Bishop v. Stevens, [1990] 2 S.C.R. 467
Télé‑Métropole Inc. Appellant
v.
Michael Bishop Respondent
indexed as: bishop v. stevens
File No.: 20695.
1990: March 30; 1990: August 16.
Present: Lamer C.J.* and
La Forest, L'Heureux‑Dubé, Gonthier and McLachlin JJ.
on appeal from the federal court of
appeal
Copyright
‑‑ Infringement ‑‑ Prerecording of song for broadcast
purposes ‑‑ Whether right to broadcast a musical work includes the
incidental right to make an "ephemeral" recording beforehand ‑‑
Whether composer implicitly consented to ephemeral recordings in granting a
licence to broadcast performances of his work ‑‑ Copyright Act,
R.S.C. 1970, c. C‑30, ss. 2, 3(1), 17(1).
Respondent
Bishop composed the music and lyrics to a song and sent a copy, with the
appropriate forms, to a British association which acts to protect and enforce
its members' copyrights. This association is affiliated with the Composers,
Authors and Publishers Association of Canada (CAPAC). Stevens, a singer,
subsequently recorded the song without entering into any agreement with Bishop
and arranged with appellant Télé‑Métropole to appear on certain television
shows in order to publicize it. Télé-Métropole broadcast two performances of
the song using a prerecorded tape. It gave due notification and paid the
appropriate fees for the broadcast performances to CAPAC, and the payments were
eventually forwarded to Bishop.
Bishop
alleged that Télé‑Métropole had infringed his copyright by recording the
song without his permission, even though the recording was to be used only for
the two broadcasts. The trial judge found that Télé-Métropole's prerecording
infringed Bishop's copyright. The Federal Court of Appeal dismissed the appeal
on this issue.
Held: The
appeal should be dismissed.
The
right to broadcast a performance under s. 3(1) of the Copyright
Act does not include the right to make "ephemeral" recordings
beforehand for the purpose of facilitating the broadcast. Copyright law is
purely statutory law which simply creates rights and obligations as set out in
the statute. The right to perform and the right to record a work are
separately enumerated in s. 3(1) . They are distinct rights in theory and
in practice and are generally assigned separately, and administered by
different entities. Section 3(1) (d) provides that
copyright includes the sole right to make any record or other contrivance by
means of which the work may be mechanically performed or delivered, and nothing
in this section restricts its application to recordings made for the purpose of
reproduction and sale. If a recording made for any purpose, even one not
prejudicial to the copyright holder, is not authorized by the copyright holder
then it is an infringement of his rights. A literal reading of s. 3(1) (d) does
not prohibit the practice of prerecording: it simply requires a broadcaster to
make the appropriate arrangements with the holder of the recording rights. An
implied exemption to the literal meaning of s. 3(1) (d) is all
the more unlikely in light of the detailed and explicit exemptions in s. 17(2)
of the Act.
Ephemeral
recordings are a very convenient device for broadcasters and their use is
widespread, but they are also subject to abuse. In other countries, where the
right to make ephemeral recordings as an adjunct of broadcast performances is
recognized by statute, conditions are imposed on the broadcaster limiting the
time for which an ephemeral recording may be kept and the use to which it may
be put. Strict safeguards are necessary; these should be decided on by the
legislature and not the courts.
Respondent
did not implicitly consent to the ephemeral recordings in granting a licence to
broadcast performances of his work. CAPAC powers are confined to performances
and do not extend to contrivances for the reproduction of the performance.
CAPAC can only grant licences which lie within its powers. Since the right to
perform does not include the right to make ephemeral recordings, the CAPAC
licence is confined to performance and cannot extend to the right to make
ephemeral recordings.
Cases
Cited
Referred
to: Compo Co. v. Blue Crest Music Inc., [1980] 1 S.C.R.
357; Ash v. Hutchinson & Co. (Publishers), Ltd., [1936]
2 All E.R. 1496; Performing Right Society, Ltd. v. Hammond's Bradford
Brewery Co., [1934] 1 Ch. 121; Watkins v. Olafson, [1989]
2 S.C.R. 750.
Statutes
and Regulations Cited
Copyright Act, R.S.C. 1970,
c. C‑30, ss. 2, 3, 13, 17, 19, 48, 49, 50.
Copyright Act, 1956 (U.K.), 4 & 5
Eliz. II, c. 74, s. 6(7).
Revised Berne Convention, Schedule II of
the Copyright Act, R.S.C. 1970, c. C‑30, arts. 1, 11, 13,
14.
Rome Copyright Convention, 1928,
Schedule III of the Copyright Act, R.S.C. 1970,
c. C‑30, art. 11 (bis).
