Date: 20110616
Docket: T-36-09
Citation: 2011
FC 709
Ottawa, Ontario, June 16, 2011
PRESENT: The Honourable Mr. Justice O'Reilly
BETWEEN:
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SETANTA SPORTS CANADA LIMITED
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Plaintiff
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and
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840341 ALBERTA LTD. carrying
on business as THE BREW’IN TAPHOUSE,
MARK BECK and CASEY STEWART
BECKHUSON
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Defendants
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REASONS FOR ORDER AND ORDER
I.
Overview
[1]
The plaintiff,
Setanta Sports Canada Ltd, has presented a motion for summary judgment against
the defendants for breach of copyright in the broadcast of Ultimate Fighting
Championship [UFC] events. The corporate defendant is an Alberta bar; the individual defendants are officers and directors
of the corporate defendant.
[2]
The issues are:
1. Has Setanta
established that it possesses the rights it seeks to enforce in this proceeding?
2. Has Setanta established that
the defendants have breached those rights?
3. Is Setanta entitled to summary
judgment?
4. Damages and costs
II. Issue
One - Has Setanta established that it possesses the rights it seeks to enforce
in this proceeding?
[3]
According to the
affidavit of Mr. Rod Keary, an officer and director of Setanta, in 2008,
Setanta entered into an agreement with Zuffa LLC, the owner of UFC, and
Canadastar Boxing Inc., a distributor of pay-per-view [PPV] events, which
assigned copyright in UFC broadcasts to Setanta and charged Setanta with
enforcing the others’ intellectual property interests in Canada. The assignment
states that Setanta is a joint holder of Zuffa’s and Canadastar copyright, “so
as to enable [Setanta] to enforce and to take legal proceedings . . . to
enforce any right or remedy available to [Zuffa and Canadastar] in relation to
their proprietary rights in the broadcasts of UFC PPV matches in Canada.”
[4]
The defendants make
two arguments in respect of this contract. First, they suggest that the
agreement amounts to a champertous arrangement. They submit that in this
proceeding Setanta’s only role is to litigate on behalf of Zuffa and
Canadastar, and divide any damages with those other companies. It has no
interest of its own in the proceeding. As such, the defendants maintain that
Setanta is really engaged in improper intermeddling in a law suit with no
legitimate interest in it, and taking a share of the proceeds.
[5]
In my view, the
assignment grants Setanta a joint interest in Zuffa’s and Canadastar’s
intellectual property, which enables it to enforce that interest for their
joint benefit. It is not merely an assignment of the right of enforcement, although
it includes that right. Accordingly, it is not an improper, champertous
arrangement.
[6]
The defendants’
second argument is that the evidence tendered by Setanta does not accord with
its pleadings set out in the statement of claim. In particular, the defendants
contend that the statement of claim relies on Setanta’s rights as a
broadcaster, whereas the evidence, including the agreement described above,
show that Setanta is merely enforcing rights held by others. Paragraph 20 of
the statement of claim describes Setanta as the “exclusive distributor for and
broadcaster, along with its partners, by way of closed-circuit broadcasts or
pay-per-view [PPV] in Canada for Setanta Sports Events and holds all copyrights
associated therewith”. “Setanta Sports Events” is defined in paragraph 1 of the
statement of claim as UFC PPV events, and events shown on the Setanta Sports
Channel. Paragraph 22 explains that Setanta is either the licensee or owner of
the copyright in Setanta Sports Events.
[7]
The defendants argue
that Setanta’s written submissions and its evidence now represent Setanta as
merely an enforcer of Zuffa’s and Canadastar’s intellectual property rights,
not as an exclusive distributor and broadcaster. The defendants claim to be
prejudiced by this alleged change of focus in Setanta’s materials.
[8]
In my view, there is
no significant discrepancy between the statement of claim and Setanta’s
submissions and evidence. The latter clarify the relationship between Setanta
and its partners (i.e. the assignment agreement) which is alluded to in broad
terms in the statement of claim. I cannot see any grounds for a complaint of
prejudice. The defendants were in possession of Setanta’s submissions and
evidence for nearly a year before filing their responding materials on this
motion.
[9]
I find that Setanta
has established that it possesses, by way of assignment, the rights it seeks to
enforce in these proceedings.
III. Issue
Two - Has Setanta established that the defendants have breached those rights?
[10]
The evidence shows
that the defendants broadcast a UFC PPV event on October 25, 2008. Setanta sent
a letter to the defendants advising them to cease broadcasting UFC events
without authorization. After receiving no response, Setanta obtained an
injunction in this Court, issued by Justice Robert Barnes on January 27, 2009,
against the defendants and served it on the defendants at their business
address. Still, it appears that the defendants broadcast another UFC event on
January 31, 2009, and another on November 21, 2009. Setanta continued to
communicate with the defendants in writing, but received no response.
