Docket:
T-2046-12
Citation:
2015 FC 286
Ottawa, Ontario, March 6, 2015
PRESENT: The
Honourable Mr. Justice O'Reilly
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BETWEEN:
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ROGERS COMMUNICATIONS PARTNERSHIP, TELUS COMMUNICATIONS COMPANY,
BELL MOBILITY INC. AND QUEBECOR MEDIA INC.
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Plaintiffs
/ Defendants by Counterclaim
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and
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SOCIETY OF COMPOSERS, AUTHORS AND MUSIC PUBLISHERS OF CANADA
(A.K.A. SOCAN)
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Defendant
/ Plaintiff by Counterclaim
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ORDER
AND REASONS
I.
Overview
[1]
The plaintiffs are well-known providers of
mobile telecommunication services in Canada. Part of their business involves
selling ringtones to subscribers.
[2]
The defendant, SOCAN, collects, administers, and
distributes royalties for public performances of musical works on behalf of
composers, authors and publishers.
[3]
The plaintiffs brought this motion to determine
six legal issues relating to the validity of a tariff established by the
Copyright Board of Canada that required the plaintiffs to pay royalties to
SOCAN in respect of ringtones and ringbacks (Tariff 24). They seek an order
declaring that Tariff 24 is invalid in respect of ringtones because the
transmission of ringtones to their subscribers does not involve the
communication of musical works to the public under s 3(1)(f) of the Copyright
Act, RSC 1985, c C-42 (provisions cited are set out in an Annex).
Alternatively, they ask me to conclude that the Board lacked jurisdiction to
certify Tariff 24 in respect of ringtones. Further, they assert that SOCAN has
been unjustly enriched by royalties already paid under the tariff, and want to
know which SOCAN members have received them.
[4]
SOCAN argues that Tariff 24 was validly enacted
and seeks an order requiring the plaintiffs to continue to pay the required
royalties (for reasons outlined below, the plaintiffs stopped paying ringtone royalties
in 2012). SOCAN also submits that the plaintiffs cannot succeed because their
claim is precluded by the doctrines of res judicata and estoppel.
[5]
The parties have framed the following six
issues:
•
Does the Internet transmission to a customer’s
mobile device of an electronic ringtone file containing a musical work
constitute a communication of that work to the public by telecommunication
within the meaning of section 3(1)(f) of the Copyright Act?
•
Were the decisions of the Copyright Board of
Canada certifying SOCAN Tariff 24 (Ringtones) for the years 2003-2005 and
2006-2013 intra vires the Board?
•
Is any part of the plaintiffs’ entire claim
barred under the doctrine of res judicata?
•
Are the plaintiffs estopped from claiming part
or all of the relief sought in this action by an agreement executed by the
plaintiffs and filed with the Copyright Board of Canada on June 7, 2010?
•
Did SOCAN’s collection of SOCAN Tariff 24
royalties constitute an unjust enrichment?
•
Are the plaintiffs entitled to an order tracing SOCAN
Tariff 24 royalty monies?
[6]
While I accept that these issues arise here, I
propose to address them in a different order, and would restate them as
follows:
1.
Has the plaintiffs’ claim already been finally
decided against them?
2.
Based on their 2010 agreement with SOCAN, are
the plaintiffs precluded from claiming the relief they seek?
3.
Is the Internet transmission of a ringtone file
a communication of a musical work to the public?
4.
Did the Board have jurisdiction to certify
Tariff 24?
5.
Was SOCAN unjustly enriched when it received
Tariff 24 royalties?
6.
Are the plaintiffs entitled to an order tracing
the distribution of Tariff 24 royalties?
II.
Background
[7]
The plaintiffs began an action against SOCAN for
repayment of ringtone royalties based on two 2012 decisions of the Supreme
Court of Canada, described below. Within the plaintiffs’ action, they asked the
Court to decide the six legal issues outlined above; SOCAN agreed, and Justice
Anne Mactavish issued the corresponding order in 2014.
[8]
The Board initially certified Tariff 24 in 2006.