Rules of the Supreme Court of Canada,
s. 29(2).
Television
Broadcasting Regulations, C.R.C. 1978, c. 381, s. 5(5).
Authors
Cited
Canada. Consumer and Corporate Affairs. From
Gutenberg to Telidon: A White Paper on Copyright. Ottawa:
Department of Communications, 1984.
Canada. Parliament. House of Commons. Sub‑Committee
on the Revision of Copyright. Government Response to the Report of
the Sub‑Committee on the Revision of Copyright.
Ottawa: Government of Canada, 1986.
Canada. Parliament. House of Commons. Sub‑Committee
on the Revision of Copyright. A Charter of Rights for Creators:
Report of the Sub‑Committee on the Revision of Copyright.
Ottawa: The Sub-Committee, 1985.
Canada. Royal Commission on Patents, Copyright, Trade
Marks and Industrial Design. Report on Copyright (the Ilsley
Report). Ottawa: Queen's Printer, 1957.
Fox, H. G. The Canadian Law of Copyright and
Industrial Designs (2nd ed.). Toronto: Carswells, 1967.
Keyes, A. A. and C. Brunet. Copyright in
Canada: Proposals for a Revision of the Law. Ottawa:
Consumer and Corporate Affairs Canada, 1977.
Sanderson,
P. Musicians and the Law in Canada. Toronto:
Carswells, 1985.
APPEAL
from a judgment of the Federal Court of Appeal (1987), 80 N.R. 302, 18 C.P.R.
(3d) 257, 16 C.I.P.R. 243, dismissing in part an appeal from a judgment of
Strayer J., [1985] 1 F.C. 755, 4 C.P.R. (3d) 349, allowing respondent's action
for copyright infringement. Appeal and cross-appeal dismissed.
Jacques
A. Léger and Laurent Carrière, for the
appellant.
Roger
T. Hughes, Q.C., and John N. Allport, for
the respondent.
//McLachlin
J.//
The
judgment of the Court was delivered by
MCLACHLIN J. --
The principal issue in this case is whether the right to broadcast a musical
work in accordance with the Copyright Act, R.S.C. 1970, c.
C-30 (now R.S.C., 1985, c. C-42 ), includes the incidental right to make an
"ephemeral" recording beforehand for the sole purpose of facilitating
the broadcast.
The
appellant Télé-Métropole Inc. operates a television broadcasting business.
The respondent Bishop is a musician, who composed the music and lyrics to a
song entitled "Stay". He sent a copy, with the appropriate forms,
to the Performing Rights Society (PRS) of Great Britain, which is an
association for the protection and enforcement of music copyrights held by its
members. That association is affiliated with a similar association in Canada,
the Composers, Authors and Publishers Association of Canada (CAPAC), which
administers rights held by PRS and its members within Canada. CAPAC is a
"performing rights society" as contemplated by s. 48 (now s. 66) of
the Copyright Act , and is entitled to collect fees for performing rights
of its members and affiliates according to a scale published in the Canada
Gazette. These fees are then passed on to the copyright holder.
Stevens,
a singer, subsequently heard a performance of the song, and had inconclusive
discussions with the respondent about the possibility of recording it.
Without entering into any agreement with the respondent, Stevens recorded the
song, in both English and French (under the title "Ne t'en vas pas" (sic)). To
publicize the recording, Stevens arranged with the appellant to appear on
television shows that feature popular music. Performances of the song were
broadcast by the appellant on two occasions, in each case using a prerecorded
tape. The appellant, though unaware that the song was written by the
respondent and not by Stevens, gave due notification and paid the appropriate
fees to CAPAC, and the payments for the broadcast performances were eventually
forwarded through PRS to the respondent. No specific arrangements, however,
were made regarding the prerecordings used in the broadcast.
Subsequent
to the broadcasts, the respondent entered into an agreement with the Canadian
Musical Reproduction Rights Agency Ltd. (CMRRA), an organization for the
protection of reproduction rights in music held by its members. By the terms
of the agreement, CMRRA had the non-exclusive right to administer the
reproduction rights in the respondent's work, including the right to take legal
action (with the respondent's consent) to collect monies due or to enforce his
rights.
The
respondent and CMRRA brought an action against several defendants including
Stevens and the appellant. By the time of the trial, only the appellant
remained as defendant. The complaint against the appellant was that it had
infringed the respondent's copyright by recording the song without first
obtaining his permission, though the recording was intended to be used only to
effect the later broadcasts (which the parties agreed involved only performing
rights that the appellant had properly paid for). The appellant claimed that
the right to broadcast the performances included the incidental right to make
an "ephemeral" recording for the sole purpose of facilitating the
broadcasts.
