On Thursday, July 12, the Supreme Court of Canada (SCC) released
5 decisions, providing guidance with respect to a number of
tariffs. These decisions have been eagerly awaited and together
with the Royal Assent of the Copyright Modernization Act,
represent significant activity in the area of copyright law in
Canada.
Entertainment Software Association v. Society of Composers, Authors
and Music Publishers of Canada In this case, the SCC considered whether a tariff should apply
to video games containing musical works that are downloaded over
the internet as compared to those that are sold in the store. The
focus was on the meaning of the word "communicate" in the
Copyright Act. The SCC discussed the history of
communications pursuant to the Copyright Act as well as
the distinction between performance based rates and reproduction
based rights. The SCC held that extending the term
"communicate" to capture the internet delivery of a
permanent copy of a work goes far beyond what the term was ever
intended to capture. The SCC also considered the principle of technological
neutrality which requires that the Copyright Act apply
equally notwithstanding the diversity of different forms of media.
The SCC held that there is no practical difference between buying a
durable copy of the work in a store, receiving a copy in the mail
or downloading an identical copy using the internet. The SCC held
that the internet is a "technological taxi" that delivers
a durable copy of the work to the user. The Copyright Act
is to be interpreted in a way that avoids an additional layer of
fees based solely on the method delivery to the user. Thus, the
Copyright Board's (the Board's) conclusion that the
internet delivery of a permanent copy of a video game containing
musical works amounted to a "communication" was set aside
and the appeal was allowed in a 5-4 decision.
Rogers Communications Inc. v. Society of Composers, Authors and
Music Publishers of Canada In this case, the SCC was also considering tariffs for
communication and musical works over the internet. These particular
communications consisted of downloads of files such as sound
recordings and streaming of data allowing the user to listen to or
view the content. The SCC adopted its finding from the ESA decision
above that musical works are not "communicated" when they
are downloaded. Thus, the question of whether online music services
are communicating to the public by offering downloads became moot,
and the appeal was allowed for the reasons set out in the ESA
decision above. However, the SCC came to a different conclusion with respect to
music streaming. The SCC held that online music services have a
business model premised on the expectation of multiple sales of
musical works. This necessarily implies that there will be a series
of repeated transmissions of the same work to numerous recipients.
The musical works are indiscriminately made available to anybody
with internet access to the online music services website. Thus,
consumers requesting the streams are not members of a narrow group
such as family or friends, they are members of "the
public". As a result, the SCC held that streaming files
containing a musical work, from the online services website, to the
customers computer, at the customer's request, constitutes
communicating to public by telecommunication and the tariff was
upheld.
Society of Composers, Authors and Music Publishers of Canada v.
Bell Canada In this case, the SCC considered SOCAN's appeal from a
refusal to set a tariff for free previews on music services sites.
The Board had held that the use of previews was not an infringement
of copyright as this was "fair dealing" for the purpose
of research and the Federal Court of Appeal upheld the Board's
decision. However, the SCC came to a different conclusion with respect to
music streaming. The SCC held that online music services have a
business model premised on the expectation of multiple sales of
musical works. This necessarily implies that there will be a series
of repeated transmissions of the same work to numerous recipients.
The musical works are indiscriminately made available to anybody
with internet access to the online music services website. Thus,
consumers requesting the streams are not members of a narrow group
such as family or friends, they are members of "the
public". As a result, the SCC held that streaming files
containing a musical work, from the online services website, to the
customers computer, at the customer's request, constitutes
communicating to public by telecommunication and the tariff was
upheld. The SCC set out the test to determine fair dealing and then
considered what should count as research. The SCC held that an
important goal of fair dealing is to allow users to use copyrighted
works in a way that helps them make creative works. However, this
is not the only activity that would qualify as research under the
Copyright Act, as private study is also considered to be
fair dealing and it has no intrinsic relationship to creativity.