The tariff covered the period from 2003 to 2005. Numerous objectors had opposed
the tariff, including the plaintiffs and, after the Board issued it, they
challenged it in the Federal Court of Appeal. The Court dismissed the
application for judicial review and upheld the tariff, finding that the
transmission of ringtones to subscribers over the Internet amounted to a
communication of musical works to the public (Canadian Wireless
Telecommunications Assn v Society of Composers, Authors and Music Publishers of
Canada, 2008 FCA 6 [CWTA]). The Supreme Court of Canada denied
leave to appeal.
[9]
Subsequently, on agreement between SOCAN and the
service providers, the Board extended Tariff 24 to cover the period from 2006
to 2013. The Board’s decision was not challenged on judicial review.
[10]
Separately, the Board dealt with other tariffs
dealing with royalties for the transmission of musical works over the Internet
and through digital mobile networks. Tariff 22.A dealt with downloads of
musical works. Tariffs 22.B to 22.G set rates for other on-line uses – eg,
commercial and non-commercial radio, and gaming sites.
[11]
Tariff 22.A was challenged by telecommunication
and Internet service providers, including the plaintiffs, who argued that
downloads did not constitute communication of musical works to the public.
Tariffs 22.B to 22.G were also challenged by others on the basis that downloads
of video games containing musical works did not constitute communication of
those works to the public. The Federal Court of Appeal dismissed both
applications for judicial review (Shaw Cablesystems GP v SOCAN, 2010 FCA
220; Entertainment Software Association and the Entertainment Software
Association of Canada v CMRR/SODRAC Inc, 2010 FCA 221).
[12]
Appeals from both of these decisions, along with
a trilogy of other related cases, were heard by the Supreme Court of Canada in
2011. The Supreme Court concluded that the Internet delivery of downloads of
musical works did not constitute communication of those works to the public by
telecommunication, although streaming them did (Rogers Communications Inc v
Society of Composers, Authors and Music Publishers of Canada, [2012] 2 S.C.R. 283 [Rogers]). Similarly, it found that downloads of video games
containing musical works did not amount to communication of those works to the
public by telecommunication (Entertainment Software Association v Society of
Composers, Authors and Music Publishers of Canada, [2012] 2 S.C.R. 231 [ESA]).
[13]
After these decisions were handed down, SOCAN
returned the royalties it had previously collected under Tariff 22. However,
the plaintiffs, believing that the Supreme Court’s conclusions with respect to
downloads applied equally to ringtones, took the position that Tariff 24 was no
longer valid, and stopped paying royalties to SOCAN for ringtones.
[14]
In light of ESA and Rogers, the
plaintiffs applied to the Board to vary its Tariff 24 decisions. The Board
declined. It ruled that the plaintiffs’ application related to the enforcement
of its earlier decisions, an issue it thought was best dealt with by this
Court. Accordingly, the plaintiffs began this action against SOCAN.
[15]
The plaintiffs’ position is that they are owed
about $15 million in ringtone royalties that should never have been paid. SOCAN
argues that its members are owed about $12 million for royalties the plaintiffs
refused to pay after the Supreme Court’s rulings in ESA and Rogers.
III.
Issue One – Has the plaintiffs’ claim already
been decided against them?
[16]
SOCAN maintains that the Board already concluded
that the transmission of ringtones amounts to a communication of musical works
to the public by telecommunication. The plaintiffs unsuccessfully challenged
the Board’s first decision to certify Tariff 24 on that question (CWTA).
They failed to persuade the Federal Court of Appeal that the Board erred. The
Supreme Court of Canada denied leave to appeal the Federal Court of Appeal’s
decision. Therefore, according to SOCAN, the plaintiffs are bound by the
Board’s decision and cannot now claim that it is invalid.
[17]
I disagree.
[18]
Under the common law doctrine of res judicata,
there are two bases on which a party can be precluded from re-litigating
something that was, or could have been, raised in previous proceedings – issue
estoppel, and cause of action estoppel. It is unnecessary here to distinguish
or elaborate on the two forms since they share the three criteria set out
below. A party cannot re-litigate a matter where:
(i)
the same question was decided in the earlier
proceeding;
(ii)
the parties to both proceedings are the same;
and
(iii)
the earlier decision was final.
(Angle v Minister
of National Revenue, [1975] 2 S.C.R. 248; Grandview v Doering, [1976] 2
SCR 621).
