Copyright Year In Review — 2016

This article highlights noteworthy Canadian copyright law decisions and developments from 2016. For more updates on the latest intellectual property trends and insights, sign up to receive our IP Report newsletter.

Rogers Communications Partnership v. SOCAN, 2016 FCA 28

In 2006, the Copyright Board certified Tariff 24 (Ringtones) for the period 2003-2005. A judicial review of this decision by the potential payors (corporations selling ringtones) was dismissed and leave to appeal to the Supreme Court of Canada was eventually denied.1 The Board certified a second Tariff 24 (Ringtones) in June 2012 for the period 2007-2013. No review was sought of that decision. In July 2012, the Supreme Court of Canada issued two decisions (ESA & Rogers) in different contexts which determined that when musical works are delivered to consumers by way of downloads, this does not constitute a communication of a musical work to the public by telecommunication.2

Corporations stopped making Tariff 24 payments to SOCAN and asked the Board, in effect, to rescind Tariff 24, retroactively to 2003, in light of ESA and Rogers. The Board refused. The Corporations brought an action against SOCAN in the Federal Court of Canada seeking to recover the monies paid under Tariff 24. SOCAN defended the action on the basis that the prior tariff proceedings were res judicata and could not be attacked once the appeals of those decisions were concluded (or, in the case of the second decision, never taken).

A Rule 220(1)(a) order issued for six questions of law to be determined prior to trial. A Federal Court Judge heard the motion and answered all six. On appeal, the Federal Court of Appeal concluded that three of the six questions were not pure questions of law and ought not to have been answered. One of the remaining questions was whether the Plaintiffs' claim has already been finally decided against them (res judicata / issue estoppel). The Federal Court of Appeal found that circumstances for issue estoppel exist, subject only to the trial judge's ultimate discretion to apply or not apply the doctrine to the Plaintiffs' claims.

Fair Dealing

The defence of fair dealing was made out by the Defendant in 1395804 Ontario Ltd operating as Blacklock's Reporter v. Canada (Attorney General), 2016 FC 1255. Blacklock published articles regarding the Department of Finance suspected to be inaccurate. A subscription to Blacklock's website was purchased and articles forwarded internally for...