The SCC held that limiting research to creative purposes would also
run contrary to the ordinary meaning of research. The SCC held that from the perspective of the consumer, the
previews are used for the purpose of researching which music to
purchase. The SCC then considered whether that use was
"fair". The SCC held that the Board properly concluded
that previews satisfy the requirements of "fair dealing"
and thus, the online service providers do not infringe copyright.
Furthermore, the SCC held the Board properly balanced the purposes
of the Copyright Act by encouraging the creation and
dissemination of work while ensuring that creators are fairly
rewarded. Thus, the appeal was unanimously dismissed.
Alberta (Education) v. Canadian Copyright Licensing Agency (Access
Copyright) The issue to be determined by the SCC was stated to be
"whether photocopies made by teachers to distribute to
students as part of class instruction can qualify as fair
dealing". The parties were in agreement that photocopies made
for the teachers or at the request of a student qualified as fair
dealing. The Board held that these photocopies were made for the
allowable purpose of research or private study, but did not
constitute fair dealing and were therefore subject to a royalty.
The SCC held that the decision by the Board was not made following
the guidance set out in CCH Canadian Ltd. v. Law Society of
Upper Canada ("CCH") and remitted the matter to the
Board for reconsideration. In particular, the SCC indicated, in a
5-4 decision, concerns with the consideration by the Board of the
"purpose of the dealing", "amount of the
dealing" and "alternatives to the dealing" factors
set out in CCH.
Re:Sound v. Motion Picture Theatre Associations of
Canada The issue to be determined by the SCC was stated to be
"whether the broadcasting of sound recordings incorporated
into the soundtrack of a cinematographic work can be subject to a
tariff under the Act or whether such broadcasts are excluded by
virtue of the definition of 'sound recording' in s.
2." The SCC considered the legislative scheme, the principles
of statutory interpretation, and comparative law and international
rules. The decision of the SCC was unanimous that the Board was correct
that the word "soundtrack" includes pre-existing sound
recordings. As a result, pre-existing sound recordings are excluded
from the definition of "sound recording" when they
accompany a cinematographic work. The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
and
Beverley Moore
Downloads held not to be Communications
Streaming Music is a Communication to the
Public
Previews are Not Subject to Tariff as they are Fair
Dealing
Issue of Photocopies Made by Teacher for Use by Students
Remitted to Board
Pre-existing Sound Recordings Excluded from "Sound
Recording"
Canada: SCC Releases Five Decisions Relating To Copyright Tariffs (Intellectual Property Alert - Week of July 13, 2012)
Last Updated: July 18 2012
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
Do you have a Question or Comment?
Click here to email the Author
Interested in the next Webinar on this Topic?
Click here to register your Interest
More Popular Related Articles on Intellectual Property from Canada
It’s hard to start a lawsuit when you don’t know who you’re suing.
License agreements often contain indemnities.
Given that many Canadian Internet web sites do receive U.S. visitors and many also utilize a DMCA safe-harbour provision, understanding the scope of protection that the safe harbour provides can be important to Canadians.
ICANN (the entity that essentially controls the worldwide domain name system) is in the final stages of processing approximately 1,900 applications for new gTLDs (generic Top Level Domains – like ".com") many of which are expected to come online in 2013.
In "Teva Canada Ltd v Pfizer Canada Inc.", the Supreme Court of Canada held Pfizer’s Canadian Patent No. 2,163,446 to be "void".
In this case, Apotex claimed damages pursuant to s. 8 of the NOC Regulations, and Pfizer alleged that Apotex should not be entitled to damages, due to the principles of ex turpi causa relating to its alleged infringement of the relevant patent.
On May 29, 2013 Justice O’Reilly of the Federal Court dismissed Bayer PM Notice of Compliance proceeding against Cobalt.
In a recent judgment, the Federal Court of Canada, granted Apotex's claim against Pfizer for section 8 damages under Canada's Patented Medicines Regulations, SOR/93-133.
In association with
Related Video
Canada, China And Copyright Law (Presentation)
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