[19]
In my view, the first and second criteria are
met here, but not the third.
[20]
It is clear that the issues in CWTA were
(1) whether the transmission of ringtones amounted to a communication of a
musical work, and (2) whether the communication was to the public. In this
action, the plaintiffs say that the issue is different; that is, the question
is whether they are entitled to repayment of ringtone royalties. However, the
plaintiffs would only be entitled to repayment if, in fact, the transmission of
ringtone downloads does not constitute communication of musical works to the
public. The repayment they seek is a potential remedy that might flow from that
conclusion. But, as I see it, the issue at the heart of this action is the same
as the one decided in CWTA – whether transmission of ringtone downloads
amounts to the communication of musical works to the public.
[21]
As for the second criterion, obviously the
parties are the same.
[22]
However, I find that the third criterion –
whether the earlier decision was final – is not met. It is clear that the Board
addressed the main question in this action, that is, whether the transmission
of ringtone downloads constitutes a communication of musical works to the
public by telecommunication. Its answer was yes, the Federal Court of Appeal
agreed, and the Supreme Court of Canada declined to hear an appeal from that
decision. On the surface, at least, it appears that the issue was decided, and
that the decision was final.
[23]
However, pursuant to the Copyright Act,
the Board always has the power to vary its royalty decisions where there
has been a subsequent material change in circumstances (s 66.52). In that
sense, a decision of the Board is never really final. Similarly, refugee
decisions rendered by the Immigration and Refugee Board, which has a comparable
power to reconsider its own rulings, are not considered final for purposes of res
judicata (Adar v Canada (MCI), [1997] FCJ No 695 at paras 10-11).
[24]
Therefore, for example, even after a Supreme
Court of Canada ruling on a royalty decision of the Board, the Board could find
that circumstances require that its decision be changed. Here, it is a decision
of the Supreme Court of Canada itself that allegedly brought about a material
change of circumstances. After ESA and Rogers were issued, the
plaintiffs asked the Board to vary its Tariff 24 decision accordingly. It
refused, and directed the plaintiffs to seek a remedy in this Court. Although
the Board expressed reluctance to override the decision of the Federal Court of
Appeal in CWTA, it did not regard it as final. Rather, it suggested that
the plaintiffs should seek relief here.
[25]
Under the circumstances, it appears to me that
the plaintiffs have an opportunity to have their legal obligations determined
according to the current state of the law by way of this action. There is no
possibility of challenging the Federal Court of Appeal’s decision in CWTA;
nor can the plaintiffs now present a new request to the Supreme Court of Canada
to grant them leave to appeal; nor can the plaintiffs go back to the Board,
although they tried. Under these circumstances, I cannot conclude that the
plaintiffs are precluded, based on the previous decisions of the Board and the
Federal Court of Appeal, from pursuing this action. Whether they are actually
entitled to the declaration they seek is, of course, another matter, addressed
below.
[26]
I would add that, even if I had found that the
earlier decision on ringtone royalties was final, this is a case where it might
have been unfair to stop the plaintiffs from seeking relief by way of this
action. Where a judicial decision dictates, in effect, that an earlier ruling
was clearly wrong, an aggrieved party may be entitled to seek the benefit of
the later decision (Sanofi-Aventis Canada Inc v Pharmascience Inc, 2007
FC 1057 at para 60-61, aff’d 2008 FCA 213). As discussed below, the Supreme
Court’s decisions in Rogers and ESA effectively declared that the
Board and the Federal Court of Appeal erred in finding that the transmission of
ringtone downloads amounts to the communication of musical works to the public.
The doctrine of res judicata, whose purpose is to advance the interests
of justice, may admit exceptions in special circumstances such as these (see, eg,
Hockin v Bank of British Columbia, [1995] BCJ No 688 (BCCA) at paras
34-36).
IV.
Issue Two – Based on their 2010 agreement with
SOCAN, are the plaintiffs precluded from claiming the relief they seek?
[27]
SOCAN argues that the plaintiffs are precluded
from denying their obligation to pay ringtone royalties given that they
expressly agreed in 2010 to be bound by Tariff 24 until 2013.