Strayer
J., at trial, found that the respondent had copyright in the song, and that the
copyright had been infringed by the appellant's prerecording, though the
infringement was minimal. He awarded damages in the amount of $150, and
further ordered that the prerecordings of the performances used for the broadcast
be destroyed. He held also that CMRRA was a proper party to the action in so
far as it sought relief against future infringements, though it could not sue
in respect of an infringement of the respondent's rights that occurred before
the respondent entered into an agreement with CMRRA. An appeal to the Federal
Court of Appeal was allowed in part, on the issue of whether CMRRA was a proper
party, but the Court, per Pratte J., agreed that the prerecordings constituted an
infringement of the respondent's copyright. Leave to appeal on the issue of the
prerecordings was granted by this Court.
CMRRA
purported to cross-appeal the holding that it was not a proper party to the
action. The appellant applied to quash the cross- appeal, on the grounds that
no leave had been sought, that the time limits for appealing had been exceeded,
and that the issue was not one of national importance. This Court granted the
motion. The respondent subsequently purported to cross-appeal on the same
issue, also without seeking leave. At the hearing of the case we indicated
that we did not wish to hear argument on this point.
Statutory
Provisions
Copyright
Act
2. . . .
"performance" means any acoustic
representation of a work or any visual representation of any dramatic action in
a work, including a representation made by means of any mechanical instrument
or by radio communication.
3. (1) For the purposes of this Act,
"copyright" means the sole right to produce or reproduce the work or
any substantial part thereof in any material form whatever, to perform, or in
the case of a lecture to deliver, the work or any substantial part thereof in
public; if the work is unpublished, to publish the work or any substantial part
thereof; and includes the sole right
.
. .
(d) in the case of a literary, dramatic, or musical work,
to make any record, perforated roll, cinematograph film, or other contrivance
by means of which the work may be mechanically performed or delivered;
.
. .
(f) in case of any literary, dramatic, musical or artistic
work, to communicate such work by radio communication;
and
to authorize any such acts as aforesaid.
17. (1)
Copyright in a work shall be deemed to be infringed by any person who, without
the consent of the owner of the copyright, does anything that, by this Act,
only the owner of the copyright has the right to do.
Analysis
The
issue in this case arises because the introduction of new technology presented
a situation not contemplated by the drafters of the original Canadian Copyright
Act in the 1920's.
The
Act was based on, and designed to implement, the Berne Convention of 1886 as
revised in Berlin in 1908, which set forth an international code and created a
union of states "for the protection of the rights of authors over their
literary and artistic works": Revised Berne Convention, Schedule II of the Copyright
Act, Article 1 . Canada is a party to that convention.
The
Revised Berne Convention sets out a number of specific rights of authors
(comprising also composers and artists), including Articles 11, 13 and 14:
Article
11
The stipulations of the present Convention shall
apply to the public representation of dramatic or dramatico-musical works, and
to the public performance of musical works, whether such works be published or
not.
.
. .
Article
13
The authors of musical works shall have the
exclusive right of authorizing (1) the adaptation of those works to instruments
which can reproduce them mechanically; (2) the public performance of the said
works by means of these instruments.
.
. .
Article
14
Authors of literary, scientific or artistic works
shall have the exclusive right of authorizing the reproduction and public
representation of their works by cinematography.
.
. .
The
above provisions apply to reproduction or production effected by any other
process analogous to cinematography.
These
specific rights find their reflection in the introductory paragraph to s. 3(1)
and in s. 3(1) (d) of the Copyright Act . The
first of these refers to the right to perform (Article 11 ), and the second to
the right to make any record, perforated roll, cinematograph film or other
contrivance by means of which the work may be mechanically performed or
delivered (Articles 13 and 14 ).
With
the advent of radio broadcasting, the Convention was further modified in 1928
by, inter alia, the addition of Article 11 (bis):
Article
11 (bis)
(1) Authors of literary and artistic works shall
enjoy the exclusive right of authorizing the communication of their works to
the public by radiocommunication.
.
. .
Canada
is also a party to this round of revisions, known as the Rome Copyright
Convention, 1928. Section 3(1) (f), referring
explicitly to the sole right of the copyright holder to communicate the work by
radio communication, was added to the Copyright Act in 1931
to implement the Rome agreement.
