to information filed with the Board.

15. Any request for information in addition to the information filed pursuant to Part II-B, II-C or II-D above should be dealt with on a case-by-case basis.

16. Parties should continue to be allowed to seek information from each other in advance of hearings.

17. Interrogatories should remain the preferred from [sic] of discovery before the Board.

18. As a rule, interrogatories should be exchanged, and the responses thereto provided, after a collective has replied to objections pursuant to s. 68(1)(a) of the Act but before any party is required to file its statement of case.

19. Parties should remain free to pursue the interrogatories they wish.

20. The Board should convene a preparatory meeting between the parties and the Board after the collective has replied to objections and before interrogatories are exchanged. The purpose of the meeting would be to identify tentatively what the relevant issues appear to be and to discuss what information may be required in order to address those issues, with a view to helping the parties exchange interrogatories that are better focussed and more relevant. Minutes of the meeting should be prepared and circulated.

21. As a rule, the Board should rule on the relevance of an interrogatory only when it deals with objections to interrogatories.

22. The Board should exercise caution before advising parties that it does not wish to hear relevant evidence that the Board considers uninteresting or unhelpful. Greater caution should be exercised if a ruling is being contemplated early in the process.

23. The Directive on Procedure should encourage, but not require, parties to consolidate their interrogatories in a single set, irrespective of the number of parties to whom the questions are being addressed.

24. A person being asked similar questions from two or more other parties should be allowed to apply to the Board for an order requiring these parties to consolidate their interrogatories.

25. As a rule, the Board should not consolidate interrogatories.

26. Subject to the comments about consolidation in Part III-F, above, interrogatories should continue to be exchanged only between the party who asks the question and the party who answers it.

27. A party who is asked a question should continue to be allowed to object to it. The requirement that parties first attempt to resolve the issue should be maintained. The party proposing the interrogatory should continue to be required to explain the relevance of the question. The party being asked the question should be allowed to reply to the explanation.

28. The party who objects to an interrogatory should file with the Board, at the time it files its reply, the information required to deal with the objection.

29. The information required to deal with an objection should be filed in the form of a table that includes a column in which the Board will enter its ruling. Rulings on objections to interrogatories should be issued in that form; as all other rulings of the Board, they should be part of the public record and put on the Board’s web site.

30. Only the party who asked an interrogatory should receive the response to it, as is currently the case.

31. A party who asked a question should continue to be allowed to challenge the sufficiency of the response to that question. The requirement that parties first attempt to resolve the issue should be maintained. The party who provided the answer should continue to be required to explain why it considers the response sufficient. The party asking the question should be allowed to reply to these explanations.

32. The person who claims a response is deficient should be the person who files with the Board, at the time it files its reply, the information required to deal with the deficiency claim.

33. The information should be filed in the form of a table that includes a column in which the Board can enter its ruling. Rulings on deficiency claims should be issued in that form; as all other rulings of the Board, they should be part of the public record and put on the Board’s web site.

34. The Board should pursue the creation of a database of orders of precedential value, including rulings that deal with interrogatories.

35. The Board should consider developing more specific guidelines dealing with the interrogatory process.

36. The current principle according to which a responding party provides what it has, in the form it exists, should continue to apply.

37. Where appropriate, the Board should continue to limit what a party must provide in response to an interrogatory to only as much relevant information as is necessary for the Board to arrive at a fair tariff.

38. Consideration should be given to how and to what extent the interrogatory process should be tailored to the importance of the amounts at stake as well as the resources of the parties involved.

39. In appropriate instances, the Board may wish to recommend to objectors with limited means that they use the comments provision of the Directive on Procedure to communicate their point of view to the Board.

40. The Board should ensure that the interrogatory burden of any party, including a collective, is not out of proportion with the amounts at stake.

41. Parties should file with their statement of case all the responses to interrogatories on which they expect to rely, and only those responses.

42. Parties should fully correlate the responses they file with their statement of case.

43. The Directive on Procedure should clarify that the extent to which a party is authorized to rely on a response that was not filed with its statement of case during the course of a hearing. However, the Committee was unable to agree on what that extent ought to be.