[28]
To succeed on this argument, SOCAN must show
that the parties had a common understanding of the agreement, that it relied on
that common understanding, and that its reliance on the agreement caused it
prejudice (Ryan v Moore, 2005 SCC 38 at para 59). In my view, SOCAN
cannot meet these criteria.
[29]
First, the parties clearly did not have a common
understanding of the significance of the agreement. SOCAN understood that the
plaintiffs were agreeing that they were legally required to pay ringtone
royalties and would not oppose those payments while the agreement was in force
(until 2013). The plaintiffs understood that they were merely agreeing to the
quantum of the royalties set out in the tariff. Having already challenged the
Board’s jurisdiction to impose ringtone royalties, the plaintiffs would not
have agreed that the Board’s decision to certify Tariff 24 was legally sound.
In fact, they say no agreement could give the Board the power to issue a tariff
that exceeded the terms of the Copyright Act; Rogers and ESA
make clear, they say, that Tariff 24 went beyond the Act’s provisions relating
to the communication right.
[30]
The agreement, dated January 31, 2010, states
that the parties agreed to the terms and conditions of Tariff 24 for the period
of 2006 to 2013. The agreement’s main provisions state that the parties agreed:
(i)
to the tariff structure, royalty rates, terms
and conditions of Tariff 24;
(ii)
that the objectors would withdraw their previous
objections and would not file any new ones during the term of the agreement;
(iii)
that the agreement did not prejudice the
parties’ rights subsequent to the term of the agreement;
(iv)
that the agreement did not amount to an
admission relating to royalties payable subsequent to the term of the
agreement; and
(v)
that the parties were free, subsequent to the
agreement, to take any position on royalties as they saw fit.
[31]
SOCAN submits that these terms, in effect,
prevent the plaintiffs from disputing their obligation to pay ringtone
royalties under Tariff 24. In particular, it points to paragraph (v) above
(clause 5(c) of the agreement) and maintains that this provision implies that,
since the plaintiffs were free to change their position after the tariff
expired, they could not dispute the payment of royalties under Tariff 24 while
the tariff was in force.
[32]
Suffice to say, the parties did not have a
common understanding of the agreement. SOCAN believed that the plaintiffs
agreed to be bound by the royalty provisions set out in Tariff 24 and, by
implication, would not, for any reason, resist making those payments during the
currency of the tariff. However, the plaintiffs, relying on the strict terms of
the agreement, maintain that they agreed only to the quantum of the tariff, to
refrain from filing further objections with the Board, and to preserve their
right to take a different position once the tariff expired.
[33]
The plaintiffs never agreed, they say, to
relinquish their opportunity to bring an action for the recovery of ringtone
royalties that should not have been paid. In other words, the plaintiffs
believed that they had preserved their right to bring an action against SOCAN,
notwithstanding the agreement, if the appropriate circumstances presented
themselves.
[34]
I see little common ground between the parties
on this aspect of their agreement.
[35]
Second, given that there was no common
understanding of the meaning of the agreement, SOCAN cannot claim that it
relied on that common understanding.
[36]
Given my conclusions on the first two criteria,
it is, strictly speaking, unnecessary to consider whether SOCAN was prejudiced
by reliance on the agreement. In any event, given the absence of a common
understanding, I cannot characterize the plaintiffs’ position as amounting to a
repudiation of a mutual assumption to SOCAN’s detriment (Ryan, above, at
para 74). The agreement between them did not specifically rule out the
possibility of this form of action and cannot, in my view, be used to stop the
plaintiffs from bringing it.
V.
Issue Three - Is the Internet transmission of a
ringtone file a communication of a musical work to the public?
[37]
SOCAN argues that the Internet transmission of
ringtone downloads constitutes a communication of musical works to the public
by telecommunication.
[38]
In my view, the Supreme Court of Canada has
decided otherwise. Its decisions are binding on me.
[39]
In ESA, the majority (per Justices Abella
and Moldaver) noted that royalties for reproducing musical works contained in
video games are worked out before the games hit the market. The question before
it was whether copyright owners were also entitled to additional royalties for
the communication of their musical works when video games containing these
works were purchased and downloaded over the Internet instead of being
purchased in a store. It was agreed that a store purchase would not engage the
communication right.