Technological
progress, of course, did not stop there. As broadcasting became more advanced,
the practice developed of recording a performance for broadcast later, in order
to ensure greater quality and flexibility for broadcasters. A further round of
revisions to the convention was undertaken in Brussels, in 1948, and as part of
these revisions a paragraph (3) was added to Article 11 (bis):
(3)
Except where otherwise provided, permission granted in accordance with
paragraph (1) of this Article shall not imply permission to record the
radio-diffused work by means of instruments recording sounds or images. It
shall, however, be a matter for legislation in the countries of the Union to
determine the regulations for ephemeral recordings made by a broadcasting body
by means of its own facilities and used for its own emissions. The
preservation of these recordings in official archives may, on the ground of
their exceptional documentary character, be authorised by such legislation.
Canada,
however, did not adhere to the Brussels Convention, and unlike many other
countries has not specifically provided in its legislation that these
"ephemeral" recordings are incidental to the right to broadcast. This
leaves open the question posed in this case -- whether the right to make a
prerecording of a radio broadcast is included within the right to broadcast, or
whether the making of the prerecording is the making of a "record,
perforated roll, cinematograph film, or other contrivance" within the
scope of s. 3(1) (d), for which separate permission must be obtained from
the copyright holder.
The
appellant presents two main arguments in favour of its contention that the
right to make ephemeral recordings is included within the right to broadcast.
First, the appellant submits that the Act must be interpreted in light of
technological progress and the practical exigencies of broadcasting. When
understood in this light, an ephemeral recording falls within the definition of
broadcast performance, rather than being a true recording, because it is part
of the process by which such performances are usually effected. An ephemeral
recording may be distinguished from a true recording by the purpose for which
it is made. A record within the meaning of s. 3(1) (d),
according to the appellant, is one made for the purpose of being reproduced,
thereby reaching a wider audience than the original performance. An ephemeral
recording, on the other hand, is but a means to facilitate reaching exactly the
same audience as a live broadcast performance would. It is not intended to be
reproduced, and is often technically unsuitable for high quality reproduction.
Appellant's
second main contention is that in granting a licence through PRS and CAPAC to
broadcast performances of his work, respondent impliedly consented to the
making of the ephemeral recordings. Under s. 17 (now s. 27) of the Act, there
is no copyright infringement if a person does something which only the
copyright holder has the right to do, provided that the copyright holder
consents. This argument too depends on the appellant's contention that
prerecording is standard practice in the broadcast industry. Appellant also
places some reliance on the fact that in Britain, a licence from PRS to
broadcast a performance would by statute (Copyright Act, 1956, s.
6(7)) include the right to make ephemeral recordings. Therefore, respondent's
ceding of performance rights to PRS must be understood as including consent to
the appellant's act of making the ephemeral recordings.
The
respondent relies on a more literal reading of ss. 2 and 3 of the Act.
Although s. 2's definition of "performance" includes a representation
made by radio communication, nothing in that definition limits s. 3(1) (d), which
provides that the copyright holder has the sole right to make any
record, perforated roll, cinematograph film, or other contrivance by means of
which the work may be mechanically performed or delivered. Section 3(1) (d) does
not on its terms distinguish between a recording made to facilitate a broadcast
and one made for any other purpose. Playing the recording for broadcast comes
within the definition of performance, but making the recording does not. In
the respondent's view, the ability to prerecord for greater convenience and
flexibility when broadcasting is a benefit for which the broadcaster should be
expected to pay.
On
the issue of consent, respondent claims that no consent to prerecord is given
by the CAPAC licence. The respondent challenges the contention that
prerecording of works in which copyright is held by others is standard
practice, maintaining that this was not proved by expert witnesses.
Furthermore, CAPAC would be unable to grant a licence to record, because under
the scheme of the Act CAPAC deals only with performing rights.
Although respondent's arrangement with PRS might mean he would have ceded the
right to make ephemeral recordings in Britain, the question of what rights were
given to the appellant by the CAPAC licence must be governed by the Canadian
legislation, which makes no allowance for such recordings.
Issue I:
Does the Right to Broadcast a Performance Include the Right to Make Ephemeral
Recordings?
Analysis
of these arguments must begin by emphasizing that copyright law is purely
statutory law, which "simply creates rights and obligations upon the terms
and in the circumstances set out in the statute": Compo Co.
v. Blue Crest Music Inc., [1980] 1 S.C.R. 357, at p. 373, per
Estey J. First and foremost, then, this case is a matter of statutory
interpretation. It is clear from an examination of s. 3(1) that it lists a
number of distinct rights belonging to the copyright holder. As stated in Ash v.
Hutchinson & Co. (Publishers), Ltd., [1936] 2 All E.R.
