Federal Court Of Appeal Issues Two Decisions On The Copyright Act's "Making Available" Right

• Published date: 16 June 2020
• Author: Mr David Bowden
• Subject Matter: Intellectual Property, Media, Telecoms, IT, Entertainment, Mobile & Cable Communications, Copyright
• Law Firm: Clark Wilson LLP

On June 5, 2020, the Federal Court of Appeal ("FCA") released two decisions that involve the applicability of the "making available right" ("MAR", also known as the "making available provision") under section 2.4(1.1) of the Copyright Act. Both appeals involve tariffs for sound recordings sought by the collective societies that administer rights on behalf of owners of copyright in sound recordings, namely SOCAN, which administers communication rights, and CMRRA-SODRAC, which administers the right to make reproductions.

By way of background, the decisions under appeal were decided after the Supreme Court of Canada's "pentalogy" of copyright cases, released in 2012. One of these decisions, Entertainment Software Association v SOCAN, 2012 SCC 34 ("ESA v SOCAN #1"), held that the download of a computer file that contains a sound recording does not constitute a "communication to the public by telecommunication" of that sound recording, and therefore tariff fees for communication rights were not applicable to such downloads.

A few days before this decision was issued, the Copyright Act was amended to include the MAR, which was mandated by Canada's obligations under WIPO Copyright Treaties. This new provision reads as follows:

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.

SOCAN applied to the Copyright Board to certify a tariff covering the act of uploading files containing sound recordings to a person's servers and making them available to consumers, whether by stream, download, or otherwise. The application turned on whether the new MAR created a new act that could attract royalties, effectively rendering ESA v SOCAN #1 irrelevant. The Copyright Board ruled that it did. More, the Copyright Board's interpretation of the MAR effectively created two tariff triggering events for some commercial activities: the act of making a file available for streaming, and the act of streaming it itself.

In Entertainment Software Assoc. v. SOCAN, 2020 FCA 100 ("ESA v SOCAN #2"), the FCA quashed the Board's decision. The FCA found errors in both the interpretive approaches adopted by the Board in...