[40]
The majority found that there should be no
difference between the two methods of selling the same works. It concluded that
the Copyright Act imports a principle of technological neutrality,
meaning that the Act should apply equally to diverse forms of media.
Accordingly, downloading a digital file – in effect, creating a copy identical
to versions available in stores - should be treated no differently than store
purchases. In addition, downloads can be distinguished from streaming given
that the latter amounts to listening to a musical work at the time of transmission,
not reproducing it.
[41]
Tracing the history of the word “communicate” in the Act, the majority in ESA
concluded that communication of musical works has always been distinct from
reproducing copies of those works. Communication was first meant to cover live
performances, then radio broadcasts, then telecommunication. The communication
right, which is illustrative of the performance right in the introductory
paragraph of s 3(1) of the Act, has always been separate from reproduction
rights.
[42]
Therefore, the majority in ESA concluded
that the Internet delivery of a copy of a video game containing a musical work
did not amount to a communication of that work. It follows that the
transmission of a ringtone download containing a musical work does not
constitute a communication of that work.
[43]
SOCAN argues that ringtones are different from
the kinds of downloads discussed in ESA. For example, ringtones are not
sold in stores in a physical form the way video games or other media containing
musical works are. Further, ringtones do not constitute a durable copy of the
original musical work. A ringtone cannot be played by consumers in the same way
that they can play CDs or traditional digital musical files. It is played only
when the consumer’s phone rings, and those within listening range typically
hear only a snippet of the musical work.
[44]
I agree with SOCAN that there are differences
between downloads of ringtones and downloads of other forms of musical works.
However, I fail to see how these differences make ringtones akin to
performances of musical works, which would engage the communication right under
the Act. In my view, the transmission of ringtone downloads, like the
transmission of downloads of digital musical files considered in Rogers
and ESA, represent reproductions of musical works, not public
communications of them.
VI.
Issue Four – Did the Board have jurisdiction to
certify Tariff 24?
[45]
The plaintiffs argue that the Supreme Court’s
jurisprudence relating to downloads of musical works make clear that the Board
should never have certified Tariff 24. In fact, since it is now apparent that
downloading ringtones does not amount to the communication of musical works,
the plaintiffs say that certifying Tariff 24 was beyond the Board’s
jurisdiction.
[46]
The plaintiffs point out that the effect of ESA
and Rogers was to invalidate the respective tariffs in issue for the
entire period they were in force. They argue that the same should be true here.
They maintain that I should find that Tariff 24 is and always was invalid, and
that the Board had no jurisdiction to certify it in the first place.
[47]
I disagree. The case before me is different
from ESA and Rogers.
[48]
In those cases, the Board’s decisions to certify
tariffs relating to downloads was challenged directly and immediately and pursued
all the way to the Supreme Court of Canada. The Supreme Court determined
conclusively that the Board had wrongly certified the tariffs in issue and
overturned them. The effect of the Court’s decisions was to nullify the tariffs
entirely.
[49]
That is not the case before me. The plaintiffs
unsuccessfully challenged the Board’s decision to certify Tariff 24.
Accordingly, the Tariff has been in force from the date of the Board’s first
decision relating to it. To date, there has been no decision overturning or
varying it. While the correctness of the Board’s decision is an issue before me
by way of this separate action, strictly speaking, the validity of Tariff 24 is
not.
[50]
Accordingly, I cannot conclude that the decision
to certify Tariff 24 was beyond the Board’s jurisdiction. However, as discussed
below, Tariff 24, in effect, became unenforceable after Rogers and ESA.
VII.
Issue Five - Was SOCAN unjustly enriched when it
received Tariff 24 royalties?
[51]
The plaintiffs argue that their payments of
royalties for ringtone downloads unjustly enriched SOCAN because those payments
were not legally required.
[52]
I disagree.
[53]
The doctrine of unjust enrichment comprises
three elements. The enrichment must have been (1) to the defendant’s benefit;
(2) at the plaintiffs’ expense; and (3) made in the absence of a juristic
reason. Here, SOCAN was enriched by the payment of ringtone royalties at the
expense of the plaintiffs. So, the first two elements are clearly present.