1496 (C.A.), at p. 1507, per Greene L.J.:
Under
the Copyright Act , 1911 [on which the Canadian Act was based], s. 1(2) , the
rights of the owner of copyright are set out. A number of acts are specified,
the sole right to do which is conferred on the owner of the copyright. The
right to do each of these acts is, in my judgment, a separate statutory right,
and anyone who without the consent of the owner of the copyright does any of
these acts commits a tort; if he does two of them, he commits two torts, and so
on.
See also Compo Co.
v. Blue Crest Music Inc., supra, at p. 373.
The
right to perform (including radio broadcast), and the right to make a
recording, are separately enumerated in s. 3(1) . They are distinct rights in
theory and in practice, as is evident from a description of the licensing
system by which musicians obtain payment for use of their works:
Two main assignments occur. Both are a significant
step towards earning income from transferring copyright. One is the assignment
of the performing right to a performing rights society. The terms of the
assignment are technically negotiable. However, both PROCAN and CAPAC, which
are discussed below, have standard forms for assigning performing rights which
are seldom amended. The second assignment is of the remainder of the copyright,
that is, all copyright except the performing right, which was previously
assigned to the performing rights society, to a music publisher. Upon
assignment, the publisher becomes the owner of the copyright, and usually
through its agent reproduction rights agency, licenses specific copyright uses
thereby generating income. This is a skeletal outline of the voluntary aspect
of the transfer system in relation to the music business.
.
. .
Reproduction rights agencies are generally agents
for music publishers as owners of musical copyrights. They license reproduction
rights, which are essentially all of the musical copyrights other than the
performing right.
(P.
Sanderson, Musicians and the Law in Canada (1985),
at pp. 22 and 24.)
Thus the
rights to perform and to record a work are considered sufficiently distinct
that they are generally assigned separately, and administered by different
entities.
The
distinction is also mirrored in the Act, beyond the separate enumeration of the
two rights in s. 3(1) . Both the right to perform and the right to record are
subject to a system of compulsory licensing, but under markedly different
terms. Under s. 13 (now s. 15) of the Act, if a work has been performed in
public during the composer's lifetime, then anytime after the composer's death
on application the Governor in Council may order that the copyright owner grant
a licence to perform the work in public. By contrast, once a work has been recorded
any other person may make a recording of the work, as long as a royalty of two
cents per side per copy is paid to the copyright holder (s. 19 (now s. 29)).
This
distinction between the right to perform and the right to record a work is
unsurprising in light of the object and purpose of the Act. As noted by Maugham
J., in Performing Right Society, Ltd. v. Hammond's Bradford Brewery Co., [1934]
1 Ch. 121, at p. 127, "the Copyright Act , 1911, was passed with a single
object, namely, the benefit of authors of all kinds, whether the works were
literary, dramatic or musical". See also Article 1 of the Revised Berne
Convention, cited above. A performance is by its very nature fleeting,
transient, impermanent. When it is over, only the memory remains. A composer
who authorizes performance of his work for a period of time has not irrevocably
given up control over how the work is presented to the public. He may choose
at a future time to withdraw his authorization, and be the sole interpreter of
his own work, or he may place conditions on his authorization. He may control
the frequency of performance, and choose the audiences which are to hear his
work. Other performers might copy his performances without authorization, but
the public nature of performance is such that this will likely come to his
attention. Furthermore, no imitation of a performance can be a precise
copy. A recording, on the other hand, is permanent. It may be copied easily,
privately, and precisely. Once a work has been recorded, the recording takes
on a life of its own. This is why, from a composer's point of view, the right
to control the circumstances under which the first recording is made is
crucial. Once the composer has made or authorized a recording of his work, he
has irrevocably given up much of his control over its presentation to the
public. These are the reasons why the rights to perform and to record are
recognized as distinct in the Act, and why in practice a composer may wish to
authorize performances but not recordings of his work.
The
parties in this case do not disagree on the basic distinction that the Act
makes between the right to record and the right to perform. The appellant,
however, argues that it is not at issue in this case, because an ephemeral
recording has nothing to do with s. 3(1) (d). It
is not made for the purpose of being reproduced or sold, but rather for
technical reasons. But as the respondent points out, s. 3(1) (d)
contains no mention of purpose. It simply provides that copyright includes the
sole right:
(d) in the
case of a literary, dramatic, or musical work, to make any record, perforated
roll, cinematograph film, or other contrivance by means of which the work may
be mechanically performed or delivered;
Interpretation
of a statute must always begin with the ordinary meaning of the words used, and
nothing in this section restricts its application to recordings made for the
purpose of reproduction and sale. A recording may be made for any purpose,
even one not prejudicial to the copyright holder, but if it is not authorized
by the copyright holder then it is an infringement of his rights. For example,
it would seem to me that an agent who made an unauthorized recording of a
songwriter's work for the purpose of getting record companies interested would
not have infringed the Act any less because his action ultimately benefited the
songwriter.
