Federal Court Of Appeal Reverses Copyright Board On "making Available"

• Published date: 17 June 2020
• Author: Mr Gerald Kerr-Wilson
• Subject Matter: Intellectual Property, Litigation, Mediation & Arbitration, Copyright, Trials & Appeals & Compensation
• Law Firm: Fasken

The Federal Court of Appeal has overturned the Copyright Board's (the Board) interpretation of the Copyright Act's "making available" provision in a strongly-worded rebuke of the Board's approach to statutory interpretation and the role of international treaties in understanding domestic legislation.

In ESA v. SOCAN et al (2020 FCA 100), the Court reviewed the Board's decision on the scope and meaning of the "making available" provision at p. 2.4(1.1) of the Copyright Act, which was added by the Copyright Modernization Act in 2012 and reads:

"For 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."

As part of its hearing into the royalties to be paid by online music services, including Spotify, Google Play and Apple Music, the Board had to consider whether subsection 2.4(1.1) gave SOCAN the right to collect royalties when musical works are "made available" for the purpose of downloading as well as on-demand streaming.

In a July 2012 decision in ESA v. SOCAN, which was released before the "making available" provision came into force, the Supreme Court of Canada overturned the Copyright Board and held that the right to communicate a musical work to the public by telecommunication is not infringed when a copy of the work is transmitted over the internet as a download. The Supreme Court determined that transmitting a download of a copy of a work is an act of reproduction, not a public performance, and that the communication right only applies to public performances. As a result of the Supreme Court's decision SOCAN was not entitled to collect royalties for the downloading of musical works.

Copyright Board Revisited Supreme Court Decision on Downloads

During the Online Music Services hearing before the Copyright Board in November 2013, SOCAN argued that with the coming into force of subsection 2.4(1.1) in November 2012, it was entitled to royalties whenever a musical work is "made available", even if it's for the purpose of downloading. The Board initiated a separate proceeding to consider the "making available" issue and invited any interested party to participate. Users, including the Entertainment Software Association of Canada, argued that the "making available" provision only applies when works are...