[54]
The remaining issue is whether there was a
juristic reason for those payments. In my view, there was – Tariff 24.
[55]
However, I begin by noting that this aspect of
the unjust enrichment analysis is meant to be applied flexibly, with discretion
and with a view to achieving fairness between the parties (Garland v
Consumers’ Gas Co, 2004 SCC 25 at para 43-44).
[56]
The plaintiffs have the burden of showing an
absence of a juristic reason, on a prima facie basis. However, a
disposition of law amounts to a juristic reason for enrichment, so long as it
is legally valid (Garland, at para 49-50). As mentioned,
Tariff 24 has never actually been overturned, varied, or found to be ultra
vires. Accordingly, the payments originally made in respect of it were clearly
made for a juristic reason – to comply with the terms of the tariff. However,
in my view, one cannot overlook the fact that the Supreme Court of Canada, in
effect, ruled that the Copyright Act does not authorize tariffs such as
Tariff 24, ie, in respect of downloads of musical works that do
not amount to the communication of those works to the public by
telecommunication. In the circumstances, I am satisfied that this is sufficient
to meet the plaintiffs’ low, initial burden to show a prima facie absence
of a juristic reason for the payment of ringtone royalties. It was clear in Garland that the disposition of law in issue was completely inoperative as it
conflicted with the Criminal Code (at para 48). However, I do read Garland as requiring plaintiffs in unjust enrichment claims to establish that the
disposition of law on which the defendant relies is clearly invalid. Such an
approach would seem to be antithetical to the requirement to approach these
claims flexibly and with discretion, with a view to achieving an equitable
outcome. The next step in the unjust enrichment analysis involves consideration
of the reasonable expectations of the parties, and public policy factors (Garland, at para 54). The fact that SOCAN relied on Tariff 24 and received royalties
on behalf of its members is obviously a relevant factor. However, it is also
relevant that SOCAN itself recognized that Tariff 24 might be put in jeopardy
by the Supreme Court’s decisions in Rogers and ESA. SOCAN pointed
out in its submissions to the Court that a conclusion that the transmission of
downloads of musical works were not communications of those works could have an
impact on Tariff 24. SOCAN was clearly aware that it might not be entitled to
continue to collect ringtone royalties if the Supreme Court were to conclude,
as it did, that the transmission of downloads of musical files did not amount
to the communication of those works by telecommunication.
[57]
Additionally, the fact that the plaintiffs
ceased making royalty payments under Tariff 24 after Rogers and ESA
is also relevant. It appears that both parties anticipated that Rogers and
ESA could affect their positions in respect of Tariff 24.
[58]
As a matter of public policy, it is obviously
reasonable to expect parties to respect their obligations under a disposition
of law, such as a tariff, and binding agreements. This factor supports the view
that the plaintiffs were obliged to make payments for ringtone royalties at
least until the legal foundation for Tariff 24 was put in doubt by Rogers
and ESA.
[59]
Therefore, in my view, Tariff 24 does not amount
to a juristic reason for the payment of ringtone royalties beyond the point in
time when SOCAN was put on notice of “a serious
possibility” that the legal foundation on which Tariff 24 was based was
faulty (Garland, at para 59). Accordingly, I cannot characterize SOCAN’s
receipt of ringtone royalties as an unjust enrichment prior to the Supreme
Court’s decisions in ESA and Rogers. During that time period,
SOCAN would have been aware that the plaintiffs opposed Tariff 24, but the
tariff had been upheld by the Federal Court of Appeal, and the Supreme Court of
Canada had denied leave to appeal. There would have been no basis for a
reasonable belief that the tariff was legally suspect.
[60]
However, once the Supreme Court of Canada
decided ESA and Rogers, SOCAN was clearly put on notice that the
legal basis for Tariff 24 was, at best, thin. In my view, any royalty payments
made after the release of those decisions would have amounted to an unjust
enrichment. As mentioned, the plaintiffs ceased making royalty payments at that
point. So, as a matter of fact, there has been no unjust enrichment.
VIII.
Issue Six - Are the plaintiffs entitled to an
order tracing the distribution of Tariff 24 royalties?