The
appellant argues that ephemeral recordings fall outside the scope of s. 3(1) (d)
because they are necessarily included within the separate right to broadcast a
performance. Appellant submitted that in modern practice, all but 10 per cent
of television programming is prerecorded, and that prerecording is virtually
essential to ensure the quality of broadcasts, and to enable broadcasters to
offer the same programming at convenient times across five different time
zones.
I do
not doubt that the facts on which this contention is based are true, and I
cannot say that I am unsympathetic to the appellant's situation. However, the
appellant has not established that, at the time of their enactment, the
sections of the Act providing for the right to broadcast a performance must have
been understood to include the right to prerecord. Even now it remains fully
possible, and quite common, to broadcast live performances. And a literal
reading of s. 3(1) (d) does not by any means prohibit the practice of
prerecording. It simply requires a broadcaster wishing to prerecord to make
the appropriate arrangements with the holder of the recording rights.
Furthermore,
an implied exemption to the literal meaning of s. 3(1) (d) is all
the more unlikely, in my opinion, in light of the detailed and explicit
exemptions in s. 17(2) (now s. 27(2)) of the Act, providing for matters as
diverse as private study, research or critical review, educational use,
disclosure of information pursuant to various federal Acts, and performance of
a musical work without motive of gain at an agricultural fair.
Appellant
points out further that it is required by a regulation promulgated by the
Canadian Radio and Telecommunication Commission (Television
Broadcasting Regulations, C.R.C. 1978, c. 381, s. 5(5)) to make archival
recordings of all programmes, and keep them for at least four weeks from date
of broadcast. In light of this requirement, it is submitted, at least one
exception to s. 3(1) (d) must be implied.
I
cannot see how this aids the appellant. The CRTC archival recordings are not
strictly at issue in this case, and are raised only by analogy. They do
appear to conflict with the right given to the copyright holder by s. 3(1) (d), it is
true. But that simply means that if a copyright holder were ever to claim that
his rights were being infringed by the unauthorized recording of his works for
archival purposes, the courts would have to decide whether the two enactments
are reconcilable, or whether one or the other should take precedence. In this
case, however, no legislation compelled the appellant to make the
prerecordings.
Even
though the purpose for which the recordings are made is not one that is
prejudicial to the copyright holder, that is not to say that the copyright
holder has no interest in whether or not they are made. As pointed out above,
the existence of a studio recording increases the possibility of unauthorized
copying, and of the copyright holder losing some degree of control over the
work. While the risk of this occurring may be small when the recording is
made by a legitimate broadcaster such as the appellant, the copyright holder
would no doubt want the security of knowing that adequate safeguards are being
taken against this possibility. In other countries, where the right to make
ephemeral recordings as an adjunct of broadcast performances is recognized by
statute, conditions are imposed on the broadcaster limiting the time for which
an ephemeral recording may be kept, and the use to which it may be put. The
Government White Paper on copyright legislation reform (From
Gutenberg to Telidon (1984), at pp. 44-45), in recommending that the Act be
amended to contain a specific exemption for ephemeral recordings, emphasized
the need for such limits:
As the exemption is intended to allow for ephemeral
or temporary recordings there is a need for a restricted period for which it
will last.
Public comment is invited on the length of time that
broadcasting organizations should be allowed to retain copies of an ephemeral
recording. [The Brussels Convention is cited.] National practice varies
greatly: for example, 15 days (Italy), 28 days (the United Kingdom and the
Netherlands), 3 months (Luxembourg), 6 months (Morocco and the United States)
and 1 year (Sweden, Finland and Australia). Some countries, such as Sweden and
Finland, place limits on the number of times that the ephemeral recording can
be used during the prescribed time period, while others allow any number of
otherwise noninfringing uses. There will be no such limit in the Canadian Act.
It should be noted that the right to make an
ephemeral recording does not in itself create a right to broadcast the work
recorded. Most works protected by copyright (with the exception of sound
recordings) contain a broadcast right; therefore it would be necessary to
obtain the authorization of the copyright owner to rebroadcast the work
regardless of how long the ephemeral recording may be kept. Broadcasters argue
that this provides an adequate safeguard against abuse.
Doubtless
copyright owners are concerned that, notwithstanding the provisions of the Act,
ephemeral recordings made for broadcast purposes may find their way into other
uses if they are kept for too long.