Additional note
One member of the Committee, while appreciating the need for caution in reforming the process, expressed concern about whether the report’s recommendations will truly assist the Board in having more efficient and more productive procedures and processes. In particular, the member was uncertain that the recommendations with respect to interrogatories fulfill its objectives: to minimize the burden on parties, to streamline the process, to reduce disputes among parties or to remove potentials bar to participation. Half the recommendations propose keeping the status quo. Others (e.g. who files disputes with the Board, adding a right of reply), while reasonable, may not contribute to the stated objectives of Part III of the report, and in particular “the fact that the existing interrogatory process is a bar to the participation of some entities as parties in Board proceedings.”

Another member was of the view that the discussion paper, even if implemented fully, will have a minimal effect on the problems the Committee was asked to address. The recommendations, taken as a whole, do not really address the expressed need to streamline the Board process in order to shorten the time to get tariff matters completed. In fact, as a result of some recommendations (requiring non-binding explanations, meetings with Board staff at an early stage, addition of a reply stage for interrogatory objections), the process may be lengthened and may become more expensive. The interrogatory process has not been changed in any meaningful way, the recommendations will do little or nothing to reduce the size, scope or burden of interrogatories. In this member’s view, while members of the Committee invested much time and skill in the process leading to this discussion paper, perhaps the nature of the collaborative process inherent in such Committee work necessarily meant that bold initiatives were unlikely or impossible.


Mr. Glen Bloom
Senior counsel, Osler (Ottawa)
Mr. Casey Chisick
Partner, Cassels Brock (Toronto)
Mr. Mark Hayes
Hayes eLaw (Toronto)
Mr. David Kent
Partner, McMillan (Toronto)
Mr. Gerald (Jay) Kerr-Wilson
Partner, Fasken Martineau (Ottawa)
Ms. Colettte Matteau
Matteau Poirier avocats (Montreal)
Mr. Marek Nitoslawski
Partner, Fasken Martineau (Montreal)
Ms. D. Lynne Watt
Partner, Gowlings (Ottawa)
Facilitator: Mr. Mario Bouchard

Thursday, December 11, 2014

Teksavvy is asking for $346,480.68 for its “reasonable costs” from Voltage Pictures

I attended on Monday December 8, 2014 as a spectator at the hearing at the Federal Court in the Voltage Pictures v. John Doe and Jane Doe matter presided over by Mme Prothonotary Aronovitch concerning Teksavvy’s motion to be reimbursed by Voltage for its “reasonable costs in the event it had to release information” arising from Prothonotary Aalto’s order of February 20, 2014 which ordered that that:

3. All reasonable legal costs, administrative costs and disbursements incurred by TekSavvy in abiding by this Order shall be paid by the Plaintiff to TekSavvy.   
4. The reasonable legal costs and disbursements of TekSavvy referred to in paragraph 3 herein shall be paid prior to the release to the Plaintiff of the information referred to in paragraph 2 herein.

Teksavvy is asking for the sum of $346,480.68 for its “reasonable costs”, which includes almost $180,000 in legal fees.  Here’s Teksavvy’s own summary of the costs it seeks to recover:
Category Costs
A. Legal costs:
A.1 Stikeman Elliott LLP $ 123,580.98
A.2 Christian Tacit $ 54,240.00
B. Administrative Costs:
B.1 Information Technology $ 27,092.50
B.2 Operations $ 81,524.18
C. Disbursements:
C.1 TekSavvy Inc. $ 55,457.60
C.2 Stikeman Elliott LLP $ 4,585.42
Total: $ 346,480.68

For its part, Voltage suggests that the maximum it should pay for Teksavvy’s “reasonable costs”, including legal fees, for compliance with Prothonotary Aalto’s order should be no more than $884.00.

That is quite some discrepancy.  Full details are available in the hundreds of pages of documents, including time dockets, affidavits and transcripts of cross-examination that are available here, courtesy of CIPPIC. 

I could say a great deal about this matter, but I won’t say any more at this time.  I’ve already said a lot in past blog posts.  In fact, all I will say now is that I find it interesting that my past blog posts about this matter were referred to in the time dockets of Teksavvy’s lead outside counsel viewable via CIPPC’s website.