[61]
The plaintiffs maintain that, if it fails in its
argument on unjust enrichment, then SOCAN must identify which of its members
received ringtone royalties in order to enable the plaintiffs to recover from
them directly. They ask me to order SOCAN to provide information about which of
its members received those royalties.
[62]
I concluded above that, under the circumstances,
SOCAN was not unjustly enriched by its receipt of ringtone royalties pursuant
to Tariff 24. Payments by the plaintiffs ceased once SOCAN was put on notice
that the legal basis for Tariff 24 might be unsound. Had the plaintiffs
continued to make royalty payments after the Supreme Court of Canada issued ESA
and Rogers, a tracing order might have been justified in order to
permit them to recover those payments.
[63]
The evidence before me shows that SOCAN
distributed, but did not collect, ringtone royalties after the Supreme Court
issued its decisions in Rogers and ESA. Since SOCAN was not
unjustly enriched by any royalty payments before or after those decisions were
released (because the plaintiffs stopped making them), there is no basis for
issuing a tracing order.
IX.
Conclusion and Disposition
[64]
For the foregoing reasons, I would answer the
questions arising on this motion, as follows:
1.
The plaintiffs’ claim has not been finally
decided against them.
2.
The 2010 agreement between the plaintiffs and
SOCAN does not prevent them from claiming the relief they seek.
3.
The Internet transmission of a ringtone file
does not constitute the communication of a musical work to the public.
4.
The Board had jurisdiction to certify Tariff 24.
5.
SOCAN has not been unjustly enriched by its
receipt of Tariff 24 royalties.
6.
The plaintiffs are not entitled to a tracing
order.
[65]
As success on this motion is mixed, I would make
no order as to costs.
ORDER
THIS COURT ORDERS that:
1.
The plaintiffs’ claim has not been finally
decided against them.
2.
The 2010 agreement between the plaintiffs and
SOCAN does not prevent them from claiming the relief they seek.
3.
The Internet transmission of a ringtone file
does not constitute the communication of a musical work to the public.
4.
The Board had jurisdiction to certify Tariff 24.
5.
SOCAN has not been unjustly enriched by its
receipt of Tariff 24 royalties.
6.
The plaintiffs are not entitled to a tracing
order.
7.
There is no order as to costs.
"James W. O'Reilly"
Annex
|
Copyright
Act, RSC 1985, c C-42
|
Loi sur
le droit d’auteur, LRC (1985), ch C-42
|
|
Copyright in
works
3. (1) For the purposes of this Act,
“copyright”, in relation to a work, means the sole right to produce or
reproduce the work or any substantial part thereof in any material form
whatever, to perform the work or any substantial part thereof in public or,
if the work is unpublished, to publish the work or any substantial part
thereof, and includes the sole right
|
Droit
d’auteur sur l’œuvre
3. (1)
Le droit d’auteur sur l’œuvre comporte le droit exclusif de produire ou
reproduire la totalité ou une partie importante de l’œuvre, sous une forme
matérielle quelconque, d’en exécuter ou d’en représenter la totalité ou une
partie importante en public et, si l’œuvre n’est pas publiée, d’en publier la
totalité ou une partie importante; ce droit comporte, en outre, le droit
exclusif :
|
|
…
|
[…]
|
|
(f)
in the case of any literary, dramatic, musical or artistic work, to
communicate the work to the public by telecommunication,
|
f) de communiquer au public, par
télécommunication, une œuvre littéraire, dramatique, musicale ou artistique;
|
|
Variation of
decisions
66.52 A decision of the Board
respecting royalties or their related terms and conditions that is made under
subsection 68(3), sections 68.1 or 70.15 or subsections 70.2(2), 70.6(1),
73(1) or 83(8) may, on application, be varied by the Board if, in its
opinion, there has been a material change in circumstances since the decision
was made.
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Modifications
de décisions
66.52
La Commission peut, sur demande, modifier toute décision concernant les
redevances visées au paragraphe 68(3), aux articles 68.1 ou 70.15 ou aux
paragraphes 70.2(2), 70.6(1), 73(1) ou 83(8), ainsi que les modalités y
afférentes, en cas d’évolution importante, selon son appréciation, des
circonstances depuis ces décisions.
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