Without
such limits, the proper balance between the technical needs of broadcasters and
the security of copyright holders is unlikely to be struck.
Appellant
argues that the fact that there are special exemptions in other countries for
ephemeral recordings is not relevant to the interpretation of the Canadian Act,
because those countries, unlike Canada, adhere to the Brussels Convention and
are thereby bound to pass an explicit legislative exemption to authorize the
practice. However, it does not follow from the fact that Canada is not
bound to pass specific legislation with respect to ephemeral recordings that
its failure to do so implies that the right to make ephemeral recordings is
implicit in the existing legislation. On the contrary, the breadth of s. 3(1) (d) would
seem to make a specific exemption equally necessary. Furthermore, whether one
is considering Canada or the other countries, an explicit provision is
necessary for practical reasons, in order to strike the appropriate balance
between the technical needs of the broadcasters and the need for security of
the copyright holders.
It
cannot be denied that ephemeral recordings are a highly useful device for
broadcasters, and their use appears to be widespread not only within Canada but
in many other countries. But they are also a device which is subject to abuse
-- abuse that the copyright holder whose interests the Act is designed to
protect has little means of detecting or controlling. Task forces and
legislators who have considered the matter have concluded that strict
safeguards are necessary if ephemeral recording rights are to be recognized as
an incident of broadcasting rights. Yet the appellant asks us to read into as
implicit in the existing legislation a right which is unlimited, and provides
no protection to the copyright owner other than the broadcasters' good faith.
It
may be argued that an unlimited implicit right to make ephemeral recordings is
not necessary, and that the courts could also imply limits to the right.
However, the policy issues associated with such a rule would be beyond the
proper purview of the courts. On the basis of what legal principle could a
court decide on an appropriate length of time for which an ephemeral recording
may be kept, or an appropriate number of times it may be played? These are
matters which fall squarely within the legislative purview. As stated in Watkins v.
Olafson, [1989] 2 S.C.R. 750, at p. 760:
There
are sound reasons supporting . . . judicial reluctance to dramatically recast
established rules of law. The court may not be in the best position to assess
the deficiencies of the existing law, much less problems which may be
associated with the changes it might make. The court has before it a single
case; major changes in the law should be predicated on a wider view of how the
rule will operate in the broad generality of cases. Moreover, the court may
not be in a position to appreciate fully the economic and policy issues
underlying the choice it is asked to make. Major changes to the law often
involve devising subsidiary rules and procedures relevant to their
implementation, a task which is better accomplished through consultation . . .
than by judicial decree.
The
issue of ephemeral recording rights (together with rights to make archival
recordings) is one that has long been on the legislative agenda, as is evident
from the above White Paper excerpt. See also Royal Commission on Patents, Copyright,
Trade Marks and Industrial Design, Report on Copyright (the
Ilsley Report) (1957), at p. 57; A. A. Keyes and C. Brunet, Copyright
in Canada: Proposals for a Revision of the Law (1977), at pp.
167-68; A Charter of Rights for Creators: Report of the Sub-Committee on the
Revision of Copyright (1985), at pp. 60-62; Government Response
to the Report of the Sub-Committee on the Revision of Copyright (1986),
at pp. 11-12. Given the policy issues raised and the repeated consideration
of the matter by Parliament and its legislative adjuncts, it is my view that it
would be inappropriate for this Court to interfere.
In
sum, I am not convinced that there is any reason to depart from the literal
readings of s. 3(1) (d) and the introductory paragraph to s. 3(1) of the Act,
which on their face draw a distinction between the right to make a recording
and the right to perform. Neither the wording of the Act, nor the object and
purpose of the Act, nor practical necessity support an interpretation of these
sections which would place ephemeral recordings within the introductory
paragraph to s. 3(1) rather than s. 3(1) (d). On
the contrary, policy considerations suggest that if such a change is to be made
to the Act it should be made by the legislature, and not by a forced
interpretation. I conclude that the right to broadcast a performance under s.
3(1) of the Act does not include the right to make ephemeral recordings for the
purpose of facilitating the broadcast.
Issue
II: Did the Respondent Consent to the Ephemeral Recordings?
The
appellant argues that there was no infringement of the respondent's copyright
because the appellant made the ephemeral recordings with the consent of the
copyright holder.
It
is common ground that there was no express consent given by either CAPAC or the
respondent to the appellant to make the recordings. However, the appellant
submits that consent can be implied from the circumstances. As stated by H.