Sunday, November 30, 2014

Peter S. Grant’s Resource for Copyright Board Practitioners and Watchers

I occasionally do book reviews when I come across or am given a review copy of something that is useful, interesting and makes a positive contribution to the IP literature – either in an academic or practical way, or preferably both. I avoid commenting on books that are disappointing, although that may become appropriate at some point.
Peter S. Grant has been a pioneer and a leader in Canadian communications law in the broadest sense of the term for many decades. Indeed, I took a course from him as an undergraduate in law (this was well after the invention of talking pictures but a long time before Netscape and Pandora) that introduced me in many ways to the wonderful but often bewildering world of copyright and communications law. One of his many enduring and endearing contributions was to show me and countless others how there are complex interconnection between various disciplines such as broadcasting, telecommunications, tax, competition, advertising, copyright and other areas of the law – not to mention the technology and business developments that keep courts and lawyers busy. These are not separate silos. For a long time, he and Bob Buchan organized the biennial Law Society of Upper Canada conferences that explored these connections, and I was among those who have been honoured to be a speaker in this series.

He has recently published the second edition (the first was in 2010) of his work entitled Communications and the Courts in Canada 2014.

The book focusses on judicial decisions related to the CRTC and the Copyright Board, as well as many relevant decisions involving constitutional, criminal law, freedom of expression, election law, etc. My comments are solely on coverage of copyright law and the Copyright Board.

His parameters of inclusion for copyright judicial decisions are:
  • All judicial decision re copyright liability of radio and TV stations, cable and satellite distribution undertakings, telecommunications carriers, wireless companies and ISPS
  • All judicial decisions regarding judicial review of Copyright Board
  • “all copyright cases dealing with communications companies”
  • Coverage from long, long ago to the beginning of 2014
Given these parameters, I was somewhat surprised not to find certain notable copyright judicial decisions, for example:

·         Leuthold v. Canadian Broadcasting Corporation, 2012 FC 748 (CanLII), Plaintiff sought $22 million from CBC for inadvertent six time re-use  of some of her still photos from 9/11 in a segment of 18 seconds out of a 90 minute documentary for which she had originally been paid $2,500. The appeal was dealt with earlier this year.
·         Warman v. Fournier, 2012 FC 803 (CanLII), This was an action against a website owner and the National Post – involving fair dealing, copyright in titles, etc. The Defendants/appellants withdrew their appeals on the eve of the hearing. This case could just as easily have involved broadcasters as a newspaper and, in any event, there was definitely an “online” aspect to it.
·         Cinar Corporation v. Robinson, [2013] 3 SCR 1168, 2013 SCC 73  was a landmark decision from 2013 in the Supreme Court of Canada concerning the meaning of “substantial part” in the context of a television program
·         National Gallery of Canada v. Canadian Artists’ Representation, 2013 FCA 64 (CanLII) This concerned whether was as formerly the Canadian Artists and Producers Professional Relations Tribunal had jurisdiction over what appeared to be a very obvious case for the Copyright Board, but which did not go that route. This decision was subsequently reversed in 2014 by the SCC.
·         Robertson v. Thomson Corp., [2006] 2 SCR 363, 2006 SCC 43 (CanLII), Landmark copyright class action case in SCC involving reproduction in databases, involving compilations, collective works, etc. 
·         Compo Co. Ltd. v. Blue Crest Music et al., [1980] 1 SCR 357, 1979 CanLII 6 (SCC). This concerned the meaning of “make” in the context of a sound recording. Of interest to all intermediaries in the chain of broadcasting, distribution, publishing etc. 
·         CCH Canadian Ltd. v. Law Society of Upper Canada [2004] 1 S.C.R. 339, 2004 SCC 13, which dealt with fair dealing by the library of the Law Society for its patrons in the context of faxes and photocopies, but which is a the “magna carta” in many respects of “users’ rights” generally and fair dealing in particular – and which could be cited in many situations involving “communications” companies. 

Perhaps these examples don’t fall literally within the parameter of “dealing with communications companies” which the book indicates includes “radio and television stations,, cable and satellite distribution undertakings, telecommunications carriers, wireless companies and internet providers, as well as the postal services”. But it is increasingly difficult to tell the difference anymore between broadcasters, newspapers, print publishers, and producers of films, sound recordings, etc.  Indeed, all of these types of activates are becoming increasingly converged and some companies seem to do most or all of them. So, as useful as this book may be, it should not be considered totally exhaustive with respect to every potentially relevant judicial decision involving Canadian copyright law and communications – considered in the widest sense. Moreover, given the paucity of Canadian copyright jurisprudence, every notable decision tends to get cited wherever possible. 

