Supreme Court Of Canada Confirms All Acts Of Making Available Are Covered By Copyright Act: SOCAN v ESA

• Published date: 19 July 2022
• Subject Matter: Intellectual Property, Litigation, Mediation & Arbitration, Media, Telecoms, IT, Entertainment, IT and Internet, Mobile & Cable Communications, Copyright, Trials & Appeals & Compensation
• Law Firm: McCarthy Tétrault LLP
• Author: TechLex Blog, Barry Sookman, Daniel Glover and Connor Bildfell

In a decision just released in Society of Composers, Authors and Music Publishers of Canada v. Entertainment Software Association, 2022 SCC 30,the Supreme Court of Canada confirmed that Canada fully implemented its WIPO copyright Internet Treaty "making available" obligations through a combination of the communication to the public, reproduction, and authorization rights. In doing so, the Court held that any unauthorized act of making a work available online, and any subsequent unauthorized streaming or downloading of the work, are infringing. The decision also reaffirmed the principle that domestic statutes - including the Copyright Act (the "Act") - that are intended to implement international treaties should generally be interpreted in a manner consistent with those treaties and that the standard of review on questions of law decided by the Copyright Board is correctness, not reasonableness.

Background

The Court's decision focused on whether - and if so, how - Canada implemented its international obligations under the WIPO Copyright Treaty ("WCT"). The WCT is one of two multilateral treaties negotiated in 1996 (the other is the WIPO Performances and Phonograms Treaty (the "WPPT")) for the purpose of adapting international copyright rules to new and emerging technologies. It sets out a number of protections that member countries must provide to authors. Of relevance to the appeal is art. 8, which provides that:

without prejudice to the provisions of Articles 11(1)(ii), 11bis(1)(i) and (ii), 11ter(1)(ii), 14(1)(ii) and 14bis(1) of the Berne Convention, authors of literary and artistic works shall enjoy the exclusive right of authorizing any communication to the public of their works, by wire or wireless means, including the making available to the public of their works in such a way that members of the public may access these works from a place and at a time individually chosen by them.

In 2012, the Copyright Modernization Act ("CMA") amended the Act. Among other changes, the CMA introduced three "making available" provisions: ss. 2.4(1.1), 15(1.1)(d), and 18(1.1)(a). Sections 15(1.1)(d) and 18(1.1)(a) apply to performances and sound recordings and were not directly at issue in the appeal. Section 2.4(1.1) applies to works. It amended s. 3(1)(f), which gives authors the right to "communicate the work to the public by telecommunication", by clarifying that,

[f]or the purposes of [the Copyright 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.

The key questions for the Court were to discern what rights the WCT required Canada to implement and how Canada implemented these rights.

What the WCT Requires

The Court confirmed that art. 8 of the WCT has two goals: "(1) clarify that on-demand transmissions are captured by the right to communicate works to the public; and (2) ensure that authors can control the act of making their works available online." The Court expanded on these requirements, quoting from leading international authorities on the construction of the WCT:

[80] The Berne Convention needed to be updated again in response to on?demand technologies. By the 1990s, it was clear the Berne Convention protected authors when their works were distributed throughtraditional "push" technologies like radio and cable broadcasts. But it was not clear whether it also protected authors when their works were distributed through newer "pull" technologies like on-demand transmissions. While it was possible to read the Berne Convention as applying to on-demand technologies, uncertainty existed.

[81] Article 8 resolved this ambiguity .. It clarified that the right of "communication to the public" (an existing Berne Convention right) applied to on?demand transmissions:

The WCT's principal innovation is its specification that the right of communication to the public includes a right of "making available. . .". This right targets on-demand transmissions (whether by wire or wireless means), for it makes clear that the members of the public may be separated both in space and in time. . . . [I]t was possible to interpret the Berne Convention to cover at least wired on-demand transmissions of certain kinds of works, but it was not clear that the Berne Convention required member states to extend the communication to the public right to these transmissions. The WCT therefore supplies the missing mandate .

[82] Article 8's first goal was therefore to clarify that the right to communicate works to the public (a performative activity) applied to on-demand technology. This was "neither a reaffirmation nor a novelty, for it resolves an ambiguity as to whether the old communication to the public rights accommodated or excluded 'pull technologies'".

[83] Article 8's second goal was to ensure that authors could control when their works were made available online. The appellants, respondents, and their experts generally...