G. Fox, in The Canadian Law of Copyright and Industrial Designs (2nd
ed. 1967), at p. 339:
In order
to constitute an infringement the act complained of must be done "without
the consent of the owner of the copyright". Such a consent may be presumed
from the circumstances. The inference of consent must be clear before it
will operate as a defence and must come from the person holding the particular
right alleged to be infringed. [Emphasis added.]
Since
the appellant never dealt directly with the respondent, consent to make the
recordings must have come, if at all, from CAPAC. Furthermore, in light of the
above analysis the appellant must show that CAPAC was capable of authorizing
the appellant to make recordings.
The
appellant places some emphasis on the fact that its licence from CAPAC
authorized multiple performances within the licence period:
To
meet the convenience of operators of television stations other than the
Canadian Broadcasting Corporation for a general licence covering the television
broadcasting for private and domestic use only at any time and as often as
desired during the licence period of any and all the works for which the
Association has from time to time power to grant a performing licence, licences
are issued for each calendar month. [Emphasis added.]
I cannot
conclude that this licence impliedly confers consent to make ephemeral
recordings. On one reading, the licence may be seen as adverting to multiple
live performances. On another, it could be taken as referring to performances
using a recording for which authorization has been separately obtained. In
short, the licence falls far short of providing a "clear inference"
of consent to make ephemeral prerecordings of a broadcast.
More
fundamentally, CAPAC can grant only such licences as lie within its powers.
These powers, it will be seen, are confined to performances and do not extend
to contrivances for the reproduction of the performance. The licence refers to
"any and all the works for which the Association has from time to time power
to grant a performing licence". Similarly, the provisions of the
Act that give CAPAC its status refer exclusively throughout to the grant of performance
licences:
48. (1) Each society, association or
company that carries on in Canada the business of acquiring copyrights of
dramatico-musical or musical works or of performing rights therein, and deals
with or in the issue or grant of licences for the performance in Canada of
dramatico-musical or musical works in which copyright subsists, shall, from
time to time, file with the Minister at the Copyright Office lists of all
dramatico-musical and musical works, in current use in respect of which the
society, association or company has authority to issue or grant performing
licences or to collect fees, charges or royalties for or in respect of the
performance of its works in Canada.
(2)
Each such society, association or company shall, on or before the 1st
day of November in each and every year, file, with the Minister at the
Copyright Office statements of all fees, charges or royalties which such
society, association or company proposes during the next ensuing calendar year
to collect in compensation for the issue or grant of licences for or in respect
of the performance of its works in Canada.
It is
according to this tariff, published in the Canada Gazette and
subject to the supervision of the Copyright Appeal Board (ss. 49-50 (now ss.
67-70)), that the appellant purports to have acquired its licence. If the
right to perform does not include the right to make ephemeral recordings, as I
earlier concluded, it follows that the CAPAC licence is confined to performance
and cannot extend to the right to make ephemeral recordings.
Nor
does the fact that CAPAC acquired the performing rights from the respondent
indirectly, through PRS, have any significance in this case. The appellant
claims that the respondent, by his arrangement with PRS, ceded the right to
make ephemeral recordings, because PRS, an English company, is subject to the
U.K. Copyright Act, 1956, s. 6(7), which allows ephemeral
recording in connection with broadcast performances. This submission, too, must
fail. The U.K. provision does nothing to alter the rights granted to PRS by
its members, or by PRS to broadcasters, but merely deems the practice of making
ephemeral recordings not to be an infringement within the U.K., provided
certain conditions are met. It can have no application to the case at bar,
which is governed by the Canadian Copyright Act. Even
if it did, the evidence is that the appellant did not comply with the
conditions of the subsection, which requires that the ephemeral recordings be
destroyed within 28 days. (The trial judge found that the tapes had not been
destroyed by the time of the trial.) In my view, no consent for the making of
ephemeral recordings can be implied from the respondent's arrangement with PRS.
The
Cross-Appeal
The
respondent purports to cross-appeal the holding that CMRRA was not a proper
party to this action. No leave was sought. According to Rule 29(2) of the Rules of
the Supreme Court of Canada, "[i]f a respondent intends to appeal a part of
any judgment not made subject of the appeal by the appellant, the respondent
shall obtain leave to make such cross-appeal". Quite apart from the
respondent's failure to obtain leave on this issue, I can see no legal interest
of the respondent in whether or not CMRRA was a valid party. I therefore
conclude that the respondent's cross-appeal is without foundation.
Conclusion
I
would dismiss the appeal with costs, and dismiss the cross-appeal with costs.
Appeal
and cross-appeal dismissed with costs.
Solicitors
for the appellant: Léger, Robic & Richard, Montréal.
Solicitors
for the respondent: Sim, Hughes, Dimock, Toronto.