There is a brief discussion in §10-8 entitled “How Have the Agencies Faired in the Courts?” Mr. Grant states at the outset this brief discussion that the Board was “overruled” in its decisions concerning the definition of “audio recording medium” on two occasions. This is true as far as it goes, but it actually should go further because the FCA also  all but overruled itself regarding an earlier decision in which it did uphold the Board on the meaning of “audio recording medium”.  Mr. Grant then adds an editorial comment that these Federal Court of Appeal decisions “have created a significant and regrettable loophole in Part VIII of the Copyright Act”. Naturally, having made winning arguments in these two cases in the Federal Court of Appeal (See here and here) and notwithstanding the unusually outspoken views of the former Chair of the Copyright Board, Justice William Vancise, I would characterize the result rather differently.  But I would be the first to defend Mr. Grant’s right to make such editorial comments, having made the occasional editorial comment myself. That said, such comments do require some elaboration and he is perhaps a bit too circumspect and perhaps sympathetic overall to the Board in terms of some of its other reversals and corrections in the Federal Court of Appeal and the Supreme Court of Canada. With respect to “fair dealing”, while the Board’s decision in the Alberta case was indeed sent back for reconsideration, given the narrow way the appeal was framed and the way relief was sought,  it was also effectively and fundamentally overruled in its approach and even its fact finding regarding fair dealing in the educational context. 

Perhaps, in a future edition, Mr. Grant will include an explicit and reasonably detailed discussion of “standard of review’, although this is admittedly an elusive and even ineluctable “sempiternal” issue that could consume a whole volume in itself. Nonetheless, it is the inevitable starting point of any judicial review exercise.

The bulk of the book consists of concise but still useful and sometimes even rather detailed summaries of 569 cases that fit the stated parameters of the book. These are far better than most headnotes and quite useful in some cases as a departure point for further research on related cases or issues, for example the one dealing with the Supreme Court of Canada decision in in the Province of Alberta case. (§55-556).

There is, of course, an alphabetical index  of decisions for those who already know what they are looking for.

Mr. Grant provides a useful topical index in §§70-2 to 70-4 of the various copyright decisions that he has catalogued and summarized. However, the index could use more detailed and comprehensive. For example, some important and even hot-button issues as “evidence” and “jurisdiction” or “retroactive” are not to be found.

This book, which is privately published by Mr. Grant’s firm, McCarthy Tétrault and available here, is going to be very useful and a potential time saver to anyone concerned with the work of the Copyright Board and the CRTC. As noted above, I’m not sure that it’s 100% comprehensive and exhaustive in what it purports to cover – but, with that caveat, its close enough to be a very good starting point for research that needs to be done by practitioners who work before the Copyright Board. Doubtless, the same would hold for the CRTC. About 30% of the book consists of statutory material, which is easily and freely available online – but it’s going to be handy at times to have this material in one place. There is a lot of “value added” and convenience that comes with this book. At $90, the book should pay for itself quickly for many practitioners.

The use of this book, in conjunction with the Board’s website and the “free” databases of the Federal Court of  Appeal, the Supreme Court of Canada and could  save interested scholars and practitioners quite a lot of time and their clients a lot of money. Policy makers in the government and some assiduous academics will also find it to be a very useful and productive investment. Bedtime reading, however, it is not.  Still, I will look forward to the next update in a few years.

A very simple further step that the Copyright Board could easily provide in the meantime, which would be even easier now with use of this useful book and which is long overdue, would be the provision of links on its website to the judicial review decisions by the Federal Court of Appeal of the Board’s own decisions and any resulting decisions of the Supreme Court of Canada, when the case gets that far. The Board already has a useful database of all its own decisions from 1990 onwards. With the help of Mr. Grant’s book and the “free” databases mentioned above, this very easy exercise should not require more than a few person days at most of time on the Board’s part and could be readily integrated into the Board’s existing website template and design. There are not that many of these decisions, but they are extremely important to copyright practitioners and scholars. This would save researchers considerable time and effort in the result. This would accomplish much to make the rather opaque state of jurisprudence on the Board’s corpus of decisions much more accessible. With the Board’s four full time lawyers and dozen or so other full time employees (not counting its GIC appointed members), hopefully this is something that we can expect sooner rather than later.