[11]
The defendants argue
that there is no factual or legal basis on which to find the individual
defendants liable for infringing Setanta’s copyright. The statement of claim
alleges that the individual defendants “exhibited or caused to be exhibited”
Setanta Sports Events. However, they say that there is no supporting evidence
put forward by Setanta of any particular infringing acts on their part. They
rely on the case of Sunsolar Energy Technologies (S.E.T.) Inc v Flexible
Solutions International Inc, 2004 FC 1205 at para 23, in which Justice Paul
Rouleau held that the actual actions of a corporate officer must be pleaded in
order for the officer to be found liable for infringement.
[12]
Mr. Mark Beck and Mr.
Casey Beckhuson are listed as officers and directors of the corporate
defendant. They were specifically named in, and served with, Justice Barnes’
injunction. They were responsible for ensuring compliance with it. There is
evidence before me that the injunction was ignored. I note that the defendants
have not put forward any evidence about their knowledge or actions, or lack
thereof, in response to Setanta’s allegations.
[13]
As I read the
statement of claim, Setanta alleges that the individual defendants intercepted
and exhibited one or more broadcasts of Setanta Sports Events without
authorization (para 24). Some action is specifically alleged against them. The
evidence indicates that UFC PPV events were shown in the defendants’ establishment,
even after this Court ordered otherwise. In these circumstances, I find that
the individual defendants should be found liable, along with the corporate
defendant. The evidence shows, at a minimum, that the individual defendants
were indifferent to the risk that broadcast of UFC events would likely infringe
on Setanta’s copyright (Microsoft Corp v 9038-3746 Quebec Inc, 2006 FC
1509 at para 92, citing Ital-Press v Sicoli (1999), 86 CPR (3d) 129 at
para 148 (FCTD)).
[14]
The defendants argue
that I cannot find a breach of a court order without insisting on compliance
with the Federal Courts Rules, SOR/98-116, respecting contempt of court
(Rules 466 to 472). In my view, however, evidence of a failure to comply with a
court order is relevant to deciding the question of the individual defendants’
liability. It goes to their knowledge of the circumstances and their
responsibility for infringement. Reference to that non-compliance, however,
does not require that this proceeding be transformed into a contempt hearing.
IV. Issue
Three – Is Setanta entitled to summary judgment?
[15]
The defendants have
not expressly argued that Setanta is not entitled to summary judgment, except
to raise the issues discussed above. The defendants have not put forward any
evidence to suggest that there remains a genuine issue for trial.
[16]
On the other hand,
Setanta has filed detailed affidavits in support of its motion; the evidence
shows that the defendants have exhibited UFC PPV events without authority and,
in doing so, infringed Setanta’s copyright.
[17]
I find that Setanta
is entitled to summary judgment.
V. Issue
Four - Damages and Costs
[18] The
defendants submit that Setanta is entitled only to nominal damages as it has
not shown any actual harm done, such as a loss of revenue, confusion or
diminished reputation. Setanta’s evidence shows that the UFC event shown in
October 2008 was attended by a mere 15 individual viewers.
[19] Setanta
seeks statutory damages under s 38.1 of the Copyright Act, RSC 1985, c
C-42. It asks for an award of $40,000. Taking account of the factors set out in
s 38.1(5), namely, good or bad faith, the conduct of the parties, and the need
for deterrence, I am satisfied that an award of $20,000.00 is appropriate. I
note the following circumstances:
• failure of the defendants to
respond to written communication from Setanta;
• failure of the defendants to
comply with an order of this Court;
• failure of the defendants to
submit evidence to support its pleadings;
• at least two clear violations
of Setanta’s copyright during the relevant time frame; and
• the need for a significant
damage award in order to deter future infringing activities.
[20] With
respect to costs, the defendants asked for an opportunity to address this issue
by way of further submissions. I will entertain any submissions filed by the
parties within 10 days of this order.
ORDER
THIS COURT
ORDERS that:
1. The
motion for summary judgment against each of the following defendants jointly
and severally with a damages award of $20,000 is allowed:
(a) 840341 ALBERTA LTD. carrying
on business as THE BREW’IN TAPHOUSE, MARK BECK and CASEY STEWART BUCKHUSON.
2. A permanent injunction is
granted against each of the defendants, restraining each of them, their
officers, directors, employees, agents, assigns, servants, or any person acting
under their instructions, or any persons having knowledge from publicly
showing, exhibiting or performing any of the following:
(a) All Ultimate Fighting
Championship [UFC] pay-per-view [PPV] matches and events broadcast in Canada up to and including December 31, 2011;
(b) All matches and events
broadcast exclusively by Setanta in Canada via the Setanta Sports Channel
available via all major Canadian cable providers and via satellite transmission
providers Bell TV and Star Choice; and
(c) From decoding, decrypting or
downloading via the Internet, for exhibition, viewing, performing or from
publicly showing any of the above noted matches and events however broadcast or
telecast, regardless of the source of broadcast or signal feed, without the
written authorization and consent of the plaintiff.
3. The plaintiff shall have its
costs in an amount to be set after considering any written submissions filed by
the parties within 10 days of this order.
“James
W. O’Reilly”
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